By Dennis Crouch
- 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.
- 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.
- 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
- 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/
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.
RandomGuy, I here you about programmed computer claims and CRMs. A simple test would ban them all — claim them as processes, which they are.
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.)
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.
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.
“which is different than an old machine.”
LOL
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.
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?
..because Selden was a computer problem…
um, no wait…
Didn’t I just debunk the treatment of Bilski along these lines…?
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.
“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.
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.
NWPA,
Your comment again reminds me of anthropomorphication.
Machines really do not think.
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.
“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.
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.
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.
“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.
“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?
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.
LOL – Malcolm and immediate self-FAIL.
Take a close look at Selden’s claims M0r0n.
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.
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.
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.
But, if she is up for making a video like the ones posted earlier, I will be the cameraman and director.
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?
“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.
6, just think about it.
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?
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.
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.
6,
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.
“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.
Here’s a hint, 6.
Don’t copy Malcolm – for anything.
Nothing he does works for him. Why in the world would you expect it to work for you?
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.
You mean anon isn’t the Ruler of the Universe?
LOL
If “right” made “might,” I would be, wouldn’t I?
Lulz. You wouldn’t know that to hear him tell it.
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).
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.
“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.
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.
“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.
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.
“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.
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.
“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.
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.
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.
“ 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.
“The long and the short: Malcolm does not speak to the law as it is.”
Pot, meet Kettle.
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?
” 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.
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?
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.
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.
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.
“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.
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.
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?
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?
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.
>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.
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.
“bizarre non-sequitur”
LOL – because Malcolm says so – oh, how very Carroll of him.
how very Carroll of him.
No, how very Caroll of you!
Fun game. He’s your blogtroll, Dennis — don’t you love the “substance”?
LOL
Malcolm,
You are laughing again at your own odd behavior.
Mirroring won’t help you.
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!