Obvious as a Matter of Law

By Dennis Crouch  [UPDATED]

Soverain Softwarwe v. Newegg (Fed. Cir. 2013)

This Federal Circuit decision is fairly big news as far as its legal results. District Court Judge Davis rejected Newegg's obviousness argument on summary judgment – finding each of the asserted patent claims not invalid. On appeal, the Federal Circuit has completely reversed that holding and instead finds here that all of the asserted claims are invalid as obvious. The case also raises a novel argument for secondary indicia of nonobviousness.

The unanimous opinion is written by Judge Newman and joined by Judges Prost and Reyna.

The Federal Circuit panel's approach here follows the lead of KSR International Co., v. Teleflex, Inc., 550 U.S. 398 (2007). In that case, the Supreme Court was able to make the legal conclusion that the asserted claims were obvious because the factual underpinnings of obviousness were not in material dispute.

Where, as here, the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate.

In his usual quotable way, Greg Aharonian writes that "A bit of commonsense leaks into the CAFC."

The asserted patents in this case are all eCommerce patents purchased out of bankruptcy. United States Patent Nos. 5,715,314, 5,909,492, and 7,272,639. The court walked through the obviousness of each different claim finding that (1) each element was found in the prior art and (2) the combination of elements would have been well within the skill of an ordinary database designer and GUI developer.

Licensing as Secondary Indicia of Nonobviousness: The court does have an interesting discussion of secondary indicia of nonobviousness. The patentee argued that the extensive licensing of its patent provided evidence of the patent's nonobviousness – asking the rhetorical question "why would someone pay to license an invalid patent?" The court did not entirely foreclose that argument in the future, but appears to have sided with Newegg's contention that the licenses were taken "to avoid the costs of litigation" and not to take advantage of the invention.

168 thoughts on “Obvious as a Matter of Law

  1. MM, I answered your question many times now and most recently at Jan 25, 2013 at 10:23 PM. However rather than respond, you choose to taunt EG and bash anon, both respected commenters that have demonstrated vastly superior legal analysis skills than yourself. That alone says more about you and your theories than than anyone could say in reply to you.

  2. “and Oz never did give nothin’ to the Tin Man, that he didn’t, didn’t already have.”

    By that logic, the Wright Flyer was not worthy of a patent, because the lumber, burlap and rope (or cables?) were always capable of providing structural support, harnessing the wind and pulling and bending things things, respectively.

  3. “MM, Put the shovel down.”

    Couldn’t have said it better myself, anon. I will only add this: “Malcolm, no baiting allowed.”

  4. Malcolm, I’ve said my piece

    I knew you couldn’t answer, EG. I just want the record to be clear so when the cases come down we all know where you stand.

  5. It’s astounding really how shameless MM is, to attempt to bait with a rekindled taunt that was in such poor taste to begin with – especially after having been devastated on all other discussion points here. Anyone with any amount of self-respect would consider their posting “style” after the beatdown rendered.

    Well, he does serve a purpose: no matter how vile you are, you do have a right to express your opinions (note MM, that this is not the same as blatant lying, which has been expressly stated as not allowed to be posted – not that you pay any attention to that).

  6. Malcolm, I’m going to address each of your points ONLY ONCE, and that’s it. You’re not interested in a ratonal debate. I you don’t like what I say, tought:

    “You do understand, EG, that if courts/examiners were not allowed to consider the relationship of the elements to the prior art during a 101 analysis then one could effectively claim methods of thinking a “new thought” merely by appending an old, conventional step prior to the step of thinking that “new thought” (in this case, the mental step was thinking about a correlation).”

    The problem isn’t my “understanding,” but you’re inability to understand that Prometheus’ claims don’t cover “thought.” What you say is utter rhetorical nonsense. Or as my late father would say, you logic “doesn’t hold soap.” See my response to what you say Prometheus alleged was infringed.

    “In fact, that’s what Prometheus did. And then they tried so sue Mayo under the theory that doctors there were looking at results of old tests and thinking about them in light of an alleged fact that Prometheus published (and thereby dedicated to the public).”

    What was asserted to be infringed by Prometheus and and what Prometheus’ claims covered are different things. If, as you say, Prometheus asserted that simply “looking at results” was infringement, that was extremely inadvisable. Again, Prometheus’ claims don’t (and can’t) cover “looking at results,” “thinking,” or any other such nonsense you say they asserted to be infringing.

    Let me know if you still don’t understand any of this. This is why Prometheus will never be reversed. It’s also why your complaints about “dissection” completely miss the point. Courts look at claim elements separately all the time. What courts are not allowed to do is to identify a claim element (or elements) as “old” or “ineligible” and simply declare the claim anticipated, obvious or ineligible as a result of the mere presence of that element (this is all that’s left of Diehr that matters).

    There’s nothing wrong with my “understanding” of Mayo. The problem is you’re unwillingness to acknowledge that Mayo’s “dissection” of claims and Diehr’s claimed subject matter “as a whole” can’t be squared logically. Again, if you don’t like my response to your assertions, tough.

  7. I would admit that I am wrong, of I were wrong.

    I am not. I do not.

    You, on the other hand have admitted you have been wrong, but that does not you from your blatant lies about things like “configured to ” = structure, and the legal meaning of the exceptions to the written matter doctrine (re: functionally related).

    It would be amazing for you to actually be intellectually honest. What would you do with your vapid agendas? What would you do? (Atticus Finch not needed)

  8. LOL – will the Office pay attention as well and republish its understanding to align with your fanciful farce that is only repeated, well, by you?

    Let me know by posting the link.

    LOL

    MM threat FAIL

  9. the Office interpretation that reinforces what I am telling you.

    You’re not telling me (or anyone else) anything, anon. Your just spewing your rehashed gobbledygook.

    If you can show me how to “integrate” a novel mental step with an “old step” and make an eligible claim, you might begin to have a point. Otherwise there is nothing in the USPTO guidelines that disagrees with what I’ve been saying pretty much forever, i.e., all claims in the form [oldstep]+[newthought] are ineligible. If you disagree with my statement, then provide a compelling counterexample. Otherwise STFU, at least. Or grow up and admit you were and are wrong.

    Same goes for EG. What would Atticus Finch do?

  10. Diehr was not overturned or cabined in anyway.

    That woul depend on what you think Diehr stood for in the first place. A lot of people who commented here (including you and your sockpuppets) were convinced that Diehr prevented a court from looking at patent eligible and ineligible steps in a claim and discussing the relationship of those steps to the prior art.

    Go back and read the many threads on this topic, anon. Your memory seems to be failing. Do we need to revisit what you and your sockpuppets wrote? Happy to do that. But I’ll wait for an appropriate fresh thread that people will actually read. I’m looking forward to it. It’ll be fun. For me. Not you.

  11. Looks like MM is recruiting for the circle.

    LOL – you really think the self-destruction mode is a great selling piece?

  12. Be a good boy and provide the link to the Office interpretation that reinforces what I am telling you. You know, the one that you were the very first to provide as you danced a “9-0 Baby” jig (but that you forgot to actually read what you were linking to, in a now classic self-defeat).

  13. this is all that’s left of Diehr

    LOL – read Prometheus again MM – read it closely. Diehr was not overturned or cabined in anyway.

    Explicitly so.

    It was held to be the model.

    And in sharp contrast to how Benson and Flook were cabined by Diehr in Bilski, I might add.

  14. then one could effectively claim… merely by appending…

    You are not paying attention. I N T E G R A T I O N.

    Obtuse. Is it on purpose? (said in the best Andy Dufresne tones)

  15. One of the major problems with the Mayo decision is that the “steps” in the body of the Prometheus claims are “dissected” in such a manner that those claims aren’t considered “as whole” (“integrated” as you refer to it). As you’ve recognized, and which as Diehr correctly stated, such “dissection” is at least implicitly “verboten” in view of 35 USC 103

    Prometheus is a 101 decision.

    You do understand, EG, that if courts/examiners were not allowed to consider the relationship of the elements to the prior art during a 101 analysis then one could effectively claim methods of thinking a “new thought” merely by appending an old, conventional step prior to the step of thinking that “new thought” (in this case, the mental step was thinking about a correlation).

    In fact, that’s what Prometheus did. And then they tried so sue Mayo under the theory that doctors there were looking at results of old tests and thinking about them in light of an alleged fact that Prometheus published (and thereby dedicated to the public).

    Let me know if you still don’t understand any of this. This is why Prometheus will never be reversed. It’s also why your complaints about “dissection” completely miss the point. Courts look at claim elements separately all the time. What courts are not allowed to do is to identify a claim element (or elements) as “old” or “ineligible” and simply declare the claim anticipated, obvious or ineligible as a result of the mere presence of that element (this is all that’s left of Diehr that matters).

  16. sniff

    Smells like Leopold.

    Phhfffft.

    Shoots arrows into the ground at his own feet like Leopold (I mean, who else but Leopold would aim at anon given the drubbing that MM has received on this thread?)

    But we all know that Leopold quit, right? We all know that Leopold wouldn’t attempt another ill-fated discussion about what Prof. Crouch has said as far as direct lies on this website, right?

    What is it with this penchant for self-immolation from the circle group?

  17. AK-47′s aren’t being outlawed. Feinstein only has 51 votes in the senate, needs 60 to overcome filibuster, and this ignores the house where there won’t even be close to enough.

    You lose.

  18. You’re most welcome, 101 IE. The cases you cite state the law on preambles correctly. The problem has been applying that law to the facts of a given case.

    Regarding “acts”/”steps,” those are part of the “body of the claim,” (as you suggest, the “acts”/”steps” are, in essence, the “structure” of a method/process claim) and therefore must be give patentable weight, with very few exceptions.

    That brings me to Mayo and why it is in conflict with the “claim body matters” at the heart of the cases you cite. One of the major problems with the Mayo decision is that the “steps” in the body of the Prometheus claims are “dissected” in such a manner that those claims aren’t considered “as whole” (“integrated” as you refer to it). As you’ve recognized, and which as Diehr correctly stated, such “dissection” is at least implicitly “verboten” in view of 35 USC 103, and no matter what Mayo’s opinion says to the contrary, it improperly “dissects” the “body” of the Prometheus claims.

    There are other validity issues with the Prometheus claims (including potential “abstractness” when considered as a whole under 35 USC 101, potential “indefiniteness” under 35 USC 112, second paragraph, because it’s unclear what, exactly, is the “invention” being claimed, and particularly patentability, at least for obviousness under 35 USC 103). But that doesn’t excuse the impermissible “dissection” of the “body of the claim” that occurred in Mayo.

  19. Thank you EG. I read “In general, a preamble limits the invention if it recites essential structure or steps, or if it is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, 182 F.3d at 1305. Conversely, a preamble is not limiting “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed.Cir. 1997).”

    Which brings me to the question, wouldn’t the “acts”/”steps” in a process claim be the structure?

  20. How does one “imply” structure?

    “wherein said moiety comprises a halogen”

    “wherein said moiety is polar or charged”

    Etc.

  21. or any other functionality

    You should note MM that your little game of “spin the facts” has express limits on this site (which you again violate).

    When your spin involves a blatant lie you violate the direct order of Prof. Crouch.

    And given that you have voluntarily admitted that you do understand the current legal position of the exceptions to the written matter doctrine (based on functionally related), your attempted spin here in direct contradiction to the law and your voluntarilly admitted understanding of the law can only be viewed as a blatant lie in an attempted obfuscation and a knowingly direct violation of posting policies.

    Are you still waiting to know what’s slimy about this too?

    Mind you, if you wanted to express your feelings, opinions, or a desired change in law, you should post in an intellectually honest manner and identify your intent, explain yourself as to the applicable theory or social philosophy that you feel best supports your view, acknowledge the controlling law and explain why your views should prevail over the controlling law.

    As it is, you shroud your twistings in insults to those that actually do understand the current legal landscape and hold you to that current legal landscape. Your attempted truculence is rendered ineffective by the simple facts that a) you are wrong, b) you have admitted that you are wrong, and c) your continued lies, dust-kicking and obfuscations are easily exposed.

    Why you continue to think that your insulting manner renders your otherwise effeminate attempts to spread your false dogma with any hope of success, when all it does is draw a beacon to the fact that you are only too willing to do anything to advance your cause is beyond comprehension.

    I think if you actually cared at all about your cause (instead of your self-deluded ego), you would have realized that your continued posts in this matter only hurt that cause. You taint that cause with your continued maniacal pursuit of self-defeat.

  22. “There are other things in common with these countries. Corruption, regulation, collectivism, weak individual rights and more”

    Well, I mean, whatever it takes to get that econ running right?

  23. “You don’t know judges, do you?”

    I know a few. And the easy way out was apparent here, give them exactly what they wanted and slap them with a 103 that will never be overturned.

  24. when the implied structure

    How does one “imply” structure?

    More baseless fact twisting from MM.

    Structure is structure – fact.
    Anything more from MM after the basic admission is just dust-kicking and attempts to confuse and obfuscate for his philosophical agenda.

    Intellectually dishonest – and transparently so.

    MM spin FAIL

  25. “The consensus seems to be that every step/element in a claim is considered and therefore has patentable weight.”

    Not just the “consensus,” but also the law, 101 IE, except for language in the claim preamble, which may (or may not) be given patentable weight. The Federaal Circuit cases aren’t always consistent, and certainly not clear, when language in the preamble is entitled to patentable weight. For example, compare the 2002 case of Boehringer v. Schering-Plough (claim preamble limiting) with the 2003 case of Catalina Marketing International v. Cool Savings.com (claim preamble not limiting).

  26. Whether or not this is the correct outcome, I’m uneasy about the reasoning. Even more so now, I’m not at all sure it was a good idea for SCOTUS in KSR to tell chemists (masters of the unpredictable) that if it COULD have been predicted it WOULD have been obvious.

  27. “MM Prediction FAIL”

    MM has been beaten so brutally in this exchange I bet he is wishing he had taken my challenge to apply “Integration Analysis” about now.

    Hey, MM, the challenge is still open, if you are not too intellectually punch drunk that is.

  28. “ding ding ding ding ding … we have a winner.Unfortunately for him, MM is still a loser … haha”

    lol So funny and fitting that you use the very catch phrase MM made infamous when posting under all his sock puppets.

    I bet MM really missed Hans Blix and Orly Taitz about now

  29. AAA JJ, I think anon below and James at Jan 25, 2013 at 06:32 PM both do a good job of answering.

    The consensus seems to be that every step/element in a claim is considered and therefore has patentable weight. But the claims rise and fall as a whole, and not based on any one step or element.

    It seems MM has a theory that any step in a claim that is a mental step, or old step will make the entire claim patent ineligible . Only problem is he can’t provide any citations from the Court or statute to support that view. And as such is doomed to self defeat whenever he tries to assert such a theory.

  30. MM: “answers are (1) the “weight” is always lethal to the eligibility of the claim; and (2) no.”

    Both your answers are wrong. As to why please see my explanation and citations at Jan 25, 2013 at 10:23 PM

    Let me know if you have any questions:

    I am here to help.

  31. MM: “(1) how much does a novel mental step “weigh” when the only other step in the claim is an old patent-eligible step?”

    101 Integration Expert: The step carries the same weight as all the steps in the claim taken as a whole.

    MM: (2) Can the addition of a novel mental step ever “lend patentability” to a claim that recites only a single old conventional non-mental step?

    101 Integration Expert: Yes, when the claim as a whole is novel and non obvious over the prior art, or simply when the claim as a whole defines a pioneering invention.

    Why? Well, for both questions see Diamond V Diehr footnote 12:

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

    Also see:

    “Respondents’ claims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. The questions of whether a particular invention meets the “novelty” requirements of 35 U.S.C. § 102 or the “nonobviousness” requirements of § 103 do not affect the determination of whether the invention falls into a category of subject matter that is eligible for patent protection under § 101. Pp. 450 U. S. 185-191″

    Any questions?

    I am here to help.

  32. “all I did was acknowledge that ‘configured to’ can be structural language when the implied structure can be immediately recognized by the skilled artisan.”

    Can anyone tell me where “the implied structure can be immediately recognized by the skilled artisan” is found in 35 USC 112? As best as I can recall, it talks about distinctly claiming (i.e., distinguishing).

    I wonder if MM has ever opened up a copy of 35 USC …. haha

  33. “it does not mean that everyone else is obliged to make their claim construction mistake”

    If keep saying that over and over again … maybe it’ll be true some day …. haha

  34. “You’d think at this point that computer-implemented methods would necessarily need to be recite some very detailed limitations in order to be patented.”

    No … just novel and non-obvious limitations …. haha

    “the PTO gets its rubber stamp out”
    You are so great at finding patents … why don’t you find me two first action allowances out of the 2100 group. When you find them … tell me how many patents you looked at to find them. The notion of a rubber stamp for software patents is laughable …. haha

  35. “You might want to think that through one more time. The CAFC is not obliged to raise new issues itself.”

    You don’t know judges, do you? They’ll always take the easy way out … which is by ignoring the claim language, if they can.

    Case in point … this is why the PTAB loves to do it … they have an aversion to work … haha

  36. “I am sure the nuance between a feature being given patentable weight (as in, the feature is to be taken into account in judging patentability) and a feature that lends patentability to a claim (as in such a feature successfully contributing to a claim, taken as a whole, being patentable is not too difficult for most people to comprehend.”

    ding ding ding ding ding … we have a winner.

    Unfortunately for him, MM is still a loser … haha

  37. I don’t need to ask – the authority is there when you insist on posting your crrp.

    Don’t like it? LOL – there is a very easy solution, totally within your power.

    I’m pretty sure that you know what it is. The question is whether or not you can handle being intellectually honest and seeing your pet agendas end up where they belong.

  38. No, I continue to state (correctly) that I have answered that question many many times.

    LOL – No, you have stated (incorrectly that you have answered (always somewhere else), or you flat out avoid answering, but never actually answer.

    If you actually answered, then the question would not keep coming up.

    And keep in mind that your trainwreck of [oldstep]+[newthought] is expressly not an answer. We both should understand that perfectly clear. That is your theory, and it not traceable to any citation of law (Supreme Court or otherwise). Now that you do keep on trying to pass off as an answer – but it is not.

  39. the revulsion of your naked anti-patentism

    Let me get my bongos, man. You’re on a roll.

    I am only too happy to hand your head back to you.

    Thanks. Next time, please ask first before touching.

  40. Here’s a question for you, Mr. “Nuance”: (1) how much does a novel mental step “weigh” when the only other step in the claim is an old patent-eligible step? (2) Can the addition of a novel mental step ever “lend patentability” to a claim that recites only a single old conventional non-mental step?

    Since you are afraid to answer the question, anon, I’ll give you the answers: the answers are (1) the “weight” is always lethal to the eligibility of the claim; and (2) no.

    For the record, please let me know if you disagree with either answer and why. Thanks.

  41. you continue to fail to answer as to the current state of law is regarding the abillity of perfectly legitimate claims to have elements of mental steps.

    No, I continue to state (correctly) that I have answered that question many many times. Go check the Prometheus threads, anon. My views on the “state of th law” regarding the legitimacy of mental steps in claims is right there in black and white, repeatedly. Why would I bother answering the question for the 100th time when you pretended not to understand the first 99 times? Check the threads. If you still insist the question isn’t answered, let me know. Then we can settle a couple longstanding questions about you.

  42. Thanks Anon: I agree no one needs Ned back running 100 post on that again. Of course Processes are subject to the same conditions under title 35 and the limited Judicial exceptions.

    Personally, I simply view software as a process under 101.

    1. If software is reduced to steps it’s an application.

    2. If software is running on a computer it’s integrated.

    If it meets steps one and two above it is statutory.

    I know many disagree and that’s fine. However it’s my personal view and I do believe it’s pretty darn close if not right on the money for what the statute and the Court has to say.

  43. That’s not quite the correct way to say it (and only invites Ned and his askew views).

    As a category, they pass 101. Each and every individual claim must still pass 101. Just like (exactly like) any other patent eligible category of claim and ensuing individual claim.

    No one gets a free pass at the claim level.

  44. Obviously you don’t know much as that was a completely vacuous reply.

    But at least you have your head back in your hands.

    Feel free to screw it on straight (this time).

  45. Think of it like this. You can’t ignore any words, phrases, or terms in a claim, because all words, phrases, terms in a claim are claim limitations, and therefore carry patentable weight.

  46. “Give that up and say, yes they are all eligible under 101, and the PTO will get to the serious business of figuring out how to examiner the application properly.”

    The Court has already said this. It’s just that some do not want to hear the message and so go about the business of obfuscation and obstruction.

  47. Malcolm, at times the PTO seems to “get it” (as when they rejected Bilski and argued the MOT) and at other times they seem not to get it, when they say things like “software is patentable subject matter.” When one compares the timing of the statements, one begins to see that the policy of the PTO is being heavily influenced by the guy in charge.

    Whose OX has been most gored by low quality software and business method patents? Yeah, we know who. The O-Man needs to seek out qualified candidates for the next director from their likes. Only then can we expect some real improvement in patent quality. Only then can we expect the PTO to take the lead in following the law and policy as set by the Supreme Court, instead of fighting it like some on the Federal Circuit.

  48. both Kevin and I fail to understand Prometheus.

    Actually I didn’t say that Kevin “fails” to understand Prometheus. He probably does understand it now. But he didn’t get it in real time. Or he pretended not to get it. In other words, he failed to get it.

    You’re still failing to get it. You probably still think the case applies only to “natural laws” and not to claims reciting any “novel” thought preceded by an old, conventional step. I don’t think anyone on the Federal Circuit is that silly (not after Prometheus anyway!). I am certain there are attorneys out there who are that silly, or who pretend to be. No doubt about that.

    Eventually we’ll find out who “gets it” and who doesn’t, won’t we, anon? Eventally a case will come up and we’ll find out. I predict it won’t be too long. What do you predict, anon? How long do you think it will be before someone argues that their claim reciting only an old eligible step and a novel mental step is eligible for patenting because their novel mental step isn’t a step of thinking about a “natural law”? And what do you think the ultimate outcome of that case will be, anon? Just put your cards on the table and we’ll see who “gets it”.

    even Prof. Crouch has called out some of the professors by admitting some views of ‘leftist’ anti-property as a bit extreme

    And I bet Professor Crouch didn’t his check from George Soros that month.

    no one has ever said or even indicated that the record number of rejections is something that should cause sadness and shame.

    Maybe there’s a reason for that, anon.

    that fact is needed for a complete – and balanced unspun – picture.

    Right. Just like we need to know how many kids were not shot last year before we outlaw the sale of AK-47s. Because if we aren’t reminded of that, somehow we’ll have a biased opinion about the merits of civilians running around with AK-47s. And people who don’t want “the complete picture” are just leftists coming to take your patent away.

    I know the drill, anon.

  49. “Like we did when that Prometheus case was decided 9-0 because the only eligible step recited in the claim was an old conventional step. I’m still loving it.”

    Except the Prometheus case never held such.

    However the case did say,

    ” 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 v. PROMETHEUS LABORATORIES, INC 566 U. S. (2012) 3 Syllabus] (Emphasis Added)

    This was followed by you posting the link to the new “Office Guidance” proclaiming it as evidence of Prometheus holding your dissection/ignoring mental/ “old step” theory, only to find out, much to your chagrin, the Guidance was for “integration analysis” instead!

    And yes, myself and others did get a chuckle out of that and continue to so as you apparently can’t help but to repeat the say fallacious sequence over and over again.

    BTW, here is the link to the USPTO on “Integration” and my challenge for you to read and apply the guidance to any actual claims stands. Which means you can put on your skirt and run away now, as you always do.

    link to uspto.gov

  50. The drop can be seen here:

    link to ipwatchdog.com

    And if I am not mistaken, the drop continued down to about 30% or so.

    (but to MM, the Kappos quote of “Quality does not equal reject” never had a reason to happen in the first place)

    The proper response to MM choking is to remove his head and hand it back to him.

  51. By the way, I’m still waiting to know what’s

    Ethics lessons are given in my December CLE’s, but I will give you a hint: (read the post again and pay attention to the part wher he says he attempts to trick someone by using a different lawyers’ name and address).

    The basics of filtering mail should be self-evident (they even have great big computer brains that do this on an automated basis – Oh the horrors!).

    Better trolling please.

  52. It’s 2012. You’d think at this point

    Actually, as the art evolves you would think the exact opposite – less would be needed to be recited in the claim.

    More glorious MM self-defeat.

  53. And perhaps Dr. Noonan’s refusing to acknowledge what you perceive to be fundamental problems is in reality more in fact due to the fact that you do not perceive the problems correctly. This is abundantly evident in the dancing and self-defeat that you continuously engage in. You mistake the revulsion of your naked anti-patentism because Dr. Noonan is too polite in not agreeing with you and does not take you to task (as you should be taken to task).

    That’s no way to maintain credibility.” Oh the irony of this statement – from one who has NO credibility to begin with, and whose failed propaganda and vacuous, insult laden posts would quickly lose ANY credibility blindly stumbled upon. What’s absolutely funny is that you don’t even seem to realize just how much a windbxg joke you are, and how little “credibility” you have outside of your little circle. You are the ultimate internet toughguy (or at least, ultimate wanna-be internet toughguy).

    I am only too happy to point this out to you.
    I am only too happy to take you to task.
    I am only too happy to hand your head back to you.

  54. As to some kind of “trap” in the promoting by “low grade shills” (LOL – as if the anti-patent shills are “high grade”) of never seeing a patent they couldn’t praise is actually more of your spin.

    Quite frankly, no one has ever said that bad patents do not get through (hint: you are building strawmen again). What they have said is that such patents are easily defeated, and not worth the extensive QQ anti-patent propaganda machine highlighting that is actually done by those “high grade” shills.

  55. and it’s happening during a recession!” Oh my – an exclamation, as if how dare people try to actually use the office for its intended purpose and innovate their way out of an economic slump. You are either a f_xxl or an im_bxcile or both.

    Your entire paragraph after assuming some truth to the conclusion (actually it’s a fact that you cannot assume away) is just more of your attempted spin. None of these are even worthy of comment.

  56. Your use of the phrase “I have no idea” is either a blatant lie (reminiscent of your “What the Sam Hill are you talking about” lies) or a blatant spin, neither of which is intellectually honest. The whole point of the “patents are bad” movement is self-evident. It is recorded history at the Office with its unexplainable and precipitous allowance rate drop. And it is disingenuous of you now to claim that the Office has the opposite view by only using half the facts of record breaking granted patents, precisely because the rate is in fact NOT record breaking, but more closely aligned with an historical average prior to a “Just say No” Office anti-patent plague.

    Quite in fact, the natural recovery from such a plague should be a record rate given that the backlog of those who refused to be improperly turned away are finally being properly examined.

    Quality does not equal reject” – words that you choke on – and for good reason, as they defeat your attempted repainting of history an spin of facts that will not accept your tainted revising.

  57. You incessant need for spin is shown by your perpetual kicking up dust and purposefully obfuscating to fit your agenda. It is also something easily defeated (and is easily and repeatedly defeated).

    You began your massive self-defeat above by stating (incorrectly) that both Kevin and I fail to understand Prometheus. This is clearly not the case and both of us understand it far better than you. We understand its strengths and weaknesses, while you (repeatedly) self-defeat by celebrating a strength you only think is there and you fail (repeatedly) to answer the challenge of squaring that decision with the decision that it itself says is most on point.

    You then use worthless labels like “strange and rather obnoxious” – sort of like the Big Corp coining the pejorative “Troll,” neglecting to remember that even Prof. Crouch has called out some of the professors by admitting some views of ‘leftist’ anti-property as a bit extreme.

  58. Let’s deconstruct (and destrxct) your awesome self-defeat at 10:29 PM.

    The most revealing comment (in the line of ‘liars think everyone else is always lying”) is: “ Kevin and like-minded souls should feel free to spin those facts anyway they want

    Facts are NOT for spinning. Facts – both good and bad are to be accounted for. This belies your “facts are facts” statement, because what you really meant was facts are to be twisted. And that is the main reason why you personally are the number one reason why quality blogging is not achieved here at Patently-O. Your rampant spins and attempted spins result in endless mischaracterizations, strawmen, and even blatant lies. Your statement of “facts are facts” is an empty platitude belied by an admission that you are probably still unaware of, but rings through in every one of your posts.

    You could not even finish that paragraph without engaging in this very type of mischaracterization.

    To wit: no one has ever said or even indicated that the record number of rejections is something that should cause sadness and shame. But that’s how you twist the fact that that fact is needed for a complete – and balanced unspun – picture.

    And much like Leopold was defeated by my success in drawing out that balanced picture, your mischaracterization dies a horrible death because I was in fact successful by drawing out the facts in proper context.

    That is how facts are properly used – not abused.

  59. Sorry, I could not read your post – way too much dust being kicked up.

    It sounded like you were again trying to admit that “configured to” is a structural term, but then all then weaselling and QQ’ing obfuscated the rest of your post.

    Try again.

  60. Nice dissembling on the exception ot the printed matter doctrine.

    Be a good boy and admit once again that you really do understand what the legal effect actually is.

  61. described structurally

    Your own volunteered admission: “configured to” is structural.

    Try not to choke on your own words. At least in front of us here.

  62. Here’s a question for you,

    LOL – the attempted introduction of the canard which – if actually taken to be true – would destroy the very admission just made regarding giving weight to claim elements.

    By the way, the opposite of giving weight is not giving a weight of zero – it’s not even evaluating the element at all – sort of what you would like to do with all mental step portions of claims, and sort of what you continue to fail to answer as to the current state of law is regarding the abillity of perfectly legitimate claims to have elements of mental steps.

    Massive MM self-defeat.

  63. So apparently what haha was crowing about upthread is that Judge Newman looked at all the “features” recited in the claim before concluding that each was individually old in the art and none of them “lended patentability” to the claim “as a whole”.

    Gosh. Ground-breaking stuff there. All those folks re-claiming old methods by reciting “wherein the information is GPS information” and/or “hand-held devices” will surely be breaking out the champagne tonite.

    Seriously, though: the “distinction” you pointed out is not “nuance.” It’s more like post-hoc semantic fudgery to cover up an obnoxious comment by your trollbro’ upthread. Old features that contribute nothing but their well-understood functions to an invention have a non-detectable “patentable weight” and do not “lend patentability” to a claim. Put another way, you can “weigh” any term in a claim and you should. Sometimes the weight is zero.

    Here’s a question for you, Mr. “Nuance”: how much does a novel mental step “weigh” when the only other step in the claim is an old patent-eligible step? Can the addition of a novel mental step ever “lend patentability” to a claim that recites only a single old conventional non-mental step?

  64. MM voluntarily admitted that “configured to” is structural language?

    In fact, you sad little twerp, all I did was acknowledge that “configured to” can be structural language when the implied structure can be immediately recognized by the skilled artisan. As you know, the skilled programmer can not look at, e.g., the pits on a disc (typically the only novel structure on any claimed “new” computer-readable media) and tell us whether that disc encodes a program “configured to” receive and store data about Grandma’s DVD purchases or any other functionality.

    It’s an important distinction, anon. Either your mind is too small to grasp it or you lack the maturity to admit it. Pick one or the other.

    By the way, I’m still waiting to know what’s “slimy” about sending an anonymous letter to someone enclosing material prior art. Also I’m wondering exactly what your counsel’s “staff” looks for in a registered letter addressed personally to your patent counsel before deciding that it’s okay for them to throw it away without informing your counsel about the contents of the letter. If there’s something in the letter about possible infringement of a patent that could be licensed does your counsel’s “staff” simply redact the part about the material prior art? And does your counsel’s insurance carrier know about this practice?

  65. so the only thing you got is the end item configuration in its totality.

    Yes, anon, but as you’ve been told before in valid chemical patents that configuration is described structurally, not in terms of the result accomplished. In other words, the skilled artisan can look at the structure of a composition in the prior art or any other composition and compare it to the structure of the claimed composition and recognize what the differences are. You may recall that composition claims which failed to provide this information were squashed by the Federal Circuit in a famous en banc desision which they took sua sponte. Do you remember that decision, anon? I do. I was a couple years ahead of the curve predicting that outcome as well.

    You can pretend to be ignorant of the fundamental distinction I’ve repeated for you above (and will surely need to teach you again). But your ignorance and dissembling is noted. As I pointed out already: it’s exactly your kind of abject st-pity that gives you patent t–b-ggers a bad name. The best part is that your ignorance is archived here so we can look back and have a chuckle afterwards. Like we did when that Prometheus case was decided 9-0 because the only eligible step recited in the claim was an old conventional step. I’m still loving it.

  66. I am sure the nuance between a feature being given patentable weight (as in, the feature is to be taken into account in judging patentability) and a feature that lends patentability to a claim (as in such a feature successfully contributing to a claim, taken as a whole, being patentable is not too difficult for most people to comprehend.

    I am also sure that most trolls and those who desire not to understand will have difficulty with the nuance.

  67. “Her days as an Examiner show throughout the opinion.”

    Lol wut? She was never an examiner. Which is half of the problem with most of her opinions.

  68. novel interactions (e.g., ionic bonds)

    I am more than sure that the actual mechanisms for the bonds are ancient (most llikely dating back to when the universe was less than five minutes old).

    More glorious MM self-defeat.

    And I am sure the individual atoms are also nearly as old as that.

    More glorious MM self-defeat.

    …so the only thing you got is the end item configuration in its totality.

    Funny – that’s exactly what you have with the software configured inventions, the invention coming from the claim as a whole in its totality.

    See? You aren’t too far off if you just put your unreasonable venom aside.

  69. As far as I know, the only people who subscribe to that “logical reduction” are desperate troll types such as yourself

    Wow – the very same thing can be said about subscriptions to the [oldstep]+[newidea] farce.

  70. Sure it does. Even if the CAFC misinterprets one claim, it does not mean that everyone else is obliged to make their claim construction mistake in every case.

  71. So then you’re relying on them not going out of their way to ignore them to imply that they could not ignore them? You might want to think that through one more time. The CAFC is not obliged to raise new issues itself.

  72. You remember Typhoon Touch …

    Ah yes. That Supreme Court opinion that revisited in detail the sad evolution of the mythology underlying the present day patentability of software claims and provided us with the final word on the subject.

    Oh wait … Typhoon Touch was just a Federal Circuit opinion blindly reciting old precedent on the issue of definiteness.

    Here’s an interesting part of that opinion:

    “The amount of detail required to be included in claims depends on the particular invention and the prior art.” Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985)

    It’s 2012. You’d think at this point that computer-implemented methods would necessarily need to be recite some very detailed limitations in order to be patented. But they don’t. Instead applicants just take an old obvious method and throw in something about a “hand-held device” or “GPS” and voila! the PTO gets its rubber stamp out.

  73. Sounds like you need to exercise some of that cheetoh fat off your waist. After you “catch your breath”, maybe you try writing a coherent response. I’m especially interested in any attempt by you to rebut the influence of the Internet/blogs on the evolving perception of patent law.

  74. I’m not aware of any definition that would distinguish a limitation with “patentable weight” from one that “lends patentability” to a claim.

    Nobody wants to chime in with the definition? anon won’t help his sockiefriend. How about AAA JJ? C’mon.

    Gosh, maybe this haha sockpuppet was just full of s–t.

    Nobody could have predicted.

  75. “Someone is confusing the potential configuration of a computer with its actual configuration.”

    Nah, they’re not. They’re simply pointing out that your computers are certainly capable of performing whatever you want to program them to do. Just because you are, personally, too lazy to tell the computer what you want it to do is not an issue relevant to patent lawl.

  76. he problem is that they can’t see the structure so they think it doesn’t exist

    The problem is not that we think the structures don’t exist. The problem is that the “novel” structures are not described in the claim, nor are they disclosed anywhere in the application. All that is disclosed in the claims being objected to is the desired result, i.e., “what the new computer is capable of doing”.

    This issue is really old. A long time ago a judge tried to put a band-aid over it by arguing that equatios and flowcharts corresponded to “electronic structure”. That was pretty weak sauce right there but it was taken to a whole other level with B-claims.

    Now we’re at the stage where computer-implemented methods (and compositions!) are distinguished from each other based on the information content being routed them (e.g., whether the information is “copyrighted” or whether it’s “financial information” or “information about what DVD was purchased”. It’s insanity.

    And the house of cards is going to come down. Bubbles inflate. And then they pop. And the people who didn’t make it big quickly enough are going to point fingers. And the people who had nothing to lose in the first place and who benefited the most are going to shrug their shoulders like they always do when they make a big mess.

  77. harkens back to the “all chemical patents are per se obvious” logical reduction (since no new actual chemical bonding inventions are ever presented).

    As far as I know, the only people who subscribe to that “logical reduction” are desperate troll types such as yourself who know nothing about chemistry.

    We could discuss further, I suppose, if you could articulate what you mean when you describe an “actual chemical bonding invention”? Certainly new compositions of matter are patented all the time based on novel atomic structures, which very often include novel interactions (e.g., ionic bonds) between certain atoms that did not previously exist (or were not known to).

    More importantly, your “logic” breaks down very badly at the point where it matters most: unexpected results. Chemistry is an unpredictable art and non-obvious of chemical patents often (almost always?) rests on the useful but unexpected properties of the claimed composition, preferably documented by the applicant in his patent specification.

    Maybe your buddy EG can chime in here. He sometimes manages to find his reasonable hat when subjects closer to his expertise are raised.

  78. What are competitors supposed to do then?

    They could sit in a room and repeat “what’s good for the Syndicate is good for America” over and over. Might give them some much-needed perspective.

  79. What are competitors supposed to do then?

    Um, apply th elaw – as is done?

    Much better than your QQ-fest.

  80. LOL – for your sake, “way less” would have been the smarter thing to do.

    But it’s you – so we have what we have.

    Massive self-defeat. Still trying to catch my breath from how massive (and I am sure that you are still every bit as clueless).

  81. when patents are given proper respect (as sporadically erupts on this board)

    What about when patents are given improper respect, such as occurs habitually at jury trials in E.D. Texas?

    What are competitors supposed to do then?

  82. This was filed back in 1996 or thereabouts, about 12 years before the invention of the Internet and at least 3 years before the invention of mail-order shopping. I think cables for connecting computers together were just starting to come on the market but they cost $10,000 each.

    I picked up a Novell Netware 2.0 system at an bankruptcy auction and was running a multi-node BBS on it with 80286 clients right before the 80386 came out. Without looking it up, that puts it in the late 1980′s.

    This was with ARCNET, RG62 cabling, and terminators (resistors). That stuff was getting really cheap even then, or I couldn’t have afforded to do it :)

  83. That was a huge mistake, one that I think the Federal Circuit took out on Judge Davis by finding the claims invalid as a matter of law rather than remanding for a new trial on obviousness, which is arguably what they should have done.

    Why? So the jury verdict could be overturned?

    Had Judge Davis let the jury conclude that the patent claims were non-obvious (an almost certain result in E.D. Texas), it would have been much more difficult for the Federal Circuit to have reversed it.

    Not with these facts.

    You’re right that a message was sent to Judge Davis. However, I don’t think the message was “send clearly invalid patents to the jury so they can get the wrong result and make it harder for us to overturn you.”

  84. Of course it was sarcasm. But if you pay attention to the way the PTO examines web-based (or “network”) applications, all those facts pointed out by Terry are completely ignored. As far as the USPTO is concerned, computers were invented yesterday and nobody ever thought about using them to collect, process and transmit information (especially advertisements!) until that shiny application appeared on their doorstep yesterday. This has been true for a long, long time.

  85. Perhaps because she’s “fair and balanced,” not simply “pro-patent” as you’ve often asserted, Malcolm.

    Or maybe she’s got better clerks or is beginning to change her views in some respects after continued exposure to really really bad claims. It’s a big hill to climb after that Abbott v. Sandoz dissent.

  86. What’s even worse is that IANAE actually does this on purpose.

    (but on the flip side, he does get strokes from MM, that has to be worth something)

  87. “Of course they can. No matter how obvious or brilliant they think an invention is, they’re not persons having ordinary skill in the art, so their opinions are mere suggestions at best. ‘Secondary considerations’, I think we call them.”

    Wrong. See Stratoflex, 713 F.2d 1530.

    You are simultaneously the world’s worst professor and practitioner. Though considering the incredible ignorance you continuously display on this site, the possiblity that you are actually a practitioner is so remote as to not be worth discussing. We can probably even disregard the possiblity altogether.

  88. Dennis, your analysis of the opinion is a little off. There was no “summary judgment” in the court below. The obviousness determination was actually presented to the jury. Judge Davis took the issue away from the jury, without really much analysis, because he thought the evidence was insufficient. That was a huge mistake, one that I think the Federal Circuit took out on Judge Davis by finding the claims invalid as a matter of law rather than remanding for a new trial on obviousness, which is arguably what they should have done. By taking the issue away from the jury, he subjected the non-obviousness finding to de novo review. Had Judge Davis let the jury conclude that the patent claims were non-obvious (an almost certain result in E.D. Texas), it would have been much more difficult for the Federal Circuit to have reversed it.

    I think your article vastly overplays the fact that this was a “question of law.” Lots of things in patent law are questions of law based on underlying facts — enablement, whether an invention is on-sale, obviousness, etc., but you will see over and over, when a jury verdict is involved, the Federal Circuit gives deference because of the many factual underpinnings that underlie the legal determination.

  89. Scott Dunn (and MM et al.), are simply wrong in fact and in law with the proposition of “The software confers no capabilities that the computer didn’t already have before.

    This has been documented many, many, many times.

  90. Terry Cole that initially threw me for a loop as well, but I took the statements to be sarcasm highlighting the points you make that the WWW was around and connecting computers together with cables was old in and around 1996 (actual filing date is October 24, 1994, to the extent that makes a difference).

  91. it is the judge whose subjective determination that controls

    Yes, except that it’s an objective determination. Or haven’t you heard of the hypothetical person having ordinary skill in the art?

    the licensee’s subjective thoughts can be disregarded after all.

    Of course they can. No matter how obvious or brilliant they think an invention is, they’re not persons having ordinary skill in the art, so their opinions are mere suggestions at best. “Secondary considerations”, I think we call them.

  92. LOL – harkens back to the “all chemical patents are per se obvious” logical reduction (since no new actual chemical bonding inventions are ever presented).

    Evisceration anyone?

  93. Under your theory whether it is a holdup or a legitimate payment is determined solely by looking at the licensee’s state of mind. Is that what your position is?

    No, it’s just a secondary consideration, i.e. whether licensees generally think the patent is valid. The relationship between what licensees think and the licensees’ state of mind should be self evident.

    Judges are perfectly capable of determining obviousness without that secondary information, based on the actual claims. As demonstrated in the decision linked above.

  94. Under your theory whether it is a holdup or a legitimate payment is determined solely by looking at the licensee’s state of mind. Is that what your position is?

    What about the…. wait for it… less than forthright infringer?

    We see headlines everyday where some megabank pays gazillions of dollars to get rid of litigation, without agreeing or denying the charges. You pays yer buck and yer takes yer chances.

  95. Judge Newman’s analysis reads like an Office Action. Her days as an Examiner show throughout the opinion.

  96. NWPA–

    Right. I have a brutal post on the design patent WD thread that I’ve held off on posting.

    Maybe I’ll do it today, maybe I’ll tone it down–but it is casual Friday, after all.

  97. the contention that the licenses were taken “to avoid the costs of litigation” and not to take advantage of the invention?

    There is a difference between the result and how the licensee arrived at the result.

    It’s the difference between “if we don’t take a license, we’ll be sued and invoiced by counsel, and this way is cheaper even if we win”, and “if we don’t take a license, we’ll be sued and probably lose and have to pay anyway because the patent is valid”.

  98. Isn’t every royalty-bearing, non-exclusive license subject to this FAT analysis and the court’s acceptance of the contention that the licenses were taken “to avoid the costs of litigation” and not to take advantage of the invention?

    Really, why pay for using technology, unless you are doing it to avoid getting sued?

    Other licenses may add other forms of value (i.e. know-how transfers or exclusivity features for the licensee), but a non-exclusive license (like the FRAND ones that are all the rage these days) other nothing but buying permission to do what you were going to do anyway, but would get sued for if you did not have the license.

    And yet, when patents are given proper respect (as sporadically erupts on this board) that is exactly what a competitor who wants to use patented technology is supposed to do, assuming she can come to terms with the patent owner. (If I want to rent space in your building, I don’t just move in… I make a deal with you and pay the agreed rental price. That is evidence of my respect for your legal title, as well as my desire to avoid being the defendant in an eviction lawsuit.)

    How does a court know whether payment of royalties is due to respect of for the patent or simply buying peace? But again, both motivations are almost always present in any non-exclusive license.

  99. Very good post LB. I think the problem is that they can’t see the structure so they think it doesn’t exist. Their arguments are akin to someone saying that an internal combustion engine provides no more capability to a block of steel. The block of steel anticipates all forms of the steel.

    If fact, a warehouse with 100 tons of all elements anticipates all manufactures.

  100. It’s about time you started to like Newman. It is what I have been saying all along. The reason information processing applications aren’t being examined properly is this 101 nonsense. Give that up and say, yes they are all eligible under 101, and the PTO will get to the serious business of figuring out how to examiner the application properly.

    Consider that now often people disguise the invention to avoid 101. Who would want to pay for that without 101 issues?

  101. The software confers no capabilities that the computer didn’t already have before.

    Well that’s good to know. I’m going to save money on IT expenses this year by refusing to buy any more software for my staff’s computers. I’ll just tell the staff that a computer science expert told me that “the software confers no capabilities that the computer didn’t already have before.”

    Someone is confusing the potential configuration of a computer with its actual configuration. If I’m not claiming the latter, then by all means, reject my claim on the grounds that I’ve simply claimed a generic computer. But if my claim describes a computer that is actually configured to carry out certain functions, and not just one that is capable of doing so, please don’t reject my claim on the grounds that it would be possible to reprogram your computer to match the claim, now that you’ve read my application. Until you’ve done so, mine is at least a different machine. Whether it’s a sufficiently new or non-obvious machine is another question.

    The “no physical difference” argument boggles my mind, as well. I buy two identical computers from Dell, and install MS Office on one. Are people seriously telling me that there’s no physical/structural difference between these two devices? The differences in operation come from what? Psychic energy?

    I’m all for a healthy discussion about whether the differences between your newly programmed computer and mine are patentable differences, vis a’ vis Sections 102 and 103. I’m also completely OK with the argument that at this point in time it’s beyond obvious to computerize just about any intellectual activity that humans have ever done. But the “there’s no physical difference between your computer and mine” argument makes no sense.

    P.S. The claims in this case look bogus to me.

  102. Will summary judgment of obviousness become more commonplace, as seemed likely following KSR? As yet the route seems relatively little followed.

    Obviousness is a fact-sensitive issue. Assuming that the factual underpinnings of obviousness were not in material dispute as found by the CAFC, the case in other respects seems a straightforward review of what is esentially a fact-sensitive issue and not to raise any new or surprising legal principles going forward.

    As to licensing, if there is any threatened litigation it is normal to consider the FAT (fade away total, i.e. the sum needed to persuade the putative plaintiff to simply f f f f fade away, thanks to Roger Daltrey of The Who for the quote). It seems that for most licensees the sum demanded was less than FAT.

  103. “I’m starting to like this Judge Newman.”

    Perhaps because she’s “fair and balanced,” not simply “pro-patent” as you’ve often asserted, Malcolm.

  104. Someone called MM said above: “This was filed back in 1996 or thereabouts, about 12 years before the invention of the Internet and at least 3 years before the invention of mail-order shopping. I think cables for connecting computers together were just starting to come on the market but they cost $10,000 each.”

    Eh? 1996+12 = 2008. I’m certain the Internet, by whatever definition, happened well before then. In 1996 Windows 95 already had Ethernet drivers and I made the RJ45 or coax cables for a few cents. Linux 1.2, ditto. In fact in 1987 I strung together a few HP Vectra PCs with Powerlan cards for a few dollars per PC. And these used TCP/IP which was around for a decade before that.

  105. > The patentee argued that the extensive licensing of its patent provided evidence of the patent’s nonobviousness – asking the rhetorical question “why would someone pay to license an invalid patent?”

    Because they patented an idea so obvious that many people independently reinvented it? It’s not like non-lawyers can even read patents any more.

  106. While abortions are legal in most countries, the grounds on which they are permitted vary. According to the United Nations publication World Abortion Policies 2011[5] abortion is allowed in most countries in order to save a woman’s life…

  107. Your analysis here seems reminiscent of another argument: Running software on a general purpose computer does not make a new machine. The software confers no capabilities that the computer didn’t already have before.

    You can find a rather thoughtful analysis of the question here: link to groklaw.net

  108. Maybe you can help your sockpuppet friend, anon.

    Please provide the specific definition of “patentable weight”. Apparently it’s found in some PTAB cases but I’m not aware of any definition that would distinguish a limitation with “patentable weight” from one that “lends patentability” to a claim.

    Maybe it’s part of some secret legal language used only by “right wing” patent agents.

  109. You and Kevin failed to understand the Prometheus case so perhaps it’s not surprising, anon, that you agree with this strange and rather obnoxious pronouncement of his.

    I have no idea how Kevin has come to the conclusion that “we are living in a time when the pendulum has swung towards the “patents are bad” point of view.” Certainly the USPTO doesn’t have that view. It’s granting patents at record-breaking rates. And applicants are filing applications in record numbers and it’s happening during a recession!

    But let’s assume there’s some truth to his conclusion. He seems to have left out some other very likely shapers of public perception: (1) the fact that the USPTO is granting more and more patents that should never have been granted; (2) the fact that the Internet makes it easier than ever to monitor and disseminate information about these patents and the lack of any rigorous examination of them by the USPTO; and (3) the fact that the Internet makes it easier than ever to monitor and track the patents that are being asserted and who is asserting them.

    I might also add that “patents are good” point of view is not exactly well-promoted by the low-grade unthinking shi lls who never saw a patent they couldn’t get behind and praise to high heaven. Kevin himself fell into the trap when he refused to acknowledge the fundamental problems with claims like those Prometheus was asserting. He pretty much refused to discuss it. GQ was even worse. That’s no way to maintain credibility.

    As for this sweeping attack on legal scholars who focus on patent law, it’s just pxthetic. Facts are facts. Kevin and like-minded souls should feel free to spin those facts anyway they want. But if nobody is impressed by the spin or they find other interpretations to be more reasonable, that’s not the fault of the facts. Maybe Kevin should devote more of his time trying to convince everyone that the record number of rejections mailed by the PTO last year is something Americans should be sad and ashamed of. That’s worked pretty well for you, anon, hasn’t it?

  110. Nice stroke for your circle mate there – as if IANAE needed any more proof that he is ignorant of patent law, your backing just did it.

    Way to go!

    Maybe you can help IANAE with an admission about patentable weight when you discuss the legal status of the exceptions to the printed matter doctrine.

    Circle FAIL

  111. LOL – do you mean the peer-reviewed articles like the claptrap you just posted?

    For some reason I am reminded of the poster who never ever provided a single example of a modern advanced country that has thrown away IP law – Give Me an Amen.

  112. Were there oral arguments in this appeal, and if so, is a recording available? b/c I’m wondering how Judge Newman avoided puking when listening to Soverain’s arguments – there must be a lot of gurgling sounds on that recording.

  113. Reminds me when I see an advertisement from a law firm … “we are the fast growing law firm in the state” … they grew from 2 attorneys to 6 attorneys.

    Fastest growing usually means that you are so low on the totem pole in terms of size that it is easy to grow fast.

  114. “Please explain the difference.”
    Waste of time … you wouldn’t understand.

    “Please provide the definition.”
    Read a few PTAB decisions.

    “This is true because there are always many patentees out there with very similar claims pending or granted”
    So you say … which means very little around these parts.

    you can go about with your trolling … haha

  115. Welcome, Sockpuppets!

    There is difference between a feature being given patentable weight and a feature that lends patentability to a claim.

    Please explain the difference.

    the term “patentable weight” has a specific meaning that you apparently don’t appreciate

    Please provide the definition.

    There is a difference between the result and how the Federal Circuit arrived at the result.

    Nobody claimed otherwise. More importantly, nothing you wrote contradicts what IANAE said: When the patentee loses, you simply can’t spin the decision as good news for patentees everywhere

    This is true because there are always many patentees out there with very similar claims pending or granted. And those claims should be treated similarly under the law, i.e., invalidated or rejected as obvious, just like Newman rejected these claims.

    This case would be even more awesome if the patentee had argued “if the invention is so obvious, how come nobody invented it before?”

  116. Little things like Pirate economy, natural resource plundereingrape of the land and minimal cost slave labor factors populate your “ideal” anti-intellectual property (and anti-true intellectualism.

    Even 6 gave you a metaphysical high five before being shut down with facts and reason.

  117. “The United States ranked the highest of those studied, meaning its IP protection is the strongest in the world; worst among the eleven were Russia, Brazil, China, and India.”

    There are other things in common with these countries. Corruption, regulation, collectivism, weak individual rights and more. These have a negative effect on the economy. Patent protection has a positive effect.

    You are trying to make a point regarding a single variable with no analysis or knowledge of the other much stronger variables.

  118. @anon,

    If the premise has been debunked, please show the evidence. Please do tell, enlighten us. Seriously, I would like to be proven wrong.

  119. From the above cited article (very, very telling):

    “Several countries with weak intellectual protection laws have the fastest growing emerging economies, meanwhile the United States – which has some of the strictest IP rules – is stuck in a Great Recession.

    Recent empirical evidence and policy analysis have revealed the reason for that is tough intellectual property laws inhibits competition, and economic growth is hindered by their existence.”

  120. You do realize the premise of that article has already been debunked, right?

    Wait – this is more of that post-crrp-don’t-respond-run-away-and-post-the-same-crrp-again-later-post-when-I-want-to oh so intellectually stimulating dialogue technique.

  121. Check out this article:

    INTELLECTUAL PROTECTION LAWS: LET FREEDOM RING TO BOOST U.S. ECONOMY
    by JOSEPH DIEDRICH – UNIVERSITY OF WISCONSIN-MADISON on JANUARY 24, 2013

    “Politicians take note: Loosening America’s intellectual protection laws could help jumpstart the economy.”

    link to thecollegefix.com

  122. OT, but just noticed this from Dr. Noonan:

    I agree that we are living in a time when the pendulum has swung towards the “patents are bad” point of view, motivated in part by large companies (principally in the IT area) wanting limited and weaker patent protection for their own interests, aided and abetted by academics who realized that the thesis “everything’s fine” is not the path to tenure, fame and fortune. These sentiments dovetail with the goals of ideological enemies of patenting, like the ACLE and PubPat.

    LOL – Big Corp and the Left.

    Just like I said.

  123. Did the inventors even testify?

    And even if they did, when you asked your big, dramatic, “AHA, and were you aware of the CompuServe system when you programmed your sytem??!!!!” and they answered, “No.” what was your big move gonna be?

  124. I agree about obviousness. Had the PTO had the CompuServe system before it as prior art, they may not have issued the patent.

    I wonder just how much the programmers who were named inventors knew about the prior art Compuserve system when they created their own system. Knowing programmers, they probably knew a lot about it.

    I would have like to cross these “inventors.”

  125. MM, what I have always liked about Newman is that she calls it the way she sees it, and is willing to buck the PC consensus on the court. Given her disposition to think things through, she really needs the support of top flight clerks to legally support her gut instincts, which I find are generally right.

  126. Summary Judgment?

    I thought the court had taken the issue from the jury and decided the case itself, but based on the evidence. There was no “summary” judgment.

    What the Federal Circuit seems to have held is that even here, when the evidence is not in controversy, the Federal Circuit may decide the appellate case de novo.

  127. Even a below-average attorney knows that.

    This is IANAE – obviously your estimates need some serious adjustments (I am not sure how you arrived at your initial settings).

  128. “This Federal Circuit decision is fairly big news as far as its legal results.”

    I’ve read your comments a couple of times and you have yet to explain why this is “fairly big news.” A better explanation is needed.

  129. “How much more weight do you think it would have taken to make the claims actually patentable?”
    Uh …. do you have any idea what you are talking about? There is difference between a feature being given patentable weight and a feature that lends patentability to a claim. To have patentable weight means that the USPTO/PTAB/Fed Cir cannot ignore the term — something that the USPTO/PTAB frequently doesn’t realize.

    “How many similarly ridiculous patent claims with this many ‘weighty’ but meaningless words do you think will be invalidated on the same basis? I’m guessing a lot.”
    If they are weighty then they are not meaningless (i.e., they have meaning that cannot be ignored). If you are saying that the words don’t lend patentability to the claims, then you have echoed what the Federal Circuit has stated. Regardless, the term “patentable weight” has a specific meaning that you apparently don’t appreciate.

    “When the patentee loses, you simply can’t spin the decision as good news for patentees everywhere.”
    I thought you considered yourself a top notch lawyer? There is a difference between the result and how the Federal Circuit arrived at the result. The result isn’t nearly as important (unless it is my client) as how the Federal Circuit arrived at the result. The result is fact dependent. How the Federal Circuit arrived at the result reflects the Federal Circuit’s view of the law, and the Federal Circuit’s view of the law is what it important. Even a below-average attorney knows that.

    “Benson, Flook, Bilski, Prometheus”
    Why are you throwing out 101 cases when this case involves 103? You are even more confused than I thought.

  130. When the patentee loses, you simply can’t spin the decision as good news for patentees everywhere. You just can’t.

    You couldn’t be more wrong.

    You really show your ignorance of the law with a statement like that.

  131. …. and the Federal Circuit gave ALL of them patentable weight.

    How much more weight do you think it would have taken to make the claims actually patentable?

    In the end, that is far more important than whether or not a couple patents got invalidated.

    How many similarly ridiculous patent claims with this many “weighty” but meaningless words do you think will be invalidated on the same basis? I’m guessing a lot.

    When the patentee loses, you simply can’t spin the decision as good news for patentees everywhere. You just can’t. Benson, Flook, Bilski, Prometheus. At best you can dig up some encouraging dicta, but had there been a pro-patentee holding, the patentee would have come away with a good claim.

  132. “Look at all those words!”
    …. and the Federal Circuit gave ALL of them patentable weight.

    In the end, that is far more important than whether or not a couple patents got invalidated.

  133. Here’s one of the claims:

    34. A network-based sales system, comprising:

    [1] at least one buyer computer for operation by a user desiring to buy products;

    [2] at least one shopping cart computer; and

    [3] a shopping cart database connected to said shopping cart computer;

    [4] said buyer computer and said shopping cart computer being interconnected by a computer network;

    [5] said buyer computer being programmed to receive a plurality of requests from a user to add a plurality of respective products to a shopping cart in said shopping cart database, and, in response to said requests to add said products, to send a plurality of respective shopping cart messages to said shopping cart computer each of which comprises a product identifier identifying one of said plurality of products;

    [6] said shopping cart computer being programmed to receive said plurality of shopping cart messages, to modify said shopping cart in said shopping cart database to reflect said plurality of requests to add said plurality of products to said shopping cart, and to cause a payment message associated with said shopping cart to be created; and

    [7] said buyer computer being programmed to receive a request from said user to purchase said plurality of products added to said shopping cart and to cause said payment message to be activated to initiate a payment transaction for said plurality of products added to said shopping cart;

    [8] said shopping cart database being a database of stored representations of collections of products, and said shopping cart computer being a computer that modifies said stored representations of collections of products in said database.

    Look at all those words! So impressive. This was filed back in 1996 or thereabouts, about 12 years before the invention of the Internet and at least 3 years before the invention of mail-order shopping. I think cables for connecting computers together were just starting to come on the market but they cost $10,000 each.

    Newman did what every Examiner at the PTO should be doing to nearly all of the computer-implemented j–k that is being filed and granted today: point out that every component is old and stringing the parts together doesn’t create a non-obvious invention when the parts merely do what they are intended to do.

    Of course, the obviousness analysis changes completely if the claims are limited to a “hand held device” or if the products being purchased are “copyrighted.”

    I’m starting to like this Judge Newman. ;)

  134. The patentee argued that the extensive licensing of its patent provided evidence of the patent’s nonobviousness – asking the rhetorical question “why would someone pay to license an invalid patent?”

    Glad to see this incredibly lame “evidence” finally getting the attention (and scorn) it deserves.

  135. sided with Newegg’s contention that the licenses were taken “to avoid the costs of litigation”

    Good highlight. Just in November in the Transocean opinion, the court went the opposite way on this argument, finding that licenses were not driven by litigation, in part because the licensing costs exceeded the cost of litigation. Doesn’t look like the licensing fees were of record here, just the number of licenses. Maybe actual fee values (if they were not small) would have helped?

Comments are closed.