CLS Bank v. Alice Corp: Patenting Software Ideas

By Dennis Crouch

"Settlement risk" is real in almost every transaction. When a lawyer does legal work, how does she know that she'll get paid. Conversely, if a client pays up-front, how does he know that the work will actually be performed. There is always a possibility of filing a lawsuit to demand fulfillment. However, most businesses would prefer a system that better guarantees a more immediate positive result. A trusted (and bonded) escrow agent can help relieve the problem, but even an escrow agent needs assurances. Further, in the age of electronic funding of transactions, we should be able to take advantage of features of a computer network that might not have been available in an offline world.

The recent Federal Circuit decision in CLS Bank v. Alice Corp. focuses on the subject matter eligibility of Alice's claim to a computer system for assisting with closing financial transactions in a way that avoids settlement risk. The system includes two elements: (1) data storage with various "shadow" variables stored therein; and (2) a computer that is programmed to conduct the transaction. Basically, the transaction is initially conducted in the shadow (i.e., mock) system and then, if the shadow system shows that the parties have sufficient funds to conduct the transaction, post the obligation to the real exchange institution.

The claim reads as follows:

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

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

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

The district court initially ruled that the patent claim lacked subject matter eligibility. I wrote about that decision in a 2011 post entitled Bilski Applied to Invalidate Computer System Claims. In 2012, a divided Court of Appeals for the Federal Circuit revered – holding that that, when considered as a whole, the claim is patent eligible. Judge Linn wrote the majority opinion that was joined by Judge O'Malley. In many ways, Judge Linn's opinion follows the advice that Professor Rob Merges and I gave in our paper titled Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making. Judge Linn's approach is to only reach Section 101 issues when subject matter ineligibility is "manifestly evident". Judge Prost wrote in dissent and argued that the majority improperly ignored the Supreme Court's most recent statements on the topic found in Prometheus. Professor Jason Rantanen wrote a nice post on the Federal Circuit decision titled CLS Bank v. Alice: The "Nothing More Than" Limitation on Abstract Ideas.

When I consider this claim, a few thoughts arise:

  1. This is a system claim rather than a method claim. However, the structure of the claim is such that the system is designed around the method that it is intended to perform. This makes me think that the teaching of Bilski and Mayo v. Prometheus cannot be ignored here even though those cases were focused on the eligibility of method claims.
  2. The claim requires computer hardware as an integral portion of the invention. However, the particularly claimed computer hardware is entirely conventional and being used in an unsurprisingly conventional manner. Further, if we relax the claim requirements of a computer and "electronic" communications then this same transaction could be fully conducted offline with paper as the data storage unit and contracts creating the time invariant obligation.
  3. Use of the system does not require any physical transformation recognized by the courts (unless you interpret the claim to be limited to only include data storage units that work by physical transformation). The claim does require changes in bank account values and legal obligations, but those have not traditionally been seen as qualifying transformations in the patent eligibility context.
  4. Finally, and most importantly for me, the invention is designed to solve a particular problem in industry and claims a system that operates by performing a series of identified steps to address that particular problem.

Many of you know that, in my view, the Supreme Court precedent on subject matter eligibility has not been internally reconciled. That ongoing precedential conflict coupled with the fuzziness of boundary lines continue to fuel debate on the topic both within and outside of the courthouse. On balance, both sides of this debate have strong arguments based upon patent law history and precedent and I can understand why someone versed in Supreme Court patent eligibility precedent could end up with a conclusion on either side.

Despite the Federal Circuit opinion, this case has not gone away. In recent days, the accused infringer (CLS Bank) has filed a request for rehearing and that request is supported by three amicus briefs. CLS Bank's main point in its brief is that the CLS Bank computer system claim is unpatentable when fully analyzed against Bilski and Prometheus. The brief asks two questions:

  1. Whether the new test for patent-eligibility articulated by the panel majority is inconsistent with Bilski's and Mayo's approach to 35 U.S.C. § 101; and
  2. Whether the method, system, and media claims at issue are patent ineligible because, albeit computer-implemented, they recite no more than an abstract fundamental mechanism of financial intermediation with no inventive concept.

The CLS Bank brief was filed by Mark Perry and his team at Gibson Dunn in DC. This is a change from the Kaye Scholer firm that represented CLS Bank at the district court and in the original appeal.

An amicus brief filed on behalf of a diverse group of five companies including British Airways and LinkedIN (and who all tend to be defendants in patent cases) spelled out how the "course filter" approach used by Judge Linn went against both recent and old Supreme Court precedent. That brief asks two additional questions:

  1. Should courts enforce the patent eligibility requirement evenhandedly without imposing a "manifestly evident" or "coarse filter" hurdle on the patent challenger?
  2. Is patent eligibility a threshold requirement well suited for decision on the pleadings and on early summary judgment?

John Vandenberg of Klarquist Sparkman filed the BA/LinkedIN brief.

Daryl Joseffer of King & Spalding filed a second amicus brief on behalf of Google, HP, Red Hat and Twitter. The brief explains how Mayo identifies four "guideposts" for determining whether an invention lacks subject matter eligibility under the prohibitions of abstract ideas and laws of nature. The four clues all begin with the notion that a patentable invention must be "significantly more than an abstract idea." Thus, if you begin with an abstract idea, "(1) adding steps that are conventional or obvious is insufficient to confer patentable subject matter (Mayo at 1294, 1298, 1299); (2) adding steps that are so general and non-specific that they do not significantly limit the claim's scope is insufficient (id. at 1300, 1302); (3) limiting an idea to a particular technological environment is insufficient (id. at 1294, 1297); and (4) claims that fail the machine-or-transformation test are likewise dubious (id. at 1296, 1303). Explaining the first point, the brief argues that a claim must contain an "inventive concept" apart from the identified law of nature or abstract idea.

The EFF brief filed by Julie Samuel reminds the court of the extensive literature concluding that software patents are bad – especially when in the hands of "patent trolls."

The patentee's responsive brief is due later this month.

*****

*****

At least two additional software patent cases are pending at the Federal Circuit. In Bancorp v. Sun Life, a different panel of Federal Circuit judges considered software patents similar to those in CLS Bank but found the claims ineligible under Section 101. In WildTangent v. Ultramercial, the Federal Circuit initially ruled that patented method of distributing copyrighted media was eligible. However, that case was vacated and remanded by the Supreme Court following its decision in Mayo and with instructions to reconsider the holding based upon the new Supreme Court precedent. WildTangent has also requested an en banc hearing. WildTangent's petition asks: "When does a patent's reference to the use of a general purpose computer or an Internet website transform an otherwise unpatentable abstract concept into a process that satisfies the subject-matter eligibility requirement of 35 U.S. C. § 101?" Arguing from the other side (asking for its patent to be revalidated), Bancorp identifies the conflict with CLS Bank and argues that the "manifestly abstract" standard should be applied to its case.

*****

Judge Linn, author of the CLS Bank decision has announced his move to Senior Status in November 2012. Senior judges ordinarily do not decide whether to hear cases en banc and do not sit en banc. The one significant exception to that rule is that a senior judge will be a part of the en banc panel if that judge was a part of the original panel that heard the case. For this particular contentious issue, Judge Linn's status may well impact the results.

*****

Counting votes is always difficult and may not be worthwhile, but I pulled-up seven recent software patent eligibility decisions and classified the results based upon how the various panel member voted on the eligibility question. If I leave out judges Schall and Plager (Senior judges), the result is that three of the judges sit on the "claims eligible" side (Chief Judge Rader and Judges O'Malley and Newman); five of the judges are on the "claims ineligible" side (Judges Prost, Bryson, Dyk, Moore, and Wallach); two have decisions on both sides (Judges Linn and Lourie); and one is not in my sample (Judge Reyna).

Case

Claims Eligible

Claims Ineligible

WildTangent

Rader, Lourie, O'Malley

 

CLS Bank

Linn, O'Malley

Prost

Bancorp

 

Lourie, Prost, Wallach

RCT v. Microsoft

Rader, Newman, Plager

 

Cybersource

 

Bryson, Dyk, Prost

Dealtracker*

Plager

Linn, Dyk

Fort Properties

 

Prost, Schall, Moore


 

168 thoughts on “CLS Bank v. Alice Corp: Patenting Software Ideas

  1. “Those passages have nothing to do with “conflation” as the term is used by “101 Integration Expert.” Those passages are specifically addressed the government’s proposition (also favored by 101 Integration expert and other commenters here prior to Prometheus) that claims reciting combinations of old (but patent eligible) stpes and new patent-ineligible steps should be invalidated by ignoring the patent ineligible steps during 102/103.”

    I just want to point out for the record that what you attributed to me is an out right lie. The above is not and have never been my position, but rather another glaring example of your intellectual dishonesty.

  2. “platitudes”

    It’s not platitudes.

    It’s the law.

    Please read 35 USC, 100 (b) The term “process” means process, art, or method, and includes a [ new use of a known process ], machine, manufacture, composition of matter, or material.

  3. “What is the solution?”

    NWPA, if people are honest, and do not attempt to assert the false assumption that claims with computers, software and business applications are automatically suspect or abstract, then there is no problem. Extra solution activity analysis should only be done in the face of an manifestly evident judicial exceptions. On this Alice, Research Corp, and Ultramercial are right.

    One way to avoid the swamp of Benson where Ned Heller, and MM lurk like alligators ready to pounce and tear apart computers, software and business methods at 101, is to simply avoid mathematical equations in a claim. It’s not the best way, and certainly not the most fair or just, but it is a way.

  4. Mr. Heller:

    Your summation of the Courts analysis is riddled with error. The Court does not start with “ineligible matter. ” The Court starts with the claims as a whole.

    The Court has ONLY applied the type of analysis you refer to in the case of extra solution activity.

    And second the Court has only looked for extra solution activity where there is an manifestly evident judicial exception.

    For example, a mathematical algorithm in Flook, and a Law of Nature in Prometheus.

    Where there is no manifestly evident judicial exception, there is no extra solution activity. From there the Court has proceeded to simply take the claims as a whole and look for ( integrated) subject matter.

    For example, Diehr, and as will be proven, Ultramercial.

    What you seem to not know or care to know is exactly what is an manifestly evident judicial exception to patent eligible subject matter

    Well, for starters let’s look at what is NOT a manifestly evident judicial exception.

    Computers,

    Software.

    Business/financial exchanges ( Ned’s version of business methods)

    And applied process of any kind.

    Now what are manifestly evident judicial exceptions?

    Simple,

    Laws of Nature/natural phenomenon

    Abstract ideas, including pure mental processes and Math equations.

    The ABOVE is ALL the Court has EVER declared to be a judicial exception.

    EVER!!!

    If the claim does not start with a manifestly evident judicial exception and does not cover a manifestly evident judicial exception , they is no extra solution activity analysis. Simply look for application and integration and move on to 102, and 103.

    Do you understand now Mr. Heller????

  5. “Reasoning that an algorithm, or mathematical formula, is like a law of nature. Benson applied the established rule that a law of nature cannot be the subject of a patent.”

    Okay I know this by heart. That you have to explain something basic like this to Mr. Heller makes me wonder if he really is this great attorney, or even an attorney at all. Hmmmm.

  6. I do not talk down to them,

    1. Calling people “blithering id i o t s ” is talking down to them

    2. Labeling people “undereducated” because they have a different philosophy is not a sign of intelligence.

    3. And running away for three months from the challenge to perform “Integration Analysis” on Ultramercial’s claims, according to the new USPTO Official Guidelines, is not a sign of legal prowess.

  7. Flook on Benson:

    Reasoning that an algorithm, or mathematical formula, is like a law of nature. Benson applied the established rule that a law of nature cannot be the subject of a patent.

  8. And when I talk to an attorney working for me that has an attitude like yours I fire them.

    Oh, and why don’t you show how smart an attorney you really are by finally performing integration analysis on the Ultramercial’s claims, according to the new USPTO Official Guidelines? You know, the challenge you have run from and ducked for three months now.

    :: The Sound of Skirts Flopping in the Wind::

  9. You know 101, when I get into a meeting and the other side's attorney, whose client is present, begins to spout platitudes like you just did, I begin the realize just how undereducated some of our clients might be.

  10. A trusted (and bonded) escrow agent can help relieve the problem, but even an escrow agent needs assurances. Further, in the age of electronic funding of transactions, we should be able to take advantage of features of a computer network that might not have been available in an offline world.

  11. MM: “Here’s a fact: you assumed multiple identities,”

    Like Malcolm Mooney, Orly Taitz, Hans Blix ( Under multiple IP addresses), and basically any post with the phrase, Ding, Ding, Ding, we have a Winna! ?

    Oh wait, all those identities are MM.

    MM: “refused to acknowledge it when you were fairly and accurately accused of doing so,”

    Like you refuse to admit your identities above?

    MM:”falsely accused other people of doing it, and used your sockpuppets to attack commenters on this blog for years with ad hominems ”

    Like you used your sockpuppets above but with far far worse remarks than anyone ever posts on this blog?

    MM: “simply because not enough people here shared your particular obsessions.”

    Like your obsession with your project to create an old step new thought claim exclusion?

    Yup that’s your history alright!

  12. Of course it’s non sense. Just like an algorithm being a Law of Nature is non sense. But it’s the mess we have to navigate so best to find the quickest route through it one possibly can.

  13. Hello MM:

    1. The is no legal context for ” a claim reciting only (1) an ineligible element ”

    2. “pre- or post-solution activity” can’t be characterized as just being “well-understood, routine, conventional”.

    3. There is no such thing as an ineligible step, or see number 1.

    Any questions?

  14. Every process is old. But there are infinite new uses to be discovered and invented for every process known to man.

    Such innovations are the engine of a progressive modern society.

  15. anon, useful Arts is in the constitution and limits the court's interpretation of 101's utility requirement, at a minimum.  The courts have never explored this in any depth except to say that the claimed invention must have a practical application, which is a very general requirement. 

    What technological means is itself undefined.  Without any definition,  we really do not know what it means precisely.  But it seems narrower than useful Arts, but it might not be.  We just do not know.

    We do know this:  We cannot patent Law of Nature, mental steps, information, abstract ideas, and phenomena of nature.  We can patent practical implementations of these. 

    So when we get to something like music, or a beautiful poem, or a method of reducing one's time in limbo by buying indulgences at a wholesale price, should we say these are abstract, laws of nature, or simply that they have a utility not within the useful Arts?

    Your views.

      

  16. Ned,

    Respectfully, MaxDrei has once again ducked discussing the difference (this is definitely not the first time). The “gist” to Max is that there is no real difference in flat contradiction to the law of the US (because he cannot handle the fact of the difference and what that allows in the US patent system).

    How about you take a stab at what Max will not? Do you believe that there is in fact a difference? What possible things fill that gap? If you believe that there is no “real” difference, how do you square the fact that there is no technological arts requirement, but there is most definitely a useful arts requirement?

    I really don’t have a problem with people wanting to have different philosophies for patent systems. I do have a problem with the intellectual dishonesty that runs rampant when people are all too willing to state things as if they were law and do not – and cannot – square those things with the reality of what is law. The reality of US law is that there is a difference between the useful arts and the technological arts. I would think that most reasonable people would find this an interesting area to explore (and learn), rather than live in a state of denial.

    I guess I will just shut up now…

  17. OK, I had to put that out there as it is the most succinct point to be made.

    Now a little meat.

    Ned,

    Would you agree that there is some importance to understanding that there is a difference between the useful arts and the technical arts?

    MaxDrei professes he is here to learn, but the evidence clearly shows otherwise. He continuously attempts to equate technical arts with useful arts, even though undeniably, the courts have stated that the two are different. He then refuses point blank to even consider what that difference to be.

    How is such point blank refusal to even acknowledge reality supposed to show, let alone allow any learning?

    As to your agreement with MaxDrei re: Lundgren, it is inconceivable that the gist of that case is an either/or treatment of the techanical arts/useful arts distinction. The finding is unequivocal that there is no technical arts requirement in patent law. It is also unchallenged that there is a useful arts requirement. The dichotomy could not be more pronounced. And yet, you would side with MaxDrei and ignore the difference – or even that the difference exists.

    This begs the question of “why?”

    Of course, we both know why. It’s because the difference harms your philospohical agenda. There is nothing wrong with having aphilosophical agenda, mind you. But let’s be intellectually honest about having that agenda.

  18. I assume that patenting millenia old processes by reciting modern, but generic, tools to implement such is just the kind of stuff that makes our patent system the pride of the world.

  19. Checking for resources is KNOWN?

    Now you tell us.

    BTW, I thought the particular process claimed was old and well known as the days of the Caesars. Good to know that we can repatent that process every time a new machine appears that can be used in the process.

  20. … after someone figures out what and how to program it. In hindsight, of course it’s obvious. Wait, isn’t there some rule about hindsight?

  21. anon, you would get along better with some of us here if you would stop saying that we are liars, or dishonest, or shills or whatever. I know Malcolm to be honest. Ditto, 6, IANAE, Max, Paul, … and everyone else who posts here, even AI. We have our views on things. We state our views. At times, we can be persuaded to change them.

    If you disagree with us, please just say you disagree. This form of statement will prompt you to explain just why you disagree. I am very sure this will go down well with all of us.

    Thanks.

  22. anon: You make an implicit statement that has no basis in reality.

    LOL. There you go again.

    I’m pretty confident that all Leo was saying when he wrote “one of the advantages of using a consistent moniker – others can get to know you a little” is that MD isn’t a lying —h-le who habitually distorts and misrepresents facts and makes a habit of attacking others based on “implied” statements that nobody else perceives. Therefore, maybe you can lighten up a little?

    This is what we’re all trying to tell you: chill out and stop arguing every effing point, no matter how minor, that we make or (worse) that you merely suspect that we are making. As far as I know or can tell, none of us have some unique or shared “agenda” to achieve some nefarious goal that somehow represents The Worst Thing Ever for Humanity at Large and that would justify creating an army of sockpuppets to provide “balance”. For the most part, we are pretty straight shooters. When I say “we”, I’m referring to the commenters here who have stuck with consistent monikers through the years.

    I’m pretty sure that your comment at 9:07 AM had nothing to do with Max, and even posting such a post-facto suggestion is rather like a liar telling a lie to cover up a previous lie: it’s a purposeful sham, a bit of a strawman to re-interpret the comment away from its original meaning. Clearly, the comment was not aimed at Max, and your statement that you were not telling Max to “shut up” obfuscates whom you were implicitly telling to shut up. Of course, you never told Max to shut up in the first place, so the refernce to “shut up” was misapplied right from the get-go.

    Seriously?

  23. Max: “My understanding of what Lundgren said is that the old PTO “technological arts” test does mischief because it is an unnecessary complication. Either it differs from the statutory “useful arts” test, in which case it’s wrong, or it’s the same as “useful arts” test, in which case it’s unnecessary. (And when it is the same, for the BPAI actually to say it’s the same would be a big mistake, for that would double the length of counsel’s argument in every case ever after, first that the subject matter is or is not useful and then, all over again, that it is or is not technical.)”

    Succinct, and right.

  24. Night, given X data, Y prognosis is a fact.

    If the procuring of X is old, then you are patenting the Y prognosis, which actually could be published in a book.

    I find it interesting that you do not get this.

    Also, a circuit is a physical thing. It can be bought and sold. I will agree that a programmed computer is a physical thing that can be bought and sold as soon as the apostles of patenting software will agree that the software must be integral with the machine, a fixed part of it, so that in fact, the machine is new.

    But their game is exposed when you find they will never agree to this very simple proposition.

  25. Night, I think this is the beginning of the SC now well developed analysis that one starts with the ineligible matter and then determines if “enough” has been added. If, in the words of Prometheus, all the claims does is announce the principle and then say, “Apply it.” That is not enough.

    This was the problem both in Flook and Prometheus. Not enough was added.

  26. You make an implicit statement that has no basis in reality.

    Then perhaps you’re looking too hard for implicit statements.

    Of course, you never told Max to shut up in the first place, so the refernce to “shut up” was misapplied right from the get-go.

    Yes, I think so, but the reference by whom? We’re talking about the reference to “shut up” that isn’t there, right? I’m just trying to keep up.

    For the record, I never intended to tell you to “shut up” generally. If you’ll go back and look, you should see that I was (perhaps impolitely) telling you to “shut up” with respect to repeatedly expressing your dislike for Ned and MM.

    Sometimes, familiarity breeds contempt and all that.

    Indeed.

  27. Yes, because not replying to a valid critique moves the discussion ahead like we all want.

    No wait…

    (and to reply to your post, being “not equal” does in fact mean “being different” – regardless of the dust of the “evidence” abstraction you try to kick up. Lundgren very much does “NOT ‘equate’ the two.”

    US law very much has a useful arts requirement and very much does not have a technical arts requirement. You must be h3llbent on not learning to not understand this.

    At least be honest and say that is the reason you evade (yet again) answering the point put to you. Pointless? On the contrary, it is directly on point.

  28. That’s one of the advantages

    Consistent moniker usage has ZERO to do with quality of content. What is important is not “getting to know you a little.” What is important is content, what Professor Crouch calls Merit.

    Some (in fact most) of the worst posts are consistently provided by those with consistent monikers. You make an implicit statement that has no basis in reality. Quality of content comes more from understanding what the law actually is, what facts actually are, and the ability to post desired changes in law as exactly that: desired changes.

    And yes, the problem is worse than you suspected if you saw any value in your post at 9:07 AM (or feel any urge to defend that post, which you obviously do).

    And I’m pretty sure that your comment at 9:07 AM had nothing to do with Max, and even posting such a post-facto suggestion is rather like a liar telling a lie to cover up a previous lie: it’s a purposeful sham, a bit of a strawman to re-interpret the comment away from its original meaning. Clearly, the comment was not aimed at Max, and your statement that you were not telling Max to “shut up” obfuscates whom you were implicitly telling to shut up. Of course, you never told Max to shut up in the first place, so the refernce to “shut up” was misapplied right from the get-go.

    Sometimes, familiarity breeds contempt and all that.

  29. You STILL don’t “get it” anon, do you. Once again:

    Lundgren doesn’t “equate” the useful and technological. But neither does it NOT “equate” the two. On the contrary, it is careful to do neither of these.

    An absence of evidence that an argument is NOT well-founded is not the same as a presence of evidence that an argument IS well-founded.

    I do NOT “truly understand that the two are not equal”. Wherever did you get that idea from? Given that I have been banging on for days that technical and useful seem to be converging on a “pretty much” similar end point, it’s hardly likely, is it, that I “truly believe” the opposite.

    I would not dream of asking you for your opinion what EPO “technical” means. Any answer you might offer would be of no use or interest whatsoever to anybody.

    Likewise, it is pointless to keep on haranguing me to say what I think “the difference” is. This is getting embarrassing. I can well imagine I will spare readers (thanks Leo) any more of it and just not reply to your next posting.

  30. simply stating that something is a “lie” or “false” without any reasoning.

    I have as much reasoning, if not more, as you. I may not repeat the reasoning anew each time you broach the subject (and you have a long established habit of that), but to say that I have no reasoning is itself a shameless lie.

    You state that “‘Configured to’ is a structural term for this art” is a legal fiction” rather than a fact.

    Is that a legal fiction like PHOSITA? No. The point of the matter is that it is a fact, and facts don’t need “reasoning.” They are.

    From the legal standpoint, this factual basis was made clear in Alappat (I supplied case law in support, just in case you missed it). You supplied what in support of this notion that “configured to” is a legal fiction?

    That’s right: nothing.

    You spout about “accusing people” when you are the most guilty blogger – bar none – of accusing others of that which you do.

    Then you follow up your misrepresention of the fact as legal fiction with worn out canards of novels and recipes that have been put to rest repeatedly and ages ago, and then follow with this grandiose “I reject” – as if you have any authority to reject even a legal fiction! A true legal fiction, like that of PHOSITA, is not up to you for acceptance or rejection.

    So where does that leave us? You have a philosphical bent against “software patents” and you have contrived a notion that is against fact, and that is against law. I (helpfully) point this out to you and you fabricate this “legal fiction” position, reject that which you don’t have power to reject, and basically say that you are right because there are anti-software patent people in the software arts (as if that has any legal or even factual merit).

    Here’s a deal: I will stop challenging your banal and false views when you stop proselytizing them. When you are intellectually honest enough to admit what the law is and what the facts are, I won’t need to respond, will I? Until you actually stop making willful fabrications, why on earth should I stop pointing out that you are doing so?

  31. Quite simply (yet again), yes.

    As anyone with any rudimentary IP knowledge would know, a perfectly legitimate claim can be composed completely of understood and conventional steps.

    You answered a different question. Here’s the question again:

    “In the context of a claim reciting only (1) an ineligible element and (2) a “well-understood, routine, conventional” step, is there any other way to characterize that “well-understood, routine, conventional” step besides a “pre- or post-solution activity”?”

    Also, this is a response to 101 Integration’s comment. I’m not attempting to “rescript a decision”.

    I’ll ask you once again to please refrain from accusing me of lying or misrepresenting facts without any reasoning or apparent attempt to even understand what I am talking about. It’s a sick and obnoxious pattern of behavior on your part, and one that has been noted numerous times by many commenters here.

    This continuing behavior of yours is not new. The sockpuppetry you engaged in for years here, where you created fake friends to support you in your personal attacks on others, was almost always similarly devoid of comprehension and overflowing with bile.

  32. As you posted and demanded an example of you making a lie out of a fact, this is one right here.

    Sorry but you are mistaken. On the other hand, your comment is yet another classic example of what I’ve noted many many times before: you simply stating that something is a “lie” or “false” without any reasoning.

    You are free to disagree with me about anything and state the fact of your disagreement.

    But please stop the sick and obnoxious behavior of accusing people who disagree with you of willful fabrication. Thank you.

  33. Those passages are specifically addressed the government’s proposition (also favored by 101 Integration expert and other commenters here prior to Prometheus) that claims reciting combinations of old (but patent eligible) stpes and new patent-ineligible steps should be invalidated by ignoring the patent ineligible steps during 102/103.

    I should clarify: the commenters who favored the government’s approach never actually suggested that the novel ineligible elements must be ignored during the 102/103 analysis (in contrast to what the government argued). Nor could those commenters identify a problem with their proposed approach, even when those problems were explained to them in very plain terms.

    But Breyer and all eight of his friends on the Supreme Court recognized the problem right away. Hence the “dead letter” comment.

  34. Never mind Judge Rich (Ned pays him no credence anyway) The Supreme Court was unanimous in the rejection of any equivalence between 101 and 102/103/112:

    Those passages have nothing to do with “conflation” as the term is used by “101 Integration Expert.” Those passages are specifically addressed the government’s proposition (also favored by 101 Integration expert and other commenters here prior to Prometheus) that claims reciting combinations of old (but patent eligible) stpes and new patent-ineligible steps should be invalidated by ignoring the patent ineligible steps during 102/103.

    The Supreme Court noted that (1) such an approach would make the test under 101 a dead letter (2) explained that there was no legal basis for ignoring a step in a claim during a 102/103 analysis.

  35. An apology for “shut up” comes across quite empty when you maintain the thought pattern and it seeps through as it does with your post at 9:07 AM.

    If “shut up” seeped through my post at 9:07 AM then the problem is worse than I suspected. I’m pretty certain that I wasn’t telling Max to “shut up.” He might beat the drum for European superiority a little too incessantly at times, but on the whole he seems to be a pretty good sort. That’s one of the advantages of using a consistent moniker – others can get to know you a little.

  36. Agreed, that Lundgren doesn’t equate the two.

    A good first step MaxDrei.

    Next, if you truly understand that the two are not equal, what do you think the difference is?

  37. The first point was not a positive one (and if you think it was, then, well…)

    The second one will indicate just how serious the good professor is about wanting a blog free from mindless snark.

    It’s one thing to disagree, it’s quite another with your comment. An apology for “shut up” comes across quite empty when you maintain the thought pattern and it seeps through as it does with your post at 9:07 AM.

  38. Tell me Leopold, how does this add to or advance the discussion?

    As in other threads in which you seem to be unable to stop yourself from expressing yourself with an ad hominym that serves absolutely no purpose, your comment says more about you than anyone else. I am sure professor Crouch appreciates your contribution.

  39. Fascinating, yet another attempt to rescript a decision to make it say something it did not say.

    In the context of a claim reciting only (1) an ineligible element and (2) a “well-understood, routine, conventional” step, is there any other way to characterize that “well-understood, routine, conventional” step besides a “pre- or post-solution activity”?

    Quite simply (yet again), yes.

    As anyone with any rudimentary IP knowledge would know, a perfectly legitimate claim can be composed completely of understood and conventional steps.

    Funny how that fact never seems to be addressed.

  40. Agreed, that Lundgren doesn’t equate the two. You appear to be saying though that Lundgren is authority for the proposition that the two are NOT to be equated, and I say that the authority you are determined to perceive in Lundgren is simply not to be found in Lundgren.

    Indeed, I’m here to learn, picking up enlightenment wherever I can find it. And if I may say so, you’re a fine one, to lecture others about being unable to see any other angle than their own. What do the shrinks call it? “Projection” isn’t it?

  41. I ask you to start Lundgren – not end there. So no, that is not “all” I can come up with.

    Clearly, your start is flawed, as the decision does not, as you attempt to do, equate the two. So even the start proves too much for you.

    If you look at the decision and only see banality, then the problem is you, not the decision.

    And what have you been thrusting down everyone’s throat? That you are here to learn?

    I expect that the BS in that statement is all clear as well. When you refuse to see any other view except your own, then learning is impossible. And clearly, you are not seeing the concept that the two things – useful arts and technological arts – are different.

  42. Extra solution activity: what a load of nonsense. What is the solution? I can make almost any element of claim extra solution by defining what the solution is.

    Post solution activity is just another magic word. Another word that on its face is absurd.

  43. What am I looking for? You to back up what you have been thrusting down my throat for months: that “US law” has definitively pronounced, so much so as to put the point beyond further argument, that the “useful arts” of the US patent statute is “broader” than TRIPS “all fields of technology” and the EPO’s “technical”.

    All you can come up with is Lundgren, a Patent Office case from 2005, which made the banal and true statement that “US law” contains no “technological arts” test.

    My understanding of what Lundgren said is that the old PTO “technological arts” test does mischief because it is an unnecessary complication. Either it differs from the statutory “useful arts” test, in which case it’s wrong, or it’s the same as “useful arts” test, in which case it’s unnecessary. (And when it is the same, for the BPAI actually to say it’s the same would be a big mistake, for that would double the length of counsel’s argument in every case ever after, first that the subject matter is or is not useful and then, all over again, that it is or is not technical.)

    You ask why I still “doubt you”? You ask what I’m “looking for”. I expect it will be all clear to you now.

    Shall we get up to date? How about volunteering your opinions on which one of “abstract” and “non-technical” is “broader” than the other? But no. Best not. That too would be a waste of our time, wouldn’t it?

  44. Wild Tangent: “failing to recognize that the addition of “well-understood, routine, conventional activity” (Mayo, 132 S. Ct. at 1294) is not enough to make an abstract concept patent eligible under § 101; ”

    The only failure here is that of the counsel to recognize that the “well-understood, routine, conventional activity” Mayo was referring to was limited to extra solution activity (Pre or Post )in the wake of a manifestly identified Judicial exception of a Law of Nature.

    Fascinating.

    In the context of a claim reciting only (1) an ineligible element and (2) a “well-understood, routine, conventional” step, is there any other way to characterize that “well-understood, routine, conventional” step besides a “pre- or post-solution activity”?

    Does the answer change if, in addition to the ineligible step, there there are a plurality of “well-understood, routine, conventional” steps recited in the claim and those steps are carried out in the same order that they were carried out in the prior art?

  45. On this board they just present the same arguments over and over again. Player Piano or CD player = Computer; Law of nature; abstract; and, now, no structure. One thing I will give them, is an amazing ability to mischaracterize computer inventions.

  46. “There is no magic.”

    It’s beyond ridicules that in the 21st century you have to defend information processing as not being magic!

    If I set up a table in time square in New York City with a Mac Book Pro on display and ask the next 100 people that pass by , is this a machine? yes or no, all 100 will say YES!!

    If I put the new Apple OS on the computer and turn it on and connect to the internet, then ask the same question above, the answer from all 100 will still be YES!!!

    Now if some people want to argue if the machine is novel and non obvious compared to other computers out there then okay. Let’s get the NWPA’s of the world as expert witnesses and duke it out.

    But please stop the non sense about whether software and computers are patent eligible subject matter.

  47. I don’t think, MM, that this is unique to computer science. I think many people in many industries think that patents shouldn’t be and are just a pain. I certainly hear this from people in EE and from companies involved with mechanical inventions.

  48. Maybe to people who are not skilled in the art it is hard to understand this. Maybe. An algorithm has very definite meanings in computer science. The algorithms could be implemented in a circuit that would have a structure just as the algorithm. I am not sure what part of this is difficult. An “if” statement requires a structure in a chip to implement. A loop the same. The combination of elements that make up an algorithm is a structure. It is different than other structures. The words that are used define structural circuits. Rather than building a circuit one can use software. That software just mirrors the structure the circuit would have.

    There is no magic. This is structure just as in every other invention.

  49. None of your comments can be taken on face value. Sorry, that is the reputation that you have created for yourself

    That’s your problem, anon. Oddly enough, very few of the other commenters here share your difficulties.

    In fact, my comments here are taken at “face value” all the time because they are (1) well-considered and (2) clearly written and (3) very rarely challenged by the regular readers here. That’s not true of your comments, anon.

    Here’s a fact: you assumed multiple identities, refused to acknowledge it when you were fairly and accurately accused of doing so, falsely accused other people of doing it, and used your sockpuppets to attack commenters on this blog for years with ad hominems simply because not enough people here shared your particular obsessions.

    That’s your history.

  50. An evidently baseless one implying insanity on my part for commenting on a perfectly reasonable legal notion.

    1) Nothing “baseless” about it. We were discussing whether a President can act unconstitutionally. I’m not aware of anyone who believes that the answer is “no, under all circumstances.” Feel free to be the first.

    2) Professor Yoo was one of the primary “architects” of the unitary executive theory, which can be interpreted as providing the President with unlimited unchecked power during wartime. Let me know if you are unfamiliar with the theory.

    3) Professor Yoo stated that the President had the right to order a child’s testicles to be crushed if the crushing of those testicles could be used to obtain information from the child’s parent.

    4) It’s not unreasonable for someone to find Professor Yoo’s opinions to be those of an insane hyperpartisan sociopath.

    You’re welcome.

  51. I am not sure why you doubt when the court refused to limit to technological arts.

    What exactly are you looking for?

  52. In haste, but: Isn’t Lundgren the one where the USPTO told us that there is no separate “technological arts” test? Is that not exactly what I just wrote? How are we any further forward here.

    Sorry but, at least for now, I do still doubt you.

  53. MaxDrei,

    Start with Ex parte Lundgren, Appeal No. 2003-2088 (BPAI 2005).

    Don’t doubt me.

    As far as what you intimate with SCOTUS, your post is unclear.

  54. Anon you write:

    “I would also remind you (and any academics who are still thinking about the question), that US law has clearly stated that the useful arts are broader than (thus necessarily different than) the technical arts.”

    Where will I find this categorical statement by “US law” please? Given that “technical character” is constantly evolving and embraces stuff which “US law” rejects as ineligible, I really doubt you can deliver.

    And, until then I will suppose that what you are alluding to is the utterance (was it a SCOTUS opinion in the Bilski case?) that US law has no notion, and does not need, a “technical character” test of eligibility.

    Nor would it though, would it, given that 101 already has its “useful arts” filter. None of us (least of all us, SCOTUS might piously aver) wants redundancy, repetition, jurisprudence that is otiose or that complicates or obfuscates the law, or a plurality of tests where just one will do very nicely thank you.

  55. MM,

    If you are looking for comments to delete, how about this one? An evidently baseless one implying insanity on my part for commenting on a perfectly reasonable legal notion.

  56. “Off top of my head: new machines,”

    Then you do accept programmed computers as new machines.

    I have no idea how you came to this conclusion about my beliefs with respect to the patentability of old computers runnning new software. As you surely already know, you’re wrong about my beliefs. Please refrain from this behavior.

    you laughed at my mention of Alappat, yet the holding of Alappat (and the underlying facts of the physics involved) are clear.

    I didn’t laugh at your “mention of Alappat”. I merely noted that, contrary to your assertion, I had not “”continued to …. blatantly misrepresent” the holding of Alappat. Whether the holding of Alappat is “clear” or not is irrelevant to the fact of your misrpresentation.

    It often seems that you are unable to recognize the difference between someone (or anyone) disagreeing with the law as presently formulated by the courts, on one hand, and understanding the law as presently formulated by the courts on the other hand. I think your difficulty with making that distinction (whether real or simply affected) is part of the reason that you adopted your habit of sockpuppetry (although that reasoning hardly justifies the practice).

    You should feel free to disagree with me on any subject (it’s your right) but you should be prepared to explain the reasoning behind your disagreement because if it’s not clear what that reasoning is I will likely ask you to provide the reasoning. To date, your preparation in that regard seems minimal or non-existent.

    Prometheus is a classic example of this failure, in my opinion, because you seem obsessed with “refuting” my views of the case but you do so without ever actually addressing the views I express. You simply accuse me of lying or declare outright that some statement I’m making is false without any attempt whatsoever to justify the charges. And that’s just one subject!

    As everyone knows, you used to employ sockpuppets to facilitate this behavior and give the impression that others agreed with you. Now you just double-down and do it yourself.

    You cannot win for losing on this point.

    A quintessential example. It’s not even clear from your comment what “point” you are referring to! And yet you can’t help but write some gloating comment about it. What the heck?

  57. I would expect that when I am asked my opinion of what the law should be…

    “I like it when the truth leaks out.”

    failing to state the obvious

    None of your comments can be taken on face value. Sorry, that is the reputation that you have created for yourself and the reputation that you have to live with. Even adjusting to Prof. Crouch’s not-fight-fire-with-fire wishes, your blatant mistatements shoudl be identified as such (and I do so apologize if the process of identification makes you fell attacked, do you need a hug? a tissue?)

    By the way, MaxDrei was talking about outcomes, as in, how the law is, not as in how the law should be.

    It would be wonderful and might help your ability to contribute in a positive manner if you actually read the comments.

  58. As you posted and demanded an example of you making a lie out of a fact, this is one right here.

    Or to avoid a potential “let’s play nice” censorship, let’s call your false portrayal of an actual stone cold fact as a legal fiction, well, pure fiction.

    Your calls on how some of the software industry view their art in regards to patentability are completely immaterial to the discussion.

    Let’s try to stick on point.

  59. US law has clearly stated that the useful arts are broader than (thus necessarily different than) the technical arts.

    I would expect that in the new Patently-O such items would be properly noted by everyone

    I would expect that when I am asked my opinion of what the law should be that I can simply answer the question without being attacked for failing to state the obvious.

    If we are to keep moving forward, we need to stop going over the same ground.

    Then why on earth do you want everyone to keep “noting” what the law currently “is”?

  60. I read the Wild Tangent brief and find it based on a glaring misreading of the Prometheus case. I sooo wish this was my patent so my attorneys could wipe the floor with these guys. None the less, here are just a couple of the huge mistakes they made.

    Wild Tangent: “The Court acknowledged that the concept of using advertising as currency—
    by (1) applying a virtually insurmountable “manifest” abstractness standard for § 101;”

    This is a complete and utter fallacy. The Court along with the inventors used the “manifest” standard to identify the abstract concept as using advertising as currency. There is no one on the face of the earth that would disagree that using advertising as currency is simply an abstract concept. There is NOTHING insurmountable about that!

    What is insurmountable, at least for patentees in software arts, is starting out with the false assumption that the presence or use of a computer in a method suddenly renders the method abstract , or at least suspect at 101.

    Wild Tangent: “failing to recognize that the addition of “well-understood, routine, conventional activity” (Mayo, 132 S. Ct. at 1294) is not enough to make an abstract concept patent eligible under § 101; ”

    The only failure here is that of the counsel to recognize that the “well-understood, routine, conventional activity” Mayo was referring to was limited to extra solution activity (Pre or Post )in the wake of a manifestly identified Judicial exception of a Law of Nature. If you do not start with the explicit false assumption that the mere presence of a computer makes a claim abstract, then the steps in Ultramercial are not pre or post solution activity to a judicial exception of an abstract concept. Those steps then must be considered along with all the other steps in conjunction with the process. (See Diehr claims as a whole)

    Wild Tangent: and (3) diminishing—to the point of irrelevance—the machine-or-transformation test as a tool in assessing computer-based claims under § 101.

    The MoT has already been relegated as a clue, NOT a requirement by the Court! ( See Bilski) And as a clue the presence of machines and transformation in Ultramercial can only help and not hurt patent eligibility of the claims.

    Finally the counsels clearly omitted the Prometheus Courts reference and reliance on Diehr for “integration.” (See Prometheus)

    “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) )”

    That Ultramercial’s claims are “Integrated” same as Diehrs, and pass the Courts time honored analysis cannot be disputed!

    I personally invite ANYONE in the patent community to step up and try.

    ::Silence::

  61. anon Configured to is structural terms for this art.

    And that’s a fact.

    Not a “fact” but a legal fiction. Let’s try to remember that the software “industry” is one of the very few industries where non-academic, commercial participants in the “industry” have very strong disagreement about the patentability of their “art” and their treatment of their “art” by the courts.

    You would do best to recognize that fact.

    I recognize the legal fiction and reject it (quite plainly and reasonably), as do many many others including many people who write software for a living. Software has “structure” in precisely the same way that a novel has “structure” or a recipe has “structure”. This sort of “structure” is vastly different from the “structure” of, say, a nucleic acid, a player piano, an abacus or a clock.

  62. I see that your spatial identification abilities still remain befuddled.

    Dennis, do you want to delete this or shall I respond?

  63. “It’s complete fallacy MM. You are pretending the Prometheus decision says something it does not.”

    True. But I do notice MM’s attempts to try and wedge his pet project into the Prometheus case are getting weaker and weaker with each tepid post.

    He was project was completely and thoroughly eviscerated in the Apple OS thread by “Integration Analysis” to the point he won’t dare mention his old step new thought theory anymore, let alone flat out claim a point of novelty test, or that Diehr was overruled.

    He knows he will be called out on those lies as soon as they appear on the blog.

  64. “SC starts with the ineligible, and determines whether enough has been added. A confusing approach at best.”

    It’s a logical approach because every invention starts with an idea/concept, which by itself is patent ineligible. Next comes application and followed by integration which makes the invention a patent eligible application. This all flows very smoothly and is even intuitive to Actual Inventors.

  65. But each of those programs when actually reduced to practice is eligible for copyright protection. Copyright protection on steroids, in fact.

    Of course, everyone should know that it would be legal error to think that copyright protection is the same as patent protection – even if the copyright protection is on steriods.

    Everyone should also know that software may justly qualify for both copyright and patent protection, but under different rationales and for different coverage.

    I would hope that this knowledge is basic IP understanding for professionals in this field.

    I also hope this is presented in a better tone and I apologize to anyone that was offended by my more direct language.

  66. “a process that can beat the best chess play”

    So you think that search algorithms and other AI algorithms should be patentable? link to cse.iitb.ac.in

    I know the law is uncertain, but I thought this was something that everyone agreed was not patent eligible.

  67. Or we should at least do what the Europeans do and not take the non-technical features into account when assessing obviousness / inventive step.

  68. The problem though with that is the PTO, judges and juries apply 103 way too weakly. This isn’t pharmaceuticals or biotech with billion dollar investments and millions if not billions of unobvious possibilities and combinations. Computers do what they are programmed to do — they are very predictable.

  69. Off top of my head: new machines,

    Then you do accept programmed computers as new machines. Thanks.

    And you laughed at my mention of Alappat, yet the holding of Alappat (and the underlying facts of the physics involved) are clear.

    You cannot win for losing on this point.

    Checkmate.

  70. Ned,

    I trust that you would accept the legal definition of “unconstitutional” as provided by Nolo link to nolo.com :

    Unconstitutional

    In opposition to the constitution. Used to describe to a statute, governmental conduct, court decision, or private contract that violates one or more provisions of the constitution. Can be used in reference to the federal constitution or a state constitution. (emphasis added)

  71. Sorry, but no. Keep digging, though.

    Sorry, but yes and for the reasons given.

    I see that your spatial identification abilities still remain befuddled. Reaching up for low hanging fruit (all that is required to dispatch your posts) is not the same as reaching down to dig.

  72. MaxDrei,

    I would agree with you that both useful arts and technical arts share a constantly evolving status (and such is no less demanded when the topic is innovation), but I would also remind you (and any academics who are still thinking about the question), that US law has clearly stated that the useful arts are broader than (thus necessarily different than) the technical arts.

    I would expect that in the new Patently-O such items would be properly noted by everyone, even those find such goes against how they wish the law to be. If we are to keep moving forward, we need to stop going over the same ground. I am sure Prof. Crouch appreciates you recognizing the proper distinctions for US law.

  73. Never mind Judge Rich (Ned pays him no credence anyway) The Supreme Court was unanimous in the rejection of any equivalence between 101 and 102/103/112:

    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.

    and

    And to shift the patent eligibility inquiry entirely to these later sections risks creating significantly greater legal uncertainty, while assuming that those sections can do work that they are not equipped to do.

    Mayo v. Prometheus, 566 U. S. ____ (2012) slip op at page 21.

  74. Describe the structure in structural terms.

    Configured to is structural terms for this art.

    And that’s a fact. You would do best to recognize that fact.

  75. No. The system performs the process in a way that is common in computer programming. A dry run of an install process to make sure that enough disk space exists for the actual install is an example of exactly the same approach. This sort of procedure has been used and taught for decades. There is nothing deserving of a patent here.

    This is what happens when computer illiterates grant computer patents.

  76. Two additional things that courts lawyers and patent examiners do not seem to understand:

    1. The patent should be on a specific device or method that is actually described in the patent, not on the RESULT of applying that method. Mindlessly quoting “A generic device that achieves RESULT X” is not a description of a device. It is a back-door attempt to patent the result. This sort of dishonest language seems to trick most patent examiners and judges into granting patents on results instead of on the methods and devices themselves.

    2. Specifying that something already known be applied in the conventional way is OBVIOUS. Given that bar codes are used generally for inventory, narrowing the scope to inventory of hex-head screws should not be sufficient to grant a patent. Everyone already knows that bar codes can be used to identify ANYTHING. Using them to identify something specific is OBVIOUS even if no one has specifically said in a newspaper that they do it.

    Lawyers and judges need to stop putting word-games ahead of the public interest. We know you like to interpret words and play games with their meanings. What a law actually, really means should be MORE IMPORTANT that what you can ingeniously twist the words to pretend it means! Grow up!

  77. Instructions on a computer being the same as notes played on a piano. Come on MM. That horse has been shot, butchered, and eaten. This is a good example of not treating the invention fairly, but trying to cabin it into something it is not. The general purpose computer plus software could also be a separate machine. Plus your test would render all circuits as not being eligible as all circuits may be performed by general circuit machine.

    Of course an algorithm specifies structure. How does it not? A circuit can be made to perform the algorithm. That is the structure. Alternatively, a general purpose computer can be used with software in which then the software takes on a structure to perform the algorithm with the general purpose computer. The counter to this is absurd. All algorithms are performed by the same structure. Again, a game of words. Now, your team trots out “structure” as “law of nature” cannot be used anymore without being shamed, and “abstract” is losing its luster.

    The new term is “structure”. But, sorry, this is like the law of nature argument. Absurd to those who undersatnd it and the word will get out.

    Just shameful the attempts to not treat this fairly.

  78. Dennis Crouch said: “Many of you know that, in my view, the Supreme Court precedent on subject matter eligibility has not been internally reconciled.

    101 Integration Expert said: Dennis this may have been correct prior to the Prometheus 9-0 decision. But that Courts reference and reliance on “Integration Analysis” in that case has indeed reconciled Supreme Court precedent on subject matter eligibility. Please see my previous response to your previous request to show just how Prometheus achieves reconciliation.

    Dennis Crouch said in reply to 101 Integration Expert…
    101 – I have not been fully following your arguments, but I’m just wondering how the Prometheus decision fits within your analysis structure?

    Reply Sep 07, 2012 at 02:01 PM
    101 Integration Expert Answers Dennis Crouch said in reply to Dennis Crouch…

    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.

    Thank You for your time.

  79. I suspect that the reason why there is as yet no definition of “useful arts” is the same as the reason Europe declines to define “invention”. Everybody knows that the advance of technology soon makes a nonsense of any snapshot definition frozen in time.

    But that doesn’t mean that the courts are lacking any notion of what inventions are and what useful arts are.

    The EPO filters using its 103, while UK filters with its 101. But the outcome is, to use MM’s turn of phrase “pretty much” the same.

    I haven’t seen anything yet in US jurisprudence that suggests that the road the US judges are travelling is anything other than “pretty much” the same as in Europe.

    But what’s so surprising about that? It’s “pretty much” as one would expect, I think.

  80. “What policy results is achieved when this composition is analyzed under 103 as opposed to 101?”

    This question is bogus. All claims needs to be analzed under all sections.

    LOL. As Leopold Bloom so eloquently put it in earlier thread, “I’m embarassed to be reading this.” Quite plainly, anon, we’re talking about an “analysis” under 101 that amounts to more than that implicitly proposed by “fish scales” (i.e., if the claim is a claim to a machine, the “analysis” is over).

    Here’s the claim we were discussing:

    1. A computer and a data storage unit, wherein said data storage unit stores executable [novel, non-obvious movie], wherein said movie, when viewed, promotes sleep.

    And here’s the question again, revised to assist those who are inclined to pretend to not understand what is being discussed:

    “What policy result is achieved when this composition is analyzed under 103, as opposed to being analyzed under the Supreme Court’s current 101 jurisprudence to determine if it effectively claims ineligible subject matter?”

    And if you want to invoke the “printed matter exception”, please (1) cite the statute or Supreme Court precedent supporting that doctrine or (2) if you cannot perform (1), then cite the relevant “printed matter exception” case law which sets for the justification for the “printed matter exception.”

    You’ll recall that we had a similar discussion about the claims in Prometheus. And you’ll recall my views on that topic. And surely you’ll recall the 9-0 decision that affirmed my views while logically repudiating the government’s view.

    This is an extremely important question. You’d best get on top of it. Why be left out when the decision comes down as I predict it will again???

  81. Please define what you would include and what you would not include in the “useful arts.”

    Off top of my head: new machines, new compositions of matter, methods for using new machines and new compositions of matter, and new methods for physically transforming compositions of matter.

    Do you (too) believe that “useful arts” is synonymous with “technical arts’ (even in the face of law saying otherwise)?

    Pretty much. My understanding of a “technical arts” test is to get rid of claims to “inventions” where the “inventive step” (at least) resides in mental steps or in the mere swapping out of one kind of information for another in an old method or composition.

  82. ” the proper way of entering a §101 rejection is to object under §101, but to reject under any of §§102/103/112. I believe that everyone §101 problem also can be expressed as a problem under one of these latter statutes,”

    You are not supposed to conflate the categories. Rich, taught you this.

  83. A machine that is doing something useful is abstract?

    Your moving the goalpost. Nobody is proposing such a wide-sweeping rule. We’re talking about patenting instructions for a very special but an indisputably old machine called a computer. The computer receives, stores, processes and transmits different kinds of information in response to those instructions. That’s what computers do. That’s all they do. Just like a player piano: depending on the information you provide it, the piano can put you to sleep, make you dance, wake you up, clear the room of guests who might otherwise not leave, entertain your cat/dog, or crush thin-shelled nuts placed in the path of the hammers. But it’s still just a player piano.

    if the specific algorithm is included in the patent application then it is not abstract

    So says a jurist desperate to find something patent-worthy in a software application. The idea that an algorithm constitutes “structure” is one of the strangest ideas in our patent jurisprudence and puts other bizarro world legal doctrines (“corporations are persons”) to shame. Thankfully it’s a belief not held by every jurist and slowly but surely the curtain is being pulled back on the artifices current holding up the software patenting regime.

    Functional claims (see Lemley knew exactly what to go after) do convey structure to one skilled in the art.

    “configured to store said birth dates and other personal information”

    Describe the structure that skilled artisans would recognize is responsible for carrying out this function. Describe the structure in structural terms.

  84. Non Sequitur,
     
    There are conditions and there are requirements.
     
    Consider §132.  Prohibits adding new matter.  When new matter is added, and objection is made under §132 by the rejection is formulated under §112.  Why is that?

    For one matter, section 282 does not include §132.  However without discussing that particular issue I urge you to readIn re Rasmussen, 650 F. 2d 1212 – Court of Customs and Patent Appeals 1981, where Judge Rich that the rejection should be made under §112, and objection made under §132.

    If you have followed the discussion on this issue, I have contended and still contend today that the proper way of entering a §101 rejection is to object under §101, but to reject under any of §§102/103/112.  I believe that everyone §101 problem also can be expressed as a problem under one of these latter statutes, which are labeled in the patent code as "conditions for patentability."
     

     

  85. >Explaining the first point, the brief argues that a claim must >contain an “inventive concept” apart from the identified law of >nature or abstract idea.

    What world are these people from? A machine is performing a useful task that is definite and distinct. Those skilled in the art like me know what the claim covers. What in the world are these people talking about. This is a witch hunt. First, law of nature? These methods are laws of nature? Really? So, 10′s of thousands of new laws of nature are discovered each year? Really. Abstract? So, there is the machine that performs the method. What exactly is abstract?

    I am in disbelief that a person would lack the ethical fiber to put forth arguments like these. If anyone actually cares to understand this, just ask yourself with this abstract word don’t they really mean that the claim is too broad? And, what does that mean in the computer arts? So, it covers the machine that is sitting there running and working and performing useful functions but you think it covers other inventions that might be developed that would be covered by the claims. That is the only functional definition that I can think of for your abstract. So, what other inventions? What are they? People can try to invalidate a patent under 112 for having too broad claims. So, why isn’t this happening? Your arguments are fantasy built on bizarre definitions of words that you misuse.

    Come now! Present evidence of too broad a claim. That is the only possible reason that they may be invalid under your arguments unless you want to tell me that the claim above is a law of nature. This argument by the way was more popular 10 years ago, but has now fallen out of favor as the people have become better at illustrating the absurdity of the argument. Now you are left with abstract that you use with no fixed definition and no functional test.

  86. non se·qui·tur/ˌnän ˈsekwitər/

    Noun:

    A conclusion or statement that does not logically follow from the previous argument or statement.

    The interjected conclusion about copyright protection does not logically follow from a discussion on patent protection. The two spheres of IP protection are meant to cover different things.

  87. In respect to Prof. Crouch (only), here are answers to your questions MM:

    Why is it important that this claim be analyzed under 103?

    All claims must be analyzed under all pertinent sections of the patent act in order to be awarded a patent. Anyone can attempt to gain a patent and the invitation set by Congress is wide. Further, there is a presumption for patentability in the law as written by Congress. Notwithstanding the anti-patent fervor exhibited by some, patents are a good thing.

    What policy results is achieved when this composition is analyzed under 103 as opposed to 101?

    This question is bogus. All claims needs to be analzed under all sections. If you meant to imply that there might be some value in analyzing claims in certain order, then you need to ask that questions (and you would need to accomodate the Office practice of examination fully and quickly). However, I can add a danger in analyzing – or rather making policy using 101 (and you might notice this thought in more than a few Supreme Court decisions): 101 serves as a category bar, and the Court establishes such wide bars with trepidation, and have done so with only three major points (and have done so only under color of what Congress (not the constitution) wrote, explicitly saying that the Court’s authority comes implicitly from Congress’s words.

    And to advance the discussion, tie into the actual law and also tie several lines of thought nicely together, I reprint a post of mine from link to patentlyo.com :

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

    I would have ordered those “101 type defenses” a bit differently:

    1) Judicial Exceptions
    2) Utility
    3) True Owner

    In the words of Justice Breyer, The Big Three underneath the judicial exceptions:

    The Court has long held that this provision contains an important implicit exception. “[L]aws of nature, natural phenomena, and abstract ideas” are not patentable. Prometheus, slip op 566 U. S. ____ (2012) at 1.

    So under 1) we have:
    A) Laws of Nature
    B) Natural phenomena (herein lie Products of Nature)
    C) Abstract Ideas

    Under 2), the actual phrase is a compound phrase: “new and useful,” and so does have shades of meaning different from (albeit possible to overlap) the novelty meaning of “new” alone.

    Of course, this phrase as to do with substantial utility (for example, the utility of a thing must be more than just an anchor). I would point out too that the separation of this item from the judicial exceptions is where several vocal people are confused in their efforts to implement a time-dependency, or “state of being known” in the judicial exceptions. Clearly, trying to do so is legal error.

    Under 3), there are at least two interesting concepts: inchoate rights and multiple inventorship (the analogy of several inventors gathering at the starting line of a race is apt); and exactly who FIRST owns an invention.

    A) interesting questions have circulated over possibility of multiple inventors and the AIA first to Invent set-up. The easy way to think about this is that an inventor (even multiple inventors) has an inchoate right upon inventing. The inchoate right must be developed into a full true right and this is done by whatever rules Congress decides to implement. An inchoate right on its own has no force of law. Under the AIA, inchoate rights can lead to patent rights. Inchoate rights can also lead to Prior User Rights.

    B) Who first owns an invention. As the Stanford v Roche case illustrates, inventorship first inures in the actual inventor (note Ned, this is different than the NAMED inventor). Standing can be defeated if the chain of inventorship can be broken and the party seeking its place in court is not standing on the correct side of the broken chain. Such a party simply has no right to enforce the patent in concern. What the AIA did in this instance was to merely say that any such patent is not automatically invalid. The AIA did not create a condition that an improper holder of a valid patent has a right to be in court to enforce the (still valid) patent.

    The Minor One:

    1) Double Patenting (minor, as this is more a procedural item as the first patent (over which the double patenting is based) does contain the allowable rights, and double patenting is more in line with simply making sure the “limited times” aspect is kept.

    And finally, in a nod to another ongoing conversation, a person’s place in court can be defeated if a patent fails to actually be a patent (outside of the Section 282 listed validity defenses). Since 101 envelopes the entire title in its last line, one has no true patent to enforce if the patent is granted on ineligible subject matter. Any such patent is a nullity, so invalidity as that legal term entails, doesn’t even get out of the starting blocks.

    Do try to be mature in your response. Take your time and come to an understanding of what I have written. Take as much time as you need before joining an adult conversation as an adult.

  88. NS II,

    And sometimes an activist court will smudge the fine line on purpose so that it can put its policy finger in the pie.

    That does not make it right – ability is not the same as correctness.

  89. It’s also an incorrect view of what software is.

    It disregards the functional relationship and ignores the established exceptions to the printed matter doctrine.

    I would expect Mr. Cole to know better.

  90. MM,

    Please define what you would include and what you would not include in the “useful arts.”

    Do you (too) believe that “useful arts” is synonymous with “technical arts’ (even in the face of law saying otherwise)?

  91. True, and it would be best if Benson never existed. But a viable alternative to preventing disaster is “Integration Analysis”.

    As it stands now no one can dispute or refute “Integration Analysis”.

    And since software and computers are inherently integrated, it would make sense for the software patentee to make “Integration Analysis” the bedrock of it’s defense.

  92. Agreed! This post deserves more applause than Michelle Obama, Bill Clinton, and President Obama’s speeches combined!

  93. Ned: If it passes the MOT, you might still have to check integration per Mayo.

    True, once a concept is “integrated” the process legally transforms into an inventive application of the concept and thus by law can’t be an abstract process.

    Ned: But if it FAILS the MOT, it is almost always ineligible.

    Not true. The MoT is a clue and not a requirement. Passing MoT may help a claim but not passing MoT can’t legally prevent a claim from being patent eligible.

  94. MM, if what you say is factually true then Congress should change the law. The “abstract” are real machines. Functional claims (see Lemley knew exactly what to go after) do convey structure to one skilled in the art. And, what is your argument? A machine that is doing something useful is abstract? So, if the specific algorithm is included in the patent application then it is not abstract? Just a little bit of fair thinking and one can see these “abstract” arguments are absurd.

  95. “The individual inserting the disc into the player has no credible claim to have made an invention.”

    That’s a very narrow view of the statute. The individual does have a credible claim to have invented or discovered a new process, or a new use for a known process, article of manufacture, or machine.

  96. NWPA Why is it that people think about something can be done by a paper and pencil that that somehow makes it less worthy? Isn’t that automation.

    Yes. But when the “invention” is claimed functionally and generally along the lines of “do this ineligible abstract processing thing with a computer” the “progress” being promoted is not progress in the “useful arts” but progress in the “art” of patenting. See, e.g., patents on the acts of patenting and enforcing patents.

    Computers automate mental and bookkeeping processes. That’s ancient. New machines which improve the speed of processing is progress. Merely typing the words “automate this process” and filing it with the USPTO then sueing people is not “progress.” It’s just finance. It’s a business. The motivation for improving business used to be profit. What happened?

  97. your fallacious views

    There is nothing “fallacious” in the above comment, “anon.”

    I’ll ask you again to stop accusing me of lying. If you refuse to stop, I’ll tell you to get a life. Again.

  98. anon: Movies are not manufactures for promoting sleep.

    Says who?

    attempting to make progress in the discussion by intimating that movies are part of the useful arts

    Correct me if I’m wrong but below this comment there is a discussion as to whether 101 is actually a defense to patent eligibility. That, friends, is a “compleat” waste of time, as Bob and Ray used to say.

    But more directly to your comment: I’m not asserting that movies are part of the “useful arts” (although you’d almost certainly not argue that projecting images for medical or advertising purposes is part of the “useful arts” … unless I was the one making that assertion LOL).

    Maybe read my 4:48 comment again, “anon.” Oh what the heck, I’ll just repost it:

    1. A computer and a data storage unit, wherein said data storage unit stores executable [novel, non-obvious movie], wherein said movie, when viewed, promotes sleep.

    Why is it important that this claim be analyzed under 103? What policy results is achieved when this composition is analyzed under 103 as opposed to 101?

    If you can’t answer the question, just admit it. If you refuse to answer the question, we’ll know why. I bet you are missing those sockpuppets more than ever.

  99. D, in what is most important to you youre presuming too much. You presume from the outset that there is in fact an invention. Try youre little analysis again without that presumption. Start from the beginning instead of in the middle.

  100. The method of processing grain in Deener could be done by a human body. Why is it that people think about something can be done by a paper and pencil that that somehow makes it less worthy? Isn’t that automation. Yes, everything on a computer could be done with pencil and paper with billions and billions of person years of labor. So, what?

    Also, this strange business of adding a convention computer: that is a convenience. We can build it as a circuit. We have figured out how to do it more efficiently. Everything DC says about is true of the program that can beat the best chess player in the world. The only difference in what DC says for a program that detects cancer is that the Fed. Cir. has held that if you represent something “real” in memory (real in the sense of what you may have to explain to a kindergartner or a person from the medieval times) such as table and then muck with the representation in memory that this counts as a transformation of something real.

    I hope that some of you can see the big picture. The courts have been doing everything they can to exclude these methods using characterizations that do not accurately reflect the inventions nor how the court has analyzed previous inventions.

    Read Deener the SCOTUS tried to figure out what the method was and how it should be treated and even went so far as to say that it should not matter what type of grain the method was for or what machines carried out the methods. Now we have courts saying that computer methods are abstract (when the court has no idea what this means nor how to apply it to the computer arts) or law of nature. Yes, Benson says conversion of BCD to binary is a law of nature.

    The big picture is that this was started off in bad faith and it is one lie after another. Abstract and law of nature and angels and everything rotates around the earth.

  101. fish now see if it meets 102, 103 and 112 — and apply printed matter exception

    Right … remind me again where is this “printed matter exception” in the patent statute? Where is the Supreme Court case law creating and upholding the “printed matter exception” for ignoring “printed matter” under 102 and 103? And what, pray tell, is the guiding principle underlying that “exception”?

  102. Ned the SC starts with the ineligible, and determines whether enough has been added. A confusing approach at best

    That’s the way some of the cases may appear to be written to some people, but if you read carefully the SC is actually quite squarely focused on whether the claims effectively cover excluded subject matter. Part of that analysis inevitably involves a discussion as to whether the elements of the claims that recite eligible subject matter are sufficient to prevent the claims from protecting the ineligible subject matter itself.

    As you know, it’s a very very simple matter of logic that when all the 101 eligible elements in a process claim (for example) are old (and arranged according to the old manner), it is impossible to simply throw in a bit of new, non-obvious and INELIGIBLE subject matter at the end and obtain a patent that does NOT effectively protect that ineligible subject matter.

    It doesn’t matter where you “start” under those circumstances. You end up in the same place. You end up where Prometheus ended up: with a 9-0 smackdown that will never, ever be overturned for the same reason that it was a 9-0 smackdown: it’s logically bulletproof.

  103. Movies are not manufactures for promoting sleep.

    Do we really think you are being serious or attempting to make progress in the discussion by intimating that movies are part of the useful arts?

    We were have a civil discussion, MM, either join in civilly or absent yourself from posting.

    Please.

  104. NWPA courts have never made an effort to find ways to evaluate software under 102, 103, and 112.

    I like it when the truth leaks out.

    Imagine, a process that can beat the best chess play, the best Jeopardy play, detect cancer, and yet it is not eligible for patentability.

    But each of those programs when actually reduced to practice is eligible for copyright protection. Copyright protection on steroids, in fact.

  105. What over whelms me about these “opinions” is that one skilled in the art simply does not see these inventions in any way close to the “judges.” One thing that was killed by Benson was figuring out how to determine whether a claim was too broad. One proposal was to look at computational metrics like big-oh measure of time and space requirement. Such, real measures that one skilled in the art would see as reasonable went out the window with Benson.

  106. Any thoughts, MM, as to what movie would be novel and non-obvious?

    Well, novelty is easy. Obviousness is just a matter of lawyerly argument. And once you kick in those secondary factors (BLOCKBUSTER HIT OF THE SUMMER) it’s all over but the shouting. But yeah I’ve got lots of ideas for novel and non-obvious movies. But they are not relevant to the question I asked.

    Your comrade asks:

    Are you forgetting about the useful arts starting point?

    If “manufactures” for minimizing “settlement risk” are part of the “useful arts”, I don’t see why “manufactures” for promoting sleep aren’t part of the “useful arts”. It’s not me who has opened the door here. It’s the skimmers who are filing on subject matter such as the claims at issue here.

  107. NS II< I am not seeing any legal argument, just your conclusion and the largess of a benefit of a doubnt.

    In opposition, the language of "The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:,” specifally, “shall” is in fact langugae of exclusivity – at least as far as defenses for validity in court goes.

    I find your position and supporting reasoning not very persuasive.

  108. What is so scary is that we are very close to getting an opinion like the Stevens dissent. Imagine, a process that can beat the best chess play, the best Jeopardy play, detect cancer, and yet it is not eligible for patentability.

  109. Take it, I basically agree with you. Benson was a naked attempt to exclude software based on judicial exclusions where software was called laws of nature and abstract. Both of these characterizations are absurd, and yet 40 years later here we are. You have to understand the history where the PTO and Richard Stern thought they could get rid of software patents and they didn’t care how. Benson should be wiped off the books. A judicial exception to exclude 20 percent of the economy. Come on. What so many people miss too is that because of Benson the courts have never made an effort to find ways to evaluate software under 102, 103, and 112.

    Benson has nearly destroyed the credibility of the patent system and cost billions of dollars.

  110. To me, it is unambiguously not exclusive. It doesn’t contain any language of exclusivity. Congress’ affirmative identification of defenses is not an exclusion of others.

    I am giving your position the benefit of the doubt, which is why I’m calling it ambiguous. If Congress wanted to make those defenses exclusive, it could have done so with a word. Similarly, it could have avoided your interpretation with a word.

  111. Sometimes there is a fine line between interpreting a law and rewriting it and the Supreme Court gets the first crack at that determination. I don’t think that interpreting 282 to not exclude 101 would be a rewrite, but apparently people disagree. No matter how the Supreme Court might rule, Congress could step in and make the inclusion or exclusion of 101 explicit.

  112. This is why Congress took 101 out the hands of the judiciary in 282. Here, we are (pseudo)-seriously debating whether a machine is a machine. Any rational person on the outside looking in is asking himself, “what is this silly debate over? a machine is a machine … what is so hard about that?”

    The answer to that question is that the judiciary is using 101 to make policy pronouncements as to what new technology should be patent eligible and what should not.

    If people want software to be patent ineligible, take it to Congress. If people want business methods to be patent ineligible, take it to Congress. If people want gene patents to be patent ineligible, take it to Congress. Don’t take it to SCOTUS. 40 years after Gottschalk v. Benson, the law 35 USC 101 is still muddled — thanks to SCOTUS.

    If it is a process, it is patent eligible. If it is a machine, it is patent eligible. If it’s a manufacture, it is patent eligible. If it is a composition of matter, it is patent eligible. Pretty f’ing simple. If you don’t like it, take it to Congress.

  113. We disagree as to the interpretation of 282. On its face, it is not unambiguously exclusive.

    NS II,

    I don’t remember (and at this point am too lazy) if you chimed in on any of the 282 threads.

    In a nutshell, what is your argument that 282 is not exclusive?

  114. In any case, the Supreme Court is the ultimate arbiter of this issue

    NS II, that’s an interesting thought which ties into another (admittedly) radical thought: the Supreme Court may have overstepped its constitutional bounds.

    Being the ultimate arbiter does not give the Supreme Court authority to write (or re-write, as the case maybe) patent law. If the constitution clearly states which branch of government gets to write the law (and it does), and only which branch of government (and it does), then the judiciary, including (and especially including) the Supreme Court cannot write patent law. Whether they are or are not going to say “Whoops!” may not matter, if there “arbitration” is de facto law writing, there may be an issue, that is no small issue.

  115. People don’t cite 102 or 103 via 101 because it would be inefficient. That being said, evaluating 102 for something that fails 101 is waste. Similarly, 103 isn’t evaluated unless 102 fails.

    “New” could be evaluated under 101, but, because that type of inquiry would overlap with 102 and 103, nobody does it.

    We disagree as to the interpretation of 282. On its face, it is not unambiguously exclusive.

  116. Anon, if a president does not faithfully enforce the law, but gives it a gloss, an interpretation via executive order that is plainly wrong, then I think the SC could declare such invalid as not according to the law.  If the president disobeys a court order, that is contempt.  But can he be incarcerated?  I don't think so.  He will have to be impeached as were Johnson and Clinton: but both survived trial.  Nixon knew his goose was cooked and chose to resign first.

  117. I agree that 282 trumps 101 from a litigation perspective, but I’m not convinced that 282 is exclusive. It would have been so easy to make exclusivity clear: “Only the following shall be defenses …”, or “The following shall be the defenses…”

    In any case, the Supreme Court is the ultimate arbiter of this issue and I’m pretty sure they aren’t going to say, “Whoops!”.

  118. Fish scales,

    Are you forgetting about the useful arts starting point?

    Asking what movie would be novel and non-obvious is, as borrowed from Robert Sach who borrowed from Wolfgang Pauli, “Not even wrong.

  119. Mr. Non, then, in you  view, why is the statute structured the way it is?  Why don't we simply cite 101 for almost every problem, since, it appears, it incorporates 102/103 by reference?  If a claimed invention is not new, it is not new because it is not new as provided in 102/103, right?

    But, 282 limits validity to only 102/103/112 and 251.

  120. I thought “unconstitutional” could be used to describe anything that violated the constitution – and not strictly limited to the legislative branch (Can a president act unconstitutionally?).

    Perhaps I am not using the correct wording…

  121. NS II,

    What you say may be true, but that was not the point of the 282 discussion.

    The point there was that validity was written as a subset of patent law. So whether or not 101 incorporates by reference the “at least 102, 103 and 112″ is not material to the law which governs how a court can determine validity (that is, if I am paraphrasing the position correctly).

    In other words, it is not the whole apple that gets to appear in court to discuss validity, but rather, only the apple core.

    Whether this is rotten to the core is of course debatable.

  122. The statute makes 101 a threshold issue. 101 recites, “Whoever [conditions] may obtain a patent therefor, subject to the conditions and requirements of this title.” “Subject to the conditions and requirements of this title” is an incorporation by reference of at least 102, 103, and 112. So if “[conditions]” are not met, the remaining conditions like 102, 103 and 112 are irrelevant.

  123. It is a machine and therefore meets 101 — now see if it meets 102, 103 and 112 — and apply printed matter exception

  124. Also Paul, in reading Judge Rich’s cases and commentary on the ’52 Act, Rich was of the view that 101 was a so-called “threshold” issue. One determined here only whether the claimed subject matter was within the four enumerated classes. It if was, then one moved on to 103/102/112 to determine the other issues. This interpretation is highly consistent with the fact that 282 did not include 101 within its literal scope.

    Thus, to the extent that the SC continues to rely on 101 to the exclusion of 102/102/112 to hold a claim invalid, that reliance is expressly non statutory. Expressly.

  125. Paul, but if you “also” look at the “statute,” and actually read what it says, then 101 not a condition for either patentability nor validity. See, Section 282 and the discussion began by Professor Hricik.

  126. It pays, sometimes, to forget the precedent and look at the statute. Courts are sometimes bad at closely examining statute as e.g. in Prometheus where the opinion stated the wording of the statute and then went off into the maze of complexity of previous case law.

    So the wording of section 101, as we all know is: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

    You have to start with an individual or with a group of people, and they have to have created something that can credibly be represented as an invention or discovery. In other words there should, on the face of the documents filed at the USPTO, be something that can credibly be considered as an invention or discovery. Although sections 102 and 103 are separate and deal with novelty and inventive step, such considerations are also hard-wired by the statute into the wording of section 101.

    That explains the disc and player paradox that I have put forward in previous postings – the player is novel but not qualifying subject-matter when it contains a disc with a new video, and qualifying subject-matter but not novel when the disc is removed. Your children can have fun, so I argued, switching the player from one state to the other.

    The way out of the paradox is to look at the words of the statute. No right-thinking person would take the position that a new video recorded on the disc gives rise to patentable subject-matter. Any protection is found in copyright not patent law. The individual inserting the disc into the player has no credible claim to have made an invention.

    On the whole, it seems to me that it is arguable that there are difficulties with Judge Linn’s opinion and the dissent has the stronger case.

  127. Dennis, the coarse and simple filter IS the MOT. That is what Breyer/Scalia said in Bikski.

    If it passes the MOT, you might still have to check integration per Mayo.

    But if it FAILS the MOT, it is almost always ineligible. The burden should shift to the patent owner.

  128. the way it should be is: the claim includes a data storage unit and a computer and therefore it is a machine and passes 101.

    1. A computer and a data storage unit, wherein said data storage unit stores executable [novel, non-obvious movie], wherein said movie, when viewed, promotes sleep.

    Why is it important that this claim be analyzed under 103? What policy results is achieved when this composition is analyzed under 103 as opposed to 101?

  129. This system performs the function in a different, lower overhead way; by assuring ability and willingness to perform, and then doing so after acknowledgment.

    So there as aspects not previously done in the manual prior art.

    Really? The ability and willingness of the parties to perform was never discussed in previous escrow situations?

    To the extent the law allows patents to be obtained ove the prior art based solely on the information content of the data being received, stored, “processed” and/or transmitted by old computers, the law needs to be changed. Really it’s just a matter of applying existing law thoughtfully.

    Goodbye backlog. Goodbye trolls. Hello sanity.

  130. Exactly. And that’s why this one is more interesting than some previous ones: It’s a twist on the old manual way.

  131. IMO — the way it should be is: the claim includes a data storage unit and a computer and therefore it is a machine and passes 101.

    Now, let’s see if it passes 102, 103 and 112.

  132. both sides of this debate have strong arguments based upon patent law history and precedent and I can understand why someone versed in Supreme Court patent eligibility precedent could end up with a conclusion on either side.

    Regardless of the facts?

  133. Nice case. The old manual escrow systems require depositing with the agent. This system performs the function in a different, lower overhead way; by assuring ability and willingness to perform, and then doing so after acknowledgment.

    So there as aspects not previously done in the manual prior art.

    Should be interesting (and hopefully instructive).

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