Surprise! The Law of Subject Matter Eligibility Remains Unsettled

By Jason Rantanen

Accenture Global Services, GMBH v. Guidewire Software, Inc. (Fed. Cir. 2013) Download Accenture v. Guidewire
Panel: Rader (dissenting), Lourie (author), Reyna

It is difficult to think of an issue that has more deeply divided the Federal Circuit over the past few years than subject matter eligibility.  Accenture is the latest barrage and counter-barrage in this seemingly endless war.  Unlike Ultramercial v. Hulu, though, in which Judge Rader wrote the majority opinion and Judge Lourie concurred in the result, the forces arguing against subject matter eligibility of computer programs won today's battle. 

At issue in the case were claims 1-7 and 8-22 of Patent No. 7,013,284.  Claim 1 read:

A system for generating tasks to be performed in an insurance organization, the system comprising:

an insurance transaction database for storing information related to an insurance transaction, the insurance transaction database comprising a claim folder containing the information related to the insurance transaction decomposed into a plurality of levels from the group comprising a policy level, a claim level, a participant level and a line level, wherein the plurality of levels reflects a policy, the information related to the insurance transaction, claimants and an insured person in a structured
format;

a task library database for storing rules for determining tasks to be completed upon an occurrence of an event;

a client component in communication with the insurance transaction database configured for providing information relating to the insurance transaction, said client component enabling access by an assigned claim handler to a plurality of tasks that achieve an insurance related goal upon completion; and

a server component in communication with the client component, the transaction database and the task library database, the server component including an event processor, a task engine and a task assistant;

wherein the event processor is triggered by application events associated with a change in the information, and sends an event trigger to the task engine; wherein in response to the event trigger, the task engine identifies rules in the task library database associated with the event and applies the information to the identified rules to determine the tasks to be completed, and populates on a task assistant the determined tasks to be completed, wherein the task assistant transmits the determined tasks to the client component.

The district court (Judge Robinson, one of the ) held claims 1-7 (system claims) and claims 8-22 (method claims) invalid under 35 U.S.C. § 101.  Accenture appealed only claims 1-7. 

System Claims Ineligible Subject Matter: In an opinion authored by Judge Lourie, the majority agreed with the district court that the claims were patent ineligible subject matter.  The majority provided two bases for its conclusion.  First, "because the system claims offer no meaningful limitations beyond the method claims that have been held patent-ineligible" and second, "because, when considered on their own, under Mayo and our plurality opinion in CLS Bank, they fail to pass muster." Slip Op. at 10.

The majority first compared the system claims to the method claims that were conclusively invalid because Accenture failed to appeal them.  Relying on the plurality opinion in CLS Bank v. Alice, the majority concluded that the proper approach is to "compare the substantive limitations of the method claim and the system claim to see if the system claim offers a “meaningful limitation” to the abstract method claim, which has already been adjudicated to be patent-ineligible."  Id. Because the court found no additional "meaningful limitation" in the system claims, they were as patent ineligible as the method claims. 

The majority also concluded that the method claims were invalid under Section 101 even standing on their own.  Applying a preemption analysis to the abstract idea at the heart of the system claims, the majority concluded that the additional imitations did not "narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself."  Slip Op. at 15.  Furthermore, "simply implementing an abstract concept on a computer, without meaningful limtiations to that concept, does not transform a patent ineligible claim into a patent-eligible one."  Id.

Judge Rader's Dissent: Unsurprisingly, Judge Rader disagreed with the majority.  Central to his disagreement was the belief that the plurality framework relied upon by the majority in this case lacks precedential value.  "[N]o part of CLS Bank, including the plurality opinion, carries the weight of precedent.  The court's focus should be on Supreme Court precedent and precedent from this court."  Slip Op. at 20.  He also disagreed with the basic idea of the comparing the system claims to the invalid method claims, characterizing it as estoppel that will have the effect of "requiring litigants to appeal the invalidity of every claim or else risk the potential for estoppel or waiver of other claims."  Id. And Judge Rader would have concluded that, even on the merits, the claimed systems present patent-eligible subject matter.  "The claims offer “significantly more”  than the purported abstract idea, …, and meaningfully limit the claims’ scope."  Id. at 4, quoting Mayo v. Prometheus, 132 S.Ct. 1289, 1293 (2012).

Judge Rader also once again proclaims his view that the courts' approach to patent law's subject matter eligibility requirement is pure folly:

In conclusion, I note that prior to granting en banc review in CLS Bank, this court commented: “no one understands what makes an idea abstract.” CLS Bank Int’l v. Alice Corp., 685 F.3d 1341, 1349 (Fed. Cir. 2012), opinion vacated, 484 F. App’x 559 (Fed. Cir. 2012) (internal quotations marks omitted). After CLS Bank, nothing has changed. “Our opinions spend page after page revisiting our cases and those of the Supreme Court, and still we continue to disagree vigorously over what is or is not patentable subject matter.” MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1259 (Fed. Cir. 2012); see generally CLS Bank. Indeed, deciding what makes an idea “abstract” is “reminiscent of the oenologists trying to describe a new wine.” MySpace, 672 F.3d at 1259.

I take this opportunity to reiterate my view that “the remedy is the same: consult the statute!” CLS Bank, 717 F.3d at 1335 (additional reflections of Rader, C.J.). The statute offers broad categories of patent-eligible subject matter. The “ineligible” subject matter in these system claims is a further testament to the perversity of a standard without rules—the result of abandoning the statute.

Slip Op. at 23.  That said, Judge Rader's thoughts about indeterminacy should perhaps be taken with a grain of salt: his opinions indicate, after all, that he has very strong views that one side of the subject matter eligibility battle is right and the other wrong.

One other thing of note about this case: Mark Lemley – who has written a great deal about patenting of computer-implemented inventions, including a recent post on PatentlyO – was the lead attorney for the defendant.

401 thoughts on “Surprise! The Law of Subject Matter Eligibility Remains Unsettled

  1. “patenting an old machine that preempts an abstract idea” — if the abstract idea is non-obvious, then you reject under Section 103

    How do you reject a non-obvious abstract idea under 103?

  2. Here is the Morse claim — pure gibberish and invalid under 112, clearly IMO

    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.

  3. If I follow your arguments correctly, you would say the first two, but not the third, correct?

    You don’t follow the argument.

    If you invent a novel, non-obvious useful processor and it’s properly claimed (not functionally claimed), then you are entitled to a patent on that processor. You can recite all sorts of additional limitations in addition to the limitations describing that processor. Whatever floats your boat.

    But once the patent on your processor expires (20 years from your filing date), you don’t get to keep filing patents on methods of using that processor to perform abstract processing steps (“creating a friend on a social network, wherein the friend is in prison, wherein the prison is next to national park, wherein email received from the friend is placed into a folder with zebra stripes” etc) that, for whatever reason, were not described with particularity before.

  4. Anon, the problem with discussing things with you include running into road blocks, such as defining what you mean as in the case of defining what you mean in the case of “software has structure.”  You refuse to do that.
     
    When we talk about programmed computers, you and Night give examples such as playing songs, driving cars, flying airplanes.  Well anon, so confined to an application that DOES something eligible, as in Diehr, we are on the same page.
     
    But your agenda is to say that a programmed computer per se is eligible, meaning that it does not have to be part of a larger system and causing something to happen.  The agenda becomes manifest here, because this will justify patenting business methods.
     
    You are so transparent, anon.  

     
     
     

  5. “patenting an old machine that preempts an abstract idea” — if the abstract idea is non-obvious, then you reject under Section 103

    (Section 101 does not include an “abstract idea” exclusion.)

    ” a new machine that preempts that abstract idea” — then test under 102/103

  6. What is the difference between patenting an old machine that preempts an abstract idea and a new machine that preempts that abstract idea?

    It’s the difference between a piece of worthless paper and a valid patent. The new machine doesn’t pre-empt the abstract idea because (wait for it) it’s a new machine. It’s eligible on its own terms.

    That’s why in the Prometheus case (and cases like it) the critical question is whether the eligible step (say, the data gathering step) is old or new. If its new and patentable on its own terms, then any subsequent ineligible nonsense (e.g., steps of thinking about this or that) are irrelevant. The only people who infringe the claim will be those who practice the new eligible invention. Who cares what they think about while doing so?

    The opposite is true when the eligible step is old. Now people who are practicing the prior art are suddenly turned into infringers because they are thinking about something “new”. That’s not permitted.

    To the extent that computers are ancient and ubiquitous tools for processing information, a similar problem has arisen where patentees are reaching through and creating liability based on content of the information that the computer is receiving, processing, storing, and/or transmitting. That’s not “promoting progress”. That’s just tying up information and putting roadblocks in the way of people who want to use their computers to process that information.

  7. So, under your 101 analysis, I can patent a system including a novel processor but not a system including a novel processor configured to add 1+2 because that preempts most uses of the abstract idea of “add 1+2.”

    OK.

    My next question is how does my patent that claims “a system include a novel processor” not also preempt most uses of the abstract idea of “add 1+2″? It certainly does, because I can prevent any and all people from using my novel processor to add 1+2. See what happens?

  8. anon, everyone who reads this blog must have noticed that you refuse to define what structure software has.  You know that software compiles to code, and that code consists of 1’s and 0’s, but when asked to define the structure of a 1, you vanish.

     
     
     

  9. I’m not really sure that making a bs rejection is attempted fraud/fraud like trying to skirt 101 is. I’m not even saying it needs to be all that enforced, even having it on the books would be deterent enough.

  10. MM, when you say “vaguely describe” you are conflating 112 and 101.

    If the disclosure is “vague” then I agree that rejection/invalidation is in order under 112.

    But then that is more work for the examiner/judge than just screaming “abstract idea!” “abstract idea”

  11. Tr0 llb0y, I suggest you go back and review the threads on this blog in which you played the same lame games with respect to the issues in Prometheus, leading up to the Supreme Court’s 9-0 decision.

    Prometheus was an incredibly important case. It’s never going to be overturned and the underlying concerns in that case will never be “debunked”. They are here to stay.

    The repeated discussion of the relevant issues and arguments may “bore” you but spewing insults and obscure soundbites (“debunked script of the ‘House’ argument’? what?) in response is a loser’s game. On the other hand, that is your specialty, isn’t it?

  12. How about I invent a novel processor that is going to eventually be used in every single computing device in the world.

    I file my patent application for the novel processor.

    I file my patent application for a system including the novel processor.

    I file my patent application for a system including the novel processor, wherein the novel processor is configured to add 1+2.

    Which of the three are patentable? If I follow your arguments correctly, you would say the first two, but not the third, correct?

  13. “According to Lourie (and you), I cannot patent a new remote control configured to turn to a channel, wherein the channel is represented by a number, wherein the number is odd, and wherein the channel receives copyrighted content, wherein the copyrighted content is a documentary about patent trolls filmed in at least two states.”

    That’s one way of putting it in everyday english that should suffice for laymen. And do you know why this is? It’s because what you claimed is a naked attempt to preempt a big ol’ chunk of the abstraction of turning to a channel, wherein the channel is represented by a number, wherein the number is odd, and wherein the channel receives copyrighted content, wherein the copyrighted content is a documentary about patent trolls filmed in at least two states.

    “much narrower claim directed to my new remote control.”

    If it actually was a narrowly claimed remote control rather than a naked attempt to preempt the abstraction by inserting a limitation to a remote then you would be able to.

  14. No 6 – I asked for answers, not your poor attempts at answers that fail because of your p@thologic@l obsession against software patents.

    You need to figure out the difference.

  15. “Time for what, Leopold? ”

    He’s referring to a ban, or at least a temporary ban just to get his attention and let him know to stop slandering people every time a decision comes out he disagrees with. You know, the thing you like to pretend someone would be doing by outting your re ta rded ar se? Oh, I forgot, you’re not a real lawlyer, so you don’t know what it is, you just ape what you hear other people say.

    link to en.wikipedia.org

  16. 6, if you would just bother to read some patent law, you would stop arguing with me.

    There really isn’t any meaning I can take from your post. I read only attitude with no substance.

  17. Ned,

    We also disagree on your tactics.

    You engage in fallacies and refuse to respond to the points I raise pointing out your fallacies.

    How would you suggest that I ‘just discuss’ this issue with your posting techniques?

  18. He just answered your question by saying that he didn’t think in the instant case that there were any. Without fundamentally changing the nature of what they’re seeking to patent anyway. I will second his analysis.

  19. assumes everything you say is gospel

    No Ned, nothing of the sort.

    I would stress, however, that you have never presented any type of persuasive counterposition to any of the points that I have made. You choice of ignoring the points may be grounded in your posting for third party interests, but that does not change the fact that you do not address the points I make.

    just do so

    How can I seriously discuss issues when it is you that runs away and ignores the points I raise?

    The merry-go-round has started up again Ned.

  20. “Now you’re appealing to your own authority?”

    I know right? Can me and MM, as people of skill in the art, rely on our own authority as well? lololol.

  21. What is the difference between patenting an old machine that preempts an abstract idea and a new machine that preempts that abstract idea?

  22. I can patent my new remote control, but I cannot patent a much narrower claim directed to my new remote control.

    I should have been more clear. In the method claim I recited, “the remote control” is not “the new remote control.” I should have written “a remote control” (as in: an old remote control).

  23. Tr0 llb0y: maybe it’s time for some more of your beloved’s stellar English

    Everything’s “equivalent” in Tr0 llb0y’s world. Tr0 llb0y accuses someone of being racist based on an alleged comment that Tr0 llb0y refuses to share, and the person Tr0 llb0y is attacking rather reasonably tells Tr0 llb0y to go f himself.

    Apparently that’s the same as accusing a Judge of wanting to “re-open the ovens” (?!) because the Judge tanked some j*nk software claims.

    Pretty funny.

  24. LOL – nothing imaginery about your admissions Malcolm. They are captured in the archives and no amount of your attempted spin can change that.

    As they say, svcks to be you.

    (but maybe this time your childish quips may do more than just make you look like an @$$hat – doubtful, but if you try posting while you buff your shiny aluminum hat, it just might work – /eyeroll)

  25. anon, the main problem with your remonstration is that it assumes everything you say is gospel and that no one else can be right.
     
    If you would seriously like to discuss issues, just do so.

     
     
     

  26. So, to clarify:

    (a) I can patent a new remote control.

    (b) I cannot patent a method of using that new remote control to turn to a channel, wherein the channel is represented by a number, wherein the number is odd, and wherein the channel receives copyrighted content, wherein the copyrighted content is a documentary about patent trolls filmed in at least two states.

    According to Lourie (and you), I cannot patent a new remote control configured to turn to a channel, wherein the channel is represented by a number, wherein the number is odd, and wherein the channel receives copyrighted content, wherein the copyrighted content is a documentary about patent trolls filmed in at least two states.

    So, to be clear, I can patent my new remote control, but I cannot patent a much narrower claim directed to my new remote control.

    But wait, can I patent a method of simply using my new remote control to change a channel? No? Then I guess I can’t patent a new remote control configured to change a channel, either. Boy, this is confusing.

  27. Leopold pleads: “Come on, Dennis. It’s time.

    Time for what, Leopold? Time that you give me my answers? Or maybe it’s time for some more of your beloved’s stellar English as a first language:

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

    That seems to be much more acceptable to you.

  28. MM,I never said either of these: “All patents are invalid after KSR.” “All patents are invalid after Prometheus”.

    Right. And I never said that you said those things.

    But the difference between those statements and the statement that you did make is a very small difference indeed. The point of my comment was crystal clear in that regard.

  29. your bonfire-igniting self-volunteered admission

    Watch out. Patent Jeebus is hurling his imaginary lightning bolts again! Oh, the humanity.

  30. In other words, the Court needs to adher to the explicit words of Congress.

    If they think the explicit words are ‘bad’ and violate the constitution, it is not up to the Court to rewrite the statute with their implicit words – they need to void the statute as unconstitutional.

    After all, that very constitution explicitly calls out who has the authority for writing the patent law (and it is not the judiciary – and there is no longer any authority for the Court to develop a common law of ‘invention’ because Congress explicitly decided to handle that under 103 with the quite conscious choice of obviousness rather than invention.

    The Court has never handled its Wax Nose addiction.

  31. if they already “preempted” this “abstract idea,” the later inventor cannot re-preempt it.

    Why not? A species can be patentable over the genus in certain circumstances.

    Your argument shines a light on a problem with most of these computer-implemented claims is that there is no such thing as an “unexpected result”. You tell a computer to store data, it stores the data. It doesn’t matter if the data is “a million different numbers” or if the data is “insurance transaction data” or “insurance transacation data wherein the insurance company is based in Bermuda and wherein the data is saved in a virtual purple folder with an active toolbar”. It’s still just data. The computer doesn’t care. And we know that, in part, because the claims invariably cover the use of any old computer (except when they are limited to “small” or “portable” computers as if such limitations make a hill of beans of difference).

    unworthy… a word that does not appear anywhere in the statute either.

    There is a reason that we have rules which control the kinds of patent claims we permit to grant in our society. What do you think that reason is?

  32. MM,
    I never said either of these: “All patents are invalid after KSR.” “All patents are invalid after Prometheus”.

    You are a dirty rotten l$ar.

  33. in which a computer can be employed to do what computers do

    The (repeat) of the vacuous and debunked script of the ‘House’ argument.

    Y A W N

    (have you talked to 6 about his theory yet about how the Star Trek replicator 102′s all compositions, since the replicator can be employed to do what a replicator does?)

  34. I think that’s where the integration (and related reading of the claim as a whole) comes into play.

    Anyone have a link to the Office understanding of integration as resulting from the Prometheus case?

    Anyone?

    Anyone?

    Bueller?

  35. I am one skilled in the art of computer science. And, I say that these limitations are meaningful. And as meaningful as reciting a door knob and hinge.

    Now you’re appealing to your own authority?

    I don’t think the thread is big enough for two Patent Jeebus.

  36. new machines and methods that transform matter in useful ways”

    Repeat after me:

      Bilksi: MoT NOT required

    It’s easy – it won’t tax those fantastic English as a first language skills of your too much.

  37. we answer your questions substantively in every thread.

    LOL – the compnay you keep with this ‘we’

    Where are my answers?

    eventually used the right reasons

    LOL – the ‘we’ of the WHATEVER legal reasoning.

  38. from top scholars at some of the top science and engineering schools in this country. Pretty sure one of the people I heard discuss this was a Nobel Laureate.

    Two comments in response: first, downthread you barked at Paul Cole about an “appeal to authority”. So what’s this “Nobel” business all about?

    Second, identifying some “top scholars” that allegedly support your view is a very very very long way from your assertion that “No experts in computer science would support an opinion that software does not have structure”.

    A reminder again that we are not talking about “structure” in the abstract sense in which, say, an “argument” has structure. We are talking about whether there is any consistent, objective, identifiable structural differences between software that instructs a computer to “store insurance transaction data” versus, say, software that instructs a computer to “store copyrighted insurance transaction data”.

    We both know the answer to that question is “no”. And we both that there is none of your “top experts” is going to disagree with that conclusion.

  39. NWPA,

    The chances that you will recieve an intellectually honest answer from Leopold on something that he instigates in a smarmy manner when it is shown that his smarminess is unjustified is not high.

    You will need to take your turn in line waiting for such answers.

  40. “The abstract idea “test” should be called the “lazy test” because it merely substitutes”

    I agree, but not for the same reason. Congress should pass a law that people trying to skirt section 101 should be imprisoned for a few years for attempted fraud. Failing to do so is just lazy of them.

  41. Nice misrepresentation Malcolm.

    The point is not that there is ‘only one.’ The point is the improper usage of the rhetorical tool.

    But then again, you already knew that and you were merely engaging in the poor blogging quality tactics that are your speciality.

    You obviously don’t care that your antics wreck your credibility to any objective and intellectually honest mind.

  42. NWPA, we answer your questions substantively in every thread. You’re a well off man, how about you just stop by the office sometime and let me go over this with you in person?

    Rather than post a million times in response to your hundred comments on this thread let me just say this:

    1. 99%+ of the applications in my art survive this analysis employed with flying colors. This is indisputable, it literally happens every day thousands of times a day.

    2. Yes, most, if not all, information processing is going down the tubes. Just have a good cry and let it all out already, then, tomorrow, move on with your life.

    3. While there are some things I disagree with in the decision, which are noted in the previous thread when LB brought the case up, overall it came out correctly, and they eventually used the right reasons.

  43. I’m talking about this lameness from you, NWPA:

    I wonder if Lemley does the same in his briefs.

    As for this:

    he paper that Lemley wrote, cites to scholarship directly opposite views, and references to what is well known in computer science.

    I really have no idea what you are rambling on about but I do know that nobody cares.

  44. NWPA,

    As is Malcolm’s continued obfuscations and misrepresentations of what the law actually is given his volunteered admissions as to controlling law regarding the exceptions to the printed matter doctrine and his admission that ‘configure to’ is structural language.

    But all that he will do is [shrug] and stand-by.

  45. unsubstantiated accusation and running with it

    I have heard of it – but you make no point with merely saying this.

    Nice dust-kicking though. Now let’s move the goalposts back, shall we?

  46. the Queen of Hearts won’t be done until she uses this nonsense to kill all subject matter.

    Who, in your view, is “the Queen of Hearts?”

    I think most of the public is supportive of a patent system that promotes progress in the development of new machines and methods that transform matter in useful ways, and which rewards the inventors of such machines and methods.

    There is less support, I believe, for a patent system that seems to exist simply to reward speculators who can afford to throw reams of paper at the PTO which vaguely describe yet another context in which a computer can be employed to do what computers do: accelerate the processing of information about stuff.

    You can imagine the public having the same reaction if, back when the first cars were rolling off the assembly line, speculators flooded the PTO with patents on methods of driving them (“to the beach, wherein the beach comprises a blue umbrella”; “to a fork in the road, wherein turning in one direction comprises riding over some roadkill, wherein said roadkill is rodent roadkill” etc. etc.

  47. nowhere to be found in the claims

    LOL – your bonfire-igniting self-volunteered admission that ‘configured to’ is structural language destroys this little plank of your scripted agenda Malcolm.

    As they say, svcks to be you.

  48. revolt against Benson

    Ned,

    You have been shown the limitations of Benson and have chosen to ignore them. “Revolt” is simply the wrong word.

    What you think (and no matter how ‘many’others think likewise) has lost credibility because of your choices of ignoring the valid and cogent points made.

    Even as you attempt to ignore the Court’s words and stretch dicta into law, it is not up to the Supreme Court to write patent law – and your primatur here exists solely becuase the philosophical agenda aligns with yours.

    Witness the many Myriad discussions inwhich that alignment was missing and your inconsistent treatment of what the Supreme Court said in those pertinent discussions.

    This lack of consistency from you further erodes any (remaining) credibility that you may wish to possess.

  49. Machine = abstract idea.

    That, in essence, is the holding.

    “In essence”? What?

    That’s not the holding at all or even close to it. Lourie is not saying that “all machines are abstract ideas and therefore fail 101″. Not even close.

    He’s saying that claims that protect ineligible subject matter are ineligible, regardless of whether the claim formally recites some eligible subject matter. “In essence”, this is right in line with the holding in Prometheus.

    A claim to a method of “communicating instructions to employees, wherein the instructions are ‘wear a yellow duck head when a vanilla shake is served on Tuesdays’ is ineligible and it doesn’t (and shouldn’t) matter if the claim recites using a computer or a pencil to perform the communication. These are old tools and you can’t prevent people from using them for their intended purposes simply by being the first to describe a specific (but nevertheless “abstract”) context to the PTO.

    You can patent a new TV screen. You can patent a new remote control. But you can’t patent a method of “using the remote control to turn to a channel, wherein the channel is represented by a number, wherein the number is odd, and wherein the channel receives copyrighted content, wherein the copyrighted content is a documentary about patent trolls filmed in at least two states.” And it’s not because it’s “obvious.”

  50. And please show a little knowledge of history and place the blame where it rightfully belongs: with the Supreme Court itself.

    • There were two possibilities in that case…Another, that the claims were not tied to a machine, such as a computer.
      Ned,

      I have pointed out this fallacy of yours over and over and over again.

      The Bilksi decision was decisive as to at least this holding:

      MoT – not required.

    Why must you repeatedly attempt to resurrect this fallacy of yours?

    simply using a computer is not sufficient

    Yet another fallacy that you seek to perpetuate. You never acknowledged that you are overlooking the critical step of actually configuring a computer with the software in the initial instance. you insist on a strawman argument of mere use of a computer already changed with that computer configured with the software.

    reversed in Benson… Rich’s views expressed in that overruled opinion

    Yet another misrepresentation that you seek to perpetuate. I have pointed out the critical quote in Benson, have explained to you that the dicta in Benson was rightfully ignored by Judge Rich, and yet you continue to misrepresent the law in this regard.

    What you personally think in these instances Ned is quite beside the point of a proper reading of the law.

    Please stop your fallacies, misinterpretations and projections of your belief system in place of what the law really is.

  51. Oh, and by the way, the first time I considered whether or not software had structure was in the late 1970′s. It had nothing to do with patents, but with the theory of computation.

  52. >Have you ever heard of taking an unsubstantiated >accusation and running with it? Maybe you should >accuse Lemley of being prejudiced against blacks, >too.

    Except I have provided all the evidence. The paper that Lemley wrote, cites to scholarship directly opposite views, and references to what is well known in computer science.

    And, you know this MM. So, your behavior is reprehensible.

  53. Lourie is half a step away from re-opening the ovens.

    Maybe he should call Chef America.

    Seriously, bro’. Loosen the headband a couple notches.

  54. As I said before all circuit and mechanical patents are invalid under the Lourie rule.

    “All patents are invalid after KSR.”

    “All patents are invalid after Prometheus”.

    You can screech this nonsense all you want. Nobody buys it. Show us how your interpretation of the “Lourie rule” works on this mechanical claim:

    . Apparatus for causing an aircraft wheel assembly to rotate in response to air passing by comprising:
    attachment means for securing the apparatus to an aircraft wheel;

    vane means for imparting rotational force on the attachment means in response to a fluid current, the vane means being carried by the attacment means and including a plurality of equiangularly disposed vanes positioned around the attachment means, being moveable between a first position and a second position, and being operable to exert a circumferentially directed force component through an angle of more than 180 degrees; and

    synchronous actuation means carried by the attachment means and engaging the vane means for moving the vane means between the first position and the second position and for maintaining the vane means at any intermediate position between the first position and the second position;

    wherein the synchronous actuation means includes a ring gear mounted on the attachment means so as to be circumferentially moveable; and

    wherein each vane includes an arcuate gear arranged to mesh with the ring gear so that circumferential movement of the ring gear simultaneously moves each vane between the first position and the second position.

  55. The rest of your post is again just words like Lourie words. There are no boundaries to such words.

    I am one skilled in the art of computer science. And, I say that these limitations are meaningful. And as meaningful as reciting a door knob and hinge.

  56. “No experts in computer science would support an opinion that software does not have structure.”

    “where do you come up with this nonsense?”

    Let me see: from top scholars at some of the top science and engineering schools in this country. Pretty sure one of the people I heard discuss this was a Nobel Laureate.

  57. Prof Crouch, Have you heard of the ethical duty to cite to controlling law or decisions that are contrary to your brief’s argument?

    Have you ever heard of taking an unsubstantiated accusation and running with it? Maybe you should accuse Lemley of being prejudiced against blacks, too.

    Also, speaking of ethics: did you ever find a single firm (other than your own, allegedly) that uses mailroom staff to screen registered letters addressed to attorneys and discard them if they are deemed to contain art relevant to one of your pending applications?

  58. It all indicates that a specialist court is a bad idea. If the CAFC is going to perform like this, counting angels and refusing to decide substantive issues in a predictable way, then it should be disbanded.

    The very idea that specialization would improve jurisprudence was a mistake. Federal judges are supposed to be smart generalists and making them all deal with patent issues would be better than isolating one set so that they can spend their time infighting and navel gazing. With regular circuit splits, the Supreme Court would have to issue regular and clear guidance on hard issues instead of letting the CAFC make a mess.

  59. No experts in computer science would support an opinion that software does not have structure.

    Where do you come up this nonsense?

    Regardless of whether information (such as computer instructions) has a “structure” or not, the point is that this “structure” is nowhere to be found in the claims we are discussing (or in the specification for that matter).

    The claims in this case are the patentee’s attempt to “own” the use of a computer to process a certain kind of information (“insurance transaction data”). Everything else is ancient g*bage.

    I’ll put the question to you: what happens under 103 when the kind of information bandied about in the claim is “non-obvious”? According to you, they sail past 101. And 103 as well, right?

  60. JN Gross, I tend to agree that the Supreme Court punted in Bilski when it failed to define what it meant by abstract. There were two possibilities in that case: first that the claims manipulated risk, which is abstract. Another, that the claims were not tied to a machine, such as a computer.

    Rader firmly believes, like Rich before him, that if one ties the implementation to a computer, one has defined a new machine.

    But I personally think he is wrong. Since Benson, simply using a computer is not sufficient.

    Rich wrote the CCPA opinion that was reversed in Benson. There he thought the tie to the computer was enough as a computer was a machine and a machine was eligible. Rader appears to fully agree with Rich’s views expressed in that overruled opinion.

  61. claim 1 certainly seems to recite hardware in the body of the claim so it should, in my opinion, pass 101 and the real issue is whether or not claim 1 is novel (102) and nonobvious (103).

    So ineligible subject matter is turned into eligible subject matter merely by the recitation of old hardware?

    That sounds like a familiar losing argument.

    the real issue is whether or not claim 1 is novel (102) and nonobvious (103)

    How do you evaluate the “non-obviousness” of, say, a new fact? Because that’s ineligible subject matter but your “test” suggests that I can “own” that fact or the ability to analyze it in certain contexts, merely by folding some old “hardware” into the claim.

  62. the anti’s will not even address this because they are into naked power grabs

    Also naked volleyball. Where’s my Long Island iced tea?

  63. How about addressing the substantive point that J N Gross

    Substantive point? You mean this?

    inept Judges bowing to large corporate defense bar interests sponsoring the likes of Lemley and the rest of his corporate lap dogs

    I’ll just let that hang out there “for what it’s worth.”

  64. That’s also the analysis that I understood from that. I guess papering over a weak analysis with a lot of words works on those who aren’t capable of comprehending the writing in its entirety.

  65. The question is LB what limitation would prevent the Lourie attack? Give me a limitation and a likely way that Lourie would be prevented from dismissing the limtitation.

    I don’t see anyway that would happen given how Lourie is analyzing this.

  66. And one other question for rumination:

    Will the Supreme Court respect Congress and the Congressional mandate and recognize the CAFC’s proper level of authority towards patent law?

    There is nothing wrong with the Court reviewing cases for true constitutioanl issues, and they do not sacrifice that authority by recognizing the Congressional mandate, but this p1ssing match must stop. The Court is not reviewing constitutional issues in these 101 cases.

    The Court must remove its finger from the 101 Nose of Wax – they are not solving consitutional items with their implicit views of what Congress actually wrote – and clearly, if there was a problem with what Congress wrote, the appropriate Supreme Court response woudl be directed to determining the constitutionality of the law – and NOT reshaping that law to fit their philosophical agenda.

  67. Really LB. Then answer my questions substantively. Tell me what limitations can withstand a Lourie attack?

    How is anything patentable if the circuit court judge decides it isn’t using the Laurie method?

    Please LB. Try to substantively address what I am saying.

  68. Question presented:

      Whether claims to computer-implemented inventions—including claims to systems and machines, processes, and items of manufacture — are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?

    The trick is the ‘as interpeted by this Court’ –

      How deep does ‘implicit’ run?
      How much more mashing can the 101 Nose of Wax take?Will the Court continue to place their intepretations above the explicit words of the law?
  69. But, let’s be clear Dennis. Saying that software has no structure is the same as not knowing the Church-Turing Thesis. No experts in computer science would support an opinion that software does not have structure. And, Lemley must have or should have known that. And, he knew there was scholarship that was directly contrary to his view on software even regarding copyright. And, he knew the implications that if software had no structure that it would not be patent eligible.

    Please. That is reality.

  70. Nice Crybaby Veto Leopold.

    Maybe you can provide some posts in the ‘offending’ posts place? Perhaps the answers that I have asked for?

    What are you so afraid of?

  71. I agree with J N Gross. The abstract idea “test” should be called the “lazy test” because it merely substitutes “it’s invalid because I think so” for an honest 102, 103 and 112 analysis. There is no support in the Constitution or the Patent Act for it. The Supreme Court has taken us down the rabbit hole and everything is topsy turvey in Wonderland. Lourie and Rader are starting to sound like Tweedledum and Tweedledee. The courts are killing software patents today, but the Queen of Hearts won’t be done until she uses this nonsense to kill all subject matter. Is there a pill labeled “eat me” that will get us out of this mess?

  72. Based on the limited information I have, I don’t think it’s possible, NWPA. If it had been my case, I would have tried to get the inventors to tell me what was special about the rules engine, and focused a claim on that. If the particular organization of information recited in the first limitation was truly important, I would have focused on how that organization impacted some specific processing tasks performed by the rules engine.

    They might have had a patentable invention, or they might not. If they did, it wasn’t captured in claim 1.

  73. Prof Crouch,

    Have you heard of the ethical duty to cite to controlling law or decisions that are contrary to your brief’s argument?

    Let’s not have you play the pedantic game – it is clear that NWPA trying to establish that a brief filed with the court must acknowledge controlling law that goes against their argument. See ABA Model Rules Rule 3.3(a)(2).

    Seriously, we have enough cl0wns here only too wiling to misunderstand.

  74. The point was that you are required to cite to contrary case law. The corresponding requirement in a journal article is to cite contrary scholarship. I will have to look up what the Stanford Law Journal says about citing to scholarship that is directly contrary to your views.

  75. Machine = abstract idea.

    That, in essence, is the holding. Lourie can dress it up all he wants, but that is the holding. Ultimately, that is the question that is going to be presented to SCOTUS. We know that a process can be deemed to be an abstract idea.
    Let’s revisit Bilski, and let’s see what they stated:
    “[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” Citing Benson
    “[p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable” under §101, since allowing individuals to patent these fundamental principles would “wholly pre-empt” the public’s access to the “basic tools of scientific and technological work.”
    Let’s see how we can shoehorn a “machine” into one of these descriptions. Not a principle, in the abstract. Not a fundamental truth. Not an original cause. Not a motive. Not a phenomena of nature. Not a mental process. Not an abstract intellectual concept. No whole preemption of access to basic tools of scientific and technological work.

    They discuss Diehr as follows: “Diehr explained that while an abstract idea, law of nature, or mathematical formula could not be patented, ‘an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.’”
    One of the other things that I find interesting is that while SCOTUS eliminated the “machine or transformation” test for methods as being the SOLE test, they stated it was a useful and important test. This begs the question as to why a determination, that a process is tied to a MACHINE, useful and important? Is it because that by being tied to a machine an abstract idea goes from being abstract to not being abstract? If tying a process to a machine is important, what does it say about a claim to the machine itself?

  76. And yes I get very angry about these things. I think that Lourie is half a step away from re-opening the ovens. A complete disregard for the law from a circuit court judge is frightening! Much less to think the counsel thinks nothing of not citing directly opposite scholarship to his views in journal articles (which may be cited by the SCOTUS.)

  77. How about using the phrase “being bullied by the Supreme Court,” Paul? What you say of Judge Lourie’s background may be true, but you neglect critical recent history – and this ommission of yours misrepresents the current state of affairs.

    There is, and has been, a serious brow-beating by the Supreme Court over what it views as a lesser court having been sanctioned by Congress to be a definitive court for a particular area of law (patents).

    Rather than such comments being inappropriate, it is arguably ethically required to call out behavior that brings disrepute to the Court (or court – as NWPA is doing) – and after Alice (and the immediate decision), there can be NO QUESTION that the Supreme Court needs to be held accountable for the effects of what amounts to be a turf war that it has engaged in, and the systematic undermining of the Court of Appeals Federal Circuit’s Congressional mandate.

    Further, your suggestion that ‘few should quarrel with that analysis’ is not only wrong (as Rader’s point about hunting for the heart is very much a strong – and accurate – quarrel), you simply have no right whatsoever to tell anyone what they ‘should’ quarrel about.

    Your post is as offensive as Leopold’s highly selective telling of only certain people to ‘just shut up.’ All you are doing is attempting a flavor of the Crybaby Veto against a view you may disagree with or you yourself deem not respectful enough.

  78. And, Paul, come on. You want to toe to toe with me on this? Then I expect real answers from you.

    Use your brain and think about this method Lourie is using. 1) come up with an abstract idea by Lourie’s brain; 2) walk through the limitations and dismiss them one by one (or altogether as being part of a method, which has a raft of problems with it); and 3) proclaim ineligible.

    No patent could survive this. It is an arbitrary application of the law. Compare Lourie’s opinion with LizardTech. LizardTech is based on facts and an application of the 1952 patent statute. Lourie’s is a naked power grab with no boundaries and no factual underpinning nor even a way to have a factual underpinnings. Do I get experts to say that limitations are meaningful and then put it in the record?

    PLEASE! Paul. Be a man and not an animal.

  79. And I would go much further Paul and say that if you care about the law at all or our country at all that you should take good look at what Lourie is doing. It is without question a naked power grab and should be punished. Lourie is part of the zeitgeist of lawlessness in this country.

    What expert in computer science would say that those limitations are meaningless? A highly paid one. :)

  80. Paul, your comments are a nice illustration of a logic fallacy. Appeal to authority.

    Let’s look at the facts: it is a machine with meaningful limitations. There is no factual underpinnings to his conclusions only what goes on in his mind. He refers to his own opinion in Alice which is not precedent as support.

    The question is: is his opinion supported by law? And the answer is clearly no on so many levels.

    Really, Paul, you are out of your mind. The analysis that Lourie just used could be used to invalidate any patent. Pick an abstract idea and then dismiss all limitations as meaningful.

    As I said before all circuit and mechanical patents are invalid under the Lourie rule.

    The limitations in the claim are as meaningful as reciting hinges and door knobs.

  81. that such a person couldn’t care less about

    You are not using the legal term of art (PHOSITA – person having ordianry skill in the art) correctly. It simply does not matter what you think such a person couldn’t care less about. Such feelings simply do not exist.

  82. I think you can have a web site without hardware.

    No. that would be impossible.

    You cannot define terms to be incongruent with their established meanings. Pedantic semantics will not carry the day. You are inventing [pun intended] the problem you wish to talk about, as such semantic questions you want to pursue are stillborn.

  83. His opinion is lengthy, detailed and careful. Like it or dislike it, his opinion commands respect.
    Oh please. The opinion is little more than:
    (1) method claims are unpatentable abstract ideas
    (2) system claims look similar to method claims
    (3) therefore, systems claims are unpatentable abstract ideas.

    Forget that the issue of whether or not the method claims were abstract were not appealed or whether the system claims had other limitations (i.e., hardware) that take them out the abstract idea realm.
    It is pretty easy to make anything an “abstract idea” when you start ignoring limitations.

  84. I think you can have a web site without hardware. It’s all in how you define web site though and semantics. Does the server serve up tye website, which is just the code, or does the web site also include the server?

    A big problem with patent law is that everything is judged from the perspective of one of ordinary skill in the art, but then we ask semantics questions that such a person couldn’t care less about.

  85. I wonder if Lemley does the same in his briefs. If so, then he is committing ethical violations and could be sanctioned by the court or disbarred.

    So, we have learned that law journals have a lower standard than briefs.

  86. Judge Lourie has a degree in chemistry and many years of experience in the patent profession before joining the bench. It is not credible that he can be described as anything other than a friend of the patent system. He may, or may not, care for woolly software patents, but that is another matter.

    His opinion is lengthy, detailed and careful. Like it or dislike it, his opinion commands respect. Language such as “naked power grab” is appropriate neither to the individual nor to his judicial office.

    One of his complaints is that although there may be technology underpinning the invention, it has not found its way into the claims, by which the patent has to be evaluated. Few should quarrel with that analysis.

  87. Stop misapplying my rhetorical tools Leopold.

    As I already explained, it is not charging at the red cape (like a dazed, blinded and abused bull) that I do. I raise a valid, simple and cogent point.

    And by the way, where are my answers?

  88. allegedly “invented for” in the first place

    The ever-retreaded script of the vacuous and debunked ‘House’ argument.

    No intellectual honesty WHATEVER

  89. Computers are machines.

    They do not lament.
    They do not feel.
    They do not think.

    Anthropomorphication

    Only through dissembling and kicking up dust can this truth be done away with.

  90. Careful there NWPA, asking anyone (in the little circle) to actually discuss substantive points may earn you a litany of accuse-others-of-that-which-certain-people-do snarky assertions of religious activity. After all, you are firing on the Earth-is-Flat-pre-information-age-zealously-pursued-anti-modern-age fundamentalist patent world view of what is ‘worthy’ and what is deemed ‘unworthy’ (regardless of the words that Congress actually chose to use – as Chief Judge Rader points out).

  91. the right outcome for the wrong reasons is nearly as much of a disaster

    Careful there Paul, you are treading on the Holy Ground of ‘WHATEVER’ and risk the mindless being-accused-of-doing-that-which-the-accuser-does.

  92. Forget Alice?

    Like… ‘WHATEVER’…?

    Like that?

    Forget a limitation to a machine? Um,.. Why?

    Have you decided to return to actually giving answers yet, Leopold?

  93. I believe this is the claim you requested:

    1. A system for advertising on the internet by one or more advertisers to one or more surfers browsing a web-site or network of a publisher; a communication carrier for sending a message to a communication device of a recipient, the web-site comprising; a web-based server in communication with the internet; said web-based server comprises: an advertiser module stored on said web based server and adapted to receive an advertising campaign from the advertiser; said advertiser module comprises a registration module having a first set of registration code configured to receive an URL for a web page of the advertiser; a first generator module having a first set of first generator code configured so the advertiser can create and store a DISPLAY AD on said web-based server; said advertiser module further comprises a second generator module having a first set of second generator code configured so the advertiser can create and store a MESSAGE AD on said web-based server; said advertiser module further comprises a location module having a first set of location code configured so the advertiser can select a location on the internet to place said DISPLAY AD; said advertiser module further comprises an activation module having a first set of activation code to activate said advertising campaign of the advertiser; and a message module stored on said web-based server comprising a first set of message code configured to serve an advertiser host web page to the internet surfer upon activation of said DISPLAY AD; said advertiser host page comprises a first portion having a message box and a second portion displaying said web page of the advertiser; said message box comprises a first message field and cell phone number field; said first message field is adapted to receive a message entered by the surfer; said cell phone number field is configured to receive a cell phone number entered by the internet surfer corresponding to the communication device of the recipient; a second set of message code adapted to attach said MESSAGE AD to said message; and a third set of message code adapted to send said message with said MESSAGE AD to the communication carrier at no cost to the internet surfer.

  94. No, I’m not saying that. I’m saying that this limitation is directed to nothing more than a computer configured to figure out insurance-related stuff. That’s abstract, despite the presence of the computer.

    I write claims to computer-implemented every week. This isn’t how you do it.

  95. “I wish someone could do something really unexpected and tell me how to do something besides those things that “I” was allegedly “invented for” in the first place, i.e, to hook things”

    See, you can say that about any component of invention, even Eli’s hooked picking teeth.

  96. Come on, folks. Forget Alice – If you’ve ever read Bilski then the result in this case should be no surprise.

    I love the last limitation – wherein a computer is triggered by something happening and, in response to the trigger, figures out what should be done next, using some rules and based on what happened, and tells a client what should be done next. Seriously?

  97. “Mark Lemley – whose views on the subject matter eligibility of computer-implemented inventions are also well known – was the lead attorney for the defendant.”

    So, Lemley is making much more money as a litigator. And, in his journal articles he doesn’t cite scholarship that is directly opposite his views.

  98. Maybe if Accenture was a real high technology compoany rather than “business consultants” with MBAs who add no value, the decision would have been different. This case can be distinguished on many grounds. This case presents no problems with obtaining allowance of software running on hardware so long as the harwdare is recited in the body of the claim. In my opinion, we should not even need to recite hardware in the body so long as it is recited in the preaamble. We have a continuation pending with that claim. I look forward to a final rejection and the appeal process. Maybe some small time no name attorney like myself can get a pure software claim allowed. Software is man-made and if drafted with a proper scope, is not abstract.

  99. Exactly anon. It is a naked power grab. I don’t think Lourie has any pretense left that what he is doing is applying the law.

  100. Wow, MM, great non-answer. You are such a clever little troll.

    How about addressing the substantive point that J N Gross made.

    You are such tw$rp.

  101. NSA cracks Internet privacy

    But it is only ‘software,’ right? There is no ‘property right’ involved, right?

    Too late, people will ask who was whoring whom.

  102. See U.S. Patent No. 8,521,592 that we recently had issued. Except for reciting a web based server in the body of the claim, the rest of the claim is pure sofware. I tried posting claim 1 but could not – maybe too many characters. Dennis, can you post the claim? I was forced by the Special 101 Unit to couch the claim as a “system” as opposed to a web site. How can you have a web site with no harwdare. LOL

  103. The majority opinion states “[I]n fact, other than the preamble to claim 1 stating that it is a system claim, the limitations of system claim 1 recite no specific hardware that differentiates it from method claim 8…” Aside from the ridiculous reference and comparison to method claims 8 which is not the subject of the appeal, claim 1 certainly seems to recite hardware in the body of the claim so it should, in my opinion, pass 101 and the real issue is whether or not claim 1 is novel (102) and nonobvious (103).

    Great case for future litigation and attorneys to make money. LOL. Terrible case for the software industry having to spend hard earned money on patent litigation.

  104. But, anon, you are telling me that a database of rules and system that triggers when a task is completed is not a meaningful limitation? That is outrageous. Pure and simple power grab.

    Those limitations may be old, but if so, then use 102 or 103. Lourie’s opinion is like saying that a claim to a door with hinges and a door knob is abstract.

    Just a total and complete fabrication straight out of Lourie’s power hungry brain. And, yes, I do believe that Lourie’s type is very dangerous.

  105. I guess what disturbs me so much about this type of opinion is that it is clear that this person cares nothing about fairness or the law. It is a naked power grab, so I assume that a person like this would re-start the ovens too and burn books. There is no law when opinions like this are allowed to stand.

  106. How do we actually debate this? I would really like a way to force someone like Lourie to answer some questions. I can take any circuit (I write applications for circuits and mechanical devices all the time) and render them ineligible under 101 using the same analysis Lourie did.

    The fact is that there are real objections to Lourie that he could never get over in a fair debate. That is why this is a naked power grab.

    Factually, look at the systems out there and you will see at worst the problem with the claims is that they are broad. At worst. One skilled in the art such as me could easily build the system from the specification and my knowledge. So, how can it be abstract then? It isn’t. A database, with rules that are triggered by an task completion are real limitations.

  107. If Lourie wanted to be fair, he would look at other system for a comparison. And, fairly treat the fact that this is a real system that people pay for to improve work flow. It is doing the job of a person like a giant brain.

  108. And, if you anti’s had any morals at all, you would answer the question of what claims would be valid?

    So, if I put in specific rules for the tasks, would that make if valid?

    I can use Lourie’s analysis to invalidate any claim. Easily. It is analysis that Lourie performed completely in his head devoid of real world facts.

  109. And, a final note: mechanical and biomedical patents can just as easily be invalidated under this same analysis. Come up with an abstract concept sentence and then ask what else is there with your own little brain getting to make all the decisions. Under that test all patents fall.

    And, I will say it again, all circuits would fail under Lourie’s analysis.

    Lourie: if you had any honor, you would go at this with a factual analysis as I outlined above.

    And, answer me this: what claims would be valid for the system? So, a system that people pay for that gets tasks done (helps the work flow and probably saves companies billions and billions of dollars) is not patent eligible? And your justificaiton is some imaginary analysis you carried out in your head. And, get that–this is an analysis all in your HEAD. In reality, there are real machines performing real work (just like your filthy brain).

  110. If Lourie cared about life and was not into power grabs, he would look at this claim in fair manner.

    Scope of enablement, what other systems are out there and how do they work, what is the difference between the accused device and the claims, etc. If it were, an abstract concept, whatever that means, then it would become clear from a real factual analysis that the claim was invalid in having a scope greater than the scope of enablement or invalid under 102 or 103.

    This analysis, of let me put my hand under my robes and come up with some “abstract concept” sentence and then see if there are additional limitations is crime against patent law.

  111. “As we have recently held, simply implementing
    an abstract concept on a computer, without meaningful
    limitations to that concept, does not transform a patentineligible claim into a patent-eligible one. See Bancorp, 687 F.3d at 1280.”

    How do you “implement” an abstract idea? Just madness.

  112. No circuit, no computer, could live through Lourie’s analysis. But, then the anti’s will not even address this because they are into naked power grabs and could care a less about the law.

  113. “The abstract idea at the heart of system claim 1 of the
    ’284 patent is “generating tasks [based on] rules . . . to be
    completed upon the occurrence of an event.”

    That is the nut of how Lourie rids himself of this patent. He quotes himself in Alice to support his analysis.

    As one skilled in the art (me), this does have meaningful limitations. I would say that this claim is a first generation type of system claim. I would expect that later applications would go into great detail regarding the rules etc.

    But, here, Lourie, we have a system that is working that people pay for. Your argument Lourie at best should be LizardTech that the claims scope wasn’t adequately enabled. And, the defendant can claim that their system was enabled by the specification, or the defendant can cite 103 arguments if the claims are so broad.

    This is just a naked power grab. Disgusting. Lourie you are filth.

  114. The purposeful conflation of patent eligibility and patentability is pursued because the atom bomb power of 101 is what is wanted.

  115. Surprise! Interestingly enough, not one of the 319+ comments on the Chao guest post thread indicated that the court would apply a plurality decision as a precedential one.

    But let’s just all close our eyes to that miscarriage…

  116. So, what we have is Lourie back dooring a way to say that a machine is not eligible for patentability by saying comparing it to a method.

    So, of course, if this was consistently applied all of EE would be wiped out. No more patents for Intel or AMD. But, of course, Lourie will not concern itself with consistency. Naked power grabs do not need to be consistent. It will just fabricate some new nonsense such as “this passes muster.”

  117. “Those judges came to that conclusion because the method and system claims were so closely related that the system claim essentially implemented the process of the method claim on a general purpose computer.”

    So, Lourie, how is it possible for a machine to “implement[]” an abstract concept? How is it possible for a company to deliver a product that is paid for and used by Fortune 500 companies that is implementing an abstract concept?

    Just unbelievable the naked disregard for common sense and a complete lack of caring that others can see that this is a naked attempt to legislate.

  118. So, a question for the Lourie is: you have a machine sitting there that is doing useful work that people pay for. What would someone have to claim in order for it to be patent eligible? According to Lourie it is not possible to claim it. So, that means that every machine that performs information processing according to Lourie is ineligible.

    NEWS FLASH: Lourie you are not a congressman.

  119. Wow, I watched a clip of George Carlin from 2008 and he said that power does what it wants to do and more and more in this country the power does what it wants nakedly.

    Here, Lourie has lost all pretenses of caring about the law. Alice has no precidential value, there is no test of what does the system add over of the method claims, and abstract is a judicial exception. Let’s face it: the Lourie test is “does it pass muster?” And to Lourie no information processing method passes muster.

    Oh well….just a vile human being that cares nothing of the law.

  120. Can anyone say, simply and straightforwardly, how the subject matter of claim 1 produces any surprising or unusual result or amounts to more than routine skill?

    I agree with Judge Linn in Alice that these matters are best left to the standard patentability tests e.g. of lack of novelty and obviousness, with lack of subject-matter eligibility brought in as a last resort rather than as a first port of call.

    First impression, reading the claim, is that its structure is linear, unimpressive and trivial. What was the problem that it required inventive ingenuity to solve? It is not apparent from bare reading the claim that anything more than routine analysis was needed.

    However, the right outcome for the wrong reasons is nearly as much of a disaster for practising lawyers as a decision that gets both the facts and the outcome wrong. It may be too late, but the task of Judge Rader, I submit, is to knock a few heads together and ensure that the CAFC speaks with a reasonable and consistent voice. It should not be impossible for judges of intellegence and goodwill (as I believe the CAFC judges to be) to mull things over and come up with a consistent common approach. That is what happened in the EPO Appeal Boards in their early days to the incalculable benefit of all who practice before them. The judges who issued the en banc decision in Alice should not have stopped at the stage they did: they should have shut themselves in a room for a day and said: “This is not good enough. It is our duty to debate further and delve into the underlying facts and law until we can find a common position which is credible, enables us to decide the case before us in a correct manner, and points a way forward for future cases.” That was, of course, the whole point of having an en banc reconsideration in the first place. The Supreme Court is by definition a non-specialist court, and there is no rational basis for the belief that it will come up with better answers than the CAFC (or for that matter the new strengthened appeal boards in the USPTO).

    Would the late Howard T. Markey ever have allowed the Alice decision to be handed down in the fractured state that it was? Individual opinions and reasoning are an essential of the judicial process, but sometimes also leadership and collective responsibility are needed. It is submitted that patent-eligibility has become a topic on which these qualities bave become very necessary.

  121. The logical porosity of the “you’re preempting an abstract idea” test is so easy to demonstrate. First, like every other patent considered by the PTO, there was prior art that taught and claimed similar subject matter.

    Well, apparently unbeknownst to them, EACH of these prior inventors of technology related to “handling insurance related information…” had ALSO “preempted” this same “abstract idea,” albeit much earlier than the plaintiff. And if they already “preempted” this “abstract idea,” the later inventor cannot re-preempt it.

    What this shell game shows is that this is a completely bogus, judicial invented test. Claims cannot be examined for coverage of “abstract ideas,” but rather only their specific application in a specific field. There is no meaningful way for an Examiner to define or limit what “abstract idea” a claim covers, because it is limited only to one’s imagination – in the prosecution I see to date, the Examiners are clearly trying to play games with this new test invented by the judiciary,

    So every time an Examiner raises it, I explain why their formulation of the “abstract idea” is wrong, and they always take one of two actions: 1) fold their cards; 2) “invent” a new definition of the abstract idea, and say the claim reads on that now. Its a total sham.

    I’ve yet to see a clever one say “well, the claim “preempts” THAT specific “abstract idea” falling with the claim language”

    This would crystallize and bring to the forefront what is really going on: a new judicial test that is simply defining a category of patents that it deems unpatentable because they dare to claim a monopoly on something that it considers… unworthy… a word that does not appear anywhere in the statute either.

  122. A new and novel “hammer” is related to the abstract idea of “driving one object into another” and so on…

    Dude, everything is related to everything. So awesome.

    Wait.

    What we were you talking about again?

  123. the new judicial invented “abstract idea” exclusion/perversion

    You make it sound so … dirty. LOL.

    Judges Rich and Markey must be turning over in their graves

    Judge Rich actually rose from his grave after the CAFC Prometheus decision. The Supreme Court, thankfully, knew where to find its cache of silver bulllets.

    This is a farcical test, because every patent can be reduced to some “abstract idea.”

    Maybe, if you wank really hard. But “insurance related information”? That’s orders of magnitute deeper in the deuxdeux than anybody should be digging in the 20th century.

  124. O’Reilly v. Morse, which are the cases whose facts most closely resemble those of this case.

    Sure it is! We’re only talking about the latest advances in “technology” and Morse is only a century and a half old.

  125. Rader is exactly right: the statute tells you what’s in, and is very clear

    the new judicial invented “abstract idea” exclusion/perversion has no meaningful or remotely agreed upon definition to be valid – Judges Rich and Markey must be turning over in their graves

    from Lourie, regarding the system claims: “…they fail to include limitations that set them apart from the abstract idea of handling insurance related information.”

    This is a farcical test, because every patent can be reduced to some “abstract idea.” A microprocessor is related to the “abstract idea” of handling “binary related information” and so on. A new and novel “hammer” is related to the abstract idea of “driving one object into another” and so on… this is just so much mental ma***tion that’s been allowed into the process by inept Judges bowing to large corporate defense bar interests sponsoring the likes of Lemley and the rest of his corporate lap dogs

  126. Is the law unsettled merely because at least one CAFC judge refuses to follow precedent? I don’t see how this case comes out any differently if one were to apply Parker v. Flook or O’Reilly v. Morse, which are the cases whose facts most closely resemble those of this case.

  127. Oh wait.

    It’s an insurance transaction database?

    Because computers can “tell the difference” between “insurance transaction” information and other kinds of information. Right, Randy?

    It’s always been a huge problem. Was that an insurance transaction or some other kind of information? Gosh, it’s so hard to tell.

    The Computer’s Lament: “I wish someone could do something really unexpected and tell me how to do something besides those things that “I” was allegedly “invented for” in the first place, i.e, to accelerate the processing of information.”

  128. an insurance transaction database for storing information related to an insurance transaction, the insurance transaction database comprising a claim folder containing the information related to the insurance transaction decomposed into a plurality of levels from the group comprising a policy level,

    Okay. “Decomposed into a plurality of levels”?

    Rader is content with resting his legacy on this?

    I guess that’s what happens when you got nothin’ to lose.

  129. Judge Rader’s thoughts about indeterminacy should perhaps be taken with a grain of salt: his opinions indicate, after all, that he has very strong views that one side of the subject matter eligibility battle is right and the other wrong.

    “In other words: his opinion is surely BIASED.

    And why did he not describe in detail the historical evolution of the Church-Turing thesis? Clearly he’s an ignoramus who probably wishes we were all still living in caves. By the way, living in a cave is nothing like this basement.”

    /Rader’s biggest fans off

  130. deciding what makes an idea “abstract” is “reminiscent of the oenologists trying to describe a new wine.” MySpace, 672 F.3d at 1259.

    “And so, therefore, we must imagine ourselves as children, alone and without education, trying to decide the answer in a vacuum, as if we were born yesterday or maybe a couple centuries ago, and ask ourselves, with the utmost seriousness, what would Thomas Jefferson say when presented with a watch that told him where his favorite slave would be? Deserving of a patent? I dare say, my dear friends, the answer to that question but speaks for itself! Who dares question? Only those ignorant of the tireless efforts of our nation’s Constitutionally-inspired small inventors, inspired by the Master Painter to improve upon that which was before. And what value those voices? In other words: for cripes sake why can’t I delete my Grandmother’s acccount?”

  131. “Surprise!”

    I lulz ed.

    Idk though Jason, I just read the case from where LB posted in the other thread. Seems pretty settled to me, just as it has been for the last 50 years or so, Judge Rader just don’t like them apples.

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