In Claim Construction: Module Means Means

by Dennis Crouch

Rain Computing, Inc. v. Samsung Electronics (Fed. Cir. 2021)

Rain and Samsung agree that this case comes down to claim construction.  And, as typical, the patentee is attempting to thread the needle with a construction that is broad enough to be infringed, but narrow and specific enough to avoid invalidation.  The district court construed one term narrowly — resulting in no infringement.  On appeal, the Federal Circuit focused on a separate term — and found its indefiniteness rendered the claim invalid.

Rain’s US Patent 9,805,349 covers a method for delivering apps via a computer network using a webstore and server authentication. The claim requires “a user identification module configured to control access of said one or more software application packages.”  If you have been following patent claim construction over the past decade: You know that the focus here will be whether this “module” limitation invokes 35 U.S.C. § 112 ¶ 6 as a means-plus-function term. And, if so, is it indefinite for failing to provide sufficient structural support in the specification.

Normally, patent claims are expected to spell out the actual structure of the invention — not just its function. However, § 112 ¶ 6 (now renamed § 112(f)) allows a patentee to avoid adding those specifics in combination claims by including an element “as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof.”  The statute goes on to include an important caveat, the element “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”  The statute does not spell-out what happens when the specification lacks any corresponding structure — but the courts have filled the gap. A means-plus-function claim that lacks corresponding structural disclosure in the specification is deemed invalid as indefinite.

Means-plus-function claiming is fools gold — especially for anyone with a thin disclosure.  The claims appear broad, but are narrowly interpreted and regularly invalidated.  For years, patentees have moved away from using the term “MEANS” and replaced it with some other generalized word such as “MODULE” as used in this case.  By skirting the MPF trap, these newly styled claims were more broadly interpreted and rarely invalidated as indefinite.  However, that approach was collapsed by the case of Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015).  In Williamson, the Federal Circuit held that claim terms that “fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function” will also be interpreted as a means-plus-function term.  Although the burden on invoking 112(f) is still on the patent-challenger, Williamson eliminated the heavy presumption that it doesn’t apply.

The further trick with Williamson: (a) If a particular term – such as “module” is structurally defined within the specification then it will typically not be interpreted as means-plus-function because it was particularly defined by the applicant.  (b) On the other hand, if the term is not structurally defined in the specification, then it will invoke 112(f) and also be found indefinite for lack of structural support.

Here, the court first noted that the word “MODULE” “is a well-known nonce word that can operate as a substitute for ‘means’.”  The Williamson case itself focused on the word module and found that it did not indicate any “structure.”  The court drew the same conclusion in Rain Computing— finding that the claimed “user identification module” has no commonly understood structure and the specification included no structural disclosure.

Here, the specification does not impart any structural significance to the term; in fact, it does not even mention a “user identification module.”

Slip Op.  So, we fall into the category (b) from above: Nonce word without structural support → therefore → Invoke 112(f) and invalidate. The court writes:

Nothing in the claim language or the written description provides an algorithm to achieve the “control access” function of the “user identification module.” When asked at oral argument to identify an algorithm in the written description, Rain could not do so. Without an algorithm to achieve the “control access” function, we hold the term “user identification module” lacks sufficient structure and renders the claims indefinite.

Slip Op. Thus, the claim is indefinite.  This rendered the separate non-infringement related claim construction moot.

During prosecution the patent examiner had expressly stated that the limitation “does not invoke 112, 6th paragraph, or 112(f).”  However, the examiner’s somewhat cryptic reasoning was that a 112(f) means limitation cannot exist within a method claim.  On appeal, the Federal Circuit noted the examiner’s error: “Applicants are free to invoke § 112 ¶ 6 for a claim term nested in a method claim.”

= = = =

Note: In Synchronoss Techs., Inc. v. Dropbox, Inc., 2019-2196, 2021 WL 520047 (Fed. Cir. Feb. 12, 2021), the Federal Circuit encountered a claim a quite similar limitation: “user identifier module.” In that case the court also found that the term invoked 112(f) but was indefinite from lack of structural support.

(Fed Cir Clerks – note that FN 1 in Rain Computing does not accurately reflect the language of the claims in Synchronoss).

= = = =

Above, I noted the draw of means-plus-function claim language for “thin disclosures.” In this case, the disclosure was actually quite extensive, but the patentee appears to have wanted to shift the scope of coverage away from the original focus of the invention disclosure.  This patent is one of nine US patent applications all within the same direct family and relying on the same original disclosure.

116 thoughts on “In Claim Construction: Module Means Means

  1. 11

    J. Doerre

    I think my point was crystal clear. Moore extended Williamson by holding that if a claim element doesn’t recite in of itself structure for performing the function that even if known solutions are readily available that the claim elements still invokes 112(f).

    And my diode example is spot on. It illustrates that under Moore’s reasoning that a functional description of a diode would invoke 112(f). Moore’s reasoning has nothing to do with modern innovation practice and invalidates probably 10’s of thousands of the claims of patents granted before Moore’s opinion.

    Moore is an absolute disgrace. This was judicial activism to invalidate a patent that Moore didn’t feel deserved a patent under 103. Now we are all stuck with this extension of Williamson. J. Rich probably would have figuratively have spit in the face of Moore.

  2. 10

    A note for future references, the discussion of this thread has spilled over to two newer threads — due in part to the fact that editorial filters STILL constrain a full exchange on the topic.

  3. 9

    This is the core issue:

    A claimed function conveys structure when a POSITA knows how to build a machine to perform the function but it doesn’t convey structure when a POSITA doesn’t know how to build a machine to perform the function?

    J. Moore admitted that there was code available on the internet at the time of the filing of the patent application that performed the claimed function. J. Moore’s opinion is a travesty of justice. The CAFC is using 112(f) as a means to invalidate claims that they feel are invalid under 103 but can’t put together a 103 argument. They are adding to their equity bag of tricks that already includes Alice.

    1. 9.1

      Night Writer thinking the court is up to something when it’s been saying the same thing for at least 12 years. Here’s a full refutation of Night Wrtier’s position from Aristocrat in 2008:

      Aristocrat’s principal contention is that the district court was wrong to hold that the patent’s disclosure of a general purpose, programmable microprocessor was not a sufficient disclosure of structure to satisfy section 112 paragraph 6. In particular, Aristocrat argues that computer-implemented means-plus-function claims do not require disclosure of a corresponding algorithm, as held by the district court. Instead, Aristocrat contends that the structure disclosed in the specification of the 102 patent, which was simply “any standard microprocessor base [sic] gaming machine [with] appropriate programming,” was a sufficient disclosure of structure under this court’s precedents.

      In cases involving a computer-implemented invention in which the inventor has invoked means-plus-function claiming, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor. The point of the requirement that the patentee disclose particular structure in the specification and that the scope of the patent claims be limited to that structure and its equivalents is to avoid pure functional claiming. As this court explained in Medical Instrumentation Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003), “If the specification is not clear as to the structure that the patentee intends to correspond to the claimed function, then the patentee has not paid the price but is attempting to claim in functional terms unbounded by any reference to structure in the specification.” See also Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 948 (Fed. Cir. 2007) (“[I]n return for generic claiming ability, the applicant must indicate in the specification what structure constitutes the means.”). For a patentee to claim a means for performing a particular function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to “the corresponding structure, material, or acts” that perform the function, as required by section 112 paragraph 6…

      Aristocrat also argues that, even if there is no disclosure of an algorithm in the patent, the disclosure of a microprocessor with “appropriate programming” is a sufficient disclosure of structure for means-plus-function purposes, because the evidence showed that one of ordinary skill in the art could build the device claimed in the 102 patent based on the disclosure in the specification. That argument, however, conflates the requirement of enablement under section 112 paragraph 1 and the requirement to disclose the structure that performs the claimed function under section 112 paragraph 6.

      Although the examples given in the 102 patent might enable one of ordinary skill to make and use the invention, they do not recite the particular structure that performs the function and to which the means-plus-function claim is necessarily limited.

      Whether the disclosure would enable one of ordinary skill in the art to make and use the invention is not at issue here. Instead, the pertinent question in this case is whether Aristocrat’s patent discloses structure that is used to perform the claimed function. Enablement of a device requires only the disclosure of sufficient information so that a person of ordinary skill in the art could make and use the device. A section 112 paragraph 6 disclosure, however, serves the very different purpose of limiting the scope of the claim to the particular structure disclosed, together with equivalents. The difference between the two is made clear by an exchange at oral argument. In response to a question from the court, Aristocrat’s counsel contended that, in light of the breadth of the disclosure in the specification, any microprocessor, regardless of how it was programmed, would infringe claim 1 if it performed the claimed functions recited in the means-plus-function limitations of that claim. That response reveals that Aristocrat is in essence arguing for pure functional claiming as long as the function is performed by a general purpose computer. This court’s cases flatly reject that position.

      1. 9.1.1

        when it’s been saying the same thing for at least 12 years

        This is a bit of a fallacy, with the insinuation that a span of time somehow provided veracity to what is being attempted.

        This shows a lack of appreciation and a lack of understanding of history, and (again) reflects the selective bias that Random has, as he only gloms onto those things that affirm his preconceived viewpoint.

  4. 8

    User identification module is so well-known in the art. It’s a great burden to the invetor to disclose every piece of information in the disclosure. The essence of the law should not be encourage the disclosure of well-know things, but should encourage new inventions.

  5. 7

    How can “a user identification module configured to control access of said one or more software application packages” have no structure when read in view of a POSITA?

    The court even acknowledges that there is code available for performing these functions available on the internet. I think the spec and claims were poorly written but that doesn’t mean the court can invalidate the claims.

    The fact is that someone skilled in the art of software development in security and access would understand exactly what that module need to have in it. Yes, there are billions of solutions as there are with any modern technology even biotech.

    Had I reviewed the specification, I would have said it has to have a description of that module with some more details on how it would operate. But this should not be taken as a 112(f). That is the core of the problem with this decision.

    What claim element that performs the same function would suffice for it not to invoke 112(f)?

    1. 7.1

      How can “a user identification module configured to control access of said one or more software application packages” have no structure when read in view of a POSITA? The court even acknowledges that there is code available for performing these functions available on the internet.

      A function does not connote a structure. That’s like saying a machine for printing at a distance connotes a structure because we know about fax machines, sms phone texts and network tv. Knowing that the function can be performed still doesn’t connote any particular structure.

      The fact is that someone skilled in the art of software development in security and access would understand exactly what that module need to have in it.

      Well that’s not true, but that’s not the standard anyway. Are you suggesting there’s only one way to perform an authentication check? Even at the most basic level everyone would tell you that there are at least three factors of authentication – what you know, who you are and what you have (knowledge, inherency and possession) – not to mention each of those checks could be combined and carried out in hundreds of fashions.

      Yes, there are billions of solutions as there are with any modern technology even biotech.

      But this IS the problem.

      What claim element that performs the same function would suffice for it not to invoke 112(f)?

      “wherein the access is controlled by the steps of: receiving an input of a username and password, searching a database of usernames for an authentication answer, comparing the password to the authentication answer, and granting access in the event that the password and authentication answer match.” The fact that there are “billions” of other ways to control access to a software application is precisely the problem.

      1. 7.1.1

        A function does not connote a structure

        You mean like “screwdriver” or the THOUSANDS upon thousands of other examples that do exactly opposite of what you assert?

      2. 7.1.2

        “A function does not connote a structure.”

        To a POSITA it does. In fact you could not say anything more wrong in patent law than what you just said.

        I have quoted from texts used at MIT in engineering that expressly say that functional language is used to represent known solutions and that functional language is used because there are so many solutions.

        Random you have absolutely no idea what you are talking about. None.

        The function is a place holder for all the known solutions that include what is enabled by the specification. That is the point of using that language and –read this 1,000 times– it is the only possible way to write a claim in modern technology that protects the invention.

        I would love for you to speak to one of my inventors. He has a Ph.D. in physics and invented a consumer product that was licensed for millions and millions of dollars. He works for a large electronics firm. I wrote the patent application and the claims that were licensed for many millions of dollars.

        Your ridiculous ideas Random would limit inventions to narrow solutions and not what an POSITA can easily build and understand. Yours is judicial activism by anti-patent judges like Taranto.

        I don’t even know how to have a discussion with someone so ignorant as you are in regards to actual inventions and modern claim drafting.

        1. 7.1.2.1

          To a POSITA it does. In fact you could not say anything more wrong in patent law than what you just said.

          I have quoted from texts used at MIT in engineering that expressly say that functional language is used to represent known solutions and that functional language is used because there are so many solutions.

          A solution and a structure are not the same thing. If you have a growing malady in someone’s foot you could treat the malady or amputate the foot and those are both “solutions” to the disease but they’re definitely not the same or even equivalent structural acts. But you elevate the butcher to the same level as the biochemist if he has the right kind of lawyer. I simply recognize that the law is not so blind, and unsurprisingly decades of precedent agrees with me.

          Random you have absolutely no idea what you are talking about. None.

          Well one of us consistently writes long screeds about how every written description and means-plus decision the CAFC makes is absolutely wrong, and it’s not me. This decision references a decision (Williamson) which references a decision (Ranpak) which all have a module invoking 112f and then invalidating the claims for lack of a disclosed structure. Were all of the judges involved (including the en banc of Williamson) flouting the law? Do all three of these patentees all have incompetent lawyers? Are you the only competent lawyer out there? And if so, can you point to me to one of your cases where you argued your 112f position to a court (rather than bloviating on the internet) and won? Why isn’t your superior logic prevailing? Is…is it the Google judges?

          The function is a place holder for all the known solutions that include what is enabled by the specification. That is the point of using that language and –read this 1,000 times– it is the only possible way to write a claim in modern technology that protects the invention.

          “the invention” is not “anything that the sum total of the art may or may not know at the time I file that would achieve this result.” “The invention” is what this particular inventor is positing for how to achieve something.

          I would love for you to speak to one of my inventors. He has a Ph.D. in physics and invented a consumer product that was licensed for millions and millions of dollars. He works for a large electronics firm. I wrote the patent application and the claims that were licensed for many millions of dollars.

          Wow, that’s cool. So, does he know his attorney can’t grasp basic disclosure requirements?

          Your ridiculous ideas Random would limit inventions to narrow solutions and not what an POSITA can easily build and understand.

          Hardly. This guy could have explained three factor authentication, and then there’d be a question as to whether what the defendant did constituted an equivalent. And if, as you claim, all authentication is really the same thing then this suit would have prevailed. So really your argument isn’t that the scope couldn’t be claimed, it’s that the attorney was too lazy to write a handful of paragraphs about how authentication is performed. So even if we take your dubious prospect that all authentication is the same and all solutions are known as true, that STILL doesn’t lead to the result you’re complaining about.

          Perhaps I don’t know anything (just my expertise in this area but okay) but MY opinion is that in 2007 lay people could have told you that transferring data over the internet was ubiquitous, subscribing to remote access licenses or download update schemes to software programs was known, and therefore the features surrounding how the system determines that THIS person is who THIS data should be sent to (i.e. “controlling access”) is the only plausibly inventive part of the claim.

          If you bothered to read the image file wrapper of the application, you’d see that the claim was anticipated but-for exactly those features relating to the user identification module, that the secondary reference and motivation for combining that module was attacked on appeal, and that that argument carried the day. So to be clear – the only reason this claim issued is because of the novelty of the thing you say everyone in the art could have made and would have appreciated the value of using beforehand. If only the PTAB could have been as wise as you. Or if the patentee’s position today – see pg. 8, citing the patentee’s argument that this could be done “with common software algorithms” and THE INVENTOR saying open source software could implement it – had been presented to the Board at the time. Isn’t it convenient for Rain how nonobvious the feature was when there’s a 103 rejection pending at the office and they managed to discover how completely known it was once there’s a 112 validity attack post-issuance?

          It’s unsurprising the examination was hamstrung when it’s unclear what acts are performed by the “user identification module controlling access” at the client and what acts are performed by the “a server device authenticating the user” at the server. The way I would have interpreted that is that any field presented by the client asking a client for a username before unlocking access constitutes a user identification module, and any comparison steps taken by a server with that information constitute authentication, which would have let one cite what I can only assume would have been thousands of prior art applications. The examiner took a more limited view, and ultimately failed on a motivation to combine attack (lol) because of it. I agree with you that there are copious examples of authentication prior to this invention (I just recognize it’s not legally relevant to this issue). Given that, I’m sure that the success of the argument that steps (b)-(d) provided the claim with nonobviousness had absolutely nothing to do with the indefiniteness surrounding the functional language in steps (b)-(d), right?

          1. 7.1.2.1.1

            >>If you bothered to read the image file wrapper of the application, you’d see that the claim was anticipated but-for exactly those features relating to the user identification module, that the secondary reference and motivation for combining that module was attacked on appeal,

            That isn’t the issue. It is the combination of elements and what was done with the user identification module in that it was sent.

            It may be invalid under 103, but a POSITA knows exactly how to write the user identification module as we know as there was source code available for free on the internet to do exactly that.

            You are loopy and ridiculous. You have been blinded by the e vils of the CAFC making things up that have no correspondence to modern technology.

            The fact is that claiming there is no function conveyed by a user identification module when J. Moore admits that there is code available on the internet to perform exactly that function is gross misconduct. Of course it conveys function.

            What these vile judges have done is used 112(f) as another 101 to invalidate claims that they think are invalid but they can’t make the 103 arguments. This opinion is an absolute disgrace for the reasons I have stated.

            And arguing with you is ridiculous as you don’t address the points I make but just keep repeating yourself with these “all” and “every” arguments that are ridiculous.

            Do you get that a claimed function conveys structure when a POSITA knows how to build a machine to perform the function but it doesn’t convey structure when a POSITA doesn’t know how to build a machine to perform the function?

            1. 7.1.2.1.1.1

              It is the combination of elements and what was done with the user identification module in that it was sent.

              So just to be clear, your position is the entire rest of the claim was known, the module was known, but the module was transmitted to a client device, and that renders the claim non-obvious?

              Question – how would the structure of the module need to change in order to accommodate that the module was differently located? Where in the specification is that changed structure? And if it isn’t in the specification, how did the art know of the structure when it wasn’t even obvious to the art to move the module?

              Your position is ridiculous but even if it was accepted as true it’d still fail to carry the day. You’re trying to argue that one of skill knew what the modified structure would be when it was non-obvious before and there was no additional teaching.

              It may be invalid under 103, but a POSITA knows exactly how to write the user identification module as we know as there was source code available for free on the internet to do exactly that.

              That’s an enablement answer. This isn’t an enablement invalidation.

              The fact is that claiming there is no function conveyed by a user identification module when J. Moore admits that there is code available on the internet to perform exactly that function is gross misconduct. Of course it conveys function.

              I think you mean “structure” not function. And again, the fact that I know things can perform a function does not convey structure. I know the function of a device for travelling exists, that doesn’t convey either the function of a car, or a motorcycle, or a boat, or an airplane. I know all those things exist, and I know they all do that function, but the question is which structure is in the spec? None. Which structure outside the spec (which isn’t even enough statutorily) is being referred to? We don’t know. The statute requires the scope to be a structure in the spec.

              Do you get that a claimed function conveys structure when a POSITA knows how to build a machine to perform the function but it doesn’t convey structure when a POSITA doesn’t know how to build a machine to perform the function?

              haha no it does not. That’s the exact issue in this case, but ignoring that, logically it does not. Again, if I tell you to make me a machine for travel, do you know definitively (i.e. with reasonable certainty) whether I am talking about the structure of a car or the structure of a boat or the structure of a plane?

        2. 7.1.2.2

          I have quoted from texts used at MIT in engineering that expressly say…

          Worth adding here, since Greg “I Use My Real Name” DeLassus is on his annual Lenten abstinence from posting, is that Night Writer’s technical position was met with derision from Greg, with Greg asserting that patent claims are NOT a technical thing, but a legal thing.

          I answered Greg’s assertion by sharing that the parallel to Night Writer’s technical basis is well understood on the legal side by giving examples of the Ladders of Abstraction concept for the legal patent nature (including the leading patent claim writing guide of Slusky’s:

          Invention Analysis and Claiming: A Patent Lawyer’s Guide
          Book by Ronald D. Slusky

          but Greg refused to respond.

      3. 7.1.3

        And just in case a sane person is reading this…

        The key to understanding this Random is ask yourself why isn’t the inventor entitled to all the embodiments? Why would an embodiment that is obvious to a POSITA of implementing a function in the claims included in the scope of the claims?

        If it isn’t included in the claims that means that you have no protection as a design around will be easy. Your desire to limit people to a few concrete embodiments is mor on ic. It provides no protection. It does not reflect reality. It is offensive to every ounce of my intellectual integrity.

        And—guess what?–you can’t defend it. You just yap out nonsense about “all this” and “all that” and how would they know which embodiment to implement. Only a mentally disabled person or a judicial activist would say such things.

        1. 7.1.3.1

          Why would an embodiment that is obvious to a POSITA of implementing a function in the claims included in the scope of the claims?

          That’s not what you’re advocating. You advocate inventing one thing, describing what the parts of thing do by function, and then getting a scope that includes ALL of that function. I could invent a digital driving route planner that utilizes a terrible algorithm for planning the route, claim a processor that plans driving routes (since that violates neither 112a nor 112b for you), and receive coverage for ALL possible algorithms that plan routes. Even good ones. Even non-obvious ones. Even ones not even enabled at the time. According to you, I simply have to think that “other algorithms out there might determine routes better” and that constitutes an enabled, possessed, definite scope.

          The burden on the public is clear – You only came up with a bad algorithm, but now there is no incentive for anyone to disclose a better algorithm. They can’t monetize their superior invention no matter how different it is from yours because it achieves the same general end-goal. That’s not a claim on the invention, that’s a claim on the function or utility itself.

          It is offensive to every ounce of my intellectual integrity.

          I can’t decide between a teaspoon joke or a dripping faucet joke. Fortunately you’ll let me claim all of them. Why don’t we have everyone here take a shot on this, and then whichever one is the most witty is the one I came up with and I’ll sue the person who said it?

          And—guess what?–you can’t defend it. You just yap out nonsense about “all this” and “all that” and how would they know which embodiment to implement. Only a mentally disabled person or a judicial activist would say such things.

          Well my opinion is largely irrelevant but I can point you to some Supreme Court statements on the damage that overbroad claims do, if you’d like.

          1. 7.1.3.1.1

            Random–No.

            You don’t understand modern technology. The problem you are talking about is the reverse doctrine of equivalents, which the CAFC has done their best to bury so as to destroy claim scope.

            You statements just don’t have any correspondence to a real invention. You are talking to someone that works with real inventors and has to write claims that will stand up in court and cannot be easily designed around.

            If you just go through a few real-world examples, then you would get it.

      4. 7.1.4

        And learn what structure is to a modern technology person.

        I’ve quote from engineering books at MIT that tell us what structure means to a modern technology person. It means all the solutions that a POSITA knows even if it is billions of solutions.

        That is how modern innovators think.

  6. 6

    As if it matters when the feature is the alleged novelty. “Car” is a sufficiently structural term, but there’s a good argument for why “a flying car” or “a car for flying” would both invoke means plus, and it wouldn’t matter because if there’s no disclosure as to how to achieve the flying-ness of the car the claim is going to be invalid anyway.

    1. 6.1

      Maybe this might be a good time to review Prof. Crouch’s (coined) term of Vast Middle Ground.

      1. 6.1.1

        Is your position that either “a flying car” or “a car for flying” would be valid terms even without detailed specification support, or are you just spouting meaningless platitudes?

        1. 6.1.1.1

          My position is that it is appropriate to understand what “Vast Middle Ground” means — especially as the emotions get riled about 35 USC 112(f).

          1. 6.1.1.2.2

            I’m not really asking that question Martin. My point being that if you don’t describe what makes the car fly, it doesn’t really matter whether you’re in means plus or not.

            1. 6.1.1.2.2.1

              You ask a question (but not really), because you think that you are making a point — but the question — and answer — show that you do not GET the point at hand.

          2. 6.1.1.2.3

            After all these years, how can you

            more shards of glass houses… coming from the guy who refuses to understand the legal terrain and for years continues to float his asinine ‘theories.’

  7. 5

    Pity the patentee didn’t claim it as user identification circuitry. That would’ve fixed everything.

    1. 5.1

      The circuitry decisions are all based on pre-Williamson caselaw about a strong presumption agaisnt 112f and whatnot. I dont think they are good law anymore (though it hasnt been explicitly stated).

      The bigger issue is “processor.” It cannot be that “processor” is *not* sufficient structure when recited in the spec ( for performing a specialized function once 112f is invoked), but *is* sufficient structure when recited in the claim. If, as the CAFC has held, a processor is not sufficient structure for specialized functions once 112f is invoked, then “processor configured to XYZ” in the claims must also invoke 112f.

      1. 5.1.1

        “It cannot be that “processor” is *not* sufficient structure when recited in the spec ( for performing a specialized function once 112f is invoked), but *is* sufficient structure when recited in the claim.”

        I’m confident that the CAFC will be able to make up a reason to reach their desired result.

        1. 5.1.1.1

          I’m confident that the CAFC will be able to make up a reason to reach their desired result.

          Yes, but this only leads to the type of error known as “the score board is broken.”

          Sadly, there are many who refuse to grasp that THIS is a problem.

      2. 5.1.2

        then “processor configured to XYZ” in the claims must also invoke 112f.

        You’ve hit upon the problem of computerized functional claiming. When you go from the Supreme Court’s admonition that limited use of functional language may be proper in some circumstances to functional language being used for most of the limitations all the time in computer language, it’s not surprising it screws with the analysis.

        1. 5.1.2.1

          …because Supreme Court admonitions are not themselves “screwy enough”…

          (see post 5.1.1.1)

        2. 5.1.2.2

          Method claims are inherently functional in nature. An applicant can’t stray into mixing method and structure or they run into issues with mixing statutory classes in the claim. You can’t limit the use of functional elements in a method claim otherwise there is no point in using the method format.

          1. 5.1.2.2.1

            Acceptable to Random:

            A method comprising receiving a packet from a server. (I can examine this!)

            Unacceptable to Random:

            A system comprising a module configured to receive a packet from a server. (I can’t examine this because I like to pretend like I don’t know what you’re talking about)

            1. 5.1.2.2.1.1

              For what it’s worth, there is a difference between the two, as the first claim requires that a packet be received, while the second claim does not.

              The equivalent method claim might look like: providing a module configured to receive a packet from a server. I am pretty sure he would not be crazy about this one either.

              1. 5.1.2.2.1.1.1

                I’ll make it unmistakable:

                A system comprising a module that receives a packet from a server.

                This language is still allegedly “confusing” to the average examiner who wants to abuse 112(f).

                1. Of course, this approach risks making “it [] unclear whether infringement of [the] claim [] occurs when one creates a system that allows the … [module to receive a packet from a server], or whether infringement occurs when the [module actually receives a packet from the server],” and thus “does not apprise a person of ordinary skill in the art of its scope, and [] is [accordingly] invalid under section 112, paragraph 2.” IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005).

                  At this point I am mostly just being obnoxious, as it would probably be fine under current jurisprudence. See, e.g., Mastermine Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 1315-1316 (Fed. Cir. 2017) (“Though claim 8 includes active verbs—presents, receives, and generates—these verbs represent permissible functional language used to describe capabilities of the ‘reporting module.’ … [T]he claims at issue here merely claim that the system “possess[es] the recited structure [which is] capable of performing the recited functions.” (quoting Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008)).

                  On the broader issue, the Fed. Cir. has made clear that “[f]unctional language may [] be employed to limit the
                  claims without using the means-plus-function format,” Microprocessor Enhancement, 520 F.3d at 1375.

                  That being said, Williamson appears to make clear that “§ 112, para. 6 will apply if … the claim term … recites ‘function without reciting sufficient structure for performing that function.'” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc section of opinion) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed.Cir.2000)).

                  It seems like there is a strong argument that “a module configured to receive a packet from a server” “recites ‘function without reciting sufficient structure for performing that function’,” Id., and thus would be construed under § 112, para. 6.

                  I also think it is always helpful to keep in mind during prosecution that the examiner’s opinion is not the one that will ultimately matter. Convincing an examiner that a functional claim limitation should not be construed under § 112, para. 6 generally just makes his job easier, as it gives him a broader claim to try to search for. Ultimately, though, a court or the Board will make up its own mind on whether a claim invokes § 112, para. 6.

                2. A method comprising receiving a packet from a server. (I can examine this!)

                  This is suggested by all structures that perform the function of receiving a packet from a server.

                  A system comprising a module that receives a packet from a server.

                  This is drawn to a smaller scope – only CERTAIN structure that perform the function of receiving a packet from a server are included. How do we know which structures are those certain structures? We start by determining what structure in the specification performs this function (thats explicitly what the statute says to do). If the specification has no structure, then we don’t know which structures are the certain structures being claimed.

                  It has nothing to do with “confusing” – the law tells me to start at point A, and there is no point A, so I can’t do what the law commands. The law says when you can’t do what is commanded (in this instance) it is a 112b violation. It’s not much different from an antecedent basis problem – if you refer to “the” widget before you refer to “a” widget, I likely understand you intended to introduce the widget there, but that doesn’t change the fact you’ve violated 112b.

          2. 5.1.2.2.2

            One of the aspects of the Act of 1952 was to amplify the very reach of method claims.

            See 35 USC 100(b).

            Note that the change is NOT a tautology (as those who refuse to understand the terrain insist), but rather, an amplification with incorporation of a term of art as but one component of the larger permitted area.

            Combine this with those who refuse to understand that the US Sovereign has chosen NOT a “technological arts” test, but instead have chosen the broader Useful Arts, and one can easily see how those who are anti-patent align with the issues here.

        3. 5.1.2.3

          When the functional result is an item of information, the spec should have to disclose enough for PHOSITA to generate the information or it’s functional equivalent. If you claim a means or module to provide a certain arithmetic, the spec should not have to cover the theory of numbers or how to make an arithmetic circuit, because those are widely known in the art. If your information result is a rare species, then more disclosure would be needed. The means plus function test is really just a nested 103 inquiry, isn’t it?

  8. 4

    In theory, 112(f) can only save claims. If a claim that includes “module for function X” does not invoke 112(f), then it covers *ALL* structures of accomplishing that function X. This requires *heightened* written description. If there isnt even one sufficient disclosure of structure in the spec, then there certainly isnt enough to disclosure to satisfy written description (or enablement) for all possibles tructures.

    That is, anything that fails because it invokes 112(f) must also fail if it doesnt invoke 112(f), because the scope without invoking 112(f) is larger than the scope invoking 112(f) and therefore requires more disclosure.

    1. 4.1

      “In theory…”

      And in practice, written description for the predictable arts is a dead letter.

      1. 4.2.1

        No, because a processor is structure known to POSITA to perform the function of adding.

        Do you think a “module” is a structure known to perform the function of “control[ling] access of said one or more software application packages?” (Maybe it is, and you can show me its a standard function for whatever a “module” is, but that would also hurt the 103 argument).

        Note: The question isnt whether POSITA could make a “module” do that. Its whether a “module” is structure already known by POSITA to do that function. That’s what you seem to be getting confused.

    2. 4.3

      In theory, 112(f) can only save claims. If a claim that includes “module for function X” does not invoke 112(f), then it covers *ALL* structures of accomplishing that function X. This requires *heightened* written description. If there isnt even one sufficient disclosure of structure in the spec, then there certainly isnt enough to disclosure to satisfy written description (or enablement) for all possibles tructures.

      That’s not true at all. It’s true that means-plus decreases the scope, but written description of general elements can be met by the common knowledge in the art (through judicial fiat) while written description of means plus elements must be met by the four corners of the disclosure (through statutory requirement). It shrinks what you have to disclose, but also shrinks the manners in which it discloses it.

      That is, anything that fails because it invokes 112(f) must also fail if it doesnt invoke 112(f), because the scope without invoking 112(f) is larger than the scope invoking 112(f) and therefore requires more disclosure.

      A specification that simply mentions a writing utensil supports a claim to a writing utensil but does not support means for writing. It would have to mention a pen before it supports means for writing. That’s because the art knows of a wide range of structures for writing, but absent a nomination to a particular one you can’t determine what the equivalents are for a 112f analysis.

      1. 4.3.1

        RandomGuy:

        The test for whether a claim invokes 112(f) is whether the claim recites sufficient structure for performing the claimed function.

        The test for whether, once invoked, a spec is sufficient to support a 112(f) claim is whether the specification recites sufficient structure for performing the claimed function.

        We agree on both of these tests, right?

        Note they are the same test. If a claim has “writing utensil for writing”, then you only avoid 112(f) by arguing that “writing utensil” denotes sufficient structure to POSITA for performing the function of writing. If a claim has “means for writing” and the spec recites a “writing utensil,” then you save the claim by arguing that “writing utensil” denotes sufficient structure to POSITA for performing the function of writing.

        Not sure why you think a class of structures would serve in the claim but not in the spec. The test is the same. And just note there is the same “equivalents” analysis for non-112(f) claims under DOE– so using an “equivalents” argument to say you need more specificity for 112(f) claims doesnt really make sense.

        1. 4.3.1.1

          The test for whether a claim invokes 112(f) is whether the claim recites sufficient structure for performing the claimed function.

          Not exactly. Whether means plus is invoked is a matter of intent. The language used is evidence of the intent. It is possible to refer to a class of items by the function they produce and not their structure and still be outside of means plus. As anon will tell you, 112f is an OPTIONAL manner of claiming. (I expect a /golfclap for that, anon)

          The test for whether, once invoked, a spec is sufficient to support a 112(f) claim is whether the specification recites sufficient structure for performing the claimed function.

          Yes

          If a claim has “means for writing” and the spec recites a “writing utensil,” then you save the claim by arguing that “writing utensil” denotes sufficient structure to POSITA for performing the function of writing.

          Except a writing utensil invokes no structure at all, it names a function. It can’t possibly fulfill 112f. But a claim to the element of writing utensil may meet both 112a and b if the art knows of structures that perform functions. Moreover, even if you name structureS you could cause a 112b problem because its still not nominating a structure. i.e. A spec saying a writing utensil could be a pen, pencil, or a tattoo rotary pen is just as indefinite as a spec that doesn’t define the writing utensil at all, because it just nominated 3 non-equivalent structures as the thing that performs the function.

          Not sure why you think a class of structures would serve in the claim but not in the spec.

          Because one can express an element grouping in any manner they see fit, and grouping elements by function can be known by the art to exist without the specification detailing any one of them.

          1. 4.3.1.1.1

            This reads like Newman’s dissent in Williamson, and/or the holding in Flo Healthcare that was abrogated by Williamson. 112(f) is optional in that the drafter could have included structure into the claim rather than function; by drafting the claim to not include structure sufficient to perform a recited function, the drafter has taken the option to invoke 112(f).

            Williamson: “§ 112, para. 6 will apply if the challenger demonstrates that the claim […] recites function without reciting sufficient structure for performing that function.” ”

            (Note that is almost verbatim what I said; “The test for whether a claim invokes 112(f) is whether the claim recites sufficient structure for performing the claimed function.”).

            If, as you say, “writing utensil denotes no structure at all,” then a claim with “writing utensil for writing” must invoke 112(f) under the Williamson standard. (I disagree, and think writing utensil invokes a class of structures, but its certainly arguable).

            I’d be interested if you point to any post-Williamson cases that make the distinction you are trying to make.

        2. 4.3.1.2

          ksksksks,

          Great comments in this thread; agree on at least 99%.

          I think the issue that RandomGuy is trying to raise is whether, absent the existence of 112, p. 6 / 112(f), elements that are not at the point of novelty could theoretically be expressed in the claim using functional language and construed to cover elements known to an ordinary artisan even if not disclosed in the specification.

          The belief of many attorneys seems to be that this would be proper.*

          Potentially supporting this belief, even in General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938), the Court noted that “[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.” General Elec., 304 U. S. at 372.

          On the other hand, in Merrill v. Yeomans, 94 U.S. 568 (1876), the Court indicated that “in cases where the invention is a new combination of old devices, [the patent applicant] is bound to describe with particularity all these old devices and then the new mode of combining them for which he desires a patent[, and] [i]t thus occurs that in every application for a patent, the descriptive part is necessarily largely occupied with what is not new in order to [provide] an understanding of what is new.” Merrill, 94 U.S. at 570.

          To the extent that prior to enactment of 112, p. 3 (now 112, p. 6 / 112(f)) in response to the General Elec. / Halliburton line of cases, functional claim language not at the point of novelty was acceptable and could cover elements known to the ordinary artisan but not explicitly disclosed, the plain text of 112, p. 3 (now 112, p. 6 / 112(f)) would potentially seem to eliminate this ability. However, it seems unlikely that Congress intended this result, given that Congress was intending to expand the ability of patentees to use functional claim language.

          This issue is potentially relevant even with the existence of 112, p. 6 / 112(f) because it potentially raises an argument regarding when the saving exception should be triggered/applied.

          Overall – really, really complicated issues that are far from settled (and which also have a ton of interplay with the ongoing eligibility mess), but I think RandomGuy raises an interesting question.

          * (Some attorneys also seem to believe that functional claim language at the point of novelty is fine too and want to argue against application of the saving construction of 112, p. 6 / 112(f) without appreciating that it may just doom their claim.)

          1. 4.3.1.2.1

            I posted this before seeing the most recent comments by you and RandomGuy. Re my last comment as to “an argument regarding when the saving exception should be triggered/applied”, I think Newman’s dissent in Williamson is one possible form of that argument.

            The argument jumping off from Newman’s dissent would be that 112, p. 6 / 112(f) gives an applicant an opportunity to use the term “means for” or “step for” to invoke these saving constructions, but absent that functional language invoking the saving construction the functional language should be interpreted under the traditional case law, sink or swim.

          2. 4.3.1.2.2

            I agree with most of what is said here. I am a big fan of the usefulness of Wabash and Perkin’s Glue in understanding the original functional language complaints.

            I also agree it has a lot to do with eligibility, as today what is poorly answered by the written description test was more ably previously policed through a combination of indefiniteness and eligibility. A claim to a machine that was described only by functional result was indefinite, while a claim to the functional result itself was ineligible, and consequently one had to claim the structure of the machine. The WD test is a poor man’s backdoor for achieving the same result.

            To reach the particular 112f issue that ks refers to, I agree that Williamson performs a bright line rule, but that ignores that there was 60 years before Williamson where elements were construed outside of means plus, which makes the categorical language in Williamson inappropriate. The federal circuit often gets itself in trouble with bright line rules that get overruled by the supreme court, see, e.g. Alice overruling “it has a physical thing so it must be statutory” or KSR with “there must be an express teaching suggestion or motivation” or Nautilus with “indefiniteness is only when it is insoluably ambiguous.”

            I disagree with the suggestion that the rule is not based on what the applicant’s intent is. Williamson does make the presence or absence of the word “means” IRRELEVANT, which it would have to if the test was only whether the art would understand the term to be connoting structure. Williamson simply did away with the strong presumption introduced in 2004, not suggesting that it was beyond the inventor’s capacity to formulate an element bounded only by function. I agree the ultimate patentability of a claim including such an element (especially if it is directly connected to the novelty/nonobviousness of the claim) is dubious.

            1. 4.3.1.2.2.1

              understanding the original functional language complaints.

              It’s more than too bad though that you stop (driven by your preconceptions and interest in “the problem”) and forget to ALSO look at what Congress did to that ‘so-called’ problem.

              As you do not – and you seem ONLY interested in perpetuating your own warped view, the actual law escapes you.

              This is reflected in your celebrating of broken score boards, as you seem absolutely incapable of even recognizing what a broken score board is, or why such is the bigger problem.

    3. 4.4

      Are you referring to a “shield only” versus a “shield and sword” (as as some would desire, a “sword only”)…?

      That is, shield is meant to protect and enhance the ability of an applicant to obtain innovation protection, while a sword is used against an applicant to deny protection…

  9. 3

    sending, to the user, a user identification module configured to control access of said one or more software application packages
    To 99.9% of the patent attorneys practicing in the computer arts, the meaning of this language is plain as day. It simply describes the sending of a computer program (i.e., the user identification module) to a user. The computer program (i.e., the user identification module) itself is technology that has been known for untold decades.

    Normally, patent claims are expected to spell out the actual structure of the invention — not just its function.
    This is nonsense. There is no requirement that structure be claimed. All that is required under 35 USC 112 is that the “claims particular point out and distinctly claim[] the subject matter which the inventor … regards as the invention.” Physical items (i.e., not just things in the computer arts) are described using functional language all the time. What are the terms: light, radiator, switch, distributor, computer, remote control, container, lawn mover, hole punch, connector? They are description of physical things by what they do. In other words, they are words that define things by their function — not their structure. Are they “means plus function” language? What if one my claims recites a “switch” and my specification doesn’t provide sufficient structure — is the claim now indefinite?

    The Federal Circuit concluded their opinion with the following statement:
    Without an algorithm to achieve the “control access” function, we hold the term “user identification module” lacks sufficient structure and renders the claims indefinite.
    Under the Supreme Court’s decision of Nautilus, “[a] patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” The Federal Circuit’s decision held that claims were indefinite yet contained no mention of Nautilus or the standard set forth therein. The reason being is quite clear — the Federal Circuit’s position is irreconcilable with Nautilus.

    Those skilled in the art have exceedingly little uncertainty as to what constitutes “a user identification module configured to control access of said one or more software application packages.” Again, this is exceptionally old technology is this art. As such, this language easily passes Nautilus.

    The claim went to the PTAB and the Examiner was reversed (apparently, the Board understood the language well enough), yet all the time and money the inventor spent to get this patent has been wasted because of the inclusion of a trivial (probably wasn’t necessary to overcome the prior art) and easily understood limitation.

    This decision is just another in a long line of decisions by the Federal Circuit intended to make it more difficult to get patents directed to inventions (and particularly those involving computer software). When you read Federal Circuit and CCPA decisions from decades ago, the case law was written to avoid “traps for the unwary.” However, at least over the past decade the Federal Circuit has excelled in creating creating these traps. Where the patent system once catered to smaller inventors and wouldn’t invalidate a patent over minor issues, the current patent system excels in making it the “sport of kings” whereby any tiny flaw can doom a patent.

    The result of this decision is that anytime anybody uses the term “module” or anything comparable (whatever that might be), patent attorneys will be forced to include an “algorithm,” which is totally unnecessary to make/use the claimed invention. However, this will drive up the cost of preparing the patent application and make it harder for the little guys.

    There are about 350K issued US Patents that include the term “module” in one of the claims. How many of those would pass muster under this new decision? As it turns out, Samsung (as the assignee) has almost 8000 issued patents that include the term “module” in one of the terms. For example, USP 10,922,011 recites “a secure deletion control module configured to determine the at least one block to be erased.” I hope, for their sake, there is an algorithm for that module in the specification.

    1. 3.1

      Below is something that is profound. The CAFC isn’t even trying to create a body of law so that patent attorneys know what they need to do to write a valid patent. The CAFC needs to be disbanded. I heard rumors of rumors that Trump was onboard for disbanding the CAFC. Maybe if the Ds get out of office, which may be never with their planned 30 million new Hispanic voters that vote 80 percent D. But if an R is elected again maybe they will disband the CAFC. J. Rich would be writing dissents to each one of these opinions calling his fellow judges purchased clowns. I guess what the CAFC is doing amounts to at least gross negligence. Add intent and I think it is much worse.

      Wandering through >>>This decision is just another in a long line of decisions by the Federal Circuit intended to make it more difficult to get patents directed to inventions (and particularly those involving computer software). When you read Federal Circuit and CCPA decisions from decades ago, the case law was written to avoid “traps for the unwary.” However, at least over the past decade the Federal Circuit has excelled in creating creating these traps. Where the patent system once catered to smaller inventors and wouldn’t invalidate a patent over minor issues, the current patent system excels in making it the “sport of kings” whereby any tiny flaw can doom a patent.

    2. 3.2

      Your problem is that I can buy a switch, a lawn mower, a hole puncher, a radiator, etc. from home depot, or I can look in a textbook or manual and find a structure that describes them. I cant buy or find any reference to a “module that controls access to XYZ.” (and if I could, then the lawyers didnt do a good job showing it).

      The other issue arises when for 102/103, the “module” is the novelty, but then for 112 its something with definite, known structure. It cant be both. (not sure if that is the case here or not, but this issue arises a lot, where an element is argued both as being novel *and* as being a structure recognized in the art; if its recognized in the art, it cant be novel. the combination can be novel, but not the element itself).

      1. 3.2.1

        I cant buy or find any reference to a “module that controls access to XYZ.” (and if I could, then the lawyers didnt do a good job showing it)
        Let me repeat, under the Supreme Court’s decision of Nautilus, “[a] patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”

        I see nothing about a requirement that the item has to be capable of being purchased at Home Depot or described in some manual. The issue is whether those SKILLED IN THE ART have reasonable certainty as to the scope of the invention. In this instance, is the scope of the term “a user identification module configured to control access of said one or more software application packages” reasonably certain? Would one skilled in the art be able to identify one if he/she encountered it?

        The other issue arises when for 102/103, the “module” is the novelty
        Read the entire claim, this module was not the novelty. It was an ancillary element that could have easily been removed from the claim.

        The other issue arises when for 102/103, the “module” is the novelty, but then for 112 its something with definite, known structure. It cant be both. (not sure if that is the case here or not, but this issue arises a lot, where an element is argued both as being novel *and* as being a structure recognized in the art; if its recognized in the art, it cant be novel. the combination can be novel, but not the element itself)
        You are confusing indefiniteness and enablement — it is a classic error that I frequently see at the Patent Office.

        A claim defines the scope of the invention — the hypothetical fence defining the scope of what the inventors are claiming as their invention. To be indefinite means that the where the line is drawn by this fence is unclear (i.e., not reasonably certain). Enablement is another issue altogether — it is whether the specification allows one skilled in the art to make and use the invention. In the computer arts, the mere description of an element is sufficient to enable one skilled in the art to make and use the invention.

      2. 3.2.2

        Getting caught in the filter….

        Your problem is that I can buy a switch, a lawn mower, a hole puncher, a radiator, etc

        Ah, but this statement only invites the problematic view of Random of the (determinative) SCOPE of these things, as any (and every) one of these things that you are using a broad label for are indefinite in that label as they do not (and cannot) cover the full scope of those things, given that new improvement inventions still occur FOR those things.

        To “conquer” the (asserted) indefiniteness issue (in a turtles all the way down manner), one needs an EXACTING picture claim – and only an EXACTING picture claim.

        As Wandering reflects at 3.4.2 (and as Dave Stein previously shredded Malcolm several years back), the ‘conundrum’ of “functional language” is NOT limited to the computing arts, and the anti’s that take aim AT the computing arts can not limit the use of their rhetorical
        w
        e
        a
        p
        o
        n
        s
        to only the computing arts.

        This also feeds into understanding just how VERY vast is that Vast Middle Ground.

      3. 3.2.3

        Still getting caught in the filters…

        Your problem is that I can buy a switch, a lawn mower, a h0 le puncher, a radiator, etc

        Ah, but this statement only invites the problematic view of Random of the (determinative) SCOPE of these things, as any (and every) one of these things that you are using a broad label for are indefinite in that label as they do not (and cannot) cover the full scope of those things, given that new improvement inventions still occur FOR those things.

        To “conquer” the (asserted) indefiniteness issue (in a turtles all the way down manner), one needs an EXACTING picture claim – and only an EXACTING picture claim.

        As Wandering reflects at 3.4.2 (and as Dave Stein previously
        s
        h
        r
        e
        d
        d
        e
        d
        Malcolm several years back), the ‘conundrum’ of “functional language” is NOT limited to the computing arts, and the anti’s that take aim AT the computing arts can not limit the use of their rhetorical
        w
        e
        a
        p
        o
        n
        s
        to only the computing arts.

        This also feeds into understanding just how VERY vast is that Vast Middle Ground.

        1. 3.2.3.1

          … nice to see that filters are STILL being differently applied, as the item that drew the George Carlin filter was the “cut and paste” from someone else who did not have to deal with the filter.

    3. 3.3

      “The Federal Circuit’s decision held that claims were indefinite yet contained no mention of Nautilus or the standard set forth therein. The reason being is quite clear — the Federal Circuit’s position is irreconcilable with Nautilus.”

      You come across here as appearing to be deliberately arguing in bad faith through how your argument completely ignores the existence of 112(f). It is the 112(f) issue that makes the claims potentially indefinite, and pretending it doesn’t exist isn’t a good look.

      It’s not like the CAFC hasn’t built outs for you guys to have your open ended functional software claims. And it’s not like these particular claims were granted before Williamson. Save your teeth to be gnashed for a better case.

      1. 3.3.1

        You come across here as appearing to be deliberately arguing in bad faith through how your argument completely ignores the existence of 112(f). It is the 112(f) issue that makes the claims potentially indefinite, and pretending it doesn’t exist isn’t a good look.
        Indefiniteness is a 112(b) issue — not a 112(f) issue. The text of 112(f) is the following:
        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.

        Is there anything about indefiniteness in that statutory language? No. 112(b) speaks to indefiniteness. Therefore, Nautilus is controlling case law.

        If the Federal Circuit is going to tank a claim for being indefinite, they should apply the controlling case law.

        1. 3.3.1.1

          shall be construed to cover the corresponding structure, material, or acts described in the specification

          So what is the definite scope of the claim when the specification contains no structure, material or acts for performing the functionality?

          1. 3.3.1.1.1

            I thought his response confirmed the bad faith interpretation, but best of luck in your exchange.

            1. 3.3.1.1.1.1

              Ben, oh please.

              You confuse things you just don’t like with “bad faith.”

              That is an inte11ectually dishonest tactic.

          2. 3.3.1.1.2

            So what is the definite scope of the claim when the specification contains no structure, material or acts for performing the functionality?
            Are you saying that one skilled in the art wouldn’t know the scope of “sending, to the user, a user identification module configured to control access of said one or more software application packages”? Again, the “user identification module configured to control access of said one or more software application packages” is a type of module that has been exceptionally well known for ages. That terminology alone is enough for one skilled in the art.

            The user identification module was a conventional element and the written description requirement does not require conventional or well known elements to be discussed in detail. If I’m claiming a novel door and one of my elements is a “means for hinging the door” is that term “indefinite” within the meaning of Nautilus if there is no additional description in the specification for what constitutes a “means for hinging”? If you say yes, then you are elevating form over substance. Substantively, no one skilled in the art would be confused as to the scope of “means for hinging.”

            Again, the Federal Circuit is merely laying traps for the unwary. Once “module” becomes a “nonce” word, over the next couple of years, we’ll start to see more “nonce” words enter the Federal Circuit’s lexicon. Then, some clever attorney will get the right panel at the Federal Circuit and we’ll see terms like “light,” “switch,” “resistor” be deemed “nonce” words.

            The pattern the Federal Circuit takes is easy enough to follow.

            1. 3.3.1.1.2.1

              It’s shocking how consistently you get everything wrong.

              Are you saying that one skilled in the art wouldn’t know the scope of “sending, to the user, a user identification module configured to control access of said one or more software application packages”?

              I’m saying the statute on its face says that the scope of the claim is dependent upon the structure in the specification that performs the function, so I would like to know what the structure in the specification is please. Can you give me that?

              Again, the “user identification module configured to control access of said one or more software application packages” is a type of module that has been exceptionally well known for ages. That terminology alone is enough for one skilled in the art.

              So just to be clear, you’re saying the structure that performs the function of “control access of said one or more software application packages” has been static for ages? That doesn’t seem likely. But even if it is, where in the specification is that?

              The user identification module was a conventional element and the written description requirement does not require conventional or well known elements to be discussed in detail.

              Is either 112b or Nautilus concerned the written description requirement? But while we’re talking about this, the name of what you’re referring to is the supplementary doctrine. Does that doctrine apply to elements that invoke 112f? Can you show me a case that says that?

              If I’m claiming a novel door and one of my elements is a “means for hinging the door” is that term “indefinite” within the meaning of Nautilus if there is no additional description in the specification for what constitutes a “means for hinging”?

              If “means for hinging a door” is construed to invoke 112f, and 112f on its face says that the scope of the claim is the structure in the specification + its equivalents, and there is no structure in the specification, the claim is indefinite. You cannot find the scope of “structure in the specification + its equivalents” if there is no structure in the specification. I question whether means for hinging invokes 112f though.

              Let’s try an analogy for a thought process. Lets say I claim “means for firing a projectile.” Now, everyone knows you can have a bow, a gun, a rocket launcher. But the specification doesn’t nominate any of these structures. What is the scope of the claim? Is it the bow + it’s equivalents (i.e. other string-tension propellants) or the gun (i.e. other controlled chemical explosion structures) or a rocket launcher (uncontrolled rocketry) or even an uninvented mass driver (magnetic propulsion). Which of these scopes is appropriate, and how does one of skill in the art know which one it is?

              If you say yes, then you are elevating form over substance. Substantively, no one skilled in the art would be confused as to the scope of “means for hinging.”

              No, the scope of the claim changes, which is a substantive change. If the specification nominates the bow as the structure, an air gun does not infringe, while a compound bow does. If the specification nominates the gun, an air gun likely does infringe while the compound bow does not. If the specification nominates a blow dart system, none of the above mentioned items infringe.

              Again, the Federal Circuit is merely laying traps for the unwary. Once “module” becomes a “nonce” word, over the next couple of years, we’ll start to see more “nonce” words enter the Federal Circuit’s lexicon. Then, some clever attorney will get the right panel at the Federal Circuit and we’ll see terms like “light,” “switch,” “resistor” be deemed “nonce” words.

              Other than the notion of module “becoming” a nonce word (it’s clearly been a nonce word for a long time) I do agree that this is a trap inasmuch as people who like to engage in purely functional claiming are going to get more of their claims invalidated under 112b as opposed to 112a.

              1. 3.3.1.1.2.1.1

                I’m saying the statute on its face says that the scope of the claim is dependent upon the structure in the specification that performs the function, so I would like to know what the structure in the specification is please. Can you give me that?
                Why do you keep running away from the basis for invalidity (indefiniteness) and the standard (Nautilus) by which indefiniteness should be evaluated?

                I would like to know what the structure in the specification is please
                For someone who is admonishing me about the “statute of its face,” you apparently don’t realize that 112, 6th paragraph refers to “structure, material or acts in support thereof” – not just structure. You want acts (i.e., an algorithm)? If so, the acts for “a user identification module configured to control access of said one or more software application packages” are: (i) identifying a user, (ii) determining an access control associated with one or more software application packages based upon the identified user, (iii) permitting or denying access to the one or more software applications based upon the determined access control. This isn’t rocket science. Even those unskilled in the art could figure out that algorithm. Would the inclusion of that algorithm in the specification make the claim term more definite to one skilled in the art? Hardly. Again, access control based upon a user’s identity has been being performed in couple applications for at least 40 years.

                So just to be clear, you’re saying the structure that performs the function of “control access of said one or more software application packages” has been static for ages?
                Nice straw man argument and immaterial. There are dozens/hundreds of ways the various acts of the algorithm I identified above could be implemented. However, that does not make it indefinite. There are tens of thousands of variations of a “light” or a “computer” but that doesn’t make those terms indefinite. Or will it? I suspect that the infringers of the world would like the answer to the last question to be “yes.”

                Is either 112b or Nautilus concerned the written description requirement?
                You are referring to what is disclosed in the specification, and the written description requirement addresses that issue.

                If “means for hinging a door” is construed to invoke 112f, and 112f on its face says that the scope of the claim is the structure in the specification + its equivalents, and there is no structure in the specification, the claim is indefinite.
                That’s a nice example of circular reasoning that doesn’t invoke the standard set forth by Nautilus.

                I question whether means for hinging invokes 112f though.
                LOL. You haven’t been paying attention to the direction the Federal Circuit has been taking the last couple of decades.

                Let’s try an analogy for a thought process. Lets say I claim “means for firing a projectile.” Now, everyone knows you can have a bow, a gun, a rocket launcher. But the specification doesn’t nominate any of these structures. What is the scope of the claim? Is it the bow + it’s equivalents (i.e. other string-tension propellants) or the gun (i.e. other controlled chemical explosion structures) or a rocket launcher (uncontrolled rocketry) or even an uninvented mass driver (magnetic propulsion). Which of these scopes is appropriate, and how does one of skill in the art know which one it is?
                The problem with your analogy is that it doesn’t reflect reality. A more realistic claim would be one in which the firing of the projectile is just one element of a number of elements and the inventor made no claim to invent “firing a projectile” – only that “firing a projectile” is just one element of a combination of elements. And to answer your question as to “how does one of skill in the art know which one it is”: It doesn’t matter. It’s a known operations and how it happens doesn’t impact the invention, as a whole.

                No, the scope of the claim changes, which is a substantive change. If the specification nominates the bow as the structure, an air gun does not infringe, while a compound bow does. If the specification nominates the gun, an air gun likely does infringe while the compound bow does not. If the specification nominates a blow dart system, none of the above mentioned items infringe.
                In the real world, whether it is a bow, an air gun, or a compound bow doesn’t matter to the inventor – he (or she or they) just wants the projectile fired. There could be dozens (if not hundreds) of ways by which a projectile could be fired.

                The underlying goal of this case law is to do what you just described –limit the scope of the invention to some small subset of the possible embodiments. To the infringers of the world, the next best thing to having an invalid patent is to have a patent that is easily infringed. By requiring the scope of these terms (intentionally written to broadly cover known elements) to be limited to a small subset of possible embodiments, you’ve created loopholes that effectively make the patent exceptionally easy to design around. That’s a win for the infringers.

                One could possibly get around all of this by having exceptionally detailed specifications that list all possible ways by which some so-called “means for [function]” could be performed. The upshot of this would be to drive up costs for preparation of patents – further taking patent law protection out of the reach of individual inventors and small companies. And to what end? What is the value added for this additional disclosure? One skilled in the art already knows what constitutes a “user identification module configured to control access of said one or more software application packages” or a “means for firing a projectile.” This disclosure adds nothing. Rather, it is the Federal Circuit setting just one more trap for the unwary.

                1. Why do you keep running away from the basis for invalidity (indefiniteness) and the standard (Nautilus) by which indefiniteness should be evaluated?

                  This question evidences your thinking is backward. Okay so you understand step 1 is construe the claims, and step 2 is start testing that scope against the requirements of law (including 112b). I’m not running away from 112b, I haven’t gotten to it yet. I’m still on step 1. Construe the claims for me. When you invoke 112f, the claim construction requires that I do some analysis that BEGINS WITH the structure in the specification – that’s explicitly what 112f says. What is the structure in the specification for performing the function?

                  If so, the acts for “a user identification module configured to control access of said one or more software application packages” are: (i) identifying a user, (ii) determining an access control associated with one or more software application packages based upon the identified user, (iii) permitting or denying access to the one or more software applications based upon the determined access control.

                  Does the specification say that or did you just make that up? (if so, where?) Because the specification actually says (ii) is done at the server, while the user identification module is at the client. So it sounds like you want to ignore his invention and substitute your own.

                  There are dozens/hundreds of ways the various acts of the algorithm I identified above could be implemented. However, that does not make it indefinite.

                  That is the precise reason it IS indefinite. That’s the whole reason the statutory construction language in 112f exists. You simply cannot do what you think you can do here. It’s well settled you can’t say “Any software that achieves this function is definite.”

                  Here’s the court in Aristocrat back in 2008:

                  Whether the disclosure would enable one of ordinary skill in the art to make and use the invention is not at issue here. Instead, the pertinent question in this case is whether Aristocrat’s patent discloses structure that is used to perform the claimed function. Enablement of a device requires only the disclosure of sufficient information so that a person of ordinary skill in the art could make and use the device. A section 112 paragraph 6 disclosure, however, serves the very different purpose of limiting the scope of the claim to the particular structure disclosed, together with equivalents. The difference between the two is made clear by an exchange at oral argument. In response to a question from the court, Aristocrat’s counsel contended that, in light of the breadth of the disclosure in the specification, any microprocessor, regardless of how it was programmed, would infringe claim 1 if it performed the claimed functions recited in the means-plus-function limitations of that claim. That response reveals that Aristocrat is in essence arguing for pure functional claiming as long as the function is performed by a general purpose computer. This court’s cases flatly reject that position.

                  That’s a nice example of circular reasoning that doesn’t invoke the standard set forth by Nautilus.

                  You understand reference isn’t circular, right? The statute is very clear. When you have means for [function] in the claim, you pull out the term means for function and replace it with the structure in the specification. All 112f does is let you write complicated structures in the spec so that they can be referenced in the claim. Regardless, again we’re still at the “construe the claims” stage so we’re not comparing the scope to nautilus yet, we don’t even have a scope.

                  And to answer your question as to “how does one of skill in the art know which one it is”: It doesn’t matter. It’s a known operations and how it happens doesn’t impact the invention, as a whole.

                  Of course it matters. We can make it part of larger claim if your mind needs that somehow. So we’ve got Claim 1 and it’s got ten elements. And we have a defendant, and he admits his invention does nine of the elements. But the last element is “means for firing a projectile.” And the defendant uses a bow for firing a projectile in his system. Now 112f explicitly says that means plus term shall be construed to cover the structure in the specification + its equivalents. Do you not understand that if the specification nominates a bow as the means the defendant infringes, and if the specification nominates a gun the defendant does not infringe? And if the specification doesn’t nominate anything we can’t tell whether the defendant infringes, because we don’t know whether the claim means a bow+equivalents or a gun+equivalents?

                  The underlying goal of this case law is to do what you just described –limit the scope of the invention to some small subset of the possible embodiments. To the infringers of the world, the next best thing to having an invalid patent is to have a patent that is easily infringed. By requiring the scope of these terms (intentionally written to broadly cover known elements) to be limited to a small subset of possible embodiments, you’ve created loopholes that effectively make the patent exceptionally easy to design around.

                  So because the result IN THIS CASE resulted in the claims being invalidated you think there’s some sort of intrinsic bias? What if the defendant had prior art that anticipated the broader scope and the patentee was arguing for a means-plus construction to avoid the prior art, would construing it in means plus be okay then?

                  In the real world, whether it is a bow, an air gun, or a compound bow doesn’t matter to the inventor – he (or she or they) just wants the projectile fired. There could be dozens (if not hundreds) of ways by which a projectile could be fired.

                  haha tell you what, you make a system that utilizes bows and I’ll make a system that utilizes guns and we’ll give them to respective armies and see if they think it’s irrelevant what means are used to fire the projectiles. What if the other limitations in the claim are tracking sensors and they aren’t capable of tracking bullets like they can track arrows? Do you think it matters to the inventor then? Do you think it might matter to the public because they don’t know whether they can research better tracking systems because they don’t know if they can monetize them?

                  One could possibly get around all of this by having exceptionally detailed specifications that list all possible ways by which some so-called “means for [function]” could be performed.

                  Just to be clear, if all of the ways in which a function could be performed were truly equivalent, the only thing the specification would have to do is disclose one single way, because 112f on its face says that the scope is drawn to the structure in the specification PLUS ITS EQUIVALENTS. So the additional cost would be nothing. That’s why when I said that I doubt the structure of this algorithm has been static for “ages” it’s really because both you and I know that not every identification and access control system is equivalent. The reason this guy got this patent is exactly because even though the primary reference had an access control system, he prevailed that his access control system was different from the prior art. After having gotten a patent because of the distinctiveness of his particular means, you want his claim scope to be construed to ignore the distinction and include exactly the prior art he argued his invention was different from. Sorry, it doesn’t work like that.

                2. Does the specification say that or did you just make that up? (if so, where?)
                  Of course I made it up. It isn’t rocket science – I would expect a 9th grader with a modicum of computer programming experience to figure out how to do that. I would also expect the same 9th grader to be able to identify a “a user identification module configured to control access of said one or more software application packages” if he or she came across one. What about this technology having been around 40+ years don’t you understand? This element alone is T R I V I A L technology.

                  Because the specification actually says (ii) is done at the server, while the user identification module is at the client.
                  Did I write “There are dozens/hundreds of ways the various acts of the algorithm I identified above could be implemented”? Oh wait, I did write that. Let me introduce you to the concept of distributed computing – something that has also been around for decades. Simply put, it means that the functions of a particular computer program do not necessarily have to reside in the same hardware device. It is exceedingly common to have some aspects of a program executing on the client side and some on the server side. BTW — I didn’t write WHERE the acts are necessarily performed.

                  That is the precise reason it IS indefinite.
                  Let me refer you to MPEP 2173.04, the title of which is “Breadth is Not Indefiniteness.” Seriously, how long have you been around and not known this?

                  Do you not understand that if the specification nominates a bow as the means the defendant infringes, and if the specification nominates a gun the defendant does not infringe?
                  That’s the goal of the anti-patent crowd. As I wrote, “the next best thing to having an invalid patent is to have a patent that is easily infringed.”

                  haha tell you what, you make a system that utilizes bows and I’ll make a system that utilizes guns and we’ll give them to respective armies and see if they think it’s irrelevant what means are used to fire the projectiles
                  Thanks for taking your hypothetical into the absurd. Your original hypothetical made no mention of the qualities of the projectile or how it is launched.

                  Just to be clear, if all of the ways in which a function could be performed were truly equivalent, the only thing the specification would have to do is disclose one single way, because 112f on its face says that the scope is drawn to the structure in the specification PLUS ITS EQUIVALENTS.
                  Ah yes, the hope that the doctrine of equivalents is somehow going to save things for a patentee. You really haven’t been paying attention to how the case law has developed over the decades, have you?

                  The reason this guy got this patent is exactly because even though the primary reference had an access control system, he prevailed that his access control system was different from the prior art.
                  Somehow the Examiner, the Board, and the prosecuting patent attorney all understood what was being claimed. How is that possible?

                  I read the Aristocrat case you cited, and I can easily see how things will involve. As we’ve seen, the Federal Circuit is going to expand upon what constitutes “nonce” words so as to apply 112, 6th. Next, once applicants start putting “algorithms” into the specification, we’ll get case law declaring these algorithms aren’t sufficient enough. The more I think about it, the better chance will be the Federal Circuit will declare that what is being provided isn’t an algorithm at all.

                3. That is the precise reason it IS indefinite.

                  Let me refer you to MPEP 2173.04, the title of which is “Breadth is Not Indefiniteness.” Seriously, how long have you been around and not known this?

                  THIS is a point that I have referenced to which Random HIMSELF has noted.

                  Except, I suppose, when it is inconvenient for him.

    4. 3.4

      How would you distinguish between “a user identification module configured to control access of said one or more software application packages” and “a [placeholder] module configured to control access of said one or more software application packages”?

      You seem to have interpreted “module” to mean “program”, but isn’t there a distinction? My understanding is that a program is capable of being executed, but a module must be incorporated into a program for execution (possibly via incorporation into another module).

      Your observation that “Physical items (i.e., not just things in the computer arts) are described using functional language all the time” does not mean that functional descriptions of physical items are equivalent to functional descriptions of software. For example, a lawn mower has certain functionality, but it is not defined solely by that functionality (at least outside of patent law). One can mow a lawn using a weed whacker, but that doesn’t make them interchangeable. A remote control contains batteries, but you wouldn’t call it a container. For physical objects, you generally don’t have to determine how they work in order to determine what they are. Software is entirely defined by its function.

      “Those skilled in the art have exceedingly little uncertainty as to what constitutes ‘a user identification module configured to control access of said one or more software application packages.’” There are lots of things that a PHOSITA can do, but it doesn’t necessarily follow that patentees are allowed to describe their claims at arbitrary levels of generality.

      Seriously. Instead of pretending that there are no distinctions between physical objects and software functionality, try to argue why the distinctions shouldn’t matter.

      1. 3.4.1

        Seriously. Instead of pretending that there are no distinctions between physical objects and software functionality, try to argue why the distinctions shouldn’t matter.

        Not sure what point you are trying to make.

        Are you implying that software is not real? That it does not exist as a physical item?

      2. 3.4.2

        How would you distinguish between “a user identification module configured to control access of said one or more software application packages” and “a [placeholder] module configured to control access of said one or more software application packages”?
        It may or may not be distinguishable. Does the [placeholder] module use an identification of the user? If yes, then not distinguishable. If no, then distinguishable.

        For physical objects, you generally don’t have to determine how they work in order to determine what they are.
        Why is that relevant? If I showed you just a radiator, and you’ve never seen one before, would you know what it is and what it does? If I showed you just a remote control (and nothing else) and you’ve never seen one before, would you understand what it it and what it does? If I showed you a resistor and you’ve never seen one before, would you know what it is and what it does?

        Software is entirely defined by its function.
        You do not appear to be familiar with the art because that statement is unquestionably inaccurate. Software is oftentimes claimed both functionally and with reference to structure (hardware).

        There are lots of things that a PHOSITA can do, but it doesn’t necessarily follow that patentees are allowed to describe their claims at arbitrary levels of generality.
        Do you write claims for a living? What is a switch? What is a light? What is a connector? A switch, a light, and a connector are all fairly-common structural terms (respectively contained in claims of at least 370K, 618K, and 211K issued US patents). What is the level of generality of these claim terms? I can guarantee you that each the scope of those terms encompass wildly disparate structure. Should claims that include these terms be deemed indefinite?

        There is always generality in claim language. Claims are not blueprints. Moreover, if generality didn’t exist, it would exceptionally difficult to obtain claim language that could reasonably be infringed. It doesn’t take a genius to see why the law is evolving in this manner — make the claims so narrow and detailed that they cannot be reasonably infringed.

        Instead of pretending that there are no distinctions between physical objects and software functionality, try to argue why the distinctions shouldn’t matter.
        In view of “reasonable certainty” standard of Nautilus, why should these so-called “distinctions between physical objects and software functionality” matter? Nautilus didn’t set forth different standards for the computer arts versus non-computer arts.

        They only matter because certain people/entities are opposed to computer-implemented inventions and will use these so-called distinctions as an excuse for their desired result. I have spent a lot of time in both the computer arts and the non-computer arts. One problem with the criticisms leveled at patents/claims in the computer arts is that these same criticisms can also be leveled at patents/claims in the non-computer arts. American Axle is a great example of how this works.

        1. 3.4.2.1

          Here is my understanding of your position. You believe that, for software module claim limitations, that it is (or should be) sufficient to describe software modules in terms of function to encompass all ways of implementing that function, as opposed to a specific algorithm for implementing that function. I disagree, but my point is much narrower. I am specifically challenging your implied assertion that functional naming of physical objects justifies treating software modules in the same way.

          Regarding User Indication Module vs. [Placeholder], I was asking if there is a semantic distinction. If not, the term “User Indication Module” does not convey structure and is defined solely by the function it performs (and possibly modularity).

          For physical objects, you generally don’t have to determine how they work in order to determine what they are.
          Why is that relevant? If I showed you just a radiator, and you’ve never seen one before, would you know what it is and what it does? If I showed you just a remote control (and nothing else) and you’ve never seen one before, would you understand what it it and what it does? If I showed you a resistor and you’ve never seen one before, would you know what it is and what it does?

          I don’t see why anyone’s personal familiarity with the names of objects is relevant. Whether I or anyone knows the name of a physical object does not change the fact that the name of a physical object often conveys structure beyond the object’s purpose or primary use. Having resistance is not sufficient for something to be a resistor. One can use a screwdriver to scrape paint, but that doesn’t convert it into a paint scrapper. In contrast, you contend that it is proper to define a software module solely in terms of function. I disagree, but the problem isn’t how the software module is named. The problem is that claiming a software module in terms of function is that this is equivalent to claiming the function itself. Why is software module that adds number different from just adding numbers?

          Software is entirely defined by its function.
          You do not appear to be familiar with the art because that statement is unquestionably inaccurate. Software is oftentimes claimed both functionally and with reference to structure (hardware).”

          I said “defined” not “claimed.” Adding hardware to a software claim does not change its nature. Unless there is some significance to how the software and hardware interact, this is just drafting. For example, if the claim recites software stored on a readable media, but any readable media will do and how it is stored doesn’t matter, it is still is just a software claim. For a physical object, this is equivalent to adding “comprised of matter” as a limitation. Moreover, the topic is patentability itself. The way that claims have been drafted in the past doesn’t change their patentability or lack thereof.

          Regarding Nautilus, I read your post as covering many discrete topics. I was challenging your assertion about the structural significance of module–not the existing state of the law. However, you are the one claiming that the distinctions between software and physical objects don’t matter. I’m illustrating that you failed, but I’m not trying to prove the converse.

          1. 3.4.2.1.1

            One can use a screwdriver to scrape paint, but that doesn’t convert it into a paint scrapper.
            A screwdriver can make a great paint scrapper in the right situation. What you’ve done is shown how structural terms (that are actually functional in nature) have expansive scope. The term “connector” is a great one. You’ll find more variations of connectors in the wild than you will with user identification modules. Should the Federal Circuit declare a connector to be “nonce” word?

            The problem is that claiming a software module in terms of function is that this is equivalent to claiming the function itself.
            What’s the problem when the function is well known and the things that perform the function are also well known to those skilled in the art. Is the scope of that particular language “reasonably certain”?

            Let me refer you to MPEP 2173.04, the title of which is “Breadth is Not Indefiniteness.” Just because some term (whether it is described functionally or not, and again structural terms are oftentimes verbs/functions that have been repurposed as nouns) is broad doesn’t mean it is indefinite. I can all but guarantee you that Samsung, the judge in that case, and the Federal Circuit all knew precisely what was meant by “a user identification module configured to control access of said one or more software application packages.” As such, all the Federal Circuit is doing is elevating form over substance.

            Why is software module that adds number different from just adding numbers?
            Does it matter? And if it does, in what context?

            I was challenging your assertion about the structural significance of module–not the existing state of the law.
            And I’m asking you (and/or everybody else) whether the term is indefinite — i.e., how the Federal Circuit invalidated the claim. Using the Nautilus standard, is the claim indefinite? Would one having skill in the art have reasonable certainty as to the scope of the term? Referring to the case law cited in MPEP 2173.04, having a wide scope doesn’t make a claim term indefinite.

  10. 2

    Nothing in the text or grammar of 112 Para 6 ever required particular language. That was a fantasy of patent drafters and the for-too-long-completely-irrational federal circuit. While the court’s current interpretive logic is an improvement, it still gets the focus wrong. The operative question in the statute isn’t whether the claim recites a “nonce” word at all; it’s whether the claim recites a limitation as “a means or step for performing a specified function . . . .” Here the claim does, as it recites “a user identification module configured to . . . .” “Means” in the statute does not mean “meaningless word,” in fact, a means for performing a function could be anything, even something definite and specific. And there’s no “trick” to this either. MPF claiming was not intended to allow patentees to avoid disclosing the structure of their inventions, it was just intended to allow them to do the disclosing in the specification rather than the claims. Used properly, it works perfectly well.

    1. 2.1

      It seems to me that the operative question should be whether there is “the recital of structure, material, or acts in support thereof”, where “structure, material, or acts” are only found if there are sufficient structure, material, or acts.

      1. 2.1.1

        That is the relevant question, per Williamson.

        ” § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to recite sufficiently definite structure ***or else recites “function without reciting sufficient structure for performing that function.***

        Its odd to me how much the first prong of that test is invoked, and not the second prong (everything following the “or else.”) It is very explicitly an or. Reciting definite structure is not sufficient if it is not sufficient structure for performing that function.

        1. 2.1.1.1

          It seems like you are using the “or” as an “and” if you want both the before and the after.

          1. 2.1.1.1.1

            112(f) is invoked if either the first or the second clause is met.

            If you recite definite structure(“processor”) but the structure is not sufficient for performing the claimed function, you still invoke 112(f) under the second prong of the test.

            1. 2.1.1.1.1.1

              Ah, I got it – thanks.

              Funny thing though, this appears to turn the optional (and affirmative) CHOICE into a an apparent mandatory type of thing.

              Don’t you think that any such reading of a deliberately written option indicates an over reach and MISreading?

              1. 2.1.1.1.1.1.1

                Its optional in the same way that I can optionally take either I-93 or route 1 to work. The way I invoke the option to take I-93 is by getting on the entrance ramp for I-93, rather than by getting on the ramp to Route 1.

                The way 112(f) is optionally invoked is by drafting claims that recite function but not sufficient structure. The drafter always had the option to draft a claim reciting structure, but took the option not to.

        2. 2.1.1.2

          It is exceedingly odd.

          However, I think you can blame eligibility law. Long-overdue clarity around functional claiming has been pushed off by the mess that is eligibility law. Absent the ability to simply allege that a claim is directed to an abstract idea, I think that challengers would raise the issue much more often.

          1. 2.1.1.2.1

            “I think you can blame eligibility law. Long-overdue clarity around functional claiming has been pushed off by the mess that is eligibility law.”

            What nonsense. Congress was hardly chomping at the bit to clarify functional claiming before SCOTUS made a wreck of eligibility. Note the pained screeching in recent years from the suggestion that 101 fixes be traded for modifications to functional claiming.

            1. 2.1.1.2.1.1

              Actually quite the opposite, as Congress was acting in the opposite direction of the Supreme Court in its Act of 1952.

              This was in regards to BOTH use of terms sounding in function AND items that the Court did not feel survived their ever-flowing Gist of the Invention view on eligibility.

            2. 2.1.1.2.1.2

              I was not referring to Congress. I was referring to development in the courts, and patent challengers (and examiners) being more likely to bring legitimate challenges to functional claiming under 112 if 101 is not available. For example, prior to Alice, the solicitor’s office at the PTO appeared to be making a big push to clamp down on functional claiming.

              Absent these challenges, the Fed. Cir. has no vehicle to provide clarity regarding functional claiming.

              1. 2.1.1.2.1.2.1

                What does “provide clarity regarding functional claiming” mean?

                Are you presuming the conclusion (lack of clarity)?

                Are you ignoring the point that breadth is not indefiniteness?

                You seem to be jumping ahead to some type of Desired Ends, and (seemingly) making justification for the lack of PROPER means to reach a presumed conclusion.

                I “get” that you have been diligent in providing case citations, and as I have mentioned, I do find those of value; but your penchant for for only that level of effort shows that you are not taking those decisions and applying any critical reasoning as to the points of discussion (whether those decisions stand up to scrutiny).

                You have pointed out some lovely trees.
                Isn’t about time you notice the forest?

    2. 2.2

      MPF claiming was not intended to allow patentees to avoid disclosing the structure of their inventions, it was just intended to allow them to do the disclosing in the specification rather than the claims.

      This ^

      I can’t tell you how many people think you can validly claim an invention that is little more than a series of functional results.

      1. 2.2.1

        Aren’t you the one that showed that the patent office itself flatly stated that there is no “must be claimed in terms of structure” awhile back?

        1. 2.2.1.1

          Aren’t you the one that showed that the patent office itself flatly stated that there is no “must be claimed in terms of structure” awhile back?

          You can claim however you want. Whether the scope is patentable because it meets 112a/b is a different question.

          1. 2.2.1.1.1

            Nice deflection, being as the point that YOU shared then speaks directly against what you are trying to speak now.

            1. 2.2.1.1.1.1

              …and Random (yet again) fails to come back and be on point — because being on point here shows his own inconsistencies.

          2. 2.2.1.1.2

            Right. 112 6 explains that claims aren’t invalid just because they claim functionality and how to interpret such claims. IMO, it’s only been treated as magical because patent plaintiffs have a penchanct for ignoring the second clause, and defendants want to argue that no amount of disclosure is sufficient.

  11. 1

    1) “module” is used in describing software projects. See elance.com for examples. “Module” has a very definite meaning in computer science and conveys structure. The CAFC is telling us the Sun revolves around the Earth.

    2) “a user identification module configured to control access of said one or more software application packages” supposed has no structure, but J. Moore even concedes that one skilled in the art at the time of the application would understand how to build this module. So, according to this opinion every single thing in your claim must be enabled within the four corners of your specification or your claims are invalid.

    Just another foul opinion by a court that continues to practice judicial activism and continues to ignore how technical terms and function terms in the information processing arts are used.

    Again and again, academic books say explicitly that functional terms are meant to capture the known solutions.

    1. 1.1

      And they have removed the one skilled in the art part of interpreting the claims.

      Just disgusting.

      1. 1.1.1

        Your basic point seems to be that the claims here should have been found valid because a PHOSITA would have understood how to build the claimed “module.” But that’s simply not the law, and that argument has repeatedly been criticized as conflating enablement with written description, two separate requirements that must both be satisfied for a claim to be valid.

        In the context of 112(6), the statute requires actual disclosure in the specification of a corresponding structure; that’s consistently been described as the “quid pro quo” of means-function claiming under that section. It’s thus been the law for more than a decade that a patentee cannot avoid disclosing adequate structure in its specification by arguing that “a person of skill in the art could devise some means to carry out the recited function.” Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385 (Fed.Cir.2009).

        Accordingly, even if a skilled artisan could have built the claimed “user identification module” without any accompanying written description, that will not save the claim if the specification is completely devoid a sufficient structure/algorithm for carrying out the claimed function. This argument has been so thoroughly rejected that litigants stopped making it years ago, and when made today, the Federal Circuit doesn’t even bother to directly address it.

        1. 1.1.1.1

          You are assuming that labeling the step in the method 112(6) is correct, and it certainly is not.

          The 112(6) contention rests on ignoring the person skilled in the art.

          And I could do what Moore just did to almost any issued claim.

          Did you remember to put in a written description of a nail?

        2. 1.1.1.2

          You get it?

          You only get no structure if you ignore a person skilled in the art…

          Get it?

          And the holding that “module” conveys no structure to a person skilled in the art is absurd. Just look at any site where software is bid on for making. The term “module” has a very definite meaning and it conveys meaning to me and I am a person skilled in the art of computer science.

          1. 1.1.1.2.1

            It is irrelevant whether the word “module” itself has some definite “meaning,” the question is whether it connotes definite structure.

            As the Williamson court recognized, the problem with “module” is that it can be used to describe hardware, software, or any conceivable combination of hardware and software. And that’s what makes it no different from “means.” Unless the patent specification reigns in how a “module” is structured (and few actually do and this one apparently didn’t), the term lacks any discernable structural boundary. You may as well just say “computer stuff,” and it would basically have the same meaning as module.

            This is arguably what makes “module” different from terms like “code,” “program,” or “circuitry,” as those terms at least try to place a flag on a particular side of the hardware-software divide, and thus, are more structurally definite.

            1. 1.1.1.2.1.1

              If the spec includes ASIC and (typically) boilerplate as to the equivalency (note, this is not the same as “exactly equal”), then would you be ‘ok’ ?

    2. 1.2

      I actually take your point well, and my only response is that I think it’s due to the weird no-man’s land that code has been assigned relative to “structure.” If code is not structure, but some “other thing”, then it makes sense for the “other thing” not to satisfy the 112(f) requirement even if it is well recognized. I’d also agree that this is a silly fiction that the CAFC operates under.

      With respect to “functional terms are meant to capture the known solutions”, I also agree! While they capture, they do not describe, which shows their pernicious intent and problematic nature under 112.

      1. 1.2.1

        Why would you think that they do not describe?

        (keeping in mind what HAS been stated to serve as structure)

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