by Dennis Crouch
Innovation Sciences, LLC v. Amazon.com, Inc. (Fed. Cir. 2019)
Eligibility: Of the three patents in suit, the district court found one ineligible under 35 U.S.C. § 101. U.S. Reissue Patent No. 46,140 (asserted claim 17). The patent claims an use of a “payment server” in an online transaction to enhance transaction security, and the district found “securely processing a credit card transaction with a payment server” to be an unpatentable abstract idea. The key claim step includes the following limitation:
[R]eceiving credit card payment information at the payment server to buy items from a website … “wherein the credit card payment information is received after online communication of the buyer has been switched from the website listing the items to a website supported by the payment server, wherein the switching of the online communication of the buyer is after an indication from the buyer to buy the one or more of the items”
On appeal, the Federal Circuit affirmed the holding — finding that the claim “is directed to the abstract idea of securely processing a credit card transaction with a payment server.” In reaching that conclusion, the court noted that the claim elements are written in “merely functional, result-oriented terms” — “an idea, having no particular concrete or tangible form.” (quoting Ultramercial). Further, the recitation of “servers” limited the invention’s use to particular area of existing technology, but did not “render the claims any less
abstract.” (quoting Affinity Labs).
Regarding the wherein clause for switching from a regular server to a payment server, the court explained that the claim is merely directed to the abstract idea of switching — not any particular implementation or system improvement.
In Alice step two, the court explained “[t]here is no inventive concept in the claim’s use of a generic payment server ‘to perform well-understood, routine, and conventional activities commonly used in industry.'”
= = = = =
In the lawsuit, Innovation Services also asserted two other patents with claims that the Federal Circuit explained “are not a model of clarity and stray from the embodiments described in the specification.”
Still, with that framework, the court chose to give the claims their express meaning — broad enough to allow for infringement. On remand though the court suggests review of the written description and enablement requirements. (“We do not express an opinion as to whether they satisfy the
requirements of § 112.”)
Transferred here because of the silly comment limit Dennis has in place:
GregDL, definitely “confused”: it is not crazy for the patent system to award me my 20 years of statutory exclusivity for tests employing that law of nature, even if the mechanisms for measuring the correlation are old in the art
Please try to be clear, Greg, and avoid further muddying the waters. I know it’s difficult for you because if you are clear you are liable to run smack into your own silly arguments but still … try harder.
“Correlations” aren’t “measured”, Greg. They are “made”. They are also ineligible for patenting because they are abstractions. More specifically, they are facts.
Section 101 does not present a per se bar to obtaining so-called “diagnostic method” claims, or claims to kits for practicing such methods. Nobody is saying otherwise.
And, yes, it absolutely is “crazy” to hand out patents that recite only prior art “mechanisms” for gathering data followed by a step of “determining” what the gathered data “means” based on … an un-ownable fact that was printed in a patent specification or in a research article. It’s not only “crazy” but it’s unconstitutional. And it’s remarkable to hear an attorney argue otherwise. Then again, you’re not the only self-interested patent attorney willing to make the worst arguments ever so … enjoy looking like a f-0-0-l, my naïve and confused brother.
it only makes policy sense to exclude such diagnostic technologies from patent eligibility if one thinks that it is not particularly valuable for scientists to invest the time and material resources necessary to make such discoveries
LOL! Wow, you really have been immersing yourself in the holy texts of patent maximalism! News flash: handing out patents on correlations is hardly the only means of promoting “progress” in correlations. Patents just happen to be the worst of all such means (or among the worst) for reasons that are pretty easy for most normal people to understand. Last time I checked, people — all kinds of people — make new correlations based on observed data all the time. They do this not because they are interested in filing patents but because … as logical entities, we can’t help but do so. Handing out patents (LOL) on correlations does not “promote” better correlations. It promotes patenting, and litigation. Period.
The Prometheus decision has done literally nothing to impede or stall progress in “better correlations.” I would wager that more correlations, including medical correlations, have been made in the wake of the Mayo v. Prometheus than in any other time in the history of the country. There is simply no reason to believe that progress in correlations will be improved in any manner whatsoever by making doctors (and their patients, in many instances) infringers for twenty years because they understand what it means when, e.g., they have Gene X and hair color Y.
Your silly “argument” (such as it is) for taking the extreme radical step you are proposing could be used to justify handing out patents that turn people into infringers for contemplating literally any new fact, in any recited prior art context. After all, if you don’t support Greg’s idea that facts should be patented, then (according to Greg) you “must believe” that determining facts is just a total waste of time and money and not worth investing in. Sure, Greg. Seems a tad circular to me but, hey, you’re a very serious person.
The deal is that if you (like me) believe that determining facts is valuable, the patent system’s “answer” to that belief is that we should hand out patents that promote progress in new non-obvious non-abstract tools for obtaining discoveries and not patents on the facts and natural phenomenon themselves. Handing out patents on the latter minimizes the value of patents on the former because patents on the latter turn the use of the former into a liability. It’s like trying to encourage better methods of extracting oil by handing out patents on the oil itself, where the only difference between the new oil and the old oil is the location from which the oil was drilled. That makes no sense at all, at least from a patent perspective. And it’s one of the reasons why the patent system doesn’t permit that kind of claim.
Another carry over:
§101 is the only statutory section capable of dealing with the (real and legitimate) problem that he is discussing
In your own words, what is the “real and legitimate problem” with using subject matter eligibility to forestall the use of patents to protect non-obvious correlations? How did this problem arise and what solution do you propose? Assume for the sake of answering this question that the use of the non-obvious correlation is enabled and that the applicant was in possession of the specifically recited correlation as of the filing date of the application.
“Transferred here because of the silly comment limit Dennis has in place”
Hmm, you only have seven comments – typically your “count” limit is appreciably higher.
More carryover:
BP Alice was not new 101 law, it was an application of Mayo. A targeted solution to Mayo will impact Alice. The piecemeal analysis of Mayo needs to go.
The “piecemeal analysis” of Mayo is just the application of logic to the issue being dealt with, i.e., a patent claim which consists of words, in a system where the applicant is not required to set forth what subject matter in the claim is in the prior art, and which limitations are new. In other words, you can’t get rid of the so-called “piecemeal analysis” (by which I assume you are referring to so-called “claim dissection”) without literally kneecapping the subject matter eligibility analysis so that it becomes totally meaningless. You say that my claim can’t be “totally in the mind”? Okay, I will recite a step requiring that the practice of the method of thinking also breathes air. Done! Your statute is satisfied. See how that works? This inherent and unavoidable issue is why the sloppy and fake “holding” in Diehr was d.o.a. the moment it was held up and cherished by a tiny class of patent practitioners, and this is why that “holding” was completely obliterated by subsequent events. The only holding that remains of Diehr is the one I’m communicating to you now: you can’t decide subject matter eligibility merely by spot-checking a claim for the presence or absence of a certain type of subject matter. The analysis has to be more complicated than the simpleton’s version of Diehr (i.e., “no claim dissection!” or “no piecemeal”!) because of the unlimited freedom the US system provides to claim drafters. Most patent attorneys can handle a very slightly more complicated analysis (at least, most of the ones I work with can handle it — but as we all know the online patent community is a special breed of s-t-0-0-p-it).
Hard to believe that a “targeted solution” to Mayo would not extend to other types of medical diagnostics and the so-called “information-based inventions”.
Not sure exactly what you’re driving at but nothing in the Supreme Court’s Mayo decision suggests that the principle underlying the holding is limited to “medically relevant correlations”. Getting rid of Mayo and forbidding the most basic kind of textual analysis of patent claims imaginable is a disaster for the patent system, which has been punished enough already by the demands put on it by those who insist that otherwise ineligible logic should be eligible for patenting simply because the logic is performed by an instructable logic-executing machine. Methods of solving math problems using a slide rule anyone? Why weren’t there a zillion such patents on those methods back in the good old days? Or methods of solving math problems using a calculator? Were lawyers just less creative then? Golly gee I wonder what happened.
For all of your whining, YOUR treatment of the Diehr case does NOT even hold up to your own assertion of:
“The only holding that remains of Diehr is the one I’m communicating to you now: you can’t decide subject matter eligibility merely by spot-checking a claim for the presence or absence of a certain type of subject matter.”
As you do NOT take “the claim as a whole,” ALL that you are doing is that very same “spot-checking a claim for the presence or absence of a certain type of subject matter.”
That you seem unable (or unwilling) the plain logic of your own view is merely Malcolm being Malcolm.
As you do NOT take “the claim as a whole,” ALL that you are doing is that very same “spot-checking a claim for the presence or absence of a certain type of subject matter.”
There is no “spot checking.” The claim is first analyzed for the existence of ineligible abstractions that would not be eligible for patent protection on their own terms (e.g., mental steps, “printed matter,” facts, correlations, descriptions of data content, logic, prices, legal status, ownership status, privacy status, etc). If there are no such abstractions, then the claim is analyzed for steps involving the detection of natural phenomenon. If neither of those things exist, then there is no subject matter eligibility issue.
If those issues are present, then the next step of the analysis is to determine if there are other elements in the claim that rescue the claim from ineligibility. Specifically, the claim is analyzed for the existence of new and non-obvious eligible subject matter, described in objective structural terms that distinguish that subject matter from the prior art or (in the case of a method) terms that describe a non-obvious physical transformation of matter.
None of this is “confusing” or difficult for most of us. You can, of course, pretend that it’s confusing by acting like a f–ked in the head id-I-0-t which seems to be a specialty of certain folks around here (you especially).
You are STILL parsing and not taking the claim as a whole.
What do you think that “spot-checking” entails?
You “spot check” and then act differently based on the “spot-checking.”
F
A
I
L
You are STILL parsing and not taking the claim as a whole.
None of the elements in the claim are being ignored, nor is the relationship of any of those elements to each other being ignored. Simultaneously, no element on it own is capable of rendering the claim is ineligible.
Beyond that, “taking the claim as a whole” is an utterly meaningless phrase. So please do everyone a favor and shove up it as far up your f–king @ h0le as humanly possible, okay? Thanks, Bildo.
Except for the fact that you are not doing anything remotely close to that paragraph of yours (not the last, as that appears to be more in line with your usual Accuse Others meme).
BP: why is Damadian missing from the MRI Nobel? Because he enforced his patent claims
LOL Who told you that? And what on earth does the Nobel Prize have to do with subject matter eligibility?
his patent claims … would not exist because they would be ineligible under Mayo
Oh, LOL, let’s see them! And let’s see your “analysis.” I’m sure you’ve thought in great depth about it, and about the prior art, too. You’re a very serious person! Would love to hear how Kary Mullis fits into this deep thesis as well.
“Would love to hear how Kary Mullis fits into this deep thesis as well.”
Interesting guy, this Mullis:
link to en.wikipedia.org
Of course, Malcolm’s retort here is merely replete with rhetorical fallacies, and goes deep into the weeds AWAY FROM what BP is actually talking about.
Interesting guy, this Mullis:
He’s an AIDS-denying nertcase.
I thought that you would go for the psychodelics…
Howard Markey must be spinning in his grave.
And Giles Rich in his.
This blog’s tolerance of some people has really diminished much of its positive value.
I’m quite surprised by Dennis’ tolerance for it.
It seems to resemble the first two weeks of first years crying about what they want the law to be…
A few have turned most away from providing meaningful comments.
It’s a shame.
If you prefer a heavily moderated hugbox you can easily find it elsewhere among the patent related blogs.
Personally, the effort it takes skip over comments from certain posters is worth it to not be posting under viewpoint partial moderation.
Thanks for the comment Ben – that has nothing to do with my comment.
that has nothing to do with my comment.
Sure it doesn’t, snowflake. Let’s hear your “meaningful comments”! You are a very serious person and totally aren’t looking for that special place where you can simply express your feelings about how “bad” a Supreme Court or CAFC case without any reasoning whatsoever except that your favorite kind of patent claim got tanked and oh by golly it’s all so unfair when that happens to Joe Everyday Person (like you).
Brush aside the mindless ad hominem, and yet another post by Malcolm that says nothing and that adds nothing.
It is easy to see here that Malcolm’s feelings are pr1cked, and that he is merely responding based on his lack of control of those feelings.
Ben appears to have a certain blog in mind, but without more (particularly, exactly which blog), it is not really possible to give any weight at all to Ben’s comment.
Further, this blog is moderated, although the “moderation rules” are certainly not evenly or objectively applied (AND notwithstanding that slant, a certain singular person remains the most expunged and biggest blight on the boards — hint: in the DISQUS day’s, this was the person that Ben “upvoted” on the most consistent basis).
Tell us Ben, which blog is it that you consider to be a “heavily moderated hugbox.”
Yep – this is my view too anon.
biggest blight
Says the path 0l 0gical li @r with extreme narcissist personality disorder.
Your Accuse Others meme is showing, Malcolm.
Tell me Malcolm, which poster has had the most posts removed for being inappropriate?
More posts than anyone else.
More posts than everyone else combined.
And — as I have challenged you before (and you have always NOT delivered), show me a single L I E that I have made. This post of yours is nothing more than YOUR number one meme of Accuse Others Of That Which Malcolm Is – in your own inimical Trump style.
“If you prefer a heavily moderated hugbox you can easily find it elsewhere among the patent related blogs.”
Come Ben, where did you run off to? Why not be specific about which blog it is that you feel is a “heavily moderated hugbox”…?
So while I certainly agree*** that “the effort it takes skip over comments from certain posters is worth it to not be posting under viewpoint partial moderation” — your PREMISE remains unestablished.
*** and note here, that the agreement is in merely the ease of effort and NOT that actually skipping over comments from certain posters is AT ALL a wise move. THAT type of attitude is sure to engender just as much of a group-think, LACK OF CRITICAL THINKING mode that you appear to want to denigrate.
A few have turned most away from providing meaningful comments.
Have you provided a meaningful comment here, snowflake?
Here’s an idea: go to Big Jeans Echo Chamber and both of you whining crybabies can s-ck Big Jeans off together. It’ll be a meaningful experience for all three of you, since you plainly have a lot in common. Ask me if you need more explanation.
That would be you and Bildo, snowflake. Just in case you were “confused” about that (“confusion” seems to be the most shared characteristic among today’s oh-so-serious and concerned patent attorneys).
And yet again, your 0bsess10n with Quinn is shown…
SCOTUS says:
“First, we determine whether the claims (ALL the claims) at issue are directed to” a (one) patent-ineligible concept (singular — one again).”
Yet, the CAFC; claiming to follow SCOTUS; says:
“the abstract idea of securely processing a credit card transaction with a payment server.”
and
“the idea of switching to a more secure server for payment processing.”
Meaning the CAFC (this panel) incorrectly posited not the required — and expressly limited to one — TWO alleged abstract ideas / concepts.
With a hat tip to Britney … they did it again:
link to youtube.com
Congress can’t stop this innovation, job-and-company killing foolishness soon enough.
“In Alice step two, the court explained “[t]here is no inventive concept in the claim’s use of a generic payment server ‘to perform well-understood, routine, and conventional activities commonly used in industry.'”
Hey lookie! Its abstract because its old, again.
the recitation of “servers” limited the invention’s use to particular area of existing technology, but did not “render the claims any less abstract”, quoting Affinity Labs
Note that in a logical world — one without special ad hoc judicial activist exceptions created solely to satisfy an industry group and its whining entitled attorneys — this straightforward reasoning leads directly to the correct and desirable result: ineligibility of all methods/apparatus that rely on existing programmable computers to carry out logical operations on data.
…existing programmable computers…
See the Grand Hall experiment.
Good Luck Enforcing a Payment System Patent Claimed in Abstract Form
No doubt.
For more 101 laughs, see the hilarious claims at issue in the Symantec case that the CAFC wrote about today.
The Beaver: “Gee whiz, Wally, how should we check whether a file contains some “harmful” code in it?”
Wally: “I dunno, Beav. I guess you use a file scanner to scan the file and a harmful code determiner to determine if there is harmful code.”
The Beaver: [writes down claim 1, as Wally describes it] “Golly, Wally! You’re swell!” [runs to patent office]
Wally: [shakes head and smiles]
MM how do you write a claim in abstract form? So a claim that is enabled and satisfies the WD is abstract. Makes no sense. No real engineer would say such a thing and no real attorney would say such a thing.
And try to remember if you attempt to formulate an answer that being enabled means that anyone skilled in the art can make an apparatus.
So there is a machine that reads on the claims. The machine was built by anyone skilled in the art. But somehow that machine is abstract. Or is it the claims that are abstract. So words that enable anyone skilled in the art to build the machine are abstract. OK. Total gibberish from Alice and a bunch f’ing wan kers. Thanks Lemley and Obama.
If “being enabled means that anyone skilled in the art can make an apparatus” was true – fully satisfying 112 and its case law – a claim with no unconventional elements would not require any patent specification or drawings at all! Just a one sentence statement that “anyone skilled in the art can make this.” It would be an unusual looking patent, and save lots of work for patent attorneys.
Cheap shot Paul. That may apply to only a element of the claim and additionally more likely what happens is that all those embodiments known to the anyone skilled in the art is added on to the embodiments that are enabled by the specification.
a claim that is enabled and satisfies the WD is abstract. Makes no sense. No real engineer would say such a thing and no real attorney would say such a thing.
Are you still high from last night?
being enabled means that anyone skilled in the art can make an apparatus
An apparatus … like an apparatus that holds sheets of paper with printed text on them, such that the paper can be lifted and “turned” with a finger, thereby allowing the text to be read and understood by a human or machine. Stay with me, grasshopper! This is going to get real deep for you real fast.
somehow that machine is abstract. Or is it the claims that are abstract.
It’s the allegedly inventive subject matter that is abstract. For example, the apparatus we call a “book” is in the prior art but if you were the first person to conceive of and reduce to practice that invention (constructively or “actually”) you could get a patent on it. But you can’t get a patent on a “new” book based entirely on, e.g., the “non-obviousness” of the text that you print on the book’s pages. And it doesn’t matter how useful that text is, and it doesn’t matter what level of detail with respect to that text is recited in the claim.
This isn’t difficult stuff. Sure, courts sometimes are sloppy when they right their opinions but the fundamental principle is pretty easy to understand (and is true throughout the world, in every country’s patent system). Heck, even Dennis understands it. Although he’s definitely stopped talking about it, presumably because there is a conflict of interest he is forced to struggle with.
MM>>>It’s the allegedly inventive subject matter that is abstract.
Show me a cite for that. There is no mention of this in Alice. And you have just made this up.
That is just Malcolm attempting his age old parsing of a claim and applying eligibility at a piece part level only.
(Cue the Big Box of Protons, Neutrons and Electrons put-down)
Night Writer asks:
“how do you write a claim in abstract form”
Let’s pause a moment and reflect on the question.
The question (heavily) implies that there may be a mere “form” of a claim that itself is “abstract.”
Is that even a real patent law question?
Does it not smack if the very “vice” that the Supreme Court has used as an excuse for their scrivining? (as the Court sua sponte decides that claims in a particular form nominatively meet the legal requirements as set out by the Constitutionally designated branch of the government, but are deemed — by the officious Court — to be “merely of form”)…
(I am also surprised to have not yet seen our pals Marty and Random make any comments, as this fanciful frolic sounds along Marty’s partition/insertion of yet another (undefined) use of the word “abstract” — without regard to the patent law notion of “ladders of abstraction” – as typically blundered by Random)
Yes this is the question. Newspeak.
>Good Luck Enforcing a Payment System Patent Claimed in Abstract Form
Claim in abstract form. We have reached new levels of new speak. There is no meaning to these words. An abstract is something like build a machine with fewer parts that operates the same otherwise. That is abstract.
>>Claims that are enabled and satisfy the WD requirement cannot possible be abstract.<<
Psychotic nonsense from anti-patent lowlife.
Claims that are enabled and satisfy the WD requirement cannot possibly be abstract
Is this your proposition, Night Wiper? So if I claim
“A method comprising the step of adding two numbers, wherein the numbers are 8,533.398 and 10,324.094.”
does that fail enablement or written description?
How about the claim “A correlation, wherein said correlation is determined using a correlation determination means, wherein said correlation is a correlation between the presence of a mutation in the gene encoding ArxIV and the likelihood of armpit cancer.”
Assume the “means” is described in great detail in the specification. Does this fail enablement or written description?
Explain your answers. I’m sure you’ve thought a lot about this already. You’re a very serious person!
MM >“A method comprising the step of adding two numbers, wherein the numbers are 8,533.398 and 10,324.094.”
>does that fail enablement or written description?
You tell us MM what you think. Make your own arguments.
It doesn’t fail either enablement or written description. But it is surely an abstraction.
Oh but wait! “Adding two numbers is the essence of electronic structure”! So totally not an abstraction. At least that’s what we were told by a judge who resigned in disgrace on the famous day when he teamed up with a mentally incompetent high-on-his-own-supply d 0 0 fus by the name of Giles Rich.
That’s a pretty strawman there, Malcolm.
Are you really trying to say that there is zero tie to admittedly different functional capability to an exact same configuration of the system (and your attempted parsing OUT of that system of the design-optional “ware” of software?
Are you really trying to say that there is zero tie to admittedly different functional capability to an exact same configuration of the system (and your attempted parsing OUT of that system of the design-optional “ware” of software?
I believe he’s trying to counter the absolutely insane categorical statement that “Claims that are enabled and satisfy the WD requirement cannot possibly be abstract”
That’s a pretty strawman there, Malcolm.
It only appears to be a strawman because the actual argument Night made is so ridiculous. He didn’t generate a crazy situation, Night claimed a crazy situation. Obviously your mind is capable of doing things (i.e. it would meet 112a for a non-zero amount of methods) and obviously things performed in your mind are abstract, so categorically stating that meeting 112a inherently means no abstraction is clearly wrong.
“I believe he’s trying to counter the…”
Really? If so, he [George Carlin filtered word for “opposite of succeed] in spectacular fashion. – That this particular word draws the “will not post filter” is a truly bizarre editor’s mechanism.
“It only appears to be a strawman because..”
Wrong.
There is NO “appears because,” as Malcolm IS using a strawman.
He may be attempting to use the strawman to counter something, but that does not change the fact that he IS using a strawman.
“Obviously your mind is capable of doing things (i.e. it would meet 112a for a non-zero amount of methods) and obviously things performed in your mind are abstract,…”
You confuse and conflate things here — think “anthropomorphication” and claim as a whole.
Just because a claim MAY have a corollary that absent some claim element may be moved (as in, goalpost moving) to reflect a situation in which the corollary may be performed in the mind, does NOT make the original to be “abstract” (even as the Court has refused to actually bother defining that term as they use it).
The irony. “The Current Wars” by 101 Studios. A film about Thomas Edison and Nickolas Tesla both of whom would not be able to get patents today and both of whom would be categorized as patent trolls by the lowly likes of Lemley.
Innovation Sciences, LLC v. Amazon.com, Inc. (Fed. Cir. 2019)
Finally, 101 remand instructions for the district court to also consider 112 enablement requirements, especially for “merely functional, result-oriented” claim elements. But will they now finally really encourage and sustain S.J. on that issue on a regular basis? Especially since it should be the judge, not a jury, reading and interpreting the claim elements vis a vis their patent specification enablement, if any, per Markman.
However, that 112 issue may never get decided since the part of the lengthy decision below requiring remand was “we vacate the judgment of noninfringement as to claims 35–60 because the stipulation does not specify whether our affirmance of all but one of the appealed [claim] constructions is dispositive.”
BTW, in view of the obvious large attorney fee expenditures here, why was a CBM proceeding not filed?
Paul >>>“merely functional, result-oriented”
Except in reality all of us that have been real engineers and all of us that work with real engineers on real inventions know that there is no such thing. That a person of ordinary skill in the art (or anyone) would view functional language as representing the set of all known solutions in view of the specification.
The propaganda machine against patents is in full swing.
What does being a “real engineer” have to do with proper claiming? If someone wants to state a claim limitation in functional language “representing the set of all known solutions in view of the specification,” they should use 112(f) and identify “all known solutions.” It it not permissible to delegate to a POSITA (or anyone) the task of researching “all known solutions” in order to interpret claim limitations.
It is not permissible to delegate to a POSITA (or anyone) the task of researching “all known solutions” in order to interpret claim limitations.
Your anti-patent bias is tiresome.
/Bildo off
Non Sequitur II >>s to state a claim limitation in functional language “representing the set of all known solutions in view of the specification,” they should use 112(f) and identify “all known solutions.”
This just isn’t possible. There are too many ways to solve the problems. I have given concrete examples of this, e.g., a voltage differentiator circuit, and have quoted from textbooks that are used at MIT that say expressly that functional language is used to represent all known solutions.
You simply are not dealing with how a POSIT or an anyone skilled in the art would interpret a functional claim element.
I have given concrete examples of this, e.g., a voltage differentiator circuit, and have quoted from textbooks that are used at MIT that say expressly that functional language is used to represent all known solutions.
The alleged novelty of the claim is the function. There is no known solutions other than those specifically identified in the spec, which is none.
Regardless, even if there was a known solution, that doesn’t change the fact that known solutions is not the same scope as all solutions. That was the entire point of Morse – He invented on basic means of communicating information but his claim to the function would have read on the modern computer.
>It is not permissible to delegate to a POSITA (or anyone) the task of researching “all known solutions” in order to interpret claim limitations.
This is a red herring. The POSITA understands the scope of the claims. The POSITA knows all these solutions or knows that if they think of a solution to build a product that it is a known way. Your argument is against the reality of what a POSIT is.
I’ve written real claims to real electronic devices that have been licensed for of millions of dollars to the top international corporations. That will not pay if they can design around.
A patent application that included all the known ways of solving a function would get to be over 1,000 pages. Probably realistically it would have to be 5,000 pages.
Plus—your argument is that a claim scope should be less than the scope of enablement, which means by definition that there are embodiments that are enabled but not included in the scope. So trivial to avoid infringement.
NW:
To be clear, this is a hypothetical, and I am not saying this IS the law.
What would you say to a system where the scope of the claim was limited by what was obvious in view of the prior art and the filed specification at the effective filing date?
Ouch!
?
The sniveling inte11ectual coward snipes from the sidelines…
I don’t actually understand. I didn’t intend any slight toward NW.
I did not take you to intend a slight toward NW. I thought that you meant a slight toward the patent system. I was saying “ouch” on behalf of the existing regime.
In a sane patent system, the scope of the grant should depend on “what was obvious in view of the prior art and the filed specification at the effective filing date.” If—as you say—such is not the law, but merely a hypothetical, that is a rather damning characterization of the actually existing U.S. patent system.
Did I misunderstand the upshot of your 2.2.1.3.1?
I don’t think so, but I am kinda surprised that you’d agree with the idea. So perhaps I am not being clear.
I’m basically imagining there being an infringement defense of the-patent-and-prior-art-didn’t-make-obvious-my-product-at-the-time-of-filing.
As far as I’m aware this is far from the current law, and the last time I brought it up the patent practicioners in the discussion recoiled. Some posters here seem to even cherish the ‘principle’ that the gun inventor is beholden to the bow inventor for the term of a projectile-shooting-device patent.
I am kinda surprised that you’d agree with the idea.
You are surprised that I would agree with an aggressive use of §112(a) to police over-broad claiming? I cannot imagine why.
I have said ~1000 times on these boards that I think that the courts should be much less aggressive in their use of §101 and much more aggressive in their use of §112 to address exactly the problems that are currently policed with §101. I know that you have seen me make these arguments.
Some posters here seem to even cherish the ‘principle’ that the gun inventor is beholden to the bow inventor for the term of a projectile-shooting-device patent.
Yes. Les, in particular, is noted on these boards for making that argument. I have taken issue with that argument. I am certainly not on board with the idea that the bow inventor should get royalties from the gun market.
Fair enough. I meant no offense, and I don’t remember that specific dialog with Les. But there is a difference between what I’m suggesting a thorough application of 112(a).
112(a) never asks obvious-in-view-of-spec.-and-prior-art. It asks “is it enabled?” and “would a PHOSITA recognize inventor as possessing?”. These questions are decoupled from obviousness and we are not nearly so comfortable resolving them as we are obviousness.
No offense taken. My apologies if my response read as if I were miffed. Two further thoughts:
1) I think that the distinction that you are positing between “obvious” and “enabled” is thinner than you suppose. An “obvious” variant on the disclosed embodiments is (by legal definition of “obvious”) a variant that requires no more than ordinary skill to effect. That is to say, it is a variant that does not require “undue experimentation” to effect. In other words, truly non-obvious variants are—by definition—not enabled by the spec, and conversely, all variants that are enabled by the spec are—by definition—obvious variants. As such, if a claim reads on subject matter that is not obvious in view of the disclosure and the state of the art at the time of filing, then the claim necessarily extends beyond the scope of enablement.
2) I think that the defense to infringement that you are describing is known in the case law as the reverse doctrine of equivalents. DePuy Spine v. Medtronic Sofamor Danek, 567 F.3d 1314, 1338 (Fed. Cir. 2009). This doctrine almost never gets invoked anymore, and to my mind this is all to the good. The reason why almost no one ever invokes reverse DoE is that a claim that can be evaded by rDoE is invalid (see #1 above) on written description and/or enablement grounds. Better just to tank such a claim, rather than give one individual defendant a pass on non-infringement grounds, but leave the claim enforceable in future suits against future defendants.
I have said ~1000 times on these boards that I think that the courts should be much less aggressive in their use of §101 and much more aggressive in their use of §112 to address exactly the problems that are currently policed with §101. I know that you have seen me make these arguments.
I too am a fan of 112, but when a pure-112a stance gets interrogated it turns out you need a 101 logical jump regardless of whether you call it 101 or not..
Enablement/WD of an overbroad scope largely depends on post-hoc counter-invention. My gun fits within your claim scope but isn’t described or enabled by your spec pertaining to bow construction, so my gun proves your functional claim is overbroad. Remove the gun from that equation and the argument falls apart.
The more important issue is the *threat that the gun could be developed in a pre-gun world*. In other words, if I am an inventor and I know of the functional claim scope, I won’t seek to develop the gun, because I know that selling the gun invites an infringement suit I might lose. 112a needs to work proactively rather than retroactively. A given disclosure (“here is how you build my bow”) can only invite a scope of a certain breadth before it can be rejected purely by being too dangerously large for the given disclosure. Is a picture claim necessary? No. But every limitation one strips makes it more and more likely that there exists some totally different and unposited means that fits within the claim scope. The final result of this is the mere functional scope.
It is impossible to set a real line about “how far is too far” in a proactive manner. It necessarily requires someone’s judgement to just be “nah, you’ve gone too far.” Whether you go to far because you’ve gone “abstract without significantly more” or you go too far because “one of ordinary skill would not believe you to be in possession of the full scope of the claim” or “failing to prove the full scope of the claim can be practiced without undue experimentation” it’s really just a statement that we are uncomfortable with your scope chilling future research.
Does a bow disclosure mean that undue experimentation is needed to generate a gun? Sure. Does it mean that one of skill would not believe one to possess a gun? Sure. Does it mean that the function of firing a projectile is abstract? Sure. But they’re all terms that mean the same thing – You’ve got a bow, and (looking forward from the patenting of the bow in a gun-less world) we need to protect the desire to research other projectile-firing inventions that you have not invented and have not disclosed from the chilling effect of an overbroad scope.
Virtually every 101 rejection can be rephrased as “Given that science is inductive and you are only in possession of one/a few means of achieving a result, how is it anything more than mere speculation that you possess all the means of achieving a result such that we can reward you with that scope?” If you put the burden on the applicant to prove at the time of filing (which is where it should be) that their means fills the scope claimed, you’re essentially engaging in a 101 analysis, whether you call it a 112a rejection or not. The difference, of course, is that (and here I will only speak to what I know since I know we have disagreed before) *some parts* of the office merely accept the statement that the applicant possesses every means of achieving the result, when simple logic would say that’s extremely unlikely to be true.