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[Art]

Most of you have seen this claim:

A computer readable medium having compuer readable instructions to perform the method of claim 1.

I have used similar claims in the past myself and I have seen them in many patents, including some Microsoft patents.

I think this claim may be invalid because it mixes an aparatus and a method in one claim.

[Isaac]

The claim does not mix apparatus and method in one claim.  What is claimed is a product whose structure is defined in terms of the method it enables.

Empirically, we know that such claims are not invalid in form because they've been successfully enforced in court.

[harlan]

Art's example is also referred to at as Beauregard Claim, and is a well settled claim format.

Best.  Harlan.

[Art]

That is what I was thought till recently, when I came across of this case:

IPXL Holdings vs. Amazon

On appeal, the court ruled that a “claim is considered indefinite if it does not reasonably apprise those skilled in the art of its scope.” Regarding claims directed to both systems and methods, the panel agreed with prior decisions that “made it clear that reciting both an apparatus and a method of using that apparatus renders a claim indefinite.”
CAFC found that the claim was unclear whether it required only a system that allows the user to use the input means or instead required that the user actually use the input means. “Because claim 25 of Amazon's patent recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2.”

Here is the IPXL claim:
The system of claim 2 [including an input means] wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters.

Furthermore the pannel stated:
"..combining in one claim two statutory classes of invention makes a claim "not sufficiently precise".

[Art]

So according to this decision a claim such as:

A system for performing the method of claim 1.

would be invalid.

[Isaac]

So according to this decision a claim such as:

A system for performing the method of claim 1.

would be invalid.

No the decision does not suggest what you conclude.

The problem with claim as addressed in the opinion could be fixed thusly:

The system of claim 2 [including an input means] wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and an input means operable by a user  to either change the predicted transaction information or accept the displayed transaction type and transaction parameters.

So instead of claiming a step where the user does something, the claim includes an input means that a user could use to do that something.

[Art]

Isaac wrote: "No the decision does not suggest what you conclude."

Here is how I see it.
If the claim reads:

A system for performing the method of claim 1.

than you can substitue the phrase "the method of claim 1." with actual text of that method, than you get this:

A system for performing:
extending.....;
deleting....:
(whatever-else-doing).

Do I have a system and a method in one claim, I think I do. Particularily if instead saying "a system" I actually described the system.

[Art]

I really hope I'm reading this case wrong otherwise it would mean a serious mess.

[Art]

Please note the commentary in this case

"...The Board correctly surmised that, as a result of the combination of two separate statutory classes of invention, a manufacturer or seller of the claimed apparatus would not know from the claim whether it might also be liable for contributory infringement because a buyer or user of the apparatus later performs the claimed method of using the apparatus."

I draw the parrallel to the example I gave before:

A medium having instructions to perform the method of claim 1.

Can you see how the seller or manufacturer of a computer medium would not know if I put on this medium instructions to perform a method ?

[Isaac]

Art, do you understand the modification I proposed for fixing the the IPXL claim.

There shouldn't be any question that you are reading the case incorrectly.  I'm sure you are aware that Beauregard Claims are a valid format.  If you are coming up with an answer that suggests they are not, then your reasoning is wrong.

[Art]

Isaac, I understand that Beauregard Claims are a valid format, I have used them myself before,  but this is exactly what we though about equivalents till Festo case came along.

Do you think that my example for "A system for performing the method of claim 1." is also misguided and not-applicable to this case?

I honestly hope you are right. I want to be wrong here.

After doing some searching I found couple other attorneys out there who think the same way.

http://www.bakerbotts.com/infocenter/publications/detail.aspx?id=cc752cd0-1e97-434b-a3a7-14ca5d7419d2#_ftn8

This above website cites couple examples of potentially defective claims, one of them the same as I cited.
Here is what they think:

"...This case could have far-reaching implications, including, according to one commentator, the invalidation of many issued claims.[6] A few potential examples of types of claims subject to invalidation could include the following:
•  A system for performing the method of claim 1.[7]
•  A system comprising X and Y, wherein X operates at a high rate of speed.[8]
The Federal Circuit opinion now opens the door to attacking patent claims that mix statutory classes... "

Isaac, please let me know, if after reading their point of view you still think we are mireading this case.  I really want to be wrong here.

[Isaac]

Art, I appreciate the link to the discussion and the reference to the case.

I haven't changed my opinion.   I think the FC was right about the claim they found invalid.  The author of the article cites one commentator as suggesting that the other forms could also be invalid.   I think the commentator is simply wrong.  

On top of that the article further speculates that the reasoning might be extended  to "invalidate apparatus claims having functional or operational expressions that resemble method steps."    In other words the case does not really say this, but the author wonders aloud if such is the case.

The guidance I've gotten (from a mentor who did not allude to the case in question) is that when adding on functional language to a structural element to express the language not using operating language.   That is to use "a widget to enter user data" rather than "a widget for entering user data".

However that kind of guidance is not applicable for a Beauregard Claim where a set of computer instructions is being defined by the method that it would carry out.

Incidentally, there *are* practitioners who while recommending Beauregard Claims, do not recommend an apparatus claim written to refer to a method claim.  I'm not real keen on such claims myself.  The PTO has no problem with them.

FWIW, as a patent examiner I was taught that claims such as the ones the FC invalidated were improper well before the decision in this case.  

[JimIvey]

I'll see if I can come up with an improperly mixed claim....

A computer system comprising:
a processor;
memory operatively coupled to the processor; and
reading data from the memory and printing it out.

How can a computer system comprise the act of "reading?"  I have no idea.  That's probably an improper mixing of claim types.

Now, to Beauregard....

A computer readable memory containing computer code which, when executed by a computer, cause the computer to do nifty preamble stuff by:
reading a list of records from a memory of the computer;
sorting the list of records to form a sorted list; and
storing the sorted list in the memory of the computer.

Is there any doubt what infringes this and what doesn't?  I don't think so.  The steps define characterists of the computer code in terms of what they cause the computer to do.  

I think careful attention to the grammar of your claim avoids those problems.  No one (no reasonable fluent English speaker) would say, "In my grocery bag, I have tomatoes, garlic, basil, and walking home to make dinner."  I forget the name of the grammar rule that says all elements of an "and" series have to be the same part of speech, but that rule is violated there.  The listener/reader has to infer the missing words or the intended phrase to understand it properly.  As patent practitioners, we're not allowed the luxury of such understanding readers and have to get it right such that such inference isn't required.

Regards.

[trubblemaker]

I don’t call Art’s claim a Beauregard claim. I call it a shortcut claim. I’ve always assumed that shortcut claims evolved after the Beauregard precedent was set. Maybe I’m wrong. Did the precedential case actually involve the format of Art’s claim?

Let’s look at it.
A computer readable medium having computer readable instructions to perform the method of claim 1.
Hereinafter, I'll call this a shortcut claim.

I’ve always been confused about shortcut claims. Are they independent or dependent?

You say independent?  Fine. Look at this one:
Claim 4. A computer readable medium having computer readable instructions to perform the method of claim 1, claim 2, or claim 3.

Are still sure shortcut claims independent? It looks like a multiple dependent claim to me. As a dependent claim, 35 U.S.C. 112, 4th paragraph must be observed. How can a claim to a medium specify a further limitation on the claimed subject matter claimed in referring to a method claim? Which subject matter claimed is further limited by which claim? I'm confused ... can you see that I'm confused?

I've brought up 35 U.S.C. 112, 4th paragraph to "superiors" before and have generally been rebuked flippantly without substantive response. For example, you can just say it's independent ... but did you pay the proper fee for an independent claim?

Please, call me stupid, call me worse things than stupid, but answer at least three of the following four questions.

1. Is a shortcut claim independent or dependent?

2. If a shortcut claim is independent, what is my claim 4 above?

3. Do you think you can avoid the multiple dependent claim surcharge if you file my claim 4?

4. If a shortcut claim is dependent, how can 35 U.S.C. 112, 4th paragraph be observed?

When I die and become God, you won't want me judging your shortcut claims. I'll never, ever, under any precedent, call shortcut claims anything but confusing and prohibitive of scope determination ... period ... no comma, no caveat. Done. Goodbye.

Oh wait ... answer at least three of my four questions please ... and don't forget to call me stupid.

Thanks!

[Isaac]

I don’t call Art’s claim a Beauregard claim. I call it a shortcut claim. I’ve always assumed that shortcut claims evolved after the Beauregard precedent was set. Maybe I’m wrong. Did the precedential case actually involve the format of Art’s claim?

Maybe it is not strictly a Beauregard claim, but if the shortcut is expanded, the result is a Beauregard claim is it not?

Let’s look at it.
A computer readable medium having computer readable instructions to perform the method of claim 1.
Hereinafter, I'll call this a shortcut claim.

I’ve always been confused about shortcut claims. Are they independent or dependent?

You are not alone in your confusion.  For what its worth, the MPEP suggests that the claims can properly depend from a claim having different statutory class in at least some circumstances.   At least one examiner has told me that he'd attempt to extract an independent claim fee for the claim.

From the MPEP 608.01(n), section III.

"The fact that the independent and dependent claims are in different statutory classes does not, in itself, render the latter improper. Thus, if claim 1 recites a specific product, a claim for the method of making the product of claim 1 in a particular manner would be a proper dependent claim since it could not be infringed without infringing claim 1. Similarly, if claim 1 recites a method of making a product, a claim for a product made by the method of claim 1 could be a proper dependent claim. On the other hand, if claim 1 recites a method of making a specified product, a claim to the product set forth in claim 1 would not be a proper dependent claim since it is conceivable that the product claim can be infringed without infringing the base method claim if the product can be made by a method other than that recited in the base method claim."

I think arguments for and against the claim in question can be made using the above excerpt.


 

Please, call me stupid, call me worse things than stupid, but answer at least three of the following four questions.

1. Is a shortcut claim independent or dependent?

Let's say dependent.

2. If a shortcut claim is independent, what is my claim 4 above?

Not applicable since I picked dependent.  It's a multiple dependent claim.

3. Do you think you can avoid the multiple dependent claim surcharge if you file my claim 4?

Nope.

4. If a shortcut claim is dependent, how can 35 U.S.C. 112, 4th paragraph be observed?

You have to be a bit creative here, but the argument would be that the subject matter is independent of the class and that the extra elements of the computer readable memory and the requirement that the method be executable by interpreting stored computer instructions further limits the subject matter.

I've only used such claims when a supervising attorney has told me to do so.

When I die and become God, you won't want me judging your shortcut claims. I'll never, ever, under any precedent, call shortcut claims anything but confusing and prohibitive of scope determination ... period ... no comma, no caveat. Done. Goodbye.

Whatever problem shortcut claims have, I don't believe there is any problem figuring out their scope.

Oh wait ... answer at least three of my four questions please ... and don't forget to call me stupid.

No can do on the upidstay.