Perspective: Weakening Alice Will Weaken the U.S. Patent System’s Second Engine of Innovation

By John Vandenberg
June 19, 2019

“Thanks to centuries of common law establishing the ‘abstractness exclusion’ to patent eligibility, Huawei and others cannot obtain computer or processor claims directed to useful and innovative mathematical algorithms, mental processes, information manipulation, or results without specifying how to accomplish the result. The draft bill text would change that.”

https://depositphotos.com/211721148/stock-illustration-emblem-alice-colored-cartoon-vector.htmlToday is Alice’s fifth birthday; some may not be celebrating, but as a birthday gift, John Vandenberg argues the decision was not new law and should not be abrogated.

On the third day of the U.S. Senate Judiciary Committee – IP Subcommittee’s hearings this month on whether to radically revise the standards for patent eligibility, I testified on behalf of our patent system’s under-appreciated second engine of innovation. Below are some of the key arguments I made in my oral and written testimony and my thoughts on why the Alice Corp. v. CLS Bank decision was good law that should not be abrogated.

I. Sec. 101 Reform Risks Weakening Our Patent System’s “Second Engine of Innovation”

Much of the anti-Alice commentary touts our patent system’s first engine of innovation, which uses the lure of monopoly profits or royalties to incentivize innovation and the public disclosure of those innovations. Today’s Sec. 101 jurisprudence is said to harm that first engine of innovation, particularly in life sciences where it is easier to get a patent in Europe and China than in the U.S., causing investment in personalized therapy and medicine R&D in the U.S. to suffer. While some question those factual premises, the “101 status quo” camp primarily responds that Alice (along with IPRs) has curtailed abusive patent troll litigation, cutting patent litigation costs by 40% or more. But, another important point has received little attention: expanding what can be patented, and how claimed, risks harming our patent system’s second engine of innovation.

The second engine of innovation starts the day a patent issues. The patent incentivizes others to design around the patent by inventing a new and perhaps better solution that they can commercialize without having to pay the patent owner a penny. The Patent Act is carefully crafted to advance this second engine of innovation.

The clarity and precision demand of Sec. 112(b) advances this second engine of innovation by prohibiting an innovation-chilling zone of uncertainty around the boundary of a patent claim. The written description requirement of Sec. 112(a) advances it by prohibiting patents claiming more than they contribute. Sec. 112(f) advances this second engine of innovation by making it easier to draft claims limited to particular solutions, allowing the follow-on innovator to commercialize a different solution without fear of infringement liability. And, the patent-eligibility exclusions implicit in Sec. 101 advance this second engine of innovation by prohibiting patenting of mental processes, mathematical algorithms, mere manipulations of information, and mere desired functions or results without being limited to a particular way (how) to accomplish them—all of which inherently deter more follow-on innovation than necessary to induce the first innovation.

The “abstractness” exclusion implicit in Sec. 101 is the Federal Circuit’s primary tool to invalidate patents claiming desired results, not specific solutions for accomplishing the result. E.g., Univ. of Fla. Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363 (Fed. Cir. 2019) (“Neither the … patent, nor its claims, explains how the drivers do the conversion …. [T]he drivers are described [in the specification] in purely functional terms: they ‘facilitate data exchanges,’ ‘convert received data streams to a format independent of any particular bedside machine,’ ‘translate the data stream,’ ‘interpret data streams,’ ‘facilitate communications with the bedside machine,’ and ‘interpret [discrete] segments’ in a ‘data stream for the machine.’”); Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016) (“There is nothing in claim 1 that is directed to how to implement out-of-region broadcasting on a cellular telephone. Rather, the claim is drawn to the idea itself.”); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015) (“the end result of ‘maintaining the state’ is described as the innovation over the prior art,” but “claim 1 contains no restriction on how the result is accomplished. The mechanism for maintaining the state is not described, although this is stated to be the essential innovation.”).

II. The Draft Bill Text Allows Innovation-Harming Abstract Claims

In May 2019, Huawei obtained 210 U.S. utility patents. Thanks to centuries of common law establishing the “abstractness exclusion” to patent eligibility, Huawei and others cannot obtain computer or processor claims directed to useful and innovative mathematical algorithms, mental processes, information manipulation, or results without specifying how to accomplish the result. The draft bill text would change that.

The following draft bill text language expressly instructs courts that what today is considered an “abstract idea” is no longer ineligible for patenting (so long as other requirements are met):

No implicit or other judicially created exceptions to subject matter eligibility, including “abstract ideas,” “laws of nature,” or “natural phenomena,” shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated.

Does Sec. 100(k) of the draft bill text resurrect these abrogated eligibility exclusions?

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

No. This “specific and practical utility” language already is the law, and is toothless. An invention lacks specific and practical utility only if it is “totally incapable of achieving a useful result.” Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1571 (Fed. Cir. 1992). And processors are in a “field of technology” and programmed by “human intervention.”

More broadly, I question the premise that we can erase centuries of common law, including more than a dozen Supreme Court decisions and more than 80 post-Alice Federal Circuit decisions, enforcing limits on patent-eligible subject matter in order to maintain the delicate balance between the first and second engines of innovation, but then find a few words that somehow preserve the mathematics, mental process and other eligibility exclusions, and do so with increased predictability.

A narrower solution has been suggested by Judge Dyk: “if the breadth of the claim is sufficiently limited to a specific application of the new law of nature discovered by the patent applicant and reduced to practice, I think that the novelty of the discovery should be enough to supply the necessary inventive concept.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 809 F.3d 1282, 1291(Fed. Cir. 2015) (Dyk, concurring in denial of rehearing en banc.)

III. Alice is Not New. Alice is Not a Mess. Alice Does Not Prevent Patenting Personalized Treatments

Several arguments favoring radical reform are contrary to fact.

Alice is not new law. The following is a good description of the Alice standard: “Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.” That was in 1978. Parker v. Flook, 437 U.S. 584, 594 (1978). Yes, the Patent Office and Federal Circuit chose to stray from that controlling precedent, leading to issuance of thousands of plainly invalid patents, and angst when those patents are declared invalid, but that does not make Alice’s embrace of that old law, new law.

Alice is not an unpredictable mess. On the contrary, patent ineligibility today is more predictable than claim construction, indefiniteness, and obviousness (even once the closest prior art is known). If it were a mess, we’d see a higher percentage of reversals for Sec. 101, but we see the opposite.SeeJeremy Anapol and Andrew B. Schwaab (Knobbe Martens), “How Unpredictable is the Alice Analysis?” (October 16, 2018)

Alice / Mayo do not hinder patenting personalized medical treatments. “The claims in Mayo were not directed to a novel method of treating a disease.” Vanda Pharma. v. West-Ward Pharma., 887 F.3d 1117, 1134 (Fed. Cir. 2018). “The claim in Mayo did not go beyond recognizing (i.e., ‘indicates’) a need to increase or decrease a dose. In Mayo, ‘a doctor . . . could violate the patent even if he did not actually alter his treatment decision in the light of the test.’ The claim was not a treatment claim.” Id. at 1135.

IV. The Draft Bill Text Makes Needed Improvements to the Safe Harbor of Sec. 112(f)

Where the draft’s revisions to Sec. 101 would disrupt the second engine of innovation, its revisions to Sec. 112(f) would strengthen it.

A patent claim that recites a desired result or function without being limited—expressly or via Sec. 112(f)—to a particular way of accomplishing that function or result, likely is invalid under Sec. 101, 112(a) and/or 112(b). Sec. 112(f) is a statutory safe harbor for inventors and their patent drafters to avoid such a fate.

Congress enacted Sec. 112(f) as a way for patent drafters to comply with Supreme Court precedents—protecting the second engine of innovation—that “functional” elements, particularly at a point of novelty, invalidate a patent claim for lack of particularity. Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 12 (1946) (“[U]nless frightened from the course of experimentation by broad functional claims like these, inventive genius may evolve many more devices to accomplish the same purpose.”)

The draft bill text eliminates “means or step for performing” from Sec. 112(f). These words have misled courts. Courts have misconstrued “means or step for” as trigger words that patent drafters include in a patent claim to announce that they are triggering Sec. 112(f) or omit to announce that they are not triggering Sec. 112(f). But plainly that is not the purpose of this statute. On the contrary, the pro-inventor intent was to create a safe harbor from the invalidity fate awaiting “functional” patent claims.

The Federal Circuit has described the Congressional intent as follows:

In enacting this provision, Congress struck a balance in allowing patentees to express a claim limitation by reciting a function to be performed rather than by reciting structure for performing that function, while placing specific constraints on how such a limitation is to be construed, namely, by restricting the scope of coverage to only the structure, materials, or acts described in the specification as corresponding to the claimed function and equivalents thereof.

Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc).

The Court rejected the then existing “strong presumption” associated with these particular words, as having led to “a proliferation of functional claiming.” Id. at 1349. This was a good step but did not solve the problems identified by the Court. There is still uncertainty and a proliferation of functional claiming.

The draft bill text’s amendment to Sec. 112(f) will finish the job by eliminating the words that caused the confusion: “means or step for.”

Many object that the amendment would broaden the reach of Sec. 112(f) and that would be bad for inventors. But they have it backwards. Sec. 112(f) is a safe harbor against a facially “functional” claim element invalidating a patent claim under Sec. 101 (for claiming a result, not how to accomplish it), 112(a) (for lack of description support for the full scope of the “functional” claim element), or 112(b) (for failure to “particularly point out” the claimed invention).

In sum, while it would not undo the harm that would be caused by overturning the abstractness exclusion, removing “means or step for performing” from Sec. 112(f) would move us closer both to the goals of the en banc Federal Circuit in Williamson, and also to the original Congressional attempt to spur innovation by limiting patents to particular solutions, i.e., to how a function or result is accomplished.

V.  The Patent Office Should be Required to Identify Each Claim Element Construed Under Sec. 112(f)

Adding the following language would further improve Sec. 112(f): “The Director shall identify each such claim element in the record of the patent.”

The Patent Office already urges its examiners to do this, but it is not always done and not mandated by statute. See M.P.E.P. 2181 VI. While a court is not bound by any Patent Office determination whether a claim element is construed under Sec. 112(f), most courts are more likely to agree with the Patent Office if the Patent Office makes its determination on the record, as mandated by statute, allowing an inventor to either acquiesce in that construction or amend the claim to either trigger or not trigger Sec. 112(f). Therefore, this simple addition would give both patent applicants and would-be next innovators greater certainty about the scope of the patent’s claims.

Image Source: Deposit Photos
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The Author

John Vandenberg

John Vandenberg is a Partner with Klarquist Sparkman, LLP. He is a registered patent attorney who has been litigating patent lawsuits for 36 years. John argued the winning side in Nautilus v. Biosig (U.S. 2014), the only Supreme Court case in the past 70 years addressing Sec. 112. He is also the author of the PatentDefenses.com patent law summary.

For more information or to contact John, please visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 27 Comments comments.

  1. Ternary June 19, 2019 11:28 am

    “Huawei and others cannot obtain computer or processor claims directed to useful and innovative mathematical algorithms, …” Is that a good thing?

    John, why such inflammatory language? Are you against Huawei obtaining patents? Or are you against anyone obtaining a patent “directed to” something?

    You appear to be a little out of touch with inventions “directed to to useful and innovative mathematical algorithms.” That aspect of abstractness went out the door with the implementation of the Nyquist-Shannon sampling theorem on computers. In fact most inventive aspects of a smartphone rely on that theorem. It is just so that many lawyer types and Courts have not realized (or blatantly ignore) the significance of this theorem in relation to computers.

    Or perhaps you believe that Nyquist-Shannon is an abstract idea?

  2. Jam June 19, 2019 11:42 am

    To say that Alice is not new and not a mess perpetuates the intellectually dishonest legal fiction created by Alice. With Alice, courts and examiners are free arbitrarily, capriciously, and maliciously reject claims regardless of the facts, law, and subject matter. Given the USPTO’s bias to reject applications, this results in fewer innovations being patented. Congress wants any machine to be patentable, so long as it is new and useful. However, it isn’t good enough for the courts that a machine be new and useful. Rather, any claim to a new and useful machine (any claim at all) can be defeated by calling the new and useful functions of the machine the abstract idea and identifying the remaining machine (without the new and useful functions) as something that is well-understood, routine, and conventional. Alice is not a tool to strike down overly broad patents. Alice is the grim reaper of patents that can eviscerate and exterminate any claim to a modern technological advance, but for the impulsive whim or fancy of an irrational judge.

  3. Pro Say June 19, 2019 12:40 pm

    The author’s views are planted firmly in the world of George Orwell’s “1984.”

    A world where up is down, down is up.

    Where good is bad, bad is good.

    China silently roars with delight over such foolishness.

    Disappointing that Gene would permit such swill to tarnish this home of American hope, dreams, and innovation.

  4. Night Writer June 19, 2019 1:00 pm

    >>Much of the anti-Alice commentary touts our patent system’s first engine of innovation,
    >>The second engine of innovation starts the day a patent issues. The patent incentivizes others to design around the patent by inventing a new and perhaps better solution that they can commercialize without having to pay the patent owner a penny.

    This is shear nonsense. You have just fabricated nonsense. First, the movement for patent reform has not been for only the pioneering patents but also improvement patents. You just made all that up.

    >>he “abstractness” exclusion implicit in Sec. 101 is the Federal Circuit’s primary tool to invalidate patents claiming desired results, not specific solutions for accomplishing the result.

    This is the rub. You contradict yourself. 112 was designed for this type of invalidation. The claims have to be enabled and there has to be a written description of the invention according to 112, so tell us how it could be that no solutions are claimed?

    Not going to bother going through all this. It is pretty clear someone has been making a big pay check helping the efficient infringer movement.

    You see, Gene, this is the problem. People like this are paid to do nothing but make things up about patents and why they should be burnt down. We simply don’t have the resources to fight people like this.

  5. Night Writer June 19, 2019 1:02 pm

    The abstract exception was meant for things like “build the machine with fewer parts.” 112 ended taking care of the abstract exception with left the word “abstract” unused and thus perfect for the Scotus to ascribe a new meaning to it. The new meaning is “I don’t like it so it is invalid.”

  6. Ternary June 19, 2019 1:02 pm

    I disagree with the assumption that “Weakening Alice Will Weaken …. Innovation.” I believe in exactly the opposite. Inventions based on operational mathematical frameworks are the future. These inventions can be developed by smart independent inventors. No large, capital intensive infrastructure is required. The objective of the establishment is to prevent unknown start-ups to dominate future technologies that can and will diminish the power of the incumbents. I believe that many potential “mathematical” inventors are scared away from trying to get a patent. The problems of using mathematics in patent claims are well known. The potential issues of enforcing “mathematical claims” in patents are also well known.

    Science and technology have changed dramatically in using mathematics. It seems to be a change that has gone unnoticed in the patent system. In fact, reactionary forces try to put the genie back in the bottle, by asserting and applying old and outdated concepts to modern technology. For instance, the whole concept of RSA public-key exchange cannot be captured by concepts of 20th century technology. The explosion in data exchange and large (very large) data sets over insecure public channels have no equivalence in that period.

    We should bring the patent system to the 21th century and not try to protect incumbents from change by forcing old concepts upon protecting inventions. That will limit new inventions.

  7. Night Writer June 19, 2019 1:03 pm

    @4 Just to emphasize this point about improvement patents, Jimmy Carter is the one that saw patents as a way to end the great malaise and the primary motive for this was improvement patents, i.e., either improve your product or lose market share as others will improve it.

  8. concerned June 19, 2019 1:04 pm

    Sorry, this article does not reconcile with the prosecution of my patent application.

    A step by step solution was claimed that solved a problem beyond the reach of working professionals and experts since 1956. Colleagues who have seen the prototype have congratulated me on the discovery that was deemed routine, conventional and well understood by the Examiner.

    BTW: The Examiner failed to mention anyone who so routinely and conventionally does my process and he admittedly had to go way outside my field of technology for his rejection. We also proved that no end user does this process.

    Either the working professional and experts are stupid in my field or Alice is a mess.

  9. md hoyle June 19, 2019 1:09 pm

    After reading your ridiculous comments, I reviewed your case history and realized who your masters are. No wonder you love Alice! Try it on the other side for a change! Then! You will understand the disaster it is.

    Power Analytics Corporation v. Operation Technology, Inc., Case Nos. 18-1428 (Fed. Cir.), 16-cv-01955 (C.D. Cal.), 16-cv-00177 (D. Del.): Won summary affirmance at the U.S. Court of Appeals for the Federal Circuit of the invalidation of 138 claims in four patents in the field of modeling electrical systems. The Court in the Central District of California found all claims invalid under the abstractness exclusion to patent eligibility under § 101 of the Patent Act.
    E-System Design, Inc. v. Mentor Graphics Corp., Case No. 17-cv-682 (E.D. Tex.): Represented EDA company in which the Court in the Eastern District of Texas invalidated all claims against the client based on the more stringent “reasonable certainty” test for claim indefiniteness. This stricter standard was established by the Supreme Court in Nautilus Inc. v. Biosig Instruments Inc., where Klarquist had successfully represented Nautilus.
    Biosig Instruments, Inc. v. Nautilus, Inc., Case No. 13-369 (S. Ct.): Argued before the United States Supreme Court to reject the Federal Circuit’s lenient standard for definiteness. The Supreme Court unanimously held that the standard for definiteness applied by the Federal Circuit was too liberal. And it articulated that patent claims are indefinite if “read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” The asserted patent involved heart rate monitor technology.
    Synopsys, Inc. v. Mentor Graphics, Inc., Case No. 12-cv-06467 (N.D. Cal.): Represented EDA company in competitor multi-patent litigation. Argued and won partial summary judgment of patent invalidity under Section 101.
    Metasearch Systems, LLC v. Priceline.com, Travelocity.com, Expedia, Orbitz, & American Express, Case Nos. 12-cv-01188, 12-cv-01189, 12-cv-1190, 12-cv-01191, 12-cv-01223, 12-cv-01225 (D. Del.): Defended group of on-line travel companies against seven patents related to metasearching. Successfully argued Covered Business Method patent review trials instituted by the Patent Trial & Appeal Board, which found all claims unpatentable, resulting in dismissal of the lawsuit.
    A Pty LTD v. eBay, et al., Case No. 15-cv-00155 (W.D. Tex.): Represented eBay on case involving email communication systems. The complaint was dismissed on a Rule 12 motion, as the Court found the asserted patent invalid as claiming unpatentable subject matter, under Section 101.
    Grupo Bimbo S.A.B. de C.V., et al. v. Snak King Corp., et al., Case No. 13-cv-02147 (C.D. Cal.): Defended Snak King against large Mexican corporation asserting trademarks, trade dress, and patents related to rolled tortilla chips. After Snak King won claim construction on key patent claim terms and after Court held hearing on certain trademark issues, parties reached favorable settlement.
    Realtime Data LLC d/b/a IXO v. SAP America, Inc., Sybase, Hewlett-Packard, & Dell, Case No. 15-cv-00469 (E.D. Tex.): Defending SAP and Hewlett-Packard in multi-patent case involving data compression.
    Big Baboon Inc. v. Hewlett-Packard, et al., Case No. 09-cv-01198 (C.D. Cal.): Representing Hewlett-Packard in multi-defendant multi-patent case involving database systems for end-to-end B2B commerce. Litigation was stayed after Klarquist filed reexaminations on both patents.
    Research Corporation Technologies v. Microsoft Corp., Case No. 01-cv-0658 (D. Ariz.): Defended Microsoft against six asserted patents regarding halftoning technology, including at trial.
    Anascape Ltd. v. Microsoft Corp., et al., Case No. 06-cv-00158 (E.D. Tex.): Represented Microsoft in multi-patent litigation involving Xbox® game controllers, winning partial stay pending reexams and partial summary judgment of non-infringement and no willful infringement (see 2008 WL 7182476).
    Sklar v. Microsoft Corp., Case No. 06-cv-00007 (E.D. Tex.): Defended Microsoft in case relating to Windows® operating system user interface features.
    Network Commerce v. Microsoft Corp., Case Nos. 01-cv-01991 (W.D. Wash), 04-1445 (Fed. Cir.): Led defense team for Microsoft and won summary judgment of non-infringement regarding patents relating to online media distribution. Successfully defended the summary judgment win on appeal. See 422 F.3d 1353 (Fed. Cir. 2005).

  10. Name withheld to protect the innocent June 19, 2019 1:34 pm

    John Vandenberg’s clients (e.g., Microsoft) are those that engage in the longstanding practice of “efficient infringement.” They can infringe with impunity knowing that it has been nearly impossible for any patents to be reliably enforced before being invalidated by the PTAB or by the Federal Courts. He is a shill for the infringing crowd … nothing more, nothing less.

    He (and his clients) have little interest in protecting American innovation. Rather, he (and his clients) are interested in protecting their oligopolies in the technology space. This is all about protecting the profits of companies like Google, Microsoft, and Facebook.

  11. SaysMe June 19, 2019 2:01 pm

    Fail. This writer does not know what he is talking about. Plenty of valid patents have been trashed by the black robed patent death panels.

  12. B June 19, 2019 4:20 pm

    Dear Mr. Vandenberg,

    I will make no disparaging remarks about you or your clients. However, I do insist that you define what is meant by an “inventive concept” consistent with Federal Circuit and Supreme Court precedent.

    If you cannot, your writings are nonsense.

  13. B June 19, 2019 4:44 pm

    “The draft bill text’s amendment to Sec. 112(f) will finish the job by eliminating the words that caused the confusion: ‘means or step for.'”

    On this I have some agreement. A patent claim should not exceed the scope of a specification. I’m not convinced that Giles Rich and Pat Federico considered that “means for” is necessary to trigger 112(f). Most patent attorneys currently write claims to include structural limitations when possible.

    On the other hand, the Federal Circuit is on record as bypassing claim construction when determining patent eligibility.

  14. Night Writer June 19, 2019 7:06 pm

    @13 B

    The scope of claims has to be scope of enablement for all embodiments that meet the WD. If this isn’t true, then a patent will enable and describe embodiments that are not cover in the scope of the claims and it will be trivial to not infringe.

    That is axiomatic.

  15. B June 19, 2019 8:16 pm

    “The scope of claims has to be scope of enablement for all embodiments that meet the WD. . . . .”

    And I absolutely agree. My point is that it is possible to construe functional language too broadly. This is part of the problem with junk law suits

  16. Lost In Norway June 20, 2019 4:01 am

    I think what drives me crazy in this debate is that everyone and their favorite monkey have mistaken “Patent Eligible” for automatically getting a patent. An application still has to survive 102, 103, and 112. Maybe people have gotten too used to the world where 101 has 102, 103, and 112 baked right in.

  17. JPM June 20, 2019 6:34 am

    Sounds like the author has built up a nice book of business with efficient infringers such as Google.

    Maybe the author is afraid that his business helping efficient infringers infringe will disappear if Senator Coons and Senator Tillis fix the abomination known as Alice.

    The attorney who wrote this is obviously not an attorney who represents patent owners such as inventors.

    It is hilarious though how the infringer lobby has moved on to position Huewai now as the boogie man. 10 years ago it was “patent trolls” now it is China.

    In my opinion, this post reeks of desperation. Senator Coons and Senator Tillis must be on the right path to solving the 101 issues that plague the patent system today.

  18. Night Writer June 20, 2019 6:38 am

    @15 B

    “My point is that it is possible to construe functional language too broadly.”

    I think this has to be fleshed out a lot more. I think that people are trying to use 112 like Alice in talk of functional language.

    The fact is that functional language is used by anyone skilled in the art in discussing solutions and the CAFC at this point is saying things that have nothing to do with reality. (As another example of this the CAFC saying that module has no structure and yet a simple search of the sites that contract out programmers finds that the module is used in almost every post and that module has a clear meaning of structure to anyone skilled in the art.) There is a long list of trying to use 112 like Alice.

  19. Anon June 20, 2019 8:52 am

    LiN,

    Two points:

    1) do you mean conflated/scrivened “right in” (aka, legislating from the bench)?

    2) I would point out that certain of us have NEVER “gotten too used to” this judicial overreach and have been fighting it for years.

  20. TFCFM June 20, 2019 10:19 am

    >>>Adding the following language would further improve Sec. 112(f): “The Director shall identify each such claim element in the record of the patent.”<<>>An element in a claim expressed as 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<<

    However, it is common to identify claimed elements merely by their function in colloquial discussions in the relevant art. Limiting those claimed elements solely to the embodiments disclosed in a patent's specification would not comport with interpreting claim terms to have their "ordinary meaning in the relevant art unless otherwise indicated in the specification" (not the verbatim standard, but close enough).

    As an example, consider a chemical process and the common claim element "reactor." In ordinary chemical terminology, a reactor is simply a container or vessel in which a chemical reaction or process can occur. It can be of substantially any shape, size, composition, or configuration.

    Applying proposed 112(f) to a patent claim which recites a "reactor" would limit the scope of the claims to reactors having the particular shape(s), size(s), composition(s), or configuration(s) that happen to be disclosed in the specification. For chemical processes which depend critically upon the characteristics of the reactor, this might be appropriate. However, in the far-more-general situation, the characteristics of the reactor are substantially irrelevant — yet the patent will be limited to a single, easily-evaded embodiment. (If applied retroactively, many existing patents relating to chemical technologies will become essentially worthless.)

    In addition to requiring the Patent Office to identify terms to which proposed 112(f) is being applied, a patent applicant should be able to opt-out of such application and have the claims examined (and later interpreted) according to the broader meaning of the purportedly-functionally-specified claim element. Alternatively, application of proposed 112(f) to such an element should be made only upon express election by an applicant (and not applicable if not expressly elected during prosecution). This preserves (and is consistent with) the existing-option of amending one's claims to recite the particular embodiment(s) disclosed when a claim is rejected for over-breadth.

    At least one foreseeable consequence of adopting proposed 112(f) in its current form would be that careful patent applicants will add to every patent application paragraph-upon-paragraph, page-upon-page, chapter-upon-chapter, volume-upon-volume of trivial definitions and examples for every claim term which could potentially be argued by an opponent to be expressed "functionally." Such a massive expansion of patent document length (with no corresponding addition of substance) is neither beneficial nor appropriate.

  21. B June 20, 2019 10:25 am

    @ Night Writer “I think this has to be fleshed out a lot more. I think that people are trying to use 112 like Alice in talk of functional language.”

    You don’t need to think about it. This is an issue in Investpic v. SAP America. Taranto believes that no functional language is impermissible.

    There was a valid debate as to whether 112(f) is applicable in any Alice/Mayo rejection analysis, but one of the problems in Alice/Mayo stems from a bone-headed line in Mayo at p. 91:

    “These considerations lead us to decline the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101.”

    There it is: claims do not need to be analyzed in view of the specification under 101.

    As to whether or not claims are to be viewed in light of the prior art per the holding in Berkheimer, I suspect this is why the SCOTUS is thinking of taking up the case. They want to kill Berkheimer, but they’re too stupid to come out with their own arguments. As with the Federal Circuit the Supreme Court painted itself into a corner. Hence the lifeline to the DoJ. Same with Vanda Pharmaceuticals. If the Supreme Court takes up these cases it will be with the intent to reverse the CAFC holdings. It’s the 1940s all over again.

  22. B June 20, 2019 11:30 am

    Correction: Taranto believes that no functional language is permissible.

  23. TFCFM June 20, 2019 2:04 pm

    ???

    My previous message (#20) is missing some text. I must have copied some sort of a control character when I copied proposed 112(f).

    I’m sure the budget and time commitment are not unlimited, but it’s a shame we can’t preview what will appear on the site before clicking “Submit Comment”.
    A corrected version would include the following inserted on the second line in the middle of “<>”:

    “<>”

  24. Night Writer June 20, 2019 2:57 pm

    @21 B

    Good analysis B. Thanks for sharing that.

  25. Kenton Mullins June 20, 2019 7:19 pm

    @6, more @21: Hear, hear!
    Every company is becoming a software company.
    In the 21st century your company is a software company.

  26. Night Writer June 23, 2019 3:13 pm

    Taranto is one of the prime reasons that Trump should dissolve the CAFC and reform it with new judges. Taranto was at the DOJ and has no science training, although math training. He was when appointed anti-patent and anti-information processing patent. He was selected by Silicon Valley to burn the patent system down and given to Obama to appoint to the CAFC.

    He is one of Obama’s judges selected by SV in exchange for huge contributions.

    We see this in Taranto’s continued attempts to cripple the patent system.

  27. staff July 8, 2019 12:39 pm

    ‘argues the decision was not new law and should not be abrogated’

    Let’s get to the heart of the matter and stop blowing smoke. The author’s practice is in defending against infringement -theft. No doubt, he and his infringer clients love Alice and all the other changes to the patent system since eBay -changes which have for us collapsed the patent system and are the many reasons why small entity issued patents and filed applications have crashed to only about 10% of our historical share. Why bother filing when we cant get, keep or enforce ours. This patent system for us is a travesty. All it does is legalize theft of our inventions.

    Unfortunately, there is no bill presently on the hill that will restore the system so that we will once again have a realistic expectation we will be able to commercialize our inventions. We have been asked by our friends in Congress to draft such a bill. We are now cementing our alliances and with their support will complete our draft to ready for introductions and passage. With it we will once again have a reason to invent and America’s golden door will again be open and welcome businesses of all sizes, not just large multinationals whose wealth is due in no small part to their theft of our inventions.

    For our position and the changes we advocate (the rest of the truth) to restore the patent system, or to join our effort, please visit us at https://aminventorsforjustice.wordpress.com/category/our-position/
    or, contact us at aifj@mail.com