Chisum on Patents: Abstract Ideas

Don Chisum on the CLS Bank case:

The Supreme Court often intervenes to resolve splits among the various courts of appeal. Here a split exists within a circuit that the circuit itself is unable to resolve. The circuit judges’ varying interpretations of a body of recent and not-so-recent Supreme Court precedent riddled with fuzzy language and inconsistent results caused the split. Now, the Court has the opportunity (and the obligation) to clean up a mess that is, to a major extent, of its own making.

Read Chisum’s full write-up on the law of “abstract ideas” post-Bilski. /wp-content/uploads/2013/12/Supreme-Court-on-Computer-Software-Patents-1.pdf

132 thoughts on “Chisum on Patents: Abstract Ideas

  1. It strikes me that SCOTUS here can take the role of the Caliph who gave orders to incinerate the famous library at Alexandria that contained all the world’s knowledge. The content of that Library either confirms what the Prophet taught us, he decreed (in which case it is redundant and can safely be consigned to the flames) or it contradicts what the Prophet taught us (and so MUST be burnt because it is heretical).Here, the Constitutional Prophets taught “useful arts”, and the Library is in Munich, not Alexandria. Either the rest of the world’s GATT-TRIPS formula “all fields of technology” is the same, or it is different from “useful arts”. Which is it?I like a good bonfire. But I wonder just how many members of SCOTUS are zealous enough pyromaniacs actually to start one.

    1. You logic here suffers from your usual myopic views MaxDrei.GATT-TRIPS simply is not the US Constitution. Your attempt at derailing the difference between Useful Arts and Technical Arts is (predictably) yet another FAIL.Last time you posted on this you said that you recognized the difference. Why then do you persist in trying to make that difference disappear?Add:Your reply below combines the mundane with the ridiculous. I struggle to understand why you would even bother posting such nonsense.On what possible logical basis do you attempt to make your last question, jumping beyond the constitutional limit of useful arts?What possible point are you trying to make? Your “Just asking” may just as well be the same as you wearing a clown suit and throwing CRP against a wall to see if it sticks. Please clean up your mess.All of which, of course, does not address the question I put to you: Why then do you persist in trying to make that difference disappear? Why do you continue to persist in attempting to malign the Useful Arts designation?(and as noted previously, if you want me to define “Useful Arts” the onus is on you first to define ‘technical’ – and I do not mean the circular definition as used by the United States in its enabling rules related to the AIA – we’ve been on that merry-go-round before. – but you are indeed close in your conjecture about anything non-fine arts)

      1. We agree, anon, that the US Constitution has no mention of “technology” or “technical”. We agree that US law has no “is it technical?” test of eligibility. We agree (I think) that the test is “useful arts”. OK, so what does “useful arts” mean today? Does everything that is not the fine arts fall in the field “useful arts” or are there arts in between?If the GATT-TRIPS formula “all fields of technology” just a threshold, and not a limit, so that Member States (the USA) can at their pleasure patent other stuff going beyond technology, then can the US Courts allow patents on more stuff than just what were within the 18C Constitutional ambit of “useful arts”?Just asking.

      2. Judge Moore makes a nice point when she observes how absurd it is to categorise as “abstract” a programmed computer, within the scope of a Bilski or an Alice system claim, and asserted to be an infringement of that claim.The 58 pages of Chisum are replete with quotations from one Federal Circuit judge after another that advert to the named inventor’s contributions to “technology”. But never mind that taint of Europe, infecting the thoughts of the Circuit judges . My question to the SCOTUS justices is whether the ambit of “useful arts” is wide enough to embrace accountancy and contributions in that field, in particular, new concepts in hedging (Bilski) or in escrow accounts (Alice).anon thank you by the way, for confirming that the”useful arts” of the Constitution sets the limit of eligibility.

  2. The anti-software-patent adherents claim that, by the Church-Turing thesis, that all imperative software is a composition of functions in mathematics and hence patent-ineligible as an “abstract idea”. The following is a counter-point that either rejects that line of reasoning or, if embracing such Church-Turing analysis, opens up a scorched-Earth decimation of 200+ years of patent-eligibility of a wide variety (i.e., all!, I claim) hydraulic machines, mechanical machines, and on-die circuit-of-silicon-gates machines:All imperative software, all FPGA netlists, all on-die circuits of silicon gates, all mechanical steppers & gears, all hydraulics, and all belts & pulleys can be shown to be isomorphic to finite-state machines (FSMs). Ultimately all imperative software is in fact describing directly (if an overtly-FSM design) or indirectly (if a traditional call-tree of subroutines modifying mutable data) an FSM. FSMs meet the MoT test twice over: 1) They are machines. 2) They undergo transformations of state.When SCotUS has said that math is not patentable, it is referring to ••numerical•• formulae or composition-of-functions thereof. SCotUS has never ruled that FSMs are “pure math” that is proscribed from patent eligibility. Indeed, because innovative FSMs that need to be embodied via stepper-&-gear machines, via hydraulic machines, via belt-&-pulley machines, and via on-die circuits of silicon gates as electronic machines are in fact generally patent-eligible, it is quite clear that FSMs are not “pure math”. By the equivalence of FSMs among all of these mechanical, electronic, and imperative-software embodiments, if Church-Turing thesis is utilized to proscribe patent-eligibility of imperative software, then the Church-Turing thesis can utilized to proscribe the patent-eligibility of all mechanical, hydraulic, and on-die silicon implementations of FSMs.

    1. “FSMs meet the MoT test twice over: 1) They are machines. 2) They undergo transformations of state.” That the name of the concept includes the word “machine” doesn’t make it a machine and an abstract “state” change does not make something a transformation. Changing the value of a variable qualifies as a transformation under your interpretation.A FSM can be used to represent or describe an actual system, but it is the system itself that is significant and not its description. Is the text of a method claim patentable in its own right? In practice this may not matter, but the expression “if A then B” is readily distinguishable from “if temperature exceeds 150 degrees, then activate cooling system.”

      1. Precisely what is the wording and origin this One True & Onlyâ„¢ normative definition of machine (or apparatus) to which you refer by implication?As leading by example, I’ll go first; please follow my lead by providing your own definition. Here is a dictionary definition that seems to perfectly conform to the uses of “machine” that appear in the Patent Act of 1952:”(Engineering / Mechanical Engineering) an assembly of interconnected components arranged to transmit or modify force in order to perform useful work.”Here “force” includes electromotive force of the movement of (as well as in semiconductors, the stasis of) electrons in physics. Here “work” includes the “useful arts” among all of the centuries-old physics definition of “work”.In this standard dictionary definition of “machine”, an FSM is clearly a machine, meeting every word in letter & spirit of the commonplace dictionary definition that is widely known [from high-school & college physics classes] to a person having ordinary skill in the art. Indeed, an FSM embodied by an on-die circuit of silicon gates (without any imperative software) is in fact a patent-eligible machine and its transformation of states of silicon gates is in fact a MoT transformation, because the “arrangement of components” within the machine performed the age-old physics definition of “work” on the changed states of silicon gates, which as an outcome is a “useful art”. A congruent FSM embodied in imperative software this time accomplishes exactly the same MoT transformation (i.e., the changing of state of silicon gates) via the same FSM state-nodes & transition-arcs. If the latter [imperative-software FSM] is patent-ineligible because FSMs are “pure math” (and mere transient electrical signals via In re Nuijten), then the former [on-die silicon FSM] is likewise patent-ineligible as “pure math” (and mere transient electrical signals). What is good for the goose is good for the gander.

      2. My lengthy reply is awaiting moderation for some reason. Dennis, what is the trigger for moderation here versus lack thereof on other replies?

        1. As with the previous system, I think there’s some “special words” that trigger “auto-moderation.” It isn’t necessarily obvious or intuitive what those words might be.

      3. Here I am not saying that FSMs should overtly appear in claims wording any more than the anti-software-patent advocates of the Church-Turing thesis are saying that the Church-Turing thesis (or composition of functions or a Turing machine) be recited in claims wording.

        1. This is in response to your comment below. I can’t reply until it is approved.Your definition of “machine” still requires semiconductors or some other physical structure to give effect to a FSM. The intent of my original comment was solely to challenge the premise that a FSM, as such, is a machine or a transformation. Accordingly, simply pointing to an FSM is insufficient.In any case, the MoT requires a “particular machine”, which is a narrower requirement that I don’t believe has been addressed.

          1. Then it is equally invalid for the anti-software-patent adherents to evoke the Church-Turing thesis that is not overtly recited in extant claims. What is good for the goose is good for the gander.

            1. What is good for the goose is good for the gander.Right, but calling a cat a “goose” doesn’t make it a goose. The point is that a particular “new” computational device could be described exactly as other machines are described. It’s just that it would take an enormous amount of work so nobody would ever bothering doing it. Claiming the structure of physical media comprising “new” instructions for a computer would be easier. Again, nobody will bother to do that because the claims would be too narrow and, besides, you’ve got copyright protection. As you know, Turing “machines” aren’t particular machines; they are mathematical models of machines. You are aware, of course, that “In the original article, Turing imagines not a mechanism, but a person whom he calls the ‘computer’, who executes these deterministic mechanical rules slavishly.” And therein lies the rub (one of many) underscoring the silliness of granting patents to old things that process information, whether that information processing is perfomed “slavishly” by a “computer” (person) or a “computer” (an old machine known to speed up information processing when it’s programmed to do so). Unless you’re describing the structure of that machine, you’re really just claiming “new functionality” for that old machine. And claiming “new functionality” for an old machine has never been permitted without description of the structure of that machine. And for good reason: it turns “inventing” into a joke.I had to laugh the other day when I read on Gene’s blog about the “enormous investments in time, money and ingenuity that [patent trolls] have made in their inventions”. I guess what consitutes “enormous” has shrunk over the years. A typical patent troll just looks at a computer-implemented service, finds a flaw or an improvement in the functionality of the service, and files a patent that describes the improved functionality, preferably in a manner that will capture some suitably deep pockets once the patent is issued. How much time and money does that take? Answer: very, very little. Certainly one does need to have some free time and some spare money to spend, but that’s something that so-called “small inventors” have plenty of. Because they’re already in the top 5% of income earners in nearly every instance. A lot of them are experienced patent lawyers, for cripes sake.

            2. “and, besides, you’ve got copyright protection.”LOLAhhh, Malcolm showing his disregard for the differences between what patents and copyrights protect yet again.

            3. The goose & gander are the quite-analogous injection:1) of the Church-Turing thesis of the equivalency of imperative software instructions to a composition of “pure math” mathematical functions, where such Church-Turing-thesis language is not extant in the claims’ actual words;or2) of the equivalency of numerous stateful machines of various technologies to FSMs that are arguably machines that meet the dictionary definition in engineering & physics of “expending energy” to “perform work” and that arguably do undergo a physical-entity transformation in the (electron-)holes versus electron(-presence)s, where such FSM-equivalency language is not extant in the claims actual words.1 versus 2 above are not apples versus oranges, not tractors versus butterflies, not goose versus cat; 1 versus 2 are in fact two polar-opposite sides of precisely the same coin pointed in opposite-conclusion directions: one invalidating software patents as “pure math” and the other affirming their validity under the now-golden MoT test, where both 1 & 2 utilize the same (perhaps-valid in court or perhaps-invalid in court) technique of injection of the lessons taught by math & science into claims that do not recite those concepts in letter or spirit.Malcom, The one area where SCotUS, FAFC, BPAI, anti-software-patent adherents, you, and I agree is that claim language must not be interpretable to preclude human-beings from accomplishing the patented method. For this reason, I am horrified by supposedly-professionally-written claims language whose sole attempt at narrowing the scope of the patent is “computer-implemented”. True, some patents might in the description clearly demarcate the electronic computer that is intended in the claims. But the vast majority of the ones whose sad attempt at MoTish claims language recites “computer-implemented” (or other words of that gist) as some sort of magic-words boilerplate mimicry of other seminal patents do not even bother to overtly demarcate the covered architecture of “computer”. Is computer a stand-alone microcomputer from the 1970s and early 1980s prior to (wide deployment of corporate) LANs? Is a computer a client-server? Is the “network the computer” in the Sun-Microsystems-Scott-McNealy sense?

            4. Yes, but “computer” in very old patents specifically meant a human-being who manually performed computations. Hence, “computer” is a bad choice of words in claims language without the description overtly teaching the intended architecture of computer-machine for which the monopoly is to be granted. Quite often the description does not narrow “computer” at all, so that the patent is as broad as possible. Unfortunately, no narrowing whatsoever causes the monopoly to be granted on human-being computers as well, which begets the purely-mental-steps analysis that (correctly) unravels patent eligibility.

            5. “Yes, but “computer” in very old patents specifically meant a human-being who manually performed computations. “Do you think that such a definition would fly in today’s understanding of the art?Look up the word anthropomorphication. It’s a great word when you realize that today’s understanding in this particular art does not include the human manually performing computations.

            6. But why be sloppy and run the risk of such interpretation (and such needless avenues of Sophistry debate)? Why not forestall such costly-billable-hour debates in patent-prosecution and in court by at least using the term “computer-machine” or preferably overtly reciting assemblages of particular machines for which the monopoly is to be granted:1) stand-alone computer-machine with processor, DRAM, display, persistent writable storage medium, etc;2) client-server or peer-to-peer 2 or more computers with a packetized-protocol-based communication medium connecting them, etc.;3) whatever other apparatus-assemblages the inventor seeks the monopoly to be granted on?By the way, the drift over the decades of “computer” being solely a human-being to “computer” being customarily a electronic-physical machine would be the converse anthropomorphication: the later mechanization of a former duty of a human-being. Anthropomorphication is customarily the reverse direction: the (fanciful) application of human aspects to already-extant non-human entities (e.g., animals, machines).

            7. With all due respect, the understanding of the art is not sloppy and only those attempting sophistry are the ones trying to use such an outdated definition.My use of the word anthropomorphication fits as some are trying to misuse the terminology in the human sense.Machines simply do not think.No need to try to twist the understanding of the art field into anything but what it is.

          2. “In any case, the MoT requires a “particular machine”, which is a narrower requirement that I don’t believe has been addressed.’But it most definitely has – See Alappat.

            1. If I understand you correctly, which is unlikely, are you claiming that performing a method on a machine programmed to perform that method is tied to a particular machine?

    2. FSMs that need to be embodied via stepper-&-gear machines, via hydraulic machines, via belt-&-pulley machines, and via on-die circuits of silicon gates as electronic machines are in fact generally patent-eligibleThere’s a really big issue that you are ignoring. Claims to the first few machines you listed invariably (if they are expected to be enforceable) “directly describe” the physical structures of those machines that distinguish them from the prior art and which are responsible for the various functionalities/utilities described in the application. That’s not how the typical computer-implemented “invention” is described. It’s described as a new function, without reciting any novel structure. Of course, if computer-implementer applicants are willing to show in their specification the specific physical structures that directly correspond and are responsible for the new recited functions in their claims, then what is “math” and what is not “math” becomes irrelevant.traditional call-tree of subroutines modifying mutable dataPretty sure you can’t patent a “call-tree.” Unless of course you fool somebody by calling it something else. And “modifying mutable data” would seem to be a non-qualifying “transformation” under the MOT. Calling data by another name isn’t a qualifying “transformation.” Neither is putting the data into an algorithm that spits out “different” data (or the same data, depending on the algorithm and the input data). That’s just math. Now you think it makes a difference if you use an old machine to perform the algorithm? Seems unlikely.

      1. I am not ignoring it. (Indeed, I think that, in this era of no physical storage media for imperative software downloaded from servers, there is a post-Beauregard claim-type based on FSMs that has not yet been explored & vetted.) The anti-software-patent Church-Turing thesis line of reasoning goes: I can transform all imperative software to a composition of “pure math” functions that are neither overtly stated nor evocatively implied in the extant language of a software-patent claim. If the anti-software-patent line of reasoning gets to inject unstated Church-Turing thesis replacement language/concepts into claims, then the FSM school of thought gets to do the same thing, arriving at a quite different opposing-viewpoint outcome. Or if FSM school of thought is proscribed from such injection of unstated isomorphism into extant claim language, then likewise the Church-Turing-thesis school of thought is proscribed from such injection of unstated isomorphism into extant claim language. What is good for the goose is good for the gander.Of course “call-tree of subroutines modifying mutable data’s accumulated state” is not the term of art that would appear in claims, but “call-tree of subroutines modifying mutable data’s accumulated state” is what is implicitly meant by “computer-implemented method” and other commonplace(-nowadays) claims language. It is this implied meaning with which the anti-software-patent Church-Turing-thesis analysis finds fault as “pure math”. I was trying to cut straight to the chase scene for the impatient reader.

        1. I am not ignoring it.Yes, you certainly are ignoring the issue of claiming new functions in the absence of new physical structure. You can argue that you are entitled to ignore it (which you attempted to do) but you are nevertheless ignoring that issue. As a friendly reminder, that issue doesn’t “go away” when you ignore it. In addition, phrases like “FSM school of thought is proscribed from such injection of unstated isomorphism into extant claim language” are probably as counterproductive for your goal as anything else you could possibly write.You can insist until you are blue in the face that your “call decision tree” has “just as much physical structure” for patent law purposes as a patentable description of a new analog time-keeping device. That doesn’t make it true.Moreover, when “the anti-software-patent line of reasoning … inject(s) unstated Church-Turing thesis replacement language/concepts into claims”, there are no specific structures “replacing” the claim language that we see in computer-implemented claims. Rather, the argument being made (as I understand it) is that programming is stringing together algorithms. But the physical structure corresponding to the “math” is not ascertainable from the recited functionalities that appear in the claim. What is the physical structure corresponding to “capable of alerting me with a yellow star when an email is sent to me from a second cousin and a red star when the email is sent from my brother-in-law, unless the email is sent from Guam”? The answer is that the structure of the machine with this capability is unknowable. All that is knowable is that some skilled person can write a program that will cause at least once specific computer to function in that way. But that was certainly known before I wrote down that “new non-obvious” functionality. What also is unknown, of course, is the precise algorithms and instructions that will allow the program to actually work on a specific computer (say, the computer I’m using right now) without causing my computer to freeze up. But the software proponents insist that the function is enough for them to get a patent on everything with that function, in all operating systems, for the next twenty years.I think that, in this era of no physical storage media for imperative software downloaded from servers, there is a post-Beauregard claim-type based on FSMs that has not yet been explored & vettedSo you think you can obtain an eligible claim to a set of instructions for a programmable computer where those instructions are divorced from physical media? Please share with everyone the magic words you have in mind. I’m very skeptical. On the other hand, I’m glad you’re thinking ahead to the “post-Beauregard” world. That’s probably wise. I was trying to cut straight to the chase scene for the impatient reader.You need to try a lot harder. Imagine you’re writing for a judge’s clerk who’s been programming computers all his life but who decided to major in political science because he couldn’t stand the pretentious nerds in his comp sci 101 class.

          1. “On the other hand, I’m glad you’re thinking ahead to the “post-Beauregard” world. That’s probably wise.”I know right?

  3. I treat abstract ideas the same as obviousness rejections. If its marketable and produces revenues for the conciever then grant the patent. Abstract ideas are ones likley to never be filed in the first place because they are worthless like picasos paintings and other works of fiction like the acuracy of published invention history. Of course they would be granting the patent not to the filer in most every case because thats me that genuinley concieved from my observations. i am just a indegency basket case with no cival rights in the courts because of it. Very reverse justice the way this system was set up I wonder when they will realize there huge blunder. Lack of inventor security provisions in legislations and physical security for top inventors is also historically intentionally nonexistant and is continueing to be ignored by congress intentionally to date.

  4. Just finished Don’s “monograph”. Very interesting summary of what’s going on. Fairly unbiased, though a small hint of patent protectionism seeps through in places. The way I see it after having finished his rundown is that there are simply some old hold outs that don’t want to get with the times, or cannot, since they are not mentally equipped to deal with the correct standard. The whole “consult the statute after the other way of doing things failed” is typical of this viewpoint. They can’t (or more likely don’t want to) do things the right way so they want to just do things the wrong way, and specifically the most basic wrong way.

    1. Very interesting summary of what’s going on. Fairly unbiased, though a small hint of patent protectionism seeps through in places.I felt the same way. I think he’s too kind to Rader. In any event, far kinder than the Supreme Court is going to be. I think even Rader regrets the way he scribbled out that Alice opinion.

      1. “I think even Rader regrets the way he scribbled out that Alice opinion.”"Thinking” without any basis in reality is not the way to go through life, son.

      2. ” In any event, far kinder than the Supreme Court is going to be”Sadly. Or joyfully. Or both. ” I think even Rader regrets the way he scribbled out that Alice opinion.”One does have to wonder. But then, he also probably remembers his exasperation. Knowing he was on the cusp of the greatest failure of his career.

  5. Patentee Alice’s proposed question for cert: Issue: 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.Gosh, that’s terribly worded. I mean, the answer to that question is certainly “it depends”, isn’t it? I’m not aware of anyone that has suggested that any patent claim that recites “a computer” should be ineligible.Also, unless I’m mistaken, some of Alice’s own claims at issue in this case are directed to a “computer program.” Computer programs themselves aren’t “computer-implemented inventions.” Computer programs are instructions written for programmable computers. They are algorithms that control how the computer responds to inputs. People typically write them and they are then converted, using old conventional methods, into a machine readable language that may be archived on conventional, well-known media (exactly as a recipe could be archived for use by a chef) or transmitted as a patent-ineligible signal.The real issues, which Alice (and certain members of the Federal Circuit) apparently wishes to dance around (or away from, as fast as possible) are : (1) whether new functionalities for old programmable “systems, machines, or article of manufactures” become eligible for patenting merely by reciting the new functionality and the old programmable system/etc, in which case the claims are effectively claims to the new computer functionality itself; and (2) whether the otherwise ineligible acts of receiving information and then converting the received information into some different information become eligible for patenting merely because an old, conventional computer (or computer system, or computer media) is performing the data conversion.Those are interesting questions that need answering.But there isn’t much doubt about the general contours of the outcome of this case, is there? The Supremes are going to find these claims ineligible but, in their inimitable bumbling clumsy way, they will leave the door open for some other “software” claims to remain eligible. Maybe if they can figure out a way to do it, the Court will also kick Diehr in the shins because that turkey really needs to be put to bed. If ever there was a time when claims to “computerized” methods of “automatically” doing old, obvious stuff (check the temp! wow, it’s ready! now the computer will actually tell the door to open) were considered worthy of patent protection, that time is long past.

    1. “Gosh, that’s terribly worded. I mean, the answer to that question is certainly “it depends”, isn’t it?”Obviously.

    2. “But there isn’t much doubt about the general contours of the outcome of this case, is there? The Supremes are going to find these claims ineligible but, in their inimitable bumbling clumsy way, they will leave the door open for some other “software” claims to remain eligible”Almost certainly unless perhaps me or you amicus their hand through it all so they can make a clear cogent decision.

    3. Malcolm,Exceptions to the Printed Matter Doctrine.(yes, we all know that you have volunteered an admission against interests in this regards, but please be (or at least try to be) intellectually honest and STOP posting CRP that does not recognize what you have admitted to be controlling law)

      1. Exceptions to the Printed Matter Doctrine.Are you trying to make some sort of argument or response to my comment? I’m not aware that the Supreme Court has opined on the “printed matter doctrine” and it’s relationship to 101 jurisprudence (or 103 jurisprudence, for that matter). So tell everyone what point you’re trying to make and why it will matter to the Supreme Court.

        1. What is the controlling law?Why is it controlling?Come Malcolm, you have volunteered your admission of this knowledge previously.Why then the dissembling in your posts that lack acknowledgement of this controlling law?(and please, lose the canard of Supreme Court opining on something in order to matter – the far vast majority of law has not been opined upon by the Supreme Court and is no less real – at least on this Earth).

          1. the far vast majority of law has not been opined upon by the Supreme CourtThat’s nice. Tell everyone what you meant when you typed “Exception to the Printed Matter Doctrine” and tell eveyone why the Supreme Court will care.

            1. we both already knew you would not give answers, right?Keep digging. Eventually you’ll get to the creamy center where, I suppose, you’ll start rambling on about the “n-word” or something equally nutty.

            2. Malcolm,You are doing that Accuse-Others-Of-That-Which-You-Do thing again.Pointing out the FACT that you have not answered a question is in no way “digging.” On the other hand, you continuing to thrash about without actually answering can be construed as “digging.’Why don’t you just answer the question?

            3. Pointing out the FACT that you have not answered a question is in no way “digging.”Ooh, golly, when you put “fact” in all caps it makes it so much more persuasive. Try italics and bold next time!

            4. ry answering the questionYou’re the guy who posted some non-sequitur about “exceptions to the printed matter doctrine”, followed by your usual insults and lies. Get a life.

            5. That’s not an answer Malcolm.And my post surely was not a non-sequitur. You went off on your robot chef type rant which is a clearly intellectually dishonest position given your admissions against interest. I merely reminded you of your admissions and asked that you post in conformance with what you yourself have voluntarily admitted as controlling law.You seem to have some trouble conforming to what is otherwise well understood ethical treatment of existing law.

    4. Malcolm, the test really is the MOT. If a process ends in a number, it is abstract. It is simple as that. We should not investigate whether the prior steps are new. Even if they transform, the claim as a whole still claims a number. What the number means is entirely in the mind.Mayo ended in just such a number, so it was abstract regardless of anything else. Ditto Bilski. Ditto Benson. Ditto Flook. Ditto, Ditto, Ditto.There are no exceptions.

      1. the test really is the MOT. If a process ends in a number, it is abstract.Unless the process recites the use of a patentable machine that is (properly) structurally described. If I invent a new machine and describe that machine structurally, and the machine is useful, it doesn’t really matter what it “spits out”. That’s the “or” part of the MOT. It’s important.But if there is no such machine recited in the claim and all the process does is spit out a number without any transformation of matter: yeah, that’s almost always going to be an ineligible abstract process. I can’t think of an exception.

          1. you have forgotten your volunteered admissionRight, and you forgot to stop beating your wife.Fun game. You’ll start the next round, as usual, I assume?

            1. Y A W N – nice merry-go-round Malcolm.Of course, the difference between you saying something (against me) and you saying something against your own interests is a point that you leave out of your ‘game,’ but it is not a point lost on anyone else.

          2. you have forgotten your volunteered admission against interests: “configured to” is structural language.No, I didn’t forget anything. I never said what you are claiming that I said. I’ve told you that many times before but you insist on putting these words in my mouth.I could do the same with you, endlessly, every day, ten times a day. I wonder if the moderators of the blog would appreciate that. They seem to be comfortable with allowing you to get away with it. Instead, I’ll just make a copy of this comment and every time you fabricate some nonsense about some “admission” that I made I wil repost it. Does that sound good to you? I hope it does.

        1. Malcolm, a new machine is claimable as such. I am not aware of a new machine claimed as a process that outputs at the end of the process a number that would be eligible. Can you give us an example? Take for example an analog integrator that has a new circuit that performs a new function, call it X. I can claim that easily as a machine. Just describe the circuit. As a process, can I claim the mathematics per se? I think not. So I am struggling just how this claim to mathematics become eligible? Is this an example of Morse’s claim 1, I claim all machines that do X? An example would help.

          1. Take for example an analog integrator that has a new circuit that performs a new function, call it X. I can claim that easily as a machine. Just describe the circuit.Right, and if that machine (which you call “a circuit”) is structurally described and non-obvious in view of the structure of similar machines in the prior art, you can get a patent on that machine.The point that this properly claimed machine (emphasis again on properly claimed) can be used to process information is not relevant. For similar reasons I can get a patent on a non-obvious lens, as long as I describe it’s structure in the claim. The fact that “looking at something” is ineligible for patenting doesn’t matter. I can also get method claims that recite the use of the new lens, even though there is no transformation that would satisfy that prong of the MOT test. It’s the new patentable machine (the telescope) that gets the claim over the 101 hump.If we wished to carry the analogy further, we could imagine the “standards” in the computer-implemented arts being carried over into functional method claims for “looking at stuff, wherein you point a telescope at stuff, wherein the telescope makes the stuff X times bigger, wherein the stuff is [insert some crap here that nobody has described looking at with a telescope before, e.g., "a robot car on a Nebraska highway within ten minutes of Omaha city limits"]. That’s troll style crap right there. That’s how the game is played.

      2. “regardless of anything else. Ditto Bilski….There are no exceptions.”No exceptions like the actual HOLDING of Bilski: MoT not required.Come Ned – you are being excessively wrong here.

          1. Ned, it is a clear and unequivocal result of what you said. I am merely pointing out the obvious to you and giving you the chance to correct the obvious mistake you have made.

    5. ” I’m not aware of anyone that has suggested that any patent claim that recites “a computer” should be ineligible.’How about those claims that recite “a manufacture” ?

      1. I’m sorry but I don’t understand your question. You copied some text of mine that I think is very clear. I’ll make it even more clear: I’m not aware of anyone that has suggested that all claims that recite “a computer” are (or should be) ineligible.But that suggestion would appear to be the “negative pregnant” in Alice’s question for cert.The situation is just a tad more nuanced. I suspect Alice is aware of that but perhaps they are hoping for an opinion as blunt and simplistic as Rader’s opinion. That’s not going to happen.

        1. LOL – you don’t understand the question?Which word is giving you difficulty?(geesh, from the professed Master of English as a first language, not understanding such a simple question is a bit alarming).”an opinion as blunt and simplistic as Rader’s opinion. That’s not going to happen.”Just like it didn’t happen in Bilski, right? Oh wait, you predicted the end of the Diherbots in Bilski, didn’t you?

          1. you don’t understand the question? Which word is giving you difficulty?It’s the lack of words in your question that’s giving me difficulty, and the fact that your question seems unrelated to the text of mine that you copied.It’s somewhat amazing that you would need that to be pointed out to you. But there you are.

            1. There is no lack of words in the question – in context. Try again. This should not be so difficult for one such as you as a master of English as a first language./eyeroll.

  6. I agree with Judge Linn in CLS where he said that “this court may not change the law to address one technological field or the concerns of a single industry,”

    1. Well, the CAFC certainly saw fit to drag in a whole technological field and industry that wanted nothing to do with them, has no plausible connection to the statute, and sees no benefit from the patent system in State Street and Alappat.

      1. Owen,You continue to unimpress, here thinking that the CAFC dragged a “whole technological field and industry” into patent law, when such was ALREADY within the ambit of patent law.It is clear that you have an anti-software patent bias and that you cannot reason objectively on the subject. Rather than continue to ruin any credibility that you might want to project to your (potential) legal customers, I suggest you educate yourself properly (which means more than following the lemmings up the hill).

        1. It is clear that you have an anti-software patent bias and that you cannot reason objectively on the subject.Right. If Owen was “objective” and “unbiased”, then he’d agree with you. Of course!The fact remains that most people who program computers don’t support software patents and most people who have their own businesses don’t support business method patents. I suppose that’s because we’re all “thieves”, right? Or is it because we don’t “respect personal property”? Or we all just lack the “intelligence” to understand this stuff, unlike the tiny, tiny fraction of the public who rabidly oppose any and all attempts to minimize patenting in those areas.

          1. It is not the disagreement, Malcolm – but in how the disagreement is presented.We’ve covered this many many many times in the past.Pay attention.(and leave out the mis-characterizations – oops too late)

            1. It is not the disagreement, Malcolm – but in how the disagreement is presented.And you’re showing Owen the way to present disagreement? You see that, Owen? You need to type your conclusions in ALL CAPS, without supporting arguments, and insult people’s intelligence. That’s the anon way.

            2. without supporting arguments…?LOL – Have you EVEN BOTHERED to read the article by Chisum anchoring this thread yet?Really Malcolm, even for you this is pitiful Tro11ing.

  7. On page 56, Chisum disagrees with treating abstract ideas as automatically being part of the prior art. However, maybe they should be and the entire issue decided on 103 (and 112) grounds where for example simply computerizing a calculation is an obvious contribution??? But doing something more may not be obvious.

    1. Not a fan of that approach for (at least) one very basic reason: such things are not conclusively part of the prior art.Take a course in the history of science and technology to see how many of these types of ‘abstract ideas’ created by man in order to model nature have been shown to be simply wrong. You can start with Einstein and Michelson and Morley overturning the aether.(hint: the map is not the land)

            1. Nice article. Right up your “kill math” alley. Wasn’t that the name? It was iirc. Anyway, they sure got the part about “The Mathematical Universe Hypothesis” correct. All he has is a hypothesis, which he has coupled together with his sincerely held beliefs sans evidence. It reminds me of the hypothesis expressed in Alappat and repeated here quite often actually.Which, tbh, I kind of wish he’d be demoted to McDonalds until he learned what science is :[ But then when he learned he could get his job back.

            2. You quite miss the point 6 that the map is not the land, that these man made models are not actually nature’s laws.There was plenty of ‘evidence’ for the aether.There was plenty of ‘evidence’ that the earth was the center of the universe.’Oops.’ They are not nature’s laws after all, as they are not even correct. So the idea of making such things be de facto 102 items is likewise simply wrong.For all your wanna-be understanding of cosmological theories (btw, it was not just a newer attempt at a theory of gravity – string theory is so much more), you are pretty thick when it comes to what all of this effort means in regards to the real world.

            3. “You quite miss the point 6 that the map is not the land, that these man made models are not actually nature’s laws.”No, I get that “point”. I also get everyone else’s point that you think that because of your adopting the hypothesis in your day to day outlook. “There was plenty of ‘evidence’ for the aether.”Seems like I’ve reviewed some of those papers and I don’t recall there being “plenty”. Perhaps you can remind us what sound evidenciary footing the theory of aether is on. “‘Oops.’ They are not nature’s laws after all, as they are not even correct. So the idea of making such things be de facto 102 items is likewise simply wrong.”Meh, aether is still an abstraction brosefus. It’s fine to put it under 102. “btw, it was not just a newer attempt at a theory of gravity – string theory is so much more”I’m not talking about string theory ta rd. See this is the problem anon, you don’t even understand what I’m talking about when I talk physics with you. The difference between me and you here is similar to the difference between Lawrence Krauss and William Lane Craig. One is edumacated on the subject and the other is simply not. And the other person tries to substitute his edumacation in other areas for edumacation in this area. In William’s case that is theology. Similarly for you that is a heavy emphasis on comp sci. “you are pretty thick when it comes to what all of this effort means in regards to the real world.”As of right now it means precisely jack squat. Just like a gazillion other theories. As the evidence mounts then maybe, maybe, someday it will have a relevant effect. Which is of course what the rest of serious physicists will tell you. If you’d listen.

        1. Yeah I saw that linked from yahoo the other day. It’s just one more article in the line of the universe as a hologram theory I’ve brought up here at PO over the years. It’s one of the underpinnings of some of the newer attempts at the theory of gravity.

  8. I agree with Chisum. The Supreme Court has been anything but clear, declaring in Bilski the claims were abstract without any real hint as to why, and referencing a preemption test that makes no sense whatsoever and never has made any sense as that is not a 101 issue, but a 112 scope issue.MOT. MOT. MOT. MOT.That is the test, the only test and nothing but the test, so help me — egad.If the claims fail the MOT, the presumption should be that the claims are ineligible with the burden shifted to the patent owner to prove eligibility.

    1. Problem is, the MOT test simply reframes the question of abstractedness in different words. The CAFC has stated that in order to pass the machine prong of the MOT test, “the use of a machine must impose meaningful limits on the claims’ scope”. I fail to see how the MOT elucidates any issue; it seems to me that the “meaningful limits” are just the logical negation of the equally fuzzy concept of “abstractedness”.

      1. The CAFC has stated that in order to pass the machine prong of the MOT test, “the use of a machine must impose meaningful limits on the claims’ scope”. I fail to see how the MOT elucidates any issueMy understanding of the MOT test is that, for a method to be eligible, it must (at a minimum) recite either the use of a separately patentable machine or the method must directly cause (as opposed to require) a physical transformation of matter (as opposed to a transformation of informaiton). Note the phrase “at a minimum.” There are other considerations (e.g., Mayo considerations) before a final determination of eligibility can be made but in the case of a method reciting a new (separately patentable) machine, the issues that concerned the Court in Mayo will nearly always be absent, i.e., the recitation of the new machine in the method claim means that nobody who is practicing the prior art will be turned into an infringer merely for, e.g., thinking a new thought (which is what happened in Mayo). The question, then, will turn on whether that “new machine” itself passes 101. A similar analysis would apply in the case of method claims reciting separately patentable compositions of matter.

        1. separately patentable…. itself passes 101…You need to restate that Malcolm, Try again without conflating patent eligibility (the 101 question) and patentability (102/103/112 etc).

          1. Night, One sees a computer on a table. It has no inputs. It has no outputs. We observe that it is executing a program that takes a number and transforms that number. Of what utility is the computer? It generates heat.We always seem to end our conversations at this point. You never seem to acknowledge that the computer must be linked to the real world to be useful in a meaningful way. You might add that computers are always used usefully. But then why is it that you see the need to avoid claiming the computers actual use? A computer that aids a molding process has been held eligible in Diehr. A computer that simply generates a number was held ineligible in Flook. This no not about whether information transformation is potentially useful. It is about claiming a use.

            1. A computer that aids a molding process has been held eligible in Diehr.That did actually happen. What should also be recognized is that it’s 2013 and the computer-aided “automation” of any old process (e.g., curing rubber), where the computer performs an old calculation (e.g., the Arrhenius equation) known to be relevant to the process, could never, ever be patented and enforced today. It should never have gotten out of the PTO in Diehr’s time and the patent system would be far better off today if it hadn’t.

            2. Oh come on brosefus the actual claim in Diehr isn’t so bad. The only reason it even causes a ruckus is because they wrote out the equation instead of just leaving it out.

            3. “It should never have gotten out of the PTO in Diehr’s time and the patent system would be far better off today if it hadn’t.”Unmitigated and unsupportable (by law) claptrap.

            4. *What should also be recognized is that it’s 2013 and the computer-aided “automation” of any old process (e.g., curing rubber), where the computer performs an old calculation (e.g., the Arrhenius equation) known to be relevant to the process, could never, ever be patented and enforced today.*Of course it could. Probably that exact patent could be pushed through with a thesaurus and some appeals. And you could enforce it easily enough by incorporating in Nacogdoches.Just last year Apple won a nine digit verdict on a patent for a device that uses an image of a sliding switch on a screen. The patent had been through six or seven rejections and the field is full of prior art; heck, Youtube had prior art so you don’t even have to read it. NewEgg just lost a case against a troll with a $50M dollar patent filed in 1989 claiming the combination of two techniques invented and disclosed in 1976 and 1987 and originally intended for use together.There are cases in the news every day. Soverain. Ultramercial. Alice. Uniloc. All established, known processes where the computer performs a simple, known calculation. Hundreds of millions of dollars already paid, even if the final result in some case is eventually a ruling of invalidity.

            5. “It has no inputs.”"It has no inputs.”Care to rethink that statement, Ned? Think of the Grand Hall experiment – how do you get from a machine with no software to a machine configured with software “with no inputs.” – Magic fairy dust?

            6. anon, I never said “no software.” I said no inputs and no outputs. It is simply a programmed machine that executes instructions. They simply take data from registers and return data to registers. That is all a computer has to do to execute. So it sits there, running, executing, consuming electricity, generating heat, but nothing more. Such is not eligible because it is not useful.

            7. That’s just it Ned – you have ignored the transformation of a simple machine to a machine programmed with software. That’s the crux of your problem – a simple oversight, but one you seem unwilling to rectify. You keep on ignoring that critical difference between a machine without the software and a changed machine that has been configured with the software. Until you are willing to recognize this critical oversight, your posts are simply deficient and not worth considering.

            8. anon, once computers had no stored programs. Soon after WWII, someone invented stored programs. After that, stored programmed computers were old. They do not change their state depending on the information content of their programs — unless the information is “fixed” to the computer so that it become part thereof.

            9. The general “idea” of a stored program may have become old. But only (and exactly analogously) old like the “idea” of reconfiguring various types of atoms into various molecules.What each “old idea” but newly configured molecule actually is invented to be very much depends on the new configurations.You are very much mirroring the Morse/House position that all future changes and improvements to the machine are captured with the mere idea that machines can be alternatively and easily configured. You are trying to eradicate a half century of inventions merely because reconfiguration was made simple, regardless of what those new inventions actually were or did.And again you are off into the weeds with the “fixed” red herring – Remember – with “no inputs” you have no new machine components being added. With no new machine components being added, you cannot achieve the state of the configured (newly configured as each new invention with new software as claimed).Once again, you are avoiding the notion of the exceptions to the printed matter doctrine.add: “information content” alone is meaningless and your use of the phrase is misleading. It is the functional relationship that matters – and this is exactly why you have remained silent on the exceptions to the printed matter doctrine. But Ned, you need to realize how much damage you do to your position by omitting this facet of the discussion when you post your views. You should realize that I will point out this problem of yours and then you are left looking like you have either attempted to sneak a fast one by, or you are left looking like you just don’t know what you are talking about. You simply cannot ignore this counterpoint in the discussion.Your silence screams so loudly that I cannot hear anything else.PS: please please please do not attempt to tell me that the particular programming does not matter like 6 attempted with his vapid “Brittney Spears is the same as Microsoft’s operating system” gambit.

            10. I guarantee you that even the pioneers of a stored program computer would never believe that they invented a new stored program computer each time they loaded it with a new or different program. You theory that such is a new machine is preposterous, and you know it.

            11. Not only is it not preposterous Ned – it is controlling law.And you have not commented on the perfectly analogous problem your view creates with all chemistry….Add: “the pioneers of a stored program computer would never believe that they invented a new stored program computer each time they loaded it with a new or different program.” – Actually, that is exactly what they were aiming to do.

            12. Hardly. Go down to the corner and ask anyone if their computer is a new computer when they install a new app. I’d like to see the results.Next, ask your wife whether you are a new man each time you read a book.

            13. The corner is not the arbiter of law, Ned.Add: Did you misplace your Alappat yet again?Come man really – get your act together.And you still have not addressed the law according to the exceptions of the printed matter doctrine – amongst many of the counterpoints I have raised.A human reading a book? Really Ned – machines are not humans: anthropomorphication.

    2. “presumption should be”Cite please.Oh wait, you are back making up Ned’s law again and ignoring the actual holding of the Supreme Court.Carry on.

      1. Anon, the MOT is the only test the SC has ever used to approve a claim involving a programmed computer. If it passes that test, OK. If it fails, then what? I think it is presumptively ineligible.

        1. Sorry Ned – the only way you can arrive at your presumption is by directly going against the holding of the Supreme Court.Intellectual integrity should stop you from doing so. I will constantly remind you of this.Add: Ned, presumption allowing rebuttal or not is immaterial to the Supreme Court holding that you are attempting to go directly against. If MoT is not even needed, then it cannot de facto switch any burden. You are just making up IMHO Ned law again..(btw, which claim involving a programmed computer was approved by the SC that you reference in your comment? Why have you not answered me when I use your “Point of Novelty” idea with that claim? Once again, Ned, it is the selectivity of your responses that render immense damage to your position. All I need to do is point out your inconsistencies and when you say nothing, well, you lose)

  9. The most recent stab the Supremes took at clarifying matters was in Bilsky. (Mayo was hopelessly vague.) The result was 9-0 in favor of the government, but that’s a little misleading. The actual opinions went 4-1-4, with Scalia in the middle joining the vaguest parts of each divergent holding. Furthermore, each of the four vote opinions could have stood to be more specific.So, even though justice Kagan is new, I wouldn’t get my hopes up about “the opportunity (and the obligation) to clean up a mess” at the Supreme Court. Most likely they’ll be just as confused as the CAFC. I predict a 9-0 result with 4-1-4 reasoning once again.Then the three new CAFC judges confirmed since Alice this summer will be the best chance for clarity. Yup, Taranto, Chen, and Hughes are a much better bet here than wishing for Scalia or Kagan to break character suddenly.

      1. That I suspect would have been a disaster. The new judges are almost certainly going to align with Lourie. The timing of this cert is fortunate.

    1. The most recent stab the Supremes took at clarifying matters was in Bilsky. (Mayo was hopelessly vague.)Of all the recent 101 decisions (Bilski, Mayo, and Myriad), Mayo is the least vague in the sense that it very plainly wiped out a giant class of troublesome method claims, e.g., claims in the form [oldstep]+[newthought] and did so with a minimum of wasted verbiage and internal contradiction.Mayo didn’t answer every question but it answered a very important one: the mere recitation of some generically eligible limitation in a claim is not the end of the 101 analysis (in other words, the alleged absolute prohibition against “claim dissection” in Diehr was nothing of the sort). That happens to also be the “right” answer, unless you believe that 101 serves no role except to protect lawyers who use certain magic words to use to describe their patent-worthy “invention.”Another clear and very closely-related lesson from Mayo is that in every case it is necessary to determine the relationship of the claimed invention to the prior art to determine if the claim protects ineligible matter. In nearly every instance this is an easy task to accomplish, regardless of how super duper special and “technical” the alleged “technology” is (of course, if one refuses to acknowledge the holding of Mayo then you can make the analysis as difficult as you want, which is what sometimes happens).Consider a claim that recites an incredibly complicated method of hooking up two computers together. It’s so complicated that it took ten scientists one hundred years to figure it out. It takes two hundred words to describe that method and hardly anyone even recognizes those words except for a handful of experts. Is there some new transformation of matter that is integral to the method (i.e., excluding transformation such as “oxygen breathed by whoever is carrying out the method” or “energy consumed by the tools that make the connection”)? Does the method protect ineligible subject matter (e.g., information of some kind, or an abstract idea)? If the answers to those questions are “yes” and “no”, respectively, then the method is very likely to be eligible.Now, imagine that identical “incredibly complex” method claim just one day after the claim expires. Someone adds another step to the claim: “further comprising thinking about Snoop Dog riding a golden coach into the Bay of Diamonds.” Is that claim eligible? Nope. Of course it isn’t. People who are rightfully practicing the “incredibly complex” method that now belongs to the public domain would become infringers merely for thinking about Snoop Dog (or any other “new” thought) if such claims were eligible for patenting.That’s Mayo. It’s not “vague.” It’s really the only thing standing between the somewhat insane status quo and the wholesale insanity that we’d see if Mayo had been decided “the other way.”

        1. Those that do not learn from history are bound to repeat it.Here, Malcolm’s trite, banal and completely false ‘theories’ are paraded out yet again.Maybe we will all be treated to his other ‘wonderful’ rheotrical tools soon as well.

    1. When the archives are restored we can read what Malcolm had to say about Chisum: something about a hack who did not know anything about patent law…

      1. what Malcolm had to say about Chisum: something about a hack who did not know anything about patent law…Maybe in “the archives” there’s some context, too, surrounding whatever comment you’re referring to. Just a guess.

        1. I am sure that your attempted denigration of Chisum had something to do with his views disagreeing with your vapid ‘theories.’More than just a guess.Add: Maybe in the immediate context of the topic of this thread, Malcolm will take the time to read (and understand, if not too difficult since Chisum mirrors my “English as a second language”) and care to provide his esteemed (and of course substantive) views on Chisum.Let’s see if Malcolm cares to join the conversation.Add: No substance from Malcolm – only onto yet another thread to bash software patents.Too bad. Here Malcolm has a chance to show what a ‘hack’ this Chisum guy is…

          1. your vapid ‘theories.’Please describe for everyone “my theories” and explain to everyone exactly why you beliece those “theories” are “vapid”. Then we can have a “conversation”.To simplify things, let’s start with my “theory” that all method claims in the form [oldstep]+[new thought] are ineligible for patenting under 101. Please explain to everyone why this “theory” is “vapid.”Or you can just stop flinging your mindless recycled insults at everyone you disagree with. Apparently you’ve now identified “Owen” as another person who lacks the “intelligence” to comment on software patentability. Nobody could have predicted that.

            1. How typical of Malcolm – asked that he provide his substantive views [on Chisum and the immediate article that is the point of this thread] and he punts and asks others to provide information.As Malcolm says “Nobody could have predicted that.”Yup, Malcolm’s traditional rhetoric at play.[but still nothing substantive from him]Add: Three days and nothing substantive from Malcolm on Chisum’s missive on software patent eligibility. Well, maybe next time Malcolm will decide to join an actual conversation.

            2. How typical of Malcolm – asked that he provide his substantive views and he punts and asks others to provide information.LOL

            3. test it under 103 (and 112) instead of 101Test “what”? And why? And how does the test work and what is the result you obtain? If you’re trying to make an argument, you’re missing a few steps, to say the least.

  10. Don I’d be interested to know what “fuzzy language” you know of, along with what “inconsistent result” you’ve found. Because I know of no fuzzy language, and I see no inconsistent results.

  11. Great minds think alike.(hint: Supremes, take note and do the right thing – clean up the mess you started way back in the travesty of Benson)Add; I love the fact that I receive three down vote when I merely point out that the patent great Chisum mirrors my views. Perhaps these neighsayers would care to join the discussion and point out where Chisum is wrong…LOL – thought not.

    1. Benson should be re-visited by the academics. What a sea change we have where anti-patent entrepreneur (APE) Lemley is the leading academic voice compared with Chisum when Benson came out. I think Dennis should do a post on the reaction to Benson when it came out. And, a modern analysis of the science/logic of Benson.

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