BPAI: “Programmed Computer Method” Not Patentable Subject Matter

Ex parte Halligan (BPAI 2008)

Halligan’s patent application claims a “programmed computer method” that operates to identify trade secret information. (Claim 119). In essence, the computer program has the common law rules of trade secrets hardcoded, and those rules are applied to determine whether particular information is a “trade secret.” Applying the machine-or-transformation test of Bilski, the Board of Patent Appeals and Interferences (BPAI) rejected Halligan’s claims as lacking patentable subject matter under 35 USC § 101.

Under Bilski, “[a] claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” To avoid preemption the Federal Circuit emphasized that “the use of a specific machine or transformation of an article must impose meaningful limits on the claim’s scope to impart patent-eligibility;” that “the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity;” and that the transformation “must be central to the purpose of the claimed process.”

Transformation: As in Bilski, the transformation here involves legal rights and “does not represent physical and tangible objects.” Therefore, it fails the transformation prong of the test.

Machine: Claim 119’s only tie to a machine is the preamble statement that the method is a “programmed computer method.” The BPAI listed several reasons why that recitation is insufficient to satisfy the machine prong of Bilski:

“This recitation fails to impose any meaningful limits on the claim’s scope as it adds nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims. Were the recitation of a “programmed computer” in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, sufficient to transform otherwise unpatentable method steps into a patent eligible process, this would exalt form over substance and would allow pre-emption of the fundamental principle present in the non-machine implemented method by the addition of the mere recitation of a “programmed computer.” Such a field-of-use limitation is insufficient to render an otherwise ineligible process claim patent eligible.”

Means-Plus-Function language: A second set of claims were directed to the “programmed computer.” Functional elements of the software were described as “means for ___.” The structure of a means plus function element is presumably particular enough to constitute a “particular machine.” However, the BPAI expressly did not reach that issue – rather, the Board rejected those claims under 35 USC § 112 as indefinite for lacking any description of particular structure in the specification. Following Aristocrat, the opinion noted that software-type means should include a disclosure of an algorithm. “The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the recited functions of claims 1 and 121 so as to render the claims definite.”

Notes:

   

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

159 thoughts on “BPAI: “Programmed Computer Method” Not Patentable Subject Matter

  1. “adds nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims.”

    “where the functions are implemented using an unspecified algorithm”

    How about a general purpose computer that is (1) programmed in a specified manner or (2) implemented using a specified algorithm?

  2. Thanks confused SCOTUS, for asking me a question but, I regret, I can’t think of an answer that would be useful to you. EPO obviousness involves extraction of an “objective technical problem” as expressing the “gap” between the content of the claim and the reference selected as the “starting point”. The problem has to be “technical” however. The Mayer dissent in Bilski is relevant here. If the writer of the Bilski app had been able to claim the solution to a (subjective) technical problem, he/she might then have been able to make progress in the EPO. But whether progress could have been made in the USA, I don’t know. That’s why I read this blog.

  3. skevinp,
    The concepts are different. A method claim can claim particular application of a fundamental principle (in which case it would not preempt the entire fundamental principle) and it would be patent-eligible, assuming it is tied to a machine and/or transforms an article into a different state or thing, and such particular application is a meaningful limit on the amount the claim preempts the fundamental principle. On the other hand, I think what the BPAI means with “technological environment” is that the claim cannot merely state “for use in such-n-such technologocial area,” as a way of limiting the scope of preemption. This would amount to a mere field-of-use limitation. In other words, merely stating that the fundamental principle is only being used in a particular technological environment does not meaningfully limit the scope of preemption of the fundamental principle; it merely says “use it like this.” This can be contradicted with actual application of the fundamental principle, which substantively limits the use of the fundamental principle in a particular way. That’s my understanding at least. Others?

  4. “The SPEs have been receptive to removing the 101 rejection as long as one of the significant steps of the method is tied to a computer. Some sort of data transformation step. In one case, for instance, I tied a data clustering algorithm to the computer, and that was enough.”

    You people crack me up.

    As alluded to above: enough for WHAT? To get your claim past some clueless Examiner in the most clueless PTO art unit?

    Nobody is impressed. Write a claim that will stand up in court before a competent district judge two years from now. It seems to me that Bilski suggests how you might do that. But oh wait: that claim is “worthless” because nobody with incredibly deep pockets infringes it.

  5. The BPAI appears to say that foreclosing others from using a “particular application” of a fundamental principle IS statutory subject matter, but limiting use of the formula to a “particular technological environment” is NOT.

    Can someone explain the difference between these two concepts?

  6. MaxDrei,
    Do you think adding a problem/solution statement to Benson’s claim would have made Benson’s claim pass the “machine-or-transformation” test and the tacked-on “meaningful limits” inquiry, and thus patent-eligible? If so, what would your problem/solution statement have been? Also, do you think casting the claim in more of a problem/solution context is what the Federal Circuit is looking for in demanding that the machine-or-transformation impose “meaningful limits” on the footprint of preemption, as David appears to be suggesting?

  7. DK,

    The courts appear to have taken several steps back in their understanding of computers and computer-executed algorithms. I’m not sure why this is. It is probably a topic worthy of separate discussion onto itself. For example, there really is no such thing as a “general purpose” computer because no computer can be all things generally to all people. Moreover, once a computer is programmed to perform a particular task it inherently is a particular machine that has been transformed into a new state.

    Answering your question about how much disclosure is enough is not possible because the state of the art and of skill of the ordinary artisan is constantly changing, and not always towards the better.

    So for example, let’s say your patent application calls for a speech understanding module where the computer is to hear speech from any random speaker and instantly understand what was said (akin to a Star Trek universal translator). Right now, there is no such thing. Maybe in the future it might be common place. So for now, if you’re going to have such a module as an essential element of your claimed invention you better have detailed enabling disclosure (including best mode). In the future, who knows, maybe just a few words may suffice.

  8. AllSeeingEye,
    OK, that would seem to make more sense. I was just worried that the following language from Aristocrat (“The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the recited functions of claims 1 and 121 so as to render the claims definite.”) necessarily meant the only way to enable claims directed to an algorithm-based method would be to explicitly disclose the algorithm itself. In fact, the decision alludes to adequately describing sufficient structure for performing the recited claimed function, but how do you do this without disclosing the algorithm itself?

    Put another way, is it enough to merely describe what the algorithm does (or is capable of doing) for satisfying 112 under Aristocrat? The decision seems to state otherwise.

  9. An algorithm is not explicitly “required” under Aristocrat. Any detailed description of the claimed process would suffice.

  10. Regarding the means-plus-function aspect to this case:

    “Following Aristocrat, the opinion noted that software-type means should include a disclosure of an algorithm. ‘The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the recited functions of claims 1 and 121 so as to render the claims definite.'”

    This is basically requiring the disclosure of the algorithm (if one is used) to avoid the 112 rejection for a software-based computer method. The problem with this is that most companies would elect the “best of both worlds” protection: trade secret for the algorithm and business method for the software processing. However, this case (as well as Aristocrat) leaves one with the impression that you will not be able to keep the algorithm as a trade secret if you want patent protection for the method.

    While this is really just another reason why means language is limiting and generally the last option for use in claim recitations, it is an important factor to consider when algorithms are the particular asset in question. For example, a bioinformatics company would be forced to make a difficult decision if a novel algorithm is used to, say, screen an array of genes for certain markers. If the company wishes a patent around the method, it may be required to disclosre the algorithm behind the software, which means they could not protect said algorithm by trade secret. Tough decisions all around.

  11. “I was just reading the other night Judge Rich’s CCAP decision in In re Benson 441 F.2d 682 and this is pretty much what he said about Benson ”

    I always heard he was a pretty smart guy! :-)

  12. “in 1 usec or less”

    Mark,
    Funny that you should propose this now. I was just reading the other night Judge Rich’s CCAP decision in In re Benson 441 F.2d 682 and this is pretty much what he said about Benson Claim 13, that for all practical purposes it can only be performed by apparatus. The Supreme Court, of course, had a 180 degree opinion, including that for all practical purposes Benson Claim 8 wholly preempts the algorithm.

  13. Got another call today.

    Examiner proposing some amendments — and lo and behold, the examiner proposed adding some “magic words” related to 101 to my method and system claims.

    Naturally, I agreed, since these terms aren’t limiting in any meaningful sense. I should get a notice of allowance within a week or so.

    Just another day at the office …

  14. “Above claim 2 could arguably be carried out entirely in a person’s mind ”

    In this case I would agree, but has anyone ever explored method claims for calculations that could not be carried out in a person’s mind, even theoretically?

    For example, suppose the step read:

    “converting a BCD-expressed value into a binary value in one microsecond or less”

  15. Mark,

    It is not my intention to defend everything the court does. If you want to point out the “reentrant” folly of their logic, go ahead. You asked what was a purely functional claim. I gave you an example. Above claim 2 could arguably be carried out entirely in a person’s mind (as abstract ideas) because the method claim does not require the method to be machine-implemented (by a particular machine that inherently can implement the method) and the converting step (a) can also arguably be carried out entirely in a person’s mind.

    As for “storing”, there are some nuts and bolts details that are understood to be well within the artisan’s capabilities.

  16. Ah, but the method steps of claim 8 of Benson state purely functional recitations of method steps where the functions are implemented using unspecified algorithms.

    For example, step 1 says “STORING the binary coded decimal signals in a reentrant shift register” (emphasis added). But the claim (and presumably the specification) does not specify the algorithm for “storing”.

    Why this claim would cover any and all algorithms of storing!

  17. Mark,

    Here is an example of a not purely functional claim:

    1. A machine-implemented method comprising:
    (a) converting a BCD-expressed value stored in a first register into a binary value by using a shift register formed in an ALU and using the method of Claim 8 of Benson;
    (b) …

    Here is an example of a purely functional claim:

    2. A method comprising:
    (a) converting a BCD-expressed value into a binary value;
    (b) …

  18. I’m a little confused by the point the BPAI is trying to make regarding “purely functional recitations of method steps where the functions are implemented using an unspecified algorithm”.

    Isn’t each line in a piece of source code a purely functional recitation of a method step where the function is implemented using an unspecified algorithm? As far as I know, all higher order computer languages label underlying algorithms with names that recite the function of the algorithm (e.g. “add”, “subtract”).

    Perhaps some of the software gurus can help me out. Have I missed something?

  19. ….I know, I know. The EPO should have been clever enough to patent its PSA invention, back in the 1980’s. By now it would have come off-patent, and therefore generic. Sigh.

  20. Readers, what’s all this about “problem/solution”? Has the court been infected by European thinking? Too many fact-finding trips to Europe, perhaps, by members like Randall Rader (who seems to be here quite a lot of the time). What is the world coming to? Somebody has a good idea, somewhere in the world, and before you know it everybody starts borrowing it. For the EPO, it is a sine qua noin that the claimed subject matter must correspond to the solution to an objective technical problem. Visions of knives slicing through warm butter come to mind but perhaps only in Europe.

  21. David,

    I think I am beginning to understand what you are getting at. Bilski struggled to reconcile Benson, as is apparent in the “A canvas of…” passage you quoted above. I think in order to reconcile Benson, the Federal Circuit tacked on the “meaningfully limit” inquiry onto the “machine-or-transformation” test. Benson’s method claim passed the “machine-or-transformation” test but failed the “meaningfully limit” inquiry because the tying in of a computer did not impose any meaningful limit on the claim’s preemption of all uses of a fundamental principle—the application of the fundamental principle was only useful on a computer in the first place. Correct me if I am wrong, but I think your requirement “(1) a well-defined problem and solution (a non-‘preemptive’ use))” attempts to address the Benson quagmire by saying that if Benson could have more specifically identified the problem/solution in the claim, then this would have necessarily “meaningfully limited” the scope of preemption. In this sense, your proposed “(1) a well-defined problem and solution” may very well be a better approach than “meaningfully limits,” since from an objective standpoint it is much easier to ascertain whether the claim identifies the problem/solution than whether the claim “meaningfully limits” the scope of preemption. Is this the train of logic you are getting at? Or am I still at the station?

    Also, David, it might help if you explain what you mean by “non-‘preemptive’ use,” as it seems in plain English “non-preemptive use” suggests no preemption at all, but I do not think this is what you mean by “non-preemptive use.” Do you mean the claim “does not preempt use of the fundamental principle at all” or do you mean the claim “does not preempt all uses of the fundamental principle”?

  22. confused SCOTUS wrote:

    “This of course blurs the distinction between your requirement 2 and your requirement 1), because a fundamental principle is an abstract idea…”

    OK – on reading Bilski (yet again!), I’ll concede defeat on this. :) The Bilski majority defines “fundamental principle” as “abstract ideas, laws of nature, etc.”

    I’d like to amend my analysis – using different terminology, but the same general point.

    The Bilski majority (re-)construed Diehr for the following principle: “a distinction between those claims that ‘seek to preempt the use of’ a fundamental principle, on the one hand, and claims that seek only to foreclose others from using a particular ‘application’ of that fundamental principle, on the other.”

    I’d like to assert that this “application,” for methods, must have two elements: (1) a well-defined problem and solution (a non-“preemptive” use), and (2) a well-defined implementation (as may be satisfied by the two prongs of Diehr.)

    I base this conclusion on the Bilski majority’s reconciliation of Diehr with Benson:

    “A canvas of earlier Supreme Court cases reveals that the results of those decisions were also consistent with the machine-or-transformation test later articulated in Benson and reaffirmed in Diehr. … Interestingly, Benson presents a difficult case under its own test in that the claimed process operated on a machine, a digital computer, but was still held to be ineligible subject matter. However, in Benson, the limitations tying the process to a computer were not actually limiting because the fundamental principle at issue, a particular algorithm, had no utility other than operating on a digital computer. Thus, the claim’s tie to a digital computer did not reduce the preemptive footprint of the claim since all uses of the algorithm were still covered by the claim.”

    In plain English: “OK, we’ll admit that under the test that we articulate today for non-abstractness, Benson’s invention should have passed. But it failed the OTHER test of 101 patentability, which is a non-preemptive use – because even though it’s tied to a computer, it doesn’t solve any particular problem.”

    Also, I don’t read this quote as requiring that the particular machine limitation included for non-abstractness MUST be the limitation that introduces a non-preemptive use. The court simply noted that the limitation failed to establish the non-preemptive use that the claim might OTHERWISE have had.

    Yes, I admit that the court nowhere sets forth two separate requirements. But I find it impossible to interpret the CAFC’s reconciliation of Diehr with Benson in any other way…

    ===

    “$0.25 is extremely expensive for a teenager or even an adult in China.”

    In China, they wouldn’t even consider this a reasonable price. The idea of paying for music is an absurdity, like paying for air or sunshine.

    ===

    “But I see where you’re going with this. Would you take a 75% decrease in pay though?”

    If the marketplace law of demand required it, what else could I do? The whole point of supply and demand curves is that the intersection establishes an optimal profit for the seller. Demanding more money (in view of the same supply curve) only moves my business away from the intersection point – and results in fewer profits.

    Of course, my options are different from the RIAA’s for at least two reasons:

    (1) I don’t have near-total oligopolistic control of the entire market of patent prosecution, and

    (2) I don’t have enough money or lobbyists to buy congressmen to legislately prop up my desired business model.

    – David Stein

  23. “Meanwhile, the EPO has refused WARF’s patent on a method for generating human stem cells…”

    And nobody cares…

  24. David,

    $0.25 is extremely expensive for a teenager or even an adult in China. But I see where you’re going with this. Would you take a 75% decrease in pay though?

    Here also is a twist: for many years the recording industry and CD makers were secretly engaging in price-fixing scams to the tune of about $3 per CD. A federal court ruled that the companies must pay $3 to any person that presents a receipt for a CD they purchased between something like 1988 to 2001, or so. For X-Gen’s that did not sit too well. And how many people really saved their receipts for their CD purchases?

    Also, I think Copyright law’s problems arose sharply after Disney’s rewrite of the law.

  25. David said:
    “Let me step back a few paces. The CAFC’s analysis in Bilski actually invokes two specific but separate requirements:
    1) The claimed method must be non-abstract. This can be achieved by claiming the method as transforming a physical article, or by tying the method to a machine (where the tying imposes reasonable limitations – i.e., simply reciting “computer-implemented” won’t cut it; the claim has to explain HOW the machine is used in the claimed method.)
    2) The claimed method must not preempt every possible use of the method. This can be achieved by claiming the method as applying to a particular problem – such as may arise (in a distinctive way) in a particular field, which is where the field-of-use limitation becomes helpful.”

    ===

    David,

    I am not sure I am following the bouncing ball on your Bilski take. I see your requirement 1 in Bilski but I do not see your requirement 2 in Bilski. I think with your requirement 2 saying “the claimed method must not preempt every possible use of the method” creates a circular reasoning problem. The method is being claimed; it cannot preempt itself. Perhaps what you meant was “the claimed method must not preempt every possible use of the FUNDAMENTAL PRINCIPLE.” This of course blurs the distinction between your requirement 2 and your requirement 1), because a fundamental principle is an abstract idea, and an abstract idea of course is not patent-eligible, and the machine-or-transformation test (your requirement 1) is of course what Bilski dictates is the “sole” test.

    Also, I am not following your “claiming the method as applying to a particular problem” logic. Maybe it is just too late in the day, but I thought Bilski held that a method that applies a fundamental principle (e.g. a human identifying particular transactions) to a particular problem (e.g. hedging risk) is not eligible for a patent. Perhaps you can give a simple example of your requirement 2? Very simple, as it is getting late…

  26. “Does any of this matter to an undergraduate or a practicing physician who is suddenly forced to hire a lawyer and watch his studies/career come to standstill while he deals with some jacked up patent attorneys? I think not.”

    Does this post contain any logic or mean anything whatsoever? I think not.

    Breathless rhetoric…

  27. Funny we’re talking about suing “doctors” for patent infringement.

    Y’all are aware of 35 USC 287(c), right?

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

    Essentially, physicians and hospitals are immunized from infringement for performing a patented medical procedure. An inventor can still patent the procedure, but it can’t be enforced against a medical practitioner or institution.

    This exemption may not apply to non-“activity” statutory classes – medical devices, drugs, etc. But in those cases, although the physician may be a direct infringer of the patent, the real target is the supplier.

    Medical practitioners are virtually never involved in patent litigation. In fact, the only noteworthy case involving a medical invention was between suppliers of healthcare products (LabCorp v. Metabolite), not practitioners.

    – David Stein

  28. Malcolm, I hope you know the answer to your question.

    The problem is not whether or not a Patentee has the intestinal fortitude to sue a doctor, but one of encouraging technological development.

    Where would you rather invest:
    a) a restaurant where you get a 5% annual return; or
    b) a life-saving diagnosis where, after 5 years of research and validation, you might be able to gain the right to sue doctors who use your invention, but never the right to sue Pharma companies that steal the invention.

  29. “Mind you, I have no problem with the free flow of information. However, some of that information is copyrighted “content,” which was created by somebody in order to make a profit. However, many from Gen Y have this aversion of paying for anything. Of course, as a teenager or in your early twenties, most don’t have the money and a fine-tuned sense of right and wrong.”

    Hmm – not that we should be discussing copyright theory here 😉 … but I’ll take a stab at it.

    It’s not just “U.S. teens” – it’s pretty much people (kids and adults) in the entire rest of the world. ESPECIALLY Asia, the idea of paying for music is an absurdity. It’s not that people “know” it’s wrong but choose not to do it; it’s that they view the law and pricing as unrealistic.

    Practically every driver in America frequently exceeds the speed limit. Are these people being immature or immoral? No – there’s a perception that the posted limit is overly restrictive of a safe driving speed.

    The actual problems with copyright, as I see it, are –

    (1) Many copyright owners (including the entire music industry) refuse to acknowledge the realities of supply and demand – that their product, from a consumer’s viewpoint, is vastly overpriced. If every music track were readily available at high quality for $0.25, music piracy would simply END. The music industry would reap huge profits, and could even forgo DRM snake-oil nonsense and paranoia.

    (2) The law of copyright is hugely out of step with the popular viewpoint of morality. A small – and diminishing – share of Americans view copying music as “theft” of any kind – yet the legal penalties for small violations remain outrageously high… and are escalating into criminality! This situation is terrible for everyone – the population, copyright owners, and especially our government (which simply looks like a thug squad) – and the RIAA’s “educational” propagandizing is absolutely useless.

    – David Stein

  30. “I’m afraid I don’t see the relevance of your story PDS.”

    … and that doesn’t surprise me in the slightest … it is much harder to see the failings of a culture when one is immersed in it.

  31. I’m afraid I don’t see the relevance of your story PDS. I can ask every last classmate of mine, and come up with a number of around probably 95%-100% who admit they did something you would consider “cheating”. Though perhaps not on a test. But what makes the test percentage of your grade of greater importance than the HW percentage in HS? Nothing. What is the significance of your finding? When considered with the fact that 65%+ of students in reality probably cheated on a test in HS in 1960, the significance boils down to nothing more than: Gen Y is significantly more truthful about cheating than Gen X and other predecessors.

    Whoptie do.

    I should also note that I’ve “trudged” to the library to do a report more than once and I never found it particularly difficult. I probably rode my bike, with no handlebars. Why? Because I can ride my bike with no handlebars, no handlebars…

    link to youtube.com

    amirite?

  32. former ip analyst wrote:

    “If the c&d letter offers settlement / licensing for $(X-y) k, then the business judgment rule kicks in and it is economically reasonable for the lettered party to acquiesce.”

    You didn’t happen to represent NTP, did you? 😉

    This is certainly one way of doing business.

    Another way is to draft a clear patent claim that covers your client’s invention well, and that definitely applies to your competitor’s product. You might even apply for a patent reissue, with broadened claims that literally cover your competitor’s product (if the original spec supported it, and there’s no estoppel-triggering amendment as per Festo, etc.)

    The result is a patent that might be faster and cheaper to litigate – simply because it definitely covers the accused infringer’s product. Licensing is likelier to be quicker and at a higher value.

    – David Stein

  33. I disagre withe Court’s conclusion. These claims should be perfectly acceptable under 101. However, I agree they should fail under 102 or 103.

  34. “Kids these days, they lack initiative.”

    The Washington Post ran an interesting story about kids these days … you can find the story under the headline “Survey Finds Growing Deceit Among Teens: 64 Percent Admit Cheating on Test In High School.”

    Personally, I think the whole culture of cheating has been aided and encouraged by the internet. Gen Ys have grown up in a world were their music and their video were not paid for, but downloaded from the internet. Instead of slogging to the library to do a report, they head to Google.

    Mind you, I have no problem with the free flow of information. However, some of that information is copyrighted “content,” which was created by somebody in order to make a profit. However, many from Gen Y have this aversion of paying for anything. Of course, as a teenager or in your early twenties, most don’t have the money and a fine-tuned sense of right and wrong.

    It is quite obvious from his maturity level and station in life that 6K is a Gen Y and it reflects in his attitude.

    IP is just another form of content (i.e., a useful and implementable idea). There are some who believe that for those who protect those ideas properly, they shouldn’t be stolen. However, there are a growing number of those that have no problems with stealing content.

    Fortunately, although the numbers of growing, they get converted quickly as they grow up and realize the errors of their way when the fruit of their own labor (i.e., their own content) gets stolen by others.

    There will always be communists in the world who believe that everything should be free, and perhaps they’ll eventually win out. However, I will likely be long-retired before that happens.

  35. pds:

    Thanks for the quote – you’re correct, of course. And to be honest, that’s what I meant (“preempting every substantial use of the fundamental principle”)…

    That quote really sums it up well – claiming the “fundamental principle,” divorced from any particular use of that principle. If the Arrhenius equation had been actually invented by Diehr, and if Diehr had tried to patent “a computer-implemented method of measuring the curing of a synthetic compound comprising: programming a computer to apply the formula…”, it probably would have run afoul of preemption.

    – David Stein

  36. “Does any of this matter to an undergraduate or a practicing physician who is suddenly forced to hire a lawyer and watch his studies/career come to standstill while he deals with some jacked up patent attorneys? I think not.”

    Why does any of it matter to them? The accused undergrad wants to take matters seriously, then he should simply kill off the attorneys, the CEO of the record company, and any internal people who had a hand in his accusation coming about. Then he should politely suggest to the company representative that his name should come off the list. After bringing up the company representative’s home address. So much cleaner, quicker, and probabaly less expensive. And, it would probably help out his fellow undergrads. I’m surprised we haven’t seen this on the news already following all those stories of lawsuits filed and the undergrad spending thousands on defense/payments. Kids these days, they lack initiative.

  37. “Does any of this matter to an undergraduate or a practicing physician who is suddenly forced to hire a lawyer and watch his studies/career come to standstill while he deals with some jacked up patent attorneys? I think not.”

    Step away from the cliff chicken-little.

    On second thought …. get closer — you can fly!!! …. trust me.

    At least we’ve narrowed down MM’s practice area a little further. He defends small (maybe startups) biotech companies that are infringing the patents of much larger biotech companies.

    No wonder he is always so surly — he’s got to put up with small clients (who probably don’t pay well, or on time, or at all) and he’s usually on the short-end of the stick when it comes to legal firepower.

  38. David points out the many problems with enforcement of vague claims. That’s a legal take on the issue, and a very valid take.

    From a business perspective, hiring a lawyer to assess those broad claims (as required by fiduciary duties to stockholders when confronted with a c&d letter listing several patents) costs $X k.

    If the c&d letter offers settlement / licensing for $(X-y) k, then the business judgment rule kicks in and it is economically reasonable for the lettered party to acquiesce.

    This is the game that has been played for years. When I got the point, I decided to find a job that looked less like abetting extortion.

  39. “2) The claimed method must not preempt every possible use of the method. This can be achieved by claiming the method as applying to a particular problem – such as may arise (in a distinctive way) in a particular field, which is where the field-of-use limitation becomes helpful.”

    This isn’t precisely correct, what the Fed. Cir. in Bilski stated was:
    “Diehr can be understood to suggest that whether a claim is drawn only to a fundamental principle is essentially an inquiry into the scope of that exclusion; i.e., whether the effect of allowing the claim would be to allow the patentee to pre-empt substantially all uses of that fundamental principle. If so, the claim is not drawn to patent-eligible subject matter.”

    Thus, the question isn’t whether you preempt every possible use of the method, it is whether you preempt “substantially” all uses of the “fundamental principal.”

    Talk about gobblygook — the Fed. Cir. will spend the next 10 years describing how to interpret “substantially all uses” and “fundamental principal.”

    What SCOTUS in Diehr actually wrote was:
    “A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.” Le Roy v. Tatham, 14 How. 156, 175 (1853).

  40. “The copyright owners can elect to collect statutory damages even without proof of any actual damages. That’s a huge distinction from patent law.”

    Does any of this matter to an undergraduate or a practicing physician who is suddenly forced to hire a lawyer and watch his studies/career come to standstill while he deals with some jacked up patent attorneys? I think not.

  41. confused SCOTUS wrote:

    “How on Earth does adding a computer constitute a field-of-use limitation?”

    Oh, I see your line of thinking here – and I agree with it. Field-of-use limitations usually involve “use this well-known formula in this particular scenario” logic… but that’s logically very different from: “take this well-known formula and program it into a computer.” Neither tactic will buy you any novelty value, but they’re not at all the same.

    ===

    “in a claim for cleaning displays the method steps preempt all uses of a fundamental principle, and the draftsperson adds a limitation that the cleaning is in the field of computers, i.e. computer displays. This is a field-of-use limitation because the draftsperson is simply attempting to limit use of the fundamental principle to the field of computer displays.”

    Sure, but the computer is involved in the claim in a different way, right? The invention isn’t performed BY the computer; it’s performed ON the computer. I agree with you that it’s hard to imagine how a claim limitation reading “implementing this step on a computer” could constitute a field-of-use limitation.

    And, of course, this field-of-use limitation probably doesn’t present novelty value. If compressed air is known to be useful for blowing dust off of all kinds of LCDs, recommending its use (in the same, routine way) on a particular type of LCD is completely unhelpful for establishing novelty and non-obviousness.

    ===

    “If the tied-in machine does not impose limits on the method steps’ use of the fundamental principle, then of course you are going to have to resort to prong 2 and transform something…”

    Not necessarily. The machine elements must impose “limits,” yes. But those “limits” need not be the “limits” that avoid the principle of preemption.

    Let me step back a few paces. The CAFC’s analysis in Bilski actually invokes two specific but separate requirements:

    1) The claimed method must be non-abstract. This can be achieved by claiming the method as transforming a physical article, or by tying the method to a machine (where the tying imposes reasonable limitations – i.e., simply reciting “computer-implemented” won’t cut it; the claim has to explain HOW the machine is used in the claimed method.)

    2) The claimed method must not preempt every possible use of the method. This can be achieved by claiming the method as applying to a particular problem – such as may arise (in a distinctive way) in a particular field, which is where the field-of-use limitation becomes helpful.

    These requirements might seem overlapping at first, but I think they’re two distinct sides of the “patentable method” coin. An “abstract” claim (such as Bilski’s) presents a problem and solution, but lacks an implementation. A “preemptive” claim (such as Benson’s) presents an implementation, but lacks a problem and solution.

    My point is that non-preemption CAN be satisfied by the machine elements, but can also be satisfied by other claim elements. The more important use of the machine elements is to avoid abstractness – and to satisfy this requirement, the machine elements must “meaningfully” limit the claim to an implementation (or a set of implementations having some commonalities.)

    What do you think of this analysis?

    – David Stein

  42. “The reason that companies deem ‘useless’ a patent whose claims are infringed only by doctors or consumers has nothing to do with the alleged lack of a ‘draconian penalty scheme.’ The copyright owners aren’t taking file sharers to jail. They are just threatening them.”

    The copyright owners can elect to collect statutory damages even without proof of any actual damages. That’s a huge distinction from patent law. It’s also a huge punishment to peons who share a couple of mp3’s. (And no, I’m not advocating that 35 U.S.C. 284 be amended to allow statutory damages. Actually it’s copyright law that is really an abomination against the public interest.)

  43. former ip analyst wrote:

    “I have spent a couple of years trying to explain this approach to patent valuation, and very few normal people get it. Those who did get it, chuckled and hired me to assess their portfolios for the most incomprehensible and most broadly worded ‘assets’.”

    Oh, I get that. I know there’s some strategic value to having patents that are difficult to interpret… it’s a “fog of war” approach, right?

    But that particular flavor of Kool-Ade is not my drink of choice. That “unknown” is just as likely to bite your client:

    * The claim might be interpreted not cover a competitor’s action or product where a clearly written claim might have, or it might simply be considered vague.

    * The enabling disclosure of the means-plus-function claim is usually very broad (“the ‘fastening means’ could include a screw, or duct tape, or super glue, or a pair of magnets…”), which can raise yellow flags in prosecution if, to the examiner, it seems like overreaching.

    * Drafting and arguing for the vaguely drafted claim (112p6 or otherwise) costs more time and money to draft, raises more obstacles during prosecution, and costs more to litigate (for your client as well as his competitor.)

    I’m a diehard fan of clearly drafted claims. I’ve just read too many bad claims with really basic issues – antecedent basis, enablement, term consistency – that might be passed off as “tactically vague,” but that smell more like poor workmanship.

    Of course, you get 3/20 claims for your filing fee, and a 112p6 claim can coexist alongside more clearly drafted claims. Fair enough. But I’ve rarely run across a case where I couldn’t draft 3/20 clearly written claims (and more, if the budget allows) that each have specific, explainable value over the other 2/19.

    – David Stein

  44. “I don’t think this is a valid comparison. As David Stein pointed out previously on this thread, Big Copyright has cajoled Congress into enacting a draconian penalty scheme for copyright infringers, even including criminal penalties.”

    The reason that companies deem “useless” a patent whose claims are infringed only by doctors or consumers has nothing to do with the alleged lack of a “draconian penalty scheme.” The copyright owners aren’t taking file sharers to jail. They are just threatening them.

    You think doctors and consumers won’t feel threatened by subpoenas and life-ruining lawsuits filed against them by companies whose patents they infringe? Think again.

    All it takes is just a change in the way of thinking about these things on the behalf of patent owners.

    Of course, there is the possibility that as soon as the companies start asserting their patents in this manner, there will be a consumer and legislative blowback that is far, far worse than not receiving the broad claims that one desires.

    But these are all business decisions.

  45. Malcolm Mooney said:
    “But useless? A patent is now ‘useless’ because you it’s ‘difficult’ to get a lot of money from a deep pocketed folks? That’s an interesting admission.

    I seem to recall that big copyright owners have found it useful to go after ‘little guys’ who are engaging in excessive file sharing on university campuses and the like.”

    I don’t think this is a valid comparison. As David Stein pointed out previously on this thread, Big Copyright has cajoled Congress into enacting a draconian penalty scheme for copyright infringers, even including criminal penalties. And even more importantly, a copyright holder doesn’t even have to prove damages. In fact, the RIAA cases involve STATUTORY damages. Compare that to 35 U.S.C. 284 as it’s been interpreted since the Aro case (SCOTUS 1964) and you’ll find there’s no comparison.

  46. >> So the fact that law relating to means-plus-fxn patents is crappy is not a bug at all if you’re not in the business of protecting something you’ve worked hard to invent. On the contrary, it’s a feature! It makes your piece of paper with all those difficult-to-interpret words on it that much more valuable because it will cost someone who lacks confidence and understanding a lot of money to write an opinion explaining why that piece of paper is a bunch of crap. << Right on. I have spent a couple of years trying to explain this approach to patent valuation, and very few normal people get it. Those who did get it, chuckled and hired me to assess their portfolios for the most incomprehensible and most broadly worded "assets".

  47. Ummm, yeeah. Mooney, I’m gonna have to ask you to just, go ahead and move your desk into Storage B. And here’s a can of insecticide, just go ahead and spray because we have a little bit of a c0ckr0ach problem down here… umm yeeah.

  48. I can see the headline now in Mooney’s world of grandiose delusions, “Judge vacates $11.8M patent damages award, USPTO dismantled because Malcolm Mooney a poster on Patently-O thinks people who make money from patents are greed grubbers and provides some really snarky posts ~ just read ’em”

  49. Mooney, you are about the only one around here who is impressed with you. Most of the rest of us have pretty much figured out that you don’t know what you’re talking about. You do have one thing right though. I have kind of made you my pet project. Call it a public service. As long as you continue to post your snarky garbage I will be here ~ seeing.

    I know you are trying really, REALLY hard to influence the direction of the entire world of patent law with your intense bloggery, but I have to tell ya; I think there are more important things going on in the world and in patent law than you. In fact, just about everything going on in the world and in patent law is more important than you.

    sorry.

  50. David,

    It is the BPAI that conflated the two inquiries. In a nutshell, the BPAI went through a couple of paragraphs following a seemingly correct analysis of the “tying-in of a machine” prong 1 analysis and concluded that the machine in Halligan’s claim 119 does not impose meaningful limits on the preemptive scope of the fundamental principle, i.e. the machine is there only in form not substance, and the claim thus failed prong 1. But then immediately after this analysis and conclusion the BPAI says “Such a field-of-use limitation is insufficient to render an otherwise ineligible process claim patent eligible.” Wait a second. How on Earth does adding a computer constitute a field-of-use limitation? David, don’t you think the BPAI conflated the issues by this statement? If not, then so kindly explain where in Bilski’s 30 pages there is any “clue” that adding a computer amounts to a “field-of-use” limitation. And if you could even conjure up one example, David, I would appreciate you posting it.. In my humble opinion, adding a computer does not constitute a field-of-use limitation, at least within the meaning of Bilski.

    And of course, there is a way that adding a computer could constitute a field-of-use limitation, but it is far apart from the circumstances in Halligan and the BPAI’s leap of logic. For example, in a claim for cleaning displays the method steps preempt all uses of a fundamental principle, and the draftsperson adds a limitation that the cleaning is in the field of computers, i.e. computer displays. This is a field-of-use limitation because the draftsperson is simply attempting to limit use of the fundamental principle to the field of computer displays. This would fail the “transformation” prong 2 because the addition of the computer is merely a “field-of-use” limitation.

    Also, perhaps you misunderstood, but I did not say or suggest that “the added ‘machine elements’ must be the non-‘preempting’ part of the claim.” A claim can surely pass the “tying-in of a machine” prong 1 if the tied-in machine imposes some meaningful limits on the amount the claim preempts the fundamental principle (i.e. the added machine “meaningfully limits” the claim). But if the tied-in machine does not limit the pre-emptive footprint, then the claim is going to have to pass the “transformation” prong 2 of the “machine-or-transformation” test, and transform some article or data into a different state or thing. And of course, the claim can pass prong 2 and fail prong 1, and still pass muster under the test.

    David, I do not see where you are going with this: “The claim can have some machine elements that meaningfully limit (i.e., embody) the method, and also OTHER elements that limit the claimed invention to avoid preemption (and more than just a field-of-use characterization.)” If the tied-in machine does not impose limits on the method steps’ use of the fundamental principle, then of course you are going to have to resort to prong 2 and transform something, although you can not just add a limitation that says “oh, these method steps are limited to the field of commodities trading.” Do you disagree?

    Again, I do not see the relationship in Halligan between the inquiry of whether the added computer imposes meaningful limits on the scope of preemption, and the inquiry of whether the claim merely recites a “field-of-use” of use limitation. Perhaps you can shed some light on this David, but frankly, I think the BPAI should have put its pen down and thought a little deeper.

  51. pds wrote:

    “I just want somebody to give us some clear guidance as to how to claim the inventions so I (and the examiners) can focus on the more important stuff — like prior art.”

    Craft claims in language where the most operative words are in terminology well known in the art. This allows relating the invention to the prior art. Who is that good for?

  52. David ” At most, I’ve contributed a teeny, tiny bit to the infringement of your patent by this end user. He’s the one who combined my software with his own machine to perform your patented method – sue him!” And the court will agree. Congratulations – your patent is useless.”

    I don’t know about useless. In most cases, if it’s software-based, it’s still a bogus patent because the underlying subject matter is obvious crap.

    But useless? A patent is now “useless” because you it’s “difficult” to get a lot of money from a deep pocketed folks? That’s an interesting admission.

    I seem to recall that big copyright owners have found it useful to go after “little guys” who are engaging in excessive file sharing on university campuses and the like.

    Perhaps the real issue is not that the patent is useless but that the invention is not worth the money it costs to protect it.

    The same hypocritical position is often adopted by biotech companies. “Oh no, if you limit the claim that way now I have to sue dcotors or patients.”

    Tough beans. If sueing people who infringe your invention makes you sad, then don’t sue. Clearly your invention must not be that valuable if it bothers you so much to enforce it.

  53. “I think Mooney might just be an angry little web developer with too much time on his hands. “Clearly” not a patent practitioner (but he plays one on PatentlyO).”

    Only one of us is “playing,” SmallPeeingGuy, and everyone knows it’s you, i.e., my personal troll. I don’t mind so much. I mean, why would I care? When I first started commenting here this blog was infested with whining crybabies who did little more than complain every day about how “my claims got rejected and it’s SO UNFAIR!!!”

    There’s still a bit of that residue here but mostly people have begun to pay attention to the direction that the wind is blowing. Or at least they have begun paying attention to the fact that some commenters can predict that direction without a great deal of difficulty. It’s good to know which way the wind is blowing.

    Remember what Neil Young said: “nothing’ like a friend who can tell you you’re all just pissing in the wind.”

  54. confused SCOTUS wrote:

    “There will be an intermediary, i.e. a computer manufacturer, and that computer manufacturer will require the software developer to indemnify the manufacturer for patent infringement liability tied to the software.”

    Hmm – it seems that you’re focusing on OEM software, such as the boatload of (mostly lame) applications that HP and Dell preload onto your machine. 😉

    That’s certainly a valid premise for software inventions implemented in the operating system. And if the hardware manufacturer had a hand in the distribution, it is definitely a link in the chain of contribution to software infringement.

    But I was thinking more of standalone software that a developer might distribute directly to the user (either via CRM or via network.) The manufacturer is probably completely out of the link here under 35 USC 271(c) – it’s difficult to imagine that the distributor “know[s] the [GP computer] to be especially made or especially adapted for use in an infringement of said patent.”

    ===

    “ask any litigator what is easier, proving infringement of a method claim or proving infringement of a machine claim. Most likely, the litigator will tell you the machine claim.”

    Really? For software, I think it’s got to be much easier to compare a patented method with, e.g., pseudocode for an allegedly infringing piece of software. It probably doesn’t allow for as many pretty diagrams as per-element machine infringement analysis 😉 … but it’s also less likely to get bogged down in extraordinarily nitpicky linguistic semantics, like the definition of “flat” or “groove” or “inside,” etc.

    ===

    “I simply do not see how adding a computer constitutes a ‘field-of-use’ limitation.”

    I think you’re misreading Bilski and the doctrine of preemption a bit. Yes, passing Diehr prong 1 does (probably) require the inclusion of “machine elements” in your method claim, and those included elements have to be meaningfully limiting, and not merely routine machinery. And, yes, the invention does need to not “preempt” the algorithm, and cannot simply add a “field of use” limitation for this purpose.

    But I think you’re sort of conflating these two bodies of concepts. That is – I don’t think the added “machine elements” have to be the non-“preempting” part of the claim. The claim can have some machine elements that meaningfully limit (i.e., embody) the method, and also OTHER elements that limit the claimed invention to avoid preemption (and more than just a field-of-use characterization.)

    – David Stein

  55. 6, thanks for the reply. Wrong patents happen all the time to me too, but usually for specific reasons such as the EP, JP and Derwent databases being activated. And don’t get me started on the redundant numbering of the OCR data when backciting! (On an aside, as a favor to me, start complaining up the chain that you need access to the recent WO art.)

    Hope you had a good Turkey day and have fun getting everyone all riled up here.

  56. ” But the tool I use primarly is EAST so please don’t disparage it without concrete reasons. ”

    I was just pointing out that all search engine tools come up with the wrong thing sometimes. East does this quite often, my concrete reason is that when you put in the patent no. and type .pn. the wrong patent comes up. I’m looking for a bicycle patent and something about Christmas lights comes up. This happens quite regularly actually. If it hasn’t happened to you yet, consider yourself lucky.

    “On the other hand, my side (the realists) view “software” as something that alters the physical state of real world things like transistors and magnetic domains on a disk.”

    Then put your realists view in the claim and we’re all happy. Oh wait, claims written towards reality aren’t worth 10 cents in this context. Stop bringing up your realists view if you’re not willing to put your money where your mouth is when you draft claims.

  57. David Stein, I cannot agree with 100 percent because it will be rare that the end user is actually the “one who combined the software with the machine to perform the patented method.” If anything, there will be an intermediary, i.e. a computer manufacturer, and that computer manufacturer will require the software developer to indemnify the manufacturer for patent infringement liability tied to the software. Also, ask any litigator what is easier, proving infringement of a method claim or proving infringement of a machine claim. Most likely, the litigator will tell you the machine claim. Also, ask any litigator what is easier, proving a company engaged in contributory infringement or proving a company enaged in direct infringement. Most likely, the litigator will tell you direct infringement. In any event, why not just save your client some trouble and secure method claims and corresponding machine claims? Expense? Well, that is your client’s business decision. But saying software method claims are better than machine claims in terms of litigation is a loose proposition at best.

  58. In a nutshell, the BPAI’s analysis is correct up to the point where they say something bass ackwards, which I will discuss later. But the BPAI’s analysis is correct (and consistent with Bilski) in that the addition of a computer to an otherwise patent-ineligible method claim will not render the claim patent-eligible unless the computer “meaningfully” limits the scope of the claim. Here is the BPAI:

    BPAI: “Claims 119 and 120 recite a method performed on a programmed computer. This recitation fails to impose any meaningful limits on the claim’s scope as it adds nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims. Were the recitation of a ‘programmed computer’ in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, sufficient to transform otherwise unpatentable method steps into a patent eligible process, this would exalt form over substance and would allow pre-emption of the fundamental principle present in the non-machine implemented method by the addition of the mere recitation of a ‘programmed computer.’”

    In my humble opinion, what Bilski really means by “meaningfully limit the scope of the claim” is that the addition of the computer must limit the PREEMPTION of the fundamental principle, notwithstanding any effects on the INVENTION. Speaking of which, the addition of the computer of course limits the invention; it is common sense that adding anything to a claim limits the claim. But Bilski in reconciling Benson and the BPAI in Halligan (albeit not as clear) are simply saying, “hey, if you tie the method steps to a computer, this tying-in better well limit how much your claim preempts others from using the fundamental principle recited in the method steps. We do not care that you tied-in the computer and limited the scope of your invention, as that is not enough. If the tying-in does not limit the preemption, well, we’re gonna reject your claim, simply put.” I see no problem with this approach in the machine-or-transformation test, and I think it seems reasonable in the context of addressing the preemption issue.

    Here’s the way I see it. If your method claim is to produce a semiconductor chip, and one step requires “conducting a Fast Fourier Transform of X to obtain Y,” then you are preempting use of the FFT algorithm. If you tie in a spectrum analyzer (whether analog or digital) to conduct the FFT algorithm, then in my opinion you really have not “meaningfully limited” the scope of preemption because there really is no other way to conduct an FFT algorithm. The “meaningful limit” is the central issue discussed in Bilski in reconciling Benson, and also the concern the BPAI has in Halligan, and I see no problem with the analytical framework and the logic behind it.

    As I mentioned, the BPAI was humming along pretty good until they make this bass ackwards statement suggesting that adding a computer constitutes a “field-of-use” limitation:

    BPAI: “Such a field-of-use limitation is insufficient to render an otherwise ineligible process claim patent eligible. Bilski, slip. op. at 15, citing Diehr, 450 U.S. at 191-92 (noting that eligibility under § 101 “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.”).”

    This leaped out at me as a huge flaw in the BPAI’s analysis or write-up. To me, this shows the BPAI is confused (or maybe I am confused?) as to what is a “field-of-use” limitation. I simply do not see how adding a computer constitutes a “field-of-use” limitation. The field or technological environment of “computers”? I don’t think that is the “use” the Federal Circuit is speaking of in Bilski with respect to field-of-use limitations. The use their speaking of is the use of the fundamental principle, not the type of machine tied to that use. For example, a field-of-use limitation would be something like attempting to limit Halligan’s claim to only the field of trade secret valuation, or attempting to limit Bilski’s claim to only the field of commodities trading. But in my humble opinion, if a method claim pre-empts all uses of a fundamental principle, and adding a token computer still results in substantial pre-emption, the method claim is still not patent eligible. Why? Well, arguably the computer does not “impose meaningful limits on the claim’s scope” if it does not affect the pre-emption outcome.

    The BPAI’s analysis is quite unsettling since this is the BPAI’s first real application of the machine-or-transformation test, and it confusticates the “meaningful limit” inquiry and the “field-of-use” inquiry. For now, I am going to take the BPAI’s tacked-on “field-of-use” argument as merely a hiccup in their apprehension of the machine-or-transformation test. Hopefully the courts will not see “field-of-use” in the same way as the BPAI in Halligan.

  59. “two sock puppets talking two themselves”

    Mooney knows all about talking to himself…

    “”means plus fxn” garbage.”

    I guess that fact that the statute 112(6) provides for means plus function “garbage” is of no consequence to Mr. I-can-sniff-the-file-jacket
    -and-tell-if-its-obvious” Mooney.

    I think Mooney might just be an angry little web developer with too much time on his hands. “Clearly” not a patent practitioner (but he plays one on PatentlyO).

  60. immaterial boy:

    It seems there are two distinct camps here, shouting babel at each other.

    Now your apparent side (the abstractionists) view “software” as existing in this idealized world that is also occupied by mathematical ideals (i.e., perfectly straight lines that have no thickness, perfect squares where every side is exactly (to the last decimal place) the same length as the other, etc.).

    On the other hand, my side (the realists) view “software” as something that alters the physical state of real world things like transistors and magnetic domains on a disk.

    And there lies our problem. We shout babel words at each other without either side understanding the model that the other is assuming. (Blind men dancing around quantum reality elephants.)

    Have a good turkey day even if your turkey doesn’t share your viewpoint. :-)

  61. Follow up to defending EAST:

    I realized that my shouting from the top of a mountain (or bottom of a blog) won’t do a lick of good to convince someone who has a set opinion, so I’ll offer to show you in person ek6. I sit in cubicle #280 of the public search room over in the Madison building, pretty much all day every day. Come on over, put your badge in your pocket so you can remain anonymous, and I’ll show you how we use EAST as a search tool. I’ve got two ex-examiners as employees whom I’ve retrained, so I know where you’re coming from.

    There are other search tools out there, and I’ve used most of them. This is what I do for a living and I’d be remiss in not knowing the other tools. But the tool I use primarly is EAST so please don’t disparage it without concrete reasons. (And it has faults, for sure, what tool doesn’t!)

  62. 6 says “I once did a patent number search on East and got the completely wrong document. I would advise strongly against professional use of East.

    And yet…”

    I know it’s not your fault that you were not trained to use the hunk of machinery sitting on your desk, but please don’t disparage what is actually a fantastic search tool. In your defense, it is just a search tool, not a finding tool which is what Google Patents represents. EAST is there to assist you in drafting search logic and strategy, it has no ability to do this on its own.

    But don’t worry, few of your examining peers know how to use it either based on the 1000’s of file wrappers I’ve been through.

  63. pds:

    I agree with the three general claim types that you’ve drawn. (It’s kind of sad that we can’t talk about signals as a fourth body, but that’s just a dead issue… until we revisit it in about a decade.)

    And I agree entirely about CRM claims – both in how you’re interpreting them, and in the utter futility of CRM claims in the age of ubiquitous networking. And yet, I predict that Beauregards will quickly become more common in light of Ex parte Bo Li, because they’re clearly allowable as a class and are largely immune to Bilski nonsense.

    (Of course, the commonness of TCP distribution is why the signal-claims battle was so important – and yet another reason why I believe the CAFC is woefully behind the times and the state of the art. But, again, that issue is dead as a doorknob… for a while.)

    But I disagree as to your interpretation of the method.

    The software distributor is the only meaningful infringer – they’re the actual competitor and the actual implementer of the invention. If you’re drafting an app for a pure software invention, the goal is to direct the claims to ensnare that infringer as much as possible. Because, really, who else is there? The end user? The manufacturer of the hardware on which the end user is running the method? Of course not… and if you can’t really enforce the patent against *anyone*, then what’s the point?

    With the sorts of claims that were allowable before Bilski, 35 USC 271(c) provided fairly strong enforcement potential. A competitor that produces software that performs the patented method was certainly guilty of “selling a material part of a patented invention, knowing the same to be especially made or especially adapted for use in an infringement of said patent.” Sure, contributory infringement isn’t direct infringement… but if you multiply a lesser violation by a large number of infringing acts, you get a very large potential judgment – i.e., deterrence.

    But if the claim involves all of this hardware junk… then the “material”ity of the software is much less certain. Hence, less certain and probably smaller judgments… and much less deterrence.

    – David Stein

  64. As an aside, say you have some client/server interactions — you draft your claims such that all of the steps are either performed by the client or the server.

    To draft good software-related claims, you really need to think about who is performing the infringing steps — made even more difficult with distributed computing.

  65. David:

    Your software claims are directed to either (i) hardware; (ii) a method; or (iii) a computer-readable medium.

    Tying the method steps to hardware isn’t going to help you with your infringement analysis because the entity performing the method is not the software company, but the customer implementing the software.

    As to the hardware claims — that isn’t going to help you.

    As to the computer-readable claims — you hope that the software is being distributed on tangible medium. Otherwise, if it is distributed electronically (i.e., download from the internet), then you are out of luck.

    Regardless, the claims we are worrying about are the method claims. However, you aren’t going to go after the software distributor for method claims no matter whether the steps are tied to a particular machine or not.

  66. Thanks for making the point I was about to make, David: that either you don’t have a particular machine (great for breadth & contributory/inducement, but bad for 101) or you have a particular machine (great for 101, bad for breadth & contributory/inducement).

  67. pds wrote:

    “Frankly, no client sophisticated in patent law is going to go after claims that aren’t tied to hardware. Without hardware, software doesn’t work. As such, tying method steps to hardware is no big deal.”

    No big deal?

    If you secure for your software-company client a claim to a method involving performing (x) in software, then any competitor who releases software that also performs (x) is contributing to the infringement of the entire claimed invention. Client can enforce patent against competitor with threat of high contributory infringement damages.

    However, let’s say you bog down your claim in hardware elements – e.g., a method involving performing (x) on a specific processor, with specific memory, and using specific devices. When client goes to assert the patent against a competitor who releases software doing the exact same thing, the competitor will say: “My product – the software – doesn’t include a processor, or any type of memory, or any devices. It’s just software. At most, I’ve contributed a teeny, tiny bit to the infringement of your patent by this end user. He’s the one who combined my software with his own machine to perform your patented method – sue him!” And the court will agree. Congratulations – your patent is useless.

    Yes, it is a big deal. Ask any litigator.

    – David Stein

  68. mmmbeer wrote:

    “If the claim is directed to an ‘eligible transformation’ then it is applying a algorithm to a purpose (and not to just data in the abstract).”

    Oh, if only it were that easy. (Well, it WAS that easy… under State Street. But rather than “eligible transformation,” this was simply called “useful, concrete, and tangible.”)

    But sadly, mmmbeer, your analysis is at odds with Bilski. “Eligible transformation” has nothing to do with the “purpose” of the invention. It simply has to do with the type of data that the algorithm works on: does the data represent a physical article? If so, then you’ve passed Bilski/Diehr… regardless of the “purpose” of the invention. And if it doesn’t, then you’ve failed Bilski/Diehr… even if you’ve shown plenty of “purpose.”

    Here’s a hypothetical for you. (Yes, this is a complete hypothetical – I’m imagining it up, but it’s entirely plausible.)

    A modern compiler might encounter a new and very specific problem with pushing and popping items to/from a stack that might be accessible by a multicore processor with an L1/L2 cache. It might be difficult to flag items as being in use by one core of the processor in an atomic manner if multiple copies of that item are in various caches. A race condition might develop where a second core might try to claim the stack item while the first one is busy flagging all of the different copies as occupied. Solution: All of the copies of an item might point to a single location in (uncached) system memory as its synchronization object, like a semaphore or spin-lock. When any core wants to work on the item – regardless of which copy of the item it’s using (system cache, volatile, or even nonvolatile storage) – it can atomically test/set/lock on this single point in memory. Problem solved.

    Now, let’s presume that this invention deals with a brand-new, specific problem in multicore processors. (It probably doesn’t, but it’s just a hypothetical, so let’s ignore 102/103.) I hope you’ll also agree that it is sufficiently “useful” and drawn toward a specific “purpose.”

    The problem is that it’s impossible to draft claims to this invention that pass prong 2 of Bilski/Diehr – because it doesn’t “transform” anything “physical.” The data does not represent any physical “article,” and no physical “article” is transformed (except that memory is being used in an ordinary way.)

    The applicant’s only recourse is to resort to the first prong of Diehr by “tying” this invention to the machine – e.g., by claiming the software as using two types of memory and running on a multicore processor. But the enforcement value of this patent is lousy: even an admitted, intentional implementer of the proposed solution can avoid most of the liability by pointing to the machine elements in the claim – the processor, the system caches, the memory – that are entirely common, but that he didn’t give to the actual infringer (the end user.)

    – David Stein

  69. 6 wrote:

    “The magic words just got a whole lot more hard to come up with, and if they’re in the spec then fine. However, you realize that after you put those words in the majority of the claims then become about 100x less useful than the claims that you would have gotten before.”

    Bingo.

    Look – I’m a computer science guy (first and foremost!) For any given algorithm:

    * I can whip up some pseudocode to show the logical flow of an implementation.

    * I can describe how that pseudocode might be compiled and stored as a binary in volatile or nonvolatile memory.

    * I can describe how a processor might load the binary from memory, bind it to resources (DLLs, API layers provided by the OS, hardware drivers, etc.), and execute the instructions – either natively or through a virtual machine or an interpreter.

    * I can frame the algorithm as a set of software components in an architecture, and show how they interact – what data might be passed back and forth; what resources they might utilize (“DATABASE”, “SERVER”, “CACHE”, etc.); and how this SYSTEM (not “method,” since that’s taboo 😉 ) can achieve the intended result.

    In short… for any given algorithm, I can tie some implementations of the claimed invention to a general-purpose computer. No problem. Most of it is likely boilerplate (coding/compiling/storing/loading/executing is an old and routine process, right?)

    But as 6 notes, this is terrible for enforceability. The elements that I’d have to include in the claim greatly diminish the scope of the claim against the intended target: a competitor who produces competing software. The only direct target is the end user – and suing users for small acts of IP infringement is an utterly non-viable strategy (as per the RIAA’s incredible stupidity.)

    So how did we get here? Why is this shell game necessary?

    Two unrelated factors are joining forces to bully the field of software out of the patent game:

    1) A majority of the CAFC simply doesn’t understand software.

    Blending Alappat and Bilski, we can conclude that our software claims must include the “programming of a general-purpose machine to produce a PARTICULAR machine.” In modern software, that simply means that the specification and claims include that “coding/compiling/storing/loading/executing” pipeline.

    To these judges, this series of steps is the essential, magical glue that transforms an abstract idea into software. Including this junk demystifies the entire invention for them – they can understand it enough as a non-abstract invention to award patentability under 101. And conversely, when presented with pseudocode in the absence of compile/store/load/execute, they can write, “oh dear, I can’t imagine how this algorithm could be implemented; it’s too far removed from a machine; and since MY technical skills think something is missing, so would PHOSITA’s.”

    But to me – and most of the programming world – this set of steps is… well, it’s F5. That’s the button that I press in Visual Studio to perform ALL of these steps, for ANY algorithm.

    How can one conclude anything except that these judges don’t understand software? – that their knowledge of software design and development is so rudimentary that they can’t forego the abstractions of implementing software… which the CAFC demands to be claimed, but which are child’s play to a PHOSITA?

    2) The USPTO doesn’t suffer the same knowledge gap – I trust that they understand software just fine. But they were more than happy to push this angle – to stand behind the technical illiteracy of the CAFC in saying, “sorry, we don’t think a PHOSITA in the software arts can pick up a description of an algorithm and code it…”

    The USPTO is happy to do so because it has declared war on patenting, and chose business and software methods as prime targets in its neverending quest to reduce patent filings. This is actually a bizarre vendetta that the USPTO has held against the entire field of software – it’s plainly evident in State Street, in Diehr, in Gottschalk. So in many ways, the USPTO is using the CAFC’s ignorance to settle a vindictive score that it has held against the field for 30 years.

    There’s only one word for its position: disingenuous. The USPTO is feigning ignorance to promote its own agenda. And frankly, I view this as a violation of the USPTO’s core mission of awarding protection for innovation – and not just PHYSICAL inventions, but ALL inventions. The USPTO has betrayed this moral imperative by shunning an entire field of technology that it doesn’t deem sufficiently “engineer-y”.

    – David Stein

  70. 6 — one of the notices was that improper claim identifiers, e.g. “new”, etc., had been used. I could not find any nor could my associate and the examiner could not either when I called her.

  71. bread/john, that’s unlikely that it would. Especially where the SPE is behind it. If you messed up so bad as to actually recieve a notice then you most likely bonked it up very badly. I’d wait to see what you get in response to your last communication before judging whether the first notice had any merit or not.

  72. “Frankly, no client sophisticated in patent law is going to go after claims that aren’t tied to hardware. Without hardware, software doesn’t work. As such, tying method steps to hardware is no big deal.”

    Do clients sophisticated in patent law go after claims that are tied to general purpose hardware only? I think: yes.

    “Maybe 1.0% or 0.1%, at best.

    Then again, if you had any knowledge about (i) the law, (ii) the art, (iii) reality, and (iv) how the law applies to the art and reality, you would have known this.”

    Ok big woman who thinks she knows a thing or two, let’s have an example of a claim to a method implemented on a general purpose computer converted to a claim to the same method on a specifically programmed computer that does not lose a huge part of its scope. Since you make this out to be a basic thing then it shouldn’t take you more than one minute to type it up. Also, fyi, only i and iii are applicable here, but glad to know you include prior art in your considerations of 101 eligability. And remember, I don’t concern you higher ups with petty things like iii, you’re only concerned with what your interpretation of i is, as well as what you can convince others is the right interpretation of i is. So why should I bring it up?

  73. I’m still curious to know: where did Harrigan find the, uh, inspiration to file on this baloney? Who put him up to it?

    For the record, Halligan has another application of the same ilk on appeal right now (10/701889). An example of the filed claims:

    27. A system for discovering trade secrets of an organization, such system comprising: means for collecting sets of trade secret information from a plurality of persons of the organization; means for analyzing the collected sets of trade secret information using logical and mathematical formulae to identify and eliminate any redundancy among the sets of trade secret information to define a collection of potential trade secrets of the organization; and means for generating a report regarding the identified trade secrets of the organization.

    OMIGOD FOLKS HE’S USING MATH AND LOGIC TO HELP ORGANIZE STUFF! Totally mindblowing. This Halligan guy is a fricking genius.

    The applicant’s brief in this case contains a lot of laughable passages but this one in particular caught my eye:

    “Moreover, the prior art has failed to recognize the problem represented by an amorphous and unstructured colection of information that together represensts one or more trade secrets. The problem has not been recognized because until the trade secret has been defined, there is no tangible, protectable interest. Until there is a tangible, protectable interest, there has previously not been a reason for an organization to expend resources to attempt to define a trade secret.”

    Remember, this Halligan guy is an “expert” on trade secrets.

  74. “(I *can* fault the applicant for means-plus-function limitations. Frankly, I don’t know why *any* practitioner *ever* uses means-plus-function claim styles – the law is just horrific… even by patent law standards!)”

    Really? I use them. I think they fill a particular kind of hole very nicely. I just don’t have them as the only claims in the patent.

  75. This is off topic, I know. But in two applications I filed rather detailed Amendments and then three months later received bogus Notice of Noncompliant Amendments. They had absolutely no merit to them but I still had to take the time (and my client’s money) to respond to them. Calls to the SPE’s did not help. My guess is that the cases came up on the examiners’ dockets and they did not know how to respond and so bought themselves extra time by issuing the bogus Notices.

  76. duh. Good point, 6. Thanks.

    Practice pointer: means + function claim for a “means for ranking” needs a box on a figure labeled “ranking module” and sentence in the spec saying “the ranking module orders items using their score values from high to low or low to high using any known sort algorithm such as bubble sort, quick sort, etc.”

  77. “Why do you think that attorneys name themselves as inventors on this garbage? Anybody can imagine a novel flow chart describing some virtual thingamajig. Slap a computer on it with some reference to an ‘algorithm’ in the spec and VOILA! you have yourself a patent. Now all you need to do is think about the next trend in ‘social networking’ or ‘consumer identification’ or some baloney.

    This is a way of life for some people. It’s pathetic, frankly.”

    I find myself in agreement with this sentiment. The proliferation of these “patent attorney inventors” does nothing to promote the progress of the useful arts.

  78. 6K writes:
    “I doubt they do either, it is their job going down the tubes. In any event, you are right, I don’t work there, but from what I can see from these decisions the magic words just got a whole lot more hard to come up with, and if they’re in the spec then fine.”

    Hardly …

    6K then writres:
    “However, you realize that after you put those words in the majority of the claims then become about 100x less useful than the claims that you would have gotten before.”

    Not even close. The useful scope of the claim after any amendments is the same prior to the addition of the magic words.

    Frankly, no client sophisticated in patent law is going to go after claims that aren’t tied to hardware. Without hardware, software doesn’t work. As such, tying method steps to hardware is no big deal.

    6K writes:
    “When you actually do limit your claim to being properly tied to a particular machine then you lose what? 99%? 99.9%? Some large amount of claim scope.”

    Maybe 1.0% or 0.1%, at best.

    Then again, if you had any knowledge about (i) the law, (ii) the art, (iii) reality, and (iv) how the law applies to the art and reality, you would have known this.

  79. “Are you stating that PHOSITA wouldn’t know what to do with a list of items with associated numerical scores when told to rank them? ”

    He’s probably ignoring your inane question because it is inane. First, remember this is not 112 1st. This is 112 6th. The question is not whether a POSHITA knows how to rank things. The question is: is there a specific criteria and method of ranking being portrayed in the spec? On what basis are the items being ranked? A “specific” algorithm must be a sht ton more specific than a generic ranking without knowing what the inputs are being ranked according to. First it would be nice to know how are they ranked? Then it would be nice to know what characteristics are they being ranked according to. What about those characteristics is being ranked?

    “The description on pages 23-24 of the Specification does not disclose ranking of
    trade secrets as claimed, and even if it were found to describe ranking of trade secrets generally, this description provides only a recitation of the function of ranking and does not disclose an algorithm for implementing the
    ranking function (Facts 9-10)”

    Sit and stare at that until it makes sense to you. When you have resolved your own question post: I resolved my own question, thank you 6k. I’ll post: yw.

  80. “Are you stating that PHOSITA wouldn’t know what to do with a list of items with associated numerical scores when told to rank them?”

    I’m saying that if you want to write your claims using vague means-plus-fxn language, then recite a particular structure for performing the function, not “a computer”. Of course, it’s a bad joke that an “algorithm” is required to satisfy the structure requirement, but that’s because software patents are a bad joke per se. As we’ve been informed repeatedly, everything is enabled. The only contribution that these patents make to our collected knowledge is the knowledge that the patents exist. That’s it. It’s a business unto itself and has nothing to do with “promoting progress” and everything to do lining the pockets of attorneys who understand that a piece of paper is sometimes all it takes to milk some money out of frightened, uninformed people. Why do you think that attorneys name themselves as inventors on this garbage? Anybody can imagine a novel flow chart describing some virtual thingamajig. Slap a computer on it with some reference to an “algorithm” in the spec and VOILA! you have yourself a patent. Now all you need to do is think about the next trend in “social networking” or “consumer identification” or some baloney.

    This is a way of life for some people. It’s pathetic, frankly.

  81. “Despite the ramblings of 6K, I doubt that any sane examiner in the 2100 group wants to see all computer-related/software-implemented inventions rendered unpatentable.”

    I doubt they do either, it is their job going down the tubes. In any event, you are right, I don’t work there, but from what I can see from these decisions the magic words just got a whole lot more hard to come up with, and if they’re in the spec then fine. However, you realize that after you put those words in the majority of the claims then become about 100x less useful than the claims that you would have gotten before.

    “The only question that needs to be resolved is what magic words the Federal Circuit (or SCOTUS) deems necessary to make the claims statutory under 35 U.S.C. § 101.

    The hypocrisy of the whole situation, which is a point made in the amicus brief for Bilksi that Dennis signed, is that the whole “magic words” issue elevates form over substance.”

    You’re in for bigger problems than needing magic words. When you actually do limit your claim to being properly tied to a particular machine then you lose what? 99%? 99.9%? Some large amount of claim scope. Very few people have a problem with you getting a claim to some software method run that is operably linked to a special computer you came up with. The issue arises when you want to claim the method divorced from the machine you implemented it with, or when that machine is merely a general purpose machine.

    As to elevating form over substance I must disagree. This is because the magic words are going to have a larger effect than the magic words of the past, which, I agree, did elevate form over substance. The entire purpose for having the new school magic words are to add substance rather than mere form.

  82. “It seems more and more like the USPTO is converging with European practice on software, business methods and their ilk. US “machine or transformation” can be read such that it isn’t that far away from EP “technical” …”

    Yes, I agree. Emphasized harmonization is winning out. Instead of continuing to push the envelope and go where no one has gone before, the US is wimping out and going with the herd :-)

    I also agree with “I luv gravy.” The big re-do will keep us busy for some time!

  83. “What is being “lost” is a misplaced sense of entitlement that infected the brains of software patent prosecutors.”

    MM, ATFQ or STFU. Are you stating that PHOSITA wouldn’t know what to do with a list of items with associated numerical scores when told to rank them?

    Or are you just pleasuring yourself in public?

  84. “We’ve been playing by the rules all along … which is why I’ve gotten probably a hundred allowances in this art over the past couple of years.”

    Are you the genius who drafted and prosecuted the 7,455,222 patent?

  85. Does PTO’s web-crawl blocking violate statute – E-Government and Paperwork Reduction Act? E.g. –

    44 U.S.C. § 3506. Federal agency responsibilities

    (d) With respect to information dissemination, each agency shall–

    (1) ensure that the public has timely and equitable access to the agency’s public information, including ensuring such access through–

    (B) in cases in which the agency provides public information maintained in electronic format, providing timely and equitable access to the underlying data (in whole or in part); and

    (C) agency dissemination of public information in an efficient, effective, and economical manner;

    (2) regularly solicit and consider public input on the agency’s information dissemination activities;

    (3) provide adequate notice when initiating, substantially modifying, or terminating significant information dissemination products; and

    (4) not, except where specifically authorized by statute–

    (A) establish an exclusive, restricted, or other distribution arrangement that interferes with timely and equitable availability of public information to the public;

    (C) charge fees or royalties for resale or redissemination of public information; or

    (D) establish user fees for public information that exceed the cost of dissemination.

  86. “Get ready for a future where you have to play by the rules.”

    We’ve been playing by the rules all along … which is why I’ve gotten probably a hundred allowances in this art over the past couple of years.

    We cannot help it if the USPTO changes its mind every 4-6 weeks as to what they think is patentable or not. Regardless, I’m not worried in the slightest that computer-implemented/software-related inventions are going to go the way of your common sense — i.e., to extinction. I just want somebody to give us some clear guidance as to how to claim the inventions so I (and the examiners) can focus on the more important stuff — like prior art.

  87. “With respect to software, in the abstract, it is an algorithm, plain and simple. SCOTUS has told us already that algorithms as algorithms are not patentable subject matter. What is patentable is a particular implementation of that algorithm.”

    Surely that does not include Beauregard claims.

  88. I really don’t see this eliminating the business methods/software groups. It really means that claims should claim the invention, not the algorithm.

    With respect to software, in the abstract, it is an algorithm, plain and simple. SCOTUS has told us already that algorithms as algorithms are not patentable subject matter. What is patentable is a particular implementation of that algorithm.

    As painful as it seems, if the invention is a method of doing something in the abstract (such as “encrypting data”), then you’d better (i) tie that method to something tangible or (ii) do something tangible with it. A computer is not sufficient, nor should it be.

    If you consider other groups, trying to patent a method of using the equation for static equilibrium would not pass Sec. 101 (obviousness notwithstanding), but a lever would.

  89. “In the end, the whole debate over 101 is not going to impact my practice in any substantive manner. Instead, the whole question resolves around when the Fed. Cir./SCOTUS/Congress will finally get around to laying down the rules of the road so that we can all get along and leave 101 issues to ignorant examiners with bad rejections or ignorant attorneys with bad claims.”

    That’s exactly right, pds. What keeps getting lost is that neither Congress nor SCOTUS has ever signaled an intent to exclude huge swaths of novel/non-obvious technical stuff from patentable subject matter just because that stuff involves software. Its awkward ruling notwithstanding, the Federal Circuit didn’t intend to, either. It will get cleaned up sooner or later.

  90. “I’m worried about every claim that says “print” or “sort” or “display” without disclosing a print routine or a sorting algorithm or a video driver even though they’re well known in the art. In the pursuit of the right result, I think we’re losing something here.”

    What is being “lost” is a misplaced sense of entitlement that infected the brains of software patent prosecutors.

    Get ready for a future where you have to play by the rules.

  91. Although it pains me to agree with MM on anything. The claims reproduced in the decision (i.e., 1 and 119) are doo doo. They likely have serious enablement problems, and should likely be deemed obvious.

    However, this is a classic situation of where bad facts breed bad law. Fortunately for those of us who have to deal with 101 issues, the BPAI has little say in making law. Until a Federal Circuit decision comes down that makes things a little clearer than the gobbly gook presented in In re Bilski, I’m not going to concern myself – anything I prosecute is as different from claims 1 and 119 of this decision as they are from the average biotech application.

    6K writes:
    “Either that’s not enough detail about your case or else I would have to say that I doubt it really gets around it, even though you’ve managed to get it around it in certain instances with specific people. Specific people who in all likelihood haven’t even read the whole decision.”

    6K – you don’t even work in the 2100/3600 group, so what are you mumbling about? Like I mentioned awhile ago, unless the application already has them, all that needs to be done to make a method claim statutory under 101 is to add a few magic words (which should already be enabled by the spec in about 95%+ of applications). However, since you don’t examine in this area, you wouldn’t know.

    Despite the ramblings of 6K, I doubt that any sane examiner in the 2100 group wants to see all computer-related/software-implemented inventions rendered unpatentable. Otherwise, you would see a sign posted at the entrance of the Randolf building basically stating that if you work in this building, the reading of this sign constitutes your 2 week notice.

    Despite the call of some for eliminating software patents – I doubt it will ever happen. There may be some types of claims that get eliminated (i.e., signal claims), but as a whole, software patents will always be available in the US in one form or another. The only question that needs to be resolved is what magic words the Federal Circuit (or SCOTUS) deems necessary to make the claims statutory under 35 U.S.C. § 101.

    The hypocrisy of the whole situation, which is a point made in the amicus brief for Bilksi that Dennis signed, is that the whole “magic words” issue elevates form over substance.

    As I’ve asked a few examiner recently … “just tell me how you want me to amend the claims.” In response, they tell me what they want added, I add it (or agree to an examiner’s amendment), and the 101 rejection is withdrawn. I still argue the bad 101 rejections (95%+ of the them are bad), but when it comes to getting the case allowable, I’ll usually amend since the amendments don’t give up any claim scope.

    In the end, the whole debate over 101 is not going to impact my practice in any substantive manner. Instead, the whole question resolves around when the Fed. Cir./SCOTUS/Congress will finally get around to laying down the rules of the road so that we can all get along and leave 101 issues to ignorant examiners with bad rejections or ignorant attorneys with bad claims.

    Sure, the shrill voices of 6K/MM/Mad Max will still abound, but for those who care to listen, it will be for entertainment purposes only.

  92. I’m a Computer Scientist and a Patent Attorney and this is certainly the RIGHT result. I was actually starting to write a law review article directly on this point: the MACHINE prong of the “machine-or-transformation” test should be the HARDEST prong to pass.

    If the claim is directed to an “eligible transformation” then it is applying a algorithm to a purpose (and not to just data in the abstract). However, if you’re relying on the machine prong, the applicant is essentially saying, I’m claiming the ENTIRE algorithm.

    Putting an algorithm on a machine that is capable of executing any arbitrary set of steps is NOT a meaningful limitation. To pass muster under the machine prong, you’re going to have claims that look more like the claims to machines/apparatus in other areas. Not usually what an inventor would want since a likely infringer is not going to have it on that kind of machine when they can program a computer to do the same.

    My suggestion: figure out WTF is actually being transformed and what the source/output of the “data” is.

  93. Did anyone actually read the spec of this patent application?

    I’m not defending the application’s patentability under any of the statutes, but I’m not sure I’m onboard with at least part of the BPAI’s reasoning.

    In particular, the 112/Aristocrat rejection–the BPAI says that the “ranking” algorithm wasn’t disclosed. I’m looking at the spec, and it looks pretty disclosed to me. As I read it, once the metrics are calculated (in the previous element of claim 1, described at least at paragraph 0097), the algorithm for “ranking” is fully incorporated in the plain meaning of the word “ranking.”

    Is anyone here (MM?) going to say PHOSITA wouldn’t know what to do with a list of items with associated numerical scores when told to rank them? The only question is “high to low” or “low to high.” And since paragraph 0097 says that items are trade secrets if the metric exceeds a threshold, it seems to me that “high to low” would be the right answer.

    I’m worried about every claim that says “print” or “sort” or “display” without disclosing a print routine or a sorting algorithm or a video driver even though they’re well known in the art.

    In the pursuit of the right result, I think we’re losing something here.

  94. Yes, DCN; very useful information indeed.

    Thank you.

    And David Stein’s correct…leading one to wonder and carefully consider how to move/have as much “invention” as is possible under the (now even criminal) large copyright umbrella.

    Any reason every design patent shouldn’t also be copyrighted?

    What about (aspects of?) utility patents?

    Would/could the threat of criminal prosecution be a (more?) effective/ additional hammer against “invention” infringers than an issued patent?

    Thoughts?

  95. I’ve only been talking to SPEs. The biggest concern they have had is whether the computer is tied to a specific algorithm, and not just some data gathering or data displaying feature.

    The SPEs have been receptive to removing the 101 rejection as long as one of the significant steps of the method is tied to a computer. Some sort of data transformation step. In one case, for instance, I tied a data clustering algorithm to the computer, and that was enough.

  96. “I once did a patent number search on Google and got the completely wrong document. I would advise strongly against professional use of Google Patents ”

    I once did a patent number search on East and got the completely wrong document. I would advise strongly against professional use of East.

    And yet…

    “I’ve done this twice now. What I can tell you is that as long as a significant step of the method is tied to a computer, then you can get around Bilski.

    In one instance, I was informed by an SPE that a computer merely “acquiring” data was not enough. Rather, what got around Bilski was some sort of transformation of the data.

    Without going into too much detail, what eventually worked was an initial step inserted into the amendment that provided a computer, and a wherein clause at the end of the claim that listed that the computer was capable of performing at least one signficant step of the method.

    Hope this helps.”

    Either that’s not enough detail about your case or else I would have to say that I doubt it really gets around it, even though you’ve managed to get it around it in certain instances with specific people. Specific people who in all likelihood haven’t even read the whole decision.

    A reminder: Issue is not the end of a patent’s life.

  97. Thanks SF.

    I’m also not denying that what Noise above Law says is true. I’m saying that that truth leads to a paradox which requires twisted and unsatisfactory reasoning to “resolve”.

  98. Noise above Law states, “Here in the States, our law is clear that 101 is divorced from 102/103 (and 112), even if the bloggers are not.”

    Even if 103 isn’t involved, obviousness still is, given the Supreme Court stated in Flook: “The notion that post-solution activity, no matter how conventional **or obvious** in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula…” (emphasis added)

  99. I’ve recently been talking with a couple Supervisory Examiners about the Bilski decision. In view of some 101 rejections, one of our clients has asked us to run some proposed amendments by the Examiners, in an effort to get some indication as to whether the amendments would overcome Bilski.

    I’ve done this twice now. What I can tell you is that as long as a significant step of the method is tied to a computer, then you can get around Bilski.

    In one instance, I was informed by an SPE that a computer merely “acquiring” data was not enough. Rather, what got around Bilski was some sort of transformation of the data.

    Without going into too much detail, what eventually worked was an initial step inserted into the amendment that provided a computer, and a wherein clause at the end of the claim that listed that the computer was capable of performing at least one signficant step of the method.

    Hope this helps.

  100. David Stein said:

    “That’s exactly what’s become of patent reform legislation. Several competing packages of broad patent reforms have been pushed by different groups, and none of them can get sufficient backing. So nothing happens… well, except that the Congressmen leeching off of these lobbyists build up war chests to bolster their incumbencies. 😉

    Contrast this with copyright, where virtually all of the well-financed owners are on the same side of the ball. End result: frequent, significant expansion of the rights and powers of copyright owners – at the expense of the public and the public domain. Why? Well, the public domain has few lobbyists, and no lobbying cash. So media owners get the Copyright Term Extension Act; the Digital Millennium Copyright Act; the Intellectual Property Protection Act; the Enforcement of Intellectual Property Rights Act… meanwhile, the Orphan Works Act (an abandoned-copyright-expiring bill) collects dust in a committee.

    My viewpoint is very cynical – but it matches the facts much better. ;)”

    Brilliant analysis. It especially irked me when the Supreme Court gave a pass to the Copyright Term Extension Act. There really was no excuse for this. The Supremes don’t have to answer to lobbyists like Congresscritters do.

    And yes, I know that’s perverse, but the reality is if a member of Congress ticks off the wrong pressure group, next thing you know, that Congresscritter’s opponent appears next election with a $5m war chest (or more if it’s a Senate seat). If you think THAT’S too cynical, just notice how literally EVERY member of Congress bows down in front of a FOREIGN lobbyist group, AIPAC. But the same thing holds in IP law as well. So the only hope for peons is stalemate. That’s why the Democratic sweep is a bad thing, even though the Republicans deserved to lose…

  101. Eurodisnae,

    101 is divorced from 102/103. Period. Sorry, but those are the rules of the game. Just because you think that they “can’t be” doesn’t change the state that they are. You will have set aside your predilection of the EP system and learn to play by the U.S. rules in the U.S.

  102. “hmm, curious: how does google patents access patent documents if the PTO prevents web crawling of their databases? do they have some kind of contract worked out?”

    robots.txt files are like stop signs. Some robots, particularly when all sauced up and surely, sail right through them.

  103. Noise above Law:
    “In the US, 101 IS divorced entirely from 102/103”

    My contention would be that even if it is supposed to be, it CAN’T be, for practical purposes, because for practical purposes it is the contribution that really matters.

    Maybe that’s part of the problem…

  104. Lawyers rejoice!

    Take a broad swath of In re Bilski, add to the open-ended invitation of In re Swanson and follow the path through more than ten years of the most massive amount of patents processed in the entire history of the U.S (due in part to the record “high performance” of the USPTO) and result in massive outlays to patent lawyers to undo/redo/litigate the existing patents and applications.

    This gravy train puts the RCE and reject/appeal/reopen trains to shame. You thought there was a tsunami of activity after State Street? I know I’m lining up the re-exams as quickly as possible before the Supreme Court takes Bilski. Either the Supremes will affirm and open wide the floodgates (in which case I want to be first in line) or will clearly define 101 (not likely).

  105. Eurodisnae,

    “Either way, 101 can’t be divorced entirely from 102/103.”

    You are of course meaning that the “European equivalent of 101” can’t be divorced entirely from the “Eruopean equivalent of 102/103”, right?

    In the US, 101 IS divorced entirely from 102/103 and is one reason why the uproar with the improper use of 101 to eliminate bad patents/applications is so fierce. Here in the States, our law is clear that 101 is divorced from 102/103 (and 112), even if the bloggers are not.

  106. It seems more and more like the USPTO is converging with European practice on software, business methods and their ilk. US “machine or transformation” can be read such that it isn’t that far away from EP “technical”. An excluded method can’t be saved merely by reciting computer implementation. The method itself has to have some technical aspect to it.

    For those interested, EP thinking on program product claims is that, if the computer-implemented method/programmed computer qualifies as providing a patentable technical effect, the corresponding program embodies a “secondary technical effect” that is manifested when the program is executed. You don’t need to recite a data carrier, because the reasoning doesn’t rely on the notion of a manufactured article.

    There is a relationship between 101 and 103 here, because you have to assess the “contribution” that the subject matter of the claim makes to the art. At the EPO, any technical elements in the claim allow it to escape the statutory exclusion (= 101), but non-technical elements cannot contribute to inventive step. At the EPO, Halligan would have failed on obviousness (103) – no inventive technical contribution – not excluded matter (101). The UK, on the other hand, looks at the contribution in assessing excluded matter, effectively ignoring any non-novel or obvious technical elements – which is more like the BPAI approach to Halligan. Either way, 101 can’t be divorced entirely from 102/103.

    Is it safe to assume that a Beauregard claim for Halligan’s method would fail also?

    It seems to me that the approach being developed in Bilski and Halligan is bound to sink many granted US patents.

  107. Good observation, David Stein. It’s ridiculous that copyright infringement has been elevated to a criminal offense. A small, focused and well-funded group like the recording and movie industry will always have an easier time than Joe Schmoe getting legislation to its benefit passed, not only b/c it has the cash to lobby Congress, but because the harm to the public is a diffuse harm, so that at the time the legislation is being considered, there’s no one to mount any real opposition since most people don’t perceive any real harm. (The converse of this is why the DMCA and the other garbage that Congress passed at the behest of the recording industry won’t be repealed – although the public has now seen the harm and is tired of 12-year-olds getting slapped with suits for hundreds of thousands of dollars for downloading songs, the public good in repealing the legislation is diffuse, whereas the “harm” to the recording industry is acute, so they’ll be able to lobby more effectively against repeal.)

    For purposes of my own livelihood, I hope you’re right that patent “reform” ala Microsoft won’t happen due to competing interests that can lobby equally effectively, but I suspect that sooner or later the squeaky wheels in this one are going to get something through that will gut the patent system, b/c the ultimate harm that will be felt in society due to a gutted patent system will be too diffuse (plus the fact that the biggest opponents of patent “reform” are big pharma companies, which aren’t the darlings of the public right now).

  108. Neurosis and/or un/underemployment… that is.

    Case load must be a little light eh Mooney? I’m not surprised. Things must be a little slow on the loading dock I guess. You still getting your Internet access from the public library?

  109. I once did a patent number search on Google and got the completely wrong document. I would advise strongly against professional use of Google Patents

  110. “One would think that Hallilan would have better things to do than file crap patents. But greed changes people.”

    One would think someone who is gainfully employed in patent law would have better things to do than post incessantly on a perfectly good blog. But neurosis changes people.

    By the way, speaking of white wine and satin underpants, I know where the party isn’t…

  111. “So media owners get the Copyright Term Extension Act; the Digital Millennium Copyright Act; the Intellectual Property Protection Act; the Enforcement of Intellectual Property Rights Act… meanwhile, the Orphan Works Act (an abandoned-copyright-expiring bill) collects dust in a committee.”

    The digital revolution killed big media owners and now it’s killing IP big owners. Some people simply want to own and control everything. They get greedy. And then: kablooey.

    There’s a reason there aren’t a lot of sober commenters here. It’s because there’s a party going on.

  112. “I doubt very seriously that Congress has never contemplated the issues. That they haven’t spoken to the issue is as much an affirmation that they support the courts decision as it is an indication they may or may not go one way or another.”

    That’s an extremely generous presumption. Unfortunately, it doesn’t reflect reality in the slightest.

    The U.S. Congress is a body of 535 prima donnas with independent agendas. Achieving a majority vote on ANY bill is a mountain-moving expedition. Specifically, a mountain of cash must be moved from interested parties through lobbyists to Congressional coffers in order to buy a consensus.

    And when it comes to the patent system, Congress has been VERY attentive. But in recent times, for every patent-related issue, and for every lobbyist pulling the issue toward a preferred resolution, there’s another, equally-resourced lobbyist pulling in the exact opposite direction. The result is old-school gridlock.

    That’s exactly what’s become of patent reform legislation. Several competing packages of broad patent reforms have been pushed by different groups, and none of them can get sufficient backing. So nothing happens… well, except that the Congressmen leeching off of these lobbyists build up war chests to bolster their incumbencies. 😉

    Contrast this with copyright, where virtually all of the well-financed owners are on the same side of the ball. End result: frequent, significant expansion of the rights and powers of copyright owners – at the expense of the public and the public domain. Why? Well, the public domain has few lobbyists, and no lobbying cash. So media owners get the Copyright Term Extension Act; the Digital Millennium Copyright Act; the Intellectual Property Protection Act; the Enforcement of Intellectual Property Rights Act… meanwhile, the Orphan Works Act (an abandoned-copyright-expiring bill) collects dust in a committee.

    My viewpoint is very cynical – but it matches the facts much better. 😉

    – David Stein

  113. “That they haven’t spoken to the issue is as much an affirmation that they support the courts decision as it is an indication they may or may not go one way or another.”

    The logic doesn’t even parse.

    There are important, valid arguments to be recognized about limiting patentability. It’s a shame that we have no sober, rational voice on this board to represent them.

  114. “Congress never really spoke on or contemplated these issues.”

    I doubt very seriously that Congress has never contemplated the issues. That they haven’t spoken to the issue is as much an affirmation that they support the courts decision as it is an indication they may or may not go one way or another.

  115. Shubham asks:
    “hmm, curious: how does google patents access patent documents if the PTO prevents web crawling of their databases? do they have some kind of contract worked out?”

    Answer: they don’t. I don’t think there’s any new patents or publications on Google/patents in almost a year. And I’ve seen errors in some figures on their database. It’s a nice tool, but I wouldn’t submit any of their stuff as exhibits to a court…

    EM

  116. hmm, curious: how does google patents access patent documents if the PTO prevents web crawling of their databases? do they have some kind of contract worked out?

  117. “the USPTO needs to hire you as a consultant to assist the examiners in the software and business method arts, and maybe even conduct training sessions for them.”

    You can’t teach fish how to ride bicycles.

  118. “The steps of process claims 122 and 123 also fail the second prong of the machine-or transformation test because the data does not represent physical and tangible objects. Rather,the data represents information about a trade secret, which is an intangible asset.”

    It looks like the “business method exception” that State Street overruled has been revived, albeit in a much more complex analysis.

    What kills me is that all of this is judicial legislation. Congress never really spoke on or contemplated these issues.

  119. “Don’t claims preempt everything in their scope?”
    asks Ur Somebody Else.

    The answer is No.

    There is a doctrine of law that says claims don’t cover inoperable variations thereof. For example, let’s say a claim recites: a 1st transistor, a 2nd transistor, etc. The word “transistor” is pretty broad and literally it covers the subset of broken inoperable transistors. However, it is implicitly understood that the claimed matter would then be not “useful”. So it is inherently understood that inoperable embodiments are excluded from the scope of the claim.

  120. Malcolm Mooney, the USPTO needs to hire you as a consultant to assist the examiners in the software and business method arts, and maybe even conduct training sessions for them. Additionally, you need to advertise your services to large companies that have been accused of infringing software and business method patents, given that you can very quickly invalidate those patents.

  121. From the background of 7,455,222:

    “Furthermore, a need exists for systems and methods that enable a consumer to more conveniently obtain a transaction instrument such as a stored value card.”

    Wow, I wonder what this “more convenient” method could possibly be? The priority date is 2004. I seem to recall even way way back in those dark ages that “stored value cards” were available through the mail or over the counter at a store. Let’s look at the spec:

    “In one exemplary embodiment of the present invention … transaction instrument, such as an open pre-paid card, may be offered by a distributor, e.g., a merchant. The merchant may present the open pre-paid card, for example, by hanging the card on a rack near the check out stand.”

    Wow. Breathtaking. The punishment for presenting such blatantly self-serving hooey to the USPTO?

    A granted patent!

  122. I don’t see the problem with the BPAI’s comment about “add[ing] nothing more than a general purpose computer.” It would appear that many earlier commenters see this as the BPAI trying to read Bilski to eliminate software patents. However, if you continue reading, the BPAI limits this statement to “purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm.” I would assume that software constitutes a specified algorithm, and as such, I don’t believe the BPAI has even commented on software patents.

  123. “Im In Ur PTO Rejecting Ur Patents ”

    I like your name. I think you stole it from me a few threads back. At first I thought I had forgotten that I had already posted in the thread lol.

    “but the BPAI is running hog wild with the 101 void.”

    And a good thing too. They want to make it so that it isn’t only on the heads of the CAFC when the question gets up to them. They want to show them that the PTO is behind this way of deciding the issue. Good for them.

    “Clearly the form of implementation matters to 101 patentability, so what implementation styles are properly claimable?”

    But for how much longer?

  124. David Stein; “I don’t know why *any* practitioner *ever* uses means-plus-function claim styles – the law is just horrific… even by patent law standards”

    Ah, but David it depends on what you intend to do with your patent. You see, many people obtain patents *not* because they are interesting in protecting some invention that they have already invested a great deal of time and effort to developing. Instead, these people obtain patents because they have taken a “look into the future” and see where a certain type of patent in a certain area MIGHT be valuable if one were interested in, say, harassing some company or companies for licensing fees or maybe even sueing some folks.

    That’s business! It’s not a business like manufacturing cars or selling clothes or developing drugs or diagnostic kits, like most Americans think of when they think about a business. Rather, it’s the kind of fake paper-pushing business that wise, elite white men like our current treasury secretary in Washington DC are deeply deeply deeply concerned about.

    So the fact that law relating to means-plus-fxn patents is crappy is not a bug at all if you’re not in the business of protecting something you’ve worked hard to invent. On the contrary, it’s a feature! It makes your piece of paper with all those difficult-to-interpret words on it that much more valuable because it will cost someone who lacks confidence and understanding a lot of money to write an opinion explaining why that piece of paper is a bunch of crap.

    It also helps to have 100+ claims describing the crap in slightly different ways. And here’s the really wonderful thing: if you keep clapping really hard and believe in this “business” of obtaining crap patents, you can keep the economy moving, like, forever. Even the guy who changes the water bottles at the law firm will be grateful. Just don’t stop believing. We should all be willing to lay down a bunt like Mark did. While the PTO was busy pounding nails into the coffin of his crappy invention, a couple hundred more equally crappy computer-implemented inventions were patented.

  125. Malcolm Mooney said: “The fact that the Board wastes a ton of paper explaining why the claim is obviousness does not change the basic facts.”

    I thought this thread was discussing whether the claims were patentable under section 101.

    (Pre-emptive disclaimer–I’m NOT defending this patent. BUT–I think it’s important to distinguish unpatentable subject matter from unpatentability based on sections 102, 103, 112, etc. And it’s clear from your other comments that you’re smart enough to know the distinction.)

  126. Mooney says:

    “And eventually it ends up here, a subject of mockery and derision. How many more such patents are out there like this? Thousands, my friends. That’s why this blog is too big to fail.”

    Not only are they out there, they are still being granted. Even today. See, e.g., U.S. Patent Nos. 7,455,222.

    EM

  127. Claim 119 (determining whether a potential trade secret is a trade secret based on Restatement criteria) hasn’t got a chance of surviving the Bilski test. What you have here is the same sort of “manipulation of even more abstract constructs such as legal obligations, organizational relationships, and business risks” that were shot down by the Federal Circuit majority in Bilski. Trying to tie this “abstract” method to a computer isn’t going to work either. Instead, the method has to provide something “real world”, for example, establishing a estimated $ value for the trade secret.

  128. “Can’t blame the applicant, though. This case was filed in 2002”

    Rest assured, in 2002 claim 119 was just as crappy as it is now. Honest people knew it then. Honest people aren’t afraid to admit it now.

    The fact that the Board wastes a ton of paper explaining why the claim is obviousness does not change the basic facts.

    But here is the rub: why would Mr. Halligan or anyone else really care if they can find some mo-ron to pick up the tab for prosecution? A good attorney can tell an inventor that his invention is crapola until the attorney is blue in the face. If the inventor has some doofus whispering to him about wonderful his unpatentable obvious computer-implemented garbage is, the inventor will find some attorney somewhere willing to massage his pig’s ear until it looks like a nice shiny purse.

    And eventually it ends up here, a subject of mockery and derision. How many more such patents are out there like this? Thousands, my friends. That’s why this blog is too big to fail.

  129. File this one in the “well, DUH” category.

    The claims simply wrap a business method in a thin veil of computer-ness. The CAFC didn’t go to such great lengths with Bilski (taking a long time to issue a very lengthy opinion) just to coerce the patent bar to insert the term “computer-implemented” in the preamble.

    The BPAI probably ruled on this case (with an unusually lengthy opinion) as its fledgling effort to apply Bilski in a clear-cut case. It’s practically T-ball, and there’s simply no way that the CAFC can tell the BPAI that it mis-applied Bilski (much like the CAFC styled its Bilski opinion to take away most of SCOTUS’s rationale for granting cert.)

    Can’t blame the applicant, though. This case was filed in 2002, and probably would have passed the State Street test just fine. (I’ve certainly seen more vague and less well-described cases that somehow satisfied “useful, concrete, and tangible.”)

    The Bilski battlefront, at the moment, is the definition of the term “particular” (and maybe the term “tied”) – what is the minimum threshold of machine tying in the claim that satisfies Bilski? For example:

    * Does a general-purpose machine, particularly programmed to perform a method, satisfy Bilski? (This isn’t a clear-cut “no” – see Alappat.)

    * How about claiming the method, but describing (in the claim) the form that programs embodying the method may take? Claiming the method as embedded on a CRM still appears to be safe, even after Bilski (see In re Bo Li); by contrast, signal claims are still probably per se unpatentable (see In re Nuijten.) Clearly the form of implementation matters to 101 patentability, so what implementation styles are properly claimable?

    In this situation – Halligan lost this battle because his case was simply too deep in enemy territory. (I *can* fault the applicant for means-plus-function limitations. Frankly, I don’t know why *any* practitioner *ever* uses means-plus-function claim styles – the law is just horrific… even by patent law standards!)

    – David Stein

  130. Know your internet meme: Im in ur…

    That’s almost surely 6k. As wrongheaded as he is most of the time, that kid is funny. And in this case, probably right.

  131. Perhaps robots have better things to do than crawl through the patent catacombs all day.

    Gotta love the name of that first poster. funniest thing i’ve read on this blog in ages.

  132. Mooney wrote:

    Hey, Mark, how about a patent on an old method of predicting whether performing old obvious mental steps is patentable? Wait! Don’t run away. THIS IS IMPLEMENTED ON A COMPUTER!!!

    Response:
    I would think that a seasoned biotech practitioner like Mooney would know the difference between 101 and 103.
    /sarcasm off

  133. This whole particular machine vs. general machine is PURE gobbledygook.
    Everyone knows that a field-programmable gate array (FPGA) and software executed by a “general” microprocessor is the same thing.
    One may argue the policy advantage of making software non-patentable subject matter (I personally disagree, but such an argument is quite legitimate).
    But PLEASE PLEASE PLEASE stop perverting science and engineering with the nonsense of general and particular machines. Physical vs. non-physical.

  134. “In essence, the computer program has the common law rules of trade secrets hardcoded, and those rules are applied to determine whether particular information is a “trade secret.”

    Try to believe it: an IP partner and adjunct professor thought you could get a patent on that invention.

    Hey, Mark, how about a patent on an old method of predicting whether performing old obvious mental steps is patentable? Wait! Don’t run away. THIS IS IMPLEMENTED ON A COMPUTER!!! Think about the time a person could save using a computer to do that, Mark. Nobody could have predicted this. Yes, I know that stuff in the MPEP. We’ll just need to appeal it. You got the deep pockets lined up? AWESOME.

  135. “a general purpose computer that has been programmed in an unspecified manner”

    i.e., no code. Ah, yes. I feel a software written description test coming around the bend.

    [cue intro to “Sabbath Bloody Sabbath”]

  136. “Following Aristocrat, the opinion noted that software-type means should include a disclosure of an algorithm. “The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the recited functions of claims 1 and 121 so as to render the claims definite.”

    Yup. Read it and weep. Even an algorithm is should be insufficient in most instances to get a claim allowed. If anything, there should be a specific example of a non-obvious implementation of the algorithm, yielding unexpected results. But then softywafty application drafters would actually have learn how to do argue facts instead of pointing to a flowchart and crying about hindsight and non-analogous art.

    Claim 1 of the Leader Tech case dies for the same reason. It’s a terribly drafted means-plus-function (“computer-implemented context component” for performing function X and “a computer-implemented tracking component” for performing function Y).

  137. “The inventor Mark Halligan is a Trade Secret expert and partner at Lovells and adjunct professor (teaching trade secret law) at John Marshall Law School in Chicago.”

    One would think that Hallilan would have better things to do than file crap patents. But greed changes people.

  138. Looks like BPAI is trying to attack a lot of potential software claims (because all software claims reside in some hardware)…

    So BPAI says “programmed computer” does not meet the machine or transformation test (because a programmed computer is not a machine or apparatus)? Thats a little too much…

    The CAFC was more responsible in Bilski than this slop thats going to provoke 101’s all over the place. And apparently the only solution would be to describe at the register level how the algorithm operates – presuming that the POSIA of knowing absolutely nothing about how to implement the algorithm.

  139. Thank you Dennis,

    My post from the “Software Methods Claims: Bilski in Light of Benson” thread reprinted here:

    An obvious problem with Bilski…

    The BPAI will take the law to be whatever they want it to be in absence (or not) of clear direction from the “real” courts.

    Especially love the following:
    “Process claims 119 and 120 recite “a programmed computer method” in which each of the process steps is performed by the programmed computer. The issue presented by these claims is whether recitation of a programmed computer suffices to tie the process claims to a particular
    machine. This is the exact issue that the court in Bilski declined to decide. …
    …Were the recitation of a “programmed computer” in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, sufficient to transform otherwise unpatentable method steps into a patent eligible process, this would exalt form over substance and would allow pre-emption of the fundamental principle present in the non-machine implemented method by the addition of the mere recitation of a “programmed computer.” Such a field-of-use limitation is insufficient to render an otherwise ineligible process claim patent eligible. Bilski, slip. op. at 15, citing Diehr, 450 U.S. at 191-92 (noting that eligibility under § 101 “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.”).”

    So,… the first prong “tied to a machine” is either attempting to limit to a particular technological environment or pre-empts the non-machine implemented method. It’s one thing to 112 this for lack of specified programming, but the BPAI is running hog wild with the 101 void.

    In passing the buck, the appeals circuit in Bilski exacerbates the problems instead of following their mandate and making the law clear.

    Posted by: Noise above Law | Nov 25, 2008 at 10:22 AM

  140. “This recitation fails to impose any meaningful limits on the claim’s scope as it adds nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims.”

    It seems this argument would apply to a lot of software claims…

Comments are closed.