Patentlyo Bits and Bytes by Anthony McCain

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About Anthony McCain

Anthony McCain is a law student at Mizzou where he is focusing on intellectual property; He has a background in mechanical engineering.

17 thoughts on “Patentlyo Bits and Bytes by Anthony McCain

  1. 3

    Rowdy Rodney Gilstrap is really developing a reputation for himself …

    link to

    At trial, a jury ordered Newegg to pay $2.3 million to TQP. But the verdict against Newegg didn’t end the case—and not because it’s stuck in a grinding appeals process. In fact, the case never even advanced to an appeal at all. US District Judge Rodney Gilstrap, who oversaw the trial, has simply never entered a final judgment. He has also given no indication of when he might issue such a judgment, which Newegg needs in order to file an appeal.

    Now Newegg is taking the extraordinary step of going over Gilstrap’s head. In a petition (PDF) filed today, Newegg lawyers call the delay caused by Gilstrap’s inaction—currently 20 months and counting—”excessive and unreasonable.” Newegg lawyers have asked for the US Court of Appeals for the Federal Circuit to issue a “writ of mandamus,” to consider their patent case immediately, and to rule in their favor.

  2. 2

    Florida Atlantic University v. ASUS Computer International
    link to

    District court holds claim invalid for not having definite corresponding structure.

    “means for”

    Function: counting the number of lines of a video signal.

    Corresponding structure: black box.

    Testimony: one of ordinary skill in the art would know of dozens of difference structures to achieve this function.

    Argument: A particular structure is not disclosed.

    This element is not even close to the novelty of the claim.

    Your call, how is the court going to rule?

      1. 2.1.1

        Can you leave it on the kitchen table?

        No, not that table, that does not look like the kitchen table that I have (in objective physical terms).

        Not that one.
        Not that one.
        No, not that one either.
        How many kitchen tables can there be? Oh wait… Is that like how many “objective physical structures can there be in a range of a chemical patent? And what about the “squishiness” of the edges of that range? Is 1.00000 the same “objective physical structure” as 1.0000? As 1.000? As 1.00? As 1.0? As 1?


          Is 1.00000 the same “objective physical structure” as 1.0000?

          Numbers don’t have “objective physical structure.”

          Nice try, though.

      1. 2.2.1

        Ahan, it does have a black box. Testimony says anyone can build that black box in 900 different ways. Why is the claim indefinite?

        When I say, “computer,” is the claim indefinite? There are 1000’s of different ways of making a computer?


          …same with acrewdriver, or kitchen table, or heck, even something as simple as a range (with as-fuzzy-as-one-chooses range ends) for a chemical claim.

          What was your point, Ned?


          Testimony says anyone can build that black box in 900 different ways.

          That’s an enablement argument.

          Why is the claim indefinite?

          Because it doesn’t describe a definite structure corresponding to the recited means.


            MM, take the claim in Diehr. Molding process. Thermocouples feeding a programmed computer that recalculates mold time on a constant basis.

            The fact that a computer may have 10,000 different ways to implement does not make the claim to a computer indefinite in this context because the specific method of computing is irrelevant.

            Ditto the counting means in spec. 10,000 different way to implement doesn’t mean the claim is indefinite because the claimed invention is otherwise clear and definite.


              Ned: The fact that a computer may have 10,000 different ways to implement does not make the claim to a computer indefinite in this context because the specific method of computing is irrelevant.

              Just put in the specification a reference to an example of a specific off-the-shelf computer that can be used “and equivalents thereof” and you’re pretty much golden. Takes five seconds for a skilled artisan to do that. This is the way professionals write patent applications. The best practitioners even tell where you to buy the components. But it’s not the way that the lowest forms of innovators want things to work, of course, because it requires a bare minimum of actual technical knowledge. The lowest forms of innovators just want to talk about the function of their magical box.

              10,000 different way to implement

              And zero specific examples provided.

    1. 2.4

      Ned, a recurring issue in many contemporary patent cases is the existence of patents with claims that cover actual apparati (usually built by others) but which fail to disclose one single actual structure — in structural terms — that falls within the scope of the claims.

      It’s a real problem. Applicants need to learn to describe their innovative apparati and compositions in objective, definite structural terms (either expressly in the claims or in the specification via 112P6). If applicants feel it is burdensome to describe “the billion similarly-functioning interchangeable” objects in the prior art, then do not use 112P6 and learn to write better claims. Learn to claim your innovation. This requires skill. This is what competent patent attorneys are paid to do. A five year old can draw a box and put the words “count” in it. That’s not “inventing.” That’s not why we grant patents.

      Also, gotta love O’Malley recognizing the existence of a point of novelty in patent claims. It’s something that everybody with a brain can and should do in every instance (and most of us do automatically without blinking an eye).

      1. 2.4.1

        No doubt, MM, that one cannot functionally claim new structure, directly or indirectly. So the question of definiteness has to depend on whether the claim element is claiming new structure or not.

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