By Jason Rantanen
Richard A. Williamson v. Citrix Online, LLC (Fed. Cir. 2015) Download Opinion
Panel: Moore, Linn (author), and Reyna. Part II.C.1. decided by the court en banc.
Judge Reyna concurred as to the conclusion of indefiniteness, but maintained his dissent as to a claim construction issue decided by the panel. Judge Newman dissented as to Part II.C.1.
In the original panel opinion in Williamson v. Citrix (discussed here), the majority held that the use of the word “module” does not invoke the means-plus-function language of 35 U.S.C. § 112, para. 6, and thus the claim was not indefinite under the Federal Circuit’s § 112, para. 6 precedent. In reaching that conclusion, the majority held that because the claim did not use the word “means,” there was a “strong” presumption that § 112, para. 6 does not apply. Citrix sought en banc review. (Disclosure: I joined an amicus brief encouraging the court to grant en banc review due to the intra-circuit split on this issue).
This morning the Federal Circuit withdrew the earlier opinion and substituted a new one, with an en banc section addressing the means-plus-function issue. The en banc court reversed the precedent creating a “strong” presumption, holding that the standard is “whether the words of the claim are understood by person of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Slip Op. p. 16. If the words of the claim do not meet that standard, § 112, para. 6 (now § 112(f)) applies.
35 U.S.C. § 112, para. 6 states:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.
Although there is a presumption based on the presence or absence of the word “means,” that presumption is rebuttable:
In making the assessment of whether the limitation in question is a means-plus-function term subject to the strictures of § 112, para. 6, our cases have emphasized that the essential inquiry is not merely the presence or absence of the word “means” but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.
Id. at 14. Under Federal Circuit precedent from the 1990’s, “the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to “recite[] sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.” Id. (citing Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000).
Subsequent cases raised that presumption first to a “strong” one (Lighting World), then to a “strong one that is not readily overcome” (Inventio), and then to an even higher bar: “[w]hen the claim drafter has not signaled his intent to invoke § 112, ¶ 6 by using the term ‘means,’ we are unwilling to apply that provision without a showing that the limitation essentially is devoid of anything that can be construed as structure” (Flo Healthcare Solutions) (emphasis added by court).
The court considered this heightened standard and eliminated it:
Our consideration of this case has led us to conclude that such a heightened burden is unjustified and that we should abandon characterizing as “strong” the presumption that a limitation lacking the word “means” is not subject to § 112, para. 6. That characterization is unwarranted, is uncertain in meaning and application, and has the inappropriate practical effect of placing a thumb on what should otherwise be a balanced analytical scale. It has shifted the balance struck by Congress in passing § 112, para. 6 and has resulted in a proliferation of functional claiming untethered to § 112, para. 6 and free of the strictures set forth in the statute. Henceforth, we will apply the presumption as we have done prior to Lighting World, without requiring any heightened evidentiary showing and expressly overrule the characterization of that presumption as “strong.” We also overrule the strict requirement of “a showing that the limitation essentially is devoid of anything that can be construed as structure.”
The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. Greenberg, 91 F.3d at 1583. When a claim term lacks the word “means,” the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to “recite sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.” Watts, 232 F.3d at 880. The converse presumption remains unaffected: “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.” Personalized Media, 161 F.3d at 703.
Applying the pre-Lighting World standard, the court concluded that the term “distributed learning control module” was governed by § 112, para. 6. That term is part of a larger passage that is “in a format consistent with traditional means-plus-function limitations. It replaces the term ‘means’ with the term ‘module’ and recites three functions performed by the ‘distributed learning control module.'” Slip Op. at 17. That term – module – is “a well-known nonce word that can operate as a substitute for ‘means’ in the context of § 112, para 6.” Id. “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. And here, “the word ‘module’ does not provide any indication of structure because it sets forth the same black box recitation of structure for providing the same specified function as if the term ‘means’ had been used.” Id. at 19. Nor was there any other evidence that indicated that the term recited sufficiently definite structure.
The consequence of concluding that § 112, para. 6 applies was that the court moved to the second step of the means-plus-function construction: looking to the specification for corresponding structure. Because the specification did not disclose adequate corresponding structure, the claim was indefinite.
Judge Reyna concurred in the conclusion reached by the court en banc, but expressed concern that the court’s approach sidesteps “underlying fundamental issues involving the development of functional claiming law since 1952 when 35 U.S.C. § 112, paragraph 6 was passed.” Concurrence at 3-4. Judge Reyna also dissented as to a claim construction issue decided by the panel.
Judge Newman dissented from the en banc ruling in Section II.C.1. In Judge Newman’ view, the result of the court’s decision is clear: “additional uncertainty of the patent grant, confusion in its interpretation, invitation to litigation, and disincentive to patent based innovation.”
Update: Prof. Risch offers his thoughts on Williamson on the Written Description blog: http://writtendescription.blogspot.com/2015/06/the-past-and-future-of-functional.html
Stemming from my (unusually detailed and enjoyable) discussion with MaxDrei, a straight up question for Ned Heller and his Belieb system:
Why did Congress NOT write into the Act of 1952 the actual requirement of structuring claims such that the PON was separate from all else (as in the Jepson claim format)?
Clearly, this could have been so demanded.
And yet, the Jepson format is not ONLY (and merely) an optional claim format, but an archaic and little used option?
I have the distinct feeling that this is (yet another) inconvenient discussion point for our dear Ned Heller, to which there will be met only the screams of silence, as no inte11ectually honest response will be forthcoming.
Good question anon.
As you know, Westinghouse v. Boyden Power Brake, citing and relying on Corning v. Burden, construed a combination claim, claim 2, to cover the corresponding structure recited in the specification and equivalents thereof in order to preserve its validity. Claim 2 read,
“In a brake mechanism, the combination of a main air-pipe, an auxiliary reservoir, a brake-cylinder and a triple-valve having a piston, whose preliminary traverse admits air from the auxiliary reservoir to the brake-cylinder, and which by a further traverse admits air directly from the main air-pipe to the brake-cylinder…”
The Supreme Court held that “[i]n this view, it becomes unnecessary to express an opinion whether the second claim be valid or not, since in the aspect of the case most favorable to the complainants, it is necessary to read into it something which is not found there, or, in the language of complainants’ brief, “to refer back to the specification; not, it is true, for a slavish adoption of the identical instrumentalities therein described, but for the understanding of the essential and substantial features of the means therein illustrated.” In thus reading the specification into the claim, we can adopt no other construction than to consider it as if the auxiliary valve were inserted in the claim in so many words, and then to inquire whether the defendants make use of such valve, or its mechanical equivalent.” Id. at 557-558.
The practice thereafter developed to use the means-plus-function format for claiming machines, with the understanding that such claims would automatically read into the claims the corresponding structure, and that proof of infringement would require that the defendant use the same structure or an equivalent thereof.
Then along come Halliburton where the Supreme Court declared the practice illegal when the novelty was in the one element. This threw into question the vast majority of claims to machines which at that time amounted to thousands of issued patents. Kinda of like Williamson, not so?
As we describe in our article, Hofmann Jr, Rudolph P., and Edward P. Heller III. “Rosetta Stone for the Doctrines of Means-Plus-Function Patent Claims, The.” Rutgers Computer & Tech. LJ 23 (1997): 227, the Milwaukee Patent Law Association proposed a new section to follow section 103 in the new act that read,
“Where the essence of the novelty of any claim is recited in terms of means or method for performing a specified function without the recital of structure or acts in support thereof, the claim shall not be invalid because of its functionality, but shall be construed to cover the corresponding structure or acts described in the specification and equivalence thereof.”
This proposal, with slightly altered language, was added to the drafting committee’s proposed amendments to HR 9133 in late 1950. On April 18, 1951, representative Bryson, with the help of house committee counsel L James Harris, first added the new section to HR 3760. At that time it read,
“An element in a claim for combination may be expressed as a means or step for performing a specified function without the recital of structure or acts in support thereof and such claim shall be construed to cover the corresponding structure, materials or acts described in the specification and abundance thereof.”
With a minor modification, this is the form that was actually enacted on May 12, 1952, HR 7794.
But note that the language was intended to enact the rule of Westinghouse, where proof of infringement in court would involve determining whether the accused device was the equivalent of the disclosed corresponding structure. The determining of an equivalent was not part of claim construction. Neither was there any intention that the rule of construction be used to determine patentability in the patent office.
But the intention was to preserve the validity of those thousands of patents that were using means-plus-function where some of them may have been, like Halliburton, functional-at-the-point-of-novelty. The scope problem was automatically addressed. The indefiniteness problem was put to one side. And it made no difference whether the particular element was at the point of novelty.
Regarding the problem of validity, this occurs if one does NOT choose to use 112(f) and Halliburton controls. If the claim is effectively a single means claim (old elements behind the colon), then the claim probably is invalid.
Ned,
Respectfully, that was a far too-long-winded reply that did not answer my question.
So let me ask again:
Why did Congress NOT write into the Act of 1952 the actual requirement of structuring claims such that the PON was separate from all else (as in the Jepson claim format)?
(and it is not lost on me that the case you and Stern flubbed so badly also had the court rebuking your rather hallucinogenic alternate-history doozy that 112(f) should somehow not apply in the Office)
How much did you drop in the 60’s?
I can understand a “point of novelty” in the context of the EPO’s “Problem and Solution Approach” to obviousness, where it is legitimate to identify a “realistic prior art starting point” reference D1 and craft the claim in “characterized by” form to distinguish the invention from the disclosure of D1.
But in a jurisdiction where identifying a “prior art starting point” reference is seen as impermissible hindsight, and therefore anathema, I don’t see how one can fairly perform a “point of novelty” enquiry. There is nothing new under the sun, and most non-pharma inventions are new combinations of features all of which are in themselves known. So in most cases, there is no “PON”.
At the EPO, the “characterized by” form is not obligatory because under the Problem and Solution Approach it is often not appropriate. But for those situations where it is “appropriate” it can demonstrate patentable non-obviousness like nothing else can.
For the 1952 US patent statute to have made it compulsory for the drafter of the claim to pick out and announce the “PON” strikes me as unfair to inventors, unworkable, and liable to bring the US patent system into disrepute.
anon, below you cast aspersions on the EPO “Guidelines”. These are there to guide the Examiners. Successive editions of the Guidelines draw down the evolving jurisprudence of the EPO Appeal Boards. Only the “established caselaw” of the Boards of Appeal makes it into the Guidelines. For Examiners, the Guidelines is like their 8i6le. If you want to know more about the evolving caselaw of the Boards of Appeal, consult the so-called “White Book”, a resource which retired English Court of Appeal patent judge, Robin Jacob, tells us should be the first thing to consult when it comes to the law of patentability under the EPC.
“But in a jurisdiction where identifying a “prior art starting point” reference is seen as impermissible hindsight,”
That’s not the driver.
Simply put, the law written by Congress is not the law as Ned requires it to be for his PON views.
It just is not.
It is that simple.
At 28 I asked a question. I got responses at 28 and 29 in the thread. I’m sorry chaps, but I have no idea how to answer your questions because in my jurisdiction we don’t do “indefinite” and we don’t do 112(f).
What we have is a system in which you can claim your invention how you like and getting a patent issued on it unless your claim founders during examination at the EPO.
How might it founder? Well, the EPO is supposed to object, over and over, until satisfied that Applicant has complied with each and every one of the requirements of patentability set out in the EPC.
What are those requirements? Art 52 eligibility, Art 54 novelty, Art 56 non-obviousness, Art 83 enablement and Art 84 clarity.
That’s the irreducible minimum. You cannot strike any of those out of any patent law.
It is also sufficient. What more do you need?
I suppose Art 84 clarity subsumes 112 indefiniteness.
The interesting thing about “clarity” of course is that no set of words can ever define an inventive concept with 100% clarity. Every claim ever issued by the EPO is unclear, indefinite, to some extent. The argument under Art 84 is therefore whether the claim is clear enough, whether it is fit for purpose. The purpose is to define the scope of protection. The public has to know whether it infringes or not. The English patent judges have declared that a degree of fuzziness at the boundary of the claim is not enough to invalidate the claim. That works in Europe because the scope of protection is defined by the Protocol on the Interpretation of Art 69 EPC.
And so, in Europe, whether any given functional language meets the clarity requirement of Art 84 EPC depends decisively on context, and the decision in any one patent application and claim text says nothing about what the decision should be in another claim, another application or another invention.
Night, Ned, thanks for asking, but I suggest you direct your questions to your colleague US patent attorneys, not me.
I have to say, MaxDrei, that that was one of your best posts ever.
Amazing then the result when you don’t try to force fit your paradigm into other jurisdictions and show some suitable respect for the differences in law.
And thank you for the comparative references. As I read Rule 43(1)(a), I wonder if it would be fair to characterize this rule as mandating the Jeppson claim format (which here in the States is but an optional form – and one that has been largely abandoned)….?
Americans often suppose that Jepson = c-i-t. False. The first part of an EPO 2-part claim recites those technical features shared with D1, the art reference that is the starting point for the analysis of the obviousness issue. The extent of the admission as to what is old goes no further than that. There is no admission that anything in this first part of the claim is known otherwise than in D1.
And, most important of all, only when all the features of the pre-characterizing part of the claim are disclosed in combination in D1, is it proper to recite them in the first part of the claim.
And so it is, that a c-i-t claim can point up non-obviousness better than most anything else.
Can you explicate?
I just don’t see a difference, let alone one that makes a pertinent distinction.
As I read rule 43, there is no mention of putting in the claim any such D1 source or reference to an actual source as you seem to be saying here.
Perhaps you are not aware of the U.S. jurisprudence concerning the fact that a reference admitted to be prior art by an applicant is deemed prior art even if the applicant was incorrect in her admission.
Two points
The 2-part form is not obligatory. It is fitting only when it fits to the EPO problem and solution approach to obviousness.
The Rule includes the words “in combination “.
It is like learning to ride a bike. Hard to explain. You have to practice. Then you come to wonder, how you could ever have had difficulty, to get the hang of it.
Two counter points:
I noticed that you have attempted to deftly dodge the point I made above concerning Rule 43 (no actual D1 reference), and that you have not yet explicated a difference or meaningful distinction.
The rule 43 is not obligatory only in the sense that the claim does NOT contain “those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, form part of the prior art”
To this second counter point I will fully grant that any claims that are fully and completely groundbreaking need no U.S.-Jepson-style two-part treatment. But tell me MaxDrei, what percentage of claims are of this nature versus the percentage that are actually improvement patents?
You are aware that here in the U.S. the percentage of improvment patents is extremely well North of 50% and the number of claims written in Jepson format is at the polar opposite of well South of 50%.
I would posit that the U.S. jurisprudence instead simply lacks an equivalent of Rule 43.
Rule 43 prescribes “in combination”. For us in Europe, that means not only just a single source document within the prior art universe but also a single substantiation (embodiment/Examople) within that single doc. Hence “D1”.
It is instructive to take a typical US-drafted claim and render it into c-i-t form relative to D1. Often, all you have left for the “characterizing part” of the claim is something airy-fairy like “serpentine” or “relatively thin” or “resilient”. the exercise thus provides an early warning system or a wake-up call, for how tough the obviousness issue might turn out to be.
If you think EPO-PSA is unfair to inventors, cling to the imperative, that basing the analysis on “D1” is out of order unless D1 is truly a “realistic prior art starting point” for the obviousness analysis.
Yes, of course, the USA lacks anything like Rule 43. As to whether or not that is a “good thing”, opinions differ.
MaxDrei,
You are repeating yourself again without explaining the jump to getting where you are at.
The phrase “in combination” in rule 43 is used to describe technical features of the claim. Somehow, you have arrived at using this phrase differently – to some item outside of the claim and to a separate prior art document.
You have now taken a further “step” and now talk about “rendering” a claim into c-i-t form – but that is quite different than the point that I am focusing on here: that rule 43 requires a certain form from the start for ALL non-breakthrough claims.
Also further, the attempted introduction of “if you think… is unfair” is misleading at best, as nowhere have I indicated ANY sense of “fairness” or “unfairness” into the discussion, and any such emotional injection is just NOT helpful in resolving the form of the claim (for all non-breakthrough claims) as dictated by rule 43.
Let’s keep a sharp focus uncluttered by emotion, shall we?
Anon, look again at the text of EPC Rule 43(1)(a). It speaks of features in combination in the prior art.
It is you who announce that:
“The phrase “in combination” in rule 43 is used to describe technical features of the claim.”
Evidently, you and I have diffeerent understandings of the meaning of Rule 43 EPC.
You write that:
“rule 43 requires a certain form from the start for ALL non-breakthrough claims.”
I don’t dispute that.
Now that you are “not disputing” the clarification I offered when you kicked up dust to my original question, let me ask it again:
…Rule 43(1)(a), I wonder if it would be fair to characterize this rule as mandating the Jepson claim format [for ALL non-breakthrough – or mere improvement claims] (which here in the States is but an optional form – and one that has been largely abandoned)….?
Rule 43 recites “wherever appropriate….”. I don’t know whether that fits with your notion of “mandating” but anyway it is the answer to your question.
If an Applicant wants to resist imposition of the 2-part form of claim, the way to do it is to plead that it is “not appropriate”. See the EPO’s MPEP (called “The Guidelines”) on how to argue the point.
I applauded you for your discretion at post 30, but now am perplexed by your unwillingness to take a stand here.
You want me instead to explore the items in your backyard…
Perhaps then a clue from you: which part of the guidelines shall I explore?
link to epo.org
I tried key word searching the alphabetical list, but Rule 43(1) does not come up.
Which part? Try Guidelines F – IV-2.3
Here is a Link:
link to documents.epo.org
…(btw, Part F, pages 44-45 is of little help to the pertinent question here – except mayhap the generous “wiggle room” akin to the “per se” and “as such” language elsewhere in your laws of paragraph 2.3.2.
One of the take-always here in the comparative law contrast is that U.S. Law lacks the PON aspect that Ned so craves.
I am just not seeing the supposed higher level of clarity in your system, but I am no expert in that system.
On top of the already “whimsical” nature of the “wiggly” writing itself, I find this on the wiki to add yet another layer of “squirm:”
According to several decisions of the Boards of Appeal of the EPO, the Guidelines are only general instructions intended to cover normal occurrences. An Examining Division can depart from them provided it acted in accordance with the European Patent Convention (EPC). It is normally desirable for Examining Divisions to act in accordance with the Guidelines, but these are not rules of law, so failure to follow a procedure set out in them is not in itself a substantial procedural violation. Nevertheless, the users of the European patent system may reasonably expect, in accordance with the established “principle of the protection of legitimate expectations” (also referred to as “principle of good faith”), that the Guidelines will be followed by the departments of first instance of the EPO.
From: link to en.wikipedia.org
I find myself less and less impressed with “the superior system.”
“Why is screw any better than means for helically attaching?”
Tell me Max what would you use if the term screw did not exist? That is the case for many solutions to problems in mechanical engineering and information processing (CS/EE). So, you need to claim all the solutions to a screw in a claim, but say screw does not exist?
Problem: Giant set of solutions for problems that those skilled in the art know in light of the specification. The only way to capture it is either 1,000 pages or a functional term.
That is reality! Reality. Reality. Anyone who does not acknowledge that is intellectually dishonest, unethical, and immoral and should not be practicing law or teaching at a university.
I should add too that I don’t think I have ever used the word module in a claim. You know why? Because I’ve worked for the best law firms and corporations in the world and attorneys identified this term as a possible judicial activism problem area about 10 years ago.
Module is used just like circuit.
Scope of enablement is the way to police claim scope. This “definite” structure business belays the reality of the vast number of solutions for problems that can only be specified using functional language like “screw” is really a functional term.
Actually, screw is very interesting. Joachim Martillo: you like word origins. Try to be honest about the word screw.
Screw probably referred to only a few solutions back 20,000 years ago. There probably were only a few types in the beginning. And then what happened Lemley? Well, little Mark what happened was many more solutions to the “screw” were invented, but the term kept being used to encompass all the solutions. So, now the term is really functional and encompasses 1,000’s if not 10,000’s of solutions.
It is hard to even write to people like Lemley because you can feel his oily self misrepresenting facts to try to wiggle out of this.
That is reality.
What does the word “screwdriver” mean?
Is not this word – purely “functional claiming”…?
A screw identifies a huge class of components.
A screw for attaching the back panel to a middle enclosure could easily and reasonably be viewed as a means+function limitation that would require consulting the specification for a determination of meaning.
Back in the late 1990s and early 2000s there was a lot of (patented — I think) innovation
1) that used helical attachment for modular component assemblies in computer server systems and
2) that really did not fit into the screw class of components.
BTW, a bolt + nut also performs helical attachment.
“Screw” is not a static term (for example see US Letters Patent 9050141), and the emphasis here is really just dust kicking over a different topic: the ladders of abstraction.
Sadly, that topic remains misunderstood and even the mention of the word “abstract” sends people away to clutch their pearls.
JM, that is an interesting point about the back panel, but my guess is the way that would be handled in a patent application is that the term screw (or a substitute) would be used and then the novel features would be claimed over the current understanding of what solutions a screw represents.
And isn’t what I just wrote the whole point? That is to discuss how to claim real solutions? Real inventions.
Module does convey structure within the context of a patent claim. This was a witch burning result. Shameful. I think it might be better to just abolish all patents and start over. Let the fed. cir. judges be put out to pasture. They are very good at shoveling sh$t and should try some real world application of what flows from their mind (don’t forget that their information processing occurs in the spirit world with their mind doing all the work and where all the equations are already there waiting for their minds to find them–right out of 1910.)
I’ve already told you that “module” does not connote structure in every art, and it has been mentioned as a nonce word in the MPEP since before this decision. The fact that you didn’t respond to that post and are still bullheadly saying it always connotes structure (because it doesn’t!) is unfortunate.
It is far less “bullheaded” and “unfortunate” than you imagine, given the context to which Night Writer’s discussion points go to.
It is just not a mystery as to which battle that Night Writer is engaged in, and if there be any propensity to over-apply the word out of context, my dear friend Someone, it would be you.
To think that this is somehow different than the propaganda battle that has rA ged on and on and on across threads of many subjects is to be obtuse.
Check out link to uspto.gov . Search for module.
Is there any one of the four particular cases that you would rather point to than the non-law-and-binding-only-on-examiners MPEP, Joachim?
After all – and as I am sure that you are aware – the MPEP is chock full of incorrect statements about what is actually law.
Some entity must provide guidance. What do you recommend?
I recommend that you do more than just depend on the MPEP.
(btw, I am still waiting for you to tell me which case you think applies)
A circular argument. She’s a witch! Why? Because it says so right here in the paper I wrote that says she is a witch!
Joachim, you should be ashamed of yourself for being part of the witch tribunals. When you come to the twilight of your life and look back, you will be ashamed. Lemley will never be able to look at his life after the things he has done.
It harms all our culture to be intellectually dishonest.
Someone: I think I did respond to you. I said as in Phillips it is within the context of one skilled in the art in light of the specification.
I also said that it is a circular argument to say something — in face as in reality—does not convey structure based on what the PTO says. That is a circular argument whereas elance.com is the reality of how the word is actually used for real purposes by real people skilled in the art.
I would go as far as saying that this opinion in view of elance.com should be enough to start impeaching judges or abolishing the fed. cir. They clearly have no interest in applying the law. They have turned into a court of Google criminals.
At 23.1.3 a nice question is posed:
“Why is screw any better than means for helically attaching?”
My first thought is that I know what a screw is but I don’t know what “helically attaching” means. Why “helical”? What is so special about it that it has to be recited in the claim? What property of “helical” is it, that makes it an invention?
Think about buttons and cuff links and rings on fingers. Or, come to think of it, any plug and socket combination. If the fit is so tight that they won’t engage without some component of rotation superimposed on the relative translational movement, is that “helical” during the “attaching” step?
I know for sure I have no “screw”. But do I have between my fingers something in the nature of “means for helically attaching”? And that “for”: is it to be construed as “intended for” or merely “suitable for” (because it might make a difference in the case of a plug and socket)? Methinks M+F at the point of novelty is often problematic.
Max, invention is a picture frame with four frames having shaped ends that might be arranged in an overlapping fashion, and which are held together with screws or the like, but angled at 45 degrees from any frame.
I claim:
1. 1. A picture frame, comprising:
four frame members, each having shaped ends such that the shaped ends may be arranged in an overlapping fashion when the four frame members are arranged in a square; wherein the four frame members are attached together at each corner when arranged in a square with an elongated member angled at 45° with respect to any frame, each elongated member having structure disposed upon its external surface in substantial contact with a respective frame member such that only rotational movement of the elongated member is permitted, the structure further adapted to cause the elongated member to insert into or to withdraw from a frame member upon rotation, depending on the direction of rotation.
Let us presume that picture frames with screws are old, that the overlapping ends are old, and that the point of novelty is the angle of the elongated member with respect to the frames. What, if anything, is indefinite about this claim? Secondly, why should 112(f) be employed?
Well Max, let me say that I described a screw functionally. But that is known structure. So why in the world would I be limited in any way to a particular screw disclosed in the spec when then invention has nothing to do with the particulars?
This is why the Federal Circuit jurisprudence in this area is and has been so wrongheaded. Functionally claiming old structure has never been a vice. Neither has functionally claiming elements of a combination where the combination defines new functionality between the elements.
The singular vice that is prohibited is claiming the Invention functionally — in terms of a result.
But, by not making distinctions, by ignoring the Supreme Court once again, the Federal Circuit continues to make a hash of patent law in the US.
What is so wrong-headed is Ned’s view that ANY court – even and especially the Supreme Court has authority to write patent law (through the mechanism of common law development).
The days of shared authority (by Congress to the judicial branch) to develop the meaning of the word “invention” – Ned’s ever tenuous tie to “the singular vice” ended in the Act of 1952.
At IPKAT there is a thread “The Supreme Court in Starbucks (HK); on adjectives and reluctance to embrace change” on which there is an Anonymous comment addressing a bit of common law judicial law writing dealing with passing off and goodwill (topics which may very well legitimately fall under the bonafide legal authority of judges to write common law).
There is in particular one comment in the decision for which the IPKat author expressed some confusion, and for which the first Anonymous poster deftly answered to dispel that confusion. That comment from the foreign jurisdiction decision was: “ Nonetheless, we should bear in mind that changing the common law sometimes risks undermining legal certainty, both because a change in itself can sometimes generate uncertainty and because change can sometimes lead to other actual or suggested consequential changes”
Perhaps more appropriately here on this blog (and for this jurisdiction), and according to the well-known precept that our patent law is statutory law and not common law, here is my rejoinder to that conversation:
link to img1.blogblog.com
Anonymous @12:57,
Nice job. You explain well how care with common law development should unfold.
This brings to my (American) mind, two tangential thoughts that might be a divergence from the intended direction of this thread. Please feel free to not take this different direction as anything but a comment on the US state of patent law.
1) The notion of writing with care because of the consequences of the change in law can not be stressed enough. Our own Supreme Court is quick to denigrate patent attorneys as scriviners gaming the rule of law as written by Congress and use this accusation as justification for its insertion into the law new caveats that are said to be “implicit” in the words of Congress, or of recent vintage are nakedly explicit additions. And yet, our Supreme Court lacks due care with its own scrivining, leaving terms undefined, and sweeping in broad “powers” for the judicial branch below that have no basis in the words of Congress, because, at least in the US, patent law was expressly set up per point 2), below.
2) In the US, we have a few strict rules of law to abide and limit the application of governmental power. We have a rule of law of limited federal authority, of requiring an actual case or controversy (no “opinion pieces” at the Supreme Court level), and a separation of powers doctrine that was meant to keep a balance and not let ANY one branch of our government (including the judicial branch) garner power in excess of the power explicitly doled out by the rest of our constitution. There are many points that flow from these foundational conditions, but the point explicitly here that your post reminds me of is that here in the States, our patent law is explicitly NOT a common law vehicle and thus, there is NO place** for common law change to patent law.
**I would place a caveat here in that our system does allow one branch to share limited authority with another branch with certain conditions met. Those conditions include a clear intent and limit of the sharing. For example, in our patent law, Congress has shared common law authority with the courts in setting remedies for patent infringement. Further, prior to 1952, our Congress had shared the power with the judicial branch to use common law evolution to set the definition of the word “invention.” Of course, our Congress reacted to a Court that had turned excessively anti-patent and removed this authority in 1952.
What is really weird anon is a you don’t know a thing about the wall of the court system in our government. You act as if the courts do not interpret the law. You act as if Marbury v Madison did not exist. You act as if you lived in some country other than the United States.
Regarding the ’52 act, it was Congress expressed intention to codify the law and not to change it. Clearly it was the objective of Judge Rich and certain members of the patent bar, particularly of the Milwaukee Patent Law Association which originated what is now 112(f), to overrule Halliburton. But that requires one to know the holding of Halliburton in order to know what they were trying to do and how to interpret 112(f).
Your interpretation of 112(f) is that it applies to any functionally expressed element in the claim. Because if that is not what you are arguing, I have no idea why you argue against me.
But your interpretation is absolutely totally absurd given that there intention was to overturn Halliburton.
Your complete insistence that we should not look at Halliburton to determine what the intent of congress was, is absurd. It is almost as if you are trying to find buried treasure that is marked on a map 25 paces from a certain landmark, while insisting we cannot first look for the landmark. That would be so ridiculous that it would have to be a joke.
It is a singular vice of both you and of the Federal Circuit not to look at the holding of Halliburton to determine what it was that Congress was attempting to do.
Should read – about the role of the court system in our country –.
Interpretation is just not the same as writing Ned.
Clearly, your view crosses the line and it is not I that lacks a proper viewpoint, but as it is you.
Post with possible double link stuck in the filter, so this might end up being duplicated…
What is so wrong-headed is Ned’s view that ANY court – even and especially the Supreme Court has authority to write patent law (through the mechanism of common law development).
The days of shared authority (by Congress to the judicial branch) to develop the meaning of the word “invention” – Ned’s ever tenuous tie to “the singular vice” ended in the Act of 1952.
At IPKAT there is a thread “The Supreme Court in Starbucks (HK); on adjectives and reluctance to embrace change” on which there is an Anonymous comment addressing a bit of common law judicial law writing dealing with passing off and goodwill (topics which may very well legitimately fall under the bonafide legal authority of judges to write common law).
There is in particular one comment in the decision for which the IPKat author expressed some confusion, and for which the first Anonymous poster deftly answered to dispel that confusion. That comment from the foreign jurisdiction decision was: “ Nonetheless, we should bear in mind that changing the common law sometimes risks undermining legal certainty, both because a change in itself can sometimes generate uncertainty and because change can sometimes lead to other actual or suggested consequential changes”
Perhaps more appropriately here on this blog (and for this jurisdiction), and according to the well-known precept that our patent law is statutory law and not common law, here is my rejoinder to that conversation:
link to img1.blogblog.com
Anonymous @12:57,
Nice job. You explain well how care with common law development should unfold.
This brings to my (American) mind, two tangential thoughts that might be a divergence from the intended direction of this thread. Please feel free to not take this different direction as anything but a comment on the US state of patent law.
1) The notion of writing with care because of the consequences of the change in law can not be stressed enough. Our own Supreme Court is quick to denigrate patent attorneys as scriviners gaming the rule of law as written by Congress and use this accusation as justification for its insertion into the law new caveats that are said to be “implicit” in the words of Congress, or of recent vintage are nAk edly explicit additions. And yet, our Supreme Court lacks due care with its own scrivining, leaving terms undefined, and sweeping in broad “powers” for the judicial branch below that have no basis in the words of Congress, because, at least in the US, patent law was expressly set up per point 2), below.
2) In the US, we have a few strict rules of law to abide and limit the application of governmental power. We have a rule of law of limited federal authority, of requiring an actual case or controversy (no “opinion pieces” at the Supreme Court level), and a separation of powers doctrine that was meant to keep a balance and not let ANY one branch of our government (including the judicial branch) garner power in excess of the power explicitly doled out by the rest of our constitution. There are many points that flow from these foundational conditions, but the point explicitly here that your post reminds me of is that here in the States, our patent law is explicitly NOT a common law vehicle and thus, there is NO place** for common law change to patent law.
**I would place a caveat here in that our system does allow one branch to share limited authority with another branch with certain conditions met. Those conditions include a clear intent and limit of the sharing. For example, in our patent law, Congress has shared common law authority with the courts in setting remedies for patent infringement. Further, prior to 1952, our Congress had shared the power with the judicial branch to use common law evolution to set the definition of the word “invention.” Of course, our Congress reacted to a Court that had turned excessively anti-patent and removed this authority in 1952.
At the end of every patent application, we need to add the following to fight the out-of-control Federal Circuit.
Done. I just sent an inventor a draft application with this clause.
This is the same as a comment I just posted on Gene’s site.
The Federal Circuit and the patent office are both pretending that cannot claim structure functionally. There is no statute and there is no case anywhere that I know of that is actually held this. Halliburton as clarified by Faulkner v. Gibbs held that a claim functional at “the exact point of novelty” is indefinite. That leaves open functionally claiming structure which is not novel, or which is not at the exact point of novelty. Indeed, Faulkner involved functionally claimed elements were the novelty was in the combination, rather than a particular element. The vice that the Supreme Court is seeking to prohibit is not functionally claiming structure but functionally claiming the invention. If a combination claim is equivalent to a single means claim because all the other elements are old and there is no new functional relationship between the one element that is new and the other elements which are old, then the claim is effectively a single means claim.
We should also note that §112(f) is permissive. It is by its own terms, optional. It is invoked by the applicant. If a claim that is functional at the point of novelty does not use the statute however, the claim may be invalid as functionally claiming the invention if the applicant does not invoke §112(f).
So what I am going to do henceforth is add a statement to the specification that states that the applicant does not intend, and specifically intends not to have his claims construed under §112(f) unless the claim at least uses “means for” or “step for.” This would end any debate, any legitimate debate that is, whether the applicant is intending to invoke the “optional” benefit of §112(f). A court would then have the find some case support for the proposition that one cannot claim structure functionally in order to invalidate a claim that is not functional at the point of novelty. That case support does not exist.
This, of course, does not eliminate the requirement that the claim be supported under 112(a). But when one is claiming known structure, or software, that is fully enabled by a description of what it does, then one should have no problem under 112(a).
Ned,
You are writing phantom law based on phantom history in your attempts to have the pre-1952 Supreme Court cases survive the changes in law as enacted by Congress in 1952.
Help me out Ned, where are the words of Congress that limit the law as you would limit to this phantom ONLY “point of novelty”…?
My version of 112(f) merely states “an element” and does NOT read as your twisted version attempts to read.
you know anon, your skill at getting things backwards is beyond compare.
I may not have phrased that precisely enough, but the meaning is clear Ned – the words of Congress do not support your view, and it is you that is seeking to twist and re-write history in order to attempt to change law into something that it is not. It is you that seeks to deny the fact that Congress was prompted to act because the Court had become an activist court, and an anti-patent activist court at that.
Just because you clench tight your eyes, history will not change or go away.
Anon, what is a twisted and perverse is your view of my view.
Please, please, please, address the point as explicated by Prof. Crouch’s coined term of Vast Middle Ground (keeping in mind the actual words used by Congress).
To me, Ned, you make good sense, with your “Unless….” caveat to be added to the specification. I do not see how it could fail to be effective.
And oh so simple!
Which (sorry to say) is probably a strong indication that it will fail to achieve the purpose you have for it. It is like in an exam, when the answer to the question strikes one as simple. All that means is, you haven’t understood the question fully.
What seems to me eminently sensible, from my vantage point somewhere else in the world, often fails to come to fruition because of complicating local factors that I don’t understand.
I had a discussion with a professor about this elsewhere. He construes the statute such that any attempt to claim structure functionally is covered. I must ask him or anyone why congress would enact such a statute if the holding of Halliburton/Faulkner limited itself to claims functional at the point of novelty, leaving old structure and new combinations open to functional claiming?
“I must ask him if“….
Ned is like the old man driving the wrong way down a one way street yelling at all the other drivers that they are driving badly.
If Congress wanted to address this “Point of Novelty” phantom, why did they not say so?
They did not.
Even the words they used in the congressional record say something else.
Sorry Ned, but you just do not have a case for your attempted carryover of pre-1952 Supreme Court common law cases into the post-1952 world.
Repeat after me: the point of novelty is the claim itself, read as a whole. This then takes care of the concern of single means claims and this then still controls the mere aggregation type of claims that make a mockery out of Malcolm’s pet theory and your over-preoccupation with the use of terms of function at any singular point within a claim.
Your contrivances and attempted “spin” of the plain words of Congress are just not needed nor are they appropriate.
Anon, the singular problem you have is figuring out what Congress intended to do. I have written the article on that – gone back to original materials that were provided to me and Rudy Hoffman by Judge Rich himself.
And you have clearly let your Belieb system twist your views.
Even more sad given the wasted opportunity of being close to the sources.
More the pity for you Ned than anything else, more the shame too that you are so wrong on the law, so wedded to your windmill chases.
An applicant can be his own lexicographer, but if he intends to reject the ordinary or epistemic definition of a term, doesn’t he have to provide his own meaning?
I have to suspect that in the deciding of Williamson someone just consulted the online definition of module in computer science.
link to thefreedictionary.com
Here is definition 4 from the very first cluster of definitions.
4. Computers A portion of a program that carries out a specific function and may be used alone or combined with other modules of the same program.
The above seems to describe “module” as a “software means”.
Joachim, there may be another problem here when module is construed as being software itself, as opposed to a machine, process, manufacture… Software is non statutory.
As opposed to a manufacture….
“We do not so hold”
Oops.
Since this cuts to the chase, it is worth re-posting on top:
Asked and answered Ned.
Quite in fact, it was in a conversation with you that I shared the direct words of Congress, the congressional record and the direct implication voiced by none other than Federico. Upon that point in our conversation, you abruptly abandoned the dialogue and refused to integrate the points in your mantra. In other words, and as you have repeatedly done when I have provided counter points that are simply too inconvenient for you, you ran away.
You now play the Internet style game of pretending the conversation never took place. Stop the silly shouting down games Ned. You may not like the fact that ALL combination claims have been opened up to the words of function in claims and you may not like the fact that old items can be claimed anew if so claimed in combinations, but those are the words that Congress (and not your dust-kicking accusation of Judge Rich) enacted.
To go one step further, and to highlight the silliness of Malcolm’s pet 101 theory, and the “over” concern here with your own “anti-combination” mindset, do keep in mind that we still have the doctrine that mere aggregations – a listing of elements that have no functional relationship to each other – fail the claim as a whole reading.
This is true whether or not any element in a claim sounds in a mental step or sounds in terms of being described with language of function.
This too avoids the goal-post moving and dust kicking attempts to move discussions of those claims in the Vast Middle Ground to discussions of PURE function or claims TOTALLY in the mind.
If we keep the focus of the discussion clear and if we avoid the purposeful obfuscations, it is abundantly clear that the likes of you and Malcolm want a different law to be enacted from the one that Congress actually enacted in 1952.
How and why do you keep going on, anon? You do realize you’re not going to change Ned’s (or MM’s) thoughts on these issues, right?
Now, I appreciate what you’re doing, as most of us don’t have time to spar with what is a tremendous barrage of single-minded rhetoric. But I wonder how you continue with the futility of it all.
“All tyranny needs to gain a foothold is for men of good conscience to remain silent.”
The fact that it is the same few inconvenient facts and points of law that Ned and Malcolm and the echoes refuse to integrate into the dialogue makes it easy to point out their fallacies.
They are counting on the act of repetition of their propaganda for it to have its desired effect of “appearing true” – just look at the new poster Genghis, and his “appreciation” of Ned’s twisted history…
PatentBob, anon does not discuss. He simply states that we are wrong without ever discussing the issues. When challenged, he will simply say that he has previously set forth his position.
Ned, your statement is absolutely false.
Patent Bob, see….
Lol u called it Ned! Course, it isn’t that hard to call what anon is going to say, his OCPD is like written all over his face.