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.
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.
― B. Traven, The Treasure of the Sierra Madre
…um, ok, thanks…?
With apologies to Traven…
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.
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).
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.
“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.
“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.
Ignoring… anon…
That is the best way to start and the only sane way to progress around these parts.
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.
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.
““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.
One cannot shame the shameless.
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.
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.
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.
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).
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.
Er, or rather the “principal proponents…” Mea culpa.
As if Greg does not resemble the very accusation that he levels…
I almost forgot one of the most important data points on the “against” side: Federico’s commentary on the 1952 act’s text!
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.
“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.
One more omitted points of evidence against the “total abrogation” theory: The PTAB’s precedential opinion in Ex parte Miyazaki.
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).
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.
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.”
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.
“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.
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.)
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.
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.
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.
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.”]
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.
“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?
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.
Absolutely (yet note the obfuscations)
“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?
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.
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).
“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.
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!!!
“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).
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.
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?
“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.
“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.
“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.
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.
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.
Define the term “sound in function”, Bildo, in a meaningful way.
Please jump into my briar patch, because Malcolm wants to pretend that he does not understand the plain words being used in the discussion…
I believe that the case of which you are thinking is Faulkner v. Gibbs, 338 U.S. 267 (1949).
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).
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.
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.
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?
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.
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.
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.
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.
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.
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.
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.
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.
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.
“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.
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.