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]
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.
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.
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.
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.
…and perhaps worth noting, in those other regards, you appear to be in total agreement with me!
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.
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.
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
This relates to BRI or MPF, how?
Night Wiper= true LoL
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.
Malcolm IS the blog’s Trump.
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.
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.
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.
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.
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.
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.
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.
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.
There is no farce if you remember that the US system was explicitly designed to promote maximum alienability of property.
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.
Property can change ownership.
Benefits of property transfer with the ownership.
That’s pretty much the extent of the comment.
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.
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.
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.
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.
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?
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…
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.
max,
Didn’t theEPO end an experiment somewhat recently related to “self-collision” and the aspect of divisionals?
Is perhaps this:
link to marks-clerk.com
what you are thinking about, anon? Decision G1/15
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.]
Well it certainly isn’t “improperly” being avoided, it is lawfully being avoided I would think.
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.
Question: is the determination of means-plus-function equivalents one for claim construction or for infringement?
Was that a twist on White v. Dunbar?
Paul, you sense the problem.
No, I nosed the problem.
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.
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.
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.]
Ned,
How is not for both?
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.
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.
Night, consider the method
Steps X, Y, then Z.
Each step requires an Act.
Does the claim invoke 112(f)?
That would depend as well you know.
If actual software is provided in the spec for enablement or a M/F element there is no need for an algorithm.
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.
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.
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
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.
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.
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?
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?
Behind a paywall Brian – any further details to share?
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!!
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.
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.
Not according to the people featured in the story or they basic data they used to produce the story.
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.
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.
The miacharacterizations simply are not evident.
It’s as if you just don’t want the story to be true.
Why is that?
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?
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.
Ordinary,
reply stuck in mod purgatory…
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.
TIL: Anything less than a rabid, full-throated support of the patent maximalist agenda make you an anti-patent judicial activists.