Upcoming Supreme Court Arguments

By Dennis Crouch

  1. Exceptional Case Awards: The Supreme Court will be hearing oral arguments on February 26, 2014 in two patent infringement cases that both concern shifting of attorney fees under the “exceptional case” standard of 35 U.S.C. § 285. The Federal Circuit has traditionally been resistant to fee shifting awards – especially in cases where an accused infringer is the prevailing party. In Octane Fitness, petitioner asks the Court to lower the standard for proving an exceptional case. In Highmark, petitioner asks for deference to lower court exceptional case findings. We can expect that the Supreme Court will eliminate the Brooks Furniture test – at least as it is strictly applied.
  2. Patentable Subject Matter: On March 31, 2014, the Supreme Court will hear oral arguments in the software patent case of Alice v. CLS Bank. The case has the potential of drawing dividing line between what types of software are patentable and what types of software are not patentable. I am quite pessimistic that the result proposed by the Supreme Court will be fairly implementable by the US Patent Office.
  3. Indefiniteness: On April 28, 2014, the Supreme Court will hear oral arguments in Nautilus v. Biosig. That case questions the standard for challenging issued patents on indefiniteness grounds. We can expect that the Supreme Court will lower the standard for proving indefiniteness – down from “insolubly ambiguous” to a more “reasonable” standard. This has the potential of impacting a substantial number of patents that have issued with claim terms that intentionally flirt with ambiguity. Indefiniteness is regularly confused with over-breadth. Patent attorneys role moving forward will be in finding ways to draft broad but well defined claims
  4. Divided Infringement: On April 30, 2014, the Supreme Court will hear the joint infringement case of Limelight v. Akamai that posits the question whether the elements of infringement-by-inducement require a single entity who, based upon the inducement, performs all elements of the claimed invention. The Federal Circuit ruled that the single-entity rule of direct infringement should be relaxed for inducement and instead that the relevant question is whether the alleged inducer did indeed induce performance of all elements of the patented claim. Although the Supreme Court may prove some tweaks, I believe that the Federal Circuit approach here should carry the day.

Attorney Hal Wegner follows upcoming cases and regularly post various notices here: http://www.laipla.net/category/wegners-writings/

160 thoughts on “Upcoming Supreme Court Arguments

  1. Professor Feldman, UC Hastings brief: link to americanbar.org

    She attacks Alappat, the Federal Circuit, and lays virtually the entire troll problem not on litigation abuse, but on broad, abstract patents that that case spawned. Her brief, while not using the term functional claiming, makes it clear that the principles set forth in Morse about preemption are the primary problem.

    But she too struggles to articulate a clear test. She does not categorically oppose software patents: just patents that are not limited to specific steps. She struggles here. In this, she joins the struggling Federal Circuit.

    1. RandomGuy, I here you about programmed computer claims and CRMs. A simple test would ban them all — claim them as processes, which they are.

      1. The statutory basis for banning programmed computer and CRM claims is that they do not define new machines or articles of manufacture. Section 100 specifies that new uses of old machines are processes.

        (It is funny, but Maury Hickman, ex of IBM, used to argue to any and all that this was the real problem with programmed computer claims — the computer was not new. He was there at IBM when Benson came down.)

        1. Your statutory basis is a FAIL Ned.

          Clearly, software is a machine component and a manufacture in its own right. Clearly, a machine improved with the addition (and configuration) of software is a statutory category.

          You have to ignore the plain words of Congress to even begin contemplating the hocus-pocus you are trying to do.

        2. There is no “old machine” when you are talking about computers. There is a general purpose computer which is never claimed in software cases, and a specific purpose computer which contains code which is different than an old machine.

          While I disagree with your particular reasoning I agree with the broader point that the thing that imparts novelty and nonobviousness is, in actuality, a method, which is summarily being claimed only by its effect. In that sense, it is improper, but not under 100 grounds.

    2. Ned: She attacks Alappat, the Federal Circuit, and lays virtually the entire troll problem not on litigation abuse, but on broad, abstract patents that that case spawned.

      “The problem is not people who like to shoot other people. It’s the proliferation of really cheap AK-47s.”

      Of course patents on abstract information processing “functionalities” are a huge problem. And smart people knew it would present crippling problems for the patent system 40 years ago when the background trickle turned into a steady stream.

      But it isn’t the only problem.

      1. MM, perhaps not the only problem. How many times does the PTO issue claims like Selden’s — that read on entire industries — without there being a computer involved somewhere?

          1. anon, well the Bilski majority refused categorically exclude business methods, primarily because Congress did not exclude them by statute. However, Congress has limited patents on machines and articles manufactured to “new” machines and articles of manufacture. So the exclusion I propose here, while very simple, actually has support in the statutes.

            We have not one side Rich who argues that programmed computers are statutory as new machines. The simple rejoinder by the Supreme Court could be that they are not eligible subject matter is new machines because the machines themselves are not new. This solution would recommended itself to the Supreme Court because is a simple as their solution to the DNA question in Myriad.

            1. to “new” machines and articles of manufacture“:

              Try again Ned – the words of 101 are: or any new and useful improvement thereof

              You have NO support in the statute.

              Plain and simple, the ‘oldbox’ – without change – cannot do what the newly configured machine can do.

              In simple fact – and law – the machines are indeed new. If the machine was not new, you would have the ‘oldbox’ and an inherency situation. You would be attempting to validate the debunked “House” paradigm that the the inventor of the first computer invented ALL improvements to that machine – whether or not the ‘oldbox’ could perform them or not. You would actually be allowing a Morse type of “whatever invented in the future” be folded into the very first computer.

              It is a crock of sheepdip.

            2. Ned, you are right that it would be a simple solution–but a wrong one, of course as you well know.

              There is a machine. The machine is performing the job of a human. Ned says not patentable. Why does Ned say that. Ned says that ’cause he doesn’t like the way you made it. If you make it all in hardware then it is patentable. But, says the machine maker you can’t even tell how it is made without taking it apart.

              Doesn’t matter says Ned ’cause, ’cause, ’cause, I have a hidden agenda to rid the world of all these machines that have demons that are pretending to be people.

            3. The inventor also says to Ned that the reason he describes his invention in functional terms is because in modern times there are so many ways to implement the function but that he has enabled the implementation of the function so that his engineer buddies know how to build it. Why he says to Ned, they would build it in at least million different ways, but they wouldn’t have thought of this or known how to build it without me.

              Ned says shhh. If the Fed. Cir. every understood this then my anti-patent gang would not have a chance of lying to the SCOTUS and the Fed. Cir. It is a good thing that you inventors aren’t very articulate and are busy making inventions.

              The inventor asks Ned to leave. Ned smirks and assures him that he will convey all that he has learned to the proper authorities. Ned writes up a new policy: “at all costs do not let inventors discuss our latest functional claim gambit.”

              The end.

            4. “new” also applies to improvement thereof.

              Come on now, it is a plain, simple fact that the physical components of the machine are unchanged. The Supreme could say, with a straight face, that if the machine is physically the same, it is the same.

              I am not saying that one cannot claim software or firmware. I just say that such is programming and programming is using the computer and can and should be claimed as a process.

            5. Night, on the functional definition problem:

              Try method claims. They are the way to claim inventions functionally. They also require multiple steps.

              In apparatus claims, you have to claim structure. That is all I am suggesting with this proposal. If the physical structure is the same, then the machine is old.

              There is a problem though in claiming apparatus functionally if the functionalities at the point of novelty. This effectively claims all the apparatus that achieves the function without regard to whether the disclosed, novel apparatus is included or not. Thus such a claim does not cover the disclosed novel and its equivalent, but the result, and that certainly includes non-equivalents.

              As I said, if invention is not really the structure, but the function, the proper form of claiming it is by using a method claim.

            6. Ned,

              You are simply wrong: Alappat

              You cannot “use” an ‘oldbox’ to do a new function.

              You must first change the oldbox.

              Forever and a day, this is a fact.

            7. “The inventor also says to Ned that the reason he describes his invention in functional terms is because in modern times there are so many ways to implement the function but that he has enabled the implementation of the function so that his engineer buddies know how to build it.”

              There’s no statutory basis for your “modern times” exception.

              “Why he says to Ned, they would build it in at least million different ways, but they wouldn’t have thought of this or known how to build it without me.”

              But no one inventor would know how to build it a million ways, and they wouldn’t have thought of it without you is an insufficient basis, moreover, it’s ridiculous when all you provide is an answer with no means of achievement.

            8. with no means

              You still are not very good at this and continue to march (rather pathetic) strawmen around Random.

              Descriptions of algorithms are included, n’cest-ce pas?

        1. How many times does the PTO issue claims like Selden’s — that read on entire industries — without there being a computer involved somewhere?

          I think the answer is never.

    3. Well I’m glad to hear that at least someone is on the ball!

      “But she too struggles to articulate a clear test.”

      Oh come off it. The test is a clear as it ever will be or needs to be. It’s 1000x clearer than “obviousness” and you deal with that every single day.

    4. Ned—LazardTech. Scope of enablement. Your story starts and ends there.

      I wonder if these dopey professors have ever written a patent application or even taken an invention and worked through all the ways to build it and all the ways to get around narrow claims. How do these people have the arrogance to open their mouths and spout their dirt.

    5. I am sure as you say Ned that this low life struggles….what a joke these cockroaches are that come out of the woodwork to try and get a bit of the crumbs. Just filthy humans.

  2. MM’s latest strategy appears to be to post these giant posts and then re-post to stay on the top.

    One thought: what does it mean if the Fed. Cir. invalidates 500,000 patents? It means the PTO wasn’t doing its job. How would that fit in with O’Bummer’s grand announcement?

    1. “It means the PTO wasn’t doing its job.”

      I’m not sure how you arrive at that. According you and your buddy anon, the PTO is bound to follow “the law” which is an motley assortment of soundbytes from semi-relevant cases on the issues that the fed. circ. may invalidate 5000000 patents over here shortly after having pulled their heads from their rears after seeing the effects of those soundbytes. I don’t see how you lay the blame on the PTO. Please explain how that legitimately is the place for the blame rather than your precious federal circuit in the first place.

        1. K thought about it, still not getting anything, care to take a stab at holding my hand through how this is properly laid at the feet of the PTO?

          1. No one said properly. Just think about it. There is always a scapegoat. If you go and invalidate 100′s of thousands of patents, it has to be someone’s fault and the likes of Laurie would never be a stand-up man.

            1. Oh so you’re just wanting a scapegoat. Well in that case, fine blame the PTO. Or blame me in particular. I don’t care if all you’re wanting is a scapegoat.

              “Laurie”

              I think it’s “Lourie” isn’t it? In any event, Lourie et al lay the blame at the feet of the USSC. And that’s fine. They’ll take the blame without complaining.

              And that’s probably for the best since the CAFC “experiment” is precariously perched enough as is. Them blaming their own pro-patent zeal for the colossal f up probably wouldn’t be for the best of the country even though the CAFC as an institution is profoundly flawed in its conception.

            2. “Your own ‘belief’ system is once again getting in the way of your ability to recognize facts as they truly are and law as it truly is.”

              Anon,

              Your own ‘belief’ system is once again getting in the way of your making an articulate comment related to what me and NWPA are discussing. Fun game sitting around making vague nonsensical troll posts! As MM would say anyway.

    2. NWPA MM’s latest strategy appears to be to post these giant posts and then re-post to stay on the top.

      It’s not about “staying on top.” It’s about not being buried who-knows-where where I have to scroll through five hundred different versions of anon proclaiming himself The Ruler of the Universe.

  3. RG keeping in mind the Office is to implement law that exists, not define law on its own

    I believe the PTO is free to implement rules and guidelines that reflect and promote the law as set forth by the Supreme Court and the Federal Circuit, in addition to effecting policy goals that are not in conflict with those laws (e.g., a working patent system that promotes progress in the useful arts rather than progress in bottom-feeding and agency capture by the already wealthy). That isn’t “defining” law.

    Re the following proposal:

    1) “New functions” are ineligible subject matter. A claim whose only novel feature is a “new function” is effectively a claim to the “new function” itself. Such a claim is ineligible. Example: A computer system, wherein said computer system is configured to receive a request for information from a woman between 20-45 and respond to the request by providing said information, wherein said information is a movie, wherein said movie includes a hamster, a lion cub and a green wizard. The analogous situation (which the USPTO does seem to able to “fairly implement” is a claim to a book with “new functionality” imparted by the words contained within).”

    RG wrote: A claim only to new functionality is not embodied and is subject to a 101 rejection, but the addition of a processor takes it outside of 101.

    That’s a legal question which has never been directly addressed. By analogy to the logic in Prometheus v. Mayo, the addition of “an old conventional processor” is insufficient to confer eligibility. At best, such a limitation is a field limitation.

    Every computer which achieves a function is almost certainly overbroad and subject to a 112, 1st rejection. When the function includes a particular limitation as to how a human being would interpret the data, there’s an argument it’s not inventive over prior art (i.e. a 103) because the structure is the same or equivilent, but that’s not a 101 either.

    Sure. It’s possible and not unexpected that a claim can fail 101 and other statutes as well. That is because the policy considerations underlying the various statutes are overlapping.

    I also wrote the following:

    “2) Information can not be protected by patents, regardless of any field of use limitations put on the information. Claims that effectively protect information are therefore ineligible. Example: A computer system, wherein said computer system is configured to receive a request for information from a woman between 20-45 and respond to the request by providing said information, wherein said information is a movie, wherein said movie includes a hamster, a lion cub and a green wizard. Sound familiar? It should.”

    RG responds: Again, my issue with this is a question of structure. If one were to invent a new structure of data transfer, than the structured information would be a discernable trait.

    To be clear, new useful structurally described compositions of matter, and new useful structurally described articles of manufacture (e.g., machines), and new methods employing such compositions are generally going to be patent eligible. I’m not suggesting that if the use of such a new machine is information-related (e.g., storing or transmitting information) that the machine is per se ineligible.

    I am saying this, however: claims that effectively protect information are ineligible, regardless of any field of use restrictions in the claim. For example, otherwise old books with new content are ineligible subject matter. Otherwise old computers with new content are ineligible subject matter. It’s not a 103 issue. It doesn’t matter how non-obvious the content is. The content need never be considered and should never be considered.

    RG: I agree, however, that if the prior art says transferring information and the distinction is that it transfers specific information, the former likely renders the latter obvious. This isn’t a hard and fast rule though.

    The alleged non-obviousness of the information content is completely irrelevant. Does ineligible subject matter become eligible subject matter if I sell a lot of it and press that secondary factor? Of course it doesn’t, and it shouldn’t.

    But you raise an interesting point regardless that I’m happy to discuss: in the context of a functionally-claimed computer, how exactly does one prove the non-obviousness of “specific” information content in light of reams of prior art teaching that computers can store and transmit any kind of information? In the past, the txxbaggers always punt and reply “the same as you would anything else.” To the extent that “answer” is even worth a response, it’s just an admission that the per se obviousness of a computer “capable of” storing/transmitting “specific” information content in view of the prior art is a “hard and fast rule (or should be, unless one wishes to continue to coddle the industry with exceptions to reason and logic).

    1. Continuing on with my discussion with RG, I wrote:

      “3) Abstractions (e.g., legal status, price, “importance”, “relevance”, and other terms devoid of physical/structural ) can not be relied upon to confer patentability to an otherwise old claim. Such claims are ineligible as being drawn to abstractions. Example: A computer system, wherein said computer system is configured to receive a request for information from a woman between 20-45 and respond to the request by providing said information, wherein said information is a movie, wherein said movie is not yet authorized for distribution on DVD.”

      And RG responds:

      Other things on that list, especially relevance, are indeed structural, especially when the means of determining relevance are claimed.

      I’m not exactly sure what “means” you are referring to. Certainly a mental process of “determining relevance” of X in context Y is an ineligible abstraction. Are you saying that the recitation of an old computer for “automating” that process is a “means” which confers eligibility upon that abstraction? I doubt the Supreme Court would agree. Why do you think they would agree or should agree with you? Are patents necessary or helpful for promoting the development of new “relevance determinations”, or is there a serious risk that such inventions would hinder the development of such determinations? If you believe the answer is “yes”, consider the fact that the “automation” of your thought process in defending your answer would itself be eligible for patenting. Consider also the fact that the claim transforms nothing physical of relevance to the eligibility question.

      RG: Calculation of price, similar to any other calculation, is also something worthy of patent weight. The fact that it is price itself is irrelevant, but the calculation is important.

      I strongly disagree. A “price,” like a “legal status”, is simply an abstraction. A useful abstraction? Sure. That’s irrelevant. The calculation of a price, whether performed mentally or “automatically” by a computer is just a computer performing a math operation. You can substitute a made-up nonsense term for “price” and it would make no difference from a technology standpoint. Consider again: why burden the patent system with that kind of junk? For what purpose? If there is a business utility to a method of price determination (and what other utility could there possibly be?) then let the market determine that advantage without the patent subsidy and its inevitable drag on the system. There is no financial risk associated with the “innovations” in price determination methods. None. Patents are pointless in that context and promote nothing except grifting and abuse.

      RG: a database storing ownership information of land should be given patentable weight and be statutory (assuming it is embodied on a CRM). Now it may be obvious over other other databases, but it’s certainly not ineligible.

      I strongly disagree for the reasons already given upstairs. Old “databases” comprising “new” information are ineligible subject matter. They are also per se obvious. Be very wary of encouraging games of whack-a-mole. That’s how the computer-implementers corrupted the patent system in the first place.

      Automating a mental step requires code, code is a structure, and it is patentable. Automating a mental step is not abstract.

      Just so we don’t drift off into the weeds, let’s remember that we are talking about patent claims. A claim to a method of automating a mental step that is limited to specific code for achieving said automation may indeed be non-abstract. But a claim that merely recites the desired function and says “program a computer to automate it” is another animal entirely.

      RG: In any case, this is before the court

      If only. I’m pretty sure that the claims presently before the Court do not recite any code so the likelihood of the Supreme Court actually “head on” addressing the eligibility of a claim that is limited to specific code seems low. I’m happy to be proven wrong, of course.

      In any case, I don’t see a problem with the PTO getting ahead of this issue (and many other issues) if they have a reasonable legal and policy argument for doing so, and I’m certain they could come up many such arguments if they wished to. Worse comes to worse, the issue ends up in the courts sooner than it would otherwise given that parties on all sides (except for the party whose interests are paramount) seem invested in continuing the charade of functional claming.

      1. “Certainly a mental process of “determining relevance” of X in context Y is an ineligible abstraction.”

        Hmm, I’ve rethought this somewhat. Relevance is relationship. Determining relevance is determining if there is a relationship between the two. That, in of itself, is abstract. But “in context Y” may be structural. Context is structure, even if it is usually old and obvious. The abstract ideas doctrine requires a question of how much of the field it occupies IIRC. Certainly a very targeted google-like search algorithm would be eligible. this may just be a matter of degree.

        “The calculation of a price, whether performed mentally or “automatically” by a computer is just a computer performing a math operation. You can substitute a made-up nonsense term for “price” and it would make no difference from a technology standpoint. ”

        Performing a math operation does not make something ineligible. If you define a calculation to determine value and your underlying equation is novel and non-obvious then you have something allowable.

        Example: Calculating e=mc^2, not allowable. Determining the value of a baseball player according to (lifetime ba + ba over past 2 years) / slugging % * ratio of games played/missed is allowable. That’s because the latter is essentially stating a business method for determining which labor to hire but merely expressing it in a formula. Now if you want to describe it as a price, that has no bearing on anything. The selection and weighting of some factors and not others creates a structure that differentiates it from others. The same cannot be said for the relationship between mass and energy.

        “Consider again: why burden the patent system with that kind of junk? For what purpose? If there is a business utility to a method of price determination (and what other utility could there possibly be?) then let the market determine that advantage without the patent subsidy and its inevitable drag on the system.”

        That’s really not for the PTO to determine.

        “I strongly disagree for the reasons already given upstairs. Old “databases” comprising “new” information are ineligible subject matter. They are also per se obvious.”

        A book with new words is still a book. It’s eligible, you just don’t give weight to the words. It is obvious over any book. Same with a database.

        “Just so we don’t drift off into the weeds, let’s remember that we are talking about patent claims. A claim to a method of automating a mental step that is limited to specific code for achieving said automation may indeed be non-abstract. But a claim that merely recites the desired function and says “program a computer to automate it” is another animal entirely.”

        A computer is statutory though. I’m sure we disagree with this for the same reason the court did. A claim to all machines with a new function is overbroad and rejectable under 112, but it’s still a claim to machines and therefore survives 101. I will give you this: It sure appeared like the Morse court took this same situation and agreed with you. But I can’t square that with current 101 jurisprudence. We both agree they are junk claims, but we have different ways of getting rid of them.

        1. Thanks, RG. The points of contention are pretty clear and I’m pretty sure neither of us wants to go back and forth on the issues forever (at least not on this thread. ;)

          I’d like to follow up on two such points.

          1) Regarding the PTO “getting ahead of the courts”, I see this as part of the PTO’s job. A strong, functioning Patent Office should be thinking first and foremost about its duty to the public and about the health of the patent system as a whole. It certainly should not be in the business of giving its “customers” whatever they want simply because the “customers” are willing to pay for it or because the “customers” assert that without the patent they can’t shake down some investors for money.

          The PTO should be making thoughtful reasonable policy-based and legally defensible decisions all the time. The fact that there is some disagreement at the Federal Circuit level should not be a factor. What matters is the Supreme Court. The Federal Circuit may agree or disagree with the PTO but the PTO needs to think through its positions and it needs to be prepared to defend those positions. The PTO miserably failed in this regard when the Prometheus v. Mayo case came around and it’s been evident for ages that they don’t “get it” when it comes to functionally claimed computer-implemented junk. Hopefully that will change soon. No change in the existing statutes are necessary to effectuate that change. All that’s needed is the recogniation that the parts of the case law that allegedly support the granting of such claims are unjustifiable after more thoughtful consideration.

          2) With respect to this: A book with new words is still a book. It’s eligible, you just don’t give weight to the words. It is obvious over any book. Same with a database.

          How and why do you justify “not giving weight to words” under 103? I would like to know your reasoning and I would like you to imagine that you are explaining your reasoning to the Supreme Court which just issued a very clear 9-0 decision in Prometheus v. Mayo.

          Performing a math operation does not make something ineligible.

          Agreed. Please note, however, that your proposition is rather trivial and isn’t disputed by anyone, as far as I know. A claim that recites the word “love” isn’t per se ineligible either. So what?

          If you define a calculation to determine value and your underlying equation is novel and non-obvious then you have something allowable.

          Not true. How do you distinguish this from what Bilski did? What you seem to be saying is that an otherwise ineligible algorithm becomes eligible for patenting as long as you describe a field in which the algorithm can be “applied.” That makes no sense because you’re still protecting the algorithm. You are preventing people in a particular field from using math to calculate things. The fundamental problem does not disappear just because you “name” the numerical data that enters and leaves the algorithm.

          The selection and weighting of some factors and not others creates a structure that differentiates it from others. The same cannot be said for the relationship between mass and energy.

          This is exactly the sort of non-implementable gobbledygook that has turned the PTO into a joke and has created the mess that the Supreme Court is poised to either resolve or make much worse. First, the “structures” of algorithms, arguments, story plots, databases and/or sentences are not the types of “structures” that the patent system was intended to protect, nor should patents ever be used to protect such “structures.” The cost to the patent system and to the public far outweighs any “innovation-promoting” benefit that can be achieved by granting exclusive rights to mathematics and logic as applied to particular fields. From a purely practical point of view, it’s far too easy to create new “algorithms” and far too difficult to examine them.

          Note again: this is not to say that bona fide new machines, properly (not functionally) claimed, become ineligible simply because they employ such algorithms. But the novelty of such a machine cannot reside solely in the algorithm.

          1. “It certainly should not be in the business of giving its “customers” whatever they want simply because the “customers” are willing to pay for it or because the “customers” assert that without the patent they can’t shake down some investors for money.”

            Oh phrasing it like that is silly. Unless there is a legal reason why they can’t get a patent, their “customers” are entitled to one. If the court fails to do its job that is on the courts, but the administrative agency has no right to supercede them.

            “How and why do you justify “not giving weight to words” under 103? I would like to know your reasoning and I would like you to imagine that you are explaining your reasoning to the Supreme Court which just issued a very clear 9-0 decision in Prometheus v. Mayo.”

            Because the structure of a book is a container for storage and dissemination of thought, and the thought is both a) abstract and b) intended use of the book? Its the same reason that every computer can store data and all data storage is the same – the memory is structural but the intended use of using it to store a particular type of data doesn’t confer patentability. Doesn’t change the fact that the book is structural. I view that as different from Mayo because in Mayo the court held the entire act was just a description of an abstract relationship. It doesn’t really matter I guess, as in both ways they can’t claim the thing they are trying to patent.

            “What you seem to be saying is that an otherwise ineligible algorithm becomes eligible for patenting as long as you describe a field in which the algorithm can be “applied.””

            Yes, that’s exactly what I’m saying. The range of applicability does factor into whether it is abstract. See MPEP 2106(II)(B)(1)(c).

            “That makes no sense because you’re still protecting the algorithm. You are preventing people in a particular field from using math to calculate things.”

            Protecting algorithms has been upheld in the form of computer software constantly. Don’t mistake what I consider to be far-too-common overbroad claims with a damnation of the entire field. As I said above, math is not something dedicated to the public. The question is whether the “thing” being prevented is a relationship that pre-existed the inventor or not. When that relationship is, for example, how much of a drug the body can take, it’s invalid. When the relationship constitutes the subjective opinion for predicting who will become a worthwhile baseball prospect, it’s not something that preexisted the inventor, and no exception to 101 applies.

            “This is exactly the sort of non-implementable gobbledygook that has turned the PTO into a joke and has created the mess that the Supreme Court is poised to either resolve or make much worse.”

            The use of some variables rather than others is a means of distinction that is applied pretty much in every field, such as in pretty much all of chemistry. See also (and I suspect you’ll jump at this but hear me out) copyright law, stating that selection of variables constitutes a means of expression of the particular individual. Patent law is harmonious with that statement, it just requires the selection of variables to be utilitarian rather than expressive.

            “Note again: this is not to say that bona fide new machines, properly (not functionally) claimed, become ineligible simply because they employ such algorithms. But the novelty of such a machine cannot reside solely in the algorithm.”

            A new method is a new method, whether it be performed by a machine or not. An algorithm for a machine can be the sole means of novelty. It is attempting to capture the end (the functional result) rather than the particular means which destroys computer claims.

            1. RG: Unless there is a legal reason why they can’t get a patent, their “customers” are entitled to one.

              There were and are plenty of legal reasons to deny the granting of the typical functionally claimed computer-implemented junk. The reason such claims became popular in the first place is only because the courts and the PTO made “legal” arguments (really crxppy ones) to permit them. Why did they do that? Because people with direct vested interests in such claims asked them to do so. The public — including vast numbers of experts in the field of computing and software development — was not involved in those decisions in any meaningful way.

              Protecting algorithms has been upheld in the form of computer software constantly.

              So what? Useful isolated genomic DNA fragments were patented, asserted and licensed for decades until suddenly *poof* they are no longer permitted.

              selection of variables constitutes a means of expression of the particular individual. Patent law is harmonious with that statement, it just requires the selection of variables to be utilitarian rather than expressive.

              What are you arguing here? That because something is protectable by copyright, that something analogous should be protectable by patents? That’s not very compelling, nor is it all responsive to my original point which was that “structures” of plots, arguments, and data collection are not the sort of “structures” that the patent system is or should be designed to protect.

              An algorithm for a machine can be the sole means of novelty. An algorithm for a machine can be the sole means of novelty. It is attempting to capture the end (the functional result) rather than the particular means which destroys computer claims.

              There is no difference. The “computer configured to carry out the new algorithm X” is just as functional as any other functionally claimed junk.

    2. “I believe the PTO is free to implement rules and guidelines that reflect and promote the law as set forth by the Supreme Court and the Federal Circuit, in addition to effecting policy goals that are not in conflict with those laws (e.g., a working patent system that promotes progress in the useful arts rather than progress in bottom-feeding and agency capture by the already wealthy). That isn’t “defining” law.”

      Well an applicant is entitled to a patent unless you can show he fails the tests. The initial burden is on the office and when the office cannot point to clear law it really isn’t doing its job.

      “That’s a legal question which has never been directly addressed. By analogy to the logic in Prometheus v. Mayo, the addition of “an old conventional processor” is insufficient to confer eligibility. At best, such a limitation is a field limitation.”

      There’s substantial disagreement here, and it’s really not the PTOs job to attempt to decide the issue for the court.

      “I am saying this, however: claims that effectively protect information are ineligible, regardless of any field of use restrictions in the claim. For example, otherwise old books with new content are ineligible subject matter. Otherwise old computers with new content are ineligible subject matter. It’s not a 103 issue. It doesn’t matter how non-obvious the content is.”

      I agree, what I was saying is that sometimes information can be structured in a manner that is subject to eligibility. A database with three fields is structural, the information stored in them is not. Similarly, when data is functional in some manner it has a structure. I agree that communication about the wizard is oz is no different than other communication. But by the same token, information formatted to describe a movie is not the same as information formatted for mp3. I suspect we mean the same thing here.

      “in the context of a functionally-claimed computer, how exactly does one prove the non-obviousness of “specific” information content in light of reams of prior art teaching that computers can store and transmit any kind of information?”

      With respect to storing and transferring, there is no weight and no distinction. The difference comes in once the information is used functionally in a way that other information that is not the same could not be used. That data as a definite, yet broad structure that is allowable subject matter because it is functionally described old matter.

      1. RG: [I]nformation can be structured in a manner that is subject to eligibility. A database with three fields is structural, the information stored in them is not.

        Surely that is not “structure” as contemplated by patent system. Can I patent a new phone book by organizing the listings in a “non-obvious” way? Surely not. That’s just patenting information. It doesn’t matter if the information is in an old book or in an old computer. Again, I urge you to consider the Pandora’s Box that is opened if you go down this road in earnest (and yes I do realize the system has already begun heading down this toilet … um, road … already).

        Similarly, when data is functional in some manner it has a structure.

        Any data that is useful to someone is functional, unless you have a very special definition of function in mind. As I noted above, the term “structure” in this context is not the sort of structure that the patent system is capable of dealing with, as a practical matter. It’s why “patent eligibility” concers exist in the first place.

        I agree that communication about the wizard is oz is no different than other communication.

        Let’s be clear: I never said that. In fact, ommunication about the wizard of oz is absolutely different from communication about any and every non-wizard of oz subject! The point I was making is that such differences — information content — are not the kinds of differences that the patent system can or should be protecting.

        information formatted to describe a movie is not the same as information formatted for mp3.

        But it’s still information. The information can’t be protected by patents. Also, I’ll remind you that if I send you some zeros and ones you can’t tell me whether that “information” corresponds to one second from Gone with the Wind or the last chord of a Sex Pistols song.

        Again, if you open up the floodgates to patenting information (regardless of its “structure” or “formatting”) or methods of communicating information (e.g., “formatting”) that are not tied to new, structurally (not functionally) distinguished machines, you end up with a broken, dysfunctional patent system that serves nobody except patent attorneys and grifter/abuser/bottom-feeders.

        That’s not why we have patent system but is why the most vociferous opponents to changing the status quo are almost always patent attorneys and grifter/abuser/bottom-feeders. They are the people being served best by the presents system. The public? Not so much. The public just gets to watch its money siphoned into the usual places. What do we get return? Ads shoved in our faces.

        It’s time to remove the feeding tube.

        1. “Can I patent a new phone book by organizing the listings in a “non-obvious” way?”

          Can you patent someone’s phone number? No. Can you invent a non-obvious structure for communication exchange that has utilitarian benefit? Morse did, so did DARPA. I would struggle to find a non-obvious means of organizing phone listings, but assuming your starting point, the answer to this question is yes. That is not patenting the information in any way, as the patent would go to the structure of the information provided, not the information itself.

          I pose a simple question to you: If the phone book was organized by numerical ascension, would it be patentable (again, assuming it is non-obvious) to organize it by name? Would it be further patentable to organize is by last name first? The answer to both is yes. That’s not to give someone ownership over the phone book, as the first guy could still put out the numbers/names (the underlying information you’re worried about) in any means whatsoever other than by name or last name. Similar thought process: Why are the keys on your keyboard not ordered in alphabetical order, and if a more efficient way was found, would that not be deserving of protection? Does that monopolize typing?

          “Let’s be clear: I never said that. In fact, ommunication about the wizard of oz is absolutely different from communication about any and every non-wizard of oz subject! The point I was making is that such differences — information content — are not the kinds of differences that the patent system can or should be protecting.”

          I understand and agree.

          “But it’s still information. The information can’t be protected by patents.”

          Again, there’s a difference between protecting the structure and protecting the information. I could describe something using binary ones and zeros, I could also describe that thing using hexadecimal. Those are different structures describing the same thing. The “thing” isn’t patentable, but the differing structures are.

          “Also, I’ll remind you that if I send you some zeros and ones you can’t tell me whether that “information” corresponds to one second from Gone with the Wind or the last chord of a Sex Pistols song.”

          Sure I can’t, but my computer can, which is really the important agent here. If I can convey information in one field what you need three to do, I am three times more efficient than you. I use one third of your header bandwidth. A reduction in header bandwidth is a difference in streamed picture resolution, in p2p downloading speeds.

          “Again, if you open up the floodgates to patenting information (regardless of its “structure” or “formatting”) or methods of communicating information (e.g., “formatting”) that are not tied to new, structurally (not functionally) distinguished machines, you end up with a broken, dysfunctional patent system that serves nobody except patent attorneys and grifter/abuser/bottom-feeders.”

          Nobody is patenting information, you’re not drawing an important distinction.

          1. RG: I could also describe that thing using hexadecimal. Those are different structures

            Those aren’t “structures”. Those are abstract symbols.

            Also, I’ll remind you that if I send you some zeros and ones you can’t tell me whether that “information” corresponds to one second from Gone with the Wind or the last chord of a Sex Pistols song.”

            Sure I can’t, but my computer can

            Really? 0101010010100101011110101010101100101010111110111111111010101001100111110000001101000101
            Put that into your computer and let me know if its part of a Sex Pistols song or part of Gone With the Wind.

            Nobody is patenting information,

            That’s not true. It’s true that nobody is claiming “Information, wherein said information is blah blah blah”. But they are certainly writing patents that protect certain kinds of information (e.g., movies, real estate availability, etc) that is stored or transmitted by an general purpose computer or conventional digital data storage/transmission system, which covers a lot of information indeed. Such patents turn up frequently and are discussed here on a frequent basis. Stick around.

      2. By the way, RG, thanks again for the conversation. Perhaps there is a compromise solution somewhere between our views. I doubt such a solution can be arrived at under the existing laws but I’m certain that however it could be (or will be) arrived at it will face incredible resistance from the same factions who insist that, without the present level of patent protection, progress in computer technology will grind to a halt.

        1. I doubt such a solution can be arrived at under the existing laws

          The long and the short: Malcolm does not speak to the law as it is.

            1. Random,

              You two have already met.

              While you are a step above in trying to talk with law, you nonetheless fail because you do not get the law correct .

              For example, you Still think you can use an abrogated case and cherry-pick from that case what you think is still good law. You then fail to account for actual good law in such cases as Alappat and Nazomi; as well as you ignore the controlling law of what the exceptions to the printed matter doctrine dictates – just as Malcolm does, but while you insist on pretending that you are applying the actual law. You use strawman just as much as Malcolm does and evade the finer points that I present to you. Or do you still think that you need actual precise code for a software patent? Do you still not get that you can take a step up on the ladder of abstraction above actual code?

  4. ” We can expect that the Supreme Court will lower the standard for proving indefiniteness – down from “insolubly ambiguous” to a more “reasonable” standard. ”

    Interesting comment D, wonder if you can tell us why this is so?

    “did indeed induce performance of all elements of the patented claim. ”

    I didn’t even realize that claims were patented, or even patentable/eligible. I thought inventions were patented using claims.

  5. A nice and timely review Dennis.
    However, re your last sentence prognostication for Limelight v. Akamai, query the Sup. Ct. [very unusually] taking a patent case to sustain it, especially to thereby significantly increase inducing infringement suits by not requiring complete claim infringement by any one entity without the additional requirements for contributory infringement?

    1. Paul, I agree.

      It is absurd, in my view, to allow inducement or contributory infringement without there being a direct infringer.

      But, I also believe that the last person to perform a step in a process on an intermediate product where all the others steps have previously been performed directly infringes. Univis Lens, followed by Quanta, both cases involving process claims, provides support.

      1. While you say that you agree, Ned, your view is flatly self-contradictory.

        The person only performing a last step does not perform the early steps.
        The person only performing the early steps does not perform the last steps.

        There is no person who is in actuality a direct infringer.

        Your use of case law to effectively deem someone not a true direct infringer (all steps) is not in alignment with what you are saying that you agree with.

        1. anon, read Quanta about the US brief in Univis Lens. In the view of the government, when the finishers performed the last step on the partially finished lens blanks, there was direct infringement. This was cited with approval by the Quanta court, and is the reason they held that the sale of partially completed component of a larger system was exhaustion — because it infringed. It could not infringe without a direct infringer.

          I think this is authority enough to overturn Federal Circuit authority to the contrary.

          1. because it infringed. It could not infringe without a direct infringer.

            That’s just it Ned – there was no one party that actually did all the steps and you are finding a reference that held that such was not needed.

            Clearly, this is not the same as ONE party actually doing all the steps.

            I am not sure why you are having a difficult time understanding this.

    2. Regarding “significantly increase inducing infringement suits”: I don’t see the joint-infringement situation as so prevalent that it will come up that often — especially because of the strong mens rea requirement that is now in place for inducement.

      1. Perhaps, but at least one report suggested that D.C.’s have not been deterred by the new Sup. Ct. “willful blindness” [to infringement] test in trying to escape a 271(b) inducing infringement suit without expensive discovery and/or settlement. And, there are now lots of computer-containing products being sold which could be made to infringe functional patent claims of others rather easily by how they may be used or additionally programmed by a purchaser.
        However, if there is prompt enforcement of a requirement for the complaint to make specific allegations of acts of “active” inducement of infringement [required by 271(b)] might that provide protection from frivolous suits against suppliers of products which do not themselves infringe?

        1. Paul F. Morgan asks “might that provide protection from frivolous suits against suppliers of products which do not themselves infringe?

          Why?

          1) Protections already exist against frivolous suits of any kind, including the differentiation you mention

          2) Unless you eliminate suits for other than active inducement under 271(b), what advantage (over and above the general advantage of more detail) do you see?

  6. Dennis I am quite pessimistic that the result proposed by the Supreme Court [in Alice] will be fairly implementable by the US Patent Office.

    That isn’t saying much. The USPTO has demonstrated a spectactular inability to implement even very simple tests. That’s why we see them issuing claims on junk like “automatic” methods of troubleshooting search engines.

    What would help the USPTO (and everyone else) would be rules for examining computer-implemented inventions that highlight the issues. For example:

    1) “New functions” are ineligible subject matter. A claim whose only novel feature is a “new function” is effectively a claim to the “new function” itself. Such a claim is ineligible. Example: A computer system, wherein said computer system is configured to receive a request for information from a woman between 20-45 and respond to the request by providing said information, wherein said information is a movie, wherein said movie includes a hamster, a lion cub and a green wizard. The analogous situation (which the USPTO does seem to able to “fairly implement” is a claim to a book with “new functionality” imparted by the words contained within).

    2) Information can not be protected by patents, regardless of any field of use limitations put on the information. Claims that effectively protect information are therefore ineligible. Example: A computer system, wherein said computer system is configured to receive a request for information from a woman between 20-45 and respond to the request by providing said information, wherein said information is a movie, wherein said movie includes a hamster, a lion cub and a green wizard. Sound familiar? It should.

    3) Abstractions (e.g., legal status, price, “importance”, “relevance”, and other terms devoid of physical/structural ) can not be relied upon to confer patentability to an otherwise old claim. Such claims are ineligible as being drawn to abstractions. Example: A computer system, wherein said computer system is configured to receive a request for information from a woman between 20-45 and respond to the request by providing said information, wherein said information is a movie, wherein said movie is not yet authorized for distribution on DVD.

    4) Claims to devices and methods which confer abstract designations (e.g., price, legal status, importance, relevance) to objects, services or to other abstractions are ineligible. Example: A method of assigning a price to a widget, comprising blah blah blah wherein said price is blab blah blah.

    5) Mental steps are abstractions. Claims that merely “automate” “new” mental steps are effectively claims to the “new” mental steps given the well-known information processing capabilities of old general purpose programmable computers.

    This is just a start. There are all kinds of “fairly implementable” rules like this.

    As Dennis knows very well, the same people who object to every rule that limits patentability will always howl about any rule proposed to limit the patenting of software or computer-implemented junk. That’s because those people don’t care about anything except more patents, all the time, and lining their own pockets with whatever profits that can grift off the system.

    1. >5) Mental steps are abstractions. Claims that merely “automate” >“new” mental steps are effectively claims to the “new” mental steps >given the well-known information processing capabilities of old >general purpose programmable computers.

      So, all those ph.d.’s in cognitve psychology that spend their lives trying to figure out how to automate mental steps are wasting their time. If only they knew that all you have to do is specify what you want and then take it to a clerk to program.

      1. all those ph.d.’s in cognitve psychology that spend their lives trying to figure out how to automate mental steps are wasting their time.

        Not at all. What a bizarre non-sequitur.

            1. LOL – Blow my whistle…?

              Sorry Malcolm, if you played with any sense of intellectual honesty you would not fear whistles so much.

              When you have the law, pound the law.
              When you have facts, pound the facts.

              As typical, you have neither.

              Svcks to be you!

            2. Malcolm (again) self-FAILS with “Will you be letting everyone know that you alone understand the “controlling law” regarding a typical subject?

              Let’s take the well known example of Malcolm’s voluntarily admitting that he knows the controlling law as to the exceptions to the printed matter doctrine.

              Without a doubt, Malcolm really did make this admission (and note Malcolm that the archives have been restored with your admission present).

              And yet, Malcolm spent an INCREDIBLE amount of effort dissembling on this very simple fact that HE volunteered an admission that HE knew the controlling law.

              Like his attempts at dissembling, including denigrating the concept, and outright blatant 1ieing on the subject, here he dissembles with the spin that it is somehow ME (and ME alone- a strawman that only he now erects) that always understands the controlling law. The point is that it was Malcolm, not me that volunteered the admission that he knew what the controlling law was – and yet not only did he dissemble on this, he continued to make posts directly against that admission, because – as he has maintained – this is merely a blog and intellectual honesty is not required for a blog.

              It really svcks to be you Malcolm.

              Pound that.

            3. “Like his attempts at dissembling, including denigrating the concept, and outright blatant 1ieing on the subject, here he dissembles with the spin that it is somehow ME (and ME alone- a strawman that only he now erects) that always understands the controlling law. The point is that it was Malcolm, not me that volunteered the admission that he knew what the controlling law was – and yet not only did he dissemble on this, he continued to make posts directly against that admission, because – as he has maintained – this is merely a blog and intellectual honesty is not required for a blog.”

              I’ve never seen anyone, or would I have guessed that it was possible for there to be someone, that was able to be so obsessed with the word “dissemble”. Not to mention be unable to properly use it while being so obsessed with it.

              I’d be interested to know how that specific spin you mention somehow conceals his true motives feelings or beliefs or disguises or conceals (a feeling or intention). I mean, we’re all made very aware by this point of his true motives, feelings and beliefs. And it’s pretty much impossible to conceal his feelings or intentions at this point, he’s a completely open book about what his feelings on the matter are and what his intentions are. No spinning could ever achieve concealment of such it doesn’t seem to me like, perhaps you could tell us how such spinning might do such a thing?

              “and yet not only did he dissemble on this”

              What is the “this” that you’re accusing him of dissembling on now? Your “this” is without subject unless you mean his alleged volunteering of an admission. He doesn’t dissemble on that what so ever. He doesn’t conceal any true motives, feelings, or beliefs on the alleged volunteering of an admission. He likewise doesn’t disquise or conceal any any feelings or intentions on the alleged volunteering of an admission.

              Just to be clear, so that everyone who is re tar ded is aware, MM’s feelings and beliefs on the alleged volunteering of an admission is that it is horse-sht, made up by a pathological liar, who when pressed doesn’t deem it necessary to provide a link to such. MM’s true motive on that subject is to highlight that the person making the allegation is a pathological liar. I just provide this in case there was someone, perhaps anon, who missed MM’s continued exposition on his true motives, feelings or beliefs along with his feelings and intentions regarding that subject.

            4. who when pressed doesn’t deem it necessary to provide a link to such

              LOL – the archives are now returned and searchable 6 – I do not need to provide a link and when Malcolm merely repeats his prevaricating ways in denial over what is known to be true, the second (clearly only in a euphemistic sense, as it has been far more than second) 1ie is no better than the first 1ie.

            5. And 6, you and your “subjective in the mind anything goes” mantra does not place you in a position to even begin to discuss the veracity I have with my posts (btw, said veracity is impeachable).

            6. “And 6, you and your “subjective in the mind anything goes” mantra does not place you in a position to even begin to discuss the veracity I have with my posts (btw, said veracity is impeachable).”

              I wasn’t discussing the “veracity” that you “have” “with” your posts. Or its “impeachable”ness. What I was discussing was that you consistently use a word wrong on here when there is no reason to use the word in the first place. The only explanation I can come up with is wholly unconcerned with the “veracity” of what you “have” “with” your posts. The explanation is that you are a ta rd. Specifically a ta rd with a hard on for using big words that he doesn’t understand the correct context for and thus ends up misusing them. The evidence fits the hypothesis quite well. Shall we elevate the hypothesis to a theory based on the totality of the evidence of all your posts?

            7. “the archives are now returned and searchable 6 ”

              I haven’t checked but the last time I did check the thread I was looking at wasn’t restored. Perhaps some are. Still, if you insist on repeating the allegation, time after tiresome time, you may as well provide dat evidence just so that everyone knows you’re SOOOOOO RIGHT. Right? I mean, not everyone is yet on board with your in fact being patent jebus right?

    2. Where is the smarmy Leopold with the comment on anthropomorphication when it actually would be appropriate?

      Malcolm, why do you persist in presenting things not in accord with controlling law (and actual facts) without being clear that you are merely pounding the table of your wanna be policies?

      You do realize that doing as you do is dissembling, right? You are concealing the truth that what you post is not the law as it stands, concealing the fact that what you advocate would need a change in law to be reality, right? You do realize that the Office cannot (or at the very least should not) implement that which is not law or supported by the law, right?

      (btw, you kind of disappeared while gathering that list of incontrovertible facts, but don’t worry, no one is surprised)

        1. Nice AOOTWMDs Malcolm.

          Not nearly as nice as your DWIIDMFCH!

          Keep shoveling.

          No, you keep shoveling!

          Fun games, as always, with the resident blogtroll/nutcase known as “anon.” Check out his awesome “substance.” You know those Supreme Court clerks are just eating it up — they loved him in the run-up to Prometheus v. Mayo and they are definitely going to be very moved by his inspiring rhetoric as they consider the eligibility of the softie-woftie junk that he habitually fluffs here.

          1. How about in the run-up to Myriad?

            Remember that one?

            LOL

            30,000 plus words of mewling QQ and a recent admission that you still don’t understand is hilarious.

      1. ” You are concealing the truth that what you post is not the law as it stands, concealing the fact that what you advocate would need a change in law to be reality, right?”

        Well at least you’re finally being specific about your allegations of “dissembling” after years of vague tomwordery that nobody understood.

        I don’t know though anon, I’m pretty sure he said there were rules that could be implemented iirc. He wasn’t even discussing “how the law is” or anything like that. He certainly wasn’t discussing “how the law is according to some clowns on a federal circuit at least for a few decades preceding the current one”. The federal circuit is working on getting its act together. I see no reason why MM should call them out on their foolery they were engaging in for a few decades in all of his posts. He does that often enough.

        1. after years of vague tomwordery that nobody understood.

          Not true at all 6. I have been explicit many times before. I even included the definition when Malcolm falsely accused me of misusing the word.

          None of this is surprising to anyone that has paid attention.

          And you quite miss the point about the presentation of law and presentation of Malcolm’s policy masquerading as law.

          1. “And you quite miss the point about the presentation of law and presentation of Malcolm’s policy masquerading as law.”

            I understand your “point”. I just don’t see him hiding any of that. The federal circuit’s views are well known. He doesn’t have to bring them up every single day.

            1. The fact that you “don’t see” is rather immaterial 6.

              Very often, you don’t see things.

              You are also not quite making it to the point in the reading in which Malcolm is portraying his policy wanna-be as actual law.

              Try reading the entire posts prior to commenting.

            2. Malcolm is portraying his policy wanna-be as actual law.

              More like reasonable application of the sensible existing laws and abandonment of conflicting, arcane, coddling garbage that was dreamt up to coddle a class of artisans who never needed to be (and never will need to be) coddled by the patent system.

              But more importantly, TB, by sitting on the sidelines and throwing spitballs at everyone and anyone who tries to inject some sanity into the system, you only further demonstrate to everyone that you completely lack the “principles” you habitually pretend are unique to your patent-worshipping team.

              As everybody knows, patent law changes all the time and quite quickly. In part, that’s because it is constantly presented with different technologies and lawyering schemes that were often not envisioned by the drafters of the statutes or which were drafted by self-interested, conflicted people such as yourself who never saw a patent (or patentee) unworthy of vociferous defense … because “progress” or something.

              Patent law is all about policy and it always will be. If people blink and let the foxes take over the henhouse, there won’t be anything left of the patent system except lawyers inventing “new paradigms” for sueing each other.

              As Eric G. suggested to all you txxbaggers not too long ago, you really need to come up with a better script. You’re going to need it because for the forseeable future, unless something big changes overnight, you’ve got pretty much none of the public in the pockets of your fat coats.

              So think about it: how do you make the average person struggling to make a living learn to love rich, bottom-feeding lawyers who think they are doing a public service by sueing people for infringing their junky “innovations”? It’s a tough sell. Maybe you should hire some PR people .. you know, like Mitt Romney did.

              LOL.

            3. More like….

              BZZZZZT – wrong.

              Gee that was easy.

              Following the principles of actually respecting the law and not trying to ploy intellectual dishonesty because this is merely a blog is really easy.

              Give it a try.

              Pound that.

            4. “You are also not quite making it to the point in the reading in which Malcolm is portraying his policy wanna-be as actual law.”

              Do be sure to point that out when it happens. But for god’s sake, spare us the baseless allegations of “dissembling”. I’m telling you, even after you’ve explained it now once (or maybe a handful of times over the last 4+ years), hardly anyone, if anyone, understands w t f you’re talking about when you bring it up on a weekly basis. Your posts explaining your rambling nonsense just aren’t that memorable.

            5. Poor 6 errs doubly with “But for god’s sake, spare us the baseless allegations of ‘dissembling’

              First, as is evident, my points of Malcolm’s dissembling are not baseless, but factual.

              Second, as I have often explained, Malcolm has control over how often you see such points of mine being made. All that he has to do is post in an intellectually honest manner.

              It really is that simple.

    3. Your post MM is like reading something from the medieval era.

      You live in the information age. Processing information machines are project to replace 20-50 million jobs in the next 20 years. Surely these machines are deserving of eligibility.

      Functional claim language that is enabled is fine and is a way to capture all the different ways of implementing the function.

      Etc. …

      Please try to educate yourself.

      1. I agree that MM is wrong about a lot of things in his post, but two wrongs don’t make a right:

        “You live in the information age. Processing information machines are project to replace 20-50 million jobs in the next 20 years. Surely these machines are deserving of eligibility.”

        Well that has no bearing on anything, does it? When Morse tried to claim not just his telegraph, but all telegraphs, that certainly would have destroyed whole industries. It didn’t make it any more eligible.

        “Functional claim language that is enabled is fine and is a way to capture all the different ways of implementing the function.”

        Here’s where you and people like anon go off the tracks. It’s simple logic to know that a claim to the function embraces all means of achieving it, while at most the applicant has disclosed every means known to him. Absent proof that the applicant’s knowledge is coextensive with every means of achieving something, he isn’t entitled to the function.

        MM is wrong, but your approach is backwards as well. You don’t start at the backside and say what is the effect, what would give the inventor ironclad coverage, you start at the frontside and ask what the inventor has made. Functional claiming is not inherently improper, but pretty much all of the non-means-plus claiming of computer functions today is improper, because the applicant hasn’t disclosed a single means, nor multiple means to make the scope proper.

        He made one way of doing something. He gets protection for one way of doing something. If he can show he’s in possession of other ways of doing it, he gets protection for that too. What he doesn’t get to claim is the end result. You can pretty much never claim the end result.

        Think of how ridiculous and completely dangerous to innovation it would be if you gave the first person to cure cancer a patent on curing cancer.

        1. Random,

          You continue to misread what is being said.

          No one is saying the function regardless of how achieved is covered. That would mean that such – even without a machine – would be covered.

          That is simply not the argument being discussed. We are discussing machines that have the component of software.

          Try to keep up.

          1. “That is simply not the argument being discussed. We are discussing machines that have the component of software.”

            That’s what I’m discussing as well. You can’t provide one code which does something and claim all of the different code which would produce the same result.

            If you’re going to (correctly) argue that code distinguishes computers, you can’t then turn around and suggest that disclosure of one code gives you patent rights over another code just because they achieve the same result. What is even worse is when applicant don’t even disclose an algorithm for even one set of code, but try to claim the function.

            The example is apt: You can’t invent one means of curing cancer and claim every means of curing cancer. Similarly, you can’t invent one code which achieves an effect and claim every code which achieves the effect.

            1. You now need to take the (small) step of the three equivalences.

              Now I definitely agree that ALL software is not equivalent to all other software. But at the same time, your past tendency to be over-critical as to exact algorithm won’t hold up either.

              You seem to lose track of this tempering. And of course, you do realize that exact code of any kind is simply not a legal requirement.

              Your example simply is not as apt as you would like it to be.

              Sorry Random, it just is not.

          2. “Now I definitely agree that ALL software is not equivalent to all other software. But at the same time, your past tendency to be over-critical as to exact algorithm won’t hold up either…And of course, you do realize that exact code of any kind is simply not a legal requirement.”

            Too bad there’s numerous cases that require the description of the algorithm. There’s also numerous cases which make clear you can’t claim a new function outside of 112, 6th.

            You simply cannot claim as broadly as you guys want to. You show me a spec that claims they have invented one way of achieving a new function and that claims a computer doing the function and I will show you an invalid claim.

            “Functional claim language that is enabled is fine and is a way to capture all the different ways of implementing the function.”

            This is simply not the rule. There are other requirements, no matter how much any of you want to ignore them.

            But what I was getting at was NWPA’s tail-wags-the-dog (and to a lesser extent, anon’s) viewpoint. It does not follow that because someone has invented something new that they are owed a commercially valuable patent. A computer allows a multitude of distinct ways of programming to reach a particular effect. When you only invent one, you probably haven’t invented something of commercial value. It is not the function of patent law to artificially inflate the value of what the inventor has achieved by giving him more than what he did.

            Whatever anon’s continual complaints against “picture claiming” and NWPA’s “enablement is all that matters” there exists a written description requirement in the law. A claim that does not meet it will not be upheld, regardless of what this does to an inventor’s commercial incentive. Lizardtech is all you need here.

            1. Too bad there’s numerous cases that require the description of the algorithm.

              Too bad that is not what I said – nice attempt at strawman, but I said no requirement of actual code.

              Or verbatim: ‘And of course, you do realize that exact code of any kind is simply not a legal requirement.

              Try again – this time with what we are actually discussing.

          3. you: “But at the same time, your past tendency to be over-critical as to exact algorithm won’t hold up either.”

            me: “Too bad there’s numerous cases that require the description of the algorithm.”

            Try to keep up. You need to give the algorithm. Giving one algorithm and trying to claim other ones won’t fly.

            1. Try to keep up Random – you need to describe the algorithm – which EXPRESSLY is not the same as the code.

              An algorithm can be expressed in many different ways in many different codes.

              Face it: you lose.

            2. And you should note the legal requirement of any such description can be met with something as simple as light drawing box diagrams.

              But then again, you already knew that, right?

          4. “And you should note the legal requirement of any such description can be met with something as simple as light drawing box diagrams.

            But then again, you already knew that, right?”

            There are numerous cases which hold that the description of a function requires the algorithm that achieves the function. So no, a box diagram which says “Function F” does not describe a claim to a processor that does Function F.

          1. And of course he wants proofs, affidavits, sworn statements and your first born.

            (LOL – but watch him run if you ask for simple honest answers to straight forward questions that go to the heart of the software patent matter)

          2. Well keeping in mind the Office is to implement law that exists, not define law on its own -

            “1) “New functions” are ineligible subject matter. A claim whose only novel feature is a “new function” is effectively a claim to the “new function” itself. Such a claim is ineligible. Example: A computer system, wherein said computer system is configured to receive a request for information from a woman between 20-45 and respond to the request by providing said information, wherein said information is a movie, wherein said movie includes a hamster, a lion cub and a green wizard. The analogous situation (which the USPTO does seem to able to “fairly implement” is a claim to a book with “new functionality” imparted by the words contained within).”

            A claim only to new functionality is not embodied and is subject to a 101 rejection, but the addition of a processor takes it outside of 101. Every computer which achieves a function is almost certainly overbroad and subject to a 112, 1st rejection. When the function includes a particular limitation as to how a human being would interpret the data, there’s an argument it’s not inventive over prior art (i.e. a 103) because the structure is the same or equivilent, but that’s not a 101 either. I know of no clear statement from the CAFC that a processor running code that does function F should be considered a claim to function F itself. Morse is not on point here since it’s unclear if Morse was intended to be taken as a 101 rejection.

            “2) Information can not be protected by patents, regardless of any field of use limitations put on the information. Claims that effectively protect information are therefore ineligible. Example: A computer system, wherein said computer system is configured to receive a request for information from a woman between 20-45 and respond to the request by providing said information, wherein said information is a movie, wherein said movie includes a hamster, a lion cub and a green wizard. Sound familiar? It should.”

            Again, my issue with this is a question of structure. If one were to invent a new structure of data transfer, than the structured information would be a discernable trait. I agree, however, that if the prior art says transferring information and the distinction is that it transfers specific information, the former likely renders the latter obvious. This isn’t a hard and fast rule though.

            “3) Abstractions (e.g., legal status, price, “importance”, “relevance”, and other terms devoid of physical/structural ) can not be relied upon to confer patentability to an otherwise old claim. Such claims are ineligible as being drawn to abstractions. Example: A computer system, wherein said computer system is configured to receive a request for information from a woman between 20-45 and respond to the request by providing said information, wherein said information is a movie, wherein said movie is not yet authorized for distribution on DVD.”

            I have often disregarded legal distinctions as being non-structural. Transferring data from A to B wherein server A is owned by a different person than server B is anticipated by a transfer of data between two servers. Other things on that list, especially relevance, are indeed structural, especially when the means of determining relevance are claimed. Calculation of price, similar to any other calculation, is also something worthy of patent weight. The fact that it is price itself is irrelevant, but the calculation is important.

            “4) Claims to devices and methods which confer abstract designations (e.g., price, legal status, importance, relevance) to objects, services or to other abstractions are ineligible. Example: A method of assigning a price to a widget, comprising blah blah blah wherein said price is blab blah blah.”

            I know of no case or legal rationale that underpins this at all. For example, a database storing ownership information of land should be given patentable weight and be statutory (assuming it is embodied on a CRM). Now it may be obvious over other other databases, but it’s certainly not ineligible.

            “5) Mental steps are abstractions. Claims that merely “automate” “new” mental steps are effectively claims to the “new” mental steps given the well-known information processing capabilities of old general purpose programmable computers.”

            This seems to be something that comes up a lot here where I find myself unfortunately siding with anon & co, who are so often wrong about other things. Automating a mental step requires code, code is a structure, and it is patentable. Automating a mental step is not abstract. Now I will say this: if all computer functionality is inherently enabled (which I don’t agree with because that’s not what the court said and isn’t true in fact) then the mental steps that pre-existed would render the coding obvious. But again, 103 is not 101. And if it’s not inherently enabled, then claiming the enabling steps would sufficiently remove it from abstractness in any sense. In any case, this is before the court and will be definitely set, and until it is it would be inappropriate for the office to act on it.

            1. RandomGuy, regarding programmed computers, before Tarczy-Hornoch, these clearly would have failed the function of a machine doctrine. Claims to new uses of old machines can be claimed as processes.

              And that is where it becomes clear that a multi-step process is does not fall afoul of the doctrine of functional at the point of novelty.

              Still, the function of a machine doctrine was routed in Supreme Court precedent and the CCPA could not overrule that precedent — or can they?

            2. Ned,

              You keep on overlooking one critical aspect.

              You cannot have the new use until you change the machine – that is why “configured to” is structural language.

              Your attempts to have a an ‘oldbox’ have this ‘newfunction’ with no changes is an instant FAIL.

              That is a plain fact.

              Also, the law (controlling law) maintains this as well – we both know that you know the case is Alappat.

              On a side note, how is your Chisum reading coming along?

            3. anon, Application of Tarczy-Hornoch, 397 F.2d 856 (C.C.P.A. 1968) said this:

              “In 1952, however, Examiner-in-Chief Bailey wrote a dissenting opinion in Ex parte Goldsmith, supra, in which he listed Supreme Court decisions bearing upon the “function of the apparatus” rejection. He concluded:

              The above Supreme Court decisions when all are considered and correlated hold:

              (1) That useful methods are statutory subject matter, whether they involve chemical or other elemental action, or are purely mechanical, and when a claim in fact defines a method its patentability is determined by comparison with the prior art.

              (2) That the mere function or effect of a machine is not a method, and thus not statutory subject matter, so when a claim that purports to define a method, is found to in fact define only the desired function or effect (and not the acts or steps which result in the desired function or effect), it is properly refused or held invalid on such grounds.

              Mr. Bailey did not argue that the board majority’s adherence to the Weston rule was at variance with the decisions of this court. Rather, he urged that those decisions should not be followed in view of their inconsistency with decisions of the Supreme Court. ”

              The court goes on to hold that a process that could be performed by a disclosed machine is an eligible process nevertheless.

              In re Bernhart then held that a programmed computer was a new machine.

              But Berhhart and Tarczy-Hornock were both before Benson. The post Benson cases Alappat cited as holding what Bernhart held nothing of the kind. That was all dicta.

              It would seem that the issue of whether a programmed machine is a new machine might finally be before the Supreme Court in Alice v. CLS Bank.

              But the SC could avoid that issue just as did the Federal Circuit by construing programmed computer claims to effectively be claims to processes. But I wonder if they will not decide the issue directly.

        2. RandomGuy: the functional claiming attack is nonsense. Read LizardTech which explains very well that you are entitled to the scope of enablement. Goodness every invention now has many parts and each part can be done in many ways. Without functional claiming it would be impossible to claim circuits,information processing machines, mechanical devices, etc.

          Even something as seemingly simple as hydraulic systems have so many ways of accomplishing a functional need that it is impossible to claim without functional language.

          If you care RandomGuy, then spend some time to work out these issues and read LizardTech. You will quickly find out that the likes of Lemley, MM, Posner, Laurie, etc. are intentionally making up things. They are not ethical people. They are not being intellectually honest and have no interest in real discussion. This is lawyers trying to get in court what should be argued in Congress.

          1. Night, agreed. Old elements should be claimed functionally. There is no need to limit the scope of the claims to one form of an old element. That makes no sense.

            In computers, a program really is a method claim involving a series of steps. These must be claimed functionally.

          2. “RandomGuy: the functional claiming attack is nonsense. Read LizardTech which explains very well that you are entitled to the scope of enablement.”

            Lizardtech is not an enablement case. Written Description is its own requirement and you cannot write it out of the law no matter how much you want to. But while we’re at it, just for kicks, show me the case that says that an undescribed function is enabled. You can’t because the case that is the basis of your “computer code is always enabled” was a best mode case which held that once a function is described, it is clerical work to enable it. Not only do you assume the enablement but you outright ignore the requirement which forms the legal basis for the clerical enablement statement.

            “Goodness every invention now has many parts and each part can be done in many ways. Without functional claiming it would be impossible to claim circuits,information processing machines, mechanical devices, etc.”

            This is what I talk about with your bad logic. When a machine gets more complicated, that increases the burden on the applicant, it does not decrease it. Your argument is backwards. You assume that the applicant is entitled to everything that makes his effect, as that would be more commercially valuable. The applicant is entitled to his means to achieving what is an unclaimable effect, regardless of how commercially valuable it is.

            “Even something as seemingly simple as hydraulic systems have so many ways of accomplishing a functional need that it is impossible to claim without functional language.”

            And the court has said that when your functional language goes to something old it is permissible. What you cannot do is simulatenously argue that your applicant has invented code which is a) new and b) claims every method of achieving something, which, unfortunately for computer people, is pretty much the only way one can get around KSR most of the time.

            “If you care RandomGuy, then spend some time to work out these issues and read LizardTech. You will quickly find out that the likes of Lemley, MM, Posner, Laurie, etc. are intentionally making up things. They are not ethical people. They are not being intellectually honest and have no interest in real discussion. This is lawyers trying to get in court what should be argued in Congress.”

            I have read Lizardtech. I hate to break it to you, but Lizardtech is doing nothing more than applying Morse, Wabash and Halliburton. It’s very simple – you cannot invent one way of doing something and claim all ways of doing something because you cannot prove you have all ways of doing something. That is why 112, 6th was invented. But you want to avoid the scope limitation of 112, 6th while keeping the description surety. You can’t.

            Even if there were no cases it’s a simple matter of logic. You want to invent one way of doing that and then claim that because each of the other ways achieve an equivilent result that they are equivilent inventions. They are not, and that is a misapplication of equivilence. If I was having pain in my leg, one could solve the issue by cutting my leg off. That’s an effective means of solving leg pain. But there are more…elegant and overall better solutions that would be better applied. You make no distinction between amputation and say, prescribing a painkiller, because the end effect is the same, despite them being completely different routes which end in completely different results except for the minor agreement in leg pain reduction. I am not interested in what other people who happen to agree with me say – I care about you being intellectually lazy at the public’s expense. A reading of a lot of cases, including Lizardtech, shows that the law does not tolerate it either.

            1. >This is what I talk about with your bad logic. When a machine >gets more complicated, that increases the burden on the >applicant, it does not decrease it. Your argument is backwards. >You assume that the applicant is entitled to everything that >makes his effect, as that would be more commercially valuable. >The applicant is entitled to his means to achieving what is an >unclaimable effect, regardless of how commercially valuable it is.

              My goodness RandomGuy, your post is so full of nonsense. The patent application is supposed to focus on what is new. Full stop. Your attitude is horrendous. The patent system is there to enable inventors to efficiently enable their inventions—not to describe every way possible that is already KNOWN.

              Frankly, the rest of your post is ignorant nonsense just like the quote above.

            2. >I have read Lizardtech. I hate to break it to you, but Lizardtech >is doing nothing more than applying Morse, Wabash and >Halliburton. It’s very simple – you cannot invent one way of >doing something and claim all ways of doing something because >you cannot prove you have all ways of doing something. That is >why 112, 6th was invented. But you want to avoid the scope >limitation of 112, 6th while keeping the description surety. You >can’t

              Read LizardTech again—keep in mind—SCOPE OF ENABLMENT. Full stop.

            3. >Even if there were no cases it’s a simple matter of logic. You want >to invent one way of doing that and then claim that because each >of the other ways achieve an equivilent result that they are >equivilent inventions.

              Dopey do you actually work with inventors and write patent applications? I doubt it. Have you ever invented something and had to write a patent application?

              Logic is that you want to write what is new and your audience is people that are skilled in the art. What rock do you bozos climb out from?

          3. Also, I know I won’t get through to anon on this since he doesn’t understand basic judicial/legislative interplay, but with respect to Halliburton:

            It is well settled not only in patent law but in all law that Congress is presumed to know the actions of the courts. Thus when Congress acts to change part of a law and intentionally leaves something else in place it confirms the judicial holding.

            Halliburton was decided before 112, 6th existed.

            Halliburton enabled and described a single means of achieving a function. Halliburton claimed “means for” achieving the function. The court, pre 6th, interpreted “means for” as “any means for achieving” the function. You will note that that is the scope that many claims today are attempting to claim, your statements included. The court held that providing a single means of achieving the function is insufficient to be granted the whole function.

            Congress saw this case, Congress acted specifically on this case, and the only thing Congress did was create law which said that “means for” will be interpreted to cover only the particular means. You will note that they left alone the court’s logic that a claim to all means of achieving the function is invalid.

            Halliburton was overruled because a rule about claim interpretation was rewritten to shrink the scope of the claim at issue. The shrunken claim was valid. But when a situation arises where under different wording and the original broader scope is being evaluated again, Halliburton is good law.

            Lizardtech faced just such an issue. It had some claims that were limited to seamless and other claims that were not. The court held that although seamless was properly described, the broader scope of seamless+non-seamless was not. That’s nothing but an application of Morse-Wabash-Halliburton. This is more clear in Wabash (I think it was) because the court specifically said that they could assume the broader scope was enabled and it still wouldn’t matter, the claim was still invalid.

            It’s not a question of what your addition to the patent pie ultimately renders obvious to the man of ordinary skill standard, it is a question of what you, the applicant, specifically have possession of. You are trying to take a test which has both subjective and objective parts and make it objective only. Your failure to consider written description makes this clear, and this is why your “scope of enablement is all that matters” test is improper. That’s why Morse couldn’t claim any machine that used his function. It’s not that Morse didn’t know how to telegraph, its that maybe someone in the future would do telegraphing better than him. Which is a fair assessment, because if claim 8 was granted it would read on the modern day networked computer, which is clearly something Morse didn’t have possession of.

            Yet that is precisely what you want to do – you want to give the modern day Morses not just their but every telegraph simply because it would be really easy to design around any particular means. Well, honestly, that’s too bad. If a computer renders it so easy to achieve future functions in multiple ways, that is a benefit that has long since accrued to the public. It cannot be recaptured just because describing multiple means of achieving something is personally distasteful for the applicant or attorney involved.

            All you have to do is describe multiple algorithms or, heaven forbid, invent something so innovative that you can admit all the functions are well known but that the combination is non-obvious. That would require more than solving easily anticipated problem X with completely visible function F though.

            1. >That’s why Morse couldn’t claim any machine that used his >function.

              Dopey. Scope of enablement. Morse cannot claim any machine because he didn’t enable any machine. What did he enable? He is entitled to all that he enabled–nothing more and nothing less. So, dopey, all your nonsense is just that nonsense. Guess what dopey, think in terms of how a person skilled in the art would read the patent application and what it would enable them to build. That is the scope of enablement and that is what you are entitled to claim.

              Man, you are one thick dope.

    4. It must be count Monday. Examiner Mooney had to get all his cases counted before he started posting.

    5. MM, thanks, and well said.

      Regarding the function of a machine, your opening point, for the majority of the life of the patent system, until Application of Tarczy-Hornoch, 397 F.2d 856 (C.C.P.A. 1968), the most well understood and accepted of all doctrines in the patent law was that one could not claim the function of a machine, but one had instead to claim a process.

      It should be observed here that the function of a machine doctrine was somewhat confused at time with the functional at the point of novelty doctrine. Rich confused the two doctrines in TH.

      We need, I think, to revisit why the new function of an old machine needs to be claimed as a process. In fact, this notion is consistent with the definition in 100.

      1. Ned breaks out his x-ray goggles in a futile attempt to prop up the mongrel that is Malcolm.

        Again.

        Funny how he sees ‘swagger’ as a good thing only when it coincides with his agenda.

        1. anon, it IS interesting that Malcolm does appear to understand both the law and the reasoning behind it. I find a lot of the opposition to his positions grounded on Federal Circuit and CCPA law of dubious validity because of the singular effort by one individual to overturn Supreme Court president with which he disagreed, a problem that continues to the extent the Federal Circuit does not follow Supreme Court precedent, but defies it.

          1. Ned misses by a mile with “ it IS interesting that Malcolm does appear to understand both the law and the reasoning behind it

            - Again, you are breaking out some type of superman goggles to pick that up from the dross that Malcolm posts.

            Not withstanding your anti-Rich allusions (illusions to be more precise), there is nothing at all surprising that you align with Malcolm on your shared crusade.

            Tell me again of that Supreme Court ‘precedent,’ you know the quote from Benson that states “we do not so hold“…

            1. I got the typo and was not drawing a distinction to the misspelling – it is the fact that you are wrong that I was drawing your attention to.

              Please provide the quote I reference Ned. You know the one.

  7. This has the potential of impacting a substantial number of patents that have issued with claim terms that intentionally flirt with ambiguity.

    There’s some anthropomorphization for you, anon.

    Dennis, just how can one tell when a claim term is “intentionally” flirting with ambiguity?

    1. Leopold asks an interesting question: “Dennis, just how can one tell when a claim term is “intentionally” flirting with ambiguity?

      Considering, of course, our past discussion on the ladders of abstraction and the multiple sources I provided (including chapter and verse) and the subsequent lack of participation from the very same Leopold when he was supposed to provide his sources to the contrary, Leopold’s question takes an interesting, um, ‘spin.’

      Is “ambiguity” related to climbing a rung on the ladder of abstraction? Are only dead-nuts-fully-(and I mean fully)-articulated picture claims the only ‘real’ claims that should be allowed in patents? You know, the claims that are nearly worthless because it would be a trivial exercise to design around?

      1. Are only dead-nuts-fully-(and I mean fully)-articulated picture claims the only ‘real’ claims that should be allowed in patents?

        Pretty sure the answer would depend on the prior art and the technology area in which the patent is being applied for.

        But notice how the defenders of softie-woftie junk love to pretend that eliminating functionally claimed softie-woftie junk is somehow “anti-patent” and will make it virtually impossible for anyone to protect their inventions, regardless of technology area.

        That’s laughably false, of course. But when you ain’t got nothin’ else, what are you going to do except hand mouthbreathing footsoldiers like “anon” and “fishsticks” and NWPA a nice simple script to recite? “You’re anti-patent!” “You’re a communist!” “You can’t stand private property!” “You are anti-free market!” “You love big corporations!” “Follow the money – you’re paid to post thist stuff!”

        Of course it’s completely contradictory and non-sensical b.s. The best part: no matter how reasonable your suggestion is for eliminating the worst softie-woftie junk, they’ll attack you for disseminating “propaganda.”

        It’s pretty funny. Also entirely predictable if you’ve ever spent anytime arguing with a typical txxbagger. See, e.g.,

        link to dailykos.com

      1. Here, I intended for this to be understood as the claim drafters (patent attorneys) intentionally drafting claims that come close to the line of indefiniteness.

        Yes, I understood that. I was wondering about the basis for the assumption that this is a “substantial” problem. Certainly there are lots of vague and probably indefinite claims out there, but I’ve generally assumed that these were the products of bad lawyering. Am I just naïve?

      2. Question for Prof. Crouch:

        How high up the ladder of abstraction is it appropriate to climb when writing claims?

        Given that clearly, exactly detailed picture claims are worthless (or nearly so) for almost all art units, how much abstraction is to be allowed?

      3. I’m sorry, Dennis, but it is the rare attorney who does not draft to ensnare all possible equivalents and then some. They have a variety of tools in their belts for this purpose. But broad generic terms and function language are the most common.

        Selden claimed any land locomotive having a gasoline engine. Technically, he did propose a gasoline engine that could allow a land locomotive to work. It is just that he did not enable all gasoline engines for that purpose. The courts eventually held him to his disclosure and equivalents.

        Take the case of the Star Trek transporter. Can the first to invent the critical means for effecting a transporter claim the transporter per se, or must he limit the claim to the means? That was effectively the issue before the court in Morse, and in Columbia Motor Car Co. v. CA Duerr & Co., 184 F. 893 (1911)(Selden). To some degree, that was same issue in Myriad, who wanted a patent on the BRCA gene per se.

        This problem is age old, but the Supreme Court has always held the same position: that patent can cover no more than what is disclosed and equivalents. Claims are supposed to point out and distinctly claim what is new about the disclosure. In point of reality, they have, since their very adoption in 1836, been used to claim the principle and not the means, to claim all manner of effecting the new principle regardless of the means.

        Whether the Supreme Court will again reinforce the central purpose for claims is to be determined. They could limit their scope to the disclosed means and equivalents by rule of construction (112,(f)), or as in Halliburton declare them invalid.. But this is the first time since Halliburton that the issue has been before the Supreme Court.

        (Note: I have previously pointed out by not permitting a construction of functional claims to preserve their validity, Halliburton effectively overruled Westinghouse. In passing 112(f), according to Rich, congress intended to restore Westinghouse. It will be interesting to see if the Supreme Court addresses the continuing viability of Westinghouse in view of 112(f).)

    2. “Dennis, just how can one tell when a claim term is “intentionally” flirting with ambiguity?”

      One time you can tell is when the drafter tells you that he was, or is now, intentionally doing so.

      1. One time you can tell is when the drafter tells you that he was, or is now, intentionally doing so.

        Right. And you put that on the record, correct?

        1. “And you put that on the record, correct?”

          Have never had to. Once they admit to it they generally just do what I tell them to. I’ve yet to have anyone resist at that point.

          P O W A Z. I gots some.

        2. I should also note LB, that your implied incredulity that anyone would simply tell you this up front is unwarranted. You’re badly underestimating the balls that some folks on anon’s “but but but that’s a legitimate way to increase scope and is just an issue of breadth” team display until you hand it back to them in official fashion.

          1. You’re badly underestimating the balls that some folks on anon’s “but but but that’s a legitimate way to increase scope and is just an issue of breadth” team display until you hand it back to them in official fashion.

            Apparently.

  8. Good run down Dennis, thanks.

    And you are right to be pessimistic that the result proposed by the Supreme Court will be fairly implementable by the US Patent Office. The reason is simple. The abstract idea idea can’t be implemented by anyone at all. It is mere tautology rooted in principles and tests that are themselves tautologies. You either believe you are looking at an abstract idea, or you don’t believe. The concept belongs in a seminary, not in the law.

    And the Court will be too full of hubris to admit that their abstract idea gobbledegook is the greatest judicial blunder currently haunting patent law.

    1. …because an application of an abstract idea is no longer an abstract idea…

      …no wait, the nose of wax configuration cannot be reached with that; we need to somehow change ‘application’ to not include the plain words of Congress in the statutory categories…

      …we need some major powerful dust-kickers and conflators…

      …send out the anti-patent special bat-signal (a signal that manufactures a transitory ‘item’ with greater ‘shelf-life’ than any hard good – as witness by looking up into a clear night sky)…

      You really have to love modern politics.

    2. Dennis I am quite pessimistic that the result proposed by the Supreme Court [in Alice] will be fairly implementable by the US Patent Office.

      That isn’t saying much. The USPTO has demonstrated a spectactular inability to implement even very simple tests. That’s why we see them issuing claims on junk like “automatic” methods of troubleshooting search engines.

      What would help the USPTO (and everyone else) would be rules for examining computer-implemented inventions that highlight the issues. For example:

      1) “New functions” are ineligible subject matter. A claim whose only novel feature is a “new function” is effectively a claim to the “new function” itself. Such a claim is ineligible. Example: A computer system, wherein said computer system is configured to receive a request for information from a woman between 20-45 and respond to the request by providing said information, wherein said information is a movie, wherein said movie includes a hamster, a lion cub and a green wizard. The analogous situation (which the USPTO does seem to able to “fairly implement” is a claim to a book with “new functionality” imparted by the words contained within).

      2) Information can not be protected by patents, regardless of any field of use limitations put on the information. Claims that effectively protect information are therefore ineligible. Example: A computer system, wherein said computer system is configured to receive a request for information from a woman between 20-45 and respond to the request by providing said information, wherein said information is a movie, wherein said movie includes a hamster, a lion cub and a green wizard. Sound familiar? It should.

      3) Abstractions (e.g., legal status, price, “importance”, “relevance”, and other terms devoid of physical/structural ) can not be relied upon to confer patentability to an otherwise old claim. Such claims are ineligible as being drawn to abstractions. Example: A computer system, wherein said computer system is configured to receive a request for information from a woman between 20-45 and respond to the request by providing said information, wherein said information is a movie, wherein said movie is not yet authorized for distribution on DVD.

      4) Claims to devices and methods which confer abstract designations (e.g., price, legal status, importance, relevance) to objects, services or to other abstractions are ineligible. Example: A method of assigning a price to a widget, comprising blah blah blah wherein said price is blab blah blah.

      5) Mental steps are abstractions. Claims that merely “automate” “new” mental steps are effectively claims to the “new” mental steps given the well-known information processing capabilities of old general purpose programmable computers.

      This is just a start. There are all kinds of “fairly implementable” rules like this.

      As Dennis knows very well, the same people who object to every rule that limits patentability will always howl about any rule proposed to limit the patenting of software or computer-implemented junk. That’s because those people don’t care about anything except more patents, all the time, and lining their own pockets with whatever profits that can grift off the system.

      1. “A claim whose only novel feature is a “new function” is effectively a claim to the “new function” itself.”

        So a claim whose only novel feature is a “new widget” element is effectively a claim to the “new widget” itself?????

        1. Must be that ‘special’ definition of “effectively” of his.

          Reminds me of the run-up in discussions of the Myriad case in which Malcolm kept losing his understanding of what “effectively” meant.

    3. Tour, agreed.

      Bilski, by being vague and indefinite, threw a monkey wrench into 101 law involving business methods and programmed computers. Perhaps this was intended, to see what developed. Management in corporations at time provokes chaos to shake things up so that a new paradigm might form.

      The whole discussion by all factions in the en banc Alice case shows one just how chaotic things got.

      In order to rescue matters, the Supreme Court really needs to go back to the basics, IMHO, and review Benson, Flook and Diehr to see what they had in common, and develop from them a clear rule. I believe I know what that rule is, and it really should be apparent to all.

      I really think the main Alice brief, and the Euro AIPPA briefs have it right. But we shall see.

        1. Well, anon, the reason Bilski is important is that it was unclear whether the claims in Bilski were abstract because of the lack of their limitation to a computer, or for some other reason. Many of the briefs in Bilski had argued that very point, and the reason why the MOT was wrong.

          Clearly, factions of the Federal Circuit are applying both interpretations of Bilski to computers. That is why Bilsi is important to computer claims and why its lack of clarity is and was a problem.

          1. because of the lack of their limitation to a computer”

            You are making things up out of whole cloth now Ned.

            There was no computer in the Bilski case – none whatsoever.

            Stop making things up.

            1. “There was no computer in the Bilski case – none whatsoever.”

              Not true. One of the dependent claims in Bilski recited applying the method on a computer, and the S.Ct. pulled out Parker v. Flook to conclude that the computer didn’t remove it from being an abstract idea.

            2. Sorry, I stand corrected. The passage of the Bilski opinion I was recollecting was, “Petitioners’ remaining claims are broad examples of how hedging can be used in commodities and energy markets. Flook established that limiting an abstract idea to one
              field of use or adding token postsolution components did not make the concept patentable. That is exactly what the remaining claims in petitioners’ application do. These claims attempt to patent the use of the abstract idea of hedging risk in the energy market and then instruct the use of well-known random analysis techniques to help establish some of the inputs into the equation. Indeed, these claims add even less to the underlying abstract principle than the invention in Flook did…”
              But it’s pretty clear adding a computer in one of the dependents would not have changed the court’s opinion.

            3. But it’s pretty clear

              Still completely wrong PL.

              It is completely unclear if such would have changed the discussion, for at the very least the Court would have faced a similar problem to Stevens’ attempt to wipe out business methods wholesale – the direct words as used by Congress.

            4. anon, I hope you are correct. But I think the Supremes would have invalidated the Bilski business method (tied to a computer) while leaving open that perhaps other business methods might be OK as long as they are not “abstract ideas”(whatever that is). That would not be my preference but it seems that is how the Supremes are applying Parker v. Flook. They just won’t allow an “abstract idea” to fly if it is performed on a computer. Which is what worries me about CLS. I guess we shall see. Thanks for the exchange, though.

            5. PL,

              I am correct.

              Whether or not the Supreme Court sticks its finger (again) into the nose of wax of 101 and re-writes the law remains to be seen.

              Stevens almost got away with explicit re-writing of the law. And he was one that noted the dangers of treating 101 like a nose of wax. If the Supremes recognize their constitutional place when it comes to writing patent law, and if they can control their addictions, then I will remain correct.

  9. “I am quite pessimistic that the result proposed by the Supreme Court will be fairly implementable by the US Patent Office”

    Dennis, what do you predict the result will be?

      1. “I certainly hope that this case [SmartGene] does NOT foreshadow what the Supreme Court will do. The Federal 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.”

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