Professor Osenga - Saving Functional Claiming: The Mismatch of § 112 Reform in the § 101 Reform Debate

Professor Osenga's article Saving Functional Claiming: The Mismatch of § 112 Reform in the § 101 Reform Debate  discusses the state of US patent law reform. It also states linking 35 USC 112 as "part" of the 35 USC 101 patent eligibility reform effort is not a good idea especially for software related inventions.

Copyright © 2020 Robert Moll. All rights reserved.

USPTO - Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112

The USPTO has a free webinar 12-1 PM ET, Tuesday, June 11: Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112.

The USPTO will discuss examination of computer-implemented functional claim limitations under 35 U.S.C. § 112(f) (the step or means plus function clause) and 35 U.S.C. § 112(a) (the enablement and written description clause).

The USPTO requests questions be sent to patentquality@uspto.gov.

Registration is not necessary to attend. More information is available on the USPTO's event page.

Interesting in view of Congress' proposal to revise 35 U.S.C. § 112.

Copyright © 2019 Robert Moll. All rights reserved.

Congress - Draft Bill for Revising 35 U.S.C. § 101, Patent Eligibility and 35 U.S.C. § 112(f)

The Congressional Senate and House Intellectual Property Subcommittees released a draft bill for revisions to 35 U.S.C. § 101 and 35 U.S.C. § 112(f) "to solicit feedback" and discuss in hearings.

The draft bill for revised 35 U.S.C. § 101:

(a) Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

(b) Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.

Section 100 (Definitions):

(k) The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.

The draft bill for revised 35 U.S.C. § 112(f):

(f) Functional Claim Elements Element in Claim for a Combination— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

The proposal also suggests further language be added to construe the statute “in favor of eligibility” and to expressly eliminate the non-statutory exceptions to eligibility.

For details - Senator Tillis et al. Press Release.

If Congress passes this proposed revision to 35 U.S.C. § 101, it may prove favorable to the current problem of novelty issues being analyzed without reference to specific prior art in determining patent eligibility, while the proposed revision to 35 U.S.C. § 112 may prove favorable to defendants seeking to significantly narrow claims by invoking Section 112 treatment whenever the claim recites a function without reference to structure.

Copyright © 2019 Robert Moll. All rights reserved.

USPTO - Enhanced Patent Quality Initiative - USPTO Director Michelle K. Lee

Director of the USPTO Michelle K. Lee continues to focus on the topic of patent quality:

"Patent quality is central to fulfilling a core mission of the USPTO, which as stated in the Constitution, is to “promote the Progress of Science and useful Arts.” It is critically important that the USPTO issue patents that are both Historically, our primary focus has been on correctness, but the evolving patent landscape has challenged us to increase our focus on clarity.

Patents of the highest quality can help to stimulate and promote efficient licensing, research and development, and future innovation without resorting to needless high-cost court proceedings. Through correctness and clarity, such patents better enable potential users of patented technologies to make informed decisions on how to avoid infringement, whether to seek a license, and/or when to settle or litigate a patent dispute. Patent owners also benefit from having clear notice on the boundaries of their patent rights. After successfully reducing the backlog of unexamined patent applications, our agency is redoubling its focus on quality.

We asked for your help on how we can best improve quality—and you responded. Since announcing the Enhanced Patent Quality Initiative earlier this year, we received over 1,200 comments and extensive feedback during our first-ever Patent Quality Summit and roadshows, as well as invaluable direct feedback from our examining corps. This feedback has been tremendously helpful in shaping the direction of our efforts. And with this background, I’m pleased to highlight some of our initial programs under the Enhanced Patent Quality Initiative.

First, we are preparing to launch a Clarity of the Record Pilot under which examiners will include as part of the prosecution record definitions of key terms, important claim constructions, and more detailed reasons for the allowance and rejection of claims. Based on the information we learn from this pilot, we plan to develop best examiner and applicant practices for enhancing the clarity of the record. We also will be launching a new wave of in the coming months emphasizing the benefits and importance of making the record clear and how to achieve greater clarity. Recently, we provided examiners with training on functional claiming and putting statements in the record when the examiner invokes 35 U.S.C. 112(f), which interprets claims under the broadest reasonable interpretation standard and secures a complete and enabled disclosure for a claimed invention. Training for the upcoming year includes an assessment of a fully described invention under 35 U.S.C. 112(a) and best practices for explaining indefiniteness rejections under 35 U.S.C. 112(b).

Second, we are Transforming Our Review Data Capture Process to ensure that reviews of an examiner’s work product by someone in the USPTO will follow the same process and access the same facets of examination. Historically, we have had many different types of quality reviews including supervisory patent examiner reviews of junior examiners and quality assurance team reviews of randomly selected examiner work product. Sometimes the factors reviewed by each differed, and the degree to which the review results were recorded. With only a portion of these review results recorded and different criteria captured in those recordings, the data gathered was not as complete, useful, or voluminous as it could have been. As a result, the USPTO has been able to identify statistically significant trends only on a corps-wide basis, but not at the technology center, art unit, or examiner levels. We are working to unify the review process for all reviewers and systematically record the same review results through an online form, called the “master review form,” which we intend to share with the public.

What are the implications of this new process and new form? This new process will give us the ability to collect and analyze a much greater volume of data from reviews that we were already doing, but that were not previously captured in a centralized, unified way. As we roll out this new review process the amount of data we collect will significantly increase anywhere from three to five times. This will allow us to use big data analytic techniques to identify more detailed trends across the agency based upon statistically significant data including at the technology center, art unit, and even examiner levels. Also, this new process will give us better insight into not just whether the law was applied correctly, but whether the reasons for an examiner’s actions were spelled out in the record clearly and whether there is an omission of a certain type of rejection. For example, for an obvious rejection we are considering not only whether a proper obvious rejection was made, but whether the elements identified in the prior art were mapped onto the claims, whether there are statements in the record explaining the rejection, and whether those statements are clear.

The end results will be the (1) ability to provide more targeted and relevant training to our examiners with much greater precision, (2) increased consistency in work product across the entire examination corps, and (3) greater transparency in how the USPTO evaluates examiners’ work product. You can read more about these and our many other initiatives, such as our pilot and Post Grant Outcomes, which incorporates insight from our Patent Trial and Appeal Board and other proceedings back into the examination process on our new Enhanced Patent Quality Initiativepage on our website.

Finally, let me close by emphasizing that our Enhanced Patent Quality Initiative is not a “one-and-done” effort. Coming from the private sector, I know that any company that produces a truly top quality product has focused on quality for years, if not decades. The USPTO is committed to no less. The programs presented here are just a start. My goal in establishing a brand new department within the USPTO was to focus exclusively on patent quality and the newly created executive level position of Deputy Commissioner for Patent Quality will ensure enhanced quality now, and into the future. With your input we intend to identify additional ways we can enhance patent quality as defined by our patent quality pillars of excellence in work products, excellence in measuring patent quality, and excellence in customer service.

To that end, we will continue our stakeholder outreach and feedback collection efforts in various ways, such as our monthly. The next Patent Quality Chat webinar on November 10 will focus on the programs presented in this blog and our other quality initiatives. I encourage you to join in regularly to our Patent Quality Chats and visit the Enhanced Patent Quality Initiative page on our website for more information. The website provides recordings of previous Quality Chats as well as upcoming topics for discussion. We are eager to hear from you about our Enhanced Patent Quality Initiative, so please continue to provide your feedback to WorldClassPatentQuality@uspto.gov. Thank you for collaborating with us on this exciting and important initiative!"

Copyright © 2015 Robert Moll. All rights reserved.

Supreme Court Oral Hearing on Definiteness Requirement of 35 USC 112 in Nautilus v. Biosig Instruments

Today, the U.S. Supreme Court held an oral hearing in Nautilus, Inc. v. Biosig Instruments Inc.

Here's a copy of the written transcript of the oral hearing.

As a reminder, Biosig states the question presented to the Supreme Court is (1) whether Petitioner has shown that the Federal Circuit's test for patent indefiniteness under 35 U.S.C. § 112, para. 2, conflicts with this Court's precedent in light of the U.S. Patent and Trademark Office recently informing this Court that there was no conflict, and (2) whether the Federal Circuit erred in giving respect to the presumption of validity specified by Congress in 35 U.S.C. § 282 in considering the invalidity defense of indefiniteness under 35 U.S.C. §112, para. 2.

Nautilus states the question presented is (1) does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations— so long as the ambiguity is not "insoluble" by a court—defeat the statutory requirement of particular and distinct patent claiming, and (2) does the presumption of validity dilute the requirement of particular and distinct patent claiming?

For background: Supreme Court Grants Review of Definiteness Requirement of 35 USC 112 in Nautilus v. Biosig Instruments

Copyright © 2014 Robert Moll. All rights reserved.

Federal Circuit - Elcommerce.com v. SAP - Evidence Required to Support Indefiniteness, 35 USC 112

In Elcommerce.com v. SAP, the Federal Circuit vacated a district court's holding system claims of US Patent No. 6,947,903, owned by Elcommerce, invalid for indefiniteness under 35 USC 112, because the defendant SAP (1) misinformed the district court the Federal Circuit does not require evidence on the knowledge of the technology by persons of skill in the field; and (2) declined to provide evidence of how such persons would view the description of "structure, materials, or acts" in the specification for performance of the functions recited in means-plus-function elements.

Claim 37 is representative of all of the system claims:

• means for extracting, at each supply chain site, the supply-related data to be monitored, wherein the data is maintained in plural formats located among the supply chain sites, at least one of the supply chain sites corresponding to an independent entity in the supply chain, being independent of another supply chain site;
• means for translating the data to a common format;
• means for uploading and collecting, from each supply chain site, the extracted data to a data collection site;
• means for formatting, at the data collection site, a portion of the collected data, retrieved from at
• least one of the supply chain sites other than the site of the user, into one of a plurality of views, responsive to criteria selected by a user associated with a supply chain site, for presentation to the user, the portion of formatted data being dependent on access rights granted to the user’s supply chain site . . . .

The '903 patent col. 15 ll. 32–48 (emphases added).

SAP argued at the Markman hearing that such "means plus-function terms in the '903 patent do not have supporting 'structure or acts' in the specification, and argued that since such support is absent, SAP could satisfy its burden on indefiniteness without expert testimony or other evidence of the existing knowledge in the field of the invention. SAP urged that Federal Circuit precedent does 'not require' such evidence."

Elcommerce in turn argued "that determination of the adequacy of the supporting structure or acts is made from the viewpoint of persons of skill in the field of the invention, and that evidence of how such persons would view the description should be presented to the court."

During the Markman hearing the district court asked for such evidence:

'THE COURT: Well, what evidence is there of what a person of ordinary skill in the art would understand the structure as defined in the patent to be, what evidence is there of that?

SAP: Your Honor, we haven’t submitted a declaration or separate evidence from somebody of ordinary skill in the art who says, I read the patent and I don’t see any structure. We’re actually not required to do that and, under the case law, the Federal Circuit’s case law, as well as other cases interpreting it, that's not a requirement. We can simply point to the absence of structure and, if it's not there, it's not there."

SAP persisted that the Federal Circuit "does 'not require' evidence of how a person of ordinary skill would understand the patent. The record shows the judge’s concern with this decisional approach to complex technology:

THE COURT: How am I to determine what one of ordinary skill in the art would think?

SAP: Well, your Honor, that’s what I’m here to do is to try to convince you that all those things Mr. Benson pointed to, it’s not structure. He’s simply pointing to phrases in the patent that repeat the function and simply repeating the function and drawing a box around it doesn’t convert it into structure."

This court's inquiry continued at the Markman hearing. "SAP presented only attorney argument concerning the structure and acts set forth in the patent, and Elcommerce stressed that SAP bears the burden of proving invalidity of duly granted claims:

ELCOMMERCE: So, when SAP comes up here, they have to show you that one of ordinary skill in the art would not understand things like the DTE or the DCS or whatever structure we point to, would not be understood by one of ordinary skill in the art to perform the particular function. And they have presented zero evidence about how one of ordinary skill in the art would view what we've shown.

THE COURT: But, how do I determine what is understood by one skilled in the art?

ELCOMMERCE: You’d probably have to get somebody up in the box, that’s the witness box, raise their right hand and testify one way or another. That’s probably, that’s the only way that I know of doing this. To come in and just have a lawyer argue it, is not enough. This is to be determined in view of one of ordinary skill in the art. They have not submitted any declarations of any experts. They haven’t submitted declarations of one of ordinary skill in the art."

The Federal Circuit concluded:

"The district court rightly was concerned about what a person of skill in the art might make of the lengthy written description and flow-charts and the multiple claimed functions. The judge repeatedly asked for evidence of what such a person would understand in this particular setting. Instead of evidence, SAP submitted only attorney argument. The district court accepted SAP’s position that no external evidence was 'required' and could be relied upon to show how a person of ordinary skill would understand the descriptive text and flowcharts and diagrams in the patent. However, the adequacy of a particular description is a case-specific conclusion, not an all-purpose rule of law. Findings as to what is known, what is understood, and what is sufficient, must be based on evidence.

Without evidence, ordinarily neither the district court nor this court can decide whether, for a specific function, the description in the specification is adequate from the viewpoint of a person of ordinary skill in the field of the invention. We do not of course hold that expert testimony will always be needed for every situation; but we do hold that there is no Federal Circuit or other prohibition on such expertise. See Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993). The district court persistently asked for evidence and was given none. Without more SAP cannot overcome the presumption of patent validity.

We conclude that the district court erred in granting summary judgment without a proper evidentiary basis for its conclusion. The burden was on SAP to prove its case, and in the absence of evidence provided by technical experts who meet the Daubert criteria there is a failure of proof. Attorney argument is not evidence. We vacate the district court’s rulings on the system claims, and remand for application of appropriate evidentiary standards and judicial procedures."

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - Examination Guidance and Training Materials

The USPTO has published resources (PDF and Powerpoint slides) that should prove helpful to both applicants and examiners in working through Office actions.

For details see Examination Guidance and Training Materials that discusses:

• Guidelines for determining compliance with 35 USC 112, including identifying limitations that invoke 35 USC 112(f), means-plus-function limitations
• Evaluating subject matter eligibility under 35 USC 101
• Rules of Practice Before the BPAI in Ex Parte Appeals (also useful for PTAB)
• Examination Guidelines in view of KSR Int'l. Co. v. Teleflex Inc. (Obviousness)
• Best Practices in Compact Prosecution
• Interview Practice

Copyright © 2014 Robert Moll. All rights reserved.

Supreme Court Grants Review of Definiteness Requirement of 35 USC 112 in Nautilus v. Biosig Instruments

On January 10, 2014, the U.S. Supreme Court granted a petition for certiorari to review the judgment of the Federal Circuit regarding the definiteness requirement of 35 USC 112(b) in Nautilus, Inc. v. Biosig Instruments, Inc. 

As background this case involves U.S. Patent No. 5,337,753 (the '753 patent), which relates to a heart rate monitor circuit design. The district court held claim 1 invalid for indefiniteness, and the Federal Circuit reversed. 

Claim 1 of the '753 patent recites a heart rate monitor for use by a user in association with exercise apparatus and/or exercise procedures, comprising: 

• an elongate member;
• electronic circuitry including a difference amplifier having a first input terminal of a first polarity and a second input terminal of a second polarity opposite to said first polarity; said elongate member comprising a first half and a second half;
• a first live electrode and a first common electrode mounted on said first half in spaced relationship with each other;
• a second live electrode and a second common electrode mounted on said second half in spaced relationship with each other;
• said first and second common electrodes being connected to each other and to a point of common potential;
• said first live electrode being connected to said first terminal of said difference amplifier and said second live electrode being connected to said second terminal of said difference amplifier;
• a display device disposed on said elongate member;
• wherein, said elongate member is held by said user with one hand of the user on said first half contacting said first live electrode and said first common electrode, and with the other hand of the user on said second half contacting said second live electrode and said second common electrode;
• whereby, a first electromyogram signal will be detected between said first live electrode and said first common electrode, and a second electromyogram signal, of substantially equal magnitude and phase to said first electromyogram signal will be detected between said second live electrode and said second common electrode;
• so that, when said first electromyogram signal is applied to said first terminal and said second electromyogram signal is applied to said second terminal, the first and second electromyogram signals will be subtracted from each other to produce a substantially zero electromyogram signal at the output of said difference amplifier;
• and whereby a first electrocardiograph signal will be detected between said first live electrode and said first common electrode and a second electrocardiograph signal, of substantially equal magnitude but of opposite phase to said first electrocardiograph signal will be detected between said second live electrode and said second common electrode;
• so that, when said first electrocardiograph signal is applied to said first terminal and said second electrocardiograph signal is applied to said second terminal, the first and second electrocardiograph signals will be added to each other to produce a non-zero electrocardiograph signal at the output of said difference amplifier;
• means for measuring time intervals between heart pulses on detected electrocardiograph signal;
• means for calculating the heart rate of said user using said measure time intervals;
• said means for calculating being connected to said display device;
• whereby, the heart rate of said user is displayed on said display device (emphasis added).

35 U.S.C. § 112(b) requires a patent claim "particularly point out and distinctly claim the invention" so the public is given notice of the scope of the claim, that is, what can't be done without patent license. The Federal Circuit has stated a claim is definite and valid if it "reasonably apprises one of ordinary skill in the art of the scope of the invention. The Federal Circuit has stated a claim is not indefinite, because it contains words of degree such as "substantially", the parties disagree on claim interpretation, the claim is difficult to interpret, or an error in the claim is correctable in multiple ways. The Federal Circuit has even stated a claim is only indefinite if it is "insolubly ambiguous."

The briefs are lengthy, but in a nutshell Nautilus argued that "spaced relationship" recited in "a first live electrode and a first common electrode mounted on said first half in spaced relationship with each other" and "a second live electrode and a second common electrode mounted on said second half in spaced relationship with each other" made claim 1 indefinite. It also argued that Biosig kept changing the meaning of "spaced relationship" to obtain allowance, avoid invalidity challenges, and prove infringement. Biosig argued that (1) Nautilus misrepresented the prosecution history, (2) one of ordinary skill would be able to measure whether the electrodes were in such a spaced relationship that would substantially eliminated EMG signals when the device was used, and (3) the claim had not undergone multiple metamorphoses.

Biosig states the question presented to the Supreme Court is as follows: whether Petitioner has shown that the Federal Circuit's test for patent indefiniteness under 35 U.S.C. § 112, para. 2, conflicts with this Court's precedent in light of the U.S. Patent and Trademark Office recently informing this Court that there was no conflict, and whether the Federal Circuit erred in giving respect to the presumption of validity specified by Congress in 35 U.S.C. § 282 in considering the invalidity defense of indefiniteness under 35 U.S.C. §112, para. 2.

Nautilus states the question presented to the Supreme Court is as follows: does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations— so long as the ambiguity is not "insoluble" by a court—defeat the statutory requirement of particular and distinct patent claiming? Does the presumption of validity dilute the requirement of particular and distinct patent claiming?

The SCOTUS blog has the legal briefs and more details at Nautilus, Inc. v. Biosig Instruments, Inc.

I expect the Supreme Court to reformulate a definiteness requirement that is functionally like the standard for resolving ambiguity in contracts, that is, whatever ambiguity exists in the contract will be construed against the drafter. This will reemphasize U.S. patent law should be analyzed consistent with analogous areas of law and the Supreme Court's willingness to limit the Federal Circuit special rules. Whatever happens, I think this case has the potential to impact the value of many U.S. patents.  

Copyright © 2014 Robert Moll. All rights reserved.

American Invents Act Driving More Provisional Application Filings

Professor Dennis Crouch's Provisional Patent Applications as a Flash in the Pan: Many are Filed and Many are Abandoned contains a graph showing provisionals have steadily increased from 1995 to 2012. In FY 2012, we are up to 160,000 filings! In a smaller study he found that 35% of provisionals do not include a single claim. Claims aren't required so this is not surprising, but it is surprising that 15% of the provisionals are a stack of presentation materials (e.g., PowerPoint?) since a provisional must enable the claimed invention. See my articles for an explanation:

The Benefits of Provisional Applications: Slip, Sliding Away

Leader Technologies v. FaceBook - Provisional Fails to Save Patent from On Sale Bar and Public Use

Whether or not we love or hate provisionals, we should expect the annual filing rates to rise. The AIA first inventor to file provisions contained in 35 USC 102 and effective on March 16, 2013 retain a one year grace period for inventor (and inventor derived) disclosures, but do not expressly shield a pre-filing offer for sale, a public use, or a publication that cannot be traced back to one of the inventors.

Harold Wegner says the scope of the AIA grace period is an open question. See Wegner, The 2011 Patent Law: "Leahy-Smith maintains the concept of a one year grace period for inventor's pre-filing activities but defines the grace period as limited to the applicant's 'disclosures' of the invention, making it an open question whether a secret commercialization or other 'public use' or 'on sale' events fall under the grace period because they may not constitute 'disclosures' of the invention."

For now it's safer to take a narrow view of the grace period. Thus, a provisional or a nonprovisional satisfying 35 USC 112 must be filed before an offer for sale or public use of the invention. If an examiner assumes a nonprovisional is entitled to the provisional filing date, a sketchy provisional may as well have a flag: "litigators here is a promising date range for prior art to invalidate a patent-- between the provisional and the nonprovisional filing dates" (i.e., when the technology is most developed and time-wise qualified). Many provisionals do not satisfy 35 USC 112 and nonprovisionals depending on them for priority may find the effective filing date is the nonprovisional filing date.

The fact more than half of provisionals are abandoned without the filing of a nonprovisional is consistent with the PTO's stated purpose: to give inventors one year to explore whether the invention has commercial prospects before filing a more expensive nonprovisional. The AIPLA Report of the Economic Survey 2011 says a typical charge for a provisional is $3,500, while the typical charge for a nonprovisional is $7,000 - $12,000. I see the cost savings, but given the price difference note it isn't realistic to expect both are equal to the task of satisfying 35 USC 112.

Copyright © 2012 Robert Moll. All rights reserved.

Software Patent Eligibility - Ending 40 Years of Controversy?

Today, one of the most controversial topics in US patent law is whether and when software related inventions are patent eligible.

The Federal Circuit opinions in July 2012: CLS Bank International v. Alice Corporation in favor of patent eligibility and Bancorp Services v. Sun Life Assurance Company of Canada against patent eligibility illustrate the controversy today.

Professor Crouch's article Ongoing Debate: Is Software Patentable? notes the different results seem to stem from differences in how to construe what is the invention (by the claim as a whole or by its "core inventive concept") and the frustration of watching the controversy remain unresolved after 40 years of case law. (Groklaw's Does Programming a Computer Make a New Machine? citing In re Prater in 1969 suggests this controversy goes back at least 43 years).

Because of the uncertainty associated with a Supreme Court that finds it difficult to affirm the Federal Circuit (See WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101), the PTO community (applicants, attorneys, and examiners) should not keep chasing down if a claimed invention (or the slippery "core inventive concept") is an abstract idea.

Instead, let's address software patentability under tests that are readily applied as recommended by Director Kappos' Some Thoughts on Patentability under 35 USC 102 (novelty/statutory bars), 35 USC 103 (obviousness), and 35 USC 112 (written description, enablement, and definiteness), and recast the abstract idea exception to 35 USC 101 as an overclaiming test as proposed by Professors Mark Lemley, Michael Risch, Ted Sichelman, and Polk Wagner in the Stanford Law Review article Life After Bilski.

Copyright © 2012 Robert Moll. All rights reserved.

PTO Struggling with Patentability of Computer Software?

In Avoiding Subject Matter Problems but Creating Written Description Problems, Professor Crouch states  the PTO is struggling with determining the patentability of computer software.

To illustrate he used the prosecution of the recently issued US Patent No. 8,196,213 to Microsoft. The PTO had rejected a claim directed to a computer readable medium, because that medium encompassed "signals" that are unpatentable under 35 USC 101. See In re Nuijten, 500 F. 3d 1346 ( Fed. Cir. 2007).

As background, In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995) held computer software embodied in a floppy disk (i.e., a computer readable medium) was a patentable manufacture within the meaning of 35 USC 101.

To overcome this 35 USC 101 rejection, Microsoft added the underlined language in claim 1:

A computer readable storage medium excluding signals including computer executable instructions for securing a computing device, the computer readable storage medium comprising:

• instructions for validating, by a title player effectuated by native instructions, a digital signature of a manager and a digital signature of a managed library;
• instructions for granting, to the managed library, access to native functions of an operating system in response to validating a first digital certificate associated with the managed library; and
• instructions for denying, by the manager, an attempt by a managed application to access a native function of the operating system in response to determining that a second digital certificate associated with the managed application indicates that the managed application is required to access native functions of the operating system through the managed library (emphasis added).

As to whether the amendment was supported, Professor Crouch noted the specification discusses computer storage (e.g., flash, RAM) but not signals. My initial reaction is why do you need to amend the claim to exclude what is inherent in a computer storage medium? All data storage devices have I/O signals. Many patents recite a storage device without reciting that the various inherent features are "excluded."

After setting forth these facts, Professor Crouch asks readers should the PTO reject the amendment for failing to meet the written description of 35 USC 112?

Under US patent law, written description is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.

By this standard, those skilled in the art would understand the inventors had possession of the claimed invention, because they would know the subject matter could be implemented on computer readable storage medium without signals.

Given the PTO prefers we use the "magic words," Microsoft's amendment might be less subject to debate if it recited: "A non-transitory computer readable storage medium ...." See the PTO notice Subject Matter Eligibility of Computer Readable Media.

Also see Patently-O's Survey Response: Does the Amendment Violate the Written Description Requirement? which indicates most readers agreed the amendment met the written description requirement.

Copyright © 2012 Robert Moll. All rights reserved.

Ergo Licensing v. CareFusion - Federal Circuit Finds Means-Plus-Function Claims Invalid Again!

This week Professor Crouch has a graph that confirms that patents with at least one means-plus-function claim (indicated by "means for") have steadily dropped for decades, e.g., from 45% in 1989 to 10% today. It's no wonder since 35 USC 112 will not permit them to be broadly interpreted and recently the Federal Circuit tends to hold them indefinite and invalid. 

The Federal Circuit describes means-plus-function claim in its recent decision: Ergo Licensing v. CareFusion: "Section 112, ¶ 2 requires that a patent specification "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112 (2006). An applicant may express an element of a claim "as a means or step for performing a specified function . . . and such claim shall be construed to cover the corresponding structure . . . described in the specification and equivalents thereof." 35 U.S.C. § 112 ¶ 6. In exchange for the ability to use a generic means expression for a claim limitation, "the applicant must indicate in the specification what structure constitutes the means." Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 948 (Fed. Cir. 2007). Such structure "must be clearly linked or associated with the claimed function." Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1219 (Fed. Cir. 2003). Failure to specify the corresponding structure in the specification amounts to impermissible pure functional claiming. Id. at 1211. "Although [§ 112 ¶ 6] statutorily provides that one may use means-plus-function language in a claim, one is still subject to the requirement that a claim `particularly point out and distinctly claim' the invention." In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). If an applicant does not disclose structure for a means-plus-function term, the claim is indefinite."

Let's see how this law plays out with respect to the facts in Ergo. There the '412 patent is described as a system to meter and deliver fluids into a patient. Each fluid is metered so different fluids may be delivered at different rates. To meter the fluids, adjusting means are associated with each fluid source to influence the fluid flow for each source. The adjusting means are coupled to a control device, which permits the selective actuation and control of individual fluid flow sources via adjusting means. The control device has data fields that describe the metering of the individual fluid flows. A screen and keypad  can input information into the control device such as the metering rate for each fluid flow source. 

For our discussion claim 1 is representative:

1. Multichannel metering system for metering preselected fluid flows, comprising:

a plurality of individual fluid flow sources;

a plurality of discharge lines, each line of said discharge lines being connected to a corresponding one of said fluid flow sources;

adjusting means associated with said fluid flow sources for acting on said fluid flow sources to influence fluid flow of said fluid flow sources;

programmable control means coupled with said adjusting means for controlling said adjusting means, said programmable control means having data fields describing metering properties of individual fluid flows;

an operating surface connected to said control means;

data input means for input of data into said control means, said data input means being at least partially connected to said operating surface;

data output means for output of data from said control means, said data output means being connected to said operating surface;

selector switch means forming a part of said data input means, said selector switch means including a plurality of selector switches, each selector switch being associated with a set of said fluid flow sources for representing segments of data fields belonging to a corresponding set of fluid flow sources on said operating surface, said each selector switch functionally connecting said data input means with said data fields belonging to said associated set of fluid flow sources.

(emphasis added)

The Federal Circuit focused on the "programmable control means" italicized in claim 1. Ergo, the patent owner, argued the "control device" was a general purpose computer and the corresponding structure for the function recited in the programmable control means in claim 1. The Federal Circuit noted a general purpose computer could not perform the function recited in the programmable means. The Federal Circuit held saying the control device included memory did not help, because memory is not a structure capable of performing the function of controlling the adjustment means. Yet the Federal Circuit noted if the specification recited an algorithm to perform the function, the patent would have satisfied the definiteness requirement of 35 USC 112.

The Federal Circuit stated: "Until recently, we have consistently required "that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor." See Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). "Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to `the corresponding structure, material, or acts' that perform the function, as required by section 112 paragraph 6." Id. Requiring disclosure of an algorithm properly defines the scope of the claim and prevents pure functional claiming.

In re Katz Interactive Call Processing Patent Litigation identified a narrow exception to the requirement that an algorithm must be disclosed for a general-purpose computer to satisfy the disclosure requirement: when the function "can be achieved by any general purpose computer without special programming." 639 F.3d 1303, 1316 (Fed. Cir. 2011). In In re Katz, we held that "[a]bsent a possible narrower construction" of the terms "processing," "receiving," and "storing," the disclosure of a general-purpose computer was sufficient. Id. We explained that "[i]n substance, claiming `means for processing,' `receiving,' and `storing' may simply claim a general purpose computer, although in means-plus-function terms." Id. at 1316 n.11. In other words, a general-purpose computer is sufficient structure if the function of a term such as "means for processing" requires no more than merely "processing," which any general-purpose computer may do without any special programming. Id. at 1316-17. If special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies. It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed."

Given these difficulties why did means-plus-function claims appear in 45% of the patents roughly two decades ago? I am not sure, but sometimes they correspond to what is invented. Further, they are easy to write. You simply recite "means for" and the function performed. Identifying a structure is not part of claim drafting. Further, it is easy to convert a method claim into a means-plus-function claim.

Despite the ease factor, most companies may want to limit their use in the broadest claim for several reasons. Recently, courts routinely invalidate mean-plus-function claims if it appears the structure is not highly detailed. Courts interpret means-plus-function claims to only cover the exact corresponding structure, i.e., no equivalents are afforded. And as a matter of experience, examiners do not interpret them so narrowly. Instead any means performing the recited function is relevant for raising a prior art rejection. Some may complain that this tendency in examination is unfair. But these problems at least in examination have been known for years. And unlike dissenting Judge Newman and patent blogger Gene Quinn, I don't think this case departs from recent Federal Circuit case law.

Copyright © 2012 Robert Moll. All rights reserved.

Ex Parte Adelman - Board Reverses Patent Eligibility Rejections Because Claims Indefinite

In the post on Myspace v. Graphon Corp. I noted the Federal Circuit invalidated claims as not novel (35 USC 102) and obvious (35 USC 103) and sidestepped what some consider a threshold concern: Are the claims directed to subject matter that is eligible for patent protection (35 USC 101)? The Federal Circuit seemed to justify the avoidance of addressing the section 101 defense by noting the law is currently a "murky morass"

The Board of Patent Appeals also recently decided patent eligibility is not a threshold concern. In Ex Parte Adelman the Board reversed the examiner's rejections under 35 USC 101, because the examiner failed to address the critical lack of a concrete definition of the invention. Go Daddy Group appealed claims relating to a system for designating membership in an online business community. Claim 1 recites, among other things, "means for designating a plurality of members" and "means for providing a ... membership designator." The Board stated it wastes resources to consider whether claims are eligible for patent protection or overcome the prior art, when the claims cannot be reasonably understood without resort to speculation. The Board stated the claims were indefinite under 35 USC 112, because the specification failed to disclose algorithm(s) supporting the recited functions in claim 1.

Thus, the "new" threshold concern may be that applicants particularly point out and distinctly claim the invention as required by section 112. See Aristocrat Techs. Australia Party Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1337 (Fed. Cir. 2008); Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008).

Copyright © 2012 Robert Moll. All rights reserved.