Apple Escapes Liability for its Cover-Flow & Spotlight OS Features: More on Inducement

By Dennis Crouch

Mirror Worlds v. Apple (Fed. Cir. 2012)

This is an interesting case to consider in parallel to the recent jury verdict in Apple v. Samsung. In that case, the jury recently found Samsung liable for infringing several Apple patents and awarded the iCompany more than $1 billion in damages. Meanwhile, Samsung has asked the district court to set aside the jury verdict as against the weight of the evidence.

In the present case of Mirror v. Apple, an E.D. Texas jury found Apple liable for infringing several of Mirror's patents and awarded over $600 million in damages. However, on motion from Apple, district court Judge Davis set aside the jury verdict and instead entered a judgment as a matter of law (JMOL) in Apple's favor – concluding that the patentee had failed to provide sufficient evidence of infringement. In a 2-1 decision, the Federal Circuit has affirmed that judgment – agreeing that (despite the jury verdict) "[t]he necessary evidence was not put before the jury to support the verdict of infringement or damages."

In the case, Mirror asserted that the joint operation Apple's Cover Flow GUI (see image below), Time Machine, and Spotlight Search infringes its U.S. Patent Nos. 6,006,227; 6,638,313; and 6,725,427 that cover a GUI implementation of lifestreaming. The inventors listed on these patents are Yale University computer scientists David Gelernter and Eric Freeman and were originally owned by Yale University. Gelernter's 1991 book titled "Mirror Worlds" is the namesake for the company. That book is written largely as a prophesy of what has become the internet as we know it. The original Mirror Worlds company is now defunct, with only its patent enforcement wing moving forward.

090412_1812_AppleEscape1

The federal circuit agreed that Apple avoided several of the patent claims because its mechanism does not include the equivalent of a cursor or pointer as required by the claims.

Inducement – Proving that the underlying steps were performed: Mirror had presented an inducement theory for several clams. Oddly, the majority began its analysis with a statement of the old law: "Inducement of infringement requires that there be a showing of an underlying act of direct infringement." Citing Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1326 (Fed. Cir. 2004) and not citing Akamai.

Mirror's failure on inducement was that it did not present evidence to the jury showing that anyone had actually performed the steps of the patented method. Mirror did provide user manuals that arguably taught its customers how to use the software in an infringing manner. However, inducement requires evidence that the steps were actually performed.

Mirror Worlds cites no trial testimony of customers actually using each step of the method claims or tying together the various manuals, reviews, and surveys as evidence of actual use of the claimed method.

Regarding user manuals, the Federal Circuit has a somewhat nuanced rule when it comes to inducing infringement. If the infringing method is taught in a compact series of instructions then that can be sufficient to infer that the underlying infringement occurred. However, if the infringing use requires users to pick and choose from various instructions spaced throughout the manual, then a patentee must provide more proof that the underlying steps were actually performed. See E-Pass Techs., Inc. v. 3Com Corp., 473 F.3d 1213 (Fed. Cir. 2007).

In this case, the instruction manual was insufficient and Mirror failed to provide any more direct evidence that the underlying steps were performed. Thus, the appellate panel affirmed that Apple could not be held liable for inducing infringement.

Dissinting in part, Judge Prost would have found sufficient evidence that Apple's customers were infringing and that, therefore, Apple induced the infringement.

Famed attorneys David Boies and Bill Lee argued the case for Mirror World and Apple respectively.

Query: Assume for a minute that Mirror could actually prove that Apple's customers are directly infringing one of the asserted patents and that it simply failed to produce the evidence at trial against Apple. Now that they have lost their case against Apple, an important legal question is whether or not the patentee could now bring a lawsuit against Apple customers and/or Apple retailers (such as Amazon or BestBuy)? As Prof Ochoa points out, this issue is whether defensive nonmutual collateral estoppel (AKA Issue Preclusion) would apply.

107 thoughts on “Apple Escapes Liability for its Cover-Flow & Spotlight OS Features: More on Inducement

  1. Yes, you did effectively do so when you explicitly supported and defended ( MM’s theory ) which is not the holding in Prometheus and is in direct conflict with Diehr.

    No I did not answer you at 11:59. I am not anon, though I do agree with that commenter more often than not.

    Anon is much more versed than I at patent law, and from the outcome of the debates on this board, smarter than most other patent attorneys as well it appears.

  2. There is no legal basis to extrapolate this extra solution activity analysis to a wholesale point of novelty test, mental steps test, claim dissection, business method or software exclusion, category conflation or any other fanciful theory, pet project or personal view one may have.

    Huh. I don’t recall doing any of those things.

    But didn’t you already answer me yesterday at 11:59 AM?

  3. Mr. Heller:

    As I have explained before your views have no basis in law as is evident from your inability to provide proper pin-cites to the exact quotes and holding of Court cases.

    That you have found someone else that shares your view does not make it any more the law than before.

  4. Okay let’s break this down in plain language and see if we can agree. For starters let’s take MM’s project out of the equation and just focus on the case law of Prometheus and Diehr.

    The conclusion of the Prometheus analysis is summed up as follows:

    Pre and Post Solution Activity can’t make a LoN a patent eligible application.

    Okay I assume we can all agree with that.

    Prometheus started with a manifestly evident Law of Nature, in the form of a naturally occurring correlation. Then after pretty much stating the LoN they applied it. And that’s it!

    In does not matter if the Pre or Post Solution for applying the LoA was new, old, novel, mental, physical, new thought or whatever. If the entire law of nature is covered it won’t save the claim.

    I gave a similar example in my “Integration Analysis” on Ultramercials claim. I stated:

    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

    The above is nothing more than stating a concept then applying it, just like Prometheus did with a LoA. And Pre and Post Solution won’t save it. It must be integrated.

    Now, Diehr started with a process for curing rubber and used a mathematical algorithm in the process. There WAS NO pre or post solution in Diehr because Diehr didn’t simply state the Arrhenius equation and say apply it.

    Look at these kids on YouTube doing the Arrhenius equation.

    link to youtu.be

    Pretty cool eh? But if any of them try to file a patent on their application of Arrhenius they would suffer the same fate as Prometheus. Indeed if they want a patent they will need to integrate the equation into a process that is doing something more than just solving the equation. It does not matter if it’s curing rubber, launching the space shuttle, or selling more blue light specials at Kmart, as long as others can still solve the Arrhenius equation itself the claim is a patent eligible application.

    Most important, remember Pre and Post solution activity analysis is ONLY applied when you have a manifestly evident judicial exception. There is no legal basis to extrapolate this extra solution activity analysis to a wholesale point of novelty test, mental steps test, claim dissection, business method or software exclusion, category conflation or any other fanciful theory, pet project or personal view one may have. Ned, you and MM need to stop this! And Leo. shame on you for joining them.

    The law is the law. And we need to be honest about it is, even if we wish it were different.

  5. Great post there Leo, at 10:30 AM.

    Mr. 101, you really need to read it and digest it. The way the SC sees it is simple: Start with the ineligible and see if enough has been added.

    Prometheus, conventional “data gathering” (Prometheus) is not enough.

    Flook, the “process” modified was itself routine and conventional, very high level. Not enough.

    Benson, the claims recited a series of abstract steps. The claims added nothing more than using old machines to do the abstract calculations.

    Bilski, hedging risk is abstract. The claims added nothing more than conventional implementation.

  6. Leopold,

    I respectfully and completely disagree with your viewpoint.

    I am sure that there is some common ground. However, the “and stop looking for your “dissection” and “point-of-novelty” bogeymen in every comment” is in response to the (in my opinin) non-stop perversion being foisted as law (in contrast to any I-wish-the-law-was-thus). MM has never relied on integration as a part of his pre (and mostly post) decision “I told you so’s.” That is precsiely why there is so much delicious irony in MM being the first one to link to the Office post-Prometheus guidelines. Pure and simple, the guidelines simply do not hew to his theories.

    As to the individual steps in Diehr, rest assured, each and every one of those steps was in fact conventional. In fact the results did not really distinguish from the conventional! The subtlety of footnote 4 (“We note that the petitioner does not seriously contest the respondents’ assertions regarding the inability of the industry to obtain accurate cures on a uniform basis.“) is easily lost, especially if the particular art field is something that you are not familair with. In other words, accurate cures on a uniform basis were already well within the conventional art.

    Although it is possible by using well-known time, temperature, and cure relationships to calculate by means of an established mathematical equation when to open the molding press and remove the cured product, the individuals argued that the industry had not been able to obtain uniformly accurate cures because the temperature of the press could not be precisely measured, making it difficult to do the necessary computations to determine cure time. The individuals characterized their contribution to the art as residing in the process of constantly measuring the actual tempera-ture inside the mold, with these temperature measure-ments being automatically fed into a computer which recalculates the cure time by use of the mathematical equation and ultimately signals a device to open the press at the correct moment.

    If one does identify any “point of novelty” such would be the use of the BIG COMPUTER BRAIN (to use the colloquialism) as a method of constantly using the already conventional formula with the already conventional inputs. All of the individual elements were already there. It was in the integration of the elements and the ability to use the computer (for what computers are capable of) that earned the patent.

    While the applicants may have pitched the better accuracy, the truth is that there was no improvement in the thermocouples themselves. They were no more accurate before the invention than after. The true novelty was in the integration.

    The boogeyman rages when one simple idea is put forward: ALL STEPS in a 101 eligible claim can be old and conventional with NO identifiable “point of novelty” individual element!

    This takes the logic of “the fact that one or more of the steps in the process might not, in isolation, be novel or independently eligible for patent protection being irrelevant to the question of whether the claims as a whole recited subject matter eligible for patent protection under 101” to its utmost.

    As I identified, MM’s 101 categories do not match how the statute is actually written (in my useful arts sub-thread). Of course, he would rather kick up a dust cloud than actually address that point, and in this regard, nothing has changed.

    This also points out the clear fact that “point of novelty” is often used, or rather misused in discussions on these threads and that the true understanding of the concept is that the claim as a whole is the point of novelty in the context of the legalpoints under discussion.

    Also contrast this with the dissent which is not law of “Stevens, J., joined by Brennan, Marshall, and Blackmun, JJ., dissenting, expressed the view that no program-related invention is a patentable process under 35 USCS 101 unless it makes a contribution to the art that is not dependent entirely on the utilization of a computer

    If you focus on “common ground” in order to “get along” you run the very real risk of obfuscation and the empowering of whimsical “policy” far too easily introduced into law. There are very real differences of philosphy that come forward out of the emphasis on the differences in the views. This wanting to focus on commonality is not the way forward, no matter how much more pleasant it may be.

  7. Dennis Crouch essentially asked the same question and I answered it above

    Actually, no, you didn’t. But I suppose that’s what I expected.

    The funny thing is that I think your “integration analysis” concept is just fine, and that it can be helpful in understanding the scope of patentable subject matter under the case law. But you are so anxious to disagree with me (and Malcolm) that it’s not really possible to have a discussion, is it?

    Once again, the court in Prometheus very clearly (in my view) said that the combination of steps in Diehr was NOT conventional and old. Yes, it did so in a sideways manner, but referencing the Diehr court’s decision, the Prometheus court said: “It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, al­ready in use, or purely {conventional}.”

    “Nowhere [in Diehr] a suggestion that [the combined]steps were conventional.” Compare to Prometheus facts, where the steps (as a whole) are conventional. This is precisely how judges distinguish cases, 101 Expert, to demonstrate why they don’t have to come to the same conclusion. The only reason for the Prometheus Court to point out that the Diehr Court did NOT find the steps in the Diehr claims to be conventional is so they can say that the situation is different here, where the steps (taken as a whole) ARE conventional.

    In fact, as you suggest, the reason the steps in Diehr were not conventional is that the application (integration, if you will) of the equation created a new process flow. The linking of the equation to the process steps (the integration of the equation with the process steps, if you wil) clearly impacts how those steps flow, i.e., it creates a new combination of steps.

    Contrast that to Prometheus. There, the flow of the process is identical to what has always been done. The only difference is that we’re using a new “fact” about the proper threshold. This new fact doesn’t change the look of the process at all. The new fact is not “integrated” with the steps of the process and does not convert them into a new combination of steps; it’s merely an input to a conventional decision point.

    So what are we arguing about again?

    When MM says that “The Supreme Court held that the claims in Prometheus were ineligible because the only transforming (i.e., otherwise patent eligible) elements in the claim were ‘old and conventional’,” I think he’s right. But I also think that this is not a contradiction of your intuitive understanding of Section 101′s scope, nor do I think it contradicts your “integration analysis.”

    The new correlation fact in Prometheus was not integrated into the other steps of the process – thus those old steps, as a whole, remained routine and conventional. In Diehr, the equation was integrated into a set of steps that, each standing alone, could be regarded as conventional. Because of the integration, the steps as a whole formed a new combination and were NOT routine and conventional.

    You know, if you stop lecturing people to “read Prometheus” and stop looking for your “dissection” and “point-of-novelty” bogeymen in every comment, you might find that there is a fair amount of common ground here.

  8. ” have to laugh as this is the closest I have seen anyone come to reconciling Prometheus with the Supreme Court’s prior precedents. And from admitted non-lawyer (and non-academic).”

    It’s interesting that Breyer chose “integration” as it stands for bring together diverse processes and ideas. Far too much time is spent among the patent community arguing petty positions and trying to advance agenda’s and pet projects.

    So It is my hope and intention that the attorneys and academics come to reconciliation soon as it would make the job of the Actual Inventor so much easier.

    Maybe we can begin with Dennis Crouch, if he even reads the response. None the less your interest and willingness to help anon is greatly appreciated.

  9. I have to laugh as this is the closest I have seen anyone come to reconciling Prometheus with the Supreme Court’s prior precedents.

    And from admitted non-lawyer (and non-academic).

    Of course, there are other blunders in Prometheus that still defy reconcilation.

  10. Hello Leo:

    Dennis Crouch essentially asked the same question and I answered it above at

    Sep 07, 2012 at 06:40 PM.

    If you are interested you can read it there.

    Thank You

  11. “Prometheus stood for no more than this Court honored principle.”

    “Perhaps that is what Breyer meant as he stressed that Prometheus only affirmed existing precedent (and Diehr being the case most on point in that precedent)…”

    Exactly.

  12. Prometheus stood for no more than this Court honored principle.

    Perhaps that is what Breyer meant as he stressed that Prometheus only affirmed existing precedent (and Diehr being the case most on point in that precedent)…

  13. Hello Dennis:

    On the surface it does seem that the Court is advocating ignoring elements as opposed to viewing the claims as a whole. However those additional elements are extra solution activity, (pre or post).

    And as established in Flook, extra solution activity will not transform a judicially created exception into a patent-eligible application of a judicially created exception. But to take this to the extreme, as some advocate doing, would be a full blown implementation of dissection. The Diehr Court recognized this flaw and fallacy in the Flook Courts analysis and corrected it and warned future Courts what would happen if it was ignored.

    Please read Diehr: “[Footnote 12] [It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook, which noted that a mathematical algorithm must be assumed to be within the "prior art." It is from this language that the petitioner premises his argument that, if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the § 101 determination. To accept the analysis proffered by the petitioner would, if carried to its extreme, make all inventions unpatentable, because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the petitioner would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e.g., Gottschalk v. Benson, supra; and Cochrane v. Deener, 94 U. S. 780 (1877). ]

    The Prometheus Court also was careful not to advocate dissection, a generic stripping away and ignoring of elements, and limited it’s analysis to extra solution activity in the wake of a judicially created exception. In this particular case, a Law of Nature. The use of (new and old) was limited to determining if the Law of Nature was simply being claimed by reducing it to a series of steps. in other word stating the LoN and saying apply it.

    Please read Prometheus:

    “Still, as the Court has also made clear, to transform an
    unpatentable law of nature into a patent-eligible applica- tion 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.”

    However this was not a resurrection by the Court of a point of novelty test. And in following Diehrs warning, and to make sure it’s use of pre and post solution activity was not taken to the extreme or abused, the Prometheus Court carefully and explicitly chose to characterize the Diehr claims as “integrated” which corresponds to (conjunction, and combination) as used in the Diehr case.

    Please read 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. Those steps included “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time.” Id., at 187. It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, al­ ready in use, or purely conventional. And so the patentees did not “seek to pre-empt the use of [the] equation,” but sought “only to foreclose from others the use of that equa­ tion in conjunction with all of the other steps in their claimed process.” Ibid. These other steps apparently added to the formula something that in terms of patent law’s objectives had significance—they transformed the process into an inventive application of the formula.” [12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC.
    Opinion of the Court].

    If we follow the case law history on 101 what establishes patent-eligible subject matter is the application of a concept that is “integrated” into the process as a whole. Prometheus stood for no more than this Court honored principle. The question that no one wants to ask is that after application, what constitutes “integration” of a concept or a Court created judicial exception?
    I will leave it at that for now.

    Thank You for your time.

  14. Leopold Bloom said: Expert, calling me confused and accusing me of intellectual dishonesty and misrepresentation of the law does not strengthen your argument.

    Wrong: I did not accuse you above. I did make a general statement that “To completely ignore, Diehrs claims as a whole, integration, and the prohibition of conflating new at 101 with novelty at 102 , which the Prometheus Court explicitly relied on is the height of intellectual dishonesty and misrepresentation of the law.” Now if you have not done any of this then you have nothing to worry or complain about. Let’s move on.

    Leopold Bloom said: “The Court in Prometheus very carefully distinguished Diehr by saying that the operations in Diehr’s claims were NOT conventional, while the eones in the claims at issue were.”

    Wrong, there is no such quote in Prometheus. The fact is the individual steps in Diehr were all old. The only thing new was the “USE” of a well-known mathematical equation. This made the claims as a whole a new use of an old process.

    Leopold Bloom said: “The steps in Diehr were not conventional precisely because the law of nature was actually put to use in those steps.”

    Wrong, there was no Law of Nature in Diehr.

    Leopold Bloom said: If you want to call the approach in Diehr “integration analysis,” then fine.”

    Wrong, that is not Integration Analysis, nor what I want to call it. The Court in Prometheus referenced Diehr for integration, and it had nothing to do with conventional or non-coventional steps. I do not simply call anything “integration analysis” but the USPTO in view of Prometheus does explicitly rely on integration in it’s analysis of 101 statutory subject matter. I have gone on record in applying “Integration Analysis” at your request, to current cases and relying on Diehr, Prometheus, and the USPTO Guidelines as authority. You and MM have simply ignored the analysis without even attempting a rebuttal. Yet you and MM have taken to misstating the exact words of the Court to support your own theories and opinions. And I am not going to let you get away with it.

    Each time you and MM claim something is an exact quote from the Court that is not an exact quote, I am going nail you on it.

    Each time you and MM claim your personal opinion/interpretation is the actual holding of the Court I am going to call you on that too.

    Leopold Bloom said: “Once again, the Prometheus Court’s statement that “”[Well-understood, routine, conventional activity previously engaged in by scientists in the field] is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law” is pretty darn clear. This statement was also clearly in the context of explaining why the claim at bar was not statutory. If you’re trying to tell me that they were actually referring to Diehr with this statement, then I believe that you are mistaken.”

    Wrong. Simply repeating this one quote then making conclusionary statements does not make your opinions facts or law. And I will not let you or MM get away with it.

    Fact is IF what you believe is indeed correct the Prometheus holding would be the explicit creation of a point of novelty test. However that would be in conflict with Supreme Court Precedent. For it is well established in the Court case law that even if all elements are old in the art, the combination ( integrated) can still be patentable subject matter.

    There is simply no requirement for new element(s) to earn a patent. The point of novelty is the claim itself, taken as a whole, and fully integrated into the process. That Prometheus relied on Diehr, especially for integration, and refers to Diehr as the case most on point can be not disputed.

  15. OK, fine. Let’s take a quote from near the bottom of your excerpt, where the Court gives the “upshot” with respect to the claims “as a whole.” Note that I’ve redacted the quote a little, to put it even more succinctly than the Court, but I don’t think I’ve changed the meaning:

    [W]ell­ understood, routine, conventional [steps] already engaged in by the scientific community … add nothing significant beyond the sum of their parts taken separately. For these reasons we believe that the steps are not sufficient to transform un­patentable natural correlations into patentable applica­tions of those regularities.

    Exactly how is this different than the restatement that MM provided, and that I defended? Am I still reading this out of context?

  16. Leopold Bloom said : “In my view, the most convincing is this one:
    “[Well-understood, routine, conventional activity previously engaged in by scientists in the field] is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.”

    Leo, this is an ( unintentional on your part? )misrepresentation of the holding of the case. If you read the quote in context of the Prometheus case, it is the third of four examples the Court is using to refer to the fact that the claims are not any different from the unpatentable law of nature itself. The Prometheus Court is using the 4 examples as support for the holding the claims are nothing more than than stating the law of nature and saying apply it. Which, as we all know now, is one step shy of integration. The fact that you repost one quoted example, out of context, and agree it backs up MM’s statement that the Prometheus case holding was that the claims in Prometheus were ineligible because the only transforming elements in the claim were “old and conventional”, makes you in my opinion, seem uniformed about this particular case.

    To correct this I m posting the entire section from the case with the quote you relied on, in full context.

    “The question before us is whether the claims do signifi­ cantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible pro­ cesses that apply natural laws? We believe that the an­ swer to this question is no.

    A
    If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself. A patent, for example, could not simply recite a law of nature and then add the instruction “apply the law.” Einstein, we assume, could not have patented his famous law by claiming a process consisting of simply telling linear accelerator operators to refer to the law to determine how much energy an amount of mass has produced (or vice versa). Nor could Archime­ des have secured a patent for his famous principle of flotation by claiming a process consisting of simply telling boat builders to refer to that principle in order to deter­ mine whether an object will float.
    What else is there in the claims before us? The process that each claim recites tells doctors interested in the subject about the correlations that the researchers discovered. In doing so, it recites an “administering” step, a “determining” step, and a “wherein” step. These addition­ al steps are not themselves natural laws but neither are they sufficient to transform the nature of the claim.

    First, the “administering” step simply refers to the relevant audience, namely doctors who treat patients with certain diseases with thiopurine drugs. That audience is a pre-existing audience; doctors used thiopurine drugs to treat patients suffering from autoimmune disorders long before anyone asserted these claims. In any event, the “prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.’” Bilski, supra, at ___ (slip op., at 14) (quoting Diehr, 450 U. S., at 191– 192).

    Second, the “wherein” clauses simply tell a doctor about the relevant natural laws, at most adding a suggestion that he should take those laws into account when treating his patient. That is to say, these clauses tell the relevant audience about the laws while trusting them to use those laws appropriately where they are relevant to their deci­ sionmaking (rather like Einstein telling linear accelerator operators about his basic law and then trusting them to use it where relevant).

    Third, the “determining” step tells the doctor to deter­ mine the level of the relevant metabolites in the blood, through whatever process the doctor or the laboratory wishes to use. As the patents state, methods for determin­ ing metabolite levels were well known in the art. ’623 patent, col. 9, ll. 12–65, 2 App. 11. Indeed, scientists routinely measured metabolites as part of their investiga­ tions into the relationships between metabolite levels and efficacy and toxicity of thiopurine compounds. ’623 patent, col. 8, ll. 37–40, id., at 10. Thus, this step tells doctors to engage in well-understood, routine, conventional activity previously engaged in by scientists who work in the field. Purely “conventional or obvious” “[pre]-solution activity” is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law. Flook, 437 U. S., at 590; see also Bilski, 561 U. S., at ___ (slip op., at 14) (“[T]he prohibition against patenting ab­ stract ideas ‘cannot be circumvented by’ . . . adding ‘insig­ nificant post-solution activity’” (quoting Diehr, supra, at 191–192)).

    Fourth, to consider the three steps as an ordered combi­ nation adds nothing to the laws of nature that is not al­ ready present when the steps are considered separately. See Diehr, supra, at 188 (“[A] new combination of steps in a process may be patentable even though all the constitu­ ents of the combination were well known and in common use before the combination was made”). Anyone who wants to make use of these laws must first administer a thiopurine drug and measure the resulting metabolite concentrations, and so the combination amounts to noth­ ing significantly more than an instruction to doctors to apply the applicable laws when treating their patients.
    The upshot is that the three steps simply tell doctors to gather data from which they may draw an inference in light of the correlations. To put the matter more succinctly, the claims inform a relevant audience about certain laws of nature; any additional steps consist of well­ understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. For these reasons we believe that the steps are not sufficient to transform un­ patentable natural correlations into patentable applica­tions of those regularities.” [ MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC. 566 U. S. ____ (2012) ]

  17. Expert, calling me confused and accusing me of intellectual dishonesty and misrepresentation of the law does not strengthen your argument. Perhaps you could omit this stuff in the future?

    The Court in Prometheus very carefully distinguished Diehr by saying that the operations in Diehr’s claims were NOT conventional, while the eones in the claims at issue were. If you want to call the approach in Diehr “integration analysis,” then fine. The steps in Diehr were not conventional precisely because the law of nature was actually put to use in those steps. The claim, as a whole, described a process that looked different from prior art processes. In Prometheus, in contrast, the claimed process, as a whole, was entirely conventional except to the extent that it purported to apply a new piece of information.

    Once again, the Prometheus Court’s statement that “”[Well-understood, routine, conventional activity previously engaged in by scientists in the field] is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law” is pretty darn clear. This statement was also clearly in the context of explaining why the claim at bar was not statutory. If you’re trying to tell me that they were actually referring to Diehr with this statement, then I believe that you are mistaken.

  18. 101 – I have not been fully following your arguments, but I'm just wondering how the Prometheus decision fits within your analysis structure. My reading of Prometheus is that the court identified a natural process that formed part of the claims.  At least some of the claims included additional limitations that might have helped, but the Supreme Court ruled that those were "not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law."

     

  19. MM: “There are no “blatant misrepresentations” of law or fact and those who claim otherwise are lying, confused or ignorant.”

    Those that claim an individual element/step, (old, mental or otherwise) can be stripped away and ignored is guilty of “blatant misrepresentations” of law or fact and indeed lying, confused or ignorant.”.

  20. Hello Leo:

    It’s not a restatement of the Court because the the Court never stated such. Where you seem to be confused is with the Courts use of “conventional activity”. This comes directly from Diehr’s “Integration Analysis” and is specifically quoted by the Prometheus Court in that context, and that context only. Please read the Prometheus Courts reference of Diehr’s use of conventional activity below:

    “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. Those steps included “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time.” Id., at 187. It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, al­ ready in use, or purely {conventional}. And so the patentees did not “seek to pre-empt the use of [the] equation,” but sought “only to foreclose from others the use of that equa­ tion in conjunction (Integration) with all of the other steps in their claimed process.” Ibid. These other steps apparently added to the formula something that in terms of patent law’s objectives had significance—they transformed the process into an inventive application of the formula.”

    Leo, hopefully you will now see that the Prometheus Court is referring to Diehr’s claims as a whole approach and integration of all the steps into the process, and not to dissecting and ignoring any element for ANY reason. And certainly not to MM’ meritless and baseless project. Also you may care to read my post Sep 06, 2012 at 05:45 PM that explains the difference of Diehr’s use of “new” at 101 and “new” ( novelty at 102).

    To completely ignore, Diehrs claims as a whole, integration, and the prohibition of conflating new at 101 with novelty at 102 , which the Prometheus Court explicitly relied on is the height of intellectual dishonesty and misrepresentation of the law.

  21. Leaving aside the [oldstep]+[newidea] stuff for the moment, Malcolm’s statement that “The Supreme Court held that the claims in Prometheus were ineligible because the only transforming (i.e., otherwise patent eligible) elements in the claim were ‘old and conventional’” seems like a pretty reasonable restatement of Prometheus to me.

    He even backed it up with specific quotes from the case. In my view, the most convincing is this one:
    “[Well-understood, routine, conventional activity previously engaged in by scientists in the field] is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.”

    Is the above what you find “baseless,” “vacuous,” and “meritless”?

    Or is your objection that MM wants to extrapolate to a rule that claims in the form “old step + new idea” are unpatentable?

  22. This is just a restatement of the holding of the case.

    No, it clearly is not just a restatement. It’s a baseless and vacuous attempt to shoehorn into your [oldstep] + [newidea] mode which quite frankly does not fit, and for which you are the single proponent anywhere. It’s completely meritless.

    And this is even within the ten day window you wanted (of course, it is also outside the ten day window as well).

  23. 101 Integration Expert: The eligibility of the claims in Prometheus did not turn on any one element.

    MM:Strawman. I never said that eligibility “turned on one element.”

    101 Integration Expert: Below is a copy and paste of your exact words:

    MM said at Sep 06, 2012 at 01:04 PM : “So whether an element of a claim is “old” certainly “has a place” in 101, at least when the “invention” is an attempt to claim an ineligible fact or “naturally occuring correlation” as in Prometheus. That was a 9-0 decision, by the way.”

    101 Integration Expert: In the above paragraph you are clearly and specifically referring to a single element. This is demonstrated by your use of the singular expression, “an element of a claim”. Then you ended your argument with the conclusion…

    “an attempt to claim an ineligible fact or “naturally occuring correlation” as in Prometheus. That was a 9-0 decision, by the way.”

    The above conclusion, stated by you, shows that you were indeed attempting to argue that “eligibility” turned on “one” element. That element being , “an element of a claim that is “old”.

    But let the facts of the Prometheus case show, that all three elements were considered as a whole, by the Court. Which is the doctrine used in Diehr and essential to “Intergration Analysis.

    No dissection ( strip away ) occurred.

    No ignoring occurred.

    Your ever evolving theory and personal pet project to somehow ignore or dissect steps still has no legal basis, or foundation in reality. That’s a fact you need to face. Next, your notion that the Novelty in 102 also has a place in 101 is wrought with fallaciousness and obfuscatory thinking. As explained by the Diehr Court, the “new” in 101 is not the same as the “new” in 102, which is for Novelty.

    The “new” referred to by the Court in 101 and specifically in Prometheus is for the purpose of seeing if the claims as a whole do more than state a LoN and say apply it. If indeed after reducing the LoN to steps the claims offer no more than the LoA itself then there is nothing “new” at 101. However if the LoN in Prometheus had been Novel, as in recently discovered, it could have conceivably passed 102, while still failing 101 for being nothing more than a LoA that is not patent eligible.

    Finally if the LoN in Prometheus had been stated, applied, and “integrated” in the process as a whole, it would have passed 101, since the LoA itself would not have been claimed.

    This is all the case stood for. Nothing more. Nothing less. My best advice to you is to put down the juvenile invectives and study your “Integration Analysis.”

    You can begin by reading the guidelines.

    link to uspto.gov

  24. including the endless stream of insults

    There was a post on a thread about a month or so ago that chronicled a series of abusive posts – running at a rate of 90-some percent for a particular individual over a short period of time.

    Take a guess as to just who that individual was.

    Begins with M and ends with M – and oh, yeah, just two letters.

    It does cause one to wonder what Prof. Crouch loves.

  25. For the record, none of the above is new. In the wake of the case, I provided the same citations and observations. There are no “blatant misrepresentations” of law or fact and those who claim otherwise are lying, confused or ignorant.

  26. The eligibility of the claims in Prometheus did not turn on any one element.

    Strawman. I never said that eligibility “turned on one element.” I said very clearly and specifically that the claims in Prometheus were ineligible because the only transforming (i.e., otherwise patent eligible) elements in the claim were “old and conventional.”

    This is just a restatement of the holding of the case.

    The quotes below and similar quotes appear repeatedly throughout the opinion:

    The three additional steps in the claimed processes here are not themselves natural laws but neither are they sufficient to transform the nature of the claims. The “administering” step simply identifies a group of people who will be interested in the correlations, namely, doctors who used thiopurinedrugs to treat patients suffering from autoimmune disorders. Doctors had been using these drugs for this purpose long before these patents existed.

    [the metabolite level determination] step simply tells doctors to engage in well-understood, routine, conventional activity previously engaged in by scientists in the field. Such activity is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.

    simply appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws,phenomena, and ideas patentable

    So, as recognized by the Supreme Court, the Prometheus claims comprises two elements: (1) an old, conventional and patent eligible element and (2) an ineligible “naturally occuring correlation” (or more accurately, a step of thinking about that correlation — the Supreme Court acknowledges this as well and let me know if you need the cites which prove that fact).

    Obviously the transforming element(s) needed to be compared to the prior art to determine if, in fact, it was old, exactly as any elements in claims are compared to elements in the prior art during 102 and 103 analyses. That analysis was performed and the result (= the element was old) was not disputed by either party.

    More quotes:

    the steps in the claimed processes (apart from the [ineligible] natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field.

    the Government argues that virtually any step beyond a statement of a law of nature itself should transform an unpatentable law of nature into a potentially patentable application sufficient to satisfy §101’s demands. …This approach, however, would make the “law of nature”exception to §101 patentability a dead letter. The approach is therefore not consistent with prior law.

    I’d love to hear Dennis’ thoughts on the “merits” of our respective arguments, 101E. But he seems to be unwilling to take a stand. Maybe Dennis just loves reading your lucid and insightful comments, 101E, including the endless stream of insults. I find that impossible to imagine but stranger things have happened.

  27. The Supreme Court held that the claims in Prometheus were ineligible because the only transforming (i.e., otherwise patent eligible) elements in the claim were “old and conventional.”

    Can you provide the exact quote from Prometheus of the Court saying this?

    No, you can’t because the Court never held such.

    “So whether an element of a claim is “old” certainly “has a place” in 101, at least when the “invention” is an attempt to claim an ineligible fact or “naturally occuring correlation” as in Prometheus. That was a 9-0 decision, by the way.”

    Wrong. The eligibility of the claims in Prometheus did not turn on any one element, old, new, or otherwise. The claims were taken as a whole as Diehr says they must. Furthermore until you are able to reconcile Prometheus with Diehrs “Integration Analysis” you have zero credibility in discussing the holding of the case.

  28. 101IE (being old), is strictly a 102 issue and has no place in 101

    The Supreme Court held that the claims in Prometheus were ineligible because the only transforming (i.e., otherwise patent eligible) elements in the claim were “old and conventional.”

    So whether an element of a claim is “old” certainly “has a place” in 101, at least when the “invention” is an attempt to claim an ineligible fact or “naturally occuring correlation” as in Prometheus. That was a 9-0 decision, by the way.

    Pure MM, ( No basis whatsoever in law, logic, or fact. )

    Dennis, is the quote directly above the kind of civil discourse you are looking for? If so, congratulations!

  29. I will not stop discussing the law, citing the cases, and answering questions substantively when asked.

    If this bothers you Mr. Heller, then please don’t read it. And don’t reply to anything I post.

  30. “You do not represent my position accurately in any of your posts.”

    I have given you plenty of opportunity to clarify your position on any point of law I have discussed. Even going as far as to ask you to just reply yes, or no. But you do not answer yes, or no. You do not even address the topics most of the time. Instead you want to continue to post on how you are not being accurately characterized. Here is another tip. If you can’t just be quiet then when you do reply, just be honest.

  31. Mr. 101, then let me be clear.  You do not represent my position accurately in any of your posts.  It is a material waste of my time, your time, and everyone else's time to attempt to engage in substantive discussions with you to the extent you characterize the positions of others in your posts.

  32. “Mr. 101, we have gone through integration before.”

    Mr. Heller, the fact is I challenged you to perform “Integration Analysis” on Ultramercial’s claims according the USPTO guidelines on Integration. You flat out refused. Which is your right. Later you did ask a list of questions on integration in which I answered. After that you mysteriously left the discussion, never to return. And we both know why. And just to be clear I m not discussing your positions in this thread. I am stating facts of law backed by legal citations. If you dare state opinions that are contrary to the law then you better have case law to cite and be prepared to discuss the case to it’s ultimate conclusion. Otherwise you should just avoid saying anything at all.

    Oh..and for the record here are your questions and my answers on Integration Analysis.

    Mr. Ned Heller: 1) What is the process into which the abstract idea or concept is being integrated?”

    Mr. 101: The steps 1-11 of Ultramercials claims.

    Mr. Ned Heller: 2) Is this process patent eligible to begin with?

    Mr. 101 : Yes, see 35 U.S.C. 101, 102 (b). And it is applied. (See Diehr on application ) However Prometheus says there needs to be something more to make it an “inventive” application. (See Prometheus on Integration )

    Mr. Ned Heller: 3) Finally, what is the abstract concept in Ultramercial which is being integrated?”

    Mr. 101: using advertising as currency.

    The Ultramercial claim would pass “the integration analysis” as it is a process that includes the concept of using advertising as currency as a limitation, with additional steps that “integrate” the concept into the process and are sufficient to narrow the scope of the claim so that others are not foreclosed from using the concept of using advertising as currency in different applications. (See The USPTO New Guidelines for Authority.)

  33. Ned Heller: “True. Perhaps, AI, you could then stop telling others what my position is? Please?”

    Why? As long as I am telling the truth, which you just admitted I was, why should I be censored?

  34. anon, if this is correct, then I would agree with you. Changing construction on appeal normally results in a new trial. I think the exception would be if the result would not have been changed by the change in the construction.

  35. “Mr. 101, my position has long been that a lot BMs have a 102/103 problem.”

    Your position then is wrong.

    Pure and utter conjecture. Pure BS,

    Pure MM, ( No basis whatsoever in law, logic, or fact. )

    So called Business Methods are no more suspect at 102/103 than any other process or category.

  36. Mr. 101, we have gone through integration before.  

    This post series started when I suggested you did not understand my position on Benson.  You backed off, and then repeated your misstatement, and then did it again.  Your most recent post is another in a series of mistatements.

    I will not be drawn in, Mr. 101.  All I can ask you to do is stop saying anything about me or my positions at all.  You clearly do not understand them, or at least, pretend not to.  

  37. The issue is machines and technology requirements , not judicial exceptions of mathematical algorithms.

    There is no machine or technology requirement. Just say so right now and this debate can be over. Stop weaseling around.

  38. Your position is irrelevant to the fact that the statute, or court does not require a machine or any technology whatsoever for a patent to pass 101.

    So you are essentially stating a red herring to distract from the above fact.

    The only requirement by the Court for 101 statutory subject matter, patent subject matter eligibility, is Concept, Application, and Integration.

    Do you deny this Mr. Heller???

    Yes? or No?

  39. “It’s certainly a “meaningful” response to your comment directly at me personally, i.e., “101 Integration is wrong about “no place in 101″ but not as wrong as Ned or MM would paint him to be.”.

    My position at Reply Sep 04, 2012 at 09:02 PM was

    “Novelty ( new ) or Non Novel (being old), is strictly a 102 issue and has no place in 101. The new requirement in 101 is NOT the same as the Novelty ( new ) in 102. This was made explicit in Diehr.”

    Neither you Mr. Mooney, nor Mr. Heller, or ANYONE has been able to dispute that fact. If you have case law that says otherwise that you wish to cite, then by all means please do cite it.

  40. Mr. 101, "Your position has no relevance to any case law discussion, especially to the substantive points I made in this thread."

    True. 

    Perhaps, AI, you could then stop telling others what my position is?  Please?

  41. Mr. 101,  I wrote that simply reciting a machine to calculate does not save a mathematical algorithm.  You said that my position was that the use of a programmed computer somehow rendered the claim unpatentable.  When I called you on this, you denied saying that that was your intent in your post.  But then you repeated it.

    Now you state "the statute, or court does not require a machine or any technology whatsoever for patent to pass 101."

    What does this have to do with my point above that the citation of a programmed computer to calculate otherwise ineligible mathematical algorithm does not render it eligible?  It has nothing to do with my position.

  42. “Mr. 101, my position has long been that a lot BMs have a 102/103 problem. ”

    Your position has no relevance to any case law discussion, especially to the substantive points I made in this thread.

  43. “101 Integration is wrong about “no place in 101″ but not as wrong as Ned or MM would paint him to be.”

    No place in 101 for Novelty, not for New. I already pointed out above that the new in 101 was different than the new in 102, and cited the exact passages and quotes from Diehr that explain the differences.

    If anyone wants to dare dispute that then they have to come back with case law showing how Diehr was overturned on that point.

    No one has and no one will.

  44. MM: ” Dennis, do you want to address this or should I?

    Or is this just something we have to put up with ala great grampa drooling at the dinner table?”

    Well, apparently you want to see if Dennis Couch will continue to allow your inappropriate and unprofessional behavior on this blog. And apparently the answer is yes he will.

    But as rude and crude as you are you still can’t reply with any case law, logic or fact to support your position.

  45. That’s not what I wrote. It’s what YOU wrote. You are simply and purposely accusing me of doing what you do to deflect from the fact you have lost this debate on the merits. Here’s is some advice. If you can’t reply with case law and fact, admit you are wrong and thank me for the debate, or just ignore my posts . That way you won’t lose face.

    Bottom line let the record show that you Mr. Ned Heller could not dispute the following statement, which now stands as fact :

    “” the statute, or Court does NOT requires a machine or any technology whatsoever for a patent to pass 101.”

    CASE CLOSED!

  46. How is the post at 10:56 AM in any way meaningful?

    It’s certainly a “meaningful” response to your comment directly at me personally, i.e., “101 Integration is wrong about “no place in 101″ but not as wrong as Ned or MM would paint him to be.”.

    If you do not wish to engage in a discussion about the role of prior art in a 101 analysis, simply say that you do not wish to engage. If you do wish to engage, then please do so with some small amount of integrity and avoid comments such as the one above.

    In any event, it’s encouraging to see you applying your legendary skills as a legal referee to Mr. 101 Expert’s comments. I believe that’s a first!

  47. 101 Integration is wrong about “no place in 101″

    Thank you. It appears we are making progress.

    not as wrong as Ned or MM would paint him to be.

    Actually he’s exactly as wrong as I paint him to be. Let me know if you want to discuss further and we can start from first principles. You already on the record acknowledging that so-called “pure” mental processes are ineligible for patenting.

  48. Thanks Inviting,

    So if I understand you, the court will not need to automatically raise the issue if the issue has already been raised in the well-pled complaint.

    But that’s a bit of a smokescreen as it can be fairly taken that the issue does not need to be raised if already raised (or is there a different assumption that is not so obvious in your statement?) – in other words, that’s not the set of cases under discussion.

  49. “Well, if subject matter eligibility is going to be a threshold issue shouldn’t 101 be automatically raised on every subject matter category”

    The answer to this is no, and the reasons are obvious, whether it is a court or a defendant who would raise the issue.

  50. Even if instructions to infringe are issued by the inducer, you still have to show that customers follow the instructions.

    Maybe. Depending on the circumstances, a reasonable jury might infer that customers follow the instructions. That was one of the issues here – the court says that an inference that customers combined several scattered instructions was not reasonable. The clear implication is that straightforward instructions that encompass the entire claimed method might be enough to support an inference of direct infringement.

    I don’t think I’d bet my entire case on a reasonable inference, though. I think it might be wise to get some actual usage evidence into the record.

  51. 101 Integration is wrong about “no place in 101” but not as wrong as Ned or MM would paint him to be.

    The “new” of 101 is different, being a part of the phrase “new and useful,” and is meant to cover different things, but there can be (and is often) overlap.

    Of course the reason for the overlap might be suspect: so that the Court can keep its fingers in the patent pie. But that’s a different story.

  52. MM: “I don’t have a problem with expressions of wishful thinking or opinions about how things should be.”

    This much we know. But do you have a problem with the majority opinion in Diehr?

    “The fact that one or more of the steps in respondents’ process may not, in isolation, be novel or independently eligible for patent protection is irrelevant to the question of whether the claims as a whole recite subject matter eligible for patent protection under § 101. As we explained when discussing machine patents in Deepsouth Packing Co. v. Laitram Corp., 406 U. S. 518 (1972):
    “The patents were warranted not by the novelty of their elements, but by the novelty of the combination they represented. Invention was recognized because Laitram’s assignors combined ordinary elements in an extraordinary way — a novel union of old means was designed to achieve new ends. Thus, for both inventions, ‘the whole in some way exceed[ed] the sum of its parts.’ Great A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 340 U. S. 152 (1950).” Id. at 406 U. S. 521-522 (footnote omitted).
    In order for the dissent to reach its conclusion, it is necessary for it to read out of respondents’ patent application all the steps in the claimed process which it determined were not novel or “inventive.” That is not the purpose of the § 101 inquiry, and conflicts with the proposition, recited above, that a claimed invention may be entitled to patent protection even though some or all of its elements are not “novel.” Diamond v. Diehr – 450 U.S. 175 (1981)

  53. “How do you feel about singling out things not “of technology,” but of the useful arts? Or is”technology” a buzzword for not including business methods as a category?”

    These are excellent questions. The Useful Arts is much broader. Hopefully Dennis will clarify his position. irregardless there is no technology requirement in the Constitution, Statute, or case law. Not even the MPEP has a technology requirement.

    So using technology as a buzz/code word for singling out business methods has no basis in law.

  54. Are you saying that you believe in a de facto technology requirement for patent eligible subject matter?

    And if you do believe in a technology requirement on what authority do you base your belief? e.g. Case Law, Statute, Constitution?

  55. “Novelty ( new ) or Non Novel (being old), is strictly a 102 issue and has no place in 101″

    MM:…Dennis, do you want to address this or should I?

    101 Integration Expert:

    Hello Mr. Mooney:

    Please read Diehr, the case described by the Prometheus Court as most on point for patent eligible subject matter.

    “The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter. [Footnote 12]. It has been urged that novelty is an appropriate consideration under § 101. Presumably, this argument results from the language in § 101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for patentability follow, and § 102 covers in detail the conditions relating to novelty. [Footnote 13]
    Page 450 U. S. 190
    Diamond v. Diehr – 450 U.S. 175 (1981)

    Case Closed!

    ::Bangs Gavel::

  56. Novelty ( new ) or Non Novel (being old), is strictly a 102 issue and has no place in 101

    Dennis, do you want to address this or should I?

    Or is this just something we have to put up with ala great grampa drooling at the dinner table?

    I don’t have a problem with expressions of wishful thinking or opinions about how things should be. But this same character is constantly spouting off about other people being “intellectually dishonest” when those other people are orders of magnitude more circumspect.

    Maybe time to step up.

  57. Even if instructions to infringe are issued by the inducer, you still have to show that customers follow the instructions.

  58. I agree that we should not single out one particular area of technology.

    How do you feel about singling out things not “of technology,” but of the useful arts? Or is”technology” a buzzword for not including business methods as a category?

  59. And if you are saying it is within the courts right to discriminate/single out software/computers and business methods as suspect at 101, where does the court get it’s authority to do so?

  60. Dennis Couch said: ” However, if subject matter eligibility is a threshold jurisdictional question then the court would be well within its rights to raise the issue sua sponte on appeal. ”

    Well, if subject matter eligibility is going to be a threshold issue shouldn’t 101 be automatically raised on every subject matter category, such as machines, compositions, manufactures, and not just raised on process claims, especially those that involve computers/software or an exchange for goods or services, ( so called business methods) ?

    Or, are you saying it is within the courts right to single out/discriminate against software/computers and business methods?

  61. if subject matter eligibility is a threshold jurisdictional question then the court would be well within its rights to raise the issue sua sponte on appeal

    A lesson learned from the “Can a third party challenge 101 threads”…? If so, why was Judge Mayer in the minority on Whitserve?

  62. As far as I know, Apple did not challenge these patents on subject matter eligibility grounds. However, if subject matter eligibility is a threshold jurisdictional question then the court would be well within its rights to raise the issue sua sponte on appeal. 

     

  63. ” But on its face this claim seems to implement on a computer the notoriously old chronological recording of data and history. This has to be a violation of 101/102/103.”

    Mr. Heller I do believe you are being intellectually dishonest by purposely conflating 101, with 102.

    Novelty ( new ) or Non Novel (being old), is strictly a 102 issue and has no place in 101.

    The new requirement in 101 is NOT the same as the Novelty ( new ) in 102.

    This was made explicit in Diehr.

    STOP CONFLATING!!!!

    Bottom line, if Apple’s invention is a process claim the only requirements are concept, application, and integration!

    You need to admit this much right now on this blog.

    After all this is the new Patently 0!

  64. “Agreed. Apple may not be interested,for obvious reasons, in raising the 101 issue, but the Federal Circuit needs to do so in every case, like this. ”

    Why? Because software or computers are involved?

    Didn’t you just say that was not your position?

    Didn’t you just admit you have no legal basis for such a position?

    Didn’t you just confess that not even Benson, and of course Diehr, ever held such a position?

    Now you flip flop and go right back to THE fallacious assumption that a case with software or computers is automatically suspect at 101.

  65. Ned Heller Said: “In accordance with your twist, you suggest that Benson held that the use of computer or programming renders the claim abstract.”

    Mr. Heller that is not what I said nor my twist. I have not twisted anything. I stated a legal fact….

    ” the statute, or Court does NOT requires a machine or any technology whatsoever for a patent to pass 101.”

    Do you dare deny this fact?

    Yes or No, please.

    :: waits::

  66. I think it’s worth noting that according to the dissent, the majority added a claim construction limitation that was not part of the claim construction below, and it is this additional limitation that led to the conclusion that insufficient evidence existed. If that is the case, it seems unfair as, at worse, the case should’ve been remanded for trial in view of the new construction.

  67. Dennis, the more experience the better for the Supreme Court bar.

    But I am not so sure the Feds are all that impressed with Supreme Court appellate lawyers arguing cases before them. The government, for the first time in its history as far as I know, appeared as amicus to argue a position before the Federal Circuit in Myriad. Its position “prevailed” with two of the three, although Moore voted with Lourie because because of all the patents that had been issued in reliance on PTO prior practice. In essence, the government lost.

  68. Mr. 101, you really do not get it, do you?

    While Benson did not hold that program computers are categorically excluded, it did hold that simply requiring a computer to execute abstract mathematics did not render such patent eligible.

    You twist what I say and what Benson holds as follows:

    In accordance with your twist, you suggest that Benson held that the use of computer or programming renders the claim abstract. This is 100% flipped from what the court holds and what I argue. If such were the case, the court would have held that programmed computers were categorically excluded. They did not go so far. Under your twist, Diehr would have been decided the way Stevens argued it should be.

    101, stop your twisting and dissembling. You cannot be that…..

    Well I’ll stop there in the interest of community.

  69. Agreed. Apple may not be interested,for obvious reasons, in raising the 101 issue, but the Federal Circuit needs to do so in every case, like this. If more facts are needed, a remand would be in order. But on its face this claim seems to implement on a computer the notoriously old chronological recording of data and history. This has to be a violation of 101/102/103.

  70. threads and debates regularly proceed with the false assumption that process claims are somehow at least suspect if not outright abstract because they involve the use of a computer

    Well, I’m certainly not making that assumption.

  71. …….seems like a red herring when the only interesting question is whether the patent is obvious under 103 or unpatentably abstract under 101.when the only interesting question is whether the patent is obvious under 103 or unpatentably abstract under 101.”

    Whether a patent is “unpatentably abstract” under 101 because of the use of a computer is the only red herring.

    I find it interesting that no one on this blog besides perhaps, anon and NWPA will acknowledge that the statute, or Court does NOT requires a machine or any technology whatsoever for a patent to pass 101.

    Yet threads and debates regularly proceed with the false assumption that process claims are somehow at least suspect if not outright abstract because they involve the use of a computer.

    Mr. Heller likes to refer to Benson as a authority for the above fallacious reasoning when in fact Benson only ruled against disembodied math, and did not so hold that software or computers make an invention abstract.

    While Mr. Mooney AKA MM, pejoratively refers to Big Computer Brains, usually followed by calling the claim craaap.

    Well, I have news for booth of your Gentleman, the only requirements by the Court for 101 statutory subject matter are concept, application, and integration.

    PERIOD

    Of this there can be no dispute.

  72. When you say losers, I assume that you are talking about parties that lose at the district court level (rather than as some derogatory term). It's hard to know whether anyone could have won this for mirror. One thing that is true Is that we currently have a group of excellent appellate lawyers who have argued dozens of patent cases before the Federal Circuit.  
    From my perspective, it is nice that the Supreme Court bar is getting some experience with arguing patent cases.  This may well raise the level of the debate next time the high court takes such a case.  

  73. Might I add, that the Supreme Court may not give Federal Circuit judges any credence at all given that most of them never clerked on the Supreme Court, or could qualify to even to be a clerk.

    That would change if Richard Taranto is confirmed. He would provide the Federal Circuit an instant boost in credibility.

  74. I think that is indeed the lesson learned here.

    The proof of indirect infringement always requires proof of direct infringement. Instructions given consumers might be enough, but not always it seems.

  75. So is the lesson in this case that similarly-situated patentees should conduct user surveys or observe users in order to find evidence of actual infringement? That would be comparable to conducting surveys in order to find evidence of actual confusion in a trademark case.

  76. I love it when I see losers who think they can salvage a suit they lost by what they failed to prove at the D.C. by hiring some famous-name-non-patent-lawyer for a thousand dollars an hour or so to argue their appeal at the Fed. Cir. It just adds to their pain. [Not to be confused with the need to get a real Sup. Ct. lawyer to have even a snowballs chance of getting cert.]

  77. Isn’t the noted failure of this panel decision to even cite the obviously now-controlling en banc Akamai decision for correct law on inducing infringement requirements likely to be due to both having been in the final works at approximately the same time, and no one noting that the Akima decision had already just issued until too late to stop and fix this one?

  78. 13. A method which organizes each data unit re-ceived by or generated by a computer system, comprising the steps of:

    generating a main stream of data units and at least one substream, the main stream for receiving each data unit received by or generated by the computer system, and each substream for containing data units only from the main stream;

    receiving data units from other computer systems;

    generating data units in the computer system;

    selecting a timestamp to identify each data unit;

    associating each data unit with at least one chronological indicator having the respective timestamp;

    including each data unit according to the time-stamp in the respective chronological indicator in at least the main stream; and

    maintaining at least the main stream and the substreams as persistent streams.

    It seems that any computer that archives received data in a chronologically sortable manner would infringe.

    Infringement just seems like a red herring when the only interesting question is whether the patent is obvious under 103 or unpatentably abstract under 101.

  79. As Prof Ochoa points out, this issue is whether defensive nonmutual collateral estoppel (AKA Issue Preclusion) would apply.

    Parklane Hosiery? Right up there with Blonder Tongue. My favorite pair of Supreme Court cases evah.

  80. Issue preclusion requires that a particular issue be litigated and decided. Res Judicata sweeps in evidence and theories that could have been litigated, but were not.

    The question of privity is also here. Can a customer take advantage of the judgment in favor of Apple where the issue of infringement was litigated and decided under principles of res judicata?

  81. As Prof Ochoa points out, this issue is whether defensive nonmutual collateral estoppel (AKA Issue Preclusion) would apply.

    Interesting. Where’d Professor Ochoa point this out?

  82. The term lifestream was coined by Eric Freeman and David Gelernter at Yale University in the mid-1990s to describe “…a time-ordered stream of documents that functions as a diary of your electronic life; every document you create and every document other people send you is stored in your lifestream. The tail of your stream contains documents from the past (starting with your electronic birth certificate). Moving away from the tail and toward the present, your stream contains more recent documents — papers in progress or new electronic mail; other documents (pictures, correspondence, bills, movies, voice mail, software) are stored in between. Moving beyond the present and into the future, the stream contains documents you will need: reminders, calendar items, to-do lists

    Wow, these guys coined a term in the 1990s that I never heard before now and I vow to never use.

    Other than the term itself, is there anything non-obvious about the concept the term stands for? Other than the POWERFUL COMPUTER BRAIN, I mean. Seems to me that many, many people have been chronologically archiving many, many documents related to their personal lives for many, many centuries.

  83. Now that they have lost their case against Apple, an important legal question is whether or not the patentee could now bring a lawsuit against Apple customers and/or Apple retailers (such as Amazon or BestBuy)?

    Yes, but: Suing individual consumers is not cost effective. Suing retailers for inducement is problematic because merely selling a product that is capable of infringement is not active inducement. I think Mirror is done. But this is not legal advice.

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