by Dennis Crouch
The U.S. Court of Appeals for the Federal Circuit recently affirmed a finding by Western District of Texas Judge Alan Albright that certain claims in two patents owned by WSOU Investments LLC were invalid as indefinite under 35 U.S.C. §112. WSOU Invs., LLC v. Google LLC, Nos. 22-1066, -1067 (Fed. Cir. Sept. 25, 2023). Although the decision is designated nonprecedential, it includes a number of interesting lessons on the requirements for definiteness and disclosure of corresponding structure under 35 U.S.C. §112.
The Technology at Issue
The first patent at issue was U.S. Patent No. 7,304,563 (“the ‘563 patent”), entitled “Alarm clock.” This patent claimed an alarm clock feature for mobile phones where the alarm involved initiating a connection to another device over a network to cause that device to signal the alarm.
Claim 16 is is recited in means-plus-function form:
issuing means for issuing an alert when the current time matches the alert time by initiating a connection to another communication terminal over a network so as to cause that other terminal to locally signal the incidence of the connection incoming thereto
‘563 Patent, claim 16. Claim 16 is clearly written in means-plus-function form, but the focus of the appeal was on claim 1, which was substantially similar. The key difference though is that the claim 1 limitation was directed to “an alerting unit” rather than an “issuing means:”
an alerting unit configured to issue an alert when the current time matches the alert time, the alerting unit being configured to issue the alert by initiating a connection to another communication terminal over a network so as to cause that other terminal to locally signal the incidence of the connection incoming thereto
‘563 Patent, claim 1. Judge Albright found both claims to be in means-plus-function form and the Federal Circuit affirmed on appeal.
In patent law, “means-plus-function” (MPF) claiming is a way to define an element of a patent claim by the function it performs rather than by its specific structure. This type of claiming is governed by 35 U.S.C. § 112(f), which allows patentees to express a claim limitation as “a means or step for performing a specified function.” When a claim is interpreted under § 112(f), the claim limited to the specific structure disclosed in the specification and equivalents thereof. This limitation to actually disclosed structure (and equivalents) severely limits the scope of MPF claims that often seem much broader when read in the abstract. But, the beauty of MPF analysis is that it is designed to preserve the validity of claims that might be unduly indefinite, not enabled, or even extent to ineligible subject matter. Patentees often fall into the common trap of using of MPF limitations without providing adequate structure within the specification. If no structure is disclosed in the specification for a means-plus-function (MPF) claim, the claim is deemed indefinite and therefore invalid. In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994).
The Federal Circuit has established a two-step framework for determining whether a claim limitation is subject to MPF construction under 35 U.S.C. 112(f). First, the court must determine if the limitation uses the term “means.” If so, a rebuttable presumption is triggered that 112(f) applies. Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015). Prior to Williamson, there was a strong presumption associated with use of the word “means.” In particular, courts generally assumed that a claim term that did not use the word “means” was not subject to § 112(f) interpretation. Williamson altered this landscape by holding that the presumption can be quickly overcome, even if the word “means” is not present, if the claim term fails to recite sufficiently definite structure or else recites a function without reciting sufficient structure for performing that function.
In Williamson, the court noted that patentees had begun using various “nonce words” that were effectively non-limiting placeholders designed to avoid MPF interpretation. Here, for instance, the claimed “alerting unit” is roughly equivalent to a means-for-issuing-an-alert. The presumption against MPF can quickly be overcome in situations where the patentee uses a nonce word to designate the element if the limitation generally fails to recite sufficiently definite structure.
Looking particularly at claim the court first noted the rebuttable presumption against means-plus-function treatment since Claim 1 is directed to a “unit” and does not use the term “means.” In rebutting the presumption, the court agreed with Judge Albright that in the context of the claims and specification, the term “unit” was defined only by the function it performs, rather than connoting any specific structure. In its analysis, the court held that the language surrounding “alerting unit” in the claim consisted of purely functional language that provided no structural context. Terms like “configured to issue an alert” and “initiating a connection” were purely functional. The court also looked to the specification to see how the “alerting unit” phrase was used — finding that it was also described in the same purely functional terms as the claim language. In the end, the appellate panel agreed with the district court that “unit” and “means” were used interchangeably in the patent, indicating “unit” was a generic placeholder rather than structural term.
The patentee WSOU had offered expert testimony on point, but the appellate court rejected the extrinsic evidence for its attempt to be a “gap filler.”
To the extent that WSOU argues that the ‘interpretation of what is disclosed in the specification must be made in the light of knowledge of one skilled in the art,’ it invites us to improperly use the knowledge of a skilled artisan as a gap-filler, rather than a lens for interpretation. WSOU argues that a skilled artisan would ‘understand the structure involved with a mobile phone using GSM ….
However, those arguments are irrelevant as The indefiniteness inquiry is concerned with whether the bounds of the invention are sufficiently demarcated, not with whether one of ordinary skill in the art may find a way to practice the invention.
WSOU (internal citations and quotations removed). This quote from the appellate panel rejects WSOU’s attempt to use expert testimony regarding PHOSITA to overcome the lack of structural disclosure in the specification. The court emphasizes that gaps in the specification cannot be filled by skilled artisan knowledge during the 112(f) analysis.
Having determined that claim 1’s “unit” was in MPF form, the court then moved to the next step — looking for the corresponding structure within the specification to perform the claimed function. On appeal, the appellate panel again agreed with Judge Albright that no such structure had been disclosed. The court examined the disclosed processor, communication engine, antenna, and communication protocols , but found no clear link between these components and the claimed function of “initiating a connection to another communication terminal over a network.” Rather, the specification disclosed these structures in a general sense without specifically tying them to the network connection function. Merely mentioning general components is insufficient to provide corresponding structure for a means-plus-function limitation. Because the patentee failed to disclose adequate structure for the “alerting unit” limitation under 112(f), Claim 1 was held invalid as indefinite.
For the ‘563 patent, the court determined that the “issuing means” limitation in Claim 16 was subject to 35 U.S.C. §112(f), which governs interpretation of means-plus-function claim limitations. The court identified two functions for this means-plus-function limitation: (1) initiating a network connection to another device, and (2) causing signaling means to locally signal the user. The court held that the specification failed to disclose sufficient structure corresponding to either of these functions, and therefore the claim was indefinite under §112(f). The court reached the same conclusion regarding the similar “alerting unit” limitation in Claim 1.
I quibble with the Federal Circuit’s doctrine on MPF indefiniteness. In particular, the court’s precedent creates an if-then approach: if no sufficient structure then automatically indefinite. I would suggest an additional step asking whether the claim provides reasonably certain scope, recognizing that 112(f) was particularly designed to permit flexibility using narrowing of claims rather than invalidation.
the plurality of parts [including] a first part closest to a center, a third part farthest from the center, and a second part in between the first part and the second part.
‘681 patent, claim 1 (simplified). You can see that the claim requires a “second part” located between the first and second part. Nonsense. It is pretty clear to me that the patentee intended (but did not claim) that the second part would be between the first and third parts. Unfortunately for the patentee, this exact typo was also found within the specification, and the patent did not include a clear drawing showing the correct aspect.
The court emphasized that it cannot redraft claims to contradict their plain language, even to make them workable.
We have explained repeatedly and consistently, ‘courts may not redraft claims, whether to make them operable or to sustain their validity.’ Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004). Even ‘a nonsensical result does not require the court to redraft the claims of the [patent at issue]. Rather, where as here, [when] claims are susceptible to only one reasonable interpretation and that interpretation results in a nonsensical construction of the claim as a whole, the claim must be invalidated.’ Id.
Slip OP.
The patents here were both originally owned by Nokia. They were later transferred to WSOU, a patent assertion entity associated with Craig Etchegoyen, a former CEO of another patent assertion entity, Uniloc.
Slightly more OT, any news about what happens at the Patent Office if the Freedom Caucus decides to shut down the government?
This is nth hand right now, but the scuttlebutt (supposedly from someone in the Congressional offices) is that they are planning on a shutdown of 74 days.
This is going to be interesting …
Just in time for Christmas….?
Exactly.
Slightly OT, but the decision in the pending Sup. Ct. case of Pulsifer v. U.S. on the meaning of the word “and” in a criminal sentencing statute term might become of interest in patent claim interpretation? “And” has been a subject of claim scope dispute in some prior Fed. Cir. decisions, e.g., SuperGuide Corp. v. DirecTV Enterprises, Inc. (358 F.3d 870 (Fed. Cir. 2004)). Also, the Patent Trial and Appeal Board (PTAB) in Ex parte Jung (Appeal No. 2016-008290 (PTAB March 22, 2017))
How would you see (any) carry-over impact?
A litigant in a patent dispute could cite the case for support.
… and then…?
And then a judge could agree with the litigant that the passage cited has some relevance. Man, Billy, you are struggling today.
Obtuse. Is it deliberate?
Tell me how ‘being relevant’ helps you in the patent sense.
Then realize that you are projecting again, as my minor error below of who you quoted still pales in comparison of your major error (which you have yet to address).
” The court examined the disclosed processor, communication engine, antenna, and communication protocols , but found no clear link between these components and the claimed function of “initiating a connection to another communication terminal over a network.””
This highlights one of the big issues with 112(f) doctrine right now. The word “processor” in the claim generally is considered sufficient structure to avoid 112(f) interpretation, but the word “processor” in the specification is generally considered insufficient structure to support a means for claim. In other words, if my claim has “a unit configured to alert…” and the specification says “the unit comprises a processor,” that will fail as being indefinite. If my claim says “a unit comprising a processor configured to alert…” that will somehow succeed. It doesnt make any sense, but it is current state of 112(f) doctrine.
I would posit that it be less an aspect of 35 USC 112(f) and more an aspect of not appreciating the state of art in computing wares (software being patentably equivalent to firmware being patentably equivalent to hardware).
To draw an analogy to those more computing-deficient, the “structure” of three resistors has very different capabilities when configured in parallel than when configured in series.
Never mind the magnitude jump of possessing four resistors (i.e., Wheatstone bridge).
Now magnify by a gazillion with today’s processors.
It is simply not difficult (no matter how mad this makes the Slashdot/TechDirt lemmings — and the likes of Malcolm, our usual examiner contingent and other anti-patent folk) to understand that a PHOSITA possesses structure with the “processor configured to” language.
Also — keep in mind the distinction (as Prof. Crouch coined the term, even as he neglects it) that 35 USC 112(f) is for the applicant’s choice of pure functional claiming in contrast to the non-pure Vast Middle Ground of the PHOSITA-recognized structure of “configured to.”
“software being patentably equivalent to firmware being patentably equivalent to hardware”
This is true in the sense that all these “wares” are very susceptible to tanking under 112 or 101 if no new, non-obvious physical structure is disclosed.
In any other sense, it’s total horse s—t.
Your angst and animosity (as errant as it is) is noted.
Let me repeat my longstanding invitation for you to abstain from any innovation that you would deny patent protection to.
+1
The problem with your thinking is that the effect of drafting a claim in such a way is that the applicant is claiming the invention in functional terms.
That’s permitted by statute, but it comes with a catch, as stated by 112(f). If you don’t want means-plus-function treatment, don’t draft claims that way.
No. You mis-jump to purely functional.
Pay attention.
Where does the statute say the limitation has to be “purely” functional for means-plus-function treatment to apply.
We’ve been over that many times on this blog.
Prof. Crouch even coined a term (that I shared).
You need to come up to speed on your own time, litigator.
I once reviewed a prosecution history where the means plus function language in a dependent claim was amended during prosecution to remove “means” and focus on specific structure. The response was officially entered, and the application was subsequently allowed but, for some odd reason, while other claim amendments made it into the published claims of the issued patent, the dependent claim amendment to remove “means” never did. That particular dependent claim was not asserted during that litigation.
Excellent writeup, Professor Crouch. Note that Judges Lourie and Stoll, who were on the Dyfan panel last year, were also on this panel.
Why are infringers and their supporters in Congress so upset about Albright adjudicating patent disputes? They seem to win frequently and efficiently.
>They seem to win frequently and efficiently.
He’s a little too efficient for their taste.
Spoken like someone who’s never had a case before Albright.
What don’t you find efficient about the Albright courtroom? Is the time to trial too quick for you? Do you dislike that he doesn’t exercise his discretionary authority to transfer cases out to slower venues? Do you dislike that he rarely entertains 12b6 motions (i.e., failure to state a claim) to invalidate (under the clear and convincing evidence standard) presumed-valid patents during a stage in which no evidence has been presented?
Or is it that you don’t like that he doesn’t have the attitude of ‘all patents are bad’ like many of the judges you like to practice before (e.g., in NDCal)?
I know patent infringement defense work has good paying clients. However, you are posting anonymously — you don’t have to shill for them all the time.
The only time we see Mister SS is when he is shilling against patent litigation in Texas.
He has never contributed to any other patent topic.
Not true. I usually show up to mock Josh.
Meh – can’t remember even a single time that you did that.
But then again, empty mocking does not provide impact.
As I noted, you need to actually weigh in on substantive patent law to make an impact, and you just don’t do that.
Ever.
You probably don’t have a registration number and merely litigate in the patent sphere.
Empty mocking is the treatment Josh’s whining deserves.
I save my “substantive patent law” contributions for fora that matter (i.e., courts and the PTAB), not in response to random patent prosecutors who peddle conspiracy theories in the comments sections of internet blogs.
Lol – than don’t post here if you don’t want the ‘rep’ you have based on how you do decide not to include any ‘meat’ in you patent postings.
(Your “activist privilege” is showing, by the way with your odd “conspiracy theory” notion).
You should realize that “practitioners” are your betters.
You and I define efficient very differently. You appear to define “efficient” as an Oprah Winfrey style “everyone gets a jury.” But that’s not the job of a trial judge: part of a trial judge’s job is to be a gatekeeper and that job includes ruling on dispositive motions.
And that job is one that Albright does not do. For instance, he doesn’t do meaningful claim construction until the pre-trial conference. His Markman proceedings are almost always that everything has a “plain and ordinary meaning,” regardless of what was briefed to the Court.
Similarly, he doesn’t rule on any dispositive motion until the pre-trial conference. The effect of that is that every single case on his docket can get to pre-trial without any substantive involvement by the Court. That forces parties to have to litigate all the way through summary judgment without any idea as to what’s actually important in a case, and that guessing game is as far from efficient as you can possibly get.
There’s a reason the likes of Bill Ramey file most of their cases in Waco now.
Similarly, he doesn’t rule on any dispositive motion until the pre-trial conference.
Maybe he believes that a 12b6 motion shouldn’t be a “dispositive” motion. Rather, it is motion regarding the specificity of the brief (i.e., failure to state a claim). I know the patent defense bar loves that the Federal Circuit has rewritten substantive law here, but that is out of step with how 12b6 is handled everywhere else.
That forces parties to have to litigate all the way through summary judgment without any idea as to what’s actually important in a case, and that guessing game is as far from efficient as you can possibly get.
Welcome to Federal District Court litigation practiced by everyone else — this is how it works. Plaintiffs get their day in court. I know this is inconvenient to the tech giants who like to play by their own rules.
There’s a reason the likes of Bill Ramey file most of their cases in Waco now.
And serial infringers like Facebook, Google, and Apple like to go to NDCal. What of it?
“Maybe he believes that a 12b6 motion shouldn’t be a “dispositive” motion. Rather, it is motion regarding the specificity of the brief (i.e., failure to state a claim). I know the patent defense bar loves that the Federal Circuit has rewritten substantive law here, but that is out of step with how 12b6 is handled everywhere else.”
If Judge Albright believes that, he shouldn’t be on the bench, because that’s settled law. And in any case, granting a 12(b)(6) is usually followed by leave to amend. Which is how it’s done in every other court in the country.
“Welcome to Federal District Court litigation practiced by everyone else — this is how it works. Plaintiffs get their day in court. I know this is inconvenient to the tech giants who like to play by their own rules.”
Your description is the opposite of District Court litigation everywhere else. Judges actually rule on things like summary judgment motions in areas of the law ranging from employment to securities to antitrust to copyright.
“And serial infringers like Facebook, Google, and Apple like to go to NDCal. What of it?”
The difference is that ND Cal isn’t especially different from other courts in the way it operates.
Also, accusing me of shilling while trashing the “tech giants” and “serial infringers” is rather pot-kettle-black, no?
“Also, accusing me of shilling while trashing the “tech giants” and “serial infringers” is rather pot-kettle-black, no?”
Not at all – and the fact that you think so definitely shows that you have zero experience obtaining protection for innovators.
This obsession you have with patting yourself on the back for being a patent prosecutor is hilarious. It’s like showing off a whiffleball trophy.
^^^ says the guy that could not even make the whiffle ball team.
Too funny.
B0nehead, any attorney can be a litigator, but not any attorney can he a practitioner.
The fact that you seem to have so much trouble grasping this is also likely why you cannot be a practitioner.
But you be you.
If Judge Albright believes that, he shouldn’t be on the bench, because that’s settled law.
Settled law. LOL. You crack me up. You’ve apparently never researched how the Federal Circuit came to conjure their interpretation of 12b6 out of almost thin air.
Under Federal Rule of Civil Procedure 8(a)(2) a pleading only requires “only ‘a short and plain statement of the claim showing that the pleader is entitled to relief’ in order to ‘give the defendant fair notice of what the … claim is and the grounds upon which it rests.’” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007) (quoting Conley v. Gibson, 355 U.S. 41, 47 (1957)).
A 12(b)(6) motion is about a failure to state a claim. Under Iqbal, a claim has “facial plausibility” when the complaint contains “factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged”). As stated in Scheuer v. Rhodes, 416 U.S. 232, 236 (1974), the issue is “not whether the plaintiff will ultimately prevail, but whether the claimant is entitled to offer evidence to support the claims.”
Let me repeat, 12(b)(6) motions were never intended to be used to invalidate patent claims. Under i4i, invalidity must be proved by clear and convincing evidence. However, a 12(b)(6) motion is prior to evidence being presented. How can a patent be invalidated with clear and convincing evidence prior to evidence being submitted?
Using 12(b)(6) with 35 USC 101, from the best of my knowledge, was blessed in a concurrence in Ultramercial — that concurrence being written by Judge Mayer. The same judge who think ALL software is unpatentable. The rest of the Federal Circuit has turned a blind eye to this misuse of 12(b)(6) motions that is contrary to how 12(b)(6) motions are used everywhere else.
And in any case, granting a 12(b)(6) is usually followed by leave to amend. Which is how it’s done in every other court in the country.
At least you got that part right. In the rest of the courts, if a 12(b)(6) motion is granted, the plaintiff can request leave to amend — which is typically granted. That’s because the pleading was deficient and the Court gives the plaintiff an opportunity to correct that deficiency. However, why are Courts invalidating patents on these same 12(b)(6) motions without any evidence being granted? No one ever has a good answer for that question.
Judges actually rule on things like summary judgment motions in areas of the law ranging from employment to securities to antitrust to copyright.
That’s AFTER evidence is presented. Not BEFORE evidence is presented as in a 12(b)(6) motion. That is entirely different. As for Albright, it didn’t take me but a 10 second search to find Albright granting a summary judgment on 101 ground in USC IP Partnerships v. Facebook. Moving down the list of search results, here is one in which he granted Summary Judgement for Lack of Written Description in a case involving Intel.
The difference is that ND Cal isn’t especially different from other courts in the way it operates.
If you mean long, drawn out trials that favor defendants, then yes, I agree.
Also, accusing me of shilling while trashing the “tech giants” and “serial infringers” is rather pot-kettle-black, no?
I wear the white hat protecting inventor’s rights. You wear the black hat protecting the ability of mega-corporations to “indefinitely borrow” (stealing is such a harsh word) the technology of others. One of the reasons why the mega-tech companies have such high profitability is that they don’t have to pay for the technology they use.
But that’s OK. They’ve paid you to believe that they are the good guys and the patent system is granting all of these patents to a bunch of bad actors and they are doing their civic duty by invalidating all of the patents for the good of everyone else. They’ve funded organizations like EFF for years and years now to push their message (i.e., inventors are the bad guys and big corps are the good guys).
You don’t like Josh Malone, for example, because he was an inventor (who was scr wed by the system) and is now defending inventor rights — how plebeian of him. No wonder he has earned your disdain. I get it — nothing feeds the ego like having one’s ultimate boss be a multi-billionaire.
Quite a few problems with what you’re saying, so I’ll pick the ones that actually matter:
“Let me repeat, 12(b)(6) motions were never intended to be used to invalidate patent claims. Under i4i, invalidity must be proved by clear and convincing evidence.”
What you seem to be missing is that patent validity is a question of law, and courts resolve questions of law at the pleadings stage all the time. The clear and convincing evidence standard applies to factual questions: the concept makes no sense when applied to questions of law that have no factual underpinnings. A point of law is either correct or it isn’t: you don’t establish a point of law by clear and convincing evidence. That’s why Plaintiffs now make it a point to plead factual allegations in Complaints where the claims are vulnerable to a 101 attack.
And the proposition that every validity determination requires evidence is flawed: Courts do issue 112, 6/indefiniteness rulings based on the intrinsic record alone. It’s rare (because it’s bad practice for a defendant to put forth that argument at claim construction without expert testimony).
Having said all that, I don’t particularly care about section 101 jurisprudence: if that’s what gets you worked up, feel free to have the last word. It doesn’t come up very often in the telecom cases that are my bread and butter, and my view is that the law in this area is broken and needs Congress to fix it.
“If you mean long, drawn out trials that favor defendants, then yes, I agree.”
Your underlying point appears to be that Albright is more efficient because of a quick time to trial. At least two problems with this reasoning: (1) it apparently defines “efficiency” as having the fastest time to trial, and (2) even under that definition, Albright is hardly efficient.
First, your apparent definition of efficiency as “getting to trial fast” is flawed: a more correct definition is the “adjudicating the underlying dispute fast.” That’s where Albright fails, because he sits on *everything* substantive until the pre-trial conference. In other words, nothing important is decided in the litigation until the pre-trial conference, which at least 18 months after the filing of the Complaint. Hardly efficient.
Second, even under your apparent definition of efficiency, Albright isn’t by any means efficient. His average time to trial is on the order of 23 months. By comparison, the fastest time to trial is usually in the Eastern District of Virginia, where cases go to trial ten months after the filing of the Complaint. And yet, the NPE type plaintiffs that you seem to sympathize with rarely ever file suit in EDVa. Why, if the concern is solely with efficiency, would they not choose a forum where you get to trial a year faster?
The reason Plaintiffs like Albright must be something other than efficiency then, because he isn’t the most efficient under your apparent definition. In fact, it’s the opposite: Plaintiffs like Albright because he’s less efficient. He sits on motions. His claim construction rulings are so bare bones that citing his claim construction decisions is pointless: everything is given a nebulous “plain and ordinary meaning,” and there’s rarely any supporting reasoning. In other words, his claim construction rulings can’t be cited in subsequent cases.
On top of that, it’s pretty apparent from substantive hearings that he’s usually unprepared during hearings and doesn’t pay attention to the arguments actually presented. It’s frequently unclear whether he’s even read the briefs.
All of that makes for a court that has much in common with a circus. And that kind of circus draws a particular kind of Plaintiff: one that doesn’t care about the merits, isn’t interested in actually litigating, and uses the threat of litigation costs to force a settlement that’s lower than the cost of litigation. That’s why WD Texas is Bill Ramey’s preferred venue.
“I wear the white hat protecting inventor’s rights. You wear the black hat protecting the ability of mega-corporations to “indefinitely borrow” (stealing is such a harsh word) the technology of others. One of the reasons why the mega-tech companies have such high profitability is that they don’t have to pay for the technology they use.”
Dude. Get off your high horse. I’ve been litigating for a decade now. 90% of my cases involve patents where all the “inventor” “invented” was a draft idea that led to a patent application, followed by absolutely nothing else. Independently coming up with a similar idea (or actually different followed by someone deciding to draft claims through continuation practice), and actually doing the work to make something viable (which the alleged “inventor” never actually did) isn’t “stealing” by any standard.
Wow – a decade and you are still c1ue1ess on actual patent law fundamentals.
Independently coming up — let’s ride that ridiculous notion for what it’s worth — is STILL patent infringement.
Your problem is that you want that black hat to not be a black hat.
It’s a black hat.
What you seem to be missing is that patent validity is a question of law, and courts resolve questions of law at the pleadings stage all the time.
How many patents have been invalided under 103 based upon a 12b6 motion? Obviousness is a question of law, is it not? I’m sure you can point to hundreds of district court rulings on 12b6 motions in which patents were invalidated based upon that. If not, why not? Indefiniteness (112(b)) is also a question of law. How many patents have been invalidated on 12b6 motions for indefiniteness.
It doesn’t come up very often in the telecom cases that are my bread and butter.
Oh sweet summer child. If they haven’t it is because the defense bar hasn’t been working hard enough at it. If a defendant can successfully argue that tuning a shaft preempts Hooke’s law, then there is little in telecom that is safe from a motivated defense attorney and receptive judge.
he sits on *everything* substantive until the pre-trial conference. In other words, nothing important is decided in the litigation until the pre-trial conference, which at least 18 months after the filing of the Complaint.
I’m sorry, what you are saying doesn’t jive with the litigators in the WDTex that I’ve been talking to.
Second, even under your apparent definition of efficiency, Albright isn’t by any means efficient. His average time to trial is on the order of 23 months. By comparison, the fastest time to trial is usually in the Eastern District of Virginia, where cases go to trial ten months after the filing of the Complaint.
The comparison isn’t to the Eastern District of Virginia. The comparison is to the defendant’s preferred venue of choice – NDCal. And BTW, I just came across an article by Baker Botts that says that the median time to trial in EDVA is 18.6 months.
And yet, the NPE type plaintiffs that you seem to sympathize with rarely ever file suit in EDVa.
I guess you never heard of TC Heartland then. The Austin, Texas area is loaded with high tech companies. We are talking Apple, Google, Oracle, Amazon, Dell, Intel, AMD, Microsoft, Facebook, Cisco … just to name a few.
On top of that, it’s pretty apparent from substantive hearings that he’s usually unprepared during hearings and doesn’t pay attention to the arguments actually presented. It’s frequently unclear whether he’s even read the briefs.
Do want some cheese with that whine? He must have slapped your firm around pretty badly.
That’s why WD Texas is Bill Ramey’s preferred venue.
Do you know what will happen if Albright’s docket shrivels away for some reason? There will be a different most favorite patent court for plaintiffs. And if that one is shut down for some reason, plaintiffs will move to another one. Each time, people like you will b tch and moan about so-and-so judge and how he/she needs to be stopped. It’s a never-ending cycle.
I’ve been litigating for a decade now. 90% of my cases involve patents where all the “inventor” “invented” was a draft idea that led to a patent application, followed by absolutely nothing else.
Woo hoo. Have you made it past document review yet? Have they allowed you to write a memo that the partner may (or may not) read? And BTW, you’ve got the propaganda part down pretty well. Inventors don’t invent anything anymore. Big tech is proud of you.
actually doing the work to make something viable (which the alleged “inventor” never actually did) isn’t “stealing” by any standard
Ah yes – the whole you have to practice the invention in order to be a real inventor mentality. Yeah … too bad that isn’t the law.
“How many patents have been invalided under 103 based upon a 12b6 motion? Obviousness is a question of law, is it not? I’m sure you can point to hundreds of district court rulings on 12b6 motions in which patents were invalidated based upon that. If not, why not? Indefiniteness (112(b)) is also a question of law. How many patents have been invalidated on 12b6 motions for indefiniteness.”
The point you seem to be missing is that prior art invalidity and 112 defenses typically have underlying factual issues that aren’t always present in the 101 analysis.
“Oh sweet summer child. If they haven’t it is because the defense bar hasn’t been working hard enough at it. If a defendant can successfully argue that tuning a shaft preempts Hooke’s law, then there is little in telecom that is safe from a motivated defense attorney and receptive judge.”
Not really. There are telecom patents with claims that raise the kind of preemption issues that lend themselves to a 101 attack, but they’ve largely expired. Then again, I tend to view 101 theories with more skepticism than most.
“The comparison isn’t to the Eastern District of Virginia.”
No. The discussion is about efficiency. And even under your purported definition of efficiency, E.D. Va. is the most efficient court in the country.
“The comparison is to the defendant’s preferred venue of choice – NDCal. And BTW, I just came across an article by Baker Botts that says that the median time to trial in EDVA is 18.6 months.”
The Defendants’ preferred venue of choice isn’t always ND Cal. In any case, the advantage that ND Cal presents over most other courts (other than ED Texas) is that the judges there will dig into the merits early, and the local rules force Plaintiffs to put forth substantive infringement theories early, have to justify changing theories later in the case, and will actually strike expert reports. Some of the judges in ND Cal will stay cases pending IPR, but not all.
When I’ve wanted to drag things out, I’ve picked Delaware and not ND Cal.
“I guess you never heard of TC Heartland then. The Austin, Texas area is loaded with high tech companies. We are talking Apple, Google, Oracle, Amazon, Dell, Intel, AMD, Microsoft, Facebook, Cisco … just to name a few.”
Most of these companies also have a substantial presence in Northern Virginia, which is its own tech hub. Apple, Google, Oracle, Amazon, Microsoft, Samsung, and Cisco all have substantial presences there.
“Ah yes – the whole you have to practice the invention in order to be a real inventor mentality. Yeah … too bad that isn’t the law.”
I never said anything about practicing or commercializing the invention. But to be an inventor, one has to actually *invent* something. In other words, actually *make* something. Not just have a creative lawyer write a document with a bunch of ideas.
You seem to think creative drafting is sufficient for a legally enforceable monopoly. My view is that that’s crazy: if you want a state sanctioned monopoly, the scope of that monopoly should be tied to what you’ve actually made and not at all tied to how creatively a lawyer who thinks of himself as a “white hat” can come up with conceivable permutations. And if you all you’ve come up with is a draft patent application, maybe you should try drafting an application for a perpetual motion machine instead.
Independently coming up — let’s ride that ridiculous notion for what it’s worth — is STILL patent infringement.
You seem to have the ability to selectively read out of context that is so frequently a prized trait in ex parte patent prosecution and gets taken to the woodshed and beaten in adversarial proceedings.
My entire sentence made clear that I was referring to instances where Defendants actually made something and “inventors” never actually made anything (whether commercial or just a prototype or even a test version). That is common in patent litigation. In cases involving standards, it’s the norm.
Since you suggest experience there, can you please answer the questions I have asked before on this blog? Namely, given the huge number of patent suits on Judge Albright’s Waco WDTX docket for several years now, how is it that we see a losing patent owner decision of his here in this CAFC decision but we have not seen any of the many presumed patent owner Winning decisions in CAFC reports here? Are all their trials delayed? Or are they all being settled without any trial, and if so, how and why? If not, there should have been a number of Fed. Cir. appeals from Waco WDTX by now.
Or are they all being settled without any trial, and if so, how and why?
The vast majority of all litigations settle. In that situation, there are no Federal Circuit decisions to review. That being said, there have been jury verdicts:
This is from an article dated May 17, 2023 from bccaustin (just add the dot com — I don’t like putting links here to avoid have my post go into the moderating black hole):
Out of the 20 jury trials in patent cases that have reached a jury verdict, plaintiffs have won 11 times, i.e., in approximately 55% of trials that have gone to jury verdict in patent cases. But in those cases that plaintiffs have won, the numbers reveal that Waco juries are not simply capitulating to whatever damages number the plaintiff asks for.
Here is what was written about damages:
The jury awarded an amount less than what the plaintiff asked for in eight of the 11 verdict-for-plaintiff trials — the damages ranged between 0.1% and 91% of the damages requested by the plaintiff.
For those eight cases, the jury awarded a median of approximately 66.5% of the damages requested, or an average of approximately 61.1%.
Across all 11 cases, the jury awarded a median of approximately 75% of the damages requested, or an average of approximately 71.7%.
While I’m sure the vast number of those trial decisions ended up in appeals, many cases don’t get to the Federal Circuit because the parties settle before the appeal. Moreover, it takes about 12 months for the Federal Circuit to do their thing. With that in mind, I’m sure we’ll be seeing more of Albright’s cases before the Federal Circuit over the coming months.
Query for the peanut gallery: what is the best practice for correcting the fudged up claim language highlighted above in an issued patent? Reissue? Certificate of correction? Continuation?
I think a certificate of correction should work here. It’s an obvious grammatical error and fixing does not broaden the claim (the existing scope is nonsensical). The error should be correctable in both the claim and the specification.
Filing a continuation could also be used to fix the error given the nature of the correction (there’s no new matter). The correct claim could be presented “fresh” when filing along with a preliminary amendment correcting the error in the specification.
That said, a reissue would seem to be the most formal and “safest” approach to the problem (but perhaps also the most labor-intensive and expensive) …
Thoughts?
It does seem like a simple error:
“…Where the computing of the autofocus value (FV) according to any of the above can use calculations including:
FVsubWOI 1 = Value1*FVMask1 + Value2* FVMask2 + Value3* FVMask3 where Valuex represents a rational value (which may be a decimal) value assigned to a corresponding focus value mask.
Further, in any of the above a focus value mask of a logically separated part of a sub-window that is closer to a center of the sub-window is assigned a higher weighted focus value than a focus value mask of a logically separated part of the sub-window that is farther from the center of the sub-window. Where, in the above, for a case where the plurality of parts of the at least one sub-window of interest comprise a first part closest to the center of the sub-window of interest, a third part farthest from the center of the sub-window of interest, and a second part in between the first part and the second part, where the first part has a weighted focus value of Value3, the second part has a weighted focus value of Value2, and the third part has a weighted focus value of Value1.”
Based on this, the second part is supposed to be between the first and third parts.
Unfortunately, the kind of error that can be very difficult to find if you’re reading the case, as your mind will want to fix it.
Ran the claims through Claim Master, and it didn’t find this error (nor did I think it would).
A simple mistake that, apparently, can’t be corrected by a court.
It seems odd that the patentee did not fix this before filing the lawsuit. Either they did not notice the error, or they assumed it would be “fixed” during claim construction, or …?
In general, there is the time delay, new examination risk, and “intervening rights” adverse impact of filing pre-suit reissues. Also, a patent suit is a very attractive and competitive legal billing opportunity, and the patent being sued on is, in my observation, not always inspected all that well beforehand by some plaintiff’s attorneys. And, patent owners seem to rarely get an expert second review and opinion from another patent litigation firm with no financial interest before suing. And, most suits settle.
Given the spec text in 1.1 above I did wonder why a certificate of correction was not attempted, but if I remember correctly there was a Judge Newman decision quite a few years back in which she applied some kind of intervening rights there also?
P.S. a certificate of correction changing the scope of the claims can be voided in litigation of the patent. Admixture Pharmacy v. Advanced Cardiac Solutions (Fed. Cir 2007).
I just don’t see any “scope” whatsoever in the claim as written here. It’s nonsense. “Boil the water until it freezes” nonsense.
a certificate of correction changing the scope of the claims can be voided in litigation of the patent
Nice job mischaracterizing the holding. Every certificate of correction changes the scope of the claims. In Admixture, the court didn’t merely find that the scope of the claims was changed. Rather, they found that the scope of the claims was broadened (i.e., not of “minor character”).
WT: “Every certificate of correction changes the scope of the claims.”
Not true. Correcting minor spelling errors typically does not change the scope. Likewise with correcting nonsense such as the nonsense in the present claim.
While Paul is certainly not correct with “Every,” you are definitely off with your notion here of, “Likewise with correcting nonsense such as the nonsense in the present claim”
Changing from no scope (no matter how inadvertent or hamfisted — burnt biscuits anyone?) to some actual scope necessarily is a change of increased scope.
I did not say “Every”
Billy is wrong again. Must be another day of the week that ends in a “y”.
Mea culpa, Paul — I presumed that Malcolm had accurately quoted you, and I should have known better.
Who would have guessed that Malcolm would miscite someone to (try to) make his errant point.
I didn’t misquote Paul, Billy. Keep digging! Bring back some soup dumplings when you’re finished.
Ah, WT, not Paul.
My point remains — as is your unwillingness to actually address the point.
That you jump at an identifier error in view of your own substantive error is really no surprise.
¯\_(ツ)_/¯
Still absent from the substantive point at hand, Malcolm?
Shockers.
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