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. 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
  2. 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
  3. 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
  4. 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
  5. 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
  6. Since the opposite was your reason for not allowing claims with mental or novel steps, your entire proposition fails.

    ::Game Over::

    Reply
  7. 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
  8. 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
  9. ” 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
  10. 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
  11. 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
  12. in the direction I favor. Sxcks to be you.

    One word: Scoreboard.

    Reply
  13. 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
  14. 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
  15. 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
  16. “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
  17. 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
  18. 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
  19. 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
  20. 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
  21. 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
  22. 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
  23. 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
  24. 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
  25. 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
  26. 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
  27. 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
  28. 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
  29. 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
  30. 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
  31. 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
  32. As I’ve noted before,…

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

    Reply
  33. 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
  34. 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
  35. 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
  36. 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).

    Reply
  37. 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.

    Reply
  38. 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
  39. 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”).

    Reply
  40. 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.

    Reply
  41. 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
  42. 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
  43. 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
  44. 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
  45. 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
  46. 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
  47. Sounds like the table that MM is pounding is made of paper – it folds quickly when pounded.

    Reply
  48. 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
  49. 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.

    Reply
  50. 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
  51. 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
  52. 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
  53. 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
  54. 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
  55. 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
  56. 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
  57. 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
  58. 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
  59. “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
  60. 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?

    Reply
  61. 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
  62. 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
  63. Cite please?

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

    Reply
  64. 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
  65. 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
  66. Malcolm is usually right.

    Like in Diehr?

    Why yes, precisely like in Diehr.

    STFU Ned.

    Reply
  67. 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
  68. Sockey, there is a difference between you an Malcolm as far as I can tell.  Malcolm is usually right.

    Reply
  69. “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
  70. 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
  71. 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
  72. 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
  73. 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
  74. 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
  75. 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
  76. 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
  77. 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
  78. 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
  79. 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
  80. 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
  81. 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
  82. 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
  83. 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
  84. 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
  85. 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
  86. 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
  87. 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
  88. 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
  89. 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
  90. 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
  91. 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
  92. that is sufficient “doing something new”

    Except that is not “doing something new”

    Reply
  93. 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
  94. 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
  95. “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
  96. 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
  97. 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
  98. 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
  99. 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
  100. 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
  101. 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
  102. 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
  103. 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
  104. “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
  105. ” 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
  106. 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
  107. 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
  108. 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
  109. 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
  110. Now that you are past the denial stage, please try harder.

    Reply
  111. 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
  112. 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
  113. 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
  114. 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
  115. Fair enough, 6. But, just because it is ordinary doesn’t mean it is not eligible for patent, only that it is obvious.

    Reply
  116. 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.

    Reply
  117. 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.

    Reply
  118. 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?

    Reply
  119. My test has a supreme advantage over all other tests

    All we need is the bad evil villian track…

    What A Douche!

    Reply
  120. 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
  121. 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.

    Reply
  122. 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).

    Reply
  123. 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
  124. 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
  125. 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
  126. 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
  127. 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?

    Reply
  128. “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
  129. “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
  130. “it cannot be a “wholly preempt” test”

    Too bad that it is lolololol.

    Reply
  131. 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
  132. 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?

    Reply
  133. “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
  134. 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
  135. 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
  136. 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
  137. 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.

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  138. 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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  139. 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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  140. 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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  141. 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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  142. 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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  143. 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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  144. 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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  145. 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.

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  146. 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
  147. 6

    “Words can barely describe the awesome present.”

    That is so, like, heavy, man.

    Tell me you filed a provisional before making your disclosure.

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  148. very informative and interesting article published, Really very interesting to read out this article

    Reply
  149. 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.

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  150. 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.

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  151. 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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