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I made the mistake a few years ago of loaning my copy of “Invention Analysis and Claiming” by Ron Slusky to a colleague — who promptly moved away . . . with my book.  So, with the second edition of the book being released recently, I thought it would be a good time to re-stock my bookshelf.

The second edition includes the timely addition of a chapter on functional claiming.  The chapter starts out with a quote from Judge Rich that:  “[f]ew words in patent law have acquired more diverse meanings than the word “functional.”  I was curious about the source of that quote and thought  it might be of interest to reproduce here in greater context:

9.  One of the primary problems we have in coming to grips with the instant rejection is in what sense the word “functional” is being used. Few words in patent law have acquired more diverse meanings than the word “functional.” Ellis, for example, in his “Patent Claims” (1949) at §§ 255-276 discusses at least five. It is for this reason that bandying about and lifting out of context statements referring to “functional” expressions, has, as Ellis euphemistically puts it, “caused confusion.” In addition to Ellis, supra, some of the more recent texts which outline the confusion that exists in the case law with regard to what are “functional” statements, and how they should be treated, are:

Glascock and Stringham, Patent Law, pp. 315-324 (1943) Hoar, Patent Tactics and Law, pp. 116-118 (3rd ed., 1950) Stringham, Patent Claim Drafting, pp. 215-243 (1952) Deller’s Walker on Patents, particularly at § 168 (as supplemented to 1962).

10.  This statement, if correct, would lead appellant into somewhat of an impasse — statements indicating what an entity is “supposed to do” as well as statements indicating what that entity “does” may both be “functional.”

In re Fuetterer, 319 F.2d 259, 266 (C.C.P.A. 1963)(footnotes 9 and 10).

The Federal Circuit recently issued some decisions on merit cases as “orders.”  For example, see Optimum Power Solutions, LLC v. Hewlett-Packard, Inc., App. No. 2013-1277 (Fed. Cir. Dec. 12, 2013).  If I recall correctly, the court issued similar orders for a time back in 2009.  Look for the court to amend its internal operating procedures.  Those operating procedures currently state that merit cases shall be disposed of by precedential or non-precedential opinions, if not disposed of by Rule 36 judgments.

DATE: November 14, 2008

SUBJECT: DISPOSITION OF CASES – OPINIONS AND ORDERS – VACATE,

REVERSE, REMAND – COSTS

1. The court employs only the following means in disposing of matters before it for decision: precedential opinions; nonprecedential opinions; precedential orders; nonprecedential orders; and Rule 36 judgments of affirmance without opinion.

2. The court’s decisions on the merits of all cases submitted after oral argument or on the briefs, other than those disposed of under Rule 36, shall be explained in an accompanying precedential or nonprecedential opinion.

3. The court’s decisions on motions, petitions, and applications will be by precedential or nonprecedential orders.

4. The court’s policy is that all opinions and orders shall be as short and as limited to the dispositive issue as the nature of the cases or motions will allow.

5. At the election of the authoring judge, a unanimous or majority opinion, precedential or nonprecedential, may be headed “PER CURIAM.” Rule 36 judgments shall be “PER CURIAM.”

6. Copies of all issued opinions and precedential orders shall be provided when issued to all judges of the court, to other participating judges, to the parties involved, and to the tribunal from which the appeal was taken, or which is affected by the order. Copies of Rule 36 judgments signed by the clerk will be provided by the clerk to the parties, the trial tribunal, and the members of the panel.

(Emphasis added)

The Federal Circuit heard oral argument today in Oracle America, Inc. v. Google, Inc.  The panel was comprised of Judge O’Malley, Judge Plager, and Judge Taranto.  You can listen to the oral argument [here].

The briefs of the parties are available [here].

In August of 2005, the PTO revised the MPEP to include a new section 2111.04.  This new section of the MPEP addressed the language “adapted to.”  While the new section of the MPEP cited case law for other phrases, such as “whereby” clauses, no legal support was cited in regard to the “adapted to” language.  Eight years and six revisions of the MPEP later, no legal support has yet been cited.  Section 2111.04 is reproduced below:

2111.04   “Adapted to,” “Adapted for,” “Wherein,” and “Whereby” Clauses [R-9]

Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are:

(A) “adapted to” or “adapted for” clauses;

(B) “wherein” clauses; and

(C) “whereby” clauses.

The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case. > See, e.g., Griffin v. Bertina, 283 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002)(finding that a “wherein” clause limited a process claim where the clause gave “meaning and purpose to the manipulative steps”). < In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), the court held that when a “‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. However, the court noted (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) that a “‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’” Id.

It is worth noting that in the recent case of Broadcom Corporation v. EMULEX CORPORATION, No. 2012-1309 (Fed. Cir. Oct. 7, 2013) an “adapted to” phrase was at issue in the appeal. The claim at issue was claim 8 which recited:

8. A communication device configured to receive multiple serial data signals, comprising:

a master timing generator adapted to generate a master timing signal;

multiple receive-lanes each configured to receive an associated one of the multiple serial data signals, each receive-lane including

a phase interpolator adapted to produce a sampling signal having an interpolated phase, and

a data path adapted to sample and quantize the associated serial data signal in accordance with the sampling signal; and

an interpolator control module coupled to each receive-lane, the interpolator control module being adapted to cause the phase interpolator in each receive-lane to rotate the interpolated phase of the sampling signal in the receive-lane at a rate corresponding to a frequency offset between the sampling signal and the serial data signal associated with the receive-lane so as to reduce the frequency offset between the sampling signal and the serial data signal.

The court in Broadcom noted that the determination of infringement at the district court level had turned on a particular limit in claim 8 — a closer look at claim 8 reveals that the language at issue was actually part of an “adapted to” claim.  The Federal Circuit stated:

At trial, the district court found that, at bottom, infringement turned on whether the accused products “reduced the offset between the sampling signal and the data signal all of the time or only some of the time.” J.A. 35. Importantly, the district court found that Emulex’s expert, Dr. Nikolic, conceded that the accused device “reduced the offset at least some of the time.” J.A. 640; see Oral Argument at 1:19-1:48, Broadcom Corp. v. Emulex Corp., No. 2012-1309, available at http:// www.cafc.uscourts.gov/oral-argument-recordings/12-1309/ all. It is well settled that an accused device that “sometimes, but not always, embodies a claim[] nonetheless infringes.” Bell Commc’n Research, Inc. v. Vitalink Commc’n Corp., 55 F.3d 615, 622-23 (Fed. Cir. 1995). Accordingly, this court affirms the district court’s grant of JMOL that Emulex’s accused products infringed the ‘150 patent and denial of Emulex’s JMOL of noninfringement.

Thus, the Federal Circuit affirmed the finding of infringement based on language appearing in an “adapted to” limitation.

Incidentally, this past week the US Patent Office issued at least 500 patents that include “adapted to” in one or more claims.

While some examiners at the PTO push back on the limiting effect of “configured to” or “capable of” claim language in apparatus claims and other examiners do not, the Federal Circuit typically treats such language as limiting during litigation.  The recent oral argument of Bally Technologies, Inc. v. Business Intelligence Systems Solutions, Inc., App. No. 2013-1131 (Fed. Cir. Nov. 8, 2013) not only highlights that the Federal Circuit treats such language as limiting but it also raises some questions about apparatus claims that recite a claim element as “configured to [achieve a particular result].”

The Federal Circuit panel merely issued a Rule 36 judgment.; however, you can review the relevant district court order [here] for more background.  An example of a claim at issue in the case was claim 1 of the ‘367 patent:

1.  A data visualization system comprising . . . a contour generator configured to generate and display one or more contour lines at least partly around each data point or group of data points, each contour line representing data values that are less than the data value[] of the data point[] around which the contour line is displayed.

The relevant discussion concerning the “configured to” language is available [here].

Some of the questions raised were:

1) Does use of the phrase “configured to [produce a particular result]” in an apparatus claim require that the result be produced every time the apparatus is used rather than just some of the time?

2)  Does the case law that addresses claims using the phrase “capable of” apply to claims that recite “configured to?”  For example, does the Finjan case apply to “configured to” claims.

At one point during the oral argument, the appellant mentioned a district court case from August concerning Versata.  Apparently the judge in that case treated “configured to” language and “capable of” language differently.  I wasn’t able to locate a link to the Versata opinion.

For an interesting discussion of functional claiming from a prosecution perspective see “Functional Claiming and Functional Disclosure,” 6th Annual Advanced Patent Law Institute, January 20-21, 2011, Alexandria, VA by Bradley L. Wright [Link].

UPDATE September 15, 2018

Here are some more “configured to” and “capable of” opinions:

Parkervision, Inc. v. Qualcomm Inc., __ F.3d __ (Fed. Cir. 2018)

Dell Inc. v. ACCELERON, LLC, 818 F.3d 1293 (Fed. Cir. 2016)

Ericsson, Inc. v. D-Link Systems, Inc., 773 F.3d 1201 (Fed. Cir. 2014).

Nazomi Communications, Inc. v. Nokia Corporation, 739 F.3d 1339 (Fed. Cir. 2014).

UPDATE October 4, 2018

Versata Software, Inc. v. SAP America, Inc.,717 F.3d 1255, 1262-63 (Fed. Cir. 2013),

ViaTECH TECHNOLOGIES INC. v. Microsoft Corporation, No. 2017-2276 (Fed. Cir. May 23, 2018).

There are some interesting patent law conferences scheduled for the upcoming months — although they’re all a bit geographically counterintuitive:

Berkeley/Stanford 14th Annual Advanced Patent Law Institute, December 12th and 13th in East Palo Alto, California  [Link].

UT Law 9th Annual Advanced Patent Law Institute, January 23rd and 24th in Alexandria, Virginia [Link].

University of Akron Naples Mid-Winter Patent Law Experts Conference, February 11th, 2014 in Naples, Florida [Link].

In the recent  oral argument of Finn v. Rea, App. No. 2012-1635 (Fed. Cir. Oct. 16, 2013) a panel of the Federal Circuit once again dealt with a written description issue.  The panel confronted the tension in the court’s case law between cases like In re Huston, 308 F.3d 1267, 1277 (Fed. Cir.2002) which states that for written description:

“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed” (citing Lockwood v. American Airlines, 107 F.3d at 1571-72 (Fed. Cir. 1997)

and cases like Nazomi Communications, Inc. v. ARM Holdings, PLC, 403 F.3d 1364, 1369 (Fed.Cir.2005) which was cited by the court in Philips v. AWH, 415 F.3d 1303 (Fed. Cir. 2005)(en banc) and noted that for purposes of claim construction claims may embrace “different subject matter than is illustrated in the specific embodiments in the specification.”

Judge Taranto framed the question this way [Listen], while Judge Prost asked where the line should be drawn in this way [Listen].

Judge Taranto also noted that in the past he had tried to think of written description by asking whether the difference between what was originally described and what is now claimed raises any non-trivial technical issues that somebody would have to solve: [Listen].

You can listen to the entire oral argument here: [Listen].

You can read the court’s Rule 36 Judgment here: [Read].

The Supreme Court has now released the audio from the oral argument that took place earlier this week in Medtronic, Inc. v. Boston Scientific Corp.  You can listen to the audio [here].

The Supreme Court of the United States heard oral argument today in the case of Medtronic, Inc. v. Boston Scientific Corp.  You can review the transcript of the oral argument here: [Transcript].

In the recent oral argument of Laube v. Rea, a panel of the Federal Circuit was trying to determine whether a patent specification had the degree of specificity required to satisfy the written description requirement for a claim that was not disclosed as a single embodiment in the specification.  The claim at issue required a “spring clip” which was illustrated in one embodiment and a “side plate” which was illustrated in a different embodiment.  The panel wanted to know what degree of specificity short of an in haec verba description would satisfy the written description standard. [Listen]

The patent owner noted that the specification included standard boilerplate language that indicated pieces could be mixed and matched.  I found it curious that the panel seemed willing to discount that boilerplate language due to the fact that such language appears in most patents: [Listen].

Having identified an interesting issue with respect to written description and having noted that the Federal Circuit’s decisions don’t necessarily provide a coherent and useful test to resolve the issue at hand, the panel promptly issued a Rule 36 judgment: [Opinion].

You can listen to the entire oral argument here: [Oral Argument].

At the beginning of each Supreme Court term, the Court releases the recordings of the announcements of Court decisions from the previous term.  Here is the announcement from back in June of the decision in Ass’n for Molecular Pathology v. Myriad, 133 S. Ct. 2107 (2013):  [Listen].

The oral argument in ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC., No. 2011-1486 (Fed. Cir. Sept. 5, 2013) would be of interest to those of you who follow section 101 issues as they relate to business methods and software.

I found the exchanges between Chief Judge Rader and Mark Lemley (arguing on behalf of Guidewire and against the patent eligibility of the claim at issue) to be the most interesting parts of the oral argument.  At the outset, Professor Lemley acknowledged that software is eligible for patenting: [Listen].  The discussion then moved on to whether high level functionality of software is protected by patent law.  I couldn’t help but wonder if Judge Rader’s comments at this stage were a criticism of Professor Lemley’s article “Software Patents and the Return of Functional Claiming“:  [Listen].  Judge Rader later circled back to inquire whether in view of Guidewire’s position all software would be patent ineligible: [Listen].

You can listen to the entire oral argument here: [Oral Argument].

You can read the court’s opinion here: [Opinion].

The Federal Circuit’s newest judge was sworn-in today.  Todd M. Hughes was sworn-in by Chief Judge Rader using the Lincoln Bible (which appears to have taken up residence at the Federal Circuit of late) while his mother and father looked on.

The Federal Circuit sat en banc today to hear the oral argument in Lighting Ballast Control LLC v. Philips Electronics North America.  You can listen to the en banc oral argument [here].