Time to Wake Up: Stakeholders Must Compromise to Save the U.S. Patent System

By Gene Quinn
January 29, 2020

“Shockingly, the disagreement that has shelved the long-awaited legislative fix for 35 U.S.C. 101 is among those who support reform. It seems the various constituencies that want 101 reform…would prefer no change to a change that doesn’t give them 100% of what they are seeking.”

101 Reform - https://depositphotos.com/6270187/stock-photo-you-and-i-win-we.htmlThings are bad for many innovators and there is little hope for improvement on the foreseeable horizon. Despite the best efforts of Senator Thom Tillis (R-NC) and Senator Chris Coons (D-DE), efforts to reform America’s patent system for the better have stalled to the point that the Senate IP Subcommittee is moving on from patent matters and will focus on copyright reform throughout 2020.

“Given the reasonable concerns that have been expressed about the draft as well as the practical realities of the difficulty of passing legislation, absent stakeholder consensus I don’t see a path forward for producing a bill—much less steering it to passage—in this Congress,” Senator Tillis told the Intellectual Property Owners Association in an interview published earlier today.

Sources tell IPWatchdog that it is not inconceivable that the Subcommittee will steer back toward patent issues – namely patent eligibility reform – but disagreement among the interested constituencies has shelved any hope for patent eligibility reform. Shockingly, the disagreement that has shelved the long-awaited legislative fix for 35 U.S.C. 101 is among those who support reform. It seems the various constituencies that want 101 reform have their own demands and – if you can believe it – would prefer no change to a change that doesn’t give them 100% of what they are seeking.

“I’d encourage all stakeholders to work with Senator Coons and me to develop a consensus driven approach,” Tillis told IPO. “If we’re going to get anything done on this issue, everyone will have to compromise. Anything less than that is dead on arrival.”

[[Advertisement]]

112(f) Is a Better Problem to Have

One of the major stumbling blocks, if not the major stumbling block, centers around the somewhat archaic claiming practice known as means-plus-function claiming, which is authorized by 35 U.S.C. 112(f). Under 112(f), patent owners can claim their inventions in terms of their function instead of their structure but using this claim technique is not without risk and consequence. The resulting claims are limited to the invention disclosed in the patent application – nothing more. And in recent years the United States Court of Appeals for the Federal Circuit has expanded its interpretation of what qualifies as invoking “means treatment” and thereby limiting claims.

The concern by stakeholders who want a legislative fix for 35 U.S.C. 101 is that the proposed amendment to 35 U.S.C. 112 will simply move rejections and invalidity arguments from 101 to 112.

While the concern that rejections and invalidity arguments would shift from 35 U.S.C. 101 to 35 U.S.C. 112 is not without merit, it is incomprehensible to stonewall willing partners in the Senate want to move a legislative fix for 101. Supporters of patent eligibility reform are forfeiting a rare opportunity. Sure, those who challenge patents will shift their arguments from 101 to 112, but that will require a full, fair and complete claim construction, which does not happen when federal district courts merely divine what the patent claim is directed to and whether it is inventive without any consideration of prior art or the prosecution history, or many times even the specification as a whole.

While I would prefer a retreat from the Federal Circuit’s decision in Williamson v. Citrix, which only muddied the waters on what may be interpreted as means-plus-function, for goodness sake, we need 101 reform! Yes, the proposed language inserted into the 101 legislative fix relating to 112 caught people by surprise, but is the language of the proposed 112 (f) anything other than a fair representation of what Williamson already says and is currently the law?

The 112(f) proposal reads as follows:

(f)            Functional Claim Elements — 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.

A fair reading of this proposed, amended 112(f) language says that if the invention is not disclosed in the specification filed then it cannot be claimed. That sounds pretty reasonable, and why it is not reasonable will be practically impossible to explain to those not steeped in patent history and layered with strategic claiming nuance. That is just reality.

It is true that the problem is with how patent examiners and the Federal Circuit have somehow interpreted real structure as an expression of function and not a recital of structure, but that is a problem with the frontline decision maker (i.e., patent examiner) and the courts (i.e., Federal Circuit), not with the proposed language of 112(f). Fighting on this linguistic ground and allowing the fate of 101 reform to hang in the balance is misguided.

Yes, Williamson changed things rather dramatically, and in a perfect world we would be discussing its repeal, but let us not forget that we are presently living in a world where an electric vehicle charging station, an MRI machine and a garage door opener are all abstract. We are also living in a world where the Federal Circuit has begged the Supreme Court to reconsider the patent ineligibility of medical diagnostics and the Supreme Court has time and time again refused, most recently denying certiorari in Athena Diagnostics, Trading Technologies, and Chargepoint. 35 U.S.C. 101 must be fixed.

It’s Pretty Basic

The purpose of a patent system is to foster innovation. As Abraham Lincoln explained so well it is to fuel the creative genius of inventors by giving them a motivation to not only invent, but to keep inventing over and over again. Without ownership in the underlying invention rights it is impossible for inventors to spend the time to invent. It is pretty basic and should be easy to understand for anyone with a job. If you cannot get paid to do what you want to be doing, you unfortunately have to do less of that thing so you can be productive and make money so you can provide basic necessities like food, water and shelter.

Of course, the purpose of the patent system is more than just to foster the inventor and to give the inventor the means and motivation to invent. Without ownership in the underlying invention rights there is no investible asset for investors. Again, pretty basic. Without investment it is impossible to commercialize and take inventions to market. Even a simple kitchen gadget will take several hundred thousand dollars to get to market all-in, perhaps more. So, how much do high-tech innovations cost? How much do life-saving inventions cost? Many millions. Sometimes billions.

When the courts rule that something is not patent eligible, it is not investible because of the free rider problem. If investors were to spend hundreds of thousands, millions or billions, whatever the amount may be depending upon the invention, a well-funded competitor could simply swoop in and copy everything once the pioneer created the market – which is extremely expensive – and has ironed out all the engineering kinks – which again is extraordinarily expensive. Without the need to pay those marketing and R&D costs the copycat can and does sell at a lower price point and puts the pioneer out of business. Without ownership, these business and technologies are simply not investible.

A Banana Republic System

Tangible innovations like an electric vehicle charging station simply cannot be patent ineligible. This type of invention is precisely the type that has always been patentable throughout history and is presently patentable elsewhere around the world. Critics will be quick to say that these patents failing for eligibility are written improperly, but how can one be expected to write a patent properly when the rules keep shifting? We are dealing with a Federal Circuit that has actually ruled that no amount of physicality in a claim can save the claim from being abstract and a claim can lack inventiveness even if it is new and nonobvious. If this were a statutory standard it would be hopelessly infirm as ambiguous, vague and wholly unfair to apply to anyone, but because it is an extra-statutory test built upon judicial exceptions the industry is screwed apparently. We will tell you if you got it right after it is too late to fix what you’ve filed. That is the type of standard one expects in a Banana Republic, not the United States.

If America is going to have a patent system, medical diagnostics must be patentable. To suggest otherwise is almost too foolish to deserve a response. A patent system is supposed to not only foster innovation, but innovation that benefits the public. If you cannot diagnose a medical condition you cannot treat it, so as we are screaming with a megaphone that medical diagnostics are not patentable in America, and research institutions like the Cleveland Clinic and St. Jude’s are adjusting their activities accordingly, we are forfeiting the next generation of cures and treatments and medical devices.

Ignorant? Or Wicked?

It would be easy to dismiss as ignorant those who believe patent eligibility is in a good place in America. But ignorant means “lacking knowledge and awareness”, which doesn’t fit. There is something fundamentally unscrupulous and short-sighted about preventing high-tech innovation in the name of free-riding and corporate profits. There is real depravity and wickedness associated with standing in the way of advances in life science that could benefit literally everyone.

It is long since time for everyone to grow up and wake up. The Supreme Court is now and always has been completely clueless with respect to patent matters; they will be no help. As long as those who know reform is necessary demand fixes that are politically infeasible the free-riding copycats win. It is time to play the long game in the same politically astute way the takers have been playing, which means accepting the political solution available and immediately circling back for more, because if the past 15 years have taught us anything it is that Congress is quite willing to listen to overtures on patent reform measures, even if it always takes longer than it should to come to fruition.

Image Source: Deposit Photos
Image ID: 6270187
Copyright: iqoncept

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 54 Comments comments. Join the discussion.

  1. Anon January 29, 2020 4:28 pm

    It is very easy to believe that those who never really wanted reform in the first place would cry out “I want reform” to only gain a seat at the table of discussion in order to TANK any real reform.

    Quite in fact, one may say that such actions would be the actions of a Rational Actor, as a path to tank any real reform is both available and without risk.

  2. Anon January 29, 2020 4:38 pm

    … as to a rather unthinking acceptance of 112 in order to advance 101 reform, I cannot agree.

    Ask the besieged and under attack city of Troy if stopping the besiegement is worth taking in a gift horse.

    (for starters, the advanced 112 opened up the level of support requirements for “112f” avenues to an unprecedented, unknown reach to ALL terms sounding in function FAR outside any computing arts)

    The answer to defeating those who call out (falsely) that they too want reform — and then advance Trojan horses — is NOT to welcome the gift and bring it into the city ‘to worry about later.’

    The answer instead is to say: “Interesting. Let’s fix the immediate known problem, and circle back to that idea once the fix to the known problem is in place. Isn’t it better to take bite size steps instead of adding in all these other items?”

  3. angry dude January 29, 2020 4:57 pm

    Time to wake up was in 2006 after EBay and again and again in 2013 and again
    I told y’all…

    The doc said “to the morgue” – to the morgue it is !

  4. angry dude January 29, 2020 5:08 pm

    Re. Trojan horse…

    The only right advice was to burn Trojan Horse and it came from weak and ridiculed Paris (according to the movie)

    To the morgue – I told you many years ago

  5. Fed up January 29, 2020 5:39 pm

    and so Big Pharma and Silicon Valley hoist themselves up to the clouds of economic dominance on the ladder of IP, and once aloft, burn the ladder, making sure no one else can climb up….

  6. Paul Morinville January 29, 2020 6:40 pm

    Woke I am. And I remain adamantly against a 101 fix that includes changes to 100 and 112. Both simply transfer the problem leaving us in the same position, but with 10 years of further uncertainty as the courts sort out what the changes mean.

    The 101 problem is harming our national security and our economic growth. It must be fixed. Moving the problem to 100 and 112, will cause us to be in the same position with the same damage to our national security and economic growth.

    As you say in the article, case law already handles 112 as it stands. that is an argument to leave 112 as it is. It is not only bad law to change it, but it is no necessary to change it.

    Gene, I have enormous respect for you, but you are wrong on this one. There must be no compromising on 100 or 112. Compromise can only be within the language of a 101 fix.

  7. Ternary January 29, 2020 6:42 pm

    “Tangible innovations like an electric vehicle charging station simply cannot be patent ineligible.” I agree. But next we may be forced to interpret “charging station” as a functional limitation. Is it required to provide a physical/chemical disclosure to explain electrical charging?

    A computer as a calculator is a functional requirement. Do I have to disclose a Boolean structure that performs the function?

    I would like to see some further explanation on the 112(f) issue. For instance would it be sufficient to refer to known textbooks as accepted by PHOSITA for used terms, or do I have to include a dictionary of terms? The metes and bounds of the new requirement are currently so unclear as to be unworkable. Because it is novel language, one cannot realistically rely on old interpretation. It provides no clarity at all and may create a new Alice-like disaster. Chaos galore, I would say.

    In fact, I believe there is a significant chance of a completely novel round of ex post facto invalidating of issued patents if we proceed with this. A new round of irritating patents clean-up. No thank you.

    With Anon (if I understand him correctly) I see no need to address 101 and 112(f) at the same time. The 101 issue has now been sufficiently discussed, litigated and studied. I believe that we all agree that what we have right now in 101 does not work, as being completely and utterly irrational and unpredictable.

    The 112(f) issue seems particularly targeted at computer implemented inventions. The proposed changes may work for the medical diagnostic industry, (yes, let’s do this they will say) but not for us computer guys.

    To request some level of trust/confidence that it all will work out, certainly in view of CAFC application of Alice, is not realistic. It all feels like jumping from the pan into the fire.

    I generally agree with finding common ground to get a solution for a problem. In this case, I respectfully decline accepting the 101 solution while importing a novel 112(f) issue. The timing and unexpected appearance of the issue is too suspicious. We know our opponents, and nothing good will come from this.

  8. Curious January 29, 2020 7:38 pm

    It is long since time for everyone to grow up and wake up.
    The problem is that the efficient infringers and anti-patent crowd have essentially won. The US patent system is effectively dead to small inventors and small businesses. It is effectively dead to the disrupters in probably the two most important technologies of the 21st century: biotech and computers.

    The infringers and anti-patent crowd have no reason/incentive to be cooperative and/or compromise. As Anon put it earlier, they have a seat at the table and their actions, as a Rational Actor, should be to tank any reform coming out of Congress.

    Real patent reform, if it happens (and I have serious doubts that it’ll happen this decade), is something that will likely not occur again while any of us are still practicing. Effectively, we have one shot to get it right. While I prefer reform far sooner than later, I more prefer that we get it right.

  9. mike January 29, 2020 7:48 pm

    Tillis: “I’d encourage all stakeholders to work with Senator Coons and me to develop a consensus driven approach.”

    Three points for Senator Tillis:

    1) I’d encourage you to allow inventors to have a seat at the table. You promised a seat to Paul Morinville, but it is my understanding that following the hearing (the hearing that you promised something would come after the July 4 recess), subsequent private talks occurred without him or any independent inventor present. I personally know of other inventors who have also asked for a seat, but to no avail.

    2) What justification do you have for bringing 112(f) into the mix? Please explain how 112(f) is in any way related to the Section 101 mess that SCOTUS and the courts have created, are currently ignoring, and thus it is up to you, Congress, to clean up.

    Some might say that I’m being naive here and not adhering to the issue on compromise this very article claims stakeholders must have. So we go to Point 3.

    3) Watch your back. You promised two things in 1) and did not deliver. You introduced 112(f) and everyone wants to know how this is in any way related. Your activities (or lack thereof) might very well risk your re-election. And we’ll elect someone else who WILL address Section 101 properly.

  10. Pro Say January 29, 2020 9:10 pm

    With one small, simple, reasonable, and fair provision, I’m sold Gene.

    Your, “We will tell you if you got it right after it is too late to fix what you’ve filed.” points the way.

    The necessary provision is this: The proposed 112(f) — and any other additions or changes to the patentability requirements – must be made prospective, and not retroactive.

    Inventors and their legal counsel should know exactly what the requirements for patentability are . . . BEFORE they draft their applications.

    The ability to ex post facto reach back in time to destroy patents written, prosecuted, and issued under the then-current rules would be patently unfair, un-American, and indeed immoral.

    American innovation – and our Country at large — can afford no less.

    With this provision; and with all due respect to those who feel differently; I – and likely 100’s if not 1,000’s of my fellow inventors — are ready to swallow the proposed 112(f) bitter pill.

    Half a loaf is better than no loaf at all.

  11. MaxDrei January 30, 2020 3:00 am

    Readers, you are aware, I hope, that USC 112(f) is a statutory provision, a relatively recent well-meaning but misconceived Congressional “patch” to the Statute, which is unique to the USA. The rest of the world manages perfectly well without it.

    One lament of US-based commentators which I detect is that inventors are getting enforceable patents, including claims of commercially useful scope, elsewhere in the world but not in the USA. Perhaps then, the USA should think about adopting the provisions on patentability that operate at, say, the European Patent Office?

    The first step in any journey is the hardest. The USA has already taken the first step, shifting from First to Invent to First to File. Step changes in patent law don’t come any harder than that. The rest (tweaks to eligibility, novelty, enablement, definiteness) is incremental. See the Link below.

    https://patentlyo.com/patent/2020/01/supporting-clarifying-disclosure.html

  12. Josh Malone January 30, 2020 7:10 am

    Gene, who says Section 112 needs to be amended? Who are we supposed to compromise with? I am anxious to sit down with whoever it is to discuss their concerns.

  13. Concerned January 30, 2020 7:13 am

    Apple just reported a record $2.2 billion QUARTERLY profit. Who believes that company wants any compromise?

    My only hope is somewhere up the appeal ladder. None of my examiner’s rejections are substantiated. The rejections are inconsistent with the official record, official memos, are illogical and non-responsive (a polite term). As I mentioned to the author of the book “Plight of the Patentee” the rejections since the book interview are even more bizarre than the reasons my story made the book, which is a statement in and of itself.

    The USPTO can easily approve my application and let potential infringers pony up evidence to the contrary.

  14. Anon January 30, 2020 7:27 am

    MaxDrei,

    In your hurry for everyone else to wear the spectacles that correct your vision, I have to wonder if you can yet see the differences that our respective Sovereigns have chosen, and just why these differences create very real “wrinkles” that cannot be ignored.

  15. angry dude January 30, 2020 9:20 am

    Josh Malone@10

    “Who are we supposed to compromise with? I am anxious to sit down with whoever it is to discuss their concerns”

    There is nice little very friendly company called Apple and another one called Google…

    Try to sit down with them cause they are the ones who wrote current patent “legislation” including scotus, cafc and ptab decisions…

  16. Curious January 30, 2020 9:56 am

    Anon @12. Don’t dance around the bush. Just call it like it is. MaxDrei is a shill for Europe’s version of patent law and has been for nearly a decade. However, unlike a good shill, he isn’t particularly persuasive.

    One would think that after the thousands(??) of posts he has made on the topic, he would have garnered a few converts. However, he still remains the ONLY shill — evidence of the non-persuasiveness of his arguments.

  17. TFCFM January 30, 2020 10:32 am

    “Compromise” is, at least in this instance, a synonym for rejecting ridiculously-extremist positions, such as they who claim that mere recitation in a claim of a tangible element in a claim renders the claimed invention non-abstract, no matter how abstractly the claim defines the invention. Thus we have propositions such as this eminently inaccurate one:

    GQ: “…let us not forget that we are presently living in a world where an electric vehicle charging station, an MRI machine and a garage door opener are all abstract

    The decisions in the cases to which Gene refers did not declare these clearly-tangible articles to be “abstract,” but instead (more accurately) declared claims which recite these tangible articles having an abstractly-defined functional feature to be drawn to abstract subject matter. HUGE difference, both actually, and accuracy-wise.

    Folks who want to obtain allowance of claims to stuff they haven’t actually invented are going to have to choose among:

    – having such claims declared ineligible if the full scope of claimed subject matter is not disclosed (our current state)

    or

    – having such claims considered eligible, but limited to the subject matter that is adequately disclosed.

    Congress (and even well-meaning, if poorly-informed representatives) are not going to be bullied into reversing this long- and well-understood fundamental principle of “the patent bargain.” Your exclusive rights are limited by the scope of your contribution.

    In other words (to borrow from a case usually cited in connection with utility issues, but equally applicable in this one): “a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion.

    In still other words suitable for stone tablets, claim not that which you wish you had invented, but only that which you did.

  18. steve January 30, 2020 11:41 am

    Disagree. Expansion of 112(f) is a disaster for software applicants.

  19. anonymous January 30, 2020 11:56 am

    “I’d encourage all stakeholders to work with Senator Coons and me . . .” I’m a stakeholder and I’d be happy to work with you. When can I get an in-person meeting? Who are these “stakeholders” at your closed-door bargaining table you seem to listen to? Name names. The notion that Apple/Amazon/Google/Facebook can’t agree with AIPLA/IPO/Judge Michel is obvious. Thousands of independent inventors have no voice and are absent from the table.

    You already had extensive public hearings. You heard from both sides. You heard publicly of the need for reform. Your job is to do the right thing, not cave to the efficient infringer lobby.

    I agree with Pro Say @10 – any change to 112(f) needs to be prospective, not retroactive.

    101 needs to be fixed immediately. Let’s get this done.

  20. Anon January 30, 2020 12:47 pm

    Curious, I hear you. And speaking of highly ineffective shills, along comes our friend TFCFM peddling his same “stuff.”

    TFCFM is even further off the mark than MaxDrie.

  21. Paul Morinville January 30, 2020 1:37 pm

    Josh @10. That is a very good point. Who exactly is demanding 112 changes?

    It is assumed to be Big Tech – Google, Facebook, Amazon and other monopolies who do not want competition – but they have never taken ownership of it publicly.

    Instead they slither concealed under the desks of Senate Judiciary Members hissing the “bad patent” and “patent troll” lies into the ears of Senators, the now exclusive domain that they bought and paid for with the profits of their monopolies.

    They do not want a debate on the merits because their arguments are false. No sense risking exposure if your money can be spent to avoid it.

  22. Curious January 30, 2020 5:32 pm

    recite these tangible articles having an abstractly-defined functional feature
    Abstractly defined is not the same as a claim directed to an abstract idea — but, of course, you already knew that.

    A claim reciting “applying E=MC^2” is directed to an abstract idea.
    A claim reciting “divide an imaging region of an object to be examined into a plurality of stations of respective station positions” uses functional language. However, for those of us who write claim language for a living, it becomes quickly apparent that structure is oftentimes defined in functional terms. Consider the structural elements of a: light, switch, distributor, transmission, a hole punch, a display, transmitter, receiver, processor … I could go on and on and on. These are all names of physical things that essentially describe their functions. Are they abstract? There are innumerable embodiments of a “switch,” but does that make the term abstractly-defined?

    Arguments against the use of “functional” terms in claim language does not stand up to serious scrutiny. There is a difference between “I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electromagnetism, however developed, for making or printing intelligible characters, signs or letters at any distances, being a new application of that power, of which I claim to be the first inventor or discoverer” (i.e., Morse’s eighth claim) and a claim that recites “printing the document” as part of a 6 other steps involving the editing of a computer document. There are literally thousands and thousands of ways by which a document can be printed, but THAT IS NOT THE INVENTION. The invention is the combination of all of the claimed elements. That some of these limitations may be defined in functional terms does not make them directed to “abstract ideas.” It just means that one of the steps involves printing of a document regardless of how the document is printed.

    This reminds me of another point, which is that claims, BY THEIR VERY NATURE, are abstract. Claims are not blueprints. They are not operation sheets that specifically describe how a particular article is to be manufactured. Outside of claims that specifically invoke chemical elements, there will always be different embodiments that are encompassed by the same claim language, and in that sense, the claims abstractly (as oppose to specifically) define the invention.

    having such claims declared ineligible if the full scope of claimed subject matter is not disclosed (our current state)
    What an incredibly ignorant argument and dangerous requirement. Outside of claims that specifically recite chemical elements, I can make an argument that the “full scope of claimed subject matter” is NEVER disclosed in a specification. Even with merely composition claims, I can probably make arguments that the “full scope” is not enabled.

    Has there ever been a contract that completely covered all possible acts of both parties? It is an impossible task and, similarly, requiring that the “full scope of the claimed subject matter” be disclosed in the specification is an impossible standard to meet. However, this is EXACTLY why the infringers want this standard.

    a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion
    What a surprise that you cite a passage that has nothing to do with the issue at hand. This quote is from Brenner v. Manson 383 US 519 (1966) and it involved “a chemical process which yields an already known product whose utility — other than as a possible object of scientific inquiry — has not yet been evidenced.” In other words, the claims were directed to an invention with no known utility, and the language quoted involves this issue.

    In still other words suitable for stone tablets, claim not that which you wish you had invented, but only that which you did.
    In other words, you can only protect what you specifically identified in the specification. Unless the accused infringing product/method specifically matches what was disclosed in the specification, you are out of luck. I know defense attorneys would love that standard as it shouldn’t be too hard to identify an element … any element … that is part of the accused product/method that isn’t disclosed in the specification.

    The upshot of such a requirement is that what could be described in 20 pages is not inadequately described in 200 or even 2000 pages since every possible alternative must be listed. Patents are expensive enough as it is, imagine if someone had to write down every possible alternative that could be covered by the claims. Imagine how much that will cost to prepare?

    Also, even if you are lucky enough to have your specification completely match the infringing product, the proposed standard is that “such claims declared ineligible if the full scope of claimed subject matter is not disclosed.” All defense counsel as to do is identify something within the scope of the claims that is not disclosed to get the claims declared ineligible — a frightfully easy task to accomplish.

  23. Anon January 30, 2020 7:12 pm

    TFCFM appears to be an ultra-polite alter ego to Malcolm Mooney (or perhaps a disciple), as MANY of the same painfully vapid misunderstandings of patent law are wielded as if TFCFM had written the law himself.

    I have in the past postulated there TFCFM is not an actual patent attorney (that he may be an attorney who has merely litigated patent cases). He shows NO actual understanding of innovation (or innovation teachings). His views are — at a most basic level — hostile to innovators, and he constantly seeks to not put blame for the current shambles of patent jurisprudence in the right place. Much like Malcolm Mooney, he actually blames Congress for how the law is actually written while turning a blind eye to the Gordian Knot of how the Justices have rewritten the statutory law with their Common Law excursions.

    Sadly, he most likely will not even understand the insult with being likened to Malcolm Mooney.

  24. TFCFM January 31, 2020 10:11 am

    Steve@#13: “Expansion of 112(f) is a disaster for software applicants.

    This may well be true, but returns software-patenting to its historic norm. Creative manipulation of language (whether human or computer language) is the realm of copyright, not patents.

    ___

    Curious@#22: “This reminds me of another point, which is that claims, BY THEIR VERY NATURE, are abstract. Claims are not blueprints. They are not operation sheets that…

    By this absurd line of reasoning, all human language is abstract, so no written description, claim, or even law can ever be non-“abstract.”

    Given that human jurisprudence has operated using human language throughout its history, we can safely assume that this is not the meaning of any patent statute.

    Given the underlying notion that a patent is awarded in exchange for a description of ‘inventive’ (however defined) subject matter, it makes perfect sense — in a patent system such as ours which requires a disclosure of the particular invention in exchange for rights in that invention — that when the disclosure obfuscates as to what the invention actually is (and not merely what it is hoped to do), the rights are withheld.

    ___

    Anon@#23: “Sadly, he most likely will not even understand the insult with being likened to Malcolm Mooney.

    Your comment:

    1) is accurate in that I am unfamiliar with Mr. Mooney and whatever animus you harbor toward him and/or his opinions.

    2) confirms that you deal merely in attempted insult, rather than addressing substance. (Hint: “I disagree with X, so X is a doody-head” is not substance.)

  25. Anon January 31, 2020 11:36 am

    but returns software-patenting to its historic norm. Creative manipulation of language (whether human or computer language) is the realm of copyright, not patents.

    The ignorance is palpable.

    Let’s make this quick: an item may well have multiple aspects and for each of the multiple aspects, different forms of IP protection may provide different protections.

    There is NO “either/or” with software and ANY view of software as having such merely shows a profound lack of understanding of what software is.

    Patents: protect utility.
    Copyrights: protect expression.

    I am not the one lacking substance here, TFCFM.

  26. Anon January 31, 2020 12:00 pm

    … as to “deal in merely attempted insult,” your logic is in error.

    One may deal in insult and NOT “deal in merely attempted insult.” I provide BOTH substantive points, as well as indulge in actual (contrast with “attempted”) insults because in part, the insults fit the behavior that I am insulting. In this instance, your behavior. The deeper insult here is that you simply lack any requisite knowledge of patent law to even recognize when you are being insulted.

    Your view of “attempted” then only serves to reinforce my point. If you did understand patent law (as much as you pretend to / or think that / you do), then you would “get” the insult and you would not view it merely as an attempt.

    Relying on your ego that is the cause of your troubles in the first place is NOT a recipe for extracting you from those very troubles.

  27. Curious January 31, 2020 1:38 pm

    By this absurd line of reasoning, all human language is abstract, so no written description, claim, or even law can ever be non-“abstract.”
    Its only absurd when you confuse, as you have done, language (which is inherently abstract) with an invention directed to an abstract idea.

    Given that human jurisprudence has operated using human language throughout its history, we can safely assume that this is not the meaning of any patent statute.
    “that this is not the meaning”?? My legal writing professor would be all over you for your use of “this,” which is an indefinite pronoun. What is the “this” to which you refer?

    You are the one who wrote “these tangible articles having an abstractly-defined functional feature to be drawn to abstract subject matter.” A light is an “abstractly-defined functional feature” — so is a switch, processor, distributor, refrigerator, engine, muffler, sensor. If you disagree, please explain the reasoning behind your belief. That these terms are “abstractly-defined functional feature[s]” doesn’t make a claim invoking these terms to be directed to an abstract idea.

    in a patent system such as ours which requires a disclosure of the particular invention in exchange for rights in that invention — that when the disclosure obfuscates as to what the invention actually is (and not merely what it is hoped to do), the rights are withheld.
    What do you mean by obfuscates as to what the invention actually is?

    Claim 1 of the the garage door patent (7,334,275) is the following:
    1. A movable barrier operator comprising: a controller having a plurality of potential operational status conditions defined, at least in part, by a plurality of operating states; a movable barrier interface that is operably coupled to the controller; a wireless status condition data transmitter that is operably coupled to the controller, wherein the wireless status condition data transmitter transmits a status condition signal that: corresponds to a present operational status condition defined, at least in part, by at least two operating states from the plurality of operating states; and comprises an identifier that is at least relatively unique to the movable barrier operator, such that the status condition signal substantially uniquely identifies the movable barrier operator.
    What about this “obfuscates as to what the invention actually is”? As part of this process, identify me a claim directed to some mechanical/electrical/computer device that you you believe does not obfuscates as to what the invention actually is. I ask this because I want to be able to apply your proposed standard as to obfuscation to that supposedly proper claim.

  28. angry dude January 31, 2020 11:36 pm

    Paul Morinville @21

    “No sense risking exposure if your money can be spent to avoid it”

    Exactly !

    “Money loves silence”… especially stolen money

  29. Model 101 February 2, 2020 12:01 pm

    Navy people – swear to defend the constitution:

    “I, [name], do solemnly swear (or affirm) that I will support and defend the Constitution of the United States against all enemies, foreign and domestic; that I will bear true faith and allegiance to the same; that I take this obligation freely, without any mental reservation or purpose of evasion; and that I will well and faithfully discharge the duties of the office on which I am about to enter. So help me God.[1]”

    New Navy Destroyer: https://defense-update.com/20131029_zumwalt-newest-destroyer-us-navy-launched.html

    101 is unconstitutional – not written by Congress…

    Congress/Senate/SCOTUS/CAFC/PTAB/District court all drink from the same 101 swamp bottle.

    Let’s find a Navy Admiral to get the ship above and a crew of it’s sailors to sink the efficient infringement enemies. EI is a cancer on the Constitution. The criminals run the court house.

    Anybody know anybody?

  30. angry dude February 2, 2020 12:38 pm

    Model 101

    Special prosecutor will do
    To investigate high treason in wash dc
    But they are more interested in impeaching trump over some god forsaken country which poses no threat to us
    To the morgue with us patents

  31. TFCFM February 3, 2020 10:47 am

    Curious@#27: “Claim 1 of the the garage door patent (7,334,275)… What about this ‘obfuscates as to what the invention actually is’?

    Most glaringly, this phrase:

    ‘275: “…a wireless status condition data transmitter that is operably coupled to the controller…

    I can think of innumerable electricity-, light-, fluid-, gas-, and animal-mediated “transmitter[s]” that can be “operably coupled” to a “controller.” Which of the innumerable combinations does the patentee claim to have invented? If he’s disclosed enough that we can tell how his claim (even limited to this phrase) is bounded, then he might rightly be rewarded with a patent for whatever his contribution is. (As a bonus, it also becomes possible to meaningfully examine the claim, as well as for courts and competitors to understand where the claim starts and stops).

    As the court observed upon declaring the patent abstract, it is precisely this sort of obfuscation at the point of innovation(-if-any) that identifies at least one set of folks seeking to abstractly-claim-more-than-they-have-invented.

  32. Anon February 3, 2020 11:11 am

    … point of innovation…

    Is that an obfuscation for “Point of Novelty” which disregards the necessity of taking the claim as a whole…?

    Your desire to parse a claim and ask for ‘eligibility based on an element’ is a giveaway that you do not understand patent law.

  33. Anon February 3, 2020 11:14 am

    TFCFM,

    I wonder if you have difficulties with the word “comprising” in claims.

    Likewise, I wonder if you have ever heard of the phrase “Ladders of Abstraction” (if you have ever been trained to write claims, the answer will be: “Yes, of course”). It’s more than a bit of a giveaway that you have ONLY litigated, but have not been trained to prosecute in order to obtain protection for innovators.

  34. Curious February 3, 2020 11:33 am

    “a wireless status condition data transmitter that is operably coupled to the controller.”
    More glaringly, this phrase?
    This is from the specification:
    The wireless status condition data transmitter 15 operably couples to an output of the controller 11. This transmitter 15 can be of any variety as may suit the needs of a given application. For example, the transmitter 15 can comprise a radio frequency carrier-based transmitter, an infrared carrier-based transmitter, or a sonic carrier-based transmitter (all being generally well understood in the art). In a similar fashion, the transmission power, modulation type, signaling protocol, and other attendant characterizing features and practices of the wireless transmitter 15 can again be as desired to suit the needs of a particular setting. In a preferred embodiment, this transmitter 15 will comprise a relatively low power transmitter such that the signals it broadcasts are only receivable within a relatively constrained area (such as, for example, an effective range of 100 meters, 500 meters, 1,000 meters, or the like). Again, such transmitters are well understood in the art and hence further elaboration here will not be provided.
    As such, the transmitter part of this is well known — hardly an obfuscation.

    More from the specification:
    Pursuant to these various embodiments, the wireless status condition data transmitter 15 serves to transmit a status condition signal that represents a present operational status condition of the controller 11.
    OK, it is a transmitter that transmits a signal corresponding to a “present operational status condition of the controller.”
    The specification further describes the “operational status conditions” as follows:
    For example, the controller 11 might have two or more of the following potential operational status conditions: moving the movable barrier in a first direction (such as towards a closed position); moving the movable barrier in a second direction (such as towards an opened position); reversing movement of the movable barrier (for example, to alter movement from a closed position and towards an open position); halting movement of the movable barrier; detecting a likely presence of an obstacle (such as a person or pet) in the likely path of movement of the movable barrier; detecting a likely proximal presence of a human (such as a person in the vicinity of the controller); detecting a likely proximal presence of a compatible transmitter (such as a corresponding remote control transmitter for the movable barrier operator); receiving a wireless remote control signal (as sourced, for example, by a handheld remote control device); receiving a wireline remote control signal (as sourced, for example, by a wall mounted remote control device); receiving a learning mode initiation signal (via, for example, a switch provided for this purpose on the movable barrier operator housing); a lighting status change (as when, for example, the controller switches ambient lighting in a garage to an off condition a predetermined period of time following closure of the movable barrier); a vacation mode status change (as when a user effects this change via a switch provided for this purpose); detecting a likely proximal presence of a vehicle; detecting the identification of a proximal vehicle (as when, for example, the vehicle or some corresponding agent device transmits an identifying signal); and receiving an operating parameter alteration signal (via, for example, an integral or remote switch or other user interface).
    If you think this is an obfuscation, then you need to up your comprehension skills. A specification is written for those of ordinary skilled in the art — not village idiots. I took me about 2 minutes of reading to understand that limitation.

    I can think of innumerable electricity-, light-, fluid-, gas-, and animal-mediated “transmitter[s]” that can be “operably coupled” to a “controller.” Which of the innumerable combinations does the patentee claim to have invented?
    If they are not configured to transmit status condition data (multiple examples of which were given in the specification), then it doesn’t meet the limitations of the claim.

    As the court observed upon declaring the patent abstract …
    You mean the trio of non-technical, anti-patent judges didn’t like it so they made $%^t up. Thanks for that observation.

  35. angry dude February 3, 2020 12:32 pm

    TFCFM @31

    Dude, would you just shut up ?
    Wasn’t making at least first independent claim as abstract and all-encompassing as possible, the know-how of your profession (patent attorney) for many years ?
    So instead of claiming a table folks like you would write “a flat body of something with protruding members”
    Better check with your fellow patent attorneys, PTO, scotus, cafc etc and stop blaming inventors and patent holders

    Like Gene wrote: “We’ll tell you what’s wrong with your patent claims after it’s too late to fix them”

  36. Nick Landau February 3, 2020 6:53 pm

    Good post, Gene.

  37. TFCFM February 5, 2020 10:50 am

    Curious@#34: “This is from the specification: The wireless status condition data transmitter 15 operably couples to an output of the controller 11. This transmitter 15 can be of any variety as may suit the needs of a given application. For example, the transmitter 15 can comprise a radio frequency carrier-based transmitter, an infrared carrier-based transmitter, or a sonic carrier-based transmitter (all being generally well understood in the art)….
    As such, the transmitter part of this is well known — hardly an obfuscation.

    Giving a (vague, non-limiting) example of what a transmitter *can* be does not inform anyone of what the transmitter recited in the claim is (at least, unless the word “transmitter” is interpreted per 112(f)). The word, as used in the claim, still means “anything that works (to transmit).” That is abstract.

    ___

    ad@#35: “Wasn’t making at least first independent claim as abstract and all-encompassing as possible, the know-how of your profession (patent attorney) for many years ?

    That has absolutely been a (lazy, legally impermissible) practice that has been in which slip-shod patent practitioners have indulged for many years. Some such claims even manage to get slipped past some of the less-skilled examiners. The cases relevant to the issue stand for the very proposition that the mere fact that a sloppy patent attorney/agent manages to fool the patent office into allowing a claim does not excuse the claim from the prohibition against claiming abstract subject matter (or abstractly-claiming “anything that works.”)

  38. Anon February 5, 2020 5:22 pm

    TFCFM,

    You continue to post in ways that show that you have never been trained to write applications that protect innovation.

  39. TFCFM February 6, 2020 3:45 pm

    “Applications that protect innovation” describe and claim inventions non-abstractly. This is because, of course, applications which are susceptible to section 101 rejections/defenses don’t protect the subject matter they claim.

  40. Anon February 6, 2020 7:21 pm

    TFCFM,

    Notably, since the Supreme Court has not actually bothered to define: “abstract,” why don’t you give it a shot.

  41. Anon February 6, 2020 7:23 pm

    … then go ahead and contrast that with your claim-writing training under the Ladders of Abstraction model.

    (feel free to toss in the use and meaning of “comprises”)

  42. TFCFM February 7, 2020 11:17 am

    The “ladders of abstraction” model has no weight whatsoever in matters of patent law. If you find it a useful crutch, I’d caution using it with caution.

    As with pornography and obviousness, I tend to doubt there’s a single hard-and-fast “definition” of abstractness that will apply unerringly in all situations. As with obviousness being a measure of how likely a PHOSITA would have considered claimed subject matter obvious, so too, it seems to me, abstractness must be considered a measure of the degree to artisans can distinguish what the invention is, throughout all of its disclosed and operable embodiments, from subject matter that is not the claimed invention.

    The more difficulty an artisan in the relevant field has understanding what the invention is — i.e., how, precisely, it’s made and used in the real world, and not merely what goal(s) the claimed invention is hoped to fulfill — the more likely it ought to be considered impermissibly “abstract” in a patent-law sense.

  43. Anon February 7, 2020 4:16 pm

    has no weight whatsoever in matters of patent law.

    Pure smokescreen.

    Do you even understand what the ladders of abstraction are?

    They are not — nor did I indicate that they were — “matters of patent law.”

    What they ARE are a well-recognized and nigh-universally applied technique of developing patent claim language that protects the true innovation (things that inventors have actually invented).

    It is beyond clear that you have never been trained to protect innovation.

    Further, your retreat to a “I know it when I see it” only exemplifies your lack of grasp of the problem at hand. You have NO definition, and your attempt here at handwaving some justification for NOT having a critical element of the law to be left undefined is completely untethered to law.

    There is NO “patent-law sense” in your desire to NOT have a definition.

    No wonder then that you cannot grasp the underlying problem (and the fact that it is the Supreme Court directly at fault in that underlying problem). You simply do not know THAT you do not know (and you refuse to listen to those more expert on the matter that attempt to guide you to your error).

  44. TFCFM February 10, 2020 12:05 pm

    If you have nothing to offer but poorly-attempted insult, I can’t, for the life of me, imagine why you bother.

  45. Anon February 12, 2020 8:37 pm

    Your view of my posts — much like your view of patent law — clearly evidence your lack of understanding on the topics.

    There is nothing “poorly-attempted” about the insults that you so deservedly receive.

    Your limitations of understanding (and imagination) are not (thankfully) the drivers of veracity.

  46. Anon February 13, 2020 10:55 pm

    TFCFM,

    Why not just be upfront about this: have you ever been trained to write patent claims using the Ladders of Abstraction?

    Simple question. No insult (or attempt thereof).

    Why would I bother then? Because the answer reinforces the rather plain evidence that you lack the background of innovation protection to be pontificating as you are so want to do.

    Do you have a plain answer?

    Further then, if you have NOT been trained to write patent claims with the Ladders of Abstraction, and presuming that you have been trained in some manner to write patent claims, what was that training?

    Have you only been trained to write picture claims in the bio or chem arts? If so, that too might explain a lot of your difficulty with the more widespread areas of innovation.

  47. Anon February 16, 2020 11:04 am

    What are the chances that TFCFM will provide actual answers to these very real questions?

  48. TFCFM February 17, 2020 10:04 am

    The questions of what our patent law is (or should be) have zero to do with the name you apply to training techniques which you or I have experienced.

    The question of whether a claimed invention is ‘abstract’ reduces (roughly) to whether the exclusive rights sought by a patent applicant (or a patentee who has gotten a patent examiner to sign off on an application) correspond (at least in scope and specificity) to what the application discloses that the inventor(s) have invented.

  49. Paul Morinville February 17, 2020 10:30 am

    TFCFM: You don’t happen to be a former HS chemistry teacher? Your arguments and they way you phrase them seems very familiar.

  50. Anon February 17, 2020 10:34 am

    The questions of what our patent law is (or should be) have zero to do with the name you apply to training techniques which you or I have experienced.

    I call B$ on your evasive NON-answer. What exactly IS your experience? your training?

    Try again.

    Be direct.

    Please give me actual answers to my very real questions.

  51. Anon February 19, 2020 10:09 am

    Per my post at 46, the chances that TFCFM actually provides a (non-evasive) answer continue to dwindle.

    At the same time, the chances of his (again) posting his views in complete disregard for counter-points presented to him approach near perfect certainty.

  52. TFCFM February 19, 2020 11:06 am

    If you are willing to commit to admitting that everything I’ve said is absolutely correct merely because I provide you my registration number, I’ll consider doing so.

    I suspect, instead, that you are merely once again waving your hands in the face of argument to which you cannot intelligently respond.

  53. TFCFM February 19, 2020 11:10 am

    Furthermore, even if — nay, PARTICULARLY if — I am even remotely as unqualified as you wish to imagine, it reflects extremely poorly on you that you are unable to respond to my points with anything more substantive than hand-waving, attempted insult, and incomprehensible pseudo-patentese blather (e.g., “the fundamental nature of patents…” Sound familiar?)

  54. Anon February 19, 2020 4:36 pm

    TFCFM,

    Your lack of direct response — coupled with some of the most odd requests from you as to the admissions that you would want from me ALL THE MORE make my point for me.

    You are only making wild accusations that simply have no bearing to ANY of our past dialogues — all the while dodging direct questions of you in regards to your training.

    You “hint” here that you may have a registration number. But given that you have absolutely refused to provide anything close to an honest answer as to your training, I would surmise that even IF you have a registration number, it was likely obtained while you were in law school and that you have NEVER been actually trained to engage in the protection of people’s innovations with any semblance of prep and pros.

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website