Are you Smarter than a 2L?: Patent Law Exam

My patent law class at Mizzou focuses on practical aspects of drafting claims, forming rejections, and arguing motions.  However, the students also take a short final exam that counts for about 30% of their grade.  The following is this year’s exam – DC. 

Introduction: On her drive from Florida to Mizzou in June 2017, Dean Lidsky struggled to find food to match her true Texan tastes. That adversity sparked an idea: A mobile device APP that suggests nearby restaurants based upon a person’s home-state.  Lidsky has not yet built a working model, but has designed the system to use look-up-tables that match various home-states with food preferences and then links those food preferences to various restaurants.

The two tables below show examples of how the home state can be used to correlate with food type affinities and then matched to restaurants.  A phone’s location information also be used to help automatically generate the list of nearby restaurants with high affinity.


Lidsky filed a non-provisional patent application on December 5, 2017 with the following claim 1 (drafted by her Florida-based patent attorney).

I claim:  1. A preference matching system comprising:

a mobile device having a screen, a processor, and a memory; and

software code stored in said memory, wherein said software code is configured provide a user of the mobile device with ranked list of restaurants,

wherein said ranked list is based at least upon an affinity metric and a proximity metric, and wherein said affinity metric is based upon a predetermined correlation between a food-type and an aspect of said user.

Question 1. (150 words) Is claim 1 directed toward eligible subject matter?

Question 2. (60 words) Provide a concise argument that claim 1 fails for lack of definiteness.

Question 3. (100 words) On November 30, 2017, Gely filed a U.S. patent application that disclosed all-but-one of the elements of Lidsky’s invention. Namely, Gely did not incorporate the phone’s location information. Rather, Gely would require users to enter location information.  Note, it appears that Gely independently created his invention, but he was actually inspired by Lidsky’s comment when she arrived about her difficulty in finding food that matched her Texan tastes.  Although filed in 2017, Gely’s application was kept secret by the USPTO until it was published (under Section 122) in May 2019.

Would Gely’s application count as prior art against Lidsky’s patent application if used for an obviousness rejection?

Question 4. (80 words) Assume here that Gely’s patent application is prior art against Lidsky’s patent application, make the argument that Gely anticipates Liskdy’s claim.

Question 5. (12 words) During patent prosecution, Lidsky added a limitation to claim 1 explaining that the “proximity metric” uses a phone’s GPS and Cell-Site location.  The examiner accepted this amendment even though neither GPS nor Cell-Site location information were particularly disclosed in the originally filed application.  The examiner reasoned (correctly) that these additions were very well known in the art and so a person of ordinary skill in the art would know how to add them without any further disclosure.

Would this amendment invalidate the issued claim under either the Written Description or Enablement requirements (or both)?

Question 6. (40 words) Assuming Lidsky’s patent issues and is valid.  Would a competing app producer be liable for freely distributing their version of the APP via an APP Store? (Assume that the competitor’s app while in-use on a device would practice each limitation of the claimed invention.)

49 thoughts on “Are you Smarter than a 2L?: Patent Law Exam

  1. 6


    You should probably consider adding some discussion of the Tinnus v. Telebrands saga to your course in order to to provide a taste of the real world.

    I am thinking of using this epic for a lecture during reading period in a proposed course for the Harvard Extension School in software engineering because software engineers should have some understanding of the patent system.

    1. 5.1

      That’s the (actual) answer to the question 2) indefiniteness.

      The answer below (by an actual examiner – cheered on by someone who long ago let lapse their prosecution number (and apparently their prosecution chops) – is wrong. THAT answer reads more on what may (or may not) be in the specification. Since the specification is not provided, the “reach” of the answer presupposes TOO MUCH.


            are you referring to question #5? the correct answer is that it is invalid under written description but does not violate enablement.

      1. 5.1.2

        @5.1 your voices are talking to each other. You need to make subjects and predicates explicit, otherwise the comment is incomprehensible. As if your understandable comments are annoying enough…..

        Where is the novelty in the patent?

        Not in the “system” of the mobile computer and sensor suite as a mobile computer and sensor suite. So this cant be a system, machine, composition etc. patent

        Not in the concept that people prefer food evocative of their home regions (sometimes). That’s too much of an idea alone to patent in any patent system. Assuming the novelty for a hypothetical is fine, but it then turns on where the hypothetical novelty is hypothetically located.

        In this instance, it must be in being the first to use a mobile device to inform users when nearby a food item of interest.

        It can only be a process, and the result of the process is information. That information is not used as step in a further patentable process, by persons or machines.

        My test works on this hypothetical. Who else has a test that does, and makes any sense?

        Do you want to somehow say it’s eligible as a process? Everything is a process so why have 101 at all?

        Should this not be patentable because it’s obvious? Without reference patents (too obvious to get) there is no prior art to TSM into an obviousness rejection.

        Or just make it patentable and eligible and everyone who can describe the use of a mobile computer and sensor suite for a differentiated task can then getz a patent?

        That would be utterly unsustainable.

        I’ve updated my paper my paper, which I think is aging very well.

        My test works, and sooner or later we are going to walk up to it not just with patents, but with all kinds of algorithms that affect daily life.

        The EU already legally requires some kind of de-abstraction of electronic decision making. Information consumed by human beings and information consumed by machines are different in kind, and there will be many more legal lines drawn around that difference.

        As to a 2L being smart about this? The professor’s question is a Rorschach Test.


          Where is the novelty in the patent?

          Not in the “system” of the mobile computer and sensor suite as a mobile computer and sensor suite. So this cant be a system, machine, composition etc. patent

          You start off with the wrong question (in relation to the specific topic of the Prof’s question) and only go downhill from there.


          As to:

          As to a 2L being smart about this? The professor’s question is a Rorschach Test.

          Absolutely correct – and a not-so-well-kept secret of law school success (and all the more reason why better ethics codes are necessary for law professors – a comment NOT ‘directed at’ Prof. Crouch, but rather a comment to the larger academic situation.

          Some of us had other real world experiences prior to going back to law school and picked up the distinction readily. Unfortunately, there is a sizable pool of law students who lack any real world experience and must “un-learn” a lot of what is taught in law school before becoming a decent advocate for those who innovate.


            Some of us had other real world experiences prior to going back to law school

            How many years of mail room experience did you have before you re-applied?


            As any law firm will quickly teach these students, the correct answer to all of these questions is:

            “I cannot give an opinion without a thorough and complete review of the specification, claims, and prosecution history.”

  2. 2

    Not eligible. Case is virtually identical to Peschke Map Technologies LLC v. ROUSE PROPERTIES, 168 F. Supp. 3d 881 (E.D. Va. 2016).

  3. 1

    1. No, the claim is directed toward filtering content, which is an abstract idea per intellectual ventures. The claim uses generic computer hardware, which is not significantly more than the abstract idea. The limitations directed to a particular type of content or information (food-type) are insignificant (Electric Power Group) And the remaining qualities (aspect, location) are conventionally gatherable data.

    This is yet another case where a claim to a particular relationship would be concrete, while the act of drawing some non-limited relationship is abstract.

    2. The alleged novelty of the claim is the ranked list, and the claim does not define the ranked list with reasonable certainty because it fails to provide an algorithm for generating the list.

    3. Yes, it is prior art under 35 USC 102(a)(2). Exception (b)(2)(a) doesn’t apply because the fact that it was inspired by Lidsky’s idea doesn’t change the fact that Gely independently created his invention.

    4. Entering location information is receiving a proximity metric. The claim does not require the proximity metric being from the phone’s location information, and the distinction is an unclaimed feature.

    5. It would be invalidated under both. Bonus points if the kiddies cite ATI v. BMW or Genentech.

    6. Sure, it’s a making and inducing a use.

    Cue argument on 1, 2 and 5.

    1. 1.1

      Random Guy your’s looks like an “A” to me.
      On question 3 it looks like what was communicated non-confidentially was a common problem, not a solution. On question 6 is Dennis trying to trick students with the underlined “freely distributed” by the inducer, when only damages to the patent owner are relevant for a utility patent?

      1. 1.2.1

        New matter always violates both prongs of 112a. The requirement is that *the specification* enables the claims, and the fact that one need not describe in detail what is already known to the art is a rule of supplementation. When there’s no initial matter, there’s nothing to supplement. If the spec had mentioned GPS, knowledge in the art would enable the GPS, but since the spec doesn’t even mention it, there is nothing for the knowledge to supplement and it’s an enablement violation.


          You fail – you keep on wanting to talk about facts not present (the specification).

          You don’t get to do that in a law school exam. (unless explicitly invited to do so).


            The examiner accepted this amendment even though neither GPS nor Cell-Site location information were particularly disclosed in the originally filed application.

            Also he already knows it was a WD violation. It being a WD violation proves the enablement issue because, again, the specification can’t enable what the specification doesn’t disclose.


              You missed the point above about inherency.

              It was accepted because inherently the item IS already in the specification (which is why an acceptance by the examiner was made).

              YOUR view has it such that an examiner has knowingly performed a bad move (accepted something that should not be accepted) in order to doom the application.

              That’s beyond e v i l.


          Sorry, Random. that’s not correct. See MPEP 2164: “Therefore, the fact that an additional limitation to a claim may lack descriptive support in the disclosure as originally filed does not necessarily mean that the limitation is also not enabled. ”

          did somebody say you were an examiner?

    2. 1.3

      there is a bit of a trap in question 3. if the obviousness rejection was issued after the Gely application was published, then yes it is proper. but if the office action is issued before Gely’s application was published, then it cannot be used (by the USPTO at this time) in an obviousness rejection.

      I’m not sure if Dennis intended this aspect as part of the question or not, but I give props to any of his students who got this 100% correct.

      1. 1.3.1

        patent leather,

        Your comment recalls a past discussion on the Office practice (or lack thereof) of using a proper “contingency” rejection, or an action to abate prosecution pending the actual publication of the “secret” prior art.

        Once upon a time (at least ongoing when I started), these were actual alternatives taken by the Office (known from personal experience).

        As was noted then, the Office is not at liberty to NOT use art that it is aware of, even if that art is “secret” at the time of prosecution of another application. The interesting discussion that ensued on these boards (provided by examiners) was that the Office has actually stopped updating its own internal search capabilities. Up until a certain point in time, those search capabilities included this very notion of “secret prior art.”

        In this sense then, I would proffer that your view is not correct.

        I would also proffer that the Office neglecting this aspect of examination may very well be termed a dereliction of duty. Not sure if this was covered (or how it was covered) in the class (leading up to its inclusion as a testable item).


          sorry Anon, but that is just not correct. Non-published applications filed with the USPTO are kept strictly in confidence and an examiner cannot cite to one in a rejection. If an examiner is examining an application and he becomes aware of another prior-filed (nonpublished) application on the same exact invention, he CANNOT use it in a rejection. In such situation, I would imagine that an examiner would be more likely to reject the application on other grounds in anticipation of the non-published application being granted (or published), upon which it can be used. I’m not sure what part of 102 you feel that can be used to bring in a non-published prior-filed application as prior art.

          If you still don’t believe me, then perhaps 6 or one of the other examiners here can confirm this is correct.


            Sorry patent leather, but that IS correct.

            I have lived directly through it.

            (please note that I am NOT disagreeing with you vis a vis the “in strict confidence” aspect – and that is why there were alternative methods of examination that occurred in order to maintain that strict confidence.)

      2. 1.3.2

        Patent Leather, good point about normal PTO practice of not citing unpublished applications [especially with no longer sending them up to the Board for an interference under the AIA] but I think Dennis covered that by saying:
        “Would Gely’s application count as prior art against Lidsky’s patent application IF USED for an obviousness rejection?”

    3. 1.4

      Your #2 is bad, the rest are okay. I would go with “mobile device” being indefinite because any device can be mobile. Does that mean it can be mounted on a truck? Transported in a semi trailer? Held in someones hands?

      If you wanted to go with your argument, it would better to argue that “software code” does not denote sufficient structure for the claimed function of generating a ranked list, and is therefore 112(f) (“software means for generating a ranked list”). Presumably the spec does not provide sufficient algorithm for generating the ranked list, hence indefiniteness.

      Of course, it is a trick question because we dont know what is in the spec.

      1. 1.4.1

        Of course, it is a trick question because we dont know what is in the spec.

        It is only a trick if you fall for giving an answer that requires you to make a judgment on an item not present.

        That’s why “the answer” is something else, something that does not depend on what is in the specification.

        (avoid the trick)

      2. 1.4.2

        My #2 is the exact holding of Halliburton – non-means-plus element that is alleged novelty fails to point out and particularly claim invention when it describes novelty by function rather than structure.


          and btw, the indefiniteness is true regardless of the spec. I agree if it was construed in means-plus we’d have to know what was in the spec.


            and btw, the indefiniteness is true regardless of the spec.

            Triple fail.

            On its face this statement is just not correct.

            One may amend the statement to indicate that there may be occasion where indefiniteness may be found based solely on the claims and thus regardless of the spec – but ahs you put the statement forth, your statement is excessively broad and thus incorrect.


              The fact pattern of Halliburton was

              a) the claims were not in means-plus (as means-plus hadn’t been created yet)

              b) the claims defined the novel element in a combination by function rather than structure and

              c) the specification stated what the structure was

    4. 1.5

      6. The competitor is not making a processor, a screen and a memory, and there is no evidence that the competitor is inducing users to install its APP onto a mobile device. APPS can be used for non-mobile devices as well (weak argument, but possibility). No evidence that the competitor had intent or knew of the patent, which is factor in inducement. If i recall, inducement also has something to do with selling or offering to sell, so ‘freely distributed’ might matter here…. I would say inducement possible but depends on the circumstance.

      1. 1.5.1

        Good point about question 6 indicating “competitor” but not indicating knowledge of the patent or gross failure to inquire about a known? competitors patents. But infringement inducement – 271(b) – does not have any sale or offer for sale requirement.


          More on induced infringement: The Fed. Cir. in Power Integrations v. Fairchild indicated that the patent owner Fairchild was required to prove that: (1) a third party directly infringed the asserted claims of the .. patents; (2) Fairchild induced those infringing acts; and (3) Fairchild knew the acts it induced constituted patent infringement.
          Step (3) is a “scienter” requirement. [Merely knowing selling the product to the direct infringer is not enough.] However, this must be qualified by the Sup. Ct. Global-Tech “willful blindness” test on that subject.

    5. 1.6

      For 2, does it make sense to say “software code is configured”? Software isn’t configured to do anything. Instead, the processor is configured to do ___ by executing the instructions encoded by the software. Am I wrong? I’m not a prosecutor so not sure if this is normal terminology.

      1. 1.6.1

        In patent applications I wrote or helped write from the 80s through the 90s, I often described a CPU, a processor, or a device as “configured to …”

        In one case, the processor in operational mode ran bridging and routing software. It was a turnkey packet switching device that used an AM29K microprocessor. It’s program was contained in EPROM, and configuration data was contained in NOVRAM. It’s dynamic memory consisted — as I remember — both of a small set of SRAMs that were accessed with 0 wait states and also of a larger set of SRAMS that were accessed with 3 wait states.

        Some of the 0 wait state SRAM was used for critical data structures that had to be accessed quickly. The rest of the 0 wait state SRAM was used for subroutines that had to be accessed quickly. The rest of the code and data, which was less critical, was divided between that which was accessed less frequently but should be accessed reasonably fast and that which was not particularly important at all like the SNMP server code and the SNMP data. The SNMP server code and the SNMP data was not moved from EPROM to SRAM. The more frequently used code that did not require fast access was moved into 3 wait state SRAM.

        The system was extremely tweakable for performance.

        When the system started up, it executed a small EPROM subroutine that placed all the code and data that was in the EPROM in the proper places in memory. One could say that the processor configured the software.

        Then the system went into initialization mode and the processor under software control loaded packet switching configuration from NOVRAM, set up more data structures, and went operational.

        For turnkey systems like the software configurable network switching device, a “processor configured to …” or a “device configured to …” often means that NOVRAM has been programmed to contain a configuration or something effectively equivalent.

        This usage is quite common.

        Yet one can also refer to a “PLD configured to …”, an “ASIC configured to …”, an “application configured to …”, “SAAS configured to …”, a “module configured to …”, and many other variants. When documenting, putting together a written description, or composing claims, I use the formulation that makes the most sense.

Comments are closed.