Supreme Court: What is the Role of Functional Claim Limitations?

by Dennis Crouch

One of the more interesting pending cases before the U.S. Supreme Court has to do with the use of functional claim language at the point of novelty. Eli Lilly and Company v. Erfindergemeinschaft UroPep GbR (Supreme Court 2019).  The Supreme Court has discussed this issue in a series of important cases — albeit most recently in 1946.

In Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), the Supreme Court invalidated Walker’s on those grounds:

The language of the claim thus describes this most crucial element in the “new” combination in terms of what it will do rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus. We have held that a claim with such a description of a product is invalid as a violation of Rev. Stat. 4888 [“he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.”]

Halliburton. The Supreme Court had previously held claims invalid that use “conveniently functional language at the exact point of novelty.”  Gen. Electric Co. v. Wabash Co., 304 U.S. 364 (1938).  The question in Halliburton was whether this patenting-bar applied to claims directed to a combination of elements.  Question as presented in Halliburton:

Is the doctrine of the case of General Electric Co. v. Wabash Appliance Corp., 304 U. S. 364, condemning the use of indefinite and functional language at the exact point of novelty in a claim of a patent, applicable to a claim on a combination of elements, or should the doctrine be limited as held by the Ninth Circuit Court of Appeals, to a claim on a “single element” or “specific product”?

Halliburton Brief.  The Court answered this question affirmatively — yes the same law applies to claims in combination.

We understand that the Circuit Court of Appeals held that the same rigid standards of description required for product claims is not required for a combination patent embodying old elements only. We have a different view.

Id. Congress rejected Halliburton in the Patent Act of 1952 — allowing that “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…” 35 U.S.C. 112.

The 1952 Patent Act expressly allows focused on changing the standard for combination patents, but does not seemingly apply to a claim for a single element.  One interpretation of the section 112(f) is that it reinstates the 9th Circuit holding in Halliburton distinguishing the GE case:

[Petitioner] assumes that the court … failed to consider … General Electric Co. v. Wabash Appliance Corporation, 304 U.S. 364. . . . Halliburton is mistaken. In the General Electric case the claim considered was not one for a combination of elements, but a claim for a single element.

Halliburton Oil Well Cementing Co. v. Walker, 149 F.2d 896 (9th Cir. 1945), aff’d, 326 U.S. 696 (1946), opinion set aside, 329 U.S. 1 (1946).  The invalidated claim in GE was written as follows:

25. A filament for electric incandescent lamps or other devices, composed substantially of tungsten and made up mainly of a number of comparatively large grains of such size and contour as to prevent substantial sagging and offsetting during a normal or commercially useful life for such a lamp or other device.

Patent 1,082,933 (claims 26 & 27 were also invalidated).  In invalidating the claims, the court explained that it had no need to consider whether the claim was anticipated. “The claim is invalid on its face. It fails to make a disclosure sufficiently definite.”

The claim uses indeterminate adjectives which describe the function of the grains to the exclusion of any structural definition, and thus falls within the condemnation of the doctrine that a patentee may not broaden his product claims by describing the product in terms of function. Claim 25 vividly illustrates the vice of a description in terms of function. ‘As a description of the invention, it is insufficient, and, if allowed, would extend the monopoly beyond the invention.’

The Supreme Court agreed that the claim was not “wholly functional” and doubted such a limit would be “ever true. Still, the GE court saw the problem here the inventor’s use of “conveniently functional language at the exact point of novelty.”

A limited use of terms of effect or result, which accurately define the essential qualities of a product to one skilled in the art, may in some instances be permissible and even desirable, but a characteristic essential to novelty may not be distinguished from the old art solely by its tendency to remedy the problems in the art met by the patent.

Gen. Electric Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938).

= = = = =

In Lilly, the question focuses on the impact Section 112 with regards to non-combination claims.

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

[Lilly petition]. The claim at issue is directed to a treatment for benign prostatic hyperplasia (prostate enlargement) by administering “an effective amount of an inhibitor of phosphodiesterase (PDE) V.” The claim also includes a group of compounds that might be inhibitors but that are not covered by the claim.  Lilly’s Cialis drug does serve the function of a PDE inhibitor, but Lilly argues that thousands of other drugs also fit the functional description.

The E.D. Tex. court hearing the case allowed it to go to a jury trial and confirmed the jury verdict of infringement ($20 million damages). On appeal, the Federal Circuit affirmed without opinion. (R.36 Affirmance) .

Response: Uropep has now filed its brief in opposition to certiorari. The brief primarily focuses on disputes related to the patent and procedure — arguing (1) that its claim is structural (2) the issue was not properly preserved on appeal. Uropep rewrote the question as follows:

Whether a patent claim that the district court construed as structural—a conclusion that Petitioner did not challenge in its appeal—is valid under the Patent Act.

[Opposition Brief].  Still, the brief does get into the law and particularly argues that “there is no blanket rule against functional claiming” since Congress enacted Section 112. Note that Uropep had originally waived its right to file a brief, but the Supreme Court requested briefing on the case.

One way to think about this case is to look back onto the invalidated claim 25 in GE v. Walker and ask whether that claim would be patentable now. Or, is it unpatentable because the claim sets the “size and contour” of tungsten grains according to their functional limit — “as to prevent substantial sagging and offsetting during a normal or commercially useful life for such a lamp or other device.”

= = = = =

An interesting aspect of this case is how it relates to patent eligibility.  The patentees here appear to have been the first to discover the general concept that PDE V inhibitors can serve as a treatment for benign prostatic hyperplasia. That general discovery itself is an unpatentable aspect of how the human body works — what the Supreme Court calls a Law of Nature.  As such, the patentee looked to find the broadest application of the general law — administering a PDE V inhibitor in an amount effective to treat.  In its briefing, the patentee Uropep suggests that there might have been an eligibility argument in this case, but it was waived by Lilly.

99 thoughts on “Supreme Court: What is the Role of Functional Claim Limitations?

  1. 15

    The 90 comments below demonstrate that functional claiming is a hot topic. Perhaps part of the controversy could be slightly reduced by noting that the most objectionable functional claiming is not really claiming a function or method but rather baldly claiming a desired end result with no specificity as to how to achieve that desired result?

    1. 15.1

      Sure, not all functional claiming is bad. Functional claiming at the point of novelty is problematic, which is why Halliburton prohibits such shenanigans. Functional claiming at other places in the claim (e.g., the preamble) is unobjectionable, which is why Faulkner v. Gibbs allows as much.

      1. 15.1.1

        Where oh where is that strict statutory connection to this (feeling-driven) ‘want’ of “at the point of novelty?”

        Mr. “I Use My Real Name” refuses to engage on that point, even as he insists on sniping from the sidelines.

    2. 15.2

      Paul,

      This would be a very healthy distinction to be emphasized in discussions.

      It may not be free of its own issues (all claims of things may be viewed as claims of a physical ‘result’ of being manufactured), and language itself may not easily distinguish between an action step and a ‘result’ per se (if I take a walk and arrive somewhere, which part is action and which part result, and is one “bad” while the other “good,” both still “good” or both “bad”), but it would help distinguish between PURE functional claiming and the Vast Middle Ground that not a single anti-software patent advocate has dared discuss.

    3. 15.3

      One man’s result will always be another man’s function. Especially when wallets depend on claiming results.

      1. 15.3.1

        Ben,

        You appear to (almost) grasp the point, but then drift into the weeds with your own “result” statement concerning ‘wallets.’

        The fact of the matter is that there BE a remarkable lack of bright line between “result” and “function.”

        Notwithstanding that lack of bright line, have you noticed as well the LACK of recognition/integration of Vast Middle Ground and that terms sounding in function were liberated throughout 35 USC 112 in the Act of 1952 (quite aside from the optional claim format in 112(f) for PURELY functional claiming?

        Even Greg asks (several times — but without taking the conversation to the next step) about the PURELY aspect.

        Do you understand why NONE of the anti-software people engage on this point?

  2. 14

    Our attorney general is a criminal s c u m b a g and needs to be removed along with every other Re p u k k k e in government.

    Shame and shun. You had a choice, @ h 0 les.

    1. 14.1

      Yet another candidate for “Most expunged posts”

      Find an appropriate forum for your rants.

      A patent law forum is NOT that forum.

  3. 13

    With apologies to Traven’s Treasure of the Sierra Madre

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

    1. 13.1

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

        1. 13.1.1.1

          The inte11ectual coward again snipes from the sidelines while still not engaging those “too mean to him” (and that ‘meanness’ being nothing more than applied critical thinking debunking his views).

          Greg is perfectly fine engaging in overweening politeness with the likes of Random when the same Ends are shared, even ‘celebrating’ errant “statutory citations,” but whimpers away when someone takes a critical view of his positions.

          It appears that the most fitting reply to widdle Greg is: “Wah.”

      1. 13.2.1

        …meanwhile “politely” disguised non-patent law “feelings”….

    2. 13.3

      All of this is supposed to be done based on how a person who actually works with the technology would view it.

      Halliburton is simply not how people who work in technology view solutions.

      Functional claiming is a means for expressing known solutions and their obvious variants. And Halliburton attempts to dissent the claim and tell us that one element is invention rather than treat the elements as a whole.

      This game being played here by the courts (Taranto and others) is to ignore how people that actually work in the technology view functional language. I have quoted from books used at MIT that state expressly that functional language is used to capture the known solutions.

      1. 13.3.1

        Greg does not care about either the engineering perspective or the legal perspective on this point.

        He would rather snipe from the sidelines (b-b-but he “uses his real name” ).

      2. 13.3.2

        The CAFC en banc in Philips did not have the power to overrule a SCotUS precedent, but the Congress did have such power. So, did the Congress exercise that power to abrograte Halliburton completely, or only in part?

        This is not a question of claim construction, where the perspective of the skilled artisan is relevant. This is a question of statutory construction, where the skilled person’s input is quite beside the point.

        To answer that question, one must look at the statutory language. The party advancing the total abrogation hypothesis should be able to point to actual statutory language that accomplishes that putative total abrogation. As long experience has shown, however, the partisans of this hypothesis cannot point to any such language (because it does not exist). The name of the game, therefore, is to insist loudly on total abrogation without evidence, but rather with recourse to an argument of “everyone knows that Halilburton is bad law” and “you are only saying that because you are [biased/ an efficient infringer / anti-patent / poorly educated / etc.].”

        The argument for total abrogation is bad faith and ad hominem fallacy all the way down. Here’s hoping that the Supreme Court takes cert. to discredit the “total abrogation” nonsense for good and all.

        1. 13.3.2.1

          For a comprehensive consideration of all the evidence (both for the complete abrogation hypothesis and the partial abrogation hypothesis), I would invite the interested reader to consult this thread.

          The evidence as a whole is much more consistent with the partial abrogation reading of the 1952 Act.

          1. 13.3.2.1.1

            Except for the fact that Greg is wrong (and still “off” in providing his disguised NON-patent law feelings), Greg may have a point.

            As it is, he does not.

        2. 13.3.2.2

          LOL – and the party advancing the “gee, I am partially pregnant” view should ALSO point to actual statutory language that accomplishes that putative partial abrogation.

          As has been pointed out (but Greg “High Road I Use My Real Name” De Lassus refuses to actually engage).

          As has also been pointed out, the option of 35 USC 112(f) is NOT against ANY “point of novelty” position and is FOR a TOTALLY functional claim optional claim format.

          It is NOT ONLY 1112(f) that must be brought to bear for the question of abrogation. As is known and recognized by ANY who are inte11ectually honest, there is a Vast Midle Ground unleashed by the Act of 1952 of using words sounding in function permitted under the rest of 35 USC 112 outside of the optional claim format permitted with 35 USC 112(f).

          The writings of Rich and (especially) Federico must be understood in context. Federico acknowledged the repeal of using terms sounding in function (at the so-called Point of Novelty) and it was his emotional response of worry about such far reaching effects that such may bring that readers have glommed onto. Such concern though does not change the reality of the actual words of Congress. Greg wants “point to actual statutory language” when the entirety of the actual statutory language itself does NOT support his “partially pregnant attempt at salvaging some UNSTATED “point of novelty” test.

          To the opposite of Greg’s OWN version of bad faith, it is the argument for merely partial abrogation that is bad faith and inte11ectual cowardice all the way down.

          1. 13.3.2.2.1

            Agnes wonders what it is you’re trying to say. Can you re-scramble?

          2. 13.3.2.2.2

            “Federico acknowledged the repeal of using terms sounding in function (at the so-called Point of Novelty) and it was his emotional response of worry about such far reaching effects that such may bring that readers have glommed onto.”

            Agnes is concerned about your mental state.

        3. 13.3.2.3

          I thought Rich said that Haliburton was intentionally overruled with the 1952 Patent Act, but I forget his argument.

          1. 13.3.2.3.1

            Rich and Federico were not on the exact same page. Rich was more forthright that Halliburton was abrogated (plainly and simply abrogated, not any of the silly “partial” stuff you see some want to have), while Federico’s feelings about such a move caused him some angst (again — this was reflective of the change having been made causing Federico angst, and NOT that the change did not happen).

          2. 13.3.2.3.2

            Judge Rich never wrote on the subject of Halliburton‘s abrogation. You are, perhaps, thinking of the other author of the 1952 Act, Pasquale Federico.

            Mr. Federico wrote of Halliburton that

            The last paragraph of section 112 relating to so-called functional claims is new. It provides that an element of 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. It is unquestionable that some measure of greater liberality in the use of functional expressions in combination claims is authorized than had been permitted by some court decisions and that decisions such as that in Halliburton Oil Well Cementing Co. v. Walker, 67 S.Ct. 6, 329 U.S. 1, 91 L. Ed. 3 (1946), are modified or rendered obsolete, but the exact limits of the enlargement remain to be determined.

            N.B. the exact language of Federico’s conclusion there: “decisions such as that in Halliburton… are modified or rendered obsolete” (emphasis added). Federico, in other words, is agnostic as to whether Congress completely abrogated Halliburton, or only partially abrogated. He believed that it depended on how the courts would apply §112(3). The statutory text itself, in other words, does not actually settle that question, according to the text’s author.

            1. 13.3.2.3.2.1

              Except this is NOT a true rendition of Federico’s views and he and Rich did NOT see eye to eye across the board.

              You have “conveniently” misrepresented the situation.

              1. 13.3.2.3.2.1.1

                anon, you need to add more details to your posts. How did he misrepresent? Etc.

                1. It is clear that he has misrepresented the intersecting views of Federico and Rich, the objective AND subjective nature of Federico’s comments and the burden of who has to show “statutory support” for which position (wanting statutory support for abrogation (while admitting that abrogation DID take place), while NOT showing WHY his view of partial abrogation (as in being just a little bit pregnant) IS supported by any statutory citation.

                  I have been CLEAR as to the limited nature of the option of 112(f) for TOTALLY functional claiming, contrasting that with the Vast Middle Ground of merely using words sounding in function.

                  What more do you want or need?

                2. “Federico acknowledged the repeal of using terms sounding in function (at the so-called Point of Novelty) and it was his emotional response of worry about such far reaching effects that such may bring that readers have glommed onto. Agnes is concerned about your mental state.”

                  Can you re-phrase?

            2. 13.3.2.3.2.2

              It appears Judge Rich did write on the subject: Application of Fuetterer, 319 F. 2d 259, footnote 11. It appears he was of the opinion that the act reverted the law to pre-Halliburton.

              1. 13.3.2.3.2.2.1

                Thanks Bguy. I do not see that Fuetterer footnote 11 really discussing the distinction between complete and partial abrogation. I agree, however, that footnote 11 contends that the 1952 §112(3) “give[s] statutory sanction to combination claiming as it was understood before the Halliburton decision,” namely that “a considerable body of case law… before the Halliburton case interpreted broad statements of structure, e.g., ‘means,’ plus a statement of function in the manner now sanctioned by [§112(3)]… .”

                1. What I think is that Halliburton is really bad law. For a couple of reasons. 1) It dissects the claim. And, 2) it tries to limit the embodiments of the invention by trying to force very specific language in an element of the claim.

                  What I see in my practice is that inventors do come up with new elements, but that new element has hundreds of embodiments and immediately once an person skilled in the art sees the new element, then hundreds of obvious variations become apparent.

                  So, removing the ability to claim it functionally, in effect, takes the patent right away. There is no practical way to get a patent claim with a scope commensurate with the invention under Halliburton in many cases.

                  That is the reality of real practice. (That is why all the CAFC judges that have never practiced real patent law should be removed.)

                2. What I think is that Halliburton is really bad law.

                  A few thoughts in response:

                  (1) I do not agree. I think that Halliburton‘s essential logic is the only sane way to run a patent system. For a couple of reasons. The guy who invents the bow is not morally entitled to “projectile accelerator,” because that phrase reads on the gun, and the inventor of the bow has not invented the gun, or even really done much to help those working in the field on the way toward the gun.

                  2) Whether it is good public policy or not, it is the law. The SCotUS handed the decision down, and the Congress did not fully repudiate it when next it had the chance (i.e., the 1952 codification). Under the logic of Patterson v. McLean Credit Union, 491 U.S. 164, 172–73 (1989), the holding becomes part of the statute, unless and until Congress revises the statute to displace it.

                  3) [R]emoving the ability to claim it functionally, in effect, takes the patent right away.

                  Not at all. I agree that a requirement for structural disclosure makes it harder to get a worthwhile claim, but it does not make it impossible. It simply means that the inventor and the inventor’s attorney need to work carefully to disclose adequate structure to support the broad claim that the inventor wants. I can see why patent attorneys do not like this rule (it has the effect of embarrassing the lazy or incompetent, who cannot deliver the sort of work product that a client rightly desires), but this does not make it any less worthwhile considered from the public‘s perspective. We run the patent system for the benefit of the public, not the patent attorney community.

                3. Greg>>> It simply means that the inventor and the inventor’s attorney need to work carefully to disclose adequate structure to support the broad claim that the inventor wants.

                  What you say is simply not reality. I’ve had many conversations with Ph.D.’s in EE/CS about this very topic. It has nothing to do with competency of the attorney, but rather the nature of the art. The problem is that the number of possible solutions is enormous.

                  Plus, of course functional claims recite structure. The set of solutions is structure. This is not debatable by those skilled in the art. This is the way these art fields work.

                4. Night Writer,

                  Greg “I Use My Real Name” DeLassus has already “whipped out” his credentials which have shown that he has no background to which you speak.

                  But be careful that you are not “mean” to him….

              2. 13.3.2.3.2.2.2

                Truly, Fuetterer is a bit of a funny case. Judge Rich writes as if he reads §112(3) in the way that Sen Tillis’ bill would amend §112(f)—i.e., that all functional terms are construed under §112(f), with none of this rebuttable-presumption-invoked-by-“means” business. No subsequent cases build upon this jurisprudence, however, so the Fuetterer “doctrine” (so to speak) lies there, stillborn in the case books.

          3. 13.3.2.3.3

            It is worth noting, however, that when Judge Rich considers why functional language is permitted by the 1952 Act, the only provision that he cites is §112(3). In re Fuetterer, 319 F.2d 259, 262–265 (C.C.P.A. 1963)

            1. 13.3.2.3.3.1

              (sigh)

              One STILL must keep in mind the distinction of PURELY functional claiming and the different item of using words sounding in function.

              Mr. “I Use My Real Name” is obfuscating on that point.

    3. 13.4

      Halliburton was not abrogated by the 1952 Act. Congress actually acknowledged Halliburton by creating 35 U.S.C. 112(6) (now 112(f)), a specific statutory exception to Halliburton allowing parties to draft purely functional claim limitations in “means-plus-function” format. Congress limited that exception, as we all know, by requiring that “means-plus-function” limitations be construed to only cover the corresponding structures in the specification (and equivalents thereof). So you can draft purely functional claim limitations, but their scope is limited to what the patentee actually disclosed/invented (the so-called “quid pro quo” of functional claiming).

      Had Congress intended to fully abrogate Halliburton, they obviously wouldn’t have needed to enact the limited exception to Halliburton in Section 112(6). To the contrary, the fact that Section 112(6) expressly limits the reach of purely functional claim limitations to the “corresponding structure” in the specification, if anything, suggests that Congress agreed with the Supreme Court’s view that purely functional claim limitations, if given their full scope, are problematic and should not be permitted.

      This sounds all well and good, but the law today is a mess. What happens when someone drafts a “purely functional” claim limitation, but that limitation is deemed not to invoke 35 U.S.C. 112(6)/112(f)? This happens so often because, as we all know, the Federal Circuit has adopted overly rigid tests for whether a claim falls under 112(6)/112(f), including a presumption that a limitation that does not explicitly recite “means” is not subject to the statute.

      This lets the patentee effectively “thread the needle” through this dead zone, in a way not intended by Congress or the Supreme Court. The patentee can have its cake and eat it, too, by getting claims reciting purely functional claim limitations, that are not limited in any way by Section 112(6)/112(f). This is particularly rampant in software/computer claims, it’s trivial to draft a purely functional claim that is basically means-plus-function, by simply using some other word other than “means” (e.g. “software for [performing a function],” “CPU programmed to [perform a function],” “computer configured to [perform a function],” etc.), which many courts continue to find avoid means-plus-function treatment under Section 112(6)/112(f).

      Under Halliburton, such a claim limitation should be found invalid. This is exactly what the BPAI concluded in Ex parte Miyazaki, 89 U.S.P.Q.2d at 1217 (2008) (precedential), one of the more thorough cases on this subject, which held that “any claim that includes purely functional claim language, and which is not subject to the limited construction under 35 U.S.C. § 112, sixth paragraph, fails to meet the requirements of 35 U.S.C. § 112, first paragraph, according to reasoning in Halliburton and thus is unpatentable.”

      The law on this issue, as it stands now, is a mess (thanks in large part to the Federal Circuit that created the vast dead zone through its restrictive reading of Section 112(6)/112(f)). I hope the Supreme Court takes on this issue, to either clarify that Halliburton isn’t the law anymore, or if it is, it applies to purely functional claim limitations that do not invoke Section 112(6)/112(f), the specific statutory exception enacted by Congress.

      1. 13.4.1

        Sorry LR, but your revision of history is simply not correct – as can easily be seen in the optional format of 112(f), the precise contours of what 112(f) provide and the fact that “point of novelty” and words sounding in function were unleashed by the Act of 1952 — entirely OUTSIDE OF the optional PURELY functional claim format provided by 112(f).

        You (too) are obfuscating and simply OVERextending the “purely” aspect and seeking to fold into that aspect ALL use of words sounding in function.

      2. 13.4.2

        Seeing as this is a response to my #12, I have a few brief responses:

        (1) Congress actually acknowledged Halliburton by creating 35 U.S.C. 112([3]) (now 112(f))… Had Congress intended to fully abrogate Halliburton, they obviously wouldn’t have needed to enact the limited exception to Halliburton in Section 112(6). To the contrary, the fact that Section 112(6) expressly limits the reach of purely functional claim limitations… suggests that Congress agreed with the Supreme Court’s view that purely functional claim limitations, if given their full scope, are problematic and should not be permitted… I hope the Supreme Court takes on this issue, to… clarify… .

        Evidently we agree on the broad strokes that (1) Halliburton remains good law and (2) the SCotUS would do well to take cert. here to clarify that point. Given that these are the only two substantive points really at issue, we agree on the important points. What follows is small-fry quibbling.

        (2) Halliburton was not abrogated by the 1952 Act.

        This seems mostly like a disagreement over terminology, so I do not want to disagree too strongly. Still and all, it seems strange that you press back against “abrogate.” If the §112(f) rule had been in place at the time of Halliburton, the case would have turned out 180 degrees differently. In other words, Congress enacted a rule in response to Halliburton intended to make sure that the next, similarly-situated case would turn out differently. That sure sounds like what most people would term (at least partial) “abrogation.”

        (3) The patentee can have its cake and eat it, too, by getting claims reciting purely functional claim limitations, that are not limited in any way by Section 112(6)/112(f). (emphasis added)

        What do you mean by “purely” here? What is an example of an “impure” functional limitation as you are using the word?

      3. 13.4.3

        What do you mean by “purely” functional limitations here? What would be an example of an “impure” functional limitation?

        1. 13.4.3.1

          Dozens (Greg’s pseudonym of choice, most often invoked when the Count Filter is activated) asks a question in a seemingly purposefully misleading way.

          Shocking.

          The “mate” to PURELY is clearly not IMpurely — but is the well known (and Prof. Crouch coined term):

          Vast Middle Ground

          It does not go unnoticed that every poster so far with an anti-software bent has managed to mangle this reality.

          And software is certainly NOT the only art field in which such use occurs (as one can easily recall David Stein taking Random and Greg out behind the woodshed on more than one occasion).

  4. 12

    I am surprised Lilly really wants to win this case. Sure, the judgment may be reversed, but it seems many of their patents would be thrown up in the air.

    1. 12.1

      This comment perfectly illustrates some of the bizarre thinking that floats out there *only* in the dark corners of the patentsphere.

      There are essentially zero normal adult human beings out there who believe that claims reciting functionality at the point of novelty should be eligible for patenting. Neither Lilly nor any other drug company depends on such illegal claims for their success as a business. Basic math plainly shows that permitting such claims is a net loss for everyone who actually is in the business of identifying and characterizing new useful drugs and methods for improving the effectiveness of known drugs.

      Same is true for claims that protect information and logic, by the way.

      1. 12.1.1

        That was a real world thought.

        1. 12.1.1.1

          You have been placed into a “one-bucket,” Adam.

          MM (Malcolm) has long treated anyone who disagrees with him (on any subject) into a same “one bucket” of people that he simply disparages and discounts any and all merit. He even places those who may agree with him on other topics (such a 6, Greg, and the late Ned Heller) into that same “one bucket.”

  5. 11

    I’m surprised Lilly really wants to win this case. Sure, the judgment may be reversed, but I assume many of their patents would be put up in the air.

  6. 10

    Reading the claims at US 8,791,124 it seems like an argument could have been made that the independent Claim 1 fails the §112(b) requirement of “particularly pointing out and distinctly claiming the subject matter which the inventor regards as the invention”.

    Claim 1 is for an phosphodiesterase inhibitor that is not in a list of 8 known PDE inhibitors. But what is it?

    Claim 2 then particularly points out and claims the actual invention:

    2-(2-propoxyphenyl)-8-azapurin-6-one

    I could see Claim 1 if the inventor had created the first ever PDE inhibitor. But given all the others in the list, how can they claim a result without describing the compound?

    For some reason it does not appear that Lilly raised this defense.

    link to scribd.com

    This talk about functional claiming is dangerous. §112(b) is perfectly suitable to prevent over claiming in cases like this.

    1. 10.1

      This talk about functional claiming is dangerous. §112(b) is perfectly suitable to prevent over claiming in cases like this.

      Invalidity for functional claiming at the point of novelty is §112(b) invalidity. The above is a distinction without a difference.

      1. 10.1.1

        Why do we need a “rule”? Either the inventor had possession of the claimed subject matter or he didn’t.

        Claiming a result fails 112(b). That is an observation, not a rule.

        Using functional language is not dispositive one way or the other. New and non-obvious functions that are understood by one of ordinary skill are often inventive.

        This petition raises and issue that was not part of the record below. I suspect this is an attempt to subvert the patent system by eliminating functional claiming. The same scheme that is being played by anti-inventor lobby in the Senate Judiciary Committee.

    2. 10.2

      Yes, these claims are invalid (at least) for failing to satisfy the written description requirement.

      See comment 6 at the link Below.

      link to patentlyo.com

      1. 10.2.1

        Got a bit of a Minstrel Show gravatar there, Trudeau.

    3. 10.3

      “Claim 1 fails the §112(b) requirement of “particularly pointing out and distinctly claiming the subject matter which the inventor regards as the invention”.

      Claim 1 is for an phosphodiesterase inhibitor that is not in a list of 8 known PDE inhibitors. But what is it?”

      It’s any PDE inhibitor other than those eight, of course! That’s not indefinite, it’s just broad!

      You sentiment honestly remind me of my first few months at the PTO. I was utterly mystified by the accepted interpretation of 112, 2nd. I sincerely worry about what would happen if the public ever realized how warped the patent system is. How do you think the everyman would feel about paying more because a person unable to implement their novel result claimed a novel result? I think if enough people got wind of this I’d be out of a job.

  7. 9

    What do we even mean by “functional”? One person’s functional claim is another person’s routine use of a standard component.

    anon as usual elided any answer to the question that instantly arises from the question presented by the Trading Technologies cert petition

    1. Whether computer-implemented inventions that provide useful user functionality but do not improve the basic functions of the computer itself are categorically ineligible for patent protection.

    of how “useful user functionality” can be distinguished from computing, since improving computing would clearly also implicate improving the “basic functions of the computer”.

    Multi-component inventions automatically mean that structures unrelated to the novelty are functional at some level. How much of the world has to be described in each claim is a measure of abstraction.

    That’s why abstract claims are different from abstract inventions

    Abstract inventions are intrinsically abstract because their utility is realized within a human mind.

    Abstract claims are extrinsically abstract when they do not describe the elements of a function sufficiently that a PHOSITA can fully make and use the invention, which depends on the state-of-the-art at the time.

    This distinction must be made- either in statue or at law, sooner or later.

    1. 9.1

      What are you going on about, Marty?

      You appear to not understand this thing called context, as you are in FAR too much of a hurry to try to take a shot at me.

  8. 8

    There was at least one earlier thread on this case which went pretty in depth on the facts and issues:

    link to patentlyo.com

    1. 8.1

      Thanks Malcolm — plenty of beatdown of the anti-patentists there (not that those who need to pay attention will actually do so).

  9. 7

    Bildo: “Derp derp you can claim information and logic because process derp!”

    Normal people: “No, of course you can’t.”

    Ben: “Golly, looks like the Supremes should provide some clarity.”

    Wake up for cripesake.

    1. 7.1

      Your Derp Dance is noted — as is your lack of actually engaging with any cogent reply.

  10. 6

    As noted at 2 below and elsewhere, the scope of valid functional claiming is an important enough issue, especially for software related patents, that hopefully it will draw amicus briefs from academia that will help get cert granted.

    1. 6.2

      Except this case isn’t about software which, by its nature (as a set of instructions in a language that is readable by a machine specially created for that purpose), is impossible (or at least absurdly impractical) to claim structurally.

      There is zero chance that this case will resolve any of the (LOL) “confusion” relating to protecting software functionalities with patents. There is also 100% chance that the patentee here is going to lose both the battle and the war. But hey as long as you can keep the investors from bailing out for another year then … whoopee.
      [shrugs]

      1. 6.2.1

        is impossible (or at least absurdly impractical) to claim structurally.

        Absolutely false.

        I have thrown this back in your face numerous times to which you have always merely run away.

        Your (oh so typical) propaganda move of asserting the opposite of reality won’t f00l anyone paying attention — or anyone who is being inte11ectually honest.

    2. 6.3

      It seems unlikely that this case would really address the scope of functional claiming as it is usually seen in software related patents (i.e., mostly functional, but not purelyfunctional).

      1. 6.3.1

        The claim at issue is not purely functional. What is the distinction that you see between the claims that you examine and this case’s claim 1?

        1. 6.3.1.1

          My bad! I think the post’s introduction messed me up!

      2. 6.3.2

        Ben (at least) recognizes that there is a difference between “PURELY functional” and “mostly functional.”

        Whether or not he understands that difference (and whether or not any such understanding can overcome his shown biases) are different matters altogether.

  11. 5

    The combination versus single point benefits from some critical observations:

    There being a difference, what does that difference portend?

    Why distinguish at all if there be no difference?

    Why are some (oh so predictable sAme ones) trying to obfuscate between words sounding in function and a claim element that is TOTALLY functional outside of any ‘singular’ or ‘combination’ aspect?

    1. 5.1

      Write in English, please. Thanks.

      Nobody needs to read incoherent slop followed by another of your silly insults.

      Or just go away forever.

      1. 5.1.1

        Did you have difficulty following along?

        That would be a YOU issue. Of course, what most likely caught your eye was the note on just who is trying to obfuscate in regards to the optional claim format for TOTALLY functional claiming (as opposed to using words sounding in function outside of the option of 35 USC 112(f).

        Tellingly, you have not responded with ANYTHING of substance on that point.

  12. 4

    Greg at 1: “The word “rejected” seems too strong to me. Certainly Congress modified the Halliburton rule, but they did not totally reject it.”

    anon at 4: “To be entirely precise, Congress rejected Halliburton in more than merely the optional claim format provided in 35 USC 112(f).”

    I would just be happy for this to be explicitly settled by the Court.

    1. 4.1

      News flash: Bildo has been spewing pure b.s. about Halliburton and 112 for years now. Start with the premise that he’s wrong about pretty much everything and work from there and you’ll save yourself a lot of time.

      Whatever you want to say that Congress “rejected”, it’s crystal clear that they didn’t approve of claiming new functionalities as such, without the disclosure (somewhere in the spec) of new objective physical structure (or physical transformations) for achieving that new functionality.

      But Bildo has a well-rehearsed dance he will perform every time that 112 is raised. Go ahead and take his hand if you’re that desperate to have your arm ripped out of its socket.

      1. 4.1.1

        Lol – as Malcolm appears to want to have his optional claim format somehow NOT be optional.

        Again.

        Derp Dance as you will, Malcolm, but terms sounding in function ARE permitted, and the option of 35 USC 112(f) is for claims that are TOTALLY functional.

        What exactly do you think IS meant by “Vast Middle Ground?”

        Can you say something (anything) remotely on point — and remotely inte11ectually honest about that concept?

    2. 4.2

      Agreed. Taking cert on this case would bring a valuable measure of clarity to the law for just that reason.

      1. 4.2.1

        What’s the point of “adding clarity” if the maximalists are going to pretend to not understand everything they don’t agree with?

        Exactly what “clarity” are you seeking, Greg? Where did the “confusion” arise in the first place?

        This isn’t rocket science, after all.

        1. 4.2.1.1

          if the maximalists are going to pretend to not understand everything they don’t agree with

          LOL – as Malcolm ploys his Accuse Others meme (witness his reply above at 5.1.

      2. 4.2.2

        Incidentally, I cannot help but notice that Judge Bryson’s opinion at the district court level seems tailor made to tee this particular question up for SCotUS review. It is a bit surprising that Lilly did not make more of this point at the CAFC appellate level.

        1. 4.2.2.1

          Your link goes to an unrelated article.

          1. 4.2.2.1.1

            That’s Greg “I use my real name Straight Arrow” DeLassus for you.

          2. 4.2.2.1.2

            During the lead up to the Third Punic War, the senator Cato the Censor would begin and end every speech he made—regardless of the subject he was addressing—with the addendum “ceterum autem censeo Carthaginem esse delendam” (“and furthermore, I consider that Carthage must be utterly destroyed”). Tax bills, garbage collection schedules, emoluments for public servants, anything at all, the ending was always the same.

            Sure, it was irrelevant to the main point of the speech. It was an important point nevertheless, so he reiterated it incessantly. It seems to me that the point of that linked article is equally important, so I am adding it to my posts. I agree that it is off topic, but it bears mention. The patent system will cease much to matter if we do not take notice of the larger systemic dysfunctionalities.

            1. 4.2.2.1.3.1

              The patent system will cease to matter much if we do not address more serious problems. There is a reason why no one cares much about the well functioning of the Ukranian patent system. Ukraine has bigger problems. We do not want to get to that point here.

              1. 4.2.2.1.3.1.1

                Your feelings are noted.

  13. 3

    To be entirely precise, Congress rejected Halliburton in more than merely the optional claim format provided in 35 USC 112(f).

    Thus, the statement: “Congress rejected Halliburton in the Patent Act of 1952 — allowing that “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…” 35 U.S.C. 112.” is NOT complete, and thus not quite accurate for the point at hand.

    1. 3.1

      The opposition brief largely avoided the argument that Halliburton was completely abrogated.

      I wonder if it’s because they disagree with anon, or if they are worried that highlighting the question (whether Halliburton was completely abrogated) would grab the interest of the Court.

      1. 3.1.1

        I agree that UroPrep does not use that exact phrase “completely abrogated,” but they do not seem to me to be especially chary of the assertion. Pages 7 & 8 of their brief seem very willing to suggest that “everyone” knows that Halliburton is a dead letter (e.g., “Congress subsequently overruled Halliburton in part by enacting section 112 paragraph 6…” and “Lilly did not even argue about some lingering rule of Halliburton…,” boldface added).

        1. 3.1.1.1

          “in part”

          So where’s the “confusion” again?

          In reality, nobody is “confused” about the prohibition against functional claiming at the point of novelty.

          In reality, some attorneys are buying time for their clients by creating confusion. And l0 w life maximalists like Bildo and Co salivate at the prospect of being able to legally claim “new” functionalities so they just pretend that it was always that way. You can claim information too! Sure you can. Keep clapping! Everything’s normal!

          1. 3.1.1.1.1

            salivate at the prospect of being able to legally claim “new” functionalities

            The one obfuscating here is you Malcolm. How exactly is your “new functionalities” (whatever it is that you think that you mean by that) in line with my consistent message of what Congress wrote in 35 USC 101?

            Namely, that there are two — and only two — purposefully low hurdles in 35 USC 101:

            1) that the innovation can be claimed in at least one statutory category; and

            2) that the claimed innovation provides utility within the Useful Arts.

            Of course, you will not provide a cogent reply, and will only keep on kicking the dust that you always kick. But since when is honesty and forthrightness been part of YOUR schtick? Not in the over 14 and half years on record.

  14. 2

    Did Lilly really “waive” both 101 “preemption” and 112 overclaiming [insufficient species disclosure] defenses for such an all-inclusive-genus claim? Or, did they decide on a “rifle” cert approach only arguing functional language at the point of novelty?

    [Also note the potential relevancy to the pending Senate legislative proposal including an expansion of 102(f).]

    1. 2.1

      Right. The proposed §112(f) amendments would completely abrogate Halliburton (in a way that the 1952 §112(3) did not), because the proposed amendments would make it impossible for a claim limitation (at the point of novelty or elsewhere) to be wholly functional.

      1. 2.1.1

        Your phrasing of “would completely abrogate” is completely incorrect.

        Halliburton already has been abrogated.

  15. 1

    Congress rejected Halliburton in the Patent Act of 1952 — allowing that “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…” 35 U.S.C. 112.

    The word “rejected” seems too strong to me. Certainly Congress modified the Halliburton rule, but they did not totally reject it.

    1. 1.1

      It’s more like an outright falsehood to make such a statement about Halliburton because it ignores the alternative that Congress provided.

      The issue was granting patent protection for “new functionality” where that “new functionality” is divorced from the disclosure of any new objective physical structure that would achieve that functionality. Congress never approved of this (and they never will). What Congress provided instead was permission for a particular claim format, a shorthand of sorts, where the term “means for” could be used to describe a new functionality (in whole or in part) *if* the new objective physical structure for providing that functionality was recited in the specification.

      That’s not a “rejection” of Halliburton. What was “rejected” was a distortion of Halliburton in the lower courts whereby *any* functional language in the claim was deemed fatal to the claim.

      1. 1.1.1

        more like an outright falsehood to make such a statement about Halliburton because it ignores the alternative that Congress provided.

        That’s not even close to reality.

        Think Vast Middle Ground.

        1. 1.1.1.1

          “Derp derp vast middle derp ground DERP.”

          Super compelling stuff.

          1. 1.1.1.1.1

            So compelling that ALL that you can do is your Derp Dance?

            You do remember who first used that phrase — and why — right?

            1. 1.1.1.1.1.1

              Invoking Dennis “Severely Compromised and Part of the Problem” Crouch is not persuasive, particularly in this context and particularly when the facts in this case have nothing to do with any “middle ground”.

              1. 1.1.1.1.1.1.1

                The invocation is in part because you seem oblivious to the actuality that Prof. Crouch merely reflected upon.

                Whether YOU are persuaded or not is completely immaterial, as “persuading” you has no bearing on anything. Pointing out your banality is merely a “plus” and fun thing to do. I will note as well that you appear to concede that there IS a middle ground, even as you strenuously seek to distinguish the “facts in this case.”

                Maybe someday you will actually engage on the merits in an inte11ectually honest manner.

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