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G'day and welcome to the Patently Strategic Podcast, where we discuss all things
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at the intersection of business, technology, and patents.
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This podcast is a monthly discussion amongst experts in the field of patenting.
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It is for inventors, founders, and IP professionals alike, established or
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aspiring. And in today's episode, we pick up right where we left off
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last month with another but equally important look into the world
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of enablement. This topic hearkens back to the fundamental deal of the
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patent system. Long term progress of science and the useful
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arts is promoted by trading a government granted window of exclusivity
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to inventors in exchange for an enabling public disclosure
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that teaches the public how to make and use the invention. This predictably
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leads to some tension in the system. Inventors understandably
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want the broadest possible and most future proof coverage for their ideas.
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The health of the broader public innovation ecosystem, however, depends on not wholesale
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blocking of iteration and competition by granting exclusive rights
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that can go well beyond what was specifically invented in the scope
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of any given granted patent. One place in particular this
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tension arises is in an area of patent law referred to as means
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plus function claiming to someone newer to the world of IP,
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this is yet another terribly unintuitive turn of phrase.
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Fear not, we'll unpack that in just a bit. For now, suffice it
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to say that it is another semantic sharp corner alive and well in our
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court system, with two significant Federal Circuit Court rulings as
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recent as this past spring. There's a tremendous amount of nuance
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in these rulings, in this tension, and in the general understanding
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surrounding means plus function claiming to the point of seeming overly
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pedantic at first glance. But it's important to remember that
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word choice matters a great deal in the world of patenting. You're using the English
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language to draw a picture around highly technical concepts. The precision
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with which this is done, down to the semantic level, can make
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all the difference when it comes to your patent application being rejected or
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granted in the future likelihood of your ability to assert your rights or
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defend against invalidation word choice too narrow or
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overly specific you can easily be designed around by competitors.
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We're choice too broad and only describing what something
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is versus what it does, and you risk rejection or invalidation
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for what will be ruled as linguistic tricks to get more coverage than what you
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actually invented. The tension is real, and the case law interpretation
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is fluid. But it all still comes down to determining if the chosen words
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will enable a person of ordinary skill in the art to carry out an
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invention in the interest of other inventors being able to build on the
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idea while also avoiding trespassing with infringement. In this
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month's episode, Dr. Ashley Slot, president and Director of Patent Strategy here at
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Aurora, leads a discussion, along with our all star patent panel, into the
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nuanced world of means plus function claiming. The group
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digs into the statute, explores relevant case law and an analysis
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of the kinds of word choices that have and haven't caused problems for inventors,
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and also provides some great drafting tips for derisking the use of
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means plus function claim language. Ashley is joined today by
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our Always Exception, a group of IP experts including Kristen Hanson,
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patent strategist at Aurora dr. David Jackroll, president of Jacqueline
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Consulting david Cohen, principal at Cohen Sciences
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and Shelley Katarrier, patent strategist and search specialist.
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Now, before joining the group, as we often do, we'd like to provide a
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short primer on key concepts in this episode for those newer to the world
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of patenting. In breaking this down, there's a lot of talk in the episode
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about what's described in the spec or specification versus
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what's written in the claims. We review this distinction in the prior episode
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on American Axel and take an even deeper dive in our patent anatomy
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episode from season one. But in brief, the specification describes
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the invention and provides context for interpreting the claims.
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The claims are the heart of the application and point out the exact invention boundaries
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of what the applicant believes she's entitled to, specifically,
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what the patent covers. Now, moving on to statute scope
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when patents are examined by the patent office or later litigated in
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a courtroom, several sections of US statute come into play in
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determining if the claims in the patent are eligible, useful, novel,
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nonobvious, and enabled or properly described.
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Patents can be rejected or invalidated if one or more of the claims are
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determined to be otherwise. Problems fall under title 35 of
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US. Code in this episode centers around section 112, which is largely
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concerned with enablement. We're describing the invention in sufficient
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detail to allow it to be practiced by someone skilled in the art without
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undue experimentation. Subsection F of section 112
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addresses the use of functional language and patent claims with many
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conditions that our panel will cover. US. Patent law does provide provisions for
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using functional language, or what something functionally does versus
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the more traditional approach that defines the structure or the
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how it does it of the invention. Another way of saying this is the
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claim is functional when it describes a feature by what it does versus
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what it is. So why is this referred to as means plus function claiming
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despite it not being the only trigger? These claims originally
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appeared as phrases worded like a means to turn on a light
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bulb, so literally quote a means unquote
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followed by or plus some functional outcome.
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This generic language provides no specificity as to how the ball is
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turned on, potentially including structural elements like
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switches and copper wires, but instead encompasses all
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possible means by which a bulb can be turned on. While use of this
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type of language in its equivalence is legally in play, as you learn
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in the discussion, corresponding structure must still be found or
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commonly inferred if the claim is not at risk of being ruled indefinite
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by the patent office or courts. So the last bit of context we'd like
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to provide is around the word nons, which practitioners use with regularity,
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and this episode is no exception. To get around the literal means plus
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function analysis being triggered by the literal use of the word
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means for in a claim, people started using slightly
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more specific language and applications. And I do emphasize
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slightly these generic words and verbal constructs were still
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often void of structure and lacked definite meaning.
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Mechanism, module, device,
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unit, component, element, member,
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apparatus, machine, system. These are referred to as nonce
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words. And just like they're a means for cousin, can all kick
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off a world of hurt if not properly supported with enabling structure.
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All right, that's hopefully enough to send you on your way into the nuanced world
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of functional claiming. As with most things, this is a concept that
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is neither inherently good nor bad. But knowing what to look for,
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how to safely leverage it, and when to avoid it altogether
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are key ingredients to staying calm and patenting on.
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Now, without further ado take it away, Ashley. All right,
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so getting to the real issue at hand, which is meso function claiming
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and kind of the state of that and where we're at, and I try to
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kind of break today's discussion into device
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MPF versus software NPF because there are some nuances
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to each, I think. But in general, kind of
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the same overarching rules apply. You can
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see that in the last 70
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years now, that the number of patents that include
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means for claim limitations have dropped
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precipitously over time. And I
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would bet that trend continues into this day.
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Or maybe it kind of maybe kind of levels off at about ten, 5% or
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so. It's definitely not as common as it used to be, but you
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still see it. I know that I still occasionally throw in
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some means language into a set
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of claims. Not to say it's the only set of claims, but I still
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kind of do it just because I feel like it provides
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maybe some breath for something from the spec that you didn't actually
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claim, but maybe you can still capture what that means for language.
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But like I said, there's definitely some short corners to this as well. So in
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general, section 112 F, or paragraph six
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of the MPEP describes what main plus function is.
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Section 112 F is applied if you recite a function without reciting
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structure for performing the function and then it limits the claim to the
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structure, materials or acts disclosed in the specification or equivalents thereof,
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and it's not applicable. Section 112 F is not applicable if you
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recite both a function and the structure for performing that function.
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And so a lot of times what a lot of the case law that I
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read when the courts in particular,
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and I guess I haven't read enough about what examiners are
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doing. But in courts in particular, when they're trying to identify whether means
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plus function applies and whether you have sufficient disclosure to
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support that means plus function language,
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they basically determine the claimed function. So they
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basically say, okay, what's the means term?
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Right? Is it some kind of means for doing something? So what
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are all the functions that means it's performing? So maybe it's one function,
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two functions, four functions. And then they try to identify the corresponding
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structures in the written description that perform that function.
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And if they can only find one
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function, if they can only find support for
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one of the multiple functions, it's found indefinite.
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So I think it's really interesting in thinking about if you are to use
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means plus function language, making sure that you're
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clear on all the different functions that you're giving
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that means and then making sure each of those functions has
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structure in the specification.
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So how do you get around MPF or how do you navigate it?
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So if means is not used, it must be shown that persons of ordinary
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skill in the art would not have understood those term limitations to connote
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structure. And so that's what they kind of have to
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prove is that, okay, so you didn't use the word means, but you use some
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other potential means like word.
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So now there is the burden probably of the examiner of the court
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to say, well, somebody of ordinary school wouldn't understand that
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that had any structure to it. If an MPs determination
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is not this design, then the applicant needs to show that a particular claim element
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would be understood as connoting structure. And so
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this kind of balance of, again, trying to make sure that there's sufficient
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structure in the description to support that means,
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the function language and this kind of use that means the function dates
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all the way back. I mean, the Morse code is,
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I think, one of the earliest ones where they kind of talked about a means
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of transmitting was
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it like electromagnetism or whatever it was, to kind of send
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signals, send words. I think that was ultimately
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I can't remember if it was actually back at that time or just later and
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people kind of retroactively looking at things, but that there
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wouldn't have been sufficient structure even in that application to support
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the breadth of the claims that were in the Morse code patent.
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But one of the more somewhat recent in the last deck,
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last decade, last half century or so, is this Halliburton
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Oil versus Walker. And so in this case it was
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the late 1920s and the oil industry was experimenting
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with some different sound echo time methods for measuring the
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distance to the fluid surface and deep oil wells.
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And so the claims in this application
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were the product of experimentation upon this
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Lean Wyatt patent.
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The investment basically added a mechanical acoustical resonator
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to the prior art device for measuring that distance to the fluid surface
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and deep oil wells. You can see here the claims recited
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a means associated with said pressureresponsive device for tuning said
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receiving means to the frequency of echoes from the tubing collars
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of said tubing sections to clearly distinguish the echoes from said couplings
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from each other. And ultimately the Supreme Court invalidated
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Walker's mean plus functional claims because they said it was improper
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to claim the most crucial element in terms of what
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it will do, rather than in the terms of its own physical characteristics or
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its arrangement in the new combination of apparatus. So none
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of the claims describe the physical relation of the Walker addition to
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that of the old Lair and Wyatt machine. None of the
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claims describe the manner in which the Walker edition would operate
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together with the prior art machine to make a new apparatus.
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And so ultimately the claims failed. And so again,
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I used this more than historical one. I didn't deep dive into this case,
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but kind of historical perspective. This is where the MPs field
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has kind of been going. The most notable case
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of recent is this Williams versus Citrix,
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and this was in 2015. And the reason I think this one
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has gotten a lot more fanfare
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or at least play in internet and
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stuff like that, is that they started. So historically,
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if you used the term means,
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it was presumed that it was a section 112 F means
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plus function claim. If you didn't use the word means,
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it was a very strong presumption that 112s didn't apply.
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This Williams versus Citrix online case shifted away from that
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and basically saying that there is now no longer a strong presumption
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against a means plus function interpretation in the
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absence of the means language. And it
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also established the nonseward doctrine. And I know David Cohen,
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I talked about this the other day and I have a whole slide about nonce
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words and nonnounce words.
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But what this case ultimately?
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Let me take a step back here. So Williamson had invented software for
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connecting one of our presenters with geographically remote audience
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members. And so in their claims they had a distributed learning
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control module. So obviously nothing with means, their meantion
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word was a module, distributed learning control module.
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And so the district court had evaluated the specification
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and concluded that there were no necessary algorithms
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in the spec for performing those claimed functions. And ultimately the
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Federal Circuit upheld and found that the term distributed
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learning control module was indefinite because they basically
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said that one of ordinary skill in the art
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won't know what kind of meaning or what kind of structure that
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this module would have connoted.
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This basically led to that heightened burden to make sure that you
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have the structure. And in particular, and I'll get into this later, but particularly
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for software, you can see in a lot of the case law that they really
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want for something that is interpreted as
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means plus function in the software world,
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you need to have structure and or algorithms
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that define what that means for function word or
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term is. And so that's kind of what they failed here
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is there just was nothing there's, no algorithms or anything like that, that fully
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gave the meats and balance of that distributed learning control module.
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Right, Ashley, let me add in here, we're very familiar with
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this and it is painful.
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Williamson visitrix, remember, was the first time that software was called
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into play to say these modules
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and these means for language pieces are
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not properly supported in specs as we see them.
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So if you do a means for in kind of a mechanical
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case, one skilled in the art might
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understand that a fastener could be 40 different things,
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even if your spec did not list all of those
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things. You may be able to stretch something because one skilled
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in the art would stretch something. But with software,
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you have no idea what that algorithm might have been. You have no idea what
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it means when somebody says decision module or
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decision engine or decider
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thing or anything that you say module engine or whatnot if
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you don't fully explain that in your specification,
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there is no support for it.
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So it isn't just messy claim language, it's just poor spec
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writing. And this case brought that to the forefront because
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as a software prosecutor, you can quickly write up flow
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charts, but if those flowcharts aren't supported
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by what the modules are that are performing those pieces,
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and or if you don't take the time to kind of get those examples
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in there, it's just too late. It's not supported,
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and you're going to get these rejections all over the place. So a
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lot of people who are a little bit newer to software
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drafting. I would say probably
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after 2012. Maybe even later than that.
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They will shy away from using means for
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and using module even or anything like that in their block
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diagrams and their flow charts because they do not want
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to take the time to make sure that's properly supported for the
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means for language and they don't want to have it on their file
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histories. So sometimes you will get these rejections, but it's fine because
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you've done your job. Your spec is good, everything's appropriate,
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and it's supported. But sometimes you get these rejections and you have to
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check that and you may have to remove it from your claim
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language because you don't have the proper support. So some
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people will shy away from that. But old school software drafting,
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you will see module all over the place. You will see means for,
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and there are a lot of practitioners who still do this and there's
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nothing wrong with it. It's just a little dicey and it's a little more difficult
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to make sure your specification meets the standards.
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Yes, that's very helpful, Kristin. And the thing that came through to me most was
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that, again, just finding all those functions and
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making sure there's a full flow chart algorithm
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or whatever that clearly supports that function. So just
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making sure you got all those functions vetted out. Yes. Even if
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it's the dumbest flow chart you've ever seen three boxes of do this, do X
18:36.308 --> 18:40.400
and do Y. I mean, it just has to be in there. And that's support.
18:40.910 --> 18:44.742
Sometimes you need it deeper than that. But yeah,
18:44.816 --> 18:48.022
absolutely. Thank you for that. That kind of brings up the noncers
18:48.046 --> 18:52.182
versus non nonswords. And of course, this is not an exhaustive list,
18:52.256 --> 18:55.650
right? So obviously words
18:55.700 --> 18:58.606
like module, mechanism, unit, component, element,
18:58.678 --> 19:02.818
member, apparatus, machine, system are kind of void
19:02.854 --> 19:06.378
of structure, right? Because there's so many things that
19:06.404 --> 19:10.458
could be considered. Any one of those things from a non nonse word,
19:10.484 --> 19:13.640
the most sounds like nonsense, nonnonse words,
19:14.630 --> 19:18.094
words like circuit, detent mechanism, digital detector,
19:18.142 --> 19:20.670
reciprocating member, connecting, assembly,
19:22.130 --> 19:25.458
seemingly connected joints. Obviously, the thing that
19:25.484 --> 19:30.210
I kind of found in some of these was that the non words had
19:30.320 --> 19:34.410
non structural modifiers. That's like a non structural adjective
19:34.730 --> 19:37.640
and a non structural term. So if you kind of said,
19:39.650 --> 19:43.134
I don't know, like a reciprocating system, maybe that would work,
19:43.172 --> 19:45.978
maybe it's more structural. I'm trying to think of even an example if somebody has
19:46.004 --> 19:49.930
one shout out. But on the other side of the non
19:49.990 --> 19:53.278
words, there's clearly a structural modifier and a non structural term.
19:53.314 --> 19:57.010
So a digital detector, obviously detector
19:57.070 --> 20:00.654
has some level of structure in it. A detent has
20:00.692 --> 20:04.220
some level of structure in it. A circuit has some level of structure in it.
20:04.670 --> 20:08.358
And so the more that you have some sort of structural component to the
20:08.384 --> 20:11.974
term, the better. But what you don't want is stacking
20:12.022 --> 20:15.522
up all these adjectives that are directly tied to the means of
20:15.536 --> 20:19.362
these non structural modifiers that are attached to the means or
20:19.376 --> 20:23.038
some other nonsword. And that seems a lot of people kind of get in trouble
20:23.134 --> 20:26.910
or end up kind of in this mean plus function interpretation.
20:28.850 --> 20:32.790
Do you think that configure two would also be an oddsword?
20:33.290 --> 20:37.362
I think it can be, but again, it depends on
20:37.496 --> 20:40.842
what that function if
20:40.856 --> 20:44.586
you're saying like an element configured to and
20:44.708 --> 20:48.090
maybe that configured two language gives it some structure.
20:48.590 --> 20:51.810
If it's an element configured to attach
20:52.310 --> 20:55.820
element A to element B or
20:56.150 --> 20:59.550
to attach a shaft to a base,
20:59.720 --> 21:04.158
then maybe the element could be considered less of a
21:04.304 --> 21:07.662
nonce word because the structural feature, there could be some kind
21:07.676 --> 21:11.190
of maybe fastening means or something like that because it's connecting,
21:11.810 --> 21:14.754
fixing this shaft to this base.
21:14.912 --> 21:18.246
But from a software perspective, for example,
21:18.308 --> 21:22.366
if you're like an element configured to identify
21:22.438 --> 21:26.278
a user, what is that? Is that a device?
21:26.374 --> 21:29.370
Is that some kind of algorithm? Is it a sensor?
21:29.690 --> 21:33.510
What is that? And so I think it kind of depends what comes
21:33.560 --> 21:37.062
after configured. Yeah, coming from the
21:37.076 --> 21:40.678
other side of the software side, I rarely use configured to unless
21:40.714 --> 21:44.298
I'm tying it to the processor doing it. So processor configured two or
21:44.324 --> 21:47.758
processor and memory configured to carry out these instructions.
21:47.914 --> 21:51.426
I'll use it there, but I'll rarely use it within
21:51.488 --> 21:53.480
my claim body.
21:55.010 --> 21:58.410
I'm sorry, say that again. You would use it where? I would
21:58.460 --> 22:01.542
use it in like a preamble where I'm saying I have
22:01.556 --> 22:04.590
a processor configured to carry,
22:04.910 --> 22:08.034
right, but I wouldn't use it in the body very often for
22:08.072 --> 22:11.238
software, if at all. It's the same issue.
22:11.324 --> 22:15.046
It has to have a little bit more support, a little bit stronger
22:15.118 --> 22:18.954
tie to exactly which algorithm is
22:18.992 --> 22:22.940
configured to, why it's configured to and what the actual steps are.
22:23.570 --> 22:26.922
Rather than if I say an algorithm that includes A,
22:26.936 --> 22:29.540
B and C and I just call out A, B and C,
22:30.050 --> 22:32.838
I have a processor that can do it and that's fine. But if I say
22:32.864 --> 22:36.800
configured to, I have to describe what I mean by configured to.
22:37.790 --> 22:41.490
All right? Like a special processor potentially,
22:41.930 --> 22:44.986
or is it pre programmed, is it an FPGA?
22:45.058 --> 22:48.874
Right? Is it changeable? There's all kinds of just weird odd
22:48.922 --> 22:52.280
things that pop up in the software world for using configured too.
22:53.810 --> 22:56.706
So I'm going to walk through a little bit of case law for some kind
22:56.708 --> 23:00.798
of the device world and a little bit for the software world. So the
23:00.824 --> 23:04.762
Gregory Baron versus Medical Device Technologies case. Federal Circuit
23:04.786 --> 23:08.734
210. Basically, Baron invented an automated biopsy
23:08.782 --> 23:12.486
instrument. Basically the device that he was trying to protect was
23:12.548 --> 23:16.366
charged by pulling back an external guide which was attached
23:16.378 --> 23:20.254
to the cannula along the shaft until the guide locks in place. The locking
23:20.302 --> 23:23.422
function was eleven, that would slide
23:23.446 --> 23:27.190
into a slot. Pressing the other end of the lever would release
23:27.250 --> 23:30.438
the lock and allow the spring to send the cannula forward over
23:30.464 --> 23:33.982
the stylist. So basically like for taking a biopsy
23:34.066 --> 23:38.470
sample and so in Baron
23:38.530 --> 23:42.198
spec or in their claims, they had a release means for
23:42.224 --> 23:45.858
retaining the guide in the charge position. And so
23:45.884 --> 23:49.182
when they did the claim construction, they basically said again, one of the
23:49.196 --> 23:52.858
functions has a release function and a retaining
23:52.954 --> 23:56.914
function, right, retaining the guide in the charge position and releasing the guide
23:57.082 --> 24:00.426
from the charge position. Now Baron tried to say no, it's only one
24:00.488 --> 24:04.206
function, that the other one. I think it was that the releasing part was just
24:04.268 --> 24:07.734
a modifier, but they said no
24:07.892 --> 24:11.274
had bothered function. And unfortunately what they
24:11.312 --> 24:14.974
had in the spec did not support, they didn't have sufficient
24:15.022 --> 24:17.180
structure to support both of those.
24:18.290 --> 24:21.814
And so from a literal infringement in this case perspective,
24:21.982 --> 24:25.782
they needed to find a device that performed both of those structures or
24:25.856 --> 24:29.022
some kind of equivalent function and they couldn't. So not
24:29.036 --> 24:32.574
only were the claims indefinite, but there was also no infringement because
24:32.732 --> 24:36.558
again, that means Term was determined to have two
24:36.644 --> 24:41.538
functions and those functions were not fully supported by the spec and
24:41.564 --> 24:44.214
then for tech licensing core versus video tech.
24:44.372 --> 24:48.058
So this one was interesting because they described a monitoring
24:48.154 --> 24:51.742
means in the spec which described a node to node communication
24:51.826 --> 24:56.646
system and so they did have expert testimony can also obviously
24:56.828 --> 24:59.754
support what one of skill in the art would have thought,
24:59.912 --> 25:04.014
how much structure, whatever term connoted. And so they did have an expert that
25:04.052 --> 25:07.914
testified that the controllers in the circuitry that were
25:07.952 --> 25:11.206
in the spec were very much the corresponding structure.
25:11.338 --> 25:13.450
There was no circuit diagram,
25:13.630 --> 25:17.398
but the necessity of having a circuit
25:17.434 --> 25:20.538
diagram is dependent on the level of one of skill in the art.
25:20.684 --> 25:24.502
So this one was found to be definite because there was sufficient structure.
25:24.646 --> 25:29.158
And so I think one of the more interesting quotes
25:29.194 --> 25:32.382
from this case was that the question is not whether one of skill in the
25:32.396 --> 25:36.498
art would be capable of implementing a structure to perform the
25:36.524 --> 25:39.898
function, but whether that person would understand the written description
25:39.934 --> 25:43.750
itself to disclose such a structure.
25:43.870 --> 25:47.166
So again, the whole crux of the patent system is to
25:47.228 --> 25:50.866
enable one of skill in the art to make and use the invention.
25:50.938 --> 25:54.582
And if you don't have enough structure in there for them
25:54.596 --> 25:57.994
to make and use the invention, then not to say that they couldn't
25:58.042 --> 26:01.978
figure it out and couldn't with some experimentation figure it out, but ultimately
26:02.074 --> 26:06.286
you're not holding up your end of the bargain and you're
26:06.298 --> 26:10.374
not providing the means for that person to make
26:10.412 --> 26:14.790
and use it. So this is some interesting advice.
26:15.470 --> 26:19.074
So tools for checking whether 112 F applies or
26:19.112 --> 26:23.322
how to bolster up your specification in
26:23.336 --> 26:27.198
the world that you decide to use meaningful function language is obviously
26:27.284 --> 26:30.762
make sure that the spec denotes structure, right? Make sure you
26:30.776 --> 26:35.000
have structure in your spec for all the functions that those terms have.
26:36.050 --> 26:39.826
Also look to dictionaries both basic dictionaries
26:39.898 --> 26:43.218
and field specific dictionaries to
26:43.244 --> 26:46.842
determine whether the noun that you're using the note structure as
26:46.856 --> 26:50.418
well, you may find that if you look up a
26:50.444 --> 26:53.898
reciprocating member that that's very clearly known to
26:53.924 --> 26:57.490
have some kind of structure associated with it. So it's
26:57.550 --> 27:00.586
better that that's the case and the alternative
27:00.718 --> 27:04.834
of it not having any structure and then again find evidence of that structure
27:05.002 --> 27:08.974
for the term in the prior art. So is there prior
27:09.022 --> 27:11.862
art references, literature, patents or whatever,
27:12.056 --> 27:15.658
that when people have used that term it can notice some kind of structure.
27:15.754 --> 27:19.218
And again, so all these things are true that even if
27:19.244 --> 27:22.880
you use meaningful function language you should be in a pretty good spot for it
27:23.210 --> 27:27.226
having the support it needs to be found definite. So turning
27:27.238 --> 27:30.186
a little bit to software means function. So there was a few different case and
27:30.188 --> 27:33.978
I kind of put these through these all in one slide just because the
27:34.004 --> 27:36.330
short of it is that a lot of them were found definite and I'm not
27:36.380 --> 27:40.270
surprised. So there was a Dyson versus target
27:40.330 --> 27:44.010
in 2022, this one was found definite. The meaningful function
27:44.060 --> 27:47.454
terms were code, application and system and
27:47.492 --> 27:51.414
VDP versus Visio. Again, Federal Circuit 2022,
27:51.572 --> 27:55.482
storage and processor were found to be definite. And for these it
27:55.496 --> 27:59.238
basically turned on the fact that in
27:59.264 --> 28:03.306
some of the testimony that one of Skilling art would understand
28:03.488 --> 28:06.882
that these terms had some sort of structure, especially in
28:06.896 --> 28:10.806
the system, one was targeted. It was something around like you're in a
28:10.868 --> 28:14.242
target, you're walking around, you're over by the vacuums.
28:14.266 --> 28:18.102
You all of a sudden get a vacuum specific advertisement or coupon or whatever for
28:18.116 --> 28:21.994
the vacuum. It allowed for different targeted advertising essentially
28:22.042 --> 28:25.846
within a combined structure. So in this case, the system was essentially
28:25.918 --> 28:28.866
kind of a system within a building,
28:29.048 --> 28:32.322
the building having kind of different wireless detectors and
28:32.516 --> 28:36.010
things like that. So it's very clear that that system had structure.
28:36.130 --> 28:39.658
And then one of Skill in the art from a code, application, storage and processor
28:39.694 --> 28:43.158
perspective understands what those things are. I don't know to
28:43.184 --> 28:46.378
what degree they describe the processor.
28:46.414 --> 28:50.770
For example, if it was just clear that it was an off the shelf processor
28:50.830 --> 28:54.934
or if it was some kind of configured processor, maybe they had algorithms
28:54.982 --> 28:59.190
in there to support that processor nonsword.
29:00.050 --> 29:03.610
But suffice it to say it was sound definite. When you look at Blackboard
29:03.670 --> 29:06.318
versus Desire to Learn in 2009,
29:06.464 --> 29:09.694
they use an Access Control Manager
29:09.742 --> 29:13.258
language and again, this one was found indefinite.
29:13.294 --> 29:16.626
It's because they could not find any structure that a person's skill in
29:16.628 --> 29:19.818
the art would have understood to have structure. And so one of the things that
29:19.844 --> 29:22.902
they basically said, I think Kristin would agree with
29:22.916 --> 29:26.422
this is that you have to avoid using thin disclosures
29:26.506 --> 29:29.838
for even those elements known in the art. And I think
29:29.864 --> 29:33.574
that especially goes towards these top ones, the Dythem versus
29:33.622 --> 29:38.130
Target and Vdpp versus Visio is that obviously code,
29:38.240 --> 29:42.954
application, storage, processor are pretty well known technology
29:43.052 --> 29:47.014
in the art. That does not mean that you are exempt
29:47.062 --> 29:50.682
from describing them. To enable somebody in the
29:50.696 --> 29:54.498
art, you need to still provide. Is it like Kristen said,
29:54.524 --> 29:58.474
is it some kind of generic computer? Is it some kind of more specifically
29:58.522 --> 30:04.702
programmed processor? And in the case that it is specially
30:04.786 --> 30:08.674
programmed, what are the algorithms that allow it to be specially programmed? If it's generic,
30:08.782 --> 30:12.306
what are the algorithms that is performing that allow it to act as an Access
30:12.368 --> 30:14.300
Control Manager or something like that?
30:15.290 --> 30:18.490
Right? Yeah. And we don't get dinged as often on storage,
30:18.550 --> 30:21.838
system, code, processor, that sort of thing, because we put boilerplate
30:21.874 --> 30:25.758
in for that for exactly that reason. But you could make your
30:25.784 --> 30:29.934
boilerplate for an Access Control Manager just by going through one
30:29.972 --> 30:33.774
iteration of how you're controlling access in
30:33.812 --> 30:37.474
one paragraph. And you could probably pull in each component that's
30:37.522 --> 30:40.340
involved, whether it's software or hardware or both.
30:42.590 --> 30:44.720
You have to remember to do it right.
30:45.830 --> 30:50.358
We often we get writing a. Black diagram because we
30:50.384 --> 30:53.946
need a name to call something. And so we have a
30:54.008 --> 30:57.954
manager here and an engine here and an application here and we
30:57.992 --> 31:01.534
forget sometimes to put the details in that and then we forget
31:01.582 --> 31:05.300
to tie it together too. So there's kind of two components there.
31:05.990 --> 31:09.560
Yeah, and I think in this case, if I recall correctly, but I might be
31:11.090 --> 31:15.654
mixing it up with another one. But this is one where they had some
31:15.692 --> 31:19.710
access control support description effect,
31:19.880 --> 31:23.154
I think around passcodes and things like that. But then
31:23.312 --> 31:27.306
for the specific function or one of the functions that the Access
31:27.368 --> 31:30.702
Control manager controlled, there was
31:30.716 --> 31:34.662
no tying in the spec of that passcode function to that other function
31:34.856 --> 31:38.790
or something. Again, it was one of those weird things where they had said,
31:38.840 --> 31:43.054
well, it's our understanding that this is all the functions of the Access Control manager.
31:43.162 --> 31:45.620
And while, yes, the passcode is one,
31:46.910 --> 31:50.278
how that works is one structural component
31:50.314 --> 31:53.454
for these functions, it doesn't suffice for these other
31:53.492 --> 31:56.586
functions. So again, I think that's where it
31:56.588 --> 31:59.890
gets tricky too. I think that's a big interpretation
31:59.950 --> 32:03.078
part is what are all the functions that they are going to believe,
32:03.164 --> 32:08.190
like the courts or whatever that term
32:09.050 --> 32:12.738
provides, all those functions that it does? And are those the same functions that
32:12.764 --> 32:15.910
you believe that it's doing? Because if those aren't in alignment,
32:15.970 --> 32:19.858
then you're going to have a definite disclosure
32:19.954 --> 32:24.186
issue. Yeah, that's exactly in line with the
32:24.368 --> 32:28.122
advice that I got on means plus function
32:28.256 --> 32:32.060
language just in general in claims is to really
32:32.570 --> 32:36.658
mirror that language almost exactly in the specification.
32:36.814 --> 32:41.674
So if you have like means for comparing
32:41.842 --> 32:45.610
this input to this output, then in the spec you would say means for comparing
32:45.670 --> 32:49.494
this input to this output can include, you know what I mean, and then you
32:49.592 --> 32:53.120
list it out really explicitly with all your structure and stuff like that.
32:53.750 --> 32:57.178
It sounds like kind of similar to what Christmas saying on the boilerplate
32:57.214 --> 33:00.706
language and that some of these cases that Ashley,
33:00.718 --> 33:04.242
you've been going over, part of it is not having the support, but part
33:04.256 --> 33:09.226
of it is not being clear what the means scope
33:09.358 --> 33:13.160
is in a way. Yeah, I would agree.
33:15.710 --> 33:19.470
When I draft, I still really like to do
33:19.520 --> 33:22.902
claims early on and then I plop those into the spec.
33:22.976 --> 33:26.158
That's not to say that I'm not going to add 16
33:26.194 --> 33:30.282
paragraphs up front to kind of give breath and different
33:30.356 --> 33:33.414
versions of things and kind of this overarching view of everything.
33:33.572 --> 33:37.674
But then when you do that, you at least have that what everybody
33:37.712 --> 33:41.706
has agreed to as the most important thing, at least currently.
33:41.888 --> 33:45.620
And then you can build all the alternatives but kind of within
33:46.490 --> 33:49.374
making sure you have that claim language support,
33:49.532 --> 33:53.000
then also can tie those alternatives directly to
33:53.330 --> 33:58.738
the base language. And so in
33:58.884 --> 34:02.734
my experience, it's such a pain when you do things in reverse because
34:02.772 --> 34:06.878
then if you have a spec and you're doing claims,
34:07.034 --> 34:10.538
then you have to make sure you fully import that language
34:10.574 --> 34:13.534
back in there. And it just never ends up, I feel like being as good
34:13.572 --> 34:16.790
as if the claims, at least one set was upfront
34:16.850 --> 34:19.200
and then the spec drafted around those.
34:20.130 --> 34:23.774
So Ashley, sometimes what I end up doing is adding
34:23.822 --> 34:27.290
the claims we generate after to the specification,
34:27.350 --> 34:31.190
but I try to add it in maybe its own examples
34:31.250 --> 34:34.606
so I don't conflate what I had already
34:34.668 --> 34:38.098
done. There are obvious things where you only change
34:38.124 --> 34:41.758
a few words and you just go back and you change the vocabulary. But if
34:41.784 --> 34:44.530
we're adding like ten new claims,
34:44.910 --> 34:48.518
I will often just say, okay, we're going to put this in the flow
34:48.554 --> 34:52.214
chart and it's going to be another two page description.
34:52.262 --> 34:55.862
Just because you never know, right, and maybe you wrote
34:55.886 --> 35:00.178
that two weeks ago. Right. So you really don't recall what
35:00.204 --> 35:02.950
you said? No, that's a good point.
35:03.000 --> 35:06.566
Yeah. Most clients, I would bet, would prefer
35:06.698 --> 35:09.850
an extra few hours spent on an extra
35:09.900 --> 35:13.166
few pages for really making sure claims
35:13.178 --> 35:16.874
were supported versus those same hours spent
35:16.982 --> 35:20.422
trying to smoosh it somewhere into the spec, but then coming out
35:20.436 --> 35:22.730
of it being like, well, I think they're supportive.
35:22.910 --> 35:25.894
Right. Well,
35:25.932 --> 35:29.338
and by that same token, if you have anybody reviewing work like you and I,
35:29.364 --> 35:32.782
once in a while we'll do that and each of us will
35:32.796 --> 35:37.042
have to go back and massage the language, add some content,
35:37.236 --> 35:40.378
or at least outwardly say, like I think I told you this week,
35:40.464 --> 35:43.438
hey, I haven't added this to the spec yet, see what you think of the
35:43.464 --> 35:47.242
claims. So at least we
35:47.316 --> 35:51.382
try to not duplicate the work, but right.
35:51.516 --> 35:54.938
No, it's true. Yeah, it's a fine balance,
35:54.974 --> 35:58.618
that's for sure. So then there's a few more cases here.
35:58.644 --> 36:01.918
There was Media Rights capital versus Capital One Financial Corp. And this
36:01.944 --> 36:05.690
was Media Rights had invented software for preventing
36:05.750 --> 36:09.478
the unauthorized recording of electronic media. And so
36:09.504 --> 36:12.670
they had used terms like compliance mechanism and a
36:12.720 --> 36:16.402
custom media device. And so
36:16.596 --> 36:20.474
what the core had basically said was that the spec does describe how the compliance
36:20.642 --> 36:23.998
mechanism is connected to and interacts with
36:24.024 --> 36:28.226
the other components of the system, what processes the compliance
36:28.298 --> 36:31.658
mechanism performs, and what structural sub components
36:31.694 --> 36:35.326
might comprise the compliance mechanism. But they said ultimately the
36:35.328 --> 36:39.134
mechanism was tied to a general computer and there was no corresponding
36:39.182 --> 36:42.334
algorithm for all the four functions. And so they still
36:42.372 --> 36:45.840
held it indefinite. This one surprised me a little bit just because,
36:46.830 --> 36:50.714
as it says there verbatim from the synopsis
36:50.762 --> 36:54.178
was that it said how it was connected with other
36:54.204 --> 36:58.034
components, how it interacted with other components, what processes
36:58.082 --> 37:01.282
it performed with the structural components components might be,
37:01.416 --> 37:05.498
but there was no algorithms for each of the four functions.
37:05.654 --> 37:09.214
And so that just goes to show even when you kind of
37:09.312 --> 37:13.222
place it into the ecosystem, of the application of this is how it
37:13.236 --> 37:17.206
kind of sits in the bigger picture of everything. If you still
37:17.388 --> 37:21.446
don't vet out those four functions or however many functions it performs,
37:21.578 --> 37:24.770
clearly vet them out, you're still going to be in trouble,
37:24.830 --> 37:28.166
probably. And this is Tech SEC versus
37:28.238 --> 37:31.522
International Business Machines or IBM. So Tech SEC had
37:31.536 --> 37:34.954
invented computer systems for securing computer data.
37:35.112 --> 37:38.410
And so they used words like system memory means
37:38.460 --> 37:41.854
and digital logic means. And so, again,
37:41.892 --> 37:45.254
the court held that the system memory is a specific structure,
37:45.422 --> 37:48.770
digital logic means specifically disclosed in the specification
37:48.890 --> 37:52.442
to comprise structural elements, including system memory and specific modules
37:52.466 --> 37:53.650
and subsystems.
37:56.070 --> 37:59.818
I didn't know this. Kristen probably knows this. But also,
37:59.964 --> 38:03.542
going back to what I said earlier around, if there are dictionaries,
38:03.626 --> 38:07.166
especially field specific dictionaries,
38:07.298 --> 38:10.810
look in there and see what structure
38:11.490 --> 38:14.830
that dictionary puts together with whatever
38:14.880 --> 38:18.142
term you're looking up. So in this world, because the first time I read this,
38:18.156 --> 38:21.602
I was like, structural elements, system memory, specific modules.
38:21.626 --> 38:25.294
I was like, how was that definite? That seems just BS to me.
38:25.332 --> 38:28.930
Right? But when you look up, I guess, digital logic,
38:29.250 --> 38:32.902
a skilled artisan would know that to mean digital circus that
38:32.916 --> 38:39.058
perform Boolean algebra, like it's gates or
38:39.084 --> 38:42.178
gates, basically. Fair enough.
38:42.264 --> 38:45.694
All right. It's weird. It's weird to think of that as
38:45.732 --> 38:49.162
actual hardware, right? Because it's all on our computers. We think it's running in
38:49.176 --> 38:52.910
software, and some of it is, right. You do have software enabled processing.
38:53.030 --> 38:56.594
It's not all just hardware.
38:56.702 --> 38:59.954
You can make these algorithms that function on hardware,
39:00.002 --> 39:03.118
but they function as a soft processor. Right.
39:03.264 --> 39:04.920
So it's not fully clear.
39:06.810 --> 39:10.620
And that's why we need a definite structure. Yeah.
39:11.670 --> 39:15.926
All right. And then the last case I had was NOAA systems versus intuit.
39:16.058 --> 39:19.454
The NOAA system basically described
39:19.502 --> 39:23.062
an automated financial accounting system. The system would
39:23.076 --> 39:26.806
allow businesses or individuals to connect
39:26.868 --> 39:30.818
to the computers of companies with which that entity conducts
39:30.854 --> 39:34.898
business so that information regarding financial transactions could be transmitted
39:34.934 --> 39:38.822
between them. So I kind of liken this to like you go into Wise
39:38.966 --> 39:42.850
or even like your bank has these modules where you can put in information
39:42.960 --> 39:46.680
and then you can connect between different banks or things like that.
39:47.370 --> 39:51.178
So they had described access means and communication means
39:51.264 --> 39:55.298
in their claims, but there was no algorithm disclosed
39:55.334 --> 39:59.062
for one of the two functions for these. And so they
39:59.076 --> 40:02.594
basically said there are really two functions resided, providing access to the file,
40:02.702 --> 40:05.978
and then once access is provided, enabling the performance
40:06.074 --> 40:09.562
of delineated operations. And what
40:09.576 --> 40:12.900
they were saying is an algorithm had to address both of those,
40:13.830 --> 40:17.050
but unfortunately, that was not the case. They didn't have the support for it.
40:17.100 --> 40:20.774
And so the court basically said, to avoid purely functional
40:20.822 --> 40:23.966
claiming, in cases involving computer implemented inventions,
40:24.098 --> 40:27.694
we have consistently required that the structure disclosed in the spec being more
40:27.732 --> 40:30.538
than simply a general purpose computer. And then,
40:30.564 --> 40:34.562
consequently, a means of function claim element for which the only disclosed structure
40:34.586 --> 40:38.150
is a general purpose computer is invalid if the specification
40:38.210 --> 40:41.806
fails to disclose an algorithm for performing that function.
40:41.988 --> 40:45.720
So again, just really hit home run like
40:46.050 --> 40:52.838
dead on its face, like super clear of what they want anyway.
40:52.924 --> 40:57.962
So the kind of some of the tips that I kind of thought about I
40:57.976 --> 41:01.994
don't do this, I don't do mental function very often because in
41:02.032 --> 41:06.354
general I was kind of brought up in the world that it's
41:06.462 --> 41:09.770
just not something you do. I do recognize the value in having,
41:09.820 --> 41:13.838
like I said, maybe a claim set that has some meaningful function language but
41:13.984 --> 41:18.234
I would sprinkle in meaningful function, make sure it's not the only claim
41:18.282 --> 41:21.854
type but you can maybe sprinkle it in a little bit and assume that
41:21.892 --> 41:25.622
terms will be construed as MPs and dropped accordingly. So now in
41:25.636 --> 41:29.454
this world where if you use the term
41:29.502 --> 41:33.038
means 112 bath certainly applies. If you don't use
41:33.064 --> 41:35.500
means, there's a strong presumption that it doesn't apply.
41:36.670 --> 41:40.334
That's no longer the truth, right? That's no longer the case. If you
41:40.432 --> 41:44.562
use non means terms there's
41:44.586 --> 41:47.798
still a likelihood that it can be construed as a means plus function
41:47.884 --> 41:51.254
term. You kind of have to take this view that anytime you're using
41:51.292 --> 41:55.218
anything that's remotely close to an ons word that assume
41:55.254 --> 41:59.222
that it's going to be viewed as means of function either by the examiner or
41:59.236 --> 42:02.750
by a later court body to make sure that you draft accordingly.
42:03.370 --> 42:06.158
And then even structure is known in the art to be given structure in the
42:06.184 --> 42:09.760
description. I think that one kind of surprised me through all of this
42:10.750 --> 42:13.974
research and stuff and then for software include algorithms
42:14.022 --> 42:17.558
for all the functions for that means function term. And so like Kristen said,
42:17.584 --> 42:21.170
even if it's here's the functions, I'm going to do some lame
42:22.150 --> 42:25.538
flowchart for each of them. At least there is something there that kind of
42:25.564 --> 42:29.202
shows what inputs are being received, was being done with those inputs
42:29.226 --> 42:33.090
and what the output is so that you have that very literal
42:33.210 --> 42:37.418
description. And one more thing to add there, I always find
42:37.444 --> 42:40.994
it very interesting that is
42:41.032 --> 42:44.920
kind of the requirement for an application
42:45.430 --> 42:48.998
to get through and to be allowed and then as soon
42:49.024 --> 42:52.730
as you file a continuation, of course your flowchart is
42:52.840 --> 42:56.342
nonexistent because you can't add new matter but you happen to pull it
42:56.356 --> 42:59.942
from the spec language. But they're fine with that in a
42:59.956 --> 43:02.450
continuation or two or three or four or ten,
43:02.500 --> 43:05.798
right? So it's kind of interesting as you
43:05.824 --> 43:10.298
prosecute further in a family that just gets a little lighter for
43:10.324 --> 43:13.998
what they require adding flowcharts
43:14.034 --> 43:17.774
later, do you mean you can't? So if
43:17.812 --> 43:21.014
you were to write a set of claims that doesn't have a flow chart because
43:21.052 --> 43:24.926
now let's say you write that has
43:24.988 --> 43:28.538
five different end steps than your first flow chart and
43:28.564 --> 43:32.018
first claim you have support for it
43:32.044 --> 43:35.930
likely because you described it. But like
43:35.980 --> 43:39.702
in Europe, if you didn't describe it in one embodiment and you're
43:39.726 --> 43:43.490
pulling that from five areas of the spec, it won't fly.
43:44.050 --> 43:47.622
So in the US. They really kind of say it's
43:47.646 --> 43:51.158
fast and loose, it's fine, it's in there you have the
43:51.184 --> 43:55.170
language even though you didn't tie it to the same permutation.
43:55.350 --> 43:58.240
Right. So it's interesting.
43:58.810 --> 44:02.634
It's also why I don't often do a lot of divisionals
44:02.682 --> 44:05.994
in Europe unless it's a specifically different claim
44:06.042 --> 44:09.858
set than what I've already gotten allowed. Right. Well, this gets so increasingly
44:09.894 --> 44:12.520
expensive too. Yes,
44:13.510 --> 44:15.820
it's tricky. I think that's where you also have to,
44:17.410 --> 44:20.440
if the budget and time allows and all that good stuff,
44:21.370 --> 44:26.294
working with the inventor of the companies to understand this
44:26.332 --> 44:30.474
is the current iteration. But what do future iterations
44:30.522 --> 44:33.722
and if there's one, you know, like we're for sure going to
44:33.736 --> 44:36.638
do this in the next two years. The other way of doing it, we're only
44:36.664 --> 44:40.082
doing it this way now because it was the cheapest, fastest way to market but
44:40.096 --> 44:43.574
we're going to do it the other way later than making sure you have the
44:43.612 --> 44:47.606
flow charts for that later implementation or at least
44:47.668 --> 44:51.002
really good support to avoid this kind
44:51.016 --> 44:54.158
of stuff. Yeah. The other thing that I was going to add
44:54.184 --> 44:57.762
is like I find myself using functional language
44:57.906 --> 45:01.998
I don't know about often. But sometimes. Especially if a client
45:02.034 --> 45:05.474
has described a few different alternatives to do
45:05.512 --> 45:09.138
something and they really want the breadth in the independent
45:09.174 --> 45:12.974
claim I'll use the functional language to kind of cover
45:13.132 --> 45:17.490
three or four different embodiments but then a lot of times I'll use dependent claims
45:17.610 --> 45:21.038
to clarify that we are in this
45:21.064 --> 45:24.402
thing is then it's the functional language
45:24.426 --> 45:28.058
and use the structural language and the dependent claims. And I guess
45:28.204 --> 45:32.418
my thought or hope is that it's
45:32.454 --> 45:36.698
even further clarifying and supporting the
45:36.724 --> 45:40.550
definiteness of the functional language in the independent claim.
45:41.170 --> 45:44.622
And remember, it's not bad language, it's just not bad language.
45:44.646 --> 45:47.162
You just have to take care when using it.
45:47.296 --> 45:50.934
And if you get to a point where it's just easier
45:50.982 --> 45:54.566
to write out those dependent claims and then you can only file 20,
45:54.628 --> 45:57.710
just pull them out and put them in the stock only. There's nothing
45:57.760 --> 46:00.998
wrong with that. Yeah, I really
46:01.024 --> 46:04.322
like that. I think we as partitions kind of said
46:04.396 --> 46:07.446
forget the value independent claims
46:07.458 --> 46:10.710
and I mean, obviously from the claim set perspective,
46:10.830 --> 46:14.870
the value but the giving the breast value
46:14.920 --> 46:17.598
of independent claims. I think it's easy to kind of be focused on the dependent
46:17.634 --> 46:22.154
claims from alternative embodiments and almost
46:22.192 --> 46:25.346
an explanation of what different things are, what they mean or
46:25.408 --> 46:28.646
giving structure. But I think kind of forgetting the two
46:28.768 --> 46:32.858
that they also because there's a dependent claim that
46:32.884 --> 46:36.690
is narrower than the independent claim, then by virtue of that dependency,
46:36.750 --> 46:40.360
you have this great breath in the independent claim. So if you can import
46:40.750 --> 46:44.838
that same relationship into the stack and you're also kind of similarly
46:44.874 --> 46:48.642
giving that same breath and relationship and then like that disclosure.
46:48.666 --> 46:52.538
And that definiteness. All right, well, that's all I had for
46:52.564 --> 46:56.150
you all today. I'm glad that nobody ever seemed
46:56.770 --> 47:00.760
participatory and intuitive. Nobody fell asleep, so that's a win.
47:02.530 --> 47:06.278
Now, using this language and software makes me sweat. I do
47:06.304 --> 47:09.710
it because I've worked with many older practitioners, like old
47:09.760 --> 47:13.470
school practitioners who like it and want that coverage,
47:13.590 --> 47:17.246
but every time I do it, I have to double check everything
47:17.308 --> 47:20.020
I've done. When it comes to a claim like that,
47:22.150 --> 47:25.862
yeah, I haven't done much. I think the one that comes to mind was
47:25.996 --> 47:29.994
like language on a sensor module. But I think that has because the sensor
47:30.042 --> 47:33.590
is kind of the modifying term that I think it
47:33.640 --> 47:36.782
connotes a decent amount of structure that obviously they're sensors. I mean, you still have
47:36.796 --> 47:40.634
to kind of say what that sensor module is doing and what things
47:40.732 --> 47:44.450
perform that function. In that case, you're probably tying it to some specific sensor.
47:50.090 --> 47:54.090
Just thinking aloud here, this whole discussion
47:54.770 --> 47:59.420
seems to be similar or
47:59.990 --> 48:03.738
analogous in a way to the question of product
48:03.824 --> 48:07.590
by process versus product composition.
48:10.590 --> 48:15.060
Do you see that as an analogy? Also product,
48:15.750 --> 48:19.654
you make a product here's a product which is made this
48:19.692 --> 48:24.814
way. I mean, and really it's a
48:24.852 --> 48:29.122
method claim and you
48:29.136 --> 48:33.430
know, it's much fuzzier than if you just recite the composition.
48:36.070 --> 48:39.820
I haven't kind of looked into case law around product by process.
48:41.230 --> 48:45.374
If a product
48:45.412 --> 48:49.194
by process claim if somebody could somebody be found infringing
48:49.242 --> 48:52.802
if they did a similar process but didn't end up with the
48:52.816 --> 48:56.138
product in the chemical arts, I imagine that could be a place
48:56.164 --> 49:00.842
where that happens. Probably not in a lot of other arts, but obviously
49:00.916 --> 49:03.830
it's assuming you're performing all the process steps.
49:04.150 --> 49:08.198
My understanding of product by process claims is that the
49:08.224 --> 49:12.110
process limitations are more or less irrelevant
49:12.910 --> 49:16.514
and that if someone makes the same product
49:16.612 --> 49:20.210
by a different process, or if that's in the prior art,
49:20.320 --> 49:22.790
let's say, then the claim wouldn't be allowable.
49:23.410 --> 49:27.014
So I almost never really never use
49:27.052 --> 49:30.558
those for that reason. But again, I'm not that familiar
49:30.594 --> 49:33.220
with all the latest case law on that either.
49:33.670 --> 49:37.206
Yeah, okay. Sounds like an opening. David for David Cohen
49:37.278 --> 49:40.790
for another presentation.
49:43.610 --> 49:45.080
Let me walk that back.
49:47.390 --> 49:50.658
Hey. Yeah, I like it.
49:50.684 --> 49:54.440
I would love to hear something on that because I hardly ever run across it.
49:55.370 --> 49:58.954
Well, thank you everybody, I appreciate it. Was a good dynamic discussion,
49:59.002 --> 50:01.950
so I love it. Thank you, Ashley.
50:02.690 --> 50:06.534
Thanks Ashley. It's a great topic. Yeah, thanks everybody. All right,
50:06.572 --> 50:10.914
that's all for today, folks. Thanks for listening. And remember to check us out@aurorapatins.com
50:10.952 --> 50:14.070
for more great podcasts, blogs, and videos covering all things
50:14.120 --> 50:17.382
patent strategy. And if you're an agent or attorney and would like to be part
50:17.396 --> 50:20.674
of the discussion, or an inventor with a topic you'd like to hear you're discussed,
50:20.782 --> 50:24.582
email us at podcast@aurorapatant.com. Do remember that
50:24.596 --> 50:28.078
this podcast does not constitute legal advice. And until next time, keep calm
50:28.114 --> 50:28.800
and patent on.