By Dennis Crouch
Oplus Technologies, Ltd. v. Sears & Vizio (C.D.Cal.2014)
In an October 2013 summary judgment decision, Judge Pfaelzer found in favor of the defendants – holding that the Oplus asserted patents were not infringed (Patent Nos. 6,239,842 and 7,271,840) and also invalid as anticipated (Patent No. 6,239,842). That final decision is pending appeal at the Federal Circuit.
Most recently, the court denied Vizio’s motion for attorney and expert witness fees “pursuant to 35 U.S.C. § 285, 28 U.S.C. § 1927, and the Court’s inherent power.” However, that denial came only as part of a decision that walks through statements by Oplus and its attorneys (the Niro firm) that “were seriously contradictory and unreasonable” and their “manner and style” that were “offensive to the Court.” Particular noted misconduct included:
- Oplus delayed the litigation by strategically amending its claims to manufacture venue.
- Oplus misused the discovery process to harass Vizio by ignoring necessary discovery, flouting its own obligations, and repeatedly attempting to obtain damages information to which it was not entitled.
- Oplus used improper litigation tactics including presenting contradictory expert evidence and infringement contentions as well as misrepresenting legal and factual support.
However, the Judge Pfaelzer also found that (despite summary judgment) that Oplus’s claims were not “objectively baseless.”
Although the misconduct was serious in Judge Pfaelzer’s view one reason for not awarding attorney fees was that Vizio’s was also guilty of delay and avoidance tactics. And, the court found that the inconsistencies in Oplus position actually helped make the Summary Judgment decision easier – probably saving attorney fees.
Ray Niro submitted a letter to Judge Pfaelzer that likely helped sway her decision not to award fees. In the letter, Ray Niro’s letter Niro apologized for “the conduct of one of our young lawyers” and that “could be understood as being arrogant to and disrespectful to the Court.” Niro indicated he has “taken remedial action” and would monitor the lawyer’s conduct throughout the next year. Niro also indicated that – although not an excuse or justification – that the mother of the lawyer who had spoken harshly to the court had been critically ill on the day of the hearing and had died four days later.
The case is interesting as an added element to the ongoing debate on awarding attorney fees. Two patent law attorney fee cases are pending before the US Supreme Court and several related bills are pending in Congress. Here, Judge Pfaelzer had no problem identifying litigation misconduct but applied her discretion to rule that attorney fees were not appropriate. In essence, Pfaelzer began with the presumption that ordinarily no attorney fees should be awarded and then found that there were not sufficient reasons to move from that starting position. At least some of the congressional proposals shift the starting-position so that the ordinary rule would be an award of attorney fees unless there are sufficient reasons to not award fees. I would guess that this is one of the cases that would flip under the proposed rules.
- Scott Graham from The Recorder has more on the story here.
- NiroLetter
- OrderDenyingAttorneyFees
- As luck would have it, Vizio was sued again this week. This time by Pragmatus Telecom who alleges infringement of several patents, including U.S. Patent No. 8,438,314.
The brief by Trzyna and Lee Hollaar argues nothing short of this: if a computer is recited, if an article of manufacture is recited, the claim is eligible. On the latter, they would declare music CDs eligible.
Benson they argue was correctly decided because of the admission by the applicant that the claim covered its conduct by a human. In this way, the Benson claim was not limited to a computer.
This position, if adopted, would be elegantly simple to administer, but would so elevate form over substance that the public would begin to think that the Supreme Court was composed of cre tins.
Prediction, zero chance of adoption.
“On the latter, they would declare music CDs eligible.”
No Ned – you are conflating once again.
Utility and Useful Arts must still be met.
Stop conflating.
anon, that is the argument made in the brief. It is not my argument.
Not impressed with the brief.
Some decent thoughts in certain aspects, but come people, confusing the difference between patent eligibility and patentabilty?
Ned: The brief by Trzyna and Lee Hollaar argues nothing short of this: if a computer is recited, if an article of manufacture is recited, the claim is eligible. On the latter, they would declare music CDs eligible.
LOL! And let me guess — patent examiners could deal with digital information encoding “non-obvious” sound waves under 103? Exactly how does that work? Under what theory? What about “claims as a hole”? What about a computer hard drive storing the music? Can I overcome the rejection by showing that I sold 400,000 copies of the sound file?
It is to laugh.
This position, if adopted, would be elegantly simple to administer, but would so elevate form over substance that the public would begin to think that the Supreme Court was composed of cre tins.
I’m pretty sure the public has a good idea about who the cre tins are already. They’re the softie woftie people who want to claim “new functions” and who are despereately trying to defend their interest in a patent system that ran off the rails some time ago. They’ll do and say anything to keep their boat floating, and they’ll deny the noses on their faces even when the mirror is held right in front of them.
The majority of the so-called neutral amicus briefs seem to be arguing to overturn Benson without every mentioning the elephant in the room, State Street Bank.
I don’t believe there is any rational, convincing way to reconcile the disparate 101 decisions dealing with computer-implemented junk. Some cases are going to get chucked in the trash out of necessity and it’s very, very difficult to imagine that the chucked cases will be those cases which limited subject matter eligibility.
New “functions” and new information are not eligible subject matter. You can’t patent new functions and/or new information merely by sprinkling in old (but otherwise eligible) devices or systems.
Take the simple example of a new, non-obvious set of instructions for making a new, non-obvious cake. Obviously you can’t get a patent on “A new set of instructions …” Nobody disputes that. But it’s equally true that you can’t get a patent on “A new book comprising a new set of instructions …” for the identical reasons. Such a claim would protect the instructions themselves in a given field (books). The same logic leads to the same conclusion for new information stored in an old computer. Putting conventional garbage like “wherein the information is accessibly by a user upon entry of a term blah blah blah” adds nothing of meaning to the analysis.
And it goes without saying that describing the same computer in terms of its “new functionality” (providing the information) also does nothing to address the fundamental issue.
I’m quite certain that at least some of the Justices are intelligent enough to understand this. Breyer certainly is and he’ll very likely be able to persuade a majority of his friends.
So what are we left with? Basically just a loud whine that without the kind of junk patents presently being granted that somehow development of new computer programs and functions will cease and the country will revert to the “iron age”. And there’s no evidence whatsoever for that proposition. It’s nothing more than a self-interested plea to keep the party rolling.
The majority of the so-called neutral amicus briefs seem to be arguing to overturn Benson without every mentioning the elephant in the room, State Street Bank.
I find it almost shocking that the briefs would take this position after every one the Justices in Bilski would have overturned that case. On what basis do these folks believe the Supreme Court will suddenly embrace State Street Bank and all it stands for given that Congress has twice passed special legislation to deal with the damage caused by that case.
The gall of these folks is beyond comprehension. But they know what they do, but not a one of them will discuss State Street Bank, not one.
“ given that Congress has twice passed special legislation to deal with the damage caused by that case”
Maybe because of Bilski and the fact that Congress has acted and has not explicitly ruled out software and business method patents.
On what basis do these folks believe the Supreme Court will suddenly embrace State Street Bank and all it stands for given that Congress has twice passed special legislation to deal with the damage caused by that case.
There’s nothing “rational” about defending claims to “new functions” for old computers because there was nothing “rational” about the decision to allow that practice in the first place.
Do any of the amicus briefs begin with the statement that the description of a new function for a computer is “the essence of electronic structure” and new “electronic structures” are certainly eligible for patenting even if nobody can tell you what the structure is? Because that’s really all these guys got.
As Dennis and many other astute commenters have pointed out, these old 101 decisions can’t be reconciled with each other. Prometheus was the first modern 101 decision to deal with contemporary claiming “paradigms” and articulate a reasonable practical test. Some of these older 101 decisions (and any Fed Cir decisions aligned with them) are going to end up in the trash bin out of necessity. And it’s impossible to imagine that the decisions that represent expansions of eligible subject matter are going to be the decisions that survive.
“There’s nothing “rational” about defending claims to “new functions” for old computers because there was nothing “rational” about the decision to allow that practice in the first place.”
LOL – what? Maybe if you ever explained how an ‘oldbox’ without changing ‘magically’ had new capabilities…. (See Nazomi, also see Alappat).
“As Dennis and many other astute commenters have pointed out, these old 101 decisions can’t be reconciled with each other.”
LOL – an incontrovertible fact is that included in these “other astute commenters” is none other than me.
This appears to be another GLORIOUS admission against interests given how long Malcolm has (without providing any subtantive backing) merely claimed that Prometheus was fully in line with the 101 decisions that the decision itself said were most on point and that were not being changed.
Maybe it is only possible in the intellectually dishonest and “within the subjective mind” that Malcolm can now hold two completely opposite viewpoints.
Oh, Happy Day
This appears to be another GLORIOUS admission against interests
Wow. Careful with those meds, Tr0llb0y.
Brushing aside the innuendo, I cannot find any point in your reply.
“This appears to be another GLORIOUS admission against interests given how long Malcolm has (without providing any subtantive backing) merely claimed that Prometheus was fully in line with the 101 decisions that the decision itself said were most on point and that were not being changed.”
You have a really bad time with your reading comprehension. From what he said I’m pretty sure he still thinks the 101 cases at the USSC were just fine and all in line with each other ta rd. He’s talking about the crp that has come out of the CAFC both not being in line with the USSC’s decisions and also even somewhat not even being in line with yet other CAFC decisions. Some of that CAFC nonsense is going to get chucked sayeth the MM. That’s hardly an admission against interest. He specifically says that he thinks it will not be the ones that are against software which will be chucked. That’s the same thing he’s been saying for years.
“Benson they argue was correctly decided because of the admission by the applicant that the claim covered its conduct by a human. ”
Benson never admitted that it covered a human conducting the algorithm. Where on earth did they get this idea?
6,
If you read the brief you would see that the authors accessed the prosecution history which contains things generally not in the common knowledge.
Oh snap! I might have to check out this brief! Did they put appendices also?
Even so, if they did admit such before the office the USSC doesn’t appear to have relied on that at all.
Well sht my pants! Look here, a copy of the proceedings at the PTO! Made truly public finally by Professor Hollaar! Praise be to a great man! How this went undone for some 50 years is ridiculous! Had I have known such a thing existed or how to find it I would have had to go grab it up myself.
link to digital-law-online.info
link to digital-law-online.info
That said, the brief’s argument sort of falls flat. Benson’s statement that “the method represented by these claims can also be carried out by hand, the shifting and adding operations being manual” (page 25 of the PDF, page 23 of the prosecution history), and “They can even be practiced by hand.” (page 27 of the PDF, page 24 of the prosecution history) doesn’t really indicate that Benson was admitting that the claim covered doing those things by hand. He was merely admitting that you could perform the algorithm by hand, which of course was noted by the court. Though I would be on board if Benson had expressly noted that the reentrant shift register was merely a euphimism shall we say, and included doing it manually. Sadly though a reentrant shift register is a device. If there be any doubt about the matter people can simply consult the art. The wiki appears very clear about what a shift register is.
link to en.wikipedia.org
A cascade of flip flops (some 1950’s tech right there).
As to the term reentrant shift register according to the art
link to books.google.com
On page 160 bottom of page, a reentrant shift register is simply a shift register with the serial output fed back to the serial input. Which makes sense, the output is reentering the input.
But super interesting anyway!
Well sht my pants! Look here, a copy of the proceedings at the PTO! Made truly public finally by Professor Hollaar! Praise be to a great man! How this went undone for some 50 years is ridiculous! Had I have known such a thing existed or how to find it I would have had to go grab it up myself.
For some reason my post is stopped from posting with links. The links are in the brief on page 18 or 19 and link to the appendices of Benson’s prosecution history made digital!
That said, the brief’s argument sort of falls flat. Benson’s statement that “the method represented by these claims can also be carried out by hand, the shifting and adding operations being manual” (page 25 of the PDF, page 23 of the prosecution history), and “They can even be practiced by hand.” (page 27 of the PDF, page 24 of the prosecution history) doesn’t really indicate that Benson was admitting that the claim covered doing those things by hand. He was merely admitting that you could perform the algorithm by hand, which of course was noted by the court. Though I would be on board if Benson had expressly noted that the reentrant shift register was merely a euphimism shall we say, and included doing it manually. Sadly though a reentrant shift register is a device. If there be any doubt about the matter people can simply consult the art. The wiki appears very clear about what a shift register is.
link to wiki on shift registers goes here.
A cascade of flip flops (some 1950′s tech right there).
As to the term reentrant shift register according to the art
link to google books of Introduction to Digital Electronics By J. Crowe published first in 1998 page 160
On page 160 bottom of page, a reentrant shift register is simply a shift register with the serial output fed back to the serial input. Which makes sense, the output is reentering the input.
But super interesting anyway!
6, thanks for reviewing this for all of us. It does seem that the Supreme Court summarized the prosecution history just fine. While the applicant admitted that the process could be carried out by hand, they never admitted that the claims covered such. Neither did they admit that the claims covered mental processes.
In the end, I think all that Benson stands for is that the output of the algorithm was a number and that it was not applied to any useful and just as they said in the case.
In a similar vein, Flook was decided the same way. All it produced was a number. Ditto Bilski.
In contrast, Diehr used the number to modify the molding process.
Ned,
Actually it appears to be the opposite of “It does seem that the Supreme Court summarized the prosecution history just fine. ”
Precisely because the applicants attempted to differentiate their claim from something that could be done completely in the mind “Neither did they admit that the claims covered mental processes. – is exactly the wrong take-away, and we see that the Benson decision is even more flagrantly wrong than ever before.
It is clear that counsel purposefully disavowed claim scope to cover any type of mental steps doctrine that covers claims completely in the mind. The Court ignored that disavowal completely in its quest to stick its fingers into the 101 nose of wax.
“In the end, I think all that Benson stands for is that the output of the algorithm was a number and that it was not applied to any useful and just as they said in the case. ”
I’m still surprised you can think that. I mean seriously? They were up front about what it “stands for”. No preempting algorithms, because they’re abstract ideas. Period. It isn’t really that complex.
But hey, maybe if you know those guys that wrote the amici you can report to them on what a shift register is.
anon: It is clear that counsel purposefully disavowed claim scope to cover any type of mental steps doctrine that covers claims completely in the mind. The Court ignored that disavowal completely in its quest to stick its fingers into the 101 nose of wax.”
Anon, I agree with you that when the claims were limited to a computer, they no longer cover mental steps. Thus the view that Benson held the claims ineligible because of mental steps has to be wrong.
As I said, the common link between Benson, Flook, Diehr, and Bilski is that the claims that ended in a number were held in eligible and the claims that used a number were held eligible. It is simple as that.
“Precisely because the applicants attempted to differentiate their claim from something that could be done completely in the mind “Neither did they admit that the claims covered mental processes. – is exactly the wrong take-away, and we see that the Benson decision is even more flagrantly wrong than ever before.”
For those of us that already understood the case in that fashion just from the decision this is nothing new. If it is new to you, so sorry, you’re just bad at reading. I know this doesn’t come as a surprise to you as surely you must be becoming more self-aware of your reading impairment by now, but still, you shouldn’t take it as some world-shattering event. Just adjust your reading of the rest of the case, now in a better context. Also if you’re just now understanding that about the case then you might just ask yourself what else you might be missing due to those poor reading skills and whether that something is precisely what I’ve preached on here for nigh on 4 years and which has been recognized by the USSC of late.
There’s nothing wrong with having poor reading skills man. You just need to factor them in when you’re reading stuff. Know that you might not be taking away the correct thing, or you might be missing something that might lead what you’re reading to actually be quite different from that which you’re taking away. Consider other people’s readings of the same thing. Doing so can only make you a better reader. Even people with good reading skills know they must account for the writing ability of the author to properly express himself and other factors like the intended audience etc. Indeed, that is part of what makes you a better reader.
Overall though anon, I’m glad you’re reaching this small breakthrough in your understanding of Benson. Who knows, if you try super duper hard in another ten years you may just get the whole thing under your belt! Anything is possible!
“It is clear that counsel purposefully disavowed claim scope to cover any type of mental steps doctrine that covers claims completely in the mind. The Court ignored that disavowal completely in its quest to stick its fingers into the 101 nose of wax.”
So now that you understand this, take the next step padawan! You’re so close! What was the specific action that they took when sticking its fingers into the 101 nose of wax and why did they do such? It’s ok to say that they held that the claim would preempt all uses of the algorithm (by design) and that since the algorithm was an abstraction the claim would effectively preempt the abstraction (by design of the applicant) and would preempt judicially excepted subject matter! It’s ok to just say it bro!
6, what “judicially excepted” subject matter was “preempted?
Not mental steps, as the claims were limited to computer execution and the applicant disclaimed coverage of humans conducting the algorithm.
6, you really have to get off this preemption bandwagon with respect to undefined abstractions. No one knows what that means, even today. Bilski may be the worst Supreme Court case ever written by anybody in history because of where it left patent law.
Benson objected that the claimed algorithm was not applied to a specific useful end. Indeed, it ended in a number. So did Flook. In fact Flook disclaimed preemption and began its discussion by noting that an alarm limit is a number.
Diehr employed a computer, but it also applied the computer numbers to a molding process. That is the distinction, not preemption.
Bilski was a fubar, and it got to be a fubar because of …..
Rader.
Well 6, Benson said a lot of stuff — threw the proverbial mud at the wall. To find out what stuck, you have to compare the holdings of Flook and Diehr as well.
Benson ended in a number. Ditto Flook. Diehr applied a number.
That tells you what of Benson was important. The “number.”
Numbers are not things. Numbers are information. They may be useful, but numbers themselves are not a use.
Apply the number to an application and we move from the principle in the abstract to a principle applied.
It is very simple in the final analysis.
A lot of words (meaningless ‘politicking’ words) from 6.
Try again 6 – this time without the ‘politicking.’
“6, what “judicially excepted” subject matter was “preempted?”
The algorithm. Jes us fu ck, have you been paying attention at all for the last 6 years?
“Not mental steps, as the claims were limited to computer execution and the applicant disclaimed coverage of humans conducting the algorithm.”
You an I are agreed on that. And so is the USSC. What. they. are. concerned. about. is. all. applications. of. the. algorithm. J e s u s! The USSC posits that if someone can claim all applications then effectively they’ve claimed the algorithm itself, FOR THE PURPOSES OF THE PATENT SYSTEM. That last part is important so I tacked it on. How many millions of times do I have to remind you guys of this thing that they blatantly said right in the decision for everyone to read?
“6, you really have to get off this preemption bandwagon with respect to undefined abstractions. No one knows what that means, even today.”
Well that’s your own fault. The supremes do. Some CAFC judges get it. It looks like nearly all DC judges get it just fine.
“Bilski may be the worst Supreme Court case ever written by anybody in history because of where it left patent law.”
Idk about that. They just didn’t mess with what was already in place because they didn’t need to for the case in front of them.
“That is the distinction,”
Mmmm, idk bro, according to the decision itself, the “distinction” is simply that it was a method of molding in the first place. And that it was unquestioned that applicants were not trying to preempt the arrhenius equation, they just wanted one little tiny application thereof.
“Bilski was a fubar, and it got to be a fubar because of …..
Rader.”
eh, cut him some slack. It was really more because of Benson.
“Benson ended in a number. Ditto Flook. Diehr applied a number.”
Just stop talking the numbers Ned, it’s annoying and no judge gives two shts about them, and none of the decisions mentioned anything about them except flook in passing.
“Apply the number to an application and we move from the principle in the abstract to a principle applied.”
Sure, as long as the application is in the traditional useful arts you’re all straight so long as you’re not trying to get all applications of that principle in the abstract to the whole field or to all fields. Np with such claims.
“is in the traditional useful arts ”
LOL – but only the subjective in the mind of 6′ “traditional useful arts that is….
Why?
Because the acolyte RQ/HD wanna be says so.
Never mind what he Courts have actually said on the subject.
/facepalm
6, “it’s the algorithm they are trying to protect.”
An algorithm can loosely describe any method. What makes excluded algorithms different from algorithms that are excluded is that the excluded ones are mathematical in nature in that they operate on numbers. But, this is the way all computers operate. They all operate on numbers. Thus every computer program is implicated in the exclusion.
But what distinguishes the excluded from the included is whether the output of the algorithm is used to do something. If it ends in a number, unapplied, the claimed is ineligible. If it is applied to useful end, it is eligible. It is as simple as that.
Ned,
Even better than your comment of “Thus every computer program is implicated in the exclusion.” is the direct quote from Benson ending in “We do not so hold.”
Remind me please about the start of that quote…
And then finally will you please do as I have asked of you and stop conflating the utility requirement of 101 with the statutory categories requirement of 101?
“An algorithm can loosely describe any method.”
That’s not really the “algorithm”s that we’re discussing here. We’re talking about a computer algorithm. The fact that you might be able to characterize any method as an algorithm is immaterial. Why does your brain keep trying to bring irrelevant nonsense into this to try to make it seem relevant?
Just stop man. The decision is a simple one for a simple time for a simple technology. The man discovered an algorithm. He figured he could use it for stuff by implementing it with a shift register. That happened to be the only known use for his algorithm (and likely is still). He tried to patent the use of his algorithm on those shift registers. The USSC said nah bro, if we let you have this we may as well just let you have the patent on the algorithm which is forbodin, so nah. It really is that simple. It has nothing to do with making all methods into algorithms or anything of the sort.
“What makes excluded algorithms different from algorithms that are excluded is that the excluded ones are mathematical in nature in that they operate on numbers. ”
Not really ned. It has nothing really to do with “numbers” and everything to do with the abstractness. Sure, numbers are a subset of abstract things, but the thing that concerns us is the abstractness, not simply the numbers. There are practicallyan infinite amount of abstract things that concern us other than numbers.
“But, this is the way all computers operate. They all operate on numbers. Thus every computer program is implicated in the exclusion.”
Indeed so. But some computer programs could be included in some claims that could survive. It is an acceptable compromise in this context to allow for programs that are directed to the traditional useful arts and to a narrow application of whatever programming is recited. Ala Diehr where the computer program utilizing the arrhenius equation appears more or less old from the art of record but they’re just claiming using it in the context of auto-opening a mold after a curing has taken place. Nobody much cares about that. Though congress could go ahead and wipe those out as well if they wanted.
“But what distinguishes the excluded from the included is whether the output of the algorithm is used to do something.”
You’re overly concerned with the output of the algorithm being used. That’s not really required though it is one way to get over one hurdle of not having your claim ultimately preempting the algorithm.
“If it ends in a number, unapplied, the claimed is ineligible. If it is applied to useful end, it is eligible. It is as simple as that.”
See but that’s not necessarily so. You could hypothetically, though I don’t know why you’d want to, write a claim with limitations in it to a computer humming along not outputting anything or outputting a number, or any signal, that is not used at all in the claim for anything, and then also have limitations to a novel unobvious enabled traditionally patent eligible method. That’s perfectly fine.
As an example, if in Diehr they never actually used the number to do anything or they swapped out the program utilizing the Arrhenius equation for some random program that wouldn’t accomplish anything in a rubber curing process, the claim would still be eligible. Though there is no real reason to tack such computer program limitations on though. Which was a pretty big wrinkle in Diehr, there was no reason to have those computer limitations in there in the first place excepting perhaps to “set the background” for the claim as some drafters are fond of doing unnecessarily limiting their claim’s scope. The only other reason that I can think of is that perhaps the drafters thought that they should put that limitation in there so that the scope of the claim would reasonably correlate to that which they enabled because previously the auto-opening was not enabled due to people not having good enough temperature measurements and then knowing to use them in the arrhenius equation via a computer.
anon, I think our real debate has always been about whether the use is the kind of use that is eligible. Hope, love, music are clearly excluded and we agree. You contend that price is not clearly excluded — and I think the reason is that price is useful. Do I have that right?
6, You say the issue is abstractness, but no one really knows what that means. We talk about the preemption holding of Benson. I agree that case did hold that the claims preempted all practical uses. But the very next case Flook said Benson was not about preemption but about mathematical algorithms. It started its opinion by noting that an alarm limit was a number.
For this reason, 6, the issue of preemption has been cabined by Flook. It is not really an issue. That Bilski raised it once again is a travesty, because there they really did not understand what they were saying. That case is an utter joke.
6 trips with “See but that’s not necessarily so. You could hypothetically, though I don’t know why you’d want to, write a claim with limitations in it to a computer humming along not outputting anything or outputting a number, or any signal, that is not used at all in the claim for anything, and then also have limitations to a novel unobvious enabled traditionally patent eligible method. That’s perfectly fine.”
That’s because you have to look at the claim as a whole, right 6?
Ned inches closer to understanding with “anon, I think our real debate has always been about whether the use is the kind of use that is eligible”
It appears the light of comprehension is flickering when one stops conflating the 101 requirement of utility with the 101 statutory categories.
Keep in mind Ned, that both Benson and Flook were cabined by Diehr.
Ned,
Bilski could have been worse. Stevens could have maintained his anti-business method, rewriting the explicit words of Congress, early majority position, and really caused a constitutional separation of powers crises.
As it is, Bilski really only does have two holdings to keep in mind. Did you ever check out the right hand column on the wiki page I supplied? link to en.wikipedia.org
“That’s because you have to look at the claim as a whole, right 6?”
Um no, it’s because in such a claim you’re not trying to preempt all uses of an abstract idea, natural phenom, or lawl of nature.
But yes anon, you and I both agree that you must look to the claim as a whole when beginning your analysis, you don’t just leave parts of the claim out of the analysis entirely (i.e. totally ignoring them). The only thing we disagree on is whether you can dissect the claims for purposes of analyzing the claim. Which I say you may. And which the USSC says you may. You and a group of holdover ta rds that have trouble reading a throwaway paragraph in Diehr in context are the only ones remaining saying you cannot. So, you may dissect.
And, even dissecting hypothetical claims like I put forth will yield the same result as I just came to. That it is perfectly alright.
“6, You say the issue is abstractness, but no one really knows what that means. ”
People who aren’t re tar ded know.
“We talk about the preemption holding of Benson. I agree that case did hold that the claims preempted all practical uses.”
Well then for the love of all that is good and holy stop talking about numbers and uses thereof. Just stick to the basics of what was held and you’ll be fine and dandy. Though an art class to help you understand what abstractness is might help.
“But the very next case Flook said Benson was not about preemption but about mathematical algorithms.”
Um no. They did not say that in Flook. Benson is about both, preemption and mathematical algorithms. In fact it was about preemption of a specific mathematical algorithm. You in fact just admitted such in the post I’m responding to.
“It started its opinion by noting that an alarm limit was a number.””
Right those are the facts of Flook which is why they brought up a number in passing. But those are just very specific facts to the Flook case. They’re not some general rule that all 101 determinations are about. Or even a rule that all 101 determinations related to computers are about.
“For this reason, 6, the issue of preemption has been cabined by Flook. ”
Um nah bro. You need to read Flook again, like ten times if necessary until you understand that isn’t even close to right. Flook reaffirmed Benson and cited it approvingly, it did not “cabin” the very simple holding in Benson at all. On the contrary it broadened the application of the notion of preemption (the preemption doctrine shall we say) to where even if you limit your claim to one single field of endeavor or add on some pre/post solution activity they’d still bust you for attempting to patent the abstract idea, just because they felt like the drafters were acting an ar se and attempting an end run around their overall exceptions to patentability.
“It is not really an issue.”
Well you can keep asserting that while the court invalidate claims left and right over just that issue. Up to you bro, but your clients might not be impressed when their claims go down because you, their lawlyer, can’t understand a very simple concept announced 50 years ago and abide by it.
“That Bilski raised it once again is a travesty, because there they really did not understand what they were saying. That case is an utter joke.””
Meh. Your opinion. I hear it, but pshaw, you don’t have power over the situation.
6, No preempting algorithms, because they’re abstract ideas. Period. It isn’t really that complex.
And that is why the jurisprudence has become so screwed up. Benson did say this, but a set of the things as well. They also said that the essence of a patentable process was its application to a useful end. The common factor in all the section 101 cases related to computers is this: if the claim ends in a number it is not eligible. If the claim uses a number to produce a useful end, it is eligible.
If anyone was searching for a simple rule regarding computers implemented inventions, just read these posts.
Ned,
You are one (very small) step away (again) of realizing why the conflation of the utility aspect of 101 with the eligible categories aspect of 101 is so damaging.
Conflation – the WHATEVER mantra – in law is something to be despised. The purposeful seeking out of conflation – as is done by those with a specific anti-software patent agenda – is the anathema of those who respect clarity in law.
“And that is why the jurisprudence has become so screwed up”
How is that screwed up? It’s easy and straightforward. A very simple holding for a very simple time (the 1950’s).
“They also said that the essence of a patentable process was its application to a useful end”
Well yes, as far as dicta goes that’s decent to say, just to help poor applicants get their sht together.
“The common factor in all the section 101 cases related to computers is this: if the claim ends in a number it is not eligible. If the claim uses a number to produce a useful end, it is eligible.”
Well idk about that. You’re leaving out the most important term from their dicta. The “application” part. Sorry Ned, you leave that out and your sht just ain’t right bro. It’s the application that’s important, the useful end is just a shout out to the utility req.
The irony here is that the ends and means do matter – together.
Let’s see if that lesson can be applied to the “subjective in 6’s head” views and bring him in line with the objective law that exists in reality outside of 6’s head.
Yeah I’m reading benson’s opening brief and it states quite clearly on page 24 that “even if it were admitted that these steps could be performed mentally, WHICH IS NOT ADMITTED, it is clear that none of these steps would require reflective or interpretive action on the part of an operator”. Seems pretty clear that applicant argued that “appellants, however, call for steps which are all of extreme simplicity, requiring no involved or complicated processes to implement, AND ARE ALL PERFORMED BY THE DISCLOSED APPARATUS”. I mean, it’s pretty hard to read that as an admission that the claims cover mental activity.
The discussion in the prosecution history is simply talking about the algorithm itself, which undoubtably can be carried out by hand. The claim however is argued by applicant to not cover such.
In any event, super duper interesting to read that!
Ned: The brief by Trzyna and Lee Hollaar argues nothing short of this: if a computer is recited, if an article of manufacture is recited, the claim is eligible. On the latter, they would declare music CDs eligible.
LOL! And let me guess — patent examiners could deal with digital information encoding “non-obvious” sound waves under 103? Exactly how does that work? Under what theory? What about “claims as a hole”? What about a computer hard drive storing the music? Can I overcome the rejection by showing that I sold 400,000 copies of the sound file?
It is to laugh.
This position, if adopted, would be elegantly simple to administer, but would so elevate form over substance that the public would begin to think that the Supreme Court was composed of cre tins.
I’m pretty sure the public has a good idea about who the cre tins are already. They’re the softie woftie people who want to claim “new functions” and who are despereately trying to defend their interest in a patent system that ran off the rails some time ago. They’ll do and say anything to keep their boat floating, and they’ll deny the noses on their faces even when the mirror is held right in front of them.
IBM’s brief deserve special mention because it seeks to wholly erase the “abstract idea” exception. IBM assures the court that the inquiry under section 103 would fully address the courts concerns in prior cases for wholly preempting general principles. Furthermore, they argue, the obviousness inquiry under 103 must be free of 101 concerns.
They argue that abstract ideas is fundamentally different from the law of nature and natural phenomena exclusions. The latter are easily identifiable in a course eligibility test, while the former are not. They argue that the abstract ideas exception has been a total failure in practice. It could exclude, they argue, fundamental advances in computer technology such as public key encryption.
The IBM brief fails because of their argument that 101 considerations must be excluded from 103. Thus any difference between the claimed subject matter and the prior art, whether it be technological or other, would, if considered to be nonobvious, lead the patentability. Not even the Europeans go that far. If accepted, Benson is overruled.
The clue for eligibility is actually stated earlier in their brief, but then ignored thereafter. Let me quote:
“Courts and Amici agreed that the technological functions carried out via software could also be implemented through computer hardware in the form of integrated circuit (chips) are other discrete electronic components, and the patent eligibility of those tangible devices is beyond question. Accordingly, there is no principled reason to draw distinctions between hardware and software when it comes to section 101 patent eligibility.”
But there is a principal reason to draw distinctions between hardware and software – and that is where the software is not used for new technological functions, but simply to calculate things like price. The fact that IBM totally ignored this reality in their later argument is why their argument must fail.
Assume that the software here simply was used as in State Street Bank to calculate the improved price. The test that IBM advances would allow the patentability of that software simply because it was implemented on a computer. Since that result cannot be correct, IBM’s test fails.
But they got close. If they would add that the differences between the prior art and the claimed invention were technological, then I would agree that that moving the inquiry to §103 would work.
Ned: IBM assures the court that the inquiry under section 103 would fully address the courts concerns in prior cases for wholly preempting general principles. Furthermore, they argue, the obviousness inquiry under 103 must be free of 101 concerns.
Hilarious. So IBM expressly advocates that the Supreme Court rejects the so-called “printed matter doctrine” invented by CCPA and later adopted by the Federal Circuit?
That would show a surprising degree of integrity. Should I be surprised, or is IBM just playing the predictable and self-interested game of whack-a-mole?
there is no principled reason to draw distinctions between hardware and software when it comes to section 101 patent eligibility
There is no “principled” reason to allow applicants to claim new “functions” for hardware or software merely because those functions are “new” or “non-obvious”.
The IBM brief fails because of their argument that 101 considerations must be excluded from 103. Thus any difference between the claimed subject matter and the prior art, whether it be technological or other, would, if considered to be nonobvious, lead the patentability.
Indeed. And that game is so transparent and so tired that it boggles the mind that they’d shove it under the Supreme Court’s noses again. I guess when you got nothin’ else, might as well just throw the hail mary and say “we tried.”
I wonder if footnote 4 of the IBM brief struck a chord with Malcolm (as he has repeatedly shown an inability to understand the differences in protection that copyright and patents provide).
he has repeatedly shown an inability to understand the differences
This has been another episode of “Meet the Pathological Liar.” Be sure to tune in tomorrow when the Caped Deluder will present more examples of his “power.”
LOL – except for the fact that my posts are accurate and that you have repeatedly suggested that copyright is ‘good enough’ to cover what patents cover – clearly not true.
GASP – Malcolm caught in a lie, lying about his own obfuscations and lies….!
Sorry mr. zero credibility boy – maybe if you hadn’t created this problem for yourself by incessantly posting that you don’t think that intellectual honesty is required for blogging, and the little thing about constantly dissembling you might have a leg to stand on.
Then again, maybe not.
As they say, svcks to be you.
GASP – Malcolm caught in a lie
GASP- anon caught in a lie.
Fun game! You’ll start the next round as usual? Show everyone your awesome “power”!
LOL – but the record really does show you saying that copyright is every bit as effective as patent to protect software.
A statement incontrovertibly false.
How is your search for incontrovertible facts coming along?
LOL – the ‘game‘ is not going well for you. You should think about trying something else.
the record really does show you saying that copyright is every bit as effective as patent to protect software.
Does “the record” show that? Show everyone the quote, and provide a link to the thread so the quote (whatever it is) can be seen in its original context.
Yes, the record really shows it.
No, I will not provide a link right now.
Do you deny saying such?
MM: There is no “principled” reason to allow applicants to claim new “functions” for hardware or software merely because those functions are new or non-obvious, except if it is enabled by the specification.
I fixed your sentence for you.
Why are you on such a big “enablement” kick these last couple months NWPA? I don’t recall you being all “enablemented” out in years past, what changed?
6, my “enablement” kick as you put it is in response to the latest functional claim attack. You see, the big picture: these simians keep attacking the patent system. They always misrepresent or leave off something. In this case, with the functional claim attack, they are leaving off that the enablement part.
It is nice that their natural law arguments have finally died, but they have resurrected themselves with functional claim arguments.
And, ole Neddie boy, trying to pass one over on us with the EPO nonsense that information processing isn’t technical in nature.
“They always misrepresent or leave off something”
You realize NWPA that 6 just verified that such shenanigans are perfectly justified in his own mind.
Night, do you really contend that using a computer to calculate numbers is patentable so long as the algorithm is new?
If this is what you contend, what is the difference between reciting the computer and not reciting the computer if the algorithm is the invention?
Ned,
Let’s not conflate utility, ok?
“6, my “enablement” kick as you put it is in response to the latest functional claim attack”
Oh, alright. Good that you at least recognize the source of your making up some nonsense. Also good to see that the latest “attacks” are provoking you. ;’p
“They always misrepresent or leave off something”
Well come on NWPA, they feel the same way about you. I’m willing to put both sides view’s forward, in their entirety, and have the USSC decide the matter. Are you?
“In this case, with the functional claim attack, they are leaving off that the enablement part.”
That’s a little bit bizarre of a statement to make, their argument is usually iirc that x isn’t described sufficiently, i.e. WD problems. They don’t even bring up enablement nor do they care much about it in terms of making their argument. You seem to be advocating that they first should erect a straw grounds of rejection, or straw argument for invalidity in court, on enablement grounds so that you can knock it down. Or else you appear to be arguing that at the least, so long as you enable something you should be able to get a patent on it sans written description thereof. I mean, what you’re saying just seems bizarre even if it really isn’t. If you’d like to set the record straight, if those aren’t your basic arguments written out longhand, I encourage you to, just so you don’t come off as seeming quite as nuts.
“It is nice that their natural law arguments have finally died, but they have resurrected themselves with functional claim arguments.”
I don’t recall that ever having taken place, must have been before my time. Is it in legal journals or something? Because I’ve been reading some of the old stuff and I don’t see hide nor hair of such. But as a a proponent of the functional attacks, I’d just like to thank you for doing us the service of providing credence (and even throwing in some crazy sounding rebuttals for free) to the arguments!
“You realize NWPA that 6 just verified that such shenanigans are perfectly justified in his own mind.”
Of course anon, as they are in thousands of other minds concerned with the topic. It’s called politicking brosefus.
6, scope of enablement. Read LizardTech. This functional claim nonsense is just that–nonsense. Read Deener. And, read cases regarding claiming function of a machine in the early 20th century.
In other words, read cases before the Lemley propaganda machine was in full swing.
I gotcha on the old cases. I’ve read deener and lizard though, I see no reason to read them again. I am interested in what your actual “argument” is though, which is why I’ve invited you to make such a bit more explicit, if for no other reason for us to all have a good laugh!
6 misses (again and badly so) with “I see no reason to read them again”
To 6, ‘reading’ is enough, as it is clear that all that matters to 6 is the subjective view within his own mind and any semblance of an objectively correct view of the law is to be dismissed while he is “playing politics.”
The fact that he openly admits to this ‘world-view’ destroys WHATEVER slim hope of credibility that he may hope for – and that he is simply blind to this fact simply does not matter to someone who so relentlessly commits character suicide.
That he thinks that his approach yields ‘good laughs’ only shows that he is the f001.
6, scope of enablement.
That is what a person is entitled to claim. Pretty simple argument. Laid our very clearly in LizardTech.
Not sure what you have to laugh about. My guess is that the distance between the Lemley fantasy world of deciding cases by the judge looking at an invention and proclaiming whether it is good or not, and the world that we should all live in where the law is applied would make anyone laugh–or the moral people cry.
“That is what a person is entitled to claim. Pretty simple argument. Laid our very clearly in LizardTech.”
K, so does Lizardtech also note anything about the WD req or do they just set it to the side because that case didn’t involve that issue?
“Not sure what you have to laugh about.”
Your pathetically bad misunderstanding from Lizardtech that they didn’t mention WD because it was not at issue in that case. I’m mean, it’s just… so bad. So bad it’s funny.
“I guess when you got nothin’ else, might as well just throw the hail mary and say “we tried.””
True.
Ned, we’ve been through this before and you know that our Courts have held that Useful Arts is broader than technological arts.
It is pure legal error to hold otherwise.
You need something else for your argument to hold any weight.
Ned, you are (again) off with “and that is where the software is not used for new technological functions”
The US Courts have held that there is no technological arts test.
You really need to realize the extent of the difference between Useful Arts and technological arts (and try to stay within one nation’s jurisprudence – this nation).
Further, you are conflating a different aspect of the 101 test: utility.
The utility requirement is separate from any of the judicial exceptions.
The utility requirement is also separate from any of the named explicit categories of patent eligible subject matter.
You can have a brand new chemical not found in nature, perfectly described in a claim in glorious and exacting structure (including spatial folding parameters) and without utility, that chemical is just not eligible.
Ned, pay attention to your arguments and make sure that you are not conflating the different aspects of the 101 test.
Anon, you assume that technological is narrower than useful Arts, when in fact it might be broader.
Regardless, I agree that no court has held that useful Arts and technological are co-extensive.
Thus a computer programmed to play a new song may be eligible, and the brief by Trzyna and Hollaar actually makes the argument that it is.
Sorry Ned, but I heartily disagree as the court decision that ruled that we (in the US) do not have a technological arts test fully indicated that the Useful Arts were broader.
I can see no realistic nor reasonable way that the Useful Arts are more narrow.
None.
As to your ‘music’ line of thinking, you are simply pursuing a false path, one easily defeated.
I have not read the Trzyna and Hollaar brief yet, so I am not sure if you are merely over-reading that brief or in fact Trzyna and Hollaar are also missing the other aspects of 101.
Ned, we know what the law is in Europe. Your views are from about 1950. Processing information is technical in nature.
“They argue that abstract ideas is fundamentally different from the law of nature and natural phenomena exclusions. The latter are easily identifiable in a course eligibility test, while the former are not.”
I agree with them on that for the most part. IDing abstract ideas is much harder, if for no other reason than the tricksey ways lawlyers try to hide them in their apps, or those same lawlyers failure to recognize such even while they were drafting the app.
” They argue that the abstract ideas exception has been a total failure in practice. ”
I must strongly disagree. To the extent that it has been a failure it is a result of the federal circuit’s failure to give good guidance, with many of them instead preferring to bury their heads in the sand and hope the whole thing blows over.
“It could exclude, they argue, fundamental advances in computer technology such as public key encryption.”
Sounds good. :0)
“The IBM brief fails because of their argument that 101 considerations must be excluded from 103. Thus any difference between the claimed subject matter and the prior art, whether it be technological or other, would, if considered to be nonobvious, lead the patentability. Not even the Europeans go that far. If accepted, Benson is overruled.”
Amazing that you’re starting to pick up on that Ned.
“Accordingly, there is no principled reason to draw distinctions between hardware and software when it comes to section 101 patent eligibility”
I have to disagree with them on that. Due mainly to the form that they tend to draft those claims in. Nobody would care much if they patented software the same way they patented hardware, describing the physical structure and claiming such.
“But there is a principal reason to draw distinctions between hardware and software – and that is where the software is not used for new technological functions, but simply to calculate things like price.”
Yeah that also. But that’s really just a subset of the problem I mentioned above.
“But they got close. If they would add that the differences between the prior art and the claimed invention were technological, then I would agree that that moving the inquiry to §103 would work.”
See and that is an acceptable compromise. In fact it is the only acceptable compromise.