by Dennis Crouch
Sarif Biomed v. Brainlab (Fed. Cir. 2018) [SarifBiomed]
Sarif’s patent is directed to a “computer-assisted microsurgery installation” couples position sensors with images to place the location of a tool within a fixed reference frame. U.S. Patent No. 5,755,725 (1993 priority).
In the dispute, Sarif first sued Brainlab for infringement. Brainlab responsively petitioned for inter partes review (IPR). That petition was rejected after the PTAB determined that it couldn’t decide anticipation because the claims were too indefinite. Although the PTAB statements denying the petition are not binding in any way, they are obviously influential. Here, the district court followed the PTAB and ruled that the claims were invalid as indefinite. In particular, the court looked at the following claim term:
(d) a computer adapted to: . . . (3) control position and displacements of the tool . . .
Although not in traditional means-plus-function language, the district court held that the claim lacks structure regarding the function of controlling position and displacement.
Claim 1’s “computer adapted to” perform this function is an insufficient disclosure of structure as there is no disclosure as to how the computer would perform the function. “[I]f a claim recites a generic term that, properly construed in light of the specification, lacks sufficiently definite structure to a person of ordinary skill in the art, the presumption is overcome and the patentee has invoked means-plus-function claiming.” Apple (2014). Moreover, as recently stated by the Federal Circuit in Williamson, “the fact that one of skill in the art could program a computer to perform the recited functions cannot create structure where none otherwise is disclosed.”
The claim lacked structure. It turns out that specification also lacked support for the claimed means and thus is indefinite under In re Donaldson Co., 16 F.3d 1189 (Fed.Cir. 1994) (en banc).
The appeal here does not focus on the merits of the indefiniteness discussion, but rather involves the accused infringer’s petition for attorney fees that was denied. On appeal here, the Federal Circuit has affirmed the lower court’s denial of fees — holding that the district court acted within its discretion in finding no “exceptional case.”
Law of Attorney Fees: The usual rule in patent litigation is that each party is responsible for compensating their own attorneys win-or-lose. The Patent Act authorizes a judge to order fee shifting, but only in “exceptional cases.” In Highmark and Octane Fitness, the Supreme Court collectively held that the exceptional case determination involves a flexible analysis involving the “totality of the circumstances” considered at the discretion of the district court. The analysis involves, inter alia, consideration of any unreasonable actions, party motivations, and strength of arguments. Because patent litigation is expensive, fee awards can easily reach into the millions-of-dollars.
On the merits here, the Federal Circuit agreed that Sarif’s claim construction position of no-means-plus-function was “well supported” – despite ultimately losing the case. Regarding the PTAB’s statement of invalidity, the Federal Circuit wrote:
Brainlab places too much significance on the PTAB’s determination. The PTAB does not have authority to institute an inter partes review under § 112. See 35 U.S.C. § 311(b). Therefore, as Brainlab admitted, any conclusion regarding indefiniteness is dicta.
Without the weight of that objective evidence of presenting weak arguments, it was easy for the Federal Circuit to affirm the denial of fees. AFFIRMED.
A claim indefiniteness decision that is indirectly based on a 112 absence of any specification enablement at all* for a material “adapted to” claim element leaves one wondering why it does not also directly get a 112 decision? But at least it is clearer than a 101 rejection.
*another “just do it on any computer” suggestion, rather than a completed, constructively reduced to practice, invention.
So what would a completed, reduced to practice invention look like? If it is not enough to say “a computer programmed to receive certain inputs and control movement of a tool based on those inputs,” (which any artisan can do), then what does it take to establish structure? The software? A flow chart that says the same thing in four squares? A detailed recitation of a PID feedback loop and the controllers for servo-motors?
I think the answer is: Nobody knows.
What the graph does not show (nor does the commentary add) is the reason of the precipitous drop in the optional use of Means-Plus claim format:
Patent profanity (created by the courts).
What doesnt make sens is that
” a computer adapted to: . . . (3) control position and displacements of the tool . . .” is considered 112(f) and ultimately indefinite, but
“a method comprising: controlling position and displacements of the tool” would very likely be found not indefinite. The 112(f) treatment of method claims vs. apparatus claims is in a very weird place right now.
It’s been weird for many years. Not to mention that certain things have to be claimed as basically means plus function. A memory controller, for instance. You have to recite “A memory controller configured to perform functions”, as modern memory controllers have hundreds, thousands, or tens of thousands of gates. It wouldn’t be possible to show — let alone claim — the structure. Computer claims are similar: “a processor configured to…” is basically MPF.
I think that you have that structure thing backwards, PatentBob.
It is NOT that particular structure needs to be present to avoid the “Means Plus” optional claim format choice.
It is merely that sufficient structure be present (to avoid the PURELY functional claiming).
There is a world of difference between the two!
The problem is if you claim:
“a computer for XYZ”, and XYZ is your point of novelty, then you cant argue that “computer” is a sufficient structure known in the art for performing the function of XYZ (to get by 112f) while at the same time arguing novelty..
…”point of novelty”….?
In what manner are you attempting to use that phrase?
Further – the difference remains as to particularity and sufficiency, and there is NO “crossover” to disallow sufficiency just because you want additional particularity.
You are just making the same mistake as PatentBob in a different flavor.
not sure where you are getting particularity from re: 112(f) discussion, but would appreciate cites to relevant decisions that talk about this. agree a term that invokes a class of structures, rather than a particular structure, may be sufficient not to invoke 112(f), but dont know why you think that is relevant.
if claim includes: “a valve for diverting flow,” would not invoke 112(f) if I argue that valve implies a class of structures that are sufficient for the function of diverting flow. There could be only 1 valve that is sufficient for that function, or could be 100 types of valves, no problem. Either way, I am more or less conceding that valves are known in the art for performing the function of diverting flow.
if, on the other hand, claim has “a valve for converting flow of water into flow of wine”, then I only get around (do not invoke) 112(f) if I argue that a valve was known in the art as being sufficient structure (or class of structures) for performing the function of converting flow of water into wine. If I concurrently try to argue (for 103 purposes) that no prior art teaches a valve for converting flow of water into wine, and for that reason my claims are patentable over prior art, then you can see the problem that arises.
It’s relevant because people are misunderstanding the nature of BOTH software and the optional claim format of FULLY functional claiming.
One does not need cites to properly understand either.
What if Valves for diverting water to a water wheel are known and vineyards but valves for diverting water to irrigate vineyards are not known. What if given that situation, the specification explains how to use a diverter valve of the water wheel type to divert water to a vineyard.
Here we have a new use of an old machine if we look at the granularity of the valve.
Further, we have a new system/machine if we look at the river/valve/vineyard/grape press/fermentation tank/bottling/delivery truck system.
Wouldn’t “a valve for converting flow of water into flow of wine” be sufficient then?
“a method comprising: controlling position and displacements of the tool” would very likely be found not indefinite. The 112(f) treatment of method claims vs. apparatus claims is in a very weird place right now.
What many attorneys don’t understand (and unfortunately, most patent examiners) is that doesn’t make the claim valid, it just makes it invalid under 112(a) or possibly 101 instead of 112(b).
If you assert an element is novel and all your specification states is that achieve the novelty without explaining how, you’ve failed to properly prove possession of your invention.
A bigger issue is that when you claim a novel result and you don’t limit it by a particular means, your claim is directed to the abstract act of achieving the result, rather than the concrete means of achievement that may or may not be in your specification. You’re inviting a 101 challenge if it (under the Federal Circuit’s silly rule) can be analogized to other ineligible acts. Or you could just read Morse and see that the thing you can’t do is invent one manner of doing something and claim every manner of doing something, no matter how different in means.
The issue in this case was that there was no structure nominated for the functional means. The bigger issue is that functional claiming without limiting it to a posited structure simply isn’t valid in general.
..and here comes Random to really mess things up (seeing as he understands none of this and hopelessly conflates things….
Oh boy.
“ The bigger issue is that functional claiming without limiting it to a posited structure simply isn’t valid in general.”
“posited structure”…
Indeed.
“What many attorneys don’t understand (and unfortunately, most patent examiners) is that doesn’t make the claim valid, it just makes it invalid under 112(a) or possibly 101 instead of 112(b).”
yes,in theory, but in trial there is a big difference between 112(b) and 112(a).
There is a traditional “means for” element in the claim (“means for determining coordinates of the tool in the fixed reference system Rc based on data from the image data base.”) , and that is what the PTAB seemed to find indefinite, not the “computer adapted for” element.
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