VIS v. Samsung: Developing the Role of Extrinsic Evidence post-Teva

By Jason Rantanen

Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., Ltd. (Fed. Cir. 2015) (nonprecedential) Download opinion
Panel: Wallach, Taranto, Chen (author)

In the wake of the Supreme Court’s opinion in Teva v. Sandoz, the Federal Circuit repeatedly obversved that the Phillips hierarchy of intrinsic over extrinsic evidence remains the law for claim construction.  Applying that framework, the Federal Circuit has systematically resolved claim construction appeals based on intrinsic evidence alone, allowing it to effectively maintain de novo review.  Although a nonprecedential opinion, and thus not binding on future panels, VIS v. Samsung offers the first glance of how extrinsic evidence can play a meaningful role of extrinsic evidence in the post-Teva/still-Phillips world.  Here, the court not only concludes that the extrinsic must be consulted because the term meaning remains ambiguous after examining the intrinsic evidence, but finds that the intrinsic evidence affirmatively indicates that the term has a particular technical meaning, thus directing consideration of the extrinsic evidence.

The technology at issue involved “a device that converts compressed video content received by a mobile phone from a wireless network into a video signal format ready for display on a larger external display such as a television.”  Slip Op. at 2.  At issue were two claim terms: “display format” and “converted video signal.”   Based on its construction of these terms, the district court granted Samsung’s motion for summary judgment of invalidity on some asserted claims and summary judgment of noninfringement on the others.

The Federal Circuit first reviewed the construction of “display format.”  In a classic application of intrinsic context, the court first rejected VIS’s proposed construction of “display format” as “simply an uncompressed video signal” because that construction “would essentially read the word ‘display’ out of the term and is inconsistent with the surrounding limitations of the asserted claims.” Slip op. at 9-10.  However, the court could not resolve claim meaning further based on the intrinsic evidence alone:

In short, although the intrinsic evidence strongly suggests that the claimed “display format” must be a video signal that is “ready for use” by a conventional external monitor, the intrinsic evidence before us does not provide a complete understanding of the term.  Thus, while review of the intrinsic evidence is commonly dispositive in understanding the ordinary meaning of a claim, such is not the case in this particular instance.

Slip Op. at 13.  Instead, the specification indicates that the term “display format” has a particular meaning to persons of skill in the art:

As a result, our review of the record suggests that one of skill in the art understood a “display format” to have particular technical characteristics describing its compatibility and operational interaction with an external monitor. What those characteristics are, however, has not been established in the record on appeal.

In other words, the extrinisic evidence of record, too, was insufficient to determine that technical meaning.  This necessitated a remand:

We therefore remand to the district court with instructions to further develop the record and to determine the meaning of the “display format” to one of skill in the art at the effective filing date of the patents-in-suit, whether by whether by further examination of the prosecution history, evaluation of direct and cross-examination testimony from experts showing and explaining usage in the field, or consultation of other relevant sources as set forth in Phillips.

The Federal Circuit also remanded on “converted video signal.” Here, the district court failed to “explain how the claims or specification provided a clear understanding of ‘converted’.” Id. at 17.   Nor could the Federal Circuit discern a meaning based on the intrinsic evidence alone—indeed, it specifically commended the Patent Office’s reliance on extrinsic evidence in its construction of the same term in rejecting a petition for inter partes review:

While we emphasize that the district court is not bound by determinations of the Patent Office, our review of the record suggests that the Patent Office’s approach to rely on relevant treatises and other extrinsic evidence may be more illuminating than the specification in this particular instance.

123 thoughts on “VIS v. Samsung: Developing the Role of Extrinsic Evidence post-Teva

  1. 11

    good article..

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  2. 10

    I read claim 23 that was mentioned in the opinion. Why was this claim not rejected by the patent office as being obvious? And even if it made it past the patent office, wouldn’t it be trivial to shoot it down in court or during an IPR by arguing that converting multimedia content from one format to another has been known for maybe a 100 years, and claim 23 is just an obvious implementation of that for a given input and output format?

    1. 10.1

      Why was this claim not rejected by the patent office as being obvious?

      Great question. The answer is that the patentee played the endless game of whack-a-mole, endlessly arguing that it had innovated something never before contemplated by the prior art when in fact it was simply reciting a functionality older than the hills as applied to an obvious (i.e., prior art) subfield, with a claim completely devoid of the sort of novel technical (i.e., structural) details that you regularly find in the grown-up arts.

      The PTO is habitually snowed under by this type of garbage and so are certain judges on the Federal Circuit apparently. The Internet, cellular communications, and phones that you can carry in your pocket are apparently still sooper dooper shiny and distractting many years after their introduction. If you were born yesterday, computers and robots and broadcast video signals are brand new concepts.

  3. 9

    OIP TECHNOLOGIES, INC. v. AMAZON.COM, INC.
    link to cafc.uscourts.gov

    Affirmed, judgment on the pleadings, that a computer implemented price optimization technique was unpatentable subject matter.

    “At best, the claims describe the automation of the
    fundamental economic concept of offer-based price optimization
    through the use of generic-computer functions.
    Both the prosecution history and the specification emphasize
    that the key distinguishing feature of the claims is
    the ability to automate or otherwise make more efficient
    traditional price-optimization methods.”

    Meyer, in a concurring opinion, commended the District Court for tossing the case on the pleadings.

    “Addressing 35 U.S.C. § 101 at the outset
    not only conserves scarce judicial resources and spares
    litigants the staggering costs associated with discovery
    and protracted claim construction litigation, it also works
    to stem the tide of vexatious suits brought by the owners
    of vague and overbroad business method patents. Accordingly,
    where, as here, asserted claims are plainly directed
    to a patent ineligible abstract idea, we have repeatedly
    sanctioned a district court’s decision to dispose of them on
    the pleadings.”

    I presume by now that everyone has informed their clients that business method patents are not patentable subject matter even when claimed with generic computer systems and the Internet.

    1. 9.1

      I was just reading the case, Ned. Thanks for highlighting!

      Some other quotes of interest:

      This concept of “offer based pricing” is similar to other “fundamental
      economic concepts” found to be abstract ideas by the Supreme Court and this court. … And that the claims do not preempt all price optimization or may be
      limited to price optimization in the e-commerce setting do not make them any less abstract.

      In case anybody is wondering, all “economic concepts” are abstract. There are all equally “fundamental’ and ineligible for patenting, with or without a computer. It doesn’t matter if you describe them formally as a “process” because any abstraction can be described as a “process”.

      Out of sheer desperation, apparently, the patentee here tried to rely on Diehr to save its junky claims. The CAFC wasn’t buying.

      Diehr does not stand for the general proposition that a claim implemented on a computer elevates an otherwise ineligible claim into a patent-eligible improvement.

      No kidding.

      1. 9.1.1

        And that the claims do not preempt all price optimization or may be
        limited to price optimization in the e-commerce setting do not make them any less abstract.

        To underscore: “pre-emption” of all uses of an idea is — and always was — a red herring in the eligibility context. All that matters is whether the ability of a single practitioner of the prior art, anywhere where jurisdiction lies, is turned into an infringer by the recital of the ineligible subject matter in the claim. When that’s the case, the claim is ineligible.

        Note that this means that if your claim recites a new, non-obvious computing machine in objective structural terms you really don’t need to be concerned about eligibility issues. In that event, you are home-free and, if you like, you can claim the use of that machine for displaying a picture of your mommy or for calculating the number of pimples on the butts of every judge in Texas. Totally eligible. Presumably nobody here is confused about this in 2015 but I’m happy to explain further should there be any confusion.

        1. 9.1.1.2

          “We have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., Bilski, supra, at 611–612 (upholding the patent ‘would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea’).”

          “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].'”

          “Given the ubiquity of computers, see 717 F. 3d, at 1286(Lourie, J., concurring), wholly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’ Mayo, 566 U. S., at ___ (slip op., at 8–9).”

          Actually, preemption is the main concern, but thanks for playing.

          1. 9.1.1.2.1

            preemption is the main concern

            You’re missing the point I’m making. I don’t disagree that “pre-emption” is a “main concern”.

            The question is (and has always been): pre-emption of what?

            And the answer is: any ineligible subject matter in any field, no matter how small.

            You understand that? A showing that somebody somewhere can still use the ineligible subject matter recited in your claim doesn’t make your claim eligible.

            1. 9.1.1.2.1.1

              And do you understand that that is what claims do: they preempt that which is claimed.

          2. 9.1.1.2.2

            And in the past two weeks both Bryson (in ED Texas in the Kroy case) and the Federal Circuit in Ariosa are making this same point.

            Protecting ineligible subject matter using the patent system is the “pre-emption problem” being addressed by these 101 decisions; the issue is not that a single claim “pre-empts” every use of some ineligible subject matter (although such claims are also ineligible and almost instantly recognizable as such).

            As Ive been pointed out here for many, many years (along with other commenters, because this isn’t too difficult to follow): if you allow separate patentees to avoid 101 by tossing in conventional limitations with ineligible subject matter then together those patentees will end up pre-empting the ineligible subject matter to the detriment of everyone else.

            When the ineligible subject matter is information itself, we end up with a patent system completely turned upside down which is what was happening prior to this recent wave of forward-looking 101 decisions.

            If you want a different patent system that protects subject matter that no patent system on earth was designed to protect, then by all means spend some time designing one from scratch. But don’t ruin the one we have.

            1. 9.1.1.2.2.1

              The one we have is NOT the one that you wish we had – that much is abundantly obvious.

              (You really should try being inte11ectually honest about that)

      2. 9.1.2

        MM, just saw this on Gene’s site where Bryson, sitting in the E.D.Tex, tanked this claim under 101.

        “1. A system for incentive program participation and automated award fulfillment, comprising:

        a host computer coupled to a network;

        a first database accessible from said host computer; and

        an automated award fulfillment application program executed on said host computer for participation in incentive programs of a plurality of providers in communication with an inventory management system associated with each of said plurality of providers wherein said automated award fulfillment application program provides sponsor-selected fulfillment, said automated award fulfillment application program comprising:

        code adapted to provide a sponsor-selected specific award unit item, said sponsor-selected specific award unit item being tailored to demographic and psychographic preferences of a sponsor-selected consumer user, and

        code adapted to provide a sponsor-selected geographic location for fulfillment.”

        Talk about functional claiming! Code to do X?

        Even if this were a process claim, the claim only claims a result.

        1. 9.1.2.1

          And note what Bryson says here:

          The fact that the claims are directed to a particular type of computerized incentive award program and include specific additional limitations does not render them patent eligible, because the additional limitations “are precisely the kinds of conventional limitations discussed by the Federal Circuit in Ultramercial, and the kinds of ‘conventional steps, specified at a high level of generality’ referred to by the Supreme Court” in Mayo and Alice.

          Following up on the discussion above, it doesn’t matter that Kroy’s claims “pre-empted” the use of its “incentive award program” by everyone in the universe. What matters is that “incentive award programs” are ineligble subject matter regardless of whether they are limited to the prior art contexts of “computers” or “the Internet.”

        2. 9.1.2.2

          sponsor-selected fulfillment

          Totally different from other kinds of fulfillment!

          a sponsor-selected specific award unit item

          Totally different from other kinds of specific award unit items!

          psychographic preferences

          Totally different from …….. man, I just threw up. What a joke of a patent system we have. Thanks, Giles. Thanks, a lot.

    2. 9.2

      Question: Would the result be different if the patentee had written its claims to describe a “user interface”?

      Answer: Of course not.

    3. 9.3

      Compare the Federal Circuit:

      “Addressing 35 U.S.C. § 101 at the outset not only conserves scarce judicial resources and spares litigants the staggering costs associated with discovery and protracted claim construction litigation, it also works to stem the tide of vexatious suits brought by the owners of vague and overbroad business method patents. Accordingly, where, as here, asserted claims are plainly directed to a patent ineligible abstract idea, we have repeatedly sanctioned a district court’s decision to dispose of them on the pleadings.”

      with this:

      link to arstechnica.com

      Recently, Gilstrap published an order saying any defendant who wants to file an early motion under Section 101 “may do so only upon a grant of leave from the Court after a showing of good cause, which shall be presented through the letter briefing process.”

      Meanwhile you can go over to IP Puppywhine and listen to the whiner-in-chief complain about stricter requirements for determining proper venue in patent cases as a handout to “special interests.” Try to believe it.

    4. 9.4

      “the use of generic-computer functions”

      What generic-computer functions were those I wonder…. MOV A,B?

      ““At best, the claims describe the automation of the
      fundamental economic concept of offer-based price optimization”

      Ya mean like how other claims describe the automation of the fundamental agricultural concept of picking seeds out of cotton using a generic crank handle and comb?

      1. 9.4.1

        Ya mean like how other claims describe the automation of the fundamental agricultural concept of picking seeds out of cotton using a generic crank handle and comb?

        Meet Les.

        Les thinks it’s still 1998.

        Meanwhile most reasonable people understand that there’s a world of difference between creating new machines that physically change objects they act upon — and describing those machines in structural terms distinguishing them from the prior art — and communicating information intended to sell somebody some crxp.

        Eventally you’ll figure it out, Les. Or you’ll just get run over by the train of history like so many other people who cling desperately to whatever nonsense and ignorance makes them feel good or lines their wallets. It’s your choice.

  4. 7

    OT, but our Ned Heller would absolutely love Aharonian’s rant today (even as Greg has picked up on my good ship AIA Titanic reference).

      1. 7.1.1

        Write to Greg and get put on his daily email blast.

        I think that you would really enjoy his irreverent style (at least as much as quite a bit aligns with your “you-must-be-a-genius-since-you-align-with-my-curse-ades” view on the private/public property and Article I/Article III courts issue)

        Patnews@global-patent-quality.com

  5. 6

    Call me naiive but whatever happened to plain meaning?

    What justification does the court have to even look to intrinsic evidence here? Why doesn’t the plain meaning of display format or converted singal suffice?

    1. 6.1

      tocpe,

      When you said “intrinsic,” did you mean “extrinsic?”

      Notwithstanding either intention, you are aware that patents have never been required to include that which is known to PHOSITA, thereby necessatiting the inclusion of extrinsic (domain of PHOSITA) data as perfectly acceptable accompaniment, as terms of art may have multiple meanings in and of themselves.

      1. 6.1.1

        Not the point im making. Point is that phillips heirarchy requires the court to look at plain meaning before looking at either intrinsic OR extrinsic evidence. Of course they should CONSIDER extrinsic evidence, but why the focus on it here? Not the same thing to say the plain meaning is unclear and then rely on extrinsic evidence as using extrinsic evidence to bolster the point that plain meaning governs.

        1. 6.1.1.1

          why the focus on it here

          The patentee has a junk claim and it’s trying to thread the needle between the prior art (“totally different from the awesome sooper doooper techno invention that is being claimed!!”) and what the alleged infringer is doing.

          This case went off the rails a long time ago and the CAFC should be ashamed of itself for coddling the lowlifes who brougth the suit.

  6. 5

    Why, by the way, is this claim not obvious?
    People like to watch movies together.
    Displaying phone video on an external monitor allows people to watch movies together.
    What more is there in this claim?

    1. 5.1

      Because that’s not how the examination of patents works. You can’t distill the claims down to what you “think” they mean. Read the claims accounting for every element, research the file history and then get back with me.

      If you are so confident in your analysis go file an IPR with your thoughts and see how far you get.

  7. 4

    Les, you are the proponent here, not me. You have the burden of proof, not me.

    The stored program computer was invented in 1946. Its whole purpose was to allow programs to be written, stored on media, and loaded into execution memory for execution on an as-needed basis. It was understood that the WHOLE POINT of the stored program computer was to divorce the programming from the machine so that the machine did not have to be reconfigured manually every time one wanted to execute a new instruction, or a new set of instructions.

    It is the PITH and ESSENCE of a stored program computer that the computer be generic and that the programming, stored remotely from the computer, be what is changed. Writing a program did not create a new machine. It created a new program. Everyone that knows anything about computers KNOWS THIS.

    And yet, you say that the CCPA in its received knowledge from the beyond can simply override the truth? This sounds a lot like belief in magic, in the spirit world, in religious texts, in astrology, etc. This kind of thinking plagues the world. The findings of fact of Bernhart are simply absurd.

    1. 4.1

      Ned –

      You said:

      “Writing a program did not create a new machine. It created a new program. Everyone that knows anything about computers KNOWS THIS. ”

      And then you said:

      “And yet, you say that the CCPA in its received knowledge from the beyond can simply override the truth? ”

      You are mistaken on the first assertion, which leads the the second assertion also being incorrect.

      I know something about computers and I firmly believe that writing a program (well, installing a new program) does create a new machine. What I say regarding the CCPA is that it applied common sense, not that it received knowledge from the beyond.

      1. 4.1.1

        You know WHY Bernhart had to overrule Lincoln Engineering? So that claims to programmed computers did not look like this:

        1. In a computer comprising an ALU, an instruction fetch/decoder; and a stored program memory, the instruction fetch/decoder fetching instructions from stored program memory, decoding said instructions, and executing them with the ALU, the improvement comprising:

        a particular program.

        Everything before the colon is old and generic. It is the only thing in the claim that is a machine. The program itself is simply a set of instructions that could be in any form and stored on any media. That the instruction may be new does not change the simple fact that computer, the machine, is not new.

        Now we see why the CCPA went out of its way to overturn Lincoln Engineering — a Supreme Court case by the way.

        Les, let us considered the “arrowed bow” claim. Does improving the arrow improve the bow? No it does not. Every knows this. But by claiming the combination of the bow and improved arrow, one pretends that the combination is new, when it is old. That is what Lincoln Engineering was all about.

        So, if one has on the one hand a machine, clearly eligible, and a program, that is not eligible, and one wants to pretend that one is claiming a new machine, one creates the arrowed bow of the computer arts, the programmed computer. But a programmed computer is nothing but a generic computer and a program that exists somewhere and than is loaded and executed by a human being in some fashion just as the arrow is placed on the bow, drawn and loosed, all by a human.

        Les, you and your ilk live in the land of sophistry, of the mislead, of the lie. And you know it.

        1. 4.1.1.1

          And while we are at it, Les, let us create the “authored book” combination.

          1. Apparatus comprising:

          a book binding,

          a plurality of pages bound by the book binding,

          printed matter inked on said plurality of pages by a printing press; and

          wherein said printed matter comprises, e.g., the better cooking recipe or the better computer program.

          Wow, I can now patent cooking recipes or computer programs because a book is an article of manufacture!

          And the sophistry marches on.

          1. 4.1.1.1.1

            Stop the lies Ned.

            Visit my simple set theory once more. The one I begged you to discuss, to point out any shortcoming.

            Your response then…? You ran away.

            1. 4.1.1.1.1.1

              Anon,

              Are you referring to your ‘sets of printed matter’ pet theory?

              Gotta convince the Fed Cir. or the Supreme to take notice of that theory and apply it to 101 first, if that’s the case.

                1. Help me out by explaining what you mean by ‘controlling law.’ If I understand your theory correctly, had it been applied in say, Alice or Ultramercial, for instance, the outcome would have been different.

                  Yet these cases, at both the Fed. Cir. and SCOTUS, held the claims at issue ineligible without considering the printed matter doctrine.

                  To what extent can it be either ‘controlling’ or ‘law’ then?

                2. I have already explained (multiple times) why the positions of the parties in Alice affected the possible reach of that decision.

                  Your “politeness” is a bit into the passive/aggressive range. Pay attention as I will not be dragged into a briar patch of trying to re-encapsulate thread discussions which can be found in the archives.

            2. 4.1.1.1.1.2

              Hey anon, I think I did respond to your set theory.

              Regardless, the law seems simple. The claims has both printed matter an something statutory. Unless the printed matter is applied to the underlying statutory subject matter in a functional way that produces a new result in the statutory, the claim is unpatentable either under 101 or 102.

              But this is the same test for a computer program, not so, at least after Alice?

              1. 4.1.1.1.1.2.1

                You responded by running away.

                Several times, as I reposted the thread from the Ethics portion of this site to this side after you stalled long enough to “not remember.” Now, not only do you “not remember,” you conveniently mis-remember.

                Just another cheap trick of yours, my disingenuous friend.

          2. 4.1.1.1.2

            For example let’s say you have a new cake recipe. What’s the difference between a claim for a computer configured to display the recipe and a claim for a book configured to display the recipe?

            1. 4.1.1.1.2.1

              What’s the difference between a computer displaying a recipe and a book displaying a recipe? Obviously one is a machine and the other is a article manufacture. In the minds of the Federal Circuit, both are per se eligible because that which is old and statutory is added to the claim.

              Ask the wrong questions, get the wrong answers.

              1. 4.1.1.1.2.1.1

                …or in Ned’s case, the wrong answers will be internet style shout down monologued ad infinitum ad nauseum.

                Integrate the lessons taught to you Ned – join the dialogue.

        2. 4.1.1.2

          And, Les, do you know WHY the Supreme Court forbad repatenting old combinations when improving one element? Because people were suing those who were selling the old stuff that could be used in the old combination to people who were combining the old stuff with the improved element.

          In particular, Lincoln Engineering involved grease pumps and novel couplers that worked with the pumps.

          ” If this argument is sound, the respondent may convict every one who sells a grease pump of contributory infringement. The answer is the same as in the case of the headed nipple. The function of a pump has always been to force a fluid or a grease through a conduit. The fact that this function of the pump is utilized in Butler’s improved form of coupler not only to convey the lubricant to the bearing but to operate the jaws of the chuck does not alter the function of the pump. The invention, if any, lies in the improvement in the coupling device alone.”

          The problem was that the claim was not limited to what was new but included subject matter that was old and had no new functional relationship with the new.

          Why of course, the CCPA found no vice in this. Thus today, we can festoon claims by adding page after page of old elements just to make it hard on the examiner. A well known practice, in fact.

          Patent attorneys who engage in this practice are bottom-feeding scum.

          1. 4.1.1.2.1

            had no new functional relationship with the new.

            Functional relationship…

            EXACTLY like I have always said.

            Now let’s remind mr two-faced Heller what he had to say about software back on the first API copyright thread….

            There, Ned was all jumping up and down DEMANDING that the functionality be recognized.

            One big ‘ol OOPS for Ned.

          2. 4.1.1.2.2

            “Why of course, the CCPA found no vice in this. Thus today, we can festoon claims by adding page after page of old elements just to make it hard on the examiner. A well known practice, in fact.

            Patent attorneys who engage in this practice are bottom-feeding scum.”

            Shhh! Don’t rock the boat! ;)

            In all seriousness Ned, how many patent attorneys do you think would not meet your “bottom-feeding scum” test? There must be a whole lot of bottom to support so much feeding!

            From my time at the PTO and time working outside of it, I can assure you that the percentage of people who don’t do this practice is quite low – *almost* everyone indulges in this practice from at least from time to time for one simple reason – its effective. H##l, its usually directly/indirectly taught to newbies at the pros mills.

            This of course backs up my point about the aims of patent attorneys… They may “prefer” (whatever the h##l that means) a valid patent; however, they will take, without hesitation, merely an issued patent if that is all they can get.

            Just look at the people pointing to the Alice “guidelines” to get their issued patents. Lol.

            Sad, but business as usual.

            1. 4.1.1.2.2.1

              Mr. the sad reality, I fully agree. Patent prosecution mills teach this form of claiming for multiple purposes – to make it hard on the examiners to find prior art and to expand the royalty base.

              How often have I heard over the last years the complaint by many companies that the invention might be in one small part of a larger combination and there’s no justification for basing a royalty on a larger combination. But the Federal Circuit will, in fact, based a royalty on a larger combination if it is claimed. Thus the practice of adding the larger system into a claim, where novelty is a component, is a practice taught to today’s patent attorneys as a way of expanding the royalty base.

              This is another example of the problems we are in today because the C.C.P.A. and the Federal Circuit did not follow the law and could give a hoot about “particularly point out and distinctly claim” the invention. It is not only about creating definite claims, it is about particularly pointing out the invention.

              And Mr. Federal Circuit, pay attention. That part of the statute exists and cannot be ignored, Mr. Federal Circuit. There’s a good reason for it to be in the statute, and your failure to follow the statute and the Supreme Court case law has caused significant problems in the patent law since Bernhart.

              The back to the patent bar. When I was first introduced to the practice in one of these “prosecution mills,” I was shocked at the sheer immorality of it. I have a very low opinion of any patent attorney who routinely indulges in this practice. They know what they’re doing is wrong, yet they do it.

              I also am shocked that C.C.P.A. and the Federal Circuit see nothing wrong in festooning the claims with endless reams of old elements as if there was no problem at all in doing this. But there are problems, Mr. Federal Circuit. There are problems.

              1. 4.1.1.2.2.1.1

                Yet again Ned mis-aims and does not recognize the words of Congress at play.

                You are perfectly free to not like it Ned. But please, stop the obfuscation and blame campaign.

          3. 4.1.1.2.3

            Ned –

            99 % of all inventions are new combinations of old components.

            The Wright Flyer was made of wood, cloth and rope.

            1. 4.1.1.2.3.1

              Les, so what if most inventions involve new combinations of old elements. Don’t you understand what we’re talking about here is adding into a claim a bunch of old elements simply to make it harder on the examiner and to expand the royalty base?

              The Supreme Court in cases like Lincoln Engineering were concerned with the abuse of the doctrine of contributory infringement when sales of the old part of a patented combination was deemed to be an infringement. Today, given the wording of 271(c), this is of less concern. But adding in endless reams of old elements certainly has nothing to do with the statutory requirement of “particularly pointing out” the invention, and has a lot to with abuse of the patent system in more ways than one.

              1. 4.1.1.2.3.1.1

                So decrees Ned in his “version” of the law, which has nothing to do with what Congress has actually written (vis a vis Prof. Crouch’s Vast Middle Ground)

                Oops, yet another (inconvenient) discussion point that Ned does his best to shout down, Internet style.

              2. 4.1.1.2.3.1.2

                No one adds old elements simply to make it harder on the examiner Ned. Each “added” element makes the claim narrower and less of a burden on society and easier to work around.

                If an element included in a claim is not necessary to the invention, including it makes the claim worthless as a potential infringer can simply leave the element out of their version.

                1. Les, you’re 100% wrong about the ‘no one does this’ point. I see it. all. the. time.

                  While in an abstract sense you’re right that additional elements make the claims narrower, if you’re familiar with a technological space you can pretty much be certain that certain elements will be used to practice the invention, even if the claim is not relevant to the invention itself.

                  For example, if the claim is an improved steering wheel, you’d have an independent claim that relates to just the steering wheel. But you might also draft a claim that captures an improved car, wherein all the other elements of the car are old and well known. Maybe also include a new process for manufacturing a car wherein step z comprises…adding an improved steering wheel.

                  So on and so on, wherein none of that really has anything to do with the new steering wheel someone invented.

                2. Les, from a damages point of view, what is better, a claim on a car or on a carburetor?

                3. Well Ned, Arthur –

                  That is an entirely different issue. In those cases the “extra” elements aren’t added to make the Examiner’s life difficult. They are “added” for the strategic reason that Ned now acknowledges.

                  But, again, the assertion that they are “added” is merely a point of view. I invented a better car. My new steering wheel breaks fewer ribs in a front end crash while costing 12 % less. If its not installed in a car, that benefit is not realized. What I invented includes a better car.

                4. Furthermore Ned,

                  By your analysis, I HAVE to wrap the rest of the car around the steering wheel. The steering wheel by itself, in you YOUR view, is not “USEFUL” any more than image data resulting from a novel image processing method residing in memory but not displayed or printed is not “USEFUL”.

        3. 4.1.1.3

          “Everything before the colon is old and generic. It is the only thing in the claim that is a machine. The program itself is simply a set of instructions that could be in any form and stored on any media. That the instruction may be new does not change the simple fact that computer, the machine, is not new.”

          That depends on how you define the machine. I view the machine as the combination of the hardware and the software. You’re fixated on the hardware. Shrug, that might be a valid point of view. However, so is mine.

          1. 4.1.1.3.1

            Les, can we even discuss what a programmed computer is in actual fact if everyone has a private view of what it is, and the courts never actually come out and tell us what they are talking about?

            Something like Bilski’s Abstract, ala Rader’s dissent.

            Since we have been talking about programmed computers since Bernhart, why don’t we look at the computer in those days.

            The computer was a mass of circuits. The programs, indeed, the OS, was written on disk drives media, that at times was removable. One installed the removable media, then commanded the computer to execute the programs on the removable media. The removable media was stored anywhere.

            Other computers dating from the ’50s loaded programs from paper or magnetic tape, disc drives or drums. But there was no general requirement that the programs be physically located anywhere near the computer before they were manually loaded and executed.

            1. 4.1.1.3.1.1

              “Other computers dating from the ’50s loaded programs from paper or magnetic tape, disc drives or drums. But there was no general requirement that the programs be physically located anywhere near the computer before they were manually loaded and executed.”

              Ned – I have programmed computers using punch cards….shoe boxes full of them…still have some blank cards I use like postit notes. I’m not sure what your point is. After the card reader read the cards, loaded the resulting code into the computer and compiled and linked it, the new machine (assuming my homework answers were novel) was born. Said new machine vanished into the either after the run and print out was generated and the next guy emptied his Tom McCann container(s) into the shoot.

              1. 4.1.1.3.1.1.2

                The new machine is not born, Les. It is a machine with loads of circuits in particular states that change from one moment to the next as the computer is clocked. Nothing is physically changed into something different on a permanent basis. Turn the power off. That is the only time one can analyzed the hardware, to see its permanent physical configuration. Turn the power off on a computer circa 1946, when the first stored program computers were invented, and the computer reverted to circuits.

                Your program exists in permanent form on the cards. The cards are not part of the computer. The existence of the cards does not make the computer new.

                1. “Nothing is physically changed into something different on a permanent basis.”

                  When did permanence become a factor Ned? Is there a time requirement for infringement, a five second rule? Is it only infringement after 20 minutes, or 30 days?

                2. Les, computers have no single state at any time where they are executing all the steps of program. That never happens.

                  Computers sequence from state to state as they fetch and execute programs.

                  The program itself might be stored on some media like your IBM cards. But the computer itself never, ever, exists in a single “programmed” state.

                3. “Les, computers have no single state at any time where they are executing all the steps of program. That never happens.”

                  Never? You are mistaken. Complete programs often reside in computer memory.

                  “Computers sequence from state to state as they fetch and execute programs.”

                  That is not necessarily true. We are now living in the age of parallel processing you know…. anyway, your point is irrelevant.

                  People and other machines also perform steps one at a time, for example, when they are executing the patented process for making a patented drug. Sometimes they even consult the recipe mid process to make sure the reaction vessel set point is correct.

                  “The program itself might be stored on some media like your IBM cards. But the computer itself never, ever, exists in a single “programmed” state.””

                  Again, you are mistaken and the point is irrelevant. If, for example, new software is on media, such as a hard drive, the machine as a whole is in new state and has a new configuration.

                4. Les, in computer memory?

                  Now we have to figure out just what that is.

                  A computer itself is nothing more than the ALU, the fetch and decode circuits. Memory, the place where instructions are stored, is generally external.

                  Now Les, this is why we have this exercise. People making these statements are not defining what they mean even by computer.

                  I have seen Rich and crew define computer by its states when executing. That is why I said that there is no state where the program is entirely in the computer at any give time.

                  There is no such thing as a programmed computer. There are computers. There are programs. There are media where programs are stored before and while executing. But the media is generally external. It can be locate here and there and even in the cloud.

                  Only people who fundamentally do not know what they are talking about would speak of a programmed computer as being a new machine when even what a computer is and how it operates is not even understood.

                5. “A computer itself is nothing more than the ALU, the fetch and decode circuits. Memory, the place where instructions are stored, is generally external.”

                  No Ned. What you appear to be describing is a processor, or perhaps a microprocessor, which is usually a component of a computer. Other components are SRAM or ROM (static random access memory or Read Only Memory) Which hold complete programs that make up the Basic Input Output System (BIOS) software, Bulk storage, such as a hard drive, for storage of programs that might only be used occasionally, that might be expected to be updated on a regular basis and which is loaded into a program memory on an as needed basis. BAck in the day, such memories were made from Dynamic RAM as this was the least expensive of the available technologies. I don’t know what they are made of these days. FLASH perhaps?

                  So….

                6. Computers normally have high speed memory from which the fetch and execute instructions. But until recently, this high speed memory has been very limited in size, and programs were located in slower memories, even disk drive, even removable disk drives.

                  Back in the day, programs were linear. Instructions actually could be read and executed directly from tape. The memory was there for short term storage and a basic OS.

          2. 4.1.1.3.2

            that might be a valid point of view. However, so is mine.

            It might be “valid” in a vacuum, Les, but in the context of our patent laws your view is far less valid than you seem to think it is. We might ask at this juncture why anyone would bother paying attention to what you think is “valid” given how wrong you’ve been about this subject over the years.

            You’re fixated on the hardware

            That would be you who’s “fixated” on the hardware, Les. Without that hardware, your “arguments” for protecting software with patents — weak as they are — don’t even get a toe across the starting line.

      2. 4.1.2

        “I firmly believe”

        ^That’s where the faith part entered!

        Stop beliebin’ bro. Start findin on facts.

    2. 4.2

      Les, you are the proponent here, not me. You have the burden of proof, not me.

      You have that exactly arse backwards Ned as you are the one aiming to change the actual law written by Congress.

  8. 3

    ACME SCALE CO. v. LTS SCALE CO.
    link to cafc.uscourts.gov

    BRI run amok.

    “In its Rehearing Decision, the Board concluded that
    Bourgoin anticipates claims 9, 10, and 20–22 of the ’946
    patent because it “discloses a material handling vehicle.”
    Rehearing Decision at *6. The ’946 patent defines the
    term “material handling vehicle” to “broadly include
    transportation vehicles such as, for example, but not
    limited to, a fork lift truck, a flatbed truck, or a pallet
    truck.” ’946 patent col. 2 ll. 39–41 (emphasis added). In
    its Initial Decision, the Board concluded that “[w]hile the
    ’946 Patent may contemplate a forklift, pallets, pallet
    trucks, lift trucks, and flatbed trucks, as exemplary forms
    of a ‘material handling vehicle,’ that is insufficient to
    imbue the term with a special meaning disassociated from
    its ordinary and customary meaning.” Initial Decision at
    11. The Board reiterated this finding in the Rehearing
    Decision when it found that “Acme [did] not cite to a
    specific definition of the term ‘material handling vehicle.’”
    Rehearing Decision at *3.

    “The ’946 patent’s specification, in defining the term
    “material handling vehicle,” states that it “broadly include[s]
    transportation vehicles such as, for example, but
    not limited to, a fork lift truck, a flatbed truck, or a pallet
    truck.” ’946 patent col. 2 ll. 38–41. The ’946 patent
    identifies only commercial transportation vehicles as
    exemplary forms of a “material handling vehicle.” Although
    the term “broadly” suggests the patent encompasses
    a wide range of devices which can be considered
    vehicles, the attachment of a roller to a table, without
    more, does not render the table a vehicle in light of the
    subspecies of material handling transportation vehicles
    identified in the ’946 patent. The broadest reasonable
    construction of the term “material handling vehicle” is
    limited to a device that is capable of moving and whose
    function is to transport the material to be measured. ”

    Reversed.

    1. 3.1

      What seems “amok” in that case is the CAFC’s rewriting of the claim out of some misguided desire to see them grant.

      Here’s the claim:

      A system for actively dimensioning an article, the system comprising:

      a material handling vehicle,

      at least one active linear dimension detection device attached to a portion of the material handling vehicle, the dimension detection device positioned to move with the vehicle and to actively detect at least one linear dimension of the article when the article is loaded onto the material handling vehicle;

      and

      a computer system in communication with at least one linear dimension detection device, the computer system being adapted to determine at least one linear dimension of the article.

      Got that? This is a “vehicle” with a “computer-adapted” dimension measuring device attached to it.

      The primary prior art reference relied on by the Board teaches all the elements except for this “vehicle” (or so the CAFC’s argument goes). The reference teaches “a table fitted with rollers” along with all the other elements.

      The specification defines the term “vehicle” broadly (expressly broadly!), using open-ended language, i.e., “vehicle” is defined “to broadly include transportation vehicles such as, for example, but not limited to, a fork lift truck, a flatbed truck, or a pallet truck.”

      The CAFC kicks up a lot of dust about what “transport” means. Try to figure this one out: Bourgoin urges users to protect “against excessive vibration
      during the transport[ation] [of the table] in alleys or between different sites,” thus suggesting it is not intended for transport.
      Say what? That makes no sense whatsoever.

      1. 3.1.1

        MM, the PTO should have simply admitted that the referenced did not disclose a “material handling vehicle” as claimed, and used the primary reference not as showing all claim limitations but the dimension detector, but only as showing the dimension detector. Whether it would have been obvious to mount the dimension detector on a moving material handling vehicle then should have been addressed.

        What they did instead is use BRI to convert an obviousness rejection into an anticipation rejection, not allowing the patent owner to address the issue properly.

        And this was an ISSUED patent. The PTO, using BRI, effectively invalidated the claims in what amounts to an arbitrary and capricious manner.

        Many of us who have been involved in reexaminations deal with this cr * p all the time. BRI has no place in determining the validity of an issued patent.

        1. 3.1.1.1

          I can see both MM’s and Ned’s points here and frankly I have to come down with Ned on this one at least somewhat. To take the position of the board is to forget what the claims fundamentally are. And I see this in my day to day with some of my coworker’s stuff.

          Also Ned is 100% right that this sort of thing is arbitrary and capricious. And I’ve actually brought up this exact point to some coworkers. They of course have no idea w t f I’m talking about. And trying to explain the APA and Zurko to an examiner is like trying to teach a mini-college course in a 15 minute timespan. Fundamentally the reason for the rejection is “because we want to reject it”, and that is arbitrary and capricious defined. Some examiners (who don’t know better) will even come right out and be specific that this is the underlying reason for the rejection. Idk about judges at the PTAB tho. Of course, if the examiners would be kind enough to put that on the record then people could bring a court case and get it sorted out in the district court, perhaps leading to the PTO taking action to prevent this sort of thing at an official level.

          That being said, this is one of the less egregious instances of this going on that I’ve seen of late. A table with wheels is not so bad as a vehicle compared to some of the designations I’ve seen lately under some “broad” interpretations.

          1. 3.1.1.1.1

            6: To take the position of the board is to forget what the claims fundamentally are.

            I dont know what you are trying to argue here.

            Here’s the definition in the spec again: “vehicle” is defined “to broadly include transportation vehicles such as, for example, but not limited to, a fork lift truck, a flatbed truck, or a pallet truck.”

            Now, tell me what’s clearly included and what’s clearly not included by that definition. The patentee knew how to write the term “truck” so we know that more than trucks are included within the scope. Is a helicopter included? A drone with a platform for carrying material? A flatbed train car? How about a remote-controlled raft?

            1. 3.1.1.1.1.1

              “I dont know what you are trying to argue here.”

              When you go all off the deep end as here you are, in essence, forgetting that claims are merely an attempt to put into words that which is the invention. They’re just an attempt (underline attempt). It’s going to be imperfect. Saying “a table is a vehicle” is, at BEST, taking advantage of the inherent imperfection of language. At worst it’s just batsht crazy. We’ll presume the best here.

              “Now, tell me what’s clearly included and what’s clearly not included by that definition. ”

              included: all transportation vehicles
              not included: tables and tables on rollers, and everything else that isn’t a vehicle in plain language (plain language comes in because of BRI).

              ” Is a helicopter included? A drone with a platform for carrying material? A flatbed train car? How about a remote-controlled raft?”

              Looks like it:

              link to en.wikipedia.org

              Plain language bro. It’ll do us here.

              “A vehicle (from Latin: vehiculum[1]) is a mobile machine that transports people or cargo.”

              A table is not a mobile “machine”, even if it has rollers.

              1. 3.1.1.1.1.1.1

                Saying “a table is a vehicle” is, at BEST, taking advantage of the inherent imperfection of language.

                Seems to me it’s the patentee here who is taking advantage of the “inherent imperfection of language.” What does “broadly” mean? What does “not limited to”? Those were the words used by the patentee.

                A table is not a mobile “machine”, even if it has rollers.

                Now that, my friend, is “batsht crzy”. And remember: it’s crzy in the service of a junk patent that should never have granted in the first place. Heckuva job.

                Dictionary: vehicle: a machine that is used to carry goods from one place to another

                A table with wheels is certainly used to carry goods from one place to another. I’ve done it hundreds of times. Sometimes we call them “carts”. I’ve used them to carry goods from one end of a large campus to another.

                1. And yet they aren’t machines.

                  “Now that, my friend, is “batsht crzy”. And remember: it’s crzy in the service of a junk patent that should never have granted in the first place. Heckuva job.”

                  Nah bro.

              2. 3.1.1.1.1.1.2

                6, please tell everyone what the key distinction is between (1) a flatbed train car versus (2) a cart (i.e., a table with wheels) and why that distinction matters in the context of (trying not to laugh here) the “technology” described in this claim.

                1. “flatbed train car”

                  Might not be one by its lonesome sorry. That is presumed to be being used with a train.

                2. That is presumed to be being used with a train.

                  Oh, so there’s necessarily an engine involved? That’s what the “broad, not limited” definition of “vehicle” really means?

                  So a remote-controlled raft is “in” but a rowboat is “out.”

                  A flatbed car on a track connected to a train engine is “in” but a handcar unconnected to the train engine is “out.”

                  That’s the “broad, not limited” definition of “vehicle”.

                  Seems batsht crzy to me but what’s done is done.

                3. “So a remote-controlled raft is “in” but a rowboat is “out.””

                  Nah, rowboats apparently are in, the human provides the power to operate the oars as a so called “simple machine”.

  9. 2

    And it’s terrible to say this, but there are folks on the Fed Ct. that simply aren’t PHOSITAs. It’s no wonder they struggle with technical claim terms.

  10. 1

    “Nor could the Federal Circuit discern a meaning based on the intrinsic evidence alone…”

    Isn’t this a good indication that the claim is invalid under 112? How can the public be reasonably certain as to the scope of the invention if the four corners of the patent provide no meaning to a claim term?

    1. 1.1

      Knowledge of the PHOSITA can suffice. I’m not arguing that it’s a great way to write specifications, but generally lexiocography is required only when a term is being given special meaning. I err on the other side most of the time by giving very specific definitions for claim terms in my applications. On a related note, Guiffrida forces the examiner to apply the definition in the specification instead of relying on BRI.

    2. 1.2

      Frankly, I’m stunned they can’t discern the meaning from the phrase itself. A display format is the format of a display, i.e., the aspect ratio, the lines per inch or the pixels per inch (e.g. 1080p), optionally a frame rate might be involved…. doesn’t everyone know that? Didn’t the whole country just go out and by a flat screen? Before that, didn’t everyone have to go out and buy an analog to digital TV FORMAT converter?

      How does a sitting judge not know what a display format is?

      We are through the looking glass.

      1. 1.2.1

        Les, you might be right. But how does a judge or a court base its decision on judicial notice? Everybody knows that…

        Something similar happened in Application of Bernhart, 417 F.2d 1395, 1400, 163 U.S.P.Q. 611 (C.C.P.A. 1969)., the case that caused all the problems in 101 for 40+ years:

        “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, and Congress has said in 35 U.S.C. § 101 that such improvements are statutory subject matter for a patent. It may well be that the vast majority of newly programmed machines are obvious to those skilled in the art and hence unpatentable under 35 U.S.C. § 103. We are concluding here that such machines are statutory under 35 U.S.C. § 101, and that claims defining them must be judged for patentability in light of the prior art. ”

        What the CCPA did in this passage was find as a matter of fact that a programmed computer was physically altered. They cite no expert opinion. The issue was not litigated. They just pull this out of thin air — and with it, caused 40+ years of chaos.

        It appears that the current court is a bit more cautious about deciding cases on judicial notice of facts, or rather, deciding facts for the first time on appeal, deciding the case based upon those new findings. and not allowing the non prevailing party any real opportunity to rebut.

        Such is not due process.

        1. 1.2.1.1

          Your “version” of Bernhart remains twisted by the Ned-IMHO-law-should-be-different view.

            1. 1.2.1.1.1.1

              The correct one of course, one that does not indulge in taking case quotes out of context and putting unhealthy spins on them.

              Thanks for asking.

              1. 1.2.1.1.1.1.1

                Anon,

                The correct one of course,

                Well, that’s a nice, smug non-answer to Mr. Heller’s question.

                “… one that does not indulge in taking case quotes out of context …

                Ned quoted over 200 contiguous words from the case, verbatim and un-edited. Most speakers of the English language would consider that much extra material to be “context”.

                1. It is not the direct quotes, but the spin Ned adds as to how the quotes are applied to the present context.

        2. 1.2.1.2

          I beg to differ. The quoted text is exactly correct.

          Any chaos that may have arisen since has been caused by accused infringers trying to confuse subsequent courts, and sometimes succeeding to varying degrees.

          1. 1.2.1.2.1

            Les, again, even if you are right, it is not the province of an appellate court to make findings of fact on judicial notice, especially when the rule of law that is based on the judicially noticed fact is dispositive of the case.

            Further, the lack of caution, and the eagerness of the CCPA to find programmed computers statutory subject matter is on display here. This court was even then a court completely out of control. A Rambo Court. A court that refused to follow the law. See the post below on its overruling of the Supreme Court’s old combination law.

            1. 1.2.1.2.1.1

              “Les, again, even if you are right, it is not the province of an appellate court to make findings of fact on judicial notice, especially when the rule of law that is based on the judicially noticed fact is dispositive of the case. ”

              Does an appellate court need expert testimony that it is easy to see something 30 feet away in broad daylight but difficult to see the same thing in the dead of a moonless night or can that fact be found on judicial notice?

            2. 1.2.1.2.1.2

              “Les, again, even if you are right, it is not the province of an appellate court to make findings of fact on judicial notice, especially when the rule of law that is based on the judicially noticed fact is dispositive of the case. ”

              No, no, of course not. That’s the province of SCOTUS, witness the baseless assertions of existing and ancient prior art that rendered the claims abstract in Bilski and Alice, to name just two.

        3. 1.2.1.3

          Bernhart also cavalierly “overturned” Lincoln Engineering, a Supreme Court case based on its lack of understanding of the reasoning of the Supreme Court. Just gotta love the CCPA.

          “The rationale of an old combination rejection is stated in MPEP 706.03(j) as follows: “The fact that an applicant has improved one element of a combination which may be per se patentable does not entitle him to a claim to the improved element in combination with old elements where the elements perform no new function in the combination.” This statement has the support of many cases. See, e. g., Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 58 S.Ct. 662, 82 L.Ed. 1008 (1938). Why an applicant should not be so entitled is not clear. ”

          “Our primary concern, however, is not with the soundness of the underlying policy, ..” [Oh yeah? Now see what happens next.]

          “Applying the section 112 language to claims 19-21, we do not see, and the examiner has not stated, how any of the claims would be made more particular or distinct by eliminating the plotting machine limitation from the body of the claim. Indeed the opposite appears to be true, since moving the recitation of the plotting machine to the preamble (in the continental manner or in the manner permitted by Ex parte Jepson, 1917 C.D. 62) would greatly increase the number of words in the preamble and impair, rather than enhance, the intelligibility of the claim.”

          Supreme Court, you are overturned.

          One cannot help but compare US claims since this case with the practice in the EPO where the applicant is required to put the prior art into a preamble. The EPO claims do particularly point out what is new. US claims do not. And the CCPA/Federal Circuit could give a rat’s ass. Which is why US patent law is such a mess.

          1. 1.2.1.3.1

            You do realize that something happened in 1952 explicitly involving combination claims, right Ned?

            And that that something was performed by the branch of the government with the proper allocation of authority. See O’Malley

          2. 1.2.1.3.2

            “The fact that an applicant has improved one element of a combination which may be per se patentable does not entitle him to a claim to the improved element in combination with old elements where the elements perform no new function in the combination.”

            Silly MPEP and SCOTUS, don’t they know that new components (software) for old machines (computer) that make the old machine function differently (software enabled functionality) aren’t patentable?

            1. 1.2.1.3.2.1

              Because, like you know, all future improvements are “already in there” when it comes to “old box.”

              Just like my own Big Box of electrons, protons, and neutrons.

              /off sardonic bemusement

              1. 1.2.1.3.2.1.1

                Again, beliefs like those are simply worse than believing in magic or that the powers of jeebus cause computers to do complex and novel functionalities. The operation of a physical device simply cannot be altered with immaterial information.

              2. 1.2.1.3.2.1.2

                Anon,

                I guess you have forgotten our discussion about how a computer has a finite number of digital “configurations” when it is assembled, unlike a box of particles (which, being non-digital, would have an infinite number of “configurations”).

                1. I have not forgotten.

                  Quite the contrary, it is you that has forgotten the result of the conversation – your attempted position did not hold (you attempt a distinction without a difference).

                2. Anon, I will charitably assert that you mis-remember the conversation. Maybe a reminder will help:

                  Patently O (comment)

                  Your response was to declare my ignorance and run away. Hardly a convincing rebuttal.

                3. My rather delusional friend Count Doku,

                  I will chalk up your present delusion to the passing of the great Christopher Lee.

                  (by the way, you should read the entire thread you linked to – I provided a number of gems of wisdom there)

          3. 1.2.1.3.3

            You are aware that the optional claim format of the Jepson claim is a rather archaic form, eh?

            What is it with you and Malcolm with a odd compulsion for trying to make optional claim forms be some type of only legal claim forms?

        4. 1.2.1.4

          “What the CCPA did in this passage was find as a matter of fact that a programmed computer was physically altered. They cite no expert opinion. ”

          Some things are clear on their face an need no expert opinion. If the machine is not physically changed, how can it possibly do something different than it did before. Changing the state of a memory device changes the device.

          The internet age has made these changes transparent and seems to have confused you.

          As someone who was responsible for performing device updates that had to be performed by burning replacement EPROM and swapping out chips, sometimes to 100 units sitting on the shelf, I assure you, changing software is a physical change and makes a new machine.

          1. 1.2.1.4.1

            Les, you confuse where a programmed is stored with a programmed computer. That is why I often asked anon if storing the program on readable media was the reason a programmed computer was new, I asked just how close this media had to be to the computer before the computer could be considered programmed? 5 feet. 1 mile. Could the programming be on the shelf at the store. In the cloud. In a server located in Moscow? How close?

            If we start talking about a computer whose hardware is altered in a permanent manner, such as with a bios or microcode, then we begin talking about a new machine.

            But the court made this Olympian statement as if handed down from God — received knowledge from the beyond.

            The CCPA was even then a joke of a court. Commentators often noted is complete unwillingness to follow the law, of its wild and woolly nature, and its complete lack of regard for due process.

            1. 1.2.1.4.1.1

              “Les, you confuse where a programmed is stored with a programmed computer.”

              Do I?

              Please show me the error of my ways. What is your definition of a programmed computer? Or is it your position that there is no such thing?

            2. 1.2.1.4.1.2

              Ned, the proper patent doctrine that you should be reaching for is inherency.

              There is NO wonder that you do not attempt a proper argument.

        5. 1.2.1.5

          But a programmed computer IS physically altered. Any EE knowledgeable about digital circuits, or any computer engineer (my degree) knows that. You may be upset about the WAY in which the court came to this conclusion, but nevertheless, the conclusion is valid and comports with reality.

          1. 1.2.1.5.1

            CRP, your post seems to suggest that you have a private understanding of programmed computer.

            Let is drill down just a bit.

            For a start, where is the programmed stored?

    3. 1.3

      This comment started a lot of bickering, but I’d like to get back to this and note that this is a great observation and starting point for a discussion as to what patent law should be.

      Under current patent law, the claims are clearly not indefinite just because extrinsic evidence is needed for claim construction. But many people argue that the standard for indefiniteness should be higher. Does a patent give proper notice as to the scope of the invention if intrinsic evidence and the opining of (conflicting) expert opinions is needed to understand the scope of the claims? One could certainly make a cogent argument that patents should be invalid if the claims can’t be construed without extrinsic evidence.

      There is a slippery slope here though. For technically complex inventions it is very hard for someone other than PHOSITA to understand the claims. It isn’t clear to me where you would draw the lines between using an expert to understand complex inventions using intrinsic evidence versus importing extrinsic evidence to understand the invention. Perhaps experts could be required to point to (and only to) intrinsic evidence to explain their understanding of claim terms.

      1. 1.3.1

        Good post Jeff (by and large),

        The counterpoint being missed here by many is that one rather obvious consequence of the Supreme Court putting its fingers into the nose of wax patent law is that in their Royal attempts to super-power PHOSITA (KSR), they necessarily made the required contents of applications thinner, AND have paved the road themselves of more extensive use (fully sanctioned BY CONGRESS in the Act of 1952) of terms sounding in function (creating the Prof. Crouch-coined term Vast Middle Ground) as legally appropriate and fully legitimate patent writing.

        This is the classic Double Edged Sword.

      2. 1.3.2

        Jeff –

        The fact that an infringer alleges a term has a particular or alternate meaning, does not mean the term is unclear or indefinite. It can simply mean that the infringer is trying to get away with something.

        As I noted at 1.2, anyone who has purchased a TV, computer, cell phone, tablet or laptop in the past decade has had a conversation with a salesman or read a blurb that talks about display format. It has a plain meaning. We all know from 1080p and 768i

      3. 1.3.3

        PHOSITA’s are not experts; they are only of ordinary skill in the art. Perhaps you’re confusing the use of expert witnesses at trial to prove what one of ordinary skill in the art knows?

    4. 1.4

      I had the same question. If a spec has so little in it that it is of no help for any intrinsic understanding of what a claim term means, how can it have a sufficient 112 “enablement” or “description of the invention?” Why does not the Fed. Cir. at least ask that in a case like this since they are remanding it back to the D.C. for a do-over anyway?

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