Claim Construction

PatentLawPic745Wavetronix v. EIS Electronic Integrated Systems (Fed. Cir. 2009)

Wavetronix’s patent covers a big brother sensor to monitor vehicle trafic and to ensure that drivers are properly using the carpool (high-occupancy vehicle) lane. EIS was accused of infringement but convinced the Utah-based district court to grant summary judgment of non-infringement.

On appeal, the Federal Circuit has affirmed – largely based on claim construction of the claim term “probability density function estimate” or PDFE used to define the traffic lanes.

The excerpted claim reads as follows: 1. … a method for defining traffic lanes, comprising … b. generating a probability density function estimation … of said selectable plurality of vehicles; and c. defining said traffic lanes … from said probability density function estimation.

Writing for the court, Judge Patel (sitting by designation from the N.D. of Cal.) construed PDFE to as “a finite data set large enough to approximate a function of a continuous variable whose integral over a region gives the probability that a random variable falls within the region.”

[Updated] That definition – requiring an approximation of a continuous variable – helps EIS. The EIS system can also automatically define the traffic lanes based on traffic data, but the company claims that its device does not do so with “probability analysis” but rather uses large binary bins. Based on this distinction Judge Patel held that the EIS system data is “too coarse” to be a PDFE.

Even in a close case such as this, the court held that the DOE cannot rescue the patentee because of the tight requirements of element-by-element application of the DOE and the doctrine of vitiation.

90 thoughts on “Claim Construction

  1. “The examiner could have rejected in view of a photocopy of his backside and still not have gotten a response.”

    I was going to try that the other day, but my SPE wouldn’t let me, even though it qualified as a 102(b) reference.

  2. “I bet an abandonment follows whenever I use that reasoning in an action.”

    I bet an appeal follows (when you eventually use it on a case where the applicant thinks it’s worth the money to appeal), followed (1+ year later) by you losing at BPAI.

    Scenario: a case goes abandoned after the first action.
    What the examiner thinks: “My rejections were so awesome that the applicant gave up.”
    Reality: Most of the time the Applicant gave up on the case before they even received the first action. The examiner could have rejected in view of a photocopy of his backside and still not have gotten a response.

    Scenario: a case goes abandoned after the final action.
    What the examiner thinks: “My argument that all of the words in the claims are well known words in the English language and therefore anticipated by Webster’s Dictionary was so awesome that the applicant gave up.”
    Reality: The case wasn’t valuable enough to the applicant to justify the added expense of a protracted battle with an unreasonable examiner and/or an appeal.

  3. “You could say that about any invention if you decompose all the parts. ”

    I was just thinking about that in my bathroom today. Brilliant isn’t it?

    It isn’t as silly as you’d at first suppose. I bet an abandonment follows whenever I use that reasoning in an action. (In fact, similar reasoning just did in one that will go abandoned today or monday :( I liked that app too) Applicants don’t want that sort of thing reaching the CAFC and getting all the rest of their bs patents taken out like last night’s garbage.

    Carefully conceal the bottom line, that’s their plan. Throw up dust and confuse the court with misleading limitations. Get them off thinking about some tangental issue, missing the forest for some big tree.

  4. >>No, I mean using the machine in exactly the >>way the makers intended it to be used

    That’s ridiculous. You could say that about any invention if you decompose all the parts. Well, each screw was used as a screw, the wood was cut as wood should be, etc. Silly.

  5. “6: I presume you mean a new use for an old machine.”

    No, I mean using the machine in exactly the way the makers intended it to be used (inputting, shifting, “transforminglol” and outputting data). Although the new use for an old machine element is yet another, distinct, problem.

    “Bilski suggest that transformations of data that represent real world things as opposed to contractural, legal, and financial obligations can be patentable subject matter. ”

    Does transforming real world data into something imaginary/abstract (traffic lanes) count? That’s a toughie.

  6. “but it was enabled”

    LOL. Whatever happened to pds? He had some interesting thoughts on enablement.

  7. >>nothing more than thinking in the abstract >>about a biological fact, I trash them.
    Sorry, but it was enabled.

    Sorry, MM-trollbot, but again you have failed to make substantive arguments. Please reset yourself.

  8. “An operating system (software) makes a useless hunk of plastic, metal, and silicon into a computing device.”

    Then claim the useful device, not the instructions for making the device. Also, claim the device structurally and not functionally.

    That’s what the law requires, when properly applied.

  9. “Biology is also not a technology. ”

    And when I see biotech “inventions” that are nothing more than thinking in the abstract about a biological fact, I trash them.

  10. >>opposed to contractural, legal, and financial >>obligations can be patentable subject matter.

    So, an information processing machine that can perform the function of a federal circuit judge would not be eligible for patentability. No utility, or perhaps the machine isn’t technology somehow.

  11. JV: “The invention involves the transformation of data representing a real world thing (sensor data representing car positions) into traffic lane definitions”

    MM:That’s not a patentable transformation.

    According to who exactly?

    Bilski suggest that transformations of data that represent real world things as opposed to contractural, legal, and financial obligations can be patentable subject matter.

  12. 6: I presume you mean a new use for an old machine. Sorry, but that has been refuted many, many times as a poor argument.

    It seems like you have also become a 6-trollbot.

  13. “1. A thing that makes an old object new again by virtue of a human being deciding to use the old object in a manner for which it was originally intended to be used (process any data you can manage to fit through it).”

    Congratulations, you just outdid yourself in the “better to keep silent and be thought a fool than to speak and remove all doubt” department.

  14. Well 6, I agree that SCOTUS and EPO jurispudence will come closer but, on who is influencing the other more, we differ. Again, Kappos knows. What’s shaping EPO caselaw is the 24 Technical Boards of Appeal, whose members are technical and legal, but with the technical judges in the majority.

    Can you tell me who you have in mind with your expression “the imitators in the EU”? On anti-trust maybe, on trademarks, possibly. But patents? Do tell.

  15. “But the EPC statutory language forbids patents on inter alia mathematical methods, methods for doing business and programs for computers, as such. Remarkable then, that there is any legal certainty or consensus in Europe.”

    Wait until USSC has their say and watch all the imitators in the EU move lock step into line with us.

  16. “And why is it that information processing is different from other technologies?”

    Because it is tha simplez? Or perhaps because it is nothing more than the use of other people’s inventions?

    “If a general purpose computer can be made to do something new and useful by virtue of innovative software, why should that software not be patentable in and of itself?”

    Let’s see. For the same reason the following claim fails:

    1. A thing that makes an old object new again by virtue of a human being deciding to use the old object in a manner for which it was originally intended to be used (process any data you can manage to fit through it).

  17. The EPO allows Beauregard claims, carrier claims, signal claims etc etc. Claims that are what inventors need, to get the financial reward promised to innovators by the patent system. But the EPC statutory language forbids patents on inter alia mathematical methods, methods for doing business and programs for computers, as such. Remarkable then, that there is any legal certainty or consensus in Europe.

    But there is, and Dave Kappos knows all about it.

  18. Information TECHNOLOGY
    Information TECHNOLOGY
    Information TECHNOLOGY
    Information TECHNOLOGY
    Information TECHNOLOGY
    Information TECHNOLOGY
    =
    Hardware + software

    There’s no IT without s/w.

    Abstract algorithms aren’t patentable so nothing that is made of abstract algorithms can be patentable: that’s like saying that atoms aren’t patentable so nothing that’s made of atoms can be patentable. It’s the appliance of science that makes patentable inventions.

    Even the EPO recognises that software CAN be patentable in and of itself.

    The Industrial Revolution begat the modern patent system. There’s nothing about the Information Revolution that negates the thinking behind the patent system, but it surely raises challenges as regards the ways in which such rights should be defined, evaluated and awarded.

    To pretend that software has no substance beyond the abstract ideas that it embodies and the code by which it is expressed is just plain stoopit. If a general purpose computer can be made to do something new and useful by virtue of innovative software, why should that software not be patentable in and of itself? What’s really important is the type and degree of innovation that warrants patent protection.

  19. So I’d argue that software is (or should be patentable). But I do think you have to watch out for software claims that are written so broadly that they are simply an algorithm run on a computer, which I don’t think is or should be patentable. You also have to watch out for those that go a step further and just add a field-of-use limitation or some insignificant post or pre-solution activity.

  20. Of course math is not a technology.

    Biology is also not a technology. You can read in a bio textbook that X cell has Y property. That’s not technology. Using that property to do something useful (for example, in the context of treating an illness)–that’s technology.

    The same analysis applies to chemistry. And physics. Go down the list.

    Technology is “the practical application of science to commerce or industry.” Or maybe technology is “a human innovation in action that involves the generation of knowledge and processes to develop systems that solve problems and extend human capabilities.” Software (as the practical application of computer science) falls within these definition.

    If you want to have a definition of technology that doesn’t include software and work backwards from there, then of course your definition won’t include software.

    An operating system (software) makes a useless hunk of plastic, metal, and silicon into a computing device. The operating system will make the hunk of plastic, metal, and silicon work according to ideas described in mathematical algorithms. But that operating system is not technology? I’d like to hear a well-reasoned and reasonable argument that refutes that.

  21. And, one more thing, MM-trollbot.

    Answer this question: how can the design of a MACHINE not be technology? It becomes not technology because it is processing information?

    Please report the frying of your circuits and the rebirth of MM the man.

  22. And MM-trollbot, if you think software is just so easy then go and win a million dollars and write a program that will recommend movies. See link to netflixprize.com.

    You laughed at this and said people should just go and ask their uncle.

    You may want to consider that a machine is being used to process information. A machine. Keep repeating that until your circuits fry.

  23. MM-trollbot wrote:
    >>And the only incentive Google or any other >>company needs to encourage better software >>for “improving graphic rendering” is public >>demand, period.

    And why is it that information processing is different from other technologies?

    >>Math isn’t technology either.
    Sounds like we have an elementary school child lecturing us.

  24. “All of you out there majoring in computer science, software engineering, computer engineering and the like, no need to sweat those difficult courses.”

    Having taken several of those courses I can tell you that it ain’t nothin’ but a chicken wieng compared to other disciplines. Liberal arts though. Man don’t even get me started. That stuff is like playtime for a grade. A lot of girls there though. I had a job in the Liberal arts building dealing with their hardware and them using it, and I loved it. Got to take one elective too. Heaven compared to my other classes.

    “But it doesn’t matter because the Examiners who deal with these claims are the laziest Examiners at the PTO. ”

    Just because those examiners don’t approach my level skill in the art of rejecting claims doesn’t mean they’re lazy MM. It means they are avg.

    “MM, ‘Breathing life and meaning” is in practice interpreted that if one of the clauses refers back to the preamble then it has to be given weight, or at least the part of it that was referred to has to be given weight. ”

    Not necessarily true. And if I ever get a response back arguing against my interpretation of the preamble where they want it considered and I haven’t then my response is simple: move it down into the claim then. I haven’t had any responses to that response other than silence so far.

    “Conclusion: The GPU is clearly be patentable. The software invention should not be patentable, because one reading of claims that cover it could also read (if you are willing to stretch to well beyond reasonable) onto mental steps. ”

    No. Conclusion: The GPU is clearly be patentable. The software invention should not be patentable, depending on the claim, period.

    We’ve been delving into the “reasons” for the last few years. Feel free to browse the archive.

  25. “software isn’t “technology.”

    All of you out there majoring in computer science, software engineering, computer engineering and the like, no need to sweat those difficult courses.

    You can now switch over to a liberal arts major and be able to pursue your software career without any problems.

  26. “Does this conclusion make one bit of sense, when the goal is promoting the progress of technology?”

    That’s the whole point: software isn’t “technology.” It’s a set of a instructions for a computer.

    And the only incentive Google or any other company needs to encourage better software for “improving graphic rendering” is public demand, period.

  27. “MM, ‘Breathing life and meaning” is in practice interpreted that if one of the clauses refers back to the preamble then it has to be given weight”

    Does it “have to” be given weight in that case? Or is it merely “a factor” to be considered?

    See Abbot v. Sandoz, above. Much simpler.

  28. (1) I create a software invention that improves the graphics subsystem of an operating system, such that we get graphics rendering improvements — then applications like GoogleEarth or advanced CAD programs are a lot more responsive, movies look better, etc. (See, for example, issued patent no. 7,518,615.)

    (2) I can invent a better GPU and use it w/ a computer (as an aside, this may require modifications to the operating system and probably its graphics subsystem) — then applications like GoogleEarth or advanced CAD programs are a lot more responsive, movies look better, etc.

    Conclusion: The GPU is clearly be patentable. The software invention should not be patentable, because one reading of claims that cover it could also read (if you are willing to stretch to well beyond reasonable) onto mental steps.

    Does this conclusion make one bit of sense, when the goal is promoting the progress of technology? No, it doesn’t.

  29. MM, ‘Breathing life and meaning” is in practice interpreted that if one of the clauses refers back to the preamble then it has to be given weight, or at least the part of it that was referred to has to be given weight. But then, surely you knew that?

  30. Malcolm, I think that the SupCt will overturn the Bilski “machine or transformation” test. They don’t like tests, see KSR.

  31. Abbott v. Sandoz (2009)

    “More recently, the Supreme Court has reiterated the broad principle that “[e]ach element contained in a patent claim is deemed material to defining the scope of the patented invention.” Warner-Jenkinson, 520 U.S. at 19. Although Warner-Jenkinson specifically addressed the doctrine of equivalents, ******this rule applies to claim construction overall.******”

    It’s got legs. And preamble case law is a mess because “breathing life and meaning” is one of the stoopitest judicial tests ever. End it.

  32. “Will most/many of the terms in the preambles be treated as functional and thereby not accorded any patentable weight, Malcolm?”

    That would be reasonable, unless the Applicant relied on the functional language to snooker a lazy Examiner.

  33. “no PHOSITA would think that it was meant to cover mere mental steps”

    detecting, estimating, recording, generating, defining

    What is wrong with PHOSITAs in this field that prevents them from writing claims that aren’t mere hand-waving crap?

    That’s the question.

    As written, one gets the impression that the entire contribution of these “inventors” is the stunning realization that a probability density function estimation can be used to analyze not only data from this, that, and the other but (OMIGOD!!!!) from vehicles, too. Like, WOW, man!!!! Truly mindblowing. What is the unexpected result?

    The truth is that nobody examined these claims with any rigor. It “looked good” and that was apparently enough.

    ” still haven’t heard how the American Way of Life is threatened by claims to computer-implemented methods that can be stretched, unreasonably, to cover mental steps.”

    You’re beating a strawman. Nobody has claimed that the American Way of Life is threatened. All that is claimed is that software claims and computer-implemented “system” claims like this are poorly drafted and often so poorly drafted that they read on unpatentable mental processes. But it doesn’t matter because the Examiners who deal with these claims are the laziest Examiners at the PTO. Hence the patent bubble. Hence the patenting of computer-implemented crap. Hence the addiction to weak, poorly conceived claim formats. Hence the whining in response to every effort to address the problem.

  34. I have to disagree with you on preambles mm. If anything, it’ll go the other way. The preamble isn’t something special to patent law, it is merely a way of speaking that is a remnant of a time when they were in common usage. And they still have the same meaning as they did back then. None, unless the preceding part of the sentence relies upon the preamble to have meaning.

    Look to the recent USSC decision on the 2nd amendment rights case for a quick refresher in your language history.

    “Examiner under BRI didn’t think it was directed to merely mental steps, ”

    You know this how?

    “6 did come back with a more expansive argument, however it was still flip in as much as it relies for support on what “lots of people intuitively think” and other overly broad characterizations. ”

    The law is flip. That much is apparent on its face. Sorry, but that’s how it is. Welcome to America in 2009.

  35. “Note to self: don’t hire this attorney.”

    Note to Malcolm – I wouldn’t take you as a client, so no worries.

    “It’s called 101.”

    Yeah, I get how the courts are interpreting the statute. My point is that the interpretation is silly if the specification is clearly directed to a computer-implemented method, no PHOSITA would think that it was meant to cover mere mental steps, there is no support in the spec for performing the method by human brain, the Examiner under BRI didn’t think it was directed to merely mental steps, and no mentalists are threatened.

    I still haven’t heard how the American Way of Life is threatened by claims to computer-implemented methods that can be stretched, unreasonably, to cover mental steps. I get that it’s the current jurisprudence – I’m questioning the wisdom thereof, and the stock answer seems to be to label such claims as a farce or crap.

    6 did come back with a more expansive argument, however it was still flip in as much as it relies for support on what “lots of people intuitively think” and other overly broad characterizations.

  36. Will most/many of the terms in the preambles be treated as functional and thereby not accorded any patentable weight, Malcolm?

  37. #3: Methods of counting and manipulating financial figures will be unpatentable.

    #4: Federal Circuit will expressly instruct PTO and courts to consider “real world” art as analogous art for the purpose of tanking computer-implemented methods.

  38. “What are the next (predictable) changes in patent law, Malcolm?”

    For starters, preambles are going to be interpreted as claim limitations, by default. Take it to the bank.

  39. “if the claims had been drafted after Comisky and Bilski I would say that they were poorly drafted.”

    So you a well-drafted claim is one that accords with the law on the day it is drafted, regardless of the fact that patent law is constantly changing (and in a predictable direction)?

    Wow.

  40. “Have a response that’s not flip?”

    Yes, a lot of people intuitively think that if you could do the whole thing in your mind then it is “more obvious” and/or it was just a mental process that someone tacked a machine onto (insignificant post solution activity).

    For all you people in the “Software is the innovation of the future” sunday school class of the Church of Later Day Sunners let me just tell you, what you believe is hogwash. There will always need to be better hardware to support that software. And as the hardware improves, software will trail along behind in due course. Necessarily. With, or without, patents. It is the way it always has been, and always will be. Build the machine, and people will find the ways to use it. What you know as “software” (broadly speaking) is just a person using a machine.

    Do you guys honestly think that, given about 10 trillion dollars worth of fiber optic cable, enough backbone hardware to connect it all, and around 100 million present day pc’s that guys in the 60′s wouldn’t have built the internet in about 8 years, and had one click ordering within the next 5?

    Hardware. Driving your life forwards while you’re distracted with people using it.

  41. “The invention involves the transformation of data representing a real world thing (sensor data representing car positions)”

    The claim makes no mention of “sensor data”. The claim refers only to “detecting” things within view of a sensor.

    This is poor claim drafting. It’s not really defensible. Why not just admit it?

  42. JV: “The invention involves the transformation of data representing a real world thing (sensor data representing car positions) into traffic lane definitions”

    That’s not a patentable transformation. It’s mere number crunching. Anybody can “invent” an “invention” like that. Takes two seconds. It’s crap. It’s worthless. And it’s wrong. Those who disagree are lazy children who don’t want to grow up and write claims and specifications like the rest of us. They want to continue playing in the sandbox of abstract functional result-oriented crap claims.

    “:Maybe the manipulation of the sensor data should have been recited more explicitly”

    LOLOLOLOLOL. More explicitly? It’s not explicit at all: “defining said traffic lanes within said traffic monitoring system from said probability density function estimation.” The word is “from”. In other words: count some stuff, manipulate the numbers, and define something “from” the numbers.

    That’s it. Yes, it’s a pathetic sad claim, but a lot of our colleagues are pathetic. Also lazy. Also confused and frightened.

    “The Future of Innovation Is In Software”

    I have no idea what that is supposed to mean. I do know that most software innovation has little or nothing to do with patents, however. The people here who get bent out of shape over the prospect of diminished patent protection for software do so for one reason: their own selfish interests.

  43. “Something gets under people’s skins though when a claim can be read to encompass mental steps”

    It’s called 101. You can’t patent thoughts.

    Take a deep breath and ask yourself why.

  44. “I don’t see how trolls make a buck off the added claim scope”

    Note to self: don’t hire this attorney.

  45. “Malcolm — you have a number of questions concerning the utility of the patent. You may want to read it.”

    I did read it. In fact, I was the first one here to post it in its entirety.

    The claim is the invention. Deal with it.

  46. >>no PHOSITA reading this claim would think it >>reads on a person watching traffic.

    Without question no PHOSITA would read the claim as reading on a method being performed by an information processor of person in the form of a brain.

  47. Again and again, we see Malcolm et al. wanting to 101 claims like this one using interpretations of claim terms that are unreasonable.

    So let me remind you, once again, that the broadest reasonable interpretation is to be taken during prosecution, and no PHOSITA reading this claim would think it reads on a person watching traffic.

    Before you start screaming “ordinary meaning,” please recall that the “ordinary meaning” of the claim terms is only turned to as extrinsic evidence when there is not sufficient intrinsic evidence to establish the meaning.

    Moreover, we are post issuance in this case, and the claim has a presumption of validity, so the burden is on the defendant to show that a PHOSITA would read the claim on unpatentable subject matter.

  48. Just visiting wrote: “In any case, I don’t think its fair to slam people who drafted State Street compliant claims prior to Comisky and Bilski.”

    I agree

  49. Thank you Night. I have long supposed that the key issue is whether a computer-implemented, new and non-obvious transformation of data, per se, sufficiently described and enabled, would qualify for patent protection. I think that this remains contentious, with or without MM. Am I alone in such thinking? Where does David Kappos stand, for example, on that issue, now that he is serving the American public rather than IBM?

  50. >>The Future of Innovation Is In Software

    The Future, I think you make a good distinction. Computers are information processors. Simple to understand. Transforming information is a transformation. Our brains are information processors. It is very odd that judges are disparaging information processors when the judges hold most dear their ability to process information. The fact that a person’s brain –could theoretically given an infinite amount of time–carry out the same process isn’t really relevant.

    People’s bodies could carry out many physical processes that are claimed for a machines, and yet that doesn’t seem to bother the federal circuit.

    [Image: Judge Moore invalidating a computer program that can emulate Judge Moore. This has no utility, and cannot possibly be eligible for patentability under 101.]

    [MM: To image there is no difference between how well a computer takes raw data and represents and identifies a traffic lane is -- one again--outrageously ignorant. It is always good to read your posts to remind myself just how scarey the world is. Like watching a reality t.v. show on what it would be like to live in a prison, or in Darfur.]

  51. “There is no difference between a traffic lane that has been “defined” by this method and one that hasn’t been “defined”

    The invention involves the transformation of data representing a real world thing (sensor data representing car positions) into traffic lane definitions, and Bilski says that such transforms can satisfy transformation prong. Here “defining” surely means generating a data representation of the traffic lanes.

    Maybe the manipulation of the sensor data should have been recited more explicitly, the claim, but the claim probably isn’t too far away from complying with Bilski.

    In any case, I don’t think its fair to slam people who drafted State Street compliant claims prior to Comisky and Bilski.

  52. From a policy standpoint, I think the law should work this way:

    (0) You write a process claim, where the broadest reasonable reading of the claim in light of the spec is that the claim is performed on a computer/other processing device with a RAM/etc — the claim therefore survives 101.

    (1) We ignore as irrelevant the fact that, if your mis-construe the claims (misread a “processor” to be a human brain and not a silicon-based apparatus, etc.), the process could theoretically be performed via mental steps.

    (2) People who perform the claimed process on a computer/similar device infringe; people who perform the claimed process in their head (or, I guess, on paper) do *not* infringe. This outcome follows from reading the claims as they should be read–they only read on practicing the process using a processor, RAM, etc.

    This feels pretty reasonable to me, as a good balance between protecting. I’m interested to hear others’ thoughts on this (MM excluded, of course.)

  53. “I don’t see how trolls make a buck off the added claim scope, so why is this a hot button topic?”

    Great idea, what do we need these pesky judicial exceptions for anyway. Jurisprudence, shmurisprudence.

  54. ” I don’t see how trolls make a buck off the added claim scope, so why is this a hot button topic?”

    “Because those kinds of claims are a farce. That’s why.”

    Have a response that’s not flip? Self-ass-kicking machines are a farce, too, but the PTO grants patents to them and everyone gets a chuckle. Something gets under people’s skins though when a claim can be read to encompass mental steps, even when the specification doesn’t support the notion that the method is intended for mental operations, and when mentalists clearly are not at risk of being sued. Suddenly, the farce becomes dangerous, too.

  55. “If the claim didn’t say continuous, how is it proper to assume that the claimed PDFE is continuous?”

    They specifically came the the opposite conclusion in the decision if you read it. In other words, they agreed with the wiki.

    ” I don’t see how trolls make a buck off the added claim scope, so why is this a hot button topic?”

    Because those kinds of claims are a farce. That’s why.

    “However, correct me if I’m wrong, but all algorithms (that a computer can be programmed to run) can be performed mentally.”

    Some things would take longer than your lifespan for you to do. Thus, they cannot be done in your mind.

    None the less, just because it can be done in the mind doesn’t mean I’d straight up reject it over 101, unless I was at the end of my rope. I simply cite a piece of art that would lead one of ordinary skill to make the specified thoughts and let 102/103 take care of the rest.

    “And so algorithms by themselves aren’t patentable. ”

    Preachin to the choir sister.

    “But then again, I don’t really know what I’m talking about.”

    No, you pretty much do on that subject.

    “Or maybe the S.Ct. should just throw out Bilski and adopt a technological arts test. Good for software patents, but bad for business methods. ”

    If that should happen, I wouldn’t bet on the former being any better off than the later.

    “SupCt will put Bilski to bed, don’t worry.”

    But what abomination will rise in its stead? Be afraid.

  56. Someone please remind me what the connection is between the fall of Western Civilization and claims to computer-implemented methods that are arguably broad enough to encompass a mental process. Are we concerned that mentalists are in danger of being sued for performing software methods in their heads? I don’t see how trolls make a buck off the added claim scope, so why is this a hot button topic? I think the real concern is that some computer-implemented methods might be both novel and non-obvious and we need tools to kill them, too.

  57. Clearly, many method claims cannot be performed mentally, such as the example Fixed Your Claim provided. However, correct me if I’m wrong, but all algorithms (that a computer can be programmed to run) can be performed mentally. We just use computers since they can for example perform a bubble sort on huge amounts of data in no time at all compared to me taking a month. And so algorithms by themselves aren’t patentable.

    Oftentimes, computer patent applications are possibly nothing more than a claim to an algorithm on a computer with perhaps a field of use limitation, which might not cut it.

    It would be nice to get case law on software patents and not just cases with complete crap business methods. Is a general purpose computer enough? Probably not, so how about if this patent was drafted to have a electronic sensor and microprocessor (or some kind of microprocessor)? Would that be a good enough “machine” (even without a transformation)? If just a general purpose computer, than maybe there needs to be a transformation.

    Lot of questions and I’m guessing there are some BPAI cases on this stuff, but we need more Fed. Cir. cases (and S.Ct. decision on Bilski). At this point, we have MM taking what many call an extreme view. But some on the other side just seem to be in denial and swinging at windmills. I imagine at this point until we get more guidance, one should draft the broad claims that make MM froth at the mouth, as well as narrower ones that have more specific particular machines or transform something. But then again, I don’t really know what I’m talking about.

    Or maybe the S.Ct. should just throw out Bilski and adopt a technological arts test. Good for software patents, but bad for business methods.

  58. “This is the case with thousands of other so-called “inventions” that continue to leak out of this art unit.”

    They’re an issue in all AU’s. I’ve had to put a couple to the sword myself. The application of art is absolutely absurd, and yet, lawyers take the rejection quite seriously when it shows up on their desk. And then, after about an hour or two on the phone discussing the reference, they think they’ve come up with a genius plan to get around the prior art with more of the same.

    Then … Bilski was handed down. (and their genius plan read all over the same piece of art).

  59. Malcolm — you have a number of questions concerning the utility of the patent. You may want to read it.

  60. Another one bites the dust wrote: “‘All of the steps could be carried out mentally.’ And so could every method step in every patent ever issued.”

    Um, no. In your haste to put MM back in his box (a practice that I generally endorse), don’t say ridiculous things. You can imagine doing the steps in any method patent, but you are not actually doing them. Imaging the cleaning of the semiconductor wafer in the claim below won’t actually result in a cleaned wafer. This method cannot be carried out mentally.

    1. A method of cleaning a semiconductor wafer surface previously subjected to a chemical mechanical planarization treatment comprising:

    a) providing a semiconductor wafer surface having a poly(arylene ether) dielectric film coating and residual particles thereon remaining after the chemical mechanical planarization treatment; and

    b) applying mechanical and frictional agitation to the semiconductor wafer surface while concurrently applying to the semiconductor wafer surface an aqueous solution having a pH of greater than 10 for a period of time sufficient to wet and clean the semiconductor wafer surface, said aqueous solution comprising about 1.00 to 10,000 ppm of a surfactant and 0.01 to 5% by weight of a tetra alkyl quarternary ammonium hydroxide compound selected from the group consisting of trimethyl-1-hydroxyethyl ammonium hydroxide, tetramethylammonium hydroxide (TMAH), tetraethylammonium hydroxide, tetrapropylammonium hydroxide, and tetra-butylammonium hydroxide, wherein said aqueous solution cleans the semiconductor wafer surface by removing the residual particles from the semiconductor wafer surface without delaminating the poly(arylene ether) dielectric film coating present on the semiconductor wafer surface.

  61. “Perhaps the argument is that the machine here isn’t enough (sensor and processor), and so something has to be transformed. Diehr transforms uncured rubber into cured rubber. Here, nothing is transformed; traffic is just monitored.”

    Newbie gets it. There is no difference between a traffic lane that has been “defined” by this method and one that hasn’t been “defined”.

    This is the case with thousands of other so-called “inventions” that continue to leak out of this art unit.

    If you want to find a “transformation” in the claim, you could look to the step where vehicle positions are “recorded.” But that is merely a sideshow. What is the utility of “recording” vehicle positions? So that someone can look them up later? Is that a substantial utility for 101 purposes, in 2009? Perhaps it is in computer-implemented fantasy land, where the bar is always lower than one expects.

  62. “I don’t think a person can mentally generate a probability density function estimation”

    Speak for yourself. I’m a savant.

    Is it cheating to use pen and paper? I’m pretty sure any algorithm a computer computes, a person could do it with pen and paper; it would just take a very very long time. So if a person has an incredible mind, they could do it completely mentally.

  63. Assuming this was drafted to require a sensor and processor:

    Seems ridiculous for this not to be patentable if it is drafted to actually be tied to a machine having a sensor (and processor). The algorithms themselves aren’t and shouldn’t be patentable. But when you take those algorithms and apply them to a computer system with a sensor to do something useful (i.e., monitor traffic), it is. In Diehr, algorithms were used in a computer system to cure rubber. Here, algorithms are used in a computer system to monitor traffic.

    Perhaps the argument is that the machine here isn’t enough (sensor and processor), and so something has to be transformed. Diehr transforms uncured rubber into cured rubber. Here, nothing is transformed; traffic is just monitored. So what if there was a traffic monitoring system that monitored traffic going both ways and then based upon the results of algorithms, the system would automatically change the direction of a reversible middle traffic lane to relieve traffic? Here there would be a transformation and this I think would be clearly patentable (and a pretty good idea might I say).

  64. “A literal case of what Judge Posner in *The Problematics of Jurisprudence* identifies as a fundamental constraint on jurisprudence: the need to make discrete cuts in continuous phenomena.”

    Judge Posner wrote “The Problems of Jurisprudence” as well as “The Problematics of Moral and Legal Theory,” but I’m not familiar with the work you cite. I’m looking forward to reading it, however.

  65. I don’t think a person can mentally generate a probability density function estimation, at least insofar as that term was defined in the spec.

  66. “Can a person mentally record?”

    Depends.

    How is “record” defined in the specification?

  67. “”A traffic monitoring system HAVING A SENSOR” seems to be a machine.”

    Yes I suppose it does if your only purpose in life is to defend crappy claims.

    How is “sensor” defined in the specification? How is “system” defined in the specification? I’ll bet they are really really narrowly defined (LOL).

    My eyeball is a sensor. If I’m watching traffic and “defining” traffic lanes, I’m infringing this claim.

    Or anticipating it.

    BWHAHAHAHHHAHAHAHHAAHHA!!!!!!!!

  68. Diehr transformed an article from uncured rubber to cured rubber using a specific rubber curing machine . . . how is a ‘system having a sensor’ even close to that?

  69. Can a person mentally record?

    “A traffic monitoring system HAVING A SENSOR” seems to be a machine.

  70. Malcom might actually have a point. This entire claim could be done mentally. There could be a person standing on the side of the road (person being the sensor), doing all of this (theoretically).

    Though, it seems that it would have been very simple ot draft this claim to clearly meet Bilski. The sensor could be drafted to be tied in a meaningful way (to use MM’s language). Perhaps, a processor could be required to carry out the steps. That way it would be a computer system doing this (making it more like Diamond v. Diehr – computer system for curing rubber or whatnot). I’m new patent drafting though. Something like this could at least be done as an alternative independent claim, just in case.

  71. “All of the steps could be carried out mentally.”

    And so could every method step in every patent ever issued.

    I can imagine my imaginary “particular machine” performing any number of imaginary transformation on any number of imaginary products. I can imagine (i.e., mental steps) genes being spliced. I can imagine some composition heated to a certain temperature. I can imagine some computer analyzing some data and spitting out some result. I can perform all of these steps mentally.

    Not only can I imagine them, some “huge computer brain” can probably model most of these same steps.

    Big f-ing deal.

  72. I’ll say it again: a system is not a particular machine and adding a phrase stating an intended purpose of the system does nothing. Also, the “sensor” in this claim is not “tied” to the method in a meaningful way. In fact, it does nothing whatseover (nice claim drafting). All of the steps could be carried out mentally.

    It goes without saying that “defining” something is not a transformation. The claimed method achieves precisely nothing. Something abstract is subjected to an algorithm and given a name. WOW. Not patentable.

  73. I’m glad that the folks at the Federal Circuit got some one-on-one with Judge Patel. Hopefully they now share more of her extremely healthy skepticism for Beauregard claims.

  74. A literal case of what Judge Posner in *The Problematics of Jurisprudence* identifies as a fundamental constraint on jurisprudence: the need to make discrete cuts in continuous phenomena.

  75. And even if it did sneak past 101, “PDFE” makes it hit its head going through 112 (during examination but not at court), and wavetronic’s own prefered claim construction probably runs the whole thing into KSR.

    These people are lucky the CAFC didn’t throw in some additional analysis of this claim and instead just stuck to the issue of non-infringment.

    They’re also lucky that the court spent more than a few paragraphs explaining all this mess.

  76. Malcolm actually brings up a moderately interesting point. I’ve grown leery of the term “system” – without more it can be a little ambiguous. Whether or not the recited “system” is a particular machine, the “sensor” certainly could be. The drafter could have done a better job tying the sensor into the method claims, but hindsight is 20/20, especially after Bilski.

  77. “nor is a ‘traffic monitoring system’ a particular machine.”

    hahahahahahahahahahahahahahaha

    Funny one Malcolm Mo ron … really funny.

    No wonder everybody (except 6 and Dr. Dre) thinks you are 2 beers short of a six-pack.

  78. 1. In a traffic monitoring system having a sensor, a method for defining traffic lanes, comprising the steps of:
    a. for a selectable plurality of vehicles,
    i. detecting each of said selectable plurality of vehicles present within a field of view of said sensor;
    ii. estimating a position of said each of said selectable plurality of vehicles;
    iii. recording said position of said each of said selectable plurality of vehicles;
    b. generating a probability density function estimation from each of said position of said each of said selectable plurality of vehicles; and
    c. defining said traffic lanes within said traffic monitoring system from said probability density function estimation.
    ———————————–

    Defining something is not a patent-worthy transformation of matter, nor is a “traffic monitoring system” a particular machine.

    This shouldn’t have been let through the Gates of 101.

  79. “A method for defining “something imaginary” comprising the steps of:”

    Interesting claim format.

    That’s one way to get around claiming abstract ideas/imaginary things, claim the defining of an abstract idea/imaginary thing.

  80. “‘a finite data set large enough to approximate’ does not equal ‘requiring a large data set.’”

    Agreed. The size of the data set might well determine the accuracy of the approximation, of course. I was a little disturbed by the apparent suggestion that only a “smooth curve” could be an approximation.

    If I read the case right, the infringement issue appears to turn on the fact that the EIS system had too coarse a resolution to be a probability density function estimate. This has nothing to do with the size of the data set – if the EIS system were configured to run for 10 hours, rather than one minute, its NAMP array would reflect a very large data set, but under the court’s analysis would still not be a PDFE. Did anyone else read it differently?

  81. “a finite data set large enough to approximate” does not equal “requiring a large data set.”

    “Large enough” could, in practice, be quite small.

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