By Dennis Crouch
Leo Pharmaceutical Products, Ltd. v. Rea, 2013 WL 4054937 (Fed. Cir. 2013)
In a pre-AIA filing, Galderma challenged Leo’s U.S. Patent No. 6,753,013 in an inter partes reexamination before the USPTO’s now renamed Board of Patent Appeals. The patent claims a “storage stable and non-aqueous” pharmaceutical composition used to treat skin conditions such as psoriasis. Prior to the invention, it was well known that a combination of Vitamin-D along with a corticosteroid could form the basis of an effective treatment. However, no one had been able to manufacture a storage stable form of the combination. This was especially challenging because the stable forms of the active ingredients prefer different pH levels. To achieve the storage stable results, Leo added a solvent to the mixture. The claim identifies the solvent in a markush group that likely includes thousands of potential compounds. During the reexamination, Leo also added the particular limitation that “said pharmaceutical composition is storage stable and non-aqueous.”
In reviewing the case, the Board first construed these new terms “storage stable” and “non-aqueous” and then found the patent invalid as obvious over the prior art. On appeal, the Federal Circuit has reversed.
Claim Construction: The Federal Circuit continues, for the time being, to give no deference to PTO claim construction decisions. Here, the term “storage stable” was difficult to construe because it was never used during prosecution of the original patent application and only added during reexamination. However, the patent does discuss the composition’s “ability to resist degradation” according to test results presented in the specification and the PTO accepted that definition as proper. Noting that one of ordinary skill “would have reasonably looked to the described stability test as defining what was meant by ‘storage stable.'” On appeal, the Federal Circuit rejected that definition as impermissibly narrow and that instead allowed a broader definition. Although not elucidated by the opinion, the patentee is walking a fine line with this amendment between (1) having a sufficiently broad patent and (2) improperly adding new matter to the claims in violation of the written description requirement.
Obviousness: This decision may become a somewhat important obviousness case for patentees. The Board found the patent claims obvious in light of a combination of three prior art references. The Board basically found that it would have been obvious for someone of skill in the art to take the prior art combination of Vitamin-D and corticosteroids and add in the claimed solvent in order to achieve storage stability.
On appeal, the Federal Circuit faulted the Board for failing to give credence to the patentee’s identification of the problem (that a stable form should be designed). The prior art did not particularly recognize the problem but rather “either discouraged combining vitamin D analogs and corticosteroids … or attempted the combination without recognizing or solving the storage stability problems.” Leo also presented evidence that, at the time of the invention, researchers were being “warned that vitamin D should not be combined with other drugs requiring a low pH ( e.g., corticosteroids).”
[T]he record shows no reason for one of ordinary skill in the art to attempt to improve upon either Dikstein or Serup using Turi. The ordinary artisan would first have needed to recognize the problem, i.e., that the formulations disclosed in Dikstein and Serup were not storage stable. To discover this problem, the ordinary artisan would have needed to spend several months running storage stability tests Only after recognizing the existence of the problem would an artisan then turn to the prior art and attempt to develop a new formulation for storage stability. If these discoveries and advances were routine and relatively easy, the record would undoubtedly have shown that some ordinary artisan would have achieved this invention within months of Dikstein or Serup. Instead this invention does not appear for more than a decade.
Now, the Federal Circuit’s language here obviously includes some amount of doublespeak or could perhaps be described as slicing the bologna awfully thin since according to the court, researchers (1) recognized that vitamin D could not be stably combined with low pH drugs such as corticosteroids but (2) did not recognize that vitamin-D could not be stably combined with corticosteroids.
Old Prior Art: In the discussion, Judge Rader uses an interesting between-the-lines or perhaps behind-the-scenes analysis of the prior art:
First, the Board found motivation to combine Dikstein or Serup with Turi because one of ordinary skill would have used vitamin D to solve the well-known side effects of steroid treatment. However, combining Turi and vitamin D to address the side effects of a steroid treatment is only straightforward in hindsight. Turi was publicly available in the prior art for twenty-two years before the ′013 patent was filed, yet there is no evidence that anyone sought to improve Turi with vitamin D. According to the record, even when Serup published the well-known side effects of steroid-induced atrophy in 1994, no one—including Serup—sought to improve Turi by adding vitamin D to Turi’s corticosteroid composition. Serup even targeted the precise side effects that the Board believed would have motivated the addition of a vitamin D analog to Turi’s corticosteroid composition, yet Serup did not seek to improve Turi by adding vitamin D. . . .
The elapsed time between the prior art and the ′013 patent’s filing date evinces that the ′013 patent’s claimed invention was not obvious to try. Indeed this considerable time lapse suggests instead that the Board only traverses the obstacles to this inventive enterprise with a resort to hindsight. It took over a decade—after Dikstein’s disclosure of the benefits of combining vitamin D and corticosteroid treatments into one formulation—for Dikstein’s formulations to be tested for storage stability. And, until the advancement made by the inventors of the ′013 patent, no one had proposed a new formulation that would be storage stable. The problem was not known, the possible approaches to solving the problem were not known or finite, and the solution was not predictable. Therefore, the claimed invention would not have been obvious to try to one of ordinary skill in the art. Indeed ordinary artisans would not have thought to try at all because they would not have recognized the problem.
Under Judge Rader’s point of view here, older prior art should be seen as less credible in the obviousness analysis. The logic obvious improvements would have happened quickly and the long time span between improvements suggest that the improvement was not an obvious one. This logic is bolstered in cases such as this where research is ongoing in the area and a market has already developed.
Although the patentee claimed a wide variety of solvents, the Federal Circuit also found that there were many more potential solvents available to try and the PTO did not offer specific reasons why the ones selected would have been particularly obvious to try.
In addition, the Board found that a person of ordinary skill in the art would have been capable of selecting the correct formulation from available alternatives. Specifically, the Board found more than eight different classes of additives ( e.g., diluents, buffers, thickeners, lubricants). The Board also found more than ten different categories of composition forms ( e.g., liniments, lotions, applicants, oil-in-water or water-in-oil emulsions such as creams, ointments, pastes, or gels). “Based on these broad and general disclosures,” the Board reasoned that an artisan would have been able to “mak[e] choices about what ingredients to include, and which to exclude” in formulating a composition with a vitamin D analog and steroid. To the contrary, the breadth of these choices and the numerous combinations indicate that these disclosures would not have rendered the claimed invention obvious to try. See Rolls–Royce PLC v. United Techs. Corp., 603 F.3d 1325, 1339 (Fed.Cir.2010) (claimed invention was not obvious to try because the prior art disclosed a “broad selection of choices for further investigation”). . . . .
This court and obviousness law in general recognizes an important distinction between combining known options into “a finite number of identified, predictable solutions,” KSR, and ” ‘merely throwing metaphorical darts at a board’ in hopes of arriving at a successful result,” Cyclobenzaprine, quoting Kubin. While the record shows that, as early as 1995, the prior art indicated that both vitamin D analogs and corticosteroids were effective treatments for psoriasis, that same prior art gave no direction as to which of the many possible combination choices were likely to be successful. Instead, the prior art consistently taught away from combining vitamin D analogs and corticosteroids.
One important feature of PTO decision making is that Board conclusions of fact only require substantial evidence to be affirmed on appeal. Here, the Federal Circuit avoided that issue by indicating that all of its decisions were based upon the Board failure to properly apply the law to those facts. “In this case, however, with no material factual disputes, this court cannot share the Board’s analysis and application of the law to those facts.”
Objective Indicia of Non-Obviousness: Judge Rader writes:
The court now turns to the Board’s analysis of the objective indicia of nonobviousness. The Board reasoned that “the strong case of obviousness outweighs the experimental evidence and testimony about the advantages of the claimed composition.” Contrary to the Board’s conclusion, this court finds the objective indicia, in concert with the entire obviousness analysis, present a compelling case of nonobviousness. In fact, the objective indicia of nonobviousness highlight that the Board’s analysis regarding the combination of Serup or Dikstein with Turi was colored by hindsight.
Whether before the Board or a court, this court has emphasized that consideration of the objective indicia is part of the whole obviousness analysis, not just an afterthought. … When an applicant appeals an examiner’s objection to the patentability of an application’s claims for obviousness, the PTO necessarily has the burden to establish a prima facie case of obviousness which the applicant then rebuts. However, during inter partes reexamination, the Board is reviewing evidence of obviousness—including objective indicia—submitted by two adversarial parties for the claims of an issued patent. Thus, the Board should give the objective indicia its proper weight and place in the obviousness analysis, and not treat objective indicia of nonobviousness as an afterthought.
Objective indicia of nonobviousness play a critical role in the obviousness analysis. They are “not just a cumulative or confirmatory part of the obviousness calculus but constitute[ ] independent evidence of nonobviousness.” Ortho–McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed.Cir.2008). This case illustrates a good reason for considering objective indicia as a critical piece of the obviousness analysis: Objective indicia “can be the most probative evidence of nonobviousness in the record, and enables the court to avert the trap of hindsight.” Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1310 (Fed.Cir.2010) (internal quotation marks omitted). Here, the objective indicia of nonobviousness are crucial in avoiding the trap of hindsight when reviewing, what otherwise seems like, a combination of known elements.
Unexpected results are useful to show the “improved properties provided by the claimed compositions are much greater than would have been predicted.” See In re Soni, 54 F.3d 746, 751 (Fed.Cir.1995) (internal quotation marks omitted). This record shows “extensive experimental evidence” of unexpected results that contradict the Board’s obviousness finding. J.A. 14. The Board concluded that the “unexpected results” claimed by Leo Pharmaceuticals were not surprising or unexpected. J.A. 19. However, substantial evidence does not support the Board’s conclusion.
During reexamination, the inventors of the ′013 patent submitted test results that analyzed the Dikstein and Serup formulations. The inventors found that the formulations disclosed by Dikstein and Serup result in significant degradation of the vitamin D analog and corticosteroid. See J.A. 1041–46 (testing formulations in Serup); J.A. 1625–27, 2152–2154 (testing formulations in Dikstein). The inventors also tested an improvement of Serup using Turi, by replacing Serup’s solvent with POP–15–SE, and still found significant degradation of the corticosteroid component. See J.A. 1045–46. These test results are a strong indication that the ′013 patent’s combination of known elements yields more than just predictable results.
In addition to evidence of unexpected results, Leo Pharmaceuticals provided other objective indicia of non-obviousness. For example, the commercial success of Leo Pharmaceutical’s Taclonex® ointment is a testament to the improved properties of the ′013 patent’s claimed invention. Taclonex® is the first FDA-approved drug to combine vitamin D and corticosteroids into a single formulation for topical application. While FDA approval is not determinative of nonobviousness, it can be relevant in evaluating the objective indicia of nonobviousness. See Knoll Pharm. Co., Inc. v. Teva. Pharm. USA, Inc., 367 F.3d 1381, 1385 (Fed.Cir.2004). Here, FDA approval highlights that Leo Pharmaceutical’s formulation is truly storage stable, something that the prior art formulations did not achieve.
The record also shows evidence of long felt but unsolved need, i.e., the need for a single formulation to treat psoriasis. The length of the intervening time between the publication dates of the prior art and the claimed invention can also qualify as an objective indicator of nonobviousness. See Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1376–77 (Fed.Cir.2000). Here, the researchers were aware of the benefits of using both vitamin D and corticosteroids in the treatment of psoriasis as early as 1986. See, e.g., Dikstein col. 1, ll. 9–16. And Turi, upon which the Board relied to make its case, issued in 1978. Yet, it was not until the ′013 patent’s filing in 2000— twenty-two years after Turi and fourteen years after Dikstein-that the solution to the long felt but unsolved need for a combined treatment of vitamin D and corticosteroid was created. The intervening time between the prior art’s teaching of the components and the eventual preparation of a successful composition speaks volumes to the nonobviousness of the ′013 patent.
Here, the objective indicia—taken in sum—are the most “probative evidence of nonobviousness … enabl[ing] the court to avert the trap of hindsight.” Crocs, Inc., 598 F.3d at 1310. Viewed through the lens of the objective indicia, as opposed to the hindsight lens used by the Board, the ′013 patent would not have been not obvious over Turi in combination with Dikstein or Serup. Therefore, this court reverses the Board’s obviousness determination.
Tourbillion,
We will have to agree to disagree.
But I will point this out to you: you are right that man’s understanding has evolved and that is why you are wrong about the universe itself.
You see, once upon a time, people did think the universe was perfectly static.
We know this not to be the case now. Check out the emerging view on the early universe as an example to defeat your view of immutability.
Thus, your attempt at clever turns of phrases fails (so we don’t even have to venture to guess what human-centric logic is), and it is my logic (human-centric of otherwise) that remains supreme.
Finally, you would be wise to recognize that different policy drivers affect 101 versus 102/103/112 – notwithstanding the presence of the word ‘new’ in 101.
Sorry anon, your closed, human-centric view of logic is flawed and has led you into confusing an immutable universe with evolving human understanding of it. Or do you have evidence of a law of nature that has recently emerged in fact, as opposed to being recently understood? A recently understood law of nature that has always existed by definition cannot survive 102. Nor can it survive 101 as written, since it would not be a new process, machine, manufacture, or composition. Yes, I agree we know what Court is to blame and it began the blunder by initially erecting superfluous “exceptions” to 101.
anon is right, 6. The notice of allowance gives instructions – you should read it sometime. I do it when the examiner says something weird in the reasons for allowance.
Ned,
Stop the game playing.
“In the sea” and “in the abstract” do not correlate. “In the abstract” and “abstract” mean the same thing – as I posted.
Look up the word and see that what I posted is true.
Ned, Have you recognized yet the particular thing I pointed out about obtaining copyright protection for software?
(hint: fixed in a tangible medium)
Do you deny this?
And I will repeat – yet again – software is not “1”.
How much more clear can I get?
LOL – same old post CRP, get called out for posting CRP, run away, and post the same old CRP another day.
Nice script 6.
Next time, learn not to promise what you cannot (or won’t) deliver.
This would be easier if you simply acknowledged the points made that go against your viewpoints and treat them in an intellectually honest manner.
Applicants are allowed to comment (and dispute), on the record, any comments made by the examiner in the notice of allowance.
37 CFR 1.174 (e) – (e) Reasons for allowance. If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning. The reasons shall be incorporated into an Office action rejecting other claims of the application or patent under reexamination or be the subject of a separate communication to the applicant or patent owner. The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure by the examiner to respond to any statement commenting on reasons for allowance does not give rise to any implication.
anon, a principle in the sea is wet.
How does that define what a sea is?
But, anon, software is code and code consists of binary digits. Do you deny this?
Here’s the thing anon, you’re the one that is obsessed with my “promise” or whatever. I couldn’t care much less, and have totally forgotten what the “promise” was. You’re going to have to remind me, if you can even remember yourself.
How exactly does one “dispute” the claim construction given at time of allowance? Serious question.
I think yes, Ned, if the construction is material to the allowance and if the applicant doesn’t dispute it.
Ned,
It only illustrates that you have no question.
How many times do I have to tell you that software is not “1”?
Sorry, but you have to leave your fantasy land argument behind because it simply does not accord with reality.
Ned,
You are stil being obtuse, and all that you are accomplishing is to reinforce 101 Integration Expert’s position that you are unwilling to discuss this in an intellectually honest manner.
Given that my own experience with you shows the same trait when you see that the discussion will not serve those whom you serve, I must agree with 101 IE.
In simple terms, ‘abstract’ means the same thing as ‘in the abstract’ and the easy understanding here is that ‘abstract’ is being defined as being the same thing in patent terms as ‘principal.’
Stop playing games Ned.
LB, perhaps you are right. If a feature is an important to the invention, that will be smoked out during prosecution. During prosecution, if the inventor begins to construe the claim term in question, he will be limited to that construction by the doctrine of disclaimer.
As 6 pointed out above, at times the examiner will give a narrow construction to a claim term and emphasize that narrow construction in his allowance. Should that construction be adopted by the courts?
Anon, trying to run away from this argument by saying software is not a "1" only illustrates that you have no answer.
101, "a principal – In the abstract – is a fundamental truth." In contrast, a principal – applied to produce a new and useful end – is eligible.
Can you see from the above that there is no definition of what abstract is in the statement. The writer assumes everybody knows what abstract is.
Besides, it has been more than an hour and a half since I first asked you for answers and you still have not delivered them.
Does it take you that long to find such a reference? You seemed so sure of yourself, so much like you had it all figured out. I cannot imagine what could be preventing you from sharing your knowledge.
What’s up with that?
LB: ” never claimed to be gracious, anon. That would be tacky”
Well, how about being Intellectual Honest? For example can you please explain why Versata’s claim as a whole is a legally abstract intellectual concept in the form of a a fundamental truth; an original cause; or motive?
Ned can’t handle this maybe you can. Oh and here is what the Court said is abstract, you know , just for the record.
“A principle, in the abstract, [IS] a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.” Benson citing Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507. My emphasis on “IS”
anon, my comment really wasn’t intended for those of you who already have it all figured out. Why don’t you sit out this conversation?
“believe as a fundamentalist would believe, shutting their eyes to any contrary fact (or law).”
You hit
Oh you hit the nail on the head here anon! Just look at Ned not even bothering to acknowledge the Supreme Courts definition and explanation of abstract, let alone debate whether that definition is right or wrong. And of course Malcolm and his now infamous act of posting the Office Guidance as some kind of anti patent victory not realizing those guidelines supported “Integration Analysis” as the holding of Prometheus and not his now torched mental steps dissection theories. Since then he has closed his eyes and pretended that the link to the Office Guidance HE ORIGINALLY POSTED does not exist. MM, LB, MD, and the entire anti alphabet club is in one big state of denial.
Malcolm, the man of limited scripts (and most containing names which Leopold for some odd reason, simply cannot seem to see) chimes in with his typical accuse-others-of-that-which-he-does.
@ta boy.
“desired new function” – LOL, good thing we have it from you that ‘configured to” is structrual language then.
LOL
Leopold,
Where in the law is this notion that you have to get a sense of the essence? Please provide a citation with the proper statutory location.
Thank you ever so much.
“which is the opposite of what we want.” Happens – especially with judge made law. The cute name for it is “unintended consequences.”
Ned Heller said: “I do not accept your definition of abstract.”
101 Integration Expert: What?? I have not created or stated my “own” definition of abstract. Ever. I cited and stated the Supreme Court’s definition.
Again, the Supreme Court of the United States said, “A principle, in the abstract, [IS] a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.” Benson citing Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507.
Now, since I have proven for a fact that the above definition belongs to the Court can you please tell me why Versata’s claim as a whole is a legally abstract intellectual concept in the form of a a fundamental truth; an original cause; or motive?
:: WAITS FOR NEXT EXCUSE::
“Anon, let us consider the word “crowd.” You say it has structure”
When did I say that, Ned?
Are you saying a crowd is a single person?
The fallacy of your logic is evident.
Software is simply not “1” – never has been, never will be.
Very much wrong Ned and you are messing up the law six ways to Sunday.
The critical thing you are missing about copyright is…
…it can only be obtained for items that have been fixed – that is, in items that have structure.
Your attempt at even bringing up music is just a (rather smelly) red herring (hint: I have lectured you ad infinitum about the Useful Arts requirement).
And asking you (even repeatedly) to keep your promise that you made of your own volition cannot be called trolling.
Learn not to promise what you cannot (or won’t) deliver.
Asked and answered, 6 – CRIPES, you are the one that made the Fn promise.
Your tactic of delay-delay-delay places the burden fully on you.
Funny that too about name-calling.
The number one person on the boards – by far who engages in that behavior is your beloved Malcolm.
He cannot even use a person’s moniker.
And yet, how many times have you called him out for behavior you are so quick to accuse me of?
That’s right: ZERO.
(sigh) that must be one H311 of a slippery wagon.
I am merely returning the favor, good sir, that you bestowed.
Don’t like it? Don’t start it.
That’s completely unworkable, Ned. Go read TJ Chiang’s paper that MM and I discussed earlier. In your example, what if the disclosure describes steel nails, but the claim refers only to nails – the claim should be limited to steel nails under your approach. But what if the disclosure doesn’t mention a material at all – is it now indefinite, or is it magically broader than if the drafter had included more detail? If the latter, then your approach encourages nondisclosure, which is the opposite of what we want.
I think Chiang’s realist approach is closer, but I’m not sure I buy in to the implicit economic analysis. You have to get a sense of what the inventor’s contribution is, I.e., the “essence” of the invention, before you can decide on the scope of the claim and whether the claim over-reaches or not. This is what the neglected “possession” prong of 112 analysis is about.
“I think you might be right”
LOL – Ned Heller – how many times are you going to reject the direct words of the Supreme Court of the United States?
Dance that jig, 9-0 Prometheus decision that routed your attempted view here.
Dance, I say, dance.
“True laws of nature and natural phenomena cannot survive 102 since they have been around for a few billion years”
Sorry, Tourbiillon, but your closed, steady state view of the universe is a bit out of date.
Further, there are different policy drivers for 101 than for 102 and timing simply is not a relevant factor as you would have it.
That being said, I think we are in accord on which Court to blame for the mess.
Tourbillion, on “laws and products of nature” you essentially equate them to prior art. I think you might be right, but there has to be an exception somewhere because prior art essentially is something publicly known or in public use. A law of nature or product of nature may not be.
I still think the SC does not want to define abstract because it is cautious.
“So, as part of any claim construction, I would recommend the courts decide whether the claims can be construed to cover disclosed structure, but no more. If not the claims cannot, but cover structure not disclosed, the claims should be declared invalid as indefinite.”
Should read,
“So, as part of any claim construction, I would recommend the courts decide whether the claims can be construed to cover disclosed structure, but no more. If not, the claims should be declared invalid as indefinite.”
Example, the invention described is the use of a specially shaped nail to attach two pieces of wood together and that uses but a single strike of a small hammer. The claim however calls for an attachment member that may attach anything to anything using a hammer of any size with one strike.
The claim broadens shaped nail to member, wood to any material, and small hammer to anything that strikes.
If that claim is to be properly construed, it should be limited to the disclosure. But if it cannot be, it must be declared indefinite.
The ownsership of a map does not give one the ownership of the copyright in the map.
The ownership of a deed might give one the ownership of the property the deed describes. But that depends on whether there is a government that will enforce one’s rights as there are no rights without government.
Just because one can copyright software does not mean that one can patent software. If that were the case, music would be patentable.
Anon, let us consider the word “crowd.” You say it has structure. But what structure is that? A crowd consists of members. To begin our analysis of the structure of a crowd, we must first consider the structure of a member.
Software is to a bit as crowd is to a member. To consider the structure of software we must consider the structure of a bit.
A bit is a binary digit. It has two states: 0 or 1. So, let us begin, Anon,
What is the structure of a “1.”
“So, lets begin at the beginning.”
Sorry Ned – that briar patch won’t hunt (to butcher a phrase).
Translation: “The script says not to address this argument but to change the subject.”
the map is not the world.
Indeed. And a desired new function for an old machine is not the structure of the new machine. Of course, TB knows this. He just can’t admit it.
if the art didn’t try to solve the problem, the art must not have recognized the problem,
False.
So are you going to specify the “treatment” you’re wanting or just dance around gleefully trolling?
If you are right, you are saying that the Court deliberately created a doctrine that five of ten Fed Cir judges would use to find most of the millions of issued computer-based claims invalid, and that the Court deliberately did not define that nuclear missile. Why do you think that is Mr. Heller? So that when it comes down and destroys a continent of tech patents, the Court cannot be blamed? How dare you suggest the Court is so scurrilous sir?
Being more respectful of the Court, I take a more benign view. They don’t define “abstract idea” because they can’t define it in any way that would be broad enough to encompass their precedents while narrow enough not to be what it is, patent law’s version of pornography (they know it when they see it and that’s all they’re gonna say).
The entire 101 exception jurisprudence of the Supreme Court is itself injudicious. True laws of nature and natural phenomena cannot survive 102 since they have been around for a few billion years – there was no reason to carve out a 101 exception for them. That leaves “abstract ideas” and the foremost patent court in the most highly technological nation in history is split right down the middle on what it all means. Congrats, that’s some bi+chin’ jurisprudence.
An interesting post Ned, apparently I’m going to have to read Sitrick at some point since what you’re saying happened contradicts what TJ put it in his paper for and the soundbyte implies. At least it appears to.
“If not the claims cannot, but cover structure not disclosed, the claims should be declared invalid as indefinite.”
I followed you up until the quote above. You went into quadruple negatives in a sentence and I got lost on what your actual meaning was.
“What do you expect in response?”
from you? nothing less (and nothing more) than:
“Maybe Tr0 llb0y will go f*k himself again.“
But then again, you have set the bar ultra low.
More name calling? It never ends with you, does it?
LOL – nothing but QQ and grandiose (but empty) clattering from you, 6.
In other words, the usual.
LOL
And no – you have not yet delivered upon your promise.
He explained that the three national judges had apparently taken part in discussions and that they had explored how to reach a common result, subject to the national-law limitations of the three jurisdictions. In this way, judges could achieve a measure of uniformity on patent law questions even in the absence of any formal mechanisms or structures for doing so.”
Oh my. Sounds like an impeachable offense! Unless of course the patent is found valid. 😉
” like providing two well-respected authors is somehow ‘nebulous’?”
I haven’t even looked at the “two well-respected authors” papers anon. For the simple reason that it will bore me to review them and you’ve already stated that they don’t actually use your pet terminology. However I was referring to your nebulousness for the past few months pre-tie in to these two papers.
I appreciate that you’re finally tying your views to these two “well-respected authors” who don’t actually use your pet term “ladders of abstraction” at all apparently. I’m also sorry that if you were simply meaning some hum drum boring part of patent law that those two authors are speaking about every time you used your pet term “ladders of abstraction” I never picked up on what you were saying. Your nebulousness did prevent it. Perhaps I will get around to your two citations at some point, so long as there are links provided.
“How is your promised treatment of this concept coming along?”
I just discussed the detail which I believe you take issue with in depth above. Specifically that within the “ladders of abstraction” there is a line of demarcation between what is abstract, and then what is non-abstract. And once you get into what is non-abstract, you can, generally speaking, generalize about what you are speaking without being further abstracting. I’m sorry that you’re not a fan of this particular viewpoint (aka the supreme court’s viewpoint) but that’s just how it is in that viewpoint brosef. If there is any further “treatment” you desire then do go ahead and be specific as to what “treatment” you desire. Perhaps you’d like me to give it a mani/pedi? Do I need to write you a whole treatise on the subject or what?
nothing intelligent to respond with?
There really is “nothing intelligent” to respond with to most of your comments, TB, particularly these last few. You just l i e and sling insults like a robotic t 0 0 l. What do you expect in response?
someone who actually has been banned from a blog directly due to a lack of knowledge of real law.
Which blog was that? It wasn’t the blog of the Church of Patent Apologists, was it? The one run by that guy who went apeshirt when someone tried to explain the facts in Prometheus to him? The guy who likes to talk about how super tasty the steak was at the David Kappos Appreciation Day celebration?
“They open the floodgates”
LOL – wrong Ned. If you are (once again) trying to attack the Fed Judge who helped write the law and knew more about the law than any Supreme Court Justice with a philosophicla nose of wax to mash, you could not be more wrong.
Have you asked Alice yet?
Maybe you want to ask Congress who set the mandate for the CAFC?
Sorry Ned – you are wrong on this in every concievable way.
“respected folk such as Judge Posner”
LOL – you want to talk about someone too full of themselves I see, someone who is willing to rewrite law (check out his history on torture and the suspension of the Bill of Rights).
No thank you Ned, I don’t want your version of who messed things up.
But you implicitly claim to be tacky, so I see.
Unless you want to give me my answers or simply admit that I was right (again), but perhaps add that you are a baby and won’t give the apology owed…
anon, havoc? The Feds cause havoc as well, but they do the opposite of what the Supreme Court does. They open the floodgates and allow patents on fluff, stuff and cr *p. Think, STATE STREET BANK.
The Federal Circuit has done a lot to undermine the credibility of the patent system by ignoring the wisdom of the Supreme Court and of Congress, for that matter, by doing its own thing and constantly expanding the scope of patentable subject matter and the scope of patent claims, while at the same time lowering the barrier of obviousness.
What we get is a mess, where the CEOs of most big companies are complaining and respected folk such as Judge Posner say with reason that our patent system is out of control.
“Maybe Tr0 llb0y will go f*k himself again.“
LOL – what is your point, Malcolm?
That you can be a total @sswipe and have nothing intelligent to respond with?
But how many times do you want to make that point? You done that hundreds of thousands of times.
I never claimed to be gracious, anon. That would be tacky.
“So, lets begin at the beginning.”
Sorry Ned – that briar patch won’t hunt (to butcher a phrase).
How about this: do you think software can obtain a copyright?
As to code and software, do you remember a phrase (that you butchered – but in a different way): the map is not the world.
Think again about how you are defining software.
and oh, “1” is STILL not software.
Further to my comment above, I copy below a para from today’s IPKat blog: “However, a comment by Judge Rader in his address at the Singapore conference suggested that something more systematic maybe be taking place. At one point, Judge Rader referred to a certain patent dispute (sadly, this Kat did not hear the name of the case) that had been litigated in a number of key jurisdictions. He then observed that an identical result had been reached in the dispute in the US, UK and Germany (in which it appears that the judge reversed a long-time precedent regarding the issue at hand), respectively. Judge Rader stated that this identity of result “was not by accident”. He explained that the three national judges had apparently taken part in discussions and that they had explored how to reach a common result, subject to the national-law limitations of the three jurisdictions. In this way, judges could achieve a measure of uniformity on patent law questions even in the absence of any formal mechanisms or structures for doing so.”
See: link to ipkitten.blogspot.de
I wonder, might this indeed be the Leo case?
Leopold,
Since you withdrew your apology, does this mean that you will give me my answers?
Or do you think your running away, er um, excuse me, allegedly running away, makes for a gracious exit?
“Thanks for the confirmation by denial when nobody even accused you”
Almost as good as if Malcolm used his vacuous projections with winky emoticons and coded names like victor…
You are so transparent, 6.
“since when I first started”
LOL – just like you commented on a particular case – until I actually reviewed every thread on Patently-O since that particualr case broke and exposed you for the fr@vd you are – like that, 6?
“instead of being nebulous like you are anon”
LOL – like providing two well-respected authors is somehow ‘nebulous’? How is your promised treatment of this concept coming along? Oh wait – you have not yet lived up to that promise.
You are funny 6, but not in the way that you might think.
In order to keep up with you, I would need hyper-light speed in reverse.
LOL – more of the accuse-others typical Malcolm B$.
“can cause a lot of havoc”
LOL – seriously Ned? You don’t think that what the Supreme Court has (or hasn’t) done hasn’t caused havoc? That their insistence on sticking their fingers in the 101 nose of wax has not been a source of havoc?
Go ask Alice.
3rd attempt:
Bier, in case you are interested, here is the Link to the EPO file of the patent family member at the EPO:
link to register.epo.org
I already posted it to Patent Docs in Noonan’s August 13 thread.
The EPO file includes members of the public making observations on patentability, then issue, then a plurality of oppositions being filed.
The EPO Examining Division found it plausible that the prior art did not render the claimed subject matter obvious and that the claimed subject matter plausibly solved the Objective Technical Problem over its full width. It remains to be seen whether the Opponents, with their evidence, can turn the EPO perception around.
Do you think it possible that the Federal Circuit Panel members had a surreptitious peek into the EPO file, before they solidified up their opinions?
a couple clicks away.
Two clicks? I can see now why you’re not making more progress.
I find it interesting that obviousness analysis in the US is trending toward the problem/solution context of EP.
Along with pretty much everything else.
Nobody could have predicted that.
Maybe this is another person that Malcolm will greet with his usual name-calling.
Maybe Tr0 llb0y will go f*k himself again.
are you actually still trying to deny that the patent system is under attack?
Are you still trying not to beat your wife?
By saying ‘it depends’ you acknowledge that business methods exist that are patent eligible
It’s impossible to parody your profound ignorance and your fantasies about scoring home runs while you’re passed out from sunstroke in the bleachers.
1. A method for manufacturing a [new, non obvious eligible device], comprising steps a + b + c. <-- looks like an eligible claim 2. The method of claim 1, further comprising offering the device for sale. Claim 2 is a "business method." It's eligible. So what? If this sort of thing represents some groundbreaking "admission" for you, then I pity you. You need to read Bilski again.
No I don’t.
your agenda to block ALL business methods at the 101 gate (and similarly, ALL software patents).
Depends on the “business method”. And by the way, what just happened? You downsized “my agenda” (or at least your fantasy version of “my agenda”). I thought I wanted all patents to be “blocked” because I was a commie-loving socialist or something.
“all of the “modern” (?) business owners I know think that it’s ridiculous to grant patents on methods of determining prices, accounting, or otherwise “monetizing” task”
LOL – that’s exactly what the creationists say in regards to their faith – all the ‘right’ people believe as they believe.
Huh? This isn’t a matter of “faith.” It’s a fact. Go ahead and deny it but the fact remains that the number of True Believer in the patent game is absolutely dwarfed by the number of people who simply approach business as business and who want nothing to do with patents.
You need to travel in some different circles
Why? You’re here all the time preaching the gospel and even if you weren’t the Church of Patent Apology is just a couple clicks away.
business methods are patent eligible as a category
That’s nice. Unfortunately for you, Bilski blew a huge hole in State Street Bank and whatever the “category” of business methods was thought to include before Bilski (and Prometheus, for that matter), it’s a smaller category now. You are well aware that merely defining a method as a “business method” achieves nothing in terms of sealing the eligibility of the claim (but of course you can’t admit that — not part of your script).
business methods have been granted by the USPTO throughout its history
The PTO granted patents on man-made non-natural chemicals throughout its history, too. Times change, TB. Times change.
GUI -> graphic user interface
UI -> user interface
6, thanks to the cite to Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008).
For those who haven’t read the case, the patent owner tried to assert a video game invention against movies. The court had construed the claims to cover both. But, the defendant ably demonstrated that the invention was not enabled and could not work with movies. The court held the claims invalid.
A simpler approach would have limited the claims to video games by claim construction as that was the only thing disclosed. That would have put the onus on the patentee to prove infringement of movies under the DOE.
Another approach, and I think this is the one taken by the Supreme Court in any number of cases, is that if the claims are not fairly susceptible of a construction that covers the disclosed embodiments, the claims are indefinite. See, e.g., Perkins Glue.
So, as part of any claim construction, I would recommend the courts decide whether the claims can be construed to cover disclosed structure, but no more. If not the claims cannot, but cover structure not disclosed, the claims should be declared invalid as indefinite.
You guys in the PTO should do something similar.
UIs that will pass 101 (so that they can be patented lol)
What’s a “UI”?
A gauzy “economics-based policy balancing” can be used by any mediocrity to advocate any particular position on either side of any issue.
Indeed, that’s why it’s the favorite argument of the patent apologists, regardless of how awful the claim.
anon, modern computers operate from code consisting of binary digits. When you speak of software, you mean such code.
All code then consists of binary digits, zeros and ones.
So, when you say, “Software has structure,” you say that code has structure, which means that zeros and ones have structure.
So, lets begin at the beginning.
Describe the structure of a “1.”
Tourbillon, “abstract cannot be defined.”
Really?
Or is it that the Supreme Court is unwilling to make a definition for some reason?
I think the latter and the reason to me seem somewhat clear. The SC likes narrow decisions that decide no more than they have to. Providing a definition of abstract that is too narrow or too broad can cause a lot of havoc. Thus they build their definitions by examples.
Bilski was abstract. But beyond the facts of that case, we do not have a clear answer. I think that was intended.
Got to this one late, but anytime I see an obviousness rejection overturned after KSR, I’m intrigued. Couple of my old colleagues in on the winning side to boot.
Without delving into more, and perhaps someone else has already made this observation, above, I find it interesting that obviousness analysis in the US is trending toward the problem/solution context of EP.
MM said:
“That might be true but well-established case law (perhaps less well-established than we thought?) tells us that the justification for a claimed combination need not be the same as the justification provided by the applicants. That’s where the Federal Circuit’s opinion seems to take a turn for the worse. Prior art (happened to be old) was presented that taught the chemicals recited in the claim (prior to the re-exam) and provided a reasonable motivation to combine the art.”
Weeelllll, while what you’ve said is true, from what I’ve read in the text of the opinion so far (still reading), the “motivation to combine” presented by the PTO is smoke and mirrors/mumbo jumbo at best. Of course, since KSR this type of motivational statement has been the M.O. of the examiners. They seem to concoct reasons for combination out of thin air, and rely on terms such as “better” and “more effective”, even when those terms are found nowhere in the references.
Oh well, I guess legal fictions keep us all employed.
“6 – I am not an an author of a work on ladders of abstraction.”
Who on earth ever said it was you anon?
Thanks for the confirmation by denial when nobody even accused you. 🙂
“I certainly hope that whoever this author is does not take your comments in the wrong way.
After the way the thread has been edited by Prof. Crouch, there is a colorable argument that he has lost any website operator protection, and I can easily see his master database as discoverable.”
You’re so cute when you copy NWPA.
In any event, I surely never suggested that there is a bio/CV that fits you to a T and would explain how a certain world-view arises, a publication by a certain someone that uses the same mannerisms as you, another publication detailing someone’s work where it appears that this someone is trying to invent UIs that will pass 101 (so that they can be patented lol) along with another publication that details someone’s attempts to make software into structure through semantics and theory, and some other interesting facts about a certain someone that resemble you quite closely.
I never suggested any of that, and I never will 😉 But others are of course free to do their own research into any topics they’d please.
“Even as 6 now seeks to backtrack and play pedantic games by ‘introducing’ a modification to his ‘abstract theory’ with the notion of ‘generalization.'”
Actually I’ve been saying that “modification” since when I first started teaching young pupils like yourself about it. In fact, I believe I even used the very same word(s) when discussing a similar matter with Ned years ago where he was similarly concerned that we’d be abstracting down past the realm of the abstract and into the realm of the non-abstract. He may have used a different example than the xray machine in the article, but the point was the same. He worried that even when specific structural machines have entered the picture we’d still be abstracting. The thing is, you guys always forget the basics which I toil to lay out, year after year, come up with some cockamamie reason why the supreme’s pronouncement will simply never work out (which is usually just an old reason with a new name attached), and go on beating your drum about it while ignoring how the basics have already addressed your concern. That, or not understanding the basics in the first place. Then, when I finally get around to figuring out how the basics address your newest concern because someone has been explicit in laying out what your beliefs are, instead of being nebulous like you are anon, you feel as if you were cheated and that I’m now preaching something wholly different than before. I’m not, unfortunately. It’s just that you have a hard time keeping up.
“1” is not software.
Any other concerns, Ned?
LOL – well said.
WHAT is surprising is that such could
EVER survive the careful scrutiny of the censor’s gaze.
What is configured to?
We ARE talking about software? Software is code. Code is a series of numbers that represent things.
Lets start at the most basic.
Describe the structure of “1".”