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.
- The ABA has collected the briefs: ABA Preview. (You’ll note that I didn’t have room to comment on all the briefs).
- Mike Borella reviews the briefs and pending case on Patent Docs: Post I; Post II.
- Gene Quinn reviews some of the briefs on IP Watchdog. (Note Gene’s discussion of Judge Michel’s brief that I did not discuss above).
- Timothy B. Lee from the WaPo asks “Will the Supreme Court save us from software patents?“
[…] the parties’ more detailed, written arguments and those of the many amici via the links here. Wired UK has an good overview […]
[…] Other tech companies, including Microsoft and IBM, have taken a different view of the case, suggesting in their briefs that Alice Corp’s patents are not appropriate but expressing approval for other types of software patents. (Patently-O has a detailed rundown here.) […]
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”.
But, Reinier, if the claims in Alice are ineligible, the question is why?
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”.
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.
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.
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.
[…] Other tech companies, including Microsoft and IBM, have taken a different view of the case, suggesting in their briefs that Alice Corp’s patents are not appropriate but expressing approval for other types of software patents. (Patently-O has a detailed rundown here). […]
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.
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.
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.
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.
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.
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.
More clean up needed from an “academic” mess:
link to intensedebate.com
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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!
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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
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?
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.
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!
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.
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!
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.
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).
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!
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.
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 patentlyo.com
I really do not believe the claims in Bilski or here suffer from undue breadth. Their problems lie elsewhere.
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.
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.
“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.
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.
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?
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.
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!
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?
@ 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?
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.
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.
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.
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?
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.
>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.
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.”
PUNT
link to patentlyo.com
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.
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.
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.
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.
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.
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.
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?
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.
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!
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.
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?
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.
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.
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.
anon, you will note that I too have called for the Supreme Court to articulate the legal basis for its exclusions.
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.
” 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.
“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?
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.
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?
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.
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.
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.
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.
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.
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).
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.