CLS Bank v. Alice Corp: Court Finds Many Software Patents Ineligible

by Dennis Crouch

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

In a much awaited en banc decision, the Federal Circuit has affirmed the patent ineligibility of Alice Corp’s claims to a computerized method, a computer-readable medium containing computer instructions, and a computer system that implements those instructions.  The ten-member en banc panel released seven different decisions. While none of the opinions garnered majority support, seven of the ten judges agreed that the method and computer-readable medium claims lack subject matter eligibility.  And, eight of the ten concluded that the claims should rise and fall together regardless of their claim type.

All of the judges recognized that the test for patent eligibility under section 101 should be “a consistent, cohesive, and accessible approach” that provides “guidance and predictability for patent applicants and examiners, litigants, and the courts.”  However, the judges hotly disagree as to the pathway that will lead to that result.

The leading five-member opinion written by Judge Lourie provides three guideposts for its analysis:

  • First and foremost is an abiding concern that patents should not be allowed to preempt the fundamental tools of discovery—those must remain “free to all . . . and reserved exclusively to none.” . . . [T]he animating concern is that claims should not be coextensive with a natural law, natural phenomenon, or abstract idea; a patent-eligible claim must include one or more substantive limitations that, in the words of the Supreme Court, add “significantly more” to the basic principle, with the result that the claim covers significantly less. Thus, broad claims do not necessarily raise § 101 preemption concerns, and seemingly narrower claims are not necessarily exempt. What matters is whether a claim threatens to subsume the full scope of a fundamental concept, and when those concerns arise, we must look for meaningful limitations that prevent the claim as a whole from covering the concept’s every practical application.
  • Next, the cases repeatedly caution against overly formalistic approaches to subject-matter eligibility that invite manipulation by patent applicants. . . . Thus, claim drafting strategies that attempt to circumvent the basic exceptions to § 101 using, for example, highly stylized language, hollow field-of-use limitations, or the recitation of token post-solution activity should not be credited.
  • Finally, the cases urge a flexible, claim-by-claim approach to subject-matter eligibility that avoids rigid line drawing.

Abstract Ideas are Disembodied Concepts: Alice Corp’s claims are drawn to methods of reducing settlement risk by effecting trades through a third party intermediary (a supervisory institution) empowered to verify that both parties can fulfill their obligations before allowing the exchange to be completed.  This essence, the method is a form of third-party escrow that helps overcome the risk of fraud and non-payment. In thinking about that method, the court determined that it is an abstract idea because it is a “disembodied” concept that is a basic building block of human ingenuity and untethered from any real-world application.  Lourie writes:

CLS describes that concept as “fundamental and ancient,” but the latter is not determinative of the question of abstractness. Even venerable concepts, such as risk hedging in commodity transactions, see Bilski, 130 S. Ct. at 3231, were once unfamiliar, just like the concepts inventors are unlocking at the leading edges of technology today. But whether long in use or just recognized, abstract ideas remain abstract. The concept of reducing settlement risk by facilitating a trade through third-party intermediation is an abstract idea because it is a “disembodied” concept, In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994) (en banc), a basic building block of human ingenuity, untethered from any real-world application. Standing alone, that abstract idea is not patent-eligible subject matter.

After identifying the portion of the claim directed to an abstract idea, Judge Lourie then looked to see whether “the balance of the claim adds ‘significantly more.’” Answering that question in the negative, the court found the claims lack eligibility.

Writing in Dissent, Chief Judge Rader disagreed with the court’s decision. He writes:

I enjoy good writing and a good mystery, but I doubt that innovation is promoted when subjective and empty words like “contribution” or “inventiveness” are offered up by the courts to determine investment, resource allocation, and business decisions. Again, it is almost . . . well, “obvious” . . . to note that when all else fails, it makes sense to consult the simplicity, clarity, and directness of the statute.

As I start my next quarter century of judicial experience, I am sure that one day I will reflect on this moment as well. I can only hope it is a brighter reflection than I encounter today.

 


 

 

376 thoughts on “CLS Bank v. Alice Corp: Court Finds Many Software Patents Ineligible

  1. This case is just one more symptom of the broader cultural shift in America away from individualism, libertarianism, and property rights, towards a communitarian (propaganda term: “open”) way of life. And most of the public couldn’t even care to stop, and try to understand the inner workings of the system that gave them the unbridled growth in America’s early years.

    In time, you will see more and more attacks on property rights everywhere, not just here. A new age is coming.

  2. James, I will agree that a programmed computer is a physical thing. A blood test is a physical process that transforms. But the SC is concerned that patents do not cover (preempt) Laws of Nature or Abstract Ideas. By the latter, they have in mind thinks like mathematics, price, quality, risk, and, generally, any business method.

    Thus they will not tolerate adding insubstantial claim elements. But that is what a focus on the formalities does. It is not enough that the claim formally be framed in one of he four classes, or have elements that are machines, physical steps, articles or compositions. If these are old and conventional and the relationship of the ineligible to these is old and conventional, there is nothing inventive.

    While I think we could have developed the same jurisprudence using 102/103/112, the case law developed under 101 and its predecessors that go back to the founding. 102/112 has gradually changed over the years. 103 originated in ’52. But 101 has not changed in its essential wording in more than 200 years.

  3. MM, indeed, IIRC, Rich believed that if a claim involving only mental steps could, as a practical matter, only be performed on a computer, it was drawn to an eligible process.

    I think this is why the SC had to address the limitation of the use of claimed process to a computer. It was wholly abstract, but it was all but wholly preemptive of the abstract idea.

  4. We need to dump the AIPLA and reinstate the APLA ( membership restricted to Registered Patent Attirneys). Then push through legislation creating a paten court with judges who must be experienced litigators. No academics.

  5. MM, your test is not what Lourie or the SC prescribes. Looking first to old elements may work in many cases, but the Lourie and the SC prescribe a different approach.

    The first question is whether there is Law of Nature or Abstract Idea, e.g., Math, present such that the claim, if not effectively limited by other elements, will preempt that Law of Nature or Abstract Idea.

    The next question is whether those other elements limit the Law of Nature or Abstract Idea such that the claim does not effectively preempt most practical applications. Lourie and the SC want that something added to be inventive. Merely reciting the use of a generic computer, or even its familiar parts, is not enough.

    And, this is where the likes of Rader (and Quinn) do not seem to get it. They still think that simply reciting old and conventional elements is enough when — drumroll — they are physical, tangible things. But whether they are physical and tangible is not the test. The added elements, rather, have to be an inventive application.

    I wonder how the Director will handle this fractured en banc case in instructing the examining corps?

  6. And, with hinges the way it works is that if you invent hinges for the first time you can claim a hinge and then you get the scope of enablement.

    All hinges including ball and socket and standard interlocking hinge as long as those were enabled by your specification (and they may not have had to be expressly discussed if anyone skilled in the art would know to use those two methods).

    Scope of enablement is how it works——NOT ABSTRACT!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!

    Just disgusting what has happened. Thanks Richard Stern you dirtbag.

  7. Hugh, I was being facetious. Your comment really angers me. It illustrates how Judges like Lourie destroy patent law.

    What you are entitled to is the scope of enablement!!!!!!!!!!!!! That is patent law. Not this abstract nonsense. If you invent a fiber optic cable and claim it with a description of the different refractive indexes of light with a core, and then describe how anyone skilled in the art can practice the invention, then you are entitled to ALL (!!!!!!!!!!!!!) uses of that cable that you have enabled. If someone comes along and figures out a non-obvious improvement of your invention, then they can get an improvement patent.

    That is patent law. That is how it is supposed to work. Not mumbo jumbo. The judges at the Fed. Cir. don’t even know this. I guess we have sunk into a third world country with Lourie leading the way. Louie–in the annals of the Fed. Cir. you will go down as lowest of the low.

  8. Don’t be ridiculous. If information processing methods are mathematical formulas, then so are ALL methods.

    Please. I don’t have time to pull out my theoretical computer scientist hat. But, get a grip. This argument can quickly become very technical and above the heads of almost everyone on the planet. But, if you have any training in this, then you would know that these methods are something different.

  9. So, I can’t claim hinges for all doors? I can’t claim fiber optics for all uses?

    That’s right, you can’t. You can claim a particular type of hinge that you might invent. But you can’t claim the abstract concept of a hinge, which would preclude others from inventing other types of hinge (e.g. ball and socket vs standard interlocking hinge); you can claim a particular material and machine for transmitting photons that you have invented, but you can’t claim the transmission of photons per se.

  10. Haven’t read it all yet but in skimming Rader’s valedictory remarks my eyebrows went up when I read the word “failed” in front of his reference to the European patent statute.

    He doesn’t elaborate, so I have no idea in what sense Article 52 of the European Patent Convention has “failed”, either absolutely or relative to the jurisprudence on 35 USC 101. Can anybody help me here? If there is a consensus in DC, that Art 52 is a failure, where do I read it up? Or is just pre-emptive Randy, managing the debate by getting his retaliation in first?

    Malcolm, any thoughts, from one who thinks the EPO has got it wrong?

  11. To be clear: the fact that we have morally and intellectually lacking people on the Fed. Cir. is the most disturbing part of this opinion.

  12. LOURIE, Circuit Judge, concurring, with whom Circuit
    Judges DYK, PROST, REYNA, and WALLACH

    All of these judges should be removed. They have all signed onto an “inventive concept” requirement. What ignorance of patent law.

    But, I am sure the Obama club will make all of this much worse. We are going to get a group of ignorant creeps that have no interest in sorting out the complicated issues of patent law.

  13. Everyone should read the part in the dissent about injecting hot air into furnace. It goes from saying–you know this is an abstraction–to wait, the method of building something to heat air and then inject it into the furnace is what should be patentable—not the exact structure to heat and inject the air.

    Read it. It is exactly the same argument that is being made for information processing methods.

  14. You know there is a category missing. Information processing method. There are those things too, Judge Lourie —you creep.

    An information processing method is not a mathematical formula, it is not a law of nature, it is not an abstract concept, and it is not something you understand.

    I cannot believe after 40 years we are back to Benson. With its twisted sick reasoning. Logic fallacies. Ignorance of computers.

  15. The more now according to Lourie is an “inventive concept.” This just makes me smile to even think about. Gallows humor no doubt, but Lourie has introduced a new fudge word. So, he couldn’t figure out how to apply abstract, so he added “inventive concept.” You see some things are abstract and some are abstract with inventive concepts. And some judges are old and uneducated in modern thinking and should retire.

  16. LOL!

    The new test is to figure out what abstract concept is being applied (unambiguously), and whether more has been added to the abstract concept.

  17. I’ve seen opinions, concurring opinions, dissenting opinions, concurring-in-part opinions, dissenting-in-part opinions, etc. But I’ve never seen a judge issue “Additional Reflections” — it’s like a bad line item in a commencement program.

  18. eric: Your eligibility analysis is based on whether claim elements are obvious.

    In fact, it’s based on whether any claim elements are ineligible. If all elements are ineligible, obviousness is moot. If all elements are eligible, then ineligibility is moot (happy to consider examples purported to contradict this).

    obviousness must be determined before eligibility is determined.

    That is true only if the claim comprises both ineligible subject matter and eligible subject matter. If the only eligible subject matter in the claim is anticipated or obvious, then the claim effectively protects the (typically new) ineligible subject matter.

    102/103 must be determined before eligibility is determined.

    Or 102/103 need not be determined not all. Depends on the claim. See above.

    I think this is pretty clear. I understand now what you meant by the “order of the steps” being important. It’s true that a claim comprising both eligible and ineligible subject matter can’t be declared eligible until the relationship of the eligible subject matter to the prior art is determined. But it doesn’t affect the ultimate conclusion whether you first identify the ineligible elements or the eligible elements. That’s why I disagreed with (and still disagree with) your statement above that I would “require” Examiners to “initially ignore 101.” That’s not accurate. More accurately, if I were king, I would require Examiners to initially ignore ineligible subject matter and see what’s left.

  19. Good luck eric – soon you too will understand the depths of Malcolm’s lack of intellectual honesty.

  20. Throw copyright out there just to prove your ignorance – you truly have a desire to self-defeat no matter what else is happening in the world.

    Pathological.

  21. Yes – it’s right there in black and white – and will be archived for all to see.

    For some reason, you think your spin escapes notice for some odd reason. Maybe you repeat this as you buff your shiny hat each day – who knows.

  22. Your eligibility analysis is based on whether claim elements are obvious.

    This inherently requires an obviousness analysis.

    This means that obviousness must be determined before eligibility is determined.

    This means that 102/103 must be determined before eligibility is determined.

  23. tell us how many software patents were rejected or invalidated because of Bilski.

    Go ask Alice.

    ROTFLMAO.

  24. every one knows that perfectly eligible claims are allowed to be composed completely of steps – themselves each old.

    No doubt. An eligible claim for making a new stack of paper could be comprised of a new non-obvious combination of old steps. Basic patent law.

    On the other hand, an old step or an old series of steps doesn’t become “new” and remain eligible merely because a step recites “new” patent-ineligible information printed on one piece of paper in the stack, regardless of how awesomely useful that information may be. Same principle applies to other methods, including (and especially) computer-implemented methods.

    But we’ve seen such methods treated “differently” by both the USPTO and (to a lesser extent) the courts over the years. Somehow the recitation in a claim of a computer or a “system” or a “network” or a “social network” or a “self-driving car” seems to turn Examiner’s brains to jelly. History and reason are forgotten and all that remains is the sound of a pink fist pounding the table and lamenting the destruction of the last standing pillar of the American economy. Or something.

    How’s the stock market doing after all this devastation? It must have dove sharply down a few percentage points at least. A guy down the street from me came running out of his garage saying that his life’s work was ruined. He dropped something. I picked it up and it was a CDR with the words “RateYourNeighbors.Com” written on it. I threw it in the trash.

  25. Yet more spin and misrepresentation.

    Malcolm, your habits are pathological. You really cannot help yourself from being dishonest, can you?

    (and yes, that is rhetorical)

  26. bored you don’t understand that doing something with a computer is ENTIRELY DIFFERENT than doing something without.

    Except when it isn’t. Like when using a spam filter to screen email is exactly like screening registered snail mail. Or so I’m told.

    Seriously though, it’s not “my problem” if what you say is true and if really matters. I could care less if software patenting was completely gutted tomorrow. Good riddance. It’s your problem. If I were you, I’d figure out your next move. Maybe lobby Congress to create a massive new batch of copyright laws specially designed to protect “information processing” programs and other kinds of digital information. Oh, wait, you did that already.

    But the reality is that

    a method of “using my brain” to “store Johnny’s credit card info” while carrying out steps B, C, D, E, F, G, and H

    is not “entirely different” from

    “using a computer to store Johnny’s credit info” while carrying out steps B, C, D, E, F, G, and H.

    Nobody serious thinks that those two methods are “entirely different” and nobody ever will.

    Likewise, whether I use GPS or a map or my memory to find “Billy Bob’s Super Gas Station” makes no difference. If the only thing in the claim that differs from the prior art is the new non-obvious name of the gas station, then no patent for me. “The manner by which the result is achieved” is not relevant at all to the analysis.

  27. Because every one knows that perfectly eligible claims are allowed to be composed completely of steps – themselves each old.

    No wait, is that still allowed?

    /eyeroll

  28. Unless the claims require a computer to perform operations that are not merely accelerated calculations, a computer does not itself confer patent eligibility.

    Here MM, is an example of “laced with ignorance.” A computer does not do anything else but calculate at a fast rate.

    I think Lourie is making a distinction between (A) methods that recite the use of a computer to perform old tasks in an “updated” fashion (perhaps using “fancy” computer lingo in place of meatworld terms) for the purpose of making the process more efficient/faster/reliable and (B) methods carried out on a computer which recite NEW steps that have no meatworld equivalent.

  29. One of your problems MM, among the dozens and dozens you possess, is you don’t understand that doing something with a computer is ENTIRELY DIFFERENT than doing something without. E.g., a GPS system and the many different ways it can be employed are very different from using a map. The ultimate result may be the same, but the manner by which the result is acheived is extremely different.

  30. Right. James was being sloppy

    No. You are caught (yet again) being intellectually dishonest.

    Even on a day with a decision like this, you have this incredible drive to self-defeat.

  31. You never say anything

    LOL – there you go again – the accuse-others-of-that-which-you-do.

    How banal!

  32. blah blah blah blah …. still up to your nauseating Asperger’s tinged ranting? This is Bilski all over again … tell us how many software patents were rejected or invalidated because of Bilski.

    …… very, very few.

  33. They don’t have to stray very far

    LOL.

    Don’t – or can’t?

    Since Malcolm is intent on pulling quotes from the Quinn blog, I found one by some excellent poster:

    What were the words signifying Precedence?

    No portion of any opinion issued today other than our Per Curiam Judgment garners a majority, The court is evenly split on the patent eligibility of the system claims. Although a majority of the judges on the court agree that the method claims do not recite patent eligible subject matter, no majority of those judges agrees as to the legal rationale for that conclusion. Accordingly, though much is published today discussing the proper approach to the patent eligibility inquiry, nothing said today beyond our judgment has the weight of precedent. (emphasis added).

    As the per curiam judgment is confined SOLELY to the claims at hand, this case cannot even be used as precedent in another case before the CAFC, let alone used for anything by the Office.

    Imagine that, a precedential opinion that means jack squat.

  34. “condition of inventiveness has been expressed in a
    variety of ways by the courts,” but the “new provision on
    inventiveness” in Section 103 was intended to replace and
    codify prior law).

    This is the part that may get this over turned.

  35. You know, a little leads to this:

    (1) You can’t patent an abstract idea;

    (2) all things that have math or algorithms or processes on computers are abstract; they are discovered not invented (see above);

    (3) you have to add an inventive concept to an abstract idea or you are claiming the abstract idea itself.

    OK: but, if anything on a computer is an abstract idea how can you invent anything to add to the abstract idea? All you have done is discover a new abstract idea.

    Laced with ignorance motivated with malice aforethought.

  36. to the underlying
    idea of reducing settlement risk through intermediation.

    This is another part that is like Benson. He switches terms and concepts and floats about and restates. Lourie you are no better than a judge in a third world country.

  37. Something important in evaluating this opinion, at 28 in the opinion it is written “[b]ut for the implied requirement for computer implementation, the broad, non-technical method claims presented here closely resemble those in Bilski. As such, the CAFC isn’t attempting to stray too far.

    They don’t have to stray very far. The Prometheus decision wasn’t necesary for this result. What needs to happen is that the USPTO and district courts need to actually start rejecting and/or invalidating the computer-implemented crxp that is presently polluting the system.

  38. In short, the requirement
    for computer participation in these claims fails to supply
    an “inventive concept” that represents a nontrivial, nonconventional human contribution or materially narrows
    the claims relative to the abstract idea they embrace.

    That is my favorite part. You have to have a inventive concept, and yet not an abstract idea. Quite a trick.

  39. He is saying that when we invent a method of driving a car, that we did not invent it.

    I think he’s saying that just because you are the first person in history to describe a method of using “a computer” and/or “GPS technology” and/or “video and radar information” and/or “a stored map” to determine whether it’s okay to switch lanes on Sunday in a city that begins with “S” while a purple-eyed baby is screaming in the back seat and you’re hungry for a burger, that doesn’t mean you “invented” anything patent-worthy. And yes that is a horrible horrible result for meat-eating people with purple-eyed babies. They will likely never see that “technology” and might as well just forget about leaving the house ever.

  40. Unless the
    claims require a computer to perform operations that are
    not merely accelerated calculations, a computer does not
    itself confer patent eligibility. I

    Here MM, is an example of “laced with ignorance.” A computer does not do anything else but calculate at a fast rate. That’s it. And, guess what—that is what we do in our brains. Oh wait, the 1920′s Lourie (Mr. my conscious mind is separate form my brain) doesn’t understand.

    Lourie: you spent your life trying to apply the law and you have undermined your entire life’s work. You will die a net destroyer of our judicial system. Your life’s work is to have undermined our system of government.

  41. If Lourie’s approach is allowed to go unchecked what will stop any court, examiner, or opponent from stripping away and ignoring limiting elements, parts, machines or apparatus until they reach something that can be subjectively and arbitrarily labeled an inventive concept, or abstract idea the claims pre-empt?

    The Prometheus decision, as noted by Lourie himself in the course of outlining his “approach.”

    This case will be overturned at the Supreme Court based on the Court’s holding of “Integration”.

    Right. Just like Prometheus was going to be upheld “because Diehr.” I’ll take that bet. I’ll go even further and guarantee you a 9-0 decision upholding the ineligibility of the claims.

  42. Note distinction: ineligible. Invalid. Ineligible. Invalid.”

    Right. James was being sloppy. In the context of our conversation, that was very confusing so I reminded him of the distinctions.

    Here, I was asking why anyone should care about the “eligiblity” of functionally claimed and indisputably ancient compositions that would get kicked out of court in two seconds even if they did miraculously manage to get past square 0.00001 at the dysfunctional USPTO. I didn’t make up the hypothetical claims — NWPA did.

    Nobody is asserting that a new computer, properly claimed and structurally distinguished from the vast universe of prior art computers, is ineligible subject matter. Such a computer would be welcome by all and there is no reason to stand in the way of patenting such a new article of manufacture. That’s not what this case was about. But go ahead and think so if that’s what your intellectual superiors are telling you to think. After all, you’ve had nothing but success with that strategy so far.

    Still waiting for the stock market to tank now that the foundation of our economy has been destroyed. Maybe after the New York Times puts this decision as its headline story tomorrow and CNN goes 24/7 with the earth-shattering developments.

  43. Have you answered my point about spam control on your email yet?

    Hmm, I wonder why not.

    The single law firm? – lol – asked and answered.

    Pay attention.

  44. James, eric, well, anyone that asks you to actually provide an answer or an explanation receive the same crp – you asking them to do the work.

    It would be funny except you are serious about it.

  45. I notice you do not touch the content of my post – a vacuous post by you even in light of this en banc “decision.”

    You are quite something else.

    It’s dirty, small and smelly – but it is something else.

  46. MM: “So what happens in Ultramercial v. Hulu?”

    Ultramercial will be upheld as statutory subject matter relying on the Supreme Courts “Integration Analysis”

    See the dissent stating:

    “”Here, the claim recites a machine and other steps to enable transactions. The claim begins with the machine acquiring data and ends with the machine exchanging financial instructions with other machines. The “abstract idea” present here is not disembodied at all, but is instead “integrated” into a system utilizing machines. In sum, the system claims are indistinguishable from those in Diehr. For these reasons, the system claims are not directed to patent ineligible subject matter.” 38 CLS BANK INTERNATIONAL v. ALICE CORPORATION (Emphasis added)

    This will be the majorities argument in Ultramercial. Ultimately this case will go to the Supreme Court of course and the Court will have to once and for all decide, perhaps in a 5-4 decision, to explicitly cabin or outright overturn Diehrs claims as a whole approach, and ban software and business method patents along with it, or put a stopped to the anti patent madness that has gone on far too long and way too far. So enjoy your party while you can anti’s because it just may be the last one you have.

  47. Concerned with the eligibility of a machine that proceses information

    “Concerned with the eligibility of a process for using a pencil and paper to calculate a number more accurately than a person human can using just their brain.”

    “Concerned with the eligibility of a book for storing more phone numbers than a person can store in their brain.”

    Let that soak in people – word for word.

  48. This case will be overturned at the Supreme Court based on the Court’s holding of “Integration”. The dissent summed it up nicely as follows:

    “Here, the claim recites a machine and other steps to enable transactions. The claim begins with the machine acquiring data and ends with the machine exchanging financial instructions with other machines. The “abstract idea” present here is not disembodied at all, but is instead “integrated” into a system utilizing machines. In sum, the system claims are indistinguishable from those in Diehr. For these reasons, the system claims are not directed to patent ineligible subject matter.” 38 CLS BANK INTERNATIONAL v. ALICE CORPORATION (Emphasis added)

    Judge Lourie merely paid lip service to “Integration” by making it the sub title of his opinion, ( C. An Integrated Approach to § 101) and then proceeding to engage in rather blatant and illegal dissection to distill the invention down to an “inventive concept”. In doing so he went far beyond the boundaries of the Supreme Courts use of that term in Prometheus, and in effect ignored Diehr’s “Integration” which the Court explicitly upheld as controlling precedent.

    If Lourie’s approach is allowed to go unchecked what will stop any court, examiner, or opponent from stripping away and ignoring limiting elements, parts, machines or apparatus until they reach something that can be subjectively and arbitrarily labeled an inventive concept, or abstract idea the claims pre-empt? Process will indeed become a dead category along with all innovations that fit therein.

    I do not believe there is a majority on the Supreme Court that intended this to happen and they will gladly correct it and smack down this CAFC ruling just like they did in Bilski with the MoT test.

  49. From that perspective, a person
    cannot truly “invent” an abstract idea or scientific truth.
    He or she can discover it, but not invent it.

    So, now philosophy comes into play. Now again, we have a mind that is stuck in the 1920′s. Information process methods are not discovered but invented. This is a key concept and the basis of the entire decision. He is saying that when we invent a method of driving a car, that we did not invent it. That the method was discovered like a natural law.

    Unbelievable. An old man who has not updated its brain is killing our patent system. Lourie—read a book written after 1920 in the information sciences.

  50. The stench of hypocrisy, folks – it’s over powering.

    Have you found that law firm yet, Trollboy? You know, the single law firm (other than your own) that uses mailroom staff to screen registered letters and then throws the letters out before the attorney can see them if the letters are deemed to contain prior art? Let us know. Ask Gene to help you. I’m told he’s a very smart no-nonsense guy (I think you said something like that). I’m sure he can help you. Let us know, will you?

  51. what James is actually talking about

    Is that what James told you? If so, give him a big kiss. You two make a great couple.

  52. Concerned with the eligibility of a machine.

    Really.

    Let that soak in people – word for word.

    Then go back and look at what the hypocrite posted above with James.

    What were the words?

    Oh yeah: “ Note distinction: ineligible. Invalid. Ineligible. Invalid.

    The stench of hypocrisy, folks – it’s over powering.

  53. Wow – Malcolm just plagiarized 101 Integration Expert.

    Wow, Trollboy just got back from his court-ordered psychiatry appointment and went straight for his computer to start trollin’ again!

    Seriously? Guess they should put another cop on the beat by the schoolyard because that’s where Trollboy is surely headed next.

  54. Explain the part in Prometheus (9-0) that specifically rejected the government’s mixing of the exceptions and 102/103 (you know, what James is actually talking about without you trying to re-spin things).

    You know, the same answer asked of you since that case that you have never provided (and yes, your constant run-aways are archived).

    And by explain, I do not mean for you to ask someone else to explain it.

  55. I suspect you are confusing my analysis with an analysis that looks at each eligible claim element individually, divorced from the other steps in the claim. That’s now how the analysis works.

    Wow – Malcolm just plagiarized 101 Integration Expert.

    Seriously?

    And all this time you have been giving him sht? And you now preach what he has been preaching?

    Talk about lack of intellectual honesty.

  56. “an application of a law of nature or mathematical formula to a known structure or process may well be deserving
    of patent protection.” Id. at 187.

    But, information processing algorithms are not laws of nature and are not mathematical formula.

  57. One practice tip … from the opinion at 18:

    one cannot meaningfully evaluate whether a claim preempts an abstract idea until the idea supposedly at risk of preemption has been unambiguously identified.

    In litigation, I’m sure opposing counsel will throw something against the wall in order to identify an alleged abstract idea being preempted. However, this is something I don’t see too many Examiners performing.

    Something important in evaluating this opinion, at 28 in the opinion it is written “[b]ut for the implied requirement for computer implementation, the broad, non-technical method claims presented here closely resemble those in Bilski. As such, the CAFC isn’t attempting to stray too far.

  58. If all processes that can be performed using a pencil and piece of paper are ineligible, then by the Church-Turing Thesis all computer program are ineligible–ALL.

    You say that like it’s a bad thing.

  59. “The mathematical formula
    involved here has no substantial practical application
    except in connection with a digital computer, which
    means that if the judgment below is affirmed, the patent
    would wholly pre-empt the mathematical formula and in
    practical effect would be a patent on the algorithm itself.”

    This is another bit that is illogical. Outrageous. I mean do we have to formally convert this to logic for people to see that this nonsensical?

  60. “purported to cover any use of the
    claimed method in a general-purpose digital computer of
    any type.” Id.

    That is another part of this that rises to criminal intent. “any use of”?????? That just is nonsensical in patent law. So, I can’t claim hinges for all doors? I can’t claim fiber optics for all uses? It is an intentional lie. It is outrageous.

  61. That’s good advice, but it is unlikely that this will not go to the SCOTUS.

    abstract : Lourie preempt a fundamental concept. Benson: a fundamental concept is converting a binary number to a BCD number.

  62. Agreed.

    Given this holding, I would suggest to anyone drafting claims in this area to

    AVOID METHOD and CRM CLAIMS

    and instead present

    ONLY SYSTEM CLAIMS.

    If one includes method and CRM claims, the courts will tend to focus them, and then apply their holding to claims in the other classes.

    If one needs method and CRM claims, one should present them in divisional or continuation patents so as to minimize the risk to the system claims.

  63. the anti’s have been winning the public relations game.

    Impossible to imagine that being the case, given that “the public” is so keenly aware of the remarkable number of jobs that were created as a direct result of Kappos turning the patent grant spigot up to 11 back in 2007. Plus the “public” can certainly appreciate the awesomeness of those expensive patented drugs, especially when they are told that lowering their dosage back to what they used to be taking is patent infringement. How could anyone not love that? And of course being told for years by patent protectionists like Kevin Noonan that it was okay for someone to protect merely thinking about your genome or thinking about a test result — the “public” loves that stuff. Why? Because they know that every patent creates a job and if we don’t give the top 5% richest peole in the country the patents that they need they are going to stop innovating nice things and kids will die. Yup. It really is a mystery, that “public relations” thing.

  64. You know the other thing about this is that patent eligibility laws have for a long time contemplated information processing. Congress was well aware of these in Europe and elsewhere and has not excluded them in amending the 1952 patent act.

    And yet, we have Lourie telling us that Congress just don’t understand and he is going to apply a judicial exception to wipe out a broad area that Congress clearly considered and did not exclude.

    So, Lourie, when you sit there and think this over as you will, it may slowly creep through your mind that you are a criminal. And you will be right.

  65. James I agree that claim 1a (and probably 1b) are invalid under the law as it is interpreted

    Um … who are you agreeing with, James? What part of 35 USC 102 or 35 USC 103 would render either of those claims invalid? Note distinction: ineligible. Invalid. Ineligible. Invalid.

    As for your use of the term “probably”, maybe you can explain why you feel uncertain. Try to explain it, James. There’s no need to feel uncertain about the ineligibility of either claim, I can tell you that much, unless you misunderstand the case law.

    I was talking about the law as it should be interpreted

    And perhaps you prefer a “strict construction” approach, regardless of the consequences. That’s fine. You’re entitled to that position and (of course) others are entitled to criticize the weaknesses of that position. It’s certainly true that in the USA, the Supreme Court gets to interpret the laws. Did you know that? Of course you did. And no Justice on the Supreme Court is a bona fide “strict constructionist.” Given that fact and given the longstanding nature of the judicial exceptions, I still fail to see how the “statutory scheme” confuses you. 102 and 103 must also be ‘confusing” to you, then, by the same reasoning, unless you believe, e.g., that I should be able to patent a new non-obvious book by virtue of the non-obvious writing on the pages.

  66. You may tell yourself, this is not my beautiful house.
    You may tell yourself, this is not my beautiful wife!

  67. So, a self-driving car is ineligible.

    Who said that? As broadly claimed by you in your hypothetical, it is certainly anticipated and was anticipated a long long long time ago.

    a computer that can beat people at Jeopardy is ineligible.

    Depends. There are serious problems with functional claims of that type, problems that implicate 101 and certainly many of the other patent statutes. As written, it’s also anticipated a long long time ago.

    Amazing how a machine that can now out perform people in information processing tasks could not be eligible for patentability.

    What’s amazing is that anyone could possibly be concerned about the eligiblity of a “machine that can now out perform people in information processing tasks.” It’s 2013. You might as well rant about the ineligiblity of a claim to a “An object that can store a long story better than a human brain.”

    C’mon, man. Do better.

  68. MM: would you stop your dancing. My goodness you have this opinion in front of you and this is the best you can do. Lourie obviously wants to squash all information processing patents. Lourie has decided he is a legislator.

    What does matter is your explanation of this opinion as applied to computer programs.

  69. Your ignorance of information processing is never ending. If all processes that can be performed using a pencil and piece of paper are ineligible, then by the Church-Turing Thesis all computer program are ineligible–ALL.

    First of all, whether “all computer programs” are legally ineligible for patenting or not has nothing at all to do with my knowledge (or anyone else’s knowledge) of “information processing.” “Patent eligibility” is itself an abstraction. We could easily create a class of patents called Blipfrop Patents that are unenforceable but eligible. Does that change anything about my knowledge of “information processing”? Of course not.

    Second of all, are there any information processing methods that can be performed with a pencil and paper that are eligible? Remind me of some.

  70. Well, if you don’t know what that means, then you are as ignorant of philosophy as you are of information processing.

  71. So, a self-driving car is ineligible. OK. So, a computer that can beat people at Jeopardy is ineligible. OK. Sure. That isn’t what this holds, but it is clear that you concrete little brain would like it to be so.

    Amazing how a machine that can now out perform people in information processing tasks could not be eligible for patentability. I wouldn’t mind it, if Congress said so, but to make up fantasies to exclude information processing and have trolls on blogs fabricate a whole new universe of physical laws is hard to take. I guess it is burn baby burn–eh Lourie?

  72. My guess is that he is like Stevens that probably believes that there is conscious mind outside the physical body.

    I have no idea what that is supposed to mean but I did laugh out loud. Thank you.

  73. Trollboy: Squint as hard as I can, I see you explaining nothing

    Of course you don’t, Trollboy. Hey, did you ask your hero Gene if he can identify a single firm that uses mailroom staff to screen registered letters addressed to attorneys, wherein the staff throws out any letters deemed to contain prior art? You know, your awesome strategy for avoiding knowledge of prior art that might get sent to you.

    He could probably use the distraction today. Go ahead, Trollboy. Ask him. We’re counting on you.

  74. Your ignorance of information processing is never ending. If all processes that can be performed using a pencil and piece of paper are ineligible, then by the Church-Turing Thesis all computer program are ineligible–ALL.

  75. That’s why I can’t claim a “A method, said method comprising thinking [insert new non-obvious useful thought]” (call this claim 1a).

    Actually, I would argue that the judicially created exceptions should have been done away with long ago and you should be able to claim such a method, since that’s what the plain language of the statute provides without any room for such exceptions.

    If claims 1a or 1b should be invalid, let them be invalid because Congress rewrites 101, not because the Federal Circuit and the Supreme Court spend decades fumbling around, utterly failing to come up with some kind of workable standard for what constitutes impermissible claiming of an abstract idea, law of nature, or natural phenomenon.

    So I agree that claim 1a (and probably 1b) are invalid under the law as it is interpreted, but I was talking about the law as it should be interpreted. I fully understand the “insignificant post-solution activity” argument that you’re making, I just disagree with it because I don’t see any room for it in the statute.

  76. You know the other thing about this is: 101 and judicial exception is being applied when by their very arguments the patent would be invalid under 103. How can that be? How can a court reach an judgment on a judicial exception that relies on the invention being obvious? That should never happen. A court should always resolve with the statute before applying a judicial exception.

  77. the root of this is abstract. This word is a magic word that can be applied to any invention to proclaim it ineligible.

    No. But have fun trying, if you like.

    what does this word abstract mean in relation to 101?

    Well, the term certainly includes mental processes. That’s crystal. And it certainly includes pencil and paper calculations. I think there’s no disagreement about that. And I would wager now that it includes well known conventional proxies for both those types of methods, i.e., old computing devices.

    Surprised? You shouldn’t be. Were you surprised when performing a calculation using a pencil and paper was deemed ineligible? Were you surprised to discover that a method of using a pencil and paper to keep track of blue Toyotas purchased by people named Jim in months beginning with an “M” was patent ineligible? Or using a pencil and paper to prepare a contract to buy insulation, wherein said preparation occurs on a rainy Monday and wherein said parties to the contract are separated by less than 200 miles and more than 5.223 miles? Does the ineligibility of that method surprise you? What about a method of using pencils and papers shared by a network of “friends” to communicate their likes and dislikes to each other, where each of the friends owns a self-driving car? Would it surprise you if such a method was found to be ineligible?

  78. It is interesting that both MM and Lourie appear to suffer from the same misconceptions and are both from chemistry. Lourie is old. My guess is that he is like Stevens that probably believes that there is conscious mind outside the physical body. He probably doesn’t understand information processing and sees it as an affront against God.

  79. I think a lot of this is that the anti’s have been winning the public relations game. The people I meet at parties (professors, architects, moms, doctors) all seem to regurgitate Lemley’s arguments and incredibly know who Lemley is.

  80. Meanwhile, over at The Greatest Patent Blog Evah:

    all of the asserted claims are not patent eligible. At the moment I am completely flabbergasted and don’t know what to say.

    Right, because in a million years it was impossible to predict this outcome. Nobody could have predicted it! And then there’s this wackiness:

    For the life of me I can’t understand how it is fair to be judging these patents based on the disclosure standards and patent eligibility standards of today anyway. These were written 5, 10, 15 years ago or more when far less was required. Judging innovations based on a moving target is fundamentally unfair to start with, but coming up with a tie is unconscionable.

    This is what happens, I guess, when you drink 10 billion gallons of your own kool-aid and righteously squelch dissenting comments on your blog: you get surprised and mutter incoherently about court cases every few months.

  81. Yes. The sad thing is that this is going to go to the SCOTUS. And, with the Obama appointments I am afraid there is little hope of clarity.

    This is a big loss. I am disappointed that Moore and Rader didn’t dissent on the method and Beauregard claims. This abstract stuff is nonsense.

  82. MM: dissecting claims and not treating them as a whole, and proclaiming something abstract is erudite. I don’t think so.

    OK, MM, what does this word abstract mean in relation to 101?

    What I find so disturbing is just a clear disregard for basic principles. You don’t look at an invention and make proclamations. You build careful arguments based on prior art and reasons to combine.

    Still the root of this is abstract. This word is a magic word that can be applied to any invention to proclaim it ineligible.

  83. Squint as hard as I can, I see you explaining nothing (again).

    You cannot even win with a decision like this, your hold of the law is so vacuous.

    You request someone else to do the explaining when that someone has asked you.

    You are an empty wagon, clanging noisily down the sidewalk.

  84. Per Lourie’s test, a claim reciting: “A computer including a processor and a memory.” is eligible under 101

    Sure. Also invalid because it’s old in the art.

    a claim reciting “A computer including a processor and a memory storing software configured to enable the computer to add 1 + 1″ is not eligible under 101.

    Right, that’s because it’s effectively protecting ineligible subject matter: adding numbers.

    It’s nearly identical to the Supreme Court test in Prometheus (which I don’t recall Moore complaining about). “A method of separating 6-TG from human blood serum” is eligible subject matter (also old in the art). But a “A method of separating 6-TG from human blood serum and thinking about what to do with the information” is ineligible. Why? Because it is effectively a claim on the step of thinking about what do with the information. Very simple. Very easy.

    I said “nearly identical” above because the claims at issue in this case (unlike those in Prometheus) recite a computer for performing the steps that would otherwise need to be performed mentally or with pencil and paper. The big question I’ve been wondering about for some time is whether the CAFC would take the tiny, tiny, tiny step of ignoring the recitation of a computer. It is 2013 after all. We all know that computers receive, process and store information. We all know that computers are ubiquitous. We all know that computers have been used for a long, long time as proxies for various utilitarian functions of human brains. To the extent the computer is generally recited for such a purpose in a claim, it adds nothing relevant to the 101 analysis.

    Bottom line: it’s Moore’s “ignorance”, if anything, that is highlighted by your example. She probably also believes that this case is going to make a difference in the rate of “innovation” of computer-implemented inventions. That’s also ignorant. That’s profoundly, deeply, laughably and ridiculously ignorant. It will make a difference only in the number of cr-ppy patent computer-implemented method claims that are filed.

    Remember, we were told many times that this type of computer-implemented g—bage was the linchpin of the American economy. How bad did the stock market tank? LOL.

  85. How about instead the Courts stop trying to write law under 101 and get their d_@mm fingers out of the patent pie?

  86. For 50 years, courts have tried, but failed miserably, to interpret section 101. It’s obviously too much for the courts to handle. Time to think about a rewrite.

  87. The order I set out is absolutely important if “new” means “novel/nonobvious” in the 102/103 sense

    Please explain why that is the case. I suspect you are confusing my analysis with an analysis that looks at each eligible claim element individually, divorced from the other steps in the claim. That’s now how the analysis works.

    Here’s some easy examples:

    1. A method, comprising
    [obvious, eligible series of steps]+
    [thinking non obvious thought].

    That’s an ineligible claim.

    1. A method comprising
    [thinking non obvious thought]+
    [obvious, eligible series of steps].

    That’s an ineligible claim.

    1. A method comprising
    [obvious eligible series of steps A-C]+
    [thinking non-obvious thought]+
    [series of eligible steps that are non-obvious only when preceded by the obvious series of steps A-C]

    That’s eligible.

    Here’s a curveball for you:

    1. A method comprising
    [obvious eligible series of steps]
    [thinking non-obvious thought]
    [when non-obvious thought is X, do nothing]
    [when non-obvious thought is Y, do non-obvious eligible series of steps]

    That’s ineligible.

    Let me know if you have questions.

  88. James: why is it so difficult for some people to understand that not every invalid patent has to fail 101

    I’m not aware of anyone who has made that assertion, James, so I can’t answer your question.

    There’s no room in 101 for importing a 102/103 prior art or obviousness analysis.*

    Well, James, you’ve had this explained to you before but here goes again. Maybe this time it will stick? Haha. Of course it won’t.

    Let’s start with the basics. You agree that a claim that protects ineligible subject matter is ineligible, correct? Right. Of course you do. That’s why I can’t claim a “A method, said method comprising thinking [insert new non-obvious useful thought]” (call this claim 1a).

    On the other hand, you would agree that “A method, said method comprising drinking one cup of coffee per day” is certainly eligible. Anticipated, undoubtedly, and therefore invalid. But eligible.

    So, according to your mistaken understanding of how things should work, the following claim is eligible:

    1b. A method, comprising drinking one cup of coffee per day and thinking [insert thinking new non-obvious and useful thought].

    Okay, James, so let’s imagine we live in your awesome fantasy world where that claim is eligible. Let’s call it … Europe. But it’s really the US. Is the claim invalid? Explain why and provide the “controlling case law”. If the claim is valid, explain to me how such a claim can be distinguished in practice from a claim that protects just the new, non-obvious thought (i.e., claim 1a, above). In your answer, assume that I (like millions of people) drink one cup of coffee per day.

    Take your time, James. For some people, this is like rocket science, except way, way more difficult. For most people it’s really easy, though.

  89. Moore did a fantastic job of it.

    Per Lourie’s test, a claim reciting: “A computer including a processor and a memory.” is eligible under 101, while a claim reciting “A computer including a processor and a memory storing software configured to enable the computer to add 1 + 1″ is not eligible under 101.

  90. Define your use of “new.” The order I set out is absolutely important if “new” means “novel/nonobvious” in the 102/103 sense or if “new” means something else that you’re not defining.

  91. I think what this shows is that we have not held the fort.

    Fort? More like a giant house of cards.

    You can’t say you weren’t warned in advance.

  92. It’s difficult to understand because it doesn’t make any statutory sense. 101, 102, and 103 are separate. There’s no room in 101 for importing a 102/103 prior art or obviousness analysis.* Trying to do it via the judicially created exceptions (themselves already questionable) is going beyond exceptions and rewriting the statutes outright.

    The language of 101 is very clear. If an invention is a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” then it’s patent eligible. Full stop. There’s nothing in there about “…unless that improvement is insignificant, conventional, or routine.” That’s 103′s job.

    The bigger question is why is it so difficult for some people to understand that not every invalid patent has to fail 101?

    * The word “new” in 101 simply refers to 102. It’s not a separate novelty requirement.

  93. This opinion is so laced in ignorance.

    Then it will be easy for you to show everybody an example. Copy a passage from Lourie’s opinion and reproduce it here and explain to us why it is ignorant.

    Go ahead. I already did that myself upthread but I disagree with you about the extent of the mistakes (and the mistake I noted does not affect the decision).

  94. So, to be clear

    The order of the steps is not important. In claim which recites ineligible subject matter, the relationship of any eligible elements in a claim to the prior art is key. Typical computer-implemted g—bage such as the claims at issue in this case recite a computer that receives, ranks/sorts/stores, and transmits stuff: old conventional insignificant baloney. The question then is: what’s new? “Sending a virtual friend a message with information about something he/she should buy”? “Ranking email by the importance of the person who sent it to me”? “Creating a list of TV programs that were not watched?” If so, you’re up s—t creek without a paddle, at least in terms of obtaining the right to tell me what I can and can’t do with a computer. And that’s an awesome thing. Maybe the PTO can focus on examining actual inventions instead of abstract wanky hor—-t.

  95. Yes, you are on your little sugar high. But, I think it is not as great as you think. This opinion is so laced in ignorance. I guess there is hardware and then there is software and they aren’t interchangeable after all. I guess I have been dreaming all these years.

    I think what this shows is that we have not held the fort. WE should file a complaint against Lemley and fight this nonsense. Abstract? How can any decent person actually make a claim like this.

    It is a ferballzedetbal. That is what it is.

  96. espite their Beauregard format, Alice’s “computer readable medium claims” are thus equivalent to the methods they recite for § 101 purposes. In other words, they are merely method claims in the guise of a device

    But I can touch a computer disk!!!!

    We are not here faced with a computer per se. Such are surely patent-eligible machines. We are faced with abstract methods coupled with computers adapted to perform those methods. And that is the fallacy of relying on
    Alappat, as the concurrence in part does. Not only has the world of technology changed, but the legal world has changed. The Supreme Court has spoken since Alappat on the question of patent eligibility, and we must take note of that change. Abstract methods do not become patent-eligible machines by being clothed in computer language.

    Judge Lourie just got “unfriended” by a lot of patent t–baggers. The good news is that there is no way such an act will ever be considered eligible subject matter again by any reasonable person with a straight face.

    Maybe something will actually happen with the backlog now. Hooray!!!!!! David Boundy can take a vacation.

  97. Lourie: with the term “shadow record,” the claim uses
    extravagant language to recite a basic function required of any financial intermediary in an escrow arrangement tracking each party’s obligations and performance. Viewed properly as reciting no more than the necessary tracking activities of a supervisory institution, the steps relating to creating a “shadow record” and then obtaining and adjusting its balance are insignificant ‘[pre]-solution activity

    I felt a disturbance in the force, like a million “social network” patents screaming at once.

  98. Looks like Lourie et al. are still struggling with the basics here:

    Thus, the Supreme Court used the language “routine”
    and “conventional” in Mayo to indicate what qualities
    added to a natural law do not create patent eligible su
    bject matter. We do not therefore understand that language to be confused with novelty or nonobviousnes s analyses, which consider whether particular steps or physical components together constitute a new or nonobvious invention. Analyzing
    patent eligibility, in contrast, considers whether steps
    combined with a natural law or abstract idea are so insignificant, conventional, or routine as to yield a claim
    that effectively covers the natural law or abstract idea itself.

    When determining whether the only eligible step (or series of steps) in a claim are “insignificant, conventional or routine”, one necessarily compares that step (or series of steps) to the step (or series of steps) in the prior art. There is no other way to perform the analysis. What does Lourie think “routine” means? What does Lourie think “conventional” means?

    If a claim recites ineligible subject matter (e.g., a step of thinking about a law of nature or an abstraction) and everything else in the claim is anticipated or non-obvious, the claim is ineligible. Done. Why is this so difficult for the Federal Circuit to undertand?

  99. Let’s all not forget that we got here by the Benson court trying to say this was a law of nature. They were finally laughed out of the court in the early 2000′s and now they resurrected these arguments under “abstract.”

    Abstract: what? Please.

  100. Lourie puts the “threshold test” nonsense to bed. THANK YOU!

    >[S]ome have argued that because 101 is a “threshold test,” Bilski, 130 S. Ct. at 3225, district courts must always consider subject matter eligibility first among all possible bases for finding inv alidity. That is not correct. District courts are rightly entrusted with great discretion to control their dockets and the conduct of proceedings before them, including the order of issues presented during litigation. …In addition, district courts may exercise their discretion to begin elsewhere when they perceive that another section of the Patent Act might provide a clearer and more expeditious path to resolving a dispute.

  101. Dennis, I don’t know the answer to your question. I imagine that Judge Lourie and his colleagues in the plurality opinion would say that simply adding a web page to the claims at issue in this case would fall within the category of “merely tangential” limitations that are not sufficient to avoid the abstract idea exception.

    Which gets to your “however.” I acknowledge the point that the analysis of abstractness is independent of the analysis of obviousness. The opinion goes to some trouble to make that clear. But that doesn’t mean that the same facts can’t be used in the two different analyses. In other words, it may be “merely tangential” to add a web page to a claim now. But it might well have been a significant contribution ten or fifteen years ago. The analyses are not entirely orthogonal, and I don’t read the opinions to deem them so. Just different.

  102. So, to be clear, your solution is to require the PTO to examine a claim, initially ignoring 101, until the claim includes “new” elements not found in the prior art (to satisfy 102 and 103), and then determine whether those “new” elements not found in the prior art are themselves “eligible subject matter” under 101?

  103. The ever-shrinking case of Diehr gets another backhand:

    in contrast, in Diehr the claimed process incorporating the Arrhenius equation also called for steps including “constantly measuring the actual temperature inside the mold,” a step that was said to be new in the art. See id. at 178–79.

    LOL. Anyone want to be that the facts before the Supreme Court in Diehr were accurate?

  104. Seems like what Lourie (who will live in infamy with Douglas and Stern) said is not much different than Bilski.

    The test: if some dirtbag can figure out some commonsense way of explaining what you are doing, then it is abstract. So, we need to write patent applications now to be obtuse.

    So, according to Lourie if door hinges didn’t exist, then I could not claim them now as they would be too broad, or fiber optic cable, etc.

  105. Nice summary of Benson in footnote 2:

    Claim 8 required a computer on its face, but the literal terms of claim 13 were not so limited. See Benson, 409 U.S. at 73–74. The CCPA, however, had interpreted both claims as requiring a computer and had upheld them on that basis, see In re Benson, 441 F.2d 682, 687–88 (CCPA 1971)

    LOL. Heckuva job, CCPA.

  106. Lourie: what is needed is a consistent, cohesive, and accessible approach to the §101 analysis a framework that will provide guidance and predictability for patent applicants and examiners, litigants, and the courts. As set forth below, the Supreme Court’s foundational §101 jurisprudence offers the guideposts to such a system, one that turns primarily on the practical likelihood of a claim preempting a fundamental concept.

    Right. And the easiest test in the world to apply works in the fllowing way: look at whether the claim recites a series of old/conventional steps or an old/conventional composition (e.g., “a computer” or “a medium readable by a computer” or “a network of computers and/or peripheral devices”). Then look at whether the new elements are themselves eligible subject matter. If the new elements are not eligible subject matter, then the claim is not eligible because for practical purposes (e.g., from the standpoint of a member of the public freely practicing the prior art) the claim is protecting ineligible subject matter.

    It doesn’t get any easier than that. Even an Examiner at the PTO or a newbie patent agent can figure that out. I’ve explained it to people who have never seen a patent before and they get it.

  107. So what happens in Ultramercial v. Hulu?

    link to patentlyo.com

    It’s a method of providing free information to a person if that person looks at an ad. That’s ancient, of course. Oh but wait! this is COPYRIGHTED content. Ooops, that’s also old. Oh but wait! It uses a POWERFUL COMPUTER BRAIN to “facilitate” the exchange. And because I can touch a computer, that method must not be abstract. Isn’t that what Judge Moore argued so eloquently? Oops.

    Tricky bit here, of course, is that Judge Lourie was on the panel that upheld the eligibility of Ultramercial’s cr-ppy claims.

  108. DCthe decision is also clear the abstractness of an idea is not related to whether it is already well known in the art.

    Sadly, some people needed judges to explain this. And they still will do everything they can to pretend they don’t “get it.”

    “Creating an obligation” between two parties is an abstraction. No, it does not become less abstract

    when you identify the obligation specifically (X owes Y an amount of money determined by the formula $ = 2.143 * (x/y)) or

    when the parties are identified specifically (“wherein one party is named Jim and lives in Florida and the other party has a last name that begins with Q, R, or W”) or

    when the claim is “limited” to some pre-existing context (“wherein the obligation is created on a plane”; “wherein the obligation is recorded in a database accessibly by a hand-held device”; wherein the obligation is communicated to a social network from a self-driving car”; etc)

    Like I said, it’s pretty sad things ever got this far. I’m sure some Congresspeople in Orange County got some awesome phone calls today from their patent t–b-gger constituents. Time to turn that Propaganda Machine up to 11!

  109. the software industry itself has moved far beyond simply automating work that used to be done by people. How is a web page an automation of anything?

    Web pages are pretty old. What is the web page doing in your devastating hypothetical?

  110. NWPA those that don’t know science

    “Science” has absolutely nothing at all to do with the “invention” at issue in this case.

    or have a hidden agenda.

    What’s to hide? The reasons for barring claims such as Alice’s from eligibility have been discussed ad nauseum. The only “counter-argument” is that some people who gambled on the exploitation of such patents are going to lose some money. The real wankers will clutch their pearls and say that the case represents “devastation” to the “software industry.”

    Tell me: did the stock market crash? Because the same wankers have been telling us for years that this industry is the only thing holding the economy up.

    So did the stock market crash? Surely the stock market must have crashed. Anyone jump out of a building yet?

    Nope. Just some p-tent t–b-ggers weeping and moaning about the super complicated “science” of settling a dispute between two parties. Nobody could have predicted.

  111. CJ Rader: “Thus, in context, equating the personalized medicinal effect of a human-created pharmaceutical in patients of different metabolic rates and genetic makeups with the speed of light (or even gravity) is only possible in a netherworld of undefined judicial insights.”

    What was “possible” in the “netherworld of undefined judicial insights” was explored to the depths by Judge Rader in two decisions: (1) In re Lowrey, when he defined unclaimed “bits of information” as “the essence of electronic structure” and (2) Prometheus v. Mayo, where he pretended that a method of thinking about the result of an old method was a new, patent-eligible method of “treatment”.

  112. “And let’s be clear: if all of these claims, including the system claims,are not patent-eligible, this case is the death of hundreds of thousands of patents, including all business method,”

    Oh no! What will happen to business??????!?!?!??

  113. Judge Moore is in hysterics.

    Judge Newman complains about the popular press.

    Judge Rader tells a story about his boyhood.

    It reminds me of Christmas with all my weird aunts and uncles.

    Christmas in May! The weather is nicer, that’s for sure.

  114. I would say, avoid CRM and method claims, and rely on system.

    Right, because a “system” defined by its abstract functionality is clearly eligible.

    I have some better advice: if you want to play at the Great Patent Casino, find another “paradigm”.

  115. Jeffrey: sure that is there. Of course. But, what is the test? I don’t see any test that I could in anyway hope to advise clients with.

  116. Rader: As I start my next quarter century of judicial experience, I am sure that one day I will reflect on this moment as well. I can only hope it is a brighter reflection than I encounter today.

    Well, Reandy, we had to live with your b.s. about “the essence of electronic structure” for almost twenty years. Good riddance.

  117. Agreed. The question comes down to: “Is this software an abstract idea?” If yes, not patent-eligible. If no, patent-eligible.

    What a waste of resources to get back where we started.

  118. Query, “majority opinion…” now there’s the rub. It appears the court does have a majority for the method and CRM claims. It divided 5-5 on the system claims.

    I would say, avoid CRM and method claims, and rely on system.

  119. Michael – I agree with you that the decision continues to allow for patenting of software. However, the decision is also clear the abstractness of an idea is not related to whether it is already well known in the art. Regarding your web page analogy — do you think for a second that adding a web page to this patent would somehow make it patent eligible?

  120. But, Michael, a declaration by judges that something is abstract? That is criminally against our judicial system. I mean that. It breaks our system to apply a judicial exception to take property and circumvent Congress.

  121. “that could have been performed by people”: I think the Church-Turing Thesis tells us that this all software.

  122. My $0.02

    I think Dennis may have mistitled this post. Even the plurality opinion leaves a lot of room for software to be eligible subject matter. The way I read it, the category of software patents that are at highest risk by the plurality opinion are those in which the method (CRM, system, etc.) covers an abstract idea that could have been performed by people (assuming people had memory and processing power like computers) without more. But even a software patent that claims an abstract idea might still be eligible so long as in addition to the abstract idea, the claim covers something else, which the plurality emphasizes must be practical and tangible (slip at 20).

    Like the financial services industry, there are many industries in which software is being implemented to do things that people have done for a long time before computers were invented, but not as efficiently. I would agree that CLS Bank categorically denies eligibility to claims that seek the exclusive right to automate with software.

    But the software industry itself has moved far beyond simply automating work that used to be done by people. How is a web page an automation of anything? CLS Bank is equally categorical in its recognition that even incremental improvements to software may be eligible.

    The way this comes out actually feels a lot like KSR. There isn’t an easy rule for defining whether something is obvious or abstract. Every idea has a story behind it. One way to read the opinions in both cases is that you have to hear the story before you decide the issue. You can’t decide the issue in the abstract looking only at what is claimed.

  123. “That depends entirely on how it is claimed”

    You might want to actually read J. Lourie’s opinion.

    Just saying. :-)

  124. Just can’t wait to get more of those Obama appointees in there. One even taught a course at HARVARD on patent law! Wow!!!!! I am sure he will add so much.

    What a stinking world.

  125. And let’s be clear, if this is ineligible under 101 so is a program that can drive a car, write a SCOTUS brief or decision, etc.

  126. The good professor wrote:
    “While none of the opinions garnered majority support, seven of the ten judges agreed that the claims lacked subject matter eligibility”

    But, count 5 to 5.

  127. CJ Rader: “Thus, in context, equating the personalized
    medicinal effect of a human-created pharmaceutical in
    patients of different metabolic rates and genetic makeups
    with the speed of light (or even gravity) is only possible in
    a netherworld of undefined judicial insights.”

    Or by those that don’t know science or have a hidden agenda.

  128. I think the point is the panel is split on the eligibility of the system claims, but, as a result, the lower court is affirmed.

  129. Hang on: I get Moore, Newman, Rader, Linn, and O’Malley would all hold these eligible under 101.

  130. “He has been described as having a ‘pro-patent outlook’ in the book Innovation and its Discontents by Harvard Business School professor Josh Lerner and by Brandeis economics professor Adam B. Jaffe.[1]”

    Lourie: a chemist apparently is like MM. I think we have found MM’s idol.

  131. The Honorable Judge Moore wrote:

    “And let’s be clear: if all of these claims, including the system claims,are not patent-eligible, this case is the death of hundreds of thousands of patents, including all business method,”

  132. One page of opinion. 134-page airing of grievances.

    Judge Moore is in hysterics.

    Judge Newman complains about the popular press.

    Judge Rader tells a story about his boyhood.

    It reminds me of Christmas with all my weird aunts and uncles.

  133. J. Rader’s dismay does not bode well—it is an ill omen of what is to come with Obama appointments. Wiper indeed!

  134. You may ask yourself, how do I work this?

    Same as it ever was, same as it ever was.

  135. It’s SCOTUS precedent for 101 cases to come up with nearly as many opinions as there are people hearing the case. Good to see the CAFC sticking by that for once. ;)

  136. My comments will be held in abeyance until I can digest the 135 pages of what appears to be mostly judicial activism at best and judicial law writing at worst.

    However, the Chief Judge’s expressed sadness and dismay at his colleagues does not bode well.

  137. It seems we have an en banc Federal Circuit case that actually tries to understand and follow the prevailing Supreme Court precedent on 101. Severn different opinions though does illustrate that the Supreme Court has not be crystal clear, leading to the confusion.

    Good job, Judge Lourie.

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