Ultramercial v. Hulu: Computer Programs and Patentable Subject Matter

By Jason Rantanen

Ultramercial, LLC v. Hulu, LLC (Fed. Cir. 2011)
Panel: Rader (author), Lourie, O'Malley

The line between patentable processes and unpatentable abstract ideas continues to trouble the Federal Circuit even as the Supreme Court prepares to address the issue for the second time in four years in Mayo v. Prometheus.  In Ultramercial, the court—led in this instance by Judge Rader, whose views on patentable subject matter are clear and well known—rejected a challenge based on lack of patentable subject matter in an opinion that draws the line between steps that can be performed in the human mind or by a human using pencil and paper (unpatentable) as opposed to those that require a computer (patentable).

Patent No. 7,346,545 claims a method for distributing copyrighted products over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement and the advertiser pays for the copyrighted content.  The district court granted the accused infringer's motion to dismiss on the ground that the '545 patent does not claim patentable subject matter.

Patentable application not an abstract idea
On appeal, the CAFC reversed. After noting the broadly permissive nature of Section 101, and placing the '545 invention in the "process" category, the court looked to the abstractness of the invention claimed by the '545 patent.  Eschewing the "machine or transformation test," the court focused instead on the programming complexity required to carry out the claimed elements.  The claimed invention, the court determined, constituted a patentable application rather than an unpatentable abstract idea. While "the mere idea that advertising can be used as a form of currency is abstract, just as the vague, unapplied concept of hedging proved patent-ineligible in Bilski,…the '545 patent does not simply claim the age-old idea that advertising can serve as a currency.  Instead, the '545 patent discloses a practical application of this idea."   Slip Op. at 10.  This statement is followed by identification of the specific steps for monetizing copyrighted products set out in the claims, many of which involve complex computer programming.  "Viewing the subject matter as a whole, the invention involves an extensive computer interface."  Slip Op. at 11.

Software is patentable
Layered on top of this finding is the court's rejection of the argument that software programming amounts to abstract subject matter.  "The digital computer may be considered by some the greatest invention of the twentieth century, and both this court and the Patent Office have long acknowledged that "improvements thereof" through interchangeble software or hardware enhancements deserve patent protection.  Far from abstract, advances in computer technology—both hardware and software—drive innovation in every area of scientific and technical endeavor."  Slip Op. at 12.

This holding is in tension with the Federal Circuit's recent opinion in Cyber Source Corp. v. Retail Decisions, Inc., No. 2009-1358 (Fed. Cir. Aug. 16, 2011), in which a panel consisting of Judges Bryson, Dyk and Prost concluded that a method of verifying a credit card transaction over the Internet constituted an unpatentable process.  While the panel in Ultramercial recognized this tension, it distinguished Cyber Source as an instance of "purely mental steps."  Ultramercial Slip Op. at 13 (emphasis in original).  The line, at least from the point of view of this panel, thus lies somewhere between logical steps that humans can perform without the aid of a computer versus those that require a computer to carry out.

252 thoughts on “Ultramercial v. Hulu: Computer Programs and Patentable Subject Matter

  1. “No, it isn’t, and that’s what you’re missing. The whole point to Benson is that the claim itself does not have to be abstract to be excepted, it only has to preempt all uses of an abstract idea.”

    Then according to your view pioneering inventions patent ineligible right? And if indeed you are going to rationalize that they are, doesn’t this conflict with the Constitutional mandate to “promote the progress” ?

    ::Gives 6 a lil mo rope::

  2. “Your being wedded to the discarded “concrete, tangible” test is you blind spot. ”

    Pure B. S. I never said anything about this so called test of yours. This is a complete strawman. Been hanging out with Malcolm much?

    “This prevents any meaningful discussions on this topic between you and me.”

    Typical Cut and Run to swim with the Red Herrings

    The real issue here Ned is that can’t except that the “Machine or Transformation” test is NOT the sole test anymore.

    And given the recent cases by the CAFC, post Bilski, is not much of a relevant test at all.

    Your entire motive was to try and assert that the “controlled interaction” language by Rader in Ultramecial resurrected the MOT test as the sole test and someone eliminated business methods as patent eligible subject matter.

    But when I smacked you over the head with the oral proceedings where the actual words of the panel can be heard explaining why the claim is not abstract you run away with your tail between your skirt.

    ::CASE CLOSED::

  3. Your being wedded to the discarded "concrete, tangible" test is you blind spot.  This prevents any meaningful  discussions on this topic between you and me.

    Sent from iPhone

  4. “Your position is too nuanced for Ned to grasp. The man does not even know the difference between “categorically” and “as a category,”

    Oh Go d don’t get ned started on that again!

    “otherwise I am sure that he would not have ignored the Bilski 11 callout from threads past.”

    Yup Ned has cut and run from so many call outs i mooney is considering wearing pants again.

  5. Ned: “I would suggest that the “controlled interaction” has to be with a “programmed computer”, meaning a machine.”

    And you would be wrong as usual.

    The programed computer is a” web server”.

    That much is stated explicity at the end of the case, oral hearings.

    There is NO REQUIRED MOT, so get over it already!

    And if you adhere to Judge Lourie and the rest of the panel the “controlled interaction” would be how we look at the claim, . And the claim must have among other features…

    1.A series of specific concrete steps.

    2. Must not be exclusively mental steps.

    And Rader was very explicit in naming ALL those steps in Ultramercials claims and patent. The poor opposition could not even rebut. I loved it when Rader said, “I could go on, an on!”

    Total SMACK DOWN!

  6. AI,

    Your position is too nuanced for Ned to grasp. The man does not even know the difference between “categorically” and “as a category,” otherwise I am sure that he would not have ignored the Bilski 11 callout from threads past.

  7. Wait, Diehr cabin’s Flook and Benson and you never acknowledge it.

    In RE Benson is overruled and you explicitly deny it.

    Business Methods are upheld and you argue just the opposite.

    Ultramercial is overuled and you continue to cite cases based on it as if it’s good law.

    Now just the mention of concrete and tangible steps, (which is not the same as the State Street test btw), and you instantly start shouting, the State Street Test is overruled!!!!!

    Is this your motive for posting this irrelevant thread?

    Because you think it advances your losing agenda?

    Because it gives you a chance to shout a test is dead which no one is arguing for?

    Well you have lost sooo badly I suppose your psyche needs something to feel good about so shout away.

    But please be aware, having steps in a process that are concrete and tangible didn’t begin with State Street, and most important having concrete and tangible steps in a process is very relevant and important in helping to identify non abstract claims. Just ask the Ultramercial panel.

  8. AI , thanks. But let me remind you, that the "useful, concrete and tangible" test has been overruled. I would suggest that you stop even trying to use that test in any form.

    I would suggest that the "controlled interaction" has to be with a "programmed computer", meaning a machine.

    Sent from iPhone

  9. Because that is the way the executive branch prefers it.

    Hey clueless, would you like fries with that shake?

  10. Of course, Oriy Tavitz, and any moniker commenting about bathrooms on airplanes or singing, “Ding Ding Ding we have a winner” are and have always been Malcolm. The king of Sock Puppets and Prince of Straw.

  11. “Contolled interaction with a consumer via a website.”

    Ned if you are looking for a way to limit business methods other than the pure mental process, I don’t think you will find it in that sentence. “Controlled interaction with a consumer via a concrete and tangible process is what this panel is advocating, as is their right, given to them by the SCOTUS. The fact that the Ultramercial invention requires a programed computer ( the web site) helps but is not in itself a requirement for 101 eligibility.

    We could definitely use the Controlled interaction with a consumer via a concrete and tangible process analysis to be a fair test for so called business methods under 101.

    You would not get the mental processes that are abstract ideas and could encompass all the job creating innovations that processes, particularly business methods, create.

    Hmmmm …Contolled Interaction With a Consumer via a Concrete and Tangible Process.

  12. “6, you do recall that the Court gave the CAFC the charge to create a new analysis or test that could determine if inventions related to methods of doing business are patent eligible , don’t you????”

    Um, AI, even if that were true, which it technically isn’t, Rader’s entire analysis stems from him believing this case to not just being a case about methods of doing business.

    “Most important is everything this panel has said and ruled on in Ultramercial is backed by Supreme Court majority opinions.”

    I think you mean “counter to” not “backed by”.

    “You are losing. ”

    Hardly old man, just because Rader declares war doesn’t mean that the me and the USSC are losing.

  13. “The claim is considered abstract because it preempts an abstract idea and not for any other reason.”

    Okay 6, you went there. Now you KNOW what is coming next.

    So in Ultramercial the Panel did not contest that Financial Transactions are abstract ideas.

    So 6, can you please provide one example of how Ultramercials invention pre-empts the entire field of Financial Transactions?

    :: waits::

  14. 6, you do recall that the Court gave the CAFC the charge to create a new analysis or test that could determine if inventions related to methods of doing business are patent eligible , don’t you????

    Well, Rader is simply using that permission to do just that and instead of interpreting 101 with narrow scope by finding ways to eliminate business methods, and software, he is simply upholding the congressional intent and original case law that gave 101 wide scope.

    Most important is everything this panel has said and ruled on in Ultramercial is backed by Supreme Court majority opinions.

    Unlike your interpretations which are only supported by losing opinions, dissents, and academic theories and briefs for losing cases.

    So suxk it up. You are losing. Actual Inventors are winning and that’s the way it should be.

  15. “There is no basis for making it necesary for an Administrative State to have as its top priority to keep things easy for itself in order to function.”

    Sure there is brosky. Because that is the way the executive branch prefers it.

    ” if things were easy, then there would be no need for the administrative state to begin with.”

    Not really true, we’d still have a lot of “easy” cases to sift through.

  16. He didn’t “decide” other than “deciding” to ignore the USSC, he made up an entirely new analysis that is inconsistent with the one laid forth by the USSC.

  17. “AI: Then the invention is patent eligible according to the statute and the Court created judicial exceptions. ”

    No, it isn’t, and that’s what you’re missing. The whole point to Benson is that the claim itself does not have to be abstract to be excepted, it only has to preempt all uses of an abstract idea.

    I know this is difficult for a man with an IQ under 100 like yourself AI, but try to understand brosky.

    “AI: Entirety or Breadth is a 102, 103, 112 issue”

    No, they made breadth a 101 issue in this case. Which is, again, something you don’t understand.

    “AI: As Rader would say, show me where it says that in Benson”

    I could quote you pages but I’m too lazy. You can read the decision for yourself.

    ” And even if you can, to rule that something is a judicial exception, in this case abstract, while proving that it’s not abstract, is a contradiction and ridiculous on its face.”

    It isn’t that ridiculous if you understand why they ruled that way. AI, they specifically ruled that way so that people who were trying to get around their exceptions would not get around them simply by putting a drafter’s veneer on them. Which is yet another thing you just don’t seem to understand. Benson was all about combating creative drafting.

    Rader on the other hand specifically thinks we should just give up and allow drafting games. Indeed, his even talking about this (in previous decisions) shows that he is going against Benson because that was the entire point to it. To stop drafting games.

    “Please tell us all what this “good” reason is”

    To prevent clever drafters from claiming the exact same thing as they just got through placing an exception on by adding in limitations that don’t really limit the SCOPE (note that this is why the breadth comes into the 101 analysis) in any meaningful way and the claim covers everything that a bald faced claim to the abstract idea covers.

    I’ve explained this to you time and again. You never understand, I suppose because you simply don’t want to understand.

  18. “Except that the only objective way to determine if a claim is a monopoly over a concept ( your so called pre-emption) is to analyze what it covers when applied.”

    Not necessarily. Some claims are to the abstraction itself on their face. No need to analyze what it covers when applied if that is the case. For example, the claim in Morse.

    “Rader: How do you distinguish between a field of use and a specific application?

    6: I do not “distinguish between a field of use and a specific application because there is no need to. The only thing we are concerned about is pre-emption..blah blah blah blah …

    Rader: Where exactly does it say in Bilski your ( pre-emption blah blah blah blah) ?? I need that exact quotei!

    6: I do not believe there is an exact quote from Bilski. If you’d like a quote look to Benson.

    Rader: So you are interpreting that Bilski said pre-emption blah blah blah. And you are simply characterizing the blah blah blah!

    6: Um nope.

    Lourie: Why is it application abstract when it’s specific implemented steps on a machine?

    6: The claim is considered abstract because it preempts an abstract idea and not for any other reason.

    :: The panel obviously fed up with 6′s backwards thinking and lack of substance or facts looks to Rader::

    Rader: Your time is expired.

    6: Thanks your honor, I wish you good luck in your policy tampering that I’ll have to go to the USSC to have set straight. My client hopes you’ll renounce policy setting, simply follow the law as interpreted by the USSC, and save him the time and trouble.

    Rader: NO!

    Rader: Thank You.

    ^ Is more like what would have gone down with me involved.

  19. “I know it looks like magic to you but it isn’t.”

    O rly? You know that? Because I don’t think it is magic nor does it look like magic to me. It is those that are on the pro-patenting side in this discussion that are relying on magic. And not technical magic either. Legal magic.

    ‘Processing a “user profile for you bank account” is different that processing a “user profile for Facebook,” which is different than processing your bank statement, which is different than processing a request, which is different than processing a response, and so on and so forth …”

    Were you going to make a point at some point or just babble on about nothing?

    “The type of data changes how that data is processed … ergo, you need a new computer if the old computer is processing data that is not comparable to the new data.”

    Ergo? Lulz, there is no “ergo” there ya tard. Use the old machine to process the new data by reprogramming it, i.e. simply telling it what to do. And shortly we’ll have voice software integrated with programming software that will literally let you reprogram a computer on the fly by just telling it what you want it to do. I suppose then you’re still making a whole new machine every time you utter some words amirite? Lulz, what a re tarded view.

    “Most college freshman pick this up (even if they’ve never been exposed to computer programming) in about 15 minutes. Not a hard concept. Of course, it conflicts with your world view, so that is why you cannot pick it up.”

    Most re tarded comp sci freshman you mean. I picked it up at a more advanced level than your ta rd buddies did. I picked it up while at the same time taking classes about how to actually make a new computer. And trust me, it’s a tad different than simply typing reading some data from a disk etc. or speaking words.

  20. Your thoughts now?

    I dont think you know what technical means…in Europe or America and technically you have no point. :/

  21. “Most of us can recognize a patent on a mental step or method of thinking a new thought when we see it.”

    So what you’re saying MM is you can act like “Solomon” and determine what is patent-eligible without knowing what the standard is?

    Whatever the standard is now, patents on mental steps and patents on thinking about certain facts are ineligible. This is not debatable and I am not aware of anyone seriously suggesting that such patents should be eligible.

    When a patentee sues someone and alleges that infringement is occurring when the defendant merely reviews certain aspects of previously obtained data, the analysis is pretty simple. Solomon is not needed.

  22. Sorry MaxDrei,

    My response was wiped out.

    Here’s the short reply:

    No one said anything about a “fixed” point of patent-eligibility. In fact, Per Bilski and Diehr, Useful Arts is decidedly contemporanous and thus not fixed. That’s the point.

  23. 6: “There is nothing abstract about any of those applications and the USSC knows that. ”

    AI: Then the invention is patent eligible according to the statute and the Court created judicial exceptions. Thanks for pointing out this glaring mistake in Benson.

    6: “the point to the decision was that the claim gets the entirety of all applications of the abstract idea, ”

    AI: Entirety or Breadth is a 102, 103, 112 issue. So the Court in falling to prove 101 and ruling instead on what should have been 102, 103, or maybe 112, makes the invention is 101 eligible by default. Thanks for pointing out this other glaring mistake.

    6: “The court held that if you make such a claim, regardless of how many “concrete, tangible, TOTALLY NONABSTRACT” uses you might put the abstract idea to, you still are excepted by the judicial exceptions.”

    AI: As Rader would say, show me where it says that in Benson! I need that exact quote! And even if you can, to rule that something is a judicial exception, in this case abstract, while proving that it’s not abstract, is a contradiction and ridiculous on its face.

    6: And they did that for a good reason AI.

    AI: Please tell us all what this “good” reason is.

  24. Not following you. Sorry. I suppose we can agree that, in the USA, the fixed point of patent-eligibility is the “useful arts” of the Constitution and that, in Europe, it is “technical character”.

    Opinions vary, whether these two expressions mean the same thing or something different. We don’t quite know yet, because not enough “business method” claims have been found ineligible in the USA and not enough have been found eligible in Europe.

    My point is that there will be convergence to a consensus on patent-eligibility, which process will take years. Mind you, CJ Rader is nearly there already.

    There is creep in the EPO. It could be that (unlike First to File) the convergent point will be closer to a SCOTUS-defined “useful arts” than what many Americans think European “technical” means. Meanwhile, the EPO continues to find ever more business method claims patent-eligible and not obvious.

    Your thoughts now?

  25. if you don’t then you just end up with an “administrative state” (which I note is undesirable to begin with) that doesn’t function.

    That would be a false conclusion to arrive at.

    There is no basis for making it necesary for an Administrative State to have as its top priority to keep things easy for itself in order to function. In fact, the very notion that an administrative state is necessary indicates that “being easy” should not be a top driver – if things were easy, then there would be no need for the administrative state to begin with.

    6, you FAIL.

  26. “Seriously, what’s abstract about any of these applications? ”

    That’s the whole point AI, which you’ve been missing. And why I’ve been telling you that you don’t understand the decision for some time now. There is nothing abstract about any of those applications and the USSC knows that. The point to the decision was that the claim gets the entirety of all applications of the abstract idea, which in that case was a way of converting binary to bcd.

    The court held that if you make such a claim, regardless of how many “concrete, tangible, TOTALLY NONABSTRACT” uses you might put the abstract idea to, you still are excepted by the judicial exceptions.

    And they did that for a good reason AI.

  27. Well Mr. No, if you don’t then you just end up with an “administrative state” (which I note is undesirable to begin with) that doesn’t function.

  28. We’ll see. In 5 years

    This may become a perfectly valid point.

    Per Bilski and Diehr, Useful Arts is indeed a term that can change meaning over time (a term without an explicit definition taking the contempory one). So just as business methods have validly moved into being included in the Useful Arts, technically, there is nothing to stop them from also moving back out of the Useful Arts.

    Carry on.

  29. I also heard a Nobel Prize winner call it “doing the same over and over again and expecting a different result,” BHB. Now who could that be?

    Yeah, I guess I remain a (cynical) “optimist.” Anyway, have a nice weekend (hopefully not consumed by rush filings to beat the 15% fee surcharge date of the AIA this Monday).

  30. Most college freshman pick this up (even if they’ve never been exposed to computer programming) in about 15 minutes. Not a hard concept.

    And they’re okay with stretching their Ramen budget to buy a new computer to process their bank account profile and another different computer to process their Facebook profile?

    Or are we gradually coming to the same realization that it actually is the same computer that does all these things, and moreover it’s mostly computers that already existed at the priority date, and this is all an elaborate fiction crafted as a flimsy rationalization of apparatus claims to process (software) inventions?

  31. “But since everyone knows that computers process information, how can the type of information being processed possibly turn an old computer into a patentable computer?”

    “Magic MM. Magic.”

    I know it looks like magic to you but it isn’t. Processing a “user profile for you bank account” is different that processing a “user profile for Facebook,” which is different than processing your bank statement, which is different than processing a request, which is different than processing a response, and so on and so forth …

    The type of data changes how that data is processed … ergo, you need a new computer if the old computer is processing data that is not comparable to the new data.

    Most college freshman pick this up (even if they’ve never been exposed to computer programming) in about 15 minutes. Not a hard concept. Of course, it conflicts with your world view, so that is why you cannot pick it up.

  32. we now know was not correct and is no longer good law

    Ned Heller offering up bad law because it suits his agenda.

    No one should be surprised.

  33. But… but… but… it’s new and would be too hard to examine because we don’t have a database of easy cases to look at. We might even have to work at our jobs.

    - paraphrase of the President’s Commission on why software patenting should not be allowed. The number one rule of the Administrative State – keep things easy for the Administrative State.

  34. That’s a pretty good decision Ned, and you can see in it where the courts still think that there was some actual machine at issue in Research Corp. A “blue noise mask” is not typically a stand-alone machine sitting on someone’s desk somewhere or in a printer etc, although it COULD be. It is little more than a field of numbers as claimed in that case. Apparently people reading the patent seeing the physical implementation in the spec continues to throw courts off.

    What is also funny is that the court gave them BRI or BRC as they called it. Lulz.

    I also liked how they used Alappat to kill computer claims. Is that not rich rich irony?

    I can’t wait to see what the Fed does with this case.

    Rich rich lols are on the way one way or another. \

    Overall though I don’t like their abstract idea analysis. They try to simplify the abstract idea “at the heart” of the invention instead of simply writing it out longhand as would be proper and better facilitate an objective determination.

  35. Or maybe I post as “anon” and argue with myself. Some sort of Jeckyl and Hyde thing.

    The Malcolm = Dennis conspiracy theory comes to mind.

    Until this past year when the IPWatchdog bypassed Patently-O on the most popular patent blogs, the artificial inflation of posts would have lent credence to this view.

  36. “And, yes, 40 years ago, but it set in motion a culture of not properly examining information processing patent application.”

    Sooooo… what you’re saying is… Mission Accomplished?

  37. How about the rein of Duddas? Prior to becoming a professional wrestler he put his hopes on 101.

    And, yes, 40 years ago, but it set in motion a culture of not properly examining information processing patent application.

  38. Next time you see one that you suspect is me, please call “me” out.

    Reminds me of NAL and chaing Malcolm up that Sam Hill.

    Good times.

  39. That sort of subjective attitude smacks of elitism, authoritarianism, or worse.

    Of course. This is Malcolm, after all.

    Is anyone surprised?

  40. “Most of us can recognize a patent on a mental step or method of thinking a new thought when we see it.”

    So what you’re saying MM is you can act like “Solomon” and determine what is patent-eligible without knowing what the standard is? That sort of subjective attitude smacks of elitism, authoritarianism, or worse. I, on the other hand, prefer to have standards that are conducive to reasoned, rational, consistent, and logical decisions without regard to who is making those judgments. That’s called due process.

    To conclude my point here, when I graduated from college (Carleton College, a school I was blessed to go to, even being a token “conservative” in a sea of “liberals”), our commencement speaker (who was definitely not a “conservative”) talked about “men and measures.” He definitely made clear that decisions and policies made by “men” without “measures” had serious problems. That thought has resonated with me now for over 37 years after I heard it. So MM, I ask you, which do you choose: “men” (e.g., elitism) or “measures” (e.g., due process)?

  41. This obsession with “definitions” puzzles me. To understand a statutory term you need reasoned decisions from courts of appeal, to flesh out what the term “means”. We can all look in a dictionary what is the meaning of a term like “obvious” but actually we know that much already.

    As to what “abstract” means, in the context of patent-eligibility, we are still a bit low on caselaw. But as to what “technical character” means, for patent-eligibility at the EPO, and as to what “objective technical problem” means for the EPO’s 103 test, we have by now hundreds of decisions.

    You know my view on “technical”, that it corresponds to the “useful arts” in your Constitution. You got there first, OK? Give it another 5 years of caselaw and let’s touch base again, and see where we stand then. I predict harmony. CJ Rader is on the case, and active.

  42. Basically, I view looking at 101 last as essentially a final “check” to make sure that, if the claimed subject matter passes muster under 102, 103, and 112, it isn’t claimed in such a way to read purely on “mental steps,” to be somehow “preemptive” of the entire technology scope (e.g., is basically trying to cover as broadly as a “law of nature”), or to be so “abstract” as to not lead to a “practical result” (see Newman’s opinion in the recent Classen remand on the “practical result” point where the claims in the ’283 patent frankly weren’t properly drafted method/process claims). In other words, apply the “tangible, concrete, and useful result” test. Admittedly, few situations would/should occur where the claimed subject matter passes muster under 102, 103, and 112, yet “flunks” under 101, but that’s the whole idea: the scope of patent-eligible subject matter under 101 should be construed “broadly.” See Michael Risch’s law review article entitled “Everything Should Be Patentable” which makes this point and which I agree with.

  43. Maxie:

    So in the UK you guys have defined “technology” and done it 10 years ahead of the USA?

    Please, provided this EPO definition for us mere earthlings over here in America.

  44. Ned are you referring to the Alice case? Several come up on the link. If so this case has among it’s supporting references the DC’s decision in Ultramercial which we now know was not correct and is no longer good law. So it’s just hopeless fodder for the anti patent bigots that want to practice classcism against small businesses and Actual Inventors. Thank God for the Feds and our Supremes!

    ” Similarly, a district court found a business method directed to allowing Internet users to view copyrighted material free of charge in exchange for viewing certain advertisements to be an unpatentable abstract idea. See Ultramercial, 2010 U.S. Dist. LEXIS 93453 at *17. The district court found the method abstract because at its core sat “the basic idea that one can use advertisement as an exchange or currency.” Id.

  45. MM patents are not issued for an individual step, and there are no patents for merely thinking a new thought. At least be honest when trying to make your case for being a patent bigot.

  46. “Here, let me rephrase. Supposing a claim has an obvious defect under 101. What purpose is served by conducting an expensive, fact-intensive prior art analysis under 102/103 and not focusing on 101, which is just as much a statutory requirement to obtain a valid patent? Particularly in litigation, where a single basis for invalidity is dispositive of the case.”

    If a claim is invalid under 101 it’s cake walk. A slam dunk. Simply point out its a law of nature, natural phenomenon, or abstract, (all the steps can be done in the mind.) and poof! It’s gone. It’s only when you try to drag 102 103 into 101 that there is a mess. And thus the reason for the separate doors doctrine. Rich was a smart man.

  47. I enjoyed this article as well EG. My question is what would be the purpose of of coming to 101, after 102 and 103? If that is what you mean. It seems illogical and out of order.

    That is if you agree that 101 should be broad as the statute is written and as congress intended it to be. This entire 101 matter can easily be cleared up by just eliminating inventions that are laws of nature, natural phenomenon and true abstract ideas.

    And there is nothing difficult about what is abstract. If the invention is entirely performed in the human mind, its going to be subjective and abstract. case closed.

    Now if people are really worried about inventions receiving patents that are not new ( Novel) and not really innovative ( obvious) then 102 and 103 already have all the teeth needed to weed them out.

    If all the steps of an invention are well known or performed by someone else then it’s easy to reject under the prior art or to invalidate in court. And for goodness sake, if it’s really obvious KSR makes it all but impossible to get past 103. There is no need to dissect the claims and ignore certain steps and what not.

    In fact this entire notion of dissecting claims at 102 and 103 is not needed unless there is just a personal bias or selfish business interest in stopping certain inventors from having full and equal access to the patent system.

    In fact I would call such systematic discrimination anti American and against the very fabric of equal opportunity for all that our nation is founded on.

    It may not be racism but it’s definitely “classcism” and will hurt the small business person and inventors the most.

  48. Well NWPA, I do see contradiction in the Benson case. It appears quite glaring and obvious. For example what do yo make of the following from Benson…

    “Here the “process” claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure-binary conversion. The end use may (1) vary from the operation of a train to verification of drivers’ licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus.”

    But then the Court says:

    “The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”

    It appears to me that the Court clearly established the “substantial practical application” which consist of at least:

    1. Operation of a train.

    2. Verification of drivers’ licenses

    3. Researching the law books for precedents .

    Seriously, what’s abstract about any of these applications?

    Then of course the Court quotes Funk Brothers as follows:

    “As we stated in Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130, 76 USPQ 280, 281 ,”He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.” We dealt there with a “product” claim, while the present case deals only with a “process” claim. But we think the same principle applies.”

    So again why are the applications the Court has acknowledged not to a new and useful end? They clearly say the same principles apply to a process claim.
    As I read through the decision I found many more inconsistencies and contradictions. This case is a mess!

    And this is what 6, Malcolm baboney, Nedo and the rest of the anti patent crowd want to stake their positions on? No wonder Rader set the record straight. Someone had to throw down the gauntlet and I am very glad he stepped up.

  49. Moe: have to wonder if Ned is sitting on a beach on Maui..

    IQ 6: “He better not be, he better be getting him some caribbean tail.”

    6, Maui is not the caribbean. Ya know if that examiner thing does not work out you can always get a job in Bachman’s campaign.

  50. “And that is because the abstract idea analysis has jack sht to do with whether the idea is “applied” or not. The question is preemption, always was preemption, and always will be preemption.”

    Except that the only objective way to determine if a claim is a monopoly over a concept ( your so called pre-emption) is to analyze what it covers when applied.

    Thus getting back to your fantasy of arguing before the Ultramercial panel. Oh and ..the following example is composed of actual questions from the panel if anyone wants to listen.

    Rader: How do you distinguish between a field of use and a specific application?

    6: It’s pre-emption..blah blah blah blah …

    Rader: Where exactly does it say in Bilski your ( pre-emption blah blah blah blah) ?? I need that exact quotei!

    6: Well it says blah blah blah blah…..

    Rader: So you are interpreting that Bilski said pre-emption blah blah blah. And you are simply characterizing the blah blah blah!

    Lourie: Why is it application abstract when it’s specific implemented steps on a machine?

    6: Well it’s abstract, Blah Blah Blah………

    :: The panel obviously fed up with 6′s backwards thinking and lack of substance or facts looks to Rader::

    Rader: Your time is expired.

    6: But, but, but could I make two more points?

    Rader: NO!

    Rader: Thank You.

    :: And down goes 6!::

    Yup I would pay 50 cents to see that elephant jump the fence :-D

  51. I still think the only thing really important about this case is the way it distinguished Cybersource.

    “Contolled interaction with a consumer via a website.”

    I think this may be enough for 101, but I am not sure. I was hoping for some discussion here of this point, but I have seen none so far.

  52. whatever sock puppets you like throw out

    LOL. Which ones would you be referring to, Shillywilly? Next time you see one that you suspect is me, please call “me” out. The frequency at which pseudonymous newbies comment here to agree me or merely to join me in the dismantling of the latest patent txxbxggeris conspiracy is close to zero. Maybe it’s happening all the time in threads that I don’t read? Let me know.

    Or maybe I post as “anon” and argue with myself. Some sort of Jeckyl and Hyde thing.

  53. “Sockie stuck its head in the sand and engaged in ad hominem attacks.”
    So says the biggest troll here. Do you need to stock up on Kleenex tissues?

    “Such inventions, regardless of the form in which they are claimed, are ineligible, invalid, or unenforceable.”
    Well, in Mooney-land they are, but in the US of A, you can have abstract ideas incorporated into your claims. So sorry. It looks like you are going to have to wait another 5 years or so before SCOTUS takes on another 101 case. How long have you been doing your software is not patentable dance? 5, 6, 7 years??? Too bad a lot of attorneys/inventors/businesses have made a lot of money patenting software-implemented inventions in that time and will contiue to make a lot of money ino the future.

  54. “Boo hoo hoo hoo hoo!!!!!!! I’m the most powerful judge on the Federal Fxxxing Circuit!!! Why do I have to decide stuff?????”

    He did decide, and now you are “Q-Q, Q-Q” all over this blog.

  55. “Supposing a claim has an obvious defect under 101. What purpose is served by conducting an expensive, fact-intensive prior art analysis under 102/103 and not focusing on 101, which is just as much a statutory requirement to obtain a valid patent?”

    If it is a patent application, then fixing 101 issues is a piece o’ cake — so why delay addressing substantive patentability issues?

    If it is an issued patent, then it probably isn’t “an obvious defect under 101.” At least not for patents issued in the last 5 years. Moreover, if it is an “obvious defect,” it probably never makes it past Markman.

  56. “Rader’s recent writings especially suggest he’s simply unhinged and incapable of reasoning about patent eligibility.”

    You meant to write:

    Rader’s recent writings especially suggest he’s [interpreting the law the way I don't want it to be] and incapable of [bowing to my wet dream] about patent eligibility.

    “most of whom change their pseudonyms on a daily basis.”
    Of course, Mal, Malcolmn Mooney, MM and whatever sock puppets you like throw out. Too funny.

  57. I am pretty sure that “reason” isn’t one of your skills Malcolm, Mal, MM, so it’s not that surprising when you don’t recognize it.

    But please, continue on with your rant.

  58. Rader is pointing out the inanity of trying make a logical, rational, consistent determination of patent-eligibility under 35 USC 101 when SCOTUS provides absolutely NO DEFINED standard for what it means by “abstratc idea.”

    “Boo hoo hoo hoo hoo!!!!!!! I’m the most powerful judge on the Federal Fxxxing Circuit!!! Why do I have to decide stuff?????”

  59. If you really believe that LB you simply have no grasp what so ever of what Benson was actually about. It was specifically about stating that ordinary ho ho “applications of technology” which ordinarily would not be given a second glance in terms of 101 can never the less fail the abstract idea analysis. And that is because the abstract idea analysis has jack sht to do with whether the idea is “applied” or not. The question is preemption, always was preemption, and always will be preemption.

    It is as if you have to have a mind of the legal caliber of a USSC justice to be able to comprehend this simple aspect of Benson. It really isn’t rocket science, and anyone should pick it up on their own after reading Benson more than 8 times.

  60. EG Th larger point, though, is that the Supremes are smack dab in the middle of creating the 101 mess.

    I don’t know if it’s “larger” or not, but it is certainly true. Part of the reason, I think, is that some members of the court are torn between their desire to do whatever corporations are asking for and their understanding that patent rights are, fundamentally, rights to deprive others of their freedom to do stuff.

    Also, I’ve no doubt that one of the reasons some of the court members jumped on Bilski was to flush State Street down the txxlet, which they gleefully did. As Dennis recognized immediately, State Street was the Aspen Mountain of the patent txxbxggxers fantasy universe. I don’t expect we’ll ever see the likes of that universe again.

    I also don’t expect or hope for some over-arching test of 101 eligibility. A piecemeal approach is fine by me as long as the pieces fit together. Currently, they don’t. The “abstract” test seems to me an overarching principle to capture claims that are formally within the 101 parameters (e.g., compositions, processes, articles) but which nevertheless encompass abstractions that are not technological in nature or which are otherwise intangible (e.g., mental steps, thoughts).

    And it’s those aspects of the decision that are going to be fleshed out in decisions to come. What’s pathetic about some of these CAFC decisions is that they don’t seem to “get it”. Rader’s recent writings especially suggest he’s simply unhinged and incapable of reasoning about patent eligibility. He just selectively picks passages from old Supreme Court decisions as if they all make sense when, in fact, they don’t. That inability or reluctance to reason one’s way through the issues is also a “part of the problem.” Of course, it’s a problem that is shared by a few commenters here, most of whom change their pseudonyms on a daily basis.

  61. If you’re going to say that what is claimed has an “obvious defect” under 35 USC 101, then the standard has to be better than whatever we have now (which is no standard at all in my opinion).

    Only for some purposes. Most of us can recognize a patent on a mental step or method of thinking a new thought when we see it.

  62. or even if not, they’ll owe us an explanation, and that will be our guidance.

    If (as appears to be the case) the Circuit is divided, that’s precisely what the Supremes are for. Bring them this growing body of apparently inconsistent caselaw, and ask them to draw a line and settle the lot. But by all means, focus on 101. The only way out of this mess is straight through it.

    You quite miss the point. The Supremes “owed us” an explanantion in Bilksi, and they failed. Dicta or not, an explanation would have been helpful. And to the point at least on resolving some issue of Bilski, that level of guidance would not have been dicta.

    Th elarger point, though, is that the Supremes are smack dab in the middle of creating the 101 mess. Read the cases – all of them. Watch the flip flops of the majority switching to the minority. The Supreme Court has had more than enough 101 cases if it had wanted to make consistent (and consistently) principled law. But what we got instead was the philosophical punch in the nose of wax.

    If you are not helping solve the problem – you are part of the problem, and in this case, a Supreme problem.

  63. If you’re going to say that what is claimed has an “obvious defect” under 35 USC 101, then the standard has to be better than whatever we have now (which is no standard at all in my opinion).

    I’m not a sitting judge. I don’t need an established clear standard to identify a serious 101 problem. I can easily point to cases like Prometheus and say that they raise 101 issues. And even then, it’s quite easy to say that Prometheus looks disturbingly like Flook – you do some physical things, get a number, notice the number is interesting, and then the claim ends.

    We’re better off for the lack of a test in Bilski. Bilski’s claims were worse than Benson’s claims, and miles away from Diehr. Any possible test the Supremes could have come up with would necessarily have been dicta. What more could they say than what Rader said – the claims don’t even pass the laugh test.

    Prometheus is a decent case for the Supremes to articulate a standard. There are physical/chemical things, physical steps, and a dangling thought at the end. Some of the others are better still. If the Supremes want to invalidate Prometheus under 101, or even if not, they’ll owe us an explanation, and that will be our guidance.

    If (as appears to be the case) the Circuit is divided, that’s precisely what the Supremes are for. Bring them this growing body of apparently inconsistent caselaw, and ask them to draw a line and settle the lot. But by all means, focus on 101. The only way out of this mess is straight through it.

  64. “Here’s what is NOT logical: changing the order of consideration of various statutes simply because some judge on the Federal Circuit is a whining crybaby or because your favorite claims are getting pounded out of existence by the statute. That’s emotional, not logical.”

    You’re mentally hyperventilating again, MM. Far from being a “crybaby,” Rader is pointing out the inanity of trying make a logical, rational, consistent determination of patent-eligibility under 35 USC 101 when SCOTUS provides absolutely NO DEFINED standard for what it means by “abstratc idea.” In that regard, Bilski v. Kappos is an absolute disaster in rendering any “order” out of this “chaos.” They may like their “fuzzy,” “feel good,” “we don’t want hard and fast guidelines,” but that’s no way for our Judicial Mount Olympus to act when they’re the court of last resort and simply hurl thunderbolts at us “mere mortals” below.

  65. “I remember predicting before Bilski came out that it was a poor fact pattern for giving any real guidance, and we should have held out for a better 101 case. Looks like I was right.”

    I agree with you there, IANAE. But as you point out, the problem we have with the current standard for patent-eligibility under 35 USC 101 is that we really have no standard, at least not one that SCOTUS ever bothered to define in Bilski (what does “abstract idea” mean which is the only criticism I agree with in Stevens concurring/dissenting opinion). If you’re going to say that what is claimed has an “obvious defect” under 35 USC 101, then the standard has to be better than whatever we have now (which is no standard at all in my opinion). Until that happens up at SCOTUS’ level (which they appear to be unwilling to do with all their “fuzzy,” “feel good,” “we don’t want to set hard and fast guidelines” nonsense), we would be better off from a “practical” standpoint focusing (as Rader suggests) on sections 102, 103, and 112, and not 101. I realize that’s not the perfect solution, but we’re frankly getting ZERO help (and much CONFUSION) from SCOTUS in coming up with any objective, practical, and consisent standard for determining patent-eligibility under 35 USC 101; the ultimate “blame” for where we “mere mortals” (including the Federal Circuit) are now squarely lies with our Judiciial Mount Olympus.

  66. I’ve already said that SCOTUS would do well to “torch” Benson, Flook, Bilski and may be even Diehr, and start with a clean slate that articulates a test for patent-eligiblity other than one based on the nebulous and so far undefinable “abstract idea” standard.

    Sounds like we’re in agreement on at least one point – we need more 101 cases, not fewer.

  67. “The trouble with Benson is that the Supreme Court got to the wrong answer when they applied the law they had just articulated.”

    How true, Leopold. I’ve already said that SCOTUS would do well to “torch” Benson, Flook, Bilski and may be even Diehr, and start with a clean slate that articulates a test for patent-eligiblity other than one based on the nebulous and so far undefinable “abstract idea” standard. How about “tangible, concrete, and useful result” which unfortunately was discarded by the en banc Federal Circuit in Bilski? It would be a HUGE IMPROVEMENT over the “chaos” we’ve got now with the “I know it when I see it” “abstract idea” standard.

  68. All I suggested is that it might be more logical to focus first at the patentable merits sections of 102, 103, and 112 before looking at 101. That’s all, nothing more.

    In some cases it might be more logical, in other cases not. 101 should be looked at whenever 101 issues present themselves. Likewise with obviousness. Example: ook at 103 before 112 if you wish. But if the applicant starts making arguments during 112 that contradict statements made during the 103 analysis, then go back and re-visit 103. Likewise, if you conclude that the patent is eligible under 101 but the patentee starts making statements during infringement proceedings suggesting that the claims cover people who think about “novel” facts, then you had better revisit the 101 issue.

    Here’s what is NOT logical: changing the order of consideration of various statutes simply because some judge on the Federal Circuit is a whining crybaby or because your favorite claims are getting pounded out of existence by the statute. That’s emotional, not logical.

    And I’ll predict again: it doesn’t matter what section of the 35 USC is used to tank crxp oomputer-implemented/biz claims, the same folks will start crying about “treason” and detroying America, etc.

  69. Sorry IANAE, but you took what I said out of context (that’s unfortunately what happens when you resort to paraphrasing only part of what was said).

    Sorry EG, I didn’t realize I needed literal support for my claims.

    Here, let me rephrase. Supposing a claim has an obvious defect under 101. What purpose is served by conducting an expensive, fact-intensive prior art analysis under 102/103 and not focusing on 101, which is just as much a statutory requirement to obtain a valid patent? Particularly in litigation, where a single basis for invalidity is dispositive of the case.

    Are these software claims so fatally defective under 101 that we have to pretend 101 doesn’t exist? You can’t keep it up forever anyway – either all of these claims will die under 102/103/112 in which case the point is moot, or some will eventually survive and we’ll have to decide whether it’s possible to save them under 101 anyway.

    If the law of 101 is too unclear, let’s clarify that. It’s probably too soon for new patent legislation, so the only thing to do is take more cases up to the Supreme Court until we get some guidance. I remember predicting before Bilski came out that it was a poor fact pattern for giving any real guidance, and we should have held out for a better 101 case. Looks like I was right.

  70. Sorry IANAE, but you took what I said out of context (that’s unfortunately what happens when you resort to paraphrasing only part of what was said). I didn’t say that one section of Title 35 was “somehow less important to apply than others.” Instead, I was addressing what would be, in my opinion, the more “logical” order in considering the various statutory sections in judging the validity of the claimed invention (and one that Chief Judge Rader agrees with in the 3 noted cases). Remember, you said that was the “mentality” I expressed, not me.

  71. You’re mentally hyperventilating, MM. Where does my comment “hysterically complain” about the “end of civilization”? Remember, you said it, not me.

    Nor did I say that starting with 35 USC 101 somehow “threaten[ed] the promotion of progress” (“of science” to complete what the Patent Clause says). Again, you said it, not me. All I suggested is that it might be more logical to focus first at the patentable merits sections of 102, 103, and 112 before looking at 101. That’s all, nothing more.

  72. The trouble with Benson is that the Supreme Court got to the wrong answer when they applied the law they had just articulated

    +1

    Chalk it up to the intrusion of naked judicial activism and philosophy geared to a desired end result.

  73. why we would be better off instead focusing on the merits of the claimed invention under 35 USC 102, 103, and 112 before looking at 35 USC 101;

    I don’t understand this mentality that some statutory requirements for obtaining a patent are somehow less important to apply than others.

  74. Thanks, NWPA. Not everyone will agree with Rader’s view (or my article), but the Ultramercial case (as well as the Classen remand decision) virtually “scream out” the “chaos” that the case law has created in determining patent-eligibility under 35 USC 101, and why we would be better off instead focusing on the merits of the claimed invention under 35 USC 102, 103, and 112 before looking at 35 USC 101

    Prediction: no matter how crzp claims are taken down, the same people will be hysterically complaining about “treason” and the end of civilization as we know it.

    I have yet to see one single claim invalidated under 101 that I felt was remotely threatening to the promotion of progress. Threatening to the lifestyle of certain attorneys and their clients who make a living off prosecuting and attempting to enforce crxp claims? Sure. But none that threatened to impeded the promotion of progress in any area. None. Zero. Zilcho.

  75. Thanks, NWPA. Not everyone will agree with Rader’s view (or my article), but the Ultramercial case (as well as the Classen remand decision) virtually “scream out” the “chaos” that the case law has created in determining patent-eligibility under 35 USC 101, and why we would be better off instead focusing on the merits of the claimed invention under 35 USC 102, 103, and 112 before looking at 35 USC 101; Rader has been pretty clear about being in favor of this approach in the Ultramercial, Classen and Research Corp. Technologies cases. And as I stated in my article on the Classen remand case (see: link to patentlyo.com ), much of the blame for this “chaos” must be laid at the feet of our Judicial Mount Olympus (aka SCOTUS) which simply hurls thunderbolts at the Federal Circuit, but does nothing to render any “order” out of this “chaos.”

  76. Sockie, it’s nice that you noticed that Rader chucked some worthless disclaimer into the decision about what he’s not doing (as if there was any doubt about that).

    But I was talking about Examiners in my 4:44 pm comment, not district court or Federal Circuit judges. Please work on the reading comprehension. Your choice of pseudonym makes you look more foolish than usual.

  77. I guess I was wrong in my 7:24 comment. Sockie didn’t stick its head in the sand and recite the simpleton’s Mantra.

    Instead, Sockie stuck its head in the sand and engaged in ad hominem attacks.

    I’ll say it again: patents can not be used to protect mental steps or prevent thinking about novel ideas. Such inventions, regardless of the form in which they are claimed, are ineligible, invalid, or unenforceable.

    Take your pick.

  78. Agreed, MD.

    One way or the other, a sizable chunk of crxp claims are going to be flxshed out of existence, and it’s going to happen without engaging in a full-blown 103 analysis.

    Some may call this a “piecemeal” approach to the problem. So be it.

  79. 6: I am not Rader.

    6: The PTO DID spend an enormous amount of their energy trying to get information processing patents excluded under 101.

  80. You’re right to worry about Benson. But the present decision is consistent with the law in Benson. The trouble with Benson is that the Supreme Court got to the wrong answer when they applied the law they had just articulated, for the reasons you state. Forget the facts of Benson and compare the statements of law to the present case – any tension disappears.

  81. Incorrect.

    You do realize that “In re Bilski” is not controlling law, do you not?

    Oh wait, didn’t you have a similar run in regards to not knowing the legal status of the Tafas case?

    Someone else care to provide a cite that legally states that Alappat has been overruled?

  82. “Benson is internally inconsistent, scientifically wrong, inconsistent with engineering principles, impossible to apply consistently, and, frankly, is the product of a mind that is stuck in the iron age.”

    All very good things thank you very much NWPA. All that stuff you just noted simply means that there is a 100% chance that it is the law. Courts could not have been expected to hold otherwise. You know this to be true.

    “What you cannot dispute and what makes Benson worthless nonsense is that information is a property of nature that takes time, energy, and space to transform. You cannot dispute that it makes Benson nonsense.”

    I could dispute it, but I don’t need to because it plays perfectly into it being the law. The less sense it makes in patent law the more likely it is to actually be the law. You know this to be true NWPA.

    Tell me though NWPA, will you deny for me right fast being Rader? Or alternatively will you abstain from making such a proclamation?

  83. Have you dopes ever considered that all this energy and whining over 101 has done nothing but cause massive trouble. If the PTO had been told to buckle up and get the job done and stop trying to pull this nonsensical 101 business, perhaps they would have a decent system in place. Instead, they have put all thier efforts into trying to exclude information processing methods using 101, and now are left with nothing. ”

    The PTO did that? Lulz, NWPA, sorry bro, they did not do that.

    Also, them “being left with nothing” is hardly right. Rader having made a bad proclamation inconsistent with the law he is bound to follow is right.

  84. “And, did you bother to read what Rader wrote? That this is an improvement over an old machine that this could have been build hard-wired but that a general purpopse computer was used. The programed general purpose computer is a different machine. The Alappat holding ends the discussion.”

    I lulzed at what he wrote. Apparently he’d have given Benson a free pass as well.

  85. “This Court’s precedents providethree specific exceptions to §101’s broad principles: “laws of nature, physical phenomena, and abstract ideas.””

    Rader on the other hand would have us believe they mean “manifest abstract ideas” instead of plain ol’ “abstract ideas”.

    After having thought about it for a little while you will note that the worst thing about his “reasoning/proclamation” in this case is that if you followed it Benson would have turned out different. Benson is the case that started all this, if it has been upheld 3 times at the USSC you know there is something wrong with a man’s analysis if that case turns out the other way according to it.

    Here is how Rader’s analysis would go down for Benson.

    “[I]nventions with specific applications or improve-ments to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.” Research Corp., 627 F.3d at 869. The BENSON patent seeks to remedy problems with prior art binary to BCD conversion. By its terms, the claimed invention purports to improve existing technology in the marketplace. By its terms, the claimed invention invokes computers and applications of computer technology. Of course, the patentability of the BENSON patent, though not yet acknowledged by the U.S. Patent Office, would still need to withstand challenges that the claimed invention does not advance technology (novelty), does not advance technology sufficiently to warrant patent protection (obviousness), or does not sufficiently enable, describe, and disclose the limits of the invention (adequate disclosure).

    Returning to the subject matter of the BENSON patent, the mere idea that binary can be converted to BCD according to an established formula is abstract, just as the vague, unapplied concept of hedging proved patent-ineligible in Bilski. However, the BENSON patent does not simply claim the mere idea that binary can be converted to BCD according to an established formula. Instead the BENSON patent discloses a practical application of this idea. The BENSON patent claims a particular method for converting binary to BCD. Many of the steps are likely to require intricate and complex computer programming. In addition, certain of these steps clearly require specific application to the computer market. One clear example is … (omitted because I’m lazy). Viewing the subject matter as a whole, the invention involves an extensive computer interface. This court does not define the level of programming complexity required before a computer-implemented method can be patent-eligible. Nor does this court hold that use of an Internet website to practice such a method is either necessary or sufficient in every case to satisfy § 101. This court simply find the claims here to be patent-eligible, in part because of these factors.

    Way to go Rader. That is one busted arse analysis.

  86. I must say, I’m charmed. Charmed that the judges of the CAFC are debating in public, through their Decisions, whether the better vehicle to carry away the trash is 101 or 103.

    We had just the same debate at the EPO, about 10 years ago. There were a lot more EPO judges involved, and a lot more issued Decisions. CJ Rader well knows what was the outcome. I think he’s navigating for the same eventual outcome at SCOTUS.

    With his “103=technological advance” I think he’s on solid ground. How long before we know? Two years? Three?

  87. I’ll wager you don’t want to address the substance of my arguments because you have no defense.

    I’m sure that would seem like a pretty safe wager, if you’d never read anything I’ve ever said about Benson, Flook, Diehr and Bilski. Which is itself a pretty safe wager, considering how many of my posts you’ve replied to on that subject.

  88. Alappat did not hold that computers are patentable regardless of the end uses to which they are put. The “useful, concrete and tangible” test has been overruled. Alappat therefore has been overruled.

  89. Cute little boy IANAE, and yet no substance. Obviously I was speaking of the Cybersource three and not you.

    “sole reason that they disagree with my policy views”. Gee, such a clever boy to reduce my arguments. But, where is the substance? Where is the defence of Benson and the expansion of Benson by the Cybersource three?

    I’ll wager you don’t want to address the substance of my arguments because you have no defense.

  90. You have psychotic nonsense that gives anyone with a trained scientific mind a headache.

    Must be all those times I call for the impeachment of tenured professionals for the sole reason that they disagree with my policy views. Not very scientific-minded, that.

    Sounds like a good complaint for impeachment.

    Finally, someone has implied that I’m a federal judge. I think I’ve had pretty much every patent-related form of employment on this board now. It’s been an honor and a privilege to serve. As well as an honour, for those of you who have suggested I was an EPO examiner.

  91. And, you know what IANAE, the reason you dopes have nothing to say that addresses the substance of my arguments is that you have no arguments. You have psychotic nonsense that gives anyone with a trained scientific mind a headache.

    Dope boy. You have nothing but nonsense mystical arguments that illustrate that you are willing to do anything to achieve a policy goal. Sounds like a good complaint for impeachment.

  92. there are ways to remove judges that believe they can just do whatever they want regardless of precedent.

    We don’t remove judges for that, we remove decisions for that. The way we do it is by appealing such decisions to a higher court. When you get to the top, those judges are actually allowed to do whatever they want regardless of precedent, so it’s not a problem anymore.

    Did your law school not cover this?

  93. Wow, you are just so sophisticated IANAE.

    Dope. I suppose the irony is that because of dopes like you there are ways to remove judges that believe they can just do whatever they want regardless of precedent.

  94. Impeach the Cybersource three!!!!!

    I suppose the irony is lost on you, but people like you making comments like that are precisely the reason the judiciary has tenure.

  95. You know one thing to notice (which is a sure sign that the supporters of Benson are intellectually dishonest and trying to foist lies to achieve a policy goal) is that the academic literature is replete with criticisms of Benson for all the reasons I mentioned and yet the serious literature has no supporters of Benson. One only sees support for Benson when a person of power uses it to try to get what they want rather than what is right.

    Impeach the Cybersource three!!!!!

  96. Chief Judge Rader has “thrown the gauntlet down” before his fellow colleagues on the Federal Circuit. Good for him. See my article posted on IPWatchdog to that effect (and please excuse a few typos in that article, I was trying to get it up quickly on this important case): link to ipwatchdog.com .

  97. 6, MM, Cybersource three, Richard Stern, “J” Moore, dope8, etc., Benson is internally inconsistent, scientifically wrong, inconsistent with engineering principles, impossible to apply consistently, and, frankly, is the product of a mind that is stuck in the iron age.

    What you cannot dispute and what makes Benson worthless nonsense is that information is a property of nature that takes time, energy, and space to transform. You cannot dispute that it makes Benson nonsense.

    Additionally, this whole mathematical formula business demonstrates a complete lack of understanding of mathematics, science, and engineering. One can tell just how forward thinking the “Justices” were in Benson by writing that the method was used merely on a computer.

    Just a shameful opinion that the Cybersource three tried to extend.

  98. Ultramerical was decided correctly. The Cybersource three’s holding violated SCOTUS precedent and Fed. Cir. precedent.

    Alappat, Bilski. That is all one need to cite. The Cybersource three expanding Benson is outrageous.

    And, did you bother to read what Rader wrote? That this is an improvement over an old machine that this could have been build hard-wired but that a general purpopse computer was used. The programed general purpose computer is a different machine. The Alappat holding ends the discussion.

    Have you dopes ever considered that all this energy and whining over 101 has done nothing but cause massive trouble. If the PTO had been told to buckle up and get the job done and stop trying to pull this nonsensical 101 business, perhaps they would have a decent system in place. Instead, they have put all thier efforts into trying to exclude information processing methods using 101, and now are left with nothing.

    Notice too that Rader gets it right that information processing is the driver of our modern economy. Europe has this whole business so wrong. In Europe what one does is claim the invention in such a way to try and show it somehow is an improvement over what the European dopes regard as hardware. But, the problem with this as anyone that understand ee and cs knows is that there is no line between hardware and software that is in anyway possible to draw.

    Information takes time, energy, and space to transform. Physics recognize information as a fundamental property of nature. Stop the lie. Stop the nonsense.

    The Cybersource three should be impeached.

  99. It’s rather childish of you

    From the one who relishes in bullying, profanity, handwaving (or handwaiving), prevarications, projections and accusations, you chiding anyone for being childish is a bit much.

    Just what is expected, though.

  100. MM: “The proper question to ask is whether people who are practicing the prior art infringe the claim merely because they think a “new” thought while practicing the prior art. ”

    AI: Well, then your test fails by its own design, since no one can infringe any patent by merely thinking a new thought. There must be an application with that thought in order to even be able to identify the infringement.

    MM: “The one that is going to smack down the Diehrbots again?”

    AI: That’s what you said in Bilski and look how that turned out for ya. Besides when has Diehr ever been smacked down? Bilsk 14 baby!

    MM: Except that claims are “dissected” all the time.”

    AI: No, you dissect claims all the time and then conflate construing the claims with dissection,……. all the time.

    MM: “Well before the chips started falling as I predicted they would, that’s for sure.”

    AI: Yes let’s look at the record.

    Bilski WIN!

    Research Corp WIN!

    Classen WIN!

    Ultramercial WIN!

    Your position was crushed every time. At best you might have had some hope in Cybersource and that has been dIminished by Ultramercial. Some winning record there Mooney. I predict you will be back in hiding very soon.

  101. Sorry … all limitations must be considered.

    The simpleton’s Dierhbot Mantra! So simple. So wrong.

    How do you know that it’s wrong? Because if you follow the simpleton’s Mantra, you get the wrong result.

    start talking about the law they way it is.

    LOL. The law is in flux. That’s the way it is.

    But I’m talking about recognizing parts of the law that are NOT in flux (i.e., patents can not be used to protect mental steps or thinking about ideas) and applying that law to certain types of claims which effectively do just that. And your response? You stick your head in the stand and recite your simpleton’s Mantra. Every. Single. Time. It’s rather childish of you, frankly.

  102. MM:”To be clear, none of this “allegedly complex computer programming” is recited in the claim. ”

    AI:What was Diehr? No complex programming is recited in the claim. All it did was sound an alarm and pop open a lid. (Ultramercial v. Hulu)

    MM:” Where is the “complex programming”? Is it described in the specification?”

    AI: When does a general purpose computer become a programmed computer?

    Whenever its put into use. (Ultramercial v. Hulu)

    ::Predicts it wont be long now before MM pocks on his sock and skirts away and 6 starts spewing the T word”"

  103. Then the proper questions to ask is if there are any steps that are not mental?

    No, that’s the simpleton Diehrbot Mantra way which is effectively dead.

    The proper question to ask is whether people who are practicing the prior art infringe the claim merely because they think a “new” thought while practicing the prior art. If so, there is a 101 problem. The problem can be addressed by finding the claim ineligible, or invalidating the claim as per se unpatentable (e.g., by ignoring the mental step during the 102/103 analysis), in which case the 101 issue is moot. Take your pick.

    We also need to remain mindful of Prometheus

    You mean the Supreme Court’s decision that hasn’t come out yet? The one that is going to smack down the Diehrbots again? LOL. Yes, I’ll be “mindful.”

    if you try and use the law you run into Diehrs Claims as a Whole Doctrine which does not permit you to dissect claims at 101, 102, or 103

    Except that claims are “dissected” all the time. All that Diehr stands for is the weak proposition that the mere presence in a claim of ineligible subject matter does not render the entire claim ineligible for patenting. Thats it. More imporantly, Diehr does not say that the mere recitation of any eligible subject matter in a claim renders the claim as a whole eligible under 101.

    And if you look closely at the way that claims are analyzed and discussed (even in Prometheus) you’ll see that my interpretation of Diehr is correct. That’s because most judges are not simpletons. If you think the Supreme Court intends (or intended) to turn 101 eligibility into a purely formal exercise, you are deeply deluded. Which is just what I’ve been saying to you for … gosh, how many years is it? Well before the chips started falling as I predicted they would, that’s for sure.

  104. “I know this makes your insides quesy, but you need to get over it — its the law.”

    Rader has no authority to change the law in such a manner, where then do you believe your authority for such a change would come?

  105. MM: “1. You can’t patent mental steps.”

    Then the proper questions to ask is if there are any steps that are not mental? Its’ your hypothetical so you can say all the steps are mental. Then fine its not 101 if you can practice the invention entirely in your mind.

    But someone else that actually reduced this to practice might be able to show that there are indeed concrete, tangible and physical steps. Steps that require a specific application. And if that’s indeed the case, it not abstract and passes 101. DCAT!

    Furthermore you can’t prove that even the claim as you wrote it prevents anyone from thinking at any point in their entire life.

    Thus your chief policy argument for changing the law fails on it’s face.

    Finally, if you try and use the law you run into Diehrs Claims as a Whole Doctrine which does not permit you to dissect claims at 101, 102, or 103. And ignoring individual mental steps, or no machine steps, or non transformation steps, or non novel steps, or non pis ses off mooney steps, ALL amounts to dissection, any way you slice it.

    We also need to remain mindful of Prometheus:” Even one limitation in the claims that is not abstract, law of nature or physical phenomenon is sufficient to bring the whole claim structure into 101.”

    So as it stands now Mooney you dont have a statute to stand on in preventing process claims that have mental steps.

    Deal With It!

  106. “because the mental step is ignored”

    Ah no. Sorry … all limitations must be considered. If algorithms must be considered, so do mental steps. Stop talking about the law the way you want it to be, and start talking about the law they way it is.

    Also, 101 is based upon the claimed invention, AS A WHOLE. The inclusion of machines, “complex computer programming” (don’t you love that MM?), technological environment takes a claimed invention out of the realm of an abstract idea. I know this makes your insides quesy, but you need to get over it — its the law.

  107. AI: Not really. You might have some 112 issues there depending on how the spec was written and drawings and such. And of course there is 102 and 103 to deal with but not 101.

    Yes, really.

    There’s definitely a 101 issue because the claim has the practical effect of precluding people who receive letters with more than five pronounds (old, unpatentable) from thinking about what they are receiving. You can’t patent mental steps. That’s the one thing that everyone agrees on. The claim I wrote is effectively a patent on a mental step because only the mental step (“a need is indicated”) is new. It therefore must be ineligible under 101 or per se unpatentable under one of the other statutes (e.g., because the mental step is ignored).

    Take your pick.

    Claims reciting mental steps can and do raise 101 issues, even if they recite patent eligible steps. This isn’t conflation. Just a fact. And it’s a fact that runs counter to the simple-minded Diehrbots Mantra, which is why the simple-minded Diehrbots Mantra has always been wrong.

  108. I think he’s referring to the situation where some examiners want to adhere to the law and others do not and wish only to subvert it to advance their own beliefs.

    ::fixed::

  109. Not really. You might have some 112 issues there depending on how the spec was written and drawings and such. And of course there is 102 and 103 to deal with but not 101. Especially providing step one involves more than just dreaming and having the letter magically appear inside your head.

    What you fail to understand Malcome is the DCAT. Diehr’s concept and Application analysis/test.

    Remember it is because of this analysis/test that Diehr was granted his patent and Bilski was denied his.

    And most important remember that Diehr cabined Flook and Benson and that was reaffirmed in Bilski at paragraph 14.

    So Ultramercial did not need a machine or transformation or even a computer at all to pass 101.

    it’s DCAT that rules here baby.

    So then it seems reasonable that one can look for concrete and tangible steps ( not results) to see if there is indeed a specific application as required by Diehr.

    “The claimed invention, the court determined, constituted a patentable application rather than an unpatentable abstract idea. While “the mere idea that advertising can be used as a form of currency is abstract, just as the vague, unapplied concept of hedging proved patent-ineligible in Bilski,…the ’545 patent does not simply claim the age-old idea that advertising can serve as a currency. Instead, the ’545 patent discloses a practical application of this idea.”

    You may not like it. But thats the law.

  110. I think he’s referring to the situation where some judges want to uphold the law and others do not and wish only to subvert it to advance their own policies.

  111. As Jason notes, Rader is merely distinguishing the facts in Ultramercial from those in CyberSource. He doesn’t say that CyberSource was decided incorrectly.

    More importantly, Rader apparently does not recognize (or is unwilling to recognize) that claims reciting patent-eligible steps can nevertheless effectively (and impermissibly) preclude others from taking “mental steps”. Those claims must also be ineligible, or they must be found unpatentable per se under one of the other patent statutes.

    Baby steps. Or maybe Breyer will hit it out of the park.

  112. the situation is considerably more grave than ‘tension.’

    What “situation” might that be, that would be considerably more grave than “tension?”

  113. I assume you’re not talking about me. Unless I’m tired, I use the term patent eligible when discussing 101. Otherwise I’m talking about 103.

    LOLZ – whatever – who do you think you are fooling? You are barely cognizant of differences between 101 and 103.

  114. switch to communicating data electronically and suddenly some think that it isn’t patentable under 101.

    I assume you’re not talking about me. Unless I’m tired, I use the term patent eligible when discussing 101. Otherwise I’m talking about 103.

    It is likely that no one would question whether a method of exchanging specific information that involves using physical letters is patentable under 101

    1. A method of exchanging information using physical letters, comprising (1) receiving a letter, (2) opening said letter, and (3) reading said letter, wherein the use of greater than five pronouns in the letter indicates a need to drink 4.123 ounces of cow’s milk.

    I’d say there’s some 101 issues lurking in this claim.

  115. from the usual considerations under section 112.

    This decision does not opine at all on the patentability of the claimed invention under the substantive criteria set forth in § 102, § 103, and § 112.” – page 14

  116. Apparently MM does not have another issue to not discuss or is unable to avoid conflation at the present time.

    I’m not conflating. I’m highlighting the fact that most of these computer-implemented method claims are examined as if the examiner lives in another universe where commerce never existed prior to the invention of computers, and where computers are magical structures that are so “complex” that they must be found eligible for patenting and also so “complex” that they are immune from the usual considerations under section 112.

    If these claims were examined properly in the first place, the 101 issue would never come up. Claims such as the one at issue wouldn’t be granted, the PTO would be improved overall, and everyone except the patent trolls, grifters, and skimmers would go on their merry way. Nobody else would notice any changes, except perhaps certain services and devices might become cheaper.

  117. “But since everyone knows that computers process information, how can the type of information being processed possibly turn an old computer into a patentable computer?”

    A widget is patentable under 101. So is an improved widget, although it may be obvious under 103.

    If a computer is patentable under 101, then an improved computer is too. Now you can argue that a computer programmed to perform different steps doesn’t represent a different computer, but then you’re really saying that apparatus claims to a computer should be rejected under 102 as not representing a new apparatus, ie not being novel. Or you can argue that programming a computer does create a new apparatus, but that it would be obvious to program the computer in the way it was programmed, but then you’re really saying that such a claim should be rejected under 103.

    Obviously, however, your quote, and this analysis, ignores that the current claims are in fact method claims. Trying to fashion similar analysis for method claims is more challenging, but there is some correspondence. It is likely that no one would question whether a method of exchanging specific information that involves using physical letters is patentable under 101, so long as you aren’t trying to claim some abstract principle such as reading or writing, but switch to communicating data electronically and suddenly some think that it isn’t patentable under 101. I don’t understand the logic there.

  118. Viewing the subject matter as a whole” – page 11

    In a recent case, this court discerned that an invention claimed an “unpatentable mental process.” CyberSource Corp. v. Retail Decisions, Inc., No. 2009-1358, 2011 WL 3584472, at *3 (Fed. Cir. Aug. 16, 2011). The eligibility exclusion for purely mental steps is particularly narrow. See Prometheus Labs., 628 F.3d at 1358 (noting that claims must be considered as a whole and that “the presence of mental steps [in a claim] does not detract from the patentability of [other] steps”).” – page 13

    No, Thank you.

    Note that there is no such “ignore the recitation of a machine of composition of matter in a claim.”

    ed.: italics tag closed

  119. sockie the sockpuppet: a false characterization of Rader

    Did I step on your savior’s robes? So sorry.

    If there’s a passage in this decision where Rader indicates that he would have decided CyberSource differently, please quote it for everyone.

    Thanks.

  120. I respectfully request a more hard-hitting analysis than “tension.” That is something lawyers say when they don’t want to upset anyone. Here, the situation is considerably more grave than “tension.”

  121. A judge making an assertion unsuportable by facts “proves” something? I’ll give you points for trying. And then I’ll take points away for failing.

  122. But don’t conflate 102/103 issues with 101 analysis.

    Apparently MM does not have another issue to not discuss or is unable to avoid conflation at the present time.

    And this after being repeatedly warned to not conflate in the decision itself…

    Oh wait, let’s just slip in a false characterization of Rader: “so Rader, too, is ready and willing to ignore the recitation of a machine or composition of matter in a claim

    Try actually reading the case before commenting.

  123. through interchangeble software or hardware enhancements deserve patent protection

    This proves the adage: Hardware is equivalent to Firmware is equivalent to Software.

  124. “But since everyone knows that computers process information, how can the type of information being processed possibly turn an old computer into a patentable computer? ”

    Magic MM. Magic. In fact, I had a long discussion with an examiner the other day who was staunchely pro-software patents and B claims so long as they’re “properly drafted”. Eventually the conversation boiled down to him explicitly admitting that as long as magic is involved it is all fine, if no magic is involved then it isn’t.

  125. While the panel in Ultramercial recognized this tension, it distinguished Cyber Source as an instance of “purely mental steps.” Ultramercial Slip Op. at 13 (emphasis in original).

    Ah, so Rader, too, is ready and willing to ignore the recitation of a machine or composition of matter in a claim if the only other limitations are “purely mental.”

    That’s yet another nail in the already well-sealed coffin of the Diehrbots. It’s looking more and more like software patents will die a death by a thousand cuts. Fine with me.

  126. the ’545 patent does not simply claim the age-old idea that advertising can serve as a currency. Instead, the ’545 patent discloses a practical application of this idea.” Slip Op. at 10. This statement is followed by identification of the specific steps for monetizing copyrighted products set out in the claims, many of which involve complex computer programming.

    To be clear, none of this “allegedly complex computer programming” is recited in the claim. The steps recited in the claim are as follows: receiving,
    selecting, providing, restricting, offering, receiving, facilitating, presenting, recording, updating, and receiving. Where is the “complex programming”? Is it described in the specification?

    In other words, information processing steps. In other words, the computer does what computers do. The only thing the “inventors” have added is the type of information that is being “received”, “selected”, “provided”, “updated”, whatever. But since everyone knows that computers process information, how can the type of information being processed possibly turn an old computer into a patentable computer? Did everyone beleive prior to this patent that copyrighted information was somehow not processable by a computer?

    ,…the ’545 patent does not simply claim the age-old idea that advertising can serve as a currency

    No, it simply claims the age-old idea that computers can be programmed to do stuff that people were doing before computers, e.g., use advertising as a currency, among a zillion other computerized abstractions that patents are utterly unecessary to “promote.”

  127. I want take a moment to note that, if you want to laugh at this claim from a 102/103 standpoint, have at it! But don’t conflate 102/103 issues with 101 analysis.

    Thanks!

  128. Patent No. 7,346,545 claims a method for distributing copyrighted products over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement and the advertiser pays for the copyrighted content.

    LOLOLLOLOLOLOLOL. Heckuva job, Kappos.

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