by Dennis Crouch
Lighting Ballast v. Philips Electronics (Fed. Cir. 2015)
In its 2014 en banc decision in Lighting Ballast, the Federal Circuit confirmed that all aspects of claim construction are reviewed de novo on appeal without giving any deference to findings made by the District Court in its original judgment. While Lighting Ballast was pending certiorari, the Supreme Court decided Teva v. Sandoz that altered claim construction appeals by ruling that a district court’s factual conclusions regarding extrinsic evidence should be given deference on appeal. (All other aspects of claim construction decisions will continue to be reviewed de novo). Following Teva, the Supreme Court issued a G-V-R for the pending Lighting Ballast petition for certiorari with an order that the Federal Circuit reconsider its position based upon the outcome of Teva.
On remand to the original panel*, the Federal Circuit has flipped its original decision — now affirming the district court’s claim construction that was supported by its now undisturbed factual findings.
As with many recent cases, this one also focuses on the difficulty of defining the scope of a functionally claimed element. Here, the Lighting Ballast patent at issue claims a “voltage source means” and the question is whether that limitation should be deemed a means-plus-function element to be interpreted under 35 U.S.C. 112(6). The problem for the patentee is that the specification does not spell-out any embodiments of a voltage-source-mean – and that resulted in the Federal Circuit originally holding that the claim term was indefinite and the claim invalid.
The district court had a different opinion. In particular, the district court heard expert testimony that one of skill in the art would easily understand a “voltage source means” to be an AC/DC rectifier or similar structure. As such, the district court found that the term had sufficient structure to avoid the limits of Section 112(6).
In this new appeal of the same issue, the Federal Circuit has affirmed the lower court findings. In particular, the Federal Circuit found no clear error with the district court’s conclusion that the “voltage source means” is “understood by persons of skill in the lighting ballast design art to connote a class of structures, namely a rectifier, or structure to rectify the AC power line into a DC voltage for the DC input terminals” because it was supported by the evidence of record. Further the extrinsic evidence and resulting factual conclusions were allowed based upon the Federal Circuit’s de novo conclusion that and the conclusions were not contradicted by the intrinsic record. The court writes:
Under the circumstances, it was not legal error for the district court to rely on extrinsic evidence, because the extrinsic evidence was “not used to contradict claim meaning that is unambiguous in light of the intrinsic evidence.” Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). For example, the district court determined that “while the ‘voltage source means’ term does not denote a specific structure, it is nevertheless understood by persons of skill in the lighting ballast design art to connote a class of structures, namely a rectifier, or structure to rectify the AC power line into a DC voltage for the DC input terminals.” The district court went on to note that the language following “voltage source means” in the claim—“providing a constant or variable magnitude DC voltage between the DC input terminals”—“when read by one familiar with the use and function of a lighting ballast, such as the one disclosed by the 529 Patent, [sic] would understand a rectifier is, at least in common uses, the only structure that would provide ‘a constant or variable magnitude DC voltage’”. The district court further noted that “[i]t is clear to one skilled in the art that to provide a DC voltage when the source is a power line, which provides an AC voltage, a structure to rectify the line is required and is clear from the language of the ‘voltage source means’ term.” We defer to these factual findings, absent a showing that they are clearly erroneous.
The district court’s factual findings are supported by the record. Specifically, these factual findings are supported by the testimony of Dr. Roberts and Mr. Bobel. Mr. Bobel testified in his deposition that the “voltage source means” limitation connotes a rectifier to one skilled in the art. Mr. Bobel further explained that a battery could likewise provide the necessary DC supply voltage described in the patent. Similarly, Dr. Roberts explained that the “voltage source means” limitation suggests to him a sufficient structure, or class of structures, namely a rectifier if converting AC from a “power line source” to DC for a “DC supply voltage” or a battery if providing the DC supply voltage directly to the DC input terminals. This expert testimony supports a conclusion that the limitations convey a defined structure to one of ordinary skill in the art. See Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331 (Fed. Cir. 2011). Because the district court’s factual findings demonstrate that the claims convey sufficient structure, the district court was correct to conclude that the term “voltage source means” is not governed by § 112 ¶ 6. As such, we affirm the district court’s decision concerning “voltage source means.”
The analysis here is confusing on a number of levels. How does the presumption of 112(6) applicability to ‘means’ elements fit in the analysis? What impact of Williamson? A factual finding is never the claim construction – thus how does the factual finding fit into the ultimate claim construction decision? . . .
This case does again raise the likelihood of testimony-intensive claim construction hearings as predicted post Teva.
= = = = =
This affirmance reinstates the $3 million in damage verdict going to Lighting Ballast. (Plus pre- and post- verdict interest).
A source is a source, of course, of course,
And no one can claim a source of course
That is, of course, unless the source is the famous voltage means.
“The analysis here is confusing on a number of levels. How does the presumption of 112(6) applicability to ‘means’ elements fit in the analysis? What impact of Williamson? A factual finding is never the claim construction – thus how does the factual finding fit into the ultimate claim construction decision? . . .”
Lol. What. A. Mess.
It is clear that this case is exactly right. This is what I have been arguing for days in the Williamson thread. When claiming known structure, as opposed to the novel structure, the claim should be given a construction that covers that known structure. No details of that known structure need to be described in the specification at all because everyone of ordinary skill in the art knows what one is talking about. Thus I claim computer means. How is that different from computer? In every case those of ordinary skill in the art would know that any computer will do?
Claiming old and well known structure, materials or acts even functionally should be given a construction independent of 112(f) in all cases. The one exception I will acknowledge is that if one intentionally uses the “means for” signal, then the applicant is intentionally employing 112(f) to cover corresponding structure described in the specification. Otherwise he has no intention of employing 112(f), particularly when claiming well-known structure.
It is well that the Federal Circuit was forced to reverse its travesty of justice.
The one exception I will acknowledge is that if one intentionally uses the “means for” signal, then the applicant is intentionally employing 112(f) to cover corresponding structure described in the specification.
Arguably, that’s what the applicant did here, although it apparently didn’t use the word “for.” I agree with you that justice was done in this case, however. There was no lack of clarity in that claim term, and no grabbing of undue scope. The drafting attorney would have saved everybody a lot of trouble if he’d simply said “voltage source,” rather than “voltage source means,” though.
DanH, I think he wanted to generically claim any KNOWN form of voltage source. The way you phrase it, it makes it seem AS IF the voltage source itself had novel structure and that novel structure was the invention. Clearly that was not the case at all. But it just this kind of statement, not making the proper distinctions between old and new elements, and what the invention is, is what gets us into trouble.
What was new here? The fact that the Federal Circuit conducts claim construction without ever knowing what the invention at least purported is it a major part of its problem. Take the companion case today involving the web browser application. There the court right determined that there was nothing there at the point of novelty other than a suggestion to accomplish some result. This is the first time I can recall the Federal Circuit doing its job properly.
I can see district court judges struggling with claim construction precisely because they are taking things out of context. They really need to see the claim as a whole and what really is new before they make a call.
The way you phrase it, it makes it seem AS IF the voltage source itself had novel structure and that novel structure was the invention.
The way I phrase what? I agree with you completely. All I did was point out that the drafting attorney said “voltage source means,” when he meant, simply, “voltage source.”
That would’ve saved a lot of strife. On the other hand, at one point, MPF was so embedded in the patent “culture” in the US that people used this type of language all the time.
What’s bad about our MPF caselaw is we’re the only country that treats MPF like this. If you look at cases drafted overseas, most if not all of the other countries do not require specific structure for the means and allow one skilled in the art to determine what is meant by the means.
So, if you get a case written elsewhere, they’re going to have MPF or “modules” (Chinese firms seem to like these) or the like, with absolutely no disclosure of structure for the means or the modules.
PatentBob, you have no idea just how extensive the practice was. Virtually every combination patent at the time of Halliburton used means plus function, perhaps for every element. All of them. So along come Halliburton declaring MPF claims having a single novel element invalid.
That is WHY congress acted when the bar had a fit. Regardless of the merits of Halliburton, what the Supreme Court did in that case was to reverse Westinghouse, a case that had authorized the very practice that Halliburton forbade. This was dirty pool — beyond belief, reprehensible to the casual observer. Somewhat like what just happened a few days ago at the Federal Circuit in the Williamson case.
Well, the bar got 112(f) in ’52, and everything went back to normal.
Then the Federal Circuit got involved. In a series of cases, the court severely limited the scope of such claims to the details of the corresponding structure. The more detail one disclosed, the worse it got. A black box with minimal description perversely provided broader scope. And it did not seem to make any difference whether the details of the corresponding structure were new or old. (But, see, Valmont at 1045 where the patentee had disclaimed the equivalent during prosecution of reissue of a related patent.)
As a result, MPF claims have become unreliable as to scope, something that must be avoided. We now draft claims to include only the structure necessary to define the invention, not all the details of the corresponding structure that provides support.
Given the wholesale abandonment of MPF claiming by the bar, it is high time that we consider the repeal of 112(f) since the Federal Circuit seem bent on extending it where the statute itself does not even purport to go, to claim elements not even using the “means for” signal.
Your sense of history gets a bit deluded through the looking glass of your Belieb system.
Come back to this reality and recognize what Congress actually did.
Ned, that principle is totally unusable.
A claim is submitted with elements: ABCDEFG. The examiner rejects it a few times, based on various combinations of elements – maybe elements ABCD in view of reference #1; elements EFG in view of reference #2. Some modest claim amendments and arguments convince the examiner to allow it, and the examiner’s remarks in the notice of allowance teach: “The claim recites elements ABCDEFG, the combination of which is non-obvious in view of references #1 and #2.”
At some point following this chain of events, a dispute arises such as in Lighting Ballast. You would seek to resolve it in view of the question: Which particular elements are “old,” and which are “novel?”
This is not a question that the examiner considered, because the claim is intended to be read “as a whole.” This is also not a question motivated by any portion of 35 USC 112, which entirely fails to distinguish between “old” elements and “novel” elements.
You are arguing for entirely different rules of claim construction based on a test that is not stated anywhere in 35 USC.
DanH: At some point following this chain of events, a dispute arises such as in Lighting Ballast. You would seek to resolve it in view of the question: Which particular elements are “old,” and which are “novel?”
I don’t think the rule Ned proposes is unusable. In particular, it’s certainly usable where the applicant is careful to identify the elements of the claim that are in the prior art.
The major problems lie where a claim element is recited functionally (i.e., “voltage source”) and where the claimed combination only works in a commercially satisfactory manner (if at all) where the element is modified in a novel, non-obvious manner that is not disclosed by the application but (surprise!) appears in the accused infringer’s device. The accused infringer, of course, is making money not because of the combination (which wasn’t enabled) but because of the specific innovation of the accused infringer.
But what happens in the infringement suit under a regime where functional elements in a combination are not limited to structures in the prior art is that the question of validity ends up being resolved by an incredibly expensive battle of the experts, i.e., “were the infringer’s structural innovations enabled in light of the patentee’s weak functional disclosure devoid of any structural descriptions of the described components”. This is a strange way to “promote progress”. The correct place to put the burden seems to be on the patentee. Take the five minutes it takes to provide some examples of the structures you are talking about, at least. Better yet: describe the structure of the claimed invention in detail and show some data demonstrating the operation of your conception of your innovation and describe for the world exactly what it achieves, and to what degree. It’s unclear why that is too much to ask of people who will later claim to be deserving of hundreds of millions of dollars in compensation.
Apologies, DanH — my comment was addressed to David.
MM, according to Westinghouse and a proper construction of 112(f), one construed functional expressions to determine the corresponding structure, and then determined, for infringement purposes, whether the accused device was using that structure or equivalents.
In the case of a functional expression claiming old and well known structure, that is the “corresponding structure.”
If the structure is new, or has a new relationship with other structure, that of course is the structure/relationship that has to be proved for infringement purposes. The accused structure must be substantially the same thing – meaning it must be at least an equivalent of the new aspects of the corresponding structure. It cannot simply be achieving the same result.
A problem with the Federal Circuit’s interpretation of 112(f) is its nonsensical cases of Donaldson and Alappat where it treated the rule of construction as if it had nothing to do with proof of infringement. Read cases like Federal Circuit cases like Valmont v. Reinke or Johnston v. Ivac; or the Supreme Court case of Westinghouse v. Boyden Power Brake, and it is clear that the rule is the rule of construction and proof of infringement in court. Federico said the same thing in his commentaries.
From Valmont Industries Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 25 U.S.P.Q.2d 1451 (Fed. Cir. 1993):
“In sum, for a means-plus-function limitation to read on an accused device, the accused device must employ means identical to or the equivalent of the structures, material, or acts described in the patent specification. The accused device must also perform the identical function as specified in the claims.” Id. at 1042. link to scholar.google.com
Prior to Donaldson, the PTO did not issue patents that literally read on the prior art. It took its duty to provide clear and definite claims seriously. The en banc court in Donaldson laughed outright at the PTO, and reversed — part of a long trend of Rich decisions that progressively changed patent law for the worse.
That is just his PON canard.
I nominate you, anon, to be a first inductee of the G. S. Rich Hall of Fame. Above the entrance to the Hall’s Temple, is embossed the image of a grinnin Alfred E. Neuman holding a ribbon copy of a patent. Mr. Neuman is quoted as saying, “What — Me worry?”
Inside one may visit exhibits describing the history of Judge Rich. Each exhibit will triumphantly display one of the many Supreme Court cases Rich overturned, ignored, or distinguished in his long career. The exhibits extend for a mile.
As one approaches the far end of the temple, one approaches the Altar of Defiance, where, for a small stipend, one might ritualistically sacrifice new Supreme Court patent cases that one wishes to disappear.
Above the altar is a towering statue of legend himself, in the style of Nero’s Colossus, towering 120 feet into a raised cupola. He is shown crowning himself in the manner of Napoleon, an man above, a God among men. G.S. Rich, savior of the patent system from the barbarian hordes and from the Supreme Court of the United States of America.
All Hail, G.S. Rich.
Anon, you could not have better company than Rich and your fellow inductees as they join you.
Your anti-Rich obsession is most bizarre.
David, context. That is all I am arguing about.
Prosecution is quite different that what goes on in court. Quite literally, the invention may emerge during prosecution where some feature in one element may be the only thing new. When this happens, and it happens to me a lot, many of the other limitations are excess baggage that I cannot get rid of — try removing unnecessary limitations after a notice of allowance.
But, now the claim is in court. The only thing new is one feature in one element. There are a lot of excess claim limitations that are there only because one cannot remove them. They are all old, and old in context. They are hardly the invention, but one still needs to prove them when proving infringement.
But how does one construe these limitations when clearly they are not the invention, but old elements? Narrowly? Why? What justification is there for that? They are old, after all. They are known. Construe them as anyone of ordinary skill in the art would, to cover the known structure.
Ned, you are basically arguing that all claims should be regarded as Jepson claims: let the applicant identify the elements that are “new,” and regard the rest of the claim as “old” and held to a much lower standard of written description / enablement / etc.
On the one hand, I don’t disagree with this approach as an option, for cases that unequivocally fall into that pattern. But many cases don’t, and this principle of “old” vs. “new” creates all kinds of ambiguity and open questions.
Let’s say an inventor team discloses a method comprising steps ABC, where the combination provides a novel result. B is undoubtedly novel. A provides a technique that’s generally known, but not in this context, and in fact there’s no motivation to apply it in this context except as a precursor to B. And C is a use of the result of B – perhaps many known techniques use this type of data, but, again, not the particular type of data provided by B.
This raises the question: Are A and C “new?” Does the claim suddenly get a different claim construction if I distinguish references only by pointing to B (suggesting that A and C are immaterial), vs. if I also distinguish it because the references doesn’t involve A or C?
My point is that your principle introduces a completely new question of law and fact, one that patent law has largely avoided to date. Consider the problems:
* During prosecution, I will be forced to present only the most conservative arguments to distinguish references. I will have to hesitate to discuss “A” or “C” at all, because that could be construed as an argument that these elements are “new” or “significant,” and thus more likely to get dragged into 112p6 against my intentions.
* During drafting, I will have to guess at which claim elements I expect to support novelty arguments (over whichever references are cited), which I will describe in great detail, and which claim elements I won’t, which I will describe in extremely terse language. As it stands, if I decide to include some means-plus-function supporting language for each claim element just in case it may be dragged into 112p6, the very presence of that language may mitigate toward that same result. This is a departure from my current practice, where I describe every element in detail, and vary the precision of my claim language based on other considerations, like which element(s) most clearly distinguish the cited references.
* Like Alice, this brand-new test is retroactively imposed on the entire body of patents and patent applications – including those drafted and prosecuted when 112p6 was handled in a predictable and straightforward manner.
* Last but not least – not a single word in 35 USC or 37 CFR suggests different claim construction standards for “new” vs. “old” elements.
When courts start shooting at the hip, and creating new rules of patent-eligibility, it perturbs the entire body of patent law and practice in ways weren’t predicted. That’s why we are still struggling with 101, after 40 years of judicially-created and judicially-scrapped tests. Dragging 112p6 into this same mess – now, when 101 is still very much an open question – is unforgivably bad jurisprudence.
David: Let’s say an inventor team discloses a method comprising steps ABC, where the combination provides a novel result. B is undoubtedly novel. A provides a technique that’s generally known, but not in this context, and in fact there’s no motivation to apply it in this context except as a precursor to B. And C is a use of the result of B – perhaps many known techniques use this type of data, but, again, not the particular type of data provided by B.
To the extent I can make any sense of this, David, it sounds like a garbage claim drafted by someone trying to hide the ball.
You have a novel step that’s eligible for patenting? Great. Hire a competent attorney and claim it. Otherwise, please stay out of the patent system.
A provides a technique that’s generally known, but not in this context
In other words, A is old.
C is a use of the result of B – perhaps many known techniques use this type of data,
“Type of data”? What? You dropped that in out of the blue.
The more important point being: you can’t claim “a result”. You can claim a method. You can claim an apparatus. But you can’t claim the “result” (unless, of course, the result is a new eligible composition of matter or a new eligible apparatus, in which case you can claim the “result” separately, as such).
Anytime and everytime a detailed “result” starts showing up in a method claim (as opposed to a general statement of purpose), a red flag should go up immediately. If that result is the only new element in the claim, then the claim is jacked. If that result is just one possible result of practicing the claimed method, out of millions of other possible results, then the claim is jacked because it’s missing some key elements. If that result isn’t the only new element of the claim, then why is it being recited at all? — it’s not only unnecessary but it’s not limiting if the claim is properly construed.
When courts start shooting at the hip, and creating new rules of patent-eligibility, it perturbs the entire body of patent law and practice in ways weren’t predicted.
Funny stuff. The rules for patent eligibility were well-known to everybdy until they were conveniently forgotten, David. I had little difficulty “predicting” what would happen to claims that broke those rules. And I was hardly alone.
Wise and considerate attorneys will continue to advise their clients in every instance of the likely unenforceability of claims that protect information processing logic using functional language. You ruffle the wrong feathers and your shiny super-duper techno patent is very likely to end up in the trash heap along with all the others.
David, I think one should draft applications with a view to providing as much detail as one can. One never knows what really is important in advance, and what is need for support for potential new limitations that one might need to add.
Regarding prosecution, argue only what is absolutely necessary and no more.
Regarding old and new elements, if one distinguishes the prior art by saying X is new in this combination, then X is old and the combination is new. If instead one argues that the prior art does not disclose X or some feature of X, instead of arguing a new combination, then X is new in some fashion, a different or improved element.
But, during claim construction in court, one cannot argue that X is an old element if the patentability of the claim depended on it or some feature of it. But the rest claim is open season because validity does not turn on these elements being new.
The infringer is going to argue narrow constructions across the board. Since novelty does not depend on some narrow construction of the terms other than X, the patent owner needs to argue the broadest construction possible. When the other side tries employ 112(f), the best counter now seems to be arguing exactly what happened in the “voltage source means” case, and that is that the functionally defined term is well known structure. This will avoid the claim be limited to the details disclosed the specification which are somewhat irrelevant to patentability or validity.
Ned, your post above lists the standard, ages-old advice about application drafting – you can find it in any old version of Landis’s claim drafting, or Sheldon’s “How to Write a Patent Application.”
However, your advice is inconsistent with the consequences of the principles of patent law that you advocate here:
(1) “Argue only what is absolutely necessary and no more”:
That’s great, if you have clairvoyance about what the examiner will find persuasive. In the real world – even when an examiner says in an interview, “I’m persuaded by argument (x),” you can’t bank on that, because examiners change their minds all the time.
When there are multiple reasons why a reference does not teach the claimed invention, the practitioner faces a tradeoff between minimizing estoppel by arguing as little as possible, and expediting prosecution by putting more than one persuasive argument on the record. Many clients prefer expediting prosecution (office action replies and RCEs have immediate and significant costs over the nebulous advantages of minimizing estoppel (note that only a tiny sliver of patents are litigated).
But the legal distinction that you want, where “new” elements get dragged into 112p6 and “old” elements don’t, skews this tradeoff. Let’s say the claim provides elements ABC, each of which distinguishes the reference, even if one or more of the elements could be construed as “old.” But it will no longer be good practice to set forth the argument for each element, as this may trigger the 112p6 / heightened scrutiny that you want to occur. Hence, protracted prosecution.
(2) “One should draft applications with a view to providing as much detail as one can”:
Ned, in this very case, the lack of detail as to what a “voltage source means” could comprise worked in Lighting Ballast’s favor – to the tune of $3 million.
If Lighting Ballast’s specification had listed a bunch of equivalents, the claim would have been interpreted as invoking 112p6, and hence strictly limited to those variations. Philips could then have picked a different version of a “voltage source means” to avoid patent infringement. Had Lighting Ballast followed your advice here, its patent would have been critically limited.
Instead, Lighting Ballast treated “voltage source means” as a purely functional descriptor: any component that provides voltage, because it doesn’t actually matter. The CAFC’s holding found that term appropriate and gave it due scope.
Finally, I find it amusing that you are taking this position now – given your arguments a few weeks ago about how Biosig‘s term “spaced electrodes” required some kind of strict limitation. The particular configuration of the electrodes in Biosig was as irrelevant to that case as the “voltage source means” is in Lighting Ballast, yet you see a chasm of difference that leads to vastly different results. Interesting.
Ned, that is not how claim construction and litigation have ever worked.
Patent trials follow a well-defined pattern: the parties look at an element and argue about a claim construction, and then argue about whether that claim construction applies to the accused product. It does not matter whether that element is “new,” or is “old but new in combination.”
And, again, you have declined to respond to the fact that 35 USC and 37 CFR, together, make no legal distinction about 112p6 over “new” vs. “old but new in combination.” It is not there. Hasn’t there been too much “inventing legal tests out of thin air” already?
David, claim construction does consider the prosecution history. If the argument is made that X is not Y, then one cannot get a construction of X to cover Y. See, e.g., Valmont at 1045. link to scholar.google.com
Regarding multiple arguments, think twice, please. There is always the RCE if argument 1 fails. The client needs to be educated about prosecution history and claim construction.
And yes, if one makes an argument that a limitation of an element is not disclosed in the prior art, one cannot thereafter get a broad construction so as to effectively read that limitation out of the claim. There is nothing new here. But, but limiting your arguments, you do have flexibility in court regarding the other elements.
I do not share your view that “voltage source means” would have meant anything other than a rectifier. That is what would have been in the spec if the applicant had thought it important.
The argument that convinced the lower court was that everyone knew that a voltage source means had to be a rectifier between an AC line and a DC ballast.
On, Nautilus, the problem there was that the prior art (see reexamination) disclosed the exact same mechanical and electrical arrangement as disclosed by the patentee. There was nothing in the specification that suggested that anything be done to adjust anything to remove unwanted signals. That argument was whole cloth. There was even testimony that the signals from each hand were different. There was testimony that materials were adjusted in the factory to get the signals to balance, but what, how much, etc. was not even discussed in that testimony.
Where was any of this in the patent application? Apparently it was not known to the public at the time the application was filed. Was it even known to the inventor when he filed? When did he make the invention he claimed that wasn’t even disclosed.
There was something very wrong in that case, and I can only hope the district court gets it sorted out.
Of course. That’s the very definition of prosecution history estoppel, which I discussed in my argument above. I do not see your point.
Ned, I work primarily on software cases – not business-method cases, but actual software that is 100% directed at improving the functionality of the device. Those art units are not giving up cases easily, so even when we traverse a reference or combination, the examiner comes back with others. I’ve had cases that have faced six totally distinct, non-overlapping combinations of references, before getting essentially the same claims allowed. Broadest reasonable interpretation is being expanded to maximum and sometimes ridiculous levels – e.g., a backlight for collimation in an LED display was rejected based on a reference for drop-in overhead fluorescent area lighting.
Given this protracted prosecution, I am inclined to expedite prosecution as much as possible. When a reference is presented, I strive to ensure that it is very clearly distinguished, so that the examiner doesn’t state “nonpersuasive” and carbon-copy the last reply (or that, when this happens, the arguments are strong enough to make winning an appeal very likely). I am not inclined to quibble over the same reference repeatedly by trotting out single arguments one reply / half-RCE at a time.
This is why I’m vociferously opposed to your idea here: further tests like “new” vs. “old but new in combination” will impose restraints that make prosecution even longer, more onerous, and more expensive.
Ned… are you aware of the variety of structures that qualify as “rectifiers?”
Sidra’s Microelectronic Circuits, Chapter 4, provides the following structures as an introductory review of rectification techniques:
* Page 195: Half-Wave Rectifier
* Page 197: Full-Wave Center-Tapped-Transformer Rectifier
* Page 199: Full-Wave Wheatstone Bridge Rectifier
* Page 205: Peak Rectifier
* Page 206: Precision Half-Wave “Superdiode” Rectifier
* Page 211: DC-Restoring Clamped Rectifier
* Page 212: Voltage Doubling Rectifier
That’s seven completely different circuits, each with a distinctive configuration of elements and a distinctive behavior. They are all “rectifiers,” according to PHOSITA. And that’s a brief survey in an introductory text on microelectronics.
So tell me, Ned – which of these is the specific structure connoted by “a rectifier?” Or is it all of them, and anything else that PHOSITA would consider a “rectifier?”
Did you notice that in defense of the “structure” of the rectifier, the CAFC noted – with approval and (rare!) deference – the DC court’s statement that a rectifier is “a structure that rectifies the line?” Exactly how do you reconcile that with your “the point of novelty must be structural, not functional” argument?
Good luck Dave.
Ned all but admits that PON was not written into the law by Congress in 1952, but then like totally skips a beat and thinks his “version” is the secret law.
David, Did you notice that in defense of the “structure” of the rectifier, the CAFC noted – with approval and (rare!) deference – the DC court’s statement that a rectifier is “a structure that rectifies the line?” Exactly how do you reconcile that with your “the point of novelty must be structural, not functional” argument?
Simple. The claim element was not the PON. It was old and well known structure as a class of circuits.
This is why the patent owner won the case. Good job by the litigators here. From the caption:
JONATHAN TAD SUDER, Friedman, Suder & Cooke,
Fort Worth, TX, for plaintiff-appellee. Also represented by
DAVID ARTHUR SKEELS; ROBERT GREENSPOON, Flachsbart
& Greenspoon, LLC, Chicago, IL; ANDREW JOHN DHUEY,
Berkeley, CA
Ned,
Your response here is called out as B$ as you have NOT answered David’s point.
Your PON just is not there in the words of Congress.
Also, you keep on monologuing in your internet style shout down mode about this notion that a certain part of the law was not for the Office. This very bizzaro view was rejected by a court of law, and simply has no foundation in reality. Why do you keep on repeating this fallacy as if it were true? It is a completely untethered notion that you have simply made up. This too is just not there in the words of Congress.
How does the presumption of 112(6) applicability to ‘means’ elements fit in the analysis? What impact of Williamson?
I noticed that omission as well. This seemed like a poor job of coordinating the timing of opinions by the CAFC.
I don’t see how Williamson v. Citrix would be very helpful to this analysis. Williamson did away with the “strong” part of the “strong presumption” that claims that do not use the magic word “means” invoke 112p6. This is obviously the opposite situation, but, more importantly, in this case the “strongness” of any presumption was never an issue. I don’t think the Federal Circuit was in any position to expound on this issue, given the lack of any briefing on the issue, or even a proper identification of what the actual issue is.
I meant, of course: “the ‘strong presumption’ that claims that do not use the magic word “means” do not invoke 112p6.”
DanH — points taken.
I guess I expected some lip service, at least, maybe a footnote recognizing the existence of the Williamson opinion, noting that it wouldn’t change the analysis and a brief note explaining why.
Though plainly less desirable for the parties, they could also have been asked by the panel to supplementary brief the CAFC as to whether Williamson should make a difference.
All that said, I agree that the prosecuting attorney could (and should) have saved everyone a lot of time by avoiding the use of the term “means” if he/she didn’t intend to provide corresponding structures in the spec per 112P6. As usual, a few short paragraphs of clear definitions and examples could have saved everyone time and money, regardless of the details of the claim language. Both parties here seemed to be kicking up unnecessary dust at every turn. Weirdly enough, there’s some suggestion that the claims might be anticipated but the defendant failed to raise the defense in a timely manner. Oy.
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