If the software method is not patentable, then neither is the “computer readable medium”

CyberSource Corp. v. Retail Decisions, Inc. — F.3d — (Fed. Cir. 2011)

In an important decision, the Court of Appeals for the Federal Circuit has rendered many broadly written software patents invalid under 35 U.S.C. § 101 as interpreted by Bilski v. Kappos, 130 S. Ct. 3218 (2010). Most patent decisions involve questions of whether an invention is obvious under 35 U.S.C. § 103(a) or sufficiently described under 35 U.S.C. § 112. Section 101 asks a slightly different question – whether the patented invention is the type of innovation that properly fits within our patent system. In language virtually unchanged for over 200 years, Section 101 indicates that a patent should be awarded to the inventor of “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Over the years, courts have repeatedly held that Section 101 bars the patenting of ‘laws of nature, physical phenomena, and abstract ideas.’

CyberSource’s patented invention is simple: when validating online credit card purchases, use IP address information (such as IP addresses) as a check against fraud. Thus, the patented method might raise a red flag if someone attempts to make a large internet purchase through an IP address that had previously been used for a fraudulent transaction.

In the lawsuit, CyberSource only asserted two claims: Claim 3 is the method of fraud detection roughly described above and Claim 2 is directed to a “computer readable medium containing program instructions” for causing a computer to perform the method. Claim 2 is written in “Beauregard” form. See In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).

The claimed method is written as follows:

3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:

a) obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;

b) constructing a map of credit card numbers based upon the other transactions and;

c) utilizing the map of credit card numbers to determine if the credit card transaction is valid.

Machine-or-Transformation: As written, the claim does not require the use of any machine and it does not require the transformation of any article into a different state or thing. Here, the court repeated its stance that mere data gathering steps such as “obtaining information” cannot be sufficient to “make an otherwise nonstatutory claim statutory.” And, although the patent is designed to facilitate transactions over the internet, nothing in the claim actually requires that the internet be used. Finally, data structures such as the claimed “information” and “map of credit card numbers” will not be considered technical because they could be simply written down using pencil and paper. Thus, at the outset the claim fails the Machine-or-Transformation test that the Supreme Court identified as an important clue of patentability under 35 U.S.C. § 101.

Because the machine-or-transformation test offers only a legal clue to patentability, the court went on to consider additional indicia that led to the conclusion that the claim does not qualify for patenting under Section 101. In particular, the court focused on prior case law holding that mental processes standing alone are not patentable. CyberSource’s claimed method is such a mental process because it can be “performed … by a human using a pen and paper.” Thus, the claim is invalid.

Beauregard Claims: CyberSource’s claim 2 comes in a different form. However, the court interpreted it as “nothing more than a computer readable medium containing program instructions for executing the method of claim 3.” The most natural implementation of the invention is using software and the claimed “computer readable medium” is the storage device that holds the software.

The claim:

2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:

a) obtaining credit card information relating to the transactions from the consumer; and

b) verifying the credit card information based upon values of plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent, wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent,

wherein execution of the program instructions by one or more processors of a computer system causes that one or more processors to carry out the further steps of;

[a] obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;

[b] constructing a map of credit card numbers based upon the other transactions; and

[c] utilizing the map of credit card numbers to determine if the credit card transaction is valid.

Claim Form Versus the Underlying Invention: CyberSource argued that the claim is patent eligible per se because it is directed to a man-made article of manufacture – “a computer readable medium.” The court rejected that technical distinction. Instead, for patent eligibility purposes, the court directed focus away from the claim’s literal statutory category and instead focus on the “underlying invention.”

Regardless of what statutory category (“process, ma-chine, manufacture, or composition of matter,” 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes. Here, it is clear that the invention underlying both claims 2 and 3 is a method for detecting credit card fraud, not a manufacture for storing computer-readable information. This case is thus similar to In re Abele, 684 F.2d 902 (CCPA 1982). In Abele, claim 5 of the patent at issue recited “[a] method of displaying data” comprising the steps of “calculating the difference” between two numbers and “displaying the value.” Id. at 908. The court concluded that claim 5 was not directed to patent-eligible subject matter because it claimed an abstract idea. Id. However, claim 7 was argued to be different because it recited an “[a]pparatus for displaying data” comprising “means for calculating the differences” between two numbers and “means for displaying the value.” Id. at 909 (emphases added). Though claim 7 literally invoked an “[a]pparatus,” the court treated it as a method claim for the purpose of its § 101 analysis. Due to its “broad” and “functionally-defined” nature, the court found that treating claim 7 as an apparatus claim would “exalt form over substance since the claim is really to the method or series of functions itself.” Id. (citation omitted). Accordingly, the court placed “the burden . . . on the applicant to demonstrate that the claims [were] truly drawn to [a] specific apparatus distinct from other apparatus[es] capable of performing the identical functions.” Id. (citation omitted).

Here, the patentee was unable to provide suitable reasoning why the computer readable medium invention was fundamentally different from the method claim.

Pen, Paper, Computer: Following precedent set by Benson and Abele, the court here held that an unpatentable mental process remains unpatentable even when restricted to use on a computer.

Abele made clear that the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium. Thus, merely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test.

That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.

Holding: Invalidity affirmed. Neither the method nor the computer readable medium qualify as patentable subject matter.

430 thoughts on “If the software method is not patentable, then neither is the “computer readable medium”

  1. “How do you square the ruling in Cybersource with that in Research Corp.? ”

    Well idk how MM does it, but I do it the same way I did it on the day that decision came out. The CAFC was ill informed of the scope of the claim and about the contents of the claim. As the good judge in this case points out, the CAFC still believes you need a computer to carry out the process in that case. You don’t. Unless the picture you’re filtering is a huge picture. You can otherwise do it (quite easily) by hand. Which, I note, an expert would have told them had they bothered to consult one. Or, they could have simply read the inventor’s subsequently published NPL publications on their “inventionlol” and found it out themselves.

  2. However, I should note a small problem with Ned’s understanding. It is not that the preemption doctrine is part and parcel of the MOT, it is that MOT is part and parcel of the preemption. Small difference, but an important one. Indeed, it was the entire point of the Bilski majority having droned on and on for awhile.

  3. Also, standing may be a “threshold” issue. But the underlying principles relate to “damages” which is not a “threshold” issue. Thus, “standing” and “damages” are conceptually related.

  4. If the application passes 101, then the question is settled and set aside

    This assumes that additional relevant information is not presented which raises a 101 issue.

    Once resolved, the question is set aside, and is irrelevant to the substance of the examination

    This assumes that additional relevant information is not presented which raises a 101 issue.

    Questions of standing to sue are resolved as a “threshold test”: if a party has standing to sue, a suit may proceed

    This assumes that additional relevant information is not presented which raises a standing issue.

    Get it now?

  5. “In this view, “wholly preempts” is actually part and parcel of the MOT test, a test of the whether claim truly is directed to a particular machine.

    I have no disagreement.

    I must take a bow to IANAE as it appears he has taught Ned the unteachable.

    So long as Ned doesn’t backslide, as he is prone to do sadly, I will consider IANAE a master teacher on this subject as he has taught an nigh unteachable student a nigh unteachable subject.

  6. The takeaway message from Diehr is that the use of a computer perform some steps of some methods constitutes a different invention, with a demonstrably better result than a human may achieve alone;

    It may have escaped your notice, but the computer wasn’t the interesting machine-or-transformation in Diehr.

    and the fact that the computer is simply performing math does not categorically exclude the invention from patentability under 101.

    No, that doesn’t categorically exclude a claim under 101. Nobody said it did. But the computer being better at math than a human doesn’t categorically save the claim under 101 either.

    It would be a pretty silly test for patent eligibility, wouldn’t it? You dig up one autistic savant who can integrate the Arrhenius equation in real time while the rubber is being heated, and thereby invalidate Diehr’s claim under 101 because the result is no longer demonstrably better. That can’t possibly be the law. And it’s not.

  7. “If it wholly preempts, your machine isn’t particular enough.”

    You can try to explain this to Ned all day and he still will not understand. Or he will stick his fingers in his ears like some folks around here and say “policy, policy, policy” until the cows come home.

    What he needs to understand is that MOT is just an attempt to apply preemption in a way that is subject to being flawed. If preemption catches the claim and it passed MOT, you most likely fed up MOT. Most likely you fed it up by considering the machine particular or considering something that isn’t truly transformative to be transformative. In any event, either you fed it up, or you discovered one of the flawed parts of MOT. They do exist. Preemption analysis, while unweildy and a difficult analysis, is flawless so long as it is properly executed. The beauty of preemption is that any errors in the execution of the analysis are easily pointed out. MOT has no easy way to verify if it is being fed up or not.

    “I don’t think he would have been denied his patent on that basis.”

    Trust me, he would. If you don’t understand why, then you don’t understand the fundamental reasoning behind the preemption doctrine in the first place. And I can tell that you have a pretty good grasp on it IANAE, so go from the fundamentals and work your way through the issue. In that instance would granting such a claim effectively grant a claim to Arrhenius? Yes or no? Do the supremes take issue with granting claims to math? Yes or no? The answer is yes to both btw.

    To be sure, they may make an exception to the judicial exceptions to justify that patent in Diehr, but I doubt they would. If Arrhenius was wholly preempt by the claim, he loses the claim. Period. To hold otherwise is to, in practical terms, give him a claim to Arrhenius, which is explicitly what their excepted subject matter is, math. Indeed, they explicitly note this in Diehr itself and note that such is not the case in that case.

    “I respectfully disagree.”

    And we all know the USSC disagrees with you Ned. It’s as simple as that brosky.

  8. In this view, "wholly preempts" is actually part and parcel of the MOT test, a test of the whether claim truly is directed to a particular machine.

    I have no disagreement.

  9. I see what you’re saying. I appreciate the response, and the brevity made me think about it. I do however disagree, simply because of the specificity of what was being done in the claims of Benson, compared to the claim we are seeing in Cybersource. Benson was very specifically claiming computer-based operations and a “recalictrant bit register” (or whatever), while the claims in Cybersource do appear more broadly written.

    Ultimatly, MM, what I see in your writings, is that you ignore the “or any new and useful improvement thereof” portion of 101 in your disapproval of computer-implemented inventions. And when I see you say “101? 112? 102? 103? Whatever” I have to disapprove. Justice should be fair, not at the whims of “whatever”.

    What I would have rather seen, is Beauregard claims interpreted with 112 6th, and invalidated under 112, 2nd for not providing a specific algorithm. That would have been a more appropriate way to reject these claims under non-art grounds, in my opinion.

  10. I really hope you don’t sincerely believe that “computers are fast, and fast is good” is the take-away from Diehr.

    No. The takeaway message from Diehr is that the use of a computer perform some steps of some methods constitutes a different invention, with a demonstrably better result than a human may achieve alone; and the fact that the computer is simply performing math does not categorically exclude the invention from patentability under 101.

    My argument is that here, as in Diamond v. Diehr, the use of a computer – explicitly, affirmatively, and clearly recited – causes a much better result than the disclaimed implementation using only a human mind. That alone should resolve the 101 question.

  11. Stein: Malcolm, most of your philosophy of the patent eligibility of software was explicitly considered and rejected with finality in Diamond v. Diehr.

    Nothing as weakly reasoned and poorly written as Diamond v. Diehr could ever be considered “final.” The Supreme Court jurisprudence on the eligibility of computer-implemented methods is a mess. They’ll fix it, as surely as the Federal Circuit will ignore it.

    The holding in that case that the “mere recitation” of a computer to perform a process that could be performed by a human mind, but with less precision and resulting in an inferior product, converted an otherwise ineligible process into an eligible process.

    Did the Court in Bilski suggest that Bilski’s claim could have been rendered patent eligible by recitation of a computer?

    None of this addresses the problems with Beauregard claims, of course, which are legion.

  12. Ned He seems to believe that even if something passes the MOT that it still can be unpatentable if it wholly preempts….”

    First off, the term is “patent ineligible”, Ned.

    Second, 6 is correct but I would argue not for the reason he provides. The “wholly pre-empt” test is just another term for “abstraction”. But a claim that passes MOT can still be ineligible if the claim effectively prevents an otherwise non-infringing practitioner of the transforming steps from carrying out a mental step recited in the claim.

    This is the Prometheus problem. These cases (the instant case and Prometheus) are very different from each other, in certain respects, but the underlying principles are very similar.

  13. The point of this case is that, in light of this fact, the recitation of the use of a computer (or readable media) is no longer going to convert ineligible data processing steps into eligible data processing steps.

    Again, I only need to cite Diamond v. Diehr to you. The holding in that case that the “mere recitation” of a computer to perform a process that could be performed by a human mind, but with less precision and resulting in an inferior product, converted an otherwise ineligible process into an eligible process.

    Malcolm, most of your philosophy of the patent eligibility of software was explicitly considered and rejected with finality in Diamond v. Diehr. Diamond v. Diehr is still good law: the Supreme Court referenced it with affirmatory language several times in Bilski v. Kappos – and particularly cited it to overrule the CAFC’s proposed exclusive use of the M-O-T test in In re Bilski.

  14. do you know where I found this “notion” about 101 from which I ought to be “disabused?”

    No. Show me where you found this notion that 101 is only a threshold inquiry and can never be considered one or more patentability issues have been considered.

    Ummm… okay:

    Whether a claim is drawn to patent-eligible subject matter under s 101 is a threshold inquiry. (In re Bilski and Warsaw, 545 F.3d 943 (CAFC) 2008)

    The s 101 eligibility inquiry is only a threshold test. (Bilski v. Kappos, 561 U.S. ___ (2010)) < -- (note to Malcolm: This means "Supreme Court")

    As the Court made clear in Bilski, the s 101 patent-eligibility inquiry is only a threshold test. (USPTO’s Interim Guidance for Determining Subject Matter Eligibility, Federal Register Vol. 75, No. 143)

    And what is a “threshold inquiry?” It is a preliminary question that is considered and answered first, in the abstract, to determine whether a general matter qualifies. Once resolved, the question is set aside, and is irrelevant to the substance of the examination. Hence the term: the question is to be answered at the “threshold” of the inquiry, because it can be answered easily and preliminarily as a categorical threshing mechanism, and then set aside.

    For example:

    * Class-action law suits involve a “threshold test” to determine whether the class is fully formed and defined: if so, the action can proceed; if not, it is denied.

    * Questions of standing to sue are resolved as a “threshold test”: if a party has standing to sue, a suit may proceed; if not, the action is dismissed.

    * Fourth Amendent cases, involving an allegedly illegal search by a government, first deal with the “threshold question” of whether the government’s activities qualified as a “search” under the Fourth Amendement.

    Thus – section 101 is not, as you propose, one of many tightly interconnected tests that are all mashed together into this big ball of patent-law folk wisdom. Rather, section 101 patentability issues are resolved as a threshold test: they are decided preliminarily, in isolation of other issues. If the application passes 101, then the question is settled and set aside, and the more substantive questions (102, 103, etc.) can be considered. If not, then the application is dismissed for failing the 101 “threshold test.” It’s just that simple.

  15. I am paying attention, Malcolm, and to use my dad’s expression, those arguments “don’t hold soap” when you look at how the courts (as well as the USPTO) apply 35 USC 101. How do you square the ruling in Cybersource with that in Research Corp.? Admittedly, Dyk tried to camouflague the logical disconnect in Cybersource, but, to use my late uncle’s expression, his reasoning for distinguishing Research Corp “is a bunch of malarkey.” The bottom line is that 35 USC 101 is currently being applied by the courts (as well as the USPTO) in a manner that is subjective, arbitrary, illogical, and inconsistent. As others have also said on this thread, the judges simply decide which way they want to go (patent-inelgible/patent eligible), and then cobble together a line of reasoning to support their subjective, arbitrary, (often) illogical, and (frequently) inconsistent decisions.

  16. Ned: “Now, you will get one major argument from 6 on this latter point. He seems to believe that even if something passes the MOT that it still can be unpatentable if it wholly preempts….”

    If it wholly preempts, your machine isn’t particular enough. It’s the same reason why “generic thing that runs software” (i.e., “computer”) isn’t a sufficiently particular machine for a software claim.

    If it somehow turned out that the Arrhenius equation only had practical application in Diehr’s apparatus, I don’t think he would have been denied his patent on that basis.

  17. Stein: the speed and accuracy of this human-executed system leaves a bit to be desired, when compared with a near-instantaneous, worldwide look performed by an automated process… specifically, the computer recited in claim 2.

    You write as if you believe that nobody ever imagined using a computer to speed up information processing before this case.

    In fact, nearly everyone on earth and certainly the judges on this panel have known for many many many years that computers speed up information processing. Processing information is what computers do. The point of this case is that, in light of this fact, the recitation of the use of a computer (or readable media) is no longer going to convert ineligible data processing steps into eligible data processing steps.

    Would you rather have the ineligible steps ignored for 103 purposes?

    Take your pick.

    What difference does it make?

  18. David, I recognize the Diehr problem.  That is why I think the new test must have two parts;

    1) the claim must fail the MOT test; and

    2) it must be capable of being entirely performed by a human being.

    Diehr passed the MOT, that is why it is largely patentable regardless of point 2.

    Now, you will get one major argument from 6 on this latter point.  He seems to believe that even if something passes the MOT that it still can be unpatentable if it wholly preempts….

    I respectfully disagree.

    I am now looking at
    the basis of the "function of a machine" doctrine.  Stevens seems to believe that the overruling of that doctrine lead to the "overruled" CCPA holding Benson that a programmed computer was per se patentable as a new machine.  I will post my views on that issue in a short while.

  19. raised by this case

    Different case, brother. I’ve been waiting for this one for years. Wasn’t it 6 who first pointed out Patel’s first district court decision (pre-Bilski)? Or maybe it was me. I don’t remember anymore.

  20. Stein: Only in patent law can one read a sentence like: “A computer-readable medium encoding instructions readable by a computer, that, when executed by a processor of the computer, cause the computer to perform the following steps,” and conclude that it is equivalent in form to a different claim… which is unallowable because it can be performed entirely by a human mind and does not involve a computer.

    Right. Just like “only in patent law” can such a claim be deemed to describe a new composition of matter and distinguish that composition from prior art compositions on the basis of its structure, as required by 112, rather on the basis of how another machine behaves when it “reads” the instructions printed on the medium.

    That’s what makes patent law interesting.

    there is no argument about … non-obviousness, the sufficiency of the written description

    Those arguments surely exist and they are relevant, even if they aren’t expressly discussed in the opinion.

    This patent should never have been granted. Also true of many patents granted yesterday. Now they’re gone.

    Thank you, CAFC.

  21. > That’s like saying that all molecular biology inventions are obvious per se because any claimed molecules are capable of processing anything that man can snip and put together.

    About two months ago, I dealt with an office action where the Examiner rejected an entire set of 15 dependent claims based on a reference to two sentences in a reference that read, essentially: Computers are used to store and process data.

    To my surprise, I am discovering today that this guy was on the cutting edge of patent jurisprudence. I’m thinking of nominating him for the next vacant spot that opens up in the CAFC.

  22. Is Malcolm on vacation?

    166 comments on a double topic of Malcolm’s favorite (conflation of law and written matter doctrine) and a bare 2 comments from Malcolm…
    Reply Aug 07, 2011 at 11:14 AM

    Malcolm Mooney said…
    Is Malcolm on vacation?

    No, just not interested in reiterating my position on the 101 issues raised by this case for the ten thousandth time. Suffice it to say…

    LULZ – Suffice to say nothing. No shortage of spewing since you returned from vacation.

    Anyone want to out their Prrck coworker that was on vacation awhile back and has been gloating insufferably the last few days?

  23. I think the holding is that if the method can be performed by human, it is abstract regardless that it is expressly limited to performance on a computer.

    Here is an outline of Judge Dyk’s logic in this holding:

    * Section 101 sets up four categories for patentability: machine, composition, article of manufacture, and process.

    * In order to be patentable, a claimed process must be “tied to a particular machine” or must “transform an article.”

    * Claim 3 is not “tied to a particular machine.” There is no claim element requiring an individual to use a computer. The internet may be the *source* of the data, but this is only a data-gathering step.

    * The claimed method can be performed entirely by a human (citing Gottschalk and Flook). Bilksi affirmed this “mental steps doctrine,” as did Comiskey, particularly where “a process is claimed standing alone and united to another category of statutory subject matter.”

    * Patent claims cannot be issued that “depend for their operation on human intelligence alone.”

    * Each claimed step, read literally, can be performed by a human without using a computer.

    * Conclusion: “Methods which can be performed entirely in the human mind are unpatentable.”

    This is entirely a question about the form of the claim – the selection and structure of the literal elements of the claim. The opinion examines the choice of statutory class, and then laboriously considers each element of the claim in turn, concluding that each element can be performed entirely by a human mind; and thus rules that the claim, as drafted, fails the “mental steps” doctrine.

    There is no problem with, or even discussion of, the substance of the claim. It is specific (though broad); it is clear; it is useful; there is no argument about novelty, non-obviousness, the sufficiency of the written description, the completeness of the disclosure to instruct a practitioner to use it without undue experimentation. There is no argument that a computer cannot perform the method – only that the literal interpretation of the claim is not limited in form to the use of a computer.

    This line of argument begs to add computer limitations that unquestionably “tie the claim to a particular machine.” And the applicant appeared to do that in claim 2 (even perhaps a bit overboard by post-Bilski standards!)

    In response, Judge Dyk simply ignored those elements as a question of “form.” The argument is: Claim 3 is unallowable, claim 2 only differs from claim 3 as a matter of form; the folk wisdom of patent law (according to Judge Dyk’s mind and/or Farmer’s Almanac) sets forth the unbreakable tenet that a merely formal change to an unpatentable claim cannot save it; thus, claim 2i is also unallowable.

    Only in patent law can one read a sentence like: “A computer-readable medium encoding instructions readable by a computer, that, when executed by a processor of the computer, cause the computer to perform the following steps,” and conclude that it is equivalent in form to a different claim… which is unallowable because it can be performed entirely by a human mind and does not involve a computer.

    ===

    One last point: Resoundingly absent from Judge Dyk’s list of citations of Gottschalk, Flook, Chakrabarty, Abele, and even Maucorps (Maucorps? really?) is a discussion of the holding in Diamond v. Diehr. Judge Dyk cites Diamond v. Diehr exactly once, in a footnote on page 20 (of a 21-page opinion!), and for exactly one principle: its upholding of Flook. It does not mention Diamond v. Diehr otherwise, which is odd, since it (a) issued in the same era and (b) is one of the two Supreme Court holdings on this area in the last 30 years.

    This delicate side-stepping is because the very principle that Dyk espouses to reject claim 3 is the very principle that Diamond v. Diehr stands for: that a claimed method that uses a computer cannot be rejected on the rationale that the claim could alternatively be performed by a human mind, because the use of a computer leads to a different and arguably better result.

    The logic of Diamond v. Diehr is exactly applicable to claim 2 in this case. A human may be able to identify an IP address from which an order was received, and may manually consult any other data source (e.g., a printed list of IP addresses previously used in fraudulent credit card orders). (It’s a great mental image, actually – I’m picturing a Dick Tracy-type figure with a fedora and trench coat, stalking through the rain to the police department; asking the lieutenant for the book of phony IP addresses; being handed a hard copy resembling a phone book, and rifling through it to find the entry; and exclaiming A-HA!!! while circling the entry with a number two pencil. It’s great. Someone should make that type of tech-noir suspense thriller.)

    And yet, the speed and accuracy of this human-executed system leaves a bit to be desired, when compared with a near-instantaneous, worldwide look performed by an automated process… specifically, the computer recited in claim 2. To put it another way: The use of a computer, as recited in claim 2, leads to a different, and much better, solution than the purely human-mind-based implementation that is excluded from the claim.

    Just like Diamond v. Diehr.

  24. Yo, PP: If it’s so easy, why not just explain to everyone exactly why my post at 11:40 “makes no sense”?

    Thanks.

  25. Malcolm, your handwaiving was wrong the first time. So no thank you to learning how to be wrong.

    As to structure, A New Light put that cannard to rest with the music CD that can be exactly structurally claimed, yet fail to be patent eligible.

    The point of the question is not repatentable – the question was explicitly patenteligible.

    Ned, if you do not mind, try reading the question again and (with your own words, [slightly modified]) think of “the problem with [the abacus] is that everything could be performed [entirely] by [the] human [mind] and the claim as a whole did nothing within the MOT.

    There really is a logical point to this (even if Malcolm refuses to see it).

  26. If don’t think the phrase “particular machine” has magical properties.

    In the context of information-processing (including information transmission) the correct definition of a “particular machine” is a novel machine, structurally defined to distinguish it from the prior art on the basis of its structure, not on the basis of its allegedly “new” functionality.

  27. No one who has any shred of credibility advocates that the courts should “take their pick.”

    1. A method of eating ice cream, comprising licking an ice cream cone and thinking about a movie that hasn’t been released yet.

    101? 102? 103? 112?

    Does it matter? Why?

  28. More to the point, each of these questions are answered, and belong to, a different and distinct legal section with its own distinct complete reasoning.

    The plain fact is that conflation is bad. All that you have done with your list of examples is prove your point false.

    No one who has any shred of credibility advocates that the courts should “take their pick.”

  29. Fish in a barrel time.

    Malcolm, the only reason why “Nobody knows what you’re talking about, dxpxhxt.” is because the post is pointing out that your post at 11:40 AM makes absolutely no sense.

    The one that lacks the ability to articulate is you.

    Read the chain S L O W L Y and see if you can catch where you went all inarticulate.

  30. Thanks.
    Normally the latter, of course. [I was not suggesting that such a highly subjective invalidity decision with such an "abstract" [pun intended] guideline is a good thing.]
    But I have to admit that it now looks like, in some lawsuits, on some patent claims, with some judges, that a S.J. on 101 could be a lot cheaper solution to a troll suit than the usual payoff just to avoid millions in full blown discovery and litigation costs?

  31. “Why is a claim to a product by process interpreted as a method for infringement purposes?”

    Case cite please (just curious).

    Are you kidding me? You just lost the remaining tiny bit of credibility you had.

  32. do you know where I found this “notion” about 101 from which I ought to be “disabused?”

    No. Show me where you found this notion that 101 is only a threshold inquiry and can never be considered one or more patentability issues have been considered.

  33. MM: “Nope. Same problem, just repeated.”

    Okay, fair enough. But what if each step were amended to recite “performed by the particular machine that performs this step”?

  34. if claim 3 was amended to recite “performed by a processor” after each step, then the claim would be patentable?

    Nope. Same problem, just repeated.

  35. Right, because it’s well established patent law that adding something to a statutory claim can make it non-statutory… OH wait, it’s not.

  36. Yeah David. Now, maybe, if you claim storing the program on the middle portion of the medium, after you cut off both sides of the medium, then MM would have to agree it’s not gxxxbxxxgxxx, since, ya know, MM’s nonCOMPUTER BRAIN thinks making a big thing into a small thing is sooooo patentable! Lolz

    Because, again, ya know, claiming making a big thing into a small thing, that promotes the progress of the useful art. The only sad thing is, for me as an inventor, MM stands as prior art for my claims for a small portion of a brain remaining after I cut the other 99 percent of the brain away . . .

  37. Most computer processes send/receive/transform data. All of these involve physically transformative processes.

    LOL. Did you come here via some time portal from five years ago?

  38. Wow, you’re really persuading me. It’s like a creationist citing the Book of Genesis to argue that humans and dinosaurs co-existed.

  39. > I would disabuse yourself of this notion as soon as possible. 101 issues can present themselves at any time, depending on what is being claimed how those inventions relate to the prior art. The larger point is that, at the margins (at least), 101, 102, 103 and 112 are closely related to each other. Pretending that is not the case will cause you to misunderstand patent law, particularly 101.

    Just a quick question – do you know where I found this “notion” about 101 from which I ought to be “disabused?”

  40. “not physically transformative processes”

    Most computer processes send/receive/transform data. All of these involve physically transformative processes.

  41. Malcolm’s comment that the opposite is true

    Nobody knows what you’re talking about, dxpxhxt. That’s because you can’t articulate your way out of a wet paper bag.

    F O O L

  42. “The telegraph would be a quintessential example of a particular machine.”

    Actually, claim 4 of U.S. Patent No. 1647 recites “process of breaking and connecting by mechanism currents of electricity or galvanism in any circuit of metallic conductors.” Seems to read on a computer, as well — and as we all know, a computer is not a particular machine. Right?? So let’s nix this patent as well.

  43. But we deal with this brand of obviousness under 101, not under 103.

    For the moment, anyway.

    The Euros do it under 103 according to Max.

    Also reasonable. It doesn’t really matter. You can chop down a tree that needs chopping using an axe or a chainsaw. It ends up on the ground either way.

  44. Note that a claim to a method of transmitting a particular kind of information (e.g., information about the ten DVDs that your friend just bought) would not be patent eligible.

    Adding: or it’s obvious because we ignore the information being sent when determining obviousness.

    Take your pick.

  45. Why is printed matter ignored when considering obviousness?

    Printed matter = non-functional descriptive material
    Computer program = functional descriptive material

    “Why are you not permitted to claim a new composition merely by referring to a new result that is capable of achieving?”

    Because the “result” does not change the underlying composition (ergo, it is anticipated).

    “Why is a claim to a product by process interpreted as a method for infringement purposes?”

    Case cite please (just curious). As is well known to anybody familar with materials, the structural makeup of an article can depend upon the process used to make it. A nail made by forging is physically different than a nail made by sintering. Thus, a claim to a “nail formed by sintering” is not anticipated by the disclosure of a forged nail.

    Real simple …

  46. Morse’s method of transmitting information using a telegraph

    The telegraph would be a quintessential example of a particular machine.

    Note that a claim to a method of transmitting a particular kind of information (e.g., information about the ten DVDs that your friend just bought) would not be patent eligible.

    Are you starting to get it? This isn’t very difficult. It’s also very reasonable.

  47. “I don’t think this is a fair summary of the holding. I think the holding is that if the method can be performed by human, it is abstract regardless that it is expressly limited to performance on a computer.”

    Obviously Ned was referring to mental and/or pencil/paper processes, not physically transformative processes (which are eligible on their own terms … unless they effectively preclude a mental process).

  48. A new patent abacus would never be patent eligible unless it was described structurally.

    Crucial point. Also the second time this has been pointed out to you. Try to learn.

  49. The abacus is not repatentable depending on the problem it is used to solve. If the abacus is used in a process that otherwise produces a new result (MOT) that process is patentable, not the abacus.

    The problem with this patent is that everything could be performed by human and the claim as a whole did nothing within the MOT. The recital or limitation to execution on a computer was then a mere a selection of tools. Kind of obvious. But we deal with this brand of obviousness under 101, not under 103. The Euros do it under 103 according to Max.

  50. “I would add the caveat that the method also fails (must fail, I believe) the MOT test.”

    So, if claim 3 was amended to recite “performed by a processor” after each step, then the claim would be patentable?

  51. Because conflation of legal principles and making the whole morass an exercise in subjective judgment brings clarity…?

    No, the principles underlying the requirements for subject matter eligibility, obviousness, and the written description requirement are identical to some extent.

    Put another way: why are new and useful mental processes not eligible for patenting? What are the reasons? Why is printed matter ignored when considering obviousness? What are the reasons? Why are you not permitted to claim a new composition merely by referring to a new result that is capable of achieving? Why is a claim to a product by process interpreted as a method for infringement purposes?

  52. “I don’t think this is a fair summary of the holding. I think the holding is that if the method can be performed by human, it is abstract regardless that it is expressly limited to performance on a computer.”

    A method of drilling a hole using X, Y, Z drill press.
    A method of digging a hole using a steam shovel.
    A method of heat treating an alloy.

    All can be done with a human alone or (in the third situation) with the use of a natural phenomena (i.e., fire).

    Let’s see, let’s throw these out as well. Morse’s method of transmitting information using a telegraph — well, transmitting information can be performed by a human alone, so let’s throw that one out as well.

    It is so easy to invalidate patents now — just ignore anything in the claims that limits the steps to a machine and then state “the claims can be performed by a human alone.” Pretty simple.

  53. I think the holding is that if the method can be performed by human, it is abstract regardless that it is expressly limited to performance on a computer.

    Ned, what is your view then on the abacus? patent eligible? If yes, how is it different then a computer?

  54. I swear, this blog has some of the stxpxdxst commenters on the Internet. And they all tend to use these xxxhole pseudonyms, too.

    Because Malcolm’s comment that the opposite is true makes sense…. how exactly?

    Oh wait, it doesn’t, but Malcolm thinks others are stuxpxdxst commenters.

    T O O L

  55. David Stein said, “Put another way: Claim 3 is unpatentable solely because it is not restricted in any way to a machine; and yet, claim 2, explicitly limited to the use of a computer executing instructions that perform the same techniques, is an insubstantial change that cannot remedy the defect of claim 2.”

    I don’t think this is a fair summary of the holding. I think the holding is that if the method can be performed by human, it is abstract regardless that it is expressly limited to performance on a computer.

    I can understand David’s frustration with the opinion given his apparent misunderstanding of its holding.

  56. 8,001,012, issued Aug 16 2011

    20. A non-transitory computer-readable medium having computer-executable instructions stored thereon that, if executed by a user device, cause the user device to perform operations comprising: receiving, by the user device and from a computer for providing tools, a first question in an interactive assessment template, wherein the template includes fields which request standardized data for assessing an opportunity; sending, by the user device and from a first user, a first response to the first question, wherein the first response is part of the standardized data, and wherein the first response indicates that the first user is at least one of an entrepreneur and an inventor; receiving, by the user device and in response to the sending the first response, a second question, wherein the second question is determined by the computer for providing tools, and wherein the second question is based at least partially upon the first response to the first question; sending, by the user device, a second response to the second question, wherein the computer for providing tools associates the second response with the standardized data; and receiving, by the user device, access to an online portal, wherein the online portal comprises a plurality of tools for developing at least one of the opportunity and a product associated with the opportunity.

    [insert txxxlet flushing sound]

    Note that the general recitation of a “computer” within the body of a claim does nothing to mitigate the attempt to claim an abstraction.

  57. Because 40 years ago people thought pocket calculators were the ultimate function of computers.

    I swear, this blog has some of the stxpxdxst commenters on the Internet. And they all tend to use these xxxhole pseudonyms, too.

  58. That’s like saying that all molecular biology inventions are obvious per se because any claimed molecules are capable of processing anything that man can snip and put together

    No, it’s not like that at all actually. Molecular biology inventions actually transform things in the world world, as opposed to merely massaging information. And if you knew anything about how molecular biology inventions are invented, drafted and prosecuted and examined, you’d know that they bear zero resemblance to your typical “computer-implemented” method or B-claim.

  59. Way to put uncertainty into an already uncertain economy. Nice work. We should explore amending Section 101 to add a new category – “executable software”, and thereby take the issue away from them. There is really no difference between Ben Franklin tinkering with his stove in the 18th century, Morse tinkering with the telegraph in the 19th century, Widler tinkering with circuits in the 20th century, and a multitude of software developers tinkering with their keyboards in the 21st century. Call your Congressman today and tell them to consider adding “executable software” to Section 101 before they finish patent reform.

  60. Well, if, as you said, “There is no such thing as free beer”, then you are asking an inconsequential question. It goes without saying that you cannot patent something that does not exist.

  61. 8,001,025, issued Aug 16 2011

    5. A computer-readable medium containing instructions that cause a service provider facilitating financial transactions over a network to perform a method comprising: receiving a promise-to-pay (IOU) invitation from a first user device, wherein the first user device is associated with a payer; receiving a response to the promise-to-pay invitation from a second user device, wherein the second user device is associated with a payee; scheduling a payment responsive to the invitation and the response by a payment provider processor if the response from the payee is an acceptance of the invitation, wherein the payment is made from an account associated with the first user device to a second user account associated with the second user device; transmitting information about the payer to the payee prior to receiving the response to aid the payee in determining whether to accept or decline the invitation; and executing the payment by the payment provider processor when conditions for payment have been met wherein scheduling the payment comprises scheduling a primary payment amount to be made on the pay-by date and scheduling a secondary payment amount to be made on a secondary pay-by date, wherein the secondary payment amount is less than the primary amount but completely satisfies the IOU and the secondary pay-by date is before the primary pay-by date and wherein the secondary pay-by-date and the secondary payment amount is proposed by the payee and/or the payer prior to completing a financial transaction between the payer and the payee and wherein executing the payment comprises transferring funds from a first payment services funds account associated with the first user device when a sufficient balance is available at any time before or up to the pay-by date or transferring funds from a secondary, third-party funding source associated with the first user device on the pay-by date if the first payment services account has an insufficient balance up to and including the pay-by date.

    BUH-BYE!!!!!

  62. Of course that molecule is obvious. Look, it has the same atoms, and those atoms are old. Look, those atoms use the same bonding mechanism, and that is not only old, but a phenomena of nature.

    Why don’t you invent a new way of putting all of those old items together. Then you can have a patent.

  63. Generally speaking sure they could if they were abreast of the times. There were computer geniuses spouting off about how we’d all have home shopping on computers etc. etc. a long time ago.

    See for instance where Mr. Greenspun explains that to you tards.

    link to philip.greenspun.com

  64. “,i>Claims to allegedly “new” data processing methods carried out by a computer are obvious per se, in view of the fact that computers are capable of data-processing any information.

    obvious per se and capable of processing…

    W

    T

    F

    That’s like saying that all molecular biology inventions are obvious per se because any claimed molecules are capable of processing anything that man can snip and put together.

  65. “When using the term “as a practical matter,” the Dyk admits that it is possible to perform the method of Research Corp in the human mind. ”

    Which is actually false, which any signals guy will tell you. Dyk, and the other judges, PRESUME that you’re looking at a huge picture, 1800xINFINITE pixels apparently. If you’re looking at a 2×2 image the method is very doable by hand, or even in your mind.

    Bottom line is, the people arguing Research Corp didn’t know how to spin the tail properly. Indeed, they didn’t even cite the inventor’s own NPL publication against them.

  66. He/she will never understand patent law and will always be wondering what is going to happen

    Because conflation of legal principles and making the whole morass an exercise in subjective judgment brings clarity…?

    At least try to make a cogent position Malcolm.

  67. DLNIM Why is it that software claim (whatever that is) gets special treatment?

    Great question. Software claims have been getting very special treatment from the beginning. The USPTO still examines them as if computers were invented yesterday. With respect to Beauregard claims, the USPTO even chucked 112 out the door … just because.

    Reap the whirlwind.

  68. I reject everything under 101.

    See – not difficult at all.

    Oh, you mean rejections under how the law is supposed to work….

    T O O L

  69. “This framework is consistent with Diamond v. Diehr, and seems like an acceptable compromise for many interested parties. ”

    Yeah, it’s unfortunate that the CCPA screwed up and that “compromise” isn’t the lawl.

    This kind of sht is what happens when courts screw up.

    “and who trivialize the developments in computing since the 1960′s.”

    I doubt if anyone trivializes the “developments in computing” they only trivialized the “developments in software authorship”.

  70. I think the opposite is true

    So… back in 1972, Malcolm thinks that you could see where you would be 40 years into the future…?

  71. basics is one of the unfortunate folks I was referring to. He/she will never understand patent law and will always be wondering what is going to happen next. He/she will never be able to figure out for himself. Why? Because he/she is a patent birther (thanks Hans! – good one).

  72. the PTO objected to language like “a *computer-implemented* method,” which provides absolutely no guidance as to *how* the computer is involved in the claimed solution. And the PTO has applied Bilski by instructing its examiners to allow claims that specify *how* a computer is used in a solution to a problem.

    That makes some sense but based on the claims that I’m seeing presented to and issued by the PTO, Applicants are still waving their hands around and reciting extremely generalized steps (“receiving data” “sorting the data”) that simply describe things that all computers do.

    Really the only computer/software claims that should be patentable are inventions that increase the computer’s processing speed. Claims to allegedly “new” data processing methods carried out by a computer are obvious per se, in view of the fact that computers are capable of data-processing any information. That is why we are facing this bottomless, infinite “tech rush” at the PTO.

    There is a reason that methods of data processing without a computer (or without a novel data processor) are deemed patent ineligible. That reasoning should be applied to computer-implemented methods as well. The effect on the economy? Negligible. The effect on the USPTO? Vast improvements all around. That appeal backlog will dry up very quickly.

  73. The larger point is that, at the margins (at least), 101, 102, 103 and 112 are closely related yet legally distinct from each other. Pretending that is not the case will cause you to misunderstand patent law, particularly 101.

    Fixed.

    Do Not Conflate.

  74. “per standard USPTO policy.”

    USPTO policy? USPTO policy has ZERO relevance. The USPTO is an administrative agency that is forbidden to have substantive law making authority. The USPTO can only follow the law — not make it.

    “This patent should have been killed under 112 and/or 101 for that reason alone.”
    Oh please … had the Examiner rejected the language on that basis, there are likely dozens of ways it could have been rewritten to overcome the rejection and still maintain nearly the same breadth.

  75. “In both cases, the takeaway message is: When offered a choice to develop and use a ‘variety’ of tests, the deciding body will invariably fall back on the test that involves the greatest amount of subjective judgment (and the least amount of factual support from evidence”

    Nailed it — the decision makers want to do as little as possible to support their pre-determined conclusions. Instead of “I know [pornography] when I see it” kind of test, they use a “I know [an obvious claim] when I see it” or a “I know [unpatentable subject matter] when I see it” type test. It makes articulating their decision so much easier that way.

  76. Your correct, Paul, that 35 USC 101 does appear to allow “clams to be disposed of much more easily, cheaply, and faster, by a summary judgment,” but also on what can only be characterized as a completely subjective, arbitrary, and illogical basis, not one that is objective, consistent, and logical. So which do you prefer?

    Are you saying that you can’t predict whether a given claim will be rejected under 101? If so, then you should pay more attention to what other commenters here (including me) are saying. For most claims, it’s not difficult at all.

  77. “Except in connection with a digital computer”??? Oh is that all??? I guess back in 1972, you couldn’t see where we’d be 40 years into the future.

    I think the opposite is true and that is why Benson was correctly decided.

  78. “I’m not interested in having that patent invalidated just because some judge thinks that it is equivalent to steps that could be performed in someone’s head.”

    Were you interested in not filing it in the first place? Because that’s what it seems like you should have been interested in.

  79. David Stein: 101 is supposed to be only a threshold inquiry

    I would disabuse yourself of this notion as soon as possible. 101 issues can present themselves at any time, depending on what is being claimed how those inventions relate to the prior art. Let me know if you disagree and I’ll be happy to explain to you why this is the case.

    The larger point is that, at the margins (at least), 101, 102, 103 and 112 are closely related to each other. Pretending that is not the case will cause you to misunderstand patent law, particularly 101.

  80. I didn’t say that Abstract. There’s plenty of sht that’s patentable. All you gotta do is claim it properly. It isn’t rocket science. All these decisions do is stop you from overreaching out into an abstraction and prevent a very small subclass of things in the universe getting a patent. Indeed, even the patentee here could have had some much more limited invention patented. At least under this court’s reasoning.

    I just want to take a second and cite this video showing you crybabys what some real inventors look like and what their inventions are.

    link to hulu.com

    Now watch that video and see some of the first real inventing a lot of you will probably ever witness.

    The kind of inventing that most examiners think they’ll be examining when they take this job. The worthwhile inventing of today.

    Self healing coating for gas tanks in warzones.
    Materials to make things invisible.
    Materials to make grip enhancers.

    These are all great inventions. And they’re all patentable.

  81. Your position was articulated by the PTO in Diamond v. Diehr: that if a logical process *could* be performed by a human, the execution of that logic on a computer is not a patentable invention. In a holding that remains the law of the land, the CCPA diagreed – noting that the use of a computer was not only different from the performance of the method by a human, but led to a better result (i.e., more precise control of the rubber-curing furnace than a human operator could achieve).

    Welcome to the computer age. Where doing math faster produces a patentably “better result” when the math relates to something that is currently being heated and where overheating is known to be a bad thing preventable by math.

    I really hope you don’t sincerely believe that “computers are fast, and fast is good” is the take-away from Diehr.

    And the PTO has applied Bilski by instructing its examiners to allow claims that specify *how* a computer is used in a solution to a problem.

    If that’s the case, why on Earth should “use a computer to carry out the steps that solve the problem” get you anywhere with the PTO or the Circuit?

  82. Shorter David Stein: “Computers are teh awesome and everyone who doesn’t like software patents is anti-computer.”

    Give us a break, David. The problem is gxrbxge patents that do not promote the progress of the useful arts and no other art unit receives and spews out more of the gxrbxge than the software and “computer-implemented” biz method art units at the USPTO. If the USPTO can’t address the problem, then the courts will. If the courts can’t address the problem, then Congress will.

    Take your medicine.

  83. IANAE A general-purpose computer might be a particular machine if, for example, the software improved the operation of the machine itself, or affected the machine in some more profound way than putting in code and returning the result of the code. Because really, any sufficiently powerful computer can run code and spit out data, and at that point all you’re really claiming is “in any machine capable of performing these steps, performing these steps”. Or worse, “a list of instructions readable by a machine capable of reading the list of instructions”.

    Absolutely correct and reasonable. Welcome to the present, folks.

  84. 6 wonders how one would use 103.

    You ignore the ineligible process when comparing to the prior art. It’s really more like a 102 at that point because everyone knows the discs (or whatever) are old in the art.

    Essentially the “exception” to the printed matter doctrine become obliterated, which is the correct result.

  85. What now happens to my claim on a medical device that measures a parameter in a sample (the parameter not previously having been known to be significant in the diagnosis of disease X), compares the measurement to a baseline, and if the deviation is beyond some delta tells me the patient is sick? By Dyk’s reasoning, the data gathering is insignificant

    Depends on whehter you claimed the structure in a way that distinguishes it from the prior art, versus the mere recitation of old structure followed by some hand-waving about the “new function” it performs or the “new result” it achieves, particularly where those results or functions can be carried out in your head.

    Nothing surprising here. Been saying it for years. These must claims fall under 101 or 102/103 or 112. Take your pick.

  86. Why is it that software claim (whatever that is) gets special treatment?

    Because only software apparently uses as broad a term as “computer” without qualification to be its “particular machine”, fully intending the term to cover any device that was capable of carrying out the steps in the first place.

    If you claimed a method of going around the Nurburgring in 7 minutes, and when pressed for more particularity you said “oh, wait, a method for doing that in a car”, I’m sure you could expect the same “special” treatment.

    Are you telling me that a DVD including computer code is a method?

    No. The Federal Circuit is telling you it’s a method. I’m telling you it’s not even that. It’s a recipe for performing the method.

  87. IANAE wrote:

    “It’s pure tautology to claim ‘a method to be performed by an otherwise-deliberately-unspecified machine capable of performing the method’, and the courts are (finally) absolutely right to give short shrift to that sort of nonsense. It truly means nothing more than ‘a method’.”

    “A logical method carried out in any manner” is not logically equivalent to “configuring a computer to perform a set of steps that apply a particular type of logic.”

    Your position was articulated by the PTO in Diamond v. Diehr: that if a logical process *could* be performed by a human, the execution of that logic on a computer is not a patentable invention. In a holding that remains the law of the land, the CCPA diagreed – noting that the use of a computer was not only different from the performance of the method by a human, but led to a better result (i.e., more precise control of the rubber-curing furnace than a human operator could achieve).

    That was back in 1982. I respectfully submit that the capabilities of computers have grown a bit since then, enabling computers to perform a much wider array of loigical tasks than humans in a way that is not only different, but better. (See, e.g., Google’s self-driving car.)

    Moreover, no party in Bilski presented that argument – not even the historically-resistant-to-software-patents PTO. In Bilski, the urgent problem to be sovled in that case – according to both the PTO and the CAFC – was that applicants were filing claims for logical methods that were not limited to *any* embodiment. The claims basically read: “Here’s an idea. You can implement it any way you want – throw a computer at it, or just do it in your head – whatever.” That’s why the PTO objected to language like “a *computer-implemented* method,” which provides absolutely no guidance as to *how* the computer is involved in the claimed solution. And the PTO has applied Bilski by instructing its examiners to allow claims that specify *how* a computer is used in a solution to a problem.

    This framework is consistent with Diamond v. Diehr, and seems like an acceptable compromise for many interested parties. The only consistent opponents are those who cling to the philosophy that “all software is math” – and who appear to view computers as souped-up pocket calculators, and who trivialize the developments in computing since the 1960′s.

  88. The court again uses a pointy rock to kill a patent when there’s a M16 right next to them. A claim directed to a “use of” something without a positive action is rejected under both 101 and 112 per standard USPTO policy. The “utilizing” without any concrete action recited is automatically an abstract idea that is also indefinite. This patent should have been killed under 112 and/or 101 for that reason alone. Instead we have this huge bloody mess because they wanted to talk about their feelings.

  89. “Not for the purpose of a software claim.”

    I don’t see that distinction in 35 USC 101? Why is it that software claim (whatever that is) gets special treatment?

    “It truly means nothing more than ‘a method’.”
    Are you telling me that a DVD including computer code is a method? It doesn’t look like a method to me. It looks like a manufacture. Do you see dead people too?

  90. This decision is not a start at all.

    Instead, it is merely a continuation of the now well-worn tradition of unacceptable so-called “reasoning” by the CAFC in patent cases, which tradition is but one symptom of the patent oblivion achieved by the court.

    This opinion goes well beyond patent oblivion, and reaches into the depths of legal oblivion. It goes to the essential duty of the court, to the basic questions of evidence, to the basic right to have a review of government action, and so on. It is much, much more than a mere patent issue.

    Although, once again, I agree with the disposition in this case.

    Eliminate software patents? Fine, if that is what the law requires. But let’s actually use the law, rather than a judicial flight of fancy.

    The end does not justify the means.

  91. Now I’m confused… Twenty years of “Free Beer” brings to mind the Golfer. But now you say it’s the Sun. Or was it too much Sun and Golfing together?.

  92. “I wouldn’t blame the CAFC for this reasoning. It’s the jurisprudence of the Supreme Court, and the fact that the CAFC must follow it.”

    The CAFC didn’t invent the machine-or-transformation test, but it chose to put it on the pedestal of the EXCLUSIVE test of 101 eligibility in Bilski. The Supreme Court disagreed, and gave them the option of developing other tests… which the CAFC has pointedly declined to exercise, referring instead to resolve every 101 complaint using the machine-or-transformation test.

    This is the flip side of the coin from KSR, where the PTO was being forced to show the “teaching, suggestion, or motivation” references in an obviousness decision (which it found extremely distasteful). The CAFC freed the PTO from this obligation, encouraging it to develop “other tests” of obviousness combination. And from that moment on, the only test used by the PTO to combine references is… the examiner’s subjective judgment. 100% – literally, 100% – of the 103 rejections I’ve encountered in OAs since KSR recite a string of references, and then read: “It would have been obvious to one in the art to combine the teachings of Foo with the teachings of Bar and the the teachings of Baz.”

    In both cases, the takeaway message is: When offered a choice to develop and use a “variety” of tests, the deciding body will invariably fall back on the test that involves the greatest amount of subjective judgment (and the least amount of factual support from evidence – which is more painful to locate, and characterize in a defensible manner, than simply stating: “On behalf of the entire body of those of ordinary skill in the art, I conclude that…”

  93. Benson is cited eight times.

    Diehr is cited twice, in a single footnote and not substantively at all (only in conjunction with Flook).

  94. So are you saying that modern computers are not particular machines?

    Not for the purpose of a software claim.

    If you’re told that your software claim isn’t tied to a machine, and you say “oh, sorry, I meant computer software”, how does that help exactly? How is that particular?

    It’s pure tautology to claim “a method to be performed by an otherwise-deliberately-unspecified machine capable of performing the method”, and the courts are (finally) absolutely right to give short shrift to that sort of nonsense. It truly means nothing more than “a method”.

    And the Beauregard version means even less, so you should thank the panel for being so charitable as to elevate it even to the status of a series of actual steps.

  95. “Does not a 101 claim invalidation allows clams to be disposed of much more easily, cheaply, and faster, by a summary judgment, as here, because (as treated here) it does not legally require jury trial resolution of several normally disputed fact issues?”

    Absolutely. And by “easier,” you mean “based solely on the subjective and unsubstantiated judgment of the examiner, without the backing of hard evidence.”

    The reason we have 102 and 103 – and why 101 is supposed to be only a threshold inquiry, not the massive hammer-of-patent-crushiness that it’s become – is because subjective judgment, not backed by hard evidence, is unreliable, inconsistent, unpredictable, and inefficient. In essence, all 101 decisions can reasonably be appealed all the way up to the CAFC (and up to the Supremes), because there is virtually no scenario where it is unreasonable to seek a desired outcome in a particular case when the jurisprudence shifts with the wind.

    The losers are technology practitioners across the board, who cannot expect reasonably drafted applications to be consistently granted, issued patents to be enforced, nor poorly drafted applications of their competitors to be denied or vacated. That’s the severe cost of a system that fails to establish and here to a consistent and predictable framework of adjudication.

  96. “any sufficiently powerful computer can run code and spit out data.”
    Any modern computer (i.e., what anybody has called a ‘computer’ in the last 50 years) runs code and spits out data. So are you saying that modern computers are not particular machines?

  97. Benson is at the root of this reasoning, which has been repeated time and time again since 1972.

    Regarding Benson, “The Court expressly noted that the algorithm had “no substantial practical application except in connection with a digital computer.””

    “Except in connection with a digital computer”??? Oh is that all??? I guess back in 1972, you couldn’t see where we’d be 40 years into the future.

    Idiots at the Supreme Court waxing poetic and philosophical. They take it too far. They should never have used 101 as a filter. The subsequent laws are the filters.

    I wouldn’t blame the CAFC for this reasoning. It’s the jurisprudence of the Supreme Court, and the fact that the CAFC must follow it. A statutory fix is the only way to change this.

  98. Your correct, Paul, that 35 USC 101 does appear to allow “clams to be disposed of much more easily, cheaply, and faster, by a summary judgment,” but also on what can only be characterized as a completely subjective, arbitrary, and illogical basis, not one that is objective, consistent, and logical. So which do you prefer?

  99. I want examples of what constitutes a particular machine that is also a computer (I assume there is no particular reason why a computer cannot be a particular machine).

    A particular machine is somehow related to the method being performed, and typically will meaningfully limit the claim to a practical application of the invention. A purpose-built machine is one example – Diehr’s apparatus was a particular machine.

    A general-purpose computer might be a particular machine if, for example, the software improved the operation of the machine itself, or affected the machine in some more profound way than putting in code and returning the result of the code. Because really, any sufficiently powerful computer can run code and spit out data, and at that point all you’re really claiming is “in any machine capable of performing these steps, performing these steps”. Or worse, “a list of instructions readable by a machine capable of reading the list of instructions”.

  100. You cannot lawfully sacrifice the substantive rights of litigants on the altar of judicial economy.

    Using 101 would be fine, if it were done lawfully.

  101. “Claim was indefinte anyway becuase of step 9c). ‘Utilizing’ as the gerund is far to broad.”

    “Breadth is not indefiniteness.” In re Gardner, 427 F.2d 786, 788 (1970).

  102. “The fact of the matter is that ‘for use in an unspecified computer’ does not tie a method/article to a particular machine.
    Praytell, what is “a particular machine”? Don’t just tell me a computer is not a particular machine. I want examples of what constitutes a particular machine that is also a computer (I assume there is no particular reason why a computer cannot be a particular machine).

  103. I’m guessing that he imagines an obviousness rejection, along the lines of this being a specific application of correlating past measurements to past bad outcomes, and using new measurements to avoid new bad outcomes. That is surely stated over-broadly, but to one-skilled-in-the-art (that’s me!), checking the filing date (1997, post-WWW, we were eyeballing IP addresses before that), nope, that’s a “Duh!” patent.

    I do wish that there were some happy medium here; there are surely “pencil-and-paper” calculations performed by computers, where the design of the calculations required all of the same original thinking and mental effort that a physical invention required. This patent doesn’t look like one of them, but that’s hardly a proof of universal non-existence. And so, to dodge this statutory hoo-hah, the claims get written in this incredibly contorted style, that lends ABSOLUTELY NOTHING to the practice of the invention. Patent attorneys can read it, sure, but you guys are rarely the inventors.

    And yeah, I know, silly engineer, making fun of “statutory hoo-hah”. Do please consider the purpose of the patent system. I’ve got my name on several software patents; they were hard. At least one of them was so hard that I cannot keep all the details in my head unless I have the description in front of me (Chase and Lev, 7,346,753). I’m not interested in having that patent invalidated just because some judge thinks that it is equivalent to steps that could be performed in someone’s head.

  104. “I realise that this may be hard to follow”. Yes, anon, indeed, you’ve put your sharp pencil on it right there. Exactly.

    I appreciate your cheerful advice, on what to do to help me discern what you are on about but, unfortunately, I can nowhere find a glass of free beer to help my brain work better.

  105. Dyk spends a great deal of verbiage describing how the claims weren’t tied to a machine when it comes to claim 2 and then ignores the limitations in claim 3 that tie the ‘underlying method’ to a machine.

    And that didn’t clue you guys in to the possibility that Beauregard claims are an insufficient tying to a machine?

    If Dyk was looking for a computer, and that’s why he nixed claim 3, he would have jumped at the excuse to save claim 2. That’s not what happened.

    The fact of the matter is that “for use in an unspecified computer” does not tie a method/article to a particular machine. Especially since the patentee tends to want “computer” to be understood as “any machine capable of carrying out the recited steps”. You might as well amend the preamble of claim 3 to “a method performed in the vicinity of a machine, comprising the steps of”.

  106. Claim was indefinte anyway becuase of step 9c). “Utilizing” as the gerund is far to broad. What they really mean was comparing cc number to list of previously identified etc…
    How did the Examiner let that past?

  107. As to the frequent question of “why can’t overbroad claims be disposed of on 103 or 112 instead of 101″ and the correlary “what’s the difference between patent-eligibility, and patentability” is not there is a very important practical difference? Does not a 101 claim invalidation allows clams to be disposed of much more easily, cheaply, and faster, by a summary judgment, as here, because (as treated here) it does not legally require jury trial resolution of several normally disputed fact issues?

  108. “To all these supporters, I would direct your attention to a discussion from last night, which you may find interesting, on this following thread.”

    Why would I want to read anything with 6 and MM being the main posters — what a waste of time.

  109. David:

    You hit the nail on the head. The Dyk spends a great deal of verbiage describing how the claims weren’t tied to a machine when it comes to claim 2 and then ignores the limitations in claim 3 that tie the ‘underlying method’ to a machine.

    As noted above, this is judicial activism at its worst.

  110. How wonderful–I get to work, turn on the computer, come to Patently-O, and I find that more supporters of the view that the so-called “reasoning” behind this decision sucks, have emerged and voiced their opinions.

    To all these supporters, I would direct your attention to a discussion from last night, which you may find interesting, on this following thread:

    link to patentlyo.com

    What a great way to start the day.

    Appeal, ho!
    Rehearing, ho!

  111. What now happens to my claim on a medical device that measures a parameter in a sample (the parameter not previously having been known to be significant in the diagnosis of disease X), compares the measurement to a baseline, and if the deviation is beyond some delta tells me the patient is sick?

    That depends. Did you recite in your claim the structure of a specific novel device, or did you recite “a person-usable device for carrying out the steps of receiving a sample, measuring a level of a parameter, and displaying a result”? The former is a perfectly good Diehr-style claim, whereas the latter is a perfectly bad Flook-style (or Beauregard-style, if you prefer) claim.

  112. I just noticed this.

    The lead attorney (on the winning side) in Research Corp. Tech. was J. Michael Jakes of Finnegan, Henderson. The lead attorney (on the losing side) in Cybersource was J. Michael Jakes of Finnegan, Henderson. Wow.

    Frankly, if I was appealing to the Federal Circuit and we drew the Dyk on my panel, I would immediately advise my client to settle unless Newman and Rader were on the other side.

  113. “Dyk dislikes “exalt[ing] form over substance,” yet this is exactly what happens when claims are written with words (i.e., form). The words matter and thus the form matters.”

    Yeah, that’s a particularly rich claim from Judge Dyk… since it immediately follows NINE PAGES of holding that focus solely on the FORM of claim 3.

    Claim 3 refers to a method of performing a fraud check on a credit card in an internet transaction by determining whether the IP address of the transaction has been involved in other fraudulent activity. In upholding the rejection of this claim, Judge Dyk ponderously reflects (for nine pages!) on the “mental steps” doctrine, expressed more recently as the “machine” wing of the machine-or-transformation test; notes that claim 3 may be entirely performed in a practitioner’s head; and thus isn’t allowable subject matter.

    Note that this rationale for rejecting claim 3 has NOTHING to do with the actual invention: it is about the form of the claim that fails to make even a rudimentary stab at tying the invention to a computer. There is absolutely no discussion of the novelty, utility, or non-obviousness of the techniques – the rejection is based on the overly broad form of the claimed techniques.

    Fair enough, and I agree with Judge Dyk on that point.

    However, the rejection of claim 2, referencing this basis for rejecting claim 3, is madness-inducing.

    Claim 2 recites “A computer readable medium containing program instructions for detecting fraud, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to…” perform the claimed method. The CAFC rejects this claim because it is drawn to the same technique as claim 3, but simply puts a different formal framework around the technique – but because claim 3 is not patentable, adding a different formal framework cannot improve the patentability of claim 2, and is thus rejected.

    Put another way: Claim 3 is unpatentable solely because it is not restricted in any way to a machine; and yet, claim 2, explicitly limited to the use of a computer executing instructions that perform the same techniques, is an insubstantial change that cannot remedy the defect of claim 2.

    In support of this holding, Judge Dyk cites In re Abele, which first rejected a method claim to an improved X-ray evaluation technique, and then rejected an apparatus claim that wrapped each step in computing machinery. Judge Dyk characterizes Abele as looking past the formalistic framework of claimed techniques, and subjecting an apparatus claim to the same substantive patentability standards as a corresponding method claim; so, too, Judge Dyk purports to judge the appellant’s apparatus claim using the same patentability standards as the method claim.

    The obvious difference is that, in Abele, the method claim was rejected purely on substance. The key part of Abele that rejected the method claim reads: “This claim presents no more than the calculation of a number and display of the result, albeit in a particular format. The specification provides no greater meaning to “data in a field” than a matrix of numbers… thus, the algorithm is neither explicitly nor implicitly applied to any certain process.” Thus, the method claim has no substance – it is vague (simply reciting a logical concept without substantial limitations to an implementation, e.g., a specific algorithm) and abstract (simply spitting out an abstract number, without limitation to a specific and meaningful result, use, or scenario) – so the form (i.e., statutory class) in which these insubstantial techniques are packaged is irrelevant.

    By contrast, Judge Dyk’s rejection of the appellant’s method claim asserts nothing about the substance of claim 3, which is entirely non-vague (limited to a specific technique with obvious boundaries) and non-abstract (providing a directly useful result for a specific scenario), but focuses solely on the form of the claim – the failure to tie the claimed techniques to a computer. And in the very next literary breath, Judge Dyk rejects a claim that squarely ties the same techniques to a computer – by dismissing such ties as a purely formal change to claims otherwise found unpatentable.

  114. One other tidbit, the attorney for the Defendant was from Greenberg Traurig. From a quick search on the USPTO website, it appears that they have a good-sized stable of software clients, including Yahoo. I wonder what those clients are thinking about their law firm today? I would love to see the reaction of the patent prosecution attorneys in Greenberg Traurig to this decision.

  115. On the other hand, there is such as thing as Free beer as I posted and the use of the phrase “that really is” merely serves as a re-qualifying that free beer aspect by looking at a different picture.

    Akin to localized anything, in comparison to the bigger picture, entropy can go in only one direction (and yet, the localized picture is important – else we would only have warm free beer.

    I realize that this may be hard to follow – have a glass a beer and think about it for awhile…

  116. This case shines a huge spotlight on the lie of the machine-or-transformation test. The CAFC does not care whether a claim is “tied to a particular machine.” If the CAFC does not want to allow a claim involving a computer, it will look at whether sufficient “ties” are present in the claim. If not, the CAFC will reject it as inadequately “tied to a particular machine”; and if so, the CAFC will ignore the “ties” presented in the claims (criticizing arguments over their presence as “exalting form over substance”), and reject the claims for lack of the overlooked element.

    For this logic, several descriptive phrases come to mind – like “paradox,” and “logically inconsistent,” and “catch-22,” and “having its Bilski cake and eating it, too.”

    The only principle that I can extract from this holding is: “If we entirely ignore the computing elements in a claim, is what’s left purely a ‘mental step?’ If so, it is not allowable under the ‘mental steps’ doctrine.”

    Of course, this logic could apply to method claims in ANY field. In the life sciences, for a method of diagnosing a particular disease based on detecting a particular biomarker (e.g., a particular gene sequence, or the presence of a telltale protein), the question becomes: “If we ignore the actual patient and the actual physical test, might a doctor who is presented this information diagnose a patient with a disease?”

    How about chemistry – e.g., a method of manufacturing a specific chemical? If we disregard the actual chemicals involved, is what’s left of the method simply a set of “mental steps” that a practitioner could appreciate and use in many ways?

    Or electronics – e.g., a method of crunching a particular type of data in realtime by fabricating and using a specific DSP? If we take the DSP out of the claim, could one appreciate, and even mentally use, the concept of the method involved in the solution? Thus, the logic of CyberSource is a categorical rejection of method claims, under the following logic: If we ignore and abstract away the physical elements of a method claim, the remainder of the claim is applicable solely a “mental step,” and thus is unallowable under the “mental steps” doctrine.

    Of course, we may expect this categorical rejection to be applicable only in the field of computers – not to method claims in the more respected mechanical, electrical, and chemical arts.

    So what is the difference? Arguably, it’s the “physicality” of the claimed invention: a method that involves a physical article that the CAFC cannot ignore (without rendering the method non-functional) is allowable. But a method that involves machinery that can be abstracted away (in the “well, sure, you COULD use a computer to perform this step [as SPECIFICALLY RECITED in the body of the claim], but a human mind could also perform that step [if given an unlimited memory and a billion years of thinking time]” sense) can be rejected as “abstract.”

    So I think that cases like this are taking us toward a “physicality” requirement for method patents. That’s dangerous territory, which both the CAFC and SCOTUS have routinely avoided – but Judge Dyk’s logic is aimed squarely in that direction.

  117. I was also going to write that this decision directly conflicts with Research Corp v. Microsoft. As I was reading the decision, I noted that Dyk makes the following comments:
    Similarly, in Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), we upheld the patentability of a claimed method “for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask.” Id. at 868. Because the method required the manipulation of computer data structures (e.g., the pixels of a digital image and a two-dimensional array known as a mask) and the output of a modified computer data structure (a halftoned digital image), the method could not, as a practical matter, be performed entirely in a human’s mind.

    The key language is “the method could not, AS A PRACTICAL MATTER, be performed entirely in a human’s mind.” When using the term “as a practical matter,” the Dyk admits that it is possible to perform the method of Research Corp in the human mind. Thus, the fine line (so fine that I’m not sure I can even see it) between the claims of Research Corp and the claims of Cybersource is how practical a method can be performed by the human mind??? That is one heck of a distinction. Are we now going to be fighting (at the USPTO, BPAI, Fed. Cir.) over how “practical” is it to perform the steps of a method in the human mind??? I cannot wait to see how that jurisprudence shakes out.

    Clearly, there is a disagreement in the Federal Circuit over what is patentable subject matter. You have one camp (led by Radar and Newman) in which claims directed to software are patentable. Then you have another camp (led by Dyk and Linn) that would attempt to outlaw software claims altogether (however, they still have to deal with the machine or transformation test and it is too easy to introduce machines into a method claim). I would like to see this case go to the Federal Circuit, en banc, and then to the Supreme Court.

  118. “But we have never suggested that simply reciting the use of a computer to execute an algorithm that can be per-formed entirely in the human mind falls within the Alappat rule.”

    Otherwise known as the “we are going to have our cake and eat it too” logic.

    Let’s rewrite claim 3 as follows:

    3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:
    a) obtaining information, using one or more processors of a computer system, about other transactions that have utilized an Internet address that is identified with the [ ] credit card transaction;
    b) constructing a map of credit card numbers, using the one or more processors of the computer system, based upon the other transactions;
    c) utilizing, using the one or more processors of the computer system, the map of credit card numbers to determine if the credit card transaction is valid.

    Under the machine or transformation test, this would certainly pass muster and be declared statutory subject matter. In that case, how should we treat claim 2, which recites:
    2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:
    a) obtaining credit card information relating to the transactions from the consumer; and
    b) verifying the credit card information based upon values of plurality of parameters, in [snipped]

    Dyk writes “despite its Beauregard claim format, under Abele, we treat claim 2 as a process claim for patent-eligibility purposes.” Thus, since amended claim 3 would be patentable subject matter, and the claimed subject matter cannot “be performed entirely in the human mind,” then original claim 2 would be allowed. Dyk dislikes “exalt[ing] form over substance,” yet this is exactly what happens when claims are written with words (i.e., form). The words matter and thus the form matters.

  119. In a nutshell, nothing is patentable.

    Break any patent into three steps.
    Prep. Function. Post processing.

    Toss Prep and Post processing out according to the cited cases.

    Function: nothing passes because at whatever level desired, there is only natural phenomena or abstract principles at work.

    Indeed, the “magic microscope” can zoom down to the (judicially active-desired) magnification on any thing created by the hands of man.

  120. This decision is a good start.

    Now we need a decision that ANY computer program is just a series of mental steps that could be performed by a human given enough time and paper and we could eliminate software patents once and for all.

  121. Readers, ignore what is immediately above. It is an indvertant duplicate of the same posting higher up, where it belongs.

    Sorry about that.

  122. But beer that really is “free” is not old. There is always a price to pay. There is no such thing as a free lunch, as I reminded you earlier. There is no such thing as free beer either.

    Just as the enantiomer ain’t always obvious, even when the racemate is totally understood, so too is it not obvious how to provide free beer.

    But that doesn’t mean there are no “free beer” claims. In fact, those parts of the USPTO examining software claims are stuffed full of them.

  123. But beer that really is “free” is not old. There is always a price to pay. There is no such thing as a free lunch, as I reminded you earlier. There is no such thing as free beer either.

    Just as the enantiomer ain’t always obvious, even when the racemate is totally understood, so too is it not obvious how to provide free beer.

    But that doesn’t mean there are no “free beer” claims. In fact, those parts of the USPTO examining software claims are stuffed full of them.

  124. It seems that the first nose of wax emerged in the year 1532. (The expression has that sort of “ring” on it, wouldn’t you say?).

    I gather that it was the case of White v Dunbar that first pulled it in to US patent law, where it has remained, ever popular, ever since.

  125. Free beer is not new.

    Free “anything” has been a marketing tool used for countless ages, enticing purchase through a loss leader.

    Since beer is a valued commodity and is known to weaken the sharp critical faculties, it is also not not obvious, as the inducement of Free beer would serve the purpose of the inducement according to its understood function.

    What’s the difference in patent-eligibility, and patentability

    That, my friend, is a question that should be answered without the haze of Free beer – the answer to that question helps highlight the “tweaking” going on here and showcases the philosophical battle and the casualties of common sense.

  126. There is a quote, not within my grasp at the moment, said by (of all people) Stevens that 101 should not be made to be a nose of wax and bent every which way.

    Of course, he had said that after he bent 101 to his view.

    The tug of war continues and this panel has simply tweaked the nose back to the Stevens view (which is to say, the Douglas view, which is to say, the only valid patent is one not yet in my courtroom view).

    With all of the tweaking back and forth, I am surprised that the 101 nose has not fallen off the face of patent law.

  127. The last page says that Research Corp v Microsoft’s method claim recited patentable subject matter because it involved “manipulation of computer data structures” and that the method provided, as its output, “a modified computer data structure”. But I thought data structures were regarded as abstract. How would manipulating and then outputting an abstract thing not also be abstract?

    Why shouldn’t a single number, which is represented in N-bit bytes, not be regarded as a data structure? After all, organizing bits into uniform chunks involves imposing a structure on them??

  128. OK, how about if we add the step “performing steps (a), (b), and (c) faster than a human being can perform those steps” or for those who need more specificity “performing the above steps in less than one quarter of a second”.

    This gets rid of the “human can do it with pencil and paper” argument. And the only way to design around the claim is to insert a delay between calculations, which would render the resulting product useless.

    And just to make for belt and suspenders, how about making the preamble say “A section 101 compliant method for…”

  129. So as I see it, why was there even an exercise on the second Application when the first never really existed as a Patent, and if it didn’t then clearly.. you see where I am going with this Brain Stem thought? So then the third was an exercise in WHAT?
    So is this a clear mistake or clearly a mistake of FACT? And if it was a mistake why was it not corrected?
    Instead it was left open with Kent to draw from LOLOLOL.
    And so there would be no question as to his actions, he does his in Canada because he knows that Foreign filing is imperative in the USA!
    Oh but wait I signed one and faxed it back… He had the Signature! Then he told me to tear It up? Boy if he didn’t have all his bases covered. Yastremski couldn’t even handle Home Plate with that field.

  130. Activ: how do you react to a claim that reads:

    1. Free beer

    It is real and useful and new and not obvious.

    What’s the difference in patent-eligibility, and patentability, between “free beer” and the Beauregard claim under discussion here?

    Presumably you would be against giving anybody a 20 year exclusive right on “free beer” (even though there is no such thing as a free lunch).

  131. The court’s opinion was contrived in a feckless attempt to mask judicial activism. Although the case law lacks any cogent logic because the courts cannot logically deny that software is technology in the same vein as any other defineable technology, the court could have applied existing case law to easily find patentable subject matter. Instead the court’s opinion was clearly driven by a predetermined outcome, which is the epitomy of judicial activism. Software is just a medium in which to implement an invention. Circuits, chemicals, steel, copper, plastic, etc. are just mediums to implement an invention. Why is software then treated so differently? The question is somewhat rhetorical. I believe that early on the Supreme Court simply did not understand the technology of software. Later political correctness entered the scene because the entry barrier to programming is very low compared to actual circuit design. Yet, the ease of copying should actually provide an even greater incentive to allow inventors to protect their software inventions using patents.

  132. Bad claims lead to more fuzzy law. In our next life, there will be a patent act with provisions for computers that resemble reality.

  133. What I don’t understand is that Brain Stem was such a big part in this Game. And it means absolutely nothing after you break it down. How many times did FDR fall on his trip to the chair or to lay down? How come Cassius Clay although evidently suffering massive Brain Stem problems, still makes sense when he speaks? And as noted early by McCracken… How many concussions does the average joe take in The middle east, and you send him back to fight again? Does the Examiner have a Brain Stem injury? Or have you just put too many McCrackin Eggs in the same basket?

  134. I’m with you, Chuck. We’ve now gone from Bizarre Bilski to Crazy Cybersource. Why can’t the courts, including the Federal Circuit, start the claim analysis with 35 USC 102/103 (or in my opinion, with 35 USC 112), instead of starting with “there is no objective test” 35 USC 101? This panel should of heeded the warning in Rsearch Corps that the claimed invention should be “manifestly abstract” before invoking 35 USC 101. The fact that this panel consisted of Judges Dyk and Bryson didn’t help here either, as both have already stated their penchant for invoking “subjective view” patent-ineligibility under 35 USC 101 with respect to isolated gene sequences. I wouldn’t be surprised if Cyberspace ended up being before the en banc Federal Circuit where it could be a real judicial “donnybrook” on this issue of what claimed processes are (and are not) simply to a “mental step.”

  135. This practice of invalidating thousands of patents, years after issuance, through litigation involving only one patent and a couple parties, and on the basis of mushy, directionless common law, is truly odd. Like this decision or not, it’s not a good way to direct an economy.

  136. No. See my post summarizing the history of the leadup to Benson. The essence of the what is claimed is the programmed computer, and it is analyzed as a process for 101 purposes. If it passes muster under the MOT, that ends the inquiry. If it doesn’t, it is abstract if it can be performed by a human. This is 100% flipped from the original CCPA cases on the topic that were reversed in Benson.

  137. Second thoughts on 102. Use it as a 112 squeeze. If the claim to a DVD is unclear as to the pattern of laser pits on its surface, then, prima facie, the subject matter of the claim is not patentably distinguished from old DVD’s. So, novelty not yet established. Claim drafter: more clarity please

  138. On another note…When assigning numbers to a Drawing they go 1,2,3,4,5,6 or 122,123,124,125, or 10,20,30,40,50,etc… So when the ball was in “YOUR” court why didn’t you fix it before moving on and doing the same to the next Application?

  139. Sorry Chuck. I see it was you not 6 who urged 103.

    6 wonders how one would use 103. Which was the pre-CAFC Decision in which the writer pointed out that a piece of music defies analysis under 103? That writer might now agree that you can’t perform an obviousness analysis either on the subject matter of this claim 2. Ergo, its subject matter is self-evidently not fit to be patented. See the EPO for how it’s done, in practice.

    Chuck urges 102. Can’t see that, myself. I’m not happy with decisions that announce that a DVD is a mental act but I would be equally unhappy with any decision that stretching 102 to find novel things lacking in novelty.

  140. It is important to understand that the Patent Office was right on programmed computers in 1968 when their guidelines indicated that programmed computers were not patentable per se, but only when they produced a new result, and that the CCPA of that same era was 110% wrong when it ultimately held, in Benson, that programmed computers were patentable as “new” machines regardless of use. That case, Benson, was then overturned in Gottschalk v. Benson.

    “he Patent Office published notice of its intention to prescribe guidelines for the examination of applications for patents on computer programs. See 829 Off. Gaz. Pat. Off. 865 (Aug. 16, 1966). Under the proposed guidelines, a computer program, whether claimed as an apparatus or as a process, was unpatentable. 11 The Patent Office indicated, however, [450 U.S. 175, 198] that a programmed computer could be a component of a patentable process if combined with unobvious elements to produce a physical result. The Patent Office formally adopted the guidelines in 1968. See 33 Fed. Reg. 15609 (1968).

    The new guidelines were to have a short life. Beginning with two decisions in 1968, a dramatic change in the law as understood by the Court of Customs and Patent Appeals took place. By repudiating the well-settled “function of a machine” and “mental steps” doctrines, that court reinterpreted 101 of the Patent Code to enlarge drastically the categories of patentable subject matter. This reinterpretation would lead to the conclusion that computer programs were within the categories of inventions to which Congress intended to extend patent protection.

    In In re Tarczy-Hornoch, 55 C. C. P. A. (Pat.) 1441, 397 F.2d 856 (1968), a divided Court of Customs and Patent Appeals overruled the line of cases developing and applying the “function of a machine” doctrine. The majority acknowledged that the doctrine had originated with decisions of this Court and that the lower federal courts, including the Court of Customs and Patent Appeals, had consistently adhered to it during the preceding 70 years. Nonetheless, the court concluded that the doctrine rested on a misinterpretation of the precedents and that it was contrary to “the basic purposes of the patent system and productive of a range of undesirable results from the harshly inequitable to the silly.” Id., at 1454, 397 F.2d, at 867. 12 Shortly thereafter, a similar [450 U.S. 175, 199] fate befell the “mental steps” doctrine. In In re Prater, 56 C. C. P. A. (Pat.) 1360, 415 F.2d 1378 (1968), modified on rehearing, 56 C. C. A. P. (Pat.) 1381, 415 F.2d 1393 (1969), the court found that the precedents on which that doctrine was based either were poorly reasoned or had been misinterpreted over the years. 56 C. C. P. A. (Pat.), at 1366-1372, 415 F.2d, at 1382-1387. The court concluded that the fact that a process may be performed mentally should not foreclose patentability if the claims reveal that the process also may be performed without mental operations. Id., at 1374-1375, 415 F.2d, at 1389. 13 This aspect of the original Prater opinion was substantially undisturbed by the opinion issued after rehearing. However, the second Prater opinion clearly indicated that patent claims broad enough to encompass the operation of a programmed computer would not be rejected for lack of patentable subject matter. 56 C. C. P. A. (Pat.), at 1394, n. 29, 415 F.2d, at 1403, n. 29. 14 [450 U.S. 175, 200]

    The Court of Customs and Patent Appeals soon replaced the overruled doctrines with more expansive principles formulated with computer technology in mind. In In re Bernhart, 57 C. C. P. A. (Pat.) 737, 417 F.2d 1395 (1969), the court reaffirmed Prater, and indicated that all that remained of the mental-steps doctrine was a prohibition on the granting of a patent that would confer a monopoly on all uses of a scientific principle or mathematical equation. Id., at 743, 417 F.2d, at 1399. The court also announced that a computer programmed with a new and unobvious program was physically different from the same computer without that program; the programmed computer was a new machine or at least a new improvement over the unprogrammed computer. Id., at 744, 417 F.2d, at 1400. Therefore, patent protection could be obtained for new computer programs if the patent claims were drafted in apparatus form.

    The Court of Customs and Patent Appeals turned its attention to process claims encompassing computer programs in In re Musgrave, 57 C. C. P. A. (Pat.) 1352, 431 F.2d 882 (1970). In that case, the court emphasized the fact that Prater had done away with the mental-steps doctrine; in particular, the court rejected the Patent Office’s continued reliance upon the “point of novelty” approach to claim analysis. Id., at 1362, 431 F.2d, at 889. 15 The court also announced a new standard for evaluating process claims under 101: any sequence of operational steps was a patentable process under 101 as long as it was within the “technological arts.” Id., at 1366-1367, 431 F.2d, at 893. This standard effectively disposed of any vestiges of the mental-steps doctrine remaining [450 U.S. 175, 201] after Prater and Bernhart. 16 The “technological arts” standard was refined in In re Benson, 58 C. C. P. A. (Pat.) 1134, 441 F.2d 682 (1971), in which the court held that computers, regardless of the uses to which they are put, are within the technological arts for purposes of 101. Id., at 1142, 441 F.2d, at 688.

    In re Benson, of course, was reversed by this Court in Gottschalk v. Benson, 409 U.S. 63 (1972). 17 Justice Douglas’ opinion for a unanimous Court made no reference to the lower court’s rejection of the mental-steps doctrine or to the new technological-arts standard. 18 Rather, the Court clearly held that new mathematical procedures that can be conducted in old computers, like mental processes and abstract intellectual concepts, see id., at 67, are not patentable processes within the meaning of 101. [450 U.S. 175, 202]”

    link to caselaw.lp.findlaw.com

    From Steven dissent in Diehr.

  141. I’m wondering: What if Cyber had presented claim 2 beginning “A DVD containing blah blah blah”. Could Judge Dyk still have written “CyberSource has not met its burden to demonstrate that claim 2 is “truly drawn to a specific” computer readable medium, rather than to the underlying method….”.

    Judge Dyk warns about exalting form over substance. To my mind, the “substance” of claim 2 is a manufacture. In construing it as a process claim, he is the one who is exalting “form” over the true “substance” of the claim.

    As 6 says, why didn’t the court knock down claim 2 using 112, or even 103. This Decision will have unfortunate consequences, and does not help legal certainty.

    In Europe, mental acts are statute-barred. But that bar is not effective against a claim to a DVD. A DVD is not a mental act. The US statute does not include a bar on the patent-eligibility of mental acts. But all the same, there are better ways (112, 103) to squash claim 2 than this.

  142. Just to be clear, we’re apparently back to the claim construction manner which Stevens wished us to use in Diehr. Notably, he especially wished us to use it in the context of 101…

    “any judge can conceive of “the underlying invention” in terms that would render it patent-ineligible.”

    And the subjectivity is the beauty of the analysis. Don’t dismiss that out of hand good sir. Invalidating patents is an art, of the highest form.

    “Why does Dyk have to screw things up by bludgeoning claim 2 with 101? ”

    I presume it’s because all Dyk had was a club and everything started to look like a nail. The club being 101.

    “While I don’t think the result is bad – I would never grant a patent on this – would it have been so difficult to nail claim 2 under 102 or 103 instead of 101?”

    What are you going to reject it over? Brittany’s latest album?

    “What now happens to my claim on a medical device that measures a parameter in a sample (the parameter not previously having been known to be significant in the diagnosis of disease X), compares the measurement to a baseline, and if the deviation is beyond some delta tells me the patient is sick?”

    Well hopefully it gets invalidated as it deserved to be a week ago, unless, of course, you managed to MIRACULOUSLY do what everyone else is required to do in such a claim and set it forth in terms of its structure.

    “By Dyk’s reasoning, the data gathering is insignificant, and the comparing is s something that could be done using mental steps, so the fact that I’m claiming a machine is irrelevant in the 101 analysis (even though Abele, upon which he relies here, apparently would have come out differently had the claim at issue there been directed to such a specialized machine.)”

    Well that would depend on how you claimed the machine now wouldn’t it? Did you try to use functional wonctional language? Silly rabbit! Trix are not for patent attorneys!

  143. It was the best of times, it was the worst of times, it was the age of wisdom, it was the age of foolishness, it was the epoch of belief, it was the epoch of incredulity, it was the season of Light, it was the season of Darkness, it was the spring of hope, it was the winter of despair, we had everything before us, we had nothing before us, we were all going direct to heaven, we were all going direct the other way, claims to CRM’s were patent eligible, claims to CRM’s were not patent eligible – in short, the period was so far like the present period, that some of its noisiest authorities insisted on its being received, for good or for evil, in the superlative degree of comparison only.

    ^I think that pretty well sums it up.

  144. “Regardless of what statutory category (“process, machine, manufacture, or composition of matter,” 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes.”

    Say what? The “underlying invention”? Whatever happened to the claim defining the invention? What a load of @#$% – any judge can conceive of “the underlying invention” in terms that would render it patent-ineligible. Claim 2 is clearly directed to an article of manufacture, viz. a computer readable medium, and the inquiry under 101 should end there. Why does Dyk have to screw things up by bludgeoning claim 2 with 101?

    While I don’t think the result is bad – I would never grant a patent on this – would it have been so difficult to nail claim 2 under 102 or 103 instead of 101? What now happens to my claim on a medical device that measures a parameter in a sample (the parameter not previously having been known to be significant in the diagnosis of disease X), compares the measurement to a baseline, and if the deviation is beyond some delta tells me the patient is sick? By Dyk’s reasoning, the data gathering is insignificant, and the comparing is s something that could be done using mental steps, so the fact that I’m claiming a machine is irrelevant in the 101 analysis (even though Abele, upon which he relies here, apparently would have come out differently had the claim at issue there been directed to such a specialized machine.)

    ‘Scuse me while I call the janitor to clean up what I just left on floor after reading this decision.

  145. “Regardless of what statutory category (“process, machine, manufacture, or composition of matter,” 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes.”

    Say what? The “underlying invention”? Whatever happened to the *claim* defining the invention? What a load of @#$% – any judge can conceive of “the underlying invention” in terms that would render it patent-ineligible. Claim 2 is clearly directed to an article of manufacture, viz. a computer readable medium, and the inquiry under 101 should end there. Why does Dyk have to screw things up by bludgeoning claim 2 with 101?

    While I don’t think the result per se is bad – I would never have granted a patent on this – would it have been so difficult to nail claim 2 under 102 or 103 instead of 101? What now happens to my claim on a medical device that measures a parameter in a sample (the parameter not previously having been known to be significant in the diagnosis of disease X), compares the measurement to a baseline, and if the deviation is beyond some delta tells me the patient is sick? By Dyk’s reasoning, the data gathering is insignificant, and the comparing is something that could be done using mental steps, so the fact that I’m claiming a machine is irrelevant in the 101 analysis (even though Abele, upon which he relies here, apparently would have come out differently had the claim at issue there been directed to such a specialized machine.)

    ‘Scuse me while I call a janitor to clean up what I just left all over the floor after reading this decision.

Comments are closed.