I thought I might have a stab at trying to apply what I think I have been
learning recently from various sources about the principles of patent law to try
to explain the legal background to Judge Robart's
ruling on February 6, 2013 that certain Motorola decoding patent claims are
invalid. The ruling was made on the basis of legal principles based on the
statute and Federal Circuit precedent. This may also help to explain what was
going on at the hearing.
One might naively expect that if John Doe had what (to him at least) was
a new invention, he would put in an application to the Patent Office for the
issue of a patent on the invention. If John Doe thought that Richard Roe's
device was infringing, he could then sue Richard Roe, and the court would
compare the two devices and decide whether Richard Roe's device or process
seemed sufficiently similar to John Doe's device or process to warrant judgement
of infringment. Presumably patent litigation used to proceed along such
lines.
One can formulate a metaphor for "intellectual
property" as being analogous to real property. In and of itself, this
metaphor is nothing but an "abstract idea" like "hedging"
and "escrow". But lawyers and judges have applied this metaphor in
the development of modern patent law. It is, I suggest, helpful to recall the
circumstances of the westward settlement of the European-American population
across the prairie and mountain states of North America in the 19th century, and
the Homestead Acts and
the laws surrounding mining
claims.
Under the Homestead
Act of 1862, a head of a family who built a house on the western frontier
and started to cultivate the land around it could register a claim to a 160-acre
tract of public land. Under modern patent law, an inventor can apply for a
tract of what one might call 'technology space'. Under the "peripheral claiming
system", the inventor (or, more realistically, the patent lawyer acting
on his behalf) will file a patent application containing a specification of the
invention, followed by a sequence of claims, each of which claims monopoly
rights to technology within a tract surrounding the embodiment or embodiments
disclosed in the specification. Each valid claim therefore determines monopoly
rights over some tract of technology. To be valid, the inventor's
embodiment or embodiments disclosed within the specification must
fall within the claim, and no prior art technology should have been within the
"metes and
bounds" of the claim at the time of the invention. Moreover, under the
Enablement
Requirement, the specification must contain sufficient detail to enable the
skilled artisan or PHOSITA (Person Having Ordinary Skill in the Art) to make and
use (an original embodiment of) the invention.
So now John Doe gets a
patent for his device, and later sues Richard Roe for infringement. What the
Courts do not now do is to compare Richard Roe's device with John Doe's
device to see whether they correspond closely enough to warrant a holding of
patent infringement. In order to show that Richard Roe has infringed, it is
necessary to show that Richard Roe's device falls within at least one of the
monopolies granted to John Doe. Therefore, for each claim in John Doe's patent,
it is necessary to determine whether the claim reads on Richard Roe's device.
For this purpose it is essential to determine the periphery of John Doe's claim
in the context of the current litigation. The claims are written in a legalese
intended to specify in precise, but not overly verbose, terms the "metes
and bounds" of the claim. Precise wording is essential. For
example
a renderer containing a plurality of rendering units
configured to render squat,
specifies a renderer
containing at least two rendering units, each of which must be configured to
render squat, whereas
a renderer comprising a plurality
of rendering units configured to render
squat,
specifies a renderer containing rendering
devices, at least two of which must be configured to render squat.
Patent cases are won or lost on these sorts of technicalities.
The
process of determining how the claims are to be intepreted in the context of the
litigation is known as claim construction. Given that the outcome of a
patent lawsuit is often determined by the claim construction adopted, each party
will press for the claims to be construed to their advantage. Therefore the
plaintiff and defendant each brief the judge on their proposed interpretation of
the claim language, and proffer expert reports and testimony. The judge holds a
Markman hearing to
thrash out issues with the parties before offering a ruling on claim
construction that determines how the claims must be interpreted in the ensuing
litigation. Once the claim construction has been laid down, the court can move
onto patent validity and patent infringement.
Now, for claims not
written in some specific exceptional form, the claims must be construed
on the basis of the wording of the claims alone, taking into account expert
reports and testimony regarding how the PHOSITA would interpret the technical
terms appearing in the claims. It is a serious error to "import
limitations from the specification into the claims". In other words, one
must decide the meaning of the claims purely on the basis of the wording of the
claims, in the light of expert reports regarding how the technical terms
occurring within the claims would be interpreted by the PHOSITA. One must
not look to the description of the invention, or to the specific
embodiments described within the specification, in order to determine the
meaning of the claims.
However, there is a significant exception to this
general rule, which applies to functional claiming. Prior to the passing of the
1952 Patent Act, patent lawyers would seek to broaden their claims by
claiming:
foo means for accomplishing function
bar, wherein wishlist,
Such functional
claiming was not outlawed in the 1952 Act, but the Act including a specific
provision to narrow the scope of such claims. The statute 35 USC 112(f) reads as
follows:
(f) Element in Claim for a Combination.— 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.
Any claim to foo means for performing some
task will unavoidably trigger the application of this provision, and, in such
cases, the general rule that the construction of a claim must be determined on
the basis of the wording of the claim alone is inapplicable. In order to
construe the claim, one must look to the specification in order to
determine what is covered by the claim. And, if the specification is ambiguous
or vacuous with respect to the means for accomplishing the function, then the
claim is invalid on the basis that it is indefinite.
It
should be noted that a claim to
computing means for
accomplishing function wherein wishlist
will
unavoidably trigger Section 112(f), whereas a claim to
a computing
device configured/programmed to accomplish function wherein
wishlist
is amenable to being construed without
invoking 112(f). To the layman, the wordings paraphrase one another, and
invoking Section 112(f) for one and not the other seems, at the very least,
nitpicking. But it seems that such 'word games' are characteristic of modern
patent litigation.
Troll patents have been invalidated by the Federal
Circuit and the District Courts precisely because the specification offered no
significant structure to support means plus function claims. A case in
point is Function Media v. Google, discussed here on PatentlyO. (Note that the CAFC panel included both
Chief Judge Rader and Judge Newman, who dissented from the en banc
opinion of the Federal Circuit in In re Bilski. Moreover the appeal was
from a judgement of invalidity handed down within the Eastern District of
Texas.)
With this in mind, we come to Judge Robart's ruling that
certain claims relating to decoding in Microsoft v. Motorola are invalid,
because they are indefinite. On the basis of his ruling, (available on Groklaw
here),
it would appear that the implicated claims were to apparatus that comprised
means to decode, selectively decode, or use.
Looking to the specification, Judge Robart looked to the specification, which
disclosed a "decoder" for performing these functions. On page 11 of
his ruling, he noted that
Here, the parties agree that the
corresponding structure to both the “means for decoding” and “means for using”
terms is a “decoder.”
The next paragraph of Judge Robart's
ruling (pages 11 and 12) gets to the heart of the
matter:---
First, the parties dispute whether the common
specification of the Patents-in-Suit must disclose an algorithm. Microsoft
contends that it must (Reply at 5-7), whereas Motorola argues that the decoder
disclosure on its own is an adequate disclosure showing what is meant by the
“means for decoding” and “means for using” terms of the Claims- at-Issue. (Resp.
at 6-12.) In cases involving a special purpose computer-implemented
means-plus-function limitation, the Federal Circuit “has consistently required
that the structure disclosed in the specification be more than simply a general
purpose computer or microprocessor.” Aristocrat Techs. Austl. Pty Ltd. v. Int’l
Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). In such cases, the Federal
Circuit requires that the specification “disclose an algorithm for performing
the claimed function.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367
(Fed. Cir. 2008) (emphasis added); Aristocrat, 521 F.3d at 1333 (“[I]n a
means-plus-function claim ‘in which the disclosed structure is a computer, or
microprocessor, programmed to carry out an algorithm, the disclosed structure is
not the general purpose computer, but rather the special purpose computer
programmed to perform the disclosed algorithm.’”) (quoting WMS Gaming, Inc. v.
Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999)). The specification can
express the algorithm “in any understandable terms including as a mathematical
formula, in prose, or as a flow chart, or in any other manner that provides
sufficient structure.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340
(Fed. Cir. 2008) (internal citation omitted). Simply disclosing software,
however, “without providing some detail about the means to accomplish the
function[,] is not enough.” Id. at 1340-41 (internal citation
omitted).
So Judge Robart has a reasonable amount of Federal
Circuit precedent that he must respect.
So the onus is on Motorola to
demonstrate that the bare disclosure of a decoder is sufficient structure
to satisfy the requirements of 112(f). According to Motorola's expert
report
Motorola submits the declaration of Dr. Timothy Drabik
who explains that from reading the patents he would understand the disclosed
decoder to be a well-known class of digital video decoders that decode encoded
digital video content. (Drabik Decl. (Dkt. # 252) ¶¶
18-21.)
So Judge Robart sets out to explore whether or not
such decoders would satisfy the requirements of Section 112(f). Accordingly he
asked lawyers for both sides to put their cases at the hearing on
January 28th, 2013, at which a Groklaw reporter was present. The briefs are
linked to that Groklaw article. Judge Robart looks at the declaration of Dr.
Drabik. Various standard video decoders are described. Judge Robart applies
the test of determining whether any of these decoders will work "off the
shelf" (in which case the mere specification of a "decoder"
suffices to determine the "metes and bounds" of the relevant claim in
accordance with Section 112(f)), or whether it is necessary to program these
decoding devices to carry out the algorithm. He determines that each decoding
devise requires to be programmed with a language called Verilog before it
can fulfil its intended purpose. Because each proffered decoder seems to
require programming using Verilog, Judge Robart decides that the bare
word decoder in the specification is not in itself sufficient for the
purposes of making the claim definite under 112(f), and therefore rules that the
implicated claims are invalid on the grounds of being indefinite.
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