by Dennis Crouch
In an important 2018 decision, the Federal Circuit sided partially with Berkheimer on a procedural eligibility grounds — finding disputed questions of material fact as to whether aspects of the claimed invention were “well-understood, routine, and conventional to a skilled artisan.” Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), cert denied 140 S.Ct. 911 (2020). The district court had invalidated claims 1-9 as ineligible and 10-19 as indefinite. The appellate panel vacated that decision as to claims 4-7 but otherwise affirmed.
Back on remand, the district court Judge John Lee has now ruled that the remaining claims are also indefinite under section 112p2. Steven E. Berkheimer, Pl. v. HP, Inc., 12-cv-9023, 2022 WL 910580 (N.D. Ill. Mar. 29, 2022). [Berkheimer_v._Hewlett-Packard__314]
The invention is a method of parsing computer files into “multi-part object structures” with “searchable information tags.” The system then uses “manual reconciliation” that involves looking for a measure of variance. The basic idea is that this system provides a searchable archive with reduced redundancy. Claims 10-19 require “minimal redundancy.” That term was not defined in the specification, and the district court found it indefinite. Berkheimer v. Hewlett-Packard Co., 2015 WL 4999954 (N.D. Ill. Aug. 21, 2015). The Federal Circuit then affirmed that decision.
The specification uses inconsistent terminology to describe the level of redundancy that the system achieves. For example, it describes “minimiz[ing] redundant objects,” “eliminating redundancy,” and “reducing redundancies.” The only example included in the specification is an archive that exhibits no redundancy. … The specification contains no point of comparison for skilled artisans to determine an objective boundary of “minimal” when the archive includes some redundancies.
The prosecution history does not add clarity. In response to an indefiniteness rejection during prosecution, Mr. Berkheimer explained that the claim “desires to eliminate redundancy” but includes the word “minimal” because “to eliminate all redundancy in the field of the claimed invention is not likely.” This does not explain how much redundancy is permitted.
Berkheimer (Fed. Cir. 2018). The remaining claims 4-7 do not use the term “minimal redundancy”, but instead require an archive “without substantial redundancy.” On remand, the district court found that term equally problematic and ultimately concluded that it failed delineate “the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014).
Without Substantial Redundancy: The district court identified the “substantial” wiggle-word as “facially ambiguous”–but concluded that ambiguity could be permissible someone of skill in the art had sufficient guideposts. Typically, those guides might come from examples within the specification. Here, however, the patent specification only includes an example of no-redundancy. And, during prosecution it appears that the examiner and Berkheimer treated “without substantial redundancy” and “minimal redundancy” as synonyms. Thus, the district court found that “substantial redundancy” lacked reasonable certainty for the same reasons as “minimal redundancy.”
Although Berkheimer could have also presented extrinsic evidence regarding the meaning of ‘substantial’ the court indicated that he did not do so.
“Judgment is entered in HP’s favor, and this case is terminated.”
= = = =
The district court invalidated the “minimal redundancy” claims as part of its 2015 claim construction order. At that time, neither party suggested that “without substantial redundancy” needed construction or was invalid. It was only on remand that HP raised the new argument. Berkheimer unsuccessfully argued waiver. The district court noted that its scheduling order did not preclude late-stage indefiniteness arguments.
Oddly, the district court went on to conclude that “the construction of ‘without substantial redundancy’ only became relevant after the Federal Circuit held that the synonymous term ‘minimal redundancy’ was invalid.” This statement is wrong. The issue was already relevant well before; and the Federal Circuit affirmed a prior invalidity finding. What is true: back in 2015, the parties were limited to only 10 claim construction issues and ‘without substantial redundancy’ didn’t make the top-ten list. The Federal Circuit decision pushed it up in the ranking.
= = = =
One result here is that Berkheimer will never get the chance to present the eligibility issues to the jury for their factual findings.
Litig8or, I’ve done a Markman hearing and done some litigation.
The first issue here is whether claim language that doesn’t have patentable weight (intended result) qualifies as a limitation for infringement purposes.
A second issue is how to classify the limitation “storing … without substantial redundancy.”
I agree that the courts have not addressed the first issue. In regards to the second issue, again I don’t think they have properly addressed this issue in this case and, in general, how to interpret this type of claim language.
Of course, this is just my opinion.
After mulling this one over, I’ve decided that this is an intended result and, as such, has no patentable weight and should have just been ignored.
“Storing” … “without substantial redundancy” is an adverb describing how the “storing” is to be done. So, it is should fall into the category of intended result. It is definitely not functional and definitely not structure.
So, again, the courts get it wrong.
I think WT’s comment below is salient too. The Examiners often try to get applicants to add the benefit of the invention into the claim, which this phrase “without substantial redundancy” is definitely a benefit or advantage.
So we have an advantage added to the claims which is an intended result and the courts use this to invalidate the claims under 112. Wow. Another shxt show by our courts.
you can’t just “erase” words that make a claim indefinite. The exception can be when the words are in the preamble and it is not limiting. Otherwise, the words need to have an objective boundary. It is OK to use terms of degree in claim language if the specification has objective boundaries. Otherwise, it is malpractice.
Note also that claim 4 ONLY adds the indefinite language, so to suggest that the only limitation in a dependent claim can be ignored is weak sauce.
“4. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy.”
“It is OK to use terms of degree in claim language if the specification has objective boundaries. Otherwise, it is malpractice.”
I most respectfully disagree although I never do this.
There’s always the knowledge of POSITA, and some technologies may allow for terms of degree.
You are absolutely correct that the knowledge of one of ordinary skill can provide boundaries to terms of degree.
But perhaps even when that is true, it is better to draft the specification to expressly mention the boundaries?
the boundaries have to be in the specification.
Also, can anyone cite authority for the proposition that Section 112 doesn’t apply to an “intended use” (assuming arguendo this was a mere intended use). I’m not aware of any. I know that in examination the examiner can find that the prior art is structurally the same as the claim and reject notwithstanding recitation of “intended use.” But that’s for Sections 102 and 103. It’s also something internal to the PTO to make it HARDE to get claims issued (i.e., make it easier to reject them). I am aware of no authority that would allow a district court to ignore indefinite language merely if someone argues it’s for intended use. That makes no sense whatsoever, and is not the law.
An you cite authority for your own suggested exception of the pre-amble?
Absolutely, but we all (except Malcomb) inherited a total sloppy mess of an application at one time or another
Litig8or, I’ve done a Markman hearing and done some litigation.
The first issue here is whether claim language that doesn’t have patentable weight (intended result) qualifies as a limitation for infringement purposes.
A second issue is how to classify the limitation “storing … without substantial redundancy.”
I agree that the courts have not addressed the first issue. In regards to the second issue, again I don’t think they have properly addressed this issue in this case and, in general, how to interpret this type of claim language.
Of course, this is just my opinion.
The decision on the merits is unquestionably correct (anyone drinking the truth serum will agree). Procedurally, it is problematic and seems that defendant waived a meritorious argument.
My gut feeling is that “without substantial redundancy” is not a great term as it is a negative limitation and includes “substantial”. One thing is that I thought the recent case law was OK with the term “substantial.”
But the real problem is that it is an intended result and does recite how the result is going to be achieved.
So, I think this is a pretty bad claim. This claim would never survive the review process at my law firm.
What structure is it that reduces redundancy? How is this done? It is an intended result.
I’d have to read through this but my take on that claim is that it is an intended result.
I’d have to read through this but my take on that claim is that it is an intended result.
Now compare this to a statement in a Board decision I recently received affirming a 101 rejection — “Appellant did not assert that the claims recites an improvement.”
The game we have here is that the USPTO wants you to “claim” the improvement, but in most instances, a statement of the improvement involves claiming a result.
You see that in Berkheimer. The Federal Circuit focused on the language of claim 4 and stated “[t]hese claims recite a specific method of archiving that, according to the specification, provides benefits that improve computer functionality.”
So this is the game …
Recite an improvement (to get around 101) and then have your claim language be deemed an “intended result”
… or …
not explicitly recite an improvement and then have your claimed dinged under 101.
All this being said, (i) there is no requirement that the improvement be explicitly claimed, or (ii) there is nothing inherently wrong with claiming an intended result so long as it is enabled.
Are you saying that the claimed “result” is something other than belonging to one of the statutory categories?
(note that I am asking because of the way that you have phrased your post invites a Malcolm Mooney-‘style’ of retort in that you cannot claim “functions” or “results.”
I am fairly certain that you mean to say that the actual claim is to a “result” that is within one of the statutory categories, but wanted to have those words come directly from you.
WT, as usual, your comments are good.
I agree with you that this is the game that is played at the PTO. I never add elements like this even when the examiner demands it.
But I am pretty sure this is an intended result element of the claim and, as such, as you say, should be ignored.
Note too that this subtly different than American Axel in that there the claim was an active verb of performing a functional result on an axel assembly.
Here, the claim is reciting the what the result will be.
For sure you should bank everything on that awesome “subtle” distinction.
lol
The limitation we’re discussing is “storing a reconciled object structure in the archive without substantial redundancy.”
Do you really find that to be so different from “tuning at least one liner to attenuate at least two types of vibration transmitted through the shift member”?
For what it’s worth, I would not consider Berkheimer’s limitation to be intended use if I was examining this application.
Definitely, the tuning is a verb with constraints and is a known process. It is not an intended result but a target result for the tuning process. After reading the specification, one would understand those elements. Notice that there is no adverb hanging off the “tuning”.
The “without substantial redundancy” regarding storing is weird. It is modifying “storing” but it is not a functional limitation but an intended result. It is like saying, “jumping in an efficient manner.” Not functional. And no structure. An adverb regarding how the verb is performed. I think this is intended result.
(Of course all of that is off the cuff. I would need to read the opinion to fully understand this.)
I’m really trying, but I don’t see the distinction. The “without…” limitation reads like it limits the storage function to me.
Thanks for the interesting response, NW.
Perhaps I’ve been too harsh on fellow examiners who dismiss limitations as intended results where I read those limitations as functions of the apparatus.
I’m really trying, but I don’t see the distinction.
How many method steps limitations couldn’t be recast as “intended results”?
Here are some simplistic ones:
mixing material A with material B;
printing the document on a printer;
heating the mixture to an internal temperature of 200C;
routing the request from the client to the server;
increasing the partial pressure of oxygen within the container to 5 PSI;
tripping the switch based upon an input signal from the optical detector.
Claims to methods are not claims to structure. Rather, they are claims to operations being performed. At the end of each operation, there is usually a result.
Let’s take the first step of “mixing material A with material B.” The intended result of the step would material A mixed with material B. Is this OK? Is this indefinite?
“heating the mixture to an internal temperature of 200C;”
I would disagree with your thoughts on this, but consider, “”heating the mixture to an internal temperature to increase internal temperature,” or “heating the mixture to an internal temperature to reduce viscosity of the mixture.”
Intended result – sure. Indefinite, not likely
Also consider, “heating the mixture to an internal temperature until viscosity is substantially minimized;”
Depending on the technology and knowledge of POSITA, there may be zero problem with this.
Also consider, “heating the liquid to an internal temperature until temperature is substantially maximized;”
Water does tend to have a max temperature in liquid form at sea level
I guess my point is that I’m uncomfortable with the holding of this case, and I see this as more an infringement issue. “No, your honor, we reduce redundancy but don’t minimize it.”
I see that my post at 8.2.2.1.1 adds some confusion because I reference function/apparatus rather than step/method.
But I do not understand your response. It seems like you’re arguing against those limitations being “intended use.” But I was also against the “storing…” step being “intended use.” So what is your point?
Ben, if you’re asking me, my only point is what I said – I’m not totally comfortable with the holding – esp. when 112(b) issues may depend on the state of the art and how crowded the art is
Not to put words in his mouth, but I do not believe that he is “arguing against those limitations being “intended use.” as much as he is pointing out that actions HAVE results, and a court (or an examiner) that parses a claim element that necessarily has a result to be nothing more than a dismiss-able “intended” result is engaging in nothing more than a Ends justify the Means arrival at a predetermined decision.
I would also point out that I cannot agree with Night Writer’s “take” when he states ““Storing” … “without substantial redundancy” is an adverb describing how the “storing” is to be done. So, it is should fall into the category of intended result. It is definitely not functional and definitely not structure.” at his post at 10 above.
Any adverb that describes a “how” is a limitation on the functional aspect of the verb, and thus must be read AS a part of the functional element.
I would contrast this with claim phrases that are not adverbs: “such that” and “wherein” come to mind (although such are not de facto ‘intended use style items that can be ign0red).
See MPEP 2103 I.C.:
“The determination of whether particular language is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002)(finding that a “wherein” clause limited a process claim where the clause gave “meaning and purpose to the manipulative steps”). For more information about these types of claim language and how to determine whether they have a limiting effect on claim scope, see MPEP §§ 2111.02 through 2111.05.“
“The prosecution history does not add clarity. In response to an indefiniteness rejection during prosecution, Mr. Berkheimer explained that the claim “desires to eliminate redundancy” but includes the word “minimal” because “to eliminate all redundancy in the field of the claimed invention is not likely.” This does not explain how much redundancy is permitted.”
As we all know, the prosecution history is intrinsic evidence and gets more weight than extrinsic evidence.
“Although Berkheimer could have also presented extrinsic evidence regarding the meaning of ‘substantial’ the court indicated that he did not do so.”
Had Berkheimer presented extrinsic evidence during prosecution, it would have become part of the prosecution history and considered intrinsic evidence during litigation.
It is well known that 99.9999% of Examiners can’t determine the level of skill in the art to save their lives so when they issue 112 rejections saying that a person of ordinary skill in the art would find something to be indefinite, it is nothing more than the fecal matter of an uncastrated male bovine. The Examiner does not have a clue as to what a person of ordinary skill would or would not find indefinite (I always include a lack of skill level determination argument with my responses to 112 rejections). We all recognize that indefiniteness rejections are based on the Examiner’s lack of understanding.
When necessary, I traverse 112 rejections with a 1.132 Affidavit/Declaration from an appropriate individual setting forth the facts as to why a person of ordinary skill would find the rejected claims are definite.
“I always include a lack of skill level determination argument with my responses to 112 rejections”
Wowie zowie we’re all impressed!
“We all recognize that indefiniteness rejections are based on the Examiner’s lack of understanding.”
Presuming that you mean 112(b)/2nd rejections you should know by now that a great deal of them are just “office policy says we have to make a rejection here so it’s being made” not “in my own humble opinion I just cannot understand the claim!”. re re.
“When necessary, I traverse 112 rejections with a 1.132 Affidavit/Declaration from an appropriate individual setting forth the facts as to why a person of ordinary skill would find the rejected claims are definite.”
And still fail and then amend. Again, wowie zowie!
Again, wowie zowie!
Says the checkers player after watching someone play chess.
That’s pretty funny.
“Presuming [__], you should know by now that a great deal of them are just “office policy says we have to make a rejection here so it’s being made””
What kind of “just mail it in”
C
R
P
do you think that you can get away with?
You do realize 6 that Examination Quality is adversely affected by this ‘attitude’ of yours?
Applicants PAY for a meaningful examination under the law, and Congress (hint NS II – they are whom you need to take issue with) fully expects you to do a meaningful job for that pay that you receive.
“You do realize 6 that Examination Quality is adversely affected by this ‘attitude’ of yours?”
You do know that office policy (aka the say so of the higher ups) is not my own personal “attitude” right?
Seems to be caught in filter…
Do you realize that Your saying of how You take the mouthings of “higher-ups” directly falls on your shoulders.
The “following orders” schtick went out during the Vietnam war.
Further, you are most likely misconstruing the directions to exam under the law of 35 USC 112.
Any such directions Must be to examine properly under the law.
Your statement here – the one I took issue with with particularity – was very much a “meh-mail-it-in” attitude of yours.
“Do you realize that Your saying of how You take the mouthings of “higher-ups” directly falls on your shoulders.”
Um no re re w OCPD
“The “following orders” schtick went out during the Vietnam war.”
Lelz. Not in all contexts. Re re w ocpd.
“Further, you are most likely misconstruing the directions to exam under the law of 35 USC 112.”
Right, because the directions are sooooooooooo unclear. Really hard to follow in the vast majority of instances! An 8th grader, or advanced kindergartener couldn’t understand them at all.
Look bro, we get it, you’re a ta rd, you don’t like the pto existing as an organization with higher up people implementing policy. I don’t particularly like it either, but tis the way tis.
“meh-mail-it-in”
Yeah a whole lot of 112(b) is “just mail it in” tier. Sorry if you’re not familiar with this on account of your ta rd ation. Same as the dude above you.
6 – your tell when you have nothing intelligent to respond with is in full display here.
Thank you for making my point.
So sayeth one of the 99.9999%.
WT,
Do you also think the “minimal redundancy” language is definite?
Let me answer for him: it’s definite enough for truly skilled artisans and if you have to ask the question you aren’t one of those. Also, forcing applicants to put an actual measurable value on the redundancy reduction achieved would be incredibly burdensome and if we are going that far we might as well shut the whole patent system down. The next thing you know applicants will be required to provide working examples and specifications will balloon to a hundred or even two hundred pages! That’s a lot of work just for the right to sue people for hundreds of millions of dollars in Federal Court.
While you neglected to hold up your “S” sign, you also forgot to note that your feelings (so aggrieved) have nothing to do with how patent law has been know to operate for quite some time now.
Sure, you may FEEL that patent law should be different, and in regards to those feelings, may I suggest that you contact your duly elected Congressional representatives.
anon — looks more like a “Z” sign to me.
MM bro, are you at all impressed with the amount of PROGRESS made at disney bro?
link to streamable.com
criminy….
Your comment is awaiting moderation.
April 5, 2022 at 10:36 am
I do not know of anyone that is actually “proud” of that leaked clip, 6.
Why do you think the examiner with 10 years of experience thought it was definite?
Probably either time constraints or laziness. PatentBots lists this person as 8th percentile in difficulty and with a significantly higher grant rate than their AU’s average, so I suppose I might lean towards the latter.
I look forward to seeing your profound respect for the examiner’s position when it’s not to an applicant’s benefit.
Way to move the goalposts there Ben.
There is no such “need” for profound respect for a different result, as such would not rise to the topic of this conversation.
You seem to have a real problem with handling logic, and speak more based on your feelings than the cognition of what you may be saying.
Here, you exude emotion of a grade-schooler’s “I know you are but what am I,” wanting somehow to switch any fault of the examiner to your opponent in the discussion (Wt).
It just does not work like that.
PatentBots lists this person as 8th percentile in difficultly
And if an examiner is listed as 92nd percentile in difficulty, do I have your permission to disparage that Examiner’s work product?
What is interesting is that I went back to read the Federal Circuit decision for Berkheimer, which I haven’t perused in awhile. It was pretty evident that they understood was being claimed. What will be interesting is to see what happens when this 112 issue gets appealed to the Federal Circuit.
I look forward to seeing your profound respect for the examiner’s position when it’s not to an applicant’s benefit.
I look forward to seeing your profound respect for the examiner’s position for every patent that has been issued (i.e., the patent is valid) and is supposedly entitled to a presumption of validity.
“And if an examiner is listed as 92nd percentile in difficulty, do I have your permission to disparage that Examiner’s work product?”
I like how you left out the other important metric I mentioned. Did you learn how to do that in law school, or did you hone that skill in the trenches?
Steelmaning your question, I certainly think it is reasonable to be suspicious of the work product of a 92nd percentile examiner with a substantially lower allowance rate than their art unit.
“I look forward to seeing your profound respect for the examiner’s position for every patent that has been issued (i.e., the patent is valid) and is supposedly entitled to a presumption of validity.”
You were the one pretending like the unbiased expertise of an examiner had some intrinsic value. I’m glad we’re past that. Doesn’t honesty feel great?
—
So are you planning on answering my original question at 6, or are you just assuming that we’ll all interpret your non-response as a “yes”?
with a substantially lower allowance rate than their art unit.
Why should that really matter? I have clients whose applications span dozens and dozens and dozens of different art units. The client puts in the same amount of work doing pre-filing prior art searches for each of these applications. However, depending upon the art unit, these applications receive very different examinations. Claim language that would pass 101 and 112 in one art unit is rejected in another art unit. Some arts units actually make an attempt to find good prior art. Other arts units merely cite the first two or three references that include most of the keywords they used for their search.
As a patent attorney, I get to see the work product of a multitude of different examiners, art units, and tech centers. What I have long recognized is that the work product VARIES GREATLY. This inconsistency is the most frustrating aspect of dealing with the USPTO. Like most large clients, certain of mine require certain “boilerplate” language in certain applications. As such, I’ve had 50, 100, 200 applications that include portions which were identical to one another. However, the USPTO has examined those portions differently.
Also, as to the significantly higher grant rate, examiners with more experience are typically more confident in allowing things. Unlike a junior examiner, who is deathly afraid of being dinged for allowing something he/she shouldn’t have, a senior examiner has more confidence in their own abilities. They are also more accustomed to working with applicant to identify allowable subject matter. An examiner who is confident that he/she has found the “best” prior art will allow an application once applicant has overcome that prior art. An examiner who cited the first reference(s) they came across will be more likely to issuance subsequent rejections because they know they haven’t found the “best” prior art.
BTW — your innate bias against patents is showing through. You think because someone allows a higher percentage of patents that their work product is necessarily flawed. You fail to appreciate that the job of the USPTO is to issue valid patents — not issue lousy rejections because you don’t want to be seen as being soft of applicants.
You were the one pretending like the unbiased expertise of an examiner had some intrinsic value.
There are certain things that I trust an examiner on and certain things that I don’t. I trust an examiner will know how to apply 101 and 112 much better than a judge. The examiner receives training on this. They do this type of analysis week in and week out. As for 112, the fact that they examine in a fairly narrow subset of technology should mean that they have a much better understanding as to how one skilled in the art would interpret the claim language than a judge who may see the technology at issue once or twice in his/her career.
On the other hand, I don’t expect most examiners to understand the nuances of the law better than a judge. A judge understands the difference between a holding and dicta far more than an examiner or those who write the MPEP. Most cases to examiners are the one or two sentences they’ve seen reproduced in the MPEP. A good judge will read the entire case to understand the facts of the case and how the law was applied to the facts.
Of course, those are all generalizations and there are always exceptions. However, in the matter at hand, which is how one skilled in the art would interpret a particular phrase, I’m going to trust an examiner over a judge and a paid expert.
So are you planning on answering my original question at 6, or are you just assuming that we’ll all interpret your non-response as a “yes”?
I know the game you were attempting to play and chose not to play that game. Also, to do a proper interpretation, I would have to look into the specification and also get an understanding as to how one skilled in the art would interpret that phrase. That is an (unpaid) exercise that I’m not interested in undertaking.
“There are certain things that I trust an examiner on and certain things that I don’t. I trust an examiner will know how to apply 101 and 112 much better than a judge.”
I recently (i.e.,last week) dealt with an examiner who issued a 101 rejection against an improved GPS technique. Lots of math and physics.
Part of the rejection was, “there’s no practical application.”
No practical application? To a technique to provide more accurate distance and location data?
And don’t get me started on TC3600
“Why should that really matter?”
Because we have no reason to expect ideal fastener allowance rates to be equal to ideal software allowance rates.
I totally agree that consistency is a big problem for the PTO, but your screed is silly.
Noting that software gets treated inconsistently across AUs is just not a case for evaluating software examiners and fastener examiners against the same average allowance rate. By all means, something should be done. But not that.
“You think because someone allows a higher percentage of patents that their work product is necessarily flawed.”
I dispute the “necessarily” there. I said I would lean towards one of two probable conclusions, and that I would be suspicious of an outlier examiner. I never said that they were necessarily producing flawed work product. If I really cared to have more than a preliminary guess, I’d go look at some actual work product.
Was this a deliberate mischaracterization or the result of a 9th grade reading comprehension?
Bye bye invalid and ineligible logic claims that should never have granted in the first place. Great way to start the week. Even better will be laughing at Blithering Through as he puffs himself up and puts everybody else down as “lacking the skill to truly understand” this super complicated (lol) “technology”.
Just a suggestion Dennis: where practicable, please include the claim language at issue in these articles. These decisions almost always revolve around the claim language, and it becomes difficult to understand what the court was talking about without the claim language.
This is claim 4:
4. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy.
Is it the model of clarity? No. Would I have written it differently? Yes. Is it indefinite to one skilled in the art? No.
The problem, with the judge, is that he isn’t one skilled in the art and he isn’t familiar with the problem being addressed. The long-standing problem being addressed is the storage of multiple identical items/data objects (whatever they happen to be), which naturally increases the size of the storage needed. Those skilled in the art recognize that there are many different techniques to reducing redundancy and these vary depending upon the system doing the storing and the types of items being stored.
As would be recognized by those skilled in the art, absolute elimination of redundancy is not always possible and in some instances, rarely possible. How much redundancy can be reduced is all highly variable depending upon the specifics.
Based upon my experience in which I have personally handled a half-dozen (maybe a dozen of so?) different patent applications with a similar goal, I would wager that there are hundreds/thousands of different techniques for the reduction of redundancy in stored data items. With this is mind, when presented with the language of “storing a reconciled object structure in the archive without substantial redundancy,” I would posit that would skilled in the art would read this language as requiring that the storing operation effects some kind of reduction in the amount of storage needed for the reconciled object structure.
Along those lines, I would have drafted claim 4 something like this:
4. The method as in claim 1 which includes
storing a reconciled object structure in the archive, wherein
the reconciled object structure is stored with reduced redundant elements.
If I had more time and a better understanding of the specification, I would come up with something more elegant. The simple idea I would try to get across is that the invention is reducing redundancy, which those skilled in the art would certainly recognize.
As somewhat of an aside and something that came to mind as I was reading the specification, is that judges shouldn’t be making this analysis without substantial input from those skilled in the art. From experience, terminology that I understanding implicitly now (after 15 years working in the art) seemed quite obtuse and difficult to understand when I first started out. Also, there are almost always terms of art that masquerade as common phrases. As such, who isn’t skilled in the art will likely not recognize the common phrase as a term of art.
I’ve made this point before, but I think it is worth repeating/expounding upon here. This application was examined by the USPTO for 112, 2nd. It was examined by an examiner whose familiarity with the technology likely far exceeded the judge’s familiarity. Under these circumstances and given the presumption of validity, I think it is proper for the judge to err on the side of the patentee.
I believe the same deference to the USPTO should also apply to 101. Once a patent exits the USPTO there should be a presumption of validity that should be very hard to overcome. The USPTO should have the expertise in applying both 101 and 112. If it is good enough for an examiner, it should be good enough for the courts.
This changes when it comes to prior art challenges under 102 and 103. Unlike 101/112, in which nothing has changed since when the examiner looked at the claims and the judge looked at the claims, there is always a possible that new prior art can come to light.
There is a huge difference in meaning between “without substantial redundancy” and “with reduced redundant elements”. In theory, one could reduce redundant elements yet retain substantial redundancy. In fact, one might be able to increase redundant elements without achieving substantial redundancy. It all depends on the definition of “substantial redundancy”, which does not appear to be a term of art.
There is a huge difference in meaning between “without substantial redundancy” and “with reduced redundant elements”.
Are you speaking as one having ordinary skill in the art after reading the specification …. or …. are you shooting from the hip? I suspect it is the latter and not the former.
As someone how has dabbled in similar technology in the past, the language used, while inelegant, conveyed to me, with reasonable certainty, what was attempted to being covered by the claims.
Claim construction is difficult because the one making the claim construction has to ignore how they would read the language and has to put themselves into the shoes of another.
Putting oneself in the shoes of another does indeed take effort.
Even more so, setting forth exactly what those shoes look like.
You fixed the claim language, and I pointed out that your fix changed the meaning of the claim language. While I am probably a PHOSITA, I need only rely on my understanding of the English language. You still cannot articulate any boundaries for “without substantial redundancy” other than being something greater than zero redundancy and less than some undefined metric. In contrast, “reduced redundant elements” only requires a comparison between before and after, which does not necessarily require quantifying or characterizing the final amount of redundancy as being more or less than “substantial.” It is not profound to recognize that the outcome would have been different if the claims had been written differently.
While I’m sure your understanding of “reasonably certainty” is supported by your dabbling, your testimony is meaningless.
Thanks!
I guess the questions are: Why wasn’t this presented to the judge? Fundamentally, why wasn’t this made more clear in the specification so it did not appear to be a post ad hoc bit of lawyering?
I guess the questions are: Why wasn’t this presented to the judge?
What is “this” you are talking about?
Fundamentally, why wasn’t this made more clear in the specification so it did not appear to be a post ad hoc bit of lawyering?
Fundamentally, why didn’t the examiner reject it under 112, 2nd?
Fundamentally, why is a non-technical judge better equipped to understand how one skilled in the art would reasonably interpret the claim language than an examiner who examines in that particular art?
The examiner who allowed the claims was a primary for 8 years before the Berkheimer application was allowed. Are you saying that this examiner didn’t know how to do his job?
Had the examiner issued a 112, 2nd rejection, the language could have easily been cleaned up. Is it fair that this patent was invalidated (and all the time/money/effort associated with this patent wasted) because some judge, 12 years after the application was issued as a patent, deemed the language to be indefinite?
..but there will be no shortage of people playing the Blame the Applicant game.
..but there will be no shortage of people playing the Blame the Applicant game.
I believe the rules for the “Blame the Applicant game” are on the 1st page of the Patent Defense Litigator’s Handbook.
Forget the presumption of validity, every asserted patent is indefinite, not disclosed in the specification, directed to an abstract idea, is anticipated/obvious, and does not cover the accused product/service. This is the way.
“ Forget the presumption of validity, every asserted patent is indefinite, not disclosed in the specification, directed to an abstract idea, is anticipated/obvious, and does not cover the accused product/service. This is the way.”
What a loathesome whiner you are. Meanwhile, in the grown up arts, perfectly valid patents are being granted all the time
“Meanwhile, in the grown up arts, perfectly valid patents are being granted all the time”
Is that the same as the unpredictable arts (that likewise are sh0t down in litigation as well), or the ones to which actual possession at time of filing is quite often missing (based on what happens in the FDA)?
Either way – your feelings of superiority are quite misplaced and most definitely unearned.
But you continue to be you, Malcolm.
Is it a “grown up art” when any slight change, no matter how minor, results in a compound with “unpredictable” results? Or is that a bunch of tinkerers, messing around with things they don’t understand, rather than engineers creating things they envision?
“ any slight change, no matter how minor, results in a compound with “unpredictableresults?”
Except that’s not how it works which is the whole point. If you don’t have evidence showing teaching away in the art (rare) or unexpected results (rare) you will usually get an obvious rejection that is non-trivial to overcome if all you did was make a “minor change” to a molecule already in the art.
But go ahead and create your own reality if you think logical applicants aren’t coddled like infants.
Malcolm – you did not address his point but instead inserted your own strawman.
I know a “tinkerer” with a GED who completely revolutionized an industry – compliance went from 8%-12% to over 90%.
Every competitor copied him him, every pre-existing competing device became un-sellable, and the federal government overseers of the industry went insane as states told the feds to bugger off.
In fact, the feds tried to “tinker” around the original claims, but thanks to the AIA, the open hostility of fed gov idiots, and a boatload of provisionals, by the time the fed gov idiots announced their latest new government standard we had claims to cover it, and sometimes such claims were allowed before the announcements.
The sad part – the client (who I considered a dear friend) was dying of cancer and lacked the physical strength to do anything but settle for pennies on the dollar b/f he died.