Rembrandt v. AOL: Licensing and Indefiniteness

By Jason Rantanen

Rembrandt Data Technologies, LP v. AOL, LLC (Fed. Cir. 2011) Download 10-1002
Panel: Gajarsa (Linn), Linn, and Dyk

In 2008, Rembrandt sued Canon and Hewlett-Packard, among others, for infringement of Patent Nos. 5,251,236 and 5,311,578.  Rembrandt contended that Canon and HP infringed by marketing office products containing modem chips capable of implementing International Telecommunications Union protocol V.32.  The modem chipsets in the accused products are manufactured by a third party, Conexant.

At the trial court level, the district court granted summary judgment in favor of the defendants on the basis that because Conexant was a licensee of the '236 and '578 patent, Rembrandt's rights were exhausted and it could not recover from Canon and HP.  The court further held that claims 3-11 of the '236 patent were invalid for indefiniteness as they improperly mixed method and apparatus elements and that claims 1-11 (all of the asserted claims) were invalid for indefiniteness for failing ot disclose algorithms corresponding to functions set out in the claims.  Rembrandt appealed.

Patent Rights Exhausted Through Prior License
The patents-in-suit were originally owned by AT&T, who granted a license to Rockwell International in the late 1980's.  Under a 1995 side letter, AT&T also granted Rockwell the right to sublicense "to any future divested present business of Rockwell."   That license was subsequently assigned to a reorganized Rockwell ("New Rockwell"), and then to Conexant as part of a spin-off of its modem business.  The patents themselves changed hands several times through a series of divestitures and acquisitions until  finally owned by Rembrandt.

On appeal, Rembrandt argued that patent exhaustion did not apply because Conextant was not a valid licensee under the terms of the agreements.  Looking to the terms of the contact, the CAFC held that contrary to Rembrandt's argument, sublicensing did not require AT&T's consent as long as it occured as part of a divestiture of Rockwell's present business.  Nor did the general rule that "the law does not recognize any right of a nonexclusive licensee to assign the license or to further sublicense" apply because the contract expressly allowed for such sublicenses to be granted.   

The CAFC also applied a pro-licensee interpretation of the scope of the license.  In connection with the sublicense provision, the 1995 Side Letter limited that right "only to the extent applicable to products and services sold by the future divested business prior to its divestiture."  Rembrandt contended that this meant the specific models being sold by Rockwell in 1996, when it divested its semiconductor business to New Rockwell.   The CAFC disagreed.  Looking to the 1988 and 1995 agreements, the court noted that neither refers to specific models of modems, instead specifying product types in general, functional terms.  Thus, because Old Rockwell sold modems prior to the transfer to New Rockwell, and because New Rockwell sold V.34 protocol-compliant modem chipsets prior to the divestiture to Conexant, the court concluded that the sublicensing conditions were satisfied. 

Indefiniteness
The CAFC also addressed three separate indefiniteness issues.  The court first affirmed the district court's grant of summary judgment that claims 3-11 of the '236 patent were indefinite because they contained both apparatus and method claims.  "[R]eciting both an apparatus and a method of using that apparatus renders a claim indefinite under section 112, paragraph 2."  Slip Op. at 15, quoting IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005).  Rembrandt's only argument in response was to request that the court insert apparatus language into claim 3, from which claims 4-11 depended.  Unsurprisingly, the court declined to do so.  "[T]he correction suggested by Rembrandt is "not minor, obvious, free from reasonable debate or evident from the prosecution history.'"  Slip Op. at 17 (quoting district court opinion).

Rembrandt fared somewhat better on claims 1 and 2.  The district court invalidated these claims (as well as claims 3-11), construing them to contain several means-plus-function elements and holding them indefinite due to the patent's failure to disclose an algorithm able to perform the recited functions. 

The CAFC disagreed that two of these elements were drafted in means-plus-function form.  Although the elements contained the word "means," that created only a presumption that the limitation was drafted in means-plus-function format.  "This presumption can be rebutted if the claim limitation itself recites sufficient structure to perform the claimed function in its entirety."  Slip Op. at 19.  That determination involves a 'one skilled in the art' analysis:  "When determining whether a claim term recites sufficient structure, we examine whether it has an understood meaning in the art."  Id.  

Here, there was no dispute that two of the claim elements, "fractional rate encoding means" and "trellis rate encoding means" recited sufficient structure.  Rembrandt's expert testified that these terms were used in publications and published patents in the early 1990's and were self-descriptive to one of ordinary skill in the art, testimony that went undisputed by the parties.   Thus, these elements recited sufficient structure by themselves to overcome the presumption of treatment under § 112, ¶ 6.

The CAFC did recognize a dispute over two other terms, "buffer means" and "combining means."  Here, the panel appears to have agreed with the district court's interpretation of these elements being in means-plus-function format.  However, the panel could not agree that the specification failed to disclose algorithms for these elements.  Remrandt's expert testified that the figures, text, and table in the '236 patent disclose complete algorithms to a person skilled in the art; Canon argued that they did not.  Thus, the court reversed the district court's grant of summary judgment of invalidity of claims 1 and 2 of the '236 patent.

100 thoughts on “Rembrandt v. AOL: Licensing and Indefiniteness

  1. 100

    link to scholar.google.com

    That took me like 10 seconds to find. There’s this new thing called google scholar. And you can search by date, court, etc.

    SCHINDLER ELEVATOR CORPORATION and Inventio AG, Plaintiffs-Appellants,
    v.
    OTIS ELEVATOR COMPANY, Defendant-Appellee.

    First we note from the DC opinion that it doesn’t appear that indefiniteness of claims was an issue in this case. At least, it wasn’t an issue raised by anyone in this case. Then we note that the CAFC doesn’t appear to have done any real analysis of the claim beyond claim construction. Indeed, the claim shown appears to have been written by a 5 year old.

    I don’t see the relevance of this case no comment but you’re welcome to point it out for me. Is the relevance that the CAFC doesn’t always raise issues of lawl sua sponta in cases where they are not argued before them?

    Finally it is worth noting that even though the ta rd that wrote those claims appears to have tried to piggy back in some functional/method step limitations he did such a bad job writing the claim that this is the least of his worries if someone were to call him out. And, in any case, the functional/method step limitations are most certainly not stand alone method steps which are really what is at issue in the vast majority of IPXL like cases.

  2. 99

    “She did not charge $100/hr for her advice as 6 says he does. ”

    Well i don’t charge that much during pros.

    “It’s main advantage is that it makes it nearly impossible for examiners to enter restriction requirements. ”

    It is no more or less hard to restrict when you use this method than if you write the “dependentlol” claim out long hand.

    “If it’s clean, there is no way the method of using the apparatus cannot also be clean. ”

    And that matters because…? Different classifications etc. are still going to allow for a restriction where it would have been proper before, and not allow one where they wouldn’t have been proper before.

    That said, he is probably right that many examiners do not issue a restriction where they otherwise would have because they don’t know how to. That is because like I said, this seems to be a new trend in claim drafting that hasn’t been solidly smacked down by the courts just yet.

  3. 98

    ping, take a moment then to explain the holding of Muncie Gear. It involves this very issue, but the import of the holding has always been debated.

    I just would like your views on this. This is not a trick question.

  4. 97

    I’ve had this exact same situation. I proposed a new Claim z drawn to a method of using the apparatus of [allowed] apparatus Claim x — I saw z as independent because it changed statutory classes.

    Nope, said the examiner, z is a dependent claim because [and, apparently, only because] it referred back to x. She let me have z with no extra charge for z being independent. She did not charge $100/hr for her advice as 6 says he does.

    I have used the technique since and have never had an examiner give me a problem. It’s main advantage is that it makes it nearly impossible for examiners to enter restriction requirements.

    If you claim “a method of using the apparatus of Claim 1, said method comprising . . .” , you likely won’t see a restriction. They have to search Claim 1. If it’s clean, there is no way the method of using the apparatus cannot also be clean.

    But if you claim the exact same subject matter by saying “a method of using an apparatus wherein the apparatus” [and then describe the apparatus of Claim 1 without referring to Claim 1] — slam, bam, thank-ya’ mam, you’re going to draw a restriction. It looks to the examiner like they’ll have to do more work if you describe the apparatus all over again rather than just referring to Claim 1.

  5. 96

    6, I agree with you that a claim changing statutory class does not limit the parent claim and therefor is an improper dependent claim. The present case add a lot of fuel to that fire.

    Now consider an independent claim referencing a process claim and claiming an article made by the described process. This used to be necessary once upon a time when an article produced by a process was not an infringement.

    The claim is a proper claim; still it violates Section 112, p. 4. So I believe the best conclusion is that it is independent.

    I think the key is the change in statutory classes.

    Now, the way you charge fees for such claims is something else entirely.

  6. 95

    Is this a serious question? What is new matter?

    Ned, not only do you not answer my questions, leave points I make hanging out there without reply, now you are asking nonsensical questions.

    Up the meds, please.

  7. 94

    Is dat right Ned? Does claim 2 not depend upon claim 1? If claim 1 changes does not claim 2 also change?

    Ned, please. Just go ahead and tell us how courts will smack down that “argument” and how you think that’s how it “should be”.

  8. 93

    Max, they are claiming a different invention when they switch from banana to orange. There is a case that just came out today that discusses this very problem in the reissue context. See, IN RE SHAHRAM MOSTAFAZADEH.

  9. 92

    Malcolm, assume the algorithm is well known, it defines a program in a GP digital computer, or circuits in an analog computer. A programmed computer or circuits are both phyiscal and are both machines.

    The problem is the Feds have skipped the recital of structure in recent decisions. But, if you go back to Alappat, IIRC, I think they did say it was structure.

    Circling back to articles having programs, they are components of a machine — a digital computer. They cannot function as a computer by themselves, but they can when joined with a computer in a functional manner.

  10. 91

    Continuing the laughs, I can envisage a claim 2 along the lines of: “2. Bowl of fruit as in claim 1, in which the banana is replaced by an orange.” Manifestly, that claim is “dependent” on claim 1 (for it to have any meaning). Nothing wrong with its clarity, sufficiency, novelty or non-obviousness either. Just because it is invalid in the USA does not mean that it is independent of claim 1. And it might well be infringed by carefree orange-lovers even if banana-lovers all over the world can laugh at it.

  11. 89

    ping, the specification as filed includes the claims. They point out the invention, identify it.

    The problem comes when one claims different inventions after filing and the spec give no hint that such were inventions at all. Now you may think that that is just fine and dandy. Others might think you are adding new matter.

    What is your view?

  12. 88

    Max, I see the examiners make the argument that adding a dependent claim such as 2 could broaden claim 1, but I don’t buy it.

    Under US statutory law, a depend claim must further define… It must narrow. It cannot broaden. If it does, even by implication, it, and not claim 1, is invalid.

    I think if push came to shove in Euroland, the courts there would hold the same.

    Again, just for laughs, I actually had a case, in court no less, where we were sued on claim 2, but did not infringe claim 1. Under US law, that is impossible. So claim 2 was invalid on its face.

  13. 87

    Thank you Cy. I see your argument on enablement and imagine that, on that issue, there is not much between us. What intrigues me is whether in reality the Markush claim 2 has any effect on the scope of independent claim 1 ie whether there is in reality anything of substance in the much-vaunted Doctrine of Claim Differentiation (that so fascinates trainee claim drafters, and drives their writing of dependent claims).

    But your concept of “new matter” does indeed differ from mine.

  14. 86

    But the scope enabled by the specification is that of claim 2, and no more than claim 2.

    Really? Even if the specification plausibly explains that there is some characteristic of halogens that makes the invention “work,” and the invention is described in a manner that clearly shows how any halogen can be substituted for another?

    You must have a different definition of “enabled” than I do.

    But in any case, back to your original question. If a dependent claim is added in re-issue that is effective to broaden the interpretation of a term in claim 1, it probably is new matter, rendering moot the question of whether it is a “broadening” or “narrowing” amendment.

  15. 85

    Ok chaps, here goes.

    Claim differentiation doctrine. Recite in claim 2 all known halogens, just in case a new halogen is invented. Claim 1 must embrace more than all known halogens, therefore claim 1 embraces the new halogen. (If you don’t like “halogen” substitute it with “biologically compatible stent metal” or anything else where there are only a few materials that “work”).

    Invalidity. Claim 1 must be wider than claim 2. But the scope enabled by the specification is that of claim 2, and no more than claim 2. Claim 1 must be invalid, to the extent that it purports to enclose more subject matter than what is enabled.

    Carry on.

  16. 84

    Perhaps you could explain why your claim 2 is invalidating with respect to claim 1. I’m obviously missing something. Aren’t F, Cl, and Br examples of halogens?

  17. 83

    I suppose that the writer of them sees them as having a broadening effect on claim 1, whereas I see them as having (here in Europe) an invalidating effect on claim 1.

    Utter madness. Maxi – a dependent claim does not “broaden” the independent claim. Ever.

    Claim one is as broad as it is – the dependent claim is a subset of that claim.

    Simple set theory. If you are confused (and it seems thus), take a day or two or as many as you need to refresh your ist grade curriculum.

    Geesh.

  18. 82

    It’s not? Judges don’t look to “legislative intent” when interpreting laws? Then how did we get to method means with a machine or that causes a transformation?

    Judges can’t pesto a similar curtsey upon inventors and their human representatives and look at prosecutorial intent?

    Indeed, perhaps they should.

  19. 81

    6: It might be an objection but I don’t think so.

    MPEP 608.01(n)
    “A claim determined to be an improper dependent claim should be treated as a formal matter, in that the claim should be objected to and applicant should be required to cancel the claim (or replace the improper dependent claim with an independent claim) rather than treated by a rejection of the claim under 35 U.S.C. 112, fourth paragraph. ”

    If you spent more time reading the Manual and less time making up patent history, you might be worth “100$” [sic] per hour some day. Not some day soon, but some day.

  20. 80

    This whole subject of “narrowing” and “broadening” interests me. Suppose claim 1 recites “halogen” and claim 2, dependent on it, recites that the halogen is chosen from the group consisting of F, Cl, Br (etc). I see such claims all the time. I suppose that the writer of them sees them as having a broadening effect on claim 1, whereas I see them as having (here in Europe) an invalidating effect on claim 1. Would the addition of such a dependent claim count at the USPTO as a “broadening” amendment?

  21. 79

    And the decision regarding claim 3 was clearly not appropriate under the can-Les-tell-more-or-less-equivalently-what-the-drafter-meant standard. I have no doubt that you know what the drafter meant, but that’s not the current state of the law. Perhaps it should be.

  22. 78

    i made a paste mistake in the first line of the above reply. it should read as follows:

    you said: “Someone needs to reread that decision and that someone is u. ”

  23. 77

    you said: “reciting both an apparatus and a method of using that apparatus renders a claim indefinite under section 112, paragraph 2”

    i say: you need to follow your own advice…

    first, to make clear, i was no attempting to discuss *each* indefiniteness ground cited in the cafc decision – i was merely referring to the “hybrid” claim ground. the cafc decision merely states that it is proper to reject a claim that recites an apparatus and a method (the language that you quoted was from the bottom of page 15 of the decision). my comment was that what makes hybrid claims indefinite is determined on policy grounds (where i stated what the policy is).

    as to your texas instruments citation, that was not the case to which i was referring. when i stated *last* year that meant that the decision was handed down in 2010. the case you cited was from 2008. the 2010 case to which i referred concerned a system that allowed people to remotely call an elevator using wireless transmitting gizmos. i don’t recall the case citation off the top of my head but one of the parties was otis elevator.

  24. 76

    “Since when does an examiner acquire the power to be rejecting on the basis of objectionable matter, “bucko.””

    It might be an objection but I don’t think so. I actually might have told them in the action that they can view it as an objection if they wish, but that the issue is 112 4th para. I forget, it has been awhile and I don’t have those actions in front of me. But you’re probably thinking of something else which is objectionable. This is you not following the statute, and that is usually a rejection, so far as I’m aware, bucko. It is a matter of substance and it would seem to be appealable.

    To be clear, I “acquired” the “power”, when I was appointed as an examiner, an agent of the director. We notify you of why we think you don’t get a patent. If we send something out that you don’t like, you get to tell us about why you think differently. I also draw substantial strength from a cooperative spe.

    Again, keep in mind that the MPEP is not substantive lawl.

    “And even objecting may be going too far, depending on the case. The MPEP is concerned about the situation where the dependent claim is improper because it is inconsistent with the parent claim. ”

    That’s a different issue. There are two distinct issues here which you’ve brought up, one is objectable and the other I reject over.

    “Example — Claim 1: a red cow bell. Claim 2: the cow bell of Claim 1 wherein said cow bell is blue. This is clearly an improper dependent claim because it is self-contradictory. I’m sure even you can see that. ”

    Mhmmm, and occassionally I do have to object to claims like that.

    “There is very scant guidance as to how to handle a claim that refers to another claim but does not limit it, does not broaden it, and is not illogical. ”

    Except for this thing called the “statute”. 35 USC 112 around abouts of the 4th paragraph.

    “The only time the CAFC has weighed in on para. 4 was in the Lipitor case in 2006 ”

    Yeah because the issue was settled a long time ago, read your history books back far enough and you’ll see. Who knows who spread this most recent nonsensical drafting practice around? Probably that supar genious Chisum. Except he forgot to tell everyone that his advice was contradicted by the statute. I could totally see that guy doing that. Like in his most recent rant against Bilski etc.

    “Essentially, the dispute we’re having is as to the definition of “dependent form.””

    You’re right, in fact I’m pretty sure I all but told you that point blank in the last post. Now go read your history about how dependent claims came to be. I already have. And no, I did not fav it. Oh and btw, stop reading the statute in some wack arse fashion, the sentence is very easy to read, clear you mind and take it one word at a time.

    “Would I call such claims “independent?” Maybe. A better term would be “non-dependent.” ”

    Ok, then you get a rejection under 112 3rd paragraph then. lulz. So far as I can see:

    “A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.”

    You don’t have permission to write claims in “non-dependent” form. Even if such an imaginary monster existed.

    In any case, I’m through discussing it with you, you may have the last word. You’re about 1/2 of the way to being convinced and indeed, a quick phone call would be all it would take to finish you off. If you desire such a call you may schedule an appointment. My standard fee will apply 100$ per hour, one hour minimum.

    examiner6k@yahoo.com for scheduling.

  25. 75

    6: “See I simply reject claim 2 under 112 4th para”

    You need to go back to examiners’ school if you are rejecting claims under para 4 as being in improper dependent form. MPEP 608 something-or-other says unequivocally that they are to be objected to. Since when does an examiner acquire the power to be rejecting on the basis of objectionable matter, “bucko.”

    And even objecting may be going too far, depending on the case. The MPEP is concerned about the situation where the dependent claim is improper because it is inconsistent with the parent claim.

    Example — Claim 1: a red cow bell. Claim 2: the cow bell of Claim 1 wherein said cow bell is blue. This is clearly an improper dependent claim because it is self-contradictory. I’m sure even you can see that.

    There is very scant guidance as to how to handle a claim that refers to another claim but does not limit it, does not broaden it, and is not illogical.

    The only time the CAFC has weighed in on para. 4 was in the Lipitor case in 2006 — Pfizer v. Ranbaxy. But that was not the same situation as my church key example. Pfizer was where Claim 2 depended from Claim 1 and Claim 6 tried to depend from Claim 2 but actually converted Claim 2 back into Claim 1.

    Essentially, the dispute we’re having is as to the definition of “dependent form.”

    Your definition is any claim that mentions another. I am reading para 4 to define dependent form to mean any claim that both mentions another and further limits it. All other claims are not dependent.

    Would I call such claims “independent?” Maybe. A better term would be “non-dependent.”

  26. 74

    Here’s a hint – I said nithin in the first example about validity/invalidity – the claim was not in comparison to anything else cept itself. Cause O the flaw, that claim had ZERO scope.

    Try to keep the terms straight (check your meds).

  27. 73

    But I hardly think that is the proper test.

    That’s nice – but what you think just dont matta, now does it?

    Now there be a differnce in your second question, now aint there Ned-O? Ya aint any more in “my theory” are ya?

    Try ta see the difference without moving the goal posts.

  28. 72

    No, 6, the claims do not identify differences – they ARE different – and that’s a BIG difference.

  29. 71

    ping, if the error identified is the failure of the claim to include “means for,” under your view the claims is always broadening because its scope went from unenforceable to enforceable. But I hardly think that is the proper test. Under your theory, if one added limitations to avoid prior art, the claim would be broadening because the claim without the new limitations would be deemed invalid. Its scope without the limitations was “zero” in your parlance. Therefore, adding scope (from zero to some scope) by narrowing the claim is broadening.

    Your reasoning ping is upside down at times. Perhaps this is one of those times.

  30. 70

    The scope of the claim is identical as “means for” was always there in intention.

    Utter madness. The scope of the bogus claim is ZERO.

  31. 68

    Why not try that sometime BB, and let us know how it turns out. Be sure and have someone argue specifically that against you and have someone specifically argue your position. I can’t wait for the lols.

  32. 67

    “Those are method claims, at least in the US.”

    You try to tell people this but they don’t listen until they’re on the recieving end of a rejection and possibly an irate client.

    “Hmmm. Really? Seems like you’d run into an inherency problem there.”

    Same as above.

  33. 66

    “There is no requirement that the spec identify differences between the invention and the prior art. ”

    No but there is a requirement that the CLAIMS “identify differences” between the invention and the prior art, i.e. be different from the prior art.

  34. 65

    Malcolm another point is that the patent owner cannot seek reissue to fix a claim held invalid by the courts. Since that has happened here, a reissue is out of order.

    Clearly, the PO should have sought reissue here to fix the claims before proceeding to file suit. If they were DJ’ed, they should have immediately sought reissue to fix the claims and ask that the court suspend pending.

  35. 64

    So then your position is that claim 2 is an independent claim?

    “It says that if there is such a reference back and if there is a further limitation, then it’s dependent. ”

    Um no, it says that “IF” it is in dependent form THEN it SHALL contain certain things. More precisely it leaves out the IF and simply references all claims of a specific form and then states that they shall contain something. After it is through making commands it tells us how to construe a dependent claim.

    Get your logical if > then’s corrected first and brush up on your 112.

    link to uspto.gov

    “That’s not what it says.”

    I think you need to read the statute a bit more carefully bucko.

    “If it’s not dependent, then para. 4 is irrelevant.”

    Ok, so tell us more about this independent claim. And also, be sure to tell us how this jives with the historical practice of dependent claims and how a court is going to smack your nonsense out of the park when you argue it. Put a lot of emphasis on that last part.

    To be clear, the rejections I issue state that the claim is drafted in improper dependent format. It depends from the previous claim due to it containing a reference thereto (which is the definition of a dependent claim from way back in the caselawl) and then it makes a command that any claims drafted in such a way do a specific thing (the reason the lawl mandates this specific thing is because people used to try this instant kind of nonsense way back in the dark ages, do your research). You failed to do that thing. Your claim is rejected as being of improper dependent form.

    Also, I note that even in claims where they do tag on some small limitation to the previous subject matter in a case like your exemplary one I still reject them under 112 4th for doing even more than the statute commands that they do. The statute commands that they specify a further limitation on the subject matter previously claimed, not start anew, give us whole new subject matter, make a reference to the previous claim and then also specify a further limitation on the subject matter previously claimed. Although I have given it thought and I’m willing to budge on these kinds of rejections since there is a possibility that it should be fine as to 112 4th. I’d still keep an eye out for stat class mixing though.

  36. 63

    I think the problem may not not broadening, but whether the reissue is for the same invention.

    But you do have a good point there. When you are fixing an error in the claims, adding something clearly intended to be there, then I suggest you are not broadening, but fixing. The scope of the claim is identical as “means for” was always there in intention.

  37. 62

    6, has explain it to you Les.

    Can I add the following:

    Claim 3 can be simplified as this:

    appartus; and

    method of using apparatus.

    Who infringes?

    Does the maker of the apparatus infringe?

    Does the seller of the apparatus infringe?

    Does the importer of the apparatus infringe?

    Does the user of the apparatus infringe?

    I think the user of the apparatus does infringe. But, does the seller infringe directly or under 271(b) or (c)?

    It is questions like these that complicate matters.

    However, since the only way the claim can be infringed is by use, the claim really is a method claim. If it were so interpreted, it would be valid, IMHO. But we have the problem that the claim itself says it is an apparatus. Thus we have a problem.

    Now, just suppose the claim itself said it was for a method, but the only novel subject matter was in the apparatus?

    What then?

  38. 61

    6, I digress only to illustrate the point, because it is and was necessary.

    Repeal Section 112, p. 6? That was the recommendaton of the ABA. It was my idea as well for the AIPLA, but others were afraid that MPF for old elements be imperiled by a Federal Circuit who could misinterpret the reason for the repeal.

    But I still think the risk acceptable. Alterantively, we could modify Section 112, p. 6 to limit its use only to claiming old elements or steps.

    Get over it? Not likely. We need another Supreme Court case as the Feds are way out there so long as Rader has influence. We need the Supremes to reaffirm Halliburton, and to cabin the proper use of Section 112, p. 6 to only old elements. In other words, if the patent owner/applicant argues that the function of a means plus function element is new, or that the corresponding structure is new, then the claim is invalid/and or has to be limited to the corresponding structure.

  39. 60

    BB You can have identical structure but used in a different way to produce a different effect.

    Or you can have identical structure used in a different way to produce the same effect.

    Those are method claims, at least in the US.


    Or you can have identical structure used in the same way to produce a different effect.

    Hmmm. Really? Seems like you’d run into an inherency problem there.

  40. 59

    Not accurate. You can have identical structure but used in a different way to produce a different effect.

    Or you can have identical structure used in the same way to produce a different effect.

    Or you can have identical structure used in a different way to produce the same effect.

    You just can’t have the same structure used in the same way to produce the same effect.

    KSR.

  41. 58

    “See I simply reject claim 2 under 112 4th para. There is no further limitation on the subject matter claimed in claim 1 in claim 2.”

    You’re wrong. Claim 2 — the one to pulling the church key out of the bra — cannot be rejected under para 4 because Claim 2 is not a dependent claim.

    Para 4 doesn’t say that every claim that refers to a previous claim is dependent. It says that if there is such a reference back and if there is a further limitation, then it’s dependent. You are twisting para 4. to make it read that if a claim refers back but does not further limit then it’s non-statutory. That’s not what it says.

    You are arguing mutually exclusive positions. You are arguing that Claim 2 is not dependent because it doesn’t further limit, but then you are saying it can be rejected under para 4. If it’s not dependent, then para. 4 is irrelevant.

    There is no rule or statute that prohibits one claim from referring to another. The statute says that if there is both i) such a reference back, and ii) further limitation of that subject matter then the second claim is dependent.

    “My position is slowly but surely gaining traction. People in the PTO might be slow, but they eventually see the ridiculousness of these new fangled claim abominations.”

    Can’t believe no one has called you on your lack of understanding of the statute.

  42. 57

    Sorry ned I only meant for my initial response to be in response to the post above it in so far as that post was relevant to the topic at hand. Not in so far as that post was going off on some tangent that is completely 1. irrelevant and 2. ret arded. Yes, we could have all claims of a general category (like car parts) written the same way with the difference only being in the spec. That is the insanity of 112 6th. GET OVER IT ALREADY. If you want to join me in being against 112 6th para even existing then cool but stop bringing up these “preposterous” results that are nothing more than the result of a “preposterous” statute. Pretty please. Jez.

  43. 56

    . A data transmitting device for transmitting signals corresponding to an incoming steam of bits, comprising:

    first buffer means for partitioning said stream into frames of unequal number of bits and for separating the bits of each frame into a first group and a second group of bits;
    fractional encoding means for receiving the first group of bits of each frame and performing fractional encoding to generate a group of fractionally encoded bits;
    second buffer means for combining said second group of bits with said group of fractionally encoded bits to form frames of equal number of bits;
    trellis encoding means for trellis encoding the frames from said second buffer means; and
    transmitting the trellis encoded frames.

    If I wanted to fix the last bit in this claim to make it an apparatus limitation, would I file a narrowing or broadening reissue?

  44. 55

    Les There is no requirement that the spec identify differences between the invention and the prior art.

    Yes, but if none of the structures described in the spec are different from the prior art structures, then there is no invention — unless of course the invention is a method.

  45. 54

    See I simply reject claim 2 under 112 4th para. There is no further limitation on the subject matter claimed in claim 1 in claim 2. My position is slowly but surely gaining traction.

    As well it should. It makes sense.

  46. 53

    What does a “fractional encoding means” look like? Please describe it, structurally, i.e., what are the approximate dimensions in a typical “data transmitting device” of this kind?

  47. 52

    This is America. The spec has to say how to make and use the invention so one of ordinary skill in the art could make and use the invention without undue experimentation. There is no requirement that the spec identify differences between the invention and the prior art. Its the examiner’s job to show why there is no difference and its the applicants job to show where the examiner is wrong.

  48. 51

    I thought we were talking about the posting regarding a court case and whether the decisions reached were appropriate.

  49. 50

    My mistake, Les. I thought we were talking about the law as it is, not the law as you wish it was. Carry on.

  50. 49

    There’s is not practical difference between the two possible corrections I recited. They would amount to equivalents. The claimed device for transmitting includes a means for transmitting ….surprise surprise surprise…..

  51. 48

    The prior art devices presumably don’t have structure that includes:

    a first buffer means for partitioning said stream into frames of unequal number of bits and for separating the bits of each frame into a first group and a second group of bits;
    fractional encoding means for receiving the first group of bits of each frame and performing fractional encoding to generate a group of fractionally encoded bits;
    second buffer means for combining said second group of bits with said group of fractionally encoded bits to form frames of equal number of bits;
    trellis encoding means for trellis encoding the frames from said second buffer means; and
    [a transmitter].

    And that was just from the claims. That wasn’t so hard, was it?

  52. 47

    We’ve got a couple decades of case law on that, Les (including Malcolm’s favorite case). We can all speculate on what the applicant meant, but unless there’s only a single, indisputably obvious correction, then the claim is invalid. You just recited two possible corrections.

    The patent attorney gets paid pretty good bucks to “notice” typos.

  53. 46

    “oh, the transmitting typo… fine… because the neither the examiner not the applicant noticed the typo, the claims should be invalidated….”

    Les I agree with you that it was obviously a typo. However, as the court noted, redrafting the claim in such a way as to change the substance is improper. Indeed, you will note that the patentee did not bother to petition the PTO to fix the typo prior to going to court, one suspects that this is because they knew good and well that it would be a substantive change.

    Regardless of the fact that it was a typo in this claim, the legal premise of the rejection is still good.

    “one of ordinary skill in the art would not understand that the system claim was meant to recite a means for transmitting or that the trellis encoding means was for for trellis encoding and transmitting…. ”

    One of ordinary skill in this art now has ordinary skill in claim redrafting as well? MMMMMmmmm, come on lester, now you’re pushing it. Note that what was meant to be recited is quite irrelevant lester.

  54. 45

    “If you claim: “Claim 2. A method of using the apparatus of Claim 1, said method comprising the steps of . . . “

    that’s perfectly legitimate and yet both a method and an apparatus are “recited.” In fact the PTO (incorrectly) considers Claim 2 to be a dependent of Claim 1.

    I take issue with those types of claims. And I also take issue with the validity of the position of them being a dependent claim as you mentioned. The issue has come up more than once for me and in all cases the applicant either redrafted his claims, abandoned, or I didn’t care to duke it out with one of my old spes over this issue and just let it slide.

    “Claim 1. A beer can opener.

    Claim 2. A method of opening a beer can, said method comprising the steps of: (a) pulling the can opener of Claim 1 out of your girlfriend’s bra; and (b) using the can opener to pry a hole in the can”

    See I simply reject claim 2 under 112 4th para. There is no further limitation on the subject matter claimed in claim 1 in claim 2. My position is slowly but surely gaining traction. People in the PTO might be slow, but they eventually see the ridiculousness of these new fangled claim abominations.

  55. 44

    oh, the transmitting typo… fine… because the neither the examiner not the applicant noticed the typo, the claims should be invalidated…. yeah thats reasonable and fair…one of ordinary skill in the art would not understand that the system claim was meant to recite a means for transmitting or that the trellis encoding means was for for trellis encoding and transmitting…. yeah that would really have stumped one of ordinary skill in the modem art.

  56. 43

    6, you responded to a point I made to Malcolm about MPF and old elements. The entire topic was MPF and old elements. It had nothing to do with intermixing apparatus and process. You read into my post something I did not say.

    Back to Halliburton and Donaldson:

    Assume all cars have the same basic structure: chasis, engine, wheels, brakes, fuel tank, steering.

    Assume next that every automotive patent can disclose the same basic overall structure, descibing an improvement in one of the above listed components. Under Donaldson, one can claim every such invention using the exact same claim. Every standard car element could be set forth in means plus function, including the element where the corresponding structure was new.

    Now, you may think this preposterous, and it is. But that is what Donaldson actually authorized when the claim language itself does not have to define the novelty.

    Next you might say that the PTO would never issue such claims. I can respond, but they have!!!!! I can give chapter and verse over a whole series of cases where they were in fact issuing claims where the novel structure appeared nowhere in the claim and the claims nominally covered every apparatus in the class.

    Talk about abuse. Those patents were abused.

  57. 42

    “transmitting the trellis encoded frames.”

    Notice the “ing”.

    Did you even read the decision yet? Seriously? They went over this all in some detail. At least the did at the DC level.

  58. 41

    “However, in this case the functional term is not connected to any particular part of the invention. ”

    AKA a stand alone method step. That is, in this case the “functional term”, aka the last limitation of the claim isn’t really a “functional term” it is a stand alone method step “term”. That is, it is not a description of what the device does, it is a description of what is occuring right now.

  59. 39

    A data transmitting device for transmitting signals corresponding to an incoming steam of bits

    How is this data transmitting device structurally different from the prior art devices?

    The claim doesn’t say. Neither does the spec.

  60. 38

    Your answer as to why the claim is not invalid is because you confuse functional language with method step language. I understand lester jester. But see, courts take a rather dim view of such confusing going on inside their courtroom during claim construction. Note also that the patentee in this case did not even try your completely wrong argument because he recognized it as the loser argument which it is.

    Bottom line: learn the difference between functional limitations and method step limitations. I’ve posted this difference for you probably upwards of 100 times now on this site and others so you’ll excuse me if I charge you for any further instruction, right?

  61. 37

    As noted by Ned and BB on the other post, Gajarsa messed this opinion up real good.

    But he was right to bounce Claim 3 as mixed classes; he just stated it poorly. Here is his problem: “[R]eciting both an apparatus and a method of using that apparatus renders a claim indefinite under section 112, paragraph 2.”

    What does it meant to “recite?” Well . . . any mention is a recitation.

    If you claim: “Claim 2. A method of using the apparatus of Claim 1, said method comprising the steps of . . . “

    that’s perfectly legitimate and yet both a method and an apparatus are “recited.” In fact the PTO (incorrectly) considers Claim 2 to be a dependent of Claim 1.

    And I’m not sure I agree with the distinction 6 makes as to whether the classes separated by the colon. Try this:

    Claim 1. A beer can opener.

    Claim 2. A method of opening a beer can, said method comprising the steps of: (a) pulling the can opener of Claim 1 out of your girlfriend’s bra; and (b) using the can opener to pry a hole in the can.

    Perfectly good claim “reciting” two distinct statutory classes on the same side of the colon.

    Again, PTO considers Claim 2 to be a dependent of Claim 1 because it refers back to it.

    As to the MEC case cited by 6, method Claim 1 of that case “recites” both a pipelined processor and a bunch of steps, and Gajarsa had no problem with that. He should have. Rarely have I ever seen such a brain-ded claim.

  62. 36

    My hat is off to all of them (SEALS, Army Special Forces, and USMC Recon) for being ready to pull off something like this at a moment’s notice. It sure is nice to know that they are there …

  63. 35

    C’mon Les, that’s a bad claim. If you don’t know that then you’re in the wrong field.

    When is that claim infringed? Normally, an apparatus claim is infringed when it is made, sold, or used. Is that claim infringed only when the device is turned on and actually transmits the frames?

    As you note below, “there is nothing inherently wrong with defining some part of an invention in functional terms.” However, in this case the functional term is not connected to any particular part of the invention.

  64. 33

    Ned, don’t confuse your failure to adequately convey what issues you wish to raise as my not understanding the issues. I understand them, quite well. I also understand that you jump from issue (MPF claims) to issue (mixed stat class claims) without pause or explanation. This is an unfortunate habit of yours and makes you appear to be blathering. Like all the time. You really might want to look into seeing someone about this issue as I’m sure it affects your work in some form or fashion. Just a suggestion.

    “But that is just what the Feds have held in construing MPF claim terms where old and well known steps or apparatus are claimed using MPF. ”

    Yes, and I’m OK with that. It is a special condition for a special circumstance (112 6th where algorithms are involved).

    “While this is true, it is not sufficient. What did Congress actually intend in enacting Section 112, p. 6, to authorize MPF claiming for old elements or to sanction their use at the point of novelty? ”

    Who gives a dam? The default answer would seem to be “both”.

    “When the novelty does not appear in the claim, such claims can litterly read on the prior art, such that claims can be word for word identical with other claims in other patents claiming different inventions, then the broad consensus must be there is a major problem with such claims also complying with Section 112, p. 2. They are per se indefinite under any consideration what that means.

    You just blathered something that makes no sense whatsoever and to the extent that I can “interpretlol” it into making sense it appears to be irrelevant, so I’m not going to try to respond.

  65. 32

    My answer is the same as the judge’s in this case lester jester and it most certainly is an answer, indeed, a legally important one. The judge(s) I refer to may be wrong, but it is precedent and it is up to you to tell us why they’re wrong, not up to us to tell you why it is right. Your requesting me to further explain what he laid out for you is you requesting gravy. And gravy isn’t always free.

    “You have been given an opportunity to show that the Judge was correct and you have failed.”

    Lol wut? Failed? Because I don’t want to take the time to hold your hand through a simple analysis? I think you mean I succeded at least somewhat, in not wasting my time on a jester like you. If you truly and earnestly wish for me to hold your hand through this analysis you may engage my professional hand holding service for the low low price of 100$ per hour. You may contact me at:

    examiner6k@yahoo.com

    to arrange a meeting. Trust me, for you it is a bargain. If you sign up in the next day or so I won’t even refer to you as lester jester during the meeting!

  66. 31

    6, your reply made it amply clear that you do not understand the issues involved here. Regarding PCR, it is a well know process. A claim cannot have as its point of novelty the old PCR process, but that is the emphasis you gave my discussion of this point.

    However, a new process can use PCR as a necessary step in the new process. The novelty must lie, however, in the combination of steps, or in one of the steps being new in some fashion.

    Claims, particularly to apparatus, normally have numbers of old elements recited as well as new elements. If the invention is in the combination, all the elements themselves may be old.

    Now, focus your attention on the old elements for just one moment. Let us assume for the sake of argument here that the old element is the PCR step, novelty lying elsewhere in the claim. Here the invention does not lie in the PCR process, but in the use of a known PCR process in a new process. Such is entirely patentable. Simply saying the PCR process is known, therefor, cannot anticipate the invention.

    But for that matter, since the process itself is so well known, do the details of the process or the machines that conduct the process have to be stated in the specification or for that matter laid out in detail in the claim. You and everyone else here would say, “Heck no.”

    But that is just what the Feds have held in construing MPF claim terms where old and well known steps or apparatus are claimed using MPF.

    The central problem can be traced, I believe, to FN 11 of In re Fuetterer, which stated in part:

    “We do not mean to imply that 35 U.S.C. § 112 was not in derogation of the result reached inany case decided prior to the enactment of the 1952 Patent Act. See, e. g., Halliburton Oil Well Cementing Co. v. Walker et al., 329 U.S. 1, 67 S.Ct. 6, 91 L.Ed. 3. We feel, however, that a considerable body of case law, if not the preponderance thereof, before the Halliburton case interpreted broad statements of structure, e. g., “means,” plus a statement of function in the manner now sanctioned by the statute. See, e. g., Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 558, 18 S.Ct. 707, 42 L.Ed. 1136. ”

    While this is true, it is not sufficient. What did Congress actually intend in enacting Section 112, p. 6, to authorize MPF claiming for old elements or to sanction their use at the point of novelty? Fuetterer believed the latter to be true; but when one recognizes that the bar at large had thought that Halliburton had thrown into question all MPF claiming regardless of whether the element was new or old, then the purpose for Section 112, p. 6 becaome less clear. Was it to make sure that one could claim old elements functionally, or was it to allow the claiming of new elements functionally?

    When the novelty does not appear in the claim, such claims can litterly read on the prior art, such that claims can be word for word identical with other claims in other patents claiming different inventions, then the broad consensus must be there is a major problem with such claims also complying with Section 112, p. 2. They are per se indefinite under any consideration what that means.

  67. 30

    Yet another non-answer (because you don’t have one) answer. Point is, the Judge you refer to is wrong. You have been given an opportunity to show that the Judge was correct and you have failed.

  68. 29

    You know lester jester a judge went through some time and trouble to explain to you why. I suggest you go and read his eloquent explanation. Indeed, you could read the DC’s as well since they got it right the first time iirc.

    As to why examiners issue invalid claims, well, lester jester, this is the government we’re talking about. It took quite awhile for IPXL to percolate into the MPEP and to this day most examiners probably don’t know about it or understand it. Indeed, lawltards like you who have notice of the decision still don’t understand it.

  69. 28

    Why exactly is it invalid and why would examiners allow invalid claims?

    2173.05(g) Functional Limitations [R-3]

    A functional limitation is an attempt to define something by what it does, rather than by what it is (e.g., as evidenced by its specific structure or specific ingredients). There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper. In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971).

  70. 27

    “6, I think the preamble that is itself a combination and not just an intended field of use has to be limiting both for novelty and infringement.”

    Well then your claim gets a rejection.

    “But the body of the claim might be entirely method, for example, by defining how to efficiently communicate information in the context.”

    So in other words the body is entirely not an apparatus or system/apparatus, whatever you want to call it, and is you mixing statutory categories ala IPXL? K, rejection.

    “Take the telephone cases. Was the claim to a process or to a machine? ”

    I forget. Maybe you can post the claims.

    “But the claim, IIRC, was broadly to the process of converting sound to voltage waves imposed on a wire — and then reversing the process at the other end. ”

    So they were all process claims then?

    “Without defining the apparatus to some degree, the process made no sense.”

    Really? Ned I think you need to realize a few things, there are ways to incorporate “apparatus limitations” aka structural features in a process step properly.

    A method comprising:

    popping corn and
    pouring popped corn out of a SPOUT.

    Note the difference between that proper claim and this improper claim

    A method comprising:
    popping corn
    pouring popped corn and
    a SPOUT.

    Do you see the difference? The difference is “stand alone” limitations out unconnected to the steps. An analogous thing happens sometimes in product/apparatus/composition claims where there is a “stand alone” method step recited.

  71. 26

    Wasn’t the SEALS. The media keep messing this up. It was JSOC, which is a separate command under the Joint Chiefs of Staff. There were likely SEALS in there, and Army Special Forces, and USMC Recon, etc., but the command was not Navy.

    Forgive the trivia, but as ex-Recon I’m touchy about giving the Squids too much credit.

  72. 25

    “Looks like a million other allowed [and invalid] system claims.”

    fixt.

    And I agree with you both on the fixt and unfixt version.

  73. 24

    3. A data transmitting device for transmitting signals corresponding to an incoming steam of bits, comprising:

    first buffer means for partitioning said stream into frames of unequal number of bits and for separating the bits of each frame into a first group and a second group of bits;
    fractional encoding means for receiving the first group of bits of each frame and performing fractional encoding to generate a group of fractionally encoded bits;
    second buffer means for combining said second group of bits with said group of fractionally encoded bits to form frames of equal number of bits;
    trellis encoding means for trellis encoding the frames from said second buffer means; and
    transmitting the trellis encoded frames.

    Looks like a million other allowed system claims.

  74. 23

    It’s a shame Ma don’t matta,
    Because what I truly see,
    Is a Ma that only matta
    to what I be.

    I feel the damage he claims I cast.
    I’m sure Regatta will surely see.
    I am a product of Guerwood Lewis
    and all that claim to be.

    I’ll hold no pretense of who I am.
    to my son he surely sees,
    That his Mom the true Inventor
    will not bow upon her knees.

  75. 22

    “Take PCR for instance. Let’s assume that it must be conducted in a machine of some sort that is publicly available from a number of manufacturers. Does it make any difference whether it is one and not the other, or whether the particular machines that conduct the process do so with new and improved techniques over time?”

    Your inability to focus on the STRUCTURAL aspects which are allegedly new and non-obvious in a given application to this “PCR” is unsurprising. Note that if it is ” conducted in a machine of some sort that is publicly available from a number of manufacturers” then you likely have a 102b bar prohibiting you from getting such a claim.

    “The key is that the invention does not lie in the particular means for performing the algorithm.”

    Yeah, that’s the key to invalidation. Nobody even KNOWS what the particular means for performing the algorithm are. That is, they don’t know which structural differences differentiate the claimed “invention” from the prior art device upon which “the algorithm” is “performed”.

    “Now, in contrast, if the invention involves novel structure not well known”

    That is the whole basis for allowing the claim to “the invention” so let’s hope it does. And, not only do we have a potential problem under MPF, but under normal constructions as well.

    “All related inventions involves improving one of those parts. Now, according to Donaldson, such an apparatus could be validly be claimed listing all its standard elements in indentical MPF language, because the novel structure is read into the claim for novelty and infringement purposes.”

    Um, I doubt that unless your spec makes it 100% clear that the structure is different than the old one.

  76. 21

    “The particular structure is irrelavent.”

    How’s that? The “particular structure” is what will determine anticipation, obviousness, enablement, and infringement etc. etc. on down the line.

  77. 20

    lolz atcha Sunshine – obviously ya missed this gem courtesy of EG (well, courtesy of me, but prompted by EG).

    Here let me quote me:

    “ping said in reply to EG…
    Although I will have to admit EG, that the Fromson case has one mighty special line in it that Ol Sunshine just gonna love:

    “Fromson indicat[ed] that he did not know, and did not care, what the… structure of the resulting product might be.”

    Kinda shoots down his perverse need ta now the minutely detailed structure of a software-enabled computer invention be – don’t know, don’t care – DONT MATTA.

    Configured to be good enough.
    Reply Apr 22, 2011 at 08:55 PM”

    from link to patentlyo.com

    (that one for the Big D).

    Pump up the jam.

  78. 19

    Malcolm, structure? Does it make any difference whether it is a microprocessor, state machine, or analog circuits? The particular structure is irrelavent.

    Take PCR for instance. Let’s assume that it must be conducted in a machine of some sort that is publicly available from a number of manufacturers. Does it make any difference whether it is one and not the other, or whether the particular machines that conduct the process do so with new and improved techniques over time?

    The key is that the invention does not lie in the particular means for performing the algorithm. Any well known means is automatically included in the interpretation.

    Now, in contrast, if the invention involves novel structure not well known, then I submit we have a problem if those elements are defined in the claim using MPF. I contend that Halliburton was entirely correct in declaring such claims indefinite.

    After Donaldson, we used to joke about the absurdities that that decision permitted. Take an apparatus that has a number of well known parts that are in every apparatus of that type. All related inventions involves improving one of those parts. Now, according to Donaldson, such an apparatus could be validly be claimed listing all its standard elements in indentical MPF language, because the novel structure is read into the claim for novelty and infringement purposes.

    So there you have it. Every claim in every patent for a kind of apparatus could simply be the same parts list claimed generically. As such, I would hope you would agree that such claims would wholly fail to perform their function under Section 112, p. 2.

    But, that is what Donaldson authorized and why it must be reversed.

  79. 18

    6, I think the preamble that is itself a combination and not just an intended field of use has to be limiting both for novelty and infringement. Take a communications claim for example. The preamble might define the transmit apparatus, the reception apparatus and the technology for communicating between the two. But the body of the claim might be entirely method, for example, by defining how to efficiently communicate information in the context.

    Take the telephone cases. Was the claim to a process or to a machine? One had to define to some degree the apparatus at both ends and a wire connecting them. The transmitter converted sound to voltage waves. But the claim, IIRC, was broadly to the process of converting sound to voltage waves imposed on a wire — and then reversing the process at the other end. Without defining the apparatus to some degree, the process made no sense. But the real invention was in the technique, not in the way or machines that did it.

  80. 17

    What makes an Inventor…. REAL?
    Their ability to solve problems.

    So maybe IP is not a good read. Maybe it should be called Solved Property and Design Property. As in the Clothes Pin verses the Potato Chip Clip.. Obviously the Clothes Pin wins that hands down. But the Potato chip clip made it better. But I would still use a Clothes Pin. Being second hand Rose and all. But the flat Fender is different!

  81. 16

    Um no, lester jester, that’s your mistaken reading of MOT like I’ve been telling you for years.

  82. 15

    “It is the elements after the colon that count. ”

    Pretty much, although it is my personal opinion that they may have construed the claim wrong in that Micro case and thus reached the false conclusion that the applicant had not claimed a method/apparatus hybrid. Although I hasten to add that I did not look into the matter as thoroughly as I could. From their brief explanation it appears that there is plenty on the record to condemn the claim under either 101 or 112 2nd. But, what can you do? The fed just goes around changing claim constructions willy nilly. At the least they have the law correct which is saying something.

    “But, I would suggest politely that your assumption that the background structure does not have to be proved may and probably is not correct if that structure is laid out in a combination of elements itself.”

    Does not have to be “proved”? “proved” for what? Infringement? Invalidity attacks? All of the above?

    Finally I should also note that I rejected a claim very very similar to the Micro claim under 101 for a failure to limit the claim to one statutory category and also under 112 2nd because the claim was amenable to two or more interpretations, one where the apparatus structure is limiting (which fails 101/112 2nd under IPXL/whatever that board decision was they based IPXL on btw) and one where the “preamble” structure of the apparatus is not limiting. If they estoppel themselves properly in the response by stating that it is not limiting then I will withdraw the rejections, but there could be issues under 102/103 without any of the apparatus limitations (i forget). I noted that to me the “broadest reasonable interpretation” was the former interpretation as opposed to the later but recognized the possibility that the applicant was intending for the apparatus to not be limiting and thus have a proper claim. Meh, we’ll see how it goes.

  83. 14

    “The court further held that claims 3-11 of the ‘236 patent were invalid for indefiniteness as they improperly mixed method and apparatus elements ”

    ….but….but….but….the machine or transformation test REQUIRES that we impropperly mix method and apparatus elements!

  84. 13

    Ned Malcolm, the algorithm per se is not structure, but structure encoded to perform the algorithm is. I believe that is what really is being claimed. I think the Feds need to acknowledge this at some point.

    So what is the structure encoding the “fractional rate encoding” algorithm?

    I’m told that everyone “skilled in the art” knows what the corresponding structure is.

    So what is it? Please let me know — in structural terms, of course, unless that’s asking too much.

  85. 12

    I lolz atcha 6 – obviously ya missed this gem courtesy of EG (well, courtesy of me, but prompted by EG).

    Here let me quote me:

    ping said in reply to EG…
    Although I will have to admit EG, that the Fromson case has one mighty special line in it that Ol Sunshine just gonna love:

    “Fromson indicat[ed] that he did not know, and did not care, what the… structure of the resulting product might be.”

    Kinda shoots down his perverse need ta now the minutely detailed structure of a software-enabled computer invention be – don’t know, don’t care – DONT MATTA.

    Configured to be good enough.
    Reply Apr 22, 2011 at 08:55 PM

    from link to patentlyo.com

    (that one for the Big D).

    Pump up the jam.

  86. 11

    Once again Americans, and indeed most of the world, are united by the common cause we all share. Hats off to Obama, the CIA and the SEALS for a job well done.

  87. 10

    6, I haven’t read all the cases you cited, but I will. I think the take away from your summary is this:

    It is the elements after the colon that count.

    They have to be all apparatus. The preamble can be different. It provides the background structure, the environment so to speak, for the process.

    But, I would suggest politely that your assumption that the background structure does not have to be proved may and probably is not correct if that structure is laid out in a combination of elements itself.

  88. 9

    ” I believe that is what really is being claimed. I think the Feds need to acknowledge this at some point.”

    Obviously. So we can get on to analysing it under 112 WD req, and 112 2nd para and thus end this scourge once and for all when the “person of ordinary skill” cannot produce testimony as to what the structure actually is and is totally clueless.

  89. 8

    Malcolm, the algorithm per se is not structure, but structure encoded to perform the algorithm is. I believe that is what really is being claimed. I think the Feds need to acknowledge this at some point.

    On MPF, as acknowledged in Halliburton, it was common practice before ’52 to claim old and well known structure using MPF, the problems occurred when MPF elements occurred at the point of novelty such that the claim amounted to all ways of performing the invention regardless of the novel structure disclosed.

    But where background elements were well known, it made no difference what the particular means or form was. Just that the structure be there, or the step in the process be well known. A full description in the specification was not required for those skilled to understand the claim.

    Take BIO just for example. I understand that PCR is a well know process. Can you imagine the Feds declaring a claim element indefinite if it referened using PCR as a step, regardless of how that step was phrased?

  90. 7

    Cept Ned – ya doin it wrong (clear hint – Suunshine agrees with ya).

    The take away is whether to apply the construction under Section 112, p6 – not apply it anyway and get some preconcieved result.

    The law as applied here is that the first step in the analysis was whether or not to even apply Section 112 p6. The result of that analysis was “No, we dont have to”. This is clearly different than “No, we dont have to, but just for jollies lets do it anyway and my goodness look at that if we did apply this test that we dont havte to the claims would fail for indefinitess”

    Your propensity for reading way way too much into legal decisions almost matches your propensity for getting such wrong.

    I would add, of course, that algorithms aren’t “structures”…

    Of course you would – painful redux of the smackdown on understanding (or in Sunshine’s case misunderstanding) the art will hopefully not follow (i.e. I hope this thread is not hijacked as Sunshine is want to do).

    Swearing commences in 5… 4… 3…

  91. 6

    Ned is correct.

    I would add, of course, that algorithms aren’t “structures” and once the courts started pretending that they were, all resorts to “logic” and “reasonableness” went out the window.

  92. 4

    “The CAFC also addressed three separate indefiniteness issues. The court first affirmed the district court’s grant of summary judgment that claims 3-11 of the ‘236 patent were indefinite because they contained both apparatus and method claims. “[R]eciting both an apparatus and a method of using that apparatus renders a claim indefinite under section 112, paragraph 2.” Slip Op. at 15, quoting IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). Rembrandt’s only argument in response was to request that the court insert apparatus language into claim 3, from which claims 4-11 depended. Unsurprisingly, the court declined to do so. “[T]he correction suggested by Rembrandt is “not minor, obvious, free from reasonable debate or evident from the prosecution history.'” Slip Op. at 17 (quoting district court opinion).”

    In other words: learn to draft tards.

    ” ipxl did not stand for the proposition that claims that recited an apparatus and a method were indefinite per se.”

    Someone needs to reread that decision and that someone is u.

    “the cafc handed down a decision last year (i don’t remember the case off the top of my head) in which they held that a claim that recited an apparatus and a method was not indefinite.”

    Indeed, you are correct.

    MICROPROCESSOR ENHANCEMENT CORPORATION v. TEXAS INSTRUMENTS INCORPORATED

    is the decision ur lookin’ for.

    link to caselaw.findlaw.com

    However, when you read that decision you’ll notice that it was a special case because of the bizarre drafting with a “preamble within a preamble”. Note that there is a lot of talk about the web which shows without a doubt that many a lawltard misinterpreted this decision just as you appear to be doing.

    Even so, the judges in that case probably misapplied the lawl due to a faulty claim construction. Note the references to English literature upon which they base their opinion.

    However, even as they may or may not have correctly applied the lawl in that case, note how other judges are reading the lawl, for instance, Clevenger dissents in Vizio relying on that very Micro decision for the proposition that :

    Imposing a method limitation on an apparatus claim is improper. See Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1374 (Fed. Cir. 2008) (“A single patent may include claims directed to one or more of the classes of patentable subject matter, but no single claim may cover more than one subject matter class.”).

    So just to be clear, judges understand quite clearly that including mix and match statutory categories in what your claim is actually limited to is improper, but they feel like as long as you leave it up in the preamble (where we presume it is construed as not limiting) then it is fine.

    link to caselaw.findlaw.com

  93. 3

    The take away: algoritm means for performing an algorithm, where the algorithm is well known, is indefite if construed under Section 112, p.6, but definite if not.

    Makes a lot of sense to me.

    Perfect sense.

    Change the facts just a bit: assume the element was just “means for performing an algorithm” were the algorithm is again well known, but only mentioned in the specification. Wholly functional here. No way to avoid Section 112, p.6. So….

    It must be indefinite as all get out. Why? The Feds told me so. It has to be true. Even if it is totally irrational.

    IMHO, the jurisprudence of the Federal Circuit in construing Section 112, p. 6 is an abomination and always has been. Why? They assumed the rule of construction began in 1952, and for this reason they could ignore its history and origins in construing it. As a result, we live in the land of the bizzare and make believe. A land inhabited by CJ Rader.

  94. 2

    i do question the indefiniteness holding for claims that recite both an apparatus and method (citing ipxl). as i recall, the policy in ipxl was that the claims were indefinite to the extent that it made unclear whether a user of a given apparatus would be liable for contributory infringement as a result of their usage of the apparatus. ipxl did not stand for the proposition that claims that recited an apparatus and a method were indefinite per se. the cafc handed down a decision last year (i don’t remember the case off the top of my head) in which they held that a claim that recited an apparatus and a method was not indefinite.

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