Non-Transitory Innovation?

The (revised) chart above shows the percentage of issued utility patents whose claims include at least one reference to the term non-transitory.

The chart does not reflect any kind of innovation transformation.  Rather, in a February 2010 memo, PTO Dir. Kappos announced that claims directed toward information stored in computer readable memory would be rejected as ineligible under Section 101.

   The USPTO recognizes that applicants may have claims directed to computer readable media that cover signals per se, which the USPTO must reject under 35 U.S.C. § 101 as covering both non-statutory subject matter and statutory subject matter.  In an effort to assist the patent community in overcoming a rejection or potential rejection under 35 U.S.C. § 101 in this situation, the USPTO suggests the following approach.  A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation "non-transitory" to the claim.  Cf.  Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation "non-human" to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. § 101).  Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure.  See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).

Note on the data:

  • Limited to only US utility patents;
  • Limited to only look at independent claims;
  • Search included “non transitory”; “non-transitory” and “nontransitory”.

In the vast majority of cases, only one of the independent claims uses the non-transitory language.  97% of the patents included at least one additional independent claim that does not use the language.  Are those claims directed to code-stored-on-a-disk valuable and important?

85 thoughts on “Non-Transitory Innovation?

  1. 7

    A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation “non-transitory” to the claim. Cf. Animals – Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation “non-human” to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. § 101). Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure.

    Nobody’s gonna point out that Kappos doesn’t know how new matter works?

    1. 7.1

      And just to be clear, it cannot be that it is a typo that meant to say “the broadest reasonable interpretation relies on the ordinary and customary meaning that EXcludes signals per se, because that would be statutory without an amendment (and conflict with the first sentence).

      1. 7.1.1

        While we are talking about claim construction, let’s not forget that the broadest, REASONBLE interpretation of the term “storage” (i.e., as in “storage medium”) by those skilled in the art does not include transitory embodiments (e.g., signals). However, that didn’t stop the Board in Ex parte Mewherter from making that finding.

    2. 7.2

      Random, your brain just doesn’t seem to operate properly.

      Read what Kappos wrote through the eyes of a person of ordinary skill and there is no new matter. And the case law supports this.

      1. 7.2.1

        I’ll give you a hint – “even when the specification is silent” admits the rejection. If the specification does not articulate a non-transitory group, you can’t claim a non-transitory group. For the benefit of any new practicioners and/or Kapposi who are reading: You can only claim what your specification discloses.

        Disclosing a genus discloses the genus. Disclosing the genus does not disclose the species. If it were otherwise, no application would ever abandon. Whenever an examiner cited prior art they would just amend the claim to claim all the embodiments within the genus that aren’t the prior art example.

        Let’s do a strict example of what Kappos says, replacing non-transitory, signal and storage medium with the analogous terms of apple, orange and fruit:

        A claim drawn to FRUIT that covers both ORANGES and APPLES embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by claiming APPLES. Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes ORANGES. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support an APPLE embodiment because an ORANGE is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure.

        Now ignoring the fact that “the ordinary and customary meaning [of FRUIT] includes ORANGES” has no bearing on whether a claim to APPLES is new matter (as in, that statement is true but totally irrelevant), do you think that your specification can say FRUIT and you can narrow it to APPLES when your specification is silent on APPLES? FRUIT is not the same scope as APPLES, so the word FRUIT does not give support for the word APPLES, and APPLES is not mentioned at all, so it can’t be that the specification supports APPLES. The only way to support APPLES is to mention APPLES, or to use another word which means APPLES, but it’s clear that FRUIT doesn’t mean APPLES – that’s why you’d want to change the wording to begin with, because FRUIT is a different thing that includes rejectionably-more subject matter than APPLES.

        If mentioning FRUIT gave support for APPLES, then no claim would ever be finally rejected under 103, because whenever someone claimed the genus of FRUIT and the Examiner shows them an ORANGE, they would just amend to claim an APPLE, even though the specification was silent on it. (And of course, then the apple would become the next fruit, just one genus down).

        For example, have a specification that uses the word food. You claim food, so I reject with an orange. You amend to cooked food, so I show a steak. You amend to cooked food with bread, so I show a sandwich…blah blah and 10 rounds of prosecution later you’re claiming a philly cheese steak with provolone on a garlic bun with seasoned fries and ranch dipping sauce, meanwhile the only thing your specification says is “food” because according to Kappos, since the “ordinary and customary meaning of food” would circumscribe that meal (and actually what the text says is that because the ordinary meaning would circumscribe OTHER meals), it’s not new matter. That’s not how disclosure works. Disclosing a genus does not give you support for all things that lie within the genus.

        And the case law supports this.

        The case law absolutely does not support this. You might have figured that out by his citation being to a 1987 publication of THE OFFICE’S OWN WORK on an entirely different issue. He’s literally saying its okay to do this because I say so. Meanwhile his MPEP says the exact opposite:

        New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method.

        You cannot amend to be more specific than your disclosure even when everyone would agree that the claim would fall within the genus disclosure of your specification. You can only disclose non-transitory when you posit a non-transitory group just like you can only claim a % value when you posit the percentage value.

        1. 7.2.1.1

          I actually think Kappos is pretty smart, so I say the above a little tongue-in-cheek. I think he knew he couldn’t do what he did but he had to promulgate rules and that was probably the best way to keep the peasants from grabbing pitchforks. It was a couple years of invalid scopes that went away after applicants started actually including the words “non-transitory” in their specs.

        2. 7.2.1.2

          I don’t think you’re right here. The question with written description is whether One Skilled In The Art recognizes possession, not whether the specification expressly discloses the material.

          The fact that the entity which considers possession is skilled and not some blank slate means that the knowledge of OSITA is allowed to color the impression given by the disclosure.

          Say we have an application involving computer design dated to around 2004. The specification says that in some embodiments, the processor used is a pentium II.

          Say there’s a new limitation that limits the processor used to a Pentium II MMX 400. Is there a written description issue? If you answer before reflecting on what OSITA takes from the disclosure, you are wrong. I think that OSITA, seeing that the inventor knew of pentium IIs, would reasonably conclude that the inventor had possession of all thw commercial variants of that chipset even though they weren’t expressly disclosed. Maybe you disagree on that specific issue, but the point is that we have to consider what OSITA would think.

          Similarly, I think you’d be hard pressed to make an argument that OSITA would conclude that someone who discloses a computer after 2000 has no possession of non-transitory memory.

          Since I’m close to agreeing with one of our bridge-dwellers, I’ll note that the author of 7.2 has said on this board in the past that he enjoys the smell of his own vapor discharges. I have cited evidence evidence this before, but will never do so again. And if he says otherwise, he is defaming me.

          1. 7.2.1.2.1

            I think that OSITA, seeing that the inventor knew of pentium IIs, would reasonably conclude that the inventor had possession of all thw commercial variants of that chipset even though they weren’t expressly disclosed.

            New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus). – MPEP 2163

            (See how I keenly was able to cite actual law for my position!) Kappos posits the spec is silent on the “non-transitory” limitation, so it is not explicitly supported by the as-filed disclosure. Then the question becomes whether “computer readable medium” inherently supports the term “non-transitory” and clearly it does not, because if CRM meant non-transitory, CRM wouldn’t be subject to a 101 rejection while non-transitory CRM was not. Genuses never inherently support their species, that’s why the species exists as a distinct species (and why you have to cite some additional thing when applicant amends to further limit a claim element, you have to account for the new language somehow) – because there exist other species within the genus that have distinct characteristics. And here the different species makes a legal difference, and you just want to ignore that.

            Again, the genus of Fruit is not the same as the species of Apple. Fruit doesn’t mean Apple, that’s why they’re different words. Moreover, they’re legally relevant distinctive words because Fruit is subject to a 101 rejection and Apple is not. The fact that everyone knows Apple is a Fruit isn’t relevant (and, by the way, not the justification Kappos gave). Speculating that because Fruit was mentioned and therefore they intended a system that used only Apples when the specification was silent on Apples just ignores the examiners job. Why not do it on the 103 side as well? Sure you said [genus] and I showed you [subgenus] but I’ll let you amend to claim [different subgenus] because everyone knows subgenuses are parts of genuses. Just let them amend until they find a nonobvious scope and ignore the specification altogether. Actually, why bother examining at all? Just cite the relevant CPC class and say “The claims are construed to not cover any of the embodiments of any references in this class” and call it a day.

            The question with written description is whether One Skilled In The Art recognizes possession, not whether the specification expressly discloses the material.

            The question is whether one skilled in the art would recognize THE INVENTOR to be in possession of the CLAIMED invention. It’s not a question of everything the art knows. It’s not even a question of everything the inventor knows. It’s a question of whether the inventor posited using the element that you are only speculating that he knows of in connection with the other elements claimed (i.e. in THIS invention). You’re piling speculation on top of speculation.

            The best (and only in most cases) evidence of whether the inventor knows anything and the only evidence of whether he knows the parts in concert is the specification.

            It makes as much sense to say that “because you disclosed a pentium 2, I know you posited a specific type of pentium 2” as it does to say that “because I cited a generic processor, that renders the pentium 2 class or the pentium 2 MMX 400 species of processors obvious”.

            And why stop there? Here’s prior art that says “software.” Because the genus of software is known, and “I think that OSITA, seeing that the inventor knew of [software], would reasonably conclude that all thw [possible] variants of that [software] [are obvious] even though they weren’t expressly disclosed.” I could finish my yearly docket in about 2 days with the same references cited to everything. Software is a function of logic and therefore completely predictable, processors exist in the world and are at least subject to natural law and are only extremely predictable. Why does the generic processor suggest the specific processor but the generic software doesn’t suggest the specific software when software obeys more predictable laws than the processor?

            Maybe you disagree on that specific issue, but the point is that we have to consider what OSITA would think.

            To use the % MPEP example again, I have a compound made up of A, B, and C. Even a lay person knows that a compound made up of A, B and C means that A B and C must each exist in non-zero amounts and total 100%. Because even a lay person understands basic math, they know that A could be 20, B could be 40, and C could be 40, or that any of those numbers could vary in any amount for hundreds of possibilities. That does not change the fact that it is mere speculation that THIS INVENTOR posited any particular claimed percentages unless the specification discloses those percentages.

            The whole system breaks down if you don’t hold the applicant to this, because otherwise the applicant will just state that obviously he knew about [distinguishing feature X] because that’s within the prior art, and before you know it the claim is 90% wholly undisclosed language as evasions of your cited prior art rejection rather than the actual words written down at the time of filing. You don’t get to submit a blank sheet to hold a filing date and then fill it in with everything the art knew at the time of my filing. That lets you invent at the time of examination rather than prior to filing.

            1. 7.2.1.2.1.1

              See how I keenly was able to cite actual law for my position!

              Naturally, I appreciate folks citing authority for their arguments. It is more interesting than much of the ipse dixit bloviation that gets flung around these parts.

              As it happens, however, compliance with the written description requirement is a question of fact, not law. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The case law is replete with admonitions that written description is a very fact-specific inquiry. Id. at 1562.

              It is not clear, therefore, that the case law that you cite is really applicable to the point that Random is making. From where I am standing, Random appears to have the better argument on this fact-specific point.

              1. 7.2.1.2.1.1.1

                It is not clear, therefore, that the case law that you cite is really applicable to the point that Random is making. From where I am standing, Random appears to have the better argument on this fact-specific point.

                Sorry, complete brain fart. The above should have read:

                It is not clear, therefore, that the case law that you cite is really applicable to the point that RandomBen is making. From where I am standing, RandomBen appears to have the better argument on this fact-specific point.

              2. 7.2.1.2.1.1.2

                As it happens, however, compliance with the written description requirement is a question of fact, not law.

                It is not clear, therefore, that the case law that you cite is really applicable to the point that Random is making. From where I am standing, Random appears to have the better argument on this fact-specific point.

                I’m Random, so I assume you mean it’s not relevant to the point Ben is making.

                Lets separate out two things here. Kappos’ claim is that it would not be new matter. New matter does have a fact component, but is largely a matter of law: New matter is adding to the specification. The only times I know when you’re not adding to the specification are 1) rephrasing, 2) inherency. As a legal matter, adding non-transitory to a non-transitory-silent spec is new matter. It’s not rephrasing CRM as the point is to draw a different legally permissible scope, and its not inherent, for the same reason. So the issue I originally complained of can be settled from a legal standpoint. Is there any citation that says otherwise?

                Then there’s the question of whether the claim lacks written description if the office ignored the new matter objection. I can cite for you an absolute statement that when a claim contains new matter it should be rejected under written description if you’d like me to find it. But I do agree that there are fact questions in there, I simply disagree that you couldn’t have a legal holding that would cover the situation discussed (specification discloses what would be non-transitory embodiments, but is silent as to a non-transitory grouping conception). I think that’s a categorical holding – you can’t generate a claim limitation to a group that your specification is silent about.

                Again we’re going back to basic logic here – either term A means the same thing as term B, which would not be new matter because it is rephrasing, or it would be a different term. A different term is new matter – it’s a term that was not in the specification before and is in there now. New matter in a claim is a written description rejection. There can be arguments about whether expressed species support an expressed genus (a fact question for WD), there can be arguments about whether expressed term a means claim term/scope b, or whether scope/term b is inherent from term a (also fact questions for both WD and new matter) but I don’t think there is an argument that says that a scope that the specification does not posit nevertheless is not subject to a WD rejection because the PHOSITA knew something. The PHOSITA is simply the one evaluating, but the standard is what the inventor posited, and the only evidence of that (in almost all cases) is the specification.

                I assert that when the specification is silent, and the amendment makes a legally relevant change to the scope, you have a categorical WD problem, and I know of no cases to the contrary. Can you cite a case when new matter was not a written description rejection?

                Regardless, my original claim was chastising the statement that it was new matter. Ben’s argument to whether WD is violated is a related issue, but not the same. This is not the situation where the specification discloses a hard disk as an example of a CRM and the claim is to a hard disk or alternatively to a CRM (which you clearly could do). This is not the situation where the specification discloses a pentium 2 processor and the claim is to a specific pentium 2 processor type (although I think it’s fairly obvious you can’t do that). This is only a situation where the specification did not posit a grouping that included non-transitory means and also excluded signals, and yet the claim makes that distinction. All specifications that include a single species and its genus would be known by the art to include undescribed species that lie within the genus (every genus includes at least two species, that’s what makes it a genus). That doesn’t give you license to add the unwritten species or sub-genus grouping to your specification anywhere else, so why are you allowed to add it here?

                1. Lets separate out two things here. Kappos’ claim is that it would not be new matter… Ben’s argument to whether WD is violated is a related issue, but not the same.

                  Sorry for the confusion. I was responding only to your response to Ben’s pentimento hypo. I agree with your conclusion about “non-transitory” being new matter for most of those claims. I meant only that I think that Ben has the stronger argument on the pentium example.

                  Precisely because written description is a question of fact, not law, you really cannot get by with sweeping generalizations like “[y]ou cannot amend to be more specific than your disclosure even when everyone would agree that the claim would fall within the genus disclosure of your specification.” Sometimes one cannot do so, but sometimes one can. The inquiry in each attempted amendment is going to be very context-dependent. Ben’s hypo looks like a convincing example of a context in which one could—in conformity with §112—make such an amendment.

                2. The quoted statement indicates that “[a] claim drawn to [] a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim,” and that “[s]uch an amendment would typically not raise the issue of new matter.”

                  35 U.S.C. 132 provides that “[n]o amendment shall introduce new matter into the disclosure of the invention.” “Disclosure is that which is taught, not that which is claimed.” In re Rasmussen, 650 F.2d 1212, 1214 (C.C.P.A. 1981). “The proper basis for rejection of a claim amended to recite elements thought to be without support in the original disclosure, therefore, is § 112, first paragraph, not § 132.” Id.

                  With respect to your suggestion that “the question becomes whether ‘computer readable medium’ inherently supports the term ‘non-transitory’,” I think that this leap looks to treat the question as a legal question with the same answer every time the phrase “computer readable medium” is used, when in reality you have already recognized that it is a fact question involving, in your words, considering “whether one skilled in the art would recognize THE INVENTOR to be in possession of the CLAIMED invention”.

                  Indeed, “[a] claim will not be invalidated on section 112 grounds simply because the embodiments of the specification do not contain examples explicitly covering the full scope of the claim language,” and “it is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention.” Lizardtech, Inc. v. Earth Resource Mapping, 424 F.3d 1336, 1345 (Fed. Cir. 2005).

                3. As J. Doerre brushes up to (without being explicit), At the point in time of the VAST number of these cases are being treated, it is with NO doubt well understood that the ENTIRE “transitory” versus “non-transitory” issue was a monstrous error of the court, and that NO rational person, let alone the cold juristic person of a Person Having Ordinary Skill In The Art would not recognize that the mode of one and the mode of the other were equally applicable – and equally possessed.

                  Trying to play the semantics here is beyond pedantic.

                  (which is why the real issue is the underlying ANTI-FACTUAL nature of the in re Nuitjen decision itself.)

                4. Trying to play the semantics here is beyond pedantic.

                  You realize its Kappos playing semantics right? Its not his function to overrule the CAFC.

                5. You realize, Random, that you are assuming your own conclusion, right?

                  Kappos is not overruling anything by noting a fundamental factual nature of equivalency (and spare the semantics by noting right from the start that equivalency does not mean “exactly the same as”) as any Person Having Ordinary Skill In The Art would recognize.

                  This is just NOT a matter for your ill-fitted “genus/species” chem-like analogy.

                  It’s not the Director’s “problem” that merely stating a matter of fact has the appearance of overruling a legal decision — and merely points out how anti-factual that decision is.

            2. 7.2.1.2.1.2

              I suspect this post is a good deal shorter than yours, and I hope you won’t take that as being dismissive. I wrote more responses to portions of your post, but then decided that they distract from what seems like the key issue.

              “See how I keenly was able to cite actual law for my position!”

              I don’t see it actually. “Support” is distinct from “disclose.” I agree that new, unsupported limitations violate WD. I do not agree that new, undisclosed limitations per se violate WD.

              Look at the MPEP’s description of In re Smith which you quoted: “an adequate description of a genus may not support claims to a subgenus.” Your own reference suggests that in some cases, a genus may support subgenus limitations.

              It appears to me than you are asserting an almost ipsis verbis standard for the written description requirement. If that’s correct, what supports that proposition?

              I am not saying that the knowledge of OSITA is imported into the specification. I am saying the knowledge of OSITA colors the impression given by the specification. I’ll admit there is an element of speculation in this. How is that inconsistent with the case law? Does it require OSITA to have conclusive proof of possession? Or does it merely require a reasonable conclusion of possession on the part of OSITA?

              If applicant discloses a car in 2000, do you really think OSITA wouldn’t recognize them as possessing “brakes”? They might not recognize the applicant as possessing a very specific type of brake, but I struggle to see how OSITA would think applicant didn’t have possession of brakes in general from his car disclosure. Only a blank slate entity, totally naive about the world would come to that conclusion. And that is clearly not the perspective from which we are supposed to evaluate possession.

              1. 7.2.1.2.1.2.1

                I will try to be equally brief but not dismissive:

                1. The original statement is a statement that it would not be new matter. You’re using the WD test. They are not the same thing. New matter is adding anything to the specification. The Kappos hypothetical is that the spec is silent as to the non-transitory grouping. The words non-transitory are therefore new matter. The only examples I know of that are not new matter are inherency and rephrasing, see MPEP 2163.07. Are there others where this would apply?

                2. New Matter is a wd rejection. “If new subject matter is added to the disclosure, whether it be in the abstract, the specification, or the drawings, the examiner should object to the introduction of new matter under 35 U.S.C. 132 or 251 as appropriate, and require applicant to cancel the new matter. If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).” – mpep 2163.06.

                3. In re Smith is a case where patentee was trying to get the benefit of an earlier file when the CIP explicitly disclosed the claimed subgenus. The parent disclosed the genus and a species but not the claimed subgenus (exact same situation as here – disclosing a hard disk and a CRM but not the subgenus of non-transitory), and the court did not award priority. It is true that it said it “may not” be sufficient, but that’s because it was changing from the prior rule that it was sufficient. I’ve seen no examples since that would suggest that species + genus is sufficient for subgenus since.

                4. If applicant discloses a car in 2000, do you really think OSITA wouldn’t recognize them as possessing “brakes”? They might not recognize the applicant as possessing a very specific type of brake, but I struggle to see how OSITA would think applicant didn’t have possession of brakes in general from his car disclosure.

                I think whether disclosing a car discloses brakes is a matter of whether brakes are inherent in the concept of car. But that’s not this situation. Brakes is not a species of car. Second, your hypo ignores that the question is not whether an element is posited, but whether the invention is posited. You’re trying to ask whether I believe the guy possessed an element, but the question is whether the guy possessed the entirety of the scope, which includes the interrelationship of the element with the other parts of the invention. When someone states that the specific type of something is irrelevant (i.e. you can use any CRM, or you can use any brakes) that is the opposite of trying to draw some sort of principled or fine-grained grouping. Its especially suspect when it sure seems like the reason a change is being made isn’t because the inventor posited something when it was filed, but because postdating legal changes made what he did posit unprotectable.

                An analogous situation would be I invent using a car to tow a boat. I explicitly state in my specification that the car can be any type of car, examples of which include a firebird, mustang, or corvette. Then I write a claim that says “I claim towing a boat with any car that isn’t a mustang.” I could have claimed towing the car with any car, and that would have been posited. I could have claimed towing it with a firebird or corvette, and that would have been posited. But I didn’t posit the grouping of “any car that isn’t a mustang” for towing my boat. The question is not whether the art knew of, or even if I knew of “all non-mustang cars,” the question is whether I posited towing a boat using any available car except for a mustang. That is (1) speculation that I would draw that group and (2) belied by the fact that I said I could use any car for the towing. The only reason the group is being drawn AT ALL is because of what happened AFTER I filed my document. But that’s the most common new matter situation – trying to change the meaning of a document based on what happened during examination.

                I could also cite that Any negative limitation or exclusionary proviso must have basis in the original disclosure. mpep 2173.05(i) but I assume you’d say that it has a basis (although I can’t imagine when this rule would actually apply under your view of support). In my experience, and I assume yours as well, when applicant claims a car, and I show him a mustang, he doesn’t amend to say “wherein the car is any car but a mustang” because everyone seems to know that there’s no support for that negative limitation and its new matter. Instead he amends to say “wherein the car is a firebird or corvette” even though “any non-mustang car” is obviously a broader limitation than firebird or corvette. It seems unlikely to me that all these applicants are passing up supported, broader limitations in favor of textually-stated embodiments despite both of them being supported in the spec. Every 103 would result in functional limitations with an ever-growing list of exceptions rather than a functional limitation amended to specific means when I show them that the function has been done before.

                1. My apologies for the confusion but I am a bit unclear on what proposition you are defending or objecting to.

                  The Kappos quote seems to suggest adding “non-transitory” to a claim, but there does not seem to be any disagreement that this is a question of fact under 112 involving an evaluation of whether the disclosure “describe[s] the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application.” Lizardtech, Inc. v. Earth Resource Mapping, 424 F.3d 1336, 1345 (Fed. Cir. 2005). In some instances this will be supported, in some instances it will not, depending on what an ordinary artisan would understand from the disclosure. Do you disagree?

                  The quote from Kappos does not appear to be suggesting an amendment to the disclosure. Is someone else suggesting that and you are objecting to that?

                2. In some instances this will be supported, in some instances it will not, depending on what an ordinary artisan would understand from the disclosure. Do you disagree?

                  There’s two issues. The hypothetical is that (1) the specification discloses a CRM, (2) it is silent about non-transitory media, and (3) the specification includes at least one non-signal embodiment.

                  The first assertion is that amending CRM to non-transitory CRM “would typically not raise the issue of new matter”, and would not “because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se.”

                  New matter is matter added to the specification that is not inherent or a rephrasing of what is already in there. It’s clearly new matter, because “the specification is silent” about it, and it cannot be a rephrasing of the CRM, nor of the signal embodiment, nor of the non-signal embodiment.

                  Moreover, the reasoning has no bearing on the question. The fact that CRM is construed to include signals doesn’t mean that the word non-transitory is not new matter.

                  Then there’s the question of whether its rejectable under WD. I’d assert that (2) is in fact sufficient to fail under 112a, unless you read “silent” in the most extremely thin manner that the spec in fact disclosed the non-transitory grouping but didn’t call it that (i.e. its a rephrasing). If you claim a subgroup (here the subgroup is non-transitory CRMs) that subgroup is not supported by the group (1), nor is it supported by the inclusion of a single species of the subgroup (3). See your cited Lizardtech for the proposition that a single species does not support its genus.

                  The way to possess a non-transitory group is to posit a grouping of elements that corresponds with the non-transitory group. It is not appropriate assert that one can draw any subgroup within the group simply because they disclosed the group.

                  While I agree that in general WD requires factual inquiries, it’s not a fact question when the hypothetical is that the specification is silent. That’s kind of the only fact you need. It’s one thing if there’s language in there and you can argue about what the language meant (a fact question) but you can’t take one scope you admit isn’t it (the CRM) and two other scopes you admit isn’t it (the hard drive or the signal, by themselves) and say that it was posited to include less than one, more than another and definitely not including the third based on zero language. That’s just post-facto hindsight to try and generate a scope you want, not any plausible evidence of a scope posited at the time of filing.

                3. The quote from Kappos does not appear to be suggesting an amendment to the disclosure. Is someone else suggesting that and you are objecting to that?

                  Forgot this one – amending the claims is amending the disclosure. It’d be a new matter objection and a WD rejection if the only thing being done is adding “non-transitory” in a CRM claim.

                4. RG,

                  With respect to the indication that “[t]he first assertion is that amending CRM to non-transitory CRM,” what is being amended? A claim, or the disclosure?

                  The Iancu quote appears to reference amending a claim. This would not raise a new matter issue, but could raise a written description issue.

                  Amending the disclosure could well raise a new matter issue, but I do not believe that anyone is suggesting otherwise.

                  With respect to the indication that “[w]hile [you] agree that in general WD requires factual inquiries, it’s not a fact question when the hypothetical is that the specification is silent,” as “[t]hat’s kind of the only fact you need,” this may well be a position that you believe in, but it is not the law as it currently stands. It is always a question of fact. And the fact you need to determine is whether the disclosure “describe[s] the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application.” Lizardtech, Inc. v. Earth Resource Mapping, 424 F.3d 1336, 1345 (Fed. Cir. 2005).

                  “A claim will not be invalidated on section 112 grounds simply because the embodiments of the specification do not contain examples explicitly covering the full scope of the claim language,” and “it is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention.” Id.

                5. RG,

                  With respect to your suggestions that “amending the claims is amending the disclosure,” and that “[i]t’d be a new matter objection and a WD rejection if the only thing being done is adding ‘non-transitory’ in a CRM claim,” these statements are simply not the law. In fact, the very case you keep citing (In re Rasmussen, 650 F.2d 1212, 1214 (C.C.P.A. 1981)) is the case that explicitly articulated that these suggestions are wrong.

                  35 U.S.C. 132 provides that “[n]o amendment shall introduce new matter into the disclosure of the invention.”

                  The court in Rasmussen explicitly held, with respect to what qualifies as “the disclosure” for purposes of section 132, that “[d]isclosure is that which is taught, not that which is claimed.” In re Rasmussen, 650 F.2d 1212, 1214 (C.C.P.A. 1981). The court made clear that “[t]he proper basis for rejection of a claim amended to recite elements thought to be without support in the original disclosure, therefore, is § 112, first paragraph, not § 132.” Id.

                  The court even noted that “consideration of an original claim as evidencing support in the disclosure for later submitted claims does not warrant employment of § 132 as a basis for rejection of later submitted claims on the ground that the latter are adding new matter to the original claim portion of the disclosure,” as “[t]o so hold would render § 132 redundant in light of § 112, first paragraph.” Id. at 1214 n.5.

                  The court even went out of its way to make clear that “[p]ast opinions of this court, in cases in which a § 132 claim rejection was reviewed on a § 112 analysis, should not in future be viewed as having approved the employment of § 132 as a basis for claim rejection,” and that “such cases are overruled insofar as they approved rejection of claims under § 132.” Id. at 1215.

                6. The Iancu quote appears to reference amending a claim. This would not raise a new matter issue, but could raise a written description issue.

                  It’s amending the claim. Why would that not be a new matter issue? Amending a claim with new matter is a new matter objection as well as a WD rejection. See my other posts about the new matter standard and why this is clearly new matter, but I’ll keep discussing the WD issue here.

                  Amending the disclosure could well raise a new matter issue, but I do not believe that anyone is suggesting otherwise.

                  The claims are part of the disclosure. But if you mean amending the specification, yes that would be a new matter objection. Ben’s stance is not entirely clear, but he does not appear to agree either that it is new matter or that new matter would be a WD rejection, I’m not sure which.

                  It is always a question of fact. And the fact you need to determine is whether the disclosure “describe[s] the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application.” Lizardtech, Inc. v. Earth Resource Mapping, 424 F.3d 1336, 1345 (Fed. Cir. 2005).

                  I agree wrt the written description standard, (although you seem to misunderstand thats not the only standard in play here and not the standard Kappos discusses) it’s just that you seem to be conflating “fact question” with “impossible to make a categorical holding” but categorical holdings are made in fact patterns all the time. We’re constantly told what level of facts are sufficient for a legal holding, that’s how the law has precedential value.

                  Take this very situation. We’re not talking about inventions that differ significantly in their filing date. Nor does the underlying ubiquity of their embodiments differ (everyone knows about hard drives, signals, etc). Nor do most inventions change vis-a-vis the element at issue: Software may do different things, but all software gets stored in generally the same way by generally the same set of things. It is true the some specifications may mention more or fewer of what we know to be non-transitory media, but that’s not the hypothetical standard given. The hypothetical standard is that so long as a single non-signal example is given, a non-transitory CRM can be claimed without raising a new matter problem. So all of the relevant facts are either similar or hypothetically assumed to be the same. We can make a categorical statement about them.

                  Lizardtech, Inc. v. Earth Resource Mapping, 424 F.3d 1336, 1345 (Fed. Cir. 2005).

                  Lizardtech is just such an example of my position. There the claim was to genus of seamless DWT but the specification only disclosed the species of doing so by maintaining updated sums. The court held WD was violated – the single example did not support the genus. Now you may say “Sure, but that was on the facts of that case, dealing with DWT. These are on different facts dealing with non-transitory media.”

                  But that ignores more categorical statements in, say, Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F. 3d 1336, where the jury’s finding of adequate written description was overturned because “We held that a sufficient description of a genus instead requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can “visualize or recognize” the members of the genus.” Here, it’s unquestionable that one non-signal embodiment is insufficient on both grounds, as a hard drive is neither representative of all non-transitory media nor are they all structurally similar to it. Also just logically you can’t describe an area by using a single point.

                  Ariad also stated that “Thus, as indicated infra, that specification fails to meet the written description requirement by describing only a generic invention that it purports to claim.” But here the specification does not even MENTION the non-transitory scope claim, let alone describe it. That scope is being added as new matter, so the facts fail to meet that threshold.

                  Similarly in AbbVie Deutschland GmbH v. Janssen Biotech, Inc., 759 F. 3d 1285 the court said “One describes a plot of land by its furthest coordinates, in effect drawing a perimeter fence around it. That may be akin to the function of patent claims to particularly point out and distinctly circumscribe the outer boundaries of a claimed invention. With the written description of a genus, however, merely drawing a fence around a perceived genus is not a description of the genus. One needs to show that one has truly invented the genus, i.e., that one has conceived and described sufficient representative species encompassing the breadth of the genus.” But it is unquestionable that ONE POINT cannot be representative of a whole breadth. If a hard drive was representative of all non-transitory media, you wouldn’t need to claim a non-transitory CRM, you could just claim a hard drive. But the very reason Kappos is suggesting the NTCRM scope is because a hard drive scope would leave the applicants wanting of protection – its specifically not sufficiently representative of all the storage solutions out there.

                  Abbvie was also about a patentee that presented one species and tried to claim the whole genus, and the court upheld the jury there: “Here, the jury heard ample evidence that AbbVie’s patents only describe one type of structurally similar anti-bodies and that those antibodies are not representative of the full variety or scope of the genus.”

                  Similarly, Gentry Gallery, which Kappos cites, is a case where a claim to a couch with a console not limited by location was found invalid over the sole species disclosure of a console in the center of the couch.

                  Beyond that, I’ll just point out one more thing: Kappos statement happens to be incorrect because it is wrong. But assuming you disagree with my conclusion because you think you can’t make categorical statements about fact questions, that doesn’t make Kappos’ statement correct. It just makes it wrong for the different reason that he is also drawing categorical statements: “Such an amendment would typically not raise the issue of new matter…The limited situations in which such an amendment could raise issues of new matter occur, for example…” Under your logic, these statements can’t be made at all because you can’t have ‘typical’ statements for a fact-specific issue.

                  But I will go one step further – regardless of whether he was wrong or not, and whether he is allowed to make categorical statements or not, he ought to be able to cite to some authority for saying what he is saying. Because, with due respect to him, he’s just the director of the PTO and its not his function to get out ahead of the law. The sole example he cites to is PTO guidance about excluding humans from multicellular organisms. One would think that if you were going to guide applicants about the validity of using a single species to support a previously-undisclosed genus, you would be able to cite to, at a minimum, an example of a single species being held to support a genus anywhere, in any context (let alone maybe the computer context), to suggest it would be valid to do so here.

                  He didn’t do so. Neither did you. All both of you did was cite cases that suggest my WD conclusion is correct. Cases that are buttressed by a handful of other cases that all seem to say that while of course different fact patterns all require their own analysis, it sure seems like a single species doesn’t support a genus in whatever context it comes up in. And that’s when the genus was at least written in the original disclosure.

                7. Random,

                  These are not examples of your position.

                  You have been dwelling far too much in your “confirmation-bias” zone of only taking as “real inputs” those things that you like and that you think agree with your world view.

                8. RG,

                  I think you may have missed my post timestamped April 16, 2021 at 11:40 PM.

                  You continue to suggest that “[a]mending a claim with new matter is a new matter objection as well as a WD rejection,” but this is the position that the court specifically rejected in In re Rasmussen, 650 F.2d 1212, 1214 (C.C.P.A. 1981).

                  The Office explicitly recognizes this in the MPEP, instructing that “[i]f the examiner concludes that the claimed subject matter is not supported [described] in an application as filed, this would result in a rejection of the claim on the ground of a lack of written description … or denial of the benefit of the filing date of a previously filed application,” but “[t]he claim should not be rejected or objected to on the ground of new matter.” MPEP 2163.01.

                  I completely understand the confusion on this point because you are starting from a quote that itself conflates new matter and written description issues. The quote suggests that a claim amendment “would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se.” However, under Rasmussen, as a matter of law a claim amendment will never raise the issue of new matter.

                  What really seems to have been alleged here is that such a claim amendment will also never create a written description problem. As this is a question of fact, I am not inclined to favor any categorical rule, and I do not have any opinion on this allegation.

              2. 7.2.1.2.1.2.2

                Random’s treatment of case law often runs too far afield in attempting to treat genus/species as strictly chem-style treatments.

          2. 7.2.1.2.2

            Ben >Since I’m close to agreeing with one of our bridge-dwellers,

            Ben, you are the bridge dweller and everyone knows it.

        3. 7.2.1.3

          The fact of the matter is that the vast majority specifications that mentioned computer readable/usable mediums (or one of the great many variations thereof) already included “non-transitory” embodiments.

          Most attorneys don’t remember that the signal claims that were once claimed were a result of a suggestion made by the USPTO. In other words, it was the USPTO that originally blessed the use of signal claims.

          The Nuijten decision was another example of the Federal Circuit having a desired result and “crafting” the law to arrive at the result. At a meta level, I somewhat agree with the desired result. Remember, it is patent infringement to make or use every element of a patented claim. Consider the internet (i.e., the collection of nodes that transmit data signals back and forth). If someone sent a patented “signal” from one end of the world to another, each of the nodes involved would have made the signal and thus infringed the signal claim. To permit a claim of infringement because of that reproduction of the signal would have put a huge damper on the internet. Thus, while the Federal Circuit’s heart may have been in the right place, they botched the law getting there.

          Getting back to computer usable mediums, what had happened is that some inventive (but not-entirely-bright) patent attorneys decided that they were going to conflate computer usable mediums with signals so that they could cover both with the same claim and started writing boilerplate stating that. As a technical matter, signals are not mediums. Signals propagate over a transmission medium, but they are not mediums themselves.

          This leads to the January 25, 2010 Kappos Memo, in which the following was written:
          “The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media.”
          Again, signals aren’t media. Rather, they propagate through media. However, because some some not-very-bright attorneys miswrote some boilerplate language, the USPTO had their out to say that “computer readable medium” was more expansive than what it was.

          The next evolution of the USPTO-created mess was Ex parte Mewherter in which the USPTO, in a precedential decision (that was improperly not designated a new grounds of rejection), decided to again use some boilerplate language from not-very-bright attorneys that implied that a storage medium could be a signal. Those have ordinary skill in the art recognize a difference a storage medium, a transmission medium, and a transitory, propagating signal, per se. Remember what the meaning of “per se” from Black’s Law Dictionary is: “By itself; in itself; taken alone; by means of itself; through itself; inherently; in isolation; unconnected with other matters; simply as such; in its own natures without reference to its relation.” A signal per se is neither a storage medium nor a transmission medium.

          While the term “non-transitory” is the term blessed by the USPTO, is not the only term that can be used to get around Nuijten and Mewherter.

          The problem with “non-transitory” that it is has no art-recognized meaning. Moreover, signals are not necessarily “non-transitory.” If anybody can remember the hook from the movie “Contact” (based upon Carl Sagan’s book of the same name), an alien civilization contacts the Earth by retransmitting a signal of the opening speech of the 1936 Summer Olympics. As such, signals can be incredibly long-lived (and some of the signals we create will probably outlive the human species). So anyway, what is meant by “non-transitory”? If you want to talk about “new matter,” then adding “non-transitory” to claim language is likely new matter (and probably indefinite as well). However, this is what happens when the USPTO mucks things up (again, also helped by some not-very-bright patent attorneys).

          1. 7.2.1.3.1

            The fact of the matter is that the vast majority specifications that mentioned computer readable/usable mediums (or one of the great many variations thereof) already included “non-transitory” embodiments.

            And that’s not a problem. But it’s also not the situation Kappos is referencing.

            However, this is what happens when the USPTO mucks things up (again, also helped by some not-very-bright patent attorneys).

            Well the PTO has to follow Nuijten, and it’s not a problem to generate rules in the hopes of getting applicants to use common language. If uncommon language is used, it only increases the chance that a second Nuijten happens and creates more problems for patentees.

            I don’t think the intent behind “hey lets make this term [that we decide is non-transitory] be the term that everyone uses so that nobody’s claims get invalidated” is a problem. And obviously it creates a problem with all of the pending apps at the time, so it was inevitable that some bs would have to be spouted by someone, so I sympathize with Kappos’ action.

            Right now I see a fair amount of CRM where the spec specifically defines CRMs to not include transitory progating signals. That situation only begs for a second Nuijten to happen, because that wording is not widespread enough to completely wreck software patents if another ineligible embodiment is found. And for what? I’ve never heard of an infringement action that isn’t based on either a use case (a processor and memory or a method) or a traditional storage like a hard disk or similar storage, and I haven’t heard of any infringements that would have been pursued but-for the infringement falling outside of these embodiments. What are you really gaining your clients by making your scope “everything that hasn’t been specifically outlawed yet” like the CRM minus signals language does? It’s like find the broadest scope is a game that exists solely for its own purpose. And then people are shocked when their continual poking of the bear causes it to occasionally wake up and bite someone.

            1. 7.2.1.3.1.1

              Well the PTO has to follow Nuijten, and it’s not a problem to generate rules in the hopes of getting applicants to use common language. If uncommon language is used, it only increases the chance that a second Nuijten happens and creates more problems for patentees.
              Nuijten shouldn’t apply to the computer readable medium claims for reasons I discussed above. Computer readable mediums are different than signals per se. Also it is a problem for the USPTO to create these rules because it is substantive law making. The Kappos memo wasn’t addressing a procedural issue. Rather, it was creating substantive law with regard to how the term “computer readable medium” (and variations thereof) are interpreted.

              What are you really gaining your clients by making your scope “everything that hasn’t been specifically outlawed yet” like the CRM minus signals language does?
              Nuijten was an exception that is unlikely to be repeated again. Nobody is attempting to poke a bear because it is nonexistent. Rather, the Nuitjen bear was conjured into existence to address a new class of claim that people weren’t sure fell with 35 USC 101. It is clearly a manufacture — despite what the Federal Circuit stated — but that isn’t the issue at hand here. There are no more “ineligible embodiment[s to be] found.” As such, this is why attorneys don’t worry about it.

              1. 7.2.1.3.1.1.1

                It is clearly a manufacture — despite what the Federal Circuit stated — but that isn’t the issue at hand here.

                Actually – it very much IS an issue, and should be MADE an issue at every opportunity until the anti-reality is expunged.

                1. Actually – it very much IS an issue, and should be MADE an issue at every opportunity until the anti-reality is expunged.
                  Swimming upstream against a very strong current is a waste of time. There are only so many arguments/points that can be made at any single time before the reader gets bored — sometimes you have to pick your battles. While the Federal Circuit got it wrong, that precedential decision isn’t going to change anytime so why bother? That point aside (where it properly belongs), I can still use the holding of Nuitjen against the ‘substantive law’ the USPTO has created. Even then, this isn’t really so much of an important issue these days since people should know by now how to get around these USPTO proclamations based upon factually-inaccurate findings.

                2. We will have to agree to disagree.

                  IF a factually incorrect matter is not one that can be moved, then why would you think that other more nuanced matters can be moved?

                  Or to use your analogy, THIS one has an exceptionally WEAK ‘riptide’ force supporting it, and it is precisely THESE types of wins that can be strung together that can provided the support and momentum to go after the bigger fish.

                3. IF a factually incorrect matter is not one that can be moved, then why would you think that other more nuanced matters can be moved?
                  Because one was made at the Federal Circuit and the other was pulled out of the thin air by the USPTO. The Federal Circuit isn’t going to touch their precedent, and SCOTUS isn’t going to touch it, so for all intents and purposes it is settled (albeit incorrect) law.

                  Regardless of the Federal Circuit’s misapplication of the law, my bone to pick today is with the USPTO — not the Federal Circuit. And I don’t have to call out the Federal Circuit when my target (at least for the day) is the USPTO.

                  until the anti-reality is expunged
                  It won’t be. I suspect that I’ll be dead and buried (hopefully a long time from now) and Nuitjen will still be precedent. I wrote extensively about Nuitjen some 14 years ago when it first came out. I’ve moved on. I ‘let it go’ [cue the music from Frozen].

                4. I “get” the difference in branches of government, but as noted today above, what you are viewing as “out of thin air” is nothing more than a nod to factual reality.

                  To accept as “settled” is to accept illogic. Our duty is NOT to meekly accept illogic, just because one may feel that the judicial branch may be reticent about changing a so-clearly-wrong opinion.

                5. To accept as “settled” is to accept illogic. Our duty is NOT to meekly accept illogic, just because one may feel that the judicial branch may be reticent about changing a so-clearly-wrong opinion.

                  It is settled. Whether it is illogical or not doesn’t change the fact that it is settled. My focus is on what can be changed. There are only so many ills in this world that I can write about. I choose to devote my energies only to certain ones. For example, I do not donate to every charity that comes asking despite their worthiness. I prioritize and compartmentalize. In this instance, Nuijten is in the compartment of ‘bad decision, don’t care anymore.’

                6. The fact that it is factually abysmal means “settled” only when people stop caring long enough to not challenge it.

                  THAT is the point that you seem to be missing.

                7. The fact that it is factually abysmal means “settled” only when people stop caring long enough to not challenge it
                  Spend the rest of your career tilting at that windmill — be my guest, it won’t change a d a m n thing because it will remained settled. As I noted elsewhere, having signals per se be patentable would be incredibly detrimental to the infrastructure of the internet. Here, the Federal Circuit determined the end justified the means.

                  There is a prayer that seems applicable in this situation:
                  God grant me the serenity to accept the things I cannot change, Courage to change the things I can, and Wisdom to know the difference.

                  THAT prayer embodies the point that you seem to be missing.

                8. Wt, thank you for the prayer, but I would put to you that it is you that is missing the critical understanding of that prayer.

                  To wit: you are lacking the Wisdom of knowing the difference, even as you appear to lack the Courage to change things.

                  If – as you seemingly admit – the decision is counter-factual, then you need the Courage to set that right.

                  False acceptance of serenity is directly the point that you are missing from my posts.

  2. 6

    The chart does not reflect any kind of innovation transformation

    Which could be shown with a second line showing the frequency of the term that was used preceding the term that shows the (relatively) huge spike.

    This might change my point of 3) below and show that the software innovation has been more longstanding.

  3. 5

    OT, but in my opinion surprisingly candid and realistic from Gene Quinn on his blog today. [Also relevant to WDTX, now an even more commonly selected forum for patent litigation]:
    “One of the things that has made the Eastern District of Texas so compelling from the patent owner perspective is the extraordinary reluctance of judges to rely on procedural motions to dispose of lawsuits in favor of defendants. It is no exaggeration to say that virtually everything that is filed in the Eastern District of Texas will go to trial unless it settles, which can raise the pressure on defendants to settle, sometimes for nuisance value alone.” [But also note that the subject pre-trial 101 decision was by a relatively new EDTX judge.]

    1. 5.1

      One of the things that has made the Eastern District of Texas so compelling from the patent owner perspective is the extraordinary reluctance of judges to rely on procedural motions to dispose of lawsuits in favor of defendants.

      In other words, plaintiffs get their day in court as opposed to have some judge (improperly) use 12b6 to clear their docket of a troublesome patent case which typically involves difficult-to-understand fact patterns and arcane law. A lawsuit should be won or lost on the merits — not because some judge doesn’t think that a patent shouldn’t have been issued in the first place.

      1. 5.1.1

        That is an argument for those patent suit patent owners that really want to go to a full trial and appeal on all possible issues. But how many actually do? I have seen statistics that up to 95% of patent suits get settled before trial, mostly by settlement agreements avoiding trial which the patent owners have agreed to.
        Furthermore, a D.C. judge that is avoiding or denying all 12(b)(6) motions and summary judgment motions pre-trial does not make the valid issues raised therein just go away, or become unappealable. They can still be just as decisive, but now only after millions in legal fees for both parties, instead of before that. That is especially not in the financial interests of the many PAEs who are suing on purchased patents for settlement net revenues and are not suing to protect any products of their own. A patent owner that loses on a 12(b)(6) 101 motion can appeal that and get it decided before incurring wasted discovery and trial costs. It is not going to get decided by a jury anyway.
        What is really going on in most cases is that these judges know that most sued makers or sellers of accused products would rather pay the patent owner some part of what their discovery and trial legal expenses would be just to get out of the suit if they cannot end the suit much sooner at much lower cost, such as by an IPR, 101 motion or summary judgment after an early Markman, no matter how weakly the patent suits patent infringement or validity would hold up at trial and appeal. The latter was a primary reason for why Congress unanimously enacted the APA.

        1. 5.1.1.1

          “<That is an argument for those patent suit patent owners that really want to

          Not so.

          The fact that leverage is actively short changed applies TO ALL patent holders.

          Your reply is nothing more than Efficient Infringer mantra and the trappings of “Oh N0es, Tr011s.”

          Don’t like “nuisance suits?”

          Too bad – that’s a part of the US System in toto.

          The latter was a primary reason for why Congress unanimously enacted the [AIA]“.

          The primary reason for the atrociousness of the AIA is the capture of Congress by the Efficient Infringers.

          Period.

        2. 5.1.1.2

          a D.C. judge that is avoiding or denying all 12(b)(6) motions and summary judgment motions pre-trial does not make the valid issues raised therein just go away
          If you understood what a 12b6 motion is really about, i.e., a failure to state a claim, you’ll understand why most (the vast, vast majority of) 12b6 motions should be denied. There is considerable case law (including Supreme Court decisions) that address the standard for motions to dismiss. Motions to dismiss are not intended to address affirmative defenses.

          Texas is in the 5th Circuit, and it didn’t take me long to find this 5th Circuit Decision dated August 19, 2019 (Nobre v. Louisiana Dept of Public Safety). This is from page 8 of the slip opinion:
          This was in error. A plaintiff is not required to anticipate or overcome affirmative defenses, such as expiration of the statute of limitations, in the complaint.

          Remember, a 12b6 motion is about a deficiency in the complaint in that it fails to allege sufficient facts to state a claim. FN20 accompanied this quote and I’ll reproduce the entirety of it here:
          Gomez v. Toledo, 446 U.S. 635, 640 (1980) (finding “no basis for imposing on the plaintiff an obligation to anticipate” an affirmative defense and to address it in the complaint); see also United States v. Lewis, 411 F.3d 838, 842 (7th Cir. 2005) (“[C]omplaints do not have to anticipate affirmative defenses to survive a motion to dismiss.”); Braden v. Wal-Mart Stores, Inc., 588 F.3d 585, 601 n.10 (8th Cir. 2009) (“[A] plaintiff need not plead facts responsive to an affirmative defense before it is raised.”).

          As to the rest of your post, Rule 11 sanctions can address improper lawsuits. However, what we’ve seen is that this isn’t enough for some defendants. They need more expedient ways to kill patents that tilt in their favor. This is why we have the AIA. This is why we have the Federal Circuit addressing 12b6 motions in a way different than every other Circuit — contrary to established law.

          What is going on in the EDTX regarding patent cases is what goes on in the rest of the country as to non-patent cases. The EDTX of Texas is special only in that they (usually) treat 12b6 properly.

          1. 5.1.1.2.1

            “Rule 11 sanctions”

            I’m old enough to remember when the lying scumbag patent attorney “inventor” bar worked themselves into a frenzy by the alleged “plague” of sanctions brought against them oh-so-unfairly (because these are lawyers, after all — the best people).

            1. 5.1.1.2.1.1

              Maybe your memory is a (more than a) bit jaded by your perspective that the inventions were not up to what you thought they should be.

              Or maybe you do not want to recognize just how many of those assertions were — in fact — baseless CRP and were a plague?

              Or maybe, for you, the notion of other people not having a sense of innocent until proven guilty is just not that important.

              You seem to think that ANY accusation is ‘good enough.’ I’m betting that is ‘true’ to you so long as you are not on the receiving end.

            2. 5.1.1.2.1.2

              Malcolm? Is that you?

              1. 5.1.1.2.1.2.1

                Lol – doubtful.

                Malcolm was not shy about using his moniker here (and it was over at PatentDocs that he used a very wide set of “worst thing ever” pseudonyms).

                Of course, busting him for doing the very thing that he whined VERY loudly about here was one of the delights of putting him in his place.

  4. 4

    The problem is the treatment of information within inventions and claims. Non-transitory or otherwise.

    1. 4.1

      You mean physical represented information that requires space, time, and energy to represent it?

      You know information processing where time, space, and energy are required to process the physical information?

      Is that what you mean? Or are you talking abut the J. Stevens information where our minds represent and process information in a spirit world?

      1. 4.1.1

        I mean:

        in·for·ma·tion
        /ˌinfərˈmāSH(ə)n/

        noun
        1.
        facts provided or learned about something or someone.
        “a vital piece of information”

        2.
        what is conveyed or represented by a particular arrangement or sequence of things. “genetically transmitted information”

        Are you suggesting Night that every bit of information in the world should have a patent attached if its new, useful, and non-obvious?

        1. 4.1.1.1

          I claim:

          1. A bit of information.

          Gee, Marty, that is just soooo interesting.

        2. 4.1.1.2

          Are you suggesting Night that every bit of information in the world should have a patent attached if its new, useful, and non-obvious?
          Is it a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof? If so, then that falls within the bounds of 35 USC 101.

          Granted, how 35 USC 101 reads and how it is interpreted by the Courts are two very different things. However, information per se is rarely/never attempted to be patented.

          1. 4.1.1.2.1

            Every software patent is an information patent. What is software made of? What are the results of software processes?

            What’s a process, by the way? A series of steps toward a result? That describes every human activity. Since there must be implied limits to statutory processes…what might those limits be?

            1. 4.1.1.2.1.1

              Your tinfoil hat is showing.

            2. 4.1.1.2.1.2

              Every software patent is an information patent.
              I don’t even know what you mean by “information patent” or why it is relevant.

              Take you classic mousetrap. It has a catch that is activated by the presence of a mouse. This information (i.e., the presence of the mouse) is transferred by use of a hold-down bar to a spring-loaded hammer. As such, upon certain information being received, the hammer is released — thereby trapping the mouse. Is this an “information patent”? Is the use of a thermostat to regulate the operation of an air-conditioning unit an “information patent”? If so, why is it relevant?

              What is software made of?
              Does that matter if it is embodied as part of a method? What are methods made out of?

              What are the results of software processes?
              It varies all over the place. So what of it? There is a utility requirement in 35 USC 101, but that is easily overcome.

              What’s a process, by the way? A series of steps toward a result? That describes every human activity. Since there must be implied limits to statutory processes…what might those limits be?
              There must be IMPLIED limits to statutory processes? That’s what the courts say but that isn’t in the statute. I believe the language in 35 USC 101 is “subject to the conditions and requirements of this title,” but that is not what you are referring to.

              1. 4.1.1.2.1.2.1

                Wandering, your mousetrap example is s iily. Nobody thinks a mousetrap is information. The patent office and courts recognize exactly what three of the four statutory categories are, and there is virtually zero controversy about claims to machines, manufactures, and compositions.

                Machines – are concrete things, consisting of parts, or of certain devices and combination of devices. e.g. classic mousetraps.

                Manufactures – are articles produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations. Would software be a manufacture?

                Potentially, but is writing or the ordered movement of electrons a material phenomena? The point of this post was if the movement is transitory, there is no materiality. Why?

                Compositions of matter – are compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.

                Yes, there MUST be implied limits to “process”, because otherwise every last human activity would be subject to patenting, and that’s just not practical or possible in a free society. A new and improved method to scratch one’s azz cannot be subject to a patent, no matter how useful. Machines, manufactures, or compositions that assist in such an endeavor, of course, could be, but the “process” itself cannot….

                1. The point of this post was if the movement is transitory, there is no materiality. Why?

                  ?

                  What is the point that you are trying to make with this statement.

                2. You have NO legal basis for your assertion that one of the categories MUST BE treated differently.

                  ALL categories have the same limits – by law.

                  Anything else is simply not grounded in law.

                3. You have NO legal basis for your assertion that one of the categories MUST BE treated differently

                  More clap trap outta you. How many dozens if not hundreds of articles and cases have discussed the problems with process while noting that the other three are quite settled.

                  Are the judicial exceptions ever applied to the other three? Maybe once in a blue, but I can’t think of any right now.

                4. There is a hidden 5th category “…includes a new use of a known process, machine, manufacture, composition of matter, or material.”

                  Computers are pretty clearly a “machine” or “manufacture.” Why isn’t novel programming just a “new use” for that machine?

                5. there is virtually zero controversy about claims to machines, manufactures, and composition
                  Except “information patents” (again, whatever that means since you choose not to define it) can be claimed as machines.

                  Yes, there MUST be implied limits to “process”, because otherwise every last human activity would be subject to patenting, and that’s just not practical or possible in a free society.
                  You conveniently ignore that the vast, vast majority of human activities are neither novel or non-obvious. As such, they aren’t patentable to begin with. Regardless, a great many of the patents being invalidated under 35 USC 101 cannot be performed by human activity alone. Conversely, there are many patent-eligible patents that necessarily involve human activity.

                  A new and improved method to scratch one’s azz cannot be subject to a patent, no matter how useful.
                  USP 4,915,096 — claim 10.

                6. Marty – you keep on wanting to act as if the mess that the Court is creating is a good thing.

                  It is not.

                  It is a mess.

                7. Are the judicial exceptions ever applied to the other three? Maybe once in a blue, but I can’t think of any right now.

                  Myriad did not concern a method claim. Whether you prefer to characterize whatever they were claiming as a manufacture or a composition of matter is a personal preference, but one way or another Myriad was a recent, very high profile case in which §101 was used to exclude a not-method claim.

                8. There were non-method claims in Alice (averred to by both parties as being in the machine category) that were deemed “abstract.”

                  Gee, maybe that was “formalism.”

                9. [T]here MUST be implied limits to “process”, because otherwise every last human activity would be subject to patenting, and that’s just not practical or possible in a free society.

                  This statement is obviously false. Prior art activities will never be “subject to patenting,” no matter how wide one casts the subject matter eligibility provisions of §101. Similarly, unenabled claims to “science fiction” activities (e.g., “a method for faster-than-speed-of-light travel…”) will never be subject to patenting, no no matter how wide one casts the subject matter eligibility provisions of §101. We do not need to make §101 do all of the work of protecting the public from nuisance patents. We should be content to let each of §§ 102, 103, & 112 do its own work.

                  A new and improved method to scratch one’s azz cannot be subject to a patent, no matter how useful.

                  There are only two possibilities here: (1) the new method for scratching will be useful, novel, and non-obvious; or (2) it will not. If (1), why should we not let it be patented? If (2), we do not need revisions to (or judicial glosses on) §101 to save us from the method.

                  In any event, if your concern is really for nuisance patents burdening the public, I would like to suggest that there might be more efficient ways to reach your desired outcome than by tinkering with §101. The economics of nuisance patent filing are very price-sensitive. There is much more good to be done in this respect simply by raising the cost to obtain or maintain a patent than by mucking up the law in such a manner that valuable diagnostic tools do not come to market, or come only in private, off-shore clinics.

                10. there is much more good to be done in this respect simply by raising the cost to obtain or maintain a patent

                  Spoken like someone who would prefer to turn the great US system on its head and really make this a Sport of Kings.

                  Wait, that’s exactly what Greg “I Use My Real Name and Am A Shill For Big Pharma” DeLassus is all about.

                11. >Except “information patents” (again, whatever that means since you choose not to define it) can be claimed as machines.

                  Aren’t all “new use of a known…machine” inventions fundamentally information inventions? The structure is old, after all.

                  Taking a harder example than my “computer” above, why isn’t using an existing gene sequencing machine to detect a new condition patentable? At least under the text of the actual patent law as a “new use” for that gene sequencer?

        3. 4.1.1.3

          Well, in all fairness to Marty, if we want to be pedantic, not only are all software claims “Information Patents,” but ALL claims of ANY innovation are also “Information Patents.”

          This may be seen by Marty’s provided definition:

          in·for·ma·tion
          /ˌinfərˈmāSH(ə)n/

          noun

          2.
          what is [ ] represented by a particular arrangement or sequence of things.

          It should be noted that under the definition that Marty provides, every single patent claim ever is a “particular arrangement or sequence of things.”

          Without exception.

          1. 4.1.1.3.1

            (by the way, that includes a particular arrangement of things that make up even silly mousetraps)

            1. 4.1.1.3.2.1

              YOUR word choice was “information patent.”

              I am just reflecting your own inanity back at you.

              The better path — for you — would be for you to recognize and comply with the understanding of patent law terrain and leave behind your Windmill ‘adventure.’

    2. 4.2

      Windmill, Ho!

  5. 3

    Actually that number seems low.

    Is that independent claims that include “non-transitory” or patents?

    1. 3.1

      I had the same reaction. Could just be our bubble, but it seems low even for that.

      1. 3.1.1

        I’ve never seen this term before, as a patent agent in a different field. Admittedly, software patents are not something that comes up in our searches.

  6. 2

    The “revolution” is a bit over-dramatic of a word choice, but does draw three separate responses:

    1) In re Nuitjen is still controlling law – no matter how asinine from a pure real world aspect it is.

    2) the ability to respond in a pure-scriviner mode rather easily defeats the court-induced patent profanity.

    3) fully at least one out of five innovation being sought patent protection has to do with software. Across the entire innovation ecosystem. Those who despise software patenting should take note.

    1. 2.1

      Yes, the Kappo’s Guidelines above re information stored in computer readable memory to be rejected as ineligible under Section 101 unless “non-transitory” seemed inevitable given the 2007 Fed. Cir. decision in In re Nuitjen holding that claims to electrical signals themselves are not 101 patentable subject matter.
      But this In re Nuitjen decision clearly notes that: “The claims whose disallowance Nuijten appeals are not traditional step-by-step process claims, nor are they directed to any apparatus for generating, receiving, processing, or storing the signals. As mentioned above, such claims have been allowed. The claims on appeal seek to cover the resulting encoded signals themselves.”

      1. 2.1.1

        The resulting items are clearly items of manufacture.

        The patent profanity was tied to an exceedingly odd notion of ‘transitory’ – and if you recall, I lampooned this with the reply that all I needed to do was look up into the clear night sky and see (albeit natural) items that while “transitory,” were of a far longer vintage than ANYTHING EVER made by man.

        The decision in In re Nuitjen is anti-science, anti-fact. It is abysmal and disgraceful. No person having any appreciation of how a man may manufacture anything should accept the basis of that decision.

        It also was aimed at a legislation from the bench that was easily avoided.

        The judicial branch likes to chastise practitioners as ‘scriveners’ all the while their own scrivining from the bench is downright atrocious.

    2. 2.2

      I don’t know how “asinine” the law is on this subject. Before Nuitjen, it was common for the PTO to issue claims covering an “electromagnetic carrier wave,” “propagating signal,” etc. It’s hard to disagree with the reasoning of Nuitjen, that transitory signals like that don’t fits into any of the categories of patentable subject matter under Section 101.

      1. 2.2.1

        Are you really pretending to be the hat shallow, LR?

        How is something, even ‘fleeting’ (or NOT fleeting, look up into the clear night sky for a natural analog to the ‘fleeting’ aspect) that is designed and constructed by man — in its totality NOT in nature — anything but a manufacture in the legal sense?

  7. 1

    A de-evolution of patent law is what it shows.

    Moore <– should be removed. Thank goodness she is transitory and will be gone one day from the CAFC.

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