Judge Mayer: Subject Matter Eligibility Must be Decided First Even if Not Raised by Either Party on Appeal

By Dennis Crouch

Alexsam, Inc. v. IDT Corp. (Fed. Cir. 2013)

I recently posted on Alexsam’s pending litigation in the Eastern District of Texas. In that case, the jury sided with the patentee Alexsam and rejected the defendants’ arguments that the patent was invalid. The appeal here involves the same patents directed to a system for activating gift cards at the time that they are purchased. See U.S. Patent No. 6,000,608. The most interesting aspect of the decision comes from Judge Mayer’s dissent where he argued that asserted patent claims “disclose nothing more than an abstract idea for making a business run more efficiently, thereby failing to meet the subject matter eligibility requirements set forth in 35 U.S.C. § 101.”

The claim issue (Claim 57) reads as follows:

A multifunction card system comprising:

a. at least one card having a unique identification number encoded on it, said identification number comprising a bank identification number approved by the American Banking Association for use in a banking network;

b. a transaction processor receiving card activation data from an unmodified existing standard retail point-of-sale device, said card activation data including said unique identification number;

c. a processing hub receiving directly or indirectly said activation data from said transaction processor; and

d. said processing hub activating an account corresponding to the unique identification number, thereby permitting later access to said account.

To reach his conclusion that the claim fails to disclose eligible subject matter, Judge Mayer first began by identifying the core inventive concept of the claim. Here, the idea behind the patent is that it allows a card to be activated by swiping it through the terminal used for processing credit card transactions rather than having a dedicated activation terminal. The benefit of that approach is that no special equipment is needed for activating gift cards and the patent application states that no new technology is required in order to allow standard point-of-sale devices to activate gift cards.

The way Judge Mayer describes this setup immediately raises novelty and obviousness concerns in my mind. Indeed, Judge Mayer writes that the case “presents the anomalous situation in which a patentee attempts to preserve the validity of his claims by arguing that they contain nothing new.” Ordinarily, when patent claims “contain nothing new,” they are found invalid for lacking novelty or nonobviousness. Indeed, millions of patent claims are rejected each year by the USPTO for this very reason. And, the primary thrust of the US patent examination system is to ensure that patents are only issued for inventions that are sufficiently new. In this case, the defendants argued that claims were obvious and anticipated as a matter of law. However, instead of addressing that issue that was actually appealed, Judge Mayer focused on the Subject Matter Eligibility that was not raised on appeal – seeing subject matter eligibility as a threshold issue that must be decided first:

Whether claims are directed to statutory subject matter is a “threshold” question, Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010), which must be addressed before this court can consider subordinate issues related to obviousness and infringement. See Parker v. Flook, 437 U.S. 584, 593 (1978) (“Flook”) (emphasizing that “[t]he obligation to determine what type of discovery is sought to be patented” so as to determine whether it falls within the ambit of section 101 “must precede the determination of whether that discovery is, in fact, new or obvious” (emphasis added)); In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (“Only if the requirements of § 101 are satisfied is the inventor allowed to pass through to the other requirements for patentability, such as novelty under § 102 and . . . non-obviousness under § 103.” (citations and internal quotation marks omitted)).

In our 2010 article, Professor Robert Merges and I argued that the law does not require the “threshold” question be decided in any particular order. See Dennis Crouch & Robert P. Merges, Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making, 25 Berkeley Tech. L.J. 1673 (2010). Indeed, thresholds are crossed all throughout a journey. Judge Mayer is in the minority on this point of doctrinal ordering. Although rejecting some of our arguments, the CLS Bank plurality opinion agreed with Merges and myself that “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.” (Citing Merges & Crouch).

The second major problem with Judge Mayer’s dissent is the implicit ruling that Subject Matter Eligibility is not waivable and instead should be raised sua sponte by an appellate court. Here, the §101 eligibility question was not raised by the defendant-appellants in the appeal, nor were they discussed in oral arguments. In the past, both Judges Mayer and Dyk have raised §101 issues sua sponte on appeal — essentially finding that subject matter eligibility questions are on par with the issue of a court’s subject matter jurisdiction.

Finally, Judge Mayer’s decision highlights the failure the CLS Bank decision – because there was no majority opinion in that case, Judge Mayer did not feel the need to even cite that recent pronouncement by the court that directly relates to the case at hand.

= = = = =

Sanctions: The district court awarded sanctions to the patentee for the defendants’ litigation misconduct in failing to provide to satisfy the appropriate discovery requests regarding the accused systems. The sanction was quite harsh. In particular, the district court deemed several accused systems were infringing as a sanction for ITD’s failure to disclose the fact that its cards contain BINs in their card numbers. On appeal, the Federal Circuit affirmed the sanction. I suspect that the “Patent Abuse Reduction Act” would further embolden accused infringers to play discovery games by avoiding disclosing key information or admitting key facts that would greatly simplify the litigation.

= = = = =

Unpaid License Still a License: Some of IDTs systems use the MasterCard computer network. That is important because MasterCard has obtained a license from Alexsam to practice the invention. The agreement specifically states that other parties (such as IDT) that are using the MasterCard computer network will be “deemed sublicensed under an implied sublicense.” As part of the agreement, MasterCard is also required to report the total number of licensed transactions to Alexsam at the end of each month, and to pay a fee for each transaction. In this case, however, MasterCard never reported IDT as a sublicensee or paid the required royalties. On appeal, the Federal Circuit agreed with IDT that the MasterCard related sales were licensed and that IDT is therefore not liable for those. In reaching its conclusions, the court noted that the MasterCard agreement did not condition the sublicense on payment of the royalties. Further, the court the cited to its decision in Tessera, Inc. v. Int’l Trade Comm’n, No. 2010-1176, 2011 WL 1944067 (Fed. Cir. 2011) where it held that failure to pay royalties “did not convert authorized sales into unauthorized sales.”

= = = = =

203 thoughts on “Judge Mayer: Subject Matter Eligibility Must be Decided First Even if Not Raised by Either Party on Appeal

  1. Actually, it is not. My definition definitely does not change the Arts of music – your attempted spin only has you spun around the wrong way.

    I have invented no ‘other doctrine’ here. I am merely asking that you apply the doctrines (the existing doctrines) as they are meant to be applied, and to stop your vapid attempts at obfuscation. It is once more your smart-@$$ without the smart in pedanticly listing exceptions in a multitude, when I have only – and always – applied only that which is controlling law (which by the way – is one of the very few things that Malcolm has been correct about – you know, that volunteered admission that toasts his agenda).

  2. Ned,

    STILL waiting for you to recognize controlling law – as you are ethically required to do! (you might also check ot ABA MCPR 8.4(c), as well as California Business and Professions Code Section 6106 and 6128 for knowingly presenting as true law, that which you know not to be true). At the very least, you need to couch your posts in more subjective opinions of how you want to change the law to be.

  3. a distinctly different reason

    It’s the exact same reason, actually. If software is useful because the bits are stored structurally, or because it makes a computer do a new thing, then your own definition brings digitally stored music within the useful arts.

    Looks like Mal was right about you having to invent another doctrine to hold all this nonsense together. There’s an exception to the printed matter doctrine, then an exception to the exception for computer-readable printed matter, and now an exception to the exception to the exception for “non-useful” computer-readable printed matter. Epicycles upon epicycles. It only ends once you accept that you’re not the center of the universe.

  4. I am not blue. IANAE: would you try to make the same arguments for an iron age device? So, someone has a gear for a car. The gear is ridiculous. How would you reject the claim to the ridiculous gear?

    And, frankly, what? I honestly am not sure what your last paragraph is asking. “without a care in the wrold for what the actual bits are”–this is not true. I care what the bits are. They need to have a functional relationship with the computer to make the computer readable medium a component of a computer.

    But, really, IANAE, I think these questions framed as requiring a resolution of other types of things in the world are unfair. The computer readable medium has structure that is defined by the instructions encoded thereon. Those instructions and the computer readable medium (indirectly) have a functional relationship with the computer. That makes it a component if there ever was a component of a machine.

    This business of trying to resolve how music is different is odd. 1) music isn’t Turing complete. 2) Music is not instructions for the computer.

    You know there is magic that happens when you go from something that isn’t Turing complete to something that is Turing complete. Suddenly you have a machine that compute any function that can be computed and thus must be able to compute the same functions we are.

  5. Stop getting lost in the desert of non-useful arts INANE.

    Once you realize that you are there in music, the analysis is over for a distinctly different reason – stop trying to obfuscate.

  6. Except writing (fiction and non-fiction) is distinct from writing for a useful purpose (software). The ‘for a useful purpose’ is exactly what the patent system was created to cover.

    Now don’t get me wrong. Writing software may ALSO involve some level of creativity and expression – that part of software earns copyright protection.

    But you should be aware (LOL, check with Malcolm), that patent and copyright protection have always been meant to cover different things.

  7. you’re the one who refuses to apply it

    False. I apply it as the controlling law dictates.

    Ask Malcolm what that controlling law is. It’s one of the few answers that he has volunteered that has any meaning.

    The rest of your rant is also simply wrong. You are STILL trying to confuse the forest for the trees in the desert. It’s not even close to what the law provides.

  8. We need to understand computers and not music.

    This isn’t just music. It’s a computer component that makes a computer do something it couldn’t do before. That’s useful, right? You’ve been shouting yourself blue in the face about that for months now.

    You’re always saying that computer-readable bits on a physical medium are structural and useful, without a care in the world for what the actual bits are. Do you stand by that, or is it suddenly the case that the “structural” recitation of a “computer-readable medium” is irrelevant to patent eligibility?

  9. IANAE: the form of your argument is simply wrong. We need to understand computers and not music. If our understanding of computers creates puzzlers with music, then that probably means that our understanding of music needs some updating. Being able to process information is amazing and creates lots of new puzzlers.

    You asked about why so.meone needs to understand science, well, the computer can perform any function that can be performed, the music cannot. The music is not information processing. And, if you want to introduce our brains and its affects on our brains, then that certainly is a puzzler. There is no doubt that computers have radically changed our views of ourselves and information processing. But, guess what? The controlling force should be understanding the new technology. The puzzlers mean that some of our old ways of thinking need to be updated.

  10. “And I would fully let go of all software within the fine arts”

    Software is a fine art :/ It’s called writing.

  11. First, you need to stop at the Useful Arts filter.

    There is no separate “useful arts filter”. Well, that’s not exactly true. The printed matter doctrine is a useful arts filter, and you’re the one who refuses to apply it to printed bits the way it applies to printed words.

    A list of steps to be performed is no more within the useful arts than a song, no matter how useful it would be to actually perform those steps. Either computer-readable instruction is inherently statutory (i.e., useful), or not. If it is, then computer-readable songs are statutory. If it isn’t, then printing it on a “machine component” doesn’t save it.

    If you claim that a disk is a useful “machine component” when it changes what a computer can do, that makes a song on a disk a useful machine component. If you don’t agree with that result, you need to accept that your “disk = machine component” rule must be wrong. As well as the rule that a computer that does a different thing is a new computer.

  12. Nice (and old) strawman Ned.

    The ‘per se’ part of your statement is a dead give away.

    Line up for another ride on the disingenuous Merry Go Round, Ned.

    As to considering them methods, I have to do nothing of the sort – or shall we (once again) visit the reference that you yourself presented on the difference between holding and dicta that you once presented in a discussion on Bilski that I used to rip apart your anti-Business Method crusade? Take special note of how Rader addresses the precedential takeaway of the Alice decision (just don’t wait for Malcolm to explain this, as he does not do answers with his poor burnt fingers).

  13. The holding of Alappat Is that the substitution of a programmed computer for the circuits claimed in the context of a graphics display unit for a display was eligible. There was no programmed computer out of context issue in that case. Anything else is pure dicta.

    Thus you cannot bootstrap that program instructions on a CRM are eligible because they are a machine component. A Programmed computer and a CRM are neither per se eligible.

    Moreover, the one thing the Federal Circuit seems unanimous is that claims to program computers and methods and CRM’s are all to be considered to be claims the same essential subject matter Thus you have to consider them as claims to a method.

  14. You are still in the desert, trying to mistake trees for a forest, neither of which are there.

    First, you need to stop at the Useful Arts filter. Do not pass Go. Do not collect $200. You are still trying to apply a doctrine that is not to be applied to your example, as it simply is not applicable based on the Useful Arts filter.

    Come out of the weeds, out of the briar patch, into the promised land…

    …(for at least a few moments of lucidity)

  15. Just as rivets, tires, and bullets are patent eligible, so too are machine components such as software.

    A song recorded on a CD is computer-readable software. A machine component. Therefore, statutory by your reasoning. Do you concede the point, or would you like to meet me in the Great Hall first?

  16. INANE,

    Just as rivets, tires, and bullets are patent eligible, so too are machine components such as software.

    You appear almost ready to grasp the exclusion of the non-useful arts.

    And I would fully let go of all software within the fine arts – of course, TOOLS to make more attractive images, much like a new and improved paint brush, remain fully within the useful arts. The creativity employed with the tool, the individual pretty picture – as art – is easy enough to let go, because such has never been within the Useful Arts to begin with.

    I have been steadfastly consistent in my views on this. Nice to see some finally catching up.

  17. That straw is burned at the Useful Arts requirement

    It’s true, a song is not within the useful arts. But neither is a set of instructions. It’s not a machine, manufacture, or composition of matter. It’s not even a method – a method would be the process of executing the instructions, claimed as such.

    What supposedly brings either of them within the useful arts is that they are structurally encoded on an article of manufacture, a machine component if you will, and a computer behaves differently with it than without it.

    If you’re going to say that a computer-readable medium with data on it is statutory without even considering whether what’s written on it is useful/abstract/whatever, you can’t take issue with the content of the software now. Unless you’re willing to let go of all software that is within the fine arts, e.g. making more attractive images on a display screen.

  18. Les, your post illustrates the very reason the Supremes think 103 is inadequate to address 101 issues. If the novel subject matter is ineligible, and it is not integrated into the claim as a whole, then, even though it might be nonobvious, it nevertheless is not Eligible subject matter. Thus asking whether the subject matter as a whole is obvious or unobvious is really asking the wrong question.

  19. And please – like I have asked like a bajizillion times, stop with the strawman of music – That straw is burned at the Useful Arts requirement and you do not get to go further in attempting to conflate that with the HOLDING of Alappat.

  20. Ned,

    Why are you purposefully misconstruing the U.S. jurisprudence of the Useful Arts?

    You are under an ethical obligation to acknowledge controlling law which differentiates the Useful Arts from technology.

    This is not the EP you are talking about.

    Let’s see some intellectual honesty here, OK?

  21. Ned,

    You continue to ignore the fact that machines do not think.

    Your absence on commenting on this point screams so loud that nothing else you try to say can be heard.

  22. AAA, I I think the underlying principle is that the new use of old technology itself has to be Technological. The question is not whether the old technology becomes non-technological, it is that the use of it to be eligible. A new use itself has to be Technological.

    If the above is not true then Benson stands for nothing and one could patent the player piano with a new song.

  23. A method of operating an engine is different from a method of thinking about an engine. If the question is whether a method for operating engine is patent eligible, I would think the answer is yes because the question assumes that the claim does something Physical that is new.

  24. Reinier Bakels said: >>Patent protection is for losers!

    Like Google? Reinier, you have a ph.d., big deal. You want to claim you understand the marketplace, but what experience have you in the economic marketplace?

  25. RB,

    Do you wonder why the “101 test” seems more complicated than ever?

    Do you wonder why the ‘atom bomb’ is being sought at the gate?

    Do you recognize the anti-patent arguments used by those pushing this agenda?

    Do you recognize the strange bedfellows of the Right aligned with the Left?

    This recognition is growing. Even as the man behind the curtain spinning the dials tries to shoo a little girl and her three friends away, the girl’s dog has a firm grip on the curtain and is pulling it back for all to see what really is going on.

    Have you opened your eyes to this yet?

  26. They are doing it for a bad motive Reiner. Their purpose is to try and find a way to twist the law to exclude all information processing method and business methods. In Benson, they held that all information processing methods are laws of nature (yes all applied math is a law of nature), and that if something can only be useful in a computer that it is abstract.

    You are dealing with criminal minds. They have no regard for the law. They would be the ones bombing and burning and killing in other circumstances.

  27. Perhaps one is used to follow the 101-102-103(-112) sequence. Still it seems odd to make a cumbersome “101″ investigation if the substance of a patent application is obviously not novel, which is basically a simpler decision, especially now that the “101 test” seems more complicated than ever.

  28. OMG the inmates are running the asylum!

    A SYSTEM claim clearly reciting 4 (four), count’ em 4 (four)pieces of hardware is not a system because it is old!

    Moreover, it’s not old, it has new functions (account initialization).

    Maybe its obvious… BUT, gift cards have been around for what, 40 years… and no one has suggested activating them this way before…so… you know…. everything is obvious in impermissible hindsight, especially after impermissibly distilling it down to a gist.

    and Dennis thinks the issue is whether or not 101 has to be considered first….

    AAAAaaaargh!

  29. (btw: still waiting for you to address both the exception to the printed matter doctrine and anthropomorphication – why are you so quiet?)

  30. (gasp) yet another volunteered admission that toasts his agenda.

    Oooooh, Ned is going to be so mad at Malcolm…

  31. Prof. Crouch can do whatever he likes – it is his blog, after all.

    He has, though, stated that 1ying is not allowed on this blog. Are you now denying that you have blatantly 1ied?

    Now whether or not Prof. Crouch does anything about it… well, C’est la vie. He is welcome to respond to any of my critiques in any way he wants to – as I said, it is his blog, after all.

    You on the other hand, have made it clear that you are not Prof. Crouch, and I owe you no deference. When you ask me to hand you your head – I can gladly do so.

    As to ‘imputing’ and ‘conflation,’ are you still struggling with those two words? Do you need me to post definitions (like I have in the past) to show how off you are? Maybe Leopold can find his definition of the word ‘effectively’ again for you.

  32. I do (in case you haven’t noticed).

    And I do note that you do not refute anything that I stated. Which of course, you could only do by (more) blatant 1ying.

  33. but I don’t remember you “rubbing my nose” in anything

    LOL – that ranks right up there with the famous “What the Sam Hill” line – wasn’t that realted to you beign busted for s–ckp-ppets? Rather like your s–ckp-ppets of Francis and Keeping It Real? The kind of thing that you swore you did not do?

    psychotic breakdowns – LOL – like your own eplectic rants of rage?

    You need a new shtick Malcolm, this accuse others of what you do line is really really old and lame.

  34. don’t you remember when I rubbed your nose in Prof. Crouch’s statement that 1ying is not allowed

    No, I don’t. I remember you having numerous psychotic breakdowns but I don’t remember you “rubbing my nose” in anything. After all, I’m not the one who pretended not to be using scores of s–ckp-ppets for years. That was you. Until you were busted.

    That was a great day. You still miss your little friends, don’t you?

  35. I only insulted those deserving of being insulted because of the misrepresentations, purposeful obfuscations, deliberate misstatements of spin as fact and many other factors that I have long catalouged as the site’s biggest problem of poor quality blogging.

    On the other hand, we have you who has insulted complete strangers, first time posters who are cancer survivors, Gene Quinn, who doesn’t even post here, presidents, grieving sons, and anyone else in or out of your little circle. And you have lavished these insults without rhyme, reason or justification.

    And you have been doing this that you accuse others only worse for far far far longer.

    C’est la vie.

  36. you have no even halfway intelligent thing to say

    It’s pretty hard to top “the conflation comes from the imputing”, H-mpty! Have some pity for we mortals who lack your awesome rhetorical skils.

    I’m sure Dennis is just as “devastated” by your withering critique as I am.

  37. claim is obvious as a matter of law. That really is a 101 issue.

    Read that slowly Ned. Obvious (as a matter if law or not) is not a 101 issue.

    Ever.

    Put. The. Shovel. Down.

  38. Why are you asking for my “interpretation?”

    Because you didn’t provide it but you insulted someone who did. That’s what a s-ciopath-logical —hole does. That’s what you do here every day, for years now.

  39. Sure, just like medical methods, or any other category of methods.

    Like I have always stated.

    But you quite miss (purposefully) the known agenda of Ned to remove business methods categorically.

  40. “This is exactly analogous to Prometheus.”

    To quote Ned, “It is almost as if you did not read Prometheus, because you clearly do not understand it.”

    As much as you love to think that Prometheus prevents “thinking a new thought about an old fact” that is not what the court ruled in the case. Unless “the volume (of the engine) relates to the number of clouds in the sky according to the equation [insert equation here]” is a law of nature, Prometheus doesn’t support your argument.

    Let me know if you have any further nonsense you’d like me to debunk for you.

  41. Business methods are eligible subject matter.

    Some are; some surely aren’t.

    Let me know if you need examples.

  42. And what is the problem?

    The problem is that the claim prevents people who are freely practicing the “old conventional” steps from legally practicing an additional patent-ineligible step. Claims that effectively protect ineligible subject matter (see step 2 in the above claim) are ineligible under 101. This is exactly analogous to Prometheus.

    Let me know if you have further questions.

  43. I was referring to this gem from Ned:

    “No, AAA, the use of your old car for business purposes is not eligible for patenting. That is like using a player piano to play a different song.”

    And yes, I realize I replied to myself.

  44. This is easily one of the worst analogies ever posted on this site. And that’s saying something, because there have been some really, really terrible ones.

  45. “The problem is when that new use is not eligible subject matter.”

    Business methods are eligible subject matter. It is almost as if you did not read Bilski, because you clearly do not understand it.

  46. Why are you asking for my “interpretation?”

    You have to provide a few answers first, Malcolm – you are way, way, way behind on the ledger.

    LOL – incomprehensible? No – your tactic of feigning ignorance as yet another way of not providing answers is just too lame.

    Do you need me to post definitions of imputing and conflating and hold your hand? LOL – I recall even Leopold had to post a definition of ‘effectively’ when you claimed that that word was too difficult to understand.

    looney tunes accusation coming from the man with the nice shiney tinfoil hat. Ah yes, your favorite tactic of accuse others of what you do.

  47. What Dennis said is that this could have been handled under 103. I beg to differ because there does not appear to be any well developed doctrine that if the novel subject matter is ineligible, then the claim is obvious as a matter of law. That really is a 101 issue.

  48. The question was asked of you Malcolm – your allergies to providing answers is falring oout of control.

    (but I will give you a hint: communism is too idealized and does not take into account true human nature).

  49. Nice attempts at deflection Malcolm.

    Let’s ask Francis and Keeping It Real about whether they ‘too’ use spam filters to screen out emails.

    Are you now claiming that you did not make such admissions? Please, state this clearly before I prove (again) that you are blatantly 1ying.

    (we went through this before – or don’t you remember when I rubbed your nose in Prof. Crouch’s statement that 1ying is not allowed – even though he doesn’t do anything about it – it’s his blog and all – C’est la vie)

    Be a good boy and simply stand there and [shrug].

  50. anon, the new use of old technology is eligible in principle. The problem is when that new use is not eligible subject matter.

    The use of a computer to calculate BCD-> binary is a prime example.

  51. Another vacuous post by Malcolm.

    Attaboy.

    (it’s amazing that you haven’t figured it out yet that you resort to the “Humpty” line when you have no even halfway intelligent thing to say)

    LOL – it’s as if you think this ‘safer’ then toasting your agendas by venturing into any discussion on substantive matters.

  52. Trollboy: LOL – have to love that spin.

    Right. What’s your “interpretation,” Trollboy?

    Or are you just going to continue wiht your usual insult/innuendo/smear, then blather a bunch of incomprehensible nonsense? (a la “the conflation is the imputing” <— looney tunes)

  53. I meant “think” as in the connotation and impetus to not allow patenting for thinking (as a human would do). You know: legal theory type of stuff.

    C’mon Malcolm – try just a little.

    As for leaving things unanswered – your pathetic accuse me of that which you do is downright pathetic – the archives are full of you not answering the points and questions I have raised. Even the lame thing about mailroom staff that seems to be the only thing that you are capable of glomming onto has a point that you have not yet answered: do you employ a spam filter on your email?

    LOL – any time you are ready – I have my marshmallows ready to toast on your flaming agendas.

  54. You do know why communism fails, right?

    Please tell us all why “communism fails,” Senator McCarthy.

  55. “Configured to” is structural.

    An archived admission.

    Sure, Trollboy, it’s archived right next to your admission that you trolled this blog with dozens of s-ckpuppets for years pretending to do battle with a “vocal minority.”

    And your hilarious l i e about using mailroom staff to screen registered letters sent to attorneys and throw them out if the mailroom staff decides that they contain “prior art.”

    Yes, it is all archived, Trollboy.

    How about you show everyone my “archived admission” and then we’ll revisit your Greatest Hits? Are you up for that, Trollboy?

  56. Ned,

    I long ago exposed your strawman and the attempted inclusion of a non-useful arts analogy.

    Please stop the intellectual dishonesty. Or are you telling me that you cannot draft a more appropriate analogy to make your point?

    (btw: still waiting for you to address both the exception to the printed matter doctrine and anthropomorphication – why are you so quiet?)

  57. Trollboy: do you think that machines actually think?

    If by “think”, you mean “process information”, “determine stuff”, “compare stuff”, “remember stuff” or “sort stuff” then, yes, some machines certainly do “think.” In modern language, people usually call such machines “computers”. Sometimes people refer to computers as “thinking machines.” A company manufacturing computers even named itself the Thinking Machine Company.

    And then there’s this:

    Prof. Karlheinz Meier of Heidelberg University spoke about neuromorphic computers during his presentation on Brain Inspired Computing. A key aspect of neuromorphic computing is understanding how the brain works and attempting to mimic some of its functions in silicon.

    Anyway, keep screaming “anthropomorfication” at various times. It’s very persuasive and helpful for your “team.” Trust me! ;)

    all the points and questions that you leave unanswered,

    That would be you, Trollboy. That’s your specialty. Have you found the firm yet that uses mailroom staff to screen registered letters to attorneys and throws them away if they contain prior art? Let us know. We’re all waiting, Trollboy. Maybe ask your buddy Kevin Noonan. You’ve been giving him a lot of love lately. He might lend you a helping hand, since he understands you so well.

  58. Not at all. Their view was that 101 was sufficient and they didn’t need to create a new paradigm

    LOL – have to love that spin.

    Time for you to read the government’s brief again, Malcolm and read that 9-0 dance a jig baby sma@ckdown.

  59. I’m familiar with your “It’s not eligible because it’s so old/obvious!” argument.

    That has nothing to do with the examples I have in mind.

    Here you go:

    1. A method of operating an internal combustion engine, comprising (1) turning the engine on and (2) thinking about the volume of the engine, wherein the volume relates to the number of clouds in the sky according to the equation [insert equation here].

    Now you have a big fat 101 problem. It may not be the only problem, but it’s a big fat 101 problem nonentheless.

    Need more examples? Let me know.

  60. No, AAA, the use of your old car for business purposes is not eligible for patenting. That is like using a player piano to play a different song.

  61. If I “use” the old technology of an internal combustion engine in the running of my business, does it magically become a “non-technological use” because I’m doing it in the running/operation/etc. of a business?

    I believe we’re talking about claimed inventions (if not, you guys are waaaaay out in the weeds and I’ll let you frolic there). Consider the situation if this claim is granted:

    1. A method of running a business, wherein at least one machine used in the business comprises an internal combustion engine, and wherein said internal combustion engine is approved by the AIPLA Engine Approval Committee.

    Now, ask yourself: from the perspective of someone with a 40 year old landscaping business, what is the new subject matter being protected by this claim? What is it that such a person can’t legally do that the person could do before? And is that sort of “advance” what patents were intended to protect?

  62. What works really well is all the points and questions that you leave unanswered, Malcolm.

    Or do you think that machines actually think?

  63. “Configured to” is structural – admitted and archived.

    LOL – that’s gotta hurt that you volunteered that admission.

  64. Way better than simply spinning an misrepresenting facts, law, and what people post, and then when busted just to stand there and [shrug] as you do Malcolm.

    LOL – but please, feel free to join in on any conversation in a substantive manner – let’s see you torch your agendas some more.

  65. Trollboy: ANTHROPOMORPHICATION

    You should use italics, too, Trollboy. And tons and tons of exclamation points. Then your “argument” will be even more “persuasive.” Or should I say “devastating”?

    On the other hand, I suppose you could just declare unilateral “victory” over all your “enemies”. That worked pretty well for you in the past, didn’t it?

  66. You have been asked to provide answers – and in typical fashion, you provide none and seek to have others do the work.

    Why is it so hard for you to give answers, Malcolm?

  67. The conflation comes from the imputing.

    When you roll on the floor over your own unfunny and self-defeating ways, it is a bit sad and more than a bit odd.

  68. Ned: How can you determine that a claim passes novelty and nonobviousness and thence turn around and hold that it is nevertheless unpatentable under section 101? That should not be possible.

    Uh … why not? It’s just applying abstractions (rules) to words on a page. Same is true of 112 and 102/103. The order in which you determine the outcome of applying the rules isn’t inherently important. The order only really matters, legally, when a court or the legislature says that it matters (directly or indirectly).

    In Supreme Court in Prometheus clearly was of the view that it would not work.

    Not at all. Their view was that 101 was sufficient and they didn’t need to create a new paradigm for analyzing claims under 103. But switching the analysis over to 103 works quite well. That’s how they tank claims like Prometheus’ claims in Europe. Granted, it’s still imperfect and plenty of j–k issues there but not more than in the US.

  69. Off the rails?

    LOL – not at all. You do know her quote, right?

    You do know why communism fails, right?

    Not sure why you think the defeat of the philosophy you apparently adhere to is ‘off the rails,’ unless of course you are merely employing your usual tactic of accusing others (of doing – or in this case of being), which is eminently likely, given that you are not supplying any actual answers.

  70. Trollboy: Ned – tell me about the exceptions to the printed matter doctrine

    You’re apparently the world’s expert, Trollboy. Why don’t you tell everyone what’s on your mind instead of trolling the blog with your bizarre g—bage?

  71. There are plenty of US citizens who would love nothing more than for the US to be a ‘commie’ nation under its own sovereignty.

    No doubt. Have you checked under your bed? There might be some hiding there.

    Take Jane Fonda for example.

    It’s almost impossible to parody the patent t–b–ggers when they go off the rails. Please keep it up, Humpty.

  72. Do you have a point to make

    Yes, and I just made it: there is an important distinction to be made between, on one hand, a claim that recites “old” structures in a new arrangement to make a new, non-obvious machine and, on the other hand, a claim that recites old “structures” arranged identically to “structures” in the prior art but which merely have new names (“gift cards”) or differ from the prior art in some abtract fashion (“AIPLA approved”).

    Feel free to disagree. I mean, that’s all you ever do, right? Disagree me? Cuz I’m “trolling”. Meanwhile, another j—k computer-implemented claim gets tanked and your patent t–b-ggin’ heroes are “flabbergasted.” Couldn’t see it comin’!

    Try just a little harder to understand, maybe.

  73. The issue is 101 – Prof Crouch is imputing 102/103.

    Oh, so he’s not “conflating”. He’s “imputing.”

    Keep spinning, Humpty! Just watch out for that first step.

    ROTFLMAO

  74. Humpty: non-answer

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

    You do know what precedence means, right?

    TELL US WHAT PRECEDENCE MEANS, OH GREAT HUMPTY!!!!!

  75. Trollboy: ***Canard Alert***

    Looks like Trollboy is back to pretending that Prometheus didn’t say anything about “old, conventional” steps in a claim reciting only “old, conventional” steps and a novel abstraction (i.e., a novel mental step).

    Why does Trollboy continue to do this? Oh right: because he’s just a blogtroll, defending patent trolls from “dangerous” academics.

  76. “…is simply the use of old technology for non-technological purposes.”

    Old technology can be used for non-technological purposes? How does one “use” technology for non-technological purposes? If I “use” the old technology of an internal combustion engine in the running of my business, does it magically become a “non-technological use” because I’m doing it in the running/operation/etc. of a business?

    I’m fascinated by this concept of using technology for non-technological purposes. Please elaborate some more.

    Thanks.

  77. Trollboy you then need to properly cite to such.

    Trollboy loves to troll with his shiny referee whistle. Blow the whistel, Trollboy!

    He’s cute.

  78. What’s the difference between a novel song sheet in a known player piano and a specially crafted player piano made to play the novel song and only the novel song?

    What’s the claim look like? Does it look like this:

    1. A new player piano, wherein said player piano is modified to play [insert new song title here] and only said song.

    If so, the claim merely covers the abstract concept of modifying the piano to play a single new song. It hardly matters what the song is. Without any structural limitations distinguishing the allegedly new piano from the prior art piano, it’s either ineligible as covering the abstract concept of “modified piano”, or its invalid under 102 (if we ignore the bogus functional limitation describing the abstracction) or its invalid for enablement (failing to describe how to make the invention). Take your pick. Either way, it’s j—k. And yes it’s exactly the kind of worthless j–k that our “computer-implementing” “innovators” are cranking out as fast as they can type.

  79. I don’t need any of your examples. I’ve seen them all before. I’m familiar with your “It’s not eligible because it’s so old/obvious!” argument.

  80. A claim that recites “A method of operating an internal combustion engine,comprising…” is not necessarily eligible subject matter for patenting?

    I’m pretty sure such a claim is eligible subject matter for patenting.

    Nope. What comes after the ellipses matters quite a bit. Let me know if you need an example of a “limitation” that would tank the claim. I’m happy to provide one.

  81. LOL

    I would be interested in the controlling law that highlights the exceptions to the printed matter doctine.

    Malcolm, you know which one in particular, right?

  82. +10000000000000000000000000000000000000000000

    The truly sad thing is that it appears that the confusion is maintained purposefully. Why else is it so persistent?

  83. If you’re interested in this topic, I highly recommend Kevin Collins article in the March 31, 2013 issue of the Houston Law Review.

  84. the law still does not exclude abstract subject matter from considerations of novelty and nonobviousness

    In a limited context, the law still does exclude abstract subject matter from considerations of novelty and non-obviousness. That would be the “printed matter exception” (really an “information content exception”) See In re Ngai (CAFC 2004), King Pharmaceuticals (2010), AstraZeneca (2010) (ignoring limitations reciting novel kit instructions and/or novel speech when evaluating 102/103 because “information content” (including abstractions) can not “add novelty” to a claim).

    Note that the treatment of mental steps (another abstraction) in claims was addressed under 101 in Abrams (CCPA 1951) which held that a claim with mental steps is ineligible when the mental steps comprised the only new limitations when the claim is compared to the prior art. That case is very similar to Prometheus in its analysis and holding.

  85. Ned – you then need to properly cite to such.

    Not cite to a dissent. And not mis-cite to your improper reading of the SC cases.

    Do you remember that source that you yourself supplied – and that I then used to destroy your argument that Bilski created law against business method patents?

    A reminder: that happened so quickly that you did not have time to derail the conversation and you admitted defeat. This is archived, my friend.

  86. Music is useful to calm humans and other animals. Just for the sake of argument, suppose the new melody (another “Take 5″ type thing) has (unlikely I know, but bear with me) a proven ability to convert animal food more efficiently than hitherto to meat or milk. Might the piano programmed to play that very tune actually be a new, useful, profitable and patentable apparatus?

  87. LOL – yes, you see their handprints in the AIA (amazingly, something that Malcolm has been awfully quite about…)

    …Attacks from the Right

  88. (sigh)

    “commie” does not mean that he is an agent of a foreign power. There are plenty of US citizens who would love nothing more than for the US to be a ‘commie’ nation under its own sovereignty.

    Take Jane Fonda for example. Do you remember her famous quote?

    Now then tell me why this is simply impossible (hint: it has to do with basic human nature).

    …Attacks from the Left

  89. except in the very limited case of the printed matter doctrine.

    This indicates another SCREAMING absence from Ned to recognize controlling law.

    Ned – tell me about the exceptions to the printed matter doctrine (even Malcolm has volunteered that he knows the controlling law in this area).

  90. Ned Heller, you are officially confusing me. I understood you to say that it was not possible to have it be novel and non-obvious but also find it ineligble under 101?

    However, re “The output of the claim is a number”, what say we move away from numbers.

    I’ll take my claim above, leave it essentially the same, but make it a claim for:

    A method for producing properly-dimensioned hypotenuse legs for a right triangle-shaped pine wood roof framing member, (yada-yada-yada)… then taking the square root of said sum, and then cutting hypotenuse legs from pine wood in a length equaling said square root of said sum”

  91. AAA, no you are of the Rich/Rader school that seems to want to ignore the Supreme Court decisions. In the Rich/Rader school if the claim is nominally directed to a machine, to an article, to a composition or to a method that involves the use of these things, the claim passes 101 regardless that the novel subject matter is simply the use of old technology for non-technological purposes.

    It is almost as if you did not read Prometheus, because you clearly do not understand it.

  92. Ned,

    Why exactly did Stevens lose his majority in Bilski?

    (hint: the judicial activism was simply too blatant in overwriting the direct words of Congress)

  93. t in the sense that is in the nature of a mental step

    Ned, anthropomorphication – machines do not think.

    Why have you NEVER addressed this?

    Your silence is d_@mming.

  94. Mr. refund, I think you get it. The output of the claim is a number. The novel subject matter of the claim are the measurements, numbers. There’s nothing really new technological going on here.

    While this claim may be novel and nonobvious, it is not directed to patentable subject matter.

  95. However, it is not new if it is an old player piano and only the song is new.

    Surely a specially-programmed player piano (because it has a new song in it) is a whole new machine, completely different from a general-purpose player piano.

  96. Zeke, I think you missed the point about no new technology and a use of old and conventional technology. If a player piano a specially crafted, it is new. However, it is not new if it is an old player piano and only the song is new.

  97. “Here’s one thing we know for sure: just because a claim recites an ‘engine’ (or some other generic ‘article of manufacture’) does not mean that the claim is necessarily eligible subject matter for patenting.”

    So a method claim that satisfies MoT is not necessarily eligible subject matter for patenting? A claim that recites “A method of operating an internal combustion engine,comprising…” is not necessarily eligible subject matter for patenting?

    I’m pretty sure such a claim is eligible subject matter for patenting. Whether it’s novel, non-obvious, described, enabled, and clear and definite are separate issues to be determined, but there’s no doubt it’s patent eligible subject matter under section 101.

    That is the law.

    Book it.

  98. Ned in the weeds clue: arguments in a dissent…

    Ned, need I provide your own source as to holdings/dicta and the law? That you elevate a dissenting view which is not even dicta should be one very large clue to you.

  99. What’s the difference between a novel song sheet in a known player piano and a specially crafted player piano made to play the novel song and only the novel song?

    Both are pianos that play the new song. If the new song is patentable, it shouldn’t matter that in the former version the piano can play other songs.

  100. Malcolm, the Federal Circuit seems to be fractured beyond any consensus on these issues. The Supreme Court must once again take a computer software case or business method case to help.

    The problem is there are two views of what is abstract. The first few is that abstract subject matter is essentially a mental step. The second view is that abstract subject matter does not recite something physical.

    Thus, according to Rader and Rich before him, a claim to a player piano with new music passes 101 because the claim is to a player piano, move on to obviousness.

    The other view is to determine whether the technological elements of the claim are old and conventional and whether the point of novelty is abstract in the sense that is in the nature of a mental step or law of nature or the like. The latter case it fails 101 unless that abstract subject matter is integrated into the claim as a whole, as in Diehr.

    The two camps will not agree. The Supreme Court has not helped because it did not explain itself very well in Bilski. It needs to explain, clearly, once again, why the use of old technology for non-technological purposes is not eligible under 101.

  101. Ooops, don’t want to get busted for forgetting the concrete aspects…

    “A method for determining the length of a hypotenuse leg of a right triangle-shaped pine wood roof framing member, the right triangle-shaped pine wood roof framing member including two other….”.

  102. “AAA, I’m seeing the you do not get the issue as well.”

    I get it, Ned. It’s folks who insist on confusing patent eligible with patentable who don’t get it.

  103. Ned uses the abstract principle of generalization to state: “[T]he novelty lies in abstract subject matter.”

    Try using 102, 103, and 112. If you can’t get the job done with those three, then you are almost certainly wrong. If you feel the need to pull out your “abstract” weapon of mass destruction, then we know you are a craven unworthy attorney who likely doesn’t love the law.

  104. The issue is 101 – Prof Crouch is imputing 102/103.

    Do you have that link to the Office views on Prometheus handy? How about the decision itself? You know, wherein the argument about using such 102/103 thinking was forcibly rejected?

  105. “How can you determine that a claim passes novelty and nonobviousness and thence turn around and hold that it is nevertheless unpatentable under section 101? That should not be possible.”

    Maybe I misunderstand what you mean regarding the above, but here goes:

    I claim:

    A method for determining the length of the hypotenuse leg of a right triangle, the triangle including two other non-hypotenuse legs, the method including the steps of measuring the lengths of the two other legs, squaring each of said lengths, adding said squared lengths together to form a sum, then taking the square root of said sum.

    Now, before old Pythagoras figured the above out, it should have been both novel and non-obvious.

    Not the measuring legs part, of course, that was old in the art. But the part about using 2 lengths to calculate the 3rd, that was new to mankind…

  106. Just, okay, if all the technology the claim is old and the point of novelty is abstract, how does one handle obviousness?

    The Supreme Court clearly was a of the view in Prometheus that section 103 was not well-equipped to answer these questions because the issue of patentable subject matter is not a 103 question, but a 101 question.

  107. As for Rich, he never had a clue what he was talking about when it came to 101.

    Um, sure…

    Nice shiny hat Malcolm.

  108. Malcolm, clearly you and I are on the same page here, as are all nine judges of the Supreme Court in a handful of Federal Circuit judges. But when I don’t seem to understand is why so few patent attorneys get it.

    The argument is simply put in Alappat by Judge Archer in his dissent. When the claim is to new music in the old player piano, is that a claim to a player piano?

    If we look at obviousness only, and do not exclude the abstract subject matter, then the claim to an old player piano with new music could well be nonobvious. But that begs the question, does it not?

    The patent office issuing patents like these by the thousands. The only reason they are is because there are certain judges on the Federal Circuit who refuse to give up. How many times they have to be taken to the woodshed by the Supreme Court before they finally understand that abstract subject matter cannot be claimed directly or indirectly? The patent laws are for new technology and not for the nontechnological use of old technology.

  109. a method of operating an internal combustion engine is nothing more than the abstract idea of the carnot cycle.

    It would depend on the claim. Internal combusion engines are old. What limitations are in the claim? If the “new” limitations are nothing but the recitation of abstract formulas describing the efficiency of the engine in various states of operation, do you agree that the claim has serious problems?

    Let’s assume that you agree (if I’m mistaken, please let us know what we’ve missed). Now we can list the problems. Is it a 103 problem? Why? Is it a 102 problem? Why? Is it a 112 problem? Why? Is it a 101 problem? Why? Are there numerous problems? Why?

    Here’s one thing we know for sure: just because a claim recites an “engine” (or some other generic “article of manufacture”) does not mean that the claim is necessarily eligible subject matter for patenting. That’s the kindergarten level analysis favored by Judge Rich. Absent some “draconian” (to borrow a phrase from one of your buddies here) legislative change, that will never ever be the law.

  110. AAA, I’m seeing the you do not get the issue as well. When old technology is being used, and the subject matter that is new is abstract as in a business method, the claim is unpatentable under section 101.

    When we get into the morass of novelty and nonobviousness, the law still does not exclude abstract subject matter from considerations of novelty and nonobviousness. When and if they do, then novelty and nonobviousness would be a good vehicle to exclude these claims. But the law has developed in different course.

    The patentee had argued that there is no new technology here in that he was only using an old system. What he was doing with the old system was non-technological. Whether that is obvious or not is hardly the question. The claim is directed not to new technology, but to a new abstract idea.

  111. No, no, the lever is leveraged by the American Banking Association.

    And that makes all the difference.

    s/ Principal Archimedes.

  112. Dennis, Judge Mayer gets it. If there is no new technology and the novelty lies in abstract subject matter, the claim fails 101. The problem is is that if we get into obviousness, the abstract subject matter can be argued as being nonobvious because there is no robust 103 exclusion of abstract subject matter from being the point of novelty. Section 103 is not phrased to exclude abstract subject matter at all except in the very limited case of the printed matter doctrine.

    The approach you argue is a waste of time and perhaps misleading. How can you determine that a claim passes novelty and nonobviousness and thence turn around and hold that it is nevertheless unpatentable under section 101? That should not be possible.

    I think this is the reason why the Supreme Court in Prometheus may have rejected the idea that section 103 can be used to ferret out claims to abstract subject matter. It can be done of course, but the statute does not clearly allow this because it does not filter out abstract subject matter as being potentially patentable. I pointed this out yesterday in a note about the problem with 103. Now if 103 were clearly limited to where the point of novelty had to be technological, then 103 might be good filter. But your approach, in the face of a claim to abstract subject matter layered onto a claim to old technology, as here, will not work. In Supreme Court in Prometheus clearly was of the view that it would not work.

    As Malcolm and I noted yesterday, the vast majority of these business matter claims do precisely this. They use a bunch of pre-existing technology to claim abstract subject matter. Whether it is not a novel are nonobvious is hardly the question.

  113. Do you often get patents on old machines merely by giving one of the parts a new name? Or putting in a limitation that “the lever is approved by the National Lever Association”?

    Do you have a point to make or are you just trolling? I suspect the later, but then again, you could surprise me. Nah … who am I kidding.

  114. I’m still waiting for you to provide an explanation of the precedence of that case.

    A “new” computer, wherein the computer is described according to its information processing functionality, is not per se eligible subject matter. Adding the term “computer” to an otherwise ineligible method does not render the method per se eligible for patenting.

    Pretty sure there are 7 judges that agree with that, otherwise Alice’s claims would still be eligible. Do you think that Lourie added wrong? Let us know if you can find more than five Fed Cir judges who disagree with the above “precedent.”

    Any word as to whether Alice is going to appeal to the Supreme Court? That would be a laugh riot.

  115. JS: in the mechanical/electrical/computer arts, we work with the old and put it together in different ways — that doesn’t make in invalid for lack of novelty of obviousness.

    Do you often get patents on old machines merely by giving one of the parts a new name? Or putting in a limitation that “the lever is approved by the National Lever Association”?

    Let us know.

  116. The propensity to conflate patent eligibility and patentability has been evident in Prof. Crouch’s posts for a very long time.

    Where’s the conflation in Dennis’ comment, Trollboy?

  117. More from Dr. Noonan on this point

    Except Noonan, too, would agree that a new, non-obvious and useful method of thinking about something does not become an eligible method merely by adding a step of, say, “drinking coffee” to the claim.

    Or has Kevin flip-flopped on this issue again?

    As for Rich, he never had a clue what he was talking about when it came to 101.

  118. except that sometimes a good portion of any given thread is devoted to the blatherings of MM et al.

    It gets tiresome …. I want to read people who want to talk about the law — not regurgitate the same points over and over and over and over and over and over again.

    The comment section of this blog had much greater diversity in the past — now it has become dominated by the trolls (MM, 6, Ned, MD) and the anti-trolls (Anon, NWPA).

  119. Ridiculing him is fun.
    And well deserved.

    Getting him to actually join in on a substantive legal discussion is also great – as that is when he is at his best self-defeating mode and volunteers admissions that toast his own agendas.

    And watching those who support him flail about is great too.

  120. Yes – there seems to be a basic disconnect about the ability to obtain patents even when every element is old in the art.

    Malcolm has the same critical deficiency in his pet [oldstep]+[newthought] theory.

    Funny about that – all chemistry and biochemistry can be boiled down to a gist of abstract ideas and elements each old in the art.

    If pundits are going to conflate – they better be prepared to have that conflaction visit all areas of the useful arts (no NIMBY’s allowed).

  121. Fortunately … Mayer took Senior Status in 2010. We won’t be seeing too many decision with his name on them.

    The interesting thing about the IDT decision is that Dyk wrote the opinion and wasn’t convinced by Mayer to dispose of the case under 101. Dyk voted for unpatentability under 101 in CLS Bank so it appears there is a limit to how far he’ll go.

  122. Anon — why bother? I find the best approach to MM is simply to ignore him or ridicule him. He hasn’t said anything new in years and years.

  123. Mayer has turned into the ultimate oracle. He and the commie Posner just know when they see an invention ’cause they are the smartest little boys on the block. And, Lemley is becoming the richest little boy on the block.

  124. Ordinarily, when patent claims “contain nothing new,” they are found invalid for lacking novelty or nonobviousness

    Uh … in the mechanical/electrical/computer arts, we work with the old and put it together in different ways — that doesn’t make in invalid for lack of novelty of obviousness.

  125. More from Dr. Noonan on this point, channeling the man who actually helped write patent law (and thus was in a critically important position later as a judge to give a true interpretation of that very law):

      Moreover, to inject the patentability test of “inventiveness” into the separate statutory concept of subject matter eligibility makes this doctrine again “the plaything of the judges who, as they became initiated into its mysteries, delighted to devise and expound their own ideas of what it meant; some very lovely prose resulting.” Giles S. Rich, Principles of Patentability, 28 Geo. Wash. L. Rev. 393, 404 (1960).
  126. And, the primary thrust of the US patent examination system is to ensure that patents are only issued for inventions that are sufficiently new.

    NO. There is no such single primary thrust – patents must meet ALL legal requirements.

  127. Anon: not really puzzling. I remember one of the professors I had for patent law, who was one of the authors of a top selling case book, tell us the story of the USSR attempting to have patents. The way it worked was several of the top people in the field looked at what someone did and they got to feel better than the applicant by explaining why their invention was not deserving of a patent. The system was a complete failure. Judge Rich realized that hindsight and the conflation of patentability with eligibility were the two biggest potential destroyers of our patent system.

    They are like drugs. It is all so easy to sit in your arm chair and say well that is just an abstract concept of ….. and not deserving of a patent, or gee, anyone could have done that. Little minds: if it is so easy use TSM and show us a real rejection under 102, 103, and 112. Little minds: if it is so easy go and try it yourself.

  128. The way Judge Mayer describes this setup immediately raises novelty and obviousness concerns in my mind

    The propensity to conflate patent eligibility and patentability has been evident in Prof. Crouch’s posts for a very long time.

    It’s puzzling that this view is so persistent.

  129. I guess this can viewed two ways. More evidence that people are getting really ****ed up from playing football. But also perhaps some optimism that we can help treat people who have CTE before they show symptoms.

    Looking long-term, I’m not sure if football is going to be banned outright, but I could easily see a confluence of things happening that make it far less popular — lawsuits, kids choosing not to play (or their parents forcing them not to play), government intervention, etc. It will be very interesting to see how it plays out.

  130. Do you understand what the failure of the earlier case even is, Malcolm?

    LOL – wait – I’m still waiting for you to provide an explanation of the precedence of that case.

  131. DC Judge Mayer’s decision highlights the failure the CLS Bank decision – because there was no majority opinion in that case, Judge Mayer did not feel the need to even cite that recent pronouncement by the court that directly relates to the case at hand.

    I don’t see how the failure of a dissenting judge to cite an earlier case that he disagrees with “highlights the failure” of that particular case. More accurately, it highlights the dissenting judge’s failure to convince another judge on the 3-member panel to agree with him. With respect to the specific question of 101 as a “threshold” issue that must be addressed prior to addressing any other question of patentability, I would be very surprised if a majority of Federal Circuit judges agree with Judge Mayer’s inflexible position.

    On the other hand, I have little problem with an appellate judge bringing up eligibility or validity concerns sua sponte, especially if they are remanding the case and it appears that the issue may been overlooked, perhaps due to a misunderstanding of the law. From the perspective of the public, patent claims are indistinguishable from many other civil laws. The claims are applicable to everyone, not just the particular defendants who happen to be dragged before them, and that includes claims which should never have been granted, regardless of what the defendant might think about the patent-worthiness of the claimed subject matter in general. The Federal Circuit should be looking for examples of claims to consider en banc in the 101 context. Beauregard claims would be a great place to start. It’s house cleaning time.

  132. By his reasoning, a method of operating an internal combustion engine is nothing more than the abstract idea of the carnot cycle.

  133. the Supreme Court expressly avoided a question of subject matter eligibility and decided the case on the ground of obviousness.

    Judicial economy doesn’t matter anymore once you get to the Supreme Court. However they dispose of the case, there are no further appeals. They are likely to choose whatever issue is simplest to analyze, easiest to agree on, or disposes of the case on its own, thereby mooting all other issues. It’s not precedent for this being the best approach for lower courts.

  134. Mayer’s dissent also contradicts Dann v. Johnston, 425 US 219, 220 (1976), where the Supreme Court expressly avoided a question of subject matter eligibility and decided the case on the ground of obviousness.

  135. the idea behind the patent is that it allows a card to be activated by swiping it through the terminal used for processing credit card transactions rather than having a dedicated activation terminal.

    The patent doesn’t “allow” anything to take place that couldn’t have taken place before the application was filed. I’m happy to be mistaken but electronic cards were activated using terminals prior to the filing of this application. Whether you call the card a “gift card” or a shmeggledygonk is irrelevant.

    Mayer’s point regarding the abstraction might be better argued but it’s a valid one. The insertion of “novel” abstract elements (such as a “new” name for an electronic card) into an old method implicates 101 just as much as it implicates 103 (or more, to the extent that 103 is misapplied or unapplied).

    Consider: can I get a patent on a “new” method of terminating an employee, wherein the method involves contacting the employee from a self-driving car using a voice activated phone, wherein the employee’s name beings with “J”, wherein my self-driving car was purchased with a credit card and wherein the employee has healthcare purchased under the terms of the Affordable Care Act? If not, why not? Or can I just keep adding inane abstract “limitations” until the PTO fumbles the ball? That appears to be how the game is played by most of these “computer-implented” “innovators” for the past couple decades.

  136. “The most interesting aspect of the decision comes from Judge Mayer’s dissent where he argued that asserted patent claims ‘disclose nothing more than an abstract idea for making a business run more efficiently, thereby failing to meet the subject matter eligibility requirements set forth in 35 U.S.C. § 101.’”

    This is what passes for legal analysis from federal circuit court of appeals judges these days?

    I’m starting to agree with NWPA.

  137. Re: “the CLS Bank plurality opinion agreed with Merges and myself that “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.”"

    Yes, fine, but what ARE those “more expeditious paths” for District Court judges to resolve patent litigation? Clearly S.J. for non-infringement is one. But what other “more expeditious paths” for case disposals are there for the kinds of claims (mostly broad “business methods”) that have been getting 101 attacks? District Courts rarely grant prompt summary judgments based on 103, because they know they are likely to get reversed for allegedly disputed fact issues and/or not meeting the “clear and convincing evidence” standard. So, why will not more District Court judges accept more 101-based S.J.’s for early “threshold” case disposals, thus increasing this legal mess?

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