Appeals Court May Have Finally Reversed An Error That Enabled Bogus Software Patent Claims
from the this-is-very-very-big dept
A few years ago, law professor Mark Lemley wrote a paper arguing that one key way to deal with the problem of software patents was to get the courts to go back to actually applying existing law that effectively forbade the use of "functional claiming." In short, "functional claiming" means using a patent to claim ownership over an entire function -- i.e., traveling through time, buying something with one click -- rather than a specific invention on how to do the function. Existing patent law (namely 35 USC 112(f)) says that patents can have functional claiming, but with very specific limitations:An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.This is legal speak, but in English, it's supposed to mean that you can put a functional claim in your patent, but it can only cover what's described in the actual patent specification. In short, you can claim the function, but you then need to lay out the explicit cases where it applies, by saying what it's a "means" for. So, "a means for traveling through time" would be a functional claim, but it would only be allowed if you then explained the explicit case in which that applied, such as "using this particular machine built out of wood and string and in order to prevent catastrophe" or whatever.
And here's where patent lawyers got sneaky, and the courts let them get away with it. They basically started putting language into patents to avoid invoking 112(f). Specifically, the courts became so focused on the magic word of "means" that rather than saying "a means for x" patent lawyers would just write "a computer programmed to" -- but would then make the same functional claim: i.e., "a computer programmed to let people travel through time." Because that patent didn't use the term "means" the courts argued that it wasn't functional claiming, and thus it didn't need the more limited specification. This is -- for fairly obvious reasons -- a big problem. Especially in the software patent world.
Thus, by using sneaky language, software patents (especially) were able to do very broad functional claiming, which is where many of the patent disputes come in today. And the courts completely let them get away with this.
Well, until yesterday (mostly).
In what has the potential to be an important ruling, the appeals court for the Federal Circuit (CAFC) (perhaps sick of always being wrong on patent cases) went the other way and rejected such bogus functional claiming in the Williamson v. Citrix case concerning some old patents from At Home -- but only takes one step towards fixing the problem where it could have gone much further.
Here, CAFC explicitly rejected its own earlier precedents, starting with the Lighting World case, in which it allowed that the absence of the word "means" was enough to get around the limitations of 112(f). The court no longer accepts that as a "strong presumption" that 112(f) is not implicated:
Our consideration of this case has led us to conclude that such a heightened burden is unjustified and that we should abandon characterizing as “strong” the presumption that a limitation lacking the word “means” is not subject to § 112, para. 6. That characterization is unwarranted, is uncertain in meaning and application, and has the inappropriate practical effect of placing a thumb on what should otherwise be a balanced analytical scale. It has shifted the balance struck by Congress in passing § 112, para. 6 and has resulted in a proliferation of functional claiming untethered to § 112, para. 6 and free of the strictures set forth in the statute. Henceforth, we will apply the presumption as we have done prior to Lighting World, without requiring any heightened evidentiary showing and expressly overrule the characterization of that presumption as “strong.” We also overrule the strict requirement of “a showing that the limitation essentially is devoid of anything that can be construed as structure.”Unfortunately, the court doesn't go as far as it could have gone. It still grants a presumption that the lack of the word "means" suggests that the limitations of 112(f) don't apply, and thus you wouldn't have to specify the "means." All it does is lower the standard to "rebut" that argument, making it easier for someone to argue, instead, that even though you didn't use "means" you really were trying to do the same thing in order to get a functional claim (while avoiding the limitations).
That's useful, but still will allow many functional claims that don't use "means" to pretend they're not functional claims. As noted in a partial dissent by Judge Reyna, this ruling still leaves in a big problem in the way "means" is interpreted. That is, while this ruling rejects this attempt to get around the avoidance of the use of "means" to avoid the limitations in 112(f), it still makes it pretty easy for others to do so, by still focusing on this idea that "means" is a magic word that suddenly brings 112(f) into play. Instead, as Citrix argued in the case (and as others have suggested), it would be much better to not look for magic words, but rather to just recognize when someone is making a functional claim and rejecting it if there is not a truly limited specification to go with it.
Still, it's nice to see CAFC rejecting its own bad standards that have helped make broad patents more powerful. This is a step in the right direction, and one that hopefully will go further in future rulings.
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Filed Under: cafc, functional claiming, means for, patents
Companies: citrix
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Not much
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Re:
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Simplest terms
Company B invents: 10+10=20
Company C invents: 4*5=20
Company D invents: 40/2=20
Company E invents: 21-1=20
Company F invents: Sqrt(400)=20
Not this way
Company A invents: “Method of creating output of 20”
All use different values. All use different mathematical operators. All are completely different yet produce the same output. All of which are covered by a unique patent specifying their formula to create 20. This is how it should be.
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As far as I'm concerned though the best safeguard is the algorithm disclosure requirement for general-purpose computer-implemented means plus function terms.
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More shades of grey than black and white
Functional claiming isn’t always a bad thing. If I need some way to join element A to element B, and my description gives the example of using nails, it isn’t unreasonable for the patent to cover using screws, glue, etc. as long as there is nothing special about using nails in this context.
Functional claiming isn’t necessarily evil in patents for computer inventions, either (unless you take the position that all patents for computer inventions are evil, but that’s a debate for another time.) For example, if I have a really neat new way of controlling a quad copter, and one step in the algorithm is to perform an interpolation on some data from a pitch sensor, I might have means/unit/function for interpolating pitch data as an element in my claim. It really doesn’t matter what algorithm or hardware I use, I just need to interpolate some data points, and the neat bit of the invention is what I do with the result of the interpolation. In that case, in my mind at least, it’s reasonable to claim the interpolator in a functional way, because the details aren’t important for the invention.
That’s not to say that there are not problems with some (lots of) patents for computer inventions, but as far as functional claiming goes, it isn’t black and white – there’s a pretty big grey area.
Another issue, which is related to functional claiming, is finding one way to solve a problem and then claiming everything that solves the problem, rather than the solution that you’ve found. This is a problem, and functional claiming can contribute to that sort of claim, but it’s a separate issue. The “traveling through time” and “buying something with one click” examples are more related to this problem than functional claiming.
The upshot of this decision will be patent attorneys trying to game the system (or meeting their obligation to do the best they can for their clients, depending on your point of view). In order to make applications as robust as possible patent attorneys will now feel obligated to include laundry lists of alternative means in the description “the fastening means may be a nail, a screw, glue, string, staples…” This already happens a lot, but it will probably become more common and more ridiculous. That is the sort of thing that makes patents indecipherable to non-lawyers.
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Re: More shades of grey than black and white
When nails is all you have, functional claiming can either:-
Lead to leeching off of the profit of those who latter invent screws or glue.
or
Discourage people looking for better ways of joining things because of the risks of being sued if they find a better way of joining things.
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Re: Re: More shades of grey than black and white
If all you have are nails and the invention is how to join things, "means for fastening" is claiming any solution to the problem. As I said before, that's a separate but related issue.
I had in mind an invention that is more sophisticated than a nail but required joining two things. For example,a machine that works more efficiently that includes various components, two of which need to be joined.
The invention doesn't depend on how they are joined, just needs them to be joined. The clever bit is unrelated to how they are joined.
If nails, screws and glue are all well known, is it necessary to explicitly list each of them in the application? They are all well known functional equivalents.
In that example, someone can come up with a new way of joining things (e.g. welding) and the hypothetical patent doesn't affect them at all unless they join things and then do the other clever bit that is the idea behind the invention (e.g. make the new, more efficient, machine). So it doesn't discourage or prevent people coming up with new ways to join things, just using the new way in the machine in the patent.
So if I come up with a time machine that works and provide detailed schematics, but only mention using nails to build it, should I be able to stop someone making exactly the same machine using screws instead of nails?
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Re: Re: Re: More shades of grey than black and white
Joining things, pivoting one thing on another, sliding one part on another are all fundamental to building machines, and the details of how they are achieved are not part of how the machine functions. How those problems are solved may be patented, and the use of a particular solution is a matter of costs, durability and efficiency.
Functional claiming involves claiming the patent on ideas, not the implementation. To put it in mechanical terms, a mechanism for producing stitches in a sewing machine is patentable, but the idea of a sewing machine is not, as someone may come up with a very different way of producing stitches.
A sewing machine patent should be based of the general shape of parts, and the mechanical movements and their relationships involved in producing a stitch, which is independent of how the parts are made, and specific solutions to common mechanical problems like bearings, or materials of construction.
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Weasely way to have submarine patents / functional claims
Traveling back in time is the specific implementation of how I do the functional claim of altering the past to my advantage.
My patent on time travel, which has applications such as altering the past to ones own advantage, has been submarined all these years beneath the waves of bureaucracy. It has surfaced now that the evil defendant has come up with an implementation that infringes my invention of time travel, which has applications such as altering the past.
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CAFC was just trying to preempt Supreme Court
By ruling for Citrix, but on very narrow grounds, they manage to foreclose the inevitable appeal while still mostly preserving overly broad functionally claimed patents.
Huge swaths of software and business methods patents would have instantly become invalid [they never should have been granted to begin with] in that case.
The CAFC didn't have a change of heart, they are just displaying a bit of cynical pragmatism.
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requiem
This sentence appears to be the most common "addendum" to anything related to justice in America, since 9/11.
If I had to pick a line of text to put on the tombstone of America, that would be among my top choices.
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However, if the sewing machine needs a rotational drive (e.g. an electric motor, hand crank, foot pedal) I don't see a problem with claiming that element functionally. The idea is that the patent would still cover something with a different drive, as long as it made use of the inventive stitching elements. It's necessary to prevent a trivial design around.
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