Joke: What do you call a claim without a transition phrase?

by Dennis Crouch

Acceleration Bay, LLC v. Activision Blizzard Inc., Docket No. 17-2084 (Fed. Cir. 2018)

This consolidated appeal involves 12 different inter partes review proceedings collectively challenging three Acceleration Bay patents.[1] The patents at issue here are all related to methods of broadcasting information over a peer-to-peer network.  The basic approach here is to ensure that the network is sufficiently connected and then send data through each node to its neighbor participants.  I made the gif below that provides a simple example.

The PTAB split in its decision – finding many of the challenged claims obvious but some patentable.[2]  The decision involves a few patent attorney inside questions:

If a claim has no transition phrase, is it all body? Some of the challenged claims had no transition phrase such as “comprising” — Claim 1 of the ‘966 patent is on point:

1. A computer network for providing an information delivery service for a plurality of participants, each participant having connections to at least three neighbor participants, wherein an originating participant . . .

On appeal, the patentee argued that “information delivery services” should be seen as a limiting claim term — because it is part of the body of the claim — rather than a non-limiting portion of the preamble. Here, challenged term appears toward the start of the claim, but the patentee argues that the claim is all-body (and therefore is all limiting).  On appeal, the Federal Circuit sided with the PTAB that the term was part of the preamble and was non-limiting. The court writes “Acceleration’s poor claim drafting will not be an excuse for it to infuse confusion into its claim scope.”  Note here that the patents originally belonged to Boeing and were prosecuted by Perkins Coie.

Printed Publication: In its cross-appeal, Blizzard argued that a particular reference (“Lin”) should count as a prior art printed publication. The article in question is captioned:

Meng-Jang Lin, et al., Gossip versus Deterministic Flooding: Low Message Overhead and High Reliability for Broadcasting on Small Networks, Technical Report No. CS1999-0637 (Univ. of Cal. San Diego, 1999).

The unchallenged testimony was that the article by Lin was uploaded to the UCSD Computer Science and Engineering website (on a page of CSE technical reports).  The upload took place in 1999 before the critical date for the patents and the site was indexed and searchable – although the search function was limited. Still, the PTAB found that the document was not “published” — a conclusion affirmed on appeal. 

To qualify as a “publication” the document must either (1) be actually distributed to the public or (2) be publicly available. Because there was no evidence that the document actually reached members of the public, the focus was on the second prong, public availability.  The question here: “whether an interested skilled artisan, using reasonable diligence, would have found Lin on the CSE Technical Reports Library website.”  Although the site was indexed and searchable, the PTAB concluded that the search function was limited and that the evidence only “suggests that an artisan might have located Lin by skimming through potentially hundreds of titles in the same year, with most containing unrelated subject matter, or by viewing all titles in the database listed by author, when the authors were not particularly well known.”

Treating public accessibility as a factual determinatoin, the Federal Circuit affirmed — finding that “[s]ubstantial evidence supports the Board’s finding that there “is insufficient evidence of record to support a finding that a person of ordinary skill in the art in 1999 could have located Lin using the CSE Library website’s search function.”

= = = =

As noted above, a critical factor in the Federal Circuit’s analysis was the deference given to PTAB fact finding — holding that public accessibility is a question of fact.

Whether a reference qualifies as a printed publication under § 102 is a legal conclusion based on underlying fact findings. Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018); accord Cooper Cameron Corp. v. Kvaerner Oilfield Prod., Inc., 291 F.3d 1317, 1321 (Fed. Cir. 2002). One such fact question is public accessibility, which we review for substantial evidence. Jazz Pharm., 895 F.3d at 1356.

In a prior post, I walked though a series of low quality citation strings on the question of whether public-accessibility is a question of fact (or instead a question of law).

Here, the court cites Jazz Pharma, and Jazz Pharma does include the holding that “[p]ublic accessibility is a question of fact.”  Jazz Pharma justifies this holding with a citation to In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011). NTP also includes the short statement that “publicly accessible is a question of fact,” again without any reasoning or explanation other than a citation back to In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) along with the parenthetical (holding that whether a reference is publicly accessible is based on the “facts and circumstances surrounding the reference’s disclosure to members of the public”).  It turns out though that Klopfenstein did not actually make that holding. Once again, this citation string goes back to nowhere.

= = = =

[1] IPR2015-01951, IPR2015-01953, IPR2015-01964, IPR2015-01970, IPR2015-01972, IPR2015-01996, IPR2016-00933, IPR2016-00934, IPR2016-00935, IPR2016-00936, IPR2016-00963, IPR2016-00964.

[2] “Claims 1–9 of U.S. Patent No. 6,829,634, claims 1–11 and 16–19 of U.S. Patent No. 6,701,344, and claims 1–11 and 16–17 of U.S. Patent No. 6,714,966” were all found invalid. “Claims 10–18 of the ’634 patent, as well as substitute claims 19 of the ’966 patent, 21 of the ’344 patent, and 25 of the ’634 patent” were all found patentable.

 

 

38 thoughts on “Joke: What do you call a claim without a transition phrase?

  1. 6

    I’m confused by this;

    [It turns out though that Klopfenstein did not actually make that holding. Once again, this citation string goes back to nowhere.]

    This is a court of appeals. *The* court of appeals, it turns out, for patent law. In the absence of Supreme Court guidance, courts of appeals declare what the law is. If a prior panel had held to the contrary, then this panel would be violating the court’s own rules on precedent (ha ha), but the court is not required to support its holding with string cites back to creation.

    1. 6.1

      It is less a “string cite back to creation” and more a simple error in the string of citations that shows the error.

      As to the notion that an appeals court writes the law, you are in serious error of the limitations of applicability of Common Law law writing.

      1. 6.1.1

        I didn’t say the appeals court writes the law, did I? Perhaps you believe the in the absence of Supreme Court precedent, the appeals court should simply throw up its hands. That would be an odd tack.

        1. 6.1.1.1

          My apologies, as I took the comment of “In the absence of Supreme Court guidance, courts of appeals declare what the law is” to be a blanket declaratory power without regard (and which IS a parallel to Common Law law writing).

          And no, the option to legislating from the bench</I is NOT “throw up their hands.” The “odd” here is your strawman.

  2. 5

    As an IBM>Apple Sr. patent attorney publicly noted several years ago, trying to find old enough [19 years old in this case] good software or internet related prior art is not easy. Good patents or publications are less likely to be easily found, or to be the best source of such prior art or other POSITA knowledge. A different way of prior art searching is needed, especially for on sale or public use litigation defenses. Namely consulting with, and obtaining witnesses from, those who were working in the field at the time. Including those familiar with details of military or other communications systems. Not having good patents or publications that are old enough with sufficient software or internet related details also makes reexaminations [and now IPRs] less useful for defendants.

    1. 5.1

      I have to chuckle at how much bias is evident in your otherwise neutral “advice” here Paul.

      It is quite clear that your concern is on defeating the protections afforded by the patent system and you have little (if any) affinity for those protections.

      Mind you, there is nothing “wrong” with the advice you offer, and this is not criticism of that advice per se, but the level of your “proselytizing” and the one-sidedness of that “proselytizing” is rather stark.

      1. 5.1.1

        Agreed.
        If you cannot find the killer prior art, respect the patent.

        The fact that software vendors preferred to keep their software inventions secret is something they have to deal with. Since years ago they chose not to share the software innovations through the publication of a patent, the public policy of encouraging publication dictates that they should forfeit the right to invalidate the patents of late-comers.

        1. 5.1.1.1

          Absolutely – it is an object of the original design of the patent system to be BOTH a carrot and a stick. A carrot to reward those willing to share and a stick to beat on those who choose not to share and “get caught” by others willing to share.

          This seemingly Left Liberal mindset of not punishing anyone is only too willingly exploited by the Efficient Infringers

          1. 5.1.1.1.1

            seemingly Left Liberal mindset of not punishing anyone

            Meet Billy. He has the political instincts of a 12 year old who grew up sneaking peaks at FOX News between the massage sessions with his “evangelical” step-dad.

            1. 5.1.1.1.1.1

              Your mindless and pointless ad hominem is noted.

              You should learn how to apply ad hominem by noting that my ad hominem is not only on point, but is directly related to a patent issue.

      2. 5.1.2

        The patent system offers no protection for “inventions” that are non-novel or obvious. It is evident that you support enforcing “gotcha” patents where the relevant prior art just wasn’t known to the examiner.

        1. 5.1.2.1

          just wasn’t known

          That’s the crux.

          I do NOT support unexamined patents**. In no way, shape or form, should my comments here lead you (or anyone) to that conclusion.

          That being said, examination needs to be done, and when an application is granted, that grant needs to carry with it the weight that a granted patent is supposed to have.

          **Under the current set-up. I have provided discussion points as to having a changed system if we decide that examination cannot provide the validity that we expect (nay, NEED) to have with a legal property right that is a granted patent: eliminate examination entirely. But that’s an entirely different conversation, so don’t confuse yourself or any of the discussion here with the presence of an examination system.

          1. 5.1.2.1.1

            the weight that a granted patent is supposed to have

            It’s presumed valid, which puts the burden on the defendant to provide clear evidence that a mistake has been made, e.g., the PTO did not fairly consider the best art. That’s the “weight” that a “granted patent” is “supposed to have.” Nothing more, nothing less.

            I note that nothing in any of the comments that you are complaining about is inconsistent with this.

            1. 5.1.2.1.1.1

              Clear and convincing is — quite differently than you spin — something more; and definitely more than what the comments I am responding to allude to.

              Think before you react.

              1. 5.1.2.1.1.1.1

                Huh?

      3. 5.1.3

        Amen to that, Anon.

        It’s specious to suggest that military use of a technology constitutes prior public use, if the technology itself was classified. Launching a missile that travels faster than the speed of sound and explodes upon impact isn’t exactly putting the technology behind the missile in the possession of the public.

        1. 5.1.3.1

          Launching a missile that travels faster than the speed of sound and explodes upon impact isn’t exactly putting the technology behind the missile in the possession of the public.

          And using a programmable computer that was created to carry out instructions to … carry out instructions isn’t exactly innovative.

          1. 5.1.3.1.1

            And using a programmable computer that was created to carry out instructions to … carry out instructions isn’t exactly innovative.

            You are dissembling again.

            Try 35 USC 100, 35 USC 101, and the patent doctrine of inherency to better present your “feelings.”

            1. 5.1.3.1.1.1

              You are dissembling again.

              Not at all. “Dissembling” is when you and your cohorts pretend that when you describe a “new” (but not really new) data processing function for an instructable computer that you are describing (LOL) “the essence of electronic structure” (LOLOLOL).

              And everyone knows this. Literally everybody. But only some of us are grown-up enough to admit it and discuss it. You’ve been eating the lunch I’ve been serving you, Billy. And you’ll keep on eating it. It’s fun to watch.

              1. 5.1.3.1.1.1.1

                That Accuse Others regarding lunch falls far short of reality.

                As I noted, please feel free to stop dissembling and use actual patent law concepts and statutory sections.

                Eat that.

        2. 5.1.3.2

          Of course, but there is a surprising amount of military or other government-funded R&D that is NOT classified [or has been declassified], and is published. E.g., re this case, details of ARPANET.
          As for “proselytizing” and “one-sidedness,” that is so predominantly the other way on this blog that even mere objective advice is attacked. Note, for example, the key concluding sentence of my comment above is advising Against IPRs in some such cases.
          I do not agree with the policies of some companies that simply blow off honest patent licensing offers. But it seems to seriously bother some commentators here that when patent owners sues companies for millions of dollars that the company is obligated to defend itself, and that the patent bar is not solely devoted to PTO practice or only one side of patent suits.
          At least we are now spared the literally hundreds of prior bad advice comments on this and other blogs from attorneys insisting that the entire AIA, or at least all IPRs, could be ignored because they were going to be struck down as unconstitutional! Maybe now some of them will finally be more interested in CLE on how to win one.

          1. 5.1.3.2.1

            Your rebuttal on the Constitutionality of anything falls vapidly short, given as it is that you refused to engage on the merits of any such conversation and insisted only on sniping from the sidelines.

            HAD you actually discussed things on the merits, then maybe what you say here would carry some small weight. Maybe. As is, no weight at all.

    2. 5.2

      That’s why you hire experts who were POSITAs at the time of the patent and have them help with prior art. Serious litigators know this. But you still need evidence to back up their testimony. If you use the *right* experts, they have it.

      1. 5.2.1

        ID, I could not agree more, but have been surprised by the number of litigation attorneys that hire college professors with no patents in the field as their experts instead of POSITAs or at least other inventors working on the same subject at the time of the subject patent’s filing date. Even better in some cases, the inventors on the closest prior art patents.

        1. 5.2.1.1

          I always tried to hire the guys who actually invented whatever the plaintiff was claiming to have invented.

          1. 5.2.1.1.1

            good point.

    3. 5.3

      Have there been any quality studies regarding whether the corpus of published patent applications and patent actually contribute to promotion of science and technology (isolated from the oft-touted benefit of the incentives to innovate in response to a limited government monopoly)?

      (Serious question)

      1. 5.3.1

        Can’t say that I am aware of any such study, but I am aware of many clients who choose not to patent because they do not want to make the public disclosure.

        And as to those companies that do choose to patent, since they know that their patented technology is no longer secret, they do not make other efforts to keep it secret, either, allowing the information to be disseminated through channels that are not necessarily the text of the patent.

  3. 4

    The court writes “Acceleration’s poor claim drafting will not be an excuse for it to infuse confusion into its claim scope.”

    Sounds like a 112b to me

    1. 4.1

      Why is it poor drafting? The only confusion comes from some court declaring that preambles are not limiting unless they breath life into the claim… or some such…Why wouldn’t a preamble be limiting? Because if it were we don’t get the result the court wanted perhaps?

      1. 4.1.1

        Amen to that.

        Where did Congress, who established the patent system and its requirements for claims, say to disregard that part of the claim that somebody calls a preamble?

        1. 4.1.1.1

          Where did Congress, who established the patent system and its requirements for claims, say to disregard that part of the claim that somebody calls a preamble?

          ROTFLMAO

          Deep stuff here, folks.

      2. 4.1.2

        Hear, hear. Give meaning to ALL claim language, and this isn’t an issue.

  4. 3

    Isn’t the next step a finding that a website is not published as of it’s archive date because there is no evidence that the website was findable just that if you read every website you would eventually find it

  5. 2

    Are people of ordinary skill in the art of walking with the aid of a white cane deemed to be aware — for patent law purposes — only of prior art that was published in braille or in audio format?

    Serious question.

    After reading these recent cases, I am beginning to wonder whether the PHOSITA’s knowledge base is somehow being eroded. Maybe next the CAFC will introduce a time limit for determining whether something was published? e.g., “could have been searched for and retrieved but it would have taken over 6 hours of continuous work according to plaintiff’s re-enactments.”

    1. 2.1

      …eroded…

      O H N O E S !

      Something about clutching pearls comes to mind.

      (maybe if you showed even the slightest appreciation of the person of legal fiction (juristic person)…

  6. 1

    the Federal Circuit affirmed — finding that “[s]ubstantial evidence supports the Board’s finding that there “is insufficient evidence of record to support a finding that a person of ordinary skill in the art in 1999 could have located Lin using the CSE Library website’s search function.”

    Meanwhile:

    the site was indexed and searchable

    [throws hands up in there and pours self a tall drink]

    Somehow this makes it even worse: an artisan might have located Lin by skimming through potentially hundreds of titles in the same year, with most containing unrelated subject matter

    I skim through hundreds of titles of mostly unrelated subject matter pretty much every day while searching for stuff. The CAFC is doing that thing that they do again, trying to cushion the pillow for patentees who weren’t very innovative. A published article is a published article. This article was published.

    Question: if the issue here was whether Lin was entitled to a trade secret on the tech in the article in view of this same article, what would the result be in most jurisdictions?

    What if Lin had tried to obtain a patent on the tech disclosed in the article? No problem because “not really published”?

    1. 1.1

      Yeah… I hate to agree with MM on anything… but how was this article any less findable than the proverbial thesis in one university library and listed in one card catalog thereof?

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