CLS Bank v. Alice Corp: Software Patentability On the Briefs

by Dennis Crouch

Briefing continues in the CLS Bank software patent case.  The accused infringer (CLS Bank) has filed its brief arguing that the Alice patent lacks any core inventive concept and therefore lacks subject matter eligibility under Section 101 of the Patent Act.  Briefs in support of CLS and those nominally in support of neither party have also been filed.  Alice will file its brief in January and I expect a set of additional briefs in support.  As in the Bilski case, Alice's asserted claim here is one that appears invalid on other grounds — namely obviousness.  However, the district court ruled on summary judgment (and before claim construction) that the claim was invalid as lacking patent eligiblity under Section 101.

The text of the asserted claim is below:

A method of exchanging obligations as between parties, each party holding a credit record and a debit record with an exchange institution, the credit records and debit records for exchange of predetermined obligations, the method comprising the steps of:

(a) creating a shadow credit record and a shadow debit record for each stakeholder party to be held independently by a supervisory institution from the exchange institutions;

(b) obtaining from each exchange institution a start-of-day balance for each shadow credit record and shadow debit record;

(c) for every transaction resulting in an exchange obligation, the supervisory institution adjusting each respective party's shadow credit record or shadow debit record, allowing only these transactions that do not result in the value of the shadow debit record being less than the value of the shadow credit record at any time, each said adjustment taking place in chronological order; and

(d) at the end-of-day, the supervisory institution instructing ones of the exchange institutions to exchange credits or debits to the credit record and debit record of the respective parties in accordance with the adjustments of the said permitted transactions, the credits and debits being irrevocable, time invariant obligations placed on the exchange institutions.

In its first opinion, the Federal Circuit reversed the lower court ruling – finding that the claim did not merely encompass an abstract idea but instead embodied a practical implementation that fits within the scope of patent eligible subject matter.  In a subsequent en banc order, the court asked that the parties focus on two particular questions of law: 

I. What test should the court adopt to determine whether a computerimplemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?

II. In assessing patent eligibility under 35 U.S.C. § 101 of a computerimplemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

I have attempted to extract some core elements of each brief. I should note that all of these brief have much more nuance than is shown. I attempted to categorize the briefs filed on behalf of neither party. My approach was quite subjective and I am confident that others would have classified them in a different manner. 

Practical keys here are (1) whether subject matter eligibility is about the inventive concept or instead more focused on the scope of a well construed claim; (2) invention

Party Brief:

In Support of CLS (Defendant)

  • File Attachment: BSA Software Alliance–ISO CLS.pdf (169 KB) Business Software Aliance believes that software should be patentable, but not the software at issue here. 

    "Simple economics makes clear that, if patent protection for software were curtailed, the adverse consequences would be swift and severe. . . . Two factors are of particular significance—whether a claim can be implemented solely via a mental process or necessarily relies upon a machine for execution; and whether the claim uses an abstract idea or law of nature in a way that is novel, useful, and limited. When an invention falls short under both of these standards, it most likey is not patentable under Section 101. . . . Assessed under this framework, the software at issue here is not patentable. . . . It is plain that credit intermediation long preexisted computer implementation, and that it is a process that can be performed in the human mind, or by a human with pencil and paper. In addition, the computer aspect of the claims here does not add anything of substance to the mental process at issue. The computer implementation of the abstract idea is not limited in any fashion. And there is no suggestion that the process here is in anyway dependent upon computer technology to accomplish the directed end."

  • Download EFF–ISO CLS Patents are causing more harm than benefit. This is especially true for software patents that regularly include broad functional claims. However, Section 101 analysis is problematic because of its ambiguity. The EFF brief argues that the way to cure this is to more broadly interpret 35 U.S.C. § 112(f) (2012) so that functional software claims be given limited scope under the Federal Circuit's Means-Plus-Function doctrine. This approach stems from a recent article by Mark Lemley and fits directly within the avoidance doctrine that Professor Merges and I suggested in our 2010 article.
  • File Attachment: CCIA–ISO CLS.pdf (200 KB) Prometheus requires an inventive concept to pass 101.
  • File Attachment: Clearing House Ass'n–ISO CLS.pdf (819 KB)  Banking industry brief argues that "threshold" language means that "the Section 101 inquiry is the first step in the legal framework to determine patentability" and should be rigorously enforced.  
  • File Attachment: Google et al.–ISO CLS.pdf (982 KB).  Google acknowledges the difficulty with the abstract idea test because the term "abstract" is so difficult to define.  However, Google argues that the abstract ideas are much easier to identify individually than to define generally. This is roughly the same as know-it-when-you-see-it test for obscinity.  Google also writes that "abstract patents are a plague on the high-tech sector."
  • File Attachment: Stites Amicus Brief.pdf (262 KB) "The software patent game is a less than a zero sum game for the participants and has a large inhibiting effect on software innovation." Stites argues that the court should simply eliminate software patents.

 In Support of Neither Party, but Promoting a Stronger § 101 Requirement

  • File Attachment: British Airways et al–ISO Neither Party.pdf (191 KB) Supreme Court has rejected the "course-filter" "manifestly-evident" approach offered by the original CLS panel. Whether a claim fails under Section 101 can ordinarily be determined very early in a case and without and detailed claim construction.
  • File Attachment: Profs Hollaar & Trzyna–ISO Neither Party.pdf (217 KB) The only way to draw a clear and reasonable line on subject matter eligibility is to focus on its link to technology.
  • File Attachment: Juhasz Law Firm–ISO Neither Party.pdf (285 KB) "The test to determine whether a computer-implemented invention is a patent ineligible "abstract idea" should be whether steps that are central to the claim (i.e., not token extra-solution activity) have a "physical" or "virtual" link to a specific real or tangible object."
  • File Attachment: Koninklijke Philips–ISO Neither Party.pdf (549 KB) An applicant and patentee should have the burden of proving that the claimed software implementation is subject matter eligible.
  • File Attachment: Internet Retailers–ISO Neither Party.pdf (2454 KB) Simply rewriting a method claim as a system or storage medium cannot render the claim subject matter eligible. The Federal Circuit should empower district courts to make 101 determinations very early in cases – well before claim construction or the completion of discovery. "The savings to the parties in money and the courts in time are self-evident. And those savings are more likely to be obtained in precisely those cases in which the patents are least likely to be valid or valuable, cases brought under low-quality patents. Judicious application of Section 101 is likely to winnow out the worst patents at the lowest cost."

In Support of Neither Party, but Promoting a Weaker § 101 Requirement

  • File Attachment: IP Owners Ass'n–ISO Neither Party.pdf (301 KB) Software is generally patentable under Section 101. However, a claim "must describe the use of [a] computer with sufficient detail to avoid preempting other uses of the idea and the computer implementation must be a meaningful and significant element of the invention." A detailed claim construction is ordinarily necessary to determine whether that claim is directed to statutory subject matter.
  • File Attachment: CLS-Bank_v_Alice_USA-amicus-ISO-Neither-Party.pdf (311 KB) See this.
  • File Attachment: Sigram Schindler–ISO Neither Party.pdf (474 KB) The abstract idea test is sufficiently defined.
  • File Attachment: NY IP Law Ass'n–ISO Neither Party.pdf (735 KB) Efforts in some decisions to dissect the claim into old and new parts or computer and non-computer elements, should be rejected as squarely inconsistent with the Supreme Court's holdings in Diamond v. Diehr, 450 U.S. 175 (1981), and Bilski. "NYIPLA does not agree that method, system and storage medium claims should ipso facto rise and fall together. Rather, each claim (regardless of its type) should be considered independently as a whole to determine whether it is directed to patent-eligible subject matter."
  • File Attachment: IP Law Ass'n of Chicago–ISO Neither Party.pdf (1024 KB) Subject matter eligibility should be broad and flexible. IPLAC's test is similar to the government's factor's in its brief. However, the tone of the IPLAC questions suggest broader eligibility. When a claim includes a computer program, IPLAC would ask: "(a) Are the claims drawn to subject matter otherwise statutory, because if so, they do not become nonstatutory simply because they use a mathematical formula, computer program or digital computer. Diehr. (b) Are process claims, as a whole, without regard to the novelty of any element or steps, or even of the process itself, nothing more than a statutory process and not an attempt to patent a mathematical formula, because if so, they are not nonstatutory. (c) Do the claims implement or apply a formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), because if so, the claims are statutory. (d) Do the claims apply the laws to a new and useful end, because if so, they are statutory."
  • File Attachment: Conejo-Valley-Bar-Assn–ISO-Neither-Party.pdf (1589 KB) There is no need for a strong section 101 eligibility requirement because the other sections of the patent act do the work already.
  • File Attachment: IBM–ISO Neither Party.pdf (1624 KB) "In the exceptional case when the patent eligibility of a computer implemented invention is not readily apparent, the functional requirement of a computer counsels in favor of patent eligibility." Methods are different from systems and are different from storage media. As such, the subject matter eligibility issues are also different and thus, a system claim might be patent eligible while its parallel method claim may be ineligible.

263 thoughts on “CLS Bank v. Alice Corp: Software Patentability On the Briefs

  1. It just has migrated to 101.

    Migrate it back – it does not work there. See the 9-0 Prometheus case for the latest Court confirmation of this.

  2. anon, point of novelty is a term that was misused by the PTO once upon a time in obviousness analysis.  But nothing has removed the case law regarding 112 and PON.  It just has migrated to 101.

     

  3. This is a discussion about 35 U.S.C. § 101.

    Are you sure it isn’t a discussion about how awesome software is? Because you spent an entire paragraph of one of your comments ranting about that.

    This discussion is about the law – not policy.

    LOL. Yet another softare t–b–er type who thinks he is the Master of the Universe. Nobody could have predicted!

    It is called argument by analogy – most lawyers employ it.

    They all employ it. Some employ it poorly, which is what you did when you stated that my position would “logically” render a guage unpatentable.

    If the manner by which the information is being gathered, processed, or outputted doesn’t matter, then a gauge wouldn’t be patentable since its sole function is to gather, process, and output information.

    The problem with your “analogy” is that I never said that the “manner by which the information is gathered, processed or outputted doesn’t matter.” On the contrary, that can matter a great deal. With respect to your beloved “guage”, if we treated guages like computers, I would be able to patent a method of using the guage to measure temperature, where the only difference between my method and the prior art is that in my method I call “temperature” by a new name. But it’s still temperature and the guage is not distinguished structurally from prior art guages. If such patents are granted (and they surely are, but only if the guage is a computer) then what are you protecting is the new name for temperature. For a thermometer, temperature is temperature. For a computer, information is information.

    I wrote the following: “a software claim that differs from a prior art claim only in terms of the information being processed is per se unpatentable under 102/103″

    Do you disagree with this? You wrote: If software only differs from the prior art based upon “information,” then the software is unpatentable under 102, 103. I don’t see any distinction. Please explain what you were you trying to say, and what point you were making with your statement. It’s helpful to the discussion to find common ground in this area, as I’m sure you will agree.

    Software that processes X, Y, and Z data in a particular manner will be rendered anticipated by software that processes A, B, and C data in a the same particular manner. The difference between A, B, and C and X, Y, and Z doesn’t matter.

    Again, please show me the case cite on point and evidence that the USPTO is applying this rule of yours in a remotely meaningful and consistent way. I’d love to believe that it’s actually true!

    if A, B, and C = an XML file and X, Y, and Z are JPEGs then all bets are off because the process doesn’t operate the same if the types of data are different.

    Two questions: (1) I assume you understand that we’re talking about digital computers, processing digital information – please confirm; (2) does it matter for patentability purposes if the information in the file is copyrighted or not?

    Your problem is that you don’t understand how the logic implicit in your “policy position” plays out with other technologies

    On the contrary, I’ve thought about that a lot. That’s your problem.

    Writing a couple simple programs in BASIC, FORTRAN, PASCAL, COBOL, C+ or whatever you got a couple credit hours in doesn’t qualify one as understanding software.

    LOL. Tell us oh wise one, what must one do to qualify on your planet?

    rocket science is far, far easier than complex software. Windows 8 may have over 100 million lines of code.

    How much of that code has appeared in patent applications? You do understand that nobody recites code in patent claims. Typically nobody even bothers to recite an operating system. Rocket science is a bit different in that regard. If I want to claim a new rocket or a new rocket fuel, I need to distinguish it structurally from the prior art. I can’t just describe the new things that the rocket does and say “any rocket scientist can figure out the rest.”

    More directly to your point, for many years proponents of the current software patenting paradigm here have been arguing the exact opposite point you make: functional claims are permitted in software because once the functions are laid out, any stooge can do the programming. Maybe that’s changed in the last year or two?

  4. I don’t think there is any serious doubt that software-implemented processes can be patentable, but they aren’t always.

    Then clearly you still haven’t been paying attention to the more egregious posts on this board that advocate that very thing.

    Open your eyes son!

    What else do you think needs to be discussed?

    Why does MM have a pathological obsession with lying about software-implemented processes can not be patentable per se.

  5. You view it as gibberish and again make the mistake of projecting your inability to understand on someone else.

    Sorry Leopold, that dog won’t hunt.

    And the effort is in understanding, not posting. Simple example of your misconstruing my post in your hurry to shoot yet another arrow into the ground at your feat.

    Aim higher.

    Better trolling please.

  6. Ned,

    Non one – and I mean no one – is talking about “But it may also be in one element” to the exclusion of what I have provided.

    The law as written covers both – if you want to push for a change in the law to cover one part to the exclusion of the other, then you must make clear that you are advocating a change to the law. You post with your presumptions as if they are the law. They are not.

    You are simply misreading the cases you cite, and you completely ignore the vast majority of patents ever put forth. Your “point of novelty” is a canard and should be let go – it does not exist in law, leastwise, how you are attempting to use it.

    Deal with it already, and please stop posting the vacuous arguments with that as a theme, as they are DOA.

  7. Anon, novelty may be in the combination.  But it may also be in one element. 
     
    No one overruled Le Roy v. Tatham, O'Reilly v. Morse, Perkins Glue, Walbash Appliance, or Halliburton.  In all cases, the novelty was in the one element and that was functionally expressed.
     
    Deal with it.
     

     

  8. Because it’s very nearly incomprehensible, for one. As best I can understand it, 101′s question asks “Why can’t a process that has software integrated into the process be an inventive application of that software?” I don’t think there is any serious doubt that software-implemented processes can be patentable, but they aren’t always.

    What else do you think needs to be discussed?

  9. Have you ever tried to read the gibberish you post? Just how much effort do you think I expend in not commenting on posts?

  10. When MM said “Get ready for more beatings.” in his reply on Dec 22, 2012 at 01:32 PM, the regulars here already knew that meant more beatings for MM.

    Really simple has been really savage about it.

    Don’t you all just love when MM tries to be condescending and ends up with his nose in his own crrp? I know that you train puppies that way, but Really Simple, MM absolutely refuses to be trained.

    And speaking about that refusal to change his ways, Prof. Crouch, must we really put up with blatant lies? MM has made admissions and really should not be allowed to lie contrary to those admissions. At least four times in this very thread now, he throws up his policy positions (obfuscated as “patent law discussions”) that cannot square with his own admissions. If it were up to me, I would simply expunge his posts. Yes, that might make the reading a little odd, but trust me, you lose nothing when the lies are removed. Plus, you have the bonus of not tempting Leopold into telling anyone to shut up when MM’s prevarications are highlighted.

  11. I’m making perfect sense – you are projecting your inability to understand outside of your nice little world again (it’s a contributing factor in your inability to notice things – when I say “open your eyes,” I mean non-literally ((unless of course, you happen to also have your eyes closed)) ).

    But then again, if you actually spent as much effort in trying to understand as you do in trying not to understand – or better yet, in selectively responding to only certain posters – and not commenting on the truly egregious ones, well, perhaps it wouldn’t be that difficult for you to open your eyes.

  12. My answer was “It can, but it doesn’t necessarily.” But I’m not interested in continuing the discussion, thank you – your question is not very helpful.

  13. Are you sure, after all, the whole point of the comment was to see your answer and if you actually did not have an answer, well then it seems a little intellectually dishonest to suggest otherwise, doesn’t it?

    The whole point of what comment? You’re not making any sense.

  14. “Let’s return now to discussing whether patent law is the appropriate system for promoting ‘progress’ in this area.”
    This is a discussion about 35 U.S.C. § 101. If you want to preach policy, go hire someone on K Street and lobby Congress. This discussion is about the law – not policy.

    “I never said that devices which only display information are per se ineligible subject matter, nor do I believe that. I am not sure who’s ‘logic’ you are arguing with, but it’s certainly not mine.”
    It is called argument by analogy – most lawyers employ it. If the manner by which the information is being gathered, processed, or outputted doesn’t matter, then a gauge wouldn’t be patentable since its sole function is to gather, process, and output information. Your problem is that you don’t understand how the logic implicit in your “policy position” plays out with other technologies – likely because you’ve never thought about it.

    “a software claim that differs from a prior art claim only in terms of the information being processed is per se unpatentable under 102/103″
    I see you added “being processed” to your statement. Try to stick to a single hypothetical.

    “Do you have any evidence that the USPTO actually applies this law in a remotely meaningful and consistent way.”
    I have no evidence that the USPTO applies any law in a remotely consistent way … but that is besides the point.

    “unlike the claims in Prometheus …”
    Were the claims is Prometheus directed to software? I don’t think so.
    Were the claims in Prometheus directed to an improvement of a machine? I don’t think so.
    With a substantively different fact pattern, I don’t see the relevance of Prometheus. Software is an improvement to a machine, which fits squarely within the 4 corners of 35 U.S.C. § 101. Moreover, a machine is not an “abstract idea.” An “improvement” is not abstract – it is tangible. Otherwise, it would not be an improvement.

    “would the Supreme Court in Prometheus have accepted the eligibility of a claim where the new ‘fact’ was processed by a computer rather than mentally?”
    Again, you are raising a hypothetical that is covered by 102/103 – not 101. Software that processes X, Y, and Z data in a particular manner will be rendered anticipated by software that processes A, B, and C data in a the same particular manner. The difference between A, B, and C and X, Y, and Z doesn’t matter. However, if A, B, and C = an XML file and X, Y, and Z are JPEGs then all bets are off because the process doesn’t operate the same if the types of data are different. A difference in the type of data is not the same as a difference between two data sets of the same type.

    “Like nearly all people of a certain age who had access to a decent public education, I’ve written software myself”
    Writing a couple simple programs in BASIC, FORTRAN, PASCAL, COBOL, C+ or whatever you got a couple credit hours in doesn’t qualify one as understanding software. There are a lot of people who can mix vinegar and baking soda to produce CO2 but that doesn’t make them chemists.

    “It’s not rocket science.”
    Actually, rocket science is far, far easier than complex software. Windows 8 may have over 100 million lines of code. The amount of intellect that went into its creation is staggering. However, that is only just one of a multitude of interacting applications in a typical computing environment. For you to pass all that off as just “more entertaining music” and “incredibly simple stuff” just confirms my statement that you have no idea what software does.

  15. I didn’t forget anything.

    Are you sure, after all, the whole point of the comment was to see your answer and if you actually did not have an answer, well then it seems a little intellectually dishonest to suggest otherwise, doesn’t it?

    Or does that only apply to how you view others?

  16. I’m going to ignore the silly cheerleading, SR. Maybe you should create a National Software Flag so you can salute it every morning. Because software is sooooooo great! I’m glad you felt compelled to share your unbounded enthusiasm. Let’s return now to discussing whether patent law is the appropriate system for promoting “progress” in this area.

    A gauge that displays temperature is patentable .. even if the only thing it conveys is information (i.e., temperature).

    I never said that devices which only display information are per se ineligible subject matter, nor do I believe that. I am not sure who’s “logic” you are arguing with, but it’s certainly not mine.

    If software only differs from the prior art based upon “information,” then the software is unpatentable under 102, 103.

    Great idea – I would love to agree! Do you have a case cite directly on point for that proposition (i.e., a software claim that differs from a prior art claim only in terms of the information being processed is per se unpatentable under 102/103)? Do you have any evidence that the USPTO actually applies this law in a remotely meaningful and consistent way?

    Regardless of your answer(s), I believe that such claims are also ineligible under 101 for the same reason that the claims in Prometheus are ineligible: they are, effectively, claims to the information itself. There is a key distinction to be made (of course, I will bring that distinction up myself): unlike the claims in Prometheus, the information-processing reciting in software claims is usually limited (depending on whether the drafter remembered to inhale some oxygen) to a computer context. The issue then becomes: is that enough? You seem to understand quite well the fundamental role that computers have in our lives (an entirely predictable outcome since the invention of the first computer) so I believe that the correct answer is “no.” Consider for example: would the Supreme Court in Prometheus have accepted the eligibility of a claim where the new “fact” was processed by a computer rather than mentally?

    Written by somebody who apparently has no idea what software does.

    Like nearly all people of a certain age who had access to a decent public education, I’ve written software myself. And if anyone wants to know what “software” “does”, they can just look it up on the Internet. It’s not rocket science. It’s incredibly simple stuff. That is why any difficulties that might be encountered during programming (such as they are) are only very rarely addressed in most computer-implemented inventions. The abstraction is the invention.

  17. anon: no one is saying anything about a step – by itself.

    LOL. Sorry, anon. I’m saying things about steps by themselves. So is the Supreme Court. So is the Federal Circuit. So is everybody. It’s called having a conversation about claims.

    We all know you are incapable of having a conversation about anything (in English, anyways). So maybe time to x x x ? Just a thought.

  18. anon: no one is saying anything about a step – by itself.

    LOL. Sorry, anon. I’m saying things about steps by themselves. So is the Supreme Court. So is the Federal Circuit. So is everybody. It’s called having a conversation about claims.

    We all know you are incapable of having a conversation about anything (in English, anyways). So maybe time to GFY? Just a thought.

  19. what do you think the [oldstep]+[newthought] crrp comes down to?

    What does it “come down to”? I don’t know what it “comes down to”. I do know that it’s perfectly consistent with the statement that “the mere presence of ineligible subject matter in a claim does not render the claim ineligible”.

    And I know this has been explained to you dozens of times. And your failure to “get it” means that you are either (1) a m0r0n or (2) a liar/troll type. That fact has also been explained to you dozens of times.

  20. Sorry Leo, I honestly do not recall you answering this question. If you are being honest and sincere, then by all means please repost your answer so that we may continue with the discussion. I would be most interested in hearing your views.

  21. Because it’s fun…?

    And because I’m a helpful kind of guy, and it’s Christmas.

    Lucky you!

    What was the answer, though? You took all that time and effort to post in response to me (and so very much appreciated), but you forgot to repost the answer.

    Thanking you in advance,

  22. Maybe he missed it. I sure have. I would like to see your answer to this question.

    Actually, you were the first to respond to my earlier answer. How come you keep doing that?

  23. More than that – Ned is the one who provided an article about the difference between holding and dicta (in a losing argument about Bilski and business methods no less) – and yet here he is, pushing for the SC dicta to be swallowed without question, merely because that particular dicta (contrast with anything in Chakrabarty) happens to align with his known-third-party-influenced agenda.

    Not only that, but Ned is about actively punishing anyone (and in particular stooping to demonize Rich once again – Rich, who actually helped write the law and knew the law better than the SC ! , or any of their clerks, who, btw, while may be quite intelligent, are none-the-less abject enthralled pawns totally captured in the agenda driven, results oriented, desired outcomes of the SC justices).

    Ned, I have told you before – the reason why Rich “got away” with thumbing his nose at the Highest Court was precisely because he did know the law better than the Supremes and obviously was quite comfortable in the eternal p1ss1ng match between the CAFC and SC in NOT following SC dicta.

  24. Divorced from reality, specious, no idea, and unsupported empty table-pounding policy statement wrapped in lies about law and facts – given his prior admissions on “programmed to = structure” and the understanding of the “functionally related” exception to the written matter doctrine.

    You nailed MM for what he is.

    And MM, Prof. Crouch may be on holiday, but his rules still apply: NO LYING.

  25. Don’t play coy. You were attempting to give the false impression that all 9 justices were on board with the holding — hence use of the word “unanimous.”

    I didn’t call you a liar. I called you a deceiver.

  26. “Only in the sense that more entertaining music (or more challenging music?) represents an ‘improvement’ for a player piano.”
    I see that you are divorced from reality. Software changes almost everybody’s lives in this country, it changes how businesses operate, it has created entirely new businesses. Software transforms the 4 ounce paperweight found in most people’s pocket made out of plastic, glass, metal, and silicon into as versatile and valuable machine as has ever graced the face of this planet. There are many people who would rather give up their automobile than their smart phone.

    And you compare software to more entertaining music?

    “Because information isn’t eligible for patenting. It should not matter (and can not matter, if we wish to have a credible patent system) how the information is used, processed or accessed, if all that differs from the prior art is the information itself.”
    You logic is specious. A gauge that displays temperature is patentable .. even if the only thing it conveys is information (i.e., temperature). A stoplight is patentable, even if the only thing it conveys is information (i.e., whether one should stop, slowdown, or go). A radio transmitter and a radio receiver are patentable, even if the only thing they do is transmit information.

    “if we wish to have a credible patent system”
    First and foremost, that is a policy argument – not a statement of the law. Not only is it a policy statement, it is an unsupported policy statement.

    ” if all that differs from the prior art is the information itself”
    Written by somebody who apparently has no idea what software does. Software, when combined with hardware, causes CHANGES in the hardware. If software only differs from the prior art based upon “information,” then the software is unpatentable under 102, 103.

  27. Applying the current law, as interpreted by the Supreme Court to Alice claims we know that the claims as a whole are not;

    1. A bare Court created judicial exception, (derived implicitly from the Congressional Statute of 101) or

    2. The first element of the claim is not a bare Court created judicial exception (derived implicitly from the Congressional Statute of 101). Followed by one or more steps for applying the judicial exception.

    Therefore the claims maintain their presumption of integration and pass the bar at 101.

    In fact, only someone that had a personal agenda, or bias against claims for conducting business and/or performed with the aid of a computer, and wanted that bias enacted into law, would even suspect Alice claims as being non statutory as an abstract idea.

  28. Very good then. Now that you have conceded that “software” per se is neither a Court created judicial exception, nor explicitly or implicitly excluded from the statute by an act of Congress, we can proceed. So, using the Courts line of 101 cases as the lens thru which to determine when claims are “integrated” it is apparent that a new and useful software process claim, like all process claims, has a clear presumption of “Integration” and the presumption remains valid, and requires no further analysis under 101 unless the claims as a whole recite;

    1. A bare Court created judicial exception, (derived implicitly from the Congressional Statute of 101) or

    2. The first element of the claim is a bare Court created judicial exception (derived implicitly from the Congressional Statute of 101) followed by additional steps that apply the judicial exception. In the case of the latter, analysis for extra-solution activity, (pre or post ) occurs to determine if the additional steps in the claims are integrated to ensure that the claim amounts to significantly more than the judicial exception itself or instead pre-empt the judicial exception.

    What follows then is a brief synopsis of how the Court has applied the above “Integration Analysis” in each of the 101 cases.

    (i) GOTTSCHALK v. BENSON (1972) = (Claims Non Integrated)

    Reason/Analysis: Claims as a whole are a bare Court created judicial exception of an algorithm. No extra-solution (pre or post ) analysis required. See the Supreme Court describing the claims as an algorithm:

    ( “A procedure for solving a given type of mathematical problem is known as an “algorithm.” The procedures set forth in the present claims are of that kind;…..” ) [409 U.S. 63, 66]” GOTTSCHALK v. BENSON, 409 U.S. 63 (1972) 409 U.S. 63

    (ii) PARKER v. FLOOK (1978) = (Claims Non Integrated)

    Reason/Analysis: Claims begin with a bare Court created judicial exception of a mathematical formula followed by additional steps that apply the judicial exception. Extra solution ( pre or post ) analysis required. See the Supreme Court rejecting Flooks argument that post solution steps for adjusting an alarm limit with the mathematical formula makes the formula patentable:

    (“ And he argues that the presence of specific “post-solution” activity — the adjustment of the alarm limit to the figure computed according to the formula — distinguishes this case from Benson and makes his process patentable. We cannot agree”) Parker v. Flook – 437 U.S. 584 (1978)

    (iii) DIAMOND v. DIEHR (1981) = (Claims Integrated)

    Reason/Analysis: Claims as a whole are not a bare Court created judicial exception. Nor does the first element of the claims begin with a bare Court created judicial exception followed by additional steps or claims that apply it. The claims maintain their presumption of “Integration” and are statutory subject matter. See the Court contrasting the claims with Flook and explaining that the Judicial Exception ( a mathematical equation) is used in conjunction ( read as Integrated) with all the steps in the process: ( “In contrast, the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to preempt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction ( Read as Integrated ) with all of the other steps in their claimed process. ” ) Diamond v. Diehr – 450 U.S. at 437 U. S. 586. Emphasis added.

    (iv) BILSKI v. KAPPOS 2010 = (Claims Non Integrated)

    Reason/Analysis: Claims as a whole are a bare Court created judicial exception of a mathematical formula. No extra solution (pre or post ) analysis required. See the Court explaining that Bilski’s claimed hedging method is in fact a plain math formula:
    ( “Claim 4 puts the concept articulated in claim 1 into a simple mathematical formula.”)
    BILSKI v. KAPPOS, 2, 2010,

    (v) MAYO v. PROMETHEUS 2012 = (Claims Non Integrated)

    Reason/Analysis: Claims as a whole are a bare Court created judicial exception of a Law of Nature (LoN) with steps that pre-empt the judicial exception itself. See the Court explaining in Prometheus that the steps for applying the LoN, do not integrate the LoN with anything more because they cover the LoN itself. This is followed by contrasting the claims with Diehr, that are “integrated” and therefore do not pre-empt a judicial exception in the form of an equation: ( “Finally, considering the three steps as an ordered combination (read as integrated ) adds nothing to the laws of nature that is not already present when the steps are considered separately. Pp. 8–11. 566 U. S. ____ (2012)…. “In Diehr, the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. 450 U. S., at 187. These additional steps transformed the process into an inventive application of the formula.” ) MAYO COLLABORATIVE SERVICES, DBA MAYO MEDICAL LABORATORIES, ET AL. v. PROMETHEUS LABORATORIES, INC. (Emphasis Added)

  29. The central problem, is that Benson thought the statutory authority for this exclusion was 101.

    Perhaps the other guy.

    Either way, Benson was poorly decided, and has been cabinned by Diehr (as I have mentioned, the “claims as a whole” is in direct realization that the treatment of claim 8 was, in fact, base error).

  30. Ned,

    Stop.

    Look at the direct example I gave – it happens all the time. Perfectly eligible claims with ZERO steps (when looked at as points ) that are novel. Your desire to make a (false) distinction has no place in the law. None.

    Deal with it.

    Your “point of novelty” is a canard. Plain and simple.

  31. And such a step, by itself, is undoubtedly ineligible subject matter.

    Ah yes, the ultimate fallacy – no one is saying anything about a step – by itself. Why are you even mentioning such?

    There there are no novel physical structures recited in the claim (sorry, “logical architecture” and flowcharts don’t count).

    Yes they do – you have admitted as much – remember, programmed to is structure.

    Stop the lies!

  32. Nobody commenting on this message board has ever been more clear and consistent about the fact that the mere presence of ineligible subject matter in a claim does not render the claim ineligible

    Another outright lie – just what do you think the [oldstep]+[newthought] crrp comes down to?

  33. lol – functionally related – and see Alappat for the holding of the change in machine.

    Only in the sense that

    That is a lie and you know it.

    Stop the lies MM.

  34. Software is an improvement for a machine (i.e., a computer).

    Only in the sense that more entertaining music (or more challenging music?) represents an “improvement” for a player piano. Or a more competent human operator represents an “improvement” for an otherwise identical typewriter.

    Computers receive, store, process and output information. The importance of the information being processed should never be allowed to affect patentability (yet patents based on such distinctions issue every week), nor should the definitions given to the information being processed, stored, or outputted be relevant to patentability. Why is that the case? Because information isn’t eligible for patenting. It should not matter (and can not matter, if we wish to have a credible patent system) how the information is used, processed or accessed, if all that differs from the prior art is the information itself.

  35. Hey you, Benson quoted the cases Le Roy, etc., that did hold that priniciples in the abstract are not patentable.
     
    The central problem, is that Benson thought the statutory authority for this exclusion was 101.  Where did they get that idea?  Rich?

  36. anon, cunard?
     
    Stop?
     
    Listen to yourself.  You sit there in denial — denial that Le Roy v. Tatham, O'reilly v. Morse and the cases that followed it even existed.

  37. first we must clear up the false assumption that the mere presence of software in a process claim renders that claim suspect under 101.

    Can we also clear up the false assumption that all dinosaurs had feathers at birth? Like the false assumption you refer to, I have no idea who has ever made that assumption or why it needs to be “cleared up”.

    Nobody commenting on this message board has ever been more clear and consistent about the fact that the mere presence of ineligible subject matter in a claim does not render the claim ineligible. Frankly, it’s the only thing in Diehr that makes any bit of sense. Unfortunately, it’s also incredibly obvious because just about every claim capable of being infringed by the acts of a human being that doesn’t expressly disclaim, e.g., “thinking about something while practicing this claim”, certainly includes within its scope anybody who carries out that exact (albeit incredibly broad) step. And such a step, by itself, is undoubtedly ineligible subject matter. The “brilliant” Court in Diehr acknowledged this trivial fact of patent life.

    But all that is a sideshow/digression from the issue at hand (which is probably why you bring it up). We’re talking about situations where the invention is a method of processing information, where there are no novel physical structures recited in the claim (sorry, “logical architecture” and flowcharts don’t count). Other than the information processing steps, all other steps in the claim are old/obvious, as recited (note: it’s not that these other steps are old when considered individually, it’s that they are old/obvious when considered in the order recited in the claim). There are no novel transformations of matter, except for transformations that are distinguishable from prior art transformations only by information content (and information itself is not eligible for patenting, as you surely will acknowledge).

    So, back to my question: “When, if ever, is software considered to be “integrated” into a process in a manner sufficient to satisfy 101?”

    Consider carefully the 9-0 decision in Prometheus when answering that question.

  38. The language that everybody forgets from 101:

    “and new and useful improvement thereof.”

    Software is an improvment for a machine (i.e., a computer).

  39. “I just want to point out, once again, that Benson was unanimous. The SC was sending a message.”

    Only 6 judges participated. No one understood what was being claimed — so they gave it to crazy-man Douglas to write the decision.

  40. With 3 justices not taking part in the decision. I see your intellectual dishonestly is showing through again.

    Regardless, Benson was decided by people who had NO CLUE what was being claimed because of their technological ig-nor-ance.

    Benson is flaunted every day at the USPTO for the past 20 years (at least) — because Benson was wrongly decided.

    Benson said that “abstract” ideas weren’t patentable except NOBODY can characterize them with any specificity.

  41. Ned,

    Please stop with the point of novelty canard already.

    It is perfectly possible to have a method claim with multiple steps, each of which are not novel. In that case there is in fact NO ‘point of novelty’ as you seek to import into patent law.

  42. If instead you claimed all means for attaching one thing to another, then you have exceeded the scope of your disclosure.
     
    I think the difference is one is claiming what you disclose.  The other is the result claimed functionally at the point of novelty.

  43. I’ve answered that question directly, 101, at least once. It seems a little intellectually dishonest to suggest otherwise, doesn’t it?

    Maybe he missed it. I sure have. I would like to see your answer to this question.

  44. Which logically leads one to the often asked but never broached question; If as the Prometheus Court stated 9-0, a LoN integrated into a process transforms the process into an inventive application of the LoN, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

    I’ve answered that question directly, 101, at least once. It seems a little intellectually dishonest to suggest otherwise, doesn’t it?

  45. Certainly to date you have never successfully explained how it can be done, nor has anyone else with your same … um … predilections.

    LOL – just like you have never explained the current legal standing of mental steps being allowed in claims.

    Funny that – you seem so boastful of a superior position, and yet, cannot even explain the current state of law.

  46. MM Wrote: “When, if ever, is software considered to be “integrated” into a process in a manner sufficient to satisfy 101?”

    That’s a fair question and I will indeed answer it and all your other questions. But first we must clear up the false assumption that the mere presence of software in a process claim renders that claim suspect at 101.

    I believe the Supreme Courts defense and upholding of business methods applies equally to software methods, therefore using Bilski as a template it can easily be argued:

    (Section 101 similarly precludes the broad contention that the term “process” categorically excludes software methods. The term “method,” which is within §100(b)’s definition of “process,” at least as a textual matter and before consulting other limitations in the Patent Act and this Court’s precedents, may include at least some methods of sofware. See, e.g., Webster’s New International Dictionary 1548 (2d ed. 1954) (defining “method” as “[a]n orderly procedure or process … regular way or manner of doing anything; hence, a set form of procedure adopted in investigation or instruction”). The Court is unaware of any argument that the “‘ordinary, contemporary, common meaning,’” Diehr, supra, at 182, of “method” excludes software methods.) Bilski v Kappos 2010 (Emphasis added by substituting the term “business” with “software”)

  47. the often asked but never broached question

    The question is poorly asked, as has already been pointed out to you. It’s poorly asked because the key issue is assumed in your question (i.e., when, if ever, is software considered to be “integrated” into a process in a manner sufficient to satisfy 101?).

    Can you tell us how a method of thinking about a novel “natural law” (or any other thought) can be “integrated” into an otherwise old method to create an eligible claim? I submit that you can not do this. Certainly to date you have never successfully explained how it can be done, nor has anyone else with your same … um … predilections.

    It’s an important exercise to consider and acknowledge because it sets a crystal clear bound that relegates a potentially massive class of claims to the 101 dustbin.

    As for software, the courts have already recognized that new methods of processing information are suspect when the new methods could be carried out mentally. Given the ubiquitous nature of computers in our lives and the information-squelching effect of granting claims to “new” processes for naming, storing, and distributing information (which differ from prior art methods only by the abstract “definitions” given to the digital information that is being stored and distributed), it is not unreasonable to assume that new software, like a new mental process, is something that can not be “integrated” sufficiently into an otherwise old method to render that method eligible.

    If you want to have a deeper conversation (I’ve seen no indication that you do, over the many years), you could recognize that there are different classes of computer programs and we could discuss/debate the the eligibility issues of each of those classes in turn. Again, I highly doubt you want to have that conversation, just as I highly doubt that you will ever accept the fact that all claims in the form [old step]+[newthought] are ineligible. The reason you (and other patent t—ggers) are reluctant of course is that your ideology requires that any claim reciting the term “method” that is not a purely mental process (a strange concession on its own, but one that you’ve certainly made) should remain eligible. Suffice it to say that your kind of thinking is already a relic of the distant past.

    Get ready for more beatings.

  48. If I claim a nail, do I not claim all practical applications, present and future of the nail?

    Why should scope ever have anything to do with 101?

  49. AAA, I would suggest that you actually read the patent statutes beginning with the first one from 1790. They all require the applicant to the invention in a manner of making and using the invention. This is an essential part of the bargain for receiving a patent. It was in the very first patent act of the world – the one passed in Venice in the Middle Ages.

    Are statutes even required the best mode to be described.

    If you read both Le Roy v Tatham and O'Reilly v. Morse, they were talking about the aspect of of the statutory requirement that we now know to be section 112, paragraph 1. Both cases rested their statutory authority on the statutory requirement to describe how to make and use the invention. If one claims a principal in the abstract, he is claiming something that is not a practical application. The Supreme Court reasoned that this had the be a violation of the statutory framework. It's not simply a question of whether one can understand the claims. Is a question of claim scope – claiming beyond the applications disclosed and enabled. It is claiming all practical applications.

    I suggest you reread these two cases with above in mind.
     
     

  50. EG, I would agree with you that Benson is slightly unclear in its language concerning "preemption." Is not unclear though that what is needed to make a method claim patentable as a new, physical, result. The problem with the claims in Benson was that all the provide it was numbers and in numbers out. Nothing physical was affected.

    The Supreme Court, since Le Roy v. Tatham and O'Reilly v. Morse, had made it clear that the stuff of patents are practical applications, not principles in the abstract. What is a mathematical formula but a principal in the abstract? It is a mental process. While it could be conducted on a computer, as both Rich in the lower court, and the Supreme Court itself, at least claim 13 was not so limited. Any means and methods could be used.

    Thus one reading, and then understanding, the Supreme Court cases that have stood the test of time would not have been puzzled at all by the result in Benson, or by the result in Bilski.

    Now what people say that Benson was wrongly decided, I would like to know why? Of course, the claim that was limited to a shift register might have been treated differently, but I don't believe the Supreme Court construed the claimed to be different than claim 13. The case is not about that claim, it was about claim 13, the claim that was not limited in any respect to a digital computer, even though that was the means disclosed.

  51. Nick, I agree.  The is a mini-war between the Federal Circuit, or at least some judges of that court, more often than not the patent attorney judges of that court, and the Supreme Court. The most openly contentious historically has been none other than Judge Rich, who is thought to be the first patent attorney ever appointed to a circuit court.

    I think the patent attorneys on the court and the patent bar see largely eye-to-eye on a lot of issues, and the patent bar makes their positions known by constantly inviting members of the Federal Circuit to their meetings. It seems to a casual viewer that at least some of the Federal Circuit are creatures of the patent bar. Judge Rich was appointed to the Federal Circuit primarily because of his activities in connection with the '52 Act, where he was the one of the two patent bar representatives on the so-called "coordinating committee."

    I think the Federal Circuit would get a lot more respect of the Supreme Court if it's members were the kind of judges that could be Supreme Court judges themselves, well respected lawyers a proven ability.   In other words, if I were to appoint Federal Circuit judges in the near term, I would make sure that all of them were ex-Supreme Court clerks.

    I know I say here is not popular among the patent attorneys that post here often. Some have questioned why I would take a view that supports the Supreme Court against the Federal Circuit. They do not expect patent attorneys to take sides on the side of the Supreme Court in this mini-war. However the way I see it is that the Federal Circuit, particularly, some of the judges on the Federal Circuit, think they are right in Supreme Court is wrong in any number of cases. The arrogance of these people it is appalling in my view.
     

  52. “That statement is a bald-faced lie and the lawyers at the BSA that wrote it know that it is a bald-faced lie.”

    Well, I don’t know the facts about in that instances but if you are interested in “bald faced lies” what about the briefs that say the majority panel in Alice use of “manifestly evident” was in opposite of the Supreme Court in Prometheus? That is some very dishonest legal trickery to the say the least. Manifestly evident is used in the same legal context, and applied in the same manner as the Supreme Courts use of “bare” Law o Nature, which can be extrapolated to all Court created judicial exception (derived implicitly from the Congressional Statute of 101) .

  53. I have detected a strain of intellectual dishonesty running thru some of the anti software briefs regarding the use of “ inventive concept” in the Prometheus case. Some briefs are assuming in argument that the Supreme Court in Prometheus upheld the Flook Courts use of the “inventive concept”.

    Flook’s approach to the “Inventive Concept” was from a dissection approach in which certain elements are assumed within the prior art and then stripped and away and ignored at 101. Those elements can be mental steps, business exchanges, math equations, and are old steps.

    However Diehr put a gloss on that approach with it’s strict and explicit claims as a whole doctrine. Diehr, when considering the claims as a whole ( integrated) looked for an inventive application of the concept. With “application” being the fundamental difference.

    It’s a very subtle difference but essential to recognize because the Flook approach represents the key for software, and methods for conducting business, to be dissected and denied at 101, and the Diehr approach, through its claims as a whole ( integration ) analysis allows these same technologies to be upheld as patentable subject matter.

    The anti software and business method attorneys are now arguing that Prometheus is line with the Flook “inventive concept” dissection approach when the Court in Prometheus clearly held Diehr was the case most on point for what “is” patentable subject matter and that “integration” of a law of nature into a process as a whole transforms the process into an inventive application of the law of nature.

    Which logically leads one to the often asked but never broached question; If as the Prometheus Court stated 9-0, a LoN integrated into a process transforms the process into an inventive application of the LoN, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  54. . As has been noted before, it’s a very clean, logical decision

    LOL – that’s why you have never even attempted to actually square it with the decisions that it not only rests on, but say that are most on point? What a hypocrite.

  55. “Simple economics makes clear that, if patent protection for software were curtailed, the adverse consequences would be swift and severe. . . . ”

    That statement is a bald-faced lie and the lawyers at the BSA that wrote it know that it is a bald-faced lie. We will never have justice in this country as long as lawyers are willing to speak absurd lies simply because it makes their clients happy. There needs to be some responsibility in the legal profession!

  56. Remember that Breyer referred to “draftsman’s art” in Mayo and it wasn’t a complimentary comment when he made it.

    Aw, someone’s fee-fees got hurt because Justice Breyer didn’t engage in enough patent prosecutor a–kissing.

    Seriously, maybe think about moving on from your strange Prometheus hang-up. As has been noted before, it’s a very clean, logical decision. It will never, ever be reversed.

    Why is it so important to you that people can obtain patent claims to “methods” of thinking about a new idea? Do you honestly believe that would promote progress in anything except the legal business?

  57. if the article were well researched and well written, it would be published by a law review I submit

    Your thoughts, Dennis?

  58. Nice thought, FS, but none of the law reviews would publish it (tongue in cheek). Speaking “heresy” about SCOTUS isn’t “politically correct” these days.

  59. It’s simply amazing that you keep citing that case (O’Reilly v. Morse) as if it had some bearing on 35 USC 112, 2nd. It doesn’t. It was decided in 1853, which is 99 years before the passage of the 1952 Patent Act and the establishment of 35 USC 112, 2nd paragraph.

    Here’s what CJ Taney said: “The 5th section of the act of 1836, declares that a patent shall convey to the inventor for a term not exceeding fourteen years, the exclusive right of making, using, and vending to others to be used, his invention or discovery; referring to the specification for the particulars thereof.”

    Here’s what Morse put in his application: “Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer.”

    Here’s what CJ Taney said in response to that: “It is impossible to misunderstand the extent of this claim. He claims the exclusive right to every improvement where the motive power is the electric or galvanic current, and the result is the marking or printing intelligible characters, signs, or letters at a distance.”

    Let me repeat that: IT IS IMPOSSIBLE TO MISUNDERSTAND THE EXTENT OF THIS CLAIM.

    So even if 112, 2nd had been around in 1853, Morse’s claim was, according to CJ Taney, clear and definite. It was impossible to not understand the scope of what Morse was claiming. IMPOSSIBLE.

    Not sure what you’re not getting about that. IT WAS IMPOSSIBLE NOT TO UNDERSTAND THE SCOPE OF MORSE’S CLAIM.

    IMPOSSIBLE.

  60. AAA JJ,

    Scalia is Neanderthal in his comments on patent law (remember him talking about “horse whisperers” in Biski), but Breyer’s even worse. Breyer has the affronty to do it in his opinions, as well as in his oral argument comments. Remember that Breyer referred to “draftsman’s art” in Mayo and it wasn’t a complimentary comment when he made it. Also, in the oral arguments of KSR International, as well as Quanta Computer, he digressed into “raccoon-thwarting” and “bicycle pedal” inventions when he could just as easily used the inventions involved the respective cases to illustrate his point; what he said wasn’t an accident as Breyer is the most anti-patent Justice we’ve seen since William O. Douglas and oh yes, John Paul Stevens (35 USC 273 is a “red herring”).

  61. That term (overclaiming) should not be used by patent attorneys; rather, reference should be made to the specific statutory section(s) at issue.

  62. Then in addition, you have those who evidence such self-loathing that their anti-patent ways are of no surprise.

    Priceless.

  63. AAA JJ,

    That’s evident with his lack of ability in dealing with those who disagree with him on these boards (as well as the over-extravagant praise for those who do agree with him).

  64. the Mayo insistence on 101 being as a preliminary or theshold S.J. test in patent litigation, so that the case arrives on appeal with just that.

    I agree this is a big problem where there has been no attempt to (1) construe the claim or (2) determine the relationship of the claim to the prior art. For many ineligible processes (e.g., the Prometheus claims), those determinations are essential to get to the correct result.

    Note that 101 issues can present themselves at any time during litigation, depending on the claim construction and other evidence brought forward by the parties. When eligibility issues arise, that is always the time to tackle them.

  65. With all due respect, it sounds like there are a few unresolved issues from high school coloring this discussion.

    Yes, but not likely how you are thinking (or observing).

  66. Even beyond the point, shortly before college graduation, when they discover that the best-paying jobs are those in companies run by scientists and engineers?

    Think “especially” instead of “even” and your eyes shall be opened a bit.

  67. Thanks Leopold – I was actually asking for MM’s benefit, as he is the one that occasionally loses understanding of what the term means (like whenever the Products of Nature judicial exception is discussed).

    Of course, you would have known this had your focus been properly adjusted.

  68. I attribute this to the fact that lawyers and judges are drawn from the ranks of liberal arts majors, who look down their noses at scientists and engineers as “losers.”

    Seriously? Liberal arts majors regard scientists and engineers as “losers”? Even beyond the point, shortly before college graduation, when they discover that the best-paying jobs are those in companies run by scientists and engineers?

    With all due respect, it sounds like there are a few unresolved issues from high school coloring this discussion.

  69. If the claims in Morse complied with today’s 112, my guess is that they would have been found to be valid by the Supreme Court back then.

  70. “anon, I wonder if the Supreme Court has ever suspended circuit court judges for contempt.”

    Is that even possible?! You appear to be in love with this idea of citing attorneys and judges for contempt. There is this thing we have in this country known as the rule of law. You seem to want to institute a law of whoever happens to be in power having ultimate authority to do whatever they please, including citing/suspending anybody who disagrees with them for “contempt.”

  71. “Justice Scalia, for example, does not hide his disdain for patent attorneys during oral arguments.”

    Can you provide some examples?

    I’m merely curious, not challenging your assertion. Personally I think that particular knucklehead justice is exhibit A in the case for mandatory retirement ages.

  72. It seems quite evident from the strong objections of some CAFC judges to the Mayo insistence on 101 being as a preliminary or theshold S.J. test in patent litigation, so that the case arrives on appeal with just that. That is their issue, not the one you are focusing on above.

  73. How often do you encounter this, EG? I’ve never observed it.

    anon, do you run into this problem as well?

    LOL, love the rhetorical question.

    FYI, you do tend to “not observe” quite a bit about you. I have tried to help you by noting how off your focus is; you might start by opening your eyes.

  74. Thanks for the laugh Leo. Much appreciated.

    Distain for patent attorneys? There’s a lot of it about, I think, judging by this blog. perhaps it depends on whether it’s individual patent attorneys or the profession, as such.

  75. EG,

    Law has traditionally (well, at least in the shorter term) belonged to those educated in “word” rather than (and to the general exclusion of) “reality.”

    When the ability to manipulate “word” meets the (perceived) limitation of actual science and hard reality, those versed only in “word” react poorly.

    But that is not the only poorly reacting contingent present – it is even more sad when those who have been educated in “reality” align with those who reject “reality” because of other agendas, driven by a number of rather pragmatic (if not understandable) reasons.

    Then in addition, you have those who evidence such self-loathing that their anti-patent ways are of no surprise.

  76. You’ll also see this “disdain” for patent attorneys in the ranks of the “real lawyers” (i.e., those without science or engineering backgrounds).

    How often do you encounter this, EG? I’ve never observed it.

    anon, do you run into this problem as well?

  77. “As easily seen in the ebb and flow of the 101 decisions, philosophical agendas – not a mere interpretation of the words of Congress are what at play.”

    Couldn’t agree with you more on that point, anon.

  78. Ned,

    SCOTUS may have been trying to send a message in Benson, but it was the wrong message. There is an old expression that “ignorance of the law is no excuse,” and I’m not going to give SCOTUS a pass for its utter patent law illiteracy. Sure, what SCOTUS says is the “law of the land,” assuming you can understand what that “law” is, and as Nick Landau correctly points out, SCOTUS makes an utter mess of articulating clear patent law doctrine. In other words, that a SCOTUS decision is unanimous doesn’t make it “right.” All I generally see now from SCOTUS is “patent law despotism” which simply gets my scorn, not my respect.

  79. “Fed. Circuit has people capable of solving this problem, but whenever the Fed. Circuit articulates a clear rule in any area of patent law the Supreme Court grants cert, invalidates the clear rule, and then declines to articulate an alternative.”

    Nick,

    I absolutely agree with you on this point.

  80. Nick,

    Couldn’t have said it better myself. You’ll also see this “disdain” for patent attorneys in the ranks of the “real lawyers” (i.e., those without science or engineering backgrounds).

  81. 101 is the open welcoming gate – and hence the most powerful.

    Yes, it is important to have powerful open gates! I’m glad to see that I’m not the only one here who is not a native speaker of English. Prost!

  82. 101 is the open welcoming gate – and hence the most powerful. As easily seen in the ebb and flow of the 101 decisions, philosophical agendas – not a mere interpretation of the words of Congress are what at play.

    The analogy is apt. Raise your (implicit) glass.

  83. the Supreme Court was already drunk with the power of writing patent law to suit its philosophies, policies, and yes, agendas.

    Drunk with the power of writing patent law? Isn’t that like getting drunk from near-beer?

    Perhaps we’re losing a little perspective?

  84. The bottom line may be that the Supreme Court wants to empower the judicial branch by eliminating any clear standards or rules to which judges should adhere.

    Congress at one time long ago abdicated its constitutional authority by giving to the judiciary the (common law) role of writing law in the defining “invention,” (aka gist of invention, point of novelty or other sundry terms). Congress took back that authority in 1952 by replacing “invention” with “obviousness,” but too late – the Supreme Court was already drunk with the power of writing patent law to suit its philosophies, policies, and yes, agendas.

    When those agendas align you see certain bloggers dogmatically defend the SC. But when misaligned (as in Chakrabarty, Diehr, or even the proper view of Bilski), those same bloggers deny, obfuscate or downright condemn the SC.

  85. Why do you, Anon, join with Rich and sneer at Hand, Story and Cardozo?

    Ned, there is no amount of even the most twisted logic (or will ever be) to support that statement.

  86. What I don’t like is anything under the table. If some is contributing, let their names be known.

    LOL – but unlimited “above the table” contributions (with known names and only hidden agendas are perfectly fine in Ned’s world.

    Well, at least Ned is consistent in this.

  87. While the Supreme Court rejected outright banning business methods, they did so primarily because it is no good definition of a business method.

    Actually Ned, you need to go back and re-read Bilski, as you are regressing from the long fought battle there for you to understand the actual holding and the (incorrect) dicta spouted by Stevens.

    The fact of the matter is that the Supreme Court did not outlaw Business Methods because they could not outlaw Business Methods.

  88. Prof. Crouch,

    Twice now MM has engaged in outright lies given his prior admissions:

    New machines must be described by reference to the structures which distinguish them from the machines in the prior art. That’s never true of computer-implemented claims.

    Am I hearing a call to the ways of the old Patently-O?

    Happy to oblige either way – just want some consistency.

  89. Nothing tangible created. Physical things are manipulated, possibly machines, but nothing physical is created.

    The statutory category is “process,” NOT “process of making one of the other statutory categories of something tangible.”

  90. If I may jump in, I think the Supreme Court is united as an institution against the Fed. Circuit. The Fed. Circuit was formed in part because Congress thought the Supreme Court had so terribly weakened the patent system by the 1970s that it had caused the United States to lag technologically behind Europe and Asia. Courts have for the most part during the 20th and 21st Centuries been unsupportive of patentees. I attribute this to the fact that lawyers and judges are drawn from the ranks of liberal arts majors, who look down their noses at scientists and engineers as “losers.” Justice Scalia, for example, does not hide his disdain for patent attorneys during oral arguments.

  91. As pointed out by “IANAE,” the claim presented above is not a software claim. It does not recite the performance of a task by a computing device. Absent such a limitation that claim does appear to be drawn to an abstraction, involving only communication between parties and the recording of information in a “file.” Now, if the spec defines a “file” as a data structure on a memory storage device, then perhaps the method is a software method, and tied to a specific device.

    The junior examiners now reject software process claims based on 101 without any analysis at all. It would be nice if the courts could resolve this, but I’m not holding my breath. The Fed. Circuit has people capable of solving this problem, but whenever the Fed. Circuit articulates a clear rule in any area of patent law the Supreme Court grants cert, invalidates the clear rule, and then declines to articulate an alternative. The bottom line may be that the Supreme Court wants to empower the judicial branch by eliminating any clear standards or rules to which judges should adhere.

  92. an examiner, I suggest you read O’Reilly v. Morse, and even its immediate predecessor, Le Roy v. Tatum. Both identified claiming principles in the abstract as a breadth problem. The inventor has not invented all practical uses of the principle. He can claim only that implementation that the describes and enables.

    As noted in Morse, when claiming a principle sans application, the applicant need not even file a specification because the principle covers all. But, the court noted in both cases, the patent laws require a specification, and a description of how to build and use the claimed invention. If the claim covers every possible implementation, the claim is to a principle in the abstract.

    Today we recognize all of the above as a Section 112 problem. The Supreme Court, in a line of case (Risdon Rwy, Westinghouse v. Boyden Power Brake, Perkins Glue, Wabash Appliance, Halliburton v. Walker), called this functional claiming, the function of a machine or the like. It further identified the problem not so much as one of enablement, but one of indefiniteness. Needless to say, these case were not overruled by Rich in the ’52 Act.

    The Supreme Court, while citing these cases for 101 purposes, seems to have lost sight of the statutory underpinnings of the rule. Section 112, not 101.

  93. Why 112? A method of calculating energy comprising: E=mc2 is considered by most people to be one of those “abstract ideas”, yet it is not indefinite. Converting binary to decimal on a computer comprising shift registers was also found to be one of these abstract ideas, but it is not indefinite.

  94. anon, I wonder if the Supreme Court has ever suspended circuit court judges for contempt. Rich must have gotten close to being taken to the woodshed more than once. What they had to say to him about State Street Bank, posthumously, of course, was that he was as contemptuous as a circuit court judge could be.

    Now contrast how the Supreme Court respects and followed the wisdom of Learned Hand and Justice Story, or even the words of Cardozo. What a contrast!

    Why do you, Anon, join with Rich and sneer at Hand, Story and Cardozo? Aren’t you concerned with the company you keep?

  95. EG, I am agreeing that the SC can get it “wrong.” But usually in cases where there are dissents. The dissents usually prevail.

    I just want to point out, once again, that Benson was unanimous. The SC was sending a message, I think — as it was in Prometheus.

  96. Ned,

    You’re fine in disagreeing with but when you start bringing up Dred Scott (admittedly a terrible decision, as was Pleussy v. Ferguson), as well as Roe v. Wade, you’re digressing way off the mark. I also ditto AAA JJ comments about Kelo (which turned our 5th Amendment right against “takings” on its head) and Citizens United (since when are corporations “citizens” as envisioned by the Founding Fathers). My view of the current SCOTUS Justices is very jaded (except for one and let you guess which of the 9 that is); all of them are part of the “Ivy League Club” which isn’t good for diversity of thought. That’s it from me.

  97. Well, AAA, close case usely generate strong dissents. Those dissent often stand the test of time and become the majority opinion.

    Another case, the Separate But Equal decision eventually met it fate because, like free and slave states could not coexist, separate is not equal.

    Roe v. Wade was highly controversial. Why? Because so many disagree with abortion. But the principle involved, “liberty” and its implied right of privacy, is a concept that most Americans cherish, and cherish deeply. Without privacy there can be no liberty.

    I cannot think that R v. W could have come out differently if the Supreme Court was to be true to the Bill of Rights and the 14th Amendment.

    So, what is the power of eminent domain? It seems to me to be the power of the government to take property so long as it provides just compensation.

    Then we get to freedom of speech. How can we limit anyone’s right to speak — especially about politics? The more voices and points of view, the better, in my view.

    What I don’t like is anything under the table. If some is contributing, let their names be known. And that is what the SC decided.

  98. “They reflect the wisdom and judgment of the very best judges in the US.”

    If you consider the decisions issued in, oh I don’t know, let’s say, for example, Kelo, Citizens United, to be the products of the “very best judges in the US” than my response is: we can do better.

  99. EG, I find it interesting that you would criticize the Supreme Court. After all, it is the Supreme Court that gave us the US patent system through its decisions. Our system produces the most valuable patents in the world.

    The SC is not composed only of the 9 Justices, but some of the brightest clerks in the world. They get it.

    Furthermore, a Supreme Court case draws the best lawyering in the land to argue both sides of an issue. No lower court will ever draw as much attention.

    So, on the whole, the decisions of the Supreme Court are made upon a record filled with the best arguments on each side of an issue that are possible. They reflect the wisdom and judgment of the very best judges in the US.

    Now, you reference the Civil War and the SC. Let is agree that Dred Scot was the spark that made the war inevitable. Still, the one might argue that by kicking the issue of slavery down the road, the founding fathers were the real cause of the war. A nation cannot be formed from slave states and free states. We should have agreed either to a phase out of slavery as a condition of Union, or we should have not agreed to the Union in the first place.

  100. Malcolm, I think the likes of IBM and MS will tell you, with a straight face, that if software patents are not held eligible, that software development will cease in the US.

    Yeah. Sure.

    Why don’t we start by defining what it is they mean by software and why they find it difficult to live with Benson, Flook, Diehr, Bilksi, and Prometheus.

  101. At some time in the future, I think, we are going to look back at the Kappos era as an era where “quality” went to h*ll in an effort to get patents issued and the backlog reduced. In addition, Kappos is not one who can, with any credibilty, tell us what distinguishes patentable software from the unpatentable. IBM gave us Beauregard claims, after all. Their business is software and they will do everything to protect their business.

  102. EG: If one (and especially more) of the steps clearly specify or recite electronic/computer/machine implementation, the more likely it is that the claimed business method is patent-eligible under 35 U.S.C. § 101. In other words, electronic/computer/machine implementation should be viewed as taking the claimed business (or system) out of being merely an “abstract idea,” and into a “safe harbor” for patent-eligibility.

    Lumping in computers with other types of machines is sort of missing the point by a few billion light years. In part, that’s because computer-implemented claims are treated completely different from claims to “new machines”. New machines must be described by reference to the structures which distinguish them from the machines in the prior art. That’s never true of computer-implemented claims.

    Consider a “new” process for doing laundry. An eligible process might include a step of inserting detergent into the water using a novel device (described stucturally). An ineligible process might include a computer, “wherein said computer determines the optimum amount of detergent to add based on received information about the load size and content.”

    Now, someone’s going to say that this claim to a computer-aided process for doing laundry should fall under 103, which it certainly should. But the problem is that we know that it won’t, in praactice. What will happen in practice is that someone will keep adding “limitations” (none of which are structural) relating to a subset of the infinite number of categories of information that the computer can process until the claims looks “long enough” to the USPTO.

    At that point, anyone can see that the “invention” is merely a collection of ideas about how to optimize the amount of detergent in a laundry load. And those ideas, of course, are claimed on a computer because “everybody knows” that you could never, ever get a claim granted to a “method of thinking about how much detergent to add to a laundry load” unless you stick in something about a computer first.

    One of the reasons our system doesn’t allow patents to so-called “pure” mental processes is that it would drastically lower the bar for what constitutes a patent-worthy invention. In essense, one could simply claim thinking about a new “fact” (as Prometheus tried to do by appending an old step prior to the mental step) or any other type of information. Unfortunately, by permitting the patentability of information processing “on a computer”, the door was opened in a very predictable manner to the same extremely low levels of “inventing.”

    The problem in Dealertrack is that the claimed method there simply said “computer-aided” in the preamble (in my opinion, always a problematical spot in the claim for establishing validity value) without ever stating specifically how any of the recited steps were computer-implemented.

    Why did the USPTO find the claims in Dealertrack non-obvious?

  103. That’s what the unanimous decision in Benson is in a nutshell.

    Put another way, it’s a unanimous decision of the Supreme Court. But describing it that way probably makes you sound less rational for not caring about their opinions.

    Still, your choice of terminology does raise the question of why nine in full agreement is too few but a majority of ten would be enough.

  104. EG: Also, mere “computer-implementation” of a method/system isn’t going to save it if it’s still obvious under 35 USC 103. If the claimed method/system (without the computer-implementation) is “known” or “obvious” (whether or not it’s an “abstract idea”), it’s not going to be saved simply by an obvious “computer-implementation” in view of 35 USC 103.

    If only that were true in practice. It’s a nice theory, though.

    it would be far better to spend that judicial energy on whether the claimed method/system is substantively valid under 35 USC 102, 103, and 112 first before going to 35 USC 101, something that the government in Mayo wisely suggested

    The government in Mayo suggested that when evaluating claims with mental steps under 102/103, the mental steps (or other ineligible subect matter) should be ignored. There was no legal precedent for that approach. What’s always been strange to me is why people find that approach preferable when the exact same result is achieved (i.e., Prometheus’ patent ends up in the trash) for the exact same reasons (the only eligible steps in the claim are old and conventional and the claim effectively claims the novel mental process itself).

  105. Kappos, in a recent speech, seem to think that software that actually manipulates physical things is what software is. Of course, that kind of software was approved in Diehr.

    Because nobody had ever used a computer to automate a manual task prior to Diehr. But I digress.

    With the possible exception of a few individuals who shall go unnamed, Kappos is probably the least credible authority on the planet regarding 101 jurisprudence, and 103 jurisprudence for that matter. Most of the worst cr-p ever issued was issued under his watch. That will be his legacy.

    Heckuva job.

  106. a 101 “Mayo-naise” test is obviously driving some CAFC judges bonkers

    What evidence do you have that any CAFC judge is being driven “bonkers” by the test for eligibility set forth in Prometheus? I don’t see any evidence for that, much less any “obvious” evidence.

    Mayo was a very straightforward decision with a very straightforward, easy-to-apply holding. Absent the creation of a new “ignore-the-mental-steps when doing a 103″ analysis, the most straightforward way to remove claims such as Prometheus’ from the system was 101. It was a long time coming — we could see it coming at least as early as the Metabolite Labs decision. The reason the Federal Circuit’s got it wrong in the earlier case (prior to the Supreme Court’s holding) was simple denial of basic reality. That is “obvious” when you read their earlier decisions, which are filled with misinformation, ignore basic facts about what Prometheus invented, and ignored the Federal Circuit’s own precedent.

  107. Ned,

    To paraphrase the expression of a famous Civil War general, “I care not one pinch of owl dxng” what 9 technologically-challenged and patent law-illerate Justices believe is patent-ineligible based on nonsensical logic and reasoning with no real understanding of what was being claimed. That’s what the unanimous decision in Benson is in a nutshell.

  108. “Why do you think that a presumptively abstract method can be saved by merely pointing to one step and reciting that a computer performs it?”

    IANAE,

    That’s not what I said. What I said is that “if the claimed business methods and systems [] are truly ‘electronically’ (e.g., computer) or machine implemented, [they are] presumptively in the patent-eligibility zone.” You can still challenge the claimed “computer-implemented” method or system as being essentially an “abstract idea” under 35 USC 101, it would just be more difficult to do so. Instead, what “computer-implementation” mainly addresses is the “mental steps” question, i.e., can this method/system be realistically performed/carried out by the human mind?

    Also, mere “computer-implementation” of a method/system isn’t going to save it if it’s still obvious under 35 USC 103. If the claimed method/system (without the computer-implementation) is “known” or “obvious” (whether or not it’s an “abstract idea”), it’s not going to be saved simply by an obvious “computer-implementation” in view of 35 USC 103.

    Again, rather than continue to “squander” judicial energy on judging whether the claimed method/system is an “abstract idea” (which, BTW, SCOTUS has yet to define what is an “abstract idea” other than subjectively “I know it when I see it” by specific examples), it would be far better to spend that judicial energy on whether the claimed method/system is substantively valid under 35 USC 102, 103, and 112 first before going to 35 USC 101, something that the government in Mayo wisely suggested (as well as Rader in Research Corp. v. Microsoft0, and which Justice Breyer unwisely refused to accept because he wants subjective “veto power” by SCOTUS over what is potentially patent-eligible under 35 USC 101. (Breyer is the current Douglas on SCOTUS in terms of being anti-patent.)

  109. Simple economics makes clear that, if patent protection for software were curtailed, the adverse consequences would be swift and severe

    Is the argument here that software patents are somehow important to the economy? If so, that’s pretty funny.

    There are only a few very tiny classes of people who are invested in software patenting: the ultra wealthy gamblers at the Great Patent Casino (who would just invest in some other type of patent), the attorneys who prosecute this g–ba-ge (no comment), and a couple 50 year old guys in their mom’s basement who “invent” software when they aren’t polishing their guns.

  110. [A]s Judge Linn’s majority opinion in CLS Bank International suggests, more credence should be given to claimed business methods and systems that are truly “electronically” (e.g., computer) or machine implemented as being presumptively in the patent-eligibility zone. If one (and especially more) of the steps clearly specify or recite electronic/computer/machine implementation, the more likely it is that the claimed business method is patent-eligible under 35 U.S.C. § 101. In other words, electronic/computer/machine implementation should be viewed as taking the claimed business (or system) out of being merely an “abstract idea,” and into a “safe harbor” for patent-eligibility.

    Why do you think that a presumptively abstract method can be saved by merely pointing to one step and reciting that a computer performs it? How does that make the method less abstract?

    You might as well say that step 3 of the method is performed “in a bank”, because a bank is a big physical thing you can touch. Or “on Earth”. Doesn’t change the method.

    There’s a reason the analysis isn’t about whether the steps are recited on a computer, but whether they could (in real life, not in the claim) be performed by a human. The addition of a computer to store some information or do some math is purely cosmetic, and everybody knows it.

  111. Paul, possibly. But I think the real is that they are trying to limit eligible subject matter to advances in technology, which implies something physical, not intangible. While the Supreme Court rejected outright banning business methods, they did so primarily because it is no good definition of a business method. But abstract implies something of the mind, something intangible. We all know what intangible is when we see it. It should be a simple test. But there are those who seem to want to push the envelope nevertheless, and they do so I think, for business reasons.

    I was struck by the portion of a brief quoted above which said that if the Federal Circuit banned the patenting of software that it would have severe an immediate economic consequences. Really, I say? Really? We don’t even know what you are talking about because there is no good definition of software. Two people talking about software may be talking about it in two different senses. Kappos, in a recent speech, seem to think that software that actually manipulates physical things is what software is. Of course, that kind of software was approved in Diehr. But what others want to patent are business methods. These do not manipulates traditional processes or machines, but abstract business methods. They produce a product that is intangible and therefore abstract.

  112. “if computer implementation were enough (as a practical matter even), the Benson claims should have been eligible.”

    Ned,

    The Benson claims were/should have been patent-eligible under 35 USC 101 except in the mind of the most virulent anti-patent Justice of all time, William O. Douglas. (The only patent Douglas ever deemed to be valid was the Adams battery and primarily because the infringer was a federal government contractor.) Benson, as well as Parker v. Flook was generally ignored after Diamond v. Diehr by the courts (including SCOTUS) up until the more recent Bilski and Mayo decisions.

  113. EG, if computer implementation were enough (as a practical matter even), the Benson claims should have been eligible.

    I don’t truly understand why the Federal Circuit struggles with this issue. The SC has made it clear that the claimed method must do something new physically, because if all it does is something abstract, translate here, “intangigle”, such as manipulating risk, the claims are ineligible.

  114. While many of us may agree that the Sup. Ct. is turning 101 into a “Mayo-naise” [pun intended] of 103 and 112 issues, we should be considering WHY they are doing so?
    My guess is that they realize they have made challenging patent validity for obviousness, and/or overclaiming, nearly impossible at the summary judgment stage. [I.e., without a several million dollar jury trial and appeal or a costly settlement], especially by reinforcing the “clear and convincing evidence” requirement to do so? Even though almost all patents are issued ex parte by a single patent examiner with only a few available hours of prior art searching and claim examination.
    Why else would the Sup Ct. be so directly supporting using 101 as a preliminary or theshold S.J. test in patent litigation for claims that fail to pass their “smell test”?
    Both that and a 101 “Mayo-naise” test is obviously driving some CAFC judges bonkers, but will they have to learn to live with it?

  115. “Abstract ideas” (whatever they are) should be rejected under 112, not 101

    101 is just a crutch for rejecting/invalidating claims instead of going to the time and expense of formulating good 112 or 103 rejections.

  116. The reliance by Judge Linn on “computer-implementation” of all (versus some) of the method claims is one of the “trouble spots” in his CLS Bank International opinion. Here are my relevant thoughts from the article I wrote on this case:

    Based on what the district concluded, one key assumption that Linn’s opinion relies upon is that each of the method claims “requires computer implementation.” That’s certainly true of the method claims of the ‘510 patent which specifically recited an “electronic adjustment limitation” and which even CLS Bank International agreed “require[ed] the use of a computer.” Unfortunately, method Claim 33 of the ‘479 patent (which was deemed to be “representative” of the asserted method claims) does not recite any sort of “computer implementation.” In fact, method Claim 33 of the ‘479 patent could, conceivably (if with some difficulty), be carried out entirely without the use of a computer.

    An even bigger “problem” with Linn’s opinion that I noted in my article is the following:

    An even greater problem with Judge Linn’s opinion is reconciling how this supposed “computer implementation” of the claimed methods in CLS Bank International is a “practical application of a business concept in a specific way” which is different from the claimed methods held to be patent ineligible in CyberSource, Fort Properties and even his own opinion in Dealertrack. Unfortunately, Linn’s opinion does not directly address how the claimed methods in CLS Bank International are distinguishable from what appear to be similar claimed methods (at least in general concept of the business methods involved) from those deemed patent ineligible in these three cases. That weakness in Linn’s majority opinion was not lost on dissenting Judge Prost: “These authorities [including Dealertrack and Fort Properties] should have compelled us to hold that the asserted method claims in this case are abstract.” And if the claimed methods in CLS Bank International cannot be distinguished from those in CyberSource, Fort Properties and Dealertrack in terms of patent eligibility, it’s also hard to see how the claimed systems and media in CLS Bank International make it to the patent eligibility zone.

    Here’s also what I said about how to reconcile Linn’s opinion with Dealertrack:

    [A]s Judge Linn’s majority opinion in CLS Bank International suggests, more credence should be given to claimed business methods and systems that are truly “electronically” (e.g., computer) or machine implemented as being presumptively in the patent-eligibility zone. If one (and especially more) of the steps clearly specify or recite electronic/computer/machine implementation, the more likely it is that the claimed business method is patent-eligible under 35 U.S.C. § 101. In other words, electronic/computer/machine implementation should be viewed as taking the claimed business (or system) out of being merely an “abstract idea,” and into a “safe harbor” for patent-eligibility. That’s also how the holding in CLS Bank International can be reconciled with Dealertrack. The problem in Dealertrack is that the claimed method there simply said “computer-aided” in the preamble (in my opinion, always a problematical spot in the claim for establishing validity value) without ever stating specifically how any of the recited steps were computer-implemented.

    My 2 cents for what it’s worth.

  117. Forgive what is probably a strange question, but why does the Fed. Cir. not remand cases with claims like this back down to the D.C. for a serious 103 S.J. consideration, after claim interpretation, instead of subjecting itself to yet another likely beating up from the Sup. Ct.?

  118. Can you explain the difference to me between “computer-implemented” and “performed by a computer.” I’m struggling to find the distinction.

    I can see that you’re struggling.

    Consider these two processes:

    1. A method of varying the angle of an aileron, comprising:

    2. A method of determining when a washroom on an airplane is available for use, comprising:

    Which one of those is an aviation-related method, and which one is a plain old method that could be performed anywhere but happens to be recited as having an airplane around it?

    Now, supposing you have:

    3. A method of keeping records of people’s bank accounts, where a computer keeps the records, comprising:

    4. A method of storing data in a computer memory to balance wear between a plurality of memory cells, comprising:

    Which of those is a computer-implemented invention in any meaningful sense?

  119. “Those aren’t computer-implemented inventions, they’re ordinary abstract processes that are recited as being performed by a computer.”
    Can you explain the difference to me between “computer-implemented” and “performed by a computer.” I’m struggling to find the distinction.

    An implement (as a noun) is defined as “a device used in the performance of a task.” Also, I just checked my thesaurus and “function” is a synonym for “implement.”

    “Just like a method of queuing for a washroom that is performed on an airplane is not an ‘aviation-implemented invention’, and not allowing such claims to issue would not hamper the aviation industry in any way.”
    For your sake, I hope you don’t make analogies like that in your normal course of business.

  120. Agreed.

    I don’t see any computer limitations in this claim at all. It’s reads on the method generally, and the method generally was performed since ancient times. In other words the point of novelty, if anything, is the use of a computer to do something old. But a computer is not even recited in the claims.

    If the claims were not construed to be limited to a computer implementation, and is no basis to do so that I can see, section 101 is not the real issue here. Novelty is.

    But let’s say that the method itself was new. It describes a book keeping method. Nothing tangible created. Physical things are manipulated, possibly machines, but nothing physical is created. The output is intangible. Such is not the stuff of patents. I don’t know how one could distinguish this claim from the claims in Bilski.

  121. Claim 39 of the ’375 Patent (written as a Beuregard claim that comprises “program code”) recites “electronically adjusting …”. Claim 1 of the ’720 Patnet recites a data storage unit and a computer.

    Those aren’t computer-implemented inventions, they’re ordinary abstract processes that are recited as being performed by a computer. Just like a method of queuing for a washroom that is performed on an airplane is not an “aviation-implemented invention”, and not allowing such claims to issue would not hamper the aviation industry in any way.

    There’s no reason to talk about processes that happen to be stored on a computer-readable medium or happen to use information stored in a computer memory as if they’re anything special. It’s a field of use limitation. Look at the process itself, and see if it’s anything like Bilski’s abstract method of shuffling around securities and obligations. I wouldn’t give much for Alice’s chances in this case.

    As such, I’m not sure what you are looking at.

    “The text of the asserted claim”, reproduced above.

    Even the parties to the case managed to agree that the system and media claims were no better or worse than the method claims, which substantiates my position that putting a computer next to the “invention” doesn’t help.

  122. Claim 39 of the ’375 Patent (written as a Beuregard claim that comprises “program code”) recites “electronically adjusting …”. Claim 1 of the ’720 Patnet recites a data storage unit and a computer.

    As such, I’m not sure what you are looking at.

  123. I doubt these briefs are going to do much, as I’m sure most of the judges have already made up their minds. If anything, they’ll use snippets of the briefs to support their predetermined positions.

    I read the briefs mostly to see who is being intellectually honest or dishonest. This isn’t about the law. This is about protecting your turf. The patent holders want to protect their intellectual property, and the “new kids on the block” want to be able to use that intellectual property without paying for it.

    101 was written broadly – “ANY new and useful process, machine, manufacture, or composition of matter, or ANY new and useful improvement thereof.” As an aside, I wonder if anybody argued that software is an improvement to a machine (i.e., a computer)? I only read a couple of the briefs labeled under “Promoting a Weaker § 101 Requirement.”

    Regardless, starting with Benson, the Courts have paid lip service to the broad statutory language of 35 U.S.C. § 101. You could hardly find a more succinct and broadly written provision in the code. Anyway, since then, the Courts have reduced 35 U.S.C. § 101 into a morass to which there is no end in sight. Instead, 35 U.S.C. § 101 has devolved into a mechanism for judicial policymaking.

    You want to infringe somebody else’s technology? If so, just petition the Courts to have it deemed an “abstract idea.”

    In short, this nothing more than the Court’s continual intrusion upon Congress’s role as policymakers. Although the Court’s application of 35 USC 101 should be very straightforward, the apparent goal (by some) is to render the plain language of 35 U.S.C. § 101 meaningless.

  124. I read the claim three times. How is this case anything to do with software or “computer-implemented inventions”? They didn’t even use the traditional “oh, by the way, also there’s a computer in there somewhere” preamble.

  125. >>File Attachment: Sigram Schindler–ISO Neither Party.pdf >>(474 KB) The abstract idea test is sufficiently defined.

    So their position is that “abstract idea” is like “i” in electrical engineering. The witch hunters get creative…Lemley would be proud.

  126. This is nuts. Whenever you get any case pending with this much money poured into the briefs you know people are trying to get policy to trump law.

    Just remember you other patent attorneys in other areas of patent law that you could be next on the list. Lemley and his gang won’t stop with us.

    Just imagine a chemical compound having to go through a 101 analysis like this, or a mechanical device going through an analysis like this.

    One point, suppose the witch hunters get their way and about what the DOJ wants gets adopted, then does that mean that if you get by 101 that their is a presumption that you pass some of the 103 tests? I think a good argument can be made that the examiner then should not be able to raise the argument that your invention is a routine automation of a known process in 103, but only in 101.

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