CLS Bank v. Alice: The “Nothing More Than” Limitation on Abstract Ideas

By Jason Rantanen

CLS Bank International v. Alice Corporation Pty. Ltd. (Fed. Cir. 2012) Download 11-1301
Panel: Linn (author), O'Malley, Prost (dissenting)

Despite two recent opinions by the Supreme Court, the issue of patent eligible subject matter continues to sharply divide the Federal Circuit.  CLS Bank v. Alice Corporation illustrates this point neatly, even going a step further.   Unlike other recent opinions involving questions of patent eligible subject matter that have approached the issue in a relatively narrow, case-specific manner, here the majority implements a sweeping rule with significant implications for future cases – a rule that the dissenting judge criticizes as being irreconcilable with Supreme Court's precedent.

Background: Alice sued CLS for infringement of four patents covering, in the majority's words, "a computerized trading platform for exchanging obligations in which a trusted third party settles obligations between a first and second party so as to eliminate 'settlement risk'.  Settlement risk is the risk that only one party's obligation will be paid, leaving the other party without its principal."  Slip Op. at 2.  The patents included method, system, and computer program product claims. Claim 1 of Patent No. 7,149,720 is representative of the system claims:

1. A data processing system to enable the exchange of an obligation between parties, the system comprising:
a data storage unit having stored therein information about a shadow credit record and shadow debit record for a party, independent from a credit record and debit record maintained by an exchange institution; and

a computer, coupled to said data storage unit, that is configured to (a) receive a transaction; (b) electronically adjust said shadow credit record and/or said shadow debit record in order to effect an exchange obligation arising from said transaction, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and (c) generate an instruction to said exchange institution at the end of a period of time to adjust said credit record and/or said debit record in accordance with the adjustment of said shadow credit record and/or said shadow debit record, wherein said instruction being an irrevocable, time invariant obligation placed on said exchange institution.

The district court granted summary judgment of invalidity based on a failure to claim patent eligible subject matter.  Alice appealed.

The majority's "nothing more than" limitation: In reversing the district court, the majority focused on the "abstract ideas" exception to patent eligible subject matter.  Examing the concept of "abstract ideas," the majority concluded that despite substantial precedent and commentary, its meaning remains unclear and its boundary elusive.  There is, of course, some guidance in the precedent, notably the machine or transformation test and concerns about preempting an entire field of innovation.  There are also computer-specific opinions, which the majority distilled down into the rule that "a claim that is drawn to a specific way of doing something with a computer is likely to be patent eligible whereas a claim to nothing more than the idea of doing that thing on a computer may not."  Slip Op. at 18 (emphasis in original). But even this rule allows for "great uncertainty" as to the meaning of "abstract ideas."

Against this backdrop, the majority did not attempt to define the concept of "abstract ideas."  Instead, it implemented a new rule that minimizes the need to make such a determination and strongly favors a conclusion of patentable subject matter when claims involve anything that might be characterized as an abstract idea.  The majority's rule:

"this court holds that when—after taking all of the claim recitations into consideration—it is not manifestly evident that a claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under § 101…Unless the single most reasonable understanding is that a claim is directed to nothing more than a fundamental truth or disembodied concept, with no limitations in the claim attaching that idea to a specific application, it is inappropriate to hold that the claim is directed to a patent ineligible “abstract idea” under 35 U.S.C. § 101."

Slip Op. at 20-21 (emphasis added).  Applying this rule, the majority concluded that Alice's claims were directed to patent eligible subject matter.  In reaching this conclusion, it emphasized the need to look at the claim as a whole rather than to generalize the invention as the district court did.  Applying this approach, the majority concluded that the computer limitations "play a significant part in the performance of the invention" and that the claims are "limited to a very specific application of the concept of using an intermediary to help consummate exchanges between parties." Id. at 26. 

The majority also emphasized a theme previously discussed on PatentlyO: that district courts have the discretion to determine the order in which to assess questions of validity, and may execise that discretion in the interests of judicial efficiency: "Although § 101 has been characterized as a “threshold test,” Bilski II, 130 S. Ct. at 3225, and certainly can be addressed before other matters touching the validity of patents, it need not always be addressed first, particularly when other sections might be discerned by the trial judge as having the promise to resolve a dispute more expeditiously or with more clarity and predictability."  Slip Op. at 13 (emphasis added).

Judge Prost's Dissent: Writing in dissent, Judge Prost sharply criticized the majority for "responding to a unanimous Supreme Court decision against patentability with even a stricter subject matter standard."  Dissent at 8.    "The majority resists the Supreme Court’s unanimous directive to apply the patentable subject matter test with more vigor. Worse yet, it creates an entirely new framework that in effect allows courts to avoid evaluating patent eligibility under § 101 whenever they so desire."  Id. at 1.  Judge Prost was equally critical of the majority's departure from the Supreme Court's case-specific approach to questions of patent eligible subject matter.  "The majority has failed to follow the Supreme Court’s instructions—not just in its holding, but more importantly in its approach."  Id. at 3.

Central to Judge Prost's dissent is the view that the Supreme Court in Prometheus required that to be patent eligible the subject matter must contain an "inventive concept."  "Now there is no doubt that to be patent eligible under § 101, the claims must include an “inventive concept.”  Dissent at 3. Finding nothing inventive in the claims – they consist of the abstract and ancient idea together with its implementation via a computer – the dissent concludes that they cannot constitute patent eligible subject matter.

The Heart of the Dispute: One interpretation of the divide between majority and dissent is that it flows from fundamentally different approaches to the question of what the "invention" is for purposes of § 101.  The majority sees the "invention" as rigidly defined by the claims: "ignoring claim limitations in order to abstract a process down to a fundamental truth is legally impermissible," and accuses the dissent of doing just that.  Slip Op. at 23.  In contrast, the dissent, while recognizing the importance of the claims, strips them of jargon in order to ask "So where is the invention"?  Dissent at 5.  The majority's approach resembles the standard patent law approach to dealing with the concept of the invention; the dissent's is much more similar to how the Supreme Court analyzes questions of patentable subject matter. 

In any event, given the fundamental disagreement between the majority and dissent, this will be a case to keep a close eye on.

Correction to original post: Judge Lourie was joined by Judge O'Malley, not Judge Moore.

393 thoughts on “CLS Bank v. Alice: The “Nothing More Than” Limitation on Abstract Ideas

  1. Mr. Rantanen, how about the dissent’s statement as to “common sense” – you wrote about this in a prior post as to obviousness. Is the former government counsel (IRS/Treas, Labor, Senate, etc.) resorting to the same “common sense” we find in government everyday (like in our tax code, labor regs and senate)? Wow, we need more of that!

  2. “the Office is legally bound to take claims as a whole.”

    MM: “A recent 9-0 Supreme Court case called Prometheus plainly and unambiguously gutted the simple-minded, unworkable concept you refer to above, suckie.”

    That is incorrect. Here is what the Court actually held in Prometheus:

    ” In Diehr, 450 U. S., at 177–179 the Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole.” (the Opinion of the Court 12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC.) ( Emphasis Added)

    So as you can read above, not only was Diehr’s claims as a whole doctrine upheld in Prometheus, the Court also added “integration” to the analysis, in effect buttressing Diehr’s claims as a whole approach 9-0. As you know “Integration” is the antithesis of dissection. And to further underscore the importance of the claims as a whole approach and “integration analysis”, Integration was adapted in the new USPTO Office Guidelines. Meanwhile an obscure, some say whacky, now forgotten mental steps test theory was completely ignored.

    :: smirks::

  3. I get it.

    What I want to claim:

    A method of multiplying by a power of 10, by recording the number as a sequence of digits that vary in value from one to the next by a power of ten, identifying the location of a decimal point, and, moving the decimal point by the number of digits that correspond to the power.

    Hummm…

    I got it:

    A method of multiplying by a power of 10, by recording the number to be multiplied as a sequence of digits in a computer shift register, where the shift register digits vary in value from one to the next by a power of ten, shifting the contents of the shift register a number of digits that correspond to the power, and recording the contents of the shift register in a computer memory.

    Checklist:

    1) Law of Nature or Fundamental truth? No.
    2) Limited to execution on a computer. Yes.

    It is eligible.

    But, then, I don’t understand Benson.

    In truth, I think the claim is eligible in the Alice case, but because of the specific time limitations contained in the claim. This seems sufficient. I think this would be the case even if the claims were not limited to computers, but instead directly covered the ancient Roman Empire method using waxed tablets and wooden pens to recording the partial results.

  4. Remember the blistering dissent in the Supreme Court’s Prometheus decision, where one of the Justice’s rails against the majority’s flippant dismissal of the absolute prohibition against ignoring claim limitations for 101 purposes? You know, the prohibition allegedly set forth in Diehr?

    Neither do I.

    LOL.

  5. 6, I think what they intended to do is all but eliminate the abstract idea exclusion, converting it into an inquiry as to whether a principle is claimed in the abstract (per Le Roy v. Tatham), i.e., whether it wholly preempts a fundamental truth. If it has meaningful limitations that necessarily tie the claim to a computer, it is eligible.

    Under this reasoning, Benson would have presented eligible subject matter if it specifically called for storing partial products in a register…. Er, I thought there was such a claim that actually did that?

    Let’s see… Ah, there it is! Claim 8!

    Claim 8 reads:

    “The method of converting signals from binary coded decimal form into binary which comprises the steps of

    “(1) storing the binary coded decimal signals in a reentrant shift register,

    “(2) shifting the signals to the right by at least three places, until there is a binary `1′ in the second position of said register,

    “(3) masking out said binary `1′ in said second position of said register,

    “(4) adding a binary `1′ to the first position of said register,

    “(5) shifting the signals to the left by two positions,

    74*74 “(6) adding a `1′ to said first position, and

    “(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary `1′ in the second position of said register.”

    Er, help, me 6. Why is claim 8 ineligible under the reasoning of the Alice in Wonderland case? I must have misunderstood something.

  6. MD: Both sides swear their allegiance to Diehr’s instruction to consider the claim as a whole. Both think their approach is the right one.

    Diehr was kneecapped by the Supreme Court in Prometheus, MD. See, e.g., the discussion about “old and conventional” steps and how such steps can not turn an otherwise ineligible method (e.g., a method of thinking about a correlation) into an ineligible method.

    Thanks for your comment.

  7. Do you really think the issue is about a composition claim?

    No, really?

    Suckie is talking to itself now. Not for the first time, either.

  8. the additional elements or steps … the additional steps…

    Dissection: yummy.

    Dierbots s-cking it: superdooper yummy.

  9. Because each of these sections serves a different purpose and plays a different role, invalidity, patentability, and patent eligibility challenges under these sections present distinctly different questions. See Prometheus, 132 S. Ct. at 1303-04.

    It’s like the court wanted to reach out and smack MM upside the head for his Lilly-esque “102/103 is good enough for composition claims” BS on a 101 issue.

    No wonder he went all eplectic down below.

  10. Why don’t you get on Lake Superior with your Ski Doo… Now way in the middle…. Wait some……. When the Lake melts and your Ski Doo stays afloat then you will have integration. Good luck with that though.

  11. Did you all notice how many times “implicit reading” was in quotes?

    Talk about a supreme slap in the face.

  12. Do you really think the issue is about a composition claim?

    No, really?

  13. “What “new USPTO Guidelines on Integration”?”

    The USPTO, has adapted concept of integration as expressed in Prometheus v. Mayo, in at least the following four distinct sub sections of USPTO Guidelines for 101 statutory analysis. Changing everything from M or T to buttressing Diehr’s Concept and Application Test/Analysis. Now that Ultramercial has been remanded to the CAFC in view of Prometheus, it’s important that ALL Examiners learn what the “Integration Analysis” is and how to apply it.

    1. To show “integration”, the additional elements or steps must relate to the natural principle in a significant way to impose a meaningful limit on the claim scope. The analysis turns on whether the claim has added enough to show a practical application.

    2. Along with “integration”, the additional steps must be sufficient to ensure that the claim amounts to significantly more than the natural principle itself by including one or more elements or steps that limit the scope of the claim and do more than generally describe the natural principle with generalized instructions to “apply it.”

    3. A machine or transformation that is merely nominally, insignificantly, or tangentially related to the steps or elements, e.g., data gathering or data storage, would not show integration.

    4. This claim would pass Inquiries 1-3 in the above analysis as it is a process that includes the Arrhenius equation as a limitation, with additional steps that “integrate” the Arrhenius equation into the process and are sufficient to narrow the scope of the claim so that others are not foreclosed from using the Arrhenius equation in different applications.

    link to uspto.gov

    Interim 101 guidelines, post-Prometheus:

  14. Patent examiners are also looking for the easy way out — give it a 101, and don’t bother with messy, time consuming searches and composing 102/103 rejections.

  15. “This “manifestly” subjective nonsense has no place in the 101 jurisprudence, this will last no more than 3 mo.”

    Certainly no more subjective nonsense than you wanting to dream up the concept of the invention and declare that the claims pre-empt what you dreamed up.

    Fortunately, the CAFC is following Diehr, and so is the Court. All you can do 6 is violate the law at your Junior examiner position under the immunity of a government union.

    But that will be overcome at the BPAI, if not the CAFC. And not even the post Steven’s libs have the guts to overturn Diehr, so software, and business methods will be patent eligible subject matter well into the future.

  16. suckie: the Office is legally bound to take claims as a whole.

    A recent 9-0 Supreme Court case called Prometheus plainly and unambiguously gutted the simple-minded, unworkable concept you refer to above, suckie.

    But you’ve been told this already, scores of times.

    The new USPTO guidelines are crystal clear that Examiners are *obligated* to find claims ineligible when the only patent-eligible subject matter in the claims is old and conventional.

    Deal with it. 9-0. You lose. I win. And I’ll keep winning. You and Judge Linn will have great fun pounding sand in the near future. And I will have great fun laughing at your profound ignorance. And his. And that of his clerks.

  17. “When you invent something you probably have a good idea what you have invented.”

    That’s like saying, if you drive home you probably have a good idea where your house is. IF you are the “Actual Inventor” you know EXACTLY what you have invented.

    It’s your attorneys job to know if what you have invented is patentable according to the law, and then know all the rules and regs of the nightmare Gov’t bureaucracy that is the USPTO.

    Your attorney does not tell the court or the Court what you have invented and the Judge does not tell her.

    As far as the Office goes that what the claims, drawings and specification are for. If the office is confused then the Actual Inventor can explain it to the office during the first OA.

    But the Office is legally bound to take claims as a whole. Read the claims in light of the specification.

    None of this BS subjective labeling the concept and declaring pre-emption.

    None of this so called stripping away the claim terms to do no more than dissection.

    The Actual Inventor tells the all.

    In CLS Bank v. Alice the CAFC is following the law as it was written by Congress and as it has been interpreted by the United States Supreme Court in Diamond v. Diehr. Controlling precedent and the case most on point for 101 statutory subject matter. And that is the way it is supposed to be.

  18. Abstractness (which is nowhere in the patent statute) if it is a problem can be handled by the written description and definiteness requirements of the patent statute.

    101 abstractness is Supreme Court make believe stuff.

  19. Any so-called preemption issues should be judged by whether the claim meets 102, 103, written description and indefiniteness requirements.

    101 preemption is make believe.

  20. Now take the time to edit the Diamond v. Diehr claims so that it merely recites opening the oven door when the cake is done based on a known recipe, time and temp. Because that is really a the abstract idea covered by the claims.

  21. Can’t see that through all the dust that has been kicked up on the thread.

    You’re congenitally blind, suckie.

    See my July 11 12:59 pm comment in this subthread and Wow’s 3:45 lol-able attempt at a “rebuttal.”

  22. Except we’re talking about compositions of matter.

    Can’t see that through all the dust that has been kicked up on the thread.

  23. Whether it was him or the law firm.. It still has his fingerprint on it. I even have the letter ( not the original one i sent though.. discovery will get that out!
    So there actuall were 5 Tennessee Lawyers trying to destroy me… Now which one of them? That’s like shooting fish in a Barrel

  24. Also thatproves that someone was in my closets. The Sweatshirt I made with the word seasaddle was only mentioned on my Trademark papers. So the fingerprint is smudged over to the Trademark too.

  25. Except we’re talking about compositions of matter.

    That’s funny, the case is about machines and methods.

  26. “Just like “shadow credit records” are not “amongst the useful arts”.”

    Sounds a lot like “business methods are not amongst the useful arts.”

    Except we’re talking about compositions of matter.

    Man, this blog has the d-mbest trolls.

  27. There is a fundamental problem in that the greatest level of expertise in patent law resides with the CAFC. The district courts mostly have no clue, but if anything winds up in the Supreme Court you are most of the way back to the incomprehension level of the district courts. Can’t see a way around it that wouldn’t involve changing the US constitution.

  28. Just like “shadow credit records” are not “amongst the useful arts”.

    Sounds a lot like “business methods are not amongst the useful arts.”

    Except they are.

    MM’s favorite pastime of accusing others of what he does strikes again: self-defeating all over himself.

    T O O L

    (that’s not popcorn you are choking on)

  29. So that proves people have broke into my Home. It also proves that Berkenstock has a very vaery large fingerprint on my Case… CSI

  30. Lame? B’s fingerprint? Ski doo? We had that argument. Ski doo. Wouldn’t that relate to the Printed Matter Doctrine? Mine related to Boat Fenders. so obviously the Grants I have here have been switched, and they are not the real Grants!

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

    a piece of paper comprising written information about a shadow credit record and shadow debit record for a party, independent from a credit record and debit record maintained by an exchange institution; and

    an operator, wherein said operator is capable of:

    (a) receiving a transaction;

    (b) adjusting said shadow credit record and/or said shadow debit record in order to effect an exchange obligation arising from said transaction, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and

    (c) generating an instruction to said exchange institution at the end of a period of time to adjust said credit record and/or said debit record in accordance with the adjustment of said shadow credit record and/or said shadow debit record, wherein said instruction being an irrevocable, time invariant obligation placed on said exchange institution.

    2. The system of claim 1, wherein the operator is a robot with a Powerful Computer Brain.

    Question: can any of the trolls explain whether one of the above claims is eligible for patenting and why?

  32. 1. A data processing system…
    2. The method of claim 1,…

    Something is amiss right from the start

    LOL. Try to work past the obvious typos, suckie. It’s sort of like when you are s-cking on that lollipop trying to get to the chewy center. You’re a master at that. Use your skills.

  33. Not sure what point you are attempting to make

    The point is that you are a self-defeating nimrod, suckie. Moreover, it’s great fun to watch you self-defeating all over yourself.

    poetry is not amongst the useful arts

    Just like “shadow credit records” are not “amongst the useful arts”. Nevertheless, certain poems are indisputably useful (e.g., for memorization purposes, for entertainment purposes). Does a patent-eligible composition become ineligible if it comprises information that rhymes, suckie? Is that what you’re driving at, suckie?

    Just answer the question:

    “A piece of paper with [novel and useful poem] written on it.”

    Imagine that the poem is a poem about shadow credit records. Is this composition claim eligible for patenting under 101 on your planet? You certainly seemed to be suggesting that all compositions were eligible for patenting, suckie. Are you backtracking? Would you like to introduce a caveat?

    LOL.

    [cough]

    Man, this popcorn is making me thirsty.

  34. Your response is incomprehensible.

    Not sure what point you are attempting to make with the poem reference, even if you put “novel and useful” in front of the word, poetry is not amongst the useful arts.

  35. wherein suckie bends over backwards and sticks its head in its behind:

    Whoever invents or discovers any new and useful … composition of matter,

    “A piece of paper with [novel and useful poem] written on it.”

    Eligible for patenting, suckie?

    LOL.

    [imagines universe bigger than the present universe, wherein the new universe is capable of holding the amount of popcorn that will be eaten over the next couple years]

  36. 1. A data processing system
    2. The method of claim 1,…

    Something is amiss right from the start.

    Not sure I get the popcorn reference.

  37. Judge Prost:

    what legal principle justifies responding to a unanimous Supreme Court decision against patentability with even a stricter subject matter standard?

    It’s not a legal principle. It’s a practical matter. Some judges just can’t bear the idea of a couple thousand computer-implemented invention wankers boohoohooing about their “lost rights.” Besides, if we prevent such claims from being granted, how will technology ever progress to the point where you will be automatically alerted that your old high school classmate just streamed your favorite DVD, wherein said DVD is an animated animal adventure story set in the middle ages, and wherein said story does not comprise a royal family member as a main character????? Seriously. Try to imagine a future that empty. Judge Linn is keeping the dream alive.

  38. Oh, I see. This is a composition claim.

    35 U.S.C. 101 Inventions patentable.

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

  39. IBP,

    Unfortunately, that is one of the busted javascript “Show more comments” threads.

    And for all of your waxing, all you have accomplished is the exchange of the label of “abstractness” for the label of “specificity.”

    That is all.

    Now, instead of trying to qualify/quantify “abstract” we are left to do the same with “specific”

    I would also echo another post from that thread: The post is not as lucid as you might infer – IBP makes the classic mucking of breadth versus abstractness. One can have a broad utility (i.e. non-specific) and still avoid abstractness.

    All IBP is doing is exchanging one paradigm for another. Granted, his paradigm sounds better, but it still misses the boat. Note that I don’t lambast IBP’s paradigm because frankly, I don’t have an answer to put in its place. I just don’t think you gain anything with the “specific” semanatics (who is to say “what’s specific enough”?).

    Now given all that, you do not describe why the majority is incorrect, given that they have not proscribed to your view and why this attempt at Post-Bilski, Post-Prometheus 101 jurisprudence is “yet another disappointment” provided that the Court not seeing your wisdom is not a proper foundation for disappointment.

  40. MM talking about “correctly applying” Printed Matter Doctrine…

    As if he had a clue.

  41. MM talking about “correctly applying” Printed Matter Doctrine…

    As if he had a clue.

  42. “Examing the concept of “abstract ideas,” the majority concluded that despite substantial precedent and commentary, its meaning remains unclear and its boundary elusive.”

    The “majority” is incorrect.

    Its meaning is legally described, and its boundaries precisely delineated, in the following patently-o thread:

    link to patentlyo.com

    What more can I say? This opinion is yet another disappointment from the federal civil service.

    Either this type of abdication of responsibility exhibited by the court will end, or we will descend into complete anarchy. We’re already halfway there.

  43. Why are the nuttiest of the nutty patent nutballs invariably practicing in the computer-implemented “arts”?

  44. Bonus points if you “correctly” apply the so-called Printed Matter Doctrine in your answer.

    LOLOLOLOLOL.

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

    a piece of paper comprising written information about a shadow credit record and shadow debit record for a party, independent from a credit record and debit record maintained by an exchange institution; and

    an operator, wherein said operator is capable of:

    (a) receiving a transaction;

    (b) adjusting said shadow credit record and/or said shadow debit record in order to effect an exchange obligation arising from said transaction, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and

    (c) generating an instruction to said exchange institution at the end of a period of time to adjust said credit record and/or said debit record in accordance with the adjustment of said shadow credit record and/or said shadow debit record, wherein said instruction being an irrevocable, time invariant obligation placed on said exchange institution.

    2. The method of claim 1, wherein the operator is a robot with a Powerful Computer Brain.

    Question: can any of the trolls explain whether one of the above claims is eligible for patenting and why?

    LOL.

    [cooks up the Biggest Batch of Popcorn Ever]

  46. Meet Mr. “Suckie” Gamburo:

    The Defendant Pro Se does not consider the statement of the Court to be a ‘final warning’ but more accurately a threat of tyranny to the Consti-tutionally assured rights of a natural born citizen of the United States. The Defendant Pro Se is outraged that these measures were even consid-ered to the point of including them in an order. DO NOT THREATEN ME AGAIN IN WRITING. I do not take kindly to threats in any form.

    BWAHAHAHAHHAHAHAHHAHAHAHAHHAHA!!!!!!!

  47. It goes without saying, that 101 and 103 serve different purposes

    Actually, it needs to be said.

    Often.

    And acted upon accordingly.

  48. I assume all debaters here share a love of the law, and so want to see it be given maximum respect. It goes without saying, that 101 and 103 serve different purposes. Nevertheless, on 101, the UK and the EPO do it differently, relative and absolute, substance and form, respectively, and each sincerely thinks the approach of the other is misguided. Each approach has arguments in favour and arguments against it. Neither jurisdiction loves the law any more or less than the other.

    On your side of the Atlantic, I see the same debate running, with the same passion. Both sides swear their allegiance to Diehr’s instruction to consider the claim as a whole. Both think their approach is the right one.

    How you manage to work out a rigorous, reproducible and practical approach to eligibility, to maximise respect for the law, is interesting for all those who love the law. It isn’t easy. But one way or the other, you are going to get it sorted sooner or later I’m sure.

  49. suckie Is it the same effective structure of the 10% (or whatever percent) unpurified form of a claimed purified structure?

    Is English your second language?

  50. That’s some pretty fine dust you are kicking up MM.

  51. Is it the same effective structure of the 10% (or whatever percent) unpurified form of a claimed purified structure? What is that structure?

    Is is part of the ride to watch you go eplectic when your own word of “effective” invades your particular neighborhood?

    Are you finally going to give me answers to my questions before you want yet more answers to your questions?

    [steals MM's popcorn and leaves note thanking MM for making such delicious popcorn]

  52. simple suckie Is this today’s version of the evermore eplectic rants of rambling rage?

    I have no idea what you’re talking about, suckie. But I do see you’ve posted today’s version of “When did you stop beating your wife?”

    Now, please GFY.

  53. Suckie: analogously “structural” words like isolated and purified.

    (think “configured”)

    Suckie appears to believe that the term “configured” is “analogous” to structurally-descriptive words like “isolated” and “purified.”

    We’ve previously established that suckie’s definition of the term “analogous” is quite different from that of the rest of the world. But it was fun so let’s take suckie for another ride and drop the body at the waterfront. Again.

    Tell us, suckie: what objective physical test can be used to unambiguously distinguish a first computer “configured to do X” from a second computer “configured to do Y”? Thanks in advance for your plainly articulated, definitive and final answer.

    LOL.

    [starts heating popcorn]

  54. it is hard to see, using methodology of this case, why the claims in Bilski were not patentable subject matter. Perhaps all the Bilski claims needed to do was to record the current state of the risk it was seeking to hedge on a ledger in order to determine at a particular time when the level of risk was reduced to a predetermined number?

    You haven’t read the case yet, have you Ned? Did you skip pages 17-21?

  55. question for Suckie and Co

    Is this today’s version of the evermore eplectic rants of rambling rage?

  56. Been there, done that.

    Something to do with the analogously “structural” words like isolated and purified.

    (think “configured”)

    T O O L

  57. A question for Suckie and Co, in light of their incomprehensible chatter regarding Myriad’s claims:

    Do you believe that an invention consisting of an isolated nucleic acid with novel, non-obvious and useful sequence XYZ, where sequence XYZ is found in non-isolated form in nature, be rendered eligible by reciting “A data processing system for enabling cancer detection, comprising a data storage unit with sequence XYZ and a computer capable of receiving information about an individual’s DNA, comparing said information to XYZ, and outputting information about cancer likelihood in said individual”?

    If the answer is “yes” and you still maintain that Myriad’s nucleic acid composition claims are ineligible subject matter, can you please tell me what brand of chronic you are smoking and where to buy it? LOL.

  58. All you have to do is read the passage in context you fool

    Did you bother actually reading my post? From your response it is clear that you simply do not understand the chessmatch in process.

    Did you bother actually reading the Bilski decision in context? From your response it is clear that you have not done so.

    Please read and try to understand before you comment again.

    Think of why even the Supreme Court must harken to the text chosen by Congress.

    Think of why the Court used the words “less extreme” in its context.

    Think, and the use of the word fool mayhaps not describe your own behavior.

  59. 1. A data processing system …. comprising a data storage unit … and a computer

    Oh, I see. This is a composition claim.

    Data storage units and computers are old. Can anyone tell me how the structure of this composition is distinguished from the structure of ancient prior art compositions?

    I didn’t think so.

  60. Can anyone explain how “progress” in any useful art is promoted by granting claims such as the one at issue in this case? That’s a rhetorical question. We know the answer to the question already.

    Here’s a non-rhetorical question: why does the USPTO require all of its Examiners and patent agents to possess a “technical” background? Why shouldn’t it be enough to have a business or accounting degree when banks are being sued for infringing claims to methods for storing and sharing information about credit reports?

  61. When you invent something you probably have a good idea what you have invented.

    Then you turn it over to a Patent Attorney (Draftsman) and it doesn’t matter what you think the Invention is, what matters is what the Patent Attorney thinks the invention is.

    Then the Patent Attorney files the Application and it doesn’t matter what the Patent Attorney thinks the Invention is, what matters is what the Patent Examiner thinks the Invention is.

    If a patent is issued and the patent is litigated, then it doesn’t matter what the Patent Examiner thinks the Invention is, what matters is what the Court thinks the invention is.

    Patents are Deconstructionism (in Literature) made manifest.

  62. Let’s break it down, shall we?

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

    Translation: A computer for practicing a method which is indisputably abstract and ineligible for patenting.

    a data storage unit having stored therein information about a shadow credit record and shadow debit record for a party, independent from a credit record and debit record maintained by an exchange institution; and

    = a piece of paper with information on it, or a person having memorized the information and stored the information in their brain

    a computer, coupled to said data storage unit,

    = another part of a human brain, the part that processes information (the part that our trolls and certain Federal Circuit judges lack)

    that is configured to (1) receive a [blah blah blah] and [process blah blah blah blah] and [output blah blah blah blah blah

    Brains are configured to process received and stored information. So do computers. It doesn’t matter what the information is. That’s what brains do. That’s what computers do. In fact, that’s all they do. There is nothing “inventive” about “processing” “information” in the abstract. Stating that the information is “about your grandma’s dog” or if the informatin is “about your foot” or if the information is about “a shadow credit record” doesn’t make a method less abstract.

    Likewise, stating that “information about grandma’s dog is electronically adjusted” and “stored” and “compared to information about your uncle’s dog” doesn’t make the computerized method less abstract. And “outputting an instruction about grandma’s dog on Sunday when condition X applies” doesn’t make the method method less abstract.

    There is no patent-eligible invention in this claim *unless* the Supreme Court is going to hold that indisputably ineligible subject matter (i.e., “a novel non-obvious and useful credit reports” or “a novel, non-obvious and useful method of thinking about credit reports and discussing those thoughts with creditors”) can be rendered eligible merely by reciting “a computer” and/or generally recited steps of “storing” , “processing” and “outputting” information relating to that ineligible subject mattter.

    I respectfully submit that anyone who believes that the Supreme Court is going to uphold the eligiblity of this kind of s–t is deeply deluded. Of course that includes Suckie and Co. Sadly, it also includes a couple Federal Circuit judges.

  63. Nope.

    Yep.

    We may have to wait until this decision is revisited by another court, but until then, IT IS LAW.

  64. suckie: MM, will not dare address “Integration Analysis”.

    LOL. Please articulate in a plain and clear manner exactly what you mean by “integration analysis” and apply the analysis to the method claims which were at issue in Bilski and Prometheus, and also to the composition claims at issue in Myriad. Then I’ll gladly address “Integration Analysis.” Absent that, there really is nothing to address so you can FY in the meantime.

  65. Does it matter “very much” whether one uses the 101 filter or the 103 filter?

    Asked and answered: The point is that you (Paul Cole) missed on the difference. It is all the difference in the world.

    Legal. Factual. Philosophical. Any way you want to look at it.

    MaxDrei, I refer you to the decision itself, pages 12-13 in pertinent part (and with no small amount of sublime satisfaction, quoting Prometheus):

    It should be self-evident that each of these four statutory provisions—§§ 101, 102, 103, and 112—serves a different purpose and plays a distinctly different role. No one section is more important than any other. Together, they evince the intent of Congress in furthering the constitutional objective of promoting the progress of the useful arts. Because each of these sections serves a different purpose and plays a different role, invalidity, patentability, and patent eligibility challenges under these sections present distinctly different questions. See Prometheus, 132 S. Ct. at 1303-04.

    I do not know about your side of the pond, but the CAFC has witnessed the conflation mess and a more clear slap down of conflation, of the “whatever” vacuousness of empty rhetoric that infects much of the anti-patent dogma, could not be had.

    I reiterate: Yes it matters very much to those who know law, who love law, exactly what law is applied and how that particular section of law is applied.

  66. “The Supreme Court and Congress have both all but declared business methods persona non grata.”

    Except that they haven’t. Wishing something was true doesn’t make it true.

    Inventions directed solely to an abstract idea are not patentable subject matter. This wasn’t the case in this application.

  67. 6 writes “blah, blah, blah”

    Do you think anybody read that? The Federal Circuit put a beat down to your arguments as well as the arguments espoused by Ned and MM. If the case went the other way, you would be crowing all day how times have changed and how 6 was right for the last 3 to 4 years.

    LMFAO

  68. You have no idea how the real world works.

    DC judges are always looking for the easy way to get a case off their docket. Disposing of a case under 101 is a quick way to avoid all the other messy issues.

  69. You must first determine if there is an abstract idea that could be a problem for the claim. Then you write it down. It is in this stage where discretion must be placed on what one will consider to be an abstract idea and what one will not. But this is not where the CAFC deems to place their newly fashioned restriction.

    After you have determined if there is an abstract idea at play that might be a problem (and written it down), you must compare it to the claimed subject matter and determine if the claimed subject matter would wholly preempt on the abstract idea and thus the claim be designated as being “abstract”. It is here, at this second stage, the court proposes to place its newly formed restriction. They simply refuse to dub the claim “abstract” if it is not “manifestly abstract”. This is a hilarious error but it is just them trying to make the inquiry reasonable by providing a check. But the check for reasonableness needs to come at the previous stage most certainly not this stage. Putting it at this stage instead of the previous one is what exalts the draftsman. And indeed, the check for reasonableness at stage 1 is already built in, and they asked about it being built in at oral args, but nobody was knowledgeable enough to help them understand that it was.

    Of course after this step if you reached a negatory on preemption you then need to write down why you reached a negatory and if they turn out to be pre/post solution activity etc. then you still get caught up in the exceptions and your claim is sinking. But that isn’t so much the thing that screwed up the CAFC’s analysis here.

    It is a fundamental lack of doing this process correctly and understanding each step that is leading to these problems. When it is done correctly, as Prost did, then things are fine. Note that in the oral args one judge asked about how you draw the line about what is reasonably an abstract idea in step 1, but the attorney thinks he was talking about in step 2. It’s hilarious how people, even judges, just get tripped up over the language being used because we use “abstract idea” “abstract” or other terminology like that to describe things in both steps.

  70. “But the SC did mention wholly preempting in its decision in Bilski, leaving open the idea that that was the problem, not that the inventive concept being claimed was itself an abstract concept.”

    It was both in Bilski. Which is what you, and 2 members of the CAFC seem to be missing.

    As was noted in the oral args, there is an abstract idea at the “heart” of these claims. Then one of the judges asked where does one draw the line on what these abstract ideas are which are at the heart of claims, and the attorney respended as if the judge asked a wholly different question. In other words, his understanding of the cases is not 100%.

    The decision comes out and some CAFC judges subscribe to the view that everything has such an abstract idea at it’s heart. But that is not so. And this is the fundamental split between the two sides. The one side still doesn’t understand how to not go apesht in sane on definining what is an abstract idea at the heart of the invention, and the other side does. Since this is the case, the one side which is having a hard time on defining the initial abstract ideas at the heart of the invention as being an abstract idea only when reasonable then feels the need to place some limits on the scope of this exception because they feel as if it would be overpowered if we did the analysis in that t ard fashion. They are correct, but they are placing the restraint at the wrong place in the analysis. What you need to do is put a “reasonable” check on whether or not the idea at the heart of the claim is abstract or not. Indeed, it is already so in the caselaw, unbeknownst to those who keep fin it up. But in any event, the answer is certainly not to put that “reasonable” check in the form of saying “manifestly” on the end determination.

    It all has to do with the flow of the analysis. This is going to get complicated, but if you want, stick around.

  71. Mr. FairPlay, indeed, the Federal Circuit in this decision has really thrown down the gauntlet to the will of the Supreme Court and to them will Congress. The Supreme Court and Congress have both all but declared business methods persona non grata, the yet here a gigantic business method elephant walks into the tent and the Federal Circuit does not inquire whether the claimed invention is directed to an elephant, but rather misdirects attention to see whether the elephant is dressed up properly in lawyer-drafted limitations that make the elephant appear to be a computer.

  72. Check the DC opinions in the recent 101 cases that have reached the CAFC. Nearly 100% of them are people getting invalidated at the DC level.

  73. I do not have a copy of those, and I doubt they strayed very far from the positions espoused at oral args. The one attorney is only 80% there in his understanding of the abstract idea analysis or else he wouldn’t have flubbed two of what would be soft ball questions if he knew what was sup with the abstract idea analysis.

  74. I thought a good point was made above to try not to confuse claiming “abstractions” [for which there is no legal definition standard] with “laws of nature”, with 103, or with 112 overclaiming or “premption.
    But I think the real problem is that it is extremely difficult to get a 103 or even 102 invalidation of claims in patent litigation by an early, simple, and low cost summary judgment, instead of plural million dollar litigation with a full jury trial and appeal. Too many patent lawsuits do not have a reexamination or any judicial consideration whatsoever of the extent to which the claims read on prior art found in a better search than the few hours a patent examinar has to search.
    It looks to me like some D.C. judges and Supreme Court judges are looking for an alternative way of accomplishing that under 101?

  75. Does it matter “very much” whether one uses the 101 filter or the 103 filter? For example, the EPO and the UK courts both adjudicate the same law. One uses “Euro-101″, the other “Euro-103″. Both say it doesn’t matter, because the outcome is the same. We wait to see which line survives, in the long run, in the UK.

    SCOTUS say “abstract” and the EPO says “technical character”. We know what became of the European “technical character” eligibility test. Going forward, we (and SCOTUS, I imagine) are impatient to know how “abstract” can be developed into another workable, consistent and predictable touchstone of eligibility.

  76. 6, thanks for your report on the oral argument.  It does appear this case was all about "abstract" and what the Supreme Court meant by that in Bilski.
     
    I recall listening to the oral arguemnt in Prometheus.  In discussing Bilski, everyone present seemed to think the problem with Biliski was hedging itself, not wholly preempting.
     
    But the SC did mention wholly preempting in its decision in Bilski, leaving open the idea that that was the problem, not that the inventive concept being claimed was itself an abstract concept.
     
     

  77. “I would remind 6 that “limiting” does not necessarily mean more limiting, but rather means using their judicial role to set what they believe the proper limit to be — in view of the actual text used by Congress. I would also remind you that this is a precedential opinion. It is indeed law that you must follow.”

    Nope. But you can keep on dreaming. Just wait until in the next decision they say “In Bilski we invited the CAFC to tighten up on what they were allowing through 101 by whatever means they could figure out in addition to the exception criteria they established, and they have decided that what they should do is loosen up on what is allowed through”.

    And I’m going to lulz. All you have to do is read the passage in context you fool.

  78. I suppose I agree with you on that Stop, if for no other reason than I will enjoy all the sweet sweet lulz I get from the cases all eventually turning out exactly how I said 3-4 years ago. The lulz sustain me.

  79. “They may on occasion be wrong, but it is not credible that CAFC judges are corrupt.”

    Intellectual corruption is just as real of a problem as monetary. They gain power when they extend the reach of patents by failing to reign it in. It is them justifying their own existence. Like bureaucracies do. The PTO doesn’t hold it’s position on computer nonsense for giggles.

  80. Good point Paul. Except in the USA, patent attorneys, like Patent Office Examiners, are engineers or scientists who like to communicate and are excited by structured argument about technology. The clients are on board, and fully engaged with the arguments. In the USA, as we know, patent attorneys are different and very special. They are first and foremost lawyers, more interested in the law as such, regardless of any Progress of Useful Arts. Their clients are mystified.

    Have you considered, what’s “boring” for you, and for clients everywhere, because it’s devoid of any “technical” content, might be terribly exciting for those American patent lawyers and their creative accountant clients.

  81. I thought the Supreme Court was trying to send a clear message that…exclude business methods except where the inventive concept was directed to technology.

    As has been abundantly noted, you thought wrong.

    We all seem to understand that point.

    Except those who saw that there was no such point.

    Indeed the overwhelming hostility expressed the business methods by Congress

    Excpet this is a comepletely bogus thought. If that “overwhelming hostility” was really there, Congress could have easily written: “No patents for business methods.” They expressly did not do so. Your view is mirrored in the failed Stevens view of Bilksi.

    Nowhere in any Supreme Court holding (or even controlling dicta) was there any such direction for a technology based patent eligibility criteria. You saw what you wanted to see, not what was there.

  82. This is a problem of judicial administration. The abstract idea of funneling all patent appeals through the Federal Circuit simply does not work in practice. It does not work because a substantial part of that court sees itself primarily as protector of the patent system and not as judges applying laws as these have been interpreted by the Supreme Court. The Federal Circuit has become a court of patent fan boys. The way out is to strip it of jurisdiction over patent cases, and return appellate jurisdiction to two or three important circuits (e.g. 2nd, 9th etc.). Yes, this would on occasion result in conflict between a few circuits, but such conflicts are a routine part of our overall judicial system and might result in some better jurisprudence for the Supremes to chew over than they have been getting out of the Federal Circuit

  83. “The obvious problem is that the Supreme Court has not made clear what it means by “abstract.”"

    Because only tards need it spelled out for them. :/ You have to hold lawlyer’s hands through every tiny step or they manage to f it up.

  84. Hey no need to get all high and mighty about Congress. This is strictly a court battle. If you read [the law enacted by Congress], meaning section 101, you’ll see that it provides no exceptions. This entire line of thinking is the Supreme Court’s own judicial rewriting of the statute. Actually, I’m pretty sure the legislative history of the 1952 act would favor keeping these judicial exceptions as narrow as possible. (Remember the 52 act replaced “art” with “process”)

  85. There are differences in patent law as between the US and Europe but in the same the similarities are strong

    Nice, and besides being completely besides the point, no one said otherwise.

    The point is that you missed on the difference.

    It is all the difference in the world.

    Further (in in reference to your comment below of “But for the benefit of VIVE LA DIFERENCE this is a primarily matter of FACT, not LAW.“) you continue to make errors in law. It very much matters between 101 and 103. Saying claims unpatentable because of 103 simply legally is not the same thing as saying claims not eligible because of 101.

    That you even allude to such is highly disappointing.

  86. Some years ago one of the judges in the Federal Circuit very kindly gave me a tour of the court. He spent over an hour with me, not counting lunch. But when we came to the cafeteria for lunch, that person would not even let me buy lunch for both of us. They may on occasion be wrong, but it is not credible that CAFC judges are corrupt.

    It was said (I believe during the second world war) of our civil servants that an enemy had no need to corrupt our civil servants because the damage they can do in their uncorrupted state is quite sufficient. That remark should NOT be taken to apply to the members of the CAFC: I have read many of the court’s decision and by view is that its members give exceptionally skilled and able service.

  87. Paul, I agree that there does not seem to be any fundamental difference between the claims in Bilski and the claims in this case except that in this case the claims don’t wholly preempts the business method in that they have specific limitations such as the recording the transactions on a ledger at specific times and in a specific order.

    I thought that Bilski was more about the abstract concepts being claimed rather than about wholly preempting that concept. I thought the Supreme Court was trying to send a clear message that while they were not categorically excluding business methods, they were providing a roadmap to the Federal Circuit to exclude business methods except where the inventive concept was directed to technology. We all seem to understand that point. Indeed the overwhelming hostility expressed the business methods by Congress should have also sent a clear warning to the Federal Circuit. But now we have this Alice in Wonderland case: Alice Corporation.

    The Federal Circuit really seems to like patenting business methods.

  88. But Paul, somebody was clever enough with naming the various elements of the abstract idea spuriously to give the impression of concrete structure inside a computer, and so to bamboozle the CAFC majority. Patent lawyers (and ex patent lawyers) instinctively admire such skill.

    Could this case be taken en banc. It does seem to be a useful vehicle. And both the parties presumably have 1. strong, legitimate and justified hopes of winning and 2. pockets deep enough to sponsor the show and not duck out to deprive us all of the fun.

  89. because the claims here, especially the method claims, are indistinguishable in subject matter from the claims in Bilski

    BZZZZT – wrong.

    Try again.

    (this time try reading the case and making note of stipulated facts)

  90. The obvious problem is that the Supreme Court has not made clear what it means by “abstract.” Recall that Bilski simply declared the claims in that case abstract without explaining why. This lack of explanation was noted by the Stevens dissent, and was a point of discussion here on Patently-O for quite a long time.

    This case attempts to determine what the Supreme Court meant by abstract: did they mean abstract in the sense that mathematically abstract concepts such as risk were being manipulated, or did they mean that the claimed subject matter was too broadly stated so as to preempt all practical applications of the claimed subject matter?

    This case, I believe, came down on the side of preemption because the claims here, especially the method claims, are indistinguishable in subject matter from the claims in Bilski: they claim a method of managing risk in a business transaction. Therefore we should conclude from the holding that if the claimed subject matter is not manifestly trying to wholly preempt the claimed subject matter, it is patentable subject matter; and, regardless of whether the claim as a whole is directed to a business method, as is the case here, the claim presents patentable subject matter if it has specific limitations so as to not preempt all uses. The case seem to also suggest that a stricter scrutiny may be required if the claim is manifestly trying the claim a law of nature or fundamental principle.

    This holding seems to open the door wide, very wide, for the patenting of business methods. Indeed, it is hard to see, using methodology of this case, why the claims in Bilski were not patentable subject matter. Perhaps all the Bilski claims needed to do was to record the current state of the risk it was seeking to hedge on a ledger in order to determine at a particular time when the level of risk was reduced to a predetermined number?

  91. They are boring because they do not disclose anything technically new and worthwhile. In that respect they are very, very boring.

    From Monty Python’s Vocational Guidance Councellor sketch:

    Counsellor: Well I now have the results here of the interviews and the aptitude tests that you took last week, and from them we’ve built up a pretty clear picture of the sort of person that you are. And I think I can say, without fear of contradiction, that the ideal job for you is chartered accountancy.

    Anchovy: But I am a chartered accountant.

    Counsellor: Jolly good. Well back to the office with you then.

    Anchovy: No! No! No! You don’t understand. I’ve been a chartered accountant for the last twenty years. I want a new job. Something exciting that will let me live.

    Counsellor: Well chartered accountancy is rather exciting isn’t it?

    Anchovy: Exciting? No it’s not. It’s dull. Dull. Dull. My God it’s dull, it’s so desperately dull and tedious and stuffy and boring and des-per-ate-ly DULL.

    Counsellor: Well, er, yes Mr Anchovy, but you see your report here says that you are an extremely dull person.

  92. The CAFC is so unbelievably corrupt it is just sickening. If Congress were not so paralyzed by Republican obstructionism, they would wake up and just take patent cases away from them. Our only hope now is that the Supreme Court starts accepting every appeal from the CAFC and summarily reverses it. Not likely, however, given the increasing corruption on SCOTUS.

    Someone needs to take a deep look at bank accounts and financial transactions between corporations and CAFC judges. There is undoubtedly some serious dirt there.

  93. Now you see just how “gross” your “mistake” was Paul.

    Methinks there are about the same number of readers here who mistakenly suppose that they know how to perform an EPO-style Problem and Solution Approach to obviousness as there are that mistakenly think they know how (19th century) the EPO implements the TRIPs “all fields of technology”.

    Me, I’m beginning to suspect the CAFC and SCOTUS judges have more difficulty than do the EPO Appeal Board members, in grasping what 21st century C-I subject matter falls within the rubric “technology” (and what does not).

  94. I don’t think that backbone or its converse are what is wanted: merely logical and workable analysis.

    Judge Prost says: “According to the specification, the best mode of the invention may be implemented with “[a] large range of communication hardware products,” “[o]ne amongst many of [which] are personal computers and associated printers.” Id. col.7 l.65–col.8 l.3. Other options include “a mini ormmainframe computer,” “a tone dialing telephone,” or even “a voice connection via an operator.” Id. col.8 ll.6-12. As far as an actual system is concerned, therefore, implementation is irrelevant—anything goes. Instead, the specification discusses at length and in painful detail various forms of transactions, contracts, order processing, order authorization, risk management, and other finan-cial concepts. Even a quick glance at the ’720 patent reveals that the claimed invention is not about physical systems; it is the abstract idea of risk-management in financial transactions carried out on an already known infrastructure. That invention, even if new, is an unpatentable abstract idea.”

    Unfortunately in this case IMHO she is absolutely right and the claims should be held unpatentable, though whether under 101 or 103 is a more debatable subject. But for the benefit of VIVE LA DIFERENCE this is a primarily matter of FACT, not LAW.

  95. “If the supreme court really wants to [overturn the law enacted by Congress], they’re going to have to spell it out in black-and-white over a range of fact patterns.”

  96. It’s simple: US law allows patents for anything in the Useful Arts, which is not as constrained as the “technical arts.”

  97. Not sure what you mean by “boring” Paul, in the context of a mere patent claim. The intellectual struggle to find a clear way to define the limits of eligibility under 35 USC 101 is not at all boring, as i am sure you agree.

    Mind you, at risk of causing annoyance, I will say that if you had applied the word “boring” to some patent lawyers and to some contributers to this blog, I would have agreed wholeheartedly.

  98. We all make mistakes

    As Oliver Cromwell said: “I beseech you in the bowels of Christ, think it possible you may be mistaken.” I may well be mistaken and may well have overlooked some important point which is self-evident to any US practitioner but not to me. But do me the favour of explaining what it is.

  99. I never said the laws were boring. it is the CLAIMS that are boring.

    There are differences in patent law as between the US and Europe but in the same the similarities are strong. If an application is thrown out for lack of inventive step by the EPO (as these patents were) that has to go into the BAD FACT column, and the prognosis for enforceability is poor.

    And although law is a matter of obsessive interest in the US, most cases are won or lost on the FACTS, and the relevant facts do not change much between Washington and Munich.

  100. 6 — will you ever learn anything? Oral arguments are for show. The written briefs are for dough. This case was (properly) lost long before their attorney opened his mouth.

  101. Yeah Judge Linn, stick it to the man! I like this. If the Supreme Court really wants to cut back on patent eligibility, they’re going to have to spell it out in black-and-white over a range of fact patterns. The CAFC should not be in the business of trying to do a mind-meld with Supreme Court mumbojumbo when (1) decades of precedent are contrary and (2) the statute doesn’t say anything about any of these exceptions. Prost is obviously giving Prometheus a fairer reading, but given the stakes and the plain foolishness of the Prometheus decision, you have to admire Linn and O’Malley for showing some backbone.

  102. Jason,

    You portray this ruling by the majority as “sweeping” and rightly so.

    However, the level of detail involved, the integration of all of the pertinent post-Bilski 101 cases and the hewing to the Bilski edict of “In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text” sets a far stronger position then the rest of your write-up indicates.

    The CAFC uses all of the right Supreme Court catch phrases in etching out the expanse of patent eligibility that Congress (rather than the Supreme Court in their implicit reading) uses in Congress’s text.

    I would remind 6 that “limiting” does not necessarily mean more limiting, but rather means using their judicial role to set what they believe the proper limit to be — in view of the actual text used by Congress. I would also remind you that this is a precedential opinion. It is indeed law that you must follow.

    The CAFC is indeed taking aim at the Supreme Court for supremecy of patent law, daring the Supreme Court to do more than implicit reading. If the Supreme Court wants to limit patent eligibility, they will need to take a (much more than they may dare) active role in writing that limit. On the heels of a 9-0 decision, this is a masterpiece of gamesmanship. Scholars of jurisprudence should be salivating over this decision. This modern day gambit is every bit as interesting a political battle that Marbury v Madison was in its time.

  103. No one except A-holes care about such typos.

    You should be apologizing for the far more gross mistake of law.

  104. Sorry that US law bores you Mr. Cole.

    Maybe you can chase your boredom away by making sure you understand and apply the correct law.

    MaxDrei is correct: you need to pay attention to the differences in law (“in the USA, free from the restraints of Art 52 EPC“), and those differences matter here.

  105. with what appears to be a fairly good track record.

    Besides the instant case (in which your jubilation of the DC is grossly misplaced), exactly which “track record” are you referring to?

  106. “5. It is impermissible for the court to rewrite the claims as it sees them. The invention is defined in the claims by the patentee, not the court. See 35 U.S.C. § 112.”

    The “Patentee” . That is the Actual Inventor.

    No one knows more about what the invention is than the person that invented it! Not any Court, Judge, and especially not ANY Patent Examiner.

    Take the claims as a whole. Read them in light of the specification. And let the chips fall where they may.

    All this “stripping away” and dissection nonsense is just that, nonsense!

  107. Woah there Paul! Not so fast and loose with the “mere” word. Especially from Europeans, this might irritate and, as you recently reminded me, we Europeans must be careful not to do that. I’m trying to take your advice but from time to time I can’t resist teasing.

    For some readers here, a clever “administrative mechanism for providing a business solution to a non-technical problem”, even though a “mere idea”, is the highest form of inventive activity, fully deserving of a 20 year exclusive right. And, in the USA, free from the restraints of Art 52 EPC, why not?

    Some of my best claims could easily be dismissed as a “mere idea”. Indeed, apparatus claims the EPO finds totally patentable are now getting rejected in the USPTO as being nothing more than “abstract”. But my novel idea claims were properly directed to technical means to solve a technical problem in a non-obvious way, and on that basis the EPO issued them, Ha Ha.

  108. Logically there is much to commend the majority view as a general approach, but if this case goes further it appears more likely that the views of the dissent will prevail. The facts seem more favorable towards the minority view. Corresponding applications were refused by the EPO on the ground that what was being claimed was a mere administrative mechanism for providing a business solution to a non-technical problem, citing the well-known decision in T 0172/03 Order management/RICOH.

    It appears to be accepted by the majority that a claim which in essence is a mere idea implemented in a commonplace way on a computer system is unpatentable. It is not clear in the present case that what is being claimed is in reality anything more than that, at least on my present reading of the decision. The distinction between the invention in this case and that in Bilski does not shine forth, although if you consult the specifications of the patents in issue you will see that the method claimed had been disclosed in some detail.

  109. It looks to me that this “nothing more than” approach is getting closer to the statutory EPO approach of Art. 52(2) and (3) EPC, which states that the ineligible subject-matter is to be excluded from patentability only if the application (i.e. its claims) is directed to such subject-matter “as such”.

  110. Back in the days of chemical, mechanical and electrical inventions, the inventor had an embodiment and thought it to be an invention. The patent attorney knew better. To get protection worth something, the attorney exercised his/her training and skill, to abstract the inventive concept from the embodiment, and then claim it.

    So, in those days, every claim was necessarily directed to an abstract concept.

    With computer-implemented methods of doing business, however, it’s very different. The inventor comes up with an abstract concept, an algorithm, which might well be ingenious, creative, clever. Implementing it (“apply it” as somebody once wrote) comes later, but is NOT where the inventive activity lies. It isn’t the patent attorney any more, who is conceiving the inventive concept.

    So I agree with Jason, that the courts are struggling to see for themselves, in any particular case, what is “the invention” and what is the concept.

  111. Yeah the oral args supported what I figured probably happened. The dude in the arguments got out argued because he is not 100% on what the abstract idea inquiry is about. He’s close, like 80% there, but not 100%. And that last 20% lost him the case because he let the other side frame the issue too much as being about a compoooter. And it shows in the opinion. The level of non-thinking in it is quite apparent.

  112. “Seems the GD war is not going very well for the Anti Patent crowd.”

    I wouldn’t say that, at least the DC’s apply the law now, with what appears to be a fairly good track record.

  113. SCOTUS does directly speak to the topic. It’s called the entirety of the SCOTUS’s 101 caselaw. None of those cases were “manifestly” abstract. Benson was using a computer, a computer more specifically programmed than the instant one. Flook, again using a more specifically programmed computer than the instant one. Prometheous was directed to a method of sticking someone in the arm with a needle (among other delivery methods), I doubt if that person would consider it “manifestly” abstract when it was being performed upon him.

    This “manifestly” subjective nonsense has no place in the 101 jurisprudence, this will last no more than 3 mo.

  114. The problem is that the law isn’t clear, and because of the adversarial judicial system, there’s no way to get an interpretation of the law out of the courts without creating a controversy first. Believe me, an advisory opinion would be better for everyone, but they just don’t do that sort of thing.

  115. I haven’t read this case, so I’m not commenting on, but expounding on the law in general.

    To the extent an opinion is inconsistent with a prior Federal Circuit panel, it is not the law of the land. Prior panel decisions can only be overruled by the full court en banc or the Supreme Court. Of course, as we have seen time in and time out with decisions on inequitable conduct, patentable subject matter and many other areas of law, Federal Circuit judges completely ignore this.

    Stare decisis means less and less these days to federal judges. In the next opinion, Judge Prost will be part of the majority, and we’ll get the opposite result. There is no certainty that patent lawyers crave; don’t be fooled otherwise. You are at the mercy of who you happen to get on your panel. It’s the luck of the draw.

  116. Anyone else notice how silent MM has been regarding the Office Integration Analysis Guidance?

    MM, will not dare address “Integration Analysis”. Which means Ned is totally lost without his MM back up. And 6…well 6 is just as clueless as ever. Seems the GD war is not going very well for the Anti Patent crowd.

  117. 6, this case is about the abstract idea exception. Therefore the court only had to do the Concept and Application analysis.

    Prometheus is about the Law of Nature exception, which established the “integration analysis”. You know, the standard you are afraid to apply to Ultramercial’s claims by using the new USPTO Guidelines on Integration?

    Well, there has not been a ruling applying the “Integration Analysis” to abstract ideas yet, but it is coming!

    Then you will have Concept, Application, Integration for all your 101 analysis needs! That’s your 101 future!

    On a side note the court really wiped the floor with your erroneous notion that preemption was this all encompassing, unlimited 101 test!

    “(3) focusing on the “preemptive force” of the claims as an independent test for eligibility when “[n]either the Supreme Court nor this [c]ourt has ever suggested that ‘preemption’ of a method or idea that is not a fundamental principle renders a patent claim invalid under section 101, nor that preemption is a separate step of the section 101 analysis if a claim has been determined not to be abstract,” id. 35-36.”
    CLS BANK v. ALICE CORPORATION

    Seems to mind someone B Slapped you with that fact 3 or 4 years ago. What was that good commenters name again? AI? :-)

  118. You really expect basic legal understanding from the anti-patent folk here amidst their whailing and gnashing of teeth?

  119. The more correct analogy is “just like the Supreme Court will pound into the dust those Diehrbots (pre-Bilski prediction).

  120. Sorry dude … unless the SCOTUS directly speaks to the topic, you are STUCK with Federal Circuit case law.

    hahahahahahahaha

  121. “which is why the PTO ought to force the issue with some 101 rejections in suitably high-profile applications”

    Force the issue? The USPTO is part of the executive branch. Their job is not to make the law or interpret the law — their job is to enforce the law.

    If the executive branch wants to lobby Congress to change the law — that’s OK. However, it is not OK for the USPTO to ignore the law.

  122. What is also funny is that Prometheus obviously would turn out to be patent eligible under this nonsensical “standard” or whatever they’re calling it.

    It’s called The Law.

    And it’s funny that you think that the process in Prometheus was so integrated into a specific machine and did not pre-empt an entire “basic truth” as the instant claims were found to be in such state. So…

    other than being completely wrong, you would be right.

  123. “The Supreme Court will pound them into dust”

    Like the did your whacky mental steps theory? Oh, wait..they completely ignored that. LOL!

  124. Anyone else notice how silent MM has been regarding the Office Integration Analysis Guidance?

    It’s as if the canard of [old_step]+[new_thought], what was the phrase: 6 said in reply to MM…
    No, they will pound [it] until [it] cease[s] to exist at all. [Its] name[] will be erased from the histories and nobody will ever know [it] even existed.

  125. The depth of your critical and insightful legal analysis is stunningly underwhelming.

  126. Oh, and then we will have DCAIT! Diehr Concept, Application and Integration Test!

  127. ” In assessing patent eligibility, a court must consider the asserted claim as a whole. Diehr, 540 U.S. at 188.”

    Excellent.

    “It is inappropriate to dissect the claim into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”

    Well done. Over all this case is a text book application of the D-CAT Diehr Concept and Application Test.

    Next up, we have the “integration analysis” on board. Soon as the CAFC comes back with it’s Ultramercial decision in view of Prometheus we will get a new set of USPTO Office Guidelines on Integration that extend to abstract ideas.

  128. Hardly, I am oathbound to follow the law, and I cannot in good conscience follow down the road these rebels trod.

    Unless they decide to declare open rebellion, which for all intents and purposes is exactly what they’ve done save for the formalities. In which case I may well join their side. But I’m not really on board with their platform and I don’t think they have raised an army of yet. They’re going to need a big one, the US army is quite large and I think they’ll be on the side of the USSC.

  129. And we will hopefully see this beauty go to the USSC for what may be the final 101 battle for many decades.

    I wish, but I fear it’s unlikely. We already got two big decisions on the topic that manage to do little more than say, “There’s no bright-line rule. We just sniff out patent ineligible claims from their tremendous stench.” The PTO is waiting for the courts to make up their minds, and SCOTUS is waiting for Congress to do something. And none of it is going to happen on its own, which is why the PTO ought to force the issue with some 101 rejections in suitably high-profile applications.

  130. “Correct, in other words, they worship at the alter of the draftsman.”

    And who would that be that draftsman? –> a patent attorney. It is nice to see the worship we deserve.

    Oh, the tears of unfathomable sadness! My-yummy!

  131. FYI — unless this case goes to SCOTUS it is the “law of the land” at the USPTO.

    hahahahahahaha

  132. I’ve posted quite enough in a row, but I simply must note that I’m excited about this case. Finally, after long years of waiting, the actual law gets pitted against the nonsense spread by the Federal Circuit for so long in what appears to be a near perfect vehicle. This case right here may well end the dispute I’ve been having for years on these boards, and so far we have the DC saying I was tots right, and a couple of federal circuit holdout rebels saying I was tots wrong, at least under their new reasoning. And we will hopefully see this beauty go to the USSC for what may be the final 101 battle for many decades.

  133. ” The majority sees the “invention” as rigidly defined by the claims: “ignoring claim limitations in order to abstract a process down to a fundamental truth is legally impermissible,” and accuses the dissent of doing just that. Slip Op. at 23.”

    Correct, in other words, they worship at the alter of the draftsman. The USSC obviously just told them to pick up their sht and stop worshiping the draftsman. Apparently they’re still unwilling to do so. Probably because they’re having a hard time wrapping their minds around where the line was supposed to be drawn for the last 200 years and they know they’ve been letting people get away with murder for at least the last 25.

  134. What is also funny is that Prometheus obviously would turn out to be patent eligible under this nonsensical “standard” or whatever they’re calling it.

  135. No, they will pound them until they cease to exist at all. Their names will be erased from the histories and nobody will ever know they even existed.

  136. Watch for this opinion to get reversed by an en banc panel or vacated by the USSC. Very quickly.

    Indeed, it will follow Prost’s opinion, because that is the law as established by the USSC regardless of whether the majority here feels as if they are free to make up new law that practically nullifies the old law as they go along. However, even Prost’s opinion includes a small snaffu talking about the need for an “inventive concept” which isn’t really required to pass the abstract idea analysis, it is merely one way to pass it. The primary other way is to simply steer clear from preempting on an abstract idea period in the first place.

  137. In any event, given the fundamental disagreement between the majority and dissent, this will be a case to keep a close eye on.

    Those claims are at least as cr-ppy as Bilski’s claims. The Supreme Court will pound them into dust.

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