CLS Bank v. Alice Corp: Oral Arguments Lead to More Questions

By Dennis Crouch

CLS Bank v. Alice Corp (Fed. Cir. 2013)

On February 8, 2013, the Federal Circuit held oral arguments en banc in this important subject matter eligibility dispute that focuses on the extent that software can be patented. Under Federal Circuit rules, en banc rehearings include all of the regular circuit court judges as well as any other judge who sat on the original panel. For this case, the nine regular members of the court were joined by Senior Judge Richard Linn who sat on the original panel and penned the opinion of the court that has offended so many anti-software-patent advocates. In the opinion, Judge Linn cabined-in the definition of “abstract” with regard to computer implemented inventions and also indicated that §101 should only be used to invalidate a claim when that result is “manifestly evident.” [UPDATED] With a ten-member panel the accused infringer (CLS Bank) needs six votes to overturn the original panel decision. With a ten member panel, six votes are needed to win. Since the original appellate decision was vacated, this appeal comes directly from the district court. As such, a five-five tie will affirm the lower court holding of invalidity.  While I suspect that Linn’s language putting Section 101 on the back burner will not survive, I suspect that at least some claims will be seen to pass muster under Section 101.

The parties are in relative agreement on many points. None of the parties seriously argue that software per se is patentable – apparently assuming that software apart from its computer implementation always embodies an abstract idea. All of the parties also agreed that a computer specially designed to perform a particular function can also be patentable. The dispute centers on what test should be used to determine when you have such a “specialized computer” and on whether Alice Corp’s claimed invention meets that standard.

Most notably absent from the oral arguments was any discussion of the meaning of an “abstract idea.” Of course it is the ambiguity in the definition of abstract idea that is causing most of the confusion regarding subject matter eligibility.

For decades, patent attorneys have known that software can be patentable if properly claimed in a way that directs attention away from the software nature of the invention. I suspect that the rule-of-thumb for patent eligibility will focus on complexity of the relationship between software and hardware. And, if that is the case patent attorneys will renew their reputation for taking simple ideas and making them appear quite complex.

Mark Perry represented the accused infringer (CLS Bank) and argued that one starting point for subject matter eligibility is the notion that a process accomplished “entirely in the human mind or made with pen and paper” cannot be patent eligible. Further, merely speeding-up that process by using a computer does not somehow transform the process into a patentable invention – “it simply accelerates the process.” The bulk of the questioning focused whether CLS had overgeneralized the claims. For instance, when Mr. Perry began reading from the patent’s invention summary he was stopped by Judge Linn who responded that every claim can be distilled to an abstract summary but “that’s not the way that we assess patent eligibility or patentability.”

Judge Moore focused the questioning on the CLS Bank claim that included the most physical structure. Claim 26 of the ’375 patent reads as follows:

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

a communications controller,

a first party device, coupled to said communications controller,

a data storage unit having stored therein

(a) information about a first account for a first party, independent from a second account maintained by a first exchange institution, and

(b) information about a third account for a second party, independent from a fourth account maintained by a second exchange institution; and

a computer, coupled to said data storage unit and said communications controller, that is configured to

(a) receive a transaction from said first party device via said communications controller;

(b) electronically adjust said first account and said third account in order to effect an exchange obligation arising from said transaction between said first party and said second party after ensuring that said first party and/or said second party have adequate value in said first account and/or said third account, respectively; and

(c) generate an instruction to said first exchange institution and/or said second exchange institution to adjust said second account and/or said fourth account in accordance with the adjustment of said first account and/or said third account, wherein said instruction being an irrevocable, time invariant obligation placed on said first exchange institution and/or said second exchange institution.

Judge Moore rightly suggested that a computer by itself is clearly a machine and subject-matter eligible. She queried then, how can a more particular invention – the computer with particular functionality – be ineligible? Perry offered two responses. First, he argued that the claim here is really method claim masquerading as a machine claim – that method itself is an abstract idea and the addition of the computer hardware does not make the claims eligible. Further, Perry argued that the claims here are not directed to any particular computer but instead a generic system. Judges Moore and Newman then queried whether the real focus should be on obviousness. Perry admitted that the claims may also be invalid under Section 103, but that the Supreme Court has indicated that Section 101 is a threshold inquiry. In addition, he argued, Section 101 inquiries are often easy because they do not require substantial discovery.

Perry also suggested that the requirement for extensive particular hardware rightly favors companies like CLS Bank and Google who spend millions of dollars to build systems that actually work rather than companies like Alice who merely develop a “McKinsey Report” and file for patent protection.

With Ray Chen on the sideline pending confirmation of his Federal Circuit judicial nomination, Deputy Solicitor Nathan Kelley stepped up and primarily sided with CLS Bank – arguing that software per se cannot be patent eligible because it is an abstract idea and that merely connecting software to a computer is likewise patent ineligible. The oddball test suggested by the PTO borrows the separability concept from copyright law. In copyright, a useful article is only copyrightable if the original expression is at least conceptually separable from the utility of the article. The PTO argues that an inseparability requirement should be put in place for computer implemented inventions. Under that construct, a computer implemented invention that applies an abstract idea would only be patent eligible if the computer is inseparably and inextricably linked to the invention. In oral arguments, Kelley suggested that the approach requires the “fact finder” to “go deeper” in considering whether an inextricable link exists. Mr. Kelly did agree (on questioning from Judge Moore) that the focus in this process should be on the language of the claims.

What the PTO wants out of this is a practical test that its examiners can follow rather than just the notion of an “abstract idea.” I believe that the agency would have been better served if he had focused on that point rather introducing a new concept into the law that does little or nothing to resolve ambiguity.

Adam Perlman argued for the patentee (Alice Corp) and likewise did not defend software patents. Rather, Perlman argued that his client’s patents were technology-focused inventions that wove together software and hardware in a way that “creates a new machine” that clearly satisfies the requirements of Section 101.

There was some back and forth about preemption. Neither party mentioned this, but a point relevant to preemption is likely CLS’s allegations at the district court level that it did not infringe the patents.

The Federal Circuit will likely take a few months to decide this appeal. An important issue will be to see whether the court decides this case quickly or waits for the Supreme Court to release its decision in Myriad. Although not computer implemented, the outcome of Myriad case could impact the law here.

493 thoughts on “CLS Bank v. Alice Corp: Oral Arguments Lead to More Questions

  1. “hardware is equivalent to firmware is equivalent to software.”

    I completely agree with you on that point, anon. And that should drive the point of why software that performs former hardware/firmware functions is patent-eligible under 35 USC 101.

  2. Well, I am going to have faith Moore will come out on our side. Also, was O’Malley on the panel? OMalley was part of the majority with Linn in the original case. That would give us 5 on our side, then according to Dennis we would only need one more to win. Now who would that most likely be?? Hmmm.

  3. “But Moore’s calculator argument lost me… mathematically, the four operators are just derivatives of addition, aren’t they”

    It is because Moore is a ta rd and doesn’t know what she’s talking about. She knows even less about how to program a calculator to do different math operations. If she knew anything she wouldn’t prattle on about stup id nonsense that has been forcefed to her.

  4. My other comment was eaten :(

    Bottom line, do tell about when you heard someone tell you to your face about how great a software patent’s disclosure was. How AFTER THEY READ THE PATENT they wanted to copy it immediately. A real example if you don’t mind.

  5. Possible interesting takeaways that might be missed:

    1) the 101 as a defense included in 282 argument – and its relation to burden (including whether C & C applies).

    2) the de novo claim construction possibility and what that would do to the mutual stipulation. At least one judge has a hard on for removing a stipulation that both sides agreed to. Can even a de novo review remove a stipulation of fact? To me at first blush that seems like something that would be beyond a reviewing court’s power. It also seems that a decision breaking apart the different claims (even though counsel reminded the court they all rise together) could be applied in a de novo manner.

    3) Alappat is ascendant, and remains so. The heart of Judge Rich beats on.

    4) something you do 5 trillion times a day is more than just “nice to have a computer to help.”

    5) Will “inventiveness” be an “implicit” requirement under 101? This would truly be an usurpation of power by the judicial branch, as Congress made it clear in the 1952 act that they took back the common law power of the courts to develop “invention” and inserted in its place “obviousness.”

    6) unnecessary and counterproductive to throw in the snide “troll” comment at the end. Would have been much better to have exited in class. The counsel begins with exaggerated boasts and is quickly corrected, and ends poorly. For those leaning away from him, that will definitely be a push.

  6. ” I am not impressed with him.”

    I know, you’re all “conspiracy theory” this and “conspiracy theory” that I remember from the Anonymous scare.

    “the earth is warming. ”

    Did you see the TED talk about the guy who discusses the “ramifications” of that? Apparently, iirc, the worst that is planned in the next 100 years is ~10ft of sea level rise (something that will barely make it into history books btw just like the 2 ft rise over the last 100 years made it) and more serious storms, droughts what have you. But the poor will still be the worst off while we still live our lives of comparative luxury. So meh. That’s just more of the same.

    “The population is continuing to increase”

    If it gets that bad, we do still have smallpox in laboratories. Like the other Tedster said, you rarely have a horrendous epidemic like what happened in the middle ages when you need one.

    “There are more people now hungry going to bed as such then ever before in human history.”

    There are more people now going to bed full as there has ever been before in human history. Not to mention that the percentage is swinging in the right direction, and will continue to do so most likely.

    ” that we are not becoming more and more controlled reducing our quality of life.”

    One thing at a time dam bro.

    In any event, all of your concerns won’t mean sht if one asteroid ~a mile wide blind sides us. And we’re getting to the point of being overdue.

  7. Like I said, there are hiccups. And if, goodness forbid, the CAFC or the USSC disallows patents on software and the softwares are all of a sudden never written again, or written only in dark corners where the government cannot find them, then I’m sure congress will act, software will become patent eligible, or given its own functionality protection, and the state of the world will go on getting better.

    On the other hand, if the CAFC/USSC never changes anything, and businesses still keep on getting trolled out of existence, or just keep on being shaken down at the least, then it will simply be a drag on the econ for awhile longer until someone in power gets their act together and makes it right.

  8. 6 – You should have continued to hear Kelly admit at 1:12:00 – Actual line by line written code and coded program would NOT be an abstract idea. Actual programmed computer is Alappat and would be patent eligible!

    Since we know Alappat actually only achieved the programming patentability as an equivalence to the hardware configuration (and didn’t actually contain line by line written code in the claims, we have an admission that hardware is equivalent to software (and I would throw in equivalent to firmware, because I am a generous kind of guy).

  9. JMD,

    No, the devices were not the same – there was a series of devices that were invented and the capabilites of each device was augmented with each version.

    The point being made (one of the points) was that the math and what was applied math in each device were not strictly synonymous.

    So while mathematically, the four operators are just derivatives of addition, the machines (and important for that bogus House computer argument) were not derivatives in the legal sense.

  10. I listened to the audio… sounded like Kelley did a great job representing the PTO’s position. But Moore’s calculator argument lost me… mathematically, the four operators are just derivatives of addition, aren’t they? Just expressed in different ways, but the device is the same.

  11. so the appearance, while perhaps not correct, is not necessarily misleading as to the important characteristics, and while perhaps not a member of the legal academie, the true nature of a desperate person resorting to “many misstatements and omissions… [and] selective reporting [which] violates any reasonable standard of professional ethics or… integrity” STILL fits MF and his posting style.

    Even when I’m wrong, I’m still right.

  12. Well I’ll be.

    I am wrong.

    My apologies to MF (and to LB).

    Of course, this could have been averted had MF simply answered my kind and gentle first post seeking clarification.

  13. It came from that guy that wrote the book Tipping Point. Can’t remember his name, but I read the book. I am not impressed with him.

    Malcolm Gladwell. Me neither.

  14. I am going now to star(e) into the heavens at all those longer-lifespan-than-earth non-persistent signals.

    You must have really good eyes.

  15. Sorry “genius,” the paragraph below was NOT a quote from the article.

    Much too quick to pick up that quiver.

    You will also notice too “genius,” that I kindly asked first for confirmation – and only when it was obvious that MF had added yet another slip on these boards, did I pursue my question.

  16. I watched that TED talk too. It came from that guy that wrote the book Tipping Point. Can’t remember his name, but I read the book. I am not impressed with him.

    One: the earth is warming. The population is continuing to increase. There are more people now hungry going to bed as such then ever before in human history.

    Plus the measures of violence they were using assumes that just because we are not committing physical violence that we are not becoming more and more controlled reducing our quality of life.

    From what I know 6, the solution is to drop the 101 nonsense and get to the real business of examining the applications. All this 101 stuff is just going to further obfuscate the inventions.

    The bet: Microsoft hired all those researchers because of patents, I know some V.P. of software companies that are convinced if software patent go, that they will just be copied by cheap foreign labor. I think no. I think take the patents away and it will retard progress. I think we will go into darkness. No more talking about software like it was in the 1970′s. Everything was a secret then. Companies would tell you nothing.

    So, I know there is lots of hype about it and I know lots of problems but disclosure, hiring, and incentives that software patents provide are very powerful drivers.

    So, I would bet you.

  17. Ned,

    I owe you an apology on Nuitjen.

    I was as wrong now as the court was (in truth) wrong then.

    The court in fact did rule as you indicate, no matter how much that flies in the face of reality.

    So it is I in this case that is making an argument for a change in this messed up judge-made law. That the court says that “physical” does apply, but that “tangible” does not, and the even worse dependency on “persistence,” is well, so beyond reality that I simply was thinking about how Nuitjen should have been decided.

    I am going now to star(e) into the heavens at all those longer-lifespan-than-earth non-persistent signals.

  18. an ever sharper conception

    Since you claim not to have stare decisis, there is no such thing as “ever sharper” as the very next decision is not bound whatsoever by any of the previous decisions. Quite in fact, the opposite of an ever firmer conviction is ever possible.

  19. 6,

    Do you realize that the very premise of your “state of x” also applies to the fact that we have been granting patents on software?

    Oh noes!

  20. I learned a funny thing the other day NWPA, it seems that people nearly always think that things are “getting worse” in their x (country, town, neighborhood, world). But the facts are clear to those that study the facts behind the “state of x”. It seems that, despite everything, and on the whole, the situation is almost always getting better, not worse, in a given place x. Rare exceptions of course exist (the black death, smallpox introduction into native american pops etc.) and of course there are minor setbacks, but on the whole the trend is that things are always getting better.

    It was a good TED talk on that the other day.

    In any event, only time will tell as to whether or not the CAFC or USSC blowing up software patenting will end up spurring software to ever greater heights, on the whole, or having no effect, (note that in either of those situations the country saves $$$ in legal nonsense bills) or whether software all of a sudden is never written again, or is barely ever scratched out.

    I’m going to go out on a limb here and predict either no effect, or spurring the creation of new software. Is that a bet you want to make?

  21. Reading it also made me realize that, for those of us in legal academia trying to do something about the mess we’ve collectively created, every morning our rock awaits us.

    So this is what you’ve been crowing about for 3 days? That was a quote from the article that MM linked to, genius.

  22. Anon said…” recall for example that Linn made the point that a circuit could be devised to perform the same function and no one would question the fact that it is patentable subject matter so why should it matter if the function being claimed is embodied in SW – the so-called functional equivalence point. Perry never answered that question.”

    Reply

    First, there is something about commenters using the Anon moniker that just exude intelligence. But to the point, Perry could not answer Linn’s question because an integrated circuit is patent eligible subject matter. It is the “Doctrine of Integration” that is the argument that can’t be defeated. First of all we have a Supreme Court Justices writing a 9-0 majority opinion in which it is explicitly explained that the reason claims are statutory subject matter is because the claims are “integrated”.

    And more importantly the case being described is not just a case but “the” case most on point for what “is” statutory subject matter and controlling case law.

    See Justice Breyer writing:

    ( 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)

    Now, in the same controlling case law from Diehr the Court writes:

    ““([u]nless otherwise defined, ‘words will be interpreted as taking their ordinary, contemporary, common meaning.”) [Diehr, supra, at 182.]

    When one checks the dictionary definition for the ordinary, contemporary, common meaning of “integrated” it says:

    “in·te·grat·ed [in-ti-grey-tid] Show IPA adjective:

    1.combining or coordinating separate elements so as to provide a harmonious, interrelated whole:

    2.organized or structured so that constituent units function cooperatively”

    So even with the judicial exceptions fully applying we know:

    That which is “integrated” is not abstract.

    That which is “integrated” is a process.

    That which is “integrated” is structured.

    And to extrapolate to the subject at hand , software and computers as “integrated circuits” is defined in the same dictionary as:

    “integrated circuit noun Electronics.
    a circuit of transistors, resistors, and capacitors constructed on a single semiconductor wafer or chip, in which the components are interconnected to perform a given function. Abbreviation: IC”

    Is this not an article or a machine?

    Does it not function as a process?

    Therefore when the question is asked, is software integrated with a computer statutory subject matter, there can be only one answer.

    And that answer is an unequivocal, yes!

    Perry

    ::silent::

    All anti software folks

    ::silent::

  23. Dear Paul, the EPO does not “know” a definition that will cut reliably between “technical” and “not technical” for all the inventions yet to be made. However, I think the EPO, and the people who specialise in arguing borderline cases before the 24 Technical Boards of Appeal of the EPO, have an ever sharper conception of which side of the line any particular claim falls. They should, for every year they issue getting on for a hundred final unappealable decisions on what is or is not “technical”.

    As you say, they do know it when they see it, with ever firmer conviction.

    What more do you want? Patents are to be available for all fields of “technology”. So a debate about what falls within the ambit of “technology” is unavoidable.

    Thankfully, however, we Europeans don’t need to argue whether any particular computer, EPROM, piece of paper that is storing a computer program, or some tax amelioration process or TV channel selection process, is or is not “abstract”. That (to my mind) would be barking at the wrong tree.

    So, unlike you, I think we Europeans are better off, when it comes to arguing eligibility.

  24. It’s interesting to me that Judge Linn elected to participate in the en banc rehearing.

    It is entirely expected. He wrote the panel decision (that eventually was vacated), and in that decision, he spent a considerable amount of verbiage addressing the law on 35 USC 101. This is clearly an important issue for him.

  25. MM:: “Rightly suggested”?! More like “wrongly suggested.” “And this is where the arguments went off the rails. The claims in Bilski and Prometheus were clearly “processes” (recited in the statute) and they were held to be ineligible.”

    This is not correct. A process is eligible by statute, with only two very limited exceptions of LoN/Natural Phenomenon, and Abstract ideas. Bilski was a mathematical formula, which is legally an abstract idea, and Prometheus was a LoN. Had the processes in either invention been anything other than those two exceptions they would have been statutory.

    There is absolutely no authority for the Court or courts to now run a great race to expand judicial exceptions to inventions such as software, computers, business methods and the like.

    If Congress wishes to write new policy and therefore change the patent law it has such power granted under the Constitution, but until that happens, software “integrated” in a computer or system will remains statutory subject matter.

  26. “But, how do they explain Deener? The method of processing grain could be performed by a human body and yet it was patent eligible.”

    This is an excellent point you have brought up before and I am surprised no one has addressed it yet.

    To take the anti softs argument to it’s logical conclusion, if anyone performing a process by hand is considered abstract then any patent issued before the advent of “automation” would be considered patent ineligible subject matter in the 21st century. How is that “promoting the progress” of the useful arts?

    Personally I am fine with saying that a process automated with the help of a computer is obvious to try, if indeed it can be proven to be. But a blanket rule that all automated processes, that can be performed by human beings, are patent ineligible subject matter as abstract ideas, has no basis in fact, logic, or reason.

  27. My read is that historically Moore has been voraciously anti-information processing. She seemed interested in applying the law during the oral arguments, but often a judge will do what she did because she needs help coming up with counter arguments. So, they take the side they want to oppose for sake of getting some good arguments to counter the other side.

    I also got the feeling that she wanted to split the baby. That she wants to figure out some way to keep computer architecture in but software out. And come up with some distinction so Intel could put stuff in but SAP couldn’t, for example.

    That was my take on her. She did defend Allapat, which was amazing. And her calculator example was dead on.

  28. And in case you forgot, MF, this site has some great archive capability:

    dis·sem·ble [dih-sem-buhl]
    verb (used with object)
    1. to give a false or misleading appearance to; conceal the truth or real nature of

  29. On the thread

    link to patentlyo.com

    at Feb 07, 2013 at 07:36 PM, MF stated

    Reading it also made me realize that, for those of us in legal academia trying to do something about the mess we’ve collectively created, every morning our rock awaits us.

    Tell me how much “sherlocking” does this take, or, more to the point, this is yet another of your “ooops” moments, like volunteering that you know what the controlling law is concerning the exceptions to the printed matter doctrine, of that “configured to” is (note: NOT imply) structure.

    Lace up those sneakers MF.

  30. What I know for certain is that Judge Moore wasted quite a bit of time in the early part of the oral arguments griping about all the detail in the specification and examples in the specification that are far more concrete and specific than anything in the claims. Why did she do that?

    Maybe because the “specification” is suppose to have the “specific” details for the claims?

    After all if inventions were as simple as writing a claim and submitting it to the PTO then even you could be an “Actual Inventor”.

  31. It’s interesting to me that Judge Linn elected to participate in the en banc rehearing. That’s the option of a senior status judge when he participated in the panel decision. 28 U.S.C. § 46(c). Sometimes senior judges on panels decide not to do that. I wonder what informs their decisions.

  32. Mental steps surely are abstractions, but there are some things which involve no “mental steps” which are still abstractions.

    Agreed, 6. I didn’t mean to suggest that the universe of “abstractions” is limited to mental steps. My point (and the point being made in court) was that all mental steps are abstractions.

  33. This is not really difficult at all

    Right. That’s why for years you and your li’l buddies said I must be an Examiner. Now I’m a “member of the legal academia”? LOL.

    Get a life, Sherlock.

  34. No, in fact if anything I would say that all the information I have on the issue seems to indicate that he specifically DID NOT recuse himself.

    “He clearly has a conflict of interest, in my humble opinion.”

    Obviously, but that’s the revolving door of government chugging to life for you. Take a spin at IBM, take a spin at the PTO, BINGO, go to huge lawlfirm, who knows, perhaps he’ll be a staffer to a congressman dealing with IP next?

  35. “It exists only in the mind, or as a physical representation like the symbol for infinity.”

    It does exist only in the mind, but existing in the mind is not a “mental step”, it is not a step at all. If you guys want to shoe horn them into being a “step” then fine, I understand what you’re doing but doing so is just using confusing language.

  36. I am not sure that the EPO knows what technical means – but apparently knows it when it sees it.

    For the avoidance of doubt we are in no better shape than you folks are in the US – we have our own hang-ups/schwerigkeiten/difficultes (I don’t think that the blog accommodates French acu=te accents).

  37. But what if the claim could, in some strict theoretical sense, be performed mentally or with pen and paper but it would be pointless to do so?

    For example, imagine a new, nonobvious algorithm for predicting the weather. Suppose this algorithm required such a massive amount of input and processing power that a human working with pen and paper would require a lifetime to simulate even a single second of the weather over an area of a few square miles.

    Is the computer here still just a glorified calculator? Or is it a necessary part of the invention that makes a practical application out of what would otherwise be an interesting but ultimately useless (in the § 101 sense) theory?

  38. No Ned, the point is that “beauty” like “music” is a canard to include in a discussion on patent matters, as these are not even in the universe of patent matters, being not within the useful arts.

    The ONLY possible goal in introducing these things is to kick up dust and attempt to confuse the real issue under discussion.

    PLEASE STOP THE OBFUSCATIONS.

  39. Ned,

    refresh yourself with Nuitjen – the key was not “persistence alone” – which, by the way is completely wrong anyway – look up to the sky to see such things that are not “persistent” that have been around longer than the earth has been around.

    No Ned, the key was “physical.”

    Read and then come back.

  40. Ned,

    We have been on this merry-go-round ride as well.

    I have shown you repeated strawmen you< ?i> have erected. You have never shown a strawman that I have erected.

    Stop emulating “MF’s accuse others of what you do” tactic. It does not work for him. It does not work for you.

    Same goes for “mischaracterization.” I have repeatedly corrected your mischaraterizations in law and fact. You have never – and I do mean never shown my characterizations to be mischaracterizations.

    The only constant problem is that there are those who have no shame in being intellectually dishonest in order to advance an agenda.

    Stop the lies Ned.

  41. Anon, just what is it about Nuitjen support your point? That case held that a signal was not patentable as an article manufacture because it was not persistent. I see no problems that.

  42. Anon, your erect strawmen all the time. You mischaracterize what I say, and then ask me a question. I refuse to answer. You take that as some kind of victory. What it really is this: I don't like to take the time, in nearly every post, in nearly every reply to you, to correct your mischaracterizations. It is a constant problem.

  43. Ned has a vested interest in not understanding.

    What is sad is that Ned is an intelligent person, and no doubt does understand.

    His moral compass is spinning at a greater RPM than a Beckman Ultracentrifuge.

  44. Night, I have no dispute that numbers represent real physical things. But in order to take a programmed computer from the fantasy world into the real world one has to actually measure something, transformed a measure something into a numerical representation, conduct the transformation according to the novel algorithm, and then produce a physical output of the transformed data. This could be an encrypted signal. A decrypted signal. An image. Something real. Without the tie into the physical world all your claiming as mathematics in the abstract.

  45. You persistent evasion is telling.

    As telling as yours, Ned?

    Tell me, how many times and in how many arguments have you evaded my questions and points?

    This duplicity of yours, with Kappos and recusing, and with NWPA and evasion, is downright sickening.

    I hope you realize how much damage to your credibility you are doing with your tactics.

  46. The point is that 101 cannot resolved prior to analysis of what is new in the claim. The claim truly is to the flowerpot, then the explanation about the more beautiful flower is an advantage of the novel flowerpot. However if the flowerpot itself is old, the claim is to a more beautiful flower.

  47. >> that produced numbers from numbers with no >>particular machine in mind

    Ned, numbers before the 1930′s were thought as you are characterizing them. Modern scientist relative to J. Douglas the author of Benson learned that numbers could represent other things. That numbers could be used to compute anything that is computable including human intelligence. That numbers were not those things that were used in the equations, but were far more meaningful fundamental tools for processing information.

    Please get out of the 1920′s when J. Douglas was educated and when R. Stern exploited J.Douglas’s ignorance to hood wink him into signing Benson.

  48. Night, in all my discussions with you, you never, not once, have ever directly responded to my points or questions to you about whether the claimed programmed computer must operate on signals. You never, not once, not in years and even deign to respond to this question.

    You truly want to patent the principal in the abstract as opposed to a particular physical application.

    This reply is one more example. You persistent evasion is telling.

  49. “Beauty”

    AAARRRGGGGHHHHHHH.

    Ned – stop the purposeful obfuscation with non-useful arts.

    It is offensive to anyone trying to hold an intellectually honest conversation here.

  50. Ned – that is a blatant lie. Your post at 11:52 gives no attribution to “the likes of Google.”

    Put. The. Shovel. Down.

  51. Ned – you forgot to address one of the words I included – Nuitjen.

    Spin by omission of facts is still spin.

    Another go around?

  52. Imaginary things? I got a good belly laugh from that.

    So, let’s see the computer works by manipulating imaginary things. Sure, Ned. We all know that computer memory is composed of angels spinning either clockwise or counter-clockwise on the top of imaginary pins inside the computer.

    By the way, aren’t really reading this. This is imaginary.

  53. Ned calling for someone else to recuse themselves because of conflict of interest.

    Shocking

    Ned, do you have difficulty flipping that ethical switch on and off like that? Or like, MF, do you merely hold intellectual honesty to be something on a quaint list, but not necessary to be actually used on a blog to advance your (or your third party interest’) agenda?

  54. Ned, your ridiculous arguments almost always start with if they would just agree to X, where X is some outrageous nonsense that would make a patent impossible to enforce or is so far removed from what the invention is that it renders the invention worthless.

    Give it up Ned.

  55. but are used instead to tax the US economy without contributing anything to its progress.

    Unfounded B$ that applies to any infringer when faced with ANY patent suit.

    It is one thing Ned to front for such an organization, it is altogether another thing to be so drunk from the kool-aid as to brandish such outlandish lies that make you indistinguishable from the general anti-patent crowd.

    But I have a feeling you already knew that.

  56. or that did not produce a specifically claimed physical output

    What was the physical output Ned.

    You are – once again – off in the weeds with your canards.

    encryption.

    Nuitjen.

    Unanswered legal points brought up by anon that leave Ned speechless.

    Tickets for the merry-go-round.

  57. A circuit operates on signals. If Linn would agree to limit the claimed computer equivalent to working on signals as opposed to numbers, then I think we did have a step in the right direction.

    I refer you to Alappat. There the claim was to a so-called rasterizer. The rasterizer was described in figure 3 of the patent. Figure 3 described digital circuits in a graphics unit that produced a display. The claim was in terms of means plus function. Thus the claim claimed those circuits. The claimed circuit elements were claimed as part of the graphics unit.

    The Alappat court agreed was that a programmed computer could be substituted for the particular circuits without affecting patent eligibility. I fully agree with that. But one must consider the context. The programmed computer was part of a larger machine and affected the performance of that machine.

    The case did not involve a programmed computer that produced numbers from numbers with no particular machine in mind or that did not produce a specifically claimed physical output. Yet, Alappat is cited as support for that very proposition – again and again and again.

  58. Sean, if you ask why this issue has not gone away is that there are some that truly want to patent software for business reasons.

    Then we have software companies and financial institutions who seem to have seen the light of day, particularly since State Street Bank. Software patents do not generally protect real inventions, or businesses, but are used instead to tax the US economy without contributing anything to its progress.

  59. Night, there is a difference between using a calculator to subtract one number from another, and permanently altering the calculator to respond to user input by employing the new algorithm.

    Do you see the difference?

  60. Night, grain is something physical. Information is not. It is in the realm of the imaginary.

    Are you suggesting that a process that manipulates imaginary things is the stuff of patents?

  61. 6, do you have any information on whether or not Kappos recused himself from any issue involving software patents? He clearly has a conflict of interest, in my humble opinion.

  62. 6, an infinite plane is an abstraction, clearly. It exists only in the mind, or as a physical representation like the symbol for infinity. But why it this is not a mental step is not instantly apparent. I think Malcolm and I both seem to understand that abstractions that exists in the mind, like the correlations in Prometheus, are in fact mental steps.

  63. In some sense this is the Benson test. If the claim is in effect, numbers in and numbers out, it can be done mentally, or using pen and paper, or the like. In a sense it is like using a calculator. The computer here is nothing more than a glorified calculator, a machine that is used, not a new machine.

    The patent office test seems complicated, but it is really simple.

  64. Prof. Crouch,

    Instead of guessing who said what at what time, do you know if and when a transcript of the oral argument will be made available?

    Thanks,

  65. It’s a caveat to prevent the unreasonable response from you.

    Pay attention, and answer the question.

    This is not really difficult at all – unless of course, you find actually being honest to be difficult.

  66. Would a reasonable person (obviously not your view) consider you to be a member of the legal academia?

    Since when do you care what reasonable people think?

  67. Mr. Cole,

    perhaps you will go where MaxDrei fears to tread. What is the definition of “technical?” And please do not engage in circular arguments, as my beloved US Government has done.

  68. No amount of legal argument will move the flower pot.

    And no amount of flubbing, non-legal, “policy” argument will move the flower pot either, eh Paul?

    Keep in mind, that such has not stopped the battle raging now for more than fifty years – with all due respect to the late Mr. Feynman (as I said, my comment on the linked thread is dead nuts accurate).

  69. Patentable Paul? Not always and for ever. Only so long as it fulfills the requirement that it be “new and useful”, right?

  70. I think it is a bit worse. They are saying anything to do with a computer is abstract until you prove to me otherwise. With abstract given the meaning something they don’t like it. So, basically, dance boy, and if I like it enough I’ll let it go by me.

  71. An EPROM is a patentable product on both sides of the pond because it has a technical nature.

    It does not cease to be technical merely because it stores a program

    That remains true on both sides of the pond.

    As I explain to my clients, there is a flower pot outside my office window with a shrub growing in it. No amount of legal argument will move the flower pot. As the late Richard Feynman said, mature is not fooled.

  72. MD,

    Your use of “useful arts” in quotes is not meant to confuse or conceal the true nature of what that term means in US jurisprudence, is it?

    And I am surprised that you do not find it interesting to comment on the jocular lack of definition for “technical,” (or its equally amusing correlation that the US courts have explicitly held that no such “technical” test exists in US law). I bet I could learn so much from your understanding of these items as they apply to US law (at least, in the negative sense).

    Amuse, we, um, enlighten everyone please.

  73. I can’t wait until someone just says this about the definition of “abstract idea”:

    “I shall not today attempt further to define the kinds of [claims] I understand to be embraced within that shorthand description; and perhaps I could never succeed in intelligibly doing so. But I know it when I see it, and the [claim] involved in this case is not that.”

    Because that’s pretty much what they’re trying to do with the term “abstract idea.”

  74. At least I can look at myself in the mirror.

    I quite imagine that anyone so full of themselves to think that they wake up each morning, crawl out from under their rock and have to attend to a Jihad to correct what the patent system has collectively been allowed to become, would, like other monsters of lore (i.e. vampires) have no reflection to see from the mirror of ethics and intellectual honesty.

    Note the indignation at being exposed for what he truly is. He will never get over that self-loathing because he does not recognize the source of that self-loathing. He projects it instead to his mistaken opponents, and he immerses himself in that emotion to steel himself to lift that rock off of himself and fight THE GREAT COMPUTER BRAIN INJUSTICE yet another day.

    It’s sad really. But it does serve a purpose to have such utter Massive Fail archived for all to see on these threads.

  75. Excuse my ignorance Paul, but you write “patentability exclusion”, yet I take it that the WM doctrine is a 101 filter.

    In Paul Cole’s quote, note the words “technical nature”. The EPO does not have an “abstract” filter but it certainly has a “technical” one, which serves as the EPO’s “useful arts” (or GATT-TRIPS) eligibility filter.

  76. to whatever extent it might be applicable

    Thank you for at least subtly acknowledging the exception to the written matter doctrine that is most on point in any discussion of this nature.

    And like MF has voluntarily admitted, you too will recognize that such is current controlling law in the US, right Paul? (even if MF, tries and fails to spin some type of necessity of Supreme Court imprimatur on current law).

    After all, we would not want this characterization of law to go down the path of a false or misleading appearance; or to conceal the truth or real nature of the actual current law in this reality, would we?

  77. Anon (nice moniker),

    What is also missing from the comments so far is the utter futility evidenced by Perry when the topic of equivalence of hardware and software was broached.

    For patentability (and patent eligibility – I did note that the court carefully made THIS distinction), hardware is equivalent to firmware is equivalent to software.

    Not only is this true in the legal sense, it is true in the factual sense. Counsel tried to float that Alappat was overruled. He failed. The court quickly put down its finger and stopped that spin.

  78. Software per se unpatentable? – Dennis I think we were listening to different arguments – maybe you were listening to a European version of this case. I did not come away with the notion that it was conceded that SW per se was not patentable. In fact the problem with SW patents in general is that they now must suffer under the baggage of the Court’s abominable decision in Mayo. But I for one do not think we are quite in the same boat as Europe yet when it comes to SW patents – hopefully we never get there.

    It is true that Moore relied on hardware components in the system claims to trap CLS with her questions which they did not answer well (because there is no good answer) but the focus on system claims and elements doesn’t automatically mean all SW is an abstract idea or that this point was conceded by anyone – recall for example that Linn made the point that a circuit could be devised to perform the same function and no one would question the fact that it is patentable subject matter so why should it matter if the function being claimed is embodied in SW – the so-called functional equivalence point. Perry never answered that question.

  79. Benson is good law – as long as you recognize exactly how Benson has been cabined.

    What is not good law is “characterizing” an earlier decision as controlling and ignoring how that earlier decision has been altered by later decisions.

  80. It is absolute rubbish to argue you can’t distinguish processing a physical item from one state to another from the process of manipulating information

    Actually, your “absolute rubbish” is assuming that very end state.

    In essence, you are assuming MoT. See Bilski. See Prometheus. MoT is neither necessary, nor sufficient.

    And you are aware that Flook has been cabined, right? Did your legal academia not cover that?

    And further your “precise” is actually not only imprecise, it is simply wrong.

    Granted (and as I tried to keep Ned on track multiple times), we are NOT talking here about claims that can be COMPLETELY performed in the mind.

    But there is no law, no implicit writing, preventing the processing of manipulating information from being a perfectly legitimate and valid process under patent law. Perhaps your legal academia also neglected to explain why Stevens lost his majority position in Bilski?

    You may be freshly minted and wet behind the ears, so I will cut you some slack, but you have a lot of catching up to do in this area.

  81. “Ignorant” is a bit strong NWPA, although it fits and is much better than “stupidity” which would be an apt term for those that have knowledge of what the law actually is and still seek a Jihad “trying to do something about the mess we’ve collectively created

    Ned,

    Does “mutiny” apply to those who are trying to subvert what the law actually is by any and all dirty tricks? I would be interested in your honest answer (and think that such an answer does not impinge on your third party interests).

    You would think that those in the legal academia would recognize the proper path to take to effect any desired change in the law, wouldn’t you? And yet, we have a fifty-year old plus battle (and note that my comment to Prof. Crouch’s thread about that fifty-year old battle is dead nuts on) – see link to patentlyo.com .

    How I dislike pegging MF and his circle so accurately (not that I dislike being accurate – I dislike the fact that such duplicity, um, er “characterization efforts” is afoot).

    And I would also note that this cite archives Dr. Noonan’s agreement with my sentiments concerning how the patent system is under attack by both the Left and the Right, by “legal academia” and “Big Corp.” No wonder why my comment sent MF into an eplectic rant of rage.

  82. Deener is completely distinguishable for the very reason you suggest. It is absolute rubbish to argue you can’t distinguish processing a physical item from one state to another from the process of manipulating information. And yes, I would absolutely argue that most (if not all) information processing claims are patent ineligible. That is precisely what is meant by “abstract idea” or as they are sometimes also called, mathematical formulas. The case you really should be examining is Flook.

  83. Yes, but EPO law is not further confused by the U.S. “written matter” patentability exclusion, to whatever extent it might be applicable.

  84. Simply taking mental steps and tying them to a computer is the core of what the abstract idea exception is supposed to protect against.Even Benson did not apply abstract idea in that manner (even though it botched claim 8 – which directly lead to Diehr’s claim as a whole correction).

    Not even close Sean. I suggest you stop being flabbergasted and start learning what the law actually is.

    Here’s a hint: in the real world, you do not have to parrot what your professor said in class to succeed.

  85. Hmmm,

    Ars Technica and copyright conspiracy theories…

    Looks like MF’s legal academia has a freshly minted acolyte.

    Come back in a few years Sean when you realize that those legal academia had been pumping you full of their agenda and Holy Jihad.

  86. I am flabbergasted that you assume that all of this stuff is actually going on in someone’s head, especially as it is STIPULATED BY BOTH SIDES that that is not the case.

    Let’s be careful to not so “characterize” the facts that those facts tend to give a false or misleading appearance or conceal the truth or real nature of what is being discussed (no MF’ing here: see below).

    There is a reason why this is not as simple as your simple statement Simon, er, um Sean.

    dis·sem·ble [dih-sem-buhl]
    verb (used with object)
    1. to give a false or misleading appearance to; conceal the truth or real nature of

  87. Any, guess what, Sean, even more than that I will say if you are trained in c.s. that you don’t understand the theory of computation.

    So, yes, I am calling you out. You are ignorant Sean.

  88. No Sean. No.

    Look, any of these information processing methods could be carried out by a Turning machine and thus a person’s head. That would mean all information processing methods are ineligle for patentability.

    You cannot ignore Deener. Deener clearly indicates that methods of processing physical items change by the introduction of machines. The analogy is clear that methods of processing represented information change by the ability to represent the information in a machine. In Deener a person could perform the method of processing the grain. That is meaningly. The point is a method for the machines.

    “Core of what the abstract idea exception is supposed to protect against.” What rubbish. Your statements are not any objective way enforable nor can you give any clear meaning to that rubbish you just wrote.

  89. +1.

    I write claims for computer-implemented inventions all the time, and don’t have any trouble keeping on the right side of the line you suggest, Sean.

  90. Is there some sort of policy that is furthered by allowing this gamesmanship?

    LOL. Yes. Article 1, Section 8.

    apparently assuming

    Apparently not. That was not the issue being discussed.

    You allusion to Diehr is interesting 6 – and seems to recognize what I have posted on the subject. Care to elaborate?

  91. there, that claim, that is the one which is preempt”. Period, end of story,

    Thank you Charles Duell.

    Come again and tell me what it is that claims actually do.

  92. It strikes me that patent eligibility here could be broken down to something way more simple than everyone is going on about. In the claim that is outlined in this article, is there any step in there that can’t be done in a person’s head? Because simple taking a mental procedure and tying it to a computer (rather than a live person) simply isn’t enough of a concrete step to survive Section 101.

    Prior to this invention (and since the dawn of time really), a person can receive a message from a party (“receive a transaction … via a communications device”). A person can look at account information contained in ledgers and adjust the values according to the transaction taking place (“adjust … account[s]… to effect an exchange obligation”). They could then contact another institution to place the correct order with regard to the transaction they just processed (“generate an instruction to … to adjust [the accounts]“.

    I get flabbergasted at why so many highly intelligent attorneys seem to have so much trouble with Section 101 and the concept of what an abstract idea is. Simply taking mental steps and tying them to a computer is the core of what the abstract idea exception is supposed to protect against.

  93. TitC,

    You stopped your quote too soon:

    r, or any new and useful improvement thereof,

    MF has not responded to whether or not he is actually using his very first computer in order to actually do all this NEW stuff with that computer.

    He is still attempting to ploy the vapid “House” argument that the first computer renders not only anticipated, but also ineligible all subsequent machine improvements.

    And we will let him continue up to the point where the analogy to chemistry eviscerates his own backyard, and then let him sputter and try to distinguish somehow that the constituent parts and all the bonding mechanisms are not likewise “VERY old” (quite a bit older than the machines he wishes to remove from patent eligibility on a per se category basis).

  94. Obviously Shame is higher than intellectual honesty on the priority list of those legal academia that wake up under a rock and have this Jihad complex about “fixing the patent system.”

  95. That is what they said in oral arguments that if it could be done by paper and pencil then “abstract.”

    But, how do they explain Deener? The method of processing grain could be performed by a human body and yet it was patent eligible.

    Physical machines that operate on physical items make for new physical methods of doing thing that may be done by people.

    Information processing machines that operate on represented information make for new information processing methods that can be done by people.

    The anti arguments are an assault against science and law. Shame on all of you. Shame.

  96. “Rightly suggested”?! More like “wrongly suggested.”

    QQ … the only way you are going to win this if you can convince Congress to remove “machine” from ”
    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter.” Good luck with that.

    This is where Perry blew a key teaching moment because Moore showed here that she still doesn’t understand the Prometheus problem or its resolution by the Supreme Court, or she was pretending not to. And perhaps the same is true of Perry.
    Perhaps it was you who doesn’t understand it.

  97. I take this to mean cases in which the invention would be inoperable or of essentially no utility without the computer.

    I don’t think so. The invention is defined by the claims, so the “inextricably linked” probably means that the claims must require use by a computer (i.e., it cannot be performed by the human mind alone). I’ll have to double-check the USPTO brief.

  98. Anon: I agree with you. That is why I put “abstract” in quotes to refer to whatever their claim or argument or psychotic nonsense refers to. They now have a method that could be applied in some fashion to start from their code and work up to the claims and point to some step or some scope that they believe indicates there is a problem which they have termed “abstract”. And, then let’s hear the argument. Otherwise, the whole thing is psychotic nonsense.

    The burden should be the defendant not the patentee.

  99. NWPA,

    You are falling into the briar bush.

    and identify a term in the claims that is “abstract” and why it is “abstract.”

    Terms in a claim are allowed to be “abstract.”

    That is the law.

    It is the claim – as a whole – that is not allowed to be abstract.

  100. To this point: if they want to invalidate the patent they should have to show at what point above their program (the accused device) the claims become abstract.

    That should be the test!!!!!!!!!!!!!!!!!!!

    Think hard about this. This is a real computer program that is accused of infringing and we have a set of claims. If the computer program isn’t abstract, then they should be able to go up from their computer program and identify a term in the claims that is “abstract” and why it is “abstract.”

    This at least would be a test with a method and some objective reasoning involved.

  101. Speaking about going off the rails,

    MF, let’s start with an easy question to test your commitment to intellectual honesty:

    Would a reasonable person (obviously not your view) consider you to be a member of the legal academia?

    Please don’t make me chase you around for a week (or more).

  102. Speaking about missing it,

    MF, let’s start with an easy question to test your commitment to intellectual honesty:

    Would a reasonable person (obviously not your view) consider you to be a member of the legal academia?

    Please don’t make me chase you around for a week (or more).

  103. Speaking of pretending about never hearing of certain things,

    MF, let’s start with an easy question to test your commitment to intellectual honesty:

    Would a reasonable person (obviously not your view) consider you to be a member of the legal academia?

    Please don’t make me chase you around for a week (or more).

  104. “Whatev” is the reply from the legal academia from under their rock.

    It’s too bad that intellectual honesty is so high on the priority list that such will never be reached.

    I dislike being so right about MF.

  105. Moore’s… exactly right.

    No small amount of ironic chuckle. Especially after the first few minutes of dismantling the ALL these claims are abstract because they have BIG COMPUTER BRAINS runaway, um, characterization.

  106. Let’s let this one play out.

    You know, pretend that those in the legal academia can crawl out from under their rock, and all…

  107. Moore also discussed abstract in getting everyone to agree the computer listing as claims would be patent eligible.

    Actually, that is a key point. If that is patent eligible, then one can go up from there to show scope.

    What is so strange about all of this is that if 102 and 103 are used properly, then the patentee has a strong incentive to make the claims fairly narrow so they are enforceable.

    Try to this with 101 is just silly (and abusive to the law.)

  108. One last comment before I have to get work done: You anti pea brains are a pip. You don’t even realize that Moore was trying to get help in figuring out how to invalidate the system claims. You think she was against you because are policy oriented and not trying to apply the law.

    I guess you can bring down the country you and your ilk. But, you don’t have the moral ground. At least I can look at myself in the mirror.

  109. Abstract idea was discussed indirectly by Moore and her analogy with the calculator and with the discussion of whether computer program itself was patent eligible (yes they all agreed).

    I can tell you as someone that writes software patents–this is going to make it much more expensive to write a software patent and all of this discussion is nonsense. They are trying to use 101 for 112, 102, and 103. Just doesn’t work.

    Why? 1) the patentee is supposed to be responsible for showing other ways are possible? That is ridiculous. You are supposed to then invent design arounds to prove that you are not abstract. That is insanity.

  110. “Most notably absent from the oral arguments was any discussion of the meaning of an ‘abstract idea.’”

    Unfortunately, once more it appears that the the “elephant” (what does “abstract idea” mean?) in this patent-eligibility “room” is dodged. Until “abstract idea” is (objectively) defined by the courts, including the Federal Circuit and SCOTUS, we will continue to have subjective determinations rule over objective ones in this area. Continue to get out and use your Ouija board.

  111. link to medicalnewstoday.com

    Not patent eligible by pea brained criteria.

    The one other large point here is that this notion that there have to be other ways of doing something that are know is not applied to any other area of patent law.

    So, for example, does that mean that fiber optic cable would not be eligible for patentability because you have to show that there is some other way to do internal reflection of the light? Or LED, you’d have to show some other way.

    Outrageous nonsense that has no basis in reality.

  112. I thought that Rader really blew it here. He could have just used this point to make the anti-pea brain squirm and lie more than he was.

  113. I’ll let anon deal with this basket of nonsense and twisted truths.

    MM: your life is a waste. The best that your crowd could ever achieve is to subvert the patent system through the legal system. Not a good goal.

  114. Moore’s analogy with the calculator and then Allappat were exactly right. A real invention inventing subtraction to an adder, and the extension that it could have been done in software or hardware. The fact that the software makes a new machine per Alappat.

    That is the physical reality of the invention. You anti pea brains have the word abstract you have lofted as a shield to your policy intent.

  115. The Google car would not be eligible for patentability under the test proposed by the PTO or the Anti-pea brained boy.

  116. What abstraction? You witch hunter. You are like a medieval mind spouting out about ghosts and spirits.

    Define this “abstraction”!!!!!!!!!!!!!!!!!!!

    These arguments do not belong in a modern society. The fact that someone can spout off about abstract and just make up words to push policy illustrates how far we as a society have dropped.

  117. The anti dope should be sanctioned for wasting all our time. Moore was exactly right. The anti dope was trying to sweep all the claims as abstract and without even considering the elements of the claims.

    Benson is not good law.

  118. MM: Yes, the Google car of course can run on a general purpose computer. Your ignorance of information processing is criminal given that push policies in information processing.

    “The ‘Google car’? Seriously?” Not only really and seriously can it be run on a general purpose computer—but far more than—duh!!!!!!!!!!!! Anyone with a rudimentary knowledge of computer science would know that.

    His Google car example was outrageous. If an applicant files an application, it should be examined per the patent act. If it wasn’t enabled, then there is no patent. If it is enabled, then the patentee is entitled to the scope of enablement in the claims.

    MM, you embody all that is wrong with our society. Greedy intellectually dishonest swine.

  119. It is interesting to see how, so early in the oral argument, there was raised a point that was discussed in the EPO Enlarged Appeal Board in G 3/08 PRESIDENT’S REFERENCE

    “Thus according to Boards of Appeal case law, since the claim, “A computer- readable storage medium,” is not excluded from patentability by Articles 52(2) and (3) EPC, neither is a claim, “A computer-readable storage medium storing computer program X,” (cf. “A cup decorated with picture X”).

    It might be argued that whereas “A Blu-Ray disk with program X written on it,” would escape the exclusion of Article 52(2) EPC, “A computer-readable storage medium with program X written on it,” should not. The only basis for such an argument which the Enlarged Board can envisage would be that the feature “computer-readable storage medium” loses its technical nature because it is too generic or “functionally defined”. There is however no case law known to the Enlarged Board that would support this view.”

  120. “None of the parties seriously argue that software per se is patentable – apparently assuming that software apart from its computer implementation always embodies an abstract idea.”

    People who presume this and then in the next breath say that there should be such thing as a valid software patent (as opposed to let us say a patent that just coincidentally includes some software somewhere non-essential to other patentability, ahem, Diehr) simply blow my mind. If we’re going to disallow the patenting of software itself, then why allow lawlyers to turn software into “something” patent eligible? There is just no justification for allowing this that I can see. Is there some sort of policy that is furthered by allowing this gamesmanship? Is there anything good that can possibly come out of this which would not come out of just allowing software to be patented all the time? Doing so clearly goes against the entire point of Benson and the decisions before Benson on the subject.

  121. At 59:22 there is an extensive discussion of why Alice’s claims fail. Along with a good demonstration of how Alice’s counsel insists on misunderstanding what abstraction is at issue.

  122. “I was grateful, at least, that everyone in the courtroom appeared to agree that “mental steps” and “abstraction” are equivalent terms.”

    I would say close, but no cigar. Mental steps surely are abstractions, but there are some things which involve no “mental steps” which are still abstractions. Just as an example off the top of my head, an infinite plane that extends in all directions. It is plainly an abstraction, no such thing exists in the real world, but it doesn’t involve a mental step either. Conjuring one into your mind may well involve a mental step, but that isn’t really relevant to our discussion at hand.

  123. “No kidding. Mostly when I listened to the oral arguments I couldn’t help but think about the incredible amount of time and money wasted. “We should focus on the claims.” Really? Why is that reminder necessary at an en banc Federal Circuit oral argument?”

    The exact same things went through my brain several times at the args. I was like, um, for sers guys?

  124. At 50:09 the guy for Alice concedes the case. And as soon as the judges all come to that realization, specifically that there is no way of accomplishing the abstraction which the banks are adopting without infringing, this case is finished. Because that is specifically the abstraction that is at issue in this case, even though nobody seems to have bothered to write it down for this case, and simply point their finger at it and say “there, that abstract idea, that is the one which is preempt”. Period, end of story, all the sht falls.

  125. Judge Moore rightly suggested that a computer by itself is clearly a machine and subject-matter eligible.

    “Rightly suggested”?! More like “wrongly suggested.”

    And this is where the arguments went off the rails. The claims in Bilski and Prometheus were clearly “processes” (recited in the statute) and they were held to be ineligible. We are waaaaaaaay past the point where 101 is merely a quick frisk at the door to see if your formal gimmickry is convincing. For the same reason, the absolutist “threshold inquiry” nonsense has to be put to bed. It’s certainly true that if you try to claim “a new emotional state” or a “a new poem” or a “new law of nature” you are not going to get past the door and everyone saves a lot of time by getting that over with. But it’s also certainly true that a 101 problem can present itself only after claim construction and an analysis of how the claimed invention relates to the prior art. Prometheus made that crystal clear. Why is that not understood? Why is there confusion about this?

    I was grateful, at least, that everyone in the courtroom appeared to agree that “mental steps” and “abstraction” are equivalent terms.

    She queried then, how can a more particular invention – the computer with particular functionality – be ineligible? Perry offered two responses. First, he argued that the claim here is really method claim masquerading as a machine claim; Further, Perry argued that the claims here are not directed to any particular computer but instead a generic system.

    This is where Perry blew a key teaching moment because Moore showed here that she still doesn’t understand the Prometheus problem or its resolution by the Supreme Court, or she was pretending not to. And perhaps the same is true of Perry.

    Here’s the situation: everyone agrees that a process for determining the level of a specific metabolite in a person’s blood serum is patent eligible. So, too, is a method for making coffee, comprising grinding the coffee beans and pouring hot water over the ground beans. Everyone also agrees that those processes are old. The Prometheus problem arises when novel but ineligible subject matter (e.g., a novel mental step or any other novel abstraction) is appended to the old eligible step. Such claims, if granted and found to be enforceable, are effectively claims to the ineligible subject matter, at least with respect to those practicing the prior art (e.g., lab technicians or coffee brewers, by reference to my earlier examples).

    We know how the Supreme Court dealt with Prometheus. It was a short, clean 9-0 decision.

    There was a moment of dancing around the issue where someone suggested that the Prometheus claim could probably not have been saved from eligibility by inserting reference to “a computer” in the determining step. That is the question that really needs to be answered by the Federal Circuit, or by the Supremes, if necessary. But the CAFC could quite easily confront it head on in this case.

    In this case, we have a method that was (correctly) deemed ineligible by the PTO as a claim to an abstraction, e.g., a method of processing information that could be carried out by the human brain with pencil and paper. That objection was overcome by the patentee by amending the claim to insert various generic references to computer-implementation. A everyone knows, computers are old. They are VERY old. Computers exist to process information. The “computer/system” “limitations” in this case added nothing to the ineligble method whatsoever except to “computerize” it, i.e., make it work faster and more efficiently than if people did the same work, which is what computers have done for many many many decades now.

    Judges Moore and Newman then queried whether the real focus should be on obviousness.

    Of course the claims are obvious. But the Federal Circuit has insisted on keeping numerous ridiculous “secondary factors” afloat which serve to turn the determination of obviousness into an extremely expensive joke whenever the alleged infringer has made money off the obvious invention.

    If obviousness at the PTO was determined with anything remotely resembling rigor in the context of computer-implemented j-nk, we wouldn’t need to bother with 101. That hasn’t been the case for quite a while. If anything, the opposite was true.

  126. “The oddball test . . . borrowed from copyright law”? I didn’t hear any mention of copyright law. Nor a new test (which might of been helpful). In fact, I think I heard the government argue that there should be NO bright-line test. Did you listen to the same argument I did?

  127. The PTO argues that an inseparability requirement should be put in place for computer implemented inventions. Under that construct, a computer implemented invention that applies an abstract idea would only be patent eligible if the computer is inseparably and inextricably linked to the invention.

    I take this to mean cases in which the invention would be inoperable or of essentially no utility without the computer.

    One could also call this the “it doesn’t matter if no one would ever actually implement your invention without a computer; if it’s physically possible to implement your invention without a computer, then you can’t patent implementing it with a computer” rule.

  128. .Mr. Kelly did agree (on questioning from Judge Moore) that the focus in this process should be on the language of the claims.

    No kidding. Mostly when I listened to the oral arguments I couldn’t help but think about the incredible amount of time and money wasted. “We should focus on the claims.” Really? Why is that reminder necessary at an en banc Federal Circuit oral argument?

    If Judge Moore prompted this admission from counsel that the claims should be the focus of the analysis, I missed it. What I know for certain is that Judge Moore wasted quite a bit of time in the early part of the oral arguments griping about all the detail in the specification and examples in the specification that are far more concrete and specific than anything in the claims. Why did she do that?

  129. don’t remember which anti it was, but one said something about a car that was intelligent and someone applying for patent, and compared it to the Google car and said that was patent eligible how they did it.

    The point being made was that there are two kinds of patentees: (1) those who are going to actually spend the money to develop and build a self-driving car and (2) trolls who want to “make a bunch of money off the self-driving car business”. A claim that described a self-driving car with structural specificity (and not merely the concept of that car) should be patent eligible. The discussion was about the fact that the patentee in this case never tried to implement a working embodiment of this computer-implemented system. Why would it bother? That wasn’t the point of the patent. The point of the patent was to troll CLS bank and other banks.

    The Google car can in principle run on a general purpose computer. The Google car is some sensors, software, general purpose computers.

    The “Google car”? Seriously?

    The idea of a self-driving car predates Google by many years. A self-driving car is a car that knows all the roads, can recognize other cars on the road, has access to more information than a person has (indeed, it has access to all relevant information), and can access that information and process it more quickly than a person.

    Of course the PTO will pretend that they never heard of such things before. Maps for driving? Oh but these are virtual maps! Totally different! Just like “shadow accounts” are totally different from “non-shadow accounts”! Can I haz patent now?

  130. Well, we have Rader, Newman, Linn,

    Church Turing Thesis: every computable function can be computed by a Turing Machine, which we can think of as a general purpose computer.

    The judges of the federal circuit are performing computable functions in performing their duties.

    Therefore, a machine to perform the duties of a federal circuit judge is abstract.

    As if that makes any sense at all.

    Also, this business of a computer as only speeding things up is another one of those lies. Computers change the nature of the computation just as the method in Deener was changed by having machines to perform steps.

    Man, I wouldn’t mind so much if Congress passed a law to limit 101. I might disagree, but it wouldn’t offend my legal training. But, this is just a witch hunt with lies and bizarre words and concepts getting stacked higher and higher. So, a machine that determines if a tumor is cancerous is abstract?

    Note: don’t remember which anti it was, but one said something about a car that was intelligent and someone applying for patent, and compared it to the Google car and said that was patent eligible how they did it.

    OK. Let’s think about this. 1) if someone applied for a patent for an intelligent car and it wasn’t enabled then it should fall based on that. 2) The Google car can in principle run on a general purpose computer. The Google car is some sensors, software, general purpose computers. So, they just admitted that software is eligible under Allapat.

    That is the thing about all of this. They constantly lie or contradict themselves. Really, you guys think Benson is good law?

  131. Didn’t the grant of en banc review vacate the panel decision? Why then must CLS get 6 of the 10 votes? Isn’t that Alice’s burden?

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