BRI: Even under BRI Means Plus Function Claims Limited by Structure Recited in Specification

by Dennis Crouch

IPCom v. HTC (Fed. Cir. 2017)

After IPCom sued HTC for infringing its U.S. Patent No. 6,879,830, HTC countered with its PTO request for inter partes reexamination of the asserted claims.  While the AIA Trials (i.e. inter partes reviews) are heard directly by a PTAB panel, reexaminations are first decided by a patent examiner before being appealed to the PTAB.  Here, the examiner initially sided with the patentee – finding the challenged claims patentable.  However, the Board issued a new grounds of rejection for most of the claims.  That obviousness rejection was later sustained (even after a claim amendment).  On appeal, the Federal Circuit has largely affirmed, but reversed a portion of the claim construction — this time the limits of means-plus-function claiming has helped the patentee.

One limitation found in challenged claim 1 requires: an arrangement for reactivating the link with the first base station if the handover is unsuccessful.

Although not written in means-plus-function language, the nonce word “an arrangement for” without further recited structure easily qualifies under 35 U.S.C. 112 p6.

Section 112 p6 (now 112(f)): An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

It turns out that the Federal Circuit already construed this very phrase as means-plus-function in its 2012 decision involving the same patent. HTC Corp. v. IPCom GmbH & Co., 667 F.3d 1270 (Fed. Cir. 2012).  However, when conducting its broadest reasonable construction of the claim limitation, the PTAB failed to particularly tie the MPF limitation to the structure (here algorithm) recited in the specification.  Rather, for the PTAB apparently any arrangement for achieving the stated function would fall within the claim scope.  On appeal, the Federal Circuit rejected the PTAB approach and instead held that a means plus function claim term is limited by the scope of the structural recitations found in the specification – even under the PTO’s broadest reasonable interpretation.

The decision here is not new law but instead parallels the important MPF case of In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc).  In Donaldson, the PTO argued that the BRI construction of a means-plus-function claim term should encompass “any means capable of performing the recited function.”  On appeal, the en banc Federal Circuit rejected that argument – holding instead that even under BRI, construction of a means-plus-function limitation “must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof.”

Like Donaldson, the Board here impermissibly treated the means-plus-function limitation in its patentability analysis as if it were a purely functional limitation.

On remand, the PTAB will need to reevaluate the scope of the claims and then determine whether the recited prior art discloses the requisite particulars.

[DECISION]

 

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

151 thoughts on “BRI: Even under BRI Means Plus Function Claims Limited by Structure Recited in Specification

  1. Paul Morgan: a 112(6) M/F claim element cannot have the same equivalents as other types of claim elements because that statute limits it to equivalents of the M/F specification element, not the claim element.

    Let’s try not to be so pedantic. The elements recited in the specification to support 112(6) are “claim elements”. They are just recited indirectly, which is the point of 112(6) (i.e., permitting a shorthand form of claiming). You still can’t claim function at the point of novelty. That’s why the structures responsible for the function recited in a 112(6) claim must be in the spec. Those indirectly recited structures are legally considered to be part of the claim (you can’t determine claim scope without them) and they should be treated exactly as structures that are directly recited in the claim.

    1. Legal pedantics can have a lot more judicial consequences than personal opinions. 112(6) “equivalents” are provided for but limited by statute, while DOE for other claim elements is not.

      1. 112(6) “equivalents” are provided for but limited by statute, while DOE for other claim elements is not.

        The pedanticism I am objecting to is the idea that the 112(6) structures that are recited in the specification are not part of the claim. Those structures are certainly part of the claim. 112(6) merely makes it clear that claim-shortening language is available to the drafter.

        112(6) also doesn’t require that you recite “equivalents” to the structures that you do choose to recite in the specification (hence, the availability of 112(6) “equivalents” is not really a “limiting” aspect of the statute but an indication that 112(6) is not limiting in that regard). In other words, “equivalents” are mentioned in the statute to make it clear that there is some scope available beyond the specific structures that are recited. There are no other limitations with respect to 112(6) “equivalents” (in the statute, anyway).

        The specific question being entertained below was whether the determination of the identify of 112(6) “equivalents” is an infringement issue or a claim construction issue. The statute certainly suggests that the determination of 112(6) “equivalents” is a claim construction issue. But construing a 112(6) claim doesn’t mean that there can be no subsequent equitable analysis for infringement under the doctrine of equivalents which has its own peculiarities and limitations.

        1. I think his point would have been more strongly made with a direct question to you regarding asking you for a citation to your “notion” of functionality “at the point of novelty.”

          As to what YOU are saying as to MPF and “claim form ease,” I have already pointed out that exact notion.

          1. …and perhaps worth noting, in those other regards, you appear to be in total agreement with me!

        2. MM, I think this is right. Alappat thought that MPF equivalents was part of the claim for validity purposes. This could be only if it were not exclusively only a matter of proof of infringement.

          1. Pardon potential (re)post:

            This could be only if it were not exclusively only a matter of proof of infringement.

            As ever, Ned, your view of Alappat remains most odd.

            Then again, it is known that you have a vested interest against the proper understanding of that case.

  2. My son Donald did a good job last night. He was open, transparent and innocent. This is the greatest Witch Hunt in political history. Sad!

    The greatest? I guess this proves that Mango Hairball isn’t paying attention to what’s going on in patent law. Right, Night Wiper?

    LOL

    1. This relates to BRI or MPF, how?

  3. The blogs resident Drumpfist:

    The thing I’m most concerned about obviously is like where you have… a giant pool of industry insiders who all get [something] but everyone else outside their little pool does not.

    Yes, folks, he’s really concerned about well-heeled entitled “insiders” manipulating the system for their own advantage, to the detriment of everyone else.

    Sure he is!

    LOLOLOLOLOLOLOLOLOLOL

    It’s okay, 6: I won’t tell your chatroom bros.

    1. Malcolm IS the blog’s Trump.

    2. I’m not for systematic advantages for big corp MM. I barely even think the gimme we gave them in 103(c) in the old system was sound. But I do understand the thinking behind it.

  4. Highways may see lanes dedicated to autonomous cars. San Jose officials already are considering a driverless lane leading to the city’s airport.

    LOL

    Because the “tech” these l 0 w lifes are peddling just doesn’t work.

    But let’s hear the maximalists defend this junk. After all, unlike their usual fever dreams, this is an actual example of a massive corporate grift. Odd that they choose to keep their otherwise endless flapping gums quiet about this.

  5. Quick question about assignments/”being the applicant when you’re a corporation at the PTO”. Can it be such that there is more than one assignee corporation or “applicant corporation” on a patent? It seems like I’m seeing this happen, and it’ll be handing out more and more “exclusions for the purpose of prior art” as the number of “assignees/corp applicants” increases on documents.

    1. 6, you ask, can there be more than one Assignee? Unable to answer for the USA but everywhere else in the world it is totally banal and unremarkable for there to be joint Applicants. See, for example the PCT Request form.

      What would be the public policy objective, for a prohibition on joint ownership of a patent application? I know of none.

      1. Yeah that’s what I figured. However, in the US we’re now giving people a break on commonly assigned prior art in the “exclusions”. Kinda seems weird to allow people to just go ahead and assign to/apply for the patent from multiple corps and let all those corps then get the exclusion just by having part of the assignment to them, or being “part” of the applying corp.

        But that’s interesting to know from EU.

        1. 6, you pick on an aspect of the law of patentability that has long interested me and which has been looked at recently by the Big 5 Patent Office Group at its Tegernsee Seminar Series. Japan is like the USA, in gracing earlier filings of the Applicant itself, excising them from the state of the art for patentability. Conversely, the 1973 EPC makes no such exclusion.

          I think the exclusion is increasingly unworkable. So did the drafters of the EPC. So do you, it seems.

          How do the Japanese justify their exclusion. They say it is too difficult for a patent attorney to draft with novelty over all the earlier filings of the corporate Applicant. I think that line is nonsense. Bovine excrement, if you like.

          1. That is a weird justification from JP. If their argument is that it takes away too much of their scope to have to draft around the recent work of the applicant (which wasn’t prior published or whatever) then I can understand the argument a bit better. That I think is the justification for the one in our land. It’s just “we’ll give them a break because we want to encourage them to file, not discourage them to file (the earlier filed app)”.

            Which is fine by me if it is the actual corp that made both of the inventions so to speak. But when it comes to assignments mmmm, idk about that.

            1. Well, 6, your law perhaps made sense when only Inventors could apply. But as you say, now that you can have as “Applicant” a list of as many corporations as you like, it doesnt any longer, does it.

              Imagine a patent pool. ETSI, for example. Pool members agree that all “Standards Essential” patents shall be owned by all pool members, jointly. A farce, right.

              1. There is no farce if you remember that the US system was explicitly designed to promote maximum alienability of property.

                1. I’m not sure that alienability of property has much to do with prior art being excluded being a farce.

                  Unless you’re saying that the people in the pool would want the patent to be freely alienable amongst the people in the pool.

                  Still, even that would have an aura of bs about it.

                2. Property can change ownership.

                  Benefits of property transfer with the ownership.

                  That’s pretty much the extent of the comment.

              2. Idk max. It might kind of. But I don’t think the congress likely fully thought through the ramifications of that, or considered it likely that a bunch of corps would all of a sudden start acting like they’re all the applicants/assigning patents to them all.

              3. The thing I’m most concerned about obviously is like where you have the situation you’re talking about where there is a giant pool of industry insiders who all get to bullet proof their patents against each other’s unpublished prior art but everyone else outside their little pool does not.

                1. That does not happen, because joint ownership of patents in the U.S. creates serious legal and other problems that require extensive contractual agreements to avoid. To many to spell out here.

                2. Setting aside for a minute formal joint ownership (but not forgetting corporate patent pooling), bear in mind, 6, that the USA (alone in all the world) allows secret prior art to be used for obviousness attacks. Everywhere else, it is citable only for novelty.

                  For corporate filers laying down a carpet of filings, and even more so for start-ups, it is relatively easy to ensure that, with each successive filing, you claim only what’s novel over all your own earlier filings. So, under the EPC, no problem, least of all for start ups.

                  But for you as an individual inventor, trying to get a patent in the USA, those speedily filed corporate carpets are very effective, as obviousness attacks, to block your progress to issue. Meanwhile, the carpets will become, upon issue, an impenetratable intertwined dense thicket of duly issued patents.

                  One might suggest it is harder under the patent law of the USA than anywhere else in the world for a start up to acquire the patents needed to keep the quick-filing establishment at bay?

                  There is a good reason why ROW excludes secret prior art from use to prove obviousness.

                3. 6 – I haven’t studied the issue, but I note that back in the 103(c) days, for the exclusion to kick in the prior art had to be owned (or under obligation to be owned by the SAME person. Might it be that the new rules would require that the secret prior art be owned by the SAME set (i.e., not just a subset) of evil corporations as the application?

                4. The return of the “EPO objective handing by PHOSITA” line by MaxDrei reminds me that MaxDrei never finished explaining the peculiarities of “objective” application (real person versus legal construct).

                  More mud for the waters here I suppose…

          2. 6 and Max, don’t forget that these few remaining “grace periods” for commonly owned or joint research applications are quite limited as to time and scope. As for their rationales, they include being able to file early to protect an initial concept and still have some time to do R&D to better define the invention and its scope and alternatives in later filings before the published initial application becomes unavoidable prior art. Pharmaceuticals are a particular example.

          3. max,

            Didn’t theEPO end an experiment somewhat recently related to “self-collision” and the aspect of divisionals?

    2. 6, there are increasing numbers of university joint research projects with corporations, and too many universities foolishly insist on “joint ownership” of patents. That might account for what you are observing?
      [But if prior art was being avoided improperly just by that, the patent would not not likely survive attempted enforcement – it would be too easy to detect with discovery.]

      1. Well it certainly isn’t “improperly” being avoided, it is lawfully being avoided I would think.

      2. Max and 6, I think you are also overlooking U.S. judicially created “obviousness type double patenting” application rejections [and patent defenses]. It has no grace period and no applicable “secret” [before co-owned application publication] prior art exception.

  6. Question: is the determination of means-plus-function equivalents one for claim construction or for infringement?

    1. Was that a twist on White v. Dunbar?

      1. Paul, you sense the problem.

        1. No, I nosed the problem.

    2. Glad you asked that question Ned. Prompted, was it, by the discussion below, at 7.2.1?

      When I think of 112(6) and M+F and the DoE (Les, thanks and yes), I imagine concentric circles of scope.

      The innermost circle is the embodiment described in the specification (say, WJ, water jet cutting means). The next circle encircles the class “WJ + WJ equivalents”. It is bigger because it includes cutters other than WJ cutters. Perhaps laser cutters. I mean, the class WJ+E.

      Then comes another concentric circle, yet wider. It embraces the class (WJ+E) +E, namely, all those cutters that are equivalent to the (WJ+E) element recited in the claim. So that would embrace any cutter that is “equivalent” to a whole class of cutters that includes WJ cutters, laser cutters and so on.

      1. Max, I do not disagree with ultimate scope having three rings. But is MPF equivalents part of claim construction? This actually is a very important issue.

      2. Max, a 112(6) M/F claim element cannot have the same equivalents as other types of claim elements because that statute limits it to equivalents of the M/F specification element, not the claim element.
        [Not that there is much left of U.S. DOE claim expansion in general.]

    3. Ned,

      How is not for both?

  7. The problem with this it must contain an algorithm nonsense is that the standard is supposed to be one of enablement and how the spec would be read by one skilled in the art.

    I have extensive experience in algorithms at an academic level. Years. And, one skilled in the art does not need an express algorithm. The disclosure can discuss changes to existing algorithms the disclosure can explain a few key points and one skilled in the art can fill in the rest.

    What the CAFC has done has — again– weakened patents by creating an artificial requirement on a specification that is inconsistent with the Patent Act. Again, invalidating many 1,000’s of patents by judicial fiat. Shameful.

    1. Frankly, if you don’t think the requirement for their to be an express algorithm in the specification to be outrageous, then you are either a very ignorant person or a judicial activist with no ethics.

      The test is what is enabled to person skilled in the art. Not what a judge at the CAFC wants to see. It is outrageous.

      1. Night, consider the method

        Steps X, Y, then Z.

        Each step requires an Act.

        Does the claim invoke 112(f)?

        1. That would depend as well you know.

      2. If actual software is provided in the spec for enablement or a M/F element there is no need for an algorithm.

        1. What do you mean by actual software? Software without hardware cannot be structure for a M+F limitation, and simply reciting software on hardware without describing how the software works isn’t considered adequate disclosure.

          In other words, there is need for an algorithm.

    2. NW, oddly, once you enter the MPF domain, what one skilled in the art does or does not know is immaterial. I have yet to understand the reasoning behind that, but that’s the way it is.

      1. Not exactly PatentBob.

        Once entering the MPF domain (as a claim option), you do enter a more limited domain of what is actually written in the specification (and equivalents), but you still need “person having ordinary skill in the art” AND what they know to evaluate the metes and bounds of the items IN the specification and what those items “mean.”

        It is a bit like the “turtles all the way down” conundrum of an applicant including a defintion section to define some words, but now having the focus switch to figuring out what the words in the definition section mean (or do not mean). The “turtles” aspect is that one can envision (since words are being used to define other words) that a definition section for words in the definition section could easily be a “next iteration” – perhaps followed by (again, because words have to be used in the second definition section) yet another definition section (3rd) for the definition section (2nd) of the definition section (1st).

        Is it too early for someone to hand me a screwdriver***?

        *** link to lostsaloon.com

  8. Eh, more of the same. Controlled by Aristocrat and of course the Spec contains no particular algorithm. Here is exactly what the Spec says: “The link between BS 1 and the MS can be re-established by means of simple acknowledge message 409.”

    Under the Aristocrat standard, that isn’t an algorithm. Instead, it’s drawing upon knowledge outside of the Spec itself (assuming that one of skill can use the acknowledge message in some manner to achieve the goal rather than explaining how it is used). But note why this case is up at all:

    “an arrangement for reactivating the link” is being used, as most functional language is, to be both overbroad of the posited invention and intentionally more vague than the concrete act in an effort to trick the office into granting patentability. By this I mean that if the claim included the actual words of the Spec (“establish the link using an acknowledge message”), which is all the means-plus interpretation calls to anyway, the Examiner would clearly have found that to be known, because that is how all links are established. That’s how the first link was established. The functional language is meant to hide the well-known (and which the Spec relies upon outside knowledge for enablement of) concrete act. The functional language also attempts to be overbroad, because if it is not construed in means-plus it covers other mechanisms other than the simply acknowledgment posited.

    Note also that by using the functional result, the claim shifts focus from the actual novelty of the invention (simple storing of information the system already has and essentially delaying the erasure of that stored information) which is clearly obvious, to a result which is so arguably not obvious that it confused the Office and allowed for the original patenting. This guy isn’t claiming to have invented establishing communication after authentication, so he also didn’t invent the re-establishing step because IT IS THE SAME ACT. If you cut out the functional language and hold the invention to the alleged novelty – the storing of authentication for later use – you get the right result to begin with.

    It’s not clear to me why this is tolerated at the Office level, especially given the command that an applicant’s right to be their own scrivener does not extend to indefiniteness or a lack of notice. In other words, even if the Spec did contain a particular algorithm, when that algorithm is the same concrete acts the art already knows and can be easily explained (the Spec, after all, explains it in a single sentence) the usage of the functional language creates ambiguity for no legitimate purpose. Under Nautilus v. Biosig, that is not a reasonable clarity.

    1. Also just to respond to a handful of issues here – Good commentary from Ned and Paul as usual, though I note that there is a lack of commentary (though hopefully not a lack of understanding) that in virtually all cases the disclosure standard for MPF is a necessary-but-not-sufficient disclosure for a non-MPF. In other words, if this limitation was construed outside of means-plus, and the reestablish step was an alleged novelty, there would need to be the algorithm sufficient to support a MPF limitation PLUS a disclosure that proved possession of the entire functional scope (i.e. not just one means but all means of achieving reestablishment). The only time when this would not be the case is when the claim includes no allegedly novel acts but premises patentability upon an unpredictable result of rearranged steps (i.e. patentability is found in the “claim as a whole” rather than at a point)

      MM, you’re so wrong here, stop. Just stop. Go read Aristocrat.

      1. MM, you’re so wrong here

        About what?

        I’ve got comments stuck in the filter that are saying the same things you just said. We all know how the game is played, and why.

        Go read Aristocrat.

        And then? What about it?

  9. Hopefully Dennis can write about the news article on How Google is paying professors $20K to write academic articles and in almost all case the professors don’t disclose that their point is view is funded by Google .
    Paying Professors: Inside Google’s Academic Influence Campaign

    link to wsj.com

    Question for the Good Professor: Are you getting paid by Google or its lobbying arm for your Patent Views ?

    Do you tolerate MM on the board because someone pays the good professor?

    1. Behind a paywall Brian – any further details to share?

      1. Just google

        “Paying Professors: Inside Google’s Academic Influence Campaign”

        Some information from the article available on this link

        link to campaignforaccountability.org

        I think this is the most important journalism of the year! The invisible hand of one of the world’s most valuable companies in academia exposed!!

        1. Apparently the WSJ article is full of bull excrement. For example, the authors apparently used any example of past funding to “indirect” support of subsequent work, which is work and several people listed in the report deny they received money for current work, and several have stated that the money went to the institution (e.g., Stanford) not the academic themselves. The current allegation is that the story was motivated by the Google Transparency Project that is funded by Google competitors, like Oracle.

          1. Apparently WSJ article was very accurate. The article was actually written by journalists with ethics that are held accountable (not like Mark Lemley the unethical professor of Stanford.) Apparently, the facts were checked and apparently ethical journalists were used.

            Apparently.

            1. Not according to the people featured in the story or they basic data they used to produce the story.

        2. Thanks Brian, this appears to be a solid link: link to business-standard.com

          Ordinary Squirrel – that you think this is some “fake news” only impugns your already razor thin credibility.

          1. I am only pointing out that there are serious questions about the basic facts used to report the story and a lot of the experiences of the researchers have been mischaracterized to drive a particular point of view.

            1. The miacharacterizations simply are not evident.

              It’s as if you just don’t want the story to be true.

              Why is that?

              1. Fact: The story was based on a report by the Campaign for Accountability, which is funded by Oracle (hrm… any reason Oracle would want to slam Google??)

                Fact: Funding was attributed to Google when it came from associations to which Google merely belongs

                Fact: For several identified researchers, the Google funding (a) didn’t actually go to them, but to the university or (b) the funding was received prior to their current work for unrelated projects (in some cases, years before their current research) (that is, their current research was attributed to Google even though they only received funding from Google years ago for a different matter).

                Conclusion: The report that the story was based on came from a biased source that used questionable techniques to mischaracterized Google’s relationship with several of the researchers.

                So, with at least those issues, I think the real question is, why do you desperately want this obvious piece of propaganda to be true?

                1. why do you desperately want this obvious piece of propaganda to be true?

                  We all know the answer to that question.

                  Don’t lose sleep over it, Ordinary Squirrel. The maximalists (like NW and “anon” and – LOL – “Brian”) will do and say literally anything if it makes them feel good for a few seconds. The idea that they are engaged in some super important battle on behalf of “little guys” against “big corp” is part of their mythology. Be everybody knows it’s just one super rich super white super entitled special interest group pitted against another in the patent fever swamp. “anon” and NW believe they are entitled to grab some of that big corp cash because, hey, it worked really well for a while! Easy pickings! And once it got a little harder they just decided to fill their diapers endlessly and cry as loud as possible. They’re the most disgusting mealy-mouthed people in the world.

    2. These are good questions. I have found this blog to have become more and more anti-patent through the years. I think that this blog should be re-classified as a propaganda forum for the anti-patent judicial activists.

      1. TIL: Anything less than a rabid, full-throated support of the patent maximalist agenda make you an anti-patent judicial activists.

        1. Sure Ordinary. That is the standard. This is a forum for the highly unethical Mark Lemley.

      2. I have found this blog to have become more and more anti-patent through the years

        Pretty much everybody has become more “anti-patent” “through the years”, for very well-understood reasons.

        There’s a few exceptions, of course: the maximalist crowd that has never shut it’s greedy whining collective pieh 0 le in the history of the patent system (that would be you, by the way). It’s ign 0 rant greedy g@ping h 0 le apologists like you who cause people to become more “anti-patent.”

        But surely you know all this already. You surely should. And yes I will call you Shirley.

  10. In view of the arguments below about means-plus-function claiming in claims covering software, and an algorithm as spec support for it, note for example Noah Systems, Inc. v. Intuit, Inc. and Ergo Licensing, LLC v. CareFusion 303, Inc. The outcome rested upon whether means-plus-function claims in a software patent were indefinite and therefore, invalid. As reported, both cases followed the ever-growing body of law on the topic from the Federal Circuit, which requires an algorithm to be presented in the disclosure in order to satisfy the disclosure requirements, but in both cases the algorithm was held insufficient and the claims lost.

    1. in both cases the algorithm was held insufficient

      What were the criteria for the “sufficiency” of the algorithm? When is the algorithm sufficiently “fake structure-ish” to be deemed “sufficient”?

      Just kidding. Everybody knows that the only criteria is whether the particular panel is satisfied with the scrivening. And as long as a sufficiently sized subsection of the CAFC is willing to go along with the farce on a regular basis, we won’t hear the usual mewling about “ITS SO VAGUE NOBODY CAN UNDERSTAND THIS WAH”.

      1. MM, do you agree with Tim Keane’s new definition of treason: receiving information from a foreign power regarding an opposition candidate for the purpose of making it public in a presidential campaign, where the information concerns corrupt, illegal and potentially cr1min@l activity of a Democratic candidate?

        What about a self-important, grandstanding government official, such as the Director of the FBI, leaking private conversations of a president in order to make the information public where the information is of potentially corrupt activity?

    2. Paul, methinks that many practitioners do not fully understand MPF, and also assume that saying “configured to” do something covers every way of doing something rather than the way disclosed and equivalents. It would be nice if every practitioner were required to litigate a patent case or two before he or she were entitled to write and prosecute one.

      1. I see that Ned. Count me in, as one that doesn’t understand M+F. My problem is figuring out the scope of a claim which happens to include language that might (or might not) be deemed M+F. Deciding, if you like, what the court will find to be “equivalent”.

        I know: it’s all because I write from outside the USA, where M+F language means what it says and says what it means.

        1. So your problem really is in what does the doctrine of equivalence means then….?

          1. Glad you asked. But first, you mean the Doctrine of Equivalents, do you not?

            I’m not so much bothered about that one, in which one compares a claim with an alleged infringement.

            The one I’m more bothered about is the one where you look at the specification to see what embodiments it discloses and then ask yourself what other constructions might be regarded as “equivalent” to the disclosed embodiments.

            For me, scope is defined by a claim. If you will, the claim defines the envelope. The specification discloses pinpoints within the envelope, to enable the claim. For infringement, the accused embodiment (pinpoint) is either inside or outside the envelope.

            But trying to decide whether the other fellow’s pinpoint (accused embodiment) is “equivalent” to the pinpoint you disclose in your own specification is a question nobody should ask, or have to answer. Whoever wrote Section 112 of the 1952 Act caused an ever-growing bundle of trouble, I think.

            1. Meh, I think that you confuse yourself unnecessarily as the analysis is the same. the decision in 1952 was a direct result of dealing with Judicially induced patent profanity and was clearly a Sovereign’s choice.

              (and yes, there was typo in 7.2.1.1 – but I see that did not stop you from understanding what I meant).

              1. The “analysis is the same” you write. Well, in that case, it seems to me that he who includes in his claim any language deemed to be M+F language suffers what one might call a double whammy.

                At claim construction time, the M+F language is construed as decreed by S. 112 of the Act, that is, much narrower scope than the plain M+F words would suggest.

                Then, later, it is time to consider whether the accused embodiment infringes. First, does it infringe directly. If not, does it infringe under the DoI? But if “the analysis is the same” there is no difference between infringing directly or under the DoI. Thus, if “the analysis is the same”, the DoI is non-existent, no help to the claim owner, whenever M+F language is at issue.

                Is that how it is, that DoI is available to everybody except M+F claim asserters?

                1. it seems to me that he who includes in his claim any language deemed to be M+F language suffers what one might call a double whammy.

                  As is often the case, what seems to you to be a whammy – isn’t.

                  M+F was always an optional claim form technique provided to applicants – for ease in writing claims.

                  As with any option, there are plusses and minuses to the option.

                  Importantly though, as I have shown through ample documentation of Federico commentary, case citations and the like (as well as being vouched by Prof. Crouch and his coined term of “Vast Midle Ground), the ability to use language sounding in function is not – and NEVER HAS BEEN – limited to 112(f).

                  Your rather odd attempts to exclude DOE from 112(f) simply is untethered to US jurisprudence.

                2. >>I have shown through ample documentation of Federico commentary, case citations and the like (as well as being vouched by Prof. Crouch and his coined term of “Vast Midle Ground), the ability to use language sounding in function is not – and NEVER HAS BEEN – limited to 112(f).

                  Your Federico demonstrations have only shown that you don’t know what Federico said.

                  I agree that functional language is permitted outside 112f.

                  But Federico devotes as many words to non 112f functional limitations as Martin Luther King Jr. In the ‘I have a dream’ speech.

                  Zero.

        2. Max, there are two real problems with means-plus-function in court – The first problem is identifying the corresponding structure. The second problem is whether the part regarding Equivalents Thereof relates to claim construction or to infringement.

          What would you say, Max, to the latter question before I give you the answer.

          (You might want to read Alappat in preparation for answering the question.)

          1. Given the maxim that what comes after, if found to infringe will, if coming before, take away novelty, and the need to construe the claim, both for infringement and validity, are we to suppose that (as anon asserts) “the analysis is the same” but that what for novelty is called 112(6) goes by another name (the DoE) when it comes to the infringement issue?

            And if so, what role does BRI play, in all of this M+F, DoE stew?

            1. Max, if infringement, then the prior art must show the corresponding structure to anticipate.

              Now see the problem?

              1. Ned I see all sorts of problems. Not sure which of them is, for you, “the” problem. To define “corresponding” perhaps?

                Let’s talk about prior art attacks on a M+F claim. Suppose the claim is directed to a machine, of which one element is a “cutting means”. Fig 1 shows a special cutter, known and exclusive to Applicant. On a BRI reading of the claim every cutting means under the sun is “equivalent” to the Fig 1 cutting means. So any cutting means under the sun anticipates. Yet, given the existence of S.112(6), is that attitude on the part of the PTO “reasonable”? Discuss!

                At the other extreme, the Fig 1 cutter is so special that no other known cutting means is “equivalent” to it.

                But those are both extremes. In real cases, there is a circle of “equivalent” cutting means surrounding the special Fig 1 cutting device. Which novelty attacks succeed then? Must we first debate “equivalent” as a preliminary to debating “corresponding” before we can discuss whether there is anticipation of the claim?

                Is that perhaps “the” problem, to which you advert, Ned?

            2. but that what for novelty is called 112(6) goes by another name (the DoE) when it comes to the infringement issue?

              How you got that out of my comment is a mystery.

    3. Thanks, Paul, for those. I’m always on the lookout for new cases that interpret MPF, particularly in software/computer-implemented inventions.

      1. We haven’t heard from Random in awhile, and this is a topic that usually draws a comment from him.

        I was going to wait for him to reference one of the typical slashdot or tech dirt mantras, then ask him to share the Math( S) (philosophy) musings of pOiR (? – I’ve forgotten how he signs his views) particularly regarding the equivalence of maths (not the philosophy).

  11. Dennis: the PTAB failed to particularly tie the MPF limitation to the structure (here algorithm)

    Algorithms don’t have any “structure” in any sense of the term that is meaningful to patent law.

    It’s unclear why anyone would pretend otherwise unless they enjoy watching the farce, or unless they believe that argumentative “structure” and sentence “structure” should also be protectable with patents. I’d like to see an academic make that argument. Dennis, will you step up?

    1. MM corresponding structure, material, or acts jumped right at me too.

      How can an algorithm be any of those?

      If an algorithm is a structure, than so must be a sentence, or a thought….and then where are we?

      1. If an algorithm is a structure, than so must be a sentence, or a thought….and then where are we?

        We’re in the middle of an ongoing farce, as has been widely appreciated for quite some time. Like 40 years?

        But some really rich people (including a lot of self-interested patent attorneys) insist that they need more money and they insist that granting more junk patents is the only way to ensure that they get the money they are oh-so-entitled to. After all, without patents on shoving an ad in your face, how will the computer know when to shove an ad in your face? It’s not like you can just instruct a computer on how to carry out logic on data. I mean, c’mon.

        1. …because the moving of the goalposts to TOTALLY a thought has not been shoved in your face like a million times already…..

          what a putz

      2. The structure of software is defined by a series of steps.

        1. The structure of a sentence is defined by a series of steps in arranging words. The structure of a thought is defined by a series of steps in arranging concepts. How is the structure of an algorithm any different by nature than that of a thought or a sentence?

          Now you may make the policy argument that useful algorithms deserve patent protection, but to make an argument that they have actual patentable structure, just the same as objects in the world, means that you can find structure in any thought or sentence just as easily.

          Sadly, the entire massive edifice of technology patenting is built on a basic failure of imagination regarding the nature of information.

          To repeat myself; when information is consumed by human beings, that act and any resulting economic value must be beyond the patent system. We simply cannot patent thoughts and facts and retain a free country. We have copyright for that purpose, and it works within reason.

          When information is consumed by non-human actors in furtherance of human aims, the policy argument for certain patents has some merit, in my opinion. A simple change in legal procedure to address basic 102/103/112 issues early in cases, plus the exclusion of human consumed information as patentable subject matter, would solve a huge proportion of the system’s problems and prepare us for the years to come, when wealth and information become absolutely inseparable.

          More arbitrary scholasticism on the structure of angels on pins gets us worse than nowhere; it squanders vast resources.

          1. MS the exclusion of human consumed information as patentable subject matter

            Not that I want to get into this with you right now (I don’t agree that this is workable) but your “simple change” surely isn’t just that otherwise ineligible information becomes eligible merely because it isn’t capable of being “consumed by a human” (whatever that means).

            1. MM that’s precisely the problem. Under the current regime, what is “otherwise ineligible information” is entirely dependent on the arbitrary philosophy of the jurist(s) that draw the case. Structure, no structure, algorithm “disclosed” or not. Algo in the claims and spec or not. No algo at all: just an idea or an aspiration for some improvement.

              Consuming information is fairly unambiguous. Either the information carries meaning or it does not. No meaning, no consumption. Can you think of a set of facts where it could be a problem to determine if consumption is occurring?

              1. What is the overall sense of utility, Mr. Snyder?

                (hint: consumption)

            2. Mr. Snyder,

              Note the prevarication from Malcolm – he disses you with “(whatever that means)” and yet is confident enough to understand what that means ENOUGH to say “I don’t agree that this is workable.”

              Could he honestly say something is not workable if he did not understand it?

          2. An omelette is described by the process of making it.

          3. What is th structure of magic numbers on a hat band?

            The structure of lines on a vessel?

            1. The material of the hull forms a topographic space in the real world. The lines can’t be patented. Drawing the lines does not infringe; building the vessel does.

              1. lines are not “the material of the hull”

                Move the goal posts back.

                The vessel was a measuring cup, by the way.

                1. Cute (I’ve referenced that quote myself); however, that quote is simply out of context here and is not helpful.

          4. . How is the structure of an algorithm any different by nature than that of a thought or a sentence?

            Well one direct answer is that such exists outside the confines of an individuals mind and thus may have a functional impact to a non-mind entity – such as a machine.

            Or a hat band.
            Or a measuring cup.

            There is no “arbitrary scholasticism” going on with this concept, Mr. Snyder – leastwise when one is being willing to be inte11ectually honest about what is going on.

            1. Well one direct answer is that such exists outside the confines of an individuals mind and thus may have a functional impact to a non-mind entity – such as a machine.

              wut?

              A spoken or written thought has structure outside the confines of an individual’s mind. An algorithm is a formula for solving a problem, based on a sequence of actions, like a thought or sentence.

              Sure all utility is consumed, eventually, by humans, but your point (as always over-repeated) is utterly meaningless because all utility is not information. The kind of utility protected by a patent system is the kind that results from physical or chemical changes to matter.

              Meanings, on the other hand, have no place in a reasonable patent system as patentable subject matter.

              1. The kind of utility protected by a patent system is the kind that results from physical or chemical changes to matter.

                MoT is not a legal requirement but remains only as clue – being neither necessary nor sufficient.

                In other words, Mr. Snyder, you once again have no clue as to what you are talking about.

                My point is the opposite of utterly meaningless, as it plainly shows that your own rather bizarre attempted reformulation (completely untethered to patent law or its history) is the item that is utterly meaningless.

                You move the goalpost (yet again) with your last statement aiming for “meanings” alone. Move the goalposts back and tie “meanings” into what utility – in and of itself – means.

        2. The structure of software is defined by a series of steps.

          aka logic.

          When did Congress decide that logic — described in functional logical terms — had “structure”?

          Oh right: that never happened.

          Now let’s listen to the maximalists weep and moan about “judicial activism” when the most ridiculous concept ever is trashed by a judge who recognizes the obvious and just says it plainly. Boo hoo hoo! Rich white people, gotta make that money so the world goes round. Logical steps are “structure” because of that money flowing into those already rich white pockets. Gosh bid Pale M 0*r*0nville has to sell one of his “investment properties” because of Alice or IPRs. BOo hoo hoo!

          1. Once again your dissembling is put to rest with a simple and direct question:

            How goes your project to copyright Logic?

            Yes, we both know there is no project and more importantly we both know why there is no such project.

            And yet, your unmitigated L I E S continue unabated.

      3. Put a shirt on.

    2. in any sense of the term that is meaningful to patent law.

      Clearly, you are either ig norant or a L I A R.

      Here, most likely both.

  12. Or equivalents thereof?

    1. Of what?

  13. If, as I suspect, the unexpressed view of the PTAB panel was that the specification did not disclose any specific means for “an arrangement for reactivating the link with the first base station if the handover is unsuccessful” they should have said so to begin with. Their so holding so at this late date would put them in a conundrum, because that would make said claim element 112-indefinite under Fed. Cir. authority, and the PTAB has no authority to reject unamended patent claims under 112 in any reexamination or IPR. [As understood, in the past the PTAB has simply refused to IPR ambiguous claims?] Substantive comments?

    1. Interesting Paul.

      As the AIA provides, the PTAB may not make a rejection under what would be a proper ground of rejection.

      Would their “proper” following of their limited authority then be to allow based on what they have to work with, noting for the record that they believe a separate, untouchable (in their realm – but perhaps NOT untouchable in a separate realm) frailty exists?

      Since they are not an Article III court, would they be limited in the ability to render what is effectively an “advisory opinion” in conjunction with the (limited within their authority) opinion on the merits?

      This way, they remain within their statutory authority, but also serve to put the world on notice that the (surviving) patents would be (most likely) not enforceable.

    2. Paul, IPCom identfied a 3-step algorithm. The PTAB questioned this, relying on statements in the specification that pointed to alternative ways of accomplishing each step. The PTAB’s error was in not identifying an alternative algorithm if not the one proffered.

      On the legal issue of whether to institute, if there is no corresponding structure, just a black box with a statement that it can achieve X result, basically the same as specified in the claim, then the patent is invalid on its face. However, it cannot be examined for novelty and obviousness.

      I agree, no institution.

      1. Ned, per the decision as I read it, IPCom had unsuccessfully argued for that 3-step algorithm for claim interpretation. I.e., it was not “identifying” such an algorithm as actually being in the specification and as being the specification “means” supporting the subject means-function claim element.
        What seems clear is that the Fed. Cir., as an appellate court, is not about to do the technical-spec-digging and explaining itself. It properly expects that to be done in the trial below and clearly pointed out on appeal. [As famously remarked: “we don’t do truffle hunts here.”]

    3. If, as I suspect, the unexpressed view of the PTAB panel was that the specification did not disclose any specific means for “an arrangement for reactivating the link with the first base station if the handover is unsuccessful” they should have said so to begin with.

      In which case it would be entirely reasonable to construe the claim as covering every possible “arrangement” (whatever that’s supposed to mean) of achieving the remarkable and totally unprecedented super techno step of “reactivation of a link.”

      1. It dos sound reasonable, but that is not what the Fed. Cir. has been doing with means-function claim elements with patents missing such means in the spec.

        1. That sounds like the opposite of “sounds reasonable” – given controlling law…

          Is that not what the Office wanted to do and was explicitly told that they could not do?

            1. You ask above for substantive comments, yet “agree” with Malcolm and the rather UNsubstantive comment…

              Please clarify.

        2. that is not what the Fed. Cir. has been doing

          Right. This in the context of determining validity in an IPR. Since the PTO can’t find the claim invalid as indefinite (according to their interpretation of the statute), it makes perfect sense for validity purposes to just give the claim it’s broadest reasonable construction, i.e., it covers every means for performing the function (which is actually the most reasonable construction).

          If the patentee has a narrower construction that is more reasonable, well, by all means they should present that construction. But in many cases we know that there is no corresponding structure (or corresponding fake structure) as the case may be.

          1. Your view of BRI isn’t reasonable – by law.

            You might stop there and recalibrate.

  14. BOYCOTT PATENTLYO

    The comment system is a mess. Every time we post we’re fighting an invisible filter than randomly blackballs messages which are professional and on topic. What rule did we break? Why is the filter eating our post? Who knows? We get zero feedback as to what is going on or how to fix it. Legitimate, on topic posts are blocked for no apparent reason.

    It’s to the point you can’t have a reasonable discussion in the comments section anymore. Half your replies get sent to comment purgatory with no way out.

    I for one refuse to participate in this dog and pony show any longer. Dennis, you have many passionate users who want to discuss the topics you post. Please we’re begging you: replace this cr@ppy use less discussion system with something that works. I won’t be posting any more except to call for others to join me in a boycott of PatentlyO until you fix this.

    This is not about profanity (continue blocking that all you want). This is not about off-topic posts or personal attacks. No filter will solve trolling. This is about legitimate, on topic posts getting blocked for no apparent reason.

    BOYCOTT PATENTLYO UNTIL DENNIS FIXES THE COMMENT SYSTEM

    1. Here are two examples from last week. These are from the IP Musings thread. The PatentlyO system rejected them, so I posted the text here. I have plenty more examples just like this.

      link to quicktopic.com

    2. Yeah I had a few bite the dust the other day but just chill out brosefulous PO will be around for a bit, they’ll get it up and amazing when they can.

      If you’re going to post here you must offer many posts as offerings to the comment system gods.

    3. Bye bye, “Buddy.”

      We’re really going to miss you.

      *sniffle*

      1. Malcolm the @$$.

        As usual.

        Are you even vaguely aware of any of the positions taken by KB…?

    4. KnowBuddy,

      You missed Denis’ reply at 3.3 in the previous post: “KB – Looking at there, there are lots of blocked comments from your same IP address that are full of profanity. I don’t know if that is you or someone else at your firm, but I suspect that is creating your problem.”

      1. Troubled,

        Your own post here comes some four hours after KnowBuddy replied to the very post that you note here.

        Perhaps you did not read all the way through that exchange….

  15. Meanwhile, in another corner of our s00per shiny silicon world:

    link to ft.com

    Constructing the road to fully automated driving, it turns out, requires a lot of manual labour.

    Most companies working on this technology employ hundreds or even thousands of people, often in offshore outsourcing centres in India or China, whose job it is to teach the robo-cars to recognise pedestrians, cyclists and other obstacles. The workers do this by manually marking up or “labelling” thousands of hours of video footage, often frame by frame, taken from prototype vehicles driving around testbeds such as Silicon Valley, Pittsburgh and Phoenix.

    LOL

    But computers do everything totally different from humans!

    1. I would love to see a driverless car navigate successfully the crowded streets of India without harming either a soul or a cow. Should be required to prove the concept.

      1. Why?

        Aircraft auto-pilots started with just the ability to hold the wings level, and have evolved into complete flight managers of every phase.

        Why expect car autonomy to handle the hardest case imaginable in order to be commercially useful? It’s not going to work like that.

      2. Not to agree with Martin, but does every human controlled car pass that test? For how many hours of driving? For how many miles driven?

  16. an arrangement for reactivating the link with the first base station if the handover is unsuccessful.

    Oh, I can only imagine the awesome fake “structure” of the s00per techno “algorithm” described in the spec for performing this “reactivation.”

    LOL

    1. We beseech thee your Royal Arrogance, to name just one patent that recites a claim that you deem worthy, so that we may calibrate our own meters of worthiness.

      LOL

      1. Les, MM would dis on all of Morse, Bell, Edison and the inventor of the Barbed Wire patent on general principles.

        1. Ned,

          Clearly Malcolm suffers from extreme cognitive dissonance, as he claims to be involved in obtaining something for his clients that he detests at its core: personal property rights.

          When you peg him as being “of the far left, and thereby predictable,” ask yourself how one such as Malcolm can operate “day in and day out” endeavoring to create that which he detests.

          Up until recently, you suggested to those that had scorn heaped on them by Malcolm to just “enjoy the swagger.” Since the election though, you more and more have been so targeted.

          I wonder if your overall perception of Malcolm has been enlightened at all, or if you still suffer from the selective effects of your “6-agrees-with-me-so-he-must-be-an-Einstein” malady.

        2. Well… to be fair, Edison was a thief and a fraud.

          1. That’s Horse and Buggy thinking OS. Now we have First “Inventor” to File. And according to anon, there can be a “Second Inventor.” So, its all legit now.

            1. Les,

              Wake up son. It has always been a race, and there has always been more than one possible racer.

              Have you not yet learned what inchoate means?

                1. Let’s try again…

                  Therein lies your problem, Les.

                  It is a fallacy and it is a fallacy based on the concept of inchoate rights.

                  This is so both in pre-AIA and in AIA patent law regimes.

              1. The race used to be to invention. Now it is an unconstitutional race to the patent Office. There is a difference.

                1. Les,

                  Been there, done that – and it is you that needs to realize the legal context here.

                  For some reason, you do not want to understand that you are operating with terms of art in the legal domain.

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