Working out the Kinks in Post-Issuance Reviews: Versata v. SAP

By Dennis Crouch

The Versata saga provides an important case history showing the power of the new post-grant review procedures before the USPTO and the Office’s seeming new power to operate without fear of judicial review. However, over the next year the Federal Circuit will have its opportunity to review the PTAB’s controversial decisions.

= = = = =

Versata’s hierarchical pricing engine software had strong sales in the mid 1990′s, that ended when SAP and others added the component to their product line – an extra add-on was no longer needed. SAP indicated that its software replaced the need for Versata’s add-on and actively discouraged customers from using Versata.

Versata’s In-Court Victories: Versata eventually sued SAP in 2007 and won a first jury verdict and then a second jury verdict (finding that SAP’s “patch” did not cure the infringement) with a $300 million + damage award. That final decision was later affirmed on appeal.

Petition for Post-Grant Review of Covered Business Method: Meanwhile, following the district court’s second finding of infringement (but prior conclusion of the aforementioned appeal), SAP filed a petition for Post Grant Review available to “Covered Business Methods” as part of the America Invents Act. SAP had clearly been anxious to use this approach and filed the PGR petition at its first opportunity on September 16, 2012 (the first day such petitions were allowed). CBM2012-0001.

If you remember, post-grant review (including CBM review) allows for challenge on “any ground that could be raised under paragraph (2) or (3) of section 282 (b) (relating to invalidity of the patent or any claim).” This has been interpreted by the PTO to include validity challenges raised under 35 U.S.C. § 101, 102, 103, or 112. But see Can a Third Party Challenge Section 101 Subject Matter Eligibility in the USPTO’s new Post-Grant Review Procedure?

SAP’s petition challenged the patent claims as (1) directed toward unpatentable subject matter under §101; (2) lacking written description; (3) indefinite; and anticipated.

USPTO Grants Petition for Post Grant Review: In a January 2013 order, the USPTO’s Patent Trial & Appeal Board (PTAB) granted the petition after finding that the challenged claims are “more likely than not unpatentable.” In particular, the PTAB allowed the challenge to move forward on the Section 101 and 102 grounds.

The PTAB made two additional important rulings:

What is a Covered Business Method?: First, the Board ruled that the ’350 patent claims qualified as covered-business-methods because the claims are directed to a method for the “management of a financial product or service” and are not “technological inventions.” The PTO’s working definition of “technological” is rather unhelpful in that it simply asks whether the claim recites a new “technological feature” or “solves a technical problem using a technical solution.” Relevant claims of the patent (U.S. Patent No. 6,553,350) are shown below (claims 17 and 26). And, you will note that the method claim 17 does not recite any steps that could not be done with pencil and paper.

Issue Preclusion / Collateral Estoppel Does Not Apply: The ordinary rule in federal courts is that preclusion applies following final judgment by a district court. The fact that an appeal is pending does not impact the finality of the district court judgment unless & until the appellate court takes some action. In Pharmacia, the Federal Circuit wrote that the “vast weight of case law” supports the notion that a judgment should be given its full preclusive effect even when an appeal is pending. Pharmacia & Upjohn Co. v. Mylan Pharm., 170 F.3d 1373 (Fed. Cir. 1999). Here, Versata argued that the PTO should follow that general rule and since SAP already had a full and fair opportunity to challenge the patent validity and had lost its federal lawsuit resulting in final judgment. The PTAB rejected Versata’s argument finding instead that it would would not respect any final judgment subject to a pending appeal to the Federal Circuit.

As the final judgment in the related Versata v. SAP litigation is currently on appeal to the Federal Circuit, we hold that the district court’s judgment is not sufficiently firm to be accorded conclusive effect for purposes of 37 C.F.R. 42.302 as it is still subject to reversal or amendment.

On this issue, it is interesting to note that the appeal brief filed by SAP did not challenge district court’s validity finding. Thus, although the district court decision in general could have been rejected on appeal (it wasn’t), there was simple no chance even in January 2013 that the appellate panel was going to opine on patent validity issues.

At this point, in January 2013, the PTAB was beginning its review of the ’350 patent’s validity and, in parallel the Federal Circuit was considering SAP’s appeal that focused on noninfringement and remedy arguments.

No Challenge to PTO Decision to Grant Post-Issuance Review Petition: Versata also opened a third-front – filing suit in Virginia district court to overturn the PTO’s decision to grant the post-issuance review petition. In a recent decision, the Virginia court rejected that request in Versata Development v. Rea (as Director of USPTO) and SAP AG, 2013 WL 4014649 (E.D. Va. 2013) (no subject matter jurisdiction). The AIA indicates that the PTO’s determination of whether or not to institute post-grant proceedings are “final and nonappealable.” 35 U.S.C. 324. Versata argued that “nonappealable” in the statute should be seen as merely limiting direct appeals to the Federal Circuit and that its request for review was akin to a “civil action” under 35 U.S.C. 145 and not an “appeal.” Bolstering that argument is the language of 35 U.S.C. 329 and 141 that define appeal in post-issuance proceedings as appeals to the Federal Circuit. However, the district court rejected Versata’s argument and held that the court lacked jurisdiction under the statute and that, in any case, the decision to grant the review was only an interlocutory decision. It is unclear, but Versata may appeal this decision soon. [As an aside, the language of the district court opinion suggests that petition is denied

Federal Circuit Decision (Largely) Affirms Lower Court: The next event in this long saga came in May 2013 when the Federal Circuit affirmed the district court’s determination of infringement and the damages award. The only modification of the judgment was to ask the lower court to be more particular in injoining infringement without injoining sales of SAP products in general.

PTAB Final Judgment: The following month in June 2013, the PTAB came out with its final ruling holding that the patent claims are invalid under 35 U.S.C. §101 as unpatentably abstract. This decision obviously temporally follows both the district court decision and that of the Federal Circuit. Yet, the PTAB found itself to differ on both claim construction and validity.

In particular, the PTAB determined that it would apply the “broadest reasonable interpretation” (BRI) standard to claim construction during post-issuance proceedings even though the terms had already been construed by the district court in a final judgment. The PTO’s rational is that (1) it is not bound by the district court judgment since “appeals from this proceeding are exclusively the Federal Circuit rather than to district courts” and that (2) the patentee’s ability to amend claims during review suggests that BRI should apply.

In the 101 analysis, the panel found that the claimed method of determining a price using product group hierarchies was a “disembodied concept” capable of being performed mentally, on paper, or on a general purpose computer. The PTO final judgment did not substantially revisit the issues of preclusion or whether the PTO has standing to challenge the patent under Section 101.

At the PTAB, the current status is that the Board is considering a rehearing request by Versata with the primary new focus being on the Federal Circuit’s Ultramercial decision. Versata again raised the contention that §101 is not a permissible ground for post grant review. Versata writes “Because § 101 is not a condition for patentability, much less specified as such as required by 35 U.S.C. § 282(b)(2), it is not reviewable in a post-grant review (or CBM review).”

All these issues are likely to come to a head as the case is appealed to the Federal Circuit over the next year.

= = = = =

Claims at Issue:

17. A method for determining a price of a product offered to a purchasing organization comprising: arranging a hierarchy of organizational groups comprising a plurality of branches such that an organizational group below a higher organizational group in each of the branches is a subset of the higher organizational group; arranging a hierarchy of product groups comprising a plurality of branches such that a product group below a higher product group in each of the branches in a subset of the higher product group; storing pricing information in a data source, wherein the pricing information is associated, with (i) a pricing type, (ii) the organizational groups, and (iii) the product groups; retrieving applicable pricing information corresponding to the product, the purchasing organization, each product group above the product group in each branch of the hierarchy of product groups in which the product is a member, and each organizational group above the purchasing organization in each branch of the hierarchy of organizational groups in which the purchasing organization is a member; sorting the pricing information according to the pricing types, the product, the purchasing organization, the hierarchy of product groups, and the hierarchy of organizational groups; eliminating any of the pricing information that is less restrictive; and determining the product price using the sorted pricing information.

26. A computer readable storage media comprising: computer instructions to implement the method of claim 17.

141 thoughts on “Working out the Kinks in Post-Issuance Reviews: Versata v. SAP

  1. You don’t try this on paper… SAP needs to give it up, Oracle wisely licensed this. SAP stole it and thought cool we can sell this!

  2. In this case, proving infringement, or considering whether the claim is valuable as to the ease of proving infringement is simply not at issue.

    Kindly refrain from such dust-kicking.

  3. Ned,

    Try again. This time read my post at 5:37. It is most decidedly not just “a number.”
    It is an applied number with context tied to a specific non-abstract thing.

  4. “12″ is a number.

    “$12.00 for a sixpack of beer” is an applied number with context, tied to a non-abtract thing.

    Worlds of difference, Ned.

  5. Ned: “101, it calculates price, a number. A number is abstract. It is as simple as that.”

    Ned, Versata does not simply claim a “number”. And even if Versata’s claimed invention includes the process of calculation, that would not render the claims as a whole ineligible. Now, please tell me why Versatata’s claim as a whole is a legally abstract intellectual concept in the form of a fundamental truth; an original cause; or motive?

  6. The PTAB has committed so many gross legal errors in this decision that it could easily be the worse Board decision in the history of the Office. One glaring example no one will discuss is the mistake the Board makes by citing Flook as the authority to ignore Versata’s claim elements of storing pricing information in a data source……..retrieving applicable pricing information corresponding to the product…..sorting the pricing information according to the pricing types, the product, the purchasing organization, the hierarchy of product groups, and the hierarchy of organizational groups.. Well, what the Board failed to recognize is that Flook was about “post-solution” activity. In Flook, the mathematical formula of the claim had already been solved. The adjustment of the alarm limit was extra “steps” to the “solution” of the claimed mathematical formula. Versata does not claim a mathematical formula. Therefore Flook is no legal justification for ignoring any of the steps in Versata’s claim.

  7. It’s very telling that no one from the anti patent establishment can answer this question.
    LB, actually showed some guts, went first, and tried to answer only to inadvertently prove the claims were not abstract. Now deflated, he is relegated back to the sidelines to hurl his usual insults and heckles. Max, admitted he could not answer and instead started making his usual strawman arguments. 6, uncharacteristically did the wise thing and stayed out of this debate, perhaps knowing Versata’s claims are not abstract and not wanting to be embarrassed. Ned, quickly failed and rather than admit defeat continues to run around in circles asking irrelevant questions, that do nothing to address the issue at hand. MM, the anti’s fan favorite, completed an epic fail, by stating a hypothetical end result without addressing the method steps as a whole. Of course we will not hear another peep out of him.
    So, the question remains, why is Versatata’s claim as a whole a legally abstract intellectual concept in the form of a fundamental truth; an original cause; or motive?

    ::Crickets Chirping::

  8. Ned Heller said: “101, we go round and round.”

    Ned,Versata does not claim a mathematical formula, or equation. Now please stop running around in circles and answer the question. Please, tell me why Versataat’s claim as a whole is a legally abstract intellectual concept in the form of a a fundamental truth; an original cause; or motive?

  9. You know anon, the whole point of the note to 101 was to point out that using a calculating machine to calculated is not a new process.  I know this could and probably should be addressed under 102/103, but the SC appears to have a different view. 
     
    The law, since Morris, requires that abstract subject matter be
     
    APPLIED … to a useful end
     
    in order that it be eligible.  Otherwise, it remains abstract.
     
    Morris also layered on that this means that one must describe the application and the manner of making and using it as well.
     
     
     

  10. LOL, tlaking about round and round…
    using a specific machine

    Once more, Ned:
    Bilski: MoT – not required.
    Prometheus: MoT – not sufficient.

  11. 101, we go round and round.
     
    Applied.   To a useful end. 
     
    That is the test.
     
    Math.
     
     Applied to do something useful.Calculated using a specific machine.
     
    Which is “Applied” within the law?
     
     
     

  12. “Any Questions?”

    Geez.. Enough already! You would think you people would know better than to take on the 101 Integration Expert by now. You know you are going to just get owned in the end.

  13. ” thinking about 6 related items is too much information processing for your brain to handle.”

    That my be true but you still failed to answer my original question to explain why the claims are abstract, and you inadvertently proved SAPS claims are indeed not abstract. That one or more of SAPs steps may be ineligible in isolation ( possibly a determining step) is completely irrelevant as to , “whether the claims as a whole recite subject matter eligible for patent protection under § 101.” [Text Book Diehr], see:

    “The fact that one or more of the steps in respondents’ process may not, in isolation, be novel or independently eligible for patent protection is irrelevant to the question of whether the claims as a whole recite subject matter eligible for patent protection under § 101. ”

    Any Questions?

  14. Oh, I’ve got no problem with that, 101, especially since that “proof” depends on your admission that thinking about 6 related items is too much information processing for your brain to handle. Now that I understand that, everything else you say makes a lot more sense.

  15. Max:”I’m not sure the rest of us can help you much”

    No worries. LB, already proved the claim is not abstract although I do not think he is very happy about that. See my post at Aug 20, 2013 at 08:22 PM

  16. Ned: “Diehr fits squarely within the ambit of the Benson holding.”

    Ned Diehr is not limited to the scope or bounds of Benson. While Diehr’s claim may very well pass Benson, the Court has expressly refused to limit Diehr to that case. Indeed the Court has said it’s 101 precedent, including Benson ,stand for no more than the holding in Diehr. On this there can be no debate. Please see Bilski 14, as previously recommended.

  17. MM: “I was able to do it in my head, no problem. The price is $1.00.”

    No, you did not perform all the claimed steps in your head. You merely recited an end result you believe the claim would produce. However to infringe the claim you must perform all the steps, irregardless of the result. Likewise in order for the claims as a whole to be abstract all the steps in the claim must be abstract as well. That’s why the Court has ruled you are to consider the claims as an “integrated” inseparable whole. No parsing. No ignoring. No dissection. That’s the law.

    Any Questions?

  18. Ned, with all due respect you have ducked the question. SAPs claims were not rejected for failing to be applied to a new and useful end. You may personally believe they are not applied to a useful end but that is not the issue here. SAPS claims as a whole were rejected for being abstract. The legal definition of abstract from the Court is as follows: “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. I am sure you will agree all the foregoing abstract concepts cited from the Court can be applied to a new and useful end, if only for the purpose of thinking and expanding ones intellect, thus meeting the utility requirement. However such use and result would still be a legally abstract concept and thus an exception to 101 statutory subject matter. So your implied argument that the legal definition of abstract is the same as “utility” is incorrect. Now please tell me why SAPS claim as a whole is a legally abstract intellectual concept in the form of a a fundamental truth; an original cause; or motive?

  19. Cabined?, as in giving an example of when math is applied to transform a moliding process to produce and improved result, an improved molding process?  Diehr fits squarely within the ambit of the Benson holding.

     
     
     

  20. Ned,

    Read Bilski and note how Benson has been cabined.

    Is the Benson merry-go-round ready? You know the one, wherein we show that much of the dicta of Benson is utter CRP, and the key quote in Benson goes again without a comment from you?

  21. Not really, 101.  It claimed method must be applied to a useful end that is not abstract in order fro the claim as whole not to be abstract.  It matters zilch that the claim have physical acts or uses machines.  The useful end is the sine qua non.  
     
    Read Benson.
     

  22. Perhaps it is someone with the same agenda as Ned and MM and they do not want the doctrine of “Integration” to advance?

    Perhaps it is Lemley. Or Stanford.

  23. >
    >
    > 101 Integration Expert: Can anyone please tell me why the following claim of Vesata is “legally” abstract, according to the definition of the Supreme Court?
    >
    > Ned: 101, the claim itself determines price by a method.  Price is abstract.  There is your answer.
    >
    > 101 Integration Expert : The answer you provided is incorrect. In order for the claim to be “legally” abstract, the claim “as a whole” must be abstract, and not just one element or just the concept.
    >
    > On a personal note, I am shocked that the moderator removed the above comment which as anyone can see is factual and legal and devoid of any personal insult whatsoever. In additional I no longer see my comment to MM, which also exposed the fallacy in his post by using the law, while MM’s insult laden comment is allowed to stand. This only goes to add credence to my theory that someone at Patently o is blocking my IP address when I present the law as it  applies to the doctrine of Integration Analysis. Perhaps it is someone with the same agenda as Ned and MM and they do not want the doctrine of “Integration”  to advance? None the less, my current ip is blocked now and when I post from a different Ip my comment is removed or mysteriously disappears.

  24. >
    > LB Said: ” Organize your purchasing organizations (make them individual Wal-Marts, for example) according to city, country, and continent. 
    >
    > 101 Integration Expert: I can’t perform that step entirely in my mind. It requires too large of a capacity for human working memory.
    >
    > LB Said: Organize your products according to automotive and home/garden, with two subcategories under each. 
    >
    > 101 Integration Expert: I can’t perform that step entirely in my mind as it requires more human information processing than human working memory can attend to.
    >
    > LB Said: For each city, assign each product an undiscounted price and a discounted price, or a seasonal price and an off-season price, or both. 
    >
    > 101 Integration Expert: I can’t perform that step entirely in my mind as it exceeds the human capacity of working memory. At the very least the proceeding steps require the use of apparatus such as a pencil and a legal pad.
    >
    > LB Said: Print all of the pricing information in a paper catalog organized according to pricing types, product, purchasing organization, product type/groups, country, and continent.
    >
    > 101 Integration Expert:  This step can’t be completed in the mind. At the very least this step requires physical acts that take place in the real world with the use of an electronic device for printing. The printing device itself will require additional parts of at least an ink cartridge. The step also requires a computer programed with an operating system and specific software required to print. Then an apparatus of at least a binder or binding machine is required to construct an article of manufacture called a catalog.  Then a power source to operate the above machines and devices in conjunction with all the other steps is required.
    >
    > LB Said:  Consult the printed manual for a given price.
    >
    > 101 Integration Expert: This last step can’t be performed within the mind as it requires the physical act of using an article of manufacture. All the devices, apparatus, physical acts, machines, and sub processes you describe both explicitly and implicitly are essential and integral to executing the claim as you have construed it and reaching a solution to the problem of the invention.  Thus you have proven that Versata’s claim when considered as an “Integrated” inseparable whole is not abstract, and indeed statutory subject matter. Good job LB!

  25. I read this claim both out loud and in silence, in effect trying to perform it in my mind, and I was not able to execute ANY of the steps!

    I was able to do it in my head, no problem. The price is $1.00. Maybe you were applying the method to some particularly difficult set of facts? That would be silly and unnecessary, because the claim reads on the situation where

    there are three organizations (one at the top, two below);

    three product groups (one at the top, two below);

    and the “applicable pricing information” is that the price is $1.00 for all products and all organizations.

    Or maybe you think that the claim requires more? If so, it’s not in the claim. That’s a pity. Well, not really, because “determining a price” for something you want to sell (or don’t want to sell) is about as abstract as a bullsh*t abstract method can possibly get. Maybe a claim to method for “feeling happy about the price you decided to charge regardless of the price” is more abstract but even the t–b-ggers usually don’t go that deep in the patent sewage.

  26. Upwards of 30,000 words of mewling QQ from you Malcolm paint you as the ‘a*h0le‘ squirrel busy stroking something.

    That laughter you here is not laughter with you.

  27. Actually, it was law of nature in Prometheus

    Actually, the Court used the terms laws of nature, natural phenomenon, correlation and natural correlation interchangeably throughout the Prometheus opinion but the real issue, as everyone who reads the opinion without a jaundiced eye can immediately recognize, was not the recitation of a “law of nature” (or any other “law” or “non-law” or “correlation” or “non-correlation”) but the fact that the only steps in the claim were an old step of obtaining a result and a new step of thinking about it. That new step is a mental step, which is an “abstraction.” I’m happy to talk about this all day, Tr0 llb0y. Just not with you, though, because you’re an insufferable pr*ck.

    tell everyone who got the Myriad decision exactly right

    A blind, mentally-challenged a*h0le squirrel stumbled across a left-behind rotten acorn the other day. It declared the acorn to be the greatest acorn ever. It caressed and stroked the nut and spewed insults at the other squirrels, whose bellies were full of fresh, tastier nuts that they found using their functioning eyes and brains. They just pointed and laughed.

  28. Calling me names and using expletives is your idea of a reasoned response

    Let’s spin the Magical Tr0 llb0y Response Wheel and see what comes up. Oh yes, it’s a classic!

    “The names and expletives are directed at those who deserve them.”

    ROTFLMAO

    Go f* ck yourself, you sick freak.

  29. the statement mangles your earlier statements

    I asked Tr0 llb0y a question. Tr0 llb0y refuses to answer and spouts some nonsense about one statement “mangling” another statement.

    Then he just repeats his usual baloney and insults.

    What a sad, pathetic t 0 0 l.

  30. Actually, it was law of nature in Prometheus and phenomenon of nature in Myriad.

    But please, feel free to stick your other foot in your mouth and tell everyone who got the Myriad decision exactly right and why.

    What? What? Malcolm, speak up, I can’t hear you?

    Still looking for your nuts I see.

  31. Calling me names and using expletives is your idea of a reasoned response to the faults that I have identified in your pathetic posting?

    Really?

    LOL. Calling me names such T001 or s0ci0path over and over again when you are the one exhibiting those traits is Oh So Malcolm of you.

  32. My comment here was in regards to the twenty seven posts you have made since you got back.

    I see that you still have made no substantive response.

    LOL right back at you.

  33. Did you pull this axiom out of your behind

    MaxDrei just tried to use that line.

    Didn’t work for him either.

    I used your definitions. Have you forgotten already? Use that fabulous power of yours of English as a first language and try again – this time actually reading the exchange on this thread.

  34. I noticed that you have not ‘kept trying’

    I went on vacation, you t 0 0 l.

    That said, I’m bored with your tr0 lling so that’s reason enough to flush this cold potato down the t–let.

    business methods involve applied science

    Uh … not by any reasonable definition of the terms “applied science” or “business methods”. For example, accounting for the status of a commercial item (e.g., a copyrighted file) in a database by changing its status (e.g., to “not copy protected”) using a computer isn’t “science”, certainly not for the purpose of this statute.

    But keep wa nking tr0 llb0y. Maybe if you screech BUSINESS METHODS ARE SCIENCE over and over again people will start believing you. That’s worked very well for you in the past, hasn’t it?

    LOL.

  35. ‘business methods’ are indeed scientific.

    Tr0 llb0y makes a funny. Did you pull this axiom out of your behind, Tr0 llb0y?

    A method of selling items of commerce to whites only. Sure, that’s real “scientific”, Tr0 llb0y.

    your first attempt made a circular mess

    You wish, Tr0 llb0y.

  36. Law of nature ‘worked’ in Prometheus.
    Abstract ‘worked’ in Bilski.

    Actually it was a “phenomenon of nature” in Prometheus. The claims could just as easily been tanked as “abstract” because they effectively claimed an abstraction, i.e., a mental step. It doesn’t matter what one “infers” from the result obtained by the old conventional step — could be a “phenomenon of nature,” could be any other fact, could be a non-fact. It’s still abstract and the claim would still be ineligible.

  37. And for the record, I read this claim both out loud and in silence, in effect trying to perform it in my mind, and I was not able to execute ANY of the steps! I then tried to perform this claim with pencil and paper alone and could not even begin.

    You’re not trying hard enough. Organize your purchasing organizations (make them individual Wal-Marts, for example) according to city, country, and continent. Organize your products according to automotive and home/garden, with two subcategories under each. For each city, assign each product an undiscounted price and a discounted price, or a seasonal price and an off-season price, or both. Print all of the pricing information in a paper catalog organized according to pricing types, product, purchasing organization, product type/groups, country, and continent. Consult the printed manual for a given price.

  38. merely provided a reasonable answer

    LOL – Malcolm, are you pretending that my post commenting on Leopold’s ‘reasonable’ answer was somehow not on point?

    Are you saying that the transformation prong of MoT is not captured by “Well, to start with, reciting a process that involves the manipulation of something physical might do it.

    Are you denying the truth of my statements of:

      Bilski – MoT not required
      Prometheus – MoT not sufficient.

    ?

    Is this (yet another) example of your twisting of ‘English as a first language, but from a different part of the galaxy’?

    Or are you merely doing what your cheerleader advocate does and telling the wrong people to ‘just shut up’? (d@mm, these counter points just ruin your and the little circle’s day, don’t they?)

  39. Keep trying, though.

    I noticed that you have not ‘kept trying’ in this part of the discussion thread Malcolm.

    Is your spinning so obviously [L]egally [B]ankrupt here that even you realize it, and have laid down the shovel? Have you come up yet with different definitions? Have you realized yet that business methods involve applied science? Or are you buffing your tinfoil hat and gearing up for some more other-worldly prevarications?

  40. recycle the same insults against the same people, twenty times a day

    LOL – nice attempted spin, Malcolm. Sure I have insulted posters, but the insults have been earned when those same posters insist on prevarications and ignoring of valid points made that run counter to their precious agendas.

    I have also explained how to stop this: be intellectually honest.
    Stop the spinning.
    Stop the strawmanning.
    Stop the half-truths.
    Stop the soapboxing that ignores valid points.
    Stop the misstatements of fact, law and what others post.

    We both know that if you were to actually stop your decrepit poor blogging, and stick to substantive matters, that your agenda seeking days would be over.

    Tell me again what is the controlling law when it comes to the exceptions to the printed matter doctrine.

    Tell me again about ‘configured to’ being structural language.

    Tell me again about ANTHROPOMORPHICATION.

    Tell me again how perfectly patent eligible claims can have elements that involve [thoughts] – be it [new thoughts] or even [old thoughts].

    Tell me again how perfectly patent eligible claims can have ALL elements be [old steps].

    Tell me again how you threw your own pet theory onto a bonfire of your own making when you attempted for the first time to provide a substantive squaring of the Prometheus case with the case most on point.

    Tell me again about the ‘worst thing EVAH’ scourge of svckies as you parade a seemingly endless supply of them yourself, and then point blank 1ie about it.

    Tell me who is the one that is fixated on perversity of a s3xual nature.

    Tell me who is the one that has openly insulted first time posters who happen to be cancer survivors, grieving sons of recently departed fathers, dead presidents, and people who do not even post here.

    Tell me again who was right in the Myriad case and why that person was right.

    Your audience awaits your ‘stunning mastery’ of English as a first language. As usual, the expectations are low that you will actually engage in a manner that displays intellectual honesty.

  41. Patents are not the be-all and end-all of life in a modern post-industrial world.

    Of course not – nice strawman.

  42. I suppose this is because “natural phenomenon” and “law of nature” don’t work

    In typical fashion, MaxDrei, you suppose wrong.

    Law of nature ‘worked’ in Prometheus.
    Abstract ‘worked’ in Bilski.

    That you attempt to equate the two is far more the driver as to ANY help you can (or rather cannot) provide on teaching anyone anything about 101 jurisprudence.

  43. Well, 101, on matters concerning 35 USC 101 you yourself are the self-professed expert so I’m not sure the rest of us can help you much.

    But I’ll try anyway.

    Unless you say that every process is automatically within the ambit of “useful arts” then a line has to be drawn somewhere, between those processes that are susceptible of patenting and those that aren’t.

    That line though, how shall it be defined? The chosen tool these days seems to be “Abstract”.

    I suppose this is because “natural phenomenon” and “law of nature” don’t work, and “Abstract” is the only tool left us by SCOTUS. So it has to be pressed into service often, and has to do a lot of work, work for which it is not very well suited.

    I think the better filter is rehearsed in the Lundgren papers, but that is only my opinion and my opinion Counts for nothing here.

    Good luck with your question.

  44. Not sure where that gets you, 101. Seems to me it merely continues the theme of reprimanding those who would supplant the plain words of the statute with some extra-statutory test. Fair enough, I’d say.

    But your notion of “living in a cave” is great. It applies to many troglodytes in the patent world, I find. It is the sort of cave where the light streams down from above and the cave-dwellers are unaware of the greater world up on the surface, and mistakenly suppose that all there is in the world is them and the sky. Patents are not the be-all and end-all of life in a modern post-industrial world.

  45. Max, I have no ideas what you are talking about. Let me know when you have a specific law to quote and a cogent point to make regarding that law and I will be happy to engage. Or perhaps you would like to take up the challenge to apply “Integration Analysis” to Ultramercial’s claims using the Office Official Guidance?

    :: Silence::

  46. “So I await with interest to see what the USPTO will decide, given another go at it, ten years after Lundgren, in relation to Versata’s claim.”

    Max, have you been living in a cave? The Supreme Court of the United States already decided for the USPTO and everyone else in Bilski 2010!

    Judge Bartlett ( Sp?) from the Lundgren dissent and the Board’s Bilski majority lost badly at the Court with his effort to concoct the MoT as the sole test and a strict technology requirement for 101. Please see ;

    “(“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. Finally, the Federal Circuit incorrectly concluded that this Court has endorsed the machine-or-transformation test as the exclusive test. Recent authorities show that the test was never intended to be exhaustive or exclusive.) BILSKI v. KAPPOS, 2, 2010, 561 U. S. (2010) 3 Syllabus

  47. Can anyone please tell me why the following claim of Vesata is “legally” abstract, according to the definition of the Supreme Court? And for the record, I read this claim both out loud and in silence, in effect trying to perform it in my mind, and I was not able to execute ANY of the steps! I then tried to perform this claim with pencil and paper alone and could not even begin. So how on earth did the PTAB determine this claim to be abstract?

    “A method for determining a price of a product offered to a purchasing organization comprising: arranging a hierarchy of organizational groups comprising a plurality of branches such that an organizational group below a higher organizational group in each of the branches is a subset of the higher organizational group; arranging a hierarchy of product groups comprising a plurality of branches such that a product group below a higher product group in each of the branches in a subset of the higher product group; storing pricing information in a data source, wherein the pricing information is associated, with (i) a pricing type, (ii) the organizational groups, and (iii) the product groups; retrieving applicable pricing information corresponding to the product, the purchasing organization, each product group above the product group in each branch of the hierarchy of product groups in which the product is a member, and each organizational group above the purchasing organization in each branch of the hierarchy of organizational groups in which the purchasing organization is a member; sorting the pricing information according to the pricing types, the product, the purchasing organization, the hierarchy of product groups, and the hierarchy of organizational groups; eliminating any of the pricing information that is less restrictive; and determining the product price using the sorted pricing information.”

    Of course without the ability to establish the claim as abstract there is no legal foundation for labeling the storing, retrieving, sorting, eliminating and receiving steps as well-known, routine, and conventional and ignoring these steps in the concluding analysis. I still find it absolutely amazing how the anti patent crowd is completely silent in the wake of such gross legal errors by the PTAB!

  48. “Thanks for that 101. Now then folks, wasn’t that easy?”

    Yes, it is quite easy for you to parse my words and then spin them to a conclusion of your own choosing. [L]egally [B]ankrupt analysis like that does not look good for your Max.

  49. Oh yes indeed. LB has little if anything of legal substance to offer. I learned that when he wilted when faced with the challenge to apply the Office Guidance on “Integration Analysis” to Ultramercial’s claims. But then again so did MM, his role model.

  50. anon: “Especially also, given that even the subset of business methods that fall under the new ‘covered’ business method review expressly indicates that no change in 101 was to be implied by the change in that part of the law.”

    Excellent! That’s for pointing that out anon.

  51. In the context of Claim 17 at issue, it is interesting to revisit the 92 page BPAI 2004 Decision in re Lundgren, on subject matter not so very different.

    There we see a majority of three and two singular dissents, one of which dissents runs to 76 pages. The Lungren tripos contains a plea for judicial review. It confirms that there is no separate “technological arts” test of patentability but observes that it is implicit in 35 USC 101.

    Lundgren passes no opinion on the patentability of Lundgren’s Claim. It does not have to. Instead, it simply tells the Examiner that it is wrong to reject the claim for failure to pass a non-existent separate technological arts test of patentability. Rather, it has to be done under the existing tests set by the courts. But it certainly reveals no enthusiasm whatsoever for the Lundgren Claims.

    So I await with interest to see what the USPTO will decide, given another go at it, ten years after Lundgren, in relation to Versata’s claim.

  52. Tr0 llb0y :

    HC’s views reflect actual law just as much as the man in the local mental sanatorium who believe that the moon is made of green cheese.

    What happened, Tr0 llb0y? Did your roommate steal your crayons when you were attending group therapy?

  53. Tr0 llb0y: Do I expose myself as ridiculous?

    Well, not for the first time anyway.

    the faults your writing contain are many, and repetitious

    LOL. Pretty rich coming from the s0ci0path troll and pathological l i a r who for years here has done nothing but recycle the same insults against the same people, twenty times a day, because they are deemed to have an “anti-patent” agenda (in Tr0 llb0y’s world, that seems to equate a failure to embrace the magnificance of every software patent ever granted).

  54. Tr0 llb0y: For what it’s worth, that’s exactly what you did.

    For what it’s worth, you a–h0le s0ci0path l i a r, LB merely provided a reasonable answer to your fellow troll’s dummax question.

  55. Tr0 llb0y: Don’t you love the irony of Leopold posting here and drawing attention (yet again) to the beat-down that Malcolm received last week?

    Fascinating. I was hanging out on the beach drinking beer most of last week. Sounds like Tr0 llb0y spent that time engaging in his usual masturbatory fantasies.

    What a f*kng t 0 0 l.

  56. The suggestion to read Lundgren (all 92 pages of it)is inspired. Many thanks. What one particular BPAI panel at the USPTO thought about “process”, “technological arts” and “useful arts” ten years ago and pre Bilski is still interesting today because the opionion writers then put so much effort into their task. I see that there are many dissents though, so it will be a bit like reading Bilski all over again.

  57. MaxDrei,

    You see snags only where you wish to obfuscate. Your example of pure mathematics is such an example. Do you know the difference between pure mathematics and applied mathematics?

    Check the archives – as this too has been presented before. You clearly lack the ability to learn, blinded by your desire to step up on YOUR soapbox.

  58. 101, I like your thought on “useful arts”, namely:

    “As far as your “Useful Arts” argument, well the method is clearly not a liberal art, performance art, or literary art, or any such subjectively performed and evaluated art. So as a logical and factual matter that pretty much leaves the “Useful Arts” as the category this method would be placed under.”

    because it chimes with the idea of 35 USC 101 being a weak filter and we all know what “subjective” means.

    I see a snag though. We still have to clarify what is meant by “logical” and “factual”. When debating the law it is easy to muddle fact and opinion.

    For example, does pure mathematics belong in the Useful Arts?

    And incidentally, I did not quote you when I wrote that the claim was to a new and clever way to set a price. I merely paraphrased you. So, which part of that paraphrase do you quarrel with? Was it so heinous a crime for me to write “way” instead of “method”? If so, what is the difference in meaning, please?

  59. So now we have (immediately above) 101 telling us how to understand “abstract”, in the context of subject matter fit to patent. To wit:

    “The solution can’t be abstract or the problem would not be abled to be solved.”

    Thanks for that 101. Now then folks, wasn’t that easy?

  60. MaxDrei said: ” I note what you write, that the invention lies in a new and clever way to set a price.”

    I did not write that. You wrote that. In US patent law when you want to define what the invention is, you don’t just “make up” whatever you want. You turn to the inventor and read the claim(s). Versata claimed:

    A “method” for determining a price of a product offered to a purchasing organization… ( Emphasis Added)

    A “method” , ( not a theory, idea, original cause or fundamental truth) for determining a price of a product is a specific problem that requires a specific solution. The solution can’t be abstract or the problem would not be abled to be solved. Therefore, nothing is abstract about the claims as a whole. As far as your “Useful Arts” argument, well the method is clearly not a liberal art, performance art, or literary art, or any such subjectively performed and evaluated art. So as a logical and factual matter that pretty much leaves the “Useful Arts” as the category this method would be placed under.

  61. mystified… posterior

    LOL – so classy of you to engage in the Malcolm-Accuse-Others mode, MaxDrei.

    Check the archives, as we have had this discussion before (and yes, you failed to learn then because you really were not interested in learning). I have provided case law at several levels including the Supreme Court and lessons on how to understand the term “Useful Arts.” Even the recent AIA recognizes that a subset of business methods can be challenged.

    But please, keep posting ‘opinions’ such as this and proving the adage about a f001 opening his mouth.

  62. anon writes:

    ‘technical’ is but a subset of the Useful Arts, and ‘technical’ does not include everything in the useful arts

    I profess myself mystified. Whereever does he get such stuff? It can only be straight out of his own posterior.

  63. Nice attempted spin, MaxDrei.

    Not.

    1) you have refused to define ‘technical,’ so any moving of the goalposts on what that term means is quite meaningless from you.

    2) Useful Arts is necessarily broader than ‘technical,’ because ‘technical’ is but a subset of the Useful Arts, and ‘technical’ does not include everything in the useful arts – refresh your set theory understanding by talking to any first grader.

    3) The differences between actual factual observations and your “Facts” in quotes clearly presents a poor attempt on your part to obfuscate what has been posted in black and white. So your ‘granting me that’ is a bit of a strawman, as no one is arguing about your ‘opinion’ of “Facts.”

  64. What I mean by technical includes claims to signals, Beauregard-type claims and claims to useful isolated bits of human DNA.

    I note your opinion that i) the US jurisprudence on useful arts is nevertheless broader than the EPC’s “technical” (irrespective what definition of “technical” one selects) ii) that’s a fact, and iii) I lack any ability to understand the “Facts” you present.

    You are right on item iii), I grant you that.

  65. What utter CRP from you, MaxDrei.

    Disguising a discussion point as ‘opinion,’ and therefore not contestable ranks right there with the fantasy land of the ‘moon is made of green cheese’-so-I-can-believe-that-if-I-want-to. Sure, that’s your opinion, but it is worth only that – which is to say, nothing in a legal sense.

    There are some HERE who have an impressive capacity to delude themselves and the includes you, who insist on wanting to be able to soapbox without being contested.

    Soundbyte after soundbyte from you has been exposed as outright blatant 1ies, from “I’m here to learn,” to “I want a discussion,” to “I enjoy being challenged,” your pure desire to only soapbox has been made evident in the exposure of your (repeated) attempts to employ a Crybaby Veto, and your unwillingness to actually engage in conversations or address points raised against your views (including your lack of ability to understand that the US jurisprudence of Useful Arts is broader than whatever you mean by ‘technical’).

    But hey, that’s just a factual observation.

  66. 101, thanks for that. I note what you write, that the invention lies in a new and clever way to set a price.

    I note your slipping “useful” in there too.

    But reading the Statute, I also note that 35 USC 101 is all about the “useful arts” and how to promote them.

    Words have meaning only in context. Context decides whether a “bank” channels a river of money or a river of fresh water. I think I know what “useful” means. I think I know what “useful arts” means today. I still think that SCOTUS even post-Bilski, would baulk at recognising the patentability of a clever new way to set a price because that invention lies elsewhere than in the “useful arts”.

    The USPTO seems now to have adopted EPO thinking on patentability ie “technical means to solve a technical problem”. As you know, under this rubric, the EPO issues loads of business method claims every year, despite the explicit European Patent Convention statutory prohibition on patenting business methods “as such”. No wonder SCOTUS carefully leaves open the door to patent suitably crafted business method claims.

    Finally, I think some people here have an impressive capacity to delude themselves, and that an awful lot of ordinary folks, members of the electorate, would agree with me. But,hey, that’s just my opinion.

  67. “All words are abstractions at certain levels and in certain contexts. Here, you are simply wrong and my post at 12:17 is correct.”

    Anon you are right and MM is wrong as usual. The concept of price is abstract but Versata makes no such claim. Versata seeks only to foreclose others from the specific steps of their invention which involves the application of a useful concept of setting a price. This is perfectly legal under the statute, and Supreme Court precedent. I notice MM has run from the discussion as usual, although the [L]egally [B]ankrupt still cheer him on.

  68. Good point, 101 IE.

    Especially also, given that even the subset of business methods that fall under the new ‘covered’ business method review expressly indicates that no change in 101 was to be implied by the change in that part of the law.

    The thing about HC is that he wants to hide behind his ‘opinion’ and ‘personal view’ and yet try to add an air of legitimacy that his ‘view’ reflects actual law. HC’s views reflect actual law just as much as the man in the local mental sanatorium who believe that the moon is made of green cheese. Sure, it is an opinion (and stands as such). But move beyond the ‘opinion’ into a discussion of genuine law, and HC calls an end to the conversation.

    A self-applied crybaby veto, in a sense.

  69. 101 IE,

    Don’t you love the irony of Leopold posting here and drawing attention (yet again) to the beat-down that Malcolm received last week?

    Gotta love it.

  70. Hagbard Celine “… what the law IS (which is far from settled in any case). ”

    Given the fact that the United States Congress recently passed the AIA and chose not to declare business methods, or software as non statutory, combined with the fact the Supreme Court of the United states, when specifically asked to interpret the statue to exclude business methods, expressly refused to do so, makes the law as “settled” as law can possibly be.

  71. Versata’s claim 17 as a whole, involves the manipulation of a “process”, which in and of itself is a physical thing. Most important, since the statute 35 USC 101, only requires an invention to be a process, machine, manufacture, or composition and does not require that a process involve the manipulation of a machine, manufacture, or composition of matter your analysis is LB, [L]egally [B]ankrupt.
    Which leaves the question open for a non LB attorney that may wish to answer it.

  72. For what it’s worth, that’s exactly what you did.

    You do know what the Transformation prong is meant to indicate, right?

    (and your use of Malcolm’s Tr0llb0y indicator is a needless reminder of your petty cheerleader status. BTW, how are Malcolm’s wounds from last weekend coming along?)

  73. Oh, look, Tr0llb0y is here! What a surprise.

    For what it’s worth, I didn’t advise anyone to limit themselves “to the Transformation prong.” But hey, don’t let that get in your way.

  74. reciting a process that involves the manipulation of something physical might do

    Leopold, you have not been paying attention:

      Bilski – MoT not required
      Prometheus – MoT not sufficient.

    Your ‘advice’ here to limit yourself to the Transformation prong does a disservice to your ‘clients’ that enjoy greater protection under the law.

  75. So my ultimate question is simply this, what is to prevent anyone from using the above analysis to invalidate any process claim that has even been, or ever will be filed?

    Well, to start with, reciting a process that involves the manipulation of something physical might do it.

    I’m glad to hear that this was your ultimate question. It’s been a blast, but I suppose it’s true that all things must pass.

  76. On closer review of Versata v. SAP the PTAB has dissected the first two elements of the claimed process from the last two elements and declared the invention to be the first two elements. The last two elements, which do indeed “Integrate” the concept and technology into the process as a whole, are declared to be insignificant post solution activity. The PTAB then concludes, the last two elements do not provide “enough” , “significant”, and “meaningful” limitations to transform the alleged abstract ideas into patent-eligible applications of the abstraction ideas, and “in practical effect, preempt the abstract idea.”

    Rhetorically speaking; one must ask, what is enough? What is significant? What is meaningful? Especially since Versata factually overcame the argument of pre-emption.

    So my ultimate question is simply this, what is to prevent anyone from using the above analysis to invalidate any process claim that has even been, or ever will be filed?

    Notice how silent the anti patent crowd is on this injustice and blantantl misuse of the law. There indeed needs to be judicial oversight for the CBM review powers of the Office or all software, and so called business method patents are effectively dead.

  77. In general, yes. Just my opinion, I don’t think they serve a purpose in “promoting the progress”.

  78. Social sciences are still ‘sciences’ and meet the definition of science as put forth.

    Unwittingly, you have proven my case (the definition of science is broad) for me.

    Thanks.

  79. Not confused at all, HC.

    Lots of people live in their own fantasy worlds where the law is how they want it to be.

    My post at 11:11 still applies:

      You are assuming your own conclusions with words like ‘genuine’ and poor logic like equating all business methods with ‘abstract.’
  80. Hagbard: “I do have a problem with patents for abstract business/financial/economic ideas”

    101 Integration Expert: But do you have a problem with patents for the application of business/financial/economic ideas?

  81. @anon (“reply isn’t working for some reason).
    I think you’re confused. My opinion of what the law SHOULD BE doesn’t need to be constrained by what the law IS (which is far from settled in any case). This is allowed in democratic societies.

  82. You are assuming your own conclusions with words like ‘genuine’ and poor logic like equating all business methods with ‘abstract.’

    And yes, you can say that such is an ‘opinion,’ but that is but a thin veneer, and your ‘opinion’ of law simply does not accord with the reality of law.

    Holding an opinion known to not accord with reality is not a recommended strategy.

  83. My personal view is what it is… I don’t have a problem with patents for genuine technological innovations in any field, business and economics included, but I do have a problem with patents for abstract business/financial/economic ideas.

    Without waxing too philosophical, by “metaphorical” I meant that in economics you can try to define monetary systems mathematically in terms of sources and sinks, fluxes, fields, forces etc, but that these represent “reality” only in a quite metaphorical way. To be sure, the relationship between the component parts of the equations of the physical sciences and soi-disant “fundamental reality” is far from certain and open to debate, but it is more solidly grounded than in economics and other social sciences.

  84. MaxDrei, your difficulty is a ‘you’ problem.

    You still have not ‘defined’ technical in a way that supports your views.

    Further, the ‘as ever’ is pushed by those with an anti-patent agenda. It’s a battle nigh on fifty years, as Prof. Crouch indicated in his archived thread.

  85. science of a kind, but of a metaphorical sort only

    Not sure what you mean, HC.

    And your personal view does not accord with US law. See Bilski.

  86. You are busting a gut to find fault with anything I write

    The sad thing, MaxDrie, is that I am not ‘busting a gut,’ as the faults your writing contain are many, and repetitious. Do I expose myself as ridiculous? Not at all, thanks. (that accuse-others-of-that-which-you-are trick doesn’t work for Malcolm either)

  87. …and yet again, MaxDrei, you labor under the misconception that the lack of binding precedent leads to a cleaner view of the law, where in fact, no such leading can be taken as a given, but rather like Moses during the forty years, leads to a wandering about chasing the ‘flavor of the day.’

    The ability to change without regard to precedent is the opposite of your supposed Darwinian view.

    But your soapbox sure is pretty.

  88. So, readers, yet again:

    The EPO explores the meaning of “technical” in a civil law environment where there is no Binding Precedent. With over a thousand unappealable final decisions per year, from nearly thirty different Technical Boards of Appeal none of which is bound by the decisions of any of the others, progress of substantive patent law at the EPO is Darwinian (survival of the fittest line of legal logic). The best line gradualy imposes itself over other less fit lines of rerasoning. We see this vividly when it comes to eligibility of computer programs and business method claims at the EPO.

    A definition of “technical” is no more helpful in such an environment than a definition of “obvious”. Indeed, a binding definition would impede free progress towards the best outcome. Study the EPO caselaw though, and you get a feeling what “technical” means. Of course, at the margin of eligibility/patentability, there will always be borderline decisions, with or without a headline strict definition. Better without, for then the caselaw can move forward in harness with progress in the useful arts (the direction of which we simply cannot imagine).

    The sheer number of EPO decisions, and the Darwinian fight for dominance played out over 30+ years, is why, after 30+ years of development of the EPO lines on issues of substantive patent law are by now unassailable, which is why we see the rest of the world, including the USPTO, swinging in behind the tried and tested EPO line.

    I grant you though, carrying “the EPO way” over into a land of Binding Precedent ain’t possible.

  89. Once again, anon, good for a chuckle.

    You speak of a mind willing to not learn and surmise that there is nothing like it. So true.

    You for example. You are busting a gut to find fault with anything I write, but in so doing succeed only in exposing yourself as ridiculous.

    Look again. For my “technical” I relied upon the dismal wiki, not the Whewell one.

  90. Besides the natural sciences we have the social sciences. Then we have the useful arts and the fine arts. I can see that technology is the application of the natural sciences but have a hard time accepting that when one applies the social sciences one is doing anything technological.

    As ever, the borderline of patent-eligibility is with mathematics and computer programming.

  91. Anon, that’s a pretty open question. I think that economics can be said to be a science of a kind, but of a metaphorical sort only. I don’t think that economic algorithms, financial instruments etc. have any place in the patent system, personally.

  92. HC,

    You might note that MaxDrei has been asked in the past to provide a non ambiguous definition of ‘technical,’ as well as address the USPTO version of that word and has declined to address either.

  93. MaxDrei, nothing like a mind willing to obfuscate and not learn. Read the wiki again and see that the aforementioned disciplines are separate from such non-useful arts as poetry and religion.

  94. Well Max, “technical” has a range of meanings, besides the one that the EPO evidently favors (i.e. a synonym for “technological”), and there is a “technical” aspect to all arts and crafts, including the literary (ask William S Burroughs – oops, sorry, he’s dead, but he characterised himself as a literary scientist).

  95. My last offering got eaten. So, for the second time:

    Well, Hagbard, economics is indeed the dismal science:

    link to en.wikipedia.org

    and the above Wiki on it reports in passing that writing verse and song is technical.

    Whewell was a poet. If we include that fact in the list of his disciplines, that would seem to confirm that poetry is of technical character (and therefore patent-eligible at the EPO). Or would it?

  96. Abd while just a wiki, I find it interesting how business methods (economics) is grouped in the article:

      published work in the disciplines of mechanics, physics, geology, astronomy, and economics

    Hmm, a discipline on par with other ‘technical’ fields…

  97. Thanks, MaxDrei,

    From the wiki: “One of Whewell’s greatest gifts to science was his wordsmithing. He often corresponded with many in his field and helped them come up with new terms for their discoveries.

    I daresay that he would have been pilloried today for such lexicography.

  98. The thread set me off on a voyage of discovery that included Wikipedia here:

    link to en.wikipedia.org

    Whewell invented the term “scientist”. Nice then, that at the same time, way back then, he also coined Edward O. Wilson’s notion of “consilience” of all the multifarious branches of human “knowledge”.

    The Link takes you to a useful Whewell quote:

    “But with regard to the material world, we can at least go so far as this—we can perceive that events are brought about not by insulated interpositions of Divine power, exerted in each particular case, but by the establishment of general laws.”

    I like it because it links philosophy, knowledge, science, technical, material and “natural law”.

    Just as the EPO routinely uses its “technical” litmus test to discover which claimed computer program claim is patent-eligible, so can the USA debate whether natural laws determine “prices”, liability to tax, or today’s USD/EUR rate of exchange.

    Incidentally, Richard Dawkins is another from Trinity College Cambridge. Has his newest tweet received any publicity in the USA, the one about how many Nobel Prizes scientists from Trinity has been awarded?

    link to independent.co.uk

  99. LOL right back at you 6. How do you even begin to stretch my comments to any form of thread deletion begging?

    You really are weaseling something fierce.

  100. so is:

    volt
    amp
    efficiency
    length
    height
    “effective amount”
    gallon
    milliliter
    liter
    mole

    You’re ridiculous in wanting to end the software industry. The ends do no justify the means, and your ends in and of themseleves are deporable.

  101. That was my biggest problem in this saga as well; overruling Article III courts and jury verdicts by an administrative body? Wow, so that’s where we are now?

    If this stands, then the IRS, EPA, OSHA, etc. can all toss aside court decisions and proceed as they please. What’s the point of a court?

  102. anon: “And by the way, ‘business methods’ are indeed scientific. You might want to move out of the Dark Ages if you think otherwise.”

    Well said!

  103. Cont’d: If on the other hand a proper “Integration Analysis” is not even employed by the panel, we might as well do away with patent law all together.

  104. Query said: “Should these claims be patent eligible in view of Ultramercial v. Hulu?”

    101 Integration Expert: At the very least the claims should be considered in view of Ultramercial v. Hulu II. Historically process claims have been considered by the Court to have a presumption of integration. This is in accordance with “process” in 101 being independent of the other categories of machine, manufacture, or composition of matter and eligible of a patent in it’s own right. The Court reaffirmed this in Bilski and made no change in Prometheus. Likewise, Rader in Ultramercial proceeds with the presumption of integration, taking the claims as an inseparable whole, and then looks for evidence from the challenger that the claims are not “integrated” and instead directed to an abstract idea, standing alone. Finding no such evidence the Ultramercial panel arrives at the right conclusion that the claims there are statutory.

    On the contrary, the Versata v. SAP PTAB panel does not begin with a presumption of Integration. The PTAB profiles the claims as a process, and immediately suspects the clams as being unworthy of a patent. They then completely ignore the fact that within the realm of science and technology a process is as much a physical thing as a machine, article of manufacture or a chemical composition. The panel then proceeds to dissect and disembody the claims and then declare the claims directed to the disembodied abstract idea. In effect, they gut the invention and declare the invention to be the guts. Such an act is an illegal process not sanctioned by the Court and clearly eviscerates patent law. If it can be determined that Versata’s invention is an “Integrated Technological Process, then the claims warrant passing at least 101. If on the other hand a proper “Integration Analysis” is not

  105. Do you agree with my statement or do you deny it,

    You have to fix the statement first, Malcolm, for the reasons already given before I can tell you whether I agree with it or not. Currently, the statement mangles your earlier statements and creates a circular mess.

    Science was in my definition of “technical.”
    Great, as no one said otherwise. However, the reverse was not true, and my post STILL holds. Try again (or for the first time) to place ‘application’ and ‘science’ together. You STILL have that part missing, and your first attempt made a circular mess.

    And by the way, ‘business methods’ are indeed scientific. You might want to move out of the Dark Ages if you think otherwise.

  106. Maybe, but such a broad definition would be a worthless for the purpose of this statute.

    The broad definition fits from your statement. If you now recognize that it may be worthless, perhaps you want to change your statement.

    “Price” remains an abstraction.

    All words are abstractions at certain levels and in certain contexts. Here, you are simply wrong and my post at 12:17 is correct.

    It is not clear what ‘it’ is that you think is ‘implicit’ in your statement of “I think it’s implicit in the phrase “technical solution”

    Try again.

    still the case that organizing data into abstract “hierarchies” is not a “technical solution” to anything.

    Again, wrong – even using your definitions of ‘science’ and ‘technical.’

    You can try again with different definitions if you want.

  107. “Surely you don’t literally mean that the application of knowledge to any aspect of “the world” is necessarily scientific.”

    Do you agree with my statement or do you deny it, Tr0 llb0y? Either you have a meaningful definition of science or you don’t. You seem to want to have a definition that is meaningless, at least in the context of this statute.

    ou should note above that ‘application’ was in your statement concerning ‘technical’ and was not in your statement concerning ‘scientific.’

    Science was in my definition of “technical.” This isn’t terribly difficult. What’s incredibly difficult (to the point of being ridiculous) is trying to pretend that the claims at issue here are not directed to a “business method” or that the claims are “technical” in nature, by any reasonable definitions of those terms. Keep trying, though.

  108. Prices of something material

    Nice try. “Price” remains an abstraction. Again, we all live in the “universe”, Tr0 llb0y. That doesn’t mean that everything is physical or material.

    science’ can be broadly applied to any activity that involves observation and experimentation

    Maybe, but such a broad definition would be a worthless for the purpose of this statute.

    “or “solves a technical problem using a technical solution”

    Let’s take this portion of the (circular) USPTO definition for technical (as the ‘or’ permits).

    There is no ‘new’ here.

    I think it’s implicit in the phrase “technical solution”. Of course it’s a new technical solution that is being referred to. That’s why the recitation of a generic old computer is not a “technical solution” to a problem of processing information more efficiently. That’s true in every instance, by the way. Someone should tell the USPTO.

    Regardless, even if “new” is not in the phrase, it’s still the case that organizing data into abstract “hierarchies” is not a “technical solution” to anything.

  109. To add to your point, Ned, it is likely still a constitutional problem if the Legislative Branch authorizes the Executive Branch to ursup the Judicial Branch (just because a power is granted by the AIA does not necessarily mean that that power is proper).

  110. Surely you don’t literally mean that the application of knowledge to any aspect of “the world” is necessarily scientific.

    In which ‘English as a first language’ class did you learn the trick of twisting two statements like that? You should note above that ‘application’ was in your statement concerning ‘technical’ and was not in your statement concerning ‘scientific.’ So unless you are purposefully trying to make your statements circular, you need to pay a little more attention to your English. (I recognize that your habit of spinning things gets you a little confused at times). Perhaps you want to add a missing statement about how science needs to somehow interact with ‘application’ ?

  111. or “solves a technical problem using a technical solution

    Let’s take this portion of the (circular) USPTO definition for technical (as the ‘or’ permits).

    There is no ‘new’ here.

    And your proffered definition is nowhere to be found. Like I said (if you can amp up your reading comprehension attempts),

      It is too bad that that is not the legal definition that the Office came up with in their supporting rules under the AIA.
  112. Of course, with your definition of science (really broad) most anything can be said to have the gloss of ‘technical.’

    Hardly, as it limits the relevant term (“technical”) to applications of scientific knowledge about the material and physical world.

    you claim that you do not see any ‘new’(why you attempt to spin this into the equation is not quite certain)

    The term “new” is in the definition of “technical” used by the USPTO (“The PTO’s working definition of “technological” … simply asks whether the claim recites a new “technological feature” or “solves a technical problem using a technical solution). That’s why. It’s not at all unreasonable, in this context, to look at what improvements are being alleged or what features represent the applicants’ solution to a purported problem.

    branching and hierarchies and the like are most definitely methods of applying systematic knowledge of the material world through observation

    Exactly what “material” are you referring to? Surely you don’t literally mean that the application of knowledge to any aspect of “the world” is necessarily scientific. So what do you mean?

    The claim is directed towards “prices”. There is nothing “material” or “physical” about a “price”. It’s an abstraction.

  113. “Not sufficiently firm…”

    Imagine if SAP had filed a declaratory judgment of invalidity instead of filing the this post grant review proceeding. Assume they did so because because they had new evidence, or new arguments, or because they were dissatisfied with the claim construction, or generally wanted to continue to battle.

    I can’t imagine any court allowing such a second suit to go forward, let alone allowing SAP to relitigate claim construction or validity on issue preclusion grounds if not under the seventh amendment if the issues were decided by a jury.

    When and if this case gets to the Federal Circuit, we all know where judge Newman will come out. Hopefully some other Federal Circuit judges will see what’s going on here and join with her to find that there are some fundamental problems with interpreting the statutes to allow collateral attack on federal court judgments. As is often pointed out by judge Newman, these collateral attack issues came up at the very beginning of our Republic, where it was decided that disputes were to be handled by the courts and cannot be overturned by the executive department as a matter of constitutional law.

  114. A truly Ray Davies moment (from the thread: link to patentlyo.com on Jun 15, 2013 at 08:22 AM

      anon said in reply to NWPA…
      You really should be more afraid of the power grab.

      While they only address a small reason for the use of the power grab in this decision, the logic they use is open-ended.

      This is literally an Article 1 court, subservient to a pure executive branch, (well, the fourth branch of the government… – but the head of the PTAB is still the head of the USPTO), with no apparent check to the law it can write, it can decide what it means and what it can enforce. ZERO checks and balances.

      Perhaps there are some serious constitutional separation of powers issues here…

    There was just too much gloating from the Myriad decision to give proper consideration to how seriously messed up the PTAB is with their very own judicial law making going on. An Article I ‘court’ that has tossed aside any restraint from the Article III Court system. This might get the attention of the highest Court in the land. If a fellow Article III court is not allowed to fulfill its stated purpose (clarity in patent law – go ask Alice) because of zealous guarding of ‘final say,’ just how do you think the Court will take to Executive branch wanting to have a final say?

  115. Dennis: First, the Board ruled that the ’350 patent claims qualified as covered-business-methods because the claims are directed to a method for the “management of a financial product or service” and are not “technological inventions.” The PTO’s working definition of “technological” is rather unhelpful in that it simply asks whether the claim recites a new “technological feature” or “solves a technical problem using a technical solution.”

    technology: The application of scientific knowledge for practical purposes

    science: systematic knowledge of the physical or material world gained through observation and experimentation.

    Is there new scientific knowledge being applied in the independent claim? I don’t see any. I do see a computer in the dependent claims, recited for its old well-known function of assisting people in the processing of data.

    The rest is just abstract g*rbage that should never have been granted in the first place.

  116. Section 282 should act as a subject matter jurisdiction bar.

    101 is not among the statutory grounds for invalidity under 282 and for the reason not grounds for this inter partes review.

    Expect a holding to this effect.

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