Classen Immunotherapies v. Biogen: The Broad, Broad Scope of Statutory Subject Matter

By Jason Rantanen

Classen Immunotherapies, Inc. v. Biogen Idec (Fed. Cir. 2011) Download 06-1634-1649
Panel: Rader (offering "additional views"), Newman (author), Moore (dissent)

There is no doubt that the Federal Circuit continues to struggle mightily with Section 101.  If Myriad were not enough evidence of this, Classen Immunotherapies – and Judge Rader's additional views in particular – should remove all doubt.

Classen Immunotherapies holds three patents that it contends are infringed by virtually everyone: Patent Nos. 6,638,739; 6,420,139; and 5,723,283.  According to the patents, their inventor, Dr. Classen, has discovered that "the schedule of infant immunization for infectious diseases can affect the later occurrence of chronic immune-mediated disorders…and that immunization should be conducted on the schedule that presents the lowest risk with respect to such disorders."  Slip Op. at 5. Claim 1 of the '739 patent is illustrative of Classen's broad claim scope:

1. A method of immunizing a mammalian subject which comprises:

(I) screening a plurality of immunization schedules, by

(a) identifying a first group of mammals and at least a second group of mammals, said mammals being of the same species, the first group of mammals having been immunized with one or more doses of one or more infectious disease-causing organism-associated immunogens according to a first screened immunization schedule, and the second group of mammals having been immunized with one or more doses of one or more infectious disease-causing organism-associated immunogens according to a second screened im-munization schedule, each group of mammals having been immunized according to a different immunization schedule, and

(b) comparing the effectiveness of said first and second screened immunization schedules in pro-tecting against or inducing a chronic immune-mediated disorder in said first and second groups, as a result of which one of said screened immuni-zation schedules may be identified as a lower risk screened immunization schedule and the other of said screened schedules as a higher risk screened immunization schedule with regard to the risk of developing said chronic immune mediated disorder(s),

(II) immunizing said subject according to a subject immunization schedule, according to which at least one of said infectious disease-causing organism-associated immunogens of said lower risk schedule is administered in accordance with said lower risk screened immunization schedule, which administration is associated with a lower risk of development of said chronic immune-mediated disorder(s) than when said immunogen was administered according to said higher risk screened immunization schedule.

Classen asserts that the '139 and '739 patents are infringed "when a health care provider reads the relevant literature and selects and uses an immunization schedule that is of lower risk for development of a chronic immune-mediated disorder."  Slip Op. at 7.  According to Classen, this includes "the act of reviewing the published information, whether or not any change in the immunization schedule is made upon such review."  Id. The '283 patent is similar, except that it does not include the subsequent step of selecting an immunization schedule.  Classen asserts that the '283 patent is infringed "when a person reviews relevant information, whether the person is a producer of vaccines, a health care provider, or a concerned parent."  Slip Op. at 8.  The three patents list several hundred preexisting references relating to immunization schedules, the occurrence of immune-mediated disorders, and studies and reports from the field.

The district court granted summary judgment of invalidity of the asserted claims on the ground that they claimed an abstract idea.  On initial appeal, the CAFC affirmed, with Judge Moore penning an extremely short affirmance.  Following Bilski, the Supreme Court grant-vacate-remanded the case to the Federal Circuit, where it was assigned to the panel of Rader, Newman, and Moore.

 The Majority: Writing for herself and Judge Rader, Judge Newman concluded that while the '283 patent failed to satisfy Section 101, the '139 and '739 patent did.  Although the '139/'739 patents included a mental step, "precedent has recognized that the presence of a mental step is not of itself fatal to § 101 eligibility."  Slip Op. at 15.  Because the claims of these patents include the physical step of immunization, the majority held, they were directed to a "specific, tangible application."  Slip Op. at 18.  This was sufficient to assure the majority, which declined to offer any additional reasoning, of their subject matter patentablity.    On the other hand, the majority held, the '283 patent attempted to claim an abstract idea unfettered to any physical steps.  Thus, it was invalid under Section 101.

The Dissent: Judge Moore disagreed entirely.  "While I confess the precise line to be drawn between patentable subject matter and abstract idea is quite elusive, at least for me, this case is not even close."  Dissent at 6.  All three claims simply constitute abstract subject matter: "Having discovered a principle – that changing the timing of immunization may change the incidence of chronic immune mediated disorders – Classen now seeks to keep it for himself."  Dissent at 8.  While Judge Moore reserves her harshest criticism for the '283 patent, her views on the '139/'739 reach the same conclusion.  "The immunization step of the '739 patent, like updating the alarm limit in Parker v. Flook, 437 U.S. 584 (1978), is nothing more than post-solution activity."  Id. at 9.  That post-solution activity "does not transform the unpatentable principle – that a correlation exists between vacination schedules and incidence of chronic immune disease – into a patentable process.'  Id. at 10.

Judge Rader's Additional Views:  In an unusual move, Judge Rader, joined by Judge Newman, wrote separately to express frustration with the constant use of Section 101 challenges by accused infringers. 

In the last several years, this court has confronted a rising number of challenges under 35 U.S.C. § 101. The language of § 101 is very broad. Nevertheless, litigants continue to urge this court to impose limitations not present in the statute.

For a variety of policy reasons, Judge Rader urges, "[t]his court should decline to accept invitations to restrict subject matter eligibility."  Rader additional views at 2.  Chief among these is the problem that "eligibility restrictions usually engender a health dose of claim-drafting ingenuity," evasions that "add to the cost and complexity of the patent system and may cause technology research to shift to countries where protection is not so difficult or expensive."  Id. at 3.  

Comments: I am troubled by several aspects of the court's opinions.  Particularly concerning is the majority's apparent desire to abdicate the subject matter inquiry altogether, a desire expressed both implicitly, in the majority opinion's unwillingness to offer any substantive reasoning to support its ruling on the '139/'739 patents, and explicitly in Judge Rader's policy statement.  This approach seems problematic on its own, but becomes even more so when coupled with the numerous Supreme Court opinions relating to the issue of subject matter patentability – an area of traditional significance in the patent sphere.  While the Court may have repeatedly suggested that broad categorical rules may be inpermissible, it has nowhere suggested that subject matter arguments lack merit as a class, or that subject matter arguments must fail as a matter of course.  In particular, I find it difficult to see how the '139/'739 patents possibly survive scrutiny under Parker v. Flook, 437 U.S. 584 (1978).  The mental step itself is not a patentable subject, so how can combining it with an act (or the lack of an act) that has previously been done without the mental step make it patentable?   

Nor does Section 101 seem to present such a unique problem that the Federal Circuit should adopt a policy of declining to address arguments relating to it.  Even as Judge Rader criticizes the case law limiting subject matter patentablity because it encourages costly legal design-arounds, he joins with an opinion that does precisely that by drawing the line between the two sets of claims.  Mental step claims are now clearly out; mental step plus claims are now in.  And since every process is simply a link in a longer process, claim drafters need only look one step forward to avoid the effects of the majority's ruling.  Nor should the effects of Judge Rader's parade of horribles be limited to Section 101 – they strike me as equally applicable to Section 102, Section 103, and especially Section 112. 

 

 

 

 

421 thoughts on “Classen Immunotherapies v. Biogen: The Broad, Broad Scope of Statutory Subject Matter

  1. 421

    Thanks AI’s Dear DIehrist! This is great! I am going to go read it all now.

    Anti Patent Ned is Ded.

  2. 420

    Ned: “Actual Inventor, you KNOW that the reason for my post is because YOU made the statement that Diehr had nothing to do with the MOT. ”

    Ned, there is a big difference between an argument acknowledging there is a machine and transformation in Diehr, and that there is a machine and transformation test in Diehr of which his claims were required to pass, in order to be 101 statutory subject matter.

    The latter is what you have argued for either directly, or thru implication for quite some time.

    And rather than admit you lost this argument for a MOT Requirement in Diehr, on the law and facts, you simply chose to be inherently dishonest,

    And now you mutate into further fallacious disease by arguing in circular evasion.

    Congress and the Courts have created the modern legal medicine to wipe out this disease of yours Ned.

    Article 273

    Bilski 11

    Bilksi 14

    Research Corp

    Classen

    But very time a new vaccine is created that can save you with healing legal truth, a new strain of dishonesty emerges.

    Which makes me wonder, is it you Ned Heller that is sick with this disease, or are you the disease itself?

  3. 419

    Or prepare to get you own reputation for running up the hill with your skirt, like Mooney did from NAL.

    Ah, good times, remembered well. Did you get the load from Malcolm on the Human Organisms thread? Malcolm complaining of others using sockpuppets. I literally fell out of my chair laughing. It is an old and tired trick to accuse others of the very actions you yourself do. The game is up.

    And did you see on that same thread anon cutting to the quick and calling for Ned to recognize the law of 273 which is now a bunker because Congress chose not to eliminate the definition of a business method patent? How will Ned choke on that! There is a new rallying cry for Ned:

    ! ! ! Bilski 11 ! ! !

    A conclusion that business methods are not patentable in any circumstance would render [Section]273 meaningless.” So as a category business method patents are through the 101 gate. As individual claims, they still must be judged – just like every other type of method claim.

    ! ! ! Bilski 11 ! ! !

    Of course, the greater aspect of Bilski is the affect on the ability to cite previous case law, at least to cite that previous case law honestly and correctly. That rallying cry has been heard for over a year and will continue to be heard any time history is attempted to be rewritten:

    ! ! ! Bilski 14 ! ! !

  4. 418

    Actual Inventor, you KNOW that the reason for my post is because YOU made the statement that Diehr had nothing to do with the MOT.  I tried for days, politely, to point out to you that it did.  Then, in successive posts over the last couple of days you called ME a liar when I ONCE AGAIN copied and pasted the relevant text from Diehr.  You called me a liar many times, and a goal shifter, and what not.  But all this exchange shows anyone is who  the real liar is, Actual Inventor, all this show to everyone on this blog who the real goal post shifter is, and all this shows, Actual Inventor, is who is so fricken stu—-pid as it makes one cringe to even try to engage in a conversation with him.
     
    I really really regret ever having responded to
    any post of yours. 
     

  5. 417

    Dear Actual Inventor.

    Please calm down and resist the lure of descending into name calling and vulgarities.

    A trap set by Mr. Heller to divert attention from the issues being discussed.

    You have already won the day, as can be seen by the other commenters that have challenged Mr. Heller on the law and exposed his fallacies, and yes, dishonesty.

    So you do not have to engage in such antics as it only distracts from the record of discussion and the considerable ground you have already gained.

  6. 416

    “Analysis of the eligibility of a claim of patent protection for a “process” did not change with the addition of that term to 101. Recently, in Gottschalk v. Benson, 409 U.S.
63 (1972), we repeated the above definition recited in Cochrane v. Deener, adding: “Transformation and reduction of an article `to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.” 409 U.S., at 70 .
Analyzing respondents’ claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the 101 categories of possibly patentable subject matter. That respondents’ claims involve the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing
cannot be disputed.”

    Everything you cut and pasted above was the basis for the CAFC interpretation of Diehr setting a strict and sole requirement for MOT test.

    But the SCOTUS in Bilski smacked that sheet down and sent the clear message there is no such basis in Diehr or any of their precedents.

    And Bilski 14 made sure you understood that went all the way back to Benson!

    And Cochrane v. Deener was only a Clue for transformation as 101 eligibility for a process, NOT a “Requirement!

    Of course you know all of this but just like to l-i-e for the h e double L of it.

    You are the absolute worse.

  7. 415

    “And just for the record, what I am trying to point out to you is that Diehr did involve the MOT, and, in fact, that is what a traditional process is.”

    Yup move them Goal Post! Plus no one said Diehr did not “involve” a machine or transformation. That’s not, nor ever was the argument.

    Nor is the argument about what a “traditional process” is. Thats more deflection and attempts to obfuscate on your part.

    Where did the Supremes ever say a Machine or Transformation is required for Diehrs process, or ANY procees, to be 101 eligible?

    Huh??

    Where?

    Show me now beach!

    And don’t come back with that I already pasted it crapola copout.

    I want you to find it and show me in your NEXT reply. EXACT WORDS, the REQUIREMENT!!!

    NED: “So, when you say that Diehr involved a traditional process but did not involve the MOT, you come across as a complete …..”

    I never said any such thing you dishonest POS.

  8. 414

    And, AI, check my post just five or six above, at 08:42 AM, where I replied to you as follows:

    “From Diehr:

    “Analysis of the eligibility of a claim of patent protection for a “process” did not change with the addition of that term to 101. Recently, in Gottschalk v. Benson, 409 U.S.
    63 (1972), we repeated the above definition recited in Cochrane v. Deener, adding: “Transformation and reduction of an article `to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.” 409 U.S., at 70 .
    Analyzing respondents’ claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the 101 categories of possibly patentable subject matter. That respondents’ claims involve the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing
    cannot be disputed. The respondents’ claims describe in detail a step-by-step method for accomplishing such, beginning with the loading of a mold with raw, uncured rubber and ending with the eventual opening of the press at the conclusion of the cure. Industrial processes such as this are the types which have historically been eligible to receive the protection of our patent laws.”

    And just for the record, what I am trying to point out to you is that Diehr did involve the MOT, and, in fact, that is what a traditional process is.

    So, when you say that Diehr involved a traditional process but did not involve the MOT, you come across as a complete …..

    Which is why I said before that you do not know what you are talking about.

  9. 413

    I copied and pasted the passage.

    Why don't you just ask for it again or admit that you do not know what the not is if you do not want me to copy and paste it again.

    Sent from iPhone

  10. 412

    Ned Heller said in reply to Actual Inventor…

    AI, I already copied and pasted the passage. All that shows is that you do not know what the MOT is.

    _____

    And once again you show your intellectual dishonesty. You never have to be responsible in a debate because you can always conveniently say, oh I have a different definition of what so and so is. And when you are backed into a corner like Um had you in up thread, you suddenly play d u m b and say ..I dont know what that means?

    I made the argument that Diehr received his patent because it was an applied process, to a specific environment, in that case an industrial one. And that no machine or transformation was required.

    You made the argument that Diehr received his patent only because it passed a strict machine or transformation “requirement”.

    When challenged to specifically point out that “requirement” you have evaded, ducked, dodged, attacked, sulked, whined, complained, and done everything BUT point out the “requirement”

    You are a true dishonest man Ned. Truly.

  11. 410

    Ned, I don’t care what names you call me. Just cut and paste the exact words of the Supreme Court of the United States saying in Diehr, that Diehrs claims required a machine or transformation. If you can’t find those exact words then admit there is no machine or transformation requirement in Diehr. Or prepare to get you own reputation for running up the hill with your skirt, like Mooney did from NAL.

  12. 409

    Publius, sorry for overreacting.   I thought you were one of the shape shifters who masquerade here among a fog of topical monikers.  They all seem to be the same person in the end.

    Regard the statement that I used about hiding behind monikers was for the purpose of lying, I know that statement was a just bit much.  But I did it for a purpose, to tweak Um, no, or whoever was pestering me at the time.

    Sorry about that.

    And, thanks for your reply on Kappos.  

    Regarding Kappos, a public official's honesty is not subject to legal prosecution by members of the public.  So his honesty or lack thereof is otherwise controlled by the requirements of his boss and the requirements to testify under oath before Congress.  If a public official is caught in a lie, he will be an embarrassment and might be forced to resign.

    In this case, Congress and the White House were on the same page regarding the Patent Bill.  This almost gave Kappos carte blanche to stretch the truth as far as he wanted with the secure knowledge that neither his boss or the Congress would mind all that much.

    But his lies will be remembered by his colleagues.

  13. 408

    Thanks Ned,

    Public officials have a heightened responsibility in all things legal. Just like others in the profession of law. There are both legal and moral aspects to this responsibility, varying, of course by the player, office, context, and situation (for example, a public official lying about a personal matter having nothing to do with his duties can have legal implications, but also, may not). The old adage of “It depends” applies.

    Does that help?

    But the topic I was addressing is self-contained on this thread, and deals with accountability and pseudonymity. You made a statement. I disagreed with that statement (from multiple angles). You (over?)reacted.

    I stand by my points (anonymously, yet completely truthfully). Re-read our exchange, if you will.

  14. 407

    Publius, you stepped into a long running battle between Um, no, and perhaps a few others, that started when I made a comment about another poster's statement that Kappos knowingly lied about something in his advocacy of the patent reform bill.  The posters consistently tried to divert the conversation away from that topic into whether we here in Patently-O had an obligation to tell the truth.  I made the distinction that Kappos had the legal obligation to tell the  truth, but that we did not.  This statement was twisted into a statement that we here on Patently-O should lie, and that I was advocating lying, etc.    

    And so it went, back and forth, for 100s of posts.  Never in any of them did anyone make any comment on whether Kappos had a
    legal, as opposed to moral, obligation to tell the truth.  Instead, we got mired into irrelevancies.

    If you would like to add a comment on the original topic on whether public officials have a legal, as opposed to moral, obligation to tell the truth in their public advocacy, I would like to hear it.

  15. 406

    The point I made was about Kappos and his legal obligation to tell the truth. You never have addressed this and continue to twist everything I say and take it out of context.

    Ned,

    What are you talking about?

    Reread my posts starting at 7:38 AM. I am asking specific questions on this thread related to your theory that somehow not using a pseudonym makes a poster more accountable.

    Um, no. is correct in that you have answered only one of my questions before kicking up a roomful of dust with accusations and misdirections. Some of my other questions were how was I taking your words out of context and what names did I call you.seems It seems that you are uncomfortable in actually giving answers to anything but a short prepared script of beliefs that you want to talk about. Anything off of your agenda seems to quickly end up with you not understanding simple terms, replying only with questions, or you attempting to re (mis?) direct the conversation. For example, what does Kappos have to do with our discussion of pseudonymity and accountability?

  16. 403

    As a matter of fact, I did answer Publius's question.

    Regarding you, Um, no, what is the point of discussing Bilski if we cannot even agree on whether Bilski's claims were directed to a business method.  Bilski is topic of discussion, and we need to agree on what we are talking about before we can discuss anything else.

  17. 402

    Listen, Actual Inventor, I will stop calling you names if you agree to do the same with me.  I am indeed POed with you, but I will offer truce if you will.

  18. 401

    But you will have to agree that if you wanted to smear someone, to falsely accuse, the use of a pseudonym is all but mandatory.

    There is no need for such agreement. Ned, your actions quite prove the opposite.

    Publius was perfectly straight up with you and wanted to explore your own professed position, yet you turned to your usual bag of tricks: lies, deception, name-calling, accusations and NOT GIVING ANSWERS.

    Truly pathetic. The degradation has NOTHING to do with the rise of anonymity – your own posts prove that. Your deceit is worse than any of the pseudonyms because no other psuedonym attempts to hide behide a false wall of righteous indignation.

  19. 400

    AI Okay Mooney. Let’s get this straight. You believe every process claim with a known mental step should be patent ineligible under 101?

    Nope. And once again we are faced with the age old question: is AI stxpxt? or dishonest?

    It has to be one or the other. I’m going with stxpxt.

  20. 398

    Ned,

    Another classic game of yours: accuse the other of your own behavior: “I deferred discussion

    Guess what? – I declined to accept your deferment. The discussion can proceed along the lines of the joint questions. Oh, wait, you don’t know what is meant by a medical method…

    The stench is from the CRRP you keep on trying to shovel.

    As far as not answering questions, I notice that you still have not answered Publius’s questions, except one, then you disappear in a cloud of accusations (yet ANOTHER game). At least ping was forthright about not “doing answers” and didn’t try to make that a game like you so deceitfully do. His brusque manner actually smells like roses in comparision to you.

  21. 397

    Since Ned has solely resorted to name calling now, is there anyone out there in the blog community that can cut and paste the exact words of the Supreme Court Justices of the United States saying…”Diehr’s process required either a machine or transformation.

    And please no dissents or attempts at conflation or your interpretation or theory of what other passages meant. Just the exact words. if you can do it, I will send you a grand to your paypal acct.

    BTW, that includes you too Nedo

  22. 395

    Publius, you ask whether “pseudonyms have outlived their usefulness?”

    Not entirely, no. But you will have to agree that if you wanted to smear someone, to falsely accuse, the use of a pseudonym is all but mandatory.

    Just from my experience here, and over the last decade on a number of fora of public discussion, I have observed people routinely bashing each other in ways they would never do in face to face conversation. The rise of anonymity has degraded public discussion, and fora that allow it are generally filled with practitioners of name calling, and libel.

    I am not Dennis Crouch, but I think he should tighten up considerably on just who can post here.

  23. 394

    NED: “AI, I did cut an paste the exact words. Did you miss my post, or do you want me to use a yellow marker?”

    In the time it took you to type THE above response you could have simply cut and paste the exact words of the Supreme Court Justices in Diehr saying his process required either a machine or transformation.

    But you can’t and you won’t because they never did say such. Thus proving once again you are dishonest and a liar.

    :CASE CLOSED

    ::BANGS GAVEL!::

  24. 393

    Publius, I regret ever having tried to discuss this issue with you. You, seem to be the same person as AI, or any other number of similar monikers.

    The point I made was about Kappos and his legal obligation to tell the truth. You never have addressed this and continue to twist everything I say and take it out of context.

    Now, as to your “directive,” I dare you.

    But, more than anything, it reveals just who you actually are. Publius is just you moniker de jure.

  25. 392

    “Rich understood that the policy reason in Benson of making the algorithms available to everyone was wrong”

    Lulz, in other words, Rich disagreed with a century of caselawl and so does NWPA.

  26. 391

    UM, no,

    Let’s recap. You made a point. I deferred further discussion until we agreed on the facts. I then asked whether could at least agree on whether the Bilski claims were a business method.

    I can’t get you to agree to that simple proposition. Instead we are off wandering around in different case discussing different issues.

    Um, no, it seems literally impossible to have any sort of rational discussion with you. Simply impossible.

    Given the fact that you will not answer questions or even stipulate to any facts even for the sake of argument, you have to be ping, who was famous for never answering questions. That was his badge of honor, or his disrespect of others, depending on one’s point of view. You are the same in your disrespect for others — ping.

  27. 390

    Idk brosky, if your tools are 50 yrs old I think u need some new tools. Especially if you’ve been rough housing with your tools.

  28. 389

    “The panel in Cybersource should be facing impeachment proceeding.”

    Well, either that, or NWPA has got a few screws loose… which we all knew beforehand and can safely presume is the cause for the current connundrum.

  29. 388

    “Do you know? If you care about being an ethic person or a moral person or being intellectual honest, you would adopt this view. ”

    To be sure, if you’re a moral person you will object to “a machine that does what people do” being subjected to being mere property. Slavery for machines that do what people do is what NWPA espouses.

  30. 387

    AI, I agree there is a stench in this forum, alright.  It comes from a rotting ego, and its noxious gases are all but making most of us wretch.

     

  31. 386

    AI, I did cut an paste the exact words.  Did you miss my post, or do you want me to use a yellow marker?

    Really, AI, just where do you think the MOT came from?  Benson and Diehr, with Diehr citing Benson.  

    I don't get you, AI.  Really.  I don't get you.  I can lay a dead cat on a table in front of you and you will ask me to show you why you think that dead animal is a cat, or why you think that cat might be dead, or remark that the cat is yellow or some such, as if a yellow cat made any difference whatsoever.

    I don't know if you are just playing games here, or whether you are re–tarded or whether you are mentally
    ill.

    Regardless, I feel very dirty after attempting any discussion with you, as if I were in close proximity to some street bum.

  32. 385

    EXACTLY.

    Ned – I am not divereting attention – I am merely not allowing you to divert attention from the ACTUAL game you are playing. I told you what the topic ACTUALLY is and you simply want to waive a magic wand and pretend you don’t see it (just like you don’t see ANYTHING that happens to crash your philosophical party).

    Your appeal to the “average reader of this blog” is quite ironic, as you no doubt have NO idea of what perception you create by your shallow “I don’t know” stances and your false logic. You are a joke.

  33. 384

    NED: “I really don’t know what a medical method is.”

    I call BS!

    You don’t know what a medical method is because to define it, like you arbitrarily and illegally did for business methods, would expose the fallacy in your logic and put you face to face with the stench of your own intellectual dishonesty and deception.

  34. 383

    Ned:

    Where does it day that However Diehr’s process required a machine or transformation?

    No BS, ( if thats even possible for you) just cut and paste the exact words from the case. I want to see the Supreme Court Justices in Diehr say his process required either a machine or transformation.

    ::WAITS BUT DOES NOT HOLD BREATHE::

  35. 382

    Um, no, you divert attention and then accuse me of dodging the question by asking you to stay on topic and then get all in a huff because I asked!  Um, no, you have no idea just how ridiculous you must appear to the average reader of this blog.

  36. 381

    Let’s not divert attention please

    and

    I really don’t know what a medical method is

    means sir, that you are still trying to play games.

    The artful dodge of classifying the medical method claim as THE scientific method as applied to medicine is just another game.

    CLEARLY, the parallel to be drawn by my asking a question to your question is the “syllogistic-get-back-to-later” portion that you are attempting to make a faulty logic jump from a particularly claimed (and failed) business method to the entire class of ALL business methods.

    That sir, IS the issue on the table. It is the ONLY issue on the table worth discussing, because the exact particulars of the Bilski case stay with the Bilski case and it is only the rule of law that moves on to the next case and that next case’s set of facts.

    I truly abhor your game playing. It is dishonest and steeped in deception.

  37. 380

     Um, no, "Can we agree that the Classen claim (the one ruled not 101 eligible) was directed to a medical method?"

    I really don't know what a medical method is.  If
    you mean the scientific method as applied to medicine, then we can agree.

    Let's not divert attention please.  I think the issue on the table was whether the Bilski claims were directed to a business method.  Do we at least agree on that?  

  38. 379

    Can we agree that the Classen claim (the one ruled not 101 eligible) was directed to a medical method?

  39. 377

    Still waiting for Ned to actually answer the questions in my posts of 7:38 and 11:53 AM, 1:19 PM and my directive at 11:59 AM.

    These posts pile up quickly and all I have to see for it are excuses and accusations.

    Empty words Ned, empty words.

  40. 376

    What was left it on said in this post is the following: that the Bilski claims were business method claims. They were held not to be patent eligible. They were, rather, deemed abstract. This would imply that as a general matter that business methods are abstract
    and therefore are not patentable subject matter.

    The problem Ned is that this is a false implication and a use of poor logic to make the jump from a specific example to an entire category of material. There is no justification for this stretch of logic. This has been pointed out to you, yet you insist on not only depending on this fals logic, but you depend on it so much that it becomes implied in your stated positions.

    WAKE UP.

    However they provided no basis, rationale, or reason why, if business methods were not categorically excluded

    FALSE – they included at least that Congress sanctioned them explicitly (and let’s not even go to Pennock which states that Congress has the right to so do). This too has been explained to you, and yet you continue to play the “I don’t know” game.

    Your reliance on Cyborsource is problematic, given that Cyborsource is – AT BEST – an incomplete application of 101 jurisprudence, and is most likely simply bad law. Once again, you make the mistake of assuming that a categorical label implies all instances to pass a patent eligibility test (the fallacy of this logic should be immediately evident in consideration of the case for this thread (Classen), which, if to use your logic, would imply that medical methods are not patent eligible subject matter. STOP THE GAME PLAYING.

    Finally, your use of “caveat” is not proper. You cannot put forth your improper logic and say I am right because of the way I define the situation. That is a dishonest and deceptive practice.

  41. 375

    From Diehr:

    "Analysis of the eligibility of a claim of patent protection for a "process" did not change with the addition of that term to 101. Recently, in Gottschalk v. Benson, 409 U.S.
    63 (1972), we repeated the above definition recited in Cochrane v. Deener, adding: "Transformation and reduction of an article `to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines." 409 U.S., at 70 .
    Analyzing respondents' claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the 101 categories of possibly patentable subject matter. That respondents' claims involve the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing
    cannot be disputed. The respondents' claims describe in detail a step-by-step method for accomplishing such, beginning with the loading of a mold with raw, uncured rubber and ending with the eventual opening of the press at the conclusion of the cure. Industrial processes such as this are the types which have historically been eligible to receive the protection of our patent laws."

  42. 374

    Actual Inventor, it would be a pleasure to converse with you if you weren't such a jerk.  However, your post does illustrate that I did not connect the dots completely in the very short post to you on August 27.  That post said following,

    <ul>Aug 27, 2011 at 07:24 PM
    "You state that BMs are patent eligible, but Bilski was held not patent eligible.  It matters not the test.  It matters that the BMs are not patentable."</ul>

    What was left it on said in this post is the following: that the Bilski claims were business method claims.  They were held not to be patent eligible.  They were, rather, deemed abstract.  This would imply that as a general matter that business methods are abstract
    and therefore are not patentable subject matter.

    The problem with this conclusion is that the Supreme Court also said that they were not categorically excluding business methods from patent eligibility.  However they provided no basis, rationale, or reason why, if business methods were not categorically excluded, the business method in this case were not patent eligible.  We are simply left to speculate as to what it is that could rescue business methods from oblivion.

    I therefore conclude that as a general matter business methods are not patent eligible, but I should explain further.  As a general matter, business methods do not transform subject matter from one physical state to another physical state.  They manipulate abstract concepts such as risk, price, quantity and quality and the like.  Therefore, it is unlikely that a business method would ever pass what we now know to
    be the "machine or transformation test."  Further, the Federal Circuit recently addressed (in Cybersource) the issue of whether the business method claims before it were patentable nevermind that the claims in that case failed the machine or transformation test.  Not surprisingly, they still could not find any basis for determining that the claims in that case were patent eligible.

    It is important to note that the claims in CyberSource were business method claims.  If business method claims were patent-eligible, those claims should have been patent-eligible.  But they were determined, just as in Bilski, to be abstract.

    So while the Bilski Supreme Court did not categorically exclude business methods from eligibility, they provided no basis or guidance as to any test or circumstance or any example as to when or if a business method could be eligible.

    So with the
    above caveat, I would say, given the proviso from the Bilski Supreme Court, that business methods are not patent eligible under any known test.

  43. 373

    People who don’t hide behind anonymity can lie with impunity. History has shown this. There are reasons that have nothing to do with commenting on a blog that we have six amendment that allows one to confront his accusers. People who don’t hide behind anonymity here can, and obviously do, engage in excessive name-calling and ad hominem attacks. They lie with impunity. When confronted with their lies, they continue to lie. It is impossible, I have found to deal with such liars with any kind of civility, even though I have tried with extreme patience to get some of these folks behave with some kind of civility themselves. It simply is impossible. And the reason it is impossible is not because of their anonymity.

    Anonymity has absolutely nothing to do with it. You yourself are proof that even those who are not anonymous engage in the behavior you decry.

  44. 372

    NED

    A C C O U N T A B I L I T Y

    I am very interested in the tale to be woven by Ned as to how, by him using “his good name,” he is somehow more accountable. It’s pretty funny watching him squirm and accuse those who catch him of calling him names, twisting what he said (the exchange between Publius and Ned is indeed quite telling) and playing games when the real game player is quite clear.

    Just not seeing you evading the truth on this Ned. Stop shoveling.

  45. 371

    Ned: Diehr did apply the MOT to find the claims patentable.

    WRONG! I already busted you for this willful intellectual dishonesty before and rather than face it you simply ignored it. And here you are lying again!!!

    So here is the B Slapping again…. right in your FACE!!!

    REPOST

    _____

    Reply
    Aug 27, 2011 at 02:30 PM

    Actual Inventor – Schools Ned said in reply to Ned Heller…

    Ned, there was no mention of a MOT Test in Diehr. You have gone from being Intellectually Dishonest to Intellectually Delusional.

    The Court said: “In contrast, the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to pre-empt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process. These include installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time. ”

    Ned, please note that the Court is NOT granting Diehr a patent for a machine, or a machine that implements a process, but for a process that just so happens to operate on a machine.

    A process that requires a human operator, and mental steps, and is not to a machine working by itself, as the original CAFC MOT test requires.

    Of course if you, Looney Mooney and IQ 6 had your way you would ignore and dissect all the so called machine and technology parts out of Diehr and declare the application of the process steps are mere mental steps or abstract ideas, and thus render Diehrs patent ineligible under 101.

    6 would call it his phony pre-emption doctrine.

    Mooney would just flat out dissect the old, or mental steps out of the process in contrary to the Courts directive in Diehr and call their ideas C.R.A.P.

    Plus you ALL would do the same thing under 102 and 103 as well. Just like old Stevens taught you with his flawed Flookian idealology.

    However Diehr received his patent because his invention is an applied process, period. It did not require, nor did the Court say it required a machine or transformation. The fact that he had a machine or transformation in his claims was inconsequential and could not be used to deny his patent.

    SCOTUS made this clear in Diehr when they said :
    “Obviously, one does not need a “computer” to cure natural or synthetic rubber, but if the computer use incorporated in the process patent significantly lessens the possibility of “overcuring” or “undercuring,” the process as a whole does not thereby become unpatentable subject matter.”

    Deal with it!!!
    Actual Inventor

  46. 370

    Note: Your posting of this link to prove your innocence buries you in guilt!

    EVIDENCE

    Ned said :

    Reply
    Aug 27, 2011 at 07:24 PM

    “You state that BMs are patent eligible, but Bilski was held not patent eligible.  It matters not the test.  It matters that the BMs are not patentable.”

    THERE! YOU SAID IT YOU LYING BEACH!!!

    You said Business Methods are not patentable! And I Beach Slapped you silly for it. Here is an instant replay of the B Slapping that followed:

    AI Replied:

    “Well, Ned using your logic, I can cite cases that held inventions of machines, articles of manufacture, and chemical compositions as not patentable. Then conclude that Machines, Manufactures, and Compositions are not patent eligible subject matter.

    Bottom line is you can’t cite one case that says business methods as a category are not patent eligible subject matter, and thats a FACT.
    
Now deal with that Beach.
    Actual Inventor”

    You never did respond to the above did you Ned? Just run around crying..AI is picking on me..wah wah wah.. AI is making me look bad for catching me in lies..I am not talking to him no more. I am telling teacher….baaa waaa waaa…

    Now go ahead and type some more BS as to why you did not really type exactly what was cut and pasted above. I dare you! I will be glad to B slap you down again,

    BEACH!!!

  47. 369

    Actual Inventor when he called me a liar for stating that he had contended that Bilski confirmed that business methods were patentable.  I quoted his post and gave him a cite.”

    Ned,

    OMG! You are the most insidious liar ever! Worse than Mooney on his best day.You did not make any such statement. Nor did I deny such. Your tactic here is to obfuscate the record. So every time you post your lie you change a word here and there ever so slightly to try and wiggle your way out of your original lie to the point you are now lying about what you were even accused of lying about!

    Okay, i am going to go back and find the orignal thread just to document you are a liar which we ALL know now. Of course you will try and wiggle and twist and/or rewrite what you said.

  48. 368

    This has to be one of the most immature replies I have seen on this blog. And that is saying a lot when you have Mooney and 6 in the threads.

    None the less, I still say ” Diehr could have received his patent even if his claims did not include a machine or transformation.”

    And since Ned is about to report me to teacher, I welcome anyone that can demonstrate with “Diehr’s” own case law, why this could not have legally occurred.

  49. 367

    “and just what does the MOT do?”

    Ned, need I remind you that the MOT is not the sole test? In fact it’s not even a real test at all!

    It’s just a Clue!

  50. 366

    I don't think Rich ever gave up his original position that a programmed computer was patentable regardless of whether it was applied to a physical end use.   Allowing claims to computers programmed for business purposes as in State Street Bank proves this.

  51. 365

    Stevens never really seemed to understand that Douglas had confused the issue with this digression

    But Rich did.

    That is why Rich, at a lower court level could – and did – rule as he did without overturning a higher level court holding.

    Stevens was powerless to stop the logic of Rich. This is why noting that Stevens wrote in dissent in Diehr and wrote what was equivalent to a dissent in Bilski is of critical importance in understanding §101 Jurisprudence.

    Put simply, Rich got it right.

  52. 362

    “Diehr obviously was the best case of the four because it explained in some detail what we now know to be the machine or transformation test.”

    Diehr did not receive his patent because it passed the MOT Test.

    No such test was used in Diehr.

    Diehr could have received his patent even if his claims did not include a machine or transformation.

  53. 361

    Okay Mooney. Let’s get this straight. You believe every process claim with a known mental step should be patent ineligible under 101?

    And you believe this should be law because you believe, “the claim turns practitioners of the prior art who acquire KNOWLEDGE about the patentee’s “discovery” into infringers. ”

    Hmm,,,okay let’s go along with that. So if I discover or invent an applied process, even a new use of a known process, why shouldn’t I be able to sue people that use that process without my permission and/or paying me a royalty?

    I wonder what your reasons could..Hmmmm…Is it….

    Because I am making money?

    Because I am spending money so other people can make money?

    Because all that spending of money will create more jobs?

    Because more people working means a stronger economy?

    Because a stronger economy means a stronger America and our way of life and freedoms will be more secure?.

    Wow Mooney you just converted me! I am giving up all my patents, abandoning my pending applications and moving to China!

  54. 360

    Publius, I said you twisted what I said.  

    People who hide behind anonymity can lie with impunity.  History has shown this.  There are reasons we have six amendment that allows one to confront his accusers.  People who hide behind anonymity here can, and obviously do, engage in excessive name-calling and ad hominem attacks.  They lie with impunity.  When confronted with their lies, they continue to lie.  It is impossible, I have found to deal with such liars with any kind of civility, even though I have tried with extreme patience to get some of these folks behave with some kind of civility themselves.  It simply is impossible.  And the reason it is impossible is because of their anonymity. 

  55. 358

    Ned,

    It is more than telling that I ask you a question directly on point – how are you held accountable – and all you have to say is that I am simply name calling.

    Which name did I actually call you?

    You really don’t like having to live by the edicts you put forth for others, do you? The spotlight is a bit too bright for you.

  56. 357

    Publius, I bent over backwards with AI to no avail.  He would not stop his antics.  Refused.  I simply gave up with him.  So, from now on, I treat him like he treats me.  

    I don't know who you are, but this is the last post to you as well, as you really do not want to discuss anything, but simply just name call, etc.

  57. 356

    The “accuse others of what you do” game:

    your problem is that you don’t know what you’re talking about, you act like a baby, and your opinions are worthless” from the same person who said “if you think personal attacks and whines are polite conversation, well… perhaps they are for you.

    Ned, tell me how you are held accountable.

  58. 355

    Explain why the “missing’ caveat changes everything?

    Or do you think that pseudonyms have outlived their usefulness?

    Then explain how you think that I have misread you and the context of the discussion on this (and any – or many – other threads).

    I think that you overplay the reliance on your “good name” as some type of innoculation against lying and deception. You clearly have shown no accountability for your lies and deceit, throwing up a smokescreen of Kantian Imperative, and then being nailed by Um, no. on your flaunting of Kantian basics.

    Plain reading of the many twists and turns of your posts, your (mis)application of case law and your tactics of discussion (the games as identified by Um, no.) clearly show that even using your “good name” is no such innoculation.

    Then explain how time and again I just “don’t get it.”

    Ned, your games really do not fool anyone.

  59. 354

    Spend some time thinking about the stated public policy in Cybersource and Benson. This is the sort of thing that is not patentable because it is a tool? So, improvements of microscopes shouldn’t be eligible for patentability?

    What is going on here? Well, these information processing methods are for machines. They are improvements of machines. The fact is that the public policy stated in Cybersource makes absolutely no sense. Under that public policy almost anything that is useful to an inventor should not be eligible for patentability.

    The panel in Cybersource should be facing impeachment proceeding.

  60. 353

    MM–

    “I am identifying a type of claim” – No, you are not.

    “Upthread you agreed with me that such claims exist” – No, I did not.

    See my comment above at 10:42 am on Sept. 6

    MM, I’m not saying that it is impossible to do what you are claiming to have done, all I’m saying is that you have not in fact succeeded.

    And I do NOT concede that it IS in fact possible to do, without having seen it done.

    I would be willing to go through it again, as it is an interesting exercise, if you were to definitively “identify a type of claim” for discussion.

    But even IF your formulation were to be workable, it would be often unnecessary, and, in a way, actually inefficient.

    It would be often unnecessary if the courts knew what they were doing with respect to 112, 101, 102, and 103. Granted they do not, but the solution to that is to educate the courts on those matters, not to gloss over their failures and give them what initially appears to be an “easy out”, but which is just one more poorly-positioned toothpick in the purportedly self-supporting toothpick sculpture that is patent law. Only so many toothpicks can be thus poorly positioned before the structure becomes unbalanced and fails, even if that toothpick successfully carries the individual loads placed upon it; it also has the effect of adding load to other toothpicks in a manner that is difficult to predict, and does nothing to enhance or develop the visual navigability of the sculpture.

    And because it would have such a narrow range of application, it would be less efficient to develop as a specialized tool than would a general tool, and ultimately be less useful.

    And the point is that the general tools are already in the shop, it’s just that the woodworkers haven’t used them properly, and they are now compromised, chipped, bent. The existing tools are what is required for the job, and must be refurbished. The essential job of patent law is no different than it was, say, 50 years ago. We do not need new tools, we need to re-learn how to use the ones we have, after the end of the currently dark juridical period.

    In short, even IF workable (which you haven’t yet even come close to having proven), your formulation would represent the problem, not the solution.

    But I could be wrong. Give us another hypo or actual claim, with an associated statement of utility, and we’ll see what happens.

  61. 352

    To a tiny mind like yours IANAE, perhaps. To anyone that respects science and the law–no.

    By the way, tiny mind Ned, do you think the public policy stated in Benson is correct? Guess what, no it is not. The information processing methods described in Benson are tied to machines. Not the way people work, but the way machines wrok and processing of information. That means–guess what tiny brained Ned–that the public policy stated in Benson is WRONG.

  62. 351

    I know this is the right way to view it because of the all arguments fall apart when view with the lens of infomration processing.

    I know this is the right way to view it because viewing it this way validates my preconceived opinion and that of my clients.

  63. 350

    Read Deener Ned. The SCOTUS got that a method may be for a type of something. Like grain. And that a method could be a method for a machine. And, that a method should apply to corn or wheat.

    The only thing missing tiny brain boy is that information is the grain. Information is being transformed. Put that in your tiny brain and you will notice that all of these arguments become very simple to analyze and understand because–why?—why small brianed boy—it is because that is what is really going on.

  64. 349

    Diehr obviously was the best case of the four

    Who knew that Ned was a closet Diehrbot?

  65. 348

    Ned, do you know why I know the reason that information processing is the correct way to view cs and ee inventions?

    Do you know? If you care about being an ethic person or a moral person or being intellectual honest, you would adopt this view.

    I know this is the right way to view it because of the all arguments fall apart when view with the lens of infomration processing.

    The entire issue becomes easy to understand. Just remember, Ned, that information takes time, space, and energy to transform, and your little ole brain may be able to figure this out. If you are a decent person. If not, then you can gon on about your miserable mean petty thoughts and have a beer with MM, 6, and his ilk. The type of person that no doubt burned people at the stake.

  66. 347

    MM why is that every slimey human being in the U.S.A. does exactly what you do? That is you accuse people of what you do. I suspect MM that you are Richard Stern.

  67. 346

    Ned: You sound like you know a little about patent law, but you obviously don’t understand information processing or electrical engineering.

    The fact is that transforming information takes time, space, and energy. The laws of physics include laws regarding the conservation of information. Your iron age hat doesn’t seem to get that information processing is the great innovation of the 20 century and continues on into the 21st century.

    Benson is an infamous opinion among patent intellecturals as one of the most twisted bizarre opinions in SCOTUS history. This is for many reasons. One can get a hint at the stupidity of Benson by the statments in Beson stating that computers were just a little market that was not so important.

    Another aspect of the stupidity of Benson is not recognizing that EE is really not much different than computer science and that almost any device can be reduced to a/d converters and sensors with informatino processing performing all the functions of the circuits. What this means is not recognizing that information processing is transforming represented information is simple not recognizing the underlying reality of the innnovation. And, it leads to capricious ruling of what is eligible for 101 and what is not eligile for 101.

    Rich understood that information is what was being transformed. Rich understood that the policy reason in Benson of making the algorithms available to everyone was wrong. That the algorithms were being developed specifically for machine processing not people processing. The intellect behind Benson was an iron age man that should have retired long ago rather than continuing to try and push Benson in the 21st century.

    Why, by the way, Ned is it that a process that can be performed by a person’s body is eligible for 101 but if it can be performed by the person’s brain then it is not eligble for 101?

    But, I realize that this is rather disorganized. If one simple accepts (rightly) that information transformation are elible for 101, then the entire 101 issues fall apart and it is become very simple.

  68. 345

    Publius, you do forget the caveat, which changes everything.  I see you really need some lessons in how to read in context.  It must drive your clients nuts when time and again you just don't get it.

  69. 344

    But it certainly wasn’t to protect their identities because they intended to lie

    Yes. That is exactly my point – and exactly the opposite of your statement at 6:06 PM.

    Thank you for contradicting yourself.

    Next.

  70. 343

    Publius, the problem one has if he lies to another person is what happens when the other person finds out, and they will find out.

    Also, if one lies, one typically has to keep track of one's lies and to keep lying in order to maintain the lie.  This is almost impossible to do.

    But if one is anonymous, one can lie with impunity because one can change his identity the next day and not be held accountable.

    As to why our founding fathers wrote under pseudonyms, I don't know.  But it certainly wasn't to protect their identities because they intended to lie.  It probably was because they intended to express their opinions publicly in a time when people who disagreed, and perhaps strongly so, knew where one
    lived in could do something about it.

  71. 342

    Um, no, if you think personal attacks and whines are polite conversation, well… perhaps they are for you.

    You refer in your post of prior discussion about inchoate rights, probably from a discussion about Pennock v.  Dialogue.  For the life of me I cannot remember discussing that case with you, or that you made any points at all that I missed.  I have repeatedly apologized to you if I did not understand your points, or failed to address them.

    I will ask you again, if you could, please find the post that has the point you say I did not address.  I will consider it and give you a reply.

  72. 340

    AI’s? best Friend, I think part of problem here was that Douglas said something in Benson that confused everybody: that was his statement that the only practical use for the BCD to binary algorithm of Benson was for use in a computer, thereby wholly primping algorithm. This actually made no sense whatsoever. Let me explain.

    Processes as we know transforms things from one state to another. It uses the powers of nature applied through machines, articles of manufacture (tools) and compositions, mental steps and human agency. The recital of any one of these things in such a claim is not the practical end use the earlier part of the Benson opinion said was required to make patentable a process, something that would, for example, pass what we now know to be the “machine or transformation” test. Thus the suggestion that the recital of the computer could be such a use is a complete non sequitur.

    Stevens never really seemed to understand that Douglas had confused the issue with this digression. His opinion in Flook seemed amplify it, in very confusing ways, by talking about the practical end uses required by the MOT in the same sense that a computer in Benson was described by Douglas to be an end use, when the computer was only “used” as a tool.

    In the end, Stevens confused lead the his being shunted aside eventually into the monitory in both Diehr and in Bilski.

    That said, the confusion sown by Douglas in Benson and Stevens in Flook have had a long legacy. Diehr obviously was the best case of the four because it explained in some detail what we now know to be the machine or transformation test. Benson would’ve been an excellent opinion but for the dicta about programmed computers and the sole digression about computers being an end use. Flook, was nigh on incomprehensible.

  73. 339

    That the best protection from lying is to use one own name here on Patently O. That way, one will have a strong and good reason to not lie. In contrast, those who uses masks, Um, no, fairly announce their intentions to lie by that very act.

    This is decidely not true. On both fronts.

    Did the founding fathers fairly announce their intentions to lie by publishing under pseudonyms?

    Have you never run into someone that would look you in the eye and lie directly to you?

  74. 338

    Even after your vile tactics I maintained a polite yet firm tone with you. This quote shows how I politely pointed out that your own stated positions belied an earlier position that you not only steadfastly held in discussion with me (unreasonably so), you refused to acknowledge the points I made in our discussion and you continued (and to this day still continue) to refuse to engage in any reasonable discourse.

    Here is just one:

    Um, no. said in reply to Ned Heller…

    I read this post with a sense of extreme irony, as Ned Heller discusses “inchoate” and the laws passed by Congress, yet refused to engage in a conversation on those very points – which run counter to his sacred cow.

    Perhaps Ned is finally understanding what Justice Marshall was referring to when JM used “inchoate,” and how his own quote defeats his desired position.

    Perhaps Ned is finally ready to admit the level of deference that Congress has for setting the parameters of the 100 meter hurdle race of perfecting inchoate rights.

    Reply Jul 14, 2011 at 01:13 PM

    From: link to patentlyo.com

  75. 337

    In this exchange you have done everything I requested you not do. Thus confirming everything you are.

  76. 336

    Again, IBP, I’m not trying to come up with a “universal” method for identifying every type of claim that could possibly be found ineligible under 101.

    Rather, I am identifying a type of claim that must be found either ineligible under 101 (because the claim effectively patents a mental step by failing to include any novel or non-obvious non-mental steps) or invalid under one of the other patent statutes of your choice (102, 103, 112 … take your pick, choose your theory). Upthread you agreed with me that such claims exist and, at the very least, such claims should not be enforceable.

    As already noted, the application of 101 in this scenario does follow either an admission that the other step(s) in the claim is/are old (usually not terribly difficult to obtain – Classen and Prometheus didn’t bother to contest the issue; indeed, they seemed proud of the fact) or a finding by the judge that such is the case. Neither is a rare occurence. Regardless, once that finding is made, the conclusion is straightforward and undeniable: the claim turns practitioners of the prior art who acquire KNOWLEDGE about the patentee’s “discovery” into infringers. As we all agree, IBP, that result is not allowable.

  77. 335

    I tend to think, after reading [Ned’s posts about] Diehr, that he really did not understand what Benson held.

    Actually, insert any of the cases…

  78. 334

    AI, He was trying to say that any use of a mathematical algorithm in an old process was not patentable — using a point of novelty approach. He was defending Flook, not Benson. I tend to think, after reading his dissent in Diehr, that he really did not understand what Benson held.

  79. 329

    Um, no.  What a fricken joke.  I don't go around proving to posters that their accusations of lying are without basis.  Most of the posters do that simply as a smear tactic, and you know it.  However, I have taken my time to show some posters on occasions, in the politest way I could under the circumstances, that what I said was accurate and that it was their own recollection that was faulty.  I did that just this morning with Actual Inventor when he called me a liar for stating that he had contended that Bilski confirmed that business methods were patentable.  I quoted his post and gave him a cite.

    I haven't heard back from him since.

    But, as I said, I don't have time to do this with every
    accusation because certain posters simply put it out there about everything I say, regardless.  Their intent is clear.

    Now, I never contended that I lie or that I endorse lying.  What I contended is that Kappos, as a government official, has a legal obligation not to lie in his public advocacy.  We here in Patently O are not public officials are not under the same legal duties.  But, certainly we are under a moral obligation not to lie.  Your reference to Kant is on point there.

    What I further said is this, Um, no:  That the best protection from lying is to use one own name here on Patently O.  That way, one will have a strong and good reason to not lie.  In contrast, those who uses masks, Um, no, fairly announce their intentions to lie by that very act.

    If that shoe fits, Um, no, please wear
    it.

  80. 328

    What I have in common withother posters, Ned, is your duplicity and accusations of conduct that you yourself engage in.

    No surprise really, as you have made it clear that dishonesty and deception are perfectly legitimate tools in your mind for expressing (mere) opinions on this site, with no ethical duty whatsoever to not engage in such tactics.

    This is clearly so, because, for the numerous times that this charge has been leveled against you, you have never refuted it. Not once have you disclaimed dishonesty and deception has devices not appropriate for anyone’s gentlemanly discussion.

    It is you that chooses to play games – games of “I didn’t see that,” games of “I don’t understand,” games of “let me repeat what you said (and repeat it incorrectly),” games of “not addressing points made (as here on this thread with the circuits analogy, or the game you originally played by not addressing the constitutional argument and my track meet analogy),” and finally, games of your very own namecalling and wearing false umbrage when the discussion does not go your way and others call you out. If there be ad hominem, then that ad hominem fits and you need to own up to it.

    Remember – I was polite, until your games got to be too much. What really set me off was the Kant “lecture,” and the two-faced aspect that you do not understand, nor ascribe to, Kant’s baseline premise of honesty and nondeception.

    You sir are a fraud, a phony, a fake, a two bit charlaten, for without honesty, you have nothing for which you pretend to stand for.

    And yet you clamor for civility. Such is the silver (and split) tongued one you are.

    My being repetitive on this only reflects your being repetitive in your posting choices.

    Reap what you sow.

  81. 327

    Um no, I wish you would use your real name so at least we could keep track of you.

    What you and Smells, you obviously are the same poster, have a lot in common is that you refuse to discuss issues and resort to plentiful name calling. Endless. Repetitive, name calling.

    I think you are convinced that if you repeat your version of reality enough that it must be true.

    Well it is not.

    What is true, as I said, is that you want to play games. You want to accuse. You want to name call. You want to use ad hominem comments. But what you flatly refuse to do is to cite authority, answer questions, provide a substantive comment, or otherwise engage in polite discussion.

  82. 326

    IBP, “And one cannot simply “ignore data gathering steps for 101 purposes” only–if they are ignored for 101 purposes, then they must also be ignored for 102 and 103 purposes–that is, they must have been excluded during the 112WD/101utility analysis. They are either there for everything, or for nothing.”

    Ignore is probably not the right term. The real question is whether the claimed process provides a new and useful result that passes the MOT. I believe this is the holding of both Benson and Diehr, and especially of Flook. Passing the MOT in the gathering of data says nothing about the process as a whole. If the process does not result in the transformation of something, then the process as a whole is not directed to something that was traditionally considered to be a process. It should fail 101, and it would fail if the MOT as defined by the Supreme Court were the exclusive test.

    But such as we have it, failing the MOT is not the end of the analysis. I think the question of what is being claimed has to now enter the equation. If ultimately the final step can be performed by a human, it is not a process within 101, but is, rather, abstract.

  83. 325

    IBP: “The very first thing that must always be done, of course, is the 112WD/101utility analysis, which is one analysis in 2 parts, and can sometimes be a seesaw kind of process.

    This primacy is obvious, as the subject-matter of a claim must be construed before it can be analyzed for novelty, obviousness, or eligibility. Claim construction is performed in view of the presumption of validity, which means that difficulties that may arise in the 112WD or in the assertion of utility, or in the the interaction between the two, are biased in favor of an interpretation favoring validity.”

    If the defendant takes the patent owner’s construction at face value, in other words, agrees in principle for the sake of 101 that patent owner’s construction set for in his infringement theories as further delineated in his complaint/admissions/preliminary infringement contentions, I think one can proceed without claim construction. It would be odd, very odd, if the patent owner would argue for a narrower claim construction to avoid summary judgment under 101.

    I think you see somewhat of this process going on in Classen, where the patent owner’s infringement contentions where prominently discussed. Ditto in the Prometheus case. This lead to a quasi construction of the claims that could be used for 101 purposes.

    But, since the motion is at the discretion of the defendant, he may prefer to wait until claim construction is complete before making his companion 112wd/101 summary judgment motions. But that should not be necessary in all cases.

  84. 324

    IBP, I think you actually agree. This from your 2:47 pm post:

    “I agree with you entirely that it is illogical and untenable to assume anything regarding 102 and 103 before 101 is considered. In fact, novelty and unobviousness are entirely irrelevant to the question of S-M eligibility–for instance, S-M can be eligible whether novel or not, or whether obvious or not. 102 and 103 are irrelevant to 101.”

    However, your post there made some interesting points that caused me to think. I’ll post my response there.

  85. 323

    Ned, I cannot agree.

    WHY is it necessary to assume, “for 101 purposes”, that every limitation is new?

    That seems to me to suggest that an old incandescent bulb is not patent-eligible subject-matter simply because all the claim limitations are old, which is clearly incorrect.

    Perhaps I’m misunderstanding…

  86. 322

    IBP, after thinking about it a bit, I have come to the conclusion that for 101 purposes, one has to assume that every process limitation is new when claiming a process, machine limitation is new when claiming a machine, etc., etc., etc.; and that the claim as a whole recites novel and unobvious subject matter, but that nevertheless, it remain unpatentable because it is directed to

    1) something not in the four classes;
    2) something that does not have any substantial utility; or
    3) is nevertheless claiming a law of nature, something found in nature (really, something old); or an abstract idea.

    Item 1 deserves some further discussion. When claiming a machine, article (except product by process) or composition, process limitations should be ignored. (They also should make the claim indefinite under 112.) Means (step) plus function claim should be treated as process limitations unless their is substantial corresponding structure which limits the claim scope to that structure. (This really is the Freeman, Walter, Abele test.)

    Regarding item 3) this generally would apply to process claims. Here,the claim is not abstract, etc., if it passes the MOT, or if, as in CyberSource, it does not pass the MOT, nevertheless, all its steps can be performed by a human.

    Now, passing the MOT needs some comment. I believe it was the intent of Benson and Diehr that the MOT apply to the end use of the claim, not to data gathering steps. If this is correct, and I believe it is, then the Prometheus claims should fail the MOT because the transformation takes place in the data gather steps, not as a result of the process.

    Do you agree with the above?

  87. 321

    I love it how MM moves around the board starting fires here and there, and moves on to a new location when somebody comes by pouring cold water on his fun.

    You’re rapidly proving to be a waste of time MM. Others caught on long ago, and I should have, too.

  88. 320

    You DO understand that the assumption was YOURS and not MINE, right?

    You understand that due to the presence of uncooperating claim limitations the preamble had to be consulted as an aid to construction? You do understand that the point of a preamble is to shed light on, among other things, the field of use and utility, and that it was used by me in a rational fashion?

    You understand that your assumption was not justifiable, right?

    You understand that the remainder of your formulation (complete with its other unjustifiable elements) rests upon this unjustifiable assumption, right?

  89. 319

    You DO understand that the assumption was YOURS and not MINE, right?

    You understand that due to the presence of uncooperating claim limitations the preamble had to be consulted as an aid to construction? You do understand that the point of a preamble is to shed light on, among other things, the field of use and utility, and that it was used by me in a rational fashion?

    You understand that your assumption was not justifiable, right?

    You understand that the remainder of your formulation (complete with its other unjustifiable elements) rests upon this unjustifiable assumption, right?

    RIGHT?

  90. 318

    Ned,

    The very first thing that must always be done, of course, is the 112WD/101utility analysis, which is one analysis in 2 parts, and can sometimes be a seesaw kind of process.

    This primacy is obvious, as the subject-matter of a claim must be construed before it can be analyzed for novelty, obviousness, or eligibility. Claim construction is performed in view of the presumption of validity, which means that difficulties that may arise in the 112WD or in the assertion of utility, or in the the interaction between the two, are biased in favor of an interpretation favoring validity.

    I agree with you entirely that it is illogical and untenable to assume anything regarding 102 and 103 before 101 is considered. In fact, novelty and unobviousness are entirely irrelevant to the question of S-M eligibility–for instance, S-M can be eligible whether novel or not, or whether obvious or not. 102 and 103 are irrelevant to 101.

    And one cannot simply “ignore data gathering steps for 101 purposes” only–if they are ignored for 101 purposes, then they must also be ignored for 102 and 103 purposes–that is, they must have been excluded during the 112WD/101utility analysis. They are either there for everything, or for nothing.

    Although the word “new” appears in 101, the “real” novelty test is in 102.

  91. 317

    Except Ned, you are not a law school teacher and you cannot stop the BS. It is one thing to push students to know the material, it is quite another when you yourself “do not know” and continue to twist and manipulate what is there to suit your own preconceived notions of what the law should be. When you simply ignore what the “students” or any one else tell you.

    You see familiarity where there is none.

    Yet another vapid attempt by you to justify behavior that others find offensive, that others have informed you that they find offensive and that you think of yourself far too highly to deign to change your behavior. And yet you have the audacity to tell others that their postings methods are “highly offensive,” that others have too high an opinion of themselves.

    What next? A lecture on Kantian discussion points concerning honesty and deception (and how Kant lied about the importance of not lying or deceiving)?

    Reap what you sow.

  92. 316

    Smells, you remind me of the folks in law school who pissed and moaned at professors who liked to get people to think about the law, why it was the way it was, to really understand it. They would bray that that is not what they were paying for. All they wanted was that the teacher tell them what the law was, and cut all the BS…

    Very familiar line of argument.

  93. 315

    Yes, they are.

    Your first assumption was that your claim was a claim “to thoughts and a method of thinking”.

    It was not. It was a method for mowing a lawn, terms well understood in the art as referring to a physical transformation of the structural characteristics of an aggregation of grasses.

    I could go on, but instead of spending time pointing out everything in a single post like I do, thereby giving you the opportunity to gloss over most of it and pursue unrelated tangents, I will stop here for now, and hope that this approach will contain your over-abundant enthusiasm for your own formulation.

    How respond you?

  94. 314

    And Ned, I simply ask that you not be a j_erk about the way you behave.

    The point is that your behavior is just as, and in some case more than, offensive as the “BS detector going off.”

    People really do not l_ike seeing the BS that you shovel. You can choose to call it a Kantian directive, but that only makes you sound like a p_ompous BS shoveler.

    If you don’t l_ike hearing what I have to say, consider why I am saying it.

    As I say, you have the power to stop shoveling.

  95. 313

    Smells, there are some terms of art that come to mind to describe jerks that could well be applied to you, smells.  But I will not go there.  You may disagree with people.  But if you do, I simply ask you not to be such a jerk about the way you behave.

  96. 312

    I suspect ping. But you may know better.

    Yes, because anyone who goes against me and my views, must be that evil ping.

    And then calling out for confirmation to the master of the sock-puppets…

    Nice touch!

  97. 311

    your manner of discussion of points of law here is highly offensive

    Ned wearing his heart on his sleeve again.

    Ned, the amount of your BS is what is truly offensive. Your repeated inabilities to understand clear points of law that just so happen to not fall in line with your philosophical preferences is just a bit too conveinent. I am merely calling the BS when I see it. If you don’t like the BS callouts, then you have the power to stop shoveling. I would only hope that you do stop it or leave.

  98. 309

    Malcolm, if all that was required to avoid a section 101 analysis was to not admit that the data-gathering steps were old, in every case the patent owner would not admit that they were old. That would then force the analysis into section 102/103, in every case.

    So assuming we are now in a section 102/103 analysis, what basis is there in the law for not giving patentable weight to mental steps (or for that matter any abstract step or steps) tagged on to the end of data-gathering steps, that otherwise appeared to be old?

    Perhaps it is your position that if the examiner can find the data-gathering steps in the prior art, he can then enter a section 101 rejection of the claim on the basis that the claim as a whole was directed to the mental steps. What worked same way in court?

    I am still confused about your theory.

  99. 308

    You haven’t litigated, have you MM?

    In fact, I have. For years.

    IBP, the only clarification needed is:

    You haven’t litigated for applicants, have you MM?

    Everybody knows MM works for the Office.

  100. 307

    Smells, I don't care who you think you are, but your manner of discussion of points of law here is highly offensive.  I know you know that, and that giving offense is your intention.   I would only hope that you stop it or leave.

  101. 306

    Diehr did apply the MOT to find the claims patentable.  Bilski claims did not pass the MOT.  The Classen claim held valid, did.  Particularly see this passage,

    "The “immunizing” in the ’283 patent refers to the 
    gathering of published data, while the immunizing of the 
    ’139 and ’739
    patent claims is the physical implementation of the mental step claimed in the ’283 patent. 
    The distinction between a concrete, physical step of a 
    process claim, as compared with data gathering or insignificant extra-solution activity, warrants specific consideration in the context of evolving technologies,"

    The invention as a whole, including 
    the scope asserted by the patentee must be considered.
     
    We conclude that the immunization step moves the ’139 
    and ’739 claims through the coarse filter of §101, while 
    the abstraction of the ’283 claim is unrelieved by any 
    movement from principle to application,

    The principles applied in Prometheus support 
    the patent eligibility of the Classen claims that include 
    such transformative steps, but are not relevant to claims 
    that require no more than referring to known information 
    but do not include immunization in light of that information."

  102. 302

    Actual inventor, I don't know why I even try to be polite to you anymore.  Note what I just said and review this thread and these post especially,

    Actual inventor: "In your dreams Nedo. I don't know if you have been keeping up with current events but business methods were upheld as the law of the land in SCOTUS Bilski. Much to your own embarrassment and bewilderment,
    after the decision. And Steven's, retired bitter and beaten. Rich wins, the Constitution wins, Actual Inventors win."  Aug 27 at 02:52 AM

    "Actual Inventor, I believe I was responding to the point you were making that Bilski had established that business methods were patent-eligible.  I had to point out to you that the claims that Bilski held, and unanimously held, not patent-eligible were in fact directed to business methods.  Therefore your proposition that Bilski held that business methods were patent-eligible subject matter cannot possibly be right." Aug 28 at 08:22 AM

    link to patentlyo.com

    You will see that my summary of our discussion is accurate and yours not at all.  

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