Recordation of Assignment Creates Rebuttable Presumption that Assignment is Valid, etc.

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SIRF Technology v. ITC and Broadcom (Fed. Cir. 2010)

In a 2009 decision, the International Trade Commission (ITC) ruled that SIRF and four others were violating Section 337 of the US Tariff Act of 1930 by importing and selling products with GPS devices that infringe patents owned by Broadcom (via a 2007 acquisition of Global Locate). See U.S. Patent Nos. 6,417,801, 6,606,346, 6,651,000, 6,704,651, 6,937,187, and 7,158,080.  The patents claim various forms of “assisted-GPS” that improve GPS signal reliability and location calculation speed.

Patent Ownership and Standing: One of the inventors conceived of the invention while an employee of Magellan (another GPS company) and while under an employee agreement that operated as an effective assignment of “all inventions . . . which are related to or useful in the business of the Employer . . . and which were . . . conceived . . . during the period of the Employee’s employment, whether or not in the course of the Employee’s employment.”  Magellan was aware of the inventions, but never pursued ownership rights.  Here, in an effort to disrupt Broadcom’s standing to sue, the defendants asserted that Magellan should be considered a co-owner of the patent rights.

Many patent assignment issues are determined under the appropriate state law. However, federal patent law is used to determine whether an assignment is an automatic assignment or only an agreement to later assign rights.  Applying federal law, the Federal Circuit interpreted this agreement as an automatic assignment that effectively assigns rights to inventions automatically upon their invention. 

Also as a matter of federal patent law, the court held that recordation of an assignment creates a rebuttable presumption that the assignment is valid.  Here, the appellate panel agreed that the defendants had not provided sufficient evidence to rebut that presumption.  In particular, the defendants had failed to prove that the prior-employer Magellan was the true owner. 

“If Magellan and Abraham recognized that Global Locate was the owner of the trade secret rights to the invention, it logically follows that Magellan and Abraham did not think that Magellan was the owner of similar rights that eventually became the subject of the ’346 patent.”

Patentable Subject Matter: The asserted claims included several methods of calculating position. On appeal, the Federal Circuit confirmed that those methods fit within the machine-or-transformation test of Bilski and therefore are patentable. In Bilski, the court held that the a patentable method claim must be either (a) implemented using particular machine or (b) transform an article from one state to another.  In addition, the machine-or-transformation must create a “meaningful limit on the scope of the claims.”  Here, the court held that the methods as claimed “could not be performed without the use of a GPS receiver.”  And that limits were meaningful because the GPS receiver is not simply “an obvious mechanism for permitting a solution to be achieved more quickly.” 

We also think that the presence of the GPS receiver in the claims places a meaningful limit on the scope of the claims. In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations. We are not dealing with a situation in which there is a method that can be performed without a machine. Contrary to appellants’ contention, there is no evidence here that the calculations here can be performed entirely in the human mind. Here, as described, the use of a GPS receiver is essential to the operation of the claimed methods.

Comment: I certainly believe that the patents are directed toward the type of subject matter that should be patentable. However, the Federal Circuit’s analysis here is not convincing. Rather, the fact that “a GPS receiver is essential to the operation of the claimed methods” indicates that inclusion of the “GPS receiver” limitation is not meaningful. 

The question of whether the inventions were “related to or useful in the business” of Magellan was a matter of California state law.

Divided Infringement: An portion of the decision that will be interesting for patent prosecutors is directed toward joint infringement. Here, the court upheld the patentee’s efforts to direct claims toward certain particular actors and therefore avoid the Muniauction problem. Here, the steps of “communicating” and “transmitting” to a user-device were interpreted as steps that did not require end-user action even though the actual process involves end-user devices downloading the transmitted data.  Thus, despite what your speech teachers taught, communication can be one-way.

88 thoughts on “Recordation of Assignment Creates Rebuttable Presumption that Assignment is Valid, etc.

  1. It’s a tumaa.

    SE – What reference to Scotus do you think that I think is correct or not?

    The Complexity issue is hardly a flame bait – th eclear evidenc is in your post at 3:07 PM: “we are not yet well equipped to examine complex method inventions…” and “A way to avoid the difficult novelty question is to exclude an entire swath of claims under 101. This approach is not unreasonable for practicality’s sake..”

    You tell me why “practicality” should over rule actual inventions based on mere complexity?

  2. Oh, I see you heard the bell too ping. While I hurry to the big wooden desk at the front of the class, you can hurry and squeeze your F.A. into one of those little chairs for some old fashioned schoolin’…

  3. ping,

    “Besides, making things “easier” isn’t a part of the law, now is it?”

    The law is what it is as interpreted by the SCOTUS. If the SCOTUS says that red is green then that’s the law, regardless of whether you like it or not and whether in your opinion it is correct or not. The SCOTUS is right because its decision is final, as in unappealable. Your “only” legal recourse is to amend the law, including the Constitution.

    “Why do you want to not allow patents to complex inventions?”

    I don’t believe I ever said that I want to disallow patents to complex inventions. If you maintain that I do, please cite clear evidence in support of your contention or cease to flame bait.

  4. A way to avoid the difficult novelty question is to exclude an entire swath of claims under 101.

    Only if you want to bastardize the law.

    Besides, making things “easier” isn’t a part of the law, now is it?

    There is an assumed underlying question: “Why do you want to not allow patents to complex inventions?”

  5. ping,

    “The boring RWA is correct here (damm, I guess that makes me boring too). The boundary of patent eligibility has nothing to do with novelty.”

    One would think so. However, what prior art would one have to cite for complex mental processes?

    Remember, the U.S. has a first to invent, not a first to file patent system.

    A way to avoid the difficult novelty question is to exclude an entire swath of claims under 101. This approach is not unreasonable for practicality’s sake. Nonetheless, we are still struggling to define where the line should lie. I agree that the more intellectually satisfying approach would be to evaluate novelty alone and use 101 or some other provision akin to 42 U.S.C. 2181 only as policy tools. Nevertheless, in practice, we are not yet well equipped to examine complex method inventions such as software, for example, in a non-superficial manner. We may get there, but it will certainly take a while.

  6. its importance will likely be revived

    D – Why do you think that (and not that it will be so quaranteed to be useless)?

    If revived, how can it be squared with the rest of the patent jurisprudence?

  7. Broje – Good question. I think that Gottschalk v. Benson is overbroad in its language. The case has been largely ignored in practice since Diehr and Chakrabarty, but its importance will likely be revived in the Supreme Court’s Bilksi analysis.

  8. @Dennis

    Please allow me to ask a question. You state that you think the subject matter ought to be patentable. But you seem to indicate that the limitation to a GPS causes a preemption problem ala Benson. Can you please give an examnple of a limitation that would cause the method claim to meet the requirements under 101?

  9. SE,

    The boring RWA is correct here (damm, I guess that makes me boring too). The boundary of patent eligibility has nothing to do with novelty.

    Novelty as a test for patentability is old hat and the “done on a computer strawman is so old that I think even good ol’ Malcolm has retired that line.

  10. why isn’t a brain that happened to have been built by a genome also a “machine”?

    Because that’s not how the term “machine” would be understood by a person skilled in the art.

    Even though a brain that is good at information processing might quickly find itself with an isolated genome. Maybe that’s the connection you’re looking for?

  11. MD,

    I think you are on the right track. On the one hand we don’t want to prohibit mental processes in the human brain, on the other hand we don’t want to allow new inventions where the only point of novelty is that they are done by a computer. Compounding the problem is that when a patent issues, invalidating it quickly becomes very expensive.

  12. Divided infringement and Muniauction: Where A transmits to B who is set up to transmit to C, A, by “transmitting” signal directed to B, IS (as the court construes it) “transmitting” to C. Thus, A is the sole actor required to perform the recited claim steps, and there is no issue of divided infringement. The court’s analysis is couched, at least, as pure claim construction. At first glance I see nothing here that changes the law re “divided” or “joint” infringement, though perhaps it reflects a willingness to bias claim construction to limit excessive claim parsing engaged in to establish a defense of divided infringement. In any event, it will be an easy case to distinguish with the argument that “the Federal Circuit’s decision in SIRF Technology concerning ‘divided infringement’ was based entirely on claim construction.”

  13. The patentability bar can be set high, while the subject matter eligibility bar can be set very low. That is what stimulates invention in previously unrecognized areas.

    If some of the computer related inventions and business methods are a problem, they can always be dealt with from a patentability angle or with special legislation that doesn’t tinker with the wide open subject matter door that is actually a good thing.

  14. “Where should the boundary of patentability kick in”

    Patentability has nothing to do with subject matter eligibility…

  15. Why haven’t we sorted this out for our physical bodies performing methods? You could perform the method of processing grain claimed in Deener with your body and no machine.

    So, it is not just mental but physical acts that must be sorted out. But, as I said above, it is not much of an issue because the information processing methods that are claimed are not ones you would want to carry out just as the physical acts claimed in Deener are not ones that you wouild want to carry out with your body (and mind.)

  16. Well this is interesting. So, if “particular” is BS, and it ought to that use of any general purpose “machine” can also infringe an “information processing” claim, why isn’t a brain that happened to have been built by a genome also a “machine”? And if that’s a “machine”, does it make a decisive difference that the brain/machine is nourished and maintained up and running by another “machine” (as opposed to a living organism)? Where should the boundary of patentability kick in?

    Only having fun here, trying for a connection with that recent District Court decision on the patentability of an “isolated” portion of the human genome.

  17. “And, let’s be clear, the PTO said before Beson that they wanted all informatinon processing inventions removed because they couldn’t handle them, not because they weren’t inventions.”

    NWPA,

    Very astute observation. The same was true in the PTO regarding biotech before Diamond v. Chakrabarty. The attorney for Chakrabarty even pointed out that not so pleasant fact out to SCOTUS in his brief.

  18. And if I repeat the same arguments 100 a day as you say, it is because the same WRONG arguments are repeated 1,000 a day.

    And, when I take the time to refute the wrong arguments it ends in a endless stream of nonsense replys by MM and his fellow medieval thinkers. And, let’s be clear, the PTO said before Beson that they wanted all informatinon processing inventions removed because they couldn’t handle them, not because they weren’t inventions.

  19. I apologize for even getting involved. It wasn’t my business. I have no desire to run around in circles.

  20. I didn’t miss MD’s framework. It is without merit. You also stated that the Fed. Cir. said it was ok because it was on a machine, but that isn’t true. The Fed. Cir. said it was on a “particular” machine. Some on the Fed. Cir. and at the PTO are trying to use that one word to invalidate information processing patents.

  21. But in the land of sacred freedom of expression,

    You mean Canada?

    Check your Constitution again, Max. It only protects “speech”. That’s why you get all these bizarre court decisions to the effect that being a stripper or spending money count as speech.

    Also, I think you have your legal reasoning backward. A country that protects free thought has the most need of a rule against liability for performing a mental step. Especially since the legislative power to grant patents is also in the Constitution, and someone’s got to figure out how far that power can encroach into all the other rights. What about patents that cover guns? Same problem?

  22. “Any specific topic that you feel I need to do some remedial work on?”

    Yes. Your view that gets repeated 100 times per day, i.e. information-processing, time-energy-space, etc. You snide MD’s remarks by saying it’s simple to understand if it’s “framed properly” yet you missed the entire framework of MD’s comment because you are too consumed with your own framework.

  23. Rather snide Jules. Any specific topic that you feel I need to do some remedial work on?

    I will remember your prediction.

  24. MD: “Conversely, all this talk of “machines that think” seems to me a futile and irrelevant chase after a wild goose.”

    I get your point, MD. I know what a crazy scenario chasing a wild goose provides.

    NWPA: “You see, if you bother to put some thought into this, you will realize how simple it is to understand if this is framed properly.”

    Not bad advice, generally. I think you should take heed of it as well, NWPA.

    NWPA: “The fact that the method says on a machine precludes the thought police terror scenario you invoked.”

    Yes, that’s why the CAFC ruled the way it did.

    I predict the Bilski decision comes out 4/20, 10:00 AM EST. Mark my words.

  25. You see, if you bother to put some thought into this, you will realize how simple it is to understand if this is framed properly.

  26. >>Conversely, all this talk of “machines that >>think” seems to me a futile and irrelevant >>chase after a wild goose.

    On the contrary MaxDrei, the whole point is that it is a machine doing the thinking–information processing. The fact that the method says on a machine precludes the thought police terror scenario you invoked.

    In Deener the SCOTUS did not say well, we can’t allow this method as it would prevent people from processing their wheat. They didn’t say that as the method though not explicitly tied to a machine was not a process that a person would do or want to do, but a process that was well suited to a machine.
    That is the point. The information processing methods are for machines to carry out not people and people are not going to want to carry them out any more than they would want to process their wheat using the processing in Deener.

  27. Every time somebody formulates a test for patentability, it gets rubbished, even to the extent that some say there is no need to have 35 USC 101 present at all.

    But in the land of sacred freedom of expression, of all places, I should have thought that freedom of thought is even more precious than freedom of speech. If so, then the USA, of all countries on Earth, needs a 101 test that prevents it ever coming about that a mental act, when detected by the Thought Police, makes a decisive difference to the question whether or not a claim is infringed.

    Conversely, all this talk of “machines that think” seems to me a futile and irrelevant chase after a wild goose.

  28. And on a very serious note to anyone out there that isn’t a troll:

    Try to square Deener with the MOT test.

    And, try to explain why the word “obvious” is in an analysis of 101. And, why speeding something up is mentioned as if that was not eligible for patentability.

    The fact is if you want to understand this you have to frame this as information processing. Machines that are doing what we do. It is hard to build a machine to think.

    These other frameworks are simply bizarre and lead to the strangest opinions that appear to be right out of the medieval books. Where thinking is somehow not a physical process. You reading this burns calories. Takes energy.

    It was so long ago when I read some of the essays about the machines that were physically taking over man, but these opinions from the SCOTUS and the Fed. Cir. read like a medieval textbook on torture.

  29. Simply bizarre why people think that if you could do it with your mind that it shouldn’t be eligible for patentabiilty. If one of you academics want a good paper, look into the early part of the industrial revolution. This same mentality was present when machines over took man’s physical ability. Now that they are over taking our mental abilities some of us humans have devloped this bizarre test that says if we could do it then it shouldn’t be eligible for patentability.

    A machine that can think. Can’t have that. Off with thier heads.

  30. Fed. Cir. Judge:we are not dealing with >>a method that can be performed without a >>machine.

    Isn’t that funny. In Deener the SCOTUS said a method that could be performed by a human body and not a machine was just fine.

  31. >Non-sequitur
    >Posted by: Hagbard Celine
    >You don’t know what the word means, apparently

    Um, I think I do, actually.

    What I had forgotten, however, is the pointlessness of certain endeavors.

  32. Speaking of 101, has anyone been successful trying to argue Ex parte Gutta to examiners?

    I’m getting major pushback from OPLA. They’re sticking with the interim guidelines from last summer and won’t say when/if they will publish new guidelines.

    link to uspto.gov

  33. We do not reach the question of joint infringement because we do not read the relevant claims as requiring that any of the specified actions be taken by SiRF’s customers or by the end users of the GPS devices. This is not a situation where a method claim specifies performance of a step by a third party, or in which a third party actually performs some of the designated steps, and thus control or direction of the performance of that step by the accused infringer is required.9

  34. IANAE, so, imagine you are the patent “owner.” Why is it that you have to do something to quiet title when under the law of the state, all you have to do is have possession for a specified period of time? If you do not do something yourself within the applicable SOL, you may be forever time-barred from having a court resolve the question.

    However, the law must provide, in my humble opinion, some extra-judicial remedy to quiet title. Anything else makes no sense at all. The structure we have is called Statute of Limitations and laches. This makes sense to me.

    If a putative claim to title is not perfected within time, it should be barred not only from the courts of the state but also from the courts of the United States as a defense to standing.

    One man’s opinion.

    And this is also one of the reasons I think the quality of judging on the Federal Circuit leaves a lot to be desired.

  35. Do you see a difference?

    Yes.

    Do you see the difference between you owning the patent and someone else having a time-barred claim to a patent?

  36. IANAE, there is a difference between someone else owning the patent and someone else having a time-barred claim to a patent.

    Do you see a difference?

  37. Is there such a thing as adverse possession of patents? What would that even mean? What, other than suing someone for infringement, could start the clock on adverse possession of a patent? Do we even need a concept of adverse possession for a right of limited duration?

    If I’m the defendant, all I care about is whether you hold good title to the patent. I couldn’t care less about who could sue you and what cause of action they might make out. If someone else owns it but happens not to be able to sue you for it, not my problem.

  38. Ned, which of the current Supreme Court Justices would you like to see deciding patent cases. I’m not sure the fact that you would not like to see any of the Fed. Cir judges on the Supreme Court says anything in particular about how good the Fed Cir judges are at their assigned task.

  39. IANAE, I think the patent owner was arguing that since the cause of action of the “true owner” was barred under either SOL or laches, take your pick, the patent owner’s title cannot be challenged by a third party defendant on the basis that this putative owner, whose rights are forfeit under state law, is the actual owner.

    Think of land disputes. A land owner has owned the land for generations and his title is, for all ostensible purposes, unimpeached and, by law, unimpeachable. He sue for tresspas. The defendant says a third party generations ago has better title than the land owner, and on THIS basis can defend the case?

    Wow! Unheard of.

    But such is the jurisprudence of the Federal Circuit.

  40. It really gives one pause.

    Pause as long as you want, the situation won’t change.

    Laches bars the property claim by a competing owner. His claim is “I am the true owner of that property”. He should have asserted his property right earlier, and now it’s too late. We all accept that principle, I think.

    Now, think about whether laches should bar a third party defendant from making the very different claim of “you are not the true owner of that property”. He is not asserting a property right. He could not have been aware of the ownership issue at the time of invention, and even had he been aware he would have had no standing or reason to raise it. He only acquires standing upon being sued. How could he have been anything but vigilant in asserting the defense that the wrong party is suing him? Clearly, the plaintiff is SOL.

    Incidentally, was the plaintiff arguing in defense of standing that laches gave him good title to the patent, or that it merely estopped the true owner from suing him?

  41. SE, there are a number of recent Fed. Cir. cases that hold that state SOL and laches defenses do not apply when standing is at issue. There was one case a couple of years ago that caused me to go apoplectic in its injustice. The inventor had left the employment of his employer and had notified them that he were filing a patent application in a certain area and had received a reply back that such was OK. The inventor prosecuted the patent, invested in building a business based on the patent and years later, around 14 IIRC, sued Major League Baseball, which was not the former employer. MLB defended on the basis that the former employer owned the patent, not the inventor. The former employee plead SOL and laches, but these defenses were denied. Whether the denial was a matter of state or federal law was unclear.

    Later cases seem to suggest that the issue of standing is one of Federal Law and that state SOL and laches defenses will not apply leaving the ONLY question to be decided, regardless of laches and SOL, is whether the invention was within the scope of the assignment clause. Years may have passed while the former employer, both aware of the patents and of his rights, merely slept on them and chose to do nothing.

    Now, in this posture, the former employer would be barred from seeking an assignment from the former employee under laches and SOL. But, when standing is at issue, the former employee’s rights can never be made secure.

    It really gives one pause.

  42. From Benson:

    The Court stated in Mackay Co. v. Radio Corp., 306 U. S. 86, 306 U. S. 94, that,
    “[w]hile a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.”
    That statement followed the longstanding rule that “[a]n idea, of itself, is not patentable.” @ 87 U. S. 507.
    “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.”
    55 U. S. 175. Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. As we stated in Funk Bros. Seed Co. v. Kalo Co.,@ 333 U. S. 127, 333 U. S. 130,
    “He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.”

    Hmmmm?

    Law of nature or abstract principles are unpatentable.

    Laws of nature and abstract principles can be expressed with mathematically algorithms.

    Douglas and Stevens naturally conclude therefor that all mathematical algorithms are either laws of nature or abstract principles.

    Hmmm.

    So, if I follow the logic, all members of the NY Yankees are baseball players. Here is a baseball player. He is a member of the NY Yankees.

    Such is the logic of the Supreme Court, or should I say, Douglas and Stevens.

  43. “Challenges to ownership should be time barred in some fashion, even when they are presented in challenges to standing.”

    They are time barred SOL to ~ life of patent + 6 years. This term is appropriate because one can become a defendant within this entire term without any prior notice.

    As far as the blanket assignment, seeing that the invention dated back to the inventors’ employment with Magellan, Global Locate was probably not considered to be a bona fide purchaser for value without notice. Otherwise, the unrecorded blanket assignment would not be an issue for it at all.

  44. Feigin–

    I haven’t read the decision yet, but I had the same sense of surprise about the blanket assignment agreement.

    Did the relevant party raise any issue of unenforcability due to overbreadth, etc?

  45. So, a recorded assignment shifts the proof of ownership by a third party to the defendant? What bothers me is that there was any question of this at all.

    I still think we need some sort of SOL on this “standing” defense. Challenges to ownership should be time barred in some fashion, even when they are presented in challenges to standing.

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  47. MM,

    Since it doesn’t pass 101, it’s not even an invention.

    “plain” was not an element/limitation in your claim.

  48. OK, who hacked the site and changed Malcolm’s post at 11:43 AM to change his claim from a strictly *how to* method to one actually including a pushing step?

    Now I know Malcolm comes up with better strawmen. Clearly the claim read as a whole is not a *how*, but an actual. In fact a method of …mowing with a step of pushing said lawn mower is a method of mowing a lawn because of the inherent inclusion of “lawn” (if mere mowing was desired, the lawn would have been dropped from between assisted and mowing), and if the claim was merely to a *how*, then the second step of pushing would not be present.

    Was it you SE? Perhaps it was Plato. The strawman is also weak because it is easy to design around – for example, a person calculating the determined direction and speed using a Torshak algorithm, but pulling said lawn mower may not be infringing.

  49. ping,

    “Forms (usually given a capital F) were properties or essences of things, treated as non-material abstract, but substantial, entities. They were eternal, changeless, supremely real, and independent of ordinary objects which had their being and properties by ‘participating’ in them.”

    link to philosophyprofessor.com

    Couldn’t have put it better myself ATM. I haven’t read Plato in a while, but this is how I remember his theory. Perhaps it is time for both of us to give Plato a read.

  50. I thought claim dissection was forbidden??

    You probably heard that myth from AI.

    It’s definitely not forbidden. What do you think the phrase “insignificant postsolution activity” refers to?

  51. The “invention” in my hypothetical claim is not a method of mowing a lawn (although you may be confused into thinking so)

    The “invention” is what’s claimed:

    “A method of assisted lawn mowing comprises” “pushing said lawn mo[w]er in said determined direction”

    Words are like a certain person
    Who can’t say what the mean
    Don’t mean what they say

  52. >>”MM – why should a new way of using an old tool not be patentable?

    Non-sequitur.”

    Non-sequitur

  53. >>The “invention” in my hypothetical claim is not a method of mowing a lawn (although you may be confused into thinking so) but rather a method of determining *how* to mow a lawn by plugging some numbers into an algorithm. As such, the invention is an abstraction and should be unpatentable under 101.

    >>A method of assisted lawn mowing comprises,
    determining …; and
    pushing said lawn mover in said determined direction with said determined speed.

    So you’re saying the “invention” is not the whole subject matter of the claim? I thought claim dissection was forbidden?? Which is a large part of the point of my own original question…

  54. The “invention” in my hypothetical claim is not a method of mowing a lawn (although you may be confused into thinking so) but rather a method of determining *how* to mow a lawn by plugging some numbers into an algorithm. As such, the invention is an abstraction and should be unpatentable under 101.

    It’s particularly patentable if you do it on a plain.

    It took me a while to get this joke, IANAE. ;)

  55. If the only way to perform a step of pushing a mower is to use a “mower,” then explicitly adding a “mower” into the method-of-mowing claim does not provide a meaningful limitation.

    Isn’t it somewhat tautological that the recited structure in the claim is the only way to use the claimed method on the recited structure? You can’t cure rubber without rubber and a press, so is that not a meaningful limitation?

  56. SE – that is decidely not a Platonic view. The shadow world is the world of forms, the real world is the pristine idea world.

    pushing is an insignificant postsolution activity.

    You haven’t mowed many lawns I see, although you may have mown the idea of lawns…

    The preemption doctrine of Benson is the rock.

    Yup, just ask Charlie Brown on Halloween.

  57. If the only way to perform a step of pushing a mower is to use a “mower,” then explicitly adding a “mower” into the method-of-mowing claim does not provide a meaningful limitation. Gottschalk v. Benson

  58. MM – why should a new way of using an old tool not be patentable? (note – this question has nothing to do with the Cialis case)

    Soc Em – thanks for trying. Let’s wait and see what SCOTUS come up with. Wonder if they can all add two integers 0>,<10 in their heads…

  59. The preemption doctrine of Benson is the rock. MOT is the hard place.

    If it really is the case under the preemption doctrine that a claim to a method only useful with a particular machine cannot be patented by reciting the particular machine, then how is it possible to add a “meaningful” limitation that will further limit that claim so that it no longer preempts all uses of the method?

    For example, would the claim to the method that is only useful with a GPS have become patentable in your opinion, Dennis, if the GPS were specified to be a digital GPS? If so, would preemption still occur if the patent had an independent claim that specified a “digital” GPS, and another independent claim that specified a “non-digital” GPS? If not, please give an example of a limitation that, in your opinion, would avoid preemption, since you think the subject matter should be patentable. In other words, what are we supposed to patent this type of subject matter with Benson and Bilski both in the way? Because it seems like the only computerized methods that are patentable in view of these decisions are the ones that would be useful even if not computerized, but that are limited to being computerized.

  60. Hagbard Celine,

    Let me put it this way, if we consider 102 and 103 first then obvious machine-implementation is 101-eligible so long as it is not a mere field-of-use limitation and not an insignificant postsolution activity.

    field of-use-limitation example: method of adding two integers > 0 & < 10 using a calculator (I assume nearly everyone can do this in their head, perhaps I am mistaken)

    insignificant postsolution activity example: adding two integers in your head and then typing the result into a document on a PC.

  61. MM,

    In this case lawn mower is not essential (one can determine the direction without an actual lawn mower) and pushing is an insignificant postsolution activity.

  62. Patentable under 101 because “a lawn mower is essential”?

    Provided you tie the claim to a particular lawn mower and not a general lawn mower.

    It’s particularly patentable if you do it on a plain.

  63. A method of assisted lawn mowing comprises,

    determining a direction and speed in which to push a lawn mower, wherein said determining is accomplished by providing a blade speed, blade angle, and wheel axis orientation, and wherein said blade speed, blade angle, and wheel axis orientation is converted to a determined direction and speed using a Torshak algorithm; and

    pushing said lawn mover in said determined direction with said determined speed.

    Patentable under 101 because “a lawn mower is essential”?

    LOL.

  64. ping,

    I disagree. The “real” world is unpatentable, only a part of the “shadow” world is patentable. The “real” world is the world of “forms”, i.e. laws of nature and, perhaps, algorithms. The latter, depending on your point of view, may already be shadows.

  65. I KNOW that novelty and (non-)obviousness are decided separately from 101.

    Seems that no matter how I frame that question, no-one wants answer it…

    Maybe SCOTUS will.

    What? It could happen…

  66. SE,

    You address the comment to me when it should go to EG, but I’ll take a whack. Let’s delve into the metaphysical.

    If the algorithm is considered a law of nature or closely related to it
    The only thing is, an algorithm is something that someone created to approximate a true law of nature. Being Platonic is, in a very real sense, meaning that everything is patentable, as every “real” thing is an idea and ideas, divorced from the actual world, are creations of man. They are tools of man. On the other hand, a true law of nature does not need man to express and exists outside of man. Sure, you have to meet the other requirements of patentability, but the Platonic world is wide open for patenting.

    Ow. I think I pulled a muscle.

  67. abstract method + machine = 101-eligible implementation according to MOT, so long as machine-implementation in not a mere field-of-use limitation and not an insignificant postsolution activity

    Novel, non-obvious/obvious are decided separately from 101.

  68. Novel, non-obvious but abstract method = 101-ineligible

    Novel, non-obvious but abstract method + obvious machine-implementation = 101-eligible and 103-valid?

    Yes?

  69. Ping,

    “Stevens said in his opinion that a previously unknown algorithm was “prior art” under 35 USC 103.”

    If the algorithm is considered a law of nature or closely related to it, that statement makes sense. The algorithm is then not invented but rather discovered. However, if it is applied in practice in a new and unobvious way then the application of the algorithm is an invention just as is isolating and purifying a naturally occuring compound. Granted, this is a somewhat Platonic view of the world.

  70. DC, EG, ping,

    I understand your point and I would, perhaps, even agree with you had I read the case. However, the quotation provided, i.e. “as described, the use of a GPS receiver is essential”, standing by itself, suggests at least one alternate interpretation, namely, “we require that you perform this method with a GPS”. Now, while such combination may be obvious, it does, at least arguably, satisfy the MOT test since the method is tied to a particular machine, specifically, the GPS. Consequently, the claim passes the 101 bar.

  71. Ping,

    I feel fine about it. The only SCOTUS decision worse than Gottschalk on the patent-eligibility of computer systems is Parker v. Flook, authored by the soon to be retiring Justice Stevens. Stevens said in his opinion that a previously unknown algorithm was “prior art” under 35 USC 103. I was just startig out as a patent attorney when Flook came out, and I just about went ballistic over this statement from Stevens. What rhetorical nonsense!

  72. EG,

    You took the words out of my mouth (not sure how that makes you feel).

    Consider also that any truly novel claim will have “the only way to perform” a certain something (for example in a method claim).

    Far from not providing a meaningful limitation, the essence of patentability is being used to say not only “No patent” but also “Not meaningful”.

  73. “If the only way to perform a certain calculation is to use a “shift register,” then explicitly adding a “shift register” element into the method-of-calculation claim does not provide a meaningful limitation. Gottschalk v. Benson, 409 U.S. 63 (1972).”

    Dennis,

    That’s why Gottschalk is a lousy decision. Written by the most anti-patent of Justices, William O. Douglas. With the exception of Adam’s battery, Douglas wouldn’t know a patentable invention if it hit him square in the face. Fortunately, Diehr came along before all computerized systems were cast on the “patent-ineligible” dump. Unfortunately, the current SCOTUS appears to be following in William O’s footsteps lately.

  74. Feigin cites “Europe” by which he means (I think) Chapter II of the EPC, Articles 58 through 61, which provide that:

    1. any person can apply for a patent

    2. Applicant deemed to be the owner till the true owner comes forward

    3. true owner of the pending application can bump the false Applicant off the EPO Register and take over all the attributes of ownership.

    Further, after issue, only the aggrieved true owner can petition for ownership to be taken away from the false registered proprietor (at least that’s how it is in UK and Germany).

    and I wonder if the Federal Circuit has become aware of and thought about this pragmatic European approach.

  75. I’m more amazed that a blanket assignment agreement is considered valid under federal law. That sounds like Europe and it makes it useful to include it in employment agreements. Of course, one should still have inventors assign each application individually, but as a fall back this has some use.

  76. Ought to read the Decision before offering a comment, but the MOT test strikes me as one that, under continuing scrutiny, will prove less and less satisfactory. I can imagine that there might be a multitude of unpatentable methods (such as pure mental acts) that, as claimed, get over the 101 hurdle by reciting, as a spuriously “essential” step, the use of a particular machine, namely a GPS receiver, while there are manifestly patentable methods (perhaps a new and not obvious software routine to generate a line of best fit through collected experimental data) that can be performed on any old PC.

    Will Bilski bring clarification, I wonder.

  77. Ping — Here’s the idea. If the only way to perform a certain calculation is to use a “shift register,” then explicitly adding a “shift register” element into the method-of-calculation claim does not provide a meaningful limitation. Gottschalk v. Benson, 409 U.S. 63 (1972).

  78. Rather, the fact that “a GPS receiver is essential to the operation of the claimed methods” indicates that inclusion of the “GPS receiver” limitation is not meaningful.

    essential indicates not meaningful?

  79. rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly

    And “more quickly” is now not enough?

    Goalposts keep moving – now a mechanism cannot be an obvious one?

  80. Hey Gene,
    you may have gotten me to mess up my case. But the reason why they needed you to do that is not what you think. Extra Extra you will read all about it.

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