By Dennis Crouch
Typhoon Touch Tech. v. Dell, Lenovo, Toshiba, Fujitsu, Sand Dune Ventures, Panasonic, Apple, HTC, and Palm (Fed. Cir. 2011)
Touch screen technology has taken-off as an important element of consumer electronics. Typhoon’s US Patent Nos. 5,379,057 and 5,675,362 cover various embodiments of a “portable keyboardless computer system” with a “touch-sensitive screen.”
Typhoon appealed an E.D. Texas ruling that its patents were invalid and not infringed. The appeal focused on the claim construction that served as the basis for both invalidity and non-infringement. The appellate decision is notable for the detached process that the court used to consider claims elements at issue. The opinion never discussed the crux of the invention or its contribution to the art and instead simply looked to the disputed claim terms and the relation of those terms in the specification (as required by Phillips v. AWH).
This week, I participated in a roundtable discussion at Yale Law School sponsored by the Kauffman foundation and by Yale’s Information Society Project (ISP). A substantial amount of the discussion focused on problems stemming from our current claim construction process and our ongoing focus on claim language as opposed to invention or its contribution to the art.
For patent attorneys prosecuting patents, the claims are often seen as equivalent to the invention. The new patent act supports that definition by shifting focus away from the invention and instead onto the “claimed invention.” Thus, the new § 102(a)(1) asks whether “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” The new statute’s sole focus on invention as claimed is largely just a codification of fairly well accepted Federal Circuit precedent without much thought of the consequences. Of course, broad subject matter eligibility described in State Street Bank and the TSM test for obviousness were, until quite recently, well accepted Federal Circuit precedents as well. In the past few years, the Supreme Court rolled-back the clock on those issues – returning focus to pre-1982 case law. For “invention” however, the new statute appears to lock-in the claimed-invention as the ongoing focus of patent law.
Judge Kimberly Moore highlighted this issue in her recent dissent from the court’s denial of en banc rehearing of Retractable Technologies, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011). In that opinion, Judge Moore noted that the approach of the panel decision in Retractable is evident of a major divide amongst Federal Circuit judges as to whether the inventor’s contribution to the art – “what the inventor actually invented” – should be considered in the claim construction process.
This week, my patent law students each argued a mock-Markman hearing – revisiting the facts of Nystrom v. Trex and arguing over whether Ron Nystrom’s claimed decking “board” should be limited to cover only to wood cut from a log. That litigation was interesting because it involved five different court decisions on the proper construction of the term. The final appellate decision narrowed the term’s meaning in a way that allowed Trex’s composite planking to avoid infringement.
Claim construction has become a fundamental aspect of every patent case – even to the extent that Section 101 patentable subject matter decisions turn on the meaning bestowed upon particular claim terms. For patent attorneys, all of this focus on claim meaning puts more pressure on the drafting of the claims and the specification. The sad thing about Nystrom’s patent is that he would have easily won the case if the patent attorney who drafted the application had thrown-in language indicating that a “board” could be made of various materials, not just wood cut from a log. This counterfactual conclusion is sad for Nystrom as the inventor, but it is also sad that such a major weight is placed on non-inventive boilerplate language. In my mind, the importance of claim construction should push the USPTO to do a better job of ensuring that the terms of issued patents are well defined.
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The Typhoon decision is also notable in the way that the court narrowly interpreted functional claim limitations. As background, Typhoon’s claim was directed to a “computer” that included various elements including a “memory for storing [a] data collection application.” Typhoon argued its claimed invention only required that the memory be capable of storing the data collection application. However, the District Court Judge Davis and Federal Circuit agreed that the proper construction required that memory actually be used for storing the data collection application. In so holding, the courts looked to the specification and found that the described embodiments all had memories that actually included the application rather than just the capability.
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Finally, the court looked at Typhoon’s “Means for cross-referencing” limitation. The district court held that limitation invalid as indefinite under 35 U.S.C. § 112 because the specification did not include an algorithm adequate to provide sufficient structure for the means-plus-function limitation, citing Aristocrat Technologies Australia PTY Ltd. v. International Game Technology, 521 F.3d 1328, 1334 (Fed Cir. 2008). On appeal, the Federal Circuit rejected that conclusion – finding that the specification did disclose a cross-referencing algorithm in plain language in the text of the specification. The court went on to write that “computer code is not required to be included in the patent specification.” Rather, what is required is disclosure so that one of ordinary skill in the art would recognize the structure as linked to the claimed function.
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- Judge Newman wrote the court opinion and was joined by Chief Judge Rader and Judge Prost;
- The Appellant-Patentee is represented on appeal by Charles Wolfe (Blank Rome);
- Ed Reines (Weil Gotshal) and Joe Re (Knobbe) were co-lead-counsel for all the appellee-defendants. Briefs were also signed by attorneys at K&L Gates, Baker Botts, Amster Rothstein, Perkins Coie, Covington & Burling, and Malloy & Malloy, as well as Eric Albritton from the Albritton firm.
I watched All About Eve. Interesting line in that movie about a play write saying that the piano doesn’t write music that it is a mere conduit of the music. And, of course, it was a metaphore for an actress not writing the play but merely playing the part of the play.
The scene is great in that it evokes the image of how insignificant a piano is compared to the composition of the music. (general purpose computer/software)
Gee, well, according to the shills on this board this is not true. Everything stops at the piano or computer.
IANAE, aka, “Mr. Red Herring.” I stated my position. Someone who works in the field and is not paid for my opinions. You don’t state your position. And, in typical shill fashion you just skip over the difference between someone advocating a position as part of their profession and someone who is being paid to take a position and push it on the world.
Just amazes me that you can be so dense either intentinoally or not. I suspect what you are is a wanna-be rich and are willing to do anything to get there including r@pe our legal system.
And by the way, as soon as your Computer can work without the Plug similar to a DSL (without having to plug in) exchange then by golly it will have no means. Can you imagine how much fun it will be to cross in the line of Power? ZZZZZZZZZTTTTTTZZZZZ! If you can think it you can do it.
Oh contrarie! It does have other uses. When moving furniture It is a great go between to protect the furniture. When in the water It is a great life ring. Although I am going a bit far afield as a Furniture Pad , never say never.
District courts are known for bad decisions – I would hold this to be one of them.
At one point, the making had to be done – if only then to disable.
Now was an item “sold” that met the claim? perhaps not – but as you pointed out, patent protection is for more than merely “sold” – patent protection is for “make.”
Do we know if this case is being appealed? (it should be).
Thanks Ned.
I think the big deal, as most will attest, is not to nail the individual user as an infringer. Thus, your 3) above is not a critical point under discussion. It is not him as a buyer that is key (small potatoes and all).
Rather, it is the maker (deep pockets) that is key. And I doubt that “making” but then having to supply an additional key to “activiate” gets around the “making” in the first place. This reminds me of the blank lenses case – a seller of lens blanks claimed he did not infringe since he did not perform that last step – however, he was found guilty, becuase there was no other use for the lens blanks. Here too, a seller of “software” as a component to a machine would have no out – not because the machine has other uses – it does – but because the component he is selling – the software – does not have other uses.
This in fact highlights the discussion ongoing (and one rightly so in my opinion) in Ultramercial, that a component is a component and it simply does not matter if that component is hardware, or if that component is firmware, or if that component is software. Such become merely pedantic differences without distinctions, and I think a court should rightfully see straight through such.
Let’s, you are entirely right that 101 sets forth no negative conditions for patentability as do 102/103. The exceptions are entirely judicial. They include the three well known patentable subject matter exceptions, and also double patenting. While we loosely call the exceptions 101 exceptions, none of these is actually set forth in the statute as are the exceptions regarding prior art in 102/103.
Regarding your point about principle and abstract not being the same thing, or to that effect, I invite you to read Le Roy v. Tatham, 55 U.S. 156, 174-75, 185-86 (1852), the source of the concept.
There you will see the original phraseology was “principle in the abstract.”
There are others, but here is one:
“On April 7, 2011, the United States District Court for the Eastern District of Wisconsin denied plaintiff’s motion for summary judgment of direct infringement. Plaintiff’s patent, focused on graphics cutting, contained method claims that the district court concluded were not directly infringed. The district court concluded that even if defendant’s software product contained an infringing search function, there was still no direct infringement because the defendant disabled that function when it sold the software. The district court reached this conclusion even though a user or customer could enable the infringing function. “[T]he question is whether the claims read on a device that contains source code for searching, even if that code has been disabled. . . . Nothing in [plaintiff’s] apparatus claims suggests that a device that contains disabled source code for searching is within the scope of the claims. The claims are not drafted in terms of software components but in terms of the actual function of the apparatus. . . . When the code for searching is disabled, the device does not perform [plaintiff’s] methods, and thus sales of the device with the code for searching disabled is not direct infringement.”
This type of decision once again heightens the importance of including apparatus claims that closely track the method claims, if possible. Here, an apparatus claim was included but it was significantly different than the method claim. An apparatus claim that tracked the method claim would likely have survived the analysis of the district court.
The case is Mikkelsen Graphic Engineering, Inc. v. Zund America, Inc., Case No. 2-07-cv-00391 (E.D. Wis. April 7, 2011 (Adelman, J.)
link to patentlaw.jmbm.com
OK. I will concede this point in the context of an apparatus claim.
Alappat did make a big deal that the claim preamble tied the claim into the display application. Recall, that was an en banc case.
“Only when the calculation results in something useful, and that use is actually defined at least in the context of a preamble as it was in Alappat, then we have a patentable eligible claim.”
Again, confusing 112 1st with 112 2nd. Claims need only distinguish the claimed invention over the prior art — no need for enabling/describing the invention in claims. As such there is NO NEED for the use to be “actually defined at least in the content of a preamble.” The “use” doesn’t have to be described anywhere in the claims. The claims are used for something different.
The Benson that said patenting an algorithm that is not tied to any use is an abstraction.
Listen, I agree there is a problem under 112, p. 2.
The claim could be reconfigured as
1. A computer comprising;
a program memory; and
a CPU comprising means for accessing and executing program code from said program memory;
wherein the program code comprises Algorithm A.
Still some problems, but at least we have a nominal combination claim.
The shilling, you are too much.
anon, thanks.
Actually, recent cases trend towards the conclusion that actual use is not required to "infringe." But, I think these cases fail to consider that infringement is
1) selling
2) making
3) using
If the end user does not of these, how is he an infringer? He he buys a device with disabled software on it, he neither makes, uses or sells. Just how he infringes is not clear.
However, if he buys the software and installs it, clearly he makes.
There is a case involving WD disc drives. Certain drives were sold with a feature installed, but disabled so that it could not be used. The feature was intended for a future disc drive, not the one sold.
The court held there was not infringement.
The cases are fact dependent.
“You guys really need to re-read Benson.”
Which Benson is that? The one where you have acquiesced your argument? Or the one where you are still confused in your argument?
“In principle, I can agree that a claim to a computer implicitly includes both a CPU and a stored programmed memory.”
There go the computer as a “single means” claim.
Wait, without the single means claim mantra, the “point of novelty” mantra is also out the window.
We have yet another slippery slope issue here….
“where I agreed in principle that a computer comprising new firmware was patentable as a new machine, as such.”
Except Ned, the quote from Benson re programmed computers does not make the distinction that it is firmware that a computer comprises – quite in fact, it is software and further, as per the numerous quotes from the industry sources, firmware is equivalent to software.
You are still very much at the bottom of the slippery slope and have made no move up that slope.
The more you talk, the greasier you become, and the more you are stuck at the bottom of the slope.
Have at it, it is quite enjoyable watching you struggle so.
Ned Heller,
I actively have your ignorance – it is not a matter of atively seeking it – you are quite verbose with it, posting hundreds of times a week, yet saying nothing of note.
Whoever coined the term “emtpy wagon” nailed the characterization of your contributions.
“regarding non-enabled features of apparatus‘
Are you not assuming what Clear the Dust asks?
As I read the 9:04 AM comment, Clear the Dust seems to be stating that the “configured to state” has been achieved and whether or not a license has been activated is a separate issue of the machine configured to (which is what the infringement would be about).
Ned – you appear to have jumped too hastily to a conclusion not warranted. Your hypo does conflate the issues at hand, with no apparent rhyme or reason.
I would also point out that Let’s Make This Simple makes the same point at 9:32 AM – and you have not jumped all over that poster, yet you let loose a torrent of “inane”, “asinine”, “meretricious interloper and hatemonger” when the post merely calls (rightly) into question your position.
Clearly, this is simply more of your “Umbrage” game, in which you take umbrage at anyone directly challenging you.
Ned,
Not only is this transparent, but it gets old and shows poorly on you. I certainly hope that you hold your composure better in court.
Also, actually providing an answer to either Clear the Dust or Let’s Make This Simple would be appreciated (unless you are staying true to your game of taking umbrage in order to evade actually answering a point made).
Bookmark, obviously, you missed my whole discussion where I agreed in principle that a computer comprising new firmware was patentable as a new machine, as such.
The cupboard, I think you were intentionally trying to misunderstand me. What I am saying and have said is that I will agree in principle that a computer with firmware is a new machine patentable as such.
This does not mean that I do not agree that a programmed computer is not patentable in other contexts, such as when it is claimed as a component of a larger apparatus or process as defined in cases such as Diehr, Alappat, Freeman and Noll.
King, I'm not doing anything, King. What I am doing is seeking to understand Let's position.
In principle, I can agree that a claim to a computer implicitly includes both a CPU and a stored programmed memory.
looking glass, you actively seek ignorance.
Ridiculous.
I am quite familiar with the section. Not only did I reviewed again in response to the post earlier today, I quoted portions of the MPEP back in response. The MPEP section clearly states that functional language is not objectionable to find "part" of the invention. What is so difficult to understand about that!
IANAE, you are right. All one would have to do the claim the mousetrap without violating the principles of Halliburton would be to claim two cooperating elements. For example, one could define the trap as two elements: a trap portion and a mouse operable catch that restrains the trap. That's two elements. That's all that is required.
Let's, I think we agree on this. When you got the point where the data calculated by human was simply a number on a piece of paper, you hit the nail on the head. Similarly, if the result of a calculation by a computer was discarded or not used for anything, as the number on a piece of paper, nothing of any practical use would've been achieved by the calculation. Only when the calculation results in something useful, and that use is actually defined at least in the context of a preamble as it was in Alappat, then we have a patentable eligible claim.
Go to fricken hades, you meretricious interloper and hatemonger.
Let's, meaning is not the issue.
"Catch" is the only physical element in the claim. Its structure is defined functionally.
Regarding your statement that the claimed functionality has two states, that riposte would be apt were this a method claim.
“Yes, a computer is patentable. But it’s been invented already”
The decrepit “House” argument.
Always fallacious, never entertaining.
Tell me, without more, did that first inventor of the computer invent all the future inventions that have been completed? (a la Morse)?
Back to the tower with you !
Worth repeating:
Ned Heller said Regarding Benson, OK. Programmed computers are not categorically excluded. I agree.
Gee, I wonder how MM, 6 and IANAE feel about this quote?
“Gaffe? Hardly.”
Gaffe – definitely – you still have not clambered up the slippery slope and distinguished software from firmware in any patentably substantive manner.
Go back and read all the quotes from a whole variety of sources in the particular art field that negate anything that you may have feebly offered.
I laugh at you sitting at the bottom of the slippery slope, sucking your thumb and crying for your mommy (or for MM, 6 and IANAE to try to come and rescue you). You will note that no one else has ventured into the hardware is equivalent to firmware is equivalent to software slope that you jumped on (and slid straight to the bottom).
Gaffe? Oh, most definitely!
“The King has No Clothes”
In your art, that would be a “general-purpose monarch configured to receive clothes”, and it would be perfectly acceptable.
Yes, a computer is patentable. But it’s been invented already. If your invention is a way of making a computer do stuff, you’re claiming it wrong.
The fundamental point you keep missing Ned is that the computer itself is the system, is a machine made of other components and is patentable in its own right (the computer is the system) – yet you insist on combining a computer with something else, and thus in fact you do treat the computer differently – and without legal basis for doing so.
I can only imagine that your n_akedness looks like the finest clothes in all the world because your tailors have told you so.
“Does not matter – the apparatus claim has been infringed.”
A claim to a computer “configured to” infringed by a computer expressly “configured not to”. As usual, the computer arts guys want to have it both ways.
“what relevance does the fact that a computer might be a complex machine if all you claim as a computer?”
compare:
“Then claim a system”
W
T
F
Ned, do you realize how often you talk in circles?
N-Dubz: “I think Dennis should consider banning people that are being paid to spam this blog. I, for one, am likely to stop participating here”
I don’t think you have any self-awareness at all.
Ned (and others) have been invited to read this sectionof the MPEP and the associated case law in the past.
Funny that – they refused. An altogether too common occurance when faced with real law they do not like.
Lmts, you have just seen yet another Ned Heller Game.
He’s full of them.
you are claiming multiple states of a given mousetrap. That is claiming a machine in terms of its operation. Effectively, your mousetrap claims has one apparatus in two states. What this amounts to is a single means claims, banned by Halliburton and not rescued by 112, p. 6.
I don’t practice much in the critter-and-vermin arts, but I would never claim a mouse trap that way. I’d have a structural whatever-that-part-is-called that is movable/pivotable/whatever between a first position where structure happens (biasing, abutting, that sort of thing) and a second position where different structure happens.
It’s very hard to analogize computer or software claims to anything in the real world, because their claims would never pass the laugh test in other arts. Nobody would ever claim a general purpose block of wood configured for luring a mouse, sensing the mouse, and catching the mouse. They certainly wouldn’t claim a readable medium with instructions for building such a device.
“I take it is your position, that all of the above cannot be patented because they are the actions of a human being performing calculations and not of a machine. Where I think you would agree that patentability begins is where the machine, independent of a human, reads data, conducts the algorithm, and stores the output data on a storage device or outputs the data to some recording device or to some other machine that uses it. Do you agree?”
Let’s see. An abacus is a machine. The pencil (let’s make a mechanical pencil) is a machine, which transforms the paper. The calculator is cerainly a machine. Under the machine or transformation test, all would be OK.
However, a claim to all of those probably wouldn’t be considered a practical application of an abstract idea. A noise reduction algorithm caclulated by hand gets you nothing but numbers on piece of paper. However, a noise reduction algorithm used by a computer will. There is some fuzzy line there that SCOTUS refuses to make clear, but regardless of the fuzziness of the line, it is quite easy to take your hypothetical noise reduction algorithm out of the real of abstract idea and into the realm of patentable subject matter.
“independent of a human”
Nothing wrong with having a human perform one of the steps. A human can dig, mix, pound, hammer, saw, glue among a whole host of things that wouldn’t be a problem. You just cannot have a human perform the whole process in his/her mind.
For example, a human could enter information into a GUI, and that wouldn’t be a problem Personally, I would prefer to recite “receiving information via the GUI” rather than “entering information using the GUI.”
Actually,
Ned,
I only highlight your inane and asinine remarks.
If you want to talk about specific cases – mention those cases and set the stage appropriately. Your “gamesmanship” and dustkicking in trying to conflate hypo’s only shows you trying to be too clever by half and FAILING.
Engage the topic appropriately, or not at all.
Your oblique angle and attempted shoehorning of your pet theories just do not work.
“There is only one structural element. Just one. And that one element is definied functionally.”
No … a catch has a meaning more than just the claimed functional limitations associated with it — just like a processor has a meaning more than just the claimed functional limitations associated with it.
Also, unless I’m claiming “a means for X” then your “some part” is meaningless. For example, the mousetrap claim also requires that the catch has two states.
Regarding Benson, OK. Programmed computers are not categorically excluded. I agree. I am now trying to define here just what that means. I am making progress with Let's because he is not playing games but is, in fact, a serious poster.
I responded to the post of "Let's" which you said I did not respond to.
Really?
Then I could claim, by what you just said: "A computer configured to perform Algorithm A," where Algorithm A was a defined term, because computer is understood to include means for storing the program and for executing it?
“I did respond.”
I don’t think so. I specifically asked for your comments on Benson’s statement that “It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.” I haven’t seen those comments
Yes. So what. You seem to miss the point entirely. There is only one structural element. Just one. And that one element is definied functionally.
You might want to read
2173.05(g) yourself, especially this: "
There is nothing inherently wrong with defining some part of an invention in functional terms. "
“So when one claims a programmed computer, one implicitly is claiming at least a computer readable memory storing the program, and, as a separate element, a CPU. You did not say whether the computer readable memory had to be associated with the CPU in some physical relationship sense that the program could be executed by the CPU from the computer readable medium. However, I will make that presumption for you. If you disagree let me know.”
You know the difference between the first and second paragraphs of 112? The claims don’t need to enable the invention – just distinguish them over the prior art. I don’t need a computer readable memory or a CPU to distinguish the claims; hence, they don’t need to be part of the claims.
“Now assuming that the program is located on such a computer readable medium, but the accused infringer demonstrates to the satisfaction of the court that the program is never executed, is there any infringement in point of fact?”
“No” to the method claim, but “Yes” to the device claim. Also, you have to consider secondary infringement such as contributory infringement and inducement.
“Clear the Dust, regarding non-enabled features of apparatus, there are cases that actually discuss this point.”
Cite please.
“For this reason, your claim is functional at the point of novelty, meaning that its structure is defined in the claim by what it does rather than that by what it is, and therefore fails any of Halliburton, General Electric v. Wabash, or Perkins Glue.”
Hello??? Ever read MPEP 2173.05(g)? Also, what are full citations for these cases?
We do not agree, why all this argument? We are in agreement that components of a system are patentable. I do not distinguish between computers and other kinds of components. I actually say that under DIehr, under Alappat, under Freeman and under Noll, programmed computers are entirely patentable when claimed as part of systems. Is not that the point you were making? You assert that I do not agree, when not only do I agree, it is my fundamental point.
I'm sorry, what are you talking about? We had a discussion about a hypothetical claim they had a single structural element whose structure was defined by what it did. How is this authorized by section 112 paragraph 6?
Your statement that a single element claim is a combination claim is laughable?
Clear the Dust, regarding non-enabled features of apparatus, there are cases that actually discuss this point. Your posts illustrate that you are completely unfamiliar with the issues involved.
What you have done by your completely inane and asinine remark is to illustrate your ignorance about this topic.
"What this amounts to is a single means claims, banned by Halliburton and not rescued by 112, p. 6."More of the "Magic Microscope" trick – zoom in and out at will to collapse any "means" into a single means claim and wallah, no patent for you (don't forget to use the magic word "effectively", and don't forget that a computer is actually an extremely intricate machine made up of many components and no one would actually believe the machine to be a "single means").
Whoever you are, if your claim has a single element, and its structure or materials are defined by what they do and not by what they are, don't you think there is a small possibility that such claims may not be authorized by section 112 paragraph 6?
Regarding computers, we began to get into the structure of the computer in subsequent posts. The only thing at issue up to this point in our conversation was the mousetrap hypothetical.
That said, what relevance does the fact that a computer might be a complex machine if all you claim as a computer?
We do not agree – for some reason, Ned, you insist on a magic microscope and you insist on treating “computers” differently.
There is no such legal basis for doing so.
"as I have discussed already, there is no need for the computer to be actually executing the code for the computer to be configured to perform steps A, B, and C."And you are not the oly one to have pointed this out to Ned – nevermind that Ned does not respond to those points that are inconvenient to his pet theories.
Whoever you are, I did respond.
“For this reason, your claim is functional at the point of novelty,‘
Old Canard, new day.
There is a combination claim, there is structure, and there is functional language.
In such a case, the claim as a whole is the point of novelty and you CANNOT dissect the claim as you attempt to do.
Diehr supercedes any of the cases you cite.
Period.
“one claims a programmed computer‘
That is an apparatus.
“but the accused infringer demonstrates to the satisfaction of the court that the program is never executed”
Does not matter – the apparatus claim has been infringed.
This is one reason why Ned your penchant for delving into “action” completely misses the boat.
As far as the strawman further hypothetical of “program’s actual execution is blocked by license verification software, and no license fee as ever been paid with respect to a particular machine, or, that the licensing program as a whole has not yet been activated” – you are now conflating whether or not the actual machine was changed to be in the configured to state.
It was or it was not. Mixing “licensing” in with your hypo is only kicking up dust.
Gaffe? Hardly.
No mirror, I just responded 30 seconds ago to a very large post that remonstrated me for not understanding that one can patent components of a larger system. I have no idea where the person who made that post got the idea that I disagreed with that concept. It is in fact what I have been arguing for quite some time that programmed computers are quite patentable under Diamond v. Diehr when they are components of a larger system.
This is why I say that people pretend to not understand what I am saying when they make such posts. They can't be serious.
Realize this, I have no idea why you made that post because you and I are in fundamental agreement. One can patent the larger system. One can patent components of the larger system. We agree.
If you look at Alappat, if you look at Freeman, if you look at Noll, the particular graphics display component under discussion in those cases was a component of a larger system. That was disclosed. In the claim was fairly well limited the graphics display system.
As I said, I don't understand the purpose for your post because we agree.
Actual Inventor, I agree the Supreme Court limited patentable subject matter analysis in Diamond v. Diehr to claim as a whole. I further agree that the statutes limit obviousness analysis the claim as a whole. But, but the statutory requirement is limited to just obviousness. I don't understand why you think it applies elsewhere when no case has held that it does?
Still, you recite a catch as the sole element of the claim and define it structure by its operation. The point of my post was not that 112, p.6 "saved" your claim by authorizing it. My point is the exact opposite.
In order to be saved or authorized by section 112 paragraph 6, there are two requirements. First, that the claim in the proper format, i.e. use the magic words "means for" or their equivalent. The second, is that the claim element appear in a combination claim. Your claim fails both criteria, and therefore is not saved by section 112 paragraph 6.
For this reason, your claim is functional at the point of novelty, meaning that its structure is defined in the claim by what it does rather than that by what it is, and therefore fails any of Halliburton, General Electric v. Wabash, or Perkins Glue.
Let's I somewhat agree with everything in your post, but I will like to distinguish real computers in your experience with real computers with claims of a patent.
Let's imagine a noise reduction algorithm. It takes noisy data, and transforms the noisy data into noise-free data. The algorithm is independent of any machine. It can be practiced by the human in his brain. It can be practiced by a human using pencil and paper. It can be practiced by human using an Abacus. It can be practiced by human using a calculator. It can be practiced by human using a computer to perform some calculations.
I take it is your position, that all of the above cannot be patented because they are the actions of a human being performing calculations and not of a machine. Where I think you would agree that patentability begins is where the machine, independent of a human, reads data, conducts the algorithm, and stores the output data on a storage device or outputs the data to some recording device or to some other machine that uses it. Do you agree?
Let's, thanks. Now we are making progress.
So when one claims a programmed computer, one implicitly is claiming at least a computer readable memory storing the program, and, as a separate element, a CPU. You did not say whether the computer readable memory had to be associated with the CPU in some physical relationship sense that the program could be executed by the CPU from the computer readable medium. However, I will make that presumption for you. If you disagree let me know.
Now assuming that the program is located on such a computer readable medium, but the accused infringer demonstrates to the satisfaction of the court that the program is never executed, is there any infringement in point of fact? For example, assume, for the sake of this argument, that the program's actual execution is blocked by license verification software, and no license fee as ever been paid with respect to a particular machine, or, that the licensing program as a whole has not yet been activated.
“I think Dennis should consider banning people that are being paid to spam this blog”
Won’t happen.
This would mean a 90% drop in blog postings – 60% directly by the empty wagon vocal minority crowd and another 30% who post in direct response to the n_aked shilling.
Remember even though you erased it from my Paper port I have plenty of copies. of the Oct. 19, 1995 Letter. and the fact that there was NOOOOOOOOOOOOOOOOO MEANNNNNNNNNNS and only Flaps..So from the very beginning means was exactly what was expected. But the fact that it was so wonderful made it hard to resist. And I could not get an Atty. for Malpractice to save my Life AL.
I made the statement that I am not being paid for my posts here. Can the others in this thread make that statement? I don’t think so.
I think Dennis should consider banning people that are being paid to spam this blog. I, for one, am likely to stop participating here since I it appears there are shills that are paid for their posts.
IANAE: you are always so patently obvious. Your lame attempts at throwing up smoke never work. You should re-name yourself Mr. Red Herring.
Ned,
Now people are pretending to misunderstand you?
Not only is the rest of the world wrong and you singularly are correct, but those who are wrong only pretend to misunderstand you?
You are WAY too full of yourself.
“But the machine must be a component in a systemis the machine that you speak of. Oh, and you will love this, the court has made clear that the components of such a machine are to be treated equally, whether those components are hardware components, whether those components are firmware components, or whether those components are software components.
As much as you dislike the law as it stand today, the sooner you acknowledge just what that law says, the sooner your posts may start to gather some respectability. Otherwise, it is just more hundreds of ranting posts in some make-believe world. And yes, I know who you used to be, but the shell that posts here is but a sad remnant of that person.
Imagine that – functional claiming that does not invoke 112 P6?
Who would have thought that possible?
“What say you 6, Malcolm, IANAE?”
When you are alone in your c_razy ramblings, and the voices in your head have grown accustomed to each other, it is only natural to seek out those with like minded views.
“You are known by the company you keep” is an adage that “comes to mind”, and Ned’s seeking out of the notorious anti-patent crowd reinforces his “agenda.”
It’s too bad his “Shilling” has been so ineffective of late with his gaffe on the firmware-software eqivalency issue that no one has joined his chorus of postings.
Sometimes, it appears, misery does not love company.
“as I have discussed already, there is no need for the computer to be actually executing the code for the computer to be configured to perform steps A, B, and C.”
And you are not the oly one to have pointed this out to Ned – nevermind that Ned does not respond to those points that are inconvenient to his pet theories.
“Still no comment about my quote from Benson?”
Oh, Ned did comment – he said re-read Benson, which is shorthand for re-read and pay attention only to selected portions and ignore those portions that do not fit his theory.
“What this amounts to is a single means claims, banned by Halliburton and not rescued by 112, p. 6.”
More of the “Magic Microscope” trick – zoom in and out at will to collapse any “means” into a single means claim and wallah, no patent for you (don’t forget to use the magic word “effectively”, and don’t forget that a computer is actually an extremely intricate machine made up of many components and no one would actually believe the machine to be a “single means”).
“Old elements… A new element…”Element by element parsing is not allowed.
Where’d you get this stuff?”
Hi Ned:
Someone may have already pointed this out on the blog but I dont have time to read it all. The answer to your question is: Diehr, the Supreme Courts controlling precedent on 101 subject matter. If you need it, I can cite the exact paragraph and quote the text.
You are welcome.
“Effectively, your mousetrap claims has one apparatus in two states. What this amounts to is a No. Whether the sixth paragraph of 35 U.S.C. § 112 applies depends principally on whether the limitation uses the term “means.” Inventio AG v. ThyssenKrupp Elevator Americas Corporation, __ F.3d __ (Fed. Cir. 2011). When that term is not used, “we presume that the limitation does not invoke § 112 ¶ 6.” Id. The presumption “is a strong one that is not readily overcome.” Id. at 10.single means claims, banned by Halliburton and not rescued by 112, p. 6.”
By reciting “a catch,” I have undoubtedly taken this out of the sixth paragraph of 35 USC 112. Similarly, by reciting a processor, I do the same. Nobody who knows what they are doing looks to invoke the sixth paragraph of 35 USC 112.
“Effectively, your mousetrap claims has one apparatus in two states.”
Precisely … and nothing wrong with it. For mechanical devices, this type of language definitely has it uses.
“What say you 6, Malcolm, IANAE?”
FYI — no attorney worth the paper on which their law degree is printed would ask an examiner what they think about patent law. And you wonder why I think you are a non-lawyer?
“As far as I know, every programmed computer claims that has ties to the real world such transforms signals in the machine is patent eligible.”
Not sure what you mean by “ties to the real world,” but everything I do on a computer has some tie to the real world.
“Bilski is different in that the physical steps were mere data gathering. That is all.”
Bilski was a fringe claim … likely written by an attorney that was overreaching. Again, not a problem for the vast majority of the patent applications at the USPTO. Bilski was a complete non-issue in my book to the extent that it didn’t change the law, as I viewed it.
“when a computer is not tied to a specific use.”
That all depends upon what you mean by “specific use.” What may be a “specific use” to one person is not a “specific use” to another. I dare say that the invention described in Benson had a specific use.
FYI — that being said, I don’t concern myself with Benson for the reasons already discussed. At the time Benson was decided, likely 99.99% of the people in the US had never used or even seen a computer — nonetheless understood computers or computer programming. Even today, there are justices on the Supreme Court that have apparent minimal use of computers (e.g., Scalia). However, once a more “tech savvy” Supreme Court gets seated (probably in another decade before Ginsburg and Scalia leave), I’ll find it hard to believe that any of them will consider software to be a mere “abstract idea” unlike the justices of Benson, who probably thought computers were more science fiction than reality and a few of the justices on the Bilski court (FYI, if you look at Bilski, the older judges were much more likely to be anti-business methods than the younger judges).
Also, a reading of the Bilski (and the other 101 related cases) describe the exceptions to patentability as the “basic tools of scientific and technological work.” With this in mind, I (and I’m sure many others) can make a very persuasive argument that an overwhelming majority of the software being patented today does not constitute a basic tool of science or technological work.
“How is the computer configured if one wants to claim a computer that will sequentially perform Steps A, B and then C?”
The precise configuration, of course, depends upon what steps A, B, and C are. However, a computer configured to perform steps A, B, and C would have some computer progam code, stored in some type of storage device (hard drive, memory, cache, etc.), which when executed by a processor, of the computer would perform steps A, B, and C. Mind you, as I have discussed already, there is no need for the computer to be actually executing the code for the computer to be configured to perform steps A, B, and C.
The details of the exact computer program code isn’t important just like the details of the “fastener” used in the language “a fastener joing the widget A to the widget B.” One of ordinary skill in the art would be able to recognize a fastener (of whatever form) so capable, and one of ordinary skill in the art would be able to recognize computer code (of whatever form), so capable.
One last thing, with the right tools, a person could analyze the state of a computer and be able to determine whether or not the computer was configured to perform A, B, and C. Hence, the computer program code has been elevated to beyond more than an abstract idea.
Actually, Let's, regarding your mousetrap claim, the more I think if it, you are claiming multiple states of a given mousetrap. That is claiming a machine in terms of its operation. Effectively, your mousetrap claims has one apparatus in two states. What this amounts to is a single means claims, banned by Halliburton and not rescued by 112, p. 6.
However, if viewed as a method claim, there appear to be two steps, and the claim might be protected by 112, p. 6.
What say you 6, Malcolm, IANAE?
OK, try this again with a math algorithm comprising Steps A, B and C.
How is the computer configured if one wants to claim a computer that will sequentially perform Steps A, B and then C?
“What does ‘configure to’ mean to you in the context of the apparatus claim?”
First, the language is “configured to” not “configure to.” Second, “configured to” is just another way of saying the processor has a configuration by which the processor can perform A.
For example, consider the claim of:
A mousetrap, comprising:
a catch having a first configuration and
a second configuration, wherein
in the first configuration, the catch of the mousetrap is armed, and
in the second configuration, the catch is released.
Let me rewrite that same claim as follows:
A method of using a mousetrap, comprising
arming a catch of the mousetrap, and
releasing the catch.
When somebody sells a mousetrap, the first claim is infringed without the catch ever being released since the claim only requires that the mousetrap has two configurations — not that the mousetrap is in those configurations.
Still no comment about my quote from Benson?
“Let’s, regarding your quip about me being a non lawyer, are you bucking for a defamation suit?”
Really? Many people would consider that a compliment.
Your profile doesn’t list the real you, so I’m basing my analysis on the quality of your treatment of the law.
not really.
You guys really live in a fantasy world of your own creation, don't you?
So much like Ned – all the sources cited are wrong and only Ned is right.
Why must the entire world be against him?
You guys really need to re-read Benson.
:But if you do not, what about a person typing in a program by hand and then pressing “go.” ”
What about it?
Do you think claims that feature human actions are verbotten?