The Likely Indefiniteness of Coined Terms

by Dennis Crouch

AGIS v. Life360 (Fed. Cir. 2016)

In some ways the case here can be thought of as placing a higher definiteness burden on patentees when relying upon non-industry-standard language such as coined-terms in the claims. This result makes sense to me because coined-terms are most likely to be found at points of novelty within the claim — the points where precision in description is most important. 

The AGIS claims all require a “symbol generator” to track mobile phone user location.   See U.S. Patent Nos. 7,031,728 (claims 3 and 10) and 7,672,681 (claims 5 and 9).  During claim construction, the district court found the term lacked definiteness under 35 U.S.C. 112 ¶ 2 (now 112(b)) and, although it would seemingly be a foregone conclusion, the parties stipulated that the claims were therefore invalid.

On appeal, the Federal Circuit affirmed the indefiniteness finding under its strict means-plus-function approach. The appellate panel first held that the “symbol generator” element should properly be interpreted under 35 U.S.C. 112 ¶ 6 as claiming a means for performing a specified function without reciting (in the claims) the supporting structure.  Under 112 ¶ 6, means-plus-function claim elements are However, the statute requires that MPF claim elements be tightly construed to cover only “the corresponding structure . . . described in the specification and equivalents thereof.”  Further, the Federal Circuit has repeatedly held that MPF claim elements that are not supported by corresponding structure within the specification are indefinite and thus invalid.

Step 1: Traditionally, claim elements intended to be interpreted as means-plus-function elements include the word “means.”  Here, the word ‘means’ was not used – and that leads to the a rebuttable presumption 112 ¶ 6 does not apply.  Prior to 2015, this presumption was seen as a “strong” presumption.  However, in Williamson (2015), the en banc Federal Circuit eliminated the “strong” portion of the presumption and in favor of one that appears easily rebuttable.  Under Williamson, 112 ¶ 6 will apply when the proper construction of the words of the claim fail to provide sufficiently definite structure.  The standard is “whether the words of the claim are understood by person of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” If not, then 112 ¶ 6 applies.

Here, the court noted that the term “symbol generator” was a term coined for the purposes of the patent and thus, cannot be said to be already known to one of skill in the art. As such, the court fell-back on its textual analysis – finding that “the combination of the terms [symbol and generator] as used in the context of the relevant claim language suggests that it is simply an abstraction that describes the function being performed (i.e., the generation of symbols) [and]  by itself, does not identify a structure by its function.”  Of interest, at this stage, the court did not delve into the question of whether the specification had properly defined the term.  I believe that omission was a result of the fact that the specification did not so define the term (as discussed below).

Step 2: Once a term is defined as Means-Plus-Function, the court must then look to the specification to determine whether corresponding structure is available to define the term. Here, because the symbol generator is a computer implemented function, the court requires disclosure of an algorithm for performing the function. Here, that algorithm was not provided. Quoting Aristocrat Tech, the court wrote: “A patentee cannot claim a means for performing a specific function and subsequently disclose a ‘general purpose computer as the structure designed to perform that function” because this “amounts to pure functional claiming.'”

Coined Terms and Circular Reasoning: Looking at the specifications, the only mention of the term “symbol generator” was found in one of the two specifications and that specification stated only that “The CPU also includes a symbol generator for creating touch screen display symbols discussed herein.”

Because MPF analysis involves circular reasoning, it is difficult to know what the result would have been if the specification had sufficiently and particularly defined the symbol generator as an algorithmic module.  That structural definition certainly would have been enough to satisfy structure requirement of 112 ¶ 6.  However, if it was sufficient to satisfy 112 ¶ 6, then it likely would have been sufficient to ensure that the proper construction of the term was non-MPF.  This leads to the conclusion that, at least for coined-terms, the whole game is won or lost at step 1 from above.

 

 

63 thoughts on “The Likely Indefiniteness of Coined Terms

  1. 7

    Excellent job by Dennis, here, identifying one of the more interesting aspects of this lengthy opinion.

    The take-home lesson is an old one: if you’re going to throw some jargon into your claim or your specification, then you better define it. That’s doubly true when your jargon is some functionally claimed nonsense that you are relying on for patentability (and all the asserted claims here were junk, this deeply confused jury’s findings notwithstanding).

    But the more interesting issue is the noted by Tito in the comments below, regarding the CAFC’s ridiculous software patent luvvin activism:

    So the claim could have been saved by the simple expedient of including a 1-box flow chart that says: “for each user, display symbol corresponding to user after having retrieved that symbol from a memory based on data indicating that the user is on the network” or would it needed a 3-box flow chart that says: “(1) receive data indicative of user on network; (2) retrieve symbol corresponding to user; (3) display symbol on cell phone”?

    According to Judge Newman’s soon-to-be-erased opinion, a non-structural “structure” meeting 1112P6 can be satisfied by a structure-less method (i.e., “algorithm”) that takes any form whatsoever. All you need to do, according to Newman, is recite a single logical step which uses different words than the corresponding function recited in the claim. That qualifies as sufficient “structure” because — and only because — the CAFC wants to keep its entitled, expectant stakeholders happy until the last possible moment. If it needs to create a mythical playground to achieve that goal, it is (apparently) happy to oblige.

    And that, my friends, is why the current software patent regime is a farce. Don’t forget to kiss it goodbye.

    1. 6.1

      Gee, on the one hand these algorithms are life determining and vital and, on the other hand, they are abstract and junk.

      A particular algorithm is concrete. The act of telling someone to use an algorithm, without saying what the algorithm is, is abstract and junk.

      1. 6.1.1

        A particular algorithm is concrete.

        Great.

        This is where I remind you (again) about the MathS philosophy about the equivalencies as to algorithms.

  2. 5

    One might reflect that the good people of Salem, in the midst of their activities in those inglorious days, may have really thought that they were “doing good.”

    1. 5.1

      The racist white entitled and (surprise!) Republican lawmakers in North Carolina who passed a bunch of laws trying to discourage black people from voting surely also thought they were “doing good” — for themselves, anyway.

      Then those pesky facts got in the way. Boo hoo hoo!

      link to washingtonpost.com

      Other than reminding everyone of the grim history of misogyny in the United States, did you have some other p0int to make, “anon”?

      1. 5.1.1

        Not sure why you would think that I would identify with that group, Malcolm.

        You know, you are A LOT like 6 in this regards: thinking only that it is the other party….

        As for “reminding everyone of the grim history of misogyny” – which my comment is not geared to, so yes, Malcolm, there is another point to be had (it is already made – you just need to unclench your eyes to see it).

        1. 5.1.1.1

          Not sure why you would think that I would identify with that group

          Oh, you can figure it out, Sherlock. Just “unclench your eyes.” LOL

          there is another point to be had

          Are you sure? A point that requires bringing up some ignorami who felt that killing women for utterly fabricated reasons was “doing good”?

          Let’s hear the point, “anon.” I’m sure it’s very serious! Because you’re a very serious person. We have to pay attention to you!

          1. 5.1.1.1.1

            Yes Malcolm, I should have been more clear – I certainly can figure out that you like to paint anyone with an opinion different than yours with one big smear (not the first time that you have gotten my views wrong and lumped me with others that you smear – cohorts and all).

            I had meant that why would any normal person think that I would identify with that group. I certainly have not given any indication of such – as I have routinely blasted BOTH ends of the political spectrum. I have also told you otherwise as far as the pick for President goes – but those facts just don’t fit your script, so you just pretend that they do not exist. As usual.

            As far as Salem goes – you are aware that not just women were killed right? You sound nearly (not quite, as I don’t know of anyone all the way there) as misogynistic as 6. Try to think Malcolm – what other comments have used the word “witch”…?

            1. 5.1.1.1.1.1

              “You sound nearly (not quite, as I don’t know of anyone all the way there) as misogynistic as 6.”

              Everyone’s a misogynist to anon (except him lulz), even older white male savior MM, but anon doesn’t go in for all this PC nonsense! He’s agin it!

              1. 5.1.1.1.1.1.1

                You are confusing “PC” and actual definitions of real conditions.

                Mysogyny exists – quite apart from ANY notion of PC, and you don’t get to escape that definition by accusing someone of being PC.

                Eppur si muove….

                1. “actual definitions of real conditions.”

                  Lulz anon pulls out the ol “but but but definitions (that me and my femi nist buddies made up lol)”. Ok, and what “actual definition” is that PCta rd? Go ahead and find us a femin ist PC dictionary with this “actual definition” that fits even remotely what MM, the older white male savior of women, the poor and all minorties, said.

                  “Mysogyny exists – quite apart from ANY notion of PC, and you don’t get to escape that definition by accusing someone of being PC.”

                  Quite true anon, but on the other hand you and your PC femi nist buddies don’t get to expand the “definition” out to outer space without pus hback. Pu shback which, according to you, should be coming from you, as you have supposedly rejected this pc non s ense. Although in reality you’re only rejecting it hal vsies.

                2. The actual definition preceded PC 6.

                  Maybe you want to try to get the facts straight…

                  (And I am not expanding anything – your accusations simply miss; and miss badly.

            2. 5.1.1.1.1.2

              Still waiting for you to explain your awesome point. Why do we all need to “reflect” on the killing of women by some religious creeps?

              1. 5.1.1.1.1.2.1

                It was NOT “just women” – your focus still needs to leave behind your attempted accusation of mysogyny.

                I also provided you a clue: what else of late has been referenced as dealing with “witchcraft.”

                Come man – use a little critical thinking!

                1. attempted accusation of mysogyny.

                  LOL — wut? I didn’t accuse you of being misogynist.

                  You protest just a tad too much, I think (LOL — just a tad … LOLOLOLOLOLOLOL).

                  what else of late has been referenced as dealing with “witchcraft.

                  Referenced by whom? Must be some super serious person, all over the mainstream media. Please enlighten us, “anon.” After all, this is an important analogy you’re making. Right?

            3. 5.1.1.1.1.3

              I had meant that why would any normal person think that I would identify with that group.

              You happily hang out at and cheerlead for a Republican patent blog, reciting all their talking points.

              You’ve been a cheerleader for the worst attorney behavior in Texas, and the worst attorneys in Texas are Republicans.

              You recite the silliest Republican scripts habitually (e.g., your obsession with “ivory towers” and “c0mmies”).

              You’re kinda ign0rant, just like most Republicans.

              You’re ashamed to be a Republican, just like most Republicans.

              Heck, I could go on all day. But go ahead and tell everyone: you’re an “independent”! That’s sooooo c00l, “anon.” You’re a very serious person, you know.

      2. 5.1.2

        MM: it just flows out your ears. So, I (we) accuse you of being witch hunters obviously in the sense of irrational accusations and beliefs and you claim we are saying you are misogynist. You are just filth. You are unethical. You lie. You invoke hate speech. You are the definition of pornography on a blog. And you are a paid blogger.

  3. 4

    The decision observes that the issue is not whether IT people understand the separate and distinct terms “symbol” and “generator”. No, the issue is what the unique, special combination “symbol generator” means.

    Does that remind you of something? It does me.

    What is the meaning of that other combination, for patent lawyers known egregiously since the dawn of patent attorney time, namely “useful arts”. It too (and to a much higher degree than “symbol generator”) is a true combination, not a mere juxtaposition or collocation.

    As to the patent in suit here, as soon as a court comes to a view that a claim as without patentable merit, it will then start to look for a convenient tool, to knock it on the head and put it out of its misery. The Confirmation Bias will kick in.

    In a civil law jurisdiction, it doesn’t matter much, of course, which tool it uses. But in a land of Binding Precedent, it does.

    1. 4.1

      If only MaxDrei had a mind willing to understand….

      He posits a question that he knows the answer to…

      What is the meaning of that other combination, for patent lawyers known egregiously since the dawn of patent attorney time, namely “useful arts”. It too (and to a much higher degree than “symbol generator”) is a true combination, not a mere juxtaposition or collocation.

      MaxDrei knows that the US sovereign has already answered that question differently than the sovereign that he operates in and is familiar with.

      The US sovereign has answered that the Useful Arts is more than mere technical arts.

      Not liking that answer, MaxDrei asks again and again and again, hoping through mere repetition to change the answer into one that he will like.

      The shilling shall continue… The self-appointed “Winston Smith” is actually portraying himself as the opposite of who he really is, eagerly engaging in the activity that brought so much angst to the person who would attempt to drive against the flow.

    2. 4.2

      …but back to this specific case, …

      No, the issue is what the unique, special combination “symbol generator” means.

      perhaps any one of these (or others)….

      US Letters Patent 3,946,365 (1976)
      US Letters Patent 4,297,694 (1981)
      US Letters Patent 4,745,628 (1988)
      US Letters Patent 5,226,109 (1993)
      US Letters Patent 5,870,107 (1999)

      1. 4.2.1

        If these old patents actually describe symbol generator software or circuits, that could work for the indicated purpose of the rest of the claim, and had been “incorporated by reference” in the original subject spec, that would certainly seem more effective for enablement or indefiniteness avoidance than just adding a “black box” that merely said “generate or retrieve appropriate symbols” or the like?

        1. 4.2.1.1

          Oh, c’mon Paul. These are brilliant inn0vators. They don’t have to reinvent the wheel everytime they take old techn0logy and use it for its intended purpose.

          1. 4.2.1.1.1

            The only issue here was if the term lacked definiteness under 35 U.S.C. 112 ¶ 2 (now 112(b)). As usual in patent litigation 103 cannot even be raised before a full trial, since S.G. on 103 is rarely obtainable. This was a much cheaper and easier way to defeat the patent suit.
            Although filing a parallel IPR on 103 might be more appealing to you, in this case that could risk inconsistency by an inherent implication that the claim term was not indefinite.

  4. 3

    So the claim could have been saved by the simple expedient of including a 1-box flow chart that says: “for each user, display symbol corresponding to user after having retrieved that symbol from a memory based on data indicating that the user is on the network” or would it needed a 3-box flow chart that says: “(1) receive data indicative of user on network; (2) retrieve symbol corresponding to user; (3) display symbol on cell phone”? Or we could just break it into smaller pieces and make a 10-box flow chart with a loop and a return line to look more detailed.

    1. 3.1

      Nice comment. I don’t know the answer to your question Tino but am looking forward to hearing here from those that do.

    2. 3.2

      The problem is that, with software inventions, one really is not claiming structure, but a method. With a method, the means are not relevant, just that the act be done. With software, structure, the program itself, is irrelevant.

      1. 3.2.1

        one really is not claiming structure, but a method

        Actually the opposite.

        The execution of software is not software.

        Those seeking to confuse and conflate will eagerly do as Ned does here and seek to confuse this point.

        Those that understand that the execution of software is not software – those that understand this art – recognize that words sounding in action simply happen to be the clearest way of describing the manufacture known as software.

        Elsewhere Ned has remarked that Gene Quinn has stated that Mr. Quinn had been advising people not to make any “method claims” in the set of claims for inventions based in software.

        That’s an interesting (but ultimately fruitless) endeavor.

        NOT because – as Ned attempts to confuse here – that somehow “the invention” is merely a method, but because the invention can perfectly NOT be a method (remember, it is the applicant and not the court that defines what the invention is – per the words of Congress), but instead, it is the very conflation and confusion that Ned seeks to put in place with the obfuscation because of “shiny” and because words sounding in action happen to be the clearest way of description.

        This also is reflected in Malcolm’s nigh constant efforts to elevate one optional form of claim (the “objective physical structure”) to be more than just a mere option.

        Is it really any coincidence that these two self-professed “guardians” have made it clear that they do not wish to have software have its natural – and full – extent of protection under the patent laws written by Congress?

        Time and again (and again, and again, and again) these two will not treat actual points of law and fact in any sense of inte11ectual honesty. It is only through the repeated mouthings of their script that they wish to shout down (internet style) any actual consideration of the counterpoints to their script that are raised and presented.

        The (drum) beat goes on…..

        1. 3.2.1.1

          words sounding in action

          Totally different from method steps!

          Yes, f0lks, he’s a deep serious person.

          1. 3.2.1.1.1

            AH yes, the poker tell of “deep serious” – which means that Malcolm has absolutely nothing on point to say on the merits.

            How is your understanding of what the word “optional” coming along, Malcolm?

            1. 3.2.1.1.1.1

              Oh, don’t try to change the subject, “anon.”

              I want to hear more about these “words sounding in action” that are totally not method steps. Give us a few examples, at least, so we know what you’re talking about. Shouldn’t be too hard for you, right? After all, you’re a very serious person. You’ve thought a lot about this stuff.

              1. 3.2.1.1.1.1.1

                In the contest of relying upon its function to define a thing, I gather from that deeply serious commentator anon (Dogberry) that:

                “words sounding in action simply happen to be the clearest way of describing the manufacture known as software. ”

                The pretentious and obfuscatory word string that Dogberry has borrowed from some academic (or professional patent litigator), the poetic “words sounding in action”, sounds somehow learned and full of insight, doesn’t it? But that’s all. Its meaning is not clear at all (let alone being simply the best, most fit for definitional purposes).

                But maybe that’s his point. After all, the thing Dogberry (and his ilk) love most is a thread that goes on for ever.

                1. Another grade of F. U really need to do better than name calling and false characterizations MaxDrei.

                  Go on forever? When I am the one constantly trying to bring people to be on point (and for which you deign yourself judge and decide to change my moniker).

                  No MaxDrei – what “goes on forever” is the endless shilling that refuses to acknowledge and incorporate the counterpoints presented.

                  Sort of like your very own “do it the EPO way.”

                  There is nothing pretentious OR obfuscatory about “words sounding in action.”

                  There is no reason for YOU to try to spin this direct and simple concept into something mysterious or sinister. Malcolm’s “want to her more” is nothing but claptrap as revealed by his (once again) use of the poker tell of “very serious.”

                  Malcolm, since “objective physical structure” is an option – and we both know that you yourself are “serious” enough to realize what the word “option” means, what other types of words are there that once can choose from outside of “objective physical structure”…? Since option means there is a choice, and choice means there is more than one type, let’s see you show that you are doing more than just trying to tr011 me with you providing at least one other of these choices of claim format. And yes, do note that this option is WITHIN each statutory class, so do not try to weasel out with claim form of different classes.

                  Then revisit Chakrabarty and see if you can figure out what it means for an invention to fit “in at least one class

                  Let’s see more from you than your typical empty ad hominem. Here’s a chance for you to show your “knowledge” of patent law.

                2. Does anybody know what “anon” is talking about? I asked him for examples of (LOL) “words sounding in action” and he seems to have l0st his mind.

                  There are “options”, he tells us. Gee, that’s nice. Really deep, really serious stuff.

                  LOL

        2. 3.2.1.2

          “one really is not claiming structure, but a method”

          Actually the opposite.

          The execution of software is not software.

          Can you expand on this comment, anon? I’m not sure how your response addresses his statement that a system claim in the software arts is actually claiming a method (when functionally claimed). When you say “the execution of software is not software”, are you analogizing to the “structure” or “method” in his statement, or both?

          1. 3.2.1.2.1

            Ned wants to treat the “thing” that is software as the execution of that “thing,” whereby the actual “thing” is somehow not present and the change (the real change to a machine based on the patent concept of inherency) is somehow present “by magic.”

            You will note that this aligns with his typical half-“truth” “logic” of “just using a machine” and the plain fact that he (purposefully) always omits the required first changing of the machine by configuring that machine with the software that he wants to “just use.”

          2. 3.2.1.2.2

            Abstract iDan, that I considered apparatus, CRM, and system claims to software all to be method claims has now been held not to be the case. If one claims a module that does X, that module must be described — at least to the extent of an algorithm.

            My point has always been this: the invention in software is in the method, the functions, not in the software implementation. They have been treated that way for a long time. But, it seems, the worm has turned.

            1. 3.2.1.2.2.1

              I would tend to agree with you, Ned, but does this really change anything? Specifically:
              If one claims a module that does X, that module must be described — at least to the extent of an algorithm.

              Conversely, if one claims a method for doing X, that method must be described, at least to the extent of an algorithm.

              Is the distinction you’re making that “X” may not be the key point of the claim, and that now, all software modules in the system claim need to be described with an algorithm, including mere “retrieval modules, for retrieving data” (for example)?

              1. 3.2.1.2.2.1.1

                Abstract, with a method, the means are not relevant, just that the act be done. (That is, of course, unless the method claim does not claim an act but doing something to achieve a desired result, in which case the claim term is covered by 112(f)).

                Thus, in claiming, “displaying a symbol comprising certain data,” the claim would literally cover that without having to have “corresponding structure” that demonstrates “how” to display the symbol having that data. Certainly the claim would not be limited to the particular code (or algorithm) for implementing that method step.

                1. Thus, in claiming, “displaying a symbol comprising certain data,” the claim would literally cover that without having to have “corresponding structure” that demonstrates “how” to display the symbol having that data. Certainly the claim would not be limited to the particular code (or algorithm) for implementing that method step.

                  The claim would not be so limited, but without specific detail in the specification of “how”, the claim would not be enabled.

                  Additionally, at least under current 101 jurisprudence, such a claim would be considered directed to an abstract idea and therefore ineligible. Hence, the statement, “with a method, the means are not relevant, just that the act be done” may no longer be true for inventions in the computing arts, at least.

                2. Abstract, I disagree. Description of a displaying data on a computer screen is enabled.

                  Sure, but if that’s all you have to the claim – “displaying data on a computer screen”, then it’s likely going to be considered ineligible under the current 101 analysis, and it’s certainly anticipated. How to calculate that data may be something interesting and novel, but merely displaying it? No.

      2. 3.2.2

        Ned, your comments are unethical. You know as well as I do that these “software” inventions define a structure of a machine as well.

        You are intentionally providing misinformation.

        1. 3.2.2.1

          Night, they can — but the code has to be described. Do you agree?

          Flow charts. Algorithms.

          But where is the invention? In what the software does or the particular code?

          1. 3.2.2.1.1

            Ned, you know as well as I do that there is no requirement of an “invention.” That the claim must be rendered obvious under 103. That there are many, many solutions to the problems that are recited in the claims and that the functional language refers to all those known solutions. I even posted a direct quote from a recent textbook used at most colleges recently that said exactly this about computer science solutions.

            And, you know as well as I do that a combination of old elements can be non-obvious.

            1. 3.2.2.1.1.1

              And, you know as well as I do that a combination of old elements can be non-obvious.

              Of course he does Night Writer.

              But he starts being inte11ectually honest about that, then he would recognize that his attempt to parse claims and apply some type of 101 analysis to parts of claims would have to end.

              He just does not want to stop that script.

              So instead, he chooses to employ the fallacy as best exemplified by the Big Box of protons, neutrons, and electrons (of course, each of these, being fundamental particles are not eligible, but that ALL of the “hard-good items” that he so loves are nothing at all but configurations of these non-eligible items). Take his own attempted “logic” and feed that “parse down to ineligible pieces” logic and shove it down his throat.

            2. 3.2.2.1.1.2

              Night, there is a requirement for invention. Take a look at Alice or today’s Electric Power Group case.

              We are far afield. The point here is that when claim structure, it must be described.

              1. 3.2.2.1.1.2.1

                Ned – Congress acted in 1952 to explicitly change what the Supreme Court had been doing with “invention” and instead carved out of the former single paragraph the new section of obviousness.

                All that we are seeing is just the flow down from the Supreme Court and that Court’s refusal to kick its “power” habit.

                1. anon, NOT according to Federico. 103 is a codification of Hotchkiss v. Greenwood, etc. Novelty.

                  Anon, invention requires more than newness. It requires a the creation or improvement of a machine, etc. Songs can be new. But inventions are particular to new or improved machines, etc.

                  As well, inventions are more than mere ideas. They require more than a plan, a suggestion that something be done. They require one to specify how to accomplish the result, and that the claims be limited to the invention, not the idea in the abstract.

                  For a very long time the Federal Circuit strayed from very well-established principles in patent law. We know why they did so, and who the main instigator of the revolution was.

                2. Your “version” of Federico is not correct.

                  You spout “mere codification” as if ALL Supreme Court anti-patent rulings were just hunky-dory.

                  That is simply wrong and attempts to rewrite history and the very reason WHY Congress acted to rebuff the Court.

          2. 3.2.2.1.2

            The invention is “where” the applicant states it is to be.

            PER THE WORDS OF CONGRESS

            It is up to the applicant to choose how the applicant sets the invention.

            It is up to the applicant to choose WHICH statutory class the invention is to be recognized in.

            ALL of this “where” and “directed to” and “gist” is judicial muckery and plainly outside of the direct words of Congress and to whom Congress gave the power to describe the invention.

            When in doubt – read the statute.

  5. 2

    Had this been a method claim, the structure would have been irrelevant. Simply the act of displaying a symbol having certain characteristics or data would have been all that would have been required.

    The result here seems to suggest that the day of claiming software as machines or systems is all but over because normally the invention does not lie in the how a function is generated, only that the function be performed.

    I have long argued that software claimed as a machine are simply method claims anyway. But this case tells me that the courts are not going to treat them as method claims, but that they will also require some demonstration of code or algorithm of how a function is generated if the software itself is being claimed even where the invention does not lie in the how something is done, but only that it be done, and even though a description of what the software is to do fully enables any programmer to do it.

    I assume that this case would also apply to Beauregard claims.

    Over at Gene’s site, Gene has been arguing of late that method claims have been killing software patents when included in the claim set because even the apparatus claims are treated as method claims. This case should give him pause, if not dread.

      1. 2.1.1

        Night, I tend to agree here. But if one is claiming software as opposed to what software does, one must describe it just as one must describe a circuit or mechanical structure. That is the problem here.

        But we all know that the invention is in the method, not the software structure.

        1. 2.1.1.1

          one must describe a circuit or mechanical structure

          Except not.

          Not even close Ned.

          1. 2.1.1.1.1

            Except so, unless you can explain why you possess the breadth of the function. Hindsight analysis makes it really clear – If you invented the bow and claimed “a machine that fires projectiles” and someone later showed you a gun, it’d be pretty clear that the patentee didn’t possess the full range of projectile machines.

            You can’t jump to any rung on your ladders of abstraction and pass 112a/b. To show possession you have to prove that each inductive act is irrelevant to the possession of the inventive subject matter.

            1. 2.1.1.1.1.1

              No one is saying “jump to any rung” – and at the same time, your view of all ladders having only one ring is clearly wrong.

    1. 2.2

      Ned,

      You do realize that the “directed to” and “Gisting” that is going on is effectively removing the words of Congress by eliminating the statutory categories of 101, right?

      The extreme of your anti-nominalism has NO limits.

      You cannot be “just a little bit pregnant” and once unleashed (as has been done by the Court), once you remove the meaning of the statutory category by playing the “invention is really something other than what is actually claimed” game (which, by the way, per the words of Congress is NOT up to the judicial branch to decide, but rather, is solely up to the inventor to decide), there is no bottom to the rabbit hole***. Or as I have stated otherwise: the Court just did not set a limit to the “Gist/Abstract” sword. If you think otherwise, please, please, please, show me where the Court sets that limit.

      ***Leastwise no limit, or no bottom of a rabbit hole as designated by the law as written by Congress.

    2. 2.3

      But this case tells me that the courts are not going to treat them as method claims, but that they will also require some demonstration of code or algorithm of how a function is generated if the software itself is being claimed even where the invention does not lie in the how something is done, but only that it be done, and even though a description of what the software is to do fully enables any programmer to do it.

      All invention lies in how something is done Ned. You can’t invent a result, you have to invent the manner of achieving the result. It doesn’t matter if people are enabled to achieve the result in *some manner* because the claim is limited (either under 112, 2nd in view of 6th or under 112, 1st WD) to what this inventor created.

      Let me give you an example: Assume google maps is the first computer-based map driving directions. Assume your inventor invents google maps. One of the claim features (whether a method or software) is “estimate a travel time for a driving route.” It doesn’t matter that everyone is enabled to estimate the amount of time it takes to get somewhere in some manner. The question is what this guy invented, which requires a disclosure (and a claim limited to) the particular algorithm or equation with all of the variables that lead to the resultant time. Google maps could not claim yahoo’s or apple’s or mapquest’s estimation algorithms, because google did not think of those algorithms and because a claim to “estimation” absent a limitation to the manner of estimation is a claim to an abstract act.

      You can have concrete method steps and abstract/functional abstract method steps just like you can with software code. Just like a computer cannot “estimate,” it can only apply an equation which results in an estimation, claiming a method step than embraces a wide array of unknown acts which may or may not achieve a similar result is a step-for method step. You make it sound like “step for” can’t exist.

  6. 1

    Maybe Aristocrat Tech needs to be updated per what the Supreme Court thinks a “general purpose computer” can do….

    You know, the whole goose and gander thing…

    ;-)

    1. 1.1

      anon, it looks like your favorite guy, Judge Rich, has, by giving is 112(6), really thrown an monkey wrench into patent law. I really don’t know how we are to recover except by repealing 112(6).

      1. 1.1.1

        Last I checked Ned, it was Congress that gave us 112(6).

        Also – as I have repeatedly pointed out, the ability to use words sounding in action is just not constrained to 112(6).

        I have given you Congressional records, the words of your own preferred 1952 assistant Federico, and even judicial cases to show you that words of action are perfectly allowed by 112 outside of 112(6). Your own personal history (with the help of your friend Stern no less) shows that you botched and lost a 112(6) case.

        It is beyond clear that you are not faithfully discussing the actual law and instead merely seek to continue your personal Windmill chase on this topic.

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