The essential point of the peripheral claiming system adopted in the
US and elsewhere, is that it is the precise wording of the claims that
determines whether devices or systems are prior art. The specification has to
show that the inventor was in possession of an embodiment of the
invention, and has provided information sufficient to enable the PHOSITA to make
and use the invention. But if (say) the device requires an encoder or decoder
that needs to be programmed with VERILOG in a standard fashion, then the precise
coding does not need to be specified. except in the special case of ‘means
plus function’ claims, such claims can be invalidated for lack of
structure in the specification to limit the claims, as happened in
Motorola v. Microsoft, when Judge Robart invalidated some decoding
claims expressed in ‘means plus function’ language for lack of
corresponding structure satisfying the requirements of § 112(f).
But
“means plus function” claim language is a special case requiring
more structure in the specification.
(Disclaimer: I have no familiarity
with VERILOG. But I do note that the electrical engineering shelf in a local
bookshop has quite a number of student textbooks teaching electrical engineering
students how to program devices in VERILOG.)
So what prior art should you
look for to invalidate claims such as one finds in the '381 patent. Focus on
the independent claims, and, if they correspond (method claim, system claim,
Beauregard claim), maybe start with the method, because the system or apparatus
claim is likely be a claim to an apparatus practicing the method, and similarly
with the Beauregard claim.
Now a reference describing either the concept
of the implementation details of “bounce-back” is not
invalidating prior art under § 102, unless you can take the precise words
of the claim and match them, word-for-word, clause-by-clause against the prior
art reference. At best, you might be able to use this reference with other
references, and put forward a reasoned argument that it would be
“obvious” for the PHOSITA to combine the teachings of the
references, under the very limited statutory sense of
“obviousness” defined by § 103 of the statute and by
well-established case law.
But if you can find a reference that
sufficiently predates the patent application, and if you can show that, giving
the claim language the broadest reasonable interpretation compatible with the
language of the claims and the background of the PHOSITA or skilled artisan, the
claim will read on the reference, so that you can find structure in the
reference that exactly matches every word and clause of the language of the
claim, then the reference is prior art invalidating the claim.
Thus a
prior art reference specifying a method or device that bears scant resemblance
to a smartphone with a bounce-back feature can invalidate a so-called
“bounce-back” patent, whereas references describing bounce-back, and
indeed how to implement bounce-back do not have the capacity to invalidate a
patent like '381.
Indeed, if the prior art references take the form of
patents on methods or devices with a bounce-back feature, then one can be pretty
sure that, during patent prosecution if not before, the '381 claims have been
amended and amplified to ensure that they do not read on any known prior art
reference that can be found in the PTO database.
(Standard disclaimer;
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