Bar to Courts: Please Define “Unpatentably Abstract”

By Dennis Crouch

Fort Properties, Inc. v. American Master Lease LLC, __ F.3d __ (Fed.Cir. 2012)(Judge Prost joined by Judges Schall and Moore.

American Master Lease (AML) owns a patent that covers a method of creating a tax-deferred real estate investment instrument. U.S. Patent No. 6,292,788. Claim 1 includes three primary steps: aggregating title to real property to form a real estate portfolio; encumbering the property in the real estate portfolio with a master agreement; and creating a plurality of deedshares by dividing title in the real estate portfolio into a set of tenant-in-common deeds with each of the deedshares subject to a reaggregation provision in the master agreement. This method is designed to take advantage of a federal income tax loophole that allows investment properties to be traded tax free in some circumstances.

This litigation arose after AML threatened Fort Properties with an infringement lawsuit and Fort Properties filed an action in the Central District of California asking for a declaratory judgment of invalidity. In a decision predating Bilski v. Kappos, the district court ruled the patent invalid for failing the machine-or-transformation test (MoT). On appeal, the Federal Circuit affirmed – finding the invention unpatentably abstract.

Unpatentably Abstract: Courts have long recognized patent claims as abstractions that tend to generalize and broaden the scope of a particular invention. That small level of abstraction is acceptable and encouraged. However, if a claim is too abstract then it becomes unpatentably abstract. At a conference this weekend, Chief Judge Rader, USPTO Solicitor Chen, and I held an interesting discussion on drawing that line. In my view, “preemption” is largely unhelpful because it falls into the same line drawing trap: A patent is only useful if it sufficiently preempts (i.e., excludes) others, but at some point too much preemption renders a claim unpatentably preemptive. I believe that all three of us see the current jurisprudence on abstract ideas as problematic. It leaves the courts and patent examiners without any real standards for determining an outcome other than asking whether the particularly claimed invention is “too much like Bilski, Benson, or Flook?”

Here, the appellate panel reviewed the tax strategy patent and decided that it counts as abstract because the invention is too much like Bilski.

We view the present case as similar to Bilski. Specifically, like the invention in Bilski, claims 1-31 of the ’788 patent disclose an investment tool, particularly a real estate investment tool designed to enable tax-free exchanges of property. This is an abstract concept. Under Bilski, this abstract concept cannot be transformed into patentable subject matter merely because of connections to the physical world through deeds, contracts, and real property. . . . When viewing the claimed invention as a whole, the physical activities involving the deeds, contracts, and real property are insufficient to render these claims patentable.

Some of the claims included a computer limitation. However, the court held that limitation did not impose any meaningful limits on the claim scope for subject matter eligibility purposes. “AML simply added a computer limitation to claims covering an abstract concept—that is, the computer limitation is simply insignificant post-solution activity. Without more, claims 32-41 cannot qualify as patent-eligible.”

The problem with the court’s jurisprudence here is that “unpatentably abstract” is not defined. Rather, the court simply recited the core function of the invention and the conclusion that it is abstract.

309 thoughts on “Bar to Courts: Please Define “Unpatentably Abstract”

  1. Oh look, here he is using his irl name.

    link to dwheeler.com

    where he even cites to his own Dedoimedo “site” for some references.

    Looks like he writes a lot of articles

    link to chronicle.com

    link to dwheeler.com

    So I guess from now on we should just go ahead and call him David instead of AI.

    You guys might be wondering, how did 6 do that omfg? Simple, first you find website of tard by googling whatever tard thing he says. In this case, neutrinos thought. Then you do a whois to find out all you can about the mysterious webmaster, in this case, where he lives, where he foolishly registered his company, Vancouver WA. Then simply google the tard’s website name with the address. Bing bing bing things start a poppin’ up. Review things, things are written in same style, there you have your man.

    Oh, and thanks for updating your site last time I ragged on the use of “IP” AI.

    link to dwheeler.com

    Also I’m glad to have you on board:

    link to dwheeler.com

  2. Definitely AI’s website:

    link to dedoimedo.com

    Notice the “cheers” at the end like he likes to do.

    link to dedoimedo.com

    Cheers after P.S.

    link to dedoimedo.com

    We all know AI wrote the book on trol ling, but here it is laid out in black and white. Notice the trol lolololol that isn’t that popular but which I posted on this site and he found out about. And the misunderstanding of several of the memes.

    link to dedoimedo.com

    Why he is all up in arms about patents for softwarelolz.

    link to dedoimedo.com

    He would sure get along with my dad. I’m sure they could talk about neutrinos and model airplanes all day long.

    link to dedoimedo.com

    Notice he just beat it “to dust” as he so often beats things around here.

    link to dedoimedo.com

    His views on quantum mechanics, such as they are.

    In any event, I rather enjoy your site AI, it is good for lols. And it is a lot better than Michael R. Thomas’s site.

    Oh and btw, I credit Dedoimedo, aka AI with those articles.

  3. 6: Yeah I know, just like you have a masters in physics,

    AI: No

    6: mathematics,

    AI: No

    6 bio,

    AI: No

    6:chem,

    AI: No, but Neuroscience is interdisciplinary and draws from all the above fields.

    6: and a JD as well as an MD.

    AI: No, no, but I have proven to be smarter than you when it comes to the application of patent law, but that’s not saying much considering its just you 6.

    6: You’re a regular renaissance man!

    AI: Well, yes I am, as are most Actual Inventors.

    6: “Oh, and by the way, thoughts are in essence energy signals.”

    Which just so happen to not be subject to patent protection.

    AI: An application of a signal may very well be subject to patent protection.

    6: “So yes thoughts, especially at the quantum level, are related to neutrino particles as is every thing we “perceive” as mass.” :Really, and just how are they “related” to neutrino particles? Go ahead and explain, I need a physics lesson from your holiness.

    AI: Everything is energy.

    Class dismissed.

  4. I reiterate my finding that “abstract” and “preemption” are mere rhetorical labels of convenience that have proven to be more confusing than worthwhile, and also my suggestion that they should be removed from the patent lexicon.

    You want a clear analysis of abstractness and preemption? See my comment at 5:41 pm, as well as earlier ones for context:

    link to patentlyo.com

  5. Malcolm, what’s your first impression of a claim of this type from a 101 perspective:

    1) induce a signal into a system;

    2) measure the response to the signal;

    3) analyze the measured response to determine X, using novel formula Y.

    If you say, patent eligible, why would the result change if Y turned out to be old?

  6. Black, more propaganda? AI has been on a personal crusade against me. He is downright scary in his obsessions and obvious mental illness.

    Regarding citations, I have wasted my breadth numbers of times citing cases to AI as it never sticks. No matter how many times I do it, he says that I don’t do it. It is sheer lunacy, or something else that might be worse, trying to deal with this mentally unstable individual.

    If you inspect this thread, I almost alone cite and quote cases supporting what I say. To suggest that I do not is simply false.

    But, I suspect that you, Mr. Black, or either AI himself, or one of his sock puppet allies. You really don’t care to discuss issues. You simply want to bicker and perhaps more.

    I perhaps will regret writing this post as it always results in numbers of sock puppet posters who all sound like AI himself emerging from the forest to pounce on the post like wild dogs on fresh meat. There one will see goalpost moving, strawman erecting and shear unadulteratedly lying as would expect of obsessed stalkers.

  7. “I have a graduate degree in Neuroscience so if you want to discuss that topic go right ahead.”

    Yeah I know, just like you have a masters in physics, mathematics, bio, chem, and a JD as well as an MD. You’re a regular renaissance man!

    “Oh, and by the way, thoughts are in essence energy signals.”

    Which just so happen to not be subject to patent protection.

    “So yes thoughts, especially at the quantum level, are related to neutrino particles as is every thing we “perceive” as mass.”

    Really, and just how are they “related” to neutrino particles? Go ahead and explain, I need a physics lesson from your holiness.

    Is this your website?

    link to dedoimedo.com

    “And if you want to refute this then please do so with citations to those scientific experiments you have been reading and/or conducting.”

    Refute it? Extraordinary claims such as yours are what require evidence. Indeed, extraordinary evidence. I make no claims or refutations in re this topic, and I require no evidence to simply point out that your absurd assertions are absolutly baseless. That is, there is no evidence to establish that there is any “relationship” between thoughts and neutrinos. Why on earth you would believe something so absurd is a mystery, unless it is your base stu pidity at work again, or you are in fact insane. Or you were mixing specials.

    The special to which you were referring can be found here:

    link to pbs.org

    And guess what, surprise surprise, they’re talking about solar neutrinos, neutrinos that have nothing to do with your brain or your thoughts.

  8. MM, I wonder at Myriad hammering abstractness so hard in its brief, when the contention of Mayo is that the claims preempt a natural phenomena.

    These are not the same thing, are they?

    They are very similar but one needs to describe the situation accurately before understanding the similarities. When we talk about claims “preepting a natural phenomena” we certainly don’t mean that that the claims prevent the “natural phenomenon” from occurring. We mean that substantially all patentable uses of the “natural phenomenon” are covered by the claims. The easiest way to achieve that result is to do exactly what Prometheus did: recite generally (i.e., unpatentably) an old obvious step of obtaining data relating to the “natural phenomenon” and toss in a step of thinking about the data in light of the “natural phenomenon.”

    As for why Mayo chose their particular strategy, I think we already know why: their counsel stinks.

  9. Mental step = abstract.

    Why haven’t we ever seen the expose on why some mental steps are allowed in claims…?

    Not just “some mental steps” but you should feel free to recite ANY mental step in a claim that is otherwise patentable and patent eligible. I have absolutely no idea why you would want to do clutter up an otherwise perfectly good invention, of course, but I can think of no reason why you should not be able to do that if you wish to do it.

  10. Ned, is just a pseudo legal intellectual, at least when it comes to patent law. If he could cite the cases to back up his theoretical should be law, he would have done so by now. Alas he is just a paper dragon blowing hot air. Disposed of with a simple, “cite please?”

    Then POOF!

    He is gone.

  11. crelboyne, echoing MM, I wonder at Myriad hammering abstractness so hard in its brief, when the contention of Mayo is that the claims preempt a natural phenomena.

    These are not the same thing, are they?

  12. 6, it’s kinda of humorous to see you jump in here and argue you are smart/right because you think you watched a TV program I did not.

    Anyway, I am not combining specials.

    I did watch the PBS Neutrino special at the time the two scientist won the Nobel prize back in 2000.

    It was not a show about Neurons. I have a graduate degree in Neuroscience so if you want to discuss that topic go right ahead.

    Oh, and by the way, thoughts are in essence energy signals.

    So yes thoughts, especially at the quantum level, are related to neutrino particles as is every thing we “perceive” as mass.

    And if you want to refute this then please do so with citations to those scientific experiments you have been reading and/or conducting.

    Otherwise you will become just like Ned, a commenter known for making insults and having no citations, or credibility.

    Wait, too late you are that already .

  13. M. Webster:

    “Why haven’t we ever seen the expose on why some mental steps are allowed in claims…?”

    Check Diehr. There a process was deemed patentable when the only novel step involved the solving of a mathematical formula. The process was changed because of use of the mathematical formula. The formula used data measured from the molding process. The result of the calculation was used to open the mold.

    Here is element g from claim 11:

    “”(g) repetitively calculating at frequent periodic intervals throughout closure of said press the Arrhenius equation for reaction time of said rubber to determine total required cure time v as follows:
    “ln v=cz+x
    “wherein c is an activation energy constant determined for said rubber being molded and cured in said press, z is the temperature of said mold at the time of each calculation of said Arrhenius equation, and x is a constant which is a function of said predetermined geometry of said mold,”

    Using Diehr as a template, the boundary between and unpatentable mental step any patentable mental step becomes clear. If the mental step operates upon data from data-gathering steps and produces an output that is used to modify physically the process, it is patentable.

    This of course is the familiar MOT test in operation. As we know, the MOT is not the exclusive test. But if the claim passes the test, is patentable subject matter.

  14. ab·stract/abˈstrakt/

    Adjective:

    Existing in thought or as an idea but not having a physical or concrete existence.

    Mental step = abstract.

    Why haven’t we ever seen the expose on why some mental steps are allowed in claims…?

  15. in such a situation, strong precedent can actually inhibit development

    I can’t think of a single useful art whose “development” would be inhibited by this decision. Can you?

  16. Prometheus, of course, has less to do with “abstraction” as it is used in this case and more to do with the patenting of new information itself, via the recitation of the new information in a mental step.

  17. They got it from a Journal of the PTOS article that went through the whole thing step by step. It was published a year or two ago. I found it only mildly convincing.

    Main reason I found it barely convincing is that they try to construct a spectrum of abstractness by putting some abstract things on one side where they start adding in “real” things as they get “less abstract” until they then make a huge jump into things that are totally not abstract but are only abstractly being described. There is a difference between the subject matter being abstract and in the description thereof being abstract. You will see more explication on that point in upcoming cases. Mark my words. People are too confused on that point at present but it is easy to understand and courts will make it clear eventually.

  18. nit-picking my phrasing of an offhand valediction… Who does that?

    Me for one. Others should as well, as your sloppiness leads to your own confusion on other legal matters.

    If you want to offer “offhand valedictions,” you might want to use the term “valediction” properly, as the point of my “nit-picking” wasn’t the valediction, but rather, the tie-in of your (poor) choice of word in that valediction to the gist of the conversation.

    You are trying too hard to be too clever and failing miserably.

    Come back when you have this figured out, or at least can post in some semblance of nonconfusion.

  19. I was never confused.

    OK. But if you knew what I meant all along, then that means you were simply nit-picking my phrasing of an offhand valediction. Who does that?

  20. Really? Where, exactly?

    Here:
    Feb 27, 2012 at 05:35 PM
    Feb 28, 2012 at 09:32 AM
    Feb 28, 2012 at 09:57 AM

    and of course, here:
    Feb 28, 2012 at 11:15 AM

  21. I really liked Myriad’s “levels of abstraction” analogy in its SCOTUS amicus brief in the Prometheus case. Not a panacea, but well-reasoned and workable.

  22. With respect, your comment reveals the difficulty that even you have applying the idea of “abstract” to a brief blog post.

    Really? Where, exactly? Do you disagree that legal relationships are abstract? Do you disagree that a handshake and that shared DNA characteristics are not abstract?

    And once again, so-called “preemption” is based on “a lack of specific utility”, … so in a very real sense, the “abstract/non-abstract divide” you describe IS the “preemption analysis”…

    I’m afraid I don’t get that, either. Legal relationships and contracts certainly have very specific utilities, as they provide persons with very real remedies in the event that obligations established by those relationships and contracts are not met. But the legal relationships and the contracts are still abstract, so I don’t think “wholly preemptive” and “abstract” are coterminous.

  23. just think of how much more quickly we would have so many more Einsteins and so much more promotion of the arts.

    Right, with all those other clever scientists being motivated by Einstein’s threat of an injunction to design around special relativity.

    Do you think he could have gotten a court order for Mercury to cause its perihelion to precess classically during the life of his patent? Who has jurisdiction over that?

  24. I’m sorry that I confused you.

    You mean that you are sorry that you were sloppy. I was never confused. Don’t be confused about just who was confused. And please, apologize for what you mean.

    I don’t know what that means.

    Yes. That is apparent. Obviously, not only are you sloppy and do not have your terms on straight, you are confused in your attempted position taken in your several posts. Clearly then, the problem with your “I don’t think the term “abstract” is that difficult.” is your thinking.

    Come back when you have this figured out, or at least can post in some semblance of nonconfusion.

  25. Further, if you add the fuel of interest to the fire of genius, just think of how much more quickly we would have so many more Einsteins and so much more promotion of the arts. After all, Einstein had his genesis in a patent office.

  26. Brief response for everybody else’s benefit:

    My “feelings” had nothing to do with my comment.

    Paul, precisely what do you think is precedential about this opinion?

  27. Leopold–

    With respect, your comment reveals the difficulty that even you have applying the idea of “abstract” to a brief blog post.

    And once again, so-called “preemption” is based on “a lack of specific utility”, which has been one of the ways in which the term “abstract” has been used by the courts–so in a very real sense, the “abstract/non-abstract divide” you describe IS the “preemption analysis” from which you tried to differentiate it.

  28. Paul–Thank-you for the strong words, they are most welcome.

    My post was made sincerely. I honestly believe that there is nothing of substance in the opinion that can be considered to set a precedent that will bind future decisions.

    Let’s look at the opinion, shall we?

    The published opinion is 13 pages long.

    Page 1 recites simply administrative information.

    Pages 2-5 recite simply background information.

    Page 6 recites simply an overview of statutory and judicial sources.

    Pages 7-9 recite a repetition of the court’s survey of the leading USSC opinions.

    The only potential for anything precedential is in the last paragraph on page 9, and pages 10-13.

    The last paragraph on page 9 presents only an admittedly empty conclusory statement, and a condensation of the court’s construction of the claims.

    There is nothing in the first 9 pages that can be said to be of precedential value.

    This leaves only pages 10-13.

    Of the 2 paragraphs on page 10, the first merely summarizes the positions of the litigants, in their own language.

    Page 10, paragraph 2 describes the invention as “an abstract concept” without providing any reasoning for this conclusory statement. The decision that “mere connections to the physical world through deeds, contracts, and real property cannot transform an abstract concept into patentable subject matter” relies upon the unexamined, and hence unidentified, “abstract concept” in this particular case. As no actual basis for the decision in this paragraph is articulated, it cannot logically form a precedent for any other case presenting a different set of facts.

    Page 11, paragraph 1, is merely a recitation of the conclusory statement made in the preceding paragraph, aggregated with references to other opinions that the court considers in support of their decision in that paragraph; however, there is no analysis or synthesis performed by the court in this paragraph, and it therefore contains nothing of precedential value.

    Page 11, paragraph 2, is a merely an explicit adoption of the un-reasoning provided in the previous section, combined with a brief introduction to following paragraphs. Nothing precedential there.

    We are now down to only pages 12 and 13.

    Page 12, paragraph 1, recites simply the court’s overview of the CAFC opinions in Cybersource and Ultramercial; nothing of precedential value here.

    Page 12, paragraph 2, recites simply the court’s overview of the CAFC opinion in Dealertrack; nothing of precedential value here.

    We are now down to only page 13.

    Page 13, paragraph 2, repeats merely conclusory statements in an abbreviated form, and therefore contains nothing of precedential value.

    Page 13, paragraph 1, is merely conclusory, relying on the unexamined and unidentified “abstract concept” mentioned earlier in the opinion; not only that, but the court exacerbates the lack of precedential substance by again invoking such terms as “meaningful limits”, “significant part”, and “insignificant post-solution activity”, without at all explaining what they mean either generally or as applied to this set of facts in particular. Although the 4th sentence in this paragraph does define the phrase “using a computer”, that definition is limited to the specific facts of this case, as an agreed-upon claim construction.

    Unless I have missed or misconstrued something, I don’t find anything in this opinion that I could use to present to a future court with the suggestion that it should be binding upon that court or panel. The opinion is entirely hollow, vacuous, and insubstantial.

    It’s amusing that you suggested that my “feelings” were somehow “hurt” by the opinion!

    The informational content of my post was that I don’t find there to have been anything of precedential value in the opinion, and that in itself was what was “wrong” about the opinion, in your words.

    As far as the court attempting to apply or develop rules of law, there was no such development in this case that could bind future tribunals. The decision to apply certain rules can be precedential in itself, of course, but those precedents were set well before this case was decided; furthermore, if their application was unique to this case, they are so ill-defined as to be incapable of anything near the commonly-held understanding required for any meaningful “precedent” to be identified with some required minimum degree of precision.

    GIGO therefore appears to be the operative paradigm in this opinion. I’ll go even further, and suggest that the “precedential” opinions upon which this opinion purports to rely also contained little to nothing of worthwhile precedent, which is why all the statements made in this opinion are merely conclusory–because there WAS no particular rule of law articulated in those prior opinions that could be meaningfully applied to the particular set of facts in this case. There was no “application of precedent” in this opinion, merely a parroting of the same hollow and conclusory statements of position made in the earlier referenced decisions.

    This is why patent litigation, and the resolution of a 101 issue in particular, is a crapshoot–because there is actually very little of any meaningful precedential value.

    Briefs are written, and decisions are made, more on the basis of perceived social/cultural drifts, sentiment, and policy initiatives than on any strictly legal basis, and in such a situation, strong precedent can actually inhibit development. Unfortunately, although it may be somewhat easy to figure out in which direction the wind is currently blowing, weather changes quickly.

  29. In my opinion, absolutely. If a new toothbrush or mouse trap is worthy of a patent, e=mc^2 most certainly is. I don’t see any need for it to be tied to computer implementation either. A claim to a method for determining the energy equivalent of a mass of an object (or what ever e stands for) comprising determining the mass of the object and multiplying the determined mass by the speed of light squared should have been patentable at the time.

    It was the most profound discovery in the last and next 100 years. Why shouldnt have AE been entitled to a patent?

  30. Actually – that writing is abstract, as you are merely writing, in the abstract, of something else that you are attempting to capture.

    My apologies. I should have said “Now I’m off to write some claims directed to non-abstract subject matter.” I’m sorry that I confused you.

    I think we have made a whole system that decries this “only at the conceptual level” argument.

    I don’t know what that means.

  31. relationships themselves only exist at the conceptual level.

    I think we have made a whole system that decries this “only at the conceptual level” argument.

    Or perhaps you do not understand what it means to have something “only at the conceptual level.”

    Now I’m off to write some non-abstract claims…

    Actually – that writing is abstract, as you are merely writing, in the abstract, of something else that you are attempting to capture.

    You do not have your terms on straight.

  32. You’re throwing around the word “abstract” like you were a jurist.

    Fair enough, IBP. But despite the weeping and gnashing of teeth that goes on here, I don’t think the term “abstract” is that difficult. Sure, there will be some close calls, but that is what developing case law is for.

    For instance, I referred to “abstract relationships between people.” Maybe there are some close calls, but I don’t think legal relationships are anywhere close to the line – those are obviously abstract, as the relationships themselves only exist at the conceptual level. A handshake is an example of a non-abstract relationship between two people, as is shared familial DNA, I suppose.

    I struggle to see any more difficulty in applying “abstract” then you see in many areas of law. In fact, I think the “abstract”/”non-abstract” divide is a lot more clear than this “preemption” analysis that keeps popping up.

    Just my two cents. Now I’m off to write some non-abstract claims…

  33. The Abstractness of it all.. JUST THE FACTS LEAD IT TO THE TRUTH. AND THE LEMMINGS WILL FOLLOW…….YOU MAY HAVE RUINED MY LIFE. BUT PAYBACK IS A WONDERFUL THING, THAT’S WHAT THE COURTS ARE FOR!

  34. “An entire special was a on PBS award wining Nova series about 5 years ago.”

    From which AI gleaned the entirety of his knowledge of neutrinos. AI you need to go back and watch that program one more time brosensky.

    Also, AI, one does not “rebut” science, and even if one did you certainly do not do it with “citations”, you’d do it with experiments.

    Also, one other thing don’t combine PBS specials. The one special is on NEURONS which are involved with thoughts and the other is on NEUTRINOS which have nothing to do with thoughts. At all.

    And Ned, don’t confuse base AI’s base stu pidity for insanity.

  35. There is no information content in your posting beyond your hurt feelings.

    A malady affecting many more than just Inviting Body Punches, and one respecting neither side of the GD War of Consistent Monikers.

    If we were to follow your advice “yours is a posting that should not have been made,” these threads would be emptied by 90%. The vocal minority’s 60% and those engaged in was with them’s 30%. These numbers have an accuracy better than 92%.

  36. “The problem with the court’s jurisprudence here is that “unpatentably abstract” is not defined.”

    What do you expect with the “fuzzy” Bilski “we know an abstract idea when we see it” approach? The claimed investment tool here is eerily reminiscent of the claimed hedge process in Bilski. What would have been more surprising is if this claimed investment tool had survived the patent-eligibility challenge under 35 USC 101. Let’s face it, any claimed process or system involving financial accounting, financial investments, and the like are going to be “suspect” for patent-ineligibility under the “fuzzy” Bilski approach.

  37. Some of them are better at reading than others. Observe how disparate some opinions are from my own and the actual USSC lawl upon which all this is based.

  38. I think we need to beware what we ask. If we seek a bright line rule, there is a risk that the judges will site it in the wrong case to our lasting detriment. It may be better as here to accumulate experience of cases on one side or the other until either it is appropriate to establish the bright line or experience is sufficient for practitioners to know where they are. Sympathy for judges feeling their way in a difficult area and mindful of the maxim “do no harm” would not be misplaced.

  39. Imagine you were contemplating a petition to the Supremes in this case. You would not get far by merely stating that the opinion is vacuous, and while GIGO is an art-recognized term in the software field it has not been accepted into legal practice.

    There is no information content in your posting beyond your hurt feelings. As such, your friends on this blog are distressed when you are hurt, but are unable to help unless you can tell us what you think is wrong. And if you treat precedental opinions of the CAFC as vacuous rather than trying to figure out their implications and the rule of law that the court was applying or attempting to develop, your professional work is certain to suffer.

    Respectfully yours is a posting that should not have been made.

  40. Leopold, I agree. These claims are like Bilski redux, and I don’t think this case is at all the poster child for 101 outrage.

    Dealertrack, Ultramerical, and Cybersource had much more *interesting* claims.

  41. Be a gentleman for a change.

    After he gets done insulting AI and avoiding discussing things like a legal scholar with case cites.

    Really????

  42. you stop lecturing people about this or that. You are not a god even if you think you are.

    Pot, meet kettle

  43. “I will agree with you that if a claim wholly preempts the unpatentable, it is unpatentable. Wholly preempt does not however help define whether the claim is directed to something that is unpatentable as a matter of law.”

    So then you think that if it wholly preempts it is unpatentable … presumptively as a matter of lawl right? But then somehow the term “wholly preempt” does not help “define” whether the claim is directed to something that is unpatentable as a matter of lawl?

    /facepalm Ned.

    The only possible way that what you’re saying makes any sense, or dollars, is if you mean that the term “wholly preempt” does not help to “define” whether the claim is directed to SUBJECT MATTER that is unpatentable as a matter of lawl. If that is what you are trying to say then ok. Yes, obviously that is true. Other than that, it just looks like you’re a tard. I really don’t even know how to help you.

    In any event, the way you can tell what subject matter is unpatentable as a matter of lawl is by looking to the statute and the exceptions.

  44. Ned: “In the end, if a claim fails the MOT, it fails 101.”

    This is not true.

    Not true in Diehr

    Not true in Bilski

    Not true in CAFC Ultramercial and Research Corp.

    JUST NOT TRUE AT ALL!

  45. You guys are on a personal crusade. You openly admit it

    cf

    There is GD war between the two factions, and you know it.

    W

    T

    F

    Ned, you are at it again.

    QED yourself and your hypocritical messages.

  46. AI: “So, everyone concerned in Bilski, all judges and all justices, all of them, considered the Bilski claims to be directed to a business method. At some point in time, AI, you will just have to accept this simple fact.”

    Where is that commenter that is keeping track of your strawman post? Oh well we will add this to your count later.

    Show me any issued patent and I will show you the business method it is directed to.

    Go ahead…make may day.

  47. In the end, if a claim fails the MOT, it fails 101

    Even though ALL NINE JUSTICES said this was not to be the case in Bilski.

    So very sad.

  48. AI,

    “35 U.S.C. 101 Inventions patentable.

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Notice the word “new.”

    AI: Ned, The word new in the statute at 101 does not mean the same as the use of the word new in 102. ( Don’t make me quote Diehr because I will open up a can on you). You w’ere wrong to ever imply such in ANY way in the first place. So just stop doing it.

    There is no point of novelty test at 101.

    There is no dam dissection allowed PERIOD.

    These are just two facts you must learn to accept.

    So deal with it.

  49. Ned: First of all, my post at Feb 27, 2012 at 05:58 PM was in reply to Fish Scales, not you. So for you to jump in with as a personal attack no less, with completely uncalled for and says something about your desperate desire for my attention.

    Second, I am your intellectual superior when it comes to business methods and 101 case law . Not because I say so. But because you have lost every debate we have had on this topic since BILSKI Vs. KAPPOS, and you continue to lose every time you post.

    This is what your colleagues say on this blog to you directly. And your response is to suddenly accuse them of all being me, even though you converse with them ( e.g.anon ) on many different topics and threads I don’t even comment on.

    For you to continue to rant and attack every time I make a post says more about you than it does me, or any commenter on this blog.

  50. Ned: Do we need any more proof of AI’s complete insanity?

    AI:Ned, the existence, behavior, speed and indeed mass of Neutrino particles is well established science. Nobel prizes have been awarded for the ground breaking research as early as 2000 IIRC. An entire special was a on PBS award wining Nova series about 5 years ago.

    If you want to rebut any of the science then please do so with citations.

    Because Just like in law, simply calling someone a name does not make you smarter or right.

  51. Anonymous “So if a scientist comes up with a new scientific theory that comes with a formula (e.g., something along the lines of e=mc^2 or f=ma), he should be able to get a patent that claims using a computer to carry out the formula?”

    Hmmm…well I am an Actual Inventor so I can answer from that perspective. So….

    “If an Actual Inventor comes up with a new business method/theory for curing rubber that comes with a formula (e.g., Using the Arrhenius equation –k=Ae -Ea/RT , which may be restated as ln(v)=CZ+x –, he should be able to get a patent whose claims include using a computer to carry out the formula”

  52. AI, I will agree that it was the dissents in Bilski, both at the Supreme Court and the two at the Federal Circuit, would have denied eligibility because the claims were directed to a business method. The Kennedy majority disagreed, not because the claims at issue were not directed to a business method, but because they did not believe that congress had categorically excluded business methods from eligibility.

    So, everyone concerned in Bilski, all judges and all justices, all of them, considered the Bilski claims to be directed to a business method. At some point in time, AI, you will just have to accept this simple fact.

  53. AI, if you read what I have posted, I point out that the courts are not relying on the MOT is so many words. Nevertheless, they are doing so in reality. They are simply masking their disregard of the Bilski majority by using magic words, such as “abstract” and “wholly preempt.”

  54. AI said,

    “MM, while the mere concept of real estate investment tools may be abstract, the physical acts of applying real estate investment tools are not abstract.

    “On a quantum level what is basically happening is the thought plus the act is accelerating neutrino particles close to the speed of light. As these particles speed up time slows down and mass is formed.

    So in actuality the process is as useful and real as the hammers, screwdrivers, wrenches, and shovels that you can drop on your foot.”

    Do we need any more proof of AI’s complete insanity?

  55. AI,

    “35 U.S.C. 101 Inventions patentable.

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

    Notice the word “new.”

    However, what I advocate is that the courts stop comparing old and new elements as a part of 101 analysis. Novelty should have nothing to do with 101. That is my view. (I will note, that Rich also had this view.)

    In the recent oral argument at the SC involving Prometheus, Kennedy acknowledge that Bilsi might leave one with the impression that novelty was a component of its analysis when they noted that hedging was notoriously old. Why did they say that in the most crucial paragraph of its holding if it was unnecessary?

  56. AI, I will begin to treat you with some respect the day you stop lecturing people about this or that. You are not a god even if you think you are.

    If you have an opinion on something, say that it is your opinion. If you disagree with someone, say that you disagree. Be a gentleman for a change.

  57. IBP, well the real problem is the lack of a bright line rule.  The Supreme consistently endorse the MOT, but refuse to agree that it is the exclusive test.  

    Let us just say this:  If a claim fails the MOT, the claim for all practical purposes is finished.  In reality, the burden shifts to the applicant/patentee to justify the claim if he or she can.  The court merely camouflages its use of the MOT by careful use of magical words, such as "abstract" and "wholly preempt."  These words are in reality like the magician's puff of obscuring smoke behind which the magician/judge performs the real "magic."  So long as one understands the "wink" "wink" going on here, there should be no problems in coming to the right result when one is considering the validity of a claim for an opinion or otherwise.

  58. Anonymous has replied to your comment:"I have argued elsewhere that Congress's intent shouldn't matter because they clearly are not intelligent enough to know what's in the bills that they pass."

    Is that what Scalia actually meant?

  59. I, too, highlighted that passage in the opinion…except my brief note about it read: “merely conclusory”

    I still believe the ongoing CAFC precedent to be the writing of inadequate opinions in patent cases.

  60. Ned, interesting that you never challenge me to cite case law, like I do you. Heck even on this post you could have challenged me to post the list so the discussion could have progress on the facts. Instead you launch into preemptive personal attacks. Hmmmm… I wonder why?

  61. Ned:”At a minimum, it appears that the views of Mayer, Dyk, Linn, Stevens, Ginsberg, Breyer and Sotomayor are prevailing regardless that they were ALL in dissent in Bilski.”

    Talk about a reality distortion field!

    As it stands now Diehr is controlling case law and the minority in Bilski has not become the majority in any Supreme Court case.

    Until that changes any “Actual Inventor” with will and the guts to go to the Supreme Court will certainly prevail, if not before.

  62. 6, I think we are in agreement.  But I am not sure.  I will agree with you that if a claim wholly preempts the unpatentable, it is unpatentable.  Wholly preempt does not however help define whether the claim is directed to something that is unpatentable as a matter of law.

    I think that is the point of Dennis' post as well.

  63. “You bicker for the sake of bickering and absolutely refuse to engage is serious intellectual discussion.”

    Ha! This from the person that makes Bart Simpson type insults when asked for legal citations!

  64. There is no war. Minority opinions and occasional wrong decisions by judges on lower courts does not change the law as set by the majority on the Supreme Court. Only a fundamentalist would characterize such actions as a war.

  65. So if a scientist comes up with a new scientific theory that comes with a formula (e.g., something along the lines of e=mc^2 or f=ma), he should be able to get a patent that claims using a computer to carry out the formula?

  66. Ned: “As per Benson, physicality (in the result?) is the clue to patent eligibility.”

    AI: “The clue” is NOT “the answer”. And a clue is NOT a test. And if you insist that it is please answer the question you have long ducked:

    How does one pass a clue?

    ::The silence contunues::

  67. 1. Benson has been cabined by Diehr.

    2. Anyone that cites Malcolm for anything but being a troll can’t be taken seriously.

  68. Ned: “Ditto novelty, another requirement of 101″

    AI: Once again, cite please?

    ::once again, no cite::

  69. AI to this day will not acknowledge that the claims in Bilski were directed to a method of doing business per se and not to any technology that was useful in implementing a business method. Any and all effort to get him to concede this simple point ends in major goalpost moving, strawman production, and personal assaults by AI and his fellow sock puppets, which might be AI himself in various sock puppet guises.

    I can see it beginning once again.

  70. Ned in the time you took to post an insult you could have cited case law to refute my post.

    The fact that you didn’t or couldn’t speaks volumes.

  71. Actual Inventor, I might ask you to give us notice once you graduate from the 3rd grade. You clearly have not learned how to read and understand the English language.

    If you haven’t noticed yet, I have called for the courts to stop addressing novelty issues as a part of patentable subject matter analysis and to confine issues of novelty to analysis under section 102/103/112. I have been doing so consistently since the government brief filed in the Supreme Court in the Prometheus case.

    But as always. You do not deal in what I say. You deal in what you think I say. The two are not the same thing, at all; which illustrates your problem with reading comprehension.

  72. MM: There were no “falsehoods” in my “argument”, Lester.

    AI: I am a bit confused as to what you said MM. Is the following your quote?

    “Indeed, “real estate investment tools” are abstractions. They don’t exist in the physical world like other “tools” that we are all familiar with, e.g., hammers, screwdrivers, wrenches, shovels, etc. “Obligations” aren’t articles of manufacture or compositions. Methods for creating “obligations” between parties do not merit patent protection because there is no “progress” in the useful arts that is being promoted. Issuing patents on such methods only blocks the ability of others to freely engage in legal transactions.”

    If the above is your quote you are wrong on so many levels here. Let’s start with just the first sentence.

    “”Indeed, “real estate investment tools” are abstractions. They don’t exist in the physical world like other “tools” that we are all familiar with, e.g., hammers, screwdrivers, wrenches, shovels, etc. ”

    MM, while the mere concept of real estate investment tools may be abstract, the physical acts of applying real estate investment tools are not abstract.

    When the concept is reduced to practice in a series of objectively measurable steps, that produce the same result, we now have an application of a concept.

    On a quantum level what is basically happening is the thought plus the act is accelerating neutrino particles close to the speed of light. As these particles speed up time slows down and mass is formed.

    So in actuality the process is as useful and real as the hammers, screwdrivers, wrenches, and shovels that you can drop on your foot.

    While it may be true that in the 1800′s the only thing that was considered real was what you could hold in your hand, that mind set was shattered and changed after 1925 by modern physics.

    Only someone living in the dark ages or willfully ignorant would advocate freezing the progress of the “Useful Arts” to inventions and knowledge of the iron age.

  73. Lester: No one knows what you think until you act on those thoughts

    False. Try to keep up with the science, Lester.

    I see know harm in allowing methods that read on mental steps to be patented.

    Of course you don’t, Lester. That’s because you’re the ultimate patent txxbagger.

    you can’t be sued for merely thinking

    But of course nobody who thinks is “merely thinking”, Les. We’re all transforming matter, all the time, before, during and after we think. Are you suggesting that we can’t be sued for merely transforming matter and thinking about it? Where is that in the statute, Lester?

  74. Les, you might be right there. I suggested elsewhere that the Feds have come down hard on BMPs, but have been somewhat more favorable to technology-relatied inventions. Manipulation of data in some transformative fashion may not strictly pass the MOT, but nevertheless it may be patentable.

    Someone once pointed to claim 5 of Morse’s patent. It was approved by the Supreme Court. It read,

    “Fifth. I claim as my invention the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.”

  75. Ned, show with proper citation where the Court agrees that you can import novelty into 101.

    :: Ned Silenced By The Call For Citations::

    As usual.

  76. As long as you take the claims as a whole there is no problem. And no getting around the Diehr doctrine, at the SCOTUS level.

  77. MM: What’s important to know and ALWAYS remember is that the Court made a judicial exception to “purely” mental processes. A physical application of a concept is no longer a mental process and is therefore patentable subject matter under 101, 102, and 103.

    Until thats changed it’s still the law.

  78. The Q, I have my own views on this, but I think the Fed. Cir. continues to apply the MOT, just as did the SC in Bilski, without ever agreeing that they are applying the MOT.

    In the end, if a claim fails the MOT, it fails 101. But the courts have to use the magic words of Benson and Bilski, it has to use the magic word “abstract” almost as if it were a required incantation similar to the use of obscure Latin phrases that somehow causes a frothing brew to assume a new form and shape (my apologies in advance to Catholics who actually believe this this to be true in connection with transforming a host and some wine into the body and blood of Christ.)

  79. How many people make their own personal spread sheets.
    How many people use it in the same sense as a Ledger.
    Wouldn’t that Software they speak of be in the same sense a Ledger that can be done on paper?

  80. AI Correction: If indeed this is what this particular panel of the CAFC did or upheld then it’s quite illegal and will be overturned on appeal to the Supreme Court of the United States.

    Just like Bilksi.

    BWHAHAHHAHAHAHAHAHAHAHAHHAHAHAAHHAHA!!!!!!!!!!!!!

  81. identifying just a few of the falsehoods in your argument

    There were no “falsehoods” in my “argument”, Lester.

  82. No Ned, you may not.

    There is no requirement in MOT that physical things be manipulated. Only that articles be transformed. Articles include things. A thing is: “a matter of concern…2b: a product of work or activity…3a: whatever exists or is conceived to exist as a separate entity or as a distinct and individual quality, fact, or idea…”

    A bit of data can be a product of work or activity and is conceived to exist distinct from other bits.

    Therefore, a transformation of data meets the transformation leg of the MOT.

    As for mental steps, I don’t see that prohibition in the statute and I see know harm in allowing methods that read on mental steps to be patented. No one knows what you think until you act on those thoughts, so you can’t be sued for merely thinking.

  83. Correction: If indeed this is what this particular panel of the CAFC did or upheld then it’s quite illegal and will be overturned on appeal to the Supreme Court of the United States.

  84. “The problem with the court’s jurisprudence here is that “unpatentably abstract” is not defined. Rather, the court simply recited the core function of the invention and the conclusion that it is abstract.”

    I have not read the case the panel is discussing. But I do agree that merely reciting the concept of an invention, then declaring it abstract without looking at the application is a problem.

    If indeed this is what this particular panel of the CAFC did or upheld then it’s quite illegal and will be overtuned on appeal to the Supreme Court of the United States.

  85. Yes, but I was addressing your assertion:

    “The CAFC’s explanation for finding the claim ineligible under 101 seems perfectly straightforward:”

    regarding:

    “American Master Lease (AML) owns a patent that covers a method of creating a tax-deferred real estate investment instrument. U.S. Patent No. 6,292,788.”

    By identifying just a few of the falsehoods in your argument.

    Didn’t you recognize your own falsehoods? Didn’t you remember the context of your own falsehoods?

  86. What point?

    The Courts already take the claim as a whole at 102 and 103.

    At 102 if every step in the claim is performed in the exact order, in a single prior art reference then it is not new/novel.

    There is no dissection allowed period.

    The legal important to remember here is that at 102 the novelty is in the new use which can be a process by itself, and not limited to a process tied to a machine.

    Now that’s the law according to the statute, and the Supreme Court.

    Anyone saying anything different is merely talking about their own philosophy of what the law should be and not what the law actually is.

    This point can’t be stressed enough, especially on this blog.

  87. Leopold–

    The only thing that was made clear in Bilski was that nothing is clear.

    You’re throwing around the word “abstract” like you were a jurist.

    I will absolutely agree, however, that this opinion was a no-brainer!

  88. “Fort Proper-ties counters that under Bilski, 130 S.Ct. at 3218, the invention’s intertwinement with deeds, contracts, and real property does not transform the abstract method into a patentable process.”

    Why not?

  89. Wow. I would have thought that this opinion/result was a no-brainer. I thought that the Supreme Court in Bilski made it pretty clear that you can’t patent a process that does nothing more than define abstract relationships between people. But judging from the comments here, it wasn’t clear at all. How about that…

    (And no, an obligation is not an article of manufacture – a contract is not the obligation, but a description of the obligation, just as a deed is not the property or the ownership of the property.)

  90. “So you say.”

    Actually the statute says so.

    “…but there needs to be an actual advance to the computer arts…”

    No. There does not.

  91. Paul, by it terms, the new statute regarding tax avoidance inventions applies only to applications pending or patents issuing after the effective date of the AIA.

  92. Paul, you got it, and of course, I fully agree.

    At a minimum, it appears that the views of Mayer, Dyk, Linn, Stevens, Ginsberg, Breyer and Sotomayor are prevailing regardless that they were ALL in dissent in Bilski.

    It remains to be seen whether the courts will authorize or exclude claims to technology regardless of whether they pass the MOT. I think that Rader’s opinion in Ultramercial may indicate that the jury is still out on that one.

  93. Well, I have now read the opinion.

    The opinion is vacuous.

    Really, what else can be expected from the CAFC? Unfortunately, nothing.

    What I especially appreciate is the fact that the opinion is marked “precedential”.

    And what, precisely, is the precedent that the CAFC considers to have been set in this opinion? GIGO?

  94. I take Dennis’s post to say that it’s more than just “the precise location of the dividing line” that’s unsettled.

    Courts are supposed to decide cases based on articulable principles. They don’t have to specify the line, or resolve every hypothetical case not before them, but if you agree with Dennis that “the court simply recited the core function of the invention and the conclusion that it is abstract,” then the panel fell short here. They don’t have to write an opinion at all, of course, but when they do, they should explain how they reached their conclusions.

    That said, this part of the law is not the Federal Circuit’s fault. The en banc court in Bilski tried to derive an actual rule from the Supreme Court’s precedents, came up with the machine-or-transformation test, and the Supreme Court rejected it and replaced it with the current confusion. Dennis says this: I believe that all three of us see the current jurisprudence on abstract ideas as problematic. It leaves the courts and patent examiners without any real standards for determining an outcome other than asking whether the particularly claimed invention is “too much like Bilski, Benson, or Flook?”

    This is more or less what the Supreme Court told lower courts to do in Bilski, where its reasoning was essentially is the claimed invention “too much like Benson or Flook,” or is it enough like Diehr? The Supreme Court said this: “Rather than adopting categorical rules that might have wide-ranging and unforeseen impacts, the Court resolves this cas enarrowly on the basis of this Court’s decisions in Benson, Flook, and Diehr, which show that petitioners’ claims are not patentable processes because they are attempts to patent abstract ideas.”

    The courts are still struggling with this, and I don’t know of a clear answer. Maybe the best idea is to do what I think CJ Rader suggested, and avoid 101 issues wherever possible.

  95. I have argued elsewhere that Congress’s intent shouldn’t matter because they clearly are not intelligent enough to know what’s in the bills that they pass.

  96. “Whether it was, or was not, an “advance in computer technology” is not a 101 issue.”

    So you say. But then on the other hand we have courts rattling it off like it means something. Specifically they’re stating that as long as your claim involves advances in computer technology then you pass 101. Which, I hasten to add, I agree with, but there needs to be an actual advance to the computer arts, not the, as MM would say, “computer implemented garb age” arts. If you just made a new computer then sure thing, stand up and get a new patent. If you’re just reprogramming the one on your desk, take a seat Einstein. And if the court has to invent your “intricate and complex interface” for you I believe you should also be taking a seat rather than standing up.

  97. How did the claims here avoid the law which has already been in effect since the AIA was enacted?
    “Public Law 112-29 Sec. 14
    (a) In General- For purposes of evaluating an invention under section 102 or 103 of title 35 .. any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.
    (b) Definition- For purposes of this section, the term ‘tax liability’ refers to any liability for a tax under any Federal, State, or local law, or the law of any foreign jurisdiction, including any statute, rule, regulation, or ordinance that levies, imposes, or assesses such tax liability.
    (c) Exclusions- This section does not apply to that part of an invention that–
    (1) is a method, apparatus, technology, computer program product, or system, that is used solely for preparing a tax or information return or other tax filing, including one that records, transmits, transfers, or organizes data related to such filing; or
    (2) is a method, apparatus, technology, computer program product, or system used solely for financial management, to the extent that it is severable from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax advisor.”

  98. AAA JJ, 101 has a number of requirements but no conditions. It should suffice if the claims nominally cover a machine, process, artcle or compostion, nominally are new, and nominally are useful.

    Whether the claims are directed to something useful can be tested under 112, p. 1, which under 282 is an expressed condition for validity, while 101 is not.

    Ditto novelty, another requirement of 101, but an expressed condition for patentability and validity under 102/103.

    IMHO, we should stop addressing in 101 issues that can be addresses, and perhaps more simply, but that is not the point, under 102, etc.

  99. “abstract”
    “pre-empt”
    “insignificant post-solution activity”

    Get real. What a bunch of bunk.

    If you took 10 CAFC or USSC justices, isolated them in individual rooms, and asked them the exact same questions regarding the fundamental principles and tests of patent law, you would get substantively widely disparate answers.

  100. Caveat: I have not read the opinion.

    Dennis: “The problem with the court’s jurisprudence here is that “unpatentably abstract” is not defined.”

    IBP: The solution as I presented it is recorded on the following patently-o thread: link to patentlyo.com

    Expose on anticipation, obviousness, inherency, and genus/species coming soon, for all of you to shred, on the “Whither Obviousness” thread here: link to patentlyo.com

  101. The ratio decidendi, so far as I can see, is that the claimed subject matter is insufficiently tied to the physical world, as in Bilski. It seems that the test is a matter of degree where it is impossible to define precise boundaries.

    It was pointed out in Bilski that commodities and money were insufficient ties to the physical world, and the same was held to be true in the present case for deeds, contracts and real property.

    If we look at the recent cases, however, there are instances demonstrating a common pattern:

    Bilski – risk hedging
    Cominski – mandatory arbitration resolution
    Schrader – bidding at an auction
    Dealertrack – applying for credit

    It appears that if the claimed subject matter is entirely in the field of business administration, then the claim is likely to be held unpatentable. At the risk of provoking the more excitable amongst the contributors to this blog, the position in Europe is the same, and it appears from current US jurisprudence that our prohibition is not wholly irrational.

  102. Whether it was, or was not, an “advance in computer technology” is not a 101 issue. There is no requirement in 101 that an invention be an “advance,” only that it be useful.

  103. 6, It is clear to me that the rest of the court continues to apply the MOT, but that Rader and Newman, at least, are adamantly opposed to the MOT.

    The silent war will continue Rader until really screws up and finds something patentable that would not pass the MOT.

  104. I must have missed the part in the Ultramercial claim that involved an “advance in computer technology” because it looked to me like they were just trying to patent the use of the watching of an advertisement to pay for some DRMed content. How that is an “advance in computer technology”

    “Any time a computer does something that isn’t exactly the same as something that was done in the past, that is an advance in computer technology.”

    /patent txxbxgger off

  105. Case in point about what you sockpuppets are all about: Read your moniker here. You guys are on a personal crusade. You openly admit it. You bicker for the sake of bickering and absolutely refuse to engage is serious intellectual discussion.

    QED

  106. See, the Benson quote above. link to patentlyo.com

    Next see Malcolm post at
    link to patentlyo.com

    In practice, it appears that when the claim as whole manipulates abstract intellectual concepts it is abstract. If it instead manipulates physical things (as in the MOT) to cause a new physical result, it is not abstract.

    As per Benson, physicality (in the result?) is the clue to patent eligibility.

  107. (Yet) another 101 thread to rescue Ned from the debacle he put himself into on the B-Claim thread, which in turn was to rescue him from the debacle on the 3 questions Anon thread.

  108. “while the Ultramercial claims required “an extensive computer interface.””

    Right, an interface that Rader invented himself, after the fact.

  109. Oh man, from the decision, in characterizing Ultramercial:

    “The addition of the computer to the claims was not merely insignificant post-solution activity; rather, the invention itself involved “advances in computer technol-ogy,” and it was thus sufficient to qualify the claims for patent eligibility under § 101. Id. at 1329.”

    I must have missed the part in the Ultramercial claim that involved an “advance in computer technology” because it looked to me like they were just trying to patent the use of the watching of an advertisement to pay for some DRMed content. How that is an “advance in computer technology” is quite beyond me. Maybe the people over in the “computer technology” field could weigh in, the guys over at Seimens, HP, and the sort would not be able to recognize what the “advance in computer technology” was. They’d just be like, “o, so you decided to offer them access to your DRM content in exchange for viewing an ad? Wonderful, but where is the “computer technology” you’re advancing?”

  110. Less I said a method of generating documents might be patentable, if its new and not obvious.

    No, you didn’t. Nice try, though. Like I said, Lester: you are a dissembler and perhaps the least honest patent txxbxgger to post here, ever, and that’s saying something.

    Here’s what you did say:

    “Obligations” are articles of manufacture.

    Not necessarily. And since when do ineligible abstractions like “obligations” become patent eligible merely by recording them on an old but patent eligigle medium? Or are you saying that only some “articles of manufacture” are patent eligible? Is that what you are saying, Les? Which ones are patent eligible, and which aren’t, Les?

  111. Dennis, can you post the transcript of the discussion please.

    “At a conference this weekend, Chief Judge Rader, USPTO Solicitor Chen, and I held an interesting discussion on drawing that line.”

  112. ” Flook seems to suggest that “wholly preempt” is not a requirement.”

    Correct. That is what the Flook decision gets to later on after the quotes you just told us about for the one millionth time.

    “I agree with you that if the claim is to subject matter not eligible for patenting as a matter of law (laws of nature, things of nature, and mental processes and abstract intellectual concepts), then limiting the claim to a particular use does not affect result.”

    Good. Now stop trying to misconstrue FN 11 into something which it most certainly is not. Things which FN 11 most certainly are not:

    1. Anything other than a restatement of what I wrote in the comment above.

    And FFS stop citing it unless you’re only wanting to show what I just stated in the previous comment above.

    “But Flook does affect the “wholly preempt” aspect of Benson because, per Flook, wholly prempt is not really a requirement.”

    No kidding? It isn’t a requirement to kill a claim, but it is deadly in and of itself.

    “”Wholly prempt” has nothing to do with eligibility.”

    Incorrect. The wholly preempt situation is the worst situation you could find yourself in. Not wholly preempting but finding yourself in the situation Flook worked himself into by using field of use limitations is the next worse situation. Both situations are deadly and the former is much easier to spot than the later usually.

    Make no mistake, the claim in Benson did LITERALLY wholly preempt whereas the claim in Flook did not. Do not mistake what is said in Flook for a statement that this is not the case. Which is what you are doing, so stop it.

    That’s all I’m going to say on this matter for you Ned, I’ve been over it and over it and you always fall back into your old interpretations even as you appear to to grasp the correct interpretations just the month or so before.

  113. Les, may I suggest that it is truly immaterial whether the contracts, or pens, or paper, or telephones, or internet, or computers used to carry out the transaction are physical. The real question is whether the claimed subject manipulates abstract concepts, which are mental steps (that can be perform mentally or by machines), or whether it manipulates (as in the MOT) physical things.

    Regardless of how the court tries to hide the pea in its 101 shell game, it continues to use the MOT.

  114. MM, one can effectively deal with claims to mental processes under 102

    And 103. The analysis is pretty much the same either way so who gives a shxt?

  115. MM: So you would be fine with patents to purely mental processes, sockie?

    AAA JJ said in reply to MM: Sure.

    A shocking moment of candor. But it’s great to know where you stand, sockie, even if you are so far out in left field that even the mosquitoes aren’t stxpxd enough to go there.

  116. “Documents are now eligible for patent protection!!!!”

    I didn’t say that. I said a method of generating documents might be patentable, if its new and not obvious.

    Also, your childish name calling does not really refute what I said.

  117. Less Of course these “Obligations” are articles of manufacture. They are legal documents. They certainly don’t occur in nature..

    LOL. The King of Patent Txxbxggers has spoken! Documents are now eligible for patent protection!!!!

    the art of real estate financing

    ROTFLMAO. Beyond parody.

    This is one falsehood after another.

    Says the master dissembler who never met a patent that he didn’t want to fluff.

  118. 6, Flook seems to suggest that “wholly preempt” is not a requirement. I agree with you that if the claim is to subject matter not eligible for patenting as a matter of law (laws of nature, things of nature, and mental processes and abstract intellectual concepts), then limiting the claim to a particular use does not affect result. But Flook does affect the “wholly preempt” aspect of Benson because, per Flook, wholly prempt is not really a requirement. Limiting the claim to this use or that use does not change the result. “Wholly prempt” has nothing to do with eligibility.

  119. “Indeed, “real estate investment tools” are abstractions. They don’t exist in the physical world like other “tools” that we are all familiar with, e.g., hammers, screwdrivers, wrenches, shovels, etc. “Obligations” aren’t articles of manufacture or compositions. Methods for creating “obligations” between parties do not merit patent protection because there is no “progress” in the useful arts that is being promoted. Issuing patents on such methods only blocks the ability of others to freely engage in legal transactions.”

    This is one falsehood after another.

    Of course these “Obligations” are articles of manufacture. They are legal documents. They certainly don’t occur in nature. Such a patent would promote advancement in the art of real estate financing in the same way a patent for a method of making an antibiotic promotes the advancement of the art of drug manufacture (while at the same time blocking others, for a limited time, from making the drug).

  120. Les, agreed. These requirement long predated the ’52 Act and there is nothing said about them in the ’52 Act. But, as I suggested elsewhere, congress may have specifically intended to remove patentable subject matter from validity by not including it as a listed condition for invalidity. Why they would have done that, unless it was a flagrant mistake, without intending to remove patentable subject matter from consideration by the courts, is something worthy of consideration.

  121. The rule against claims which pre-empt or provide protection to mental processes is a very clear test, as I’ve outlined here dozens of time. At the same time, it’s a narrow test that doesn’t readily capture and snuff all of the irredeemable horseshxt that’s out there.

    Case in point:

    American Master Lease (AML) owns a patent that covers a method of creating a tax-deferred real estate investment instrument. U.S. Patent No. 6,292,788.

    The CAFC’s explanation for finding the claim ineligible under 101 seems perfectly straightforward:

    Specifically, like the invention in Bilski, claims 1-31 of the ’788 patent disclose an investment tool, particularly a real estate investment tool designed to enable tax-free exchanges of property. This is an abstract concept.

    Indeed, “real estate investment tools” are abstractions. They don’t exist in the physical world like other “tools” that we are all familiar with, e.g., hammers, screwdrivers, wrenches, shovels, etc. “Obligations” aren’t articles of manufacture or compositions. Methods for creating “obligations” between parties do not merit patent protection because there is no “progress” in the useful arts that is being promoted. Issuing patents on such methods only blocks the ability of others to freely engage in legal transactions.

    Under Bilski, this abstract concept cannot be transformed into patentable subject matter merely because of connections to the physical world through deeds, contracts, and real property. . . .

    And the Dierhbots can continue to sxxk on it. LOL.

  122. Lulz. Nobody is going to copy your “works” as they are gibberish that no judge or attorney would put into anything that would actually be part of a public record. And even if they did, you wouldn’t do anything about it. Now get back to your counts.

  123. Les, you make an excellent point! It would be far simpler for the courts to say that a claim nominally directed to a new use of an old machine defines patentable subject matter BY STATUTE.

    Then, move on to whether the use is “new” (or non obvious, etc.) under the clause laying out the “Conditions” for patentability (and validity).

  124. A passage that Ned still doesn’t correctly understand.

    For the 1 millionth time Ned, Footnote 11 was the court telling the patentee that his argument was UNPERSUASIVE because limiting a process claim to a specific end use which happens to be the only specific end use of the judicially except matter in the case is just as bad as a situation where they didn’t recite the one specific end use and simply claimed the whole judicial exception.

    It is a very simple concept. You may not have a patent on a judicial exception regardless of whether you recite the sole use of the judicial exception in the claim because you’re still patenting every single use of the judicial exception since there is only one.

    How Ned can still not understand this simple passage is beyond me. Especially after I’ve explained it to him 100000x and after he has presumptively read the passage more than 2x. Apparently believing that the author of one opinion would come a few years later and note that his own reasoning made 0 sense to him without going out of his way to explicitly call himself a tard makes Ned feel all warm and happy inside.

  125. “The mathematical procedures can be carried out in existing computers long in use, no new machinery being necessary”

    So what?

    35 U.S.C. 100 Definitions.

    When used in this title unless the context otherwise indicates -

    (a) The term “invention” means invention or discovery.

    (b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

  126. Dennis, we have a clue when the court said it agreed with Fort when it said,

    “Fort Properties disagrees, arguing that the claimed method of aggregating property, making it subject to an agreement, and then issuing ownership interests to multiple parties consists entirely of mental processes and abstract intellectual concepts. Fort Proper-ties counters that under Bilski, 130 S.Ct. at 3218, the invention’s intertwinement with deeds, contracts, and real property does not transform the abstract method into a patentable process.

    We agree with Fort Properties.”

    “Mental Processes”

    “Abstract Intellectual Concepts”

    Cf. Benson:

    “The conversion of BCD numerals to pure binary numerals can be done mentally through use of the foregoing table. The method sought to be patented varies the ordinary arithmetic steps a human would use by changing the order of the steps, changing the symbolism for writing the multiplier used in some steps, and by taking subtotals after each successive operation. The mathematical procedures can be carried out in existing computers long in use, no new machinery being necessary. And, as noted, they can also be performed without a computer.

    “…Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” (Emphasis supplied.)

  127. Les, statute?

    The requirements of statutory subject matter looooooong predate the ’52 act. There is nothing in the ’52 act that clearly indicated* that Congress intended to overrule this jurisprudence except to the extent that certain subject matter was actually defined in Section 100.

    [*I have argued elsewhere that Congress did intend to overrule any patentable subject matter inquiriy when it EXCLUDED 101 from invalidity in new Section 282, which expressly, by terms, applies to only 102/103/112 and 251.]

  128. Everyone, I think they have. Even Flook commented that Benson’s preemption test made no sense. See, Flook at note 11.

    “Respondent correctly points out that this language does not apply to his claims. He does not seek to “wholly pre-empt the mathematical formula,” since there are uses of his formula outside the petrochemical and oil refining industries that remain in the public domain. And he argues that the presence of specific “post-solution” activity – the adjustment of the alarm limit to the figure computed according to the formula – distinguishes this case from Benson and makes his process patentable. We cannot agree.

    “The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean Theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques.11 The concept of patentable subject matter under § 101 is not “like a nose of wax which may be turned and twisted in any direction * * *.” White v. Dunbar, 119 U.S. 47, 51.

    Note 11.

    “It should be noted that in Benson there was a specific end use contemplated for the algorithm – utilization of the algorithm in computer programming. See Application of Chatfield, 545 F.2d 152, 161, 191 USPQ 730, 738 (CCPA 1976) (Rich, J., dissenting). Of course, as the Court pointed out, the formula had no other practical application; but it is not entirely clear why a process claim is any more or less patentable because the specific end use contemplated is the only one for which the algorithm has any practical application.”

  129. why hasn’t anyone mentioned this little problem before?

    People have. You were not paying atention.

  130. “When viewing the claimed invention as a whole, the physical activities involving the deeds, contracts, and real property are insufficient to render these claims patentable. ”

    When did physical activities become a requirement?

    STOP THE JUDICIAL ACTIVISM! READ THE STATUTE!

  131. “preemption” is largely unhelpful because it falls into the same line drawing trap: A patent is only useful if it sufficiently preempts (i.e., excludes) others, but at some point too much preemption renders a claim unpatentably preemptive.

    I’ve been hearing a lot of this recently, that “preemption” is inherently what all claims do, so it’s a useless quality for defining subject matter eligibility. “Preemption” has been around since Benson; why hasn’t anyone mentioned this little problem before?

  132. untangible = you cannot touch it? take a picture of it?

    Trolls will say you can take pictures of “information”, in fact it is just the carrier.

  133. “It leaves the courts and patent examiners without any real standards for determining an outcome other than asking whether the particularly claimed invention is “too much like Bilski, Benson, or Flook?” ”

    Which is why the “current jurisprudence” and the jurisprudence to follow should continue to copy, lock, stock and barrel, my own writings on the matter. And they should be sure to stay far away from the Rader/Research Corp position of “manifestly abstract” when such things have no basis in the law nor are even close to what the law is talking about. And they should not also forget that the USSC invited them to tighten up restrictions on patent eligible subject matter, not loosen them.

    The Courts have my permission to copy my works.

    That said, authors who then write about the court’s opinions that copy my works are however excluded under any applicable copyright. And I will go after them with the full force of their own lawls unless they provide a proper attribution. Even with a proper attribution I’ll probably come after them half way. Because I’m generous if they are.

  134. The role of the courts, as we know, is to decide cases that come before them and not hypotheticals. Even though the precise location of the dividing line may not have been completely settled, the existence of such a line is established and this subject matter is clearly on the wrong side of it.

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