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.

 


 

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

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

  1. Thanks NWPA. The Supreme Court should uphold the method, CRM and system claims as eligible, according to the statute. However it’s own precedent does not even go as far as saying machine claims are abstract, so I think we will at least get those claims back. This was just one battle and the war goes on. Onward and upward!!

  2. Read it. Excellent post! This why I believe the decision will be overturned. The Supreme Court does not like the CAFC making up it’s own laws, only the Supremes can do that. Just Saying also make an excellent post as well showing the legal errors of Lourie. It’s also funny to see the anti’s losing badly on this blog in the wake of a favorable decision to their cause.

  3. Corrected:

    But what if Alice doesn’t elect to take it to the SCOTUS?

    Seems like most assume they will do so, but what’s the result(s) if they don’t?

  4. But what if CLS Bank doesn’t elect to take it to the SCOTUS?

    Seems like most assume they will do so, but what’s the result(s) if they don’t?

  5. writing the typical computer-implemented claim is not difficult at all.
    and your point is? Claims are meant to distinguish the invention from the prior art — not to enable the invention. This is basic patent law.

    you really need to disabuse yourself of the notion that a typical educated person “doesn’t understand software.”
    That is funny. I’ve been exposed to computers since the late 70s and software patents for many, many years. The scope and breadth of software is so expansive that no one can really have a good grasp on everything that is going on. I’m sure you (and the vast majority of people) have little idea of the extensive amount of technology that is employed for you to send an email from one person to another. I’m sure you probably don’t understand how the patently-o website works. You may have been sending messages in the early 80s (as was I), but the technology being employed today is a different as the Boeing 787 is from the biplanes of the 1910s.

  6. without being accused of one of two failures: (1) you don’t understand software or (2) you don’t understand the law
    If you don’t understand the facts, you cannot apply the law. Your comments are evidence that you don’t understand the facts.

    regardless of the fact that computer-implemented claims recite the same steps that could be used to describe a mental process
    When broadly written, the steps can seem the same. However, in actuality, how the steps are performed entirely different. Flying in an airplane and flying in a balloon is both flying. However, they are not the same. Sending an email and not the same as sending a piece of snail mail. While a written message gets conveyed from one person to another, how it is accomplished is extremely different. Until you recognize that difference, ALL your comments are tinged by willful ignorance.

    The rest of your comments are belly-aching so nothing worth much responding to.

  7. With seven opinions, this one screams for the Supreme Court to take it up and tell us EXACTLY what the standard should be for determining if a patent claims an “idea only” or a thing that implements an idea.

  8. 6,

    you are a step ahead of Ned and Malcolm on this point.

    While not a huge feat, it does mean that you are a step closer to the right direction.

  9. endless w-nking and kvetching

    The irony: this comes from the sites biggest crybaby and w-nker.

  10. I have been. All you need to do is listen.

    But you have shown no ability or desire to do so.

    Your loss.

  11. 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.

  12. Ned,

    That is most definitely NOT the right answer about the precedence of this case.

    C’mon man, use that resource that you yourself supplied regarding how case law derives from holdings and not dicta.

    THINK

  13. “First they ignore the “claim as a whole” requirement and distill the invention down to a “gist”. Then they declare the gist abstract “escrow” because it is old.”

    I’m pretty sure that they take pains to not do both of the things you accuse them of doing. You should really read the decision.

    ” It is not a necessity to establish the recited shadow accounts and post the shadow transactions to the shadow accounts as recited in the claims. You can just hand the deed/title and check to an agent”

    So then it is the abstract idea of an escrow tarted up with “shadow accounts” mirroring doing what you just said you can do with an agent correct? Just like Lourie said? And invalid just like Lourie said?

    If you answered yes to the above, I concur.

  14. “I think we have to face the fact that Lourie–at least–has no intention of applying the law”

    It is a fact that Alice claims were not a disembodied concept until Judge Lourie “disembodied” the concept.

    Thus it is a fair question to ask, on what legal authority did he act?

    No one in this 200 plus thread has addressed the above or apparently has any answer.

  15. Yeah I posted this before I realized that it was per curiam and the effects of that.

    Still, “not following” this “decision” is simply refusing to follow DAT LAWL laid down by the USSC very much prior to this decision. Lourie’s position, aka my position tarted up really nice, has been the lawl of the land at least since Flook, and actually more or less since Benson. Refusal to follow it is simply a black eye on the face of the PTO, a corrupt black eye.

  16. No prior Federal Circuit case involving these very same issues can be considered good law on a going forward basis.

    “Good law” like In re Lowrey? Good riddance.

  17. 6, I can understand that. There is no majority opinion.

    But where is the law now? How can we say there is any law at all on this exact issue other than the Supreme Court cases themselves? No prior Federal Circuit case involving these very same issues can be considered good law on a going forward basis.

    What a mess.

    The SC caused the problem by not clarifying whether the Bilski claims were abstract because they manipulated abstractions such as risk, or because they did not recite a computer.

    They have to take this case just to make clear their meaning.

  18. Congrats on getting one right. We Americans aren’t opposed to going with what works.

    We don’t need experienced litigators, just experienced practicioners generally.

  19. Time to retire under The Mango Tree and pick the many nits of sheepskin from my ever-growing navel. Et cum spiritu tuo.

  20. Gene Quinn fires up the propaganda machine:

    The import of this is that machines are specifically patent eligible subject matter

    So are “processes”, Gene. And “pencils” are compositions. Need I go on?

  21. MM: you were wrong about Prometheus so stop pretending you are an “expert” on 101 issues.

    101 Integration Expert: Actually, I was the first commenter on the this blog to go on record and say the Prometheus 101 holding was based on the legal doctrine of “Integration” and not turn on dissection. You first ignored the theory for quite some time then resorted to attacking it, me, and even at one point dismissing the entire legal precept of integration as just a word, or at best dicta. And now, as the following record clearly demonstrates, an entire patent community of legal experts, scholars, and authorities have acknowledge “Integration” as an integral part and legal substrate on which the 101 statutory subject matter analysis occurs. While in the interim not a single one has ever acknowledged or provided validation for any of your various mental steps dissection theories.

    Integration Table of Authorities 2012-2013

    All nine Justices of the Supreme Court of the United States:

    ” 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) ”

    Chief Judge Rader, and the dissenting panel of CLS Bank V Alice:

    “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)

    Dennis Crouch, Associate Professor University of Missouri School of Law:

    Most Section 101 subject matter eligibility problems can be cured by “INTERGRATION” 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. [Patents Encompassing a Human Organism] Patently O, The Nations leading patent blog. ] (Emphasis Added

    Andrew H Hirschfeld, Deputy Commisioner of Patent Examination Policy:

    “ D. INQUIRY 3: Practical Application and Preemption

    Does the claim include additional elements/steps or a combination of elements/steps that “INTEGRATE” the natural principle into the claimed invention such that the natural principle is practically applied, and are sufficient to ensure that the claim amounts to significantly more than the natural principle itself? (Is it more than a law of nature + the general instruction to simply “apply it”?) ……A claim that focuses on use of a natural principle must also include additional elements or steps to show that the inventor has practically applied, or added something significant to, the natural principle itself. See Mayo, 101 USPQ2d at 1966. 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. ….. It is not necessary that every recited element or step “INTEGRATE” or relate to the natural principle as long as it is applied in some practical manner. However, there must be at least one additional element or step that applies, relies on or uses the natural principle so that the claim amounts to significantly more than the natural principle itself. Elements or steps that do not “INTEGRATE” the natural principle and are merely appended to it would not be sufficient. In other words, the additional elements or steps must not simply amount to insignificant extra-solution activity that imposes no meaningful limit on the performance of the claimed invention. See id. at 1966” [link to uspto.gov ] (Emphasis Added

  22. First they ignore the “claim as a whole” requirement and distill the invention down to a “gist”. Then they declare the gist abstract “escrow” because it is old.

    The claimed method is not co-extensive with the abstract idea “escrow”. It is not a necessity to establish the recited shadow accounts and post the shadow transactions to the shadow accounts as recited in the claims. You can just hand the deed/title and check to an agent…

    idiots.

  23. It is according to the insane logic of this court.

    A method of driving a car is all mental steps except for insignificant post solution activity (turn the wheel, apply brake, etc…).

    A claim to a computer method for driving a car would wholly preempt all car driving.

    A system that implemented the method would just embody the same abstract idea.

  24. The PTO cannot follow any of the opinions, as they have no precedential effect whatsoever. See Rader’s footnote 1.

  25. Total confusion.

    Tough times for business — this mess coupled with PTO budget cutbacks. All those applications, going nowhere fast.

    You all might want to tell your clients to tell their Congressmen to ante up some cash for the Patent Office… or to tell the White House to quietly drop the PTO sequester hit, whatever.

  26. There is one school of thought that trumps both of those: The Supreme Court – let me remind you:

    Bilski: MoT not required.
    Prometheus: MoT not sufficient.

    Please do not attempt to ressurect your anti-business method or MoT crusades.

  27. in horror is hardly to be construed as authorization

    You need to realize that Stevens lost in Bilski.

    He tried to rewrite what Congress did – just as you are now attempting.

  28. Sorry I wrote this comment before I had gotten to read the decision. I’m just now finishing it up. You’re pretty much correct that a lot of rhetoric was covered, though some rhetoric, such as NWPA’s gets only passing coverage by one lone judge it appears.

  29. Do you all think it is likely the plaintiff will appeal given the likely result at SCOTUS? If they don’t appeal, can anybody else appeal? If they can, is that likely?

  30. Did you have anything intelligent to say to my post? Do you really think that “but for” is the only reason for patents?

    Or do you merely insist at charging at the red cape of “anon says?”

  31. anon, regardless of what congress intended to authorize (and reacting in horror is hardly to be construed as authorization) there remains two schools of thought about what made the Bilksi claims abstract.

    1. Lourie and 4: The escrow idea is abstract.
    2. Rader and 3: The claims are abstract because they are not tied to a machine.

  32. Lourie’s approach and the holding in the case is in conflict with Prometheus

    Sure it is. Just like any decision finding the Prometheus claims ineligible had to be “in conflict” with the holding in Dierhr. We heard this story already, 101E. You told it to us already a billion times except you got the ending wrong.

    The legal philosophy and application of 101 is one of inclusion and “Integration” not exclusion and dissection.

    Sure it is. Dissection and exclusion is only for 103! Just like the statute says. In other news, you were wrong about Prometheus so stop pretending you are an “expert” on 101 issues. You never were. You aren’t now. You never will be.

  33. Lies are told because sometimes (a lot of times – sadly) they work.

    Oh my, Trollboy! Imagine if one of your “enemies” had such a thing. Imagine what you’d say about them.

  34. “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, financial system, and software patents as well as many
    computer implemented and telecommunications patents.1”

    Judge Moore stating what should be so :) It is too bad she rails against progress :(

  35. Just fyi guys, apparently the PTO declines to follow the leading opinion and instead will be “studying” the decision more. So declareth Andrew H. Hirshfeld, who, coincidentally I think is probably ashamed of his agency. But that is just my opinion of what he must be feeling.

  36. “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.”

    Oh Rader, such drama! It’ll be fine bro.

  37. Whew, I take one day off and all of a sudden the CAFC goes spouting my rhetoric in its official proclamations!

    “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. ”

    Amen bro.

    Can’t wait to get into this guy a bit further.

  38. Squint as hard as I can

    Pretty sure your mom saw you squinting harder that one time when she came into your room without knocking first.

  39. bored: “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.”

    By whom

    By whom? By anon aka Trollboy aka the yapping puppydog who’s tailing you right now.

    Screening email for spam is extremely difficult

    Programming computers to do perform complicated information processesing tasks can be extremely difficult! Nobody disagrees with that … except for the softie woftie patentistas when it serves their purposes to assert otherwise. The point, Mr. Bored, is that writing the typical computer-implemented claim is not difficult at all. “A computer, wherein said computer receives [insert label for information to be received], wherein said computer determines that [insert label for information to be sorted out], and wherein said [insert label for information to be sorted out] is put in a different [insert fancy name for “folder”] from [insert label for remaining information].”

    Also, you really need to disabuse yourself of the notion that a typical educated person “doesn’t understand software.” Many of us college-educated types below a certain age grew up programming computers (and calculators before that) in grade school. I’ve been sharing electronic communication with people using a POWERFUL COMPUTER BRAIN since the early 80s, long before AOL or gmail or Twatter or whatever program the kids are using these days was a twinkle in anybody’s eye. So put a lid on the email server lectures, please. Sheesh, talk about “boring.”

  40. So in other words, “but for” is a canard.

    Thanks Malcolm – chalk up another admission that toasts one of your agendas.

  41. LOL – tell me Malcolm (again, hence the LOL): is “configured to” structural language?

    hint: this is archived.

  42. bored f you knew just a little about software,

    Ooops, there he goes again! You see, folks, it’s just not possible to disagree with the s-ssypants softie woftie patent protectors without being accused of one of two failures: (1) you don’t understand software or (2) you don’t understand the law.

    Now our li’l softie woftie patentistas are clinging to the notion that because computers and brains are sooooooooo different from each other that, regardless of the fact that computer-implemented claims recite the same steps that could be used to describe a mental process (and in fact would literally read on mental processes in some cases were it not for the recitation of “computer”), these “inherent” differences mandate the patent eligibility of computer-claims. You see, it’s simply cr-zy to compare computers or software with brains … unless of course you’re trying to sell that software to somebody. Ooops!

    As for the rest of “bored already’s” comment, it’s just a quintessential example of how difficult it is for the pro-patent patentistas (1) to keep two thoughts in their head at once and (2) to articulate themselves coherently.

    It all depends upon how it is done.

    So says “bored already.” Thanks for the insight! What’s “it”? Who knows? What claim is he referring to? Who knows? All that matters is for “bored already” and his crew is the endless w-nking and kvetching about how “nobody understands” his very special “technology.”

  43. More of that vacuous accuse others crp, Malcolm: you missed the fact that Paul’s post applies to your rather usual ‘sniff’ and go posts.

  44. Circling back, I think it is manifest that business methods are not within the useful arts.

    apt choice of words for another ride on the merry-go-round.

    Sorry Ned, but nothing here changes the lesson from Bilski: Congress has explicitly allowed patents on business methods and you may not, cannot create a categorical exception that goes against the rule of law as set by Congress (no matter how often you ride the merry-go-round).

  45. I think it is more true than not true that startups need patents especially when they have new technology that will soon be copied by others if they are successful.

    That’s not what was asserted earlier. I agree that if a company’s “new technology” is easily copied, and if they have no way of keeping people from copying it besides patents, and the nature of their business is such that they will be easily outsold by copiers and run out of business, by all means get a patent on the “new technology”.

    This is not true of most businesses, of course. It’s true perhaps for a tiny, tiny fraction of new businesses.

  46. Do you have anything intelligent

    Paul Cole and I agree you are contributing nothing but hot air to the discussion, Trollboy.

  47. Rader’s other point also cannot be ignored: This decision – all 135 pages – is LARGELY meaningless.

    Sure it is, Trollboy. Keep telling yourself that.

  48. we can next stop patents from issuing on arbitrary rearrangements of atoms.

    I urge all the pro-software patinistas to please, please, please press forward with this incredibly compelling argument. It’s very persuasive because functional claiming of software apps/”readable-media” etc is exactly analogous to structurally claiming new compositions. Some people actually think there is a distinction to be drawn but you KNOW that isn’t the case because you keep bringing this awesome argument up! Please, never stop. It’s been working so well for you thus far, after all.

  49. Just saying, I think you detect the same flaw that I do in the reasoning of Judge Lourie. There might be some justification for preventing patents that effectively preempt all practical uses of laws of nature, natural phenomena and even mathematics as a matter of constitutional imperative. Thus it it is the constitutional command that patents not cover such subject matter because to do so would be to retard the progress of the useful arts rather than promote them, the preemption analysis makes sense.

    But when one is dealing with business methods, it simply is not apparent why there is a constitutional mandate that business methods be in the public domain lest the progress of the useful arts be retard ** ed.

    This harkens back to the central failure of the Bilski Supreme Court opinion. Just why were the claims in that case abstract? Clearly Lourie is of the view that they were abstract because “risk” is an abstract concept. I believe it is also clear that five judges on the court including Judge Rader believe that the problem with the Bilski claims was that they were not tied to a machine. These are two fundamentally different views.

    Circling back, I think it is manifest that business methods are not within the useful arts. That is why we can’t issue patents on them in the first place. Patents on technological advances that have a business application should be eligible, in my humble opinion, but not patents that essentially manipulate abstract concepts like risk or price or number are quality and the like.

    The 50-50 split here demonstrates that the Supreme Court needs to rethink, or at lease clarify, its position on business methods.

  50. Malcolm, I think it is more true than not true that startups need patents especially when they have new technology that will soon be copied by others if they are successful. I give you SanDisk is one example. Their breakthrough technology was a new type of NAND-flash cell. Had they not patented that cell, SanDisk would not have been the company it is today. Trust me.

  51. When SanDisk was still SunDisk, and Eli Harari was young, I represent are one of those investors. The fact that SanDisk had heavily invested in patents was extremely important . Eli Harari had invented a brand-new type of flash memory cell. It revolutionized the flash memory business. Had he not had patents, that new flash memory technology would have been soon copied by others leaving SanDisk in the dust.

    But Eli had invested in patents, and had invested heavily. That has paid off handsomely for his company. SanDisk is where it is today not only because of the invention of the NAND-flash cell, but because of the patents that protect it.

  52. “Do you have a patent?”

    That’s every savvy investor’s first question. It’s obvious who has dealt with startups, spinoffs, investor relations, etc. (hint: It’s not Reinier Bakels)

  53. Squint as hard as I can, I see nothing of substance in your response, Malcolm. Please try harder to actually say something.

  54. It’s too early to tell if the Court thinks Myriad’s invention actually has a new function that is not inherent in the original material.

    (yes, I know that’s not the example you were thinking of)

  55. try to keep your giant head away from sharp objects.

    (sigh) – there goes Malcolm, accusing others of that which has been used to describe him. His ego as a balloon metaphor cheaply attempted to be co-opted.

    Do you have anything intelligent (or original) to say, Malcolm?

  56. Did you have anything intelligent to say to my post? Do you really think that “but for” is the only reason for patents?

    Or do you merely insist at charging at the red cape of “anon says?”

  57. NWPA: You’re forgetting the principal advantage of computers: speed. There are many processes that depend on the calculations being carried out quickly. A case on point is calculating your location from GPS satellite signals: SiRF Technology, Inc. v. International Trade Com’n, 601 F. 3d 1319, 1333 (Fed.Cir. 2010).

    Whenever possible, patent drafters should give attention to the advantages provided by a computer implementation of the “abstract” process.

  58. Sorry for not being clear enough. What I meant was the established caselaw of the EPO, that assesses eligibility without reference to the prior art (so that a claim to “A computer programmed to perform (business method X)” for the EPO has “technical character” and thus is eligible.

    At the EPO, the flaim fails on patentability because it has no technological novelty and because its subject matter is (in all fields that are technological) obvious, no matter how clever it might be in fields non-technological.

    Does the EPO still issue cr_p Claims? No doubt. But just how many slip through in today’s tougher times I don’t know. But this is more or less inevitable in an ex parte process. That’s what the Opposition process is for. And as there is no presumption of validiy after issue except the ordinary civil balance of probability it seems unjust to many people, not just applicants and their attorneys, to deny borderline cases their day in court.

  59. “Pure unadulterated self-serving h—sh-t”

    Translation (considering source): “truth”

  60. Malcolm’s “whatever” argument is one of the lamest – and at the same time most dangerous – legal positions to take on the subject.

    ROTFLMAO. It’s so scary when the application of two legal principles results in the same conclusion!!! and especially when someone points that out!!!!!! NIGHTMARE!!!!!!!

    waving your hands above your head and saying “in the end,” does not suffice for a discussion of the legal principles in action.

    Nobody’s doing that, Trollboy. Nice strawman, though.

    a complete surrender to lawlessness in that complete subjectivity with which it entails defies the very order that law is meant to provide.

    Amuse your confusion! Kookoo McLegalbutter never fails to satisfy.

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

    I’m not exactly sure what you referring to but seems to me the EPO is ahead of the US when it comes to screening out unworthy cr-p. They were certainly ahead of Rader when it comes to [oldstep]+[newthought] claims, a la Prometheus. Does the EPO still issue patents on unworthy cr-p in the computer-implemented arts? Pretty sure they do. Does that mean nobody should try to keep a rein on things, lest they risk “devastating” The Only Business That Really, Really, Really Matters to the World Economy? Of course not.

  62. Also, by adding “in practical effect,” you also don’t require actual preemption – just “sort of” preemption (what I call preemption-lite).

    A claim reciting using a pencil and paper to solve a math problem doesn’t pre-empt an abstraction (e.g., a purely mental process).

    Is that “pre-emption light”, too? Or should such claims be eligible for patenting in your opinion?

    A related question: in 2013, is there a real difference between reciting a computer generally to do what computers do and reciting a pencil and paper to do what a pencil and paper does? Recognize that the computers (or “readable media”) in these claims are claimed purely in terms of their new functions. That’s not true of any other new compositions, machines or articles of manufacture (except one — everyone remember what that composition is?).

  63. Any seat-of-the-pants merchant who pontificates without going through the steps I have just outlined is contributing nothing more useful than hot air.

    Thanks, Paul. We’re all looking forward to your awesome contributions which are invariably far more thoughtful and correct than anything written immediately before or after these decisions. In the meantime, try to keep your giant head away from sharp objects.

  64. No, firms escape competition through leveraging their size, connections (sometimes through “good ‘ole boy” networks), and long-term contracts to exclude new entrants. Patents are always needed to provide new entrants a means to defeat these behaviors through innovation.

    Pure unadulterated self-serving h—sh-t.

  65. The “but for” position is a canard. It simply is a WRONG view of patents.

    HUMPTY HAS SPOKEN!!!! BOW DOWN!!!!!

  66. MM, your test is not what Lourie or the SC prescribes. Looking first to old elements may work in many cases

    “My test” doesn’t “prescribe” “looking first” at anything. It does require that ineligible subject matter be recognized somewhere in the claim prior to the final determination of ineligibilty of the claim. Otherwise, you can compare the claim to the prior art first or identify the ineligible subject matter in the claim first. It doesn’t really matter. Whatever’s easier. Whatever works. The important thing is to prevent obvious claims and/or claims that protect ineligible subject matter from ever being granted.

    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.

    Right. They are stuck on “computers are eligible so every claim beginning with “a computer” must be eligible!” And so, too, according to this reasoning, every claim beginning with “a book” is eligible. But somehow These Very Serious Smart People have no problem figuring out how their beloved “printed matter doctrine” (plucked directly out of 101) works to keep people from obtaining patents on “new” books that differ from “old” books by virtue of new markings placed on the pages (ignoring the ineligible element and looking at the remaining elements — imagine that! it’s like rocket science, when you think about it).

    The bottom line is that it’s 2013 and tossing in reference to a POWERFUL COMPUTER BRAIN along with its general functionality (receiving, storing, ranking/sorting/determining, transmitting) isn’t enough to convert “new” ineligible subject matter (abstract reasoning) into eligible subject matter, anymore than a pencil and paper would suffice to do the same or a list of “new” instructions on a piece of paper would suffice to do the same.

  67. I agree, MM. And we can next stop patents from issuing on arbitrary rearrangements of atoms. You want a patent, you come up with something *new*.

    Or, as Sagan said, “If you wish to make an apple pie from scratch, you must first invent the universe.”

  68. If I submit the following claim, under your test I can’t determine whether it is eligible because there are no “new” elements.

    1. A method comprising: Using a computer.

    That’s funny that you say that you can’t determine whether it is eligible or not. Since there is no ineligible subject matter in the claim, I’d say it’s eligible. It’s also anticipated. Any other “brainteasers”, eric?

    focusing on the eligibility of only “new” claim elements:

    Who’s test is that, eric? Not mine. I would suggest for 101 purposes that you focus on the ineligible elements and then look at the rest of the claim to see if the remaining elements.

    How can I know what is “new” and what is “old” in the art without that 102/103 analysis?

    You can’t, eric. But that part isn’t terribly difficult, is it? Computers are old. You do understand that, don’t you? Using a computer to receive, store and process information is old, too. You understand that, too, right? And you understand that you can’t patent something old merely by giving it a new name, right? These are the basics.

    it now appears that your test

    My test is the same as it ever was, eric. That’s why I was able to predict the outcome in Prometheus. That’s why I know these cr–py computer-implemented claims are likewise going down the t—let. That’s why I’m not “flabbergasted” by these CAFC and Supreme Court decisions. What’s “flabbergasting” in most instances is that the claims were filed and granted in the first place.

  69. It doesn’t take a lot of analysis to figure out the Lourie decision. It is Cybersource revisited. Let me explain how the Federal Circuit, based upon this decision, will decree a claim to be directed to non-statutory subject matter in the future.

    Step 1: Identify some abstract idea.
    Step 2: Disregard other limitations, besides those directly related to the abstract idea, as adding nothing of substance to the claim.
    Step 3: Conclude (after disregarding many of the claim limitations) that the claim effectively preempts an abstract idea is therefore directed to non-statutory subject matter.

    As described by Lourie, the “abstract idea” was “reducing settlement risk by effecting trades through a third-party intermediary (herein, the supervisory institution) empowered to verify that both parties can fulfill their obligations before allowing the exchange – i.e., a form of escrow.” IMHO, that is hardly an “abstract” idea – certainly not quite as abstract as Morse’s claim 8.

    Lourie also states “[f]irst and foremost is an abiding concern that patents should not be allowed to preempt the fundamental tools of discovery.” I would hardly call the “abstract idea” characterized by Lourie a fundamental tool of discovery.

    Lourie also presents the following analysis, “[t]hus, when § 101 issues arise, the same analysis should apply regardless of claim format: Does the claim, in practical effect, place an abstract idea at risk of preemption.” Of particularly note is the two sets of weasel words: “in practical effect” and “at risk of.” I think most would agree that a proper test might be “does the claim preempt an abstract idea?” However, by adding “at risk of,” actual preemption isn’t required – only that there is a risk of preemption. Also, by adding “in practical effect,” you also don’t require actual preemption – just “sort of” preemption (what I call preemption-lite). However, preemption-lite isn’t preemption – no more than a patent to an improved aircraft preempts the abstract idea of powered flight.

    As described by Lourie, a fundamental basis for one of the exceptions to statutory subject matter is the preventing the preemption of fundamental tools of discovery. However, Lourie has transformed the notion of preemption into preemption-lite. Preemption-lite, however, takes a greater bite of what constitutes statutory subject matter than justified by protecting fundamental tools of discovery. With preemption-lite, despite the alleged fundamental tool of discovery capable of being practiced without infringing the claim, Lourie would still deem it to be directed to non-statutory subject matter.

    Lourie had to use preemption as a justification. However, the claims did not actually preempt a fundamental tool of discovery (or abstract idea … however you want to describe it). As such, Lourie had to redefine what “preemption” meant so that preemption doesn’t require actual preemption. This isn’t the first time a Court has redefined a word. Let’s see if SCOTUS buys what Lourie is selling.

  70. 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.
    By whom? Screening email for spam is extremely difficult. A human can screen snail mail pretty easily. The manner by which a human understands content/context is very different than how a machine understands content/context. If it was as simple as mimicking a human being, we wouldn’t get spam, but we still do. That being said, an email server (as opposed to an email client) has information that a human wouldn’t have (and hence wouldn’t be able to act upon). Hence, we can have a spam filter that operates before the mail is delivered – you don’t have an analogous system with snail mail because all mail is required to be delivered.

    Despite analogous setting (e.g., snail mail versus email), humans have a different set of information to work with than a computer. As such, the algorithms used are differently.

  71. “Typically firms escape from harsh price competition by differentiation. Patents are only needed if there is no opportunity for differentiation”

    No, firms escape competition through leveraging their size, connections (sometimes through “good ‘ole boy” networks), and long-term contracts to exclude new entrants. Patents are always needed to provide new entrants a means to defeat these behaviors through innovation.

  72. Yup. It really is a mystery, that “public relations” thing.

    Lies are told because sometimes (a lot of times – sadly) they work.

    Not a mystery at all. That is the way it ‘is’ (regardless of what the definition of ‘is’ is).

  73. “I am disappointed that Moore and Rader didn’t dissent on the method and Beauregard claims. This abstract stuff is nonsense.”

    I agree!

  74. The “but for” position is a canard. It simply is a WRONG view of patents.

    If patents are the exception**, they are the exception that proves the rule.

    **It is difficult to truly consider patents an exception, given the FACT that the power to create the rules for having patents is embedded in our constitution. Thus, RB exhibits a baseline ignorance of the law that swallows up what he attempts to say.

    The anti-property line is very pungent with this one. There is no accident here in the views expressed being WRONG in the legal sense – RB wants a different legal system.

  75. He has every intention of applying his ‘law.’

    A (very large) part of the problem here is that the CAFC is trying to learn how to ‘apply’ patent law from how the Supreme Court ‘applies’ patent law.

    That is to say – how to insert (that is, write) ‘implicit guidelines’ into the law in order to follow their philosophies. As evidenced here: the nose of wax is rendered into seven different configurations, and only the most ardent follower of Cubism can make ANY sense of what is presented. Who to blame for this? Easy: the Supreme Court, who has made it clear that their exceptions to 101 (and not the actual rules of 101) will NOT be made a dead letter. In no uncertain terms they have told the Expert Court that no matter what you do, “We” will have the final say and lacking a operational Ouija Board, the Expert Court publishes this utter load of nonsense and tries to wipe its hands clean. This Expert Court was created explicitly to provide clarity. It fails in this regard so completely – it has been so emasculated – that its continued existence should now be questioned.

    Rader’s point in this – in its Occam’s Razor sharpest: What did Congress actually write.

    Rader’s other point also cannot be ignored: This decision – all 135 pages – is LARGELY meaningless. The per curiam decision only applies to the patent at hand. There is ZERO precedential value here.

    Supreme Court – you have your wish – the final say. At the very least (this time), try to say something that is intelligible and useful going forward.

  76. Please MaxDrei, Malcolm’s “whatever” argument is one of the lamest – and at the same time most dangerous – legal positions to take on the subject.

    Abdicating reason and simply waving your hands above your head and saying “in the end,” does not suffice for a discussion of the legal principles in action. It is the ultimate in banality – and a complete surrender to lawlessness in that complete subjectivity with which it entails defies the very order that law is meant to provide.

    In short: the ends NEVER justify the means. If there are multiple means, it does (and must) matter which ones are used.

  77. ….except that we can look to the decades long Argument between the UK and the EPO, over whether eligibility is better tackled with or without reference to the prior art, and to the fact that their common conclusion that it doesn’t matter because (as MM also points out in these columns) the result in the end is the same.

  78. Interesting observation in there Mr Bakels, that:

    “Patents provide artificial exclusivity that should only be granted if and when needed.”

    but it does beg the question:

    When is it “needed”?

    Many commentators here are worried, that there will be no more start-ups without their having something pending (or better, issued) at the USPTO to offer potential investors. These commentators are not so much bothered about the future of their own patent drafting firm, it seems. No, they are worried that the entire economy of the USA will dwindle to nothing, if start ups can no longer get the Investment they need, to get started.

    They assert that investors spurn offers that lack a patent portfolio. Investors walk away, they say, if such is not there.

    Are those other commentators right? I think they are, when the start up is in chem/bio, but not otherwise. What do you think?

  79. It is fundamental that a patent is not a means to appropriate the result of any brain-work. Patents rather are the exception to the rule of freedom of competition that is the core of our economic system. Patents provide artificial exclusivity that should only be granted if and when needed. Typically firms escape from harsh price competition by differentiation. Patents are only needed if there is no opportunity for differentiation. Protecting business methods eliminates competition itself. For lawyers it may be hard to acknowledge, but competition does cause damage, which is perfectly accepted. “Protection” is wrong, from that perspective.

    If “ideas” have a place in law, it best it is with a liability rule rather than a property rule.

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

    Actually what Prometheus said was this exactly:

    ” 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) ”

    The Supreme Court in Prometheus NEVER said to dissect claims down to an inventive concept, then declare that concept the invention, and then declare the invention an abstract idea. Which is exactly what these judges did in CLS V Alice Enbanc. ( See footnote 5 from the dissent )

    “Judge Lourie’s opinion takes the reference to an “inventive concept” in Prometheus and imbues it with a life that is neither consistent with the Patent Act’s de- scription of Section 101 nor with the totality of Supreme Court precedent regarding the narrow exceptions thereto. He concludes that “inventive concept” must refer to a “genuine human contribution to the claimed subject matter.” Lourie Op. at 20. He, thus, injects an “ingenui- ty” requirement into the abstract exception inquiry. It is inconceivable to us that the Supreme Court would choose to undo so much of what Congress tried to accomplish in the 1952 Patent Act, and to do so by the use of one phrase in one opinion.”

    In addition, the ruling panel also erred and misapplied the Courts line of 101 cases by failing to continue the Court precedent of using extra solution activity analysis ONLY when a process claim recites a bare or manifestly evident math formula, or law of nature. Benson, Flook, Diehr, and Bilski all expressly recited algorithms in the claims. Prometheus recited a law of nature. All of which are judicial exclusions. Alice made no such recitations therefore there was no justification to go on a judicial exception witch hunt. And even if the panel felt it was justified to go on such a hunting party and dissect the claims they additionally failed to follow the Supreme Court in Prometheus and put the claims back together and consider them as an inseparable whole in the concluding analysis to see if the sum of the claims were doing more than each individual part/step alone.

    See the Court at 11, “To put the matter more suc­cinctly, the claims inform a relevant audience about certain laws of nature; any additional steps consist of well­ understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.” ( Prometheus )

    Judge Lourie and company have totally rewritten the law and twisted and misapplied Supreme Court precedent. This decision must be overturned at the Supreme Court or our patent system will be in a wreck for decades to come.

  81. You quite miss the point then, Ned.

    “since the days of the Roman Empire” ==> NOT a 101 issue. If this is the basis for your view, then you are quite simply wrong for being right.

    This type of “whatever” is a blow against law. The kind of blow against law that results in a blow against freedom because this perverts law.

  82. The patent would have restricted the use of a business method that apparently was well known since the days of the Roman Empire. Striking this patent down was a blow for freedom. I cannot see it as a blown against freedom.

  83. “exactly the problem” is the intellectual dishonesty running rampant.

    You refuse to acknowledge the quote in Benson that goes expressly against what you advocate.

    You refuse to acknowledge the reality involved with what software is.

    You refuse to acknowledge the basic equivalence between software, firmware and hardware.

    You now engage in retread positions on “Business Methods” that took months of hounding you to abandon because you could never adequately address the facts and law presented against your position.

    You now claim that it is Rader that is elevating form over substance, when quite in fact, it is the other way around.

  84. you would realize that your “characterization” isn’t even close.

    Malcolm specializes in mischaracterizations.

    He is also King of the Strawmen (amongst other inglorious titles).

  85. anon, we shall see.

    Do you really, really think the SC will say that it is not OK to patent X method using a computer and OK to claim the computer programmed to do X method?

    This is exactly the problem with Rader’s views. He and his fellow deniers are elevating form over substance.

  86. a method of …. “using my brain” is not “entirely different” from “using a computer.”
    Nice strawman. If you knew just a little about software, you would realize that your “characterization” isn’t even close.

    Likewise, whether I use GPS or a map or my memory to find “Billy Bob’s Super Gas Station” makes no difference.
    It all depends upon how it is done. It does make a 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.
    Setting up a strawman village? If it gets you through the day.

    The manner by which the result is achieved” is not relevant at all to the analysis.
    You have no few k in clue. Seriously. If you truly believe this you should not be working for clients because you are mal practice embodied.

  87. I have met a number of US judges over the years, and can testify that they are very straightforward, serious amd well-meaning people. Not so different from the judges over here in the UK, or the Appeal Board members in the EPO. They all try to do a good job and reach a just decision based on the trial record before them.

    I know that there was a difference of opinion in the panel decision. Two judges thought that there was patentable subject matter and one did not. Both opinions were respectable. My impression at that time was that the majority opinion on the law was better, but that the application of the law to the facts was unconvincing and the outcome may have been wrong.

    Now we have 100+ pages of closely reasoned and conflicting opinions. Like all patent attorneys, I obsess about attention to detail.

    So here’s what I am going to do:

    Over the next week or two, and when I have some spare time I will re-read the patents in issue. Then I will re-read the panel decision. Then I will read the en banc opinion. Probably about 15 hours+ of reading. And I will try and figure out a highest common factor from the opinions and decide (a) if there are any discernable guiding principles, (b) if so what they are and (c) how day-to-day practice should be adjusted to cope with this.

    But at the moment I do not know. Any seat-of-the-pants merchant who pontificates without going through the steps I have just outlined is contributing nothing more useful than hot air.

    See y’all in a few weeks.

  88. In truth it is a VERY difficult area, but I have some respect for the EPO approach. And as we have had an Enlarged Appeal Board decision recently, we are unlikely to see fundamental change in Europe for a generation.

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

    Except Lourie’s approach and the holding in the case is in conflict with Prometheus and the totality of the Supreme Courts 101 jurisprudence. The legal philosophy and application of 101 is one of inclusion and “Integration” not exclusion and dissection. The justices in the minority did an adept job at pointing this out in their dissents.

  90. In conjunction with “the Supreme Court has not be crystal clear, leading to the confusion

    And taking Prof. Crouch’s “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.

    I echo the thought of my namesake at the Quinn blog:

    I wonder if this was purposefully done in order to punt it up to the Supreme Court with the thought “We are tired of expending effort that you throw out anyway – you guys F*d up 101 – you guys fix it.

  91. But all claim 2 covers is the method using the computer

    Still false.

    “Configured to” is structural language.

    Still is.

    Under Benson

    Why do you still say this and yet refuse to discuss the famous quote from Benson regarding EXPRESSLY what that case “does not so hold”?

    Stop the intellectual dishonesty Ned.

  92. and, generally, any business method.

    Ned, Must we ride the “Ned-Heller-Anti-Business-Method-Crusade merry-go-round yet again?

    Seriously, haven’t you yet learned your lesson on this topic? Wasn’t the defeat of Stevens in Bilksi enough for you?

  93. Eric,

    Two claims:

    1. Old Computer

    2. Old Computer configured to perform (novel, but abstract) X method.

    Per Moore’s complaint about Lourie: Claim 1 is eligible, 2 not. But, if claim 1 is analyzed for novelty, it fails. And, if claim 2 is analyzed for novelty, it passes.

    But all claim 2 covers is the method using the computer. That should not be patentable subject matter, and certainly is not under Benson and the other SC cases.

    But that is the result if one finds it eligible under 101. Any otherwise ineligible method can be made eligible by simply reciting a computer. Ditto a CRM. Ditto, the internet or any other commonplace apparatus that does not add any meaningful scope restriction.

    I hope you understand what really is going on here.

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

    Ned I already posted the answer to this (courtesy of my namesake at Quinn’s blog).

    Posted again here for your convenience:

    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.

    You are welcome.

  95. I submitted an amicus curiae pro se in CLS v Alice. I am deliriously happy with the ruling because the software industry will be rid of the software patent extortion racket.

    To the lawyers who view the death of the software patent extortion racket as a catastrophe I say, “See you in the Supreme Court.”

    ————————
    Steve Stites

  96. and (2) falls apart when you look at a claim that has no “new” elements.

    Good luck eric – this has been pointed out to Malcolm since the Prometheus decision first came out.

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

    LOL
    little
    circle
    ech0
    chamber

  98. What does Rush Limbaugh have to do with anything I said? One more political hack. I don’t pray at his altar (or anyone else’s, for that matter).

  99. 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 . . .

    So, Step 1 is to parse out a claim into old (known in the art) and new (unknown in the art) elements. This necessarily requires a 102/103 analysis. How can I know what is “new” and what is “old” in the art without that 102/103 analysis?

    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.

    Step 2 is to ignore the elements identified as “old” and determine the eligibility of the elements identified as “new.” The eligibility of the claim as a whole is determined based on the eligibility of “new” elements, not “old” elements.

    In other words, eligibility of “old” elements is irrelevant.

    But, forget all that, it now appears that your test is:

    Step 1: Determine the eligibility of each individual claim element.

    If all individual claim elements are eligible, then the entire claim is eligible regardless of what’s “new” and “old” in the art.

    If at least one individual claim element is ineligible, proceed to Step 2.

    Step 2: Perform 102/103 analysis.

    Step 3: If all claim elements are “old,” reject under 102/103 and forget 101.

    Step 4: If at least one claim element is “new” (i.e., passes 102/103), then determine if that “new” claim element is eligible.

    Step 5: If all “new” claim elements are ineligible, then the claim is ineligible.

    Examples:

    1. A method comprising:
    [eligible step that is obvious]
    [eligible step that is non-obvious].

    Eligible claim.

    1. A method comprising:
    [eligible step that is obvious]
    [ineligible step that is obvious].

    Since there are no “new” elements, eligibility is moot, reject under 103.

    2. A method comprising:
    [eligible step that is obvious]
    [ineligible step that is nonobvious].

    Satisfies 102/103, but ineligible under 101.

    My point is not that the order matters, but that for a claim that does not include all ineligible elements, focusing on the eligibility of only “new” claim elements: (1) necessarily requires a determination of novelty/obviousness (since only “new” elements matter), and (2) falls apart when you look at a claim that has no “new” elements.

    If I submit the following claim, under your test I can’t determine whether it is eligible because there are no “new” elements.

    1. A method comprising: Using a computer.

  100. Tom, why don’t we go the next step and require lead counsel in all patent litigation before such a patent court be registered patent attorneys.

    The new Post-Grant and IPR proceedings make this very requirement.

  101. 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.

  102. 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.

  103. 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.

  104. 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.

  105. 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?

  106. 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.

  107. 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.

  108. 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.

  109. 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.

  110. 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?

  111. 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.

  112. 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.

  113. 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.

  114. 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.

  115. 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.

  116. 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.

  117. 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.

  118. 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.

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

  120. 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.

  121. 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.

  122. 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.

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

    Go ask Alice.

    ROTFLMAO.

  124. 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.

  125. 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)

  126. 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.

  127. 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

  128. 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.

  129. 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.

  130. 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.

  131. You never say anything

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

    How banal!

  132. 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.

  133. 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.

  134. “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.

  135. 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.

  136. 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.

  137. 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.

  138. 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.

  139. 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.

  140. 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.

  141. 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.

  142. 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.

  143. 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.

  144. 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.

  145. 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.

  146. 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.

  147. 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.

  148. 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.

  149. 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.

  150. 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?

  151. 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.

  152. 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.

  153. 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.

  154. 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.

  155. 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.

  156. “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.

  157. 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.

  158. 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.

  159. “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?

  160. “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.

  161. 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.

  162. 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.

  163. 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.

  164. 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.

  165. 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.

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

  167. 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.

  168. 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.

  169. 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.

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

  171. 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?

  172. 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.

  173. 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.

  174. 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.

  175. 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.

  176. 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.

  177. 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?

  178. 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.

  179. 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.

  180. 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.

  181. 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.

  182. 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.

  183. 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.

  184. 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.

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

  186. 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.

  187. 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.

  188. 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.

  189. 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.

  190. 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.

  191. 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.

  192. 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.

  193. 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).

  194. 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.

  195. 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.

  196. 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.

  197. 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.

  198. 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?

  199. 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.

  200. 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.

  201. 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.

  202. 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?

  203. 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?

  204. 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.

  205. 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.

  206. 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.

  207. 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.

  208. 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!

  209. 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?

  210. 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.

  211. 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”.

  212. “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??????!?!?!??

  213. 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.

  214. 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”.

  215. 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.

  216. 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.

  217. 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.

  218. 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.

  219. 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?

  220. 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.

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

  222. 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.

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

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

    Just saying. :-)

  224. 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.

  225. 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.

  226. 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.

  227. 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.

  228. 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.

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

  230. “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.

  231. 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,”

  232. 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.

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

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

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

  235. 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. 😉

  236. 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.

  237. 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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