Ongoing Battles over Patentable Subject Matter

By Dennis Crouch

In Ultramercial v. Hulu, the Federal Circuit held that Ultramercial's asserted Patent No. 7,346,545 fit within the subject matter eligibility guidelines of 35 U.S.C. § 101 and was not merely an unpatentable abstract idea. The patent claims a method of distributing copyrighted products (such as a movie) over the internet. The novel idea is that the copyrighted product be both (1) offered for sale and (2) delivered for free if the consumer agrees to view an advertisement. The district court held the patent invalid under section 101. On appeal, however, the Federal Circuit reversed – holding that the patent claims a "practical application" of the idea that "advertising can serve as a currency." An important element of the decision was the finding that "[v]iewing the subject matter as a whole, the invention involves an extensive computer interface."

Now, WildTangent (one of the accused infringers) has petitioned for a rehearing en banc. The public interest organization Electronic Frontier Foundation (EFF) has filed a brief in support of the rehearing – arguing that an en banc determination is necessary in light of (1) the court's failure to follow Bilski v. Kappos; (2) inconsistencies in application of the law apparent from the court's recent decisions in Ultramercial, Classen Immunotherapies v. Biogen IDEC, and CyberSource Corp. v. Retail Decisions, Inc.; and (3) a growing intra-circuit division regarding patentable subject matter jurisprudence. This filing ties-in closely with the pending Supreme Court case of Mayo v. Prometheus, which questions the patentability of a method of personalizing the dosage of a pharmaceutical and the pending case of AMP v. Myriad, which questions the patentability of isolated human DNA. Other pending Section 101 cases include DealerTrack, Inc. v. Huber (App. No. 2010-1544) (Claims 1, 3, and 4 of U.S. Patent No. 7,181,427); FuzzySharp Tech., Inc. v. 3DLabs Inc. (App. No. 2010-1160) (U.S. Patent Nos. 6,172,679 and 6,618,047); CLS Bank Int'l. v. Alice Corp (App. No. 2011-1301) (Patent No. 7,725,375); Cognex v. ITC (App. No. 2011-1098) (Patent Nos. 7,016,539 and 7,065,262); and Fort Properties, Inc. v. American Master Lease LLC (App. No. 2009-1242) (Patent No. 6,292,788).

127 thoughts on “Ongoing Battles over Patentable Subject Matter

  1. Thanks Ned, but in truth, I am more steady in my postings than you give me credit for. What you perceive as a change happens when the perceptions of my steadiness depend on the reader’s mood and inclinations. I still give as I get, and those that post crrp and foolishness still deserve to be called out for such.

    I think with things like SC Justices, there is less of a vested intrest phenom, as no one can truly predict soem of the rulings that come from that body, and I think the current Court will be especially difficult to predict, outside of the few that would decide a matter regardless of the arguments put before them.

    As they say, time will tell.

  2. A New Light,

    If Ned feels you said very little, chances are good that you said enough to make a difference.

    Which is more than can be said about his voluminous, excessive postings day in and day out.

  3. A new light, you use 20,000 words to say very little. Story, and the Supreme Court in cases such as Hotchkiss and Eibel Process, clearly held that when the claimed invention varies only in degree from the prior art, such as to be with in the skill of the ordinary mechanic, that such is not a patentable invention. That actually is codified in section 103. The point of departure between a variation which is in degree and not in kind is what the statute calls “obvious.”

    The problem I have with you and people like you is that you deny the history and origin of section 103, strip from it critical words to totally ignore them, and reduce the entire statute down to one question, whether the claim as a whole is obvious. But that is not what the statute says.

  4. Clark,

    By the way, I agree with you that “Hotchkiss was artfully, but wrongfully, decided. The dissent is much more compelling

  5. Clark,

    What I think you are seeing is the use of the phrase “the work of the ordinary mechanic” used to denigrate that “ordinary mechanic” and to raise the bar of inventions to be something that no ordinary mechanic would be capable of achieving, thus reinforcing a “Sport of Kings” mentality which clashes with the very rationales of political thoughts at the founding of this country. It is unfortunate to think that “promotion” would be so limited as to place the pool of patent grants outside the reach of “ordinary mechanics.” It is indeed an easy slope to slide down and probably one reason why defining ob-via (in the path as MaxDrei often adroitly states) is so difficult.

    There is a certain amount of fortune-telling in determining where the path will lead, and there is a certain amount of mistaking simplicity of invention for being in that path. There is a certain amount of natural difficulty in determining how far down this twisted path one should look. Does one only look straight down to see wher one is next placing one’s foot? Or does one look into the future of the next business cycle, where the decisions of funding research take place? There is also a certain amount of doublespeak in depending too much on such an uncertain tool.

    I will borrow Um, No.’s analogy of a high hurdle race. The patent grant goes to the winner of the race. Even (especially?) with the passage of the America Invents Act, that winner is the first to cross the finish line and file an application. Outside of the confusing (and muddled) exceptions, which I will place outside of this analogy to keep things simple, Congress has decided that it really does not matter who actually invents something first, because merely inventing something is only an invitation to the high hurdle race, not a winnning of that race. Merely inventing something only creates an inchoate right, not a full legal right.

    Now to the point at hand, one must be careful in applying the “ob-via” rationale and be careful to not apply it based on the number of people who want to race, based on the number of people that show up, “invited” to race. It is an easy, but false trap to fall into, to say: “See, look how many people are in that race, it must be obvious no matter who wins.” This sets up a “moral dilemma” trap that if the prize is valuable and attracts a large number of people wanting that prize, then the prize becomes unavailable merely because a large number of people have decided to race for that prize. This cannot be the result envisioned for a system set up to promote innovation – to play such bait-and-switch games. “Ob-via” cannot be permitted to create such a trap.

    It has been pointed out that Rich is a scoundrel for introducing into 103 the anti-”Flash of Genius” provision, but Clark, as you point out in “Ned Heller’s” own research, the separation of the “how” and thus, to an important degree, the “who,” was an idea present in the patent debate long before Rich was on the scene.

    Rich should merely be seen as a champion that chose to fight the tendency to restrict the patent game to the “genius” and away from the “ordinary mechanic.” It is just so very easy to slide down the slippery slope of elitism and to place the “favor” or privilege outside the reach of the masses, to artifically limit who can join the high hurdle race. I think the reason whyt he computer field is so symbolic of the battle is inthe very nature of computers making the act of invention so much easier. I think it riles those who have a false elitist view to think that with computers, mere children can now actually perform real inventions, let alone any “ordinary mechanic.” Rather than embrace the explosion of creativity and fashion a system to be able to handle that success, there are those that would rather choke off innovation that comes “so easily.” This then, points out the genius (to play a pun) of placing into law that section of 103 that was meant to protect this type of invention from the “insiduous” elitism that permeates certain schools of thoughts of the patent system.

  6. “The issue on the table is, do the claims recite a method.”

    The issue on the table is whether the “method” recited is a process within the meaning of the useful arts. Clearly it isn’t.

    Any number of procedures can be declared “patentable” if one ignores their lack of utility.

  7. Clark, but even then the views of Story had become ingrained. Simply making something better using conventional techniques or substitutions of material was not considered the stuff of patents, but the work of the ordinary mechanic.

  8. Hotchkiss was artfully, but wrongfully, decided.

    The dissent is much more compelling:
    Now, on the point as to the invention being patentable, the direction virtually was to consider it not so, if an ordinary mechanic could have made or devised it; whereas in my view the true test of its being patentable was, if the invention was new, and better and cheaper than what preceded it. This test, adopted by the Circuit Court, is one sometimes used to decide whether the invention for which a patent has been obtained is new enough or distinguished enough from a former invention to prevent it from being an infringement, and to justify a new patent for it, and not, as here, whether it is valuable or material enough per se to be protected by any patent.

    Whenever the kind of test adopted below is used otherwise than to see if there has been an infringement or not, it is to ascertain whether the invention is original or not, that is, whether it is a trifling change and merely colorable or not. Webster on Sub. Mat. 25; Curtis on Patents, §§ 6, 7; 2 Gallis. C. C. 51; 1 Mason, C. C. 182. But it is impossible for an invention to be merely colorable, if, as claimed here, it was better and cheaper; and hence this last criterion should, as requested by the plaintiffs, have been suggested as a guide to the jury.

    Then, if they became convinced that the knob in this case, by its material, or form inside, or combination with the shank, was in truth better and cheaper than what had preceded it for this purpose, it would surely be an improvement. It would be neither frivolous nor useless, and, under all the circumstances, it is manifest that the skill necessary to construct it, on which both the court below and the court here rely, is an immaterial inquiry, or it is entirely subordinate to the question, whether the invention was not cheaper and better. Thus, some valuable discoveries are accidental rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves both novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, and wealth of the community.

    Chancellor Kent has truly said (2 Kent’s Comm. 371), ‘The law has no regard to the process of mind by which the invention was accomplished, whether the discovery be by accident or by sudden or by long and laborious thought.’ See also Earle v. Sawyer, 4 Mason, C. C. 1, 6; Crane v. Price, Webster’s Pat. Cases, 411.

    Even in Hotchkiss’ time, the scorn of “Flash of Genius” had poisoned many a mind.

  9. Graham: Hotchkiss enacted.  

    Hotchkiss:  Differences of degree, not kind, not invention.  (Clay knob to knob shank, same relationship.) See also, Eibel Process.

  10. Not according to Graham.

    Please clarify.

    Note that Graham speaks to “differences” and that “significant advances” is a subjective term often confused with “Flash of Genius.”

    The question above by Simple Questions and the answer by Tat are both aptly put.

  11. component: A part or element of a larger whole, esp. a part of a machine or vehicle.

    Examples of COMPONENT
    The components of an electric circuit
    He sells spare computer components.

  12. Prior Art, obviousness, “advertising can serve as a currency” has Google not been using this concept for years?

  13. The issue on the table is, do the claims recite a method. Clearly they do.

    Can you really stop at that issue?

  14. I really dislike analyzing claims.

    Is it really “analysis” when you approach with such blatant ignorance and predisposed results?

  15. demonstrates more than confusion

    Since confusion is not only not demonstrated, but refuted and the accuser stands confused, what is this “more than” that the confused accuser speaks of?

  16. Patents are supposed to be significant advances

    Is this how the errant “Flash of Genius” survives?

  17. There are two big problems in patent law today. First, everyone seems to confuse patenting a process with patenting the result of a process. A huge number of process patents are actually written so as to cover a given result, regardless of the process used to produce it. They do this by using a process description has no actual content that any engineer would recognize.

    Second, massively obvious patents are being produced. Many patents are along the line of “Somehow, we don’t care how, but use a computer to do this same thing that has been done for thousands of years.” All dressed up, of course, so that lawyers and judges can pretend that there is content beyond that statement, even though there is not. The obviousness of the patent is proven by the constant independent invention of the same “process.” Patents are supposed to be significant advances, such that independent invention is impossible and only outright espionage able to duplicate the invention.

    A common thread of both of these problems is the willingness of judges and lawyers to play word games in order to achieve their goals, without any common sense understanding of what is and is not patentable. By now the word games have gotten so convoluted that patent law is totally and irrecoverably inconsistent. It it no longer possible to make rational arguments based on this mess of irrational case law.

    I don’t even know why I bother. Lawyers and judges are too full of their own importance to listen to anyone. They are too fond of their word game to ever go back to actually doing a useful job for society. We are stuck with you leeches destroying the fabric of society until it is too late.

  18. “This claim is to a data processing system”

    That the patentee bought and now seeks to claim as his “invention” by vague implication because it miraculously processes data, although somewhat less “irrevocably” or “invariantly” with respect to the great expanse of eternity than “taught”.

    The claim itself, on the other hand, is directed toward a procedure that can be carried out with a piece of paper and a pencil (preferably one of those new-fangled “pen” thingies) or a handshake and a good memory. It furthermore continues the injustice perpetrated on the aforementioned “doctor” Morse by the execrable ruling of R. B. Taney against his ability to enslave all future encoders of symbols for transmission by the electromagnetic force and decoding of said symbols for “irrevocable” and “invariant” recordation (one might presume on the capricious and prejudicial basis that some of those to be rightly enslaved might subsequently prove to be white).

  19. I rememember this game at the hometown carnival where the deformed gopher faces rose up randomly … and quickly … through crude cardboard holes … begging to be pounded down for points recorded on a light-emitting diode scoreboard.

    And I won a giant blue elephant for my lady. And got laid.

    Reminds me a lot of this blog. Except that the pxtxnt txxbxxggrs here are far more predictable and far less challenging.

  20. Listen anon, you have been quite a decent chap in recent postings. You also appear to be rather intelligent and well versed. I for one would hope that the recent civility in our conversations continues.

  21. anon, if Kagan is as intelligent you suggest, then I think she would be listen to Scalia and he to her. Let’s see if this is the case.

    Do you have a few examples of Kagan voting with Scalia rather than against him?

  22. You assume too much – look at all those who placed such assumptions on men like Kennedy…

    Unwarranted assumptions are worse than thoughtful reflections.

    Kagan’s background: Always a leader, an intellectual heavyweight, she is not one to sit and listen and follow a party line blindly – clerked for Marshall, a liberal on social issues – not technical ones, but broke from him during the confirmation as “just a pipsqueak to a legal giant at that time.” She is no longer a pipsqueak.

    There is none that would command like Stevens – and Kagan surely would not follow anyway. Her affiliations with the likes of Sunstein and Lessig, are eclectic, as she also sports Williams and Connolly blood. In fact, liberals were quite concerned that she would move the bench appreciably to the right.

    No Ned, I do not think that you can assume as you do.

  23. Whether you think so or not, it is a rebel that disagrees with established law.

    Ultramercial Slip Op. at 12 : “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.”

  24. Les, I agree that machines are patentable without claiming a specific result.  

    Obviously, I do not think that one should be able to  claim a series of machine operations as a new machine.

  25. Excuse me, I have a shipment of several crates of kleenex to a couple, um, let’s see, named Mr and Mrs Ned Heller and Malcolm Mooney.

    Can you sign for them?

  26. Ned -
    Bilski was about method claims. This claim is to a data processing system. It is an apparatus claim. It IS a machine. Clearly, if it were applicable (which it is not) it passes the machine branch of the machine or transformation test.

    Furthermore, under Bilski, claims are not patentable only if they are “abstract”. But no definition of abstract was offered.

    Look up –abstract– in your favorite dictionary. Hold that claim up to the definition. Does it fit? No? Then you must acquit.

  27. But that won’t stop such people from repeating the same gxrbxge over and over and over. It’s what MM does.

    Fixed.

  28. I’ll take the Supreme Court

    LOLZ right back, like you did in Diehr and Bilski?

    Your hiding for months after Bilski showed you took it alright – took it right up the

  29. you still cannot convince anyone

    I’ll take the Supreme Court and the majority of the Federal Circuit. You can have Judge Newman. And Randy on one of his “off” days.

    LOL.

  30. Look like we have yet another sockpuppet pretending to be “confused” but really just trying to move the goalpost around.

    I know what an “small entity” is, sockie. I’m responding to the transparent efforts of our li’l shillin’ trolls (who are led by the even more transparent yapping of self-interested bloggers) to equate “small entities” (e.g., your average patent troll and/or your typical “computer-implemented” crxp “inventor trying to “make money off the Internet”) with the “common man.”

    The fact is (please go ahead and prove me wrong — I’ll be waiting right here) that the “small” guys who rely on patents to make money in this country have very little to do with the “common man” because they are part of the 1% top earners (just like me) and because they do very, very little in terms of “job creation” (except to emply themselves). This is true of most “small businesses” by the way. The attempt by the commenters above to align the interests of “patent everything” proponents with those of the unemployeed in this country is, quite frankly, pathetic. But that won’t stop such people from repeating the same gxrbxge over and over and over. It’s what Republicans do.

  31. we need only one more vote on the Supreme Court to have that court review

    Ned, I am not sure who the “we” are in your reference, or just who you think will vote in what way. Stevens in gone and I sure would not count Sotomayor in that camp. Care to elucidate?

  32. I’m talking about trends over the course of years

    One would never have guessed that given the excessive jubilation of your August posts, Malcolm. That was pretty much a one month trend celebration, which crashed hard in September.

    Looks like “a” trend is continuing if you take out that August outlier. Just saw this from Hal Wegner:

    In Typhoon Touch Technologies, Inc. v. Dell, Inc., __ F.3d __ (Fed. Cir. 2011)(Newman, J.), the court reversed a trial court’s invalidity ruling that means-plus-function claims referencing an algorithm are invalid where no algorithm is disclosed. The panel accepted the argument of the appellant-patentee “that the specification contains adequate algorithmic criteria… to perform the computer-implemented function”. Typhoon Touch, __ F.3d at __ (emphasis added).

  33. I know the information can be obtained. In fact, I believe

    The limits for small entity status have already established by federal law, and are well known. Your goal-posting moving of average yearly income notwithstanding.

    If you were really an applicant’s representative, you would know this.

  34. That would explain a lot.

    If you think it clever to impugn that your adversary was in diapers at the time of Labcorp, and you still cannot convince anyone and routinely get your _zz kicked, then it is you that looks pretty d_amm silly.

    And that would indeed explain a lot.

    Just not what you think.

  35. “we’ve” been “going first” for a few years now

    A word of advice: if you have been going first for a few years and you are still going at it with the same crrp arguments, you might think of actually trying to be effective at not going at it with the samr crrp arguments.

    They aren’t working.

  36. I was pointing out why it might be reasonable for Les to be confused

    Les believes that paper is a “machine” and that purely mental processes should be eligible for patents. Les’s confusion runs deeper than the Valles Marineres and your asinine attempt to “help Les understand” what IANAE and I were discussing demonstrates more than confusion on your part.

    Keep trollin’, sockie.

  37. Of course, if that were to happen, this blog would lose 90% of its posts

    And you’d have to find another blog to troll, sockie. I’m sure there’s some women’s or minority right’s blog out there that would love to have a troll like you “contributing” the awesome content that you provide here.

  38. Truly, sockie, you sound like the sort of pinhead who hangs out on the Yahoo stock boards proclaiming the “market is back, baby!” every time the DJIA ticks up for an hour.

    I’m talking about trends over the course of years, going back to LabCorp and earlier. Maybe you were in diapers then. That would explain a lot.

  39. We are talking about the vast majoiryt of small businesses that do use the patent system

    This “vast majoiryt” of “small businesses that use the patent system” doesn’t exist except in your mind, sockie. Keep telling your l-i-e-s, though. Maybe your children will believe them, too, and you can create another generation of blog (and patent) trolls.

    You of all peole with you proletariat betn should identify with the common man, the samll guy against the big oppressive giant corps.

    Except there’s nothing “small” about these imaginary “small guys” you are referring to. I’ll ask the question again: what is the average yearly income or the average net worth of the typical “small inventor” who relies on the patent system to earn an income?

    I know the information can be obtained. In fact, I believe some organization representing such people probably already has the information. I’ll wait for them to release it so the “common man” can begin identifying with these “small” patent owners.

    Haven’t you noticed that the loudest shills for these “small” patent owners also happen to be invariably Republican in their political views? Don’t you find that a bit odd, given that Republicans are undeniably the most unabashedly invested of the two political parties in protecting the “big oppressive giant corps” and the profits of those who manage those corporations?

  40. coincidentally or not, the legal winds are blowing generally in our favor

    The winds have changed since August, or haven’t you noticed?

    and sent 101 jurisprudence back into battle

    You mean like Ultramercial? Yea, tell me how that is working out for you.

    And of course the end of that era gave birth to the Pxtxnt Txxbxggers, whose ignorant bleatings will be with us forever

    You mean like your anti-Pxtxnt Txxbxgger ignorant bleatings?

    Putz.

  41. a transformation

    The only “transformations” here are the creation of an abstract concept (“an obligation”) accompanied by assigning abstract “values” to related abstract concepts (“accounts”).

    You might as well be claiming a method of “re-naming” an object for the purpose of making it easier to remember. Of course, if you’re a Pxtxnt Txxbxggxr, such methods are just the sort of “inventions” that we need. At the same time, of course, Pxtxnt Txxbxggxrs will complain about the awesome easy-to-remember name with which they’ve been bequeathed. LOL.

  42. Yo, sockie, in case you haven’t noticed “we’ve” been “going first” for a few years now and, coincidentally or not, the legal winds are blowing generally in our favor. “Established law” has been changing and will continue to change in “our” favor, generally speaking, in spite of you.

    Remember what Dennis wrote immediately after Bilski and try not to forget it (don’t worry – I know that you will): State Street represented the ultimate in 101 expansion. Bilski gave State Street an ugly crew cut and sent 101 jurisprudence back into battle armed with a tiny little popgun.

    It was a short-lived “golden era” for the Patent Everything crowd, wasn’t it? And of course the end of that era gave birth to the Pxtxnt Txxbxggers, whose ignorant bleatings will be with us forever, I’m quite certain.

  43. I can only hope the anti-Alappat bigots begin to realize the absolute absurdity of their position and thinking.

    Corrected – you first, since it is you that wants to change established law.

  44. I don’t see a physical result. Do you?

    Do you need a physical result if you require physical devices and have a transformation – meeting both prongs of the beloved Machine or Transformation test?

  45. Enjoy

    Enjoy your typical vacuous trolling comment? Why?

    We are talking about the vast majoiryt of small businesses that do use the patent system – those do create jobs and those (obviously) do use patents, often for the saving grace of competing against otherwise market dominant giants.

    You of all peole with you proletariat betn should identify with the common man, the samll guy against the big oppressive giant corps.

    Why is it then, that you are so adamently anti-patent? Especially anti-patent in any art area that does not take like a gazillion dollars to compete in anyway?

  46. Sure, and a lot more.

    But, since in recites physical acts that can only be implemented on a programmed computer, the likes of Rader will ignore the ultimate objective of the claim and declare it patent elibible. That is the vice of his “kind” of thinking.

    It is the result of the claim that is important. That result must be, IMHO, within the useful arts.

  47. Sure, we know the law. But we have strong views as well on what the patent law should be. That is not good for a judge.

    Except for one that actually wrote that law.

    And that is one mighty powerful exception that must be acknowledged, because a judges’ duty is to interpret what the law writer meant – and who better to know that interpretation than someone like Rich? – NO ONE.

    All the QQ’ing going on about how awful Rich was comes from those on the losing side of the philosophical battle. – That is clearly obvious, and any personal smear campaigns and character assasinations are clearly sour grapes from those losers.

  48. Malcolm, you hit the nail on the head when you said, “Keeping track of obligations between two parties is a rather abstract concept. Is there some particularly (i.e.,structurally) claimed machine which turns this concept into something worthy of patent protection?”

    When one pins patentability simply on whether a computer is recited in the claim, anything at all can be patented. Anything.

    I can only hope the Alappat bigots begin to realize the absolute absurdity of their position and thinking.

  49. Confining claims to what was invented was a major theme of Douglas.

    Wrong. Dismissing any claim that he could get his hands on regardless of thwa the claim was, what thespecificaiton disclosed and what the state of the art was. < - Correct.

    Stop revising history. Douglas was anti-patent. It’s a fact. He acknowledged so himself.

  50. As IANAE notes, sockie, the only commenters here who are “confused” about what IANAE and I are talking about is you and the usual 101 nailbiters.

    Learn to read M0r0n, did I say I was confused?

    No.

    I was pointing out why it might be reasonable for Les to be confused due to your penchant for discussing whatever on whatever thread much like a stray dog with diarrhea.

  51. As usual in these crxp biz method claims, the dependent claims give away the “story” (while adding nothing patent-worthy to the base claim)….

    wherein said first exchange institution and said second exchange institution are the same.

    wherein said second account and said fourth account are the same account.

    further comprising means for allowing said first party to acquire an item from said second party, wherein the exchange obligation relates to said item.

    further comprising a second party device, wherein said computer is further configured to receive a transaction from said second party device

    So basically we have a computerized (technical!!! LOL) “system” to “enable” a bookee (e.g., a “bank”) to keep track of “obligations” between two “parties” associated with the bookee. Gosh, it seems to me that “systems” with such capabilities have existed for millenia, including some which “utilized” a dude, a sharp stone, and a flat rock.

    Keeping track of obligations between two parties is a rather abstract concept. Is there some particularly (i.e.,structurally) claimed machine which turns this concept into something worthy of patent protection?

    This one uses only uses a generically hand-wavey POWERFUL COMPUTER BRAIN to facilitate things, which I guess was completely unexpected way back in 1900 when the priority application for this p.o.s. was filed. Oops, did I say 1900? I meant 2000. Whatever. It’s still huge and I’m sure without this patent we would have seen no advances on this front for hundreds of years, at least.

    By the way, there’s a antecedent basis issue with the claim, at least as it appears on the USPTO website. In the second paragraph of the body of the claim, the claim refers to “said transaction between said first party and said second party”. No such transaction is referred to earlier in the claim.

  52. Paul, we need only one more vote on the Supreme Court to have that court review whether we should be granting patents on silly walks, the better tax dodge, the computer implemented grace dispensing machine, and the like. I don’t believe we can simply do it by using 103 because of the statute.

    The European system was well thought out, clearly. It has a lot of merit. But we simply cannot adopt it because of the statutoy framework installed by Rich that prevents the very inquiries that we should be conducting in determining whether the claimed subject matter is a “technical” advance, or rather simply a claim to something abstract, or silly.

  53. Ignored frequently in MM’s QQing

    Right, that’s why in every thread where the claims aren’t in the original post, I’m nearly always the first one to reproduce them myself or ask if someone else cares to do it. For example, see this thread. First comment.

    Because I really dislike analyzing claims.

    Dxmbest. Trolls. Ever.

  54. Agreed.

    We do have a war going on in patent law, and Rich was on one side of that war. Anyone who disagrees with the results of Rich’s efforts should be free to identify the cause of the problems we have.

    Rich was, according to the NYPLA, the very first patent attorney appointed to a circuit court. The man came to he court with an agenda, that was clear. I think his appointment was engineered by both the APLA and the NYPLA for the very purpose of representing the patent bar on the most important patent court of the time. They succeeded. And it was a mistake.

    I am not so sure that patent attorneys can be good judges on patent courts. Sure, we know the law. But we have strong views as well on what the patent law should be. That is not good for a judge.

  55. Mark:

    [The claims refer] to ‘protected’ content, i.e. media files with digital rights management features to prevent unauthorised viewing. Of course this is a meaningful (and technical) limitation.

    I wonder how much Kool-Aid you have to drink to write something so completely full of bxxxxxt.

    When examining this claim in light of the prior art, what’s “meaningful” about the fact that the “content” being offered to potential consumers comprises “digital rights management features” (a laughable “technical” term if I ever heard one — I wonder what sort of “features” that term does NOT include)?

    The bottom line is that there is nothing non-obvious about the inclusion of such “features” in digital content as of the filing date of this p.o.s. patent. What possible “meaningful” limitation is put on the claimed method by the inclusion of the limitation? How is it more or less “meaningful” than if the “content” was limited to “X-rated content” or “animated content”?

    Maybe some desperate attempt to avoid failure under a “pre-emption” analysis? Is that the “meaning” of the limitation?

  56. As IANAE notes, sockie, the only commenters here who are “confused” about what IANAE and I are talking about is you and the usual 101 nailbiters.

  57. Umm Les,

    You have been around here long enough to know that Novelty and Obviousness are Never separate issues with the likes of Mooney and IANAE.

  58. Careful, Ned. Some of us agree with your less than laudatory comments on Rich, but the patent world is chock-full of rabid Rich-sycophants. Recall that DC jerked your anti-Rich comments in another thread.

    Rich must have been a wonderful person; he is well loved by many. Nevertheless, putting the emotion aside, the guy was the biggest single disaster in the history of US patent law. The sooner people get on board with that sentiment, the sooner his disastrous influence and poorly written laws (i.e. 103) can be dealt with.

  59. 7,725,375

    1. A data processing system to enable the exchange of an obligation between parties, the system comprising:

    a first party device, a data storage unit having stored therein (a) information about a first account for a first party, independent from a second account maintained by a first exchange institution, and (b) information about a third account for a second party, independent from a fourth account maintained by a second exchange institution; and

    a computer, coupled to said data storage unit, that is configured to (a) receive a transaction from said first party device; (b) electronically adjust said first account and said third account in order to effect an exchange obligation arising from said transaction between said first party and said second party after ensuring that said first party and/or said second party have adequate value in said first account and/or said third account, respectively; and (c) generate an instruction to said first exchange institution and/or said second exchange institution to adjust said second account and/or said fourth account in accordance with the adjustment of said first account and/or said third account, wherein said instruction being an irrevocable, time invariant obligation placed on said first exchange institution and/or said second exchange institution.

    Wow, a computer with a data storage unit! But get this: the data storage unit stores data and the computer processes information! But wait that’s not all: the information relates to bank accounts and contracts! Who could have expected that a computer could be programmed to operate successfully for such a purpose way back in 2000??!?!?!?!?

    Shockingly, the brilliant “inventors” who filed this p.o.s. neglected to include a dependent claim “wherein an advertisement is presented to each party.”

  60. the little guys (you know, the ones that actually create jobs in this country,

    The vast majority of small businesses to do not create jobs (other than for their owners), nor do they have any use for patents.

    Enjoy.

  61. It was certainly novel in 2001 to ask a person to see an ad on a free video! I remember first seeing the option on Hulu and thinking, yeah, this is novel.

    And somehow the question of obviousness didn’t pop into your mind? LOL.

    The first time i clicked on a video and it showed me an ad, I remember thinking: “Wow, it didn’t take it long for advertisers to fxck this up like everything else.” The last thing that would ever pop into my mind was “Wow, this is clever” because it was the most obvious “development” since Mungo accepted a shiny shell in exchange for a flute solo.

  62. Mr. Baum, it is good that you acknowledge the simple fact that there is a war going on, there are sides, and that the war continues even today, long after Rich, Douglas and Stevens have left the scene. 
     
    Confining claims to what was invented was a major theme of Douglas.  Raising the standard of invention from essentially no standard was another.  And, refusing to allow the patenting of software per se was a third.
     
    All of these were and are good causes. 
     
    Labeling Douglas anti-patent is a smear.  He was not.  He was against the kind of abuse that patents with broad indefinite claims give, that a low stand of invention gives, and that
    patenting software in the abstract gives.  But this is a theme we hear echoed everywhere across the land today.
     
     
     
     

  63. “Those who have as their agenda to exclude this particular area of innovation, who wish to preserve the established market power and eviscerate the nascent game-changing ability of patents in this arena will Shill with all their might to do so regardless of facts and regardless of law.”

    O noes?

  64. Since the thread’s premise is a discussion of 101, I could see why Les was confused in responding to IANAE’s response to a MM post.

    The easy solution to this confusion is to realize that any post by MM in a 101 thread is almost guaranteed to conflate 101 with other sections of law.

    The easier solution to this confusion is to realize that any post by MM is worthless.

  65. The subject of the article under discussion is:
    Ongoing Battles over Patentable Subject Matter (i.e., 101)

    In Bilski, the Supremes also confused 101 with 103 (obviousness). That’s why they were asking snarky questions about –isn’t this just “hedging”–, which is way off the point of a 101 patentable subject matter classification.

  66. Careful….you are confusing a snarky implication of obviousness with “patentable subject matter”.

    I was replying to a post about art-based validity, with a post about art-based validity. Neither of us said anything about patentable subject matter.

    You seem to be the confused one, both for thinking I was talking about 101 at all, and for stating the 101 issue as “do the claims recite a method” when that’s clearly inconsistent with Bilski.

  67. Careful….you are confusing a snarky implication of obviousness with “patentable subject matter”.

    The issue on the table is, do the claims recite a method. Clearly they do.

    Novelty and Obviousness are separate issues.

  68. You can look up the claims easy enough… in this case,the claims are actually very long-winded and the application was filed in 2001. It was certainly novel in 2001 to ask a person to see an ad on a free video! I remember first seeing the option on Hulu and thinking, yeah, this is novel.

    As for Bilski… the Supreme Court said it’s a guide and it’s largely as things were pre-CAFC hearing Bilski, though of course the defendants don’t like that.

    If we want 101 to be more narrow, we need to make a legislative change, not a judicial one. 101, on it’s face, is very broad.

  69. Rich’s views have lead to chaos and are rightly condemned.

    So says the cowardly, heartless, brainless, dust-kicking, non-answerer of direct questions, game-playing, character-assassinating man behind the curtain.

    The problem is that the facts and the law support Rich. The problem is that the nature of patents themselves lead to the “chaos” that this charlatan would have us avoid. Patents threaten the established entities because they introduce innovation that cannot be defeated by ordinary market power. Patents provide an edge that equalizes the battlefield.

    This is why the Shilling forces strive so desparately, and with any and all means possible, to weaken patents. This is why the anti-patent philosphy of Douglas is exalted.

  70. I don’t think MM, 6, IANAE, and Ned should speak.

    fixed.

    Of course, if that were to happen, this blog would lose 90% of its posts (60% direct, 30% rebuttal).

  71. said in reply to MM… Try reading the claim

    This is not a novel suggestion.

    Ignored frequently in MM’s QQing, yes.
    Novel, no.

  72. some sort of meatspace clicktrolling… most bizarre outburst of nonsense has to be topped… continue to gain attention for the underlying message of the corporate sponsor.

    Rader must be running low

    Here’s a hint – it is not Rader who is guilty of the “meatspace clicktrolling bizarre outbursts” – his message is to stop the incessant “meatspace clicktrolling bizarre outbursts” of meaningless 101 attacks because the law established by Alappat is still good law and is still controlling law.

    Those who have as their agenda to exclude this particular area of innovation, who wish to preserve the established market power and eviscerate the nascent game-changing ability of patents in this arena will Shill with all their might to do so regardless of facts and regardless of law.

    Here’s another hint: follow the money. That will lead you to just who is “the corporate sponsor” and more importantly what that “corporate sponsor” wants – the decimation of the patent system, a system that supports the little guys (you know, the ones that actually create jobs in this country, the ones that actually pay the taxes that support the public welfare system).

  73. through interchangeble software or hardware enhancements deserve patent protection

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

  74. 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.

    Hardware, you are next.

  75. Already patented by S. F. B. Morse.

    The CAFC “business method” has devolved to some sort of meatspace clicktrolling operation in which the most bizarre outburst of nonsense has to be topped more and more frequently to continue to gain attention for the underlying message of the corporate sponsor.

    Rader must be running low on corporate sponsors of lecture junkets.

    “But, they send bits! On wires and stuff… sometimes even just through thin air!… And they use special machines they plugged into the wall outlet all by themselves to do it! And they send Copyright materials using magical transformations that can encode and decode letters from electrons!”

    “What hath Dog rot?”

  76. It seems that John Cleese could have obtained a patent in the US for his silly walk.

    Or that the sensible objection (not the silly one) arises under 35 USC 103 that there is no unexpected result.

  77. Try reading the claim, instead of the commentary. It does not actually say ‘copyright’. It is referring to ‘protected’ content, i.e. media files with digital rights management features to prevent unauthorised viewing. Of course this is a meaningful (and technical) limitation.

  78. Don’t you bozos ever get tired of mixing 103 with 101?

    The more careful your arguments are that conflate 103 with 101, the more I am convinced you are shills.

  79. When the anti-patent ways of Douglas are held up to the light, do they shimmer any different when you have your eyes closed?

    Is Stevens holding up 101 and warning not to treat it as a nose of wax, as he then commences to do and apply his philosophy in a perversion of actual facts not transperant enough for you?

    Follow his career, read carefully his words – without the fawning adulation. Be grounded in reason and fact – if you dare.

    I know that you will not.

    You speak of hearesy, yet you only too willingly blaspheme.

    You Ned, are an empty vessel. Your cause has eaten away your soul. You strut around as if posting with your own name somehow brings credence and substance to what you say, completely ignorant that a man’s name is only as good as his actions, and your actions speak too loudly for me to hear your words. Empty, meaningless words that they are, reflecting the empty meaningless man you have become. In the quiets’ of your own heart, you know the games that you play, the cowardice that attaches to your refusal to straightforwardly do as you so valiantly claim to want, but only so quick to forsake – to hold an honest conversation. There is no honesty in your heart, no honor. Hundreds upon hundreds of chances have passed you by. Yet all that can be seen are the same, sad, shallow games.

    There is a four letter word I have for you.

    That word is pity.

  80. Rich’s views have lead to chaos and are rightly condemned. All we really need to know about Rich is that he wrote In re Benson, In re Alappat and State Street Bank.

  81. Children, lets all sing the song of Judge Rich,

    “Programmed computers are new machines.”

    Now, who are the D e v i l? William O. Douglas, J. P. Stevens and most of all, Richard H. Stern. Dress up their dolls as Dark Lords of the Sith. Pray for the Heroes of Alappat to save us.

    Now we see the beginnings of a new religion here. A heresy often repeated becomes dogma. The leaders of the enemy are vilified. Any who question the dogma or the sainthood of Judge Rich are to be de stroyed.

  82. views on any number of issues have become the law

    Funny that you hold aJudge made law in higher esteem than a legislative one.

    You disparage Rich and his law, yet that law had the votes of legislature and was far more the voice of the people than the hxtred of one man.

    You are indeed blind.

  83. What about an internet method of distributing grace:

    1. A method of distributing grace and forgiving sins, comprising:

    displaying a table comparing grace amounts in sin forgiveness units where a predetermined number of grace units will forgive identified sins;

    displaying prices of grace amounts wherein the unit prices is set depending upon denomination;

    selecting a grace amount and a denomination,

    computing a price based upon the selected grace amount and denomination;

    receiving payment; and in response to receiving payment,

    symbolically communicating to the selected denomination’s deity by displaying audio visual prayers being conducted, wherein the prayer material is appropriate to the domination;

    wherein the selected deity receives the symbolic communication, and grace units requested and delivers the selected grace amount to the consumer’s spiritual account.

    Nothing abstract there at all. Plenty of displaying and calculating and communicating. Lots of computer and internet interface there. Quite patentable according to Rader and Night Writer. Quite.

  84. It’s a funny sort of theft to steal time: when I take time seem to have less of it. And when my sentence gets meted out, I’ll be free to kill time.

  85. Douglas’s views on any number of issues have become the law in the US. However, the likes of Rich obviously did have the view that Douglas was not a knight in shining armor.

  86. They say timing is everything. If you don’t have it you are out of luck. If someone takes that time from you.. You have lost it. But they are now out of luck.
    If you take Numbers and move them around to represent another that is called stupidity. And when your Atty. now now gets that you have the correct Chapter and Verse that’s called Freedom… for me anyway.

  87. Perhaps the printed matter doctrine?

    LOLZ – yeas, let’s go with that.

    Do you even have a clue as to how that doctrine works? the complete doctrine?

    N
    O
    T

    L
    I
    K
    E
    L
    Y

    T O O L

  88. Nothing like revisionist history to blow the smoke that it was “I never saw a valid patent” Douglas who was the real criminal in the patent wars.

  89. Growing intra-circuit division!

    In recent months I have detailed the outright rebellion against the Supreme Court exhibited by Judge Rich in any number of basic legal doctrines. Every time one of his rebellious creations has reached the Supreme Court, without exception, he has been reversed, virtually unanimously by the Supreme Court. Most recently, his State Street Bank/Alappat test has been met with derision at the higher court in Bilski v. Kappos.

    Now, to identify the split in the circuit, all we have to do is see who on the court also sided with Rich in Alappat. (Bryson was with Rich on State Street, but has now reversed course in Bilski.) Let’s check the majority in Alappat:

    Rich, Newman, Lourie, Michel, Plager, and Rader.

    Nies and Archer dissented.

    Mayer, Clevenger, and Schall took no position.

    I also was just reading an article written in 1952 by Frank Prager of IIT, entitled, “Standards a patentable invention from 1474 to 1952,” the University of Chicago Law Review, Vol. 20, number 1 (Autumn 1952), pages 69-95, wherein author said, “The present majority of the Supreme Court holds, under the guidance of justice Justices Black and Douglas, that the Patent Office uses too low a standard of patentable invention, thereby aiding and abetting the creation of harmful and illegal monopolies. Justices Frankfurter and Jackson dissent sharply; in fact they apply standards considerably lower than those of the Patent Office. For the Office itself, the Court of Customs and Patent Appeals has the final word. It has roundly refused to follow Supreme Court’s view.” Ibidem, at 69.

    It appears that Rich joined a CCPA already in open rebellion against the Supreme Court shortly after Prager’s articles was written. The trend of resistance continued from the CCPA to the Federal Circuit with Rich. It now exists in those judges that joined Rich in Alappat.

  90. Ultramercial has been out for how long now?

    This is what? the upteenth item along these same lines that Crouch is trolling this blog with? Not liking the answers you are getting from the posts Prof. Crouch? Are you going to keep on posting these types of “battles” when only such a vocal minority actually feel like this is newsworthy? Take the hint from Radar – get over the 101 issue already.

    Yeah, I know: how likely is that? Not very for the Shilling Grounds.

  91. A method of distributing gravel, wherein the gravel is owned by guy with a “B” in his name, comprising: offering the gravel to a customer and, upon confirmation of acceptance by said customer, distributing said gravel.

    I can haz patent now?

  92. I don’t think MM, 6, IANAE, and Ned should speak with one another. The damage to the thread is irreparable.

    Ultramerical is simply a brilliant opinion that could only be topped by J. Rich.

  93. And, what if the copyright is invalid, expired, or whatever. I agree, the copyrighted nature of the product is irrelevant and immaterial.

    This is like claiming the old computer painted blue, or the old piano player playing the new song, or the book with a novel by Ann Rand as opposed to Ernest Hemingway.

    The nature of the work, copyrighted or not, has to be excised from the claim under some legal theory. Perhaps 112? Perhaps the printed matter doctrine?

    But why excise it at all. Why not go to the source and require its removal on the pain of holding the claim invalid?

    I personally think 112 serves to do this trick, especially when the irrelevant subject matter is at the core of novelty. The copyrighted nature of the work has no functional relationship to the claimed subject matter. The claim element therefor serves to confuse and to obscure the invention and to render it indefinite.

  94. “Oh right, this advanced form of advertising technology has an internet.”

    Is that all you can do now? Mimic Mooney, but without any of his wit and charm?

    Teaching a boring survey class this semester, are you?

  95. was the limitation regarding the legal status of the information being distributed according to the method actually a factor in determining whether the claims were patentable over the prior art?

    Maybe it was intended to distinguish the well-known prior art of “this commercially-available article is our free gift to you, provided that you attend our seminar on time-shares” or whatever.

    Though I’m still not sure how it distinguishes, say, a movie that’s available on a pay TV channel commercial-free and also on cable with ads. Oh right, this advanced form of advertising technology has an internet.

  96. The patent claims a method of distributing copyrighted products (such as a movie) over the internet. The novel idea is that the copyrighted product be both (1) offered for sale and (2) delivered for free if the consumer agrees to view an advertisement.

    What possible difference could it make for patentability purposes whether the product is “copyrighted”? i.e., was the limitation regarding the legal status of the information being distributed according to the method actually a factor in determining whether the claims were patentable over the prior art?

  97. Other pending Section 101 cases include DealerTrack, Inc. v. Huber (App. No. 2010-1544) (Claims 1, 3, and 4 of U.S. Patent No. 7,181,427); FuzzySharp Tech., Inc. v. 3DLabs Inc. (App. No. 2010-1160) (U.S. Patent Nos. 6,172,679 and 6,618,047); CLS Bank Int’l. v. Alice Corp (App. No. 2011-1301) (Patent No. 7,725,375); Cognex v. ITC (App. No. 2011-1098) (Patent Nos. 7,016,539 and 7,065,262); and Fort Properties, Inc. v. American Master Lease LLC (App. No. 2009-1242) (Patent No. 6,292,788).

    Claims, please!!!

Comments are closed.