A Functionally Claimed One-Step Method

by Dennis Crouch

Eli Lilly and Company v. Erfindergemeinschaft UroPep GbR, SCT Docket No. 18-1515 (Supreme Court 2019)

Lilly’s new petition for writ of certiorari asks an easy question:

Whether a single-step patent claim that describes its point of novelty solely in functional terms violates the rule against functional claiming set forth in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946).

The question as posed is easy to answer.  Any patent claim that describes its point of novelty solely in functional terms is invalid violates the rule set forth in Halliburton.  Of course, Halliburton was abrogated by the 1952 Patent Act with the adoption of what is now known as 35 U.S.C. 112(f):

Element in Claim for a Combination. — 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.

Note here that the 1952 patent act only discussed the treatment of functionally claimed elements in “a claim for a combination.”  The real question here is whether Halliburton is still good law for “single-step patent claims.”  I’m betting the Supreme Court would say yes — A claim with a single element would be invalid if that element was claimed solely in functional terms.

= = = = =

The petition reads a bit like a mystery novel.

A few months [after Lilly obtained FDA approval to market tadalfil for BPH treatment], respondent—a shadowy non-practicing entity based in Germany—filed the patent application that ultimately became the patent at issue here,
claiming priority to an application from 1997.

Here, UroPep’s patent covers a one step method of treatment/prophylaxis claim for BPH.  The one step is as follows:

administering to a person in need thereof an effective amount of an inhibitor of phosphodiesterase (PDE) V [excluding eight particular compounds].

Back in 1997, PDE V inhibitors where already known, and tadalafil in particular was known to be a PDE V inhibitor.  The 1997 priority document mentions ten different PDE V compounds, but does not mention tadalafil, and the claim excludes eight of those ten.

= = = = =

Lilly’s question presented includes an important and disputed presumption — that the claim “describes its point of novelty solely in functional terms.”  In its decision, the district court held that the claimed step of administering a PDE V inhibitor was not wholly functional.

Even if means-plus-function analysis would apply to a product claim to “an inhibitor of PDE V,” it does not apply to a method claim reciting a method of administering that substance to a patient.

District Court Decision. The jury then awarded $20 million in damages. On appeal, the Federal Circuit affirmed without opinion (R.36) — setting up this current petition.

[Petition][Appendix]

To be clear, the district court analysis here asks whether this fits under 112(6), not whether it comports with Halliburton.  That case states that a claim which “describes [its] most crucial element … in terms of what it will do, rather than in terms of its own physical characteristics … is invalid as a violation of Rev.Stat. § 4888 [indefiniteness].”  In General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938), the court similarly wrote invalidated claims where the inventor “uses conveniently functional language at the exact point of novelty.”

There are several ways that these cases could be applied here.  Example: (A) Since PDE V inhibitors were already known, their existence was not the point of novelty.  Rather, the point of novelty is administering those known drugs in order to treat a particular condition — and that “administering” portion of the claim was not described functionally. (B) Another way of thinking here is that the novelty of the claim is administering a particular drug — but we don’t know the details of that particular drug is because it is described functionally.

187 thoughts on “A Functionally Claimed One-Step Method

  1. 14

    Anyone who is willing to work and is serious about it will certainly find a job. Only you must not go to the man who tells you this, for he has no job to offer and doesn’t know anyone who knows of a vacancy. This is exactly the reason why he gives you such generous advice, out of brotherly love, and to demonstrate how little he knows the world.

    ― B. Traven, The Treasure of the Sierra Madre

    1. 14.1

      …um, ok, thanks…?

    2. 14.2

      With apologies to Traven…

      Anyone who is willing to read Title 35 with a mind willing to understand will certainly find that the 1952 Act could completely abrogated Halliburton. Only you must not ask to the man who tells you this for a citation to actual statutory language that accomplishes this end, for he has no such citation to offer and would not tell you even if he had. This is exactly the reason why he gives you such generous advice, out of brotherly love, and to demonstrate how little he knows about U.S. patent law.

      1. 14.2.1

        I would refer the interested reader, for example, to this thread. Notice how many times a statutory citation was requested, and how many times that question was evaded. The evasion is itself an answer to the question.

        1. 14.2.1.1

          The so-called “evasion” is merely NOT playing the Br’er Rabbit “make you argument again game.

          Greg continues to snipe from the sidelines while being an inte11ectual coward and not engaging directly.

          As to the complete abrogation, I have recently again provided the explanation – an explanation that does not require any quotations to support.

          So does Greg actually address the merits on the table?

          Of course not. He would rather attempt a Br’er Rabbit ploy (again).

  2. 13

    Ignoring the unsaveables like Night and anon, I really can’t understand how anyone can possibly justify the use of functional language outside of 112(f) even just from a written description standpoint.

    For functional language to be categorically valid, one would have to conclude that every disclosure of a species inherently supports any functional scope which describes that species in any way. Yet we know that claims have been invalidated for failing to be supported over their full scope (i.e. Overbreadth is a real thing).

    How can even a single case like Lizardtech exist if functional language is inherently valid? Since Lizardtech exists, the only conclusion is that functional language is not inherent valid.

    That means, at best, functional language is valid on a case by case basis. (This is true) But, that leaves us with how functional language is *often* employed – it is employed to expand the breadth of the novelty of the inventive aspect. “This machine uses structure ABCD for the utility of generating widgets, but ABCD can be designed around, so I simply claim widget generation.”

    We again return to the basic issue – is a claim to a function (like widget generation) inherently supported? No. Is it supported by the disclosure? Probably not. Why? Because that’s the very fear that is causing the functional language to be used – the fear that other structures may exist that allow for the same function through different means. This leads to the ironic situation that if there truly is no other means to achieve the result, the claim to the function is ineffective in increasing the scope, and if there is other distinct means of achieving the result, the functional language renders the claim invalid.

    In short – *if* overbreadth exists (which we know to be true) then one must conclude that a sufficiently distinct means which achieves the same functional result would prove invalidity rather than prove infringement. The only question becomes “What constitutes sufficiently distinct”? But if one is asking themselves that question, they’ve already crossed the relevant rubicon.

    Although the exact point of unsupported scope with respect to WD has never been particularly defined, there has been some guidance as to how far of a scope an embodiment supports – the test for means-plus equivalency. I’d submit the only time that functional language is valid outside of 112(f) is the same scope it would have under 112(f) – when known equivalent means can be employed to achieve an equivalent result in an equivalent way. The use of non-112(f) functional language is an attempt to claim non-equivalent means that achieve equivalent results, which leads to it being unsupported over its full scope by the spec, which leads to it being invalid.

    1. 13.1

      Ignoring the unsaveables like Night and anon, I really can’t understand how anyone can possibly justify the use of functional language outside of 112(f) even just from a written description standpoint.

      You have to “ignore” the Congress that enacted the Act of 1952 then.

      But that is what you usually do anyway, Random.

    2. 13.2

      For functional language to be categorically valid, one would have to conclude that every disclosure of a species inherently supports any functional scope which describes that species in any way.

      This is nothing more than the classical error and lack of understanding of the term “Ladders of Abstraction.”

      As has been pointed out to Random numerous times (and each time, Random is inte11ectually DISh0nest in not incorporating the counterpoint), the Ladders of Abstraction have more than two rungs to their ladders.

      By the way, the concept of Ladders of Abstract may well mirror Night Writer’s “engineering” viewpoint, but make no mistake – this is a legal concept. I thought Greg might appreciate this point that integrates Night Writer’s view fully into the appropriate legal view. That is, if he were to choose to be inte11ectually honest himself.

    3. 13.3

      Ignoring… anon…

      That is the best way to start and the only sane way to progress around these parts.

      1. 13.3.1

        Translation: “Wah, anon has been too critical of me and hurts my feelings. Just because I cannot answer his critical points, I have to pretend that my feelings are so hurt that I won’t engage on the merits.”

        P00r, p00r widdle Greg.

  3. 12

    Down below at 1.2.1.1.2 (but worth repeating here at top), Ben (perhaps in earnest) asks:

    prefer for the text to have explicitly abrogated Halliburton in full?

    The answer of course is that it has.

    You just need to realize why.

    I provide a hint below, but will repeat it here:

    Claims using language sounding in function are permissible through the Act of 1952 outside of the optional claim format provision of PURE functional claiming of 35 USC 112(f).

    This is true regardless of what is being described happens to be (or not to be), ANY consideration of “Point of Novelty.”

    The plain fact of the matter that the Act of 1952 opens up the use of terms sounding in function – and does so IN MORE THAN JUST the optional section of 35 USC 112(f) is why the totality of Halliburton was abrogated.

    It is a logical fallacy to STOP at the point that 35 USC 112(f) eliminated a portion of Halliburton, because the Act of 1952 was much more than merely adding an option as to PURE functional claiming.

    The plain fact – and it cannot be stressed enough – is that terms sounding in function were liberated in the Act of 1952.

    And this liberation was OUTSIDE OF the 35 USC112(f) option of PURE functional claiming – regardless of “Point of Novelty”

    One has full power to choose to feel how they want to feel about this historical event. One has NO power to deny that the historical event took place and what that historical event encompassed.

    1. 12.1

      ““prefer for the text to have explicitly abrogated Halliburton in full?”

      The answer of course is that it has.

      You just need to realize why.”

      That’s not “explicit”. Shame on you.

      1. 12.1.1

        One cannot shame the shameless.

      2. 12.1.2

        First comment currently in the filter…

        (probably because of the word Pa thet ic)

        But Ben, you seem confused and want “exact,” when explicit includes things that are NOT exact;

        A quick googled dictionary meaning includes:
        1. stated clearly and in detail, leaving no room for confusion or doubt.

        As I explicated, when one looks clearly at ALL the detail involved, and understands the FULL impact of the liberation of terms sounding in function, and how this liberation was NOT constrained merely to the optional PURE functional claiming format provided in a part of the NEW 112 as passed in the Act of 1952, the complete abrogation of Halliburton IS undeniable, with NO room left for confusion or doubt.

        What you have though, is those — also for reasons that I have explicated — NOT WANTING what happened in 1952 to be recognized AS having happened.

        As I pointed out, everyone is free to feel however they want to in regards to WHAT DID HAPPEN in 1952 – but people (especially attorneys) are NOT free to advocate by falsifying what did happen in 1952.

        1. 12.1.2.1

          We have all seen your incredibly offensive “arguments” crash and burn, Bildo, so many times that it’s positively mind blowing that you think you have any credibility left here, especially when it comes to statutory interpretation.

        2. 12.1.2.2

          Your position appears to be that once someone understands your interpretation of the 1952 act, it is so unquestionably correct that your interpretation is “explicit”.

          That is frankly an embarassing argument.

          1. 12.1.2.2.1

            There are no shortage of embarrassing arguments in this world. Perhaps, however, it might still be worth toting up the evidence for and against the “total abrogation” theory.

            For:
            1) As you note below (8 Jun at 12:55 pm), there are a lot of people out there who act as if Halliburton is a total dead letter. It is strange to think that this means that there are litigators leaving $1,000,000 bills lying on the ground.
            2) The CAFC has never yet sustained the invalidity of a claim on the basis of Halliburton.

            Against:
            1) It is in the nature of precedent that it stands in place until reversed. No one, however, can point to any language in the 1952 Act or the AIA that constitutes a complete abrogation.
            2) The pre-1982 (i.e., before the creation of the CAFC) case law from the regional circuits have plenty of cases that apply Halliburton as a binding precedent to invalidate claims.
            3) The CAFC alludes to Halliburton as if it still has precedential effect (even if they never use it as such). Amdocs Ltd. v. Openet Telecom, 841 F.3d 1288, 1295 (Fed. Cir. 2016).

            1. 12.1.2.2.1.1

              To my mind, the “for” arguments consist entirely of the “everyone says” kind of evidence, which is the weakest sort. Therefore, I find the arguments against the “total abrogation” theory much the more convincing. It does not help that the principle proponents of the “total abrogation” theory have a demonstrated track record of intellectual bad faith in the service of self interest.

              1. 12.1.2.2.1.1.1

                Er, or rather the “principal proponents…” Mea culpa.

              2. 12.1.2.2.1.1.2

                As if Greg does not resemble the very accusation that he levels…

            2. 12.1.2.2.1.2

              I almost forgot one of the most important data points on the “against” side: Federico’s commentary on the 1952 act’s text!

              1. 12.1.2.2.1.2.1

                One needs to properly read and understand Federico’s commentary, which is a mix of both objective views and subjective opinions.

                When read properly, Federico’s commentary SUPPORTS the view that I have provided, in that using words sounding in function were liberated with the Act of 1952 (and done so OUTSIDE OF the option of PURE functional claiming of 35 USC 112(f)).

                Greg — again — is being inte11ectually DISh0nest in order to attempt to shore up his viewpoint.

            3. 12.1.2.2.1.3

              No one, however, can point to any language in the 1952 Act or the AIA that constitutes a complete abrogation.

              Objectively false.

              I have provided that explicit and detailed reasoning. Greg merely has chosen NOT to read and understand this. That he then tries to ride the high horse of “Inte11etual honesty” is astounding.

            4. 12.1.2.2.1.4

              One more omitted points of evidence against the “total abrogation” theory: The PTAB’s precedential opinion in Ex parte Miyazaki.

              1. 12.1.2.2.1.4.1

                Interesting point.

                Not sure that the label of “omitted” fits, given any sense of lack of mens rea, but if you want to ADD this as a potential discussion point, by all means go ahead and do so (which of course, does mean that you might want to EXPLAIN why you think the Miyazaki case, coming from the NON-Article III entity of an executive branch agency has a force of statutory law that is on point to the issue at point).

    2. 12.2

      You keep saying “pure functional claiming” but there’s nothing “pure” about the functional language that is permitted by 112(f). It necessarily comes with structural baggage. And if you don’t have that structure at the point of novelty your claim is dead because you can’t rely on the “new” function to distinguish your claim from the otherwise identical prior art.

      It’d be trivial to write a statute that permits the claiming of “new functionality” or forbids invalidation of a claim merely because the claim (however construed, in light of the spec or not) does not distinguish the invention from the prior art in structural/physical terms. But that wasn’t done. Nothing close to that was done.

      1. 12.2.1

        And you keep on obfuscating about what everyone recognizes (and coined by Prof. Crouch as the Vast Middle Ground) carries in relation to – and contrast of the optional 112(f) treatment between merely words sounding in function and true PURE functional claiming.

        There is NO “Point of Novelty” hook for you to grasp.

        It matters NOT AT ALL that YOU feel anything would or would not be trivial or somehow different. The law — as written — just does NOT support your feelings, and I am entirely correct in how I have explicated the law.

        As they say, “S vcks to be you.”

        1. 12.2.1.1

          It’s not clear why you think DC coined the phrase “vast middle ground”, nor is it clear what possible relevance it has to the discussion over claiming function at the point of novelty.

          Go take a shower. You stink.

          1. 12.2.1.1.1

            it’s not clear

            LOL (again).

            It’s perfectly clear – and it is also perfectly clear why you do not want to accept that it is perfectly clear.

            Here’s a hint for:

            develop a cogent and inte11ectually honest legal argument – based on the words of Congress in the Act of 1952

            that supports whatever it is that you think there to be as far as your “Point of Novelty,”

            that explains — in the face of the fact that Congress liberated the use of words sounding in function throughout the new 112, and NOT limited to merely one optional aspect in 112(f) — what you want the takeaway to be as regards your aversion to words sounds in function, and

            that explains WHY want I have provided does NOT match the law as written by Congress (of course, in an inte11ectually honest manner, which means that your mindless and vap1d “no one cares what anon says” is NOT an explanation).

            In other words, DON”T be like Malcolm.

  4. 11

    So as is typical there are these voices below that have no idea what they are talking about yapping it up.

    Let’s just ask one simple question: let’s say I have a set of claims to an invention that includes a comparison of two voltages. Should someone be able to “design around” my invention by looking at my spec and figuring out that my spec does not include a well-known circuit at the time of filing my application for voltage comparison that I did not include in the spec?

    Assume the invention is something that just needs to compare the voltages and that the combination of the elements are novel and non-obvious and pass Alice. And I am thinking of real set of claims that I wrote where the company I worked for has licensed the claims for 10’s of millions of dollars.

    (And none of the usual shxt where you lot go off point.)

    1. 11.1

      I’d bet that I am not going to get one good answer to this post. Why? Because it illustrates the problem with what the anti-patent judicial activists are up to and they will try to skip over it.

    2. 11.2

      The method for comparing two voltages is well known.

      Many functional claims state only a desired result, the result is not known at all (and is the point of novelty), and the specification does not contain a single example of how to obtain that result.

    3. 11.3

      Night, you can draft your specification stating that other circuits known in the art can be used instead of the disclosed circuits. These circuits are enabled, and you meet the written description requirement. A drawback f such statement could be that it then becomes more difficult to carve out some circuits from the scope of the claims. In any case, using functional language in the claims is not that much of a problem if you do it carefully.

    4. 11.4

      N.W I assume you are addressing here the current Republican Senate Committee proposed 112(f) amendment, not a purely functionally claimed one-step method claim which is already subject to, e.g., the Judge Rich decision In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983) in the 1.xx> comments way below here.
      In any case, on point, you have not actually asked a “simple question” since you have not indicated the form or limitations of your claim? [Presumably it is more specific than “I claim the step or means for comparing two voltages.”]

      1. 11.4.1

        Paul, “Assume the invention is something that just needs to compare the voltages and that the combination of the elements are novel and non-obvious and pass Alice.”

        Maybe I didn’t say it very well. The claim is a multiple step method where one of the steps includes comparing the voltage difference between two circuits.

        So—I think it is pretty clear. The point being is that if I use purely functional language it should not be limited to embodiments disclosed in the specification for the reasons I give.

        1. 11.4.1.1

          “The point being is that if I use purely functional language it should not be limited to embodiments disclosed in the specification for the reasons I give.”

          While you’re entitled to what you want the law to be, I hope you recognize that this is neither the law now nor under the proposed amendments.

          Somewhat tangentially, how did things actually work post-Halliburton and pre-1952 act? From the highlights of Halliburton, it seems like a purely functional element would be fine as long as it was not a point-of-novelty. That sounds exactly like what NW wants. So why was this regime bad for patentees?

          1. 11.4.1.1.1

            I suppose a purely functional limitation was interpreted the same way it would be today, that is, it would have its plain meaning. There are several words that are commonly used in claims that refer to a class of objects that perform a function, for example, a fastener, a link, a sensor, a thermometer. There is nothing extraordinary with functional limitations.

            1. 11.4.1.1.1.1

              Absolutely (yet note the obfuscations)

            2. 11.4.1.1.1.2

              “I suppose a purely functional limitation was interpreted the same way it would be today, that is, it would have its plain meaning.”

              Where do you practice that 112(f) doesn’t factor into the interpretation of a purely functional limitation?

              1. 11.4.1.1.1.2.1

                Ben, you are right, if 112(f) is invoked, then the interpretation of the claim changes from prior to when 112(f) was enacted. Otherwise, nothing comes to my mind as to why functional language would not have been interpreted according to its plain meaning.

                1. PiKa,

                  I think that you may have an inadvertent typo in there – but you come close (closet on this thread) to reflecting what I have been saying (and say again at post 12 above).

          2. 11.4.1.1.2

            “From the highlights of Halliburton, it seems like a purely functional element would be fine as long as it was not a point-of-novelty.”

            A later Supremes case clarified that the Halliburton rule was limited to functional claiming at the “exact” point of novelty, consistent with earlier cases such as GE v. Wabash Appliance. The name of the case escapes me. Bueller?

            “That sounds exactly like what NW wants. So why was this regime bad for patentees?”

            Uh, because it makes it harder to get a patent? And gettin’ patents is good. Because, patents.

            1. 11.4.1.1.2.1

              To be clear, IBM started the “patents is good.” They got lots of patents because when some small company threatened them with infringement they said “yeah, ok, but here are a thousand of our patents that you are infringing. So maybe you it’s in your interest to cross-license.” Then along comes the NPEs (i.e. trolls). Different paradigm. OOOPPSSS!!!

              1. 11.4.1.1.2.1.1

                To be clear, IBM started the “patents is good.”

                To be clear, this is absolutely false.

                IBM at the earliest points thought that software was not worth their efforts to promote or protect, and they wanted to only focus on hardware.

                When the evolution of “technology” went differently than they thought it would (that is, when the design choice in “wares” favored the “soft” over the “hard”) they nearly lost the company, and reacted strongly in the opposite direction. THIS is why they became the “let’s get as many patents as possible” standard bearer.

                The Armageddon approach is a distinct business strategy that developed with some – but notable not TOTAL – overlap.

                And yes, the Big Corp’s DID turn to a “Game of Kings” and build the biggest war chests, thrown money at getting as many patents as possible (even for “d um b” things) approach, AND this business model — notably adopted by many of the Big Corp ilk — WAS defused rather unceremoniously by the fact that a non-practicing entity that owned a property right was immune to the Armageddon approach — which directly brought about the Efficient Infringer mantra of Patent Tr011s.

                That OOOPPSSS!!! was NOT a bad thing.

                Where the bad thing happens is when people do not critically think as to whose benefit (hint: not the consumer) the entire “Ohhh Nooo Tr011s” scare tactics support.

                Your post at 11.4.1.1.2.1 does NOT portray the necessary nuance to the “Rest of the Story” (in the venerable Paul Harvey tones).

                1. Patent trolling isn’t a scare tactic. It’s an expression used to describe actual people and their documented behavior.

                  People … like you, Bildo. And your friends.

                2. Guess who coined the term – and why.

                  Sorry Malcolm, but you are factually wrong here.

                  Actually, I am not sorry at all that you are factually wrong here. I am sorry that you have to be a blight that cannot accept the fact that you are factually wrong.

                  Are there “bad actors?”

                  Certainly. What area of human endeavor is free from bad actors?

                  Is the situation as portrayed by the Efficient Infringers? Absolutely not. Verifiably not. Verified not.

                  But go ahead and stick your head in that dark place and pretend otherwise. Pretend that “patents are the worst thing ever” even as you profess to be actively engaged in obtaining “the worst thing ever” for your “clients” (gee, while you are at it, pretend that any such activity does NOT cause you massive cognitive dissonance).

                  But above all, “go ahead” and continue that record setting blight that includes being the one with more posts expunged than all other posted combined.

                  Or is that another fact that happens to escape your attention? That you have someone else to blame for?

                3. “THIS is why they became the ‘let’s get as many patents as possible’ standard bearer.”

                  Boy, anon only rarely slips and makes the mistake of saying anything specific and refutable.

                  IBM was the number 1 corporate assignee of patents issued between 1970 and 1999 — 34,564. Only a relatively small number were “software” patents — 6,365 — where the title or abstract includes the word ‘software’, ‘computer’, or ‘program’ and not ‘chip,’ ‘semiconductor,’ ‘bus,’ ‘circuit,’ or ‘circuitry.’

                  So, you see, the IBM strategy of getting lots of patents pre-dated IBM’s later focus on software (24,085 “software” patents between 2000 and 2015).

                  Now respond with paragraphs of randomly generated word salad. Avoid the specific and refutable. Don’t skimp on the meaningless repetition of earlier word salads.

            2. 11.4.1.1.2.2

              A later Supremes case clarified that the Halliburton rule was limited to functional claiming at the “exact” point of novelty, consistent with earlier cases such as GE v. Wabash Appliance. The name of the case escapes me. Bueller?

              You may be referring to yet another PRE-1952 case that Ned Heller liked to offer support for his views on Halliburton.

              However, that case – just like Halliburton did not survive the Act of 1952.

            3. 11.4.1.1.2.3

              And gettin’ patents is good. Because, patents.

              Your attempted slight completely misses just why “Because, patents.” is a GOOD thing.

              You appear to show disdain and gloss over the fact that HAVING a patent system has always been recognized AS a GOOD thing — in and of itself, and so much so, in fact that its allocation of authority to a specific branch of the government was directly included in the Constitution itself.

            4. 11.4.1.1.2.4

              Morse, this “point of novelty” seems to be dicta to me, or at least, it is a distraction from the essential question. In Halliburton, or in other case, the question is simply whether the full scope of the claim is enabled.

              1. 11.4.1.1.2.4.1

                Exactly.

                Perhaps the easiest example of the obfuscation that you recognize is from Malcolm Mooney and his eternal falsehood of wanting to take the optional claim format of “objective physical structure” and (somehow) turn that optional claim format into being NOT an option.

                Note that he v0m1ts his propaganda at any point of use of terms sounding in function, and does NOT limit his rhetoric to those cases for which the other optional claim format of PURE functional claiming is provided.

                Note as well that he often plays a “move the goalposts” game for claims that are NOT PURE functional claiming by couching his comments as if the claims ONLY had the elements that were to be performed ENTIRELY in the mind, and thus “spins” the subject claims as IF they were “entirely” in the mind even as the claims themselves are NOT “entirely” in the mind.

                As I have noted, the very select group of posters clamoring the most on this thread: chiefly Malcolm, Random, and Greg (and his “dozens” moniker that merely attempts to not be stifled by the Blog’s “Count Filter), and to a certain degree, Ben, 6, and my pal, the shifting historical pseudonym poster, ALL partake in this type of distraction.

                There is a fervent desire to DENY just what happened in the Act of 1952 and the plain fact that ALL of Halliburton was abrogated.

                It is beyond clear exactly why this is being pursued so feverishly. While Random makes plainly false excuses, the plain fact of the matter is that while innovation in the computing arts (and as that innovation spreads through MOST ALL of the other non-Pharma art units) is simply most easily described in terms that sound in function; terms sounding in function DO appear in most all art units (and Big Pharma is a notable exception).

                It is also beyond clear that these descriptions of features and claim elements that DO sound in function are NOT PURE functional claiming.

                It is also beyond clear that the attempt to pigeonhole these items AS belonging TO PURE functional claiming, is seen as a path to employ a more strict than is required under the law full scale listing of items in the specification…

                – a practice NOT engaged in by those who DO practice in this area (and that IS meant as a smack in the face to Greg who does not practice in this area, but who deigns to throw out emotional labels such as “lazy” when he really has no C1ue what he is talking about) –

                … in order to toss out protection for such innovation.

                When all of the cards are put on the table, and all of the animus is acknowledged, a critical mind CAN cut through all the obfuscation.

                1. Please jump into my briar patch, because Malcolm wants to pretend that he does not understand the plain words being used in the discussion…

            5. 11.4.1.1.2.5

              I believe that the case of which you are thinking is Faulkner v. Gibbs, 338 U.S. 267 (1949).

              1. 11.4.1.1.2.5.1

                Yes – The late Ned Heller would often offer a PRE-1952 case as “evidence” that Halliburton survived the Act of 1952 (as I would point out to him).

    5. 11.5

      I have a set of claims to an invention that includes a comparison of two voltages. Should someone be able to “design around” my invention by looking at my spec and figuring out that my spec does not include a well-known circuit at the time of filing my application for voltage comparison that I did not include in the spec?

      You specify in #11.4.1 below that this is a method claim, so I would answer that no, it should not be possible to design around your claims using a well known circuit that is not described in your spec. In the context of a method claim, any one voltage comparison circuit is the “equivalent” of any other. As I understand the proposed §112(f) revision, so long as you have disclosed any voltage comparison structure at all, the other well known circuits will literally infringe under the “equivalents” provision.

    6. 11.6

      I am thinking of real set of claims that I wrote where the company I worked for has licensed the claims for 10’s of millions of dollars.

      Citation to patent number(s) or it never happened.

  5. 10

    Why cannot a legally defective claim format like a single-function claim be disposed of on a preliminary motion as a purely legal issue per Markman v. Westview Instruments (1996) holding 9-0 that claim construction is a matter for the court?

  6. 9

    If a functional element is construed to mean the structures disclosed in the specification and their equivalents rather than structures that are known to anyone skilled in the art at the time of filing the patent application and their equivalents, then a patent application needs to include everything that anyone skilled in the art knows.

    The arguments that are being made by the anti-patent judicial activists do not even pass the straight face test. There is absolutely no reason to limit the structures to what is disclosed in the specification.

    I have quoted directly from engineering textbooks used at MIT that expressly say that functional language is meant to capture all the known solutions to a problem and the reason the functional language is used is because there are so many known solutions.

    This is another situation where we have money trying to trump reason.

    1. 9.1

      The big thing about Halliburton, although I admit it has been a couple of years since I read it, is what Halliburton does is limit the “novel” element of the claim to only disclosed embodiments in the specification.

      The biggest problem with Halliburton is that it attempts to piecemeal claims and determine a novel element. So there is no combination of elements in Halliburton, but a reduction to a single novel element and then judicial activism to limit the scope of the claims to only embodiments of this “novel element” to only what is disclosed in the specification.

      Halliburton is on a par with “flash of genius” in its attempt to create rules to limit and invalidate claims.

      1. 9.1.1

        The other thing about this too is the absurdity of these abstract elements about different structures that are being covered by the claim.

        Anyone that actually works as a patent attorney in these fields and works with inventors knows that it is a great challenge to try and write claims that can’t easily be designed around. Trying to include known ways of performing functions is perfectly fine and exactly what should be done.

        I’ve written claims that have generated many millions of dollars of licensing money.

        I get so angry thinking about these issues because the people on the other side of this issue are frankly intellectual dishonest and ignore plain facts.

        1. 9.1.1.1

          Anyone that actually works as a patent attorney… knows that it is a great challenge to try and write claims that can’t easily be designed around. Trying to include known ways of performing functions is… exactly what should be done.

          Exactly. This crystallizes the relevant point of debate precisely. You are sitting on the knife-edge cusp of understanding, and need only shift a micrometer further to arrive at good faith insight.

          Yes, it is hard to write claims in a way that excludes the prior art, but does not leave open an obvious design-around loophole. Yes, functional language untethered to particular structures is a lazy but effective way of closing that loophole. So far, so good.

          The final insight you need in order to understand why Random Guy is correct below is the realization that the patent system does not exist for the benefit of patent attorneys (or even their clients). Rather, the patent system exists for the benefit of the public.

          Good public policy wants that it should be easy to design around claims. That encourages multiple market entrants, which is good for consumers (i.e., the public). Patentees (or more properly, their attorneys) should have to work to close off all the commercially plausible design-around loopholes, and devil take the hindmost if a lazy attorney leaves one or more open. That is a feature—not a bug—of a rule to discourage functional claim language. A well-calibrated patent system should seem daunting to a lazy attorney.

          1. 9.1.1.1.1

            dozens>> The final insight you need in order to understand why Random Guy is correct below is the realization that the patent system does not exist for the benefit of patent attorneys

            That is not a legal reason. That is a policy reason. Wow. This kind of nonsense post really irritates me.

            The point of the design around is that if you are limited to the structures disclosed in the spec and their equivalents, then the copier can just use a structure you forgot to put in the spec but was known to perform one of the functions and they won’t infringe.

            I don’t think you understand this. I think you are completely clueless and have no idea what you are talking about. I do know what I am talking about. I’ve have patented inventions that have gotten 10’s of millions in licensing from international corporations that would just design around if they could. Some of the patents I’ve written are to famous consumer electronics that you would know.

            Again–you have no idea what you are talking about none. Just as a simple example, if part of the invention includes doing a comparison of two voltages, then –now think boy–then my invention should get to include all the known ways of comparing two voltages. I should not have to put ever known way to compare two voltages in the spec.

            Where do people like you come from? No clue and yet willing to yap their mouths off.

            1. 9.1.1.1.1.1

              The point of the design around is that if you are limited to the structures disclosed in the spec and their equivalents, then the copier can just use a structure you forgot to put in the spec but was known to perform one of the functions and they won’t infringe.

              If the structure you left out of the specification isn’t an equivalent, then they don’t have the same machine. The fact that you left it out just means you malpracticed, not that they didn’t design around your patent.

              Again–you have no idea what you are talking about none. Just as a simple example, if part of the invention includes doing a comparison of two voltages, then –now think boy–then my invention should get to include all the known ways of comparing two voltages. I should not have to put ever known way to compare two voltages in the spec.

              If you want to argue that your invention is novel or non-obvious because you perform the function of comparing voltages, then you can’t turn around and rely upon “all the known ways of comparing two voltages.” That’s all there is to it – a realization that you can’t have your cake and eat it too.

              The novelty of a claim can never be described by its functional result. There is never a time when one invents a function.

              1. 9.1.1.1.1.1.1

                Here again, Random is approaching this as if the Ladders of Abstraction only have two rungs.

                The novelty of a claim can never be described by its functional result. There is never a time when one invents a function.

                Perfect example of a confused and conflated statement that ends up being wrong on all of the different aspects of law BEING confused and conflated.

          2. 9.1.1.1.2

            dozens >>

            People that really do this for a living know what they are talking about. Try to understand what I am saying. Try. If you don’t understand what I am saying, then sit there quietly like you should and stop saying ridiculous things.

            Just working through a few real examples would help you understand. I have to do this for real. Take an invention from a large company and then write a claim that can be licensed.

            1. 9.1.1.1.2.1

              People that really do this for a living know what they are talking about. Try to understand what I am saying.

              Fair enough if you think so. I cannot prove the contrary to you anymore than you can prove your point to me. The good news (I suppose) for both of us is that the laws of probability are such that it is unlikely that you are an outside counsel doing work for me. Therefore, I have no occasion to be personally dissatisfied with the kind of work product that you purport to supply, and you have no occasion to be frustrated with my evident truculence.

          3. 9.1.1.1.3

            “Good public policy wants that it should be easy to design around claims.”

            I think you’re a bit off here. Policy doesn’t want every claim to be easy to design around because there would be little incentive to disclose. Policy wants inventors to be rewarded comensurate with their contribution.
            The inventor who “invents” a result and needs to claim the immediately apparent multitude of ways of achieving that result, has not contributed much.

            1. 9.1.1.1.3.1

              I stand by my original assertion: good public policy wants that patentees (or more properly, their attorneys) should have to work to close off all the commercially plausible design-around loopholes, and devil take the hindmost if a lazy attorney leaves one or more open. If the patentee has a good attorney, who puts in the work to draft the patent well, then it is only just and right that the patentee should have exclusivity over the full scope of what s/he has invented and enabled. That is a good outcome from a policy perspective. If, however, the patentee gets lazy and leaves some commercially valuable scope unclaimed, that is an even better outcome from the policy perspective. That outcome achieves the best of both worlds: you have the maximum incentive effect (because the next would-be inventor looks at that failure and says to herself “I will not make that mistake”); but you also have earlier creation of a competitive market for the invented product or service, and competitive markets are good for consumers.

              1. 9.1.1.1.3.1.1

                Your “standing by that original assertion” has backtracked a bit there Greg.

                You moved from:
                Good public policy wants that it should be easy to design around claims.

                to:
                should have to work to close off all the commercially plausible design-around loopholes

                Your first statement does NOT indicate any level of care of the patent writer.

                THAT first statement is an egregious overstatement.

                You compound things because you “feel” (in an art that you are NOT involved with) that certain “tactics” are merely “lazy.”

                With all due respect to your “feelings”: F you.

                Stop being inte11ectually DIShonest and inserting your feelings into an area that is NOT your understanding. Take your Big Pharma “picture claims are enough” mindset and understand that THAT mindset does NOT universally apply to innovation in ANY OTHER art field.

            2. 9.1.1.1.3.2

              The inventor who “invents” a result and needs to claim the immediately apparent multitude of ways of achieving that result, has not contributed much.

              Nobody invents a result, regardless of how much you think they’ve contributed. Science is inductive. You can never prove that you possess all the ways of doing something. That’s why it’s overbroad to claim a function as your novelty.

              1. 9.1.1.1.3.2.1

                Alas, it is simply too bad for you that the Act of 1952 liberated writing claims that include elements sounding in function (and did so outside of the optional PURE functional claiming of 35 USC 112 (f).

                ALL of your feelings aside, you simply cannot dismiss the actual law.

        2. 9.1.1.2

          I’ve written claims that have generated many millions of dollars of licensing money.

          What are we supposed to make of this assertion? Apple of US pays hundreds of millions each year in licensing royalties to Apple of Ireland, because the Irish subsidiary owns Apple’s US patents. This allows the US subsidiary to show paper losses, while the profits appear on the books of the subsidiary in Ireland (where taxes are lower).

          In other words, a patent does not need to be especially solid in order to earn a lot of licensing revenue. Unless you care to name the patent(s) in question, it is not really clear that these alleged “millions” tell us anything about you.

          1. 9.1.1.2.1

            In other words, a patent does not need to be especially solid in order to earn a lot of licensing revenue. Unless you care to name the patent(s) in question, it is not really clear that these alleged “millions” tell us anything about you.

            More to the point, all it would take is one other equally terrible person on the other side to advise someone to sign a licensing agreement. A writes a ridiculous scope, B is impressed and pays up.

        3. 9.1.1.3

          Anyone that actually works as a patent attorney in these fields and works with inventors knows that it is a great challenge to try and write claims that can’t easily be designed around.

          Get better inventions. The number one reason people complain about a scope change making their invention too easily designed around is because the inventors didn’t really invent anything non-obvious. This especially happens when the invention is a particularly unimaginative solution to a previously undiscussed problem (probably so because the problem was so easily solved).

          I’ve written claims that have generated many millions of dollars of licensing money.

          Sure, so could I under your logic. I don’t understand why you just don’t write a scope saying “Here is one embodiment of my invention – a novel non-obvious chair – but that is only one embodiment. My invention is novel, nonobvious subject matter as of my filing date, of which my chair is just one example embodiment. I claim all novel non-obvious subject matter.”

          The biggest problem with Halliburton is that it attempts to piecemeal claims and determine a novel element. So there is no combination of elements in Halliburton, but a reduction to a single novel element and then judicial activism to limit the scope of the claims to only embodiments of this “novel element” to only what is disclosed in the specification.

          This rule is absolutely no different from the rule that you don’t need to describe or enable things well-known to the art with particularity. That’s why you can just mention a processor to enable a processor, and not write specifications that have to constantly reteach the making of a processor. Apparently you want to distinguish between novel and non-novel there, don’t you?

    2. 9.2

      Not to pick too fine of a nit, but it is not> merely “money” trying to trump reason – just look at the level of effort below by those with a philosophical agenda to carry.

      The attacks on a strong patent system do NOT come just from one philosophy.

      Sure, you have (what I call the Right, and I recognize that I ‘bastard1ze that term a bit) the Big Corp, established entities that do not want others to have strong patents, and the disruptive innovation that comes from such strong patents, but you also have (what I call the Left, and this is more in line with the extreme political Left) those that simply despise the notion of personal property and some type of “it belongs in the commons” mindset.

      1. 9.2.1

        You are nuttier than a fruitcake, Bildo. Wow.

        1. 9.2.1.1

          The only “wow” is how much that the truth I speak gets you all nervous.

          But it’s not as if that truth is all that difficult to grasp.

          Uncomfortable for you? Sure.

          Difficult? Not at all.

  7. 8

    (B) Another way of thinking here is that the novelty of the claim is administering a particular drug — but we don’t know the details of that particular drug is because it is described functionally.

    If only there were some case that specifically dealt with a claim to a compound defined by function rather than structure.

    Oh yeah, Perkin’s Glue.

    1. 8.1

      the novelty of the claim is administering a particular drug — but we don’t know the details of that particular drug

      Hey, they provided no less than eight specific examples of drugs that were definitely not the drug in question. How many hints do you need? ;)

  8. 7

    Of course, Halliburton was abrogated by the 1952 Patent Act with the adoption of what is now known as 35 U.S.C. 112(f):

    Just to be clear since use of the term “abrogated” misleads some people (see anon for example) – What the 1952 act was allow for the POSSIBILITY that one MAY avail themselves of means-plus-function claiming, which has the effect of substituting the structure of the specification for the functionality in the claim. Since Halliburton was written in means language, presumably it would be construed in means-plus TODAY, and therefore would reference a particular structure. Because of that, the ultimate holding of invalidity of the pre-52 Halliburton case would disappear.

    What the 1952 act DID NOT DO was modify the law or logic for claims which claim function absent structure. In other words, if Halliburton’s claim was construed to not invoke means-plus (or its element rewritten so that it could not be seen as invoking means plus), the case would lead to the exact same result today as it did before the 1952 act. Because the vast majority of functional-at-the-point of novelty claims in fact recite insufficient structure for performing the function within the claim, and because most of them are not written in means-plus, Halliburton logic already applies to them.

    As one example, if the specification of an application claims to have invented new computer functionality in a particular context, and the claim is directed to a processor that performs known functions ABCD and new novel function E, the Halliburton logic applies. That is because element E is claimed as a function, the claim does not avail itself of 112(f), and the claim itself lacks sufficient structure for performing the functionality (as processors do not inherently include sufficient structure for performing E – if they did, citation to a processor would anticipate element E). Notably, virtually every computer claim is drafted in just such a manner – a processor performing functions A-E, with functions being allegedly novel, and without sufficient algorithmic structure in the claim for doing E.

    This claim is overbroad because it claims all possible logic that effects Result E, whether that logic is posited by the specification or not. Consequently, there’s a 112(a) rejection that should be made. Halliburton also applies, and there’s a 112(b) rejection that should be made. There’s also an argument that a claim to a function absent a concrete algorithm for achieving it is a claim to an abstraction without significantly more, so a 101 applies. The Office will never make any of these rejections.

    As I’ve explained before, the Supremes have never endorsed 112(a) WD, instead overbroad-but-enabled claims were traditionally caught between the rock of 112(b) (failure to particularly point out and claim) and the hard place of 101 (lack of jurisdiction over ideas). All of these overbroad non-means-plus functionally-defined claims are invalid, yet no rejections (save 103) are made on them.

    Halliburton stands for the unsurprising (at least unsurprising to anyone who has read historical patent cases) premise that describing a crucial part of an invention by reference to what it accomplishes rather than what it structurally is fails to point out and particularly claim the invention and thus runs afoul of 112(b). One cannot invent the full scope of a functional result, because one cannot prove that there are no other mechanisms that will achieve the result besides those disclosed in the specification. All one can invent is one particular machine which can be shown or proven to cause that result. An appropriately sized claim must be limited by the structure that achieves novel functionality, which consequently makes a claim to the function rather irrelevant. That has been, currently is, and must be the law, lest we harm advancement by giving out a single patent for the act of solving a problem rather than multiple patents for particular manners of solving the problem (each of which may improve upon former ones).

    This would be a great cert to take.

    1. 7.1

      This would be a great cert to take.

      +1

    2. 7.2

      Compare and contrast:
      PURE functional claiming, and
      Vast Middle Ground.

      Between the two of us, I am not the one that is confused.

      1. 7.2.1

        Between the two of us, I am not the one that is confused.

        The mating cry of the scoreboard loser.

        1. 7.2.1.1

          Coming from the one that refuses to recognize that the scoreboard is broken…

          (Maybe you missed some of the Tillis hearings…)

          1. 7.2.1.1.1

            To quote a not-that-great thinker at 1.2.1.1 –

            Calling something [broken] because it does not accord with what you want carries with it a recognition (read that as an admission) that the [law] DOES NOT ACCORD WITH WHAT YOU WANT.

            1. 7.2.1.1.1.1

              I have never denied that the Common Law written law is what it is – your “quote” does not carry to what you think that it carries to.

              Thank you for missing the point BOTH of that quote, as well as missing the point of not recognizing that a larger issue here is that the scoreboard is broken.

            2. 7.2.1.1.1.2

              …and since you obviously missed the reference, I suggest that you listen to the Tillis Congressional hearings.

            3. 7.2.1.1.1.3

              Hey Random,

              Have you bothered with the Tillis hearings yet?

              I ask because, you know, you want to seem to make it some type of “joke” that my views are this type of “lone wolf” thing, and the plain fact of the matter is that ANYONE willing to have a critical mind can PLAINLY see that the scoreboard is broken.

              I LOVE the fact that you attempt an insult, and the only one insulted is you.

    3. 7.3

      Yes, and one cannot claim every possible way of achieving a purely functionally described result without running into the “preemption” doctrine.
      And BTW the issues in this cert petition would also relevant to the current Congressional Committee witness panel debates on the proposed amendment to 102(f).

      1. 7.3.1

        Yes, and one cannot claim every possible way of achieving a purely functionally described result without running into the “preemption” doctrine.

        But do we need to pull out the bazooka to kill this fly? Isn’t it enough to say “You have to possess your whole scope, and you haven’t proven how wide this scope is or how you possess the whole thing, it’s entirely speculative?” I suppose, to the extent that the Federal Circuit requires some manner of evidentiary proof rather than just simply pointing to species, pointing to genus, and pointing out that there is little or nothing that bridges the gap between the two, that the law of 112(a) is insufficient currently, but people seem to have an issue with what is likely a constitutional requirement of preemption when they want to focus on the statutory language of 101.

    4. 7.4

      I should point out that Lemley (who many here seem to revile) has the perfectly fine but paternal thought that we should simply force or insist upon a means-plus characterization for computer functionality, as that would take all these invalid scopes we have and make them valid – saving bad drafters from their own malpractice. Practioners and inventors are up in arms over this suggestion.

      I am not inclined to save inferiority from itself, and I would just invalidate all the claims. In truth, I doubt it would much upset the boat on either malpractice or the industry. Either there exists a valid dependent claim, in which case there is no true harm, or a valid dependent claim can be created through reexam (in which case the harm is minimal), or the specification simply lacks a proper disclosure (in which case it is correct that the inventor walk away with nothing). I appreciate what Lemley suggests, but I disagree.

      Either way, he’s trying to help you guys. I have yet to see a good defense of why claiming computer novel functionality simply by function is valid under 112a/112b/101. In fact, I have yet to see much of a defense at all that isn’t Les’ tarted up ipse dixit of “Well its done, so therefore it must be valid” to which I say that the patentee in Alice thought what they did must be valid too.

      1. 7.4.1

        Wow – you really do not get it.

        How the “F” are you involved with innovation protection?

      2. 7.4.2

        Lemley… thought that we should simply force or insist upon a means-plus characterization for computer functionality… I am not inclined to save inferiority from itself, and I would just invalidate all the claims.

        O.k. Perhaps invalidation would be the better course, but in this vale of tears one rarely gets to perfection. Sometimes second-best is the most you can hope to achieve. I would like to explain why the proposed §112(f) revisions are a very good second best.

        Right now, when faced with a claim term sounding in function, the would-be market entrant must ask “is this a valid claim that does not invoke §112(f), a valid claim that does invoke §112(f), or an invalid claim?” The case law on this question is a confusing welter, and therefore the would-be market entrant is faced with a great deal of uncertainty as to what she is allowed to do upon entering the market. One does not want would-be market entrants to face any more legal uncertainty than is strictly necessary. They have enough business uncertainty, without the legal system adding more.

        By contrast, under the new §112(f), that question becomes much simpler (if not quite yet as simple as it could be). The tripartite question above simplifies down to the bipartite “is this a valid claim or an invalid claim.” No longer is there a question about invoking §112(f), because the §112(f) analysis is made compulsory, not optional.

        This is a considerable improvement—in public policy terms—over the status quo. I agree that there might be some other option that is better still, but that other option is not evidently on offer, while the revised §112(f) is. Let us not let the perfect be the enemy of the good. The revised §112(f) is an improvement that we should all support.

        1. 7.4.2.1

          Best….?
          Second best…?
          Lemley…?

          I nailed Greg’s anti-patent, anti-software streak in a recent comment (when he crowed about how he was not anti-patent because of his “101” stance).

      3. 7.4.3

        I have yet to see a good defense of why claiming computer novel functionality simply by function is valid under 112a/112b/101.

        And you never will because there isn’t one.

        Claiming newly programmed computers in functional terms is a purely judge made exception to the patent statutes.

        Logic applied to data is, on its terms, ineligible for patenting. Nobody disagrees with that. Somehow we’re told that tossing in the recitation of a prior art instructable computer or a “tangible computer-readable media” is supposed to change everything. Why? Because stored data is “the essence of electronic structure.” Who told us that? A guy named Randy Rader, who later resigned in disgrace over a scandal related to his advancing the private interests of a member of the bar, who (totally coincidentally!) happened to be Silicon Valley patent attorney immersed in the computing industry.

        1. 7.4.3.1

          “And you never will because there isn’t one.”

          To be sure, the only reasoning I’ve ever seen that is even partially convincing is that 1. congress intends to patent erything, and 2. if we don’t give them a functional claim then practically speaking they don’t get a patent, ergo we must gib patent. That’s literally the very best line of reasoning there ever will be on this front.

        2. 7.4.3.2

          Random, Greg, Malcolm, 6…

          You will be noted by the company you keep – is there a more anti-patent contingent of regular posters here than these folk?

          1. 7.4.3.2.1

            You will be noted by the company you keep – is there a more anti-patent contingent of regular posters here than these folk?

            Nobody intellectually honest would call most of the opinions on this or other threads anti-patent. My position in particular (which is the only one I need defend) would increase the number of patents and the number of claims, because it would result in many patents covering many solutions to a problem rather than a single overbroad scope which chills other innovation.

            If person B knows that they can only get a patent on their particular method of doing something but knows that person A holds a patent on all ways of doing something and that they will need to take a license to practice, B is more likely to abandon their entire application. I suppose from the standpoint of the public that act doesn’t matter since they already got B’s disclosure, but in terms of a healthy system and just enrichment, A should get a patent on A’s means, B should be free to get a patent on B’s means, and everyone should be happy.

            1. 7.4.3.2.1.1

              Nobody intellectually honest would call most of the opinions on this or other threads anti-patent.

              Absolute B$.

            2. 7.4.3.2.1.2

              Nobody intellectually honest would call most of the opinions on this or other threads anti-patent.

              Not least because the term “anti-patent” is a meaningless epithet. What does it even mean to say that “Pete is anti-patent”?

              Suppose I advocate extending the statutory term to 30 years from filing, instead of the current 20 years from filing. Does that mean that those who are content with the current 20 year term “anti-patent”? And if someone else comes along advocating a 40 year term, does that make me “anti-patent” when I stick with the 30 year term?

              Imagine I take up a campaign to amend the constitution to make it possible to do away with the novelty requirement. Are those who oppose my constitutional amendment (and who therefore want to retain novelty as a precondition for patentability) “anti-patent l”?

              The term is vacuous. Only the intellectually dishonest (or incapacitated) would use such a term. The term “anti-patent” is obfuscation and vituperation, but nothing more.

              1. 7.4.3.2.1.2.1

                Meaningless and vacuous? Only those…?

                LOL – more pure B$.

                GO figure that the ones that ARE anti-patent are claiming that they don’t understand what anti-patent means. Or want to claim that the use of the term itself is somehow “harmful” and only those using the term are the “villains.”

                Keep trying to kick dust Greg – that is SOOOO “inte11ectually honest” of you (especially given your inte11ectual cowardice because “ewww, I don’t talk to people that are harsh to my feelings.” How the “F” did you make it through law school with such over-sensitivities?

          2. 7.4.3.2.2

            I try to steel-man anon’s best arguments for him and he’s all “muh anti-patent!!!!!111!!”. That’s literally the best argument there currently is, hands down bucko.

            1. 7.4.3.2.2.1

              ?

      4. 7.4.4

        Lemley… thought that we should simply force or insist upon a means-plus characterization for computer functionality… I am not inclined to save inferiority from itself, and I would just invalidate all the claims.

        I agree that “invalidate all” is probably the best answer here, but in this fallen world, one frequently cannot achieve better than second best. I would like to explain why I think that the proposed revisions to §112(f) are a pretty good “second best.”

        Right now, a would-be market entrant looking at a patent claim drafted with functional terminology must ask herself “is this a valid claim that does invoke §112(f), a valid claim that does not invoke §112(f), or an invalid claim?”. The case law on these points is a confusing welter, so the would-be market entrant has a hard time coming to a clear answer. This is undesirable as a matter of public policy. There is enough market uncertainty for a would-be market entrant, without the law larding more uncertainty into the process.

        The proposed revisions—by changing the §112(f) analysis from optional to mandatory—reduces (if not quite eliminates) this uncertainty. Instead of the tripartite analysis above, the would-be market entrant faces only a bipartite analysis (valid or invalid?).

        This simplification is by no means perfect, but it is better than the status quo. The “invalidate all” option is probably better, but it is not really on offer right now, while the revised §112(f) is. We would do well not to make the perfect into the enemy of the good. Let us support the §112(f) as a step in the right direction, even if a step well shy of the ideal.

        1. 7.4.4.1

          Instead of the tripartite analysis above, the would-be market entrant faces only a bipartite analysis (valid or invalid?).

          I’d submit to you there is only one analysis – is the proposed invention substantially similar (in means-plus analysis) to a disclosed embodiment algorithm in the specification. Either it is, in which case you’re on dangerous ground regardless of what claims say, since there may be a continuation in prosecution, or it isn’t, in which case no valid claim scope can reach it.

          Functional language, properly argued against, is a relative nullity – Either the structure you have is similar to a disclosed structure, or it isn’t. Patent drafters think too much of themselves – their ability to “creatively” (validly) increase scope isn’t nearly as great as one may think. No amount of writing skill can turn a molehill into a mountain.

          The “invalidate all” option is probably better, but it is not really on offer right now, while the revised §112(f) is.

          Really? Cause it seems like all it would take is cert on the right case and for the court to hold to 100 year old precedent. That seems pretty simple to do. The only concern would be if it upends the industry, and as I said, that wouldn’t be the case. Besides, it’s certainly less of a threat to upend than Alice was and they went through with Alice.

          1. 7.4.4.1.1

            I’d submit to you there is only one analysis – is the proposed invention substantially similar (in means-plus analysis) to a disclosed embodiment algorithm in the specification. Either it is, in which case you’re on dangerous ground regardless of what claims say, since there may be a continuation in prosecution, or it isn’t, in which case no valid claim scope can reach it.

            I would love to live in so elegant and simple a world, but if I wrote my client a freedom-to-operate opinion based on that understanding, I would open myself to serious malpractice liability. Incidentally, why do you assume that the functional language occurs in the context of a computer implemented method claim (“disclosed embodiment algorithm”)? Functional claiming poses problems well beyond the software arts (as evidenced by the fact that *Eli Lilly* filed this petition).

            1. 7.4.4.1.1.1

              Incidentally, why do you assume that the functional language occurs in the context of a computer implemented method claim…?

              Because Random’s main animus is anti-patent in the software arts.

              As to “functional claiming” (and again, think Vast Middle Ground), David Stein long ago ripped your erstwhile partner to shreds on the fact that “functional claiming” is used in a vast array of art fields.

              It is the inte11ectual DIShonesty of Random to run amuck as if no counterpoints to his position have ever been raised.

            2. 7.4.4.1.1.2

              Incidentally, why do you assume that the functional language occurs in the context of a computer implemented method claim (“disclosed embodiment algorithm”)?

              I’ve only heard of it happening with regularity in chem, software, and business methods, and business methods is so screwed up on so many levels it isn’t worth talking about. I talk about it in software and not chem because I know software and I have always been bad at chem. I don’t deny it and the same principles apply, I just don’t talk about it.

              1. 7.4.4.1.1.2.1

                Please Pardon Potential repost:

                I’ve only heard of it happening with regularity in chem, software, and business methods

                LOL – more pure B$. – and an outlandish falsehood, seeing as YOU are the one to whom David Stein has taken apart on multiple occasions with counterpoints of examples of MANY art units.

                But because you and Greg align, Greg is only too willing to play pattycake with you and call your falsehoods “inte11ectually honest.”

                Anyone caring enough to follow along can easily see that Greg guts his own credibility in the clang of the exchange of your two cymbals of like-“minded” h0g wash.

          2. 7.4.4.1.2

            I’d submit to you there is only one analysis – is the proposed invention substantially similar (in means-plus analysis) to a disclosed embodiment algorithm in the specification. Either it is, in which case you’re on dangerous ground regardless of what claims say, since there may be a continuation in prosecution, or it isn’t, in which case no valid claim scope can reach it.

            I wish that we lived in a world so simple and elegant as this, but if I were to write a freedom to operate opinion for a client based on this analysis, I would open myself to malpractice liability.

            1. 7.4.4.1.2.1

              Why do you think that you would be open to malpractice to do what you (apparently) think is the correct thing to do?

              If you really believe that you face the serious threat of malpractice, you must have some view that what you seem to be in agreement with is NOT correct under the law. Yet, you do not provide a hint as to what that may be in your “ever so polite” (but inte11ectually cowardly) discussion with Random.

    5. 7.5

      a concrete algorithm

      How do we know that “an algorithm” is “concrete”?

      What’s the test for that? Is it similar to how we “know” that an argument is “solid”?

      Just asking.

      1. 7.5.1

        How do we know that “an algorithm” is “concrete”?

        The point at which it yields only a given output for a given input. If the algorithm results in multiple outputs for a given input it’s not a fully described algorithm.

        For example, comparing a value to “a threshold” in order to trigger a response is not concrete, its the abstract act of solving in different contexts (since different contexts will have different useful thresholds). Comparing the value to a definite value is concrete, even if the value is suboptimal in some or even all contexts.

        1. 7.5.1.1

          For example, comparing a value to “a threshold” in order to trigger a response is not concrete, its the abstract act of solving in different contexts (since different contexts will have different useful thresholds). Comparing the value to a definite value is concrete, even if the value is suboptimal in some or even all contexts.

          I wish you worked in private practice so that I could hire you. You have no idea how hard it is to get this point across to some of the outside counsel who work for me.

          1. 7.5.1.1.1

            You are a Pharma guy, Greg.

            1) what the F do you know about this topic?
            2) when the F would you be involved in this topic?

            Your “patty cake” with Random is inte11ectually DISh0nest.

        2. 7.5.1.2

          …and yet more of the inane “Ladders of Abstraction only have two rungs” type of thinking from Random.

          Factually and legally false mind you, but hey, that has never stopped Random.

    6. 7.6

      Or, to put it another way, a shorter way, a way that politicians can easily grasp, claims that do no more than define a problem to be solved should not be allowed to go to issue. The reward of 20 years of exclusive rights is grossly excessive, for doing no more than announcing a problem to be solved. As you say it hinders rather than promotes technical progress.

      To the contrary, patents are to reward those who solve a problem and then, in a claim, define the solution that they have invented, a solution which they enable, over the full width of that claim, in their accompanying specification.

      1. 7.6.1

        Unfortunately, too many think that “solve a problem” means to define generic guideposts that are so vague as to be meaningless.

        It would be as if one wrote “To solve crimes investigators should interview witnesses and collect forensic evidence until they determine who committed the crime” as if, now that one is given such stellar guideposts that are enabled for only the most basic of examples, there would be no other unsolved crimes ever.

        1. 7.6.1.1

          …nice two-rung ladder there Random.

  9. 6

    This seems like a straight up written description issue, right in line with Ariad v. Eli Lilly (CAFC 2010).

    Recall Ariad’s claim (and, yes, this was always a ridiculous claim):

    1. A method for inhibiting expression, in a eukaryotic cell, of a gene whose transcription is regulated by NF-κKB, the method comprising reducing NF-κKB activity in the cell such that expression of said gene is inhibited.

    The issue is a claim that covers an incredibly broad genus of compounds, where the compounds are described solely in terms of their function. Disclaiming certain known compounds with the desired activity can’t solve the problem. If anything, that makes the problem worse.

    Based on the facts presented in D’s post, the priority application identified two examples of compounds that could work in the claim but the claim covers an infinite number of compounds of unknown structure. Crucially, the priority spec fails to even disclose the compound (tadalafil) whose administration by the defendant was alleged to infringe the claim!

    Claims like these are so bad that it’s difficult to criticize them and stay within the limits of the language of a single statute. Yes, this problem arises in every instance where the point of novelty is expressed in purely functional terms. Currently, of course, there is a huge exception in the law which permits programmed computers to be claimed functionally at the point of the novelty. To my knowledge, it’s the only such exception (the so-called “antibody exception” never got off its knees before it was obliterated by the CAFC) and unfortunately it’s an exception that has seriously and negatively impacted the entire patent system. How did that happen? Mainly by confusing people who lack the intelligence to understand (or simply refuse to understand) that it is an exception, and there is no rational justification for it. The exception was created out of thin air for the benefit of wealthy players of the patent game, at the expense of everyone else and (most importantly) at the expense of the system’s credibility. The AIA was passed primarily to put the brakes on the damage being caused (much to the consternation of the beneficiaries of the exception), along with the Supreme Court’s eligibility decisions (the people flipping out over those decisions are mostly the same people who flipped out over the AIA).

    It almost goes without saying, but once an entitlement is created, it’s difficult to take it away from people. Especially rich people.

    1. 6.1

      Oh N0es!!!

      Point of Novelty
      terms sounding in function

      0h, the calamity!

  10. 5

    This is interesting. I may be wrong about this, but I thought “no functional claiming” was more of a general policy than a “rule.” Dennis’s post seems to say that Halliburton treats functional claiming as an indefiniteness problem (and is thus likely still good law, subject to the exception of 112(f)). I haven’t seen modern cases address “functional claiming” through the indefiniteness lens, and I wonder if Lilly argued indefiniteness below.

    The thing that seems most odd to me about this petition is that Lilly doesn’t really try to fit its challenge into one of the boxes of 35 USC 112 (or 102 or 103). If the patent claim is too general (e.g. claims all ways of reaching a result, while only disclosing one way), that’s a written description problem or maybe enablement. If it claims a function without disclosing a structure to perform that function, that’s a 112(f) problem. And again, as the post seems to say, if the claim is purely functional and not a 112(f) claim, then under Halliburton maybe that’s an indefiniteness problem. And if, as Lilly says, the claim is to something Lilly had already invented, that’s a 102/103 problem. The general upshot of the Patent Act is that most functional claims will be invalid under one provision or another (maybe 112(b) indefiniteness), but here Lilly seems to be arguing that there’s a separate nonstatutory no-functional-claiming doctrine. Interesting if true, but I’m skeptical (and have probably missed something important). If Halliburton is best understood an indefiniteness case, then maybe Lilly’s petition has to be vague and general because it didn’t (by which I mean I suspect it didn’t) argue indefiniteness specifically to the district court.

    Also, is it normal to just throw around the word “shadowy” whenever you want? The petition doesn’t give any facts about the respondent other than that it’s based in Germany and is an NPE. It’s a neat word, and I was eager to read further to see what’s shadowy about E. UroPep, but didn’t see anything.

    1. 5.1

      There are plenty of cases that feature “functional claiming” – quite apart from 35 USC 112(f) and there is FAR too much obfuscation going on in regards to somehow wanting to NOT have Halliburton abrogated.

      The general upshot of the Patent Act is that most functional claims will be invalid under one provision or another

      Most definitely NOT SO. Prof. Crouch even coined a term that fits here: Vast Midle Ground.

      1. 5.1.1

        I thought I included enough qualifiers in my comment, but perhaps should have said purely functional.

        1. 5.1.1.1

          lol – no problem, dcl. Apologies if the reply came across brusque, but there are MANY only too willing to muck up the understanding of 112 as written by Congress in the Act of 1952 and “functional claiming.”

          1. 5.1.1.1.1

            no problem. these details matter

            1. 5.1.1.1.1.1

              Clearly not to the select group of anti-patent muck-rakers on this thread.

    2. 5.2

      Re: “The thing that seems most odd to me about this petition is that Lilly doesn’t really try to fit its challenge into one of the boxes of 35 USC 112 (or 102 or 103).”
      Indeed that would occur to many patent practitioners, but to the Sup. Ct. a cert petition accusing the Fed. Cir. of ignoring a prior Sup. Ct. decision [such as Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946) here] may be far more effective.

      1. 5.2.1

        It’s a 112b failure to point out and particularly claim. The reason it may be difficult to discern is because there’s a lot of post-52 CCPA cases which argue that definite overbroad scopes are solely tested by 112(a) (which is why they had to invent Written Description) when previously claims which failed to accurately track the structural description in the specification were failures to point out and particularly claim the invention.

        When the spec describes a structure that performs a function, and the claim claims the functional result but not the structure for getting there, an argument that the claim is drawn to the structure results in a 112b rejection (Perkin’s Glue, GE v. Wabash), and an argument that the claim is drawn solely to the functional result was a 101 judicial exception rejection (Morse). Under the post-52 CAFC logic, the argument would be it is a 112(a) WD violation, but they have evidentiary standards for 112(a) that the Supreme’s never required for the 112(b)/101 dichotomy. Resolving that evidentiary discrepancy would be the only reason this is not a great case to take.

        1. 5.2.1.1

          112(b)/101 dichotomy.

          No
          Such
          Thing

          You confuse, conflate, and get BOTH wrong.

      2. 5.2.2

        Paul Morgan, I don’t disagree, but…2 thoughts. 1. I don’t see from the petition or the appendix that Lilly actually pointed out Halliburton to the district court or the Federal Circuit. The appendix doesn’t mention Halliburton or purely functional claiming. In the petition, Lilly is fairly vague about what it argued below (Pet. at 11-12), and it’s not entirely clear to me what it’s arguing now. 2. Old Supreme Court cases matter, but so do statutes. Even if Halliburton mostly survives the enactment of the 1952 Patent Act, what does it now mean to say that a patent has a “Halliburton problem,” and did Lilly argue it below? Is a purely functional claim invalid for indefiniteness under 112(b)? insufficiently described/enabled under 112(a)? noncompliant with 112(f)? invalid under what one might call the freestanding Halliburton doctrine prohibiting purely functional claiming?

        Maybe these are bad questions or maybe the Supreme Court won’t care about them. There’s also the oddity of seeking cert from a R36 judgment, but R36 wasn’t a problem in Oil States.

        1. 5.2.2.1

          There’s also the oddity of seeking cert from a R36 judgment…

          Not really. It is somewhat surprising how many recent appeals from the CAFC involve Rule 36 judgments, until you realize that the CAFC uses Rule 36 as a means of disguising controversial judgments. They are hoping that if they Rule 36 the decision below, it will look like it must be no big deal. The SCotUS is not fooled, and no doubt the CAFC will give up this ruse soon, when the CAFC admits to itself that the jig is up. For the moment, however, they continue to use Rule 36 in the same way that a toddler hums and shoves her fists into her pockets when she is trying to hide a stolen cookie from her parents’ attention.

          1. 5.2.2.1.1

            “It is somewhat surprising how many recent appeals from the CAFC involve Rule 36 judgments, until you realize that the CAFC uses Rule 36 as a means of disguising controversial judgments. They are hoping that if they Rule 36 the decision below, it will look like it must be no big deal. The SCotUS is not fooled”

            There are no appeals from Fed. Cir. judgments. Aside from that, what are a few examples of Rule 36’s where SCOTUS was not fooled?

            1. 5.2.2.1.1.1

              Oil States

              1. 5.2.2.1.1.1.1

                Oil States? Where I grew up, one is not “many.” And Oil States was an affirmance. Where’s the “controversial” judgment?

                1. Where I grew up, one is not “many.”

                  Ah, I see. You think that my assertion is incorrect unless I can name more than one recent cert. grant from a Rule 36? If so, then you may consider my assertion refuted. I can think of several recent cert petitions from Rule 36 judgments, and one recent (significant!) cert. taken from such a petition. I will freely concede, however, that I cannot (yet) name more than one grant from a Rule 36.

            2. 5.2.2.1.1.2

              I assume Dozens means cert petitions rather than “appeals.” As far as I know, Oil States is the only time the Supreme Court has granted a cert petition to review a case that the FedCir decided by Rule 36… and the petitioner ultimately lost on the merits. Oil States was unique. The questions in Oil States’ petition were clearly presented: the constitutional arguments had been preserved, and binding FedCir precedent required the court to affirm. The questions had yes-or-no answers, MCM v. HP had already answered “no,” and pretty much every AIA proceeding where the patent owner lost arguably presented those same questions. So it wasn’t a bad idea for Oil States to file a petition, and also not a bad idea for the Supreme Court to grant in a case that had experienced Supreme Court counsel.

              Aside from similarly unique circumstances, most (not all) cert petitions from R36 dispositions are probably one of two things. One is a cost-benefit analysis: if a case is worth $1 billion, then even a hundredth of a percent of a chance of success is probably enough to justify the legal expense of having the lawyers who already know the case put together a cert petition. The other is foolish investment in your own case: I’m clearly right, so any decision against me must be grievously wrong in a way the Supreme Court should care about.

              I don’t doubt that the Federal Circuit over-uses R36. I can think of a few examples of appeals where the briefs were high-quality and presented real legal issues, the outcome was reasonably disputable, and a R36 under the circumstances looked like laziness or subterfuge. But those are few and far between, and don’t remotely explain the number of cert petitions filed from R36 judgments. Even if losing appellants persist in filing cert petitions from R36 judgments, I still maintain that doing so is, in general, an “oddity.”

  11. 4

    I think that it is safe to say that if the SCotUS takes cert. on this one, there are a number of patent attorneys out there whose heads will explode. I hope that office cleaning staff are prepared for this.

  12. 3

    If SCOTUS were to side with Lilly regarding the single-step PON claim, would Halliburton automatically apply to all non-112(f), functionally defined PON claims?

    1. 3.1

      What do you mean “automatically”? Halliburton already applies to all functionally defined PON claims. Amdocs Ltd. v. Openet Telecom, 841 F.3d 1288, 1295 (Fed. Cir. 2016). Those that avail themselves of §112(f) come through the Halliburton grinder because the are only pseudo-functional (the §112(f) limitation is really a structural limitation, in functional guise), while the genuinely functional-at-PON claims die.

      1. 3.1.1

        I’m asking if there are any potential intermediary outcomes between Halliburton-was-fully-abrogated and Halliburton-was-only-abrogated-for-112(f)-claims.

        Also, the Amdocs citation seems really off-point and weak to me.

        1. 3.1.1.1

          I can grant your second point.

          Regarding your first point, what is an example of the intermediate position that you have in mind? I am not really clear on what you mean here.

          1. 3.1.1.1.1

            I’m honestly not sure. I just imagine a significant fallout from Halliburton being actually and fully applied outside of 112(f). The PTO defacto does not apply Halliburton, and almost every application I see is unprepared for the application of Halliburton.

            1. 3.1.1.1.1.1

              The PTO defacto does not apply Halliburton, and almost every application I see is unprepared for the application of Halliburton.

              Hoo boy, is this true. There are so many practitioners out there that do not realize that Halliburton is still the law, because of the lazy mythology that “the 1952 act abrogated Halliburton.” When the Court reminds everyone of the actual reality, the results will not be pretty.

            2. 3.1.1.1.1.2

              “defacto” perhaps is right. However, it’s not that the PTO has not tried. Look at the 10 year old BPAI precedential case of Ex parte Rodriguez. When functional limitations were not within Section 112 paragraph 6, the Wands factors were applied to demonstrate lack of enablement.

              1. 3.1.1.1.1.2.1

                the Wands factors were applied to demonstrate lack of enablement.

                When I was a junior examiner my supervisor told me that all computer code is enabled and to never make an enablement rejection.

                1. Malcolm, have you been reading about Breyer and his carrying pizza to the local college boys down at the coffee shop again?

                  (and then please realize that a patent is not an engineering document)

            3. 3.1.1.1.1.3

              I’m asking if there are any potential intermediary outcomes between Halliburton-was-fully-abrogated and Halliburton-was-only-abrogated-for-112(f)-claims.

              It’s only marginal (and wrong) voices that argue that Halliburton was fully abrogated. The 52 act only purported to modify the claim construction step of Halliburton, not the holding of invalidity when a claim is construed to that scope. Try to find a single sentence from anyone involved that suggests that any words of any statute affect anything but the claim construction part of Halliburton.

              The PTO defacto does not apply Halliburton, and almost every application I see is unprepared for the application of Halliburton.

              You could say the same thing for all information processing claims and 101, and look how they’re chugging along. Besides, Halliburton’s 112b invalidity is no worse than a proper application of 112a Written Description, which the office similarly does not apply. I think you underestimate the Office’s ability to keep its head in the sand to keep the money flowing.

              It’s not that the office doesn’t allow SOME valid claims – they’re just buried as dependents. The office just wants those invalid independents because if they limited computer inventions to their proper scopes, nobody would pay to keep them on the books.

              The great benefit and great problem of the processor is that allows for multiple distinct means of solving a problem, many of which provide similar enough results that everybody would design around a properly sized claim – Why pay to license an algorithm for estimating driving time when a completely different (and free) algorithm would be 95% accurate in virtually every circumstance? Since a claim to “my solution” isn’t profitable, practitioners want a claim to “all solutions” and the office is only too happy to comply, since the alternative is no application is filed at all. That’s largely the entire problem with computer patents.

              1. 3.1.1.1.1.3.1

                “It’s only marginal (and wrong) voices that argue that Halliburton was fully abrogated.”

                Marginal? Really? Why then do we not see Halliburton being applied at the PTO and in the courts? Why hasn’t this issue been explicitly resolved in your favor already?

                “I think you underestimate the Office’s ability to keep its head in the sand to keep the money flowing.”

                That’s strange, since I was asking how might a pro-Lilly decision be mitigated.

                1. Marginal? Really? Why then do we not see Halliburton being applied at the PTO and in the courts? Why hasn’t this issue been explicitly resolved in your favor already?

                  This is a very fair rejoinder.

                2. How bout this:

                  “As this court has observed, ‘[tlhe record is clear on why paragraph six was enacted.’ In Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, (1946), the Supreme Court held invalid a claim that was drafted in means-plus-function fashion. Congress enacted paragraph six, originally paragraph three, to overrule that holding. In place of the Halliburton rule, Congress adopted a compromise solution, one that had support in the pre-Halliburton case law: Congress permitted the use of purely functional language in claims, but it limited the breadth of such claim language by restricting its scope to the structure disclosed in the specification and equivalents thereof.”

                  Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1582 (Fed. Cir. 1996) (citations omitted).

                3. Congress permitted the use of purely functional language in claims, but it limited the breadth of such claim language by restricting its scope to the structure disclosed in the specification and equivalents thereof.

                  Which is another way of saying that claims that are “purely functional” and which lack prior art-distinguishing structure in the specification are invalid (and always were).

                  Of course, if the term “structure” is defined into meaningless vapor by some arrogant judge whose arrogance ultimately leads to his resignation in disgrace, well, that’s just how things are supposed to work. Because the ends never justify the means, except when they do, which is when Bildo says so.

                4. Marginal? Really? Why then do we not see Halliburton being applied at the PTO and in the courts? Why hasn’t this issue been explicitly resolved in your favor already?

                  The courts only decide arguments before them. Have you heard it being argued before? But to more directly answer the question – Means plus was the rage until the supreme court curtailed the scope, so the issue rarely arose. Then after that the issue has largely taken the form of Written Description arguments. The law *has* been siding in my favor, just under an inferior test, but the logic is the same overbreadth logic that was in Wabash, Perkin’s Glue, Morse, Halliburton, etc. They all say the same thing in the abstract that Lizardtech works out in the concrete – If your specification discloses one way of doing something, and you’re suing someone who achieves the same result through different means, the existence of the defendant’s alternate, unposited means proves the overbreadth of the claim, rather than showing infringement.

                  Morse put forward a fear about future innovation and used that to invalidate the claim. Lizardtech is that fear literally happening and being concretely realized, and a resulting invalidation. The only problem with the situation is the standard for invalidity under the WD test is too high compared to the Wabash/Morse dichotomy.

                  Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1582 (Fed. Cir. 1996) (citations omitted).

                  Yes, that is what I am relying upon, it supports *my* conclusion.

                  The court is saying there – We held these words invalid, and Congress came back and said that these words *have a smaller scope* (i.e. they changed the claim construction) and that scope lacks the problems of the broader scope.

                5. Malcolm,

                  You seem fixated on the incorrect ASSumption that “structure” must mean “objective physical structure.”

                  That has never been the case.

                  Further, even claims in the “flavor” of physical structure – and use terms such as “comprising,” are NOT distinguishing in an “objective” sense because there is no singular “objective” structure to be had, but rather, a range, a class, a group of different structures bound merely by various descriptive words (and which descriptive words have always been permitted to include words sounding in function).

                  The drumbeat of obfuscation on this simple and direct point is clearly pounded out by those with an anti-patent bent.

                6. “The courts only decide arguments before them. Have you heard it being argued before?”

                  No. I have not heard that argument made. But I also do not think patent litigators are ignoring $100,000 bills on the ground. If you’re correct that Halliburton-was-fully-abrogated is a marginal position, you should probably set up a litigation firm and start picking up those $100,000 bills that every other patent litigator in the country has overlooked.

                7. But I also do not think patent litigators are ignoring $100,000 bills on the ground. If you’re correct that Halliburton-was-fully-abrogated is a marginal position, you should probably set up a litigation firm and start picking up those $100,000 bills that every other patent litigator in the country has overlooked.

                  Except they themselves are guilty. Why would you, as a IP-owning conglomorate, open yourself up to competition on you entire product line when you could simply spend infinitely more resources than the office to find prior art and solve this one problem that way?

                  And I would set it up myself but that I can’t do both that job and my current one simultaneously and the argument is a one-trick pony – The first time it succeeds at the SCOTUS level every mega-firm hack will be able to charge better for the exact same argument. The question isn’t if it worth $100k, but if it is an evergreen resource – it is not.

                  There is plenty of evidence that WD, 112(b), 101 are all available mechanisms for taking down cases, and yet 103 still seems the most common. What makes more sense to you – that all of these claims just happen to not be overbroad? Or that the defense is dictated, in part, by the same offense that the defendant wants to use?

      2. 3.1.2

        the[y] are only pseudo-functional

        Now the obfuscation is really kicking in.

        There is a difference between functional claiming (using words in a claim element that sound in function) and PURE functional claiming – which is the optional claim format provided for in 35 USC 112(f).

  13. 2

    Since PDE V inhibitors were already known, their existence was not the point of novelty. Rather, the point of novelty is administering those known drugs in order to treat a particular condition — and that “administering” portion of the claim was not described functionally.

    I think that this is right. It is possible that one should say that Haliburton does not really come in here, because the exact point of novelty here is not really all that functional. Still and all, the claim should fail for §112(a) scope of enablement. The patentee cannot be said to have enabled the administration of all phosphodiesterase V inhibitors for treatment of BPH, because the inventors cannot pretend to know the full complement of PDE V inhibitors as of their filing date.

  14. 1

    Of course, Halliburton was abrogated by the 1952 Patent Act with the adoption of what is now known as 35 U.S.C. 112(f)…

    Arrrrgh! No!!!

    Haliburton is still good law. The third paragraph of 112 created a sort of savings clause to rescue some (but not all) claims that died under Haliburton. Eli Lilly is right to remind the world, however, that if someone claims with functional terminology at the point of novelty and does not avail themselves of 112(6), then the claim is still invalid under Haliburton.

    1. 1.1

      Arrrgh! Yes!!!

      Halliburton was abrogated.

      Deal with it.

    2. 1.2

      It is clear that 112(f) did reject a portion of Halliburton. The Supreme Court has not addressed whether the case otherwise remains good law, and we don’t have a definite approach to jurisprudence in this situation.

      1. 1.2.1

        It is clear that 112(f) did reject a portion of Halliburton.

        And only a portion. I believe that was Greg’s point. Seems to me that “abrogation” implies complete repeal. There are limits on functional claiming and Halliburton recognized at least one very reasonable limit that was not plainly reversed by 112.

        Once again, however, we can ask ourselves what sort of toxic drugs were circulating through the brains of the drafters of the 1952 patent act. Probably a lot of residual lead, at least. Awful, awful writing.

        1. 1.2.1.1

          Calling something “awful writing” because it does not accord with what you want carries with it a recognition (read that as an admission) that the writing DOES NOT ACCORD WITH WHAT YOU WANT.

          1. 1.2.1.1.1

            Calling something “awful writing” because it does not accord with what you want

            It’s not awful because it doesn’t “accord with what I want.” The 1952 act was awful because it was written by incompetent drafters. Indeed, certain sections, when taken at face value, would appear to have been written by a person with zero understanding of how claims work and zero understanding of what certain words (e.g., “process”) actually mean to normal people.

          2. 1.2.1.1.2

            I’d think you’d acknowledge some deficit in the writing. Surely you’d prefer for the text to have explicitly abrogated Halliburton in full?

            1. 1.2.1.1.2.1

              Ben (perhaps in earnest) asks: “prefer for the text to have explicitly abrogated Halliburton in full?

              The answer of course is that it has.

              You just need to realize why.

              I provide a hint below, but will repeat it here:

              Claims using language sounding in function are permissible through the Act of 1952 outside of the optional claim format provision of PURE functional claiming of 35 USC 112(f).

              This is true regardless of what is being described happens to be (or not to be), ANY consideration of “Point of Novelty.”

              The plain fact of the matter that the Act of 1952 opens up the use of terms sounding in function – and does so IN MORE THAN JUST the optional section of 35 USC 112(f) is why the totality of Halliburton was abrogated.

              It is a logical fallacy to STOP at the point that 35 USC 112(f) eliminated a portion of Halliburton, because the Act of 1952 was much more than merely adding an option as to PURE functional claiming.

              The plain fact – and it cannot be stressed enough – is that terms sounding in function were liberated in the Act of 1952.

      2. 1.2.2

        Did Congress indicate that it was abrogating only a portion…?

        (hint: that would be no)

        And what then of your own term of “Vast Middle Ground?)

      3. 1.2.3

        It is clear that 112(f) did reject a portion of Halliburton.

        Agreed.

        The Supreme Court has not addressed whether the case otherwise remains good law…

        I guess. The Court has also not recently “addressed” whether Charming Betsy “remains good law.” It is in the nature of precedents that they stand until explicitly discarded. The baseline assumption should be that Halliburton is still in force except to the extent that it has been reversed.

        … and we don’t have a definite approach to jurisprudence in this situation.

        Sure we do. Kimble v. Marvel LLC, 135 S. Ct. 2401 (2015) says that precedent remains until Congress overturns it. Shalala v. Ill. Council on Long Term Care, 529 U.S. 1, 18 (2000) that reversal should be explicit to be effective. Because Congress has not explicitly reversed Halliburton, but rather only partially off-set it, Halliburton remains good law as to claims that do not take advantage of the part of the statute meant to address Halliburton.

        1. 1.2.3.1

          The Act of Congress abrogated the decision.

          Sorry Greg, but you really do need to accept that.

          The “off-set” is a new OPTION for PURELY functional claiming. There is NO “Point of Novelty” functional claiming elements in the words of Congress, and to take an abrogated decision and somehow craft one is beyond legislating from the bench.

        2. 1.2.3.2

          Because Congress has not explicitly reversed Halliburton, but rather only partially off-set it, Halliburton remains good law as to claims that do not take advantage of the part of the statute meant to address Halliburton.

          Of course this is correct.

      4. 1.2.4

        It is clear that 112(f) did reject a portion of Halliburton. The Supreme Court has not addressed whether the case otherwise remains good law, and we don’t have a definite approach to jurisprudence in this situation.

        Only the claim construction. 112(f) does not purport to do anything other than substitute into the claims the structure in the specification for performing the functionality.

        There’s no statement anywhere that suggests that the 52 act did anything to Halliburton’s logic other than affect the scope of the claim by changing the claim construction.

        1. 1.2.4.1

          There’s no statement anywhere that suggests that the 52 act did anything to Halliburton’s logic other than affect the scope of the claim by changing the claim construction.

          This.

          Which is why Bildo’s repeated nonsense about reciting structure being only an “option” is so ridiculous and wrong. You can recite the structure in your claim, or you can recite the structure in your spec and incorporate that structure into the claim by reliance on 112. But if you don’t recite any structure and your claim is distinguished purely on functional grounds from the prior art, it’s an invalid claim. In essence, when you rely on a purely functional distinction, you are claiming a “functionality” which is a failure so extreme that it doesn’t even meet even the plain text of 101 (which, if taken at face value, is among the world’s lowest legal hurdles).

          1. 1.2.4.1.1

            Absolutely and unequivocally not “This.”

            No matter how much you want to try to take a clearly optional claim format and turn it into NOT being an option, you are simply legally and factually wrong on that point.

            Such advocacy is not only dishonest – it is unethical.

      5. 1.2.5

        Perhaps I’m missing the point; but, isn’t In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983) cited in the brief directly on point? A nice short and sweet opinion from 1983 by Judge Rich.

        1. 1.2.5.1

          Good point.

        2. 1.2.5.2

          The In re Hyatt of 1983. Maybe not directly on point, but, yeah, that’s the right answer which they kinda address in the cert. petition but which nobody is talking about. Although the Hyatt panel did not cite Halliburton. Means or “step for.” Judge Rader once wrote about the step-child “step for,” although I can’t remember the case, maybe in a concurrence. Bueller?

          1. 1.2.5.2.1

            Oh yeah. Seal-Flex v. Athletic Track and Court Construction and a sanctioned party-appellant. Per Curiam opinion with concurrences by Radar and Bryson and Newman scolding Rader. Good times.

        3. 1.2.5.3

          Yes thanks, Judge Rich shot down a single-means claim in In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983) for not complying with 112(f) for not being a genuine required combination claim by only also reciting old components, and this failing 112 [enablement?] No mention of failing due to Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), but noting and holding that 112(f) is a limited exception to not getting a single means claim rejection.
          But I also understand that Judge Rich and Pat Federico differ in some aspects as to interpretations of what they both helped get enacted in 1952?

          1. 1.2.5.3.1

            P.S. Judge Rich referred to his rejection in this 1982 Hyatt decision as being “what used to be called overclaiming.”
            [Other such terms used have been “insufficient specification examples,” “preemption” or “claiming more than actually invented.”]

          2. 1.2.5.3.2

            Rich’s opinion seems to based on the prepositions that (1) purely functional limitations are unenabled by definition, and (2) only 112 3rd/f can save a purely functional limitation. Amusing how his prepositions happen to produce the same outcome as “Halliburton was only partially abrogated” would have!

            1. 1.2.5.3.2.1

              Why, it is almost as if the man who drafted the statute in view of Halliburton intended to abrogate Halliburton only partially. Fancy that!

              1. 1.2.5.3.2.1.1

                Again with the DIShonest “only partially”…

              2. 1.2.5.3.2.1.2

                Alternatively: it is almost as if a man who wanted a complete abrogation of Halliburton but settled for a partial abrogation of Halliburton due to politics was later asked to interpret the law, and did so in a way that conformed with the partial-abrogation of the statute while referencing his desired complete-abrogation in the opinion.

                1. Settled…?

                  That would be a clear no. But nice spin.

                  Perhaps it might help you Ben to recognize what the actual holding of the Halliburton case was (and thus why attempts to “extend” in order to “say” partial are false). The Act of 1952 – specifically, the ability afforded by the optional claim format of PURE functional claiming provided by 35 USC 112 (f) was NOT the only change as to provide for terms sounding in function to be used.

                  As I have pointed out on numerous occasions (and even Prof. Crouch coined the term “Vast Middle Ground,” terms sounding in function – unconstrained or not as to ANY “point of novelty” – are permitted by the Act of 1952 OUTSIDE OF THE OPTIONAL 35 USC 112(f) provision.

                  The attempts to obfuscate this clear point do NOT change that point by their volume.

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