Did the Federal Circuit Just Adopt Functional Claiming Through the Back Door?

Guest Post by Mark Lemley. Professor Lemley is the William H. Neukom Professor at Stanford Law School and a founding partner of the successful law firm of Durie Tangri where he litigates intellectual property cases.

In Ultramercial v. Hulu, decided on Friday, the Federal Circuit held that a series of steps for serving ads to customers over the Internet, phrased at a high level of abstraction, was patent-eligible subject matter under section 101.  Chief Judge Rader wrote the opinion, which Judge O'Malley joined.  Perhaps more surprising, Judge Lourie, who wrote the plurality opinion in CLS Bank, found the requirements of that test satisfied by these claims despite the lack of evident tie to any particular hardware device or limitation to any particular software algorithm.

Part of the explanation for the result in Ultramercial stems from the procedural posture of the case.  The district court had granted a motion to dismiss, reasoning that patentable subject matter is a pure question of law and so not dependent on factual conclusions.  The district court's position was defensible, given that every prior Federal Circuit opinion has called patentable subject matter a pure question of law.  But the majority goes out of its way to suggest that factual questions are likely to predominate in a section 101 inquiry, though the court is a bit vague on just what those factual disputes might be.  The court also suggests that claim construction will normally be required before resolving a 101 issue, but that here, the court was opting to construe the patent in the way most favorable to the patentee (that is, in the narrowest way possible) to evaluate 101 on a motion to dismiss.  Curiously, however, the court never explicitly tells us what that narrow construction is.

Then the majority does something very odd: it proceeds to discuss in great detail the technology disclosed in the specification but not mentioned in the claims.  The court clearly viewed Ultramercial's claims as patent-eligible because the specification contained detailed technical implementations and a complex flow-chart, even though none of those were included as limitations in the claim.

What is going on here? One possibility is that three of the most experienced patent judges in the country have forgotten the single most fundamental rule of patent law — that as Judge Rich put it, the name of the game is the claim.  But I doubt it. If a lawyer arguing before the court tried to read in limitations from the specification in claim construction or for infringement or validity, these judges would (quite properly) tear that lawyer apart for violating this fundamental rule and ignoring the language of the claim.  It seems unlikely that each of them simply forgot that it is the claims that define the invention.

A second possibility is that the court thinks that the rule that the claims define the invention simply doesn't apply to patentable subject matter: that as long as you have a specific idea somewhere in your specification we don't care what you claim.  But that seems equally unlikely.  To begin, it directly contradicts controlling Supreme Court precedent such as O'Reilly v. Morse, where the court held narrow claims patent-eligible but a broader claim ineligible.  Beyond that, it simply makes no sense.  The patentable subject matter rule is against patenting abstract ideas.  A claim that covers only an abstract idea doesn't somehow become less abstract simply because the patentee could have claimed a narrower, more tangible invention.  

There is a third possibility: that the court is implicitly construing the broad, functional elements of Ultramercial's method claim as means-plus-function claims under section 112(f), with the result that they are accordingly limited to the particular implementations in the specification.  Doing so would be consistent with approach I suggested in my article "Software Patents and the Return of Functional Claiming".  It would explain why the court said it was adopting the narrowest construction of Ultramercial's claims but then never told us what that narrow construction was.  And it is the only reasonable explanation for why the Federal Circuit would suddenly drop its focus on the language of the claims and start to talk about whether the algorithms in the specification were patent-eligible subject matter.

The court didn't explicitly say what it was doing.  I hope that its focus on the specification signals a narrowing construction that saved the claim from ineligibility.  That would be a major step forward for both patentable subject matter law and for reining in overbroad software patents.  And the alternative — that the court has decided that the scope of the claim doesn't matter anymore — would represent a major step backward.

392 thoughts on “Did the Federal Circuit Just Adopt Functional Claiming Through the Back Door?

  1. Such a pretty strawman.

    Did you actually want to make a point? You seem to agree with AAA JJ, and then drift off into a frolic.

  2. LOL – having WAY too much fun at your expense Malcolm.

    But hey, I’ve told you how you get improve things…

  3. “…and make sure it isn’t just an ineligible abstraction…”

    As long as the test for determinig that a claim is “just an ineligible abstraction” is “we know an ineligible abstraction when we see one” then I can’t see any “meaningful difference” between the claim at issue and the claim you drafted. That’s not to say, however, that I agree that the claim at issue is an “ineligible abstraction.”

  4. “To begin, it directly contradicts controlling Supreme Court precedent such as O’Reilly v. Morse, where the court held narrow claims patent-eligible but a broader claim ineligible.”

    O’Reilly v. Morse was not about patent eligible subject matter under 35 USC 101 (especially since it was like another 90 years after that decision that section 101 was enacted).

  5. I answered the question.

    I assume you’re referring to the parallel discussion we were having and your answer at 1:03 pm. My response to your answer appears upthread in the context of that discussion.

  6. Tr0llboy patent-big0t

    Great meme. Milk it, Tr0llboy. People who don’t like computer-implemented j–k patents are “bigots”. Yes, that has success written all over it. Please share with Gene Quinn so he can help spread the word.

  7. Tr0llboy: misuse of the reference

    The best use of the reference is to remind everyone what a clueless, paranoid fossil you are, Gramps.

    Next time you collapse into self-parody, try to be more subtle about it.

  8. Les If your point is

    That’s not my point, Les. Not even close. Just answer the questions I asked. What’s the matter? Too difficult for you?

  9. You’re not required to “claim all of the ‘complex programming’” in a method claim. “

    Uh … sure. You can draft any claim you want. But if you want an eligible and patentable claim, maybe it’s a good idea to distinguish it from the prior art and make sure it isn’t just an ineligible abstraction with the term “computer” and some equally conventional hoohaw salted in.

    Here’s a claim:

    1. A method for generating revenue, comprising requiring a recipient of information from a computer to sit through an advertisement before receiving said information.

    I don’t see any meaningful difference between this claim and Ultramercial’s junk. Do you? What are the meaningful differences?

  10. Tr0llboy: did you forget that I invited you to defend and explain your position

    I tell you what, Tr0llboy. Tell everyone what your native language is and I’ll find someone who speaks it fluently to re-type my comment for you. Or you can take my statement to an English speaker who can stand the way you smell and have them patiently explain the difference between what I wrote and what you wrote. We know that what you wrote is wrong because Prometheus told us it was wrong (i.e., a claim with an eligible step and an ineligible step was deemed ineligible). We know that what I wrote is correct because if it wasn’t correct then there would have been no discussion in Prometheus about the insufficiency of the “old conventional step”.

    I’ve walked you through this scores of times, Tr0llboy. But you’re just a blogtroll. It doesn’t matter how many times you’re schooled. You’ll always be an ignorant s0ci0path with monumental –hole tendencies.

    [shrugs]

  11. Les: Yes, non-obvious subject matter of all types gets around 103.

    Okay, so let’s summarize Les’ position for Les and see where it takes us. Les believes that (1) any eligible subject matter in a claim suffices to make the claim eligible under 101.

    So, an article of manufacture like a book is eligible subject matter according to Les. Okay. Moving right along to 103. Let’s say that Les wants to patent a description of a new, non-obvious deity. So Les files the following (eligible) claim:

    1. An article of manufacture, wherein said article is a piece of paper, and wherein said piece of paper comprises a description of a three horned purple elephant seal with zebra stripes on its hind legs.

    According to Les, this paper is also patentable under 103 because of the non-obvious text on the paper.

    So welcome to Les’ world! You can patent your stories, books and sheet music now. Nothing will stop you.

    Unless Les suddenly has some new caveat that he just thought up (because he couldn’t possibly have seen this coming).

    A question we might ask ourselves is: why should anyone care what someone like Les (or his good buddy, Tr0llboy) thinks about Mark Lemley? That’s a rhetorical question, of course.

  12. His point is that he his purposefully setting himself ablaze in FAIL and hoping that no one gets back to talking about how much CRP Mark Lemley has let loose with his guest post today.

  13. LOL – you forgot to [shrug] as your pet theory goes up in flames Malcolm.

    Or did you forget that I invited you to defend and explain your position and

      you
      ran
      away

    LOL

  14. Don’t play games and discuss something else.

    LOL.

    LOL LOL LOL.

    no wait,

    LOL LOL LOL LOL LOL LOL LOL LOL
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    LOL LOL LOL LOL LOL LOL LOL LOL

  15. “All Diehr stood for was the proposition that you couldn’t find a claim ineligible per se simply becuase there was an element in the claim that would, if separately claimed, be ineligible.”

    I stand by this. Accurate. Correct.

    if one element was, if separately claimed, ineligible (like a new thought) and another element was eligible [note the difference between eligible and patentable] like an old step), then you couldn’t find the claim per se ineligible.

    Wrong, obviously. And we now have to ask the question: are you ly ing or merely ignorant or both? Take some reading comprehension classes, Tr0llboy.

  16. Nice misrepresentation and misuse of the reference Malcolm.

    Gee, you putting such a spin on things. Shocking.

    /eyeroll.

  17. AAA JJ,

    you made a comment the other day about 6…

    (but hey, I have no problem with you bagging on Malcolm – I like to share, and there is plenty to go around)

  18. You implicitly begged him to do that when one of your smarmy replies hinted that the archives might ‘disappear,’ and I replied that I had made copies already.

    You then let loose an improper Jane Fonda reference and I noted that such from the acclaimed ‘master’ of English of a first language was pretty pitiful.

    This too, is archived.

    Again with the accusation of 1ying. Let’s see you give ONE valid example, Malcolm. Like last time, you will (can) only run away.

    Your accusations are themselves blatant 1ies.

    Funny, how those blatant 1ies are not expunged.

    C’est La Vie

  19. however, monetizing and distributing copyrighted products over the Internet is an abstract idea, as is using advertising as currency. But that is not the invention of claim 1 with its ten specific steps and its specific reference to an Internet website.

  20. Tellingly, “[note the difference between eligible and patentable]” and note that at least three times ALREADY today Malcolm has attempted to conflate these two concepts, to kick up dust between these two concepts and to trainwreck the conversation by employing a WHATEVER ‘legal’ argument.

    One (of several) words that come to mind:
    dissembling

  21. capice?

    Not at all. You didn’t even try to answer the question I asked. Here it is again:

    if the music is new and non-obvious, then it’s also patentable under 35 USC 103 — right? And since a modern player piano could scan and read sheet music, then sheet music with new, non-obvious music is also patentable under 35 USC 103, right? That’s how it works on your planet, right? If that’s not how it works, then please explain to us how it actually does work, along with the legal and policy justifications for your alternate system.

    Answer the questions. Don’t play games and discuss something else. Your opinions about 101 is clear. Answer the straightforward questions I asked you about 103. What are you afraid of?

  22. If your point is the Supremes don’t understand the difference between 101, 102 and 103 and/or are legislating from the bench, I would agree with you.

  23. By the way, awesome Supreme Court decisions today!!

    So long DOMA! So long Prop 8!

    It’s a sad day for ignorant bigots everywhere. Thanks to this decision, Jane Fonda will be coming to their church in a few weeks and forcing all their kids to become gay married.

  24. Claim 1 is NOT an abstract idea — an abstract idea is one that has NO reference to material objects or specific examples

  25. Speaking about Prometheus, let’s share some marshmallows around the bonfire of Malcolm’s first substantive attempt at squaring that case with the precedent case most on point:

    Sorry that you might have to dig through the nearly 21,000 word Malcolm CRPfest, but at June 17 at 10:55 AM on the thread link to patentlyo.com

    we have captured in the Archive:

    All Diehr stood for was the proposition that you couldn’t find a claim ineligible per se simply becuase there was an element in the claim that would, if separately claimed, be ineligible.

    So if one element was, if separately claimed, ineligible (like a new thought) and another element was eligible [note the difference between eligible and patentable] like an old step), then you couldn’t find the claim per se ineligible.

    LOL – Is that what you are saying?

      MASSIVE MALCOLM SELF-DEFEAT

    Dance that jig, baby.

  26. “Is your position that non-obvious ineligible subject matter is sufficient to get around 103?”

    Huh? Yes, non-obvious subject matter of all types gets around 103. However, ineligible subject matter does not get around 101.

    What’s your point?

  27. I’m not sure where the courts would split the hairs between something that is both man an machine readable and something that is far more readable by machine, such as a punched player piano roll or a CD ROM carrying instructions.

    The “music”, I think is not patentable as it is either an abstract idea or akin to “software per se.” But a player piano roll is not “music”, it is a manufacture carrying instructions that guide a machine to make music…. which is different than “music per se”.

    capice?

  28. Fish Scales they conflate 101 and 103

    You wish, Fishy.

    We are “winning” because the game being played by the computer-implemented junketeers is getting really old.

    On one hand, they want to pretend that the recitation of any old eligible subject matter is sufficient to make a claim eligible (it’s not — read Prometheus). On the other hand, they (along with no small number of incompetent goons at the USPTO) also want otherwise ineligible subject matter to be considered under 103. It’s a nice trick. Or, more accurately, it was a nice trick.

    all of the details and limitations in the claim.

    LOL. Yes, this claim is really detailed and chock full of “meaningful” limitations!

  29. Lourie essentially cited himself in his concurring opinion by saying that the majority opinion should track the plurality opinion in CLS Bank, which was an opinion he authored

  30. The topic of discussion is a ruling related to 101. Why are you ranting about 103?

    LOL. I’m not “ranting about 103″ Les.

    You gotta love how the patent t–b-ggers never want to discuss 103. Les is SURE that it’s eligible under 101 because it recites a computer. That’s all anyone needs to know. And by golly let’s not talk about how j–ky the claim is under the other statutes.

    Sorry, Les: this is a forum for discussing patent law. All of the patent statutes work together. 101 is just one of the hurdles. If you want to take the simplistic (and legally incorrect view, in light of Prometheus) that any old, eligible element in a claim suffices to render the claim eligible, then go ahead. But such an approach puts all the pressure on 103, then. Is your position that non-obvious ineligible subject matter is sufficient to get around 103?

    Do let us know, Les. I mean, you’ve thought this through already, right? Sure you have. You smart guy.

  31. LOL – more of that accuse-others-of what-you-are Malcolm.

    Tell, me who was right in the Myriad decision.

    Or are you ‘chicken?’ Nearly 21,000 words and still not the three that matter: “anon was right.”

    LOL

  32. Les: I believe that would fall under the category of a “manufacture”, so yes, a properly claimed roll of music, by itself, would be patent eligible,

    Okay, then. So if the music is new and non-obvious, then it’s also patentable under 35 USC 103 — right? And since a modern player piano could scan and read sheet music, then sheet music with new, non-obvious music is also patentable under 35 USC 103, right? That’s how it works on your planet, right? If that’s not how it works, then please explain to us how it actually does work, along with the legal and policy justifications for your alternate system.

  33. The district court will litigate the obviousness issue. After they hand down their decision we can all discuss it.

  34. Yes, they are winning because they conflate 101 and 103 and because they mischaracterize a decision by saying that a judicial body found an abstract idea to be patentable without even mentioning all of the details and limitations in the claim.

  35. You’re not a dissembling chickens–t like Tr0llboy, are you, Les? Let’s see some answers. This is is basic stuff.

  36. I wonder if he cites himself in conversations too.

    Rader cites himself in a key part of his Ultramercial decision. I’m sure you feel the same way about Rader, Amanda.

  37. Who is “we all?”

    The little circle and the invited friends Keeping It Real, Robert, Francis, etc?

    Where did the ‘purely mental’ aspect come from (talk about moving goalposts – and sure enough, you accused someone else of the very thing you were attempting to do)

    The stale rhetorical tools are, well, obvious, Malcolm.

    LOL

  38. His confusion is purposeful and self-induced.

    Worse yet, he does not know when to stop with his self-delusion.

  39. The statute is of course 101 (in pertinent part, machine, manufacture,… And any improvement thereof).

    Try to keep focus, son.

  40. “Would the roll of music by itself be eligible, in your opinion? The truck gear, if properly (structurally) claimed”

    I believe that would fall under the category of a “manufacture”, so yes, a properly claimed roll of music, by itself, would be patent eligible, in much the same way as computer readable media carrying instructions for a processor to do thus and such is patentable.

    I believe such claim.., I say, I say, I do believe such claims are referred to as Beauregard claims.

    Are you not aware of that?

  41. Tr0llboy: if you beg Prof. Crouch again, all the past posts will be wiped out

    I never begged Prof. Crouch to wipe out any past posts.

    You really are a deluded, ly ing skumbag. Keep it up.

  42. “You recite in the claim all of the ‘complex programming’ that makes this alleged ‘invention’ patentable, instead of simply waving your hands in the air about what the magical functions of the allegedly ‘new’ computer.”

    It’s a method claim. You’re not required to “claim all of the ‘complex programming’” in a method claim. It’s a method. Methods are defined by acts or steps to be taken, not by “complex programming.”

    It’s a method claim.

  43. Making music is a “useful art”. You can patent new methods of making music and new machines for making music.

    Brilliant display of your ignorance as to what the useful arts is and is not.

    Truly astounding in the way you self-defeat and there is no doubt as to you even realizing why.

  44. Les: Whether it old or obvious is a separate analysis.

    Uh … there was this Supreme Court case called Prometheus that quite plainly said that merely appending an old and conventional (but eligible) element to ineligible subject matter was not sufficient to render a claim eligible.

    You understand why this is the case, don’t you? Of course you don’t. At least, you’ll never admit it.

    What happens if I try to claim

    1. An article of manufacture, wherein said article is a book, and wherein said book comprises [insert description of new, non-obvious useful image here].

    Is this eligible? According to your “logic”, it is. And according to 35 USC 103 it’s patentable as well. Right? Is that not how the analysis works on your planet? If not, then tell us the correct analysis under 35 USC 103 and the legal and policy justification for the analysis you describe.

  45. Les That’s all semantics.

    Of course it’s “all semantics.” It’s a patent law blog and we’re talking about patent claims. Nice try, though.

    the combination of piano hardware and a new player roll is a new machine….in the same way, a truck might be modified with a new, even lower geared transmission….Both are patentable.

    Really? Would the roll of music by itself be eligible, in your opinion? The truck gear, if properly (structurally) claimed, would certainly be eligible. Would the Federal Circuit find that computer-readable sheet music with new, non-obvious song on it was eligible and patentable? If not, why not?

    I think you should review Prometheus again and refresh yourself about the manner in which determinations of subject matter eligibility are made.

    it would be difficult to describe a new piece of music in terms of claim language

    Uh … no.

  46. “Rader does the same thing here. All he sees is a programmed computer and stops. This is not proper 101 analysis in the case of computers, and never has been.”

    What are you talking about. Its the perfect analysis for 101.

    Whether it old or obvious is a separate analysis.

  47. A new machine may be eligible for patenting. … But that doesn’t mean that every claim reciting that machine in a method is forever eligible.

    Note how Tr0llboy refuses to state whether he agrees or disagrees with this statement, and why. He simply pretends that the issue doesn’t exist and we’re all somehow silly even for bringing it up.

    Rader’s mind, sadly, functions in the same way when it comes to this basic stuff. Oh well.

  48. That’s all semantics. From some points of view, the combination of piano hardware and a new player roll is a new machine….in the same way, a truck might be modified with a new, even lower geared transmission.

    Whether those are new machines or a new uses of old machines matters little. Both are patentable. It’s only that it would be difficult to describe a new piece of music in terms of claim language AND that copyright lasts longer that keeps there from being a long history of patented piano music roll/ player piano patents.

    :-p~~~~~~~~~~~~~~

  49. ignoring of the useful arts.

    Making music is a “useful art”. You can patent new methods of making music and new machines for making music. You want to argue that a machine that is modified to make “new” music is not a new machine, but somehow a machine that is modified to present “new” information (“copyrighted video content, wherein said video content comprises moving images of a hamster”, i.e., information that by itself is ineligible for patent protection) is a new machine. Where’s the distinction? There isn’t any.

    Tell everyone, Tr0llboy: is a claim to an old player piano comprising a roll of “new, non-obvious music” a patent-eligible claim? What would the Supreme Court say, and why? Assuming that you believe it is eligible, is it also patentable? If not, why not? Please provide the statute and Supreme Court case you are relying on to reach the answer to the second question.

    Now we’re going to watch Tr0llboy fling some more insults and do a magical dance.

  50. Your claiming a claim is abstract does not make it so.

    The claim in the present case is not abstract.

    Including the use of a computer means that the claim passes the Machine or Transformation Test, which is an important clue to whether a claimed invention meets the requirements of 35 USC 101.

    You keep ranting about the recitation of legal status of the provided information….I see no indication that anyone relied on that legal status for patentablity. The mention of copyrights merely explains why the viewer would put up with the advertisement…

  51. This clearly was rejected by the Supreme Court in Benson

    Get your merry-go-round ticket.

    Ned – what is that quote you keep on messing up on from Benson? You know the one, the one you keep on trying to add conditions to that I then ask for you to provide legal citations for your additions and then you promptly disappear from the conersation – only to pop up again later trying desparately to make the point that refuses to acknowledge the valid counterpoints that I had raised previously.

    Shall we then reference the FACT that the Benson vommit of dicta did not constrain Rich (and rightly so based on the very reference you supplied – you know, the reference that I then used to debunk your anti-business method crusade in the Bilski HOLDING discussion?

    Or can we just have you acknowledge the points I make without you running away from them (yet again)?

  52. Les disclosure of forced ad watching wouldn’t anticipate the voluntary quid pro quo of the present claim

    First of all, Les, by “ancient” I mean very old. I don’t mean “ancient Roman”. That was pretty funny, though, that you pretended that I meant “ancient Rome”! HAHAHAHHHAHAH! You patent t–b-ggers are really clever. Maybe later you can make some jokes about the “8 3/5 Justices” on the Supreme Court and we’ll all have another huge laugh, just like we all laughed with Tr0llboy the other day.

    As for the “anticipation” issue … nice goalpost move there. I was talking about obviousness. The prior art is filled with examples, hundreds of years old or older, where people who want to view content are presented first or simultaneously with promotional/advertising content. Performing that task on a computer is obvious and, given the very late filing date of this claim, there are no facts in existence that will make the method non-obvious. Are you aware of such facts? If so, let us know what those facts are, Les.

    Readers should also be aware that Les believes that purely mental processes should be patentable. Just so everyone knows where good ol’ Les is coming from!

  53. Ned,

    I have read it. Not only have I read it, I understand it far better than you.

    I have also explained to you (many many many many times) that a case can have more than one holding and that in the case of Alappat the fact that the government pressed for more than one reason to deny the patent yields more than one holding.

    Why don’t you accept this?

    (hint: try to remember what happened in Myriad when you refused to listen to me).

  54. Rader has consistently referred to the invention here as a programming invention that deserves protection. I don’t think really believe that he intends to limit the claim scope to the particular programs disclosed. Anyone who thinks that is a f00l.

  55. Another vacuous comment from Malcolm.

    Attaboy.

    I LOVE the fact that you cannot deny the admissions that you have made.

    The archive feature is wonderful. But maybe if you beg Prof. Crouch again, all the past posts will be wiped out and you can engage in blatant 1ying without the risk of me posting your own words and rubbing your nose in your own CRP – again (and again, and again, and again…).

  56. MM: A new machine may be eligible for patenting. … But that doesn’t mean that every claim reciting that machine in a method is forever eligible.

    Rich’ position in Benson was that reciting a computer was enough. This clearly was rejected by the Supreme Court in Benson. But Rich never gave up on it though. He continued to believe that if a claim recites a machine, albeit old, the claim is directed to eligible subject matter.

    Rader does the same thing here. All he sees is a programmed computer and stops. This is not proper 101 analysis in the case of computers, and never has been.

  57. enjoy digging yourself

    LOL – continue to use that accuse-others-of-what-you-do tool, my friend.

  58. you’re even skummier today than usual

    Since you are clearly engaged in the opposite-of-reality Malcolm ‘dialogue’ mode, this is a great compliment.

    Thank you.

  59. Again with the accuse-others-of-what-you-do rhetoric Malcolm.

    What is the 1ie?

    You do realize that everytime without fail you accuse me of this and I have asked for you to provide a valid example that you have FAILED?

    This is all archived.

    Put.
    The.
    Shovel.
    Down.

  60. Tr0llboy: You quite miss

    You “quite” enjoy digging yourself into a deeper hole, Tr0llboy. Please continue demonstrating to everyone the depth of your skummy skumbagginess.

    See the post at 8:59 AM

    LOL.

  61. Your statement is clearly not supportable

    You’re clearly wrong, Tr0llboy. And also you’re clearly a ly ing skumbag. You just proved that to everyone here. Again.

  62. Tr0llboy: just like you voluntarily admitted.

    Right, just like you voluntarily admitted that your parole officer caught you again in the stairwell of the elementary school, dressed in a bathrobe. Thanks for the voluntary admission. When you stop beating your wife, you should let her know about your admission, too.

  63. Lemley: the alternative — that the court has decided that the scope of the claim doesn’t matter anymore — would represent a major step backward.

    Well, there’s at least one judge on the Federal Circuit who believes that the claims have to read on “the invention”. So, according to this (radical) theory, if the claim seems too broad, then you need to look at the specification and find the narrower “invention” that the applicant undoubtedly intended to claim. As Lemley correctly observes, this is no different from saying that “claims don’t matter anymore — the Court will re-write them for you”.

  64. Tr0llboy: It is a false statement to say that the claims at issue were “A claim that covers only an abstract idea.”

    Except that Lemley never said that. Lemley said this:

    A claim that covers only an abstract idea doesn’t somehow become less abstract simply because the patentee could have claimed a narrower, more tangible invention.

    which is surely true. Man, Tr0llboy, you’re even skummier today than usual. P.U.

  65. You recite in the claim the structural limitation of “programmed to.”

    You know – just like you voluntarily admitted.

    LOL – strike that match, get the marshmallows ready.

  66. Compare “that (2) the ancients used computers for anything, goes without saying. Yet, in attempting to communicate with you, I feel compelled to say it.

    and “Or are y’all going to stick your heads in the sand like you usually do?

    More of Malcolm’s infamous accus-others-of-that-which-he-does.

    Great quality blogging.

    /off sarcasm

  67. “That’s how the game is played by the proponents of these kinds of patents. Somehow these “inventions” are all very “complex” and “technical”, in spite of the fact that they were surely dreamed up in five seconds. Did you notice Rader’s hilarious use of the “flow chart” figure? Very impressive. Also irrelevant.

    Mhmmm, I know, and yes, I noticed.

  68. LOL – the return of the vacuous *click*

    You have to love the quality blogging and the ability to actually deal with points raised…

    /off sarcasm

  69. Ignore the HOLDING of Alappat some more Ned.

    You do realize that you are violating your ethical duty to acknowledge controlling law, right?

  70. Tr0llboy: Reminds me Ned – you have STILL never ac

    *click*

    Just ignore Tr0llboy, Ned. You’ve seen his script already.

  71. Look at this fine mess: point raised and ignored by the likes of Ned and Malcolm, re-trotted out once again.

    Get your tickets to the merry-go-round here…

  72. “Whether software has structure is not a subjective opinion you can form or not. There is science behind it.”

    The meaning of the word “structure” may be simply be being used in different ways mah brosef. Which is literally the root of the conflict. Some people, ta rds like yourself, started misusing the word to describe magical things which exist outside the spec of your patent apps, or, in the alternative, “algorithms”. The word was never meant to be used in that fashion in the field of patents. It’s that simple. Your bad. Just say “my bad” and we’ll forgive ya bro.

  73. Lemley: “it proceeds to discuss in great detail the technology disclosed in the specification but not mentioned in the claims.”

    That’s how the game is played by the proponents of these kinds of patents. Somehow these “inventions” are all very “complex” and “technical”, in spite of the fact that they were surely dreamed up in five seconds. Did you notice Rader’s hilarious use of the “flow chart” figure? Very impressive. Also irrelevant.

  74. Reminds me Ned – you have STILL never acknowledged two important facets of the conversation:
    1)ANTHROPOMORPHICATION
    2) the controlling law on the exceptions to the printed matter doctrine.

    And yes, we STILL both know why this is.

  75. ” In fact at the time of his article there were other articles that clearly discussed the structure of software (including Ginsburg from NYU).”

    Well why not repeat it here or post a link? Is it behind a paylolwall?

  76. Les, you fall for the same trap as did Rich and as does Rader.

    I claim a player piano with new music; a computer with new programming.

    In one view, the claims are not abstract because they claim machines. But when one considers what is new, it quickly appears that the both the player piano and the computer itself are not new machines. The claim is attempting to patent the music or the steps of the program, limited to their performance on a particular piece of hardware.

  77. Could there be some invalidating prior art. Maybe.

    I am not aware of your alleged prior art (1). I’m aware that the Romans nailed people to wooden planks. However, I’m not aware that the ancients forced people to look at ads.

    In any event, disclosure of forced ad watching wouldn’t anticipate the voluntary quid pro quo of the present claim.

    That I am not aware that (2) the ancients used computers for anything, goes without saying. Yet, in attempting to communicate with you, I feel compelled to say it.

  78. If your method is a function of the kind (not the particular item) of data, you are clearly wrong Malcolm.

    You need to go back to your admissions of coontrolling law on the exceptions to the printed matter doctrine and review EXACTLY why.

    Tank it under 101 or tank it under obviousness

    LOL – when legal reason fails, return to the WHATEVER reasoning. Um, sure…

  79. “There is no ‘functional claiming through the back door’ either. This is a method, how else do you claim it other than by the ‘steps’ carried out by it?”

    You recite in the claim all of the “complex programming” that makes this alleged “invention” patentable, instead of simply waving your hands in the air about what the magical functions of the allegedly “new” computer.

  80. media products that are covered by intellectual-property rights protection

    each said media product being comprised of at least one of text data, music data, and video data < ---- LOL

    sponsor message

    The moment you see “limitations” like these in a claim, it’s a really good sign that the claim is j–k.

    You can’t use patents to protect methods of distributing particular “kinds” of content via a computer because the content is irrelevant to patentability. It doesn’t matter if the content is real estate availability content, copyrighted content, music content, movie content, Grandma’s favorite pictures content, “restaurant I am at now” content, son’s credit card account content, Republican talking points content, or any other content. It’s irrelevant. It’s just information. Computers receive, store, process and transmit information. There is no “meaning” to the information that can turn an otherwise old process of distributing information into a new, non-obvious process.

    This is a claim that is trying to patent the use of the computer in an abstract method of providing information to someone. What in the world does the “computer” add to this abstraction? Nothing, except the ancient “benefit” of automation. Tank it under 101 or tank it under obviousness. If we can all agree that it’s absolute j—k that should be tanked, then the discussion about the benefits of using one statute or the other is simplified.

    But the t–b-ggers who h*te 101 also h*te to admit that any patent claim is a piece of obvious s—t. Why is that, I wonder?

  81. as if these alleged facts matter somehow

    They do. Even you have volunteered admissions about controlling law.

    Or did you leave this world again without ‘checking out’ and you are discussing ‘opinions’ outside of patent law again?

  82. Being quoted by the Court that is royaly messing up patent law (101) is NOT an indicator of comparative knowledge and intelligence. Go ask Alice.

    That you would make such a mistake is an indicator – but not in the direction you might think.

    On the other hand… you have a great website!

  83. In patent law professor, “too broad” is measured by comparison to the prior art: 35 USC 102 and 103.

    Do you agree that Ultramercial’s patent should be found invalid as obvious in view of (1) the ancient prior art in which content providers forced people to look at ads and (2) the ancient prior art of computers that provide content (including “copyrighted” content, as if the legal status of the content could possibly make any difference to the patentability of the claim).

    Just say so, then. Or are y’all going to stick your heads in the sand like you usually do?

  84. Not worth dignifying? You mean calling out someone as a liar and having committed an academic integrity violation with a specific example is not worth dignifying?

    I think you mean that you have no respect for integrity.

  85. Rader: his court and the Patent Office have long acknowledged that “improvements thereof” through interchangeable software or hardware enhancements deserve patent protection.

    Nothing in the claims at issue here “improves” the computer from the perspective of anybody except for the d00shbag with the patent and the d00shbag trying to make money off his information. Patents are completely unnecessary for promoting the latter d00shbag to come up with schemes for making money. That’s what our capitalist system is designed to promote. C’mon, Randy. Try harder.

    it claims a particular method for collecting revenue from the distribution of media products over the Internet.

    Revenue collection is one of the useful arts? Huh. Not sure the Supreme Court would agree with that. And the use of a computer here is nothing more than old and conventional horsesh-t. Just wait until Randy gets his first iPhone. Then he can re-write this decision in ten years and substitute “hand held networking device” for “computer” and it’ll be just as devoid of substance.

  86. Rader: it is clear that several steps plainly require that the method be performed through computers, on the internet, and in a cyber-market environment

    Uh … so what? My method of thinking a new thought “clearly requires” that I sit down on a purple couch in an airplane. So what, Randy?

    if the products are offered for sale on the Internet, they must be restricted –step four- by complex computer programming

    “Complex computer programming?” Seriously? That’s funny. More like “old and conventional” programming. And then of course Rader goes on to quote himself (specifically, his beloved Allapat concurrence) saying that “software is hardware” and “the line of demarcation between a dedicated circuit and a computer algorithm accomplishing the identical task is frequently blurred” as if these alleged facts matter somehow.

  87. Rader: in Prometheus, the Supreme Court recognized that the additional steps were those that anyone wanting to use the natural law would necessarily use.

    Whether anyone would “necessarily” use the independently eligible steps or not is utterly irrelevant, at least when we’re talking about a method claim. All that mattered in Promtheus was whether those steps were old and conventional because the only new matter in the claim was an ineligible mental process (i.e., an abstraction). One could have substitute ANY old and conventional step prior to the step of “thinking about a correlation” and it would have made no difference to the eligibility of the claim. It would have remained ineligible.

    So, the above “analysis” is the foundation Rader lays for his more specific investigation of the eligibility of computer-implemented j—k. What could possibly go wrong, right? After all, now Rader can rely on his work because his views on computer-implementation haven’t yet been squashed by the Supreme Court. He never bothers to discuss what computers are and what they do and the fact that they are now as ancient as the horse drawn carriage was in 1960. Let’s just jump to the thrilling (unsuprising) conclusion:

    with a claim tied to a computer in a specific way, such that the computer plays a meaningful role in the performance of the claimed invention, it is as a matter of fact not likely to pre-empt virtually all uses of an underlying abstract idea, leaving the invention patent eligible.

    “Tied in a specific way”? “Meaningful role in the performance”? “As a matter of fact not likely”? LOL. Thanks for clearing everything up, Randy.

  88. Rader: This analysis is not easy, b

    In fact, sometimes it’s incredibly easy. But of course Rader can’t admit that.

    Rader “pre-emption analysis” summary is mostly worthless drivel because Rader, evidently, lacks the imagination to provide examples of what he’s talking about. Instead, he tries to cobble something meaningful together from the Supreme Court decisions which are nearly all horribly written.

    And then when it comes to the easy business of describing the machine-or-transformation test, Rader stunningly manages to fudge it. Try to believe Rader wrote this: “[A] claim is meaningfully limited if it requires a particular machine implementing a process or a particular transformation of matter.” Then he quotes Bilski which crucially qualifies his incorrect statement by holding that the MoT test provides merely “an important clue” to eligiblity. Gosh, I wonder why Rader would do something like that. We can only guess.

    claim also will be limited meaningfully when, in addition to the abstract idea, the claim recites added limitations which are essential to the invention.

    The “essential to the invention” test? What? Don’t even bother trying to understand what it means. Gobblydegook. Then Rader goes completely off the rails, demonstrating that he still does not “get it”. Judge Rich’s kool-aid has stained his soul and, apparently, the mark can not be removed. Here’s Rader with another one of his thoughtless “pronouncements”:

    because a new combination of old steps is patentable, as is a new process using an old machine or composition, subject matter eligibility must exist even if it was obvious to use the old steps with the new machine or composition

    No. No. No. And no. Wrong. False. And really effin d-mb. Just look at the first clause: “a new combination of old steps is patentable.” That’s not a truism. It’s only true sometimes. And it’s downhill from there. A new machine may be eligible for patenting (if it’s properly claimed as a new machine and not as abtraction). But that doesn’t mean that every claim reciting that machine in a method is forever eligible. Once that machine is old and conventional, friend, all bets are off. The only question I have about this is whether Rader’s ignorance on this point if feigned. I suspect that it’s not, which is perhaps more frightening than the alternative.

  89. Citation by SCOTUS (9 technologically-challenged and patent law-ignorant Justices) is hardly a “stamp of approval,” especially by the patent bar.

  90. You guys are a hoot.

    Leave Lemley alone, he is only a gnat on a toenail of the elephant, which is the Supreme Court’s incoherent “abstract idea” gobbledygook. It can’t be defined, but like pornography (who knew the Court had such fetishes?) the Supremes know it when they see it.

  91. Continuing on with the analysis of Rader’s “analysis”:

    the Supreme Court has cautioned that, to avoid improper restraints on statutory language, acknowledged exceptions thereto must be rare.

    There it is again, that strange “statistical” approach to subject matter eligibility. Logic suggests that the “rarity” of a court’s finding a patent (or type of subject matter) ineligible is directly related to the frequencies at which such ineligible patents are sought, obtained and asserted in a lawsuit. This is a constantly evolving situation and these points about “rarity” are red herrings. What is “rare” anyway? Is there any serious person who believes that most patents are ineligible under 101? Even 10% of patents?

    this court gives substantial weight to the statutory reluctance

    Good God, that is lame. I just threw up in my mouth a little bit. After that massive dust-kicking session, Rader finally gets to the interesting questions. Let’s share in the laughter, shall we?

    Technology without anchors in physical structures and mechanical steps defy easy classification under the machine-or-transformation categories.

    Technology without anchors in physical structures and mechanical steps? Hmm. What kind of composition is he referring to that “lacks anchors” in a “physical structure”? Non-boat “technology, maybe?

    Then Rader pretends that Prometheus never happened, just before he admits the opposite. What is the point of writing this: A court cannot go hunting for abstractions by ignoring the concrete, palpable, tangible limitations of the invention the patentee actually claims, which is absolutely false? In the very next sentence, Rader contradicts himself: the relevant inquiry is whether a claim … includes meaningful
    limitations restricting it to an application, rather than merely an abstract idea.
    Guess what phrase Rader included at the ellipses? That’s right: “as a whole”. A phrase which adds absolutely nothing to his point but by golly he’s going to say it. It’s a present to those special folks “in the industry” who have trouble remembering rules with more than four words.

  92. It’s time to walk through Rader’s “reasoned” opinion and count how many self-serving statements he makes on his path to keep Ultramercial’s j–k patent afloat:

    The district court dismissed Ultramercial’s claims for failure to claim statutory subject matter without formally construing the claims

    Exactly like the Federal Circuit and the Supreme Court did in Myriad. Why the sudden change? Hilariously, further down in the opinion, Rader notes that the CAFC has never made a “bright line rule requiring claim construction.” Let’s just cut the cr-p: some attempt at a partial claim construction at least is always required before analyzing the claims under the patent statutes. How else can a jurist explain why the claims are being approved of or invalidated?

    the only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility.

    There’s some more of that Therasense-style wa nking. Rader’s telling everyone that if he can think up a “plausible” construction that would make the claim eligible, then the case shouldn’t be dismissed. That’s the patent crack talking.

    there is no doubt the § 101 inquiry requires a search for limitations in the claims that narrow or tie the claims to specific applications of an otherwise abstract concept.

    Rader’s already muffing it badly and we’re only on page 6. Let’s fix the error in his statement: “there is no doubt the § 101 inquiry requires a search for novel and non-obvious and, most importantly, eligible subject matter in the claims that narrow or tie the claims to specific applications of an otherwise abstract concept.” There. That was easy.

    The presence of factual issues coupled with the requirement for clear and convincing evidence normally will render dismissal under Rule 12(b)(6) improper.

    This is just wa nking again. Courts shouldn’t be worrying about whether too many claims are being correctly found invalid or ineligible. There shouldn’t be any consideration along the lines of “I just dismissed that other junky patent case under 12(b)(6) last week and now here’s another jnky claim … maybe I’m doing this wrong?” Just follow the law as best as you understand it and make a good coherent argument. You’d think if anyone should be aware of that it would the Federal Circuit.

    if there are factual disputes, claim construction should be required.

    No kidding, Randy. Really? How much are the taxpayers paying for this banality?

  93. NWPA says: And, Lemley, you have position on me, but not knowledge, intelligence, or integrity. You have position and time or your arguments and reputation would be toast.

    NWPA, why don’t we defer the question of comparative knowledge and intelligence until your writings have been cited by the Supreme Court as often as Mark Lemley’s writings have been in recent years.

    (Your comments about integrity aren’t worth dignifying with a response.)

  94. It’s equally ‘false’ to say that isolated nucleic acids are ‘products of nature.’

    Your statement is clearly not supportable Malcolm.

    Come back to this world soon.

  95. the author quoted this claim to discuss its structure, but there is something even more fundamentally problematic than functional claiming at stake here.

    B-b-b-ut what about the p-p-presumption of v-v-validity?! Stop picking on those claims!

    /patent t–b-gger off

  96. EG I was making a subtle rephrasing of the expression “why look for a conspiracy when the situation can be explained by incompetency.”

    I might add that nobody in the world cares how much the patent t–b-ggers h*te Lemley. You guys can climb a hill and immolate yourselfs in the name of software patents and people will just shake their heads and move on. Nobody on earth except Ultramercial and the t–b-ggers want obvious j–k like Ultramercial’s patent to be enforceabe. Oh but wait — this about 101? And that’s “scary” because more j–k patents will get caught in the trap. Meanwhile, nothing else will change because as much as the t–b-ggers whine and cry to the contrary, patents like Ultramercial’s don’t promote anything except more j–k patent applications and patent trolling.

  97. Tr0llboy: It is a false statement to say that the claims at issue were “A claim that covers only an abstract idea.”

    It’s equally “false” to say that isolated nucleic acids are “products of nature.” Not really the end of the world, though, in the context of an ongoing conversation. I’d put statements like this more in the realm of “conclusory”. Lemley’s statement sounds like what he believes is the correct holding.

  98. Tr0llboy: which master do you service first: the Left or the Right?

    This is the question Tr0llboy asks himself every day before deciding which hand to wank with.

  99. Caught that EG – except I doubt that ‘incompetency’ flies here.

    Lemley is very much aware of what he is doing.

  100. Sorry, anon, I was making a subtle rephrasing of the expression “why look for a conspiracy when the situation can be explained by incompetency.”

  101. The link to the SSRN paper is broken and sends you to some mail system’s login page.

    This one should work.

    I had a quick look at the paper, and came across footnote 64:

    US8350481B1 claim 1 (issued Jan. 8, 2013) :

    A method of creating a light effect, said effect providing perceived moving images to the human eye,
    said method comprising:
    i. concurrently exposing a variety of colored designs to at least two different colors of light emitting
    diode lights;
    ii controlling said light emitting diode lights to provide a desired light effect selected from the group
    consisting of
    i movement, and,
    ii complete change of image colors in the designs.

    KABOOM! That was the cartoonesque sound of my head exploding.

    This beauty was filed in 2010. The dependent claims are also worth a look:

    2. The method as claimed in claim 1 wherein the venue for the use of the method is a bowling establishment.

    3. The method as claimed in claim 1 wherein the venue for the use of the method is a game parlors.

    4. The method as claimed in claim 1 wherein the method is used in an indoor mirror maze house.

    5. The method as claimed in claim 1 wherein the method is used in a glass maze house.

    This was the examiner’s search strategy from PAIR. All of it. Direct allowance.

    The author quoted this claim to discuss its structure, but there is something even more fundamentally problematic than functional claiming at stake here.

  102. AAA JJ,

    What you are not acknowledging is that Lemley is very much aware that he is standing completely in the weeds, that he has no colorful argument (570nm notwithstanding) for a “nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law,” and that he is merely spewing propaganda with his fallacious presentation. He has stepped well beyond presenting an idea for a different law system.

    Taken as a whole, I would most definitely sanction him if this was presented in my courtroom.

  103. And really! Think about it. He knows exactly the implications of this assertion of his. Exactly. Everyone that understands patent law does. And yet he makes these claims on his own that are not supported by science or law.

    And, you act as if it is some kind of subjective opinion that he is entitled to. It is a devious man that knows exactly where to press to get the result he wants. That by the way is a good description of Stern as well the architect behind Benson.

  104. AAA JJ,

    It is a false statement to say that the claims at issue were “A claim that covers only an abstract idea.”

    Let’s not pretend that a ‘clever 1ie’ is not a 1ie because of the way it is couched.

  105. AAA JJ: a false statement is one like “software has no structure” where Lemley does not discuss journal articles by some of the best academics in the field saying it does. I posted a link to that article of his. In fact at the time of his article there were other articles that clearly discussed the structure of software (including Ginsburg from NYU).

    Whether software has structure is not a subjective opinion you can form or not. There is science behind it. There are academics in law and scientific journals. One cannot simply take a position counter to law articles and science (and not even reference them.) That is an academic integrity violation. And, to be clear, Lemley knows the implications of what it would mean not to have structure. We see it here in this post of his. If the method conveys no structure then it is functional claiming and if a computer configured conveys no structure then it is also functional claiming.

    Look! This is not some minor issue that he happened to step off the path on. The structure issue is huge and academics understand the implications. I took a PLI course about 5 years ago where a professor at NH law school even discussed this very issue.

    Lemley knowingly made false statements to get a result. That is a rule 11 violation and it is an academic integrity violation. I am not why you see this as gray. It could not be more black and white.

  106. “There is no ‘functional claiming through the back door’ either. This is a method, how else do you claim it other than by the ‘steps’ carried out by it?”

    This is, of course, 100% correct. Lemley is completely out in the weeds on this one.

  107. “How AAA JJ, do you explain an academic that knowingly makes false statements in journal articles?”

    I’ve asked you numerous times to point out these “false statements” but you never do.

    If Lemley makes a statement about what he believes the law to be, or ought to be, that is not a “false statement” simply because you disagree with it. It is a difference of opinion.

    As for whether “software has no structure” is a false statement, a lot of people think that. I don’t. There’s a reason that “state machine” is (or maybe was) a term of art. But I don’t think that any and everybody who disagrees with me on that lacks integrity. They just disagree with me.

  108. He does not look for the devious, EG, he employs the devious.

    In essence, he offers the following ‘logic’:
    Ridiculous strawman 1,
    Ridiculous strawman 2,
    An implicit adoption of my latest pet theory – because nothing else can possibly make sense given that Mark has assumed that the claims are merely an abstract idea in clear violation of the law.

    Complete fallacy from top to bottom.

    NWPA, I would beg to differ: this most assuredly does NOT read like a brief, as a brief would be governed by Rule 11 and this piece of obvious claptrap would earn a very quick slap down under that Rule. I do not see any part of (b) that is not violated here.

  109. The conflict is obvious: which master do you service first: the Left or the Right?

    Sure, they are in bed for the destruction of the patent system, but what then?

    When the Left wakes up and realizes that they have been whored by the Right, which side does Mark zealously represent?

  110. I am surprised LB that you don’t see this. One academic on here said regarding claiming that software has no structure “but, that’s what you want.” The academics that are attacking patent law seem to have no integrity or sense of responsibility to represent the facts or law in a fair light.

    That is not a work of an academic.

  111. The conflict between academic integrity vs. advocating for your clients positions. I think what we see in Lemley is a person that has abandoned academic integrity for advocating for his clients (and his positions.)

    How AAA JJ, do you explain an academic that knowingly makes false statements in journal articles? His “journal” articles, in fact, read very much like briefs.

  112. Please define “high level of abstraction”, ’cause it doesn’t look abstract to me. Are you confusing “abstract” with “broad”? In patent law professor, “too broad” is measured by comparison to the prior art: 35 USC 102 and 103.

    In what sense is this abstract?

    1. A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

    a first step of receiving, from a content provider, media products that are covered by intellectual-property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;

    a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

    a third step of providing the media product for sale at an Internet website;

    a fourth step of restricting general public access to said media product;

    a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

    a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;
    a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

    an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

    a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

    a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and
    an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

  113. “…how do you resolve the inherent conflict of making money at law firm with your position as a ‘professor?’”

    What is this inherent conflict?

  114. Thoroughly agree, anon. What Lemley does is look for the devious instead of the obvious: a computer-implemented method, i.e., via the Internet. There is no “functional claiming through the back door” either. This is a method, how else do you claim it other than by the “steps” carried out by it? My disdain for Lemley’s thinking continues to grow.

  115. You know the arguments we have here at patentlyo are really examples of the same type of arguments that are going on in the greater society.

    The Lemleys of the world are winning right now. Bill Moyers had a special regarding this topic about 10 years ago. How people like Lemley can make statements that are clearly wrong and not be held accountable for them. I think we should all try to find a way to hold Lemley accountable.

    He has knowingly made false statements in journal articles. In the good old days that meant you spent the rest of your life as a carpenter.

  116. It is unbelievable that Stanford professors don’t force him to resign for academic integrity violations.

    He is knowingly making false statements in papers published in journal articles published by Stanford.

    He should be forced to resign.

  117. Beyond that, it simply makes no sense. The patentable subject matter rule is against patenting abstract ideas. A claim that covers only an abstract idea doesn’t somehow become less abstract simply because the patentee could have claimed a narrower, more tangible invention.

    Way to use both a strawman AND to assume the conclusion that you want.

    One small problem, Mark: the claim in question isn’t one that merely “covers only an abstract idea.”

    Otherwise, a real piece of CRP propaganda from you. And that’s being generous.

  118. phrased at a high level of abstraction

    This “article” is loaded with such pretentious nonsense.

    If this were ‘journalism,’ the wavelength would be about 570 nm.

  119. Lemley’s proposition is that information processing claims convey no structure to one of ordinary skill in the art. And, that computer programs have no structure. That is Lemley’s contention despite the fact that he knows that is not true.

  120. “….the Federal Circuit held that a series of steps for serving ads to customers over the Internet, phrased at a high level of abstraction, was patent-eligible subject matter under section 101.”

    Professor Lemley, what exactly is this level of abstraction? Do you have a scale of some sorts? And if so what would be the next level of abstraction after Ultramecial’s claims, as well as the level proceeding the claims, and how would both of those claims be recited at those specific levels?

  121. “…because the specification contained detailed technical implementations and a complex flow-chart, even though none of those were included as limitations in the claim. What is going on here?”

    Correct me if I am wrong Professor Lemley but isn’t the court supposed to read the claims in light of the specification and as the claims would be interpreted by a person of ordinary skill in the art?

  122. stating the abstract idea preempt

    Still waiting for you 6. What is the abstract idea that you think is here? Where on the ladder do you think you are? Why does it matter if there are abstraction rungs above the one claimed?

  123. >To begin, it directly contradicts controlling Supreme Court >precedent such as O’Reilly v. Morse, where the court held >narrow claims patent-eligible but a broader claim ineligible.

    You really are shameless. Is that the holding in Morse? That narrow claims are eligible and broad claims are not. Shameless amoral devil.

  124. Quite right, anon. I wonder if Lemley will have the guts to engage us. Probably not. The academics tend to rely on their perch for safety.

  125. I should add, that I hope that the USSC resolves this case by a simple one page opinion stating the abstract idea preempt and that the Federal Circuit needs to get off of its pato ot and with the program.

  126. So, according to you (Lemley) computer programs have no structure. That is wrong. And, so it is not surprising that you would incorrectly think that a recitation of an information processing machine would convey no structure. Under your reasoning a circuit has no structure.

    So, Lemley, tell us how computer programs have no structure. And, given this gross intentional misrepresentation why should we trust anything you write?

  127. “But the majority goes out of its way to suggest that factual questions are likely to predominate in a section 101 inquiry, though the court is a bit vague on just what those factual disputes might be. ”

    Obviously, because there are none, and the questions he does attempt to shoe horn into being factual inquiries are far from it.

    ” Curiously, however, the court never explicitly tells us what that narrow construction is. ”

    Because there is no such construction. Which is, as far as I’ve been made aware, why the DC didn’t write it down in the first place.

    “Then the majority does something very odd”

    Then? Then? After all that odd sht it just did that you pointed out you say “then”?

    “it proceeds to discuss in great detail the technology disclosed in the specification but not mentioned in the claims. The court clearly viewed Ultramercial’s claims as patent-eligible because the specification contained detailed technical implementations and a complex flow-chart, even though none of those were included as limitations in the claim. ”

    I know where you’re going with this, but I disagree already before you even say it. No, they didn’t adopt your pet suggestion, they’re just went plain bonkers.

    “It seems unlikely that each of them simply forgot that it is the claims that define the invention. ”

    Actually, the suggestion that perhaps they simply forgot the lawl is the most generous suggestion anyone could possibly make regarding this “decision”.

    “The court didn’t explicitly say what it was doing.”

    And it just so happens that doing that is what certain types of crazy people do.

    In any event, after I got done reading this decision all the way through my jaw literally nearly hit the floor at how amateurish the whole came across as. It seemed to me to be deliberately so, in order perhaps to provoke the supremes into making themselves even more clear that the law is the law just as they’ve said it is for the last 100 years. And I guess I can support that.

  128. LOL – still waiting for you NOT to be chickensht and deliver what you said you would on the other thread.

    And son, that is not ‘tr011ing’ you.

    The word you are looking for: accountability

  129. “reasoning that patentable subject matter is a pure question of law and so not dependent on factual conclusions”

    Correctly reasoning I think you mean.

    And I only just now, a day ago had it pointed out to me that Rader has now back-doored in some factual inquiries into the legal question of law all patent legal questions of law. It’s preposterous, so much so that I had skipped over much of his blabbering in those sections as being merely more stuff I’d likely eventually disagree with but weren’t the real holding.

    Turns out, the Federal Circuit is 100% completely off their rocker, flip ped their sht so to speak. Apparently now 101 is a mixed question of fact and lawl, or at least a question of lawl predicated on a bunch of factual findings. I must humbly disagree, as others have already brought up this possibility and I disagreed with it then. I could go on and on as to why, but I’ll wait until anon, true to form, trolls me into telling him.

  130. I have to give it to you, though. I guess having Stanford at your back gives one a lot of nerve.

  131. So, Lemley, do you really think that anyone in patent law doesn’t know that you wrote that column to provoke? We all are very aware of 112, 6 and what it takes and means to be put in that bucket. Clearly they were not in this opinion.

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