Interval Licensing v. AOL, Apple, eBay, Facebook, Google, etc.

Interval Licensing LLC v. AOL, Apple, eBay, Facebook, Google, Netflix, Office Depot, OfficeMax, Staples, Yahoo!, and YouTube (W.D. Wash. 2010).

Microsoft co-founder Paul Allen started Interval Research in 1992. During the 1990’s, the company filed for several user-interface related patents that were primarily intended to improve a computer user's online experience. The patents focus on what I might call “lightweight” usability ideas such as a occupying the peripheral attention of a user; organizing audio/visual for display in a browser; and alerting users to items of current interest.

When Interval closed its doors, the patents were transferred to Vulcan Patents LLC (presumably another Paul Allen company) and then to Interval Licensing which remains a Paul Allen company.

PatentLawPic1133

The patents are well drafted. Of course, even excellent drafting cannot cure obviousness problems. I suspect that the litigation will focus primarily on whether these inventions were obvious back when the patents were filed? In addition to arguing in court, I expect that the defendants will also appeal to the US Patent Office — asking the agency to take a second look at the patents via reexamination.

Take claim 1 of asserted Patent No. 6,757,682 (filed in 2000) as an example.

1. A system for disseminating to a participant an indication that an item accessible by the participant via a network is of current interest, comprising:

a computer configured to

receive in real time from a source other than the participant an indication that the item is of current interest;

process the indication;

determine an intensity value to be associated with the indication and an intensity weight value, and adjusting the intensity value based on a characteristic for the item provided by the source; and

inform the participant that the item is of current interest; and

a database, associated with the computer, configured to store data relating to the item.

I don’t have any prior art on hand, but the claim sure feels obvious (in hindsight)…

Of course, the system embodied in claim 1 above represents an important core feature of services provided by all of the listed defendants. (A similar story can be told of the other asserted patents.) Thus, if the patents are valid, the damage award could be quite large.

It may be important to note that the complaint does not suggest that any of the defendants copied the invention from Paul Allen's company or that the defendants even knew about the patents before today. Of course, a patentee does not have to show copying in order to prove patent infringement and back-damages can still be available even when the infringement occurred without knowledge of the patent. (Additional punitive damages may be awarded if the infringement was willful).

It will be interesting to see how the Supreme Court’s foray into patent law over the past four-years will impact this case. I look to three important decisions:

  1. In KSR v. Teleflex, the Supreme Court raised the patentability standard of nonobviousness — making it more likely that these patents will be held invalid as obvious.
  2. In Bilski v. Kappos, the Supreme Court held that certain business method inventions are not patentable. Some of the claims in the patents-in-suit may be susceptible to a similar attack. However, most of the asserted claims appear to be tied closely to a technological implementation in a way that may avoid problems under Bilski.
  3. In EBay v. MercExchange, the Supreme Court made it more difficult for patent holding companies (such as the plaintiff here) to obtain an injunction to stop ongoing infringement. Of course, it is unlikely that Interval actually wants to stop infringement — rather, the company is looking for a large license fee.

Final point: The vast majority of patent cases settle. Here, however, all of the parties have large amounts of cash-on-hand. In addition, some of the defendants are repeat patent infringement defendants. Those factors tend to make settlement less likely.

254 thoughts on “Interval Licensing v. AOL, Apple, eBay, Facebook, Google, etc.

  1. AI: Excuse me but you can’t read the mind of this inventor and say what they want or do not want to do. Patent Applications go abandon all the time for all kinds of reasons.

    IANAE: When the applicant abandons the application after seeing the 101 rejection, and then files a continuation with claims that have “computer” as every second word, what do you suppose his motivation is? That he ran out of money in his patent prosecution budget?

    AI: How do I know what you are saying is true? Given your penchant for lying I don’t assume any of this is correct but even if it is so what? Maybe the inventor saw what happened, or what was gonna happen at the CAFC in Bilksi and hedged his bets. But who cares? It does not change the FACT that The SCOTUS ruled the MOT test is not the sole test. Accept it already and move on.

    AI: You should know better by now than to get into this debate with Actual Inventors.

    IANAE: Right. Who could possibly know the law better than an inventor? I certainly can’t invent the law any better than you.

    AI: I don’t invent law. I read the cases like everyone else. You on the other hand just out right lie. But it’s part of an Actual Inventors job to know the law that pertains to their particular field of invention. How else would we know if we are hiring a competent attorney or someone like youself? Or at least what you act like on the internet.

    AI: I was right on the money in more outcomes than anyone.

    IANAE: There was only one outcome. The Bilski claims failed every 101 test that has ever been devised. The “actual inventor” (Bilski) lost.

    AI: Yes, I feel for Bilski. But there were other outcomes all of which I predicted to the letter YEARS ago. Let’s review shall we?

    Business Methods Upheld as Law of the Land

    Computer software untouched

    Diehr Upheld As Controlling 101 Case Law

    Concept and Application Reaffirmed as a test for 101

    Stevens Sent Packing.

    I could go on and on and on…

    Was great a day for Actual Inventors! And a total smack down for anti patent foes like yourself.

  2. “Actually, claim 1 was pretty close to covering the entire concept of hedging. ”

    Close to and and actually covering are 2 different things as anyone familiar with “all elements” is well aware.

    “and didn’t even bother searching the claims for art ”

    You say that, but you have no evidence of it. If, as AI believes, and you seem to support, the claim covered all of hedging, or even practically all (which it doesn’t) then a 102 should leap out at you from every business textbook. Go ahead, show us. Shouldn’t take but like a minute.

  3. AI: Excuse me but you can’t read the mind of this inventor and say what they want or do not want to do. Patent Applications go abandon all the time for all kinds of reasons.

    When the applicant abandons the application after seeing the 101 rejection, and then files a continuation with claims that have “computer” as every second word, what do you suppose his motivation is? That he ran out of money in his patent prosecution budget?

    I’ll just put you down for “did not do the research” again, shall I?

    AI: You should know better by now than to get into this debate with Actual Inventors.

    Right. Who could possibly know the law better than an inventor? I certainly can’t invent the law any better than you.

    AI: I was right on the money in more outcomes than anyone.

    There was only one outcome. The Bilski claims failed every 101 test that has ever been devised. The “actual inventor” (Bilski) lost.

    I’m actually quite happy there was only the one outcome. It would have been completely irresponsible for the Supremes to kill off all business method patents based on the world’s worst example of one, and they knew it.

    6: In case you’re too under educated to know it AI, the claim did not cover the entire concept of hedging. If so, it would have been an easy 102 and the court would not have bothered ruling on 101.

    Actually, claim 1 was pretty close to covering the entire concept of hedging. And the reason they ruled on 101 is because the examiner ruled on 101 and didn’t even bother searching the claims for art because the 101 rejection was so blatant. If the Supremes had reversed and remanded, you might have seen some art.

    Max: Nevertheless, in their Decision, they do let it be known that, in general, joke-telling is abstract.

    Let’s go with a practical application, then. Tied to a machine. How many judges does it take to change a lightbulb?

  4. So in other words you stand corrected AI? Just go ahead and say it. You don’t have to avoid the issue. Just read the claim, then read the decision. The claim is a specific method of hedging. Maybe that will open new insights for you.

  5. All this talk of abstract ideas is a bit abstract for me. Let’s have something a bit more concrete, like processes for telling jokes.

    SCOTUS members are old enough and wise enough to know the value of the aphorism “Never say Never”, so refrain from announcing that no joke-telling process can ever be eligible for patent protection. They are vaguely aware that joke patents are not unknown and, who knows, one of them might even be valid. Nevertheless, in their Decision, they do let it be known that, in general, joke-telling is abstract.

    That’s enough for the jokers to spin the decision into “If they are new, jokes are patentable. Jokers win”.

  6. IPosted by: 6 | Aug 31, 2010 at 10:03 PM: n case you’re too under educated to know it AI, the claim did not cover the entire concept of hedging. If so, it would have been an easy 102 and the court would not have bothered ruling on 101. That was not the case.

    ________

    Manyy Amici said that Bilksi should be a 102 or 103 case and not 101. And I often blogged it should have been a 112 issue as well. But the powers at be wanted to make this a 101 issue. Specifically the losers on the Lundren BPAI case lead by Judge Barrett wanted to get a case sent up to the Supremes that would narrow 101, eliminate so called business methods, and overturn State Street. Emboldened by the Dudas culture of reject, reject, reject, they hand picked Bilski and was certain of victory.

    To the delight of proponents of the patent system they got smacked down big time and it all backfired. The only unfortunate part is Bilski lost his case for his patent while Lundgren received his patent, and the left over residual effects of some examiners such as yourself that were indoctrinated under the old regime and are finding it difficult to change.

    Yup, Bilski was just a victim of politics and thats the way it goes sometime. But he can at least take some comfort that his case made it better for Actual Inventors everywhere, and in the course of history will be viewed as a turning point that saved innovations in new technology and perhaps the building of a new economy based on patents.

  7. “The concept of hedging, described in claim 1 ”

    That is, the specific concept of hedging that is described in claim 1.

    In case you’re too under educated to know it AI, the claim did not cover the entire concept of hedging. If so, it would have been an easy 102 and the court would not have bothered ruling on 101. That was not the case.

    I know you’re too stup id to understand what they’re talking about own your own, but you could at least make an effort to understand it when I tell you what is going on. I give of my time to help you AI. And to poke fun at your ignorance, and stu pidity, but those are only secondary considerations.

    “As for my predictions, no one can deny that I was closer to the exact outcome of this case than any one else that was so bold enough as to make a prediction on this blog.”

    Except for everyone that said Rader was right. There were a couple.

    “Bilski’s problem was that his claims were too broad, not too narrow.”

    His problem was not related to breadth of claims. It was related to the content of the subject matter claimed.

  8. Right. What’s most sad/amusing about Actual Inventard’s self-inflation is that, IIRC, of the four of us, he was the only one who thought Bilski’s claim was valid under 101. As I recall, prior to Bilski, Actual Inventard’s position was quite clear: every method and every composition is patentable subject matter under 101, period.

    Posted by: Malcolm Mooney | Aug 31, 2010 at 06:26 PM
    ____________________________

    I follow what the Supreme Court says the law is. And this Court decided to bring a little of 112 into 101 in an effort to instruct the PTO on how to test for abstract ideas under 101. If not for that Bilski would have had his patent slam dunk.

    As for my predictions, no one can deny that I was closer to the exact outcome of this case than any one else that was so bold enough as to make a prediction on this blog.

    This was proven a couple a months ago when I posted my old predictions and compared them to the Bilski Court case decision.

    I was right on the money in more outcomes than anyone. Now compare that to all your years of blabbering about the business method smack down and what Stevens was gonna do to software, bla, bla bla. You were the one left looking like the fooool.

    And as for my position on patentable subject matter, I have never said every process was patentable under 101.

    The judicial exceptions notwithstanding, I have always believed that every process when applied ( reduced to practice) is patentable subject matter.

    And now the Supreme Court has reaffirmed my position and upheld it as the law of the land.

    Now I am going back to the beach. But anytime you want another lesson on 101, just let me know.

  9. “Especially when you don’t have the facts on your side from the start.”

    On the other hand, at least we have the law on our side lol ;)

    Posted by: 6 | Aug 31, 2010 at 06:51 PM

    _______________________________________

    Lucky for us AI’s, that it’s not the Supreme Law of the Land

  10. “When applied, Bilski’s particular concept of Hedging covered (pre-empt) all uses of this particular concept of Hedging in all fields. The Court considered that particular concept of Hedging abstract. And thats why Bilski did not get his patent. It had nothing to do with Machines or Transformation or even technology although a connection to those might have helped”

    ___________

    Wrong again. The Court did not use the word “particular” when describing what is abstract. 6, you can’t just add words to the Supreme Courts decision in an effort to twist the ruling to support your own beliefs. Thats not your job. If you are indeed truly a PE your job is to follow the letter of the law, exactly. That’s all I pay you for. The Court was very precise, clear, and consistent with its language from the time of Diehr 1981 to Bilksi 2010.

    Now once again I will quote what the law of the land is as interpreted by the Supreme Court of the United States.

    “The Court held, at *29-30: The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.”

    :: 6 I recommend you print this paragraph and paste it on your cubical wall, if they give you one that is.::

    Again, no where did the court say “particular” when elaborating on its concept and application test that was used to deny Bilski his patent. Thats represents the language of the cabined MOT Test of the Federal Circuit.

    Bilski’s problem was that his claims were too broad, not too narrow. Indeed as hindsight now teaches us, if Bilski had used a more narrower definition of Hedging in his application, and/or as reflected in his claim construction, his application would have passed 101 with ease. Especially since there is no machine, transformation, or technology restrictions.

  11. “Especially when you don’t have the facts on your side from the start.”

    On the other hand, at least we have the law on our side lol ;)

  12. It’s always going to end badly for you, 6 and MM. Especially when you don’t have the facts on your side from the start.

    Right. What’s most sad/amusing about Actual Inventard’s self-inflation is that, IIRC, of the four of us, he was the only one who thought Bilski’s claim was valid under 101. As I recall, prior to Bilski, Actual Inventard’s position was quite clear: every method and every composition is patentable subject matter under 101, period.

  13. In law school they taught us that the Supreme Court is always right. The Supreme Court said MOT pretty much always gives you the answer. It may be the fancy book-learnin’ talking, but I’m inclined to side with the Supreme Court.

    ________________

    Did they teach you to lie in law school as well? The Supreme Court said no such thing or you would have cited it and ended the debate. You should know better by now than to get into this debate with Actual Inventors. It’s always going to end badly for you, 6 and MM. Especially when you don’t have the facts on your side from the start.

  14. “I’m not talking about small chunks that someone might theoretically discover later. I’m talking about cases where the claim is actually tied to what would ordinarily be considered a particular machine or transformation, which explicitly leaves a whole lot of potential uses available to the public.”

    Oh I thought we were talking about certain hypothetical claims that bear no resemblance to anything that is actually tied to what would ordinarily be considered a particular machine or transformation, which explicitly leaves a whole lot of potential uses available to the public.

    my bad

    “It’s notable that the Exmianer tried to promulgate saome “technological arts” test, instead of rjecting the claim as “abstract.” And the BPAI did not raise the “abstract” rejection sua sponte”

    Such a pity, they could have resolved the question of the technological arts rejection for all time. Instead they decided to continue to stick their head in the sand.

    “When applied, Bilski’s concept of Hedging covered (pre-empt) all uses of Hedging in all fields. The Court considered that abstract. And thats why Bilski did not get his patent. It had nothing to do with Machines or Transformation or even technology.

    On the contrary Lundgrens financial compensation method, even though pioneering does not cover all uses of financial compensation in all fields and therefore is not abstract.”

    You’re a little off in both of those statements, but you’re close. I’ll let you continue to delude yourself as I don’t feel like taking the time to correct each mistake you make on a daily basis. I will give you a hint to get you started though, if you go and read the bilski claims and the decision you will come to understand that what you needed to say was:

    “When applied, Bilski’s particular concept of Hedging covered (pre-empt) all uses of this particular concept of Hedging in all fields. The Court considered that particular concept of Hedging abstract. And thats why Bilski did not get his patent. It had nothing to do with Machines or Transformation or even technology although a connection to those might have helped”

    “Actually, that’s his job. Especially since the Supreme Court said it wasn’t going to give 6 and his colleagues any guidance in that regard.”

    I kno rite? I have a black mumu here in my office that I don when I play Justice.

  15. You can’t really defend a case under 101 when the applicant didn’t want to. That’s the patent prosecution equivalent of a face not even its own mother could love.

    ____

    Excuse me but you can’t read the mind of this inventor and say what they want or do not want to do. Patent Applications go abandon all the time for all kinds of reasons. The bottom line is the claims are statutory under 101 according to the Supreme Court in Bilski and you can’t cite a single case law that says otherwise.

  16. 1. A method of rewarding a manager who exercises

    administrative control over operations of a privately owned

    primary firm blab blah blah blah blah blah …. determining magical managerial reward amount; and

    h) rewarding said manager, said

    reward having a value related to said

    managerial reward amount.

    Note that nothing in the middle of the claim matters. You can put anything you want in there and it “works” just as well. The manager gets a reward based on some magical “determination,” which anyone can fabricate at will.

    Note also the “comprising” language. Think about what means, in the context of a claim like this.

  17. AI: What that means 6 is you do not get to play Supreme Court Justice and define what you think is abstract and not abstract.

    IANAE: Actually, that’s his job. Especially since the Supreme Court said it wasn’t going to give 6 and his colleagues any guidance in that regard.

    ________

    Once again you are wrong. The Supreme Court gave the PTO guidance in 1981 when Diehr cabined Flook and Benson with concept and application test ( DCAT) for overcoming abstract ideas.

    The Court provided a refresher course for the PTO when it refused to put a gloss on Diehr and further used a test of concept and application as a way to determine abstraction and did not adopt MOT as the sole test.

    Diehr controls.

    Lundgren is valid.

    Your challenge was met.

    You ducked my challenge and failed by default.

    You lose.

    Inventors Win!

  18. since the SCOTUS did not make MOT the sole test like the CAFC wanted, the patent is still valid under 101.

    That’s some remarkable … I don’t want to call it “logic”, but it truly is remarkable.

  19. IANAE : “There’s no indication that anybody has ever considered this pile of words patentable under anything remotely approaching the MOT test. ”

    Thats right. This patent was issued with no machines or transformation. And since the SCOTUS did not make MOT the sole test like the CAFC wanted, the patent is still valid under 101. You entire line of reasoning has been destroyed, once again.

  20. Lundgrens financial compensation method, even though pioneering

    Yes, like I’m a “pioneer” when I record a fxrt that has never been recorded before.

  21. On the contrary Lundgrens financial compensation method, even though pioneering does not cover all uses of financial compensation in all fields and therefore is not abstract.

    “Compensation” is an abstraction if there ever was one. It’s a quintessential example, in fact. Here’s a number. Like it? Now let me apply my method — voila! Here’s a bigger number. Enjoy. Methods of moving symbols representing money from one “account” to another are abstractions, pretty much by definition.

    Remember: the apparent utility of a claim is in no way determinative of the degree of abstraction (or non-abstraction) of a claim.

  22. AI: What that means 6 is you do not get to play Supreme Court Justice and define what you think is abstract and not abstract.

    Actually, that’s his job. Especially since the Supreme Court said it wasn’t going to give 6 and his colleagues any guidance in that regard.

    AI: If that case had not been abandon the inventors would have been able to traverse the 101 rejection with ease now that we won in Bilski at the SCOTUS.

    The law on statutory subject matter was much more favorable before Bilski. Particularly so back in the days of the “useful, concrete, and tangible result” test, which the Supreme Court thought was way too permissive. If it was dead before, it’s lurching around cemeteries and eating brains now.

    You can’t really defend a case under 101 when the applicant didn’t want to. That’s the patent prosecution equivalent of a face not even its own mother could love.

    AI: And only in LOL school will you ever be taught to simply reject any claim without a machine or transformation as abstract.

    In law school they taught us that the Supreme Court is always right. The Supreme Court said MOT pretty much always gives you the answer. It may be the fancy book-learnin’ talking, but I’m inclined to side with the Supreme Court.

    Malcolm: “Compensating” someone is not a transformation of anything.

    What about “overcompensating”, if it transforms one’s online persona into that of an “Inventor”?

  23. Posted by: Malcolm Mooney | Aug 31, 2010 at 04:52 PM: “Compensating” someone is not a transformation of anything. Dead in the water.

    _________________________________________________________

    Mooney, Machine or Transformation is not the sole test. Get your head out of the water.

  24. To date neither you nor Inane have been able to invalidate this or any claim I have provided as being non statutory under SCOTUS Bilski.

    “Compensating” someone is not a transformation of anything. Dead in the water.

  25. Does it really matter when all you’re going to cite are claims that preempt abstract ideas anyway? No, the Bilski court says it does not.

    Posted by: 6 | Aug 31, 2010 at 02:55 PM

    _________

    SCOTUS Bilski says exactly this:

    “The Court held, at *29-30:
    “’Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.’  The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.”

    The Court further explained that it “need not define further what constitutes a patentable ‘process’, beyond pointing to the definition of that term provided in §100(b)…. ”

    What that means 6 is you do not get to play Supreme Court Justice and define what you think is abstract and not abstract.

    When applied, Bilski’s concept of Hedging covered (pre-empt) all uses of Hedging in all fields. The Court considered that abstract. And thats why Bilski did not get his patent. It had nothing to do with Machines or Transformation or even technology.

    On the contrary Lundgrens financial compensation method, even though pioneering does not cover all uses of financial compensation in all fields and therefore is not abstract.

    The same applies the other link I provided as well, link to faqs.org. If that case had not been abandon the inventors would have been able to traverse the 101 rejection with ease now that we won in Bilski at the SCOTUS. And the claims are not abstract since they do not cover all uses of a reality program in any and every field. Although the inventors were going to run into problems at 102 and 103 for sure, they had 101 beat!

    Only in your immature intellect and IANAE’s shattered wet dream is there still a sole machine or transformation test.

    And only in LOL school will you ever be taught to simply reject any claim without a machine or transformation as abstract.

  26. AI: To read lundgrens claims for yourself check out this link:

    Very nice. A Board decision reversing the examiner based on the now-discredited “useful, concrete, and tangible result” test, because the examiner essentially admitted that there was a useful, concrete, and tangible result, and an allowance immediately following.

    There’s no indication that anybody has ever considered this pile of words patentable under anything remotely approaching the MOT test. I wouldn’t give it a snowball’s chance under Bilski.

  27. Just link ‘em the patent:

    link to google.com

    It’s notable that the Exmianer tried to promulgate saome “technological arts” test, instead of rjecting the claim as “abstract.” And the BPAI did not raise the “abstract” rejection sua sponte.

  28. 6: That doesn’t mean that there is not small chunks left that wouldn’t be preempt that someone might theoretically discover later.

    I’m not talking about small chunks that someone might theoretically discover later. I’m talking about cases where the claim is actually tied to what would ordinarily be considered a particular machine or transformation, which explicitly leaves a whole lot of potential uses available to the public.

    It’s an aspect that was glaringly lacking in Bilski, and arguably also lacking in Benson, since “in a computer” isn’t much of a limitation on binary conversion, but I think it really comes down to whether Benson’s claim was a statutory transformation or not, rather than whether the Supreme Court considered the algorithm was practically useless in any other context.

    Malcolm: Bilski’d or obvious

    That’s the question we’re trying to settle. To some of us, it makes a difference which one it is.

  29. I suspect that someone like Paul Allen would not have filed this kind of patent infringement suit unless he thought he had a pretty good chance of winning. And, of course, he can afford top-notch legal counsel. The question is, will Mr. Allen’s pledge to give away most of his fortune apply to the (likely pretty hefty) damages if he prevails in this case?

  30. I must have missed the link. Should I expect to find an abstract idea be preempt on the other end of the link? If so, spare me the time.

    Posted by: 6 | Aug 31, 2010 at 02:33 PM

    ______________

    As stated before this is another example of a claim for a process that has no machine, transformation or technology and is perfectly valid. To date neither you nor Inane have been able to invalidate this or any claim I have provided as being non statutory under SCOTUS Bilski.

    To read lundgrens claims for yourself check out this link:

    link../media/docs/2005/10/2003-2088.pdf

    1. A method of compensating a manager who exercises

    administrative control over operations of a privately owned

    primary firm for the purpose of reducing the degree to which

    prices exceed marginal costs in an industry, reducing incentives

    for industry collusion between the primary firm and a set of

    comparison firms in said industry, or reducing incentives for

    coordinated special interest industry lobbying, said set of

    comparison firms including at least one firm, said primary firm

    having the manager who exercises administrative control over said

    primary firm’s operations during a sampling period, wherein

    privately owned means not wholly government owned, the method

    comprising the steps of:

    a) choosing an absolute performance standard from a set of

    absolute performance standards;

    b) measuring an absolute performance of said primary firm

    with respect to said chosen absolute performance standard for

    said sampling period;

    c) measuring an absolute performance of each firm of said

    set of comparison firms with respect to said chosen absolute

    performance standard for said sampling period, said measurement

    of performance for each firm of said set of comparison firms

    forming a set of comparison firm absolute performance measures;

    e) comparing said measurement of absolute performance of

    said primary firm with said performance comparison base;

    f) determining a relative performance measure for said

    primary firm based on said comparison of said primary firm

    measurement of absolute performance and said performance

    comparison base;

    g) determining the managerial compensation amount derived

    from said relative performance measure according to a monotonic

    managerial compensation amount transformation; and

    h) transferring compensation to said manager, said

    transferred compensation having a value related to said

    managerial compensation amount.

  31. 1. A method for reading package information from a package, said package information including machine-readable first information indicia and alphanumeric second information indicia, comprising the steps of:
    capturing an image of said package, said image including said machine-readable first information indicia and said alphanumeric second information indicia;
    locating said machine-readable first information indicia in said image;
    automatically decoding said machine-readable first information indicia to provide package identification data;
    locating said alphanumeric second information indicia;
    automatically decoding said alphanumeric second information indicia to provide package destination data;
    combining at least a portion of said package identification data and at least a portion of said package destination data to form a unified package record; and
    affixing third information indicia to said package, said third information indicia being machine readable and comprising said unified package record.

    As written, this is gerbage. All the “magic” is in the information. Bilski’d or obvious, pick your poison.

  32. “That’s not really preemption”

    We need to have a discussion about what the term “preemption” means.

    “Had somebody else discovered a second application for his algorithm in the interim, his claim would have magically become statutory, which can’t possibly be the right outcome.”

    Actually it wouldn’t, as I’ve already explained to people. The bottom line is that the claim is directed to the abstract idea in the first place, and substantially preempts it. That doesn’t mean that there is not small chunks left that wouldn’t be preempt that someone might theoretically discover later. There probably were chunks left over in Benson, the court even addresses that fact. Indeed, there are plainly small chunks left of bilski’s abstract idea after considering his claim. Doesn’t matter. The supremes are merely cutting off people trying to run an end run around their ban on abstract ideas by still directing their claims to the abstract idea, but doing so in a form that looks ok.

    I’m not really sure why this is so hard for you guys to understand. The supremes put a ban in place. They don’t like people trying to run an end run around it and get claims that may as well be, practically speaking, claims on the abstract idea itself. It really is that simple. You’re dealing with judges who can sense shinanigans and that’s what you’re attempting.

  33. Below are a couple of issued patent claims. Are you satisfied that these claims are tied to particular machines or particular transformations?

    Both are easily statutory. The Bilski court would have no trouble with these, given half-decent advocacy on the part of the applicant/patentee.

  34. 6: Whether or not it is there fault is not at issue here. As you well know.

    6: Tell that to Benson as he leaves the courthouse.

    I like the rule in Benson, but I question how it was applied to the facts of Benson.

    The Supremes denied him a patent because they couldn’t think of another use for the algorithm. That’s not really preemption, it’s permissibly broad claiming. Had somebody else discovered a second application for his algorithm in the interim, his claim would have magically become statutory, which can’t possibly be the right outcome.

    6: Nice logic there goofy. Or should I say doublespeak?

    Thanks. I didn’t make it up.

  35. ” that should be ”

    Doesn’t make it enough :(

    ” It’s not the applicant’s fault if nobody else can think of a way to use the abstract idea with any other machine or transformation – if somebody does, they can patent it themselves.”

    Whether or not it is there fault is not at issue here. As you well know.

    “A practical application should not be non-statutory merely because it is the first known practical application.”

    Tell that to Benson as he leaves the courthouse.

    “It transforms the image of something real, which counts as meta-tangible or whatever.”

    So it isn’t real, but then it is because it is related to something real? Nice logic there goofy. Or should I say doublespeak?

  36. Does it really matter when all you’re going to cite are claims that preempt abstract ideas anyway? No, the Bilski court says it does not.

    I think the Bilski case might have grabbed the wrong end of that stick.

    If the claim is tied to a particular machine or a particular transformation, that should be enough to show that the abstract idea is not preempted. It’s not the applicant’s fault if nobody else can think of a way to use the abstract idea with any other machine or transformation – if somebody does, they can patent it themselves. A practical application should not be non-statutory merely because it is the first known practical application.

    Having said that, I think the ’385 claim counts as a transformation. It transforms the image of something real, which counts as meta-tangible or whatever. Also, I think it transforms data in a meaningful way to obtain meaningfully different data, which for some inventions is the most you can really do.

    The ’841 claim probably counts as either for affixing a computer-generated indicia onto the scanned package. But judging by the patent number, the examiner probably didn’t give MOT much thought when he allowed it.

  37. “Are you satisfied that these claims are tied to particular machines or particular transformations?”

    Does it really matter when all you’re going to cite are claims that preempt abstract ideas anyway? No, the Bilski court says it does not.

  38. Before we take the challenge seriously, I’d like to nail down what you guys consider to be a particular machine or a particular transformation, so we can hopefully avoid accusations of moving the goalpost. Below are a couple of issued patent claims. Are you satisfied that these claims are tied to particular machines or particular transformations?

    Patent number: 6643385

    SYSTEM AND METHOD FOR WEIGHT-LOSS GOAL VISUALIZATION AND PLANNING AND BUSINESS METHOD FOR USE THEREFOR

    1. A method for producing an image predictive of a person’s appearance resulting from following a weight loss and training regimen, said method comprising the steps of:
    receiving a first image of a person in a pre-regimen condition;
    receiving a first data set of body measurements for said person;
    receiving a second data set indicating at least one goal for results of said regimen;
    separating said first image into a plurality of body segment images;
    modifying each body segment image based upon said second data set and said first data set in a manner relevant to predictable weight loss in each body segment by morphing each body segment based upon predictable fat loss in each body segment;
    reconstructing a full-body image by combining said modified body segment images to produce a second digital photograph, said second digital photograph representing a predicted appearance of said person following said regimen.

    Patent number: 5770841

    System and method for reading package information

    1. A method for reading package information from a package, said package information including machine-readable first information indicia and alphanumeric second information indicia, comprising the steps of:
    capturing an image of said package, said image including said machine-readable first information indicia and said alphanumeric second information indicia;
    locating said machine-readable first information indicia in said image;
    automatically decoding said machine-readable first information indicia to provide package identification data;
    locating said alphanumeric second information indicia;
    automatically decoding said alphanumeric second information indicia to provide package destination data;
    combining at least a portion of said package identification data and at least a portion of said package destination data to form a unified package record; and
    affixing third information indicia to said package, said third information indicia being machine readable and comprising said unified package record.

  39. “To date you have failed to explain why a single claim in either application is not patent-eligible under SCOTUS Bilski.”

    I think I can handle this one. A hypothetical claim is invalid when it preempts and abstract idea.

    “I also gave you Lungens famous patent as an example of a claim with no machine, transformation or technology. ”

    I must have missed the link. Should I expect to find an abstract idea be preempt on the other end of the link? If so, spare me the time.

  40. AI: link to faqs.org
    Since it’s good old predictable AI, I suppose it shouldn’t surprise me that his best example was a patent application that currently stands abandoned for failure to respond to a 101 rejection.
    Hilarious, and yet somehow very sad.
    Posted by: IANAE | Aug 31, 2010 at 09:46 AM

    ___________________________

    You asked for a single patent-eligible claim and I gave it to you. It does not matter if the patent application was abandon or rejected under the CAFC exclusive MOT test since that case has now been overruled by SCOTUS which is what this discussion is about.

    I also gave you Lungens famous patent as an example of a claim with no machine, transformation or technology.

    To date you have failed to explain why a single claim in either application is not patent-eligible under SCOTUS Bilski.

    This in addition to your failure to cite one section, one paragraph or even one sentence in Diehr or SCOTUS Bilski that limits statutory subject matter to Machines or Transformations.

    The simple fact is I challenged you and you failed to respond. Thus proving you are an intellectual weakling and coward.

    CASE CLOSED!

  41. “Since it’s good old predictable AI, I suppose it shouldn’t surprise me that his best example was a patent application that currently stands abandoned for failure to respond to a 101 rejection.”

    LOLOLOLOLOLOLOLOLOLOLOLOL.

    I didn’t even check.

    LOLOLOLOLOLOLOLOLOLOLOLOL.

  42. AI: link to faqs.org

    Since it’s good old predictable AI, I suppose it shouldn’t surprise me that his best example was a patent application that currently stands abandoned for failure to respond to a 101 rejection.

    Hilarious, and yet somehow very sad.

  43. I’m sure they do Ping. A patent that cannot easily be invalidated is a “strong” patent, no? Well, at the moment that applies to a lot of “barely computerized algorithm” patents, which possibly explains why so many NPE targets choose to settle.

  44. but what about – ping aint no chick.

    what about ya get some brains? 6 sure do bring the chuckles, though.

    clarified beyond Bilski” and “Lots of NPE-asserted claims” – Ah Pook – I done tole you many times now, with links and all to Pete Zura’s study on the types of patents NPE’s like – they like STRONG patents.

  45. When I look at the defendants in this case, I can’t help thinking that most if not all of them are NPE-targets with a clear interest in getting the law clarified beyond Bilski (including Microsoft – not a party but with obvious links to the plaintiff).

    The USPTO routinely grants patents with claims in the form:

    A computer system/computerised method that
    Takes data X as input
    Applies algorithm Y to data X
    Outputs data Z.

    The mere mention of a computer seems to be enough to satisfy the PTO re MOT for method claims. Similarly, “a computer configured to…” seems to be enough for apparatus claims, in the eyes of the PTO.

    There must be tens of thousands of patents out there by now with claims that fit that template. Lots of NPE-asserted claims certainly do. To my knowledge, this entire class of patent claim (let’s call them “barely computerized algorithms”) has never been tested by SCOTUS.

    Say what you like about Diehr, you won’t convince me that it provides explicit support for such claims satisfying 101.

    Upthread, I attempted to set out an argument why claims in this form could be nixed as “abstract”, regardless of being – nominally – MOT-method or apparatus claims: they don’t actually define an invention, only the idea of a desirable method or apparatus.

    (Sure, there will always be a fine and fuzzy line between claims that are *too abstract* and claims that are *sufficiently concrete*)
    (The fact that they may fail patentability/eligibility for other reasons is beside the point)

    I understand that many here have no interest in shooting the goose that keeps laying the golden eggs. “Enlightened self-interest” is a fascinating concept, I’ve always thought.

    I can’t help thinking (or should I say “hoping”?) that this case has been launched deliberately as SCOTUS-fodder.

  46. Wait, do 6 and ping know eachother? If so, you guys (gender neutral form, 6 is a man and ping is a woman) should really consider going on a date. Opposites do attract and you both have a knack for interoffice gossip.

    No one has mentioned any laches defense. Needless to say, all the companies alleged infringing activity was obvious and open for several years. Even if the court drinks kool aid and decides patent pool wins, laches would prevent past damages.

    Why has no one discussed this?
    Also, the lack of MS likely indicates that MS has a license to use the patents.

  47. the poor MM? Sarah you have gone mad. MM must be rich to spend all his time blogging or he works for the government and his waiting it out for his fat pension.

  48. Posted by: AI’s Dear Diehrist | Aug 30, 2010 at 04:15 PM: The ealier decisions were led by the loser Stevens, who would send us back to the 18th century. Don’t forget that Stevens was a minority in Diehr – he hated what it did to his anti-patent beliefs. Bilski took his last chance and kicked him in the teeth.

    Just like it did to the anti-patent people that post here all the time!

    !! BILSKI 14 !!

    ________

    Ianae/MM and 6 are the three stooges of 101 case law. In their backwards delusional world Flook cabined Diehr, Stevens was appointed Chief Justice of the Supreme Court and 6 passed the LSAT.

  49. 6: Wrote: link to freepatentsonline.com

    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
    __________

    Oh was that too hard for you???

    Then try Dr LUNDGREN’S Patent.

    No machine.

    No Transformation.

    No Technology whatsoever and he has a valid patent.

    So much for you and IANAE’s position that the SCOTUS Bilski or Diehr requires a machine or transformation for 101.

  50. Let’s open it up to the entire patent community. Is there any Patent Attorney /Professional that agrees with 6 and Inane that Diehr or SCOTUS Bilski limited statutory subject matter to Machines or Transformations?

    ::Crickets Chirping::

  51. 6 | Aug 30, 2010 at 05:25 PM

    AI: “Okay, let’s end this. I challenge you or 6 to cite one section, one paragraph or even one sentence in Diehr or SCOTUS Bilski that limits statutory subject matter to Machines or Transformations.”

    Do you see? He wants soundbytes. He only understands sound-bytes. He lacks the capacity to read or understand a decision when taken as a whole. In other words, he has trouble reading in context.

    ________

    In other words you can’t do it. Nuff said.

  52. “I challenge you to come up with a single patent-eligible claim that lacks both a machine and a transformation. Whether it’s from a court decision or not.”

    I could give you one that I think is, or “should be” patent eligible that lacked both a machine (at least at filing) and a transformation (before I got them to put a small one in just to be on the safe side after Bilski at the CAFC). But if I did so I may as well plaster my name right up here for all to see.

    “Okay, let’s end this. I challenge you or 6 to cite one section, one paragraph or even one sentence in Diehr or SCOTUS Bilski that limits statutory subject matter to Machines or Transformations.”

    Do you see? He wants soundbytes. He only understands sound-bytes. He lacks the capacity to read or understand a decision when taken as a whole. In other words, he has trouble reading in context.

    “6 you can’t cite a single paragraph from Diehr thats supports your personal beliefs about 101. ”

    Indeed, that’s because all of the paragraphs from Diehr support my personal beliefs about 101. Thus it is practically impossible to cite just one that supports my beliefs. Beliefs that, I just so happen to notice, seem to be spreading to your District Courts.

    Either way, go read it yourself and see what all the rage is about. And don’t just skim looking for soundbytes that you might like. Read every word, one after another and attempt to understand what the situation is and what they’re saying about it. Don’t skip any sentences.

  53. I challenge you or 6 to cite one section, one paragraph or even one sentence in Diehr or SCOTUS Bilski that limits statutory subject matter to Machines or Transformations.

    I challenge you to come up with a single patent-eligible claim that lacks both a machine and a transformation. Whether it’s from a court decision or not.

    ::SILENCE::

    Posted by: IANAE | Aug 30, 2010 at 04:45 PM
    _______________

    link to faqs.org

  54. Ping you told me I knew what I had to do. You have to do that all by yourself. It will be in your Client’s Defense, I think that’s how they put it.
    Me I hope to crush grapes, make whine, and then drink it.
    I can remember being told something was filed for me. Can you believe them apples… oops I mean Grapes. LOLOLOL.
    I think it was after it was unfiled. …. LOL
    For Me LOLOLOLOLOLOL ROFLMAO
    And that Mad Hatter what a pistol the queen arrested him before he committed another Crime. I never read Alice in Wonderland. but i will now.

  55. I challenge you or 6 to cite one section, one paragraph or even one sentence in Diehr or SCOTUS Bilski that limits statutory subject matter to Machines or Transformations.

    I challenge you to come up with a single patent-eligible claim that lacks both a machine and a transformation. Whether it’s from a court decision or not.

    ::SILENCE::

  56. In short, I don’t think it is fair to say that the patentbility of the claim in Diehr hung on the limitation to opening the press.

    Diehr might have gotten away with a computer taking temperature measurements from the press and then telling a person when to open it. Maybe. That’s not entirely clear. What is entirely clear is that the redeeming feature of Diehr was tying the calculation to a particular machine executing a particular transformation, in such a way that other uses of that calculation were left available to the public.

  57. “AI: The SCOTUS did NOT limit patent eligible subject matter to Machines and Transformation as much as you want to believe that. Its no were in the judicial record. If it were you would cite it and end this debate.

    Posted by: IANAE | Aug 30, 2010 at 04:36 PM: 6: AI can’t read a whole decision. He lacks the capacity. He has, in fact, never read Diehr.

    I’m going to side with 6 on this one. I’ve quoted Diehr often enough, but apparently AI doesn’t accept the “short form” version as an authority.

    There’s no helping some people…”

    _______

    Okay, let’s end this. I challenge you or 6 to cite one section, one paragraph or even one sentence in Diehr or SCOTUS Bilski that limits statutory subject matter to Machines or Transformations.

    ::SILENCE::

  58. AI: The SCOTUS did NOT limit patent eligible subject matter to Machines and Transformation as much as you want to believe that. Its no were in the judicial record. If it were you would cite it and end this debate.

    6: AI can’t read a whole decision. He lacks the capacity. He has, in fact, never read Diehr.

    I’m going to side with 6 on this one. I’ve quoted Diehr often enough, but apparently AI doesn’t accept the “short form” version as an authority.

    There’s no helping some people…

  59. If the Diehr computer had simply told a human when to open the mold, it would have been the Flook case all over again.

    I don’t think that’s a fair statement.

    As SCOTUS said in Diehr, Flook’s claim is different because it does not define what the parameter of the process that is being measured represents, and it merley recited measuring and generating an larm in the abstract, and not in any particular way.

    So if the Diehr claim had left out entirely the step of opening the press, or had told a human operator when to open it, the claim would still be different because the claim specifies what data is being measured.

    Moreover, if the claim specified particular machinery for telling a user when to open the press, or claimed means described in the spec, then it would also be different from Flook.

    In short, I don’t think it is fair to say that the patentbility of the claim in Diehr hung on the limitation to opening the press.

  60. Posted by: 6 | Aug 30, 2010 at 04:08 PM : IANAE, AI can’t read a whole decision. He lacks the capacity. He has, in fact, never read Diehr. He just likes to sound byte from it.”

    6 you can’t cite a single paragraph from Diehr thats supports your personal beliefs about 101.

    All you could before SCOTUS Bilski is plagiarize Steven’s Diehr dissent hoping that would be the gloss SCOTUS applied in Bilski.

    Now that the majority sent ya main man Steven’s out to pasture and upheld the concept and application test ( AKA DCAT) as equal to the MOT test you have been rendered impotent.

  61. AI:Diehr would have received his patent for his process no matter what technology he was using even if it was just his hands.

    INANE: If the Diehr computer had simply told a human when to open the mold, it would have been the Flook case all over again. Or do you mean Diehr would be patentable even if a human were doing the numerical integration in his head?

    AI: I mean exactly what I said, “Diehr would have received his patent for his process no matter what technology he was using even if it was just his hands”. The SCOTUS did NOT limit patent eligible subject matter to Machines and Transformation as much as you want to believe that. Its no were in the judicial record. If it were you would cite it and end this debate. As it stands now you are simply delusional and deep 6 drunk.

  62. Ah Pook, prog. comp. adapted to “do something” new.

    OK from a 101 perspective.

    If enabled in the spec., OK from WD and enablement.

    Claim, however, is a single means claim — not saved under 112, p. 6. Claim is invalid under Halliburton.

  63. IANAE,

    Thank you for the reason to once again proclaim loudly and proudly:

    !! BILSKI 14 !!

    You see, you are trying to revise history with your “Bilski upheld Diehr. And upheld Parker and Flook, which put some serious limits on the patent-eligibility of computer-implemented inventions that do nothing but calculate and output data“. What Bilski did was not merely uphold Parker and Flook like you would want to believe – what the majority in Bilski did was to cabin Parker and Flook to what Diehr proclaims.

    The ealier decisions were led by the loser Stevens, who would send us back to the 18th century. Don’t forget that Stevens was a minority in Diehr – he hated what it did to his anti-patent beliefs. Bilski took his last chance and kicked him in the teeth.

    Just like it did to the anti-patent people that post here all the time!

    !! BILSKI 14 !!

  64. IANAE, AI can’t read a whole decision. He lacks the capacity. He has, in fact, never read Diehr. He just likes to sound byte from it.

    There is no point in your discussing it with him until he reads it with more than a passing glance.

  65. Diehr would have received his patent for his process no matter what technology he was using even if it was just his hands.

    If the Diehr computer had simply told a human when to open the mold, it would have been the Flook case all over again. Or do you mean Diehr would be patentable even if a human were doing the numerical integration in his head?

    The only reason Diehr got his patent was because the algorithm was directly implemented in a machine and a transformation. I’m not making that up. That’s what the Supreme Court said.

    You Diehr revisionist need to put down the kool aid and accept that you lost at the SCOTUS and come on into the 21st century.

    Revisionist? I’ve quoted Diehr to you time and again. Bilski upheld Diehr. And upheld Parker and Flook, which put some serious limits on the patent-eligibility of computer-implemented inventions that do nothing but calculate and output data. And upheld the machine-or-transformation test that was articulated almost verbatim in Diehr.

    The only thing Bilski changed was that now even a MOT claim can in principle be invalidated as being directed to an abstract idea. I’m sure some creative litigator will challenge all those DNA diagnostic tests under Bilski one of these days. Actual Inventors win? Only if you’re a really good lexicographer.

  66. Posted by: IANAE | Aug 30, 2010 at 03:12 PM “Diehr was a computer actually doing something (machine and transformation, as the Supremes were careful to point out) by implementing an abstract idea.”
    _______

    Wrong. Diehr was a process for a human operator using a number of different technologies including a computer, in the aid of molding rubber.

    Diehr would have received his patent for his process no matter what technology he was using even if it was just his hands.

    And as the SCOTUS pointed out it was the “application” of the concept the process was based on and not the transformation or machine(s) used that made Diehrs invention statutory subject matter.

    You Diehr revisionist need to put down the kool aid and accept that you lost at the SCOTUS and come on into the 21st century.

  67. 7: SCOTUS already addressed that in Diehr. Computer implementation of abstract idea = patentable subject matter.

    Diehr was a computer actually doing something (machine and transformation, as the Supremes were careful to point out) by implementing an abstract idea.

    There’s a big difference between tying your abstract idea to a machine or a transformation (which is still mostly the test for patent-eligibility) on the one hand, and merely outputting the result of your calculation (see e.g. Flook) on the other hand.

    The difference, in a nutshell, is between “my discovery can be used in this practical application” and “my discovery can be told to people by a computer”.

  68. Mooney–

    I agree wholeheartedly with WCG’s critique of your comments.

    Also, exactly where was it that Rader J. demonstrated “astuteness” in a recent case?

    Posted by: Inviting Body Punches | Aug 29, 2010 at 04:51 PM

    __________

    Agreed,

    Mooney obviously can’t program a computer and in any language.

    Cant design, engineer and build a computer.

    Has no degree in Computer Science or Information Systems.

    Yet thinks his ability to type on a keyboard and post snarky comments about BIG OH Computers Brains discredits patents on complex information processing systems.

    Now I should stop posting for a while since I am agreeing with WCG and IBP.

  69. Posted by: 7 | Aug 30, 2010 at 06:19 AM: “Oh hai. SCOTUS already addressed that in Diehr. Computer implementation of abstract idea = patentable subject matter. Until Diehr is overruled, that’s the law.”

    Agreed. And this will remain the law for at least another 10 years since the libs don’t have the votes to overrule Diehr. Speculative posts to the contrary only serve to make MM and 6 get tight pants.

  70. I always wondered why you weren’t degrading the poor MM anymore NWPA? Then it dawned on me, as in DUH!. You know it was mentioned time and time again in my writings. And then your nasty Mad Hatter Comment that was the killer.
    LOL

  71. ” Also, there’s likely to be a significant exchange on whether the claimed subject matter passes muster in view of Bilski v. Kappos for describing “patent-eligible” subject matter under 35 USC 101. ”

    I can’t wait. Juicy juicy 101 discussion.

  72. “6 – Your ignorance on this subject is well established. We can jump on the merry go round if you want, but all the same, I say let’s skip it today.”

    What man? I just loled. That’s all. Cool your jets.

  73. I agree it is going to be interesting because we are likely going to get some of the best litigators with huge budgets going at it in the Bilski space.

    Maybe you could keep the court filings up on your website.

  74. It’s going to be very interesting to see how this suit develops. As noted by others, the complaint is pretty “bare,” and may have been intentionally crafted as such to force Apple et al. to “ferret out” through discovery what that “theory” is for infringement.

    For the most recent patents asserted in this suit (US 6788314 and 6757682) it’s also going to be interesting to see if the description in them (mainly to explain what’s in the drawings) will be deemed to enable the claimed scope under 35 USC 112, paragraph 1. Also, there’s likely to be a significant exchange on whether the claimed subject matter passes muster in view of Bilski v. Kappos for describing “patent-eligible” subject matter under 35 USC 101. That’s before we even get to the patentability issues under 35 USC 102/103.

  75. OK, put it this way: my hypothetical claim doesn’t define an invention at all. It defines a mere desideratum. To me, it’s quite reasonable to call that “mere desideratum” an “abstract idea” and use 101 to dispose of it. The same goes for claim 1 of 6,757,682 as quoted in the main post.

    A creative discussion requires a degree of willingness, imagination and open-mindedness from the parties.

  76. Funny, Ah Pook, most people call exploring without a clue where you are at “being lost”. I think it is “creative thinking” to call it creative thinking.

    6 – Your ignorance on this subject is well established. We can jump on the merry go round if you want, but all the same, I say let’s skip it today.

  77. >>I claim: A programmable humanoid robot adapted >>to tap-dance and juggle a plurality of spherical >>objects while whistling “Dixie”.
    >>That, I submit, is a claim to an abstract >>idea, in the absence of any concrete features >>that enable the robot to perform as defined.

    Ah Pook: “only of what it does” and not how it does it. But it is enabled!!!

    Trying to untangle the absurdity of your logic is beyond me today. I can only say you should look at some mechanical patents and try to apply the same logic and see where it leads.

    Abstract is now a witch hunter’s term.

    Just sad how poorly you think, Ah Pooh.

  78. Ned
    The claim could very well be enabled by the spec, at least to the extent of one or more embodiments being enabled. I’m arguing that a claim to a machine defined in terms only of what it does, with no reference to how it does it, defines only an abstract idea of a machine, and not a machine per se. That doesn’t meen that enablement across its full scope wouldn’t be an issue also.

    I quite agree that a programmed computer that “does” something new and useful is a new machine. But it’s how it is defined by the claim that determines whether or not it is abstract, not the mere fact of the claim being directed to a computer.

    The Supremes have put “abstract” back at the center of the action. It remains to be seen how these things will play out in reality.

  79. Ah Pook — I think you mean the claim is to a machine, quite statutory, but the claim is not enabled by the spec.

    A programmed computer that “does” something new and useful is a new machine.

  80. Question: The determining step is a sub-step of the processing step according to the spec.; but the claim states they are two independent elements. (I made this point near the top. “Processing” means all the steps from receipt to inform.) It would seem to me that the claim is fatally flawed on its face.

    What say you?

  81. I claim:

    A programmable humanoid robot adapted to tap-dance and juggle a plurality of spherical objects while whistling “Dixie”.

    That, I submit, is a claim to an abstract idea, in the absence of any concrete features that enable the robot to perform as defined.

  82. When I worked at McDonald’s in high school, this was taught as a “suggestive sale” which we were required to do when taking an order.

    You received from a source other than the customer an indication that fries are of current interest?

    Did you then process that indication, and later inform the customer that he might want fries with that?

    Did you sometimes ask the customer whether he’d want a hot apple pie with that? Did your “source” tell you to do that only when the customer ordered fries? That would probably count as adjusting the intensity value of those items.

    Per Appalat, when a general purpose processor is programmed with instructions it becomes a specific purpose processor. A specific purpose processor passes the MOT test.

    What a convenient way to define the general purpose processor out of existence. If it does anything at all, it’s not a regular computer anymore. It’s a whole new machine that can still be reprogrammed in exactly the same way as any other general purpose computer. I suppose that makes any recitation of a “general purpose computer” indefinite or inoperable, since apparently general purpose computers have their memory full of all ones or all zeros as a matter of law.

    Say, wouldn’t this standard pretty much make Benson and Flook statutory? After all, those computers were programmed to do stuff.

  83. >>My guess – and this is just a hunch – is that >>the minute you have implemented the idea, it >>is no longer abstract.

    EXACTLY! According to MM and sods an inventor could build a machine that performed all functions of a human being in a profession–say construction–but would be ineligible for patentability because it was abstract. Huh?

  84. Sorry, that should have read:
    “A claim drawn to subject matter otherwise nonstatutory becomes statutory simply because it uses a digital computer.”

  85. From Diehr:
    “A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer.”

    How do you get from there to here?:
    “A claim drawn to subject matter otherwise nonstatutory does not become statutory simply because it uses a digital computer.”

  86. that applied the abstract idea test the other day.

    Ya know – the one that runs the nice little circle of put in an abstract idea and crank the handle and get out an abstract idea (and put in a non-abstract idea, crank the handle…)

    was what to do with bare/obvious computerised implementations of abstract ideas.

    My guess – and this is just a hunch – is that the minute you have implemented the idea, it is no longer abstract.

    Just a hunch.

  87. “One of the many interesting questions that the SCOTUS failed to address in Bilski was what to do with bare/obvious computerised implementations of abstract ideas. This is a case in point.”

    Oh hai. SCOTUS already addressed that in Diehr. Computer implementation of abstract idea = patentable subject matter. Until Diehr is overruled, that’s the law.

  88. This is exactly the sort of thing that should fail as “abstract” regardless of MOT.

    “Ego teneo is ut ego animadverto is”

    [according to a free online translation service, that's Latin for "I know it when I see it" - of course, the asme service translated it back into English as "I to occupy this when I notice this". You get what you pay for, as ever.]

    One of the many interesting questions that the SCOTUS failed to address in Bilski was what to do with bare/obvious computerised implementations of abstract ideas. This is a case in point.

  89. “So, in what world is there a 101 issue with this claim? The world where the law is what MM and 6 *want* it to be? ”

    I didn’t raise a 101 issue, but now that you mention it, it might be a hypothetical 101 issue in the world of the DC judge that applied the abstract idea test the other day.

  90. Mooney–

    I agree wholeheartedly with WCG’s critique of your comments.

    Also, exactly where was it that Rader J. demonstrated “astuteness” in a recent case?

  91. How is this 101 ineligible? It’s not “abstract.” It recites a general purpose processor. Per Appalat, when a general purpose processor is programmed with instructions it becomes a specific purpose processor. A specific purpose processor passes the MOT test. Oh and btw, Diehr is still good law.

    So, in what world is there a 101 issue with this claim? The world where the law is what MM and 6 *want* it to be?

    This claim is probably easily tanked under 103, mind you.

  92. …not to mention that that part also enjoys the hyper-inflated benefit of a PHOSITA, given the KSR ruling.

    The veritable double edged sword of unintended consequences, methinks.

  93. The above debate on 112 enablement in patents like this needs the second part of the 112 enablement requirement, which is generally expressable as “when one skilled in the art, after reading he specification, could practice the claimed invention without undue experimentation.” The “without undue experimentation” is the hard part, and of course highly fact dependent and debatable, and dependent on the general state of the art as of the subject patent’s filing date.

  94. Not to comment on these particular patents, but the CAFC does seem lately to be demanding more description than “do it on a general purpose computer” for 112 enablement of claim elements, especially “means for” functional claims. E.g., Aristocrat Technologies Australia PTY Ltd. v. Int’l Game Technology, __ F.3d __ (Fed. Cir. 2008) where the panel affirmed invalidity on a claim including a “means” element only recited in terms of a general purpose computer without recitation of any specific means for the claimed function, and also provides a discussion as to why such claims are especially dangerous where the applicant fails to recite any specific structure corresponding to the “means”.
    [Of course a defendant might have to spend several million dollars for a jury trial and appeal to get to that point?]

  95. Ping: There are, as you probably know two issues under 35 USC 112(6). One is support as you rightly suggest. The other is claim scope, which covers the embodiments disclosed in the specification and equivalents. Not as broad as is sometimes thought, as my US colleagues keep telling me.

    Paul

  96. anon,

    How silly of the Office to permit this patent given your stellar logic. Didn’t the Office just know how KSR would eventually come out?

    After all, it was only decided three years after the patent issued.

    Of all the nerve.

  97. What’s described is a standard wall street analyst’s workstation, dating back decades. The only change – they do it on the INTERNET. Didn’t the Supremes rule that combining two current obvious items is NOT patentable (it was about brake pedals, but the meaning is the same).

  98. Paul,

    Good question, unfortunately the image file wrapper in PAIR does not have the documents electronically available.

    I’m not sure I’m following your thoughts (Rader thoughts) on the claims lacking engineering detail. Ima pretty sure that I have never seen a claim that has been sufficiently detailed to provide full engineering rigor.

  99. “I don’t have any prior art on hand, but the claim sure feels obvious (in hindsight)…”

    is there really any doubt that DC = MM???

  100. If I were defending this case, I would probably try to develop an argument that the claims are of the means or step + function type within 35 USC 112(6) and that they are therefore to be narrowly construed.

    There is an interesting question whether recitation of “a computer” should imply sufficient apparatus to avoid the provisions of the section, where everything else in this part of the claim is pure function. A computer is somewhat more general purpose than an amplifier, and it is arguable that we are indeed looking at a purely functional claim here.

    And the comment in Martin v Alliance Machine about the lack of “engineering detail” is relevant here – the claims contain much about what is to be done but nothing about what is necessary to do it. 35 USC 103 here as well as 35 USC 112 perhaps?

    Incidentally it has taken about 10 minutes to identify these objections – I wonder whether they were dealt with in the file wrapper?

  101. Re : Prior Art
    At least one of the patents could be considered an evolution of the text-based terminal systems used in the ’70′s + ’80′s. I’m referring to the multi-host quote and 3270-equivalent units made by Bunker Ramo and Quotron. Going from text-based to GUI and MIS-configured to user-configured seems to be simply following the usual trends in personal computing.

  102. “So you don’t think a person skilled in the art (e.g., a computer programmer knowledgeable in internet communications) would be able to configure a computer so that it receives, processes, identifies, and informs as claimed by reading the functionality disclosed in the written description, reviewing the block diagrams, seeing the exemplary screen shots, seeing the data and database structures, etc…?

    I am confident that such person skilled in the art would be able make and use a computer configured to perform the claimed elements after reading the written description.”

    Hypothetically speaking, the question is not enablement, or “whether or not a person skilled in the art would be able to configure a computer thus.

    The question is whether or not that person of ordinary comp sci tardness has explained to me what that configuration is, and more specifically, whether they’ve shown me enough for me to understand what that configuration is. Also, whether or not all claimed elements are shown in the drawings. I love that last one :)

    “I’m sure he or she will.”

    So far nobody who has received such an hypothetical objection has. But hey, you never know when someone will be able to.

    ” It is pretty clear what these patents are, and I count as PHOSITA”

    Is it pretty clear what the configuration is? Please, be so kind as to draw me a picture.

    Hypothetically speaking of course.

  103. >Perhaps you would, but a PHOSITA would not. In >fact, a PHOSITA would understand the real >invention disclosed.

    I agree with West Coast Guy. It is pretty clear what these patents are, and I count as PHOSITA.

  104. 6,

    “You still have to mentally execute the algorithm “inquire into what does my employer want me to say, realize employer wants you to say x”. It is a mental algorithm”

    In the conversation with BHR, I see the cashier as being programmed with management’s algorithm and executing the isntructions of the algorithm.

  105. 6,

    “When I send a response, I’ll be sure to ask the person doing the petition to fill me in on exactly what it was that good ol’ ordinary skill would fill in.”

    I’m sure he or she will.

    “What is the “real invention disclosed”? You can’t even see a key portion of it in the drawings.”

    So you don’t think a person skilled in the art (e.g., a computer programmer knowledgeable in internet communications) would be able to configure a computer so that it receives, processes, identifies, and informs as claimed by reading the functionality disclosed in the written description, reviewing the block diagrams, seeing the exemplary screen shots, seeing the data and database structures, etc…?

    I am confident that such person skilled in the art would be able make and use a computer configured to perform the claimed elements after reading the written description.

    Please don’t forget that the inventor is writing to the person skilled in the art and not a person not skilled in the art like a judge or examiner asigned to the wrong art unit.

  106. ” Not a mental algorithm but a management algorithm. ”

    You still have to mentally execute the algorithm “inquire into what does my employer want me to say, realize employer wants you to say x”. It is a mental algorithm.

  107. “Perhaps you would, but a PHOSITA would not”

    You can claim that, and feel free to petition. When I send a response, I’ll be sure to ask the person doing the petition to fill me in on exactly what it was that good ol’ ordinary skill would fill in.

    ” In fact, a PHOSITA would understand the real invention disclosed. ”

    What is the “real invention disclosed”? You can’t even see a key portion of it in the drawings. Go ahead, whip me up something that ordinary skill would fill in.

  108. BHR,

    “its still an algorithm”

    Sure. Not a mental algorithm but a management algorithm.

    Now, if you’re attempting to make an analogy with the above claim, I would suggest making one that doesn’t involve face-to-face contact or one that requires interaction between two individuals who know they’re interacting with one another.

    The claim goes more towards data mining or surveillance; it is not a claim of conducting business (although a business could use the results of the mining/surveillance).

  109. “No mental algorithm — just a requirement of the job.”

    So management developed the algorithm and programmed the cashiers to automatically suggest fries as a job requirement – its still an algorithm.

  110. 6,

    “I would need to know such information to properly understand the hypothetical invention.”

    Perhaps you would, but a PHOSITA would not. In fact, a PHOSITA would understand the real invention disclosed.

  111. ” It shows the claimed computer and database (the web server is disclosed as the computer) and more.”

    I already looked at the hypothetical Figs. Where is the hypothetically claimed “configured to” configuration? I’m not seeing any drawings of the hypothetical configuration inside the computer that is to do all that stuff :( . I would need to know such information to properly understand the hypothetical invention.

    Hey guys I have a question, if my uncle has “invented” or come up with a broad idea for a small product how much can I help him reduce it further to practice without being considered an “inventor”? And if none, then is there a way I can help him with it and him still be able to apply for the patent? Perhaps my signing on as a non-cooperative inventor?

  112. 6,

    Look at FIG. 1 of Patent No. 6,757,682 from which the above claim has been copied. It shows the claimed computer and database (the web server is disclosed as the computer) and more.

    The drawing which Dennnis has included with this article is NOT part of the ’682 patent.

  113. BHR,

    “When I buy a hamburger the girl at McDonald’s asks if I want fries.”

    When I worked at McDonald’s in high school, this was taught as a “suggestive sale” which we were required to do when taking an order. No mental algorithm — just a requirement of the job.

  114. When I buy a hamburger the girl at McDonald’s asks if I want fries.

    When I buy a suit the clerk asks if I want to look at ties.

    I guess they are all running their own mental algorithm and calculating that fries or ties might be of current interest.

  115. “Since when has “technical” been the standard of which to meet to get a patent? ”

    I require drawings for product claims in order to better understand the invention. Where is the configuration shown in some hypothetical drawings?

  116. Malcolm,

    You comment about the lack of “technical details” and “technical solution.” Since when has “technical” been the standard of which to meet to get a patent?

    Where does the 101 standard of “new and useful” process or “new and useful” improvement factor into your personal requirement for a “technical solution”?

    I re-read 112p1 and 112p2, and contrary to your comments, there is still no requirement for “technical” details in the specification.

    Perhaps a personal re-read of 112p1 and 112p2 to refresh your recollection is in order?

  117. NWPA, if you can find some art that looks great who knows, just call the attorneys on the case and cut them a deal. Who knows they might take it.

  118. Actually on that topic though, I just got an email about some higher up in the DOC stepping down, maybe Rai is taking his place. In other words, getting a “promotion” of sorts.

  119. “Was he spouting nonsense about Google changing search results to punish people who sue them?”

    O snap, that’s pretty harsh. Come on, Eugene is obviously a mor on, but I don’t think he’d be that interested in Rai, his wife is pretty hot herself iirc.

    He does get some good interviews though I have to say.

  120. “There are no pre-existing mathematical algorithms which can turn an otherwise obvious invention into a non-obvious invention”

    MM: big, blanket, bright-line statements will only make people take you seriously to a point (not that anyone here takes you seriously anymore). When the statements are flagrantly incorrect, it merely reinforces your irrelevance.

  121. NWPA,

    There is. A decade ago it was Bounty Quest. These days, it is Article One Partners.

    Unfortunately, the judging is all behind closed doors and you will more likely be working for free or virtually for free considering the dollar amounts involved in cases like this. Have at it though…

  122. “There was no comment from Ms Rai that she was leaving because some fatboy started following her around the halls of the office”

    Was he spouting nonsense about Google changing search results to punish people who sue them?

  123. I wonder how we could make money by providing arguments for invalidity for these patents.

    Too bad there isn’t some way to have a competitive market for providing these services where the best arguments are paid for.

  124. Seems interesting that he is not going after Microsoft. I’d guess there is a anti-trust issue there that could be raised. At least it would seem that not going after Microsoft would be relevant for damages. Not sure, but seems like there is an issue there. If you hold a monopoly, and own stock of a company, and then try to get money from the competitors of the company but not the company, hmmm. Seems anticompetitive and maybe a way to avoid paying taxes too.

  125. I read a bit of the patent including the claims for not distracting someone. I think that some of these claims are clever in that they include steps and configurations that were not used until very naerly the time of the patent application. Such things as the instructions for displaying being part of what is received. Clever way to get rid of prior art, but not relevant to the invention.

  126. “back-damages can still be available even when the infringement occurred without knowledge of the patent” …

    Well, that might be true for a _process_ type claim, but that there exemplary claim 1. is a _system_ type claim …

    Thus, Mr. Allen may need to prove MARKING of an article offered for sale, in order to open the window for any sort of damages to accrue prior to the date when each of the alleged infringers had actual notice. See 35 USC 287.

  127. Are some of the claims going to have a “joint infringement” problem? [AKA no infringment, a la Golden Hour v. emsCharts, et al?]

  128. “There was no comment from Ms Rai that she was leaving because some fatboy started following her around the halls of the office.”

    Lol, I found her leaving quite a coincidence as well, but in all srsness, I only saw the girl I think was her in passing, one time and I didn’t even stare. Not even fin with you.

    On the other hand, she might have more fans than just me.

    Am sorry to be losing such a high caliber person though. I assume she’s leaving because they need her to go ahead and bring Osama bin Laden in for us, Jack Bauer style.

  129. Yes, James, it’s described as capable of being determined “arbitrarily,” as I noted.

    Respectfully, I think you’re misreading the patent. The word ‘arbitrarily’ is mentioned in an example in column 7. In context it seems clear that it’s being used in the sense that the numerical scale is merely an ordinal or interval scale. That is, the baseline values and increments could be anything; the point is that values can be compared and ranked, not that there is an inherent meaning in the numbers used.

    I don’t see anything claiming the use of arbitrary intensity values in the sense of random values.

  130. It may well be that it was not known in the art or obvious to one of ordinary skill that, for example, an exponential decay function would produce a useful list of items of interest to a user.

    There are no pre-existing mathematical algorithms which can turn an otherwise obvious invention into a non-obvious invention.

  131. the intensity value is fairly well described in the patent

    Yes, James, it’s described as capable of being determined “arbitrarily,” as I noted. For the purposes of determining the claim scope and utter worthlessness of the limitation, that’s all you need to know.

  132. Some issues which I’m probably wrong about, but ….

    “determine an intensity value to be associated with the indication and an intensity weight value, and adjusting the intensity value based on a characteristic for the item provided by the source”

    You need to do two things here. Also proving “intensity value” and “intensity weight value” may not be easy to verify things done in the server end of things. Intensity implies degrees of something which may not be the typical indication.

    “current interest” could raise 112 issues.

    Also, wouldn’t personalization prior art such as associated with Gemstar or Insight Guide be good to use. Think of VOD on a cable network? The EPG says, you may be interested in “X”, or is the intensity feature going to be what is argued as being novel over the possible prior art.

    Of course, all of these issues will be ignored, and the case will be about 101 at the District Court.

  133. I had no idea what “procesing” meant. On review of the patent for a definition, it appears to include all the steps between receiving an alert and notifying the user of an alert. See, Fig. 3 and the discussion of Fig. 6. It would therefor include the steps of “determining” etc. also in the claim and which appear to include the novel elements. Ambiguity anyone?

    I also suspect that since “processing” has no well defined meaning that it would be construed under Section 112, p. 6. Since that construction would include the same steps as later elements in the claim, I think there is a problem with the claim on its face under Section 112, p. 2.

    What does processing mean? What does it include and what does it exclude.

    We the public can’t figure it out.

  134. Actually, the intensity value is fairly well described in the patent with multiple detailed formulas for calculating and ranking intensity values.

    I would agree with you, Malcolm, in that the idea of calling a user’s attention to an item they may be interested in is probably obvious, as is doing so on a website. What may not be obvious are the particular formulas mentioned in the spec. It may well be that it was not known in the art or obvious to one of ordinary skill that, for example, an exponential decay function would produce a useful list of items of interest to a user.

    In this way it’s akin to using the Arrhenius equation to cure rubber as in Diamond v. Diehr.

    Of course, it’s quite possible that the defendants aren’t using any of the formulas defined in the spec. For example, the spec doesn’t mention any kind of Bayesian network, which is a common way to build a product recommendation system, and which I assume is the allegedly infringing feature here.

  135. OT, but this thread was just trolling anyway

    Pete Zura at his 271 blog just announced:

    Arti Rai Departing From The USPTO

    Hal Wegner has just broke the news that Arti Rai, Administrator for External Affairs, is leaving the PTO to an unspecificed position that has not been announced by the government.

    As Administrator for External Affairs, Rai served as a policy adviser to the Under Secretary of Commerce for Intellectual Property and oversaw the office’s work with Congress on major legislation to reform patent law and practice, coordinate informational and educational events on piracy and counterfeiting, and implementing international intellectual property treaties. Rai was sworn into this position on October 9, 2009.

    There was no comment from Ms Rai that she was leaving because some fatboy started following her around the halls of the office.

  136. “What does “well drafted” mean?”

    Srsly. In hypothetical cases I’d go hog 112 wild.

    Also, in hypothetical cases I’d object to drawings. I’d like to see a hypothetical configuration to help me understand the hypothetical invention.

    That’d just be me warming up.

  137. For the record, I still think the computer-implemented method of identifying a bird tops this as an example of a claim which writes itself.

  138. DC The patents are well drafted. Of course, even excellent drafting cannot cure obviousness problems.

    What does “well drafted” mean? No spelling errors?

    This patent is filled with the usual make-no-concession cover-everything boilerplate that makes the obviousness arguments easier than they otherwise would be. See col. 14, lines 12-22.

    The background of the patent states that the purpose of the patent is to help people deal with the proliferation of information by alerting people to things that especially interest them but not things that don’t. Specifically, the background sets up the problem as if you are a nature lover and you want to know when a webcam is showing two gorillas having intercourse, how do you get an alert about that but not about two humans having intercourse on some pron site?

    Now take a look at the claim and ask yourself where is the technical solution to that problem? The answer is that it’s not there. I doubt it’s anywhere in the patent but maybe some “expert” can double check that for me. The claim does not really solve any problem so much as it re-states the problem in claim form as if it were a solution and not just an obvious regurgitation of how your average 14 year old kid would solve the problem if given a pen and a stencil.

  139. 1. A system for disseminating to a participant an indication that an item accessible by the participant via a network is of current interest, comprising:

    a computer configured to

    receive in real time from a source other than the participant an indication that the item is of current interest;

    process the indication;

    determine an intensity value to be associated with the indication and an intensity weight value, and adjusting the intensity value based on a characteristic for the item provided by the source; and

    inform the participant that the item is of current interest; and

    a database, associated with the computer, configured to store data relating to the item.

    Intensity value? That’s pathetic.

    In other words, this claim covers communicating to a person that something they want “this badly” is available to purchase. But OMIGOD IT USES A POWERFUL COMPUTER BRAIN TO DO IT!!!!!!! Too bad that precisely none of the technical details required to accomplish this task in a non-obvious manner are recited in the claim. As Rader astutely pointed out in a recent case, you can’t rely on unclaimed aspects of a method to distinguish that method from the prior art.

    There is no question that people and companies were emailing or otherwise communicating to each other about items “accessibe by a network” which were available for purchase, and there is no question that these people and companies were communicating that information with (LOLOLOL) “intensity values” (according to the spec, these “intensity values” may be “arbitrarily assigned” (no kidding!) and they may be higher if the recipient has expressed interest in the item (no kidding! really?)).

    The only question is whether the attorneys representing these companies are so paranoid about their own incompetence that they suggest that their clients settle. That would be a grave error. It should not cost a great deal of money to tank this stuff (see DC’s recommendations above) and, if done properly, recoup some or all of the attorney fees. Of course, there is the possibility that these companies own so much more equally hideous patents already that they don’t want to create a precedent which explains in matter-of-fact language why most computer-implemented patents are pathetic jokes that make a mockery out of the patent system.

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