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April 17, 2009

27

Gary Odom was a software developer for 20 years, and had some patentable ideas beginning in the late 1980s, but lacked the resources to patent them. When he got a chance to work in the patent field, he jumped on it. Months after going to work for a patent boutique in Portland Oregon, he started filing, pro se, patents of his own inventions, starting with modular software construction, then web personalization. Looks like his third patent family might worth something. Odom invented active tool groups, which Microsoft popularized with its Office 2007 Ribbon. In an ongoing licensing campaign, having previously filed suit against Microsoft and Autodesk, today Odom filed against 28 other infringers.

Old-style toolbars had a listing of tools. There was the appearance of grouping, but that was only cosmetic: vertical separator bars between groupings. Active tool groups (e.g. 7,363,592) is the concept of making a toolbar group of tools an operational entity unto itself.

The most common usage, as in the Microsoft Office 2007 Ribbon, is a button to show more tools for a tool group. Autodesk infringes even more claims, by dragging and dropping tool groups.

All kinds of toolbar configurations were in the prior art before '592, including tabbed and stacked toolbars, which is what the Ribbon is. But no one had considered making toolbar tool groups functional before Odom.

Odom thoroughly searched the prior art before asserting his tool groups patent. He's filed accelerated examination (AE) continuations. AE requires a fairly exhaustive search of the prior art, and identification of how the claims are supported in the specification, as well as mapping the closest prior art to the claims.

Odom filed '592 in late 2000. Seven years later active tool groups burst into the commercial marketplace, introduced, and actively promoted, by Microsoft. It has spread like wildfire as a new user interface standard. Belated infringement coupled with commercial success is itself an indicator of non-obviousness.

As an aside, punters who have commented that Odom's claims are Bilskied out don't know what they are talking about. The CAFC has been concerned about overreaching business method patents. Bilski required, for software patents, that claims transform the subject matter, and have tangibility (according to one interpretation), i.e., representational of non-computer existence. Odom's tool groups are like containers in a toolbox, and his claims alter the condition of those groups.

The 28 sued today include GE Fanuc, BAE, Siemens, Attachmate, and Mindjet. Many infringers are CAD and draw program vendors, where lots of tools are used, so active tool groups is especially helpful.

As Patent Prospector readers already know, this entry is first person, written in the third person, as Gary Odom is aka Patent Hawk, patent technical consultant. Prior art search is Odom's bread-and-butter business, and his practical knowledge of case law and the patent business is extensive.

Odom seeks a reasonable royalty, and is optimistic that many of the less pig-headed parties will come to realize that fighting this one is a losing game. Odom:

The patent is solid, and the idea was a bit ahead of its time. To my knowledge, the next time the concept was put before the patent office was when Microsoft filed a patent in 2004 for its Ribbon, claiming active tool groups, three-and-a-half years after Odom.

All the work on these litigations is in the can, including claim construction, and compelling counter-arguments against the inevitable invalidity defenses. Calling me confident on this one would be an understatement.

As Patent Hawk, I've worked in patent litigations nearly a decade now, and am a patent validity specialist. I couldn't have stayed in business as long as I have, with a small clientele of repeat business for litigations, if I were not very good at what I do.

By reputation, Judge Mossman in Portland, who is adjudicating these cases, is a smart judge, very well respected. I seriously doubt smoke-and-mirror arguments are going to work here. After all, this is a simple patent, the claims are readily understood, and very visible. No abstraction whatsoever. It's the perfect kind of patent case to take before a jury.

I have a licensing program in place. I'm looking forward to talking with each of the parties, and being equitable in consideration of how extensively they use the claimed invention, and what constitutes a reasonable royalty, with all due respect to the long-standing Georgia-Pacific factors and the commonly applied Goldscheider 25% rule.

I solicit any potentially infringing company out there to contact me or my attorneys to begin licensing negotiations. It may potentially save them a lot of headache and money to take a license.

If I'm contacted by a company and they don't infringe, I'll tell them straight out that they don't need a license. In this campaign, I've looked at many companies with the Ribbon interface that don't infringe, or appear so small, mom-and-pop operations, that a patent license could be a serious bite into their livelihood. Those folks are off my radar. For me, being appropriate in asserting patent rights is the way to be.

Posted by Patent Hawk at April 17, 2009 6:09 PM | Litigation

Comments

I hope you win, Hawk. I hope you beat the crap out of MS. I cheer whenever anyone does. I would cheer for the hackers if they weren't causing so much collateral damage. I've detested that pack of MS rodents every since about DOS 3.

But I think the roots of your demise are buried in this post:

"Odom's tool groups are like containers in a toolbox, and his claims alter the condition of those groups."

That dirty, little 4-letter word "like" is where you'll lose your Bilski fight. IMHO

Posted by: Babel Boy at April 17, 2009 8:04 PM

Babel Boy,

Thanks for the comment.

Your reading of 101 patentability is facile, and wrong. Try rereading Bilski carefully, and the modest clarification from Comiskey 2009.

I'll have another post on that topic in the near future.

Posted by: Patent Hawk at April 17, 2009 11:04 PM

"I've detested that pack of MS rodents every since about DOS 3."

I thought MS-DOS 5.0 (1985) was still good. (It was right around then that MS started playing dirty with a little company named Digital Research, DR-DOS, as well as others, and controlling the market, and advancements in the computer software sphere came to a near standstill. Since then, the Silicon Valley axiom has been true indeed: "What Intel giveth, Microsoft taketh away." But Intel is a willing non-innocent player in this hoodwinking of America: because with each new OS, Microsoft's code bloat ensures that we will always need new processors.)

Recently, I tried to automate F-term search results conversion in MS Word to allow for keyword searching (a feature not provided at the JPO web site).... Twenty years later, Word still can't do what DOS editors easily did in the 1980s.

MS has dumbed down computing for the masses, and in so doing has largely succeeded in limiting the available computing power to most Windows users.

Gawk for Windows (and DOS editors) can do what MS Word cannot:

http://gnuwin32.sourceforge.net/packages/gawk.htm

Posted by: niRPa at April 18, 2009 4:15 AM

You seem to carve out an exception for small mom and pop software producers due to low revenue, as is your right.

My question is what are your plans in regards to open source programs which may use your technology?

For instance a open source linux front end GUI. Would you sue the developers, or the people who may sell said program as part of a package, such as RedHat, or even the end user.

Typically a company such as Redhat makes money by selling the package of software and services but most of the programs they sell are freely available.

Posted by: Anon at April 18, 2009 11:58 AM

The means by which software is developed is of no relevance to me.

As an aside, the issue of patent exhaustion arises with "tool pushers" (developer tools).

I'd much prefer to license without resorting to litigation. Companies are rarely willing to do so. The pattern of seeing what you can get away with is deeply ingrained in the human psyche.

Posted by: Patent Hawk at April 18, 2009 1:29 PM

Hawk, you are truly a pathetic human being. Even if you are succesful in your trolling, all the money in the world won't fix that emptiness. Good luck.

Posted by: higher power at April 18, 2009 1:45 PM

higher power,

Thank you for condescending to convey your psychological projection.

Posted by: Patent Hawk at April 18, 2009 3:09 PM

Hey not higher power, I would say that your problems with pride are infinitely larger (and of much greater consequence, both in and out of the patent field) than any problem Hawk has with patents. Do you want some advice?

Posted by: niRPa at April 18, 2009 3:51 PM

Babble Boy babbles: "I hope you beat the crap out of MS."

Yep. Angry (and gay). So much for liberal tolerance.

I'm sure Hawk is not doing anything out of a sense of anger or violence. That being said, best of luck in any good fight.

Posted by: Just sayin' at April 18, 2009 6:45 PM

Dear Hawk,

Is your assertion that "belated infringement" is evidence of non-obviousness based on case law? What case us that? Also, from one former software developer to another, are you sure there are not examples of your tool bars?

Posted by: Just sayin' at April 18, 2009 7:02 PM

In Graham v. John Deere Co. of Kansas City, 383 U. S. 1 (1966), the Court set out a framework for applying the statutory language of §103, language itself based on the logic of the earlier decision in Hotchkiss v. Greenwood, 11 How. 248 (1851), and its progeny. See 383 U. S., at 15-17. The analysis is objective:

"Under §103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Id., at 17-18.

KSR v. Teleflex, 127 S. Ct.

Posted by: Patent Hawk at April 18, 2009 9:38 PM

in the claims: "a said"???

Posted by: 112me at April 19, 2009 2:25 PM

The obviousness analysis is objective -- ho, boy, ain't that a good one?

Determining scope is objective? Determining the level of ordinary skill is objective? And then the magical -- "against this background" -- hocus pocus and there you have it. Easy as that. And objective, too!!!

Hotchkiss was about a freakin' door knob. Yeah, sure, the scope of a doorknob is likely to be an objective analysis. The skill of doorknob makers can (almost) be ascertained objectively. And the difference between metal and porcelain doorknobs is evident. OK, now let's try, say, the use of phenylacetamides as protein kinase inhibitors. . .

That's the whole obviousness problem -- dim-wits in robes who can't drag themselves (or US patent law) out of the 18th century. Newman is the only person on either patent-appellate bench that has a clue what obviousness is all about. But, unfortunately, citing dissents doesn't get you too far.

Posted by: Babel Boy at April 19, 2009 5:26 PM

Yes, of course I'm aware of Deere, but I guess I never knew of belated infringement, specifically, as one of the factors.

Posted by: Just sayin' at April 19, 2009 9:19 PM

Dear Babble Boy,

Rader is hardly a "dim-wit" in a robe.

Posted by: Just sayin' at April 19, 2009 9:20 PM

"Odom's tool groups are like containers in a toolbox, and his claims alter the condition of those groups."

They're like them, but they're not them :( Bilski's claim was like claims that are tied to a particular machine or make a transformation, but they weren't those claims.

It looks like babel beat me to the post, but I definitely typed this before I read his post. The writing is unfortunately on the wall. On the other hand, maybe your CONS will have better drafted claims that still cover what you would like them to. Good luck man. I'd be more worried about the prior art if I were in your shoes, but then, you are a pretty good searcher, at least according to you.

Posted by: 6 at April 20, 2009 12:44 AM

"a said" == "one of the"

Practice point: there is never a reason to use "said" over "the" (well, except to impress a client with legalese): use "the" instead - it is exactly as effective, and can be more forgiving when you might not have antecedent basis (i.e., in cases where the element or feature can be construed as inherent in the claimed structure, such as "the" diameter of a ball).

Posted by: niRPa at April 20, 2009 1:48 AM

niRPa

I disagree. IMHO indiscriminate use of "the" is shoddy work, but then I follow the old Landis school. The client doesn't have anything to do with it.

Use "said" for all directly claimed structure. All other structure that is not claimed or is claimed inferentially takes "the."

This makes it much easier to wade through complex claims, particularly levels of dependents, and inventory what structure you are claiming directly, as opposed to what structure you are not claiming or are claiming by inference.

Where Claim 1 is to a hammer for driving a nail, Claim 2 . . .

"A hammer according to Claim 1 wherein said hammer comprises a flat portion, wherein the nail is driven into a board when said flat portion contacts the nail, except when Bable Boy takes a swing, in which case the nail is bent when struck by said flat portion." Or something like that.

Hammer and flat portion are flagged by "said" as being claimed structure.

I agree with you so far as methods claims go. Since they don't claim structure I don't use "said," even though steps may be LIMITED by structure (it's not good practice). I don't use "said" in methods claims except sometimes I say "said step" because a step is actually what is claimed.

I don't believe "a said" is correct in anyone's book and should have been rejected as indefinite. However, A Rod is OK in Madonna's book.

Posted by: Babel Boy at April 20, 2009 7:46 AM

You are one lucky dude, hauwkie
it's easy for you to detect a fact of infringement just by looking at the GUI screen

For me, on the other hand, it would require to get inside of a DSP chip, or much worse - an FPGA or ASIC

When choosing between patent and trade secret routes back in 2002 I decided on a patent because patents still had some teeth back then
It all changed after Ebay

The crooks changed the rules of the game after cards had been handed out

I hope you punish those Mshit and other corporate crooks for their arrogance toward small patent holders
give them a good kick in their fat corporate ass for the rest of us :)
We'll be cheering for you !!!

Posted by: angry dude at April 20, 2009 9:30 AM

Good luck, Hawk. Without reading the patents, this looks like a great invention and I hope you're successful at generating lots of rewards for your creativity.

Posted by: dvan at April 20, 2009 11:03 AM

Babel Boy, I have seen "a said" in numerous patents. The CAFC has decided cases with "a said" (and "the") in the claims, and (to my knowledge) has never felt even the slightest inclination to mention it. There is also a presumption of validity.

Could you please give any case law or evidence (MPEP) to support any of your last post, or are you just blazing new trails here and hoping we follow?

- "indiscriminate" use of "the" being indicative of shoddy work (yeah, I use "the" exclusively);
- "the" being used (in the claims) for non-claimed structure;
- "the" being used for inferentially claimed structure;
- "said" flagging (in the claims) claimed structure;
- it not being a good idea to use "said" in method claims; and/or
- "a said" being indefinite?

A claim should communicate an invention to the public (e.g., a jury, a competitor). From that point of view, it is always best to use standard English rather than optional legalese or mumbo-jumbo. Of course, some attorneys will not be so confident or down-to-earth as to communicate an invention in plain English.

P.S. You really don't want to mix product and process claim limitations, per your Claim 2.

Posted by: niRPa at April 20, 2009 11:09 AM

niRPa, didn't mean to be overly kevetching on the "the" being indicative of shoddy work. It's Monday. But I was taught that by a dude who is more anal than I about parsing out precisely what is being claimed.

No, I do not know of any MPEP section, CFR section, USC section, or court case that requires the use of "said" for claimed elements only. I hope this level of form over content is never (again)dictated by courts and b'crats.

But we have all seen 112 rejections for indefiniteness for improper use of "the" without an antecedent basis. See MPEP 2173(something). But even then, there is no hard, fast rule, except clarity.

No, no -- not trying to blaze new trails here. The existing trails are clear enough. As I noted, I'm just following Landis, who was doing this work decades ago, when drafting claims and examining them) was an art form.

As far as everybody following -- sounds good to me. It would sure make my life a lot easier if prosecutors followed a couple of simple drafting rules like these. Then I wouldn't have to waste hours trying to decipher the contorted claims I have to waddle through to figure out what is being claimed and what is not.

As far as communicating to the public. You must be a law student or a non-lawyer. Non-lawyers keep trying to dumb down the public; and law students are always moaning about "legalese." I'm not trying to communicate to anyone too stupid to follow a couple simple rules. If you tell the jury that "said" indicates a claimed element, they'll get it, even if you don't.

PS There was no product in that hammer example because there was no process claim. Hammer is a manufacture in that claim. The wherein clause is a functional limitation of the structure "flat portion." Geesh, I should be charging you for these lessons.

Posted by: Babel Boy at April 20, 2009 1:31 PM

"A claim should communicate an invention to the public (e.g., a jury, a competitor)."

nirPA,

Sorry. That's bad advice. A claim should exclude unlicensed competitors from practicing a vital part of your client's business model.

At the same time of course, the claim must distinguish over the prior art and the claim needs to be adequately supported by the spec. Those two latter requirements should be understood without spelling them out for patent practitioners.

Posted by: step back at April 20, 2009 2:01 PM

"Geesh, I should be charging you for these lessons. "

Um, no, you should be charged for him having to point out to you that you indeed mixed claim types and further that your wherein clause was not a functional limitation.

"Where Claim 1 is to a hammer for driving a nail, Claim 2 . . .

"A hammer according to Claim 1 wherein said hammer comprises a flat portion, wherein the nail is driven into a board when said flat portion contacts the nail, except when Bable Boy takes a swing, in which case the nail is bent when struck by said flat portion." Or something like that.""

I.e.

claim 1: A hammer comprising: metal wherein the hammer is functional to drive a nail.

claim 2: the hammer from claim 1 further comprising a flat portion wherein the nail is driven into a board when said flat portion contacts the nail, except when bb takes a swing, in which case the nail is bent when struck with the flat portion.

What is the function of the flat portion? Nobody knows. One does know that some method steps were performed in the claim though. You need to brush up on your Landis. People like you are the reason drudging through claims is a chore so often when it need not be.

Try this on for size:

Where Claim 1 is to a hammer for driving a nail, Claim 2 . . .

A hammer according to Claim 1 wherein said hammer comprises a flat portion, wherein the flat portion is functional to drive the nail into a board when said flat portion strikes the nail, except when Bable Boy takes a swing, in which case the flat portion is functional to bend the nail when the flat portion strikes the nail. Or something like that.

That defines the structure in terms of what it does, not in terms of method steps. The tip off for you should have been when you used the word "driven". That is a red flag, though it doesn't always mean you made the limitation improperly. Present tense is your friend. The easiest way to tell if you wrote a method step or a functional limitation, or indeed if your method step is a valid functional limitation (which it can be sometimes) then you need to ask yourself, "when does a person infringe my claim?" Do they infringe after some steps have been performed, or do they infringe the minute the product is made?

Tell me, when does someone infringe your claim? Think hard. It is only after someone actually drives a nail in, or bends one.

step back: exclude public notice at your own risk.

Posted by: 6000 at April 20, 2009 2:39 PM

I should add btw, that you would be charged, in the form of an OA, if you pull that bs in my office. 112, and a 102 rejection over a hammer with a flat surface with no explanation as to the function as there are no functional claims.

Posted by: 6000 at April 20, 2009 2:43 PM

Dude! You "invented" panners on modal toolbars a little too late.

You might have had a minuscule chance with the "altering the number of tools" gibberish, but anyone can see that there's no thing of your devising that accomplishes anything disclosed.

The file wrapper of the parent application is a total mess as well.

You're toast.

Posted by: Mud at April 20, 2009 4:13 PM

...an' speaking of Bilski...

Assuming a fully-proper spec that describes a new system/method that ONLY utilizes real & actual physical objects to perform the system/method...

...why would the claims need to recite physical structure...since such structure is no less than inherently found in the claims as supported by the spec?

ps: You get 'em Hawk!

Posted by: Lost & Found at April 20, 2009 4:23 PM

IQ=6 you're full of feces to the eyebrows.

First of all, the "claim" was off the cuff and offered to illustrate the use of "said" and "the," but you are, apparently, too dim to see that, and so, like Moonbeams, you wander off down some irrelevant sidetrack to try and look intelligent without having to comment on the actual issue at hand -- even to the point of raising prior art (102) rejections against an entirely fictional claim -- just like Moonbeams is left stuttering about 103 rejections when the entire discussion is about patentable subject matter under 101.

Yeah, man, you're right: there is art out there that shows hammers with flat portions. You guys are priceless. Brilliant. Give yourself a count.

Second you haven't got a clue what you're farting on about.

The wherein clause is a functional limitation because it defines the hammer, not the flat portion, by the function the hammer performs. My previous comment that the flat portion is modified by the wherein clause stands corrected. Had you been quick enough to make that comment, I would have thanked you.

You putting "is functional" in the claim to modify "flat portion" alters the claim and renders it indefinite. It is not the flat portion that is "functional." The wherein clause says what the hammer does, that's why it's a FUNCTIONAL LIMITATION. To say the flat portion "is functional" is not a limitation of the hammer. The hammer is being claimed.

BTW, before advising folks to use "is functional" or "is operative" you'd better go back to the Patent Academy for another round. You're about due anyway. The only person "pulling bs" in your office is you.


Posted by: Babel Boy at April 20, 2009 10:16 PM

"Tell me, when does someone infringe your claim? Think hard. It is only after someone actually drives a nail in, or bends one."

6K's point is well made... and that is what would make the claim invalid under 101 (though the claim can be rejected as being ambiguous too).

MPEP 2173.05(p):

II. PRODUCT AND PROCESS IN THE SAME CLAIM

A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph. IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).

Such claims may also be rejected under 35 U.S.C. 101 based on the theory that the claim is directed to neither a "process" nor a "machine," but rather embraces or overlaps two different statutory classes of invention set forth in 35 U.S.C. 101 which is drafted so as to set forth the statutory classes of invention in the alternative only. Id. at 1551.

2114 Apparatus and Article Claims - Functional Language [R-1] - 2100 Patentability

6K, I keep trying to get through to you that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) Like you, I may not agree with In re Schreiber (read the case if you want to be perplexed - 6K you should read the case - it's about using an oil dispenser to dispense popcorn, if my memory serves correctly), but it's the law. See MPEP 2114 which cites these cases.

And please no one bring up "means claims" - they cover equivalent structure, not function.

"You must be a law student or a non-lawyer."

That is the biggest compliment (and the best news) I've heard in a long time - thank you Babel Boy.

Posted by: niRPa at April 21, 2009 3:31 AM

Look at the fictional claim, niRPa. You're coming across as being almost as challenged as IQ=6.

There is no claim to using the hammer. The wherein clause is not claiming any steps, it is a limitation that further distinguishes the claimed element; i.e. hammer. Think of a limitation as an adjective modifying a noun.

If we accept IQ=6's proposition to look at the point of infringement, which is good advice, then the claim is infringed when the hammer is produced, so long as the hammer produced is CAPABLE of being used to drive a nail by contact with the flat portion. One does not have to drive the nail in order to infringe the manufacture claim, which is where IQ=6 goes south on us. (Now IQ=6 will rip the claim on 102 again.)

What you two are not grasping is that a functional limitation does require that the function has to be effectuated or some step has to be taken in order for infringement to occur. That is a method step. Nor is there, as IQ=6 alleges, a mixing of statutory classes in that fictional claim. There is no claim to a method; there is no claim to the use of the hammer.

"(claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph)."

Can't you see the distinction here? There is no claim in the fictional claim to a method of using the hammer.

IQ=6's sloppy thinking is not surprising, assuming he/she really is an examiner, but it's troubling nevertheless because it's so universal. Is anyone surprised that allowances have dropped from 70% to 40% with the present examiner corps if they think like this?

Posted by: Babel Boy at April 21, 2009 5:14 AM

Babel Boy, in the 1980s, Examiners were taught (and Landis probably taught) that functional "whereby" clauses might not be given patentable weight, or weight in the context of showing infringement.

I think you are getting old-time "whereby" and wherein clauses confused. If you want to show capability rather than function, you should say, "wherein the flat portion is configured to drive a nail into a board upon contact." This "configured to" recitation is standard language in the computer field (where you want the hardware to infringe even before it performs any function, i.e., runs a user program, just by having the capability).

You may, however, represent you clients however you see fit... but as with your said/the distinctions, I see no CAFC decisions which support your firmly held views.

Perhaps we can just disagree - you can have the last word.

Posted by: niRPa at April 21, 2009 6:01 AM

The last word?? Already? I'm trying to get one of these PProspct threads to hit 100 comments. Where's Moonbeams? He/she is to a patent blog thread what elastic is to trousers for middle aged patent practitioners -- annoying for the very reason it's there.

Above I said:
What you two are not grasping is that a functional limitation does require that the function has to be effectuated or some step has to be taken in order for infringement to occur. That is a method step.

Should have read:
What you two are not grasping is that a functional limitation does NOT require that the function has to be effectuated or some step has to be taken in order for infringement to occur. That is a method step.

We do agree that there is no legal significance, per se, for the said/the distinction, at least in principle. But as Bat Masterson once said, "Sometimes ya' just gotta' rise above principle."

Posted by: Babel Boy at April 21, 2009 6:55 AM

P.S. Wow, I should have cited Patent Hawk... sorry.

http://www.patenthawk.com/blog/2008/03/mixed_claim_types.html


Posted by: afterthought at April 21, 2009 6:57 AM

"First of all, the "claim" was off the cuff and offered to illustrate the use of "said" and "the," but you are, apparently, too dim to see that,"

Um, no I saw that initially, then he went on to spout some bs to nirpa. Nirpa called him on it, and I backed him up. End of story. Also, any help that can be delivered to this poor sop of a lawyer now could save hundreds of examiners time down the road.

"The wherein clause is a functional limitation because it defines the hammer, not the flat portion, by the function the hammer performs. My previous comment that the flat portion is modified by the wherein clause stands corrected. Had you been quick enough to make that comment, I would have thanked you."

That comment is irrelevant, it does not define the hammer. You're a poor sop of a lawyer as well it appears. If you're a lawyer. I don't recall. Maybe you're just a poor sop at claim construction.

"without having to comment on the actual issue at hand"

The "actual issue at hand" is a non-issue, use "a said" "said" and similar ridiculousness all you like. The experienced examiner will print out your bs filled claims and strike through your crp and replace it with "the" if he wants to.

"even to the point of raising prior art (102) rejections against an entirely fictional claim"

I did that to highlight the lack of a functional limitation in case you're too dimwitted to notice. From the looks of it, you are.

"You putting "is functional" in the claim to modify "flat portion" alters the claim and renders it indefinite. "

Ok, now you have my lols a churning. I'm not even going to justify your point of view with a further answer.

"It is not the flat portion that is "functional.""

So I more specifically designated the part which is functional, big deal. Doesn't make it indefinite, doesn't make it improper. I assure you that the portion of the hammer that performs those functions is in fact the flat surface in my spec.

"The wherein clause says what the hammer does, "

You don't want to "say" what it does, you want to specify the structure IN TERMS OF what it does. There's a subtle difference here, but you're missing it.

"To say the flat portion "is functional" is not a limitation of the hammer. The hammer is being claimed. "

That's correct, it's a limitation directed towards a part of the hammer, and that's 100% A OK.

"BTW, before advising folks to use "is functional" or "is operative" you'd better go back to the Patent Academy for another round."

I don't advise folks to use that crp. I advise folks to avoid functional limitations like the plague. I advise this because people, such as yourself, have a hard time claiming functional limitations correctly, as well as determining when they've merely claimed a method step in their structure claim, and when they've merely included an intended use. If you'd been paying attention then you'd know this is my advice and has been for the last few years. But then again, that isn't your strong suite.

"6K, I keep trying to get through to you that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) Like you, I may not agree with In re Schreiber (read the case if you want to be perplexed - 6K you should read the case - it's about using an oil dispenser to dispense popcorn, if my memory serves correctly), but it's the law. See MPEP 2114 which cites these cases."

I've been advocating this view for about a year now since I looked into the matter myself, where have you been nirpa? I didn't say that my claim above distinguished from the prior art. It doesn't.

"Should have read:
What you two are not grasping is that a functional limitation does NOT require that the function has to be effectuated or some step has to be taken in order for infringement to occur. That is a method step."

Yeah, that's what I thought. But don't worry, that's only your second backtrack, you'll be making more soon enough.

"The wherein clause is not claiming any steps, it is a limitation that further distinguishes the claimed element; i.e. hammer."

You just keep telling yourself that, I'm going final. And I'm going final with a hammer that is completely round except for one small flat surface that is too small to effectively drive a nail (hard to imagine I know). Why? Not because I like to bring up statutes ancilliary to the main concern, but because you have no functional limitation included and I want to highlight that for the whole world to laugh at.

I'll also give you a last word should you so desire.

Posted by: 6 at April 21, 2009 8:48 AM

I don't need the last word. You just pilloried yourself without any further assistance from me. Well done.

Posted by: Babel Boy at April 21, 2009 9:17 AM

"... wherein visibly designating said first tool group by at least one user-manipulatable divider located near at least one end of said first tool group, ..."

Is it just me, or is this clause not grammatically correct? It seems like it should say "... wherein said first tool group is visibly designated by at least one user-manipulatable divider located near at least one end of said first tool group, ..."

Is the actual claim language ok? What happens in litigation if a clause is grammatically incorrect? (I'm not an attorney, so apologies)

Posted by: Moses at April 21, 2009 6:09 PM

Moses,

Patent claims, which are a single sentence, seem at times an arcane form of statement.

The gerund form of verbs comprises the nominal conjugation of patent claims, particularly progressive form. Present tense is also acceptable as a secondary form, in active voice, e.g. "comprises" rather than "comprising."

Passive voice, as you suggested, is not generally considered appropriate.

The "visibly designating" wherein limitation you cited is, I think, grammatically correct. Then again, I wrote it.

Posted by: Patent Hawk at April 22, 2009 12:10 AM

One reason patent claims seem grammatically contorted and/or strained is that they are not even one full sentence - they are in fact only the object of a sentence that begins with the introductory phrase, "I claim", "We claim", "What is claimed is", or in Hawk's case, "The invention claimed is":

http://books.google.com/books?id=LFIMX6L-nMUC&pg=PT8&lpg=PT8&dq=patent+claim+object+%22i+claim%22+OR+%22we+claim%22+OR+%22what+is+claimed+is%22&source=bl&ots=R3nGYulzu8&sig=eyMfJuO8NfD_g20z4ksbPlKEh8E&hl=en&ei=V-DuSb7SN-HJtgei_u3KDw&sa=X&oi=book_result&ct=result&resnum=1

As an Examiner, the first thing I had to do was part with was my expectation of proper grammar in the claims. I would say, "That isn't proper grammar!" (for some whereby-infinitive or wherein-infinitive clause) and the attorneys would respond, "We always do it that way!"

Live and un-learn.

Method steps (and means clauses) should always be recited as gerunds. Hawk's claim grammar may not be perfect, but I suspect it need not be - since there is (still?) a presumption of validity. (I suspect as Hawk gets more claim drafting experience, his claims will read as naturally and communicate as well as his blog posts.)

Posted by: niRPa at April 22, 2009 2:12 AM

I'm surprised you didn't hire someone to write the claims for you at least. Or at least take a look at them and make sure they look ok. The office might also have been a little lenient on the grammar, if it were a big corporate app I'd probably make an objection, but I rarely do that. However, things which are objectionable in prosecution aren't generally things which can be used to invalidate later so far as I know.

I have tried to read claim 1 of your patent no less than 5 times since I first heard of the case. To date I haven't been able to read it through all at once and have it make sense, I always have to skip elements and then come back and stick them in edgewise. You may want to be careful when you get to claim construction time in your case.

Posted by: 6 at April 22, 2009 3:16 AM

Hawk and nirpa-
Thanks for the responses. Especially thanks for that Landis link.

Posted by: Moses at April 22, 2009 3:58 AM

I have a licensing program in place. I'm looking forward to talking with each of the parties, and being equitable in consideration of how extensively they use the claimed invention, and what constitutes a reasonable royalty, with all due respect to the long-standing Georgia-Pacific factors and the commonly applied Goldscheider 25% rule.

According to the link you provided, Goldscheidner claimed that the licencees assumed 75% of the risk in bringing the patented equipment to market. As far as I can tell the patented equpment was the item they were selling, so if the same logic were to be applied here you would have to assume that Microsoft et al were bringing a toolbar to the market rather than a set of tools for wordprocessing & spreadsheets.

Posted by: Garry at April 24, 2009 5:14 AM

I was actually the guy who invented this thing, remember. You and me were sitting around hitting my bong and we talked about how cool it would be if toolbars could float around and dock and all kinds of other cool things. In fact, Chris Robinson from the Crowes stopped by and dropped off more weed and we came up with the whole grouping and hiding thing. Dude, don't you remember that shit? It was about the same time that Al Gore was inventing the internet; he came up with that IP thing and pretty soon we had web pages and shit. You were pretty wasted though. You propbably don't remember.

Mike.

Posted by: Mike Daruke at April 24, 2009 6:59 AM

Mike, wow, that is very similar to how speed-responsive 4-wheel steering was invented at M.I.T. way back when (in the 1980s)... I guess beer sometimes can do wonders.

[Well, very similar except for the bong and weed part.]

"Patentability shall not be negatived by the manner in which the invention was made."

Posted by: Mike your pants are on fire - yikes at April 24, 2009 9:30 AM