Tuning Claims From Oil Wells to Truck Axles

by Dennis Crouch

I’ve written a number of times about the Supreme Court’s old decision in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946).  Walker’s patent claimed a “means . . . for tuning” a sound filter to a particular vibration frequency while looking for an oil-well blockage.  The Supreme Court found the claim problematic because it did not claim the physical characteristics of the invention’s point-of-novelty, but instead that tuning element was claimed as a means for accomplishing its function.  The decision noted that some of the patent’s claims did include physical details of the tuning mechanism, but those claims had not been asserted in the case.

The particular holding in Halliburton was that Walker’s patent claim was invalid as indefinite because it used means-plus-function claim language at the point of novelty.  Halliburton was overturned by the Patent Act of 1952 with creation of a statutory right to include means-plus-function elements in combination claims. 35 USC 112(f).  I wonder though whether under the new law, the Supreme Court might have found an alternative mechanism for invalidating the claim, such as full-scope enablement, full-scope written description, or ineligible subject matter.

I draw attention to Halliburton because of its similarity to the patent in American Axle.  The AmAxle patent claims a method of manufacturing a drive-shaft, with the apparent point-of-novelty being “tuning [a] liner to attenuate at least two types of vibration.” US7774911.  Although this claim is perhaps not entirely functional, the Supreme Court has also chastised partially-functional claiming:

But the vice of a functional claim exists not only when a claim is ‘wholly’ functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.

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

If the court ends up granting certiorari in American Axle, I expect these parallels will see further development.

 

55 thoughts on “Tuning Claims From Oil Wells to Truck Axles

  1. 12

    Thinking further on the #5 string below, anyone know why / on what basis (statutory? judicially made up?) DoE is limited to “at the time of claim/s” with 112(f) claims but not with non-112(f) claims?

    I can’t come up with a principled reason why there’d be a difference.

    And what about 112(f) / M+F claims in cons? Cips? Divs?

    1. 12.1

      Pro Say,

      TOO many people get caught up with claim terms sounding in function and PURE functional claiming as if they were interchangeable, OR that 112(f) MUST apply broadly.

      That was never the intention of 112(f).

      Which is one reason why — on the newer thread (which I am in “time-filtered-out” mode right now), there is a shocking LACK of understanding coming from litigating attorneys there. And Prof. Crouch has not helped the matter with his writing of the thread, as he leaves out the critical notion that the Act of 1952 abrogated Halliburton more broadly then merely with 112(f).

      ALL that 112(f) was intended to do was to provide a short-cut to claim writing, and that shortcut was intended to come with a cost of being more limited to express items in the specification.

      You have all kinds of people wanting this to be “illogical,” when what they want to see is NOT what Congress did.

      If one STARTS with the proper understanding, 112(f) is NOT a mystery — but there IS credence to Wt’s expressed view (echoed by Night Writer), that those who would employ an Ends Justify the Means approach (along with your typical Efficient Infringer types) HAVE sought to weaken patents through the 112(f) mechanism.

      As I noted to SS – the nuance is simply easier to grasp if one approaches the law as having been written to PROTECT those that innovate and choose to partake in the patent system.

      Those who want to rest on other perspectives have a vested interest in NOT seeing that nuance.

      1. 12.1.1

        Thanks anon. So are you saying there’s no reason / basis for DoE being limited to “at the time of claim/s” with 112(f) claims . . . but not with non-112(f) claims?

        Or?

        Any difference with cons, cips, or divs? (since their “time /content of claims” is / may be different?).

        1. 12.1.1.1

          There is every reason to apply DoE differently – as this is the “cost” for choosing the option of pure functional claiming.

          As to Cons and Divs – they ‘fall’ to the timing of the original specification, so any NEW claims in those that the applicant so chooses to put in Means Plus garners the exact same “cost.”

          As to CIP’s – that will have the classis attorney answer: it depends.

          As you most likely know, a CIP’s “critical date” may well vary from claim to claim as to whether or not the earlier filing date or the “IP” portion – and later – filing date apply.

          But either way, the rationale of “the cost” is exactly the same.

          But in NO case does one obtain the same DoE between the two types of claims.

  2. 11

    There really is no principled position other than the claims should have the scope of enablement or they are not enabled.

    The idea that there is this “full scope” is nonsense and not possible when the claims are read in view of what a person of ordinary or having ordinary skill knows.

    In fact, I have not seen a single argument presented that isn’t of the form: those claims are too broad and let’s just forget about the knowledge that a skilled person has to invalidate the claims.

    The only problem with this is when an invention occurs within the claim scope that is new and inventive. This can be handled by invalidating the claims if there is a new invention within the claim scope.

    1. 11.1

      And notice when you are honest with what is going on that it provides incentives to inventors and becomes a management understandable problem. This full scope nonsense is again a feelings holding where a judge gets to look at the claims and tell us how they feel about their breadth and the disclosure. (Never mind that the judge often doesn’t have any science or technical training.)

      That is the thing about 101. It is shear garbage. Most inventors I’ve worked with have a good sense of the quanta that their invention is different than what is out there. So they have a pretty good idea what 103/102 is going to look like and it is fairly easy to navigate the expectations. 101 is shear garbage and is based on the feelings of the judges and impossible to anticipate what is going to happen.

  3. 10

    As an alternative to all the excitement about eligibility, it would be worth considering what (if anything) is new and unobvious over the disclosure of DE 3632418 (BMW). Both the USPTO and the EPO missed this reference.

    1. 10.2

      The USPTO examination seemed pretty abysmal. You get what you paid for, and the “stakeholders” have decided to get very little. I wonder why?

      But what do you see of note in the BMW reference? I skimmed the Google translation and it didn’t appear particularly useful for rejecting these claims.

    2. 10.3

      Thanks for that reference, Paul. I don’t at first sight see in it a disclosure of the notion of using a single sleeve of cardboard to damp both shell mode and bending mode shaft vibrations. Could it be that this is why both Patent Offices “missed” it?

      Could it be that your view of its relevance to patentability is different from mine, and also different from that of both Patent Offices? Can you say more?

      If so, perhaps you could offer a thought on whether the key to patentability lies in what the word “tuning” means, in the claim. For me, it’s not clear, not definite, not enabled, not sufficiently described.

      1. 10.3.1

        At second glance, Paul, Ben, I can see better now why BMW is relevant. I was construing the claim’s “liner” too narrowly.

        Fig 12 of the patent/application shows that a “liner” can be a co-axial composite layer structure. This leaves it looking much the same as BMW’s multi-mode driveshaft-damping liner/sleeve proposal.

        1. 10.3.1.1

          Is there anything about shell mode dampening? If not, I don’t see the noteworthy relevance.

          1. 10.3.1.1.1

            Ben, take a look at col 2, lines 9-13, the para that states the object of the BMW invention. Does that not announce that the object is effectively to damp both shell and bending mode vibrations? That object is fulfilled, according to claim 1, with a shaft liner held by friction to the shaft. Still think BMW has no relevance?

            1. 10.3.1.1.1.1

              Again I note that I’m looking at the translation so I recognize that I could be missing something apparent to a German reader, but I don’t think it’s relevant.

              I do not believe dampening the vibration between an inner shell plate and an outer shell plate would be understood by one of ordinary skill in this art as at all equivalent to dampening shell-mode vibration. Especially in a context of such vibration for shafts, pipes, or annular elements.

              1. 10.3.1.1.1.1.1

                Yeah, good. OK. Terminology can be problematic. But I think BMW wanted to mitigate vibration modes in the shaft itself (rather than within any damping liner pressed into the hollow shaft).

                It’s a problem. We are neither of us designers of vehicle driveshafts, are we.

                Besides, Ben, I’m not sure how good in the German language the PHOSITA relevant for the issue of eligibility/patentability before the courts of the USA is deemed to be.

    3. 10.4

      I would “enjoy” such an alternative view — IF our Sovereign had not (and continue to) mess up eligibility jurisprudence.

      As is, such views of yours Mr. Cole only exacerbate the frustration with our courts.

  4. 9

    All this again and again is trying to ignore what a person having or of ordinary skill in the art knows.

    How can a full scope of a claim term not be enabled? That is not possible.

    Claims should be given the scope of enablement at the time of the invention.

    The only problem occurs when a new invention comes along that is within the claim scope of the old invention. That is the only problem that can occur when scope of enablement is used, which is the only thing that should be used short of requiring a specification to include the sum total of all knowledge.

    1. 9.2

      Another point in the new thread reflects your comment here of: “short of requiring a specification to include the sum total of all knowledge.” – which patents were never intended to do.

      Quite in fact, this also reflects one of my own long-standing observations: that the Legislating from the Bench (with the Court seeking to diminish the strength of patents) in regards to empowering obviousness, and in particular PHOSITA (and again note the actual language in the Court cases, which include the notion of providing MORE protection to earlier granted patents), MEANS [pun intended] that the necessary (and perhaps entirely unintended) consequence is that specifications COULD BE ‘watered down.’

      The Courts really can NOT have it both ways.

      1. 9.2.1

        When you think about it, the position taken by many of the judges on the CAFC simply is unworkable and makes no sense.

    2. 9.3

      How can a full scope of a claim term not be enabled? That is not possible.

      Claims should be given the scope of enablement at the time of the invention.

      I could so easily clean up in the private sector

      1. 9.3.1

        A claim entirely lacking support, given the evidence of your past views, Random.

        I would suggest sticking to your day job, but that too would constitute bad advice (given that same evidence).

      2. 9.3.2

        That’s like seeing an overweight 9 year old stumble around a soccer field and concluding that you’d make it in the premier league.

        It could be true, but your basis for getting there is entirely off.

  5. 8

    Halliburton wasn’t overturned – it was bypassed. The core holding of Halliburton, that it is indefinite to claim the structure at the point of novelty by way of its function, is still valid law. The only thing that 112(f) does is provide a rule for claim construction that incorporates the structure (or equivalents thereof) from the specification, so that the properly construed claim is no longer claiming the point of novelty purely by its function.

    1. 8.1

      Sorry Apotu, but you are simply legally incorrect.

      As noted (even as the new article misses teaching moments long covered on this blog), that new article IS correct in Halliburton being abrogated – and that abrogation was NOT limited to ONLY the additional “purely functional” optional approach.

      Direct point at hand: the notion of “Point of Novelty” — and especially in view of combination claims — was repudiated by Congress.

      1. 8.1.1

        “Direct point at hand: the notion of “Point of Novelty” — and especially in view of combination claims — was repudiated by Congress.”

        Citation needed.

        1. 8.1.1.1

          No, m4 – I do NOT need to provide a citation, as this has been on these boards for more than a decade now.

          I will give you a hint though: read the writings of those who were called forth to write the Act of 1952.

          1. 8.1.1.1.1

            Congress repudiated point of novelty (especially for combination claims) *when determining obviousness. *

            Point of novelty has other roles in determining enablement, written description, possession, subject matter eiligibility, etc., and I dont believe congress repudiated PON in these areas.

            1. 8.1.1.1.1.1

              Congress repudiated what THE COURT was doing.

              You need to show ‘some citation’ to support your contention that Congress had intended some “point of novelty” in ANY of the statutes.

    2. 8.2

      Halliburton wasn’t overturned – it was bypassed. The core holding of Halliburton, that it is indefinite to claim the structure at the point of novelty by way of its function, is still valid law.

      The second sentence is more accurate than the first. The more accurate way to state it is that Halliburton’s claim construction was overturned, but the indefiniteness standard was not.

  6. 7

    OT, but have’nt you wondered about the inevitable Fed. Cir. appeal of Judge Albright’s 2.75 Billion dollar Waco WDTX trial decision against Cisco [only the 2d of his patent decisions to get that far that I am aware of]? It strikes me as even more unusual than all those venue mandamus decisions. Reportedly to be argued in early April, but only as to one issue -recusal denial – before any consideration of any of the other appeal issues, per this AIPLA published law firm report:
    link to finnegan.com

    1. 7.1

      My mistake, wrong billion dollar case, this one is from Judge Henry Morgan of Virginia.

      1. 7.1.1

        [Confused with Judge Albright’s $2.18B patent verdict against Intel. When is that getting to the Fed. Cir.?]

        1. 7.1.1.1

          After Albright was apparently bamboozled on “code” being a MPF limitation, I’m starting to look forward to the appeals as well.

  7. 5

    I like means plus function claims, especially when its within the grasp of the inventor(s) to be knowledgeable regarding written desc. and enablement requirements. There’s been a lot of cases where means plus function got a bad rap, b/c the spec didn’t contain what it needed to. There can maybe be a fine line w/ enablement b/c the spec need not contain that which is well known to those skilled in the art; but later trying to prove what was known in the art at the time, is more burdensome than having inventor(s) on board, coach them to breathe the most life into the means + funct. claims, when possible. Most “modern “subject matter doesn’t lend itself well to that sort of thing but it can sometimes be a useful tool.

    1. 5.1

      Yes having some [not all] claims with claim elements in a “means-for”format can be a good idea, IF, as you note, there is such a “means” in the specification. But that is not their only problem. Per 112(f) “..such claim shall be [narrowly] construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

      1. 5.1.1

        A nice advantage to M+F claims:

        “and equivalents thereof.”

        And as time passes . . . equivalents grow in numbers.

        Ergo, most patents should have at least a few of ’em.

        Even with the additional prosecution work often necessary for them to pass muster with the Examiners.

        1. 5.1.1.1

          I may be mis-remembering, but at least Welker Bearing v. PhD, Inc. (Fed. Cir. 2008) says equivalent structure for a means-plus-function claim element “must have been available at the time of the issuance of the claim, whereas the doctrine of equivalents can capture after-arising technology developed after the issuance of the patent.”

          1. 5.1.1.1.1

            You are not misremembering – the doctrine of equivalents for non-112(f) is broader than the 112(f) option.

            Choosing that option is — and purposefully so — meant to be an applicant-specifically chosen option.

            This is just more Court-driven muck to read claims as invoking 112(f) that are not EXPLICITLY written in the prescribed format.

            1. 5.1.1.1.1.1

              Thanks Pilgrim and anon. So M+F claim equivalents are indeed — unlike with DoE — “time-stuck.”

              Of course, reasonable minds can disagree on what exactly is — and is not — “equivalent.”

  8. 4

    I think the entire patent code needs an overhaul. Consider a memory controller: you have to claim it functionally. You can’t claim the structure, as a modern memory controller has hundreds, thousands, maybe tens of thousands of gates. It wouldn’t be possible to show the hardware, let alone draft a claim directed to the hardware.

    This type of claim seemingly runs afoul of supreme court precedent and is not covered by code.

    Let’s not even get into the 101 debacle.

    1. 4.1

      Key word is “seemingly,” as such is NOT purely functional claiming and thus IS permitted under the law as written by Congress (even without using 112(f)).

    2. 4.2

      “ it functionally. You can’t claim the structure, as a modern memory controller has hundreds, thousands, maybe tens of thousands of gates. It wouldn’t be possible to show the hardware”

      Why not? Applicants in the grown up arts have been submitting tens of thousands of nucleotides in sequence listings for decades now.

      We all know what the real problem is, Bob.

      1. 4.2.1

        LOL – nice Malcolm, shall we revisit our discussion of a “software” invention claimed per your mere desire in an excessively ‘physical’ format of pages upon scores of pages detailing physical markings on a burned disc?

        Or are you going to pretend (still) that all claims somehow must be claimed only in the forms to which YOU may be familiar, as if that (unpredictable) art is in fact somehow NOT ONLY “grown-up” (with unpredictability actually dictating the opposite), but necessarily the only “correct” way of doing things?

    3. 4.3

      Consider a memory controller: you have to claim it functionally. You can’t claim the structure, as a modern memory controller has hundreds, thousands, maybe tens of thousands of gates. It wouldn’t be possible to show the hardware, let alone draft a claim directed to the hardware.

      You can claim the structure of the code that runs the memory controller. That’s not only possible, it’s required to make an infringing embodiment.

  9. 3

    It is also worth noting (as a teaching moment) that Halliburton was abrogated with MORE than merely 112(f), as functional claiming (even at an imputed ‘point of novelty’) is allowed under the Act of 1952.

    The option under 112(f) was for purely functional claiming.

    Maybe the good prof could find and link to his own article that introduced the coined term of “Vast Middle Ground….”

    1. 2.1

      Which branch? Given their propensity for non-statutory, extra-judicial holdings and decisions, I’m guessing it’s the SCOTUS – CAFC tag team.

      1. 2.1.1

        That was a trick question (omitting the Constitutional phrase).

        There is one and only one Branch with any such designation of authority.

  10. 1

    Thank you for addressing the previous comments-noted serious problem with the result-claiming breadth of asserted claims in American Axle. Because that is being ignored by many of those who think that is a great case for getting the Sup. Ct. to reverse itself on at least one [not Alice] of the their three established decisional grounds of unpatentable subject matter.

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