Recent Scholarship: Did Phillips Change Anything?

By Jason Rantanen

In a recent post discussing Retractable Technologies v. Becton, Dickinson and Company, Dennis commented that the court continues to struggle with claim construction – a seemingly surprising observation given that the Federal Circuit "clarified" its claim construction jurisprudence just over six years ago in Phillips v. AWH Corp

A new study by R. Polk Wagner and Lee Petherbridge confirms what many suspected: that Phillips did not lead to a new world of simple, straightforward, and predictable claim construction.  In Did Phillips Change Anything?: Empirical Analysis of the Federal Circuit’s Claim Construction Jurisprudence, Wagner and Petherbridge report the results of an empirical study that indicates that the court has made little jurisprudential progress since Phillips.  More importantly, they suggest, the same split in judicial methodological approach to claim construction that forced the Phillips opinion survived the court’s decision and likely still persists.  These findings and others lead them to their normative conclusion: that "Phillips stands forth as an unfortunate example of poor decision-making by the court, and one that negatively impacts its overall role in the patent system." Wagner and Petherbridge, abstract.

The paper is forthcoming in Intellectual Property and the Common Law (Cambridge U. Press, 2012, S. Balganesh, ed.), and a copy of the draft is available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1909028.

144 thoughts on “Recent Scholarship: Did Phillips Change Anything?

  1. would it make any difference if the claim begins with “A DVD with a pattern of pits…..blah, blah, blah”. You cannot seriously deny that this is a claim directed to an article of manufacture, can you?

    If the claimed subject matter is an article, and the pattern is not old, how are you going to stop the claimant getting to issue? 103, perhaps? Or perhaps 112, bepending on the blah?

    You’d get over 112 (CONGRATULATIONS!!!) but you’d still be claiming a piano roll with new music on it. 103 would be appropriate (by ignoring the printed matter) or, as Ned points out, 101 would work too (ignoring the eligible subject matter and focusing on the underlying, patent-ineligible invention).

  2. It is in A New Light’s post

    The idea that mental processes are abstract and patent-ineligible is old. The application of 101 to claims reading on mental processes (literally or effectively) has been advocated by other commenters years before your sockpuppet called “A New Light” showed up.

    Breyer’s dissent in LabCorp set the stage a number of years ago. Something needed to be done. The courts are doing it. Sit back and enjoy it.

  3. Please put your head even deeper into your xxx and let me know what else you discover.

    Why, there is Malcolm, already there.

    Tell me, if you can, what exactly can an abacus do that cannot also “be performed entirely in the human mind.”

    Apply the law as put forth (since you have professed that the details do not interest you).

    Try to contain yourself to an actual legal argument.

  4. This is 100% flipped from the original CCPA cases on the topic that were reversed in Benson.

    It is in A New Light’s post, pointing out the tug of war in the trilogy of cases, and most notably Stevens’ apocryphal recap of doctrines, that the egg shells of the Phoenix of “that can be performed entirely in the human mind” can be found.

    That which is old is new again.

  5. No. See my post in the thread on this case 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.

  6. Malcolm, I suggest that you may have Phillips 100% backwards.  

    The court went out of it way to say that the specification must always be consulted in interpreting the claims to determine "what" was invented.  They specifically held that expressed definitions were not required to limit claim scope.  The goal was to determine whether the embodiments were describing the invention or just examples without any limitation on
    scope.

    Further, and this is important, where a claim term has more than one purpose as described in the specification, it is generally not correct to limit the claim term scope to just one of them, or require that they include all.  This was critical to the holding in the case.

    Here is the Philips claim:

    "Claim 1 of the '798 patent is representative of the asserted claims with respect to the use of the term "baffles." It recites:
    Building modules adapted to fit together for construction of fire, sound and impact resistant security barriers and rooms for use in securing records and 1311*1311persons, comprising in combination, an outer shell …, sealant means … and further means disposed inside the shell for
    increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shell walls."Note the claim itself identifies the purpose of the baffle was to increase load bearing capacity, not to deflect bullets.  The bullet deflecting aspect required the oblique angles which the lower court read into the claim…..The fact that the written description of the '798 patent sets forth multiple 1327*1327 objectives to be served by the baffles recited in the claims confirms that the term "baffles" should not be read restrictively to require that the baffles in each case serve all of the recited functions. We have held that "[t]he fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives." Liebel-Flarsheim, 358 F.3d at 908; see also Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1367 (Fed.Cir.2003). Although deflecting projectiles is one of the advantages of the baffles of the '798 patent, the patent does not require that the inward extending structures always be capable of performing that function. Accordingly, we conclude that a person of skill in the art would not interpret the disclosure and claims of the '798 patent to mean that a structure extending inward from one of the wall faces is a "baffle" if it is at an acute or obtuse angle, but is not a "baffle" if it is disposed at a right angle.

  7. No time to read all the thread, but would it make any difference if the claim begins with “A DVD with a pattern of pits…..blah, blah, blah”. You cannot seriously deny that this is a claim directed to an article of manufacture, can you?

    If the claimed subject matter is an article, and the pattern is not old, how are you going to stop the claimant getting to issue? 103, perhaps? Or perhaps 112, bepending on the blah?

    Just curious.

  8. Well, it’s only about 11 hours old right now. And it’s not like his non-posting has stopped any conversation…

    If you’re really jonesing for a write-up fix, a google search of Cybersource Retail shows a few random commentators have weighed in already.

  9. I also hope, along with IBP, Hardworking, 6, and people in my office, that the reasoning behind this opinion is overturned, either by SCOTUS or an en banc CAFC.

    In my office we are unanimous in our opposition to the patentability of software, but also unanimous in our distaste for this opinion.

  10. Btw guys, here’s an article on how to persuade and/or manipulate people to lose at rock paper scissors. Much can be learned from this simple tactic which I’ve been using for years against people.

    link to games.yahoo.com

    Take that and run with it in the patent context.

    Oh and check out what the former Sec o Commerce is up to:

    link to news.yahoo.com

    Just getting in the national news.

  11. Yeah, we get the fact that you two are lovers and that different standards apply in your interactions with everyone else.

    Just try not to be so blatant about it.

  12. There are simply way way way way too many individual comments to address for the Overreaders out there.

    The euphoria of this panel decision is much much much too early to be celebrated.

    Like a real pro would do, act like you all have been in the endzone before.

  13. Well, in this case I don’t think it did necessarily satisfy MOT. But, yes, the test is preemption Ned, you know this is my position and it will be until the courts change it.

    The test, Ned, is not MOT. It is preemption. Period.

    Repeat after me. Preemption is the test. Preemption is the test. Preemption is the test.

    MOT is just a helpful shorthand you can use in a pinch on an easily decided case. if there be any question if MOT is satisfied, MOT has served its purpose and it is time to do the real analysis.

    It’s like, if you hunted big game. You take 2 rifles with you. One rifle you use for smaller big game, a gazelle perhaps. And another gun that you use to blast elephants and really big game.

    MOT and preemption are like those guns, except they fire bullets that only hit targets which they are legally able to. MOT is the small game gun, and if you shoot the elephant with it you may or may not kill it, although you will wound it if the bullet scores a hit, but you sure as f will kill the gazelle (ez game, like, for instance your standard software bs). But when you come across an elephant or other creature (say the claim in Myriad) that survives, but is wounded by, your blast from the MOT, you may need to pull out the big gun, the one that is kind of heavy and a pain to use. And that’s your preemption. Obviously you can technically use preemption to kill the gazelle as well, but it’s a pain.

    And always remember Ned, so far as the USSC is concerned, MOT and preemption are things used to kill claims. Not breath life into them. The CAFC’s opinion the contrary.

    Also Ned, why on earth would you ask me that? Did Benson’s claim pass MOT? Yes, mr. barrel shifters it did.

  14. Ned, I honestly don’t care much about the particular facts at issue in Phillips, for the same reasons that the particular facts at issue in KSR are irrelevant. Phillips wasn’t about “baffles”.

    It was about how to interpet claims. And the first thing you do is start with the claims. That’s what Phillips says. If you start with the claims and you see an independent claim with the word “body” and a dependent claim with the phrase “wherein the body is a single-piece body” the analysis is pretty much over. Is there a definition in the spec that says that “body” means “single-piece body” only? If not, then you’re done.

    One skilled in the art of syringe design should not need to know or care what the specification in Phillips said about “load bearing baffles” in order to interpret the term “body” in claim 1 of Retractable Technologies. To require otherwise renders claims pointless.

    Retractable Technologies is quite possibly the worst case on claim construction the CAFC has ever written. That will eventually become widely acknowledged. There is no other way.

  15. I am not sure I understood you, but did you just say that, in your opinion, a claim that literally satisfies the MOT is still unpatentable?

    I find that hard to believe. Perhaps what you consider passing the MOT is not really passing the MOT.

    Obviously you cannot talk about the case, but if you could give us a hypo to explain what happened?

  16. “Or you could just make the 103/112 rejections yourself. Tell your boss to grow a pair.”

    Lulz, like today. Perhaps somewhat ironically, I had my first appeal conference in years and we go in with my spe all yeah, I’m totally behind you 100% on this thing let’s just send this up. I’ve told him several times that he can either go with policy and the 101 help panel or with not making a legal error and rejecting it. He was all “let’s reject it”. But his peers come in and start spouting MOT all matter of factly and citing PTO policy. I point out to them that a claim (not a b claim) in fact preempts an abstract idea. They respond that they see my position (and notably do not want to respond because it is correct lol) but they think satisfying MOT is sufficient on policy grounds. I also note that the machine to which there is a supposed “tie” is not particular in the least and is in fact quite general. But they believe that it is specific enough. Nothing at all new about the situation is disclosed to my spe as everything had been discussed previously in some excrutiating detail. I tell them fine, if they can convince my spe to allow it then we’ll allow it, I just write the actions and advise on the law as I see it.

    My Spe eventually reluctantly agrees to make a legal error in the name of policy. Literally.

    And to be clear, this was not a standard case of complete bull sht software stuff or something of similar status. This was something that, as a matter of policy, I would grant a claim to, though the law is opposed to it.

    But, np, so long as we see good decisions like this out of the Fed we’ll have the policy in order shortly. And hopefully they will adjust the law so that quite so much collateral damage is not required by the law.

    I feel rather bad for this applicant becoming a bag holder after he pays the issue fee, because that may very well happen. Any defendants have a ready made 101 argument spelled out for their use. And sans policy, it will do the trick.

    Also somewhat ironically, that french applicant I made fun of for notice of appealing my decision on his shty application just went abandoned for failure to file a brief. What happened Frenchy? Couldn’t be bothered to actually appeal?

    It’s been a 101 day that went down about as expected.

    And yes, I somewhat agree with Hardworking that all examiners shouldn’t take the lawl into their own hands, however, where office policy is blatantly agin the lawl there is kind of an issue. We did after all take an oath to uphold the lawl not policy.

  17. Malcolm, I think you may have misunderstood Phillips. The reason the claims were not limited to the angled baffles was that the spec. disclosed two purposes for them: bullet deflection and load bearing. The claims at issue only called for load bearing. Had they called for bullet deflection, the result probably would have been different.

    This case actually presents the issue that was avoided in Phillips, which is why what the inventors said in the spec. about the single-piece body is quite relevant.

  18. Hard, the SC did not agree that the MOT was the end all and be all test. They agreed that if a claim passed the test that it was patentable SM. But they cautioned that failing the test did not ipso facto mean that a claim could not be patentable.

    I think that is why the Feds went beyond the MOT here.

  19. Look around you, Hardwanking. The destruction of the Diehr-bots and their “can’t ignore the limitations” mantra is exactly what is happening.

    Or more accurately (and humorously, at your expense, since you evidently haven’t read Bilski very carefully), it’s “the effective result.”

    LOL!

    I’m still loving it.

  20. Same with Bilski.

    Most decidedly not.

    You claimed that Bilski would outright reverse the Diehr decision and destroy the “Diehr-bots.”

  21. As for “instruction structures,” I am equally certain that if you are referring to Printed Matter Doctrine (including the exception), that doctrine remains intact.

    LOLOLOLOLOL. Enjoy it while it lasts.

    Hardwanking seems the kind of lawyer who routinely spends tens of thousands of the client’s dollars analyzing the reverse doctrine of equivalents in opinion letters (which nobody can stomach reading because their so weirdly sanctimonious).

  22. Hardworking And Making a Note of Unsound Suggestions That Would Only Make the Office Even More Inefficient says:

    Or you could just make the 103/112 rejections yourself. Tell your boss to grow a pair.

    Didn’t this topic already come up…?

    Oh yes – on the appeal backlog thread.

    With no disrespect to 6 intended, advocating the rampant self-determination of legal holdings by examiners is not really a very sound suggestion.

  23. Ned,

    We will have to disagree.

    I read “The reconsideration Board majority also erred in its reasoning…” and “Alappat argues…” and “We agree” to be more than dicta – it is critical to this argument of the Office being denied. It cannot be done without (for that argument). I am sure that you realize that the board would have only had to prevail on one of its arguments and thus the CAFC holding here cannot be dismissed as mere dicta.

    And this is in addition to the other points I have already made (choice of language, choice of cited law).

  24. I think it would be nice if he spent his energy on actually developing sound positions to back up his fervent beliefs

    Hardwanking, I “fervently believed” that this day would come and I articulated my reasons to you and others for quite some time. Same with Nutjen. Samy with Myriad. Same with Bilski.

    I was wrong about Prometheus but that fight is far from over. And rest assured that any “contradictions” between Phillips and some of the more recent Federal Circuit cases will ultimately be resolved en banc in accordance with my “positions.”

    If you think my positions are “unsound” then you must have me confused with someone else. There really is one direction for these cases to flow, absent legislation to reverse the change. Oh, and that reminds me: I was right about the move closer to a first to file system, too. And when continuation practice gets curtailed, I’ll be proven right about that, as well.

    Sxcks to be you.

  25. The sentence where they stated that programming creates a new machine is a matter of lawl, not a fact found.

    Actually 6, it is both. My discussion applies to the Facts in Alappat, and the holding that is used that was generated from those Facts and is now (and still) law. It is a Fact that programming creates a new machine. It is law that is not overturned by anything (even Bilski).

    I am certain that Malcolm will not mind sharing his table if you want to pound on it.

    As for “instruction structures,” I am equally certain that if you are referring to Printed Matter Doctrine (including the exception), that doctrine remains intact. As has been noted by several of those that do understand the complete doctrine, the “What is Written” still (and always has been) needed to be evaluated.

    It turns out that this Panel evaluated the claims to be abstract, regardless of the form of the claim (see pages 9, 16 and importantly 17).

    Please try to keep up with legal arguments instead of table pounding.

  26. 6: I hope that an En banc panel overturns the reasoning behind this opinion and finishes the job properly on all B claims for improper drafting

    Or you could just make the 103/112 rejections yourself. Tell your boss to grow a pair.

    More importantly, though, there is no question that the holding in this case is going to leak into claims that are not strictly Beauregard claims. It will leak into computer apparatus claims and that is a good thing, thank you very much.

  27. it would be plainly silly to think that a CAFC panel could overrule the Supreme Court, now wouldn’t it?

    Or maybe — just maybe — some dxxxxchebags on a patent blog are taking some poorly written language from a Supreme Court case waaaaaayy too seriously.

    LOLOLOLOOLOLOLOLOOLOLOLOLOL.

  28. 8,001,058

    8. A tangible, non-transitory computer-readable medium having computer-executable instructions stored thereon that, if executed by a computing device, cause the computing device to perform operations comprising: storing information relating to one or more sales transactions by a seller obtained by facilitating the transactions for the seller, wherein the information relating to one or more sales transactions by the seller includes information from a source other than buyers of items from the seller; retrieving, using the computing device, stored information relating to a plurality of factors including at least one factor other than a buyer rating, wherein the stored information includes the information from the source other than buyers of items from the seller, to be incorporated in a score assessing the performance of the seller; identifying, using the computing device, a portion of the retrieved information relating to a distinguished factor of the plurality of factors that is unresolved, the unresolved portion relating to completion, with respect to a cancellation or a timing of a delivery, by the seller of the sale of a distinguished item to a distinguished buyer; transmitting over a network to the distinguished buyer of the distinguished item a request for additional information relating to completion by the seller of the sale of the distinguished item that resolves the unresolved distinguished factor; receiving over the network additional information from the distinguished buyer, the additional information relating to completion by the seller of the sale of the distinguished item that resolves the unresolved distinguished factor; and generating, using the computing device, a score assessing the performance of the seller using both the retrieved information and the received additional information, wherein the score is calculated based at least in part on the at least one factor other than the buyer rating and the received additional information from the buyer relating to completion by the seller of the sale of the distinguished item and corresponding weighting factors, wherein the score is used, at least in part, in determining how the seller is promoted in an online marketplace.

    Obviously the recitation of a “computer” within the Beauregard claim can be ignored for the same reasons that the recitation in the preamble is ignored. As recited in the body of this Beauregard claim, it does nothing to mitigate the attempt to claim the abstract process. So long.

    [insert sound of paper crumpling and hitting bottom of gxrbxge can]

  29. Hard,

    I think the Feds recognized that Alappat does present difficulties, which is why it discussed it in the opinion. However, the discussion about a programmed computer from Alappat was dicta since it was discussed in an “arguendo” context — assuming that the Alappat claims could find “equivalence” in a programmed GP digital computer, the result would not be different. That is dicta, because the court never in fact held that a programmed GP digital computer was an equivalent of the specific hardware disclosed.

  30. Hardworking and Enjoying a Gentlemanly Discussion with Leopold Bloom on What Would Make the Blog Sections of This Website More Delightful says:

    Leopold,

    I concur. Malcolm’s style is simply not conducive to developing the issues for a gentlemanly debate.

    I have attempted to help him out numerous times by pointing out the flaws in his logic and techniques, and the only thanks I receive is unwarranted abuse and rudeness. And while I can take heart that Malcolm is simply rude to everyone he disagrees with, I think it would be nice if he spent his energy on actually developing sound positions to back up his fervent beliefs.

    Table pounding simply is not very impressive.

  31. “as well as the fact that programming creates a new machine (a separate aspect).”

    Lulz. You can’t tell the difference between a matter of lawl and a matter of fact now eh? The sentence where they stated that programming creates a new machine is a matter of lawl, not a fact found.

    When Ned says limit Alappat to the facts, he means to the specific facts, not the matters of lawl they decided/dictaed on about.

    “Further, it is certain that Diehr could not overturn Alappat and equally certain that In re Abele also could not overturn Alappat. ”

    Diehr and Abele came before Alappat didn’t they?

    “(and besides which, the language itself reflects a clear holding of law”

    So now it’s not a fact but a “holding of law”? Which is it? Make up your mind.

    “If anything, since Alappat comes after Abele, Abele is rendered moot by what Alappat provides (not the other way around”

    I thought that legally it was the other way around. First decision is more binding than the later ones and all that… although on this point I would differ to you if you believe you know better.

    “I say this because if indeed the computer was already a specific machine, the statement would not have been made at all.”

    Well, you say that, but Newman is old, and she drafted that abomination didn’t she? Who knows what little gems might have fallen from her mouth unbeknowst to her?

    But hey Hardworking, how about them little instruction structures on ur CRM’s? How about em? Sure saved the day here didn’t they?

  32. I agree too, which is why I hope that an En banc panel overturns the reasoning behind this opinion and finishes the job properly on all B claims for improper drafting. Should it be treated as a product? Should it be treated as a method? Apparently that issue is tricky enough to fool and entire Fed Circ panel if indeed the answer is “product” rather than as they treated it as a method.

  33. 8,001,138

    7. A non-transitory computer-readable medium having computer-executable instructions for causing a computer to perform steps comprising: receive a search term from a user; search a data store and determine if the search term was previously assigned to particular content as a primary word by an originator of the content, the data store being an index of content from a plurality of sources; if the search term is determined to be previously assigned to particular content as the primary word, then retrieve from the data store one or more primary references to primary content that has been associated with the primary word; if at least one primary reference is found, determine a secondary word predefined as related to the primary word; search the data store and retrieve secondary references to secondary content associated with the secondary word, if any exist; build an output list that includes at least some of the primary references, and at least some of the secondary references if at least one secondary reference was found; and display the output list to the user in the form of a search result, the output list being displayed in a hierarchy such that the one or more primary references are shown in a primary reference portion of the hierarchy and the secondary references are shown in a secondary reference portion of the hierarchy, and the one or more primary references and the secondary references being displayed in the form of hyperlinks; and if the search term is determined to not have been previously assigned to particular content as the primary word, informing the user that the search term has not been previously assigned to particular content as the primary word, and providing the user with one or more suggestions of other words in a same field as the search term.

    BUH-BYE

    [insert txxxlet flushing sound]

  34. I do like to know what I am talking about

    Like when you were blabbing on and on and on about how you can’t ignore claim limitations when doing a 101 analysis?

    LOL!

    Diehrbots. Time to turn on the trash compactor and watch ‘em get small.

  35. It is clear that the Supreme Court did not agree with the CAFC on the MOT and expressly said so (all nine justices).

    They didn’t agree that the MOT test was, by itself, sufficient to determine whether a claim was patent eligible. But they said that the test was useful.

    The important thing, Hardwanking, is that your incessant, incoherent and incorrect blathering about Diehr mandating that claim limitations can not be ignored during the 101 analysis has been proven to be just that: incoherent and incorrect. I will be bringing that fact to your attention forever so you might as well just change your username.

    Again.

  36. And the Final Court[] pretty much [has] the final say on such things.

    Just a minor correction.

  37. Hardworking and Noting that Diehr is Still Good Law, Even Though Some May Be (Prematurely) Celebrating Its Demise says:

    In both cases, the claim format itself survives.

    In other words, the content – the “what” is written must be evaluated.

    I completely agree, and would add that the claim still must be read as a whole, as it would be plainly silly to think that a CAFC panel could overrule the Supreme Court, now wouldn’t it?

    It is evident that the “what is written” here failed the abstract test, regardless of claim form (and not as erronously suggested, an element or limitation was dissected out, because we know that that would make this judgement only too easily overturned upon [instant] review).

  38. Ned,

    It is clear that the Supreme Court did not agree with the CAFC on the MOT and expressly said so (all nine justices).

    It is also clear that the Supreme Court did use the raionale of Bilski’s claims being abstract.

    Since Bilski’s claims neither used a computer, were drawn to a computer system, or had a Beauregard claim, the Supreme Court rationale of abstract does not touch on any of these “elements.”

    It has been bemoaned widely that the Bilski decision did not provide more, but it is clear that the CAFC Bilski MOT test is not good law.

  39. 6,

    Please see my post above.

    Unlike others, I do like to know what I am talking about (plus a filing had to happen today, which slowed me down a tad).

  40. A quick search of the USPTO database reveals 111 patents with the term “computer-readable medium” in the claims issued today (August 16 2011).

    A bunch of those claims are going down. Good riddance.

    Especially this astonshing piece of gxrbxge:

    8,001,473

    10. A computer-readable medium on which is program code, the computer-readable medium comprising: program code for receiving a first composition; program code for receiving a selection of one or more properties associated with the first composition; program code for receiving a randomness value; program code for generating a set of adjusted compositions based at least on the first composition, selected one or more properties, and randomness value; and program code for displaying at least a subset of the set of adjusted compositions.

    Heckuva job, Kappos. Heckuva job.

  41. Close, but no cigar.

    The Alappat specification disclosed specific hardware. The Board was ignoring this structure in construing the means clauses broadly. That aspect of the Board’s decision was overturned.

    To keep is simple,…

    I respectfully disagree.

    Ned,

    You are mistaking the fact that Alappat addressed means plus function claiming (the section you reference – that aspect) as well as the fact that programming creates a new machine (a separate aspect).

    Both are in fact, well, facts. But the means plus function discussion does not eliminate the Facts posted here by These are the CORRECT facts (please note that the post is a direct quote from the decision).

    You of all people should be sensitive to the use of quotes and facts. So if you think this quote directly from Alappat is somehow “incorrect (which by the way is simply saying “wrong”)” or the facts are not as provided, you would do well to provide powerful proof of this, rather than mere conjecture or, dare I say, misquoting Alappat (and let me be clear as to not be rude, by misquoting I mean that you are applying an actual quote to an incorrect point). You need to explain this quote and not use a different quote from a different part of the decision that addresses a different argument.

    Further, it is certain that Diehr could not overturn Alappat and equally certain that In re Abele also could not overturn Alappat.

    And I am also certain that the part of the decision quoted by These are the CORRECT facts is not> dicta, as that quote bears an immediate point on defeating one of the government’s arguments, and thus is necessary to the holding on that point (and besides which, the language itself reflects a clear holding of law – in what can only be deemed a deliberate choice of words).

    I also take issue with your statement that Alappat somehow loses its potency because of the cases it may derive some of its logic from (your reference to pre-Diehr cases). If anything, since Alappat comes after Abele, Abele is rendered moot by what Alappat provides (not the other way around). The full en-banc court purposefully choose those particular cases after the Diehr decision, and thus necessarily impute that those cases were indeed good law after that Diehr decision.

    Lastly, I find your statement here of “not a conventional CPU architecture, but a specific machine” not making the point that you suggest it does, as it does not appear to have a legal foundation and would result in the court’s statement being a nonsense statement, rather than the dicta you now would have. I say this because if indeed the computer was already a specific machine, the statement would not have been made at all.

  42. The analogous art includes both methods carried out in meatspace AND on computers. This is as it should be because mere computerization generally contributes nothing of patentable weight (at least in the absence of evidence showing that skilled artisans believed that the claimed process could not be computerized — a very, very small subset of methods indeed).

    I’ll second that. Of course, it does not necessarily follow from this that a very, very small subset of computerized process claims are patentable. Right?

  43. Well, here we’ve been sitting around all day and no comment from Hardworking et al. I suppose they were working too hard drafting ineligible claims to be bothered to read the decision telling them they’re invalid.

  44. There is quite possibly additional legal error in the Cybersource CAFC panel decision.

    The panel cites its own level Bilski decision, employing the MOT “must impose meaningful limits on the claim’s scope” rationale (see pages 18-19).

    However, that rationale was overturned at the Supreme Court, which used a different rationale.

  45. Close, but no cigar.

    The Alappat specification disclosed specific hardware. The Board was ignoring this structure in construing the means clauses broadly. That aspect of the Board’s decision was overturned.

    To keep is simple, the following is the construction the Feds gave claim 15 (from Archer’s in part concurrence):

    “Alappat correctly argues and the majority properly holds that when the “means” elements of the claim are construed under 35 U.S.C. Section 112, Para. 6, paragraphs (a) to (d) of the claim read as follows (the preamble has been shortened for brevity):
    A rasterizer for converting vector list data . . . into . . . pixel illumination intensity data to be displayed . . . comprising:
    (a) a first ALU;
    (b) a second ALU;
    (c) two barrel shifters; and
    (d) a ROM.
    Further, pursuant to 35 U.S.C. Section 112, Para. 6, elements (a)-(d) also cover equivalents of the two ALUs, the two barrel shifters, and the ROM.
    Because the “means” clauses of claim 15 correspond to structure described in the specification, under Donaldson the reconsideration panel of the board erred in failing to construe the claims to recite that structure and equivalents.”

    Now the very passage you quote relies on pre-Diehr cases. In re Abele is a post Diehr case. Abele holds that an apparatus claim that recites broad means plus function elements for calculation will be treated as a process for Section 101 purposes.

    That holding has not been overruled. The specific portion of Alappat you quote is dicta, because the actually apparatus disclosed by Alappat was not a conventional CPU architecture, but a specific machine. Whether in fact the claims covered a GP digital computer was not necessary to the decision.

  46. IBP The problem is that it is unlawful, for a number of perspectives, for either the PTO or the courts to treat an article as a process.

    Think of it in these terms: how would the PTO conduct a search on this basis? What is analogous art?

    The analogous art includes both methods carried out in meatspace AND on computers. This is as it should be because mere computerization generally contributes nothing of patentable weight (at least in the absence of evidence showing that skilled artisans believed that the claimed process could not be computerized — a very, very small subset of methods indeed).

  47. the applicant ACTUALLY DID claim an article

    No, he didn’t. I can tell he didn’t, because the court decided that his claim was not actually directed to an article. And the courts pretty much have the final say on such things.

    Whether he intended/attempted to is beside the point. The courts are not in the business of always giving the applicant/patentee exactly what he thought he was claiming. Especially when the “structure” is such an obvious sham.

    Applicant: “It’s an article of manufacture, honest. See? It says right there, ‘unspecified object for carrying instructions to perform method steps’.”
    CAFC: “Did you really think you could fool us that easily?”
    IBP: “I thought the mere attempt to fool the CAFC was all that was legally required.”
    CAFC: “Nope.”

  48. what does Diehr have to do with this?

    Evidently very little, which is why you lose and I win. Bigtime.

    Computer-readable medium = article of manufacture = claim limitation = IGNORED FOR PURPOSES OF 101 CONSIDERATION

    So much for that “strict” requirement for reading the “claim as a whole.” Right out the fxxxxing window. Of course, the requirement only existed in the “mind” of the Diehrbot, as alluded to by LB upthread.

    I’m loving it. Loving it, loving it, loving it.

    More to come!

  49. Ned, I know that you have been arguing that a programmed machine will be treated as a process.

    The problem is that it is unlawful, for a number of perspectives, for either the PTO or the courts to treat an article as a process.

    Think of it in these terms: how would the PTO conduct a search on this basis? What is analogous art? etc. There are MANY more difficulties with this that I won’t go into here, such as the concept or possible requirement of canceling article claims and adding process claims during the examination.

    “…we look to the underlying invention for patent-eligibility purposes.” OK, precisely how do you do that? It’s like the best evidence rule–the best evidence of what the invention is, is “the subject matter which the applicant regards as his invention”, which is defined in the claim.

    There may be other evidence, but evidence that suggests conclusions that are totally incompatible with the evidence from the claim–for example, that the invention is a process rather than an article as claimed–cannot be given any weight without completely discounting the evidence of the claim language as provided by the applicant.

    And on and on.

    I’ve got to get back to work, too bad, I was actually enjoying this. I’ve spent WAAAAYYYY too much time here already today, which means I’ve just shafted myself. A day without appearances or meetings, set aside to work in the office, turns into a day blogging. Ouch. Fare thee well.

  50. LB That’s because you tend to state your positions in extreme terms that are just as wrong as the Diehrbots.

    Nice try, LB.

  51. Ned Heller being called (ohmygod) “Wrong.” And not just “wrong” but simply “false and wrong.”

    You young man just wait until your father comes home.

  52. That’s called “dicta”, my friend. ;)

    Dicta that reminds us of the prevailing law, my friend.

    Forgive me, LB, but I don’t remember your flashing sword by my side in the War Against the Diehrbots.

    That’s because you tend to state your positions in extreme terms that are just as wrong as the Diehrbots. I don’t do flashing swords, anyway.

  53. B-b-b-ut what about D-d-d-iehr????

    LOL.

    LOL right back atcha – what does Diehr have to do with this?

  54. “Would it help if you thought of this as a case where the applicant attempted to claim an article, but the Circuit politely informed him that he did it wrong?”

    I know right?

  55. And one other thing which you’re forgetting Ned. Something I’ve taken some time and trouble to explain to you…

    “For us who prosecute applications in the general area, this case is highly useful for telling us what we need to do in order to claim patentable subject matter. ”

    Lulz, nope, it simply tells you one specific thing that you shouldn’t do in drafting your claims. But of course, that’s just one small thing within a broader set of things you shouldn’t do.

  56. Ned Heller said in reply to Beauregard…
    This post is a joke.

    Why that was simply rude.

    If you think this post is not correct, be polite and say you disagree and explain why.

    There is no need to be rude, is there?

  57. IBP, below is the entire paragraph quoted by Malcolm.

    Recall our discussion in the other thread. This is exactly what I have been arguing to you: a programmed machine will be treated as a process. That was the holding of In re Abele. The Feds have now severely limited the “contrary” holding of Alappat to its facts.

    Regarding Cert., you have got to be kidding. This case is so in tune with the Supreme Court holdings as be beyond reproach. It is the single best 101 case that the Federal Circuit has ever produced. I think the reason for this is that Rich is not longer around and further because Rader and Newman had nothing to do with it.

    The full quote.

    “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” be-tween 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 appa-ratus[es] capable of performing the identical functions.” Id. (citation omitted).

  58. IANAE, I’m disappointed by your last comment.

    Here I thought that you, me, and Mooney had a good 3-way going.

    Your re-writing of what I actually wrote, and what I intended to write, is just as invalid as the CAFC’s re-writing of what the applicant actually wrote, and what the applicant intended to write.

    The applicant did not “attempt” to claim an article–the applicant ACTUALLY DID claim an article–note the difference.

    Consider this: the applicant COULD HAVE actually ATTEMPTED to claim a process, but claimed an article mistakenly! The ACTUAL claiming of the article is no evidence of that mistake, however–evidence of that would have to come from elsewhere, and would need to be in the trial record to be considered.

    And finally, your re-writing of what the applicant ACTUALLY WROTE is again invalid. I will not opine on whether “A computer readable medium containing program instructions”, etc. is in fact a complete success at particularly pointing out and distinctly claiming an article, as I haven’t gone over it with a fine tooth comb, and there may well be 112 issues.

    But it was most certainly an actual claiming of an article.

  59. Do you mean the facts of…

    “Alappat admits that claim 15 would read on a general purpose computer programmed to carry out the claimed invention, but argues that this alone also does not justify holding claim 15 unpatentable as directed to nonstatutory subject matter. We agree. We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.

    Those facts?

  60. The obvious point here is that there are things that fail the abstract test and those things can “pass” any of the “categories” of patent eligible subject matter – even if that item is a … composition of matter.

    B-b-b-ut what about D-d-d-iehr????

    LOL.

  61. What I really like about the case is that explained why the Bilski claims were abstract, and further went on to explain why the Benson and Flook claims were abstract. They were abstract because they could be performed entirely by human beings and therefore covered mental processes, an unpatentable subcategory of abstract ideas.

    For us who prosecute applications in the general area, this case is highly useful for telling us what we need to do in order to claim patentable subject matter. Clearly we have to draft the claims in a way that they cannot be performed by human beings, and in addition the have to pass the MOT test.

  62. How do you “attempt to claim”?

    You claim or you do not.

    Fix rejected.

  63. I note that there was absolutely no indication from the Federal Circuit that such indirect “structure” existed.

    Even if it was there, it would be called dicta.

    The obvious point here is that there are things that fail the abstract test and those things can “pass” any of the “categories” of patent eligible subject matter – even if that item is a process, machine, manufacture, or composition of matter.

    This has nothing to do with the law allowing one to distinguish from prior art discs through the Beauregard claim structure – WHICH THE LAW STILL ALLOWS TO DO. In fact, the absence of the actaul K_illing of the claim format in this decision is a blow to your belief structure.

  64. beyond this, course uses admissions and estoppels all the time limit claim scope during claim construction. If the applicant states that his invention is a one-piece body, and ridicules two-piece bodies, he should be limited to one-piece bodies as a matter of law.

    Wrong. If Applicants’ claims recite a “body” generically, those statements you referred to show — for the purpose of claim construction — that the Applicant knew that the term “body” included both single-piece and multi-piece bodies, exactly as one skilled in the art would understand the term “body”.

    Those same statements are also relevant when applying other parts of the patent statute, of course. But they don’t limit the term “body.” That is simply false and wrong, both logically and legally (under Phillips).

  65. You are correct, but using incorrect language.

    The steps are not described “indirectly”, but “directly”. It is the structure that is described “indirectly” via the direct description of the steps and a description of the relationship between the steps and the structure sufficient to satisfy 112.

    So in a subsequent paragraph of yours, where you mistakenly refer to “indirect structure”, of course the court gave no indication as to its existence, because it does not in fact exist and was simply a product of your incorrect usage of language.

    As for the better ways of dealing with software patents being used to tank those computer readable medium claims that survive 101, the problem is that to some extent those better ways rely on the logic in a 101 analysis, but not in the logic of the CAFC’s 101 analysis.

    It remains to be seen just how the CAFC will formulate a 103 rejection, following their logic in the case of a 101 pass. I suspect there will be severe difficulties that we will argue about ad infinitum on these boards and elsewhere, because the court has no broader perspective on the totality of patent jurisprudence.

    It is a hideous patchwork quilt of discrete parts, exactly like in the Star Trek pilot “The Cage” when the Talosians attempted to reconstruct the human Vina after she sustained severe injuries, but did so without any guide as to how the parts should be arranged. She ended up horribly disfigured, without the parts cooperating as they should, and therefore lost essential function.

    Here I sit before my computer, looking over the field of patent jurisprudence, and seeing….Vina.

  66. Malcolm, Alappat will be limited to its facts. It disclosed specific hardware for executing the math. But, nevertheless, the court still required that the claimed apparatus (“to”?) produce a “useful, concrete and tangible result.” In my opinion, the “to” part of the opinion may not survive as well.

    Cybersource follows In Abele, a 1982 CCPA case that held that a claim to an apparatus that calculates numbers will the treated as a process for §101 purposes.

  67. LB this doesn’t tell us anything about Beauregard claims that embody patentable processes

    Beauregard claims don’t “embody” any processes. They are, in fact, articles of manufacture that are examined for 101 purposes as if they were methods — at least that’s what we are told today.

    If the computer-readable medium recites computer-readable instructions for a patentable process, then we can turn to 103 and 112. If we apply those statutes reasonably and consistently, then all Beauregard claims go up in smoke for the clear reasons I’ve provided elsewhere.

  68. Look, I’m not arguing in favor of software, I’m arguing in favor of rational and lawful legal reasoning.

    No. You are being rude because you are not simply agreeing with the vocal minority.

  69. This case tells you that the CAFC isn’t looking at Beauregard claims *generally* as a “claim format” that they need to do outlaw.”

    Fixed.

    T O O L

  70. Note that the court went out of its way to mention that computers that embody patentable processes are OK.

    Hmmm, how did I miss that?

    T O O L

  71. The only evidence regarding what the applicant attempted to claim is the claim itself, wherein the applicant actually attempted to claim an article.

    Fixed that for you.

    Would it help if you thought of this as a case where the applicant attempted to claim an article, but the Circuit politely informed him that he did it wrong?

    Honestly, “an unspecified instruction-holding article with instructions on it for performing a method” isn’t exactly a very strong attempt at particularly pointing out and distinctly claiming an article.

  72. Note that the court went out of its way to mention that computers that embody patentable processes are OK

    That’s called “dicta”, my friend. ;)

    The issue here is simply whether Bilski applies to claims that are nominally directed to apparatus or manufactures, but are really just otherwise unpatentable processes in disguise. Those of us who have been paying attention already knew the answer.

    Forgive me, LB, but I don’t remember your flashing sword by my side in the War Against the Diehrbots. I remember 6 and IANAE, though.

    this doesn’t tell us anything about Beauregard claims that embody patentable processes

    Sure it does, LB. This case tells you that the CAFC isn’t looking at Beauregard claims *generally* as a “claim format” that they need to do a legal backflip in order to preserve.

    It’s all about baby steps, LB. The CAFC just spat in the Dierhbot’s faces.

    And yes, there will be more to come.

  73. Essentially yes, as long as the necessary relationship between the steps and the 1’s an 0’s is sufficiently well described to satisfy 112.

    It’s not so bad, and it wasn’t even my idea.

    The main purpose of indirect description-by-proxy of structure is economy of application and examination, which is fine, because ultimately more economical examination of such claims, if examined properly, means more economical rejection of such claims in the infinitely vast majority of cases.

  74. Perhaps it is not correct, but the failure of the courts to actually engage in meaningful section 112 analysis is potentially part of the problem.

    This is why I suggest that the issue of indefiniteness and claims has to be addressed meaningfully by the Federal Circuit en banc. There has to be some meaning to the words in the statute which requires that the claims “particular point out” and “distinctly claim…”

    But beyond this, course uses admissions and estoppels all the time limit claim scope during claim construction. If the applicant states that his invention is a one-piece body, and ridicules two-piece bodies, he should be limited to one-piece bodies as a matter of law.

  75. The claim format itself, has now been blessed.

    This is incorrect, Mr. B. The court didn’t need to reach any broader question regarding Beauregard claims as a class, and it didn’t have any briefing on this question. There was no blessing here.

  76. There is actually no evidence whatsoever that “the applicant attempted to claim a process”.

    The only evidence regarding what the applicant attempted to claim is the claim itself, wherein the applicant actually claimed an article.

    Unless I’m missing an admission in the trial record that the applicant intended to have a process claim drafted and submitted, and through some error or oversight ended up having an article claim drafted and submitted.

  77. Sorry, but that’s pretty weak vindication, Malcolm. The court didn’t address the validity of Beauregard claims per se, just as I predicted a week ago and two years ago: link to patentlyo.com , comment at apr. 1, 2009, 12:58 pm; and link to patentlyo.com , Aug 11, 2011, 10:53 pm.

    The issue here is simply whether Bilski applies to claims that are nominally directed to apparatus or manufactures, but are really just otherwise unpatentable processes in disguise. Those of us who have been paying attention already knew the answer. But again, this doesn’t tell us anything about Beauregard claims that embody patentable processes. Note that the court went out of its way to mention that computers that embody patentable processes are OK.

  78. Malcolm, is your assumption that the patentee had a right to claim a multi-piece body in the first place.

    Ned, an applicant can present any claim that he or she wishes. He or she can claim “The earth and everything on it.” But it is not correct to construe that claim to mean “A syringe comprising a single-piece body” just because that is the only embodiment disclosed or just because the specification says that’s what the invention “is.” The correct process is to reject the claim as anticipated, obvious, lacking written description support, or non-enabled; or if the claim is grantd, to invalidate the claim on those grounds.

    Again, if the specification is used in the manner you suggest, then let’s just get rid of claims. They are a waste of everyone’s time.

  79. On the contrary. “A computer readable medium” is the very subject of the claim, not a limitation on the subject of the claim.

    The subject of the claim cannot be ignored as it is the equivalent of ignoring the claim.

    Ignoring the claim is failure to examine an application which is the failure of the PTO to discharge its duties under Title 35, or failure to adjudicate a dispute as required of the CAFC.

    Whether the medium is old or new has absolutely nothing to do with the fact that it was the medium that was the subject of the claim.

    The evidence that the applicant DID CLAIM AN ARTICLE is explicit, is incontrovertible. Any contrary suggestion, such as that the applicant “attempted to claim a process”, is facially incompatible with the incontrovertible conclusion that the applicant DID CLAIM AN ARTICLE.

    Appeal, ho!

  80. IBP described structural limitations (either directly or indirectly as allowed under law)

    Does the law allow one to distinguish computer-readable discs from prior art discs by indirectly reciting “steps” that are carried out by a computer?

    Until today, there were some folks who vehemently believed this was the case because “the program IS the structure”.

    I note that there was absolutely no indication from the Federal Circuit that such indirect “structure” existed.

    there are better ways of dealing with software patents, and rejecting them as the case may be

    I agree. Those ways can and will be used to tank the “computer readable medium” claims which survive the 101 analysis.

  81. The only problem, Malcolm, is your assumption that the patentee had a right to claim a multi-piece body in the first place.  If he did, I have no problem with your analysis.  If he did not, then I have a problem with the broadening implication.

    I'm with Lourie on this one.

  82. As long as the subsequent limitations, informed by the totality of the disclosure, described structural limitations (either directly or indirectly as allowed under law),

    You’re still going to hang your hat on “the ones and zeros on the medium are structural, and the claimed steps indirectly tell you where the ones and zeros go on the infringing medium”?

    Good luck with that.

  83. You’re currently lauding the court for deciding this case as it has, but you will trash that same court for reaching a decision NOT to your liking, even though that adverse decision could result from the very same fundamental reasons that resulted in THIS decision

    Let me know what that happens, IBP. I won’t hold my breath. Remember: I think Prometheus was decided incorrectly. If Prometheus is overturned, the “fundamental reasons” for doing so will likely resemble the “fundamental reasons” provided in Cybersource.

  84. As long as the subsequent limitations, informed by the totality of the disclosure, described structural limitations (either directly or indirectly as allowed under law), then the answer is “yes”, as long as the utility requirement of 101 was satisfied.

    Look, I’m not arguing in favor of software, I’m arguing in favor of rational and lawful legal reasoning.

    What I AM saying is that there are better ways of dealing with software patents, and rejecting them as the case may be–ways that won’t come back to bite you in the azz later.

    As Mooney said elsewhere, you can’t have it both ways.

  85. –the CAFC has just imagined that an article is a process.

    On the contrary. They acknowledged that the “computer readable medium” is a composition of matter but ignored the limitation because applicants weren’t claiming a new medium. They were attempting to claim an ineligible process.

  86. “Beuaregard claims are examined by the PTO as if they were processes”

    I don’t agree with this, see my characterization on the other thread.

    And in the alternative, if they do, that also represents failure on their part to discharge their duties under 35 USC to examine applications.

    They examine APPLICATIONS FOR PATENT.

    They DO NOT examine INVENTIONS.

  87. the abacus also fails the 101 test.

    An application describing an abacus will be rejected and/or invalidated on 101 grounds? Really?

    That’s interesting. Please put your head even deeper into your xxx and let me know what else you discover.

  88. It is the APPLICANT who decides on what they would like the PTO to rule–here the applicant did not APPLY for a monopoly over the performance of process steps, but applied instead for a monopoly over the making, using, etc. of a physical article.

    So presumably you’d be fine with every claim that opens with “a composition of matter, comprising” being per se statutory?

    Because expressly directing his claims to a statutory class didn’t exactly work out so well for Bilski. Didn’t work out great for Benson, either. Not that his case is even good law anymore, since Bil… oh, wait.

    Section 101 isn’t for people who explicitly claim equations. It’s for people who dress up their equations in a flimsy and unconvincing statutory subject matter disguise, and try to pass them off as the legitimate claims they so clearly aren’t.

  89. Mooney, you’re letting your excitement at the disposition of this case cloud your vision of what is actually happening.

    Once again I, too, agree with the disposition.

    See my response to your “imagination” comment upthread.

    It’s like the Democrat/Republican thing. You’re currently lauding the court for deciding this case as it has, but you will trash that same court for reaching a decision NOT to your liking, even though that adverse decision could result from the very same fundamental reasons that resulted in THIS decision.

    Relax, and think about it more while you’re partying.

  90. For anything that is not practical for a human to do, the abstract test will be passed.

    For anything that is practical for a human to do, the abstract test will not be passed (which means the abacus also fails the 101 test).

    In both cases, the claim format itself survives.

    In other words, the content – the “what” is written must be evaluated.

    This case only holds that the “what” is written on the facts of this case failed the abstract test.

    Step 3: Watch for backsliding and overeager rejoicing that does not say what you think it says.

  91. “a computer-readable medium is not a “special purpose computer” by any stretch of the imagination”

    I wouldn’t be so sure of that–the CAFC has just imagined that an article is a process.

    This is what I mean by getting burnt by the sun.

    The imagination of the judiciary can stretch pretty far, as evidenced in this opinion.

  92. The claim format itself, has now been blessed.

    Right. Just like the guy who wakes up to discover that his arms and legs have been blown off is “blessed” to be alive.

  93. I know, I know, Title 35 talks about “inventions”, and you get a patent on “inventions”, and claims are but one form of evidence as to exactly what that “invention” is…

    However, initially applying for patent rights is a volitional exercise entirely within the control of the applicant. It is the APPLICANT who decides on what they would like the PTO to rule–here the applicant did not APPLY for a monopoly over the performance of process steps, but applied instead for a monopoly over the making, using, etc. of a physical article.

    If the patent was never granted, the government has therefore failed to successfully review the applicant’s application, and failed to discharge its duty under Title 35, and that is reversible error.

    If the patent was granted, the CAFC failed to successfully review the decision of the PTO, as that decision decided that an article was patentable, yet the appeal decided that a process was unpatentable.

    That is also reversible error.

    Appeal, ho!

  94. Or rather it was the physical medium itself that was recited by the applicant:

    Claim 2: “A computer readable medium containing program instructions…”

    LOL. The CAFC framed the issue in a manner more favorable to the patentee than the actual facts and still found against the patentee. This merits an appeal by the patentee? Good luck with that.

  95. The reporting of my death has been greatly exagerated.

    Please note explcitly that the claim format has not been ruled invalid, but rather, that which was attempted to have been claimed failed the Abstract Test.

    The claim format itself, has now been blessed.

  96. Absolutely correct, IANAE.

    Only a True Patent Txxbxxger could seriously believe that this case will be overturned. Not a chance in hxxx.

    IBP The court can’t simply look at a claim to an article, and decide that it is going to analyze it as if it were a claim to a process–it is not.

    LOL – except that as we’ve been pointing out for quite a long while, Beuaregard claims are examined by the PTO as if they were processes. You can’t have it both ways.

    Which is what I’ve been saying. And why I never really cared about Beauregard claims get taken down.

    My gxd, this has been a fantastic couple weeks. First Myrida, now this. I think I’ll take off early and celebrate.

  97. Or rather it was the physical medium itself that was recited by the applicant:

    Claim 2: “A computer readable medium containing program instructions…”

  98. We’ve had “a game” for a long time, friend. Now you’ve discovered something that most of us knew: you’re losing.

    Love the “anonymous” posting, by the way. I’d be ashamed, too, I guess, if I were you.

  99. This is called the denial to admit evidence of the applicant that the invention is an article, and the fabrication of evidence by the court that the invention is a process.

    It could well have affected the outcome of the appeal, and is called reversible error.

    “…simply reciting the use of a computer…” is NOT what was recited by the applicant.

    It was the computer itself that was recited by the applicant.

    Appeal, ho! (although I DO agree with the disposition) (not that there’s anything wrong with that…)

  100. Not sure just how far you think this “walks back” the Alappat rule.

    If anything, the trim to Alappat all but guarantees its survival.

    For the moment only. More importantly, a computer-readable medium is not a “special purpose computer” by any stretch of the imagination so Allapat is of little relevance.

    I note that there was no courtesy bow to those patentees and applicants who “relied” on years of PTO practice to obtain their crxp claims, a la Judge Moore’s concurrence in Myriad.

  101. The court can’t simply look at a claim to an article, and decide that it is going to analyze it as if it were a claim to a process–it is not.

    Of course it can. There’s absolutely nothing improper about the court taking a substance-over-form approach to blatant window-dressing language that everybody knows is designed to make a method claim look like an apparatus claim.

    What’s more, if the court were more rigorous, it would recognize that there was NO NEED to do what it did.

    That’s true, actually, because the Beauregard claim wasn’t even a claim to the nonstatutory method – it was a claim to a list of instructions for performing the nonstatutory method. The panel was doing the patentee a favor.

  102. All I heard was the sound of a printer generating a petition for cert.

    Again, while I agree with the disposition, the so-called “reasoning” evidenced by this small passage is at best embarrassing, and at worst abhorrent.

    An applicant claims what an applicant wishes to claim. The applicant DEFINES the invention by choosing the claim language. The court can’t simply look at a claim to an article, and decide that it is going to analyze it as if it were a claim to a process–it is not.

    That smells of reversible error.

    What’s more, if the court were more rigorous, it would recognize that there was NO NEED to do what it did.

    Appeal, ho!

  103. Not sure just how far you think this “walks back” the Alappat rule.

    If anything, the trim to Alappat all but guarantees its survival.

    The takeaway here lies in the phrase “that can be performed entirely in the human mind.”

    Note too the disclaimer as to computer programs that are not practical to do in the human mind (even if entirely possible to do in the human mind).

    Two-point conversion denied.

  104. Thus, despite its Beauregard claim format,
    under Abele, we treat claim 2 as a process claim for patent-eligibility purposes.

    The term “despite” here is interesting. They could have written “because of its Beauregard claim format, under Abele, we treat claim 2 as a process claim for patent-eligibility purposes”. That would be more consistent with how Beauregard claims are actually examined (e.g., without any consideration of the 112 issues applicable to other compositions).

  105. To be sure, after Abele, we have held that, as a general matter, CYBERSOURCE v. RETAIL DECISIONS 18
    programming a general purpose computer to perform an
    algorithm “creates a new machine, because a general
    purpose computer in effect becomes a special purpose
    computer once it is programmed to perform particular
    functions pursuant to instructions from program software.”
    In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994).
    But we have never suggested that simply reciting the use
    of a computer to execute an algorithm that can be performed
    entirely in the human mind falls within the Alappat
    rule. Thus, despite its Beauregard claim format,
    under Abele, we treat claim 2 as a process claim for patent-
    eligibility purposes.

    This is called “walking it back.” Alappat is on the chopping block and is going to be reversed or seriously limited, which is awesome because it was such a poorly reasoned opinion.

  106. 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. 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.

    Did you hear it? The sound of a million pxtxnt txxbxggrs crying out at once.

  107. Ned K, then. Let me say that I think the result was right. one cannot disclose only a single-piece body, pooh-poohed prior art two-piece bodies and expect a construction that would read on two-piece bodies.

    As a general proposition, the above statement is incorrect. Not enough information is provided.

    If you’ve got a dependent claim that says “wherein the body is a single-piece body”, Phillips is crystal clear that the the term “body” should not be limited to a “single-piece body.” The only possible exception to this result should be if the term “body” was expressly defined to be a “single-piece body.” In that case, the independent claim should be construed narrowly and the dependent claim should be found indefinite.

    This is the only correct result, by the way, if one expects claims to have any purpose.

  108. Cybersource, mxthxrfxckxrs!

    CAFC takes down a Beauregard claim under 101. I knew I’d be vindicated soon. Reading through bxgxs claim “limitations” and looking at what the claim attempts to capture. The conceptual merging of “mental process” and “abstract”. It’s all there.

    Bryson, Dyk and Prost writing. No dissent.

    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. As
    discussed above, the Supreme Court found in Benson that
    a claim to a method of programming a general-purpose
    computer to convert BCD numbers into pure binary was
    unpatentable because the conversion of BCD numerals to
    pure binary numerals “can be done mentally,” 409 U.S. at
    65–67, and because the process was “so abstract and
    sweeping as to cover both known and unknown uses of the
    BCD to pure binary conversion,” id. at 71. The Court
    expressly noted that the algorithm had “no substantial
    practical application except in connection with a digital
    computer.” Id. The Court reached that conclusion even
    though one of the claims the Court found unpatentable
    (claim 8) specifically recited the use of a computer readable
    medium, including steps such as “storing the [BCD]
    signals in a reentrant shift register”—a physical computer
    memory component. Id. at 73–74. Nonetheless, the Court
    found that claim 8 was drawn to an unpatentable abstract
    idea.

    …[I]t is clear in the present case that one
    could mentally perform the fraud detection method that
    underlies both claims 2 and 3 of the ’154 patent, as the
    method consists of only the general approach of obtaining
    information about credit card transactions utilizing an
    Internet address and then using that information in some
    undefined manner to determine if the credit card transaction
    is valid. Because claims 2 and 3 attempt to capture
    unpatentable mental processes (i.e., abstract ideas), they
    are invalid under § 101.

    Of course, there’s no mention at all of the beloved “printed matter doctrine.” I’m so loving it.

  109. OK, then. Let me say that I think the result was right. one cannot disclose only a single-piece body, pooh-poohed prior art two-piece bodies and expect a construction that would read on two-piece bodies.

    Now, if one-piece versus two-piece were not important, the result would have been different.

  110. But Paul, the facts in Retractable are the very facts in Phillips but this time with the claim being directed to a bullet deflecting baffle. The result would have been difference. Trust me.

  111. Ned, the point is not that this en banc decision was “surprising” it is that it has been ignored by Fed. Cir. judges who, if two of them are in the majority for a PANEL decision, would reach the opposite claim scope decision on the same or similar facts. The research in the subject legal article clearly supports that conclusion.

  112. Paul, but there was nothing unusual about the holding in that baffle was not limited to obligue angled baffle. The contention was that the angled baffle was the invention — for bullet deflection. But the spec also said a purpose was for load support. The claim itself was for load support. There was nothing special about angles for that purpose, so it wasn’t read into the claim.

    Had the claim been for bullet deflection, the result probably would have been different, as obligue angles were important for bullet deflection and nothing else was disclosed.

    The result was not all that surprising.

  113. The problem in Retractable Technologies isn’t with adhering to the claim construction principles set forth in Phillips. The problem in Retractable Technologies lies with two Federal Circuit Judges (Lourie and Plager) who can’t get it through their heads what the doctrine of claim differentiation means.

  114. Hey guys I found a trailer for Phillips.

    link to youtube.com

    Challenger go with throttle…

    This is great nation will endure…

    From Dallas Texas, President Kennedy…

    That’s one small step for man…

    We can report history…

    Barack Obama is projected to be…

    A date which will live in infamy…

    The specification necessarily informs the proper construction…

    THIS CHANGES EVERYTHING!

    And when you’re ready, here’s the other trailers.

    Don’t watch all of these in the same sitting.

    link to youtube.com

    Whatever you do though be sure to check this last one out!

    link to youtube.com

  115. Hello America, let me take this opportunity to formally announce my candidacy for the 2012 election!

    I understand that patents are the engine that drives this economy, and as president I will help small businesses by speeding up the patent process by eliminating red tape and bureaucracy. Do we really need 35 USC 105? Really? And when was the last time you saw a 102(d) rejection? There are many commonsense loopholes we can close to simplify the patent laws.

    Like many of you, I am greatly concerned with the formation of the congressional “Super Comittee,” which threatens to disrupt the balance of power between the branches of government. I will send congress legislation that will
    re-brand the Supreme Court as The Supreme Justice League. The Supreme Justice League will be tasked with exercising ultimate jurisdiction over lower courts and with thwarting the diabolical plans of the Super Committee. They pretty much already have the silly superhero outfits, all I’ll need are some super powers and compelling backstories.

    As recent events have made clear, our fiat currency system is clearly not working out. I will put the US on the platinum-iridium standard, which will resist inflation and thermal expansion.

    One of the biggest challenges facing our men and women in uniform is taumatic head injury arising from concussions. As commander in chief, I will change the rules of engagement and move kickoff returns to the 30-yard line. Any taliban fighters caught employing horsecollar tackles, chop block, r roadside IEDs will face summary fines and possible suspensions.

    I suppose it’s premature to think about running mates and cabinet members, but I think our own Prof. Crouch might
    add an element of gravitas and sex appeal to the ticket. Not promising anything here, just trhowing that out there. Mr. Higgins, there’s an Attorney General spot that needs to be filled, assuming you graduate law school in time –otherwise we can get you something cushy like Secy. of Transportation or Veterans Affairs or something.

    Thank you America, for your support!!!

  116. The concluding paragraph of this paper is:
    “We find little here to suggest that the avowed goal of Phillips—to resolve the court’s methodological disputes over claim construction—has been met in any measurable way. And we also find that the open-ended nature of the Phillips opinion, and its failure to resolve the longstanding split in claim construction jurisprudence, has undermined the Federal Circuit’s efforts to develop a coherent and predictable jurisprudence.”
    There is also strong factual support in this paper for what is widely viewed as the ignoring by the dissenters in their subsequent panel decisions of the actual Phillips holding, which was that the Phillips claim in question would NOT have its specification example read into its claim as a limitation. It is almost as if the actual holding of that en banc decision is of no real interest to anyone?

  117. By contrast, holistic approach embraced by the Federal Circuit in Phillips, which suggests that “what matters is for the court to attach the appropriate weight to be assigned to those sources [or claim meaning] in light of the statutes and policies that inform patent law”, offers
    nothing concerning guidance, and results in a standardless, ad-hoc determination of claim meaning.

    This misrepresents the holding in Phillips. The “standardless, ad-hoc determination of claim meaning” is the result of judges and litigants ignoring Phillips, without consequence (or even being rewarded for doing so).

  118. And to top it all of, Phillips explicitly recognized the long held doctrine of broadest reasonable interpretation at the office. This I believe is the single largest source of difficulty between attorneys and examiners, together with the overly vague directions given by the Supreme Court in KSR regarding obviousness. I don’t much care for the inflexible standards the Appeals Court constantly attempts to impose (Bilski was a good example, TSM another). But at least they do try to come up with a standard. I read some decisions by the BPAI, and, except where there is incompetence from either side, it all seems like a coin toss, or depending excessively on the panel.

  119. “An approach to patent claim construction which firmly embraces
    the commonly-understood meaning of words, and places the burden
    on the patent applicant to clearly explain any deviations from the ordinary meaning is the most likely to yield claim language (and thus claim construction decisions) that comport well with the public notice function of claims. The procedural approach, which presumptively applies the ordinary meaning—perhaps from relevant technical, scientific, or general-purpose dictionaries, or perhaps via experts in the field—to disputed claim language, and yet fully embraces any clear, specific, and objective reasons to deviate from the ordinary meaning, makes transparent the analytic process underlying claim construction. By contrast, holistic approach embraced by the Federal Circuit in Phillips, which suggests that “what matters is for the court to attach the appropriate weight to be assigned to those sources [or claim meaning] in light of the statutes and policies that inform patent law”, offers
    nothing concerning guidance, and results in a standardless, ad-hoc
    determination of claim meaning.87
    We also think that the procedural approach best aligns the
    incentives of patentees and the public. That is, under a procedural claim construction regime, a patent applicant would understand with reasonable certainty the meaning that the courts were likely to attach claim terms—the ordinary meaning,”

    The article seems to ignore competing doctrines that impact claim construction. While it is true that the claims should be clear, often they are not. This is why they have to be construed.

    We have two possible approaches:

    A first approach would give the claim terms their ordinary meaning. However under many circumstances, the claims would then cover subject matter far beyond the scope of the invention disclosed. This typically occurs when patent applicants use broad functional language or generic terms in the claims.

    To avoid invalidity, or to avoid overbroad constructions, the courts need to construe claims narrowly. They do so by reading a lot of structure from the specification into the claims. The arguments in court tend to be about how much structure is to be read into the claims.

    From this we see that a lot of the problem regarding claim scope relates to the use of indefinite language or terms to describe the invention, a problem as old as the hills. See, e.g., White v. Dunbar (nose of wax). What this suggests to me is that the Federal Circuit needs to take the issue of section 112, paragraph 2, en banc, in an appropriate case. Just because a claim term can be construed does not mean that the claim term is particular, clear, or definite. They usually are quite the opposite.

  120. “Phillips stands forth as an unfortunate example of poor decision-making by the court, and one that negatively impacts its overall role in the patent system.” Wagner and Petherbridge, abstract.

    Are you sure this is about the CAFC and Phillips and not the Supreme Court’s decision in State Street?

    I mean, the holdings in Phillips seem very reasonable and, relatively speaking, quite clear. It doesn’t seem fair to blame the majority in Phillips for the unwillingness or cluelessness of other judges (and for litigants who habitually ignore or misrepresent Phillips).

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