Interpreting CLS Bank Int’l v. Alice

Guest Post by Professor Bernard Chao

The issue of patentable subject matter eligibility has been in considerable flux. Currently, it’s unclear whether adding computer limitations to an otherwise unpatentable concept somehow renders the concept patent eligible. The Federal Circuit tried to settle this question when the entire court heard CLS Bank Int’l v. Alice, 717 F.3d 1269 (Fed. Cir. 2013). But the judges could not find common ground and the decision contained seven separate opinions reflecting at least three distinct approaches. Now it has been suggested that the CLS Bank Int’l provided the lower courts with absolutely no guidance. After all, no opinion garnered more than five judges’ support. In an effort diminish Lourie’s opposing opinion, Judge Rader even went so far as to say that “nothing” in the CLS Bank Int’l decision “beyond our judgment has the weight of precedent.” Id. at 1292, n 1.

Ironically, under the so called Marks rule, Judge Rader may not just be wrong, his opinion could be considered the holding of the court. The United States Supreme has said that when one of its decisions has no majority opinion in support of the judgment, “the holding of the Court may be viewed as that position taken by those Members who concurred in the judgment[] on the narrowest grounds.” Marks v. United States, 430 U.S. 188, 193 (1977). Now there is some disagreement about how to identify the narrowest concurring opinion. What’s more it’s unclear if the Marks rule applies to en banc decisions of the various Courts of Appeals. But there is certainly plenty of room to argue that Judge Rader’s opinion is the Federal Circuit’s holding under Marks.

To understand how the Marks rule would apply to CLS Bank Int’l, we have to examine the decision’s different opinions. I discuss these opinions in some detail in an upcoming article in the Berkeley Technology Law Journal, but I will provide a very short summary of the judges’ views here. Judge Lourie’s opinion (joined by Judges Dyk, Prost, Reyna and Wallach) took a “strong view” of § 101’s subject matter patent eligibility requirement. Consequently, these five judges would have found that all of Alice’s claims were ineligible for patenting. Judge Rader (joined by and Judges Linn, Moore and O’Malley) took a relatively “weak view” of § 101’s eligibility requirement. But Judges Rader and Moore applied this methodology differently than Judges Linn and O’Malley. Rader and Moore argued that the method and media claims were not patent eligible, but the system claims were. In contrast, Linn and O’Malley’s would have left all the claims intact. Finally, Judge Newman took an even weaker view of §101 arguing for almost no scrutiny of patentable subject matter eligibility whatsoever. Accordingly, she would have also found all the claims were patent eligible.

Both Lourie’s and Rader’s opinions concurred in the judgment of patent ineligibility for the method claims. So seven judges agreed that the method claims were not patent eligible. Lourie’s strong view advocated for a rule that would render many claims patent ineligible, while Rader’s weak view is more conservative and jeopardizes a smaller set of claims. As applied to the patents in CLS Bank Int’l, this meant that only the method claims would be ineligible. Under one interpretation of Marks, Rader’s opinion is the narrowest view supporting the end result and would be considered the holding of CLS Bank Int’l.

To be clear, I actually disagree with Rader’s analysis and say so in my article. I also don’t want to overstate the significance of the Marks analysis. Clearly, CLS Bank Int’l is still shaky precedent and the success of any appeal to the Federal Circuit may simply be panel dependent. Hopefully, the Supreme Court will resolve the issue. In fact, the Court is currently considering a petition for certiorari in Wildtangent v. Ultramercial. But in the meantime, software patents continue to be challenged on subject matter patent eligibility grounds and the Marks rule provides one way to try to interpret the confusing precedent now.

322 thoughts on “Interpreting CLS Bank Int’l v. Alice

  1. Leaving Ben Klemens’ opinion aside (I never heard of him – is he on the Federal Circuit?)

    Here’s an interesting point-counterpart between Klemens and Zura.

    link to 271patent.blogspot.com

    Golly, but those arguments from Zura sure do sound familiar. For example:

    I again submit that the same arguments being currently used for banning software patents can easily be applied to … a chemical patent.

    Zura repeatedly “submits” this but he never tells us what his “arguments” are. I wonder if they are as awesome as Les and TB’s “arguments.”

  2. Les: Do you think it is not actually clear that adding a computer to the otherwise unpatentable concept of converting speech to text is not patent eligible?

    I think it’s perfectly clear that “A method of converting speech to text with a computer” is not a patent eligible claim. It could also fail under all the other patent statutes. What’s your point exactly?

    If MM were the first one to developed a method or process for an electronic device to perform the otherwise unpatenable process of receiving sound signals and convert them to written text, is it clear to you that he should not receive a patent for this?

    What’s “this”? The concept of using a computer to process information, where the information is sound information and the output is written text information? Nobody should get a patent on that concept. Now, if you claim the specific machine in detail, with all its necessary structural features recited, you might have something worthy of patent. And people can immediately start competing to provide improved copyright-protected code for your wonderful machine.

  3. all seems pretty abstract and functionally claimed to me…

    Right. You and TB make a great team. Got no argument? Just keep repeating the same nonsense. “Hooked picking teeth” and chemical formulas … why, those are no more structural than “determining the availability of real estate”! See how easy it is to say that? If it’s so easy to say, then it must be compelling and accurate. Also, keep the government out of my Medicare.

  4. if MM is the first to do it by any way, then he is entitled to the broad claim of a computer processor configured to receive speech and to convert the received speech to text.

    Every new computer-implemented method is a pioneering method!

    Les never fails to disappoint.

  5. Re Ben Klemens:

    He has argued in a book (entitled Math You Can’t Use and a law review article that intangibles such as computer code and mathematics should not be patentable subject matter.

    Klemens was previously the executive director of End Software Patents, an advocacy group that has lobbied to eliminating software patents and has organized around the Bilski v. Kappos case that was decided by the Supreme Court in 2010. He is a featured expert in the documentary “Patent Absurdity: how software patents broke the system “. His writings on the subject have appeared in the op-ed sections of The Wall Street Journal, the San Francisco Chronicle, The Washington Post, and other major outlets. He has occasionally commented on broader issues of technology policy and patent law.

    Oddly enough, I can’t find any evidence that the worshippers of objectivity and fairness over at the Church of Patent Apology ever bothered to interview Ben Klemens to see what he thinks. Odd. Instead Gene chooses to interview deep-thinking “experts” like … Ray Niro. LOL.

  6. I’m going to be honest NWPA, I see this as a rather minor part of the whole analysis. You seem to be indicating that the reason you think it is super important is because you care about info processing patents. I don’t and most courts don’t either. Saving them is not on my list of “things to do today” as it is for you every single day of your life. It isn’t on most other people’s list either. And that is why the supremes wouldn’t care and it wouldn’t be important to them.

    Yes. And the lack of interest in saving software patents turns into downright disgust with them as more and more “ordinary” people get accused of infringing patents because they are “doing stuff” with old, ubiquitous computing devices.

    Throwing some techy mumbo jumbo at ordinary people and calling them “ignorant” for not understanding you is probably the worst way to make your case.

    So please, please, please keep doing that, NWPA! I’m really not worried about any of your team changing their ways in the least way. You’ve all dug yourself in way too deep. That’s just part of the reason watching y’all try to argue that the prior isn’t “enabled” is hilarious and fun.

  7. all seems pretty abstract and functionally claimed to me

    Yeah, if you say so, Les. Just so you know, it’s this kind of argument that sets back the “pro-” software-patent cause. If you really can’t see a meaningful difference between the mechanical limitations in the cotton gin claim and something like “a computer processor configured to convert voice to text,” then there’s not much point, is there?

  8. so ‘well-reasoned’ that the very first time Malcolm (finally) steps up to the plate and substantively attempts to square the decision with the precedent (and unchanged) decision most on point, he tosses his ‘pet theory’ into a bonfire of his own making.

    Right, just like you pushed your stepdad into a bonfire when you saw him touching your mom on that camping trip. That’s one of the things your shrink told you to discuss with him at your next court-mandated session.

    Fun game, Tr0 llb0y. You want to start another round?

  9. ” unless we are going to say that ALL information processing methods are to ineligible.”

    OK? Okay!

    “In other words, this distinction that judge Lourie makes between the complicated information processing that can’t be done by paper and pencil and ones that can be done by paper and pencil is a false distinction.”

    On that you and I are substantially agreed.

    “Now, don’t you think that this is a good illustration of how understanding the technology is important.”

    I’m going to be honest NWPA, I see this as a rather minor part of the whole analysis. You seem to be indicating that the reason you think it is super important is because you care about info processing patents. I don’t and most courts don’t either. Saving them is not on my list of “things to do today” as it is for you every single day of your life. It isn’t on most other people’s list either. And that is why the supremes wouldn’t care and it wouldn’t be important to them.

    And so no, I don’t think this illustrates very well why this it is important to understand the “technology” at issue. You base it’s importance on the saving of information processing patents, but that in and of itself has not been demonstrated to be important.

    Lourie is at least trying to give you a lifeline, for a little while.
    I do see why you’re so worked up about it though, since it will obviously lead to the destruction of patenting in the entire art if one person should bring such up in a later case. But if I were you that is something I’d want to sweep under the rug and I’d throw my lot in with Lourie to try to save some small sliver of patenting in info processing if I was you.

  10. 1. In a cotton harvester, the combination

    – with a machine-frame constructed with a cen

    tral longitudinal passage, of swinging two

    -cylinder-frames mounted in the machine

    ï frame on opposite sides of .the said passage,

    and devices for adjusting the frames-to in

    crease or decrease the amount of separation

    g between them,picking cylinders journaled’in

    Ã the frames and provided with hooked picking

    l teeth, means for‘driving the said cylinders,

    i two vertical screens respectively secured to

    j the swinging frames so as >to stand between

    l the cylinders and the said passage, and each

    consisting of a series of guards spaced to per

    mit the teeth to pick between them, and each

    guard constructed at or about the point where

    the cylinder with which it co-operates stops

    « picking, with aftangential lifting portion ar

    s ranged to deflect the trash screened from the

    ‘ lint outward into the said passage; strippers

    ` located on opposite sides ofthe cylinders from

    ïthe‘screens, for stripping the lint from’the

    1 picking teeth, devices for collecting the lint

    ‘ thus picked, and means independent of the

    >cylinders and strippers for imparting lateral

    movement to the plants to bring their bolls

    into the range of the picking teeth, substan

    ‘ tially as described.

    hmmm devices for adjusting, picking cylinders, means for‘driving the said cylinders, devices for collecting the lint, means … for imparting lateral
    movement … all seems pretty abstract and functionally claimed to me…

  11. However, if MM is the first to do it by any way, then he is entitled to the broad claim of a computer processor configured to receive speech and to convert the received speech to text.

    O’Reilly? Morse the pity, then.

    The prior art is the basis by which that claim should be judged.

    You’re thinking of design “patents”. Or perhaps omnibus claims?

    The specification is also a basis by which the claim is judged. Likewise, the “judicially created nonsense” in the patent law.

    Hey, anybody else remember when obviousness was judicially created nonsense?

  12. I agree that the specification has to describe at least a specific way to convert speech to text.

    However, if MM is the first to do it by any way, then he is entitled to the broad claim of a computer processor configured to receive speech and to convert the received speech to text.

    The prior art is the basis by which that claim should be judged. Not some judicially created nonsense about mental steps or abstract ideas.

  13. 6, if every information processing method can be performed by paper and pencil then that means that the paper and pencil test has to go unless we are going to say that ALL information processing methods are to ineligible.

    In other words, this distinction that judge Lourie makes between the complicated information processing that can’t be done by paper and pencil and ones that can be done by paper and pencil is a false distinction. Ridiculous actually.

    Now, don’t you think that this is a good illustration of how understanding the technology is important.

  14. C’mon, Les, is that really your best argument? If Eli Whitney tried to patent his cotton gin today by simply claiming “a mechanical thing configured to pick seeds out of cotton,” do you think he would succeed?

    Your speech-to-text conversion example is a great illustration of what we’re really talking about (or should be talking about). A claim that says “a computer processor configured to receive speech and to convert the received speech to text” is nothing more than adding a computer to an unpatentable concept, and is not patent eligible. On the other hand, if you include limitations that describe specific ways to digitize the speech, format and subdivide the digitized speech, and perform a pattern-matching algorithm to select the text, then the claim probably is. If claimed as a method, that claim is not “arguably” comprised solely of mental steps.

    Leaving Ben Klemens’ opinion aside (I never heard of him – is he on the Federal Circuit?), the Church-Turing thesis has nothing to do with anything. So what if some thesis says that any voice-to-text algorithm could theoretically be performed on a piece of paper? You can’t digitize voice with a pencil and a piece of paper, and I defy you to carry out the actual mathematical operations in a digital voice-to-text algorithm in anything remotely resembling real time.

    Nothing that the so-called “anti’s” on the Federal Circuit have said suggests otherwise. You folks really ought to relax.

  15. ” if you had the right tools, you would be able to determine how the circuits in the processors of the respective computers were different because of the software stored within the hard drive/memory of the computer, which you could also detect (if you had the right tools).”

    Is that technically accurate???

  16. “Under 103, you cannot get a patent for automating a known manual process.”

    Even if the automation was non-obvious???

  17. Um ok? So now NWPA wants it addressed in every publication relating tangetially to the subject? I’m not really seeing what the relevance of this being his argument has to do with NWPA all the time bringing it up. It still doesn’t make sense to me why he would want it brought up since it appears to decimate patenting in his art, not help it.

  18. Converting speech to text is not new. Secretaries used to do it in the 1940’s. Arguably, a method for doing it is comprised of solely of mental steps, with the actual typing being insignificant post solution activity.

    Do you think it is not actually clear that adding a computer to the otherwise unpatentable concept of converting speech to text is not patent eligible?

    If MM, after being inspired by watching Gary Seven talk to his type writer and have it type everything he said, were the first one to developed a method or process for an electronic device to perform the otherwise unpatenable process of receiving sound signals and convert them to written text, is it clear to you that he should not receive a patent for this? Are his efforts in advancing the useful arts not precisely the sort of the the founding Fathers and the Congress endeavored to promote when they established Patent rights?

  19. “It may make you cool around people who pretend to be smart, but it’s really not doing much for you around patent professionals.”

    Not all “patent professionals” are sticks in the mud like yourself.

  20. “That means Bilski controls how Benson is cabined by Diehr.”

    Only if you’re dreaming. The “precedent” it left untouched was that which they specifically laid out for you anon, not some “cabined” version. Be honest anon, if anyone knows what precedent has been left untouched it would be the supremes right? They literally wrote down what precedent they were leaving untouched.

  21. Reading the bio of the author and professor probably explains this “article.” He is basically a litigator. Not a scholar. He makes more money from his litigation related activities then teaching. So, another one of these non-scholars that was hired in a scholarship role, but uses the role to further its reputation without regard to scholarly standards in an atmosphere of no constraints for the 1 percent.

  22. “Any tim eyou two want to try to be just a little intellectually honest, feel free to join the grownups.”

    Ahhhh, because considering “conceptual” things as being “real things” as in “conceptual changes” are “real changes” is the “intellectually honest” thing to do, as a grown up.

    It’s eyeroll central up in here today anon.

    /eyeroll

  23. Ahhh, so telling anon et al. a base fact, like the fact that the circuits don’t actually change, at all, what so ever, is being “pedantic”. So much pendanticism. Because, “conceptually” they change.

    /eyeroll

  24. “The Grand Hall experiment: you are still running”

    Just to remind you anon, most of us normal people don’t really remember “the grand hall” “experiment” or what exciting wordplay happened therein. We’re not quite as obsessed with it as you are.

  25. “And you have not returned to the beatdown that I gave you on the software thread.”

    Oh I didn’t realize you had posted something else of substance. I saw your initial retort to LB’s “that’s gotta hurt” or whatever post but then I didn’t check back for anything of substance. I’ll try to remember to get around to it. That thread is too large man.

    “You still fail the Grand Hall experiment. ”

    How exactly does a person “fail” an “experiment”? I know you’ve been asserting this for years, and so your psuedo-English must make sense, to you, even though it doesn’t make any sense to anyone else. Clue us in on just how it is that a person can “fail” an “experiment”.

  26. Dennis –
    The cotton gin just add mechanical limitations (crank, comb, bin, funnel or shoot) to an otherwise unpatentable concept (picking seeds out of cotton).

    What is special about computers that using them to do things they haven’t been used to do before should not be patent eligible?

  27. LOL right back at you 6 – Prometheus stated that it left precedent untouched. That means Bilski controls how Benson is cabined by Diehr.

    Too bad, so sad.

    But hey, you can join Malcolm in a squaring the precedent attempt if you want to. He is nursing his burnt fingers after his last (and first and only) attempt.

    LOL – but that’s right, you don’t do this law thing, do you?

    (btw, you are still dead wrong in thinking you know who I am – but it’s kind of entertaining watching you post constantly in error – other than your usual error of law)

  28. Maybe if you ever kept your promise 6, we all would see how your ‘abstract’ theory handles this (and what a lovely piece of ash it can become).

  29. It’s the Ned and 6 pedantic show.

    Any tim eyou two want to try to be just a little intellectually honest, feel free to join the grownups.

  30. You are still being obtuse Ned.

    Without the software you cannot do what you can do with the software. Your strawman of ‘calculating’ is not appropriate, as that term – in and of itself – is not a claim.

    The Grand Hall experiment: you are still running.

  31. Your eyeroll is still sadly misplaced 6. You still fail the Grand Hall experiment. And you have not returned to the beatdown that I gave you on the software thread.

    Seems to be a habit of yours.

    The Star Trek Replicator is merely using the various elements and molecules in my single prior art vat. LOL

  32. No need to assume Malcolm, your agenda is well known (and well known to be wrong).

    And again with the strawman of purely mental? You’ve beaten that strawman to death.

  33. “activist judges using 101 as a sledge hammer to use against new technologies (e.g., biotech and software) because some people think that these new technologies should be freely shared (i.e., not patented).”

    I agree

  34. “Sorry 6, Benson is not the law.

    Leastwise, Benson uncabined by Diehr.”

    lolololol, the old “cabined” nonsense. I wonder why they continue to cite Benson, unmodified, and in its entirety, in decision after decision after decision, and will continue to do so forever? lolololol. It could be, and I’m just throwing this out there, that it is the law, and your interpretation of them was off by a tad. I’m not even sure how you could still be suffering under the Diehrbot mindset after Prometheus. It was quite clear what they were doing. Dissecting, applying Benson.

    Here’s you a quote of them reiterating what happened in Benson approvingly:

    Finally, in Benson the Court considered the patentabil­ity of a mathematical process for converting binary-coded decimal numerals into pure binary numbers on a general purpose digital computer. The claims “purported to cover any use of the claimed method in a general-purpose digital
    computer of any type.” 409 U. S., at 64, 65. The Court recognized that “‘a novel and useful structure created with the aid of knowledge of scientific truth’” might be patent­able. Id., at 67 (quoting Mackay Radio, 306 U. S., at 94).
    But it held that simply implementing a mathematical
    principle on a physical machine, namely a computer, was not a patentable application of that principle. For the mathematical formula had “no substantial practical appli­cation except in connection with a digital computer.”
    Benson, supra, at 71. Hence the claim (like the claims before us) was overly broad; it did not differ significantly from a claim that just said “apply the algorithm.”

    How on earth you can still think that there is a super secrit “modification” or “cabining” that was performed when they go all out and cite the whole thing approvingly is quite beyond me. It truly is a wonder to see the creationist like invincible “I’ll just make something up and pretend nothing ever touches it” mindset you have. You know though anon, since you’re an amateur and you don’t really rub elbows with many in the IP community you probably haven’t heard or seen much about the former Diehrbots reaction to recent cases irl. They’re flumoxed and perplexed that they could have been so wrong. But of course, nobody got on PO to inform anon about how wrong they all were, so you just go being a true believer I guess, simply having been left behind by your own herd.

    You really should try to get a job in IP if you’re that interested in this stuff.

  35. most important and well-reasoned

    LOL – so ‘well-reasoned’ that the very first time Malcolm (finally) steps up to the plate and substantively attempts to square the decision with the precedent (and unchanged) decision most on point, he tosses his ‘pet theory’ into a bonfire of his own making.

    And even giving him every opportunity to rescue his pet theory with that great ‘command’ of English as a first langauge, all he could do was:
    Run.
    Away.

    And that is clearly understood.

  36. Any additional irrelevant comments

    LOL, Malcolm it is hardly irrelevant when you go about conflating them.

    Keep your cookie – there’s no telling where that thing has been.

  37. Sorry 6, Benson is not the law.

    Leastwise, Benson uncabined by Diehr.

    See Bilski, page 8, wasn’t it?

    You also might try to understand that dicta is not law.

  38. “Judge Lourie’s opinion (joined by Judges Dyk, Prost, Reyna and Wallach) took a “strong view” of § 101’s subject matter patent eligibility requirement. Consequently, these five judges would have found that all of Alice’s claims were ineligible for patenting. Judge Rader (joined by and Judges Linn, Moore and O’Malley) took a relatively “weak view” of § 101’s eligibility requirement. But Judges Rader and Moore applied this methodology differently than Judges Linn and O’Malley. Rader and Moore argued that the method and media claims were not patent eligible, but the system claims were.”

    So, you characterize asserting that method claims are not patent eligible as taking a “strong view” of 101? Since 101 says method claims ARE patent eligible, I find your logic alarming.

  39. “But, every information processing method (every) that can possible be used or discovered under Church-Turing can be done with a pencil and paper. That includes the Google program that drives a car and the methods that Lourie’s brain uses to write opinions.”

    Oh, I see. So, under the application of church-turing, all info processing methods are invalid, because they can be done with pencil and paper, end of story?

    Sounds good to me brother! You’ll get no argument from me. I thought you meant that church-turing would come down on the patent eligible side.

    I really don’t understand why you keep bringing it up though since you want them to be eligible.

  40. Eligibility and patentability are different concepts

    Gee, you’re so smart. Want a cookie? Any additional irrelevant comments? Maybe some more insults? Want to accuse me again of being racist?

    Meanwhile, my response to the false statement made by “opinion” stands: 103 certainly lets you throw out a lot of babies in spite of some express language in the statute that appears to instruct against doing so

  41. It actually isn’t, due to one simple admission by Benson. Maybe one day you’ll understand why Ned. I’ll be busy not holding my breath for you to figure this whole 101 thing out.

  42. Under 103, you cannot get a patent for automating a known manual process.

    Just out of curiosity: can you tell us the reason why this is true? Or is it just arbitrary? Automating is progress, isn’t it?

    Also: can I get a patent for automating an ineligible mental process? If so, why? What’s the policy distinction between this situation and the above situation?

  43. “This is why if those claims were presented before the USPTO today, many of them would pass muster under 35 USC 101 without even a second thought.”

    But since Benson is the law, then you must surely recognize how screwed up the application of the law is at the PTO currently if, as you surmise, those claims would pass muster under the PTO’s standard without even a second thought.

  44. “Functions differently? How? Both computer do the same thing, calculate. ”

    Oh but they’re “conceptually different” or “conceptually functionally different” or something lololololol. All you need is the right tools! Lol. Of course, those “tools” have yet to be invented or are “conceptual”.

  45. “LOL, it’s the concept, 6″

    Ahhh, so, are the “appropriate tools” “conceptual” tools to show this “conceptual difference”? LOL. Bring your tools and your “concepts”, I could give a da m less and so could the supremes.

  46. if you read the opinions it is apparent the SCOTUS doesn’t understand the difference b/w 101, 102 and 103

    They clearly understood the difference in Prometheus which is by far the most important and well-reasoned of all the recent 101 cases.

  47. “Programming and using are two very different activities.”

    Because configuring a computer isn’t using it, and because using a computer doesn’t entail configuring it. /eyeroll.

  48. “And just as you failed in the Grand Hall experiment, you cannot add invention to the computer.”

    I know you assert that. That “point” has been made. I do not subscribe to your school of thought on the matter. I know that’s hard for you to accept and understand but that’s just how it is bro.

  49. The original patent act had little or no requirements to be “eligible” so long as you met one of the broad categories (apparatus, method, manufacture, etc..) you were IN. Nowadays the jurisprudence starts from the opposite spectrum and tries to argue that you are OUT.

    Has anything else changed in the time since the “original patent act”?

    technology evolves rather rapidly and erecting artificial constraints just decreases innovation

    What determines whether a “constraint” is “artificial” in this context? Why is 101 any more “artificial” than 103?

  50. “And by-the-by, is that an admission of what controlling law is in your post at 11:12, admitting that for your view to ascend that Alappat would have to be overthrown?”

    No, unfortunately not. I wish it were so. My biggest let down about this decision is that it is a case that might go up, the claim get obliterated, but without Alappat being rectified in this case. That would allow some computer implemented gar bage to live on, in badly mangled form, for another day. I wish this case did necessarily involve Alappat, and I hope that Alice argues that it does front and center. But unfortunately I think they’ll just try to skirt that issue and so will the other side. Hopefully amici will bring it up.

    If I could have this case turn out perfectly then it would be like Bilski, this Alice’s claims di e under preemption, and Alappat d ies like State Street and ATT did in Bilski, it just gets backhanded as an afterthought. But they may leave the backhand out since it might be hard to work it in to the actual holding in this straight forward preemption case.

  51. You want a tool to throw the baby out with the bathwater and 103 doesn’t let you do that.

    In fact, in spite of the express wording to the contrary in the statute (wording that is absent from 101, btw), 103 does let you throw out vast numbers of “babies” reciting ineligible subject matter that would otherwise be patentable. Or at least that’s the way 103 has been interpreted by the judiciary … more specifically, only by the judiciary in the lower courts.

  52. It isn’t worth his having a heart attack over. You know how worked up he gets. Anon be clear, he’s old. And rich enough to live out the rest of his life just fine, and he can work in another area of patent law just fine if he wishes.

  53. “You really don’t get it that the Supremes have violated their own warning about treating 101 as a nose of wax, do you?”

    I get why you think that they have. I also get why tons and tons of sht that should have been 101’d got allowed and why the federal circuit messed up.

  54. “Banking on what Malcolm postulates?”

    I’m not banking on anything except a 9-0 beatdown of Alice’s claims if the supremes pick the case up. Maybe they’ll just GVR with instructions to “do it right, follow the main opinion from the en banc panel”.

    “Are you saying that machines think?”

    No, I didn’t say that. What I said was very clear.

  55. Douglas did not confuse broad with abstract.  One hallmark of abstract is that it is not limited to either to any uses, or to just nominal uses.

     
    Sent from Windows Mail
     

  56.  

    Functions differently?  How?  Both computer do the same thing, calculate. 
     
    Hook the computer to a sound card, play music or the like, and the two computers might be doing something different.
     

  57. For example, is a new type of battery unpatentable just because it could be used in a wide variety of different devices?

    A properly claimed new, non-obvious and useful battery composition bears no resemblance to the information processing method claimed in Benson.

  58. the Google program that drives a car

    Did Google try to patent the concept of a robot car that drives to its destination by taking into account information that everybody knows is useful for navigation?

    It wouldn’t surprise me. If they actually tried this, I’d love to see that j*nk claim.

    every information processing method (every) that can possible be used or discovered under Church-Turing can be done with a pencil and paper

    And you think this is a compelling argument for patenting conceptually claimed computer-implemented methods? Well, okay. Keep pressing it then.

  59. if you had the right tools, you would be able to determine how the circuits in the processors of the respective computers were different because of the software stored within the hard drive/memory of the computer, which you could also detect (if you had the right tools).

    The issue isn’t whether two objects with different functionality are “different”. The issue is whether it is legally sufficient to simply recite the different functionality in the claim, with no indication of the structural distinction between the claimed object and the object in the prior art.

    As discussed elsewhere, this creates at least an indefiniteness issue in the context of B-claims since the recited “functionality” of the “readable media” depends entirely on how a general purpose computer is programmed to interpret the “instructions”.

  60. I suggest you take your head out of where you stuck it and try reading the thread again.

    You must be talking to Dennis. Right?

  61. please tell us how the Church-Turing Thesis is applicable to the oral arguments in Alice.

    Why would I bother? That’s your rubber bone to chew on.

  62. Steam shovels took the place of man digging with his hands – should we get rid of such patents as well?

    Certainly we should get rid of patents on new steam shovels that are distinguished from prior art steam shovels only on the basis of their “new function.”

  63. I think he was saying that what you deem to be the sort of progress is not anywhere to be found.

    Let’s assume that’s true.

    You think there’s no discussions in the Supreme Court or Federal Circuit jurisprudence about the policy behind the prohibition on patenting purely mental processes (e.g., thinking about something or calculating a number)?

    I can check for you if you like. I’m pretty sure there is something in Prometheus, at least.

  64. Do you think this tripe makes you cool? Or just ignorant of legal policy and economics?

    It may make you cool around people who pretend to be smart, but it’s really not doing much for you around patent professionals.

  65. You lost the crowd at “otherwise unpatentable concept”. Under 103, you cannot get a patent for automating a known manual process.

    This “scholarly” article fails in the first paragraph due to the author’s ignorance of patent law. That’s the pushback, and I’m with NWPA on this.

  66. NWPA,

    Someone might want to point out that after the invitation in Bilski from the Supremes to the CAFC, one of the very first opinions reiterated that Alappat was good law.

    Certain people will tend to stay away from substantive discussion of this point (given past proclivities of toasting their agendas and being abject servants of their third party interests and blindly following the other lemmings up the hill).

  67. 6,

    You quite miss the very straight forward point.

    And just as you failed in the Grand Hall experiment, you cannot add invention to the computer. Programming and using are two very different activities.

    Your /eyeroll is sadly misplaced.

  68. LOL – how nice of you to ask someone else to let their rights die, 6.

    And how you cannot let your pathological obsession die when I turned and asked you – providing you with fact, law and reason.

    It’s awfully easy to ask the other side to just give up, isn’t it 6?

    But you might try to be even a little bit persuasive by actually dealing with the points raised (as you deem “declaratory” statements). The more you try to run away from the points, the further you get from the truth and, well, let’s just say that even the mob-appeal starts to ebb (as witness the retreat from the “Troll” mantra now ongoing).

    And by-the-by, is that an admission of what controlling law is in your post at 11:12, admitting that for your view to ascend that Alappat would have to be overthrown?

    LOL, it sure is.

  69. 6,

    Your naivete would be amusing if real rights were not at stake.

    You really don’t get it that the Supremes have violated their own warning about treating 101 as a nose of wax, do you?

  70. Whatever 6? Banking on what Malcolm postulates?

    Are you saying that machines think?

    Yes or no – it’s a simple question.

    (and I notice that you are still errantly thinking that you know who I am – just as I notice that you still have not lived up to your promise).

  71. And to your question of relevance Dennis: The relevance is that the author has shown such a manifest bias and ignorance of patent law and information processing that his paper is worthless.

    (by the way, I am pretty sure that the fed. cir. has a rule that a first panel decision is binding unless overruled by an en banc court. This rule would probably determine the current law at the fed. cir. right now.)

  72. LazardTech discusses these issues of whether or not claim scope was adequately enabled.

    LarardTech is a patent law analysis. Benson is voodoo.

  73. MM, I get that you think that you have a view of the world and you want to go to public policy to decide patent eligibility. I do not agree with your characterization of the world.

    And, read below to see one example of how the Church-Turing Thesis actually DOES affect arguments for patent eligibility. Please now respond to that. I am going to have to do what anon does and insist that you respond and stop saying the same things over and over again and not responding to arguments that refute your nonsense.

  74. 6, I do tell you how the Church-Turing thesis would change the jurisprudence.

    For example, during the Alice arguments we heard the old one that if you can do it with a pencil and paper it should not be patent eligible.

    But, every information processing method (every) that can possible be used or discovered under Church-Turing can be done with a pencil and paper. That includes the Google program that drives a car and the methods that Lourie’s brain uses to write opinions.

    I have told this to you many times.

    MM: you are a silly troll. Ned you are a silly troll. LB you are a silly troll.

  75. Let’s see under Benson, each time I write a computer program I create a new natural law. Maybe I will create a few more natural laws before bed.

  76. Benson was an attempt at execution and penned by R. Stern at the DOJ. The PTO said they couldn’t handle information processing and asked the DOJ to pen a hatchet job.

    The underlying public policy by which Benson depends is no longer applicable.

  77. I’m with NWPA on this one – the question of whether the “method” is “tied” to a machine is and should be irrelevant to “eligibility”

    there should be few if any barriers to “eligibility,” after all, technology evolves rather rapidly and erecting artificial constraints just decreases innovation

    101 has become a gatekeeper for lazy jurisprudence and a lazy PTO who just plays it at any opportunity to avoid looking at some idea harder on the merits…. if you read the opinions it is apparent the SCOTUS doesn’t understand the difference b/w 101, 102 and 103 – their opinions are laced – infected I would say – with dripping sarcasm like “HOW COULD SOMETHING LIKE THIS BE ELIGIBLE FOR A PATENT” when what they really mean is that they’ve passed judgement on the MERITs and don’t think it should issue in light of the prior art. This is what one calls, a result-oriented analysis.

    These are two very different questions, but we are stuck with an incompetent bunch. The original patent act had little or no requirements to be “eligible” so long as you met one of the broad categories (apparatus, method, manufacture, etc..) you were IN. Nowadays the jurisprudence starts from the opposite spectrum and tries to argue that you are OUT.

  78. “Can this author answer the points that anon just made? No. And, that is why the author is not a scholar and does not deserve the respect of a scholar.”

    So apparently if a man cannot “answer” declaratory statements (points) made by anon then he isn’t a scholar.

    Come on NWPA, I know you get all worked up man, but just chill out. Let your baby, software patenting, just die peacefully, there’s no need for you to have a heart attack and die over it passing.

  79. “You kind of ignored the word choices above – as well as the published writing of the anti-patent crowd which include the battle over how questions are presented. ”

    Anon, how the “question is presented” regarding the exceptions to patent eligibility was laid out a long time ago by the supremes, there is no need to go fiddling with it now. The question is: is the claim an attempt to patent an abstract idea, natural phen, or law of nature? The question is a yes/no question and quite simple usually. There also aren’t really any other ways to ask the question.

  80. “on ignoring important concepts like the ladders of abstraction.”

    Which are totally important because, wait for it, anon, an unemployed amateur patent commentator says so. As MM may have noted above about the church-turing thesis, nobody cares. What they care about is getting sued or threatened because they happened to use a computer for something, by, dum dum dah, programming it to do their will/think/do math/whatever you want to refer to it as.

  81. “The Church-Turing Thesis has nothing at all to do with determining whether patents should be granted on, e.g., a “computerized” method of shoving an ad in a person’s face, claimed at approximately that level of generality.”

    I’ve asked him like a million times what it has to do with anything, but he always just ignores the question. And he does this even though I’m always rather legitimately interested to hear why he’s always bringing it up. I presume that he trails off because he presumes that the explanation should be so obvious that he can’t even explain it, it’s like an axiom, “church-turing, thus patent eligibility”. Though obviously this makes no sense. I’m thus led to believe that the reason that the Church-Turing thesis is important is because it helps to establish the world-view from which he will then approach the remaining questions. Obviously whether every effectively calculable function is a computable function or not has nothing to do with anything in patent lawl. All that it actually is boils down to an intro to his world-view where functions are structure and algorithms likewise have structure and many things are “equivalent” and therefore they should be treated the same etc. etc. on down the line.

  82. Hey NWPA, when the supremes cite this “scholarly opinion” of a weak vs. a strong 101 in their Alice decision in a year or two this is what I’m going to be watching as I read it.

    link to vimeo.com

    and I’m going to have this song on repeat while I scroll through the no doubt short opinion:

    link to youtube.com

    And then in a couple of years after that when they return to really drive the last nails through the casket of computer implemented functional crp by getting rid of Alappat I’m going to watch it all over again. And lol all over again, and again, and again. I’m going to especially laugh as the supremes chastise the CAFC for making sht up and pretending that it bears any resemblance to reality.

    :)
    :)
    :)
    :)
    :)
    :)

    I want to make sure though that you have a plan in place to prevent any suicidal thoughts you might have from manifesting. So please ensure that a family member who is larger than you is close by and all knives and firearms are safely secured away from you when you read it.

  83. Someone needs remedial classes

    LOL, it’s the concept, 6 – Try reading Alappat. Let me know if you need someone to hold your hand (I won’t do it, but maybe someone will).

  84. “using a computer and configuring a computer with software,”

    Because configuring a computer isn’t using it, and because using a computer doesn’t entail configuring it. /eyeroll.

  85. “Moreover, if you had the right tools, you would be able to determine how the circuits in the processors of the respective computers were different”

    You really think that the “circuits” change in a modern general purpose computer while it is in use/”programmed”? Lol. Someone needs remedial classes. I have a computer here on my desk, why don’t you come and bring your “appropriate tools” and show me one “circuit” that is different from the same model computer without programming. I will be busy not holding my breath.

  86. “However, you (and your ilk) want to use 101 exceptions because it captures much more than the “easy” example you provided.”

    *Licks fingers* Delicious.

  87. Awty,

    Nice summary of the Grand Hall Experiment.

    Ned is already aware of that experiment – as much as he tries to run away from it.

    ANd your ‘right tools’ comment nicely reflects the holding in Alappat – another piece of law that Ned is less than forthright about.

  88. You seem to be regularly struggling with language here Malcolm. Maybe you put too much tinfoil in that helmet of yours…

  89. You (just like Leopold) rather missed some of the nuances.

    I suggest you take your head out of where you stuck it and try reading the thread again.

  90. Truth is always a classic, Malcolm.

    Wait, you wouldn’t know that, as you believe so much in your spin you cannot recognize truth.

    Just [shrug] and stand-by.

  91. LOL – because machines really do think, right Malcolm?

    Hmm, come to think of it, you have not used that great ‘ability’ of yours to actually differentiate machines from the mental steps doctrine (although you blandly quipped that such was not your argument – you did not present an argument).

    Steam shovels took the place of man digging with his hands – should we get rid of such patents as well?

    ANTRHOPOMORPHICATION

    Deal with it – a machine does NOT think. A machine is an explicit patent eligible category. That, and ANY improvement.

    As they say, svcks to be you.

  92. So what?

    What kind of question is that? That’s almost as asinine as Malcolm’s “So?” question when it was pointed out to him that the AIA has brought us more expensive, slower, and more uncertain patents at greater cost (hence, the value of patents – ALL patents – took a royal hit).

    Oh that’s right, you are Malcolm’s chief cheerleader. Thus the similarity.

    Well, let me point out to you Leopold one drawback of the “So what?”: when you have ignorance reigning – as you would with a “so what?,” you then can more easily turn to obfuscation and spin in order to advance an agenda that would shrivel if reason and light were shown upon it.

    But you already knew that, didn’t you?

  93. I think he was saying that what you deem to be the sort of progress is not anywhere to be found.

    Sort of like the majority in Bilski that shut down the anti-business method Stevens.

    Sort of like that.

    I remember that – you went into hibernation for awhile, didn’t you?

  94. the more relevant question whether a claim to the calculation of E as the product of m and the speed of light is patentable if the claim specifies that it is performed by a computer
    No … see 35 USC 103.

    However, you (and your ilk) want to use 101 exceptions because it captures much more than the “easy” example you provided. You want a tool to throw the baby out with the bathwater and 103 doesn’t let you do that. However, 101 exceptions allow whole classes of inventions that certain interest groups do not like to be rid of.

    The judicial exceptions to 101 is simply a favored tool of anti-patent activists to get around the very broad language of 101.

  95. You conflate using a computer with a new computer

    You really believe that? I have two otherwise identical computers. One is loaded with gigabytes worth of software. The other computer, however, has no software whatsoever. As a result, one computer functions very differently than the other computer. Moreover, if you had the right tools, you would be able to determine how the circuits in the processors of the respective computers were different because of the software stored within the hard drive/memory of the computer, which you could also detect (if you had the right tools).

    Your arguments don’t even pass the sniff test — not even close.

  96. >you don’t get to use that in your arguments because forever and a day you have run away from my calls for you to ground that argument validly in law – I have addressed the equivalence of software to firmware to hardware repeatedly – that point belongs to me – so not only are you wrong about me ‘going there’ – I have gone there and I have conquered there

    ROTFMLAO

  97. Why this is even a close case nearly 40years after Benson is a wonder.

    Why? We’ve gone over this time and time again. Benson was a TERRIBLE decision.

    The case mentions the world “abstract” three times. The first two are here:
    “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.” Le Roy v. Tatham, 14 How. 156, 175. Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.
    These citations were the underlying basis for the decision. However, what is described here is not comparable to what was claimed within Benson. There was no “fundamental truth” being claimed or basic tools of scientific and technological work.

    The third mention of “abstract” is here:
    Here the “process” claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion. The end use may (1) vary from the operation of a train to verification of drivers’ licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus.

    Douglas erred by confusing “broad” for “abstract.” If you replace “abstract” with “broad,” you would get a statement that was more internally consistent (but still wrong). Douglas was saying that the claim was so broad that it covered things that weren’t even discussed (i.e., “future-devised machinery”) or varied substantially.

    A claim shouldn’t be deemed “abstract” simply because the technology has a wide variety of uses. For example, is a new type of battery unpatentable just because it could be used in a wide variety of different devices? Moreover, even if Douglas thought that the full scope of the claims was not enabled, 101 was not the section to use.

    The statement by Douglas that the claims covered “without any apparatus” is simply wrong. At least one of the method claims referred to a shift register, which is a feature of a computing apparatus. That Douglas didn’t understand this is not surprising since it is a high-level concept that would many today would not appreciate. Douglas simply didn’t understand the facts and used the wrong section of 35 USC to apply against his perceived wrong of the claims (i.e., they were overly broad).

    Then again, Douglas was known for not letting the law get in the way of what he believed the end result should be.

    You continually hold up Benson as some beacon of enlightenment. However, Douglas was both wrong on the facts and on the law. This is why if those claims were presented before the USPTO today, many of them would pass muster under 35 USC 101 without even a second thought.

  98. Attacks from the Right and from the Left.

    But not from The Center? I wonder why. It must be because only the reasonable people are in The Center.

    Right?

  99. it is nowhere to be found in 101 or the jurisprudence.

    Huh? Neither the Federal Circuit or the Supreme Court has discussed the role of patents in promoting progress in their jurisprudence?

    Is that what you’re suggesting? That’s what you seem to be suggesting. If so, you’re certainly wrong.

    Maybe you meant to say something else, “Try Again.”

  100. these “academics” that post on here are the equivalent of right wing nuts. They are not interested in applying the law nor in understanding the science behind information processing.

    And you know this because … why? Because some of them reach different conclusions than you do?

    Imagine, a professor at law school writing an article on information processing and not taking the time to understand the Church-Turing Thesis. It illustrates a wanton disregard for objectivity

    The Church-Turing Thesis has nothing at all to do with determining whether patents should be granted on, e.g., a “computerized” method of shoving an ad in a person’s face, claimed at approximately that level of generality.

    And accusing people who agree with me on that point as being “ignorant” or “the equivalent of right wing nuts” is not the kind of response that is going to get you anywhere, in any court. In fact, what it tends to do (and I’ve tried to explain this to your li’l buddy as well) is make you look like a hardc0re wa nker. Kinda like a (wait for it) rightwing nut, in fact.

    Ask yourself this: how much “progress” has the extreme right wing made with effecting various agenda items over the past, say, 20 years by ritually and reflexively trashing academics who disagree with their policies?

    Patent policy is public policy. You need to appeal to the public with reasonable arguments and evidence and prove to everyone that More Patents Is More Better. Nobody cares about the “Church Turing Thesis”. Everybody cares about being threatened with a lawsuit because, e.g., they programmed their computer to do something or because they used their printer in a manner that is covered by some j*nk patent. Get it?

  101. That being said, there is a difference between an abstract idea and an application of an abstract idea. Would a patent to a nuclear reactor be unpatentable because it is an application of E=MC^2?

    Of course not. But isn’t the more relevant question whether a claim to the calculation of E as the product of m and the speed of light is patentable if the claim specifies that it is performed by a computer? I think the answer is clearer than Professor Chao suggests.

  102. Currently, it’s unclear whether adding computer limitations to an otherwise unpatentable concept somehow renders the concept patent eligible
    I can read this two ways — it is a statement about (i) the writer’s belief or (ii) the current state of the law at the Federal Circuit. I read it the second way.

    That being said, there is a difference between an abstract idea and an application of an abstract idea. Would a patent to a nuclear reactor be unpatentable because it is an application of E=MC^2?

    Exceptions to 101 should be read narrowly — particularly given how broadly 101 is written. However, what we see today is activist judges using 101 as a sledge hammer to use against new technologies (e.g., biotech and software) because some people think that these new technologies should be freely shared (i.e., not patented).

    Like many (most?) judges, they divine the outcome first and then craft (manipulate) the law to reach their desired outcome. I’ve seen this at the PTAB and Federal Circuit far too many times.

    This is why many judges (I’m looking at you SCOTUS) don’t like “bright line tests” because it doesn’t afford them the wiggle room to get the end result they want (regardless of the facts). A bright line test takes the ability to “judge” out of their hands.

    However, as a practitioner, I want a bright line test. Just tell me what is OK and what is not. My clients aren’t looking to claim “unpatentable subject matter.” We just want GOOD claims.

  103. NWPA has his blue-sky-falling moments – but education and ignorance are fair game if you are intent on ignoring important concepts like the ladders of abstraction

    What on earth are you talking about?

  104. This article should not be published in a law journal and certainly not in Berkeley’s.

    Are you going to cancel your subscription?

  105. the ‘logic’ of anti-software patents can just as easily apply to any art field

    Huh? What’s the “logic of anti-software patents”? Please explain.

    Then show us how that “logic” applies to, say, a claim to a novel, non-obvious chemical that recites structural features distinguishing that chemical from chemicals taught in the prior art.

    I’m really curious to see this “logic” and how it’s supposed to work.

  106. To most reasonable people, the fact that the analysis works against the author’s “bias” (if having a particular view is the same as a “bias”) makes the analysis more persuasive, not less. But the critics here don’t think that way. Because the author has identified himself as being on “the wrong team” with respect to the current subject matter issues, it is imperative that he be criticized, even for silly things like not providing a full tutorial on patent law for the causal reader, or for even having an opinion.

    Truly. It’s not like Professor Chao claimed to have written the world’s most “objective” patent textbook. He wrote a blog post discussing a possible way to determine the controlling law following a split decision. He also notes that the law regarding subject matter eligibility is in flux, with different judges expressing different views, and for that he gets tagged as “ignorant”. Nice.

  107. It’s ineligible, in part, because the progress that is promoted by such a method is not deemed to be the sort of progress that is effectively promoted by patents

    Interesting policy statement but it is nowhere to be found in 101 or the jurisprudence.

  108. LOL – the NIMBY’s are in for a shock – as Malcolm already knows that the ‘logic’ of anti-software patents can just as easily apply to any art field (given that patent law is almost completely written without regard to art field).

    Wasn’t his mewling QQ over Myraid proof enough? 30,000+ plus words post decision for something that he ‘didn’t really care about.’

    Or Malcolm, maybe you want to share your choice insults with some of the writers over at PatentDocs as well. You know the ones that believe the patent system is under attack.

  109. Just a guess.

    LOL – sort of like your ‘opinion,’ right Malcolm?

    How deep is the well of ‘implicit?’

    How much can you mash the 101 nose of wax?

  110. even for silly things

    Thanks for proving my point Leopold, that the battle is over even the smallest nuance.

    You kind of ignored the word choices above – as well as the published writing of the anti-patent crowd which include the battle over how questions are presented. Then you spin the pointing out of these things as somehow “imperative to be critized” – implying the opposite, that criticism is unwarranted. Your spin quite misses the mark and “for even having an opinion” has nothing at all to do with the criticism. – Lovely gambit that, as if labeling something ‘opinion’ means that such can not be evaluated critically, because “everyone is allowed to have an opinion.”

    My opinion of you might change if you acted a bit more objectively – you know what I mean (your pom-poms sure are pretty today).

  111. Malcolm,

    Compared to your

      Maybe Tr0 llb0y will go f*k himself again.”
      Or
      “your tr0lling axxh0lery”

    pretty much anything is a reasonable reaction.

    Sure, NWPA has his blue-sky-falling moments – but education and ignorance are fair game if you are intent on ignoring important concepts like the ladders of abstraction. And quite frankly, the concept of ‘agency capture’ can fully apply to academia – look at the big Ivy League members ensnarled in the fiscal meltdown.

    Speaking of which (ladders of abstraction), yet another day has come and gone and Leopold has not provide me with his answers.

    What’s up with that, Leopold?

  112. If I had the time, I would re-write this “article” into an objective article deserving of a law journal.

    This article should not be published in a law journal and certainly not in Berkeley’s. The mere fact that right up front the author does not say this is the application of a judicial exception created by the SCOTUS renders this “article” as biased and untrustworthy.

  113. I am not the one atttempting the conflation between using a computer and configuring a computer with software, Ned.

    It is you.

    Somehow, you gloss over that critical first step of upgrading the computer WITH the software.

    Point blank: you cannot use what is not there. The machine must be made into a new machine FIRST.

    (and lose the ‘automatically’ bit – you don’t get to use that in your arguments because forever and a day you have run away from my calls for you to ground that argument validly in law – I have addressed the equivalence of software to firmware to hardware repeatedly – that point belongs to me – so not only are you wrong about me ‘going there’ – I have gone there and I have conquered there).

  114. Here, the author misrepresents this as a matter of statutory interpretation rather than an application of a judicial exception. Can the author tell us why he did not state this right up front?

    Maybe because the author, like many other reasonable people, believes that the statute is correctly interpreted to include those exceptions.

    Just a guess.

  115. The anti’s are smelling victory and playing it fast and loose with the facts more and more. The money appears to be about 80 percent anti/ 20 percent pro.

    Wow. I’m not sure exactly what you mean by “antis” but if you mean “anti software patent”, this is really encouraging.

    Or are you trying to trap me into complacency? Everyboyd knows that you guys are super devious with your psychological strategies. Soros showed us a lot of secret memos at the last Ivory Socialist Underground meeting. Definitely some forteen dimensional chess going on.

  116. Saying “of course” and continuing to ignore the meaning does not work well for you, Ned.

    Next point: You are aware that much of Benson was meaningless dicta, right?

    Dicta that Judge Rich (rightfully) did not need to pay any attention to, right?

    And much of what you would use to castigate Judge Rich, was in fact simply improper for you to use to so do.

  117. I disagree. But the criticisms are illuminating. The author tells us that he personally thinks that Rader’s opinion is wrong, as a minor part of an essay that provides legal reasons to argue that Rader’s approach to method claims can be understood to be the law of the land, trumping Lourie’s approach. To most reasonable people, the fact that the analysis works against the author’s “bias” (if having a particular view is the same as a “bias”) makes the analysis more persuasive, not less. But the critics here don’t think that way. Because the author has identified himself as being on “the wrong team” with respect to the current subject matter issues, it is imperative that he be criticized, even for silly things like not providing a full tutorial on patent law for the causal reader, or for even having an opinion.

  118. The guest author volunteers his bias, and it is not unreasonable to see reactions against that bias.

    Reactions like “you’re ignorant”? Reactions like “can’t you educate yourself”? “Judges are acting like executioners”?

    Those are “reasonable” reactions to someone stating their opinion about another judge’s opinion in an article that provides support for the view that this judge’s opinion may be the controlling law. Seriously?

    exceptions to law are meant to be strictly read – not widely read. Yet, that traditional view is not only absent, it appears to be denigrated by the author’s given bias.

    A “traditional view” is “denigrated” by someone’s “given bias”? What? Where did the author indicate that he was “biased”?

    The post here is not, and cannot be considered to be, an objective and even handed view at the focus you identify.

    Would it be better if the author had not disclosed his opinion about Rader’s reasoning? Should a person with a view about the underlying issue be precluded from writing about the relevance of Marks to determining the controlling law?

    I don’t get it. You come here and lament the “bias” and defend NWPA who came out of the gate hurling insults. Meanwhile, over at the Church of the Patent Apologist where the impact of CLS was discussed, were you complaining about the “bias” or lack of objectivity? Of course not.

  119. ONE of the principle authors, Ned.

    Again – you seek to diminish something based on your post hoc belief system.

    To that I (again) call B$.

    And I have explained why ‘invention’ was purposefully left out of the 1952 Act – and what this expressly meant as far as the Court’s (then discontinued ability to use common law to define ‘invention’).

    This is not something that is up for debate, Ned. This is what happened.

    Your disdain for Judge Rich is well beyond reason – even pathological.

  120. The fact is too anon that our system of government is so broken that it is far bigger than this blog. This blog is a microcosm of the larger world. Prof. Crouch is decent person, but at the end of the day the problems from the academics that post on here are far larger than he is.

    You can also feel it reading the articles. The anti’s are smelling victory and playing it fast and loose with the facts more and more. The money appears to be about 80 percent anti/ 20 percent pro.

  121. ONE of the principle authors, Ned.

    Again – you seek to diminish something based on your post hoc belief system.

    To that I (again) call B$.

    And I have explained why ‘invention’ was purposefully left out of the 1952 Act – and what this expressly meant as far as the Court’s (then discontinued ability to use common law to define ‘invention’).

    This is not something that is up for debate, Ned. This is what happened.

    Your disdain for Judge Rich is well beyond reason – even pathological.

  122. I think the fair criticism of me is that I saw instantly everything that anon expressed, but I tend to get pretty angry reading this biased nonsense that is presented to me as scholarly work. I watched on youtube Prof. Chomsky answer questions from a right wing nut with such calm and factual responses that it made me want to become more like Prof. Chomsky.

    But, make no mistake that these “academics” that post on here are the equivalent of right wing nuts. They are not interested in applying the law nor in understanding the science behind information processing.

    Imagine, a professor at law school writing an article on information processing and not taking the time to understand the Church-Turing Thesis. It illustrates a wanton disregard for objectivity and manifestly illustrates that the professors do not have to answer to objective criticism.

  123. I definitely agree with that anon. Here, the author misrepresents this as a matter of statutory interpretation rather than an application of a judicial exception. Can the author tell us why he did not state this right up front?

  124. A casual reader who did not know patent law might assume this is a matter of statutory interpretation rather than one of applying a judicial exception.

    So what? I doubt very much that a casual reader who did not know patent law could get past the first paragraph.

  125. Where a claim has a so-called “abstract idea” issue, it should be rejected under Section 103

    How does that work? If the “abstract idea” is a non-obvious one, what does the 103 rejection look like?

  126. anon, you pretend that software has structure when it does not. 
     
    You conflate using a computer with a new computer. 
     
    A programmed computer can be new if it is configured to automatically use the software like firmware.  But you do not go there.

     
     
     

  127. only new element

    You are back peddling your vacuous (and crispy) theory, eh Malcolm?

    You have never discussed how your ‘theory’ handles claims composed of ALL [oldsteps], nor taken into account that legitimate claims can have elements that are thoughts (usually jumping straight to your strawman of claims composed ENTIRELY of thoughts), so your per se [oldsteps]+[newthought] is DOA.

    But you already knew that.

    And you should have – right after you were the first one to post a link to the Office implementation of the Proometheus decision, which (not at all shockingly) did not reference your ‘pet theory’ at all.

    As they say, svcks to be you.

  128. Anyway, Dennis, I would be very interested in your response to what anon and I have had to say. I do think that the law professors are failing us. I think they are living behind a shield where they think they can just say and do almost anything they want without answering to anyone.

  129. Can this author answer the points that anon just made? No.

    Maybe he can. Has he been asked?

    One point that you can take, NWPA, is that Prof. Crouch’s reply to you falls short of recognizing some pretty critical elements of ANY conversation on this topic.

    I have been privy to some of the anti-patent war-room strategies – and they very much include waging a battle for how the questions are presented (and what assumptions can be pushed as ‘givens’). And even though certain individuals will feign ignorance that there even is a battle going on, the patent system is undoubtedly under attack.

  130. No, anon, Frederico was principle author of the ‘52 Act.  His idea was to codify the law of novelty in 103 (where he noted, the courts did not require 100% novelty to invalidate a patent over the prior art.).  This had nothing at all to do with patentable subject matter and you very well know it.
     
    The fact that you try to twist history, and deny reality in this, shows who has the agenda.
     
     

     
     
     

  131. Where a claim has a so-called “abstract idea” issue, it should be rejected under Section 103 or one of the provisions of Section 112, and not under some made-up provision.

    Here is Morse’s claim which the Supreme Court thought was an abstract idea.

    Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer.

    It should have been rejected/invalidated under enablement and/or written description provisions. The Supreme Court did not need to make stuff up. (And what the heck was the Patent Office thinking when it allowed that claim.)

  132. Why this is even a close case nearly 40years after Benson is a wonder

    LOL – we’ve been through this – you rest far too much on the dicta, and you continue to ignore the quote from Benson (reminder: “we do not so hold“.

    new and useful end

    We’ve also been over this: Useful for sure – as software is written to be useful, while “new” can include a new way of achieving an old end (rubber was in fact cured to perfection prior to Diehr).

    You are running amuck with your cannard of ‘just calculating’ as you are ommitting the why’s, the how’s and the wherefor’s

    “to some of us” – completely non-persuasive – we’ve been over this too, and even when the price is tied to something physical or a process that itself is tied to something physical, you are unreasonably unwavering in your pursuit of your agenda.

  133. And, another point is that the author does not as he should have pointed out that the “abstract” notion is a judicial exception.

    A casual reader who did not know patent law might assume this is a matter of statutory interpretation rather than one of applying a judicial exception.

  134. anon, I don’t know exactly what you mean by this. But the Bilski decision is anything but clear. The case of a programmed computer as part of claims like Bilski has not been presented to the Court, and the Federal Circuit is sharply divided.

    Why this is even a close case nearly 40years after Benson is a wonder. The Supreme Court has made it clear that the new and useful end is the sine qua non. Claims that simply calculate numbers are not useful in a way that the SC approves. Whether a system involving programmed computer that computes price, for example, is useful is, to some of us, not even worthy of discussion. But that is what divides us.

  135. But, you know the biggest problem is that the academics that get on here are so arrogant from having tenure and being able to print in vanity presses without review and their other privileges that they feel no need to engage in real discussion. They merely state their opinions which we may presume are for lining their pocket or bolstering their egos and reputation.

    Can this author answer the points that anon just made? No. And, that is why the author is not a scholar and does not deserve the respect of a scholar.

  136. I think Dennis that anon said it pretty well. And, even the author’s use of weak and strong instead of the nature broad and narrow. Meaning that Lourie is taking a very narrow view of patentability, which I think is the most objective way to frame the discussion. Narrow and broad also fit well with the Marks analysis in that the opinion that least narrows patentability should be selected.

    Anyway, I could go on…

  137. Ned, – Novelty? in 103?

    Really?

    You do realize that Rich had far more knwoledge than you have ever been willing to give him. You have always had a perverse and unreasonable h@tred of that man, so your views carry no weight.

  138. Further, Ned, you engage in a fallacy here in that you wish an issue ‘to be open’ unless the Supreme Court has given an opinion on that issue.

    Simply not so. Quite in fact, the vast majority of law – law that is not open – has not been deliberated by the Supremes.

  139.  

    Anon, Frederico thought that what he was doing in 103 was codifying the law of novelty.  Why don’t you actually read what he said.  He was he author.  He was the one quoted by congress on this issue.
     
    Your interpretation is without support in the record. 
     
    What Rich said post hoc deserves little or no weight.
     
     

  140. it would have to overrule Benson

    Compltely wrong Ned – And I have given you the precise quote in Benson many many many many times now.

    Do the words “we do NOT so hold” mean anything to you?

  141. Ned,

    We have been over this before now many times. The 1952 Act curtailed the ability of the Court to develop the definition of ‘invention’ by common law and instead created the notion of non-obviousness.

    This clearly was a curtailment of what the Court could do under 101.

    And this is expressly why the Court has parsed words in all of its 101 decisions since 1952, in order to trace the authority it is using back to the words that Congress used. Of course, we both know that the Court has played fast and loose with this due to its addiction and its inability to keep its fingers out of the 101 nose of wax.

  142. Prof. Crouch,

    The problem your guest has is that he does not stick to the focus as your post at 4:50 indicates.

    The guest author volunteers his bias, and it is not unreasonable to see reactions against that bias.

    While I find it refreshing that someone admits to such bias at the onset, the framing of the question, as well as every nuance (what the author chooses to call ‘weak’ – something that just as easily could be called ‘more accurate to the words that Congress chose’) in the presentation of the author’s opinion becomes suspect.

    The post here is not, and cannot be considered to be, an objective and even handed view at the focus you identify.

    For another example, exceptions to law are meant to be strictly read – not widely read. Yet, that traditional view is not only absent, it appears to be denigrated by the author’s given bias.

  143. “Consequently, these five judges would have found that all of Alice’s claims were ineligible for patenting.”

    In other words they were the narrowest opinion that reached the ultimate conclusion of the court on all grounds. As would be controlling on its face. Have fun “arguing” agin that. I’ll have fun loling at your attempts.

  144. “But there is certainly plenty of room to argue that Judge Rader’s opinion is the Federal Circuit’s holding under Marks. ”

    Of course the only reason to “argue” that is because it is self evident which opinion is the “narrowest” grounds re all the pending issues. Gl with that argument lol.

  145. abstract idea is judicially-created law, finding no support in the statutes.

    I suppose it depends on what you mean by “no support.” It’s not as if 101 expressly approves of patenting abstractions or purely mental processes.

    Oddly enough, many of the same folks who insisted that there was “no support” for, e.g., the ruling in Prometheus, all seemed quite certain that 103 was the way to deal with problem of [oldstep]+[newthought] claims. But they could never explain why 103 was better suited for that purpose, particularly when the only new element in the claim was ineligible subject matter.

    How do we deal with applicants who attempt to claim a non-obvious fact or non-obvious information simply by reciting some old eligible step or structure in addition to the non-obvious fact or information? Do they get a free pass? Is there currently a “statute-based” answer? Or do you want Congress to write one for you? Do you want the current Congress to write that statute? Or maybe you’d prefer to wait for a Congress that really, really, really loves patents. How long do you think you’ll have to wait?

  146. Night, you are way off base regarding the ’52 Act. It did not rewrite 101.

    However, consider 282. That did apparently exclude 101 as a grounds for invalidity.

  147. Night, you have to agree that the Supreme Court did not make clear why it held the claims in Bilski abstract. Whether it was the failure to limit the claims to a computer or something else was as clear as mud as Stevens himself pointed out in his dissent.

    When the Supreme Court has not let is position be known to others, the issue really is open and open for discussion.

    We know your views. They are the same as Judge Rich and apparently of several of the Federal Circuit. But as of this moment, the issue is not resolved.

    Just as observation: if the Supremes were to decide that limiting the execution of software to a computer was eligible without more, it would have to overrule Benson.

  148. abstract idea is judicially-created law, finding no support in the statutes. Supreme Court should acknowledge its mistake (see Plessy v. Ferguson) and withdraw this limitation on patentable subject matter next time a 101 case is before it.

  149. Dennis: I agree with you that the Supreme Court is well off-statute with its abstract idea / natural phenomenon. But that’s the current law and I don’t really see it as improper to use that as a basis for a short blog post whose point is largely tangential to that question.

    Not only is it the current law but even if a majority of the Supreme Court decided tomorrow that it was “well off-statute” with regard to its 101 jurisprudence, it’s not as if the country would breathe a collective sigh of relief that purely mental processes and other abstractions were suddenly eligible for patenting. Far more likely they’d just amend the statute to incorporate something similar to the judicial interpretation.

    I wonder if anybody thinks that in the Ideal Patent Future people should be able to patent old pieces of paper if the paper has a new, non-obvious and useful story printed on it. After all, that’s a new composition of matter … Or new, non-obvious and useful purely mental processes? After all, those are “processes” and fall squarely within the statute.

    Lines are going to need to be drawn somehow, aren’t they? It’s difficult to imagine a useful legal line being drawn that simply required the use of a magic word to cross it.

  150. fan the flames

    What “flames” are being fanned by Professor Chao?

    I thought it was interesting. I’ve never heard of this “Marks rule” but it appears to be something the Supreme Court didn’t spend much time thinking about.

  151. The United States Supreme has said that when one of its decisions has no majority opinion in support of the judgment, “the holding of the Court may be viewed as that position taken by those Members who concurred in the judgment[] on the narrowest grounds.” Marks v. United States, 430 U.S. 188, 193 (1977). Now there is some disagreement about how to identify the narrowest concurring opinion. What’s more it’s unclear if the Marks rule applies to en banc decisions of the various Courts of Appeals.

    Captain: Section 342 says to rearrange the deck chairs according to the most descriptive rules set forth in the most curent volume of the Passenger Vessel Gazette.

    First Mate: Section 342 is a rule about pipe smoking, sir.

    Captain: What? No it’s not. Get me the book.

    First Mate: Here it is.

    Captain: Now, look at the index. See? It says right there: “Section 342: How to Rearrange Deck Chairs …”

    First Mate: “… While Smoking a Pipe.”

    Captain: Now that’s some serious hair splitting. Shall we begin?

    First Mate: Begin what, sir?

    Captain: Smoking our pipes! It’s just the thing to do in this confounded cold weather. And let me know when you’ve finished with the chairs. I’ll be in my quarters playing cribbage.

  152. Again NWPA – the focus of this short blog post is not debating which opinion is right/wrong. Rather, the focus is on whether there is any precedential value that can be taken from the case given the absence of a majority opinion.

  153. Huh. I thought it was a moderately interesting application of the Marks rule to the Alice opinion. I must have missed the subtext entirely.

  154. OK – NWPA. I agree with you that the Supreme Court is well off-statute with its abstract idea / natural phenomenon. But that’s the current law and I don’t really see it as improper to use that as a basis for a short blog post whose point is largely tangential to that question.

  155. I think that the framing of the question is wrong.

    I don’t follow. How would you frame the question that Dennis is asking?

    Consider a novel, non-obvious method comprising the steps:

    comparing X to Y, wherein

    if X is greater than Y, then 22 is subtracted from X; and

    if X is less than or equal to Y, then 33 is added to X.

    As you know, that’s an ineligible process.

    It’s ineligible, in part, because the progress that is promoted by such a method is not deemed to be the sort of progress that is effectively promoted by patents.

    Given that computers are well-known and conventional proxies for information processing steps that would otherwise be carried out by humans, why should reciting the use of a computer to carry out the above information processing method render that process eligible? How is the “progress” being promoted by granting such a “computer-implemented” claim distinguishable from the unworthy “progress” being promoted by the ineligible claim? That’s just one way of looking at the issue, of course.

  156. When I read one of these articles by “professors” they read like a gossip column. No credibility. No morality. No learned analysis. Just some sugar to get by and fan the flames.

  157. What we need from the academics Dennis, is real academics that will hold this judges to a higher standard than I don’t like it.

    For example, does this professor understand the ladders of abstraction? Does this professor understand that abstract as is being used by Lourie is really wrong. That it is a scope of enablement issue and that this is how it should be framed.

    Etc. Really just outrageous that the judges are acting like executioners and the professors aren’t holding them to the law and science.

  158. 1) What is an unpatentable concept? I don’t think that is in the 1952 patent act nor listed among the three exceptions our wonderful SCOTUS has made.

    2) What does it mean to say “adding computer limitations”? So, for example, if you say that patenting a concept like solving any math problem that is asked is unpatentable. But, then are you going to tell me that if an information processing method is devised that can actually solve any math problem that this method is unpatentable. Would you say that?

  159. You know, “professor”, that you have an obligation in return for being a professor for academic honesty. Why don’t you read about information processing and try to understand the technology. Do you know what the Church-Turing Thesis is? Can you evaluate Lourie’s statements based on the Church-Turing Thesis?

    Can you evaluate Lourie’s statements based on the 1952 patent act? Particularly in regards to his apparent requirement that any invention may only be patented if there are at least two other ways of performing the invention.

    [edited by blog]

  160. NWPA – do you think that it is actually clear that adding computer limitations to an otherwise unpatentable concept renders the concept patent eligible?

  161. Come now. Weak for expansive 101 and strong for narrow 101.

    Plus, “it’s unclear whether adding computer limitations to an otherwise unpatentable concept somehow renders the concept patent eligible.” This statement let’s us know that you are 1) ignorant of information processing, and 2) opinionated.

    Sheesh, can’t you educate yourself? Do you publications this badly?

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