“Customization Module” is a Means-Plus-Function Element; Indefinite Without Disclosed Algorithm

William Grecia v. Samsung Electronics (Fed. Cir. 2019)

In a non-precedential decision, the Federal Circuit has affirmed the district court’s holding that Grecia’s asserted claims invalid as indefinite.  The claims include a means-plus-function limitation, but an example of the underlying mechanism was not disclosed in the specification.

In the years leading up to the Patent Act of 1952, several courts (including the U.S. Supreme Court) severely limited the ability of applicants to use functional claim limitations (rather than structural) in order to obtain broader patent protection.  See, for example, Halliburton Co. v. Walker, 329 U.S. 1 (1946) (barring functional limitations at the point of novelty). Traditionally, patent attorneys had drafted these functional limits in “means-plus-function” language.  In Halliburton, for instance, Walker’s invalidated claim required “means … for creating pressure waves of known frequency.”

The 1952 Act added 35 U.S.C. § 112 ¶ 6 (now 112(f)) that allows for functional claims in certain circumstances:

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.

Section 112 ¶ 6.  Although this provision left patentees in a much better position than under Halliburton, most patent drafters attempt to avoid having claims fall under its ambit — preferring instead to rely upon quasi-functional limits that include some amount of structure and some amount of function and that do not use the magical words “means for.”  That approach is preferred because, under the statute true means-plus claims are construed narrowly — to cover only the “corresponding structure” that was actually described in the specification (“and equivalents thereof”).  In addition, as this case reiterates, a means-plus claim will be deemed invalid as indefinite if the specification does not actually disclose a corresponding structure.

It used to be much easier for attorneys to slip through the eye of the needle — but in recent years the gap has tightened as the Federal Circuit ruled that “nonce words” should not be seen as structural. (Is the eye too small, or the camel too large?)

Here, the patent claims a “customization module” that the district and appellate court found to be equivalent to a “means for customization.”  In Williamson v. Citrix, the Federal Circuit previously explained that “‘Module’ is a well-known nonce word that can operate as a substitute for ‘means.'”

After finding “customization module” to invoke 112 ¶ 6, the court then found that the specification did not provide any specific disclosure of how such a module would actually work.  Grecia’s patent is focused on computer implemented technology. In that context, the court has repeatedly held that disclosure of the associated computer algorithm can be sufficient (and is often required). Here, however, the specification did not include such an algorithm:

[T]he specification fails to explain how such customization is performed. Instead, the specification only describes the results of customization. . . . We have held that describing “the results of the operation of an unspecified algorithm” is not sufficient to transform the disclosure of a general-purpose computer into the disclosure of sufficient structure to satisfy § 112, ¶ 6. Aristocrat Techs. Because the ’860 specification merely describes the results of customization without any algorithm for configuring the claimed module to obtain those results, we agree with the district court that the specification fails to disclose the “corresponding structure” required under § 112, ¶ 6, thus rendering claim 21 indefinite under § 112, ¶ 2.

Invalidity affirmed.

Notes: The patent does discuss the “customization module” a few times and includes an image (below), but it is all very mushy.

The password module 204 prompts the user to enter a master password which provides access to the encrypted digital media. Subsequently, the customization module 206 allows the user to customize the user access panel of the encrypted digital media.

According to an embodiment of the present invention, the customization module 206 facilitates adding one or more of a banner, a logo, an image, an advertisement, a tag line, a header message and textual information to the user access panel of the encrypted digital media.

= = = =

In a prior unpublished decision, the Federal Circuit McDonald’s escaped liability on a divided infringement claim. Grecia v. McDonald’s Corp., 724 Fed. Appx. 942 (Fed. Cir. 2018). The case against Samsung focused on Claim 21.  Claims 1-8 and 11-20 had been cancelled by the PTAB. Mastercard International Inc. v. Grecia, IPR2017-00791 (PTAB 2017).

107 thoughts on ““Customization Module” is a Means-Plus-Function Element; Indefinite Without Disclosed Algorithm

  1. 13

    It is just bizarre that people think they can ignore simple scientific truths. They just jump over them and then yap out with ridiculous arguments. The whole thing is just ridiculous.

    (1) Information processing is necessarily a physical process.

    (2) Machines cannot provide new functions without new structure.

    (3) The structure is the set of solutions that perform the functions described by the claims. Anyone (POSITA) skilled in this art knows the set of solutions. Textbooks used at MIT for graduate computer science classes say exactly this. Anyone of those solutions is definite structure. The entire notion of “Abstract” is absurd.

    1. 13.1

      My guess too is that one reason that there are so many problems with the patent system is that people reject 1-3 (irrationally so), and then try to come up with laws that are against science. All of this started with Benson.

      I also suspect one reason that a lot information processing patents are so strange and that the law around information processing is so strange is the denial of the basic science of information processing.

      In other words, the judicial activists have made the problems by denying 1-3.

      1. 13.1.1

        Irrationally?

        (1) I think you are confusing “information processing” and claims directed to “information processing”. Information processing claims are generally not limited to a particular physical process. The fact that information is processed in the physical space cannot save claims without physical limitations.

        (2) This issue is not whether a machine can provide new functions without new structure. The issue is whether providing new functions transforms an old machine into a new machine.

        (3) You are working under a personal definition of “structure” that may not be applicable to patents. For example, “corporate structure” is a type of definite structure that has no bearing on patent claims.

        1. 13.1.1.1

          NS II: you have proved my point.

          (1) When did I say claims? Not limited to a particular physical process? It always is. Always if it is enabled. If a claim is enabled, it has physical limitations. Pick one of the solutions that is enabled and build it. It has physical limitations. You are playing the game of that since there are so many solutions that are enabled that there are no solutions, which is not logical.

          (2) New functions means new structure, which means not the same old machine.

          (3) I working under a physical definition of structure. Your example of a “corporate structure” is not part of a machine that processes information.

          You seem to want to prove my point about irrational.

        2. 13.1.1.2

          I think based on your post NS II that we can assume that you have no interest in rational discourse but rather would like to make things up and obfuscate. You are forever marked as an intellectually dishonest person.

          1. 13.1.1.2.1

            While I do not mind posts from NS II all that much, he DOES tend to take some decidedly P00R stances with which to identify with.

  2. 12

    I do not understand the need to treat whether the term “customization module” is definite or not in a way different from the way any other term would be treated. The question the court should answer is whether the term defines the limits of the claim with reasonable certainty. Why does the court go through a non-statutory interpretation of 112f, and then a non-statutory interpretation of the written description requirement of 112a? Can anyone point to a benefit?

    1. 12.1

      ” Why does the court go through a non-statutory interpretation of 112f”

      Would you elaborate on why the interpretation under 112f is non statutory?

    2. 12.2

      Like Ben, I am not sure that I entirely understand your question. Nevertheless, fools rush in where angels fear to tread, and I am a fool, so I will take a crack at answering.

      If we just read “customization module,” as a phrase, the metes and bounds of the claim are unclear and the patent fails—full stop, easy peasy. However, “the patentee, after describing his machine, has set forth his claim in rather ambiguous and equivocal terms, which might be construed to mean either a process or machine. In such case the construction should be that which is most favorable to the patentee, ‘ut res magis valeat quam pereat.’” Corning v. Burden, 56 U.S. 252, 269 (1854). In other words, where it might yet be possible to dig deeper and given the claim a reading that makes it statutorily compliant, one should do so.

      Therefore, the court did not just stop with the plainly unclear “customization module,” but heroically tried to make the claim work by parsing it under §112, ¶6 (which is, after all, the only part of Title 35 that explicitly makes functional claiming permissible). For better or worse, even after all of the §112, ¶6 rigamarole, this claim was still not salvageable. Poor drafting cannot be fixed after the fact (although maybe the patentee could still go back for a reissue that does not recite the “customization module”).

      1. 12.2.1

        Greg >>>If we just read “customization module,” as a phrase, the metes and bounds of the claim are unclear and the patent fails—full stop, easy peasy.

        People skilled in the art know what the term customization module means in view of the specification. There is definite structure. There is a definite set of solutions where people skilled in the art can generate solutions. Full stop.

        This is just cra zy. People are just making things up and making proclamations about it. Why not just proclaim the Earth revolves around the Sun because to me—someone with advanced degrees in the art–the things you and judges say are just ridiculous, offensive, and medieval.

        1. 12.2.1.1

          As I have pointed out, Greg “I use my real name” DeLassus has “whipped out” his credentials which show that he has no business opining on anything related to the computing arts.

          THAT is “full stop, easy peasy.”

      2. 12.2.2

        The Sun revolves around the Earth. Easy peasy. You just say it and it is true as long as you are a CAFC judge.

      3. 12.2.3

        (which is, after all, the only part of Title 35 that explicitly makes functional claiming permissible)

        The use of terms sounding in function is NOT constrained to 112(f).

        Come on Greg – you SHOULD know better.

    3. 12.3

      I do not understand the need to treat whether the term “customization module” is definite or not in a way different from the way any other term would be treated.

      Because the 112(f) statute specifically requires a substitution of the structure in the spec for the function.

      The question the court should answer is whether the term defines the limits of the claim with reasonable certainty.

      And that is what they’re answering. But they’re not answering if “customization module” is reasonably certain. They’re answering if the structure in the specification that the words “customization module” refers to are reasonably certain.

      Why does the court go through a non-statutory interpretation of 112f,

      It’s not non-statutory, it’s mandated by the statute. The term “shall” be construed to cover the structure in the spec.

      Can anyone point to a benefit?

      Well prior to 52 the Supreme Court was just finding claims to functions indefinite, so 112(f) was invented to allow a claim to include functionality and still be definite. So it makes some drafters happy.

      1. 12.3.1

        The Act of 1952 was more involved than that, Random.

        Again – these are known facts, of which BOTH Random and Greg SHOULD BE aware of.

      2. 12.3.2

        In response to Random
        112f does not require the substitution when the claim does not recite “means for.” Making this substitution when other terms are used is not what the statute calls for. This is what I refer to by a non statutory interpretation of 112f.

        I suppose that prior to 1952, the courts were invalidating claims when the claims terms were not definite, or when the full scope of the claim was not enabled. Where did you see a per se rule that claims to function were indefinite?

        1. 12.3.2.1

          112f does not require the substitution when the claim does not recite “means for.”

          I am not convinced that this statement is as clearly true as you evidently suppose it to be. 35 U.S.C. §112(f) recites:

          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, the statute does not say “expressed as a ‘means’ or ‘step’ for performing… .” That is to say, the statute does not call out “means” and “step” as magic words. It is perfectly sensible to read the statute as if they are magic words (where §112(f) does not come into play unless the patentee uses “means for” or “step for”), but it is equally sensible to read the statute as if they are not magic words (where §112(f) is invoked by any recitation of function in a combination claim that is not accompanied by a recitation of structure sufficient to perform the function).

          For whatever reason, the CCPA/CAFC have taken a middle course between “magic words” and “not magic words” in their reading of §112(f)—where §112(f) might be invoked by magic words, but also might not. The Supreme Court has never seen fit to review the CCPA/CAFC’s reading of this portion of the statute, so for the moment the CCPA/CAFC’s reading is the law. In other words, it will not do (at least at present) to adopt too “fundamentalist” a “magic words” reading of §112(f).

          1. 12.3.2.1.1

            To Greg
            I think that the court got it right when it was not willing to invoke 112f when the drafter did not clearly indicate that he wanted to, but that ship has sailed. I guess we now left to decide if a bearing invokes 112f, if a clamp invokes 112f, if the step of separating two substances invokes 112f…

            1. 12.3.2.1.1.1

              Congress wrote 112f as an optional claim format to be invoked by the applicant.

              The courts (led by the Supreme Court) have rewritten 112 (and not just 112(f)) to replace the applicant with themselves — based on the officious “we must beware of scriviners” mantra.

              Congress gave the applicant — not the scrivening Court — the power/authority/responsibility to state what the invention is (and the optional forms by which to do so).

              It is an ultra-crabbed reading to want to see quotations around the plain words that Congress indicated.

              As atttorneys, our duty to the Court includes NOT accepting when the Court has made obvious errors. Our call is not to clench tight our eyes and UNthinkingly state: “Well, the score board says…”

            2. 12.3.2.1.1.2

              David Stein previously WRECKED Random (and here, Greg is parroting Random) on this very point of the use of terms sounding in function appearing in MANY art units without the “hurry” to invoke 112(f).

              It is no coincidence those cheering on this use of 112(f) in an anti-patent manner and their views against software innovation.

            3. 12.3.2.1.1.3

              I think that the court got it right when it was not willing to invoke 112f when the drafter did not clearly indicate that he wanted to…

              Fair enough, of course. There are good arguments for both approaches (“magic words” and “not magic words”) to interpreting §112(f). As it happens, I come down on the other side from you (I prefer the “not magic words” approach).

              My real point, however, is that the approach that the CAFC took here is only “non-statutory” if you approach the statutory text with a “magic words” hermeneutic. There is no reason a priori, however, that one should approach the text with such a hermeneutic. If the Congress had wanted the §112(f) text to be interpreted in a “magic words” manner, then they could have made that point more clear by writing “expressed as a means or step for performing… .” They did not do so, and as a result the “magic words” and “not magic words” readings of §112(f) are equally plausible.

              1. 12.3.2.1.1.3.1

                To Greg
                Federico uses “”means’ plus statements of function” once in his comments. link to ipmall.info
                Anyway, you are correct that the last paragraph of section 112 could have been drafted more specifically if Congress intended that only the explicit use of the word “means” would trigger 112.

                1. Thanks, PiKa. Federico wrote that “some measure of greater liberality in the use of functional expressions… is authorized… and… decisions such as… Halliburton… are modified or rendered obsolete, but the exact limits of the enlargement remain to be determined,” (emphasis added). What does that mean, “modified or rendered obsolete”?

                  The rigorously honest answer is “I do not know.” I think, however, that the best explanation is that Federico—when he wrote “the exact limits of the enlargement remain to be determined”—meant that he recognized that §112(f) is open to both a “magic words” reading and a “not magic words” reading. He did not know at the time that he wrote his commentary whether courts would prefer the “magic words” approach or the alternative, so he could not say whether the effect of §112(f) would be to completely abrogate Halliburton, or merely to limit somewhat the force of Halliburton.

                  That is to say, if §112(f) is given a “magic words” reading, then Halliburton still invalidates functional-at-the-point-of-novelty claims that do not use the magic words (and thus do not invoke §112(f)’s saving graces). If, on the other hand, courts give §112(f) a “not magic words” reading, then you could end up with a situation in which all functional claim terms effectively invoke §112(f), at which point Halliburton is effectively abrogated in its entirety, because there could never be a situation in which a claim is really functional at the point of novelty.

                  In the earliest days post-1952 act, it looked (In re Fuetterer, 319 F.2d 259, 263 (C.C.P.A. 1963)) like the C.C.P.A. was going to go with the “not magic words” approach, which would have effectively abrogated Halliburton in toto. For some reason, however, they eventually wandered off in a different direction.

                2. Mr. “high-road” Greg refuses to acknowledge the actual law in that “approach, which would have effectively abrogated Halliburton in toto.” MISSTATES the fact that is simply is NOT dependent on ANY “approach” to know that Congress DID abrogate Halliburton with the Act of 1952.

                  People seem to want reference the writings of Federico without understanding the context of his feelings included and that he personally had not wanted Congress to go as far as Congress did.

                  Engaging in “polite” delusion as is Greg’s want (with Random) is STILL engaging in delusion.

  3. 11

    Interestingly, the comment below of:

    Stepping back, the 112(f) law is really just asking for one definitional layer deeper than what is recited in the claim. That’s it.

    Is flat out wrong.

    BUT it is precisely wrong in exactly the same manner in which the Court has fabricated its “Abstract” blade (part of the “Gist/Abstract” sword).

    Repeat after me: breadth is not indefiniteness.

    Points though for recognizing the fear of the Courts, and even more points for recognizing the fifth Kondratiev wave of innovation.

    By now, anyone (and everyone) who is in the innovation protection business should have a thorough understanding of the Kondratiev waves.

    1. 11.1

      “Stepping back, the 112(f) law is really just asking for one definitional layer deeper than what is recited in the claim. That’s it.”

      anon, what Easwaran and I are talking about is how to serve our clients. How to write a specification that gets around these ridiculous holdings. Easwaran is absolutely right about this and this is part of the best practices that is taught at the top prosecution firms in the country.

      I’ve been to seminars where exactly this point is made. Doing this is about serving the client.

      1. 11.1.1

        Real client service comes in drafting structural claims supported by disclosure of structure in the spec. Devising new ways to try to disguise functional-at-the-point-of-novelty is just a lot of wasted effort in devising new ways to ensure that your client’s patent fails when it counts.

        1. 11.1.1.1

          As has been seen by Greg “whipping out” his credentials, he has ZERO understanding of this art unit (and what it takes to provide service to clients in THIS art unit).

          Night Writer,

          I do “get” your point that both you and Easwaran ARE talking about how to deal with the nonsense (and lack of touch with reality) that comes from the courts, and my (admittedly sharp) rebuke should not be taken personally against either you or Easwaran. My rebuke is more towards the plain fact that the judges are over their heads and speaking gibberish — based on the type of innovation in front of them.

          From a perspective of having studied the history of science and technology, this inanity of NOT wanting to understand the basics of the Fifth Kondratiev wave is perplexing, given that the very reason why we have a patent system is to foster innovation (and doing so should NOT be locked into an archaic ‘there must be a single objective physical structure’ mantra).

        2. 11.1.1.2

          Greg, there is real structure that the judges are not acknowledging to try and weaken the patent right.

    2. 11.2

      Repeat after me: breadth is not indefiniteness.

      You don’t have a citation to the supreme court saying that, right? You only have the logic of the same court that similarly stated “indefiniteness is only insoluably ambiguous or unamenable to construction” and how did those statements turn out after Nautilus?

      I do completely agree with you that the same court that was so wrong the first time did indeed make this pronouncement many times as well.

      1. 11.2.1

        You confuse some type of needing a citation from the Supreme Court has being reflective of the law as written by Congress.

        That, and in this instance, plain common sense. Do you need a citation from the Supreme Court to know how to use the bathroom?

  4. 10

    Easwaran has it right about how to get around the 112(f) made-up problem.

    The whole game (which I think was invented by Taranto, another SV selection that Obama appointed) is to try and remove the POSIT or “anyone” and substitute this with a judge’s opinion.

    () Module does have meaning or it wouldn’t be used in almost every software specification on elance.

    () Software does have structure. Please google this and you will see that all academic papers from scientist in peer reviewed articles with ethical standards agree on this.

    This decision is absurd to the 9th degree. It is another illustration of why the CAFC has to be abolished to remove all the stacked judges from Obama.

    1. 10.1

      Matching absurdity with error won’t being clarity.

      The path forward necessarily includes debunking the court-induced lack of grasp with reality.

      I know that it is your point regarding the higher-physics concept of the conservation of information, but all too often that concept is being lost in translation, and purposefully “lost” (read that as obfuscated) by those who simply do not want innovation protection for the computing arts.

      The bottom line though is that patent law fully embraces innovation in the computing arts, and ALL efforts (from the bench) to segregate and remove protection from such innovation are necessarily ultra vires.

      As those in the Art know: software is merely a design choice of “ware.”

      And outside of the colloquial use, software is NOT “mere logic. Software is not the “thought of software.” Software is necessarily a machine component, and simply earns — by its nature — every right of innovation protection that any other machine component (any other “ware”) has a shot at earning.

      There are simple baseline facets that must be acknowledged in ANY inte11ectually honest conversation on the merits.

      1. 10.1.1

        >>I know that it is your point regarding the higher-physics concept of the conservation of information,

        My point is and always has been that information processing is necessarily a physical process. That one simple point destroys all the arguments made by all the activist judges. Another simple point is that a machine cannot provide new functions without new structure.

        1. 10.1.1.1

          Absolutely correct.

          What you posit here was elegantly captured quite a few years back with the thought experiment of the Grand Hall.

          I will note (again) that not a single anti-software patent advocate has been able to engage in that Grand Hall experiment in any meaningfully inte11ectually honest manner.

          Not a single one.

    2. 10.2

      The whole game (which I think was invented by Taranto, another SV selection that Obama appointed) is to try and remove the POSIT or “anyone” and substitute this with a judge’s opinion.

      Taranto was not even on the court when it decided Biomedino, LLC v. Waters Tech., 490 F.3d 946, 950 (Fed. Cir. 2007), which really decided everything that you need to know to get to the outcome in this case. The rule is not that one takes the skilled artisan out of the analysis in deciding whether a term has a structural meaning—quite the opposite. The problem for the patentee in this case is that no skilled artisan could say with a straight face that “customization module” refers to a specific structure or a specific class of structures. Everyone knows that the phrase just means “anything that will accomplish the ‘customization’ task.”

      Once it is clear that there is no structure conveyed, then one must ask whether the skilled artisan can identify disclosure of corresponding structure in the written description. Once again, this does not take the skilled artisan out of the analysis. Rather it is just that “the testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification.” Default Proof Credit Card Sys. v. Home Depot U.S.A., 412 F.3d 1291, 1302 (Fed. Cir. 2005).

      1. 10.2.1

        Greg >>>The problem for the patentee in this case is that no skilled artisan could say with a straight face that “customization module” refers to a specific structure or a specific class of structures. Everyone knows that the phrase just means “anything that will accomplish the ‘customization’ task.”

        Greg, the structure is in the set of solutions that perform the functions described for the customization module. That is structure every bit as much as any structure has ever been claimed in any patent application in the history of the world.

        There is a set of solutions that define the structure. Everyone that is skilled in this art knows that.

        I have posted linked to books used at MIT that say exactly this. That functional language is used to convey the known solutions (and solutions outlined in the chapter.)

      2. 10.2.2

        Everyone knows that the phrase just means “anything that will accomplish the ‘customization’ task.”

        The underlying problem with all who disagree with you is, of course, that they believe that “any piece of software that accomplishes this function” *is* a structure.

        1. 10.2.2.1

          See Grand Hall experiment and show how a new functionality is somehow NOT a matter of structure.

          Feel free to liberally use the patent doctrine of inherency.

          1. 10.2.2.1.1

            For the ten zillionth time, the written description issue (which can also be framed as a subject matter eligibility issue) is not “does a computer have a structure” or “does computer that does A have a different structure than computer that does B”.

            The issue is: is there an objectively identifiable physical structure that distinguishes this computer from prior art computers and, if so, is it clear from the specification what that structure is.

            And we all know what the correct answer to those last two questions are: NO.

            If you disagree, then tell everyone what is the objective physical structural difference between a computer that can tell me if my preferred ATM password is acceptable versus a computer that can tell me if my grandm@’s collection of Frank Sinatra CDs is complete. Go ahead. Should be easy for you, Monte Hall. You’re a very serious person after all. Didn’t you say you got a “High A” in an elective class in law school?

            LOL

            1. 10.2.2.1.1.1

              While you say “is not” (here) everything else you say is in contradiction to the point presented, and thus your feeble attempt to NOT consider that point is merely evidence of your own chicanery.

              And that remains so no matter how many times you try to prevaricate on the subject.

            2. 10.2.2.1.1.2

              Please pardon potential (re)post due to the count filter:

              While you say “is not” (here) everything else you say is in contradiction to the point presented, and thus your feeble attempt to NOT consider that point is merely evidence of your own chicanery.

              And that remains so no matter how many times you try to prevaricate on the subject.

            3. 10.2.2.1.1.3

              … and it does not take a High A in any class to see that you are attempting (yet again) to turn the optional claim format of “objective physical structure” into somehow being NOT an optional claim format.

              You ask for something that does not prove your point — because it cannot prove your point.

  5. 9

    RG A novel black box is never allowable.

    And novel logic for processing data is also never allowable (because it’s ineligible).

    But somehow when these two things are combined – voila! – it’s the most important and totally patent-worthy subject matter evah! Without those patent claims, the world would stop turning and nobody would write any new software or create those oh-so-essential “apps” that tell you which remotely purchasable n-u-tritional supplement would most diminish the likelihood of your cat coughing up a ha i rb @ l l.

    By the way, what’s the structure of “t-0-0-lbar customization” logic and how does it differ from “display a random ad” logic? Does the flowchart for the former necessarily have more squares and less diamonds, or is it the other way around? Let’s ask Judge Newman. She’s a real deep thinker on this subject, a genuine tech w-i-z-a-rd, or so I have been told.

    1. 9.1

      Your obfuscations on eligibility are noted.

      Once again, the law as written by Congress provides a purposefully low bar on eligibility that has but two simple requirements:

      1) can the innovation be claimed in at least one of the statutory categories, and

      2) does the innovation possess utility within the Useful Arts.

      That
      Is
      It

      ALL else is muckery.

      1. 9.1.1

        This is circular patent-maximalist thinking.

        Of course to answer 1 and 2, one must first identify “the innovation.” Thus the existence of an innovation is a necessary, but not sufficient, precondition to eligibility.

        1. 9.1.1.1

          There is no such circularity.

          Perhaps your comment was truncated, but it is not clear where you want to go with your “existence, but not sufficient” statement.

          My post provides the sum total OF sufficiency per the words of Congress.

          Are you (somehow) taking issue with that?

  6. 8

    Customization module is not more a nonce word that is “screw” or “bolt.”

    Given the disclosure of what the customization module does, one of ordinary skill in the art would have understood the structure of the recited customization module with a similar level of definiteness as would one of ordinary skill in what ever art a claim might recite “a screw.”

    The decision is absurd.

    1. 8.1

      The nonce word is “module” not “customization module.” A “module” could be virtually anything and requires a modifier like “customization” to have any meaning. Given that “customization module” is defined by its result–not its implementation, it lacks structure. In contrast, a “screw” does not require further context to have meaning because one does not have to use a screw in order to identify it as a screw.

      You are confusing 112(f) with enablement and/or written description.

      1. 8.1.1

        I believe Les’ view is that “software” is sufficient structure to avoid means-plus. The usage of module in the claims is equivalent to “a piece of software or code for [performing the function, in this case customizing]”

        He is incorrect, as software has no particular structure either.

        1. 8.1.1.1

          RandomGuy, totally agree with basically everything you have said here, but there is at least one very concerning case where the CAFC found that “code” and “program” was enough structure to avoid 112f. Zeroclick vs Apple … Any thoughts on that?

      2. 8.1.2

        Greg: Given that “customization module” is defined by its result–not its implementation, it lacks structure.

        That’s true of all claims to “new” data processing machines (e.g., computers) that are distinguished from prior art machines purely on the basis of what are “configured” to do. And that’s pretty much true of every “do it on computer” claim out there, as well as every B-claim to “computer readable media” that’s out there.

        Note: this is not an “opinion.” It’s a fact. It’s also a fact that this paradigm is a gaping, baseless, and entirely judge-created exception to the patent laws which had existed and which promoted progress without that exception for eons. You can applaud that exception (as a tiny subset of patent attorneys, self-dealers and unimpressive academics do) or you can think it’s a poorly reasoned handout to industry players that has damaged both the credibility and functioning of the patent system (as many patent attorneys, computer programmers, and academics have long believed).

        But pretending or eliding over the fact that this is paradigm isn’t a judge-crafted exception created out of thin air is, frankly, disgusting. Why do people engage in that behavior? Golly, it’s so hard to figure out …

      3. 8.1.3

        You’ve missed the mark here. Would “customizer” be better, because then you can’t separate the word “customization” from the word “module”? No, of course not; “customizer” would have the same problem as “customization module.” The problem isn’t, as you speculate, that a “module” has no inherent meaning or that a “customization module” is defined by its result. Rather, the problem is that there is not a deeper layer of definition in the specification for the term “customization module.”

        But here’s the real wacky part that most people don’t seem to get: you could apply the same logic to invalid a claim using the term “screw.” A “screw” is also “defined by its result” because the only limitation on what is within scope is the ability to screw into something. Does the screw need to be metal? No, of course not. Does it need threads? No, of course not. Must there be a sharp tip? No, of course not. Must there be a wider top portion? No, of course not. If your item has none of the above features but can screw into something, is it a screw? What about if it is metal, has threads, a pointy end, a wider top…but cannot screw into something; is it still a screw? I’d say no. I submit that a screw is defined by its ability to screw into something, nothing more, nothing less. Screwed up, right?

        The fundamental problem people don’t seem to grasp is that NOTHING IS STRUCTURAL. Any claim limitation is functional and simply narrows the claim to the class of things that satisfy the function associated with the limitation. If you get into particle physics and claim a quark, maybe you’ve got me. Otherwise, this proposition holds.

        So, let’s get practical. The only real-world difference between reciting a “screw” in your claim and reciting a “customization module” (assuming no deeper definitional layer in the specification for either term) is that judges are comfortable with the word “screw” but not with the word “customization module,” so they don’t reject the claim with the word “screw” but do reject the claim with the term “customization module.” It’s as simple as that, and we all know it.

        Stepping back, the 112(f) law is really just asking for one definitional layer deeper than what is recited in the claim. That’s it. Even though you realistically can use the term “screw” without doing that, the conservative practice will be to take every item you recite in a claim and just provide one layer of deeper definition on the specification. Do that and don’t worry about 112(f). Fail to do it, and pay the price. Pretty straightforward, if you understand it this way.

        1. 8.1.3.1

          NOTHING IS STRUCTURAL. Any claim limitation is functional and simply narrows the claim to the class of things that satisfy the function associated with the limitation.

          Really? How does one “ketone”? I have never seen that function performed. Has anyone else?

          A “screw” is also “defined by its result” because the only limitation on what is within scope is the ability to screw into something. Does the screw need to be metal? No, of course not. Does it need threads? No, of course not.

          Not really. I am sure that once-upon-a-time the word “screw” conveyed “anything capable of effecting the function of burrowing into a substrate during the application of rotational force.” Any more, however, there really are structural implications to the word “screw.”

          I agree that a pointed tip or made-of-metal are not essential to “screw”ness, but threads really are. If you have something with every other stereotypical character of a screw, but without threads, no person skilled in any art will call that thing a “screw,” even if it is capable of burrowing into a substrate with the application of rotational force.

          In other words, there are pseudo-functional words out there—i.e., words that used to convey functional connotation, but now really convey structural connotation to one or more relevant populations. That does not make these words any less really structural in actual language as actually used.

          Unless you can show me an example among competent English speakers, however, of “ketone” or “octagon” being used as a verb, I remain unconvinced of the it’s-all-really-functional hypothesis.

          1. 8.1.3.1.1

            Unless you can show me an example among competent English speakers, however, of “ketone” or “octagon” being used as a verb, I remain unconvinced of the it’s-all-really-functional hypothesis.

            Oh, Greg, it seems you are still stuck in the iron age.

            LOL

            1. 8.1.3.1.2.1

              For anon’s next demonstration, he’s going link to an image of the male organ and tell us it’s a “threadless screw” because it is “configured to screw”.

              1. 8.1.3.1.2.1.1

                Colorful, but inapposite as my example does NOT change the connotation of “screw” under discussion.

                And we haven’t even broached the subject of improvement patents….

                ** for a different connotation, see: link to thespruceeats.com

            2. 8.1.3.1.2.2

              That is not a “screw.” That is a “ball screw” which is something entirely different.

              1. 8.1.3.1.2.2.1

                No. It is NOT something entirely different – and that very much is a critical point to be understood here, NS II.

                You kind of have this habit of choosing odd things to speak up about….

        2. 8.1.3.2

          Some patent maximalist, doing that thing that they do: A “s-c-r-e-w” is also “defined by its result” because the only limitation on what is within scope is the ability to screw into something. … Does it need threads? No, of course not.

          Wait … what planet is this?

          The fundamental problem people don’t seem to grasp is that NOTHING IS STRUCTURAL.

          You just gotta love it. I look forward to hearing this “argument” at the Supreme Court. At least it’s a tad more straightforward and direct than the otherwise identical nonsense that our patent system has been heavily leaning on for decades now, i.e., “data processing is the essence of electronic structure”.

        3. 8.1.3.3

          The problem isn’t, as you speculate, that a “module” has no inherent meaning or that a “customization module” is defined by its result. Rather, the problem is that there is not a deeper layer of definition in the specification for the term “customization module.”

          You can’t invent a function, the function is consequence of physics. You can only invent a structure that has the utility of achieving a function. That’s why 112(f) exists in the first place – Claims that were defining terms by function were constantly being found indefinite even when their spec had a particular structure that achieved the result. That’s what happened in Halliburton. All 112(f) does is import structure from the spec into the claims, thus avoiding the problem that nobody has invented a function.

          The fundamental problem people don’t seem to grasp is that NOTHING IS STRUCTURAL. Any claim limitation is functional and simply narrows the claim to the class of things that satisfy the function associated with the limitation.

          What a silly statement. Why write a section 112(f) at all then if all terms are the same, hahaha.

          First of all, a screw does have a structural definition, and it does require a thread. The fact that you don’t know the definition of a screw doesn’t mean it doesn’t exist. Structures are separate from results. This applies even to machines that are nominally named for their functions. There are a class of machines that have similar structures that are called toasters. There are machines that perform the function of toasting, and you might call those toasters. The two sets are not the same, and in fact if the specification fails to nominate which it was talking about, claims may be indefinite regardless of being in means-plus or not.

          So, let’s get practical. The only real-world difference between reciting a “screw” in your claim and reciting a “customization module” (assuming no deeper definitional layer in the specification for either term) is that judges are comfortable with the word “screw” but not with the word “customization module,” so they don’t reject the claim with the word “screw” but do reject the claim with the term “customization module.” It’s as simple as that, and we all know it.

          No, it’s that “screw” connotes a particular structure in the mind of the POSITA, while customization module connotes no structure at all to the POSITA. You mind as well argue that Written description is a fake requirement because you could always be more descriptive, as if the fact that it’s a continuum inherently means there is no threshold for sufficiency.

          Stepping back, the 112(f) law is really just asking for one definitional layer deeper than what is recited in the claim. That’s it.

          Simply wrong. If you were correct, then every means-plus invocation would surpass 112(b) so long as the spec was more definitive. But there are cases that find the disclosure in the spec to be insufficient, which would be impossible under this logic. Again, like written description, it is enough when it connotes a particular structure in the mind of the POSITA.

          Pretty straightforward, if you understand it this way.

          Let’s assume that there is a computer program that calculates an estimated driving time between point A and point B. A claim to “means for estimating driving time” invokes means plus, as does “a module configured to estimate driving time” as does “a processor configured to estimate driving time” because all of them are seeking a result (an estimated time) without a limitation that nominates how it is achieved.

          If the specification states “the means for estimating driving time is computer code comprising a program that estimates driving time between point A and point B” that is indefinite as failing to provide a structure. If the specification further states “The program takes inputs of the positions of A and B and uses them to estimate driving time” that still isn’t structural. Nor is “The program takes inputs including positions of A and B and calculates a distance, then assumes a base driving time and modifies the base time by historic traffic data” it STILL isn’t structural. It only becomes structural when an algorithm nominates inputs and explains what is done to the inputs in order to achieve a definite output. The claim is indefinite until the specification states something akin to “distance divided by 15mph” – that is a full description with transmutes the input into the output. The question is not if the spec is more detailed than the function, the question is if the spec discloses a concrete algorithm that achieves the result.

          It ought to be obvious that it has to be this way, because otherwise someone will come up with a terrible, inaccurate algorithm, and use means-plus to find any algorithm, even extremely accurate ones that were wholly unposited by the inventor, infringing.

          And since you have a lot of trouble separating structure and function, you should know that the same rule applies outside of means plus too – When a function is claimed and it isn’t clear what actions are encompassed by the functional result, the function is indefinite.

          Some basic reading for you:

          545 F.2d 141 (Means plus indefiniteness is related to written description)
          304 US 364 (functionality without sufficient structural description is invalid)
          277 US 245 (Claim to functionality not limited by structure is invalid as inherently overclaiming)

          1. 8.1.3.3.1

            RG: It only becomes structural when an algorithm nominates inputs and explains what is done to the inputs in order to achieve a definite output.

            For the sake of intellectual honesty, let’s pause here and note that this still isn’t structure. It may be accurate to state that this is where a judge-made exception to reality permits something that is not structural (e.g., a set of instructions for applying logic or math to data) to be deemed “legal quasi-structure” for patent law purposes.

            But it’s still not objective physical structure, which is the sense that the term “structure” had for most of the existence of the patent system until a couple judges decided to change that. Because they could, and for no other reason.

            1. 8.1.3.3.1.1

              … and in other news, the “objective physical structure” of Malcolm’s is still an optional claim format.

        4. 8.1.3.4

          A “screw” is also “defined by its result” because the only limitation on what is within scope is the ability to screw into something.

          The unspoken assumption behind this argument is that the verb definition of screw is the original and the noun definition is derivative on the verb definition. So, is that true? Not really. So much for that rant…

          1. 8.1.3.4.1

            Mr. “high-road” DeLassus is playing the obtuse misdirection game.

            Maybe you should try to read your own link (once corrected) – and see all the early etymology for the noun is wrapped up with verbs and actions.

          2. 8.1.3.4.2

            Greg, a screw is a physical object with a known function of fastening something else. It is not analogous to an empty black box patent drawing which is asserted in a claim as having several different specific functions, alleged to be novel, but for which no enablement is taught in the specification. [Not even an algorithm per the new PTO 112 guidelines.] It might be more analogous if the claim called for a screw with several different allegedly novel functions or properties, none of which is taught in the spec. That would have the same 112 problem.

            1. 8.1.3.4.2.1

              Paul — you are being obtuse to the point at hand.

              The “physical object” ITSELF is NOT a “singular objective physical structure” that is the object of those wanting how the law to read.

            2. 8.1.3.4.2.2

              Sure, Paul. Naturally I agree that the “screw” is a poor analogy to the present case. I was taking issue with the “screw” analogy. As can be seen, it was a very weak argument in the service of a logically weak conclusion.

    2. 8.2

      Given the disclosure of what the customization module does, one of ordinary skill in the art would have understood the structure of the recited customization module with a similar level of definiteness as would one of ordinary skill in what ever art a claim might recite “a screw.”

      I am very glad to hear it. Whether this panel was “right” or “wrong” to hold as it did, surely you can see from this outcome that writing an application with “customization module” (or “selection engine” or “optimization circuit” or suchlike) will do your clients no great favors. Rather, if your client wants a claim that can stand up in court, you should simply disclose and claim these structures that you contend the skilled person would understand to be conveyed by “customization module.” Because you contend that it is definitely clear what is meant by “customization module” (& simili), I am certain that going forward you are not going to use this sort of compromised language, right?

      Instead, I am certain that you will disclose some actual structures (circuit wiring, code, etc) that we can all recognize as adequate structure for accomplishing the stated function. Then you will claim those structures. Right?

      Well, right???

      1. 8.2.1

        If (and we know the result of that “if”) “objective physical structure were not just an optional claim format, then “mr.high.road,” your penchant for ‘just claim the structure’ would have merit under the law as written by Congress.

        Be that as it may, you did notice that this case is non-precedential, eh?

    3. 8.3

      Les– for 112(f) purposes, the question is not if someone of skill could have programmed the module or could have imagined its structure. The question is if a “customization module” actually existed in prior art. A screw actually exists in prior art, and is commonly referred to as a screw, so there is no issue claiming a “screw for attaching”.

      If a “customization module” actually existed in prior art (and was commonly referred to by that name), they could probably have avoided 112f (see, e.g., Zeroclick vs Apple). Of course, that would have impacted their 103 argument… which is really where the problem lies (functional claiming at the point of novelty).

      This was not a hard case.

      1. 8.3.1

        ksss,

        No. What you say here is completely off, and absolutely misses the point at hand.

        1. 8.3.1.1

          anon, I will note zeroclick vs apple, where “user interface code” was NOT found to invoke 112(f) precisely because such user interface code was “existing in prior art at the time of the inventions. ” Thats an exact quote from the CAFC.

          Indeed, the question is was a customization module “existing in prior art at the time of the invention.” If customization modules were existing in prior art, they likely would have avoided 112(f) just as zeroclick did with “user interface code.” But then it likely would have impacted their 103 arguments.

          You cant say both that “software was known to do this function, so no 112(f)” and say that “this is a novel function” in the same argument.

          The fact that one of ordinary skill COULD HAVE programmed software has no bearing, but I praise you and Les for repeating anargument that the CAFC says it has ‘repeatedly and unequivocally rejected.’

          “we have repeatedly and unequivocally rejected this argument: a person of ordinary skill in the art plays no role whatsoever in determining whether an algorithm must be disclosed as structure for a functional claim element”); Blackboard, 574 F.3d at 1385 (explaining that “[t]he fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the
          system users’ predetermined roles goes to enablement[,]” whereas “[t]he question before us is whether the specification contains a sufficiently precise description of the ‘corresponding structure’ to satisfy [pre-AIA] section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function”)

          1. 8.3.1.1.1

            You are falling into the Big Box of Protons, Neutrons, and Electrons trap.

            This is NOT a “112 or 103” dilemma, and attempting to paint it as such just shows that you do not understand the issues of either 112 or 103.

            1. 8.3.1.1.1.1

              Anon, speaking of protons neutrons and electrons, do you think “a collection of protons and electrons arranged to [perform a result]” should invoke 112(f) (assuming it is an element of a combination claim), or should be considered sufficient structure to satisfy definiteness if 112(f) is invoked?. After all, protons and electrons are certainly structural.

              1. 8.3.1.1.1.1.1

                Have you not just answered your own question?

    4. 8.4

      Les is right.

      The decision is absurd.

    5. 8.5

      In the sense that “nonce word” is confusing breadth and indefiniteness (the classic ‘if the word evinces more than ONE “objective physical structure” error’), MOST EVERY English language noun may be labeled a “nonce word.”

      Mr. “high-road” DeLassus errantly attempts to prove the opposite with the provision of an example (ketone), but that simply misses the mark of the discussion. If “ketone” is itself NOT a single objective physical structure, then its use HAS engaged the Ladders of Abstraction and falls to how “nonce” is being wielded here.

      Of course, this Ladders of Abstraction understanding is critical (and we have seen Greg attempt to merely mock Night Writer for NW’s provision of engineering understanding — and ignore my offering of the legal parallel). We have also seen the “Enemy of the State” quote-inducing pablum of Random (who, being an Examiner in the computing arts SHOULD know better).

      Under ALL of this though is the basic point what it takes to have a proper legal contextual understanding is NOT NEW.

      Those who would seek to deny innovation protection under the utility aspect of the US IP laws simply refuse to be inte11ectually honest (and are NOT held accountable for their gamesmanship).

  7. 7

    If only they had recited “a processor configured to customize the tag”!

    1. 7.1

      If only they had recited “a processor configured to customize the tag”!

      If only. There’s a non-neglible number of people who post on this board who think that doing so would 1) expand the scope of the claim and yet 2) lower the standard of disclosure needed for the claims to be valid.

      And if you’re talking about software examiners in the office, the view is almost universal that that is the case.

      1. 7.1.1

        There’s a non-neglible number of people who post on this board

        Pretty sure that’s also the belief of at least one of the professors who administer the board, although of course they will never cop to it (it’s not a defensible position, unless you are invested in the outcome and couldn’t care less about reason or logic). I think we’re supposed to accept that Dennis and Jason don’t have strong beliefs on any of these touchy subjects. They’re just reporting the cases as they come out, kind of like how Justice Roberts is just “calling balls and strikes” (according to Justice Roberts, anyway; most intelligent legally educated people understand that’s the furthest thing from reality).

      2. 7.1.2

        “And if you’re talking about software examiners in the office, the view is almost universal that that is the case.”

        That’s because it is the office’s defacto policy.

        1. 7.1.2.1

          And that de facto PTO office policy used to be even worse, strongly discouraging 112 rejections in applications, Even one’s upheld by the PTAB.

        2. 7.1.2.2

          That’s because it is the office’s defacto policy.

          1. 7.1.2.2.1

            I am curious Random: do you actually examine per your “directed policy,” or do you examine according to your (wildly errant) rants on these boards?

            Do you have the courage of your convictions, or do those convictions just become more and more bitter, day in and day out, when you act in a cognitively dissonant manner?

            1. 7.1.2.2.1.1

              do those convictions just become more and more bitter

              Glibertarians are always projecting. D-u-m-b-e-s-t people on earth.

              Get a life, Bildo.

              1. 7.1.2.2.1.1.1

                Mindless and mis-aimed ad hominem, complete with Malcolm’s inevitable “Accuse Others” meme.

                Follow your own advise, son.

  8. 6

    I agree with the idea that “customization module” invokes §112, ¶6, but this is mostly a case about lazy drafting. The “customization module” plays no role in Claim 21. This phrase does not actually begin to play any sort of substantive role in defining the invention until dependent Claim 23, so the words “customization module” should not even appear in Claim 21. If those words had not been there, the patentee would still have had a chance here. Example #1,234,561 of why words that play no role in a claim should not be in the claim.

    1. 6.1

      The “customization module” plays no role in Claim 21.

      It forced the examiner to find a customization function for 103 purposes. The fact that it is useless to the workings of the system is irrelevant if you understand how the office processes 103.

  9. 5

    Paul M: It is interesting that this Fed.Cir. case comes along just as the Senate is considering a bill that would e-x-pand 112 in that respect.

    In what manner is 112 being “e-x-panded” by this bill you refer to?

  10. 4

    The case against Samsung focused on Claim 21. Claims 1-8 and 11-20 had been cancelled by the PTAB. Mastercard International Inc. v. Grecia, IPR2017-00791 (PTAB 2017).

    As long as you are detailing the history, it is probably also worth mentioning that Adobe Systems petitioned for IPR of Claims 21-30, but the PTAB declined to institute on Adobe’s petition. In other words, the claims that were tanked here had previously survived IPR challenge.

    1. 4.1

      Not sure what the significance of that is. IPRs are prohibited by statute from addressing invalidity due to written description or ineligibility.

      1. 4.1.1

        Yes, and as understood the PTAB can deny IPR institution on that basis [claim ambiguity] even if the Petitioner had cited prior art that fully anticipated all elements of the claim no matter how broadly the ambiguous claim element was read. I.e., taught the same functions.

        1. 4.1.1.1

          [T]he PTAB can deny IPR institution on that basis [claim ambiguity] even if the Petitioner had cited prior art that fully anticipated all elements of the claim no matter how broadly the ambiguous claim element was read.

          Well, yes, the PTAB can deny institution on that basis, but in this instance the PTAB did not deny institution on that basis. Rather, the PTAB merely concluded that the petitioner had not carried its burden of persuasion. In other words, Adobe’s obviousness challenge failed on the merits.

          1. 4.1.1.1.1

            Adobe’s obviousness challenge failed on the merits.

            I wonder whether those “merits” included any reliance by the patentee on the wonderful results effected by this “customization module”.

            Not that it matters. Neither the PTAB or the PTO have demonstrated that they can reliably and accurately assess the obviousness of most “do it on computer” j-u-n-k”.

            Lookie! My computer does what you instruct it to do! Wowee zowee. Nobody could have predicted.

            1. 4.1.1.1.1.1

              Lookie! My computer does what you instruct it to do! Wowee zowee. Nobody could have predicted.

              See the Grand Hall Experiment.
              See the Big Box of Protons, Neutrons, and Electrons.

              See Malcolm prevaricate/obfuscate as he always does.

  11. 3

    Before LOURIE, CHEN, and STOLL, Circuit Judges.

  12. 2

    The plaintiff in this and the indicated related litigations is, unusually, a named individual, William Grecia. I wonder if he is independently that wealthy, or what PAE or other litigation investor was really funding these millions of dollars in losing patent litigations?

  13. 1

    “The claims include a means-plus-function limitation, but an example of the underlying mechanism was not disclosed in the specification.” [Not even an algorithm chart.]
    Specs with only “empty black boxes” for allegedly novel claim features are all to common these days. Likewise, “means for does not require the word means” case law has been established for some time. Yet there have still been relatively few D.C. cases actually decided on that basis. [Holding 112 para 6 or (f) claim element and supporting spec inadequacy and thus claim ambiguity.] Neither the Fed. Cir. or D.C.s have been all that receptive to 112 issues. It is interesting that this Fed.Cir. case comes along just as the Senate is considering a bill that would expand 112 in that respect.

    1. 1.1

      Paul, can you be more precise as to what you are referring to with your last sentence?

      1. 1.1.1

        MM, here is the 112 proposed language from the proposed patent legislation bill [otherwise on 101 itself and elimination of all Sup. Ct. patentable subject matter”excptions”] now being considered in Senate committee. Note the differences here from present 112(f):
        “Section 112
        (f) Functional Claim Elements—
        An element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. “

    2. 1.2

      Specs with only “empty black boxes” for allegedly novel claim features are all to common these days.

      I would call this the number one issue in patent law from my standpoint as an examiner in software.

      The fact that they survive the office and tend to survive court review (though the latter is largely because the issue is not properly raised) is the number two issue.

      1. 1.2.1

        Re: “Specs with only “empty black boxes” for allegedly novel claim features are .. the number one issue in patent law from my standpoint as an examiner in software .. [and] number 2 in [software patent related] litigation.”
        Thanks, I agree, and apparently the Senators and others backing the currently proposed new 102(f) legislation agree. But note that a significant part of this problem is that it requires an examiner to spend the time to dig into the spec looking for the absence of enablement for each claim element, or at least the claim element feature or function alleged to be novel, and too often that simply does not get done. Nor encouraged or rewarded by PTO management.

        1. 1.2.1.1

          Good point, Paul. I think that the proposed §112(f) revisions are a good idea, but I have no idea whether and how the PTO will change examination to accommodate the new clarity/enablement implications if the statutory text is amended as proposed.

          1. 1.2.1.1.1

            They’ll create a training involving an hour long powerpoint slide including three examples, none of which will address “a processor configured for…”.

            1. 1.2.1.1.1.1

              You know a processor configured for is already covered right? They just choose not to apply it.

              A novel black box is never allowable. Either it invokes means plus and is indefinite or it does not and is unenabled. The knowledge of skill in the art only supplements a disclosure, it does not substitute for it. This logic is not applied by the office.

              The standard for means-plus is not if it is entirely devoid of structure, the standard is if the art knows of a structure, or even a broad class of structures, that *is sufficient to perform the function*. A flying car invokes means plus, because the known structure of “car” is insufficient to perform the function (“flying”). This is even more clear after Williamson removed the presumption that not using means did not invoke means-plus. A processor is insufficient to perform functionality, so a processor performing any particular function should invoke means plus.

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