Software Patent Eligibility: Alice Corp v. CLS Bank on the Briefs

By Dennis Crouch

Alice Corporation Pty. Ltd. v. CLS Bank International, Supreme Court Docket No 13-298 (2014)

Later this term, the US Supreme Court will shift its focus toward the fundamental question of whether software and business methods are patentable. More particularly, because an outright ban is unlikely, the court’s more narrow focus will be on providing a further explanation of its non-statutory “abstract idea” test. The Supreme Court addressed this exclusionary test in its 2010 Bilski decision, although in unsatisfactory form. As Mark Lemley, et al., wrote in 2011: “the problem is that no one understands what makes an idea ‘abstract,’ and hence ineligible for patent protection.” Lemley, Risch, Sichelman, and Wagner, Life After Bilski, 63 Stan. L. Rev. 1315 (2011).

In this case, a fractured Federal Circuit found Alice Corp’s computer-related invention to be unpatentable as effectively claiming an abstract idea. See, U.S. Patent No. 7,725,375. In its petition for writ of certiorari, Alice presented the following question:

Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court.

Oral arguments are set for Mar 31, 2014 and a decision is expected by the end of June 2014. In addition to the parties, a host of amici has filed briefs in the case, including 11 briefs at the petition stage and 41 briefs on the merits. Although not a party to the lawsuit, the Solicitor General has filed a motion to participate in oral arguments and steal some of the accused-infringer’s time.

The invention: There are several patents at issue, but the ‘375 patent is an important starting point. Claim 1 is directed to a “data processing system” that includes a number of elements, including “a computer” configured to generate certain instructions, “electronically adjust” stored values, and send/receive data between both a “data storage unit” a “first party device.” The claims also include “computer program products” and computer implemented methods. The underlying purpose of the invention is to provide certain settlement risks during a time-extended transaction by creating a set of shadow credit and debit records that are monitored for sufficient potential funds and that – at a certain point in the transaction the shadow records are automatically and irrevocably shifted to the “real world.”

It is unclear to me what makes this invention novel or nonobvious and many believe that it would fail on those grounds. However, the sole legal hook for the appeal at this stage is subject matter eligibility. One thing that we do know is that CLS Bank is alleged to be using the patented invention to ensure settlement for more than a trillion dollars daily.

Important case: The claim structure here is quite similar to that seen in hundreds-of-thousands of already issued patents and pending patent applications where the advance in software engineering is a fairly straightforward, but is done in a way that has an important impact on the marketplace. One difference from many software patents is that the underlying functionality is to solve a business transaction problem. However, there is a likelihood that the decision will not turn (one way or the other) on that field-of-use limitation.  In his brief, Tony Dutra argues that the key here is utility, and that an advance in contract-settlement is not useful in the patent law context.

[Brief of the US Government] The most important brief in a pile such as this is often that filed by the U.S. Government. Here, Solicitor General Donald Verrilli and USPTO Solicitor Nathan Kelley joined forces in filing their brief in support of CLS Bank and a broad reading of the abstract idea test. In particular, the U.S. Government argues that none of the claims discussed are subject matter eligible. The brief begins with an importance argument – that “the abstract idea exception is patent law’s sole mechanism for excluding claims directed to manipulation of non-technological concepts and relationships.” This notion – that the abstract idea is the final and ultimate bulwark – places a tremendous pressure on the Court to create a highly flexible test. In my view, the Government largely loses its credibility with that argument – somehow forgetting about the host of other overlapping patent law doctrines that each address this issue in their own way, including requirements that any patented invention be useful, enabled, described in definite claims, and nonobvious. The ultimate backstop is likely the US Constitutional statement regarding “Inventors” and their “Discoveries.”

The government brief goes on to endorse the approach of first identifying whether the claim would be abstract if the computer technology were removed from the method claims and, if so, move on to consider whether the computer technology limitations are sufficient to transform a non-patentable abstract idea into a sufficiently concrete innovation in technology, science, or the industrial arts. “The ultimate inquiry is whether the claims are directed to an innovation in computing or other technical fields.” The brief then reviews the precedent on this topic from Bilski, Mayo and Flook.

Addressing the computer system and software claims, the U.S. Government agrees that they are certainly directed toward “machines” and “manufactures.” However, according to the government, those claims to physical products are properly termed abstract ideas because the physical elements “do not add anything of substance.”

One interesting element from the brief is that the US Government notes that, although a question of law, invalidity for lack of subject matter eligibility requires clear and convincing evidence in order to overcome the presumption of validity. In its brief, CLS Bank argues otherwise as does Google, who actually takes time to cogently spell out the argument with citation to leading authorities.

[Brief of CLS Bank] In its merits brief, CLS Bank somewhat rewrote the question presented – focusing attention on the Supreme Court’s decisions in Mayo.

Question Re-framed: An abstract idea, including a fundamental economic concept, is not eligible for patenting under 35 U.S.C. §101. Bilski v. Kappos, 130 S. Ct. 3218 (2010). Adding conventional elements to an abstract idea does not render it patent-eligible. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012). The asserted claim of the patents-in-suit recite the fundamental economic concept of intermediated settlement, implemented using conventional computer functions. The question presented is:

Whether the courts below correctly concluded that all of the asserted claims are not patent-eligible.

The basic setup of the CLS Bank is the argument that a newly discovered abstract idea coupled with conventional technology is not patent eligible. CLS Bank’s point is well taken that an outright win for Alice Corp. here would involve something of a disavowal rewriting of Mayo.

[Brief of Alice Corp.] Alice Corp’s brief obviously takes a different stance – and argues first that the non-statutory exceptions to patentability should be narrowly construed and focused on the purpose of granting patents on creations of human ingenuity and that the idea behind Alice’s invention is not the type of “preexisting, fundamental truth” that should be the subject of an abstract idea test. Alice also reiterated its position that the claimed invention should be examined as a whole rather than divided up as suggested by the Government brief.

[Brief of Trading Technologies, et al.] TT’s brief (joined by a group of 40 patent-holding software companies as well as Prof. Richard Epstein) argues that the “abstract idea” test is focused on scientific truths and scientific principles. In that construct, Alice Corp’s ideas regarding the settlement system would not be seen as ineligible. TT also challenges the court to think beyond the computer as “merely a calculator and that programming merely instructs the computer to perform basic mathematical calculations. “While this may have been true of many of the applications programmed on the earliest computers over 40 years ago, it is simply not the case today. . . . Viewing computers as merely calculators is completely disconnected from the reality of where innovation is occurring today and where most innovation will occur in the future.” In his brief, Dale Cook agrees and further makes the argument that a distinction between hardware and software is illusory – citing Aristotle to make his point. [Brief of Dale Cook]. Supporting that notion is the Microsoft brief that sees “software-enabled inventions” as the “modern-day heirs to mechanical inventions. [Brief of Microsoft HP]. Pushing back on this argument, Public Knowledge seemingly shows that the entire claimed method can be implemented in seven lines of software code. Thus, while some software is complex. PK makes the argument that the software at issue here is exceedingly simple.

TT also warns against the Government’s position that a strong eligibility guideline is needed in cases such as this. In particular, explains “inventions that do nothing more than use a computer to implement time-worn concepts in obvious and traditional ways will not receive patent protection notwithstanding the fact that they concern eligible subject matter. On that note, TT asks for clarification from the Supreme Court that “Mayo does not support importation of novelty, nonobviousness, and other patentability criteria into the ‘abstract idea’ analysis.”

[Brief of ABL] The final brief in support of petitioner was filed on behalf of Advanced Biological Labs by Robert Sachs. ABL argues that a claim should only be seen as problematic under the abstract idea test when there are no practical alternative non-infringing ways of practicing the abstract idea. On that point, ABL further pushes for the notion that the test should be considered from the framework of one skilled in the art rather than simply the-mind-of-the-judge and based upon clear and convincing evidence. Pushing back against this notion is the brief of the American Antitrust Institute (AAI) drafted by Professor Shubha Ghosh. The AAI argues that the purpose of the Abstract Idea exclusion is to prevent undue harm to competition and innovation. Seemingly, the AAI contends that a claim directed an abstract idea is per se anticompetitive and that even when coupled with technology it may still be unduly preemptive. Oddly however, later in the brief AAI argues for a test that is not based upon market competition or preemption.

[Shultz Love Brief] A leading brief on the side of ineligibility is that filed by Professors Jason Shultz and Bryan Love on behalf of about 22 other professors. The professors make the argument that the world would be a better place without software patents. For its conclusions, the brief largely relies on the work of Brian Love, Christina Mulligan, Colleen Chien, James Bessen, & Michael Meurer. The EFF brief from Professor Pamela Samuelson, Julie Samuels, and Michael Barclay make a parallel argument: “If anything, evidence shows that the U.S. software industry is harmed by the exponential growth of vague software patents.” Without denying the problems created by software patents, Professors Peter Menell and Jeff Lefstin argue that the solution is not to rely upon the “abstract idea” test to solve that problem. IBM offers the starkest contrast to the Shultz-Love brief – arguing that the failure to clearly offer patent rights for software inventions “endangers a critical part of our nation’s economy and threatens innovation.”

The ACLU has been more frequently involved with patent law issues and was a backer of the Myriad case. In its brief, the ACLU argues that the abstract idea exception is the patent law proxy for free speech and that monopolization of abstract ideas would be a violation of the First Amendment. That conclusion is supported by the Software Freedom Law Center & Eben Moglen. The First Amendment argument has the potential of twisting on the ACLU: if the justices fail to see that patents create any First Amendment concern then they may be more likely to support a narrowing of the abstract idea exception. Notably, in the most recent patent law oral arguments on fee-shifting, Justice Roberts arguably suggested that patents did not create any first amendment concerns.

I mentioned Microsoft’s brief earlier. Microsoft argues that software should be patentable – but not the software in this case. In particular, Microsoft agrees with the notion that simply adding “a computer” to an otherwise abstract idea does not fix the problem. Microsoft’s solution is to consider “whether the claim as a whole recites a specific, practical application of the idea rather than merely reciting steps inherent in the idea itself.” Microsoft goes on to admit that its test adds little predictability.

The Intellectual Property Owners Association and AIPLA similarly argue that software “if properly claimed” is patent eligible. On its face, that argument may not sit well with the Court who may see the “as claimed” notion designed to create loopholes for sly patent drafters whose noses are made of wax. A collective brief from Google, Facebook, Amazon, and others support this notion that patent eligibility should not turn on “clever drafting.” On an ancillary (but important) point Google argues that Section 101 defenses should be considered at the outset of most cases. cf. Crouch & Merges, Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making.

408 thoughts on “Software Patent Eligibility: Alice Corp v. CLS Bank on the Briefs

    1. They expect the “Alice” patent to be rejected and try to avoid “collateral damage” to their own huge patent portfolios. Whether software should be patentable is indeed a different question. OMHO sofwtare patents are often “bad” patents, but that is more a reason to reject bad patents than software patents.

      “Bad” can mean different things, for instance patents that block interoperability without really disclosing something that helps to further technology. Interface “inventions” may even be non-obvious in a negative manner, i.e. orse than a “person skilled in the art” would think of, but they may be unavoidable for interoperability due to “network effects”.

        1. Admittedly, it is not easy to map policy considerations onto legal rules.
          The fundamental question is: why don’t some “inventors” deserve a property right for their valuable ideas? Abstractness is not a very convincing reason. All ideas are “abstract” to some extent.

          My theory is that patents primarily provide exclusivity, as an exception to the rule of freedom of competition.

          Keep in mind that there are other ways to reward people (and companies) for efforts. That is the rule in consultancy. Alice is an exception to use patents for appropriation.

          The statute provides clarity by requiring a description that can be carried out by a PHOSITA (“without undue experimentation”). No, 112 does not replace 101, but it provides a clue for the interpretation of 101. One can not patent subject matter that can not be described in the required way.

          A businessman is more like an inventor than a PHOSITA, which explains why business methods should not be patentable.

          In the oral argument, I noticed a tendency to adopt a technology requirement – although US courts always rejected such a requirement, in contrast to European patent law, that follows a German tradition in this respect. Defining a legal technology concept is easier said than done. There is a tendency in Germany to *define* patentable subject-matter as “technology”.

          1. Reinier, “technology?”

            Not that I disagree that the patent should Be restricted to technological innovations, it would seem the hoist Supreme Court by their own petard if they come down and hold such in the present case having eschewed any limitation patentable subject matter imposed by the constitutional concept of “useful Arts.” Useful Arts was somewhat defined by the initial congresses when they said that patents may be granted for new and useful machines, manufactures, compositions and Arts. If the arts are understood to be processes involved with machines, manufactures and compositions, then essentially there no ambiguity in the statutory framework as to what the useful Art means. To impose however some obscure technological requirement without defining what that means would be to introduce some extraconstitutional limitation on patentable subject matter that would introduce additional ambiguities unnecessarily into the statutory framework.

            It just seems to me that the better course would be to concede that the Bilski decision was wrongly decided, and the go with the Stevens minority position that the problem with claims directed to business methods is that business methods are not within the useful Arts.

            1. It sounds sympathetic, but a proper solution must be clearly explained and structured. It strikes me that the reasoning why certain subject-matter ought to be excluded is by and large a word game. I am aware that this unavoidable to some extent due to the US system of binding precedents. Still it would help if a “non-legal” reason could be given to exclude certain subject-matter. Unfortunately, economists have provided little help here.

              AFAIK they always start from the perception that patents help to “internalize externalities”. Then there is no reason to exclude any subject-matter! So I believe that is a “proof by contradiction” that patents serve a different purpose. My theory is that patents still have many elements of the priviliges they were historically based on. Of course the difference is that patents are granted on the basis of rules, whereas privileges were granted at the discretion of the ruler: the king or the president. Privileges imply exclusivity. And exclusivity ought to be an exception in a free market economy. Market competition is actually a strange animal: competition leads to damage to competitors which is NO tort NOR otherwise against the law. Patents can provide “protection” against competitors.

              Of course there are situations in which this protection is indispensable. If someone makes a huge investment and others are free to imitate, he will loose the competition if the competitors simply can copy the invention and don’t have to make a substantial investment. Still this is not a general principle. Some level of imitation is healthy for competition.

              Anyway, the European experience shows that a technology criterion is not a easy as it may seem from the other side of the fence. One problem is that there is a tendency (some say: a need) to dissect patent applications in technical and non-technical parts (very similar to the dissection in the US of abstract and non-abstract-elements, which was forbidden in Diehr, but still happens), and then it seems logical to require the technical parts to be novel. But that mixes 101 with 102 and 103 and violates the rule that applications must be assessed as a whole.

              Another problem is that the field of application is immaterial for patentability. A pencil is a technical device, even if it is used in business. Even a fork is a technical device, although eating is not technical. Tools for business are technical, yet they may be considered business methods as well. In EPO case law technical business methods are identified. And again, the analysis in concrete cases is mostly a word game.

              A complication is that the claims in a patent application seem to dissect the invention beforehand. Still the question must be asked: “what is the trick”? The rule of “unity of invention” requires a single patent application to encompass just a single inventive concept (this may be slightly different in the US). What does the patent application learn us? In this perspective, the use of a computer in CLS v. Alice is clearly irrelevant. The trick is to involve a trusted third party in payment transactions, period. Yes, a bank may hire a consultant to help to develop new payment schemes, but then he should be paid by the hour, rather than with an exclusive right to be exploited over the next 20 years.

              Typically firms may like to apply patented processes for exclusiveity against competitors. But it seems CLS could not care less: their business does not depend on this type of exclusivity.

            2. Reinier, I agree with everything you said in your post. I think the Supreme Court may work backwards from the result it wants to achieve and provide that result with a legal justification.

              Thus they will first decide that the claims in this case provide no significant advance that justifies a patent in view of the amount of economy covered by the claims. CLS Bank is a clearinghouse for international financial transactions and allowing a claim to cover such would be a tax on the world economy. The Supreme Court is not going to allow this unless it has no recourse under the law.

              Thus how are they going to justify holding the claims ineligible without doing unnecessary collateral damage? That is the puzzle they are faced with. But as you and I agree, they must explain themselves in a way that makes sense and provides guidance for the future. Their opinion in the Bilski case failed the simple test. And it is arguable, and it is argued but many, that their opinion in the Benson case had the same failure.

    1. Indeed, whether software is patentable is irrelevant for CLS v. Alice, since it is “insignificant post-solution activity”.

      Besides, the question whether software is patentable is the wrong question. Software is protected by copyright. It is merely a means of implementation, and software solutions tyically can be implemented in hardware as well.
      The political issue about swpats is that they tend to be abused – like domain name grabbers abuse law.

      1. And, should we really not mention that the Alice case is not about software at all. CLS Bank noted that Alice wrote not one line of actual code, before or after. Their brief further contended that the specification disclosed no algorithm that a programmer could code to in C++ or the equivalent.

        Finally, Alice was never in the business covered by the patent. Their specification has only a very few words on the topic, the bulk of the spec devoted to other inventions.

        This case is all about covering topics such as business method (fundamental economic principle) or other such otherwise ineligible subject matter by sprinkling the claims with generic computer components. In the words of Prometheus, they added to the ineligible subject matter the statement: compute it.

        1. Right! Still in advocatus diaboli mode, isn’t this patent an incentive for an (allegedly) innovative firm like Alice to develop (again) innovative business models for the financial sector?

          Abstractness is not the reason to reject this patent. And it is an incredible reason.

          1. Reinier, the legal basis for holding the claims in Alice ineligible are the following:

            1: Fundamental economic principles are not eligible. Why? They are neither a machine, process, manufacture nor composition. Bilski said they were abstract, but that would imply they would be eligible if limited to a computer.

            2: Adding generic computer components is insignificant. Flook, Prometheus.

            As well, a programmed computer is not a NEW machine. This is not necessary for the holding, but they should come out and slay that dragon now.

            1. Before we get confusion: I agree that Alice’s business method should not be patentable.

              But for the thevelopment of law it is essential to identify the proper argument. I guess that Alice’s “invention” is not some sort or (economic) “law of nature”, but a process indeed, something that can be executed (one cannot execute a law of nature!)

              I think that patents eventually are a means to correct the free market, like the privileges that are the historical origin of patents. Some firms do need artificial, legal exclusivity, e.g. in pharma. But patents on business methods would affect the core of the market economy, eliminating competition.

              Incidentally, the idea of involving a trusted third party in a business transaction is age-old. Is Alices idea novel at all? In a meaningful way? Or is it just an obvious extension of a very old idea? Granted, this solution would obviate the need to answer the “101” question – which would be a pity for the development of law.

            2. The most difficult question the Court asked of the Solicitor General was how does one identify an “abstract idea?” Rather than limit the answer to the machine, process, manufacture or composition list that I would propose, he said,

              “”[A]n abstract concept is a claim that is not directed to a concrete innovation in technology, science, or the industrial arts.”

              Sounds very European to me, but essentially correct.

  1. More clean up needed from an “academic” mess:

    link to intensedebate.com

    [http//intensedebate.com/people/reinier_bak2181/comments.rss
    [rss version=”2.0″]
    [channel]
    [title]Reinier Bakels’s Comments[/title]
    [language]en-us[/language]
    [link]http://www.intensedebate.com/users/2181[/link]
    [description]Comments by Reinier Bakels[/description]
    [item]
    [title]Feld Thoughts : The End Software Patents Coalition[/title]
    [link]
    [http//www.feld.com/wp/archives/2007/11/the-end-software-patents-coalition.html#IDComment38888
    [/link]
    [description]

    I do believe that “software patents” are the worst form of legal extortion that exists. Still, for a successful opposition against such patents, eventually the question must be answered what is in and what is out. The US courts struggled from 1973-1998 to draw that line, and then opened the floodgates. The EU courts still struggle with the “technical contribution” criterion which is a confusing pretext to make arbitrary decisions. [br /]Imho a fundamental change in patent philosophy is needed. The question is *not*: does this alleged inventor deserve a patent, *but*: can he survive market competition without legal protection? In the capitalist economy, imitation (preferably improved) is the rule and protection should only be applied in rare circumstances. Patent protection is for losers!

    [/description]
    [pubDate]Fri, 16 Nov 2007 08:56:13 +0000[/pubDate]
    [guid]
    link to feld.com
    [/guid]
    [/item]
    [/channel]
    [/rss]

    Who is FritsJansen?

    Could he be (gasp) a pseudonym?

    Tell me, my dear Reinier, does this anti-software patent venom still color your “oh-so-objective” academic viewpoint? Are you still trying to oppose such patents?

    Your gamesmanship and dissembling is rather obvious – just as obvious as your credibility that has vanished like a f@rt in the wind (said in the best Warden Samuel Norton tones)

    link to youtube.com

    1. Who is FritsJansen?

      LOL!

      “What’s the frequency, Kenneth?? What’s the frequency?”

      The patent teabaggers really do stink of desperation these days. It’s almost as if they couldn’t see it coming. Who could have imagined they were that st00pit, though?

      1. My pal Reinier calls himself pro-patent and already Malcolm is trying to pick on him and call him a patent teabagger…

        Come man, clearly Reinier has enough on his mind with my decimating him, he does not need you picking on him as well. Especially as the only vapid thing you have added to the conversation is your pitiful post regarding printed matter when all that does is bring to mind the fact that you volunteered an admission against your interests as to knowing the controlling law when it comes to the exceptions to the printed matter doctrine. Or are you going to try (again) to deny that you know what the controlling law and that you said that you did,know it, and then tried to dissemble and try all sorts of lame and trite things like “Kenneth” to imply that you did not say that you knew what the controlling law was?

        T.
        O.
        O.
        L.

        1. Please don’t use complicated words or slang – English is not my native language!

          And if you really want to fight anti-patent activists, find another victim! Assuming that you do not just want to harass and irritate me, but effectively oppose patent opponents!

          1. LOL- the man wielding the Crybaby Veto is a “victim” (of his own posts).

            Yes Reinier, the truth of what is law and fact when it comes to software patents can “harass and irritate” you.

            That is a “you” problem though.

        2. Incidentally, apart from the word “extorion”, I am not very far away from a common obervation e.g. in the current Amicus Briefs that patents for software do more harm than good.

          But anti-swpat activist blamed me for not advocating a general ban on swpats! For them, I am pro-patent! In the above post, I do not advocate a general ban either. On the contrary, I argue that still the line must be found between good and bad swpats. Which is not just a matter of inventive step!

    2. The debate on this website should *not* be whether someone is “pro-patent” or anti-patent”. For more than one reason.

      Firstly, everyone is entitled to have his own political opinion. We live in the free (part of the) world. Professor Crouch should correct me if I am wrong, but I supppose this BLOG is about law raher than a forum for personal political attacks. If you perceive my posts from a distant past as political, that is my mistake.

      Secondly, a professional lawyer should be able to separate his personal views from a legal analysis, if only because a legal analysis must be supported by arguments, from statutes, case law, perhaps economic perceptions, and logic. “anon” attacked me several times for not applying proper reasoning, but he did not support this obseration with arguments, only blamed me for “redefining the word” or similar esoteric complaints. Actually, in this legal forum, I take a moderate position – some people blamed me for being overly pro-patent because I reject a catagorical ban on software and even on business mehods.

      Thirdly, I thunk we should concentrate here on the merits of the case rather than judge people whether they are “faithful” to patents.

      Fourthly, I am not the only person who voiced concerns about the problems associated with patents. The AIA was written (among other things) to address the problems of “patent trolls”. Respected writers have highlighted the problems of “patent wars”. Historical accounts show that patents did not always foster innovation (as they are supposed to by the constitution). I read that the development of the steam angine was hampered by James Watts patents (but tell me if I am wrong).

      Yes, for some time I had to use a pseudonym since this website used the “Disqus” system that is also used by some local newspaper websites in my country where I do not want to contribute using my own name. But on this forum lately I consistently use my real name.

      Dear “anon”, you are pathetic. Even if you would be right, you comments are uninteresting.

      1. What is pathetic is how you react when your belief system withers under the spotlight. Calling someone else names like “pathetic” when they are trouncing you on the merits of discussing actual law is what is pathetic Reinier.

        It is NOT “if” I am right – we both know that I AM right. And the reason why you find this “uninteresting” is that your little pet world view does not stand a chance if you were to be intellectually honest – The real loser here is not those who want patents – as you would say at your core – it is you for being exposed as the hypocrite that you are. After all – it was you, not I that played the “you are hiding behind a pseudonym” card instead of focusing on the merits of what was posted. I busted you for playing that card, then showed you for the hypocrite that you are. Your bland Crybaby Veto attempt now is what is pathetic.

        What the H is “ I had to use a pseudonym since this website used the “Disqus” system that is also used by some local newspaper websites in my country where I do not want to contribute using my own name Had to? Really? No. You choose to – and that choice is NOT a bad thing like you attempted to make it with an emotional card-playing gambit that FAILED.

        The debate very much should recognize a person’s motives for posting what they post. You tried before to hide that, and that attempt too was rejected.

        And this is NOT to say that you cannot have an opinion – more dissembling from you. Anyone can have an opinion and that is fine – but you need more than just “have an opinion” if you are proselytizing that opinion and wanting that opinion to have a real world effect on law. You attempt to conflate “having an opinion” with defending that opinion. You are more than welcome to having an opinion – but do NOT attempt to deny me my opinion that you are foisting your opinion in tricky rhetorical tools that I can expose for what they are: half truths being advanced in an agenda to change the law.

        Your “secondly” point is another false flag, as it is you that is having difficulty separating your personal crusade from the law. Your prior post reveals a subversive element. My direct question to you (which you plainly dodged) was whether that belief system still animated your posting. This is a legitimate question, even if you find it “uninteresting.” To cry “I am being attacked” is a BOGUS Crybaby Veto attempt to hide your animus. (that others likewise act as you do is also a false flag – your “Fourthly” point is not a feature, but a bug). It is unworthy of anyone claiming to want to be an intellectual. In fact, your spin now with “he does not supply arguments” is a bogus spin, as my pointing out that you are engaging in a subtle redefining is an argument. I am exposing the very subversive style of the anti-software patent group of “redefining” the argument. Spend a little time on the anti-software boards – check out the subversive writings of PoiR and others of his ilk. And stop trying to invoke a lame Crybaby Veto.

        Man up and own what you are doing (whether or not you use a pseudonym is an unworthy smokescreen – clearly using your real name still does not hide the fact that you are hiding your motives).

        1. Do you really think I am worth so much attention? You flatter me!

          Do you know the difference between the words “subversive” and “subjective”? I try to be not even subjective, but you blame me for subversiveness? That sounds like destructive. It is hard to imagine in what way I could be destructive. Because I use very so smart anti-patent arguments that most people will believe me? Except the happy few like yourself – you understand my mean tactics! Still my arguments seem to be so smart that even you are unable the their weakness!

          Let me recall that in this this debate I have not really taken an anti-patent position. In my perception, software patentability is not the issue in CLS v. Alice, so whatever the answer is, it does not affect the conclusion, IMHO. Most Amicus Briefs argue that this particular business method is too abstract to be patented, irrespective of the computer implementation (and irrespective wheher it is patentable subject-matter).

          I do not oppose business method patentability per se, if only because the “business method” concept is vague (as has been observed by the USPTO, see the comments in the State Street opinion).

          Re pseudonyms: you are hiding yourself all the type behind the name “anon”! In particular if you make personal comments like accusing me of subersiveness, I think it would be appropriate not to hide yourself behind a pseudonym. Yes, I occasionally use a pseudonym, but I never attack the other participants in a BLOG personally. Some BLOGS are not nealrly as serious as patentlyO!

          1. It is not you personally that is worth the attention – your ego notwithstanding.

            And yes, I know the difference between subversive and subjective – do you? How else would you portray your exposed rhetorical tricks including the claim to be an objective academic, engaged merely in an intellectual exercise?

            And your ego shows itself again, thinking that I have trouble with the “smartness” of your ‘arguments.’

            What vapid spin.

            Clearly, your arguments whither – and that is why you resort to such lame emotional tactics as an attempted Crybaby Veto.

            Your recollection of not being anti-patent is clearly faulty. It permeates your views. You cannot help yourself, it appears.

            As to the use of pseudonyms – you (again) are quite mistaken – was it not embarrassing enough for you to be shown your duplicity? My point on the use of pseudonyms – like all of my other points in our discussion – is simply a better point than yours. Unlike you, I have not attempted an emotional smear campaign by their use.

            And once more – you dissemble with this notion that I am attacking you personally – what balderdash. What I have attacked is fair game in our discussion – the views you have presented, and the manner in which you have presented them. Subversive – while a strong word – is merely an accurate observation of what you have presented. Don’t like it? Then choose better tactics. The shovel you are using to dig your hole is not a great tool to help you out of that hole.

            1. Reiner, I think the argument of CLS Bank is that “fundamental economic principles” cannot be the subject of a patent. In Benson and Flook, it was argued that Math was a fundamental tool of scientific and technical progress. Thus, Math was excluded subject matter, like a law of nature and for substantially the same reasons.

              The notion of “abstractness” came from Morse, and it essentially is an undue breadth concern — a doctrine that later emerged as objection under 112. Application of Tarczy-Hornoch, 397 F.2d 856 (C.C.P.A. 1968).
              link to patently.wpengine.com

              I really do not believe the claims in Bilski or here suffer from undue breadth. Their problems lie elsewhere.

            2. Ned,

              See my comments (both now and in the archives) admonishing you for your outdated view of “process” as some sort of second class statutory category as noted in the Tarcsy-Hornoch case that you cite to.

              The expression “function of an apparatus”is our legacy of 19th century controversy over the patentability of processes. Early cases proscribed a kind of overweening claim…

              Note too, that your penchant for old and outdated patent academic articles omits this understanding.

              Thus, it can be seen that if you attempt to achieve clarity in understanding the law of 101, that one must be aware of two different aspects: the aspect of statutory category and the aspect of utility.

              It is time to put the crusade against business method patents to rest.

            3. anon, do not confuse function of a machine doctrince with claiming an effect or result. Tarczy-Hornock found the former overruled by Supreme Court precedent, and I do not disagree. A process comprising a series of acts or steps that produce a result that is new is eligible per this case — provided that the process does not effectively claim excluded subject matter as in Benson, Flook (Math) or Mayo, Law of Nature.

              The point I raised here is that even Rich believed Morse was about undue breadth — a 112 concern. Principle in the abstract, the undue breadth problem of Morse, simply does not apply to a process. That is the point I make here.

              Thus a process comprising a series of steps is PER SE not abstract.

            4. Thus a process comprising a series of steps is PER SE not abstract.

              You want to add a little meat to that Ned? I am pretty sure that yo u do not literally mean that any process that is comprised of a series of steps is PER SE not abstract, as any process can be broken down into being a series of steps.

            5. Ned Heller,
              Indeed words like “fundamental”, “overbroad” and “abstract” seem to miss the essence of the problem. A patent that does not have a preempting effect is useless if it can be bypassed by a non-patented solution.

              In Morse, IIRC the objection was that Morse tried to cover future</I applications of his famous code. This is not per se a problem, as long as the PHOSITA is able to accomplish the application.

              I guess the only solution is to move away from the idea of a "reward", from "commodification of ideas", and to consider patents a means to foster sound competition. Which may or may not be needed. The word "protection" implies desirability, and may be misleading.

              I recall that Machlup in is famous report wrote that the French introduced the term "intellectual property" in the aftermath of the French Revolution since property was declared a "holy and inalienable right" in this revolution, whereas the word "privilege" did not comply with the spirit of freedom, equality and brotherhood of this revolution (liberté, égalité et fraternité). BUT actually patents are modeled very much like the former priviliges – see the "Statute of Monopolies", 1623.

              I still wonder whether "Alice" is a honest business or really al troll. Is there a market for ideas how to set up financial transactions? And even if it exists, the question is whether it can not be covered by a consultancy model. Consultants do help to develop ideas, but they do not claim property rights.

              It strikes me that "litigation" is mentioned so prominently on Alices website. Is this a confirmation that it is indeed a troll? A "normal" firm would not dwell about litigation on its website (unless it is a law firm!).

              Perhaps such ideas are hard to reconcile with present case law. On the other hand the notion of "abstractness" seems a "restatement of the problem in more imprecise terminology" (words originally used in a British court decision on the European technology concept). Given there is no true answer what it really means, there may be freedom to give it a creative – and appropriate meaning.

            6. Well Reinier, I agree we are not asking the right questions, so how are we going to get the right answers?

              The briefs of the two main combatants in this case are the best of the lot. They tee the issues up quite well, IMHO, but still they are not entirely satisfactory. Assuming the Supreme Court declares that fundamental economic principles are not eligible, I hope they explain why and not simply use some magic words, like abstract, to support their holding. As I pointed out, Abstractness in Morse simply meant that one is claiming an effect or a result without claiming any of the means or steps of the inventions disclosed. This is “undue breadth,” a 112 problem.

              Morse disclosed two basic inventions, a repeater system for extending indefinitely the effective length of the communication. The second invention of course is the code and apparatus that was used to communicate that code both at the transmission point and at the receiving point.

              But claim eight was really to the repeater system where the apparatus disclosed in the specification was a specific type of circuit. The Supreme Court was concerned that a claim to all means and methods for communicating at a distance would encompass apparatus and methods not disclosed, not enabled, and would prevent others from developing alternative ways of achieving the same result thereby retarding the progress of the useful Arts.

              Clearly, a process claim that claims a process in terms of multiple steps, or an apparatus comprised of certain programming, cannot be abstract within the meaning of Morse.

              The Supreme Court, in Benson and Flook excluded Math as a subject of patents, while allowing patents where math was applied in an otherwise eligible process or machine (Diehr). The rationale of course was that Math was fundamental to scientific and technical progress and could not be monopolized.

              But what does a business method have to do with scientific and technical progress?

            7. anon, Morse was about claiming an effect or result. It morphed into “functional at the point of novelty” in a series of case culminating in Halliburton.

              One claims an effect or a result if the claim is functional at the point of novelty. But, typically, this is not a problem in a multistep process where the novelty is in the combination. You yourself have made this very point countless times.

            8. Ah, even more flattering, my involvement in this debate is apparently worth your attention.

              Subversion is destructive. How could I be destructive if I just talk politcal anti-patent nonsense?

              I am prepared to learn, else I would not participate in this debate. But you nenevr coutner my arguments directly, you always move to the “meta” level, blaming me for being deceptive, manipulative, rhetoric whatever.

              I wish it were true. Then I could mak a career as a politician!

            9. Reinier – the ones that make a career of it are the ones that are not so obvious about it.

              Further, you don’t wan tot learn about how the law is – you already know how the law ‘should be’ and you only want to learn hos to disguise your subterfuges better.

              Do you really expect me to teach you that?

          2. @ Ned Heller 27.2.1.1.1.6

            I don’t want to give the impression that I am overly pro-patent, but I think it is still difficult to find the right argument. So talking in devils advocate mode:

            A patentee dos not have to disclose more than needed by a PHOSITA, and wouldn’t such a person be able to devise new and creative applications of the Morse code?

            What is “fundamental”, or “basic”? As I explained before, patents must to some extent monopolize, else they are not effective. Anti-patent advocates may infer that patents are never appropriate!

            I know that there are many advocates of restricting patents to technology, perhaps because of the constitutional wording of “useful arts”. I am not sure whether that is a valid economic argument. Doesn’t a mathematician or a developer of a business transaction setup deserve a patent?

            I think the answer is perhaps that some people are rewarded by payment by the hour, and other people are rewarded with a property right. Why the difference? My hypothesis is that it has something to do with competition control.

            A clue is that the amount of effort to make an invention is immaterial: no patents can be obtained for basic science, however costly, and other hand, patents are granted for coincidental inventions: “patentability shall not be negated by the way the invention is made”. So the investment drops out of the equation. And what else?

            1. Reineir, you hit on a basic, nay, fundamental beef of mine about the CLS Bank argument. What do they mean by “fundamental?”

              Benson and Flook excluded Math because math was fundamental to science and technology. But, otherwise, Math was clearly defined even if it was not always easy to detect.

              But if he Supreme Court says that “fundamental” economic principles are excluded, we are going to argue extensively about what fundamental means. (Or for that matter, what and economic principle in fact is.)

              But then they really, really, should explain why they are excluding “fundamental economic principles.”

              I, of course, suggested they should come right out and reverse Bilski and hold that claims to business methods are not within the useful Arts. At least this position is arguably correct and legally sound. Otherwise, they are just making it up as they go, and using magic words, incantations and slight of hand to justify their holdings.

      2. With reference to the patents of James Watt, the answer is that they both promoted and hampered innovation.

        It is true that when improved Newcomen engines had become more popular and the fuel savings enabled by Watt had been achieved, the patents hampered development. In particular there was a conservative approach to high pressure steam, and Trevethick would no doubt have been glad if the Watt patents had been abolished. But in order for Watt’s invention to be successful the parallel genius of Matthew Boulton also had to be rewarded, and the two pioneers needed to have the opportunity to gain the reward of their invention.

        A patent benefits the inventors for a limited period. It benefits mankind for ever.

        1. Thank you for that reminder Paul – that any perceived tip of the scale (in truth, there is none) in the Quid Pro Quo is necessarily a fleeting and, um transitory tip.

        2. Both the Swiss and the Dutch did not have patents at the end of then 19th century, which spawned both the now world class pharmaceutical industry in Basel (which used French inventions) and Philips Electronics in Eindhoven (who could manufacture light bulbs without bothering about Edisons patents). Patents are very much about international econmic politics. If one day the Chinese take over and a net patent licence fee stream will flow westwards over the Pacific, American patent “logic”will change immediately!

          Did you know that the Americans used French planes in WWI because the Wright brothers asked too much for their patents?

          1. Reiner, that bit about the Wright brothers should have inspired us to subsidize the patenting of military technology in Germany. We all know how the Germans are law abiding and how they respect patents. If the UK inventor of the rocket had a German patent and sued the German government for infringement during WWII, the court order enjoining rocket production would have been respected.

  2. >As Mark Lemley, et al., wrote in 2011: “the problem is that no one understands >what makes an idea ‘abstract,’ and hence ineligible for patent protection.” Lemley, >Risch, Sichelman, and Wagner, Life After Bilski, 63 Stan. L. Rev. 1315 (2011).

    Lemley never misses a trick. The problem is that saying an invention is abstract is an extraordinary measure that should only be taken when supported by public policy and applied in the most rare of circumstances. The problem is that Lemley is trying to get abstract to be a new way of applying 103 incorporated in 101 as a matter of course. That is the problem.

  3. It would be good if the US Supreme Court could adopt the common-sense position as regards patent-eligibility that the Enlarged Appeal Board of the EPO did in case G 3/08. A computer memory is patent -eligible and does not cease to be so merely because it stores a program. Similarly a cup is patent-eligible and does not cease to be so merely because it is decorated with an image. the relevant portion of the reasons is set out below:

    “10.8.5 Following this principle, a claim to a particular kind of computer-readable medium memory with certain special properties, e.g. a Blu-Ray disk, is evidently not excluded from patentability by Articles 52(2) and (3) EPC, whether or not it is new at the relevant date. But applying the principle consistently, the claim does not have to be a special kind of memory – “A computer-readable data storage medium,” specifying no further details, has the “technical effects” of being computer-readable and of being capable of storing data. And since there is no entry in the list of Article 52(2) EPC relating to computer-readable media as such there is no requirement for a “further” effect going beyond the basic properties of such a computer-readable storage medium. In short, according to the logic of T 1173/97 the following claim is not excluded from patentability by Articles 52(2) and (3) EPC: “A computer-readable storage medium.”

    10.8.6 In the case law of the Boards of Appeal there has never been any suggestion that narrowing a claim can bring it under the exclusions of Articles 52(2) and (3) EPC, which would require weighting of features or a decision as to which features define the “essence” of the invention (cf. T 26/86, Koch & Sterzel, OJ EPO 1988, 19, Reasons, point 3.4, and T 769/92, Sohei, OJ EPO 1995, 525, Headnote 1), in contrast to e.g. the Bundespatentgericht, where such a weighing up of features has at some times been used (known by the expression “Kerntheorie”, see e.g. Ganahl, Ist die Kerntheorie wieder Aktuell?, Mitteilungen der deutschen Patentanwälte 2003, 537). Thus according to Boards of Appeal case law, since the claim, “A computer-readable storage medium,” is not excluded from patentability by Articles 52(2) and (3) EPC, neither is a claim, “A computer-readable storage medium storing computer program X,” (cf. “A cup decorated with picture X”).

    10.8.7 It might be argued that whereas “A Blu-Ray disk with program X written on it,” would escape the exclusion of Article 52(2) EPC, “A computer-readable storage medium with program X written on it,” should not. The only basis for such an argument which the Enlarged Board can envisage would be that the feature “computer-readable storage medium” loses its technical nature because it is too generic or “functionally defined”. There is however no case law known to the Enlarged Board that would support this view.”

      1. The point is that courts should not create judicial fictions that conflict with objective reality.

        A door provides a movable closure for an opening. A legislative or judicial provision that it does not conflicts with reality. As Lincoln said, calling a dog’s tail a leg does not make it into a leg. A computer memory is a machine and saying that it ceases to be a machine because it stores a program conflicts with reality. What was said by the Enlarged Board is an exposition of reality and should be as persuasive in the US as it is in Europe.

        If there are problems with the idea or the software, then 102, 103 and 112 provide the vehicles for resolving them. But if a claim recites any patent-eligible feature, then the claim as a whole should be considered patent-eligible.

        1. Good points Paul. Lourie calling saying a database has no structure does not make it so either. Actually, it is rather outrageous. I wonder how these unethical dirt dwellers image that a machine could provide the funtionality of a database with no structure? Lourie and his dirt dwellers play to the ignorance of the judiciary and masses. Obama is ignorant just like Clinton was ignorant regarding the financial markets.

          The analogy between getting rid of financial regulation and destroying our patent system are eerie. And, just think Lourie and Lemley and Stern what side that puts you on.

        2. Another conclusion might be that it does not matter whether a machine is involved.

          Re sofwtare patents it is helpful to read the comment of the (now) presiding judge of the tenth Senate of the German Federal Supreme Court, Peter Meier-beck in a footnote to a publication in GRUR: that “software patents” mostly do not really deal with software. Others have argued that software merely is a means of implementation, so that its use is just as irrelevant as the use of plastic instead of wood to build some machine. Writers (Weyand & Haase) who proposed a legal obligation to disclose source code for software patent applications were faced too with the problem that software patents are often hard to recognize – a problem they solved by requiring the applicant of a “suspect” patent pretending to to aim for a “sofwtare patent” to prove that a non-software implemenation is feasible, both technically and economically!

          No, I am not advocating unlimited patentability, I am only saying that different criteria must be decisive. I guess that 19tth century US decision show the way, notably O’Reilly v. Morse and its followers.

          1. I am not sure what your meaning is Reiner. The basis to understanding information processing is that it is processing represented information. One needs to understand the Church-Turning Thesis and the equivalence of hardware/software/firmware and the law of conservation of information.

            1. Many machines handle information in one way or another. Flook and Diehr became known als “software patent cases”, but actually they are about control engineering problems (control engineering defined as the discipline of designing systems that measure the output of a machine, compare it with a desired value, and subsequently change the parameters of the machine so that its output will approximate the desired value more closely). In both cases, actually analog information was involved. The related “mathematics” actually were laws of applied chemistry, worded in mathematical terms (and actually very simple from a mathematical point of view). I am not sure whether Chuch-Turing is of any relevance here, but I am prepared to be taught by people wh know more about theoretical information science than I do.

              The patent system is traditionally focussed on things and nervous about thoughts. You remember the mental steps doctrine? I guess the CCPA rightly decided in 1969 (Prater II) that only such processed were unpatentable if they could only be carried out by the human mind. So it is not a concern that a computer program (in source code) could also be executed by a human being, with ample time, patentce and accuracy.

              Part of the problem the tradition (now superseded) to apply for process patents for software. IMHO process patents are for processes executed by manufacturers (in particular in chemistry, originally). In trade, software is a product, and it is executed only by the user.

              For me this is all the more a reason for abstraction: an invention represents knowledge. Not all knowledge is an invention (purely scientific facts are not, for instance), but every invention represents a thougt. A trick if you like.

            2. One word that you should pay attention to Reinier:

              anthropomorphication

              Machines do not think. The mental steps doctrine falls apart when it comes to claiming machines and manufactures that are machine components.

            3. Reiner. A machine. Useful. People pay money for it. It processes information. For example, it does things like make a bank run or drive a car or diagnose tumors.

              Now, you witch hunt is saying the machine is what?

          2. Reinier,

            You may not be aware that your statement of “Another conclusion might be that it does not matter whether a machine is involved.” translates to “Just don’t pay attention to what the explicit words of Congress chose and what those words clearly mean.”

            You are advocating a complete nonsense “let the Court redefine WHATEVER approach.”

            Your spin here about plastic or wood misses the fact that a machine is still being claimed. No amount of dust kicking should change such, um, obvious fulfillment of a facet of the 101 legal requirement.

            There is too much trying too hard to reach a desired end state – clearly (as Paul points out) the means employed require a redefining of black is white. This goes even beyond the limits of what applicants may do as their own lexicographers.

            Your forced conclusion betrays you. Either you are aware of this (and continue nonetheless) or you should be aware of this by now, and still continue nonetheless. That you continue to proselytize and spin to achieve a certain end without directly admitting to the self-evident points reveals just how much you lack an objective viewpoint.

            1. Hi, my friend again!

              Oh yes, I do lack an objective viewpoint! Still some of my statements pretend to be logical conclusions based on observations …

              I don’t know what words of Congress you refer to. Firstly, I am not fundamentally bound by these words. This is not a court document but a BLOG, and it should not restrict to “positive law”.

              And still: I recall the Bilski v. Kappos debate on the “machine or transformation” test. As you may know, that test was rejected as the decisive test by the Supeme Court.

              Incidentally, the test originates eventually from Cochrane v. Deener (1877), which actually upheld a patent despite the fact that no new machine was involved, since the invention involved a transformation (of flour). This decision is still valid law, AFAIK.

              Question the relevance of a machine in a patent application, I think I have now assumed the role of a pro patent advocate, and you are the “communist” who still believes in a restriction to machines?

              Or do you think tat the presence of a machine defines patentable subject-matter?

              Well, I recall an Amicus Brief for Bilski arguing that business methods do have a physical nature, because eventually all business transactions reflect on the physical world.

              Re defining black as white vice versa: I recall the argument that every object that has a back side has a front side as well. So why don’t we call both sides the front side? The “back side” concept seems redundant.

              Have a nice weekend? In the US you still have the whole Sunday!

            2. You are surely devious in your attempts to proseltyze your belief system, but no amount of your providing kernels of truth will change the wolf body into a sheep.

              You are not pro-patent.

              You f00l no one.

            3. Some detailed comments from paying attention to the words you choose to use:

              Oh yes, I do lack an objective viewpoint! Still some of my statements pretend to be…

              “pretend” being the operative word

              I don’t know what words of Congress you refer to. Firstly, I am not fundamentally bound by these words. This is not a court document but a BLOG, and it should not restrict to ‘positive law’.

              Admission of dross, lack of tie to actual words of the pertinent law and the excuse of ‘this is a blog’ – truly pathetic and a rhetorical tools seeking to distance any OBJECTIVE comparison of legal points under discussion and the fact that we are talking about US law. Is this some type of academic objectivity? Or more to the point, a direct reflection of using “academic” as an excuse to proselytize on a different world view that you adhere to – regardless of the law as it exists.

              And still: I recall the Bilski v. Kappos debate on the “machine or transformation” test. As you may know, that test was rejected as the decisive test by the Supeme Court.

              Meaningless dust-kicking non sequitur

              Incidentally, the test originates eventually from Cochrane v. Deener (1877), which actually upheld a patent despite the fact that no new machine was involved, since the invention involved a transformation (of flour). This decision is still valid law, AFAIK.

              Meaningless dust-kicking non sequitur

              Question the relevance of a machine in a patent application, I think I have now assumed the role of a pro patent advocate, and you are the “communist” who still believes in a restriction to machines?

              Meaningless dust-kicking non sequitur – again you ignore the fact that I have supplied as to patents being personal property and seek to obscure communistic tendencies with the false statement that you are pro-patent and because I oppose your views that I am anti-patent. You attempt to spin the notion that I provide the solid argument that machines are explicitly a listed patent eligible category with some strawman argument (not even hinted at) that I somehow believe that patents are limited to machines. The level of intellectual dishonesty with such a poor rhetorical tool only shows how desperate you are becoming. Note too, that you are still not responding to the points I am making.

              Or do you think tat the presence of a machine defines patentable subject-matter?

              What kind of question is this? Are you attempting to re-write the actual words used by Congress? Oh wait, you are. As an academic, I will again remind you that such a radical re-writing of the law is not the station of the judiciary, given the US allocation of writing patent law in our constitution to the legislative branch and that any such radicalism that you are advocating clearly goes beyond any reasonable notion of ‘interpretation.’ So sorry but your excuses are still exposed as just that – excuses.

              Well, I recall an Amicus Brief for Bilski arguing that business methods do have a physical nature, because eventually all business transactions reflect on the physical world.

              Nice strawman – is this anything related to our discussion? To any point I have made?

              Re defining black as white vice versa: I recall the argument that every object that has a back side has a front side as well. So why don’t we call both sides the front side? The “back side” concept seems redundant.

              Sorry, but I cannot decipher what point you are trying to make. Black is white as a fallacy has NOTHING to do with whether an object with a front side has a back side. Somehow you are trying to equate a redefinition of a concept to be its opposite with some notion that a physical object exists in three dimensional space and has surfaces in more than one (and opposing) dimensions. This is a fail at an attempt to draw an analogy between physicality and logical definition. Pedantic gamesmanship at an extremely poor level – you are starting to flail about tremendously. Seeing as you are being trounced in the legal discussion, I see why you want to try to talk about anything else, but you are only jumping from the frying pan into the fire here.

              Have a nice weekend? In the US you still have the whole Sunday!

              Thanks! – the weekend is progressing nicely. Always love to quash an academic with misguided notions and a pretentious sense of what is objective when discussing US patent law. May I kindly ask that you clean up the shattered remnants of your attempted subversion of US patent law before you leave?

          3. Reiner, it does appear that the Europeans are lost in a tangle and cannot or will not separate wheat from chaff. They still not have totally come to grips with the fact that while a software patent may nominally be direct the software, it in reality might be directed to the business method, or to a mathematical algorithm, or to something completely mundane and ridiculous.

            MaxDrei has often said that the way the Europeans actually solve the problem is their inventive step requires a technical contribution. Perhaps that is why Europeans can live with a broad definition of eligible subject matter. But we in United States do not have any requirement that the difference between the claimed subject matter and the prior art be technical. Thus a suggestion to move the analysis from 101 to 102/103/112, which I call PUNT, essentially as an effort to win the battle in this case, the battle to be able to patent business methods, by using a procedural rule, essentially assuring the Supreme Court that if you just move the analysis to the latter sections then everything will be just fine, when it will not be just fine, and they know it. For after all, if 101/103/112 could do the proper job, we never would’ve had the patent in the present case, or the patent in Bilski, or the patent in Prometheus, or the patent Flook, etc. etc. etc. The people making such a promise know they are lying, and they should be called liars because that is what they are.

        3. Paul Cole, “If there are problems with the idea or the software, then 102, 103 and 112 provide the vehicles for resolving them.”

          No they do not, and the Supreme Court has already said so in Prometheus. For example, the question asked in §103 is whether the differences between the prior art in the claimed invention are obvious. The answer to the question does not involve whether the subject matter constituting the difference is eligible.

          §112 only asks about whether there is a written description, enablement, and whether the claims are definite. When claiming a new mathematical algorithm, or business method, How are these are not enabled simply by the statement in the claim?

          This is why the suggestion to move the analysis from 101 into the later statutes is such a pernicious argument. It’s simply an effort to patent anything and everything with no limitations whatsoever provided that the claim be nominally addressed to one of the four classes. No one in their right mind would agree to this. Rather than being a common sense approach as you suggest, it approaches lunacy.

          1. Ned,

            Which is more pernicious? Following the law as explicitly written by the branch of the government that was allocated the authority tot write patent law, or wantonly suggesting that a different branch of the government ignore a change in law that removed the authority from the judiciary to use a common law evolution approach to define what “invention” means as to the sense of what it patent eligible?

            Do you realize that what you advocate is strict lawlessness and aa disregard for the rule of law that strikes to the very constitution of this nation?

            Do you also realize that you are wrong in stating that “effort to patent anything and everything with no limitations whatsoever” as the law of 101 very much still has both the category facet and the utility facet?

            Do you realize that you are still attempting to conflate and muddy the law (and that such attempt is a poor smokescreen for importing a philosophical viewpoint)? The fact that this viewpoint is in line with your agenda yields the typical “6 is an Einstein” sheer nonsense that you peddle.

            Why do you think that no one can see this CRP for what it is? That my friend, is what is really lunacy.

            1. anon, I thought the best part of the Alice brief was their discussion of the legal basis for the exclusions. With respect to laws of nature and products of nature, these clearly could not be patented because they already existed. Even if one discovered a law of nature or product nature, such would not be a new “machine, process, manufacture, or composition.”

              But what is the legal basis for excluding Math or Fundamental Economic Principles? They never articulated any basis, not really, not under the statutes and not under the Constitution. The Supreme Court cannot simply dismiss claims program computers that calculate math or calculate fundamental economic principles as abstract, because they are not abstract, and that is the central problem we have in figuring out Bilski, even perhaps Benson. A machine is physical. A machine is concrete. A machine is tangible. By any measure a machine is not abstract.

              But if the subject matter itself is excluded, then the form of the claim becomes irrelevant. What did the Supreme Court intend to do in Bilski? Did they intend to exclude fundamental economic principles? Or, did they only intend to exclude method claims to such principles while leaving open such claims when they are phrased in terms programmed computers?

              If they answer this question in this case to say that “fundamental economic principles” are excluded, they must provide a legal basis for saying so. Abstract will not cut it, unless they define that term in some comprehensible manner that everyone can understand and link it in to the statutes or Constitution.

        4. ” and saying that it ceases to be a machine because it stores a program conflicts with reality”

          Nobody ever says that it “ceases to be a machine”. Je sus how do you re res always think that is what is being said? Nobody has ever said that in a decision ever. It’s just a red herring your mind brain is bringing up for you to think about.

          1. Nobody ever says it ‘ceases to be a machine’.

            That’s just it 6 – that is exactly what is happening (yes, I notice the quotes you oddly insert around the phrase). We just had a case where a phone was not considered to be a machine.

            And what exactly does “our mind brain is bringing up for you to think about mean?

            1. We just had a case where a phone was not considered to be a machine.

              Really? Show everyone where the court made that finding of fact, as you just stated it. I’m pretty sure the actual holding of the case is something rather different. Did you call up your clients who make new phones and tell them that all phones are ineligible?

              Also, what about that Myriad case you claim to have such an intimate understanding of? I don’t recall you dumping your popcorn when they held that the novel, man-made chemicals claimed in that case (a fact recognized expressly by the Supreme Court) were not eligible compositions. Are you now arguing that “DNA was not considered to be a composition” in Myriad?

              Or do you only pretend to be st00pit when everything else fails you? Just kidding. I know you’re not pretending.

            2. You of course realize that the Myriad case was not a case concerning the category aspect of 101, right Malcolm?

              Come man, 30,000 plus mewling words of QQ after the case and you still are clueless?

    1. I must be noted in that the “G 3/08″ the EPO Enlarged Board of Appeal did not make a decision, there merely refrained from rejection the EPO Technical Board of Appeal approach in most (not all) of its decisions. And they said that making a true decisions here would be the task of the legislator. I guess that is true (also becaouse the boards of appeal depende on the EPO and are not a true court), the only problem is that legislators typically fail to improve the “subject-matter” provisions, Art. 52 EPC and 35 USC § 101. The “computer implemented invention” directive proposal basicallt was a try to impose EPO methodology onto the patent courts in the EPO member states that happen to be EU member states as well (most are, not all), buit it was rejected, as you know. That was mainly due to activists who prompted for so many amendments that even the proponents of the original proposal pulled the emergecy break, fearing that the situation would worsen rather than improve.

      Meanwhile, even German critics have noted that the EPO approach violate the EPC. This is a severe complaint in view of the German legal tradition.

      The problem is that patent agents and attorneys have learned to cope with the EPO approach and its followers in the natinonal patent courts, whereas the law is so opaque to polity makers (and even more for politicians) that they are unable to improve it. It is the patent incrowd who determines the law. I don’t say they are dishonest or anything like that, but they are “captive”, and indoctrinated.

      British courts repeatedly noted the inconsistencies of the EPO approach, but a German writer questions their intelligence if they do not understand “EPO law” (Alexander Bulling). He ignores the possibility that this law is not understandable!

      Fortunately, I read both English and German (neither is my native language). It is very helpful to read the German perspective as well.

      1. Lovely AOOTWMD with the others must be indoctrinated line.

        And once agin, while reading these other foreign sovereign takes, lets be clear that US law (the focus here) is not dependent on WHATEVER those foreign takes are.

        As to being understandable, here is a simple one: machines are machines, and manufactures are manufactures. Software is a manufacture and machine component.

        Do you understand that (a simple yes/no question that you should be able to answer in a simple and honest manner sans spin).

    2. It would be good if the US Supreme Court could adopt the common-sense position as regards patent-eligibility that the Enlarged Appeal Board of the EPO did in case G 3/08. A computer memory is patent -eligible and does not cease to be so merely because it stores a program. Similarly a cup is patent-eligible and does not cease to be so merely because it is decorated with an image.

      “Similarly, a piece of paper is patent eligible and does not cease to be so merely because it is decorated with words.”

      There really is nothing more “common sensical” about this approach as compared to any other approach that simply recognizes/identifies what the problem is and how to address it. Such recognition/identification takes into account fully the fact that drafters will attempt to draft around any kindergarten-level rule that kindergarten-level minds are inclined to dream up (pay attention, Gene and anon).

      Information and images are not patent eligible. Trying to “get around” that basic fact of life by playing word games (“it’s not a patent on David Kappos’ face — it’s a patent on a old but really soft piece of paper with David Kappos’ face printed on it!”) is not permitted.

      Tune in next time when we tell you about method claims and how to examine them, for the 10 billionth time.

      1. Well Malcolm, maybe you can share with Mr. Cole your stellar knowledge of the exceptions to the printed matter doctrine – you know, the controlling law that you volunteered an admission against interest as to knowing? the same exception to the judicial doctrine that provides the fact that software is not mere words because of the functional relationship – the same exception that provides the legal path to software is a manufacture and machine component that meets the category aspect of 101.

        Say something, Malcolm. Say something honest.

      2. Without question, Malcolm, a sheet of paper is a manufacture. Those in the paper industry would be the first to tell you that making it is a non-trivial exercise. In Japan it is also something of an art form.

        However, a sheet of paper that is already marketed is not novel. It does not become novel even with the distinctive face of David Kappos printed on it because mere graphic design without technical function does not make any contribution in the useful arts. The EPO has learned this useful analysis and it was approved in G 3/08 PRESIDENT’s REFERENCE. However, this useful method of analysis was thrown away by the Supreme Court in Prometheus on the ground that it involved the fiction that the ineligible features were part of the prior art. As I understand it this is not the position in Europe: they are not prior art but contribute nothing to the technical purposes that underlie the patent system.

        The well-researched opinion of Justice Stevens in Bilski deserves review and respect.

        1. So close Paul, and yet you still have critical errors in your understanding of US jurisprudence.

          One statement of yours in particular is routinely twisted by Malcolm: “mere graphic design without technical function does not make any contribution in the useful arts.

          The exceptions to the printed matter doctrine cover this (albeit in the US version function – not technical function – is the proper understanding).

          As any reader of this blog any duration knows, this is a topic that Malcolm routinely FAILS due to his proclivity for intellectual dishonesty. Yes, he does know the controlling law and what that law means and No, he refuses to adhere to the law or the understanding of that law. Why? easy: it wrecks his agenda and makes him sad.

          But Paul, you are not correct in that this was thrown away in Prometheus. That case was an aberration and is limited to its facts because the author of that case explicitly stated that he was NOT changing the case most on point (Diehr). That Prometheus itself cannot be squared with the unchanging law is an unfortunate fact in our history, but since the Court said it was not changing anything, nothing is thrown away.

          Another major mistake you make is to laud the Stevens dissent dressed as concurrence in Bilski. The opinion, while long (and tedious) is in fact not well researched, given that the overall major thrust is simply wrong and would require both an explicit rewriting of the words of Congress (which is the primary reason Stevens lost his position as decision majority writer) and a purposeful ignoring of a vast and long history of actual patent grants to business methods through our the USPTO history. Review? Yes. Respect? No. Stevens had warned of the temptation to use 101 as a nose of wax, and then in Bilski succumbed to that very temptation in his attempt to bookend his career on the bench in a very finger in the nose of wax manner. There is no respect to be had for that.

    3. In “G 3/08″, the EPO Enlarged Board of Appeal did not solve the problem of defining the limits of sofwtare patentability. Note that it was invoked by the EPO President in a special procedure (Art. 112 EPC) which allows the President to do so if (regular, technical) Board of Appeal case law is inconsistent. The EBA established that this case law is not inconsistent, apart from a rare exception.

      Consistency of Board of Appeal decisions with each other is one thing, whether they are consistent with the statute is another thing – beyond the competence of the EBA, which actually suggested that perhaps time for the legislator to take over (who will be reluctant to do so after the demise of the EU “computer implemented inventions” directive proposal in 2005).

      Actually several writers – and Briitish judges! – complain that the EPO approach violates the EPC (Von Hellfeld, GRUR Int 2008, 1007, Klaiber,GRUR 2010, 561 – both in German, sorry).

      1. The Enlarged Appeal Board is the most senior judicial entity in the EPO, and its views command respect even where the outcome is to refuse a reference. The views that I have quoted stand on their own and accord with common sense. Granted the EPO has no final answer to the difficult question of software patentability but a workable system has evolved which the Enlarged Board approved of.

        1. Yes, you may agree with their observations.

          But the EBA was invoked because of alleged inconsistencies between decisions of (regular, technical) boards of appeal, which is a condition for such an appeal under Art. 112 EPC. And they found (almost) no inconsistencies between those decisions.

          Frankly, one can not conclude that they approved the EPO approach, they just said that decisions are not inconsistent. meanwhile, the EPO approach departs from the EPC, essentially by combining the “subject matter” test with the inventive step test, a common mistake also made in US law – and identified as incorrect. The incorrectness of this approach also becomes apparent from the apparent need to introduce concepts like the “further technical effect” that IMNSHO prove the incorrectness or the approach “by contradiction”. Note that Birish courts always were and AFAIK still are on the EPO approach.

          I do not exactly know to what extent US courts can “make” law, but truly departing from the statute is a serious problem in a German tradition.

          And the EBA is not some sort of “European Supreme Court” for patents. The Boards of Appeal are part of the EPO, so they are not an independent judicial instance. People on these boards are called “members” of the boards of appeal, not judges. The EPO is working already for a long time to improve the independence of the Boards of Apepal , which implicitly admits that there is a need for improvement. Most of the EBA members are judges from the member states. Perhaps that gives them some “informal authority”, but courts in the member statements still may adopt thheir own approach, although there is both in the UK and Germany “internal” case law saying that departing from decisions of the EPO (or other member states) should be appropriately motivated.

          Independence is not just a formality here: a common complaint of patent critics is that judges specialized in patents tend to be pro-patent. It is not difficult to guess the mechanisms.

          The CAFC is a strong example. I was told the CAFC has the ambition to be a “supreme court for patents”, so it should be a disappointment for them that the “real” Supreme Court gets involved in so many of their decisions on “patentable subect mater” lately. Needless to say, the Supreme Court has the advantage of having a wider scope and not just being specialised in patents.

  4. The briefs suggest there are three overall approach for determining whether a claim recites eligible subject matter: EXCLUSION, INCLUSION, and PUNT (claim as a whole). The approaches can be summarized as follows:

    EXCLUSION

    This approach seeks to determine whether the claim includes ineligible subject matter such as a law of nature, product nature, mathematics, or “fundamental economic principles” (Bilski). Next, the court determines whether enough otherwise eligible subject matter has been added, implicitly to make the claim an application of the ineligible subject matter rather than a claim to the ineligible subject matter. Inherently this approach requires “dissection” as a step.

    INCLUSION

    This approach looks to whether the claim includes eligible subject matter by looking at the result of the claim. Such a test includes the MOT, or perhaps the “concrete, and tangible” test of Alappat, as properly understood to be limited to physical tangibility. Thus whether the claim includes ineligible subject matter is not important. This approach does not require dissection.

    PUNT (claim as a whole)

    This approach looks to whether the claim is nominally directed to eligible subject matter and then moves the determination of patentability onto 102/103/112. This is somewhat the approach of the Europeans, but they add to the “inventive step” determination whether the inventive step is technological. Most of the American proponents of the claim as a whole approach have no requirement that the inventive step be technological.

    Up until this point in time, the Supreme Court has taken the first approach, the exclusion approach.

    1. A “fundamental” question the Supreme does not clearly answer is why mathematics and “fundamental economic principles” are excluded.

      1. The basic idea of patents to reward brainwork, and the publication of its results, with an exclusive right that (hopefully) allows the owner to recoup his investments.

        This perception gives no reason to exclude the results of basic scientific work, not mathematics. The only remaing (legal) reason is tradition, case law, and the very confusing article 52 EPC (with a list of excluded subject-matter which is not really excluded but only “as such”)

        My take is to start from the other end: the fundamental freedom of ideas, just with exceptions if really needed to control competition. For some of you this may be blasphemy, but this starting point does explain a lot.

        And for those of you who sill believe that I am a “communist”: this take is similar to the take of the British government in 1623 in its “Statute of Monopolies”, which actually strives to control the uncontrolled growth of “monopolies” at the time!

        It is very intersting to read a book on the legal protection of the results of scientific research by Beier & Straus (1982, in German). When WIPO was established, it was give the task also to care for this type of protection. Many schemes were devised, similar to patent systems but (attempting to) adapt to the specific needs in this field.
        All of them failed!

        A simple reason why “property rights” for the results of scientific research not work, is that the income from such a right would be very uncertain, and may only come long after the death of the researcher. “Modern” science still largely depends on mathematics that was developed from the 17th century (Enlightment). Computers do not replace mathematics, they only help to make practical calculations. On the other hand, a lucky researcher would become extremely rich still in his (or her) lifetime.

        These observations call to revisit the economic concept of “public rights”. It should be emphasized that this is not a political notion, but rather based on the basic observation that “appropriation” sometimes is impossible, or more costly than the benefits. The typical example are is an army defending a country. Economists debated a long time whether light-towers constitute a public good. And basic science is a public good.

        A topical example is the development of nuclear enery from atomic fusion. It is a long-time ambition to mimic the processes of the sun on earth, in a controlled manner (not just in a hydrogen bomb). While thereoticians can calculate precisely the amount to enery that can be produced from a single liter of water (the same as 130 liter gasonline), scientists expect that it will take several decades mote (see http://www.iter.org). SO this type must be funded from public means. Not by patents, or something like that.

        And if the sceintists are succesful one day, we no longer depend on Russian gas in Europe, and on Vladimir Putin! But now I am getting off-topic.

        1. Reinier,

          You are again engaging in the half-truth propaganda machine.

          The basic idea of patents to reward brainwork, and the publication of its results, with an exclusive right that (hopefully) allows the owner to recoup his investments. is only partially true and is misleading to the point that the patent system is NOT, nor ever has been a “but-for” system. Since you have been informed of this, I can only take your continued posts to mislead as intentional dissembling.

          What will it take for you to realize that the spotlight has been shown on this deception? That you f00l no one with such spin?

          1. I am aware that the US Constitution defines the purpose of patents as “[t]o promote the progress of science and useful arts”. The famous Machlup described the (four) well-known justification theories (and he disagrees with all of them). Still all pertinent economic publications assume that the mechanism fostering the constitutional purpose is to reward the inventor, for making inventions by investing in R&D, and for publishing them.

            Perhaps we agree for once, since I believe that the perception that patents are a means to allwo inventors to make money is false. At best, it is a means to the end.

            1. Your reply to my post has nothing to do with my post. – This response of yours in response to my calling attention to the fallacy of “but-for” merely spews more kernels of truth but fails to address the point that the patent system is not a “but-for” system.

              Thanks for being aware of the Constitution. Now, join the conversation on the merits without the dodges.

        2. Pure (and debunked and simply not accepted) fallacy: “A simple reason why “property rights” for the results of scientific research not work, is that the income from such a right would be very uncertain, and may only come long after the death of the researcher.

          Your um, ‘objectivity’ and peddling of a different belief system (much more aligned with natural rights that are NOT alienable – a critical miss when it comes to US patent law) is your wolf body showing through the thin veneer of the sheepskin of ‘academic’ that you clothe yourself in.

          1. Perhaps as a (former) physicist I have a little more background than you have, but I am aware of many instances where it took many decades or even centuries before purely scientific findings were ready for commercial exploitation.

            In my country there is the very succesful chip-making-machine-maker ASML. They urged politicians not to neglect fundamental science, since their business is based eventually on 80 year old science, called “quantum theory”. And you may be aware that quantum theory stems from failed attempts to apply 19th century electromagnetic theory on an atomic scale (which still does not mean that this theory is useless – it was essential to spawn quantum theory).

            If you are interested in failed attemtps to establish patent-like rights for scientists, read “Friedrich-Karl Beier & Joseph Straus, ‘Der Schutz Wissenschaftlicher Entdeckungen (AIPPI Q61 “Protection of Scientific Discoveries”)’, 85 GRUR 1983, p. 100-103.”

            Since you are so exceptionally fanatic, I assume that you are a german!

            1. Your reply to my post has nothing to do with my post. Your feeble attempt at trying to regain credibility (Since I was a mighty physicist I know more than you – NOT) does not work. To the immediate point that you stumble over, invention is not the same as innovation, commercial exploitation is not required to earn a patent.

              Are you even aware of yourself and your radical views? I suggest that instead of your ever fawning wolf in sheep’s clothing attempts to corrupt the patent system and replace it with your world view, that you first seek to truly objectively understand that system.

              Your odd meander into one scientific theory failing as ‘essential’ to its replacement is also a bit odd as this too has nothing to do with our conversation.

              Lastly, while it may be commonplace in Europe to engage in racist posting with no hesitation, the alignment of personal traits such as “exceptionally fanatic” with a race (cloaked as it were with the nation label) is not the sign of a respected person – or even an academic and really has no place here (and no, this is not an attack on you – it is merely an accurate observation and friendly note to you since your culture may be different).

              By the way, your dodge of the critical element of US patent law (personal property fully alienable) is noted.

        3. Purely laugh out loud sheepskin: “It should be emphasized that this is not a political notion

          A rose by any other name still smells the same.

        4. Reiner, you point out, I think, that ideas cannot be protected — at least not effectively. The effort would be futile.

          In the US, the patenting of an idea would raise serious 1st Amendment problems. I note the ACLU has filed a brief here, but it is not yet posted for us to read. But I suspect they make this point.

          Then you point out that Math is a fundamental tool of research and it would be inappropriate to protect new developments. Benson said this as well.

          But now we switch to “fundamental economic principles.” Is the argument here the same?

          Finally, where in the constitution of the US are fundamental tools excluded? Where in 101?

          It is this question that many here ask. Where is the legal authority?

  5. You know what is missing from all of this discussion:

    WHAT IS THE DIFFERENCE BETWEEN INFORMATION PROCESSING PATENTS AND OTHER PATENTS?

    Answer: NOTHING.

    That is the great lie that is being foisted on us here. And, those of us that do real patent prosecution for a living know that. I do mechanical, bio, and information processing. The mechanical inventions can be thought of as an idea or abstract concept. There are many, many known solutions that need functional language to cover the scope of the invention. I just recently wrote an application for a hydraulic system, DNA analyzer, a large automation machine, and a computer software system. No difference in the claiming. No difference in any of them.

    Everyone that does real patent prosecution knows this.

    All comes down to scope of enablement viewed by one skilled in the art (NOT a ridiculous and ignorant person like Lourie or Lemley.)

    1. The truth (no matter how painful for some) that lies in the (easily misconstrued hyperbole) of NWPA’s posts can be found in the plain words of the statute.

      When all else fails, read those plain words.

      101 has separate facets.
      – 101 has a category facet.
      – 101 has a utility facet.

      Ask yourself plainly, why is the category facet being treated as a nose of wax and being twisted and mashed so viciously? The category facet is meant to be forward looking and a wide open gate.

      Ask yourself plainly, why is the discussion of utility NOT being directly dealt with?

      Clearly, the philosophical agenda underfoot is an attempt to deny patent eligibility to entire categories of invention that rests in conflation and obscuring the law instead of an attempt at being clear. Utility – on its own – simply cannot be denied.

      Why the conflation and obscuring of simple law? This is easily seen to be due to that fact that any clear and rational approach would not achieve the desired ends.

      The category aspect will not work by itself for, um, obvious reasons: the categories are meant to be forward looking and welcoming because the nature of innovation is to embrace the unknown. To mash that nose is to risk the wrecking of the patent system in toto (and keep in mind that certain factions of both the Left and the Right would like nothing less).

      The utility aspect likewise will not work by itself for, um, obvious reasons: no one can deny the utility brought about by innovation in business methods and software. The duplicity is easily seen by the refusal to not partake in the bounty of the very innovations that certain people seek to deny protection to. Instead of turning the spotlight on this hypocrisy, rhetoric is spewed in the typical FUD propaganda techniques to obscure the plain and inconvenient truth: these very types of innovation are at the forefront of what makes a modern advanced society – the very purpose of the patent system.

      It is a ‘strange animal’ indeed that the plain truth is desired to be obscured behind so much rhetoric and smoke and dust.

      1. Hyperbole? I was clearly understating the case. You know, anon, all the fancy words and complex arguments in the world are not very interesting when devoid from reality. The problem with this debate is the fundamental ignorance of the judiciary regarding science and technology. The law should only be as complicated as need be to deal with patent law.

        Simply stick to real inventions and real claim language that maps to real embodiments and all makes sense. The Lemleys are building artifices to tear down the system.

        Scope of enablement as viewed by one skilled in the art is the alpha and omega of patent law. And, just think the dirt dweller Lemley has done everything he can to take this away from patent law.

        1. And dirt dwellers, when viewed in this light, it is very clear that information processing machines are inventions and that the language used to describe them is appropriate.

          Simply shameful the people that are involved in this debate. Lemley, Posner, Lourie, Stern, etc. You intentionally play on people’s ignorance.

          Hey, Lourie, why don’t you spend some more time on the paper and pencil test when the Church-Turing Thesis renders it absurd. That makes you as bad as a medieval inquisitor—dirt dweller. What a joke that a person in your position would be so ignorant of information processing and yet believe you can be the leader in understanding it. What a joke you are. Power you have. Destructive you are. But, a dirt dwelling joke you are too.

        2. “The problem with this debate is the fundamental ignorance of the judiciary regarding science and technology. ”

          I agree good sir. We wouldn’t have software patents or business method patents if not for their fundamental ignorance regarding science and technology.

      2. I completely agree about the nose of wax.

        The statute clearly provides that a machine is patent eligible. A programmed computer system is a machine. Therefore a programmed computer system is patent-eligible. It does not take multi-page briefs to the Supreme Court to reach that conclusion, merely elementary logic such as is taught to school-children.

        More attention should be given than presently the case to the legitimacy of judicial exceptions to the statute. Where the legislature has enacted a statute, it should not be open to a court to undermine the clear meaning of that statute and thwart the intention of the legislature. It appears in many recent decisions that the Supreme Court is doing precisely that.

        It may or may not be good for gene sequences to be patent eligible. In Europe the answer was implicit in the wording of the EPC and was confirmed by an EU directive. It took some 10 years for the debate that resulted in that directive to reach a conclusion i.e. the current position in Europe was reached following a lengthy deliberative process resulting in considered legislation. It was not reached as a result of dicta from a high-level appellate court. Naked judicial legislation is liable to have unintended and not necessarily benign consequences, amongst other things because judges and especially non-specialist judges cannot be subject to the range of views and the level of scrutiny that occurs in a legislative process. The ban on patenting genetic sequences in Myriad was not the outcome of a legislative process and was reached by autocratic, not democratic, means. In the US the statute that was arrived at by careful legislative process is 35 USC enacted by Congress in 1952 and it is the function of the courts, including the Supreme Court, to promote and interpret and not to subvert or modify that statute.

        As President Lincoln rightly pointed out in his first inaugural address, the role of courts, including high appellate courts, is to decide the cases that the parties in dispute put before them. Sometimes in deciding such issues they may need to identify new principles in the common law (which by fiction have always existed but have only now come to light) which are necessary or helpful in deciding the issue. But the development of the law should be gradual and on a case-by-case basis. As president Lincoln warned: “At the same time, the candid citizen must confess that if the policy of the Government upon vital questions affecting the whole people is to be irrevocably fixed by decisions of the Supreme Court, the instant they are made in ordinary litigation between parties in personal actions the people will have ceased to be their own rulers, having to that extent practically resigned their Government into the hands of that eminent tribunal.” It follows that the Supreme Court should prudently decide the issue that the parties have placed before it applying the law as it exists and in the case of interpretation of statute with minimal deviation from the legislative intent. Those who urge a wholesale review of the law and broad new statements of principle are urging the Supreme Court into the very non-democratic approach that President Lincoln warned against. It is perfectly proper to interpret the constitution or statute because these are existing pieces of legislation and the interpretation of legislation is within the proper duties of a court. But substituting its own extra-judicial exceptions to the explicit words of the statute is not.

        Those lobbyists who are hoping for broad sweeping generalizations of extra-judicial exceptions to statute, not justified either under 35 USC or under the constitutional clause that permits it, are not promoting either good law or the democratic process but their reverse.

            1. Yes, Paul, 23.

              Your approach would simply defer the analysis of inventive step and technical effect to 103. I think this is equivalent of the approach currently undertaken by the US Supreme Court under 101.

              But, I do not see you arguing for any limitations on 103. Any difference, even a non technical difference, is “eligible” in your approach, and this is the reason it will not be adopted in the US.

        1. “a programmed computer system is patent-eligible”, but software (e.g. programs) are not claiming computer systems- if someone wants to patent a computer, with or without a program among the claims, that certainly should be eligible. You shouldn’t have hundreds of thousands of patentees claiming the same computer….

          1. Marty engages in the fallacy that software simply does not matter.

            This is plainly wrong in fact.
            This is plainly wrong in law.

            Further, this is plainly wrong in policy.

            There are no tables to pound for poor Marty.

            There is plenty of sand though.

            1. And nobody ever gets railroaded by the LAW. As if the LAW is never wrong. And the fact is, in 1952 Congress did not know what software was or would be, but they knew what written expression was, and yet they do not allow one to patent motion pictures- even novel, and useful ones (like training films)….

              Tell it to this Shwshanked lady anon:

              link to cnn.com

            2. You do realize that your appeal to the written exception is a clear fail, given that the law which you so despise has recognized an exception to the written matter doctrine, right Marty?

              You are going to have to come up with some other ‘hook’ than “the law sucks” – that hook just does not work.

    2. “WHAT IS THE DIFFERENCE BETWEEN INFORMATION PROCESSING PATENTS AND OTHER PATENTS?”

      Wait wait wait, I think I know this one!

      One of them is for information processing patents and the other is for something other than information processing!

      What did I win on this gameshow?!?!!?!?!?!?!

    3. “Answer: NOTHING.

      That is the great lie that is being foisted on us here.”

      I surely agree with you there!

      “No difference in the claiming. No difference in any of them.”

      That’s kind of your fault.

    4. Night, No difference in claiming. referencing a hydraulic system, a DNA analyzer, a large automation machine, and a computer software system.

      I suspect, then, you are using functional claiming in every case, because if you were to claim structure, I guarantee that there is a difference in structure between a physical machine and a number.

  6. “One isn’t likely to claim an animal behavior now is one bro?”

    Nope. That might be the final frontier in patenting! It will take an especially ret arded person to attempt to patent that! But hey, it could happen! Once genetic engineering gets underway enough and we start making designer pets I see no reason why someone might not eventually start regarding the engineered pets as “manufactures” and animal behaviors of the engineered animals to be “inventions”. Take the ability of those special cats they breed now that can jump 9 feet or whatever into the air. Now suppose they make a dog through artificial means that can do the same.

    “In any event, said behavior would be naturally occurring and is therefore a product of nature.”

    Maybe under your definition of “product” of nature. But I’m pretty sure that term term of art came about to delineate actual “products” from other things that happen in nature.

        1. LOL – seriously 6? You are not getting the tie to the effective claiming of a natural process for plants and the Monsanto seed case?

          My, you are thick (and that is not a compliment).

            1. what tie?

              LOL – At least try to engage your brain and think a little on it 6. What possible plant behavior would be implicated in the Monsanto v Bowman case?

              Try.

              Just a little.

  7. DC Notably, in the most recent patent law oral arguments on fee-shifting, Justice Roberts arguably suggested that patents did not create any first amendment concerns.

    I don’t think that’s accurate but I don’t recall the exact quote. I do recall Roberts noting limiting patent lawsuits and fee-shifting doesn’t create first amendment concerns.

    Every Justice has the requisite number of brain cells to see that patent claims are certainly capable of presenting First Amendment issues, which is the ACLU’s point. For instance, I claim “A method of communicating information, wherein said information is [insert non-obvious, useful information], comprising using one’s mouth and vocal cords to communicate said information to another person.”

    I’m pretty sure there is a First Amendment issue there. You can’t use patents to declare ownership of information that you have disseminated to the public. That’s what Prometheus tried to do with their claims. They got hammered and this is another reason why (1) Mayo will never, ever be overturned and (2) courts, legislators and the public need to be diligent about blocking all attempts of companies and individuals to control information content with patents because those companies and individuals are never going to stop trying to do that. And by “content”, I refer to abstract generic descriptions of information (e.g., “copy-protected” information or “contractual information”) in addition to specific information (gene X correlates with disease Y).

    1. Malcolm, I think Roberts does not believe that patents pose any problems with respect to the First Amendment because he assumes that patents cannot cover an idea.

    2. “You can’t use patents to declare ownership of information that you have disseminated to the public.”

      You can’t use copyright for that either, in the USA. In Europe you can in a limited way.

      It’s a real problem. Most of the supposed advances in automated control, speech recognition, robotic operation, and self-driving software in the past decade depend more on gigantic databases and the techniques of collecting them than on software per se.

      Since processing the databases is essential and leaves little trace of exactly what data you used, it’s very difficult to trace or prove use of your data by someone else. There’s no tangible object to steal or recover. Patents aren’t going to start covering information explicitly — unless the CAFC somehow manages to escape Supreme Court supervision. Copyright isn’t effective even where it has been bent to cover databases.

      So all the essential databases that drive modern advances in computer operations and programming are trade secrets. There’s no way to get the companies that have them to share with the public, even if they could get IP rights.

      For now, I’d suggest public science research subsidies should promote more open database collection. Antitrust rules should encourage cooperation in assembling databases so operating companies can share the effort for the common good.

      Google, Apple, Garmin, Mapquest, NavTeq, Nokia/Microsoft and others have built huge map databases of the world. As smartphones and the internet have prospered those map databases have become more valuable. Better systematic information about humans and the world have given us great guidance about how and where to go. But the data is proprietary and companies with new ideas about mapping were shut out. A decade ago I managed to get enough data to run a citywide project with complicated mapping and organized data collection for an important organizing campaign aimed at a couple hundred thousand individuals, but good map data was always a problem. (Opinion and demographic data was expensive, too.)

      Today the Open Street Map project would have been essential in making that project easier. Companies and people cooperate to collect and share the same data that Apple, Nokia, Google, &c have proprietary versions of.

      So maybe there is progress. Still, computational database sharing is an important issue for society and will get much more important. The First Amendment and IP law are likely to be under further pressure as people propose policies to deal with it.

      1. Better systematic information about humans and the world have given us great guidance about how and where to go. But the data is proprietary

        Like the formula for “coca cola” is proprietary, which is to say: not very. Use “data” at your leisure, that’s a good rule.

  8. MS: There is widespread revulsion to patenting ideas- the ACLU brief touches on the threat to freedom that doing so would represent. Business methods, per se, are ideas. The notion that someone could patent “ladies night” at the local pub, even if they come up with it first, does not sit right to many people in an economy built on capitalism and competition, and the patent laws, as currently construed, do not directly address the question. The patent-eligibility of business methods really is a political question as much as a legal question, separate from the patent-eligibility of software.

    If “ladies night” is implemented by a novel software application, does that change things? Are both the method and the software “abstract ideas”?

    Someone should ask the Supreme Court this very question. Seriously. I’d like to hear Breyer’s thoughts, at least.

    1. No, but both the method and the software are useful only for sex discrimination , which is illegal, and therefore are deemed not useful are not patentable for that reason.

      1. Les sex discrimination is absolutely legal. I may cast only women for roles in my Broadway play that are written for women. I may hire only women dancers at my Gentlemen’s club. Its known as BFOQ- Google it.

        1. You can’t charge women more rent than men for the same apartment. Likewise, you can’t charge men more for drinks than you charge women.

      2. Moreover, the fact that something is illegal does not render it non-useful. A patent is a right to exclude, not an affirmative right to produce. The fact that it results in double exclusion to others (and the patentee himself cannot perform) is irrelevant to whether it is actually useful.

        1. Not sure I get what you are trying to say, Random.

          If the patentee cannot use it (and no one else can use it), then that is highly relevant to whether any actual use can be had.

          Are you saying that the possibility of a use that cannot be actualized legally is sustainable as a legal use?

  9. One factor that may cloud my judgment in this case involves my undergraduate studies at Princeton. While my major was Mechanical Engineering, I also received a certificate in the field of Engineering Management Systems and completed the coursework for a certificate in Applied Mathematics.

    The Engineering Management curriculum was basically a set of courses that used engineering tools and reasoning to design better business decision making systems. Thus, the field should have been called: Engineering of Management Systems.

    In our various courses, we thought through dozens of different business related problems and proposed various solutions and computer models to address the issues. As I recall, there were no problems where one solution was preemptively the best. Rather, every solution had trade-offs along a variety of axes such as complexity to build, computational speed, accuracy, and risk-tolerance. It turns out that these are roughly the same issues that every engineer deals with.

    That background may be what drives my initial thoughts that particular solution to a business problem is quite unlikely to be preemptive, in that other solutions to that same problem are available to be solved by other business engineers.

    1. Ahmen.

      And even if a claimed solution did preempt all solutions to a particular problem, so what? That’s what patents do, they preempt solutions to problems. In some cases, they preempt all solutions even though the claims are very narrow, because the claimed narrow solution is the only solution, or at least the only KNOWN solution.

      That doesn’t and shouldn’t make the invention unpatentable. It should make it doubly patentable. That’s what we want to promote. Solutions to as yet unsolved problems.

      1. “And even if a claimed solution did preempt all solutions to a particular problem, so what? That’s what patents do, they preempt solutions to problems.”

        I suspect this line of reasoning is precisely wrong. A claim to “solving a problem” would necessarily require the inventor to prove that he is in possession of every possible solution. That’s a tough burden to carry – to claim you’re the first (103) and last (112) word on an issue. There’s a qualitative difference between saying “I have a solution” or “I have a range of solutions” to “I have every solution.”

        “because the claimed narrow solution is the only solution, or at least the only KNOWN solution.”

        And there’s your admitted 112 failure.

        1. You are mistaken.

          The claim is to:

          A method of solving problem RG comprising:
          doing A;
          doing B;
          doing C; and
          doing D, wherein A, B, C and D are described broadly enough to cause MM to whine and gnash his teeth, indicating the inventor had the broad invention and that any sub-embodiment of A, B, C and D will do the trick, the invention being in the never been done before combination of A, B, C and D and wherein the specification gives a couple examples, including the preferred embodiment, and the dependent claims recite a couple of embodiments for each of A, B, C and D.

          112, complied with.

          1. And, Les, one could argue the claims in Bilski and the claims here complied with 112 — a series of definite steps that defined a process, not a result.

            “Principle in the abstract” is a way of describing undue breadth under 112. “The notion of undue breadth in the claims may be consistent with the proscription of claims directed merely to effects or results. See O’Reilly v. Morse, supra.” Application of Tarczy-Hornoch, 397 F.2d 856 (C.C.P.A. 1968). link to scholar.google.com

            Under the cases that stem from Morse, then a process defined by a series of definite steps is eligible unless there is some other reason to exclude it from patentability.

            That is why I think all that discussion in Benson and Flook about math being a fundamental tool of scientific research and technical progress helps explain the result in those cases.

            If there is a problem with the claims in Bilski and Alice, it has not to do with the “principle in the abstract” problem of Morse. It has to do with some exclusion of something that cannot be the subject of a patent at all.

            1. Indeed, one could so argue, and I do.

              Bilski, Morse, Benson and Flook were all wrongly decided or at least wrongly justified and have left us with a legacy of nonsensical and contradictory rulings and justifications.

            2. Les, I hear you.

              The claims in Benson and Flook were process claims. They produced new and useful results. They were not abstract under Morse. They were not mental steps. But, nevertheless, they were excluded.

              Why? Never adequately explained.

              Obviously, once they were excluded, insignificant extra-solution activity could not save such claims.

            3. The mental steps doctrine is a confusing one, and not very relevant. Having said that, both Benson and Flook could be qualified as “mental steps”. For the (ir)relevance of this observation, see In re Prater II, CCPA 1969, which said that “mental steps” are merely not patentable if they can ONLY be accomplished by a human.

              In german case law there is an intersting exampel of a true mental steps case, about a computer program test method. It ses a tool that is not new at alle, and it is indeed a procedure to be excuted by a huan, the programmer.

    2. Prof. Crouch,

      You misspelled “may inform your judgment.”

      Surely you studied Demming.
      Surely the items you studied easily fall into any notion of the Useful Arts.

    3. Using engineering tools and reasoning to do x that is not an enginnering field does not make what you are doing “engineering”, much less a whole new branch of “engineering”. Tomwordery you or others like to play with words does not change what is occurring D.

      1. LOL – so tell us RQ/HD acolyte, what does make an engineering field?

        (keep in mind that patent law or course covers more than just engineering fields)

        1. “LOL – so tell us RQ/HD acolyte, what does make an engineering field?”

          The same thing as has made an engineering field in the past: engineering. Not just using “engineering ‘tools'” and “reasoning”. Actually doing engineering.

          1. Lovely to watch you spin in your little circles there 6.

            So tell me, since it is ‘engineering’ that makes an engineering field, what is ‘engineering?’

            1. 6, (again) try to engage your brain before you post.

              Funny how you have such difficulty with the “basic sht.”

              Try again – and try not to be circular about it.

            2. “Engineering is applied science.”

              Um that’s not what your cited reference states. Try quoting the reference re re instead of trying to reword for yourself what the actual reference says.

            3. ““information technology, IT – the branch of engineering that deals with the use of computers and telecommunications to retrieve and store and transmit information””

              What of it?

            4. I chuckle at your helping NWPA’s position regarding information processing properly being a patent eligible subject matter, and in the process also admitting that software is patent eligible subject matter, given the fact that software is a manufacture and machine component in its own right.

              And the reference reinforces my view: The application of scientific and mathematical principles to practical ends – exactly what both Prof. Crouch and I have been trying to tell you.

              Just love your continued character suicides,my friend.

    4. As to whether or not a particular solution to a business problem is preemptive or not you seem to not understand what it is that we’re supposed to be checking for preemption of. We are not only checking to see if all solutions to the same problem are preempt, that of course is rare as you mention. Where we are talking about “solutions” we must also see if your claim preempts the abstract idea behind the “solutions”.

      1. Should I remind you 6 that you failed to live up to your promise on the ladders of abstraction discussion and you have no play left for your vapid “Preemption make-believe” pet theory since you refused to defend it in the face of well-recognized patent claim drafting treatises?

        You do not get to say “we are talking” when you have refused to talk.

        1. Again, I don’t know what else you want me to say brosef. I’ve laid out what is happening in the decisions in huge detail, all the decisions go hand in hand and are harmonized under my interpretation and set forth a test to pass 101 (though perhaps a super difficult one to administer).

          “You do not get to say “we are talking” when you have refused to talk.”

          Refused to talk to anon the local blogtroll, who normally just acts an arse if I do go ahead and “talk” with him, is a bit different than refusing to talk in general.

          Even so, the main reason I don’t speak with you further on the topic is simply because there doesn’t appear (to me, subjectively) to be anything left to discuss. You have your take on things and have cited some things I haven’t yet even read and don’t care enough to go out and buy and that’s fine. On a daily basis I don’t even recall what it is you’re upset about or still wanting to discuss because hey, guess what? My position has been affirmed no less than 3 times in the last 4 years by the USSC. Yours is still at 0. It has even started catching on at the patent protectionist court. I mean, I can’t really have asked for much better of an outcome 4 or so years ago when we started arguing. To me, my victory is pretty much complete, regardless of what you might argue. Sure there’s some mopping up to do at the CAFC, but the supremes are getting around to that.

          1. LOL – 6. No this is a promise you made to me to discuss your ‘theory’ in light of a certain case and the ladders of abstraction.

            Come man, I gently reminded you of your promise and you simply refused to join the conversation because it was evident that your pet theory was utter nonsense.

            A lot like Ned refusing to discuss the legal logic of the Nazomi case.

            1. Well hell dude I don’t even remember.

              Yes 6 – that is par for the course for the CRP-Run away-CRP again p1sspoor propaganda machine.

              Why do you think I razzed you in the short term after you made your promise to live up to that promise?

              It is because this “Run Away and later claim not to remember” tactic is a standard techniques whenever a valid point is raised that tosses the anti-(fill-in-the-blank) patent posters into a position that to answer the point in any sense of honesty would mean that they would have to give up their crusade.

            2. anon, I have never refused to discuss the legal logic of Nazomi. I’ve asked you time and again to engage in this conversation, but you have refused to do so. I pointed out the that I do not understand the facts, and simply asked you to summarize them so that we can have a discussion. At this point you refuse to continue the discussion.

            3. Ned,

              You are wrong – time and again I gave you a fact basis to use in order to get around your so-called “gee, I cannot understand the legal logic because I close my eyes and pretend the facts get in the way”

              So, once again, use this fact: software is equivalent to firmware and is equivalent to hardware.

              Stay out of the brier patch and use that intellect of yours to be intellectually honest.

              Stop running away.

            4. Anon, one of the problems in litigation is the habit of many attorneys to quote cases for legal propositions, but the quote them out of context and twist the words quoted to mean something quite different than the original author intend. This is why one always has to check the citations of one’s opponents to see whether or not legal proposition they are advocating is supported by the case.

              If you want to talk about a legal proposition from a particular case of group a cases, I simply refuse to discuss these cases out of context. You have to summarize the facts, or quote the opinion or other subject matter you are relying on said I can check what you are saying. Otherwise we are arguing from your assertion of what the case holds without more. As I said, that approach is not acceptable in a legal discussion.

            5. What a cop out Ned.

              You are telling me that you refuse to look at the Nazomi case, because
              a) you cannot figure out the facts of the case. – Why then are the facts of this particular case so daunting for you? Instead of demanding that I list the facts of the case – which you will likely deny understanding anyway (your insistence of my re-telling facts plainly available is nothing but a brier-patch trap in the waiting) – get off your duff and understand the facts of the case.
              b) to avoid any of this mess, I ask you to take the plain fact that software is equivalent to firmware is equivalent to hardware and use that fact to understand the legal logic used by the judges in the case. You do not even pretend to give a reason as to why you run away from this option. Do you disagree with the fact that I have given you?

              What you want to hold proper as to a legal discussion is entirely being stymied by your refusal to understand the case. This is audacious. Why Ned why? Why this case? Why these facts?

              Yes – we both know why – your third party interests for whom you post and pursue your agendas will not like the plain facts of this case. They will not like the legal logic of this case – being as it sounds exactly in the Grand Hall thought experiment which you likewise ran away from and refused to engage in a conversation about.

              It is plainly clear Ned that you are not joining in on this conversation because you realize that you would have to abandon one of your crusades.

              You.
              F00l
              No.
              One.

            6. “Why do you think I razzed you in the short term after you made your promise to live up to that promise?”

              Because you’re an arse? Or because you just can’t help but troll as if your life depended upon it due to some bizarre psychological problem that you have in your mind brain?

              You know I saw a paper the other day on troll psychology and boy did it all remind me of you. Turns out there are some key things that happen in your mind when you troll as you do. They similar to things that happen in the mind of people that like S&M stuff apparently. I meant to post it for you so you could learn a little about “why you do what you do on here”. But alas I must have forgotten.

              Here’s a popular article about the actual study done, I’ll leave it up to you to read the actual study if you’re interested in learning more about yourself.

              link to dailymail.co.uk

              Here’s another popular article on the same.

              link to cnn.com

            7. 6 misses with his faulty, um, translation: “arse” meaning that anon posts correct things that just wreck 6’s belief system and for which 6 has no answers in law or fact.

              Lovely AOOTWMDs with the psychopathic links. You should see just how much your belief-system-and-deny-fact-and-law style of posts mirror what you wish to accuse others of.

            8. “Lovely AOOTWMDs with the psychopathic links. You should see just how much your belief-system-and-deny-fact-and-law style of posts mirror what you wish to accuse others of.”

              In other words you’re not ready to accept the truth about how you were born. It’s no sin to be 1/20 that is psychopathic anon. Just try to learn to control it.

          2. And your little pet theory certainly has not been validated at all by the Court.

            You concocted your little pet theory in response to a Court decision – and it badly misunderstands that decision and the real law at play.

            1. “And your little pet theory certainly has not been validated at all by the Court.

              You concocted your little pet theory in response to a Court decision – and it badly misunderstands that decision and the real law at play.”

              If you don’t think my “little pet theory” has not been validated then you didn’t understand my “little pet theory” in the first place ya re re.

            2. OH I understood exactly what your little pet theory was – and that is exactly why you ran away when I brang up the ladders of abstraction concept that absolutely ruined your little pet theory.

              The fact that you knew that you were running away and ‘promised’ to discuss my points, um, ‘later‘ when we both knew that you were never going to address my points reinforces the fact that your little pet theory was wrecked.

              You really have a hard time facing reality, don’t you?

            3. “OH I understood exactly what your little pet theory was”

              No, you understood what your subjective take on it was. Because that is all you can ever understand, and yet you’ll never realize this simple fact because you have a vision of yourself as some sort of all knowing person that cannot even misinterpret something you read on the interbuts. But, you’re making progress. One day you’ll stumble fully into reality and realize the limitations on your own ability to understand others and mayhap, if you don’t die in the interim, you’ll even start to understand the consequences of that situation.

            4. “The fact that you knew that you were running away and ‘promised’ to discuss my points, um, ‘later‘ when we both knew that you were never going to address my points reinforces the fact that your little pet theory was wrecked.”

              I already did, just because you were unsatisfied with my addressing your blogtroll “points” doesn’t mean they were not addressed.

              Just because you are not satisfied with my addressing them does not mean that I need to further address them anon. Re re.

      2. I think you are right on the preemption front that my concept of preemption is different from that held by others. And the basic difference is that my concept of the “abstract idea” that we’re worried about preempting is at a higher level of abstraction.

      3. “I think you are right on the preemption front that my concept of preemption is different from that held by others. And the basic difference is that my concept of the “abstract idea” that we’re worried about preempting is at a higher level of abstraction.”

        Well if you ever wish to practice, or correctly teach students, you may want to bring your concept in line with that which is being applied by the USSC since that is apparently what is known as “the law” in this country. Or at least alert your students to the fact that there is another conception of preemption out there beyond the one you’re explicitly telling them about yourself.

    5. Dennis, Flook made it clear that math was excluded; and that insignificant post solution activity would not save the claim.

      Foreclosing other ways of accomplishing the same result, then, is not the issue with excluded subject matter.

      The question here is whether “fundamental economic principles” (and we need a definition of that) are excluded. If they are, simply saying compute it, as in Benson, or use it in a particular field as in Flook, are not going to save the claim.

      I hope this helps.

        1. “Cabined.”

          Anon, it would be nice if you would explain to use what you mean by that. I cannot find that word in Bilski.

            1. But, Diehr was not inconsistent with Benson, one iota. It actually applied he MOT test announced in Benson.

              In no sense did Diehr “cabin” anything regarding Benson. What it did hold that using a programmed computer in a process that otherwise passed the MOT was eligible. But that is what Benson held as well.

              Flook was misunderstood. To some extent, Diehr clarified.

            2. Tell me then Ned, what do the words of the Supreme Court mean when it expressly says that the principles in both Benson and Flook were limited.

              Did they say this for nothing?

      1. “Foreclosing other ways of accomplishing the same result, then, is not the issue with excluded subject matter.”

        Well it technically can be. Where they’ve just claimed an abstraction by itself or an “abstraction on a stick” so to speak, where the abstraction is “solve problem x”. That does occur, but it is super rare.

  10. […] The courts are unable to agree on when an idea is “abstract,” and therefore ineligible for patent protection under the non-statutory “abstract idea” test. The Supreme Court will take up this issue again in Alice Corporation Pty. Ltd. v. CLS Bank International, which is scheduled for oral argument on March 31st.  But, briefing is complete and Dennis Crouch summarizes the arguments on Patently-O. (link) […]

  11. The case is not about software patentability. The software implementation claimed by Alice is “insignificant post-solution activity”. Even in the (statutory) “whole contents approach” the software should be ignored, since it is a feature irrelevant for the solution of the problem claimed by the invention: having additional security in a financial transaction.

    Amici – both proponents and opponents of software patents – have written many words pro and con swpats – but IMHO this is off-topic.

    Focussing on the actual business method, the commonly proposed rejection based on “abstractness” (lie a “Bilski 2.0″) is not very convincing. Gottschalk v. Benson objected against pre-empting a fundamental principle (etc.), but patents must “pre-empt” things that are more or less “fundamental” because a patent that can be easily circumvented with an equivalent result has no value.

    My take is that patent should not be seen als a “reward” for brainwork, or “protection” of the associated investment, otherwise there would be no economic reason to exclude any subject-matter. Instead, patents should be seen first and foremost as an exclusive right, a privilege, which is what they were in past centuries. The difference is that patents are granted on the basis of rules, whiel privileges were granted at the discretion of monarchs, but otherwise there is little difference.

    From that perception, business method patents should be seen as directly conflicting with the free market economy fostered in the western world. A firm that can only survive if protected against competitors by patents should not be on the market! Patent should be the exception to the rule of a free market economy. Note that this observation is far from new. As early as 1623 the British issued the Statute of Monopolies, addressing the problem of too many “monopolies”.

    Now doesn’t Alice need a patent because otherwise no firm can survive that specializes in devloping “innovative financial concepts”? The answer is that firms still can specialize in this field, but they should work als consultants. Consultans are paid by the hour, not by means of a “property rule” right that allows them to recoup an income over the years. Which will probably be onreasonably low, or high anyway. Incidentally, I believe that Alice is a troll. It website says that litigate is part of their business. Isn’t that honest?

    Business methods are a vague concept – as was noted in State Street. After Stevens’ plea for an unconditional ban on swpats in Bilski did not get a majority, the SCOTUS is unlikely still to issue a total ban on thos patents. Instead, the focus should IMHO be on the need for exclusivty. Some firms indeed can not survive unless they are protected against imitators by patents. But in business, imitation is not forbidden, it is the rule: it is competition! Still firms do survive competition(!) – by a proper business acumen. This approach does not require the question to be answerd “is this a business method”, it only requires an enquiry in the potential to compete without patent protection.

    1. The software implementation claimed by Alice is “insignificant post-solution activity”.

      Absolutely not correct.

      Reinier, is this more of your “I can define things however I want to” methodology?

      but patents must “pre-empt” things that are more or less “fundamental”

      LOL – here again the tactic of a kernel of truth to make the 1ie more convincing. Yes, patents preempt – that is what they do. No, the use of modifier of “more or less” for “fundamental” is a smokescreen. Either the item is fundamental or it is not. There is no “more or less.” You are either on the top rung of the ladders of abstraction, or you are not. Period.

      Instead, patents should be seen first and foremost as an exclusive right, a privilege, which is what they were in past centuries

      More of the “let’s redefine basic terms to mean something else more in line with Reinier’s larger anti-patent views” schlock. No thank you. Take your ‘take’ and do not try to obfuscate US law with it.

      Your perspective fails for numerous reasons, including the fact that our US law has alwasy permitted patents on business methods. So sad for your larger views – they just don’t fit our law.

      can only survive if protected against competitors by patents should not be on the market!” Nice false basis and non-sequitur. No one is saying that such is the basis of the patent system – the “only survive if” rings of the equally false “but for” notion that is nowhere a proper understanding of the patent system. It may rightfulyl be one of many reasons or benefits of the patent system, but such is not the strawman argument you seek to build here.

      The fact that you slink in a “Troll” boogeyman reveals your underlying agenda. Or maybe you too do not understand how US patent law does not require the patent holder to practice the invention?

      Your last paragraph is a FAIL: it is not up to the Court to write patent law and change – as you would have them do – the underlying reason for having the patent law in the first place. The attempt to switch to some type of “Need” or “but for” basis is simply not within the power of the Supreme Court to enact.

      Your cry for “imitation” is likewise a false flag. Imitation is still highly prized – in all art fields – that is why the patent grant is for limited times. You seek to make a distinction that carries no difference by implying that business methods somehow are different in this manner, and even more egregious, that business methods are somehow different enough so that NO short term protection should be offered for efforts in this field of innovation.

      As I have said, Reinier is a far more skilled advocate of the anti-patent crowd. What more delicious irony would it be for such a communistic-ideology driven person than to have the very notion of innovation in business methods
      ruled not patent eligible and thus immediately able to be taken into the commune status and freely copied (and given to those according to their needs). Throwing on the sheepskin of “proper business acumen” (another Reinier redefined concept) to cover the blatant desire to steal someone else’s innovation without the balanced reward of patent rights.

      1. You hate me because you associate me with an “anti-patent crowd”. Perhaps you are part of a “pro-patent crowd”? The reality is that I am an academic. In law, the truth is always in the middle, and the challenge is to find where that “middle” is. I guess that Dennis Crouch has the same objective.

        In a previous post (to an other article) you accused me of arguing that “useful arts” in the Cnstitution is the same as “technological arts”. That made it clear to me that you are confusing me with someone else. Or perhaps you have a problem with you fantasy. I vener said that, for several reasons actually. Firstly, as a Dutchman I am not familiar with constitional defenses. Secondly, it is a typical activists’ argument to argue that courts interpret the statutes and constitution incorrectly – because that is utterly unhelpful.

        Well, I will not counter all your arguments, that will bore the otehr readers. Met let me take a few examples.

        I gave a reason why I consider the computer implementation “insignificant post-solution activity”. You don’t counter that argument, you only say that I talk nonsense. How nice!

        Did US law always permit business method patents? And how do you define business method patents, my friend? The CAFC noted in State Street that USPTO personnel had problems qualifying (possible) business method patent applications.

        Re imitation: twenty years is a long time in this fast world (and then I don’t even think of tactics like “evergreeinig”).

        No, I do not say that the SCOTUS should change the statute, but it must interpret the statute. I guess no one (except you perhaps?) will argue that there are no limits to patentable subject matter. So the question is legitimate where the boundary lies. “Abstract ideas” are excluded, but that is not very helpful, since all ideas are “abstract” to some extent. So there is work to do.

        For all my statements I give arguments. Admittedly sometimes sketchy – a BLOG is not a court document, and no footnotes can be included. I am not in the process of defending a client before a court, I am trying to provide food for further thought. But you don’t counter my arguments, you only accuse me of spreading false stories.

        And finally, if you aim at a personal attack, then you should not write you posts anonymously. I use my real name here, and so you should do. Attacking someone anonymously is SOOOOOOOO cowardly!

        1. I do not hate you Reinier.

          The reality is that your views are anti-patent. Whether or not you are academic is merely a side-point, and I am not sure why you would bring that up.

          Your “truth is always in the middle” is flat out rejected as yet another attempt at redefining the landscape. The truth is not always in the middle. Sorry, but such a statement is merely a weapon to say that the one side cannot be correct because they are not in the middle.

          As to your “reason” of post-solution activity, I say thee nay – you gave no reason – you merely made a conclusory statement that does not fit the actual invention. You have a habit of ‘redefining’ things – most often under the guise of “the courts have not finally determined” that you way too eagerly use as an excuse to inject your belief system.

          You ask (again) how I define business methods. Asked and answered: a method of business. Perhaps the ‘problem’ when it comes to ‘defining’ is that those defining have an ulterior motive of eliminating patent coverage for something they have a philosophical bent against.

          As for the time span of patent protection – apparently you have a different argument to inject about what is an appropriate length of time. Fine – keep that separate and do not conflate your view that the time span is not appropriate with the FACT that the time span is chosen by Congress as it deems it to be appropriate. Then return the goalposts to their original position and address the point made that your attempt to deny business method patents on some notion of ‘sharing now’ is a misapplication of the law.

          As to your redefining of ‘interpretation,’ you again play semantics with what you want, seeking to dance behind a clear re-writing in order to obtain the ends you seek. Sorry, but I do not buy your smoke and mirrors.

          To your comment of “arguments and food,” – so what? I see what you have offered and I have offered counter arguments and food. My points DO counter your points – and too bad, so sad for you if that counter shines a bright light on the method that your “arguments and food” take. Whatever I have said is false – is false.

          Lastly, PLEASE spare me the “personal attack” Crybaby veto attempt. I am not attacking you personally. I am not saying that gee, that Reinier guy is a miserable person that kicks puppies. My attacks are to the views that you have put forward as “arguments and food” and the manner in which you have put them forward. That your larger agenda is visible and is anti-patent is simply an accurate assessment. If you do not want to have your “argument and food” aligned with communistic principles, then change your “argument and food” not to align with communistic principles.

          And keep in mind that Jane was correct – but in a completely unrealistic way. It would be wonderful if communism really did work in this world. The sad truth is that it does not and never will. That is more than just “argument and food” for thought. That is reality.

          1. If you do not want to have your “argument and food” aligned with communistic principles, then change your “argument and food” not to align with communistic principles.

            Get your meds adjusted, you pathetic psycho.

          2. I say that I am academic for the reaon that I have no personal interest. For me this is an intellectual exercise.

            It seems that you are a patent agent (or a patent owner) without a proepr legal training. In law, the objective definitely is finding the truth in the middle. Lady Justice carries a balance, you remember?

            The essence about “post-post-solution” activity is whether it is essential to reach the objective set by the applicant. In the present case, the objective is to make payments more secure. You can argue whether a software implementation is essential to reach that objective. I guess it is not. But feel free to ask questions, if this complicated problem is unclear to you!

            OK, you argue that defining business methods is not a problem. So you oppose USPTO views (and my view, which are less important). I think it is actually helpful for the owner of *good* business method patents to conclude business method patents are not a problem per se, not because they are bad, but if they are bad. Remember that Alappat and Arrythmia (in a different field) said that algorithm patents are not bad because they are abstract but only if they are patents. Patent critics found me pro-patent because of this vision.

            Re 20 year term: I would not dare to question the appropriateness of this term, I was only arguing that there is exclusivity, and you argued that the time is limited. It is a matter of taste to decide whether 20 years is long or short (yawn). I think it is long, in todays dynamic business environment.

            Your statement about my comments on “interpretation” are completely unintelligible to me. Have you been trained as a lawyer? Are you familiar with the concept of “interpretation”, which is actually *not* a pretext not to “obey” the legislator? Feel free to ask, I am willing to teach you a basic course in legal methods, in this forum, if Dennis allows.

            Re communism: this is a nice paradox. Some people argue that less “intellectual property” is akin to communism. I argue that protecting businesses against competition by means of patents is like communism.

            Eventually, this is all off-topic. Alice is a troll trying to extort money from CLS, an established organisation that really was smart enough to devise a method to protect financial transactions. Did they steal the “brilliant” idea that Alice developed at great expense? Don’t let me laugh! I am pretty sure that Alice is a bad faith applicant.

            They are like domain name grabbers 2.0, willing to settle for a price that is *slightly* lower than the cost of litigation. They exploit the fact that obtaining patents is relatively cheap in the US, and litigation is very expensive.

            Since sou still hide yourself cowardly behind the pseudonym “anon”, I guess you are working for Alice. yes, this is an accusation. A guess without arguments, Which is not allowed in science, but very normal in politics. Anyway, you would always blame me for lack of relevant arguments, so it is a wast of time to try to support my statement by arguments. For you. Other readers have ZAp-ed to otehr comments many paragraphs before.

            Hop I do not stress your sense of humor too far.

            1. My erstwhile philosophical combatant, I took some time to pore over your words in detail and to carefully note the machinations and rhetorical games that you are playing. And playing games is exactly what you are doing instead of meeting me squarely on the points of law.

              There is a false implication with “ I say that I am academic for the reaon that I have no personal interest. For me this is an intellectual exercise.

              Academics have personal interests. This is NOT a purely intellectual exercise for you – as if somehow saying “academic” gives you a free pass, that would inoculate the fact that you do have a personal interest in these discussions that heavily bias your viewpoint. I have noted your position across many different comments, even across different blogs, and as I have posted recently with you, your background cannot be divorced from what you say. To attempt here to say that you have no personal interest is simply false and is used in an attempt to create some type of credibility or de facto standard of objectivity that you do not have.

              It seems that you are a patent agent (or a patent owner) without a proepr legal training.

              Is likewise a false statement. Whether lady justice does carry a balance has nothing at all to do with the fact that one side’s view may in fact be completely accurate and no need for movement to any other position be required. You seek to use a universal symbol and apply that without reason. Your view of “proper legal training” then, is entirely suspect and either you are prevaricating in an outright dishonest manner or you are simply not as intelligent as you think that you are.

              Your comment regarding Alappat is uintelligible to me. (see how easy a dodge that is?)

              Your comment about “matter of taste” and the twenty year term continues to evade the initial use of that in your argument. It is a slight of hand to attempt any such “it is only an opinion and cannot be wrong” type of insertion into a legal argument. Such opinion based rhetoric is nonsense. Either you are attempting to make a legal point with the comment (and thus ‘opinion’ is not the aim), or you are trying to obfuscate the legal argument with high-sounding dross that has no bearing on the legal argument. Either way, your attempt is a FAIL. I have called you out on your attempted uneven-because-you-want-to-define-as-you-want-to-define application of the term and you have offered only dust-kicking in response.

              Your hiding behind “’interpretation comments not intelligible’ and asking if I am familiar because you seem to not understand is a poor rhetorical tool. I could just as easily (and vacuously) spin the question 180 and ask if you need a basic course since you seem to have trouble understanding.

              There is no “paradox” with communism. None. Your attempt to inject one is denied. You fail to include the basic notion that any patent is a personal property which takes it beyond your attempt to confuse. Too clever by half.

              Your comment of “ Eventually, this is all off-topic is a poor attempt at deflecting the points that you will not carry in any objective analysis of our discussion. It is a “even if you are correct” rhetorical tool placed so that you will continue to argue even if your points do not match up.

              Any supposition of yours to play the “Troll” boogeyman, Alice must be bad card likewise FAILS. You are aware (or should be) that is does not matter if the patent infringer is an established organization, or that they are practicing a trade secret that otherwise neither provides an accepted prior art basis or the new Prior User Right to negate an otherwise valid and infringed patent, right? Your emotional ploy is easily seen for what it is: a naked infringers’ rights attempt to modify, mollify or eviscerate the law as it is now. The notion of “stealing” simply is off-point in your emotive post, because they very well could be “guilty” of “stealing” if you phrased that appropriately instead of emotionally. And you suggest that I don’t know the law – while at the same time you kick dust over it to obfuscate….?

              They are like domain name grabbers 2.0” No. They are not. You do not get to say so given the fact that patents are presumed valid and the case has not been adjudicated to support your accusation. Again – you want to imply that your position is neutral and in accord with the law and yet you continue to post with critical misses of the law.

              The outright laughable attempt to portray posting with a pseudonym as any type of cowardice is really pathetic. Seriously. Try sticking to the points being made instead of retreating to such banal emotional ploys. The only ones ever to retreat to such nonsense are those that are clearly losing the battle of points of law.

        2. anon is like a chain letter Reinier; I was kindly informed by others as I now inform you: anon will argue in pointless circles in bad faith, is indeed cowardly for not using her real identity in this low-stakes context, and will sneer and scoff at any position that does not worship a static view of the LAW. From sheer random volume you may get a nugget of truth or insight from engaging, but better to focus on the group of people of better quality and intent who also populate these pages….

          1. LOL – Marty ‘warns’ you of things he himself engages in. – Truly, a mewling and vapid Malcolm clone, knowing nothing of the law, but ‘policy, dabnit Gumby’ style self-serving dross out the wazou.

            KA-BLOOEY !

      1. Tell me Ned, what are the (spin-free) fundamentals?

        Fold into this spin-free state of fundamentals the points about how all three branches of the US government do not back up your anti-business method Crusade.

        Stop running away.

    2. Reiner, check the series of post beginning at 1.1 that discuss Curtis, who began publishing on this topic in 1848.

      He began his discuss of patentable subject matter by talking about what was included and what was excluded.

      Excluded.

      Inclusions and exclusions are not a new topic.

      1. This British produced some interesting documents in the 1960s on patentable subject-matter, notable the “Banks Report”. Most patent systems, including the U.S patent system exclude similar things: pure discoveries, mental steps, printed matter. Why? The answer invariably is: tradition! And then there are definition problems. In common parlance, and invention is almost the same as as discovery! The mental steps doctrine was more or less abandoned in the US in In Re Prater II, but still plays a role in EU law.

        The technology test, firmly rejected in the US but fostered in EU, actually originates from a german tradition. The EPC drafters around 1970 refrained from including a technology requirement in the EPC since it was only a freature of German patent law at the time! Currently the addition “in all fields of technology” in the EPC is considered a rule allowing *only* patents for technology. Well, wherever your sympathies lie, in my understanding “all” means “none excluded”, – which was definitely the intended meaning in the TRIPS Agreement where this clause comes from: TRIPS aimed at requiring the WTO member states to protect medicines as well, so “all” really meant “all” here, not “only”.

        My take is to adopt a higher level of abstraction, and to consider patents a legal means for exclusive rights for valuable knowledge. Why not all valuable knowledge? Forget tradtion – tradition is not an argument in law: statutory interpretation must move with the times, which is justified as long as the basic intent of the legislator is observed.

        The only conclusion that is left is that patents are NOT a means to appropriate (“commodify”) all valueable information (with a “property right”). So I concluded that patents primarily serve exclusivity, an idea I elaborated in the PhD that I defended successfully in 2008.

        Qualifying patents as a means for exclusivity explains that patents thmselves are the exception, rather than the excluded subject-matter!

        I just browsed the Amicus Briefs,. but if I am not mistaken there is not a single (genuine) business who says that it needs business method patents. “Genuine” is opposed to businesses like Alice who make a business in selling “innovative financial concepts”.

        1. Reiner, I think IBM did say that software innovations should be protected. They did not argue for business methods per se, but if a business method were implemented in novel software, I think they have no objections. Their brief, IIRC, did not mention State Street Bank even though their whole approach is to adopt the excoriated State Street Bank idea – if it reads on a programmed computer, it is eligible.

          But as CLS Bank correctly notes, adopting the IBM approach essentially overrules Benson, Flook and Bilski, and makes a mockery of the exclusion of mathematical algorithms and fundamental economic principles. But, as everyone knew at the time, Rich’s objective in State Street Bank was to effectively overrule Benson.

          There is a great deal of groupthink in DC. Attend an AIPLA annual meeting. Everyone is on the same page. No dissenting views. It is a marvel to behold. One would think one was in North Korea.

          On patentable subject matter, DC thinks everything should be eligible, and generally following the lead of IBM. I haven’t checked, but if Justice Douglas was once invited to speak, he would have been quickly be pilloried where the assembled patent attorneys would have been invited to use their rotten tomatoes and cabbages to show their deep appreciation of the Justice. I have never heard a kind word about Douglas in DC, nor have I not heard less that an adorational encomium for the late Judge Rich.

          The groupthink aligns the same way when considering the Supreme Court and the Federal Circuit.

            1. Here! Here!

              IBM is the biggest hypocrite on this planet. While posturing as a technology company, for decades they have employed there patents as a profit center. And with the new information that you have provided this forum, it appears that they too acquire patents from others for assertion purposes. And lo and behold, what patents are these? The very kind of junk patents they complain about in their brief.

        2. There are many kernels of truths being sown here.

          (by the way, the fact that you successfully defended a PhD is absolutely meaningless anywhere in the real world of law – congrats – you showed that you can fit into the excessively left-leaning, incestuous, non-merit driven world of academia. What you seem to think a feature is in reality a bug)

          But please, continue to insist that you are being “objective” – you fool no one. The value-laden self-serving definitions you want to use (genuine…?) say far more about you than you could ever hope to spin away with more rhetoric about how ‘impartial’ and ‘balanced’ you are – the dissembling is plain to see, no matter how many kernels of truth you first sow.

  12. In previous comments I may have been over-harsh towards Alice, especially having read the Alice brief and US 7725375.

    It appears that settlement risk was a long-standing problem in the banking community. The claimed invention reduces settlement risk which in the context of computer-related high-volume trading such as derivative trading and foreign exchange settlements is arguably a technical effect. It is wholly unrealistic to regard this type of invention which forms part of the systems which underpin financial markets as the equivalent of paper and pencil trading. Further, it seems that the type of records created according to the Alice invention and the way in which they were used did not simply automate known methods of handling financial transactions but were in themselves novel.

    If that is a correct scenario then Alice’s case has significant merit, and their contribution should not be treated as merely an abstract idea + apply it. State Street Bank may have more relevance here than appreciated. But this view is premised on the view that what was disclosed was a better way of reducing settlement risk or a way of doing so that was in some way new and original.

    1. Paul,

      While the notion of you sticking up for Alice is sweet, you again seem to have a problem in that you are not applying US legal concepts.

      Whether or not a “technical effect” is present simply is not a US patent concern.

      Try to remember that US patent law is broader. In the US, the Useful Arts is not synonymous with the technical arts. To suggest otherwise (even in defense of the case) is a mistake.

      1. I completely agree that the useful arts and the technological arts are not synonymous. For one thing the area of scientific or at least attempted scientific study has greatly expanded over the last 200 years. So why should not the useful arts include the effective administration of business systems in a bank, especially given the complexity and computer implementation of such systems nowadays?

        Section 101 refers to novelty and utility. On the assumption that the Alice invention is novel, it has utility because it reduces institutional exposure to settlement risk. The same point as previously, though slightly differently expressed.

        In the UK at the moment we have an application case going to the Court of Appeal which is admittedly novel, unobvious but nevertheless not patent-eligible. Such absurdity is to be avoided. IF, as may be the case, the Alice invention is novel, does not simply automate pre-existing systems and indeed reduces risk then there may be patent eligibility. The relevant yardsticks are what was done before, how the banks reacted to the Herstatt incident, what was the special scheme set up by the Bank of England in consequence and how it was used by Drexel Burnham Lambert, how the banking system responded to Barings, and what were the systems in the prior art admitted in the Alice specification. If we know that we may have a better idea whether the Alice invention was truly novel or was merely automation of pre-existing practice.

        Section 101 contains the words “invents”, “new” and “useful”, so we cannot get 102 and 103 entirely out of consideration under 101 no matter how hard we try.

        1. Paul,

          While I am often harsh, let me say that your post at 15.1.1 was the most lucid and calm demonstration of reasoning concerning the proper coverage of business methods in the Useful Arts that I have read, since, well, since I have read my own posts. ;-)

          But then you slip back with the notion of “so we cannot get 102 and 103 entirely out of consideration under 101 no matter how hard we try” – my harshness to you stems not from the fact that there is an overlap of words, but rather from the active conflation being sought because of the overlap of words.

          Remember: better law aims for clarity, not conflation.

        2. In patent statutes, a distinction ins made between absolute criteria (35 USC § 101, Art. 52 EPC) and relative criteria, the novelty (102, 54) and non-obviousness (103, 56). The latter two are relative to the state of the art.

          If something is abstract, concrete, non-technical or technical, it will remain so forever. But as soon as a (patented) invention is published, it is no longer novel.

          yes, it may sound strange that novel and non-obvous things still can not be patented, but actually scientific discoveries typically are novel and non-obvious and still not patentable. One can not patent E = mc2 (wasn’t it a British judge who said that?). And there is a ratio for that: really fundamental things potentially cover a very wide range. See Morses famous 8th claim, aiming at covering *future* applications as well (O’Reilly v. Morse, 1854).

          1. . And there is a ratio for that: really fundamental things potentially cover a very wide range

            Again – the spin of “really” is rejected. You have something fundamental or you do not. You are either standing on the top rung of a ladder of abstraction, or you are not.

            Subtly, it appears that relativism is being snuck into the “absolute” side of the criteria just laid out….

        3. The word “useful” in 101 (not the constitution) is equated to “susceptible of industrial application” in a footnote to art. 27 TRIPS. The latter wording refers to Art. 57 EPC, and there is case law saying that (even) this provision is not a reason to grant patents only for technology.
          In practice, the role of art. 57 EPC is minor. Perhaps the most important part of it are the words “including agriculture”, which actually stem from the 1963 Strasbourg Convention (art. 3).

          1. Reinier – you, as an academic, should well know that TRIPS is not defining for US law, and that the US law under discussion is not the same.

            TRIPS requires separate enacting legislation.

            Thus, your attempt her to subtly paint US law as being driven by a definition in TRIPS is a dissembling and intellectually dishonest tactic.

            Or do you feel this is ‘too much’ of a ‘personal attack” to note that the food you offer is poisoned?

            1. Thanks for asking me for an explanation so politely!

              I was pointing at a (possible) similarity between US law and EU law, and then TRIPS provides a suggestion, saying that “For the purposes of this Article, the terms “inventive step” and “capable of industrial application” may be deemed by
              a Member to be synonymous with the terms “non-obvious” and “useful” respectively.” Of course, we are now only discussing the latter part of this statement, not the former on the inventive step.

              AFAIK the interpretation of the word “useful” in § 101 is just as difficulat as the interpretation of the words “susceptible of industrial application”in Art. 57 EPC.

              If you interpret all my comments as attacks on the US patent system even if there is no reason whatoever, you should seek help from a psychiatrist. Some disorders can be treated very effectively if only the patent admits he needs help ;) (Or she, are you a “she” perhaps?)

            2. so politely

              While the rhetorical tool of false politeness may on occasion be used well, clearly such is not the case here.

              We both know that this is a highly charged area of debate, just as we both know that you are leaning heavily on rhetorical tools because your position straight up under the law is very weak.

              I have already pointed out the fallacy of depending too much on “(possible) similarities” in a previous exchange. You abandoned that discussion – and rightfully so because your rhetorical tactic cannot be supported when shown to be what it is.

              Here, notice that you do NOT comment on the correctness of my reply – that US law does not support the attempt to use “ (possible) similarities” as an actual driving force of what the law IS. Instead, you retreat to a vapid emotional ploy of “you are attacking me and need meds” How utterly banal and cowardly – no matter the name you use to post such a non-straight-up reply.

              Spare me the false politeness and deal with the point directly.

              If you can.

              If you cannot, just admit that my point is correct and is the better one. If you find the courage to do so, that is.

              (thank you ever so kindly)

            3. even if there is no reason whatoever

              Yet another false flag – you have provided (and continue to provide) many reasons Reinier.

              Clearly. Just as clearly as I note that not all of your comments are an attack. Clearly – and repeatedly – I indicate that you do sow kernels of truth. For you now to imply that I do otherwise is but yet another poor rhetorical tool.

            4. There is no accident in Reinier being pounded as heavily as Malcolm gets pounded on discussions of law in this area.

              Reinier is simply more subtle about his posts.

              But both come back to the maxim:

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

              If you have neither, pound the table.

              Paying attention to the words that Reinier uses – and equally paying attention to the fact that he is not addressing the legal points I make shines a spotlight on Reinier pounding the table.

              Perhaps it is a pretty table in some academic conference room. I hope that at least he has that going for him.

        4. Paul, was there any reason why the Statute of Monopolies limited patent to inventions of “manufactures?”

          And, when we say, “made by man,” are we not saying the same thing?

          1. There be some serious dust-kicking and a renewed attempt by Ned to denigrate into a sub-category status one of the Congress-specific (and equal) statutory categories by again trying to make the category of process a sub-tier of the hard goods categories.

          2. I think it was historical reasons. They did not have computers in the 17th century. Nor did they have sociology.

            A computer system for handling financial transactions and minimizing settlement view, arguably, is a manufacture. It takes a lot of hardware and human ingenuity to create. Just like stained glass or a steam engine.

  13. Oh look, our old friend Marty is still around:

    link to washingtonpost.com

    And there’s a little bit of background about Marty’s axe to grind in there as well.

    Awwww, how cute, he was being out-competed!

    “Goetz says Autoflow was the superior product, but IBM’s lower price and promises of future improvements made customers reluctant to become Autoflow customers.”

    So he decided to apply for a government entitlement to help him out!

    1. An excessively poorly written article 6.

      Maybe you can share with the author the quote from Benson that the poor belief-smitten writer missed in his hurry to march up the lemming hill, you know the one, the one that ends with “We do not so hold.”

  14. The Law and Economics professors brief (Schultz Love) is great. It details the exponentially increasing damage done by abstract patents in careful and clear terms and explains how the system of patents as personal property rights depends on keeping abstract patents out of the system. The roots of the trouble in business method and software patents is covered well and the aspects of §101 than cannot be dealt with by §103 are laid out.

    That one was a great effort from the dozens of well known professors, including a Nobel winner.

    The US Government brief is the opposite. It reads like unpaid interns were forced to get it out on a deadline without caring what was in it. The SG (and unpaid interns) argue for what amounts to a pure §103 analysis wedged in before discovery and Markman. There may be some value to that, but it has nothing to do with this case. The SG even shows his bad hand by advocating for the minority position in Bilski that would have increased patent eligibility for abstract ideas, quoting and supporting Kennedy’s suggestion that “linear programming, data compression, and the manipulation of digital signals,” be patent eligible. That would be the single biggest judicial expansion of eligibility for purely abstract processes that can be carried out in the human mind or on paper in SC history. It amounts to saying that pure math and ideas are patentable, but only if attorneys think it’s hard math or complicated business. In fact, that’s even worse than §103 analysis because §103 at least depends on what PHOSITAs think is obvious instead of what attorneys with no experience in the art think is hard.

    The American Antitrust Institute and American Civil Liberties Union briefs are interesting for taking outsider points of view on the whole issue. Looking at patent questions through competition policy or free speech lenses can be informative.

    The Retailers brief makes the point that early disposition of garbage patent cases is very economically beneficial to companies that aren’t actually making technological products being attacked by an unfamiliar patent system. It’s short and clear.

    The Checkpoint (and Github, Linkedin, Netflix, Newegg, Rackspace, Twitter, Yelp, &c) brief points out that Software companies are in the same position as retailers. Software innovators don’t depend on patents, don’t need patents, and don’t want patents on software. Software patents are primarily the tools of trolls to extort and endanger the industry and software creators and innovators are overwhelmingly against them. This brief was very good.

    1. Owen, I agree.

      The Law, Business and Economic Scholars brief is well done, and points out that “the Federal Circuit misunderstood [Benson, Flook and Diehr] and expanded the scope of patentable subject matter, culminating with … Alappat and State Street, allowing otherwise abstract patent claims to qualify under section 101 based on a mechanical “magic words” approach.”

      That was way too kind to the Federal Circuit, and to the group think movers and shakers in DC who inhabit the halls of power in IP lobby organizations. The court, and the movers and shakers wanted Benson repealed. They wanted their software and business method patents. Some of them as owners of large numbers of such. Others, because they were, after all, patent attorneys who were always looking out for number one.

      The guy at the center of the controversy needs to be named. Giles Sutherland Rich, the man from the NY Patent Law Association who lead the effort of the bar to reverse a number of Supreme Court cases, including Funk Bros., Cuno Engineering, Mercoid, and best of all, Halliburton (and its ilk, United Carbon, Wabash Appliance, Perkins Glue, O’Reilly v. Morse, and of course, Wyeth v. Stone.)

      Through legislation, and, once he was on the court, through a deliberate effort to disregard any allegedly non statutory authority prior to ’52 (see In re Swinehart for an example), he systematically tried to reform the patent system. Just look at Donaldson for pities sake as another example.

      It is a pity that Rich was inflicted on the patent system. I really was.

      1. It is a pity that Rich was inflicted on the patent system. I really was.

        …because innovation has really been stymied since Congress (and not Judge Rich as Ned seems perpetually unable to be honest about) changed the laws in 1952….

        /facepalm

  15. I mentioned this in a thread a couple weeks ago, but this thread is more on-topic. In the recent arguments in Octane, Justice Breyer mentioned the following hypothetical:

    Justice Breyer: “I patent the following: For a computer, enter somebody’s name. Ask phone number. And they’ll give you the phone number if you put in the right city. That puts a list in the computer. They can patent that? Well, you add a couple of things and they apparently ­­ you can have an argument that they can patent it. Okay? Because it’ll be very abstract language. It will be able to patent almost anything. No, you can’t finally, but objectively baseless?”

    It’s a little hard to interpret, since it was Breyer’s typical making up hypotheticals on the fly, but it sounds like he was saying that his hypothetical invention would be patent ineligible subject matter (the point in the Octane context being that the argument that it is patentable would not be objectively baseless).

      1. He didn’t come out and say it, but the allusion was that it was because of “very abstract language”. I can only assume he means abstract in the same context as Bilski.

  16. The patent system has been been backed into this increasing backdoor attack on obvious and/or 112 deficient patent claims because D.C.’s will very rarely grant S.J. on 103 or 112, and even if they do, the Fed. Cir. will rarely sustain them. As was demonstrated in KSR, where the Fed. Cir. did not even give the D.C. S.J. 103 decision the time of day, just summarily ordering it back for an expensive jury trial and second appeal. It took the Sup. Ct. to even seriously consider, much less sustain, the 103 rejection. So, just as here, patent claims are increasing ending up on appeals from S.J.s solely arguing in ambiguities about whether or not they can be considered patentable subject matter. Is it any wonder that IPR’s have become so popular?

    1. Dennis I join in the thanks for the hard work you do here.

      Paul’s point here is very important: The brief we participated in (along with many famous retailers) is focused on the real world problem, and not the ivory tower legal problem. The real world problem is what created so much angst and political/social turmoil in re: patents.

      The problem is that injustice on a massive scale is occurring on a daily basis.

      There is no realistic access to 103 or other sections beyond 101 in real-world jurisprudence. If it takes a million dollars to get to a 103 determination of obviousness (or anticipation), and patents are presumed valid (even though 40+percent are invalidated when litigated to the end), damage to those merely accused of infringement is certain and massive.

      I know this first-hand, and I my anger and dismay towards a system that allows this knows no bounds.

      The Supreme Court is not merely a legal body; it’s an important political body. Again that may not be so in the ivory tower, but in the real world, their judgments, wrapped in legal dress, solve real political problems.

      Because 101 is the only fast, inexpensive means to get out of a litigation that should not be happening, it’s likely been pressed by litigants and judges where it likely should not be pressed in view of 103 and the other sections, and many observers see that.

      The court’s challenge here is to square the circle of certain massive legal and political problems presented by current patent jurisprudence relating to software and business methods.

      One of those problems is the costs of getting to 103 et al., but there are others. The Alice claims are obvious; virtually every observer can readily see that. The programming to enable them is trivial, as again , almost everyone observes.

      There is widespread revulsion to patenting ideas- the ACLU brief touches on the threat to freedom that doing so would represent. Business methods, per se, are ideas. The notion that someone could patent “ladies night” at the local pub, even if they come up with it first, does not sit right to many people in an economy built on capitalism and competition, and the patent laws, as currently construed, do not directly address the question. The patent-eligibility of business methods really is a political question as much as a legal question, separate from the patent-eligibility of software.

      If “ladies night” is implemented by a novel software application, does that change things? Are both the method and the software “abstract ideas”?

      Many people, even anti-software patent people, allow that there exists software that is obvious/anticipated and software that is novel.

      Unlike IBM and Gene Quinn and others who have entrenched interests in software patents, I believe a reasonable case could be made both for and against the patent-eligibility of pure software under current law. I have yet to see a single respectable opinion anywhere that software as a component of a mechanical system whose end result is something other than further processed information should not be allowed as a claim element. Yet software is also written expression, as the ACLU notes, and as such, (and as widely known) is unique in the dual nature of copyright and patent eligibility.

      The Supreme Court could kill several important birds with this one case.

      To me, the ideal result would be a finding that business method claims are not patent eligible under 101, that novel software is patent eligible under 101, but when the claimed invention is software whose only result is processed information, district courts may sua sponte construe software claims and conduct an obviousness/anticipation inquiry akin to the “substantial similarity” test used for copyright cases prior to major discovery, experts, etc. that run into the millions of dollars.

      In this way, the major injustices of the current system could be mitigated, the correct result in CLS would stand, 101 would not be needlessly bastardized, and novel software, especially software working as elements within compositions of matter or physical processes, could still benefit from patent protection.

      Go ahead anon, flame away…..

      1. Whoa….

        “There is no realistic access to 103 or other sections beyond 101 in real-world jurisprudence. If it takes a million dollars to get to a 103 determination of obviousness (or anticipation), and patents are presumed valid (even though 40+percent are invalidated when litigated to the end), damage to those merely accused of infringement is certain and massive.”

        I’m gonna go out on a limb here and assume your 40% number is legit.

        That does not mean that 40% of patents are invalid.

        It only means that 40% of the patents people chose to argue about are invalid. And isn’t that about what you would expect? When patents are clearly valid, people don’t waste money arguing about it, they pay the royalty or move on. If patents are clearly invalid, people don’t waste money trying to enforce them.

        So, a 40% invalidity in contested patents means that patents are usually valid, even when contested.

          1. No. They are all presumed valid.

            That’s why competitors who are aware of their rivals patents request licenses and pay royalties, or work out cross licensing deals.

        1. That does not mean that 40% of patents are invalid.
          100% of patents that settle don’t get invalidated based upon the settlement. Can anybody guess the percentage of cases that settle versus get invalidated?

      2. Here! Here!

        Martin, I too think the issue is not software, but business methods and their eligibility. We don’t have to rule more broadly as this is not really a software patent. No software is actually disclosed.

        Why should the Court ban business methods. Why? The answer is clear as day and has been all along. It has been since the English civil war was sparked by patents on trade. It has been since the American revolution began at the Boston Tea Party in revolt over the British East Indies Company patent on trade.

        The Statute of Monopolies was passed in England circa 1609 to end patents on trade and limit them to patents on invention. We limited patents to patents in the useful Arts for the exact same reason.

        We do not have to decide other issues to decide this case. Simply ban, once and for all, patents on business methods and trade, patents that history knows as the odious monopolies.

        1. Ned – you need to ground your desire to a little reality.

          I have shown you points and instead of responding in law, you respond with your Crusade. You still run away from what I provide to you.

          Congress allows business method patents (pre-Bilski)
          The Court allows business method patents (Bilski – hint: Stevens lost his majority position because he attempted an outright explicit re-writing of the words of Congress)
          Congress cemented in the allowance for business method patents (post-Bilski in the AIA, cementing in the statutory category landscape (anti-judicial activisit insurance) while allowing some post grant review to a subset of business method patents.

          Asking the Court to do now what it failed to do before, and in the face of the direct words of Congress – who have the Constitutional authority to write patent law (and NOT the Court) is beyond the pale of respectability.

          Audacious.

          1. anon, the government brief made it clear that congress did not intend in passing the prior user defense to business methods to imply they were eligible. Congress repealed that special legislation, and instead enacted CBMs legislation that was intended to make sure such patents were invalidated unless they covered technology.

            The Supreme Court will take note.

            Congress dealt with the offspring of State Street Bank with utmost opprobrium, not endorsement.

            The Supreme Court will take note.

            And, hopefully, will act accordingly — to support congress and not defy it.

            1. Your views on this subject have been discussed before, and you are completely and absolutely wrong.

              You need to go back and review the drubbing I gave you post-Bilski and how – with your own reference source on how to read Court decisions – I showed you that you were dead wrong in your attempted hijack and anti-business method agenda on what Bilski meant.

              You need to go back and review the EXPLICIT words of Congress in the AIA and how the status of the business methods as accepted post-Bilski was cemented in place. You are trying to hide a whole army of elephants that even Stevens could not do in the wrong mouse-hole of Congress making sure that future judicial activists could not do what you are attempting to do.

              Your pleas of Congress treating the notion of business methods as patent eligible with utmost opprobrium FAILS the very simple option that Congress had and did not take: TWICE – an outright ban in plain and simple words.

              Further, you still have not corrected your earlier misrepresentation of the most current government brief.

              Your misrepresentations here are simply audacious.

          2. The Congress can write any statute it wishes, but the Supreme Court decides if it comports with the Constitution. Business method patents may well violate the First Amendment in terms of speech and assembly, as well as being abstract ideas, which are not patent eligible.

            1. (sigh) so says the man who has expressed complete absence of knowledge of the law.

              What we see here is nothing more than the regurgitation of the mindless anti-patent rhetoric.

              Utter dross.

        2. While your argument sounds sympathetic, the problem is that “business methods” are a strange animal. All inventions eventually are used in business!

          In think State Street was right in one thing, saying that there is no business method exception per se (nor a mathematical algorithm exception per se), but rather applciations covering business and or software should be subject to the same criteria as all other applications. Yes, I am aware that it was a mistake to proclaim a “useful, concrete and tangible” result the criterion.

          The problem is that patents are considered a reward for brainwork, and publishing its results, and protecting associated investments, with a “property rule”. The exceptions are based on tradition – but tradition is not an argument. Patent law must move with the times.

          My theory is that the emphasis in explaining patents shuld be on the exclusivity. Which makes them an exception in a free market economy.

          1. Your theory is a crock of SHT infused with enough anti-patent communistic tendencies to destroy the entire patent system.

            (said in a non-personal, purely directed to the subject manner).

            1. Non-personal, of course!

              Incidentally, I have been criticized by patent-critics for making such remarks! Saying that State Street was not entirely wrong is risky, when you talk to anti-patent activists.

              But let me be generous, even if you nearly offended me. Feel free to ask if you have any questions, since this topic seems too complicated for you!

              This is a field full of paradoxes. While you believe that less patents is communistic, in my opinion, more patents is communistic, because patents limit free market competition!

            2. since this topic seems too complicated for you

              Banal and meaningless – seeing how clearly my points are much better than yours (since you seem unwilling to address them directly) and that your rhetorical tools whither upon closer inspection.

            3. Attempting to obfuscate with some “full of paradoxes” all the while ignoring the personal property aspect of the patent right does seem to smack of a commune-style bias of that patent right.

              Personal property.

              How the heck could one so ‘balanced’ miss this critical nature of the item under discussion?

              /eyeroll

      3. The Retailers brief is very good. It brings pragmatics into the common law in a respectful and informative way. Martin Snyder’s comment here starts well also.

        Mr. Martin’s comment fails in suggesting the possibility that software should ever be patent eligible, undermined by the central point that sales, marketing, and prices are, in fact, real and tangible results. If software with a mechanical result is eligible, then every troll extorting the retailers just has to point out that retailing involves moving stuff around and all retail software is eligible.

        “To me, the ideal result would be a finding that business method claims are not patent eligible under 101, that novel software is patent eligible under 101″

        The proposed result is incoherent and CAFC will rightly reinterpret it to quickly reincorporate business methods into the patent system. Business methods are not a clearly and strictly defined thing different from other patentable processes. Furthermore, the software developers are no longer on your side once you advocate attacking them with patents against their work; gleefully throwing them under the bus here is unreasonable.

        1. It’s a good thing then that the anti-software patent lemming group of software developers are not in charge of either writing or interpreting the law, eh Owen?

          1. Well, computer programmers are smart, diligent, precise, and overwhelmingly honest. They take constructive criticism and cooperate pretty well. A careful, scientific approach to development and policy is common in the industry.

            So I think programmers would be great at writing laws, anon. They’d be a lot better than the borderline crooks we’ve got.

            They’re pretty introverted, though, so I don’t think they’ll get elected to the legislature much.

            1. Some of the smartest people I know in the anti-patent world of lemming programmers are the most gullible and dumb people when it comes to anything outside of their technical comfort zone.

              We are talking about dealing with other (non-technical) people, emotions, politics, and yes law.

              What you think of programmers as being great at law only reveals your inability to be objective and understand what really goes on in other spheres of life.

              Sorry to rain on your parade, Owen – but you are not even close to reality.

            2. You are absolutely right. Ecomic research (Blind et al.) has revealed that programmers rarely read patents, unlike e.g. chemist who really consider patents a source of knowledge.
              The reason is that software patents often do not reveal any useful information, they just claim a a function so that competitors can not write a program that provides the function. Note that prof. Lemleys recent publications on “functional claiming” confirm this practice.

              Basicalyl patents are used in two different business models 1) to prevent competition 2) to sell technology. For software, patents mostly are used in the former business model.

              Does it help innovation if competition is curtailed? That sounds like a COMMUNISTIC approach.

            3. The business use of the personal property is really a non-sequitur Reinier.

              You are aware that there is no ‘use’ requirement in US patent law, right?

          1. I can see now that if we are going to have any meaningful discussions on “abstract” we are going to have to define terms such as “tangible” and “intangible” so that we clearly understand what we are talking about.

            Ordinarily, one would that “tangible” means the opposite of “intangible.” Tangible implies that something can be touched, carried, weighed, picked up and thrown. None of the things that Owen talked about as being tangible have these attributes. And yet he says that they are tangible while just about everybody else would say that they are intangible.

            It is clear where the likes of Owen are going. They are twisting words that have a well understood ordinary meaning into the something else. Their game is clear and obvious.

            1. Okay, a price is a social relationship. Real goods are being moved from the possession of one party to that of another and the agreement they make about how much of one good to trade for another is the price. The goods are tangible. The transportation between one’s possession and another occurs by tangible means.

              The social relationship itself? Well, you have a fine case that that is not really tangible. But it has real, physical, visible, and touchable effects in the world.

              When the retailers or Mr. Snyder above or the awful US Government brief supports the patentability of “linear programming, data compression, and the manipulation of digital signals,” quoting from Kennedy’s minority opinion in Bilski, they’re giving away the entire question. I’ve written linear programming systems and data compression code and applied them to real world problems and it is absolutely certain that if linear programming and data compression isn’t ineligibly abstract, then nothing ever done on a computer is ever abstract.

              When they declare the common and well known business methods are somehow abstract, they’re using §101 to wedge a — valid — §103 argument into SJ in order to reduce legal fee extortion on bad patents. They should just ask the Supreme Court or Congress or the Judicial Conference to order that certain §103 challenges need to be heard before claim construction.

              If they really wanted to block abstract patents and their inherent power to cover business methods, they need to oppose any patents on logic and mathematics, including computer software. Leaving room for linear programming — or machine learning, data mining, digital image processing, Kalman filters, &c — just because it seems complicated and technological to them will leave the CAFC without concrete guidance.

              If they get what they say the want and make software patent eligible, soon the CAFC will overturn any such Supreme Court decision Quinn-style and restore business methods to patentability.

            2. Agreed, Owen, the government brief does not really oppose abstract patents per se, just business methods.

              I can see a categorical exclusion for mathematical algorithm’s per see.

              I can see categorical exclusions for business methods per se.

              But data compression and encryptions need to be considered differently. How to draw lines is hard.

            3. Ned, everyone knows you “see” “I can see categorical exclusions for business methods per se.” – the problem as has been pointed out to you is that you ‘see’ this only by clenching tight your eyes and ignoring what ever branch of the US government has said.

      4. Marty,

        Can you copyright math?

        Can you copyright something that is abstract?

        Can you copyright something that is “totally in the mind?”

        Can you copyright something that has no structure?

        (even money on even you getting copyright law more correct than Malcolm and Ned)

        1. You can copyright a math textbook.

          You can copyright an abstract image.

          You cannot copyright something in the mind because it has not been fixed to an enduring medium.

          Can any “thing” exist without structure?

          struc·ture
          [struhk-cher]

          noun
          1.
          mode of building, construction, or organization; arrangement of parts, elements, or constituents: a pyramidal structure.

          2.
          something built or constructed, as a building, bridge, or dam.

          3.
          a complex system considered from the point of view of the whole rather than of any single part: the structure of modern science.

          4.
          anything composed of parts arranged together in some way; an organization.

          5.
          the relationship or organization of the component parts of a work of art or literature: the structure of a poem.

          Your comment is, how best to put it….utter dross?

          1. You did not answer my first question. Instead you set up a strawman.

            Answer my first question.

            You did not answer my second question. Instead you set up a strawman.

            Answer my second question.

            You answered my third question. Thank you. Note that your answer disposes of Malcolm’s tired and trite strawman technique of changing conversations about parts of (fully patent eligible) claims comprising parts in the mind with claims totally in the mind.

            You did not answer my fourth question. Instead you set up a meander into the weeds and ended up with a poor attempt at an insult (really only insulting yourself).

            Answer my fourth question.

            – at this point, your one out of four is better than either Malcolm or Ned.

          2. Is it any surprise really that Marty fails to answer three of the four questions put to him?

            I wonder what he is afraid of. He is using his real name – why is he so afraid?

      5. Martin, though the 2-option answer to your quandary is actually quite simple, it’s not one you’re likely to embrace:

        1. Stop infringing.

        2. Negotiate a fair and reasonable royalty.

          1. You have a problem with predatory litigation? Then attack that through the proper channels (hint: that is not the patent channel).

            You see Marty, not understanding law and wanting to mess up law just for your own personal benefit is not the way to get things done right.

            Childlike? LOL – Just not seeing how your insult actually fits.

            Now on the other hand, you being childish, yep – that’s pretty obvious.

    2. Paul, perhaps you can answer me this, but why do you and the PTO think that 101 is a proper issue that can be raised in IPRs and CBMs?

      1. Ned, 101 is not a ground for an IPR.
        A CBM is a specialized form of a post-grant proceeding, for which the scope is set forth in 35 U.S.C. 321(b): “(b) Scope- A petitioner in a post-grant review may request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim).” [There are some limitations on that Scope set forth in the CBM statute itself including 102(e) prior art.] Both the PTO Board and the several CBM petitioners doing so consider 101 to be grounds for a CBM. I merely note that that is indeed a very important issue, because many of the patents attacked in CBM actions are broad business method patents not unlike those in Bilski, Alice, etc. I would be interested in seeing if anyone is seriously challenging 101 based CBM’s?

    3. Paul Morgan identifies a keystone issue where the CAFC refuses to allow bad patents to be invalidated under §103 without multi-million dollar trials.

      It’s possible that the only way to bring some sanity to the patent litigation mess and thus to patent practice is by removing the appellate jurisdiction of the CAFC over district court cases and returning to exclusively to appeals from the Court of Federal Claims. The current CAFC is corrupted by the individual judges’ personal interest in expanded prestige and income from a cancerous patent system. Generalist appeals courts that would decide cases more often on a sound basis.

      1. I laugh – really laugh at the smokescreen that is perpetually puffed about how 103 is not good enough law because of cost and that means that it is totally OK to butcher other law to achieve some desired end.

        That is some serious delusions at work.

        Almost as delusional as Ned with the cancerous-because-I-don’t-lie-it-but-sound-because-I-do-like-it mantra there Owen.

        1. Real people losing their businesses and livelihoods for doing nothing wrong (e.g. “winning” their cases) is a mere smokescreen to an ideologue who worships the LAW and cares nothing for justice.

          1. Marty,

            There you go again ASSuming your self-righteous belief that you have done nothing wrong.

            You define justice as getting your way without understanding what the law actually says.

            Watch the Shawshank Redemption – you are just another ‘innocent’ victim of the law and those f@#king lawyers, aren’t you?

            1. Anon you deny that any party ever wins a case and suffers ruinous financial harm in so doing?

              And since you cant do that without being intellectually dishonest (your favorite bugaboo), you will resort to saying yea, it happens but rarely if ever, when in fact, it happens constantly.

              My case has not yet run its course, and lots of innocent people are in prison.

          2. Indeed exactly what I was thinking. Though if you know anything about anon you know that. It is one of the first things you’ll notice about him other than his being an insuferable arse 99% of the time.

            His worship at the alter of old school patent law has addled him to a truely disgusting and indeed perhaps even frightening level.

            But then, it is little wonder, as he is simple minded in his ability to comprehend complexities. His latest comment is simply the last in a long line of the same.

            1. insuferable arse 99% of the time

              Translation: anon is correct in all that he posts and he embarrasses the anti-software patent posters so thoroughly that the anti-software patent posters despise him.

              Gee, thanks for the compliment, 6.

            1. I have never said such an absurd thing. Here we’re talking about money, dollar bills yo, not feelins ya re re. Specifically we’re referring to the the amount of dolla bills required to access “justice” in the patent system these days.

              Jesus, did you not even read the post you’re responding to or are you just ignoring the whole thesis?

              Actually nm, you’re not good enough at reading comprehension to have picked out the thesis. Well I just laid it forth for you up above. So there you go. Maybe now you can read his post and understand what he’s talking about.

            2. Specifically we’re referring to the the amount of dolla bills required to access “justice”

              LOL – guess what will happen “Yo” if you solved the actual problem of court costs (which, you should know, is not limited to patent suits).

              That’s right: there will be more law suits.

              Totally LOL’able: “Dude if anything I personally care way too much.” – and understand too little. That’s that lemming belief system in gear – you are a tool being led about “because you care.” Stop. Think. Then care.

              Check out what my namesake says at
              link to ipwatchdog.com

              (hint: post 10)

            3. It is merely your assertion that “more lawsuits will come”. But even if you are correct, and lets presume you are, that is in the aggregate, not necessarily on the individual scale. And so long as everyone gets their day in court justice is being served. Which is what this convo is about in case you forgot.

              Also, increasing the number of lawsuits wouldn’t necessarily be a bad thing in the long run as congress would take note and reign in their entitlement program.

            4. You quite missed the point being used as propaganda in the “Troll” with hunt scare that too many lawsuits are out there. Witness the trumping up of reported numbers because the change in law by the AIA.

              Wake up and realize that you are a tool.

            5. “You quite missed the point being used as propaganda in the “Troll” with hunt scare that too many lawsuits are out there.”

              Oh no bro I remember it quite well. That’s what’s getting congress’s attention. Or at least one thing that is. I know very very well. That’s expressly why I said it wouldn’t be such a bad thing in the long run. We get congress’s attention, they start to reign in their entitlement program. Bing bang boom, problems that are currently masked by the inability of people to get justice due to dolla bills start to get solved.

              “Wake up and realize that you are a tool.”

              Perhaps so. If wanting justice to be available in this country is “being a tool” for people that want justice then sure thing brosef. Totally a tool.

          1. Whereas examiners likewise care nothing for “justice”, just hitting their count quotas with as many “no” actions as they can, to cover their arses. In “not caring about justice”, you, sir, inherently are an expert.

            1. “Whereas examiners likewise care nothing for “justice”, just hitting their count quotas with as many “no” actions as they can, to cover their arses. In “not caring about justice”, you, sir, inherently are an expert.”

              Dude if anything I personally care way too much.

      2. There is no doubt at all that the Federal Circuit is a failure. Its continued presence in DC makes it unusually susceptible to the group think mentality of the people and lobbyists who inhabit the Capitol.

        Having multiple Circuits is good for the development of the law, good for a robust debate on critical issues, etc. The Federal Circuit does a very bad job overall, but it arrogance in thinking that it can defy the Supreme Court is one of its failings.

        I read a law review article published long ago that spoke of the CCPA that even then, in the 1940’s and ’50’s, refused to apply Supreme Court precedent. That tendency only increased after Rich joined them. And it continues today, long after Rich left the court, indicating that Rich was not the only problem.

        Had the Federal Circuit not been formed, we would never have had the problems we have had with eligible subject matter, with functional claiming, with no enforcement of 112(b). Instead we would have had courts looking to the Supreme Court cases and actually following them.

        But the like of the AIPLA will never agree to a restoration of the status quo ante. The reason seems obvious. Their influence would decline.

        1. Another vapid attempt by Ned to deny the actual source of the problem in patent law.

          Ned, your longing for law created by common law evolution is fail given the Founding Fathers express delegation of authority – not to the judiciary – but to the legislative branch.

          You really need to accept the change in law brought about by the Act of 1952 that removed the common law setting of what “invention” means.

          Why you run from this fact is quite a mystery.

            1. Yes Ned – the real purpose of giving full weight to the words of Congress in the 1952 Act and removing a pernicious power from the addicted Supreme Court.

              Since this comports with what the Constitution actually says as to which branch has the authority to write patent law, I continue to wonder why you so clearly push for the Supreme Court to have this power. Your continued refusal to see who is to blame for mucking up patent law is perplexing. Clearly, you believe that a common law approach is better, and yet, I cannot understand how you fail to see that such is not the system we have under current law.

            2. Well, time and again, anon, both Rich and Rader talked about the ’52 Act as a “beginning” of patent law. If a proposition, whatever it was, was not set forth in the Act, it was deemed overruled. That thinking clearly infected the CCPA and probably more than just Rader on the Federal Circuit.

              Read In re Swinehart once more. One of the reasons cited for not following the functional at the point of novelty rule was that it was not codified in the ’52 Act.

              I have heard Rader also bemoan the fact that when an issue gets up to the court, they review their own cases, not those of the Federal Circuit.

              So, indeed, there is a fundamental disconnect between the CCPA and the Federal Circuit on the one hand, and the Supreme Court on the other.

              It comes out clearly in the Amazon brief in Alice v. CLS Bank.

    4. As a reality check SJ succeeded in KSR. The criteria are well explained in that decision. So why are there not now as many KSR hearings as there are Markman hearings? Is it that litigators are unwilling to conduct a straightforward technical analysis and out forward an obviousness case where justified at that stage.

      In Alice I have not seen a surprising new result. I failed to see that such a result is even alleged. That is a very good starting point.

      1. Paul – as explained above, such is not a good starting point for a 101 discussion.

        You do know the difference between the current discussion based on 101 and what you want to talk about, right?

    5. As a reality check SJ succeeded in KSR. The criteria are well explained in that decision. So why are there not now as many KSR hearings as there are Markman hearings? Is it that litigators are unwilling to conduct a straightforward technical analysis and out forward an obviousness case where justified at that stage?

      In Alice I have not seen a surprising new result. I failed to see that such a result is even alleged. That is not a very good starting point for defending the patent.

  17. “The basic setup of the CLS Bank is the argument that a newly discovered abstract idea coupled with conventional technology is not patent eligible. ”

    So then, The Wright flier was not patent eligible as it merely coupled a newly discovered abstract idea (wing warping) with conventional technology (wood, cloth, rope/cable, pulleys, etc.

    OMG when will this nonsense end.

    1. I agree Les. Any patent claim can be invalidated under the Lourie — I get to say what the abstract idea is and then proclaim nothing else adds structure to the claim.

      Name any claim and it can be invalidated under this method.

      1. The claims don’t matter according to this guy. It doesn’t matter that what is claimed is clearly a machine.

        What matters is the machine is built from old components and implements “an abstract idea.”

        My new bro 6 can’t use “gist” type reasoning at the PTO, but when we get to the Supreme Court we gets to gistify and mystify…

        1. “The claims don’t matter according to this guy. It doesn’t matter that what is claimed is clearly a machine.”

          But it does matter if they’re clearly a machine and do not preempt all “wing warping”. Even though “wing warping” itself may not necessarily be an “abstract idea” as it contains within itself “wing”. That’s like saying “table bending” would be an abstract idea. I’m not 100% sure you’re going to be able to convince a carpenter bending tables of that.

          1. Likewise, I’m not so sure this guy could convince an accountant that maintaining the recited shadow accounts is an abstract idea.

            Also, I think if you look into the history, you will find that other plane manufactures felt that all wing warping was preempted by the Wright Bros patent, and they were up in arms about it.

            link to en.wikipedia.org

            1. If he is not an imbecile it should take less than a minute. An imbecile might take a few minutes but with the right questioning I’m sure even the imbecile accountant would stumble upon it being abstract.

              Oh I’m quite aware of what was covered and what the claims were. Doe

        2. It might be germane to note the Wrights hurt their reputation badly, failed in business, and otherwise did not prosper by use of the patent system. They should have worked on building and selling better airplanes….

    2. Les, I will agree that the use of the “label” abstract idea to deal with subject matter that should be excluded as a matter of policy —

      — laws of nature
      — products of nature
      — mathematical algorithms
      — business methods

      is inapt. That is the vice of Bilski, lack of clarity, noted even by Stevens concurrence.

      You will note that I predict that business methods will soon join the list of excluded subject matter.

      I doubt the Court will go farther and try to define what it means by “abstract.” It doesn’t have to do that to decide the case.

      1. Will they define what a “business method ” is?

        I mean, if I’m a drug manufacturer, my business is making (and selling) drugs.

        So, can I get a patent on a method of making a drug, or is that a method of doing business and therefore excluded?

        1. Les,

          The point not being discussed and shrouded in dust kicking is that the business of business itself has evolved greatly over the last 60 years.

          Scientific methods have been rigorously applied to nearly all business mechanisms. One only has to recognize Demming and others like him to easily see that business methods are every bit as scientifically developed as any other useful art.

          This is not to say that the founding fathers did not recognize business as a useful art – they surely did – just as the patent office surely did. It is to say that any dust-kicking and anti-business method rhetoric can plainly be seen as unfitting and a pure ultra vires attempt to force a philosophical mindset where there is simply no legal support.

            1. You apparently refer to the famous tract by Publius entitled “Ye Olde Business Methodes Shall Not Be Presumed To Be Patentable.”

              Your education is underwhelming. Let me Google supplement it by revealing who Publius was, at the very least.

            2. Anon I’m referring to the ones the community here have discussed. But I could toss in all the ones I’ve read so far from the period, which is at least 4. They’re not hard to find brosefus and they’re all going to say the same thing as all the rest of the books from that period say.

              Me, NWPA et al. just got through talking about one on here the other day but I can’t seem to find the link off hand for the one we discussed recently. NWPA was let down because his beloved compooter programming art was listed under “sciences” rather than “useful arts”. Though “business” or anything like that didn’t even appear at all in a book that purported to be comprehensive. I doubt that they’d leave out a category that would be so major in a work purporting to be comprehensive.

              But here’s some about the useful arts that “business” or methods of doing business didn’t seem to make it into.

              link to books.google.com

              link to books.google.com

              link to books.google.com

              link to books.google.com

              Here’s a great one:

              link to books.google.com

              Surely won’t even find “business” in the list of terms in the useful arts:

              link to books.google.com

              “Business” just never seems to make the cut in those old ones eh?

              But Wow just here tonight a discovery is made! According to the last one in 1849 (just before civil war) less than 2000 patent apps were sent in (yet the author considers this “enormous”) and about half were granted. Astonishing. I wonder what he’d think of the 400k we get now?

              And check this out, here’s a new wrinkle in my investigation into this subject. Around 1900 (way after the founders of course which is the topic of our conversation) we can observe that things start to change. See in this volume where they start tossing in “commerce” and describing the various actual technologies that support commerce along with “bookkeeping” and “accounts” (Accounting?). Still not exactly your standard “business method” fare that we’re discussing here, but you see the how the phrase starts to morph over time. I’m going to guess that by the 1970’s, ta rds that are kind of bad at language have started just tossing in all manners of commerce into the useful arts. That’s how language evolves. And how substantive patent law has arbitrarily changed with it to create the present predicament.

              link to books.google.com

              All this gnashing of teeth because congress didn’t keep an official dictionary from their times for us to use. Or set aside which arts they explicitly wished to exclude.

            3. Dammit anon, I’m getting blocked by D’s new software from posting links to google books. I got blocked this morning too with some really nice music tracks I posted.

              Anon I’m referring to the ones the community here have discussed. But I could toss in all the ones I’ve read so far from the period, which is at least 4. They’re not hard to find brosefus and they’re all going to say the same thing as all the rest of the books from that period say.

              Me, NWPA et al. just got through talking about one on here the other day but I can’t seem to find the link off hand for the one we discussed recently. NWPA was let down because his beloved compooter programming art was listed under “sciences” rather than “useful arts”. Though “business” or anything like that didn’t even appear at all in a book that purported to be comprehensive. I doubt that they’d leave out a category that would be so major in a work purporting to be comprehensive.

              But here’s some about the useful arts that “business” or methods of doing business didn’t seem to make it into.

              link to books.google.com

              link to books.google.com

              link to books.google.com

              link to books.google.com

              Here’s a great one:

              link to books.google.com

              Surely won’t even find “business” in the list of terms in the useful arts:

              link to books.google.com

              “Business” just never seems to make the cut in those old ones eh?

              But Wow just here tonight a discovery is made! According to the last one in 1849 (just before civil war) less than 2000 patent apps were sent in (yet the author considers this “enormous”) and about half were granted. Astonishing. I wonder what he’d think of the 400k we get now?

              And check this out, here’s a new wrinkle in my investigation into this subject. Around 1900 (way after the founders of course which is the topic of our conversation) we can observe that things start to change. See in this volume where they start tossing in “commerce” and describing the various actual technologies that support commerce along with “bookkeeping” and “accounts” (Accounting?). Still not exactly your standard “business method” fare that we’re discussing here, but you see the how the phrase starts to morph over time. I’m going to guess that by the 1970′s, ta rds that are kind of bad at language have started just tossing in all manners of commerce into the useful arts. That’s how language evolves. And how substantive patent law has arbitrarily changed with it to create the present predicament.

              link to books.google.com

              All this gnashing of teeth because congress didn’t keep an official dictionary from their times for us to use. Or set aside which arts they explicitly wished to exclude.
              _________

              In any event, I guess you can’t have links. But just go to google and put in stuff like “cyclopedia of useful arts” “useful arts vol 1″ for now it should bring up some good stuff.

              In either event I”ll try to post links later. D’s going to have to fix up the posting of links at some point.

            4. 6,

              The gnashing of teeth is NOT because of Congress.

              It is because of the addiction that the Supreme Court has to the power of (implicitly) writing patent law that Congress removed in 1952.

              The Court has a habit of sticking its fingers into the wax nose of 101.

              Join the modern world. Recognize with just a little common sense the reality all about you. Or put your ‘belief’ system into actual practice and forego the innovation that you would deny protection to. There must be a lovely commune somewhere where your beliefs would be welcome, and you can contribute according to your ability and take according to your needs.

            5. Anon I just went through the trouble to post a huge number of links and look a lot into giving you actual evidence bearing on the question at hand. They are now posted from the spam catcher of D’s. Do you care to take a look at that actual evidence as divorced from Stern’s paper?

              On the topic of the paper I just happened across, you’re right that it does appear to be by Stern. Though he may be biased he also cites to some actual historical evidence in his paper written by George Washington. So no, I don’t enter the paper into evidence though I do note that his paper cites some evidence.

            6. “The gnashing of teeth is NOT because of Congress.

              It is because of the addiction that the Supreme Court has to the power of (implicitly) writing patent law that Congress removed in 1952.

              The Court has a habit of sticking its fingers into the wax nose of 101.”

              Well that’s your subjective opinion brosefus. If the congress wanted the USSC out of the picture they could have amended the statute at any time in the last 60 years. They didn’t, so the USSC is still in. That’s how they abdicate bro. Seriously, how can you not understand this? Congress does it in all manner of contexts, not just the patent context.

            7. 6 errs with “Well that’s your subjective

              Sorry 6 – you are doing that thing again where what you do and believe is projected on all others.

              But as I have explained to you, there are things that are not “all subjective in the mind so that you can say anything you want

              What happened in the 1952 Act and the removal from the Court to use common law practice to set the meaning of ‘invention’ is one of those objective reality things that you do not get to play off as “subjective in the mind.”

              Reality – come join it.

            8. 6 mistakes a re-presentation of naked propaganda with some sort of objective view with his comment of “Anon I just went through the trouble to post a huge number of links and look a lot into giving you actual evidence bearing on the question at hand. They are now posted from the spam catcher of D’s. Do you care to take a look at that actual evidence as divorced from Stern’s paper?

              Sorry 6 – but what you presented would not be accepted as evidence.

            9. “Sorry 6 – you are doing that thing again where what you do and believe is projected on all others.”

              And you’re doing that thing again where you’re a re re and don’t understand that everyone has an opinion and that yours is not somehow “the amazing”. They’re just like asholes, everyone’s got one.

            10. “Sorry 6 – but what you presented would not be accepted as evidence.”

              So books and letters from the 1800’s are magically not “evidence”?

              Hmmm, and why is that mr. re re?

            11. “What happened in the 1952 Act and the removal from the Court to use common law practice to set the meaning of ‘invention’ is one of those objective reality things that you do not get to play off as “subjective in the mind.””

              Maybe as to “invention” but not as to excepted subject matter, which is what we’re talking about re re.

            12. 6,

              Again you fall back to the vapid “subjective in the mind make up anything about law” with your “everyone has an opinion

              Pay attention: the law is more than just “opinion.” Yes 6, you really can be (and very very very often are) wrong in a discussion about law.

              And since you have a hard time walking and chewing gum at the same time, let me tell you that “Maybe as to “invention” but not as to excepted subject matter, which is what we’re talking about re re.” is completely wrong because excepted subject matter (i.e. 101) is the same thing as what invention is (i.e. 101).

              Again, you are thick, and that is not a good thing.

  18. Dennis, thank you very much for all your efforts in wading through and summarizing all these briefs.

  19. Dennis, according to CLS Bank, Alice did not develop any software to implement its patent method, nor they disclose any software algorithms in its specification or drawings that described the claimed method. In other words, the specification describes little more than the functions claimed.

    What Alice did is invent the business method and simply say “computed it,” transposing the method steps onto conventional computer hardware with no change in the computer hardware functions. What this covers then is all computing hardware, all software, that implements the business method.

    This case is not about software or any effort that went into developing software that is intended to be protected. It is about a business method.

    The briefs and arguments about protecting software do not clearly develop just how would one claim it in any way different from the claims here, or what is necessary in terms of disclosure is required to support such a claim. That is a conundrum that has no easy answers. As you point out, Microsoft see the distinction but offers no real solution. Neither does anyone else, it appears.

    The Supreme Court can decide this case without deciding the entire issue of software, because no software is disclosed here. But making the necessary distinctions is going to be hard.

    1. Advice to Court, if you decide this case based on “fundamental economic principles,” please give us a clue as to what THAT means: define its edges, lay out its metes and bounds.

      Stop, please stop, being indefinite in your holdings.

    2. Ned – I think we should be careful not to turn this case into a hyperbole that the Supreme Court can wipe away without much thought and without providing any further guidance on the scope of the abstract idea test. This case was decided at the summary judgment stage and so it makes sense to weigh the facts in the patentee’s favor.

      If you look at the patent, you’ll see that the algorithm disclosed is at least fairly complex and detailed. (Look at the figures in the patent: link to docs.google.com). Although the software code is not disclosed, the disclosure is such that a computer programmer could then likely implement the invention without requiring further invention.

      The point here is that the patentee is (at least in some aspects of the invention) doing more than simply saying “do this on a computer.”

      So, the question is probably more properly whether the following invention patent eligible: A somewhat complex arrangement of computer hardware and software instructions designed to implement a particular algorithm for settling contracts while avoiding risk of loss?

      Now, regarding preemption. I think that I agree that the claims here seem to essentially preempt use of this particular algorithm in the modern world. However, it turns out that there are many potential methods for settling contracts while avoiding risk of loss and so the patent here does not preempt that general area.

      1. What is the support for “preemption use of this particular algorithm in the modern world”?

        LizardTech is the proper way to think about preemption. You only have a problem, if you have preempted the use of your invention beyond the scope of your enablement.

        1. Lourie questioning during Alice was outrageous. He basically said in oral arguments unless there are at least 2 ways to design around your patent then your patent is invalid. Does any sane person see a problem with this?

      2. The disclosure itself is at a very high level and does little more that illustrate the claimed method. I will assume that any skilled programmer may develop code to implement the method without undue experimentation.

        But the combination of the above supports and does not defeat the notion that the claimed computer implementation is trivial. There is no invention in that. What we have is a business method and a limitation to “compute it.”

        Thus the limitation to a computer hardly adds anything but the conventional to the business method.

        This places front and center whether business methods, which represent a subcategory of the genus abstract, are eligible subject matter. The Supreme Court really cannot avoid the issue now. They have to draw a line in the sand.

        My other point is that there really is not novel software involved here, and the issue of protecting real developments in software and how to claim them are not present in this case. The Supreme Court does not have to decide that issue and given the long history of the court to decide narrowly, I hardly think they will be so bold as to decide issues not presented.

        1. whether business methods, which represent a subcategory of the genus abstract

          Your version of the “I define it how I want to define it” Very Carroll game is flat out rejected.

            1. “Anon, at some point the Supreme Court is going to have to say what is excluded and why.”

              I don’t know, Ned. They’ve gone 42 years since Benson and 6 since Bilski without making any effort to say exactly what’s excluded. The whole court has turned over without trying to answer the question. Maybe it will turn over again before they get around to it, if they ever do.

            2. “Isn’t that a job for the branch of government to whom the power to write patent law was given?”

              I would agree with you but they’ve obviously abdicated their responsibilities here just as surely as they have in just about every other sector of the running the US. They’re obviously wanting to punt that to the courts, just like they have for the entire history of the country (see what does “invention” mean etc.) and then pick up the pieces when the court fails and the whole thing is ready to explode or has exploded.

            3. “They’ve gone 42 years since Benson”

              The old attorneys seem to be agreed that business methods didn’t really show up until state street. Before that they were rejected and the CCPA upheld those rejections. And they’re likewise pretty clear that until Diehr things looked pretty bleak for software patenting as well.

            4. 6,

              As noted, it is precisely because Congress has not abdicated its authority that you see the charley foxtrot rendered into patent law by the Supremes.

              It was Congress fault in part though – they did punt early and give the Supremes early authority to define ‘invention’ by common law practice that created the finger-in-the-wax-nose addiction. And perhaps this would not have been an issue, except the Supremes went all Lochner and anti-patent so much so that Congress took that power away in 1952.

              And you are simply wrong with: “The old attorneys seem to be agreed that business methods didn’t really show up until state street.” Prof. Crouch had a guest post here showing business method patents throughout the history of the U.S. So sad for you that the truth is different than the spin you want to use.

              Your belief system is in gear again preventing you from understanding just how wrong you are.

              Open your eyes, son.

            5. Even the idea of constraining the limits of innovation by wanting to have a priori some list shows a fundamental lack of understanding of innovation and invention, which is keyed on the unknown and still developing.

              Any attempt to lock the scope of the patent right into the 18th century is an immediate FAIL of understanding why we even have a patent system in the first place and is as asinine as the thought that we can have too many patents. Only those who do not understand that a patent represents a balanced agreement and a Win-Win for both innovators and society adhere to either the wah-wah too many ideology that so often girds the “let’s lock patents into 18th century thinking” mindset and completely misses the fundamental nature in the actual words and intent of the Founding Fathers (cue the vapid stale script responses of Malcolm – any of the AOOTWMD, meds, “Kenneth,” Vinnie Barabino “Huh?”, English as a second language, or even offensive race card playing tripe).

            6. Anon, they’re still punting brosef. Just like they always do, literally by their own design. They just pulled the ol switcherosky on Justice Scalia so he won’t have the fall back excuse he had in Bilski. Even more justices might notice this and switch sides along with him. That’s them punting. Hoping the USSC sorts things out.

            7. “Even the idea of constraining the limits of innovation by wanting to have a priori some list shows a fundamental lack of understanding of innovation and invention, which is keyed on the unknown and still developing.”

              Brosef taking away patentability in business methods doesn’t “limit innovation”. You can feel free to innovate on business methods all you like even sans patents for such. You just won’t get a piece of paper stamping it as a “government certified innovation” and a government legal entitlement to exclude to go along with it.

              And we, the public, won’t have the pleasure of listening to a lawltard drone on and on in legalese about your supposed “innovation” in a pgpub/patent. Oh noes!

              “Any attempt to lock the scope of the patent right into the 18th century is an immediate FAIL of understanding why we even have a patent system in the first place and is as asinine as the thought that we can have too many patents. Only those who do not understand that a patent represents a balanced agreement and a Win-Win for both innovators and society adhere to either the wah-wah too many ideology that so often girds the “let’s lock patents into 18th century thinking” mindset and completely misses the fundamental nature in the actual words and intent of the Founding Fathers (cue the vapid stale script responses of Malcolm – any of the AOOTWMD, meds, “Kenneth,” Vinnie Barabino “Huh?”, English as a second language, or even offensive race card playing tripe).”

              Well here’s the thing anon, I think even you agree that the relevant passage in the constitution was meant to impose at least some limitation on congress’s powers. That’s why the framers enumerated them in the first place. Now, them having been rather cryptic in what that limitation was supposed to be and what it wasn’t supposed to be is at least one thing that is causing the gnashing of teeth.

              But, as I’ve noted, to them, they weren’t being that cryptic. To them, the useful arts/other arts distinction was quite clear. As the refs I cited and George Washington’s letter (as well as some tommy J letters I have misplaced) show.

              Look I’m willing to grant that perhaps biz methods and software should be included under useful arts. I simply note that for the purposes of our instant discussion, there is ample evidence biz methods sure as f were not to the framers.

            8. The difference between useful arts and fine arts is really not that cryptic, 6.

              Useful Arts is not a set list of arts of the 18th century. It would be completely asinine to limit innovation so frozen in time, and the term is not meant to be so taken. What Useful Arts are, are ANY art that is useful as opposed to the fine arts.

              Simple set theory. Business is not, nor ever has been, a fine art. Sorry 6, but that is just the reality of this world.

            9. “The difference between useful arts and fine arts is really not that cryptic, 6.

              Useful Arts is not a set list of arts of the 18th century. It would be completely asinine to limit innovation so frozen in time, and the term is not meant to be so taken. What Useful Arts are, are ANY art that is useful as opposed to the fine arts.

              Simple set theory. Business is not, nor ever has been, a fine art. Sorry 6, but that is just the reality of this world.”

              So in other words, you don’t care one whit about the evidence showing how the people during the founding saw the term “useful arts”. You just want to decide yourself what it means and go with that. Further you’d like to draw a distinction between the useful and fine arts and just call that a day. Everything in existence having been split down the middle apparently with stuff that is useful on one hand and stuff that isn’t on the other.

              /facepalm

              Why would I bother telling you “what references”? Just stop asking if you don’t give a dam.

            10. 6,

              I do not care one whit about the fabricated propaganda that you constantly mistake for ‘evidence.’

              Wake up son. You need to understand the CRP that you have buried yourself in for what it is.

            11. “I do not care one whit about the fabricated propaganda that you constantly mistake for ‘evidence.’”

              Wtf are you talking about? It’s george washington’s own handwritten words along with books from the 1800’s. They’re not “propaganda” at all.

      3. Some things to keep in mind:

        ALL claims preempt – that is what they do.
        ALL claims are abstract** – the question is not are they abstract – the question is are they at the top of the ladder of abstraction (for 101 purposes – there are other questions, such as enablement for non-101 purposes).

        ** – that is, all claims of any value that are not super explicit and easy to design around ultra picture claims.

        Carry on.

  20. “Addressing the computer system and software claims, the U.S. Government agrees that they are certainly directed toward “machines” and “manufactures.” However, according to the government, those claims to physical products are properly termed abstract ideas because the physical elements “do not add anything of substance.””

    Nevertheless, they are machines and eligible under 101. You can’t dissect the invention that way. If the invention as a whole has no substance, then reject it under 102 or 103. But don’t allege that a machine is not a machine. 101 says nothing about abstract ideas.

      1. I agree too. The “abstract idea” is too nebulous. Take, for instance, encryption performed on a computer/mobile phone/etc. Encryption is a mathematical concept and therefore likely an “abstract idea”. But a computer that performs encryption is not. Too bad they ditched “useful, concrete, and tangible” as a test, as that at least made sense. Under the current “abstract idea” test, nothing that’s computer-implemented can pass 101 as the mere fact an idea can be implemented on a computer means the idea is “abstract” (as it’s nothing more than a bunch of what boil down to mathematical functions).

    1. “You can’t dissect the invention that way. ”

      Says whom? Certainly not the USSC. Maybe you’re thinking ol boy Rader et al?

      1. Says MPEP 2106.01 ** > Subject Matter Eligibility Analysis of Process Claims Involving Laws of Nature [R-9]

        III. DETAILED GUIDANCE FOR USING THE INQUIRIES
        A.

        “Claim analysis begins by identifying and evaluating each claim limitation and then considering the claim as a whole. —-It is improper to dissect a claimed invention into discrete elements and then evaluate the elements in isolation —- because it is the combination of claim limitations functioning together that establish the boundaries of the invention and limit its scope. ”

        Sigh…..always glad to read the MPEP to the Examiner Corp.

  21. “In his brief, Tony Dutra argues that the key here is utility, and that an advance in contract-settlement is not useful in the patent law context.”

    Yo, Ton-y, if it ain’t useful, den why is ” CLS Bank … using the patented invention to ensure settlement for more than a trillion dollars daily?”

    1. Les:

      That may be, but if there is nothing ingenious then massive commercial and practical success does not support patentability. When the CAFC decision first came out I read one of the patents in issue with some case. It was highly complex and involved, but there was no hint that anything out of the ordinary was happening. It was a boring document with boring flowcharts.

      As I remember Judge Moore in her dissent at that stage pointed out the absence of anything surprisingly new. The patentees were on notice and I am not sure that anything good to support patentability was subsequently found. Absent anything surprising all the commercial success in the world is of no avail.

      1. One quick comment to Mr. Cole:

        Do not confuse patent eligibility with patentability.

        Several times now you have rested a position on “surprising”, “ingenious”, “out of the ordinary” – THESE ARE NOT 101 POSITIONS.

        Keep conflation out of the discussion please.

        1. @Anon

          If you can tell me what is surprisingly new that Alice have discovered and come across me at AIPLA, I will be glad to buy you at least one beer. I think I am on a fairly safe bet here. This emperor, unfortunately, has no clothes. I wish it did because rubbish patents going repeatedly to the supreme court are not good for any of us.

          And if there is nothing surprising, ingenious or out of the ordinary that can be pointed to, the judges will find a pretext to hold the claimed subject matter invalid. In this case not patent eligible, because that is the issue before them. If you want them to write the decision the other way, you have to be able to point out something good about the invention. They may be supreme court judges, but they are ordinary humans first and won’t uphold rubbish. George Ticknor Curtis knew the difference in 1848, and I am surprised that so many people cannot see the point in 2014.

          1. You don’t get it that the discussion is on something else, do you Paul?

            There is a distinction between patent eligible and patentable, and your attempts her to clench tight your eyes and stamp your feet and chant 103isms (and poor ones at that) really do not help any discussion of the law, let alone the law of 101.

            If the Court cannot look at the issue before them and decide that issue, but instead is so tempted to warp the law for issues not before it, then the King is even more naked than you thought – and your urging them to be ordinary humans first is even worse legal advice.

            The ends do not justify the means.

        1. Oh yes it is, Les! If there is no invention on the face of the specification then grant of a patent offends your constitution, s. 101 which also refers to invention and s.103.

      2. Further to anon’s point, even in the patentability (not eligibility) context, there is no requirement for anything to be “surprisingly new” or “ingenious” or “not boring to Paul Cole”. In fact, your statement that “absent anything surprising all the commercial success in the world is of no avail” stands the law of obviousness on its head, as “all the commercial success in the world” is perhaps the sine qua non example of the Court’s indicia of non-obviousness in Graham v. John Deere.

        If something new has “all the commercial success in the world”, it would take inordinate chutzpah to call it “abstract” in the first place and “not inventive” in the second place. The entire point of American patent law is, after all, to advance the wealth and prosperity of society.

  22. As my views are well known- I will volunteer not posting on this thread if the other common advocates do likewise.

    1. Since I’m an uncommon advocate, I will not feel constrained by your restraint.

      “The court’s more narrow focus will be on providing a further explanation of its non-statutory “abstract idea” test”. Yes. Oh yes. A further explanation is what is needed, because why miss an unparalleled opportunity to layer yet another opaque tautological “explanation” on an undefined tautology?

      The Supreme Court needs to put down its pen and step away from the bench on this. The Court could not have bollixed up a clear and straightforward statute any more than they have managed to do with Section 101 and recklessly benighted “abstract idea” idea. If the Justices were intellectually honest they would admit that they have erected an abomination of jurisprudence and tear it down. Tear down this abomination, Mr. Roberts.

      1. Love the voice of Reagan in your call, Tourbillion.

        And as we can see, those common advocates could not keep out of the thread and could not help but spread their propaganda.

  23. This is such nonsense. First identify the abstract idea? That is a point of novelty approach. Moreover, using the Lourie method ANY claim can be invalidated.

    Why not just set up a secret court to invalidate patents. O’Bummer’s friends can submit secret petitions for invalidation and then Lemley, Posner, and Lourie can invalidate the patent according to the size of the campaign contribution.

    1. The other thing about this to consider is that what is being proposed is a completely new way of analyzing patent applications that should apply to all areas of technology. Abstract idea analysis? I would also argue that this flips the patent statute around from one of “…granted unless…” to “…granted if applicant can show …”.

  24. It is surprising how little authority there is about the word “discovery” in the US constitution.

    On the one hand it could be simply a broadening term to include not only writings but also drawings and models used in the obtaining of a patent. Originally it meant something disclosed, often of an unsavory character: “Discover me this plot”. Such meaning is preserved in law as “discovery” in litigation. An alternative and nowadays more common meaning is a finding e.g. the discovery of Australia. At the time of the US constitution both meanings were in common usage.

    If a word is sought that covers both meanings, then perhaps “revelations” would be apt. That word refers to surprising and unknown facts and would fit the apparent intentions of those who drafted the US constitution and the then popular attitude to inventions. Nelson captured two ships at the battle of Camperdown in 1798 using one ship to capture the other. That feat was referred to as “Nelson’s Patent Bridge for Capturing First-Rates” and encapsulates the public knowledge of and attitude to the patent system at that time.

    So we then have the problem: what is surprising and patent-worthy about the Alice inventions? I listened yesterday to the argument in the Federal Circuit in the In re Rudy appeal, and one of the appeal judges asked just that question in relation to the fish-hook sought to be patented.

    1. Paul, have you read Curtis’s treatise on this topic? He has an extended discussion on this topic, both in his preliminary remarks and in his initial sections. Take a look.

      I have his third edition, 1867. Little, Brown and Company, Boston 1867.

      1. Let me quote a bit from Curtis:

        “In all this, a patent right, under the modern law of England
        and America, differs essentially from one of the old
        English Monopolies. In those grants of the crown, the
        subject-matter of the exclusive privilege was quite as often
        a commodity of which the public were and long had been
        in possession, as it was anything invented, discovered, or
        even imported by the patentee.

        Nothing passed in such cases from the patentee to the
        public in the nature of a consideration for the enormous
        privilege conferred upon him; but the public were robbed
        of something already belonging to them, viz., the right to
        make or deal in a particular commodity, for the benefit of
        the favored grantee of the crown. So broad is the distinction
        between these cases and that of the meritorious inventor
        or importer of something new and useful, that when
        Parliament, in the 21 James 1., taking encouragement from
        the courts of law, prohibited the granting of exclusive
        privileges in trade, by the Statute of Monopolies, they introduced an exception in favor of “letters-patent and
        grants of privilege for the term of one-and-twenty years or
        under, heretofore made, of the sole working or making of
        any manner of new manufacture, within this realm, to the
        first and true inventor or inventors of such manufactures,
        which others at the time of the making of such letters patent
        and grants did not use, so they be not contrary to
        law, nor mischievous to the state, by raising the prices of
        commodities at home, or hurt to trade, or generally inconvenient,”

        1. Several points have previously been offered to you for consideration Ned – points which you refuse to deal with and simply run away.

          Points like business methods have been granted by the executive branch through out the history of the patent office.

          Points like business methods have been acknowledged and accepted by the legislative branch – the branch who has the authority to write patent law and has chosen NOT to disallow business method patents.

          Points like business methods were attempted to be disallowed by Stevens in Bilski and he FAILED and lost his majority position because he attempted to rewrite the explicit words of Congress to do then what you are attempting to do now.

          You have zero legal standing to support your crusade.

          None.

      2. And a bit more on the topic:

        “In this inquiry it is necessary to commence with the
        process of exclusion; for although, in their widest acceptation,
        the terms” invention” and” discovery” include
        the whole vast variety of objects on which the human intellect may be exercised, so that in poetry, in painting,
        in music, in astronomy, in metaphysics, and in every
        department of human thought, men constantly invent
        or discover, in the highest and the strictest sense, their
        inventions and discoveries in these departments are not
        the subjects of the patent law. Another branch of jurisprudence,
        of a kindred nature, aims at the protection and
        establishment of’ property in literary productions, and in
        some of those which fall within the province of the fine
        arts. The patent law relates to a great and comprehensive
        class of discoveries and inventions of some new and
        useful effect or result in matter, not referable to the
        department of the fine arts. The matter of which our
        globe is composed, is the material upon which the creative
        and inventive faculties of man are exercised, in the
        production of whatever ministers to his convenience or
        his wants. Over the existence of matter itself he has no
        control. He can neither create nor destroy a single atom
        of it; he can only change its form, by placing its particles
        in new relations, which may cause it to appear as a solid,
        a fluid, or a gas. But under whatever form it exists, the
        same matter, in quantity, that was originally created,
        exists now, and, so far as we now know, will forever continue
        to exist.

        It is evident, therefore, that the whole of the act of invention,
        in the department of useful arts, embraces more than the
        new arrangement of particles of matter in new relations.
        The purpose of such new arrangements is to produce some
        new effect or result, by calling into activity some latent
        law, or force, or property, by means of which, in a new
        application, the new effect or result may be accomplished.
        In every form in which matter is used, in every production
        of the ingenuity of man, he relies upon the laws
        of nature and the properties of matter, and seeks for
        new effects and results through their agency and aid.
        Merely inert matter alone is not the sole material with
        which he works. Nature supplies powers, and forces, and
        active properties, as well as the particles of matter, and
        these powers, forces, and properties are constantly the
        subjects of study, inquiry, and experiment, with a view to
        the production of some new effect or result in matter.

        1. Ned – compare and contrast fine arts and useful arts.

          Business – be it the business of widgets or even the business of business clearly is in the useful arts.

          Department of Commerce houses the patent office, does it not? Hmmm.

        2. I could not agree more with the criticality of the passage quoted from Curtis which EVERY student of patent law should memorize and be able to quote verbatim.

          It is summarized in a quote from a book by the late Peter Rosenberg: “It’s not the difference but the difference the difference makes that matters.”

      3. Ned

        You are extremely fortunate to own a copy.

        You can get a copy of the 1848 edition from IPMALL ANTIQUE which is operated by Franklin Pierce. I found Curtis because he is quoted in the dissent in Hotchkis v Greenwood.

        The passage you have quoted below has been on my slides for inventive step for a number of years now.

      4. Glorifying in something old is certainly not the same as glorifying in the correctness of the thing.

        From page 25: “If, however, the character of the alleged invention be such that no design or study could possibly have been exercised in its production, then its character tends strongly to show that it does not differ substantially from what had been produced before; or that it is frivolous and immaterial.

        The understanding – and study of – innovation has changed some core beliefs from Curtis’ time and his views simply are not accurate enough anymore.

        Such over-reliance on a writer – not of the law, but of a mere treatise on the law – is not such a healthy thing to have.

      5. Hmmm,

        Notwithstanding the lack of a modern day appreciation of innovation, Curtis at least seems to understand that the forerunner of 101 was to be a very coarse filter.

        From page 30: “I am persuaded, however, that at least under our statute (Curtis was comparing and contrasting the English law) the question of the patentability of an invention depends upon its satisfying the statute requisites of novelty and utility, after the subject is ascertained to belong to one or the other of the classes mentioned in the statute.

        Hmm – quick check on the claim fitting a class (easy enough) – quick check on utility (again easy enough), then onto novelty.

        Wow – that appears to be so simple and straight forward.

        It appears that all the muckity muck around this issue only comes from the Supreme Court mucking around, sticking their fingers into the 101 nose of wax.

    2. What is surprising is that the Courts are allowed to come up with a Laws and Products of Nature exception in spite of the fact that both the statute and the Constitution indicate DISCOVERIES are patentable.

      What is there TO discover but laws and products of nature?

      1. Don’t we to promote the discovery of Penicillin? Is Penicillin not worthy of a patent?

        OMG when will this madness end.

      2. Les, do you have any idea whatsoever why England passed the Statute of Monopolies in 1609, or why we limited the category of discoveries eligible to those within the useful Arts?

          1. Maybe in a overly general manner of speaking, but yes id say many arent products of naure. Some in the list literally are “nature” itself. but there’s plenty more things in x that aren’t products at all. Like animal behaviors, the way various synthetc materials react with one another, properties of various synthetic materials, the list goes on and on bro.

            1. One isn’t likely to claim an animal behavior now is one bro?

              In any event, said behavior would be naturally occurring and is therefore a product of nature.

              Penicillin and Honey are also products of nature resulting from the behavior of organisms.

              The behavior of synthetic materials results from the properties of atoms, which are naturally occurring.

            2. No, they are synthetic. Their properties are naturally occurring as roundup readiness was DISCOVERED in nature and spliced into corn and soybean DNA.

            3. Les- you are missing the point – the aspect of nature that is covered by the synthetic seeds…(it is the same aspect of nature that the non-synthetic seeds undergo – but the Bowman case held that such was patent infringement even as it was natural – Monsanto surely did not invent the particular natural process that its patent prevents Bowman from ‘doing.’)

            4. ” the aspect of nature that is covered by the synthetic seeds”

              There is no “aspect of nature” that is covered by the “synthetic seeds” or even the claims thereto.

              If you think otherwise, then set forth what “aspect of nature” you think it is in precise language for us all to read. If you’re correct, and that “aspect of nature” is actually judicially excluded subject matter then you can get a court to invalidate the claims. I doubt if you’re capable of even doing the first part.

          2. I didn’t miss that point.

            You are missing the point of this sub-thread, which is 101 and the Constitution indicate that DISCOVERIES are patentable, there is noting TO Discover but laws and products of nature, yet the courts are allowed to spew natural laws and products of nature exceptions.

            1. Sorry les, but the point of this sub-thread is not a look at the legal meaning of the word “discoveries.”

              I do understand that such is a belief of yours – but that is not the point here.

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