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. 300

    The quote from Ultramercial was to show that it was off topic.
     
    We both now seem to agree that Ultramercial does not support the patening of software per se.

  2. 299

    which is completely irrelevant

    obviously not. (and it is clearly not merely a matter of the sequence; more smoke)

    But perhaps so in your imaginary world…

  3. 298

    It matters very much if the processing is beyond the capability of reasonable human action.

    Of course, because adding a column of numbers is non-statutory, but adding a million columns of numbers is statutory because you’d like to have the answer in half an hour. That makes perfect sense, doesn’t it?

    Computers don’t do anything we can’t do. They only do it faster, which is completely irrelevant to whether the actual sequence of steps they’re carrying out is statutory or inventive.

  4. 297

    In the imaginary world where…agree on everything, anyway.

    I’m pretty sure that paid advertising has nothing to do with whether or not the named parties “agree on everything”

  5. 296

    nobody cares (or should care, at any rate) whether the data processing is done on paper, in one’s head, or in a computer

    Doesn’t the (otherwise ill-begotten) Cyborsource case hold otherwise? It matters very much if the processing is beyond the capability of reasonable human action.

    As to interfaces that go beyond retina or muscle twitches, see (for example):
    link to computer.howstuffworks.com
    link to csmonitor.com
    link to gizmag.com

  6. 295

    when computers track retina and muscle twitches as sources for instructions?

    You mean, when a human being or part of a human being becomes a computer-readable medium? Won’t that be fun for Beauregard claims?

    Of course, nobody cares where the instructions come from, just like nobody cares what the data represents, and nobody cares (or should care, at any rate) whether the data processing is done on paper, in one’s head, or in a computer.

    Still, I’d be pretty impressed by the guy who manages to invent the interface that can track retina and muscle twitches and turn them into computer-executable instructions. Give that guy a patent for sure.

  7. 294

    Sockie knows “lots” of “crazy people” who “might” pay MD, IANAE, Ned or me to post comments here.

    Nobody could have predicted that he’d be oblivious to the implication that “lots” of rational people would be willing to pay a million different names to disagree with us.

    In the imaginary world where Max, Ned, Malcolm and I agree on everything, anyway.

  8. 293

    Ned, this nonsense of yours about a configured computer is absurd. One skilled in the art would recognize that a general purpose computer is configured to run the software by the software being loaded or readily available for a user to execute the software. Why in the world are you pushing this point? I can only think your motives are not good.

    $$ money people: I notice that ole MM$$ didn’t say he doesn’t get money for posting, but merely said please list a person I may be getting the money from. Well, MM$$ as if the lobbying groups for the pharma industry don’t spend many millions each year for patent legislation that is favorable to the pharma industry and as if it is not well known that the pharma industry is hotile to electrical arts and in particular to information processing and has proposed that the laws be bifurcated for the two groups.

    Make a blanket statement that you aren’t getting paid to post.

  9. 292

    A patent is issued on a tire. The tire is put on a car. The car is stolen and rests in your garage. You do not drive the car. You do not use the tire.

    Does your possession alone suffice to make you an “infringer”?

    You have a computer with a partioned disk. One partition has firmware that operates and meets a patent claim. You do not use that partion.

    Does your possession alone suffice to make you an “infringer”?

    You have a device that has many features, some of which are patented. You use only those features that are not patented.

    Does your possession alone suffice to make you an “infringer”?

    Note: the last example can have in the alternative (and equally so), features based solely in mechanical physical items, features based solely in firmware, or features based solely in software.

    Do you realize how empty your proposition is?

  10. 290

    No, the question then simply becomes “what is your definition of “reconfiguring”?” And that is all.

    Correct 6, but not in the manner that you are thinking of. It is not a matter of making up a definition we “like.” It is a matter of accepting what actually happens. The definition we “like” is harmonious with the rest of the Useful Arts. Why would you think otherwise?

    As for your last question, (knowing jack about), you assume that no one does. This, of course is an errant assumption, driven, no doubt, by your desire not to understand what is entailed in the art.

  11. 289

    Ned: Crusade, then what is the objective?

    AI: Um… Your Crusade! It need no further point than to continue to repost the same old arguments that have been beaten with case law by numerous commenters.

    You have a one man Holy War Ned. That’s your patently-O legacy.

  12. 288

    Ned: Passing the MOT test is the clue

    Ned, you do know the Court never held such, nor made any such ruling, right?

    Now, do you even care?

  13. 287

    Don’t get too exicted 6.

    There is still a working majority on the Supreme Court that supports Diehr and thus Rader and company’s enforcement of the Diehr case.

    Your only hope is if Obama wins and replaces Scalia or Thomas.

    Until then do your job and start issuing patents for claims that pass the DCAT!

  14. 286

    So stop “making shtt up already” I imagine would be the correct response to dreamer.

    But seriously Ned, why can’t you simply admit what the law is today as opposed to making it up?

    Are you really that much of a subversive?

  15. 285

    Ah, so it is all explained by the prevalence here of “crazy people” and “insanity”, lots of it. How kind of you to remind me of that. Thanks for the tip, I’ll hold it in mind, from now on.

  16. 284

    The en banc decision is post Bilski.

    Think about it and report back when you recognize the siginificance (especially in light of your off comment at 2:37)

  17. 282

    “The question then becomes, CAN you actually achieve the same result without reconfiguring the machine?”

    No, the question then simply becomes “what is your definition of “reconfiguring”?” And that is all. Pro-software people make up a definition they like, and the rest of us simply use the definition that exists for the rest of the Useful Arts. The two definitions are somewhat different.

    Oh, and I’m sorry, the question is also whether or not a reconfiguration which nobody knows jack about matters at all for the purposes of patent lawl.

  18. 281

    The obvious answer MM is that any such action, such as tracking retina and muscle twitches, have nothing at all to do with a “purely mental” step.

    I think that you would have a greater concern with advances in electromagnetic field detection and induced pattern creation.

    As for the lame argument from the CAFC, I would be more concerned with your own lame arguments. Not to jump on the bandwagon, but your posts are pretty much useless on most every topic. I wish that you would realize that you actually incite the “sockie” mob and change your posting style.

  19. 280

    Ned,

    You also complain about strawmen, and yet your quote from Ultramercial has absolutely nothing to do with the topic under discussion.

    Why? All you are doing is pursuing your own tangeant thought rather than focusing on the more pertinent facts of the case (at least pertinent to the immediate discussion).

    There was a really good quote on what it means to employ a strawman a little while ago, and this type of manipulation fits that description.

  20. 279

    controlled interaction with a consumer via an Internet website, something far removed from purely mental steps

    How far will those “interactions” be removed from “purely mental steps” when computers track retina and muscle twitches as sources for instructions? Because that’s right around the corner, if not already here. Then what lame argument will the CAFC use to justify the patenting of computer-implemented “revenue collecting” bullshxt?

  21. 278

    Ned,

    Your answer to me is quite disingenuous.

    You complain of “surface treatment,” yet do the same with my response. Ignoring the basic facts is no way to make a case.

  22. 277

    Lots of crazy people out there that might pay you.

    Sockie knows “lots” of “crazy people” who “might” pay MD, IANAE, Ned or me to post comments here.

    Nobody could have predicted that sockie wouldn’t be able to actually name one of these “crazy people.”

  23. 276

    Remote, at least you tend to agree that the software must be present all the time to be considered part of the machine.

    Next we will discuss automatic execution if you choose to.  Otherwise, who is the infinger?, the person who owns the computer but who never calls for the execution of the software.  Suppose he bought the computer from the store with the software preloaded, but he never in fact uses it.  How is he an infringer?

    Can you be a copyright infringer simply by owning a copy?

    Can you be a infringer of a performance right if you never perform.

    Can you be an infringer of a distribution right if you never distribute.

    Can you be infringer of a software patent if you never use the software, never make the software and never sell the software?

  24. 275

    Just, OK, the proposition is that Ultramercial supports the patentability of programmed computers. I said, I thought Ultramercial had a lot of interaction with user. I was hit a rejoinder to which I made the observation that Ultramerical facts is what I was talking about.

    Now you want more. Then here it is direct quote from Ultramercial,

    “Finally, the ‘545 patent does not claim a mathematical algorithm, a series of purely mental steps, or any similarly abstract concept. It claims a particular method for collecting revenue from the distribution of media products over the Internet. In a recent case, this court discerned that an invention claimed an “unpatentable mental process.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed.Cir. 2011). The eligibility exclusion for purely 1330*1330 mental steps is particularly narrow. See Prometheus Labs., 628 F.3d at 1358 (noting that claims must be considered as a whole and that “the presence of mental steps [in a claim] does not detract from the patentability of [other] steps”). Unlike the claims in CyberSource, the claims here require, among other things, controlled interaction with a consumer via an Internet website, something far removed from purely mental steps.”

  25. 273

    A panel relying on an en banc decision? SAY IT ISN’T SO! So far as I’m aware they’ll need to begin the dismantling at the en banc level if they even can there, and appropriate arguments will likely need to be made to force the issue in a suitable vehicle. Otherwise it’ll fall to the USSC to do their job for them … as always.

  26. 272

    They think this is looney question

    That’s because it IS a looney question.

    What part of “just like any other component” do you not get?

    What part of “performs exactly like firmware” do you not get?

    Someone points out to you that the software IS loaded on a machine and not typed from scratch everytime you want to use it and off you go into some incomprehensible accusation of strawman. You want a strawman? How about your insistence on automatic execution? Why is that even being discussed? That has NOTHING to do with patentability or whether something is a new machine or not – NOTHING.

    More like Rain man for you.

    The computer sitting there experiment was put forth long ago (by Ping I think). Funny you failed to address that at that time. I would love to see you with two computers, identical pre-software-loaded and then have you attempt to USE the non-loaded machine in the same manner as the loaded machine. It wont work, even though you can sit there pounding your head onthe keyboard in frustration and repeating your magic word mantra endlessly, mindlessly as if the words themselves had clearly understood meaning “software does not change the machine” and “I don’t think so. No. Definitely not.”

  27. 270

    They also had the opportunity to overrule Diehr and its forebears a long time ago. And they have not.

    Much to Malcolm’s chagrin, no doubt. Must be that c_onspiracy thing.

    D_amm sockies.

  28. 269

    Until the Feds or the USSC get through dismantling Allappat.

    You mean like they did in Ultramercial, which resets Alappat as THEE guiding case law on the subject?

    Sort of like that dismantling?

  29. 268

    Lots of crazy people out there that might pay you. No one ever said it would a worthwhile use of good money to do so. In fact, given the calibre of your posts, it might make for a colorable defense of insanity to pay you say anything.

  30. 267

    Dollars pray tell. Who can you think of, that might think it a worthwhile use of good money, to pay me to write my stuff. Just one name will suffice. Who might it be? Come on, reveal your fantasy. Give me a laugh, do.

  31. 266

    “and yet is abstract by supposedly precluding all uses of intermediaries. ”

    That isn’t really what the judge meant if you take his comments in the context of this case. He’s talking about the use of intermediaries in the context of a case about clearinghouses being used to process loan apps.

  32. 265

    “So, make sure that you fall under Allappat.”

    Until the Feds or the USSC get through dismantling Allappat.

    “This is nothing but a back door to try to exclude software from eligibility.”

    Which is what people said it was bad when Benson came out. Remember? They were totally right.

    “This panel seems to be saying if a wanker can come up with a way of summarizing your method in a sentence then you are abstract and fall under Bilski. The wanker test is what we should call it.”

    I like your test sir. But I’m not sure if it is 100% in accordance with the lawl.

  33. 264

    “”Concept of using the computer to assist the process.”

    “Transformation off the table.”

    “Machine doesn’t add anything, so fails the machine test.”

    “What the computer imparts to patentability.”

    It was a rather good oral arg wasn’t it? Kind of bizarre but still, really good.

    “One is placed against a wall with a gun to your head and told to come up without why you are not an abstract idea.”

    And then summarily shot. I love it. Soon this will filter down to the PTO and we can get on with business as usual without the “policy based BS” that pervades.

    “The methods are being developed only on computers.”

    So… what exactly?

  34. 263

    Anonymous, of course.

    The problem I have with trying to converse with these folks here is that they will not delve deeper than the surface. They want to repeat, endlessly, mindless words as if the words themselves had clearly understood meaning.

    When a computer is executing software, it is THEN configured with the software. But this is a temporary phenomena only. One cannot with any reliability say that a new machine is created. It depends. It depends on whether the software is permanently present. It depends on whether the software is automatically executed when needed.

    As to the first requirement. The folks here will not answer the question of whether a computer is configured if the software is in the same room as the computer, e.g., on a CD. They think this is looney question. But it is not, because it goes to the heart of the matter.

    Is a computer that downloads and executes software from the cloud configured? I think not, at least not until the software is actually downloaded. But then, is this a configured machine or is it an old machine doing something new because it first must go get the novel software from the cloud?

    If a computer does not load and execute software until commanded to do so by a human configured? This is itself and interesting question. Imagine a court proceeding where the suspect computer is sitting there. The patent owner’s attorney attempts to prove infringement by loading and executing the software on the computer. Who infringed, if anybody? I would argue the attorney who loaded and executed software. Not the owner of the computer.

    So when I say that the software has to be present and must be automatically executed, I think I am getting to the essence of the difference between defining a new machine and using an old machine.

  35. 262

    “Ned, the claims are to a method on a computer. ”

    Methods are on computers now? Someone better tell Rader quick! He still thinks they’re intangible!

    “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. ”

    They also had the opportunity to overrule Diehr and its forebears a long time ago. And they have not.

    “he 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’s the best attitude to have. I have to do their jobs for them some too 🙁

    “There really isn’t a valid argument on the other side of this. ”

    Except the one that is the law 🙂

  36. 261

    “But, that motiation no longer exists for software implemented on a general purpose computer. ”

    If we accept Benson as “the beginning” where the judicial exceptions were first applied in this context then GP computers already existed.

    But even so, I’m quite curious how you figure that this motivation “no longer exists”? How so? Do we not still want “other machines” according to yours an Allappat’s view of “new machine” that is implementing the algorithm or equations or however the peabrains of the world want to characterize it? Because so far as I’m aware I still want “other machines” according to yours and Allappat’s view of “other machines” that implement disclosed algorithms etc. In fact, I want LOTS OF THEM.

  37. 260

    “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.”

    Well hopefully you get yourself a 101 and we can watch that one go down in flames too!

  38. 259

    ” 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.”

    You’re welcome!

  39. 258

    You’re asking a really simple question 6’s bane.

    “So … if I add a processor (i.e., a machine) to one of the steps, then no preemption?”

    All you have to do is consider whether the abstraction is has useful applications that do not require a processor. Then you do not have preemption.

    That said, you then have to pass the flook inquiry into whether or not the preemption was avoided by simply adding on post solution activity or limiting the claim to a single field. In your case you seem to simply be limiting it to the field of computers. So you’ll probably lose at that stage either way.

  40. 257

    “Unfortunately, Radar, Newman, et al. are also producing case law that makes it harder.”

    Listen to this guy finally getting on board the 6 train. You’re absolutely right 6’s Bane, that is unfortunate. But, you’re not looking on the bright side. Without those like Rader etc. doing what they’re doing there is a chance that this issue would never make it to the USSC. With the circuit so obviously split the chances of it getting to the USSC are much greater.

  41. 256

    Accusing someone of a strawman might be more effective if a strawman even had a whiff of being present.

    As it is, this is just a lame and empty retort.

    C’mon $$Ned, you can do better. At least pretend you don’t know what is going on (that’s much more plausible).

  42. 252

    Night Wiper The methods/processes that are being developed are unique to the information age.

    Because information was valueless prior to 1985.

    Worst. Script. Ever.

  43. 247

    6's bane, "So … if I add a processor (i.e., a machine) to one of the steps, then no preemption?"
     
    Machine?
     
    Preemption?
     
    What are you talking about?

  44. 246

    I like the designation, but only suggest a small change to reflect priority:

    $$MM
    $$IANAE
    $$Ned Heller
    $$MaxDrie

  45. 245

    One of their other filthy little games is try and say that the computer is “just” a calculator so it addes nothing. Yes, a person could theoretically do any computation the computer does. So what. The methods/processes that are being developed are unique to the information age. They are sophisticated machines that are performing methods that have never been performed before and revolutionizing commerce and every aspect of our society.

    The computer is a tool that has enabled the development of these inventions. The inventions are machines. Period.

    Can’t wait for the $$ people (dollar people are the ones that get paid to sit and comment on these boards). MM$$, IANAE$$, etc.

  46. 243

    Endless Geek:

    This business of an old machine and new software is one of the games the criminal minds are playing. They want to circumvent Allappat and the slightest reason will get their tiny brains zooming. They don’t mind unfairly characterizing information processing inventions.

    Just imagine what a horrible senseless mind would hold an invention ineligible for patentability under 101 using a judicial excpetion and include in the holding that the invention was well known. So, rather than saying to accused infringer that if what you say is true, it should be easy to invalidate this under 102 and 103, the criminal minds say inelgible under 101. Just shameless human beings.

    And their attempt to circumvent Allappat is just as shameless. And their attempt to circumvent Diehr by trying to split up the invention into old and new components rather than consider the invention as a whole is another shameless act of a criminal type mind.

    I had to take a shower after listening to the oral arguments. What filth.

  47. 242

    I think they threw the wrong one away. GHA GHA GHA GHA!

    There was young Cowboy who lived on the range.. (Or is it cooked in a Range?) His horse and Seasaddle were his only companion. He then parked his horse and he broke many Canons, waiting for Seasaddle to die on the range.
    So goodnight you dirty doggie, rockabye sweet baby Roy.
    Only deep blues are the colors I choose. Won’t you let me go down in my Dreams… And rockabye all College Teams.

  48. 241

    as opposed to a merely using the old computer to run new software

    Basic misunderstanding here.

    One does not use an old computer to run new software. To say this is to indulge in a colloquialism that misrepresents what is actually physically happening.

    One may reconfigure an old computer to be a special purpose new computer with the addition of software, which reconfigures the old computer.

    What the newly reconfigured (new) computer does once it has the new software component integrated, then, is a different question (whether it merely manipulates data).

    What I believe that Ned Heller is trying to get at is whether or not the computer actually needs to be reconfigured with software (period) to be able to manipulate data.

    That’s a more fair question.

    But that is definitely a different question than “does software change a machine?”

    If you could achieve the same result without reconfiguring the machine, then the software really wasn’t necessary and really is not important to the new machine. The machine is still new, it is just also still equivalent.

    The question then becomes, CAN you actually achieve the same result without reconfiguring the machine?

    You will note that this reconfiguring can be done in a number of comparable ways, including:
    reconfiguring by actual hardware change,
    reconfiguring by actual firmware change, or
    reconfiguring by actual software change.

    Anyone trying to tell you different is trying to sell you a bill of goods.

  49. 240

    Are there any more insincere words than “Regardless, it seems” ?

    That’s like saying “You are right, but let’s not talk about that.”

    I think “pass the MOT” should also be banned. MOT is not a test that you pass, it is a clue you review.

  50. 239

    So, the panel pretty much said that Allappat was good law and yet didn’t apply it. Diehr was also said to stand for you can’t strip out the method from the computer and ask what does the computer add.

    Criminal type minds is what we are dealing with.

    I wonder what the paid commercials on the board will say? MM$$?

  51. 238

    You, what just should strike any decent human being in the face is that if this is an abstract idea then 102 and 103 are not only the tools to use, but should be able to be used in summary judgement. And if they can’t be used in sj, then it is not an abstract idea. That should be the test.

  52. 237

    A machine that processes (transforms) information with a method that would not be used or discovered without our new tool the computer, and yet is abstract by supposedly precluding all uses of intermediaries. What a joke. Simply outrageously ridiculous reasoning. And, Allappat was skirted.

  53. 236

    Allappat: seems to be saying in the oral argument that a programmed computer is a particular computer. So, make sure that you fall under Allappat.

    Witch hunt in general.

    What a joke the federal circuit judges are. Near criminals. This is nothing but a back door to try to exclude software from eligibility. Odd, how they seemingly approved of Allapat and yet one can’t avoid Allappat by the district court claim construction.

    This panel seems to be saying if a wanker can come up with a way of summarizing your method in a sentence then you are abstract and fall under Bilski. The wanker test is what we should call it.

  54. 235

    Oh my, these judges need to be removed. I listened to the oral arguments.

    “Concept of using the computer to assist the process.”

    “Transformation off the table.”

    “Machine doesn’t add anything, so fails the machine test.”

    “What the computer imparts to patentability.”

    Non judge “The district court construed … that the computer carries out each step of the method.”

    “There is an abstract idea in this claim. If you want to deal with multiple parties do it with intermediaries.”

    “Abstract idea underlying this.”

    lawyer : ”

    This is a machine that is implementing

    One is placed against a wall with a gun to your head and told to come up without why you are not an abstract idea.

    “First read without computer, then ask if computer adds anything significant.”

    Me: The methods are being developed only on computers.

  55. 234

    merely using the old computer to run new software that

    An old computer re-configured with new software is no longer the same old computer.

    That’s a fact.

    Add that to your list.

  56. 233

    I think that fits the fact pattern in Utlramercial

    I think you need to explicate a little more on the fact pattern in Ultramercial; as in, the fact that software is to be considered a mere component of a computer (just like a piece of hardware of a “piece” of firmware).

    You still have not addressed the fact as well that firmware and software operate in a basically identical manner (at that component level).

  57. 232

    failed the MOT clue.”

    Fixed. It’s only a clue. And an inconclusive one at that (tending to show patent eligibility when passed, i.e. it’s a one-sided clue).

    That would be a permissible interpretation of the cases, I believe.

    Do you get paid to make this shtt up?

  58. 231

    For you I will make an exception – I will slam the door on your a@@ on the way out.

  59. 230

    “Thus abstraction may be permissible under the court’s reasoning only with method claims that fail the MOT as a first step.”

    So … if I add a processor (i.e., a machine) to one of the steps, then no preemption?

  60. 229

    If done according to the law, there is no going “kookoobananas.”

    You wish, sockie. One thing we can all agree on: the law does not say that a “computer-implemented” method is automatically patentable just because the method hasn’t been “computer-implemented” before. But if you pay attention to the Kookoo McSockpuppet & Friends, that is exactly what the seem to believe. Either that, or they pretend that it’s somehow uncouth to call a p.o.s. patent a p.o.s. patent, as if only judges are allowed to do that. You know what I’m talking about, sockie. You’re part of the problem, which is to say that more and more members of the judiciary are growing tired of the pure shxt that is wasting everybody’s time and money.

  61. 227

    anon, my apologies there anon.  I really do not know who I am talking to at times given that so many people here seem to use the moniker portion of the post to provide commentary.  

    However, iirc, the Ultramerical case was about a system and about software on a system, just as much as was the case in Alappat.  When a programmed computer interfaces with other apparatus or with users, I think the software is implicitly required to be present and part of the system as opposed to a merely using the old computer to run new software that does not do anything other than manipulate data.

    As to holdings and dicta, didn't we also cross swords on whether certain passages from the rules packages decision was dicta?

  62. 226

    Ned,

    Further, your comment of “Once more, you should recall that I have also agreed that “system” claims where the computer interacts with other machines or components of a machine, where the novelty is in the novel software, are also patentable.” does not help your case; rather, it is an admission that your logic is faulty. As per Ultramercial, software quite frankly is a component of a machine that interacts with other components of a machine.

    The “system” is merely a computer programed with software. You have admitted defeat of your own argument. If you think about how silly your position is once you realize what you have admitted, you may be genuinely shocked.

  63. 225

    Ned,

    It was I that cited the holding in Alappat that you are attributing to OMITB.

    That’s a different discussion than a pure attribution to what Rader discusses in Ultramercial, and one that I am quite convinced that you are dead wrong on. We covered this in the discussion after Ultramercial was released. I prevailed on that day, just as I still prevail on that point. You do not get to redefine a case’s holding just because you don’t like that holding.

    Remember that the government pushed the line of thought that results in a holding to defeat that line of thought. You need to re-read Alappat, as well as our discussion of that case.

    You might want to refresh your understanding of Holding versus Dicta – which I notice is a sub-topic on one of the current threads here at Patently-O. The court’s decision was directly on point to an argument, that had it succeeded, would have defeated the patent. Such a decision is defined as a holding. It is you that somehow only want it to be dicta, but your desire simply fails.

  64. 224

    6’s Bane, “”I see it takes the method claim, reduces it to its essential steps and states that the abstracted essentials are old.”
    A gas turbine engine is a practical application of the Brayton Cycle. However, if I were to claim a specific version of a gas turbine engine, would it be appropriate to reduce the engine to its essential steps (i.e., the Brayton cycle) and then assert that this is not 101 eligible because it “wholly prempts” the Brayton cycle?”

    I think there is a difference between the claim to a machine and the method claims at issue here. You will note the abstraction method used by the court here and in Bilski were with respect to method claims that had already failed the MOT test.

    Thus abstraction may be permissible under the court’s reasoning only with method claims that fail the MOT as a first step.

    That would be a permissible interpretation of the cases, I believe.

  65. 223

    Once more, you should recall that I have also agreed that "system" claims where the computer interacts with other machines or components of a machine, where the novelty is in the novel software, are also patentable.  

    I think that fits the fact pattern in Utlramercial and is consistent with the Allappat majority opinion, but not necessarily to Rader's Alappat concurring opinion which  you have cited as the holding in Allappat.

  66. 222

    “everytime anyone points out why so many of these computer-implemented claims are obvious gxrbage”

    If done according to the law, there is no going “kookoobananas.”

    If attempted to skirt what the law actually is, then you can join Renee Marie Jones and Chris and leave and don’t let the door hit you on the way out.

  67. 221

    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.

  68. 220

    Regardless, Throwback, it does seem that if the claimed subject matter is directed to and limited to disclosed software and that the claimed machines interact with another machine or a user, that the claims will pass 101 muster.

    If however, as in Bilski, the claims are not limited to software/interaction, but simply cover steps that could be performed by a human, but which do not involve any physical transformation, that the claims will not be approved.

    But the way the court gets to the result is interesting. There appears to be two different approaches. One to extend the mental steps doctrine to steps that can be performed by a human where the claims do not pass the MOT.

    The second is to “abstract” the claims (that do not pass the MOT) into their essential elements, determine that they are old and well known, and then declare the claims invalid. I see the approach to be more consistent with Section 102 than the mental steps approach.

  69. 219

    I understand what you are attempting to (incorrectly) say. I am having no trouble at all understanding what you are pushing. It’s just that what you are pushing is not the law.

    Your “using a computer” lacks any byte. USE the computer. But I bet if you USE a computer that does nto have software loaded on, how you can USE that computer will be vastly different than when you USE a computer that has been recogniffured with software.

    What you don’t seem to understand is that using a computer is very different than reconfiguring a computer by loading software on that computer. Use the computer all you want – but if you have not changed the computer by loading software (or firmware, since they operate in essence in exactly the same manner), there is no way to violate a patent that calls out for such software.

    What you don’t seem to understand is that the difference you want to point to is a fallacy. What you don’t seem to understand is that this fallacy of yours has been called out and is recognized in existing case law (See Ultramercial – which you STILL have not addressed, see Alappat which explains why BOTH firmware and software meet the same patent-eligibility aspects of the law.)

    Like I keep telling you – your screen doors on your submarine ARE the problem you need to address. You keep on saying “But I have closed the screen doors.”

    The basic problem is that you don’t understand the basic problem.

  70. 217

    once more,

    There is a difference between using a computer and a new computer.  You don't seem to understand that there is a difference.  That is the basic problem here.  Until you do, you are going to have difficulty understanding what I'm talking about.

  71. 216

    6's Bane:
    "A gas turbine engine is a practical application of the Brayton Cycle. However, if I were to claim a specific version of a gas turbine engine, would it be appropriate to reduce the engine to its essential steps (i.e., the Brayton cycle) and then assert that this is not 101 eligible because it "wholly prempts" the Brayton cycle?"

    No

  72. 214

    But unless limited by the words “non transitory” or so such, not necessarily

    Hiding behind semantics does not give that which is asked.

    It is very much “necessarily” that you answer the two points above. All that is accomplished with your semantics is that you have closed the screen doors on your submarine. You need to do more before you put your U-boat into the water.

  73. 213

    “Because the claim covers the abstracted essential steps, it wholly preempts the abstract(ed) subject matter.”

    This is where Federal Circuit logic has taken a long walk off a short pier. “Wholly preempts” means it covers ALL of the alleged abstract idea. However, the claim doesn’t wholly preempt the alleged abstract idea. It covers only a portion of it.

    “I see it takes the method claim, reduces it to its essential steps and states that the abstracted essentials are old.”
    A gas turbine engine is a practical application of the Brayton Cycle. However, if I were to claim a specific version of a gas turbine engine, would it be appropriate to reduce the engine to its essential steps (i.e., the Brayton cycle) and then assert that this is not 101 eligible because it “wholly prempts” the Brayton cycle?

  74. 211

    6’s Bane,

    Good memory there.

    Regarding CyberSource, don’t blame this too much on Dyk. It seems that the court in that case and in this case is applying the methodology of Bilski, as first developed by Chief Judge Rader in the en banc Federal Circuit case. The methodology as I see it takes the method claim, reduces it to its essential steps and states that the abstracted essentials are old. Because the claim covers the abstracted essential steps, it wholly preempts the abstract(ed) subject matter. The implication is that the details of the claim are obvious.

    I fully agree with you on on Marine Polymer v. HemCon. How one can apply intervening rights to original claims in the patent boggles the mind. These are not new claims or even claims in a reissue, where the reissue claims are claim in a new patnet. The claims in the reissue constitute a continuation of the claim from the original patent if there is no substantial change.

    Becaus the unchanged claims in a reexamination are are the original claims, the issue of substantial change simply should not arise.

  75. 210

    relative terms that are meaningless in the patent sense

    firmware is loaded, just as software

    firmware can be changed, just as software

    software executes, just as firmware (at its core)

    what firmware does is exactly what software does

    The distinctions you have claimed FAIL to make a substantive patentable distinction

    Try again (and do not mistake multiple failed attempts as even once successfully making the distinction.

    And (for the first time, ever), address the current guiding case law in Ultramerecial. You seemed to have forgotten about that (yet again).

  76. 209

    When your posts outnumber those you “argue against” by a typical two to one margin and you lead into that discussion thread after thread after thread…

    The answer to “Really?” is an easy “Yes, really.”

    It’s all in black and white and rather difficult to kick up that much dust to cover your tracks.

  77. 208

    business methods that relate to technology

    BZZZZT – wrong. See previous posts about the fact that there is no “technological arts” test.

  78. 207

    Whoever you are, I have, many times, I have told you the distinction between firmware and software. Not once. Not twice. But many times.

    Think back. There is something about the words "always present and automatically executes," that sound familiar. There's also something about the words "non-transitory," that come to mind.

  79. 206

    Actually, one of the reasons that the Supreme Court said that they cannot categorically exclude business methods as patentable subject matter is because there was no well accepted definition of the business method that would include only subject matter that was nonstatutory and exclude subject matter that was statutory. The best Supreme Court could do is to suggest that since there is no bright line test, that we apply the test they developed in their prior cases and left open to the Federal Circuit to develop further tests that would implement a distinction.

    So what we see the Federal Circuit doing is trying to develop test that makes the distinction. They want to exclude such business methods that have traditionally been thought to be unpatentable while not including business methods that relate to technology. I suggest we figure out a good test to help them if we can.

  80. 205

    Crusade, then what is the objective? 
     
    I argue against those who have a crusude suggesting that there overbroad statements of the law are incorrect, and suddenly I have a Crusade? Really?

  81. 204

    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.

    Except it does not.

    This much is clear from Ultramercial in which software is directly related to either firmware or hardware.

    Ned, I have tried to find where you have answered the question as to the substantive difference between software and firmware and cannot find it.

    You have professed a belief that firmware is patent eligible, but without being able to distinguish why software is different (in a critical patent manner), I do not understand your position against software.

    So your argument here fails on two fronts:
    1) actually distinguishing in a meaningful manner the patent difference between software and firmware, and
    2) actually addressing the current guiding case law on the subject in Ultramercial.

    The next time you dedicate so much time to this subject, please take into account these two items. Otherwise, the screen doors on your submarine are left flapping in the current.

  82. 203

    Night Wiper: MM: the claims recite “A computer aided method of.” So, how is it not a method on a computer?

    How is that not moving the goalpost? We were addressing your assertiong that the patent at issue is a software patent.

  83. 202

    “it is also clear that the [Linn & Dyk] will find a way to declare BMPs unpatentable subject matter regardless of [statutory law].”

    There … fixed it for you.

    BTW — can you define the term “business method patent” for me? What distinguishes a business method patent from a non-business method patent.

  84. 201

    “What this means is the Cybersource three should be impeached.”

    I made the following points to 6 on a different forum, but they apply here:

    Linn and Dyk are on this panel and Linn wrote it. To get a flavor to where they stand, you should read their joint concurrence within In re Bilski. Let me refresh your recollection, this is the one in which they spent a lot of time looking at 18th and 19th century law and English common law to determine what should (or should not) be covered under 35 U.S.C. § 101.

    Linn and Dyk were also together on In re Jung. If you recall, this is one where Appellant argued that neither the Examiner nor the Board set forth a claim construction as to the critical term, and as a result, a prima facie case of unpatentability was not established. Well, Linn didn’t think claim constructions were too important and affirmed.

    Dyk wrote Marine Polymer v. HemCon (now going to be heard en banc and likely overturned)

    Linn and Dyk were together on Perfect Web Tech v. InfoUSA. Here the Federal Circuit affirmed a finding that a step to a computer claim was obvious because “the final step is merely the logical result of common sense application of the maxim ‘try, try again.’” Importantly, they affirmed a conclusion of obviousness based on a motion for summary judgment. This means they pretty much thumbed their noses at the Graham factual inquiries and letting the jury decide the issues of fact.

    In another one of my “favorites,” Dyk wrote “In re Lovin,” where they allowed an argument to be ignored by the BPAI because it allegedly did nothing more than “merely point[] out what a claim recites.” This decision is another thumb to the nose of administrative law and the Examiner’s burden in establishing a prima facie case. Do a search on the BPAI website and see how many times this case has been cited in order to ignore arguments (last check 66 times). Not bad for a case that came out in July of 2011.

    What else … of course, there is Cybersource, coincidentally write by Dyk. Similar to how Linn abstracted a claim to be nothing more than “the basic concept of processing information through a clearing house,” Dyk abstracted a method of verifying the validity of credit card transactions (something that would NEVER be performed in the human mind) to something that could be performed in the human mind alone. The Cybersource decision was funny in that after exorcising patentee for not including sufficient “hardware” in claim 3, Dyk completely ignored all of the limitations that clearly tied the Beauregard claim 2 to a computer.

    Linn & Dyk are on a crusade to give the likes of MM & 6 everthing they want. Unfortunately, Radar, Newman, et al. are also producing case law that makes it harder. Eventually, this will have to go back up to SCOTUS. Bilski was a disaster of a decision with regards to 101 jurisprudence.

  85. 200

    “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.

  86. 198

    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?

  87. 197

    There is zero justification for making a statement like this.

    Justification is not a requirement to pursue an agenda.

  88. 196

    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?

  89. 195

    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?

  90. 194

    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.”

  91. 193

    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.

  92. 192

    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.

  93. 191

    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.

  94. 188

    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.

  95. 187

    “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.

  96. 186

    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?

  97. 185

    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.

  98. 183

    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.

  99. 181

    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.

  100. 180

    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.

  101. 179

    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.

  102. 178

    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?

  103. 177

    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.”

  104. 175

    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?

  105. 174

    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.

  106. 172

    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!

  107. 171

    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.

  108. 170

    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.

  109. 169

    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.

  110. 168

    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.

  111. 167

    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.

  112. 166

    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.

  113. 165

    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.

  114. 164

    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.

  115. 163

    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.

  116. 162

    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?

  117. 161

    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.

  118. 160

    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.

  119. 159

    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?

  120. 157

    You’ve asked this question like five times now.

    Angels dancing on the heads of pins.

  121. 156

    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

  122. 155

    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?

  123. 154

    “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.

  124. 153

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

  125. 152

    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.

  126. 151

    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.

  127. 149

    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.

  128. 148

    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.

  129. 147

    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.)

  130. 146

    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.

  131. 144

    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.

  132. 141

    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. 

  133. 140

    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.

  134. 139

    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?

  135. 138

    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.

  136. 136

    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!

  137. 133

    personally attacking a commenter

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

  138. 131

    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?

  139. 130

    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.

  140. 129

    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?

  141. 126

    ” “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.

  142. 125

    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.

  143. 124

    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.

  144. 123

    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!

  145. 122

    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!

  146. 121

    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!

  147. 118

    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”.

  148. 117

    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?

  149. 116

    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!

  150. 115

    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”)

  151. 114

    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!

  152. 113

    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.

  153. 112

    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….

  154. 111

    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.

  155. 110

    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.

  156. 109

    ” 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.

  157. 108

    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!

  158. 107

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

    I agree.

  159. 105

    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.

  160. 104

    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.

  161. 103

    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.

  162. 102

    “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”.

  163. 99

    EG, obviously because the basis of the decision below and the appeal was 101, not 102.  If they switched to 102, they probably would also have to remand.

  164. 96

    …but not the technology implementing a BM …

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

  165. 94

    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?

  166. 93

    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?

  167. 92

    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.

  168. 91

    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.

  169. 90

    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.

  170. 89

    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.

  171. 88

    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.

  172. 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?

  173. 86

    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.

  174. 85

    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?

  175. 84

    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.

  176. 83

    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.

  177. 82

    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.

  178. 81

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

  179. 80

    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?

  180. 78

    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.

  181. 76

    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.

  182. 74

    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.

  183. 73

    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.

  184. 72

    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.

  185. 71

    Patentable subject matter remains nonstatutory.

    This statement fails on its own weight.

  186. 69

    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.

  187. 66

    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.

  188. 65

    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.
     
     

  189. 64

    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.

  190. 62

    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.

  191. 61

    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.

  192. 60

    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.

  193. 58

    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.

  194. 57

    You are welcome IANAE, except I am not RtGftHBYSftH.

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

    Want to play some Calvinball?

  195. 56

    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))).”

  196. 54

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

  197. 53

    “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.

  198. 52

    Why?

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

  199. 51

    “abstract idea”

    “purely mental process”

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

  200. 50

    “pre-emptive”

    “abstract idea”

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

  201. 49

    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.

  202. 47

    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.

  203. 46

    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.

  204. 44

    “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.

  205. 43

    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.

  206. 39

    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.

  207. 38

    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.

  208. 37

    “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.

  209. 36

    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.

  210. 35

    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).

  211. 33

    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.

  212. 32

    “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.

  213. 31

    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.

  214. 29

    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.

  215. 28

    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.

  216. 27

    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.

  217. 25

    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.

  218. 24

    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.

  219. 23

    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.

  220. 22

    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.

  221. 21

    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.

  222. 20

    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?

  223. 19

    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.

  224. 18

    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.

  225. 17

    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.

  226. 16

    Thanks Jason. I see now: “a patent-in-suit” refers to “one of the patents at issue in this case.”

  227. 15

    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.

  228. 14

    Yeah, it’s obvious that I’m not an attorney. I’m much smarter than that. I’m obviously an inventor.

  229. 12

    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.

  230. 11

    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….

  231. 10

    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.

  232. 9

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

  233. 8

    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”.

  234. 7

    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.

  235. 6

    I agree – I think the court was using sic. to replace “finding” with “funding.” (The claims are copied directly from the opinion).

  236. 4

    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”.

  237. 2

    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?

  238. 1

    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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