Guest Post by Prof. Collins – Williamson v. Citrix Online: And Now Comes the Difficult Part

Guest post by Professor Kevin Emerson Collins, Professor of Law at Washington University Law School. 

In its en banc decision in Williamson v. Citrix Online, the Federal Circuit held that there is no “strong” presumption that functional claim limitations that do not use the term “means” are not subject to the rules of means-plus-function claim construction laid out in section 112(f). There is still a presumption that claims that do not employ the term “means” are not means-plus-function claims, as Jason Rantanen explains in his earlier PatentlyO post on Williamson, but, in theory, this only requires the patent challenger to satisfy a more-likely-than-not burden of persuasion.

I understand Williamson to shift Federal Circuit case law on two distinct axes at the same time. First, as a matter of substance, it makes broad, functionally defined claims more difficult to obtain. The scope-narrowing rules of 112(f) now apply to a larger number of functionally defined limitations: a limitation that not employ the term “means” should now be governed by 112(f) whenever it “fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Second, as a matter of form, Williamson makes patent law less rule-like and more standard-like. Courts may no longer use the rule-like, strong presumption that 112(f) does not apply when functional limitations do not employ the term “means.” Rather, whenever prompted to do so by a patent challenger, they must scrutinize the claim language on a case-by-case basis to see if it recites a sufficient quantum of structure in order to determine whether section 112(f) applies.

In my opinion, all things being equal, the substantive shift discussed above is a positive development. Unbridled functional claims over-reward an inventor and impose undue costs on society.[i] The strong presumption that functional claim limitations not using “means” avoided the scope-narrowing rules of 112(f) made such functional claims too easy to obtain. However, there is more work to be done to fully effectuate this substantive shift. For example, it is far from clear that the Federal Circuit will ever apply 112(f) to a method claim, despite the express mention of “step for” claims in the text of the statute. So, patentees can perform an end-run around Williamson and obtain broad, functionally defined claims simply by seeking a method claim rather than a product claim—a tactic that is particularly useful in the software arts where claims can be easily transformed from systems to methods and back again.

Nevertheless, being in a charitable mood, let’s assume all of the loopholes get closed and that all claims reciting “function without reciting sufficient structure for performing that function” are really subject to 112(f) after Williamson. It is at this point that we have to roll up our sleeves and begin the truly hard part of the work that is needed to reform functional software patents.

Bringing 112(f) to bear on software patents is tricky because the statute depends on a dichotomy between structure and function that simply does not exist in the software arts as a matter of fact. Although there is unquestionably a gray area, the structural and functional properties of a technology in the mechanical arts are, at their core, ontologically distinct to a philosopher and intuitively distinct to the rest of us. The description “coiled spring” denotes structure; the description “capable of generating kinetic energy when jostled” denotes function. However, this distinction vanishes in the software arts: most software inventions are function all the way down.[ii] Software is a powerful technology precisely because a programmer can remain ignorant of the physical, structural properties of a computer while specifying the functions that the software performs. Software functionality is therefore like a never-ending set of nested Russian dolls: you open up one more general functional description to look for structure, and all you find is another, more specific functional description. Patent law can, and does, identify an “algorithm” for performing a function as structure for legal purposes in a software claim, but it is importantly only metaphorical structure. An algorithm is a series of more specific steps for performing a more general function, but each of the steps in an algorithm is, in turn, specified only in functional terms. What is an algorithm as the term is used in patent law? It is a functional description of a software program that is specific enough that we are willing as a matter of patent policy to treat it like we treat a structural description in other arts. That is, the function-structure distinction in software is not a difference of kind but a difference of degree. Structure in the law of software patents is a legal fiction that has been manufactured to achieve patent policy goals.

The true challenge post-Williamson will therefore be identifying the level of specificity at which a functional description should count as metaphorical structure. Michael Risch alludes to this problem in his blog post on Williamson when he asked “[H]ow much structure is enough?” However, I think that a question precedent to Risch’s question is both more difficult and fundamental, namely “When is there any structure at all?” What level of specificity in a functional description counts as metaphorical structure?

To date, the Federal Circuit has answered this question with another layer of formalism that Williamson does not touch: any functional description in the specification that is more specific than the functional description in claims is likely to be metaphorical structure and thus an algorithm. This rule makes no sense from a policy perspective because the level of generality specified in a claim is often arbitrary. If a claim recites function A and the specification recites algorithmic steps 1, 2, and 3 for function A, a valid claim encompasses steps 1, 2, and 3 and their equivalents. However, if the claim were to directly recite functions 1, 2, and 3 (which are identical to steps 1, 2, and 3) without a more specific set of algorithms for those functions in the specification, then the claim is invalid for indefiniteness.[iii] The Federal Circuit’s approach to identifying algorithms is more like ducking the important question than providing an answer to it.

To be honest, I still waffle in my opinion on how hard the challenge of assessing the validity and permissible scope of functional software claims will be after Williamson. Some days, the problem seems difficult but tractable (although maybe not by an Article III court). Perhaps what we need to do is get patent lawyers, software engineers, and economists around a table. Perhaps they can articulate clear guidelines identifying a level of specificity at which functional software claims should be upheld, i.e., a level that identifies an algorithm and thus metaphorical structure. But, on other days, I’m less convinced that there is a tractable solution. Maybe the difference between a functional description of software and a software algorithm is like the difference between ideas from expression in copyright law, given that both differences are based on a levels-of-generality problem. Maybe therefore “[n]obody has ever been able to fix that boundary, and nobody ever can.”[iv] While the amount of uncertainty that follows from the idea/expression dichotomy may be acceptable in copyright law, the same amount of uncertainty in a function/algorithmic-step dichotomy in the law of software patents may not be.

In sum, although I believe that Williamson shifts the substantive reach of patent protection in the right direction, the costs of the inextricably linked shift toward a standard and away from a rule may, or may not, turn out to be too much to bear. If they are too much, then the need for a more rule-like patent regime will force us to choose doctrine that is either quite over-protective (e.g., that returns to the pre-Williamson strong presumption) or quite under-protective (e.g., that eliminates pure software patents altogether) as a substantive matter. Yet, despite the existence of these many possible futures, at least one thing is clear in the immediate aftermath of Williamson: the hard work of reforming functional software patents can now begin.

[i] The normative argument here is more complicated than is often presumed. For my take on why functional claiming should not be allowed, see Kevin Emerson Collins, Patent Law’s Functionality Malfunction and the Problem of Overbroad, Functional Software Patents, 90 Wash U. L. Rev. 1399, 1411–24 (2013).

[ii] To be clear, software only works because a programmed computer has certain physical, structural properties. But, the physical, structural properties of the programmed hardware are irrelevant to the definition of what constitutes a software invention. For more on what it means to say software is “function all the way down,” or to call software a purely functional technology, see id. at 1440–43.

[iii] Id. at 1463–67.

[iv] Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930).

205 thoughts on “Guest Post by Prof. Collins – Williamson v. Citrix Online: And Now Comes the Difficult Part

    1. I don’t know who these patent maximalists are, but certainly aspiring to patent business methods and the like is a major cause of the current fiasco mess the patent system is in. The maximalists pushed too far. Far to far. So much so that that the reaction to business method patents is wrecking the whole patent system.

    1. David, the Williamson decision only underscores the absolute need to place repeal of 112(f) among the first priorities of the patent bar. AIPLA, are you listening to your membership for even once? Your own patent law committee voted to repeal the construction clause twenty years ago. Did you listen then? Yes, you did because I gave the report. But did you act? No you did not.

      1. It appears once again that you want the “you-align-with-Ned-Heller-so-you-must-be-an-Einstein” illness to be an epidemic.

        No thanks.

  1. In a precedential decision issued today, the CAFC tanks a functionally claimed patent covering a method of “maintaining” information while surfing the Internets. Judge Newman wrote the decision (Moore and Reyna also on the panel). Query: Was this Judge Newman’s first authorship of an opinion applying 101 to tank some junky computer claims?

    The claims here are additional poster children for many of the worst patents out there. When you see the term “user interface” or “display” in a computer-implemented patent, there’s an excellent chance you are looking at a pile of pure garbage.

    1. A method of providing an intelligent user interface to an online application comprising the steps of:

    furnishing a plurality of icons on a web page displayed to a user of a web browser, wherein each of said icons is a hyperlink to a dynamically generated online application form set, and wherein said web browser comprises Back and Forward navigation functionalities; [<–old in the art]

    displaying said dynamically generated online application form set in response to the activation of said hyperlink, wherein said dynamically generated online application form set comprises a state determined by at least one user
    input; [<–old in the art]

    and maintaining said state upon the activation of another of said icons, wherein said maintaining allows use of said Back and Forward navigation functionalities without loss of said state.

    "Furnishing", "displaying" and "maintaining." It's 2015. When you see terms like that in a method claim and there is a complete absence of a new machine described in physical, structural terms, you can pretty much rest assured you are looking at some junk aimed at proteting ineligible subject matter. Anyone who tells you otherwise is out to lunch or trying to pick your wallet.

    The relevant analysis:

    For the ’505 Patent, the end result of “maintaining the state” is described as the innovation over the prior art, and the essential, “most important aspect”….We agree with the district court that the character of the claimed invention is an abstract idea: the idea of retaining information in the navigation of online forms…. As the district court observed, claim 1 contains no restriction on how the result is accomplished. The mechanism for maintaining the state is not described, although this is stated to be the essential innovation. …Thus we affirm that claim 1 is not directed to patent-eligible subject matter.

    Independent claims 9 and 17 are identical to claim 1 except that their preambles state “[a] computer system for providing an intelligent user interface to an online application, comprising computer instructions for” (claim 9) and “[a] computer-readable storage medium, comprising computer instructions for” (claim 17). The statement that the method is performed by computer does not satisfy the test of “inventive concept.” Alice, 134 S. Ct. at 2360.

    And other junky computer-implemented patent claim bites the dust. It should never have been granted in the first place, of course, but unfortunately there are thousands upon thousands of indistinguishable floating claims out there. Heckuva job, PTO.

    1. Forgot to include the case name: Internet Patents Corporation v. Active Network (CAFC 2015)

      Also, the paragraph in my comment above beginning with “Furnishing”, “displaying” and “maintaining.” should not be italicized. Apologies for for the formatting error.

    2. What did I say, MM. Rubber-Tip Pencil. Ideas with to do something without any details of how, at the point of novelty, are “not enough.”

      1. Mechanism (engineering): rigid bodies connected by joints in order to accomplish a desired force and/or motion transmission

        Suffice it to say that the mechanism responsible for the “innovation” is never described in the typical functionally-descriptive information processing claim, nor does that mechanism ever appear in the specification.

        That’s because programmable computers are a distinct class of machines designed for one purpose: perform logical processing of information. As everyone knows, our patent system wasn’t designed to protect those logical processes. On the contrary, information and logic has always been excluded from eligibility.

        But “somehow” here we are discussing a claim that protects “maintaining” information on “an application form”, utterly devoid of a new physically transformative step (e.g., a new way of laminating paper) or a new structure (a new type of laminate).

        1. Your post is such nonsense. Never before in human history could we represent and process information as we do now. So, your whole harkening back to history is absurd. And punch card machines were eligible for patentability. You know those things that made the census possible and were the start of IBM.

          You live in the information age. This information processing is taking over the world and has been identified by brilliant people as potentially more dangerous than nuclear weapons.

          1. Night, like Halliburton, there appears to be a combination of steps. But novelty was in the one step only. That step was devoid of anything except the instruction to do it. That step claimed a result.

            Regardless of your fight with Malcolm, it would be wise to pay attention to what is going on here for future reference.

            Ned

            1. Ned, I am responding directly to what MM wrote below. And, I did read the opinion written by Newman and I understand it very well.

              >That’s because programmable computers are a distinct class >of machines designed for one purpose: perform logical >processing of information. As everyone knows, our patent system wasn’t designed to protect those logical processes. On the contrary, information and logic has always been excluded from eligibility.

        2. “Our patent system wasn’t designed to protect [] logical processes”

          Which is a plus. Our patent system was designed (and is able to) protect inventions of any kind.

          1. That is precisely why 101 was written to be a wide open welcoming gate – and not the t001 that the anti-patentists have attempted to make it into.

    3. There is absolutely no reason why a computer that’s programmed to perform a new function is not new.

      You have a new encryption technique. No one can break it. You claim a computer programmed to perform the technique in order to encrypt data. Under your analysis, this is not patentable, but it meets the new and useful requirements of 101.

      Under your analysis, NOTHING performed on a computer would be patentable. This simply cannot be. Processors are everywhere — in cars, thermostats, phones, cell towers, you name it. One cannot make these unpatentable unless one completely ignores 101.

      You keep saying that the patent system was not meant to consider such claims, but that’s untrue. They are the same as any other claims — consider what one skilled in the art would know and go from there.

  2. >>but it is importantly only metaphorical structure.

    Really professor. So, tell us where is this metaphorical structure? Where does it exist? Now please really think about that question. Could it be that the only place that structure exists is in your brain? Does your brain have structure?

    The Russian dolls you speak of are called — in engineering — the ladders of abstraction. Yes we have names for them and are taught to use them as freshman in college. And, your assertion that they keep on going without end is absurd. I am skilled in the art. I can take a specification and claims and build the information processing system. I can work all the way down to the final doll. I can design a special purpose chip that will implement the functionality of the claims and send it out to be build. I have been a product manager for real products that have sold 10’s of millions of units.

    But, now you have run across reality. I know you won’t respond to me because truth is not what this is about.

    1. Also, professor, I was educated at two of the top five engineering schools in this country. A lot of my friends are now professors of engineering and science at the top schools in the country.

      My I have permission to reprint your article above? I am seriously thinking of using it as an example of how the ignorance of science is used to shape policy in the US. I think that they would all get an enormous belly laugh over your comparison of the ladders of abstraction with Russian dolls–with no end. The no end part illustrates such a lack of understanding of how to discipline one’s thinking that my friends will gasp and laugh in horror.

      But, I guess those non-peer reviewed law journal articles with 2 and 3rd year students checking the cites are the true source of science in this country.

      You can’t make this stuff up. The medieval law professors.

      1. So, we’re to agree with your position solely because you’re smarter than us?

        Also, please drop the reliance on peer review. Peer review has many detriments, not the least of which is that if your idea doesn’t agree with your peers’, then your idea isn’t published. For instance, if you were on review boards and one of MM’s papers was submitted for publication, you wouldn’t publish it because it doesn’t agree with your own beliefs.

      2. Night,

        If you want to fill in a glaring hole in your computer education, I would suggest you take a look at lambda calculus.

        It is a field of study that establishes that the outputs of any Turing machine can be expressed as a mathematical function of the inputs.

        (Please note that I wrote “expressed as”, and not “described by”. No moving the goalposts, now.)

        1. And after that we can fill the glaring hole in your IP education, wherein you might recall that you cannot have any IP protection (patent or copyright) on “just math,” with the logical conclusion that software is more than “just math.”

        2. Count Doobie, what is your point? If I have equations that describe how a chair operates does that mean the chair becomes ineligible for patentability?

          Electronic brains is what we are building.

    2. Oh, and, by the way, professor, if you are interested in learning patent law, you might want to know that if the Russian dolls were endless, then it would be an enablement issue that is part of 35 USC 112. (But, then somehow or another I seem to be sure you interest is not in learning patent law or science.)

  3. What strikes me is that SCOTUS, the Federal Circuit and the academics have a solution to the problem that patent law is in a hole. It is to exhort everybody to keep digging.

    Whether there is enough “structure” is answered simply by enquiring whether the subject matter of the claim can be enabled by the reader of ordinary skill, over the width of the claim and whether it recites in combination those features that do deliver the invention. Why burden yourselves with more than that?

    Whether the claimed subject matter is inherently the sort of stuff for which patents should be granted is answered simply by enquiring whether its novelty and non-obviousness is exhibited within a TRIPS “field of technology” (rather than in something purely social, like numbers of “Like” votes on FACEBOOK).

    Somebody noted in this thread that under the EPC software is not eligible. Wrong. Art 52 EPC denies eligibility to a number of things, but only to the extent that the claim is directed to that thing “as such”.

    link to epo.org

    Nevertheless, when you are pitching at the EPO for a patent on software, it helps to show that the contribution your invention makes is in a field of technology.

    With that approach, you can climb up, out of the hole.

    There are plenty of recent references in recent US caselaw to claims corresponding to the solution of a problem in technology. Enough to provide toe holds to climb out of the hole, I should have thought.

    1. >Whether there is enough “structure” is answered simply by enquiring whether the subject matter of the claim can be enabled by the reader of ordinary skill, over the width of the claim and whether it recites in combination those features that do deliver the invention. Why burden yourselves with more than that?

      This is who every real patent attorney in the US thinks Max. What you are seeing is judicial activist coming up with witch arguments to create a system where a judge gets to decide if they like the patent. Basically, what it boils down to is a system for the very rich. If the judge sees it is Google, then it will pass muster. If it is a small entity, then the structure arguments will come out.

      It is not just patent law. It is the zeitgeist. We are going back to the 1890’s. The people on this blog that present these witch arguments are just tools of the very rich.

    2. If you haven’t figured it out yet Max, we aren’t the country we were 20 years ago. We are gutted. We are one serious recession away from third world status and revolution. I hope Europe holds up. Maybe I can move there again.

    3. And Max, after thinking about what you said I have another perspective.

      At the EPO, you are right that the technical character of software is looked whether it improves the functioning of the machine. But, you see the reason the judicial activist in the US can’t use this test is because then they are admitting that software has structure. So, then all the other software comes into eligibility.

      So, the judicial activist who have the voice with the Google bucks behind them and Google right there in the Oval office every week and dictating to Obama which judges to appoint to the fed. cir. and which director to appoint as the head of the PTO. That is how powerful Google is.

      You see the judicial activist problem? We don’t have the technical test. If the judicial activist were to concede it then they would lose the game. So, they have decided to create these myths about functional claims and structure. The people behind this are smart. That is one of the scary things about modern America. The people behind the curtains are very well educated and very intelligent. They are hard to fight. The good fight and intellectually honestly didn’t win in 1890 either.

      1. And Max, please spend some time to read and understand this 17.3. Because this one is really what is going on.

    4. And also Ned you should ask whether or not these discussions even on this blog are fueled by Google. I think they clearly are. There is little doubt that paid bloggers dominate this blog.

    5. MD: Whether there is enough “structure” is answered simply by enquiring whether the subject matter of the claim can be enabled by the reader of ordinary skill, over the width of the claim and whether it recites in combination those features that do deliver the invention.

      Well, if we were talking about non-existent novel “structure” (in quotes), there are all kinds of ways to answer that question and you’ve picked one that is relatively difficult and expensive to answer.

      But the real issue is simply recognizing that algorithms are not structure and this fiction was created out of whole cloth by the judiciary without, apparently, any further thought other than “let’s inflate the patent system with junk functionally claimed at the point of novelty — what could go wrong?”. As a result of the ad hoc creation and perpetuation of this fiction, the CAFC and its predecessor court opened a Pandora’s box that directly spawned many of the worst patents and the worst patentees out there. The fiction and its consequences are the underlying reasons for the patent reform laws that are being passed today, and the direct cause for the judicial rollbacks that are taking place and are going to continue to take place (like this).

      Why burden yourselves with more than that?

      It’s not a “burden” to recognize that there is no novel stucture recited in a typical new information processing “system” claim.

      The reason these issues keep coming up, MD, is because of the logical inconsistencies and fallacies at the heart of the jurisprudence or, in the case of the EPO, the statutes themselves.

      1. Thanks for that MM. You say “difficult and expensive” and I’m not going to challenge you on that. If it’s impossibly expensive then another solution is needed, clearly.

        I am conscious that since 1978 I have been practising in the civil law environment at the EPO, very different from the adversarial, witness evidence-based environment in the courts of the USA and England. What is inherently very expensive in English litigation is often very much less expensive in a civil law environment. So no-brainer solutions for Munich are perhaps not solutions at all in DC.

        Your concern is a “new information processing system claim”. The EPO gets rid of these quite effortlessly, without getting into any debate about how much or how little “structure” is in the claim. Seems to me it ought to be possible, also in the USA. But this is not my specialist field. I would defer to those who draft and prosecute such claims in both the USA and Europe. If they are willing to tell us, what is their experience?

        But meanwhile, I’m curious. What are the fallacies you are seeing in the EPC, pray?

  4. “Patent law can, and does, identify an “algorithm” for performing a function as structure for legal purposes in a software claim, but it is importantly only metaphorical structure.”

    Metaphorical? These are part of the definition of “structure”.

    Definition of STRUCTURE

    something arranged in a definite pattern of organization

    link to merriam-webster.com

    It seems to me that steps of a method or processes are literally (not metaphorically something arranged in a definite pattern of organization. Furthermore, one could just as easily roll ones eyes at recitation of steel components.

    What is the difference between recitation of a “screw” and recitation of a “means for helically attaching”? Neither specifies the length of the screw. Neither specifies the diameter of the screw. Neither specifies the number of threads per inch. Neither specifies the material of the screw. Neither specifies the head type (e.g., Philips or the other kind). Neither specifies wood screw or machine screw….Yet no one would allege that recitation of a screw is functional claiming or a nonce word.
    Why is that?

    1. something arranged in a definite pattern of organization

      What is the definite pattern of organization of a module, device, gadget or doohickey? Tell everyone.

      no one would allege that recitation of a screw is functional claiming or a nonce word. Why is that?

      The short answer is that the recitation of “a screw” implies a definite, objective structure for a physical object.

      Neither specifies the length of the screw. Neither specifies the diameter of the screw. Neither specifies the number of threads per inch. Neither specifies the material of the screw. Neither specifies the head type (e.g., Philips or the other kind). Neither specifies wood screw or machine screw.

      Right. And neither specifies whether the screw is painted in zebra-stripes or polka dots. Or whether the screw was obtained from a guy named Bob using a credit card. Or whether the screw was acquired as a prize for winning a bingo game. That’s because all the aspects that “aren’t identified” by the term “screw” are not relevant to the issue of sufficient structure. What is relevant is the structure that is, in fact, identified.

      This really isn’t as difficult as you are making it out to be. But I understand why you would want to try to make it difficult.

      1. “That’s because all the aspects that “aren’t identified” by the term “screw” are not relevant to the issue of sufficient structure. What is relevant is the structure that is, in fact, identified.”

        The length and diameter of the screw and whether the screw is a wood screw or machine screw, or self-tapping are not relevant to the issue of sufficient structure?

        I’m sorry, but you are wrong. If a wood screw is needed, a machine screw will not do. If a 2 inch screw is needed, a 1 inch screw will not do.

        These details are far more important than the specific implementation of a digital filter that might be specified as: means for low pass filtering said input signal having a pole at 500Hz.

        1. If a wood screw is needed, a machine screw will not do. If a 2 inch screw is needed, a 1 inch screw will not do.

          It’s important to keep in mind that we’re talking about what constitutes sufficient structure in a patent claim, not whether the instructions for assembling a specific kite are “suitable for kids between five and ten years old.”

          The point you seem to be ducking around is that “if a screw is needed, a nail won’t do.” And there is an objective structural distinction — not a logical distinction — between the two terms that pretty much all reasonable and articulate adults can describe and understand and agree upon.

          Of course, if you believe that the patent system was intended to protect “new logic”, then whether there is a structural distinction being made in the claims or some other kind of distinction might not matter to you. That seems to be what’s going on here, as far as I can tell.

          1. The irony of Malcolm wanting to use “logic” to duck out of the “objective physical structure” counter points of Les is indeed Rich.

          2. “The point you seem to be ducking around is that “if a screw is needed, a nail won’t do.” And there is an objective structural distinction — not a logical distinction — between the two terms that pretty much all reasonable and articulate adults can describe and understand and agree upon.”

            The point you seem to be ducking around is that “if a means for low pass filtering is needed, a means for high pass filtering won’t do.” And there is an objective structural distinction — not a logical distinction — between the two terms that pretty much all reasonable and articulate adults can describe and understand and agree upon.

            capice?

            1. Les: there is an objective structural distinction — not a logical distinction — between the two terms

              You’re doing quite a bit of goalpost moving here.

              Earlier you referred to: a digital filter “means for low pass filtering said input signal having a pole at 500Hz.”

              So, tell everyone what the physical, structural distinction is between a digital filter “means” for “low pass filtering said input signal having a pole at 500 Hz” and, say, a digital filter “means” for “low pass filtering said input signal having a pole at 499 Hz.”

              I’m not suggesting that there is or isn’t such a distinction. I’m just asking you to tell everyone what the specific, objective structural distinction is between those two digital filters. Obviously you know what it is. So tell us all what it is.

              Then we can talk about the specific objective structural distinctions between circuitry that determines when Billy’s credit card was last used and circuitry that determines when Granny last “liked” one of Billy’s awesome Facebook updates. Because it’s all the same, right?

              1. Malcolm,

                You are doing quite a bit of something here…

                Looks like “flailing,” trying to counter Les’s “objective physical structure” difference with “logic.”

                The kind of “flailing” that you would see a duck do.

                Quack!

              2. You are the one moving the goal post. The point of this particular sub-thread is that references to clearly physical components can be just as vague and non-specific as “means for” language or alleged “nonce words” and that such vagueness is merely reflecting the breadth of the claim and is not viewed as a crisis or grabing more than the inventor is entitled when it is a vaguely recited screw. So why is it a crisis when it is a vaguely recited means for helically attaching or module or means for low pass filtering?

                To answer your question, at first blush, the difference in the filters might be in the value of a resistor or capacitor. On the other hand, resistors and capacitors and filters are not usually designed with the precision your question implies. Indeed, during operation, they are likely to drift more than the precision your question implies would allow. So, if the pole needs to be precisely 499 Hz one might have to use an entirely different filter design than originally intended.

                In the digital filter domain, I think what would be different is the ratio of coefficient values in an equation and/or a sampling rate. However, frankly I have forgotten. Again, the precision implied by 499Hz might require a change from integers to longs or even “real” values.

                The structural difference between your Billy and Granny circuits is also a difference in values and perhaps the number of values involved.

                1. structural difference between your Billy and Granny circuits is also a difference in values

                  Complete nonsense, Les.

              3. “Earlier you referred to: a digital filter “means for low pass filtering said input signal having a pole at 500Hz.””

                No I didn’t. A means for low pass filtering said input signal having a pole at 500Hz, is not necessarily digital.

                1. Les: “Earlier you referred to: a digital filter “means for low pass filtering said input signal having a pole at 500Hz.””

                  No I didn’t.

                  Yes you did. Direct quote from 16.1.1.1: the specific implementation of a digital filter that might be specified as: means for low pass filtering said input signal having a pole at 500Hz

                  As for this: In the digital filter domain, I think what would be different is the ratio of coefficient values in an equation and/or a sampling rate.

                  In other words: you can’t identify the objective, specific structural distinction between the two digital filters we’re discussing. That’s not your fault, of course (I knew you couldn’t do it). But it is your fault for pretending that there was a difference in structure and that “skilled” people like you could identify it based on the recited function. This is a common error, by the way, that your friend Night Writer makes all the time. Ultimately it’s a serious issue for you. You can’t wave it away. You can try to wave it away. But it’s going to keep coming back.

                  Watch and see.

                2. “In other words: you can’t identify the objective, specific structural distinction between the two digital filters we’re discussing. ”

                  No. That is the structural difference. The arrangement of physical electrons in physical memory locations physically holding those values is physically different. Measurement of those differences is what causes the processor to behave differently and for the processing to be different.

                3. “In other words: you can’t identify the objective, specific structural distinction between the two digital filters we’re discussing. ”

                  No. Read again please the definition of structure provided in post 16.

          3. Put another way, the point you seem to be ducking around is that “if a screw is needed, a means for helically attaching will do.” And there is no objective structural distinction — nor a logical distinction — between the two terms that pretty much all reasonable and articulate adults can recognize and agree upon.

            1. the point you seem to be ducking around is that “if a screw is needed, a means for helically attaching will do.”

              I’m not ducking around that point at all.

              I’m also not ducking around the point that “means for helically attaching” is just a desperate dust-kicking lawyer’s term for “screwing”, nor am I ducking around the point that this thread — and this case — is about functional claims to information processing apparati and methods and has nothing to do with screws or any other structurally descriptive means of attaching two otherwise distinct physical objects.

      1. Ned,

        Tell me again (or more accurately, for yet the first time) about Morse’s “space.”

        Now kindly stfu – your pedantic rhetorical tick has had its fifteen minutes.

        1. The Morse apparatus drew marks on a moving paper — long or short — by swiping a pencil or the like across the moving paper at different speeds. Groups of marks were separated by spaces.

          These things were physical.

          1. You keep on wanting to talk about something that I am not asking about.

            Focus Ned – focus only on the “space.”

            What was the structure of the space?

            How much did the space weigh?

            How many spaces could you fit into a a mailbox?

            LOL – how do you like your little game played against you?

            1. Anon,

              The “space” in Morse’s patent is a measurable length of paper (or a paper substitute) that lacked the punctures, dots, or marks that recorded the signs being received.

              Paper is a well-known structure, with weight, and enough such snippets of non-marked paper will certainly fill a mailbox.

              1. So, Doobie, have you ever thought that the patent system is supposed to try to understand new technologies? That it is your responsibility to put an effort into understanding the new technology.

                Every piece of software plus GPC is equivalent to a special purpose computer. That is fact. Do you think chips have no structure?

                What is your brain? Does your brain have structure? Information processing takes a machine to process the information. The machine uses space, time, and energy—and must have structure.

              2. Dobu, tell me again about how software earns copyright – but only when fixed in a tangible medium and then compare to the paper of the space.

                Then remember that the thought of software is not software

                (Bonus: the execution of software is not software either)

          2. So Ned, “physical” is the test and information processing isn’t physical? So, either it takes place in the spirit world or it is physical.

            This is so bizarre. I remember in High School reading about medieval thinking and here we are…

            Information processing takes space, time, and energy and either has structure or there is magic where it takes place in the spirit world. Maybe you all are right. Maybe there is no physical basis for thought and we actually all exist in the spirit world. I wonder why our brains are there. It is clear that most people on this blog don’t need them.

            1. So, Night, if processing information takes time, energy and space, then claim it for what it is — the use of a computer to process information.

              1. >>the use of a computer to process information.

                Got love statement like this. How do you look yourself in the mirror.

                Information processing methods and machines are claimed as such now. It is not the “use of a computer” because the computer becomes a modified computer with the component software for the case of software as opposed to special purpose chips.

                So, Edward, the way to think about it is that in reality these claims specify a special purpose information processing machines that takes space and has structure. A special form of this special purpose information processing machine is software as a component to a general purpose computer which makes a new computer.

                But, then you knew that.

      2. “Hey Les, if the law requires structure to have mass, how much does the structure of A * B + C weigh?”

        1. The law does not require structure to have mass.

        2. One can’t claim A * B + C, so I don’t understand the point of your question.

        3. Did you mean how much does a method of determining a value from A * B + C? Even if the law required structure to have mass, I’m pretty sure the law wouldn’t be so through the looking glass as to require a method to have mass.

        4. Do you mean how much mass does an apparatus have that can perform A * B + C? I’m sure it varies quite a bit and that on the low end they are getting lighter and lighter every day….lets say somewhere between 7 tons and 1.2 grams, just for the sake of discussion.

        What’s your point?

        1. Les, I am pretty sure structure means apparatus within the context of 101.

          Now, if you can argue that an apparatus does not have to exist except in the mind with a straight face, then I will accept your argument that structure does not have to have mass.

          But until now, calling the ordering of abstractions such as found in equations or programs structure is the same thing as saying abstract ideas have mass.

          1. As of December 10, 2014, I found > 100,000 patents directed to logical or virtual devices of some sort.

            Many confuse reality with materiality, but something non-material can certainly be real and not abstract.

            Physicists wasted a lot of time in the 19th and early 20th centuries to find proof of the existence of the Aether.

          2. “Les, I am pretty sure structure means apparatus within the context of 101.”

            I’m quite sure you are mistaken.

            I’m sure the courts have listed flow charts as disclosure of structure.

            1. Not the courts that count, Les.

              We trace your “ideas have structure” cases back to Application of Bernhart where the court had the idea that a sequence of computer states in response to a program somehow was a new machine.

              Let’s have an en banc review of that case, Les. It is not good law because it is based on an error of fact.

  5. “The Federal Circuit’s approach to identifying algorithms is more like ducking the important question than providing an answer to it.”

    What people have been saying for years. Including me.

  6. “Structure in the law of software patents is a legal fiction that has been manufactured to achieve patent policy goals.”

    If the courts and officials would acknowledge such explicitly then perhaps the everyman would be more on board.

    1. >“Structure in the law of software patents is a legal fiction that has been >manufactured to achieve patent policy goals.”

      Of course this is exactly backwards where in science — you know peer reviewed real journals–software has structure whereas in law journals with Lemley as the author and there is no peer review the software doesn’t have structure.

      Let’s see which has more credibility to intellectually honest people. Law journal or science journal. I think I would pick the science journal.

    2. “Legal fiction?” Where do they make this stuff up?

      The CCPA held software to be actual physical structure in a computer- making it per se patentable subject matter under 101 as a new machine.

      1. That’s what the article is saying, Ned. The CCPA manufactured that legal fiction because it wanted software to be patentable, per se.

        Kind of like when SCOTUS decided that legally, tomatoes are vegetables. (Nix v. Hedden, 1893)

        No reason to let reality or scientific facts get in the way of an agenda, eh?
        =)

        1. >>The CCPA manufactured that legal fiction

          Except it is not a legal fiction. In fact, the source saying it is not structure is law journal articles that are not peer reviewed and basically–let’s fact it–worth less than a blog post.

          1. Night, it is a legal fiction, attempting to deform the abstract software structure that scientific articles discuss to fit in the mold of tangible structure that had classically been at the core of patent law.

            1. >the abstract software structure that scientific articles discuss

              This is flatly wrong and perhaps a 1ie. I am skilled in the art. I have graduate degree in computer science. I have designed chips. I have designed software. There is no “abstract” structure in the sense you mean to evoke Alice.

              So, Doobie, why do you continue to 1ie about this? Seriously are you paid by Google to 1ie? There is no serious person that would make these arguments you make.

              The way it works: you walk down the ladders of abstraction. As you do, there are many solutions at each step of the ladder. For a given specification and claims of information processing, there are many millions of solutions that are enabled. I know what they are. I know the set of solutions that are enabled. From a spec and claims I could build 1000’s of solutions.

              That is how it works in my field. So why do you 1ie about it? Why?

              Does your brain have structure? Or is it as Stevens contends that information processing occurs in the spirit world without physical form. That is what Stevens thinks.

              1. Night,

                Being abrasive and pompous wasn’t enough, now you’re being crass, childish, and insulting. Grow up, already.

                You’re not the only one with a post-graduate degree. I can add over 20 years experience in computer (board-level) and software (O.S.-level to application-level) development to the pot, as well.

                I am not paid, directly or indirectly, by Google, and frankly, your pet conspiracy theory is getting rather tiresome.

                Of course brains have structure. “Gray matter” is still matter. IDEAS ARE NOT STRUCTURE, and neither are computer programs. I won’t question the reason for your prevarication, as the reason is fairly obvious. “$”.

                1. Count Doobie,

                  >Of course brains have structure. “Gray matter” is still matter. IDEAS ARE NOT STRUCTURE, and neither are computer programs. I

                  Doobie, I first thought about whether software has structure 35 years ago. I was taught by engineering professors that it clearly had structure and why it has structure and the absurd results if one assumed it did not have structure. Your education must be lacking. Please tell me a peer reviewed respected journal where there is an article that says software has no structure? (thought not)

                  >>your pet conspiracy theory is getting rather tiresome.

                  There have been a number of articles on Google’s influence in DC and their anti-patent basis. I’ve linked to the them before. This is not a pet theory. Factual. Please educate yourself.

        2. Dobu, OK, I will concede that point. They knew better, but they clearly had an agenda, and in case after case, pursued it until the programmed computer provided the basis for the holding in State Street Bank.

          As to experience, I had a lot of experience right out of school (BS physics) working on computer hardware and software. Designed an OS that a fairly large team of programmers implemented. Then I got bored and went to law school. But I have been working in the computer field as a patent attorney ever since, from architecture, to circuits, to programs.

          The loudest voices on the “software is structure” position don’t seem to really have a clue as to what a computer really is, how it operates, etc. They seem upset when I describe the first programmed computers as feeding the programs into the machine (that may have had some basic OS running in memory) via paper tape or the like — similar to today’s disk drive or cloud storage. The programs existed on external media, not in the computer. Turn the computer off and see if its circuits are the same or different than before the computer was used to run a program.

          link to en.wikipedia.org

          1. The circuits are the same of course.

            But why do you think -only- circuits can be structure?

            Why isn’t magnetization of a hard-disk drive storing a program structure?

            Or why aren’t electrons trapped in the cells of a flash memory structure?

            What’s so special about protons and neutrons that their arrangement counts towards structure in a way that electrons clearly cannot in your view?

            Also, if I built an -ion- computer that moved around -atomic nuclei- to encode data, would programs stored in such a manner count as structure in your view? If not, why not? And if so, why don’t electrons count?

            1. Where is the hard drive? In the cloud? Where?

              When we are talking generically about computers, we need to be clear about where the programs are stored. Historically, they were first stored on punched tape. I programmed such machines when working on missiles when I first got out of school.

              But no one would consider a punched tape be part of the computer. Clearly, the computer read the punched tape at the behest of a human.

              1. Ok, let’s say for the sake of argument that we’re talking about a laptop with a built-in HDD or SDD, is a program stored thereon structure for the purposes of an apparatus claim?

                (You’ve changed topic a little here, but storing the program “in a cloud” is a definite possibility that might be captured with an appropriate system claim. Let’s save this one for later.)

                1. I’m sorry, we are not talking about infringement, but what is being claimed and what you are providing for support.

                  A generic computer dates from the 1940s. It did not have a memory for storing programs. It had punched tape.

                  When you say “computer” you cannot mean a specific computer that has permanently integrated program storage. That didn’t exist for a very long time.

                  I am sure that for support for what you are claiming you do not identify a specific kind of computer having a specific kind of program storage.

                  It therefor is a given that a generic computer does not have dedicated program storage. Today, if the entire laptop is deemed to be the computer, yes. But there are kinds of computers where the user only has a display and a processor, but no program memory at all.

                  The fallacy began with the broad and inane statements in Bernhart where the CCPA discussed a programmed computer as if they had just watched Dr. Strangelove, fighting for control of his independent, Fuhrer loving, right arm, expound to the president in the “war room” about programming a computer to do this or that. They seemed to have no clue as to what they were talking about. Where were the programs stored? How were they executed. What happens when the power is turned off. Did the programs vanish? If not, why not?

                  Did the ask any of these questions? No. Why? They either didn’t know enough about the topic to even get that far, or they simply didn’t care. They had the Dr. Strangelove view of things.

                2. Your frozen-in-time view is truly one of the most bizarre things that I have ever read on these boards.

                  And that is saying a lot.

                  That you then have the audacity and the unmitigat d gall to turn around and accuse others of inane statements and fallacies is just well beyond the pale.

                  Respectfully Ned – you are one Fd up individual.

                3. I am sure that for support for what you are claiming you do not identify a specific kind of computer having a specific kind of program storage.

                  Ned, I’m afraid you’ve gone and shot yourself in the foot with this one, as all of my issued patents and pending applications do mention the physical structure for storing the program. I have never claimed execution of logic completely divorced from any physical substrait, and I admit that such claims/specs are less than ideal (though my position is that a “processor configured to” claim can lean on the knowledge of the ordinarily skilled to supply an instruction memory). And this is all very legally irrelevant as courts have never found the lack of an instruction memory to be the issue with a computer software-related patent.

                  But insisting on explicit recitation of some general means of storing a program in a claim is very different from stating that “software has no structure” and the former is at least somewhat defensible.

                4. Green, you’re somewhat late to this conversation we been having about whether a programmed computer can be a new machine. We have been having this discussion here for years. One of the things I would agree to is that if the claim actually requires the program be physically present even when the machine is turned off so that it automatically may be executed by the machine when the machine is operating, that I would begin to concede the point that the program has become part of the machine. Only when the program becomes part of the machine will I agree that the machine is somewhat different that a computer without such a program.

                  There are a lot of people here who call using an old computer to execute a program a new computer without ever agreeing that the program must be part of the computer physically and on a somewhat permanent basis for the computer to even begin to be considered modified by the program.

                5. I think requiring a program to persist power cycling the computer is an artificial restriction.

                  For many claims/specs, it ought to be enough if the instructions reside in a memory communicatively connected to the processor and operative to execute the program. The instruction memory may have layers of caching, from on-chip instruction cache to main memory to cloud, if necessary.

                  When you load an online game, you create a different machine. Same as when you attach a disposable blade to a razor handle. It’s not mounted “permanently”. But now you can shave and before you couldn’t, so clearly you’ve constructed a different machine with different capabilities than either part alone.

                6. Green, I resist conflating a new machine with using an old machine.

                  Loading a programming into a computer and executing it is the very definition of using a computer.


                7. Green, I resist conflating a new machine with using an old machine.

                  Loading a programming into a computer and executing it is the very definition of using a computer.

                  Why do you think using one machine can’t result in the creation (and destruction) of another machine?

                  Think of a mechanical machine A that has banks of standard machine parts and can, when you press a button, assemble machine B within an initially empty workspace of machine A. Use of machine A results in creating an instance of machine B. You can then use machine B, and when you’re done, machine A can disassemble it, returning the parts to the banks of parts they belong to. Then you can assemble machine C if you want. The use of machine A lets use create and use all these other machines. And, suppose for the sake of argument that all the functionality of machine A is implemented using Babbage-style mechanical control systems rather than electrical ciruits and/or magnetic hard disk drives.

                  The only contradiction is using a machine to create -itself-, since you can’t use it before it has been created.

          2. >>The loudest voices on the “software is structure” position don’t seem to really have a clue

            Pretty sure Ned the red that you have this backwards…

  7. This blog has become the news equivalent of Fox News. Why aren’t articles being published on this blog that decry the destruction of the patent system? People like Rader are writing such articles. These types of articles are being published on many respectable blogs like ipwatchdog.com.

    What we see on this blog are professors that typically have no science background publishing articles telling people with science backgrounds what science is. And we see paid blogger for the anti-patent movement dominating the comments.

    It has become the Fox News of the patent blog world.

    1. What we see on this blog are professors that typically have no science background publishing articles telling people with science backgrounds what science is.

      Because the sockpuppet says so! LOL

      Why aren’t articles being published on this blog that decry the destruction of the patent system? People like Rader are writing such articles.

      Sometimes the fruit hangs so low that you actually have to bend down to pick it. I’m just going to let this one hang there because the punch lines write themselves.

    2. These types of articles are being published on many respectable blogs like ipwatchdog.com.

      Right, and that blog isn’t remotely similar to FoxNews. Other than the fact that it’s content and message is controlled by a wealthy Republican endlessly shilling for his own self-interest.

      1. The use of the same language is somehow “not allowed” …???

        Vis a vis: Malcolm and his own propensity for “e fact that it’s content and message is controlled by a ______ endlessly shilling for his own self-interest.

        The editing only mirrors the very joke that is Malcolm.

        As if no one would notice… (pain, like appearances, self induced)

    3. I’m trying to figure out whether this post is a joke, along the lines of Stephen Colbert?

      For example, it laments the lack of posts from people like Former Chief Judge Rader, who has an English degree and zero technical skills, according to Wikipedia, yet complains that on this blog “are professors that typically have no science background publishing articles telling people with science backgrounds what science is.”

      If this is meant to be parody, well played. Well played. Night, if this is your post, I salute you.

      1. Please tell us Jane why module is used to specify 1000’s and 1000’s of programs on elance.com if it has no structure.

        Please refer us to a scientific journal that is peer reviewed that would say software has no structure.

        I feel like I am in a movie where I have been transported back to medieval Europe.

        What you have to love about all this is the constant appeal to the scientific ignorance of the crowd. (Jane you have the stench of Google on you.)

  8. Can the great and powerful professor just respond to why it is that 1000’s and 1000’s of jobs are bid out that use the world “module” on elance.com and yet apparently legally now that word is a nonce word. Imagine all those people skilled in the art of information processing using the word module over and over again when it has no meaning.

    Why would they do that professor?

    1. This comment is so off-the-wall and beside the point of the article that it’s barely worth addressing. But I’ll do it anyway.

      doohickey: a small object or gadget, especially one whose name the speaker does not know or cannot recall.

      Is “doohickey” sufficiently definite as a claim term? After all, small objects and gadgets have structure. Millions of people use small objects and gadgets in their work. Are we going to tell those people that their work is worthless? Are all the millions of people who use the term “doohickey” speaking gibberish to us?

      These questions deserve answers (in the minds of some people, apparently).

      1. Except that was no answer and except, of course, it is the crucial question.

        But, I know you need to post this stuff.

      2. Is “doohickey” sufficiently definite as a claim term? After all, small objects and gadgets have structure. Millions of people use small objects and gadgets in their work. Are we going to tell those people that their work is worthless? Are all the millions of people who use the term “doohickey” speaking gibberish to us?

        No. doohickey by itself is probably too broad. But a claim element reciting a doohickey that for inclusion at point X that does Y is sufficiently definite.

        I once posted a need for a doohickey for a particular make and model and model year motorcycle and further described where it went and what it did. A week later I received the exact item I needed in the mail from a kind stranger. So… you know…

  9. This is an excellent article that neatly identifies the key issues that surely are going to be addressed. The big question is: who is going to address them?

    Perhaps what we need to do is get patent lawyers, software engineers, and economists around a table. Perhaps they can articulate clear guidelines identifying a level of specificity at which functional software claims should be upheld, i.e., a level that identifies an algorithm and thus metaphorical structure.

    Of course this is what we should do. The worst solution is to create guidelines on an ad hoc basis around controversial claims litigated by parties whose only interests are typically the immediate profit/loss generated by the suit. What’s fascinating, however, is the unwillingness of the proponents of some form of software patenting (I’m not included in that short list) to step up and provide their answers to the obvious questions Collins has raised here (and which have been raised before many, many times in these comments). At the same time, the proponents of software patenting spend enormous energy railing against “judicial activism” in the 101 context. Do they not understand that more judge-made law restricting “software patents” is all they are going to get down the road unless they come up with a solid, practical alternative for examining and evaluating the validity of patents on information-processing logic? Or, is it the case that they do understand this and they understand there is no practical realistic solution so the best they can hope to do is simply stamp their feet and attempt to slow the tide of change by pressuring the judges politically?

    In addition to the listed participants around that table, I would also include “ordinary people who use computers” in that list of invitees as creating “new” information-processing applications for personal use (e.g., in a small business) is something “ordinary” people are going to be able to do with increasing ease as time goes by. To the extent those ordinary people and their financial situation can be identified, those ordinary people will increasingly become targets for patent lawsuits. The patent maximalists consider that scenario to be a feature (not a bug) of a “strong” patent system.

    Michael Risch alludes to this problem in his blog post on Williamson when he asked “[H]ow much structure is enough?” However, I think that a question precedent to Risch’s question is both more difficult and fundamental, namely “When is there any structure at all?” What level of specificity in a functional description counts as metaphorical structure?

    I had the exact same reaction when I read Risch’s article, for the same reasons.

    There was a recent oral argument in Virginia Innovative Sciences v. Samsung where the panel of CAFC judges spent a fair amount of time (maybe five minutes!) trying to figure out when sufficient “structure” was represented by an algorithm. Down the rabbit hole they want, scratching their heads, to the point of asking (I’m paraphrasing here) whether the “structure-ness” of the fake non-existent structure was to be measured by the cumulative amount of sweat collected under the desks of the programmers necessary to implement a commercially satisfactory embodiment of the claimed functionality.

    At the end of the day, the CAFC ended up punting on that issue, finding other reasons to kick the case back to the district court for “further consideration.”

    1. See 10.1.

      Your feelings aside, the ends do not justify the means.

      You want a different law? Talk to your congressman. In the mean time, stop trying to “spin” the current law into something that it just is not right now – this is not something for a “table” of academics with agendas to push for the judicial branch to “opt” through “semantics” and “re-conceptualizations.”

      1. In the mean time, stop trying to “spin” the current law into something that it just is not right now

        The “current law” is in the process of being “unspun” after Judge Rich and Company completely mangled it.

        this is not something for a “table” of academics with agendas to push for

        In fact, people everywhere are perfectly entitled to use their ability to communicate to “push for” all kinds of changes. The First Amendment provides a great deal of latitude in that respect.

        The software patent maximalists wish that weren’t the case, of course, because their spectactular losses in both the court of public opinion and in courts of law are mounting and are destined to continue to mount.

        As Professor Collins has suggested (along with many others, including myself): perhaps it’s time to take another approach to the problem and start thinking seriously about whether there is a reasonable, practical fallback position and exactly what is that position?

        It’s your choice whether to participate in that debate or not. If you want to just continue ranting against “the Royal Nine” and demanding that the “judicial exceptions” to 101 are expunged from the case law, you are free to continue in that vein if it makes you feel good. I just think that approach is working very well for you or your cohorts. I also assume (against some evidence) that you can see that with your own eyes.

        [shrugs]

        1. Congress has passed new laws…

          Oh wait, you mean the other thing (and directly confirm my point in the process).

          Maybe you too need a basic lesson in statutory law….

        2. …and do I really need to point out that your “B-b-but First Amendment” is a pa thet ic strawman, since no one is saying that a discussion of desired changed laws is not allowed, but rather, my posts call for an accurate portrayal of current laws and the characterization of spin and “re-conceptualization” of those existing laws to mean something else as being outside of the well-established mechanism for effecting statutory law change…

          A professor of law should know better. And yet, the philosophy of a desired end overcomes the means…

          1. “anon” my posts call for an accurate portrayal of current laws

            Your posts are mostly incomprehensible and nobody cares what you are “calling for”.

    2. Let’s see: software has no structure says the professor and his cohorts and as proof he cites articles in law journals that are not peer reviewed. How about professor you cite an article in a respected science journal that says that software has no structure? Because all the articles I have read for the last 35 years in science journals that are peer reviewed say that software has structure.

      1. Notice how the patent law doctrine of inherency is avoided in order to “magically” have “old box” have all future software changes “already in there.”

        Same logic – by the way – of my Big Box of electrons, protons, and neutrons and all future possibilities “already in there.”

        1. Notice how the patent law doctrine of inherency is avoided in order to “magically” have “old box” have all future software changes “already in there.” Same logic – by the way – of my Big Box of electrons

          You should publish your deep thoughts on a respectable blog that isn’t anything like Fox News.

          1. I brushed away the empty ad hominem to see what your point was, but there was nothing there.

            Maybe try again and use those short declarative sentences you are always on about to say something of merit to add to the conversation.

      2. all the articles I have read for the last 35 years in science journals that are peer reviewed say that software has structure.”

        “all the articles I have read for the last 35 years in grammar journals say that sentences have structure.”

        Deep stuff, folks.

      3. Do any of those science journals say software has physical structure?

        Two machines running the same algorithm need have no physical feature in common not shared by machines running completely different algorithms. Thus specifying the algorithm doesn’t specify any particular physical structure.

        Maybe current patent law doesn’t distinguish between physical and non-physical structure, but this isn’t an inherently absurd line to draw.

        1. Application of Bernhart, 417 F.2d 1395, 163 U.S.P.Q. 611 (C.C.P.A. 1969). link to scholar.google.com

          “There is one further rationale used by both the board and the examiner, namely, that the provision of new signals to be stored by the computer does not make it a new machine, i. e. it is structurally the same, no matter how new, useful and unobvious the result. This rationale really goes more to novelty than to statutory subject matter but it appears to be at the heart of the present controversy. To this question we say that if a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed. If a new machine has not been invented, certainly a “new and useful improvement” of the unprogrammed machine has been…”

          Id. at 1400.

          One has to hand it to the CCPA. They pull things out of the air, or someplace, with infinite ease.

          1. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed.

            This absurd “reasoning” could be used to justify the functional claiming of any molecule or apparatus that is too small to see with one’s eyeballs.

            1. You rather miss the point that the change is in fact real and physical and not magical or mystical.

              My your “reasonable and articulate adult sense” took a holiday rather quickly, my dear Red Queen.

          2. That’s true, but completely misses the point.

            Just as the patent doesn’t specify any physical structure for the machine running the algorithm, it doesn’t specify the physical changes that occur in the machine while it’s running the algorithm

            Nor am I arguing that there is a legal requirement for a patent to specify any physical structure, or even that there should be such a requirement. Argument on those grounds too would miss the point of my initial post, which is two-fold

            Firstly, distinguishing between physical and non-physical structure is not inherently absurd. People, and the law, can draw a line between the two, treating them differently, without being inconsistent.

            Secondly, when people deny that software has structure, they usually mean physical structure. Pointing at the elaborate structure of the code will get you nowhere, because they never claimed that structure didn’t exist. You’re simply talking at cross-purposes.

    3. Algorithms define a sequence of steps. When performed by a computer, these steps comprise a sequence of computer instructions sequentially executed. There is no new machine. There is just an old machine executing an algorithm.

      Software does not define structure. Software defines methods and processes.

      Software can be claimed as a method ( in the context of a larger machine, system or conventional process).
      From a disclosure point of you, the steps themselves are sufficient disclosure of what the steps should do, and anyone of ordinary skill in the art in computer programming can implement the steps in any computer system.
      Provided the improve software or algorithm is claimed in the context of a larger machine, system, or process, the traditional process liking Diehr, I don’t understand how anyone can seriously object to “software” patents. The problem comes when the programmed computer by itself is claimed sans larger machine, system or process. Such only claim the use of an old machine to produce numbers whose meaning is an abstraction at best.

      1. Ned,

        Your “just use” is just a fallacy.

        You first must change the machine before you can “just use.”

        This is the lesson of the Grand Hall.

        This is the lesson of In re Nazomi

        This is the lesson of the fallacy of the House/Morse line of thought.

        This is the fallacy that somehow “old box” has all future inventions “already in there”

        This is the same “logic” that drives my Big Box of Electrons, Protons, and Neutrons.

        Your fallacy is exposed because you refuse to recognize that the proper patent doctrine of inherency does not cover your philosophical position.

        This is a lesson that will not go away, no matter how many times you engage in the Internet style shoutdown of ignoring the counterpoints put on the table for discussion.

        Time for a little inte11ectual honesty and the learning and integrating of a few basics:

        Software is a machine component and a manufacture in its own right.

        Software is equivalent to hardware and is equivalent to firmware.

  10. Can anyone tell whether these comments are all coming from the same mental institution, or a couple of different ones?
    link to theonion.com

    I’m not sure what explains the periodic ebb and flow in the quality of patently-o comments, be there seems to be a frustrating ebb lately.

    1. Why?

      The words of Congress are every bit as apt for this form of innovation as to any other form of innovation.

      There is NO need to abide by the wanting of different playing rules.

      If the academia and the courts have to twist the words of Congress to effect their desired ends, then the consequences should not be attempted to be alleviated.

      Stomp on the gas pedal – do not attempt to step on the gas and on the brake at the same time.

    2. I suppose that you could add some additional form of protection to the code that is specific for software. I am not certain, however, that the Congress could just do away with patent eligibility for software. We have fairly broad obligations under TRIPS in terms of subject matter eligibility.

      I think that the Supreme Court has already put us out of compliance with our TRIPS obligations. If Congress were to move protection for software out of patent eligibility and into some new construct, however, that would end all doubt about our non-compliance.

      Incidentally, I would love for one of our European trading partners to haul us in front of the WTO for non-compliance with the subject-matter eligibility provisions of TRIPS. That would force the Congress to act on the section 101 issues that have been percolating for the last few years.

        1. Only per se and as such Ned.

          And perfectly in line with what any Sovereign may decide for themselves.

          Shall I remind you again of Benson and that line you just cannot seem to remember…?

          Hint: “We do not so hold

    3. Software has always been protected by copyright law. Copyright law works very well for software. If software patents were abolished and only copyright law was used to protect software then the legal protection of software intellectual property rights would be strengthened at a hugely reduced cost to the software industry.

      Software consists entirely of algorithms. If the attempts to limit functional claiming were reduced to its narrowest sense then a software patent would only protect the algorithms written into the program, nothing broader. That is indistinguishable from copyright.

      —————————–
      Steve Stites

      1. With all due respect Steve, you have zero clue as to what you are talking about.

        Software has multiple aspects and it is expressly different aspects that are covered under the different IP realms of copyright and patent law.

        I do not find you on the roll of those registered with the patent office, and probably for good reason – you should not be making such egregious errors.

      2. Stites, let us be clear here, we are not talking about patenting software so much as we are talking about patenting new or improved machines, systems or conventional processes which may be alternatively implemented using software or hardware.

        To the extent someone is trying to protect code out of context of an patentable invention — copyright is a good vehicle.

        To the extent someone is trying to patent a business method or the like, then we have a real problem because such “inventions” are not improvements in machines, manufacturers, conventional processes or compositions. They are non statutory regardless they nominally cite the use of a computer.

  11. “Structure in the law of software patents is a legal fiction that has been manufactured to achieve patent policy goals.”

    Oh, OK then.

    “While the amount of uncertainty that follows from the idea/expression dichotomy may be acceptable in copyright law, the same amount of uncertainty in a function/algorithmic-step dichotomy in the law of software patents may not be”

    Ya think?

    We don’t patent ideas for very good reasons. Reasons that have shown themselves good and valid over the past 25 years of trying to patent software ideas. This is only “anti-patent” to people arguing in bad faith. Also too, this concept that rules can’t be changed in the middle of a game is foolhardy; the game is always being played, so this is the same as saying rules can never be changed at all. Maybe in conservative nirvana, but not in real life…..

    1. Martin, the problem with Williamson is that it is not limited to software patents.

      Nothing is going to affect them as noted by the professor. Simply claim the steps in a method. Nothing has changed in terms of patentability. What is going to happen in reactions is that people will abandon claiming software as programmed computers or CRMs.

      But the injustice of invalidating claims due to choice of claim format cannot be understated.

      1. Ned,

        You really need to wake up. I have long told you that the anti-software arguments are nothing more than anti-patent arguments.

        The parallel here to the limitless sword of “Gist/Abstract” is just not an accidental coincidence.

        If you abandon the “nominalist” view of the words used by Congress, there is no bottom to the rabbit-hole you fall into.

        Once you allow the removal of a claim meeting the very words of Congress as being (yes, even just nominally being) a machine, a machine component, or a manufacture, you have effectively removed those words from the statute and re-written the statute to “opt for some behavioral change.”

        This is exactly the nose of wax warned about.

        This is exactly the thing that Judge O’Malley warned about.

        Unclench your eyes. Rest your windmill chasing donkey. Stop marching up Lemming Hill.

    2. And, Martin, if software is nothing more than an idea, then software per se is not patentable even if it is used in a new process as in Diehr. I think this is wrong.

      1. Software has an actual, you know, definition. Give or take, it’s “instructions authored in a language, used by a processing unit to perform operations resulting in state changes within sets of information”

        Patent eligibility for instructions is problematic, as we have seen.

        Software that only further processes information should not be eligible, no matter how useful and novel. Business methods should be patent ineligible, no exceptions. Patents are for things, not ideas, and a rigid wall should be maintained between those concepts.

        However, if the changed information is then used to directly (i.e. not via human intervention) control mechanical or chemical changes in the world (MoT test), and it’s novel / non-obvious, enabled, and described with sufficient clarity, then patent protection should be available for the system or subsystem instructed by the software.

        It takes a special kind of ignorance and sheer chutzpah to argue that that “anti-software arguments are nothing more than anti-patent arguments”. Its more true to say that the pro-software arguments are nothing more than anti-patent arguments, because nothing is shredding a formerly legitimate and valuable institution faster than the ocean of invalid software patents that have been and will be litigated at such frightful cost.

        1. …or maybe the word putz is more fitting…?

          😉

          (You really should care about the terrain upon which you stand and do battle – see Sun Tzu)

        2. Martin S.: It takes a special kind of ignorance and sheer chutzpah to argue that that “anti-software arguments are nothing more than anti-patent arguments”. Its more true to say that the pro-software arguments are nothing more than anti-patent arguments, because nothing is shredding a formerly legitimate and valuable institution faster than the ocean of invalid software patents that have been and will be litigated at such frightful cost.

          Hear! Hear!

          Well spoken.

          Software may improve machines, systems or conventional processes. But when all that is claimed is numbers in, numbers out, where there is meaning in the result that is in the eye of the beholder, then there is a problem.

          Kappos consistently argued for software patents giving examples of improved machines. Then we find that IBM was and probably still is the largest single filer of business method patents….

          1. The Supreme Court has lost traction on your favorite cause Ned.

            From what was 4 Justices has turned at last count to just 3. As you well know, neither number is 5, the necessary number for the the Court to write its version of the law.

            How odd for selective comments throughout the exchange to have disappeared, seemingly as odd and at random as Supreme Court “adherence” to when to stick to past decided cases…

  12. The description “coiled spring” denotes structure; the description “capable of generating kinetic energy when jostled” denotes function. However, this distinction vanishes in the software arts: most software inventions are function all the way down

    This is a bogus comparison, in support of a false dichotomy. The description “capable of generating kinetic energy when jostled” wouldn’t be a limitation in any event – it simply describes an inherent characteristic of the structure. No serious defender of software-implemented claims would try to defend a claim limitation to the effect of “a microprocessor capable of executing program instructions.”

    A better example of a functional limitation related to a spring would be something like “a coiled spring positioned between the chamber floor and the lower surface of the piston, and compressed so as to provide a force of X newtons against the lower surface of the piston.” The “so as to provide a force of X” is a “function,” but puts a structural limitation on the apparatus. I argue that the same generally applies to a well drafted claim that includes processing circuits configured to carry out a set of particular functions.

    1. DanH, but if the sole novelty is in the one element “processing circuits to,” with no new functional relationship to other elements as in Diehr or Alappat, then you run the risk of having your claim invalidated under Halliburton/Faulkner as claiming “the invention” functionally.

      1. Ned,

        You are trying to subtly move the goalposts.

        It is not “new functional relationship” – it is merely “functional relationship.”

        The reading the claim as a whole already takes care of the “mere aggregation of non-integrated elements” concern. Your back-door attempt to “validate” PON remains a canard, one not chosen by Congress when they wrote the Act of 1952.

                1. Not seeing the “filter” catch….

                  One difference that you forget Ned – I have the Act of 1952 – the controlling law as written by the branch of the government so authorized to write the statutory law that is patent law on my side.

                2. But, anon, the thing you forget is that most of it was written well before ’52, some as far back as 1790. What happened in ’52 was intended to be a codification, not a repeal of all prior statutes and case law. But a repeal and reenactment is just how you portray the ’52 Act.

      2. That may well be, Ned, but again we’re talking about special cases, not a general evil of functional limitations.

        1. But you would be surprised how many claims I have seen that do not claim a method, but simply a result in a single step.

    2. I argue that the same generally applies to a well drafted claim that includes processing circuits configured to carry out a set of particular functions.

      DanH — can you (1) provide a specific example of a typical “new” computer-implemented functionality and (2) describe the corresponding structural limitations that the “new” functionality places on the “configured processing circuit”?

      I don’t have an issue (per se) with computer-implemented claims analogous to your spring claim that, e.g., recite the use of a processor circuit with a given processing speed, provided those processors are known in the art (as such springs would presumably be). But even in that case applicants should be required to list examples of the specific “off the shelf” pre-configured circuits they have in mind, just as applicants in other arts routinely provide examples (including trade names and company locations) for the sources of components. There is a distinction, however, between a pre-configured circuit and one that requires structural modification and/or a specific structural implementation to achieve the recited “new” functionality.

      1. DanH — can you … describe the corresponding structural limitations that the “new” functionality places on the “configured processing circuit”?

        Can I exhaustively enumerate every possible structure that would fall under a well-drafted claim that included a configured processing circuit? No, not any more than I could exhaustively enumerate all the possible structures covered by my spring-based invention above. But that doesn’t make either type of claim indefinite. Definiteness is about whether you can tell what infringes and what doesn’t. The fact that a claim covers an infinite set of possible embodiments is not a problem, as long as that set is bounded in a particular way.

        There is a distinction, however, between a pre-configured circuit and one that requires structural modification and/or a specific structural implementation to achieve the recited “new” functionality.

        Of course there is. Where you and I disagree is that in my view Alappat is correct – the act of programming a computer creates a structurally different machine. That is, there is a distinction between the general-purpose computer and the one that includes a processor coupled to a storage device that contains (via structural modifications of that storage device) a particular program. Your computer, as defined and bounded by the physical components sitting in your office, has at this moment a different range of functionality than mine, in that it these two computers will respond differently (if at all) to the same physical stimuli. The differences in those two computers are not merely conceptual, they’re not speculative, and they’re not aspirational – they are the result of structural differences that go well beyond the differences in processor speeds, component vendors, etc.

        To be definite, a proper claim must encompass the general purpose machine and the relevant structural modifications to that general purpose machine, which are typically found in a memory circuit, which may or not be reprogrammable. Processor speed or vendor may be relevant, e.g., in real-time processing scenarios, but is often not.

        But, we’ve been down this road before, so I don’t expect to persuade you.

        But even in that case applicants should be required to list examples of the specific “off the shelf” pre-configured circuits they have in mind, just as applicants in other arts routinely provide examples (including trade names and company locations) for the sources of components.

        What on earth does this have to do with definiteness?

        My main point, which I tried to articulate above, is that the professor here asserts that there is a nice clean dichotomy between apparatuses that use processing circuits and those that don’t. I think that this is false. I also think that much of the controversy stems from a lack of preciseness on this and other related points. When one side in the discussion pretends that all computer-implemented claims are written in the form “a computer capable of X,” where X is a broadly stated goal, there’s no real advancement in the discussion. Yes, there are claims like that, and those claims are getting struck down, which is a good thing. And if that’s all that is meant by “functionally defined claim,” which is the epithet used by Professor Collins, then I think a definition should be provided, lest there be even more confusion. Perhaps there is such a definition in the Professor’s longer pieces – I haven’t had the pleasure of reading them yet.

  13. We don’t allow changing rules retroactively in a soccer game.

    Even a five year old kid will get angry if you promise something and not deliver it and start changing the rules.

    Our government is behaving in a way even a child would recognize it is not fair.

    1. Agreed, but primarily because the Williamson flies in the face of the very words of the statute. 112(f) is by terms optionally employed. It states clearly how to employ it. People who rely on the statute’s plain words cannot have this kind of injustice done to them. This is foul.

      1. Just like – in fact, exactly like – those people (nominalists all) that rely on the very words of the statute and claim things like machines, machine components and manufactures can be “fouled” by the sword of “Gist/Abstract.”

        But – Oops – that must be “ok” because that aligns with Ned’s agenda….

      2. Williamson flies in the face of the very words of the statute. 112(f) is by terms optionally employed. It states clearly how to employ it. People who rely on the statute’s plain words cannot have this kind of injustice done to them. This is foul.

        It depends how you read Williamson. It reverts to a standard that supposedly existed before I started following patent law. Depending on what “sufficient structure” to avoid 112(f) turns out to be, it could be that the only practical effect of Williamson is to save some scraps of claim scope to patents that would have fallen as purely functional claiming under non-means interpretation.

        Of course, that is only the most optimistic outlook. Indiscriminate application of 112(f) is indeed a doomsday scenario for all patent-based innovation, and under a high strandard for “sufficient structure”, Williamson authorizes precisely that.

          1. Perhaps I should have made it clearer, but I was addressing the extent of the injustice (i.e., that it’s entirely unclear so far what the extent will turn out to be), not the merit of the court’s argument.

            To address the clarity of the statute, I think it is well established that a court is permitted to depart somewhat from literal meaning in consideration of the legislative intent.

            A limitation that uses a nonce word that is essentially a substitute for means can be considered to be “expressed as a means”, and the statute requires 112(f) interpretation for such a claim. I think we can all agree on this much.

            Considering a claim to invoke 112(f) whenever the claim language lacks “sufficiently definite meaning as the name for structure” goes somewhat beyond this, however. But 112(f) states what happens when you -do- use “means”. It doesn’t guarantee scope equal to the literal meaning of the claim language when you -don’t- use “means”. It doesn’t state anything about what happens when you don’t use “means”.

            Indeed, the opinion in Williamson v. Citrix explicitly stated that it wasn’t touching the presumption in the other direction — i.e., when you -do- use “means”, which is the only direction that the statute actually says anything about.

            So, in the end, I fail to see how any of this “flies in the face of the very words of the statute”.

            I don’t like the possible implications of Williamson v. Citrix, but in my view the CAFC didn’t do anything terribly outrageous here (other than failing to fix the patent system, as usual).

            1. The problem is that people want to avoid 112(f) like a plague. They intend to avoid it when they functionally claim structure because they want the full scope of the claim.

              Now this is permissible under the law so long as the functionally claimed structure is old and well known. The problem, of course, arise if the functionally claimed structure is the only thing new.

              But the risk of invalidity is something the applicant chose — a deliberate choice. The choice must be respected because 112(f) is optional.

              1. The choice must be respected because 112(f) is optional.

                Whatever the merit of the policy outcome of adopting such a rule may be, it remains that the “optionality” of 112(f) is not directly supported by the text of the statute. As I previously explained, the statute says nothing about what happens if you don’t use “means”.

                The problem is that people want to avoid 112(f) like a plague. They intend to avoid it when they functionally claim structure because they want the full scope of the claim.

                No doubt. But 99% of the time they fail to have teaching in the spec commensurate with the full scope of the claim. For my own patent claims, in the past, I have tried very hard to “right-size” them, but they are still functionally claiming the individual steps of algorithm (and it is not clear how else software could ever be claimed — even a directive as simple as “sort” is ultimately a function, not a specific algorithm).

                Now this is permissible under the law so long as the functionally claimed structure is old and well known. The problem, of course, arise if the functionally claimed structure is the only thing new.

                This is the old functional-language-is-permissible-away-from-the-PON thing, right?

                Case law changes in time. You’re stuck in the past on a number of issues, including this one. This view may have represented the state of patent law immediately after Halliburton, but that was a long time ago. Rational people filing patents today care about what the law will be 3-20 years from now, not what it was 70 years ago.

                The law is whatever can be enforced in court. Are you seriously going to argue in court based on 70 year old case law that functional claiming away from the PON is permissible and does not invoke 112(f), over decades of precedent to the contrary? (If you do this, I will be hoping you win while taking bets 10-1 that you lose.)

                1. Green: The “optionality” of 112(f) is not directly supported by the text of the statute.
                  The statute says “may.” It does not say “must” or “shall.”

                  As I previously explained, the statute says nothing about what happens if you don’t use “means”.

                  Exactly. There are three possibilities:
                  • the claim term will be given its full scope;
                  • the claim term will be construed to cover the corresponding structure to preserve its validity; or
                  • the claim would be declared invalid – but under what case? Halliburton/Faulkner limits the invalidity the claims functional at the point of novelty.

                  This is the old functional-language-is-permissible-away-from-the-PON thing, right?
                  Case law changes in time. You’re stuck in the past on a number of issues, including this one. This view may have represented the state of patent law immediately after Halliburton, but that was a long time ago.
                  Are you seriously going to argue in court based on 70 year old case law that functional claiming away from the PON is permissible and does not invoke 112(f), over decades of precedent to the contrary? (If you do this, I will be hoping you win while taking bets 10-1 that you lose.)

                  There is no court that I’m aware of has directly held that functional claiming other than at the point of novelty violates any of the statutes. Furthermore, in the Williamson case, one of the judges said that they should actually review the law regarding functional claiming because the courts have not done so since Halliburton.
                  So in point of fact there is no authority that a claim functional other that the point of novelty is invalid. And it is improper statutory construction to construe 112(f) in a matter that the court is doing today when everybody knows that the reason 112(f) was passed was because of Halliburton. They were trying to remedy that problem in no other problem.

                  So the question remains what is the proper construction of a functionally the defined claim term to old structure. We had an example in a recent case did we not? The case came down this week. Name the case (it has something to do with “voltage source means”) and the holding.
                  And the fact that you don’t want to stand up for your rights is not a good argument. When an issue has not been decided by the courts you should raise it.

                2. There is no court that I’m aware of has directly held that functional claiming other than at the point of novelty violates any of the statutes.

                  Ned, seriously? Consider Williamson v. Citrix itself. What was the PON? Unless I am mistaken, the prosecution history emphasized the graphical display of the classroom as a distinguishing feature of the claimed invention. The limitation in question relating to “coordinating the operation of the streaming data module” (which was for “providing the streaming data from the remote streaming data source selected with the content selection control to the presenter and audience member computer system”) was old and mundane. Even an flash-based Internet radio app from the late 90’s “coordinates the operation of a streaming data module”.

                  Indeed, the main independent claim (Claim 1) in WvC makes no mention of coordinating a streaming data module.

                  What exactly is the PON of WvC Claim 8 in your view?

    2. We don’t allow changing rules retroactively in a soccer game.

      So when judges created a legal fiction that accorded patentable structure to algorithms — which were never eligible for patenting — you were really, really concerned and upset by that “rule changing”.

      Sure you were.

      1. This has been explained to you several times now Malcolm.

        The limiting of the judicial doctrine just is NOT the same as the judicial branch expanding patent coverage in the first place.

        Please stop your monologuing drive-by Internet style shout downs.

  14. Prof. Collins: In my opinion, all things being equal, the substantive shift discussed above is a positive development. Unbridled functional claims over-reward an inventor and impose undue costs on society.[i]

    Functionally claiming an invention is a problem. Functionally claiming limitations in a claim may be entirely different. As I have often noted, and I will note here again, the Supreme Court in Halliburton, as clarified by Faulkner, only objected to claims functional at the exact point of novelty. The Supreme Court did not object to claims claiming structure that was not novel. The Supreme Court did not object to claims claiming elements in new combinations – where the combination of either old or new elements presented new functionality.

    Congress could not have reacted to Halliburton/Faulkner by imposing requirements on functional claims to old structure in combination claims. This is why for example we can claim old structure using generic terms like CPU. Everybody knows what the CPU is. We can claim CPU as CPU, or central processing unit, or central device for processing sequential computer instructions. They all claim the same thing. And it doesn’t make any difference what the details of that structure are.

    One can distinguish between a claim element claiming old structure and a claim element claiming new structure by whether one distinguishes the prior art based upon a functional limitation in the element.

    Because the Federal Circuit does not make these distinctions, there is a potential here for real injustice.

      1. Night, what the Frak are you talking about? Don’t you realize I am on your side on this issue? Anon has been arguing against me for days criticizing me as if I were arguing somehow in favor of Williamson when I am arguing against Williamson. It is if you do not have a clue. And I am beginning to believe you do not have a clue because you could not have said what you said if you had any clue at all.

        1. I know you are partially on my side on this one. But, the ROM business hasn’t changed and this does have implications for this decision and getting all this straight.

          (I actually have more than a clue.) Notice too Ned that I said as soon as Lemley’s paper on functional claiming came out that this was coming. Face it, we now have a fed. cir. that was appointed by Google. Their mission is to burn it down baby.

          1. My concern with this case is far beyond software. I work primarily in hardware, and this case applies there as well.

            Regarding software, claim new software as a method. A new use of an old machine is a process by statute anyway. Methods cannot be limited to corresponding structure or materials or the like. The potential here though is dangerous.

            1. Executing software is just NOT the same as software,

              Thinking about software is just not the same as software.

              The lack of inte11ectual honesty is just not helpful here folks.

        2. And Ned, notice the biggest point is that elance.com is factually evidence that the Fed. Cir. is off their rocker and clearly judicial activist that have not a care in the world what reality is.

          1. Yeah, Night. 5-5 split. But way out there, indeed. Changing the law in open defiance of the very words of the statute.

            But, honestly Night, these cases are a result of the court again ignoing the Supreme Court on functional claiming and the unanimous opinions of every other circuit on the finality of mandates in the companion case.

        3. Ned – it is NOT whether you align with me – and never has been.

          It is about you just getting the law wrong.

          You really do have to accept what happened in 1952.

          Congress’s just did NOT incorporate your belove PON into 35 USC 112.

          It is just not there. Your attempted use repeated ad infinitum ad nauseum is a canard.

    1. As I have often noted, and I will note here again, the Supreme Court in Halliburton, as clarified by Faulkner, only objected to claims functional at the exact point of novelty. The Supreme Court did not object to claims claiming structure that was not novel.

      One day once I leave the Office Ned I will show you some cases that make it clear that you can’t have a “functionally claiming old things is okay” standard.

      As I’ve said before (and perhaps there’s no point in repeating at this point) – The rule against functional claiming at the point of novelty is simply a reduction of general overbreadth analysis. When it’s at the point of novelty its per se invalid. It does NOT follow that when it is not at the point of novelty or in a combination that it is always okay, it simply is no longer per se invalid. It will often still be wrong.

      1. Random, until the Supreme Court or the Federal Circuit declares that one cannot use generic terms or functional expressions to generically claim old and well known structure — structure that is definite, structure that is enabled, structure that does not need to be described in any detail for any purpose, then I will concede that you might be right.

        The word computer is generic, for Chr*st sake. Do we really have to define it in the fricken spec? We are speaking to people of ordinary skill in the art.

        1. generic terms or functional expressions to generically claim old and well known structure

          But you don’t want that right? If your application is filed in 2015 and someone comes out with a new computer in 2016, you want your claim to apply to the new and not-well known structure.

          Really what you’re arguing is that the new structure is, for the purposes of your software invention, equivalent to the old structure. And that’s fine. But the equivalency argument functions just as well with respect to the concept of “computer” as it does with respect to “this particular old computer.”

          There is zero distinction between saying “My software can run on any processor” and saying “This embodiment runs on an Intel i-7, but the important part is that it be capable of processing code and any processor capable of processing code will do.”

          Where there is a distinction is when you say “This invention works with any computer” and then it turns out it does not work with new computers because they have some basic difference between them and old computers (computers are a poor example for this, but you see my point). In the particular claiming example the person escapes infringement because it’s not an equivalent. In the functional claiming example not only does the particular person escape infringement but they get your claim declared invalid too.

          1. Random, my concern is not software patents, but patents on real structure. Often one needs to include old elements to put the new elements into context. Think Jepson.

            While there is a need to disclose at least one example of the old structure in the spec, it need not be too specific as most everyone knows what is being claimed, how to build it or where to buy it.

            For infringement, the claim covers all such known structure. Whether a future variation is covered depends on the DOE that compares the generically known structure to the accused structure. Effectively, the difference between this and a MPF claim is that the MPF is limited only to the structure actually disclosed, not to the generically known structure.

            1. Think…

              …Jepson…?

              You off on your fantasy optional-claim-format-as-somehow-legally-required lark again?

              What is it with you and Malcolm and this obsessive need to change the law as evidenced by this mantra of one type or another of optional claim format being some type of holy grail?

              Congress in this reality happened to write a different law. Try to adjust.

      2. Random, let me make a caveat that there can be no per se rules here. So, functionally claiming old structure may still be indefinite if the claim element is otherwise unclear as to its metes and bounds.

        1. Sure, but the underlying problem with functionally claiming novelty is that a specification can at most disclose the means known to the inventor, while the functional language encompasses all means, leading to overbreadth.

          That problem is no less distinct when you say “known to the inventor + the art” than just the inventor alone. You’re still making a claim to every possible way of achievement and at most supported by everything currently known by the art. The entire patent system (and indeed science in general) is premised on the notion that we don’t know everything, and most times can’t even conclusively say that we don’t know how much we don’t know. It’s inherent in the property of inductive reasoning.

          Consequently it’s a special circumstance to use a functional scope, because it’s a special circumstance that we can say that the art knows all ways of achievement. Wabash’s language still applies:

          “A limited use of terms of effect or result, which accurately define the essential qualities of a product to one skilled in the art, may in some instances be permissible and even desirable, but a characteristic essential to novelty may not be distinguished from the old art solely by its tendency to remedy the problems in the art met by the patent.”

          Functional language is per se invalid when its a novelty, and “may” be permissible outside novelty “in some instances.” That’s a far cry from intoning that it’s generally allowable.

          1. Random, we can agree, I think, that the structure being claimed functionally must be well known to the public so that a generic reference to it is all one needs.

            If the reference is to well known structure, and the reference is relatively certain, there really is no scope problem or enablement problems.

  15. Take three claims claiming the same invention: an apparatus claim to a programmed computer; a CRM claim to a programmed computer; and a method involving an algorithm for a computer. I presume, the first two would be governed by 112(f); and the latter not because all method claims necessarily involve steps without the recital of structure in support thereof. The only possible difference would be a purported method claim that does not actually involve a step but a claim to a result, i.e., “such that result X is achieved.”

    I don’t see what is accomplished by this nonsense to force applicants to entirely abandon apparatus or CRM claims simply to avoid 112(f) issues.

    But the if this nonsense extends the method claims, then virtually every method claim, regardless of whether it is directed to a programmed computer or not, but simply claims any method, will be governed under 112(f). Can this possibly be correct that a claim that literally reads on an accused process, might be held to be noninfringement because some corresponding structure or material recited in the specification is not an equivalent? Method claims exist because presumably the structure or material is insignificant.

    1. and the latter not because all method claims necessarily involve steps without the recital of structure in support thereof.

      There’s nothing special about computer acts – are you suggesting that either all method claims are in 112f or not?

      There are steps which are acts and steps which are functions. What are the “acts” of analysis? There are none, because analysis goes about itself different ways – there’s no particular way of achievement. But what are the “acts” of say “hitting a home run”? Those acts are known – a pitcher throws a ball, the batter swings the bat and the ball flies over the wall. A claim to hitting a home run has structure because the acts which make it up (and the linkage) are known. A claim to analyzing something is functional (unless, of course, the art would only know of certain acts which achieve the result). It’s entirely possible to have a structural limitation or claim versus a functional one.

  16. It seems to me that software has structure in the same way that the US constitution has structure. When properly claimed, the US constitution is

    “a manufacture for causing a plurality of states to act as one nation, said manufacture comprising instructions, that, when executed by a willing population, cause creation of a legislative branch, an executive branch, and a judicial branch, wherein said legislative branch has power to pass a statute binding on said states, said statute is constrained to be in one of a plurality of defined fields, wherein said judicial branch is configured to settle disputes in the application of said law, and wherein the executive branch is configured to enforce said law.”

    Our country is essentially the result of executing an elaborate program defined by this constitutional structure. If that isn’t a “real world application” with “real world effects” I don’t know what is.

    It is thus a mystery that an executive branch that owes its very existence to this constitutional “structure,” and that even specializes in broadly and reasonably construing every other word in rather creative ways, cannot seem to broadly and reasonably define the word “structure” as being more than just a plurality of atoms. After all, everybody else does.

    1. Tino: the US constitution is

      “a manufacture for causing a plurality of states to act as one nation

      This type of nonsense is exactly why software and other information processing claims don’t belong in the patent system.

      1. Your claptrap is the nonsense. Your version of “don’t belong” just does not match the laws Congress wrote.

        Feel free to not use any innovation for which you would deny protection to.

  17. Inasmuch as this article misunderstands that a disclosure only supports a scope of a certain breadth (and thus it is irrelevant whether the claim is in means-plus or not, it either falls within the supported scope or it doesn’t), I’m not a fan. (i.e. Newman’s pg. 11 is correct – the majority opinion is unnecessary because the claim was invalid under non-means reasoning)

    As for the far more important question it digs to – namely what constitutes an algorithm of sufficient specificity to render it definite – I do think that is a supremely important question. We do, however, already have guidelines marked out:

    1. The statute requires the claim scope to cover equivalents, thus if a test for equivalency cannot be fulfilled the algorithm would be indefinite.

    2. The Supreme Court’s 101 Alice (“more than mere field of use”) jurisprudence and it’s not purely functional jurisprudence highly suggest that a claim to “any code capable of achieving” a result would be immediately invalid.

    3. An equivalent requires something be done in substantially the same way. Thus the algorithm must be so defined that 1) not everything would be substantially the same way and 2) an act taken by an infringer could be judged to be substantially the same way or not.

    4. The federal circuit has already held that it must allow a PHOSITA to “envisage” what the method would be, which again suggests that language which would cover wildly different methods (especially if there is not proof that they were posited) would be invalid.

    In short, as I have suggested for a while now – the standard is merely asking a PHOSITA whether it encompasses “not substantially similar means.” If the answer is yes, the claim is indefinite, just as it would violate 112a in a non-means context when there is no proof of positing or enablement of the different means.

    The most easily expressed example of this would be a claim to the code itself, but the law does not require a claim to the code itself. Rather, it allows a claim to anything built upon the code itself when the resulting “structure” has achieved a status of means as well. For example, a claim to the code that is run to achieve an IPv4 address assignment is certainly definite, but so is a claim to the function of achieving an IPv4 address assignment, as the DHCP protocol is defined and any commands which support the protocol resolving would be equivalents to any other. If someone were to come along with a new, non-DHCP method of IPv4 assignment it would escape liability because the function would be defined by one of skill in the art at the time of filing as being DHCP only, and a non-equivalent means is outside the scope.

    Since this will 1) never allow a novelty to be claimed without a reference to known structures and 2) never allow an old claim to cover a new claim which achieves the same function, the law avoids the only thing it must – that a claim inhibits innovation by allowing an overbroad exclusion.

    1. Perhaps an example –

      1. Originally there is no way for the art to code to achieve function X.

      2. Someone (1) comes along and teaches how to achieve function X. That person can only be given a scope as to HIS way of achieving function X. This means the claim itself cannot have a limitation directed to the “achieving function X”, but must be directed to the steps which make up the function (“achieving function X wherein X is achieved by known steps ABC”).

      3. Someone else (2) comes along after reading the previous work and wants to create function Y. This person can state that function X was taught in this previous document, and therefore can claim “achieving function X” as a claim limitation. However, when this term is construed it will be construed as doing steps ABC.

      4. A third person (3) comes along and achieves function X through steps GHI, which are not equivalent to ABC. This person does not infringe 1’s claim, as 1 cannot have a valid scope other than ABC+equivs. 3 does not infringe 2’s claim unless 1) he also achieves function Y and 2) GHI would be considered an equivalent to ABC with respect to function Y (note this is a different inquiry than above!!). If GHI is equivalent, 3 infringes 2’s claim. If GHI is not equivalent to ABC with respect to Y, then (3) is not performing Y but Y’ and may also be an inventor there as well.

      1. Read LazardTech. It captures the real problems of really writing real patent applications for reality. Not cognition that is disconnected from reality.

        Lizardtech expressed applied a test that contradicted your “scope of enablement” view because the claim held invalid was enabled. Not your best argument.

        But I agree it’s a great case – it’s a great example of how leaving out a limitation or otherwise being vague renders your claim invalid.

        you act as if it is so hard to design around a claim…it is usually pretty easy to tell a company that is worried about a patent how to design the system so they won’t infringe claims.

        Sounds like you have an obvious claim there, if it’s so easy to design a different means to achieve the result.

        But, so nice to hear your psychotic nonsense. Tell us the one about the fairies and the information processing that happens in the spirit world.

        You should give your clients their money back. It’s extremely clear from your continued rants against the judiciary that you’ve done nothing but write invalid scopes.

      2. What’s missing here is a few case law cites to support the reasoning.

        Suppose that, just after Westinghouse patented his fail-safe braking for trains, Bob invents a new kind of valve. Still having the same function as prior art valves, but based on different workings. Does Westinghouse’s patent claims cover the replacement of valves of the preferred embodiment with Bob’s valves?

        How does one distinguish the “function of X” from the function of a valve to make different law apply to it?

  18. >Unbridled functional claims over-reward an inventor and impose undue costs on >society.[i]

    Do you have real world experience professor? The real way to think about claim language is scope of enablement. I would like to see real world examples of “unbridled” functional claiming. And, I would like to see you provide a way to claim modern inventions without functional language when there are so many thousands of ways to solve problems known in the art.

    The fact is this is a judicial activism that is being lead by Lemley’s paper on functional claiming. His paper is ridiculous.

    Have you actually written patent applications? Prosecuted patent applications? Litigated patents? Etc.

    People that actually practice patent law know that the standard is and should remain scope of enablement with a policing policy based on whether or not the claim is too broad to include non-obvious solutions that aren’t enabled in the spec.

    The current judicial activism is not practical from a real world perspective —as apposed to the spirit world you live in with Lemley. This is nothing more than another way to limit patents and limit the ability of real inventors and real attorneys to actual write a patent application with any certainty as to how it will be interpreted.

    But, you write so nice. Wow. Google power!

    1. The real way to think about claim language is scope of enablement.

      The real way to think about claims is in accordance with all the legal requirements, not just what you want to pick out.

      And, I would like to see you provide a way to claim modern inventions without functional language when there are so many thousands of ways to solve problems known in the art.

      Completely backward logic. If there are thousands of ways to solve a problem and someone comes up with a different way that is not based upon your particular disclosed means either 1) achievement of the function was obvious absent your disclosure or 2) the different means were a non-obvious invention. Either way it proves the functional scope is overbroad and that a claim to the particular means would sufficiently reward the contribution to the art.

      What you’re really saying is “In programming, once the idea to achieve a result is conveyed, the means of achievement are often obvious.” On this I agree, which is why Alice so often destroys software patents.

      The fact is this is a judicial activism that is being lead by Lemley’s paper on functional claiming. His paper is ridiculous.

      Lemley had two parts to his paper – 1) functional claiming results in overbroad scopes and 2) limiting software to 112, 6th would solve the issue. 1 is nothing more than a statement of law. They’re not following his paper so much as court precedent.

      Have you actually written patent applications? Prosecuted patent applications? Litigated patents?

      Have you? Valid ones?

      How can it be that module is a nonce word when it is used 1000’s and 1000’s of time at elance.com?

      Because a program limited only by function conveys no more structure than a writing limited by topic. It doesn’t define the content in any particularized way – it could be long/short, detailed or not, well-written or circuitous, etc. Saying “I have a module that does X” is like saying “I have a book involving law” – it could be a Contracts textbook or To Kill A Mockingbird. That structure is so non-limited it’s practically non-existent.

      1. RG, not that I agree with everything NW says, but you seem to be ignoring substantially the entire issue here.

        There really ought to be some analysis of how a functional claim limitation fits into the inventive concept rather than blindly applying 112(f) everywhere.

        Because a program limited only by function conveys no more structure than a writing limited by topic.

        If “limited only by function” here means claiming the result of the invention, then this is a good argument. However, not all “functional” claim language is that blatant. Some claims to software-related inventions do read like an abstract rather than a topic. Suppose part of a program for 3d surface reconstruction from stereo images calls for solving a linear system of equations (among other limitations involving novel steps). If you just put it in the claim that way, it sounds like a functional limitation; solving a linear system of equations is a result, not a specific algorithm. Limiting such a claim limitation to 112(f) interpretation (1) renders the claim invalid if the inventor didn’t provide a flowchart for at least one algorithm for solving a linear system of equations and (2) means that even if the inventor laborously catalogs all known algorithms at the time of the invention, an infringer need only wait for the academic community to find a small improvement in one of the many algorithms for solving linear systems, and use it to escape infringement.

        Currently, the only way to get a decent claim is to recite “means for result of invention” in the claims and provide an algorithm disclosure (flowchart) that is intentionally vague.

        Clearly, a real solution is needed.

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