In all likelihood, President Obama will sign the Leahy-Smith America Invents Act into law on Friday, September 16, 2011. There are a few issues that folks may want to consider before-hand.
Best Mode: On the date of enactment, failure of best mode will no longer be a basis for adjudging a patent invalid or unenforceable. However, the new provision only applies to lawsuits filed on or after the enactment date. Thus, a declaratory judgment action filed today could still rely on best mode as the basis for invalidity.
Dis-Joinder: A second litigation-focused issue that goes into force on the date of enactment is the new dis-joinder provision. Section 19 of the Leahy-Smith AIA bars a plaintiff from suing multiple defendants in a single lawsuit if the only justification for the joinder is that all defendants are alleged to have infringed the same patent. The law would also bar a court from consolidating cases for the same purpose absent waiver from the multiple defendants. The idea behind the provision is simply to raise the litigation costs of non-practicing entities who allege that their patents are being infringed by a broad spectrum of corporate defendants. The law applies to all lawsuits filed on or after the bill’s enactment date. Thus, if President Obama signs the bill into law on Friday, a plaintiff may still file a multi-defendant lawsuit today or tomorrow.
MaxDrei:
Regarding the Best Mode – See Ajinomoto Co. v. International Trade Commission (Fed. Cir. 2010)… a nice little summary can be found at link to patentdocs.org.
I don’t understand what you are trying to say in your rant in paragraph 2 of your post… but on a quick look, see link to patentlyo.com. In this case, the Board reversed the Examiner’s rejections alleging lack of enablement and written description, but then entered a new ground of rejection based on indefiniteness. In other words, the claims had adequate written description support, but lack clarity.
A claim can be clear and definite, but the specification does not disclose the best mode and vice versa. One has nothing to do with the other. This is evident from the written description and enablement requirements being completely two separate requirements… and the fact that best mode is in one paragraph and definiteness is in a completely separate paragraph.
In any event, 112 issues often plague biotech patents and my point is that there is a reason for best mode remaining in 112 and 282(b)(2) and post-grant review referring to both 282(b)(2) and (3). It seems that it would be malpractice to tell clients that best mode is a toothless requirement and malpractice to not ask for discovery on best mode during a post-grant review.
“AI, all in trying to point out to you is that Congress has not amended §101, and that a panel decision of the Federal Circuit cannot overrule the Supreme Court.”
101 is already broad and meant to be given wide scope. So Congress does not have to amend 101 to include sub categories under the process category. And the Supreme Court does not have to overrule anything at all.
In fact the opposite would need to occur if Congress or the Court wanted to limit 101 and start eliminating certain subject matter as patent eligible. In fact that has already happened with the Court created judicial expectations of laws or nature, natural phenomenon, and abstract ideas.
However BOTH Congress and the Court has refused to eliminate business methods and software, thus they remain patent eligible subject matter.
Thus why you blew your wad the night before Bilski was handed down and starting claiming business methods were going to be ruled non statutory. Of course you got rocked, shocked, and silenced when the Court did not so affirm you fantasy . And quite frankly you have not been the same since.
So just accept it Ned.
You lose.
Actual Inventors win.
We Always Win.
6: “And where precisely do you have to request to view these ads AI?
“You can opt in to view such Ads in your preference settings so the ads always come up.”
“Can opt” is not youtubicles sending you an ad in response to a request.
Again, the same thing with hulu. They don’t ask you if you’d like to view an ad to view the vid for free.”
In your preferences they quite literally ask to send you Ads and you can agree or not. It’s most certainly equivalent! Remember the Doctrine of Equivalents!!!
Also the inventor is not limited specific embodiments of his/her invention, especially if he makes it clear in the spec other embodiments can exist for the process or method,
Finally process inventions are naturally wide in scope. So it’s no way these big corps can get away with infringement simply because their written instructions are not word for word like the claims.
“Your saying it doesn’t make it so.”
While correct on its face, your reply misses the fact that indeed it is so.
Congratulations, you have talked yourself into proving my point. If you actually want to continue this discussion, you have to deal with the actual facts as they are – regardless if I say those are facts or if I do not say it, those are facts.
I don’t think the dis-joinder will work. Here’s what I expect to be the new sequence:
1. Troll sues 20 defendants individually in the same court (ED of Texas or D of Delaware).
2. Each defendant asserts invalidity as counterclaim
3. Troll motions court for joinder of all 20 defendants in same action since there is now a common set of acts relating to validity in the 20 separate actions.
4. After costly motion practice, all D’s are joined in single action.
5. Continue as we have been doing before the “dis-joinder” provision was enacted.
Maybe because software was not an issue in the Bilski case…?
Where do these people come from?
“Rader would also be correct in pointing out that there is no statutory inclusion of software, or business methods for that matter”
There is also no inclusion of
Hedging
Rubber Curing
bread baking
shelf stocking
Weather Forecasting
Widget making
blah blah blah..and on and on and on….
They are all processes and once applied can be eligible to receive a patent, providing they meet the other requirements of USC 35.
So what’s your point?
“The point is, 6, it is already there – just as much as any other particular, specific and singular art field.”
Your saying it doesn’t make it so.
“You ask for something that you have no right to ask for, and are too clueless to not recognize that you are clueless.”
Lolwut? I can ask for anything I want to.
The majority in Bilski certainly did not recite that they felt that the elephant of software was contained in the mousehole of 273.
The majority in Bilski disagrees, and in case you didn’t notice, they interpret what we the people, through our elected representatives, have said.
Try reading without a preconvieved notion of what you are going to be reading in order to understand what it is that you are reading.
The point is, 6, it is already there – just as much as any other particular, specific and singular art field.
You ask for something that you have no right to ask for, and are too clueless to not recognize that you are clueless.
Wake up.
“I am trying to find where Congress has explicitly pointed out the statutory inclusion of any other specific and singular art field.”
It doesn’t need to. I’m not talking about “software” as an “art field”. I’m talking about “software” as a thing that exists in the universe.
Let’s be clear, if congress wanted to authorize software patents then it would be ez shmeazy to do with the stroke of a pen. Just put the word “software” in 101. I don’t see any such inclusion.
Actually that’s a mousehole.
35 U.S.C. 273 is hardly a mousehole.
I am trying to find where Congress has explicitly pointed out the statutory inclusion of any other specific and singular art field.
Can’t find it.
Does this mean that all patents are bogus?
“Rader is correct in pointing out that there is no statutory bar on software, business methods too for that matter.”
Rader would also be correct in pointing out that there is no statutory inclusion of software, or business methods for that matter. And he would also be correct in noting that lawlmakers don’t usually hide elephants in mouseholes.
Possible echo here of the drafting philosophy of the European Patent Convention, in which Article 84 requires that the claims be “clear”, but deliberately denies that attack to petitioners for invalidity.
This has two beneficial public policy results. First, until your claims are clear, you don’t get to issue. Second, even though there never was an issued claim, in the entire history of patents, that was so unambiguously clear as to be immune to attack on its validity for a want of “clarity”, nevertheless, those attacking validity can’t raise this issue, even in those rare cases when the want of clarity is total.
Was there ever a US patent that, beyond ambiguity, disclosed the “Best Mode”? Was there ever at the USPTO a pending application in which the absence of a proper disclosure of the Best Mode was plainly evident to the Examiner simply on the face of the filing documents?
Best Mode – Post-Grant Proceedings
It’s my understanding that AIA only makes it so that failure to disclose the best mode cannot be used to invalidate a patent/claim in a litigation…
HOWEVER, my understanding is that the AIA amendments to 112 do not delete the requirement from the first paragraph. Hence, it seems that if the PTO determines that the best mode was not disclosed, one might not get the application granted…
AND it seems that AIA doesn’t contemplate an inequitable conduct type of situation… and AIA does not change paragraph 282(2) which applies to post-grant review… and states that a patent can be invalidatated under the conditions for patentability set forth in Part II of Title 37. Thus, it seems that a patent could be invalidated during a post-grant proceeding for failing to disclose the best mode.
My understanding is that “Part II” of Title 35 includes 35 U.S.C. 112 (as Part III begins with 35 U.S.C. 251).
Amoeba
Call me Scalia.
Shape Shifter, scroll to the bottom of this page link to patentlyo.com and comment on my post there.
101 amendment – not required.
overrule Supreme Court – not required.
Open your eyes.
Ned,
That may be, but the definition of “useful arts” was taken from the five justice portion – the modern day version.
Thus, while only four justices partook of the New Age dicta, that very same dicta flows from the modern day reading of “useful arts.”
Perhaps there was some specific and small item in the concurrence of 4 that lost the fifth vote. It would be most illuminating to figure out exactly what that item was.
Tell that to Scalia, that chitchat among congressmen trumps statutory language and Supreme Court opinion interpreting that language.
AI, just to clarify something if you didn't understand my post, what I was suggesting was that Chief Judge Randall Rader's quotation of the Supreme Court concerning "Industrial Age" was taken from the portions of Kennedy's opinion to which only four justices out of nine agreed.
AI, all in trying to point out to you is that Congress has not amended §101, and that a panel decision of the Federal Circuit cannot overrule the Supreme Court.
Malcolm, point conceded. I believe that you are right that Bush was unconcerned about whether the Wall Street bankers took a haircut.
That said, the Democrats controlled Congress and controlled TARP. If they wanted to require that the banksters receive a haircut in exchange for a bailout, that was easily put into legislation; but it was not. The Democrats deserve part of the blame for not putting this requirement into the statute.
“Presumably ‘inventor’ does not now mean ‘the person who files the application.’”
Actually, it can mean just that.
See the section on who can submit the oath in place of the inventor – this has a very Euro feel to it.
“is 2000 years old, so for those reading about him it’s still breaking 🙂”
Interesting logic.
Sort of like “It’s new, if it is new to you.”
Does this mean that you think that if something was held as a trade secret for decades, but was “still breaking” to everyone else, that the policy of Quid Pro Quo should apply for disclosing this “still breaking” in exchange for patent rights?
NED “AI, you should know that I briefly scan your posts to see if they approve approving of my BS. If they are not, I stop reading them and have no intention of replying.”
::Fixed::
“There are sections on YouTube where you can rent/buy movies. Of course you can now get movies and music for free as well as long as you view an ad.”
And where precisely do you have to request to view these ads AI?
“You can opt in to view such Ads in your preference settings so the ads always come up.”
“Can opt” is not youtubicles sending you an ad in response to a request.
Again, the same thing with hulu. They don’t ask you if you’d like to view an ad to view the vid for free.
Je sus Ch rist is 2000 years old, so for those reading about him it’s still breaking 🙂 . Plus I just put that there to get people to read it lol.
Ned Paulson was a Democrat, albeit, a Bush appointee.
You’re saying that Paulson voted for a Democrat at some point? What is your point? Was he tool of the Democratic Party? Employed by the Democratic Party? Carrying out the Democratic Party agenda?
Finally do not so lightly dismiss Obama’s role. He negotiated TARP directly with Bush as the leader of the Democratic Party.
What horrors did Obama “negotiate” for, exactly, that Bush did not want to give?
The GM stockholders and note holders, in contrast, took a major haircut, as well they should.
Gee, Ned, you do realize that this was Barack Obama’s approach, don’t you? Prior to that, the Bush admin was simply throwing money at GM. And of course many Republicans were bitterly opposed to Obama’s plan. Until it became clear that it was working, then Republicans began to try to take credit for it themselves.
I totally agree with you that the banksters should have been treated similarly. But it’s not Barack Obama’s fault that they weren’t. It wasn’t his call. And if you think the current crop of Repukes now in charge of Congress would support giving the banks the GM treatment, you’re deluded. And that’s true even given the fact that the Repukes number one priority between now and next November is to make sure that the economy remains shxtty. These guys are not afraid to come out and say that their number one priority is to take the White House. Jobs? That can wait. What do they care anyway? Most of them are millionaires who will benefit royally from their sociopathic policies at the same time those policies ruin the lives of less fortunate people (also known in wingnutspeak as “the lazy criminals who engage in voter fraud”).
“You may need to apologize for closing your eyes and closing your mind if you are resolute in not understanding what is clearly written.”
Don’t wait for ay apology from Ned. Only a gentleman and scholar would do that. We all now know Ned and he is neither.
“f you are not contending that Congress amended 101, or that Rader has the personal power to overturn the Supreme Court, where is your authority for you proposition that programmed computers are patentable per se.”
Ned the authority comes from the statute and from the Courts interpretation of that Statute. Rader is correct in pointing out that there is no statutory bar on software, business methods too for that matter. And that the Supreme Court when given a chance refused to do so. And expressly refused to do so for business methods. It matters not what you want them to do, or what a minority thought. The Court has ruled and this is the law. Now just deal with it!
Please!
That should be….Now 6, what part of ” No limitations or conditions on subject matter eligibility expressed in the statutory language” do you not understand???
“Given this decision, is it any wonder that there are no comments to the now legal presumption that software – all software is patent eligible on a PER SE basis?”
To be sure, this claim is not a claim to software per se.”
From IP Watchdog
” In fact, Rader’s next statement may truly cause a conniption for those who oppose the patent-eligibility of computer software: “this court [i.e., the Federal Circuit] detects no limitations or conditions on subject matter eligibility expressed in the statutory language [i.e., in reference to 35 U.S.C. § 101],” citing to Association for Molecular Pathology (AMP) v. USPTO and Prometheus Laboratories, Inc. v. Mayo Collaborative Services, as well as the Supreme Court’s Bilski decision.”
Now 6, what part of “limitations or conditions on subject matter eligibility expressed in the statutory language” do you not understand???
Software is in and you are on the way out!
“Note that this should not be taken to imply that I am in fact or have ever been an examiner.”
On that we could only dream. Unfortunately, the reality is a nightmare.
Ned: “6, the only passage in the whole case that merits any real discussion is this……:”
Oh I say the following discussion from rom IP Watchdog merits our attention. Especially since you staked you credibility on arguing the opposite. What ye say now Ned?? Huh??? Why sooooooo silent??
From IP Watchdog” “In what may become the definitive answer to a question that has (unfortunately) lingered since the Supreme Court’s ruling in Bilski, Chief Judge Rader categorically stated that the Supreme Court, in Bilski, “refused to deem business methods ineligible for patent protection.” That statement may cause an “Excedrin-size headache” for the “naysayers” of so-called “business methods” being patent-eligible. ”
Ned: “Breyer/Scalia concurrence which did find support of a majority of the court on the importance of the MOT and stands in stark contrast with Rader’s misrepresentation.”
That’s just two Justices Ned, and from what I read they did not agree with your sentiment that MOT was still the sole or even the primary test. All did agree that Diehr controls, ala Bilski 14. Something to this date you are terrified to even acknowledge.
The MOT is a clue, yup we all get that. It’s helps but lack of any MOT in your claims does not hurt! The majority did not say otherwise. Even your exalted two did not say that. Only you and maybe other naysayers cling to that notion. So in the end Rader did not misrepresent anything.
Ned,
The intent of Congress has been spelled out – in this case, there was no need to change 101 to redirect the understanding on software as a tool per se. No amendment is necessary, so no need to apologize for missing it.
You may need to apologize for closing your eyes and closing your mind if you are resolute in not understanding what is clearly written.
Ned – as I mentioned, see above.
Nah I wouldn’t try to handle the case myself. Thanks though I’ll look into it.
Explain, In re Benson being overturned by Gottschalk v. Benson. I assume you are contending that Rader’s panel opinion in Hulu somehow did that, or that Congress amended Section 101.
If you are not contending that Congress amended 101, or that Rader has the personal power to overturn the Supreme Court, where is your authority for you proposition that programmed computers are patentable per se.
anon, I see. My apologies. I missed the amendment to Section 101. Missed it entirely.
So, for my benefit, could you please provide a link?
AI, you should know that I briefly scan your posts to see if they are polite. If they are not, I stop reading them and have no intention of replying.
Well, 6, there is nothing like honesty to prevent future (esp., litigation) problems. I would certainly disclose your relationship to the patent attorney handling your applications. If you or your moonlighting collegues plan to handle the cases yourself somehow without disclosing that fact, you might be committing all kinds of ethical violations that could have adverse consequences for you and your business down the road.
WTH?? You just got you hat handed to you 10 different ways to sunday and thats all you can say????
After all the shewolf tickets you sold. All the crying. All that attacking. All the shameful acts and now the best you can do is mumble out a couple of sentences that have nothing to do with the points proven correct.
And don’t retreat back into your pseudo juvenile passive aggressive narcissism.
You need to say you are sorry
You need to say you were/are wrong
You need to shout BUSINESS METHODS ARE ELIGIBLE SUBJECT MATTER
You need to say Diehr cabined Flook and Benson!!!
You need to say there is no MOT requirement and for all practical purposes not even a MOT test anymore.
Say it Ned!
I challenged you to say all the above and show you have a modicum of integrity on this blog.
Ned:
Once again you willfully choose to ignore the significance of the ramifictions of this case.
Cybersource is dminished!
Expressly because it did not work in perfect concert with the law as it s today. The law which expressly says…
101 is a low bar and with wide scope
MOT is NOT a requirement
Business Methods are patentable subject matter.
“You really now can give that whole line of thought a much deserved rest. Even for the sake of argument, if one were to assume that you were correct, the new law overrides any such Supreme Court thinking. ”
What are you now just making sht up out of thin air?
Are you a lawyer, or even associated with patent law tangentially?
”
AI, Rich really did not like the Supreme Court on any number of issues, particularly Douglas, Black and Stevens. His Republican roots really showed. He was at war with these folks on any number of levels.”
Ned:
You digress from the fact that Rich, having wrote the law, is/was the foremost the expert on what was written and intended, not the Supremes, not you.
This is why you are wrong Ned and have lost all the debates on business methods and 101 statutory subject matter, even if you can’t come to terms with that yet.
“Given this decision, is it any wonder that there are no comments to the now legal presumption that software – all software is patent eligible on a PER SE basis?”
To be sure, this claim is not a claim to software per se.
“Is this enough to distinguish Cybersource?”
Well of course, thanks to the bs reason they made the holding in Cybersource.
“Did you gag when he quoted the portion of the Bilski Kennedy opinion that did not have Scalia’s support without even noting that fact?”
No I skipped most of his quotes, I’ve heard them all 100 times I’m not going to read them again.
Plus, he needs something to base his opinion on, and since it obviously isn’t the law that he’s using then I don’t really care what he’s quoting.
I should note though that this decision is a real godsend to my new startup. We can apparently patent our new methods np. That’s free money for me after the company goes belly up and I take all the assets.
Tell me Ned, if I’m the CEO of a company, and that company hires, let’s say, a few of my coworkers, and my uncle, can my uncle freely file on patent apps and assign them to the company, and then when the company goes belly up and I take over sole control of the leftover assets is that fine legally or is there some problem with an examiner having an ownership stake in any patent/app?
Note that this should not be taken to imply that I am in fact or have ever been an examiner.
“Lastly, you have never answered Publius – how are you held accountable for your actions on these blog pages?”
Don’t hold your breath on that. Ned simply chooses to not reply, after of course he attacks, dodges, and evades.
“There is a clear difference between not understanding and not agreeing. Clearly, when you prevaricated and said that you did not understand what medical methods were, you were simply evading the cold logic of the point that business methods are merely a category or type of method (which explicitly differentiates from your deceitful “categorically” position that only you have ever argued).”
Exactly, and even having his arguments eviscerated by this latest decision , Ned still won’t admit he is wrong, mistaken, or dishonest.
Ned,
You really now can give that whole line of thought a much deserved rest. Even for the sake of argument, if one were to assume that you were correct, the new law overrides any such Supreme Court thinking. It is now law – software PER SE is patent eligible.
Can we move on now?
Yup SO says they guy that just a few years ago was still wanking to his Brittney Spears poster.
Oh wait.. you still do that.
My bad
Given this decision, is it any wonder that there are no comments to the now legal presumption that software – all software is patent eligible on a PER SE basis?
See my comment above at “Sep 15, 2011 at 09:15 PM”
MAL, I agree.
Now consider the broader quote.
Rader (Hulu):”In other words, a programmed computer contains circuitry unique to that computer. That “new machine” could be claimed in terms of a complex array of hardware circuits, or more efficiently, in terms of the programming that facilitates a unique function.”
Rich (In re Benson): “Realistically, the process of claim 13 has no practical use other than the more effective operation and utilization of a machine known as a digital computer. It seems beyond question that the machines – the computers – are in the technological field, are a part of one of our best-known technologies, and are in the “useful arts” rather than the “liberal arts.” as are all other types of “business machines,” regardless of the uses to which their users may put them. How can it be said that a process having no practical value other than enhancing the internal operation of those machines is not likewise in the technological or useful arts?”
Supreme Court (Benson, Flook, Diehr, accord Bilski): a programmed computer must do something practical within the useful arts or be directed to a particular machine. (MOT)
In other words, simply programming a computer is not sufficient under Supreme Court authority. I don’t understand why Rader does not get it. His brand of thinking was never accepted by the Supreme Court. Even Alappat required the programmed computer to do something “useful, concrete and tangible,” a test now so overruled that overruling does not even begin to sufficiently describe how far into oblivion that test has been cast.
Rader That “new machine” could be claimed in terms of a complex array of hardware circuits, or more efficiently, in terms of the programming that facilitates a unique function.
“More efficiently”?!?
Good lxrd.
I wonder if Rader would have a problem with a claim in the exact form “A computer, wherein said computer does X.” I mean, what is the point of all that excess verbiage about “programmed to” and “executable instructions”. It’s inefficient!
As for the chances of a claim failing 101 being pretty low, I don’t think it’s appropriate to embark on a 101 analysis with such a bias–especially when the elements of the utility requirement, and how they dovetail with 112 and 103, have not yet been sufficiently explored.
Agreed. The chances of a claim failing 101 should be expected to vary widely depending on the nature of the invention. Generally speaking, methods of information processing should fail at much, much greater rates than, e.g., structurally-characterized new compositions of matter.
But that’s the sort of common sense statement that you’d have to torture Rader to get him to admit.
“Rader is a smart man, he cannot be presenting these ridiculous views as if they were his actual position.”
6, State one view, expressed by Rader in this case, that is not already the opinion expressed by the majority of the Supreme Court.
::silence::
I thought so.
post grant review.
Oh that’s my bad, I was told it was Randy and didn’t bother to read the title. No wonder he was touting the 1 billion. Of course that is Michel.
6, Your link goes to the Michel speech of April, 2010.
Not Randy. Not the other day.
Here is a copy of a speech “Randy” made to examiners the other day (I unfortunately didn’t hear about it in time to make it and perhaps heckle a bit).
link to jptos.org
There are sections on YouTube where you can rent/buy movies. Of course you can now get movies and music for free as well as long as you view an ad. You can opt in to view such Ads in your preference settings so the ads always come up. These services/functions did not exist when YouTube first started. And what about Hulu?? They both infringe outright. And we have not even talked about the D.O.E. yet.
Malcolm, you say it will be unenforceable? Really?
The only grounds for IC that I know of relate to conditions for patentablity. In this, it tracks the new 282 ground for invalidity. The fact that actually being an original inventor is NOT a condition for patentability and is not a condition for invalidity cannot be backdoored into an IC defense. Your statement in this regard is simply unsupported speculation.
The remedy for a violation might be a referral to the Attorney General. But the patent appears to remain valid and enforceable — it protects a patentable invention and was obtain without any violation of the conditions for patentability.
Also, the more I think of it, the more I think the drafters fully intended to do away with violation of Section 101 a grounds for invalidity as well. It is not a condition for patentability in part II. It fell under the catch-all phrase, clause (4), that was deleted.
The PTO might still fuss with 101, but if they issue the patent, that is it. The patent is valid.
Many of these steps are likely to require intricate and complex computer programming
Is Randy suggesting that there is a potential enablement issue?
Of course not. He’s just wanking.
“Commenters’ expressions in their posts give us windows into their thought processes, and enables us to judge, based on that evidence and evidence from other opinions and statements, if the commenter really understands what he is doing, and how he has done it.”
There are not many commentators for whom I would want to look into their thought processes.
And the judging if they really understand what they are doing is clearly evident from the posts. The higher the amount of handwaiving, conflation, namecalling, profanity and deception, the lower the evidence that they know what they are doing.
Youtube offers you free games/movies/etc that they otherwise charge you for on the condition that you ask them to view an ad?
Where, precisely, is this on the Youtubicles AI?
Or did you just have trouble reading the claims?
“Dear Colleagues,
I am very pleased to inform you that the Leahy-Smith America Invents Act (AIA) was signed into law today by President Obama. Attached is a memo and timeline which provides a brief overview of the provisions in the AIA that impact existing examination practices and procedures.
Regards,
”
You heard it here first folks.
Sauce,
Except for the last sentence, I agree with your sentiment–however, future panels, litigants, academics, and judges might not be so perspicacious or earnest as yourself, and may easily mis-interpret or mis-construe what was said, take it out of context, or apply it to achieve a political- or career-oriented end, whereupon it takes on a life of its own. It has happened before, and is likely to happen again, yet is in some measure avoidable.
Rader assumes this risk on behalf of all of us, and he does so apparently without due regard for the consequences.
It would have been very easy, as you suggest, to have made the linguistic substitution–and potentially very valuable. This opinion is another example of the short-sightedness of the CAFC, and of its failure to successfully manage patent jurisprudence.
As for the chances of a claim failing 101 being pretty low, I don’t think it’s appropriate to embark on a 101 analysis with such a bias–especially when the elements of the utility requirement, and how they dovetail with 112 and 103, have not yet been sufficiently explored.
Very gracious of you, IBP, and I mean that. I agree with your original posting except for the splitting hairs part, et seq. I think if you substitute “formal claim construction” or “adversarial claim construction process” for most of Rader’s references to “claim construction,” you then end up with a pretty fair idea of what he meant. It’s pretty reasonable in my view to say that you don’t necessarily need Markman briefs, hearings, etc., to resolve a 101 question. Especially, as he points out, since the chances of a claim failing 101 should be pretty low…
I’m not writing under color of law in an official capacity after having considered my writing for months, and after having had staff and aides comment, contribute, and edit.
And the larger point is, I recognize the error that I made when writing in haste, and I accept your admonition. You are, of course, correct.
And if I were writing a judicial opinion and I had presented my work to you, and you returned with that comment, I would be sure to thank you for it, discuss it with you, and evaluate and incorporate your findings to produce an improved version of the opinion.
Well, no, but CAFC decisions can be appealed…
Actually, no they can’t. You can petition for a writ of certiorari.
This is not splitting hairs. Commenters’ expressions in their posts give us windows into their thought processes, and enables us to judge, based on that evidence and evidence from other opinions and statements, if the commenter really understands what he is doing, and how he has done it. This stuff is important with regard to analyzing the performance of commenters. Nobody in our society should be above having their performance analyzed. While statements such as yours are always considered irrelevant bloviation in a precedential sense, they give us information on HOW a commenter is thinking, and of what underlies the actual conlusion forwarded by the commenter.
Sorry, but I’m obligated to provide this response, in order to carry out my duty to uphold something about the legal profession.
Contrary to Rader’s belief, “claim construction” DID occur in this case, as it must necessarily occur any time a claim is presented and read.
The following, which appears at pages 4 and 5 of the opinion, is totally inarticulate:
“This court has never set forth a bright line rule requiring district courts to construe claims before determining subject matter eligibility. Indeed, because eligibility is a “coarse” gauge of the suitability of broad subject matter categories for patent protection…claim construction may not always be necessary for a § 101 analysis. See, e.g., Bilski v. Kappos, 130 S. Ct. 3218, 3231 (2010) (find-ing subject matter ineligible for patent protection without claim construction). On many occasions, however, a definition of the invention via claim construction can clarify the basic character of the subject matter of the invention. Thus, claim meaning may clarify the actual subject matter at stake in the invention and can enlighten, or even answer, questions about subject matter abstractness. In this case, the subject matter at stake and its eligibility does not require claim construction.”
As soon as a claim is presented and read, it is “construed”. Rader is defining the term “construction” as an analysis having some sort of arbitrary threshold below which it is no longer considered “construction”, but something else (tellingly, that “something else” has not been given its own name).
That is because any reading or analysis of a claim constitutes claim “construction”. To “construe” something is to “interpret” it, and when we see the symbols of the alphabetic characters appear, we interpret their meaning according to all sorts of rules of grammar, syntax, phonics, etc..
When after this process there remains superfluity, or uncertainty due to inconsistency, ambiguity, or any other quality that does not enable the ultimate task of the court to be efficiently or successfully performed, further “interpretation” of the claim, or parts thereof, can or must be made.
This “interpretation” requires analysis. There are many possible methodologies of analysis from among which to choose, and the selection of methodology is made in relation to the ultimate task required. One of these methodologies is deconstruction/editing/reconstruction, the result of which is an edited version of the original text. This analysis can of course be followed by many other types of analysis, as required.
Because “construction” or “interpretation” is an attempt to explain the meaning of something, an indicator that “claim construction” has in fact occurred is the existence of any such attempt at explanation.
In this case, the ultimate task of the court was to determine if the invention as claimed satisfied the eligibility requirements of 101. To this end, there is superfluous language in the claim as written. The court
At page 9 of the opinion, Rader presents his attempted explanation of the meaning of Claim 1, after having judged that such explanation was sufficient to permit the ultimate task of determining if the invention as claimed satisfied the eligibility requirements of 101: “…the claimed invention is a method [preamble] for monetizing [steps 3, 10 and 11] and distributing [preamble and steps 1-9] copyrighted products [step 1] over the Internet [preamble and step 3].”.
The very existence of this attempted explanation of the meaning of the claim is incontrovertible evidence that “claim construction” has in fact occurred, and it is easy to understand precisely how that construction, or analysis, was undertaken.
The possibility that the analysis used, and the resulting explained meaning presented, are insufficient to permit tasks other than a 101 analysis is totally irrelevant with respect to the ultimate task of the court in this case.
Even though the “claim construction” undertaken was limited to that required to permit 101 analysis, it was nevertheless clearly, unambiguously, and incontrovertibly, “claim construction”, in a logical sense.
This is not splitting hairs. Judges’ expressions in their opinions give us windows into their thought processes, and enables us to judge, based on that evidence and evidence from other opinions and statements, if the judge really understands what they are doing, and how they have done it. This stuff is important with regard to analyzing the performance of judges. Nobody in our society should be above having their performance analyzed. While statements such as his are often considered mere dicta in a precedential sense, they give us information on HOW a judge is thinking, and of what underlies the actual precedential “decision”.
So what? you ask. After all, it’s not like you’re going to get a judge removed for inarticulation, or for not “thinking straight”. Well, no, but CAFC decisions can be appealed, and there will be other cases in the future that will require, or will be able to make use of, this opinion–and there it is, in writing. Some future justice, or maybe Timothy Dyk, or more likely one of their clerks, might read that in the future and consider it fact. CAFC judges really do need to be more careful about what they write, and how they write it, lest it reflect poorly on their perceived impartiality or competence. This opinion, in particular, brings into question either Rader’s analytical competence or rigor, or his writing competence or rigor–both areas critical to judicial effectiveness.
Does anybody feel “reasonably certain” about the status of software/system claims, in view of this opinion? Of course not. If we continue to see this low quality of opinion, maybe there should be more decisions issued without opinion in the future.
I’m going to go ahead and change that last line:
As fair elections are foundational, my tolerance for voter fraud is much lower than that.
“I believe it is unwise present comments that read as if he is the only one behind the decision, and that border on personal challenges to his mastery of patent law.”
You’re probably right, he probably led the others into folly. He is chief judge and he has some sway.
“While I have no insider information suggesting it to be the case, it does seem to me that the court is setting the stage for sending the Supreme Court a message in the hope that it will force the latter’s hand to examine “abstract” with a higher degree of granularity than was the case with Bilski.”
That’s what I feel like. It’s almost too perfect of a setup between Cybersource and this one.
“Ummm….You must be new around here. ”
Says the new guy around here.
Mal,
I do have to give you credit for including that last line:
The vote was LARGELY along party lines 101-48.
I never claimed you claimed the billboard disenfranchised anyone. That’s a fun game.
Translation of translation: I don’t know. Another fun game.
The billboard is not evidence of the GOP’s intent to suppress votes. I’m using “suppress votes” in what I think is the usual sense in that it is an illegal act attempting to prevent some person or group from voting. I just don’t see the billboard as intent to commit the crime of supressing votes. But what do I know, I’m on a patent blog after all.
You seem to imply that voter impersonation would have to be “rampant” in order to justify acting, and even then, I only “might” have a point. My tolerance for voter fraud, which I see as foundational, is much lower than that.
Ned says in relation to this decision that “this is really getting political“, yet also spins prior politicalness as “. (I do note that Douglas and Stevens didn’t fully understand the issues and their 101 decisions had to be ‘clarified’ .”
Clarified? Didn’t fully understand the issues?
Talk about political-correctness speech. Please stop kicking up the dust of “political” to cover your own “philosophical” madness.
I am positive that that Douglas and Stevens understood the issues much more than you do Ned. There is a clear difference between not understanding and not agreeing. Clearly, when you prevaricated and said that you did not understand what medical methods were, you were simply evading the cold logic of the point that business methods are merely a category or type of method (which explicitly differentiates from your deceitful “categorically” position that only you have ever argued). I noticed no substantive “understanding” from you on the distinctions from the previous thread, and you still have not explained Bilksi 11 nor 35 USC 273. And now on this thread we have additional congressional record that clearly paints your obsession with beign anti-business method patent as a lawless philosophical jihad.
You only understand that which you want to understand. It is the only way for you to maintain your false beliefs. You seek to cover your l i e s with more dust and other l i e s.
Lastly, you have never answered Publius – how are you held accountable for your actions on these blog pages?
Republican versus Democrat is much too easy an answer in my view. Pre-CAFC experience seems to me to be a more important discriminator, and especially when such experience is associated with the CFC.
Having read Judge Rader’s opinion on behalf of a unanimous panel, I believe it is unwise present comments that read as if he is the only one behind the decision, and that border on personal challenges to his mastery of patent law.
While I have no insider information suggesting it to be the case, it does seem to me that the court is setting the stage for sending the Supreme Court a message in the hope that it will force the latter’s hand to examine “abstract” with a higher degree of granularity than was the case with Bilski.
For example, I recall just a couple of weeks ago that a case sent back on remand to reconsider in light of Bilski resulted in the CAFC reversing its earlier position that 101 served as a bar, but now that Bilski is on the “books” the invention now meets the test for 101.
“without engaging in personal attacks, casting aspersions, etc. on specific members of the judiciary”
The judiciary and the academia, it appears, are supposed to get free passes on the personal attacks and casting asperions…
…everyone else?
F them.