Guest Post by Donald S Chisum, Director of the Chisum Patent Academy and author of Chisum on Patents.
In Alice (June 19, 2014), the Supreme Court held that the two step framework for determining the Section 101 patent-eligibility of a patent claim, which the Court previously articulated in the 2012 Mayo decision on the patentability of a diagnostic method, applied to computer-implemented inventions. Thus, one determines: (1) does the claim recite an ineligible concept (natural phenomena, natural law or abstract idea), and (2) if so, does the claim recite sufficient additional elements to make the claim one to an application of the concept, rather than to the concept itself?
On Mayo step one, Alice held that the claims at issue were to an abstract idea, an “intermediated settlement.” On step two, it held that “merely requiring generic computer implementation” did not “transform that abstract idea into a patent-eligible invention.” Thus, claims to a method, a computer system configured to carry out the method, and a computer-readable medium containing program code for performing the method all fell invalid under Section 101.
I considered but then reconsidered entitling this comment “Alice in Wonderland.” For, indeed, the Supreme Court’s chain of decisions creating a judicial exception to the statute defining patent eligible subject matter (35 U.S.C. § 101) and holding unpatentable claims to algorithms and abstract ideas, stretching from Benson in 1972 to Alice in 2014, is wondrous. But I will not here review the “big picture,” including the fundamental flaws in the chain; I and others have already done that.
Instead, my focus is on the “small picture,” the every day problem: does the Alice opinion provide some meaningful guidance to fill the near void left by the Court in its prior Mayo and Bilski decisions? Those decisions provided no definition of an “abstract idea” (or “law of nature”) and little direction on, precisely, how much “more” was required for the transformation.
The Court’s fuzz left stranded in a desert of uncertainty an array of feet-on-the-ground decision makers, from inventors to rights owners to patent professionals drafting and amending claims to examiners to PTO officials to licensing negotiators to litigators to district court judges to federal circuit judges to treatise authors.
Positive news. At least on first analysis of Alice, I find some additional guidance, perhaps enough to lead us toward an oasis in the desert.
In particular, the Alice opinion supports the following proposition: a novel and unobvious solution to a technical problem is not an “abstract idea,” and a claim drawn to such a solution, even if broad, is not subject to the Mayo framework (though, of course, it is subject to scrutiny for disclosure support).
The Alice opinion does not state the proposition directly. The Court expressly indicated that it did not need to “delimit the precise contours of the `abstract ideas’ category” because the concept at issue was so similar to that in Bilski. But the proposition is fairly inferred from the Court’s rejection of the patent owner’s argument that the intermediated settlement concept in its claims was not an “abstract idea” within the implicit exception to Section 101 and from its novel description of the prior Diehr decision.
Based on prior Supreme Court cases and language in Mayo, the patent owner argued that the definition of “abstract ideas” for Section 101 was: “preexisting, fundamental truths that exist in principle apart from any human action.” The Court disagreed because that definition did not fit Bilski, which held that risk hedging was an abstract idea. Hedging was a “longstanding commercial practice” and a “method of organizing human activity,” but not a “truth” about the natural world that “always existed.” Hedging and the similar concept of intermediated settlement were abstract ideas because they were “fundamental economic practices.”
Thus, concepts that constitute abstracts ideas fall into two categories. First are mathematical equations, mathematical formulae and algorithms (at least ones of a mathematical nature, and, I would emphasize, not all algorithms are mathematical or numerical). Second are methods of “organizing human activity,” at least if they constitute a fundamental economic practice “long prevalent in commerce.”
What’s left out of the “abstract idea” category? The Court in Alice declined to say explicitly, but there are hints in its discussion of the 1981 Diehr decision in connection with the second Mayo step. The Court noted that Diehr had held a computer-implemented process for curing rubber was patent eligible, not because it involved a computer but rather because “it used that equation in a process designed to solve a technological problem in `conventional industry practice.” It reiterated: “the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.” In contrast, the claims in Alice did not “improve the functioning of the computer itself” or “effect an improvement in any other technology or technical field.”
The Court had discussed and distinguished the Diehr case before, in both Bilski and Mayo, but never on the basis that Diehr entailed a technological improvement. Thus, the Alice discussion of Diehr in terms of a solution to a technical problem is important new ground.
Hence there are strong grounds for the proposition that a patent claim reaches a safe harbor from Section 101 abstract idea scrutiny, including the Mayo second question for an “inventive concept,” if the claimant establishes that the claim is directed to a solution of a technological problem. This definition of abstract idea as excluding applied technology accommodates the case law treating pure mathematical statements, economics and finance, and schemes of a non-technical character (“methods of organizing human activity”) as “abstract ideas” that must be include additional elements to achieve patent eligibility (Mayo step two).
Is this shift in focus to “technological” an oasis of greater clarity? No doubt there will be arguments about what is technological and what is not. But there are at least three advantages to the verbal change. First, technology is the historic core of the patent system, especially given the Constitutional phrase “useful Arts,” which is 18th century terminology for “technology” in 21st century terminology. Thus, an inquiry about the technological is much less of an alien intruder than prior Supreme Court language about the abstract idea exception to Section 101. Second, evaluating the Section 101 abstract idea prohibition in terms of technological versus non-technological conforms to the language Congress used in Section 18 of the America Invents Act in setting up special PTO review of business method patents. Finally, a technology test aligns the United States standard with the language used in Europe and elsewhere to address exceptions to patent eligible subject matter.
[…] Patent practitioners are still left with more questions than answers after decision, but Professor Chisum does pull some portions of the decision that may let us better advise clients and converse with the Patent Office. Read Professor Chisum’s post here. […]
I wanted to commend 6 on asking some very good questions well down below (at 1.3.3.1.1.1.1)
“The legislative.
1. In your opinion does the constitution meaningfully limit the legislative’s authority to determine and write what is patent eligible, and if so, how (briefly if possible).
2. Does the judiciary determine just how (and whether) the constitution meaningfully limits the legislative’s authority to write what is patent eligible, and if so, are they empowered to narrowly interpret congress’s legislative attempts within those bounds (say perhaps in order to avoid a constitutional issue)?”
Such thoughtfulness, while rare, is welcome.
Here then, repeated for convenience, are my answers:
6,
Patent eligibility is entirely a statutory construct. As such, full authority rests with Congress – and Congress alone.
Congress can (and does) overstep its constitutional scope. Patent law is no exception.
Now, what can be done about any such overstep is particularly interesting. Most other areas of law are not constrained by a strict demarcation of authority as provided in the constitution, so in the other areas, the Court stepping in and “writing the map” does not present the same consequences as it does in patent law.
Note that there is a clear and unmistakable difference between “interpretation” and “re-construction” (i.e. writing). Prof. Hricik had a post awhile back presenting some useful links.
So to directly answer your questions:
1. The limitations in the words of the Constitution are NOT all that limiting, and should not be twisted to create “philosophical or pedagogical issues” with the Court only too eager to insert its fingers in the very “issue” it creates. (and deep shame to all the amici urging the Court to take such an activist role).
One area that this view is tied to the “argument” about stifling promotion.
That whole line of thought is nothing more than abject conjecture. One who has studied innovation (separate from invention) would readily tell you that such “a priori” views are pure rubbish. That line of bull is akin to being concerned with a pebble thrown into the spring-rain gorged Mississippi and being concerned about diverting the river’s path.
True limits present in the grant of authority are :
– Useful Arts (and yes, this does include business methods and software as categories)
– limited times (as opposed to Trade Secrets or Trademarks)
– exclusive rights (typically, forced licensing would fall out of this mandate)
– respective (ownership and vesting first in the inventor)
Note that “to promote the progress” is both laudatory [add.: that is, the phrase is merely a goal – see the pure rubbish note above] and that the meaning of “promote” is NOT limited to linear betterment. An analogy may be helpful here: The clause is not meant so much to pave a road, but more so to pave a parking lot (enabling in all directions, yes even backwards, as true innovation leaps about in all directions). The nature of innovation simply is NOT linear, and thus, to promote the progress (e.g., promote innovation), a more sophisticated understanding of innovation guides.
2. This is a trickier question, and as noted, interpretation and construction are too very different things. Further, the Court is NOT empowered (in the strictest sense) to EVER “interpret” as to stretch that “interpretation to be writing (hence, “implicit” writing is suspect), given the strict apportionment of authority in the constitution.
This is NOT to say that Congress cannot decide for itself to share its authority (as it did pre-1952 with the power granted to the courts to define “invention” by common law evolution – a power since rescinded; and with the elements of redress – still allowed – through the rules of equity in the judicial system).
Your direct answer: The Court is NOT permitted to rewrite the law to avoid a constitutional issue.
If the law as written by Congress is deemed to be in violation of the constitution, the appropriate measure of the Court would be to simply state so, rescind the law and put the ball back into the hands of Congress.
Your turn.
Well anon I appreciate your attempts to answer the questions. They happen to be questions that I’ve been asking you indirectly for nigh half a decade now, and I was “thoughtful” that whole time, but you’re finally getting around to at least attempting to answer them.
You seem to try to change the questions though.
For example I ask if the constitution meaningfully limits the congress’s power. You respond that the constitution is not “all that” limiting. And that’s fine, as your opinion. Though your ultimate answer to this inquiry is “yes” since you go on to enumerate a little list of limitations that you feel like are present. So I’ll simply take it as a “yes”. And I’ll take it that you think the little list of limitations are what you feel are the proper limitations to draw from the constitution.
Moving on to question two, you acknowledge that the question is “trickier” though it wasn’t meant to be tricky at all and I don’t think it is particularly tricky at all. It is only “tricky” imo if you’re trying to avoid answering simply. But you at least gave a “direct” answer that wasn’t actually an answer to the question since I never asked whether a court is permitted to rewrite the law to avoid a constitutional issue.
I asked whether or not the judiciary (rather than say, for instance anon, or anyone else) determines in what manner the constitution limits the congress’s ability to write what is patent eligible <— that's the main part of the question which you have yet to explicitly tell me about. I imply as of right now you do think it is the judiciary that does this since you went on to answer the "and if so" part that comes next.
But then we get to the "and if so" part of question two and you never explicitly tell us whether the USSC is empowered to narrowly interpret congress’s legislative attempts within the bounds that they themselves interpret from the constitution. You instead tell me that they're not "permitted" to rewrite the law to avoid a constitutional issue. Apparently you thought that the part of my question in ( )'s was the crux of the matter and what really needed to be answered. In fact what was in ( )'s is just a side thought. I was more concerned about the empowerment, or not of the judiciary to narrowly interpret congress's legislative attempts broadly, not only in the context of avoiding constitutional issues. Those are merely one reason they may narrowly interpret. I'm concerned about their empowerment generally. So perhaps you can address that. The empowerment, without telling us about the constitutional issue aspect.
In any event, frankly I rather agree with your overall conclusion of what "should have" been done if the explicit words were deemed to be in violation of the constitution. And at this point it is plain to see that the USSC doesn't believe the plain explicit words are constitutional without the modification of the judicial exceptions. But what "should" be done is not always done in the government, and us peons live on to pay the price. And I also understand why they didn't just hold it unconstitutional. It was their understanding at the time (some 60 years ago now) that it was not congress's intention to overrule their judicial exceptions. Had the court simply done ages ago what what you and I feel that they should have done in this sort of situation then we wouldn't be in this mess to begin with. Congress would have made the law better explicitly. Software wouldn't have any patents on it, probably very few "business methods" would, Alice would have never had a patent to begin with and everyone would be better off for it.
You know how the gov always prefers to kick the can of responsibility down the road if an easy alternative is presented. Especially if that easy alternative is to just let the status quo (the prior precedent here) reign!
See, “They happen to be questions that I’ve been asking you indirectly for nigh half a decade …,?i>” you have to go and try to ruin a nice dialogue with such a baseless accusation.
Ever since I started posting, I have been clear and consistent on my views and (proper) rendition of facts and law. Unlike yourself (with your whatever goes) and Malcolm (and his intellectual honesty is not required), I do post according to the ethical constraints I have sworn to and post with intellectual honesty.
That you do not like what I post simply does not affect how I post.
We both know that the opposite is true for many other posters.
Here too – you ascribe to over-personalize my reply, seeking to make mere “opinion” that which carries more weight than mere opinion. You seem unable or unwilling to grasp the notion that facts exist outside of whomever is bringing those facts to the discussion.
That is a critical error – and is an apparent trick employed so that you “feel better” about not paying any attention whatsoever to those facts that you find inconvenient. You are once again, not aiming for a true discussion as much as you are aiming to make your own soapbox view ascendant. But you seek to do this through fallacy. Sorry, but such inconvenient truths remain (and remain regardless of whether it is I that shares them with you).
That you here do not like my answer and seek to classify it as a side item only shows that you do not understand the question you ask. You want to hear a particular answer, regardless of the actual legal context. Sorry, as here too, my answer is the correct answer (and again, it is correct NOT because I say so, but rather, I say so because it is the correct answer). Whether you want to fight this or not, accept it or not, whine about it or not, is immaterial as to its veracity. Sorry 6, but that is just reality.
With that aside, I do hear you about “us peons” living with the result. I will distinguish though that actual discussions (albeit sharp ones) according to my advice (NOT the soapboxing CRP-ignore valid counterpoints, runaway and CRP again advice that others offer) will stand the best chance of making a difference.
Your final soapbox of “ Software wouldn’t have any patents on it, probably very few “business methods” would,” is plainly without merit.
Alright well perhaps I’m too hasty. If you want to have a “nice” conversation then perhaps you’ll simply answer my questions simplified.
1. In your opinion does the constitution meaningfully limit the legislative’s authority to determine and write what is patent eligible?
2. Does the judiciary determine just how, and whether the constitution meaningfully limits the legislative’s authority to write what is patent eligible?
Maybe that’ll make it easier for you to not get side tracked and hopefully be able to provide yes/no answers to the first parts of the former questions. Then, once you’ve given straight up yes/no answers to these easy parts of the questions then perhaps we can move one to the more complicated “and if so”s that I previously included.
I put too much on your plate and I respect that. Let’s go easy. One step at a time and not get into the super complicated too hastily.
Note that I don’t mind whether you answer no, no.
Once again you cannot resist your fallacies and misrepresentaons.
How have you “put too much on my plate” and why would you need to ask “simplified questions,” when I have fully answered your non-simplified questions?
Your comment implies a lack of answer when no such lack exists.
On the other hand, you may not like or understand the answer I have given you – but as I indicated, the answer I have given you is the correct answer to your questions, and such is so, not because I said so (let’s stay away from the over-personalized fallacy), but I say so because the answer is objectively correct. It is correct regardless of it being me that says it or it being someone else that says it.
If you do not like it – tough nougies. You can always call your Congressman and try to change the statute (or get real busy and try for a constitutional amendment), but the correct answer remains the correct answer even if you don’t like the answer.
If you don’t understand a part of the answer, you would be better off losing the smarmy implication tactic and simply stating which part you don’t understand.
I should add that I most certainly don’t mind your answer brosef, I just never explicitly asked the question that your explicit answer is an explicit answer to. For that matter, I never even asked implicitly such a question. I frankly don’t care whether or not the court is permitted to “re-write” the law to avoid a constitutional question. For that reason I never asked the question
“Anon do you think the court is permitted to re-write the law to avoid a constitutional question?”
^that question was never asked.
I care only about the question I explicitly asked. But if you go ahead and address the simplified versions of the questions I’ve posted above, perhaps we’ll get to my slightly different question on this topic eventually.
6, one point. Anon is correct that congress delegated to the courts until ’52 to define the criteria for a patentable invention. They developed the exceptions, obviousness, double patenting and a few others.
His position, shared by David, was that common law authority ended in ’52 with the creation of 103, the division of 101 from 102/defenses to infringement in the revised statutes; and the limitation of 282 that statutorily confines invalidity to 102, 103, 112 and 251. 101 is not included.
Now the problem with this is whether this schema is constitutional. The scholars have discussed it and seem to agree that one cannot divorce patentable subject matter from validity as a constitutional matter. I think the Supreme Court would not want that issue presented to them for decision. The Federal Circuit does not consider the issue a serious one.
But, that said, the problem remains, in my view, to fit the judicial exceptions, including double patenting, into a specific aspect of 101. For all my disagreements with Rich, that was what he tried to do with all pre-52 judicial exceptions. If they were completely non statutory, he refused to recognize them.
I personally think the Supreme Court must recognize that 101 is the law. If it authorizes subject matter to be patented, that is the word of congress. Useful Arts provided no meaningful limit, as we discussed previously. What that meant or means is uncertain. What can be certain is that congress’s judgment controls and should be respected.
On the exceptions: laws of nature and products of nature are not new. The court has recognized such. Thus these exceptions are supported by the statutory language.
Under the historical interpretation of 101, business methods, printed matter and the like were deemed non statutory as they did not fall within any of the four classes.
Abstract was identified as a 112 problem in Morse. It does not operate as a limit on patentable subject matter — at least until perhaps Benson, Flook, Diehr, Bilski and now Alice. Until Bilski, the MOT, the traditional definition of Art was the proper way of excluding things like math. The en banc Federal Circuit got that one right.
The along came Bilski….
Now we are off on an adventure where we really do not know the limits on patentable subject matter anymore, and the statute itself is no longer even discussed as a limit. Now that, IMHO, is plain wrong.
Yes I’m aware of anon’s position. I’m also aware of how it differs from the USSC’s position. What I’m trying to do is walk with him through from some basics to see where his position really starts to differ from the official version from the court. Because you guys often kind of start in the middle so to speak. For example, you’re starting in the middle in your explanation of anon’s views. You guys don’t start by discussing whether the constitution does meaningfully limit congress’s ability to legislate, or whether the judiciary determines that. Those are both rather key. And you individuals are free to naysay the court on those two topics, but they’re the ones with power, and they may make a grab for even more power. If they do, then it isn’t up to us peons to set things straight, congress has to do that. And they generally do that by amendments to statutes or the constitution.
6, I assume you have read Marbury v. Madison. Anon and I have discussed it here a number of times, so we both are familiar with it.
Also, Golan v. Holder shows that congress can do an awful lot within the constitution, including withdrawing subject matter from the public domain. Thus they could possibly allow patents to people who discover products of nature. I don’t think there is a significant constitutional problem in that. I think the prohibition on patenting products of nature is a statutory problem, not a constitutional one. Properly, therefore, there really is no “exception” regarding products nature because products of nature are not statutorily eligible because they are not new compositions.
I don’t think there is a constitutional problem with patenting newly discovered laws of nature. I think that laws of nature are not new, even though not known, and for this reason, there is a statutory problem involved in claiming laws of nature.
It becomes a little bit closer question whether we can allow patenting abstract ideas. Patents of this nature retard the progress of the useful arts and therefore seem to be blatantly unconstitutional. But the Supreme Court is not applying this exception properly. They’re substituting the word “abstract” for “non statutory.” They shot themselves in the foot in Bilski when they held that business methods were statutory processes. That holding was ridiculous – and it totally ignored the Second Circuit and prior CCPA cases to the contrary.
So, this is why I say Bilski was FUBAR.
(sigh) the cases that you cite – those lower ones and those ones pre-1952 were part and parcel of the reasons given by Congress in doing exactly what they did in 1952.
You continue to ignore the several basic points that I have laid before you.
Those points will not go away, so you might as well work up the courage to deal with them.
“Thus they could possibly allow patents to people who discover products of nature.”
I think the supreme’s point is that while they may could, they’d have to do so explicitly to overrule their precedents. And even then the supremes would then look with a critical eye at the new law’s constitutionality.
Remember one thing that you (and anon and many lawlyers) routinely set aside. The business of the government, including the courts, congress, pressy, is always to GOVERN. That’s why we call them the government. And I know that probably doesn’t mean much to you (though it should moreso than the avg joe since you like playing games like ROME). When you’re governing the bottom line is to get through the day as best you can while organizing human actions as best you can (or to your whims depending on the power structure). And that’s what they did, and still do.
“I don’t think there is a constitutional problem with patenting newly discovered laws of nature.”
Well if you get congress to try it out I think there will be a PO and 9 justices to disagree with you.
“But the Supreme Court is not applying this exception properly. They’re substituting the word “abstract” for “non statutory.” They shot themselves in the foot in Bilski when they held that business methods were statutory processes. That holding was ridiculous – and it totally ignored the Second Circuit and prior CCPA cases to the contrary.”
Well that’s your opinion. And I respect you holding it. I don’t share it.
“when they held that business methods were statutory processes”
They didn’t strictly hold that. They simply held off killing them all off. There’s a difference between restraining yourself from killing a caged rabid dog and in explicitly making sure it is released and blessed to go around biting people. Which you would understand if you had power. And which you should understand anyway since you’re a lawyer.
6, well they certainly did not hold that business methods were nonstatutory – something that Stevens concurring opinion would have done.
Stevens dissent dressed as an occurrence would have rewritten the words of Congress.
It is amazing that you refuse to recognize this. Verging on “abstract.”
6,
I do hope you recognize that understanding the law goes beyond what the Supreme Court says is the law (again, Prof. Hricik had a recent article on the number of times the Court has been, well, wrong).
As to starting n the middle (and the joke that you are trying to hold anyone’s hand on understanding in this area), how far back (or rather, lower) do I need to go to get you up to speed?
“I do hope you recognize that understanding the law goes beyond what the Supreme Court says is the law (again, Prof. Hricik had a recent article on the number of times the Court has been, well, wrong).”
I have to tell you I do not recognize that. As any good peon does, I look to them for guidance. I don’t mind Hrick stirring up disrespect for the court, but his bar might. He hasn’t got so mouthy just yet that I feel the need to report his antics though. I can certainly understand why Hrick himself thinks the court is “wrong” though.
(sigh)
Your lack of recognition is not controlling – surely you recognize that, right?
This is not a matter of hiding behind the “good peon” role, my lemming friend. This is a call to think, to critically think – engage that brain and break free from your lemming shackles.
“stirring up disrespect for the court”
You really have no clue as to the ethics of professional responsibility, do you? We have a duty to stir up if the court has engaged in an abuse of its powers and authority.
As far as Prof. Hricik and any “mouthiness” – what exactly would you “report?”
When you don’t know the F you are talking about, pulling stuff out of your arse only makes it look like you enjoy pulling stuff out of your arse.
“Your lack of recognition is not controlling – surely you recognize that, right?”
It “controls” me. Other than that I don’t know who you’re referring to it not “controlling”. If you think a different recognition controls you, or some court you’re planning to argue to, that’s ok with me. You guys can sort that out amongst yourselves.
“You really have no clue as to the ethics of professional responsibility, do you? We have a duty to stir up if the court has engaged in an abuse of its powers and authority.”
Well let’s let him keep it up and the bar can sort that out for us. But I can pretty well assure you that just like EG has stfu after I held this over his head it will require little more than an email to Hrick with the email of his local bar attorney in the body to get him to stfu as well.
“As far as Prof. Hricik and any “mouthiness” – what exactly would you “report?””
I just told you above iirc. Stirring up disrespect for the court and its totally legit decisions that he disagrees with.
“When you don’t know the F you are talking about, pulling stuff out of your arse only makes it look like you enjoy pulling stuff out of your arse.”
I know, I don’t know why you and Hrick do that sht. It is embarrassing for you. It’ll be even more embarrassing for him to get a suspension for stirring up the peasantry agin respecting the courts as a result of it.
“It controls me” makes no sense.
Different meaning to the word “control” 6 (you are doing that obsessive thing about control again)…
“get him to stfu”
LOL – see 6, that’s exactly the type of projection thing you do all the time. My reminding people of their ethical responsibilities was in a spirit of helping them, while clearly all you want to do is control them and make them stfu.
Thanks for proving my point.
(sigh)
While I appreciate the ‘gentle tone,’ I do not appreciate the continued choice to ignore what I have presented to you and your continued misrepresentations as to law.
I have carefully – and patiently – explained why your view of printed matter does not accord with the law.
Your agenda agains business methods is also based on fallacy, and your desire to denigrate the process category as a sub-category to the hard goods category. Such is simply legal error that you refuse to listen to any reason and insist on the Ned-IMHO-law that aligns with your agenda.
Process is clearly a fully recognized category and clearly is not a handmaiden to the other three categories. You also (still) have not explained the statutory partial defense to business methods and the FACT that no such defense would be needed if your IMHO version were correct, as one would not need a defense (much less a statutory defense) to something that could not legally exist under the patent law. I have asked you politely to address this simple fact. That does not seem to illicit a resp
That does not seem to illicit a response from you – and your position fails on that point alone (there are, of course, other points that I can make – and have made – that are greeted with that same deafening roar of silence).
Of course, the entire underlying issue to all of this mess with 101 is the Court itself and its refusal to respect the words of the constitution and the separation of powers. The Court has seen that is can get away with implicit writing and in Alice has ventured into explicit writing with the addition of “technological” – term nowhere found in the statutory law concerning patent eligibility (and I will kindly ask you to use eligibility instead of patentability – there is a very real difference, and your comment above disregard that difference improperly under law).
I don’t think Ned was talking to you anon.
I noticed the start of your errors 6: “I don’t think” – now if you had stopped right there, you would better approximate a broken analog clock.
Well, the Supreme Court seems to recognize that it is bound by 103 and cannot freelance anymore there. It still does not fully recognize that it must do the same with patentable subject matter.
Some needs to write the definitive law review article on this topic.
“do the same with patentable subject matter.”
patentable?
I suggest you use the term patent eligible subject matter.
And yes, there is a statutory reason for that.
What the Court “fully recognizes” (or to put it more appropriately, does not recognize) is exactly the problem with 101 jurisprudence.
“Some needs to write the definitive law review article on this topic.”
Yeah that would be good.
Though to be honest I think they feel boxed in on further making new exceptions (otherwise stevens would have ‘won’ bilski). They simply feel like the previous ones were not overruled by statute.
and I also appreciate the apparent recognition of the 1952 Act – questioning whether the schema was constitutional is at least a step in recognizing that Congress did take the actions that up until that admission by you, you flatly pretended did not happen (raising the ire since you were attempting to rewrite history).
Now, if you want to have a discussion on constitutionality of the 1952 Act (while recognizing the veracity of what I have long informed you of), that might make for an interesting conversation.
“But, that said, the problem remains, in my view, to fit the judicial exceptions, including double patenting, into a specific aspect of 101.”
One must wonder why the attempt to do so.
Would not the proper course of action be to put the judicial exceptions where they naturally fit?
Ned, note that the only reply to this discussion point has been a single smarmy quip form Malcolm, who obviously has nothing meaningful to add.
Why do you think the Justices have acted as they have done? I can tell you (again) why I think they did so – and it has something to do with the misguided notion of “dead letters” and wax addiction.
Well anon, “abstract” is not really an exception to patent eligibility in my view. It’s an exception to the statutory requirements set forth in section 112, the requirements that one must describe an invention in enough detail that it enables one of ordinary skill in the art to make and use it. That is what the Morse case said was the problem with abstract claiming when one simply claims results. One has not enabled the full scope of that invention and to allow claim of that breath would be to retard the progress in the useful arts.
Abstract claiming has nothing whatsoever to do with eligibility. By layering on a requirement that a claim not be abstract without limiting the abstraction doctrine to §112 as provided in Morse, the Supreme Court essentially has said that we can decide, on an ad hoc basis, whether the claim is eligible. Note they never define what abstract is in their new jurisprudence, and totally ignore the Morse case and §112. As Scalia said in his dissent in American Broadcasting v. Aereo, a totality of the circumstances is not a test at all. Such a “test” allows a court ad hoc to determine whether case goes one way or the other. Such is not law, but equity.
Place your view aside for the moment, Ned (we both know that it makes more “sense” to align the notion of “abstract” – whatever that is, since the Court REFUSES to define it), but can you figure out why the Court did not rest on that part of the law? Why did the Court choose (and it was a choice) to pin its views on 101?
“Such is not law, but equity.”
Need I remind you that even in equity, the Court gets to “write”** in patent law only at the discretion of Congress, who, statutorily provides for such equitable treatment? Congress could very well update the statutes and remove that portion of power it has granted to the courts.
**quotation marks are used because it is not even true writing of law, but merely applying equitable remedies that Congress explicitly permits.
anon, you don’t have to point out anything to me. I agree with you on this.
Looking for more than agreement Ned.
Hazard a guess as to why the Court does not use the proper “buckets.”
(here’s a hint: they would be forced to recognize what Congress did in 1952 – see the notes at link to law.cornell.edu
Patentable novelty phrase ring a bell? – as in Guthries?
NWPA What you get back is a violent denial and threats. This group is little better than the fundamentalist that are raping and killing in Iraq. Reason and the enlightenment mean nothing to this lot.
Do you guys ever wonder why people don’t take you seriously?
“Do you guys ever wonder why people don’t take you seriously?”
LOL – KA-BLOOEY !
Right MM. Tell us how computer programs are really natural laws. And how simulating human thought processes on a computer are not technical. Please fill in the audience on your wide breadth of ignorance.
Nice attempt to change the subject.
Here it is again:
What you get back is a violent denial and threats. This group is little better than the fundamentalist that are raping and killing in Iraq. Reason and the enlightenment mean nothing to this lot.
And your li’l buddy anon didn’t object at all. In fact, he eagerly joined your rallying cry: “they” are the attackers of the patent system
Does anybody really need to know anything more about either of you?
You’re just a couple of sick, psy ch0tic self-important crybabies.
Rest assured: you two will be both be reminded of this pretty much forever, especially “anon” as he’s the bigger hypocrite by far.
Enjoy. Y0u made your bed. Now you get to lie in it.
Check it out again Malcolm, your EAGERNESS betrays you.
You are doing that apoplectic thing again.
EAGERNESS
Look out, folks! He’s talking in all caps again. Must be really important.
You are doing that apoplectic thing again.
This from the guy who just go through calling people who disagreed with him about subject matter eligibility “rapists and killers”.
Try to believe it, folks.
Lol – way to run with the clear 1ie pumpkin.
>>Enjoy. Y0u made your bed. Now you get to lie in it.
I am fine with you bringing up this characterization of you as often as you want. I just wish you would take a closer look at yourself and realize that is what you are.
“You’re just a couple of sick, psy ch0tic self-important crybabies.”
Lovely AAOTWMD.
And the problem with this is what MM? Pretty accurate description of you. Good to see that you knew immediately that was about you. Pretty accurate huh?
And, it was a great description of you wasn’t it? Please tell us how computer programs are really natural laws. You used to tell us that all the time. I miss that one. Or please ridicule the Church-Turing Thesis some more.
Please. MM. That is exactly what you are.
A thought offered for those attorneys out there wondering whether fealty is to the Constitution or to the Court that is making things up.
Albeit no longer maintained, the link to link to law.cornell.edu
specifically preamble paragraphs [5] and [11] speak to a high er duty to the ultimate source of law – not the branch of government that might be trying to change the law beyond its authority to do so.
To wit:
[5]: While it is a lawyer’s duty, when necessary, to challenge the rectitude of official action, it is also a lawyer’s duty to uphold legal process.”
[11]: An independent legal profession is an important force in preserving government under law, for abuse of legal authority is more readily challenged by a profession whose members are not dependent on government for the right to practice.”
No one, it appears, wants to address the elephant in the room of the rectitude of official action negating the direct words of that branch of the government actually authorized to write patent law.
No one, it appears, wants to address the elephant in the room
Here’s an elephant in the room that the patent teeb aggers need to address:
What you get back is a violent denial and threats. This group is little better than the fundamentalist that are raping and killing in Iraq. Reason and the enlightenment mean nothing to this lot.
Good luck.
What is there to address?
You yourself show NO signs or any willingness to engage in reason. You yourself HABITUALLY engage in point blank unethical treatment of law, facts, and of what others post.
Tell me Malcolm, when are you going to change from your own bankrupt posting style, and drop your short script tactics?
Drop the ad hominem
Drop the spin
Drop the mischaracterization of law (including the exceptions to the judicial doctrine of printed matter)
Drop the mischaracterization of facts
Drop the mishcaracterization of what others post
And above all, drop the Accuse Others Of That Which Malcolm Does.
You’re just proving my point. I realize that it is impossible for you to appreciate the hole you’ve dug for yourself over the years.
There’s more to come, of course. Enjoy.
“You’re just proving my point.” It’s opposite day ! WEEEEEE
(you might want to put down the shovel before you make your accusation though)
Given that my exact words are still there at post 20.1.1,…
If your point is that you purposefully misrepresent what others post….
..then your point is just another Malcolm Self-FAIL.
Nice job. Run with that, pumpkin.
Given that my exact words are still there at post 20.1.1,…
Indeed they are. I’ve got the whole thread archived.
Great – you archive your own direct and purposeful misrepresentation.
Um – you really really love that self-FAIL feeling, don’tcha?
I am honestly still confused. A medication is a solution to a health problem. People health is not a technology. Does it mean that medications are not patent eligible? A telephone is a solution to a communication problem. Communication between people is not a technology. Do you think telephones are not patent eligible?
Maybe the question should be instead if the invention is a technological solution to a problem. Then again, why is a computer configured to make wonders not a technological solution to a problem?
In practice, I still wonder if the products of a company working in the tertiary sector (service industry) can benefit from patent protection, and so, how.
Great examples. Mental processes exist. A computer that simulates mental processes is a technical solution to automating the mental processes.
Ignoring the fact that a computer is technical is akin to the handwaiving of “abstract” and “gist.”
Great job Court.
The definition of “technology” is right there next to the definition of “abstract” and right there next to the authority of the Court to write patent law in the first instance and insert this new word into the eligibility section of 35 USC 101.
(Yes, “right there” is in fact a mirage).
A medication is a solution to a health problem. People health is not a technology. Does it mean that medications are not patent eligible?
No. But the recitation of the generic term “medicine” in a claim is not patentable over the prior art, nor is it likely to rescue an otherwise ineligible claim (e.g., “A method comprising determining that a person has [insert new disease here] and administering medicine to said person”).
This is not very difficult stuff.
A telephone is a solution to a communication problem. Communication between people is not a technology. Do you think telephones are not patent eligible?
No. But the recitation of the generic term “telephone” is not patentable over the prior art, nor is it likely to rescuse an otherwise ineligible claim (e.g., “A method of using a telephone to communicate useful non-obvious information about [insert here]”).
This is not very difficult stuff.
I am honestly still confused. A medication is a solution to a health problem. People health is not a technology. Does it mean that medications are not patent eligible? A telephone is a solution to a communication problem. Communication between people is not a technology. Do you think telephones are not patent eligible?
Nobody said that a claim must recite a solution to a technical problem to be patent eligible. Instead, what was said was that a claim that recites a solution to a technical problem is not abstract. Those are not equivalent statements.
A specific medicine (i.e., chemical compound) is not an abstract idea, so you don’t even get to the second step of the analysis. Likewise, a claim to a telephone, so long as it includes specific components is not abstract, so again you don’t get to the second step of the analysis. It’s a different situation if you claim “A computer (or other apparatus) configured to facilitate communication between people.” Just ask Samuel Morse. Or Alice.
This is really not that confusing.
“Likewise, a claim to a telephone, so long as it includes specific components is not abstract,”
FAIL – there was a recent case where a phone was held to be abstract.
DanH/Leopold is making the same mistake that Ned has been making – thinking that the Judicial Exception and the statutory categories are mutually exclusive sets.
Sloppy.
here was a recent case where a phone was held to be abstract
Quote the holding to everybody.
Lol – gimme gimmie gimmie.
What exactly was the basis for the SCOTUS to have invalidated the patent in Alice? Their argument that this is not the type of thing that patents have been historically granted for is not a valid basis for the SCOTUS to invalidate a patent. The only basis by which they should be able to invalidate a patent is either statutory interpretation, which we all know they did not even read the 1952 Patent Act, or they must fall back to the actual clause in the Constitution and hold that the patent does not “promote.” So, their basis must be that they are holding that “abstract” patent do not “promote.” Yet they have never directly held this and given that they refuse to define “abstract” it is very shaky ground.
Moreover, for lower courts and the PTO it means that the holding in this case should be as narrow as possible. To hold a patent invalid at the Fed. Cir. under abstract is to say that it is unconstitutional because it does not promote and that it is abstract. That is a very, very high standard.
NWPA: So, their basis must be that they are holding that “abstract” patent do not “promote.”
Or they could be holding that protecting an abstract idea does not promote “useful Arts”.
Perhaps we should re-read Don Chisum’s original post. He notes that “useful Arts,” … is 18th century terminology for “technology” in 21st century terminology.
And … the Alice discussion of Diehr in terms of a solution to a technical problem is important new ground. Hence there are strong grounds for the proposition that a patent claim reaches a safe harbor from Section 101 abstract idea scrutiny … if the claimant establishes that the claim is directed to a solution of a technological problem.
Don argues that This definition of abstract idea as excluding applied technology accommodates the case law …
Well that is right European anon that another way they can be invalidating it is to say that it was not a “useful art.” But, it is a machine that people are paying for. It is hard to say that a machine that is part of a business is not a “useful art.” I think what the SCOTUS does to try and do an end around this is then throw in the natural laws exception and try to claim that we are really dealing with a natural law.
You know, in all cases, it is circular nutty logic. It does not represent the reality of the invention. It does not represent the reality of modern cognitive psychology and artificial intelligence. The reality is that processing information is an invention. That this invention is often listed as one of the most dangerous technologies in the world because of the potential to surpass human intelligence. And the reality is that there is no way to differentiate between Alice and a computer driving a car in a principled manner under the Church-Turing Thesis.
What it comes down to is that the SCOTUS is wrong and medieval in their thinking. The 1952 Patent Act was written to overcome these problems. If the SCOTUS had invalidated the patent under 103, we would all be in such a better place.
And yes, I know very well how the EPO determines eligibility and have spent many hours reading your case law and prepping attorneys for their arguments before the board.
Your case law is nothing more than a fence around areas and those that pay big bucks and have economic value to the EU can move the fence. That is not the American way.
None of the parties and amici in Alice, Bilski, Mayo, etc were trying to move the American fence in the American way, spending bucks in the process?
Sorry, I must have seriously misunderstood the American way.