Later today here at the University of Missouri School of Law, we are hosting the Fifth Annual Patent Law Moot Court sponsored by McKool Smith and part of the activities of our Center for Intellectual Property and Entrepreneurship (CIPE). (Tonight’s winner gets $1,000).
The setup this year is a revival of the LightingBallast case that we argued a few years ago. Earlier this year, the Federal Circuit again changed course in that case — finding that the patentee’s claimed “voltage source means” connotes structure to one skilled in the art (based upon expert testimony) and therefore is not interpreted under 112(f) [112,p6] (and therefore is not automatically invalid for failing to provide any structure description of the claimed means in the written description).
In the moot-court world, the Federal Circuit has granted en banc rehearing by the defendant on the following three questions:
- Should claim limitations using the term “means” be presumed to fall under the purview of 35 U.S.C. Section 112¶6 and, if so, what level of presumption should apply?
- Should a district court’s fact finding regarding commonly understood terms be entitled to deference on appeal?
- Did the district court correctly construe “voltage source means” as used in claim 1 of U.S. Patent No. 5,436,529?
What do you think?
@MizzouLaw Today's Patent Law Moot Court Question: If a Patentee claims a "means", do we presumptively apply 112(f)?
— Dennis Crouch (@patentlyo) November 17, 2015
I know I’ve seen this fact pattern before somewhere.
Thanks Andy – Next year maybe we can do a monkey-patent case.
Hmmmm. So have I Andrew. Dennis should not pick us to judge. We might lean in one direction.
OT but a good article about presidential power (and indeed, executive branch power as a whole).
link to vox.com
Bottom line is, executive power is, at base, persuad[ing] people to do the things they ought to have sense enough to do without my persuading them. … That’s all the powers of the [executive] amount to.”
“The starter is a standard element of gas discharge lamps and is not the inventive step or concept in the patent.”
J. M., the salient point.
There’s a lot of huffing and puffing by the infringer about functional claiming and scope of the claim element at issue as if that was important. What the Federal Circuit has not made clear is that when one is claiming old elements in a claim one is entitled to claim them functionally.
For example, when one is claiming old elements, one gets a very broad range of equivalents that include not only the particular structures disclosed, but structures that were known to be interchangeable with those structures, known to be interchangeable by those of ordinary skill in the art. It makes
No
Difference
whether the substituted structures perform the same function, in substantially the same way as the disclosed structures so long as one of ordinary skill in the art would know to make the substitution.
This is why it is not all that important about the particular form of the claim. One should be able to claim a class of structures, simply, without having to go through this abusive dance about functional claiming and corresponding structure when it is irrelevant.
It is about time that the court actually start following Supreme Court case law in this area.
“It is about time that the court actually start following Supreme Court case law in this area.”
I think it simpler – and a much better idea – to actually start following the statutory law as written by Congress (the actual branch of the government given authority to write statutory law by the Constitution).
But that’s just me.
CIOFFI v. GOOGLE, INC., (Fed Cir 2015)
Speaking of claim construction, O’Malley and crew scrape the bottom of the barrel to resuscitate this NPE who got the shaft in East Texas of all places (courtesy of Gilstrap).
In a nutshell, patentee uses the term “critical file” in its claims but never defines what “critical file” means (surprise! — oh wait, this is the computer-implemented arts where definitions are only for those little people who don’t Truly Understand the Technology). The specification contains reference to the invention protecting “critical user files and system files” as well as “critical user data” and “critial system and user files.” So Gilstrap construed the term “critical file” to include both “critical user files” and “critical system files.” The term “critical user files” was agreed by both experts to be a completely subjective term and as a result the district court held that the claim was indefinite.
But O’Malley and Co. would have none of it and by wat of “explanation” they simply bury their heads in the sand: “we see nothing that indicates that Cioffi intended its invention to do anything other than protect “critical files” as that concept is widely understood by those of skill in the art.” And how can it be that “they see nothing?” Because, according to the CAFC, “the ambiguity only arises from the specification.” Remember the specification? Remember construing claims “in its light”? No more! Now we just ask some experts what the term means and, if the experts agree, it doesn’t matter what’s in the specifiation.
What a joke of a patent system.
MM, regarding Gilstrap, he seems like a good judge to me.
What infringers don’t like about he and his fellows on the court is that they refuse to play the infringer’s games of the expensive law and motion stall. Rather, they seem to want to expeditiously move to trial.
Ned, “to want to expeditiously move to trial” is not the same as to want to END costly litigation expeditiously, which is what almost all the clients [who are paying for it] want. It is not achieved by refusing to consider dispositive motions until near the trial date and after costly discovery on all possible issues.
Paul, Clients may want an early win, but the normal game litigators play is quite different. Regardless, a motion to file a motion has become somewhat normal in both Texas and Delaware to stop a lot of frivolous law and motion.
You should also know that the PTAB has the same procedure.
In all cases, it is designed to get to trial ASAP and to conserve judicial resources as well as to cut down on the c r a p and petty disputes. Lawyers being paid out of pocket have a lot of incentive to increase the chaos and bickering.
Regarding “critical file” there is no support the specification that I can see for critical file other than “critical user and system files.” Therefore I agree with you there is something very wrong about this Federal Circuit case.
Fro the spec:
An aspect of some current computer architectures that has contributed to the security problem is that by default programs are typically allowed to interact with and/or alter other programs and data files, including critical operating system files, such as the windows registry, for example.
…
Even with security designed into the O/S, malware practitioners have demonstrated great skill in circumventing software security measures to create malware capable of corrupting critical files on the shared memory storage medium.
…
With the network interface program constrained in this way, malware programs are rendered unable to automatically corrupt critical system and user files located on the main memory storage area.
…
It is an object of the present invention to provide a computer system capable of preventing malware programs from automatically corrupting critical user and system files.
….
It is another object of the present invention to provide a user with an easy and comprehensive method of restoring critical system and user files that may have been corrupted by a malware infection.
…
M1 may be used to store, for example, critical operating system files, user data and applications, interim results of calculations, etc.
…
Memory 130 may store critical application and system files required by second processor 140 to execute the desired tasks.
…
However, if the infection is too severe for the anti-malware software to clean, or if the malware is undetectable by the user’s anti-malware software, the user may wish to restore critical system files (or other user data files) for the 130-140 system from a protected image stored on M1 100, for example. It is of course understood that the critical system file image may be restored from another device, such as a removable drive or a CD, for example. The user may however consider it more convenient to restore the critical system files from an image on M1 100.
In accordance with a preferred embodiment of the present invention, an exemplary process for restoring M2 130 from M1 110 is illustrated by process 400 in FIG. 4. At step 410, malware is detected or suspected to be infecting the 130-140 system. The user instructs P1 120 to reload critical system files onto M2 130 from a protected image on M1 110, at step 420. Depending on the severity of the infection, P1 120 may scan all or part of the data contained on M2 130 for malware, and may scan all processes currently running on P2 140. The scan may be initiated by direct instructions from the user, or by stored configuration commands, for example (step 430). P1 120 may delete all or part of the data contained on M2. P1 120 may also reset P2 140 and/or delete the contents of any RAM communicatively coupled to P2 140 (step 440). Once the 130-140 system has been adequately cleaned, clean critical system files are loaded onto M2 130 from any of the sources previously mentioned, preferably an image stored on M1 110 (step 450). The 130-140 may now be rebooted and/or reinitialized from the clean critical system files. In an extreme case where the malware resists deletion by the operating system, the user may elect to do a low level format on the M1 110 memory in order to ensure that the malware infection has been cleaned.
In accordance with a preferred embodiment of the present invention, a user 160 may consider it advantageous for the 130-140 system to be automatically reinitialized from clean critical system files when a protected process window is opened. In this way, the new protected process is much less likely to be affected by an infection from a previous protected process session. Of course, a user may have a plurality of protected processes open and running during a protected process session. It may only be necessary to automatically reinitialize from clean critical system files when the first protected process is opened during a session. Subsequent protected processes may not require automatic re-initialization from clean critical system files. An exemplary automatic re-initialization from clean critical system files is illustrated by steps 510, 520 and 530 in FIG. 5 a.
Additionally, processes running on P2 140 may be automatically scanned and compared with an allowed process list, particularly as a protected process is started up. If any process is detected which is not on the allowed list, the user may be alerted that a possible malware infection has occurred. A user may then choose to scan or clean the system, or inspect the unknown process to determine if the process will be allowed to continue to execute. A user may also update the list of allowed processes from time to time as new, legitimate processes are added, for example, by a browser software update.
I don’t understand – you and MM are angry that the CAFC panel listened to the expert when they said:
In this case, the experts from both sides agreed that
“critical file” had a well-understood and objective definition
to one of skill in the art. Cioffi’s expert, Mr. H.E.
(“Buster”) Dunsmore, stated that a person of skill would
understand that a “‘critical file’ refers to files required for
the proper operation of the computer’s systems.” Dunsmore
Decl. ¶ 35, Exhibit 24 of Google’s Responsive Claim
Construction Br., Cioffi, 2014 U.S. Dist. LEXIS 123760
(2:13-cv-103), ECF No. 66 (“Dunsmore Decl.”). Similarly,
Google’s expert, Dr. William A. Arbaugh, testified that,
“[a] person of ordinary skill in the art knows that ‘system
files’ are synonymous with ‘critical file’ and ‘critical system
file.’” Arbaugh Decl. at 32, Exhibit 23 of Google’s
Responsive Claim Construction Br., Cioffi, 2014 U.S. Dist.
LEXIS 123760 (2:13-cv-103), ECF No. 66 (emphasis
added) (“Arbaugh Decl.”).3
Instead of reading a claim limitation into the specification?
Drop by, the specification clearly refers to critical files as including both “critical user” files and “critical system files.” The claim term uses “critical files.”
One of ordinary skill in the art reading the specification would understand the term “critical files” to include both.
The expert testimony would limit critical files to critical to” system” files. This seems to be in an improper use of expert testimony. I don’t really care that the expert testified that critical files normally would have a definite meaning. In the context of this case, the question really is what one of ordinary skill in the art would understand critical files to mean in the context of this specification.
There is only one answer that question that is an honest answer.
With this claim I think Ned a problem similar to mine with Bobel ‘529.
A clearer statement of claim 1 would be the following, but I am not completely sure the following corresponds to Bobel’s intended claim.
The above version uses American-style punctuation, to wit, a comma before “and”, and has replaced three participial phrases with a compound relative clause. I left the second “producing” which should probably be “conveying” as a participle because by British punctuation style the second “producing” had to modify “terminals” and was not parallel to the first “producing”, the first “having”, or “adapted”. “Employing” could be left as a participle because it could only modify “device”. Because the last “having” could only modify “lamp”, I left it as a participle. “Comprising” is a verbal invariant, which is the verb form of the nominative absolute and is okay as it is although I consider the nominative absolute construction to be inherently confusing and to be something that should be avoided in general.
I don’t believe an inventor really wants a judge to guess about punctuation style and to generate the sort of parse that I just did.
BTW, I suspect Bobel’s original language is Polish, in which the original version of the claim would have been crystal clear because of noun participial adjective concordance.
J.M., The problem with the Lightning Ballast claim is that it is a method claim claimed as an apparatus. As such, I really have no idea what the invention might be. But, I suspect it is in circuit somewhere that is functionally claimed. As such, the claim is either invalid or governed by 112(f). Let’s see.
From the district court case:
“Describing the background 677*677 of his invention, Bobel evaluates a series of circuit patterns used in the electronic ballast industry over the prior decades, before concluding that “it is highly desirable to have a series-resonant ballast for gas discharge lamps.” Id. At the close of his summary of the invention, Bobel once again states that “[i]t will be understood that such a device as outlined above will provide a series-resonant ballast for gas discharge lamps.” Id. Accordingly, Bobel consistently referred to his invention in the intrinsic record of the ‘529 patent as an electronic ballast, with the main novelty being the control and protection circuit in the ballast described in further detail later in the specification.”
Because the inventor used functional claiming at the point of novelty, he gets the whole corresponding structure and did have a difficult time proving equivalents. He was successful though.
But, as you might know, I strongly object to functionally claiming the invention, even using MPF. I think 112(b) trumps 112(f) and that Donaldson was wrongly decided.
The invention must be set forth in the claims. That is the bottom line for me.
The claims in this patent are as bad as they get.
Thank you Federal Circuit. Thank you, not, GS Rich for the putrid 112(f).
The claim:
1. An energy conversion device employing an oscillating resonant converter producing oscillations, having DC input terminals producing a control signal and adapted to power at least one gas discharge lamp having heatable filaments, the device comprising:
voltage source means providing a constant or variable magnitude DC voltage between the DC input terminals;
output terminals connected to the filaments of the gas discharge lamp;
control means capable of receiving control signals from the DC input terminals and from the resonant converter, and operable to effectively initiate the oscillations, and to effectively stop the oscillations of the converter; and direct current blocking means coupled to the output terminals and operable to stop flow of the control signal from the DC input terminals, whenever at least one gas discharge lamp is removed from the output terminals or is defective.
The game in designing better gas-discharge lamps is how to build a better control circuit.
Here is what the inventor says:
As long as 112 sixth paragraph limits the inventor to the three improved control circuits he describes, the patent probably is not evil, but any attempt to claim some sort of class of such circuits would be quite expansive, and I don’t see enablement for any but the three circuits described.
Indeed.
This is an object lesson and why one should never use means plus function to claim the invention. One only gets the corresponding structure and equivalents anyway.
It also is an object lesson and why one should never festoon a claim with oodles and oodles of background structure, especially if one is claiming such structure and with means plus function. To prove infringement, one has to prove each and every element – every claim limitation. Why would one want to do that to the litigator to has to prove infringement? It is torture.
But this kind of claim drafting is actually taught to American practitioners as if it were necessary to hide the ball to get a patent allowed.
Dear Ned,
OK, so let’s say you’re trying to cover a (hardware) memory controller that, say, performs a new algorithm to determine whether storage locations in a solid state drive are going bad (you know those go bad, right — so much for “non-transitory” memory). The memory controller has, say, 1,000 gates itself or maybe 10,000 gates or maybe more in order to perform the functions required by the new algorithm.
Since you can’t claim this with MPF, and according to you, you can’t claim it using functional language, exactly how do you claim it?
Now say that some or all of the algorithm — O Lord! Say it’s not true! — is performed using software and the memory controller accesses the software in order to perform the exact same algorithm. How do you claim that without using MPF or functional language?
Patent Bob,
Algorithm?
Method.
Software is not the execution of software.
Let’s try to stay inte11ectually honest here.
“But this kind of claim drafting is actually taught to American practitioners as if it were necessary to hide the ball to get a patent allowed.”
That is most definitely NOT why it is taught.
You, too, appear only too eager to not understand how the ladders of abstraction work.
That is just not helpful Ned.
Ned, I really don’t see your problem with this. It’s standard in electrical practice to use functional language in all parts of a claim. There’s nothing imprecise about it.
And don’t forget, one is not strictly limited to those embodiments disclosed in the specification. One is also entitle to “reasonable equivalents” under the statue. That’s especially important in electrical cases because one can usually design around a particular circuit that is part of the overall invention. It’s the overall combination and the result that differentiates an electrical invention from the prior art.
Standard practice needs to be reconsidered.
Functionally claiming old elements quite permissible because one gets not only what is disclosed in terms of corresponding structure but that which was known to be interchangeable to one of ordinary skill in the art.
But functionally claiming the invention is quite another thing as one only gets the corresponding structure and equivalents thereof and nothing more. So why not claim that structure in the first place because you might be able to claim it more broadly because you can eliminate from the corresponding structure that which is unnecessary.
What is the “corresponding structure” of a method Ned?
It is the steps, and/or perhaps the order or combination of steps, no?
Is :
mixing A and B functional language? If so, how would you claim that step without functional language?
Les,
While the statute says that 112(f) applies to method claims, I cannot think of any good examples as to when that statute should to be applied to a method claim.
When drafting the statute, Rich through the applicability to method claims in almost as an afterthought.
10. A radio wave propagation characteristics estimating method for determining the frequency transfer function of the radio wave by estimating the radio wave propagation characteristics on the basis of a ray tracing technique of tracing the courses of a plurality of the rays which approximate to the radio wave radiated from a transmission point and detecting the rays arriving at a reception point, said method comprising:
a first step for dividing the spectrum of a radio signal of a target radio communication system into a plurality of bands and determining the frequency transfer function of a predetermined frequency of each of said plurality of bands by said radio wave propagation characteristics estimation, said predetermined frequency of each of said plurality of bands being used as a frequency of the radio wave radiated from said transmission point; and
a second step for estimating the radio wave propagation characteristics of said target radio communication system on the basis of the frequency transfer functions determined by said first step.
ooops. forgot the attribution:
link to google.com
Les, interesting claim.
The first problem I notice is that it is invalid under 101.
Regarding, “step for,” obviously the claim is claiming not the particular action defined in the claim but something in the specification, like particular algorithms, that enables the action to be taken.
“when Rich“….?
Again, Ned attempts the inte11ectually dishonest tactic of trying to place on one person what Congress did.
Stop the games, Ned.
One of the best ways to fix our broken patent system is to immediately repeal 112(f).
Take it up with Congress.
Oh wait, you already tried to do that, didn’t you?
Try again.
(and please, in the meantime, stop dissembling on what the law is – thanks)
Ned you phrase the key question and it seems quite like the question the English courts use, namely “Assessed by the ordinary skilled reader, what was the writer of the patent using the language of the claim to mean?”
Now if you factor in to that consideration the EPO notion of “a mind willing to understand” and also an inclination on the part of the court to steer clear of an overly pernickety claim construction (such as in Chef America) which might attract further derision, and a perception that, actually, the claimed subject matter is not totally devoid of patentable merit, then can you not reasonably arrive at the place that O’Malley reached?
Max I have no sympathy for the patentee here because he clearly was trying to claim both user and system files when he claim critical files. If he intended to claim only critical system files given his disclosure, he should of said so in his claim.
As we say, live by the sword die by the sword. Lessons learned.
The lesson we learned in this case is that the courts will ask the wrong questions in your favor if they like you.
If he intended to claim only critical system files given his disclosure, he should of said so in his claim.
No kidding.
Learn to define your claim terms people. This case is a perfect example of the CAFC screwing over a defendant because they found it sooooo unfair to punish an incompetent draftsperson. Everybody loses when this happens — except for the b0tt0m-feeders. And that’s why this kind of judicial activism will not only be ignored by the “principled” people who otherwise never stop harping about it, but it’ll be applauded.
“except for the b0tt0m-feeders. ”
…and again, the “politeness police” are on holiday….
Malcolm: the ends do not justify the means. You need to do more than just throw up your hands and run around in circles with your “Oh Noes” mantra on ends.
In this case, the experts from both sides agreed that “critical file” had a well-understood and objective definition to one of skill in the art.
Ah — you are playing O’Malley’s game. The experts agreed only that the term “critical file” in the abstract had a well-understood definition to skilled artisans.
But the experts did not agree on the meaning of that term when read in light of the patent specification. Gilstrap believed Google’s expert (for good reasons). The Federal Circuit here simply tossed that finding aside and, instead of acknowledging Google’s expert testimony about the meaning of the term in context, the CAFC simply stated that there was “nothing” to support any other interpretation than its own.
I recognize the difference between agreeing in the abstract that “critical files” has a definite and settled meaning VERSUS the meaning of certain words in a certain claim.
The problem is that when POSITA’s [both experts] agree in the abstract that “critical files” means X, aPOSITA would NOT be persuaded by the specification’s passing reference to additional user files.
If you don’t like the Phillips hierarchy of claim construction, take a case en banc or the supremes.
From the opinion:
Generally, claim terms should be given their ordinary and
customary meaning from the perspective of a person
having ordinary skill in the art at the time of the effective
date of the patent application. Phillips v. AWH Corp., 415
F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). To ascertain
the scope and meaning of the asserted claims, we
look to the words of the claims themselves, the specification,
the prosecution history, and any relevant extrinsic
evidence. Id. at 1315-17. This inquiry, at times, begins
and ends with the intrinsic evidence. In fact, the specification
is the single best guide to the meaning of the claim
terms; it is often dispositive. Id. at 1318 (“[T]he specification
‘is always highly relevant to the claim construction
analysis. Usually, it is dispositive . . . .’”) (citation omitted).
…
Ancora, 744 F.3d at 732, is instructive.
Ancora states that “[a] claim term should be given its
ordinary meaning in the pertinent context, unless the
patentee has made clear its adoption of a different definition
or otherwise disclaimed that meaning.” Id. at 734.
There, we upheld the district court’s ruling that the terms
“volatile memory” and “non-volatile memory” were not
indefinite because the parties did not dispute that there
were “clear, settled, and objective” meanings for those
terms in the art, and three “passing references” [that indicated a hard disk is volatile memory] in the
specification inconsistent with the established meanings
were insufficient to overcome the clear ordinary meaning.
Id. at 738.
aPOSITA would NOT be persuaded by the specification’s passing reference to additional user files.
First of all, there’s nothing “passing” about those “references”. Those “references” show that the patentee had little sense for the “ordinary meaning” of the term in question. Second of all, the POSITA’s understanding of the meaning of the term in light of the specification is exactly what the expert’s disagreed on (and the district court found the defense expert more persuasive on that point — for good reasons!).
If you don’t like the Phillips hierarchy of claim construction
I have no problem at all with the hierarchy. I do have a problem when the CAFC doesn’t follow its own precedents (“[T]he specification
‘is always highly relevant to the claim construction
analysis”) or the Supreme Court which is what happened here.
And for the record: I already read O’Malley’s cr xp opinion — twice. Why do you think I commented about it? Quoting it over and over again doesn’t make it any less cr ppy.
You are angry that the court followed the narrower precedent rule [Ancora] rather than the broad rule that the claims are read in the light of the specification [Phillips or Nautilus]?
That was a nice try on moving the issue to whether the court adhered to supreme court’s articulation of definiteness under Nautilus, or at least language that would indicate the claims must be altered by the specification.
But, first, that’s not what that language says. It merely says the specification is relevant – i.e., closely connected or appropriate to the matter at hand. It did not say the specifcation controls the ultimate issue of claim meaning.
Second, the problem is that the Supreme Court wasn’t addressing claim construction directly [e.g., the way in which claim terms are defined] so any phrasing that may indicate what you want must be argued to the Federal Circuit as mandating a contrary result from its own prior precedent, i.e., Nautilus overrules Phillips [and by extension Ancora] silently. I think that is a tough sell even if I agree with the idea of overruling Phillips on other grounds.
That was a nice try on moving the issue to whether the court adhered to supreme court’s articulation of definiteness under Nautilus, or at least language that would indicate the claims must be altered by the specification.
I was referring to the Supreme Court’s decision in Teva (you’ll recall that in that case “the District Court made a factual finding, crediting Teva’s expert’s account, and thereby rejecting Sandoz’s expert’s contrary explanation“) which isn’t even cited by O’Malley (gee, I wonder why).
the court followed the narrower precedent rule [Ancora] rather than the broad rule that the claims are read in the light of the specification [Phillips or Nautilus]
First, Ancora is a cr p case whose holding (“if there is a well-understood meaning for a term in the art, we do not allow a few inconsistent references in the specification to change this meaning”) stands zero chance of standing up to Supreme Court review. It’s a classic example of CAFC over-reach.
Second, there’s nothing in this case that’s inconsistent with Nautilis. Both experts agreed that “critical user files” is a subjective term. The claim constrution issue was whether the term “critical file” includes both “critical user files” and “critical system files.” Gilstrap resolved that question in the affirmative by relying on expert testimony. The indefiniteness finding was therefore easily reached by the district court. O’Malley doesn’t get to the indefiniteness issue because in her opinion the construction is crystal clear. Why is it crystal clear? Because she says so. Some district judge found credible some expert who said otherwise and provided good reasons for that conclusion? O’Malley don’t care.
drop by : MM is angry because Larry and Sergey / Google MM’s employer lost the case …
“Quoting it over and over again doesn’t make it any less cr ppy.”
The irony is amazing.
The patent application was written by the inventor, who is not a native English speaker, without the assistance of a patent agent or attorney.
The inventor means “gas discharge lamp starter” where he wrote “voltage source means”. The starter is a standard element of gas discharge lamps and is not the inventive step or concept in the patent.
In any case, the claims as written are atrocities, and the examiner should have worked with Bobel (the inventor) to clarify the grammar and punctuation.
Here is the preamble of claim 1.
Even after quickly reading the written description, I am not exactly sure which noun each of the multitude of participles is modifying especially because the claims do not have consistent punctuation (and seem to be following a British style guide instead of an American one).
Also, as I understand the written description, the DC input terminals “convey” a control signal to the converter and do not “produce” the control signal.
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