DataCloud Techs v. SquareSpace (D.Del. 2021)
Eligibility and indefiniteness are both judged primarily as questions of law, although both can occasionally depend upon some underlying factual finding. And, even when questions of fact are at issue, it is a judge (rather than a jury) that hears the evidence and determines the facts.
In recent years, eligibility determinations have moved forward in the litigation context and become a true “threshold test.” See Bilski v. Kappos, 561 U.S. 593 (2010). Often, eligibility is the first substantive determination in patent litigation and it is typically decided either on a motion to dismiss (12(b)(6)) or motion on the pleadings (12(c)).
With all the parallels, it is not surprising that some litigants are also suggesting that indefiniteness be decided at the pleadings stage.
The recent motion for dismissal by SquareSpace is on point — arguing that DataCloud’s patent claims indefinite functional limitations parallel to those rejected by the Supreme Court in O’Reilly v. Morse. [Brief in Support of Motion to Dismiss].
The brief walks through Supreme Court history in indefiniteness associated with functional claim limitations.
- O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1854)
- Corning v. Burden, 56 U.S. (15 How.) 252 (1854)
- Burr v. Duryee, 68 U.S. (1 Wall.) 531 (1864)
- Fuller v. Yentzer, 94 U.S. 288 (1877)
- Risdon Iron & Locomotive Works v. Medart, 158 U.S. 68 (1895)
- Westinghouse v. Boyden Power Brake Co., 170 U.S. 537 (1898)
- Busch v. Jones, 184 U.S. 598 (1902)
- Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245 (1928)
- General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938)
- United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1942)
- Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946)
- Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 336 U.S. 271 (1949) (“Graver I”)
SquareSpace filed its motion to dismiss in May and DataCloud has recently filed an amended complaint and has argued that the amended complaint renders the motion “a nullity.” The new complaint adds three additional patents and also includes an allegation that attempts to skirt the indefiniteness question:
A person skilled in the art … would understand that each of the limitations and/or steps in the claims … are defined by what they do (not what they are). Even if any limitation and/or step of the claims is “functional”— and none are—the teachings of the … Patent provides to any skilled artisan sufficient structure, material, or acts necessary to perform the recited function or provides information sufficiently identifying a finite group of structures, materials, or acts necessary to perform the recited function that were well known to skilled artisans at the priority date.
Amended Complaint.
= = = =
Lawyers on the brief include James Dabney and Sue Robinson (as well as others).
I said below that reality cannot be overturned by the courts. The Church-Turing Thesis–in short–says that any function that can be computed can be computed by a very simple general purpose Turning machine.
The quote below is from the brief and is typical of the type of nonsensical arguments used to invalidate information processing claims. Yes, we are claiming a method to perform a computable function so it can be performed on any and all computers. The structure is in the way the machine is being configured by the instructions and is equivalent to a circuit designed to perform that function.
This is easy to understand and Rader in his dissent in Bilski explained this. We know that the people that go against these statements are willfully ignorant.
>>The above-quoted claim is worded in such a way as to encompass any and every computer system that
performs the functions recited in the claim, irrespective of what might be a computer system’s physical structure or computer program code. (citations omitted).
And as I said below. Just read Wandering’s posts below. He does a very good job of explaining this.
Or read the en banc opinions in Bilski. Moore and Rader particularly explain much of this in the context of Diehr.
And again for–Greg—the courts can yap out what they want but reality/physics will be the same in a hundred years as it is today and their opinions in a hundred years will be as wrong as they are today.
NW, I agree with WT’s rebuttal of the §112(b) arguments in this brief. You & I are on the same side of that argument.
I just do not understand why you think that the Church-Turing thesis has any relevance to this §112(b) argument. Section 112(b) asks whether a method is properly claimed. Just because software = hardware = firmware does not mean that any old functional language is always sufficiently definite to claim a new invention in the computer arts. Your conclusion is simply unconnected to your premise.
>>relevance to this §112(b) argument.
For one it refutes the arguments made in the brief. For two I also included the ladders of abstraction and said at the bottom is a real machine that takes time, energy, and space to transform information.
Their arguments that it is indefinite are disconnected to the reality of a person skilled in the art and how they would view the claim.
And look to–Greg—I’ve gone through these arguments 1000 times.
The game is to try and say that the claim recites no structure. But we know a person skilled in the art can build the machine (at the bottom of the ladders of abstraction) and we know the machine performs functions. So how can a function be performed without structure? It cannot. And how can a new or improved function be performed without new structure? It cannot.
You see how reality defeats their ridiculous arguments. But they know this.
Fair enough. As you note below, this exchange seems largely a waste of time. You have typed a bunch of characters, but they still do not appear to me to spell out anything but nonsense. I have typed a bunch of characters, but I gather that they do not appear any more convincing to you than yours appear to me. I hope that you have a fine weekend.
Feels like willful ignorance on your part Greg.
But have a good weekend too.
I definitely will. My wife & I are going to the Getty for the first time since it reopened since it’s year-long pandemic closure. We have been looking forward to this day for months now.
This is the factual essence of Alappat:
“The structure is in the way the machine is being configured by the instructions and is equivalent to a circuit designed to perform that function.”
Much like Galileo, one can pretend that the facts are different, but such pretending just does not make it so.
Yup anon.
Alappat says it well.
The arguments we get from the Scotus and CAFC defy science.
Oh, I’m late to the party.
/golfclap
Well done.
What I found surprising about this district court motion to dismiss on the pleadings is that the brief does not even cite RICHARD WILLIAMSON V. CITRIX ONLINE, LLC (Fed. Cir. 2015) (en banc in part), or assert the attacked claim elements as nonce words equivalent to “means for,” and thus falling under 112(f), even though asserting that there is no specification support at all for those claim elements, and that therefor the claim is indefinite under that decision?
[Query if the alleged absence of any specification enablement or claim term definition for claim elements could arguably be determined intrinsically from the specification itself by the judge at this preliminary stage in some cases without extrinsic evidence if not factually refuted by the patent owners response to such a motion?]
Intrinsic or extrinsic are both factual determinations.
Must these then be read in the light most favorable to the non-movant?
Yes, but if there is no “it” in the spec to so read for any enablement or more specific definition of such terms, then reading “it” in the light most favorable to the non-movant doesn’t help much?
BTW, what I was querying was just a possible alternative to the more bare bones 112 second paragraph claim indefiniteness argument of the subject brief itself.
The “it” is not a spec item, but rather is the assertion being brought forward in the court.
Please move the goalposts back, thank you.
Citing Williamson here would have been no more (but also no less) inane than Halliburton or Union Carbide. The precedents are so distinguishable from the case at bar that the rules are simply inapposite.
Neither Dennis or I was suggesting that this motion at this stage was likely to be successful. Just something unusual, different, and responsive to all the prior comments here that claims should be attacked by defendants on 112 grounds rather than as 101 exception unpatentable “abstractions.” But the latter is blessed by the Supremes as suitable for preliminary deciding and the former is not.
Church-Turing Thesis states that anything that can be computed can be computed on a simple Turning machine. Equivalence of hardware/software/firmware.
Information processing takes time, energy, and space.
Reality. There is no meaning to the words yapped out below by the anti-patent judicial activists and this ridiculous petition.
Notice that no one can counter these arguments.
The Scouts/CAFC/DCs are telling us that the Sun revolves around the Earth and expecting us to believe it.
The laws of physics govern information processing and it as much a physical process as making steel or building a molecule to pump into people.
They can keep up with their ridiculous nonsense but they can never get past the laws of physics.
I hear you – but your argument may well be at too high of an intellectual level for the anti’s to appreciate it.
Much like in answer to your provision of the technical Ladders of Abstraction point (to Greg) that Greg does not seem to grasp (even after I augmented your position with the legal equivalent), your point is simply being ignored.
What does this have to do with any consideration relevant to §112(b)?
Greg, if you can’t figure that out, then you should return your science degree.
Church-Turing Thesis read about it. And then think about Wandering’s post below that includes: “This is basically just a guised attempt to invalidate all software patents. In fact, I could use the same (il)logic to invalidate just about all process patents.”
The fact is that at the bottom of the ladder of abstraction are machines that perform the recited functions. That the machines take time, space, and energy, and have structure. Reality. About 99 percent of the garbage from the Scotus, CAFC, and DC come down to “we can’t figure out what this means (willfully) so it must be abstract or indefinite.”
Hey Night,
Doing math takes time, space, and energy, and has structure, and is axiomatically useful.
Why don’t we patent better math?
This should be interesting….
Martin,
We’ve been through this a million times. You know what applied mathematics is.
mmm hmmm.
Wikipedia tells me that Applied Mathematics means all kinds of things to all kinds of people.
This guy seems to disagree with you.
link to ipwatchdog.com
But really, I already know the answer.
The answer is that the patent law is incoherent on the matter of information, and math is pure information.
But as usual, if a machine executes a new, useful, and non-obvious algorithm and the utility arises for a machine purpose, not a human meaning, then the “math” should be eligible for patenting IF that policy compromise is made. The other choice is no patents for information, period. That probably does not comport with the intentions of the patent system, but what we have now is a disaster.
Martin, it is information processing.
Transforming information takes time, energy, and space.
And, the argument about math is really ridiculous when you go up a level and try to understand that math is just a tool of the human information processor.
Yes, math is information processing. Math is ineligible. You say “Applied Math”, I say that term has no particular meaning or impact on eligibility.
I’ll ask again: why is math no eligible for patenting?
Not to intrude on your lovely conversation, but if you are insisting that ‘applied math’ has no meaning (it does, by the way), then you might want to define what YOU mean by math.
For example, do you include cryptography in ‘math?’
Math is a language. What sense does “applied linguistics” make other than to suggest a utility for the language beyond the theory of language itself.
Of course cryptography is math. So is accounting, banking, and playing an MPEG. The utility of information is often quantitative.
But once again, you are all hung up on what the information means, which is a pointless distinction. What should matter to a rational patent system is who the information is meaningful to, because that the essence of the utility or non-utility of the information.
Math is NOT “a language” – leastwise in the (your seeming favorite) colloquial sense.
The “theory of” falls to the philosophical underpinnings, of which I (long ago) detailed out as MathS.
Sorry Marty – but understanding the terrain actually does not matter.
Your, “But once again, you are all hung up on…” falls flat.
Lastly, the “essence of utility” remains a key lack of understanding for you — and a primary reason you remain in the weeds.
You happen to LIKE being in the weeds, so there really isn’t much hope for you.
… should read:
but understanding the terrain actually does matter.
Oh math is not a language because anon says so. OK.
Meanwhile, there are hundreds if not thousands of academic pieces proposing that math is…..a language.
For the purposes of patent policy, it would be entirely reasonable to consider it so.
Meanwhile bla bber on about terrain and utility.
By the way, does your precious Act of 1952 actually define utility? Does ANY case law? Or do you just know it when you see it?
“hundreds if not thousands of academic pieces proposing that math is…..a language.”
You really need to understand these things in the patent context. How many of those hundreds or thousands are discussing math and how many are discussing MathS?
You yourself do not even believe in ‘applied math.’
EACH of these have their distinctions in the terrain of patent law.
That you think this is all “blabber on” only reflects p00rly on you.
Fair enough, of course. If you do not wish to explain your reasoning, and prefer merely to luxuriate in the puerile pleasures of insult-banter, such is your right. It can hardly come as a surprise that your side is progressively losing this argument with each new precedent, if this is the quality of “argument” you bring to the discussion.
So I gave you a concrete example that includes the ladders of abstraction and you ignore it. OK. And, I told you to read Wanderings post which is highly relevant as it goes to the Church-Turing Thesis.
Your response? Insult me and ignore all the substance. Your goal seems to be to waste my time.
Agreed. It is fairly well indisputable that the exchange that follows from 9.2 is a waste of time. No fair minded observer could conclude otherwise.
Only if one refuses to learn from the folly of others.
Myself, I like to learn at every opportunity.
This cannot be stressed enough:
“Equivalence of hardware/software/firmware.”
This also undergirds the Grand Hall Experiment.
Yup anon.
Also, the physical nature of information processing is also important. One cannot transform information without a machine that requires space, time, and energy.
While I certainly agree with the larger thrust, this comment here perhaps exemplifies why I think the anti’s disregard what you are trying to say.
Your equating the very human machine to being the vessel through which the very real physical mechanism of certain information processing occurs just does not resonate, because the anti’s can accept that point (human as a machine), but will NOT provide an equivalent acceptance that patent protection should be allowed for NON-human machine equivalents.
To them, the fact that a claim is entirely to a non-human machine is irrelevant — regardless of the direct words of Congress.
” but will NOT provide an equivalent acceptance that patent protection should be allowed for NON-human machine equivalents”
WT F you talkin’ about Willis?
LOL – that you are c1ue1ess says more about you than you realize.
Since Citrix, application of 112(f) to apparatus claims has obviously increased greatly, but a lot of district courts have still avoided applying 112(f) construction to method claims… One district court expressly said Citrix’s holding (overturning the presumption that 112(f) was not invoked absent magic words) did not apply to method claims, only apparatus claims (which doesnt make sense)…. The result is you have a lot of claims where, eg., “an apparatus comprising: a processor for processing data to determine XYZ” are invalidated under 112(f) construction, but somehow “a method comprising: processing, using a processor, data to determine XYZ” are valid.
its only a matter of time until that house of cards comes falling down.
I’d be interested in the name of that processor invalidation case if you remember it.
“35 U.S.C. § 112 ¶ 2 PROVIDES A STATUTORY ALTERNATIVE TO ANALYSIS OF WHETHER PATENT CLAIMS ARE DIRECTED TO “ABSTRACT IDEAS.””
So where are all the kudos to the defendant for trying to get the courts to switch over to a 112 analysis?
One and one half cheers for the defendant’s approach here. This is a rather weak argument here, so I am dubious that they will blaze a trail here that will convince future defendants of the wisdom of this approach.
Take care in trying to rely too much on Halliburton. The last paragraph of 35 USC 112 [now 112(f)] was expressly added in the 1952 Patent Act to modify or render obsolete much of its reasoning (it still applies to functional language expressed in “single means” claims other than in a combination). See, for example, Federico’s commentary on the legislative history of the Act, where he notes:
“The last paragraph of section 112 relating to so-called functional claims is new. It provides that an element of a claim for a combination (and a combination may be not only a combination of mechanical elements, but also a combination of substances in a composition claim, or steps in a process claim) may be expressed as a means or step for performing a specified function, without the recital of structure, material or acts in support thereof. It is unquestionable that some measure of greater liberality in the use of functional expressions in combination claims is authorized than had been permitted by some court decisions and that decisions such as that in Halliburton Oil Well Cementing Co. v. Walker, 67 S.Ct. 6, 329 U.S. 1, 91 L. Ed. 3 (1946), are modified or rendered obsolete, but the exact limits of the enlargement remain to be determined. The language specifies “an” element, which means “any” element, and by this language, as well as by application of the general rule that the singular includes the plural, it follows that more than one of the elements of a combination claim may be expressed as different “means” plus statements of function. The language does not go so far as to permit a so-called single means claim, that is a claim which recites merely one means plus a statement of function and nothing else. Attempts to evade this by adding purely nominal elements to such a claim will undoubtedly be condemned. The paragraph ends by stating that such a claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. This relates primarily to the construction of such claims for the purpose of determining when the claim is infringed (note the use of the word “cover”), and would not appear to have much, if any, applicability in determining the patentability of such claims over the prior art, that is, the Patent Office is not authorized to allow a claim which “reads on” the prior art.”
Congress provided language in 35 U.S.C. § 112 to create a safe harbor exception to Halliburton if “[a]n element in a claim for a combination [is] … expressed as a means or step for performing a specified function.” If an applicant chooses not to express an element in this manner, then the recitation would not fall within this safe harbor exception, and Halliburton could still apply.
It is also worth noting that the last part of Federico’s commentary suggesting that 112, p. 6 “would not appear to have much, if any, applicability in determining the patentability of such claims over the prior art” is contrary to current law. See In re Donaldson Co., 16 F.3d 1189, 1194, (Fed. Cir. 1994) (en banc) (“the ‘broadest reasonable interpretation’ that an examiner may give means-plus-function language is that statutorily mandated in paragraph six. Accordingly, the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.”)
“Congress provided language in 35 U.S.C. § 112 to create a safe harbor exception to Halliburton if … ”
That is NOT correct.
Halliburton was abrogated, regardless of whether or not the applicant chooses the optional technique as provided by 35 USC 112(f).
Federico’s commentary on this point included the admission that some of these things were his feelings (feelings NOT shared by the other co-writer, Judge Rich).
As to In re Donaldson, methinks you over read that quote, and are misapplying what that statement portends.
With respect to your suggestion that “Halliburton was abrogated, regardless of whether or not the applicant chooses the optional technique as provided by 35 USC 112(f),” I am curious as to your reasoning/authority for this proposition. Is there something that I am not aware of? The plain text of 112 does not seem to get there. Happy to be convinced.
Happy to be convinced.
So would we all be, but don’t hold your breath waiting for the explanation. It will never come.
I am curious as to your reasoning/authority for this proposition.
If you like bald, unsupported assertions, you are in for a treat.
The reasoning was fleshed out in extensive detail on these blog pages years ago.
This is NOT a new topic.
Dozens, sorry, but I do not fall to the Briar Patch games of “can you repeat that again.” These simply are NOT “bald, unsupported assertions” as you would yourself baldly assert.
The “argument” (such as it is) for total abrogation is set forth at the link. If Anon’s thinking on this subject has changed since that exchange, he can comment as appropriate.
link to patentlyo.com
Dozens – you have to go back further.
“and Halliburton could still apply.”
The fact that this is a matter of dispute is further evidence that the 1952 act was poorly drafted (or well-drafted for the purpose of making up rules after-the-fact).
The 1952 patent act was one of the worst written statutes in this country’s history and that’s saying something. Section 101 alone should have been enough to condemn everyone involved but the USA is known for helping lazy ingnorami and con artists “fail upwards.”
Are there any statues of Giles Rich that we can tear down? Now would be a great time to do that.
Please Pardon Potential [multiple] rePeat….
Translation for Malc0lm’s wh1ne:
“I do not like the actual law as written by Congress, so I will denigrate it at every opportunity while at the same time pretend that the law ‘really‘ is something else.”
Malc0lm be1ng Malc0lm – it’s as the year ‘sabbatical’ never even happened.
It is NOT a matter of dispute.
Someone being in error does not change the fact that Halliburton was abrogated. It just means that that person is in error.
I do not think that your conclusion follows from your premise here. Imagine that the day feels cool, and the thermometer reads 60°. A says that it is 60° outside, while B says that it is 90°.
That does not imply that the thermometer is hard to read. It is more likely means that B is just thick-headed.
In other words, the mere fact that one can find some @$$hat willing to take up a contrary position does not mean that there exists a “dispute” that the rest of us must take seriously. Don’t let those operating in palpably bad-faith think that if they kick up enough dust, the rest of us will all go blind.
^^^
“those operating in palpably bad-faith”
Oh, the irony….
While Federico tried to say that 112(f) created a statutory abrogation-in-part of Halliburton, we should all be aware that the Supreme Court has repeatedly discounted the commentary from both Federico and Rich on the “intent” behind the 1952 Patent Act where it conflicts with precedent or the text (just as Matal’s own commentary has been discounted, such as in Helsinn). I don’t think the Supreme Court has ever addressed whether 112(f) really abrogated-in-part Halliburton.
Halliburton (notwithstanding the feelings of Frederico) is not merely (let alone ‘in part’) abrogated by ONLY the last section of 35 USC 112.
35 USC 112 – writ large – provided for claiming in terms sounding in function – even outside of the the “Pure Functional” claiming optional style afforded by 35 USC 112(f).
This is evident in many cases (including the ‘baby car seat’ case of Orthokinetics, Inc. v. Safety Travel Chairs, Inc. 806 F.2d 1565 (CAFC 1986)) as well as the notions of “Vast Middle Ground and ANY non-single means type of claim.
The Act of 1952 was written in direct response to the waywardness that the Supreme Court had visited upon patent law.
Well, if you are going to deal with reality anon, you need to find another blog. This one is infested with the “woke” and anti-patent judicial activists both of whom are trying to merge with one another.