Pending Supreme Court and en banc Federal Circuit Patent Cases

By Jason Rantanen

The Supeme Court continues to take an active interest in patent cases, with three currently pending before the Court.  Briefs are available through the American Bar Association's Supreme Court coverage site.

Patent Cases Pending Before the Supreme Court:

Mayo v. Prometheus: Subject Matter Patentability of Processes, redux. In Mayo, the Supreme Court will revisit the issue of patentable processes in a case that was the subject of a grant-vacate-remand order following Bilski.  The Court has asked the parties to answer the following question:

Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve “transformations” of body chemistry.  

Argument is set for December 7, 2011.  This case has prompted substantial debate and numerous amici submissions.  Prior PatentlyO posts:

Kappos v. Hyatt: Standard of Review of Patent Office Appeals to the District Court.  In Kappos v. Hyatt, the Supreme Court will address the de novo nature of a civil action brought by a patent applicant under 35 U.S.C. § 145.  The Federal Circuit, sitting en banc, previously held that in such a proceeding the applicant many present new evidence to the district court and that any factual conclusions impacted by that evidence must be determined de novo, without deference to the patent office.  The Supreme Court has not yet set oral argument.  Prior PatentlyO commentary:

Caraco v. Novo: Counterclaims Relating to Brand Name Description of Claim Scope. This case relates to a generic company's ability to seek a counterclaim to correct a brand pharmaceutical company's alleged misdescription of patent claim scope submitted to the FDA. Oral argument is set for December 5, 2011.

Patent Cases Pending Before the Federal Circuit Sitting en banc:

Akamai v. Limelight and McKesson v. Epic: Multi-Party, Multi-Step Infringement issues.  In this set of cases the Federal Circuit will address infringement liability when multiple parties collectively perform separate steps of a muti-step process claim but no single entity performs all the steps. Oral argument will take place on November 18, 2011.  Prior PatentlyO commentary:

408 thoughts on “Pending Supreme Court and en banc Federal Circuit Patent Cases

  1. Ned, please understand that “technical effect” belongs in the EPO’s 103 pigeon hole, not 101. It is part of the whole “problem/solution” debate that goes on there.

    For 101, the EPO looks at “technical character”. That’s its way of confining patent-eligibility to the GATT-TRIPS “fields of technology” and the US Constitution’s “useful arts”, without getting prematurely into novelty and obviousness issues (which are handled under later Articles of the EPC).

    Technology has technical character (of course). The fine arts and methods of, say, haggling in the souk or securitizing on Wall Street are activities which, as such, lack technical character.

    For the EPO, its 101 approach works. It works because its 103 filter complements its 101 filter. For us in Europe, the “technical character” and “technical effect” issues are not confusible. At the EPO 103 is never conflated into 101. Observers like AI look across at Munich and shout out that they want exactly the same as what she over there is getting”. They should be more careful what they wish for. I wait to see how Rader CJ will handle the 103 issues on, say, a method of haggling.

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  2. Ned gets it. Adding a subsequent administering step would render the claims patent-eligible, but worthless. Ned, ever notice that the claims do not specify what is indicated if the metabolite levels do not fall outside the range in the claims? This is emblematic of why these claims fail.

    Let’s say SCOTUS issues the dumbest decision in its history and affirms. How should this claim be handled:

    “A method for predicting lethal condition with no observable symptoms or treatment, comprising determining presence or absence of biomarker correlated with the condition, wherein presence of biomarker indicates condition and absence of biomarker indicates non-condition.”

    Even the patent-birthers on this board would probably agree that this claim shouldn’t be allowed, but why treat it differently than the Prometheus claims?

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  3. Anon: “Go to the version of Bilski that generated the Diehrbot phrase “Bilski 14″ (which translates to 130 S. Ct. 3218, 3230) and read page 11 of that majority opinion. For your benefit, try 130 S. Ct. 3218, 3228-3229 (the C1 majority section).”

    Thanks Anon, I went back and read Bilski as if it were the very first time I had seen it. I tried to read it completely objectively , with an open mind, and willingness to accept that whatever the decision said, it is the current law of the land. Here is what I found regarding business methods:

    (c) Section 101 similarly precludes a reading of the term “process” that would categorically exclude business methods…….

    The Court is unaware of any argument that the “ordinary, common meaning,” Diehr, supra, at 182, of “method” excludes business methods.

    Nor is it clear what a business method exception would sweep in and whether it would exclude technologies for conducting a business more efficiently. The categorical exclusion argument is further undermined by the fact that federal law explic- itly contemplates the existence of at least some business method pat- ents: Under §273(b)(1), if a patent-holder claims infringement based on “a method in [a] patent,” the alleged infringer can assert a defense of prior use.

    By allowing this defense, the statute itself acknowledges that there may be business method patents. Section 273 thus clari- fies the understanding that a business method is simply one kind of “method” that is, at least in some circumstances, eligible for patent- ing under §101.” ( Bilski)

    Okay, that is clear to me. The Court is saying, Business methods, are simply methods and processes like any other methods and processes.

    If I am correct here then Business Methods are to be judged according the same conditions and requirements of U.S.C. Title 35, as any other process.

    And finally the Court did not limit or narrow the statute, ( which is already broad) in any way that would exclude a method of doing business.

    Therefore inventions declaring themselves as business methods, or otherwise shown to be commercially applicable, or improving and advancing ways to conduct commerce or business, are statutory, providing they meet the same conditions and requirements of U.S.C. Title 35, as any other invention.

    So Anon, did I get this right or wrong?

    I would have asked Ned but don’t believe he would provide an honest answer.

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  4. Actually, Ned, it is precisely you that refuses to make intelligent arguments.

    Do you really think it intelligent to argue that a specific case (Bilski) means that all business method patents are not patent eligible? Do you reeally think it intelligent to attempt (repeatedly) to foist with your (and only your) word play between “as a category and “categorically.” as a basis for logic? Do you really think it intelligent to pretend ignorance at every point that someone wants a clear answer from you?

    Why is it that you never seem to understand enough to answer the point on “as a category” versus “categorically”?

    Why is it that you never seem to be able to answer the majority rule in Bilski when they discuss business methods as a category (the Bilski 11 rallying cry)?

    Why is it that you never seem to be able to discuss the legislative laws, as reinforced by Bilski on-point discussion of Section 273 – and the current role that the passage of the AIA – which leaves that very section intact as to business methods?

    What exactly are the “intelligent” arguemtns that you make?
    – your word-play on “categorically?”
    – your il-logic of taking the particular to classify an entire category?
    – your reliance on Benson to the exclusion of Diehr and the denial of the reality of the effect of Diehr on Benson (the now famous Bilski 14 rallying cry)?
    – your stark absence from any discussion on the legislative effects of a Congress when having the opportunity to clearly outlaw the elligibility of business method patents not doing so?

    No, good sir – it is plainly you that refuses to make intelligent arguments. It is you that feigns ignorance, that does not address the issues squarely and fairly. I have provided the pincites in Bilski according to its Supreme Court release. Please do not feign ignorance yet again. Your next reply should actually address the points raised, as I am still waiting for you to actually engage in any of these intelligent arguments.

    And to top it off, you have the audacity to post in a smug, p_ompous and condenscending manner… Are you not aware of how that comes across? Are you really that blithe?

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  5. Well, AI, historically, they were thought to be an exception.  That exception was overruled in State Street Bank.

    The Supremes, not finding BMPs excluded in the language of 101 did not categorically exclude them.  Still they did require such claims to pass traditional tests such as the MOT or some "other" test that it left for the lower courts to devise.  

    What remains telling, AI, is what they actually did in Bilski.  They held the claims before it not patent eligible.  Those claims were claims that everyone agreed were directed to a BMP.

    So what conclusion are we to draw from Bilksi?  BMPs are not in fact patent eligible.  Claims
    that otherwise pass the MOT or some other test to be devised might be patent eligible, but they will be eligible for reasons entirely unrelated to whether they have a business utility.

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  6. I will agree with you here, Anon, that the Prometheus claims would present a patentable method even if every element of the claim was old and the only new element was the changing of the dosage, actually administered to the patient, according to the results.

    I suspect the real reason for such claims that truncate before the administering step is 287(c):

    “(c)

    (1) With respect to a medical practitioner’s performance of a medical activity that constitutes an infringement under section 271(a) or (b) of this title, the provisions of sections 281, 283, 284, and 285 of this title shall not apply against the medical practitioner or against a related health care entity with respect to such medical activity.

    (2) For the purposes of this subsection:

    (A) the term “medical activity” means the performance of a medical or surgical procedure on a body, but shall not include (i) the use of a patented machine, manufacture, or composition of matter in violation of such patent, (ii) the practice of a patented use of a composition of matter in violation of such patent, or (iii) the practice of a process in violation of a biotechnology patent.”

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  7. Ned while I highly doubt you will answer, as least honestly, the question must be asked anyway. Why would the Supreme Court need to affirm so called BMP’s categorically patent eligible when they have never been declared categorically patent ineligible by any court, congress or statute?

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  8. Night, on the the reason Prometheus is wrong, I would hope you would agree that it fails the MOT regardless that the Feds say that it does not fail.

    See, e.g., In re Christensen, 478 F.2d 1392, 1396, 178 USPQ 35 (CCPA 1973) (Rich, J., concurring) (“The Supreme Court in Benson appears to have held that claims drafted in such terms are not patentable — for what reason remaining a mystery.”), overruled in part by In re Taner, 681 F.2d 787, 214 USPQ 678 (1982); In re Johnston, 502 F.2d 765, 773, 183 USPQ 172, 179 (CCPA 1974) (Rich, J., dissenting) (“I am probably as much — if not more — confused by the wording of the Benson opinion as many others.”); rev’d, Dann v. Johnston, 425 U.S. 219, 96 S.Ct. 1393, 47 L.Ed.2d 692 (1976); In re Chatfield, 545 F.2d 152, 157, 191 USPQ 730, 735 (CCPA 1976) (Nonstatutory claims are “drawn to mathematical problem-solving algorithms or to purely mental steps.”), cert. denied, Dann v. Noll, 434 U.S. 875, 98 S.Ct. 226, 54 L.Ed.2d 155 (1977)

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  9. MM cannot be Stern. MM was on PO waaaaaaay before any bigshots like Stern would have been around. Like, when it was a backwater po-dunk repository of little snippets masquerading as articles.

    Also I doubt if Stern knows jack about bio whereas MM plainly does from his comments on the subject.

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  10. NWPA, Richard is a good friend of mine. I am becoming a good friend of Malcolm, but we have not met. Even so, I do not believe the two to be the same people as I know Richard’s views on the topic.

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  11. I will agree with you that a claim that does not present a solution to a technical problem is not patentable if you will agree that a patent that does not present a solution to a technical problem is a patent that does not have a technical effect.

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  12. “On what basis? Do you mean to say that all individual steps in all claims that are parts of solutions must all and each be novel? Really?”

    Did I say that? Also note that we’re talking 101 here tardface. Not 102/103.

    The FACTS of that case are pretty ez. Factually speaking, the “problem” is that people are getting an unoptimized dosage. That is the only “problem”. To be part of the “solution” whatever given step you’re talking about at the moment must be doing something to solve that “problem”. Giving people old, and in this case unoptimized, dosages does not solve the “problem” at all, indeed, it is the definition of the “problem”.

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  13. anon, despite your whaling, it remains remarkable to see you dangle so long from that yardarm without recognizing the obvious.  The Supreme Court not only did not affirm that BMPs were categorically patent eligible, they unanimously held the BMP before it to be not patent eligible.  You seem to have a hard time accepting reality.

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  14. Max, thanks.  I was, in making my reference to BMP, refering to the UK Halliburton case.   It appears, thanks to your post, still to be tension between the UK and the EPO on this issue.

    As to the EPO's apparently being able to at the same time say that claimed invention has technical effect at the "101" stage and does not have a technical advance at the "103" stage, I will leave that to the "philosophers" of Orwell's 1984 ilk who were able to convince both themselves and the deluded masses that war is peace, freedom is slavery, ignorance is strength and that four fingers are five.

    I will leave it to AI, the Diehr Expert, Anon, Um no and assorted sockpuppets to their visions that Biksi is utopia even though the Supreme Court unanimously held
    the only BMP to ever appear for judgment before it not to be eligible patent subject matter.

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  15. MaxDrei,

    Need I remind you yet again of the US Law difference between “Useful Arts and “technical arts”?

    I know that it is a constraint that tends to silence you, but here in the US we like our discussions on US Law to be meaningfully constrained – as such.

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  16. I suppose, 6, some will say that the “solution” is the claim as a whole, undissected. But the complement of a “solution” is a “problem”. Who agrees with me, that a patentable invention is indeed a “solution” (to an objective technical problem)?

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  17. different from administering steps taken in the past in order for it to have been “part of the solution”

    On what basis? Do you mean to say that all individual steps in all claims that are parts of solutions must all and each be novel? Really?

    Hello? You have chugged the MM Koolaid on that one.

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  18. It is telling that

    Ned, it is telling that you continue to play obtuse with the clear difference in the critical terminology as captured by Um, No.:

    “As a category” simply does not mean the same thing as “categorically.”

    Go to the version of Bilski that generated the Diehrbot phrase “Bilski 14” (which translates to 130 S. Ct. 3218, 3230) and read page 11 of that majority opinion. For your benefit, try 130 S. Ct. 3218, 3228-3229 (the C1 majority section).

    Why do you persist in dragging your own name through the mud by pretending that anyone other than you is using the term “categorically” as reflected by Max Drei above?

    Please reflect once more on the Bilski decision and stop embarrassing yourself (especially as you take a p_ompous attitude that you clearly do not deserve).

    As a category, business methods are clearly patent eligible. It is the individual business methods – just like any other individual example of any other category of method claims – that must pass the test. Your attempt at stretching the logic of Bilski’s failed claims from a particualr example to cover the antier category is downright painful to witness you say (over and over again) – and I mean this from a humanitarian sense – it hurts me to see you be so f_oolish.

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  19. I’m sure it can. But it would need to, at the least, be an administering step that was different from administering steps taken in the past in order for it to have been “part of the solution”. That is, practicioners would have to give a different dosage than they did previously. But the applicant doesn’t just want to get those people, he wants to get people that think about a new thing but do the exact same administering step as they would have done 5 years before the invention. And that is because his “invention” is nothing more than new information.

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  20. 6,

    A fair argument can be made that the administering step is very much part of the solution. Just ask the sick people being transformed with that administering step.

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  21. Ned,

    Why do I get the feeling that this “I have no idea what you’re talking about” is exactly the same type of “I have no idea what you’re talking about” you excalim when pushed with categories of medical methods?

    In other words – I call BS on your protests of ignorance.

    I guess I just have to join the ranks on that. A pity really, with your good name at stake and all.

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  22. Ned,

    It is the p_ompous attitude like that, all the while you are clearly in the wrong, that earns you the enmity that you find on these threads.

    Grow up indeed!

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  23. Ned, I regret to say that I think you do not understand it right. Further, I regret that the entire debate between the EPO position and the MM position has passed you by. That might be because of the noise coming from assorted contributers like AI and anon. These contributers do get the difference (I believe) but are more interested in pinging Malcolm than in spelling the difference out clearly. Perhaps the reason is that, for many, the EPO, as a validity forum, must be air-brushed out of the landscape.

    So let me try now to explain.

    The EPC eligibility exclusions apply to the thing “as such”. Statutory exceptions are traditionally construed narrowly. A claimed computer-implemented business method necessarily requires the presence of a computer, so is more than a business method “as such”. So, it has “technical character” and so passes EPC’s 101. Manna from heaven for AI, and for MM and the English courts an abomination.

    It remains for such methods to get past the EPC’S 103. There, they fail. THe EPO practice of letting such stuff through 101 then extinguishing it with 103 is reason enough for the likes of the English courts (who cry “intellectual dishonesty”), UK litigators, MM, AI and anon to assert that the EPO’s TSM method is rubbish.

    Ned, try that explanation on for size

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  24. Well I’ll be daggon. Me an NWPA agreeing that a claim will likely be found to fail 101. However, I’m not entirely sure if an administering step would rescue the claim. Post-solution activity and all that.

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  25. Anon, the Supreme Court and the Federal Circuit seem to agree that a patent cannot be granted on "mental steps." However, a patent is not ineligible if it includes "mental steps." The real difficulty is distinguishing between the two, and I think the UK case is helpful on that issue.

    Regarding "business method patents" I think the Supreme Court punted on that issue. Bilski presented the case of whether business methods were patentable.  It is telling that they held the claims to be not that patent eligible.

    Sent from iPhone

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  26. My proediction is that the Prometheus claim without a administering step is going to be found ineligible for patentability.

    And that someday MM will be unmasked to be Richard Stern.

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  27. Max, you get it at least

    Notwithstanding the animosity from Um, No., what MaxDrei actually gets is a proper kick in the teeth.

    Um, No.’s statement of “ ‘As a category’ simply does not mean the same thing as ‘categorically.’” captures the purposeful obfuscation that Ned has been peddling throughout the many discussions on this topic. An obfuscation that Ned has never addressed, and one that impugns his character (and use of his actual name) every time it appears. To somehow think that just because an actual name is used on these blog posts, that there is some accountability and to then see this line of logic continuously used without care as to any sense of rationality is a bit mind-boggling.

    As noted, though, I doubt that neither MaxDrei nor Ned will actually change any time soon.

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  28. Ned,

    I have already indicated my agreement with that decision (See Reply Oct 13, 2011 at 11:08 AM, above)and pointed out that that decision has been laid out with substantial legal rigor.

    Importantly – and distinctively in regards to US Law, I also pointed out that US Law has a broader patent eligibility class, based on the difference between “Useful Arts” and “technical arts.” In fact, key to truly understanding the import of the UK decision is to understand the difference in US patent eligibility standards from that UK decision.

    As you read the UK decision, apply the broader US patent eligibility boundaries to the logical steps provided, and you will see what the proper understanding of US Law means to our many discussions.

    As I said above:

    Now if you take that same rigor and apply it to the US system, GIVEN that the US system has an even more broad patent subject matter regime (particularly noting that the US standard is Useful Arts and not merely technical arts) which explicitly includes software and business method patents, what, pray tell, can you come away with?

    Do tell, please!

    While my note was directed to MaxDrei (who propmptly refused to engage in a proper discussion of US Law – because I so constrained my questions to proper US Law), please feel free to provide your thoughts (which by the way would more correctly be put as you moving to my views than the other way around).

    I also note that you have not yet responded to my helpful comment on the thread about the courts simply making a rule that no matter the wording, if any claim can be entirely performed in one’s mind, then that action (the entire performance in one’s mind) cannot be infringement (and thus preserving the actual claim and the actual state of law that does allow some mental aspects to be captured in claims).

    As they say, the ball is in your court.

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  29. Max, you get it at least. While the Supremes did not categorically ostrisize BMPs, as a practical matter they did. The Bilski claims were the classic BMP. BMPs were at all patentable, those claims should have been patentable. But they were held to be not patent eligible nevertheless.

    I daresay, the Supreme Court is treading carefully here. That is why they did not adopt the Stevens view.

    Just a note, in Euroland, I suspect the Bilski claims would have held not patent eligible regardless that they were executed on a computer — that because BMPs are statutorily proscribed. Do I have this right?

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  30. Ned,

    I am mystified that you think I depend on some overturning of the Supreme Court, especially given your lack of response as noted to:

    Bilski 11
    Bilski 15
    35 USC 273
    AIA

    Quite to the contrary, your continued reliance on some position that does not square with either legislative nor case law shows where you are in this debate (and that position is not on the winning side).

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  31. anon, have you read the recent English Halliburton case? If you haven’t you should.

    If you agree with it, then, in fact, you and I agree on this issue. If you disagree with that case, tell me how.

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  32. Anon, I was struck though, that the result at the Supreme Court was the same with the MPF claims.
     
    And, no, Valmont, a Rader panel decision, did not overturn the the Supreme Court.  Your continued reliance on the likes of Rader vs. the Supreme Court shows where you are in this debate.

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  33. …but of course, this leads to one of Ned’s favorite diversions, which may now lead to a thread hijack (and I prefer my hijack attempt above)

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  34. If Ned has Shepardized his citation, he would have included the following:

    Different results reached on rehearing at:
    Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S. Ct. 6, 91 L. Ed. 3, 1946 U.S. LEXIS 1724, 1946 Dec. Comm’r Pat. 628, 71 U.S.P.Q. (BNA) 175 (1946)

    Superseded by statute as stated in:
    – Technitrol, Inc. v. Control Data Corp., 550 F.2d 992, 1977 U.S. App. LEXIS 14394, 193 U.S.P.Q. (BNA) 257 (4th Cir. Md. 1977)
    – Valmont Industries, Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1993 U.S. App. LEXIS 232, 25 U.S.P.Q.2d (BNA) 1451 (Fed. Cir. 1993)
    – Greenberg v. Ethicon Endo-Surgery, 91 F.3d 1580, 1996 U.S. App. LEXIS 20109, 39 U.S.P.Q.2d (BNA) 1783 (Fed. Cir. 1996)
    – Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 117 S. Ct. 1040, 137 L. Ed. 2d 146, 1997 U.S. LEXIS 1476, 65 U.S.L.W. 4162, 10 Fla. L. Weekly Fed. S 321, 97 Cal. Daily Op. Service 1540, 97 D.A.R. 2249, 41 U.S.P.Q.2d (BNA) 1865 (1997)
    – Clearstream Wastewater Sys. v. Hydro-Action, Inc., 1999 U.S. Dist. LEXIS 21546 (S.D. Tex. Feb. 4, 1999)
    – Frank’s Casing Crew & Rental Tools, Inc. v. Weatherford Int’l, Inc., 2002 U.S. Dist. LEXIS 27669 (W.D. Okla. July 22, 2002)
    – New Tek Mfg. v. Beehner, 270 Neb. 264, 702 N.W.2d 336, 2005 Neb. LEXIS 149 (2005)

    But such minor quibbles only show a weakness in Ned’s postion, so why include them?

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  35. Just as you will not see a substantive answer from Ned on the actual law (too bad on that really), you will not see MaxDrei stop his style of posting (even as he implores others not to be, or to be less of, a nuisance). It is after all his style, and no matter how fatuous that style is, MaxDrei cannot help himself.

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  36. let’s see some serious and grounded, proper Statutory Contruction based replies exhibiting some critical legal thinking

    No takers on this subject?

    I would really like to see someone explain the statutory construction given the (gasp) constraints of normal statutory construction canons. Please include comments on:
    – Two halfs to the statement (no surplusage).
    – “Directed to” has a large scope of meaning, but is not ambiguous.
    – This law’s supporting Congressional Record lacks the explicit and express limitations on the ban langugae that acompained previous attemtps to include similarly worded amendments.

    Am I asking too much? (I am not being fatuous, but rather, I am being earnest) Perhaps I am merely asking the wrong crowd…

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  37. I was going to add a comment to this thread, but why continue to hammer home the same points if the other side of the debate insists on putting their fingers in their ears and chanting “Stevens help me, Stevens help me, Stevens help me“?

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  38. Some here seem to think that…

    ALL business methods, without exception, ARE patent-eligible

    NO.

    This is an illicit attempt to (yet again) reframe the discussion.

    This type of rhetorical c_rap has been routinely rejected and is (once again) rejected.

    The language to be used in this discussion clearly and unequivocally is NOT ANY (_____) type of method patent without exception is patent eligible.

    “As a category” simply does not mean the same thing as “categorically.”

    If you fill in the blank (_____) above with any category, you run into exactly the same logic. For example, the threads are replete with filling in the blank (_____) with “medical.” The resulting L_i_e from Ned was that “he did not understand” what a medical method was as a category.

    All MaxDrei is trying to do here is drum up some pathetic support for the anti-patent crowd who are being decimated in the debate on this topic.

    MaxDrei – STOP the clear nuisance postings of this nature.

    This type of obvious gamemanship is deplorable, is easily spotted, and only speaks to the desparation of those who wish the law were different than what it is.

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  39. Actually I would have appreciated seeing Nedo address the AIA. Especially since he introduced the law to the discussion. Odd that he would run with his tail between his skirt before the debate could even begin.

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  40. lol You won’t find MM anywhere near this thread again. He will hide out until the next Court smack down and then limp into the discussion weeks later only to get his yearly but whuppin.

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  41. MM: AI, when the analysis includes the dissection of claims for the sole purpose of determining whether there is a transformative step or not.
    You can find the “exact quotes” yourself. In both cases, the claims were disssected and the constituent steps were analyzed to determine whether they were bona fide “transformative steps,” “mere data gathering” steps, or “mental steps” (if the latter, then 101 is not passed). ”

    Wow, MM you have taken a real beating the last few days it seems. As bloodied up as you are I almost hesitate to finish you off. But what the heck.

    MOT is a clue and therefore courts can check to see if there is a machine or transformation in the claim that will allow the claim to be patent eligible subject mater.

    However this is still required to be done with the claims as whole approach.

    Therefore if the claims as a whole are all not all mental steps they can be patent eligible subject matter.

    Therefore if the claims as a whole are transforming a particular article to a different state or thing they can be patent eligible subject matter.

    Therefore if the claims as a whole are tied to a particular machine they can be patent eligible subject matter.

    And if when using a math equation, the Machine or Transformation is extra solution activity, ( data gathering) it may not be enough to transform the equation into patentable subject matter.

    Courts are not allowed to use MOT to deny claims.

    This was established in Bilksi when the SCOTUS overturned the CAFC MOT as the sole test and relegated it back to being a mere clue to patent eligible subject matter.

    I have read the Prometheus case and no where in that case did the panel advocate using dissection, especially to deny claims, that was over ruled in Diehr.

    If you say the opposite you must present the exact quotes as requested or remain a discredited foool.

    What you and Nedo have failed to do is recognize, as the Supreme Court has, the Application of Concepts to Specific Industrial Processes that was used in Diehr to find his claims patent eligible subject matter and that this principle is still controlling and good law.

    If either of you had read and acknowledged Bilksi 14 you would know this by now.

    Further more the Federal Circuit is following the Bilski 14 ruling and applying the DCAT, as I like to call it, in cases like Research Corp, and Ultramercial.

    You can call me as many names as you want and use all the fallacious arguments in your dirty tricks book but you won’t change the facts or the law that:

    The claims MUST be analyzed as a whole.

    MOT is used only as a clue to allow and not deny

    Dissection is not allowed period.

    Deal with it!

    :: Walks over MM::

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  42. Cherio Maxie:

    What is TSM? Here in the USA there is no Constitutional or Statutory reason or requirement to discriminate against business method patents, ( whatever that is) .

    What someone posted above about Bilksi 11, 14, 273, and the new AIA is very relevant as to why it will now be extremely difficult for the courts to attempt to strike this category from processes.

    Ned has ducked those issues with good reason. In fact no one that opposes business methods can debate the issue within the current framework of existing case law and statute and win.

    And that’s just a fact.

    Good day mate!

    Reply
  43. To a man who only knows how to use a hammer, everything looks like a job for a hammer.

    So it is with MaxDrei.

    Reply
  44. Some here seem to think that (because SCOTUS declines to say that ALL business methods, without exception are NOT patent-eligible) ALL business methods, without exception, ARE patent-eligible. I await with interest to see how the SCOTUS scalpel is used, to separate patent-eligible, non-abstract, computer-implemented business method subject matter from abstract and therefore non-eligible business method subject matter.

    I suspect there is a debate going on, at SCOTUS and CAFC level, that mirrors the debate between the highest instances at the EPO and the UK, about whether the scalpel to use is 101 or 103+112.

    No wonder then, that we see the same debate here.

    In the end, it all comes down to the attitude you take to the EPO-TSM line. Therefore, those who urge TSM would be well-advised to try (with an open mind, willing to understand) how the EPO implements TSM.

    Reply
  45. I disagree with both of you. MM can think he is just prevented from doing so because of somebody’s patent.

    Reply
  46. Or is that too much for one sockpuppet to expect from another?

    I wouldn’t know. But [MM] does.

    Another day, another ruthless beating at the 101 mill.

    Reply
  47. 1) A claim directed to a Business Method is not elibible. This by statute.

    exactly what we need in the US

    Why?

    What we actually have in the US – by statute – is that Busines Methods are eligible.

    See Bilksi 11
    See Bilski 15
    See 35 USC 273
    See AIA

    See all the things that Ned has never provided answers for.

    See Ned run like a sissy girl do the cha-cha.

    Ned, do the cha-cha.

    Reply
  48. Ummm I thought the topic you were discussing was 101 subject matter eligibility. Am I wrong?

    Reply
  49. Conclusion:

    “Thus, for both inventions ‘the whole in some way exceed[ed] the sum of its parts”

    Thus in Claims as a whole analysis the purpose is to see if the claims as a whole exceeds its parts in order to allow the claim.

    Reply
  50. Part II

    12 It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook which noted that a mathematical algorithm must be assumed to be within the “prior art.” It is from this language that the Government premises its argument that if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the §101 determination. To accept the analysis proffered by the Government would, if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the Government would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e.g., Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1973); and Cochrane v. Deener, 94 U.S. 780 (1876).

    15 The dissent’s analysis rises and falls on its characterization of respondents’ claims as presenting nothing more than “an improved method of calculating the time that the mold should remain closed during the curing process.” Post,at 13-14, 209 USPQ at 16 .The dissent states that respondents claim only to have developed “a new method of programming a digital computer in order to calculate — promptly and repeatedly — the correct curing time in a familiar process.” Post,at 20, 209 USPQ at 21 .Respondents’ claims, however, are not limited to the isolated step of “programming a digital computer.” Rather, respondents’ claims describe a process of curing rubber beginning with the loading of the mold and ending with the opening of the press and the production of a synthetic rubber product that has been perfectly cured — a result heretofore unknown in the art. See n.5, supra .The fact that one or more of the steps in respondents’ process may not, in isolation, be novel or independently eligible for patent protection is irrelevant to the question of whether the claims as a whole recite subject matter eligiblefor patent protection under §101. As we explained when discussing machine patents in Deepsouth Packing Co., Inc. v. Laitram Corp., 406 U.S. 518, 173 USPQ 769 (1971): The patents were warranted not by the novelty of their elements but by the novelty of the combination they represented. Invention was recognized because Laitram’s assignors combined ordinary elements in an extraordinary way — a novel union of old means was designed to achieve new ends. Thus, for both inventions ‘the whole in some way exceed[ed] the sum of its parts.’ Great A & P Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303, 305-306 (1950). Id.,at 521-522, 173 USPQ at 770 .
    In order for the dissent to reach its conclusion it is necessary for it to read out of respondents’ patent application all the steps in the claimed process which it determined were not novel or “inventive.” That is not the purpose of the §101 inquiry and conflicts with the proposition recited above that a claimed invention may be entitled to patent protection even though some or all of its elements are not “novel.”

    Reply
  51. PART I

    In determining the eligibility of respondents’ claimed process for patent protection under §101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the <450 U.S. 189> process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter.12
    It has been urged that novelty is an appropriate consideration under §101. Presumably, this argument results from the language in §101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for patentability follow and §102 covers in detail the conditions relating to novelty.13 <450 U.S. 190> The question therefore of whether a particular invention is novel is “fully apart from whether the invention falls into a category of statutory subject matter.” In re Bergey, 596 F.2d 952, 961, 201 USPQ 352, 361 (CCPA 1979). See also Nickolas v. Peterson, 580 F.2d 898, 198 USPQ 385 (CA6 1978). The legislative history of the 1952 Patent Act is in accord with this reasoning. The Senate Report provided: <209 USPQ 10>

    Section 101 sets forth the subject matter that can be patented, ‘subject to the conditions and requirement of this title.’ The conditions under which a patent may be obtained follow, and Section 102 covers the conditions relating to novelty. S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952) (emphasis supplied).
    It is later stated in the same report:
    Section 102, in general, may be said to describe the statutory novelty required for patentability, and includes, <450 U.S. 191> in effect, the amplification and definition of ‘new’ in Section 101. Id.,at 6.
    Finally, it is stated in the “Revision Notes”:
    The corresponding section of [the] existing statute is split into two sections, Section 101 relating to the subject matter for which patents may be obtained, and Section 102 defining statutory novelty and stating other conditions for patentability. Id.,at 17.
    See also H.R. Rep. No. 1923, 82d Cong., 2d Sess. (1952), at 6, 7, and 17.
    In this case, it may later be determined that the respondents’ process is not deserving of patent protection because it fails to satisfy the statutory conditions of novelty under §102 or nonobviousness under §103. A rejection on either of these grounds does not affect the determination that respondents’ claims recited subject matter which was eligible for patent protection under §101.

    We have before us today only the question of whether respondents’ claims fall within the §101 categories of possibly patentable subject matter. We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula. We recognize, of course, that when a claim recites a mathematical formula (or scientific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract. A mathematical formula as such is not accorded the protection of our patent laws, Gottschalk v. Benson, supra, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v. Flook, supra. Similarly, insignificant post-solution activity will not transform <450 U.S. 192> an unpatentable principle into a patentable process. Ibid.14 To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection. On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of §101. Because we do not view respondents’ claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process <450 U.S. 193> for the molding of rubber products, we affirm the judgment of the Court of Customs and Patent Appeals.15 <209 USPQ 11>

    Reply
  52. MM is like a giddy lil hamster on his treadmill. Happy but going nowhere fast.

    Reply
  53. Hello Ned:

    Why do you think Halliburton would make a better controlling case than Diehr for 101 subject matter?

    And from the looks of recent cases, with the exception maybe of Cybersource, it seems the Federal Circuit is trending towards Diehr’s application of concepts to specific industrial processes, for 101 analysis.

    Reply
  54. MM: What is the point of continuing to copy and paste the exact paragraphs and quotes from Diehr that answer your question if you are simply going to ignore them?

    One would have to be insane to participate in your treadmill games. However if you think you have some clever retort up your sleeve( delusional people often do) that discredits the Diehr majority just come out and say it.

    And while you are at it how about addressing the following substantive points made by the commenters on this blog regarding your proposition, which all clearly see as nothing more than dissecting claims.

    Cite one case in which a person was successfully sued for merely thinking about a patent.

    Prove that any patent claim has, or ever will actually prevent anyone from thinking a new thought.

    Explain how you propose taking the claims as a whole while at the same time using individual elements in the claims as the basis for denying an applicant his patent.

    Reply
  55. I will now disagree with you anon. MM does try very hard to think. He is just not very good at it.

    Reply
  56. Actually, Malcolm, the Halliburton decision, link to bailii.org, is so good as to make one want to cry. Why can’t we have jurists in the US who parse prior decisions in this way? Learned Hand one did, and Rich to an extent.

    The decision is exactly what we need in the US. from the case, we learn:

    1) A claim directed to a Business Method is not elibible. This by statute.

    2) A claim that ends in a mental step is not patent eligible. (The discarded In re Christensen case, now resurected in Classen.)

    3) A claim that includes a mental step, but that ends in step that has a technical effect (read MOT) is patent eligible.

    4) A claim to math or programming expressly limited to execution on a computer is not unpatentable as a mental step.

    5) A claim that can only be executed on a computer regardless that it is not so expressly limited is not unpatentable as a mental step.

    We see the Federal Circuit law trending in this direction. Prometheus is the sole, but jarring exception.

    Reply
  57. Do you think that you are fooling anyone?

    That would require “thinking,” something MM tries not to do.

    Reply
  58. Actual Inventor,

    Shhh – he knows we know that he knows we know he knows.

    But if he lets on that he knows we know that he knows we know he knows, then he would have to stop trolling the subject, and he is not yet ready to have to think about what else he can troll.

    You know?

    Reply
  59. AI: already explained that at Oct 13, 2011 at 03:56 PM in this thread.

    MM: No, you didn’t.

    AI: Well, if what you insist on doing is playing a game of saying my explanation is not an explanation then there can be no dialog and the debate can’t continue. Of course if you had any courage at all you would at least explain why my explanation was not an explanation, or preferably why you disagree with my explanation and offer your own rebuttal. But that would require some rational and logical thinking on your part. So we all know that won’t happen.

    This little game of yours is just a ruse to distract from the fact your dissection proposition has been exposed by more than one commenter as illogical, illegal, and just plain d-u-m-b.

    To date you can’t cite one case in which a person was successfully sued for merely thinking about a patent.

    To date you have failed to prove that any patent claim has, or ever will actually prevent anyone from thinking a new thought.
    .
    To date you have failed to explain how you propose taking the claims as a whole while at the same time using individual elements in the claims as the basis for denying an applicant his patent

    Reply
  60. I find your style of posting rather disengenuous MM.

    You use lulz but say you wouldn’t know wha tit means. You have been hammered day after day on the substantive points, but cling to some obviously pedantic view of non-dissection. You have clearly admitted that you woudl have sided withthe dissent in Diehr, which all but signifies that the actual law goes against your beliefs, and yet want everyone to believe that your beliefs are in accordance with law.

    Do you enjoy spinning around and around so? Do you think that you are fooling anyone?

    Reply
  61. What exactly does Lulz mean when you are getting hammered on all the substantive points?

    I wouldn’t know. But AI does.

    Can you help him out? Do you understand what is the “exact kind” of dissection that is “expressly prohibited” in Diehr? If so, can you let us in on the big secret? Then we can see if the majority in Prometheus ignored the “express prohibition.”

    Reply
  62. A – We’re working on this. There are several problems that are leading me to think that we need to move away from typepad servers and to a new blog hosting service.

    Reply
  63. What exactly does Lulz mean when you are getting hammered on all the substantive points?

    Reply
  64. Hey sockie – do you know the “exact kind” of dissection that was “expressly prohibited” in Diehr?

    Your BFF Actual Inventard seems incapable of providing an answer. Can you help it out? Or is that too much for one sockpuppet to expect from another?

    Lulz.

    Reply
  65. I already explained that at Oct 13, 2011 at 03:56 PM in this thread.

    No, you didn’t.

    What is the “exact kind” of dissection expressly prohibited in Diehr? I’ve read Diehr. My understanding of what Diehr prohibits is very different from yours, AI (the fact that you need to be reminded of this illustrates once again the shallowness of your intellect and/or your habitual dishonesty).

    What matters, AI, is your understanding of the “exact kind” of dissection “expressly prohibited” in Diehr. When you can articulate what this “exact kind” of dissection is, I’ll be happy to provide you with the quote from Prometheus (or not — it may not be there, depending on your answer to the question).

    I’m laughing my axx off, by the way, at your inability to explain a single comment relating to your favorite case of all time.

    Please inform us all: what is the “exact kind” of dissection “expressly prohbited” by Diehr?

    Reply
  66. Jason,

    This comment is not in reply – but is placed here to give notice that this thread is starting to malfunction (related to the “show more comments” script).

    This is not an issue with your post per se, but has happened on several Patently-O threads, notably when the thread comment count goes over two hundred.

    It might be nice to correct/prevent this from happening and losing comments (although some may see that as a blessing).

    Reply
  67. I already explained that at Oct 13, 2011 at 03:56 PM in this thread. If you still do not understand read foot note 12 in Diehr.

    Reply
  68. Actual Inventor,

    Whether or not Ned “goes for this” may depend on a couple of factors:

    1) whether Ned thinks or simply responds to the messenger.

    2) what level of Supreme Court sanction Ned attributes to several “philosophies” of patent eligibility that were explicated in the dissent in Diehr – note, Ned has requested a showing in the majority opinion of Diehr, but neglects to realize that no such showing is required, as the actual “philosophies” were never Law to begin with, and thus there exists no need for such showing in a majority opinion to dispense with a non-law.

    3) whether Ned sees this as a viable way of both integrating actual law with the FACT that claims can (and always have been able to) incorporate elements or steps involving human thought.

    We can only see if Ned thinks and ponders on this, or reacts abruptly (keep in mind that several of Ned’s posts on this thread do break from the radical MM’s influence).

    Reply
  69. “The language of specifically reciting machines in patent claims is surely pretty well developed by now.”

    Oh really? Care to provide an example?

    “Besides, the fact that a claim literally covers subject matter which the patentee has no right to enjoin has always been a perfectly good reason to invalidate the claim.”

    Except Diehr claims as a whole gives the patentee the right.

    Reply
  70. Hey AI’s Dear Diehrist! Glad to see you staying vigilant. Don’t think the likes of MM can even save the words Bilski 14, let alone deal with it’s law.

    ! ! ! Bilski 14 ! ! ! Baby!!!

    Reply
  71. Thank you for your (non)contribution to a resolution IANAE.

    In your haste, you quite miss the point that the item being claimed is still what should be claimed. There is no real change to any such invalidating for claiming over what one has a right to do.

    I offer a solution that merely removes the ridiculous “intepretations” that the hobgoblins of little minds seem to get stuck on.

    If you too are stuck, well…

    Reply
  72. An intellectual coward and troll like MM will never go away. However you are right, there is no way something like that would be upheld by the Courts and it’s just a ridicules proposition for eliminating process patents. I don’t think even Ned would go this fa.

    Reply
  73. Anyone with half a brain would realize that the language of claims tends towards the “personification” of actual machines merely because language itself is not perfect.

    The language of specifically reciting machines in patent claims is surely pretty well developed by now.

    Besides, the fact that a claim literally covers subject matter which the patentee has no right to enjoin has always been a perfectly good reason to invalidate the claim.

    Reply
  74. Should read:

    This way, all human actions totally within the human mind are protected

    Reply
  75. Actual Inventor,

    This is also something very easily rectified by the courts who can hold any such (bizarre) reading of a patent claim to be non-enforceable grounds of constitutional rights.

    There simply is no reason to use such a weak strawman to eliminate an entire category of patent eligible subject matter. Anyone with half a brain would realize that the language of claims tends towards the “personification” of actual machines merely because language itself is not perfect.

    Real easy answer: Allow any such claims as is and simply hold that any and all “infringements” that are solely (or completely) performed in the human mind are not infringements per law. This way, all non-human actions within the human mind are protected and maybe Malcolm will simply just go away (not likely, but one can always hope).

    Reply
  76. MM:One such feature is addressing the following question: does the claim have the practical effect of preventing an otherwise non-infringing actor practicing the prior art from thinking about a “new” fact?

    This has been exposed as a pure BS straw all up and down this thread.

    You can’t cite one case were someone was successfully sued for merely thinking about anything!

    Reply
  77. Your question has already been answered and debunked in this thread by more than one commenter.

    Now how about citing one case were someone was successfully sued for merely thinking about a patent.

    ::The usual silence::

    Reply
  78. I will disagree with you Actual Inventor.

    Not all 30,000 patent professionals are laughing at MM.

    Some are ignoring him completely – just too busy with actual real work to even give his rantings a first look,
    some are weeping at his delusions,
    some are wondering which job at the Office allows him such time to relentlessly post such crrp,
    some are angry at the induced disrespect for blogs and other such “scholarly” sources of patent “Wisdom” that MM’s rantings and delusions produce, and
    some are wondering where the waitress has disappeared to (my coffee needs re-filling).

    Also, there are a select number of “patent professionals” out there dedicated to destroying patents (thankfully this fringe element is rather small). Yes, there are all kinds in this world.

    Reply
  79. You know, just because Malcolm doesn’t agree with Colin’s decision doesn’t mean that Colin must be deluded.

    Careful MaxDrei, such sacrilege will make you into a (gasp) memeber of the sockpuppet club, because, after all, the number of people that diasagree with his (self-appointed) highness must be a minimum.

    Reply
  80. Yet another thought. The UK is one of forty or so EPC countries in which the EPO is the final instance when patents are revoked, post-issue, in opposition proceedings. So, for England (part of an offshore island called Great Britain, to characterize the well-established, by now unassailable, EPO line on obviousness as “special” is a bit like The London Times when, a hundred years ago, it reported on its front page: FOG IN THE CHANNEL: EUROPE CUT OFF.

    So, you might indeed be right Malcolm.

    Reply
  81. One more thought: perhaps you are right Malcolm, after all. Perhaps they are indeed deluded.

    At para 79(iii) Judge Birss notes:

    “The EPO’s approach to patentability goes hand in hand with a special approach to inventive step”

    He’s actually referring to the EPO’s special approach to patent-eligibility, and its being the complement of the EPO’s special approach to obviousness.

    If the English judges are deluded still, it is in supposing that they can go on indefinitely maintaining their own peculiar line on 101 and 103 issues, different from the by now unassailable line worked out by the EPO over the last 30 years.

    Reply
  82. MM you write that Halliburton is Europe’s State Street. But have you read the Halliburton case yet, including the claim in suit?

    Here’s the link:
    link to bailii.org

    The claimed method is one of designing a drill bit, involving multiple iterative steps of designing, simulating drilling, re-designing and re-simulating. In the end is a new manufacture, a vendible product, a useful drill bit design. The method manifestly can’t be carried out by the human brain, paper and pencil but only by a computer. Intuitively, it’s promoting the useful arts. It’s fit for patenting, isn’t it?

    What is it exactly that England’s “deluded” “suckas” of patent judges are going to “learn”, as a result of this decision, now that the UK PTO has announced it is not taking it on appeal? I’m curious.

    England has many deep-seated and historically long-standing social problems, I grant you, but “deluded” patent tribunals is not one of them. You know, just because Malcolm doesn’t agree with Colin’s decision doesn’t mean that Colin must be deluded.

    Reply
  83. “I’m sure just about everything looks like “the antithesis of the Diehr Courts majority” analysis when viewed throughed the grimy stem of your crackpipe.”

    Is this the best you can do?

    Whatever position you side with it is a fact that the majority in Diehr viewed Steven’s dissenting minority opinion as representing nothing more than claim dissection.

    :: The Sound of 30,000 patent professionals laughing at MM::

    Reply
  84. if you have the exact quote from Prometheus, where the court is advocating the exact kind of dissection expressly prohibited in Diehr please cite it.

    LOL. What is the “exact kind” of dissection prohibited in Diehr?

    Reply
  85. On the other hand Steven’s Flookian dissection analysis is the antithesis of The Diehr Courts majority claims as a whole analysis .

    I’m sure just about everything looks like “the antithesis of the Diehr Courts majority” analysis when viewed throughed the grimy stem of your crackpipe.

    Steven’s Flookian dissection analysis methodically cuts ups claims, and the invention itself in order to leave it lifeless and destroyed.

    Sounds like one of those old Liquid Plumber ads.

    In the end there is plenty of patent blood left on the PTO Office floor.

    Maybe Dennis should consider contacting the FBI. You know: just in case.

    link to thepriorart.typepad.com

    Reply
  86. “To sum the matter 822*822 up, we think Walker’s apparatus patent No. 2,156,519 gives him all the protection his inventive genius entitles him to.”

    Indeed. The UK’s Halliburton case appears to be Europe’s version of State Street. Live and learn, suckas. Live and learn.

    The UK has much bigger problems, of course, then their deluded patent tribunals. Nothing that more “austerity” can’t solve, though … right?

    Reply
  87. ” Diehr seems rightly decided even for claim 11, because the infringement was not in thinking the Arrhenius thoughts, but in doing something with the result.”

    Ned,

    Seems you have changed your position and for the better. If so we are in agreement then on Diehr.

    But you do know MM is going to be very up set with you.

    Reply
  88. MM: “From my perspective (i.e., from the perspective of one who is freely practicing the prior art), how is this result any different than if I had been sued for “Doing the Arrhenius equation in your head?”?

    AI: Well, you don’t have to be a Diehr Expert to know the answer to this. If you performed all the steps in the claimed process in conjunction with the Arrhenious equation you will be sued. But if all you are doing is performing the Arrhenius equation in your head you wont be sued. Therefore you are free to do the Arrhenius all day and all night to your endless delight!

    MM: The Court in Diehr did not address the issue we are discussing.

    AI: Oh really? I quote Diehr “In contrast, the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to pre-empt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process” (Diehr)

    BTW, from the looks of it, even Ned at this point does not agree with you. First September, now this… things are looking bad for you MM.

    Reply
  89. I do not imagine I am a lawyer. But I am an Actual Inventor, and for the moment can look at claim 11 below as if it were my own invention.

    If the alleged infringer was performing step (g) in his head, ( say he is Rain Man) I would still sue him for patent infringement. Of course Rain Man can perform Arrhenius in his head all day long, and with any other process he likes and I won’t care, but not with my process in the order of the steps in Claim 11. That is my exclusive domain that I have earned the right to preclude others from performing.

    Now if you are asking how I would prove infringement, well that would be up to my attorneys. I am sure it is not impossible because even I can think of ways to get the evidence. For example, by affidavit from other employees at the plant that swear Rain Man was specifically hired and instructed to perform the Arrhenius equation in conjunction with all the other steps in my claim.

    Maybe my clever and skilled attorneys could even get Rain Man himself to confess as much on the stand, under oath, and penalty of perjury.

    Even if he denies it there are still records for employment, witnesses, and the fact that the company can’t explain any other method for curing the rubber.

    Like I said that’s the job of my attorneys and I will make sure I get the best!

    11. A method of manufacturing precision molded articles from selected synthetic rubber compounds in an openable rubber molding press having at least one heated precision mold, comprising:

    (a) heating said mold to a temperature range approximating a predetermined rubber curing temperature,

    (b) installing prepared unmolded synthetic rubber of a known compound in a molding cavity of a predetermined geometry as defined by said mold,

    (c) closing said press to mold said rubber to occupy said cavity in conformance with the contour of said mold and to cure said rubber by transfer of heat thereto from said mold,

    (d) initiating an interval timer upon the closure of said press for monitoring the elapsed time of said closure,

    (e) heating said mold during said closure to maintain the temperature thereof within said range approximating said rubber curing temperature,

    (f) constantly determining the temperature (Z) of said mold at a location closely adjacent said cavity thereof throughout closure of said press,

    (g) repetitively performing at frequent periodic intervals throughout closure of said press integrations to calculate from the series of temperature determinations the Arrhenius equation for reaction time of said rubber to determine total required cure time v as follows:
    1n v=cz+x
    wherein c is an activation energy constant determined for said rubber being molded and cured in said press, and x is a constant which is a function of said predetermined geometry of said mold,

    (h) for each repetition of calculation of said Arrhenius equation herein, comparing the resultant calculated total required cure time with the monitored elapsed time measured by said interval timer,

    (i) opening said press when a said comparison of calculated total required cure time and monitored elapsed time indicates completion of curing, and

    (j) removing from said mold the resultant precision molded and cured rubber article.

    Reply
  90. And why are you so insistent that a machine be required?

    Reply
  91. Anon, I know.

    But observe this, the claim requires the egg to be boiled a different time according to altitude, based on a formula. Infringement can be proved by measuring the time vis altitude. I am not so sure that the only thing new in the claim is a mental step.

    The point of this may be that one does not infringe simply by thinking of something, but by doing something. This is a new process.

    If the alleged “mental step” is actually used to do something new, I think the infringement is in the doing, not in the thinking.

    The contrary is true if the last step or steps are mental, for no further action is required to be taken. Here, the only way one infringes is if one performs the mental steps. But one should not be able to sue somebody for merely thinking. They have to do something, something practical.

    Diehr seems rightly decided even for claim 11, because the infringement was not in thinking the Arrhenius thoughts, but in doing something with the result.

    Reply
  92. If the steps have to be performed period they are not mental. That is a fact.

    Reply
  93. AI, It was the way the Rich CCPA did away with the “mental steps” doctrine once upon a time. If it can be performed by a machine, it was not mental.

    The better formulation is this:

    If the steps have to be performed by a machine because of their nature, i.e., complexity and speed, they are not mental. Just that the could be is not enough.

    Reply
  94. Because, Halliburton is a leading case on mental steps in the US as well. See my post above where I quoted extensively from the US case:

    “In substance, Walker’s method here claimed consists in setting down three knowns in a simple equation and from them determining or computing an unknown. The three knowns are: (a) the distance from the well head to the tubing catcher (for example); (b) the length of time it takes an echo to return from that obstruction; and (c) the length of time it takes an echo to return from the fluid surface. From these three knowns can then be determined the distance of the fluid surface from the well head.

    We think these mental steps, even if novel, are not patentable. Cf. Don Lee, Inc. v. Walker, 9 Cir., 61 F.2d 58. A patent may be obtained only upon an invention of a “new and useful art, machine, manufacture, or composition of matter.” 35 U.S.C.A. § 31. As said in Cochrane v. Deener, 94 U.S. 780, 788, 24 L.Ed. 139: “A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art.” Cf. also Corning v. Burden, 15 How. 252, 267, 14 L.Ed. 683.

    It must be remembered that this is purely a method patent. No apparatus is claimed. Given an apparatus for initiating an impulse wave in a well and a means for differentiating between and for recording echoes returned from obstructions in it, anybody with a rudimentary knowledge of arithmetic will be able to do what Walker claims a monopoly of doing. If his method were patentable it seems to us that the patentee would have a monopoly much broader than would the patentee of a particular apparatus. To sum the matter 822*822 up, we think Walker’s apparatus patent No. 2,156,519 gives him all the protection his inventive genius entitles him to.”

    link to scholar.google.com

    Halliburton Oil Well Cementing Co. v. Walker, 146 F. 2d 817 – Circuit Court of Appeals, 9th 1944″

    Reply
  95. anon you are so right on with this post. Ned knows better but he does not give a da m. He enjoys enabling the clownish antics of MM . The way they hijack these threads and spew bad law is an insult to the intelligence of the 30,000 Patent Professionals that are supposed to be reading here.

    I mean seriously. They are discussing…

    Point of Novelty test?

    Mental Steps Doctrine?

    Steven’s dissents???

    Computers are not patentable subject matter????

    And this is what you see when you log on to Patently O!

    What a waste of everyones time.

    Reply
  96. I think all that matters is that…

    Ned, this does not square with your other posts. Do you really mean that “all” that matters is…?

    Reply
  97. AI: Analysis does not equate to dissection. But if you have the exact quote from Prometheus, where the court is advocating the exact kind of dissection expressly prohibited in Diehr please cite it.

    AI: Can you provide the exact quote from Classen where the court stated they had dissected the claims?

    MM: You can find the “exact quotes” yourself.

    AI: In other words, they don’t exist. And once again when challenged to provide evidence for your statements, you fail.

    AI: Analysis does not equate to dissection.

    MM: LOL. Analysis does equate with disssection,

    AI: There is a difference between the Diehr Courts claims as a whole analysis and the Stevens/Flookian dissection analysis which you rely on for your own propositions.

    Both start out on the same path, with detailed examination of the elements of a claim, as a basis for discussion and interpretation. But this is where the simIlarities end and the two approaches take different forks in the road.

    In the Diehr Courts majority claims as a whole analysis everything has been considered in determining that claims “are” patent eligible subject matter. Nothing is excluded. This includes mental steps, physical steps, old steps and the like.

    The Diehr Courts majority claims as a whole analysis is therefore inclusive and supports a broad scope for 101 patentable subject matter. In the final analysis the claims achieve agglutination to form patent eligible subject matter.

    On the other hand Steven’s Flookian dissection analysis is the antithesis of The Diehr Courts majority claims as a whole analysis .

    Steven’s Flookian dissection analysis methodically cuts ups claims, and the invention itself in order to leave it lifeless and destroyed. Old/novel steps are not given patentable weight. This practice of dissection is not limited to old steps or even 101 analysis. Mental steps, critical feature steps, sissy steps, or any other pejorative label for discriminatory acts you can think of can be all be dissected out of the claim at any step of the statutory process, be it 101, 102, 103 or 112. Steven’s Flookian dissection analysis is discriminatory in nature and has the sole purpose of denying patent claims. In the end there is plenty of patent blood left on the PTO Office floor.

    Such a narrowing discriminatory approach does not promote the progress of the useful arts. It impedes it. This why we have the Analysis of the type used by the majority in Diehr and it is what every court and examiner is required by law to do. Indeed the very purpose of the claims as a whole analysis is the culmination of ideas to form an invention.

    Reply
  98. Note below that MM has provided a sense reciprocity:

    Thanks, Ned. I see where you’re going and I’m happy to follow. I don’t believe it’s directly relevant to the specific issue I’m addressing here. Let’s table it for a subsequent thread where the air isn’t fouled up by sockpuppet sweat.

    That smell isn’t sweat, nor is it eggs (at least not boiled eggs) and it certainly does note come from any “sockpuppets.”

    That’s the smell of MM flapping as usual.

    Reply
  99. Thanks, Ned. I see where you’re going and I’m happy to follow. I don’t believe it’s directly relevant to the specific issue I’m addressing here. Let’s table it for a subsequent thread where the air isn’t fouled up by sockpuppet sweat.

    Reply
  100. As pointed out out to you repeatedly, AI, nobody can “prove” to you that 2+2=4 if you refuse to believe it (or admit it).

    Sticking your fingers in your ears and covering your eyes does not change the fact that I have presented the proof. If you choose not to explain where my reasoning is incorrect, that is your failure, not mine. Stating over and over again that I am wrong merely because my conclusion offends your childlike sensibilities is not persuasive and, again, represents a failure on your part (and on the part of your sockpuppet friends).

    I urge you to take the issue up with your Supreme Leader. While you’re at it, you can ask his highness if a claim in the following form is patent eligible in view of Diehr. Breathing, of course, is a transformative step.

    1. A method of breathing while thinking, said method comprising:

    (1) [novel, non-obvious, useful mental step] and

    (2) taking a breath, wherein said taking a breath occurs at least once every 52 seconds, wherein said taking a breath comprises inhaling O2, and wherein at least one molecule of O2 was produced by a plant.

    Try not to sweat too much while thinking about the answer and what that answer means for the “credibility” of your mantra. Or, feel free to keep digging. I can always use the laughs.

    This is just one of the straightforward questions I’ve presented to you that you’ve dodged. Again: your failure, not mine.

    My proof stands on its own. How do I know that? Because there are no errors in the reasoning. None that you or your sockpuppet friends have been able to point out anyway.

    Reply
  101. anon, I did answer your question. I pointed out that the MAJORITY in Diehr did not decide that a process where the novel step lay in a mental step was patentable.

    The majority did not think it was dealing with a mental step, but with a programmed computer that had a useful application. Even claim 11, which was not expressly limited to a programmed computer, as a practical matter could NOT be performed by other than a programmed computer in context.

    Now turning to the dissent, the dissent noted that it was the CCPA that “overturned” the mental steps doctrine. The Supreme Court did not do that.

    Repeating, nothing in the MAJORITY of Diehr seem to suggest that it considered the claims to cover purely mental steps.

    However, if I am wrong in this, please point it out.

    Reply
  102. AI: No video is needed. All you need is an actual case were someone was successfully sued for merely thinking about a patent. Just saying over and over that you have already proved it, without citing the case does not make it so.

    Reply
  103. how do you prove someone is doing the math in his head if he does not admit it?

    My guess is that you’d want to see a pattern of conduct (e.g. multiple iterations of the process) with results (timing of the final step, new dosage chosen, etc.) that correlate with having done the math, where such correlation is absent in the prior art (otherwise the claim is inherently anticipated).

    Reply
  104. I agree.  Look at my boiled egg example.  I think all that matters is that the process be done with the novel time offset. 

    Sent from iPhone

    Reply
  105. Actual Inventard:

    MM: You are aware that in the process of invalidating that claim, the claim was “dissected” and the transformative step was ignored?

    AI: No I am not. Can you provide the exact quote from Classen where the court stated they had dissected the claims?

    MM: You are aware that the same analysis was used in Prometheus (although a different conclusion was reached)?

    AI: Analysis does not equate to dissection.

    LOL. Analysis does equate with disssection, AI, when the analysis includes the dissection of claims for the sole purpose of determining whether there is a transformative step or not.

    You can find the “exact quotes” yourself. In both cases, the claims were disssected and the constituent steps were analyzed to determine whether they were bona fide “transformative steps,” “mere data gathering” steps, or “mental steps” (if the latter, then 101 is not passed). All of Prometheus’ claims were found to pass (for unclear reasons that were not distinguishable from prior CAFC cases reaching the opposite conclusion based on virtually identical facts) while at least one of Classen’s claims did not.

    Reply
  106. MM: “claims which effectively preclude otherwise non-infringing actors from thinking certain thoughts are patent eligible.”

    AI: And you have never proven that such is even possible.

    Yes, I have proven that it’s possible, AI, over and over again, and I’ve provided examples of lawsuits that were based on the theory. You simply refuse to acknowledge that it’s been proven. Big difference.

    At some point, you’re going to end up asking me to provide you with a video of someone being found guilty of infringement. And then you’ll say that “it could have been doctored so it proves nothing.”

    Again: you’ve got the brain of a creotard. How much time do you spend at Answers in Genesis anyway?

    Reply
  107. Night, I think the divide is twofold:
     
    1) Whether a novel MOT is claimed.  If so, the presence of mental steps possibly can be ignored with one exception, and that is if the claim ends in mental steps as a final step or steps.  Then the MOT part of the claim is really doing no more than data gathering.  The infringement is in the calculation and that is NOT limited to doing something physical, but something mental.
     
       –  I thing the Walker case is just this.  The old steps, inducing acoustical waves in the pipe, were deemed data gathering in the claimed method that ended in calculation.
     
    2) If the claim  is to
    something that does not pass the MOT or an old MOT with new, potentially mental, steps — this, because they are not expressly limited to execution by a machine — the queston becomes whether those steps have to be, because of their nature, performed by a machine.  I think of complexity and speed as necessary requirements here.
     
    Regarding information processing, I think the latter test is what you are looking for.  If the nature and complexity require the processing to be conducted only on a machine, the claim really does not involve mental steps.
     
    Performance by a human is, by itself, not a critical determination.  If the method otherwise passes the MOT, with the  one exception, it is physical enough.  If it doesn't, or it is an old MOT, the question become number 2.  Does it require a machine to
    execute so as to precluded execution by a human brain?
     
     

    Reply
  108. that is one of the best capitulations I have ever read on these boards.

    Reply
  109. First off, I’m impressed that the Halliburton (no drollity intended) decision has been detected and read. Thanks for that.

    Second, I suppose then that (for its logic, you understand) it might be of interest to those who make the law in the USA.

    Third, I note the caveats you impose on me. They render me incapable of offering you a response that will satisfy you (or me). I’m not going to get drawn into any “discussion” with you. Look what happened last time.

    Why is “Halliburton” droll. I don’t understand that either.

    Reply
  110. MaxDrei,

    I am glad you brought up that decision, which I found to be laid out with substantial legal rigor (and yes, I agree with His Honour Judge Birss’ decision and rationale).

    Now if you take that same rigor and apply it to the US system, GIVEN that the US system has an even more broad patent subject matter regime (particularly noting that the US standard is Useful Arts and not merely technical arts) which explicitly includes software and business method patents, what, pray tell, can you come away with?

    Do tell, please!

    (and yes, I notice the droll humor in the Halliburton name involvement)

    Reply
  111. I wonder if the reasoning in last week’s UK court Decision “Halliburton” is of interest, in the context of Classen, Prometheus etc. The English Decision contemplates the “mental act” patent eligibility exclusion under European patent law. It explains the two approaches, broad and narrow, to the implementation of the statutory exclusion. The judge described the subject matter in suit as a method of designing a drill bit (no manufacturing required). Does one in any sense “design” a dosage regime, I wonder.

    Reply
  112. Ned,

    Having “mental steps” in claims is not new, nor, as far as I can tell in the real world all that controversial.

    How are current cases of infringment with existing mental steps in claims proven? Wouldn’t the same mechanism apply?

    Reply
  113. Ned, I think the Walker case is very interesting for understanding the current debates. I think that Walker is best understood as an enablement issue. The court is saying that you did come up with a method that appears novel, but to allow you to claim the method as such would give you too broad protection for all the different types of machines that could be used to perform the method. Interesting. Probably the right conclusion given the situation.

    However, for information processing methods on a computer, the situation is not that the main point of interest is all the different types of machines that can be used to perform the method, but the method itself that is often times performed on a general purpose computer, whose beauty and wonder is lost to most courts, but not CJ. Rader.

    So, the situation is different and it points to some of the reason that Justices Douglas and Stevens simply did not understand the modern information processing. Their model of a “mathematical” method was based on the day of Walker, which is before the modern information revolution was understood.

    Note as well that in some ways Walker does not square with Deener as in Deener the court permits a method of processing grain and says the focus is on permitting the method and the machines to implement the method are not important. And, note that horrors of horrors that the method in Deener could be performed by a human being who would then be infringing the method in Deener.

    Good stuff.

    Reply
  114. Poor sockie needs a history lesson. I’ve been presenting this analysis for well over a year (maybe three years?) and I’ve never folded because I’ve never needed to.

    MM,

    Your delusional state and obstinacy does not change the fact that you are wrong. Three years, five years, a hundred years…. It. Does. Not. Matter. You are in a hole and your answer of “keep digging” will not get you out of that hole.

    Your lack of actual critical legal thinking remains your downfall. Your lack of ability to objectively view the real issue continues unabated.

    How very sad.

    Reply
  115. Ned you completely ducked and evaded what are some good and pertinent questions by anon. I would have appreciated you trying to “honestly” address them.

    How can that be? Ned uses his real name and thus is somehow more “accountable” than those who do not, right?

    /off sarcasm

    Sorry – I can only hope for an actual answer, I cannot make this horse drink from the well that he has been led to. Just as he chooses to align with the views of Malcolm, Ned chooses to ignore those points just a little too “inconvenient” for himself. Shall I point out the list of case law and statutory law (once again) that Ned has never addressed (and yet finds the time to continuously ploy his stale theories)?

    I wonder what this “use a real name” accountability is good for, if Ned cannot answer fully and truthfully. It does not appear to have any value – if anything, and as I have noted, it appears to have a negative value: Dennis’ real name being negatively impacted in a court of law.

    Reply
  116. As has been noted – Ned will not (cannot) take the Pop Quizzes offered.

    That might involve actually facing the inconsistencies of a pet theory of his and (shudder) misalign the Ned-MM front.

    Reply
  117. Your concern is noted.

    I wonder if Dennis also notes it. And notes the disregard you have for any common courtesy.

    Reply
  118. AI, imagine you are lawyer who needs to prove infringement.  The patent has a claim like Diehr's number 11.  Imagine that you sue someone who is doing all the old elements of Diehr's claim 11, but you assert that he is using the novel mathematics in his head, just because he read your client's patent.
     
    Suppose he denies it.
     
    Now, how do you prove your case?

    Reply
  119. How do you propose taking the claims as a whole while at the same time using individual elements in the claims as the basis for denying an applicant his patent?

    Reply
  120. MM: all every inventor has to do is choose a non mental or non novel/old step in their process as the so called critical feature, and they beat you every time

    It’s not surprising that a pathological l-i-a-r such as yourself would propose such a strategy and believe that it works it “every time.”

    AI: It is the “Actual Inventor” that has the expertise, indeed the obligation to determine any so called critical feature of his/her invention. So there is nothing dishonest about that.

    You on the other hand propose calling any mental step, or old step the critical feature ( whether it is or not) and then arbitrarily declaring the invention patent ineligible without any authority, expertise, or sound logical basis for your decision. And you call me a l iar?

    On top of this you want free reign to use this discriminatory, and disenfranchising policy to take away the Actual Inventor’s natural right to defend and define his/her own invention and make a case for it’s patentability. And you call me pathological?

    You have out done yourself.

    Reply
  121. Ned you completely ducked and evaded what are some good and pertinent questions by anon. I would have appreciated you trying to “honestly” address them.

    Hmmmm… nonetheless this was not the question before the Diehr court. All the individual elements in Diehrs invention were old. And yet Diehr stilled received his patent. And do you know why?

    1. The majority did not allow the dissection of his claims. Much to the Chagrin of Steven’s whose dissent you rely on.

    2. The exalting of the “application of concepts to industrial processes” as the controlling analysis for 101 subject matter.” Or what I like to refer to as DCAT for Diehr Concept and Application Test.

    Reply
  122. MM:”The issue I’m discussing concerns the fact pattern where the only novel step(s) in the claim are mental and the non-mental step(s) in the claim are old. In that case, a clear 101 issue is presented because the claim effectively prevents practitioners of the prior art (who can not be found guilty of infringement for their transformative acts) from thinking certain thoughts while they practice the prior art.”

    AI: Prove it!

    :: Crickets Chirping::

    MM: “Getting back to the question I raised in my previous comment: do you disagree that claims in the form [old step + novel mental step] effectively prevent otherwise non-infringing practitioners of the old step from thinking about the novel mental step?

    The question should be can you prove otherwise? This is YOUR proposition. The burden of proof lies on you. If you can’t prove it please kindly take my previous suggestion and STFU about it already.

    Reply
  123. MM: “They never held that claims which effectively preclude otherwise non-infringing actors from thinking certain thoughts were patent eligible.”

    AI: And you have never proven that such is even possible. Thus your proposition for not allowing claims with thinking, or old, non novel steps has no sound or logical basis and is completely false.

    Reply
  124. NED: “I think we should then understand Diehr to be limited to the proposition that when a programmed computer is performing the calculations in a process that otherwise passes the MOT, that such a claim is patent eligible.”

    When you say “WE” you must be talking about you and Malcolm ( in which case you two need a room) because you surely can’t be talking about the majority in Diehr.

    Diehr is not a limiting case. Its is the upholding of the broad scope of patent eligible subject matter.

    As the “Diehr Expert” pointed out up thread, ” it’s the “application of concepts to industrial processes” that is the controlling analysis for 101 subject matter. With machines and transformations being relegated to a mere clue.”

    Reply
  125. Since the opposite was your reason for not allowing claims with mental or novel steps, your entire proposition fails.

    ::Game Over::

    Reply
  126. MM: f you read my comments carefully, you’ll discover that I’ve said quite plainly that it is not acceptable under our patent system for any person to be successfully sued merely thinking. Why do I need to find a cite showing the opposite?

    AI: To prove that it’s possible.

    MM: doesn’t stop people like Classen from filing lawsuits under the theory that people are infringing his claims merely by thinking about unpatentable facts disclosed in his specification.

    AI: First you have not proved this statement about Classen to be true. And second even if you could it would be irrelevant since It’s possible to file a law suit for any reason. What you must prove in order to have your proposition considered true, is that if claims with mental or old steps are allowed as patentable, people will be successfully sued for merely thinking about patents. So far you have failed miserably to do so.

    MM: You are aware that one of Classen’s claims was invalidated by the CAFC as ineligible even though the claims recited steps that were admitted by all parties to be transformative?

    AI: So what if it has? Just because a claim has a transformative step does not guarantee it is patent eligible.

    MM: You are aware that in the process of invalidating that claim, the claim was “dissected” and the transformative step was ignored?

    AI: No I am not. Can you provide the exact quote from Classen where the court stated they had dissected the claims?

    MM: You are aware that the same analysis was used in Prometheus (although a different conclusion was reached)?

    AI: Analysis does not equate to dissection. But if you have the exact quote from Prometheus, where the court is advocating the exact kind of dissection expressly prohibited in Diehr please cite it. If you can’t please kindly STFU.

    Reply
  127. MM,

    Just because you post meaningless drivel and claim that you win “no matter what,” does not mean that you actually win.

    The fact that you feel the need to post like this is a higher condemnation than anything any of your foes here could post.

    You look like a real jack.

    Reply
  128. ” According to your comments here, I win. You lose.”

    Not on your best day. Not ever.

    Actually, it just happened. I won, you lost.

    Here it is again:

    Don’t believe me? Then refute the analysis. Explain to me how a claim in the form [old step + new mental step] or [new mental step plus old step] isn’t effectively a claim to a mental step when asserted against someone freely practicing the prior art who (allegedly) is thinking the new thought recited in the claim.

    To help you, consider the following useful claim:

    1. A method of useful breathing, comprising

    [mental step of thinking a new useful thought] and

    inhaling oxygen, wherein said breathing occurs within one minute of said mental step.

    I see you reading my patent, wherein I disclose my new, useful mental step. You are breathing (a transformative act). I ask you if you read the part about the novel mental step and have you thought about it. You admit that you have thought about it. I sue you. According to your comments here, I win. You lose.

    Do you understand? According to your own comments here, I win. You lose. You lose because you took a breath and you thought a new thought. What is your defense going to be? According to you, you have none. Maybe you should hire Actual Inventor to represent you. LOL.

    Reply
  129. another patent law trend

    Does MM forget that the trend of September was in the opposite direction of the trend of August, and that trend was not in his favor?

    Reply
  130. And I’m laughing my axx off (at your expense …. again).

    Malcolm’s laughter, and the fact that he thinks it is at someone else’s expense is all the more sad because he does not realize that he is the fool being laughed at.

    T O O L

    Reply
  131. in the direction I favor. Sxcks to be you.

    One word: Scoreboard.

    Reply
  132. Getting back to the question I raised above, AI: do you disagree that claims in the form [old step + novel mental step] effectively prevent otherwise non-infringing practitioners of the old step from thinking about the novel mental step? If so, please articulate the reasons for your disagreement.

    Still waiting.

    Reply
  133. In nearly every one of these cases, it’s admitted that the invention is the discovery of the correlation and/or algorithm.

    Admitted by Whom?

    The patentee.

    What cases?

    LabCorp., Prometheus, Classen …

    What Context?

    In the specification itself or in the pleadings.

    Do you have a link to the recording of the oral proceeding or transcripts?

    Even if I did, I wouldn’t provide them to a dxxxxbxg like you. Dang, man: you are stxxxpit AND lazy!

    all every inventor has to do is choose a non mental or non novel/old step in their process as the so called critical feature, and they beat you every time

    It’s not surprising that a pathological l-i-a-r such as yourself would propose such a strategy and believe that it works it “every time.”

    Reply
  134. MM: “Once again, AI: you are free to flood the stage with non-responsive and irrelevant horseshxt. It has not gone unrecognized that you and your sockpuppet friends are utterly incapable of refuting my reasoning. That is why you choose to engage in ad hominems, goalpost-moving, strawmen-attacking, and flooding the stage, all classic rhetorical tricks used by creationists and their close intellectual kin, the patent txxxbxxxgxr). The only ploy that you haven’t tried is the classic “appeal to authority”.”

    Wow, are you even aware that you have just done everything you have accused me of doing?

    Well, once you are finished will you please prove the following conclusion of yours:

    That any patent claim has, or ever will actually prevent anyone from thinking a new thought.

    Reply
  135. “As I’ve noted before, the best part about the analysis is that it’s irrefutable. I’m not making any assumptions”

    You still failed to prove that any patent claim has, or ever will actually prevent anyone from thinking a new thought.

    Nothing about your theory, test, analysis, proposition will matter until you can prove the conclusion you base it on is indeed true. Right now its a false conclusion making your entire argument an illogical joke.

    Reply
  136. Exactly. And MM still fails to prove that any patent claim has, or ever will actually prevent anyone from thinking a new thought.

    MM is out of intellectual ammunition, logically backed into a corner and desperate.

    Expect to see his usual array of babooon antics and attacks any moment now

    Reply
  137. MM it’s not that I disagree or even fail to understand your proof, you have not offered any proof. Perhaps I missed it in the thread. Please state your proof right here in reply to this post and I will take a look. If you actually have it that is.

    :: waits::

    Reply
  138. In nearly every one of these cases, it’s admitted that the invention is the discovery of the correlation and/or algorithm. It’s very easy to distinguish the “critical feature.”

    Admitted by Whom?

    What cases?

    What Context?

    Do you have a link to the recording of the oral proceeding or transcripts?

    If it is the inventors admitting this and this is the way you are going to identify “the critical feature of the invention” then all every inventor has to do is choose a non mental or non novel/old step in their process as the so called critical feature, and they beat you every time.

    Not very practical or effective, this discriminatory proposition of yours, is it?

    Reply
  139. MM, you have still failed to prove that any patent claim has, or ever will actually prevent anyone from thinking a new thought.

    Your failure to understand (or admit that you understand) the proof I have offered is not my failure.

    It’s yours. Wallow in it.

    Reply
  140. MM, you have still failed to prove that any patent claim has, or ever will actually prevent anyone from thinking a new thought.

    Until you do that your proposition fails on it’s face.

    Reply
  141. You cannot dissect a claim, analyze its parts and stick it back together “as a whole” and then claim you have not dissected the claim.

    Such is the utter nonsense that MM engages in

    No, that’s not what I’m doing at all. Feel free to refute my reasoning honestly. If you are unable to do so, for whatever reason, then consider not commenting at all because you are not doing yourself or your sockpuppet friends any favors.

    The use of failed concepts is bringing down the credibility of this blog

    Your concern is noted. And I’m laughing my axx off (at your expense …. again).

    Reply
  142. Still waiting for an answer to my 5:13 pm question.

    Not that I’m expecting anything interesting from the sockpuppets except the usual whining, crying and recitation of irrelevant mantras.

    Reply
  143. The whole “mental step” (non)issue is one giant red herring

    No, it’s not a red herring and if you’ve been paying attention you’ve been seeing the Federal Circuit increasing its focus on the 101 issues raised by mental processes.

    Just another patent law trend moving quite reasonably and purposefully in the direction I favor. Sxcks to be you.

    Reply
  144. God Bless The US Patent System

    Between you, “anon”, and So What? it’s extremely difficult to determine who suffers more from clinically low intelligence.

    MM, you contradict yourself when you state.”I’m not suggesting that you identify the “critical feature” and “dissect” the claims.” and …..”you believe (wrongly) that Diehr absolutely prohibits such an approach (it doesn’t).”

    You apparently don’t understand what the word “contradiction” means.

    Your proposed new policy is inherently discriminatory

    No, there is no “discrimination.” Also, it’s not a “new policy.” It’s the application of old legal, judicially approved principles to effectuate old, non-controversial policy decisions.

    The Supreme Court certainly does take into account the practical effects that the granting of certain claims will have on individuals, particularly when those effects including preventing people from thinking about unpatentable facts.

    Once again, AI: you are free to flood the stage with non-responsive and irrelevant horseshxt. It has not gone unrecognized that you and your sockpuppet friends are utterly incapable of refuting my reasoning. That is why you choose to engage in ad hominems, goalpost-moving, strawmen-attacking, and flooding the stage, all classic rhetorical tricks used by creationists and their close intellectual kin, the patent txxxbxxxgxr). The only ploy that you haven’t tried is the classic “appeal to authority”.

    Reply
  145. When the only novel subject matter in a claim is a mental step, there really is no patentable process present.

    Well that statement is one big FAIL.

    Ned, you didn’t take my quiz!

    Put it this way, there can be no novel subject matter per individual steps in a claim and you can still have not only a PATENT ELIGIBLE claim, but a NOVEL claim as well.

    The whole “mental step” (non)issue is one giant red herring and is quite meaningless (as has been noted).

    Reply
  146. According to your comments here, I win. You lose.

    Not on your best day. Not ever.

    I already know the answer …

    No, Malcolm, you do not.

    As I said Malcolm, your strawman posts are meaningless.

    Yet another in a long string of wrong answers from you.

    Reply
  147. MM:”I’m suggesting that you consider the practical effect that the claim has on practitioners of the prior art. If the practical effect of the claim on practitioners of the prior art is to effectively prevent such practitioners from THINKING A NEW THOUGHT than there is a 101 issue.”

    This is not only a false conclusion but a mere Trojan horse for your discriminatory patent policy.

    The fact is you have failed to prove that any patent claim has, or ever will actually prevent anyone from thinking a new thought.

    Reply
  148. MM, you contradict yourself when you state.”I’m not suggesting that you identify the “critical feature” and “dissect” the claims.” and …..”you believe (wrongly) that Diehr absolutely prohibits such an approach (it doesn’t).”

    Then in turn say: ” “critical feature” = the only limitation in the claim that is novel; all other steps are old, in the order recited, and therefore unpatentable).”

    You are advocating dissection whether it be for novelty, critical features, mental steps or any other label you create for identifying and/or surgically removing elements to systematically discriminate against certain inventors and their inventions. Which in turn prevents them from earning their constitutional right to a patent.

    And Diehr does prohibits such an approach. Diehr explicitly holds:

    “In determining the eligibility of respondents’ claimed process for patent protection under §101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the <450 U.S. 189> process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter.”

    Furthermore Diehr’s explanation in footnote 12 for the logical basis of it’s holding completely undermines the reasoning used for your new dissection proposition which you label determining “the critical feature of the invention”.

    Note:” It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook which noted that a mathematical algorithm must be assumed to be within the “prior art.” It is from this language that the Government premises its argument that if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the §101 determination. To accept the analysis proffered by the Government would, if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the Government would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection.” (See, Diehr footnote 12)

    Most important Diehr’s policy basis is for an expansive and inclusive approach to patents that is in accord with the constitution and supports equal opportunity for all.

    Your proposed new policy is inherently discriminatory and denies and or takes away individual rights from the general public that might like to contribute to our society with new, novel, and non obvious process inventions of their own.

    The man and woman that can invent or discover a better way of doing anything positive should have and enjoy the incentive of a patent and possible profits to spur them along.

    For if they succeed we all succeed at a time in our country when solutions, change and progress is desperately needed.

    God Bless The US Patent System

    God Bless America!

    Reply
  149. Malcolm, consider the following claims:

    1. Process for boiling an egg:

    placing a raw egg in boiling water and removing it after a cooking time; wherein the cooking time is

    three minutes plus a number of seconds equal to the altitude in feet divided by 1000.

    Is this process directed to patentable subject matter?

    Reply
  150. MM – your notes, before and now, are meaningless.

    On the contrary, it’s a fact.

    Don’t believe me? Then refute the analysis. Explain to me how a claim in the form [old step + new mental step] or [new mental step plus old step] isn’t effectively a claim to a mental step when asserted against someone freely practicing the prior art who (allegedly) is thinking the new thought recited in the claim.

    To help you, consider the following useful claim:

    1. A method of useful breathing, comprising

    [mental step of thinking a new useful thought] and

    inhaling oxygen, wherein said breathing occurs within one minute of said mental step.

    I see you reading my patent, wherein I disclose my new, useful mental step. You are breathing (a transformative act). I ask you if you read the part about the novel mental step and have you thought about it. You admit that you have thought about it. I sue you. According to your comments here, I win. You lose.

    Unless you are a l*i*a*r ….

    Which are you? A l*o*s*e*r or a l*i*a*r?

    I already know the answer …

    Reply
  151. As I’ve noted before,…

    MM – your notes, before and now, are meaningless.

    Reply
  152. So maybe all those charges the Casino claimed I won… May not have been a mistake after all. Maybe someone was using the Dead Girls ( me) SSN, and I got blamed for it?
    Like those Phone calls from Sotelo claiming I spoke with him, or left a message, when in fact someone did.. But he probably knew it wasn’t me. But for show he may have called me anyway to suggest we were on speaking terms? Instead of him trying to cram things down my throat or ask me to do things that I had already said no to?
    Wow this is really getting very intriguing.
    Oh and if DeBeers settled and sent Checks. Someone stole mine when stealing my MAIL!

    Reply
  153. sockie: Sounds like the table that MM is pounding is made of paper – it folds quickly when pounded.

    Poor sockie needs a history lesson. I’ve been presenting this analysis for well over a year (maybe three years?) and I’ve never folded because I’ve never needed to. Until the Supreme Court or Congress comes out and says that there is an EXCEPTION to the law with respect to the patenting (expressly or effectively) of mental steps, I will continue to raise the issue. In the meantime, more and more people will read and understand the analysis. It’s quite simple and straightforward, actually.

    As I’ve noted before, the best part about the analysis is that it’s irrefutable. I’m not making any assumptions.

    Reply
  154. Stephen Pellachowski Went to the same School. When I went in to declare I was alive in 1978 and I was Richards mother.. I finally got a letter stating I would get $76.77 and then so much for Richard.. but then another letter saying before we ever got a Check I would get nothing for Richard because he was not with me?
    Never did I get any of those Checks.. Never heard another word. I told them Richard was with me, I brought him down there, here he is I said! He was even questioned. Maybe that has nothing to do with this…
    BUT here again I am told I was dead in the beginning about 1974/75. The Guy at the Social security Office in Quincy.. told me I wanted to be a Movie Star. And that truth was stranger than fiction! I guess he thought I was in the wrong place trying out for a part in a Movie? But I did get a Check for Richard and I, then nothing until the 1976 when they said we would get SS from his Father James Stroud.
    So maybe just maybe there is a connection here too. I sure hope so it will be another answer to My Green Sixty Year Mile.

    Reply
  155. 1. There is no way to distinguish determining “the critical feature of the invention” from simply looking at any mental step in the process and declaring the mental step the critical feature.

    In nearly every one of these cases, it’s admitted that the invention is the discovery of the correlation and/or algorithm. It’s very easy to distinguish the “critical feature.”

    More importantly, however, I’m not suggesting that you identify the “critical feature” and “dissect” the claims. You wish that I was doing that because you believe (wrongly) that Diehr absolutely prohibits such an approach (it doesn’t).

    I’m suggesting that you consider the practical effect that the claim has on practitioners of the prior art. If the practical effect of the claim on practitioners of the prior art is to effectively prevent such practitioners from THINKING A NEW THOUGHT than there is a 101 issue.

    It’s certainly true that this analysis will lead you to the same conclusion that will be reached should you choose to look at the claim from the “critical feature” standpoint (e.g., “critical feature” = the only limitation in the claim that is novel; all other steps are old, in the order recited, and therefore unpatentable).

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  156. Exactly where in the Diehr MAJORITY did they decide that if the only new element in an old process was a mental step that the claim was patent eligible.  As I said before, they appeared to have construed the claims to cover a programmed computer.

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  157. Anon, claims as a whole focuses on the differences between the prior art and the claimed subject matter to determine whether the differences would be obvious, in the case of 103 (Graham factors) or patent eligible in the case of 101.   Now, any fair reader would soon recognize that "differences" can be a point of novelty, but it may well be that otherwise if there are numerous differences.   Just because one searches for the differences does not mean that one is ingnoring the old elements in the claim.  The identification of differences is the pith and essence of every 101, 102 or 103 analysis.
     
    When the only novel subject matter in a claim is a mental step, there really is no patentable process present. 

     
    What Diehr seems to have held, because it really focused on a programmed computer, is that a programmed computer in an otherwise old process was a patent eligible process.  It never construed the claims at bar to be limited to new mental steps, which is what we are talking about here.   Had they done so, Diehr may have come out differently.

    Reply
  158. You’re not seeing it wrong, MD. You understand the issue perfectly.

    Will the preponderance proof of infringement be the fact of a shift in the dosage regime, by a doctor who is shown to have had an opportunity to read that Paper?

    That’s a good question.

    Consider the following, however: many of these claims (including Classen’s) are literally infringed by NOT changing the regime at all or by doing nothing after the “thinking” step, and many of the rest (e.g., Prometheus) are infringed by dosage changes that are old in the art (i.e., “increase the dose”, “decrease the dose”).

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  159. If you argue as you have before that people will get sued for merely thinking about a patented invention you must face the fact that you have failed to prove this by citing one court case in the history of patents were one person was successfully sued for merely thinking about an invention.

    LOLOLOLOLOLOLOLOLOLOLOLOLOLOOLOLOLOL.

    If you read my comments carefully, you’ll discover that I’ve said quite plainly that it is not acceptable under our patent system for any person to be successfully sued merely thinking. Why do I need to find a cite showing the opposite?

    Note that the lack of such cases in our judicial history (or my failure to identify them) doesn’t stop people like Classen from filing lawsuits under the theory that people are infringing his claims merely by thinking about unpatentable facts disclosed in his specification.

    You are aware that one of Classen’s claims was invalidated by the CAFC as ineligible even though the claims recited steps that were admitted by all parties to be transformative? You are aware that in the process of invalidating that claim, the claim was “dissected” and the transformative step was ignored? You are aware that the same analysis was used in Prometheus (although a different conclusion was reached)? I just want to be sure you are aware of this, in case you are confused about the CAFC’s understanding of your beloved Diehr.

    In any event, Classen’s case has been remanded and at least one claim that should have perished under 101 (for the reasons I’ve been discussing) managed to survive. We’ll see if Classen is “successful” or not. The fact that Classen has gotten as far as he has indicates that the issue I am raising is not yet fully appreciated by the courts. At least Judge Moore appears to “get it”, however.

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  160. Non, anon, it is not me at all.  It is anyone who still contends that In re Benson is still good law. 
     
    We have a healthy debate here on legal issues, anon.  But to seriously contend as do many here that a programmed computer is patentable subject matter without showing that it does something new and useful as in Alappat, for Gott's sake, are the
    Ostriches.
     
    You, for one, seem to be an acolyte of another blog, a blog that contends that the US had a first to file system until 1870.  Now that was a GD lie, and you know it.
     
     

    Reply
  161. solution is being able to claim a human being

    While that idea itself is a dead stop nogo, it does offer the thread hihjack possibility of once again visiting the new law that bans patents on two aspects of human beings:

    SEC. 33. LIMITATION ON ISSUANCE OF PATENTS.
    (a) LIMITATION. — Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.

    Now plainly, the second half of the ban can easily be seen separately as pertaining tothe ban on anything encompassing a human organism. It is the plain language (the very wide plain language that carries with it NO congressional record limitations that may have previously accompanied similarly worded language) of the first part of the patent ban that is most interesting. That first part of the ban reads on its own:

    Notwithstanding any other provision of law, no patent may issue on a claim directed to a human organism.

    Since the statutory canon against surplusage means that this cannot mean the same as the second part – and must mean something, just what the scope of that something is needs to be figured out.

    In plain English, the defintion of “directed to” has been provided on previous threads, and its plain meaning has never been challenged.

    The challenge of getting past the Statutory Construction canon of first using the plain meaning has not yet been done.

    And even, for arguments sake, we somehow constrainthe plain language, or somehow conjure up a view that the plain language is ambiguous, even then, we must deal with thte fact that the Congressional Record lacks the previous express limitations in prior versions of similarly worded suggested law.

    (this is not an invitation for the typical hand-waiving replies – let’s see some serious and grounded, proper Statutory Contruction based replies exhibiting some critical legal thinking)

    Reply
  162. Maybe the solution is being able to claim a human being medicated with the proper levels of a drug (which is of course the alloy.)

    And, the method of making the alloy could be claimed.

    Reply
  163. If the critical element in a claimed process is a mental step, the claim is directed as a whole

    Ned,

    Sticking the phrase “as a whole” into your answer is no substitute for understanding that the claim as a whole is what must be analyzed.

    You cannot dissect a claim, analyze its parts and stick it back together “as a whole” and then claim you have not dissected the claim.

    Such is the utter nonsense that MM engages in, and appearantly the utter nonsense you are buying hook line and sinker. Malcolm simply is dead wrong on this and so are you. No dissection means NO dissection. Claim as a whole means claim as a whole. This means that your beloved “point of novelty” simply does not exist and every element of a claim must be read together and not separated from each other. The “point of novelty” approach is the ultimate in conflation and has been repeatedly explained to you to be off-limits. Please stop using the concept. The use of failed concepts is bringing down the credibility of this blog and ruining the reputation of the blog master Crouch.

    Reply
  164. Ned,

    And what happened to the mental steps doctrine as explained in the Diehr dissent? And please explain how a CAFC panel overrides the Supreme Court in resurrecting the mental steps doctrine in the decision (the decision that quotes extensively from Benson, but ignores Diehr and Bilski) that you favor and quote from (and that has been seriously constrained by Ultramercial)?

    Reply
  165. Ned,

    I believe that it is you that has been pointed out to have over-reached on case law – probably the most of anyone on this site.

    Thus, lectures about over-reach from you are not effective.

    Reply
  166. Sounds like the table that MM is pounding is made of paper – it folds quickly when pounded.

    Reply
  167. NWPA’s “alloy” example interests me. It is:

    “So, MM, the man sits there in front of his pot of iron and needs has some carbon to add. Does a patent for a steel alloy prevent the man from thinking about what is the right amount of carbon to add? He has all the materials right in front of him. He read a patent on manufacturing steel. So, it would seem that he is being prevented from thinking about the right amount of carbon to add.”

    I take it that the claim in view is directed to an “alloy”. I take it then that such a claim is infringed by making such an alloy, but not by thinking about it.

    As to Classen and Prometheus, I had supposed that the “re-calibration” step is something going on in the mind of the physician, as in:

    “Thinks: I am glad I read that Paper. I think I have been using a sub-optimal dosage regime. When the patient arrives this morning I think I must tell him that I am minded to change his dosage regime”.

    This is the sort of thinking activity I want from my doctor. I don’t like the idea that, by indulging in it, my doctor is infringing a duly issued US patent.

    Will the preponderance proof of infringement be the fact of a shift in the dosage regime, by a doctor who is shown to have had an opportunity to read that Paper?

    Where am I seeing it wrong, please?

    Reply
  168. Well, clearly I have been shooting from the hip so I need to read this a bit more closely before engaging in anymore shootouts with you, MM.

    But, you still did avoid the analogy with an alloy and determining a dosage amount and administering the dosage in comparison with determining an amount of a metal and adding the metal to form an alloy.

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  169. Hello Ned:

    I have not read this case. Is it true it’s from 1944? Then of course such a case is not relevant to recent case law such as Diehr ( claims as a whole) and Bilski which affirms that Diehr controls.

    So I really don’t see your point in quoting it. Do you really want to regress back to the 1940’s in patent law and understanding of processes ?

    Surely you must agree doing so would not promote the progress of the useful arts.

    Reply
  170. MM, I was asking for a legal cite. But since you have conceded this is not law and merely a “proposition” then I am glad to look at it logically. Here are the flaws in your reasoning, point by point.

    1. There is no way to distinguish determining “the critical feature of the invention” from simply looking at any mental step in the process and declaring the mental step the critical feature. This would of course amount to nothing but dissection and Diehr has already explained logically why dissection is detrimental to process claims. ( I can cite this passage if needed)

    2. If you support dissection and wish to have your proposition adapted as law then you must face the fact that you have no logical conclusion that stems from your proposition. For example, how would one mental step make an entire claim non patentable subject matter?

    If you argue as you have before that people will get sued for merely thinking about a patented invention you must face the fact that you have failed to prove this by citing one court case in the history of patents were one person was successfully sued for merely thinking about an invention.

    In fact if one would take that premise of yours to it’s logical conclusion all 30,000 patent professionals on this blog would be sued daily for reading and thinking about the patented inventions we discuss here.

    So your proposition that says, “if the critical feature of an invention actually lies in a mental step, the claim as a whole is directed to non patent eligible subject matter”, fails logically and therefore has no sound reason for becoming law or policy.

    Reply
  171. True. True.

    I’ve acknowledged the truthfulness of those statements numerous times. Of course, the following statements are also true and are actually relevant to the discussion.

    Both T/F questions correct, but zero points for the Essay. Going off on a lark is not acceptable.

    50% = F

    Reply
  172. Yes you can can be sued under 35 U.S.C. 100 (b) new use of a known process, machine, manufacture, composition of matter, or material.

    I never said otherwise. Learn to read, please.

    Reply
  173. Professor Diehrbot (self proclaimed): The fatal flaw in your assertion is that people can infringe a patent by merely thinking.

    The flaw in your thinking is that you can not wrap your tiny tiny brain around the phrases “effectively” or “the practical effect.”

    people can infringe a patent by merely thinking. Such is impossible

    As a practical matter, it’s very possible and indeed people have been sued for doing nothing that they could possible be sued for EXCEPT thinking about the new facts disclosed in the patentee’s specification. A claim that would have this effect on the public is effectively a claim to a mental step and is therefore ineligible, unpatentable per se, or unenforceable.

    any such analysis would run afoul of the dictum

    Blah blah blah. The issue I’m discussing was never squarely addressed by any Court, although Breyer came very close in his LabCorp dissent and I’m certain he’s aware of it. No Supreme Court Justice has ever indicated, in dicta or otherwise, that a claim which prevented a practitioner of the prior art from thinking a new thought would be patent eligible. Meanwhile, the cases stating that claims can’t protect methods of thinking are abundant and non-controversial.

    Reply
  174. The Expert Diehrbot Diehr could have claimed a process that only required the use of an imu oven, some hot rocks, rubber plants, a teak leaf cover and a human being that could calculate the Arrhenius equation in his/her mind and still had a statutory subject matter claim. This fact can’t be refuted based on the law. Such is the broad scope of 101 as Diehr has so interpreted it to be.

    Great. Let’s pretend it’s your claim that’s granted. here I am practicing the prior art with the Arrhenius equation on the blackboard in front of me. I have video showing me curing rubber in exactly the same fashion (without the blackboard) before you filed your application. You sue me. You win. From my perspective (i.e., from the perspective of one who is freely practicing the prior art), how is this result any different than if I had been sued for “Doing the Arrhenius equation in your head?”?

    Such is the broad scope of 101 as Diehr has so interpreted it to be.

    The Court in Diehr did not address the issue we are discussing. The majority simply held that the mere presence of a mental step in a claim was not enough to render the claim ineligible as a per se matter. They never held that claims which effectively preclude otherwise non-infringing actors from thinking certain thoughts were patent eligible.

    Reply
  175. Um No, did you EVER consider the remote possibility that anyone advocating overruled doctrine of In re Benson might just be a tad bit overreaching? A programmed computer, per In re Benson, is patentable either as a machine or a as a process without defining a separate useful application. Now, that was the holding that was overruled.

    Stop pointing fingers, especially when the pointer himself is guilty of the very thing he of which he accuses.

    Reply
  176. If the critical feature of an invention actually lies in a mental step, the claim as a whole is directed to non patent eligible subject matter.

    You don’t need a cite for this proposition for the same reason that you don’t need a cite for the proposition that 2+2=4.

    Of course, I’m assuming you’re an adult capable of basic reasoning and not a 3 year old trying to memorize without understanding. Also, I’m assuming that for this comment only, sort of as a gift to you, AI.

    Reply
  177. True/False (Part One):

    1) A Patent Eligible claim can be comprised entirely of steps that are each “old in the art.”

    True.

    2) A Novel claim can be comprised entirely of steps that are each “old in the art.”

    True.

    Explain how the correct answers to the Part One questions blow away any semblance of MM Rationality.

    I’ve acknowledged the truthfulness of those statements numerous times. Of course, the following statements are also true and are actually relevant to the discussion.

    Novel claims are not necessarily patent eligible

    Claims that comprise steps wherein information is transformed are not necessarily patent eligible.

    Claims that prevent people who are practicing the prior from thinking “new thoughts” while they are practicing the prior art are effectively claims to methods of thinking (as applied to said practitioners of the prior art) and said claims are therefore not eligible, unpatentable per se, or unenforceable.

    If anyone is interested in “debating” any of these statements, I’d love to engage. Thus far, I’ve not seen any interest from the sockpuppets and Diehrbots, just a lot of crying and name-calling and recitation of the Mythical Mantra.

    Reply
  178. “Patent No. 2,209,944.[4] The court held this patent invalid for want of invention, finding that its novelty lay only in the performance of certain mental steps.

    This is a method patent. The steps involved are described in the claims by the following descriptive words “determining,” “registering,” “counting,” “observing,” “measuring,” “comparing,” “recording,” “computing.” There are 9 claims, all of which are in suit. Claim 2, copied below, may be taken as typical:

    “2. The method of determining the unknown location of an obstruction in a well having a string of tubing therein, which consists in creating an acoustical impulse in the annular space between the tubing and the well casing to produce echoes from portions of the tubing string distinguishable from each other and from the echo from the unknown obstruction, observing the lapse of time between the arrival at a predetermined point of the echoes from successive portions of the tubing string to thereby determine the velocity of the pressure wave through the particular well under measurement, and measuring the lapse of time between the creation of the pressure impulse and the arrival at said predetermined point of the echo from the unknown obstruction.”

    In substance, Walker’s method here claimed consists in setting down three knowns in a simple equation and from them determining or computing an unknown. The three knowns are: (a) the distance from the well head to the tubing catcher (for example); (b) the length of time it takes an echo to return from that obstruction; and (c) the length of time it takes an echo to return from the fluid surface. From these three knowns can then be determined the distance of the fluid surface from the well head.

    We think these mental steps, even if novel, are not patentable. Cf. Don Lee, Inc. v. Walker, 9 Cir., 61 F.2d 58. A patent may be obtained only upon an invention of a “new and useful art, machine, manufacture, or composition of matter.” 35 U.S.C.A. § 31. As said in Cochrane v. Deener, 94 U.S. 780, 788, 24 L.Ed. 139: “A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art.” Cf. also Corning v. Burden, 15 How. 252, 267, 14 L.Ed. 683.

    It must be remembered that this is purely a method patent. No apparatus is claimed. Given an apparatus for initiating an impulse wave in a well and a means for differentiating between and for recording echoes returned from obstructions in it, anybody with a rudimentary knowledge of arithmetic will be able to do what Walker claims a monopoly of doing. If his method were patentable it seems to us that the patentee would have a monopoly much broader than would the patentee of a particular apparatus. To sum the matter 822*822 up, we think Walker’s apparatus patent No. 2,156,519 gives him all the protection his inventive genius entitles him to.”

    link to scholar.google.com

    Halliburton Oil Well Cementing Co. v. Walker, 146 F. 2d 817 – Circuit Court of Appeals, 9th 1944

    Reply
  179. Yes, We DO know the history. One you seem amazingly unable to articulate accurately and completely.

    And you know what happened to Benson. Will you please stop trying to pass off the dissent view of Diehr as somehow not being a dissenting view?

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  180. In addition, it is irrational to dissect claims and expect others to believe the claims are not being dissected simply because a different name is used for the act, other than dissection.

    Translation: “I don’t like your conclusion so you must be doing that thing that isn’t allowed according my fundamentalist interpretation of a Supreme Court ruling where the issues you are raising were not even addressed.”

    LOLOLLOLOLOLOLOLOLOLOLOL!!!!!!!!

    Reply
  181. As for any “questions” you may have, I am ignoring them until you come to grips with reality. It is not my “credibility” that you should be concerns with.

    LOL. As I pointed out upthread, sockie, I’m not expecting anything from you. As for my “credibility”, it’s utterly irrelevant. I say that the earth orbits the sun and indeed it does so, regardless of my “credibility.” Likewise, the claims I am discussing have the practical effects on practitioners of the prior art, just as I’ve described, regardless of my “credibility.”

    You know this is true, of course, because it’s a very simple matter and if it wasn’t true you would immediately explain to me why it isn’t true. But you aren’t doing that. Instead you create strawmen and attack them. Hence, my remarks that arguing with sockpuppets like you is like arguing about evolution with creationists. Like a creationist, you come to the table with a conclusion that is pre-determined. Any facts that contradict the conclusion are therefore ignored. Heck, I’ve even outlined the policy argument for you if you want to take the cheap way out and evidently even that offends your inane, incorrect and fundamentalist sensibilities with respect to Diehr.

    Again, I urge you to take the issue up with your Supreme Leader. While you’re at it, you can ask his highness if a claim in the following form is patent eligible in view of Diehr. Breathing, of course, is a transformative step.

    1. A method of breathing while thinking, said method comprising:

    (1) [novel, non-obvious, useful mental step] and

    (2) taking a breath, wherein said taking a breath occurs at least once every 52 seconds, wherein said taking a breath comprises inhaling O2, and wherein at least one molecule of O2 was produced by a plant.

    Try not to sweat too much while thinking about the answer and what that answer means for the “credibility” of your mantra. Or, feel free to keep digging. I can always use the laughs.

    Reply
  182. Cite please?

    :: Oh silly me. It’s Ned and Ned don’t do cites.::

    Reply
  183. Sockey, I don't know what your point is, precisely.  But Malcolm's is clear.  If the critical element in a claimed process is a mental step, the claim is directed as a whole to subject matter that is not patent eligible.

    Now Diehr did have a programmed computer performing the calculations in the specification.  A programmed computer was actually claimed in claims 1 and 2.  But it was not claimed in claim 11.  I think, to be
    honest, that claim 11 could not be practiced by a human given the timing requirements when the claim is construed in light of the specification, but for 101 purposes, it is not clear that such a conservative claim construction is warranted at the 101 stage.  If the claim is therefor construed to cover mental steps as the critical element, I would think the claim as a whole is directed to subject matter that is not patent eligible regardless of the context.

    Reply
  184. Pop Quiz,

    Your questions are much too easy and for that reason, much too clear to be taken by those who most need to take this little quiz.

    You simply will not find Ned Heller and Malcolm Mooney coming anywhere near this thought experiment.

    The reason why is quite obvious.

    Reply
  185. Malcolm is usually right.

    Like in Diehr?

    Why yes, precisely like in Diehr.

    STFU Ned.

    Reply
  186. Your lame attempts to try and scare people with this nonsense of people won’t be able to think what they want to think without fear of a lawsuit is tea party tactics at thier best.

    Again: both Classen and Prometheus admitted during trial that their claims were infringed by practitioners of the prior art who merely thought about the new facts disclosed in Classen’s and Prometheus patents, respectively. These practitioners of the prior did not need to engage in ONE new transformative act or even ONE new series of transformative acts. The only new act which turned them into infringers (according to the patentee) was thinking a new thought.

    Such a result is unacceptable under our patent system, and the failure of Supreme Court and/or Federal Circuit jurisprudence to address this reality and declare such claims* ineligible, per se unpatentable, or unenforceable is only temporary. Take it to the bank.

    *i.e., claims in the form [old patent-eligible step + new mental step] or in the form [new mental step + old patent-eligible step].

    Reply
  187. Sockey, there is a difference between you an Malcolm as far as I can tell.  Malcolm is usually right.

    Reply
  188. “Malcolm, you have me convinced.”

    Never a good idea. This destroys any credibility of the rest of a post that this statement begins with.

    Coming sua sponte as this admission does, one must also wonder about the over-friendly relationship between these two posters and their unified (and quite clearly incorrect) views on subject matter patent eligibility.

    Ned, you have been told what “we should then understand Diehr to be… .” There is no reason for you to not simply accept this and for you (and Malcolm) to continue to strive to create some new meaning, which is clearly based on errant interpretation of case law. I do not even need to repeat those sections of Bilski and the legislative record that you refuse to address.

    I am also noticing that Cybersource is brought up, when that case is so problematic as to the proper recitation of actual controlling case law.

    Dennis,

    It is precisely this type of continuous and quite disengenuous posting that lowers the credibility of this blog and winds up impugning your reputation. Trying to control “the sockpuppets” is not the best use of your time and resources. It is not “the sockpuppets” that are causing you damage. It is the continuous baseless crrp that is being passed as legal thinking.

    Reply
  189. Night, you still have yet to tell me/us what you are talking about when you suggest that claims to information processing are patent eligible. I asked you to tell us whether, for example, you envision anything physical in the claimed subject matter. This is Malcolm’s point as well.

    For example, you invention is a new mathematical algorithm. Let us say, long division.

    Can you patent the algorithm per se in your view of the world?

    What if it were limited to its calculation on an abacus?

    What if one defined some physical data gathering steps, but then did not require the calculation be performed on a computer or other machine?

    Unless you tell us what you are talking about, we have no idea what it is you are advocating.

    Reply
  190. Night, Malcolm is right, of course. If the critical feature of an invention actually lies in a mental step, the claim as a whole is directed to non patent eligible subject matter.

    Reply
  191. Malcolm, you have me convinced.

    It is to be noted that claims one and two, listed in the Diehr court’s opinion, are limited to the use of a computer. Claim 11, however is not.

    You have agreed in prior posts that if the claim required the use of a machine to perform the calculation steps, then the claim would recite patentable subject matter. I agree with this.

    I think we should then understand Diehr to be limited to the proposition that when a programmed computer is performing the calculations in a process that otherwise passes the MOT, that such a claim is patent eligible.

    I think your theory is consistent with the recent case, Cybersource, which was decided based upon the mental steps doctrine.

    Still, I will also suggest that when a claim ends in an abstraction, it is also unpatentable regardless of whether the data gathering steps are new. Your theory really doesn’t depend upon novelty. It depends upon whether the mental steps are critical.

    Reply
  192. MM:
    1. administering the drug to the subject;
    2. determining the amount of drug in the subject’s blood; and
    3. re-calibrating the drug dosage based on step-2.

    Re-calibrating the drug dosage has no meaning unless they are going to administer it again.

    So, MM, in my haste I made a minor error which of course you immediately used to run away. Why run? Why not try to address the substance of my post? Because you are wrong and intellectually dishonest.

    The fact is that changing the amount of a drug administered is very similiar to changing the amount of a metal for an alloy. Your lame attempts to try and scare people with this nonsense of people won’t be able to think what they want to think without fear of a lawsuit is tea party tactics at thier best.

    So, MM, the man sits there in front of his pot of iron and needs has some carbon to add. Does a patent for a steel alloy prevent the man from thinking about what is the right amount of carbon to add? He has all the materials right in front of him. He read a patent on manufacturing steel. So, it would seem that he is being prevented from thinking about the right amount of carbon to add.

    You are a sad little man, MM. You have no interest in real debate but rather excluding new technology based on your own assessment of the worth of technology. That is arrogance at its worst when a man does not his limits.

    Reply
  193. 1. True

    2. True

    Rational:

    In determining the eligibility of respondents’ claimed process for patent protection under §101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the <450 U.S. 189> process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter.12 (Diehr)

    MM ignores specifically ignores the current ruling in Diehr and subsequently ignores USC 35 100 b. which states:(b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

    In addition, it is irrational to dissect claims and expect others to believe the claims are not being dissected simply because a different name is used for the act, other than dissection.

    Reply
  194. A simple two part test:

    True/False (Part One):

    1) A Patent Eligible claim can be comprised entirely of steps that are each “old in the art.”

    2) A Novel claim can be comprised entirely of steps that are each “old in the art.”

    Essay (Part Two):
    Explain how the correct answers to the Part One questions blow away any semblance of MM Rationality.

    Reply
  195. You seem like the kind of guy who craves “assurance” from self-proclaimed ‘leaders.’

    Not sure where you develop your thinking that I have any such “cravings,” but you seem to be the kind of guy to make grandiose (and unsubstantiated) claims as to patent knowledge and critical legal thinking, exceeding any reasonable approximation of reality. The only more excessive display on these boards is how full of yourself you are.

    Reply
  196. As I’ve already noted: you are the one “ignoring the actual state of the law”.

    Except that I am not.

    where the only novel step(s) in the claim

    the only novel step(s)…

    novel step(s)…

    Either you are once again engaging in dissection of claims, you cannot figure out that Diehr prevents you from taking a step-by-step approach to the 101 issue (the issue under discussion), or you are just completely believing your own crrp. (strawman indeed!)

    That’s why you only have a table to pound on.

    As for any “questions” you may have, I am ignoring them until you come to grips with reality. It is not my “credibility” that you should be concerns with.

    Reply
  197. Well, Mr. Heller:

    I am not sure about MM, but surely you have learned by now that no objectively observable process can be executed by mental steps.

    And of course you know Diehrs claim did not require a machine, or even a computer to be 101 eligible subject matter.

    Diehr could have claimed a process that only required the use of an imu oven, some hot rocks, rubber plants, a teak leaf cover and a human being that could calculate the Arrhenius equation in his/her mind and still had a statutory subject matter claim. This fact can’t be refuted based on the law. Such is the broad scope of 101 as Diehr has so interpreted it to be.

    Reply
  198. NWPA The thinking isn’t the problem. It is the change in the amount administered that is the problem.

    Neither Prometheus’ claims nor Classen’s claims require that anything be done differently from what was done in the prior art. In both cases, this fact was admitted by the patentees.

    You prove once again that you are intellectually dishonest.

    You’re an effin idjit and a useful tool. Thanks for playing.

    Reply
  199. sockie : Would the fact that your QQ’ing simply ignores the actual state of the law be a “flaw?”

    I’m not ignoring the actual state of the law. As I’ve already noted: you are the one “ignoring the actual state of the law”. So, the answer to your question is “no.”

    The simple fact is that claims can encompass “mental steps” to a degree

    Did I ever say otherwise? Nope. Your confusion and/or ignorance and/or dishonesty is duly noted. Put the strawman down now, please. Thank you.

    The case law you appear to be referring to stands only for a very trivial and minor point: the mere existence in a method of a mental step does not, by itself, doom the claim as a per se matter. Unfortunately for you, that’s not the issue we’re discussing.

    The issue I’m discussing concerns the fact pattern where the only novel step(s) in the claim are mental and the non-mental step(s) in the claim are old. In that case, a clear 101 issue is presented because the claim effectively prevents practitioners of the prior art (who can not be found guilty of infringement for their transformative acts) from thinking certain thoughts while they practice the prior art.

    This has been pointed out to you many many times now. The case law prohibiting patents whose scope is such that it prevents people from thinking about facts is crystal clear. See, e.g., Bilski.

    Getting back to the question I raised in my previous comment: do you disagree that claims in the form [old step + novel mental step] effectively prevent otherwise non-infringing practitioners of the old step from thinking about the novel mental step? If so, please articulate the reasons for your disagreement.

    I won’t hold mybreath. As I noted, it can’t be done. If you’d admit as much, you’d at least regain some of your credibility. Maybe you can ask Gene Quinn what he thinks the answer is. You seem like the kind of guy who craves “assurance” from self-proclaimed “leaders.”

    Reply
  200. Yes you can can be sued under 35 U.S.C. 100 (b) new use of a known process, machine, manufacture, composition of matter, or material.

    Reply
  201. MM: You prove once again that you are intellectually dishonest. The thinking isn’t the problem. It is the change in the amount administered that is the problem. Just as the mixture of an alloy. Can you distinguish between making an alloy and Prometheus?

    OK John, common as grass or say iron. That doesn’t mean that it is not eligible for patentability any more than a new alloy only that some of it may be obvious.

    Reply
  202. Egad” is right.

    Malcolm does not understand process claims.

    Malcolm does not understand the adage “There is nothing new under the sun” when it comes to a whole claim that includes various old steps, known in the art, or for that matter, combinations of items old in the art for non-process claims.

    Malcolm would dissect claims down to the “point of novelty” and require something new, somewhere in a claim.

    Malcolm is a 101 creationist, clinging to his notion when faced with the law and with the facts.

    Malcolm only has his table to pound on.

    How very sad.

    Reply
  203. I’ll save you the time: there isn’t any flaw.

    Would the fact that your QQ’ing simply ignores the actual state of the law be a “flaw?”

    The simple fact is that claims can encompass “mental steps” to a degree and thus your “very straightforward and not making any assumptions” analysis is wrong from the start. Your dissection and anti-Diehr views merely add a second layer of wrongness to your analysis.

    This has been pointed out to you many many times now.

    Reply
  204. Correction: You can NOT successfully sue me for calculating something in my head or thinking about something while I’m practicing the prior art.

    Egad.

    Reply
  205. sockie the sockpuppet: You claim some exalted high ground of thinking

    Not at all. The analysis is very straightforward and I’m not making any assumptions. Unless you believe that people practicing the prior art can be turned into infringers merely because they are thinking about something “new”, then the correct result is irrefutable and follows from the application of basic logic, like night follows day.

    it is obvious that your premise is flawed from the onset.

    My only premise is that our patent system does not allow you to protect knowledge itself, i.e., by turning otherwise non-infringing people into infringers merely because they are thinking about facts that a patentee has dedicated to the public. Where is the flaw, sockie?

    I’ll save you the time: there isn’t any flaw.

    Reply
  206. Ned: Malcolm’s test would hold Diehr unpatentable.

    That is absolutely correct (unless the claims in Diehr were construed to require the use of a particular machine).

    Note that this is not a “flaw” in my analysis. It is a flaw in the “analysis” used in Diehr.

    To reiterate, the act of “opening said press” was old in the art. Obviously, every time the press is opened, some time will have passed. By itself, the act of opening the press itself is unpatentable (because it’s old in the art) and I am therefore free to open the press **whenever I want to**, just as I was freely able to do that before Diehr filed his patent application.

    However, if Diehr’s patent is granted and I happen to open the press at a time corresponding to the “answer” provided by Diehr’s equation, am I now infringing? If Diehr is anything like Mr. Classen, then I may be sued. Diehr will say that I infringe because I am doing the calculation in my head and determining when to open the press based on the calculation. Diehr may send me a copy of the patent by registered mail and later point to my receipt of the patent as “evidence” that I “knew” of the equation. For all practical purposes, I am being accused of infringing because of what I am thinking. After all, I can’t be liable merely for opening the press when the press is ready to be openened. That was done in the past.

    Let’s say that I have a chalkboard on the wall near my rubber press with the Ahrrenius equation written on it. Should that matter? Of course not. I’m free to write down whatever equations I like, and I’m free to write them down wherever I like.

    You can successfully sue me for calculating something in my head or thinking about something while I’m practicing the prior art. You can try, but at the end of the day you will never succeed. If Diehr would have tried to sue someone for manually opening a rubber press at a time corresponding to the answer provided by his equation, Diehr’s patent would have crashed and burned.

    That is the only correct result, unless you believe that our patent system allows you to control what people who are practicing the prior art are thinking about while they do it. Does anyone believe that? I’m aware of no judge who believes that.

    Again: this is not conflation, this is not “claim dissection.” This is an analysis of the real-world practical effects of allowing claims in the form [old step + new method of thinking about old step] or [new method of thinking + old step] to be patent eligible and enforceable.

    Reply
  207. Mr Ned Heller:

    The Supreme Court did not approve of the CAFC sanctioned MOT test, which was a policy created by the USPTO that illegally changed law.

    All the Court did was acknowledge the use of machines and transformations as the clue to the eligibiilty of process claims for machines and transformations.

    Reply
  208. Mr Ned Heller:

    My name is The Diehr Expert, not, Your Excellency . And I have only asked you to afford me the same kind of courtesy and respect that I have shown you by addressing me by my name.

    You have had ample opportunity to provide an intellectually honest alternative to the broad interpretation of Diehr.

    Having failed to do so, and lacking any merit, you descend into mockery and sarcasm.

    Reply
  209. I get the feeling that you’re still in awe of information processing because you were around when it wasn’t as commonplace as grass. To us younger people it isn’t so “extraordinary” it is “ordinary”.

    Reply
  210. 6, that is enough for me, but not for Malcolm.  He has made the case that Diehr is justified only when the math is executed by a programmed computer, not when it is executed by mental steps. 
     
    I just point out to him that the claims themselves are not limited to a programmed computer.
     
    AFAIK, he as not responded, indicating that his position is unaltered.  Malcolm's test would hold Diehr unpatentable.
     
    Since I still believe in the MOT, the last step being transformative and physical, I would still agree that Diehr is patentable even if the math were calculated by a
    human.
     
     

    Reply
  211. that is sufficient “doing something new”

    Except that is not “doing something new”

    Reply
  212. Ned, you don’t understand MM at all. Probably because of that tardation problem of yours.

    “”(i) opening said press when a said comparison of calculated total required cure time and monitored elapsed time indicates equivalence, and”

    ^ that is sufficient “doing something new” to satisfy MM’s test in so far as it has thus been announced.

    Try posting the whole claim next time.

    Reply
  213. Mr. Heller:

    Yes “we” can say exactly as Diehr has said, and “we” are legally bound to follow.

    The Diehr Court said:


    In contrast, the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to pre-empt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process. ”

    Therefore according to and in Diehr, pre-emption is only applied to mathematical equations.

    Even then the equation can pre-empt others from using it as long as it’s in relation to it’s application, and not to the equation itself.

    For those that wish to expand pre-emption to abstract concepts, such an analysis will collapse like a house of cards with the making of one key point.

    All the inventor has to do is present one example of an application of the concept that is not pre-empted by the claims.

    Obviously Diehr can present many uses of the Arrhenius equation that is not pre-empted by the claims.

    The same can be done by any inventor that knows the difference between the concept and the application of the concept, and can then present one example of when the claims do not pre-empt the concept.

    And this ends the pre-emption discussion.

    Reply
  214. “Well if u prefer that all info processing fails 103 instead of 101 i dont particularly mind so long as u dont question my rejection.”

    Something to consider, but you don’t examine in that group. Just stick to thicknesses of deposition layers.

    Reply
  215. Well if u prefer that all info processing fails 103 instead of 101 i dont particularly mind so long as u dont question my rejection.

    Reply
  216. Sure we can ned, it starts by not being a tard. Then you consider a given abs idea. Then consider all conceivable uses o that abstract idea. Then consider if the clAim covers all of them. (an ez way for attorneytards is to draft a hypo claim just explicitly to the abs idea and consider that claims scope and then compare that scope to the instant claim’s scope). Ive told u this like a million times and its as ez today asit was then.

    But ur right in reality mot does a decent job if u dont flub it intentionally because ur patent protectin’.

    Reply
  217. Mr. Neller:

    That is the very point. If a process is patent eligible under Diehr, there is no need to ask the question if it is patent eligible under Benson. Diehr controls.

    Reply
  218. Your Excellency, The Diehr Expert, O Seer of magical propensity, may I sit at your feet and learn from your wisdom.

    So that I, and every visitor to this site, may learn and understand just how Diehr cabined Benson, can you, your Excellency, provide us with one example of a process that is patent eligible under Diehr but not patent eligible under Benson? Just one?

    Reply
  219. Mr. Heller:

    First of all you will address me as The Diehr Expert, not as Diehr. Second your topic sentence (” Diehr, used Benson’s MOT to find the claims patent eligible. “) is loaded with at least two false assumptions. One of which is most pertinent here.

    First, there is no more a “Benson MOT” than there is a “Corning MOT” or a “Burr MOT” or a “Cochrane MOT”

    Machines and transformations have been the clue to the patentability of Machines and Transformations since the advent of Machines and Transformations in the iron age.

    Your concluding question is a red herring in that it does not address nor provide evidence for your false statement that ” Diehr, used Benson’s MOT to find the claims patent eligible. ”

    Which I thoroughly rebutted in the above post. So no need for redundancy in reposting those points or to go in circular reasoning with you.

    However Sir, if you wish to address the points in my previous post directly you may do so and I will respond, as a gentleman and scholar would so do.

    As far as Diehr cabining Benson, this was made crystal clear by the Supreme Court in Bilksi with the following statement:

    “Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.”

    The above fact can’t be refuted.

    Flook’s underlying principle was based on Benson. Therefore the basis for the cabining of Benson is similar to that of the cabining of Flook.

    Perhaps it is best explained by Justice Stevens that wrote the minority opinion in Diehr.

    Stevens: “The Court of Customs and Patent Appeals has taken the position that, if an application is drafted in a way that discloses an entire process as novel, it defines patentable subject matter even if the only novel element that the inventor claims to have discovered is a new computer program. 24 The court interpreted Flook in this manner in its opinion in this case. See In re Diehr, 602 F.2d 982, 986-989, 203 USPQ 44, 49-52 (CCPA 1979). In my judgment, this reading of Flook — although entirely consistent with the lower court’s expansive approach to §101 during the past 12 years — trivializes the holding in Flook,the principle that underlies Benson, and the settled line of authority reviewed in those opinions.”

    Therefore, In 2011 and for the foreseeable future, all Courts must adhere to Diehr’s , “application of concepts to industrial processes” as the controlling analysis for 101 subject matter. With machines and transformations being relegated to a mere but sometimes helpful clue.

    Reply
  220. Diehr, 
     
    Diehr, used Benson's MOT to find the claims patent eligible.  If Benson was cabined, how?  You say Diehr stood for “ application” and following with “ known structure or process.”  You imply that Benson did not.  But that's where the notion came from, at least when the claim is to a process. 
     
    Benson:
     
    "He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end." We dealt there with a "product" claim, while the present case deals only with a "process" claim. But we think the same principle applies."
     
    I struggle to understand just you point.  You say things about Benson and Diehr that are not clearly
    correct.  Perhaps you should elaborate just a bit more.
     
    Give me one example, just one, of a process claim that Diehr would have found patent eligible but that Benson would not.

    Reply
  221. It’s like discussing the details of genetic drift with a creationist in the room.

    Except, MM, you are the “101 creationist” in the room. It is wryly amusing to see the passion with which you fight your losing cause, to see the table pounding that you do, not even realizing that all you have is table pounding. You claim some exalted high ground of thinking when it is obvious that your premise is flawed from the onset.

    Predictable descent into _xx_ style diatribe response in 4… 3… 2…

    Reply
  222. MM’s (incorrect) stance on Diehr, and his persistent ridicule of “Diehrbots” have long been recognized as stemming from his flawed legal framework.

    He has been invited – politely (by some) and not so politely (by many) – to actually conform his analysis to an acceptable level of critical legal thinking.

    He has declined all such invitations. This is a “Malcolm” problem. And while it is a persistent problem, it is one that is easily recognized and dispatched (just apply critical thinking).

    Reply
  223. “The ignorant and/or confused and/or nxtcxses are those who believe that 101 permits claims that turn those who are practicing the prior art into infringers merely because they think certain thoughts about the results that they are unquestionaly entitled to obtain.”

    The fatal flaw in your assertion is that people can infringe a patent by merely thinking.

    Such is impossible therefore there is no need for your dissection of mental and/or old steps in a process.

    Furthermore any such analysis would run afoul of the dictum that says:

    ” a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.”

    Reply
  224. ” Diehr clarified Benson. Diehr noted the “clue” portion of Benson. That clue is the MOT, and it has gone on to become the all but exclusive test. In other words, if a claim passes the MOT, it is patent eligible. If it fails, it probably does not. But whether there is a suplemental test has yet to be fully worked out.”

    Mr. Ned:

    The major flaw in your reasoning is the false characterization of Diehr as a narrowing opinion when in fact the case is an expansion of the broad scope of 101 subject matter.

    Diehr did not clariy Benson, in so much as it cabined the decision. This fact is irrefutable. Therefore Benson must be viewed through the lens of Diehr as must all 101 subject matter cases. In that regard, what Flook said about Benson is irrelevant as well.

    It is the “application of concepts to industrial processes” that is the controlling analysis for 101 subject matter. With machines and transformations being relegated to a mere clue.

    To what extent a MOT was used in the analysis in Benson or Diehr for that matter, had no limiting factor on the eligibility of the claims in Diehr.

    The Diehr Court said, “It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. ”

    Note the Court’s use of italics for the word “ application” and following with
    “ known structure or process” and not with Machine or Transformation.

    Clearly showing, “application of a concept” is the analysis used to conclude that Diehrs process is patent eligible.

    The Court further states: “Arrhenius’ equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is at the very least not barred at the threshold by §101.”

    Note that the Court did not say which incorporates a “ Machine or Transformation”. Which would have been the exalting of a MOT test and a clear ruling that the MOT was “the” reason Diehr received his patent.

    Instead, the Court chose the broad and inclusive language of “ efficient solution of the equation” to base its decision on.

    Those that chose to imply Diehr is based on and stands for an all but exclusive MOT test are being inherently dishonest or willfully ignorant in the reading of the case.

    Reply
  225. Night, even so, its MOT test was adopted as the exclusive test by the Federal Circuit and all nine justices of the Supreme Court approved of it in Bilski, abeit, not as the exclusive test.  So much for the disrespect argument.

    Reply
  226. I guess. 

    What I am trying to understand is what you are talking about.  You actually assume that everyone knows what you mean.  Trust me.  No one, or at least, very few of us actually do.

    Reply
  227. Night, perhaps we are not communicating.  When you say all information processing is patent eligible, are you in any way limiting this statement to something physical?  Can someone infringe if the information processing is entirely mental?

    Reply
  228. MM, thanks.  I understand your position now.  Clearly.  

    Circling back to Diehr, your position had the only thin new in the process been a mental step, you would have held the claim unpatentable regardless that the use of the output of the mental step was actually claim and actually otherwise was within the MOT.  You would require that the claim be limited to the use of a programmed computer to calculate the new algorithm.

    Now let's look at the Diehr claim, which described its calculation steps as follows:

    "(g) repetitively calculating at frequent periodic intervals throughout closure of said
    press the Arrhenius equation for reaction time of said rubber to determine total required cure time v as follows:

    "ln v=cz+x
    "wherein c is an activation energy constant determined for said rubber being molded and cured in said press, z is the temperature of said mold at the time of each calculation of said Arrhenius equation, and x is a constant which is a function of said predetermined geometry of said mold,
    "(h) for each repetition of calculation of said Arrhenius equation herein, comparing the resultant calculated total required cure time with the monitored elapsed time measured by said interval timer,"

    Where is there any limitation that the
    calculation be conducted by a computer?  

    Reply
  229. Now that you are past the denial stage, please try harder.

    Reply
  230. The difference is that you see the final act of the hard substance of the alloy as being patent eligible and not the method of treatment. And, yet, dope, the acts and thinking are the same.

    It’s like discussing the details of genetic drift with a creationist in the room.

    Reply
  231. MM, dope2, etc.

    “does it preventing thinking…” and other such nonsense.

    Imagine a person making an alloy. Why can’t they just think of what would be the best mixture as now they know from my patent. And, why can’t they add as much of a metal as they want? You are preventing them from thinking and taking acts that are easily within their ability.

    That is the same as Prometheus. The difference is that you see the final act of the hard substance of the alloy as being patent eligible and not the method of treatment. And, yet, dope, the acts and thinking are the same.

    Dope. You are working backwards dope. dope. dope. dope. dope. dope.

    Reply
  232. Quoting Benson is like quoting Monty Python for patent law. Benson is the most ridiculed reviled SCOTUS opinion on patent law.

    Benson illustrates psychotic thinking of a policy based argument. I have never seen an article written in a serious journal that said Benson made any sense whatsoever.

    Reply
  233. You know, Ned, “a mathematics claimed as a process” illustrates such a vast ignorance that it makes me think you are not even qualified to engage in this conversation. Your way of thinking of mathematics was transformed in the middle of the last century into a modern understanding of information and information processing.

    Your views would be current in about 1920.

    Reply
  234. Fair enough, 6. But, just because it is ordinary doesn’t mean it is not eligible for patent, only that it is obvious.

    Reply
  235. Ned, my position is that represented information is transformed by information processing methods. That all information processing methods are patent eligible.

    Ned, what is a mathematical algorithm? It is a nonsense term. There are information processing methods. Period. End of story.

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  236. IIRC, you agreed with the result in that case

    No, I agreed with the dissent.

    A person employing the new mental steps in the old process is not being sued because he is thinking. He is being sued because he is “doing” something new.

    The only thing he’s doing that is “new” is thinking. Or to put it another way, to an observer of this person, the person is not doing anything new. The person is being sued for thinking or even knowing about something new.

    And just to remind everyone: Classen admitted that the infringer did not need to “do” anything differently in order to infringe. Infringement was alleged based on the fact that the infringer (1) was aware of Classen’s teaching and (2) had looked at the results of old, unpatentable clinical tests.

    With respect to the boiled egg story, please recognize that I do not dispute the (indisputable)fact that “new” ideas or newly discovered facts are useful.

    Rather, I’m recognizing that if a claim recites a mental step and if the only transformative (non-mental) steps/acts recited in that claim are old, then the grant of such a claim effectively turns otherwise non-infringing actors (practitioners of the prior art) into infringers merely because they know or appear to know something. Such claims cannot be simultanously eligible, patentable and enforceable under our patent system without reversing its least disputed principles.

    With your boiled egg story you seem to be arguing that the policy favoring better boiled eggs overrides the policy which prohibits finding people liable for infringement merely because they think certain thoughts while they boil their eggs. Is that your belief? Do you believe that the “useful arts” to be promoted by patents includes the “art of thinking”? You’re entitled to believe whatever you want, of course. I think such beliefs are nutty, to say the least.

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  237. 6, I might agree to this:

    If a claim 1) fails the MOT and 2) preempts all practical uses of the abstract idea present, then it…

    Both have to be present.

    But, how does one determine that all practical uses are preempted? Well, one way, is to fail the MOT. So 2) delves into 1). The other way is where the use claimed is the only practical use, as in Benson. But, how does one determine this? We cannot really.

    So, where does that leave us in reality? Failure of the MOT essentially means that all practical uses are covered by the claim, not so?

    If not, why not?

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  238. My test has a supreme advantage over all other tests

    All we need is the bad evil villian track…

    What A Douche!

    Reply
  239. Malcolm, your hypo here is does not include that the data in Diehr is measured, but let's simply go with your example as a starting point.  Your example is very close to the facts in the immunization process that was recently confirmed as patent eligible in Classen (I think that was the case name.)  Immunization according to a schedule was old.  The only thing new was the schedule.  IIRC, you agreed with the result in that case, so I assume you agree that immunization according to the new schedule was patent eligible.

    I think both Classen and your example are patent eligible because the claim still requires that the infringer actually use the data resulting from the mental steps to do something.  Because the data is different, the something that is done is
    different.  This is a new transformation, just like Diehr. 

    Take the boiled egg for example.  The process claimed is this:  boil the egg for three minutes, but add a number of seconds equal to the altitude one is at in feet divided by 1000.  (I will assume this compensates for something in the cooking process that is affected by altitude.)  Even though the only thing new is the mental calculation, the result will be an egg cooked for different times depending on the altitude.  Now that results in a the different boiled egg.

    A person employing the new mental steps in the old process is not being sued because he is thinking.  He is being sued because he is "doing" something new.

    Reply
  240. Ned: I would presume that the answer in Diehr would have been the same if the mathematics were performed mentally rather than by using a programmed
    computer.

    I wouldn’t presume that.

    Do you think a claim such as the following should be eligible?

    1. A method of stopping process X, comprising

    calculating time T in your head using new algorithm A, and stopping process X at time T.

    So what if I have been stopping processs X at time T for years prior to the priority date, but doing so for different mental reasons (e.g., because it seemed to work most of the time). Now I read the patent and I understand why it works. The patentee knows I’ve read the patent. I have the algorithm memorized. Am I now an infringer when I stop the process at time X? Because I’m pretty sure I’m going to be sued.

    And if you think this is some arcane hypothetical that will never happen, you are naive.

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  241. simply saying that the point of novelty in the claim lies in the mental steps is not sufficient to state that the claims are directed to nonpatentable subject matter.

    I assume you meant to say “non-eligible subject matter.” It actually is that simple, Ned, for the reasons that I’ve provided. If there is any step in the reasoning that you don’t understand, let me know and I’ll point it out to you. The fact that the reasoning leads to a conclusion that is different from what you’d get by applying some other test is irrelevant. My test has a supreme advantage over all other tests: there are no assumptions and everyone agrees that you can’t use patents to prevent otherwise non-infringing actors from thinking about “new” facts. The only disadvantage of my test is that it is not universal, i.e., it is only relevant to claims that prevent otherwise non-infringing actors from thinking “new” facts.

    The critical feature of patentable subject matter analysis is that the output of the metal step or mathematical algorithm is actually used to do something physical, something within the
    MOT.

    As we all know, the MOT test is not “the” critical feature. It’s just a useful tool for identifying claims that are likely ineligible under 101, e.g., claims to abstractions.

    There are other critical features of patentable subject matter analysis. One such feature is addressing the following question: does the claim have the practical effect of preventing an otherwise non-infringing actor practicing the prior art from thinking about a “new” fact? If the answer is yes, then the claim must be ineligible under 101 *or* the mental step must be ignored and the claim is unpatentable as a matter of law. Or it’s simply unenforceable. Take your pick (unless you believe that claims should have the practical effect of preventing otherwise non-infringing actors from thinking “new” facts).

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  242. Malcolm, if the law were very clear, I mean very clear, that mental steps could not be taken into account for novelty and/or obviousness purposes, then the patentability of claims processes with new mental steps could be decided entirely under 102/103.  But at times, the inclusion of mental steps in a process can be the novel subject matter and still the process can be directed to patent eligible subject matter.  Take for example the process in Diehr.  It was directed to a molding process regardless that the novelty lay in the use of a mathematical formula to calculate when to open the mold.  I would presume that the answer in Diehr would have been the same if the mathematics were performed mentally rather than by using a programmed
    computer.  The overall process still transformed an article from one state to another.  The output of the mathematics was actually used to do something practical and that use was actually claimed.

    When we are talking about whether we can discount the mental steps from patentability under 102/103, I would agree with you that the assumption we are making is that the sole point of novelty of the claim lies the mental steps.  But simply saying that the point of novelty in the claim lies in the mental steps is not sufficient to state that the claims are directed to nonpatentable subject matter.  The critical feature of patentable subject matter analysis is that the output of the metal step or mathematical algorithm is actually used to do something physical, something within the
    MOT.

    But, in contrast when the transformative steps of the process merely gather data for the final steps of the process, we have a whole different kettle of fish.  Regardless that the transformative steps are new or old the claimed ends in an abstraction.  The final steps of the process are not used for anything, or a least anything claimed.  This is radically different the patentable process of Diehr where the output of the "mental step" was used to open the mold and thereby transform an article from one state to another.

    Reply
  243. It’s not conflation. It’s analyzing the practical effect of the patent claim on the public. Do you believe that the Supreme Court’s 101 jurisprudence is devoid of the consideration of the practical effect on the public of granting certain types of claims?

    If you don’t like my “logic” with respect to this issue, then you are welcome to try to refute it. As I’ve noted before, you will certainly fail because I am not making any assumptions about the law. But you are welcome to try to refute the logic.

    The ignorant and/or confused and/or nxtcxses are those who believe that 101 permits claims that turn those who are practicing the prior art into infringers merely because they think certain thoughts about the results that they are unquestionaly entitled to obtain.

    If you’re too ignorant to understand this or too dishonest to admit the truth of what I’m saying, then you aren’t alone. I suppose, like chimps huddled together in a cave, you could take comfort in that.

    Reply
  244. Malcolm, the problem I have with your proposition is that it criticality depends upon a preliminary finding that the transformative steps are old (obvious).

    No, Ned, it doesn’t depend on a “preliminary” finding. That “finding” can be made at any time. As often as not, the existence of the transformative step in the prior art is admitted by the applicant/patentee.

    Also, while it may be useful to recognize the “data gathering” functionality of steps as an indicator of a potential 101 issue, it does not matter if the old transformative step precedes or follows the mental step. The practical effect of the claim on practitioners of the prior art step is identical.

    The newness or oldness of the transformative steps is irrelevant.

    I disagree. The newness or oldness of the transformative step(s) are very relevant as a practical and legal matter. If the transformative method is new, then an independent claim reciting only that method (and no mental step) is both eligible and patentable. A dependant claim reciting a subsequent mental step, regardless of the novelty of that mental step, does not render the independent claim suddenly ineligible or unpatentable.

    A more accurate statement of what the law should be is: “The newness or oldness of the mental step is irrelevant to patentability. The existence of a mental step is always relevant to eligibility, although not necessarily determinative thereof.”

    Note: I’m using the terms “eligibility” and “patentability” very carefully here.

    Reply
  245. Learn, I assume you agree with my point, although the way you address the post, to me and not to Malcolm, is confusing on this point.

    Reply
  246. Night, I am still unsure of your position. Do you suggest that a mathematics claimed as a process is patent eligible?

    If not, what makes a mathematical algorithm patentable?

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  247. “The extrodinary ability of an invention that can transform represented information”

    I get the feeling that you’re still in awe of information processing because you were around when it wasn’t as commonplace as grass. To us younger people it isn’t so “extraordinary” it is “ordinary”.

    Reply
  248. “Ned the fed. cir. has held that a represented object that is transformed in the computer memory is a transformation. Ergo, transforming represented information is a transformation.”

    Should have been:

    “Ned the fed. cir. has WRONGLY held that a represented object that is transformed in the computer memory is a transformation. Ergo, transforming represented information is NOT a transformation, and the USSC will set the Fed straight once again on basic issues that a kindergartener would not have trouble getting correct but for a patent protectionist bias.”

    Reply
  249. “it cannot be a “wholly preempt” test”

    Too bad that it is lolololol.

    Reply
  250. Malcolm, the problem I have with your proposition is that it criticality depends upon a preliminary finding that the transformative steps are old (obvious).

    If they were new, just as you say, they should be patentable subject matter per se without regard to what use to which they are put. But the structure of the claims at issue is directed at the final mental steps. The newness or oldness of the transformative steps is irrelevant. They are, in fact, data gathering steps for the final step or steps that are directed to unpatentable subject matter: Mental steps.

    Thus, such claims, considered as a whole are not directed to patentable subject matter regardless that the data gathering steps are new.

    Reply
  251. NWPA, I am not so sure I understand your point. Are you suggesting that mathematical algorithms per se are patentable? For example, if “long division” were new, one could patent the method for doing long division?

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  252. “Link between natural law and equations?” Huh?

    Here is the holding:

    “Transformation and reduction of an article “to a different state or thing” is the clue to the patentability of a process claim that does not include particular machines.”

    It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”

    I think Benson thought the claims were directed to an “idea.”

    Reply
  253. The extrodinary ability of an invention that can transform represented information. The extrondinary invention of information processing methods that transform represented information.

    The mere MM.

    Reply
  254. If you don’t like my “logic” with respect to this issue, then you are welcome to try to refute it

    Try?

    The Supreme Court smacked you down!!!

    ! ! ! Bilski 14 ! ! !

    As I’ve noted before, you will certainly fail because I am not making any assumptions about the law

    You are quite simply DELUSIONAL ! ! !

    Read and Weap – and then weap some more!

    ! ! ! Bilski 14 ! ! !

    Reply
  255. MM – claim disection

    No, it’s not “claim dissection.” It’s analyzing the practical effect of the patent claim on the public. Do you believe that the Supreme Court’s 101 jurisprudence is devoid of the consideration of the practical effect on the public of granting certain types of claims?

    If you don’t like my “logic” with respect to this issue, then you are welcome to try to refute it. As I’ve noted before, you will certainly fail because I am not making any assumptions about the law. But you are welcome to try to refute the logic.

    The ignorant and/or confused and/or nxtcxses are those who believe that 101 permits claims that turn those who are practicing the prior art into infringers merely because they think certain thoughts about the results that they are unquestionaly entitled to obtain.

    If you’re too ignorant to understand this or too dishonest to admit the truth of what I’m saying, then you aren’t alone. I suppose, like chimps huddled together in a cave, you could take comfort in that.

    Reply
  256. that the patent-ineligibility of the novel step

    …novel step…?

    …step…?

    Oh it’s MM – claim disection ignorance reigns supreme once again.

    ZZZZZZZZZZZZZZZZ – C’mon Malcolm, find some new stuff already.

    Reply
  257. Ergo, transforming represented information is a transformation

    Yes, but the mere transformation of information is insufficient to confer patent eligibility upon a claimed process. This is irrefutable. As a test, we’ll let NWPA himself explain why my statement is irrefutable. Of course, he’ll need to use his … brain.

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  258. My 1:47 pm comment was terribly written. Ignore it in favor of this edited version:

    And this “data gathering” business as well is a red herring. If the transformative steps in those claims were patentable on their own (i.e., novel), they would never, ever be deemed to be “mere data gathering.” It’s because those data-gathering steps were old in the art that the patent-ineligibility of the novel step(s) (i.e., mental step(s)) becomes palpable. Claims in the form [old data gathering step + new mental step], in other words, “pre-empt” uses of certain newly discovered (and patent-ineligible) facts by otherwise non-infringing actors. Such claims are therefore ineligible for patenting under 101.

    Prometheus was wrongly decided and will certainly be overturned by the Supreme Court for this reason.

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  259. Ned the fed. cir. has held that a represented object that is transformed in the computer memory is a transformation. Ergo, transforming represented information is a transformation.

    Additionally, this mathematical equation business is nonsense. Simply because one can represent something using mathematical equations does not mean a whole lot in terms of whether or not it should be eligible for patentability.

    The bizarre link that Benson trys to make between anything that can be represented as an equation and natural laws is simply ignorant and ridiculous.

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  260. The other failed because the precurror steps that may have involved transformations were deemed data gathering.

    And this “data gathering” business as well is a red herring. If the transformative steps in those claims were patentable on their own (i.e., novel), they would never, ever be deemed to be “data gathering.” It’s because those steps were old in the art that the patent ineligibility of the novel step (i.e., the mental step) becomes patentable. Such claims, in other words, “pre-empt” uses of certain newly discovered (and patent-ineligible) facts by otherwise non-infringing actors. Such claims are therefore ineligible for patenting under 101.

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  261. And I might add, that we get a clue with the two recent cases that decided the claims are not patent eligible.

    One failed because if 1) failed the MOT; and 2) could be performed entirely by a human.

    The other failed because the precurror steps that may have involved transformations were deemed data gathering.

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  262. Night, I agree that every patent preempts what it claims so the wholly preempt aspect of Benson, read as do some, is nonsense. Gibberish.

    What Flook said about Benson was that this aspect of the case was essentially nonsense as well. They noted, rather, that the problem with the Benson claims were that they essentially were claiming the mathematics, not a machine or a machine process. But why?

    Diehr clarified Benson. Diehr noted the “clue” portion of Benson. That clue is the MOT, and it has gone on to become the all but exclusive test. In other words, if a claim passes the MOT, it is patent eligible. If it fails, it probably does not. But whether there is a suplemental test has yet to be fully worked out.

    But I would agree with you, it cannot be a “wholly preempt” test. That simply is a backwards way of describing either the MOT or what every claim does to its novel subject matter. It is gibberish.

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  263. One could invalidate ANY patent with this type of nonsense.

    This is no standard but a invitation to arbitrarily include or exclude subject matter based on policy reasons. Shame on you SCOTUS. You defile human dignity.

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  264. What Gibberish in Prometheus!

    “the claim effectively preempts all uses of the naturally occurring correlations.”

    This clause is not patent law nor is it rational thought. The way it is supposed to work is that the inventor is entitled to a scope commensurate with enablement. This inquirey that the SCOTUS first articulated in Benson (the mother of all nonsense) simply is unanswerable. The claim effectively preempts all uses of the invention to the extent it is enabled by the disclosure. Every patent does this. There question is a nonsequitor. I am a liberal democrat, but I want Obama out of office because the liberals he appoints obviously do not understand patent law or the world. It makes me think the Republicans are right about a lot of other things when I see this type of nonsense.

    Douglas, Stern, Stevens, shame on you.

    Reply
  265. This is exactly the same MO as when i got hit by the Car. you all cleaned up.. it put you through UMAss.. and you were all laughing at me calling me Crippy, Chester, Gimppy, and Limpy. and then I contact an atty. and you throw me 5,000.00 claiming it was my Settlement. Well I have news for all of you. Sixty Years is all I am taking. The rest of my Life will be mine and i don’t give a RATS PATOUTTI who gets HURT. I have had SIXTY YEARS OF THIS FRAUD!

    Reply
  266. 6

    “Words can barely describe the awesome present.”

    That is so, like, heavy, man.

    Tell me you filed a provisional before making your disclosure.

    Reply
  267. very informative and interesting article published, Really very interesting to read out this article

    Reply
  268. link to emotiv.com

    Words can barely describe the awesome present. It’s a fairly cheap version of the brain receptor tech that’s been in use for awhile. Anyone want to join me in forming a startup to develop tech around it? Maybe we can cure autism and whatever else the inventor was wanting to do as a side bene.

    Soon this will be integrated right into the iphone etc. And we will walk around mind controlling our smart tablets n phones etc.

    Indeed, I hereby do disclose such an invention and claim the same.

    Reply
  269. Ned – I agree. This issue is ripe for Supreme Court review, and I’ll be writing a post on the denial of rehearing en banc in Kimberly Clark later this week.

    Reply
  270. Jason, thanks. I see another case that will likely be petitioned, and if I read the dissents correctly, the issue is important.

    Kimberly-Clark v. First Quality Baby Products

    link to cafc.uscourts.gov

    Here the Federal Circuit denied rehearing en banc in a case where a panel had reversed a district court grant of preliminary injunction with respect to three of four patents on the basis that the defendant had raised issues of validity that were not “substantially meritless.” (The panel had affirmed the grant of a preliminary injunction with respect to the fourth patent.)

    Three judges dissented in two opinions. The dissenting judges observed that the “substantially meritless” standard will effectively deny any patent plaintiff a preliminary injunction. Every defendant can raise a defense to validity that is not substantially meritless.

    The dissenters observed the panel decision was not only not in accord with Supreme Court case law, but was not in accord with the case law of every other regional circuit. That law requires a consideration of whether the plaintiff was” likely to succeed on the merits,” not whether the defendant had raised a defense that was not “substantially meritless.”

    The dissenters also noted that the statutory presumption of validity had to be taken into account in deciding likelihood of success of holding a patent invalid.

    The dissenting judges were Newman O’Malley and Reyna. The panel decision was by Dyk Friedman and Prost, Prost writing the opinion.

    Reply

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