Uniloc v. Sega (Fed. Cir. 2017) (non-precedential)
Uniloc’s U.S. Patent No. 5,490,216 claims priority to two Australian provisional patent applications. However, the ‘216 patent also includes some amount of new matter.
The ‘216 patent covers a software registration system that uses a particular algorithm at the game-system to create to create a ‘local’ unique ID. The same algorithm is also run on the registration-server to create a ‘remote’ unique ID. If the IDs match then the software license is confirmed.
The algorithm is claimed as a “unique ID generating means” and the PTAB identified only one algorithm in the patent specification to serve as the ‘structure’ for the means-plus-function construction.
The algorithm, in this embodiment, combines by addition the serial number 50 with the software product name 64 and customer information 65 and previous user identification 22 to provide registration number 66
Since that algorithm was not disclosed in the provisional filings, the PTAB found that the patent at issue was not entitled to the priority claim. And, without that priority date, intervening prior art invalidated the claims at issue.
On appeal, the patentee argued that the PTAB applied an incorrect standard for determining priority. Notably, priority is not based upon whether a means-plus-function claim is properly drafted under 35 U.S.C. 112p6. Rather, under 35 U.S.C. 120, a priority claim is proper so long as the provisional applications disclose the invention as required by “the first paragraph of section 112.”
According to the patentee, 112p6 demands a narrow ‘myopic’ quest in search for specific structure. On the other hand, the 112p1 priority quest asks whether the prior filings ‘reasonably convey … possession’ Ariad.
On appeal, the Federal Circuit rejected the patentee’s argument – holding that for means-plus-function claims, the priority analysis does boil down to the search for specific structure — noting that the original disclosure must “describe the invention, with all its claimed limitations.” Lockwood. Since nothing in the provisional applications was sufficient to support the “structure” requirement of 112p6, the priority claim also failed.
Although the Federal Circuit does not state this expressly, the holding here is basically that, in addition to being indefinite, a patent claim also fails written description when it includes a means-plus-function limitation without disclosing a specific structural embodiment that performs the claimed function.
= = = = =
This is a case where no sufficient structure (here, algorithm) was disclosed in the priority documents; I wonder what would be the result if one structure was disclosed priority document, but more were added in the non-provisional application.
anon: Ҥ112(6) is an option for FULLY functional claiming.
Let’s not get confused with terms sounding in function that are perfectly legitimate OUTSIDE of §112(6)”
Your dichotomy of “fully functional” (and thus 112f) OR “terms sounding in function” (and thus not 112f) is false.
The correct dichotomy is “limitations lacking sufficient structure for performing the function” (and thus 112f) OR “limitations connoting sufficient structure for performing the function” (and thus not 112f).
For example, there is no question that “protons, neutrons, and electrons configured to perform (function)” would be interpreted under 112f despite the iota of structure.
So your cherished format relies on the CAFC continuing to accept “electronic device + function” as ‘connoting sufficient structure’. Enjoy it while it lasts.
Hey Doc – I gotta say, I loved these two sentences:
“It appears, though, that the concept of what is considered “reasonable” is expanding as a function of time—along with the rest of the universe but without knowledge of a patent-equivalent to the Hubble constant. We sense this expansion, and it gives us agita as we attempt to make sense of seemingly conflicting guidance from the USPTO, the Federal Circuit, and the U.S. Supreme Court.”
You gotta admire a guy that can work the Hubble constant and agita into the same paragraph.
Huh? this is in the wrong thread…. sorry.
I wonder what would be the result if one structure was disclosed priority document, but more were added in the non-provisional application.
The claim would have multiple priorities, so it would depend upon what the art disclosed and when it disclosed it.
Above, Dennis wonders, and Ned replies. For my part, I wonder what Dennis actually had in mind. The way Ned understands Dennis’s wonder is at a very basic level of patent law. How could anybody not know the answer, or disagree with the answer Ned provides?
So, was Dennis’s wonder at a more sophisticated, higher level of patent law?
Or was Dennis trying to re-animate the thread of a couple of weeks ago, on why filing a pro is so popular at the moment?
“my part, I wonder what Dennis actually had in mind”
Ok, I will bite: what is this “more sophisticated, higher level” that you think might exist and to which the wonder might be directed to?
Elsewise, the thread on filing provisionals is a mere 8 days old and if the good professor was aiming to re-animate that thread, would not the better path be to actually add something of substance TO that thread?
Dennis:
“Uniloc’s U.S. Patent No. 5,490,216 claims priority to two Australian provisional patent applications. However, the ‘206 patent also includes some amount of new matter.
The ‘206 patent covers a ”
Did you mean the ‘216 patent?
Remember, folks: using non structural terms at your point of novelty is still an option! It’s a losing option but, hey, just sayin. Because “option”. Very serious stuff!
Also adding A and B is some marvelous fake structure, isn’t it! Very very innovative fake structure. The best! From the most people ever.
Exactly, if you want to avoid being functional at the point of novelty, you can exercise your option to write your claims in means+function format. Alternatively, you have the option to claim the structure that you have disclosed in your spec. Finally, you have the option simply to claim the function itself, which is to say that you have the option to write an invalid claim, if that is the sort of thing that floats your boat.
Let’s say you’re directing a claim to a memory controller that performs an algorithm (heaven forbid!). You couldn’t claim the “structure” even if you wanted to do so, as that structure is hundreds or thousands of gates. You can’t even show the structure.
Given that, how do you claim it if not functionally?
And if you did want to write MPF claims, what would they cover?
It seems to me that this is exactly the sort of situation for which the Congress created §112(6). You disclose the [–ing] algorithm and then you recite “step for [–ing]” in your claim. The MPF limitation covers that algorithm and equivalents (you get to fight over what counts as an equivalent in litigation). If you do not care for the uncertainty of the fight over equivalents, and if you think that there are other algorithms that can carry out the same [–ing] operation, then you should disclose those also, so that you can be sure that they are within the literal claim scope.
§112(6) is an option for FULLY functional claiming.
Let’s not get confused with terms sounding in function that are perfectly legitimate OUTSIDE of §112(6).
You know – what Prof. Crouch coined as the Vast Midle Ground.
TOO many people (regulars) seem to not be able to grasp this distinction.
This is a perfectly fair response, and you are correct that I ought to have said more in my response to PatentBob to acknowledge as much.
It is fairly clear that when the 1952 act (which first introduced §112(6), although it was §112(3) back then) was still fairly new, the C.C.P.A. was treating all functional limitations as being governed by §112(3). See, e.g., In re Fuetterer, 319 F.2d 259, 263 (1963). For whatever reason, however, somewhere along the line the case law shifted away from this understanding of functional limitations, over to a specialized understanding of §112(6) in which §112(6) only comes into play in special circumstances, usually involving the words “means” or “step.” There is much to be said for Judge Rich’s earlier approach to the application of §112(6), but that is all water under the bridge by now.
So, in light of the law as it stands now, you are certainly correct that PatentBob could, in many circumstances, simply recite “a memory controller configured for [–ing].” If the algorithm that the memory controller performs is not the very aspect of the claim that distinguishes it over the prior art, then this is probably good enough, even without invoking §112(6). My response was predicated on the assumption that PatentBob was describing a circumstance in which the algorithm is the only thing that separates the claimed device from prior art devices, but PatentBob did not give me that fact in his hypo, so it was not proper for me to respond on the basis of such an assumption.
I think that you are doubling down on your errors concerning “Point of Novelty” – given as such are not a part of rational or basis of the optional claim format of 112(f).
It could be because of the desire to use the word “fully” for MORE THAN what that word means, and to parse a claim into pieces to apply the law differently to the differently parsed pieces.
Which is precisely WHY the coined term of Vast Midle Ground is so pertinent to the discussion.
And precisely why the likes of the “regulars” like Malcolm and Ned never acknowledge and integrate its existence into their posted views.
Certain eyes remain tightly clenched shut, and mumblings of “I don’t see” can still be heard.
I think that you are doubling down on your errors concerning “Point of Novelty”…
Naturally, I will resist characterizing anything that I have said here about “point of novelty” as being an “error.” You are correct, however, that my response in 2.1.1.1.1.1 is a further exposition on the interaction between functional claim terms and the point-of-novelty.
Which is precisely WHY the coined term of Vast Midle Ground is so pertinent to the discussion.
It does not exactly bolster confidence in the strength of your argument that you refuse to come out and explain your position, but instead prefer to make repeated coy allusions to a neologism that supposedly would carry all before it, if only your interlocutors would but open their eyes and acknowledge it.
LOL – bolstering confidence – according to your Br’er Rabbit desires is simply not necessary.
You don’t like Prof. Crouch’s coined term or something?
“separates the claimed device from prior art devices”
sounds like a different optional claim format called the Jepson claim…
Well, yes, to the extent that it is a valid Jepson claim, the Jepson claim will contain at least one element not found in the prior art. On the other hand, this is scarcely unique to Jepson claims. All claims, if they will be valid, must have at least one element that is not found in the prior art. Otherwise, they will be anticipated, which would make them to be invalid claims.
“All claims, if they will be valid, must have at least one element that is not found in the prior art.”
Absolutely incorrect.
anticipation is not merely the presence of all elements in the prior art.
Heck, it is not even merely the presence of all elements in a SINGLE piece of prior art.
I am NOT going to hold your hand on these types of basics, Greg.
I seem to recall a certain professor coining a term:
Vast Middle Ground.
The fact of the matter (remains) that claim terms sounding in function are completely permissible OUTSIDE OF 112(f) strictures.
Yes, if you want to have a FULLY (and somehow that term so often seems to get lost in the conversations) functional claim, then 112(f) is available as an option.
Outside of that option – and quite distinct from the attempts here with the notion of “Point of Novelty” – NOT something attached to the 112(f) proper understanding – terms sounding in function remain a perfectly valid option (no matter how much dust is attempted to be kicked up).
[Q]uite distinct from the attempts here with the notion of “Point of Novelty”… terms sounding in function remain a perfectly valid option…
Sure. I doubt that anyone disagrees. If the term that one is attempting to define functionally is not part of the invention, but rather only part of the prior art that must be discussed for the sake of distinguishing the invention, one may speak functionally so long as one is clear about what is being said.
Sorry Greg,
But I cannot understand your phrase: If the term that one is attempting to define functionally is not part of the invention”
ALL the words in a claim are “part of the invention.” That’s what claims are for.
I do think that you have some (unsaid) view on the “point of novelty” notion. Before we go exploring what you may mean by that, answer me a quick question: Is it possible to have a perfectly legitimate claim that has NO “point of novelty?”
ALL the words in a claim are “part of the invention.” That’s what claims are for.
Your point is well take. Please permit me to rephrase. If the term that one is attempting to define functionally is not part of the claim that constitutes an advance over the prior art, but rather only part of the prior art that must be discussed for the sake of distinguishing the invention, one may speak functionally so long as one is clear about what is being said.
Is it possible to have a perfectly legitimate claim that has NO “point of novelty?”
By “perfectly legitimate,” do we mean “valid and enforceable”? If so, then the answer is “no.” One cannot (by definition) have a valid claim that lacks novelty.
Are you talking about a Jepson claim – or are you attempting to parse claims and not take them as a whole?
And by the way, your answer of “no,” is entirely incorrect.
When you figure out why, you might glimpse an error in your own “Point of Novelty” assumptions.
@12:01 pm “I have addressed Greg’s comment above.”
@1:34 pm “[B]y the way, your answer of ‘no,’ is entirely incorrect.”
At the risk of plagiarizing a rather famous Monty Python sketch, sometimes addressing an argument “isn’t just saying ‘no it isn’t’.”
And sometimes it is.
The plain fact of the matter is that the concept of “Point of Novelty” is simply not needed for some claims comprised entirely out of non-novel items.
[S]ometimes it is.
Indeed but this is not one such occasion. Where the truth of a proposition is not self-evident (and few are, leastwise the proposition presently in contention), actual explanation is necessary. Bald contradiction will not suffice.
“Point of Novelty” is simply not needed for some claims comprised entirely out of non-novel items.
I wonder if we are not lost in an equivocation here? I agree that a claim can have novelty even where all the recited items are old in the art. Even then, however, the claim will require some novel aspect (the arrangement or configuration of those items, for example) if the claim as a whole is to be acknowledged as patentable. In such a case, the claimed arrangement or configuration is the point of novelty.
In other words, either there is a point of novelty, or the claim is not patentable. The point of novelty does not, however, have to be an item or object.
Novelty and “Point of Novelty” are two very different things.
Definitely they are different, yes. I am not sure that they are very different. One is quite intimately related to the other. In order for a claim to have novelty, it must have a (in the patent law sense of “one or more”) point of novelty.
“In order for a claim to have novelty, it must have a (in the patent law sense of “one or more”) point of novelty.”
Nope.
That is not what the term “Point of Novelty” means.
I cannot understand your phrase: “If the term that one is attempting to define functionally is not part of the invention”
I understand it perfectly.
I’m pretty sure that Dennis does. And Jason does. And so does just about everyone else, including (and especially) judges.
That’s because — as intellectually honest adults — we understand and are unafraid to recognize that any scrivener can describe “the invention” using a limited number of words and then the same scrivener can add an unlimited amount of words to that number where the unlimited amount merely describes a prior art context for “the invention.”
So we all understand that this is how it works in reality. And then there’s you.
MM, obviously adding copious limitations describing well-known prior art structures, basically background, to a claim serves no legitimate purpose to the extent that it requires an examiner to add further and further references to demonstrate the limitations exist in the prior art without further limiting the invention in any meaningful sense. Not only should this not be allowed pursuant to 112(b), but it should be defined to be unprofessional conduct subjecting the alleged professional to discipline.
[A]dding copious limitations describing well-known prior art structures, basically background, to a claim serves no legitimate purpose to the extent that it requires an examiner to add further and further references to demonstrate the limitations exist in the prior art without further limiting the invention in any meaningful sense.
I am not really clear what you mean here, Ned.
If I invent a lock, and then claim a lock in a door, wherein the door is in a wall, and wherein the wall has three windows, each of which is shaded by a green-&-white scalloped awning, it is not clear to me that the Examiner really has to add all that many references together. Precisely because a lock in a door is obvious, it will not be too much work to find a single reference that describes my wall with three windows and the awnings and the door-cum-lock all in a neat little bundle.
On the other hand, if I claim the lock, wherein the lock is settled in the exact middle of a 20 cubic liter aquarium, in which the lock rests on a bed of gravel but is covered in a pool of 40 proof methanol, I dare say that the Examiner simply is not going to be able to stitch a bunch of references together to defeat my claims. In part, that is because the various references will not be analogous art, but mostly it is because my claim (while pointless, and of no commercial value to anyone) really is nonobvious.
Maybe my claim fails §101 (it is arguably not useful for anything), but I do not see why there is anything wrong with acknowledging it to be nonobvious. If the Examiner cannot make the case for obviousness because it really is not obvious, what is so wrong with that?
Is it possible to have a perfectly legitimate claim that has NO “point of novelty?”
No. You can certainly have a claim that recites only a combination of two objectively described structural elements or two process steps that were never combined before. In that case, the point of novelty and the claimed combination are “conflated” (as you would say). But there is still a point of novelty.
[shrugs]
I seem to recall a certain professor coining a term:
Vast Middle Ground.
Recall as much as you want. Doesn’t change the truth of what I said or what Greg said.
The fact is that there’s no case law that I’m aware of which states that describing your “new” composition/apparatus in structural terms is fatal. There’s plenty of case law running in the other direction, however.
Also, nobody is suggesting that using a functional term in your claim will automatically render your claim invalid. Quit beating that silly strawman. The point is that heavy reliance on functional claiming is risky. Functional claiming at the point of novelty is so risky that it borders on malpractice, particularly where a structural description is available to you. It’s always been this way and all trends suggest that your silly “option” is increasingly odious and ill-advised.
“Doesn’t change the truth of what I said or what Greg said.”
I have addressed Greg’s comment above.
As for your comment, “dust-kicking: is not “truth.” Brush away the ad hominem and snark, and you really haven’t said anything even remotely close to being “truth.”
I have addressed Greg’s comment above…
… in the most shallow and least convincing manner possible.
There. The statement fairly cried out for that necessary refinement.
Your feelings – as off as they may be – are noted, Greg.
As are yours, once again, off though they might be.
My feelings – hmm, perhaps yes.
Off? – no. You don’t get to make that up.
One way or the other, eventually the CAFC’s absurd carve out for the likes of “aesthetic correction circuitry” will shrink. The next 1952 like event will not likely be kind to functional claiming.
The next 1952 like event will not likely be kind to functional claiming.
It won’t be kind to the maximalist version of subject matter eligibility either. On the contrary.
That’s why all the croc tears about the Supreme Court are just that. The Supreme Court has been incredibly kind to the logic art lovers. It didn’t have to be that way. And it definitely won’t be that way much longer.
Is that why you had conniptions to the suggested changes for 101?
Is that why you had conniptions to the suggested changes for 101?
I mocked the suggested changes to 101 because they were absurd. And allegedly some self-described “experts” spent countless hours “working” on them, which made the insta-fail status of the result even more bizarre.
I am not talking about your mocking – that is pretty much a given no matter what the topic (that’s just your “swagger”).
I am talking about the level of that mocking – you were in fact throwing conniptions.
“The next 1952 like event will not likely be kind to functional claiming.”
Are you (at all) familiar with the Act of 1952 and why the changes that happened then DID happen?
You seem blissfully ignorant of the parallels (hint: the law went in the OPPOSITE direction to what you seem to be thinking)
Do you really think the balance of interested parties is the same as in 1952?
Three responses:
(1) As so often with these non-precedential decisions, I wonder why this was not precedential. It was a well-considered, well written decision. Why try to leave open the possibility that a future presentation of similar facts would not reach a similar outcome?
(2) In this case, there was simply no corresponding structure in the provisional. What if there had been such structure disclosed, but there was no teaching in the provisional that the structure could perform the claimed function? I believe that this sort of disclosure is also supposed to be inadequate, so I would like to believe that such a scenario would have arrived at the same outcome as here.
(3) In view of Williamson v. Citrix Online, this case could be explosively important. Means+Function claims occur all the time where the word “means” is not used. Going forward, if you plan to challenge a claim that is supported by a priority filing, it seems to me that a necessary part of the work is to identify every functional recitation in the claims-to-be-challenged, and then check for corresponding disclosed structure in the provisional that could perform that claimed function. If you do not find such disclosed structure (or if the structure is not linked to the claimed function), then argue that the claims do not get the benefit of the priority filing, and obtain for yourself a larger body of prior art to assert (perhaps a whole year’s worth of extra art, including perhaps an anticipating publication by the inventor’s own group).
Two more thoughts:
(4) Under Dynamic Drinkware, a patent challenger asserting prior art based on its filing date has the burden to show that the patent or published application has 112(a) support in the priority document before the priority document can count as prior art. If you are facing a rejection or a validity challenge based on a priority filing, in view of Uniloc you need to check whether the patent or published app has any means+function claims. If so, simply note that the examiner or patent challenger has not carried their burden to show structural support in the priority filing for the non-provisional means+function claims.
(5) There is a certain scenario that one encounters again and again in published case decisions, and which always makes me slap my palm against my forehead in incredulous bemusement when I read it—during prosecution an applicant adds a means+function claim without bothering to check whether there is any disclosed structure to support such a limitation (why?!?!). In view of this case, you need to remember not only to check whether your spec has disclosed structure to support your means+function limitation that you plan to add in prosecution, but also whether any priority filings have such disclosed structure. If the priority filings lack such disclosed structure, you need to think hard about whether the relevant art picture has changed between the priority and non-provisional filings.
Just a reminder that the CAFC has held that the term “structure” includes things that aren’t structures, like ineligible method steps.
Thankfully there’s nothing confusing or nonsensical about that. Totally normal reasoning.
Er, yes, the structures of a process are its steps. Glad to see that we can all agree that recognition of this fairly simple point is not “confusing or nonsensical.”
the structures of a process are its steps
If I were the referee around here, I would dock you ten points for being the first one to indulge the inanity of those goofy animations that are presently sullying our comment typepads.
LOL
You’re just
that you weren’t the first to deploy. 
Guilty as charged.
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