The Use of Legal Scholarship in Intellectual Property Decisions

 By Jason Rantanen

One of the ongoing debates involving the Federal Circuit revolves around its performance as a circuit court.  Professors Craig Nard and John Duffy, for example, have critiqued the court's basic jurisdictional structure, arguing that court's exclusive jurisdiction fosters an insularity that produces "an isolated and sterile jurisprudence that is increasingly disconnected from the technological communities affected by patent law," and that the solution is to rewrite the court's jurisdiction.  These and other arguments criticizing the Federal Circuit's performance are supported by the epithet that the Federal Circuit cites scholarship in its patent opinions at a far lower rate than other circuits do in their intellectual property opinions. 

In The End of an Epithet? An Exploration of the Use of Legal Scholarship in Intellectual Property Decisions, recently published in the Houston Law Review, Professors Lee Petherbridge and David L. Schwartz examine this empirical claim about the Federal Circuit's use of scholarship by exploring the U.S. Supreme Court's use of legal scholarship in its patent, trademark, and copyright jurisprudence.  They find a substantial difference in the use of scholarship across these areas, with the Court's use of legal scholarship in copyright and trademark decisions being among the highest observed and its use in patent decisions among the lowest.  It thus appears that the Supreme Court behaves similar to the Federal Circuit with respect to the use of legal scholarship in patent cases, undercutting the empirical support for the claim that the Federal Circuit is insular.  This finding adds to an earlier study by Schwartz and Petherbridge revealing that the Federal Circuit's overall rate of citation to scholarship is within the range of the regional circuits.

In addition to their empirical findings, Petherbridge and Schwartz address the question of why the use of legal scholarship in trademark and copyright jurisprudence is so high, and its use in patent jurisprudence so low.  Their answers range from the doctrinal (patent law is more developed, so less need to reference scholarship) to this historical (until recently, perhaps there has just been a lot less patent law scholarship and beyond).

Read the article here: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2214025

This issue of the Houston Law Review is worth checking out generallyIt includes terrific articles by R. Anthony Reese, Greg Vetter, Colleen Chien, Kevin Collins, Paul Janicke, Mark Patterson, and Katherine Strandburg. 

217 thoughts on “The Use of Legal Scholarship in Intellectual Property Decisions

  1. And yet, you remain silent as to this irrefutable situation. You offer nothing to counter this.

    You do not because you cannot.

    Still.

  2. Comprises a machine state?

    Please Ned, that’s not even close – by that definition, software cannot exist without a machine.

    Please come back to this reality. Do not make the discussion derailment so painfully obvious.

  3. Again, So is a computer program (aka software).

    Everyone knows that hardware is equivalent to firmware is equivalent to software.

  4. Nice dust-kicking Ned. That does not answer my question at 4:00 PM – do you agree with your hero and I?

    It’s a yes or no question.

  5. It was a radical departure from precedent.  The term radical was the term used be Rich's brethren. 

    Rich had a view that a claim that the courts had historically held to be ineligible provided an eligible use was disclosed.

    The SC specifically disagreed and went further to exclude such claims where the use was set forth in the claim itself.  See Benson.

    Sent from iPhone

  6. It’s not a problem – for most everything else outside the confines of the philosophically driven agenda seeking mutineers.

    Do you see the same hue and cry over such other machine components as rivets, tires or bullets?

    Now ask yourself “why not?” – the intellectually honest answer is directly tied to anthropomorphication. The problem is that computers really do not “think.”

    They are just machines.

  7. LOL – but do you agree with Frederico (and by extension, with me)?

    Need I remind you that controlling law does not need the official imprimatur of the Supreme Court?

  8. “Leopold shows (once again) that he is merely a hypocrite. His initial post was meant only to slam you 101 Integration Expert, and for all his worldly experience, he has failed in an attempt to best a non-lawyer in this particular area of law.”

    Yes, anon I must agree here. I honestly had high hopes that LB would prove to be a better than MM but he is in fact much worse. To put it in his own words, LB was simply in this exchange, to ” simply pound the table and repeatedly mouth self-serving, intellectually bankrupt “analysis.” And then to simply cut and run.

  9. Ned: “The problem with the Rich statement Was that there was no requirement that the subject matter be integrated into a machine at all.”

    Rich evidently read the statute, ( which he was involved in creating) and did not see such a requirement. Why was that a problem?

  10. Frederico also drafted 282.

    He points out that the change was to align patentability and validity.  101 was excluded.

    That was at least one reason Frederico said what he said about "invention" in 103 being the exclusive measure.

    However, this issue has not been litigated and decided.  But academics agree with Frederico.  

    Sent from iPhone

  11. I am riveted by the tireless propaganda that a machine component MUST be integrated at all to be patent eligible. When the bullet of this notion is loaded into the gun of US jurisprudence, how many existing patents across any number of art fields will be gunned down?

  12. It was (and is) the Supreme Court’s position as well.

    Study carefully the language they use. Look to the authority they cite.

  13. I am riveted by the tireless propaganda that a machine component MUST be integrated into a machine (at all) in order to be patent eligible. When that bullet of an idea is finally loaded into the gun of patent jurisprudence, how many existing patents across various art fields will be shot down?

  14. Anon, you keep saying that the ability of the courts to the ability of the court to construe  patentable subject matter was revoked in 1952 with the addition of section 103. I see nothing in that statute says  that Possible exception of section 282, which seems to exclude section 101 from validity.

     I know that that was judge Rich's position. But that was his opinion only.

    Sent from iPhone

  15. The problem with the Rich statement Was that there was no requirement that the subject matter be integrated into a machine at all.

    Sent from iPhone

  16. MM:” Dennis doesn’t”

    Hello MM:

    Why do you ignore facts and evidence that discredit your assertions? Look, as previously pointed out to you many times, here is the latest article by Professor Dennis Crouch on his view of Integration. Now compare that to your view of dissection in which you ignore elements or steps in the concluding analysis. I see no support for your view in the article.

    Please see:

    Patents Encompassing a Human Organism
    by Dennis Crouch

    “Ex Parte Kamrava (PTAB 2012), APN 10/080,177  Download 10080177
    Most Section 101 subject matter eligibility problems can be cured by integrating the ineligible subject matter with subject matter that is patent eligible. This works because the fact that an invention encompassing some ineligible material does not preclude patentability – as long as the invention also includes sufficient eligible subject matter. Following this theory, the Supreme Court in Diamond v. Diehr, 450 U.S. 175 (1981), agreed that a practical use of a mathematical formula was patentable.”

  17. MM: “They don’t agree with you with or 101E. With respect to any putative restrictions Diehr ever put on looking at the novelty of individual claim elements in the course of a 101 analysis, they agree agree with the “lawless mutineers”, i.e., Professor Collins and myself: those restrictions no longer exist after Prometheus.”

    Hello MM:

    First, I believe you are creating what is called a straw man. Making an argument no one has made, so you can knock it down and declare victory. I do not recall saying what can or can’t be “looked at” when analyzing a claim.

    You can “look at” and even “consider” anything you want. That is part of the analytical process. But it is what you conclude that matters. And what the Supreme Court has expressly forbade is “ignoring” elements in the concluding analysis. That’s called dissection and it is not allowed under Diehr, or Prometheus. To make sure people like you understood this the Court in Prometheus expressly stated:

    ” 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″

    If your Professor Collins claims the Court did not make the above statement about “Integration” then the Professor is factually wrong. If your Professor Collins ignores the Courts use of “Integration” then any thesis he purports to advance, that so states “ignoring elements is allowed by the Court” is dishonest and Intellectually bankrupt. As far as Professor Crouch, he has most recently gone on record to support the view of Integration and not dissection.

  18. It is only you that is saying what they believe Malcolm.

    I am using your own logic against you – EVERYONE believes in me until they expressly post that they do not (and they must show the super double secret code in order to prevent fakes).

    What’s the matter Malcolm? Don’t like it when other’s co-opt your third grade logic and use it to destroy you?

    Feel the need to kick up dust with a completely off-tangent discussion?

    Instead of trying so hard to “parody this S__t,” try to engage with some basic intellectual honesty.

    LOL – Like that would ever happen (in the rare occurrences that it does, you end up burning down your dogma with self admitted understandings of controlling law and such – no wonder why you stick to the vitriol and avoid the substantive discussions. It’s more than painfully obvious why when this is brought to your attention all you can do is [shrug] and stand by.

  19. Do the steps add a novel or non-obvious feature?

    The problem – and a fundamental fact in its own right – is that this does not and cannot cover the law as it really is.

    To wit: A fully patent eligible and legitimate claim can contain ONLY and ALL elements that lack “novel” and “non-obvious” features in and of themselves.

    This single example destroys your pet theory, as you MUST be able to account for this particular FACT situation. An yet, you remain silent as to this irrefutable situation. You offer nothing to counter this.

    You do not because you cannot.

  20. in fact, everyone in the whole world agrees with everything I say.

    Still waiting for you to provide a single example of a law firm that uses staff to screen registerered letters directed to its attorneys where upon the finding of a reference to prior art relating to a client’s patent application in the letter, the staff disposes of the letter so the attorney is “shielded” from learning of its contents.

    Just one example, anon. Or find me a single other person on the planet who agrees with you. Maybe a law review article by a genius with similarly awesome ideas as yours? That would be nice. I’m especially curious as to how the firms deals with the malpractice liability and whether its insurance carrier is informed of the practice. Since bringing the scheme up, you’ve seen remarkably reluctant to discuss the details.

  21. in fact, everyone in the whole world agrees with everything I say.

    Professor Collins doesn’t. Dennis doesn’t. Jason doesn’t. LB doesnt. Ned doesn’t. MD doesn’t.

    Not even Noonan and EG agree with you on the issue we’re discussing. For that matter, I’m quite sure that AAA JJ and Just Asking also disagree with you on this issue. Your beloved USPTO even disagrees with you, as I showed you above. Gene Quinn, too, I’m sure, also disagrees with you.

    Except for 101E, you’re on an island all by your lonesome, anon. The rest of “lawless mutineers” have moved on and understand that what Collins wrote is correct. Indeed, to the extent it’s not prophetic, you might as well just call it what it is: the “actual law”.

  22. “Echo chamber” is meant as a derogatory reference for two (or more) people agreeing with each other.

    It is out of place in a discussion of those trying to engage in an exchange of ideas with “smart” people having a variety of backgrounds, training, and perspectives. Again, those who would wield the Crybaby’s Veto are those contributing most to low quality blogging.

    Leopold shows (once again) that he is merely a hypocrite. His initial post was meant only to slam you 101 Integration Expert, and for all his worldly experience, he has failed in an attempt to best a non-lawyer in this particular area of law.

    All of his arrows are aimed at one viewpoint. All of them land at his own feet. Maybe he can borrow that wonderful hammer of yours and pound those arrows into the ground so that he does not continuously trip over them.

  23. It is quite dubious that you would skirt this opportunity to show true legal skill and foresight to in effect hide behind a technicality.

    LOL. Impossible to parody this s–t.

  24. The bogeyman of “it can be performed in the human mind” is used to obfuscate the reality that a machine does not have a mind.

    Anthropomorphication runs amuck.

  25. I guarantee you a lot of judges and their clerks will be reading it

    reading comprehension FAIL

    From Prof. Rantanen’s post: “why the use of legal scholarship in trademark and copyright jurisprudence is so high, and its use in patent jurisprudence so low.” (emphasis added).

    There are obvious reasons why the patent use is low.

    Academic patent articles are infected with a certain cloying bias. A high level of inbred cites leads to a circular motion that induces delusion and a detachment from reality. The “bogeyman” of patents is everywhere.

    Couple this with the purposeful denigration of patents from Big Corp (for whom, other size-related market powers would be preferable), and you have what I posted long ago: attacks from both the Left and the Right.

    Even people with English as a second language can understand this.

  26. Ned Heller : “Yeah, sure. You claim a mathematical algorithm and disclose a computer for doing it. Rich says, who cares if it can be performed entirely in the mind? ”

    Why wouldn’t an algorithm integrated in a software program, that is integrated in a digital computer, that is “integrated into a process as a whole be statutory subject matter?

    After all, that is essentially the make up of the Diehr case, and as we all know that invention was statutory subject matter, and remains the case most on point.

  27. MM “You should read Collins’ article. It’s good. I guarantee you a lot of judges and their clerks will be reading it. ”

    I presume you read it then. So tell me this, did Collins reconcile Prometheus “Integration” with the Courts precedents?

    Or did Collins just skip over that part. You know like you did and have run from for an entire year?

    :: Silence::

  28. LB: “Yeah, one of those is probably it. Enjoy your echo chamber!”

    I do not know what “echo chamber” is supposed to mean.

    Look, you said it was non sense to apply Integration Analysis to Ultramercials claim. After initially saying, “Give me a claim, 101IE, and I’ll be happy to oblige. I’ll even waive my customary fee.” You now say, it doesn’t make sense is view of Bilski.

    But the Supreme Court GVRed Ultramercial in view of Prometheus Integration, not Bilski.

    So my question to you, is if the Supreme Court believes it’s proper to apply “Integration Analysis” to Ultramercials claims, why don’t you agree?

    Keep in mind I am not asking you to perform the analysis anymore. I know you are too afraid for that. I am simply asking why don’t agree with the Supreme Court?

  29. Yeah, sure. 
     
    You claim a mathematical algorithm and disclose a computer for doing it.  Rich says, who cares if it can be performed entirely in the mind? 
     
    Now that was indeed a radical shift from all prior precedent — all of it to the contrary.  Where did he get his authority?  None was cited.  Was he a god?  Or did he just have a god complex?
     
     

     
    Sent from Windows Mail
     

  30. anon: “You are ducking the 2:53 post as to which case was referenced in the GVR.”

    Yes LB did duck this issue, just like he ducked applying “Integration Analysis” to Ultramercials claim. In that regard he is no better than MM, who cuts and runs.

  31. LB: “It is not Office Policy to use Bilski’s MoT as the sole test for claims like Ultramercial’s.”

    101 Integration Expert: Oh, is there another test? Please do tell. You already say we can’t use Integration Analysis, so that can’t be your answer.

    LB: So let me get this straight – the USPTO Memo in view of Prometheus proves that “Integration Analysis” is the bomb.

    101 Integration Expert: No. What the Office Guidance on Integration, in view of Prometheus demonstrates, among other things, is that various dissection theories in which you strip away and ignore elements in the concluding analysis are incorrect. It also serves as basic guidelines for Examiners to apply “Integration Analysis” to claims. However the guidance should be taken into consideration along with Prometheus’ instructions, and Diehr’s claims as a whole and no dissection mandates.

    LB: but it’s perfectly OK to ignore everything that the this memo says about the limited applicability of integration analysis.

    The memo has no authority to limit Integration Analysis. Nor does it say anything about the application of Integration Analysis being limited. That authority rest with the Court.

    As previously explained to you, what the guidance does is essentially instruct Office Personnel to wait on the out come of cases before the CAFC, namely Ultramercial, before using Integration for claims different from the type in Mayo v Prometheus.

    I really don’t see what you intend to accomplish with all this dust kicking about the MoT. We ( The Patent Community and Courts) already had this debate . It’s over. The new frontier is “Integration”.

    Deal with it.

  32. Haven’t seen anyone but you actually say they agree with Collins.

    Outside of the little circle, still haven’t.

  33. They are free to disagree with me and I’m quite sure that they would if they felt I was misrepresenting their views.

    LOL – Are you in third grade again?

    Let’s do the “everyone agrees with me and if they don’t they can say so” B$.

    Point in fact – you said people agreed and I asked you to point out hte specific timestaqmps.

    YOU CANNOT – you are (yet again) caught in a blatant lie.

    Nice job.

    And by the way, in fact, everyone in the whole world agrees with everything I say.TM

    So now we have it – only those that EXPLICITLY come to this thread and post (of course, to avoid fakes, they also have to post and provide the double-secret keyword) to disagree with me, OBVIOUSLY fully, completely, and forever agree with me.

    Gee, what’s wrong with that logic?

  34. You quite miss the point of this whole thread Malcolm – there is a serious disconnect between the “Academic Intelligentsia” and reality.

    In fact, everyone in the whole world agrees with everything I say.TM

  35. anon: all of this could be simply handled by simply stating that no matter how a claim reads, a person performing a claim entirely in their head cannot be found to be infringing.

    What is “all of this”? Who does this “simply stating”? Do they provide any reasoning or do they just “simply state it”, like you just did. Do you believe that it is axiomatic that a mental process can not be found infringing? Is it an evidentiary issue? A First Amendment issue?

    Rich was not only right

    In fact, he was quite wrong, which is why the Supreme Court just drove a 9-wheeled cement truck over his corpse. You should read Collins’ article. It’s good. I guarantee you a lot of judges and their clerks will be reading it. Those people don’t care at all about your “simple statements”.

  36. Malcolm you have still failed to provide the date stamps of these so-called everyone agreeing with you and/or Collins.

    They are free to disagree with me and I’m quite sure that they would if they felt I was misrepresenting their views. They’ve expressed their views before on this subject. They don’t agree with you with or 101E. With respect to any putative restrictions Diehr ever put on looking at the novelty of individual claim elements in the course of a 101 analysis, they agree agree with the “lawless mutineers”, i.e., Professor Collins and myself: those restrictions no longer exist after Prometheus.

    The only people who disagree are you and 101E. And the best part about that is you are going to get served over and over and over. Speaking of which, with respect to the USPTO’s guidelines, take a good look at them:

    slide 20: – The “judicial exceptions” to eligibility are typically identified as
    abstract ideas (e.g., mental processes)

    Yup. As I’ve been saying. As Collins said. Then check out slide 40 which lists “hints” about when additional steps might render a claim eligible, in spite of the presence of a judicial exception in the claim.

    slide 40: Do the steps add a novel or non-obvious feature?

    Just like I’ve been saying for years. Just like Professor Collins says. Just like Dennis said when he first wrote about the Prometheus decision. Just like Jason said long before the Supreme Court decision was decided. Everybody agrees about this simple, fundamental fact … except for you and your WonderTwin, 101E (formerly “Actual Inventerd”). Do let us know when you come to your senses.

  37. with the time-honored judicial practice of resolving important questions of law on a case-by-case basis

    The ability of the courts to define “invention” through a common law mechanism was revoked by the 1952 Act and “invention” was replaced by “non-obviousness” and 103.

    The courts – as exemplified here by the dissenter in Musgrave – could not break their patent pie addiction.

  38. LOL – talk about QQ’ing and using less then dicta from a dissent to bolster your own agenda…

    Jealousy over a man who helped write law – who intimately knew what that law meant – and then was a judge who interpreted that which he knew is so transparent in your posts.

    Yes – the 1952 Act WAS a radical shift in this area of law.

    Yes – machines that APPEAR to cover things previously covered bythe mental steps doctrine was (and obviously still is) a scary concept for certain people.

    GET OVER IT.

    Stop with the anthropomorphications – machines are not people. They do not think. They are not to be confused with mental steps.

    Stop the scare tactics. Stop the medieval patent voodoo in some insipid attempt to restore a mental steps doctrine.

    Rich was not only right – and all of this could be simply handled by simply stating that no matter how a claim reads, a person performing a claim entirely in their head cannot be found to be infringing.

  39. I really liked how Collins compared the compared the ’51 CCPA Abrams (mental steps) case to Prometheus, saying they were the exact same case, separated by 60 years, but not separated in result. Both cases involved conventional data gathering steps and a wherein clause that expressed a truism defined by nature.

    Collins noted the demise of the mental steps doctrine, ending in Musgrave, a case authored by Rich and roundly condemned by the dissent in that case. We discussed that case here before and just how bad it was.

    Rich said in Musgrave,

    “We cannot agree with the board that these claims (all the steps of which can be carried out by the disclosed apparatus) are directed to non-statutory processes merely because some or all the steps therein can also be carried out in or with the aid of the human mind or because it may be necessary for one performing the processes to think. All that is necessary, in our view, to make a sequence of operational steps a statutory “process” within 35 U.S.C. § 101 is that it be in the technological arts so as to be in consonance with the Constitutional purpose to promote the progress of “useful arts.” Const. Art. 1, sec. 8.”

    Now that is exactly the position of NWPA, and perhaps others here.

    It is good to also read what the dissent in Musgrave said about Rich,

    “I feel compelled to speak out against the majority opinion. It is my position that the doctrine promulgated by that opinion, which constitutes a major and radical shift in this area of the law, is a serious breach with the time-honored judicial practice of resolving important questions of law on a case-by-case basis.”

    Now, what have I been saying about the Rich era and about the problem of the Federal Circuit as a whole. Rich and his fellows write large on small canvsases. The act like gods who are so self important that they can simply declare what the law is like a legislature. They are not judges who decide the cases before them. They do not seek justice in the particular case. They are the opposite of that. They care more about their egos than about anything else.

    The Rich era may be the worst in judicial history in this or any other court. We really need to consider reforming the Federal Circuit in some fashion so that panels simply do not have the power to declare law like gods.

  40. … or is it that you are the nail here and are being hammered….?

    LOL, maybe someone with English as a first language can explain why Leopold loses in this discussion.

    By the way, have you seen my lovely red cape, Leopold?

  41. You are ducking the 2:53 post as to which case was referenced in the GVR.

    It’s a nice hammer and not everything is a nail – but you certainly (and rightfully) are being nailed here.

  42. lain why he or Dennis or Jason or I or Ned or LB

    Outside the little circle (for obvious reasons), Malcolm you have still failed to provide the date stamps of these so-called everyone agreeing with you and/or Collins.

    Still waiting for that, mind you.

  43. I am referring to the Office Policy to use Bilski’s MoT as the sole test for claims like Ultramercials.

    You are still mistaken, my friend. It is not Office Policy to use Bilski’s MoT as the sole test for claims like Ultramercial’s. The instruction in the USPTO memo on Integration points to guidelines that are based on the Supreme Court’s holding in Bilski. Those guidelines most definitely do not promote the MoT test as the sole test for abstractness.

    So let me get this straight – the USPTO Memo in view of Prometheus proves that “Integration Analysis” is the bomb, but it’s perfectly OK to ignore everything that the this memo says about the limited applicability of integration analysis and about the use of the Bilski guidelines to analyze claims under Section 101?

    You’ve got a really nice hammer (integration analysis), 101 IE. However, that doesn’t mean that every claim is a nail.

  44. those who present the law as it actually is

    Like Professor Collins, who you smeared as a “lawless mutineer,” but refused to explain why he or Dennis or Jason or I or Ned or LB are deserving of the epithet, at least with respect to our understanding and appreciation of the accuracy of the Collins quote upthread. Here it is again:

    By adopting and defending the bracket-and-distinguish analysis in Prometheus Laboratories —
    the functional equivalent of a point-of-
    novelty analysis — the Supreme Court has in effect, if not in express language, repudiated its earlier position in Diehr, undermined the CAFC’s position on the mental steps doctrine, and cleared the way for the doctrine’s revival.

    Lawless mutineering? Nope. Just plain old rock solid reasoning.

    But keep fighting it, anon. As I’ve said before, there’s much more of this to come. And you’re not going to like it.

  45. 101 Integration Expert: “And yes, just skip the virtually meaningless policy that says use Bilski. As we know that does not apply to us here on this blog, and has no force of law in the real world either.”

    LB: Bilski has no force of law in the real world?

    101 Integration Expert: That’s not what I said. I am referring to the Office Policy to use Bilski’s MoT as the sole test for claims like Ultramercials. This was your excuse for ducking the challenge to apply “Integration Anaysis” to Ultramercials claims, remember?

    LB: “I think you are mistaken, my friend – we’re talking about the Supreme Court’s decision in Bilski, not the CAFC’s. Bilski”

    101 Integration Expert: And the supreme Court in Bilski said the CAFC’s Bilski MoT test was not the sole test. So there is nothing to debate here. Don’t kick up dust my friend.

    LB: “The Supreme Court’s GVR in Ultramercial doesn’t even begin to suggest otherwise.”

    101 Integration Expert: The fact that the GVR was in view of Prometheus and not Bilski, suggest the analysis in Prometheus is most on point. Which of course takes us right back to where you fear to tread, “Integration Analysis”.

  46. Enjoy your echo chamber!

    Coming from someone who is the echo chamber of Malcolm, your posts have an ironic sense of humor, but you are probably not aware of that, are you Leopold?

  47. LB: I already explained my thoughts on the Ultramercial claim above, with respect to whether it is an abstract idea.

    101 Integration Expert: Yes, you have. But that was not the challenge you so boldly decided to take on is it? But as I have already made clear, you have every right to not accept the challenge, or to quit for what ever reason you want. So the nightmare is over for you.

    LB: I don’t think anon has performed any public integration analysis yet – why don’t you ask him to give it a try?

    101 Integration Expert: Anon is not the one that said “Give me a claim, 101IE, and I’ll be happy to oblige. I’ll even waive my customary fee.”

    You LB, Leopold Bloom, said that!

    Apparently you were NOT “so happy to oblige” as you once so boldly declared

    But look, it’s over.

    You chose NOT to take the challenge.

    You failed.

    You wilted.

    You took the chicken exit.

    And there is no shame in any of the above. Just stop making excuses already. And leave anon out of it. As anon is not the blame, or responsible for any of your choices.

  48. why don’t you ask him to give it a try?

    Asked and answered – why do I need to try something I agree with? I’m not the one trying to say that the official view of the USPTO on how to apply the lessons learned from Prometheus is anything different than what they are (by the way, thanks again for the first gloriouslink Malcolm).

    For some unknown reason Leopold, you think that those who want changes in law need not provide any backing, and that those who present the law as it actually is must provide some type of analysis.

    Why is that? Why are you constantly shooting arrows at the wrong targets?

  49. But apparently this is beyond your abilities, or perhaps you simply have no interest in as you say “engaging in an exchange of ideas with smart people having a variety of backgrounds, training, and perspectives”.

    Yeah, one of those is probably it. Enjoy your echo chamber!

  50. anon: “Here’s a guarantee:Not one of the little circle will take you up on the challenge.”

    As anyone can see from the exchange with LB, you are 100% right.

  51. LB: “Well sure, I could make up anything I want, based on a single use of the word “integration” in Prometheus,”

    101 Integration Expert: No, you are not free to make up anything you want. The Court in Prometheus used “integration” in a very specific legal context, and referenced it to Diehr. As we now know it was not just an inconsequential use of a word, and therefore can’t be evaluated as such.

    If you engage in “Integration Analysis” pro or con, I would fully expect you to be able to elaborate and show your reasoning and rationale, based on evidence from the Court and it’s precedents, as well as other pertinent sources.

    In other words you will be required to put your intellect on display and be judged by what you say and write.

    But apparently this is beyond your abilities, or perhaps you simply have no interest in as you say “engaging in an exchange of ideas with smart people having a variety of backgrounds, training, and perspectives” Either way you sure kicked up a lot of dust for nothing.

  52. And yes, just skip the virtually meaningless policy that says use Bilski. As we know that does not apply to us here on this blog, and has no force of law in the real world either.

    Bilski has no force of law in the real world? I think you are mistaken, my friend – we’re talking about the Supreme Court’s decision in Bilski, not the CAFC’s. Bilski and the USPTO’s guidance on applying Bilski are both much more relevant to the Ultramercial claims than the USPTO’s guidance on “integration analysis.” The Supreme Court’s GVR in Ultramercial doesn’t even begin to suggest otherwise.

  53. LB: “Whose analysis of the Ultramercial claim is truer to the USPTO’s guidance on “integration analysis,” mine or 101 IE’s?”

    Yes, it’s true, the USPTO’s guidance instructs you to not apply “Integration Analysis” to claims such as Ultramercial, and therefore you did not.

    So you win on the great debate to the answer of your question.

    But you lose by default in the challenge to apply “Integration Analysis” to Ultramercials Claim.

    In the end you have accomplished no more than when you accepted the challenge.

  54. But such is not our situation. And therefore we are not bound by Office policy. We are free on this blog to apply “Integration Analysis” to any claims we so chose, including, Ultramercials.

    Well sure, I could make up anything I want, based on a single use of the word “integration” in Prometheus, in a discussion of claim directed to the use of a mathematical equation, which the Court said was “like a law of nature.” But then you and your friend anon will accuse me of dishonesty, l^ying, misrepresenting the law, and so on. Thank you, but no.

    I already explained my thoughts on the Ultramercial claim above, with respect to whether it is an abstract idea. If I were to force that same analysis into an artificial “Integration Analysis” form, I wouldn’t expect the reasoning or the conclusion to be much different.

    I don’t expect this to satisfy you, but it’s the best I can do. I don’t think anon has performed any public integration analysis yet – why don’t you ask him to give it a try?

  55. Ned Heller: “To the extent the PTO guidelines limit the analysis to only Laws of Nature, they simply do not get it.”

    Hello Ned:

    I just could not pass by this rare opportunity to say I completely agree with you.

  56. LB: “The fact that neither you nor anon wants to answer my question does not make my question dishonest.”

    101 Integration Expert: “You are right LB. What makes your question unfair to ask, and dishonest is that it assumes that you actually applied “Integration Analysis” to Ultramercial’s claim when you in effect did not. I am the “only one” that applied Integration Analysis to Ultramercials claims in view of Prometheus, Diehr, and using the USPTO Official Guidance.

    You punted. And you have given your excuses/reasons. I accept them. But I will not tolerate you trying to imply that you participated in the full spirit of the challenge and then attempted to engage in any conversation about the results.

    Indeed we are now debating why you should or should not apply Integration Analysis as opposed to the results of having applied Integration Analysis!

    This despite you you stating, “Give me a claim, 101IE, and I’ll be happy to oblige.” And that does make your statement to appear to have been less than honest.

    If you have any interest at all in fixing that perception then go back and apply Integration Analysis to Ultramercials claim, in view of Prometheus, Diehr, and the USPTO Guidance. And yes, just skip the virtually meaningless policy that says use Bilski.

    As we know that does not apply to us here on this blog, and has no force of law in the real world either.

  57. LB: I think I see, now. “You want me to improperly apply the USPTO Official Guidance to the Ultramercial claims.

    If you were Office Personnel working on the Ultramercial claims and this was not an exercise but instead an Official Office action regarding the claims then yes, I would agree it would be improper, e.g. against policy, or the rules.

    But such is not our situation. And therefore we are not bound by Office policy. We are free on this blog to apply “Integration Analysis” to any claims we so chose, including, Ultramercials. Indeed you expressly said “Give me a claim, 101IE, and I’ll be happy to oblige.” So as you can see your policy reason for not applying Integration Analysis to Ultramercial’s claim is not a valid one.

    LB: ” I’m sorry, that just doesn’t make any sense to me. As the official guidance says, if we’re not talking about laws of nature then we can look to Bilsk.

    Well, if we are talking about what does or does make sense, or is logical, it is not logical for the USPTO to keep In re Bilski’s MoT as “the” required test for software, business methods and the like when the Supreme Court of the United States has twice now held the test was not required or sufficient.

    Indeed, that is the reason we have “Integration Analysis” so explicitly defined, because the CAFC used Bilki’s MoT in their Prometheus decision instead of Integration.

    And as I previoulsy explained the Supreme Court has now ordered the CAFC to decide Ultramercial in view of the Courts Mayo v Prometheus ruling were “integration” was explicitly relied up on.

    So, as you can see it makes perfect sense to the Supreme Court to apply Integration Analysis to Ultramercial’s claim. And perhaps complete nonsense to refuse to apply “Integration Analysis” because of Bilski, as you have now done.

  58. What is dishonest is the misrepresentation that I don’t want to answer your question.

    So you’re saying that you do want to answer my question?

    Rather, I sought clarification from you, and all I got was snarky dust-kicking.

    You didn’t understand my question? It was pretty simple. Here it is again: Whose analysis of the Ultramercial claim is truer to the USPTO’s guidance on “integration analysis,” mine or 101 IE’s?

    …all I got was snarky dust-kicking.

    Could you specifically identify that snarky dust-kicking, please?

  59. The fact that neither you nor anon wants to answer my question does not make my question dishonest.

    What is dishonest is the misrepresentation that I don’t want to answer your question.

    Rather, I sought clarification from you, and all I got was snarky dust-kicking.

    You seem to have fixated once more on the red cape of “anon said”.

  60. That’s not a fair or honest question to ask of anon, or anyone.

    That’s the second time on this page that you’ve accused me of being dishonest. And you claim that you want a real conversation?

    The fact that neither you nor anon wants to answer my question does not make my question dishonest.

  61. Here’s a guarantee:

    Not one of the little circle will take you up on the challenge.

    Here’s another guarantee:

    At least one of the little circle will continue to belittle or disparage you, even though you have attempted to engage in an exchange of ideas with “smart” people having a variety of backgrounds, training, and perspectives.

    Here’s a third guarantee:

    Arrows will continue to be slung at the wrong targets.

  62. I think I see, now. You want me to improperly apply the USPTO Official Guidance to the Ultramercial claims.

    I’m sorry, that just doesn’t make any sense to me. As the official guidance says, if we’re not talking about laws of nature then we can look toBilski if we’re worried about whether the claim is directed to an abstract idea.

    For the record, I think the Ultramercial claim 1 is OK under Bilski, although it is poorly drafted. It’s more than an abstract idea, as the claim is about manipulating and regulating access to a digital media item in a specific, practical way. While there’s nothing particularly wrong with the question of whether an abstract idea is sufficiently “integrated” into the claim, I don’t think the USPTO guidance is a very practical or helpful tool for assessing the Ultramercial claim under 101.

  63. LB: Whose analysis of the Ultramercial claim is truer to the USPTO’s guidance on “integration analysis,” mine or 101 IE’s?

    That’s not a fair or honest question to ask of anon, or anyone.

    The question assumes that you actually applied “Integration Analysis” to Ultramercial’s claim when you in effect did not. Please see my response to you up thread.

    I know you presented a technical reason/excuse of why you could not/should not do it, and that is fine, but let’s not pretend that you engaged in “Integration Analysis” as requested.

    Thank You

  64. “Care to give it a try, anon?”

    LOL – always wanting answers from someone else, eh Malcolm?”

    It is beyond laughable that MM would challenge you or anyone to apply Integration Analysis, the very challenge he as run from for an entire year.

  65. MM: In fact, anon, LB has made a good case that he is more adept at applying the Patent Office’s “Integration Analysis” than 101E

    101 Integration Expert: Except LB did not apply “Integration Analysis” to any claims. He said so, and gave his reason why. You really need to learn to read and comprehend better, especially before posting.

    MM: Read what LB wrote.

    101 Integration Expert: Apparently you need to read what LB wrote. See above.

    MM: Maybe it’s your turn or 101E’s turn to analyze some “real claims” using those guidelines.

    101 Integration Expert: I have analyzed numerous real claims in view of Prometheus, Diehr, and using the USPTO Guidelines for a year now. In fact I just did in this thread, when I applied Integration Analysis to Ultramercials claims. The very challenge you have ducked and run from for the last year. Apparently all that running has made you dizzy and delirious.

  66. Hello Leo:

    Thank you for the response. But you did not take the challenge. While you evidently read the Guidance, ( which is more than some ) you did not engage in the true spirit of the challenge. Which is to actually “apply” Integration Analysis to real claims, in this instance, Ultramercial’s.

    Instead you punted by using a loophole that you believed would allow you to get out of actually applying Integration Analysis and thereby get off on a technicality.

    It is true that the Guidance memo states it is for use by USPTO Personnel in determining subject matter eligibility of process claims involving laws of nature. And yes, it is true the memo says, “Process claims that are directed to abstract ideas, such as the claims in Bilski, should continue to be examined using the Interim Guidance for Determining Subject Matter Eligibility for Process Claim in View of Bilski v. Kappos.”

    However the memo also says:

    “The Office is issuing this guidance as an interim measure to provide instruction to examiners in technology areas impacted by the Mayo decision while [pending cases at the Federal Circuit are reheard in view of Mayo.] (Emphasis Added )

    And what case has been GVRed in view of Mayo v. Prometheus? Ultramercial. So apparently the Supreme Court of the United States believes Integration Analysis should apply not only to Laws of Nature, or as you say, claims with a “natural principle” involved, but also to business methods and software claims.

    And that is what this challenge is all about. To take a stand on the law as interpreted by the Supreme Court of the United States and put before the CAFC. Not to make excuses. I mean, how hard is it to simply take the Guidance in view of Prometheus, and Diehr and apply it to Ultramercial’s claim? I have done it. The CAFC is doing it Why can’t you?

    It is quite dubious that you would skirt this opportunity to show true legal skill and foresight to in effect hide behind a technicality. Especially when you know the only reason Integration Analysis is not being officially applied to software, computers and business method claims yet, is because the Office is waiting on the CAFC to respond to the Court.

    Sorry, LB, that excuse is not going to cut it. If you do not want to take the challenge then simply don’t do it. But don’t waste time with such a charade either. That’s no better than MM running away. And I truly want to believe you are better than that. My challenge remains open if you want to take it. But no more excuses. Just do it!

  67. It’s Opposite Day.

    Apperantly, as I give more (and accurate) pincites than anybody else, AND I routinely expose those who actually do not post with any substantive merit, your observation Ned is completely wacked.

  68. Anon, you of course will justify your position saying things like "I rely the law," and "You do not because you are a shill." But such explanations do not amount to justifying your position using case law or using proper legal reasoning. What seems characteristic conversations with you is your failure in most cases to make any attempt at substantive discussion.

  69. you have steadfastly refused to engage in ANY meaningful discussion on the VERY item you were the VERY first to pprovide a link to

    I don’t think there’s much to discuss. The PTO’s analysis is entirely consistent with the point I’ve been making for years and which is now universally agreed upon with the exception of two people (you and 101E): a claim reciting a new thought about any subject (law of nature or anything else) can not be rescued from ineligibility by appending it to an old, conventional (but patent eligible) step. Such claims are ineligible per se. Read the Collins article and you’ll begin to understand why.

    It’s at this point where you and 101E run away every time. You argue that this isn’t the case and yet neither of you will explain to me how a new mental step can be “integrated” with an old conventional step in such a way that the claim becomes eligible. At various times, both you and 101E tried to argue that Diehr recited a mental step and/or that all claims included mental steps.

    So that’s about the extent of a “meaningful discussion” with you clowns on this topic. As I’ve told you: the rest of the world has moved on. Guys like Noonan and EG may be bitter about it until the end of time but the discussion about whether novelty has a role in a 101 analysis is over. That was immediately clear to any reasonable person upon reading the Prometheus decision (and of course it was clear before that from the Fed Cir’s own precedent, with the glaring exception of its original holding in the same case).

    Read the excerpts from Collins I posted. He’s waaaaaaay smarter than you. That article is going to be cited a lot. Get used to it. Better yet, get over it.

  70. What isn’t clear at all (still) – is what you meant by the little helpful hint of step 2.

    I don’t see what’s unclear about what I said. I said that the USPTO guidance provides a hint as to what to do next with the Ultramercial claim, since the answer to the question in step 2 was “no”. In my subsequent comment, I pointed out that the guidance more specifically says that “the claim should be analyzed to determine if an abstract idea is claimed,” and points to the Bilski guidance. You keep referring to “computers” and “software inventions,” but that is your dust, not mine.

    You’ve nicely kicked up a huge pile of dust without actually saying anything.

    So you say, anon. But that should make it really simple to answer my question, anon: Whose analysis of the Ultramercial claim is truer to the USPTO’s guidance on “integration analysis,” mine or 101 IE’s?

  71. Nice dust kicking Ned.

    That won’t stop the request to move the goal posts back, though.

    As far as “what you know” and “will not explain,” these are just two more ASSumptions that you are incorrect on.

    I have not explained for the simple reason that I have not bothered reading the Collins article. Unlike certain others, I actually read material before I tell you my views on the material. That is precisely why Malcolm’s moving of the goalposts here is especially amusing, as he has ascribed not only that others have read the article but have agreed to it as well.

    I was merely pinning him down to where this fabulous information could be found. But thanks for jumping up and down and throwing in a nonsense statement.

  72. MM, most people may not have read the Collins article. The real question is whether people agree with his views.

    We know that Anon does not.

    He will not explain why, I think. That is his trademark. He prefers to personally attack people with whom he disagrees.

  73. Maybe it’s your turn or 101E’s turn to analyze some “real claims” using those guidelines. Care to give it a try, anon?

    LOL – always wanting answers from someone else, eh Malcolm?

    First – 101 IE has already many times provided the analysis (it’s archived, you know).

    Second – I am not the one saying the analysis was faulty – so why should I have do an analysis to show something that I am not saying?

    Point of fact, Malcolm, is that the ball is in your court, and you have steadfastly refused to engage in ANY meaningful discussion on the VERY item you were the VERY first to pprovide a link to.

    That’s one MASSIVE self-defeat.

    It’s your turn. It’s STILL your turn.

    Try giving answers without burning yourself too badly.

  74. LB, I think integration is the sine qua non of analysis when dealing with Laws of Nature or Mental Steps. To the extent the PTO guidelines limit the analysis to only Laws of Nature, they simply do not get it.

    Diehr did not involve a Law of Nature, but math. Still, its analysis was the pith and essence of integration.

  75. What isn’t clear at all (still) – is what you meant by the little helpful hint of step 2.

    You’ve nicely kicked up a huge pile of dust without actually saying anything.

    You do realize that Bilski does not deal with computers or software inventions, right (that is something that you should be able to see clearly, even as you tightly cloe your eyes).

    I am not asking you to “go” anywhere else (again – I refute your strawman implication). I am only asking you to clearly state something intelligible.

    You have not yet done so.

    Thanks,

  76. Okay, so you don’t agree with…

    Can we move the goal posts back now? You were attempting the obfuscation of saying how MANY people agreed with Collins…

    Can you tell me the timestamps of all these agreements?

    Or were you just 1_ying again?

  77. More blah, blah, blah.

    Not a single mention of the law in your entire rant.

    the USPTO issues this sort of j–k every week and has been doing so for a long time

    and the USPTO will continue to do so until well after I’m retired and buried. Your subjective belief as to the quality of a patent is not found in any of 35 U.S.C. 101, 102, 103. Whine and moan all you want … it isn’t changing.

  78. Try to believe this incredible p.o.s.

    Patent number: 8171086
    Filing date: Nov 22, 2006
    Issue date: May 1, 2012

    1. A method for recognizing individual achievements in an enterprise via e-mail, the method comprising:

    receiving at an e-mail server for the enterprise an e-mail from a sender who is a member of the enterprise and has previously been recognized by the enterprise with at least one award;

    generating an award link to a dynamically generated web page listing award information for the sender;

    generating a graphical icon or an icon link for a graphical icon representing at least one award received by the sender;

    inserting the award link, and the graphical icon or icon link, into the e-mail and relaying the e-mail to a recipient if the recipient is a member of an enterprise; and

    responsive to a determination that the recipient is not a member of the enterprise, relaying the e-mail to the recipient without inserting either the icon link or the graphical icon, and without inserting an award link, into the e-mail.

    Heckuva job, Kappos.

  79. QQ … let me quote to you something from 35 USC 103 … “Patentability shall not be negated by the manner in which the invention was made.”

    LOL – you owe me a coke.

    I’m was more than willing to discuss the printed matter doctrine with you – you ran away and hid.

    That’s because he was BADLY burned the last time he attempted a substantive discussion on that topic, freely admitting that he understood EXACTLY what the controlling law is on the subject (and exposing his constant blatant lies).

    If it comes to facts and actual real law, Malcolm is famous for running away. I heard that he even has a fashion line on skirts and track shoes.

  80. US7702516
    Granted April 20, 2010

    A program product operable on a computer comprising:

    a computer-usable medium, wherein the computer usable medium comprises instructions for a computer to perform steps comprising:

    instructions for receiving an indication that a payable event has occurred;

    instructions for sending a manager a message requesting a payment authorization;

    instructions for determining whether a payment has been authorized; and

    responsive to the determination that the payment has not been authorized, instructions for updating a status of a docket item associated with the message.

    Heckuva job, Kappos.

  81. Your over-the-top pronouncements don’t gain you any cachet here.

    There is absolutely nothing “over the top” about asserting that those claims are ridiculous j–k that should never have been granted. I really wish I didn’t have to break that news to you (again) but the USPTO issues this sort of j–k every week and has been doing so for a long time. There’s nothing “over the top” about recognizing that fact.

    As for “gaining cachet”, all I know is the tide is moving steadily in one direction, it has been doing so for quite a few years now, and it’s going to continue to do so for a few years more, at least. You’re p—ing in the wing. I understand why you cling to your beliefs. It’s okay. Keep doing it.

    [shrugs]

    QQ … I’ve never seen anybody whine more in my entire life.

    Not whining at all. Just responding to your whining and weird denial about the nature of these computer-implemented claims and who, in fact, they are “protecting.”

  82. LB None of your comments are making any type of case for any type of position

    In fact, anon, LB has made a good case that he is more adept at applying the Patent Office’s “Integration Analysis” than 101E. Read what LB wrote. Read the Guidelines. LB followed them.

    Maybe it’s your turn or 101E’s turn to analyze some “real claims” using those guidelines. Care to give it a try, anon?

  83. Haven’t seen anyone but you actually say they agree with Collins

    LOL. Okay, so you don’t agree with Collins but for some weird reason you can’t admit it in public. Shame, perhaps? Who knows. In any case, you don’t agree with him. That’s clear.

    So, other than you and 101E, the only two people I’m aware of who continually promote a view opposite to Collins, everyone else is a “lawless mutineer” because … you say so, without explanation. That certainly includes Jason and Dennis. They are free to pop in at any time and let us know if they disagree with the Collins quote at 10:20.

    How frustrating it must be for you to live on a planet with all these “lawless mutineers” spreading “blatant lies” about your imaginary patent world. It explains a lot.

    Your degree of self-defeat is only matched by your hyper-inflated egotistical view of your own

    *click*

    Like I said, anon: see a doctor.

  84. Real inventions, not computer-implemented j–k that someone cookie cut in half a minute. …. It’s called 103 and it could be easily used to tank nearly all of the computer-implemented horsesh-t that’s floating out there.

    QQ … let me quote to you something from 35 USC 103 … “Patentability shall not be negated by the manner in which the invention was made.”

    wherein the grandmother’s name is assigned a Johnny McFeelgood score

    Really? Do you think your strawman argument has any legs to it? Do you think I am going to be impressed by your silly nonsense? What audience are you trying to reach when you write that? Your over-the-top pronouncements don’t gain you any cachet here. You writing that confirms what most people think about you –your knowledge of the law is so meager that you are forced to make your points with silly strawman.

    It’s the fact that the inventions are j–k

    … and people are spending millions of dollars arguing over those patents – people don’t spend money on junk. The FACTS don’t support your analysis.

    the fact that you have turn patent law upside down in order to justify granting them

    Hardly. Of course, I’m sure you’ll be more than happy to provide us with a detailed explanation as to how “patent law [was turned] upside down.” First, you’ll explain the nuances patent law prior to being turned upside down, and then you’ll explain how the law was turned upside down. Yeah …. right, who am I kidding? You are all blah … blah … blah …. blah …. blah.

    I’m was more than willing to discuss the printed matter doctrine with you – you ran away and hid.
    I’ll be more than willing to discuss the difference between the 1st and 2nd paragraphs of 112 with you – you want no part it.

  85. I asked if you are saying (to paraphrase) “go to Bilski” (which doesn’t help since Bilski did not address computers or software inventions), and in the first sentence you say “No,” but in the very next sentence, you say “Yes.”

    That is incorrect. You asked: Are you saying that software inventions then leave the “Prometheus style evaluation (your step 2 helpful hint?) and are evaluated under a Bilksi style (which did not address computers and software at all)? I said “No, I’m not saying that.” That all seems pretty clear to me.

    I then explained that the PTO Guidance, as applied to the Ultramercial claim, indicates that the claim should then be analyzed to see whether it is abstract. I then indicated that the PTO Guidance points to the Bilski guidelines. Again, pretty clear.

    I’m not defending or supporting the PTO guidance for “integration analysis.” I’m not making any broad assertions about “software claims.” I’m simply applying the PTO guidance to the Ultramercial claim, as your friend 101 IE expressly asked me to do. There’s no “strawman” here – 101 IE reintroduced his “challenge to apply ‘Integration Analysis” to any real claims using the USTPO Official Guidance.” He also provided his analysis for the Ultramercial claim and expressly requested that I “rebut, debunk, tear apart [his] analysis, or agree to it in whole or part…” I told him that his analysis was inconsistent with the PTO guidance, and explained why.

    You seem to want to lure me into a completely different discussion. But I’m not going there, at least not until you and your friend 101 IE respond in kind to my good faith efforts . So tell me, please, whose analysis is truer to the “USPTO Official Guidance” – mine or 101 IE’s? Which specific parts of my analysis would you like to rebut, debunk, tear apart, or agree with in whole or part”?

  86. In your reply of 8:30 am, your second paragraph is flatly contradictory.

    I asked if you are saying (to paraphrase) “go to Bilski” (which doesn’t help since Bilski did not address computers or software inventions), and in the first sentence you say “No,” but in the very next sentence, you say “Yes.”

    Saying “No” and “Yes” is confusing.

    Your earlier comment is simply incomplete. Two different issues. Pay attention, son.

    None of your comments are making any type of case for any type of position (in relation to the subject – yes, the subject is known, and no, we don’t need a strawman of you suggesting that we are talking about something else).

    Maybe you should start over from scratch, sit down for awhile, think about what you are trying to say, and then say it.

    Thanks.

  87. Are you saying that software inventions then leave the “Prometheus style evaluation (your step 2 helpful hint?) and are evaluated under a Bilksi style (which did not address computers and software at all)?

    No, I’m not saying that. I’m saying that the Ultramercial claim doesn’t make it to step 3 of the Integration Analysis provided in the USPTO guidelines. Step 2 does include a helpful hint as to what to do next, though. More specifically, it says that “the claim should be analyzed to determine if an abstract idea is claimed,” and points to the Bilski guidance.

    I’m not sure what is so confusing or incomplete about my earlier comment. I thought we were talking about “Integration Analysis” as defined by the USPTO guidance, and as applied to the Ultramercial claim. Would you like to discuss something else?

  88. Step 2 does include a helpful hint as to what to do next, though.

    I am not seeing your logic or the point you are trying to make.

    Are you saying that software inventions then leave the “Prometheus style evaluation (your step 2 helpful hint?) and are evaluated under a Bilksi style (which did not address computers and software at all)?

    How would that be helpful?

    Seriously, I am not trying to put any words in your moouth – I just find your counter to 101 IE to be so incomplete as to leave me wondering what you are trying to say.

  89. are you saying that since there is no “natural principle” involved, that these types of inventions (software inventions) are CATEGORICALLY patent eligible?

    No, I’m not saying anything remotely like that. I’m saying that the Ultramercial claim doesn’t make it to step 3 of the Integration Analysis provided in the USPTO guidelines. Step 2 does include a helpful hint as to what to do next, though.

    Do you have any particular concern with or question about my analysis? Would you like to weigh in on whether mine or IE101’s is truer to the USPTO guidelines?

  90. Just for clarification Leopold, are you saying that since there is no “natural principle” involved, that these types of inventions (software inventions) are CATEGORICALLY patent eligible?

    That’s what it appears to be what you are saying in your logic admonishing 101 IE to follow the USPTO guidelines.

    Is that what you are saying?

  91. That’s impressive, IE, and it’s a real joy to see it yet again. But it’s not consistent with the “USPTO Official Guidance.” The USPTO memo you cite clearly and repeatedly says that it is for “examination of process claims in a law of nature, a natural phenomenon, or naturally occurring relation or correlation (collectively referred to as a natural principle in the guidance) is a limiting element or step.” That’s not the case with the Ultramercial claim. There is no “natural principle” involved. As a result, the “Integration Analysis” is simple, but not very useful:

    1. Is the claimed invention directed to a process? Yes.

    2. Is a natural principle a limiting feature of the claim? No. Per the guidance memo, “this analysis is complete, and the claim should be analyzed to determine if an abstract idea is claimed (see the 2010 Interim Bilski Guidance).”

    As a result, we don’t even get to question 3, which is the only one to deal with “integration.”

    If you’re going to rely so heavily on the USPTO’s guidance in your arguments, shouldn’t you actually follow it?

  92. Ned, non sequitur. So, now a proof of infringement and an injunction are part of 101?

    Answer the questions that I put and stop running and collecting new arguments.

  93. Informatics Outsourcing is an Offshore Intellectual Property Services company. They are providing Intellectual Property services for Bio Technology, Biochemistry, Drug Discovery, Chemistry, etc

  94. MM:”….with respect to Prometheus we can all agree that you are alone on a tiny island with your bff 101E.”

    101 Integration Expert: Not by alone at all actually. After a year we have the Official Office Guidance on Integration. That represents the entire PTO!

    And of course we have the 9 Supreme Court Justices that signed on to “integration.”

    We have Mr. Kelly, Attorney for the US Government in Alice Oral arguments stating: “…certainly if you have an algorithm if you have an idea that you when implement together with a computer that makes an “inseparable whole” that can very easily make something eligible. When answering the eligibility question focus is:

    1. The claim.

    2. What’s claimed.

    3. And how the claimed parts work together as a whole.”

    Oh, and we even have an article from Professor Dennis Crouch agreeing with Diehr, and Integration which is opposite of your dissection, and the Collin’s article too, by the way.

    See Professor Crouch below:

    Patents Encompassing a Human Organism
    by Dennis Crouch
    “Ex Parte Kamrava (PTAB 2012), APN 10/080,177  Download 10080177
    Most Section 101 subject matter eligibility problems can be cured by integrating the ineligible subject matter with subject matter that is patent eligible. This works because the fact that an invention encompassing some ineligible material does not preclude patentability – as long as the invention also includes sufficient eligible subject matter. Following this theory, the Supreme Court in Diamond v. Diehr, 450 U.S. 175 (1981), agreed that a practical use of a mathematical formula was patentable even though the formula on its own would not have been subject matter eligible. ”

    So to sum up, after one year we have;

    The entire USPTO.

    The United States Government.

    The Supreme Court of the United States.

    Plus the Owner of the leading Patent Blog in the world all on our side!

    WOW!!!

    Yup MM our island may look tiny to you but we sure have some smart and powerful people on it.

    Now MM, who do you have? Just you and Ned Heller, a paid sh ill.

    Think I will go to the beach ;)

  95. MM: I don’t recall anything in the 101 Office guidelines that is “inconsistent” with “my view” of Prometheus.

    101 Integration Expert: Yes “integration” as used in the Office Guidance is in contrast to your view of Prometheus standing for dissection. Your view is to dissect the claims and ignore ineligible elements in the concluding analysis. However that view would invalidate claims like Diehr. The Supreme Court disagreed with you in Prometheus. Diehrs claims are valid. And apparently so has the USPTO, as the concept of integration, and the word itself, is used in four distinct sub sections of USPTO Guidelines for 101 statutory analysis. See the guidelines stating:

    1. To show “integration”, the additional elements or steps must relate to the natural principle in a significant way to impose a meaningful limit on the claim scope. The analysis turns on whether the claim has added enough to show a practical application.

    2. Along with “integration”, the additional steps must be sufficient to ensure that the claim amounts to significantly more than the natural principle itself by including one or more elements or steps that limit the scope of the claim and do more than generally describe the natural principle with generalized instructions to “apply it.”

    3. A machine or transformation that is merely nominally, insignificantly, or tangentially related to the steps or elements, e.g., data gathering or data storage, would not show integration.

    This claim (referring to Diehr) would pass Inquiries 1-3 in the above analysis as it is a process that includes the Arrhenius equation as a limitation, with additional steps that “integrate” the Arrhenius equation into the process and are sufficient to narrow the scope of the claim so that others are not foreclosed from using the Arrhenius equation in different applications.
    ( Emphasis added. )
    ( link to uspto.gov )

  96. Anon: And pray tell how 101 IE’s analysis is “intellectually bankrupt,” when it (especially from a non-lawyer) is the most on point analysis provided?

    Thank you anon. And I see LB ducked this question. I bet he will duck performing “Integration Analysis” as well.

    The Anti’s are some of the most intellectually dishonest and ethically bankrupt people I have ever come across!

  97. going to explain to us why Dennis and Jason (or anyone else) who agrees with the Collins quote at 10:20

    Haven’t seen anyone but you actually say they agree with Collins.

    What do you call it when you set up a position no one else is talking about to knock it down…?

    You’ve lost your voice

    LOL – first you have people complaining that I am on the boards too much, and then too little.

    Second, you need to pay attention to content Malcolm, as that is the true driver of both my quality – and your lack of it.

    Big Smear? Truth is no smear.

    Sorry. Try again.

    Third,

    You of all people have no right to talk about disappearing voices – you are famous for disappearing when answers need to be forthcoming from you. And on the (very) rare occasions you venture forth into substantive material, you gloriously self-defeat and make admissions that doom your agenda (you know, things like “configured to” is structure and the actaul controlling state of law in regards to the exceptions to the printed matter doctrine).

    Your degree of self-defeat is only matched by your hyper-inflated egotistical view of your own abilities in establishing or defending any legal position. (funny, most people consider your vacuous postings nothing more than the insults, spun facts, mischaracterized law and others’ postings for what they are: C_rrp).

  98. I have the government, the AMA, Dr Noonan and others recently agreeing with me.

    You’re so great, anon! It’s especially awesome that you can’t tell us what exactly they all agree with you about or why anyone should care whether they agree with you or not. What matter is whether the Supreme Court agrees with you, anon, and with respect to Prometheus we can all agree that you are alone on a tiny island with your bff 101E.

    So …when are you going to explain to us why Dennis and Jason (or anyone else) who agrees with the Collins quote at 10:20 is a “lawless mutineer”? Or do you also agree with Collins? What’s the matter, anon? You talked a big smear less than 24 hours ago but now it seems you’ve lost your “voice.”

  99. Why (exactly) was that sentence inserted? (Hint: you don’t need a flash of genius to figure it out).

    Right. You can’t use a “flash of genius” test to deny patentability to an invention.

    But you can certainly deny a patent when the only difference between the invention and the prior art is something that a mediocre high school could come up in ten seconds if asked to. Or is the ordinary level of skill in the computer-implement g–bage arts even lower than that?

    Computers can receive, store, “process” and transmit all kinds of information. Grade schoolers know this. There’s nothing patent-worthy about calling information something specific or “processing it” in some hand-wavey fashion exactly like a million other pieces of information have been processed before. That’s just old or abstract j—k, or both. And that’s what those claims I posted are. J–k. It’s what nearly all computer-implemented g—bage is.

    “Hey teacher, I made a spread sheet of my bug collection.”

    “Oh, that’s so cute, little Davey Kappos! Here’s a gold star.”

    Heckuva job.

  100. Don’t need EG – I have the government, the AMA, Dr Noonan and others recently agreeing with me. Who knew all these people had English as a second language?

    Yes it’s archived.

    Do you realize how much venom you carry around with you? I’ve suggested before – get into a field you can believe in.

  101. Below are the appropriate links:

    anon: “101 IE has been very open to anyone to apply the (Malcolm-first-linked) official USPTO post-Prometheus guidelines to claims in order to do the very thing you hint at: “to engage in an exchange of ideas with smart people having a variety of backgrounds, training, and perspectives”.

    This is exactly right anon. And as a result of you posting this friendly reminder MM has gone into full melt down mode and spewing every insult he think of.

    Of course MM can always click on these links and take the challenge.

    Ultramercial Claim: link to scholar.google.com

    USPTO Official Guidance: link to uspto.gov

    My Integration Analysis is in this thread Feb 27, 2013 at 05:40 PM

  102. MM:” If so, please explain why. I suggest reading Collins’ article first.”

    Oh? Did Collins reconcile Prometheus “Integration” with the Courts precedents?

    Or did Collins just skip over that part. You know like you did and have run from it for an entire year?

    Well regardless of what Collins has or has not done here is your chance to redeem your self.

    Apply the USPTO Official Guidance on “Integration” as referenced in the Prometheus case to Ultramercials claim 1.

    Below are the appropriate links:

    Ultramercial Claim: link to scholar.google.com

    USPTO Official Guidance: link to uspto.gov

    My Integration Analysis is in this thread Feb 27, 2013 at 05:40 PM

    :: Sound of cold sweat dripping::

  103. MM: “Right. And then 101E-Man spread his magic cape and flew back to the Justice League of America’s secret headquarters where he received instructions for his next totally awesome mission.”

    Actually all I did was post these links and challenge you to apply “integration Analysis to Ultramercials claims using the USPTO Official Guidance. And for this you have run away and hurled insult after insult for an entire year!!!

    Why do you react/behave this way?

    Well, if you want to redeem yourself now is the chance.

    Go ahead and take the challenge.

    Below are the appropriate links:

    Ultramercial Claim: link to scholar.google.com

    USPTO Official Guidance: link to uspto.gov

    My Integration Analysis is in this thread Feb 27, 2013 at 05:40 PM

  104. MM: apply the guidance to any real claims

    “Prometheus’ claims were very real and not particularly unusual and I explained how and why they (and all claims in the form [oldstep]+[newthought])”

    The Official Guidance goes in depth about “integration” as held in Prometheus. Not about [oldstep]+[newthought]).

    At best [oldstep]+[newthought]) appears to be words in brackets with an addition sign in between. I don’t think anyone even knows what that is supposed to be.

    The Supreme Court in Prometheus explicitly used “integration”.
    That’s why you were asked to read the Official Guidance on integration and apply it to Ultramercials claims. Because those claims are actual claims and the CAFC has been order to analyze them in view of Prometheus.

    Yet you have ignored “integration”.

    You have run away from “Integration”.

    Why MM?

    Why have you run for an entire year?????

    What do you fear??????

    Even LB has said he would now take the challenge.

    Why don’t you set an example and go before he does?????

    Below are the appropriate links:

    Ultramercial Claim: link to scholar.google.com

    USPTO Official Guidance: link to uspto.gov

    My Integration Analysis is in this thread Feb 27, 2013 at 05:40 PM

    :: Sound of little feet running down the sidewalk::

  105. In fact, there is such a test. It’s called 103

    What is that second sentence of the first paragraph of 103?

    Why (exactly) was that sentence inserted? (Hint: you don’t need a flash of genius to figure it out).

  106. MM:

    Everyone knows you are the best at name calling and dust kicking. Now how about you prove your legal analysis skills, (and perhaps whatever your latest theory is), by responding to my year old challenge. I originally asked you to apply the USPTO’ Official Guidance on “integration” as referenced in

    Prometheus to Ultramerials claim 1.

    Stop running and show some intellectual courage and veracity and take the challenge. I even went first.

    Below are the appropriate links:

    Ultramercial Claim: link to scholar.google.com

    USPTO Official Guidance: link to uspto.gov

    My Integration Analysis is in this thread Feb 27, 2013 at 05:40 PM

  107. LB: “Give me a claim, 101IE, and I’ll be happy to oblige.”

    101 Integration Expert: Sure, LB, I will do even better than that. Here is my original “Integration” Analysis for Ultramercial (with the claim), that MM, Ned Heller, 6, and all the anti patent commenters have ducked, dodged, and run away from for the last year. You are welcome to rebut, debunk, tear apart my analysis, or agree to it in whole or part, or as is tradition around here, simply run away. I await your choice.

    101 Integration Expert’s Integration Analysis:
    In Ultramercial the court and the inventors have agreed the concept is:“Using advertising as currency.”

    Claiming a concept without applying it is considered an abstract idea. Abstract ideas, like a law of nature, or natural phenomena, are not patentable subject matter. Therefore the question before the CAFC is as follows:

    Is Ultramercial’s claims an abstract idea in view of Prometheus?

    The answer is clearly no. The claims in Ultramercial are an inventive application of the concept. We know this is correct because of the way the steps of the process “integrate” the concept into the process as a whole. See Prometheus citing Diehr:

    “ 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. 187. These additional steps transformed the process into an inventive application of the formula.” (Syllabus Prometheus V Mayo 566 U. S. ____ (2012)

    If Ultramercial’s claims were a mere application of a concept without integration they could read as follows:

    a method for using advertising as currency.


    1. offering a service

    2. accepting advertising as payment

    And if the specification to the above claims offered no further definition of the terms then the CAFC could rightfully rule Ultramercial’s claims to be an abstract idea based on the “integration analysis” used in Prometheus and referenced to Diehr. The claims would in effect be no more than simply stating the concept and saying apply it. See Prometheus as Authority (Still, as the Court has also made clear, to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.” See, e.g., Benson, supra, at 71–72.) (( Opinion of the Court 3, Prometheus V Mayo 566 U. S. ____ (2012) )

    Ultramercial’s claims integrate the concept with 11 steps that when viewed as a whole and as an ordered combination offer more than the parts do separately. See the Court explaining why the Prometheus claims as a whole are not statutory subject matter:

    “Finally, considering the three steps as an ordered combination adds nothing to the laws of nature that is not already present when the steps are considered separately.” ( Opinion of the Court 11, Prometheus V Mayo 566 U. S. ____ (2012) )

    Ultramercial’s steps can’t be completed in the mind and are not mental processes. Nor can they be completed with mere verbal instruction or with pencil and paper. The concept of the claim is still free to use in all fields and technological environments. Therefore the invention does not violate the pre-emption analysis from Benson. That the claims may be beneficial to conducting business on the internet is not a judicially created exception to statutory subject matter. Also that the claims do not provide detailed workings of conventional transformations, apparatus, and machines are also no barrier to statutory subject matter. Therefore the CAFC and The USSC should hold Ultramercials claims as statutory subject matter Therefore the CAFC and The USSC should hold Ultramercial’s claims as statutory subject matter because the steps of the process integrate the concept into the process as a whole. The 11 steps as a whole transform the process into an inventive application of the concept.

    Claim 1 of the ‘545 patent reads:

    link to scholar.google.com

  108. 101 Integration Expert: I did not insult you in either thread you linked to

    LB: Actually, you said that everyone who disagreed with you was intellectually dishonest.

    101 Integration Expert: That is not an actual quote of “me insulting you” in either thread. It’s not even a factual quote of something I said.

    LB: You said that during a discussion with someone who disagreed with you.

    101 Integration Expert: Again that is not an actual quote of “me insulting you” in either thread. My advice to you is to apologize for your mistake, or at the least stop repeating it now and move on to arguments think you can win.

    LB: I don’t think that’s my problem.

    101 Integration Expert: It’s your responsibility to be accountable for your words and actions. You made a back handed insult. That was your intent, other wise you had no reason to inject the negative connotation in your remarks. Furthermore I was not involved n this thread. You purposely invoked my screen name in a negative manner with a slur designed to offend and created this very type of exchange. The lesson for you to learn here is that if you decide to play in the mud with MM, then you will be called dirty. If you want to start again clean I will give you that chance coming up in a minute.

  109. JS: If it was litigated all the way up to the Federal Circuit, then it had value.

    Ah yes, and likewise there must have been merit in all those awesome laws for discriminating against black people. Because lawyers fought over it all the way to the Supreme Court. That’s a really compelling argument, JS. Keep bringing it up. Also don’t forget to bring up the one about how if people pay for something, then it must be patent-worthy. That’s a fun one, too.

    That is elitism – plain and simple. Everybody else’s inventions don’t measure up to what you see so you think they are all cr-p.

    Uh … no. Not “everybody else’s” inventions. Just computer-implemented g–rbage that differs from the prior art only in the recitation of different information content that is received, stored, displayed, or “processed” according to some abstract, arbitrary b.s. (“wherein the grandmother’s name is assigned a Johnny McFeelgood score”).

    Since you are on the biotech side, you see inventions that come from years of research

    Right. Real inventions, not computer-implemented j–k that someone cookie cut in half a minute.

    it drives you crazy when somebody gets a patent for something that could have conceived of in a day.

    One day? More like one minute. And it’s not the time for conception that “drives me crazy” (more like “annoyed” — see your sockpuppeteer pals “anon” and 101E for “the crazy”). It’s the fact that the inventions are j–k, the fact that you have turn patent law upside down in order to justify granting them, and the fact that the reams of j–k being filed and asserted negatively impact everyone except the Great Patent Casino speculators and the grifters, such as yourself.

    the patent office doesn’t have a “ease of conception” test either.

    In fact, there is such a test. It’s called 103 and it could be easily used to tank nearly all of the computer-implemented horsesh-t that’s floating out there.

  110. Here’s another winner, a “method for displaying information from a database.” It surely is a new type of cable or device that allows information to be transferred from a computer to a monitor at rates much faster than previously obtained? Right?

    Wrong.

    Patent number: 8224866
    Filing date: Apr 19, 2011
    Issue date: Jul 17, 2012

    1. A method for displaying information from a database, said method comprising:

    accessing a data repository via a data connection;

    displaying data from said data repository with an interface, the data including a list of inventor ideas;

    allowing said displayed data to be characterized as scheduling and statistical data;

    receiving a strength parameter and a readiness parameter from at least one inventor, the strength parameter representing an inventor-perceived value to a company of the inventor of at least one idea of the inventor ideas, and the readiness parameter indicating how close the idea is to final form and submission;

    moving the idea within the list with a processor, the idea moved within the list based on the strength parameter and the readiness parameter; and

    wherein said displaying of the data includes displaying invention disclosures that are before invention evaluation boards on a given month, year, and date, the invention evaluation boards including reviewers of invention disclosures.

    Total pile of j-nk. Heckuva job, Kappos.

  111. the “exceptions” to the printed matter doctrine has completely eaten up the doctrine

    No. The instructions in Ngai were not functional – they did nothing to the kit to which they accompanied.

    He does an excellent job of describing the history and original purpose of both the printed matter doctrine (something that the patent t–b-gger types never want to discuss or simply do not understand

    Let’s have a discussion of the printed matter doctrine. I’m game. I’ve read the cases. Do you know the history?

    That this sort of cr-p is filed on, granted and then litigated all the way up to the Federal Circuit
    Cry us all a river.

    How is progress in any useful art promoted by granting a patent like that?
    If it was litigated all the way up to the Federal Circuit, then it had value. Since it had value, someone thought it was important. If it was important in the art, then the art of avionics was advanced. Simple logic.
    Regardless, what you seem to ignore (willfully or not) is that progress is promoted by the patent system, as a whole. Novel and nonobvious innovations can be protected regardless of their individual worth. Requiring a “value test” on a patentable invention is both highly subjective and unnecessary. The notion of “due process” is that everybody gets treated the same under the law. It doesn’t matter whether the invention was conceived in an afternoon in some guy’s garage or was the result of a 5 year search $100M search for biologically active compound that cures prostate cancer.
    Since you are on the biotech side, you see inventions that come from years of research and it drives you crazy when somebody gets a patent for something that could have conceived of in a day. That is elitism – plain and simple. Everybody else’s inventions don’t measure up to what you see so you think they are all cr-p.

    A mediocre high schooler could cookie cut different “data” into that claim and obtain a patent in a few months
    Go for it. BTW – the patent office doesn’t have a “ease of conception” test either.

  112. I did not insult you in either thread you linked to

    Actually, you said that everyone who disagreed with you was intellectually dishonest. You said that during a discussion with someone who disagreed with you.

    Oh wait? Maybe you did insult me ???

    You might want to go read that comment again. I’m pretty sure I said that I assumed that “you were here to engage in an exchange of ideas with smart people having a variety of backgrounds, training, and perspectives.” For discussion’s sake, I threw out a possible alternative. For whatever reason, you seem to have identified with that alternative. I don’t think that’s my problem.

    In effect that makes you no better than MM, running away from the challenge to apply “Integration Analysis” to any real claims using the USTPO Official Guidance, while spewing insults in the wind as he runs.

    Give me a claim, 101IE, and I’ll be happy to oblige. I’ll even waive my customary fee.

  113. you defended MM’s mental steps dissection theory in its then current state, and was soundly defeated on the facts and law

    Right. And then 101E-Man spread his magic cape and flew back to the Justice League of America’s secret headquarters where he received instructions for his next totally awesome mission.

    How could you have forgotten this, LB?

    Tune in next time when the Wonder Twins hide behind a bush and laugh as Professor Collins puts out a burning bag of dog p–p they set on his porch.

  114. LB: “Actually, I have discussed Prometheus and “integration analysis” with you at some length, and only quit well after you began insulting me.”

    Actually that never happened . Let’s take the facts one step at a time shall we?

    1. In the first link it shows you never answered my question at Feb 27, 2013 at 12:52 PM above, and “elaborated” on the answer, as I so factually stated above.

    ( On a side note, there wasn’t even a honest discussion on “integration” in general. Instead in that thread you linked to, you defended MM’s mental steps dissection theory in its then current state, and was soundly defeated on the facts and law.)

    2. In the second link you merely stated you had previously answered the question in the monosyllabic state and with no elaboration as I said above.

    3. I did not insult you in either thread you linked to

    4. I have not called you an orangutan in this thread no more than you have called me

    a) insular/ignorant to other views

    b) simple table pounder

    c) mouth self-serving,

    d) intellectually bankrupt analyst

    Oh wait? Maybe you did insult me ???

    Hmm… well it does not matter because the FACT still stands you have failed to answer and “elaborate” on the question I asked at Feb 27, 2013 at 12:52 PM.

    In effect that makes you no better than MM, running away from the challenge to apply “Integration Analysis” to any real claims using the USTPO Official Guidance, while spewing insults in the wind as he runs.

  115. 101E: Excuse me MM, but you were the first person on the blog to post a link to the USPTO Official Guidance, as evidence of the Office supporting your view of Prometheus

    I don’t recall anything in the 101 Office guidelines that is “inconsistent” with “my view” of Prometheus (note that “my view” is shared by nearly everyone except, evidently, you and your BFF anon).

    This has all been explained to you before. Your self-proclaimed “expertise” on this issue, of course, is a longstanding joke, particularly after Prometheus reached the opposite result that you sought, for reasons that are irreconciliable with your incessant w-nking regarding Diehr. Professor Collins explains this quite clearly (and not for the first time). As I recall, he also had a decent grasp on the issues before the Prometheus decision, in stark contrast to you and your BFF, “anon”.

    apply the guidance to any real claims

    Prometheus’ claims were very real and not particularly unusual and I explained how and why they (and all claims in the form [oldstep]+[newthought]) were ineligible before the Supreme Court wrote it’s 9-0 decision reaching the same conclusion and eviscerating your Dierhbot absolutist dreamworld in the process, exactly as I predicted. Read the Collins article. There’s very little, if anything, controversial in that article.

    All that’s left a year later is just you and anon, two little certifiable n-tcases alone on your sad little island of denial, tr-lling a patent blog, flinging insults, and d-ssembling 24 hours a day, all the while pretending to be “voices of reason”. Maybe good ol’ Eric G will drive by and defend you today. Would you like that? Give him a call. I bet you have his number.

  116. MM: “But at the same time you sing the praises of our resident stage-flooding goon and his endless re-posting of the PTO’s “post-Prometheus guidelines” as if it’s the greatest thing ever (what was your exact quote? oh yes: “the most on point analysis provided”).”

    Excuse me MM, but you were the first person on the blog to post a link to the USPTO Official Guidance, as evidence of the Office supporting your view of Prometheus standing for dissection, to strip away and ignore mental steps, and old steps in the concluding analysis of claims.

    And of course as you know I had proposed before anyone else, that what Prometheus stood for was “Integration” and that your theory could not be correct because “integration” is the antithesis of dissection ( strip away and ignore). Therefore the Court in Prometheus could not have overturned Diehr’s prohibition on dissection, and the Courts mandate to consider claims as a whole in the concluding analysis, was still good law.

    So when I saw you post the link and crow, “9-0 baby” and Ned proclaim you were brilliant and right all along, well I naturally assumed the PTO was supporting your theory.

    Then I read the Official Guidance myself and to my surprise and your chagrin, the USPTO was supporting “Integration Analysis” and my view of Prometheus and made no mention of your various mental step tests and dissection theories.

    Since then I have repeatedly invited you to apply the guidance to any real claims, and reconcile your theories with the Courts use of Integration and it’s precedents.

    A challenge you have ducked, dodged, and run away from, like an intellectual coward while insulting and attacking everyone with a different opinion than your own. Or as our good friend LB would say ” pounding the table and repeatedly mouth self-serving, intellectually bankrupt “proposals.”

    BTW, here is the link. You can redeem yourself now and apply the Courts “Integration” to any real claims using the Official USPTO Guidance.

    link to uspto.gov

    :: Usual Silence::

  117. Oh wait…. That NEVER happened.

    Actually, I have discussed Prometheus and “integration analysis” with you at some length, and only quit well after you began insulting me. At least one example may be found here: link to patentlyo.com . I also pointed that out to you the last time you raised this question. That was at this page: link to patentlyo.com

    And yet this time you want to start a conversation by calling me an orangutan? Classy.

  118. Leopold Bloom wrote: “Well, because I assumed you were here to engage in an exchange of ideas with smart people having a variety of backgrounds, training, and perspectives,”….

    Hello Leo:

    Do you mean like when I invited you to answer the following question and elaborate on your answer so that we could engage in an exchange of ideas and perspectives on “integration analysis” and it’s application to software?

    And of course you did answer the question and engage in a conversation and exchange of ideas that demonstrated your background, training, and basis for your perspective opinion?

    Oh wait…. That NEVER happened.

    You simply stated a monosyllabic answer, like an orangutan trained in sign language could do, and when asked to elaborate, you ran away in fear like an intellectual coward!

    So here is a chance to now to answer and “elaborate” and redeem yourself. Go ahead prove you are not a self-serving, intellectually bankrupt, hypocrite, who is afraid to engage in an exchange of ideas with smart people having a variety of backgrounds, training, and perspectives.

    ” Since the Prometheus Court in effect told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, “integrated” into a process transform the process into an inventive application of the software?”

    Yes, or No, and EXPLAIN your answer and be prepared to “engage”.

    :: Crickets Chirping::

  119. JS: Also, the difference in content of a data structure results in a functional difference, which also cancels out the printed matter doctrine.

    More accurately, if what you say is true, then the “exceptions” to the printed matter doctrine has completely eaten up the doctrine. Read the Collins article. He does an excellent job of describing the history and original purpose of both the printed matter doctrine (something that the patent t–b-gger types never want to discuss or simply do not understand) and the mental steps doctrine.

    6,990,319 is an example of the type of g-r-bage I’m talking about. It’s not a B-claim but rather a process claim that was allowed solely because it recited “new” content. Corresponding B-claims can be easily imagined, of course.

    1. A method of providing data from an aircraft comprising:

    continuously monitoring the flight performance of the aircraft during an entire flight of the aircraft from at least take-off to landing; generating aircraft data representative of the continuously monitored aircraft flight performance during an entire flight of the aircraft from at least take-off to landing; accumulating and continuously storing the generated aircraft data within a ground data link unit positioned within the aircraft during the entire flight of the aircraft from at least take-off to landing to create an archival store of such aircraft data; after the aircraft completes its flight and lands at an airport, transmitting the accumulated, stored generated aircraft data from the ground data link unit over a wideband spread spectrum communications signal to a ground based spread spectrum receiver; and demodulating the received spread spectrum communications signal to obtain the accumulated, aircraft data representative of the flight performance of the aircraft during an entire flight of the aircraft from take-off to landing.

    That this sort of cr-p is filed on, granted and then litigated all the way up to the Federal Circuit (Harris Corp v. FedEx, with a ludicrous dissent by Judge Wallach) is nothing short of insanity. How is progress in any useful art promoted by granting a patent like that? A mediocre high schooler could cookie cut different “data” into that claim and obtain a patent in a few months, if he had the money to pay for the accelerated exam. Collect, store, transmit, receive. “Oh, but this is data relating to a drive in a robot car by a sixteen year old with his dad’s credit card! That’s a totally different ‘function’!”

    The house of cards that has allowed this sort of j–k to be issued and asserted is going to come crashing down. The stage is set.

  120. The Deener process produced a new physical result using physical steps. The proof of infringement was easily made and enjoined.

    Let’s talk Prometheus.

    A clinic has been performing blood tests for 50 years. They report, on request, the level of a certain metabolite in their reports.

    You patent the improved correlation as in Prometheus.

    You publish your results.

    Is the clinic now infringing? How do you prove it?

    Moreover, fashion the injunction against the clinic.

  121. Ned, in Deener there was a method of processing grains that our bodies could carry out. Think that through.

    Oh wait. You can’t do that. Not on policy hot list. Does not compute. The giant computer brain that probably parses these posts for you said spit out: “ignore–not relevant to policy goals of paid posters.”

  122. Your “I don’t understand you” shtick

    “HUMPTY HULK DOES NOT EXPLAIN INSULTS!!! JUST ACCEPT THEM AND BOW DOWN!!!!”

    Seriously, anon. See a doctor.

  123. anon: Whether or not I gave Ned a bunch of s–t on a completely unrelated topic has nothing (NOTHING) to do with the present discussion.

    Wrong. It has everything do with the fact that you’re a hypocrite who will say literally anything when it serves your goal of insulting someone, even if it completely contradicts something you said it earlier. You were pitching s–t to Ned because he referred to PTO practice in a discussion. You mocked him for not being able to understand the difference between the MPEP and “actual law”. But at the same time you sing the praises of our resident stage-flooding goon and his endless re-posting of the PTO’s “post-Prometheus guidelines” as if it’s the greatest thing ever (what was your exact quote? oh yes: “the most on point analysis provided”).

    Anyway, nothing new here. Just a friendly reminder that you have some deep psycho-social issues. Consider taking some time off to work them out, as pretty much every commenter here except your BFF 101E has suggested.

  124. this “scholarship” is suspect to begin with (especially on the patent side) and there is little doubt that this is because of policy-agenda pushing with little to no actual basis in law and fact.

    Fascinating. Instead of your usual inuendo and insults anon (Dennis must be so proud of you!!!), maybe you can tell us (1) what policy-agenda is Collins “pushing” and (2) what factual errors he has made and (3) where has he ignored “actual” law?

    It seems to me that you’re the one making statements with no “actual basis in law or fact”. You just smeared a vast number of practitioners, academics and judges as “lawless mutineers”.

    I’d like to see you try to back up your smears, anon. Why is someone who agrees with the Collins quote at 10:20 a “lawless mutineer”? Or do you also agree with Collins?

  125. Nice non-sequitur Malcolm.

    Whether or not you gave Ned a bunch of s–t on a completely unrelated topic has nothing (NOTHING) to do with the present discussion.

    Try to stay on point son.

  126. You rather miss the point Malcolm, that this “scholarship” is suspect to begin with (especially on the patent side) and there is little doubt that this is because of policy-agenda pushing with little to no actual basis in law and fact.

    You wishing to associate with such is neither surprising, nor compelling.

    If you think you have made a point with your posts, you may have – just not the point you think you have (as usual).

    But your right to post your opinion (no matter how ill-begotten it is), is fully affirmed by me.

    Just try to stop with the poor quality rhetorical tools. They only harm your efforts.

  127. 101 IE has been very open to anyone to apply the (Malcolm-first-linked) official USPTO post-Prometheus guidelines

    Funny thing, hypocrite, but less than a week ago I recall you giving Ned a bunch of s–t because he “confused” the MPEP with “actual law.”

  128. By adopting and defending the bracket-and-distinguish analysis in Prometheus Laboratories —
    the functional equivalent of a point-of-
    novelty analysis — the Supreme Court has in effect, if not in express language, repudiated its earlier position in Diehr, undermined the CAFC’s position on the mental steps doctrine, and cleared the way for the doctrine’s revival.

    Do you disagree, anon? If so, please explain why. I suggest reading Collins’ article first.

    “you and I, and of course, Richard Stern”

    The company you keep – lawless mutineers all.

    Pretty sure that Dennis and Jason and just about every other honest academic with an ounce of integrity will take zero issue with the quote from Collins that I reproduced in this comment. That’s a lot of “lawless mutineers”. Either that or you simply do not know how to read and comprehend relatively simple Supreme Court cases, even after they are explained to you hundreds of times. I wonder which is more likely.

  129. the actual legal point you and Malcolm boffed.

    Please state clearly the correct “legal point” that I “boffed” and please reproduce the entire comment in which I allegedly “boffed” that legal point.

    Your sociopathological habit of engaging in inuendo and inarticulate insults has long ago eclipsed any substance that you might ever have brought here. Maybe you can redeem yourself now with an apology but I suspect you will simply keep digging.

  130. PM: There is a simpler explanation for the general decline in judical citations of academic patent law articles. It is the decline in the percentage of useful articles with thorough and objective case law analysis done with real understanding

    How is that explanation “simpler” than the explanations proposed by the authors? Do you have any evidence for this proposition? One would expect, then, that the percentage of “useful articles with thorough and objective case law analysis” is higher in copyright and trademark law? Any evidence for that?

  131. Don’t tell me that you are attempting a disingenuous “crybaby’s veto” like MaxDrei, who really never intended to engage in an actual conversation.

    OK.

  132. Being open-minded does not mean being so open as to have your brains fall out and let anything be scooped up and thrown in its place.

    101 IE has been very open to anyone to apply the (Malcolm-first-linked) official USPTO post-Prometheus guidelines to claims in order to do the very thing you hint at: “to engage in an exchange of ideas with smart people having a variety of backgrounds, training, and perspectives“.

    Don’t tell me that you are attempting a disingenuous “crybaby’s veto” like MaxDrei, who really never intended to engage in an actual conversation.

    Funny, you were even taking MaxDrie’s side in that exchange.

    Can you say “Hypocrite” ?

  133. rather than to simply pound the table and repeatedly mouth self-serving, intellectually bankrupt “analysis.”

    LOL, see my lovely red cape Leopold? Curious as to how your post applies most spectacularly to the little circle.

    And pray tell how 101 IE’s analysis is “intellectually bankrupt,” when it (especially from a non-lawyer) is the most on point analysis provided?

    You are doing that Malcolm “accuse others of what you do” thing.

  134. Why is that Leo?

    Well, because I assumed you were here to engage in an exchange of ideas with smart people having a variety of backgrounds, training, and perspectives, rather than to simply pound the table and repeatedly mouth self-serving, intellectually bankrupt “analysis.”

    But maybe I was mistaken?

  135. OK. “Professor” Collins': do you know what the Church-Turing Thesis is? Have you read Deener?

    Do you understand that the mind processes information and that inventions are now about processing information so there is an overlap?

    J. Stevens believed that thinking was performed somehow by our brains, but that our minds had definite link to our brains. That is why his opinions are so bizarre.

    Read Deener: a physical method is claimed that our bodies could perform. Why isn’t that a problem?

  136. I really have to start publishing papers to counter these genius boys.

    Simple question Obama should ask potential nominees: explain the word abstraction in relation to engineering. If they can’t answer that question, show them the door.

  137. And add in the how many years of actual practice of patent law—not government dweebs, who measure their own success in the number of deals they are setting up when they leave government.

  138. Here, a study for you genius boys to do:

    number of science/engineering degrees on the fed. cir. through the years.

    analyze the opinions to see how many insular words are used. I will be one can figure it out. Find a metric that indicates lack of understanding of science used in the words.

    Genius boys. Man, that is what I hated about law school. You go to class and the law professors want you to memorize the number of moles on their back. Online class will end you soon. Your collegaues will sell you out to sell books and become rich themselves. Your time is limited.

  139. When you have judges agreeing that a information processing method is a law of nature and make jokes like “what are they going to patent next? A computer that can write legal briefs? (laughter on the whole panel).”

    And, you get batches of bozos that don’t understand the word abstract in an engineering sense—which anti’s is the most basic tool taught to first year engineering students. And, don’t understand the difference between software/firmware/circuits.

    One should not be able to sit on the Fed. Cir. without a science literacy.

    That is the problem genius boys!!!!!!!!!!!!!!

  140. LB: “101 IE should particularly enjoy the article by Kevin Collins.”

    Why is that Leo?

    Did Mr. Collins reconcile the Courts use of “Integration” with it’s precedents?

    Or did he do as so many of the anti patent commenters on this blog have done and just close his eyes and pretend the Prometheus Court never opined..

    “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)

    Because I tell you this Leo, if you can’t intellectually confront and deal with the Supreme Courts Integration Analysis, then you have an incomplete thesis, and no right whatsoever to call anything you write about, Mayo v Prometheus, legal scholarship.

  141. LOL

    Read 112 1st and 2nd, think about it for about 1 hour, and read them again. Repeat this about a dozen times — maybe you’ll figure it out.

  142. Right, after it’s been programmed by a human who follows the “novel” instructions

    Did you have a point to make?

    You know, the printed stuff that is actually disclosed and claimed and is only useful and intelligible to the human mind

    Still confusing claim language with the actual invention?

    I just think it’s a bunch of self-serving b.s
    Thinking has gotten you into too much trouble … I suggest you refrain and go back to your illicit drugs. You’ll be more lucid then.

    I have no problem at all infringing B-claims and I’d welcome the opportunity to take them down if someone dared to take me to court.
    ooooo … we are all scared.

    That particular “law of the land” doesn’t mean so much outside of the USPTO
    You forgot the Federal Circuit, where it counts.

  143. BTW guys dr. chakrabarty or whatever his name is from the USSC case is coming to the PTO in the madison auditorium to give a speech for the PTOS tomorrow the 27th at 10 am if you want to swing by.

  144. M&M’s: Yeah, I bet you’d buy that computer without software, right?

    I guess music and software are the same? Let’s talk Turing Machines. Oh wait, this is the Fed. Cir. we don’t need degrees in science or an understanding of patent law.

    I am tempted to resort to your simian name.

  145. And, just think we are going to get a whole new batch of bozos that can’t understand the technology and have never practiced patent law.

    And, we have to hear bozos tell us that a dep. of justice government attorney —a government attorney for pete’s sake—should be on the FEd. Cir.

    That is the problem you dopes.

  146. Skimmed a bit of Duffles papers. What a joke. What a joke. Contempt is all I have for you bozos. The judges (now read this slowly) do NOT understand the technology. Now think that through. And, (not a conjunctive) do NOT (note a not) understand patent law and (note another conjunctive) have never practiced patent law.

    That is the problem!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!

  147. Obama: withdraw your nominations. Appoint one ph.d. computer science that has been practicing for 10 plus years in prosecution and litigation. Nominate one Ph.d. in biotech same experience.

    Their problem is they don’t read your nonsense enough????/ That is laughable. Man, is that funny!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!

  148. Geniuses: the problem with the federal circuit is that they don’t understand the technology or patent law.

    They are insular because they are appointing non-nonpracticing, no reg numbers, never written a patent, never done an opinion, etc. dweebs.

    That is the problem not that they aren’t reading your rot.

  149. Dippy doo-littles: the problem with the federal circuit is that they don’t understand the technology or patent law.

    They are insular because they are appointing non-nonpracticing, no reg numbers, never written a patent, never done an opinion, etc. dweebs.

    That is the problem not that they aren’t reading your rot.

  150. Whether or not it is “good structure” has nothing to do with the actual legal point you and Malcolm boffed.

    Further, the “good structure” policy decision was weighed by Congress when they created the court and gave it its mandate to fix up the previous “good structure” which, by the way, was not too good after all.

    But let’s not let facts and history get in the way of some good revisionist history writing and accusations, huh?

  151. increased use of legal scholarship

    Should this comment be qualified, given the breakdown already shared as to types of intellectual property cases using those citations?

    Just asking.

  152. You know, the printed stuff

    (sigh) – yet more blatant lies in ignoring the controlling law of the exceptions to the printed matter doctrine.

    Malcolm, why do you keep building your arguments on a foundation known to be false?

    Talk about self-serving B$.

  153. Maybe more than a little suspect. Prof. Duffy makes more outside his law professor job than with it.

    Call it what it is: vanity press for law “professors” to increase their outside earning.

    We are in an age when there is no more scholarship. Bought whores.

  154. Another study by the authors: link to lawschool.cornell.edu

    The abstract:

    Chief Justice Roberts recently explained that he does not pay much attention to law review articles, reportedly stating that they are not “particularly helpful for practitioners and judges.” Chief Justice Roberts’s criticism echoes that made by other judges, some of whom, like Judge Harry Edwards, have been much more strident in the contention that legal scholarship is largely unhelpful to practitioners and judges. Perhaps inspired by criticisms like those leveled by Chief Justice Roberts and Judge Edwards, legal scholars have sought to investigate the relevance of legal scholarship to courts and practitioners using a variety of means. One avenue of investigation has been empirical, where several studies, using different, and sometimes ambiguous, methodologies have observed a decrease in citation to legal scholarship and interpreted the observation to mean that legal scholarship has lost relevance to courts and practitioners.

    The study reported here examines the hypothesis that legal scholarship has lost relevance to courts. Using empirical techniques and an original dataset that is substantially more comprehensive than those used in previous studies, it examines citation to legal scholarship by the United States circuit courts of appeals over the last 59 years. It finds a rather surprising result. Contrary to the claims of Justice Roberts and Judge Edwards, and contrary to the results of prior studies, this study finds that over the last 59 years there has been a marked increase in the frequency of citation to legal scholarship in the reported opinions of the circuit courts of appeals. Using empirical and theoretical methods, this study also considers explanations for courts’ increased use of legal scholarship.

  155. anon, imagine two different circuit courts considering the same issue. They are not bound to follow the prior court’s views, but must independently assess the situation and come to a conclusion.

    This process has historically help develop the law in a way that is organic. It also forces the courts to write narrowly to gain respect from their sister courts.

    I imagine a similar process occurs in Europe because the is no binding precedent.

    But the Federal Circuit is a horse of a different color. It is a court where the first panel decision controls and the judges tend to write large, declaring broad principles, at times unrelated in any way to the facts of the case.

    This is not a good structure.

  156. Except a human isn’t carrying out the task — a computer is.

    Right, after it’s been programmed by a human who follows the “novel” instructions … that are readable only by a human. You know, the printed stuff that is actually disclosed and claimed and is only useful and intelligible to the human mind.

    the difference in content of a data structure results in a functional difference

    Yes, it’s elephants all the way down. I get it. I know the Greatest Hits of Software Case Law. I just think it’s a bunch of self-serving b.s.

    Beauregard claims are the law of the land

    I have no problem at all infringing B-claims and I’d welcome the opportunity to take them down if someone dared to take me to court. That particular “law of the land” doesn’t mean so much outside of the USPTO, where the law is applied arbitrarily in the first place.

  157. Does that point have anything to do with ignoring stare decisis or ignoring the “chain of command” of judicial decisions? Sort of what you say out of the one half of your face in regards to Supreme Court cases, Ned?

    Most people would cover that point with a hat. In Malcolm’s case, that would be a lovely, shiny tinfoil one.

  158. It is the decline in the percentage of useful articles with thorough and objective case law analysis done with real understanding

    Careful there Paul – you sound just like me.

    You wouldn’t want the little circle all up in arms over your posts, now do you?

  159. The problem, of course, is that the “stimuli or signals” are never recited in the claims and, in fact, are almost never disclosed.

    Still confusing 112, 1st and 112, 2nd? Claims are only required to “distinctly claim[]” (i.e., distinguish the claimed invention from the old). Claims are not required to describe the invention. This is basic stuff that a 1st year associate should know.

    What is disclosed and claimed are instructions that are indistinguishable from the instructions that one would give to human being if a human were to carry out the tasks

    Except a human isn’t carrying out the task — a computer is. The printed matter doctrine only applies to “arrangements of printed lines or characters, useful and intelligible only to the human mind.” Did you notice the part about ONLY to the human mind? It is important.

    Moreover, B-claims are routinely distinguished from other B-claims purely on the differences in information content recited in the claims.”

    Printed matter doctrine doesn’t apply to data structures. In re Lowry. Also, the difference in content of a data structure results in a functional difference, which also cancels out the printed matter doctrine. As such, your musings fail on two levels.

    The PTO’s policy is erected on pure sand
    Beauregard claims are the law of the land … and your musings are based on impure sand – probably tainted by some urine and perhaps some illicit drugs you got from Tijuana. Go there often?

  160. There is a simpler explanation for the general decline in judical citations of academic patent law articles. It is the decline in the percentage of useful articles with thorough and objective case law analysis done with real understanding, especially as compared to pie in the sky [politically impossible] academic suggestions for legislative changes. Also, in too many cases, there is a clear lack of communication and information exchange between patent law professors and experienced patent law and PTO practitioners. This can lead to statements or allegations in academic articles, even factual or legal errors, that discredit their citation.

  161. Good that professors are recognizing just what Prometheus stood for. Diehr and its dictum that 101 was a precursor test, to be decided before determining novelty of the elements, had gone a long way in throwing in monkey wrench into traditional 101 analysis in favor of the formalistic approach favored by Rich. Bravo that someone else besides you and I, and of course, Richard Stern, have now recognized this.

    The Federal Circuit often gets lost in heresy. Legal scholarship is a way for it to recognize its errors, but for the life of me, they rarely, if ever, fix their own errors. I think of the following heresies off the top of my head:

    1) a programmed computer is eligible under 101 (Alappat, State Street Bank);
    2) one can impose use restraints by contract and enforce them under the patent laws;
    3) an equitable assignment is an legal assignment;
    4) one can provide an non enabling announcement of an invention an this will invalidate a later patent on the same invention;
    5) exhaustion does not mean exhaustion to the extent normal use involves the patented use;
    6) a method claim cannot be directly infringed when two parties cooperate despite the fact that if the last step makes a product, the person performing that last step makes the product and must be a direct infringer; and
    7) a Federal Circuit holding that a claim is not invalid over particular art is not “binding” on a later panel that considers that exact same art, thereby legal precedent a new meaning.

    There are others, of course. For example, Donaldson.

  162. Gah. Repost of preceding with formatting correct:

    It’s not all bad news for the Diehrbots. Check out footnote 193:

    The one exception is the PTO’s policy for dealing with software-on-disk claims or Beauregard
    claims. The PTO rejects claims to songs or e-books encoded on computer disks as “nonfunctional descriptive material” but it allows claims to most software programs encoded on disks by labeling the software as “functional descriptive material”. Examination Guidelines for Computer-Related Inventions, 61 Fed. Reg. 7478, 7481 (Feb. 28, 1996). Through this policy, the PTO is arguably reaching the correct final result on patentability. However, this outcome cannot be explained in a conceptually coherent manner with the cooperative-relation exception.

    Good stuff (my emphasis). But then there is this quote in which Professor Collins fails to drop the other shoe:

    Rather, the outcome should be explained by the fact that software-on-disk claims do not encode information that is intelligible to only the human mind. The distinction the PTO is attempting to make is a distinction between human-readable information, on the one hand, and information in the form of stimuli or signals encoded that causes a machine to act in a pre-determined manner, on the other hand.

    The problem, of course, is that the “stimuli or signals” are never recited in the claims and, in fact, are almost never disclosed. What is disclosed and claimed are instructions that are indistinguishable from the instructions that one would give to human being if a human were to carry out the tasks. Moreover, B-claims are routinely distinguished from other B-claims purely on the differences in information content recited in the claims. The PTO’s policy is erected on pure sand (I suppose that’s appropriate).

  163. Free? They are, in dissent. But I think the use of legal scholarship to support arguments would be more prevalent if they could be used in decisions that actually came to a different result.

    Still, you have a good point.

  164. It’s not all bad news for the Diehrbots. Check out footnote 193:

    The one exception is the PTO’s policy for dealing with software-on-disk claims or Beauregard
    claims. The PTO rejects claims to songs or e-books encoded on computer disks as “nonfunctional descriptive material” but it allows claims to most software programs encoded on disks by labeling the software as “functional descriptive material”. Examination Guidelines for Computer-Related Inventions, 61 Fed. Reg. 7478, 7481 (Feb. 28, 1996). Through this policy, the PTO is arguably reaching the correct final result on patentability. However, this outcome cannot be explained in a conceptually coherent manner with the cooperative-relation exception.

    Good stuff (my emphasis). But then there is this quote in which Professor Collins fails to drop the other shoe:

    Rather, the outcome should be explained by the fact that software-on-disk claims do not encode information that is intelligible to only the human mind. The distinction the PTO is attempting to make is a distinction between human-readable information, on the one hand, and information in the form of stimuli or signals encoded that causes a machine to act in a pre-determined manner, on the other hand.

    The problem, of course, is that the “stimuli or signals” are never recited in the claims and, in fact, are almost never disclosed. What is disclosed and claimed are instructions that are indistinguishable from the instructions that one would give to human being if a human were to carry out the tasks. Moreover, B-claims are routinely distinguished from other B-claims purely on the differences in information content recited in the claims. The PTO’s policy is erected on pure sand (I suppose that’s appropriate).

  165. If there was freedom come to a different legal result, the use of legal scholarship to point out the flaws in the prior panel decision would be important.

    I don’t see why a subsequent panel can’t simply make the argument that the previous panel was wrong or the decision was limited to its facts, assuming the argument made by the second panel is correct. Surely the judges are free to do that (with help from skilled attorneys, of course).

  166. they can and often do write large, far beyond the facts in the case, in order to bind later panels as much as possible.

    Are you saying they’ve adopted anon’s definitions of “holding” and “dicta”?

  167. I think a reason for lack of legal scholarship on the Federal circuit may in part be related to its rule that the first panel to decide a particular issue sets the precedent for the court. There is no debate among panels, at least no official debate. Thus in reviewing a decision from the Federal Circuit, we do not have a full vetting of an issue from different perspectives. We instead have one panel deciding an issue, and they can and often do write large, far beyond the facts in the case, in order to bind later panels as much as possible. This is the opposite of best judicial practice.

    We often hear about the EPO enlarged boards of appeals, and the fact that there is no binding precedent. This encourages disagreement, dissent and eventual consensus. That process has a lot to recommend it, and should be considered by the Federal Circuit because it obviously is a much better system than initial panels writing broad hoping to bind later.

    This process may also help explain why the Court may ignore scholarship. Once a case come out, there may be numbers of articles published with critiques. But these critiques can hardly influence a later panel that much, because they are bound by the first panel. If there was freedom come to a different legal result, the use of legal scholarship to point out the flaws in the prior panel decision would be important.

  168. More from Collins:

    The printed matter doctrine has a misleadingly narrow name in that it restricts the patentability of all human-intelligible information, regardless of whether the information is printed matter. The printed matter doctrine is technologically neutral, meaning that it curtails the patentability of all
    information that is intelligible to only a human mind, including information in the form of audio tapes, e-books, and (as in King Pharmaceuticals) speech….

    [W]hether the printed matter doctrine will remain an artifact of 102 and 103, or whether it will be forced to migrate back to its historical origins as
    an artifact of 101 patentable subject matter, is now an open question

    So awesome.

  169. Another great quote from Collins:

    The statutory distinction between the grounding of the doctrine of patentable subject matter (and thus both Prometheus Laboratories and the mental steps doctrine) in 101 and the grounding of the contemporary core of the printed matter doctrine in 102 and 103 must be recognized as arbitrary and without significance

    Indeed.

    [The printed matter doctrine] uses a
    point-of-novelty analysis to invalidate patent claims in which a limitation specifying the content of information must be considered in order to demonstrate a novel and nonobvious advance over the prior art under 102 and 103 of the Patent Act

    Yum.

  170. All the articles are good but Professor Collins’ article is especially interesting. A choice quote:

    By adopting and defending the bracket-and-distinguish analysis in Prometheus Laboratories —
    the functional equivalent of a point-of-
    novelty analysis — the Supreme Court has in effect, if not in express language, repudiated its earlier position in Diehr, undermined the CAFC’s position on the mental steps doctrine, and cleared the way for the doctrine’s revival.

    And then Professor Collins goes on to recognize the conceptual similarity between the way information recited in patent claims (whether in the mind or elsewhere) is treated by the printed matter doctrine and by the Supreme Court in Prometheus.

    Another great quote from the article:

    Prometheus Laboratories is intimately wound up with cases in which lower courts restrict the
    reach of patent protection into the processes that comprise human minds and the extra-mental information that is meaningful to human minds. Thus, perhaps it would be productive to understand Prometheus Laboratories as a case that is as much about the unpatentability of the human mind as it is about the unpatentability of laws of nature.

    Spread the good news, people.

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