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Q: Patents ( Answered 4 out of 5 stars,   1 Comment )
Question  
Subject: Patents
Category: Miscellaneous
Asked by: buddy77-ga
List Price: $30.00
Posted: 06 Feb 2003 14:20 PST
Expires: 08 Mar 2003 14:20 PST
Question ID: 158198
In US patent law there are apparatus claim (directed to machines,
products, equipment etc.), and method claims directed to a process of
doing something).
Claims are the Legal protection provided by the patent.  
Question: Is a method patent claim infringed by a software (computer)
simulation? I need case law (probably should look at US District Courts
of California, Wahington or Oregon) for this point.

Clarification of Question by buddy77-ga on 07 Feb 2003 14:53 PST
Apparently USPQ (United States Patent Quarterly) is a good source for
an answer to my question.  Key words of interest are model, prototype,
sample.
Answer  
Subject: Re: Patents
Answered By: hlabadie-ga on 19 Feb 2003 17:01 PST
Rated:4 out of 5 stars
 
Insofar as I can determine, there is no evidence that a simulation per
se infringes a method patent claim. Thus, there is no general
prohibition. Every case would have to be judged on its particular
merits. Indeed, if a simulation provides a non-obvious useful
function, and is not itself a program but part of a process, then it,
like any other invention that uses prior art properly, can be patented
itself. Simply incorporating a patented method is not infringement, if
the simulation exceeds the limitations of the claim.

Patentability

The simulation must be a non-obvious improvement of the method patent.
It must be a new use of the method, unforeseen at the time the patent
was granted. That is, if at time that the patent was issued a person
skilled in the art could have seen that a simulation was a natural
product of the method, then the simulation might infringe on the
method.

The simulation must also possess some useful function. That is, it
must have a real-world purpose, e.g., training, controlling machinery,
etc.

In other words, if the simulation itself can meet the requirements for
patentability, then it is unlikely that a suit for infringement would
succeed.



EXAMPLES OF PATENTED SIMULATIONS BASED ON PRIOR METHOD PATENTS

EXAMPLE 1.

Simulation method of sputtering
United States Patent 6,522,997
http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=/netahtml/search-bool.html&r=15&f=G&l=50&co1=AND&d=ptxt&s1=computer&s2=simulation&OS=computer+AND+simulation&RS=computer+AND+si

"The present invention relates to a method of simulation and
particularly relates to the method of simulating a target in a
sputtering arrangement and also to the method of simulating a track of
a sputtered particle in the arrangement.

2. Description of the Related Art

In the field of semiconductor integrated circuits, there has been a
growing trend toward the design of high-density integrated circuits,
as the technology of integrating electronic circuits progresses. This
trend has brought about an urgent requirement to develop a technique
for growing a semiconductor thin film in a finely formed contact hole
of a highly integrated IC.

Optimization of a sputtering arrangement is imperative in order to
meet the above requirement. Since the actual construction of and
experimentation with the arrangement of the sputtering apparatus are
problematic from the viewpoint of cost and development time, the
optimization has been attempted by means of simulation.

In connection with the design of the sputtering arrangement, it has
been required to improve the direction-dependent distribution
characteristic of the particles ejected from the target, as well as to
improve the shapes of components of the arrangement, such as a
collimator. These improvements have been desired more anxiously,
particularly as a high aspect ratio of a circuit element is required
for fine-structuring of an IC. Hereinafter, the direction-dependent
distribution of the particles ejected from the target is referred to
as an angular distribution.

There have been presented methods of simulating the angular
distribution using a method of the molecular dynamics (MD). Yamada H.,
the present inventor, has invented such a simulation method of
sputtering, which method was disclosed in Japanese Patent Application.
No. 55682/96 (filed by the present applicant) filed before the present
application. Since the simulation method is relevant to the present
invention, it will be referred to, hereinafter, as Yamada's former
method."


Note that the above simulation is based on a previously patented
simulation which defined a process, and that the simulation is used in
a real-world process.


EXAMPLE 2.

Method and apparatus for web-based control of a web-based workload
simulation
United States Patent 6,522,995
http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=/netahtml/search-bool.html&r=16&f=G&l=50&co1=AND&d=ptxt&s1=computer&s2=simulation&OS=computer+AND+simulation
"
------------------------------------------------------------------------
                   References Cited [Referenced By]
------------------------------------------------------------------------
                            U.S. Patent Documents
 5732213            Mar., 1998        Gessel et al.              
709/224.
 5737517            Apr., 1998        Kite et al.                 
714/38.
 5812750            Sep., 1998        Dev et al.                   
714/4.
 5812780            Sep., 1998        Chen et al.                
709/224.
 5812826            Sep., 1998        McLain, Jr.                 
703/27.
 5819066            Oct., 1998        Bromberg et al.            
395/500.
 5854889            Dec., 1998        Liese et al.                
714/43.
 5974572            Oct., 1999        Weinburg et al.             
714/47.
 6002871            Dec., 1999        Duggan et al.               
714/38.
 6044398            Mar., 2000        Marullo et al.             
709/219.
 6167534            Dec., 2000        Straathof et al.            
714/38.
 6189031            Feb., 2001        Badger et al.              
709/224.
 6223306            Apr., 2001        Silva et al.                
714/37.
 6304982            Oct., 2001        Mongan et al.               
714/38.
 6317786            Nov., 2001        Yamane et al.              
709/224.
 6360332            Mar., 2002        Weinberg et al.              
714/4."

"BACKGROUND OF THE INVENTION

1. Field of the Invention

The present invention is directed to Web-based sever testing tools
and, particularly, to an improved method for enhancing control of
Web-based server testing.

2. Discussion of the Prior Art

Web application and database server testing tools, such as Segue
Software's SilkPerformer running on Windows NT do not provide adequate
methods of control at the granularity level required.

SilkPerformer is a tool that enables simulation of worldwide web users
of an e-business site. As a single NT machine does not have the
capacity required to "stress-test" an S/390 server (for example),
SilkPerformer's "multi-machine" option may be implemented to invoke
simulation "agents" on multiple NT machines, which are controlled at a
central NT workstation, to increase the number of virtual users
participating in the simulation. Due to the structure inherent in both
Windows NT and the Segue product, there is no method for operator
manipulation of the "path" or parameters of the workload once it has
been started. There is additionally no method available to view, from
a global perspective, the cumulative status of the test as it is being
run as Segue only writes test statistics to the repository at the
conclusion of the test.

It would thus be highly desirable to provide, in a web-based server
test scenario, an additional level of control so that a test operator
could dynamically "focus" the test on any specific function that needs
further testing. This level of control is required to ensure that the
test operator may manipulate the test as it progresses to either
correct or prevent errors from occurring which may adversely affect
the outcome of the test. Via the use of cumulative statistics, an
operator may become immediately aware of any problem or may be able to
notice trends leading to a failure situation."


Note that the above simulation is based on a number of prior art
citations, and that it has a real-world purpose.



FORMULATION OF INFRINGEMENT SUITS

A suit alleging infringement has two parts, the analysis of the claim
as a matter of fact by the judge, and the comparison of the accused
invention with the claim. There are two types of infringement that can
be alleged, literal infringement, in which the accused invention is a
direct copy of the patent claim, and infringment by equivalents, in
which the same end is reached but by some variation in the steps.


United States Court of Appeals for the Federal Circuit
96-1286,-1287
CYBOR CORPORATION, Plaintiff-Appellant, v. FAS TECHNOLOGIES, INC., and
FASTAR LTD.,
http://www.law.emory.edu/fedcircuit/mar98/96-1286.wpd.html

From the Court's opinion:

"An infringement analysis involves two steps. First, the court
determines the scope and meaning of the patent claims asserted, see
Markman II, 116 S. Ct. at 1387, and then the properly construed claims
are compared to the allegedly infringing device, see Read Corp., 970
F.2d at 821, 23 USPQ2d at 1431. Although the law is clear that the
judge, and not the jury, is to construe the claims, this case presents
the issue of the proper role of this court in reviewing the district
court's claim construction."
[...]
"A. Under  112,  6, an accused device with structure not identical
to the structure described in the patent will literally infringe the
patent if the device performs the identical function required by the
claim with a structure equivalent to that described in the patent. See
Micro Chem., Inc. v. Great Plains Chem. Co., 103 F.3d 1538, 1547, 41
USPQ2d 1238, 1245-46 (Fed. Cir. 1997). Prosecution history is relevant
to the construction of a claim written in means-plus-function form.
See United States v. Telectronics, Inc., 857 F.2d 778, 782, 8 USPQ2d
1217, 1220 (Fed. Cir. 1988); Rite-Hite Corp. v. Kelley Co., 819 F.2d
1120, 1123, 2 USPQ2d 1915, 1917 (Fed. Cir. 1987). Indeed, "just as
prosecution history estoppel may act to estop an equivalence argument
under the doctrine of equivalents, positions taken before the PTO may
bar an inconsistent position on claim construction under  112,  6."
Alpex, 102 F.3d at 1221, 40 USPQ2d at 1673. Clear assertions made in
support of patentability thus may affect the range of equivalents
under  112, 6. Cf. American Permahedge, Inc. v. Barcana, Inc., 105
F.3d 1441, 1446, 41 USPQ2d 1614, 1618 (Fed. Cir. 1997); Athletic
Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1582, 37 USPQ2d
1365, 1373 (Fed. Cir. 1996). The relevant inquiry is whether a
competitor would reasonably believe that the applicant had surrendered
the relevant subject matter. See Insituform Techs., Inc., v. CAT
Contracting, Inc., 99 F.3d 1098, 1107-08, 40 USPQ2d 1602, 1608 (Fed.
Cir. 1996)."
[...]
"An accused device that does not literally infringe a claim may still
infringe under the doctrine of equivalents if each limitation of the
claim is met in the accused device either literally or equivalently.
See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 117 S. Ct. 1040,
1054 (1997); see also Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d
931, 935, 4 USPQ2d 1737, 1740 (Fed. Cir. 1987) (in banc). Prosecution
history estoppel provides a legal limitation on the application of the
doctrine of equivalents by excluding from the range of equivalents
subject matter surrendered during prosecution of the application for
the patent. See Warner-Jenkinson, 117 S. Ct. at 1049. The estoppel may
arise from matter surrendered as a result of amendments to overcome
patentability rejections, see id., or as a result of argument to
secure allowance of a claim, see Wang Lab., Inc. v. Mitsubishi Elecs.,
Inc., 103 F.3d 1571, 1578, 41 USPQ2d 1263, 1269 (Fed. Cir. 1997).
Prosecution history estoppel is a legal question subject to de novo
review on appeal. See Insituform, 99 F.3d at 1107, 40 USPQ2d at 1609."

From Judge Plager's concurring opinion:

"At the trial stage of a patent infringement suit, this means that the
trial judge is obligated to determine the meaning of the claims, and,
if a jury is used for the infringement phase, to instruct the jury
accordingly. In the course of seeking to understand the nature and
scope of the invention set forth in the claims, it is standard
doctrine that the judge focuses on the language of the claims, as
explained by the patent's written description, and as constrained by
the course of the patent's prosecution. If need be, the trial judge
may seek understanding outside the patent proper, from relevant texts
and materials, and from experts in the art. None of this involves
"fact-finding" in the sense of the traditional fact-law dichotomy.
See, for example, the Supreme Court's effort to decide whether a
tomato was a "fruit" or a "vegetable." Regarding the meaning of those
words, the Court said: "Of that meaning the court is bound to take
judicial notice, as it does in regard to all words in our own tongue;
and upon such a question dictionaries are admitted, not as evidence,
but only as aids to the memory and understanding of the court." Nix v.
Hedden, 149 U.S. 304, 306-07 (1893)."


From Chief Judge Mayer's concurring opinion, joined by Judge Newman:

"                           II. METHOD OF REVIEW

To determine whether a patent has been infringed, a district judge
must partake of a two-step analysis: (1) construction of the claims to
determine their legal effect by examining and resolving, inter alia,
factual disputes over the meaning and scope of technical words or
terms of art used in the patent, see Fromson, 132 F.3d at 1442, 45
USPQ2d at 1272; Markman, 52 F.3d at 999, 34 USPQ2d at 1347 (Newman,
J., dissenting); and (2) a comparison of the properly construed claims
to the accused device, see Carroll Touch, Inc. v. Electro Mechanical
Sys., Inc., 15 F.3d 1573, 1576, 27 USPQ2d 1836, 1839 (Fed. Cir. 1993).
The first step, construction of the claim, is ultimately a question
for the judge. See Markman, 116 S. Ct. at 1395 ("So it turns out here,
for judges, not juries, are the better suited to find the acquired
meaning of patent terms.") In construing the claims, a judge looks to
the claims themselves, the specification, the prosecution history of
the patent, see Minnesota Mining and Mfg. Co., v. Johnson & Johnson
Orthopaedics, Inc., 976 F.2d 1559, 1566, 24 USPQ2d 1321, 1327 (Fed.
Cir. 1992), and, if necessary, extrinsic evidence for information or
to resolve disputes over the meaning of terms, see Texas Instruments,
Inc. v. United States Int'l Trade Comm'n, 988 F.2d 1165, 1171, 26
USPQ2d 1018, 1023 (Fed. Cir. 1993). Although Markman, 116 S. Ct. 1384,
requires the judge to make the ultimate determination about the
meaning and legal consequence of a claim, it does not prohibit him
from submitting subsidiary factual disputes to a jury, even if it does
not encourage it."


The rest of this concurring opinion should be read carefully.



UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
97-1537
COMARK COMMUNICATIONS, INC., Plaintiff-Appellee, v. HARRIS
CORPORATION, Defendant-Appellant.
http://www.law.emory.edu/fedcircuit/sept98/97-1537.wp.html

From the Court's opinion:

"Despite our repeated statements that limitations from the
specification are not to be read into the claims, see e.g., E.I. du
Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433,
7 USPQ2d 1129, 1131 (Fed. Cir. 1988), Harris nonetheless argues that
the term "video delay circuit" should be read "in light of the
specification" to include a limitation that the video delay circuit
must also function to compensate for delay introduced to the video
signal by the IF vision modulator. We have previously stated that
"[w]hile . . . claims are to be interpreted in light of the
specification and with a view to ascertaining the invention, it does
not follow that limitations from the specification may be read into
the claims." Sjolund v. Musland, 847 F.2d 1573, 1581, 6 USPQ2d 2020,
2027 (Fed. Cir. 1988); see Texas Instruments, Inc. v. United States
Int'l Trade Comm'n, 805 F.2d 1558, 1563, 231 USPQ 833, 835 (Fed. Cir.
1986) ("This court has cautioned against limiting the claimed
invention to preferred embodiments or specific examples in the
specification."). We recognize that there is sometimes a fine line
between reading a claim in light of the specification, and reading a
limitation into the claim from the specification. See, e.g., 1 Donald
S. Chisum, Chisum on Patents  3.02[1] & n.12 (rel. Dec. 1996) ("The
line between interpreting claim language in light of the specification
and reading a limitation from the specification into the claim is a
fine one."). However, we believe that Harris advocates the latter
rather than the former."
[...]
"Finally, as the district court correctly pointed out, Harris's
proposed construction of claim 1 would violate the doctrine of claim
differentiation by rendering claim 2 superfluous. While we recognize
that the doctrine of claim differentiation is not a hard and fast rule
of construction, it does create a presumption that each claim in a
patent has a different scope. "There is presumed to be a difference in
meaning and scope when different words or phrases are used in separate
claims. To the extent that the absence of such difference in meaning
and scope would make a claim superfluous, the doctrine of claim
differentiation states the presumption that the difference between
claims is significant." Tandon Corp. v. United States Int'l Trade
Comm'n, 831 F.2d 1017, 1023, 4 USPQ2d 1283, 1288 (Fed. Cir. 1987)."
[...]
"Harris is indeed correct that our prior cases stand for the
proposition that mere generalized testimony as to equivalence is
insufficient as a matter of law to support a jury verdict finding
infringement under the doctrine of equivalents. See Texas Instruments,
Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567, 39 USPQ2d
1492, 1499 (Fed. Cir. 1996) ("Generalized testimony as to the overall
similarity between the claims and the accused infringer's product or
process will not suffice [to show infringement under the doctrine of
equivalents]."). We have also previously stated that "[t]he evidence
and argument on the doctrine of equivalents cannot be merely subsumed
in plaintiff's case of literal infringement." Lear Siegler, 873 F.2d
at 1425. Rather, "a patentee must prove substantial identity as to
each of the function, way and result prongs of the doctrine of
equivalents." Malta, 952 F.2d at 1327. The thrust of these cases is to
ensure that a jury is provided with the proper evidentiary foundation
from which it may permissibly conclude that a claim limitation has
been met by an equivalent."
[...]
"In order to arrive at its verdict of infringement under the doctrine
of equivalents, the jury must have found that one or more claim
elements were met by equivalents, and could have found the remainder
of the claim elements were met literally. The jury may well have found
that all elements were met by equivalents rather than literally.
Because no special verdict interrogatory was used to determine which
elements were met literally and which were met equivalently, this
court cannot presume to ascertain which elements the jury found to be
met only by equivalents.(1) Thus, this court must uphold the jury
verdict if there is sufficient evidence of equivalents and linking
testimony such that a reasonable jury could have found that at least
one element was met by equivalents. Despite the fact that Harris chose
to concentrate its defense on the "video delay circuit" limitation,
the jury was clearly instructed that each and every element of claim 1
must be present either literally or equivalently in order to find
infringement under the doctrine of equivalents. We can find nothing in
the record that limits the scope of the jury's inquiry under the
doctrine of equivalents to the "video delay circuit" limitation.(2)
Thus, it is not necessary for us to find substantial evidence and
linking testimony of equivalents with respect to the "video delay
circuit" limitation. There is substantial evidence in the record from
which the jury could well have found that limitation was met
literally, rather than by equivalents."
[...]
------------------------------------------------------------------------
                                FOOTNOTES
------------------------------------------------------------------------

"1.

1 We note that the use of special verdict interrogatories drawn to
each claim element has been endorsed and indeed encouraged by the
Supreme Court as "very useful in facilitating review, uniformity, and
possibly postverdict judgments as a matter of law." Warner-Jenkinson
Co., Inc. v. Hilton Davis Chem. Co., 117 S. Ct. 1040, 1053 n.8, 41
USPQ2d 1865, 1875 n.8 (1997). While fourteen separate special verdict
interrogatories were used in this case, the verdict form did not ask
the jury to specifically state which claim elements were found
literally and which were found by equivalents. Rather, the
interrogatories merely asked whether or not each claim was infringed
and under what theory (literally or by equivalents) the finding was
supported."


Thus, proving infringement depends upon the particulars. 


PATENT EXAMINATION FOR COMPUTER RELATED INVENTIONS

The Patent Office examines patent applications for computer-related
inventions in the same way that it examines all other patent
applications, testing for statutory coverage, prior art, usefulness.
Certain expansions of definitions have been necessary to accommodate
the new technologies.


Examination Guidelines for Computer-Related Inventions
Final Version
http://www.uspto.gov/web/offices/pac/dapp/oppd/pdf/ciig.pdf

"The Freeman-Walter-Abele [3] test may additionally be relied upon in
analyzing claims directed solely to a process for solving a
mathematical algorithm.

Office personnel have had difficulty in properly treating claims
directed to methods of doing business. Claims should not be
categorized as methods of doing business. Instead, such claims should
be treated like any other process claims, pursuant to these Guidelines
when relevant. 4"
[...]
The subject matter sought to be patented must be a "useful" process,
machine, manufacture or composition of matter, i.e., it must have a
practical application. The purpose of this requirement is to limit
patent protection to inventions that possess a certain level of "real
world" value, as opposed to subject matter that represents nothing
more than an idea or concept, or is simply a starting point for future
investigation or research. 6"
[...]
"Office personnel should begin claim analysis by identifying and
evaluating each claim limitation. For processes, the claim limitations
will define steps or acts to be performed.
For products 11 , the claim limitations will define discrete physical
structures. The discrete physical structures may be comprised of
hardware or a combination of hardware and software."
[...]
"Office personnel must always remember to use the perspective of one
of ordinary skill in the art. Claims and disclosures are not to be
evaluated in a vacuum. If elements of an invention are well known in
the art, the applicant does not have to provide a disclosure that
describes those elements. In such a case the elements will be
construed as encompassing any and every art-recognized hardware or
combination of hardware and software technique for implementing the
defined requisite functionalities.

Office personnel are to give claims their broadest reasonable
interpretation in light of the supporting disclosure. 16 Where means
plus function language is used to define the characteristics of a
machine or manufacture invention, claim limitations must be
interpreted to read on only the structures or materials disclosed in
the specification and "equivalents thereof." 17"
[...]
"Both claimed and unclaimed aspects of the invention described in the
specification should be searched if there is a reasonable expectation
that the unclaimed aspects may be later claimed. A search must take
into account any structure or material described in the specification
and its equivalents which correspond to the claimed means plus
function limitation, in accordance with 35 U.S.C.  112, sixth
paragraph and the Means Plus Function Guidelines. 20"
[...]
"Claims to processes that do nothing more than solve mathematical
problems or manipulate abstract ideas or concepts are more complex to
analyze and are addressed below. See sections IV.B.2(d) and
IV.B.2(e)."
[...]
"Computer programs are often recited as part of a claim. Office
personnel should determine whether the computer program is being
claimed as part of an otherwise statutory manufacture or machine. In
such a case, the claim remains statutory irrespective of the fact that
a computer program is included in the claim. The same result occurs
when a computer program is used in a computerized process where the
computer executes the instructions set forth in the computer program.
Only when the claimed invention taken as a whole is directed to a mere
program listing, i.e., to only its description or expression, is it
descriptive material per se and hence non-statutory."
[...]
"(b) Statutory Process Claims
A claim that requires one or more acts to be performed defines a
process. However, not all processes are statutory under  101. To be
statutory, a claimed computer-related process must either: (1) result
in a physical transformation outside the computer for which a
practical application in the technological arts is either disclosed in
the specification or would have been known to a skilled artisan
(discussed in (i) below), 39 or (2) be limited by the language in the
claim to a practical application within the technological arts
(discussed in (ii) below). 40 The claimed practical application must
be a further limitation upon the claimed subject matter if the process
is confined to the internal operations of the computer. If a physical
transformation occurs outside the computer, it is not necessary to
claim the practical application. A disclosure that permits a skilled
artisan to practice the claimed invention, i.e., to put it to a
practical use, is sufficient. On the other hand, it is necessary to
claim the practical application if there is no physical transformation
or if the process merely manipulates concepts or converts one set of
numbers into another. A claimed process is clearly statutory if it
results in a physical transformation outside the computer, i.e., falls
into one or both of the following specific categories ("safe
harbors").
(i) Safe Harbors
- Independent Physical Acts (Post-Computer Process Activity)"
[...]
"- Manipulation of Data Representing Physical Objects or Activities
(Pre-Computer Process Activity)"
[...]
"As is the case for inventions in any field of technology, assessment
of a claimed computer-related invention for compliance with  102 and
 103 begins with a comparison of the claimed subject matter to what
is known in the prior art. If no differences are found between the
claimed invention and the prior art, the claimed invention lacks
novelty and is to be rejected by Office personnel under  102. Once
distinctions are identified between the claimed invention and the
prior art, those distinctions must be assessed and resolved in light
of the knowledge possessed by a person of ordinary skill in the art.
Against this backdrop, one must determine whether the invention would
have been obvious at the time the invention was made. If not, the
claimed invention satisfies  103. Factors and considerations dictated
by law governing  103 apply without modification to computer-related
inventions."

Footnotes
"2 "Computer-related inventions" include inventions implemented in a
computer and inventions employing computer-readable media."

"3 In re Abele, 684 F.2d 902, 905-07, 214 USPQ 682, 685-87 (CCPA
1982); In re Walter, 618 F.2d 758, 767, 205 USPQ 397, 406-07 (CCPA
1980); In re Freeman, 573 F.2d 1237, 1245, 197 USPQ 464, 471 (CCPA
1978)."

"4 See, e.g., In re Toma, 575 F.2d 872, 877-78, 197 USPQ 852, 857
(CCPA 1978); In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280, 289-90
(CCPA 1970). See also In re Schrader, 22 F.3d 290, 297-98, 30 USPQ2d
1455, 1461-62 (Fed. Cir. 1994) (Newman, J., dissenting); Paine,
Webber, Jackson & Curtis, Inc. v. Merrill Lynch, Pierce, Fenner &
Smith, Inc. , 564 F. Supp. 1358, 1368-69, 218 USPQ 212, 220 (D. Del.
1983)."



Guidelines For Claims Reciting A "Means or Step Plus Function"
Limitation
http://www.uspto.gov/web/offices/pac/dapp/oppd/pdf/exmgu.pdf

"In Accordance With 35 U.S.C  112, 6th Paragraph
The purpose of this memo is to set forth guidelines for the
examination of  112, 6th paragraph "means or step plus function"
limitations in a claim. The court of Appeals for the Federal Circuit,
in its en banc decision In re Donaldson 29 USPQ 2d 1845 (Fed. Cir.
1994), decided that a "means-or-step-plus-function" limitation should
be interpreted in a manner different than patent examining practice
has dictated for at least the last forty-two years. The Donaldson
decision affects only the manner in which the scope of a "means or
step plus function" limitation in accordance with  112, 6th para
graph, is interpreted during examination. Donaldson does not directly
affect the manner in which any other section of the patent statutes is
interpreted or applied."
[...]
"B. Making a prima facie case of equivalence
If the examiner finds that a prior art element performs the function
specified in the claim, and is not excluded by any explicit definition
provided in the specification for an equivalent, the examiner should
infer from that finding that the prior art element is an equivalent,
and should then conclude that the claimed limitation is anticipated by
the prior art element.
The burden then shifts to applicant 9 to show that the element shown
in the prior art is not an equivalent of the structure, material or
acts disclosed in the application."


EXAMINATION GUIDELINES FOR COMPUTER-RELATED INVENTIONS
Example: NON-FUNCTIONAL DESCRIPTIVE MATERIAL
http://www.uspto.gov/web/offices/pac/dapp/oppd/pdf/machex.pdf

EXAMINATION GUIDELINES FOR COMPUTER-RELATED INVENTIONS
TRAINING MATERIALS DIRECTED TO BUSINESS, ARTIFICIAL INTELLIGENCE, AND
MATHEMATICAL PROCESSING APPLICATIONS
http://www.uspto.gov/web/offices/pac/compexam/examcomp.pdf



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FirstGov LEGAL RESOURCES
http://www.firstgov.gov/Topics/Reference_Shelf.shtml#Laws

FEDERAL LAW RESOURCES
http://www.thecre.com/fedlaw/default.htm

LEGAL INFORMATION INSTITUTE (LII - Cornell University Law School)
Law About...Patents
http://www.law.cornell.edu/topics/patent.html

Summaries of Recent Patent Decisions
http://www.law.cornell.edu/patent/
Review of recent Patent cases.

US Code
Title 35
http://www4.law.cornell.edu/uscode/35/
TITLE 35  PART III  CHAPTER 28  Sec. 271 - Infringement of patent
http://www4.law.cornell.edu/uscode/35/271.html
Notes
http://www4.law.cornell.edu/uscode/35/271.notes.html

CODE OF FEDERAL REGULATIONS
Title 37
http://lula.law.cornell.edu/cfr/cfr.php?title=37&type=chapter&value=1

Thinking About Thinking Machines
http://www.bu.edu/law/scitech/volume8issue2/vertinsky&rice.pdf
Primarily about machine-directed invention, but contains useful case
law citations.

Report on Comparative Study Carried Out under Trilateral Project B3b
http://www.brevets-logiciels.com/pdf/trilateral.pdf
Comparison of patent procedures in Japan and US, including an
interesting example of an hypothetical patent examination for a
virtual reality simulation.

SEARCH TERMS

US PATENT OFFICE (follow links)
computer simulation patent
patentabilty computer simulation
patent infringement

hlabadie-ga
buddy77-ga rated this answer:4 out of 5 stars and gave an additional tip of: $5.00
Thanks for the answer. I will now formulate a more specific question
and send it to Google Answers within a few days.

Comments  
Subject: Re: Patents
From: gradivus-ga on 04 Apr 2004 12:51 PDT
 
I am a patent attorney, and as the official Google "Researcher"
hlabadie-ga says, "Every case would have to be judged on its
particular merits." I agree with him about that, and he seems to have
done an admirable job in trying to assemble and cut-and-paste some
general information on patentability and infringement.

HOWEVER! -- When it comes to law, as with many other important topics,
a little knowledge can be a very dangerous thing. I can tell you that
at least the following two of this Researcher's statements are FALSE:

1. "Simply incorporating a patented method is not infringement, if the
simulation exceeds the limitations of the claim." -- This statement is
false. Incorporating a (valid, unexpired) patented method into your
method is ALWAYS infringement, unless you have some legal right to do
so.  Any process, including a computer simulation program, that
includes every step recited in a valid patent claim, infringes that
claim, whether or not the simulation "exceeds the limitations
[elements]" of the claim.  It will escape infringement only if it
lacks (does NOT do) one of the steps of the patented method.

2. "If the simulation itself can meet the requirements for
patentability, then it is unlikely that a suit for infringement would
succeed." -- This statement is also false.  Just because a process is
patentable in itself, does NOT mean its use does not infringe another
patent.

A method patent claim can certainly be infringed by a software
(computer) simulation.  It all depends on whether the simulation does
what the claim recites.

This sort of question should be answered only by a qualified patent
attorney.  Does Google have any patent attorney "Researchers" who can
answer these types of questions (except for free, as I have left this
comment for free)?  I don't know.  However, Google is not currently
not accepting additional applications for Researchers, so unless a
Google Researcher is an actual patent attorney, I strongly recommend
you seek a qualified patent attorney elsewhere for further advice, if
your question is more than idle curiosity.  The cost of accidentally
infringing someone else's patent can be many, many times the cost
professional advice.

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