In re Deutsche Bank Trust (Fed. Cir. 2009) (on motion for stay of order)
Island IP and its corporate parent Double Rock sued Deutsche Bank and others for infringement of their patent covering a bank account management technique to improve “deposit sweep” services. Pat. No. 7,509,286. Charles Macedo is the lead counsel for the patentee. Macedo also handles patent prosecution prosecution for the patentee.
During the litigation, the defendants requested a “patent prosecution bar” be placed against Macedo that would exclude him from continued involvement in prosecution of Double Rock’s patents. The defendants argue that Macedo’s access to the defendants' confidential information in the litigation will be used for competitive decisionmaking during prosecution.
The district court (adopting the magistrate decision) rejected the defendants’ argument – finding that a party’s right to choose its own counsel prevails over the potential risk of disclosure. This decision would lift an interim protective order that had prevented Macedo from prosecuting patents.
The Federal Circuit has now granted a stay of the order pending its decision on whether to grant a writ of mandamus. [Link] In its argument, Deutsche Bank cited a half dozen similar cases where district courts limited the litigating attorney from prosecuting the patents at the same time.
"The majority of district courts, including the courts in the Second Circuit, have found that an attorney who has obtained access to an adversary’s confidential information during the course of litigation should not be permitted to make use of that information in prosecuting his own client’s patent applications." (Quote form DB brief)
Notes:
- File Attachment: DB Brief.pdf (47 KB)
- Macedo has been a past contributor to Patently-O and recently published a book “The Corporate Insider’s Guide to US Patent Practice.
- The patentee recently submitted a brief in the Bilski case arguing for broad patent subject matter. [Link]. The patent claims asserted here will pretty clearly face an uphill battle under the Federal Circuit's Bilski analysis. Claim 1 is reproduced below:
1. A method for managing funds of a plurality of respective client accounts associated with a plurality of respective clients participating in a program, comprising:
maintaining a plurality of FDIC-insured and interest-bearing aggregated deposit accounts, each of the aggregated deposit accounts being interest-bearing, with one or more of the aggregated deposit accounts held in each different one of a plurality of financial institutions in the program;
maintaining funds of a plurality of the clients in the plurality of aggregated deposit accounts so that each aggregated deposit account holds funds of a plurality of the clients, with each client account in a subset of the plurality of client accounts having funds in their respective client account over a predetermined amount, with each of the respective client accounts in the subset having funds deposited in a plurality of the aggregated deposit accounts;
maintaining or having maintained or accessing by computer an electronic database, on one or more computer-readable media, comprising a respective balance of funds for each of a plurality of the respective client accounts in the subset and information on funds held by each of the plurality of clients of the subset in the plurality of aggregated deposit accounts;
receiving electronic client transaction data describing debit and/or credit transactions made by a plurality of clients against their respective client accounts;
updating the respective balance of funds in the database associated with each of the respective client accounts in the subset based on one or more debit and/or credit transactions made by the respective client;
determining electronically for each of the plurality of the client accounts in the subset of client accounts a respective interest rate from among a plurality of interest rates in an interest-allocation procedure based at least in part on the updated balance of funds associated with the respective client account in the subset;
calculating electronically a respective interest for a period to be posted to each of a plurality of respective client accounts in the subset, with the respective interest to be posted to a respective client account determined based on the respective interest rate determined for that respective client account in the subset, with the calculating being independent from the respective client account pro rata share in earnings posted to the plurality of the aggregated deposit accounts holding funds of the respective client account;
determining interest earned during the period by each of the plurality of aggregated deposit accounts in the program; and
posting electronically the respective interest calculated for each of the plurality of respective client accounts based on the respective interest rate determined for the respective client account.
Nice things have been mentioned.
Carrol Spncr
attorneys
not trying to pick a fight
seeking enlightenment
failing, obviously
irony? see “ferrous”
Ah Pook,
So your thought of being polite is to be cutesy? That’s your idea of talking to people like grown-ups?
My constructive criticism too much for your fragile ego? Does it hurt that much to be shown your lack of communication skills is the actual issue for your frustration? Grow some.
So typical – you expect that the problem is in someone else, when it is in your presentation. Too bad you picked a fight with a crowd that knows the legal and the technical sides of the issues and you seem to think you know one side and think that that one side is enough. You don’t and it isn’t.
to be polite
autofornicate and expire
if you cannot interpret my enquiry in a sensible manner in the context of this blog then you are either being wilfully obstructive or simply dense
Attempting to engage in meaningful dialog in these threads is the most frustrating thing I have ever engaged in, and lord knows I’ve tried. With due respect to the few that actually do seem to want to have meaningful exchanges.
Peace
(which is good, coming from the Mayan god of death and destruction…)
I’m gonna give up trying to talk to people here like grown-ups and go back to immanentizing the eschaton.
See y’all on the other side
…then, for an advanced lesson (only because the ruling is difficult – even for lawyers), consider that the courts have positively stated that MOT is THE test (Machine or Transformation).
Courts trying to cobble together diverse law holdings into a single brightline rule have told us that a computer implementation is one avenue to meet the legal (rather than technical) requirement. Trying to understand a legal requirement through the lens of a technical filter is doomed to failure.
“determined to miss the point of a particular question”
Ah Pook, to truly try and understand, you will realize that it is because your question is not asked in the proper legal sense.
Start with “a 101 ineligible abstract method”. You will have to define this a bit better. Why is it ineligible? What do you mean by abstract? Like “maths”, what you say may mean so many different things that you are NOT really asking a particular question at all.
Next, there is no such thing as routine programming in a legally deterministic sense – especially linked to your “loaded” generic computer implementation. Ease of programming is not a legal determination – for example see 35 U.S.C. 103(a) – “Patentability shall not be negatived by the manner in which the invention was made.” Further, once a generic computer is programmed, it is no longer a generic computer – see In re Alappat 33 F.3d 1526.
You are trying too hard to understand the legal world from the technical world viewpoint and not realizing that such an attempt is doomed to failure. You don’t have to be a lawyer, but you do have to understand that being technical is just not enough.
I’m going to try one more time, because (happens all too often here) people seem to be determined to miss the point of a particular question and to answer a different one –
IF a novel and non-obvious “abstract method” is 101 ineligible
AND
IF a computer implementation of that method requires nothing more than routine programming
THEN
WHY should a claim to a generic computer implementation of the method be allowable?
I just want to try and understand the reasoning, is all…
That seems a valid point, but the problem with it is that starting from scratch doesn’t appear useful when dealing with judicial exceptions that exclude inventions that would appear to otherwise fit into a statutory category.
Is a method that isn’t patentable under 101 best analyzed as a judicial exception to the statute, or as not even being a process? Should we expect different answers depending on which approach we use?
“Starting with the premise that everything is patentable EXCEPT blah, blah, and starting with the premise that nothing is patentable EXCEPT blah, blah are two fundamentally different thought processes. The first one is wrong. ”
It’s good to try to explain that to people, but if they don’t get it already they’re not likely to anytime soon.
advice for the future,
please amend your argument by sticking a sentence at the beginning stating that patentable subject matter must fall into one of the four categories and THEN is everything under the sun EXCEPT A, B, and C.
appease the pedantic babel boy. even though the justices make note that which category an item falls into is actually a secondary consideration and makes NO difference to your point.
Advice raises a common misconception that goes back to a giant judicial goof that has poisoned 101 analysis for too many years — the “all things under the sun” screw-up, which is Newman’s favorite mantra.
Patentable subject matter is not properly determined by considering everything patentable EXCEPT A, B, and C.
Patentable subject matter is properly determined by considering patentable only subject matter falling within one of the primary or secondary statutory categories: composition, article, machine, process (CAMP), and improvements and new uses thereof.
Starting with the premise that everything is patentable EXCEPT blah, blah, and starting with the premise that nothing is patentable EXCEPT blah, blah are two fundamentally different thought processes. The first one is wrong.
“If it’s non-trivial, the claim should be directed to the ‘clever’ details of the computerisation, and should not just tack generic computer elements onto a bare algorithm.”
You’ve seem to have confused 112 1st paragraph with 112 2nd paragraph. Enablement applies to the specification, not the claims. I don’t need to explain the intricate process to isolate a gene sequence, I just need to claim it being done. The claims don’t need to describe the invention (and all of its “clever” details), the claims just need to distinguish over the applied prior art. –> this is a concept overlooked by many a examiner and practitioner alike.
“Rather, you’re trying to find an excuse to avoid the hard question.”
OK … because the law says so. See In re Bilski.
There are three exceptions to patentable subject matter: laws of nature, natural phenomena, and abstract ideas. We can dispose of the first two immediately. All you are left is the oft-used “abstract idea” to hang your hat on. Once you’ve computerized your process, it is no longer an abstract idea. Oops, that means you are out of exceptions, which means you are left with patentable subject matter. Actually, not a very difficult question to answer if you know the law.
Ah Pook: “If it’s non-trivial, the claim should be directed to the “clever” details of the computerisation”
Are you proposing a “flash of cleverness” test for software claims? If so, I’d like to subscribe to your newsletter.
“By characterizing computerization as “mere,” you have already determined what the answer to your question will be.”
Rather, you’re trying to find an excuse to avoid the hard question.
Some things might be difficult to computerise – like many types of pattern recognition that humans do without thinking. Some things are completely trivial to computerise.
By “mere computerisation” I mean straightforward computer implementation. I don’t mean that all computerisation of all processes is trivial. If it’s non-trivial, the claim should be directed to the “clever” details of the computerisation, and should not just tack generic computer elements onto a bare algorithm.
Malcolm,
Best fix is for you to simply not post.
– Please assist me in this endeavor.
Second best fix is for you to actually supply answers with substance when called upon and not run away.
– Please assist me in this endeavor.
Third best fix is for you to not construct such lame strawmen to begin with.
– Please assist me in this endeavor.
Shall we continue?
Oh, I bet we can “fix” quite a bit there Malcolm …
Okay then, go ahead.
“There was nothing to fix,”
LOLOLOLOLOLOL
wait,
LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL.
Oh, I bet we can “fix” quite a bit there Malcolm …
Why bother with any attempt at a real answer Malcolm? Onwards to more strawmen on this glorious Trainwreck.
“Microsoft Word has probably in the order of 10 million lines of code in it — and what is Microsoft Word? To some it is nothing but a glorified typewrier.”
And to others, judging from what I’ve read on Patently-O recently, it is nothing but a glorified (Turing-complete) loom, with a lot of thread.
Returning nearer to the claim at issue in the above-mentioned case, would a claim to “A method for managing a fund” be eligible for patenting if the method consisted solely of a step of “maintaining funds of at least twenty customers, wherein at least ten customer’s funds are accessible by a password, wherein said password is the name of a dog of each of said customers spelled backwards”?
Patent eligible under 101? Why or why not? State all the reasons.
MMooney says:
“one could argue that it is with a straight face.”
That’s a fairly low standard of review. The motivation to accept such an argument seems to be to save your definition.
Your definition seems somewhat better than “I know a business method when I see it.” Your definition excludes some things we’d agree ought to be exlcuded, and includes others that we’d agree are business methods, but your definition appears to me to be overinclusive. It does do a good job of defining “mouth breather” A mouth breather is someone who has a problem with your definition.
“it helps to present the actual claim”
I don’t believe that level of detail is necessary for the network method hypo. I’ll attempt to supply a claim if you can postulate a credible “creation or material transformation of a tangible commodity for sale” that might reasonably apply to a process for delivering data over a network.
Besides, your definition relies on identifying “the primary purpose” and establishing “the creation or material transformation of a tangible commodity for sale.” You don’t the need to examine claims in detail to establish either one of those things.
the reference wasn’t to case law – it was to oral arguments
*yawn* Keep digging, Troll.
“My question is: by what rationale does mere computerisation confer patentability on an otherwise ineligible method?”
You aren’t asking for an answer … you are begging the question based upon the assumption that “mere computerisation” does nothing.
By characterizing computerization as “mere,” you have already determined what the answer to your question will be.
Microsoft Word has probably in the order of 10 million lines of code in it — and what is Microsoft Word? To some it is nothing but a glorified typewrier. It would appear to me that the “computerisation” of a typewriter function that takes millions of lines of code is not “mere” by any stretch of the imagination.
Regardless, performing a method with a machine (e.g., a computer) is typically very different than performing a method by hand or in the mind.
“You are making inferences from a question from some Justice(s)
No, I’m reading the case law like an attorney reads case law rather than reading it like a fundamentalist reads his holy book.”
Except Inspector Malcolm, the reference wasn’t to case law – it was to oral arguments (not quite case law yet, my friend).
Do’h!
You were challenged to actually fix the claims so that they could be inspected and you failed to do so.
There was nothing to fix, Troll.
Malcolm at 10:40 AM stated,
“…I’ve demonstrated by exploding the heads of the Diehrbot zombies with examples, e.g., the RINGMASTER claim.”
No such thing ever happened. You were challenged to actually fix the claims so that they could be inspected and you failed to do so. Several people pointed this out to you. You took issue with what you thought was my sticking up for another, when you failed to see (and still fail to see) that I am merely pointing out your inadequacy at legal formalism. Your strawman argument failed. Is it ironic that the person who is quickest to challenge others and accuse them of posting strawmen is the one that actually does it the most? (that’s a rhetorical question by the way)
Malcolm at 10:52 Am stated,
“Is it materially transformed by stacking in a non-random way? I think one could argue that it is with a straight face.”
– OK, Malcolm – instead of simply asking someone else to step up the game, give it a shot and step up to the plate yourself. Not. Going. To. Happen. (btw – save that straight-faced argument for adaptation to ANY application to pass the MOT test, as mere arrangement to pass the transformation prong is going to be a keeper)
– Talk about mouthbreather…
You are making inferences from a question from some Justice(s)
No, I’m reading the case law like an attorney reads case law rather than reading it like a fundamentalist reads his holy book.
OK, I know all about 103 as opposed to 101, claim dissection etc., and I’m not talking about mere (obvious) computerisation of a KNOWN method. I’m talking about mere computerisation of a novel/non-obvious method that, absent mere computerisation, would fail 101.
I only refer to EPO practice by way of comparison. The claim in issue here would fail at the EPO with or without mere computerisation.
My question is: by what rationale does mere computerisation confer patentability on an otherwise ineligible method?
(NOTE: in the EPO, mere computerisation can be said to confer eligibility, but does not confer patentability, because claim dissection is applied to exclude ineligible subject matter from the patentability analysis).
“Except sometimes it will be appropriate, as the Supremes made abundantly clear in their Bilski oral argument and as I’ve demonstrated by exploding the heads of the Diehrbot zombies with examples, e.g., the RINGMASTER claim.”
Like to read a lot out of nothing, do you? Good for you. I’m talking about Supreme Court precedent. You are making inferences from a question from some Justice(s). Until SCOTUS holds otherwise, Diehr is still the law of the land.
Ah Pook: “The claim as written would pass EP-101, but would fail EP-103 because the only “technical” (you-know-it-when-you-see-it) elements are completely generic and the non-technical numbers and stuff can’t contribute an inventive step.”
I guess you are addressing an EPO standard, but as far as good ole’ USA obviousness goes, your statement sounds like something a typically ill-trained US examiner would say in a 103 rejection. Whether or not elements are known is not determinative of obviousness.
It’s the claim taken as a whole. The courts have repeatedly affirmed that virtually all claims are combinations of steps or elements that are known. There is one recent and fascinating USSCt case that makes this point: KSR v. Teleflex.
JV: The whole point to the plank stacking invention is to increase profitabiliy of a business without doing any “creation or material transformation of a tangible commodity”
Is a randomly stacked pile of planks a tangible commodity? Is it materially transformed by stacking in a non-random way? I think one could argue that it is with a straight face.
Seriously, JV: step up the game.
As another example, a method for operating a network may have the goal of optimizing revenue or minimizing the expense of operating the network while a predetermined quality of service. Such a method would seem to fit your definition of business method
No, but it would fit the mouthbreather definition of business method I referred to above as the reason for proposing my definition. Can you try to focus? If you want to apply the definition to a claim, it helps to present the actual claim and not an abstract description of a claim “that could be written.”
“Except sometimes it will be appropriate, as the Supremes made abundantly clear in their Bilski oral argument …”
OK. But where exactly in the hierarchy of legal authority do comments made during oral arguments fall?
Advice for the Furnace: Because all words of a claim are important. See, e.g., Diamond v. Diehr, 450 U.S. at 188-89, 209 USPQ at 9 (“In determining the eligibility of respondents’ claimed process for patent protection under 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.
Except sometimes it will be appropriate, as the Supremes made abundantly clear in their Bilski oral argument and as I’ve demonstrated by exploding the heads of the Diehrbot zombies with examples, e.g., the RINGMASTER claim.
RedMonkey: This doesn’t work. It won’t cover a claim drawn to a method of gene
Hey wankers: the point of defining a “business method” was not to capture any crap invention under the sun. There are plenty of other theories for invalidating crap claim like a “method of assigning a password” under 101.
“Working this method without computers would involve record keeping – ledgers and paper files – as well as calculations. Why should using computers in a completely obvious way to do the same things make a difference to 101-eligibility?”
Why do people keep confusing obviousness (i.e., “completely obvious way”), which is covered under 35 USC 103, with statutory subject matter under 35 USC 101.
If the method was completely anticipated or obvious in view of old practices, then the same method, if performed with a computer, would still be obvious.
Now what some people don’t get (and I don’t necessarily mean this writer) is that a method of doing something on paper (or in your head) might be performed entirely different when that something is done in a computer. A finding of anticipation (or obviousness) does not rest in the end result. Instead, anticipation (or obviousness) rests upon the specific claimed steps being performed to achieve the end result. The fact that two processes achieve the same end result is not dispositive.
“can anyone provide a convincing reason why their inclusion should make any difference at all?”
Because all words of a claim are important. See, e.g., Diamond v. Diehr, 450 U.S. at 188-89, 209 USPQ at 9 (“In determining the eligibility of respondents’ claimed process for patent protection under 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.”).
It would seem to me that unless the Federal Circuit is prepared to make a per se rule that a “patent prosecution bar” is required in every case where confidential information is to be disclosed, the writ of mandamus will be denied. Such a rule would seem to be overbroad and unnecessary given that Deutsche Bank was unable to convince both the magistrate judge and district judge that any of their information could be used for competitive decisionmaking. There does not appear to be any real argument that the district court abused its discretion or was clearly erroneous in not finding the information in this case could provide a competitive advantage. Deutsche Bank should simply have to live with the unfavorable discovery order since they couldn’t persuade the magistrate and district judges.
“But more to your original point, an argument for explicitly reciting technology in a claim is to preclude infringement by a mere mental act of a natural person.”
Working this method without computers would involve record keeping – ledgers and paper files – as well as calculations. Why should using computers in a completely obvious way to do the same things make a difference to 101-eligibility?
MM asks
“Why did you choose to mention the term “efficiently” in your hypothetical? Why not simply “a method of stacking planks”
I think my hypo fits your definition of business method. Obviously I mentioned the efficiently and economically because even if they aren’t explicitly in the preamble, it is fairly obvious that those concepts are the goals of the invention.
The whole point to the plank stacking invention is to increase profitabiliy of a business without doing any “creation or material transformation of a tangible commodity” Planks are simply arranged and possibly retrieved in novel/non-obvious ways to the advantage of the producer, but customers get the same old planks.
While I agree that calling all process business methods is undoubtably silly, your definition does not seem to work very well. Apparently you believe that plank stacking processes are not business methods, but your definition does not seem helpful in reaching that result.
As another example, a method for operating a network may have the goal of optimizing revenue or minimizing the expense of operating the network while a predetermined quality of service. Such a method would seem to fit your definition of business method, but certainly claims to the method of operating the network could be written that don’t mention profitability or call attention to the fact that the predetermine QoS is from a contractural agreement. The method might not optimize any non financially based goal and in fact might significantly compromise network performance. The method might require novel/non-obvious hardware, processes, software etc.
Nevertheless, it should be pretty clear that the method does not involve “creation or material transformation of a tangible commodity for sale” and that the whole point of the invention is to save money for the network operator while miniminizing the risk of getting sued.
I believe your definition would put my hypothetical network operation method squarely in the business method bin.
The claim as written would pass EP-101, but would fail EP-103 because the only “technical” (you-know-it-when-you-see-it) elements are completely generic and the non-technical numbers and stuff can’t contribute an inventive step.
“Since most data is now transmitted PHOTONICALLY (e.g. fiber optics), I wonder if that creates a problem for this claim.
”
Maybe not. At some point the photons reach the target computer, and when they do, corresponding electrons are used. Even the step of “receiving ELECTRONIC client transaction data” is met if you regard the receiving agent as the semiconductor memory.
Malcolm
“How about: “achieve a pecuniary gain or avoid a pecuniary penalty”?”
This doesn’t work. It won’t cover a claim drawn to a method of generating passwords for several web sites, each having a name, by: (1) thinking of a secret function that takes, as an argument, the name of a web site; and (2) defining a password for each website based on the respective outputs of the function when provided with corresponding names of the web site.
This claim doesn’t affect money, but it makes it easier to remember your passwords.
Matt,
Yes, I was looking at the patent family. I did a quick search on “double rock” and “island IP” and didn’t find anything at the EPO.
You are right, though, it’s not totally inconceivable to get a business method patent in the EU. There are some interesting “pay as you drive” insurance patents for example, that have issued. These have inventive steps embodied in the enabling technology (car monitors).
As my London agent put it, if you can delete all references to a financial concept from an EU application and still have an invention, then you have a shot. We focus on scaling issues (OK, now how do you do with for a million people all accessing your system at the same time) and security issues (let’s talk encription). These tend to require physical inventions for enablement.
IANYL:
Yes, most protective orders do not allow the plaintiff (or any of its employees or agents except outside counsel) to see the opposing party’s confidential information. That’s why confidential technical documents are generally produced with the following stamp: “HIGHLY CONFIDENTIAL — OUTSIDE COUNSEL EYES ONLY”.
The issue here is not whether Macedo can continue to represent his client in the litigation. Rather, the question is whether he can continue to represent it in prosecution matters (i.e., after having armed himself with Deutsche Bank’s proprietary information).
Besides, there is not a “potential risk of disclosure.” There will be disclosure! Macedo will have full and free access to Deutsche Bank’s confidential information, and can cull through it to his heart’s desire. Is he supposed to recall that information only when he has his litigation hat on, and then forget it when he puts his prosecution hat on.
Mark, I wonder what you mean by “corresponding”. Would that be a patent “family”? What if they filed PCT a year and a day after the US prio date and made no Paris priority claim. Would that be a “corresponding” filing?
As to Euro 101, I had in mind that at the EPO a claim to nothing more than a “method for doing business” is statute-barred, unsearchable, and therefore unexaminable. But recite it as a method of running a computer, and maybe then getting something up and running is not totally inconceivable.
I have to admit though, MOT looks (to my uneducated eye) the more plausible explanation.
“can anyone provide a convincing reason why their inclusion should make any difference at all?”
Good question – MOT anyone?
This is an interesting topic for the CAFC to tackle, and one that is long overdue. However, I have a simpler solution to this issue that I propose here.
Ordinary rules of professional responsibility already provide a framework that informs the likelihood of “inadvertent disclosure.” Attorneys should apply these rules and govern themselves in these matters (just as they do in all other aspects of professional responsibility) rather than taking up the court’s time with the matter.
Max,
There doesn’t appear to be any corresponding EU applications.
Besides, wouldn’t the EPO examine the claim like this?
1. A method for [DOING SOMETHING] comprising:
maintaining a plurality of [NUMBERS];
maintaining [MORE NUMBERS];
maintaining or having maintained or accessing by computer a[n] electronic database, on one or more computer-readable media, comprising [YET MORE NUMBERS];
receiving electronic data describing [STUFF];
updating the database associated with [STUFF];
determining electronically for each of the plurality of [STUFF] in the subset of [MORE STUFF] a respective [NUMBER] from among a plurality [NUMBERS] in [A]procedure based at least in part on [SOME OTHER NUMBERS] associated with the respective [STUFF];
calculating electronically [YET ANOTHER NUMBER] to be posted to each of a plurality of [SAID STUFF], with the respective [NUMBERS] to be posted to a respective [PLACE] based on the respective [NUMBERS] determined for that respective [STUFF] in the subset, with the calculating being independent from [STILL MORE NUMBERS];
determining [A COUPLE OF MORE NUMBERS]; and
posting electronically [SAID NUMBERS].
Ah Pook, could it be that this claim is written with Art 52 of the EPC in view (Europe’s 101), prior to an assault on the Deutsche Bank on its home turf?
Ah Pook,
Thanks for emphasizing the word ELECTRONICIALLY. Since most data is now transmitted PHOTONICALLY (e.g. fiber optics), I wonder if that creates a problem for this claim.
But more to your original point, an argument for explicitly reciting technology in a claim is to preclude infringement by a mere mental act of a natural person.
It also makes the examination process more tractable.
Here’s the claim with all of the “computer”/”electronic” bits in caps. Notice how deleting those words leaves a perfectly intelligible “method”.
Assuming that the claim without the capitalised words would have been refused by the USPTO under 101, can anyone provide a convincing reason why their inclusion should make any difference at all?
1. A method for managing funds of a plurality of respective client accounts associated with a plurality of respective clients participating in a program, comprising:
maintaining a plurality of FDIC-insured and interest-bearing aggregated deposit accounts, each of the aggregated deposit accounts being interest-bearing, with one or more of the aggregated deposit accounts held in each different one of a plurality of financial institutions in the program;
maintaining funds of a plurality of the clients in the plurality of aggregated deposit accounts so that each aggregated deposit account holds funds of a plurality of the clients, with each client account in a subset of the plurality of client accounts having funds in their respective client account over a predetermined amount, with each of the respective client accounts in the subset having funds deposited in a plurality of the aggregated deposit accounts;
maintaining or having maintained OR ACCESSING BY COMPUTER a[n] ELECTRONIC database, ON ONE OR MORE COMPUTER-READABLE MEDIA, comprising a respective balance of funds for each of a plurality of the respective client accounts in the subset and information on funds held by each of the plurality of clients of the subset in the plurality of aggregated deposit accounts;
receiving ELECTRONIC client transaction data describing debit and/or credit transactions made by a plurality of clients against their respective client accounts;
updating the respective balance of funds in the database associated with each of the respective client accounts in the subset based on one or more debit and/or credit transactions made by the respective client;
determining ELECTRONICALLY for each of the plurality of the client accounts in the subset of client accounts a respective interest rate from among a plurality of interest rates in an interest-allocation procedure based at least in part on the updated balance of funds associated with the respective client account in the subset;
calculating ELECTRONICALLY a respective interest for a period to be posted to each of a plurality of respective client accounts in the subset, with the respective interest to be posted to a respective client account determined based on the respective interest rate determined for that respective client account in the subset, with the calculating being independent from the respective client account pro rata share in earnings posted to the plurality of the aggregated deposit accounts holding funds of the respective client account;
determining interest earned during the period by each of the plurality of aggregated deposit accounts in the program; and
posting ELECTRONICALLY the respective interest calculated for each of the plurality of respective client accounts based on the respective interest rate determined for the respective client account.
Nice claim, by the way.
There is, in fact, a continution of this patent pending.
Explain it to me then. Does the order restrict access to the information to only the attorney, or does the plainiff get to see it? Does the order prevent the plaintiff from prosecuting their own patents pro se? Does the order prevent that pro se applicant from using that knowledge when drafting or amending claims? Do you see where I’m going with this?
In litigation, protective orders are used to restrict what opposing parties can do with confidential information obtained in discovery. It is very common for there to be multiple tiers of confidential information (e.g., confidential, highly confidential, etc.) It is also very common for the highest tiers of confidential information to be restricted to the “attorneys’ eyes only.” So, to answer your question, yes, it is very common for protective orders to restrict information to the attorney only.
I haven’t read the motion but I suspect that the defendants want to prevent the attorney from prosecuting patents with the knowledge gained from “attorneys’ eyes only” information.
Malcolm–
The waiver of privilege issue also arises in the situation where litigation counsel are/were members of the same firm as prosecution counsel. I have seen this once, but I know that it happens not infrequently.
Of course, questions concerning scope of privilege, waiver, and representation always arise. I have seen prosecution attorneys deposed when the litigating attorney was a partner at the same firm.
Does the order restrict access to the information to only the attorney, or does the plainiff get to see it? Does the order prevent the plaintiff from prosecuting their own patents pro se? Does the order prevent that pro se applicant from using that knowledge when drafting or amending claims? Do you see where I’m going with this
I do see. And I think the answer is that access to confidential information can be restricted in any number of ways, provided the restrictions are consistent with the procedural rules and the Constitution. Obviously, an order that allows one to see information but not “use” it or “communicate it” may be difficult to enforce (which is why people tend to keep certain information confidential, except of course when they file a patent on a method of thinking about a lab result).
Re: “I don’t understand the point about it being unfair for the attorney to prosecute the plainiff’s patents due to receiving confidential information about the defendant’s products or whatever.”
Among other reasons, it could give the attorney using the confidential information an unfair advantage to draft very narrow new or amended claims in pending applications that will still cover all or part of defendants products (but are harder to invalidate) by using the discovery-forced disclosures of confidential product information to draft those claims.
{This is not to suggest endorsement of protective orders to de facto conceal and surpress material PUBLIC PRIOR ART [e.g., patent numbers] [or evidence of inequitable conduct] from other parties that are or may be theatened by the same or a related patent.}
******What am I missing?
The concept of a protective order.*****
Explain it to me then. Does the order restrict access to the information to only the attorney, or does the plainiff get to see it? Does the order prevent the plaintiff from prosecuting their own patents pro se? Does the order prevent that pro se applicant from using that knowledge when drafting or amending claims? Do you see where I’m going with this?
What am I missing?
The concept of a protective order.
Is there insurance for this kind of professional risk?
Balancing a boat. How is the boat not the same boat?
I don’t understand the point about it being unfair for the attorney to prosecute the plainiff’s patents due to receiving confidential information about the defendant’s products or whatever. Isn’t the plaintiff permitted to have access to that same confidential information? Isn’t the plaitiff’s attorney permitted to know whatever their client knows? Or would the plaintiff be prevented form telling their other IP prosecutors what they learned, or use that knowledge in directing their other prosecutors what to do? What am I missing?
stacking machine
Patentable.
So is a method of efficienly stacking planks in a warehouse a business method
I doubt it, according to my definition above. Why did you choose to mention the term “efficiently” in your hypothetical? Why not simply “a method of stacking planks”?
Red Monkey: If anything, one avoids taxes by making one’s profit look smaller to avoid paying taxes on it.
How about: “achieve a pecuniary gain or avoid a pecuniary penalty”?
So is a method of efficienly stacking planks in a warehouse a business method? What if I stack the planks economically? What if I leave the efficiency/economics out of the preamble and merely discuss those concepts in the disclosure? Does it matter if my method requires a stacking machine?
Malcolm
I think you need to modify your business method definition because it doesn’t include methods for engaging in predatory pricing.
It might help to come up with a definition that doesn’t require determination of intent. For instance, a method of avoiding taxes does not really have, as its purpose, increasing profit. If anything, one avoids taxes by making one’s profit look smaller to avoid paying taxes on it.
A method for managing funds, comprising: maintaining, maintaining, maintaining, receiving, updating, maintaining, determining, calculating and …. electronically posting a number!!!!
Very impressive. And it uses an electronic database!!!!!! Wow! Very high-tech.
Other than providing a way of life for trolls, what is the social benefit achieved by granting patents on business method crapola? By the way, here’s my proposed definition of “business method” for those inclined to engage in mouth-breather arguments (e.g., “every method is a business method”):
“A method whose primary purpose is to achieve a profit or an increase in profitability, wherein the increase is achieved substantially without the creation or material transformation of a tangible commodity for sale.”
And of course it’s subject to revision. Feel free to make suggestions.
The patentee recently submitted a brief in the Bilski case arguing for broad patent subject matter.
No suprise there. It’s like a gorilla in a zoo submitting a brief arguing for a shorter fence.
Returning to the subject of using the same counsel for litigation and prosecution, isn’t the potential waiver of privilege issue the usual reason that this set-up is avoided? e.g., what happens if discovery suggests that there was inequitable conduct on the litigator/prosecutor’s part? Trial counsel takes the stand?
…cue Mooney in 3, 2, 1 …
Hi Babel,
I whole heartedly agree with your embarrassing moment comment, but not only — every patent lawyer’s darkest fear – also, every inventor’s fear.
I think Macedo goose is cooked.
This business method claim repeatedly has “electronic” or “electronicly” in its method steps, unlike the In re Bilski claims, and it will be interesting to see if that makes any difference in the long run? [I doubt it, but I also doubt the Supremes will really clairify that specific issue. Perhaps the Federal Circuit will, some time thereafter.]
Keeping a continuation or divisional pending while meanwhile suing on the “parent” patent [to try to get claims that will still be infringed but will cite and distinguish over all the prior art the defendant comes up with] has been a standard tactic with some attorneys for years. Could this case put a crimp in that tactic?
This post represent every patent lawyer’s darkest fear: writing an embarrassingly mindless claim while in a cretin funk, having it allowed, having it challenged in court, and having it published on Patently O for all the world to see just as Patently O gets an ABA Pulitzer for best blog.
A litigant does not have absolute choice of counsel, as there are all sorts of things that can prevent an attorney from legally and ethically representing someone, such as conflicts.
This is just another thing that the attorney should have taken into account when deciding whether or not to engage in the litigation representation.
IMHO, the attorney should have either not accepted the case, or voluntarily ceased prosecution before taking on the litigation.
In my prosecution practice, I have turned away potential clients because I was working on prosecuting something in the same area at the time of initial contact. It’s the best way to keep your nose clean, and to REALLY protect not only your own interests, but those of your client as well.
Finally, lawyers are disqualified or recused for many reasons. This situation should be one such reason, if proved with sufficient specificity.
Isn’t the real question what happens if defendants’ confidential information is material to the prosecution of one of the plaintiff’s pending apps?
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