Eon v. AT&T and the role of “Pure Functional Claiming”

by Dennis Crouch

In a major 2014 decision, the Supreme Court raised the standard of definiteness under 35 U.S.C. 112(b) – now requiring that the scope of patent claims be “reasonably certain” to one of skill in the art. Nautilus v. Biosig. Historically, “reasonably certain” is a high standard and has been linked with the beyond-a-reasonable-doubt standard in criminal law. I.e., claim scope that is reasonably certain may also be seen as having its scope defined beyond a reasonable doubt.  The higher standard can also be contrasted with the prior Federal Circuit that only invalidated ambiguous claims that were both insolubly ambiguous and not amenable to construction.

Despite the dramatic potential of Nautilus, the Federal Circuit has largely muted its impact.

The one area where patent-challengers see continued success is when means-plus-function claims lack appropriate structural support in the underlying patent document.  35 U.S.C. 112(f) allows a patentee to claim a “means” for accomplishing a specified function without reciting the actual structure of the mechanism or material used to accomplish the function.  However, as a rule of construction, the statute indicates that the “means” will be construed to “cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”  The impact is that, although the claim appears to broadly cover a “function” it will be construed to be much more limited.  When an applicant follows this claiming approach, but fails to specify any corresponding structure within the specification then the claim is deemed invalid as indefinite.

In Eon Corp v. AT&T (Fed. Cir. 2015), the Federal Circuit has affirmed that Eon’s asserted patent claims are invalid for failing to specify the structure associated with a purely functional claim element.

Eon’s U.S. Patent No. 5,663,757 covers a data processing station that facilitates instant purchases while watching a television program.  The patent was written back when the wort “means” was still popular among patent drafters.  Here, the district court found that eight separate “means” claims were directed to “complex” computer software such as “causing selected themes to automatically display a second menu.”  Based upon that undisturbed complexity fact-finding, the appellate court found that a structure in the form of the software algorithm should have been disclosed.  Because no software algrithms were disclosed, the software means claims failed and were properly held invalid as indefinite.

Of interest here, the Federal Circuit reasoned that the algorithm is necessary to “avoid pure functional claiming.”  Quoting Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008).

A general purpose computer is flexible—it can do anything it is programmed to do. Therefore, the disclosure of a general purpose computer or a microprocessor as corresponding structure for a software function does nothing to limit the scope of the claim and “avoid pure functional claiming.” Aristocrat. As such, when a patentee invokes means-plus-function claiming to recite a software function, it accedes to the reciprocal obligation of disclosing a sufficient algorithm as corresponding structure.

Although the court here highlights the doctrinal point of “pure” functional claiming — claiming function with no limiting structure — the actual facts are that the disclosed microprocessor and does provide some amount of structure.  As with abstract-idea analysis, it seems here that the question is not so black-and-white, but rather whether some magical threshold has been crossed.

The case also offers some hints to the ongoing debate over subject matter eligibility of computer implemented inventions.  In particular, the court reiterated its prior statements that a “the general purpose computer becomes a special purpose computer when loaded with the special programming.”

216 thoughts on “Eon v. AT&T and the role of “Pure Functional Claiming”

  1. 17

    In a similar infotechnofunctional vein:

    May 12, 2015: another very bad day for MediaQueue (see, e.g., link to patentlyo.com) and its “affiliates”. A great day for everybody who loves to watch junk patents go up in flames.

    Three up, three down, all per curium Rule 36 affirmances of the Board’s decisions. Evidently the CAFC doesn’t like wasting its time, or the PTO’s.

    Speaking of impatience, check out the recent oral arguments in Hyatt v. Lee to get a whiff of how the CAFC views the kerfuffle (hint: nobody loves Gil Hyatt as much as Gil Hyatt, and that’s an understatement) and the oral arguments in Action Star Enterprise v. Kaijet. In the latter case (involving attorney fees awarded to the defendant), the attorney for the winning party gets reamed by one of the judges (about 10-15 minutes in) because, apparently, (1) the judge couldn’t believe that it could cost anyone half a million dollars to flush a claim as junky as the one asserted by Action Star down the t0ilet and (2) the judge was plainly frustrated by the slop in the briefs.

    Here’s the claim that stunk up the room:

    1. A method for converting a KVM system comprising the steps of:

    (1) initializing a mouse device, at least two computer hosts, a keyboard, and at least two corresponding displaying devices;

    (2) selecting which computer host and a corresponding displaying device are needed to be operated, then switching to the selected computer host and the corresponding displaying device by controlling a switch disposed on the mouse into a particular direction;

    wherein step (2) further comprises the steps of;

    (2A) judging whether a first computer host is needed to be operated, if yes, going to step (2B), if no, going to step (2D);

    (2B) controlling the switch disposed on the mouse into a first direction corresponding to the use of the first computer host;

    (2C) operating the first computer host, then going to step (4);

    (2D) judging whether a second computer host is needed to be operated, if yes, going to step (2E), if no, going to step (2G);

    (2E) controlling the switch disposed on the mouse into a second direction corresponding to the use of the second computer host;

    (2F) operating the second computer host, then going to step (4); and

    (2G) continuing the steps of judging whether a third computer host, a fourth computer host, or other computer hosts, the steps being the same logic as the steps of (2A) to (2F), then going to step (4);

    (3) operating the selected computer host and the corresponding displaying device;

    (4) finishing the operation;

    (5) judging whether one of the computer hosts and another corresponding displaying device is needed to be operated, if yes, going to step (2), if no, going to next step; and

    (6) end.

    Gotta love those “judging” steps. How in the heck stuff this awful gets out of the PTO is one of those perpetual mysteries…

  2. 16

    This book puts into perspective the absurdity of the anti-software patents movement. These machines are taking over all our jobs (probably a patent attorney isn’t too far behind) and to suggest that they aren’t inventions or are not eligible because they are some bizarre psychotic made-up judicial witch is absurd.

    link to nytimes.com

      1. 16.1.1

        Go, the blue sky and the sun aren’t the same thing. This is getting old.

      2. 16.1.2

        What is getting old, go, is your posting as if what you say has any meaning whatsoever in a patent law context.

        You act as if “well, a claim is a legal document, and therefore has no relation to machine,” when – for those particular claims directed to machines – you spout gibberish and some sort of (rather weak) cheerleading for the Malcolm nonsense.

        Why exactly do you think Congress choose the statutory categories that they did? What meaning (if any) do you personally ascribe to those statutory categories?

        1. 16.1.2.1

          Why exactly do you think Congress choose the statutory categories that they did?

          It’s an interesting question given that “processes” plainly includes “mental processes” and “logical processes carried out with a pencil and paper or other old devices” which neither Congress nor anyone else ever believed were eligible for patenting.

          Perhaps Congress just had its head deeply up its behind, kinda like some of the software patent lovers out there.

            1. 16.1.2.1.1.1

              Not sure if he was aware that he was not making a legal point at all, save perhaps that no words of Congress should be given any effect, no matter the fact that the constitution was rather explicit about which branch of the government was given sole authority over the statutory (i.e., non-common law) law that is patent law.

        2. 16.1.2.2

          “any meaning at all within a patent law context.”

          What does this even mean?

          Night Writer always posts how important information processing machines are and how they ‘took our jobs.’

          I will continually remind him (and you, apparently) that, the ‘greatness’ of a particular technology is legally irrelevant for at least two reasons.

          First, as I explained, we judge claims not inventions. If your claims aren’t eligible, novel, etc. it simply does not matter how great your invention is.

          This is a mistake you and Night continually make. I’ll keep pointing it out.

          Second, as you’re aware, ‘secondary considerations’ play no role in eligibility analysis.

          1. 16.1.2.2.2

            If you don’t know “what this even means” then you should take great pause in thinking that you are making any sense whatsoever in your desire to post some difference (unstated and somewhere only existing in your mind) as to claims and inventions.

            Your statement of “my mistake” is absolute rubbish.

            Now try to give actual answers to my questions and at least appear to have some semblance of understanding patent law.

            Or failing that, continue to jump in and (politely) cheerlead the anti-patent whiners – your choice.

          2. 16.1.2.2.3

            If you can’t tell the difference between a patent application publication and an issued patent, then you shouldn’t be explaining anything regarding claims to anyone.

            1. 16.1.2.2.3.1

              Where did I confuse an application and a patent?

              I knew Amazon’s claims were in an application and stand by everything I said.

              As for the difference between an invention and claims “only existing in my mind,” I’ll let that speak for itself.

              1. 16.1.2.2.3.1.1

                Go,

                The appearance of you being confused comes from your comment at 15.1, and the apparent alignment with Slashdot. While your second comment can indeed stand separate, you do not appear to distinguish from Slashdot’s error in your haste to cheerlead.

    1. 16.3

      These machines are taking over all our jobs

      In your dreams.

      Life must be really scary for you.

      1. 16.3.1

        Would those be machine dreams?

        (and why does the concept of anthropomorphication scare you so much?)

    2. 16.4

      NWPA These machines are taking over all our jobs

      Look out! Google’s sooper awesome robot car technology is going to put stunt drivers out of business!

      link to usatoday.com

      Three of the crashes involved cars being operated by Google, which has a fleet of 23 self-driving Lexuses

      If only Google was able to more junky patents more quickly, then we wouldn’t have to wait so long for someone to describe the fake structure of a computer that is “configured to safely control a car.”

  3. 15

    Speaking of functional claiming, Amazon has patented delivering goods by drone. Patent No. 20150120094. Filing date Sept 14, 2014, issue date April 30, 2015 .

    Why was this not rejected as obvious? How is the improvement here “more than the predictable use of prior art elements according to their established functions.” ?

    Here is claim #1
    1. A system for aerial delivery of items to a destination location, comprising: a plurality of unmanned aerial vehicles, each of the plurality of unmanned aerial vehicles configured to aerially transport items; an unmanned aerial vehicle management system, including: a processor; and a memory coupled to the processor and storing program instructions that when executed by the processor cause the processors to at least: receive a request to deliver an item to a destination location; and send to an unmanned aerial vehicle of the plurality of unmanned aerial vehicles, delivery parameters identifying a source location that includes the item and a destination location; wherein the unmanned aerial vehicle, in response to receiving the delivery parameters, is further configured to at least: navigate to the source location; engage the item located at the source location; navigate a navigation route to the destination location; and disengage the item.

    1. 15.1

      Truly insane.

      I’m completely willing to believe that actually implementing the system Amazon envisions required some nonobvious advance over the prior art.

      Whatever that is, it isn’t in the claim.

      1. 15.1.1

        go,

        I have to ask: what the F do you do for a living?

        You jump right in and whine with Slashdot Reader’s lament and simply overlook the fact that the item is NOT a granted patent and it is NOT an issue date of April 30, 2015, and that there has been NO examination yet.

        Criminy, see what has become of America’s leading source of something other than patent law?

        Far far too many far far too willing to jump at the minutia and not bother with understanding even the basic state of the thing being lambasted.

        WAKE UP PEOPLE.

        1. 15.1.1.1

          Why was that ridiculous claim filed, “anon”?

          Most of us know why.

          Hint: rhymes with “reedy glass bowls.”

          “Delivery parameters”.

          Too flipping funny for words.

        2. 15.1.1.2

          see what has become of America’s leading source of something other than patent law

          Go somewhere else if it bothers you, “anon.”

          1. 15.1.1.2.1

            You quite missed the point there Malcolm.

            Supposedly this is a place for law and discussions of law, particularly patent law. When the by-line is changed to read “America’s leading source of whiny and errant nit-picking minutia” then I might just want to find a different place that wants to focus on the real law.

            1. 15.1.1.2.1.1

              Supposedly this is a place for law and discussions of law

              It’s a patent blog, Einstein. Discussions about ridiculous junk patents that are being filed by sooper dooper important companies is going to continue to happen, particularly when lawyers are filing those claims and those lawyers owe the PTO a duty of candor.

              Do you think the claim is non-obvious, “anon”?

              Let everyone know.

              Oh right: you don’t know how to do make that kind of determination. Sorry. I forgot.

              1. 15.1.1.2.1.1.1

                More dissembling nonsense because I stick to law and avoid the minutia.

                Classic.

        3. 15.1.1.4

          Application, not patent. Thank you anon. I was lied to again by the scurrilous BBC you said the PTO had ‘approved the ideas’ in the patent. link to bbc.com

          1. 15.1.1.4.1

            I have far less an issue with you Slashdot, as you don’t try to portray yourself as some sort of expert here.

            It is the ones that should know better, that pretend to know better that should be shamed.

            What I would recommend for you is to note that first impulse and simply do a quick check before joining the lemmings marching up Lemming Hill. And as you do this mental check, ask yourself what is the motivation for so much anti-patent rhetoric.

            I can envision you having a Neo-like awakening in that bio-electric harnessing pod…

            1. 15.1.1.4.1.2

              sk yourself what is the motivation for so much anti-patent rhetoric.

              It couldn’t be the fact that claims even worse than the one that Slashdot just highlighted are granted all the time. And then used to extort businesses and line the pockets of deep thinking patent attorneys like “anon.”

              Nope. Unpossible.

              It must be some nefarious plan by a communist insurgency seeking to trample the Constitution, destroy property rights and take us all back to the iron age. Yes, that makes so much more sense.

          2. 15.1.1.4.2

            Notfanuttin, but My post at 15.2 was was at 1:08, well ahead of the 1:21 posting of 15.1.1…..just sayin…

            1. 15.1.1.4.2.1

              No prob, Les – you get the credit for posting first (my post crossed in transit, otherwise I would have posted my message under yours).

  4. 14

    the subscriber

    Terms like “subscriber” and other terms that “limit” an alleged technology or technological “system” to people with particular legal relationships raise a bright red flag indicating a strong possibility that the claim is a pile of information-processing junk protecting one more ineligible abstractions in the context of an otherwise unpatentable (old) context.

    This junk needs to be expunged from the system. There’s a lot of out there, unfortunately, and more is being added to the pile all the time.

  5. 13

    Tanked by the CAFC (affirming the Board). You gotta love these “system” claims. They’re just like process claims, except when they’re just like apparatus claims, which is usually within the same claim. Thank goodness that 101 specifically sets forth that systems and other mixed subject matter claims are eligible for patenting. Oh wait …

    1. A system for mobile or wireless communication or computation, said system comprising:

    first unit comprising first antenna, wherein said first unit is mobile or wireless;

    last unit comprising last antenna, wherein said last unit is mobile or wireless; and

    said first unit receives data from said last unit, wherein said data is transmitted from said last antenna to said first antenna, wherein said last unit receives said data from a location outside said system, wherein said data is transmitted from said location outside said system to said last antenna,

    wherein transmission of said data betwee said first antenna and said last antenna is done at first frequency, and transmission of said data between said last antenna and said location outside said system is done at second frequency,

    wherein said second frequency is different than said first frequency,

    wherein said first frequency is chosen from a range of frequency which corresponds to a low radiation power absorption for a specific tissue or part of human body, or which corresponds to a low overall radiation power absorption for whole body of a human or a specific animal, and

    wherein transmission of said data between said first antenna and said last antenna is done at first power, and transmission of said data between said last antenna and said location outside said system is done at second power, wherein said second power is different than said first power, wherein said second power is larger than said first power.

    That’s a lot of words to say very, very little indeed. Bye-bye junky claim!

    Oh, I almost forgot one of the best parts: “As an initial matter, the specification of the ’657 patent fails to explicitly define what constitutes a “low radiation power absorption.”

    LOL

      1. 13.1.1

        It does not.

        Did you really expect Malcolm to break stride and not do his usual propaganda C R P fest wherever he pleases? Why should this thread be any different?

        Nine years and running.

      2. 13.1.2

        How does this relate to Eon v. AT&T?

        Junk patent with value far out of proportion to any “innovation” on the part of the applicant.

        But very clever lawyering! Way to bury the non-innovation under a pile of verbiage. Better luck next time.

        1. 13.1.2.1

          It’s a complete non sequitur. You provide no introduction (such as a cite to a case) and just launch into a claim. Is it the claim for the case being discussed? I had no idea.

          At least if you’re going to attack patents you don’t like, provide some introduction. Otherwise, it can be difficult to follow.

  6. 12

    Note that “limitations” like this:

    sending and receiving video and interactive control signal information wirelessly to and from the subscriber television receiver stations

    present huge subject matter eligibility issues.

    Presumably everyone here already understands why. I’m happy to help out anyone who is confused.

    1. 12.1

      Presumably everyone here already understands why. I’m happy to help out anyone who is confused.

      You seem to want to project onto anyone who disagrees with your policy/opinion a certain state of confusion where it is simply not required that those who know and understand the law, its history, and the factual realities of modern innovation recognize that your Belieb system falls woefully short.

      Your offer then of “being happy to help” is errant. Everyone would be better off if you first helped yourself understand reality and the law, and shelved your propaganda machine, or at least took an inte11ectually honest approach to engaging in dialogues here.

      Have a nice day.

      1. 12.1.1

        Let me know if you’re asking for help understanding why the recitation of a “limitation” regarding information content always raises a serious subject matter eligibility problem.

        It’s 2015. I don’t think most people need an explanation. But if you do, I’m happy to provide one.

        Again.

        1. 12.1.1.1

          Malcolm’s reply is empty and nonsensical rambling.

          Again.

          Try again to read what I actually stated in short declarative sentences.

        2. 12.1.1.2

          “It’s 2015. I don’t think most people need an explanation. But if you do, I’m happy to provide one.”

          Apparently the Patent Office needs one, ’cause:

          1. A method for communicating between a source and a destination, comprising:
          receiving, at an egress edge device from an ingress edge device, an upper layer packet including a virtual private network identification identifying a destination, the virtual private network identification having been added to a header of the upper layer packet by the ingress edge device;
          authenticating the upper layer packet at the egress edge device using the virtual private network identification by comparing the virtual private network identification against an expectation for the upper layer packet; and
          upon authentication, decapsulating the upper layer packet into a lower layer packet for the destination,
          wherein the virtual private network identification is a unique identification number assigned to the source for marking the upper layer packet as belonging to a virtual private network to which the source and the destination belong, the virtual private network identification comprising at least four bytes.

          Publication number US8942240 B2
          Publication type Grant
          Application number US 13/951,867
          Publication date Jan 27, 2015
          Filing date Jul 26, 2013
          Priority date Jul 29, 2003

          link to google.com

          1. A method for improved multicast scaling through policy-based redirection, the method comprising:
          receiving a packet belonging to an Internet protocol multicast (IPMC) stream, wherein the packet includes packet routing information;
          performing a lookup in an IPMC forwarding database (FDB) and, in response to failing to locate an entry in the IPMC FDB, attempting to insert the packet routing information in the IPMC FDB;
          in response to failing to insert the packet routing information in the IPMC FDB:
          automatically creating a packet redirection rule based on the packet forwarding information; and
          automatically adding the packet redirection rule to a policy-based redirection (PBR) access control rule (ACR) data structure for storing policy-based redirection rules for overriding layer 3 forwarding decisions for specific access controls and instead forwarding packets to an alternate next hop, wherein the packet redirection rule points to an entry in an IMPC egress port list data structure that specifies a port list identifying at least one port to which packets in the IP multicast stream should be forwarded and includes a redirection action for redirecting packets in the IPMC stream to the port list and a multicast group identifier for identifying the packets in the IPMC stream;
          redirecting the IP multicast stream, using the packet redirection rule in the PBR ACR data structure and the entry in the IPMC egress port list data structure and forwarding the IP multicast stream to the at least one port specified by the port list in structure the IPMC egress port list data structure; and
          wherein redirecting the IP multicast stream using the policy based packet redirection rule in the PBR ACR data structure includes performing a lookup in the PBR ACR data structure for packets in the IPMC stream for which entries do not exist in the IPMC FDB in lieu of performing slow path processing for the packets.

          Publication number US9008091 B1
          Publication type Grant
          Application number US 12/973,417
          Publication date Apr 14, 2015
          Filing date Dec 20, 2010
          Priority date Nov 19, 2010

          link to google.com

            1. 12.1.1.2.1.1

              So, provide it like you promised. Why aren’t those recently allowed claims actually not even eligible to be allowed?

              1. 12.1.1.2.1.1.1

                Why aren’t those recently allowed claims actually not even eligible to be allowed?

                Ooooh, lookie! It’s comparing information … with rules! Sooper dooper techno! So many fancy terms.

                Deep, man. Deep, I tell you! Who knew that you could compare information and decide to do something based on the comparison? Using rules! But this is on an “egress edge device” — that changes everything!

                I’m infringing right now. Come get me, Les. Then you’ll get all the explanation you ever wanted and more.

                Wasn’t you who told everyone here that before computers animators used “their guts” to make cartoons look good?

                LOL.

                1. So, your saying you have no argument against subject matter eligibility for those claims, despite your earlier assertions…. Got it.

          1. 12.1.1.2.2

            policy-based redirection

            Because protecting new policies is what the patent system is for.

            What a joke.

  7. 11

    I thought the fundemnetal issue was that the application failed to recite any flow chart or series of steps to be performed for executing the functions it describes. I.e. no “algorithm.” If the application had such a flowchart, I don’t believe we would have seen this case on 112 6th grounds.

    1. 11.1

      Your spelling of “fundamental” is not nearly as egregious a fail as my referring to Prost as “he”. After all, she is the hottest appellate judge appointed by Bush in his 8 years – maybe the hottest in US history, although Pauline is hot in an entirely different way.

      After 77 comments it is good of you to bring the discussion back to the most salient take-home msg of this case.

      An interesting question is how much statutory equivalents breadth does a flow chart get when used to support a MPF claim? I would presume that if an infringing algorithm functions the same way in the program it would be equivalent regardless how it is written. Consequently, any flow chart that works works and yer good to go. Another reason to consider MPF.

      1. 11.1.1

        I would presume that if an infringing algorithm functions the same way in the program it would be equivalent regardless how it is written.

        See any of a several slashdot/techdirt articles by a gentleman named POIR on the equivalency of software (based ironically on function) and note the sharp contrast with the Belieb system of Random here on these boards.

        It would be nice if the several different views of such anti’s actually noted that their discrepancies detract from the big picture of what in the end they each want the law to be.

        That being said, my dear Babelboy, I would remind you as well that you still miss the “issue” of the use of language that sounds in function, especially when the language is not purely functional and the claims are safely in that Vast Middle Ground.

        There is quite plainly a very real difference that is being obfuscated (perhaps not by you) when anti-software people seek to deny patent protection to something that CLEARLY fits the statutory category portion of 101 (either by being a manufacture and machine component, or as a system), AND equally as CLEARLY fits the utility portion of 101 (feel free to quote Ned Heller from the API copyright thread).

        If one recognizes (as one should) what Congress (and not as errantly attempted to be portrayed as merely Judge Rich) did in 1952 (see Federico), then you would realize that MPF (and your comment regarding “Another reason to consider MPF“) is really just a sideshow to the bigger issue of a much bigger battle to deny patent protection to the single largest area of innovation in the world today.

        1. 11.1.1.1

          “anon”: anti-software people seek to deny patent protection to something that CLEARLY fits the statutory category portion of 101

          Like a mental process.

          Because it’s a “process.” Which is a statutory category, “CLEARLY”.

          Deep stuff, “anon.” You should try submitting an amicus brief somewhere.

          1. 11.1.1.1.1

            Move the goalposts back and “be happy” to recognize that your sham question has been asked and answered many times now Malcolm.

          2. 11.1.1.1.2

            Tell us why MM you think that a “mental process” should not be eligible for patentability.

            1. 11.1.1.1.2.1

              Night Writer,

              Please do not feed the Malcolm “Tr011” and his goalpost moving attempts to claims that are PURELY in the mental realm.

              Anything so purely in the mental realm have obvious enforcement and freedom of thought issues that NO self-respecting patent attorney would (or should) allow to obfuscate the big picture.

              1. 11.1.1.1.2.1.1

                Anything so purely in the mental realm have obvious enforcement and freedom of thought issues that NO self-respecting patent attorney would (or should) allow to obfuscate the big picture.

                But “on a computer” changes everything!

                ROTFLMAO

                You can’t parody this stuff.

        2. 11.1.1.2

          See any of a several slashdot/techdirt articles by a gentleman named POIR on the equivalency of software (based ironically on function) and note the sharp contrast with the Belieb system of Random here on these boards.

          Except there isn’t equivalency. People don’t shell out hundreds or thousands for Adobe Photoshop because it performs the same functions you get with shareware. They get it because it does those functions better. Ditto searching with Google. Ditto using Google Maps instead of the iPhone’s built in Maps function. Do you know how many millions of times internet browsers have been downloaded on windows computers that come with internet explorer installed? Do you think it’s maybe because they perform the function of rendering a webpage faster and better than IE does, or maybe everyone is just stupid except you anon.

          It makes no more sense to say that there is equivalency of function absent knowing what the algorithm is than it does to say a magnifying glass and a microscope have the same power because they both make little things bigger, or that some random person sings as well as a grammy winner, or that the average person is as stupid as anon.

          You can SAY things are equivalent (especially if you have an agenda) all you want. But an Apple isn’t an Orange no matter how much you try to emphasize that they’re both fruit.

          This is the kind of lackluster non-analysis that anon puts out there Babelboy. “Well some dipsh!t on the internet said it, so clearly we should blindly accept it when doling out hundred million dollar patents.”

          1. 11.1.1.2.1

            Except you base your view solely on your own lack of understanding. Combine that with your lack of understanding of the ladders of abstraction (more than just two rungs on ladders), and you get what we all see: your constant attempts to merely reinforce your faulty Belieb system.

            POIR is not just a random person on the Slashdot/Techdirt scene.

            Eppur si muove

    2. 11.2

      Sister anon,

      The Eon case is a dud for what the anti’s want.

      That much is clear from a simple reading of the case (and rather reminiscent of Malcolm’s “quick jump” and first to link to the Office’s integration take-away after the Prometheus case.

      The bigger – and more subtle danger here is the dicta from Miss Prost and the “reconceptulization” effects.

      This was a panel decision, and as such cannot override a previous panel decision, which its dicta attempts to subtly do. Recall that the first panel decision after Bilski reaffirmed the holdings and the decision of Alappat in full.

      What we see going on here is just more of the CAFC having been bullied by the Supreme Court.

      We need a two step rectification to deal with the rather clear effects of a judicial addiction to messing with statutory law.

      1. 11.2.1

        It is a good point. I just wish Obama would appoint people with integrity that have a science and patent law background and will apply the law and not be judicial activist. I’ll accept whatever the consequences if only we could have just that.

        1. 11.2.1.1

          The level of judicial activism should be noted as the scourge that it is in no small part because patent law is expressly statutory law as directed by the constitution.

          I really do not have a problem with common law development per se, but those who so actively and so fervently clench tight their eyes to the means being used in order to reach a desired ends should be aware that they are attempting to change law through the wrong branch of the government.

        2. 11.2.1.2

          Given that the CAFC’s mandate goes well beyond patents, it’s not practical to wish for a court that is made up of people who have advanced skills in every subject matter the court touches.

          Once again I advocate for a patent court system roughly analogous to the bankruptcy system. Each circuit should have one Article III DC that is specialized in patent law and whose judges have been admitted to the PTO. (USDC EDTX almost full fills that role in CA5.)

          Ditto that for a specialty appellate court — a bench made up of technical people who know enough about patent law to pass the PTO bar exam.

          As it is now, the judicial system is run on the assumption that if you can get a BA in AmLit and a Yale or Harvard JD, you’re good to go to be resolving very complex technical and legal issues peculiar to patent practice. And I’m talking J. Prost here, among others. It amazes me that they ever get it right, not that Linn always did.

          1. 11.2.1.2.1

            It gets even worse Babel when you have the Royal Nine lording it over you in a truly bully pulpit manner, coercing you into ever more inane (lacking touch with technical reality) decisions.

            We need that two step corrective action to liberate patent law from the scourge on an ongoing basis.

    3. 11.3

      If the application had such a flowchart, I don’t believe we would have seen this case on 112 6th grounds.

      At the very least, it’s going to depend on what’s in that flowchart.

      Until it doesn’t.

    4. 11.4

      Here’s Claim 1:

      1. A local subscriber’s data processing station for a wireless television program communication network coupling together a set of interactive subscriber television receiver stations, comprising in combination,

      an operation control system in said data processing station for controlling video signals, system operating modes and interactive communications available to the subscriber
      ,
      a television receiver with a video display screen, program control means and television program channel selection means,

      a plurality of sources of video text and television program channels available from said network for individual presentation on said display screen in response to operator control by way of said operation control system,

      a programmable computer interconnected with said television receiver and said operation control system,

      radio wave transmission and reception means for sending and receiving video and interactive control signal information wirelessly to and from the subscriber television receiver stations in said network including messages with subscriber identification, video text and control signals for said television receiver,

      said operation control system providing local station organization and operation in different operating modes permitting various degrees of interactive participation by a local subscriber, including network communication interconnection between the subscriber television receiver stations, television program viewing options, fiscal transactions and audience response modes,

      subscriber manual control means for interactive participation and operation of said operation control system over an authorized range of optional features,

      monitoring means for generating video displays of instructions and interactive menus on said video screen related to said operating modes,

      self contained software programs operable with said operation control system at the subscriber’s data processing station for identifying program and operating mode options individually authorized to the subscriber for controlling the local station options by means of said software programs,

      replaceable software means located at the subscriber station for storing at least one replaceable software control program defining authorized operating conditions for that station, and

      operating means for programming said computer with said software control program to establish optional operating mode conditions authorized to said subscriber at the local data processing station as defined by the software control program.

      link to google.com

      The application does not claim a method. It claims devices. Accordingly, as one might expect, it includes block diagrams.

      Which “means” do you suppose has one of ordinary skill in the art baffled?

      the monitoring means perhaps?

      “monitoring means for generating video displays of instructions and interactive menus on said video screen related to said operating modes”

      I’m no expert, but that sounds like a monitor to me, you know, like a TV screen thingy…

      1. 11.4.1

        Well, Les, this too is ancient: a television receiver with a video display screen, program control means and television program channel selection means

        Also this: a programmable computer interconnected with said television receiver and said operation control system,

        This too: radio wave transmission and reception means

        Query why they are even mentioned in the claim at all, given that they do exactly what they were designed to do and — as will always be the case — add precisely nothing to the patentability of anything.

        That’s a question for you to think about. Most people already know the answer.

        1. 11.4.1.1

          given that they do exactly what they were designed to do and — as will always be the case — add precisely nothing to the patentability of anything.

          Obvious dissembling (again).

          Malcolm’s logic is exactly the logic in my big box of electrons, protons and neutrons.

        2. 11.4.1.2

          Its a claim (like most claims) to a particular combination of known elements. The novelty (which the Examiner apparently found) is in the combination.

          That is something for YOU to think about.

        3. 11.4.1.3

          “Well, Les, this too is ancient: … Also this: a programmable computer interconnected with said television receiver and said operation control system,”

          I don’t think programmable computers were generally interconnected with television receivers and operation control systems thereof back before: Jul 14, 1989

          If you are aware of evidence of such, please provide it.

          1. 11.4.1.3.1

            “Generally” interconnected? That’s funny.

            Pretty sure one is all you need.

            I wonder if this book has any information in it:

            Noll, M.A. Television Technology: Fundamentals and Future Prospects. Norwood, Massachusetts: Artech House, 1988.

            Nah. Impossible. These geniuses wouldn’t have bothered filing their patent if it was just a pile of junk.

            The novelty (which the Examiner apparently found) is in the combination.

            Right. The “combination” of information content on the screen. Again: complete junk.

          2. 11.4.1.3.2

            Les, do you know that there is a whole world of technology that exists long before commercial viability and the inevitable stampede of bottom-feeding grifters that show up at the PTO?

            It’s true.

            You see, the technology gets developed and described years before the commercialization. Then the grifters and bottom-feeders come in with their patent attorneys and try to lock up various aspects of the technology with patent claims that recite all the obvious or ineligible ways that the technology can be used.

            This has been going on for many years and the incompetents managing the PTO are a big part of the problem. The other problem, of course, is people like you who believe that every patent is a precious snowflake.

            1. 11.4.1.3.2.1

              Not sure what your point is.

              Maybe your suggesting that the inventors of the subject claimed invention actually invented it before the filing date of the patent application.

              That’s probably true. It takes a while for patent application budgets to be approved and allocated and for applications to be drafted etc….

  8. 10

    By this reasoning if Eratosthenes had a microprocessor, standard terminal, and the US patent system, he would in effect been able to patent his Sieve and thereby preempt its use (because the Sieve of Eratosthenes is a structure that can serve as a limitation in a patent claim) by anyone else. Did the judges of the Federal Circuit read Alice or at least Benson?

    1. 10.2

      And what would be wrong with being able to patent an algorithm for finding prime numbers? Can you tell us? Natural laws? Please fill us in on why it would be bad to encourage innovation in the area of algorithms.

        1. 10.2.1.1

          >Plundering the commons.

          Or, in reality–you know that thing where things are real–creating new innovations by providing incentives. The “commons” evokes an image of a fixed space that is shared where anyone that works in innovation knows that the “commons” of innovation is a space that grows with each new innovation.

          1. 10.2.1.1.1

            In reality — you know, that thing where things are real — many granted patents incentivize litigation abuse moreso than any alleged “innovation”, particularly in the data processing space.

            And returning to philosophy, regarding the “commons” I was referring to — maybe this quote will ring a bell: “… that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.”

            1. 10.2.1.1.1.1

              I see that my witless friend is reprising his role as the headless Count Dobu…

              Repeating the “b-b-b-but “Tr011s and litigation abuse” mantra – after that mantra has been repeatedly debunked only shows that your mindset is of the kool-aid quaffing variety, and is just out of touch.

              And your quote “inhibit further discovery” is a most interesting one – as that quote itself (if one actually engages some critical thinking) is most problematic. Given that ALL Article III courts (including the Supremes) are not allowed to engage in advisory opinions and speculative conjecture, the quote you use highlights the very fault and weakness of the Supreme Court activist plank. They are using some mere possible future harm in their attempted justification of law re-writing efforts (you should note the use of the word “may” in the full quote).

              Oops.

              1. 10.2.1.1.1.1.1

                Anon,

                Your infantile taunts just reflect your own desperation in attempting to discredit the facts. Any intellectually honest discussion must recognize that litigation abuse over low-quality patents is a real thing.

                Your continued railing against a series of nine-zero SCOTUS opinions is noted.

        2. 10.2.1.2

          Dobu,

          How Tegmarkian of you.

          To which, I would simply point out to you that the map is not the land.

          1. 10.2.1.2.1

            This really is NOT a minor point. The analogy of the anti-patent movement of innovation to a fixed physical space is another one of their intentional misrepresentations to a public that doesn’t understand technology.

            1. 10.2.1.2.1.1

              It is rather easy to get caught up in the hyperbole when the subject is one that is so beneficial to so many, and the stakes of the end prize are so high.

              The means to whatever desired ends really do matter – and in fact, considering how valuable innovation has become to our society, an even MORE critical eye should be focused on the means of attempted changes in law being used.

              Clearly, the anti-software patent forces routinely engage in obfuscation of reality and law. It has become routine for these people to ignore critical basic facts. Look at how Malcolm refuses to address how “old box” without a (real physical) change comes to have a new capability. Look at how Ned consistently ignores that you first must change the machine and configure it before you can “merely use it” with the software. He seems to want to be able to get to that second step somehow magically without the first step. Note then (as I am well aware that you do), that these misperceptions are routinely ployed as if they do not matter to the discussion, when – as brilliantly an succinctly demonstrated in the Grand Hall experiment – they are critical to the understanding of this topic.

              So while the editors may choose to delete comments that are as direct as they are true, such deletions do nothing to change the perception that a desired end state is engaging – that must engage in – intentional misrepresentations.

              Their “arguments” simply FAIL otherwise. Malcolm would need to admit (again) that something real and physical has happened to “old box” and Ned would have to stop wishing for some magical reach of getting to the second step without that first step.

              Note too that the simple patent doctrine of inherency points out these faults in a glaring manner. In order for Malcolm’s and Ned’s views to be “true,” ALL future innovations of the software variety would necessarily have to be “already in there.”

              1. 10.2.1.2.1.1.1

                Clearly, the anti-software patent forces routinely engage in obfuscation of reality and law.

                Keep typing, Billy!

                Everyone cares what you think.

                1. Why do you bother with such a meaningless retort Malcolm?

                  Try to say something to add to the conversation, and keep the mindless “Tr011” noise to yourself.

                  Thanks for helping keep the “ecosystem” clean.

                2. Try to say something to add to the conversation

                  “Real people like me know the true law unlike the biased terrorists who disagree with me.”

                  That’s the kind of substance you seem to appreciate, “anon.” Happy Monday!

                3. More dissembling from Malcolm.

                  Maybe one day you will actually address the things that I actually say, instead of diving into your short script of ad hominem and dissembling tangents.

                  Then I think back to the fact that you have been doing this for nine years and running and I simply refuse to hold my breath waiting for you to even attempt to hold an inte11extually honest dialogue.

                  So I might as well as some fun sticking some facts and real law like a fork into your eyes.

              2. 10.2.1.2.1.1.2

                Anon,

                Imagine a Grand Hall, with two identical microwave ovens, each containing a ceramic cup with 8 oz. of water.

                The first oven has been programmed to run on high power for one minute. The second oven has not been programmed with a cook time.

                Push the start button on each oven, and you will see that the “programmed” microwave has the new, added capability to heat water, a capability utterly lacking in the “non-programmed” oven. An astounding improvement that couldn’t possibly have already been “in there” (as Dr. Horse must be thinking), because who knows what kind of cook timing a user might attempt in the future?

                Another victory for the amazing Grand Hall Horse-Mouse.

                1. In your attempt to twist the very straight forward logic of the Grand Hall experiment, you engage in the same error as Ned: attempting to deny the existence of changing the machine in a first step of adding the machine component and manufacture in its own right of software, and you try to dissemble with the ‘mere use’ step 2 only.

                  Other than that, I do give you some props for the inclusion of the possibility of variable programming. It is at least a clever distraction. Of course it is still a FAIL because you merely side step the fact that adding machine components after some initial stage is still – yep – adding components.

                  Unless you really do think that a model with a programmable module is the same as a model without one, your attempt here is simply too clever by half.

                2. anon, how is the machine changed unless the program is there.

                  Unplug the differently programmed computers. See if they are different. No? They are the same. Identical. The programs have vanished with the electrons.

                  Plug them back in. They are the same. Why? Whatever programs were there vanished with the power. On restart, the programs are no longer there.

                  Only when they are operating and programmed are they the different.

                  This is just like the signal case.

                3. Ned,

                  You are still very much confused by your desire to conflate software and the execution of software.

                  This is nothing at all like the signal case (In re Nuitjen – which by the way is still objectively decided incorrectly).

                  Your immediate view here is absolutely dead wrong. You are still engaging in your fallacy skipping of step one in your version here of turning off the machine and wiping out the programs. In order to remove this fallacy of yours you need to not only turn off the machine, but also remove the programs entirely – you seem unwilling (or unable) to grasp the Grand Hall experiment. Revisit again the Nazomi case – those imported computers – changed with the programming (but turned off and without power) STILL infringed. Your view of “power-off” is simply flawed. This is plain as day, but you really do have to open your eyes to see it. Unclench those eyes my friend.

                4. A not subtle at all lesson here:

                  Never never never send Ned out to buy a computer for you (or for that matter, engage in importing computers).

                  He is very likely to think that there is absolutely no difference in a computer that is totally stripped out of software and one that is fully loaded with software because he will look at the two (unplugged) side by side and declare that they are exactly the same.

                  Today’s Homer Simpson award goes to Ned (yes, this early in the morning):

                  D’OH!

                5. anon, let us not forget that the source of the thinking of the Federal Circuit that a programmed computer was a new machine lay in the CCPA case of application of Bernhart, which opined that a programmed computer was physically altered in a permanent fashion and therefore was a new or improved machine within the meaning of section 101.

                  I simply point out to you that the thinking of the CCPA in Bernhart is completely fallacious and certainly is not based upon any finding of fact by a lower court, nor is it based upon any reliable expert testimony. It is simply pronouncement by the Federal Circuit which is contrary to reality.

                  You never seem to be able to address the issue that the machine is not altered in any manner whatsoever by executing a program.

                6. Absolutely wrong Ned – I HAVE addressed the issue and it is you that simply ignores that fact that I have done so.

                  This is addressed in my multiple comments that you somehow want to magically ignore step one in first changing a machine by configuring the machine with software BEFORE your step two of “merely using” that changed machine.

                  Read my posts. Slowly if you must. Have a third grader help you if need be. This is really really easy stuff you are messing up.

                7. anon, I have to take your word that you have replied since I hardly ever read your posts anymore.

                  I think others may have the same problem with you — burn out.

                  For the sake of argument, and in the hope that I might actually read your response, why don’t you restate your reply?

                8. Ned,

                  Do you realize the irony and the Accuse Others Of That Which Malcolm Does
                  in your desire to NOT engage in a dialogue with the extremely weak excuse of your choosing not to engage in a dialogue ? (burned out indeed!)

                  You have the power to stop seeing the counterpoints that I present by acknowledging, understanding, and incorporating those counterpoints into the dialogue. It is your choice to continue ad infinitum and ad nauseum to post in your drive-by monologue internet style shout down of your mantra.

                  That you want me to “repost” when my words are still here is comical. All that is required of you is already within your grasp. As it has ever been, it is up to you to choose to appreciate the wisdom that I have put before you. Your horse is already at the well.

            2. 10.2.1.2.1.2

              Night, I analogized nothing. I stated my view that monopolizing ways of generating numbers by locking them away in a patent is stealing for the individual that which by any reasonable viewpoint belongs to the public. “The commons” might evoke a fixed space for you, but the innovation/fixed-space analogy is a straw man of your own construction.

              1. 10.2.1.2.1.2.1

                The numbers are still in the public Dobu – in your example it was the methodology (not the numbers) that would have been the topic of the patent.

                Did that methodology “belong to the commons”…?

                1. Anon,

                  You err in two ways.

                  1. Eratosthenes Sieve was Joachim’s example, not mine. I merely replied to Night’s request for what harm might occur if such were patentable.

                  2. You misread the post to which you are replying. I wrote “ways of generating numbers”, not just “numbers”.

                  And, to answer your question, yes, I do believe mathematical discoveries such as Eratosthenes Sieve belong to the commons.

                2. I replied to your mere reply, and I am not in any error, as I have merely put questions to you (you do in fact indicate that the numbers are being locked away – read your own posts again). If this is not what you intended to say, the better avenue for you is to restate what you say – not to say that my reply is in error.

                3. Anon,

                  “of generating numbers” is a prepositional phrase, modifying the noun “ways”.

                  The pronoun “them” is in another phrase, “by locking them away”, modifying the gerund “monopolizing”, whose object is “ways”, NOT “numbers”.

                  Per my comment, it is “ways” (i.e., the methodologies) that are being locked away in patents, not “numbers”.

                  This time, the mistake is yours. Own it already.

                4. Thank you Dobu – as of your post at 12:42, I see the mistake that is mine and as you suggest I own the mistake that I had read your posts as own the math of numbers (which you did not say) as opposed to the applied math of a method of obtaining a certain select group of numbers.

                  I am also sorry that you seem (still) to have difficulty in understanding how your view of this use of applied math aligns with a Tegmark world view.

                  That being said, and my mistake being owned, are you now ready to own your own mistakes at 10.2.1, 10.2.1.1.1 (as I point out at 10.2.1.1.1.1), 10.2.1.2.1.2 (with your self-serving egregious “any reasonable viewpoint” assumption), 10.2.1.2.1.1.2, 10.2.1.2.2, and 10.2.1.2.2.1.1, to name a few comments that require the forthrightness that you wanted from me.

          2. 10.2.1.2.2

            Anon,

            “Tegmarkian”? The cosmologist who equates the model with the reality? I am completely befuddled as to how you get there from my four-word reply to Night.

            Since you seem to have forgotten, I’ll repeat myself for your benefit: “Ceci n’est pas une pipe.”
            wikipedia on “The Treachery Of Images”

            1. 10.2.1.2.2.1

              You need to get beyond a surface-level-only grasp of the topic here Count Dobu.

              You miss the point of my post which IS the same message of the pipe quote in that it is your views here that align with the equating-model-with-reality notion.

              You seem unable to grasp the fact that your reference to the commons is ultimately flawed. Your view of software renders ALL software unprotectable under any IP regime and precludes any sense of innovation from the creative and (in fact) inventive application of lower level building blocks (think of the analogy to electrons, protons and neutrons) – put simply, your view denies the reality that invention does happen through the mechanism of programming (something that should wake the slumbering lemmings).

              1. 10.2.1.2.2.1.1

                Anon,

                You got all that from “plundering the commons”?

                I can only presume that you see any post from a so-called “anti” as an excuse to go off into one of your scripted rants against the opinions you assign to any and all “antis”.

                Focus, man!

                1. I am focused – you relied on errors and propaganda (as I pointed out in a post that is – unfortunately for you – being blocked.

                  My points are clearly pertinent. You err doubly in thinking them a rant and merely off of a script.

                  Pay attention son.

                  Learn.

    2. 10.3

      You have to love the way these anti-patent people play off the ignorance of the public. They always says, why that could claim everything and make everything impossible for ever and ever.

    3. 10.4

      Jo, Application of Bernhart came up with this nonsense that a programmed computer was a new or improved machine and therefor categorically eligible under 101. Rich relied on Bernhart in Benson to declare that a process involving a computer must be categorically eligible because a programmed computer was categorically eligible. But of course, Benson was overruled.

      But that did not deter Rich, who made reference back to this doctrine in dicta in Alappat, and finally made it a holding in State Street Bank.

      Yet, the Federal Circuit continues to rely on the doctrine in cases such as this one – even extending it. What nonsense.

      Everyone knows that a computer executes a program by loading it into memory and executing it. There is no requirement that a program be physically present at all times, to become part of the machine, such that the machine becomes permanently altered. Had the C.C.P.A. and/or Federal Circuit made this simple requirement they would have been on technically sound grounds, but that would have left people who wanted to patent algorithms without a statutory basis for their claims.

      It is high time for the Federal Circuit to review and reverse Bernhart.

      1. 10.4.1

        Ned,

        Your version of Benson falls apart with these five words:

        We do not so hold.

        Please note, acknowledge and integrate this understanding. Please stop injecting noise into the conversation.

        1. 10.4.1.1

          Again anon?

          What is the difference between categorically eligible and possibly eligible, if anything?

              1. 10.4.1.1.1.1.1

                Silly Ned, the quote in the post you responded to.

                You know: “We do not so hold

  9. 9

    “The case also offers some hints to the ongoing debate over subject matter eligibility of computer implemented inventions. In particular, the court reiterated its prior statements that a “the general purpose computer becomes a special purpose computer when loaded with the special programming.”

    Overruled. Application of Bernhart said the programming altered the memory circuits and machine was “new” or “improved” with the meaning of 101. Alice finally put that idea to bed from a 101 point of view. RIP. But, as we know, a programmed computer is not physically altered in any permanent way by executing a program. At best, “program memory” comprises today very fast, volatile memory that takes a particular state when executing a program. That state may last as few as a few microseconds, but it does not survive the computer being powered off. The computer is not changed.

    What Bernhart did was not factually correct even at the time Bernhart said it. It cited no expert opinion, nothing. People skilled in the art knew the CCPA was technically wrong when it said it.

    Today courts know that computers are not changed by programs, but still seem wedded to Bernhart. It is about time the Federal Circuit address its errors of the past and begins fixing them, rather than perpetuating them.

    Programming defines a new “process” conducted by the computer which is essentially mathematical. The programmed computer can be applied to new applications and when claimed that way, they might form parts of patentable processes, systems or larger machines.

    But a program by itself is not a machine or manufacturer, and is not a process. It is a statement of instructions useful in a computer.

    A programmed computer is not a new or improved machine.

    But, again, its use in a larger process, system or apparatus is entirely patentable subject matter.

    1. 9.1

      You forgot to work in there natural law and Hotel Security.

      Of course your position is that of Benson’s that is the root of all evi1.

      1. 9.1.2

        Night, we now have the Federal Circuit saying that algorithms are structures. If so, can you tell me how many are rhythms it takes to fill a breadbox, how much I were the does it take to fill a balloon, and if you load enough algorithms on a ship will it sink?

        The Federal Circuit long ago went off into a universe of make-believe in an effort to declare program computers to be statutory by themselves. That was actually the C.C.P.A. in the infamous case of application of Bernhart.

        Lunacy. The court is composed of lunatics.

        1. 9.1.2.1

          Oh come on Ned, they’re not lunatics. They’re just doing what they think their “constituency” wants. That is, the companies who come before them asking for software to be patentable/eligible and who then turn around and lobby congress with $$$.

        2. 9.1.2.2

          Of course there is a relationship between algorithms in the spec and structure.

          As you have been told numerous times, there is an equivalent special purpose chip to perform those algorithms.

          Frankly, I don’t feel like typing in the arguments again. Either you are the same as squirrel or there is structure.

          1. 9.1.2.2.1

            Night, find me one expert, just one, preferably a PhD in computer hardware design, with long experience, who will testify under oath that computer algorithms are structure.

            Just one.

            And of course, you may claim to be that person. But I would say that if I would judge the courtroom I would not qualify you as an expert because I don’t think you have much experience if any computer design.

            You could explain to me all day long what you think are equivalents. But I have tried to explain to you, slowly, with simple words so that you may understand, that equivalence is in context. Remove the context and you are talking in abstractions. And that’s where you prefer to stay, in some make-believe world. No one not financially interested in the outcome will believe anything you say on this topic because it is nonsense.

            1. 9.1.2.2.1.1

              Ned, seriously, do you think that anyone that understands this subject matter thinks your arguments hold any water? They are logically inconsistent and frankly ridiculous. Not only that but you continue to dodge the main issue—structure. Nice game of talking about the algorithms so the science illiterate will conjure up an image of a page of text, but we all know that page of text defines a machine and a special purpose chip to implement that algorithm.

              Big picture: is there structure or not? Your argument is that a machine can perform a function with no structure. I understand that the anti-patent movement lead by Lemley has repeated said this. Lemley even wrote that software has no structure in one of no peer reviewed vanity pieces.

              So, you want to hold that there is no structure. Machines that perform different functions with no structure. Wow.

              And, again, we see your demeaning ridiculous arguments “merely calculating numbers” appear. What you do for a living Ned is process information just like these machines. And your attempt to try to holistically treat the processing machine as if it is only patentable if the entire machine is included is nonsense. That is similar to David Stiein’s example in this thread about the tires. You want to say that no component of the entire machine is independently patentable, but only the entire machine. If the entire machine is patentable, then of course components of the machine are going to be patentable. You want to say the equivalent that engines are patentable, but only if you claim the body of the car to. Nonsense.

              Face it: you have no logical or scientifically consistent position. You deny reality. Why don’t you lot give it up. Admit that Benson is nonsense and if you want to change 101 go to Congress instead of having Obama load the Fed. Cir. and hire directors to burn the system down. What a toxic lot you are.

              1. 9.1.2.2.1.1.1

                Night, “Your argument is that a machine can perform a function with no structure.”

                Hardly.

                And what is pitiful, is that you know that is not my argument.

            2. 9.1.2.2.1.2

              And to your question Ned about PhDs, I work with people with PhDs from the top schools all the time. They work for the top hardware companies in the world–by far.

              This is what they say to me all the time, “There is no difference between software and hardware. I can push any function from hardware to software, or from software to hardware.”

              That is what they say. I have head that hundreds of times–hundreds.

              As to me, I have designed software systems. I have designed hardware systems that others built. I have done this for consumer products where tens of millions were built.

              1. 9.1.2.2.1.2.1

                And in fact Ned, the only people I hear say the nonsense about software being some kind of expression or that it should not be patentable is from people that are not well educated.

                Typically people that say that are people who have a BS in computer science from a mediocre school where practice was emphasized over theory.

                That is reality. Just as it is reality that Lemley’s “functional” nonsense is nonsense. Please go to one of the sites that contract out software and look at the language used to describe the software where people make real contracts to build the software.

                It is the same language that the likes of MM and Lemley say are nonce words and functional without structure. =><=

                Not possible that what they say is true and at the same time these words are used to contract out real software.

                Shameful that people like Lemley exist in the modern world.

              2. 9.1.2.2.1.2.2

                So, top people from top schools explains things to you and you still do not get it? You might pause and listen, Night.

                1. Ned,

                  You are the one not gettin it.

                  You have a desired ends and are willing to do – and say – whatever to get there.

                  Time for you to stop your nonsense.

        3. 9.1.2.3

          What exactly Ned do you performs all these functions like driving a car, playing chess, recognizing someone’s face or voice?

          Do you think machines can do that without structure? What is lunacy is you and the other anti-patent for information processing continue to push arguments that are counter to science.

          Remember: information processing takes time, energy, and space. Conservation of information is the most important law in physics. I even provided a link to a Stanford physics professor explaining this to you and to which you argued endless it wasn’t true.

          You are the lunatic and very destructive one at that.

          1. 9.1.2.3.1

            Stop at Night. Please. I don’t know how many times I consistently say that the use of a program to computer in the larger context, a larger machine, a larger system, a larger process, is entirely patentable subject matter. But that does not mean that one can simply say that a program computer by itself doing no more than calculating numbers is patentable subject matter simply because a computer is a machine.

            I don’t know how many times I have to make this distinction to you. I make it every time I say something to you on this topic. I say it again and again and again and again and again and again and again and again and again and again and again and again and again and again and again and again and again and again and again and again and again. It never seems to sink in.

            1. 9.1.2.3.1.1

              Just sheer nonsense Ned. You process information for a living Ned. That is what you do. It is so odd the way you anti-patent people talk about information processing machines. I liked the one where Taranto said that it was merely an expert system where a boy goes and programs it. Guess what? I know someone that spent 6 years of their life designing those expert systems in the late 1970’s. I am sure he has an IQ of 170+ and it was the hardest thing he ever did.

              Face it: it is the rise of the machines that process information. They can’t do that without structure no matter that Mark Lemley proclaims software has no structure.

              1. 9.1.2.3.1.1.1

                Night, there is a difference between a circuit that has two states and a “1.”

                That you continue to assert to everyone that they are the same thing is why we can never progress in any conversation.

                1. Ned is venturing into his weeds yet again with the “1.”

                  First, the “1” on its own is not software.

                  Second, Ned, how much does the space in Morse’s allowed (yes, allowed) claim weigh?

                  We’ve been on this dissembling Merry Go Round of yours time an again.

                  You need to stop.
                  You need to recognize the counterpoints presented.
                  You need to acknowledge these counterpoints.
                  You need to integrate these counterpoints.

                  Until you do so, all you are doing is injecting noise.

                2. A ‘1″ is not software, yet, all software in a computer is composed of nothing but “1’s” to the extent we are talking about the physical state of the machine when programmed. But even so, describing a particular circuit has being a “1” is simply a description of one of its stable states – a particular flip flop or memory cell having its output at either one of two possible voltage levels.

                  A song is composed of notes. To determine what a song is, why cannot we first discuss a note?

                  But, when one is executing a program, one is progressing step-by-step through a progression of machine states. What is actually executed in terms of instructions may roughly correspond to a stored program, but not necessarily. It depends on the machine, other software and context. But, still, when one claims an programmed computer, one is only claiming the machine process because that is all that matters.

                3. Tell me of electrons, protons and neutrons Ned – as they are the (ineligible of themselves) things that compose everything else.

                  And please leave the canard of music outside of a patent law discussion.

                  And as also pointed out, try not to confuse yourself between the execution of software and software as they are different things. If one wants to claim a process they can claim a process. If one wants to claim a manufacture, they can claim a manufacture. Please stop embarrassing yourself with your notion that the manufacture that is software is somehow “magically” only “really” a process. That’s as b@nal as thinking that the thought of software is the same as software.

            2. 9.1.2.3.1.2

              Ned, your holistic argument is laughable. So the engine of a car is patentable, but only if I claim the light on the dashboard to. Do you really think that it is not obvious that is merely a device to try to limit patentability?

              Seriously. Have. You. No. Shame.

              1. 9.1.2.3.1.2.1

                No, Night, a engine of a car is a machine.

                If the improvement is in the engine, claiming the car is hardly “particularly pointing out” within the meaning of 112.

                Couple a microprocessor to an engine to change its fuel mixture. That is an improved engine.

                The problem is, Night, you want to separately patent the algorithm’s of the microprocessor, which are abstract representations of code. Now if one would add that the code is physically required to be present more than on a temporary basis, I begin to agree that one might be able to patent the microprocessor for the engine with the improved algorithm.

                1. The reality Ned is that the processor is an engine to process information. That processor plus algorithm is every bit a machine and engine as the gas engine. It has structure. It takes time, energy, and space to process information. Re-read that last sentence 10 times Ned.

                2. Ned, stop your dissembling games.

                  Take the Grand Hall experiment.

                  Take the Nazomi case.

                  Take that required first step that you like to pretend does not exist, that first step that requires that before you can merely “use” software on a machine, that you first have to change the machine (physically) and configure the machine with the software component.

                  You (again, as I have pointed out many many many times) dive into a misdirection of “permanence,” where there is no such legal requirement.

                  When you powered up your computer this morning, did you personally write from scratch all (or any) of the software on the computer? Did you add anything to the machine? Or were these important first steps already done?

                  As in the Grand Hall experiment, for your view to have ANY meaning, you first need to strip out all of that software.

                  You don’t do that, do you?

                  Let’s try a simple exercise to see if you can grasp this simple fact of this reality.

                  Step one (showing the reality of software in there). Turn off your computer. Unplug it from the power source. Try to type and send a message in response to this post.

                  Doesn’t work all that well does it?

                  Now, reconnect and power up. Gee a message happens now.

                  Step two. Eliminate all software from your machine. Now, with your no-software, but otherwise “identical physical machine” powered and connected, try to send your message.

                  Oops.

                  Doesn’t quite work, does it.

                  Step three: weigh your “physical” machine with software and then again without software. Tell me why the lack of difference in weight has any bearing on the plain fact that the two machines are clearly different. And they remain clearly different even when the machines are unplugged. Unless you think that somehow there is magic involved with plugging in the machines…

                  Clearly, and clearly so to everyone, PHD or kindergartner, two otherwise identical machines, but one of the machines changed and configured with software while the other is not changed with the added machine component of software are just NOT the same machines – plugged in or not plugged in.

                  Plainly Ned, for your position to hold sway, you must believe that “magic” somehow occurs in order that a machine without any software is the same machine as machine with software.

                  You cannot logically act or believe that software is somehow not a machine component while seeing the clear logical result that you need to have that component in order to see the difference in machine capability that plainly exists between a machine with no software and a machine that has been changed (physically) and merely prepared to be used (that is, even before the mere “use” of the changed machine – your often “skipped first step”).

                  Learn.
                  Accept.
                  Acknowledge.
                  Integrate.
                  Stop your dissembling.

            3. 9.1.2.3.1.3

              Ned,

              The problem is you.

              I don’t know how many times I have to make this distinction to you. I make it every time I say something to you on this topic. I say it again and again and again and again and again and again and again and again and again and again and again and again and again and again and again and again and again and again and again and again and again. It never seems to sink in.

              You keep on doing this all the while ignoring the counterpoints made that wreck your position.

              You need to listen, acknowledge, and integrate.

              Stop making noise, and pick up the signal.

  10. 8

    I think Prost’s opinion is quite helpful in sorting through Katz, Alappat, Bilski, et al. but he pretty well dorks it when he asserts that the algorithm is the structure. What is he talking about? Twice he cites WMS Gaming v. Int’l Game Tech (1999), but that is not what WMS says.

    WMS very clearly holds that the structure for a computer-based MPF element is the microprocessor as modified by an algorithm. A microprocessor is a physical entity, therefore it has (and is interpreted to have) MPF structure and should be described in the spec as the means for doing what the algorithm says. (That the algorithm should be explicitly stated in the spec and shown in figures almost goes w/out saying.)

    I don’t see any statement in WMS Gaming that the algorithm itself is structure – Prost’s assertion is metaphysically absurd. Prost is writing new law here and passing it off as settled. Now every dude and his donkey will be writing machine claims with computer-implemented MPF elements and asserting that an algorithm is the structure. (If you want to argue that the algorithm doesn’t exist outside the machine it directs and is therefore equivalent to structure, I’ll send you a few thousand lines of C++ of a program I’m working on.)

    I would agree that if a claim were written as a process and you had a step plus function element, then the algorithm disclosed in the spec would be considered a disclosure of the steps for performing the function. But there is no structure requirement, per se, in process claims.

    BTW, I am not in a great flap about MPF claims. They are still very helpful. If I have an element of a claim that could be carried out by 10 different structures, instead of writing 10 dependent claims, I inventory all of the structures in the spec, identify them each as “means” for doing the function, throw in some “and equivalents” language, and wrap them all up in a single MPF claim – presto! I’m good to go and I’ve got my Festo-proof, non-Doctrine of Equivalents equivalents. (But I would never do this with an independent.)

    1. 8.1

      WMS very clearly holds that the structure for a computer-based MPF element is the microprocessor as modified by an algorithm.

      Right, so you need to disclose the algorithm to describe the processor, because it’s not a general processor but a specialized processor. When the means term is a processor configured to the structure is the processor and the algorithm. When the processor is a separate limitation from the code (as here, “replaceable software means”) then the algorithm itself is the structure for the term. Either way you need to disclose both the processor and the algorithm.

      1. 8.1.1

        RG, IMO your last sentence, sans the “either way,” is clear and is a correct summary of WMS. But the inaccuracy of your penultimate sentence is what my criticism of Prost was all about.

        An algorithm is not structure under any definition, except, possibly, one concocted by Lewis Carroll as he passed the bong around . . . or Prost. To say that an algorithm is structure is to misapprehend what the word “structure” means, or what an algorithm is, or both. It is also to misapprehend what the CAFC said in WMS.

        More specifically, I have called out Prost for misstating WMS, which does not say that an algorithm is structure.

        In the context of these computer-implemented MPF claims, anyone who claims or describes a microprocessor that is separate from the code, as you put it, is wasting everyone’s time and his/her client’s cash. Likewise, anyone who claims or describes an algorithm that is separate from a computer/microprocessor/or some other physical structure is doing the same — unless the algorithm is part of a process claim or SPF element, which requires no structure.

        1. 8.1.1.1

          Well the code that describes an algorithm can be stored and it can make physical difference to the medium it’s stored on, but I agree that the code describing instructions for the algorithm is not the same as the algorithm itself.

          unless the algorithm is part of a process claim or SPF element, which requires no structure.

          This is where you and Prost diverge I think. If you just think about a method, the method under patent law has structure – a series of acts taken. Contrast that with a method described in “step for” language – that method has no structure, it merely describes what is to be achieved and you seek the spec for the acts to achieve it. There are structural and non structural methods, and an algorithm is nothing more than a method of the structural type.

          If you think about “1. means for X” doing nothing but calling “a method to achieve X comprising: concrete acts ABCD” (which resides in the spec rather than another claim), patent law recognizes the acts ABCD as being a structure.

    2. 8.2

      If I have an element of a claim that could be carried out by 10 different structures, instead of writing 10 dependent claims, I inventory all of the structures in the spec, identify them each as “means” for doing the function, throw in some “and equivalents” language, and wrap them all up in a single MPF claim – presto! I’m good to go and I’ve got my Festo-proof, non-Doctrine of Equivalents equivalents. (But I would never do this with an independent.)

      Of course, this presumes that you and the inventor are reasonably certain that you can identify every possible variation of the element that would suffice.

      I can’t imagine any circumstance where I cold claim that level of confidence. I have too much faith in ingenious design-arounds.

      1. 8.2.1

        David: ingenious design-arounds.

        Otherwise known as “progress”.

        Love it when the truth leaks out.

        1. 8.2.1.1

          Otherwise known as “progress”. Love it when the truth leaks out.

          ^ Fact here. This is David arguing for pure functional claiming which is clearly inappropriate.

          Ingenious design-arounds are their own invention. You can’t use functional language to capture them for yourself, Morse.

          1. 8.2.1.1.1

            You use the word “pure,” but clearly that word is not properly being used to describe David’s position.

            Separately, it is of no real surprise that non of the anti-software patent folk have picked up the inherency doctrine that is infused in the cases here.

            1. 8.2.1.1.1.1

              You use the word “pure,” but clearly that word is not properly being used to describe David’s position.

              Of course it is, Babel says to use means-plus to nominate the elements which achieves the function. David says he doesn’t like means-plus because his inventor might not conceive of an element that achieves the function, yet someone else would (i.e. they would “ingenious[ly] design around” the element). David is arguing for a purely functional standard of infringement, i.e. I circumscribe the result regardless of whether I considered whether this element would get me there.

              1. 8.2.1.1.1.1.1

                Clearly Random, your view is off.

                Your bias and Belieb system of anti-any-“function” is showing.

              2. 8.2.1.1.1.1.2

                David is arguing for a purely functional standard of infringement, i.e. I circumscribe the result regardless of whether I considered whether this element would get me there.

                Random, your position is starting to polarize in a way that makes your arguments less persuasive. It seems that you’re expressing two views of patent law:

                Only structural elements are allowed, and all of those structures must be specified in hyper-specific detail because you only get coverage of the exact structures that you disclosed (and some range of equivalents that is undetermined, and also completely unreliable).

                Patent law allows purely functional claiming, and the sky will fall in.
                Is there no room in your conception of patent law between these extremes?

                1. (this time with correct formatting…)

                  Random, your position is starting to polarize in a way that makes your arguments less persuasive. It seems that you’re expressing two views of patent law:

                  A) Only structural elements are allowed, and all of those structures must be specified in hyper-specific detail because you only get coverage of the exact structures that you disclosed (and some range of equivalents that is undetermined, and also completely unreliable).

                  B) Patent law has absolutely no limits on functional claiming and allows “pure” functional claiming, and the sky will fall in.

                  Is there no room in your conception of patent law between these extremes?

                2. Only structural elements are allowed, and all of those structures must be specified in hyper-specific detail…Patent law allows purely functional claiming, and the sky will fall in.
                  Is there no room in your conception of patent law between these extremes?

                  My view is that equivalence is equivalence and you can only claim structures and their equivalents no matter what form (112f or not) you use. When you use functional language its inherently removing one of the requirements of equivalence (substantially the same manner). Now it may be that the functional term you describe just happens to frame the functionality in such a way that everything covered would occur in substantially the same manner (i.e. you would blunder back into validity), but that is the extreme exception to a rule.

                  You can’t capture anything more outside of 112f than you could within it, because a specification discloses structures, and the art would view a range of equivalents to those structures and that’s all you get, and any attempt to take more than that is just an overbroad claim.

                  I’m largely unconcerned with whether the sky falls in. There’s clearly certain areas where the sky falling in would improve the current state of patent law. There are rules that were laid down by the supreme court which have not changed but have been largely moved away from by an inferior court. That court is wrong. Perkin’s Glue is good law. Wabash is good law. Halliburton but for it’s claim construction is good law. Morse is good law. Lizardtech is good law. The federal circuit doesn’t get to rewrite these cases just cause some of its pro-patent members were/are in favor of it.

                  These are statements in those cases. They describe the most common types of claiming that go on today –

                  A claim so broad, if allowed, would operate to enable the inventor who has discovered that a defined type of starch answers the required purpose to exclude others from all other types of starch and so foreclose efforts to discover other and better types. The patent monopoly would thus be extended beyond the discovery and would discourage rather than promote invention.

                  The claim uses indeterminate adjectives which describe the function of the grains to the exclusion of any structural definition, and thus falls within the condemnation of the doctrine that a patentee may not broaden his product claims by describing the product in terms of function

                  The language of the claim thus describes this most crucial element in the “new” combination in terms of what it will do rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus. We have held that a claim with such a description of a product is invalid as a violation of Rev. Stat. 4888.

                  suppose that an inventor created a particular fuel-efficient automobile engine and described the engine in such detail in the specification that a person of ordinary skill in the art would be able to build the engine. Although the specification would meet the requirements of section 112 with respect to a claim directed to that particular engine, it would not necessarily support a broad claim to every possible type of fuel-efficient engine, no matter how different in structure or operation from the inventor’s engine.

                  For he says he does not confine his claim to the machinery or parts of machinery, which he specifies; but claims for himself a monopoly in its use, however developed, for the purpose of printing at a distance. New discoveries in physical science may enable him to combine it with new agents and new elements, and by that means attain the object in a manner superior to the present process and altogether different from it. And if he can secure the exclusive use by his present patent he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery, upon the records of the patent office. And when his patent expires, the public must apply to him to learn what it is. In fine he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent. The court is of opinion that the claim is too broad, and not warranted by law.

                  My view is irrelevant. The court’s view controls. You’re ascribing a rigidity to me that is not mine, it is the law’s.

                3. Random, I like these quotes from United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 233-4, (1942). as well:

                  “The correct degree of friability can be ascertained only by testing the performance of the product in actual processes of manufacture of products of which carbon black is a component. …

                  “For “strength” “we have this rough and ready test: does it survive under gentle rubbing of the fingers. I would not say that is an adequate test to predicate rubber behavior on, but it is a rough and ready test”; and if it responds to that test it is a pellet within the meaning of the claim. …

                  “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. Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 256-258; General Electric Co. v. Wabash Corp., supra, at 371-372.”

                  Actually, if one must build and test it to see if if works, one really is claiming a result — if it works, you infringe.

                  But I have said before, if a function statement refers to well know structure, materials, etc., then the there really is nothing wrong in just claiming them functionally. These well known structures cannot be the novelty of the invention and the claim should cover all known structures, etc., that provide the function, with the emphasis on “known.”

                4. My view is irrelevant. The court’s view controls. You’re ascribing a rigidity to me that is not mine, it is the law’s.

                  Once again Random, this is where you go off the rails by not recognizing what happened in 1952 and the simple fact that you want pre-1952 Judicially written law to trump the law as written by Congress.

                  I “get” that you do not like what Congress did.

                  But you are indeed irrelevant to what Congress did.

                  Stop.
                  Listen.
                  Learn.
                  Integrate.

                5. by not recognizing what happened in 1952 and the simple fact that you want pre-1952 Judicially written law to trump the law as written by Congress.

                  Show me a case that says that this jurisprudence is overturned. It seems unlikely that you will, given that in the past two years Alice cited to Morse and this very case cited to Wabash.

          2. 8.2.1.1.2

            > This is David arguing for pure functional claiming which is clearly inappropriate.

            Er… all I wrote here was that I don’t like means-plus-function claims.

            1. 8.2.1.1.2.1

              The way I took it (and I don’t think I’m putting words in your mouth here, please tell me if I am) is that you don’t like means-plus BECAUSE means-plus would allow for “ingenious design-arounds” of an element to escape the scope of infringement. The natural implication from that is that non-means-plus claiming COULD capture “ingenious design-arounds” and was therefore better. This is what you meant, yes?

              1. 8.2.1.1.2.1.1

                In this particular thread of comments, I’m not advocating for any alternative – functional claiming or otherwise.

                I actually meant it in a complimentary sort of way. Inventors can be so ingenious that I literally cannot imagine a scenario where I could confidently state: “My team of inventors has enumerated every conceivable equivalent for this item.” I have met enough truly genius inventors to know that there is no upper bound on inventorship.

                But since you’re asking how this belief fits into my “bigger picture”: If I *were* to recite the element according to its function, I *also* trust that those same inventors could design around the functionally claimed variant – probably with an alternative that’s more efficient, cost-effective, and better in a half-dozen other ways.

                This is actually why cases like Biosig are grating. If Nautilus wanted to implement a heart monitor like Biosig’s, it should have (a) cut a check for a licensing fee, or (b) put its invention team to work on a better version. Instead, it chose option (c): just steal the invention, and try to dodge infringement claims by manufacturing confusion over an irrelevant part of the claim. How much money have both Nautilus and Biosig blown on legal fees – a district court hearing, two Federal Circuit panels, and a trip to the Court? And to what end?

                It’s reminiscent of NTP v. RIM: instead of just paying a modest licensing fee for important technology, RIM fought and fought, and manufactured tons of spin, and worked up Capitol Hill into a lather about everyone’s CrackBerries getting shut down… and in the process, blew its tech momentum and eventually went belly-up. Such a waste.

                1. Instead, it chose option (c): just steal the invention, and try to dodge infringement claims by manufacturing confusion over an irrelevant part of the claim.

                  Can we break this down a bit?

                  First, Biosig in fact knew of a value that achieved the functionality, they just chose not to disclose it. Instead of simply writing “X inches” they defined a nebulous effect (“substantially cancels out”) and claimed that. Why is that reasonably certain? Why does Biosig get to substitute what they actually knew and could easily convey for something more vague?

                  Second, the effect of not disclosing what they knew is to make the inherent analysis of patent law undoable – How can we determine how similar what Nautilus did is to what Biosig did if we don’t know what Biosig did? Suppose (and here we have to guess because we’ve been denied the data) that Biosig had a value that eliminated 80% of the noise. What if Nautilus found a different value of 98% of the noise? Does the 18% difference matter? It’s certainly something that can be argued about, but Nautilus is foreclosed that argument.

                  Third, let us assume that Nautilus actually did improve the art – we can’t determine whether Nautilus’ actions are non-obvious vis-a-vis the Biosig reference because we can’t compare the values. That puts the public at risk of having the exclusionary period extended beyond 20 years. That also puts the public at risk of never having the benefit of Nautilus’ knowledge, because why would Nautilus seek a patent when all of it’s licensees are subject to Biosig’s suit.

                  In short, you can’t perform an analysis because Biosig took away your tools. The effect of that is to insulate their claims from proper review, possibly harm Nautilus and certainly put the public at risk.

                  When you say I *also* trust that those same inventors could design around the functionally claimed variant – probably with an alternative that’s more efficient, cost-effective, and better in a half-dozen other ways I have to ask how do you know that this isn’t what Nautilus is doing? Why do you assume Nautilus was copying when it could have been innovating? In fact, if Nautilus had completely eliminated the noise (something that would clearly be an improvement over substantially eliminating) it would STILL be infringing despite the fact that there’s a qualitative difference between Nautilus’ system and Biosig’s. But why would Nautilus disclose its better system when Biosig still controls the licensing?

                2. I posted all about this yesterday in the other thread, Random. But as a succinct answer, here’s how I see all of Biosig:

                  Applicant: We’ve invented a new kind of engine with a continuously variable transmission. So we claim: a vehicle with an engine with a transmission comprising (ABC), connected to an axle that drives some wheels.

                  Examiner: Here’s a prior art reference of an engine that also has a transmission.

                  Applicant: Er, no, see, that’s just a normal transmission. We’ll amend the claims with some whereby clauses to explain how (ABC) functions.

                  Examiner: Looks good, but the claims are missing an ignition.

                  Applicant: Okay, we’ll add an ignition to the claims.

                  Examiner: Great – allowed!

                  Competitor: Hey, you didn’t say what kind of tires need to be used.

                  Inventor: Er… this is about the engine, and the fact that it has a CVT. It doesn’t matter what kind of tires you use. Snow tires, performance tires, run-flat tires, big knobby 4×4 tires… use whatever tires you want.

                  Competitor: Will some tires work better than others in some cases?

                  Inventor: Um… I guess? I mean, if they’re the wrong size or not inflated well, they might work better –

                  Competitor: Look! The claim is indefinite! They didn’t tell us what kinds of tires to use.

                  District court: Yes! The claim is indefinite!

                  Federal circuit: No, it’s not. It’s only invalid if it we have absolutely no idea what you mean.

                  Supremes: Hmm, that’s going a bit far.

                  Federal circuit: Okay. It’s only invalid if we’re not pretty sure about what you mean. And we are, so it’s not.

                  Internet commentators: But they didn’t say what kinds of tires! This is a travesty!

                3. Federal circuit: No, it’s not. It’s only invalid if it we have absolutely no idea what you mean.

                  Except that’s not all that first opinion said. The first opinion said “I see you’re having trouble getting your tires to move the car. You attribute that to the fact that the particular tires that would make this car go aren’t described. We choose to view the general class of ‘tires’ as being described, and your inability to select the proper set as a question of undue experimentation, which isn’t before us. That way, we can avoid the question of whether this guy actually conveyed a working car by compartimentalizing your issue into a different box that only asks if a working car could be made. And by the way, it becomes an enablement issue whenever we can ascribe any meaning at all to the words.”

                  It has the effect of writing 112(b) out of the statute, and (b) has it’s own substantive reasons for existing – not the least of which is what I say above and you don’t really respond to: What if Nautilus actually advanced over Biosig? What if Nautilus completely eliminated the detrimental effect that Biosig only substantially removed?

                4. The first opinion said “I see you’re having trouble getting your tires to move the car. You attribute that to the fact that the particular tires that would make this car go aren’t described.”

                  I agree entirely (ha ha) that enablement and definiteness are distinct concepts. In fact, they’re orthogonal – consider the pro-se applications that provide ultra-specific details about how the warp drive or perpetual-motion machine works…

                  But the first Federal Circuit decision was enti – er, completely – about definiteness, not enablement. The word “enablement” does not even appear once in its opinion.

                  Consider this specific problem (the spacing of the electrodes) as a spectrum of complexity. On the one hand, it’s an intensely difficult problem – such that if the inventor didn’t provide specific details, the invention is unusable without undue experimentation. That’s your argument, but it is not how any of the courts – or Nautilus, for that matter! – treated the issue. Rather, they regarded it at the opposite end of the spectrum: such a routine and straightforward engineering task that the details don’t even matter, that it the actual placement is nothing more than a design choice.

                  So, as for this:

                  What if Nautilus actually advanced over Biosig? What if Nautilus completely eliminated the detrimental effect that Biosig only substantially removed?

                  Then that would be a further advance, over and above what Biosig taught.

                  Of course, this would require showing that “complete elimination” isn’t just finding the optimal point within the “substantially removed” range. After all, if Applicant A discloses that a chemical has beneficial effects if used within the range of pH 8.6 to 8.9, a claim by Applicant B that the benefits are maximized at 8.72 isn’t a patent-worthy advance – unless there’s something unexpected about 8.72.

                  Presuming that’s true, Nautilus could patent the added improvement, right? And if Biosig changed its product to focus on that range, it would then be liable for infringement to Nautilus, despite its earlier-but-less-sophisticated patent. But Nautilus couldn’t practice Biosig’s patent, either.

                  And this is so straightforward that it’s unremarkable. If you patent an engine, and I come up with an improvement, does my improvement bequeath a license to use your patent? No, that’s just not how patents work.

                5. But the first Federal Circuit decision was enti – er, completely – about definiteness, not enablement. The word “enablement” does not even appear once in its opinion.

                  “Hence, inquiries as to the size of the users’ hands, placement of fingers, and the “composition of the handle” may be relevant, if at all, to issues that relate to enablement under § 112, ¶ 1, not indefiniteness under § 112, ¶ 2, because they are directed to the operability of varying embodiments of the claimed heart rate monitor, not to the precision of the claims at issue. Accordingly, these objections do not address the inherent parameters set forth in the intrinsic evidence.”

                  No, the very problem in this case is that location of sensors was described by function (positioned such that they achieve a result) rather than by structure (actual location). Wabash forecloses this, which is why Wabash was cited to by the Supreme Court when they took it, and it’s why Nautilus will win if they go up again. If you know of and can convey a structure (and clearly they could) then you can’t expand your scope by claiming all the structures that achieve a function rather than the structure that you know of.

                  Consider this specific problem (the spacing of the electrodes) as a spectrum of complexity…Rather, they regarded it at the opposite end of the spectrum: such a routine and straightforward engineering task that the details don’t even matter, that it the actual placement is nothing more than a design choice.

                  EXACTLY! See when you view the invention as “anything that achieves the result” and the placement that the inventor knew of as a design choice that is not an invention. That is, and you probably have trouble accepting this, a textbook abstract idea case. You can’t say “my invention is substantially cancelling out signals” and then say “but the manner in which it is achieved is irrelevant” because when one replaces “cancel out signals” with “print at a distance” you get Morse. Your invention is never achieving a result regardless of how it is achieved.

                  You HAVE to view the case as the specific location actually being the important part of the invention (i.e. Nautilus’ argument). The invention was the particular means the applicant discovered, the particular placement of the electrodes, and they weren’t disclosed . Their function was disclosed, but defining by function when structure could be conveyed is not reasonable certainty, see Wabash.

                  The Supremes cite to Wabash when they discuss the case, maybe go look at Wabash, see how that was found indefinite, and see how much infinitely easier it would be to describe the spacing here than the shape of crystals there, and it will be obvious this case can’t come out any way other than a 112(b) violation. Now theoretically Biosig could win, because theoretically the court could conclude that they couldn’t convey it with more reasonable certainty, but the facts of this particular case belie that conclusion, because actual distance is both measurable and conveyable.

                  Of course, this would require showing that “complete elimination” isn’t just finding the optimal point within the “substantially removed” range.

                  No, because there is no proof that Biosig had a “range” at all. You’re taking claim language and using that to drive the specification, which is backwards. You look at the specification and determine if it supports the claim. There is no proof that Biosig had a range of values that achieved substantial removal. The court made up a range (“not together and not wider than a hand”) but those have to do with the gripping the device, not what actually achieves the result. Nautilus doesn’t need to optimize a range because there is no range conveyed.

                  Biosig could have found that a distance of half an inch did pretty well in cutting down noise, say 80% and stopped. Nautilus could have discovered that 1.7634 inches completely eliminated the noise. Did Biosig ever have Nautilus’ 1.7634 inch value? No. Is the 1.7634 value of a substantially different character than .5? Yes, in terms of means they’re very different number when we’re talking about the range of a hand-width and yes in terms of result – 80% versus 100% elimination. True or False – the art could find that 1.7634 is not an equivalent value to .5 and yet Nautilus would still be liable to Biosig under it’s claim language given the holding of this case?

                  If you patent an engine, and I come up with an improvement, does my improvement bequeath a license to use your patent? No, that’s just not how patents work.

                  If I come up with an engine A and you come up with engine B, the first question is whether A and B are the exact same. If they are, you infringe. If they are different in some respect there is a standard by which we determine whether that difference constitutes an improvement upon the same engine such that you are derivative of me, or a wholly different engine such that you take without being subject to my grant. If the art would view engine B as a wholly different engine, no amount of cute wordplay on my part will craft a valid scope that reaches your engine.

                  If I developed a new gas engine and claimed “an engine that gets over 40mpg” and you come along with the first hybrid electric engine and it gets 100mpg, you may infringe my claim, but my claim is going to be found invalid because the art would find that a hybrid engine doesn’t go about the process of engine-ing in the same manner that a gas-only engine does and that I had not enabled a hybrid engine. Biosig sought to avoid the extremely important “determine whether that difference constitutes a new engine or not” by refusing to disclose what they did. We can’t determine whether A and B are different, and the fault lies entirely at the feet of Patentee A. That’s why Patentee A is going to lose this case.

                6. Can I point out this is exactly the kind of overbroadening the court was worried about. If you limit Biosig’s invention to the distance values he knew about then you have an equivalence debate over whether what Nautilus did was of a different character such that they infringe or not. Maybe the art would say the values are equivalent. Maybe there’s infringement. That’s fine. But Biosig doesn’t want to get into that argument (for at least the reason that it makes liability harder to attach) so they just expanded their scope to begin with, and made a question of equivalency into a question of literal infringement. That’s not fine, because they don’t get to appropriate the law’s investigation and just assume it comes down in their favor. Then people come along and start discussing the claim language (which, to be fair to you guys makes sense since its entitled to a presumption of validity) and whether Nautilus meets it. But always always always the only question is whether what Nautilus made fell within what Biosig’s spec had proven they had. You can’t infringe by achieving the same results in an unequivalent manner.

                  Some lawyer tried to expand their scope and some legally-untrained patent examiner said okay and now you’re running around saying the question is “Does Nautilus achieve substantial removal?” The question is only “Did Nautilus do something equivalent to what Biosig did?” We don’t know what Biosig did. So we can’t answer that question.

                7. Wabash forecloses this, which is why Wabash was cited to by the Supreme Court when they took it, and it’s why Nautilus will win if they go up again. Wabash forecloses this, which is why Wabash was cited to by the Supreme Court when they took it, and it’s why Nautilus will win if they go up again.

                  Okay, tell you what: if Nautilus appeals again and if the Supreme Court accepts cert and if the Supreme Court then reverses the Federal Circuit’s decision on this specific issue, then we can agree that the system of law that you’re proposing is the law of the land.

                  Until then, you are postulating an interpretation of patent law that is directly contrary to the very Federal Circuit Biosig opinions – two of them, in fact! – that we’re discussing. It’s also directly contrary to the claims that were upheld in DDR Holdings, and Diamond v. Chakrabarty, and a large number of other cases.

                  Do you remember writing, just a few days ago, that “my view is irrelevant; the court’s view controls?” Why does your interpretation of patent law “control” over the Federal Circuit’s decisions on this issue?

                  (And no, you don’t get to interpret the SCOTUS decision as a blanket repeal of the Federal Circuit. That opinion asserts only that the Federal Circuit’s definition of indefiniteness was too conservative. It did not state anything at all about the validity of Biosig’s claims under a less conservative standard.)

                  See when you view the invention as “anything that achieves the result” and the placement that the inventor knew of as a design choice that is not an invention.

                  Right: the placement of the electrodes is not Biosig’s invention.

                  The invention is the combination of (1) Biosig’s observations about ECG vs. EMG signals, coupled with (2) the specifically disclosed electronic circuit – i.e., the differencing amplifier – that applies this concept to identify a pulse encoded in a signal captured by some electrodes. The spacing of the electrodes is not the invention.

                  You can’t say “my invention is substantially cancelling out signals” and then say “but the manner in which it is achieved is irrelevant” because when one replaces “cancel out signals” with “print at a distance” you get Morse.

                  Ah, see, here’s your mistake: the placement of the electrodes is not what cancels out the EMG signal. The cancellation is achieved by the differencing amplifier that interprets the signal. That circuit is disclosed in completely sufficient detail, which is why the Federal Circuit has twice upheld it.

                  The spacing of the electrodes is a red herring. Neither the PTAB nor the Federal Circuit fell for it. That bait was only swallowed by the district court (since reversed)… and you and Ned.

                  Biosig could have found that a distance of half an inch did pretty well in cutting down noise, say 80% and stopped.

                  Again, here’s your mistake: the placement of the electrodes is not how Biosig’s invention cancels the EMG component of the signal.

                8. Okay, tell you what: if Nautilus appeals again and if the Supreme Court accepts cert and if the Supreme Court then reverses the Federal Circuit’s decision on this specific issue, then we can agree that the system of law that you’re proposing is the law of the land.

                  Prudent, of course. But, and correct me if I’m wrong – The Supreme Court’s opinion in Nautilus is the law of the land. It vacated at least the first opinion by the Fed Cir (and they did no extra analysis in the second), so you might not want to consider them so strongly. And it cited approvingly to Wabash. What a “real” court would do if it was actually intent on following the charge it was given was look at the cases cited to by the Supreme Court to give context to what constitutes the standard they have just promulgated means. You don’t think it would be persuasive to, at a minimum, the Supreme Court to say “Hey I see you cited case X, I read case X, and here’s why case X controls this case”? Do they need to hand-hold the Federal Circuit so much? Apparently so, but it shouldn’t stop attorneys from doing the analysis they failed.

                  Do you remember writing, just a few days ago, that “my view is irrelevant; the court’s view controls?” Why does your interpretation of patent law “control” over the Federal Circuit’s decisions on this issue?

                  Because everyone agrees that the Supreme Court’s jurisprudence is superior to that of the Federal Circuit’s, because the Supreme Court has considered a case which has a similar situation (except the facts were more in favor of the patentee), and because the Supreme Court came down on the side of the defendant in that case. Relying upon precedent is how you effectuate the court’s position, it is NOT substituting my own.

                  It’s also directly contrary to the claims that were upheld in DDR Holdings, and Diamond v. Chakrabarty, and a large number of other cases.

                  Diamond has nothing to do with anything, the only thing analyzed in that case was whether plants fell within 101, not whether the particular language constituted a judicial exception it was a straight 101 case. Ariad considered similar language under 112 and found it to be overbroad. DDR Holdings 1) Analyzed 112(b) in a pre-Nautilus world and 2) Didn’t analyze 112(a) at all. It would certainly appear that it contradicts those Supreme Court cases on 101 though, I will give you that. I guess we’d have to take different sides on which law controls the issue – the Supremes or the Fed Cir.

                  Ah, see, here’s your mistake: the placement of the electrodes is not what cancels out the EMG signal. The cancellation is achieved by the differencing amplifier that interprets the signal.

                  All the differencing amplifier does is subtract one detected signal from another. From the spec, as quoted by Nautilus 1:

                  “whereby, a first electromyogram signal will be detected between said first live electrode and said first common electrode, and a second electromyogram signal, of substantially equal magnitude and phase to said first electromyogram signal will be detected between said second live electrode and said second common electrode; so that, when said first electromyogram signal is applied to said first terminal and said second electromyogram signal is applied to said second terminal, the first and second electromyogram signals will be subtracted from each other to produce a substantially zero electromyogram signal at the output of said difference amplifier”

                  The important thing was the spacing of the nodes such that you got equal eelctromymogram signals. The subtraction of one signal from another is the “relatively simple” part – all the difference amplifier does is multiply one hand by a factor and subtract the other signal, i.e. simply multiplication and subtraction. Here’s Biosig’s expert:

                  “His declaration was based largely on tests he performed to show the effects of electrode configuration on EMG signals measured in the palms of the users’ hands. In particular, he represented that the strength of an EMG signal measurement is proportional to the space between the active and ground electrode and the size of the electrodes. J.A. 194-95. He further declared that it was common knowledge for skilled artisans in 1992 that EMG potentials on each hand would be different, and that the ‘753 patent requires a configuration of the detectors that produce equal EMG signals from the left and right hands. J.A. 200. This equalization or balancing, according to Mr. Lekhtman, is achieved by detecting EMG signals on the left and right palms, which are delivered to a differential amplifier in the EMG measuring device.”

                  I understand why you call it a “design variable”, because he also says this:

                  “Available design variables are then adjusted until the differential output is minimized, i.e., close to zero, and the ECG to EMG ratio is determined to be sufficient for an accurate heart rate determination. J.A. 200-01. Mr. Lekhtman explained that some of these design variables in producing a balanced detection of EMG signals include spacing, size, shape and materials of the electrodes.”

                  But that’s just proving my point. Biosig’s position is “I’m not going to tell you how to achieve this result I’m claiming, you fiddle around with the spacing until you achieve this result.” It appears he’s suggesting that there are multiple unknown points which all will achieve the result of substantial removal. But there’s no proof in the specification that 1) the Applicant knew of any particular one or 2) that he knew of an optimal one.

                  It’s as if I, as a doctor, threw a bottle of pills at you and said “take the appropriate amount at the appropriate time to cure your illness.” I suppose with trial and error that is ENABLED without undue experimentation, after all, one can determine whether an illness was gone or conversely, when too much was taken that it killed someone; but that doesn’t change the fact that it wasn’t CONVEYED. Now maybe you can argue that the hard part is making the pill to begin with, that doesn’t change the fact that the system still has an unexplained variable which obviously affects the very outcome you are claiming.

                  Again, here’s your mistake: the placement of the electrodes is not how Biosig’s invention cancels the EMG component of the signal.

                  Then why is Biosig’s expert saying the thing you want to do is vary the spacing of the electrodes so that you can minimize the noise? Why does the spec say “Accordingly, the electrocardiograph signals will be added to each other in the difference amplifier 23, so that the output of 23 is substantially dependent only on the electrocardiograph signals.”

                  In fact, if you read the spec, there’s no statement of the difference amplifier doing anything but subtraction at all. There IS a statement that “The electromyogram signals received by electrodes 9 and 11 will also be of substantially equal magnitude and phase to the electromyogram signals received by the electrodes 13 and 15. Accordingly, they will also be cancelled out in the difference aplifier 23.” and a statement from the expert that says that electromyogram signals are based upon the spacing difference.

                9. The Supreme Court’s opinion in Nautilus is the law of the land. It vacated at least the first opinion by the Fed Cir (and they did no extra analysis in the second), so you might not want to consider them so strongly.

                  No, see, that’s exactly the point: all the Court did was to adjust the standard that the Federal Circuit was using. Your interpretation is based entirely on your conjecture about the Court’s opinion – and yet the Court explicitly stated: “we decline to apply the standard we have announced to the controversy between Nautilus and Biosig.”

                  Random, there’s a night-and-day contrast between the Court’s Nautilus opinion, and the opinions in Mayo and Alice that just shredded the patents under review with extremely acerbic language.

                  Relying upon precedent is how you effectuate the court’s position, it is NOT substituting my own.

                  “We decline to apply the standard we have announced to the controversy between Nautilus and Biosig.”

                  Diamond has nothing to do with anything. DDR Holdings 1) Analyzed 112(b) in a pre-Nautilus world and 2) Didn’t analyze 112(a) at all.

                  The standard you’re proposing, where functional language is basically meaningless because it can only stand in as a synonym for explicitly enumerated structural equivalents, would retroactively invalidate cases that the courts have already reviewed and approved – without even raising the issues that you find controlling.

                  In the history of patent law, how often have courts spontaneously said, “oh, this important case that we reviewed and validated as satisfying requirement (A), we should have actually invalidated under requirement (B), so we’re going to take up that issue and reverse our earlier decision?” Basically, never.

                  All the differencing amplifier does is subtract one detected signal from another.

                  And yet, that is the invention. It is (1) a new circuit that (2) applies a useful concept, i.e., filtering EMG noise from an EMC signal, in (3) a specific context, i.e., detecting a pulse on an exercise machine. That description, right there, meets all the requirements of 35 USC.

                  You dismiss it as based on an abstract idea that was previously known, but I’ve got one two words for you: Diehr, and Arrhenius.

                  You dismiss it as simple, but “complex” is not a requirement of patent law. It is new, and that is enough. Consider Kearns’ interval-based windshield wipers case: windshield wipers were not new; timing circuits were definitely not new. The combination of a timing circuit with a windshield wiper was dead-simple – and yet, not only novel but worth $30MM in 1952 dollars.

                  > There’s no proof in the specification that 1) the Applicant knew of any particular one or 2) that he knew of an optimal one.

                  Disclosing a “particular” item is not a requirement of patent law, Random. 112 requires: “such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains to make and use the same.” Your standard is pitched more for a person of no skill in the art who can’t possibly figure out where to put things unless you provide exacting instructions. Not what the law reequires:

                  “Optimal” is also not a requirement of patent law, Random. I may know that a reaction works over the range of pH 8 to 10; even if I don’t know where it optimally works, I can claim the entire range.

                  It’s as if I, as a doctor, threw a bottle of pills at you and said “take the appropriate amount at the appropriate time to cure your illness.”

                  Ordinary skill, Random. I am not ordinarily skilled in the art of curing my own diseases.

                  Doctor A can certainly say to Doctor B (in the same specialty): “This drug should cure your patient’s condition,” and expect that Doctor B can figure out the dosage.

                10. David,

                  No matter how painstakingly precise and patient you are, Random has shown himself simply incapable of getting out of his own way and recognizing that his Belieb system prevents him from understanding the actual law.

                  While I would give you an A+ for effort, Random’s horse will surely die of thirst.

                11. “We decline to apply the standard we have announced to the controversy between Nautilus and Biosig.”

                  How does that support you at all? The federal circuit had a standard, the court said it was the wrong standard, the court gave a new standard, and then they court said “Now you go apply the standard we gave you.” Applying the standard means construing what constitutes “reasonable” and it means going into the cases cited by the Supremes as applying that standard. That’s what happens when someone cites to a case as authority for a test. You don’t cite to KSR as authority for a test and then apply the test in a manner that conflicts with KSR. The federal circuit came back and performed no new analysis at all.

                  would retroactively invalidate cases that the courts have already reviewed and approved – without even raising the issues that you find controlling.

                  Cases are reviewed based upon the question put forward to them. I literally cited to you, in the very case we are talking about, where the court said “Well maybe you have an enablement issue here, but you only appealed on indefiniteness.” Diamond was appealed based on the question of whether 101 encompassed grafted plants. The court doesn’t answer that question and then go on and say “Oh by the way it would be invalid under enablement or a judicial exception or obviousness.” You can’t take a claim that was tested with respect to one hurdle and conclude that because it was valid with respect that hurdle that it’s valid generally. That’s why claims are declared valid generally, they’re only declared not invalid.

                  In the history of patent law, how often have courts spontaneously said, “oh, this important case that we reviewed and validated as satisfying requirement (A), we should have actually invalidated under requirement (B), so we’re going to take up that issue and reverse our earlier decision?” Basically, never.

                  Declaring that something passes the A test doesn’t imply that it passes the B test. They don’t have to say they “reversed their earlier decision” because they didn’t. Person A may raise a right under a statute and they declare an act valid, but later Person B may raise their right under the constitution and the very same act will be declared invalid, because the rights and issues of one does not implicate the other. If Diamond asks you to pass on 101 not only is it unnecessary to consider it under 112 (since you weren’t asked) but it would be improper because the record isn’t developed for a 112 ruling.

                  And yet, that is the invention.

                  haha, well it’s real easy to say that functional language isn’t a problem if you’re going to read the functional language out of the claim. Is the functional language in the claim or not? Does the invention include the functional language? Look I will give you this – I have no clue whether a claim without the functional language (i.e. just the differentiator) would have surpassed obviousness and enablement, maybe they could have crafted such a claim. That’s not the claim they crafted. I don’t have to win the argument about what’s the important part of the claim, though I obviously do think I’m right about it.

                  You dismiss it as simple, but “complex” is not a requirement of patent law. It is new, and that is enough.

                  Complex isn’t a requirement, but “more than math” is a requirement, isn’t it? I will agree with you that abstract idea is not before the court though. Perhaps you are correct about the important part of the claim and the correct invalidity is under a judicial exception and not indefiniteness.

                  Disclosing a “particular” item is not a requirement of patent law, Random.

                  Sure it is, because you have to claim the application of an idea, not the idea itself. Biosig’s patent was issued in 94 which means they had to disclose best mode. But this thinking is entirely the problem – you can’t just define a “good outcome” and then claim every way of achieving a good outcome. You’re limited to your means of getting there. Disclosing a particular embodiment is a requirement, and the fact that it’s even being disputed shows just how far off the rails the Federal Circuit has ran things.

                  Ordinary skill, Random. I am not ordinarily skilled in the art of curing my own diseases.

                  That’s an argument directed to enablement. You’re falling into the same trap the Fed Cir did (and you did so after admitting that there are substantive reasons for 112(b) itself, which is odd). It doesn’t matter whether you’re skilled in the art of curing your own diseases. It doesn’t matter if there is sufficient direction to build it. The question is was it conveyed.

                  But while we’re on the issue: Enablement and description of a genus requires disclosure of sufficient examples to prove enablement and possession of the breadth of the genus. See Ariad. See MPEP2161, 2163. Generic language appearing ipsis verbis from the spec does not inherently support the scope claimed. Adequate description of a genus requires more than a statement of the functional boundaries.

                  Description (possession) of a functional result requires that you show enough examples to prove you posited every means of achievement of the functional result. To prove he posited every means of achievement of substantially removing the noise, he would have to give sufficient examples such that we don’t have to guess at what the range is he’s talking about – we would KNOW. Then if he gives a handful of values like .5, .6, .34, we can make an educated analysis of whether 1.7634 is a value that he posited, and thus whether Nautilus infringed or invented his own thing.

                12. That’s an argument directed to enablement. You’re falling into the same trap the Fed Cir did (and you did so after admitting that there are substantive reasons for 112(b) itself, which is odd).

                  Random, 112(a) reads: “any person skilled in the art to which it pertains.”

                  So when you argue about “a doctor throwing a bottle of pills at you and saying, ‘take the appropriate amount at the appropriate time to cure your illness” – my argument is that I am not a “person skilled in the art” of using medication to cure disease.

                  112(a), not 112(b), Random. It’s right there, in black and white.

                  How does that support you at all?

                  Because I am relying on the plain and explicit opinions of the Federal Circuit – while you are relying on what you think the Supreme Court should think about the case, when in fact the Court explicitly declined to say anything at all about it.

                  The federal circuit came back and performed no new analysis at all.

                  And isn’t that exactly the problem with all of the Court’s recent tests? When standards are based purely on subjective “smell tests” rather than objective evidence, no “analysis” is required – or even possible. That’s the way the Court wants it, and I see the Federal Circuit’s opinion as fully compliant.

                  Exactly what analysis do you think the Federal Circuit should have done to determine the standard of “reasonable” interpretation? Round 1: “We don’t think it’s ‘insolubly’ ambiguous.” Round 2: “Okay, we don’t think it fails the ‘reasonable certainty’ test, either.” What else do you expect them to have done?

                  And if you think the Court is going to wade in and override the Federal Circuit’s decision – it’s pure fantasy. Note: “Mindful that we are a court of review, not of first view, we decline to apply the standard.” SCOTUS will only overrule the Federal Circuit’s opinion if it is wildly unreasonable. And if it did, SCOTUS wouldn’t even have bothered remanding – it would’ve shredded it just like Alice and Mayo.

                  Cases are reviewed based upon the question put forward to them.

                  And yet, in reviewing the Alice 101 appeal, SCOTUS’s opinion was hardly confined to 101: it muddled in 102/103 (“purely conventional,” “well-known in the art,” etc.) and 112 (“none of the hardware recited by the system claims ‘offers a meaningful limitation'”). This Court is not shy about reviewing a situation holistically, and in setting policy, demonstrates no sense of confinement to the appealed issue.

                  It’s real easy to say that functional language isn’t a problem if you’re going to read the functional language out of the claim.

                  Random, your efforts to avoid looking at the part of the claim that recites the actual invention – which also happens to be completely structural – are starting to look rather desperate.

                  All I can tell you, one last time before leaving this discussion, is that the circuit is the invention. Since your legal theory can neither tolerate nor survive this plain fact, we’re done here.

      2. 8.2.2

        David, your last two sentences encapsulate why I don’t use this tactic in independent claims.

        The other point I would make is that the inventor is really only entitled to what he invents and equivalents. If someone comes up with some other new and non-equivalent structure for carrying out a claimed function (work around), and if section 112 doesn’t permit me to write an independent claim broad enough to encompass all possibilities, so be it. I advocate for my clients, but I also tell them that they are not entitled to a monopoly over what they don’t invent.

        The tricky part comes if I see a non-equivalent embodiment that the client hasn’t disclosed to me. If I put my embodiment in the patent, then I am a co-inventor and should be named as such; if I don’t, then the patent could be DOA commercially.

        1. 8.2.2.1

          If someone comes up with some other new and non-equivalent structure for carrying out a claimed function (work around), and if section 112 doesn’t permit me to write an independent claim broad enough to encompass all possibilities, so be it.

          Something that many people on this board fail to realize. As if they lawyered hard enough they could write words that would make the contribution to the art more than what it in fact is. All they are doing is writing scopes invalidated by 101 and 112.

          There is no amount of scrivening that allows you to hold a non-equivalent structure liable for infringement.

          1. 8.2.2.1.1

            Ladders (of abstraction) have more than two rungs.

            Where you (constantly) err, my Random friend, is in your “interpretation” that equivalents must be of the “exactly the same as” variety.

            That is not and never has been the case.

            Look at the interchange between you and Babel – some good stuff (but with both of you a bit off in some critical regards). How many times in your interchange do each of you reference a concept of “equivalents?” Once you both realize that what the ladders of abstraction really means (and not just a ladder with a rung on the bottom and a second rung at the top), and once you realize that software is defined to be a machine component and is a manufacture in its own right, and is EQUIVALENT to hardware and is equivalent to firmware, the Belieb-driven anti-software patent penchant should dissipate.

            1. 8.2.2.1.1.1

              Ladders (of abstraction) have more than two rungs.

              Of course they do. But each rung can be divided into one of two categories – those that would cover only equivalents and those that would cover non-equivalents. Function-based claiming covers non-equivalents unless you can prove that out of all the ways of achieving the function (the abstract claim language) constitute means which “perform substantially the same function in substantially the same way.”

              is in your “interpretation” that equivalents must be of the “exactly the same as” variety.

              You know I’ve never had an “exactly the same” standard, as I have always said that abstraction CAN be valid, but that the manner that it is being used widely now ISN’T. 99 times out of 100 you simply can’t prove that the scope of the functional result is coextensive with “substantial similiarity” for at least the reason that you can’t know what you don’t know. The person who invented the bow, which relied upon tension to propel a projectile, didn’t know that the gun, which relied upon explosive chemical reaction, would also achieve his function. A bow described by its function of firing a projectile is inherently overbroad, not only because the gun does exist, but because you can’t prove that the gun couldn’t exist.

              There are extremely cabined usages of functional descriptiveness (as opposed to structural descriptiveness) that are proper. But the usage and the intent of the usage in claiming today is not to cabin and limit but specifically to make something vague to overreach the invention. It is improper.

              once you realize that software is defined to be a machine component and is a manufacture in its own right, and is EQUIVALENT to hardware and is equivalent to firmware, the Belieb-driven anti-software patent penchant should dissipate.

              I have never taken issue with software being equivalent to hardware. I believe they are equivalent, and you know that if you’ve been paying attention. What I have a problem is one software algorithm being the same as another software algorithm.

              An art used to have a problem with determining when someone’s statements could be used against them in a court of law versus when they were coerced. The test was a complicated patchwork. Then a new test was created that required the disclosure of particular rights after arrest and prior to questioning. There’s not a single person in criminal law who doesn’t think the Miranda algorithm was a watershed, non-obvious departure from the norm. It performed the same function as the previous test – determining whether a statement was admissible, but the art found it to be superior in virtually every respect.

              Patent law requires the disclosure of the algorithm, always. Because without the previous algorithm we can’t judge if the new algorithm (whether it appears in an infringing device or a new patent application) is substantially similar. Patent law requires the claim be limited to the algorithm, so that future inventors who invent the Miranda algorithm can be offered a carrot for their disclosure of the better algorithm.

              You cannot differentiate software based on the general result of running it, you must differentiate it based upon the means and manner of getting there.

              1. 8.2.2.1.1.1.1

                There are extremely cabined usages of functional descriptiveness (as opposed to structural descriptiveness) that are proper.

                Not nearly as cabined as you (irrelevantly) desire.

          2. 8.2.2.1.2

            > Something that many people on this board fail to realize.

            Really? “Many?” That kind of “us vs. them” thinking leads to overly contrasty opinions. I really don’t talk to those people… I don’t even read their messages. Greasemonkey can work wonders as a message filter.

            It will likely surprise you that I tend to err on the side of more conservative, narrow claims. I’d much prefer to get my clients a reasonable, fairly defined patent faster, than spend years fighting for overly broad claim scope, which isn’t really an interesting dispute to me.

    3. 8.3

      BB: WMS very clearly holds that the structure for a computer-based MPF element is the microprocessor as modified by an algorithm.

      When your “new” function is the only novel aspect of your claim, reciting as your “means” an old structure (i.e., a “microprocessor”) that is modified by (try to believe this) the function itself, you are plainly engaged in bootstrapping. In other words, there is no “there” there.

      I don’t see any statement in WMS Gaming that the algorithm itself is structure – Prost’s assertion is metaphysically absurd.

      The assertion is absurd in more ways that “metaphysical ways”. Whether or not you “see the statement” is beside the point, however, because that absurd assertions is the basis for the the eligiblity of information-processing patents (carried out by a computer or otherwise). Data is “the essence of electronic structure” after all, in spite of the fact that there is no “physical structure per se.” You can thank those brilliant jurists, Judge Rich and Judge Rader, for that chestnut. And we all know that those guys were never wrong about anything.

      1. 8.3.1

        If you really believe that there is no “there” there, take the Grand Hall experiment.

        Funny, you have never engaged in an inte11ectually honest discussion on that thought experiment.

        The plain fact of the matter is that software really IS there and really DOES make a difference.

        I invite you (again) to abstain from that which you would deny protection to.

        EVERYONE would enjoy watching you “put your money where your mouth is.”

    4. 8.4

      SHARON PROST was appointed by President George W. Bush in 2001 and assumed the duties of Chief Circuit Judge on May 31, 2014. Prior to her appointment, Judge Prost served as Minority Chief Counsel, Deputy Chief Counsel, and Chief Counsel of the Committee on the Judiciary, United States Senate from 1993 to 2001. She also served as Chief Labor Counsel (Minority), Senate Committee on Labor and Human Resources from 1989 to 1993. Prior to her work on Capitol Hill, she served for fifteen years in five different agencies of the executive branch. These agencies included the Department of Treasury, National Labor Relations Board, and General Accounting Office. Judge Prost received a B.S. from Cornell University in 1973, an M.B.A. from George Washington University in 1975, a J.D. from the Washington College of Law, American University in 1979, and an LL.M. in tax law from George Washington University School of Law in 1984.

  11. 7

    I’m no litigator, but . . . talk about rocket-dockets.

    Motion for SJ filed Nov.2013. The DC held a claim construction hearing on Jan08.14 and a summary judgment hearing on Jan09.14.

    Then it held a hearing to receive expert testimony on Feb05.14. And the order of invalidity (reversing 2 reexaminations) came on Mar05.

    SBTYM. Don’t you have to have time to digest the results of the court’s claim construction before arguing the SJ motion? I mean, I count 29 lawyers in this case, how did they all get a chance to say something? They didn’t even have time to charge their smart phones.

    Judge Cacheris must be green w/ envy. Is this Del. court a court of law or a fast foods establishment?

    1. 7.1

      Is this Del. court a court of law or a fast foods establishment?

      I’ve long maintained we should just combine them.

  12. 6

    I don’t get what everyone is all up about with this case. It’s entirely derivative of Aristocrat. It doesn’t say anything different at all, other than confirming that intervening cases don’t change the analysis. A big “So what?” from me.

    1. 6.1

      I don’t get what everyone is all up about with this case.

      If nothing else, the most farcical aspects of the ongoing farce were highlighted and another patent holding company’s junk patent got torched.

      As for the farcical aspects, it won’t be long before we find out how many programmers pecking away it takes before a fake structure becomes a “real” fake structure. We’ll have another laugh, then. In the meantime, a nice beer will suffice.

      1. 6.1.1

        If nothing else, the most farcical aspects of the ongoing farce“…

        …was Malcolm jumping on the case prematurely – just like he was the first to link to the patent office “integration” take-away from Prometheus which wrecked his little mere-aggregation “pet” theory.

        That’s why he dumped his usual load of C R P on the past thread after touring the case first and only then realizing that it still maintained everything that he Beliebs is “wrong.”

  13. 5

    Aristocrat: A general purpose computer is flexible—it can do anything it is programmed to do.

    Seems like an important fact for the PTO to be reminding applicants in every Office Action dealing with an obvious “configured” computer. Another important fact: the computer doesn’t care about the label that humans give to the incoming data, or the outgoing data, nor does it care about where the data came from, who owns the data, where it’s going, or what it’s purpose is.

    the court reiterated its prior statements that “the general purpose computer becomes a special purpose computer when loaded with the special programming.”

    But unlike every other machine that ever existed, the physical modifications that transform “general” information processing machines into “special purpose” information don’t need to be described in claims. Presumably that massive judge-created exception exists because promoting progress in information-processing logic has always been the fundamental goal of our patent system. Right?

    Riiiiiiiiight.

    1. 5.1

      More dissembling from Malcolm (go figure), as I explained to him and Ned using those short declarative sentences that Malcolm is always on about and simple set theory that it was the judicial exception of printed matter itself that was the “massive judge created exception” and that the exception to the judicially created written matter doctrine was merely a realization that the “massive judge-created exception” merely had quite perfectly logical constraints (constraints logically tied to the aspect of utility of which patent law was meant to protect).

      Basic stuff, simple as A B C, and yet no end to the attempts by Malcolm to dissemble about this notion of controlling law (and yes, Malcolm has also volunteered an admission as to knowing and understanding this, which makes his attempted spin downright dishonest.

      1. 5.1.1

        it was the judicial exception of printed matter itself that was the “massive judge created exception”

        No doubt you understand that the term “printed matter” is a misnomer …

        Regardless — and assuming your facts for the sake of argument — what was the purpose of the “exception of printed matter itself”? Who created it, why was it deemed necessary and how has the republic managed to remain intact all these years after the separation of powers was breached?

        1. 5.1.1.1

          What is your point Malcolm?

          Try using those short declarative sentences you are always on about.

          (As for “the purpose,” asked and answered – I fully explained this using short declarative sentences and easy to understand set theory, as my reminder post here already mentioned. Pay attention.)

          1. 5.1.1.1.1

            Anon, of course you know the source of the printed matter exception is Hotel Security. It is not a massively Judge created exception to patentable subject matter. It recognizes that where the novel subject matter in a claim has nothing to do with a machine, a manufacturer or composition that it is not statutory subject matter that is being claimed, something nonstatutory.

            It is a wonder, Mr. anon, that you will not accept the statutory framework passed by Congress as being the starting point of a discussion of patentable subject matter. You seem to think that the statute itself is the exception not the rule.

            1. 5.1.1.1.1.1

              Simply wrong Ned.

              I have explained this to you in very simple terms and with very simple set theory.

              I begged you to join in that conversation and point out where the logic was off.

              You refused.

              You ran away.

              You keep on trotting out a lower court decision as if it were made of gold and you fall on your knees and worship it.

              Prof. Crouch has admonished you that you were wrong.

              David Stein absolutely shredded you.

              And yet here we are again, with you and your drive-by monologue, as if no one said anything on the topic.

              Let me know when you are serious about having a true dialogue – until then, I may just simply note for the record that you are wrong again (and again and again and…)

  14. 4

    DC: As with abstract-idea analysis, it seems here that the question is not so black-and-white, but rather whether some magical threshold has been crossed.

    There’s a decidely un-magical threshold that works very well for innovations other than the lowest form of innovation: objective physical structure.

    But that would make a certain class of patent applicant’s cry and nobody would write new software. Or so those applicants keep telling us.

    Remind me again why anybody should listen to anything they say? They don’t seem to care about anything except how much money is being funneled into their bank accounts.

    1. 4.1

      LOL – great, just let me know when Congress decides to change that option into being the actual sole legal required form of claim drafting.

      Then be prepared for those hundreds of pages long, completely unreadable claims that meet the form of your precious “pet” theory.

      Won’t we have fun then b1tch1ng up a storm.

      1. 4.1.1

        “anon” be prepared for those hundreds of pages long, completely unreadable claims that meet the form of your precious “pet” theory.

        As you already know, applicants in other arts have been filing lengthy “unreadable” claims for many, many years. And progress in those arts has continued just fine.

        Won’t we have fun then b1tch1ng up a storm.

        Nobody will notice because software applicants have been on “all-b1tch-all-the-time” mode since Nutjen, at least.

        1. 4.1.1.1

          You also use shortcut “terms” as recognized by those in the art.

          Funny then, this was the context in which you volunteered your admission that “configured to” was indeed structural language.

          (pssst: it’s in the archives)

          1. 4.1.1.1.1

            “anon”: this was the context in which you volunteered your admission that “configured to” was indeed structural language.

            Oh, lookie: Billy is up to his old games again.

            1. 4.1.1.1.1.1

              If by “Oh, lookie: Billy is up to his old games again.” you mean that I am pointing out those rather inconvenient facts of your past attempts at dialogue, then you are absolutely right.

              Funny, how you don’t want to own your own admissions.

  15. 3

    Of course, this is precisely why means-plus-function claims are an endangered species. Much like Jepson claims, this claim style has become so overloaded with judicially created requirements that it is no longer usable.

    Nice of the Federal Circuit to express, in the same decision, both boundaries of this debate: a mandate to “avoid pure functional claiming,” and an acknowledgment that “the general purpose computer becomes a special purpose computer when loaded with the special programming.” Of course, there does seem to be… let’s say, a bit of a gap, between those boundaries.

    Of course, this is interesting:

    When a patentee invokes means-plus-function claiming to recite a software function, it accedes to the reciprocal obligation of disclosing a sufficient algorithm as corresponding structure.

    So that about wraps it up for whether an algorithm can constitute a structural element. I suppose we won’t see that argument any more, right?

    Where the specification discloses no algorithm, the skilled artisan’s knowledge is irrelevant. Where the specification discloses an algorithm that the accused infringer contends is inadequate, we judge the disclosure’s sufficiency
    based on the skilled artisan’s perspective.

    Well, that’s interesting. How does one distinguish between “pure functionality,” an “inadequate algorithm,” and a “sufficient algorithm?”

    The court is taking one undefined term (“abstract”) and replacing it with three sub-categories that are not only undefined, but overlapping. I guess we’ll see how that works out.

    1. 3.1

      Much like Jepson claims, this claim style has become so overloaded with judicially created requirements that it is no longer usable.

      Whether it’s “usable” would depend on what you want to use your patent claim for, of course.

      If you want to protect an apparatus that you have not made and will never make (perhaps because you lack the skill), it certainly is burdensome to be forced to describe the apparatus using the recitation of physical structure to distinguish the “new” apparatus from the prior art.

      Nobody could have predicted that this tightening down would occur. But go ahead and load your application with “algorithms” that aren’t structures at all. That surely is the answer! Yes, it’s guaranteed to work.

      Until it doesn’t.

      1. 3.1.1

        You do realize of course Malcolm that even this dud of a case just doesn’t support your make believe fantasy law, right?

        You might want to try posting with those short declarative sentences that you are always on about in order to make your “point” that the law should be re-written (of course, by the appropriate branch of the government duly authorized to do so).

        In the meantime, try not to be such a chump.

    2. 3.2

      David: How does one distinguish between “pure functionality,” an “inadequate algorithm,” and a “sufficient algorithm?”

      I’ve been asking you and your cohorts that question for years, David.

      Still waiting for an answer.

      1. 3.2.1

        You are not supposed to wait – you are supposed to use those short declarative sentences you are always on about and give an answer.

        In the best Homer Simpson tones: DO’H!

        1. 3.2.1.1

          “anon” : you are supposed to use those short declarative sentences you are always on about and give an answer.

          You seem to assume that there is a reasonable answer.

          My assumption is that logical algorithms aren’t structures at all. That’s one of the reasons they aren’t eligible for patent protection.

          Oh wait: that’s not an assumption. That’s just a non-controversial fact.

          You were saying?

          1. 3.2.1.1.1

            You use that word “fact,” I do not think it means what you think it means.

            As evidenced by your perpetual running away in explaining how “old box” without change can come to have new capabilities as provided by the machine component and manufacture in its own right of software.

            You have to strike a very Morse-like all-future-inventions- are-already-“in there” nonsense to get to what you want to call “fact.”

            Dr. House called, he wants his v@pid meme back.

            1. 3.2.1.1.1.1

              I do not think it means what you think it means.

              Logical algorithms aren’t structures.

              That’s a fact.

              Logical algorithms aren’t eligible for patent protection.

              That’s also a fact.

              Some judges pulled some nonsense out of their behinds to obscure these facts and coddle some whiny patent applicants. Now everybody using the system is paying the price for the short-sightedness of these judges and the same whiny applicants continue to whine that’s it’s all sooooooo unfair. Better yet: they blame their diminishing rights on “judicial activism” which is the only reason they had any rights in the first place!

              Those are also facts. As I’ve said before: in a few decades we’ll look back on the past twenty years and wonder what the heck people were smoking when they paid lawyers hundreds of thousands of dollars to argue about when a series of logical steps has “sufficient structure.” Good lord.

              1. 3.2.1.1.1.1.1

                > Logical algorithms aren’t structures.

                No, but a computer or microprocessor programmed with the algorithm is a structure.

                > Logical algorithms aren’t eligible for patent protection.

                But nobody tries to patent the algorithms themselves (in absence of the computers or microprocessors they are programmed on, or without at least mentioning that a method is “computer-implemented”).

    3. 3.3

      How does one distinguish between “pure functionality,” an “inadequate algorithm,” and a “sufficient algorithm?”

      The first has no algorithm disclosure. The second has an algorithm disclosure that does not define the acts with reasonable certainty and the latter does convey reasonable certainty.

      They don’t overlap at all.

  16. 2

    The option of strictly understood “means for” option – that of “purely” as opposed to what one sage person once coined as “Vast Middle Ground of less-than-PURELY functional claiming is merely likely to go the way of Jepson claims.

    Of course, the better task will be to make sure the muckrakers and dust-kickers don’t pollute patent law with their attempts at obfuscation and dis-remembering of history.

  17. 1

    “but rather whether some magical threshold has been crossed.”

    The magical threshold is whether or not the federal circuit could rule for you without being laughed at.

    I’m still surprised nobody has taken this sort of thing to the supremes to have them sort it out rationally yet.

    1. 1.1

      No shortage of pundits wanting the Supremes to write patent common law here 6.

      Some of us though do care about the separation of powers and respect for the constitution and the Rule of Law that patent law being statutory law entails.

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