SmartGene v. ABL: Foreshadow of the Supreme Court in CLS Bank?

By Dennis Crouch

SmartGene v. ABL (Fed. Cir. 2014) (nonprecedential)

35 U.S.C. 101 is a foundational patent law statute that defines the scope of patent eligibility. The statute states that:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Section 101 is written in broad and open terms and has been seen as providing notice that patent law is not intended to be limited to any particular forms of technology.

In interpreting the statute, the Supreme Court has added an additional set of subject matter eligibility restrictions only nominally grounded in the statute. Most notable, these include proscriptions against the patenting of abstract ideas, natural phenomenon, and products of nature. Also excluded from eligibility are “mental processes.” It is somewhat unclear from precedent whether these mental processes are whole included within the abstract idea construct or whether instead there are some mental processes that would be excluded even though not considered abstract ideas.

Here, ABL’s patents cover a diagnostic method that basically pulls information from three separate knowledge bases, ranks the results and provides advisory information related to those results. As claimed these steps use a “computing device” to generate and provide the results. The patents also include computerized “system” claims; computer program claims; and sorage-medium claims that are all designed to facilitate the practice of the method. See U.S. Patent Nos. 6,081,786 and 6,188,988.

In 2008, SmartGene filed for declaratory judgment of invalidity and also filed a reexamination request with the USPTO. The PTO considered the prior art and confirmed patentability. However, the District Court ruled that all of the patented claims were invalid as ineligible under Section 101. Rather than walking through each claim of each patent, the District Court (1) first held that, for eligibility purposes, Claim 1 of the ’786 patent (the method claim) was representative of all claims in the patents and (2) then found that claim ineligible under § 101. The district court wrote that the claim does “no more than describe . . . an abstract mental process engaged in routinely, either entirely within a physician’s mind, or potentially aided by other resources in the treatment of patients.”

On appeal, the Federal Circuit has affirmed in a non-precedential decision written by Judge Taranto and joined by Judges Lourie and Dyk. Famed eligibility defender Robert Sachs of Fenwick represented the Patentee whkle Fred Samuels (Cahn & Samuels) represented the DJ Plaintiff.

The Federal Circuit first considered the district court’s process in holding all claims from both patents ineligible based only upon consideration of one claim from one patent. The court affirmed the district court finding based upon a waiver principle.

On to the meat of the 101 analysis, the Federal Circuit began with a citation to CyberSource:

This conclusion [of ineligibility] follows from CyberSource Corp. v. Retail Decisions, Inc., where, based on earlier precedents, this court held that section 101 did not embrace a process defined simply as using a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads.

The court went on to write that mental processes are not eligible nor are processes that use basic computer functionality to implement mental processes unless the invention specifies “new physical components” or other steps “defined other than by the mentally performable steps.”

For these princples, the court relied heavily on Supreme Court precedent of Benson, Flook, and Mayo as well as the appellate decisions of CyberSource as well as In re Grams, 888 F.2d 835, 840-41 (Fed. Cir. 1989) and In re Meyer, 688 F.2d 789, 794-95 (C.C.P.A. 1982).

The discussion of Mayo in the decision is interesting in the way that the court draws close parallels between the way laws of nature and abstract ideas should be interpreted:

Mayo demanded that, when a claim involves an abstract idea (or, in Mayo itself, a law of nature), eligibility under section 101 requires that the claim involve “enough” else—applying the idea in the realm of tangible physical objects (for product claims) or physical actions (for process claims)—that is beyond “well-understood, routine, conventional activity.” 132 S. Ct. at 1294, 1298, 1299. The claim here does not do so. It calls on a computer to do nothing that is even arguably an advance in physical implementations of routine mental information-comparison and rule-application processes. In this context, the concern about preempting public use of certain kinds of knowledge, emphasized in Mayo, is a grave one.

It appears from Myriad, that the process for determining the product-of-nature exclusion is somewhat different since there, the court allowed the patentee to obtain protection for a DNA sequence whose physical differences from the naturally occurring sequence were due to well-understood, routine, and then conventional laboratory processes.

Is a mental step an abstract idea?: The court punts on this question and instead writing that:

[M]ental processes and abstract ideas (whatever may be the precise definition and relation of those concepts) are excluded from section 101. Whatever the boundaries of the abstract ideas category, the claim at issue here involves a mental process excluded from section 101: the mental steps of comparing new and stored information and using rules to identify medical options.

The analysis here pessimistically fits the approach leading abstract idea jurisprudence that traditionally fails to explain the scope and bounds of the abstract idea category but finds that the particular invention in question fits within the category.

Judge Taranto: This decision is important because it was written by Judge Taranto. Although there was not tremendous doubt in his position, Judge Taranto did not participate in the CLS Bank en banc fiasco that resulted in no majority opinion. Judge Taranto’s participation would have likely shifted the balance in favor of a majority opinion ruling strongly against subject matter eligibility of software claims that do not add new “technology.”

Judge Taranto is also important because, of all the Federal Circuit judges, he likely best understands the pulse of the Supreme Court and I will not be surprised when the Supreme Court decision in CLS Bank parallels this one.

 

360 thoughts on “SmartGene v. ABL: Foreshadow of the Supreme Court in CLS Bank?

  1. I certainly hope that this case does NOT foreshadow what the Supreme Court will do. TheFederal Circuit has conflated 103 and 101 (again). The Federal Circuit states that “Claim 1 does no more than call on a ‘computing device,’ with basic functionality for comparing stored and input data and rules, to do what doctors do routinely.”

    This is a 103 problem, not a 101 problem.

  2. Readers I thought you should see what NWPA has written today, below, on the subject of patent eligibility criteria, in the USA and in Europe:

    “The U.S.A. has and is the leader in innovation. Europe follows. It is hard to be the leader when you set up lines and not principles. I think I agree that for a group of countries that want to trail a bit after the U.S.A. that the EPO method of determining 101 isn’t bad. But, the leader needs principles to encourage those that push the boundaries and jump the boundary line.”

    To the extent we can understand NWPA, I think we can all take some comfort from his words, don’t you. Who knows, they might even help to clarify the minds of those who will help the SCOTUS Justices to reach their opinions.

    1. Well thank goodness that NWPA guy is around to say something intelligent. The sMMoke and sMMog around here is at a MAXimum lately.

      1. NWPA,

        Are you surprised?

        I mean, really? Just more of the same old “CRP-Run Away-CRP again” shtick. Notice how MaxDrei tried to obfuscate and hide behind a judge’s robes when I asked him to clarify his concurrence with an ‘intellectual dishonesty’ remark. He got all in a huff when I (correctly) told him that he must maintain the difference between patent eligibility and patentability. As I remarked long ago on Prof. Crouch’s 50-Year Battle thread, asking the right question (without the obfuscating WHATEVER tricks) would help everyone get to the right answer. As we both know, not everyone wants the right answer, because the right answer is not in alignment with their agenda or third party interests.

        The truth of the matter is that many such posters do not want to be held accountable for what they say. They want to shill and move on. They want to point out that ‘this is not a courtroom’ and thus implicate that their posts do not have to be honest.

        They do not want to be intellectually honest and thorough and have what they say be vetted against what is controlling law, or what are actual facts. Notice that conversations simply are not carried to their logical end when such conversations will go against the purpose that individuals(?) have when they post.

        The Merry-Go-Round thus continues.

        1. anon, you are fond of quoting definitions of words. You tell me I “concur” with the English judges. OK, define concur and then show the viewers my exact words, that you perceive to be my “concurrence”.

          The difference between us is that you persist in asserting that I concur, even while all my writings are to try to reveal to you what is the position of the English judges on eligibility, that I so keenly disagree with.

          By heck, this is boring!

          1. I do not need to define “concur” MaxDrei. (sheesh, more obfuscation)

            Stop trying to hide behind the Judge’s robes already.

            .

            then show the viewers my exact words,

            Sure MaxDrie, this very thread, first at February 2, 2014 at 9:58 am
            1. A digital computer. (period, full stop)
            is eligible. For the UK that EPO approach is “intellectually dishonest” and an affront to patent law.
            I can see their point. You too, I’m sure.

            and then at February 3, 2014 at 11:19 pm

            For my part, I think the judges in England are troubled by the otion that subject matter as banal and notoriously lacking in novelty as ‘1. A digital computer.’ could be eligible. Manifestly, it is NOT patentable, so declaring it ‘eligible’ is egregiously ‘dishonest’

            You should note my first post at February 2, 2014 at 12:16 pm asking in pertinent part “Please explain what point it is that you see.

            Do you need me to hold your hand on the difference between patent eligible and patentable?

            1. Ah ha anon. So, as soon as somebody in debate states that he can see the other one’s point, he is deemed (Gotcha!) instantly to have “concurred” with them.

              Is that your point? Try telling that to anybody who has ever been present at a partners’ meeting, or to any of the judges at the CAFC.

              I’m getting that feeling again, that the entity posting under the name “anon” is set up to do it just to see how many more dupes it can find, gullible enough to argue with it. In that regard, I regret that I have been particularly slow to learn not to be provoked by it.

            2. MaxDrei asks, “Is that your point?

              Clearly no MaxDrei.

              Again, you seek to hide behind someone else and not tell me why you see the item as ‘intellectually dishonest.’

              It is not whether someone else – not a party to our discussion – sees something as intellectually dishonest, it is why you – a party to the discussion – can defend the fact that you do concur with another’s seeing something as intellectually dishonest.

              You seem to feel that you can say anything you want and then hide behind a “well they said it’ defense. I was asking you to defend the viewpoint you presented – whether or not some judges feel that way is surely up to those judges, and clearly is not the focal point of you posting that position as something to be believed in but not wanting to support why you believe so.

              Stop attempting to spin and cast the focus elsewhere.

              Why do you believe as you posted?

      2. Apparently? What’s that then?

        Ridiculing? OK, if you say so NWPA. If the shoe fits. My mail was intended to reveal that I couldn’t figure out what you were trying to say. If you take that as ridiculing you, that’s up to you.

        1. Couldn’t figure it out? Well, come on now Max. What I wrote is an argument we Americans being so exceptional make all the time. Easy to understand. Make laws principles so that we can easily extend and apply them. Make laws like the EPOs quagmire and you end up with laws that bog down innovation.

          Simple to understand and an argument that has been made many times in many other contexts.

        2. “If the shoe fits.” The shoe size is to the poster that is quoting my posts–not to me.

          But, come now, Max, I am sure you understand my argument. Are you going to force me to dig up a discussion to support my argument from a book?

        3. LOL – ‘if the shoe fits…”

          Lead a horse to water…

          .

          And yet, when comments are made that impugn the obvious shilling nature of certain posters, who is first in line to attempt Crybaby Vetos?

          Being overly sensitive and then accusing others of being overly sensitive only raises the notion that you are being disingenuous MaxDrei.

          You want to freely use rhetorical tools but do not want anyone using the tools against you and what you want to soapbox with. You want to do unto others, but not have that done unto you.

          Hypocritical at the least.

          So instead of intimating that no one could understand NWPA (and thus that what NWPA had to say was not meaningful) you might hew closer to what you are now saying and directly say that you don’t understand what NWPA is saying. Own your own lack of understanding instead of trying to portray a lack of understanding of the concepts under discussion to your opponent.

  3. OK, anon, now that MM has commented (below) on whether he agrees with the patent judges in England, that the EPO approach to 101 eligibility is “intellectually dishonest”, I will add my comment. i was Holding back because I agree with the EPO so I am not the best Person to explain why it is intellectually dishonest. I had thought MM would tell you why but he now explains he also Fails to find it dishonest. We await Paul Cole to help us understand the English view.

    For my part, I think the judges in England are troubled by the otion that subject matter as banal and notoriously lacking in novelty as “1. A digital computer.” could be eligible. Manifestly, it is NOT patentable, so declaring it “eligible” is egregiously “dishonest”, eh Paul?.

    1. MaxDrei,

      Patent eligibility and patentability are two distinct legal concepts. The meanings simply are not interchangeable – as you attempt to so do.

      You mix them at your own risk.

      1. anon, you it was who asked me please to explain why the English judges declare the EPO’s rigorous separation of eligibility and patentability separate (with which I personally agree) to be intellectually dishonest. When I do that, and hazard a guess why that might be, I get no thanks. Instead, you admonish me, telling me that I must not attempt to elide eligibility and patentability.

        Now can you see why it is so hard for people here to enjoy any sort of worthwhile discussion with you?

        1. You puzzle me MaxDrei, as you seek to equate intellectual dishonesty with a required clarity of separation, and then get upset when I say that such is not proper.

          You need a better reason for calling something intellectual dishonest.

          Remaining clear on a significant legal distinction is not – and cannot be intellectually dishonest.

          Don’t be upset – just try again.

          1. anon, once again, and slowly: I’m not the one asserting that the EPO approach to eligibility is intellectually dishonest, OK? Your continuing to berate me for my inadequate defence of the position taken by the judges in England saps any interest in conversing with you.

            You are misunderstanding my thinking why they think it intellectually dishonest. I fancy you are doing this deliberately because you have nothing else to do all day but to troll these threads. Nevertheless, for any other Readers newly joining, I will try once more.

            I suspect that the English patent judges think that when a claim is directed to subject matter which all of us know without a shadow of a doubt to be unfitted to grant, like, “A windbag, full of hot air.” or “A digital Computer.” it is quite simply dishonest to hold that it meets the criterion of eligibility for patenting.

            I keep telling you that I myself do separate eligibility from patentability. I remind you that, at your explicit request, we are engaged in exploring why the English judges hold the position they do. They have already been told authoritatively, and without interruption over the last 20 years, that under the EPC they should separate eligibility and patentability, yet still they declare the EPO approach dishonest. Why? The best I can do is hazard a guess. I don’t know, OK?

            1. MaxDrei,

              And equally slowly – you did concur in a statement of “intellectual dishonesty” and that is what I am trying to have you be clear about. Your spin now to paint this solely as an English judge discussion is off into the weeds. The English judges are not a part of the conversation – you are. It is your concurrence then – and only that concurrence – that we can discuss. Don’t hide behind the robes of someone else. You concurred with the thought – do you still concur with that thought?

              You appear to be now merely repeating your conclusion and offering no reasoning.

              You do need to grasp and understand the difference in law because that difference makes your statement incorrect.

              You are always welcome to have your opinion. But you should not be upset when I point out the fallacies involved with why you have that opinion – and I really do hope that you approach this with a mind open to learn.

              But that is not there, as once again, you simply bristle at what I say and entrench yourself in your fallacy.

    2. See Max this business of saying a digital computer is not eligible is silly. Would you say that two pieces of wood nailed together are not eligible? No you wouldn’t.

      1. When all else fails, read the statute.

        35 USC 101: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

        Undoubtedly, a computer (the first computer) was eligible.

        Undoubtedly manufactures in their own right are eligible.

        Undoubtedly improvements are eligible.

        And equally undoubtedly, longstanding attempts to obfuscate what is plainly said with an agenda against a particular art field have been in play.

        I will (again) note what I noted in Prof. Crouch’s 50-Year-Battle thread: asking the right question will yield the right answer. The right question demands that patent eligibility not be conflated with patentability.

        Clarity – not conflation.
        101 AND 102 AND 102 AND 112 (etc) – not WHATEVER.

  4. anon amusingly writes earlier today, that MaxDrei:

    “…has openly admitted that he has no interest in actually discussing points of law and readily takes a(n unjustified) sense of umbrage whenever I point out counterpoints that he should address.”

    It is true that from time to time I decline to continue exchanging posts with anon. Only too happy to confirm it.

    Readers will decide (and this is how it should be) what is the reason for that behaviour of mine. For example, you might agree with anon that it is because I am a shill. Or, you might instead agree with me, that continuance is a waste of time, and no fun for anybody except anon.

    1. MaxDrei engages in some ‘light’ hyperbole: It is true that from time to time I decline to continue exchanging posts with anon. Only too happy to confirm it.

      Time to time nothing. Most nearly any thread that I point out a deficiency in your position, you go all Crybaby Veto.

      .

      Readers will decide

      – LOL – talk about a tired rhetorical t001. As if ‘readers’ know better than you and I what you have EXPLICITLY said and confirmed.

  5. I want to pick up on something below, about how to define “useful arts”. It isn’t easy.

    Has anybody read that book called “The Wisdom of Crowds”? Illustrations include the Submarine case and the Pig at the Fair.

    The US Navy lost a submarinem, crippled, somewhere on the seabed in the Atlantic. Several expert teams were hurriedly tasked with computing its location. All projections failed. They were all miles out. But then sombody calculated the mean from the pluarality of expert assessments. The submarine was right there, and so was rescued.

    As for the pig, each arrival at the Country Fair tried to guess its weight. The nearest was two Pounds out. But the average of the five hundred estimates was within an ounce of the true weight.

    At the EPO, from the crowd of Appeal Board judges in DG3, there are more than a thousand final Decisions each year on eligibility and patentability. This is how the EPO is defining “technical”, with ever-greater precision.

    1. But the mean of the decisions would only tell us what the law is at the EPO–not an objective definition of technical and non-technical.

      1. Nothing like waiting upteen years after filing, through the wait of examination, then later after grant when (if) trying to enforce and be in a court of law to finally figure out (past-facto) what the appropriate language to use in crafting an application was supposed to have been…

        1. With the Tweedledum and Tweedledee of this blog, folks, you just can’t win. I am castigated, that the EPO, with its “technical” is stuck still in the 19th century. So, I point out that there is no Binding Precedent at the EPO, so no absolute definition for “technical” that is frozen at the moment in time when the supervisory supreme authority hands it down. The deliberate eschewing of a frozen definition allows the EPO to creep forward steplessly, with its notion of “technical”, into the 21st century and beyond.

          So then I am told that without such a definition there is no legal certainty as to what is eligible and what is not. Very bad!

          So then I explain about the “wisdom of crowds”.

          So then NWPA (priceless this) concedes that OK we might know what the law is at the EPO, but we still lack any once and for all absolute definition of “technical”. Very bad!

          And anon adds something irrelevant about courts laying down how to draft claims that comply with the law. In Europe, anon, the courts have that explained to them by the EPO.

          1. Now Max, I have explained many times that the problem I have with the EPO standard is that it creeps. That in the information processing arts, it essentially tries to determine where the hardware/software boundary is and that which is in hardware is good and that which is in software is bad. 1) that does not reflect the art. 2) you don’t whether you are in or out until they decide. 3) it can cost a lot of money to move that line. 4) often it is just up to the cleverness of the drafts person to put it in the line.

            There are substantive issues raised by me. But, how generous of you to label me a tweedle and priceless.

            1. NWPA,

              MaxDrie is a shill in the strict sense of the word.

              He has openly admitted that he has no interest in actually discussing points of law and readily takes a(n unjustified) sense of umbrage whenever I point out counterpoints that he should address.

              Treat accordingly.

            2. NWPA sorry but I do not see it as a fair or legitimate criticism that, when you pitch a claim at the PTO, one that you know very well is pushing the envelope, you don’t know in advance whether you will get it through. I see it as the professional duty of a professional patent attorney to push the envelope and the duty of the public authorities to push back. Nobody knows in advance, where that particular Tug (Push) of War will reach equilibrium, for any particular individual claim.

              Such struggles are inherent in any jurisdiction. There should be creep, to the extent it is needed, to keep patent law up to date. Creep happens in the USA too. Better an EPO-style unidirectional “creep” than great big US-style unpredictable swings of “the pendulum”, as I am sure you will agree.

              Of course drafting skill counts for something. How can you count that as a defect of the European System? As an experienced professional drafter, that hires out his skills in that line, why would you want anything else. Or are you advocating reverting to a time when there were no claims, just a description of the preferred embodiments?

              Sorry I was tempted, and dubbed you a tweedle, implying that your views and those of anon are indistinguishable. That was wrong. Everybody here can see that your writing style, and that of anon, are poles apart.

            3. MD Sorry I was tempted, and dubbed you a tweedle, implying that your views and those of anon are indistinguishable. That was wrong. Everybody here can see that your writing style, and that of anon, are poles apart.

              Like ski poles.

            4. Max, I cannot respond to your post below so I respond to mine. I think there is a bigger picture here. The U.S.A. has and is the leader in innovation. Europe follows. It is hard to be the leader when you set up lines and not principles. I think I agree that for a group of countries that want to trail a bit after the U.S.A. that the EPO method of determining 101 isn’t bad. But, the leader needs principles to encourage those that push the boundaries and jump the boundary line.

    2. Defining terms is sometimes hard. Indeed. A useful reminder from MD.

      Taking means of estimates to arrive at another estimate is ancient (and can be applied to any kind information). Also, for every example of the sort you gave, there are a trillion other examples where the mean of a set of estimates was not as accurate as one of the estimates in the set.

      If you really really really love patents, you could similarly argue that one of the Mars rovers could have been kept from crashing if only someone had patented a method of double-checking one’s math to make sure that a number isn’t off by an order of magnitude, wherein the trouble-shooting is in the context of a Mars rover landing. Alas.

      Awarding patents on the application of ancient math/logical concepts (including “crowd sourcing”) to “new” contexts does not promote progress. It only promotes patents.

      1. That’s some serious dust-kicking there.

        (Most would call it excessive innuendo, but RQ/HD has sworn that he does not use that rhetorical t001 and Leopold upvoted that, so it ‘must be true‘)

        On a related topic, how did 6′s date with the French model go?

  6. Dennis: I’m puzzled by:
    “Rather than walking through each claim of each patent, the District Court (1) first held that, for eligibility purposes, Claim 1 of the ’786 patent (the method claim) was representative of all claims in the patents and (2) then found that claim ineligible under § 101.”

    How can this be? Doesn’t each independent and dependent claim stand/fall on it’s own?

    Isn’t standard practice to include 101 fallback claims, in addition to 102/103 fallback claims (in-order to move the claim further away from any 101 cliffs/issues).

    1. The appellate court essentially treated this as a litigation mistake by the patentee. In particular, other side argued that all the claims were the same for 101 purposes and the patentee did not object to that characterization and so it was deemed waived.

    2. Isn’t standard practice to include 101 fallback claims, in addition to 102/103 fallback claims (in-order to move the claim further away from any 101 cliffs/issues).

      What Dennis said.
      Isn’t standard practice to include 101 fallback claims, in addition to 102/103 fallback claims (in-order to move the claim further away from any 101 cliffs/issues).

      What Dennis said.

      In addition, when it comes to “inventions” like this one, what would the “101 fallback” be? You can keep tossing in more “limitations” about, e.g., what kind of information is stored on the computer or whether you see an ad before you get the information or whether the person typing in the information is wearing a white lab coat or a yellow lab coat, or whether the person is watching a movie that is “not publically available” when they receive a notification that their requested information is available, or whether the “computerized expert” is inside a robot car … none of that stuff fixes the issue here which is that a method for “guiding” an information gathering process by organizing that process into rational sub-parts is ineligible, whether you do it on a computer or whether you do it with your brain, and regardless of whether the information is “medical diagnostic information” or information about how to get the lint out of your bellybutton.
      In addition, when it comes to “inventions” like this one, what would the “101 fallback” be? You can keep tossing in more “limitations” about, e.g., what kind of information is stored on the computer or whether you see an ad before you get the information or whether the person typing in the information is wearing a white lab coat or a yellow lab coat, or whether the person is watching a movie that is “not publically available” when they receive a notification that their requested information is available, or whether the “computerized expert” is inside a robot car … none of that stuff fixes the issue here which is that a method for “guiding” an information gathering process by organizing that process into rational sub-parts is ineligible, whether you do it on a computer or whether you do it with your brain, and regardless of whether the information is “medical diagnostic information” or information about how to get the lint out of your bellybutton.

      1. Here’s how the comment was supposed to look:

        Inventor807 Isn’t standard practice to include 101 fallback claims, in addition to 102/103 fallback claims (in-order to move the claim further away from any 101 cliffs/issues).

        What Dennis said.

        In addition, when it comes to “inventions” like this one, what would the “101 fallback” be? You can keep tossing in more “limitations” about, e.g., what kind of information is stored on the computer or whether you see an ad before you get the information or whether the person typing in the information is wearing a white lab coat or a yellow lab coat, or whether the person is watching a movie that is “not publically available” when they receive a notification that their requested information is available, or whether the “computerized expert” is inside a robot car … none of that stuff fixes the issue here which is that a method for “guiding” an information gathering process by organizing that process into rational sub-parts is ineligible, whether you do it on a computer or whether you do it with your brain, and regardless of whether the information is “medical diagnostic information” or information about how to get the lint out of your bellybutton.

  7. It would be nice to have a thread limited to a discussion of the briefs and Alice case. I have read several and here’s my quick impression:

    The Alice brief itself is great. Persuasive. I think they are right and will win unless the other side comes up with some persuasive argument.

    Both the Michel briefs and the AIPLA briefs are not worthy of being read. Both argue simply that programed computers should be eligible. They take the same position as did Rich back in the day that machines are eligible, computers are machines and programmed computers remain machines therefore program computers are eligible. Almost ridiculous.

    1. The Retailers brief takes a fundamentally opposite view from the AIPLA and Paul Michel. They argue that computer implementation by itself should not impart eligibility. They further argue that 101 is a threshold test. Thus I believe what they are arguing is to strip a claim of his computer-related claim limitations and determine eligibility based upon what is left. In essence, if nothing is left but an ineligible method, then the claim is ineligible.

      I think this suggestion comports well with the law and with Bilski. The question then would become in this case is whether shorn of its computer related limitations the claims and Alice recite a patentable method. That actually might raise a very interesting subsidiary issue as to whether the claims as a whole are directed to a business method and whether a business method is within the useful arts. Bilski never really answered that question.

      1. whether a business method is within the useful arts. Bilski never really answered that question.

        LOL – seriously Ned? There is no reasonable way to believe that.

        None.

        You are aware that Stevens lost his majority precisely because he attempted to re-write direct law passed by Congress related to the fact that business methods are patent eligible – as a category, right?

        Serious backsliding from you on this point of law and history. Completely unconscionable.

    2. I don’t know what the Sigram Schindler brief was about. I didn’t really read it as I couldn’t get over the fact that it was not written in English.

  8. “Judge Taranto is also important because, of all the Federal Circuit judges, he likely best understands the pulse of the Supreme Court and I will not be surprised when the Supreme Court decision in CLS Bank parallels this one.”

    Maybe, but I’m not as sanguine. The Roberts court is, of all things, cautious. They very rarely can bring themselves to rule against “big” (government or business) even if it means contorting themselves (see, e.g., the ACA, upholding Big G on grounds that Big G repeatedly denied applied, and various trimmings of class action suits, shielding Big B). John Roberts in his role as “umpire” is quite capable of calling one in the dirt a “strike” to avoid any controversy with Big.

    Upholding the Taranto/Lourie approach in CLS Bank would invalidate quite possibly a million or so claims, most owned by Big Business. Maybe they should be exploded – but that would be a bold step that I’d be surprised to see Roberts permit. Look for a more nuanced and limited ruling that slaps down the discredited “gist of the invention” approach that Lourie’s boils down to and instead decides that the specific claims on appeal fit more closely to one of the invalidating cases in the Court’s ad hoc and chaotic constellation of “abstract idea” shooting stars, which consequently will continue to wreak havoc apace by sowing ever more uncertainty.

      1. I think T is trying to be objective about Roberts and do not read any animus in his post at all.

        Now on the other hand, Ned, your posts drip with this rather bizarre animus to Rich and anything related to him that gets in the way of your third-party interests.

        We both know why, don’t we?

        1. I don’t think much of bias for Goliath against David.

          There’s a multi-millionaire patent attorney in his mansion in Dallas richer than 99.9% of the people in the country and able to ruin the lives of any one of millions of people just by dragging them into the court at the point of a patent that he can afford to buy or obtain but they can’t.

          Who’s “Goliath”? Who’s “David”?

          Most of the time when this “David and Goliath” b.s. comes up it’s really more of a “Goliath with golden diadem” versus “Goliath with a platinum diadem.” Maybe this yarn got traction back in the 60s but I’m not sure any educated person is fooled at this late date.

    1. This is certainly a possible outcome, Tourbillion.

      On the other hand, Bilski, Prometheus and Myriad also wiped out a whole lot of junky claims for a great many “big businesses.” But the earth still turns, the economy continues to recover at its slow steady rate, the PTO keeps churning out the patents, the top few percentiles are better off than they were before the recession while everyone else scrambles for crumbs.

      It’s entirely possible that Roberts knows that a broad ruling tanking “millions of patents” is just what the patent system needs. If it’s really a problem, Congress can always come in and rescue those poor, suffering people who lost their right to claim new functions for old, programmable computers.

  9. I want to pick up on the exchange somewhere in this thread, between Malcolm Mooney and Ned Heller, on using 103 as a filter to complement the 101 filter.

    If I understand him aright, Ned suggests that SCOTUS should tell us that patents are restraints on trade and so must be confined to the “useful arts”.

    This he thinks would set up 101 to filter out as ineligible claims that are not confined to the ambit of the useful arts but instead creep beyond it.

    For those claims that do not go beyond the useful arts, he suggests that obviousness should be judged through a “useful arts” prism. Other sorts of non-obviousness, while all very fine, good and admirable in themselves, should be declared not sufficient on their own to satisfy 103. Rather, some non-obviousness within the useful arts should be declared a prerequisite of patentability.

    But MM says that is a non-starter, because of the Constitution, the Statute, the caselaw, Uncle Tom Cobleigh and all. Me, I suspect there is another leason for his fear and loathing.

    I think he is averse because it is the way another Patent Office, the EPO, does it. He knows that this way of doing it has been so vigorously attacked bv the English Establishment, who don’t like it when a mere Patent Office (the EPO) has found a better way to do substantive patent law than it advocates.

    Professional jealousy explains an awful lot of debate in this world. also here, I think. The “Not Invented Here” syndrome is strong. Judges think they know how to lay down the law better than Patent Offices can do. Obviously, many Americans quite understandably think they do patent law better than the softie-woftie, airy-fairy Europeans.

    SCOTUS, what do you think?

    1. Interesting thought MaxDrei,

      But I think the real reason is much much much simpler: to do as you suggests would not achieve the aims of what Malcolm is after.

      It’s easy to draw a parallel to the wiggle room in the EPO law language introduced by ‘as such’ and per se.’ Malcolm wants a hard boot brought down on any software patent, and far too many of such patents are allowed in EPO land because (and this will make him sad) the truth of the matter is that software is equivalent to firmware and is equivalent to hardware. Software is man made manufacture and machine component. Software – when created for a utilitarian purpose that falls within the Useful Arts (which almost all commercial software does) easily escapes the pogrom that Malcolm is advocating by any means necessary.

      1. anon thanks for your reaction. Tell me, does, say, ingenious new financial trading, insurance, customer preference or accountancy software have a “utilitarian purpose” that “falls within the Useful Arts”? At the EPO, where “technical” is the litmus test, you have to solve an objective problem which is a technical one, to get past the EPO’s 103 provision. By analogy, SCOTUS could say that you don’t pass the 103 filter with anything less than the solution to an objective problem that falls within the ambit of the useful arts.

        As far as I am aware, in the late 18th century when the Constitution was written, the “useful arts” did not include such activities as trading, book-keeping or book-making (commercial risk management). As I said at the outset, patents that are a Government-sponsored restraint of trade. Thus, and this is a no-brainer, their ambit must be tightly confined to what they are supposed to cover.

        1. MaxDrei asks: Tell me, does, say, ingenious new financial trading, insurance, customer preference or accountancy software have a “utilitarian purpose” that ‘falls within the Useful Arts’?

          The easy answer is Yes.

          This question has been asked and answered before. Note the ‘too clever by half’ remark to how the US Congress treated tax methods in the most recent passage of the America Invents Act – not ruling them out directly as not to the Useful Arts, but rather treating them special as a subset of Useful Arts material being legislatively designated as per se old in the art.

          As to “technical,” again – this has been suitably discussed in the past – whether or not MaxDrei’s mind is suitably open to learning or not.

          And lastly, MaxDrei (again) commits legal error by attempting to constrain “Useful Arts” to an 18th century understanding. I have explained before why this is so. That MaxDrei refused to learn the lesson then does not change the lesson.

          I would also remind MaxDrei that he repeats an errant view with his statement of that very same 18th century understanding (but allow for the fact that many – even well intentioned individuals make a similar mistake). Prof. Crouch had a guest post on the actual history of patents granted to business methods over the course of our nation’s history showing grants to what today is considered “trading, book-keeping or book-making” notwithstanding (and also important to keep in mind) the maturing of such items and incorporating the scientific method extensively in the business arts that has occurred in the second half of the last century. There is a very real reason why Section 101 is written in such a wide-open gate manner – and that speaks directly against the attempt – as witness MaxDrei here – of artificially constraining what is patent eligible.

          1. anon, can you tell me the difference between an odious monopoly on trade and a non-odious monopoly on trade? Is the only difference whether the trade monopoly is a stuff of invention? Or is the subject matter itself odious?

            1. Not sure exactly what you are asking MaxDrei, as you appear to be conflating an invention with some non-invention monopoly.

              As I indicated to Ned, there is no need to switch on the dust kicking machine as inventions are strictly for limited times and must meet the rest of the statutory requirements.

              It is amusing though to see you attempt to trip me up. Any time you want to stop along this path and reflect on any of the lessons I provide for you, please feel free to acknowledge your learning of those lessons.

    2. MaxDrei: Our §103 requires us to first determine the differences between the claimed invention and the prior art, and then to determine whether or not an invention is being claimed, but with the only criteria being obviousness. Time and again I’ve had discussions with anon here where the differences between the claimed invention and the prior art related to things clearly they had no relationship to the useful arts. I asked whether if the only difference between the claimed invention and the prior art was music. I was told by anon that music was not within the useful arts. I asked whether if the only difference between the claimed invention prior art was beauty. I was told by anon that beauty was not within the useful arts. I asked whether if the only difference between the claimed invention and the prior art was printed matter. He agrees that printer matter that does not have a functional relationship to the underlying invention is not the kind of difference that distinguishes the prior art.

      These conversations have taken place over years, but it illustrates the point. Not all differences between the claimed subject matter and the prior art distinguish the claimed subject matter from the prior art. And the question is why.

      One explanation is that the differences do not have a functional relationship to the claimed invention so as to modify it functionally. I think this is right, but only to a degree. I think it is what you folks in Europe actually use.

      But what is a functional difference? I think a functional difference is a technological difference – a difference the patent laws were designed to protect and in fact the subject matter of patents described in the Constitution. Thus we determine in part that the reason certain differences are not the kind of differences that matter is because some of those differences are not within the useful arts.

      When I broached this topic with Malcolm, he resisted because he believed that the real inquiry as to whether the claimed invention was within the useful arts had to be limited to 101. But this is where analysis breaks down to a degree because the Supreme Court has never clearly articulated that one must first determine differences between the claimed subject matter and the prior art to determine whether those differences are within the useful arts. They have in fact said just the opposite in Diehr. However, that first determine the differences analysis is commanded by §103. As described, §103 first asks that we determine the differences between the claimed subject matter and the prior art before we determine whether the subject matter is directed to an invention. That is when the determination of whether the claimed invention is within the useful arts or subject to one of the exceptions related to phenomena of nature or laws of nature should be made.

      The issue of useful arts becomes important when the subject matter that is the point of departure over the prior art relates to business and trade. One of the fundamental reasons why both the English enacted Statute of Monopolies and we Americans constitutionally limited patents to inventions within the useful arts is because of the prior practice by English kings and queens of granting trade monopolies that became known as the odious monopolies. These trade monopolies sparked the power struggle between English kings and Parliament that led to the English Civil War. The dispute between American colonists and the British East Indies Company, who enjoyed a trade monopoly with the America’s, sparked the American Revolution. Granting trade monopolies is odious and we should stay as far away from such as possible. So when we began to grant patents on trade where the employment of computers and such is only nominal, we violate the spirit in essence of the Statute of Monopolies and of the U.S. Constitution. We should tread carefully.

      This said, I think the claims in the Alice case do not simply recite computers nominally. For this reason, I would not be surprised if the Supreme Court reverses the Federal Circuit and finds the claims eligible for patenting.

      1. Close Ned – but you misunderstand a critical point in our discussions about Non-Useful Art examples.

        That point is that you do not even reach the question of novelty or obviousness. That is why you must come to a full stop when you go down your errant path and proceed no further. That is why I berate you for attempting a discussion in the first instance – such discussions are non-starters for any intellectually honest discussion of the pertinent patent law (typically 102/103).

        You need to remember the full lesson as I have taught it to you.

        1. No anon, I simply listen to you. I may not always reply, but I pay attention — just as I do with Malcolm.

          I think the Euro approach has a lot to recommend to us in that they conduct the eligibility inquiry as part and parcel of determining invention. But isn’t that where the analysis should take place? Our conversation over the years suggest that it is.

          1. The Euro approach is indeed interesting, but cannot be applied blindly as their ‘technical’ simply is not in accord with our ‘Useful Arts.’

            1. anon, either you are thick (in a Princess Diana way) or you deliberately misunderstand. My suggestion, age-old on this blog, is that, just as Europe runs with “technical”, so could the USA run with “useful arts”, but only after SCOTUS and the Federal Circuit have told the USPTO, in terms that are useful, what is comprehended by the useful arts and what is not.

              Ned and MM get it. (That’s why MM tells me it is so silly) but, sadly, you (once again) not.

              It is difficult, of course. That is why the EPO offers no definition of “technical”. But that does not matter in a Europe with no Binding Precedent. With >1000 unappealable final decisions each year, the EPO is making itself clear enough by now, what is “technical” and what is not. In the USA, with Binding Precedent, SCOTUS has to be clear. That’s hard. No wonder it and the Federal Circuit run away from that task.

              If I have misunderstood your position, then tell us again why the Euro approach to dividing the filtering task between 101 and 103 is useless just because “technical” and “useful arts” are not coterminous.

            2. …and once again you reverse the impact of binding precedent – as without it, you have the possibility of eternal ‘flavor of the day’ and no driving to a FIXED position in law.

              For some odd reason that you have never explained, this lack of ability to settle is view by view as more, um, well, settled.

              And trust me – Malcolm has never said anything indicating that he gets what Useful Arts means.

            3. Malcolm has never said anything indicating that he gets what Useful Arts means.

              Nice try. I’ve written quite a bit about that subject.

              “Useful Arts” means whatever the Supreme Court, after consideration of carefully presented arguments, tells us it means. And they can change their mind at any time, especially on the margins.

              But since you seem to think your some kind of an expert, why don’t you tell everyone exactly what “Useful Arts” means.

            4. And they can change their mind at any time, especially on the margins.

              Like Stevens attempted in Bilski? Remember that? I’m sure you do. But guess what happened when ‘implicit’ needed to become ‘explicit’ in order for the judiciary to ‘change their minds.’

              Do you recall the quote yet?

              I’ve written quite a bit about that subject.” LOL – llike the part that you attempted to distinguish the scientific method and that blew up in your face when I showed that business methods fall into that definition? Remember that?

              LOL – such good times.

      2. MD I think the claims in the Alice case do not simply recite computers nominally.

        Absent the recited “functionality” of the various components/devices recited in the claim, is there anything about the connectivity of those recited devices that is inventive? If not, then the invention is just abstraction (“desired functionality” or information or both) layered onto old technology. That’s how I approach these claims. It’s analogous to the approach in Prometheus.

        Receivers receive. Processors process. Transmitters transmit. Where the information comes from and the content of the information or the legal status of the information (e.g., copyrighted or not) or some other abstract arbitrary status of the information (did Bobby view the information in a purple room or a yellow room) does not fix the eligibility problem.

        1. Malcolm, the Alice claims recite recording transactions in a time dependent order. Perhaps the computer elements are conventional, but this is not abstract in any sense.

          The problem with the claim, if anything, is that it is directed to a business method. If the Supreme Court is going to resolve this case in any coherent manner, it is finally going to have to cross the useful Arts Rubicon.

          Scalia apparently jumped ship last time from the Steven camp to the Kennedy camp. I hope he now sees that the issue must be addressed.

          I assume, here, that Kagen will vote the same way as Stevens. That is not a sure thing.

          What amazes is that Bilski broke along conservative/liberal lines.

          1. Ned,

            I am shocked as to why you pretend not to understand why Scalia jumped ship from Stevens in Bilski when as clear from Stevens (losing) opinion, it was that Stevens “crossed the rubicon” from implicitly writing law to (attempting to) expressly re-writing the very words that Congress had explicitly used (the self same words that conclusively defeat your agenda against business methods as a category of patent eligible material.

            We have had many discussions on business methods and Bilski and at one point you realized that Bilski was not geared (permissibly) as a decision to outlaw business methods, as the question presented was to ‘abstract’ and NOT to ‘business methods’ as an entire category.

            So why the slipping back into old crusades?

            The better question – and one completely absent from pundits, including academia – is why was Stevens actually able to obtain votes to go along with what would have been an express judicial re-writing of the words of Congress – far beyond any ‘implicit’ tinkering?

            I could understand Sotomayor’s vote as she was brand new to the bench and Stevens was her mentor. But the fact that others signed onto an opinion that would have so clearly crossed the Constitutional separation of powers ‘rubicon’ is rather alarming.

      3. the Supreme Court has never clearly articulated that one must first determine differences between the claimed subject matter and the prior art to determine whether those differences are within the useful arts.

        I don’t the issue has been put squarely before them but it could certainly could happen. It wouldn’t be a question of what is done “first”. Like 101, the analysis can be performed at any time that the issue presents itself, in a manner exactly like that applied by the Supreme Court in Prometheus v. Mayo.

        Consider a claim to a “method for displaying a movie” that is identical to the prior art except for the limitation that “the displayed movie depicts a boy riding backwards on purple bicycle.” You can call that limitation an abstraction or you can recognize that movies are not part of the “useful arts.” Either way, the claim is ineligible because it’s an attempt to protect ineligible subject matter with a patent.

        Let me know if you think there’s anything remotely controversial about that kind of analysis.

        1. To be perfectly clear, it’s “information” that is not part of the “Useful Arts”, be it information about a movie plot, the movie plot itself, information that appears in a movie, information that appears in a book, information that is used by doctors, information that is used by computer programmers, or information that is used by NASA to send rocket ships to the moon.

          Information can’t be protected by patents, in any form, in any field. But there are lots of people trying to figure out ways to get around that because controlling information — who gets it and when and how much do they have to pay for it — is where all the money is these days.

          1. Now would be a good time for you to include the notion of the exceptions to the printed matter doctrine into your rant.

            Seeing as it is not the content per se that drives the exception, your (attempted) spin WHENEVER you actually want to treat this subject with some minimal intellectual integrity will be most entertaining.

            1. Things can be excepted from the printed matter doctrine and still be ineligible, right anon? If that be the case, I see no reason for MM to include such a discussion.

            2. 6 oddly asks “Things can be excepted from the printed matter doctrine and still be ineligible, right anon?

              The obvious answer is no, 6, not if you want to stay on point.

              Please stay on point.

          2. Malcolm (inadvertantly) stumbles: “But there are lots of people trying to figure out ways to get around that because controlling information — who gets it and when and how much do they have to pay for it — is where all the money is these days.

            So…

            …you mean to imply that Lemley and his deep connections to Big Data may have a very real motive for their actions…?

            Why that is an amazing insight – especially seeing how Lex Machina does not share its actual data and merely asks people to ‘trust’ their conclusions…

            …paralleled with the rise in protection of Trade Secrets…

            On a separate thought, how do you feel about Edward Snowden?

          3. MM: “Information” is not within the useful Arts.”

            Agreed.

            Thus if the novelty in the claim is information, stop. Ineligible.

            But the assessment of differences occurs in 103, not 101. There is a battle royal going on the Alice case about dissection and claims as a whole. The SC should be reminded to look at 103 to see what claim as a whole means: First determine what is old and new and then do the analysis. Anything else makes no sense.

            And, anon, price is information. So is quantity, quality, risk, etc.

            1. And Ned you supply a strawman as there is no per se claiming of information only going on in our discussion.

              This is clear from your continued absence from discussing the exceptions to the printed matter doctrine and what that exception entails.

              If you want to have a discussion on the merits, please be prepared to discuss ALL of the points that I have presented and especially those points that you continuously run away from.

              Let’s rejoin with an easy one: do you understand the logic (the logic Ned, not the facts – no kicking up dust) in the Nazomi case?

            2. Your inclusion of the word “quantity” is telling, as I am sure that you do not mind claims being fully patent eligible when claims are concerned with ‘quantity.’

            3. First determine what is old and new and then do the analysis. Anything else makes no sense.

              That’s not true because there’s plenty of claims that can be deemed ineligible at a glance without performing the analysis. For example, “A method, wherein said method comprising a single mental step of X”.

              If you get past that stage then, yes, you need to look more closely at the claim to see if there is ineligible subject matter that is potentially protected by the claim. The answer to that question will depend on the relationship of the eligible subject matter to the prior art, and on the relationship of the eligible subject matter to the ineligible subject matter.

              In the context of 101, all that “claims as a whole” means is that you can’t simply find ineligible subject matter somewhere in the claim and conclude that the claim is ineligible. Likewise, in the context of 103 (where the phrase actually appears in the statute), all it means is that you can’t simply look at the each element in isolation, conclude that they are all old, and throw the claim out as obvious.

              It sure in heck doesn’t mean what the teabaggers think it means, in either context. It doesn’t mean that eligible subject matter in a claim means that the claim is automatically eligible, nor does it mean that if some combination of old elements is “new” that the claim is automatically non-obvious.

            4. In the context of 101, all that “claims as a whole” means is that you can’t simply find ineligible subject matter somewhere in the claim and conclude that the claim is ineligible

              LOL – WHOOOOSHH – another log on the bonfire of Malcolm’s pet theory.

    3. MD I think he is averse because it is the way another Patent Office, the EPO, does it.

      LOL. That may be the silliest thing I have ever read in these comments. Congrats!

      1. Silliest ever? You may very well think that Malcolm. It might, or it might not be the silliest. Who’s to know for sure? Who cares?

        Interesting though, that you find my thought so super-silly that you have to write a special post, just to make sure that readers really do know what an ultra-mega-silly thought it was, that the approach you passionately advocate here, to issues of eligibility/patentability is opposite to the way the EPO does it, and that you don’t care for the way the EPO does it.

        I suspect that you are averse to the EPO way for a very good reason, namely, that it throws the heavy filtering work on to the 103 examination. What a nightmare for the USA if that were to come about!

        Now the EPO can handle that nightmare very easily, because it is a civil law jurisdiction in which the tribunal takes the role of the person skilled in the art, and because the EPO’s “Problem and Solution Approach” gives weight to secondary factors at the discretion of the tribunal and so only in special rare cases. So, at the EPO, obviousness gets short shrift and is done and dusted very efficiently. There is no court sitting on top of the EPO to discipline it and tell it how much weight to give to secondary factors, on every single patent application coming up for examination of patentability. What a nightmare it would be, if there was such a court in Europe.

        Malcolm, I always enjoy reading your opinions. One derives so much encouragement from them. So, do keep them coming, please (especially if you think this post makes a new world record for silliness).

        1. I suspect that you are averse to the EPO way for a very good reason,

          *sigh*

          Two points.

          (1) I have no idea why you think I’m “averse to the EPO way” for dealing with claims such as, e.g., Prometheus’ claims or a claim like ABL’s. I’m not. If you’re referring to something specific that you think I’m averse, too, please be clear about what is and why you think I’m “averse” to it.

          (2) My comment about silliness was directed at your implying that my allegedly “adverse” reaction (to what again? see point (1), above) was due to patriotism or some equally bizarre emotion. I really don’t know how to respond to that. Europe does a lot of stuff better than the US. Generally speaking, patent examination is one of those things. Again, I have no idea what set you off on this strange trip but I’m sure you’ll come back to earth (more or less unchanged) eventually. ;)

            1. OK, here goes, MM, on what I think you are averse to.

              The EPO sets aside all considerations of novelty or “contribution to the art” when assessing eligibility. Thus, at the EPO, a claim as follows:

              1. A digital computer. (period, full stop)

              is eligible. For the UK that EPO approach is “intellectually dishonest” and an affront to patent law. I can see their point. You too, I’m sure.

              For the EPO though, and for your adversaries in these columns who screech that the claim must not be dissected, the EPO approach is the only rational way to proceed.

              For the EPO, you have to “do” eligibility as an “absolute” test, ignoring any test “relative” to the state of the art as it was one day before the claim was filed. Eligibility Y/N should not depend on what date the claim was filed.

              Then, afterwards, you do novelty under the novelty section of the statute, obviousness under the obviousness section of the statute and enablement under the enablement provision of the statute.

              Your aversion to the viewpoint of these other contributors tells me you are averse to the EPO’s “absolute” approach to eligibility. That’s all. OK?

              If I read you wrong, sorry. Just tell me what you really think.

            2. MaxDrei asserts: “1. A digital computer. (period, full stop)

              is eligible. For the UK that EPO approach is “intellectually dishonest” and an affront to patent law. I can see their point. You too, I’m sure.

              Please explain what point it is that you see.

              Please do so while keeping in mind the distinction between patent eligibility and patentability.

              Yes, Max Drei, there is a real distinction – a legal distinction. And one it appears is often the target of obfuscation by the same people that (shockingly) wish to see a point (in the actual law) that simply is not there.

              What exactly is the intellectual dishonesty?

            3. Thus, at the EPO, a claim as follows:

              1. A digital computer. (period, full stop)

              is eligible. For the UK that EPO approach is “intellectually dishonest” and an affront to patent law. I can see their point. You too, I’m sure.

              The issue is: why is it eligible in the EPO? If the answer is: because someone at the EPO said that every claim that recites “digital computer” is eligible, there’s nothing “intellectually dishonest” about that approach to eligibility. Then the issue become patentability. If the EPO would find such a claim worthy of a patent then surely I dare say that somehere there is something “intellectually dishonest” about the EPO approach to patentability.

              In the US, we don’t have a statute or case law that says “Any claim that uses this word is an eligible claim.” We have a set of statute (interpretably the Supreme Court) that provides some guidelines but, unless you want to argue that Congress is composed of insane people, those guidelines could never be sufficient to mechanically, unthinkingly address the infinite, ever-changing technologies (and non-technologies) that are the subject of patent claims which, themselves, are written by lawyers trying to get around the statutes.

              I’m not saying I agree with every EPO decision but I have no blanket “aversion” to the methodology used by the EPO. It’s just that there really is no practical, consistent way for the courts to deal with all eligibility issues in the manner that the EPO does given the history of US patent law and the way our legal system is set up. Of course Congress could re-write everything if they wanted and just copy the EPO’s rules. Maybe that will happen someday.

              In the meantime, I would encourage the EPO to put the hammer down on computer-implemented junk and eliminate the granting of patents predicated on the identification of “new” problems (which are usually just just old problems popping up in new fields) and the recitation of a “function” which solves it.

              I’m pretty much done with this thread, fyi. It takes too much time to scroll through it and find out what’s new.

  10. Lest we forget, let’s look again at the junk claims that ABL was asserting:

    Claim 1: A method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition, said method comprising:

    (a) providing patient information to a computing device comprising:

    a first knowledge base comprising a plurality of different therapeutic treatment regimens for said disease or medical condition;

    a second knowledge base comprising a plurality of expert rules for evaluating and selecting a therapeutic treatment regimen for said disease or medical condition;

    a third knowledge base comprising advisory information useful for the treatment of a patient with different constituents of said different therapeutic treatment regimens; and

    (b) generating in said computing device a ranked listing of available therapeutic treatment regimens for said patient; and

    (c) generating in said computing device advisory information for one or more therapeutic treatment regimens in said ranked listing based on said patient information and said expert rules.

    Now scroll down and read the responses of the patent teabaggers to this junk. How st00pit do you have to be to believe that these people are the least bit concerned about “patent quality”? It’s like the Republican teabagger pretending to be concerned about poverty or discrimination.

    Is there one comment from any of these bozos admitting the junkiness of this junk under any reasonable interpretation of any part of the patent statute?

    Nope. That’s the way they roll, folks. Gee, how to explain it …

    1. And over and over we hear junk claims that have been well known for many years and yet there is no 102 or 103 rejection. We hear junk claims that are not enabled over and over, but not 112 rejection.

      1. over and over we hear junk claims that have been well known for many years and yet there is no 102 or 103 rejection. We hear junk claims that are not enabled over and over, but not 112 rejection.

        Your mumbling again, gramps.

        But, very predictably, you are saying nothing about the junkiness of the claim. Thanks for proving my point once again. I think I saw Lemley at a restaurant earlier this evening. Man, it must really bug you that he’s still walking around free.

        LOL.

        1. Malcolm engages once more in his AOOTWYD: “Your mumbling again, gramps.

          Clearly, the WHATEVER that the RQ/HD advocates is the mumbling in direct contrast to the clarity (yes the law really does matter and it really does matter which area of law is used) as NWPA intimates.

          Clearly what is being attempted is wrongful obfuscation by Malcolm.

        2. Malcolm again kicks dust with “But, very predictably, you are saying nothing about the junkiness of the claim.

          That’s because the focus of the discussion is on the law that applies – not just to the immediate claim – but to all claims.

          For some odd reason, you really believe that your Catcher in the Rye ‘habit’ of searching out claims on their own makes up for your lack of willingness to discuss First Principles and engage in an intellectually honest discussion fools someone – anyone.

          You.
          Fool.
          No.
          One.

          1. That’s because the focus of the discussion is on the law that applies – not just to the immediate claim – but to all claims.

            Pretty sure the “focus of the discussion” is whatever people are focusing on. I’m happy to discuss the case law and I do discuss it at length in the thread. I was one of the first to discuss the legal issues, in fact, and I wrote extensively about the legal issues in this thread.

            Dennis was the first to post the claim and analyze it, by the way. Go ahead and attack him. Or better yet, let’s hear your opinion about this claim. Let me guess: “you don’t have one.”

            1. Malcolm boldfaced lies: “I was one of the first to discuss the legal issues

              Running away from, refusing to answer and making fun of the simple questions of law and fact at the heart of the question of software patent eligibility can in no way be construed as discussing the legal issues.

              QQ ing about claims is not having a legal discussion.

              You are twisted – so twisted from your perpetual spin jobs that you cannot even recognize the wretchedness of your banality and simple wrongness.

  11. I find it amazing that the CAFC and SCOTUS continue to grapple with the 101 issue, when the USPTO has largely let go of the issue.

    In the last year or two, the USPTO’s examining corps has shifted from “let’s wrestle over 101 language” to “let’s find better art and reject the claims under 102/103.” 101 rejections seem to be declining, while the relevance of cited references – and examiners are much more willing to actually discuss the technology of the references, as opposed to falling back on word-search games (“your claim says ‘block,’ this reference says ‘block,’ that’s good enough for me”).

    I feel MUCH happier with the acuity of USPTO examination in the software arts these days. Citing solid references = fewer arguments over what the references actually teach, and fewer appeals when those arguments reach a serious impasse. Either examiners can articulate a reasonable argument for not allowing the claims, or they seem comfortable allowing the claims. There’s less of this “I just don’t like the claims” nonsense now.

    (Of course, “less” is not “none.” I still occasionally encounter a few examiners who, when confronted with a claim phrase, can’t point to anything in the reference that remotely resembles it, and simply hem and haw about how it’s “basically the same thing” or how the differences don’t matter. But they’re much fewer now – maybe three instances in the last year, vs. a dozen annually back in the Dudas days.)

    1. I agree with you David. The PTO seems to have found the right mixture. Leave the 101 stuff out (except that recent SAP IPR.) The court attack on information processing using 101 appears to be completely political. And, the arguments that the likes of Lourie and Tarantula are presenting are more and more devoid of patent law and simply do not correspond with science.

      1. The arguments that the likes of Lourie and Tarantula are presenting are more and more devoid of patent law and simply do not correspond with science.

        In the entire body of patent law, one of the few durable principles is: “respondents’ claims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements.”

        And yet, claim dissection is exactly what Lourie is pushing these days.

        In CLS Bank, Lourie articulates a dissection-based analysis technique: look for the portion of the claim reciting the “inventive concept”; decide whether or not that’s an “abstract concept”; and if so, ask “whether the balance of the claim adds ‘significantly more’ to that abstract idea. Then, Lourie reviews Alice’s claims by scrutinizing individual elements, and asking whether any one of them provides a non-”abstract” process.

        Can anyone explain the difference between that rationale, and “claim dissection” that is not supposed to be used?

        1. n the entire body of patent law, one of the few durable principles is: “respondents’ claims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements.”

          That “durable principle” was chucked away a long time ago. I don’t recall the patent teabaggers who are oh-so-upset about it complaining much when the so-called printed matter doctrine was applied to eliminate consideration of information (e.g., instructions) during analysis under 103 — the very same statute that includes the “claiims as a whole” mandate (a clause that is easily intepreted to mean something far more sane than the dimwitted patent teabaggers insist that it means).

          In addition to prior gutting by the Federal Circuit, this “durable” principle was also righteously stomped by the Supreme Court in Prometheus v. Mayo for very easy to understand reasons. That case, as David knows, will never be overturned but David wishes to pretend otherwise. Why? Because his pocketbook tells him to recite such nonsense.

          “claim dissection” that is not supposed to be used?

          Wake up, David. It’s 2014. Prometheus was two years ago. Where were you? Hanging out at the American Conferance of Troll Worship figuring out which judges you were going to impeach? Or were you just asleep.

          I wonder what kind of advice you’ve been giving our clients. Hopefully better advice than ABL got.

        2. Prater is amazing to read. It is the difference between a group of judges that understand science (or strive to) and understand patent law (or strive to) and bozo appointees that do not belong on the Federal Circuit.

          Offensive that O’Bummer did not appoint even one real patent attorney. And we see the results in this continued nonsense.

          It is the Zeitgeist, though. Just read Tarantula. It reads like a late Roman as it fell. A corrupt Roman that cares not of law or facts, but of outcome.

    2. I find it amazing that the CAFC and SCOTUS continue to grapple with the 101 issue, when the USPTO has largely let go of the issue.

      I find it amazing that you find it amazing. You do understand that the patents being litigated in these cases were typically not granted yesterday, don’t you?

      And to the extent you find that the PTO isn’t relying on 101 to tank softie woftie junk, that’s very unfortunate because it means that more junk than ever is likely flowing out of the PTO.

      still occasionally encounter a few examiners who, when confronted with a claim phrase, can’t point to anything in the reference that remotely resembles it, and simply hem and haw about how it’s “basically the same thing”

      And you pound the table and say “A database listing available real estate is totally different from a database listing available shelf space!!!” Or “keeping track of what videos are watched is totally different from keeping track of what videos aren’t watched!”

      Good stuff, David.

      1. MM, so your argument is that 102 and 103 aren’t working so we are going to just say 101 ’cause, ’cause I know its no good. Not the law.

        1. so your argument is that 102 and 103 aren’t working so we are going to just say 101 ’cause, ’cause I know its no good.

          That’s not my argument. Keep fighting those strawmen, gramps! When the sun goes down you can howl “claims as a whole” at the moon.

  12. I wrote:

    Information is useful. Information is not patent eligible, even if it’s non-obvious and useful. Computers store and transmit information upon demand. Can I patent, in typical generic terms, a computer that stores and transmits [insert your specific non-obvious information here] on demand? If so, how is that any different than patenting electronically stored non-obvious information?

    Instead of answering the question, “Patent Guru” wrote the following:

    Information per se is not patentable.

    Wow! Super impressive. The Guru can parrot back exactly what I wrote. Very impressive. Then he wrote this:

    Using information is patentable.

    …which, as categorically asserted by Mr. Guru, is absolutely false and also unresponsive to the question I asked (nobody could have predicted!).

    There may be eligible patent claims wherein “information is used” (who cares?) but a claim to a “A method, wherein said method comprising using [insert new, non-obvious information here]” is certainly not a patent eligible claim “per se”. In fact, such patent claims are always highly suspect because they will almost invariably (and impermissibly) protect the new information itself as it’s applied to a particular field.

    Worse yet for Mr. Guru, the Supreme Court has explained this to everyone quite plainly in Prometheus v. Mayo. Where was Mr. Guru? At the Internatonal Patent Teabagger conference where they discuss which “anti-patent” judges they are going to impeach? And of course we have the more recent case of ABL v. SmartGene where the principle was applied quite directly to tank a claim whose novelty hinged on the “information” being used.

    Here’s what I suggest, Mr. “Guru” (<-LOL): send a legal update to your client telling them that "using information is patentable" and attach the ABL v. SmartGene case and the Prometheus decision. See how your client responds to your brilliant legal insights.

    1. MM, do you really think your bizarre word games convince anyone?

      A machine processing information. People buy the machine. Bizzarro types like Laurie, Lemley, Tarantula, Stevens, and the ball head circuit court psychotic judge fabricate bizarre statements regarding the machine. They say you can’t patent that machine that you are selling that is processing information ’cause, ’cause, captures a natural law (the sound of ghosts), ’cause, ’cause, it is abstract (everyone looks off into the distance), ’cause, ’cause, it is doing what people do (every looks at each other).

      A machine that people want to buy. A machine that processes information.

      1. do you really think [you] convince anyone?

        You mean other than intelligent people like judges and their clerks and attorneys who are faced with a junk patent like the one that ABL was peddling?

        I don’t know. I also don’t care much. Seems to me that you’re the one who needs to work on his “word games”, friend. Or maybe you really like pssin in the wind. I’ve read that some fetishes are really hard to explain.

        1. The liberal arts stacked bozos like Tarantula are not convinced by you. They are politically active judges that likely agreed to do this prior to being appointed by O’Bummer.

            1. Reminds me: I need to get my check from Soros. Are you going to be at the next meeting, 6? My plane gets into St. Marcellin early Thursday. I’m meeting Breyer at the usual place and he says he’s bringing a “surprise guest” — I’ve got a good guess who that’s going to be!

  13. I found an interesting statement worth repeating:

    The broad question whether computer programs should be given patent protection involves policy considerations that this Court is not authorized to address. … that question is not only difficult and important, but apparently also one that may be affected by institutional bias. In each of those cases, the spokesmen for the organized patent bar have uniformly favored patentability and industry representatives have taken positions properly motivated by their economic self-interest. Notwithstanding fervent argument that patent protection is essential for the growth of the software industry, commentators have noted that “this industry is growing by leaps and bounds without it.” In addition, even some commentators who believe that legal protection for computer programs is desirable have expressed doubts that the present patent system can provide the needed protection.

    This was from the dissent in Diamond v. Diehr. First, I think they got the first part right, which is that whether computer programs should be given patent protection involves policy considerations that the Court should stay out of. To the extent that a computer program is claimed as a method or machine, then it should be considered under the 35 USC 101 without any additional requirements placed on it.

    I appreciate the comments about the “industry representatives have taken positions properly motivated by their economic self-interest,” which is something I have stated in the past.

    The Court cites somebody as stating “this industry is growing by leaps and bounds without it.” I dare say that the software industry in 2013 dwarfs (by a very large margin) the software industry in 1981, which is the year this opinion was issued. By way of comparison, Microsoft had about $16M in revenues in 1981 (more than doubled from the year before), while in the last 12 months, Microsoft probably had about $80B in revenue.

    Although I don’t have any polls to support me, I think the software industry has done pretty well in the last 30 years … despite those pesky patents. Well, I can say that three out of the top-10 companies in the world (by market cap) are Apple, Microsoft, and IBM.

    Finally, given all the concern over “software patents,” I dare say that the present patent system has provided substantial protection.

    1. PG: I think the software industry has done pretty well in the last 30 years … despite those pesky patents.

      Of course, if the “software industry” hadn’t been doing well, then we probably wouldn’t be having this discussion, would we? You think we’d be seeing reams of functionally-claimed abstract junk flowing out of the PTO at historic levels and being asserted by trolls/PAEs if the industry was doing poorly?

      It’s also rather strange that you cite as examples of awesome success the same “Big Corps” who (1) the patent teabaggers constantly whine are completely ignoring everyone else’s patents and (2) who for “defensive purposes” choke the USPTO with some of the worst of the worst junk that’s out there.

        1. MM, you simply have no clue how the software industry works or how the patent system works.

          I’m as close to the “software industry” as anyone else. Are you going to dispute that many (most?) people working in this industry believe that software patenting is a breeding ground for the worst patent junk and the worst patent trolls that are out there?

          As for understanding “how the patent system works” your opinion on that subject isn’t worth sh*t, for obvious reasons.

          Shouldn’t you be working on impeaching some judges? Did the police ever respond to your requests to have Lemley arrested for academic treason or whatever you are always ranting about?

          1. MM, you don’t know anything about software. You have proved that over and over. Sounds like you have something to do with large volume software from corporations. There is obviously great value in information processing patents. See Motorola purchase by Google. I often work on software patents for start-ups that innovative and help the start-up get funded by VCs.

            Please rant on about how silly the Church-Turing Thesis is. Or tell us like you used to how information processing captures natural laws. That one was good for so many belly laughs.

            1. Please rant on about how silly the Church-Turing Thesis is.

              I never said the Church-Turing Thesis was silly. I did say that your endless evocation of it as some sort of Devastating Bomb that Destroys Critics of Software Patents was silly, and I stand by that.

            2. MM, you a liar. You did ridicule the Church-Turing Thesis. You yucked it up to try and dismiss it. You did not try to understand how it renders the paper and pencil test absurd.

              You said you didn’t know what it was. You have just changed your position from being shamed. Just like you have changed your position about instructions to a computer capturing natural laws.

            3. You have just changed your position from being shamed. Just like you have changed your position about instructions to a computer capturing natural laws.

              Sounds familiar. Too familiar.

              Sounds like someone volunteering an admission against interest, then denying such an admission, then ‘yucking it up’ when that admission against interest is presented to show that intentional fallacies are being presented continuously in arguments known to be false.

              Who would stoop to such deceptive and dissembling behavior?

              “Brash” must have some different meanings in that distant galaxy.

            4. “You did not try to understand how it renders the paper and pencil test absurd.”

              Barely any “trying” is required brosef. Takes like 2 seconds to understand your argument. It isn’t that complicated, and it isn’t all that persuasive. What MM yucked it up about is how unpersuasive it is and how much you love to spout off the argument anyway.

            5. NWPA You did ridicule the Church-Turing Thesis.

              Not at all. I “yucked up” your habit of reciting “Church-Turing thesis” as if it were a viable defense to the functional claiming of old computers and computer “systems.” And I explained to you why I was “yucking up” that habit of yours.

              There’s a big difference between trashing a legal argument and trashing some fact or premise you may be relying on, such as the theory of relativity or the Church-Turing thesis. Take some time and think about that. If you have questions, feel free to ask me and I’ll provide some specific examples illustrating what I mean.

      1. Of course …that’s out there.
        New day, same old recycled rants. Do you ever come up with anything novel and nonobvious for your rants? Nah, I didn’t think so.

        1. Do you ever come up with anything novel and nonobvious for your rants

          Maybe you should try making a reasonable argument in response instead of insulting people who disagree with you as ignorant. And consider keeping a closer eye on your “friends” who engage in that behavior routinely.

          Just a suggestion.

          Or you can just focus all your energy on me, the Bad Guy. If only I would just disappear, then you could get back to discussing just the issues you want to discuss (e.g., which judges to impeach, Lemley is paid hack, Big Corp is stealing your ideas, communists hate patents, PTO keeps issuing bad rejections for your awesome invention, etc., etc.).

          1. Maybe you should try making a reasonable argument in response instead of insulting people who disagree with you as ignorant. And consider keeping a closer eye on your “friends” who engage in that behavior routinely

            Yet another irony factory goes ka-blooey!

  14. The mental process doctrine has been dealt with in In re Prater II in 1969. The (logical) distinction is between processes that can an that cannot be executed SOLELY by the human mind.

    Cf. the German “Anweisungen an den menschlichen Geist” doctrine which excludes only a “wertende Zwischenschaltung” according to the BGH.

    While algorithms can be executed by machines, a genuine business method can only be executed by a business(wo) man, I.e. a human – so it is excluded.

    Talking about abstractness is another “restatement of the problem in more imprecise terminology”.

      1. A process, complete as claimed – that is, in a claim taken as a whole, that can be BOTH enacted on a computer or completely in the mind will fail because the test is an ‘or’ test, and a claim that – as written and again taken as a whole – that reads on a PURELY mental process is not allowed.

        Much dust kicking comes in when the claim is purposefully read not within the context of a person of ordinary skill in the art to which the invention pertains.

      2. Read In re Prater Ii.
        All patents involve “mental steps”, or “directions to the human mind” as the German doctrine translates. Foloowing Alappat and Arrhythmia, these processes are not included *because* they are abstract but *if* they are abstract.
        Patentable subject matter are not mete ideas, but only ideas that can be carried out by any “person skilled in the art”. The statutory confirmation is S 112

    1. Interesting, Reinier, as a basis to distinguish between software that is patentable (like an image enhancement program) and software that isn’t, like software in the field of income tax.

      But what about, say, software to assess symptoms of illness and identify what is the underlying disease. Is this patentable image enhancement software, or unpatentable geistlich stuff?

      1. MaxDrei interestingly states: “software that isn’t, like software in the field of income tax

        But a closer look at the AIA reveals that the filed of income tax is not ruled out of the Useful Arts, but rather, is especially treated differently and made to be within the prior art of that Useful Art.

        Too clever by half.

  15. >MUELLER: Unfortunately, we’re stuck with a number of these Supreme Court >precedents going back to Benson, which many patent practitioners see as the root >of all evil.

    ipwatchdog

    I raise my hand. Benson is the root of the evil. And, ridiculous. Completely and totally fabricated logic that has nothing to do with information processing.

    1. ipwatchdog

      Home of the Tom Edison Fanboy Defenders Club! The go-to place if you want to see how the most amorous patent luvvahs really get down.

  16. >The Supreme Court keeps talking about abstract ideas and preempting areas of >inventive activity when we have perfectly good statutory provisions and case law >about things like enablement and the scope of claims.

    Donald Chisum in an interview over at ipwatchdog.

    1. Night: “The Supreme Court keeps talking about abstract ideas and preempting areas of >inventive activity when we have perfectly good statutory provisions and case law >about things like enablement and the scope of claims.

      Donald Chisum in an interview over at ipwatchdog.”

      Agreed! Since Benson, the Supreme Court has confused “preemption” with 101 when the real issue is not preemption, but whether the subject matter that is sought to be patented is within the useful arts, and also whether the subject matter sought to be patented is a phenomena of nature or law of nature – which essentially recognizes that the subject matter is not new.

      The Supreme Court uses “abstract” as a dodge to avoid the question of whether the subject matter sought to be patented is within the useful arts. I think it is time for the Supreme Court to tell us what abstract is and what it is not. But I agree with Donald Chisum that preemption should not be a 101 matter. Preemption is a “functional at the point of novelty” concept and is rather a section 112 issue.

      1. Ned persists in his legal error by stating: “which essentially recognizes that the subject matter is not new.

        Ned, I explained to you at the onset of the Myriad case that the doctrine under 101 was not a time-dependent doctrine as under 102/103.

        Why do you persist in posting items clearly of fallacy?

  17. Yesterday NWPA accused me of “really sloppy thinking”, when he wrote:

    “So, a machine that goes through the “thought process” of determining whether or not a tumor is cancer or not should not be eligible for patentability? For what reason? Machine don’t think. Machines process information. Machines may simulate (to some very rough degree of approximation) a mental process that a person performs.

    Really sloppy thinking there MD. And, what is the public policy for this? We don’t want to build machines that can simulate (to a very rough degree) how humans think for what reason? Please tell us the public policy.”

    but in writing that, he put words into my mouth that I did not use.

    You see, I advocate the way the EPO does eligibility. Claim “A Computer” at the EPO and you are through the eligibility filter. Claim “A process” though and you fail because “process” includes processes not within the useful arts, like thinking, which fail.

    How come the EPO has no need to debate “abstract”? I think that is because by a historical accident it had its 103 approach well-established before it had to deal with really borderline stuff on the eligibility issue.

    For obviousness, ever since the beginning in 1978, the EPO has insisted on looking at non-obviousness only on the useful arts playing field. All the inventive steps in the world are powerless to help patentability, and given no weight, if they are not within the periphery of that playing field.

    With that obviousness test in place, for eligibility the EPO simply asks if the claim is limited to that playing field (technical character, what you call useful arts). If it extends further than that, it embraces non-eligible matter and so is ineligible as it stands.

    I think it is open to SCOTUS to borrow this approach from the EPO. But if it does, it merely shifts the hard question from 101 to 103. That works in civil law Europe but I admit, not so well in common law USA.

    1. MD: the European 101 is terrible. It is a patch work of case law that basically says if currently it is done in hardware or you hire a really good attorney then it is within 101. I have dealt with this issue extensively in Europe. Wretched patch work of shoddy thinking. No central principals. A case by case trench warfare on whether or not something is currently done in hardware. Simply disgusting.

      1. Disgusting? Hardly, when you get to the same result whether you litigate in the UK, Netherlands or Germany, because they all defer to the G Decisions of the EPO.

        Of course, UK and EPO differ on whether to test eligibility relative to the state of the art or as an absolute characteristic of the subject matter of the claim (EPO). The UK needs to know what the contribution to the field is, to decide eligibility. For the EPO, however, there is no such need. But it all comes out the same in the end, downstream of 103 assessment.

        The UK has to do it this way, because it is still holding out against the way the EPO doers obviousness.

        As I say, it will be hard for the USA to make anything of the EPO approach, not least because (and here I’m only teasing) obviousness in the USA is so disgustingly unclear.

    2. Max: “For obviousness, ever since the beginning in 1978, the EPO has insisted on looking at non-obviousness only on the useful arts playing field. All the inventive steps in the world are powerless to help patentability, and given no weight, if they are not within the periphery of that playing field.

      With that obviousness test in place, for eligibility the EPO simply asks if the claim is limited to that playing field (technical character, what you call useful arts). If it extends further than that, it embraces non-eligible matter and so is ineligible as it stands.”

      Max, I think this is fundamentally correct and it points out a particular problem we have with the current section 103, in the language, if not in the jurisprudence, in that it does not require that the difference between the claimed invention and the prior art be “technological.” Any difference will suffice, including differences that are not confined to useful arts. The only recognized exclusion from the above concerns to print a matter doctrine, but in some cases even printed matter that has a functional relationship to the underlying subject matter can be relied upon for novelty.

      I think the 101 issue about abstractness wrestles with the same distinction – what is the point of novelty over the prior art and is this novelty technological? If not, the patent considered as a whole is not directed to patentable subject matter. Thus we shift the analysis from 103 to 101 where a small revision to 103 either by statute or by judicial decision might solve the problem.

      1. NWPA writes that I am guilty of “really sloppy thinking”. When I post again, mentioning what he wrote, his reaction is a post that Begins and Ends with:

        “Sheesh, Max, I am sorry if I offended you.”

        Readers, I don’t know. When somebody here tells me I am guilty of “really sloppy thinking”, ought I to be offended? Or should I take it as a compliment?

          1. anon, Michel’s brief is more of a policy argument that software needs patent protection, and we need simple rules to decided these cases.

            On 2, I agree with Michel. But I do not agree with proposition as it stands. He would approve of State Street Bank. Now that is the reason Michel cannot be correct.

            1. Michel’s amicus is much more than a policy statement Ned.

              I do find his treatment on page 7 rather weak though. But I am not sure there is a polite way of telling the Justices that they have gone off the deep end and really screwed the pooch with their policy nose-of-wax twisting addiction.

            2. From the section titles it appears to be little more than a policy, and perhaps a “consequence of policy”, statement. Not even really much policy argument presented, just assertions.

              He makes conclusory statement after conclusory statement.

            3. He makes conclusory statement after conclusory statement.

              LOL – you get all that from the section titles…?

              How about the citations?

              You really REALLY don’t get this law thing, do you 6?

      1. Yes Tourbillion, thank you – my comment was aimed at how the Court gets away with being inanely tautological.

        While indeed ‘different,’ my comment is one rung up on the ladder.

    1. The elephant in the room is that most people applaud every one of the Supreme Court’s patent-limiting decisions. The only people who are really upset by, e.g., the decisions limiting patents under 101 are a few Federalist Society club members and the wealthy gamblers who are grifting off the broken system. You think the Supreme Court is terribly concerned about what that microfraction of people think?

        1. Sure it is, did you see their ruling on gay marriage? Gay people used to be killed in this country, and were imprisoned at the time of the passing of the amendment to the constitution they were relying on. Surely it was the popularity of the movement that spurred the “constitution evolution” crowd to hold such.

          The USSC has to deal with at least a smidgen of politics. Sorry anon.

          1. 6, in his usual non-understanding of the field of law, quips “Sure it is

            The Constitution wants a word with you 6 – patent law is explicitly delegated there to one particular branch of the government to write (hint: it is neither the judiciary [Article III] nor the executive {Article I]).

          2. Nice try, 6!

            Nobody could have predicted that anon would wave the Constitution around and pretend that we live on another planet where the intepretation of the law is carried out by unfeeling programmed robots who, of course, are the furthest thing from the type of beings who wrote the Constitution.

  18. So we’ve heard the usual responses from those who decry most (if not all) of contemporary 101 jurisprudence, i.e.: “this is an obviousness issue!!”

    Let’s look at the claim again:

    Claim 1: A method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition, said method comprising:

    (a) providing patient information to a computing device comprising:

    a first knowledge base comprising a plurality of different therapeutic treatment regimens for said disease or medical condition;

    a second knowledge base comprising a plurality of expert rules for evaluating and selecting a therapeutic treatment regimen for said disease or medical condition;

    a third knowledge base comprising advisory information useful for the treatment of a patient with different constituents of said different therapeutic treatment regimens; and

    (b) generating in said computing device a ranked listing of available therapeutic treatment regimens for said patient; and

    (c) generating in said computing device advisory information for one or more therapeutic treatment regimens in said ranked listing based on said patient information and said expert rules.

    I have a simple question (and it’s an old question but I’ve never received an answer). I’ll be really impressed if one of the highly educated and experienced law firm partners who fancies himself an expert in this area can provide a compelling answer.

    Imagine that this claim is obvious as a matter of fact (pretty easy to imagine). Now imagine that we add one more “limitation”: “wherein said therapeutic treatment regimen comprises [insert non-obvious instructions here]“.

    Is this claim now non-obvious and eligible for patenting? If so, is there any way to prevent people from obtaining claims that effectively remove useful non-obvious (but otherwise ineligible) electronically stored information from the public domain?

    A lot of people I know would love to hear the answer to this question. I remember there was some radio silence when similar questions were asked of the proponents of Prometheus’ claims. Will we have more success this time? I predict not. That should tell you everything you need to know.

    C’mon all you 101 “experts”. Step up to the plate. And please let’s have none of those crybaby tantrums about how you’ll just sit on your precious information and children will die, etc.

    1. Man, you are one sexist pig. It drips off your posts.

      Get your meds adjusted, gramps. Whatever you’re on, it ain’t working.

      1. Sorry for the snark. You earned the right to rant, Gramps. Also tx for the Medicaid and other stuff you paid for – OWS (your spawn) (PUTZ)

    2. “Is this claim now non-obvious and eligible for patenting? If so, is there any way to prevent people from obtaining claims that effectively remove useful non-obvious (but otherwise ineligible) electronically stored information from the public domain?”

      Yes, of course the claim in is now new and non-obvious and patent eligible.

      I don’t see the relationship between that and your second question.

      The claim doesn’t cover the electronically stored information. It only covers the combination of all the aspects. If A is the old obvious stuff and B is the new non-obvious stuff, what is covered is A + B.

      A without B is not covered by the patent.

  19. So, to sum up:

    1) The computer and the person are doing it differently. Clearly true. People do not perform the task as held by the judge. People are not so linear and the people may have additional steps that would change the nature of the steps listed. For example bringing in experience in the rankings, etc.

    2) These are machines that are doing what people do. The machine does it differently but the point is information processing. That is the age we are in. Information processing. And, here the medieval Federal Circuit is saying a machine that works like a person’s mind is not eligible for patentability. Why exactly is that? The judges are using a narrow judicial exception that is supposed to backed by a public policy. So, what is the public policy for excluding expert systems that simulate a person’s mental processes from eligibility?

    We all know there is no public policy. We all know that there is a machine doing what people are paid to do. And, somehow the judge is going to say, no you can’t claim that because a person thinks that way? That is right out of a medieval witch trial. Ignorant. Shameful. Disgusting. Vial. At best the three should be removed from the Federal Circuit.

    But, frankly, what I find so shocking is that we can get medieval ruling and, in general, people are not appalled. It is as if everyone attitude is: oh well they are probably just bought off. Everyone is bought these days and so there is no use even trying to reason with them. That is the most shocking part of it. It is as if we have reached a tipping point of the end of our civilization where we all have stopped trying.

    1. “Ignorant. Shameful. Disgusting. Vial.”

      Speaking of ignorant, shameful and disgusting, spelling “vile” as “vial” ranks up near the top. I mean seriously? That’s outright not knowing how to spell “vile” or not knowing the difference between the words.

      “It is as if everyone attitude is: oh well they are probably just bought off.”

      That was actually not my attitude.

  20. So, to sum up:

    1) The computer and the person are doing it differently. Clearly true. People do not perform the task as held by the judge. People are not so linear and the people may have additional steps that would change the nature of the steps listed. For example bringing in experience in the rankings, etc.

    2) These are machines that are doing what people do. The machine does it differently but the point is information processing. That is the age we are in. Information processing. And, here the medieval Federal Circuit is saying a machine that works like a person’s mind is not eligible for patentability. Why exactly is that? The judges are using a narrow judicial exception that is supposed to backed by a public policy. So, what is the public policy for excluding expert systems that simulate a person’s mental processes from eligibility?

    We all know there is no public policy. We all know that there is a machine doing what people are paid to do. And, somehow the judge is going to say, no you can’t claim that because a person thinks that way? That is right out of a medieval witch trial. Ignorant. Shameful. Disgusting. Vial. At best the three should be removed from the Federal Circuit.

    But, frankly, what I find so shocking is that we can get medieval ruling and, in general, people are not appalled. It is as if everyone attitude is: oh well they are probably just bought off. Everyone is bought these days and so there is no use even trying to reason with them. That is the most shocking part of it. It is as if we have reached a tipping point of the end of our civilization where we all have stopped trying.

    1. It makes little sense to criticize a ruling about a patent claim as being “medieval” when the claim in question is devoid of anything remotely resembling a technical advance in computing or any other technology.

      I love technology. Scientific progress is awesome. Patents can be useful for promoting innovation and the advancement of science.

      All that is being promoted when claims like this are granted is patent litigation. Nobody is benefitting except for patent lawyers and the gamblers at the patent casino. Everyone else ends up subsidizing this nonsense. It’s a joke. It’s a broken system. This is just another poster child. I won’t say it’s the worst one yet because we hit bottom a long time ago.

      1. If the claim is junk, then use 102/103/112 to invalidate the claim.

        Yes. Medieval thinking. I 21st century judge on the most scientific court in the U.S.A. has held that you can’t claim a machine that simulates a human mental process. That is witch trial thinking. And, do please answer the question about what is the public policy for this?

        And, y0u love progress? That is a joke. You don’t understand the first think about information processing. Please ridicule the Church-Turing Thesis again. Or tell us how a series of instructions on a computer are magically capturing a natural law like you use to tell us.

        1. If the claim is junk, then use 102/103/112 to invalidate the claim.

          Keep shouting at the sky, gramps. It worked for ABL, after all.

          Oops. Maybe not.

            1. go back and read the second key that I provided

              How about you go back to your nurses and ask them to put you in the rubbery room with your stuffed animals?

            2. Nice Malcolm – what point exactly are you trying to make with a comment like that?

              What wonderful conversation will ensue from your CRP?

              My comment on the other hand serves both to point out a substantive comment (made by me) and to point out that you are up to your usual dissembling posts here yet again.

              As they say,

              C’est La Vie

            3. what point exactly are you trying to make with a comment like that?

              The point is that calling me a liar without any explanation other than referring back to some allegedly responsive horsesh*t that you allegedly posted in another thread is an example of your typical pathological nutcase behavior.

              Let me know if you need further clarification.

        2. Of course you could patent such a machine. But the inventors of this patent did not invent such a machine. They just wrote a program to run on a machine that someone else already invented. As to why we need sections 101 and 103, well, they’re different.

          1. to run on a machine that someone else already invented

            LOL – the essence of the vacuous House fallacy restated.

            See Alappat. See Nazomi.

            You cannot use a machine until you configure that machine for use. The act of configuring the machine changes the machine. If you do not change the machine, you cannot use the new functionality.

            ‘oldboxes’ cannot magically have new functions. If your machine has this new function that you then can use, something has happened and such is NOT magic.

            1. “‘oldboxes’ cannot magically have new functions.”

              I agree, they’re not “new” functions. They’re just old functions that you decided to tell the machine to go ahead and perform.

            2. 6, failing again to grasp the Grand Hall experiment quips “They’re just old functions that you decided to tell the machine to go ahead and perform.

              UM – 6 – to do that, you have to change the machine – that’s the point.

              See Nazomi. See also Alappat.

          2. All inventions are build from known parts. For example, the Wright Flier was built from known wood, wire and fabric.

            The program combined with the old machine are a new machine, or at least a patentable improvement to an old machine.

            1. KISA,

              It’s a good thing then that interpreting the law as it is now written is not a popularity contest and that those who live in the legal world (that is, everyone) are bound by the actual law.

              But it is nice of you to visit from slash-dot land. I hope that you have a mind willing enough to learn so that you can pick up something useful here during your visit.

        1. you don’t consider information processing to be a technology?

          Does your definition of “information processing” include thinking? If so, then no, I don’t consider it to be a technology. New information is also not a technology. Doing old things to new information is also not a technology. Shall I go on? What sort of “information processing” qualifies as “a technology” to you? Using a computer to identify someone as “a virtual friend” perhaps?

    2. “2) These are machines that are doing what people do. The machine does it differently but the point is information processing. That is the age we are in. Information processing. And, here the medieval Federal Circuit is saying a machine that works like a person’s mind is not eligible for patentability. Why exactly is that?”

      You kind of answered your own question there.

      Look nobody is saying he can’t make a program. Nobody is saying he can’t market a program. Nobody is saying he can’t receive copyright protection for his particular program. Nobody is saying that, as you suggest, people can’t buy his program which “does what people are paid to do”.

      The only thing they can’t do is claim they invented the concept and preempt other people.

      That’s not really a huge call for alarm here.

      1. Ahh, more Random nonsense: “s claim they invented the concept

        But did he claim he invented the concept, or did he claim a machine that took a concept and applied it…?

        1. did he claim a machine that took a concept and applied it…?

          I claim “A concept-applying machine that takes my [insert new concept] and applies it.”

          Yeah, that’s some real patent-worthy stuff there. Breyer especially will love that.

        2. “But did he claim he invented the concept, or did he claim a machine that took a concept and applied it…?”

          Not to sound like you, but what is the application? There is none.

          For any given disease there are number of actions that could be taken that will result in probable outcomes. The relationship between disease-action-outcome in a and c is not something that any man “invented” it is something that always existed. It was there before we discovered it (which is the correct term). That’s not an application, that’s the concept itself.

          A “ranked listing” of them is just numbering the possible outcomes. There is no limitation for making the ranking in any particular order. That’s the very height of insignificant post-solution activity – counting results.

          Question – a book is an article of manufacture, why is a textbook that contains the same information not 101 eligible? Or should it be?

          Keep in mind the claims don’t go to diagnosing the patient. The claims don’t go to presenting the information in any kind of useful order. They only go to stating relationship information once the patient has been diagnosed.

          So to answer another of your dumb-open ended questions, he did not claim an application.

          1. Random starts “Question – a book is an article of manufacture…

            Asked and answered Random – many times on these threads.

            The answer includes discussions of the Useful Arts and the fallacy of trying to use an example that comes from outside the Useful Arts.

            Likewise, the answer is also impacted by the exceptions to the printed matter doctrine and why such provides the legal basis for recognizing softest as a manufacture in its own right and as a machine component.

  21. MM your stuff is just nonsense. A machine doing what a person is paid to do. Your lot like to harken back to olden times and how sweet it was. Well, what machines in olden times that were replacing the jobs that people were held to be ineligible under 101?

    1. NWPA Well, what machines in olden times that were replacing the jobs that people were held to be ineligible under 101?

      I can’t make sense of your question.

      1. He’s asking which machines that you might regard as being machines which replace human labor, existed/were invented back in the day and were held back in the day to be ineligible?

        I can think of at least one, morse’s, and I think there was another relating to bellows and furnaces. I’m not that familiar with ancient 101 “ineligibility” cases. We didn’t even have 101 as we have back in the day really it was just one big super statute relating to invention iirc. They later broke it down to smaller chunks. Which they could do again and it would be a good thing.

        1. I should add that iirc they had a few examples of things hit under what we would now call ineligibility back in the day in the article that anon dreams “established” that business methods being patented isn’t something new. You know the one, that article that stated bluntly that in the author’s view, the sine qua non of eligible “transformation” method patents, turning pig iron into purified iron or steel is not a transformation. Or not a transformation that would pass the MOT anyway. Yeah, that article by that guy. And I think there was another article, maybe by the same guy or that guy that was all the time posting on here about old cases, talking about the first computer or something and it had some early 101 cases in it too.

        2. He’s asking which machines that you might regard as being machines which replace human labor, existed/were invented back in the day and were held back in the day to be ineligible?

          Huh. Is it some kind of combination law/history test? What’s the point?

          I can think of at least one, morse’s, and I think there was another relating to bellows and furnaces.

          What about them?

          1. “Huh. Is it some kind of combination law/history test? What’s the point?”

            To show off his own ignorance and to get you to help him cure it without charging him any money to do so. The same reason behind most of anon’s questions.

            “What about them?”

            They were machines (or claims to machines anyway) invalidated back in the day under what we would now call 101.

            1. LOL – 6 being an advanced student of Malcolm’s AOOTWYD: To show off his own ignorance and to get you to help him cure it without charging him any money to do so. The same reason behind most of anon’s questions.

              Sorry 6 – your history of character suicides tell a rather opposite story.

  22. DC Is a mental step an abstract idea?: The court punts on this question …

    The analysis here pessimistically fits the approach leading abstract idea jurisprudence that traditionally fails to explain the scope and bounds of the abstract idea category but finds that the particular invention in question fits within the category.

    I touched on this below but I’ll try another angle just for grins. I, too, wish the Federal Circuit here would have addressed the issue head on. The phrases “abstract ideas” and “abstractions” are co-terminous and refer to disembodied ideas. Those ideas include, without limitation: thoughts, including any series of thoughts, about any subject, including any fact, any law (natural or otherwise), non-facts, correlations, information of any kind, dreams, and wishes.

    It’s certainly true that some of those disembodied ideas are going to be new and non-obvious and useful. But they are still not eligible for patenting, nor should they be. Who wants patents to be granted on methods of thinking about non-obvious useful stuff? Show your hands, all two of you!

    The issue we are confronted with, then, in this “golden age” of “monetizing” everything under the sun at the point of a patent lawsuit is: when are those disembodied ideas sufficiently embodied that they become an eligible patent claim? Again, we see a tiny tiny tiny tiny group of people (invariably quite well off relative the rest of the population) who want the answer to be as simple as tossing into the claim reciting that abstraction an old computing device that was designed as a proxy for human information processing.

    On its face, most people would find this to be a laughable proposition and, indeed, many claims are rightfully derided as jokes by Examiners, by the attorneys/agents who file them and by the in-house counsel who instruct the attorneys/agents to file on them on behalf of a clueless CEO who cares about one thing only (hint: it’s not the patent system or “progress in computer technology”). It’s a ridiculous proposition because it turns “inventing” into a game of predicting what people will pay for rather than process of solving technical problems and presenting the specific non-obvious solutions to those technical problems to the world.

    Predicting what people will pay for is what marketing people do. The fact that defenders of computer-implemented junk (and information processing junk generally) tend to lapse into childish sales pitches about all the shiny toys we’re not going to get if we take away their junk claims is a reflection of their own confusion about the purpose of the patent system. No doubt this confusion is shared by many venture capitalists as well. Those people need to be educated by patent lawyers instead of having sunshine blown up their butts.

    1. How long is a piece of string? Why is there something rather than nothing? How “abstract” does something have to be, before it is so “abstract” that it garners a 101 Fail?

      These are all deep philosophical Abstract questions we can debate till the cows come home.

      But there is no time to do that, if the USPTO backlog is to be tamed. One way to beat back the backlog is to let everything through but, as we have seen, that causes more trouble than it solves.

      So the interested circles need a binary switch, easy enough for a PTO Examiner to use fast and reliably, that sorts the sheep (101 PASS) from the goats (101 FAIL). Then we need three more such switches further downstream, one each for for novelty, sufficiency of disclosure and non-obviousness.

      The EPO has them and I think the USPTO could have them too, if the SCOTUS will only write a wise decision in CLS.

      Even thoughts in the human brain are something rather than nothing. Synapses are firing, and memory units are changing. Thoughts have a useful and concrete result. Now I am very confident that SCOTUS will tell us that thought processes are not eligible or patentable. By analogy, neither are the corresponding processes that occur in a computer. So, SCOTUS, you had better find some better definition of “abstract” than that.

      SCOTUS, I think you can find it if you try to tether patent eligibility and non-obviousness to the notion of “useful arts”.

      1. So, a machine that goes through the “thought process” of determining whether or not a tumor is cancer or not should not be eligible for patentability? For what reason? Machine don’t think. Machines process information. Machines may simulate (to some very rough degree of approximation) a mental process that a person performs.

        Really sloppy thinking there MD. And, what is the public policy for this? We don’t want to build machines that can simulate (to a very rough degree) how humans think for what reason? Please tell us the public policy.

        1. We don’t want to build machines that can simulate (to a very rough degree) how humans think for what reason?

          You already admitted that such machines have been built. I think the public policy arguments for not re-creating the wheel are pretty well known.

          But maybe you’re onto something. Maybe we should grant patents on the wheel. That’ll show the Chinese we’re really serious about this patent stuff.

            1. are you saying that a claim to bent wood should be held ineligible for patentability under 101?

              I don’t recall saying that. Are you reading some other comment on some other blog and getting them mixed up?

      2. Thanks to MM and MaxDrei for two very insightful and useful posts in this thread.

        As the the specific definition of abstraction and mental processes, the Church-Turing thesis provides a very useful tool.

        Any calculation that can be done by simple mathematical instructions on a general purpose computer is an abstract process. Since the calculations are just a matter of simple instructions, they are by definition also possible to perform as a mental process.

        The Church-Turing thesis proves useful by providing us with equivalence classes. What can be computed on a general purpose computer is exactly the same — neither more nor less — as what can be done with a Turing machine, with the Lambda Calculus, with any known programming language, with an FPGA, with a circuit composed of logic gates, with a Princeton architecture, with a Harvard architecture, with signal processing chips or high speed graphics chips, with the standard operations of an abacus, inside a simulation of Conway’s Life, and with calculations by pencil and paper.

        Actual mental processes may or may not be a superset of Turing completeness, but the difference is unlikely to come before the court. The difference would have to be a matter of judgement that you know but can’t explain. Such things are absolutely preempted by §112.

        So the simplest application of the abstract idea and mental process doctrine would be to simply exclude anything that could be done by a computer program.

        1. >So the simplest application of the abstract idea and mental process >doctrine would be to simply exclude anything that could be done by a >computer program.

          Owen, that is correct what you wrote. The implications of the holding would be that no information processing machine or method would be eligible for patentability.

          Your discussion of abstract is ridiculous.

          1. “The implications of the holding would be that no information processing machine or method would be eligible for patentability.”

            Lots of them would be eligible. In fact, every invention in information processing would still be eligible.

            You could patent methods of making faster chips, smaller computers, more power efficient chips, chemically innovative chips, more durable computers, denser circuit boards, smaller and cheaper wires, lower wattage or voltage logic gates, and so forth.

            What you wouldn’t be able to claim is the basic operations of logic with a bunch of fictitious limitations pretending that applying logic to your preferred problem is somehow an invention.

    2. MM: “I touched on this below but I’ll try another angle just for grins. I, too, wish the Federal Circuit here would have addressed the issue head on. The phrases “abstract ideas” and “abstractions” are co-terminous and refer to disembodied ideas. Those ideas include, without limitation: thoughts, including any series of thoughts, about any subject, including any fact, any law (natural or otherwise), non-facts, correlations, information of any kind, dreams, and wishes.

      It’s certainly true that some of those disembodied ideas are going to be new and non-obvious and useful. But they are still not eligible for patenting, nor should they be. Who wants patents to be granted on methods of thinking about non-obvious useful stuff? Show your hands, all two of you!”

      Malcolm, Max makes the interesting point that the Euros deal with “101” by requiring that the point of departure over the prior art be within the useful arts, i.e. technological. A simple amendment to §103 to limit the obviousness inquiry to technological differences over the prior art might do the trick. Otherwise a judicial decision by the Supreme Court might be sufficient.

      The Alice brief on appeal to the Supreme Court notes the current confusion of what we mean by” abstract” and tries to limit “abstract” to fundamental truths like laws of nature. Thus a computer implementation that would calculate the improved price or reduce risk would pass muster in their view because price or risk is not a fundamental truth. While that might be true, price and truth certainly are not technological and certainly are not within the useful arts.

      At some point, the Supreme Court has to come to grips with “useful arts,” and tell us whether the differences over the prior art have to be within the useful arts. If they go this direction, they and we will aligned with Europe.

      1. Price is most definitely within the Useful Arts.

        Ned your crusade against Business Method patents continues under a gossamer cloak.

        1. anon, “Price is most definitely within the Useful Arts.”

          Can you get anyone else to agree with you? Can you cite one case that supports this view?

          That price might be useful does not mean that price is within the useful arts.

          1. Ned: “Can you get anyone else to agree with you? Can you cite one case that supports this view?

            Easily – give me any case that uses the Georgia Pacific factors or that uses price as a gauge of damages.

            Pretty darn sure that you will not find such cases for ‘beauty.’

            Then ask yourself which Department the Patent Office resides in and what types of things go on of concern for that Department.

  23. This got stuck in some random thread below by mistake:

    DC It appears from Myriad, that the process for determining the product-of-nature exclusion is somewhat different

    It had better be! I will admit that the Court’s “process” in Myriad is beyond my understanding. In part, that’s because they relied heavily on Funk Brothers, another case where the facts and the reasoning never quite “added up.”

    We can identify one key distinction between Myriad’s claims and all these computer claims, however: the cDNA claims that survived in Myriad recited previously undescribed, man-made, non-natural chemical structures, and they actually reduced at least some of the structures falling within the scope of their claims to practice at the time they filed their application. They didn’t just tell people “this would be convenient to have if you did the work, wouldn’t it”?

    1. MM your stuff is just dopey. You are as bad as Lourie. To your amoral lot this is a blood sport–not applying the law. Shameful human beings. Shameful. You have left the realm of human decency.

  24. ” the Supreme Court has added an additional set of subject matter eligibility restrictions only nominally grounded in the statute.”

    How are they grounded at all in the statute????

    1. Fish,

      They are ‘implicitly‘ there.

      A better question is “How deep does the rabbit hole of ‘implicit’ run?”

    2. the Supreme Court has added an additional set of subject matter eligibility restrictions only nominally grounded in the statute.”

      How are they grounded at all in the statute????

      My advice for the softie woftie defenders who choose to wring their hands over the collapse of the Republic is to take a deep breath and tell everyone how they would re-write the statutes.

      You guys are losing and you are going to continue to lose because your “inventions” are little more than sick jokes on the patent system. By all means go ahead and try to grab as much cash as you can and stuff it in your pockets while the party lasts.

      At some point you are going to have to face the music. What’s your compromise position? When do you stop this silly charade of pretending that “computers should be treated like every other machine except we get them describe them in terms of ther new function because they’re so important and it’s too hard to sue people otherwise”?

      Seriously. It’s just an endless game of whack-a-mole followed by whining about how “everyone’s attacking us.”

      Grow up and tell us what you think is a workable solution to the mess you’ve created, or learn to live with the consequences of a floor wiped completely clean by a judically created solution that you refused to help shape because you couldn’t get past vapid slogans like “claims as a whole”.

      1. “What’s your compromise position? ”

        The only compromise position they can hope to end up with is that if the technology category is within the traditional useful arts it doesn’t matter if it is software, or software related. It’s the same one recently arrived at in the EU as I understand their situation.

    3. Fish, Morse rested on written description, citing the then analog of 112. Thus, I think 112 is the proper statutory basis for rejecting process claims that do not produce a new physical result — the so-called application the courts speak of.

      Clearly, in the case of Myriad, the Supreme Court was using some form of “novelty” test. Even if the claimed compound was not prior art under 102, it still was not new under 101.

      When we get to programmed computers or CRMs, the question really becomes is whether we in fact have a new machine or a new article. New. What is the criteria?

      The Alice court treated such claims as method, indicating they believe the computers themselves were not new.

      1. rejecting process claims that do not produce a new physical result

        And once more on the Merry-Go-Round. Perfectly cured rubber was not a new physical result Ned. See Diehr

        Stop making suggestions that you cannot back up.

        Clearly, in the case of Myriad, the Supreme Court was using some form of “novelty” test.

        The only thing clear about that statement is that it is absolutely wrong. Go back and read what I told you about the Myriad case, Ned. There is no “prior art” element in the Warehouse of Nature exclusion doctrine.

        Stop blandly repeating errors that you have been corrected on.

        the question really becomes is whether we in fact have a new machine or a new article

        Again, asked and answered – See Alappat – which remains controlling law.

        That you (again) try to derive ANYTHING persuasive from Alice is beyond a joke.

        1. Anon, while you deride my summary of the Supreme Court cases, you might want to read the Alice brief on appeal to the Supreme Court. They say essentially the same thing as I do. Particularly, they note that the reason for the exclusion of products of nature, laws of nature and fundamental truths is that they are not “new.” They apply the same principle to “abstract ideas and argue

          “Fundamental, preexisting truths are not “new” within the meaning of § 101, and are therefore properly deemed an “exception[ ] to § 101’s broad patent-eligibility principles.” Alice brief at 27.

          While arguing that the basis for the 101 exceptions is lack of “newness,” they also argue that novelty has nothing to do with 101.

          Why novelty and newness are not similar concepts is not easy to understand, but I suggest that they are making distinctions between 101 newness and 102 prior art under. 101 newness includes things and laws of nature whether they were known are not. In contrast 102 newness relates to whether or not the subject matter was publicly known or in public use.

          Nevertheless, in order to do a proper 101 analysis, one must determine what in the claim is “new” and determine whether that is directed to excluded subject matter.

          Have you read Alice’s brief?

          1. This is also what I said in my amicus brief. A natural phenomenon or law of nature by definition can’t be “new”. And an idea by itself is not “useful”. And Benson created the abstract idea exception by misreading Morse, Rubber-Tip Pencil, Funk Bros., etc., none of which stated an abstract idea exception.

            The statute, properly interpreted, would cover off the first two exceptions and obviates the need for the problematic “abstract idea” exception.

      2. Morse rested on WD, indefiniteness and 101, though I agree that today under the CAFC’s test (which I find reasonable) it wouldn’t fall under indefiniteness.

        Morse was essentially a naked claim to a function not embodied in anything. That’s a 101 issue.

        Morse is not on point for this case, as regards to 101 at least.

        1. RandomGuy: read LizardTech. That is the right way to police claim scope. Scope of enablement. Full stop. Don’t fall into this trap of 101 that this lot has laid. They have an agenda to try and end the patent system. That is their point.

        2. Random Guy: “Morse was essentially a naked claim to a function not embodied in anything. That’s a 101 issue.”

          Random, just how is a naked claim to a function a 101 issue? I think it clearly is a section 112 issue because the patent laws require a specification that describes the invention, and enables it, and that particular points out the novelty. A naked claim to a function without any of the invented apparatus or process, simply claims a result and does not require a specification at all because it covers every and all means and processes that may achieve the specified result whether known or unknown. But why then is this a 101 matter – to the extent this topic relates to “exclusions” such as “phenomena of nature” or laws of nature.” The basis for exclusion of these is that they are pre-existing and therefore they are not “new” even if they are discovered. Lack of invention is now addressed under 103, and excessive scope is addressed under 112.

          May I suggest that not being within the useful arts is also 101, but the Supreme Court does not seem to want to acknowledge that the basis for their jurisprudence in abstractness is useful arts as opposed to newness.

          The back to the topic at hand: functionality. Why is this a 101 matter?

  25. DC: It is somewhat unclear from precedent whether these mental processes are whole included within the abstract idea construct or whether instead there are some mental processes that would be excluded even though not considered abstract ideas.

    I seem to recall at least one Federal Circuit or Supreme Court case which noted that mental processes are a class of abstract ideas. It was almost certainly dicta, but it’s also just common sense. Abstract ideas are disembodied ideas that include any and all “natural laws” “facts” “non-facts” “dreams” and “correlations”. The issue has been (and always will be) what sort of description (i.e., claim) suffices to ground or embody that abstraction into an eligible process or composition.

    As a friendly reminder, it’s now the year 2014. For patent law purposes, the generic “computing device” is as ancient as the generic wheel. Tacking the phrase “computer” (or any similarly non-inventive combination of old, conventional junk) to an information processing method described in generic terms (e.g., “determining”, “comparing” “sorting” “ranking” etc) should not be considered sufficient to turn ineligible subject matter into eligible subject matter. And it shouldn’t have been sufficient 40 years ago. Receiving, storing, processing and transmitting information is what programmable computers do. That’s why humans invented computers. Computers are proxies for information processing that humans would otherwise need to do themselves or with pencil and paper. Saying that “a computer can receive/store/process/transmit this information too if you program it to do so” is not “inventing.” At best, it’s stating the obvious.

    The issues are very similar to the situation where an “inventor” is appending a “new” “non-obvious” mental step (or disembodied idea) to an old conventional step (the issue in Prometheus v. Mayo). All that’s happening there is that the claim to the ineligible subject matter is being limited to a field (i.e., the field represented by the prior art step). That sort of limitation isn’t sufficient to confer eligibility because people practicing the prior art are impermissably constrained — they become infringers when they think about the “new” fact/idea/natural law. Likewise, when a description of some “new” “non-obvious” determination method is appended to “a computer” without any description of the actual structural improvements to the computing device, people who use programmable computers (again — ancient devices) for their intended purpose (information processing) become infringers when they apply the computer to a particular field, even if they are first people to ever successfully reduce to practice the application in question.

    The particular claim at issue in this case is so incredibly junky on so many levels that terms like “appalling” are far more appropriate than “ineligible.” It’s like someone getting a claim to a “new car” wherein the car contains a previously undescribed collection of books in the back seat. This is your broken patent system crying out in agony right here. You don’t need to be a patent attorney (or a “computer expert” — LOL!) to look at claims like this and understand that something has gone terribly wrong. Unfortunately for everyone, this nonsense has been going on for years.

    1. For a friendly reminder, it’s now the year 2014. For patent law purposes, patents are granted on machines and manufactures and any improvements thereof.

      That last part is critical, unless of course you are attempting to dissemble and apply the vapid House/Morse the first computer contains all improvements fallacy…

      1. the vapid House/Morse the first computer contains all improvements fallacy…

        Classic anon: come up with some weird label, call it a “fallacy”, and then smear someone’s argument with the label as if that constitutes an argument. Nice try, anyway.

        I’m not opposed at all to patenting improved “computer devices” that are distinguished from prior art devices based on their specifically described novel and non-obvious structures. If you have a problem with that, go ahead and explain what your problem is and explain why anybody should care about your problem. And by anybody I mean “most people”, not your grifting bottom-feeding friends.

  26. The other point is that these are MACHINES to do what people do. The claims are not meant to prevent people from doing the task. The point is that we are building machines to process information. Whether people can or cannot do the it and how people do it are not material. That is the other great conflation here. What this opinion should go to is 102 and 103 — not 101.

    Does it make sense to say that a machine to dig a hole is ineligible under 101 because people dig holes the same way?

    1. As with many other software-101 cases, one problem blurring our vision is that the claim looks so obvious. It really is basically what doctors have been doing for years through a mental process and even by using online databases.

      Claim 1: A method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition, said method comprising:
      (a) providing patient information to a computing device comprising:
      a first knowledge base comprising a plurality of different therapeutic treatment regimens for said disease or medical condition;
      a second knowledge base comprising a plurality of expert rules for evaluating and selecting a therapeutic treatment regimen for said disease or medical condition;
      a third knowledge base comprising advisory information useful for the treatment of a patient with different constituents of said different therapeutic treatment regimens; and
      (b) generating in said computing device a ranked listing of available therapeutic treatment regimens for said patient; and
      (c) generating in said computing device advisory information for one or more therapeutic treatment regimens in said ranked listing based on said patient information and said expert rules.

      1. “a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads. ”

        As with other cases, the court once again confuses obviousness with patentable subject matter under 101.

        Will this never end?

        1. Will this never end?
          Not anytime soon. Unless SCOTUS unequivocally states that inventions involving a computer are not directed statutory subject matter or are directed to statutory subject matter, we’ll be arguing over where the line is to be drawn.

          Also, if SCOTUS picks one ends of the continuum, Congress may (or may not) get involved.

          1. Now you’re thinking, PG.

            So … what’s your compromise position? Do you have one, or are you just going to keep demanding that any claim that recites a computer and a new non-obvious function is patent-worthy for years after the bridge is crossed? Because rest assured that era is ending, just as you were told it would be ending not too long ago.

            1. “Do you have one, or are you just going to keep demanding that any claim that recites a computer and a new non-obvious function is patent-worthy ”

              Actually, one doesn’t even need the computer.

              Any new, and non-obvious function (read as method or procedure) is patent-worthy.

              Why would anyone argue with or compromise regarding that position.

            2. Malcolm, This is a reply to both you and to Les regarding “new functions.”

              Claims to new, eligible, processes are eligible. However, claims to new methods not involving physical processes but merely the manipulation of abstract ideas are not in my opinion directed to subject matter within the useful arts princely because abstract ideas are not technological, they do not actually manipulate physical subject matter. From at least Benson , we know the key to a patentable process is physicality. If a claim process is not relate to a physical process, it cannot be within the useful arts.

              Thus one cannot, in my opinion, transform an ineligible method that involves the manipulation of abstract ideas into a patentable process by simply reciting that it be conducted on a machine such as a computer. The essence of the subject matter remains abstract. In contrast, if the subject matter involves a physical process, the use of a program to computer in that process does not make that process ineligible. We learned that from Diehr .

            3. So … what’s your compromise position? Do you have one, or are you just going to keep demanding that any claim that recites a computer and a new non-obvious function is patent-worthy for years after the bridge is crossed?

              Compromise position? Until Congress rewrites 35 USC 101, I’m going to work with the letter of the law. I would say that I’ll work with what SCOTUS gives us, but they don’t do bright line tests — instead, they would rather employ the “I know it when I see it test” when it comes to non-statutory subject matter.

              Because rest assured that era is ending
              It’ll end when Congress ends it. I doubt SCOTUS will ever go that far.

            4. Ned writes: “The essence of the subject matter remains abstract.”

              From Diamond v. Diehr, 450 US 175 (1981):
              In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.

              As far as I know, this is still the law of the land.

            5. Ned,

              “Abstract” and “not technological” are not synonyms.

              Case law exists that clearly shows that Useful Arts is more than the technological arts.

              Please check yourself and stop posting repeatedly in error with this new surge of your anti-business method crusade.

          2. As far as I know, this is still the law of the land.

            There were some other important Supreme Court cases since then which made it clear that the relationship of the claims to the prior art is important when considering patent eligibility.

            Are your clients aware of this? They should be. Otherwise they are liable to end up with junk claims like those that ABL tried to assert. But of course all that really matters is how much of their money you can stuff into your pockets before that happens, right? Keep p0unding the table, “Guru.” (<– funny name for someone who doesn't understand the law but pretends that he does; I guess that's typical of certain kinds of "gurus").

      2. DC: As with many other software-101 cases, one problem blurring our vision is that the claim looks so obvious. It really is basically what doctors have been doing for years through a mental process and even by using online databases.

        It’s perfectly possible for claims to be both ineligible under 101 and obvious. Many junky claims fail under multiple sections of the patent statutes.

        The beauty of 101 is that it isn’t susceptible to the ludicrous judicially-created “secondary factor” considerations or the equally ludicrous practice of simply folding in more abstract garbage until the PTO “gives up.”

        For instance, yes the claim sure looks obvious garbage to anyone with half a brain. But wait! Let’s fold in some sprinkle some additional garbage in there somewhere so the Examiner has to find a couple more references or make some additional arguments. And then the Applicant will kick up some dust about how hard they’ve tried to comply with the Examiner and look how many references are cited blah blah blah. Never mind the fact that the information processing is no less abstract than it was before. You could go all the way down to naming the patient, his date of birth, his hometown, the specifc regimen, the location of the hospital where the patient is being treated, the number of clouds in the sky on the day the patient is being treated, the number of rings on the treating physicians hand, the number of tiles on the floor where the computer is sitting … none of that matters, at least not for any defensible legal reason. But as a practical matter it certainly does make a difference. That’s why we see junk like this flowing out of the PTO every week.

        In an ideal world, this claim would never be granted and if the applicant’s attorney kept trying to “appeal appeal appeal” he’d be told to sit on the bench for a couple years.

        1. MM: “The beauty of 101 is that it isn’t susceptible to the ludicrous judicially-created “secondary factor” considerations or the equally ludicrous practice of simply folding in more abstract garbage until the PTO “gives up.” ”

          ROFL – The Beauty of 101 is that is does not prohibit mental steps, does not require methods to be tied to another statutory category and does not require that a method transform an article. That is all ludicrous judicially-created nonsense. Methods, are not a second class type of invention. They are the FIRST type listed!

          1. Methods, are not a second class type of invention. They are the FIRST type listed!

            Nobody was arguing that methods are a “second class” type of invention.

            But the fact that they are listed first is a really compelling argument that mental processes should be eligible for patenting. Please run with that one.

            1. Malcolm (incorrectly) states: “Nobody was arguing that methods are a “second class” type of invention.

              Ned has often written with this as a premise to his views.

            2. Ned has often written with this

              That’s nice. I never said otherwise.

              There are reasons why people prefer composition claims to method claims that have nothing to do with 101. So what? That’s not what Les was talking about.

              Go find a ball of yarn to play with.

            3. “Nobody was arguing that methods are a “second class” type of invention. ”

              It has often been said that method claims must be tied to one of the other statutory classes ( machine or article being transformed). THAT asserts that methods are a lower (second) class of invention. And THAT is to what I was referring.

              The point at which it comes in the list IS relevant. If it were that last in the list, separated from the others with an “and” one might be able to argue that congress saw methods as a special lower class.

              Since methods are listed first, that argument cannot be made.

              Way to disregard the main point and go off on silliness as per usual.

            4. Malcolm replies “That’s nice. I never said otherwise.” to my answer to his statement of “Nobody was arguing that methods are a “second class” type of invention.

              LOL – seriously Malcolm, You cannot even remember two posts earlier?

              It appears that you are now taking reading lessons from 6.

            5. The point at which it comes in the list IS relevant. If it were that last in the list, separated from the others with an “and” one might be able to argue that congress saw methods as a special lower class.

              Since methods are listed first, that argument cannot be made.

              Wow, what a huge relief that must be for the imaginary person who was going to rely heavily on the devastating “order in which things are listed” argument.

            6. “Wow, what a huge relief that must be for the imaginary person who was going to rely heavily on the devastating “order in which things are listed” argument.”

              You have made arguments based on less.

        2. I’m not going to enter the debate on whether revoking the patent based on 101 was good or bad, but I just wanted to say that non-obviousness (or, on my side of the pond, inventive step) can go a long way even with this sort of claims. I checked for personal curiosity the patents in suit, and they have a family member in just about every major jurisdiction, including Europe. To my relief, they don’t have a patent in Europe because the application was refused during examination proceedings; the ground for refusal was lack of inventive step, based on a standard document combination and without invoking any “special feature” of European law such as exclusions from patentability. Although the approach used in Europe and in the US to assess inventive step is not the same, I would dare to say it’s not light years apart either.

          If – I am just taking your assumption at face value here – inventive step is not seen in practice as a useful tool to keep the quality of patents at an acceptable level, then maybe the blame needs to be placed on the procedural rules in examination proceedings before the USPTO rather than on the conditions for patentability itself…

          1. Interesting observations, LBZ. I haven’t looked at the file wrapper to see what fantastical arguments (if any) were used to get this junk granted.

            Regarding this:

            Although the approach used in Europe and in the US to assess inventive step is not the same, I would dare to say it’s not light years apart either.

            In fact, they are more similar than the statutes would suggest because at some point in US patent law jurisprudence it was recognized that some limitations (e.g., “novel” kit instructions) could not be used to confer patentability to an otherwise unpatentable invention. Such limitations are to be ignored when determining the obviousness of the claim. This is nearly identical to the European prohibition against relying on ineligible subject matter (e.g., “information about how to use something”) during the inventive step analysis.

            At some point US patent jurisprudence went off the rails and suddenly the recitation of “new” functions (ineligible subject matter by itself) was deemed acceptable as a way to overcome obviousness challanges. A “new” function, evidently, is any function that was not previously described verbatim in the prior art. To put some sour icing on the cake, the courts created an imaginary world where the description of such a function was deemed to be “the essence of electronic structure” (try to believe it).

            Therefore, if a prior art reference described a computer with the function of determining that an advertisement was viewed, an applicant could argue (without fear of ridicule) that the function of determining that an advertisement was NOT viewed is “completely different.” Likewise, a computer described as capable of “storing information in a database for easy retrieval” is somehow “irrelevant” to judging the obviousness of a computer that “stores information about available real estate”.

            I’ll note for the record once again the strangeness of the incessant objections to “judicial created” tests by the proponents of software paetnting, when that “art” has benefitted more than any other “art” in the history of patenting from “judicially created” (or sanctioned) exceptions to otherwise well-established rules about what is required to obtain a patent.

            So there you have it. In a nutshell, the US system is not “light years apart” but maybe just a thousand miles behind, as one of our bards once sang. For the record, I’m not terribly impressed with Europe’s position regarding computer-implemented (or implementable) inventions either.

            1. My post vanished, but in a nutshell, Malcolm your post and the dissembling of yours intimating that judges making things up (in what I can only guess is an illogical, offhand and incorrect reference to Alappat) is pure B$.

              And if you really want to talk about an art field that has benefited more than any other talk about pharma and the 101 requirement of utility and how patents are routinely granted years before utility is actually (if even obtained) met.

            2. Shorter anon: “You’re a doodoo head!”

              As for this:

              talk about pharma and the 101 requirement of utility and how patents are routinely granted years before utility is actually

              I’m happy to talk about bad pharma patents in any appropriate thread, and particularly on the reliance on post-filing data to overcome obviousness or utility rejections. Everybody who reads these comments knows that.

              My god, man, but you really are struggling with this ABL case, aren’t you? This was all very predictable. Nobody should be surprised. Nobody should have expected anything different. All that’s surprising about this case is that it was every brought in the first place, much less appealed.

            3. Malcolm oddly asks “My god, man, but you really are struggling with this ABL case, aren’t you?

              And the easy answer is: No.

              Um, Malcolm, I read the case and provided the short and sweet two key summary.

              Why would you ever think that I am “really struggling”? Just what do you think I am struggling with?

              Maybe you need to go back and read my two keys.

      3. ” It really is basically what doctors have been doing for years through a mental process and even by using online databases.”

        Then reject them under 102/103!

      4. “As with many other software-101 cases, one problem blurring our vision is that the claim looks so obvious. ”

        I don’t really have a problem with my vision being blurred by such. If you’re still suffering from that condition you need to exercise your 101 analysis more often.

      5. But, Dennis, a simple claim to be sure. But do doctors really do that in the same way? I don’t think that is even remotely plausible that the human mind is working in so simple and linear fashion.

        (Not that this is the biggest problem. The biggest problem with this opinion is that the fact that a person performs an information process task should be irrelevant for 101 purposes to a machine performing an information processing task. Consider that in Deener a person could perform the grain processing with their bodies.)

        For these reasons, my contention is that this is nothing but a pretext to try and make it harder to get a patent for information processing. Just think: Dep. of Labor says that between 20 and 40 million jobs in the USA will be replaced with these types of AI systems. And, here we have a judge saying they are ineligible for patentability. The entire point is that the machines do process the information different and that they CAN process the information. I would also point out that expert systems are actually incredibly complex and their operation has been the focus of many researchers with IQ over 150.

        Simply outrageous. And why did Obama put a liberal arts major who knows nothing about science on the Federal Circuit?

        1. The other big picture point is: machines are going to replace 40 million people in the next 20 years and they aren’t eligible for patentability?

          A machine that is doing what people are paid to do and a judge tells us that the machine is not eligible for patentability.

          Something is rotten in the state of Denmark. Shameful. (And, these arguments people are presenting are ludicrous. They are no better than the arguments we saw 6 years ago about how a series of computer instructions captured a natural law.)

        2. Step A is knowledge dumping. Step B is stating possible courses of action (with numbers to count them!). Step C is advise.

          Step A occurs for the first time in med school, and recalling it is the first action taken after a diagnosis.
          Step B is what you do when you talk to the patient after diagnosis.
          Step C is necessary to obtain informed consent, which is a legal requirement.

          “Do Doctors really do it in the same way?”
          No, just the ones who are practicing with a valid license.

          —–

          Which reminds me of:
          * Lawyer: “So, then it is possible that the patient was alive when you began the autopsy?”
          * Witness: “No.”
          * Lawyer: “How can you be so sure, Doctor?”
          * Witness: “Because his brain was sitting on my desk in a jar.”
          * Lawyer: “But could the patient have still been alive nevertheless?”
          * Witness: “Yes, it is possible that he could have been alive and practicing [patent] law somewhere.”

      6. “As with many other software-101 cases, one problem blurring our vision is that the claim looks so obvious.”

        As long as §103 is a dead letter at the PTO and the judges continue to defer to the presumption of validity and juries can tell which lawyer looks better in a six thousand dollar suit but haven’t earned engineering degrees so that they can evaluate claims reasonably and even simple patent litigation costs a million dollars, operating businesses and inventors are going to be looking for a way to escape from the insanity.

        One possible escape is §101. Don’t let abstract ideas and mental processes count as eligible subject matter. Then judges can stamp any litigation over computer software, finance, and marketing as ineligible as soon as they get a one page answer from the defendant asking for summary judgement.

        1. One possible escape is §101

          Recommending more bad law on what you already QQ about is just not smart son, let alone close to any sense of sanity.

          Your view here is exactly why 101 is the flipping mess it is: attempted pandering on a philosophical twist-the-nose-of-wax misapplication and misappropriation of law.

        2. Owen, you know what an abstract idea is? There is considerable controversy on what the Supreme Court means by this. Is an abstract idea a principal not applied to something physical? Or is abstract ideas something to do with things in of the mind, like “hope,” “price,” “risk” and “value?” The latter three are types of things that are represented by a mathematics, which are all abstract “mental” concepts. A “1” has no structure but it does have a value.

          But because the Supreme Court talks about preemption when it talks about the term “abstract,” it is not clear that they are not talking about the scope of a claim.

          1. Ned.
            Stop the B$.

            Each of price, risk and value can be clearly defined terms within fully patent eligible contexts.

            Grow up already and read some Demming.

          2. And please for the love of God – let’s stay off the Merry-Go-Round of your vapid “structure of “1″ CRP.

            What is the ‘structure’ of Morse’s allowed ‘space’?

  27. What I liked about Taranto’s opinion is that he closely adhered not only to the letter of the controlling precedent, but to its spirit. He seems to get it.

    More than that, he writes narrowly and this displays wisdom.

    I agree that his opinion here harbingers that of the Supreme Court.

    But, why was it not precedential? Is this because the issue is pending before the Supreme Court?

    1. But, why was it not precedential?

      They’re simply asserting that there is nothing new in their legal conclusions here. I think that’s right, in this case. This just happens to be one of the clearer opinions in this area, though.

      1. That’s the conclusion I came too as well, LB. The fact that this case was deemed non-precedential shows that at least a few judges are confident that the rubicon has been crossed. With respect to claims this lowly, it was probably crossed a long time ago.

        Why was the point of asserting it, I wonder? And then appealing it? It’s like “Weekend with Bernie”, if Bernie was a patent. Maybe “Weekend with Bernie II” is a better analogy.

        1. it is there in black and whit.

          Sure it is.

          Why don’t you run along to Gene’s place? I think he’s got another post up where you and your buddies can compete to see who loves Tom Edison the most.

          1. What does “Gene’s place” have to do with anything?

            Or is this just your random attacks on someone who does not even post here shtick (again)?

    2. What I liked about Taranto’s opinion is that he closely adhered not only to the letter of the controlling precedent, but to its spirit. He seems to get it.
      Too bad he didn’t adhere to the letter of the statute — pesky Congress, getting in the way of judges making law.

      1. You can’t fault him for that since he is bound to follow Supreme Court precedent. Instead of talking about the statute, he wrote about the “eligibility standards of section 101 as that provision has been construed.”

          1. I think you are right, that we can call these (as I have in the past) atextual exceptions to Section 101. That interpretation is also largely consistent with Supreme Court precedent. From Bilksi:

            The Court’s precedents provide three specific exceptions
            to § 101′s broad patent-eligibility principles: “laws of nature,
            physical phenomena, and abstract ideas.” Chakrabarty,
            supra, at 309, 100 S.Ct. 2204. While these exceptions are
            not required by the statutory text, they are consistent with the
            notion that a patentable process must be “new and useful.”
            And, in any case, these exceptions have defined the reach of
            the statute as a matter of statutory stare decisis going back
            150 years.

            1. The interpretation – if in fact NOT found in the law – should be challenged.

              The notion of “statutory stare decisis going back 150 years” is DEAD wrong, since it was only in 1952 that Congress acted to take away the Court’s power to define invention by common law evolution, removed that concept from the law and in its place put 103.

              What we have hear plain and simple is a Supreme Court guarding its power – not upholding and interpreting the law as actually written by Congress – the rightful write of law under our Constitution.

              We have a very recent decision by this Court that indicates no less than their addiction to be able to draft the law as that want it to be. Before that recent case, Stevens himself warned of the nose of wax bending in 101 (just as he attempted – but lost – that vary same nose twisting in relation to business method patents in the Bilski case).

            2. While these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be “new and useful.”
              I don’t see the consistency. An abstract idea may or may not be useful. An abstract idea (or application thereof) may or may not be new. One does not necessarily follow from the other.

              I don’t think anybody could argue that the claimed invention here was not useful. Somebody was practicing it and was making money doing it. As for being new, the USPTO confirmed validity based upon a reexamination. If a motivated party couldn’t find good enough prior art for the USPTO, then the invention (as a whole <– let's not forget this) also appears to be new.

              While what was being claim may have encompassed an "abstract idea," most patents can be distilled down to one or more abstract ideas. However, the implementation of an abstract idea is patentable since it is useful.

            3. The interpretation – if in fact NOT found in the law – should be challenged.

              Go ahead. It’s been tried before with big fat smackdowns issued to the challenger.

              But let’s say by some incredible miracle the Supreme Court was just waiting for someone with your incredible mastery of the English language to explain their error to them. So you win.

              Then what?

            4. PG I don’t see the consistency. An abstract idea may or may not be useful. An abstract idea (or application thereof) may or may not be new. One does not necessarily follow from the other.

              Maybe I’m missing something but the fact that “one doesn’t necessarily follow from the other” does not mean that there is inconsistency between the terms.

              the implementation of an abstract idea is patentable since it is useful.

              Can I then patent an old piece of paper with “new” useful instructions written on it? That’s surely an “implementation of an abstract idea.”

              The next question I suppose is: should such pieces of paper by patentable, and why?

            5. It is a judicially created judicially exception. Not statutory construction. That means that the underlying public policy should be discussed. And, what is the public policy for this decision? That is the key. There is no public policy for this decision.

              Judge Taranto is proving to be not only ignorant of patent law and science, but also quite willing to bend the law to get his result.

            6. Malcolm again knowingly dissembles by once again diving into “Can I then patent an old piece of paper with ” unmitigated CRP after refusing to answer the simple questions at the heart of the software issue concerning the exceptions to the printed matter doctrine.

              Intellectual Honesty – try it Malcolm.

        1. Instead of talking about the statute, he wrote about the “eligibility standards of section 101 as that provision has been construed.”
          As I alluded to in my post, the statute is inconvenient for judges looking to expand the scope of alleged non-statutory subject matter.

          Not only is the statute inconvenient to Taranto, so are the claims. He talks extensively about “mental steps” but there are no mental steps being performed. The claims explicitly exclude mental steps being covered by the claim language. As such, whatever case law that could possible implicate “mental steps” DOES NOT APPLY. If the claims do no more than perform “physical implementations of routine mental information comparison and rule-application processes,” then reject it under 102/103. If this was so routine, why couldn’t better prior art be found?

          1. If the claims do no more than perform “physical implementations of routine mental information comparison and rule-application processes,” then reject it under 102/103. If this was so routine, why couldn’t better prior art be found?

            First, as a practical matter 103 doesn’t work because applicants in this art unit will simply keep layering on abstraction and “appeal appeal appeal” until the claims are granted (“look at all those references!” “the examiner hasn’t shown a citation where the ouput data includes backwards social security numbers!!” etc).

            Second, you’re avoiding a fundamental question that 103 can not address (unless you want to invoke some horrifying “judicial exception”). Let me explain it for you in very easy to understand language. Dennis, it would be very helpful for everyone if you encouraged your attorney friends to consider this issue and address it directly. It would move things forward, I believe.

            Here we go:

            Information is useful. Information is not patent eligible, even if it’s non-obvious and useful. Computers store and transmit information upon demand. Can I patent, in typical generic terms, a computer that stores and transmits [insert your specific non-obvious information here] on demand? If so, how is that any different than patenting electronically stored non-obvious information?

            Being incredibly knowledgeable in this area, Mr. Guru, I’m sure you will immediately see the logical outcomes of your answers to these questions. So go ahead and answer the questions. And think about how others might think about your answer … other people including thoughtful patent attorneys like myself and thoughtful people in the general population.

            1. Malcolm: “Second, you’re avoiding a fundamental question that 103 can not address (unless you want to invoke some horrifying “judicial exception”). Let me explain it for you in very easy to understand language. Dennis, it would be very helpful for everyone if you encouraged your attorney friends to consider this issue and address it directly. It would move things forward, I believe.

              Here we go:

              Information is useful. Information is not patent eligible, even if it’s non-obvious and useful.”

              Malcolm, why can’t we address “useful arts” in 103? We do so already with respect to the printed matter which is essentially excluding from the analysis of differences, subject matter that is not within the useful arts. Once we recognize this, we might be able to exclude subject matter that fails 101 because it is not within the useful arts within the context of 103.

            2. as a practical matter 103 doesn’t work because applicants in this art unit will simply keep layering on abstraction and “appeal appeal appeal” until the claims are granted
              Since you don’t work in this art, you have absolutely no idea. Examiners in this art won’t hesitate to heap rejection after rejection after rejection on claims. Add a limitation, they’ll add a reference.

              Prosecute in this field for a year or two and you’ll change your tune about how examiners easily give in.

            3. Ned puzzlying asks “Malcolm, why can’t we address “useful arts” in 103? We do so already with respect to the printed matter

              Ned – why do you disappear EVERY time I try to get you to address the exceptions to the printed matter doctrine?

              Address the legal reasoning that is the foundation for recognizing that software is a manufacture.

            4. Information is useful. Information is not patent eligible, even if it’s non-obvious and useful.
              Are you talking about information or information per se?

              Information per se is not patentable. Using information is patentable.

            5. Malcolm, why can’t we address “useful arts” in 103? We do so already with respect to the printed matter

              Gee, Ned, where’s that in the statute? It’s not there. In fact, 103 expressly says just the opposite, doesn’t it? I’ve answered this question a trillion times, Ned, and you’ve read the answers. In addition, I’ve addressed the issue in this thread several times, extensively. Wtf?

              At the end of the day it doesn’t really matter much to me where junky claims are addressed as long as the junk is tanked. And despite the protestations of the patent teabaggers to the contrary, it doesn’t matter to them either. All that matters to them is that they keep getting their junk patented.

            6. “Prosecute in this field for a year or two and you’ll change your tune about how examiners easily give in.”

              I know several of the “examiners in that field” and I’ve observed their examination behavior in the wild recently. They don’t give in 9 times out of 10 due to sheer ignorance. They know in their mind-brain that they’re ignorant of x, but they have a feeling that x is so, and thus they make the rejection. I’ve seen this behavior in the softiewaftie arts so often it is just how business apparently is done day to day. It’s also why you guys are all the time btching about “poor examination”. Such examination is the exception, rather than the rule, in other areas and if made aware of what they’re doing examiners in other areas will usually relent. To date, I rarely see that happening in the softiewaftie arts. The dum is simply too strong in these ones. I hypothesize this is a result of them having so many abstract concepts being forced into their brains that conflict that they’re then unable to think straight.

      2. Patent Guru sagely states “Too bad he didn’t adhere to the letter of the statute — pesky Congress, getting in the way of judges making law.

        To which I would add that this particular law is especially nettlesome, given that the Founding Fathers expressly did not give the power to the judiciary to amend, let alone write law in this area.

        Too late now, but what the Court should have done back in the day when Congress passed the buck on defining invention would have been to tell Congress “NO,” tell Congress that Congress could not constitutionally let the judiciary write the law thusly, and should have held that provision unconstitutional.

        They did not, and became addicted.

        They are still addicted.

        1. To which I would add that this particular law is especially nettlesome, given that the Founding Fathers expressly did not give the power to the judiciary to amend, let alone write law in this area.

          Too late now

          It’s never too late to amend the Constitution or the patent statutes to promote a publically acceptable goal. How do you propose to amend the statute to address the issues raised by, e.g., functional claiming of “new” information-processing devices? We’re all ears.

          1. You ASSume that an amendment is needed when all that is needed is to follow the law as written.

            Don’t like that? The actual law makes you sad? Well, you can do what you advise others to do: write your Congressman and have the law changed through the proper channels.

  28. Moreover, what Lourie is trying to pull is conflating performing simple steps that are trivial to implement on a computer with complicated steps where it isn’t even understood how a person performs those steps. So, people also regularly evaluate a traffic situation and then act according to the traffic situation. Are we to believe then that a computer to drive a car is ineligible under the Lourie doctrine?

    Again, we have just OUTRAGEOUS holdings that are completely devoid of reality. Shameful.

    1. NWPA – I can’t truly defend Lourie’s CLS Bank opinion. However, what you’ve written seems to highlight his point. If the transformation from human mental step to computer processing requires invention then you probably have something that is patent eligible, but you need to claim that invention. Claims directed to “performing the would-be mental step on a computer” are not directed to the non-trivial advances associated with creating a computer program or device.

      1. But no matter how detailed and non-trivial the recited processing elements of a method are, they are subject to the accusation that they are conceivably done mentally and being rejected under 101.

        Its time to undue this assertion that mental steps are not fair game.

        There is no practical reason to exclude them and they are not excluded by the statute.

        1. Its time to undue this assertion that mental steps are not fair game.
          There is no practical reason to exclude them and they are not excluded by the statute.

          Call up your Congressman and ask him/her what they think about that. Better yet, just ask your neighbors … if you have any.

      2. DC: He did claim the how. He enabled an expert system performing those steps. So, what is enabled? An expert system (a real machine) performing the steps in the claims. There is then a how. The system could not be enabled without a how.

        So, if the judge felt that the how was obvious or known then the proper rejection would be a 102 or 103. But, an expert system is a complex piece of information processing.

        So, again, we have a judge saying this is so well known that anyone could have claimed this but we can’t put together a 102 or 103 argument (or a 112 argument which is what he should have put together if he believed there was no how).

        That is why I don’t believe the justification for invalidating the patent.

        1. “The system could not be enabled without a how.”

          Sure it could if the “how” is trivial and didn’t require undue experimentation at time of filing.

    2. Night, are you suggesting that Taranto’s decision is not consistent with the Supreme Court jurisprudence?

      However, I look back at Bilski and its 5-4 split, with Scalia not even joining in the whole of the majority. They overturned the MOT as the exclusive test to protect the possibility of computer implemented inventions being eligible. It appears to me that the Supreme Court still might side for validity in Alice, but 5-4, just as in Bilski.

          1. Wrong Ned – not what would constitute something that went 9-0.

            Try again.

            (hint: not only have I lectured you on this many times, you have even thanked me for pointing this out – and I used the reference that you provided warning against stretching dicta into law)

            1. I see we are back to the Fn game.

              Maybe it’s time for you to fire up your army of sockpuppets again and just do the hundred post drive-by insult thing.

              That really worked really well for you in the past.

              Or, maybe consider taking your show someplace else where it’s more welcome. Like Gene’s place.

  29. Except that we know that people are not doing what a expert system is doing. To so hold evinces a complete ignorance of information processing and cognitive science.

    1. I think that’s right NWPA except that ABL didn’t include that limitation in its claims. Is there a way to add a lower limitation on the size/speed of the setup so that it clearly surpasses human capabilities?

      1. Even if there were, that would not be a fair solution. The autonomous car doesn’t have to be faster than a human. Just as fast would be good enough. Restricting the claim to faster than human lets an infringer implement the invention at a slower clock speed.

        Just do away with the ill advised Judicial nonsense and allow claims under 101 even if they could be construed to cover mental steps.

        If need be, just change the statute to include: even though an allowed claim might be construed as reading on mental steps, no patent may be enforced against a human thinking those mental steps.

        1. The far easier solution would be to simply hold that claims are written to be understood by those in the art, and those in the art are not claiming anything that can be performed completely (claim as a whole, and all) in the mind.

          Remove the rubbish smokescreen that the Mental Steps Doctrine has become a “proxy” and pay attention to the actual words that Congress (not the Court) used in writing the (supposedly) wide open 101.

          Wouldn’t everyone love to see a simple amendment to 101 incorporating the word anthropomorphication?

            1. I love how you make fun of the presentation

              Was there actual content? It looked to me like you were just doing your usual “clueless old man screaming at the sky” routine.

          1. anon -

            It is possible that ones of skill in the art invent and want to claim something that occurs entirely within the computer memory, which someone would allege is purely mental steps.

            Image data processing might be an example. The invention is separate from the input method or any displaying or printing, so to avoid having to sue users (who might print the image) printing is left out of the claim.

            So, all the claimed, filtering, compressing, focus correction or what all, just occurs in the memory of the image processor.

            There is no reason such an invention should not be patentable.

            1. Entirely in the computer memory should not and cannot be conflated with a purely mental step.

              Try encryption – the point being expressly that such is not purely mental steps.

              Memory of the processor: EGADS man, do not fall into the trap: anthropomorphication to the rescue!

      2. Is there a way to add a lower limitation on the size/speed of the setup so that it clearly surpasses human capabilities?

        Those kinds of “desired result” limitations are typically ignored in most arts (“claims as a whole” notwithstanding) absent a description of the novel non-obvious structures responsible for the improvements.

      3. DC It appears from Myriad, that the process for determining the product-of-nature exclusion is somewhat different

        It had better be! I will admit that the Court’s “process” in Myriad is beyond my understanding. In part, that’s because they relied heavily on Funk Brothers, another case where the facts and the reasoning never quite “added up.”

        We can identify one key distinction between Myriad’s claims and all these computer claims, however: the cDNA claims that survived in Myriad recited previously undescribed, man-made, non-natural chemical structures, and they actually reduced at least some of the structures falling within the scope of their claims to practice at the time they filed their application. They didn’t just tell people “this would be convenient to have if you did the work, wouldn’t it”?

        1. MM, let’s just hope for our patent system that a mind with more horse power and integrity than your jaded simian mind, overrules this nonsense reasoning.

          Simply nonsense rot.

        2. “It had better be! I will admit that the Court’s “process” in Myriad is beyond my understanding. ”

          Meh, not really. All that went down in Myriad was they found quite clearly that the cDNA was a wholly artificial creation away from the lawl of nature/natural product embodied in the other claims.

          Same thing I said was going to happen. It’s really pretty simple.

          1. the lawl of nature/natural product embodied in the other claims.

            That’s what I’m talking about. Apparently cDNA is less of an “embodiment” of a “law of nature” than Myriad’s ineligible claims (which the Supreme Court acknowledged were also man-made) because … why? Something about “information”? I know it all seems clear to you. Probably it helps if cDNA is something you didn’t think about routinely more than a quarter century ago.

            1. “because … why?”

              Because it’s wholly different in terms of its structure from that found in nature and is an entirely a man-made construct. It isn’t just that which is found in nature and clipped *here* and *here*. Or worse yet, simply an attempt, as admitted eventually, to claim the discovery of the gene. It’s all very much based on the facts as Kev laid them out for me awhile back and as were presented to the court. I’m sorry I can’t get into technical details more for you atm because I’ve forgotten nearly everything about those facts at this point. It’s been too long. I don’t care enough (because nobody is paying me to care enough lol).

              I might could explain it better face to face as people don’t generally leave confused or not understanding when I discuss it with them it doesn’t seem. But alas.

              “I know it all seems clear to you. Probably it helps if cDNA is something you didn’t think about routinely more than a quarter century ago.”

              It kinda might help, but it’s really more based on the facts of what cDNA in this context really is. And I know you know all about it. Once you have a solid grasp on that, the answer to the 101 inquiry should, and in this case does, just fall out on the floor plain as day. Just like an simple anticipation finding for example. I mean, to me anyway.

              Just to kind of simplify, either the claim is a judicial exception or an attempt to preempt one of them, or it isn’t. If it isn’t then the inquiry is over. cDNA claims as in Myriad aren’t judicially excepted matter straight up, and they aren’t an attempt to preempt any either, so the inquiry is over.

            2. 6 replies “ And I know you know all about it.

              LOL – you mean that Malcolm is being less than honest here?

              shockers.

              You know what else he knows (because he has volunteered admissions of knowing such)?

              LOL – take a guess.

            3. Re cDNA, 6 writes:

              Because it’s wholly different in terms of its structure from that found in nature and is an entirely a man-made construct. It isn’t just that which is found in nature and clipped *here* and *here*.

              Uh … right. cDNA is identical to that which is found in nature and then “clipped *here* and *here*” to remove, e.g., one nucleotide, whereupon it codes information identical to that coded by the naturally occuring mRNA … the same mRNA that Myriad originally copied with reverse transcriptase to obtain those isolated cDNA molecules which are oh-so-unnatural compared to the isolated genomic sequences.

              Like I said: it’s easier to follow the reasoning the less you understand. I certainly look forward to your additional insights about biotechnology as the case law continues to develop.

            4. Malcolm continues his dissembling: Uh … right. cDNA is identical to that which is found in nature and then “clipped *here* and *here*” to remove, e.g., one nucleotide

              Except that is precisely not what the Court said, Malcolm. What the Court said was that the snipped pieces were then sewn back together in a way that was not present in nature.

              In fact, they indicated that for short cDNA that may be describes as you allude to, that such would likewise not be patent eligible.

              Um, that’s your art field, is it not? And you cannot even get this stuff right?

            5. “cDNA is identical to that which is found in nature and then “clipped *here* and *here*” to remove, e.g., one nucleotide, whereupon it codes information identical to that coded by the naturally occuring mRNA … the same mRNA that Myriad originally copied with reverse transcriptase to obtain those isolated cDNA molecules which are oh-so-unnatural compared to the isolated genomic sequences.”

              All that very well may be correct, but just looking at the slides made it very clear that the actual structure was nothing like that which occurred naturally. The “information” and the “structure” iirc simply weren’t even nearly the same in this particular context.

            6. 6: All that very well may be correct, but just looking at the slides made it very clear that the actual structure was nothing like that which occurred naturally.

              I don’t doubt that. Such slides make the basic concepts easy to undertand.

              The point I’m getting at it is there is no “structure looks nothing like that” test articulated in the Myriad decision. There are surely millions of man-made “isolated DNA molecules” that are 99.99% identical to “structures which occur naturally.” Nobody can tell by looking at them whether they are “cDNA” molecules are not. And yet they appear to be eligible while other isolated man-made DNA molecules that they resemble far more closely than the “structures which occur naturally” are not eligible.

              That’s the weirdness. Trust me, all this is going to come back in a big way.

            7. “The point I’m getting at it is there is no “structure looks nothing like that” test articulated in the Myriad decision.”

              They don’t need such a test to be articulated. In the event that you have no reason to believe that there is a judicial exception being preempt then there is no reason to throw in articulations of more tests or random gibberish justifying the outcome. Such an event occurred here.

              “That’s the weirdness. Trust me, all this is going to come back in a big way.”

              I hear you that it is a bit weird. And it may well come back one day. But I don’t think it will. So long as you’re not trying to patent the natural thing x you discovered you’re going to be ok under Myriad.

      4. “Is there a way to add a lower limitation on the size/speed of the setup so that it clearly surpasses human capabilities?”

        That would be hilarious and would still get 101′d.

      5. I don’t think we need to put in whether the machine is better at processing information than a person. No one would buy the machine if it weren’t. It is a machine to sell to perform information processing. Full stop.

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