This week in patent law class

  • This week in patent law class: Left my students confused after discussing Benson, Flook, Chakrabarty, Diehr, and Bilski. I’m somewhat confused as well.
  • Traditionally, a patentee could seek reissue to correct problematic claims if the problems were created “through error without any deceptive intention.”  The new patent act eliminates the “without any deceptive intention” limitation. What’s the impact?

-Dennis Crouch

269 thoughts on “This week in patent law class

  1. I have not read what Les said at 1:08. But in the past have agreed with everything Les has said. I will now look at this 1:08 that so disturbs you Mooney and tell you what I think.

  2. A flimsy rationalization. Or, if you prefer, “the court got it wrong”.

    See MM’s posts in this thread (I think) about whether a new CD creates a patentably distinct “programmed” CD player.

    Nobody in the world thinks a programmed general-purpose computer is a “special-purpose computer” or a whole new machine in any respect, unless they’re actively seeking to patent it. Even when those people are at home, they continue to use their “special-purpose” home computer the same way they’d have used a general-purpose one.

    If you’ve invented a method, there’s no reason why you should be entitled to claim “a machine that performs my method”, or “instructions for a machine to perform my method” without more. I think we’re on the same page here.

  3. Ned can’t answer any question that :

    1. Shines light on his no longer well hidden agenda

    2. Invalidates that agenda and all he is has come to shill for.

  4. “But, that does not mean or suggest that either the Supreme Court or Congress view BM to be within the Useful Arts. Quite to the contrary, that.”

    There is nothing to the contrary. All we know for a fact on the Constitutional area is that Congress and the Supreme Court has not acted to expressly make this one sub class of processes, ( so called business methods) unconstitutional.

    However, as I pointed out before, there is nothing to fear if you understand what Useful Arts truly means in the context of patents and our Constitution.

    You see, here in the USA, commerce is useful, and is the core foundation for the application of every invention ever issued a patent.

    I would go so far as to say commerce is the “Useful Arts!”

    Indeed this is what sets the Useful Arts apart from the liberal arts and social activity.

    (Even if you go back to 1789 all those first patents were for inventions being applied to commerce.)

    So, when you understand that the Useful Arts are for commerce, people can still do whatever they wish for liberal arts, fun, and social activity, including merely thinking without fear of being sued for patent infringement.

    But when a concept is applied to industry, or a specific marketplace, A.K.A Commerce, that is the realm of patents.

    Indeed, there is a reason our PTO is situated under the Commerce Department.

  5. that was the same reasction people had when machines become better at physical tasks than humans.

    Right. Was that ancient Rome? The civilization that rotted because of its inadequate patent system?

    One hundred bottles of lulz on the wall …

  6. Les, perhaps we agree. I am not so sure. Why don’t you read a post in this thread labelled “Night proposes.” I there include a quote from Shrader and a reference to Alappat.

    I think processes involving data transformation of measurements from the real world can be patentable. I am also open to patenting programmed computers that implement such processes disclosed and claimed.

  7. Malcolm, I find it amazing that Night continuously discusses transformations in time space but still does not recognize that what he wants to patent is math per se, divorced from time space, math that works only on imaginary numbers. Getting him to recognize this has been exceedingly hard. Reminds me of the “dunces” in college that simply could not hack Calculus or differential equations and became doctors instead.

  8. Les, we will agree that “natural phenomena, law of nature and abstract ideas” are not in the statute. I find it amazing that anybody serious contends that these atextual exclusions are to be found in 101.

    They are non statutory.

    I think Rich, in cleverly excluding 101 from Section 282 in drafting the new statute want to suggest to the Supreme court that patentable subject matter is a topic better handled in 102/103/112.

  9. “If one invents a new process, can one claim the machinery configured to automatically perform at least one step in that process?”

    Sure, if it’s a new machine. That’s always been the case, in every art, since the dawn of patents.

    Thing is, when your process runs on machines from ten years ago (or would if they were only faster), and when the prior art machine is Turing-complete, it’s pretty difficult to make a convincing case that you’re not just using an old machine to do something it was always capable of doing.

  10. But the method of Deener transformed matter regardless that it was performed by a human.

    I have been careful to limit my comments on this topic to claims that do not pass the MOT in the first instance. If a mental step or law of nature or some such is actually used to modify a physical step, then the claim passes the MOT and is patent eligible.

  11. That is the question …and that is essentially the question before the court in Alappat. If one invents a new process, can one claim the machinery configured to automatically perform at least one step in that process?

  12. Night, machine performing …

    Read your own words. Read them, by God.

    There is a difference between a machine and the machine doing something. One is apparatus that is capable of doing something. The other is a process.

  13. Night, regarding “All of EE can be reduced to A/D converters, a few fundamental components, and sensors with a general purpose computer doing all the reset. With your view of the world all the EE patens go away. Did you ever think of that?”

    Really? I have been consistently point out the patentability of methods that can be implemented on any of computers or circuits or the like. When the invention is independent of hardware, but transforms information representing physical phenomena, the invention is a process.

    Inventions related to computers, to circuits, to sensors, and everything like that, remain patentable. It is just that the invention of a circuit does not entitle one to claim all circuits/computers or brain implementations that can achieve the same result. There is a real difference between the improved circuit and a process.

  14. Night, when you say “Information takes time, energy, and space to transform. Information is being transform by the machine that performs the method,” I agree with you. I have given numerous examples of the kind of subject matter that clearly transforms information signals from one state to another. The only question we have is the form of the claim, and whether a programmed computer is patentable if it is part of a disclosed process that transforms signals.

    But when you say the Bilksi claims are patentable, you push the envelope, n’est pas? There were no machines involved in the Bilski claims.

  15. I do not see misrepresentations of any sort from Anon.

    Why should anyone care what you see? You’ve never posted here before and your comment is nothing but the usual sockpuppet ranting about another commenter.

  16. Night, you are of course right that the reason Congress did not ban BMPs is probably for the same reason the Supreme Court chose not to ban them: there was no clear definition of where BMP began and ended. Many briefs to the Supreme Court, and a lot of case law, said that while methods of doing business were not the stuff of patents, the technology that enables business is. Where is the dividing line?

    So, unless one is sure of a dividing line, best be careful. Both Congress and the Supreme Court are being careful.

    But, that does not mean or suggest that either the Supreme Court or Congress view BM to be within the Useful Arts. Quite to the contrary, that.

  17. “They do not care even if their Shilling is effective or not.

    They are here to Shill.”

    Protip: If they don’t care whether what they’re doing is successful, they’re actually doing some other thing.

  18. sockie, please see the following:

    Les 1:08 pm October 25:

    The Supremes got it wrong.

    Please prove that you aren’t a hypocrite
    (in addition to being a toxic blogtrxll) and start needling Les with your usual self-righteous baloney about following “the law”. Thanks.

  19. Shilly Willy: Those who Shill, do so relentlessly and do not … care for the law,

    Please see the following:

    Les 1:08 pm October 25:

    The Supremes got it wrong.

    Sockpuppets, please prove that you aren’t hypocrites and start needling Les with your usual worthless comments. Thanks.

  20. Les 1:08 pm October 25

    The Supremes got it wrong.

    Sockpuppets, please prove that you aren’t hypocrites and start needling Les with your usual worthless comments. Thanks.

  21. From a patentable subject matter perspective (35 USC 101), there was nothing wrong with the claims in Bilski. The Supremes got it wrong.

    What? The Supreme Court got a case wrong?????????!?!??!?!!??!?!?! Oh, heavens!!! The sockpuppets are going to come after you now, Les!!!!! The Supreme Court got a case wrong?!???! Wow. Just wow. You are in for a shxtstxrm, Les, because the sockpuppets simply do not allow people to ignore the law around here. And by all means stay away from Quinn’s blog. He’ll ban you immediately. The dude does not abide such blatant ignorance. Here come the sockpuppets, Les!!!

    [crickets]

  22. He has constantly slipped back into his agenda

    What is Ned’s “agenda”, sockie, and what aspect of Ned’s “agenda” frightens you so? As Ned has noted, we disagree about a great deal of things but somehow he and I manage to avoid the worthless exchanges that seem to inevitably occur when you, AI, or one of your other pseudonyms attempts to “discuss” anything. I say “somehow” out of kindness to you. I know exactly where the problem lies.

    As others have entreated, why not just return to your haven and stop stinking up this place with your incessant dxckheadedness.

  23. What Ned is neglecting to say is that because this is “nontextual”, which is also known as judicial exception or judicial doctrine. It means the SCOTUS should apply this only very rarely and with only the utmost need. And, since Congress did not exclude business methods and business methods have been eligible for patentability for a long time prior to the passage of the AIA that the SCOTUS should not under the current circumstances exclude business methods. It would be completely inappropriate.

    But, ole Ned there made it sound like Congress is going to rid him of business methods and the SCOTUS would just be doing Congress a favor. That way of thinking is not our system of governance.

    But, think whenever you read any of these arguments that the standard is that business methods are patent eligible and to exclude them would require the utmost need and the SCOTUS should apply exclusions as narrowly as possible. The SCOTUS is essentially acting like legislators when they do this and as such have to do it only when absolutely necessary and only in the narrowest way possible.

    Unless of course that one makes the constituion argument, but that does not appear to fly since the SCOTUS had Bilski in front of it and did not so rule.

  24. at the same time, expressly exclude business methods as well.

    A concession – of sorts.

    Ned, you are inching towards the light.

  25. Dear Canadian,

    I am afraid it is you that is reading past Ned’s views. Granted, the reading you would attribute is what a reasonable person would hold, but as you have read Ned’s rants, you would realize that he is anything but reasonable.

    So, I am afraid that Ned does not mean “but IS NOT THE EXCLUSIVE TEST. ” as you suggest. He has constantly slipped back into his agenda and pushed a meaning contrary to the one you and I would take. It is not merely enough that MOT is a clue, MOT is a requirement. Severla people have asked Ned to identify once and for all the legal basis of elevating this clue to his Shilled “requirement,” and he has steadfastfully refused to address the issue – either by once and for stating the actual legal basis of his position, or by surrendering that position as not legally supported.

    I wish he did mean that. I really do. I wish he would be clear and answer the questions put to him. I really do. You are not the only getting tired of Ned’s antics.

  26. James, and I might add that the exclusions (conditions of patent eligibility, not of patentability) of ” phenomena of nature, laws of nature and abstract ideas” is nowhere to be found in the statutes. Like double patenting, it is atextual. But, recently, of the professor posters here, IIRC, argued that Congress missed a great opportunity in the AIA to enact these exclusions into the statutory framework, and perhaps, at the same time, expressly exclude business methods as well.

  27. a cheap shot

    LOL. Because it is so unfair to expect Medicare recipients (at least those who aren’t in a coma) to understand that Medicare is a Federal program.

    Everything I said about proponents of software patenting is true. I’d love to discuss the distinction between, on one hand, CD players that behave in particular ways and have objectively distinct functionalities only because they comprise different CDs, and, on the other hand, computers that behave in particular ways and have objectively distinct functionalities only because they have comprise different software. I’d be happy to be discuss the issues with any non-sockpuppet commenter but not, of course, with Les, NWPA or AI because they are too dishonest and, quite frankly, too ignorant to carry on the conversation.

    Maybe Alun Palmer will return to pick up where he left off.

  28. From a patentable subject matter perspective (35 USC 101), there was nothing wrong with the claims in Bilski. The Supremes got it wrong. They kept confusing the issue with novelty and non- obviousness, which their guts seemed to tell them the Bilski claims did not meet. They wanted to reject because of obviousness (“isn’t this just hedging”?) and they made up some nonsense about undefined “abstractness”, which isn’t in the statute, in order to justify a finding against…

  29. “They are.”

    You guys probably thought that info processing methods where eligible for patenting.

    Nope.

    Just Chuck Testa.

    link to youtube.com

    Now I know why you guys keep thinking that info processing methods are patent eligible. You guys took em to Chuck Testa.

  30. MM Said: “The proponents of software patents remind me a lot of those strange white people who marched into public meetings not so long ago and demanded that the Federal government stay out of Medicare: simple-minded, obnoxious, and so invested in their ideology that they are completely unable to comprehend how confused they are and unable to coherently address any criticism directed at their inane ramblings.”

    Nice, take an unrelated subject and throw a cheap shot at a group of people who voiced their opinions as citizens of your country. I do not know who they were, but your condescending tone says it all about you. Doooooschhhy

  31. Anon, Ned.
    It is getting rather frustrating reading you two.

    Sometimes there is genuine disagreement and I do not mind seeing such (although the implied insults within the “civility” and direct insults are tiresome).

    However, much of the time, like here, you are simply reading past each other and not realizing that neither has understood what the other is saying.

    Ned said that the MOT was “the proper, if not exclusive” test. By this he meant it was an appropriate test that gives important clues, but IS NOT THE EXCLUSIVE TEST. Therefore, it is proper, but not exclusive. I understand how you, anon, might misread this as implying that the MOT might be the exclusive test, but that is clearly not what he is saying if you have read his other posts and even just the quotations Ned provided in this thread.

    For example, Ned quoted the following “Third, while the machine-or-transformation test has always been a “useful and important clue,” it has never been the “sole test” for determining patentability.”

    This was what you criticized and wanted him to admit. He never meant otherwise.

    This misreading of one another’s words happens time and time again. I respect that you both keep posting despite it. But maybe try a little harder to understand.

    If either or both of you are just arguing for the sake of it. Or as that one poster says (or one of their names at least) you are just “shilling”, then by all means carry on.

    It seems to me you are actually both trying however. If so, make an effort to drop the immediate, unreasoned bias (reasoned bias – not a problem with me) against what each other posts and I/we can get back to reading your interesting discussions.

  32. “That you are challenged by the computer and thus trying to put it down.”

    Well they’re sure better than you, is that the reason you want to own them as property?

  33. There is no stopping the games. There is no stopping the nonsense. Those who Shill, do so relentlessly and do not care for the facts, do not care for the law, do not care for any type of actual discussion. They do not care even if their Shilling is effective or not.

    They are here to Shill. That is all.

  34. I do not see misrepresentations of any sort from Anon.

    None.

    If you see misrepresentations, perhaps you can highlight a few. Ulp! – that would mean that you would be giving answers of a sort, and well, we won’t be seeing that anytime soon….

    And it is really hard to see the asking of questions (which is the only constant) getting in the way of you answering those questions. Yes, I can see why that would be difficult. (???)

    Ned, this is just another BS line in a long line of BS from you. You are just full of BS and only have BS to offer. You are prevented from answering the questions that have been put to you repeatedly? I just cannot see it and I am getting tired of seeing your same CRRP games while you indigently call out for control of posting. The control needed is to screen out all the BS games, starting with you.

    Every time I look at the exchange between Anon and you I see Anon pursing a legitimate course of legal discussion and you throwing out your view and then evading ANY discussion. EVERY TIME. WITHOUT FAIL. It is you playing the games OVER AND OVER.

  35. TAG FIX try2

    Anon is a jerk because you don’t answer questions and he calls you out for it?

    What adjective, then, should be reserved for you?

  36. TAG FIX

    Anon is a jerk because you don’t answer questions and he calls you out for it?

    What adjective, then, should be reserved for you?

  37. in In re Alappat. But I’m not so sure that is good law anymore

    As noted in this thread, the CAFC, at the direction of the Supreme Court, has taken on the task of redefining this jurisprdence.

    Per the decision in Ultramercial, Alappat AND ESPECIALLY THIS POINT IN ALAPPAT have been reconfirmed as good law.

    As so many suggest, DEAL WITH IT.

  38. So, if the sole novelty in the claim

    This CRRP seeps in at every chance – there is no such “sole novelty of a claim” in a 101 analysis. To do such is to impermissibly parse the claim. To do so is to impermissibly conflate the 101 analysis with 102/103.

    STOP THE GAMES

  39. They seem to think that patenting the equation is the same thing as a real process that converts mass into energy, a process that we know exists in stars, but do not know how to do in any practical apparatus.

    Uranium goes in, electricity comes out. You can’t explain that.

    Okay, maybe “practical” is stretching it a bit, but if Rube Goldberg ever fancies a cup of tea…

  40. All of EE can be reduced to A/D converters, a few fundamental components, and sensors with a general purpose computer doing all the reset. With your view of the world all the EE patens go away. Did you ever think of that?

    If that’s all there is to the entire field, maybe all those patents should go away. Did you ever think of that?

  41. You continue to repeat what the current law is as if the fact that it IS makes it right. I am not arguing with you about what the law is. Im pointing out that the current law is absurd and unfair.

  42. Actually, I figured out what you remind me of MM, the birthers. You keep saying that information processing methods have no transformation, but they do. They transform information that requires space, time, and energy. But, because the average person has trouble with this concept you just keep pushing it.

    Donald “MM” Trump, the monkey.

  43. The math of thinking Ned? The point is that just as in Deener an information processing method is independent of the machine that is used to perform it. Whether it be a computer or a brain. Whether or not a brain performing the method should count as infringement is a policy question. The method in Deener could be performed by a human body.

    That is the point. Abstract method? What exactly is that? If it is enabled and one skilled in the art can perform the method, how is it abstract?

  44. And, MM, you are such a dope. You want to continue to try and say that a geneneral purpose computer is like a music player and computer programs like music. Sure buddy. And the Church Turing thesis is nonsense. I get the feeling MM the problem you have is the sense that the computer is better than you are. That you are challenged by the computer and thus trying to put it down.

    You know, it is interesting your reaction because that was the same reasction people had when machines become better at physical tasks than humans. Get over it MM. Move on.

    One different MM is that the music is not operating on represented information is it? So, there is no memory that the music then instructs the music player to examine and then take different action according to what is in the repreented informtion? Nor does the music player instruct that represetned information be transformed in particular ways.

    But, of course, the troll that you are will never respond to these objections to your argument in a substantive manner. No quality argument from you.

  45. >>According to the MOT, a process that transforms an input to >>produce a transformed output is patentable subject matter. >>From In re Schrader

    And there you go. So, represented information is transformed. That means that all information processing methods are eligible as they are acting on represented infomration and performing transfomrations. One cannot say the representation in the computer memory has to be an outside physical object to count as a transofrmation. That is elementary school physics.

    Sorry boys, it takes time, energy,and space to transform information. (Although, MM, because I am afraid you will go postal, you are free to continue to believe that all information is processed by angels spinning on the top of pins.)

  46. >>So, if the sole novelty in the claim is in the mathematical >>algorithm that is executed on a computer, can one claim the >>programmed computer per se where the disclosed, but >>unclaimed, physical application is in the process?

    So, if the sole novelty in the claim is in the method of processing grain that is executed by machines, can one claim the machines configured to perform the method?

  47. Strong argument? It was not me who insisted that abstract processes can be patented. You did that, even after both MM and I asked you for confirmation.

    If there is anything that Bilski reaffirmed is that abstract processes are not patentable subject matter.

    Math or thinking (mental steps) applied to physical signals or steps to produce modified physical signals or steps is the stuff of patents. The math or thinking itself cannot be patented.

    You might try reading the government brief in Prometheus. Also see the quote from Curtis in this thread. Also see the quote from In re Shrader in this thread.

  48. Let’s face it Ned, what it comes down to is you looking at a machine that is performing a useful task and saying that there is a magical machine. It has captured nature and is abstract. Insane.

  49. It really is odd that you guys just cannot accept that an informatin procesing method can be carried out by a general purpose computer, but at a heavy cost in performance. The information processing method is better performed by a machien build to carry out that information processing method. The general purpose computer is indeed quite an invention that can simulate other machines at a heavy cost in time and space and energy.

    You guys just don’t want information processing methods to be eligible for patentability just as in Walker and you will spend endless time trying to get your way. Really is remarkable just how powerfully horrible Benson is.

  50. Are Ned and MM the same entity? They both fall back on childish name calling and personal attacks when confronted with a strong argument….

  51. Ned, all of this comes down to you wanting to say that information processing methods are not eligible for patentability. They are.

    Information takes time, energy, and space to transform. Information is being transform by the machine that performs the method.

    What have you against information processing methods? If an physical object is represented in memory and then the representation is transformed and courts say that counts as a transformation, then all information transformed in the computer memory is a transformation.

    All of EE can be reduced to A/D converters, a few fundamental components, and sensors with a general purpose computer doing all the reset. With your view of the world all the EE patens go away. Did you ever think of that?

    Really, it is incredible that you waste years and billions of dollars trying to push forth policy arguments to exclude machiens and processes that are clearly patent eligible for policy reasons. Go to Congress and get out of the courts.

    Who says there was anything wrong with Bilski’s claims? The standard should have been whether or not Bilski was entitled to the scope of the claims.

  52. And this is for all you extremists, if a programmed computer is patentable subject matter, is it your position that the only thing wrong with the Bilski claims is that they were recited as a process and not as a programmed computer?

  53. Anon, It is because of your constant, and I mean constant, misreprepresentations and other lying behavior of yours that prevents me from even attempting to engage in any meaningful dialog with you.

  54. Proposition by Night: a programmed computer is patentable subject matter if the specification discloses a patentable process that employs the programmed computer in transforming physical signals.

    According to the MOT, a process that transforms an input to produce a transformed output is patentable subject matter. From In re Schrader, “The claims in Arrythmia involved the manipulation of electrical signals and data representative of human cardiac activity; it was held that they recited patentable subject matter. 958 F.2d at 1053, 22 USPQ2d at 1033. For purposes of Section 101, the claims were indistinguishable from the claims involving the manipulation of data representing CAT scan images held patentable in In re Abele, 684 F.2d 902, 214 USPQ 682 (CCPA 1982); or the claims involving the manipulation of signals representative of reflected seismic energy held patentable in In re Taner, 681 F.2d 787, 214 USPQ 678 (CCPA 1982).

    These claims all involved the transformation or conversion of subject matter representative of or constituting physical activity or objects. In Arrythmia, it was electrocardiograph signals representative of human cardiac activity; in Abele, it was X-ray attenuation data representative of CAT scan images of physical objects; and in Taner,it was seismic reflection signals representative of discontinuities below the earth’s surface. Schrader’s claims, except for incidental changes to a “record,” do not reflect any transformation or conversion of subject matter representative of or constituting physical activity or objects.” link to digital-law-online.info

    So, if the sole novelty in the claim is in the mathematical algorithm that is executed on a computer, can one claim the programmed computer per se where the disclosed, but unclaimed, physical application is in the process?

    (Actually, I think they did, in In re Alappat. But I’m not so sure that is good law anymore.)

  55. If you simply stop fighting it

    Sort of like the “stop fighting” that accompanies the gamesmanship surrounding Diehr and Bilksi, correct? That accompanies Ultramercial and now Alappat reaffirmed post-Bilski?

    6, sort of like that “stop fighting?”

    Funny isn’t it how so much like MM’s advice of “Deal with it” this sounds from a viewpoint that isn’t law and does not have the facts to support the position. And much like Ned’s drawn swords – the game here is to simply claim victory and hope the other side doesn’t say anything. There is simply no intellectual honesty from this camp. None.

    Don’t you guys realize how weak an argument this is?

  56. Another dissent view posed as the rule of law… (sigh).

    Ned, Ned, Ned, When will you learn?

    And for Malcolm, the phrase is simply: “Scoreboard“.

    Those few points scored in August seem like so long ago now.

    Ultramercial” is a huge setback for the anti-software patent crowd, as it (rightfully) both reinforces the holding (sorry Ned – that was a holding) of Alappat and (rightfully) acknowledges the simple fact that programming is just like any other “physical” component of a machine.

    Malcolm and his patent-creationist stand can only pound their tables as the law and the facts speak against their views. Tables so worn thin from the pounding as to be like paper.

  57. Ned,

    You cannot be serious as to think that a two person minority view has the same force of law (has any effective force of law) as a majority view.

    Do you really think so?

    I am not sure why you think it effective to bring out such a weak point. Do you not realize that this two-person view actually works against you? You seem to have this legal reasoning flaw with your penchant for minority views.

  58. Deal with it.

    Funny advice coming from someone who obviously cannot Deal with it.

    [table pounding to ensue]

  59. MM,

    Law on your side…? No.
    Facts on your side…? No.

    Well, you can pound your table – and here we go again.

  60. Hey Ned:

    What is the reason the PTO is situated under the Commerce Department?

  61. with drawn swords

    Just like you Ned to come to a gun fight with a sword.

    Good luck with that

  62. Oh well in that case I bow to your victory sir. Strange that the USSC didn’t simply point out that all Benson needed to do was say that his information processing method was like grain, or indeed, the very same as processing grain. If only the USSC had been made aware of this crucial factor we could have avoided this whole discussion!

    /sarcasm

    “What was that case where something was represented in a computer memory then worked on and then output and it was held to be a transformation in the MOT sense?”

    You mean that case from your patent protectionist/expansionist inferior court? That one? I’m just not sure which one you’re talking about, could you be more specific?

    Dam my sarcasm key keeps getting stuck.

  63. Ken, imagine yourself a judge who can only apply the law. Unless what Congress did was unconstitutional, you must apply the law. You have no option.

    So regardless of one’s private intention, failure to include best mode is statutorily excluded from validity. Period.

    Regarding unclean hands, one would, I believe, have to prove something really nasty before a court would kick you out of court. That’s just my opinion.

  64. From Curtis, preliminary observations, xxviii-xxix:

    “It is apparent, then, that the mere novel arrangement
    of matter, irrespective of the purpose and effect accomplished
    by such arrangement through the agency of natural
    forces or laws, or the properties of matter, is not the
    whole of invention; but that the purpose; effect, or result,
    and the application of the law, force, or property by menns
    of which it is produced, are embraced in the complex idea
    of invention, and give the subject of the invention its peculiar
    character or essence. And if this is true, it is easy,and
    as correct as it is easy, – to advance to the position
    that the discovery and application of a new force or law of
    nature, as a means of producing an effect or result in matter
    never before produced, may in some cases be the subject
    of a patentable invention. When it has been laid
    down that a ” principle,” – meaning by this use of the term
    a law of nature, or a general property of matter, or rule of
    abstract science, – cannot be the subject of a patent, the
    doctrine, rightly understood, asserts only that a law, property,
    or rule cannot, in the abstract, be appropriated by
    any man; but if an inventor or discoverer for the first time
    produces an effect or result, practically, by the application
    of a law, he may so far appropriate that law, as to be entitled
    to say, that whoever applies the same law to produce
    the same effect or result, however the means, apparatus,
    forms, or arrangements of matter may be varied, practises
    or makes use of his invention, unless the variation of means,
    apparatus, method, form, or arrangement of matter introduces
    some new law, or creates some new characteristic,
    which produces or constitutes a substa~tially different result.
    For, in all such cases, the peculiarity of the invention
    consists in the effect produced by the application of the
    natural law, as an agent; and this effect is not changed by
    the use of different vehicles for the action of the agent,
    provided there is still the same agent operating substantially
    in the same way, to produce substantially the same
    effect or result.”

  65. James, the Supreme Court, in Diehr, references the predecessor statute, Section 4886 of the Act of 1874. That section reads,

    “SECTION 4886. Any person who has invented or discovered
    auy new and useful art, machinc, manufacture or composition
    of matter, or any new and useful improvement thereof, not
    known or used by others in this country, and not patented or
    described in any printed publication in this or any foreign
    country, before his invention or discovery thereof, and not in
    public use or on sale for more than two years prior to his application,
    unless the same is proved to have becn abandoned,
    may, upon payment of the fees required by law, and other
    due proceedings had, obtain a patent therefor. [See prior
    patent statutes: Section 24, 1870; Sections 6 and 7, 1836 ;.
    Section 1, 1800; Section 1, 1793.]”

    So, it looks like the 1952 update, authored by Rich, may have had a scrivener’s error. Or was the specific reference to Conditions for Patentability intended by Rich to remove the whole topic of patentable subject matter from validity? Knowing his subsequent attitude on the topic, shared by his minion Rader, I think Rich fully intended that 101 not be included in 282 (2).

    Just for example, read his opinions on double patenting. He does not refer to Section 101, but to a-textual Supreme Court opinions that do not reference 101 or any prior statute at all. They reference instead the Constitutional provision about “limited times.” Clearly, Rich did not believe that 101 set forth conditions for patentability.

    In fact, if you look to the Supreme Court cases on patentable subject matter, they too generally reference general principles garnered from case law. See the line of cases going from Benson to Funk Bros., to The Telephone cases, and backwards. Indeed, they all may be following Curtis on patents, which I quote from below.

    Unfortunately for him, the Supreme Court in dicta may have decided the issue by suggesting that the new act did not intend to change the existing law on which topics were subject to validity.

    That being said, the statutory language is clear on its face. It requires some gloss to read out of it the very clear language I quoted.

  66. I was talking about Les who absolutely insists that abstract subject matter can be patented.

    You, Night, have always insistent that there be a real transformation in data, in the sense that the entropy of real signals is reduced. We are discussing, I believe, how to claim this subject matter, which we agree should be patentable.

  67. Ned don’t be ridiculous. Do you really think that is my position? Or are you baiting and misrepresenting?

    One danger of monkeying around with MM is that your IQ drops and your humanity disappears.

  68. What is funny is that Ned and MM appear to be trying to make some great case against information processing, but in the process what they have really done is bring out many arguments that illustrate very well that they are wrong. Had they just shut up all these great arguments probably wouldn’t have been brought out.

    One reading through this is not going to take your side MM, 6, and Ned.

  69. 6 in Deener there are no machines recited. It is a method of processing grains. Information processing methods are the same. They are methods of transforming information. The structure is in how the information is transformed.

    What was that case where something was represented in a computer memory then worked on and then output and it was held to be a transformation in the MOT sense? That case pretty much proves my point and the Cybersource three went against that case.

    MM, those CD examples are lame and have been refuted over and over. Face it represented information is being transformed.

    Face it boys, you lose. Represented information is like the grains in Deener.

  70. One is clearly technical, the other is clearly of the liberal arts!

    Thanks for proving the case against your position!

    Nice try, AI.

  71. That’s an interesting argument, Ned, but no dice. Existing § 282 uses the same language, and the Federal Circuit has been pretty adamant that satisfying § 101 is nonetheless a condition for patentability. “It has long been understood that the Patent Act sets out the conditions for patentability in three sections: sections 101, 102, and 103.” Aristocrat Technologies Australia PTY Limited v. Intern. Game Technology, 543 F. 3d 657, 661 (Fed. Cir. 2008) (citing Graham v. John Deere, 383 U.S. 1, 12 (1966)).

  72. I still submit that if the failure to describe the best mode amounts to a fraud on the public then the patent could be held to be invalid. In short, I believe that the patent act did was to vitiate accidental omission of best mode as a means of invalidating a patent. I believe that if an inventor intentionally omits best mode with the subjective intent of slowing down competition that is prima facie fraud and grounds for invalidating a patent.

  73. Sock puppets declare as their last troops are cleared from the battlements and the enemy surrounds their persons with drawn swords, “You guys don’t have a chance. Better surrender now before it is too late.”

  74. Malcolm, while you and I will vigorously discuss with each other nuances of this topic, we both seem to understand the fundamentals.

    So I do find in interesting that many, including Les, apparently are unwilling to accept the fundamentals. There is a difference between the representation of a phenomena using E=MCsquared and actually converting mass into energy. They seem to think that patenting the equation is the same thing as a real process that converts mass into energy, a process that we know exists in stars, but do not know how to do in any practical apparatus. Thus, in their minds, Einstein would have been entitled to patent the conversion before anyone discovered how to make it practicable.

    Once upon a time, I was bemused by some lawyers who confused title in a copy and title to a copyright, or who could not distinguish between the title to a car and the car itself. Les might be one of these.

    But at times, it pays to be less than accurate, every pun intended. When evading customs duties on software, it is common to declare the value of the software to be the cost of the blank disk on which it is encoded. It appears Les might be in the business of selling vaporware.

  75. Those types of controls, though my dear Micky Mouse, are the types of innovations that deserve patent protection – as opposed to the music itself.

    One is clearly technical, the other is clearly of the liberal arts!

    Thanks for proving the case against your position!

  76. Isn’t this from the same guy that thought that bilski was going to be that very whole bowl coming the way for the Diehrbots?

    How did that work out for you?

    (What’s the phrase? Look up at the scoreboard?)

  77. Like moving the Abacus bead in response to a position of another bead in another column being in a certain position?

    Certainly, this does tie the method to a specific implementation.

    I haven’t read the claims in Benson, but had they emphasized the claim with the shifter and this argument, they might well have prevailed.

    But, that was not their business objective, was it?

  78. Question:
    If that were the case, then why did not more justices actually sign up to their view of the matter?

    Answer:
    Because they did not believe what the two were actually saying – not even the others on the same side of four as the two would sign that drivel!

  79. Note, Breyer and Scalia were discussing points of agreement of all nine justices:

    “I write separately, however, in order to highlight the substantial agreement among many Members of the Court on many of the fundamental issues of patent law raised by this case. In light of the need for clarity and settled law in this highly technical area, I think it appropriate to do so.

    “It is my view that the following four points are consistent with both the opinion of the Court and Justice STEVENS’ opinion concurring in the judgment.”

    Among the points discussed by Breyer, of course, is that all nine agree that the MOT is not exclusive. But they all agree that it is important and, in the words of Breyer, ‘[T]he Court intends neither to de-emphasize the test’s usefulness nor to suggest that many patentable processes lie beyond its reach.’”

  80. the music CD does not control the operation of the record player.

    Of course it does. The CD “controls” when the CD player stops spinning the disc. That can occur immediately after the music ends or it can occur long after. It “controls” whether the CD player displays 25 tracks or just one, and when those track number are displayed (regardless of how many different “songs” the CD encodes). And of course it “controls” what music is played.

    if it included instructions to jump between tracks out of sequence or play them backwards without resorting to the manual controls, you might have a true anaology.

    One could easily make a CD player that recognized certain instructions, e.g., when encoded as musical “cues”. In fact, I just did. So if I put a CD of ocean waves into my CD player is it a “new machine” relative to the my CD player comprising a CD with cookie monster metal? Or is it necessary for the CD to contain those musical cues that instruct my CD player to play music backwards in order for my CD player to be a “new” machine relative to the same player with an ocean wave machine in it? Seems just a tad arbitrary. What’s so critical about “playing a track out of sequence”?

    The bottom line, Alun, is that your entire “rebuttal” of my statement about the two different CD machines just attempts to shift the question of what is a “new machine” to a discussion about when a component of a machine substantially “controls” the machine’s behavior. This is the “dishonesty and/or goalpost moving” I was talking about. In fact, a “programmed computer” includes computers that do far less substantial activities than those performed by a CD player with a CD in it. Deal with it.

  81. AI, Breyer concludes, "In sum, it is my view that, in reemphasizing that the "machine-or-transformation" test is not necessarily the sole test of patentability, the Court intends neither to de-emphasize the test's usefulness nor to suggest that many patentable processes lie beyond its reach."

  82. “In contrast, knowing how much energy can be produced from a given mass is abstract.”

    No its not. But even if it were, so what?

    Further more, the claim I referred to was not directed to mere knowing, it was directed to a method of determining. Also, not abstract…instead, a particular solution to a particular problem.

  83. What you fail to see, my dear Mickey Mouse (is that not what MM stands for?) is that the music C does not control the operation of the record player. Now, if it included instructions to jump between tracks out of sequence or play them backwards without resorting to the manual controls, you might have a true anaology.

  84. Except it does – See Alappat. See Ultramercial.

    LOL. It’s easy to imagine sockie the sockpuppet back in 1858 holding up the Dredd Scott decision and righteously telling his once-free slaves, “See – you ARE my property! Now stop all this talk about rights and such.”

    the very fundamental basis of the court’s error

    Fixed.

    And let’s face it: you thought Bilski’s claim was eligible for patenting, too, according to your precious case law. Guess what? You were wrong. I was right. I hope you liked that spoonful from the Supremes because you’ve got a whole bowl coming your way soon.

  85. such configuration does not necessarily and unambiguously convert the old machine into a new machine for patentability purposes.

    Except it does – See Alappat. See Ultramercial.

    When you cannot see the very fundamental basis of your error, what hope is there that you will understand the subject?

  86. Please do not misrepresent a two-person minority view as having the effect on par with the majority (all nine) view that I gave to you.

    I tire of your silly games. At least try to think of something that will take me more than two seconds to shoot it down as an improper proposition of law.

  87. I see no reason that it need to be applied to a physical process.

    More accurately, Les is incapable of seeing any reason to deny patents to new mental processes. He’s a genuine pxtxnt txxbxgger.

    You’ve been warned, Ned.

  88. Les, converting mass to energy and energy to mass certainly is transformative.  

    In contrast, knowing how much energy can be produced from a given mass is abstract.

    But, now we get to the hard point, do we not?  Can we re-patent the measurement of mass if we add on the mental knowing step?

  89. Ned: “Diehr finally resolved the confusion by simply stating that the MOT was the proper, if not the exclusive, test.”

    No Ned, this is not correct.

    You are stating a falsehood, a known lie.

    You can’t provide that exact quote.

    Ned: “It appears that the Bilski court continued with the Diehr understanding and limitation on Benson.”

    Since what you claim is ” the Diehr understanding” is false, it can’t be the correct reason for the limitation ( cabining) of Benson either.

    Ned, please stop trying to twist the law to your own agenda.

  90. sockpuppet geek: The very essence of “programmed to” means that the change has taken place (otherwise, you would no thave your “programmed to”).

    Of course, as time passes the 2nd Law of Thermodynamics ensures that all machines will decay and their functionality will change in measurable ways, provided that we measure accurately enough. Thus, every machine as it exists in now is “new” relative to itself, as it existed moments earlier. Does that make sense to you? I hope not. It is, however, just as sensical as the lame argument you just floated.

    “Programmed to” for a computer is equivalent to “configured to” for a machine. If an old machine is “configured” to do something characterized as “new”, such configuration does not necessarily and unambiguously convert the old machine into a new machine for patentability purposes. The structure of the machine is unchanged, i.e., the computer is still a computer. The CD player comprising a disc consisting of 60 minutes of barely audible ocean waves is identical, for patenting purposes, to a CD player with a disc comprising 60 minutes of cookie monster metal recorded in the red. This is uncontroversial, regardless of the indisputable fact that the functions of the two machines are completely different, as may be demonstrated scientifically by turning on the machines in numerous different environments.

    Attempts to distinguish “programmed” computers from this situation inevitably require dishonesty and/or goalpost moving. The belief that programmed computers are “new” machines and must be considered as such by patent law is invariably rooted in self-interest. The primary proponents of the view are patent trolls/programmers/lawyers who are invested in manipulating the patent system for their personal benefit. The evidence that patents on new computer programs is necessary to promote the development of computer programs is non-existent. Information processing is the only area of patent law where one can find many (most) patent attorneys and practitioners who work in the relevant field who disapprove of the granting of such patents, even though such patents are alleged by their proponents to be critical for the survival of the technology.

    The proponents of software patents remind me a lot of those strange white people who marched into public meetings not so long ago and demanded that the Federal government stay out of Medicare: simple-minded, obnoxious, and so invested in their ideology that they are completely unable to comprehend how confused they are and unable to coherently address any criticism directed at their inane ramblings.

  91. Ned – We are in agreement, I think. Where we might disagree is, I see no reason that it need to be applied to a physical process. It is enough that AE teach us a method to calculate the Energy equivalent of mass comprises:
    determining the mass amount;
    multiplying the mass about by the speed of light squared, thereby determining the energy equivalent of the mass.

  92. There is nothing abstract about mathematical equations.

    Poetry is abstract

    Art is abstract

    The meaning of life is abstract.

    Mathematical equation have a solution, and if you don’t know it, you fail.

  93. 6, thanks.  I know the shift register is used as part of the calculation.  In truth, it is substitute for multiplication or division as shifting a value by 1 position is effectively a multiplication or division by 2. (One has to deal, of course, with the carry.)

  94. Les, “If your claim can be construed to read on a mental step …it is unpatentable.”

    I daresay, if this were what the cases held, then I would agree with you. But the Court always said a application of a law of nature or abstract idea to a physical process could be patentable. What does this mean? I think it means what I said it to mean in my earlier post. The mental step must modify a physical step in some substantial way. Thus the mere presence of a mental step will not necessary render unpatentable a process claim. But it will if the mental step is the only thing new and it does not modify a physical step.

  95. “as the shifter is an applied multiplication step”

    A “shifter” (aka a shift register) is an applied multiplication step? Hmmmm, I thought it was some hardware. I also think you’re a tard. Possibly an Actual Inventard.

    “The word applied is critical”

    Oh really, and why is it critical?

    “and takes this from a pure math world to an applied math world and applied math is (and should be) patent eligible”

    Says whom?

  96. Breyer and Scalia:

    “In addition to the Court’s unanimous agreement that the claims at issue here are unpatentable abstract ideas, it is my view that the following four points are consistent with both the opinion of the Court and Justice STEVENS’ opinion concurring in the judgment:

    “Second, in a series of cases that extend back over a century, the Court has stated that “[t]ransformation and reduction of an article to a different state or thing is the clue to the patentability of a process claim that does not include particular machines.” Diehr, supra, at 184, 101 S.Ct. 1048 (emphasis added; internal quotation marks omitted); see also, e.g., Benson, supra, at 70, 93 S.Ct. 253; Parker v. Flook, 437 U.S. 584, 588, n. 9, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Cochrane v. Deener, 94 U.S. 780, 788, 24 L.Ed. 139 (1877). Application of this test, the so-called “machine-ortransformation test,” has thus repeatedly helped the Court to determine what is “a patentable `process.’” Flook, supra, at 589, 98 S.Ct. 2522.

    “Third, while the machine-or-transformation test has always been a “useful and important clue,” it has never been the “sole test” for determining patentability. Ante, at 3227; see also ante, at 3231-3232 (STEVENS, J., concurring in judgment); …Rather, the Court has emphasized that a process claim meets the requirements of § 101 when, “considered as a whole,” it “is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing).” Diehr, supra, at 192, 101 3259*3259 S.Ct. 1048. The machine-or-transformation test is thus an important example of how a court can determine patentability under § 101, but the Federal Circuit erred in this case by treating it as the exclusive test.

    “Fourth, although the machine-or-transformation test is not the only test for patentability, this by no means indicates that anything which produces a “`useful, concrete, and tangible result,’” State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1373 (C.A.Fed.1998), is patentable. …Indeed, the introduction of the “useful, concrete, and tangible result” approach to patentability, associated with the Federal Circuit’s State Street decision, preceded the granting of patents that “ranged from the somewhat ridiculous to the truly absurd.” In re Bilski, 545 F.3d 943, 1004 (C.A.Fed.2008) (Mayer, J., dissenting) (citing patents on, inter alia, a “method of training janitors to dust and vacuum using video displays,” a “system for toilet reservations,” and a “method of using color-coded bracelets to designate dating status in order to limit `the embarrassment of rejection’”); see also Brief for Respondent 40-41, and n. 20 (listing dubious patents). To the extent that the Federal Circuit’s decision in this case rejected that approach, nothing in today’s decision should be taken as disapproving of that determination. See ante, at 3231; ante, at 3232, n. 1 (STEVENS, J., concurring in judgment).

    “In sum, it is my view that, in reemphasizing that the “machine-or-transformation” test is not necessarily the sole test of patentability, the Court intends neither to de-emphasize the test’s usefulness nor to suggest that many patentable processes lie beyond its reach.

  97. “it really depends on whether they were claiming new hardware”

    They were not. Read the claim. Read the decision. ” The mathematical procedures can be carried out in existing computers long in use, no new machinery being necessary.”

    ” or just using the shifter to masquerade as multiplication step.

    They were not.

    You obviously have not been exposed to binary math or binary to bcd conversion (which is a subsection of binary math).

    The shift register was simply used in a shifting step it was “masquerading” as anything.

    The bottom line regarding that limitation in that decision was that the limitation to a shift register did not narrow the claim in so far as its applications were concerned because every application concievable would require a shift register. In other words, tossing in a shift register didn’t modify the scope of the claim in the least in terms of what it would cover irl as opposed to what it would cover intellectually.

    Again, it is your fundamentally choosing to not take Benson’s holding at its word that is causing you issues. If you simply stop fighting it and give in to the proper interpretation everything falls into place quite nicely.

  98. In Mriad, for example, people are doing more than just thinking thoughts, they are then acting on those thoughts, so their thoughts were discovered.

    That’s nice. The asserted claims we are discussing didn’t require any actions, however.

    by their actions made it known

    LOL. All of the “actions” that follow the ineligible claims we are discussing are in the prior art or covered by the licensed/exhausted patents of third parties.

    The only party who was “busted” in Myriad was … Myriad.

    In any event, Les, your statement was false, as I indicated. Myriad asserted claims that were infringed merely by thinking about data. So did Classen. Those claims were found ineligible. But they were certainly asserted.

    You were wrong. Let it sink in Les. You were wrong. And I corrected you. Again.

  99. Night, “A circuit that performs a method is not eligible for patentability because it has some of those math symbols and then is a law of nature or anything with a math symbol is the type of thing that isn’t eligible for patentability.”

    Just to clarify, a claim to new circuitry that can perform a function is different from claiming all circuitry that can perform that function. In the one case, the claim is to the circuit. In the other, the claim is to the function. There is a difference.

    Regardless of 101, the law has since the earliest days of the Republic made this distinction. Statutes had been repeatedly crafted to constrain claims to the scope of the invention. Still the problem remains.

    Historically and even today to some extent, the courts recognize that if the invention is independent of the hardware such that it can be implemented in computers, circuits or their equivalents, the invention is to a process. On the contrary, if the process is broadly old or obvious, the invention, if anything, is in the circuitry.

    IMHO, a claim to a programmed computer is indefinite. Regardless of addressing that issue, the courts have treated such claims as claims to a process, and rightly so.

  100. You miss the point. In Mriad, for example, people are doing more than just thinking thoughts, they are then acting on those thoughts, so their thoughts were discovered. They infringed the claimed thought process (if indeed a thought process is claimed) and, by their actions made it known and were therefore busted.

    If someone invents a new, useful and non-obvious thought process, why shouldn’t it be patentable? Sounds like a new use of an old machine (une noggin)to me (see 35 USC 100).

    If your argument is that the claimed thought process is not new…well…that’s a horse of a different color.

  101. Ned -
    In case you missed it, my point was the subject rulings are absurd. Classen is no exception. If the method of the assessment is new and not obvious (e.g. the assessment of energy equivalent of a mass; i.e E=mCC), then there is no reasonable reason that method should not be patentable.

  102. Actually there is no such thing as a masquerade in this instance, as the shifter is an applied multiplication step.

    The word applied is critical and takes this from a pure math world to an applied math world and applied math is (and should be) patent eligible, if for no other reason than applied math means that a person has made a conscious decision to do something with the math tool and that is enough to be captured under what patents are for.

  103. programmed to transform the data patentable as a new machine as such a claim actually does not require any transformations to take place

    Except Archer was wrong.

    The very essence of “programmed to” means that the change has taken place (otherwise, you would no thave your “programmed to”).

    Please understand the art if you are going to speak to this subject.

  104. Les, at one time the Feds had figured it out fairly well. If the output of the abstract “steps” were functionally tied to or modified a real process step, that was sufficient to potentially create a new process.

    So, when the abstract steps do nothing more than assess or calculate data from data gathering steps, the claims are not directed to patentable subject matter. See, Classen.

    Note, updating an alarm limit is not the same thing as ringing an alarm in response to some condition. Close, but not the same.

  105. MA == a process involving at least one step that has as inputs data and as an output as data, where the step is a mathematical or logical operation.

    Did you have something else in mind?

  106. Actually, Night and I were discussing this very point. I think a claim to transformation of data from one state to another (a process) may well define patentable subject matter.

    However, that still does not make a machine programmed to transform the data patentable as a new machine as such a claim actually does not require any transformations to take place. Cf, Archer’s dissent in Alappat.

  107. It’s Les!

    No one is ever going to be sued for infringement that merely thinks the claimed thoughts.

    The apex of naivety has been reached. Les plants his flag on the summit. Congratulations!

    From the perspective of one practicing the prior art, there is no difference between being sued for “merely thinking” and being sued for practicing the prior art (perfectly legal and unpatentable) while “merely thinking” about if/when to engage in said practice.

    People have already been sued for the doing the latter. As noted (and it’s an irrefutable proposition), the defendants in such cases are, for all practical purposes, being sued “merely for thinking.”

    Claims have issued and surely will continue to issue on methods that can be infringed merely by thinking about data (i.e, the infringer does not need to produce the data). Both Classen and Myriad saw such claims obliterated by the Federal Circuit, which is surely the most friendly place on earth for poorly drafted claims.

  108. The new statute also allows the applicant to name anybody as an inventor regardless of whether he is or is not technically an inventor. This solves the political problem of naming the boss. Just do so. It will not affect the validity of the patent.

  109. “Information processing is the invention. That is why 6. ”

    Well if you persist in designating non-inventions as “the invention” then courts simply have to smack you down NWPA. It really is that simple and you know it.

    “The machine that implements the information processing is not the invention.”

    Says you…

    “There are thousands if not millions of variations of the machine to implement the information processing, but the invention is the information processing method.”

    Well then go ahead and try to claim it as an information processing method.

    “So, why is the invention excluded?”

    Probably because information processing methods, or at least the ones at issue, are inherently abstract ideas and we have a prohibition on the patenting of such?

    Fact is this NWPA, you don’t want to limit yourself to any specific application of the abstraction. That would be an invention, which you very well understand and know. But, of course, that would also allow for others to design around (like the patent system is SUPPOSEDLY supposed to allow for) and you don’t like that. That is pretty much all it boils down to. The patent system operating as it should and your simply not being happy with it.

    But hey, I’ve already offered to let you join us in the protests. To come down, and spread your propaganda right beside my own and let the people decide and then lead a little rally. As of yet you haven’t decided to come on down.

  110. Dennis, I bought your e-book. In describing new Section 321, you say,

    “New sections 321-329 define a new post grant review proceeding allows a third party to request review of recently issued patents based upon virtually any invalidity ground, including failure to satisfy the requirements of sections 101, 102, 103, or 112 (except for best mode).”

    The statute says, “under paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim).”

    Paragraphs 2 and 3 of 282(b) say,
    “(2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability.
    (3) Invalidity of the patent or any claim in suit for failure to comply with–
    (A) any requirement of sections section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or 251 held invalid or otherwise unenforceable; or
    (B) any requirement of this title,section 251.”

    Part II states (in material part)
    “100 Definitions.
    101 Inventions patentable.
    102 Conditions for patentability; novelty and loss of right
    to patent.
    103 Conditions for patentability; non-obvious subject
    matter.”

    The bottom line, reading all together, 321 is limited to

    1. Condidtions for patentability: 102/103
    2. Section 112, but not best mode; and
    3. Section 251.

    Section 101 is not included by statute. Section 251, however, is.

  111. Information processing is the invention. That is why 6. The machine that implements the information processing is not the invention. There are thousands if not millions of variations of the machine to implement the information processing, but the invention is the information processing method. So, why is the invention excluded? It does not fit the Walker fact pattern, even if one wants to live in the 1920′s.

    And you should care if MM is still a simian.

  112. Les–

    Your point raises an interesting issue regarding the sufficiency of a statement of claim, as well as all sorts of interesting evidentiary issues.

    I could envision the situation where not only could a statement of claim be found sufficient in a general sense, but also where circumstantial evidence of the required thoughts could be admitted, and be considered sufficient to sustain a finding of infringement.

    If I had such a patent I, for one, would bring suit. With a sufficient statement of claim and the resulting powers of discovery, I’d put together the best case I could, and give it a shot.

    It would essentially be no different from any other case where there is no direct evidence of infringement–more difficult, but not necessarily impossible.

  113. “because it the author thought that the “mathematical equations” were what was needed to make competiting machines.”

    Very perceptive NWPA. And I think very close to the mark. However, there is nothing “wrong” with this.

    Why is there nothing wrong with this?

    Because there is nothing wrong with this:

    ” clever patent attorneys could just design around any structural specficiation of a machine. ”

    You spout the following without any explanation:

    “This is also the core of this “abstract” business. But, this should not apply to methods of a machine which is what software, information processing methods, are.”

    And leave it to us readers to figure out why this should not apply.

    “Don’t forget: information transfomrations take space, time, and energy. Information transformations are a transformation every bit as much as what goes on in MM’s smelly test tubes. MM is still a simian.”

    ^Who cares?

  114. If you and your students are confused by Benson, Flook, Chakrabarty, Diehr, and Bilski, you can all relax. Your confusion only means that you have a firm grasp of the subject matter. The rulings taken alone or in combination are absurd.

    One case says a method is patentable because it results in the automatic opening of a door (insignificant post solution activity if ever I saw it). Another case says if you take the two wires that drive the door opening motor and instead tie them to an alarm, to notify an operator to open the door, that isn’t patentable.

    None-sense.

    All of this stems from one bad decision that resulted in an edict that states, if your claim can be interpreted as reading on mental steps, then it isn’t patentable.

    That was a flawed decision and has resulted in I don’t know how many years of bad patent law. Why shouldn’t mental steps be patentable? Why can I patent a claim that recites stirring a pot, but I can’t patent a claim that recites figuring out how long to stir? No one is ever going to be sued for infringement that merely thinks the claimed thoughts…no one would ever know they thunk the infringing thoughts…so, its silly to ban claims that read on thinking thoughts….If we had words that described what a computer does that we tend to describe with words that relate to thinking, none of this would be at issue. To make it an issue is just childish…

  115. “Night, I would agree with you that the claim that specifically included the shifter should not have been construed so broadly as the court construed the claim.”

    And why is that Ned? What meaningful limitation on the scope of the claim did that element have? Every single application of the abstract idea at issue in Benson would have required such a shifter, indeed, applicant admitted to such iirc.

    ” They did not construe the claim to cover specific hardware, but rather construed the claims broadly as to cover the mathematics. ”

    Which was wise because the claimed hardware did not affect the scope of the claim in the slightest in terms of what it would have actually covered.

  116. “This week in patent law class: Left my students confused after discussing Benson, Flook, Chakrabarty, Diehr, and Bilski. I’m somewhat confused as well.”

    What exactly confuzzled you? They’re pretty simple. I am of course available to make a guest appearance and lecture for you D.

  117. Night, I would agree with you that the claim that specifically included the shifter should not have been construed so broadly as the court construed the claim. With the shifter included, the claim it appears to have been claiming specific hardware in a computer. If it was claiming specific hardware, and not the algorithm, the claim should have passed muster.

    However, in interpreting Supreme Court cases involving patents, is important to not read into the opinion something which the Supreme Court did not say. They did not construe the claim to cover specific hardware, but rather construed the claims broadly as to cover the mathematics. That is the take away from the case.

  118. I think Walker explains Benson very well, Ned. Just throw in some 15 pages of 1920′s thinking and some goal oriented policy based reasoning and you have Benson.

    >Yet if Walker’s blanket claims be valid, no device to >clarify echo waves, now known or hereafter invented, whether >the device be an actual equivalent of Walker’s ingredient or >not, could be used in a combination such as this, during the >life of Walker’s patent.

  119. Ned, what? What Benson boils down to is the court saying that such a method shouldn’t be eligible because it could be used for other things. It is a law of nature or abstract.

    One of the claims in Benson was the actual ee circuit that performed the information processing method of Benson.

    So, how is Benson justified exactly? A circuit that performs a method is not eligible for patentability because it has some of those math symbols and then is a law of nature or anything with a math symbol is the type of thing that isn’t eligible for patentability. Nice 1920′s thinking about math symbols. Tranformation argument is 1920′s thinking about information.

    The basic idea in Benson is that the SCOTUS didn’t want methods claims that it thought would limit other from making other machines to perform the method. That is what they were up to. A policy based argument.

    With just a little thought one can see why their thinking is wrong for information processing algorithms. And, how a method of a machine plays into this. The idea should be that the information processing method is the invention and which machine is built to carry it out is secondary. The fact that there are math and symbols seems to have confused their 1920′s brains. The fact that infromation was invovled rather than a smelly chemical seems to have confused their 1920′s brains.

    Information takes time, energy, and space to transform. 5 + 1 = 6 is a transformation every bit as MM’s smelly chemicals.

  120. Rob,

    I note your comment is tagged to my “political/philosophical post, rather than to the “without deceptive intent” post, but I presume that the “without deceptive intent” is the point of your comment.

    However, whether such is a technical expansion misses the point. The point is that “deceptive intent” should never have been removed, as there is absolutely no reason why such a removal comports with any legislative intent, nor can it.

    Allowing deceptive intent simply is not defensible.

    If you say this just mirrors a change in other parts of the AIA, the question still remains why those other parts are removing something that should not be removed.

  121. the proper, if not the exclusive

    Ned,

    Please drop the “if not exclusive” tag as all nine of the justice in Bilski agreed that MOT is not the exclusive test.

    This is only one of two things that all nine agreed to, and your continued (incorrect) insertion of this point is more than annoying.

  122. I guess the change also now allows for an original patentee to engage in IC that allows for the original patent to issue with claims that are invalid (say, overbroad). Such an error could not be corrected by reissue under the old statute (presumably, even if the patent was assigned to a third party).

    Now the error could be corrected and it seems that there would be no penalty for the prior misconduct after the correction (unless the prior conduct was “egregious”?).

  123. The change to Section 251 — removing the restriction that one could seek reissue only for facts arising “without any deceptive intention” — was introduced in Section 20 of the AIA as part of technical amendments (generally necessitated by other substantive changes). Note that the supplemental examination procedure was added as Section 257, and this change to 251 was probably just intended to mirror and extend that supplemental exam provision — i.e., if we’re going to allow you to make up for real substantive inequitable conduct (including regarding novelty/obviousness issues), it would be silly to still prohibit correction of inequitable conduct in connection with technicalities, defective specs/claims, section 112 issues, etc. So this appears to be just a mirror of the new supplemental exam procedure extended to all validity/enforceability issues.

  124. Dennis, join the crowd of the confused. Judge Rich generally was confused by the Supreme Court precedent and said so. Ditto Rader.

    I personally think Benson and Flook were confusing in how they use the term “use.” After having explained that the mathematical algorithm under consideration could be “used” on a variety of apparatus to calculate the algorithm, including humans using pen and paper, it was clear that their usage of the term “use” was in the sense that these mechanisms were used as tools. But they were not used in the sense of the MOT, which they also announced as a general rule in the case, whereby a tool can be used as part of a process to produce a new result. Simply defining a tool as a use in this context is confusing.

    Thus the ultimate holding the case is confusing because they conflated the use of a tool with the end result produced by claim.

    Flook continued the confusion. Diehr finally resolved the confusion by simply stating that the MOT was the proper, if not the exclusive, test. It appears that the Bilski court continued with the Diehr understanding and limitation on Benson. Benson really was about the MOT, and that the problem with the Benson claim, as is clear from the Bilski court’s description of Benson, was that it did not produce a new result, but rather simply claimed the calculation per se, numbers and the numbers out. So understood, the computer of Benson was simply a tool.

  125. Night, to be fair, the linkage in Benson was not between mathematics and laws of nature but between mathematics and abstract ideas. The three broad exclusions of the Supreme Court are phenomena of nature, laws of nature, and abstract ideas. Mathematical algorithms fall into the latter category.

  126. Night, if the calculation can be done in the computer, can be done mechanically, can be done in circuits, the equivalency is not in the means but in the method.

  127. Night, just the place in the context some of the facts involved in Walker and is later discussed in the Supreme Court Halliburton case, the claim in Walker was to the method of counting tubing collars in an oil well to determine the depth of the oil well. The prior art had disclosed a method of inducing soundwaves into the well, detecting echoes, and drawing them out on a piece of paper. The prior art was deficient in that the tubing collar echoes were indistinct. But they were visible nevertheless.

    The invention of Walker was to provide an adjustable mechanism at the top of the oil well to enhance the tubing echoes so they may be easily counted.

    Both the Walker ninth circuit case and that Halliburton Supreme Court case believed that the mechanical tuner was all that Halliburton had actually invented. So they balked in the Supreme Court when he claimed all mechanisms for enhancing the echoes of a tubing collar. They balked in the Ninth Circuit when he claimed the simple mathematics to compute the depth of the oil well. The mathematics themselves essentially were obvious in view of the Ninth Circuit.

    So understood, what was going on in the Walker case and in the Halliburton case is clear. It has nothing to do with the broad propositions of 18th-century thinking about information processing. It has to do rather with about a patentee trying to claim far broader than his invention.

  128. One thing I can tell you is that from somone who writes applciations for mechanical, ee, cs, biotech, that the methods aren’t different. The issues aren’t different. It is just that somehow or another in Benson we got this psychotic linkage between “mathematical equation” or “algorithm” and “laws of nature.” I think it was a deliberate mischaracterization to achieve a policy.

    Certainly for example in mechanical cases when I claim a method for the operation of the machine, one could simply come up with a symbolic way of represeting the operation of the machine and then according to Benson’s psychotic reasoning it would become a law of nature, or the Bilski abstraction.

    Down with the Cybersource three!!!

  129. One of the odd things about 101 jurisprudence is how the symbols used in information processing methods has almost psychotically been attached to “laws of nature.” It is also very odd that information processing has been under heavy attack and yet the method of information processing look almost exactly like those of mechanical, electrical engineering, and biotech.

  130. OH and by the WAY?
    My Grades were fine. I was nosy. That was a comment on my Card. So when Ms. Crayon came in and there was never a problem with my reading before… and being bored I pretend to not read well… She must have needed to fill a seat in order to continue the Class?
    So if I did have FAS LOLOLOL… then why was I in the regular Population?
    And also was this FAS idea before or after I mentioned a friend of mines Children?

  131. The new patent act eliminates the “without any deceptive intention” limitation. What’s the impact?

    A better question: Why was this done at all?

  132. Benson is essentially Walker. It is trying, although through deception and dishonesty, to exclude methods because it the author thought that the “mathematical equations” were what was needed to make competiting machines. What is wrong with this? Well, besides the out and out lies and mischaracterizations and 1920′s science, the problem is that patent law had recognized that it needed to allow methods of a machine or clever patent attorneys could just design around any structural specficiation of a machine. The information processing methods are really methods of a machine. And that is why they should not be excluded. Benson is old timer thinking that is not applicable to information processing methods.

    Take this to the bank!! This is the core concept of why Benson was written and why it is wrong. This is also the core of this “abstract” business. But, this should not apply to methods of a machine which is what software, information processing methods, are.

    Don’t forget: information transfomrations take space, time, and energy. Information transformations are a transformation every bit as much as what goes on in MM’s smelly test tubes. MM is still a simian.

  133. I was told to call an Atty. in Tennessee. He told me to send all the Originals… Of course I didn’t. My Telephone went dead while I was waiting for him to tell me whether he would help me or not. The line came back after he sent back my Evidence. If he is involved in the Case I imagine he is a “Sorry @ss now. And I am sure the only person I was speaking with at the time was the Lawyer that was supposed to be charging me for Marketing. And I was marketing NOTHING! POUND!

  134. The University of Tennessee connection must be with a Relative of mine. And maybe he is being paid in Royalties to keep me in the Box. And of course let them steal my Keys. He asked another Family member for a Key. The member said NO! I can imagine why. But they still somehow got into his Home anyway!

  135. This week in patent class

    Dennis,

    Did you focus on the law to the exclusion of the politics and philosophical differences of the Jurists involved?

  136. And the “greatest thing of all” is for some reason R.C.L.and the others thought they could just leave the writing about the Cuff being another means and I would never go to Court even after J.R.W. was canned as long as they gave some of the monies for my Idea to the Coast Guard. And the Congress has my LOG or at least looked at it!

  137. Has anyone ever made the argument that computers transform matter because: (1) they change entropy by rearranging data; (2) a change in entropy amounts to a change in free energy (recall G=H-TS from physical chemistry; (3) energy and matter are equivalent (E=mc**2); therefore change in entropy=change in matter? It seems logically sound.

  138. One positive outcome: Say an inventor was adversely impacted by an entity (one or more joint inventors or unlawful assignee, or disgruntled assignee) who did so with deceptive intent.

    For example, an assignee makes a claim amendment, attributes that as the only subject matter an inventor contributed and then removes that inventor from the patent. If that is not the inventors only contribution to the claims then the assignee makes that amendment with deceptive intent (arguably). Under the current system, the inventor has no way of adding that subject matter back in to the claims and being renamed on the patent. Under the new system, the inventor can “right the wrong” even though there was initially deceptive intent.

  139. Question for the class,
    What happens after the Judge excuses himself and rightly so, but later an Elephant enters the room. A really big one. And even the reason the Judge stepped down looms larger now?
    And now the the Elephant has a buddy who is also a relative of the person and now a relative of the Elephant too. And because of this has now made the problem so huge that the Room is now made larger and walls are torn down to hold this Elephant.And the saddest thing of all is the Relative knows things that the Person should have known many many years ago. And that information in itself may make the Elephant case a Family of very large Elephants. And a few may even be Rogue.

  140. Whatever became of the survey regarding issues unresolved by Bilski? If the results are never to be released, it would be nice to know why. Seemed like a realy interesting question to pose.

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