Dealertrack v. Huber: Unpatentable “computer aided” claims

By Jason Rantanen

Dealertrack v. Huber (Fed. Cir. 2012) Download 09-1566
Panel: Linn (author), Plager (concurring in part and dissenting in part), and Dyk

The Federal Circuit's opinion in Dealertrack adds to the evolving law on subject matter patentablility of computer-related inventions. It should be read in connection with two other recent decisions in this area, Ultramercial v. Hulu, 657 F.3d 1323 (Fed. Cir. 2011) and CyberSource Corp. v. Retail Decisions, 654 F.3d 1366 (Fed. Cir. 2011).

At issue was the subject matter patentability of claims 1, 3, and 4 of Patent No. 7,181,427.  Claim 1 is representative:

1. A computer aided method of managing a credit application, the method comprising the steps of:
[A] receiving credit application data from a remote application entry and display device;
[B] selectively forwarding the credit application data to remote funding source terminal devices;
[C] forwarding funding decision data from at least one of the remote funding source terminal devices to the remote application entry and display device;
[D] wherein the selectively forwarding the credit application data step further comprises:
[D1] sending at least a portion of a credit application to more than one of said remote funding sources substantially at the same time;
[D2] sending at least a portion of a credit application to more than one ofsaid remote funding sources sequen-tially until a finding [sic, funding] source returns a positive funding decision;
[D3] sending at least a portion of a credit application to a first one of said remote funding sources, and then, after a predetermined time, sending to at least one other remote funding source, until one of the finding [sic, funding] sources returns a positive funding deci-sion or until all funding sources have been exhausted; or,
[D4] sending the credit application from a first remote funding source to a second remote finding [sic, funding] source if the first funding source de-clines to approve the credit application.

On appeal, the CAFC agreed with the district court that these claims are "directed to an abstract idea preemptive of a fundamental concept or idea that would foreclose innovation in this area," and thus are invalid under 35 U.S.C. §101.  In its simplest form, the court reasoned, the claimed process explains the basic concept of processing information through a clearinghouse.  "Neither Dealertrack nor any other entity is entitled to wholly preempt the clearinghouse concept."  Slip Op. at 35. 

Nor was the link to a computer sufficient to limit the claims to an application of the idea.  "The claims are silent as to how a computer aids the method, the extent to which a computer aids the method, or the significance of a computer to the performance of the method.  The undefined phrase "computer aided" is no less abstract than the idea of a clearinghouse itself."  Slip Op. at 35.  "Simply adding a computer aided limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible."  Id. at 36.  In essence, the claimed process was akin to the unpatentable binary-coded decimal to pure binary conversion in Gottschalk v. Benson, 409 U.S. 63 (1972), and covered a clearinghouse process "using any existing or future-devised machinery."

This opinion completes a trio of recent opinions dealing with the patentability of computer-related inventions, the others being Ultramercial and CyberSource.  In Ultramercial, authored by Chief Judge Rader and joined by Judges Lourie and O'Malley, the court concluded that a process for monetizing copyrighted products using a computer fell on the patentable side of the abstract ideas versus patentable application divide.  Reaching the opposite result on the issue of abstractness, the CyberSource panel of Judges Bryson, Dyk (author) and Prost concluded that a method of verifying a credit card transatction over the Internet constituted an unpatentable process.  In Dealertrack, the court drew upon the reasoning in CyberSource while distinguishing Ultramercial.

The court also addressed issues of claim construction and indefiniteness. Particularly noteworthy was the court's conclusion that "i.e.:" in the context of a patent-in-suit could not be read definitionally. Slip Op. 17-20.

Towards a more efficient judicial process:  Writing in partial dissent, Judge Plager disagreed with the majority's decision to address subject matter patentability:

[A]s a matter of efficient judicial process I object to and dissent from that part of hte opinion regarding the '427 patent and its validity under §101, the section of the Patent Act that describes what is patentable subject matter.  I believe that this court should exercise its inherent power to control the processes of litigation, Chamberes v. NASCO, Inc., 501 U.S. 32, 43 (1991), and insist that litigants, and trial courts, initially address patent invalidity issues in infringement suits in terms of the defenses provided in the statute: "conditions of patentability," specifically §§102 and 103, and in addition §§112 and 251, and not foray into the jurisprudential morass of §101 unless absolutely necessary.

Judge Plager appears to be thinking in the same direction as suggested by Professors Crouch and  Merges in their recent article Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making, 25 Berkeley Tech. L.J. 1673 (2010), in which they proposed that "the § 101 issue of Bilski be considered only when doing so is absolutely necessary to determine the validity of a claim or claims in a patent. We believe any claim that can be invalidated under one of the less controversial and less complex requirements for patentability—§§ 102, 103, and 112, for instance—ought to be disposed of without considering subject matter patentability. In other words, the Bilski issue should be avoided wherever it is not strictly necessary."

520 thoughts on “Dealertrack v. Huber: Unpatentable “computer aided” claims

  1. “It appears that the patentee admitted (at least implicitly) that the method was old.”

    If they did, then 102/103 the thing and move on. However, we know that will interfere with your desire to get back at the partner (with the big book of software business) that shunned you many years ago.

  2. my crusade?

    Ned,

    What else would you call yet another multi-hundred post thread in which you have a disproportionate number of posts harping a conflated and obfuscated (and illegal) viewpoint?

    How many times in a single thread will you post a post with the exact same message?

    Crusade? Shill? Proslytize? Preach? Wear-down? Say a lie often enough it becomes the truth?

    What is your word or phrase of choice, Ned?

  3. There is zero justification for making a statement like this.

    Justification is not a requirement to pursue an agenda.

  4. Haven’t the CAFC had their collective hands smacked more than once for taking lazy shortcuts with the law? (KSR, eBay)

    Is it too much to ask that the law be appropriately applied?

  5. one draws the inference

    Only if one draws the inference incorrectly. Once again, there is a difference between dicta and a holding, right?

    Why are you intent on obfuscation?

  6. There is no doubt that the desire to have the Atantic Ocean narrowed is present.

    There should be serious doubt as to why this is de facto considered a “good thing.”

  7. MM: the claims recite “A computer aided method of.” So, how is it not a method on a computer? It seems again, you anti-patent teabaggers are once again not evaluating an invention as a whole.

    The big picture, my paid advertisement noise maker, is that judges are using a judicial exception to invalidate a patent when they should not. You, I see, again refuse to address the substance of the argument presented and then try to sum up what another says in some nutshell that is off point.

    I guess you are like a commercial from the oil industry claiming they are green.

  8. NWPA: Impeach these judges.

    Couldn’t happen soon enough. And while you are at it fire all the IQ 6 Examiners. And see about revoking Neds license, if he has one.

  9. Yes, Malcolm Mooney the great sock puppet master.. I can’t remember the name NAL busted him for playing sock puppet under. But shorty after that he put on a wig and called himself orly taitz. I busted him for that myself.

  10. So what? . Dicta is not the same as the ruling in a court case and there is no way around that. You are making a rather boring circular argument.

  11. “MM is actually quite gracious.”

    Another anti-patent freak. Guess what? A person is entitled to a patent unless. Get that? The default is entitlement. Take your anti-patent stench back to slash dot. Don’t like the law the way it is? Too bad bucko, this is the US. You can join Renee Marie Jones and leave and don’t let the door hit you on the way out.

  12. MM is actually quite gracious. The term “sockpuppet” implies that there is room in someone’s posterior to fit an actuator hand. That would be an impressive feat for some of the patent-koolaid guzzlers around here, since that space seems to be already occupied by their heads. We need to take a very hard look at the motives of people who keep insisting that everything is patentable. What is it really that they seek, with the federal government’s blessing, to exclude others from doing?

  13. The serpent, but if both Rader and the SC must say that the subject matter is old before they conclude it is abstract, one draws the inference that the subject matter being old the very reason that it is declared abstract.

  14. But, Dino, get serious. Every Supreme Court case has tried to separate the wheat from the chaff. Even Bilksi. They try to find insignificant data gathering steps and ignore them. They try to find insignificant post solution activity and ignore it. They separate out insignificant data storage steps in the body. There is a lot of dissection going on in 101 analysis as it is.

    Even in Halliburton, they viewed the old physical steps as mere data gathering.

    The point is, once one determines what is being claimed, that is consisdered as a whole.

    Now, a mental steps that modifies a physical step is in effect a physical step. A mental step that does not is not a step at all and can be ignored.

    That is what we learn from the 101 cases.

    But what we do not learn is WHY hedging steps are unpatentable subject matter. Most of us here are still scratching our heads on that one. It would be helpful if you could join that conversation, as it is at least interesting.

  15. The “point” in the point of novelty is the CLAIM AS A WHOLE.

    This is decidely different than any analysis of parts of a claim. In the end, only one thing matters, and that is everything. There is no liberty in ignoring parts of a claim. Your so-called “point” of novelty is a smokescreen attempt to break the law. Nothing more. You have nothing if you do not take everything.

  16. How can one tell?

    Ever trying to re-write history, if you have to ask how you tell dicta from holding, you have no place making comments on the same.

    Begone.

  17. Benson was an abomination.

    It is a good thing that decision was limited by later cases.

    It is a bad thing that decision survives at all.

  18. Dino, you keep saying this, but what you are saying is complete nonsense.

    The search for novelty under section 102 is a search for anything new in the claim.

    The search for nonobvious subject matter under section 103 first includes a determination of the differences between the claimed subject matter and the prior art.

    Even section 101 includes distinctions between the subject matter claimed and insignificant extra-solution activity.

    Furthermore, it is not clear that the Supreme Court does not include some dissection of the claim to determine what features are new. What they do advise, however, is to consider the claim as a whole when determining whether the claim is claiming patentable subject matter. There was a significant amount of discussion for example in Diehr that the programmed computer was a novel feature in an old process.

    Now what was this? How would you describe this analysis?

  19. Where did it come from? Benson, which seem to equate mental steps and abstract concepts. The Halliburton case had treated the mathematics in that case as “mental steps.”

    “In substance, Walker’s method here claimed consists in setting down three knowns in a simple equation and from them determining or computing an unknown. The three knowns are: (a) the distance from the well head to the tubing catcher (for example); (b) the length of time it takes an echo to return from that obstruction; and (c) the length of time it takes an echo to return from the fluid surface. From these three knowns can then be determined the distance of the fluid surface from the well head.

    We think these mental steps, even if novel, are not patentable.”

    From 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.”

  20. Is it? Is it dicta? How can one tell? It seems that hedging was abstract because the concept was notoriously old.

    If there is no relationship between the two, then why did both Rader and Kennedy place such heavy reliance on the fact that the concept was old?

  21. I read what you write, Ned, and am not minded to argue with it.

    I come from the EPC and its Article 52(1) which recites those things that are not patent-eligible, (including such things as mental acts and mathematical methods). Art 52(1) EPC has no need to include the word “abstract”.

    SCOTUS does not have at its disposal the blacklist of Art 52(1) EPC. Instead, it must construe “useful”. It does occur to me though, that 35 USC 101 recites “new”. Is that not a legitimate basis for considering as part of eligibility whether the claimed matter covers stuff that is notoriously old?

    Where did “abstract” come from? Not the Statute, not the Constitution, but from SCOTUS itself, right? With that invention, I think they have fashioned a rod for everybody else’s back.

  22. Ned, didn’t you not too long ago lecture me on the difference between mere dicta and the actual binding ruling of a court case?

    Now here you conflate the two legal concepts in an effort to obfuscate the ruling and advance your own agenda.

    Shame Shame Shame!

  23. who does not recognize that the Bilski majority actually stated that the hedging process “explained” in the claims was old.

    That’s because the “old” reference is dicta. The holding is abstract.

    There is a difference you know.

  24. as a point of novelty,

    Seriously???? Are we once again trodding on this ancient artificat that has been tossed to the wayside time and again?

    Chrixxsakes NED, there is no “point of novelty” that you keep on falling back to.

  25. On the whole, I agree.

    On this case, the PO asserted the claims covered the defendant’s practices regardless of any software. See 6’s summary of the oral argument.

  26. Malcolm, what is going on here is nothing really new. I think I mentioned this before, but it is worth mentioning once again. Once the disc drive industry was faced with so-called form factor patents, patents that may have described in their specification some new technology that allows the disk drive to have a higher capacity or greater track density or the like. But the problem was that the claims did not describe this new technology. Rather the claims describe all the standard components of any disk drive, and claimed as a point of novelty, the new track density, the new capacity, or to particular size of the disk drive component that had nothing to do with the new technology. All these patents were distinguished over the prior art not on the basis of the technology described in the specification but on the basis of the new track density, capacity or component size. The patent owners would then assert these form factor patents against the industry regardless of whether the industry products were using the described new technology.

    I think I mentioned that I convinced the patent office to stop issuing such patents. The essence of my argument was obviousness, not patentable subject matter. I pointed out that everything in the claim was old, and that the novel feature: size, track density, capacity or the like, was on the technology roadmap. That argument prevailed in the PTO.

    In reality, another problem is perhaps expressed in 101 or section 112 terms. If the point of novelty has no functional relationship to anything else in the claim, then perhaps we have a section 101 (or 112) problem pretty much along the lines you suggest when everything in the claim is old but the new thought.

  27. Max, agreed.

    Max, it seems what the court is doing is taking the claimed process, reducing it to its essential steps, i.e. searching in the claim for the abstract concept they embody, finding the abstracted concept old and notorious, and then saying that the claim “covers” the notoriously old “abstracted concept,” thereby rendering it unpatentable under section 101.

    I think you and I would both agree that the proper legal basis for such a method of analysis is not section 101 but sections 102/103.

    If one looks back to the original case on mathematical algorithms, the Halliburton v. Walker case from the Ninth Circuit, this is essentially the same abstraction procedure that the Ninth Circuit use to find that the essence of the claim was an old and obvious mathematical algorithm. This case has, perhaps mistakingly, become the basis of the section 101 analysis of both mathematical algorithms and business methods.

  28. And, to be clear anyone that puts a judicial exception to 101 on the same level with 102, 103, or even mind you statutory 101, does not understand the law and should be removed as a judge.

  29. Ned, the claims are to a method on a computer. End of story. If the subject matter is old (the method that is being implemented on the computer) then the correct way to go is 102 plus computer without anything special, so 103. 101 is a judicial exception that should be applied only in very, very rare cases. It is, in fact, really not appropriate to apply it ever in these cases given that Congress has repeatedly had the opportunity to exclude this subject matter and has not. The Fed. Cir. cannot (but apparently the Cybersource 3 are trying to) take the attitude that Congress is dysfunctional so we are going to do their job for them. That is what the Cybersource 3 are trying to do.

    There really is just nothing to discuss here. Judges used a judicial exception when they did not have the right to. End of story. There really isn’t a valid argument on the other side of this. And, unfortunately, Bilski from the Supreme Court is simply bad law as well.

    But, to be clear, this is a computer software case because the methods that are being developed are ones that are only being developed because of this new information processing tool. The methods are more complex and ones that normally wouldn’t be used or couldn’t be used without a computer.

  30. Night, to be clear, the subject matter of these patents is not software, but the old and notorious process. What the inventors were attempting to do was patent a prior art process.

    Take a look at 6’s some of the oral argument where the defendant stated that the patent owner continued to assert infringement even after the defendant had deleted software that implemented the process. The software had nothing to do with the infringement or the invention. The claim was to the process itself independent of the software, and that process was notoriously old.

  31. Night writer patent attorney, would you say here would make sense if these opinions do not also make clear that the claims covered subject matter that was notoriously old. The claims themselves do not claim anything new. So even if the inventor created sophisticated software that carried out a pre-existing, well-known process, the claims were not limited to that software. Rather they covered the prior art.

    So your assumption that these judges are allowing the public to implement somebody’s invention cannot be true. What the judges are doing is preventing someone from patenting the prior art.

  32. 6 said, “However, it appears from the decision that the judge was privy to a lot of information to which I personally am not. Specifically, it appears as if he tells what auto sales (and other sales) companies had been doing for years when utilizing a clearinghouse. They take customer loan info prior to making a sale, send the info to the clearinghouse and receive back information from the clearinghouse as to whether a loan would be granted and at what terms. That I believe is pretty much the “clearinghouse concept” to which he is referring.

    In a more simplified explanation it would be as the court said: receiving data from one source (step A from the customer), selectively forwarding the data (step B, performed according to step D sending the data to the clearinghouse), and forwarding reply data to the first source (step C getting a response back from the clearinghouse). “

    Isn’t what is going on here taking the claim down to its essential steps, finding them to be old or obvious, and then declaring them to be abstract because they are old and obvious?

  33. Agreed. I think this is problem with the whole “preemption” approach. It seems that the definition that something is abstract is somewhat ad hoc: “We know it when we see it.”

    Rader in his opinion in Bilski, and Kennedy in his opinion in Bilski, both referred to hedging as notoriously old. They jump from this statement to a statement that hedging was an abstract concept. One begins to wonder whether abstractness has something to do with being well known.

  34. Publius,

    This is at least the third time that Malcolm has opened his moth and stepped right into his own crrp:

    1) pounding tables
    2) cowardly avoidance of answering questions, and now
    3) thinking their posts are special jsut because they posted it.

    Way to go Malcolm.

  35. Stop, I was replying to Actual Inventor who does not recognize that the Bilski majority actually stated that the hedging process “explained” in the claims was old.

    What this has to do with section 101 analysis is not clear. Is it completely irrelevant? Or is it important? And if it is important, how is an important?

  36. You’ve asked this question like five times now.

    Angels dancing on the heads of pins.

  37. What matters is the “what” is being said.

    Agreed. Look at sockie’s first comment in this thread:

    Troll: blah blah blah claim dissection blah blah blah sockie

  38. From the “majority” in Bilski:

    “In light of these precedents, it is clear that petitioners’
    application is not a patentable “process.” Claims 1 and 4
    in petitioners’ application explain the basic concept of
    hedging, or protecting against risk: “Hedging is a funda
    mental economic practice long prevalent in our system of
    commerce and taught in any introductory finance class.”
    545 F. 3d, at 1013 (Rader, J., dissenting); see, e.g., D.
    Chorafas, Introduction to Derivative Financial Instru
    ments 75–94 (2008); C. Stickney, R. Weil, K. Schipper, &
    J. Francis, Financial Accounting: An Introduction to Con
    cepts, Methods, and Uses 581–582 (13th ed. 2010); S.
    Ross, R. Westerfield, & B. Jordan, Fundamentals of Cor
    porate Finance 743–744 (8th ed. 2008).”

    If they stopped right here, they could have rested the case on 102/103. So why did they go on at all?

  39. “also clear that the courts will find a way to declare BMPs unpatentable subject matter regardless of Kennedy.”

    This is nonsense.

    The court has had a chance to do so. They did not.

    Congress has had a chance to do so. They have not.

    There is zero justification for making a statement like this.

  40. When you make a category exclusion (by the SC)without defining the category, all you are left with is a nose of wax.

  41. This commentdemonstrates how mad this comment is

    Corrected.

    The world is complex. The law is complex. In patent law, the rule of similarity applies, which makes your comment only reflective of your lack of knowledge.

    Thanks for playing.

  42. Body Punches: The problem is that the courts are in 101 at all. They are applying a judicial exception to try to wipe broad swaths of patent eligible matter. This is clearly something the Congress should decide and has de facto. This judicial activism at its worst.

    And, your writing it making is sound like it is equivalent to apply a judicial exception with applying a statutory exclusion. Sorry not even close.

  43. You know, the biggest problem with this “reasoning” is that the judicial exception was created for what boys and girls? It was created so that other machines could be built to implement the “algorithm” or equations or however the peabrains of the world want to characterize it.

    But, that motiation no longer exists for software implemented on a general purpose computer. So a judicial excpetion is being used where the policy for using it does not apply. Impeach these judges.

  44. Information processing is likely going to be THE technological innovation of the next 100 years. There are few people that understand computational intelligence that doubt that. And these scummy little judges are trying to exclude informatoin processing based on a judicial exception. They need to be impeached.

    What really bothers me about “decisions” like this one is that there is no way to advise clients on 101 issues other than the courts just do whatever they feel like doing based on their own beliefs. That is a third world country. Try following the law Cybersource three (impeach the scum.)

    How does one advice clients on anything that has any software component? It is nearly impossible under case law like this. I put in interaction in the last application I wrote just to get under Ultramercial.

    And, MM, please include your payment for any comments regarding my posts. My estimate is about $20 per comment is what you are paid.

  45. I think that is a good way to look at it Ned. But, the problem is that it is an inappropriate use of a judicial exception, which should only be used rarely and applied as narrowly as possible. Trying to use a judicial exception to exclude huge areas of subject matter from patentability is wrong as the Supreme Court itself said in Diehr. In Diehr, the Supreme Court explicitly said that the Supreme Court take this tack, but should not given that Congress is aware of the subject matter and has not excluded it.

    What this means is the Cybersource three should be impeached. Rader is right and needs to squash these “judges” (maybe we should call them congreepeople want-to-bes, scum of the earth is closer.)

  46. I do not think that separating an attack on a post (people are not attacked – views by people are attacked), by who the orignating poster is has any merit.

    If a post has appreciable content, the post will stand up against attack. If the post is weak, it will not. It looks like everyone is holding stones in their hands. Those living in glass houses should probably think twice about the content of their posts.

    It seems that certain people are convinced that their posts are special because the posts come from them. I find this hubris offensive, especially when the posts are evidently not well thought through. It really does not matter “who” is doing the talking. What matters is the “what” is being said.

  47. You know what else I wonder? And obviously it is probably a correct assumption.. If a PO BOX Key is #100, then all PO BOX Keys for #100 would be the same, no matter what Post Office. That’s why they say no duplication… All you have to say is I lost it.. so sorry… OK pay 5.00 or so.. here’s another.. Now be careful with this one.. So if they can hear everything you say or type.. Then that is just a matter of Driving.
    Dress with Denim Jacket and have Jeans on, fake a limp and wear a floppy Hat ( LOL HAT) drop off the package… walllaaah. Simple as 123.

  48. Actually, Kennedy did agree during oral argument in Prometheus that novelty consideration were part of Bilski.  Why else would they say that hedging was nortoriously old? 
     
    In a  pure 101 analysis, novelty is irrelevant.  Yet is it appears everywhere in Rader's Bilski opinion and in Kennedy's Bilski opinion. 

  49. I think they need to be less clear in their formulations

    This explains so much. If the courts should mess things up more so that the Supremes will get involved, then the Office should really mess things up so the courts could have more shots to begin with.

    This is why the crrp comes out of the Office the way it does.

  50. What if Kennedy agreed

    What if all nine justices said, “We read Patently-O and think that Ned Heller is brainless. The dude is a clown.”

    How many angels dance on the head of that pin?

  51. Nah, I think they need to be less clear in their formulations. All the better to fish for an En Banc or USSC decision on the issue.

  52. Ned:Would you agree then, that the problem with the Bilski claims were that they were claiming subject matter that was not new?

    AI: That’s a 102 issue and is not relevant to 101, move on.

    Ned: If not, what was the problem with the Bilski claims?

    AI: Judicial Exception.

    Case Closed!

  53. personally attacking a commenter

    LOLZ – like MM never does that (unless that person has cancer… or a pulse…)

  54. actual inventor, we agree that the application of an abstract idea to useful method, machine, article manufacture or composition of matter is patentable under Supreme Court jurisprudence. 

    Would you agree then, that the problem with the Bilski claims were that they were claiming subject matter that was not new? 

    If not, what was the problem with the Bilski claims?

  55. Actual Inventor, I would agree with you that business methods could be patented if the basis of the holding of the Bilski court was that the claims at issue in that case were “notoriously” old.

  56. AI, I can see only two possible problems with the claims of Bilski once one determines that the business utility was not the issue:

    1. The claims “wholly preempted” subject matter that was notoriously old. (This sounds in 102.)

    Or

    2. The claims were not sufficiently tied to any technology such as the use of software on a machine.

    These are my views. What I yours? What was wrong with the Bilski claims?

  57. ” “Neither Dealertrack nor any other entity is entitled to wholly preempt the clearinghouse concept.” – Err, that’s a 102, 103 or 112 issue. That statement could apply to any invention (e.g., “That pharma company is not entitled to wholly preempt the use to that class of novel compounds in that novel therapeutic method”).

    If invalid because of prior art or unduly broad or indefinite, fine. Extending the exclusions under 101 to these claims is misguided.

    The Fed Circuit needs to formulate a clearer definition of what’s in and out. One formulation could be if the addition of the “computer” to a claim relating to an abstract idea is merely replacing the “mental” in “mental steps”, it likely doesn’t meet 101. However, if the functionality of the computer(s) is integral to the claimed method and does more than merely replace the “mental” in “mental steps”, then it likely meets 101, but still faces 102, 103 and 112.

    We need more clarity from the court in view of these three decisions.

  58. Actually the exact truth Malcoolm.

    Here you play your silly reversal card and accuse that which you do. The poster most synonymous with lack of civility is you – by far (even if those thin skinned whiners like Inviting Body Punches say nothing about your deletorious posts). I have never feigned ignorance of basic facts (which you do), and I have never refused to engage (merely conditioned engagment on some showing by you that you really do understand the law you want to discuss (dissection, mental stps doctrine, even the written matter doctrine and its exceptions – which by the way, I too have faved that exchange of yours and NAL’s; absolutely priceless example of your chicanery); and I only accuse you of that which you do – you earn every last bit of criticism I send your way.

    Do I want to try again? How about you try in the first instance? Try to answer questions put to you (coward). Answer those questions when they are put to you, and not pretend to have answered them months later.

    Is everyone watching? I hope so. I hope everyone watches the NAL collection. I hoipe everyone goes back to the lame-a@@ beginning of your attemtped dissection tricked out, ignoring of mental steps doctrine strawman of a two-part claim that you think over-rules Supreme Court law. For all of your psoturing, you are but a fool. My conditions for engagement with such a fool have not changed – show you understand the basics first.

    Just say the word.” – this is just another empty phrase, like IANAE offering to give an answer. At least IANAE can provide some amusing banter along the way. All you have Malcolm is caustic, mindless, lazy rhetoric. As I have previously explained, using you for an example, or toying with you for some sport is all the good that one can make from the lemons you post.

  59. If so, tell me please. Till then, I will continue to indulge myself, supposing what that definition might be

    MaxDrei,

    We’ve been through this. I have already provided pincites showing that the term takes its broad current meaning. Above is a case law citation showing that the thin meaning you want to ascribe has been explicitly held not to be.

    Your continued “indulgment” in the face of clear reason and cited law only indulges your propensity for error and lack of learning.

    Your horse is dieing of thrist next to a full trough of water.

  60. Malcolm there is no category for mental processes.

    But anon is 100% right.

    Business Methods and Software are Statutory Processes and that’s a fact, whether you like it or not!

  61. MM: “Indeed, sockie. And the Dierhbots who were lovin Bilski’s claim (and claims like it) were squashed”

    Malcolm you are wrong. Diehr is controlling case law, see Bilski page 14. And the CAFC has followed the Supreme Court. See Ultramercial for starters.

    Okay there is waaaay too much anti patent propaganda to debunk and shovel out today.

    I have had to post a dozen times already and it just keeps on coming!!

    So I am off to the beach!

  62. anon: “Suffice to say that both business methods and software are patent eligible subject matter – just like any other category.”

    AI: Suffice indeed.

    But Ned won’t say it.

    He never has and never will.

    It is his job to obfuscate and conflate on this particular issue.

    Ans he is bloody brilliant at it!

  63. You problem 6, and what I have B slapped you on for many years is the fact you can’t objectively define an “abstract concept”.

  64. Ianae you do know that there is no such thing as a “general-purpose data processing device that can be programmed however you want.” right?

  65. Only problem with your wet theory dream is that claims as a whole applies to 102 as much as it applies to 101.

    Don’t make me whip out Diehr!

  66. Conjecture BS on your part Ned. So stop it and see the following:

    “The application of an abstract idea to a “new and useful end” is the type of invention that the Supreme Court has described as de- serving of patent protection. Gottschalk v. Benson, 409 U.S. 63, 67 (1972). After all, unlike the Copyright Act which divides idea from expression, the Patent Act covers and protects any new and useful technical advance, including applied ideas.” See Ultramercial.

    Furthermore…The CAFC is simply following the DCAT. Diehr Concept and Application Test.

    The ONLY Supreme Court sanctioned test and controlling analysis for 101 Subject Matter for the last 30 years!

    The MOT has only been and remains merely a clue for processes of the type used in the 1800’s.

    The DCAT works exactly like the Court used it in Diehr.

    You take the claims as a whole, including the concept.

    Then analyze the claim to see if there is an application to a specific industrial and/or marketplace process.

    If the answer is yes you pass 101!

    Its worked well for 30 years!

    See the cite history as follows:

    ( Diehr) : It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e.g., Funk Bros. Seed <450 U.S. 188> Co. v. Kalo Co., 333 U.S. 127, 76 USPQ 280 (1948);Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Cochrane v. Deener,94 U.S. 780 (1876); O’Reilly v. Morse,15 How. 62 (1853); andLe Roy v. Tatham, 14 How. 156 (1852).

    ( Bilski) Page 14 : Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.

    (Research Corp): Indeed, this court notes that inven- tions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.

    (Ultramercial): Although abstract principles are not eligible for pat- ent protection, an application of an abstract idea may well be deserving of patent protection. See Diehr, 450 U.S. at 187 (“an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection”)

  67. One mans BS is another mans E=MC 2

    Everything is energy.

    The atom can be split.

    The Neutrino particle can be observed.

    We are well pasted 1925 Ned.

    Deal with it baby!

  68. Yes Ned, your crusade. Furthermore such a test would be unconstitutional.

    There is no technology requirement in the useful arts in the Constitution.

    There is no technology requirement in the statute.

    There is no technology requirement in the AIA.

    There is no technology requirement …..PERIOD!

    And before we go turning back the clock past 1925 on processes, and shackling innovation to the iron age YOU better have a dam good policy reason.

    And NO, simply saying your bosses at Silicon valley want it done is NOT a good policy reason. No matter how much they pay you to shill.

  69. Great answer 6! I happen to find security in patent searches sometimes, because they usually help me to invent new things. Promote the Progress and all like that. Searching wind turbines back into the early and mid 1800’s is a very interesting exercise, that tends to make an erstwhile *inventor* think twice about what they might be able to claim. Not bad so far though….

  70. So perhaps you could inform us about what the term “sockie” means?

    No problem, sockie. It refers to the ingrate(s) who have a practice of posting here under everchanging asinine pseudonyms (e.g., “Looney Toons Lime”), usually at least a dozen times a day and almost always for the sole purpose of personally attacking a commenter who doesn’t engage in said practice.

    wonder how much time MM or 6 spend writing their grandiose productions every day?

    Like I said.

  71. Also- Whatever happened to the Tech Dirt guy? I can’t even remember his name. Very nasty anti-patent sorta guy. To each their own I suppose.

  72. ” 6 spend writing their grandiose productions every day”

    Too fin much. But it is rather relaxing sometimes.

    But based solely upon how often people in the legal profession copy my works I’d say it is totally worth it. Although it would be nicer if they’d provide a citation to their authority.

  73. So perhaps you could inform us about what the term “sockie” means? Does that just mean that you are intentionally being offensive? Sorta sounds like it from here. To have a civil discussion would need to have at least two parties, it would seem to me. Cutesy insults will probably not work very well here or anywhere for that matter.

    I think Renee`Marie put her finger on the problem pretty clearly. They just need something to argue about, so that they can insult each other with a reasonably clear conscience. I wonder how much time MM or 6 spend writing their grandiose productions every day? Sounds to me as if they need a Job!

    Good Luck guys!

  74. “In Bilksi, it was the notoriously old hedging process. That is not 101, but 102/103 thinking.”

    I agree.

  75. you keep disappearing when pressed to explain yourself and the actual legal concepts involved.

    Actually the exact opposite is true, sockie. Do you want to try again to have a civil discussion? Last time we tried that you feigned ignoranc of basic facts, refused to engage, and instead accused me of lying. Do you want to try again, sockie? Everyone is watching. Just say the word.

  76. Fully aware, anon, that MM labels me as a “Gene Quinn lover” and I frankly don’t care if he does. Just pointing why I don’t agree with MM.

  77. anon, my crusade?

    Regardless, the Kennedy opinion can be read that the only thing wrong with the BMP before it was its lack of a tie to technology.

    Rader didn’t like the MOT because it could adversely affect software. Rader believes programmed machines are patent eligible.

    I simply suggested that we find a test that would authorize BMPs to the extent they were tied to real machines or implemented using software on a computer, software that is disclosed in some detail.

  78. “Useful arts” (as in the patents clause of the US Constitution) means what it means, in that context.

    In the Bilski case, SCOTUS declined to hold that “useful arts” excludes ALL claims directed to ANY business method.

    In recent years, the EPO has upheld numerous claims that look like business method claims (despite the explicit prohibition in the EPC on patents for methods of doing business).

    The concept of “useful arts” must mean something. Has SCOTUS yet defined it? If so, tell me please. Till then, I will continue to indulge myself, supposing what that definition might be, if and when it finally emerges. Till then, I can indulge myself, supposing that any such definition will not be a million miles away from the European view of what has “technical character”.

  79. …but not the technology implementing a BM …

    I think Section 33 of the AIA prohibits claims to that technology, Ned.

  80. Wouldn’t know what you are talking about Malcolm – you keep disappearing when pressed to explain yourself and the actual legal concepts involved.

    Why is that?

  81. Suffice to say that both business methods and software are patent eligible subject matter – just like any other category.

    Like the category of mental processes. Right, sockie?

  82. Nothing like basking in your own ignorance while calling someone else out for their supposed ignorance Malcolm.

    You do realize that MaxDrei does believe that useful arts = technical arts as is understood in Europe?

    How does that foot taste? (and yes, I realize that that is your common fare). Maybe IANAE can search his feelings to come up with some way to make your foot more tasty.

  83. Easy, anon. I understand the “reality” that judges (and Justices) have “agendas.” I’m just not impressed when judges (or Justices” exercise those “agendas” using legal reasoning that won’t hold up under scrutiny.

  84. EG,

    You are mistaking MM as someone that actually cares (or knows) about the law.

    Your efforts will merely get you labeled as a Gene Quinn lover. Along with a few choice “xx” marks.

  85. EG,

    Do you not think that judges have agendas? That they are so pure in spirit that law will not be used as tool in a philosophical dogfight?

    You need a dose of legal realism.

  86. Ned,

    Your crusade against both taint what you have to say so much that I cannot make sense of what you are trying to say.

    Suffice to say that both business methods and software are patent eligible subject matter – just like any other category.

  87. If that’s true Ned, why didn’t Linn just go to 35 USC 102, and be done with it? Why add further to the “jurisprudential morass” on 35 USC 101 that Plager so aptly states?

  88. I stand rightly corrected by you, IANAE, that step D is actually a continuation of step C. Even so, with the 3 substeps in D, the Dealertrack method is, in essence, a 6 or at least 5 step method claim. You really want to reduce method claims to 2 or at most 3 critical steps to make it more difficult to avoid infringement.

    As far as needing to carry out those steps, steps A through D (including substeps D1 through D3) need not be carried out by the same individual or even the same entity. That potentially puts you in the joint infringement “Twilight Zone” of BMP Payment, Akamai or McKesson. Not the place to be until the Federal Circuit resolves the Akamai and McKesson cases en banc.

  89. We should all recognize the big picture. Rader and his fellow travelers are trying to craft patentable subject matter tests so as to include software-related inventions as patentable subject matter, while at the same time excluding pure BMPs. They resist any tests that might be valid against both. Thus Rader opposed the MOT because put in jeopardy software-related inventions.

    What I suggest from this observation is that if the claimed subject matter is clearly software and not simply a business method, it will be approved by the Federal Circuit. In contrast, if it is a business method only, and does not attempt to claim software, it will not.

    The Federal Circuit is attempting to develop a test that distinguishes the two. Congress got very close to the right test in the AIA, when it declared a new special procedure for business methods, but not the technology implementing a BM, which apparently includes software.

    If we here can think of a good test to help the Federal Circuit, why don’t we try?

  90. Whether you agree or most likely disagree, MM, Dealertrack isn’t claiming “paradigms” or “schemes”, but a method for managing a credit application comprising various steps. All I’m suggesting is that they might avoid joint infringement problems by claiming this invention as a system, if possible, rather than method. And whether you like it or not, Centillion Data Systems is the law, and makes clear that system claims aren’t nearly as vulnerable to joint infringement issues as are method claims.

  91. Malcolm, 

    "MM has replied to your comment:It appears that the patentee admitted (at least implicitly) that the method was old, but for the "computer-aided" gxrbxge. Not unlike the game that Prometheus played with their claim to a method of thinking a new thought about an old result."

    Thanks for the info.  This is just like Bilksi.  The claims are invalid as old/obvious.  

    It appears that Rader/Kennedy and now this panel are trying to turn 101 into 102.  They first determine the method is old, that the claim wholly preempts the prior art method, and then declare it invalid under 101, when really it is invalid under 102.

  92. 101, you like to take things out of context.  In a conversation regarding grounds for invalidity, where prior to '52 we had patentable subject matter, invention, failure to comply with 112, double patenting, and prior art; and where the '52 statute expressly includes prior art under 102, invention under 103, 112, and adds 251 as expressly enumerated grounds for invalidity, there remains patentable subject matter and double patenting as not expressly included in 282 as grounds for invalidity.

    One has to stretch to suggest that 282 expressly includes 101.  By its own terms it does not.

  93. I am sure that there are, though examiners may have to stray from the safe and easy searches in patent databases to find them.

  94. Yes, I’m sure there are lots of publications of what people do day to day in a car sales lot re loans and what clearinghouses do on the back end and then a network to facilitate all that.

    HOW COULD THEY HAVE MISSED IT?

  95. Fair enough.

    Yes, I do complain when an ordinary word is not used in its ordinary way. I don’t like it when patent drafters do it. When judges do it, I think it’s asking for trouble.

  96. What I do not understand is why we waste valuable resources

    Because that applicant paid his money and has every right to have his application processed, no matter who thinks what of it.

    Comes with living in this country. Don’t like it? Leave and don’t let the door hit you on the way out.

  97. What I do not understand is why we waste valuable resources even talking about inane patents like this one. The only question that needs to be answered is how many years in jail the applicant should get in jail for this attempted fraud on the patent office and on the American people.

  98. It appears that the patentee admitted (at least implicitly) that the method was old, but for the “computer-aided” gxrbxge. Not unlike the game that Prometheus played with their claim to a method of thinking a new thought about an old result.

  99. sockie: s there a reason why you continuously make this error?

    The 7:47 am comment contains an obviously fabricated misquote of what MaxDrei actually said, you ignorant axxhole.

  100. Patentable subject matter remains nonstatutory.

    This statement fails on its own weight.

  101. I agree with Inviting Body Punches as well. Taking the approach that “the Bilski issue should be avoided wherever it is not strictly necessary” amounts to a mere avoidance of the requirements of patentability.

  102. I agree with Inviting Body Punches as well. Taking the approach that “the Bilski issue should be avoided wherever it is not strictly necessary” amounts to a mere avoidance of the issues at hand.

  103. 6, actually that's not the case at all. It either was oversight or it was intentional.

    Prior to 1952, what we now know as section 101 was in the same statutory section as prior art. However, prior to 1952, the courts developed a whole body case law that was not in the statute. That case law involved the concept of invention. That case law also develop concepts of patentable subject matter. That case law develop concepts of double patenting. None of it was textual, just as the original on sale bar was not in the statute but was added by Congress in 1936 in response to the Pennock case.

    The 1952 act codified only part of this prior a textual case law, and that was the part involving invention. They did not attempt to codify patentable subject matter or double patenting.

    So the reading of section 282 as proposed by Judge Plager is in fact correct. Patentable subject matter remains nonstatutory.
     
     

  104. Nobody cried Bravo.

    That’s not true, of course.

    Car buyers surely do not consider it “abstract” whether or not they get a swift offer of funding for their purchase.

    If your complaint is that the term “abstract” is not being used in its ordinary way when courts describe claims such as the one at issue here, I agree with you. But that doesn’t mean that the law is wrong.

    I’m still waiting for a bona fide well-claimed invention to get tanked under the new 101 jurisprudence. That hasn’t happened yet. Everything that died has deserved to die. A few gxrbxge patents even managed to survive the analysis (so far, anyway). And the PTO is still churning it out.

  105. you’re much better off phrasing such inventions, if possible, as systems, not methods.

    Yes, please keep doing that. Claim “systems” instead of methods. Also, maybe try claiming “paradigms” and “schemes,” too. Please do that. Please.

  106. IBP, I think the Feds have a screw loose as well. Even Flook laid no importance on “wholly preempt.” Rather, it is important what is preempted, i.e., covered.

    In Bilksi, it was the notoriously old hedging process. That is not 101, but 102/103 thinking.

    Here, there was no finding that the clearinghouse concept was old, but it was implicit.

  107. IMHO, it’s never appropriate.

    Using your analogy, they are tools like the hammer with the irregular face, that can never drive a nail in straight.

    Ultimately the nail goes in, but not before it is distorted, strain-hardened and subsequently weakened, it goes in often at an incorrect angle, and often does damage to the substrate, resulting in not only a weakened and potentially unreliable connection, but in damage to the integrity of the wood.

    Plus, it takes a LOT longer, trying to finesse the nail, or alternatively, trying to straighten it out after it bends, or pulling it out and starting over, possibly in another sub-optimal spot because the tunnel made by the first one is made in the wrong direction.

    These so-called “tool” aren’t worth squat, IMHO.

  108. No, I don’t want to throw a tool out of the patent law shed – I simply think that there are times when the rhetorical and metaphorical sledgehammer is appropriate.

  109. You are welcome IANAE, except I am not RtGftHBYSftH.

    But it’s nice that you are thinking of me.

    Want to play some Calvinball?

  110. BTW, Linn acknowledges that 101 is a condition of patentability in a footnote that refers to Aristocrat’s citing of Graham:

    “Second, the “defenses provided in the statute,” § 282, include not only the “conditions of pat-entability” in §§ 102 and 103, but also those in § 101. See Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 543 F.3d 657, 661 (Fed. Cir. 2008) (“It has long been under-stood that the Patent Act sets out the conditions for patentability in three sections: sections 101, 102, and 103.” (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966))).”

  111. I agree with Inviting Body Punches. Over-reliance on rhetorical devices and “whatever” mentality is a laziness that has no place in our profession.

  112. “We believe any claim that can be invalidated under one of the less controversial and less complex requirements for patentability—§§ 102, 103, and 112, for instance—ought to be disposed of without considering subject matter patentability. In other words, the Bilski issue should be avoided wherever it is not strictly necessary.”

    With respect, your belief is misguided.

    101 is separated into 2 elements: subject-matter eligibility using the enumerated statutory categories, and utility–a fact that your belief conveniently ignores.

    Also, 103 is hardly less controversial and less complicated than the utility requirement of 101, what with the “smell test” that 103 employs.

    Also, 112 is inextricably bound with the utility requirement of 101, to the point where rejection on one ground is always accompanied by rejection on the other ground.

    Finally, 102 determinations are predicated upon claim construction, which is a hotly-contested issue with varying standards built on unstable ground.

    Your avoidance approach, rather than offering a solution, is merely an extension of the problem.

  113. Why?

    What is the matter with invalidating based on a failure to satisfy the utility requirement of 101?

  114. “abstract idea”

    “purely mental process”

    Let’s discard these obfuscatory rhetorical devices, and articulate something based on the basic underlying statutory principle at work.

  115. “pre-emptive”

    “abstract idea”

    Get away from these rhetorical devices, already, and articulate something based on the basic underlying statutory principle at work.

  116. What the heck is the matter with the CAFC judges?

    “…insist that litigants, and trial courts, initially address patent invalid-ity issues in infringement suits in terms of the defenses provided in the statute1: “conditions of patentability,” specifically §§102 and 103, and in addition §§112 and 251, and not foray into the jurisprudential morass of §101 unless absolutely necessary.”

    Plager apparently has no idea that UTILITY is a “condition of patentability”, that appears in 101, as is explicitly stated in CAFC precedent; or, he knows, and is specifically excluding it from his “preferred conditions” list, while providing no particular reason for the exclusion.

    101 jurisprudence is only a morass because courts, including the CAFC, lack either the ability, time, motivation, or some combination of these, to analyze it rationally.

    This represents a basic abdication of the duty of the court, IMO.

  117. An ordinary four-stroke internal combustion cycle could easily be claimed in seven or eight steps, but you wouldn’t have to go far out of your way to infringe it.

    ???? This example only confuses the point you are attempting to make because an ordinary four-stroke internal combustion cycle is perfectly patent eligible.

  118. the claim allegedly infringed has 4 steps, one of which has 3 substeps. You must really got out of your way to infringe such a claimed method.

    Three steps, actually. Step D, the one with the “substeps”, merely qualifies step B, recites the substeps in the alternative, and I think you’ll find those alternatives are pretty much exhaustive of the ways one might possibly carry out step B.

    Go on, try to do a credit check on anybody without carrying out those steps.

    An ordinary four-stroke internal combustion cycle could easily be claimed in seven or eight steps, but you wouldn’t have to go far out of your way to infringe it.

  119. “As in Morse you see instances where there is an attempt to preempt a whole natural phenom.”
    No natural phenomena.

    “As in Benson you will see a new abstraction (or other exempt material) come up with, aka an algorithm and they will wish to claim the entirety of the algorithm.”
    The alleged “algorithm” was “clearinghouse.” It wasn’t wholly preempted. Just a portion was preempted. However, every method claim preempts a portion of some algorithm. You need to do better than that.

  120. Dealtrack illustrates the absolute absurdity of the current rudderless standard for determining patent-eligibility under 35 USC 101. The fuzzy “we know an abstract idea when we see it standard” of Bilski is a disaster. And Plager is absolutely correct that 35 USC 101 is currently a “jurisprudential morass” that should be avoided generally in favor of 35 USC 102, 103, and 112.

    What is also startling about this case is that the claim allegedly infringed has 4 steps, one of which has 3 substeps. You must really got out of your way to infringe such a claimed method. Also, this sort of claim is vulnerable from the standpoint of joint infringement issues. In view Centillion Data Systems, you’re much better off phrasing such inventions, if possible, as systems, not methods.

  121. That might depend on whether obviousness is obviousness in the useful arts or obviousness outside the field of the useful arts.

    In other words, patentability should depend on what is technologically obvious rather than on what is commercially, artistically or financially creative.

  122. Malcolm here’s how I see the difference.

    For two long weeks, the tribe debated whether or not the claimed subject matter was obvious. Then it was time for the Chief to decide. He announced his decision. Exactly 50% of the tribe cried Bravo.

    On another occasion, the tribe debated whether the claimed subject matter was “abstract”. After two long weeks the Chief declared it to be indeed “abstract”. Nobody cried Bravo. Brows remained furrowed. The Chief was left feeling unsure of himself.

    Car buyers surely do not consider it “abstract” whether or not they get a swift offer of funding for their purchase. Nor do the sellers. Nor do the funding bodies. Nor do the clearing houses. Nor the sellers of the software.

  123. “It cannot have been an accident or an oversight that Congress limited invalidity defenses to 102/103/112/251. It seems intentional.”

    Maybe they didn’t think that anyone would be stu pid enough to get a patent outside the realm of 101 or that the PTO would be stu pid enough to issue such a monstrosity. Simpler times Ned, I doubt if they had a 101 going out every week. Patent attorneys probably did their fin jobs as officers of the court back then and turned the yahoos away before they filed.

  124. It is important for at least two reasons Ned:

    1. As in Morse you see instances where there is an attempt to preempt a whole natural phenom by claiming every use of it when you are the first to use it in any way.

    2. As in Benson you will see a new abstraction (or other exempt material) come up with, aka an algorithm and they will wish to claim the entirety of the algorithm.

    Also, 3. Because Ned is a t ard and asks questions that are easily answered on his own.

    Ned why don’t you buy a book on patent prosecution, all the new ones are plagiarising on mah interpretations and thoughts on the subject without even the barest mention of a citation.

  125. And the Dierhbots who were lovin Bilski’s claim (and claims like it) were squashed.

    A man in serious denial (and lovingly absent for about three months after Bilski was released).

  126. 6, why is it important to decide “wholly preemption” a notoriously old process as a 101 issue? Wholly preempt means cover. If a claim covers something well known and old, it is at least obvious.

  127. “Explains the basic process of operating a clearinghouse” just as claim 1 of Bilski explained the [notoriously old] process of hedging. Page 35.

    This sounds in 102, not 101, no matter how one dress up the argument.

  128. I should add, the majority, in fn. 3, vigorously contests Plager’s view, citing back to Graham v. John Deere.

    However, the statement in Graham is mere dicta; and cases following that dicta are questionable for that very reason. The issue of construction of Section 282 has never been squarely addressed.

    Note that prior to 1952, the patent classes and the listing of prior art were in the very same statute. They were broken apart in the ’52 Act, but Congress used language to include only the prior art defenses (as well as the separately enumerated 112, and 251) as grounds for invalidity. These 102 and 103 place express conditions the right to a patent. Section 101 does not.

    It cannot have been an accident or an oversight that Congress limited invalidity defenses to 102/103/112/251. It seems intentional.

    While this is only conjecture, I suspect that the drafters wanted to exclude non statutory defenses from infringement trials. The would include patentable subject matter defenses, and double patenting defenses. The atextual exclusions from patentable subject matter: laws of nature, natural phenomena, and abstract ideas; as well as double patenting, find no clear support in the text of 101. Had Congress intended these to be defenses in court, they presumably would have listed them in the ’52 Act.

  129. From the same guy that predicted Bilski would squash the Diehr-bots.

    Indeed, sockie. And the Dierhbots who were lovin Bilski’s claim (and claims like it) were squashed. Like pancakes. Of course that doesn’t stop the Diehrbots from spewing their absolutist claptrap. They’ll keep doing that until the Supreme Court sets them on fire and puts a silver bullet through their skills under a full moon. Even then there will still be a few hollering out there in the wilderness.

    Read this case. You’ll see that Diehr is an effective weapon for disemboweling computer-implemented gxrbage.

  130. Dennis, I see that Judge Plager has read Section 282 the way I do. (Recall I suggested you update your treatise on the new statute to fix your comment on what Section 282 covers in terms of invalidity defenses: Section 102, 103, 112 and 251, and not 101, 102, 103, 112 per your comment.) You never responded, but others here heavily criticized my observation.

    But it seems that Plager understands what Section 282 actually states. Section 101 is not a defense expressly authorized by that statute. That omission should be given weight, at least according to Plager.

  131. but the Supreme Court would lash this claim into dog food before you could count to 9.

    From the same guy that predicted Bilski would squash the Diehr-bots.

    Just saying.

  132. Dealertrack says: Look this patent is broad enough to essentially cover the metnal idea of a dealer deciding how fast and in what sequence, to press buttons on a computer, and if they mentally decide that, and press buttons on a computer that infringes these claims.

    I wish they had in fact put a limitation in the claims regarding “pressing a button on a computer”. Then the “claim dissection” would be even more crystal clear than it is here.

  133. Man listen to the oral args, looks like the 3rd attorney espouses my views in their entirety.

    And man, listen to the args near the end:
    Paraphrasing:
    We had software in our system that was causing it to potentially infringe, but then my client took it out, and you’d think we’d be off the hook.

    But you’d be wrong.

    Dealertrack says: Look this patent is broad enough to essentially cover the metnal idea of a dealer deciding how fast and in what sequence, to press buttons on a computer, and if they mentally decide that, and press buttons on a computer that infringes these claims.

  134. Based on all these decisions, are we able to divine where an en banc decision would come out yet? I’m too lazy to try to figure it out.

    I’m not sure about the CAFC en banc, but the Supreme Court would lash this claim into dog food before you could count to 9.

  135. IANAE using a computer to aid a data processing method isn’t limiting at all when a computer is broadly understood to include any general-purpose data processing device that can be programmed however you want.

    This.

    A very simple and irrefutable concept that, if applied consistently, would wipe out a giant swath of The Backlog, force a bunch of unproductive skimmers to get a life, and (most importantly) return our patent system to something resembling sanity.

  136. Based on all these decisions, are we able to divine where an en banc decision would come out yet? I’m too lazy to try to figure it out.

  137. Dealertrack argues that the claim … covers the use of a clearinghouse only in the car loan application process

    That such a fact would be admitted in a patent case by the patentee shows exactly how seedy and rotten the patent game has become. And at the same time we have patentees admitting that every step in their method is old except the step of thinking a new thought.

    Who will be the first judge to just come out and admit that the system is scraping the bottom? Can it get any worse?

  138. Agreed.

    Why spend $10 million on litigation going through the whole rigmarole with a jury trial on 102, 103, and 112 grounds when the claim can be kicked out under 101 at the summary judgment stage?

    Professor Crouch — how is this more efficient? Of course, some district court judges won’t really hear summary judgment motions until right before trial, so maybe in those cases it won’t make much of a difference.

  139. JR In Ultramercial, authored by Chief Judge Rader and joined by Judges Lourie and O’Malley, the court concluded that a process for monetizing copyrighted products using a computer fell on the patentable side of the abstract ideas versus patentable application divide.

    Have the claims in Ultramercial been wiped out by 103 yet? Those were some of the worst ever.

  140. I don’t see any problem with a law, statutory or judge-made, which says that the mere recitation of a computer isn’t enough to turn abstract information processing (i.e., most methods relating to financial transactions) into eligible subject matter.

    The usual complainers are insisting that 103 is so much better. Of course, those same complainers are the ones who go kookoobananas everytime anyone points out why so many of these computer-implemented claims are obvious gxrbage.

    What difference does it make if this gxrbage is wiped out under 101 or 103? The answer is that 103 allows for a paid shill (aka “expert”) to join the games and kick sand in everybody’s face.

  141. Why should this task fall to me? The judge was the one that made that determination, I myself may not have even made that determination.

    However, it appears from the decision that the judge was privy to a lot of information to which I personally am not. Specifically, it appears as if he tells what auto sales (and other sales) companies had been doing for years when utilizing a clearinghouse. They take customer loan info prior to making a sale, send the info to the clearinghouse and receive back information from the clearinghouse as to whether a loan would be granted and at what terms. That I believe is pretty much the “clearinghouse concept” to which he is referring.

    In a more simplified explanation it would be as the court said: receiving data from one source (step A from the customer), selectively forwarding the data (step B, performed according to step D sending the data to the clearinghouse), and forwarding reply data to the first source (step C getting a response back from the clearinghouse).

    Also it is helpful to note that Dealertrack themselves argue: Dealertrack argues that the claim is patent eligible because it covers the use of a clearinghouse only in the car loan application process, and not all uses thereof.

    So, whatever concept Dealertrack believes is the concept of a clearinghouse is the clearinghouse concept which you’re looking for. Instead of asking me what it is, you could send them an email and simply ask them what they told the judge it was.

    Also, we could listen to this oral arg:

    link to oralarguments.cafc.uscourts.gov

    Which I’m doing right now.

  142. jarhead, are you a practising patent attorney? I doubt it, you are much too straightforward and succinct for that.

    Readers, you heard it first here, from jarhead. Forget 101, and pre-emption of the fuzzy concept of “abstract”. 103 is the executioner’s tool, clean as a whistle.

  143. 6 — I’ve got some homework for you. Identify what is meant by a “clearinghouse concept.” Once you’ve done that, explain to all of us poor, uninformed folk why the claim WHOLLY PREEMPTS this concept, as alleged by Linn.

    Are you up to the task? I’ll be waiting….

  144. After I was discharged from the Marines, I sold cars. I would turn my customer over to the finance guy. The customer would fill out a credit application. The finance guy would fax it to a company that would contact multiple lenders and send back the list of banks who agreed to lend the money and their terms.

    This one should not have been patented because every part of the claim existed in the real world long before a network existed, so it would be obvious to put it in a software system using a network.

    I don’t think that has much to do with whether it is abstract or not.

  145. Ultramercial got it right — Dealertrack got it wrong. If claims are going to be invalidated do so under 103 and not 101.

  146. why all the computer limitations weren’t sufficient to not have the claim still being preemptive of an abstract idea.

    Because “all” the computer limitations are just one mention in the preamble that the whole method is generally “computer aided”, and using a computer to aid a data processing method isn’t limiting at all when a computer is broadly understood to include any general-purpose data processing device that can be programmed however you want.

    You might as well try to save the Prometheus claims by amending them to be “chemistry-aided”.

  147. If a trial judge believes that a patent is clearly directed to an abstract/purely mental process, then disposing of the case on 101 grounds is far more efficient than digging in and dealing with 102, 103, & 112 arguments. It’s not necessarily as clear and it remains controversial to some, but when reaching into the tool box of adjudication, the sledgehammer is just as valid a tool to use as the screwdriver or scalpel.

  148. A link: link to caselaw.findlaw.com

    The only thing about this decision that could have used a bit of work is the author more specifically identifying why all the computer limitations weren’t sufficient to not have the claim still being preemptive of an abstract idea.

    You see people who think that the limitations simply had no patentable weight and other people who think the judge simply skipped them because he is an a hole or is rtarded.

    However, I believe that nothing could be further from the truth.

    The judge did notice them and they carry patenable weight in my opinion. However, the claims do not survive Flook.

    The issue in this case is that the claim, without the computer limitations is preemptive of an abstract idea, certainly, that of a clearinghouse. Applicant has thus come in, taken that abstract idea and slapped a computer onto it in various places. In other words, he limited the use of the abstract idea to the field of computer aided clearinghouses.

    In other words, it is my sincere belief that this judge committed no huge error in performing the abstract idea analysis and indeed performed it admirably.

    He followed the formula to the T.

    1. Construe the claims.
    2. Consider any abstract ideas that might be an issue.
    3. Note whether the claim wholly prrempts all uses of each abstract idea that might be an issue. If it does, 101 it.
    4. If the claim does not wholly preempt the abstract idea, write down why. If the “why” is one of the criteria in Flook, then 101 the claim.

    In short, a job pretty well done.

    And btw Jason they really did mean “funding” I think. It isn’t supposed to be “finding”.

  149. and not foray into the jurisprudential morass of §101 unless absolutely necessary.

    Good idea, let’s not render any decisions based on 101 until the Federal Circuit has had a chance to clarify the law.

    Wait, what?

  150. Particularly noteworthy was the court’s conclusion that “i.e.:” in the context of a patent-in-suit could not be read definitionally. Slip Op. 17-20.

    Surely not an absolute prohibition …

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