Claim Limits and Differences

Indacon v. Facebook, App. No. 15-1129 (Fed. Cir. 2016)

Indacon’s U.S. Patent No. 6,834,276 covers an improved database system that adds “custom links” so that instances of a “link term” would point to a particular file in the database. Thus, applying this in LinkedIn, you might find that references to “Dennis Crouch” point to my LinkedIn profile.  Of course, the way that Facebook & LinkedIn operate does not create the pointer-link for all occurrences of the term.

During claim construction, the district court determined that the asserted claims required that all instances of a specified link term be identified and linked.  Although not expressly claimed, the district court found that the all-instances requirement should be found in the definition of “link term” and “custom link.” On appeal, the Federal Circuit has affirmed.

As the first step in the de novo claim construction analysis, the appellate panel determined that the claimed “link term” and “custom link” had no defined meaning in the art – a factor making the specification and prosecution history even more important in the analysis.  As the next step, the court looked to the specification that called for automated tagging a link term “when [it] is encountered in a file or document.”   and for “association of any selected link term with any of the plurality of files in the selectable database.”  In my mind, these are ambiguous at best in terms of requiring all instances be identified. The clincher, however, was buried in the prosecution history where the patentee explained that the operation works by linking “every instance of a specified word . . . [and again] associate all instances of a specified word with a specific file.”

The statements from the prosecution history were sufficient for the court to affirm that the “every instance” should be imported into the claim term construction.

“[T]he interested public has the right to rely on the inventor’s statements made during prosecution, without attempting to decipher whether the examiner relied on them, or how much weight they were given.” Fenner Invs., Ltd. v. Cellco P’ship, 778 F.3d 1320 (Fed. Cir. 2015). Here, the patentees repeatedly described their invention both in the specification and the prosecution history as allowing “every instance” or “all instances” of a defined term to be identified and displayed as a link. Under these circumstances, the district court did not err in limiting the link claim terms as such.

Strict Limits on Claim Differentiation: Indacom’s best argument stemmed from the language of non-asserted claims. In particular, some of the claims required linking of “instances” of a term while other claims required linking “all instances.” The implication here is that the “instances” does not require “all instances.”

On appeal, Judge Stoll indicated that the claim differentiation argument only applies in a narrow range of cases — where claims are otherwise identical in scope.  “[W]e have declined to apply the doctrine of claim differentiation where, as here, the claims are not otherwise identical in scope.” Citing World Class Tech. v. Ormco, 769 F.3d 1120 (Fed. Cir. 2014) and Andersen v. Fiber Composites, 474 F.3d 1361 (Fed. Cir. 2007).

Although it is still probably not enough to win the case (and thus a harmless error for this case), Judge Stoll’s statement of the doctrine is unduly limiting and will likely be harmful in future cases.  This is, however, the approach suggested by Professor Lemley in his 2008 article: “First, courts should not use the doctrine unless the claims in question are in an independent-dependent relationship.” Mark A. Lemley, The Limits of Claim Differentiation, 22 BERKELEY TECH. L.J. 1389 (2007).

Rather than relying upon claim differentiation – the better approach may be to expressly differentiate the claims to indicate the difference. Thus, rather than just “instances” the claims could have said “at least some instances.”




86 thoughts on “Claim Limits and Differences

  1. 9

    Actually, I’ve recently seen a study that confirms what I see in my practice. The biggest impact of “reform” has been to take patents away from small inventors. At some point, Dennis is going to have to take some responsibility for providing a forum for K Street to spew out its nonsense on this blog. It is a modern era. We know that the paid bloggers are everywhere. There was even a job announcement on this blog to supervise paid bloggers to post against software patents.

    You need to clean out the paid bloggers. This blog is like in the 1900’s when thugs would make sure that no spoke out against anyone in a public place. Oh wait, we are going back to that now aren’t we.

    1. 9.1

      And the professors on this blog should take responsibility for allowing people like Lemley to act unethically. E.g., publishing a paper that says software has no structure without a retraction and apology. Disgusting.

      1. 9.1.1

        Are you kidding Night Writer?

        Have you ever been connected with academia? It’s like a “politically correct cessp00l.”

  2. 8

    July 6 is going to be a fun day in Courtroom 201 (assuming that you like to hear patent tr0lls and their desperate attorneys frying like tree frogs on a hot desert rock).

    15-1827 PATO B.E. Technology, L.L.C. v. Google
    15-1828 PATO B.E. Technology, L.L.C. v. Microsoft Corporation
    15-1829 PATO B.E. Technology, L.L.C. v. Facebook, Inc.
    15-1882 PATO B.E. Technology, L.L.C. v. Sony Mobile Communications
    15-1883 PATO B.E. Technology, L.L.C. v. Google, Inc.
    15-1887 PATO B.E. Technology, L.L.C. v. Microsoft Corporation
    15-1888 PATO B.E. Technology, L.L.C. v. Samsung Electronics America

    The “technology” is a variant of the evergreen “shove an ad in your face” “technology” that is so popular among patent tr0lls and related b0ttom-feeders that infest our legal system.

    Fyi, I highly recommend a Free Law Project-related website called Court Listener where (at no cost) you can stream oral arguments without downloading them (among other features).

    1. 8.2

      Honestly, for those of us who have real jobs, how are we supposed to listen to oral arguments? Only those with no job and/or are paid to blog can do that.

      1. 8.2.1

        how are we supposed to listen to oral arguments?

        I put ’em on at lunch. Also I’m selective about which arguments I listen to. Some cases are less interesting than others.

  3. 7

    At 2211 Martin Snyder wrote:

    “examining software patents would be akin to ‘examining’ the world’s literature to grant a copyright. It’s an insane undertaking”

    Akin? I think not. Consider the issue of plagiarism in the academic publishing engineering sector. At least in Germany, a slew of national politicians have been greatly embarrassed in recent years by the researches of the Vroniplag people, who do full text research on the net, to detect where the text in the politician’s PhD thesis is other than original.

    Nothing “akin” to that search activity for software, as far as I know, and no prospect of such, in the future. So granting people 20 years of exclusive rights on a piece of software strikes me as a crazy idea. If you wanted to impede rather than promote technological progress, I cannot think of a better way to do it than to issue patents that are directed to computer programs per se.

    On “technical solution for a technical problem” I do assure you it is considerably better at setting a limit on patentability than is “abstract”. As far as I know, this patentability criterion originated in Europe but has now been mentioned in at least one decision text by at least one SCOTUS Justice in at least one of the recent cases to be decided by the Supreme Court. Perhaps a full text search would pin it?

    1. 7.1

      Max, the problem with software is that the same idea can be described in many different was so that a text search is not likely to be exhaustive. With chemistry, electronics, mechanics, there are limited ways to describe things, a common language, that promote searching. As well, classification systems allow “manual” searching. I do not even know whether classification is possible with software.

      1. 7.1.1

        The “Wah, it’s too difficult” whine was pa thet ic back in 1968 and has not gotten any better with age.


              Except it is not – but thanks.


              Meanwhile the entire system is imploding under the impossibility and Mr. Serious “anon” and his entitled cohorts wrap themselves in the Constitution and cry their crocodile tears every time their precious rights are reasonably diminished as a direct result.

              More reform to come, “anon”! I can guarantee you won’t like it.

              But who cares what you think anyway?



                their precious rights are reasonably diminished

                Reasonably…? Decided by you…?

                You are doing that “leaky thing” again.

                1. Reasonably…? Decided by you…?

                  And Congress. And the Federal courts.

                  Remember when the patent maximalists first realized that their power to dicate the terms of every conversation was slipping? And “anon” b0mbed this website with hundreds of insulting comments from dozens of s0ckpuppets every day?

                  Man, that was funny. Not as funny as when “anon” was outed by Dennis, but still pretty darn funny.

                2. Not even Congress and the Federal courts can diminish Constiturional rights with improper means.

                  That’s a rather important point that you as an “attorney” should be – I say should be – very much aware of.

                  “Go figure Folks”

                3. And I do very much get a chuckle of your attempts at sock puppet spin – seeing as YOU are the one using that method well after ANYONE else (I still believe it is your “turn” in the battle of transperancies with Dr. Noonan)

    2. 7.2

      Nothing but more inanity from MaxDrei.

      What? US sovereign is different? What?

      rinse – repeat (same old same old blight from MaxDrei)

    3. 7.3

      I understand that there are now programs to search through code, just like text, and determine derivation. I believe this was reported in the Cal IP magazine in a two part article. Will look for the reference.

  4. 6

    At 2211 Martin Snyder writes:

    “examining software patents would be akin to ‘examining’ the world’s literature to grant a copyright. It’s an insane undertaking”

    That thought had not occurred to me before.

    It makes sense to me. Where’s the flaw?

    At 2, Martin gives a quote that looks like the EPO basis for denying patentability:

    “not a technical solution to a technical problem”

    So where did he get that quote from? It couldn’t possibly have been anywhere in Europe could it.

    1. 6.1

      Where’s the flaw…?

      One has to do with expression, the other utility.

      One is allowed to have independent creation, the other not.

      Fn serious now MaxDrei – try a little basics.

      (and yes, the “technical” line is evidence of the propaganda being repeated by those who do not understand the terrain of US law – and that is NOT a good thing)

    2. 6.2

      Yes Max, finding “clear and convincing” “on sale” or “public use” software prior art is difficult. Effectively dated documentation of early versions can be hard to find, even by offering a “crowd sourcing” reward, and mere oral recollections are rarely sufficient.

      1. 6.2.1

        What Paul? I have found it is rather easy to find old working copies of software on eBay. I have bought whole computers from years gone by fully loaded with software from 20 years ago on eBay for court cases.


          Good point – if you can authenticate both the sale or public use dates of that old software AND that the software has not been updated since by testimony from whomever had access to and control over it since?

          P.S. I’m curious if you or anyone else have tried asserting old software on old floppies as “printed publication” prior art in an IPR?

          Or, re AIA applications or patents,, as “otherwise available to the public?”


            P.S. Unlike a paper document, as far as I am aware it is difficult to tell if a digital magnetic recording has been altered or not since its original recording.


              1) Paul the rules of evidence handle old software reasonably well. If the records were kept in the ordinary course of business and the chain of custody is established, it’s likely getting in.

              2) anon the fact that literature is not a useful art has no effect on the similarity of literature and software as written compositions that can vary in myriad small ways toward similar patterns. Its just a silly filter that you snap-on whenever the uncomfortable facts suggest important parallels.

              3) mechanical innovations of value are more often patented, and far less often amenable to major and minor variations than software, because much of the value of software is the ability to iterate and re-model quickly as compared to real-world objects, so no Les, examining the worlds software and the world’s mechanical devices are not remotely the same thing.

              4) Max, the “technical solutions to technical problems” approach is just as flawed and situational as the “abstract ideas” approach because both mean whatever a jurist wants them to mean.

              5) Software creates huge problems in the meaning of prior art (i.e. Alice recognizing that a model of something old is still old), and even identifying the appropriate field of endeavor. For instance, a new software weather forecasting tool falls in which domain, computers or weather forecasting?


                Rather the opposite Mr. Snyder – it is you that is finding the terrain of law a little too inconvenient for your desired views.

                The “silly filter” only appears “silly” to you because you want something other than the terrain of law to be the “battleground.”

                It just is not so – and this is NOT a “choice of anon’s,” but rather merely anon telling you what it is – eppur si muove.

                1. It’s not even nominally accurate since patent policy very often unfolds within the terrain of politics, which ain’t law by a long shot…

                2. You do realize that the “politics” is very much part and parcel of the problem, right?

                  Translation: “Why do people complain about my grfiting schemes? Don’t they realize without fake lawyers like me we’d all be driving around in Flintstones cars?”


                3. The translation is (of course) a

                  But hey, meaningless ad hominem is just how Malcolm rolls – happy Decade of Decadence!


                They are the same Martin. How is an examiner to know the gear arrangement in a 1942 Yugo?

    3. 6.3

      When you can plug your literature into a machine (as a component) and have the functionality described in the literature be implemented, then I will say it is the same.

      1. 6.3.1

        It is not – and never will be.

        Please do not feed chum to the (purposefully) ig norant.

        Clarity cannot come from such obfuscation.


      2. 6.3.2

        Maps are a genre of literature, but a map is also a working model with essential utility in the real world. Spin that anon.

        Its not a straightforward inquiry; a new kind of globe is without a doubt a manufacture and not an item of literature. See Bucky Fuller’s
        US 2,393,676 (note the lovely writing of the spec, you don’t see that much anymore). Yet consider the loading of newly featured maps into a marine chartplotter- do you have a new chart plotter?

        No, you don’t.

        The essential problem when dealing with symbols (such as computer models) is separating the sign vehicle (in this instance the new and useful globe or the chartplotter device) from the two parts of the sign (in this instance contained within the map data); the referent, which is the social meaning of the sign, and the interpretent, which is the always 100% abstract individual person’s understanding of the sign.

        New improved sign vehicles should be patent eligible. New referents and interpretents should not be, because their values and meanings are too varied and situational to ever fairly examine/enforce/adjudicate without too much arbitrary restriction on human freedom.

        If courts, juries, or examiners could identify sign vehicles reliably, we would be a step ahead, but the philosophy of semiotics is not going to realistically make it to courtroom and office procedure.

        My simple test of no human consumption of information reaches about the same result in a more understandable way.


          Your simple test just does not reach the proper legal basis.

          I have already told you this – and yet, you want to race around with your eyes clenched tight…


            And yet a diverse group of actual law professors and lawyers, with real names and careers, have said in now dozens of instances that the idea is interesting, likely better than what we have now, and within the realistic envelope of precedent and statue to implement. I’ll take that as a leg up on the curious obsessions of a sole nameless blog commenter, but others may see it differently.


              LOL – you most likely misconstrue “interesting” and have not addressed the rampant errors in your fantasies.

              It most definitely is NOT within precedent and statute to implement. Not by a long shot (and I would love to have those “names” of “real people” who have told you that.


              Well Mr. Snyder, where are those “real names”..?

              You trotted out the fallacy of “real names” as some type of vindication for the veracity of your fantasies, and I called you out for that B$.

              Let’s see those “real names” of those who state that your fantasy is “within the realistic envelope of precedent and statue to implement.

              Or maybe that was merely an empty and self-agrandizing boast…

              Yeah, thought so.


                Your vapidity is not quite matched by your aggression, but it’s a nice mix. It’s rich that you demand names but can’t use your own.

                As if I would repay the kindness of their reviews with the indiscretion of using their names without permission. You know some of the names, but what’s the point?

                The real point is that you are incapable of generating a coherent critique.

                Why not stipulate to my claims of good reviews and explain to this audience why statue and doctrine bar the approach?

                Instead, we will get a useless one-liner, and later, you will continue apace to lament the quality of discourse here.

                Go ahead, I dare you to make a detailed critique of the idea.

                Yea, I thought so too.

                 Hee is the paper (again)

                1. Read my post again Mr. Snyder – it was YOU making a big deal of “real names” (I don’t give such a rip).

                  But IF you are going to bank some type of “veracity” on “real names,” then you better be able to deliver those self same “real names” when you are called out for a fallacy such as “within the realistic envelope of precedent and statue to implement.

                  You now want to run and hide and not back up your shameful and empty boast. It was YOUR boast and I called you out for it: produce those “public names” or retract your worthless boast.

                  As for “cogent critique,” as I already posted, you had at least 20 substantive errors in your abstract alone.

                  Your “work” is a creative fantasy quite divorced from the realities of law and legal history. Veritably, a work of fiction, full of sound and fury, signifying nothing (with due respect to my pal William).

                2. Where are those names, O high JD mighty “real name” veracity?

                  You crow and now have to eat that crow.

                  Silence Dogood had nothing on you, eh?


          ” Yet consider the loading of newly featured maps into a marine chartplotter- do you have a new chart plotter?

          No, you don’t. ”

          That is only according to your point of view, one in which you view the machine and the configuration of the machine separately. It is just as valid to view them as a unit.

          Is a music box that plays “Yesterday” a different machine that one that plays “Revolution”? They are if you ordered one and got the other….


            New CD player when you put a new CD in Les? Does the chartplotter get a new SKU from the maker? When you have six kinds of maps, do you have six chartplotters for personal property tax purposes?

            Do you have a new weaving loom each time you load a new weaving pattern? Sure you do.


              …functionally related and the patent doctrine of inherency….

              Wolfgang Pauli’s “not even wrong” with the continued attempts to use examples outside of the Useful Arts.

              But you keep on wanting to peddle that canard (with your eyes clenched tight).

    4. 6.4

      Max asks: ““examining software patents would be akin to ‘examining’ the world’s literature to grant a copyright. It’s an insane undertaking”

      That thought had not occurred to me before.

      It makes sense to me. Where’s the flaw?”

      I say: We choose to learn to do patent searches for methods. We choose to learn to do patent searches for methods in this decade and do the other things, not because they are easy, but because they are hard; because that goal will serve to organize and measure the best of our energies and skills, because that challenge is one that we are willing to accept, one we are unwilling to postpone, and one we intend to win …”

  5. 5

    Dennis, claims are drafted, then prosecuted. Often the independent claims are the only claims actually discussed/amended because the dependent claims are automatically allowed. Thus, it is quite possible/probable even to have arguments/amendments made to the independent claims that are inconsistent with limitations in the dependent claims that were drafted at a time before the independent claims were prosecuted.

    I would also make another point. I have had many occasion trying to enforce “crown jewel” patents that have been rendered all but uselessly narrow by careless arguments by patent prosecutors.

    Prosecutors, you should be aware that your clients are taking notes, and even if they do not say a thing, the fact that they move on to other attorneys who are more careful would not be surprising.

    1. 5.1

      Ned, I agree on the seminal importance of writing good dependent claims. So does everybody over here in Europe. The careful thinking about the invention that claim drafting is based upon is the bare minimum, if you seriously expect the client to pay for professional P + P services.

      To get to be a European patent attorney you have to pass a slew of exam papers, each lasting several hours. One of them is called “Drafting”. Another is called “Amendment”. In each, there is just one Question so you deliver just one (lengthy, free text) Answer. The Pass Rate is rather meagre, each year, even though admission to the Paper is confined to those who have done (and proved) at least three years of prosecution at the EPO.

      Are there any exams like that for the US patent attorney profession? If not, perhaps there should be? After all, what is more “core activity” for a patent attorney than properly protecting the client’s invention?

      1. 5.1.1

        This I agree with and would go one step further: bar attorneys from litigation that also have not passed this type of stringent appreciation of the “form.”

        And of course, the cherry on top would be to require all judges hearing patent cases to have this capability and acumen.

        What a concept!


          anon, California ethic rules forbid an attorney representing a client without having actual experience in the field, and that includes experience in court. One has to second-chair for a while before one can actually practice law on one’s own.


            Great Ned – but misses the point that too many “litigators” pass themselves off as “patent attorneys” without having the requisite appreciation of beneficial side of having (and the rigors of obtaining) patents.

            And yes, I include in this group those who no longer wish to protect innovators and instead only focus on the litigation side – and in so doing “advocate” for “Infringer’s Rights.”


              Anon, in Cali, we debar people who say they have a specialty when they do not have the appropriate licenses or certifications.

      2. 5.1.2

        The patent bar test I took was just like the test you describe. Pass rate was 30%.

        I had only 1 years actual experience before I took the test. However, because one actually had to draft claims, amendments, and make arguments, few could actually pass the test without experience.

        Times have changed in America.


          Thanks for that Ned. What was the “patent bar” State or Federal? Who were the Examiners? If attorneys in private practice, did the pass rate resemble turning a tap on and off, varying from year to year depending on an assessment within the profession how many new entrants would be “right” for that particular year, depending on rising or falling levels of new work, and the numbers of senior attorneys going into retirement.

          Or, if you like, who was examining the Examiners? This was an issue that troubled Margaret Thatcher, one that drove her to shake up the professions in England.


            Max, the patent bar is Federal. I am not sure who grades the tests, but for a long time the pass rate was around 30%.

            As for Thatcher, what did she do?


              What did Maggie do? Apart from smashing the labour unions, she threw open the opportunity to practice drafting and prosecuting patent applications for gain, to everybody who fancied they could do it. Before Thatcher it was confined to those who had qualified by examination to be on the official Register of Patent Attorneys maintained by the UK Patent Office.

  6. 4

    Rather typically, this case came up to the Fed. Cir. on a stipulation of non-infringement after the D.C. claim construction.* I.e., presumably S.J. But if Martin’s 103 batting support for MM here is correct, it raises the interesting question as to why this suit did not get disposed of in an IPR, and which is cheaper, a D.C. that does a prompt Markman [instead of putting it off until all meters have run] or an IPR? Was this West Texas disposal so fast an IPR was not needed?

    *As a joke I’m tempted to ask if the plaintiff here got into a West Texas D.C. instead of East Texas by mistake?

  7. 3

    “Here, the patentees repeatedly described their invention both in the specification and the prosecution history as allowing “every instance” or “all instances” of a defined term to be identified and displayed as a link. Under these circumstances, the district court did not err in limiting the link claim terms as such.”

    There is a pretty big difference between an invention allowing something, and an invention requiring something, isn’t there?

    1. 3.1

      There is a pretty big difference between an invention allowing something, and an invention requiring something, isn’t there?

      Not when the only distinction over the prior art is (allegedly) “the allowing” functionality itself and the patentee describes that “allowing” functionality as central to the operation of the invention. In that case, the difference is pretty small.

      1. 3.1.1

        I’ve had this kind of situation before – it can help for the specification to explain why the “allowing” in and of itself may bring new utility, just by being available (i.e., even if/when not fully utilized).

  8. 2

    How can this ‘invention’ not be a) utterly abstract and b) obvious as of the priority date?

    As of the date, search indexes were widely used. Hypertext was widely used. Database driven websites were widely used. The idea of using hypertext for a search result in 1999 would be so trivial as to not be worth writing down or even noting as a product feature not inherent to the use of HTML markup language.

    This feature is not a “technical solution to a technical problem” because it does not improve the function of a computer. Its an organizing principle inherent in the functioning of the existing computer, database, and HTML platform.

    This pattern allows later patentees to control other people’s earlier products. Microsoft makes a patented database system that users can run with one table. Later, Enfish patents using one table with a database system; therefore many potential customers who would only want to run one table cannot use Microsoft’s database system to do so.

    We can’t grant patents for every new use of technology designed for the kinds of uses that are new. Every innovation can’t be a patentable invention. KSR is essentially a nice, but dead letter in real litigation because the CAFC won’t have it, just as they won’t have Alice or anything else they don’t want, except when they do.

    The claim differentiation doctrine is pointless scholasticism when the variations between embodiments and underlying claims are all utterly trivial and obvious variations in the use of some information.

    And the racket swings on.

    1. 2.1

      Martin –

      You are making at least two arguments that the claims are rejecable. One of your arguments is that the claimed method is old. If it is, show evidence and reject it or invalidate it under 102. I have no problem with that.

      As for “This feature is not a “technical solution to a technical problem” because it does not improve the function of a computer. Its an organizing principle inherent in the functioning of the existing computer, database, and HTML platform.”

      If it is new, then of course it improves the function of the computer…. at least as much as the self referential table of Edfish was an improvement to the function of the computer. Here, apparently, the improvement is in providing the ability to associate a link to a file with instances of a word or phrase.

      Before, computers didn’t do that. Add the invention and they do. That’s an improvement to the computer.

      As for your argument that the invention is somehow inherent in a list of components, one could have made that same argument with regard to a the shelves of a hardware store and the Wright flyer. The ability for lumber, rope and canvas to be assembled into a Wright Flyer was inherent in the components…. I suppose…but they weren’t going to configure themselves in the appropriate form were they….. not without the guiding hand of the inventors ….. or a lot of monkeys and a really long time.

      1. 2.1.1

        Les: If it is new, then of course it improves the function of the computer….

        Except that under the tiniest bit of pressure Les will end up walking this ridiculous statement back, just like he’s walked it back a zillion times before.

        Shall we bother with another demonstration. *yawn*

      2. 2.1.2

        they weren’t going to configure themselves in the appropriate form were they


        Because only software code “configures itself in the appropriate form” upon recitation of its function. It’s super special that way.

        In other news, ridiculous d.o.a. arguments comparing “wood” and “rope” to “a programmable computer” remain ridiculous and d.o.a., just as they were ten years ago when people like me began mocking them openly here and elsewhere.


          Could you interpret this for those of us who have no idea what you just said? That is, are you making some type of point? Are you arguing something?


            Any argument that does not meet his very limited view is ridiculous in his mind.

            Of course new software/code creates new functionality. Tesla downloaded software to their cars and the cars had new functionality:

            link to

            link to

            However, if you look into this “improves the functionality of a computer” in any great detail, you realize it’s a confusing morass of legal gar bage. What do you need in a claim to “improve the functionality of a computer”? It’s unknown.


          The fact that you are childish and resort to mocking when you have no argument, and have done so for a decade is hardly an argument.

          Though, that you admit is is something of a breakthrough…


          Doesn’t most software configure itself upon the recitation of its function? Or in other words any phosita can write the software if you recite the function to them.


            “Or in other words any phosita can write the software if you recite the function to them.”

            That was the thinking a while ago…until the whiners got involved and began arguing both sides of the fence; that all software is obvious and even inherent in the existence of the computer while at the same time discussion of the function was not sufficient to describe the invention……

            “real serious people,” these.

    2. 2.2

      Martin, I think the invention is directed a alias module where the module has addresses of files.

      At the time of the patent, this had to be old. In fact, any system that translates aliases into addresses would be covered if the addresses were of “files.” Now, that would cover the internet, would it not?

      1. 2.2.1

        In point of fact, this kind of “invention” points to the fact that same basic principles are invented time and again, with the inventors using different language to describe and claim what is in effect, the same thing. I can see why examining software patents is impossible.


          Ned examining software patents would be akin to ‘examining’ the world’s literature to grant a copyright. It’s an insane undertaking.

          Beyond that, in many many instances, software is a model of things in the real world- and models are easy to make and easy to change, so you have many variations of very similar models. If the real world thing is old, something in the essence of a software model of the old thing may be old too… see c.f. Alice.


            The only thing “akin” here is the aching from how you butcher both patent and copyright law.

            The two different sets of laws protect different aspects.


            Ned examining mechanical patent applications would be akin to ‘examining’ the world’s mechanical devices to grant a patent. It’s an insane undertaking.

            Ned examining electronics patent applications would be akin to ‘examining’ the world’s circuitry to grant a patent. It’s an insane undertaking.


          Right, and some inventors call a transistor an amplifier and others call it a BJT and others call it a FET and others call it an active component and others call it a switch and others call it a gate, OMG how do Examiner’s deal?

  9. 1

    Re: ““[T]he interested public has the right to rely on the inventor’s statements made during prosecution, without attempting to decipher whether the examiner relied on them, or how much weight they were given.” Fenner Invs., Ltd. v. Cellco P’ship, 778 F.3d 1320 (Fed. Cir. 2015).”
    That is a nice re-statement of what used to be called “file wrapper estoppel” and then “prosecution history estoppel.” [Which includes claim amendments as well as prosecution arguments.] But how does that square with other Fed. Cir. cases, especially In re Phillips, that talk about it in terms of “express disclaimer?” I suspect the former would be more appealing to the Supremes, so will we see this apparent difference end up there?

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