Subject Matter Eligibility Post-CLS Bank

By Dennis Crouch

DDR Holdings, LLC v. Hotels.com, L.P., 2013 WL 3187161 (E.D.Tex. 2013)

In late 2012, jury agreed with DDR that its business method patents were being infringed upon and that the various defendants had failed to prove the claims invalid as either anticipated or obvious. The patents themselves are related to a method of “coordinated offsite marketing” of “internet websites.” U.S. Patent No. 7,818,399 and 6,993,572. The jury was not given the question of patentable subject matter under 35 U.S.C. 101. In a recent post-verdict ruling, Judge Gilstrap has also rejected Defendants’ Section 101 argument.

A typical claim in the patents is No. 17 from the ‘572 patent that reads:

An e-commerce outsourcing process comprising the steps of:

a) storing a look and feel description associated with a first website in a data store associated with a second website;

b) including within a web page of the first website, which web page has a look and feel substantially corresponding to the stored look and feel description, a link correlating the web page with a commerce object; and

c) upon receiving an activation of the link from a visitor computer to which the web page has been served, sewing to the visitor computer from the second website a composite web page having a look and feel corresponding to the stored look and feel description of the first website and having content based on the commerce object associated with the link.

In considering the claim scope, the Judge agreed with the patentee that the inventions embodied by the claims present “functional and palpable applications in the field of computer technology.” (Citing Research Corp). The judge also walked through the litany of “machine” elements required by the claims and concluded that the claim “also passes the machine-or-transformation test” and that conclusion strongly suggests patentable subject matter as “a useful and important indicator in the § 101 analysis.”

[The] claimed e-commerce outsourcing process requires [an] interaction between a data store storing a look and feel description of a web page and an activation of a link from a visitor computer to receive a composite web page. The method of an outsource provider also discloses a server that responds to activation by a web browser of a computer user by retrieving pre-stored data from storage, then generating and transmitting visual elements corresponding to the source page.

. . . .

As discussed above, the asserted claims disclose a specific set of physical linkages that involve a data store, server, computer, that together, and through the claimed interconnectivity, accomplishes the process of displaying composite web pages having the look and feel of the source web page. [Defendant] urges the Court to find the invention is only a business method of making two web pages look alike. While the ′572 and ′399 patents do, indeed, cover the concept of two web pages with visually corresponding elements, there is more to the asserted claims when considered as a whole. “Diehr emphasized the need to consider the invention as a whole, rather than ‘dissect[ing] the claims into old and new elements and then … ignor[ing] the presence of the old elements in the analysis.” Bilski. When the asserted claims are considered as a whole, the claimed invention lies in stark contrast to the facts of Bancorp. In Bancorp, the claimed “mathematical concept of managing a stable value protected life insurance policy” was found unpatentable as an abstract idea because mere mathematical computer was not dependent upon the computer components required to perform it. In contrast, the interactions and linkages of computer machinery to generate composite web pages in this case are integral to each of DDR’s asserted claims. Accordingly, the first prong of the machine-or-transformation test is satisfied. That being the case, this Court needs not address the transformation prong at this time.

Using the word “idea”: The word “idea” seems fairly abstract and thus potentially troublesome for a patentee. In this case, the inventor used the word “idea” repeatedly in his trial testimony. The defendants made the argument that the inventor’s language should serve as evidence that the claim is abstract. However, Judge Gilstrap rejected that argument as well:

The Court is also not persuaded that the inventor’s use of the word “idea” at least 25 times to describe his invention is evidence of unpatentable subject matter. The inventor’s testimony was given during a one week trial, and it is not unusual to explain a patent claim as a “gist” or “core idea.” Such testimony is not instructive that a claim is an abstract idea for purposes of § 101 patentability. Moreover, “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas,” yet, “too broad an interpretation of this exclusionary principle could eviscerate patent law.” Mayo.

In all likelihood, the case will soon move to the Federal Circuit for review.

===

Judge Gilstrap cited the recent fractured en banc decision in CLS Bank v. Alice only once and for the position posited by Judge Lourie that the statutory presumption of validity applies to the Section 101 analysis.

113 thoughts on “Subject Matter Eligibility Post-CLS Bank

  1. Ned ignores the Supreme Court when it suits his agenda.

    LOL – and then he seems shocked when I get cases like Myriad right.

    But at least he found the nuts to admit I was right in that case. Same cannot be said of Malcolm or the rest of the little circle group.

    Here, though, we will have Ned either ignore the plain words or attempt to derail the conversation, only to reappear on another thread on another day with the same agenda and with the same lack of (ahem) integration of what the Supreme Court has said on the subject.

    C’est La Vie

  2. Ned: “101, how do you know the Supreme Court does not share my views?”

    Because the Supreme Court said “The Court is unaware of any ordinary, contemporary, common meaning of “process” that would require it to be tied to a machine or the transformation of an article. Respondent Patent Director urges the Court to read §101’s other three patentable categories as confining “process” to a machine or transformation. However, the doctrine of noscitur a sociis is inapplicable here, for §100(b) already explicitly defines “process,” see Burgess v. United States, 553 U. S. 124, 130, and nothing about the section’s inclusion of those other categories suggests that a “process” must be tied to one of them.) BILSKI v. KAPPOS, 2, 2010, 561 U. S. (2010) 3 Syllabus

  3. Anon, if you would actually ask a question, I might answer it.  Instead, you keep asking me to answer your questions, leaving me with nothing I can do.

     
    But, we did agree that using a computer involved programming it as opposing to using it as  a heater or a paperweight. 
     
    So, if the person who programs the computer is the infringer, what about the person who sells the computer?  Clearly, he can have nothing to do with the infringement unless the program is part of the computer at the time he sells it.  Right?
     

  4. Ned,

    Will you then respond to my many points you have chosen to ignore?

    Will your third party benefactors allow you to do so?

  5. Sorry Malcolm, – as much as you want to cast such aspersions, you have not (and cannot – without violating PRof. Crouch’s direct warning to you about 1ying) poin tbalcnk deny that you made the admissions of which I speak.

    Bu tyou can try. And then I can post the direct link and words showing your direct and blantant 1ies.

    It will be fun.

  6. how do you know the Supreme Court does not share my views?

    Easy – you have posted your views. And of course, your habit of selective parsing has gotten you into trouble (or have you forgotten Myriad already? Or Bilski? Or Prometheus?

  7. Shorter

    LOL – I think that Malcolm has added yet another svckpuppet at PatentDocs.

    And again withe tactic of accuse-others-of-that-which-you-are Malcolm.

    Y A W N.

  8. You also forgot your own voluntary admission that ‘configured to” IS structural language.

    Just like you forgot your own voluntary admission that you paid your way through night school by turning tricks behind the 7-11. Until you flunked out, of course.

    Nice game, Tr0llboy. Kinda old and pathetic, but it still has some magic left if you squint really hard (something you seem to enjoy doing — don’t forget the kleenex).

  9. Anon, you have never discussed the facts of the case in any communication with me. Therefore we cannot even begin to discuss its the holding.

    Sent from iPhone

  10. Nice misrepresentations

    I didn’t misrepresent anything, Tr0llboy. Les’ words are there for all to see.

    It’s funny how all you guys steadfastly refuse to discuss what you actually believe is patentworthy. It’s a big problem with your script because it makes you really look like dissembling shmucks every time you are asked to simply spit it out. I guess that’s because it’s easier to simply re-type your insults over and over.

    Why not just tell everyone, Tr0llboy: do you believe that purely mental processes should be eligible for patenting? Les believes that. He said so expressly in the past and he’s never backed down. What do you believe, Tr0llboy?

  11. LOL – Malcolm is busted moving the goalposts from from ‘determine’ to ‘think,’ dons his shiny aluminum helmet (since machines think and he needs to protect himself from all those tr011s out there), and then engages in his typical accuse-others-of-that-which-he-does “We’ve got another Hu mpty Du mpty

    Classic p1sspoor blogging.

    Attaboy Malcolm.

  12. An abstract idea is one that has no reference to material objects or specific examples — it is not concrete.

  13. It does rather look like the paradigm is also preempt here. And as we all know, paradigm’s aren’t eligible. Although, I forgot if it was judicially excluded or if it simply didn’t fit in a category in the paradigm case. Maybe both? It would be interesting to see if “paradigms” should be also considered judicially excepted by the federal circuit, my money is on that they would be even by the Fed. Circ.

  14. Nice misrepresentations malcolm.

    Say, have you anything at all to say that is substantive and that would advance the conversation? I mean, like anything at all?

    All I see is more of your frantic (and pretty effeminate) putdown attempts. No One hase ever ventured to your strawman land of claims comepletely of mental processes. (And you STILL have not found the nuts to admit that I was right and that you were wrong in the Myriad case).

    A question for you and your ‘meetings,’ though: how many chairs do you need when you, Keeping It Real, Robert, Francis, Shrivan, and Vivika M. gather round your bonfire to toast marshmallows over your pet theories?

  15. You want to see mewling QQ?

    LOL – you are the king of mewling QQ – 21,000 words of it and nothing of merit after Myriad

    And especially those three (LOL – if you had the nuts) special words: anon was right.

    LOL – not bad from someone who ‘didn’t even care about it.’

  16. Ned said”:…. the way I view it is that there is a 101 problem when the point of novelty over the prior art is a law of nature or something inherently abstract, like price or risk, that is not integrated into the underlying subject matter such as to produce a new, physical, result.”

    That’s one wicked convoluted, conflated brew of personal views and patent law you have there. I mean you throw in everything but the kitchen sink! Fortunately for …well the entire nation, the Supreme Court does not share your view. But I have to aske..why do you need to make things so complicated and twisted when the statute is so very clear, and the implicit exceptions to that statute so few and narrow? Is it because you and the likes of MM know the public has no will or desire to lobby congress to change the law that would make software and business methods, ineligible?

  17. you forgot the notion of “functionally related.”

    Ah, yes. That “notion”. Is that in the statute, Tr0llboy? Or was it “legislated from the bench”?

    Let us all know.

  18. You are a mewling QQ P0S.

    You want to see mewling QQ?

    Breyer’s decision is the most intellectually dishonest decision I have ever read, which is saying a lot given the utter contemptuous understanding of patent law displayed by the Supreme Court over the years. It is truly troubling that all 9 of the Justices concurred in what history will regard as one of the worst decisions in the patent space EVER!

    Yes, Congress will be asked to step in and rectify this absurd ruling, and they should. Knowing how the legislative branch operates I cringe at the thought of Congress coming to the rescue. The only thing that gives me solace is that the industries summarily executed this morning have an A+ lobbying game, which in Washington, DC means everything.

    Virtually none of the equipment that empowers the wireless economy could be patented under a strict reading of this case.

    LOL. From your hero and mentor. I wonder what “equipment” he’s referring to?

  19. sort of patent is beloved by trolls everywhere

    Ohhhh – everywhere – better put an extra gloss of shine on that tinfoil helmet of yours tonight Malcolm.

    LOL

  20. Ned, Are you changing your position in Prometheus?

    Or do you have a ‘selective’ definition of ‘enough?’

    (your ability to parse and merrely take selective portions of the Supreme Court cases is legendary – and is one of your greatest failures)

  21. Are you ready to discuss [oldstep]+[newthought] claims in a sober intelligent manner

    LOL – that smoldering ember is in the bonfire of your own making when you attempted your first substantive squaring of the Prometheus case with the prior case most on precedent.

    Even your vaunted English as a first langugae skills were not enough as you REFUSED to attempt to save your self-immolation.

    LOL

    Mmmmmmm, toasty.

    Tell you what though, I will be happy to share the bag of marshamallows with you, Keeping It Real, Robert, Francis, Shrivan, and Vivika M.

    LOL

  22. Malcolm,

    You also forgot your own voluntary admission that ‘configured to” IS structural language.

    I love the fact that you cannot outright deny those admissions that you made.

    The bonfire burns bright, the marshmallows are at the ready.

  23. Malcolm,

    In your hurry to dtuff your strawman, you forgot the notion of “functionally related.”

    (geesh, after you went to all that trouble earlier to immolate yourself by voluntarily admitting that you knew the controlling law on the exceptions tothe printed matter doctrine).

  24. insist that you can determine the holding of a case without even knowing

    Completely false misrepresentation Ned.

    On the other hand, you insist on ignoring the FACT of the case has more than one holding, and in particular, you misrepresent one of theose holdings in a clear violation of your ethical duties as an attorney to acknowledge controlling law.

    What is worse, is that it appears that you do so in order to deceive third parties into believing the law is as youwish it to be, rather than as it actually is.

  25. Ah, the famous vacuous *click* – indicating that Malcolm really has nothing worthwhile to say.

    Now while what you asked of NWPA might be interesting to you, it has nothing to do with my comment regarding you.

    You are a mewling QQ P0S. Well, that and an internet toughguy (LOL like 6 – who claimed to take on anyone at anytime and STILL has note delivered what he said he would).

  26. If one clicks on Amazon’s link and gets a site that is not Amazon, but has the look and feel of Amazon, then one is being fooled. One grounds for denying a patent is illegality. I think the whole point here is illegal.

    Ned, this isn’t about “fooling people”. The invention purports to “allow” people (especially the patentee or licensees of the patentee, nyuk, nyuk!) to create relationships similar to those created by Amazon and its “affiliates” except that instead of being diverted to the merchant’s store (e.g., Amazon) when a link is clicked, a reader of an “affiliate’s” web page will be presented with “commerce object content” (e.g., a shopping cart) in a site that has the “look and feel” of the affiliate’s web page.

    You could (and people have, for a long time) design your own web site with your own “commerce object content” and a user/reader of your site who clicked on the link and bought the commerce object would never know if they were experiencing the claimed “paradigm” or not. The “beauty” of the “new paradigm” is that the “commerce object” can be a third party’s “commerce object” and both you and the third party (and maybe even some other folks we haven’t thought of yet — start “inventing”!!!!) can pocket the profits but the user/reader never “feels” that he’s left your awesome website.

  27. Real progress:

    link to inthesetimes.com

    Outrage has been building over payroll debit cards—fee-laden prepaid bank cards that some businesses now use to pay their workers—since the Times Leader reported on June 17 that Natalie Gunshannon of Dallas Township, Pa. had sued the McDonald’s where she worked for making the cards compulsory. The cards are loaded with sneaky fees that leave workers essentially paying the bank for access to their wages.

    Since the story broke, Gunshannon’s employer has made the cards voluntary, and New York state has opened an investigation into their use.

    I wonder if McDonald’s “paradigm” of paying employees with payroll debit cards was patented by someone? Wouldn’t suprise me. That sort of patent is beloved by trolls everywhere — and the USPTO is happy to oblige them.

  28. MM, I see your point.

    Also, the so-called definition is indefinite. One really doesn't know exactly what look and feel really is.

    But, it also seems that the intent here is to mislead. If one clicks on Amazon's link and gets a site that is not Amazon, but has the look and feel of Amazon, then one is being fooled.

    One grounds for denying a patent is illegality. I think the whole point here is illegal.

  29. anon: That one?

    This one anon: “It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a “different state or thing.” We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents.”GOTTSCHALK v. BENSON, 409 U.S. 63 (1972) 409 U.S. 63

    That would be the one! Ned likes to twist the law and say that MoT is required by Benson. However, as evidenced above, Benson said MoT was not required. Ned also likes to twist the law and say Diehr was eligible because it passed the MoT when in fact the MoT was not even a test in Diehr. The MoT was an important and useful clue in Diehr but not a test and certainly not a requirement.

    In additional when given the chance to interpret Diehr the Supreme Court in Prometheus said the claims in Diehr were eligible not because they passed the MoT but because the claims as a whole were “integrated”.

    See: (“In Diehr, the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. 450 U. S., at 187. These additional steps transformed the process into an inventive application of the formula.” ) [MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC 566 U. S. (2012) 3 Syllabus] (Emphasis Added)

  30. Tell me Malcolm, other than posting

    *click*

    I’m not asking NWPA to file a re-exam or submit art to the PTO. I’m asking him to present his 103 argument. If he posts some relevant art or a relevant argument that wasn’t previously considered, then

    For the record, I have a website. And I have a link on that website for buying stuff that takes you to a second web page with the “look and feel” of the first website and “content based on the commerce object associated with the link.” I also personally know many, many other people with such websites.

    Guess what happens if these trolls threaten me with this piece of j-nk? I’ll give you a hint: what happened in Vermont is the tip of the iceberg.

  31. Here’s the definition, Ned:

    The look and feel is captured by selecting an example page the host, retrieving the sample page from the host, identifying the look and feel elements from the sample page and saving the identified look and feel elements. “Look and feel elements” include logos, colors, page layout, navigation systems, frames, ‘mouse-over’ effects, or other elements that are consistent through some or all of a Host’s website.

    As I wrote upthread, color is enough.

    Judging from the summary section, the point of this “invention” is to make it more difficult for consumers to leave a website by clicking on a link. As stated by the “inventors”, “the affiliate commerce system and method of the present invention represents a new paradigm of co-marketing on the Internet.” [< ----LOL!]

    According to the spec, the current "paradigm" is for a product link to be put on an "affiliate's" website and then when you click on the link you get directed to the merchant's website (e.g., this is how Amazon works with its affiliates and this "paradigm" is probably covered by another j-nk patent).

    The "new paradigm" is that instead of going to the "merchants" website upon clicking the "commerce objec" link, a page is created and served to the user that "looks and feels" like the affiliate's website except it includes "content based on the commerce object." In other words, the user won't be enticed to leave the affiliate's web site where the user was originally browsing.

    The prior art would include would-be affiliates selling stuff on their own websites, with the same look and feel. It's beyond me how this "new" paradigm could be deemed non-obvious over that. The major distinction from that (very old) paradigm appears to be that a third party (say, some Amazon wanna-be) could skim profits by providing to affiliates (and merchants) the shopping cart with the "look and feel" of the affiliate website.

    Again, we ask the question: why in the world should patents be granted on business "paradigms" like this, and why in the world are the same folks who defend such patents always screeching and flag-waving about the glory of capitalism out of the other side of their mouths? If you've got a competing business model, then compete with it. What progress in what useful art is promoted by patents on j–k like this?

  32. The bonfire is too bright for me to see any intelligent questions from you, Malcolm.

    Try again.

  33. I don’t think out main blog posters really appreciate the PON/Integration analysis.

    But the main blog posters recognize your Point of Novelty Cannards.

  34. The specification is hilarious:

    As a result, people were happy to litter their sites with links, knowing that, odds were, others would do the same for them and the traffic gain/loss would probably balance out. So, despite the fact that by including and promoting a “links” page, website operators were effectively encouraging people to leave their website, link sharing developed into a standard practice.

    Then, entrepreneurs and other business-oriented individuals came along and introduced capitalism to the Internet.

    It’s a great joke but I imagine the inventors are too high on their own fumes to realize it.

  35. I have used the premise of too fine an application eviscerating patent law in the past.

    You “used the premise”? LOL. Your funny, Tr0llboy.

    I’m not talking about whether you “used the premise” that 101 (or any other statute) can be interpreted too broadly. I’m talking about the fact that you and The Club of Patent Apologists routinely ignore Justice Breyer’s own “use of the premise” in the Prometheus decision. You still don’t seem to understand what the case is about. That’s why you refuse to discuss the holding or the reasoning for the holding except to rant about “judicial activism” and other College Republican bal0ney.

    Or has something suddenly changed, Tr0llboy? Are you ready to discuss [oldstep]+[newthought] claims in a sober intelligent manner? Are you ready to discuss claim dissection under 103, how it works, the origins of that claim dissection, and it’s shocking resemblence to the analysis of claims under 101? Are you all grown up now?

  36. end italics

    Rewrite:

    abstract … like price or risk or something like that

    So … communicating new information about price or risk is abstract, unless that information has a specified “look and feel” and comprises information about a “commerce object”.

    I’m not following you, Ned.

    the manner of communication itself

    The “manner of communication” in this claim is via an old display screen, Ned.

    when [a computer] does something physical, like draw on a display or communicate with another computer, it is doing something physical.

    It’s also doing something ancient. You didn’t answer my question. If the “drawing” or information being communicated is new, then how is the claim analyzed under 102/103? What factors determine whether new information is “obvious” or “non-obvious”? What “useful art” is promoted by granting patents to methods that differ from prior art only in the recitation of “non-obvious information”?

    These are the key questions. Answer them. If you don’t answer them, you end up just doing a variation of Rader’s Magical Dance, where he spins around and around and pretends that everything will be super awesome if we just pretend that every newly programmed computer is a brand new machine because the recited functionality is “the essence of electronic structure.”

    Just roll back the clock and apply your reasoning to any other communication device. The phone, for example. Why weren’t there reams of method patents filed on “new” ways of communicating with a phone. You can pick it up and say “hi” or you can say “this is X”. Aren’t those new ways of communicating with a phone? Why didn’t people see the awesomeness in patenting reams and reams of that kind of obvious crxp until computers came around? I think it’s because people thought there were better things to do with their money and time. Were they wrong? What changed?

  37. abstract … like price or risk or something like that

    So … communicating new information about price or risk is abstract, unless that information has a specified “look and feel” and comprises information about a “commerce object”.

    I’m not following you, Ned.

    the manner of communication itself

    The “manner of communication” in this claim is via an old display screen, Ned.

    when [a computer] does something physical, like draw on a display or communicate with another computer, it is doing something physical.

    It’s also doing something ancient. You didn’t answer my question. If the “drawing” or information being communicated is new, then how is the claim analyzed under 102/103? What factors determine whether new information is “obvious” or “non-obvious”? What “useful art” is promoted by granting patents to methods that differ from prior art only in the recitation of “non-obvious information”?

    These are the key questions. Answer them. If you don’t answer them, you end up just doing a variation of Rader’s Magical Dance, where he spins around and around and pretends that everything will be super awesome if we just pretend that every newly programmed computer is a brand new machine because the recited functionality is “the essence of electronic structure.”

    Just roll back the clock and apply your reasoning to any other communication device. The phone, for example. Why weren’t there reams of method patents filed on “new” ways of communicating with a phone. You can pick it up and say “hi” or you can say “this is X”. Aren’t those new ways of communicating with a phone? Why didn’t people see the awesomeness in patenting reams and reams of that kind of obvious crxp until computers came around? I think it’s because people thought there were better things to do with their money and time. Were they wrong? What changed?

  38. MM, unless “look and feel” is well defined in the specification, the claims seem to be indefinite. Perhaps this is the major issue here.

  39. So, you get to the nub of it, is “look and feel” defined in the claim in terms of physicality, or is it abstract, like beauty is in the eye of the beholder.

    I don’t think out main blog posters really appreciate the PON/Integration analysis.

  40. Morse was more about how much had to be added to a principle, a law of nature or natural phenomena to make it a patentable application, a machine or process, etc.

    There was a much better and more recent case on point, Ned. You might remember it? I think it was Mayor v. Arrhenius or something like that.

  41. The Court has staked its position SQUARELY and COMPLETEY in 101

    What “position” are you referring to, Tr0llboy? Also, the use of caps is rather silly … all for the benefitted of your, uh, “like-minded” readers, no doubt.

    You have a problem with this?

    I’m not sure what “this” is that you’re referring to you, Tr0llboy. Try writing for clarity instead of just ranting for a change. I’ll tell you what I don’t like: patent t–b-ggers like you, Gene Quinn, and Eric Guttag pretending that there is something wrong with looking at individual claim elements and their relationship to the prior art except when you say so. Likewise with your apparent mental handicap which prevents you from discussing in any reasonable manner how one would deal with claims in the form [oldstep]+[newthought] once the “judicial exception” travesty that troubles you so greatly (except when it doesn’t) is “fixed”.

  42. Query, your question illustrates well the confusion on this topic.

    If the PON in a claim to a machine, process, composition or the like is something abstract, like price or risk, the subject matter being claimed is not the machine or process, but something abstract, something ineligible.

    Morse was more about how much had to be added to a principle, a law of nature or natural phenomena to make it a patentable application, a machine or process, etc. They determined that simply reciting the principle without requiring any of the machines or physical processes was not enough.

  43. Patent Buddy, I think there is innovation without patents, there is just no publication.

    The Roman Army knew an awful lot about civil engineering. But they kept it to themselves. When the army vanished, so did their secrets.

  44. In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983)( “Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability….

    Ah, so it was the Federal Circuit that rewrote 103 to allow dissection of claims during an obvious analysis? Fascinating. I wonder what the Supreme Court will have to say about that.

    And to be clear, “legislating from the bench” is the Worth Thing Evah (according to the t–b-ggers) … except when it results in more patents.

  45. Guess you should write Wikipedia, MM, and get their article corrected.

    Uh … it’s not the accuracy of Wikipedia that is being questioned, Fishy. Why not just answer the questions, Fishy?

    Malcolm himself volunteered his knowledge

    I’m not afraid to have a discussion about claim dissection under any statute. Why not go ahead and answer the questions I asked, Tr0llboy? Les isn’t afraid to volunteer his “knowledge” about certain aspects of patent law and how they relate to each other, historically and practically. But you certainly are, Tr0llboy. So are your bffs Gene and Eric.

  46. Malcolm, when a computer is required to communicate with another computer, it is doing something physical. When a computer is computing price, it may have physical processes, but what it is doing is using mathematics on data to compute a number that someone calls price – but beauty is in the eye of the beholder.

    What the computer does is important. When what it does is abstract as in mathematics, or risk or price, then what is doing is ineligible.

    In contrast, when it does something physical, like draw on a display or communicate with another computer, it is doing something physical.

    Now I agree that when two computers communicate with each other and the point of novelty is not in the communication but in the abstract nature of what is communicated, like price or risk or something like that, then I agree that simply reciting two computers that communicate is not sufficient. But when the novelty is not in something abstract, but in the manner of communication itself, what is being claimed as a particular machine. Whether it is new or not is a different question.

  47. you called those discoveries, but they are not discoveries. They are inventions

    Uh … okay. Let’s refresh again. Les wrote the following:

    The Constitution and the statute indicate that discoveries are patentable. What is there to –discover– but laws and products of nature?

    Then Les tries to qualify what he wrote by writing this:

    I am referring to discoveries that fit into one of the categories of patent eligible subject matter.

    By which Les presumably means processes and compositions of matter, at least. So on Planet T–bagger, you can patent a natural process (e.g., glycolysis, falling at a rate determined by gravity, atomic decay) or a rock if you are the first person to discover it. Sure, that’s reasonable. Toss in patents on mental processes, which Les also approves of, and it sounds like a paradise of job creation! When you, Gene, Eric and Tr0llboy hold your meetings, I bet you secretly wish that you could patent even more awesome stuff!

  48. LOL,

    The best part is that Malcolm himself volunteered his knowledge of the controlling state of law when it comes to the exceptions to the printed matter doctrine.

    That glorious bonfire burns bright even to this day.

    Malcolm, being another bag of marshmallows.

    Mmmm, toasty!

  49. This question was roughly asked by the Government in its brief in the Prometheus case.

    As I had to correct Malcolm, the Court in Prometheus refused to let their implicit readings and judicial exceptions (and yes the question remains, what else can be found in such ‘implicit’ readings) become dead letters. Mind you – not the actual law of 101 (the explicit words that Congress actually used), but the Justice-‘made’ implicit words would not be allowed to become dead letters.

    The Court has staked its position SQUARELY and COMPLETEY in 101, and have done so consistently since Congress spoke up in 1952 and removed the judiciary’s ability to set ‘invention’ by common law.

    You have a problem with this? Join the growing crowd who are questioning the proper constitutional authority to such patent law writing, er, um, ‘implicit’ interpretation of a text written by Congress that is not ambiguous to begin with and needs no such ‘interpretation.’

  50. MPEP 2112.01

    III. PRODUCT CLAIMS – NONFUNCTIONAL PRINTED MATTER DOES NOT DISTINGUISH CLAIMED PRODUCT FROM OTHERWISE IDENTICAL PRIOR ART PRODUCT
    Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, ** > 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) < (Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed.). See also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983)( “Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability….[T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.” ).

  51. LOL

    That’s some serious misrepresentation Malcolm. Downright in fact, it is a blatant 1ie, as I have used the premise of too fine an application eviscerating patent law in the past.

    Another golden moment from you, caught in a blatant 1ie.

    I thought such things were not allowed on Patently-O, Prof. Crouch?

    C’est La Vie.

  52. Ned: Thus when one is claiming the way computers operate as opposed to calculating price or risk, there seems to be no inherent 101 issue.

    How is the “way” that the computers operate in this claim any different from the “way” that computers operated before this claim? What are the limitations in the claim that change the “way” that the recited computers operate? Computers receive, process, store, and transmit information. That’s what they do. That’s what they did before this “invention.” It’s what they do after this “invention.”

    Whether it is in fact new should be decided under 102/103.

    Okay. Let’s say my computer displays new information to you when you “activate it” with your computer. How do you analyze this claim under 102/103? What factors determine whether new information is “obvious” or “non-obvious”? What “useful art” is promoted by granting patents to methods that differ from prior art only in the recitation of “non-obvious information”?

  53. “I answered: methods of “monetizing” new abstractions (plots, music) are also “discovered” by those who conceive of those new abstractions.”

    Well, you called those discoveries, but they are not discoveries. They are inventions.

    Before you go off on another tangent, Of course I am referring to discoveries that fit into one of the categories of patent eligible subject matter.

  54. It is manifest that even though I have schooled you repeatedly, you refuse to accept one of the holdings of the Alappat case.

    This is in direct conflict to your ethical requirement to acknowledge controlling law.

  55. Then do it. Junk claims were made to be junked.

    LOL – so says the cite’s biggest QQ baby. Tell me Malcolm, other than posting your mewling QQ on this cite, have you ever utilized any of the official Office mechanisms for removing bad patents?

    Didn’t think so.

  56. Malcolm, the way I view it is that there is a 101 problem when the point of novelty over the prior art is a law of nature or something inherently abstract, like price or risk, that is not integrated into the underlying subject matter such as to produce a new, physical, result. Thus when one is claiming the way computers operate as opposed to calculating price or risk, there seems to be no inherent 101 issue. The appointed a claim is not something ineligible, but a new machine. Whether it is in fact his new should be decided under 102/103.

  57. “data store, server, computer”

    Aka a compooter, a compooter and a compooter!

    “patents do, indeed, cover the concept of two web pages with visually corresponding elements”

    In other words they’re invalid, buuuuut … I really don’t feel like so concluding because I’m confused as to whether or not a claim that “do, indeed, cover the concept of two web pages with visually corresponding elements” are eligible or not. :)

    The judiciary in this country, I swear. Hand them a clear bright line rule like, “hey don’t let anyone cover any abstract ideas” and they’re like, hey this claim covers an abstract idea buuuuuuut … it passes mot :p.

    Lulz. Judges.

    “In contrast, the interactions and linkages of computer machinery to generate composite web pages in this case are integral to each of DDR’s asserted claims. Accordingly, the first prong of the machine-or-transformation test is satisfied.”

    I lulzed again. How long will it take for the federal judiciary to get its 101 house in shape? At the current pace we’re looking at sometime after my death.

    “Ain’t nuthin’ changed in the Eastern District of Texas. Near most all patents is good and infringed.”

    You know it partner.

  58. Les asked: What is there to –discover– but laws and products of nature?

    I answered: methods of “monetizing” new abstractions (plots, music) are also “discovered” by those who conceive of those new abstractions.

    Gene Quinn really needs to do a better job of training you guys. But we know that’s never going to happen.

  59. Wow, Fishy! That’s fascinating stuff.

    not entitled to patentable weight

    Gosh, that sounds like dissection. Under 103? That’s interesting. What happened to all that business about looking at “claims as a whole”?

    The analysis is thus essentially an obviousness analysis under section 103 of the patent law,[5] rather than (as it was in earlier times) an analysis of statutory subject matter under what is now section 101 of the patent law.

    Golly gee, that’s fascinating. When did Congress write the statute about ignoring “printed matter” during a 103 analysis, instead of during 101? Show me the language in the statute about talks about “ignoring printed matter elements except when you don’t ignore them”. Does the printed matter have to be printed text or does it apply to non-printed information (like displayed information)? Why did Congress create the exception? Or is this some sort of “judicial exception” where the Supreme Court in In re Gulack just “legislated from the bench”? Surely it can’t be the latter, otherwise guys like Tr0llboy and Eric Guttag and Gene Quinn would never shut the f– up about how awful it is.

  60. I asked my question first.

    Right. And I anwered it.

    And your answer to Query’s question was wrong, by the way, for the reasons I provided at 12:46.

  61. From Wikipedia:

    ‘The current legal analysis, as expressed in the definitive decision on printed matter, In re Gulack,[4] is as follows: The differences between a newly claimed substrate bearing printed matter and a prior art substrate, where the only point of departure from the prior art is in the printed matter itself, are not entitled to patentable weight unless the printed matter and the substrate have a new and unobvious functional relationship. The analysis is thus essentially an obviousness analysis under section 103 of the patent law,[5] rather than (as it was in earlier times) an analysis of statutory subject matter under what is now section 101 of the patent law.[6]”

  62. Is the judge-created “abstract idea” roadblock to patent protection needed when we have the written description, enablement and definiteness provisions of Section 112?

    “Abstract” in the context of patent law does not mean “vague”. For example, a new, non-obvious mental process can be easily described with great specificity and in a manner that is fully enabled from the perspective of virtually anyone with a functioning brain. The Supreme Court has held that such processes are excluded from 101 as abstractions and we can all be glad that is the case. In Europe, such processes are invalidated under their “inventive step” statute because the entire claim is ignored as a “non-technical” solution to a problem. The logic and policy is identical in both jurisdictions, however, and (when properly applied) the same results are necessarily reached.

    You’ll notice that nobody who has thought for a few seconds about this reality complains about it … except for the patent t–baggers, every one of whom is deeply invested in making more patents more easily obtainable and more difficult to invalidate, all the time.

  63. Nor is there a need for the judicially created nonsense regarding laws and products of nature.

    Preach it, Les!

    What is there to –discover– but laws and products of nature?

    Deep, deep stuff, Les! Wow. According to this same logic, methods of “monetizing” new abstractions (plots, music) are also “discovered” by those who conceive of those new abstractions. Well done!

    So how do you get from this language in the Constitution to your proposal that mental processes, laws of nature and abstractions should be eligible for patenting? And other than Tr0llboy, Eric Guttag and Gene Quinn, who else is in your club? Anybody important? Anybody who isn’t afflicted with patent rabies?

  64. Les thinking does not include “receiving, looking up, requesting and receiving, accessing, querying and receiving or measuring” etc.

    We’ve got another Hu mpty Du mpty! And he loves junk patents. Nobody could have predicted.

  65. two computers cooperated in a specific way

    Someone “activates” a computer and the computer provides information in response to the activation That’s all that’s happening in the claimed “process”, Ned. And that was ancient long before this claim was filed.

    Is the information provided by the first computer somehow “special”? Why? Because it includes information about something that I can buy?

    This magical “cooperation” you refer to is older than the hills. There’s nothing patent-worthy about the concept of presenting information to users, whether the users are computer users or users of libraries or grocery stores. And it’s hardly “cooperation” in the first place for a machine to provide information upon activation by a user. Are you suggesting that it matters somehow for patent purposes whether the user uses a computer to activate that machine? Since when? 1940?

  66. Judge Gilstrap:

    While the ′572 and ′399 patents do, indeed, cover the concept of two web pages with visually corresponding elements, there is more to the asserted claims when considered as a whole.

    Interesting finding by the Judge. The claims “cover the concept of two web pages with visually corresponding elements”?? For the sake of discussion, let’s assume that’s true (and ignore the incredibly remote possibility that a Federal judge in a patent case would write sloppily at the exact point where clarity and accuracy matters most).

    If the claims do in fact “cover the concept of two web pages with visually corresponding elements”, such that nobody can create two such web pages until the patent is expired, then how can these claims possibly be eligible or valid? First of all, that “concept” is certainly an unprotectable abstraction. Second of all, are we to believe that nobody in the prior art created two such web pages? Third, even if nobody in the prior art had not created two such web pages, then surely the “concept” would still be obvious in view of the infinite number of instances of “visually corresponding elements” appearing in non-virtual media.

    Anyway, I’m pretty sure Judge Gilstrap was just being sloppy in this one (critical) instance. We shouldn’t bother wondering whether this sloppiness could possibly have bled through into other aspects of his analysis. Then again, Judge Rader set the sloppiness bar about as low as it can go in his Ultramercial opinion, so who knows?

  67. No, thinking does not include “receiving, looking up, requesting and receiving, accessing, querying and receiving or measuring” etc.

    Anyway, I didn’t ask YOU what “thinking” meant, so chillax maybe.

  68. MM, too much focusing on programming diverts attention.  The fact that two computers cooperated in a specific way is what makes the difference.   This is not mere recital of computers.

     
     

  69. The gravamen of the case is two different computers respond to each other in specific ways.

    The claim requires a website hosting computer to send “specific” (in fact, highly generalized) information to a “visitor” computer. The only new element in the claim is the “specific” (in fact, highly generalized) information that is sent to the “visitor’s” computer upon activation of the link. There is no requirement that the “visitor’s” computer be programmed any differently from the hosting computer.

  70. So invalidation under 103 is in order?

    Maybe you can explain how that works to everybody. How do you respond to the argument that the “non-obvious information” being transmitted is sufficient to render the “claim as a whole” non-obvious?

  71. I can’t believe that someone can’t put together a good 103 argument for this claim. I know I could.

    Then do it. Junk claims were made to be junked.

    Is it too late to file a re-exam? ;)

  72. why do you ask?

    Why do I ask? Because “thinking” also includes “receiving, looking up, calculating, requesting and receiving, accessing, querying and receiving, measuring” etc.

    Did you believe that you were making some sort of profound point when you asked “what does ‘think’ mean”? You know, sort of like Tr0llboy believes he’s making a point when he types a big word in all caps.

  73. In Bancorp, the claimed “mathematical concept of managing a stable value protected life insurance policy” was found unpatentable as an abstract idea because mere mathematical computer was not dependent upon the computer components required to perform it. In contrast, the interactions and linkages of computer machinery to generate composite web pages in this case are integral to each of DDR’s asserted claims.

    Ah, so once again it’s the name we give to the stored and transmitted information that makes all the difference here. Here that name is the “look and feel of a website” (try to believe it). Does this “look and feel” include “color”? Of course it does. Here’s this junk claim written in a manner that isn’t designed to confuse a Texas juror (the world’s most gullible animal).

    An e-commerce outsourcing process comprising the steps of:

    a) storing information about a first website in a data store associated with a second website, wherein the first website includes a (1) page with the same color as the first website and (2) a link to a “commerce object”;

    b) upon a request from a user who has activated said link, serving from the second website a composite web page with the same color as the first website and content about the “commerce object”.

    The world wide web and web pages were old when this “invention” was filed. If we ignore the bogus “storing” step, the only elements that are new in this “process” is the displayed and transmitted information. Pure junk. Roll back the clock fifty or 100 years and imagine 50,000 patents a year being granted solely on methods of putting different kinds of “commerce objects” on grocery shelves. That’s the kind of “technology” being promoted when claims such as this are granted and found enforceable.

  74. determine is a broad term that can cover all forms of determining including, but not limited to: receiving, looking up, calculating, requesting and receiving, accessing, querying and receiving, measuring, etc.

    Why do you ask?

  75. What does “communicate” mean?

    Some plants can communicate with insects. Is that arthropodmorphication?

  76. J. Lourie should have the following tatooed on his chest:

    >Moreover, “all inventions at some level embody, use, reflect, >rest upon, or apply laws of nature, natural phenomena, or >abstract ideas,” yet, “too broad an interpretation of this >exclusionary principle could eviscerate patent law.” Mayo.

    Justice Breyer wrote that. Smart guy. In spite of that, we’ve got Tr0llboy and his bffs Eric Guttag and Gene Quinn running around pretending that this passage doesn’t exist.

  77. No. Nor is there a need for the judicially created nonsense regarding laws and products of nature.

    Both the Constitution and the statute indicate that discoveries are patentable.

    What is there to –discover– but laws and products of nature?

  78. Is the judge-created “abstract idea” roadblock to patent protection needed when we have the written description, enablement and definiteness provisions of Section 112?

  79. J. Lourie should have the following tatooed on his chest:

    >Moreover, “all inventions at some level embody, use, reflect, >rest upon, or apply laws of nature, natural phenomena, or >abstract ideas,” yet, “too broad an interpretation of this >exclusionary principle could eviscerate patent law.” Mayo.

  80. Without patents, there would be no innovation. Patents also are clearly effective at increasing economic productivity and GDP. Astounding.

    The scope of subject matter that is eligible for patenting also needs to be expanded immensely – the GPD and economic productivity of America would sky-rocket.

    I’m optimistic for America. We are on the cusp of a patent golden age never before seen in history.

  81. Ned, your twisty nonsense illustrates that Benson is sheer nonsense. I don’t know anyone that understand science and patent law that doesn’t think that Benson is the worst case ever from the SCOTUS and that it should be expressly overruled and made void.

  82. Programming a computer is nothing more than using a computer. We agreed on that last week.

    WRONG.

    Alappat still stand as law.

  83. I was, of course, referring to the MOT

    Do you mean this MoT? :

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

    That one?

  84. Exactly as described in Benson

    With this quote? :”It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.

  85. two different computers communicate

    Another opportunity to emphasize: ANTHROPOMORPHICATION.

    Funny, Ned has not once addressed this concept (and its clear weakening of any ‘mental steps’ doctrine, as STILL machines do not think).

  86. Ned,

    What is the difference between programming a computer such that one can THEN use the computer, and your fallacious argument of merely using a computer (and ignoring what is necessary to get to the point of such use)?

  87. Night there is a difference between programming a computer to do what a computer does, like compute math, and having two different computers communicate in a specific way that has nothing to do with mathematics or some other abstract concept.

  88. Ned: don’t try a 180 on us. We all know that under Benson new natural laws were discovered by this inventor and that the claims are nothing more than an attempt to exclude all others from the newly discovered natural laws. And on the eighth day, G*d created the Internet.

  89. So long as “look and feel” is fairly well defined in the specification so that one would know whether one infringed, I have no fundamental objection to the holding of the District Court in this case. The gravamen of the case is two different computers respond to each other in specific ways. Exactly as described in Benson, the claims relate to a specific machine and therefore passes the MOT. Presumptively therefore, they passed 101.

  90. That claim definitely needs a computer. I am not sure why that is a “business method” patent. I think it is a user interface patent. Should be eligible under 101.

    Big picture: nothing wrong with the claim except it is way too broad. I can’t believe that someone can’t put together a good 103 argument for this claim. I know I could. Is the date before or after style sheets? There are plenty of other applications I could find that would 102 this. I need to figure out how to make some money 102’ing and 103’ing these patents. It would be fun.

  91. Ain’t nuthin’ changed in the Eastern District of Texas. Near most all patents is good and infringed.

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