Patent of the Day: Protecting Copyright through Patents

This morning I was browsing through some patents. The first one I looked at is Patent No. 8,185,967 issued to Digimarc and titled a Method and apparatus for content management.  The patent claims priority to a series of continuations that lead back to a provisional application filed in 1999.  And, the gist of the invention appears to be a technological method for enforcing a licensing agreement that limits the number of times a video is accessed by users.  

The patent’s claim 1 includes two basic steps: (1) maintaining a list of identifiers associated with previously accessed A/V items; and (2) restricting access to those A/V items.  The claim includes a limitation that the steps occur using “electronic memory” and a “programmed electronic processor” that are part of a “portable device.”

Claim 1 reads as follows:

1. A method comprising:

utilizing electronic memory housed in a portable device, maintaining a listing of up to N identifiers associated with previously accessed audio or video items, where N is an integer, and where each previously accessed audio or video item has an identifier associated therewith;

utilizing a programmed electronic processor housed in the portable device, i) restricting access to an encountered audio or video item if an identifier associated with the encountered audio or video item is one of the N identifiers associated with the previously accessed audio or video items, or ii) limiting a number of content items each with a different user identifier associated therewith that can be accessed in a certain amount of time. 


 

192 thoughts on “Patent of the Day: Protecting Copyright through Patents

  1. If in my honesty, you find disrespect, then that is a “you” problem that you created by your actions – and nonactions.

    As What A Hoot states on link to patentlyo.com , the offer of a olive leaf -I cannot even call it an olive branch – is not an answer to my questions posed to you.

    I am not asking you to announce defeat, but likewise, we have not gotten past anything if you continue to avoid answering my inconvenient questions and you continue to post spurious positions of law. I hope that you duly expect me to hold you to the professional standard that I know you are capable of in order to repair your tattered credibility.

  2. you anon are not immune to the propensity of the pro-software patent types to avoid any discussion of real cases.

    This comment coming from Ned Heller addressing the poster who tried to get Ned to walk through a very respectful three step process on software patenting is a slap in the face of someone who tried to treat Ned with a little respect.

    Is it any wonder, Ned, that your posts gather such acrimony?

  3. anon, I replied to this quite awhile ago. Apparently it did not get posted.

    However, you anon are not immune to the propensity of the pro-software patent types to avoid any discussion of real cases. You simply say, perhaps better than most of your fellows, that you are wrong. One example of this is this very post in which you say that my citation of authority “leaves much to be desired.” This type of argument is at such a high level of abstraction that it cannot be rebutted. It amounts to an ad hominem attack while appearing not to be.

    anon, I thought you and I had moved beyond this. You chided me that I never asked Malcolm to tone it down a bit. I agreed that I had not, and I asked him directly to do so in your case because of your occasional attempts to engage in substantive discussion. And in response, what do I get?

    This?

    I think, anon, that you should be a little more respectful in your posts to me or about me. I would also ask you to distance yourself from your fellow posters who use flame throwers in virtually every post. You know who they are, and your association with them by at least your silence is not becoming staining your own reputation.

  4. Gotta go with the peanut gallery here

    Rejected for indefiniteness. Which peanut gallery are you referring to?

  5. Gotta go with the peanut gallery here. Since “valid” WRT a patent is not a concrete thing as far as the universe cares, a patent is only “valid” or not when the appropriate legal mechanism runs its course.

    Here, the patent is “valid” because the PTO issued it, and valid it will stay until litigation or re-examination says otherwise.

    The closest we can get is to say that IMHO, if tested, a competent court should not uphold validity.

  6. That second alternative really seems to foul the claim under §112. The method steps don’t appear to go together in any logical fashion.

    Paraphrased and parboiled…

    1. A method comprising:
    [x] using the memory in a portable device, maintaining a list of identifiers associated with previously accessed items;

    and,

    [y] using the processor in the portable device, limiting a number of content items each with a different user identifier that can be accessed in a certain amount of time.

    The step in [y] has nothing to do with [x].

    A method comprising the steps of:
    [a] using the gas tank in an automotive device, maintaining a number of gallons of fuel;

    and,

    [b] using the stereo system in the automotive device, listening to some groovy tunes.

  7. Just because invalidity has yet to be proven in court does not mean that a patent is actually valid.

    Actually, it means precisely that.

    It really does take that future and (thus uncertain) event to ACTUALLY HAPPEN in order to say that the patent is invalid. Until that ACTUALLY does happen, it’s all supposition.

    Bald supposition. Especially when compared to the plain and simple truth of the moment – RIGHT NOW.

  8. because Section 282 exists is just silly and wrong

    Nonetheless, the law is the law and you are not free to ignore it just because you feel it is just silly and wrong.

    Sorry Smitty, you too must obey the law.

  9. I humbly submit that you don’t get how presumptions work.

    I humbly submit that you don’t know what the word “presumption” means.

    A presumption carries as if it were indeed fact until it is rebutted. Rebuttals of this presumption only occur in court.

    Until that day in court, the patent IS valid.

    That is the law.

    A legal presumption only presumes a legal conclusion, not a factual one. If the presumption can be rebutted with clear and convincing evidence, then there is nothing factual about the presumption.

    Section 282 merely says that an issued patent must be presumed valid in the absence of evidence to the contrary. It says nothing as to whether a patent is indeed valid under the Patent Act. Just because invalidity has yet to be proven in court does not mean that a patent is actually valid. Hence, saying that one person’s arguments for invalidity are empty or wrong because Section 282 exists is just silly and wrong.

  10. I humbly submit that you don’t get how presumptions work.

    A presumption carries as if it were indeed fact until it is rebutted. Rebuttals of this presumption only occur in court.

    Until that day in court, the patent IS valid.

    That is the law.

  11. I humbly submit that “presumed valid” is not the same as “valid” or “not invalid”.

  12. You have ducked the point on topic, and thus have not proven 967 Patent remain invalid.

    Nice strawman and red herrings but the 967 patent remains a valid patent.

  13. David, if you look closely, you will see that A and C have nothing to do with each other.

    It appears that the claim originally was to Step A + Step B. The “or step C” actually is unrelated to the A + B process.

    Breaking it down, the claim claims two independent processes:

    Process 1: A + B

    or

    Process 2: C

    Obviously, the claim is trying to claim two independent and distinct inventions in one claim. This is, I think we all will agree, is a Section 112 problem.

  14. 6: Does your wife not wonder who you’re bothering when you go off by yourself to troll?

    Assumes waaaaaaaay too much.

  15. Judging, we have to remember that Alappat took place right after Donaldson where there was a war between the PTO and the Feds over the applicability of 112, p.6 to examination. The major point of the appeal was that the PTO claim construction was wrong.

    From Alappat:

    “As recently explained in In re Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1050 (Fed.Cir.1994), the PTO is not exempt from following the statutory mandate of § 112 ¶ 6, which reads:

    An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
    35 U.S.C. § 112, paragraph 6 (1988) (emphasis added).[15] The Board majority therefore erred as a matter of law in refusing to apply § 112 ¶ 6 in rendering its § 101 patentable subject matter determination.

    Given Alappat’s disclosure, it was error for the Board majority to interpret each of the means clauses in claim 15 so broadly as to “read on any and every means for performing the functions” recited, as it said it was doing, and then to conclude that claim 15 is nothing more than a process claim wherein each means clause represents a step in that process. Contrary to suggestions by the Commissioner, this court’s precedents do not support the Board’s view that the particular apparatus claims at issue in this case may be viewed as nothing more than process claims. ”

    However, the applicant also argued on appeal that even if the PTO’s claim construction was correct, i.e., that it was claiming mathematics and not hardware, their claims were still patentable because the mathematical process was limited, by the preamble, to the graphics display.

    The Feds agreed,

    “Furthermore, the claim preamble’s recitation that the subject matter for which Alappat seeks patent protection is a rasterizer for creating a smooth waveform is not a mere field-of-use label having no significance. Indeed, the preamble specifically recites that the claimed rasterizer converts waveform data into output illumination data for a display, and the means elements recited in the body of the claim make reference not only to the inputted waveform data recited in the preamble but also to the output illumination data also recited in the preamble. Claim 15 thus defines a combination of elements constituting a machine for producing an antialiased waveform.”

    This distinguished Flook. I agree that it did.

  16. AI, why do you do this bro? Seriously? Just troll all day long? Does your wife not wonder who you’re bothering when you go off by yourself to troll?

  17. “if you truly understand vacuum energy, then you will note that Casual Observation, very much unlike AI, raises a nuanced point in response to Ned Heller’s proposed definition of “abstract” at 1) ”

    As soon as 6 and Ned are backed into a corner with questions based on logic, fact and/or case law they cut and run and start a thread accusing the questioner of being AI.

    Certainly must be flattering to AI, but it makes 6 and Ned look rather foolish and beaten in these threads.

  18. Sorry Ned, but your history of “citation” – for both law and facts – leaves too much to be desired.

    You simply have lost credibility due to your blind and passionate pursuit of your agendas. You may continue to post in your own name, but there is no accountability accruing from that. Your choice of comrades-in-arms further erodes any credibility that you may wish to build.

    I wish you well, and enjoy the conversations when I actually have success in pulling answers out of you, but the larger picture is as clear as it is not in your favor.

  19. The point is that software can be claimed as a process or a machine.

    It is quite intellectually dishonest of you to take a position that Alappats invention could only be interpreted as a machine and then post claim 15 which is a means claim.

    All of this begs the question, of why is the 967 patent invalid?

    And since nothing in Alappat invalidates the 967 Patent you have once again failed to answer this question with any prior art, or legal analysis and citation.

    Thus, the 967 Patent remains valid.

    Deal With It.

  20. Ahhh now we can add…

    “Man, this blog has the d-mbest trolls.”

    to the list of

    ” Ding Ding we have a winna”

    “Big ol computer brain”

    “GFY”

    and pretty much any post by Hans Blix to identify Malcolm Mooney, AKA MM, the original tr-oll and s-ckpuppets.master of Patently O

  21. It seems, the great Ned Heller loses quite a bit to the self admitted rank amateurs on this board.

    That others, obvious professional patent attorneys, have to point out these mistakes and defeats is just plain embarrassing

  22. What I get from the sock puppet is “you are wrong.” That’s it.

    Ahh the classic “I am normal. Everyone else is crazy.”

    clear paranoid delusion and denial from one suffering from psychosis,

  23. MTBHTDT stands for “Man, this blog has the d-mbest trolls.”

    Actually, it’s mainly just one or two trolls and their ever-devolving s-ckpuppets. But they are d-mber than rocks.

  24. Since there is no machine, transformation, or technology requirement by the Court or statute, what else could there be beyond the application and integration of the concept?

  25. Umm..let’s see.

    One commenter provides analysis and rational arguments with citations to legal authority and you respond with attacks.

    This of course combined with your well documented pathological ha tred for Judge Rich, and the denying that software and business methods are patent eligible subject matter suggest you may be the one with a severe psychosis.

  26. You are more than just a little thick, aren’t you 6?

    The questions were not asked for my benefit. They were asked to point out those making shallow comments really don’t know what they’re talking about.

    I now include you in that group, as you too have failed to answer the question.

    But thanks for playing anyway.

  27. Thank you for better explaining the nature of your t ardation without requiring me to tell you about vacuum energy. Turns out that you’re t arded with, and probably to further, an agenda by your own admission. Specifically, it appears that you wish to cast into question what the nature of physicality is so that you might be able to claim things which otherwise you would not.

    Interesting, but not all that unexpected. Indeed, I have applicants trying to do the same t arded thing in actual prosecution. I of course slap them down with ease and their attorney calls me up all laudatory over deftness of my approach. It is really quite amusing to witness in real life. And the reason is that it is not the courts, or me, or some other esteemed institution that is confuzzled over the “nature” of nature itself, or of the subject matter over which we preside. It is the applicants who sit and watch specials on physics without any actual training who get all confuzzled and do not understand.

    “Will you assist me in dropping an anvil on those who bandy the term “physical” in disregard to what that term entails and to what patent law applies?”

    No you tard.

    Just btw, you can find the answer to your question if you read the wiki on the subject in full, down to the very last sentence.

  28. I’m, pretty sure they did. It’s in the MPEP, so unless you are admitting that the PTO LIED, I’m going to have to go with Yes and Dave on this.

  29. Agreed. I merely point out that your rebuke may have been overly harsh, given that it is obvious that it is AI you are talking to, you know he is not a lawyer, and the fine people at the USPTO (who were lawyers) took a similar stand.

    That being said, AI is WRONG in how he is viewing the Alappat claim.

    But then again, it is known that you harbor incorrect views of Alappat, and you supposedly are a lawyer.

  30. This post is an ad hominem attack in lieu of a legal analysis and explanation referenced with cited case law.

    It illustrates that the poster has lost the debate and fears it may be to a non attorney.

    I submit the poster must be Ned Heller.

  31. Granted, the USPTO construed the claims to be equivalent to method claims. Their claim construction, however, was overruled by the Federal Circuit

  32. seems to claim

    Without passing judgment on the actual claim, the notion that the claim “seems to claim” is mere conjecture and is plausibly coming from the reader’s lack of understanding of the subject matter rather than the claim itself.

  33. not qualified to post on this forum because you seem to not know the basic difference between a claim to a machine and a claim to a process

    You would rule from being qualified from posting on this forum the USPTO, as that was precisely one of their positions.

  34. Actually, in order to construe the valid claim according to accepted norms, the antecedent basis guides what the later generic term covers, not the other way around.

  35. “Mr Heller, you have failed now in every discussion in this thread.”

    If you are not AI, I would be very surprised. You have the same way of expressing yourself as that gentleman identified by 6. You reply to a post with a comment, perhaps with a citation to authority, and then state with absolute certainty that you have “crushed”or “beaten to a pulp” the person to whom you addressed the post. Your pathology is self-evident for all to see.

    Perhaps you should seriously consider seeking medical help.

  36. The claim, as others have noted, is an alternative form in a least two instances. The second instance is very interesting. The claim can be broken down as follows:

    Claim 1: maintaining a list of AV items, and restricting access to items on the list.

    Claim 2: limiting the number of accesses to content items over a given period of time.

    This seems to claim two different inventions in one claim. As such, the claim seems hopelessly invalid under §112.

  37. YTiaVP, what I am saying Mr. VP, is that the limitations to audio and video are substantially irrelevant, in that they are only particular examples of proprietary “content.” In fact, later in the claim, the drafter of the claim seems to refer to both in a generic term, “content items.” If the claim is not to fail for lack of antecedent basis for “content items,” then the court will have to construe “audio” and “video” as mere examples of the broader genus described by the term “content items.”

  38. But, obviously, you are not qualified to post on this forum because you seem to not know the basic difference between a claim to a machine and a claim to a process. Alappat was a claim to a machine. Below, for your inspection, is the claim at issue in Alappat.

    “Claim 15, the only independent claim in issue, reads:

    A rasterizer for converting vector list data representing sample magnitudes of an input waveform into anti-aliased pixel illumination intensity data to be displayed on a display means comprising:
    (a) means for determining the vertical distance between the endpoints of each of the vectors in the data list;
    (b) means for determining the elevation of a row of pixels that is spanned by the vector;
    (c) means for normalizing the vertical distance and elevation; and
    (d) means for outputting illumination intensity data as a predetermined function of the normalized vertical distance and elevation.”

  39. 6, your questions are misdirected.

    In fact, if I were to answer them, I would, in essence, be answering my own question, which is not the point of my asking the question in the first place.

    As to too “t arded to learn about the subject yourself,” I already “learned” the subject. If you think my question requires a short essay to answer my question, you may consider that you haven’t learned enough. My question was a relatively easy question.

    The “nature” of my premise is to expose the shallowness of the posters Ned Heller and IANAE, the shallowness of conventional thoughts towards “physical” as applied to patent law, or both.

    If you truly understand vacuum energy, then you will note that Casual Observation, very much unlike AI, raises a nuanced point in response to Ned Heller’s proposed definition of “abstract” at 1) above, and that point concerns the poorly understood “nature” of nature itself.

    As to answering my question, if you can, a correct answer will be in concert with my point, vibrating in harmony. Will you assist me in dropping an anvil on those who bandy the term “physical” in disregard to what that term entails and to what patent law applies?

  40. Alappat was a process for making a smoother diagonal line on a computer.

    Go read the case before trying to comment on it again.

  41. The 967 patent is for a process. The steps of the process ARE the structure so there is no way , or need to read any structure into the claims.

    The claims pass 112.

    You fail to invalidate the patent.

    Back to the end of the line.

    Next?

  42. I will after you answer my two questions. I’m asking for two very simple answers and you want me to write a short essay on vacuum energy because you’re too t arded to learn about the subject yourself. Hardly a fair exchange, but I will make it. I have more of an interest in understanding the nature of your tar dation than you have in understanding vacuum energy.

  43. “I don’t see a problem under 101 or 112.”

    Exactly right! And there is no 102, or 103 problems either.

    Notice no one cam cite any prior art.

    The patent remains valid!

  44. What makes you think that there is a “physical property” that carries the energy in vacuum energy?

    What makes you think you didn’t just give the answer in your question? Perhaps the “physical property” that “carries” the energy in “vacuum energy” is the “vacuum”.

  45. “Excuse me but a very vigorous search and examination has already occurred here by the PTO.”

    Who told you that?

  46. That’s roughly my take as well, though I’m admittedly guessing on exactly what is in the prior art. It seems like there must be a 102 or 103 problem here. I don’t see a problem under 101 or 112.

  47. “The machines that convert this data into audio or video are machines. But nothing like such apparatus are claimed.”

    This might be true if we were living in the 1800′s.

    But machines are not, and never have been limited to something you can kick with your foot.

    If your understood Alappat you would know the entire claim is a machine.

    Ned, I suggest you go read that case.

  48. I see Malcolm’s posts reach their usual level of insight and illumination.

    Malcolm, why do you bother?

  49. “Anything that involves the manipulation of concepts as opposed to physical things.”

    This is just a play on words and with no legal basis at that!

    Manipulation is the same as application which is the action of putting something into operation, or to handle or control typically in a skillful manner . See Webster.

    And we all know the law says an application of a concept is patentable subject matter. ( See Diehr, Bilski )

    And of course we know that when the ( concept, equation, law of nature ) is integrated into the claims as a whole it it can’t be pre, post, solution activity or a field of use limitation and is therefore patent eligible subject matter.

    See ( Prometheus 566 U. S. ____ (2012) 11)

    Mr Heller, you have failed now in every discussion in this thread.

    Oh, and , the 967 Patent is still valid.

    :: Smirks::

  50. No valid 112 arguments have been offered because not ONE commenter in this thread, including YOU, has shown how the claims are inconsistent with the specification.

    And since when did !!!!! points have ANY effect on the law?

    The patent is invalid and NO ONE has shown otherwise with prior art, or any analysis based on case law.

  51. “MM actually gets it right most of the time. ”

    Yeah, yeah, we know. And 6 is a genius.

    ::Yawn:

  52. “So, o your contention is that we have to read limitations into the claim in order to save it?”

    No, the law requires you to read the specification, and then read the claims to see if the claimed invention is consistent with with the entire specification.

    If you read the specification with this frame of reference you will discover that in light of the embodiments in the spec the claims are consistent and therefore no need exist to import any limitations whatsoever into the claims.

    And once again you have failed to invalidate this patent.

    Go to the back of the line.

    Next????

  53. Before you move the goal post and go ontto other fallicous arguments , it is important that you stop, and honestly admit you were wrong about audio or video items being mere field of use limitations.

    I repeat an item is a physical thing. Therefore an item can’t be a field of use.

    Are you honest enough to admit this is true?

    From the dictionary:

    item: noun
    an individual article or unit, an item of clothing.

    Now on to the next goal post you have set up.

    “Yes, however audio or video items can and most probably are just data.”

    It does not matter what they CAN be alone. The invention is not merely an audio or video transmission.

    The audio and video items are “integrated” along with all the technology of the claim into the process as a whole.

    You can’t touch that argument with anything substantive.

    And it is your burden to do so if you DARE try and invalidate this claim.

    So can you?????

    If not I dare say, good sir, it is time for you to put up or shut up.

  54. Yes, however audio or video items can and most probably are just data.  You say they are machines, but not really.  The machines that convert this data into audio or video are machines.  But nothing like such apparatus are claimed.

    Think again.  We are talking about access to data.  Access by what?  That is unstated.  Could be by a 2 year old kid with a can opener tearing apart mommy's camera and accessing her recorded videos, and promptly destroying them.

    Sue the kid.

    Impound the camera as evidence.

    Try again, Mr. Yes.

  55. ” the limitation to audio and video items seems just like the field use limitations in Flook.”

    Simply repeating a fallacious statement over and over does not make it a fact.

    Audio and video “items” are indeed just that, items, things, apparatus, devices, machines even.

    These solid, concrete items do not suddenly become the abstract idea of a field simply because you say so.

    So once again you have failed to invalidate this patent on ANY grounds.

    No one in thread has or can produce any prior art , or analysis backed by case law that proves the patent is invalid.

    Therefore it remains valid patent.

  56. 112, indeed.

    Step 1) maintaining a list (of identifiers … [of] previously accessed a or v items)

    Step 2(ii) limiting “a” number of “content items” that can be accessed in a given amount of time.

    There is some discussion of “user identifiers” in step 2; but what relevance this has to “limiting the number of content items” is unstated. The requirement just sits there without explanation.

    Further, there is no stated cooperation between step 1, maintaining a list, and step 2(ii). How is the limitation of the number of content items that can be accessed in a certain time related to any list of identifiers [of] previously accessed a or v items?

    The problem of keeping track of how many content items one accesses in a certain time would seem to involve counters that are decremented each time a content item is accessed. When the counter reaches zero, one would compare the time the counter was set to the time the counter reached zero. If that number is not greater than the “certain time,” no further access is permitted.

    Regardless, what is going on here is so vague and indefinite as to be insoluble.

  57. Doesn’t answer my question.

    Which physical thing in a vacuum carries the property of vacuum eneergy?

  58. Which physical property then carries the energy in vacuum energy?

  59. Your counterpoint misses the point.

    Even arguendo we take that you are correct that once a court rules the patent invalid, then it was invalid on the day it was issued, you have not reached that point. Any discussion on the patent at hand proclainging it to be invalid simply has not reached that point.

    You have to satisfy your “IF” to not be making bald statements.

    That simply has not been done.

    Everything else you say is semantics hinging on a future (and uncertain) event. Until the presumption is conquered, for ALL intents and purposes, the patent IS valid.

    Or in other words, mere posting (even posting of a substantive argument) has no actual effect on a patent.

    None.

    It really does take that future and (thus uncertain) event to ACTUALLY HAPPEN in order to say that the patent is invalid. Until that ACTUALLY does happen, it’s all supposition.

    Bald supposition. Especially when compared to the plain and simple truth of the moment – RIGHT NOW.

    Let’s leave the time travel to Robert.

  60. Is energy a physical thing?

    No, it’s not. Energy is a property of a physical thing. Like color or temperature. Very like temperature, in fact.

  61. Re Ned’s ideas:

    1) “manipulation of concepts as opposed to physical things

    Is energy a physical thing? How about signals (to distingusih from Niujten, here we are talking manipulation and not the thing itself)?

    “Physical” doesn’t cut it, and never has. Many patents are related to energy manipulation (heat, power, light, etc.) without claiming energy itself.

    2) – 4) While risk and value can be considered “abstract,” price is NOT abstract. Correctly understood, price is a fixed attribute. Do not get confused with the fact that that attribute can be changed. Many physical attributes can be changed and are no more “abstraact” for having that quality. And even “risk,” or more properly, “delta risk” might be considered non-abstract.

    5) Sound too much like the lower court CAFC In re Bilksi and one of the things that ALL NINE justices in the Supreme Court rejected, even though they still maintained Bilski as abstract; therefore, 5) must be deficient.

    As mentioned several times, MOT has been largely neutered. It a clue and only a clue. In fact, it’s an indeterminate clue.

  62. Sure, some of the statements have their baldness shined up and some may have a touch of peach fuzz, but any statement saying the patent is invalid is a bald statement.

    That’s cute, but incorrect. A patent’s status can only be one of two things: valid or invalid. And unless the patent undergoes some substantive change in a post-grant procedure (e.g., reissue, reexamination), its status as valid or invalid does not change from the date it issues. If a patent is proven invalid in court, then it was invalid on the day it was issued, the presumption of validity notwithstanding. The position you are taking is that all issued patents are valid until they are invalidated in court. That is not correct; issued patents can only be presumed valid until invalidity is proven in court. Just because a patent is presumed valid does not mean that it is actually valid.

    So, if someone on this board states that a patent is invalid and backs it up with a substantive argument, then there’s nothing insubstantial (i.e., “bald”) about the poster’s statement. Just because 35 USC § 282 exists does not mean that the poster’s statement is wrong.

  63. fish,

    Abstract:

    1) Anything that involves the manipulation of concepts as opposed to physical things.

    2) Risk is abstract.

    3) Price is abstract.

    4) Value is abstract.

    5) The transformation of an article into a new state or thing is not abstract.

    From Le Roy v. Tatham, O’Reilly v. Morse we know that claiming the principle of an invention at too high a level of abstraction is a claim to the principle itself. This concept was reaffirmed in Flook, where the claim used generalized inputs and generalized output and where the only real limit to physicality was in a field of use limitation.

    MOT. Fail that and you probably are in the realm of the abstract.

  64. Sure it does. It eliminates the case where you have a computer with the list of identifiers, and it always refuses to play anything.

    Consider a patent for a method that recites burning fuel with a novel type of engine to create motion. The novelty is in the way that the parts of the engine ignite the fuel and harnesses the released energy. Should you include the steps of:

    • Connecting the tank to the engine with hoses?
    • Filling the tank with fuel?
    • Refining the fuel from crude oil?
    • Extracting the crude oil from the ground?
    • Assembling the engine from a set of parts?
    • Casting the parts from metal using a set of molds?
    • Making the molds for the casting?

    These steps are essential, but not related to the invention. The steps in your method should be limited to those that describe the invention.

    In Digimarc’s case, the invention isn’t about playing a media object where the user is authorized. The invention is about restricting access to the media object when the user isn’t authorized. The actual playing isn’t part of the invention.

  65. Excuse me but a very vigorous search and examination has already occurred here by the PTO. There is no prior art that invalidates the claims..PERIOD. I challenged ANYONE to prove different.

    Too many of us know how the game is played to agree with you.

    In theory, every examination is 100% thorough, and covers every conceivably related reference.

    In practice, examination is a very cursory and superficial process. A few searches are done; a handful of relevant references are considered; and the examiner allows the case over those references. I’d say that in most cases, the examiner actually looks at fewer than ten references. I’ve encountered examiners who have agreed to issue a case that they didn’t even understand, let alone thoroughly examined.

    If, as you assert, reality were closer to theory than practice, then patents would never be invalidated at trial based on new art. In actual reality, that seems to happen quite a lot.

    So I’m going to modify your statement with: “There is no prior art considered in the case that invalidates the claims.” That’s likely true, but it likely covers an infinitesimal fraction of the body of art that might be considered relevant.

  66. And clearly you miss the point Smitty, that while no doubt overkill with the capital letters and exclamantion points, the simple point of order is that by law, Mr. CAPITAL EXCLAMATION!!!! is correct and everyone else, including those offering arguments under various sections of law are offering those as bald statements of invalidity for the very simple reason that the patent is not invalid.

    At least not yet.

    Sure, some of the statements have their baldness shined up and some may have a touch of peach fuzz, but any statement saying the patent is invalid is a bald statement.

  67. Patents carry the presumption of validity. By law, this patent is still valid until a court (or the USPTO through post grant procedures) says otherwise.

    If anything is “bald” here, it is all those who are merely proclaiming the patent to be invalid.

    Really? I’ve seen at least a few people offer arguments as to why Claim 1 lacks validity under Section 112, and they’re certainly more substantive than merely saying “Claim 1 is clearly invalid.”

    Meanwhile, Mr. “Yes This is a Valid Patent!!!” seems to be backing up his statements with lots of capital letters and exclamation points. Not only is all that bluster not impressive, but methinks he doth protest too much.

  68. repeatedly make bald assertions

    While taking no stand on the accompanying rationale, simple questions is correct, and thus, in a sense, so is Yes This is a Valid Patent!

    Patents carry the presumption of validity. By law, this patent is still valid until a court (or the USPTO through post grant procedures) says otherwise.

    If anything is “bald” here, it is all those who are merely proclaiming the patent to be invalid.

  69. So your contention is that we have to read limitations into the claim in order to save it?

    I’m going to refer you to O’Reilly v. Morse. There the claim broadly claimed all ways of communicating at a distance using electromagnetism. The court held the claim invalid because it was not limited to any specific means. The court did not construe the claim to be limited to the means disclosed in the specification. But that is what you suggest be done here.

    Respectfully, I disagree.

  70. Yes This is a Valid Patent: "And because the process can't be completed in ones mind ( see Cybersource) the claim cannot be invalidated …[as] a mere field of use limitation as in Flook."
     
    I think you misunderstand Flook to some degree.  In Flook, the claim was found to be not eligible because the algorithm was applied to a process that was too "generalized" and nonspecific, providing generalized inputs and no specific outputs.  It was not invalidated because of the field of use limitation.  Rather it was not saved by a field of use limitation.

    Look to the claims in this case.  They are generalized to an abstraction, and the limitation to audio and video items seems just like the field use limitations in Flook.  If anything, Flook is the closest case on point to invalidating this claim.

     

  71. What happened to Sarah? Did whoever that was that was screwing her over finally stop screwing her over?

  72. Why are you so adamant about the validity of this particular patent? Are you the inventor? Are you associated with Digimarc? I don’t understand why you would repeatedly make bald assertions about the patent’s validity unless you had some financial interest in it being so.

    Excuse me but a very vigorous search and examination has already occurred here by the PTO. There is no prior art that invalidates the claims..PERIOD. I challenged ANYONE to prove different.

    Your challenge will be accepted if and when this patent ever gets litigated.

  73. “Because ‘will play’ doesn’t meaningfully limit the claims”

    Sure it does. It eliminates the case where you have a computer with the list of identifiers, and it always refuses to play anything. The claim doesn’t recite positive steps of checking the list or determining whether or not to play the media object. So anything which simply refuses to play all requested media objects and has that identifier list would read on the claim.

  74. Mild abrasiveness aside, MM actually gets it right most of the time.

    Another yutz with his head mislocated in a dark and smelly region.

  75. Nice. Mild abrasiveness aside, MM actually gets it right most of the time. But you’ll have a hard time realizing it until you lose the patent koolaid moustache. Not everything imaginable should be eligible for patenting. Maybe the USSC is smarter than you’re willing to acknowledge.

  76. Fortunately, there appears to be a worthwhile discussion going on down below in this thread, which I think I’ll now take a look at…after I stop laughing, that is.

  77. Thank you, strawman from nowhere.

    In other news, water is still wet.

  78. The constitution doesn’t mandate IP, it only gives congress the power to grant it. Hence abolishing IP is not unconstitutional.

  79. Isn’t that a tautology?

    The patent is strong, until it is not.
    The patent is valid, until it is not.

    Isn’t the question presented a trick question?

    Isn’t the correct answer that the patent is valid until proven by clear and convincing evidence that it is not valid (the presumption that carries by law)?

  80. limiting a number of content items… that can be accessed in a certain amount of time

    Isn’t there an inherency problem with any prior art device that operates with a limited bandwith, as such device must have a natural limit to items per time period?

  81. The question, MM, is whether there is any material difference in the way the invention works.

    And I am old enough to remember early “portable” computers with CRT displays and each the size of a small suitcase. You could carry them from place to place if you were fairly strong, but they were bigger and heavier than many desktop machines nowadays e.g. the iMac which is on my desk.

  82. What do we have here?

    Malcolm Mooney has a shiny new sock puppet.

    Yes it is funny alright.

    But not as funny as MM running around saying 9-0 GYF as an example of his ability to discuss actual case law.

  83. I have said below that portable makes no difference to the technical functioning of the invention. It would work just as well to let you play/refuse to allow playing of audio or video on your desktop computer. Nor is it a valid field-of-use limitation since precisely the same issues arise in playing audio or video on your desktop as apply to playing the same content on your smartphone.

  84. “6. It is unprofessional to opine under 102 or 102 without real references to hand. Therefore no opinion is ventured. But in a real life situation fairly vigorous prior art searching would be warranted.”

    Excuse me but a very vigorous search and examination has already occurred here by the PTO. There is no prior art that invalidates the claims..PERIOD. I challenged ANYONE to prove different.

    I do agree with you that there is no 101 issue here. No one will dare challenge these claims on 101 in the wake of Prometheus. Why? The keyword is integration!

    Finally, the entire specification and drawings are online and the patent is airtight compliant with 112.

    And I dare anyone to go read the spec and come back with any examples to the contrary.

  85. “The claim does not state or even suggest who, what or how or by what means access is restricted. Is it the A/V player on the portable device. Is it done the source, where the source could be a server on the internet?”

    Read the claims in light of the specification and you will get the answer to your questions.

    “Depending on how one views this, I would suggest there are severe 112 or 101 problems. ”

    112 is not ANY problem here because the claims are consistent with the specification. ( See Phillips )

    101 is not ANY problem here because of the way the technology of the claim is integrated into the process as a whole.

    (See Prometheus, and Diehr for the case most on point )

    Your argument of claiming or pre-emptiing the idea of “access control counting” is also fictionalized and without real world merit .

    For example you can’t present one concrete example of how these claims preempt ANY generalized field whatsoever, now can you?

    Note to any challengers. You are going to need more than superficial language, and conjecture based on abstract theories to invalidate an issued patent, especially a patent with an integrated and applied technological process.

    Next?

  86. You are almost as funny as Sarah (actually miss her) and Michael R. Thomas. Almost. Say, are you from Minnesota?

  87. The DC is already using Prometheus for software, business methods, and other claims that are not laws of nature. Everyone just needs to adjust now and realize that way the technology of the claim is integrated into the process as a whole is the knew invisible bright line test.

  88. Yes, the claims are for patent eligible subject matter, and valid because of the way the technology of the claim is integrated into the process as a whole. It is now obvious that you, nor anyone else has ANY legal evidence that can overcome this argument and must resort to juvenile antics. This is a strong patent indeed!

  89. No, it is YOU that has to convince me. I have the pressumption of validity on my side and Supreme Court precent.

    The technology of the claim is integrated into the process as a whole. ( See Prometheus )

    Now, can you prove otherwise?

  90. Exactly. And that is why these claims are valid.

    Anyone trying to invalidate these claims, without an exact prior art reference, will have to overcome the fact, in light of Prometheus, that the technical aspects are integrated into the claim.

  91. You are wrong.

    Applicants claims are valid, and patent eligible subject matter because of the way the technology of the claim is integrated into the process as a whole. This includes the technological audio and video components. Therefore applicants claims are valid just like in Diehr. ( See Prometheus)

    And because the process can’t be completed in ones mind ( see Cybersource) the claim cannot be invalidated as “extra” solutional (pre, post )) activity, nor a mere field of use limitation as in Flook.

  92. the technology of the claim is integrated into the process as a whole.

    Repeat the above phrase ten times and wave your hands around. It’s hypnotizing.

    Not recommended for children under 12. If erection persists, call your physician.

  93. Why are you laughing?

    That is very immature and unprofessional of you. And considering the patent is for a business method/software process, the toughest and most difficult patent to get issued in the history of the PTO, I would think you would show a little more respect.

    Fact is the patent issued and is valid mainly because the technology of the claim is integrated into the process as a whole.

  94. This is a valid patent because of the way the technology of the claim is integrated into the process as a whole.

    Furthermore no one can show another prior art reference at 102 that anticipates the claims.

    No can anyone can cite references that make the claims obvious.

    The patent has a detailed and enabled description and that meets the requirements at 112.

    This patent is 100% valid!

  95. > And who infringes this claim as interpreted by you, the PHOSITA? The “configurer”? The guy who wrote the code or the company that built the device? Do you think that’s what the drafter of this claim intended?

    Excellent question.

    The customer is the direct infringer, but a distributor of software is a contributory infringer.

    OTOH, with a CRM claim, the distributor of the software on a physical medium is the direct infringer.

    At trial against the distributor, the patentee will probably want to rely on the CRM claim. But if CRM jurisprudence changes (e.g., the always-possible death of Beauregard claims), doesn’t support the case (e.g., the claims or specification are construed to include a signal), or doesn’t apply to the infringer (due to distribution of software without a specific physical medium), then the method claim is available as a backup.

    I’m not a litigator, but that’s my current understanding of current enforcement strategy. I do try to stay in touch with this area in order to adapt my claim-drafting style to current best practices.

  96. Hmmm… And who infringes this claim as interpreted by you, the PHOSITA? The “configurer”? The guy who wrote the code or the company that built the device? Do you think that’s what the drafter of this claim intended?

  97. … the claim appears to violate a combinatoin of Benson (using generic computers does not help), Flook (generalized inputs and outputs not limited to any specific means), and Bilski (abstract concepts are included in Benson/Flook, not just mathematical algorithms.)

    So that’s a 103 rejection over Benson, Flook, and Bilski?

  98. > Where on earth did you get all this “configuration” language from?

    “Using a device, do (X)” = “configure the device to do (X).” “Configure” = “build,” or “program,” etc.

    That’s how I interpret it as PHOSITA (which I can rightly claim – I have an MS in computer science). I know that opponents will probably read it as: “a person happens to be holding a device while they mentally do (X),” but I presume that those interpretations were disclaimed in the file wrapper… if not, the claims run afoul of Bilski.

  99. Inspector Gadget has been reading messages that would self destruct since well before 1999. I wonder if this was the technology used…

  100. “Also, a divisional isn’t warranted if the variations aren’t patentably distinct.”

    They are or I wouldn’t have restricted them in the first app.

    “I interpreted that as: “A and B are even more different than in Digimarc’s alternatives.” If A and B are very close, then I understand more why you accepted it.”

    Nah, it was just more “in your face” because of the way he wrote it.

    “”(i) Configure the device so that when a user asks to view a media item, the device looks at the list to determine whether the item has already been viewed, and if so, deny access.”

    “(ii) Configure the device to assign each user a user ID, and, for different media items, to choose a limited amount of time in which each user can view it. When any user gains access to a media item, record a tuple identifying the media item, the user ID, and the duration. Then, when a user asks to view it, have the device look up the tuple with the user’s ID and the identifier of the media item, and make sure that the current time is within the duration.”"

    Where on earth did you get all this “configuration” language from? The claim has nothing to do with configurations. It has to do with method steps and that is all. Indeed, one presumes that the devices that will be used to perform the method are pre-configured.

  101. > I don’t typically reject based solely on form, there must be at least a small issue of substance. I object to things I find not in proper form. And, doing so would just have been me bullying him into another DIV, which both me and him knew.

    One of the (few) prudent changes within the USPTO in recent years is that, during prosecution, matters of claim form are resolved concurrently with matters of claim substance. Unless the claims are truly horrific, rejections for 101/112 are to be made alongside rejections for 102/103.

    I don’t think that your OA should reject this claim only under 112, but should provide a 112 rejection in addition to your 102/103.

    Also, a divisional isn’t warranted if the variations aren’t patentably distinct. You could still reject the claim under 112 and recommend independent claims.

    > The new steps were also very close to one another in terms of subject matter in my case.

    Ah, see, that’s different from what you wrote earlier: “I thought about that kind of situation the other day, and pondered the 112 question except the problem was even more pronounced.” I interpreted that as: “A and B are even more different than in Digimarc’s alternatives.” If A and B are very close, then I understand more why you accepted it.

    Looking again at Digimarc’s claim, I see two very different alternatives. It starts like this:

    “Let’s say you have a set of media items that have been viewed, and where each media item can be identified by a unique identifier. Let’s configure the device to keep a list of the identifiers of media items that have previously been viewed. Then we’ll use that list in one of two ways:”

    And then it diverges into:

    “(i) Configure the device so that when a user asks to view a media item, the device looks at the list to determine whether the item has already been viewed, and if so, deny access.”

    “(ii) Configure the device to assign each user a user ID, and, for different media items, to choose a limited amount of time in which each user can view it. When any user gains access to a media item, record a tuple identifying the media item, the user ID, and the duration. Then, when a user asks to view it, have the device look up the tuple with the user’s ID and the identifier of the media item, and make sure that the current time is within the duration.”

    A and B are almost totally different. In fact, B *doesn’t even reference the list*. I don’t understand why the examiner allowed such an ettish claim.

  102. Malcolm please do not in the future personally disparage anon (as opposed to his arguments). On the whole he is does advance rational arguments and it appears that if you treat him with some respect, he will return it.

  103. I hope you’re right. I have my doubts. But the Fed Cir could surprise us and tell the Supremes to mess everything up themselves if they insist.

  104. 6, while you cannot comment, the claim appears to violate a combinatoin of Benson (using generic computers does not help), Flook (generalized inputs and outputs not limited to any specific means), and Bilski (abstract concepts are included in Benson/Flook, not just mathematical algorithms.)

    The limitation to audio and video is like a field of use limitation per Flook and Bilski.

  105. Check the method using only the alternative second outcome? Does it hang together as a coherent claim? Doesn’t seem to imho.

    1. A method comprising:
    utilizing electronic memory housed in a portable device, maintaining a listing of up to N identifiers associated with previously accessed audio or video items, where N is an integer, and where each previously accessed audio or video item has an identifier associated therewith;

    utilizing a programmed electronic processor housed in the portable device, limiting a number of content items each with a different user identifier associated therewith that can be accessed in a certain amount of time.

  106. “However, it’s not actually a genus. It doesn’t recite: “Z+C, where Z is selected from the set comprising A and B.” ”

    That seems like that is the exact same substantive scope of the instant claim. You’re just wording it differently. I understand what you’re saying about the relationship between them being in your claim and not in the other, but that seems substantively irrelevant.

    I don’t typically reject based solely on form, there must be at least a small issue of substance. I object to things I find not in proper form.

    And, doing so would just have been me bullying him into another DIV, which both me and him knew. And ordinarily I might have been all for that, but I already did the parent with a much broader claim and knew the art was fairly barren with respect to both of these species (although as it turned out I almost decided to reject one of them). I still did the restriction in that case, I restricted the species which affected his deps that were further directed to the alternative species, but he got the ind generic claim allowed so those came back in.

    But, if this “ettin” is really a thing then perhaps I’m in error. I frankly didn’t want to take the time to mess with it as I already spend too much time on restrictions as is. I will look into the matter further next time, maybe.

    “MPEP 2173.05(h) has this to say about alternative claim language:”

    I’m aware, I’ve read it many times.

    “Basically, there has to be some clear commonality. I have no idea whether your example does, 6, but I feel very certain that Digimarc’s alternative claim language doesn’t. (i) is a very different use of the stored information than (ii).”

    The commonality is the oldstep under one way of thinking about that. Although, the new steps were also very close to one another in terms of subject matter in my case.

    That said, I understand what you’re saying about the instant claim. But idk man somehow I doubt that Rader is going to be like: “yeah, totally 112″. Especially under the insoluably ambiguous standard. Even under the Miyazaki standard I don’t see it happening.

    That case btw was a pretty cool case, and o man if I could file apps I would have been tacking things onto that subject matter (and the claims of apps related to that one) and gobbling up big chunks of that niche because that niche is going to get larger as time goes on.

  107. “Restricting access”

    The claim does not state or even suggest who, what or how or by what means access is restricted. Is it the A/V player on the portable device. Is it done the source, where the source could be a server on the internet?

    Depending on how one views this, I would suggest there are severe 112 or 101 problems. But the bottom line, the claim is so generalized as to run afoul of Flook – we have an access control counting system where the means or processes it modifies are so generalized as to be a claim to the very idea of access control counting — limited to the field of audio or video.

  108. With this limitation, you have: “When a user asks to view a media item, the device checks whether it’s on a list of previously viewed media items, and if so, then the device says no.”

    Are you sure? It’s closer to: “When a user asks to view a media item, the device checks whether it’s on a list, where all the items on the list are previously viewed items, and if so, then the device says no.”

    The claim doesn’t tell us what “maintaining” the list means. All we know is that the N identifiers on the list are associated with items that have been previously viewed. We don’t know if that list represents all of the previously viewed items or a subset. We don’t even know whether the previous viewing is actually a criterion for getting on the list, or whether the claim is instead describing a process that happens to be carried out when only previously viewed items are on the list.

    Rather than clarifying the “point” of the claim, I think that extra language makes the claim murkier, and perhaps indefinite. It’s within the examiner’s province to demand greater clarity, in my opinion. If the “previously accessed” is supposed to limit the claim, then there should be another step or a more complete recitation of what “maintaining” means. If it’s not supposed to limit the claim, it should come out.

    Now that it’s issued, the claim can be argued either way, absent (or perhaps even in spite of) prosecution history on this point. I suppose that’s a virtue, for some patent owners.

  109. “IPHONIES ARE A TEN BILLION DOLLAR YEAR BUSINESS ANALLY! ”

    So THAT explains why MM’s iPhone smells so bad..

  110. > As 6 suggests, you can probably just ignore it. The claim seems to be saying that if the system encounters an audio or video item that is associated with one of the N identifiers on the list, then access is restricted.

    I don’t think that it meaningfully limits the claim – but I do think that it adds some context to the claim.

    Without this limitation, you have: “When a user asks to view a media item, the device checks whether it’s on a list of media items, and if so, then the device says no.”

    With this limitation, you have: “When a user asks to view a media item, the device checks whether it’s on a list of previously viewed media items, and if so, then the device says no.”

    It’s a small change, but the point of the first one is quite a bit more nebulous.

  111. I see where you’re coming from David. I might argue that the property shared by the alternative steps is that both steps are “access restricting.”

    Is that a winning argument? Only the peanut gallery can decide.

  112. > What are the identifiers, and how and when are they detected and handled?

    I think that PHOSITA would readily understand all of the things that an “identifier” of a media object might comprise: a hash value, a GUID, an identifier from a database like iTunes, a watermark…

    > The claims are all written on the basis of won’t play: why not also cover the case of will play?

    Because “will play” doesn’t meaningfully limit the claims or relate to the invention. This case apparently isn’t about enabling access to media, but about enforcing license restrictions.

    > It is unprofessional to opine under 102 or 102 without real references to hand.

    How so? Our opinion are casual and non-authoritative; they will have no impact on the client or the disposition of the case.

  113. Could you rephrase your comment? I don’t understand a number of aspects of it. Namely:
    (1)(a) Why are they trying to “get around people like [me]“?
    (1)(b) What is this class of “people like [me]” I am allegedly part of?

    (2) What are they “trying” to claim?

    (3) What it is that they “really want to cover” with the claim?

  114. In this particular claim, I don’t see any reason why you need to have “previously accessed” in there at all. As 6 suggests, you can probably just ignore it. The claim seems to be saying that if the system encounters an audio or video item that is associated with one of the N identifiers on the list, then access is restricted. The fact that the N identifiers are only associated with items that have been previously accessed doesn’t appear to be very relevant to this particular claim.

    If the author is really trying to distinguish over the prior art on the basis that this method is practiced only in an environment where the identifier means that the item was previously accessed, then I smell trouble ahead. Distinguishing a claim solely on the information content of a data item that is manipulated in a conventional manner might get you past an examiner (not one with the sagacity of 6, of course), but I don’t think it gets you a very strong claim.

  115. > I thought about that kind of situation the other day, and pondered the 112 question except the problem was even more pronounced. It read perform step A and (oldstep C) or perform step B and (oldstep C). But I figured meh, it’s just a genus claim reciting two species of methods because indeed he was drafting it this way to make a generic claim for two species I had just got through restricting in the parent.

    Here’s one for the record books, folks: a claim style that 6 would allow, but that I would reject! Never thought I’d see the day…

    I suppose that this claim style is easier to examine: if you have art against either A or B, you can reject the whole claim (in accordance with the “if you can reject any one species, you can reject the genus” principle). Certainly easier than having to reject independent claim 1 reciting (A+C), and independent claim 2 reciting (B+C).

    However, it’s not actually a genus. It doesn’t recite: “Z+C, where Z is selected from the set comprising A and B.” That provides some explicit connection between A and B. Without that explicit connection, the claim is really an ettin: two distinct techniques with different points of novelty, presented alternatively in the same claim. That type of scenario is why the PTO allows multiple independent claims.

    MPEP 2173.05(h) has this to say about alternative claim language:

    “When the Markush group occurs in a claim reciting a process or a combination, it is sufficient if the members of the group are disclosed in the specification to possess at least one property in common which is mainly responsible for their function in the claimed relationship, and it is clear from their very nature or from the prior art that all of them possess this property.

    Basically, there has to be some clear commonality. I have no idea whether your example does, 6, but I feel very certain that Digimarc’s alternative claim language doesn’t. (i) is a very different use of the stored information than (ii).

  116. It doesn’t say that the identifiers are integers, only that there is an integer number of them. As noted earlier, that appears to be surplusage, unless the integer N gets used in a later claim.

  117. What difference does it make if the electronic memory is housed in a portable device.

    OMIGOD HAVE YOU EVER TIRED TO CARRRY A DESKTOP COMPUTERD ONTO A TRAIN OR WHILE CAMPING!?!@??#? IPHONIES ARE A TEN BILLION DOLLAR YEAR BUSINESS ANALLY! WHY DO YOU THINK THAT IS TEH CASE?

    /patent t–b-gger off

  118. Supreme court says Prometheus applies.

    Sigh.

    That’s not what a vacate and remand means. It means it may apply (but then again, it may not).

  119. 112 type questions…

    “… or ii) limiting a number of content items each with a different user identifier associated therewith that can be accessed in a certain amount of time. ”

    What are these “content items“? Are they the aforementioned “previously accessed audio or video items”, or are they something different?

    What is this “user identifier“? Is it the same as one of the aforementioned “N identifiers”, or does this mean something completely different?

  120. No. Supreme court says Prometheus applies. They vacated and remanded ultramercial for consideration of Prometheus.

  121. “If I got to decide the law, I would render my decision along the following lines: The claims recite an electronic memory and an electronic memory (both of which are objects that you can touch), so it’s not like they’re trying to claim a disembodied paradigm or some nonsense like that. So let’s call it patent-eligible.”

    Really? You don’t think that is what they’re TRYING TO CLAIM? Because that is blatantly what they’re TRYING TO CLAIM by adding incidental nonsense to get around people like you who have a severe mental block when it comes to seeing what they really want to cover with the claim.

  122. So if I’m Digimarc’s evil competitor ToeJam, my design around is no more than substituting identifiers “A” through “ZZZZZZ” for the integers?

    (Disclaimer: I have not read the FW to see if the “integer” element has or has not any permitted scope for DOE.)

  123. “(3) It fails under 112 due to the “or” clause. The claim basically reads: “A method comprising either steps (A + B) or steps (A + C),” where (A+B) and (A+C) are quite different concepts.”

    I thought about that kind of situation the other day, and pondered the 112 question except the problem was even more pronounced. It read perform step A and (oldstep C) or perform step B and (oldstep C). But I figured meh, it’s just a genus claim reciting two species of methods because indeed he was drafting it this way to make a generic claim for two species I had just got through restricting in the parent. It was for some big company though iirc so it isn’t exactly like their business is going to hinge on that claim. Indeed, we’re about to have a battle royale in the same family of apps for a claim that is broader than either of them that has a different problem. Anticipation by a reference that disclosed his broad recitation of a process in a list of process species. He wants to argue that since there was a pretty decent sized list of species (let’s say 8) that the reference doesn’t anticipate any of them. I informed him of the caselaw specifically on this subject, but he’s determined.

  124. “Where is there a requirement that the prior accessing must be positively recited in the claim, 6?”

    There isn’t one in this case to my knowledge, but they appear in OA’s from time to time.

    “A lot of my claims go something like this: “Presume you have a database and a query. Here’s a new way of parsing the query and extracting the relevant data from the database.” I don’t want to state generating them in the body of the claim. It’s my practice to introduce them in the preamble, but I chalk that up to my style, not a requirement.”

    Ok.

    “”Presume you have some media objects that have previously been viewed. Here’s one way of implementing access restrictions on the previously viewed content.” Why must the initial viewing be part of the claim?”

    Really? Where does it say “presume” and all that?

    “Why must the initial viewing be part of the claim?”"

    For several reasons that don’t bear me going into them atm, I get paid to do this type of thing.

  125. Who is the infringer here? Who does the “utilizing” steps? That seems like a really awkward formulation of the claims.

    I mean, it seems silly to distill it as Denis did since reading it as the following steps completely reads out the “utilizing” requirement:
    (i) maintaining a list of identifiers; and
    (ii) restricting [or?!?] (iii) limiting.

    Moreover, is it just me, or does this seem like the “simplest” form of content control? It basically keeps a list and checks it to see whether you can play the media item and the list is kept locally so moving it to other devices is still permissible. I’m pretty sure the failed DIVX idea would be good prior art on this, but it had a more involved scheme: link to en.wikipedia.org

  126. The following points arise from claim 1, in the order that they appear in that claim:

    1. What difference does it make if the electronic memory is housed in a portable device. If the logic was available for use in a desktop computer, could it possibly be regarded as inventive to build the same logic into a smartphone? The words KSR and predictable result come to mind.

    2. What are the identifiers, and how and when are they detected and handled?

    3. The claims are all written on the basis of won’t play: why not also cover the case of will play? Claims to permitting access and reproducing the record would appear logical, if not by way of further defining the invention then by way of assisting revenue. For example, it might be useful to make a licensing fee based on items properly downloaded and played.

    4. There probably was an invention here. But it seems not to have found its way into the specification because (a) the inventors have not worked out the detail yet and/or they would prefer not to go into the detail because that would make the invention too easy to copy.

    5. I don’t think that 101 is infringed. But there may be issues under 112.

    6. It is unprofessional to opine under 102 or 102 without real references to hand. Therefore no opinion is ventured. But in a real life situation fairly vigorous prior art searching would be warranted.

    All of the above is based on a 10-minute view and cannot be considered a concluded opinion on any of the above issues; it is provided merely to stimulate discussion.

  127. 1 and 2 is the conflict I saw too.

    3, I completely disagree.

    4, unless N is determined on the fly or in response to something changing, there’s no reason to use ‘N’. I kept reading for the kicker on why they used ‘N’ instead of “a limit”, but it never came.

  128. Prometheus only applies to cases where a “law of nature” is in play–this would be an “idea” case–not a law of nature case.

    So the most relevant cases on point are DealerTrack and Ultramercial. The relevant language in DealerTrack is: “Simply adding a computer aided limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.”

    Unforunately, I don’t believe we have good guidance re: when a “claim cover[s] an abstract concept, without more,” so this is hard to answer.

    If I got to decide the law, I would render my decision along the following lines: The claims recite an electronic memory and an electronic memory (both of which are objects that you can touch), so it’s not like they’re trying to claim a disembodied paradigm or some nonsense like that. So let’s call it patent-eligible.

  129. > What is funny about this claim is that there are no “previously accessed audio” in the claim to begin with.

    Where is there a requirement that the prior accessing must be positively recited in the claim, 6?

    A lot of my claims go something like this: “Presume you have a database and a query. Here’s a new way of parsing the query and extracting the relevant data from the database.” I don’t want to state generating them in the body of the claim. It’s my practice to introduce them in the preamble, but I chalk that up to my style, not a requirement.

    Along the same lines, this claim reads: “Presume you have some media objects that have previously been viewed. Here’s one way of implementing access restrictions on the previously viewed content.” Why must the initial viewing be part of the claim?

  130. Four comments:

    (1) It passes muster under 101.

    (2) It *probably* fails under 102. Even with a priority date of 1999, I’m pretty sure that that access-controlled media, performed in this way, goes back further.

    However, I think what Digimarc *wanted* was something more along the lines of: “When encountering a first access-limited media object, remember that it’s been viewed; and when encountering a second media object that is different from the first object but features the same content, make an access determination using the same rationale as for the first object.” That’s probably fine under 102 (though 103 might be problematic).

    (3) It fails under 112 due to the “or” clause. The claim basically reads: “A method comprising either steps (A + B) or steps (A + C),” where (A+B) and (A+C) are quite different concepts.

    I don’t think they’re patentably distinct and would prompt a restriction requirement, but they should be in different independent claims.

    (4) What’s the deal with the “up to N identifiers, where N is an integer” phrase? First, it’s a way-overly-complicated way of saying, “one or more.” Second, it has no functional role in the claim: the details of enumerating “N” are set forth in specific detail, and then not referenced again in the claim.

    I can’t imagine that it was inserted to distinguish any references, because it doesn’t meaningfully limit the claim in any way. And if “N” is further described / limited in a dependent claim, why not introduce it there?

    My best guess is that it’s meaningless nonsense that was jammed in to add length to the claim in order to appease the examiner… because that’s how the game is often played these days.

  131. limiting the claim to the field of portable computing.

    I wonder over the years how many patents have been granted merely because the applicant stuck the word “portable” in the claims, without any recitation of the structural innovations that led to the shockingly unexpected and never-before-contemplated “portability” of the new apparatus.

    I’m guessing thousands. Right up there with the claims granted to “computer-implemented” methods or methods carried out “over a network.”

    a programmed electronic processor

    aka POWERFUL COMPUTER BRAIN!!!!

  132. What is funny about this claim is that there are no “previously accessed audio” in the claim to begin with. Unless we’re just supposed to read the term out of the claim and replace it with “audio”.

    In any event, while I can’t comment on the validity of the instant claim, I can say that there is at least one claim in all of issued patents which appears to be an attempt to claim the abstract idea of limiting access to A/V works based on a list of values associated with the A/V works after they’ve been played once and then limiting the claim to the field of portable computing.

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