SD Cal.: Evidence Relating to Reexamination Proceedings Excluded Fom Trial

Presidio  Components Inc., v. American Technical Ceramics Corp., No. 08-CV-335 (S.D. Cal., November 13, 2009, order)

During litigation, ATC submitted a request for reexamination to the USPTO, which was subsequently granted.  Soon thereafter, Presidio moved the court to exclude all evidence relating to the reexamination proceedings, arguing that the evidence is irrelevant and not probative of unpatentability.  The district court granted the motion:

Presidio argues persuasively that “the grant by the examiner of a request for reexamination is not probative of unpatentability.” . . . “The grant of a request for reexamination, although surely evidence that the criterion for reexamination has been met (i.e., that a ‘substantial new question of patentability’ has been raised, 35 U.S.C. § 303), does not establish a likelihood of patent invalidity.” . . . On the contrary, although it appears that the USPTO grants about 92% of the requests for reexamination, in only 12% of cases does that reexamination result in all claims being cancelled. . . . There is thus a “substantial likelihood” that, despite the grant of reexamination, the USPTO will uphold the patentability of some or all of Presidio’s claims.

Moreover, even if the reexamination proceedings are somehow relevant on the issues of obviousness or willfulness, they are nevertheless unfairly prejudicial. See FED. R. EVID. 403. As noted above, because the reexamination proceedings before the USPTO are still incomplete and based solely on the evidence provided by ATC in its replacement request for reexamination, there is very little probative value to the grant of reexamination. On the other hand, the prejudicial effect as well as potential for jury confusion is great. Thus, because the prejudicial potential of the evidence “substantially outweigh[s]” any probative value, it should be excluded.

Interestingly, the court granted ATC’s earlier motion to exclude from trial any reference to the “presumption of validity”  based on the reexamination.  The court remarked that "[w]ith any reference of the 'presumption of validity' excluded, allowing the jury to hear about incomplete USPTO proceedings will be unfairly prejudicial to Presidio, and could potentially confuse the jury as to who has what burden throughout the trial."

Read/download a copy of the order here (link)

How Not to Invent a Patent Crisis

F. Scott Kieff and Henry E. Smith authored a chapter in the book "Reacting to the Spending Spree: Policy Changes We Can Afford" which examines challenges the Obama administration faces today, and in the foreseeable future, and the administration’s planned responses.

Kieff and Smith's contributions deal with the topic of patent reform and the authors' view that in light of the rapid (and arguably excessive) changes that have already occurred in the courts, patent law needs "a tweaking of existing safety valves and processes" and not an "opening [of] the floodgates to more discretion and uncertainty."  Essentially the authors argue that ever-increasing discretionary power in the courts and the PTO will eventually gum up the innovative process.

For example, on the issue of obviousness, the authors discuss the early proposal to modify section 103 so that patents would be denied for inventions that were a “non trivial advance” on the state of the art.  Supporters of this modification argue that the change would be in line with the KSR decision.  Some supporters see the KSR decision as standing for the proposition that government decision makers, such as judges, now have increased discretion to pronounce what the prior art teaches and would like to extend such discretion to patent examiners. Kieff and Smith argue that this is a bad idea:

The proposed statutory changes would implement the same flexible approach urged by one side of the KSR debate. We think that flexibility can be carried too far and that the flexibility approach on offer relies on two false premises about how the system actually works. 

The first false premise is that beefing up the patent examiner’s resources would help her find the key prior art. Of course, our examining corps should have good access to Internet databases and ample time and training to peruse them. But no realistically available amount of time and training will help an examiner at his desk obtain the laboratory notebook of an individual researcher at some company or university or an obscure student thesis on the bookshelf of a foreign library, which is where the key prior art is often found.

The second false premise is that discretionary decision making, whether in court or the Patent Office, can be immune from political and other pressure. Asking a decision maker to use her legal or technical expertise as the primary basis for deciding what she thinks the state of the art was at a particular time in history gives her greater discretion than asking an ordinary jury whether a particular document or sample product existed at a particular time and what that document actually contains. By increasing the discretion of government bureaucrats, flexibility increases uncertainty and gives a built-in advantage to large companies with hefty lobbying and litigation budgets.

So what should be done in reforming the patent system?  Kieff and Smith have a number of proposals:

Remove the presumption of patent validity. [D]ialing down the present presumption of validity to something like the ordinary standard for civil cases would decrease the bad, in terrorem, effect [of aggressive patent litigation]. When litigation is needed, the carefully crafted Federal Rules of Civil Procedure govern the procedures for joinder, compulsory counterclaims, and against relitigating issues and claims decided in previous litigation, which are collectively designed to avoid abusive and repetitive process. The Federal Rules also provide streamlined procedures such as summary judgment, which avoids long trials where there is no genuine issue of material fact.

Institute symmetric fee shifting. Symmetric fee shifting would allow alleged infringers to collect attorney fees from a patentee who brings an infringement case after having been warned, for example, about a particular item of invalidating prior art. This practice of fee shifting when a patentee makes baseless arguments in defense of the patent’s validity would match the present rules in Sections 284 and 285 of the statute that allow patentees to get fees and (potentially) treble damages from infringers who should have known about their own infringement and have thus mounted baseless arguments in their defense. Such symmetry in fee shifting would encourage parties to exchange information and resolve disputes before undertaking expensive litigation

Equity in remedies. We think that the best way to implement eBay is to take this equitable approach seriously and apply it in the traditional (and sensible) fashion. Crucially, the equitable approach is a safety valve for those situations in which someone who is otherwise a good candidate for getting an injunction—such as a patentee whose patent has been infringed—should not get one because of some glaring injustice. The equitable approach is flexible but not boundlessly so, in contrast to currently proposed reforms that elevate discretion to new heights. Moreover this safety valve is probably all we would need.

The chapter concludes

The approach we propose will decrease slightly the average value of all patents because patentees will now have to fight harder on the issue of validity when they assert their patents in court. But this is not necessarily bad. The costs of arguing to the Patent Office to get patent rights in the first instance will be less than in a system under which the examiners have largely unfettered discretion to reject applications.

Most important, the approach we propose directly addresses the fears of those held hostage under the current system by the threat of litigation costs surrounding patents that are merely presumed to be valid. Under a decreased presumption of validity, such a terrorizing effect largely evaporates. With fee shifting, meritless suits against infringers will be discouraged, and the full traditional but limited use of equitable discretion will provide all the safety valves we need for good-faith infringers and those facing true patent trolls.
These approaches should be given time to work. The prudent course for the country is to embrace a strong patent system based on predictability and facts, which will benefit all players, large and small, in their contributions to American innovation and economic growth.

An excellent, concise paper (24 pages), worthy of a read for anyone interesting in reforming our patent system.

Read/download a copy of "How Not to Invent a Patent Crisis" here (link) 

More information on "Reacting to the Spending Spree: Policy Changes We Can Afford" (link)

ED Tex: Computerized Business Method Patent Fails Bilski Test Under 35 USC 101

H&R Block Tax Services v. Jackson Hewitt Tax Services Inc., No. 6:08-cv-37 (E.D. Tex., Nov. 10, 2009)

H&R Block sued Jackson Hewitt in February 2008 alleging infringement of patents relating to "a system and method for distributing payments to individuals and, more particularly, to a system and method for allocating a portion or all of an individual’s payment into a spending vehicle."  Jackson Hewitt subsequently moved the court to find the patent invalid for claiming ineligible subject matter on summary judgment

Unlike Bilski, H&R argued that the business method was tied to a machine (i.e., computer) and pointed to specific claims directed to "a computerized system for distributing spending vehicles."

Since the court did not issue a claim construction opinion, Magistrate Judge Love accepted plaintiff’s contentions that the patents claim “computerized systems” that are capable of performing certain functions as defined by the claims allegedly functional language.

A financial relationship is simply an abstract intellectual concept. Absent the recitation of a computer, the ‘862 patent would certainly claim unpatentable subject matter. See Benson, 409 U.S. at 67 (reiterating “the long standing rule that ‘(a)n idea of itself is not patentable’”). Plaintiff argues the present recitation of a computer imposes meaningful limits on the scope of the claim such that a fundamental principle is not fully preempted. The Court disagrees. The computer component is not a particular, special purpose machine; it is capable of no more than storing and retrieving data memorializing associations. The computer is an insignificant, extra-solution component of the claimed system. Cf. Bilski, 545 F.3d at 961-963 (concluding that data gathering steps are insignificant extra-solution activity). If an extra-solution step is insufficient to render an otherwise unpatentable process claim valid, then by analogy an extra-solution component is insufficient to render an otherwise unpatentable “system” claim valid. Thus, the addition of a generic computer, capable only of storing and retrieving data associating payments with spending vehicles, to the claimed system fails to impose meaningful limits on these claims. Therefore, the Court finds the claims of the ‘862 patent invalid for claiming unpatentable subject matter.

* * *

[T]he Court finds that none of the remaining claims at issue pass the transformation prong of the test. Plaintiff argues that the ‘829 claims transform “tax return data into an anticipated tax refund amount which is transformed into a spending vehicle issued by a third party provider” and that the ‘425 method claims transform “an individual’s income and expense data into an estimated income tax return amount which is transformed into a loan distributed to a tax payer.” PL.’S RESP. at 24. Plaintiff argues the data “represent real world items (e.g., money).” Id. at 25. It argues that income and expense data do not represent hypothetical income and expenses but rather “actual money which has been earned and spent.” Id. The final transformation, it urges, is from data to a loan for a specific amount of money. Id. At all steps in the claimed processes, the manipulated data represent legal obligations and relationships. See Bilski, 545 F.3d at 963. However described, the data and resulting loan represent money. Although tangible in some forms, money is simply a representation of a legal obligation or abstract concept. Therefore, the Court finds that the claims of the ‘829 patent and the method claims of the ‘425 patent fail the transformation prong of the machine-or-transformation test.

Read/download a copy of the opinion here (link)

From Docket Navigator

Bilski Movie Spoof

For whatever reason, numerous spoofs have been made using the "Hitler rant" scene from Der Untergang ("Downfall"), ranging from US elections, the real estate market, ACORN, etc.

Well, a spoof relating to patent law (and more specifically Bilski) has now been made, and it's quite funny, although at times you can't tell if the character playing Hitler is pro-patent or anti-patent . . .

Kappos Blog Up and Running on the PTO Website

To read the blog, click here.

Also, the blog has been bookmarked on the 271 Blogroll, and may be conveniently accessed there too.

Finally, the PTO appears to be warming up more to RSS feeds (or maybe I'm just getting around to noticing it) - the blog has a variety of RSS feeds that the public may use to follow the blog, as well as other news from the PTO site.

Bilski Oral Argument at the Supreme Court

"If you're not confused, you're not paying attention."   -- Tom Peters

Well, the analysis has started to roll in, and one thing is certain about the Bilski case: almost no one believes that the claims on appeal will be held patentable.  Not one Justice defended Bilski's method claim directed to hedging risks in commodities trading.  What appeared to bother the court the most was the concept of business methods based entirely on human activity, or, as Bilski's attorney Michael Jakes put it, "methods of organizing human behavior."

The Court didn't care much for these types of patents, and they made this clear - over and over - by citing examples of  trivial patents throughout the arguments, almost as a taunt to Bilski's counsel in the hopes that he would eventually stop mid-argument and acknowledge "you know what, your honor - that's a pretty stupid invention right there; someone would need to have their head examined before filing a patent application on that."  Some theoretical patents proposed by the Justices:

- How to resist a corporate takeover (Ginsburg)
- How to choose a jury (Ginsburg)
- Patent the method of speed dating (Sotomayor)
- A "great, wonderful, really original method of teaching antitrust law [that keeps] 80 percent of the students awake" (Breyer)
- "I buy low and sell high.  That's my patent for maximizing wealth" (Roberts)
-  Questioning whether a person at the Bureau of Statistics can compile statistics on life expectancy and get a patent (Kennedy)
-  "Let's take training horses. Don't you think that -- that some people, horse whisperers or others, had some, you know, some insights into the best way to train horses? And that should have been patentable on your theory." (Scalia)

And so on.  Entertaining?  Yes.  Helpful?  Not really.  The Justices were quite frank in telling the counsel that they were having trouble formulating any kind of concrete test for patentable subject matter:

JUSTICE BREYER: [I]n the nineteenth century, they made it one way with respect to machines. Now you're telling us: Make it today in respect to information. And if you ask me as a person how to make that balance in respect to information, if I am honest, I have to tell you: I don't know. And I don't know whether across the board or in this area or that area patent protection will do no harm or more harm than good.

So that's the true situation in which I find myself in respect to your argument. And it's in respect to that, I would say: All right, so what do I do?

* * *

JUSTICE SOTOMAYOR: And so it begs the question, because we go around in a circle: What does "process" mean in a patent law that was passed in 1952 that had one set of manufacturing and other items that are technologically tied and this is not? So how do we discern Congress's intent, other than by the use of the word "process" in context?

* * *

JUSTICE BREYER: Now, [the Federal Circuit has] left much unresolved. One, transformation; how broad or narrow is that? We don't know. Many people's problems will be solved if it's broad on the one hand or narrow in the other.

Two, are you automatically patented -- in the patent statute, if you just sort of reduce this to a machine by adding a computer on at the end? They've flagged that as a problem. They haven't answered it. Could there ever be a situation where it doesn't meet this test but still is patentable? We are not sure.

At this point, the Justices appeared to tacitly accept the Federal Circuit's "machine-or-transformation" (MOT) test by default - i.e., unless they hear of something better, the MOT test will have to do for now.

JUSTICE SOTOMAYOR: Well, isn't the manipulation of electronic signals a substance that is different in kind from just a method of how to go about doing business or a method of how to approach a particular problem?

Isn't there -- isn't that what the Federal Circuit was trying to explain, which is that there has to be something more substantive than the mere exchange of information; that it has to involve -- it used the word "transformation." It hasn't defined the outer limits of what it means by that.

* * *

MR. STEWART (USPTO): Well, first of all the only ruling that we're -- backtrack a bit, to say, we oppose,sir, in this case because we recognize that there are difficult problems out there in terms of patentability of software innovations and medical diagnostics.

JUSTICE KENNEDY: You thought we -- you thought we would mess it up.

MR. STEWART: I didn't think --

(Laughter.)

MR. STEWART: We didn't think the Court would mess it up. We thought that this case would provide an unsuitable vehicle for resolving the hard questions because the case doesn't involve computer software or medical diagnostic techniques, and therefore, we thought the Court would arrive at the position that I think, at least some members are feeling that you have arrived at, that you will decide this case, and most of the hard questions remain unresolved. And, frankly, we think that's true.

JUSTICE GINSBURG: But this case could be decided without making any bold steps.

MR. STEWART: Again, I don't -- I don't think it would be a bold step to say that machine-or-transformation is the test. That is, we have gone for --

JUSTICE GINSBURG: But even the Federal circuit didn't say it was a retest. It said it is for now. We know that things that we haven't yet contemplated may be around the corner, and when they happen, we will deal with them.

For people that still cling to the fantasy that software patents will be banned, you will have to wait for another day.  The court appeared to recognize that this case was not about computers and computer software (in the words of Justice Sotomayor: "no ruling in this case is going to change State Street"), and the majority of the discussion was directed to human-activity business methods.  As such, it is highly unlikely that the Court will rule in any meaningful way against software patents.

One interesting discussion worth noting is the following exchange between Scalia and Jakes, where Scalia appears to contradict the Federal Circuit's holding in In re Nuijten (signal claims are not patentable subject matter):

JUSTICE SCALIA: Sound -- sound is not physical, and electric current is not physical?

MR. JAKES: I think electric current is physical.

JUSTICE SCALIA: Yes, I think so.

MR. JAKES: Yes.

JUSTICE SCALIA: Sound is, too.

MR. JAKES: It can be, but when it's transmitted over a wire, it's not. It's something else. It's an electrical current then.

JUSTICE SCALIA: Sound is not transmitted over the wires. Sound has been transformed into current, and current is transmitted over the wire and then transformed back at the other end into sound.

MR. JAKES: Yes, and I would agree --

JUSTICE SCALIA: I think it clearly --clearly would have been covered by -- by the test

Read/download a transcript of the oral arguments here (link)

"On the Scene" Reports and Blogs from SCOTUS Bilski Arguments

From Gene Quinn, IPWatchdog:

Justice Ginsberg seemed to me to be the most openly hostile toward business methods, as well as the US patent system in general. She mentioned with a certain incredulous attitude the thought of patenting tax avoidance methods, estate planning, how to resist a corporate takeover and how to select a jury. Ginsberg then several times later kept asking about how other countries handle this type of invention, noting that other systems work with a technology requirement and do not accept these types of processes as patentable. Jakes correctly pointed out that other systems follow that approach, but there is no support in US law for that approach to be followed here.

Justice Breyer also seemed unfavorable toward business methods being patentable, but seemed to genuinely be trying to figure out where to draw the line, even one time admitting that if he is honest with himself he does not know what the answer is at this point. Breyer did have difficulty with the thought that “anything that helps a businessman succeed would be patentable” if the Supreme Court were to adopt the Bilski proffered approach.

The most junior member of the Supreme Court, Justice Sotomayor, seemed openly hostile toward the Federal Circuit decision in this case. At several times throughout the argument she made her opinion clear that she thought the Federal Circuit had gone too far in its decision, a theme that was picked up on and echoed by several of the other Justices. Specifically, Sotomayor asked: “How do we limit it to something that is reasonable?” She also asked later asked Stewart: “Help us with a test that does not go to the extreme that the Federal Circuit did.”

Read the post in its entirety here (link)


From Lyle Denniston, SCOTUS Blog:

The largest question left unanswered when the one-hour argument was over was whether the Court would go forward and issue a major new ruling interpreting patent law, when the practical result here seemed so evident. Lawyers and judges have invested heavy resources in the Bilski case, and it does raise a fundamental question that may well need answering. But, when there may well be no formulation of patent law that would salvage the Bilski-Warsaw creation, why bother?

* * *

Justice Samuel A. Alito, Jr., promptly asked whether “this is a good case” to get into the broad area of patentability. Stewart suggested it was, at least for a narrow ruling validating the Federal Circuit’s test, leaving harder questions for down the road. But Justice Sotomayor then suggested a concern that seemed to be shared by at least some of her colleagues, commenting that “I have no idea what the limits of the Federal Circuit rule would be in the medical field or the computer world.” Justice Breyer chimed in that the lower court had left “a lot for the future.”

* * *

Justice Breyer also joined the Chief, suggesting that, if all that were needed were to tie a theory to a computer to make it patentable, “all you would need to do would get someone who knows computers asnd he can set up every business application” to make it eligible. Again, Stewart responded by urging the Court to keep its decision narrow, agreeing with a comment by Justice Ruth Bader Ginsburg that the case could be decided “without making any bold steps.”
Still, after this argument, it might be a fairly “bold step” to decide the case at all. Whether the Court is prepared to rule may depend upon the degree to which it accepts the assurances of the Solicitor General that the Federal Circuit would modify its test if it threatened to stifle “emerging technologies.”

Read the entire post here (link)


Tony Mauro, Blog of the Legal Times:

The long-awaited Supreme Court patent law showdown in Bilski v. Kappos is over, and it not looking good for business method patents -- or at least the one at issue in the case. Justices overall seemed hostile to a broad view of patent eligibility that would include intangible business processes.


Justice Stephen Breyer said that if everything that "helps a businessman succeed" is patent-eligible, it would "stop the wheels of progress" by granting exclusive rights to innovations that should be available to all. When J. Michael Jakes of Finnegan, Henderson, Farrabow, Garrett & Dunner, arguing in favor of the patent at issue, said one benefit of patenting innovations is public disclosure, Justice Sonia Sotomayor countered that patents in fact "limit the free flow of information." Sotomayor, a onetime intellectual property lawyer in New York, was viewed as a potential pro-patent vote, but her comments suggested skepticism.

But it's not certain that a defeat for Bilski and Warsaw will mean the Court is embracing U.S. Court of Appeals for the Federal Circuit's narrow view that to be eligible for a patent, an invention must be tied to a machine or a physical transformation. Justice Ruth Bader Ginsburg and others voiced some concern about adopting a rigid rule that would fail to anticipate unknown kinds of innovations in the future.

Read the post here (link)


 
 

Which Patent Office Does It Best? Survey Says: "The EPO"

Joff Wild at the IAM Blog reported on an on-going benchmarking survey being conducted by IAM magazine and Thomson Reuters on various patent-related topics.  Recently they asked questions to various professionals regarding patent quality at the larger patent offices.

IN-HOUSE SURVEY RESULTS:

Examination Quality is "Excellent" or Very Good"

EPO - 70%

USPTO - 56%

JPO - 54%

KIPO (Korea) - 25%

SIPO (China) - 18%

Overall, Patent Quality Has Improved/Stayed the Same/Gotten Worse

EPO:  improved = 26%, stayed the same = 71%, got worse = 3%

USPTO: improved = 23%, stayed the same = 61%, got worse = 16%

JPO: improved = 17%, stayed the same = 78%, got worse = 5%

KIPO: improved = 34%, stayed the same = 61%, got worse = 5%

SIPO: improved = 58%, stayed the same = 37%, got worse = 5%

(interestingly, the USPTO's "got worse" rating is over triple the amount of any other office)


PRIVATE PRACTICE SURVEY RESULTS

Examination Quality is "Excellent" or Very Good"


EPO - 56% (-14)

USPTO - 38% (-18)

JPO - 40% (-14)

KIPO (Korea) - 21% (-4)

SIPO (China) - 20% (+2)

Overall, Patent Quality Has Improved/Stayed the Same/Gotten Worse

EPO: improved = 28%, stayed the same = 64%, got worse = 7%

USPTO: improved = 20%, stayed the same = 62%, got worse = 18%

JPO: improved = 19%, stayed the same = 77%, got worse = 4%

KIPO: improved = 30%, stayed the same = 67%, got worse = 3%

SIPO: improved = 56%, stayed the same = 42%, got worse = 2%


When asked "what are the biggest impediments to quality," the answers were
 
(1) the pressure to get examinations done more quickly;
(2) the sheer number of applications being submitted; and
(3) government regulations.
 
Joff notes

Clearly, the EPO is regarded as the pace-setter among the world's leading patent offices; both the Koreans and the Chinese have improved significantly, but still have work to do. What our respondents are telling us about the USPTO, meanwhile, only goes to emphasise the job that David Kappos has in front of him. That said, it seems to me that there are still far too many people who believe that none of the offices we asked about offer high enough standards. There is room for all of them to up their game, at least as far their users are concerned.

Read the post in its entirety here (link)

BPAI Gives Green Light to Nixing "Black Box" Software Patents Under 35 USC 112

Ex Parte Rodriguez, Appeal 2008-000693, October 1, 2009 (Precedential Opinion)

The application was directed to a computer-based system and method for configuring and verifying a "structurally variable and complex system."  Exemplary claim 1 reads as follows:

1. An apparatus comprising:

a system configuration generator configured to generate a random system configuration file of a structurally variable and complex system;

a system builder configured to (i) build a system level netlist and (ii) generate system parameters in response to said random system configuration file; and

a simulation verification environment configured to verify said structurally variable and complex system in response to said system level netlist, wherein said simulation verification environment is configured to provide automatic random verification of said structurally variable and complex system in response to said random system configuration file.

The text in the specification generally mirrored the claim language, where generic block diagrams were used for describing system components.  Importantly, the disclosure was based on "a conventional general
purpose digital computer" and the specification did not provide any examples of how algorithms were constructed.  Instead, the specification stated that "appropriate software coding can readily be prepared by skilled programmers based on the teachings of the present disclosure, as will also be apparent to those skilled in the relevant art(s)."

The BPAI reviewed the claims and found them to be indefinite under 35 U.S.C. 112.

Starting with the means-plus-function (MPF) claims, the BPAI relied on Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech., 521 F.3d 1328 (Fed.Cir. 2008) for the proposition that MPF claims in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather "the special purpose computer programmed to perform the disclosed algorithm."  As such,  the corresponding structure for a 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.

Turning to the application, the BPAI found that the disclosure was similarly lacking:

The cited portion of the Appellants' Specification describes generally that the system 100 may provide automated random verification of complex and structurally variable systems. However,  the cited portion of the Specification does not provide an algorithm by which the system is able to perform the functions recited in claim 10 to provide automated random verification of complex and structurally variable systems.

The Appellants have failed to disclose any algorithm, and thus have failed to adequately describe sufficient structure, for performing the functions recited in the means elements contained in claim 10 so as to render the claim definite. Accordingly, claim 10 is unpatentable under 35 U.S.C. 112, second paragraph, as indefinite. Aristocrat, 521 F.3d at 1333.

The BPAI next turned to a claim that recited features such as "a system configuration generator configured to . . .", "system builder configured to . . ." and "simulation verification environment configured to . . ." and found that these claims were also subject to 35 USC 112 ¶ 6:

We agree that the claim elements do not use the term "means" which would normally indicate that the claim element is intended to be a "means plus function" element . . . However . . . [w]e must determine "whether the term is one that is understood to describe structure, as opposed to a term that is simply a nonce word or a verbal construct that is not recognized as the name of structure and is simply a substitute for the term 'means for.'

We have looked to both general and subject matter specific dictionaries and we find no evidence that any of these terms have achieved recognition as a noun denoting structure. Therefore, based upon our consultation of dictionaries, a review of the record before us, and a search of the prior art patents in this field, we conclude that none of these three terms is an art-recognized structure to perform the claimed function, and claim 1 does not recite any other structure that would perform these claimed functions . . . we conclude there is no structural context for determining the characteristics of these claim elements other than to describe the function of each element. We further conclude that these claim elements are verbal constructs that are not recognized as the name of a structure and are simply a substitute for the term "means for."

Again, the BPAI found the lack of algorithmic disclosure in the specification rendered the claim indefinite.

Alternately, the BPAI rejected the claims under section 112, first paragraph, ruling that the claim elements are purely functional (i.e., there is no particular structure to support the function being performed) and thus were not enabled without undue experimentation.

Turning to the Wands factors for determining undue experimentation (In re Wands, 858 F.2d at 737) the BPAI considered: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.  The BPAI ruled

We recognize that functional language does not, in and of itself, render a claim improper . . . [however] the scope of the functional claim language here in claim 1 is not enabled to its entire scope . . . Appellants' claim recites no meaningful structure. Instead, the scope of the functional claim language of claim 1 is so broad and sweeping that it includes all structures or means that can perform the function. It is not limited to any corresponding structure, material, or act disclosed in the specification and equivalents thereof.

[W]ith this opinion we do not mean to imply that all functional language will violate the Halliburton rule as it does here. We note that functional claim language tied to a definite structure in the claim . . . is unlikely to give rise to an enablement rejection where a person of ordinary skill in the art would likely know how to make and use the embodiments that give rise to the structure. However, in this case and those like it, the purported "structures" in the claims are essentially black boxes not connoting any structure to the skilled artisan, and are merely circularly defined by their desired functions. For the reasons expressed above, these "structures" are not enabled and are properly rejected under 5 112, first paragraph.

Read/download a copy of the opinion here (link)