By Dennis Crouch
Intellectual Ventures I LLC v. T-Mobile USA, Inc. (Fed. Cir. 2018)
Delaware Chief Judge Stark ruled on summary judgment that T-Mobile did not infringe IV’s U.S. Patent No. 6,640,248. The district court also found claim 20’s means-plus-function limitation left that claim indefinite. On appeal, the Federal Circuit reversed claim construction and thus vacated on non-infringement — however, the court affirmed on indefiniteness.
Indefiniteness: The indefiniteness doctrine is codified within 35 U.S.C. 112(b), which requires each claim be “particular” and “distinct.” The Supreme Court’s most recent statement on the doctrine requires that claims delineate their scope with “reasonable certainty.” Although I have not checked into the stats recently, my somewhat educated prior is that the district courts have followed the Federal Circuit’s lead in usually giving issued patents a ‘pass’ on definiteness — much like utility. The one major exception is the area of of means-plus-function claims.
35 U.S.C. 112(f) allows for claims to include particular elements “expressed as a means … for performing a specified function without the recital of structure, material, or acts in support thereof.” However, when MPF style is used the Federal Circuit requires that at least one example of a the corresponding omitted structure be described within the patent specification. When no corresponding structure is provided, the respective claim is deemed invalid as indefinite.
This case involved a means-plus-function that rendered a claim indefinite — but the court did not actually reach the question of corresponding structure. Rather, the court determined that the claimed function was too ambiguous.
IV’s asserted claims are directed to a network system designed for non-net-neutrality applications. When allocating network resources, the system will consider the quality of service (QoS) needed for a particular application and allocate resources (bandwidth) to prioritize speed where needed. Claim 20 requires an “allocating means for allocating resources to said IP flow … so as to optimize end user application IP QoS requirements of said software application.”
The district court found the claimed function indefinite. In particular, the court noted that specification’s description of QoS as “subjective” according to a user’s “individual preferences” and that description lacked “adequate guidance as to the meaning of ‘optimize.'”
On appeal, the Federal Circuit presumably performed a de novo review, but affirmed — particular zeroing in on its precedent requiring “objective boundaries.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (“The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.”). Here, the court interpreted “optimizing QoS” as akin to the invalid “aesthetically pleasing” limitation of Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005). According to the court, both elements are “purely subjective” and depend wholly upon each user’s personal opinions.
We see no error in the district court’s conclusion that this function is indefinite or that because the function is indefinite, there was no need to evaluate structure. We have similarly held a means-plus-function limitation indefinite without looking to structure where a term of degree in the function was sufficient to render the claim indefinite.
Invalidity Affirmed.
This is a simple case of making the mistake of describing a novel system by the *result of the use of its novelty* rather than *what its novelty actually is.* Something which is always done and which is simply universally attackable on 101, 112a and 112b grounds beyond the easy 102/103 broad scope.
I do have some sympathy for the patentee here since the means-plus claiming means they probably intended to talk about what their novelty actually is, and truth be told the biggest issue I have with the case is the one-sentence explanation at the end that points to a footnote that doesn’t make a lot of logical sense:
“We have similarly held a means-plus-function limitation indefinite without looking to structure where a term of degree in the function was sufficient to render the claim indefinite. Interval Licensing, 766 F.3d at 1369 n.4”
That footnote reads in part:
The court held that claim 4 and its dependent claims were indefinite because the specification does not disclose an algorithm that would constitute sufficient structure for accomplishing the recited function. Interval, 2013 WL 792791, at *9. Interval asks us to reverse that holding. However, because we affirm the district court’s determination that the “in an unobtrusive manner that does not distract a user” phrase is indefinite under 35 U.S.C. § 112, ¶ 2 for the reasons stated in this opinion, we find it unnecessary to address the district court’s additional determination that the means-plus-function claims are indefinite due to a lack of corresponding structure in the specification.
Saying you find it unnecessary doesn’t provide an actual reason as to why it is unnecessary.
112, 6th reads:
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’s not clear to me how a clear means-plus invocation can be deemed indefinite based on the functional language so long as the functional language is mirrored in the specification, because means-plus claiming is specifically NOT claiming functionality, it is specifically claiming STRUCTURE. In other words, if the claim included a term “means for gobbledeing my gook” and the specification stated “this is the structure for means for gobbledeing my gook: …” that claim term is definite to me, because it shall be construed to be the structure in the specification. The functional language has no actual meaning because it isn’t operative in the claim, it is just a link or call to the specification – it is a placeholder that *shall* be construed as something else. The fact that the word or phrase would be indefinite or even unintelligible under normal language or the understanding of the art is irrelevant, because it’s not being construed as a member of the art would construe it, it shall be construed to mean the structure in the specification.
So I do think the patentee was wronged here, but because of how 112, 6th is supposed to operate to essentially nullify the functional language, and not because the functional language is a definite term.
Your interesting discussion loses traction outside of the binary PURE function versus PURE structure scenario.
How do you address the Vast Middle Ground and the fact that using terms of function (outside of the PURE functional claim) is allowed under the law as enacted in the Act of 1952 outside of 35 USC 112(f)?
You seem to disappear when this point is presented to you.
…not unsurprisingly (given your shared disdain for software innovation), your disappearance coincides with the false position of Malcolm and Malcolm’s constant attempts to turn an optional claim format into an NON-optional claim format.
Separately, but related (even if it has been awhile), Malcolm tries for the same “it must be binary” tactic when a claim may contain what he considers a “mental step” (or – anthropomorphicated “proxy” thereof) and he portrays the entire claim as being PURELY mental steps.
Both you and he only want a purely [sic] binary view and also want to parse and chop claims into pieces and apply eligibility at the parsed piece part level. The aversion to accepting the law as written by Congress is reflected by both of you to the fact that the VMG and words sounding in action are simply the “best language” available for certain innovation areas. You would rather preclude innovation protection than realize that parts of claims sounding in action, when combined with some structure are all that is legally required.
Sure, “more” (as in Malcolm’s desired ‘objective physical structure’) are permitted – but clearly, as such is optional, such cannot be a legal requirement.
The sad thing is that both of you would probably be far more effective in expressing your wants if you were to express them AS wants – as desired changes to the existing law. Instead, you both attempt to insert them AS existing law, and thus both run into the problem that attorneys not only know better, but that attorneys call you out for your attempted hijack of existing law.
Nobody knows what you’re talking about, “anon”, and nobody cares.
Weak sauce Malcolm. Hey, just because you do not have anything intelligent to say does not mean that you have an invitation for your usual blather.
Nobody is saying that a term of function can’t be used in a patent claim outside of 112p6 so there is no point in “addressing” that. Please just shut up already and leave us adults alone.
How do you address the Vast Middle Ground and the fact that using terms of function (outside of the PURE functional claim) is allowed under the law as enacted in the Act of 1952 outside of 35 USC 112(f)?
That’s not the issue. Here the CAFC admits the language invokes means plus. The question I raise with respect to this case is “When one invokes means plus, does the actual language of the claim element mean anything?”
112, 6th says that the element *shall* be construed to be what is in the specification, which I conclude means that the actual words of the element are irrelevant so long as it is clear that the element is invoking means-plus claiming.
Consequently, there can’t be a rejection for indefiniteness with respect to the actual means-plus-invoking language unless *the specification* is deficient, not the claim language itself. Once you conclude “this invokes means plus” you stop looking at the claim with respect to the element, because you’re calling the spec. The court here concludes that means plus is invoked, but then, using a citation to no reasoning whatsoever, states that despite means-plus being invoked *the claim language* (rather than the lack of structure in the specification) can be indefinite.
“which I conclude means that the actual words of the element are irrelevant so long as ”
Wrong conclusion – as noted.
And yes, my question is beyond your immediate “venture.” But it IS an issue because if you explore my question, you will find that your overall understanding is deficient.
“The functional language has no actual meaning because it isn’t operative in the claim, it is just a link or call to the specification”
No. That is not how the means plus mechanism works. The functional part of the claim very much is operative. It is operative to the extent that the unclaimed portion is found in the application. The shorthand does NOT mean that the functional part of the claim carries no meaning. The “means” portion is the link, the functional portion is NOT the link.
The shorthand does NOT mean that the functional part of the claim carries no meaning. The “means” portion is the link, the functional portion is NOT the link.
Do you have a citation to a court making this claim? Because 112, 6th on its face does not discriminate between the “means” and the “function” as having different purposes, it expressly says that the whole is construed to be what’s in the spec:
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.
That seems to be pretty clear that an element can consist of “Means for performing a function” and that “such claim” (i.e. the whole thing) shall be construed to cover the structure in the spec + equivalents.
Citation to a legal basis for treating “means for” separately from “performing a function” please?
Your request for a court citation is inapposite. Such an item would only exist if that was ever an item asked of a court to decide.
Plus, you are becoming discombobulated in your questions. Take a deep breadth and reread what I posted (this is NOT that complicated).
Think: “what is the ‘tip-off’ that an applicant wants to use the special optional format afforded by 35 USC 112(f)…”
I tend to agree with your analysis, R.G., but I don’t see where the patentee here was “wronged”. The patentee loses either way and there isn’t a whole lot of difference in the arguments each side is making.
That’s simply not necessarily true, because its the same issue as the case that was cited to – the intent was simply to claim a definite structure in the spec, and there’s been no holding that the structure in the spec is indefinite. There’s only a holding that the functional means-plus language is indefinite, which I am not sure is an actual rejection of the claim.
Ex: The claim includes as one element “Means for making a GUI window look aesthetically pleasing.” That language, if taken as functional non-means-plus language, is indefinite. But what if the spec states “the means for making a GUI window look aesthetically pleasing is the algorithm as follows, which sets a font size to 12 and sets icons to the “Large” setting in Windows: …” The algorithm and acts are limited and definite. I assert that claim should be found definite, because “aesthetically pleasing” is not operative in the claim – the only operative thing is the algorithm which sets the font and icon values, because that is the stand in for the means plus term.
Intellectual Ventures may eventually become the poster child for the LLC death penalty. We can only hope. But for this case, we might see the usual suspects here joining together to applaud this incredible contribution to the art of subjectively improved (LOL) “quality of service” (double LOL). Because, hey, nobody really focused on quality of service until the Internet. It’s a very specific term of art! Same with “resource allocators” — totally unique to the computah world! We know that because the term didn’t show up regularly until computers became popular.
This sort of problem is legion in the so-called “do it on a computer” arts, by the way. A lot of claims just got even easier than before to tank (not that such claims are ever that difficult to tank once you unscriven the distracting jargon).
Speaking of which, let’s now take a moment to address Les’ comments below. Here is Les’ description of the invention:
The invention in this case provides the ability to use network resources to better advantage, whatever the current definition of better might be. That is not indefinite.
Here’s the deal: you can’t use a term like “better” in your claim and then define “better” as meaning “whatever” and then argue that your claim is “definite.” I mean … c’mon, already.
The fact that setting of a slide belt can be better optimized for your waste size both before and after the Thanksgiving meal is a feature of the belt, it does not make a claim to the belt indefinite.
Les, for years here you and “anon” have demonstrated an amazing inability to distinguish what is claimed from objects that may or may not fall within the scope of the claims. The game you play is to set up a strawman argument regarding the object (or some unstated claim thereto) that fails to address the problems presented by particular types of claims. And to make matters worse, you usually choose some well-known object in the prior art as that object. It’s incredibly tiresome and, worse, it’s incredibly intellectually dishonest.
The fact that a belt (or anything else) can be “optimized” for a user has nothing to do with the legal issue here. It also doesn’t matter that such a belt could be claimed properly (news flash: you wouldn’t like the claim). The point here — the lesson for everyone — is that a claim to “A new device, wherein said device holds your pants up and wherein said device is optimizable for the user” is certainly indefinite. That claim is indefinite not because nobody can determine what “optimizable” means in any particular circumstance. It’s indefinite because “optimizable” could mean anything.
Drilling down further (further than the CAFC went here), the device claim I described is also indefinite because even if “optimizable” was given a relatively clear definition, e.g., “optimizable for comfort before and after meals”, the structure of the device is still unstated. What’s being claimed is a new functionality, and new functionalities are not eligible for patenting (yet another example where 101 overlaps with one of the other patent statutes — surprise!). A valid apparatus claim must distinguish itself from the prior art by reciting distinguishing objective structures, either directly (i.e., in the claim) or indirectly (be reference in the claim to a structure in the specification).
More Accuse Others from the Malcolm whiner.
About done with your rant?
Here’s the claim:
An application-aware media access control (MAC) layer for optimizing end user application internet protocol (IP) quality of service (QoS) to IP flows comprising:
identifying means for identifying an application type of a software application associated with an IP flow; and
allocating means for allocating resources to said IP flow, responsive to said identifying means, so as to optimize end user application IP QoS requirements of said software application, wherein said resource allocating means allocates resources in a packet-centric manner that is not circuit-centric and does not use asynchronous transfer mode (ATM).
It might be that a “layer” is non-statutory…. I dunno. THAT might be the problem they were attempting to get at via 112, for some reason.
Friendly reminder to the PTO: optimizing resources is a universal issue to be addressed when performing any method. A bunch of silly jargon doesn’t change anything.
Is this the kind of claim that Professor Janicke wants to be “incontestable” after 3 years? LOLOLOLOLOL
What’s next? The PTO is going to grant patents on methods of “allocating resources” while following Rachel Ray’s televised instructions for making a potato salad? Give us a break already.
Brett Kavanaugh just said he “grew up in a city plagued by gun violence, and gang violence, and drug violence.”
Brett Kavanaugh is from Bethesda, Maryland, and went to Georgetown Prep for high school.
What a miserable excuse for a human being.
Actually, I used to live in DC right next to Bethesda. And back in those times DC was the murder capital of the USA and Bethesda is right on the edge of DC.
(Although, there is quite some buffer, it was pretty intense. Like going to get your car inspected.)
QoS is not subjective. At least usually it is not. Usually, QoS has specific parameters that relate to the application. E.g., delay time for VoIP, throughput and delay for real-time games, etc. Usually, it is very specific what QoS needs to be met.
Not sure, but looks like this application did not specify QoS in quantitative terms.
There may be some subjectivity in that some people may be more tolerant of delays, but QoS is not subjective in that the parameters that programs are supposed to meet to meet a level of QoS are almost always quantitative.
Maybe the app had some problems, but I can just imagine how this holding may be abused.
The network parameters that an application needs/wants (“requirements”) is not the same as its QoS, which relates to its priority relative to other concurrent network uses. While VoIP works best with shorter packet delays, whether it should be prioritized over Netflix is subjective.
“Subjective” in and of itself is not sufficient to move to the legal notion of indeterminate.
How so? Whether the allocator means is configured to “optimize” depends on the feelings of a user. Do you disagree?
Of course, if you were just speaking in the abstract about something being “subjective”, then you have wasted everyone’s time reading your comment. Thank you for that.
I am talking in the larger sense, not constrained to this particular case. See my post at 2.1.2.
And no, this is most definitely NOT a waste of everyone’s time. It may have “wasted” your time, but as we continue to see, your views are not really all that valuable so as to merit any concern for “wasting” your time.
NS II:
What a person determines as “good” or not one can say is subjective, but the parameters to provide that “good” service is not within a range.
Whether to prioritize VoIP or Netflix is user dependent, but QoS to maintain ‘good” VoIP is not and QoS to maintin “good” Netflix streaming is not. These parameters are very well known.
What is more important for VoIP, jitter, delay, or packet loss? What is the objective “optimum” balance?
” According to the court, both elements are “purely subjective” and depend wholly upon each user’s personal opinions.”
In other words, since the claimed invention provides the benefit of customized service, the claim is invalid.
Sigh.
Did anyone ask one of ordinary skill in the art if “optimized” was indefinite?
What if they used the word customized? Would the court have been able to figure out what the claim meant then?
How about improved?
How about tune-able?
See comment 1 below. The court’s holding is not as broad as you think, and does not stand for the proposition you state. The problem with the claim is that one skilled in the art could never determine when QoS requirements have been optimized, because, by spec admission, that is a subjective matter up to the end user. When your spec essentially states that what may be optimal for one user may be suboptimal for another, you have a definiteness problem.
No you do not have a definiteness problem. The invention in this case provides the ability to use network resources to better advantage, whatever the current definition of better might be. That is not indefinite. It is a benefit. The fact that setting of a slide belt can be better optimized for your waste size both before and after the Thanksgiving meal is a feature of the belt, it does not make a claim to the belt indefinite. The ability to deliver spam email on a when bandwidth is easily available basis and give Netflix video a higher priority allows data delivery to be optimized and saying so does not make the claim indefinite.
I think the point that Les is making is that “subjective” — per se — is just not the same as indefinite.
Subjective may yield breadth. And as anyone being honest can tell you, breadth does not mean indefinite.
An argument then could attempt to determine if “subjective” entails limits (which would indicate breadth) or instead entails NO limits (which then goes beyond breadth).
I have not read the claims in light of the specification (as would be required), so I will not enter a view in judgment of the particulars.
Subjective without a standard (which is what both the court said and Dennis’ post relates) is indeed per se indefinite. See MPEP 2173.05(b).
“The scope of claim language cannot depend solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention.” Datamize
Not all “subjective” items fall into the category of “subjective and need a standard.”
You attempt a too broad application of the case provided.
You may want to read the same MPEP section (MPEP 2173.05(b)) that you provided. Keep in mind as you do, that the “extra” words in the MPEP may not correctly reflect the actual law (by now, this should not surprise you).
There is a very big difference between, “A knob that allows a user to adjust the widget for his optimal result,” and “A knob that when adjusted provides the optimal result.”
Good insight on that subtlety.
Did anyone ask one of ordinary skill in the art if “optimized” was indefinite? What if they used the word customized? Would the court have been able to figure out what the claim meant then? How about improved? How about tune-able?
What if they used the word “any”? There’s any number of words which might be definite IF THEY WERE USED, but “customized” isn’t coextensive with “optimized”, “improved” or “tuneable” (improved, btw, would still be indefinite). Maybe judge the claim on what it says rather than what you want it to say.
A claim is indefinite when one of skill would not be able to understand what constitutes infringement. The fact that you can determine post-hoc whether something would meet the standard doesn’t make an indefinite claim definite. That’s been the law for a long, long time. See, e.g., Perkins Glue, where the claim was for a substance as good as horse glue. There’s certainly a standard you could fashion to determine if one glue was as good as another, but the claim was indefinite because the boundaries of “as good as horse glue” could only be determined after experimentation, and thus the limitation failed to inform one of skill of the boundary of the scope.
The specification expressly states that “Ultimately, the end-user experience is the final arbiter of QoS.” In other words, the only way to tell if something has been optimized would be to ask the user AFTER the delivery if what was delivered is the optimal QoS. Consequently, you can’t know whether you’ve avoided infringement until after you’ve infringed.
The question is not whether one could understand the invention, which is what you seem to be hung up on, but whether one could adequately demark the boundary of infringement so that they could avoid infringement. Notably, “optimize” rather than “customize” presents a difficulty for a competitor to determine whether they are infringing.
It would be like a scope that found “providing lenses that generate the best eyesight to a person” definite. It’s *knowable* in the sense that one sits in the chair and a series of lenses are flipped through and provided, that person could tell you which ones are the best without being vague or indefinite, but it doesn’t perform the notice function of 112b because it scares people off from providing any lenses in fear that what they provide will be infringing ones.
Optimal is an effective limitation. There are QoS’es. Some subset of those QoS’es are optimal QoS’es. One can’t tell which QoS’es fall into that subset until after “elaborate experimentation” (to use Perkin’s Glue’s terminology) is performed. That renders the claim indefinite even if, after the fact, identification is neither vague nor ambiguous.
“Maybe judge the claim on what it says rather than what you want it to say.”
Good advice.
Especially when discussing a larger concept of law for which the present case may only be a portion of what the law may control.
Is the “elaborate experimentation” in violation of the requirement for NOT having to engage in undue experimentation?
Does it not fail then for a different reason than what you are suggesting (and reflecting that what you desire fails ALSO as to wanting a tighter restriction than undue experimentation?)
Is the “elaborate experimentation” in violation of the requirement for NOT having to engage in undue experimentation?
No, as there is no problem in making or using the invention. The problem is in determining *apriori* what embodiments are infringing embodiments (i.e. what embodiments fall within the scope). If it requires significant resources to determine which embodiments infringe, the claim has failed to inform one of skill in the art with reasonable certainty what the claim consists of, and therefore fails to point out and particularly claim the invention.
To use the “fence” analogy – indefiniteness is not only shown when different people would draw the fence in different places (relative or ambiguous language) or when they would be unable to draw the fenceline at all (vague terminology) but also when it is difficult to determine where the fenceline is, even if everyone would agree after spending considerable time and money that that is where the fence should go.
Bzzzzt – try again.
Do you know what undue experimentation means?
Are you really an examiner?
You are placing too much weight on the word “optimized.” One of ordinary skill in the art would not interpret it to require an absolute best performance by some particular measure. In the context of ”
“allocating means for allocating resources to said IP flow … so as to optimize end user application IP QoS requirements of said software application,” it clearly means so as to attempt to determine the best practical IP QoS requirements of said software application.” How best is defined doesn’t matter. If the prior art include a device with an element driven toward some definition of best, then that element is anticipated. Likewise, if an accused infringing device has a similar element driven toward some definition of best, it infringes.
One of ordinary skill in the art would not interpret it to require an absolute best performance by some particular measure. In the context of ”“allocating means for allocating resources to said IP flow … so as to optimize end user application IP QoS requirements of said software application,” it clearly means so as to attempt to determine the best practical IP QoS requirements of said software application.”
Do you think “attempt to determine the best practical IP QoS requirements of said software application” is definite terminology?
Keep in mind the specification states that “best” is a user-defined term, that “practical” is a red-light for a relativity-based indefiniteness rejection and that the standard for QoS varies widely depending on each one of millions of applications.
How best is defined doesn’t matter. If the prior art include a device with an element driven toward some definition of best, then that element is anticipated.
QoS by definition is prioritizing some traffic over others! By your definition every mention of the word QoS is prior art on “best” because every QoS scheme certainly isn’t trying make the user experience worse – they’re trying to improve the user experience, which meets your definition of best. Given that this specification seems to admit it didn’t invent QoS, are you saying the patentee put forward a claim it knew wasn’t novel?
As another issue, are you under the impression that you can put forward an problem and then claim solving the problem and have that be definite? I mean lets say that there was no prior art on determining the “best” or “optimal” QoS – do you think that someone can file a specification that says “The problem with the prior art is that it is not optimized. I claim optimizing the prior art” and have that claim be definite?
Do you think that in every field there is a first embodiment put forward (i.e. someone invents the car) and then the second guy comes in with an improvement and claims ‘optimizing’ the first embodiment (“I claim improving the car”) and then nobody gets to commercialize any improvements on a car for the duration of that patent?
Yeah, so, probably not a good idea to admit in your spec that a claim term is “relative” and “ultimately” defined by “the end-user experience”.
…is that the same (or polar opposite) as the joke about Ford’s Model T color “variability”…?
But is there not an *objective* set of features that can in fact enable customization to one’s preferences?
Seems kind of like saying those new Coke beverage dispensers are somehow too “subjective” because they allow each user to select his optimal beverage from countless permutations of flavorings, etc.
Seems kind of like saying those new Coke beverage dispensers are somehow too “subjective” because they allow each user to select his optimal beverage from countless permutations of flavorings, etc.
But the claim doesn’t say enabling the user to make a granular beverage choice (to use your analogy), the claim says actually providing the optimal granular beverage. Those simply aren’t the same scope.
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