Judge Richard Linn to take Senior Status

Judge Richard Linn has announced his intention to take “senior status” effective November 1, 2012. Judge Linn has been sitting as a circuit court judge on the Court of Appeals for the Federal Circuit since January 1, 2000. Judge Linn is a longtime patent attorney and began his patent law career as an examiner at the United States Patent & Trademark Office in 1965 – working while also attending Georgetown University Law Center. He holds a degree in electrical engineering from Rensselaer Polytechnic. In recent years, Judge Linn has been instrumental in developing an alliance of intellectual property focused inns of court known as the “Linn Inn Alliance.”

On the bench, Judge Linn has always been skeptical of novel legal theories. It is fair to place him on the “pro-patentee” side of the bench – especially based upon his notion of broad subject matter eligibility and a high bar for inequitable conduct findings. Judge Linn authored almost 300 patent decisions and his voice of reason will certainly be missed.

Judges on senior status continue to hear cases, but typically with a reduced docket. Those judges are also allowed under the law to move outside of the DC area. Of key importance, his senior status will open a seat on the 12-member bench for an additional nominee. The seat created by Chief Judge Michel’s 2010 retirement also remains open. Edward DuMont was originally nominated for the slot by President Obama, but that nomination rescinded after the Senate failed to even schedule a hearing. In November 2011, President Obama nominated Richard Taranto for the slot. The Senate is expected to eventually confirm the Taranto nomination, but that work might be delayed until after the November election.

Judges Newman, Lourie, Bryson, and Dyk are all eligible to take senior status.

158 thoughts on “Judge Richard Linn to take Senior Status

  1. “I think if everyone was fair minded about these debates everyone would agree that all information processing methods should be eligible for patentability,”

    NWPA, all information processing IS eligible for patenting. All the statute and the Court has ever required for processes is,

    1. Concept

    2. Application

    3 Integration.

    And this covers every process, and ALL information processing.

    Diehr never required a machine, computer, or any technology whatsoever.

    Niether did Bilski, or Prometheus!

    So arguments by people like Ned about what is and what is not an eligible computer/machine is non sensical, and irrelevant.

    The ONLY limitations are the judicial exceptions.

    So if it’s not a pure mental process, LOA, or stand alone math equation it sails thru 101.

    That’s not only a fact, It’s the law!

  2. I think if everyone was fair minded about these debates everyone would agree that all information processing methods should be eligible for patentability, but the reality is under current case law it is not clear whether the SCOTUS has excluded some or not (using common law).

    This is an insane situation for the patent world. Just as destructive and counter-productive as the Rep. vs. Dem. battle that is raging in this country. And, our battle looks very much like the Rep. vs. Dem. battle.

  3. BTW, a programmed computer not applied to a useful application is not logical.

    The fact it is a programmed computer makes it useful and eligible.

    You are simply making up fallacious theories that are no more credible or based on actual law than MM’s dissection project or 6, Unlimited Preemption Powers.

  4. Mr. Heller:

    I asked, “What exactly did Rader say in Ultramercial that was not consistent with Diehr?

    You once again evaded the question, which is your right. But if you wish to be honest then please provide an exact quote from Rader in Ultramercial that is NOT consistent with Diehr?

    That for now is the only question.

    Thank you.

  5. Radar took the programmed computer discussion in Alappat completely out of context.  The Alappat rasterizer was claimed as part of a graphics unit for a display.  There was no programmed computer in isolation being claimed .

  6. I am not following the logic you are attmepting to make/use between the holdings of Alappat and State Street.

    (and I am not even going to go into how you don’t appreciate the actual holdings of Alappat, nor the fact that a case can have more than one holding or that a holding is anything in a decision that if the court did not decree thusly, then the decision would have gone the other way, and that thus to defeat the government’s very real alternative argument… well, you should understand the rest)

  7. MM: “The claims in Prometheus were found ineligible, in fact, because “old” and “conventional” steps were found to be insufficient to turn otherwise ineligible subject matter (thinking about a natural correlation) into eligible subject matter.”

    Just repeating this over and over will not make it true. You have no proof. No citation. NOTHING! Fact is Diehr’s claims had “old” and “conventional” and mental steps and the claims were found to be eligible subject matter.” Why? As Prometheus told you the claims were, Integrated.

    See From the Syllabus in Prometheus: “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.” (12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC. describing Diehr. Opinion of the Court) Emphasis added.

    MM: “But it’s not going to happen because I’m not wrong. Repeating the phrase “integration” over and over again does not prove me wrong. Whatever the phrase “integrated” means…”

    No, but performing “Integration Analysis” in view of Prometheus and according to the USPTO Guidelines does prove you wrong! A challenge you run from like a vampire runs from sun light!

    MM: No human being has ever explained how an old step could be sufficiently “integrated” with a subsequent mental step..

    See Diehr! Then read the USPTO Guidelines on Integration steps 1-4! And to complete your education see my example below of how to perform “Integration Analysis” on Ultramercial’s claims in view of Prometheus.

    INTEGRATION ANALYSIS OF ULTRAMERCIALS CLAIMS IN VIEW OF PROMTHEUS

    In Ultramercial the court and the inventors have agreed the concept is:“Using advertising as currency”. Claiming a concept without applying it is considered an abstract idea. Abstract ideas, like a law of nature, or physical phenomena, are not patentable subject matter. Flook like Bilski only claimed math equations and thus claimed abstract ideas. The steps of the process did not “integrate” the concept into the process as a whole. So the question before the CAFC is as follows:

    Is Ultramercial’s claims an abstract idea in view of Prometheus?

    The answer is clearly no.

    The claims in Ultramercial are an inventive application of the concept. We know this is correct because of the way the steps of the process “integrate” the concept into the process as a whole. See Prometheus citing Diehr and Flook:

    “ Diehr and Flook, the cases most directly on point, both ad- dressed processes using mathematical formulas that, like laws of na- ture, are not themselves patentable. In Diehr, the overall process was patent eligible because of the way the additional steps of the pro- cess integrated the equation into the process as a whole. 187. These additional steps transformed the process into an inventive application of the formula.” (Syllabus Prometheus V Mayo 566 U. S. ____ (2012) )

    If Ultramercial’s claims were a mere application of a concept without integration they could read as follows:

    a method for using advertising as currency.

    1. offering a service

    2. accepting advertising as payment

    And if the specification to the above claims offered no further definition of the terms then the CAFC could rightfully rule Ultramercial’s claims to be an abstract idea based on the “integration analysis” used in Prometheus and referenced to Diehr. The claims would in effect be no more than simply stating the concept and saying apply it.

    See Prometheus as Authority

    (Still, as the Court has also made clear, to transform an un-patentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.” See, e.g., Benson, supra, at 71–72.) (( Opinion of the Court 3, Prometheus V Mayo 566 U. S. ____ (2012) )

    Ultramercial’s claims integrate the concept with 11 steps that when viewed as a whole and as an ordered combination offer more than the parts do separately. See Prometheus explaining why the claims as a whole are not fully integrated: “Finally, considering the three steps as an ordered combination adds nothing to the laws of nature that is not already present when the steps are considered separately.” ( Opinion of the Court 11, Prometheus V Mayo 566 U. S. ____ (2012) )

    Ultramercial’s steps can’t be completed in the mind and are not mental processes.

    Nor can they be completed with mere verbal instruction or with pencil and paper. The concept of the claim is still free to use in all fields and technological environments. Therefore the invention does not violate the pre-emption analysis from Benson. That the claims may be beneficial to conducting business on the internet is not a judicially created exception to statutory subject matter. Also that the claims do not provide detailed workings of conventional transformations, apparatus, and machines are also no barrier to statutory subject matter. Therefore the CAFC and The USSC must hold Ultramercials claims as statutory subject matter because the steps of the process “integrate” the concept into the process as a whole and thus transform the claims into an inventive application of the concept.

  8. Anon: ” While not technically “lieing,” ”

    101 Integration Expert: Yes it is technically lying because of the simple fact that I have answered MM’s question by performing “Integration Analysis” on Ultramercial’s claims.

    MM can’t refute my answer ( Integration Analysis).

    MM cant dispute the law ( Diehr/Prometheus), that my answer ( Integration Analysis), is based on.

    MM can’t or won’t perform “Integration Analysis” because it not only is an answer to his straw man hijack attempts, Integration Analysis completely annihilates his dissection project.

    And just so everyone on this blog knows I have answered substantively and in detail I am reposting my exact Integration analysis of Ultramercial’s Claims again.

    And ANYONE, including MM, Ned, 6, or Dennis for that matter that can discredit, or simply dispute my analysis with the law is invited and welcome to try!

    INTEGRATION ANALYSIS OF ULTRAMERCIALS CLAIMS IN VIEW OF PROMTHEUS

    In Ultramercial the court and the inventors have agreed the concept is:“Using advertising as currency”. Claiming a concept without applying it is considered an abstract idea. Abstract ideas, like a law of nature, or physical phenomena, are not patentable subject matter. Flook like Bilski only claimed math equations and thus claimed abstract ideas. The steps of the process did not “integrate” the concept into the process as a whole. So the question before the CAFC is as follows:

    Is Ultramercial’s claims an abstract idea in view of Prometheus?

    The answer is clearly no.

    The claims in Ultramercial are an inventive application of the concept. We know this is correct because of the way the steps of the process “integrate” the concept into the process as a whole. See Prometheus citing Diehr and Flook:

    “ Diehr and Flook, the cases most directly on point, both ad- dressed processes using mathematical formulas that, like laws of na- ture, are not themselves patentable. In Diehr, the overall process was patent eligible because of the way the additional steps of the pro- cess integrated the equation into the process as a whole. 187. These additional steps transformed the process into an inventive application of the formula.” (Syllabus Prometheus V Mayo 566 U. S. ____ (2012) )

    If Ultramercial’s claims were a mere application of a concept without integration they could read as follows:

    a method for using advertising as currency.


    1. offering a service

    
2. accepting advertising as payment

    And if the specification to the above claims offered no further definition of the terms then the CAFC could rightfully rule Ultramercial’s claims to be an abstract idea based on the “integration analysis” used in Prometheus and referenced to Diehr. The claims would in effect be no more than simply stating the concept and saying apply it.

    See Prometheus as Authority

    (Still, as the Court has also made clear, to transform an un-patentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.” See, e.g., Benson, supra, at 71–72.) (( Opinion of the Court 3, Prometheus V Mayo 566 U. S. ____ (2012) )

    Ultramercial’s claims integrate the concept with 11 steps that when viewed as a whole and as an ordered combination offer more than the parts do separately. See Prometheus explaining why the claims as a whole are not fully integrated: “Finally, considering the three steps as an ordered combination adds nothing to the laws of nature that is not already present when the steps are considered separately.” ( Opinion of the Court 11, Prometheus V Mayo 566 U. S. ____ (2012) )

    Ultramercial’s steps can’t be completed in the mind and are not mental processes.

    Nor can they be completed with mere verbal instruction or with pencil and paper. The concept of the claim is still free to use in all fields and technological environments. Therefore the invention does not violate the pre-emption analysis from Benson. That the claims may be beneficial to conducting business on the internet is not a judicially created exception to statutory subject matter. Also that the claims do not provide detailed workings of conventional transformations, apparatus, and machines are also no barrier to statutory subject matter. Therefore the CAFC and The USSC must hold Ultramercials claims as statutory subject matter because the steps of the process “integrate” the concept into the process as a whole and thus transform the claims into an inventive application of the concept.

  9. He mischaraterized the holding in Alappat. 
     
    Here is the holding from Rich himself in State Street Bank
     
    "Unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not "useful." From a practical standpoint, this means that to be patentable an algorithm must be applied in a "useful" way. In Alappat, we held that data, transformed by a machine through a series of mathematical calculations to produce a smooth waveform display on a rasterizer monitor, constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it produced "a useful, concrete and tangible result" — the smooth waveform."
     
    They did not hold in Alappat that a programmed computer not applied to a useful application was eligible.  To the contrary.

  10. Mr. Heller,

    But are they consistent with the holding of Diehr?

    That is the question.

    If you don’t want to face defeat simply don’t answer anymore, as you normally do.

    But please don’t post with a non sequitur.

    Thank you.

  11. Ned:

    How is what you quoted above beyond the boundaries of the statute, or Diehr’s controlling case law?

    And please don’t cite Benson because the Court has already said Benson stands for no more than Diehr.

  12. Thanks for putting this down Anon. That is about the way I feel in a discussion with Ned. He must be a paid shill.

    Although, I have to admit all his bizarre arguments have made me think and understand my own positions better.

  13. Anon, you want legal authority for the proposition that programming a general purpose digital computer is not patentable per se? Why don’t you read Benson?

    This is precisely the type of crrp response that needs to be expunged.

    1) This is not what Benson states – there is no legal authority for this argument.

    2) This has been explained repeatedly.

    3) Everytime this is explained and the upcoming quote presented, and Ned is asked to square this with your “legal theory”, Ned vanishes or changes the subject, only to circle back around to the same statement again later.

    Much like Ned vanished from multiple threads

    link to patentlyo.com

    and

    link to patentlyo.com

    When tasked with providing some legal support: “Let’s see you provide the proper legal citation for his anti-software patent stances on the positions you are advocating directly and without evasion or sophistry (in other words, don’t ask questions or try to change the subject, just provide the proper legal citations):

    1) The so called configured machine is not a new machine at all (the anti-Alappat position)

    2) must have software that automatically executed (the automatic execution position)

    3) when needed… except on a temporary basis (the non-temporary position)

    And this after Ned accused others of engaging in sophistry and evasion. And proper does not mean how Ned has treated Benson here, twisting it to be something it is expressly not.

    And people wonder why bother chasing Ned, and get upset with responses challenging Ned. Why don’t these same people get upset with the originating perpetrator of fallacy? That’s the better question.

    4) the quote from Benson (you’ve seen this before, because I have presented it before):

    It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.

    And yet, Ned would bastardize the Benson decision to be a programming is not patentable per se authority – in direct contradiction to its very words. This is lieing at the professional level.

    Apologies to Leopold, but I think honest and straight forward actual answers to these points is the best way to make some progress in this discussion.

  14. This is all spot on. And, the claim to a functional componenet defines the struucture for the hardware/software. What Rader wrote is reality Ned. Your bizzarro world of Benson has no place in the modern world.

  15. Can you cite in Ultramercial where Rader cited anything that was not the majority holding in Alappar as authority for the holding in Ultramercial?
     
    "As computer scientists understand:
    the inventor can describe the invention in terms of a dedicated circuit or a process that emulates that circuit. Indeed, the line of demarcation between a dedicated circuit and a computer algorithm accomplishing the identical task is frequently blurred and is becoming increasingly so as the technology develops. In this field, a software process is often interchangeable with a hardware circuit.
    Id. at 1583 (J. Rader, concurring). In other words, a programmed computer contains circuitry unique to that computer. That "new machine" could be claimed in terms of a complex array of hardware circuits, or more efficiently, in terms of the programming that facilitates a unique function. The digital computer may be considered by some the greatest invention of the twentieth century, and both this court and the Patent Office have long acknowledged that "improvements thereof" through interchangeable software or hardware enhancements deserve patent protection. Far from abstract, advances in computer technology—both hardware and software—drive innovation in every area of scientific and technical endeavor."

  16. Night, simply, you believe a program is physical, and when it operates, it transforms data.  That require energy, the energy to operate the computer at least.  But it also takes time and it changes the entropy state of the information.  link to en.wikipedia.org
     
    If every program operating on a computer were eligible, then it would be irrelevant what the program actually did.  Right?
     
    Thus, every Business Method implemented using software would be eligible.
     
    Regarding the hinge, if the hinge is old and its structure is relatively well-known , it makes little difference that the claim uses the generic term hinge because hinge is not the invention.  If in contrast, the hinge is the invention, I can't simply claim "A hinge," and then define the term "hinge" in the specification by what it does.  This exact point was addressed by the Supreme Court in the famous case of Westinghouse v.  Boyden Power Brake Company.  One can't claim the point of novelty functionally.  The lesson of that case, and Morse, is that one can claim only the disclosed embodiments and equivalents.  If one does not in fact disclose any embodiments, but only states function, the claim is way overbroad as it claims a result.

    Now I would grant you that with the functional diagram in front of you, you might be able to build a hinge.  But you can't build all hinges; and the Supreme Court seems to be clear that you actually have to build one, describe how to build it, and that is what you can claim and equivalents.

    Regarding a program, I think that one has to disclose is an algorithm.  One of ordinary skill in the art can easily build any program given an algorithm.  I will grant you that.  So the real issue is not enablement when one discloses an algorithm.  The issue with programs is not enablement of the program, but what the program does.  If the program only calculates a number, then even though you can build the program, the claimed subject matter is still in eligible because numbers themselves are abstract.
     

     

  17. Mr. Heller:

    Your indictment of Judge Rader for pushing the envelope on patentable subject matter.”, does not hold up under scrutiny.

    Let’s analyze what remains of your evidence.

    Mr. Heller: 1. “I think Rader somewhat mischaracterize Alappat In Ultramercial when, instead of citing the majority opinion to support what he was saying in that case, he cited his concurring opinion.”

    Can you cite in Ultramercial where Rader cited anything that was not the majority holding in Alappar as authority for the holding in Ultramercial?

    As Rader would say, “I need that exact quote!”

    Mr. Heller: 2. “In other aspects, I don’t recall if it was in Ultramercial, but he cited the portions of Bilski to which Scalia had not joined without stating that fact. ”

    This irrelevant since you can’t even cite the case in which Judge Rader is supposedly doing something wrong.

    Mr. Heller: 3. All in all, I think Rader is of the view that a programmed computer is patentable subject matter without any requirement that the program do anything within the useful arts.

    This is wrong. A programed computer is a machine and qualifies as statutory subject matter at least under the machine category, therefore a program computer is automatically part of the useful arts.

    4. Simply reciting a programmed computer is enough.

    Whether a claim has a programmed computer or not is of no relevance to 101. There is no machine requirement, see (Bilski V Kappos). And there is technology requirement. See (Lundgren BPAI.) For you, or anyone to so hold would in fact be a narrowing of case law. And that’s a fact!

    Mr. Heller, everything you have presented is supposition and pure hearsay. And Judge Rader has done no more than maintain the broad categories of patent eligibility set by statute and followed by the Court.

    If you are an advocate ( or shill ) for the narrowing of current case law why not just come out and say so?

  18. Of course, also in the English court, commercial success can be an indicium of non-obviousness. A recent case is the ANYWAYUPCUP toddler training cup case, of Haberman v. Jackal. But everybody knows that it’s very rare for commercial success to decide obviousness in England.

    Me, I like the EPO abhorrence of ex post facto events, that took place long after the filing date, as an indicium of the obviousness of something that happened much earlier, namely on the filing date of the claim (attention: NOT the date of conception of the claimed invention). It cracks me up, how people deride the EPO’s Problem and Solution Approach as hindsight-tainted. EPO-PSA is in fact the ONLY way of deciding obviousness that ISN’T hindsight-tainted.

  19. Be wary of letting commercial success be the dog instead of the tail.

    How does one account for other factors of commercial success? Factors that are just as real as the innovation, that may or may not be intertwined with the innovation?

    Take marketing as an example. The psychology involved in moving markets and market tastes in order to prepare the mass market and create a desire can eeasily overwhelm the product itself. A case study in Beanie babies for example would show that the planned scarcity directly impacted market desirability.

    For another classic example, the battle between beta and vhs was won not on technology – yet this metric would infuse non-innovation aspects into the worth of innovation.

    Lastly, innovation itself is not something that happens linearly. Organic innovation hops about and one cannot tell a priori where its inspiration will come from. Too many people do not understand this and point to “absurd patents” as some form of “evil” without realizing that innovation does not only come from the non-absurd. The roots of the anti-absurd and the flash of genius come from the same seed, but that seed is anathema to actual innovation.

  20. Max.  Interesting comment regarding whether patents are rewarded for commercial success.  While commercial success is not a direct element of patentability, we do consider that factor as an indicia of noboviousness.  In addition, commercial success is perhaps most important when calculating damages because it allows for a calculation of lost-profits due to the infringement.   

     

  21. Sort of like a common sense gut feeling then Dennis, that the scope of protection should be directly proportional to the magnitude of the contribution that the claimed subject matter makes to the progress of useful arts? I do detect a lot of that attitude in Europe, more particularly in Germany, even more particularly at the EPO.

    Sometimes though, it is hard to tell how much (if any) of the commercial success is down to that which is claimed. Patents are not rewards for commercial success I hope.

  22. Ned, you have introduced a new magic word “real.” YOu also flip flog on me. You tell DC that I have these views on entropy that I have never said and then when I call you out and explain my views you say that you agree with me. That is your constant game. I do not understand why you want to play games.

    Morse is about claiming broader than what the sCOTUS felt he had invented. And, as I said below the SCOTUS did not offer another way. You might want to ask yourself whether if his claim had been granted if any invention over the next 20 years would infringe that would not have infringed the narrower claims.

    You know, and please think about this, consider the difference between a claim to a hinge as part of door and Morse’s claim. The hinge claim is really functional saying all things that do hinge that we know about. The problem with Morse’s claim is that SCOTUS said there may be other ways to do it that we want to encourage. Please do not skip this point.

    But, the information claims to function do define structure. They are different. I am one skilled in the art of computer science. I could list all the embodiments a functional claim could be implemented. It would take me a long time. But, I could do it. That is the key point. Does a functional claim in software define structure? Yes is the answer to a point. And, one of the problems is that “to a point” is a long point.

    What is “real?”

    A method to convert BCD to decimal is not ok because it is not real? Go to first principles: enabled: check, definite and distinct: check, useful: check, so where does this lose out? You want to say it is not real, but transforming information is a real transformation.

    And, note that the BCD to decimal is not like Morse. It is giving structure in how to perform the transformation. The fact is that Benson is a law of nature explanation that we don’t want to give to people and keep available.

    (By the way, I am not anon as suggested by AI below. I have no other names on here.)

    Ned, in the spirit of the new Patentlyo how about really thinging about these points. And, also, realize that even the “primciple” claim in Morse is nothing more than an abstraction created in brains. So, one can reduce all of this too did you claim too much and is it something we want to keep for everyone. How on earth can BCD to decimal fit either cateogry?

  23. Thanks for proving my point Leopold.

    Even your succinct post in response was made after you said that you were done because of someone else’s post. That you posted in sarcasm was neither lost, nor was material. Had you not posted, readers likely would have thought you agreed with me completely.

    After apologizing you could not resist responding with snark, and doing so, confirming my position. Personally, I doubt that this was what you intended, but it is what is.

  24. I agree Dennis. I will no longer allow myself to be baited by MM and will simply ignore that commenters remarks from now on.

    Thanks

  25. “Why don’t you read Benson?”

    If that is what Benson holds then where did Benson get it’s authority?

  26. I considered simply acquiescing by way of silence, but I’ll save you some time. You must be right; your approach is obviously working. Carry on.

  27. Excuse me Mr. Heller, but we are discussing 101 patent eligible subject matter, are we not? Whether the process or machine is obvious has no relevance. With that being said I do believe you have not answered my question.

    A new process for sucking up prairie dogs with an old machine is 101 patent eligible subject matter.

    And a larger machine used for the same process is also 101 patent eligible subject matter.

    Do deny or wish to contest the above?

  28. MM: “Most importantly, I observed that in spite of the fact that you refer to yourself as an “integration” expert, you are unable to unwilling to explain to us how a step that is old in the art can be sufficiently “integrated” with a novel mental step such that the claim is eligible for patenting.”

    101 Integration Expert: Oh but I have 20 or 30 times. And unlike you I am telling the truth and my posts can be googled to verify that truth.

    By blatantly lying and then asking Dennis if lying is permitted, you make a mockery of Dennis Couch’s effort to bring some decorum, integrity and accountability on the issues of law back to the blog. IMHO, you should be banned for such behavior just as you have been at other patent blogs.

    MM: Instead, you alleged that the claims at issue in Diehr comprised a mental step.

    I made no such allegation. Diehr’s claims as a whole comprise a process for curing rubber. PERIOD. That one or more steps are old, require a mental process, or the use of a digital computer is of no relevance in determining whether the subject matter of the claim as a whole falls within the § 101 categories of possibly patentable subject matter. See Diehr [Footnote 12]

    Furthermore you have never even tried to reconcile your various dissection theories with Diehr’s Integration Analysis. That Prometheus explicitly relied on Diehr’s integration, and the USPTO has issued Guidelines for Integration Analysis, while ignoring your various dissection projects, only highlights how miserably you have failed.

  29. Leopold,

    I know that you disagree with my view (as you disagreed previously).

    No matter how much I allow for you to have your opinion, such allowance does not effect what you think it will affect (in other words, you are wrong about response behavior and what people do and take away from this board – there are unfortunately far too many people who think, “well I read it, and no one disagreed, so it must be true.”

    Your notion of “Just move long” is faulty.

    Another result of that type of thinking is a blog with people wanting to only monologue and who look at other’s views as something to be monologued over, shouting past each other, endlessly trying to have the last say – of the same thing.

    There is a world of difference between a series of monologues (which is where your advice leads), and a dialogue. In order to have a dialogue, there must be some impetus for each side to be held to some degree of responsiveness and honest accountability. In order to have a dialogue you must actually engage the other side. The other side must at least understand what you are saying and should (if that other side is truly interested in a dialogue as well) honestly surrender to points of law and fact that are made – even if those points do not fit into the agenda of the other side. Ignoring this does not – and cannot – help create a forum for dialogues.

    Point is, those pushing for accountability – and make no mistake that is what is at stake – want engagement rather than rhetoric, want valid points recognized, not ignored. There is plenty of room for opinion, but that does not mean that fact and law can be or should be ignored. The highly selective rememberings and selections of law, doctrine, policy or just plain huey, as the case may be, will not stop without someone celling out BS. They may not stop with someone calling out BS, but at least the record does not show a silence that can be that will be taken as affirmation.

  30. Mr. 101, changing the size of machine to fit the application seems obvious.  In fact, the Federal Circuit had a case on this point just the last couple of days: the holding the court was that the changing of a result effective variable was per se obvious such that one cannot claim a particular value in or near a range of less one that show unexpected results.

    Here is a link to the case link to cafc.uscourts.gov

  31. Night, I just responded to you about Morse.  Indeed it is about the scope of the claim and claiming principles at a very high level of abstractness such that the claim literally covers all practical implementations.  It was an actual debate in that case whether Morse had invented subject matter of that breath and whether he should have his claim.  The majority said no.

    So the real question is, is the claim limited to a practical application?  I would suggest to you that if the output of a claim is a number that can be used in a practical application but is not actually required to be used in a practical application then the claim violates the principles laid down by the Supreme Court in O'Reilly v.  Morse.

  32. Night, let me just say that you and I agree on the physics.  I also agree with you that math itself is not a law of nature.  Laws of nature can be expressed mathematically, but that does not mean that all mathematical algorithms express laws of nature.  Thus, it simply is not true that all math should be considered to be, like laws of nature, the common resources mankind.

    Regarding abstractness, I have previously quoted Curtis's understanding of the Supreme Court's holding in Morse.  He believed that what the Supreme Court was saying is that one claiming an invention at such a high level of abstractness such that the principles are claimed rather than any particular apparatus or methods was not statutory because Congress required a specification, and require that specification to describe specific embodiments.  Further, it was well understood at that time the patent laws would only find infringement with respect to those embodiments and equivalents.  A claim that was not limited to the described embodiments and equivalents, but rather covered every conceivable practical application, was not enabled with respect to those applications.  To allow claims that broad would not fulfill the statutory purposes and the constitutional purposes of promoting progress in the useful arts.  Rather they would do the opposite.

    So rather than debate what the term abstract means out of context, we should begin to try to better understand what the Supreme Court had a mind in O'Reilly v.  Morse.

  33. Thank you Mr. Heller:

    I do understand your example but I am having a hard time seeing it’s practical application.

    For instance, if I invent a process to use a vacuum cleaner to suck up prairie dogs I can get a process patent on the new use of an old machine.

    Then if I repackage the machine, say make it’s parts bigger, so that it’s essentially a big vacuum cleaner that fits on the back of a pick up truck , and sell that machine as a prairie dog sucking machine, can I still get a patent on the machine itself, so making and selling that machine is infringement of my machine patent ?

  34. Anon, you want legal authority for the proposition that programming a general purpose digital computer is not patentable per se?  Why don't you read Benson?

  35. Mr. 101, I think Rader somewhat mischaracterize Alappat In Ultramercial when, instead of citing the majority opinion to support what he was saying in that case, he cited his concurring opinion.

    In other aspects, I don't recall if it was in Ultramercial, but he cited the portions of Bilski to which Scalia had not joined without stating that fact.  

    All in all, I think Rader is of the view that a programmed computer is patentable subject matter without any requirement that the program do anything within the useful arts.  Simply reciting a programmed computer is enough.  That was Rich's position in Benson.  Clearly, this is an extension beyond current case law even if it ultimately is proved to be correct.

  36. 101 (and anon, assuming that you two are actually two separate persons – who can say, anymore?),
    My use of “shut up” was a poor way to express my point – I apologize to both of you.

    If anon or anyone else has to make 21 posts to Ned for example, asking for a response to some substantive point in a debate, it may very well indeed become annoying.

    But this is precisely my point: No one “has to” make 21 posts asking Ned to respond to a substantive point. If Ned is nonresponsive, move on. If Ned is evading, move on. If Ned, is purposely engaging in fallacious arguments, move on. No one has appointed either you or anon to be the arbiters of “truth and integrity” here. I appreciate the urge and I’m sure it’s well-intentioned, but since we’re likely to be unable to agree even on what “truth and integrity” are, your attempts to force a bunch of anonymous correspondents to live up to your standards are futile, and actually get in the way.

    That’s my last non-substantive post on this non-topic.

  37. Thanks MaxD.   As you know, we also have a big split here in the US over the proper scope of intellectual property rights.  The Apple v. Samsung (US) decision is largely supported by folks here. I think that there is a public notion that the iPad/iPhone so revolutionized the marketplace that the company should receive some protection against competitors.  The atmosphere would have been quite different if, instead, an injunction was issued to stop sales of the iPhone/iPad. 

  38. Thank you 101.

    I would think (hope) that your points would be obvious, but the focus does seem otherwise. In all fairness, that is their right (or choice, as “right” might be too strong a word in this context) to post that belief.

  39. I see a distinction between strong patents and a strong patent system. Important for me is that the patent system, as such, is strong against the burgeoning numbers of impressionable young voters (at least in Europe) who would vote to weaken it or get rid of it. I’m sorry, but to preserve the strength of the system against such attack, the pruning of weak and undeserving patents, by those running the patent system we have got now, has to be pitiless.

    Talking of parental governance and this blog, I’m optimistic that Dennis has recently resolved to exert more control. Good man Dennis. Hope you haven’t left it too late though.

  40. I actually play a game when I read a Lemley paper: spot the false premise and how he tries to slip it in. When you read someone else’s writing you understand them.

  41. And while I am on a posting binge, you may want to consider a lesser measure of at least identifying those that are paid to post on this board.

    Certainly, we should be able to ask those whether or not they are paid to post on this board. MM has never squarely answered that question.

    And, with Lemley, it is not just this one time, he repeatedly plays the same game of slipping in false premises without cites and then draws conclusions. His paper cited by the SCOTUS does the same thing. Lemley is a scarey person as he is so good at hood winking people to get his agenda. He does not play fair.

    And why that is so bad is that we end up with these false premises with our castles built on them. They do not stand the test of time. We end up with nothing but nasty deceitful people trying to get with they want. And, in my opinion, that is what Lemley is wrapped up in a shinny tubby package.

  42. And, DC, don’t be naive. Both J. Moore and Lemley both know very well that a key way to bring down information processing patents is whether or not a functional claim conveys structure.

    They both are keenly aware of this. That is why Lemley is the scarist person to ever come near patents. He is smart and knows how to hood wink the average thinker.

    We need to start a keep the Lemless out of the Fed. Cir. club.

  43. And, there is a job advertisement for a patent attorney for MatLab. So, all these thousands of people that make math software are doing nothing but an abstraction. People buy an abstraction.

    Ned: It is information processing. Just like your brain.

  44. As to this 101 stuff:

    Guys, I have a machine that is performing a useful function say detecting breat cancer. You come along and say that it is not patentable. Laws of nature! Abstract! That machine has captured a law of nature and is abstract.

    Here is a method to convert from BCD to decimal. I am building such a machine and I need a method to convert from BCD to decimal to build my machine. But, you say that this method to convert from BCD to decimal is abstract and captures a law of nature.

    These information processing methods are just like the method in Deener. They are ways of getting things done. They are performed on real machines that actually are built and work. Those real machines take space use energy and need time to perfrom the method.

    Benson is and was a joke in reasoning. What did Benson preempt? What law of nature was claimed in Benson? Why was Benson too broad? Please do not start using this word abstract. Factually, what did Benson premept? Why was it too broad? A claim that is too broad cannot even be determined until after the fact to see if someone can invent something that wasn’t enabled but is read on by the claim. Think of Morse, you can’t claim all ways of converting…but, at the time they knew of no other way. It was speculation.

    I hope at some time in your life the abstract, law of nature crowd will pick up some modern books on physics and cognitive science and grow as people.

    Try to get the bigger picture. The invention should tell the court how to think about it. The court should not try to cabin new inventions in old thinking. The court needs to innovate with the innovation. And, just to be clear. Information processing is the most powerful invention ever devised by people. The information processing methods can now beat the best chess champion and best Jeopardy champion. It may be some decades, but the information processing algorithms will one day write better briefs than the best attornys. (using those laws of nature and abstract things.)

    Real machines. Real applications. BCD to decimal–without these methods, information processing itself would not be possible.

    A thought experiment: how could one claim the BCD to decimal method that takes time, energy, and space? It is just not possible to claim to come under 101? How could that be a correct result?

    (By the way, Ned, IBM at the time did not want patents to any type of software as they sold hardware and saw it as a threat to their business. It was pure self interest. )

    And, Ned, I build a machine that converts BCD to decimal. I could build a physical machine to do this that was not electrical. Is that not eliglbe for patentability for the same reasons?

    One other odd thing about this is that the abstract law of nature crowd is always telling us what can and can’t be patented as if these things have no use. And, yet, they are bought and sold in our economy.

  45. Judge Newman is wonderful. Please Mr. President give us another judge that has actually drafted patent applications, worked with inventors, worked with companies to protect thier inventions, and done some litigation.

    At least 10 years of doing these things. No more J. Moore’s, please. (I know that wasn’t Obama, but the Bush –Mr. burn baby, burn.)

  46. Ned:”How can it be abstract when the method itself is an implementation where there many other ways of converting.”
    Abstractness relates to the output, a number. Since it is not used for anything practical, it is legally drawn to principle in the abstract per Morse.

    Abstractness relates to output? Morse was enablement. You aren’t entitled to more than you claimed. Just like the recent range case.

    What does abstract mean in your statement above? Don’t you get that what J. Newman was saying is that abstract is good in engineering. That is how to get work done. That as long as you know how to walk up and down the abstraction ladder there is enablement.

    You are using abstract in many different ways. Look, a method to convert BCD to decimal is something that can be used in a computer. It may even be necessary if you are going to represent number in BCD. So, to implement a computer that represents numbers in BCD you need to be able to convert them from BCD to decimal. And keep in your mind we are building a computer to say detect cancer in breasts. Now we need that BCD to decimal converter to build our hardware there in the room that says yes you have cancer or no you don’t have cancer.
    But, somehow that is abstract? How, Ned? What do you mean by abstract? Maybe you should stop using that word and say thing like abstract (Bilski use).

    (from my other post: note that in Deener a person’s body could perform the method of processing grain and yet the SCOTUS did not say it is ineligle because it would preempt a person from performing the method in Deener. There is a direct analogy to the mental step nonsense.)

    Oh well, I don’t have time for this. I should write an article about this when I have more time.

    By the way, if you read some old journal articles about the time of Benson you will some very good analysis of these issues.

    And one of those articles by (I can’t remember but it was an asian name) was about structure conveyed by functional claims of software. It was a great article that said basically that Benson was horrible and one reason it was horrible is that rather than trying to understand information processing it tried to tie it to anicent modes of thought.

    As to structure, it said if information processing was respected and understood by the court, then functional claiming does convey structure and one would measure the enable by how well the methods were implemented. So, for example, you could claim a mehtod of soring to your enablement. If you could do it n*logn, then that’s what you got. If another person beat that then your claim would be invalid as claiming mroe than it had enabled.

    In other words, the range case.

  47. Ned and DC:

    These are not my opinions about information but how physicist think about information.

    It takes time, energy, and space to transform represented information. Please try to contest that statement.

    Ned, you keep saying “real” and “abstract”, but you use apparently court invented definitions of these terms and then try to use those court inventions to explain the physical world. Information is real. It is a real property of the universe. Changing it requires energy. There is even a law of conservation of information.

    As to abstract, you continue to try to use the term as used by the court. Engineers use the term as explained by J. Newman in her Bilski dissent of the en banc opinion. J. Newman is without question right. Please, if you contest that view, ask any professor of engineering whether she is right. Please let me know if you contest this. I was told by engineering professors to find the right level of abstraction to work on a problem and know how to walk up and down the abstraction ladder–that is how you get your work done.

    Benson not only tried to say abstract but that math is a law of nature. That is thinking of about 1920′s. Math is a product of our mind (our information processor.) Sometimes our information processor represent with math how nature works. A method to transform BCD to binary (and one of the claims was to a how to build the circuit to do so) is not a law of nature as claimed by Benson. Benson had to use this one to get rid of the hardware implementation of the method.

    The court definition of abstract is it is too broad. In that SCOTUS case (oh the one in the 1950′s about lab equipment) the SCOTUS says this explicitly. That they don’t want to grant a patent for the method of performing the calculations because they want to encourage more hardware. That is exactly how they thought about it. This thinking is out of date. The hardware is no longer the only story. The information processing methods independently need to be encouraged.

    The other way the SCOTUS has thought about this issue is with Morese where they have conflated 112 with 101. Morse was a matter of not being entitled to more than the scope that you have enabled. What the court should have done was not invalidate the claim in Morse until someone came up with another embodiment that wasn’t enabled in Morse. (the recent fed. cir. case on ranges is squarely on point.)

    Lemley is smart. He understands that how software is claimed is functional and if you can say that a functional claim has no structure, then you can invalidate software claims. But, this is just factually wrong. A functional claim to software does convey structure to one skilled in the art. Why I do not like Lemley is that he very smart and he knows how to slip these through the cracks of the average mind.

    Ned, a functional claims to a module to one skilled in the art conveys many possible implementations that all come down to a piece of hardware performing the function, but we know how to do it millions of different ways.

    Ned: The terms: abstract, law of nature, are not in your language “real.” They are an abstraction that is represented in your brain.

    You don’t seem to get that your brain is nothing more than an information processor.

    You keep wanting to try to tie things to some physical object as if a tie is necessary. The big leap is to say what is this technology and not how does this technology relate to what I knew before.

    In Deener the SCOTUS seems to understand much of this. They seemed to realize the important part of Deener was not the machines that carried out the method, but the method itself. That it wasn’t important what type of grain was used just any grain. Represented information is the grain in Deener.

    Information processing is the invention.

  48. Dennis Crouch said : The court has given us statements on both sides (or rather several sides) of the argument that cannot be fit together to form a coherent doctrine.

    While there may be conflicting views at the lower courts, especially the DC, the unifying message from the Supreme Court has been, and remains, that Diehr’s Concept, Application, and Integration Analysis is the controlling precedent on patentable subject matter doctrine.

    Using the USPTO Guidelines on “Integration” one can easily reconcile all the Courts prior 101 cases into one consistent doctrine of “Integration Analysis. For example”

    link to uspto.gov

    For example:

    Prometheus = Not Integrated

    The additional steps of the process did not “integrate” the LOA into the process as a whole. Because after Integration Analysis the claim was to the LOA itself.

    Bliski = Not Integrated

    The additional steps of the process did not “integrate” the math formulae for hedging into the process as a whole. Because after Integration Analysis the claim was to math itself, both in the form of a word problem and a math equation.

    Diehr = Integrated:

    The overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. These additional steps transformed the process into an inventive application of the formula.” ( See Prometheus)

    Flook = Not Integrated

    The overall process was not integrated because even with the addition of a computer the claims covered the math equation itself. Therefore the additional steps did not transform the process into an inventive application of the math, in that case.

    Benson = Not Integrated *

    With a caveat. Benson has been cabined by Diehr, ( Integration Analysis) and stands for no more than the principles in the Diehr case. See Bilski Pp, 14 saying as much, and see Prometheus referring to Diehr as the case most on point.

    Most important, as I have pointed out many times on this blog, “Integration” is the antithesis of dissection ( strip away and ignore). You cannot have an end result that is both integrated and dissected at the same time. Integration is inherently part of the analysis of patent claims. From Prometheus, to Bilski, to Diehr, this is a fact that can’t be cannot be disputed.

  49. >>2. But, when you speak of a programmed GP digital >>computer, you introduce ambiguities

    You may think so, but a person skilled in the art does not and that is the test.

    I am one skilled in the art.

  50. MM: There was no refusal. It’s already been pointed out to you that there was no refusal at least a half dozen times.

    101 Integration Expert: ignoring the challenge is the same as a refusal. I have repeatedly challenged you across numerous threads to analyze Ultramercial’s claim using the USPTO Official Guidelines on Integration Analysis, and you have either flat out ignored the challenge or refused it directly. That’s a fact!

    MM: Prior to that, I addressed the concept of “integration” directly, maybe twenty or thirty times, in response to your comments.

    101 Integration Expert: twenty or thirty times? lol Isn’t that like 6 claiming he was performing Integration Analysis on this blog for 6 years and when someone checked the archives, it was discovered he NEVER discussed it before? The fact is you have run from “Integration Analysis” like you ran from NAL and the PMD. When I finally cornered you on this issue here is exactly what you wrote :

    MM said : “”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.”

    I then replied:

    “MM, first to remember is that it’s Diehr’s concept and application analysis that is controlling precedent, with Prometheus’s “integration” as the key to as the Court said: : transform the process into an inventive “application”. Next what you must learn is that “Integration” is the antithesis of dissection. You cannot have an end result that is both integrated and dissected at the same time. Integration is inherently part of the analysis of patent claims. This was implicitly brought to light in Diehr, when the Supreme Court expressly ruled against dissecting claims, and mandated it’s claims as a whole approach. See ( Diamond v. Diehr ). In Prometheus, integration was made explicit with the Court using “integration” as the key in it’s analysis that relied on Diehr. See Prometheus referencing Diehr: ” In Diehr, the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. These additional steps transformed the process into an inventive application of the formula.” Now the problem with Flook and Bilski is that they are nothing more than an algorithm( Flook ) and a math equation ( Bilski ). And although math equations are technically a new and useful process, and would normally be statutory subject matter according to the definition in 35 U.S.C. 100(b), the Supreme Court has ruled that math is to be treated as an abstract concept and therefore a judicial exception to statutory subject matter. :The difference in Prometheus from the above is that Prometheus was a Law of Nature, instead of a mathematical algorithm, which the Court has ruled is to be treated as an abstract idea. And while a Law of Nature and a Mathematic Algorithm fall in the process category under 35 U.S.C. 101, a Law of Nature and a Mathematical Algorithm by themselves have been held by the Court to be judicial exceptions to statutory subject mater. Now that you have the basics we can move on to a more advanced discussion. That is if you are not having a mental breakdown by now, and typing every junior high school insult you can think of.”

    Of course a a brief search of this blog will show you never moved to have a more advanced discussion on “Integration Analysis and instead proceeded to call me suckie and made crude remarks about child molestation.

    And those are cold hard FACTS!

  51. You have not addressed my post

    I certainly addressed the first point. Care to respond? We can get to the others in turn.

    Not very adult of you

    Dennis, how’s this working for you?

  52. In response to Dennis, I wrote: “[The Supreme Court decisions on eligible subject matter] can’t be fit together to form a single coherent doctrine because even at the most fundamental level there are two completely different kinds of claims that are permitted: composition and method claims.

    In response, anon writes:

    The doctrines of the judicial exceptions apply no matter the enumerated category

    Sure. But you agree that there are multiple doctrines and they don’t fit together “coherently”. I’m merely presenting an explanation for why that is the case.

    “anon” I do notice that you have moved the goalposts a bit in restating above.

    There were no “goalposts” to be moved. I was conversing with Dennis and noting that, regardless of the lack of a coherent single doctrine for patent ineligibility, there are some very clear guidelines about claims reciting mental steps. Those guideliness are that section 101 (or its equivalent) has never been interpreted by the Supreme Court to permit the patenting of (1) purely mental processes or (2) claims that are effectively claims to mental processes insofar as they prevent practitioners of the prior art from thinking new thoughts.

    anon: No one has ever debated the patenting of purely mental processes

    Well, I’m sure there’s been some debate but nothing that wasn’t laugh-worthy. And there’s a good reason that nobody debates the eligibility of such patents.

    Then we come to my second point which is that claims that are effectively claims to mental processes insofar as they prevent practitioners of the prior art from thinking new thoughts are also ineligible. I’ve yet to see a serious counter-example or a credible theory explaining why this should not be the case. Certainly there’s nothing in the Supreme Court case law addressing this proposition directly and finding to the contrary. On the other hand, the Prometheus decision is absolutely consistent with this conclusion. That was a 9-0 decision, if you’ll recall, and it expressly brushed aside the suggestion that one could not consider the relationship of the prior art to claim elements when considering patent eligiblity.

  53. You have not addressed my post, which provides on point answers to your questions.

    Instead, you choose to “rail on”.

    Not very adult of you or fitting for the new Patently-O.

  54. “other baseless accusation. Show me exactly where I have I “repainted history”

    1) “They are not incorrect. As I’ve stated perhaps 100 or 200 times already”

    Okay, let’s get this straight. Anon accuses me of “repainting history”. As an example, he quotes me responding to an accusation by “101 Integration Expert” (with whom anon never, ever disagrees — go figure) that I’ve “mistated the law” regarding 101 “ad infinitum”. In other words, “anon”, too, accuses me of mistating the law. But somehow “anon” forgets to include what exactly it is that I said. So here it is again:

    As I’ve stated perhaps 100 or 200 times already, to the extent Diehr ever held that one was absolutely not permitted to examine the status of claim elements with respect to the prior art (the contention of the Diehrbots prior to Prometheus and your apparent contention today), Diehr was certainly “overturned” by Prometheus. The claims in Prometheus were found ineligible, in fact, because “old” and “conventional” steps were found to be insufficient to turn otherwise ineligible subject matter (thinking about a natural correlation) into eligible subject matter.

    There is nothing incorrect here. This has been my position consistently since, well, forever. Dennis knows this. So does everybody else who isn’t your sockpuppet and who is capable of having a coherent discussion about the topic. I’d love to be proven worng. But it’s not going to happen because I’m not wrong. Repeating the phrase “integration” over and over again does not prove me wrong. Whatever the phrase “integrated” means, the following facts are not disputable: (1) the claims in Prometheus were not sufficiently “integrated”; (2) the claims in Prometheus recited an old eligible step and a novel mental step of thinking about a “natural correlation”; (3) no human being has ever explained how an old step could be sufficiently “integrated” with a subsequent mental step such that a claim in the form [oldstep]+[newthought] is eligible for patenting.

    So here we are again. Is it time for you to go into sockpuppet mode, anon?

  55. MM: As I’ve stated perhaps 100 or 200 times already, to the extent Diehr ever held that one was absolutely not permitted to examine the status of claim elements with respect to the prior art (the contention of the Diehrbots prior to Prometheus and your apparent contention today), Diehr was certainly “overturned” by Prometheus.

    Well, MM, that is a strawman argument since Diehr’s claims as a whole doctrine and prohibition against dissection does not say one can’t ” examine the status of claim elements”. Which is part of the claims as a whole analysis. You are certainly free to look at all the elements and identify and classify them. But what you are not permitted to do under Diehr, or Bilski, or Prometheus, for that matter, is strip away and ignore. That’s what dissection is. That’s what your theory is all about. And that’s no lie.

    I quote Diehr, “Respondents’ claims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.”
    Diamond V Diehr Pp. 450 U. S. 185-191.

    Prometheus never overturned this. You have no citation from Prometheus to back up any claim that it overturned this aspect of Diehr. All you have is your interpretation. You own personal view, which, without a legal cite is nothing more than a wish.

    Yes, the Prometheus Court looked at the individual steps of the process. Everyone does that when analyzing a process. But the Court put the steps back together and made their decision on the claims as a whole. People like you may mistake this for dissection and some basis for a point of novelty, or mental steps test, but you are wrong. When the Court puts the steps back together and takes them as a whole, it’s called “Integration”.

    Integration is the antithesis of dissection ( strip away and ignore ).

    Again, I cite Prometheus relying on the “Integration Analysis” used in Diehr:

    “In Diehr, the overall process was patent eligible because of the way the additional steps of the pro- cess integrated the equation into the process as a whole. 450 U. S., at 187. These additional steps transformed the process into an inventive application of the formula.”

    The holding for Diehr was simply in the word’s of the Court:

    “We conclude that the patent claims at issue here effectively claim the underlying laws of nature themselves. The claims are consequently invalid. And the Federal Circuit’s judgment is reversed. It is so ordered.”

    Again, your dissection theory, even in it’s current evolved and weakened state still has no citation from the Prometheus Court or ANY Court.

    And that my friend, is a fact!

  56. form a single coherent doctrine because even at the most fundamental level there are two completely different kinds of claims that are permitted: composition and method claims.

    The doctrines of the judicial exceptions apply no matter the enumerated category, as has been explained with court references to not letting the skillful drafter avoid the judicial exception.

    As for the “first,” answers were given to your “pet” which I do notice that you have moved the goalposts a bit in restating above. No one has ever debated the patenting of purely mental processes.

    Professer Crouch, do you consider such strawmanning to be a form of lieing?

  57. software that runs on

    I’d like to get the professor’s opinion on fallacious arguments that have no basis in reality, that have been shown to be baseless (in law and fact) and that, even IF for arguments sake, will be entertained – but postulated as law – that proper citations (heck even close ones) that provide the legal support be given.

    I amnot sure how mindlessly repeating fallacious arguments can lead to an adult discussion.

  58. other baseless accusation. Show me exactly where I have I “repainted history”

    1) “They are not incorrect. As I’ve stated perhaps 100 or 200 times already”

    They are incorrect. You have not shown elsewise even once.

    2) “There was no refusal.”

    How many times have you been asked? How many times have you completed the analysis asked? You have flat out refused through your inaction.

    3) “Prior to that, I addressed the concept of “integration” directly, maybe twenty or thirty times, in response to your comments.”

    Flat out false. What you call “addressing the concept” is plainly not “addressing the concept” as you are being asked. To say that you have complied with what is being asked when you have slipped in something else is a lie.

    4) “Most importantly, I observed that in spite of the fact that you refer to yourself as an “integration” expert, you are unable to unwilling to explain to us how a step that is old in the art can be sufficiently “integrated” with a novel mental step such that the claim is eligible for patenting.”

    While not technically “lieing,” this is the deplorable behavior of not answering, and inserting your strawman/hijack. Perhaps Professor Crouch will let us know if this is permissible. I vote no as this cannot lead to an adult conversation and is just gamesmanship.

  59. the repainting of history by MM

    Another baseless accusation. Show me exactly where I have I “repainted history” and explain to everyone exactly how your version of history differs.

    My version of “history” shows that I and others accused you of engaging in excessive sockpuppetry. My version of “history” shows that you responded by accusing me and others of wearing tinfoil hats and being paranoid. My version of “history” shows that we weren’t paranoid and that you were, at best, being less than forthright. I’m putting it mildly.

  60. DC If the project here is an attempt to gain a clear picture of supreme court patentable subject matter doctrine. The project will certainly be a failure. The court has given us statements on both sides (or rather several sides) of the argument that cannot be fit together to form a coherent doctrine.

    Of course they can’t be fit together to form a single coherent doctrine because even at the most fundamental level there are two completely different kinds of claims that are permitted: composition and method claims.

    But I’ve yet to see a “coherent” discussion regarding where or why section 101 (or its equivalent) has ever been interpreted by the Supreme Court to permit the patenting of (1) purely mental processes or (2) claims that are effectively claims to mental processes insofar as they prevent* practitioners of the prior art from thinking new thoughts.

    Be the first, Dennis, if you like. And yes this is a personal pet of mine. Why? Because it’s impact is huge, it cuts across all technical fields, and it’s never been refuted.

    * “prevent” in the sense that any claim “prevents” people from doing things

  61. Yes, I know. This is why I asked you …can you please cite one case in which Rader sought to expand the boundaries of 101 past what the Court has established in it’s precedent of Diehr?

    Your impending answer would be an example of Rader pushing the envelope.

    You chose to answer with, Ultramercial.

    I then logically asked you… please cite one example from Ultramercial’s holding that pushes it beyond the boundaries of Diehr?

    Your response was “Ultramercial is vacated and irrelevant”.

    This is a circular non answer. Which leaves you now without any evidence to support your assertion that Rader sought to expand the boundaries of 101 past what the Court has established in it’s precedent of Diehr.. A.K.A…. pushing the envelope.

    So unless you can provide another example, at this point it would be proper debate etiquette for you to admit defeat and thank me for the debate.

  62. The prisoners are not winning. No one is winning with this type of dialogue.

    Vacated does not mean that it is irrelevant. Myriad was vacated and came back out exactly the same.

    Someone should define “lying,” as I view the responses here in the same category. likewise, the repainting of history by MM – is that acceptable?

    I’m perfectly willing to play by the rules. I’m just going to assume the behavior I see is within the rules…(well, perhaps I won’t stoop that low).

  63. Well, with all respect to you Mr. Bloom, telling someone to “shut up” because you do not agree or like their post, is not exactly a shining example of how to move the conversation forward, or help the blog.

    If anon or anyone else has to make 21 posts to Ned for example, asking for a response to some substantive point in a debate, it may very well indeed become annoying.

    But the annoyance is most accurately directed at the person refusing to answer the questions, or evading them, rather than toward the one asking.

    This is especially frustrating for those like myself that are trying to follow the debate thread and learn from the outcome.

    It would be far more conducive for those refusing to answer to simply say they are wrong, or do not know, rather than evade, ignore, or purposely engage in a fallacious argument to obfuscate the issue.

    So rather than tell commenters like anon to shut up, why not tell those to whom he/she is speaking to speak up!

    Preferably with some truth and integrity.

  64. I invent a method but claim a machine.  The problem arises in proving infringement, because generally making as selling a machine is an infringement.  But if the machine itself is old, making and selling it is not infringement.  

    This is fundamentally why 100 specifies that a new use of an old machine is a process.  It is.  And it should be claimed as such, not as a machine.

  65. If the project here is an attempt to gain a clear picture of supreme court patentable subject matter doctrine.  The project will certainly be a failure. The court has given us statements on both sides (or rather several sides) of the argument that cannot be fit together to form a coherent doctrine. 

    On Thu, Aug 30, 2012 at 7:13 PM, Dennis Crouch <dcrouch@gmail.com> wrote:

    Lying is not allowed on Patently-O.

  66. Mr. Heller:

    Loading and executing are actions steps and therefore part of a process claim, as in new use of an old machine, or even an old process itself. Can you show where exactly in 112, P. 2 this is not allowed?

  67. your views of dissecting claims and mental steps tests being allowed, and Diehr somehow being overturned by Prometheus are just a few of the many “incorrect views of the law” that you have repeated “ad infinitum” here.

    They are not incorrect. As I’ve stated perhaps 100 or 200 times already, to the extent Diehr ever held that one was absolutely not permitted to examine the status of claim elements with respect to the prior art (the contention of the Diehrbots prior to Prometheus and your apparent contention today), Diehr was certainly “overturned” by Prometheus. The claims in Prometheus were found ineligible, in fact, because “old” and “conventional” steps were found to be insufficient to turn otherwise ineligible subject matter (thinking about a natural correlation) into eligible subject matter.

    Dennis – any position on the repeated telling of plain lies about the views of others? Is this permitted in the brave new world of PatentlyO? Does everyone get to do it or is it permitted only when it’s evidently habitual/pathological?

    And most notably your refusal to address the “Integration Analysis”, established in Diehr,

    There was no refusal. It’s already been pointed out to you that there was no refusal at least a half dozen times. Prior to that, I addressed the concept of “integration” directly, maybe twenty or thirty times, in response to your comments. Most importantly, I observed that in spite of the fact that you refer to yourself as an “integration” expert, you are unable to unwilling to explain to us how a step that is old in the art can be sufficiently “integrated” with a novel mental step such that the claim is eligible for patenting. Instead, you alleged that the claims at issue in Diehr comprised a mental step. You were asked to support that allegation. You failed miserably because the allegation is false. All this has been pointed out to you before.

  68. Ahh, but Mr. Heller, it was you that brought up Ultramercial as evidence for your argument. Now that you can’t defend the evidence you simply say it’s irrelevant.

    Which brings us full circle back to the original questions, …

    can you please cite one case in which Rader sought to expand the boundaries of 101 past what the Court has established in it’s precedent of Diehr?

  69. Mr. 101, if one can only infringe by loading and executing a program, then a claim to a new machine is indefinite under 112, p. 2.  You might want to read that statute.

  70. Well, MM, since you asked, I must say, your views of dissecting claims and mental steps tests being allowed, and Diehr somehow being overturned by Prometheus are just a few of the many “incorrect views of the law” that you have repeated “ad infinitum” here.

    And most notably your refusal to address the “Integration Analysis”, established in Diehr, buttressed in Prometheus, and used by the USPTO in the Official Office Guidelines, while continuously promoting your dissection Analysis theory, which was essentially ignored, goes a long way in showing just how sincere you are in wanting an honest discussion and debate on the merits of patent law.

  71. Then why can’t one claim both a machine and a process for using the machine?

    If it is having two different categories in application that is the problem then the Inventors can simply file two applications, one for a process and one for a machine, right?

  72. Mr Heller:

    With all due respect you have evaded the question.

    Now once again, can you please cite one example from Ultramercial’s holding that pushes it beyond the boundaries of Diehr?

  73. ” A claim to a programmed computer where the program must be manually loaded and manually executed is not a claim to a new machine, but, in essence, a method of using an old machine. ”

    Mr. Heller: Even if this is correct I do not see the problem. Is a new use of an old machine not statutory subject matter?

  74. Mr. 101, I think you should know that the Supreme Court vacated Ultramercial and remanded it.  I would politely suggest that they were not happy with Rader's opinion.

  75. Mr. Heller:

    I have read both Ultramercial and Diehr hundreds of times.

    Can you please cite one example from Ultramercial’s holding that pushes it beyond the boundaries of Diehr?

  76. Oh, just one more observation:  if one discloses only software that runs on a GP digital computer, the Feds for years will construe the claims to be to a method for 101 purposes.  Obviously, there is something wrong in this.  The claims are not directed to a method, but to a machine.  If they are in substance to be treated as a method, but drawn to a machine, they should be declared invalid under 112, p. 2.

  77. “Max, I find Rader interesting. On the one hand, he is pushing the envelope on patentable subject matter.”

    Mr. Heller, I think you confuse “refusing to narrow” with “pushing the envelope “.

    For example, can you cite one case in which Rader sought to expand the boundaries of 101 past what the Court has established in it’s precedent of Diehr?

  78. DC I hope that you can figure out a way to to also focus on the law

    Easily done.

    My personal preference for blog comments is one where the admin has a minimal presence except to turn on the lights when the sockpuppetry/trolling gets out of control, which has certainly been the case here off and on for the last couple years.

    I’m all for increased “content” but any increase shouldn’t (IMHO) come at the expense of the expression of opinions that may or may not have any foundation in reality. Most of the interest in reading any correspondence regarding any subject is in the gradual revealing/unraveling of those foundations, such that one can engage in deeper levels of conversation, find common ground, etc. Any possibility of that happening is destroyed when one is pressed on some subject and responds by changing identities and polluting the comments with a zillion drive-by ad hominems that completely ignore another’s sincere (and almost always irrebutted) attempts to explain his/her position.

    Nuff said.

  79. 101: a programmed computer where the program is part of the computer is a new machine.  A claim to a programmed computer where the program must be manually loaded and manually executed is not a claim to a new machine, but, in essence, a method of using an old machine.  The problem of which is which can only be solved by inspecting the specification, today.  I  think what we might need from the Fed. Cir. is some guidance in how to claim the one but not the other in our claims.  Simply saying "configured" when one does not disclose anything but software that can be used on a GP digital computer should not allow one to to claim a programmed computer.  The claims are not really supported. 

  80. Max, I find Rader interesting. On the one hand, he is pushing the envelope on patentable subject matter. On the other, he is leading the charge on damages law reform.

    On claim construction, he normally will not limit the claim scope to the scope of the invention through construction. I think he would prefer to address enablement as a validity issue. This is MM’s approach as well.

    So, if I was appealing a 101 matter or a claim construction issue and Rader was on the panel, I might by a few shares in the company that owned the patent, and sell if he were on the panel if damages were at issue.

  81. “But unless the disclosure is such that the meaning is clearly statutory, a claim to a programmed computer might be indefinite because it would include both statutory subject matter and non statutory subject matter.”

    Mr. Heller:

    I am trying to follow your above argument and logic before reaching any conclusion. Perhaps you can help me.

    What exactly is the statutory and the non statutory subject matter in the claim for the computer?

    Then please explain how a claim that is indefinite is also necessarily non statutory?

  82. Night,

    1. A digital circuit is a physical thing that can be bought and sold.

    2. But, when you speak of a programmed GP digital computer, you introduce ambiguities. Are you suggesting that the program has become part of the machine such that when the computer is sold it is sold with the software embedded with it? If you say yes, then I am on board that you have defined a new machine. But in most cases, the real invention is the software and the GP digital computer is simply being used. The software is loaded manually and executed manually by a user. A new machine is not created.

    Thus, in one case, there is equivalence between a digital circuit and a special purpose computer that has embedded software for that transforms the computer for a specific application. We call that firmware for short, although the concept is a bit broader than simply loading the program from ROM.

    But unless the disclosure is such that the meaning is clearly statutory, a claim to a programmed computer might be indefinite because it would include both statutory subject matter and non statutory subject matter.

    This is an old debate. It rages here, particularly in discussions with anon and me over the years.

  83. MaxDrie wrote:

    “I was startled by this intervention, this disclosure. I think it has been helpful, a prompt to contributers to pause for thought. Thank you Dennis.”

    Well, Maxie at least you should now know that none of those commenters are AI, which is a bandwagon you were all too willing to jump on and help perpetuate along with 6, and Ned, instead of engaging in substantive debate on issues of Business Methods, Integration Analysis, and 101 Statutory Subject Matter.

    This blog is an excellent source for “Actual Inventors” to learn about the practical applications of Patent Law, and how it relates to their particular inventions. It also helpful in learning to judge the quality and merit of Patent Attorneys, which is particularly useful when deciding whom to hire and whom to let go.

    Personally I have found the contributions of anon, to be very informative and educational and the honest questions of Simple Questions, to be very enlightening, even when those questions are ignored by those seeking to avoid an intellectual challenge or exposure of an agenda or fallacy in their arguments. And even though software is not my specialty or business, I do find NWPA to very credible and knowledgable in that field. So I do hope to see, and look forward to reading another 5000 comments from those posters in the next year!

  84. MM – We have a potential re-starting here of interesting commentary. I hope that you can figure out a way to to also focus on the law and avoid baiting others into a comment shouting match.  

  85. anon possible strikes for blatent violations, especially strawmanning and plainly incorrect views of law that people refuse to defend and merely repeat ad infinitu

    Please provide one example of an “incorrect view of the law” that someone has repeated “ad infinitu” here.

    What really grates about you generally, “anon”, is that you (in your various guises) hold yourself out as some sort of martyr battling against a so-called “vocal minority” when, in fact, it is you (in your various guises) who solely constitutes the most vocal minority here, by far.

    As I pointed out to you on many many occasions, your desire for more “policing” of the comments here would seem far more sincere if you spread your “policing” around a bit instead of relentlessly attacking the same three or four people whose views about every subject you seem to reflexively disagree with.

  86. Rich's theories on 101 stand rejected or ignored.  

    Regarding Diehr, what Rich really believed can be seen in the last paragraph of his opinion in Benson.  He did not believe software had to be tied to a particular application, like in Diehr, to be patentable.

  87. Regarding Night, he is NWPA.  Regarding his theories, information transformation is critical to this thinking.  It takes energy to do it, he claims.  That requires the use of a machine, I believe.  But I think I recall Night to even argue that information transformation using the human brain should be patentable as well.

    My own personal view is that information transformation is claimable if it is tied into the real world in some fashion, e.g., by measuring something real to produce a signal, even a digital signal, transforming it using novel mathematics or steps, and then producing a real signal output that can be immediately used or stored for future use.  I have in mind, as an example, data compression or encryption, that can be broadly claimed via signals in and signals out.

    Night and I agree up to the point of the tie into the real world.  He insists that information transformation requires energy, but he doesn't care where the data comes from or where it is used.  As such, his claims would seem to violate the most fundamental of patent requirements, utility.  If the mathematical is broadly useful, then we have the problem of Morse.  The claims are not limited to any application and thus are abstract.

  88. LB – You are doing a good job with this, and I think that it is important to distinguish between judges in favor of a strong and healthy patent system (this includes all the federal circuit judges) and judges who are more likely than others to find a particular patent enforceable and infringed.  In some ways, the judicial behavior is like a parenting choice.  We all want our kids to eventually become positive forces in society.  To get there, some of us favor positive reinforcement while others prefer a focus on consequences for bad actions. 

  89. Night: "Ned, a claim to a method or a register for that matter to convert from BCD to decimal is abstract and pure mathematics? No it is not. How can you say that when at the time this conversion was needed on every IBM mainframe?"

    1) IBM opposed the grant of the patent in Benson.  
    2) The claims was a method claim and was drawn according to the Court's claim construction to a method of programming a GP digital computer.  The fact that one of the claims specified a shift register was not enough it appears to covert the claim into a claim directed to a particular kind of digital computer.

    "How can a method to convert from BCD to binary be a law of nature?"
    It is not.

    "How can it be abstract when the method itself is an implementation where there many other ways of converting."
    Abstractness relates to the output, a number.  Since it is not used for anything practical, it is legally drawn to principle in the abstract per Morse.

    "Stern being an EE is relevant because at the time there was a lot of friction between the information processing crowd and the EE crowd. Stern's views are very much a product of the time."
    Possibly.  However, I am not convinced.

    "You still want to ignore the abstract ladder in engineering. You go to abstract as defined by the SCOTUS, which roughly means we think this is too broad 'cause we are making factual findings about what we think of the technology and are applying common law equity to take your patent."
    The debate you are making here actually was the same debate that was had in Morse.  All you have to do is read the dissent who would have held claim 8 eligibile.  The problem with claim 8 is that was not drawn to any specific way, method or apparatus for achieving the result.   When computing mathematical algorithms, confining their calculations to a general purpose digital computer does not either transform the general purpose digital computer into a particular machine, or limit the use of the mathematics any particular application.  The Benson court got the right result and for the right reasons.

    "Abstract? A method to convert numbers so they can be used in computer memory to be transformed. No. "
    Night, if the claim were confined in some fashion so that the mathematics became part of the machine, then I would agree with you.  However, in that case, the claims were construed such that the computer was used to only perform the calculations.  A new machine was not created.  An old machine was used.

  90. I generally agree with that, but I don’t think it is accurate to say that she is necessarily more “pro-patent” than others. Some of the judges are more formalistic then others, while some (including Judge Newman) seem more forgiving towards the drafters. Some are more willing to let the specification influence the “plain meaning” of the claims than others. But I imagine every one believes that it is important to maintain a strong, credible, patent system.

    I consider myself “pro-patent,” but it’s not a contradiction to say that I also think the PTO is granting a lot of patents that shouldn’t be granted. Likewise, I’m pro-patent, but I also think that patent drafters should be held to a high standard for clarity. I’m pro-patent, but I think that it’s important that the specification guide the interpretation of the claims, so that claims aren’t asserted against technology far outside the scope of what the inventors actually had in mind. I’m sure I differ with many over whether and how to draw the lines in all these areas, but I’m no less “pro-patent” than anyone. Indeed, I think the future of the patent system depends on reining in the worst practices of the bar and industry, so that the public doesn’t lose faith in the system entirely.

  91. Yes – there is some clear variation.  Judge Newman has historically been the most likely to find patents valid and infringed.  None of the other judges could be identified as her mirror image, but some of them certainly have a greater historic tendency finding patents either invalid, unenforceable, or not infringed.  

  92. Too often saying nothing is taken as concurrence (along the lines of speak now or forever hold your peace).

    Respectfully, anon, I think this is simply untrue. You’ve stated this before and you have suggested that you have some sort of obligation to correct misstatements, misrepresentations, shilling, etc. I propose that we all agree to relieve you of any such obligation. (All in favor need say nothing – we’ll take silence as concurrence.) Many of us are smart enough to come to our own conclusions and are no less able to see through BS than you. For those of us who aren’t – well, you can’t be expected to correct all injustices in the Interwebz.

  93. OK. I see your point Dennis. But, focussing instead on individual judges at the CAFC, can one characterize any of them as “pro-patent” or “anti-patent”? One hopes not but, reading your threads, the impression I have gathered is that one can. Am I seeing it right or wrong?

  94. Rich gave us the foundation for Diehr, the Claims as a whole doctrine, Integration Analysis, and processes as an independent category of statutory subject matter.
    A Rich legacy that protected and promoted the progress of the useful arts well into the 21st century!

  95. And the english appellate court many fewer. 

    On Thu, Aug 30, 2012 at 3:44 PM, Dennis Crouch <dcrouch@gmail.com> wrote:
    On the other hand, the English courts decide one or two cases each month. 

    On Thu, Aug 30, 2012 at 3:43 PM, Dennis Crouch <dcrouch@gmail.com> wrote:
    Thanks Max. For anyone following the cases, is more difficult to have a knee-jerk reaction with the Federal Circuit because they decide patent cases almost every day.  This short latency may overwhelm our natural reflexes. 

  96. On the other hand, the English courts decide one or two cases each month. 

    On Thu, Aug 30, 2012 at 3:43 PM, Dennis Crouch <dcrouch@gmail.com> wrote:
    Thanks Max. For anyone following the cases, is more difficult to have a knee-jerk reaction with the Federal Circuit because they decide patent cases almost every day.  This short latency may overwhelm our natural reflexes. 

  97. Thanks Max. For anyone following the cases, is more difficult to have a knee-jerk reaction with the Federal Circuit because they decide patent cases almost every day.  This short latency may overwhelm our natural reflexes. 

  98. I agree that Benson is a ridiculous decision at least because of the error in understanding technology and its development.  The court somehow believed that the claimed hardware (a "reentrant shift register") was the only practical way to perform the conversion process (its not).  That error led the court to rule that the claim improperly preempted all practical uses of the conversion method.

  99. The owner of this blog wrote above:

    “Anon (AKA Simple Questions; Shilling Shall Continue etc)…………….

    You are the most frequent commenter on this blog with over 5,000 comments this year alone.)”

    I was startled by this intervention, this disclosure. I think it has been helpful, a prompt to contributers to pause for thought. Thank you Dennis.

    As to Paul’s point, pro and anti patent, the English Patents Court gets labelled “anti-patent” or “pro-patent” in phase with the tenor of its most recent decision. Reaction these days is disappointingly instant, shallow, short term and low level; most of it about the level of a knee jerk.

  100. Thanks Ned.  First of all, am I correct that "Night" refers to NWPA aka Night Writer Patent Attorney. 

    My thermodynamics class was several years ago, but my recollection is that we're very unlikely to be able to take any action that actually decreases the entropy of the universe. That at least violates one of the laws of thermodynamics.   

    That said, I believe that we could have a functional patent system that allows patents on methods of transforming information. If the rule was liberally applied then we would likely have even more free speech issues and overlap with copyright law, but we could deal with those issues as well.   

  101. Ned, a claim to a method or a register for that matter to convert from BCD to decimal is abstract and pure mathematics? No it is not. How can you say that when at the time this conversion was needed on every IBM mainframe?

    How can a method to convert from BCD to binary be a law of nature? How can it be abstract when the method itself is an implementation where there many other ways of converting.

    Stern being an EE is relevant because at the time there was a lot of friction between the information processing crowd and the EE crowd. Stern’s views are very much a product of the time.

    You still want to ignore the abstract ladder in engineering. You go to abstract as defined by the SCOTUS, which roughly means we think this is too broad ’cause we are making factual findings about what we think of the technology and are applying common law equity to take your patent.

    Abstract? A method to convert numbers so they can be used in computer memory to be transformed. No.

  102. Dennis, from years of experience with Night, I know his position on the patentability of "information."  He seems to believe that any computer program transforming any information, data in, data out, is, without more, patentable because it reduces entropy of the universe.  He sees the requirement of a tie-in to a measurement of something real or to some real use of the transformed data to be unnecessary for the purposes of eligibility.   He takes the MOT to the next level.

    For this reason, he opposes Benson, opposes Stern, who wrote the government brief in Benson, and for the same reason, I think, he opposes Lemley.  

  103. Thanks. I'll work on them as well. 

    Regarding disagreement. Please continue to disagree with others on your understanding and vision for the patent law system. I very much respect your point of view and have seen lots of excellent comments that you have written.  The trick is to do it in a way that makes your point without creating a shouting match or name calling incident. DC

  104. I am in for that.

    What to do about the prisoner’s dilemma of those not in for it? Too often saying nothing is taken as concurrence (along the lines of speak now or forever hold your peace).

  105. I would agree with much of this.  There is plenty of bias in academia.  Truly objective scholarship may be impossible, but we're not even close to finding that out.  

    A good thing about patent law in particular is that the academics tend to write on topics that somewhat relate to practice (more than other legal scholars) and patent practitioners tend to be very smart and well read. This leads to a significant amount of beneficial interaction. 

  106. Thanks Paul. I always appreciate your comments. 

    Regarding pro- and anti- patent. Those labels are easy to through around, but I would agree that, for the most part, there is little variation among the judges on the Federal Circuit.  They have all ruled (on multiple occasions) that various patents are valid, invalid, infringed, not infringed, etc.  

  107. I second the motion.

    Just a knee-jerk reaction, any enemy of Night is a friend of mine. Night’s position on 101 and software is, IMHO, extreme, and always has been way out there.

  108. Night, You seem to still ingore the fact that Benson was unanimous. You must think the Supreme Court justices and their clerks are ingnorami.

    Stern’s brief in Benson relied mainly on Morse, a case that described the problem with abstract claims, then observed that Corning v. Burden laid out the essentials for an eligible process — MOT. I don’t think either position is all that radical. Furthermore, I don’t see the relevance of the fact that Richard Stern is himself a EE to the positions he took on these two issues in Benson.

    In the end, a claim that only produces a number without specifying any use for that number is abstract. It is pure mathematics, and is not a practical application within the useful arts.

  109. With all due respect, how can anybody even see the CONTENT if it’s buried in your relentless onslaught of criticisms, which are rarely about the blog topic itself? Nobody has 21+ posts per day of substantive content in them.

    We get that you don’t like MM and Ned, and believe that they’re pushing an “agenda” that you disagree with. So shut up, already. Or maybe just tell us once a day that they are “shills” and not to be trusted. Please.

    Dennis, it seems to me that your participation in the last few days has actually made things a little better all by itself. Professor Hricik’s participation was also useful.

  110. With all due respect, the “problems” are not in the names of the posters, but rather in the CONTENT.

    I’d be ecstatic to match any content requirement you want to set.

  111. May I take the opportunity to return to the subject, which is Judge Linn’s impending senior status.

    He has, as noted, served both as a patent examiner and a patent attorney. That gives a depth of knowledge that it difficult to replace. It is to be hoped that his replacement will have similar legal and technical qualifications.

    And as a European observer of the scene, I have to congratulate Judge Linn and other members of the CAFC on a consistent high standard of their opinions and academic excellence which matches that of our courts in the UK (with experienced judges at at first instance, in the Court of Appeal and in the UK Supreme Court) and the Technical Boards of Appeal in the EPO. I do not think that there are truly pro-patent or anti-patent members of the court, simply judges doing their best according to the law and the facts and arguments presented to them.

    Hopefully Judge Linn will remain on the scene for many years despite his senior status.

    And as regards some contributors, there is a line in Walt Disney’s film Bambi which goes : “If you’ve got nothing nice to say, don’t say nothing.” Not bad advice.

  112. OK, DC, I’ll take the first step. I will stop calling people monkeys.

    Come on MM, 6, and the rest of you make a concession.

  113. Anon (AKA Simple Questions; Shilling Shall Continue; Etc.).  I don't believe that the only way to improve our community is to add more police. 

    You are the most frequent commenter on this blog with over 5,000 comments this year alone.  I would love it if you could help by setting an example — perhaps joined by a couple of other frequent posters.

  114. I would agree that a judge must “play fair.”

    I hold no such illusions for members of academia. I have dealt with that sector for far too long and in various aspects to hold an illusion that most have unbridled bias and that true objective scholarship is in fact almost mythical. I think the better path is to properly gauge the profession and give it the level of respect that it earns (very low for its objectivity). The academic system is seriously flaws and lacking in any type of objective reward for merit.

  115. To each his own. There are sites that police the comments and bans posters for misrepresenting either of law or others posters’ positions. Those cites have far less comments and interactions than this blog, so there is a trade off. If you were to ban that type of banter your post levels would drop some 80 – 90 %.

    I can sift through most of the nonsense quickly, and choose to engage when I want. So unless you want to invest some time in policing (with possible strikes for blatent violations, especially strawmanning and plainly incorrect views of law that people refuse to defend and merely repeat ad infinitu ) you might choose to accept the trade off that with higher volume you have higher shilling.

  116. And, I understand that some in industry don’t play fair and that there are shills on here. But, I would expect a federal circuit judge and a professor to play fair. That is their job. They are both entrusted to play fair. When they don’t play fair, they put our entire system at risk of collapse.

    If a shill like MM gets on here and says nonsense, I don’t care. But, J. Moore and Prof. Lemley should be held to a high standard. They are the guardians of our system.

  117. I would also add that this business of saying that a claim to function implemented in software has no structure has caused a lot of trouble for industry. The cost of software patents has risen and uncertainty has increased.

    So, when I write a circuit configured to, I am ok. But, if I write a module configurd to, I may not be alright if J. Moore gets to it.

    And, let me repeat that this is core to the types of problems that are plaguing patent law. Some want to get rid of software. I can respect that view. But, play fair. I do not think J. Moore is playing fair nor do I think that Lemley plays fair.

  118. Dennis:

    As the law stands now, an electrical circuit that is claimed functionally has structure; software that is functionally claimed does not have structure. Software may be invalidated under 112. J. Moore has pushed this invalidation.

    This is no minor point. This is another way that the anti-software crowd have been attacking software patents, and it is unfair and does not represent how one skilled in the art would view a functional claim to software.

    This is one point of many with Lemley. Please don’t try to reduce my side to this single point. You want better argumentation on this blog. Well, then let Lemley come and speak to his statements about the whether a functional claim implemented in software defines structure.

    That is the issue. I think his article is typical in that he took a position that supported his goal at the expense of reality (as viewed by one skilled in the art.)

  119. OK – A bit about this article. Published in 1995 in Lemley's first year teaching. The article is a copyright article and is basically focused on how courts should apply the nascent Abstraction-filtration-comparison test for determining whether improper copying occurred.  In relation to patents, Lemley suggests that software copyright should be more narrowly tailored because of the availability of software patents.  I'll also say that I had not considered this particular Lemley article before this morning.

    Now, to relate this to your prior comment, I don't read Lemley as saying that "software has no structure." Rather, his point seems to be that the particular structure of a computer program will be based upon the utilitarian goals of that program.  I don't get the problem with this statement — reading it certainly does not make me think that Lemley is "the scariest human being alive for patent law."  That's just silly. 

  120. Anon: good comments. Thanks. But, there is a connection between the a functional description which is typical in software claims to the structure it defines. In fact, I argue that a functional description in software does define the structure. That one skilled in the art knows the structural options to implement the function. This is a key argument for how J. Moore has been invalidating software patents.

    It is no minor point, but at the core of information procesing patents.

  121. I don’t see anything overtly negative in the quote NWPA.

    And I share your disdain for Lemley, whose writing style is typically effused with unsubstantiated bias (especially when he writes about patents).

    Looking at the quote in context, he was discussing the difficulties of software in COPYRIGHT.

    Courts must therefore identify and protect that incidental material, while leaving the functional aspects of the program free for all to duplicate.

    And in the copyright sense, this is accurate. However, and should have been noted, is the fact that that same functional aspects of the program are what are meant to be protected by patent.

    As has been succinctly noted on several threads:
    You want to protect expression? – Use copyright.
    You want to protect function (utilitarian purpose)? – Use patents.
    You have something that has both? – Use both, but each for what the protection (which is different)each provides.

  122. NWPA,

    By and large this is not the forum that you should expect to find anythingproperly cited and identified as opinions that are not supported by [anyone]

    There are no standards of accuracy or veracity here. None.

    This in fact are points both of amusement and disdain, and can be directly contrasted with Gene Quinn’s blog, in which blatantly errant positions of law are generally not tolerated. That is not to say that contrarian views do not appear on Gene’s blog – they do (in fact, several do post contributions).

    And yet, you will notice that Gene is constantly degraded by the very same vocal minority here that seems to run roughshod and at most draw an “apart from the sarcasm” wristslap (or in a rare response to disgust if a user posts with the “N” word).

    The open and wild west approach draws what it draws – unbridled and undisciplined passion, insults galore, ad hominem (which is not always out of place), and rampant and preposterous legal propositions (even after countered with proper legal citations).

    This is Professor Crouch’s blog and he has every right to run it as he sees fit.

    As far as “we have a blog like this where merits can actually be dabated,” well, let’s be generous and call “debate” an unreachable stretch. It is more like a forum where shilling can run rampant and anyone can post near anything, including counters to the shilling.

    Yell whatever you want, yell loudly, yell often.

    Caveat emptor and c’est la vie.

  123. link to btlj.org

    “First, computer programs are written for a utilitarian purpose.33
    Expression in the code or structure and organization of a program is normally only incidental to that purpose.”

  124. NWPA – I agree with you that there are lots of problems with academic publications.  And certainly, one problem is that we (academics) can hide behind our publications without ever really having to debate the merits of what we write.  Another problem with law review publications is that they are not subject to peer review. Rather, law reviews are run by law students who typically do not fully understand the law.   

    Luckily, we have a blog like this where merits can actually be debated.  Can you point me to Prof Lemley's  "software has no structure" argument and we'll open it up for debate here. 

    DC

  125. I don’t think so Dennis. What amazes me is that academics are permitted to get away with saying just about anything they want and are permitted to publish articles in supposedly peer reviewed journals that make statements that are wrong or at least highly contested without presenting at least a cite to the other side of the argument. This is not scholarship and does not deserve respect or consideration anymore than a brief submitted at court.

    One example is Lemley’s statement as fact that software has no structure. What is over the top and outrageous are the statements that academics like Lemley make with no one to contest their statements. And, Dennis, I think you are part of that group of people that have an obligation to demand a higher standard.

    You should demand that statements made as fact that are not fact be properly cited and identified as opinions that are not supported by the academics in the technical field.

    Why is it that these articles are not subject to rigorous peer review. I think your academic journals resemble more vanity press. You academics should go to the model of publishing these “papers” on your websites and rid us of the charade that they are academic papers.

  126. And, just to be clear, Lemley as I know you read this blog, I don’t like you because of the manner in which you make your arguments not because of your conclusions.

    Be clear. You do not care about scholarship or truth. You want your opinions to win and that is all you care about. And, yes, I would be more than will to duke it out with a tiny mind like yours on this blog. Let’s take one of your journal articles and go through your intentional mischaracterizations. You are not very clever to those of us that understand patent law.

    But, anytime in a fair forum where I have a chance to speak (and the time, which is rare.)

  127. Astraea: I agree with you about Moore and GW Bush. I fundamentally believe that you have to practice patent law with real inventors and companies for 10 years before you can really understand it. Moore is beyond words in how bad she is. The only human worse is Lemley.

    Astraea: I think it is less clear with the Fed. Cir. and the USPTO, but with the SCOTUS where patentability of all computer inventions rests on a 4-1/2 vs. 4-1/2 split, just one more appointment by Obama will put us in the category of an opinion like Stevens dissent in Bilski becoming the law.

    There are software companies now that are lobbying to get Congress to pass laws to explicitly make information processing methods patentable. I don’t know if that will get anywhere.

    All these years of misery due to the malice of Benson. Richard Stern will go down in history as the biggest destroyer of patent law in the history of humans. He wanted to squash these inventions because he thought he was better than they were as an EE person. His tiny little mind did not comprehend that the information processing methods were the most powerful invention ever conceived by man. And, no, I am not exagerating. Few intellectuals that werre educated in the last 20 years would contest that statement.

    And, now we endlessly fight Benson and its bizarre medieval thinking. (Each year tens of thousands of new natural laws are discovered and must not be allowed to be patented.)

    We should all think of how to make sure a Lemley does not make it. Just his one statement that software has no structure should be enough to disqualify him.

  128. Judge “I never met a patent I didn’t want to invalidate” Moore was appointed by GWBush, so I don’t think you can claim that the conservatives have any better record on patent law than the liberals. The AIA was pretty by-partisan, with the big advocates being Leahy and Smith (D & R, respectively). It passed with huge bypartisan majorities in the Senate and the House. So I’m really curious what makes you think that conservatives have a better record on patent law. Especially given what they did to the Patent Office during the Bush years.

  129. The biggest mistake that could be made would to appoint someone like Lemley. He would be a wolf to come in and eat all the patent rights. I think Lemley is the scariest human being alive for patent law. He is very clever and does not care about scholarship or the truth. Fame and glory without merit, with no morals. Goals without consideration for scholarship and fairness. That is the Lemless.

    Mr. “software has no structure” would be a disaster.

    And, Lemley, I don’t like you because I see through your little rhetorical games. You would be surprized how many patent attorneys actually see through your games. But, then your audience is those who don’t understand patent law.

  130. I am also a liberal who is alarmed by liberals with anti-patent attitudes. OTOH, I think that you can be anywhere on the political spectrum and still be a good judge in patent cases.

  131. I don’t overlook the non-technical areas or consider them unimportant. I think the problem is that those doing the nominating overlook the technical areas and consider them unimportant. The fact is, a technical person can handle non-technical jurisprudence better than vicea versa.

    That said, there have been very good judges who don’t have a technical background, and there are very few people that understand every technology (I have met one or two, but don’t claim to be one). In fact, even within one’s own art a lot will still be unfamiliar, but if it wasn’t then it might not be worth patenting.

    Despite all that, the politicians still grossly underestimate the importance of having enough judges with a technical background that at least one on a panel will at least have a rough working knowledge of the technical field in general, if not the particular art.

  132. I think the patent law community has a tendency to overlook the non-patent areas of the court’s jurisdiction and consider them unimportant. The judges hire clerks with technical backgrounds to understand those issues as needed (let’s face it, someone with a life sciences background isn’t going to easily understand the computer science/electrical engineering stuff) but the ultimate issue is about having intelligent, articulate judges, not judges with technical expertise. With 4 judges eligible to take senior status and Chief Judge Rader not too far away, I think we’re going to see a lot of turnover and change over the next few years.

  133. The greatest patent jurists of all time, Story and Hand, both graduated from Harvard, but not with technical degrees. I contrast the stellar performance of both with that of Rich, also of Harvard, but who also was a practicing patent attorney. Rich was good, but he had his agendas as well. He gave us cases such as In re Benson and State Street Bank, cases that both will live in infamy.

    Understanding technology might be important to a degree. But isn’t it more likely that such a technically educated judge might decide technological cases in his field based upon his own ideas about the technology at hand rather than the evidence produced in court? I somewhat think that is what Lourie did in Myriad.

  134. I agree Alun Palmer and would go much further to say that much of the trouble we are having is non-technical people on the bench. Not all non-technical people cause trouble. Rader is a good example of how a non-technical person can be good. But, Rader is no Newman who sets the high water mark for what Obama should strive for. But, my guess is that Obama (Mr. no experience necessary), just doesn’t get it.

    So odd that the liberals don’t get patent law, but the conservatives do. I am a liberal and get patent law, but apparently I am exception. It is also odd that Kapos is so much better than Dudas, but that the judge appointments on the liberal side are scarey. They seem to regard patents as some form of capitialism that doesn’t belong in this world.

  135. I looked up Taranto on Wikipedia. His legal credentials are impressive, and he apparently taught patent law at Harvard, but he’s a BA, so presumably non-technical.

    But as you point out, they still have to nominate someone for the other slot.

    I also looked up DuMont, in case they should try again with him. Again, impressive pedigree as a lawyer, and he has litigated patent cases (amongst a slew of other things), but an AB, so apparently another technical illiterate.

    Is it really so hard to find lawyers of that calibre with some sort of degree in something technical? I think not. As a mere patent agent who barely scraped a bachelors degree in EE, I despair to think that all the key legal decisions are made mainly by judges who, at least from a technical PoV, make me look like a giant by comparison.

  136. Presumably, the nominee for this seat won’t be announced until after the election. It’ll be interesting to see who gets the nomination.

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