Federal Circuit will again review the Subject Matter Eligibility of Ultramercial’s Internet Advertising Patent.

By Dennis Crouch

For the second time, the Supreme Court has issued a GVR decision in the patent subject-matter-eligibility case of WILDTANGENT, INC. v. ULTRAMERCIAL, LLC. The first GVR asked the Federal Circuit to review its pro-patentability decision based upon Mayo v. Promethius. Following that, the Federal Circuit reaffirmed the subject-matter-eligibility of Ultramercial’s patent claims. Now, the Supreme Court has ordered the Federal Circuit to re-review its decision based upon the recent outcome in CLS Bank v. Alice Corp.

The petitioner (accused infringer) asked:

When is a patent’s reference to a computer, or computer-implemented service like the Internet, sufficient to make an unpatentable abstract concept patent eligible under 35 U.S.C. § 101?

Here, Ultramercial’s patent claim covers an eleven step process for “distribution of products over the internet via a facilitator.” None of the eleven steps are particularly innovative or technologically sophisticated. However, taken as a whole, they offer at least a detailed program of operation. Claim 1 is written as follows:

1. A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

a first step of receiving, from a content provider, media products that are covered by intellectual-property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;

a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

a third step of providing the media product for sale at an Internet website;

a fourth step of restricting general public access to said media product;

a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and

an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

148 thoughts on “Federal Circuit will again review the Subject Matter Eligibility of Ultramercial’s Internet Advertising Patent.

  1. Don’t forget this case is based on a 12(b)(6) motion which even Justice Stevens himself wouldn’t be able to (honestly) invalidate these claims under this heightened standard. Not sure they why they didn’t wait and file it as a motion for SJ.

    Reply
  2. DC Ultramercial’s patent claim covers an eleven step process for “distribution of products over the internet via a facilitator.”

    I touched on this earlier but this claim is not “an eleven step” claim. At best, it’s a ten step claim because “steps” eight and nine represent two forks of a path, either of which leads to infringement (or obviousness). You can credit the dust-kicking author of the claims for that bit of chicanery.

    None of the eleven steps are particularly innovative or technologically sophisticated.

    It’s worse than that. Most of the “steps” are “steps” in the same sense that taking 100 breaths of oxygen consititutes 100 discrete “steps” in a typical human endeavor lasting more than a five minutes or so.

    Many judges and patent attorneys and law professors have a bad habit of forgetting that any process — no matter how simple — can be granularized into many “steps” if one chooses to do that. This isn’t about “narrowing” a claim but merely about using as much excess verbiage as possible to describe the claim to make it appear that the claim is more narrow than it actually is.

    If one wished, one could write a lengthy book describing the “steps” required to make peanut butter sandwich from a loaf of bread with a knife and a jar of peanut butter and a jar of jelly. Now include all the “optional” steps and the sky is the limit in terms of the book’s length. None of that qualifies as “innovating”, however. It’s simply kicking up dust in an effort to make something unworthy of a patent look “important”, something patent lawyers become very skilled at doing (we don’t have to look for to see the same people using similarly ridiculous, arcane verbiage here in these comments to make themselves appear “serious” when, in fact, their message is about as simple and childish as a message can possibly be).

    That’s exactly what’s going on with Ultramercial’s claims. The underlying business principle is as ancient (and as abstract) as a business principle gets: anything can be bought and sold, you can use peformance of an act by a customer as a form of currency to purchase that thing, and that act can be performed for a third party in exchange for compensation from that third party. And, yes, you can even keep track of who is doing what and when. Heck, you can even delay the performance or the compensation (“someday I will call on you for a favor”).

    All this stuff is older than the hills and it doesn’t take any special insight to recognize that. It does take a special “insight” to stick your head and the sand and pretend that a claim like Ultramercial’s represents some sort of “improved technology.” Ultramercial didn’t invent the Internet. And nobody invented “Internet advertising” because the moment the Internet existed the ancient rules of monetizing information that applied to previous information dissemination technology applied to the Internet (certainly at the high level of abstraction recited in Ultramercial’s claims — there are no novel structures recited because Ultramercial didn’t invent any; they’re just using existing technology as a field in which to apply an ancient and abstract business principle).

    This claim has zero chance of survival. None. Nada. The only judge willing to go to the mat all the way for this jnk has left the building. Good riddance.

    Reply
    1. Many judges and patent attorneys and law professors have a bad habit of forgetting that any process — no matter how simple — can be granularized into many “steps” if one chooses to do that

      LOL- apparently so too can makers of zombie pet theories.

      ;-)

      Reply
      1. so too can makers of zombie pet theories.

        Does anybody know who or what Kookoo McBl0gtr0ll is talking about? If so, please hold his hand and try to get him to spit his points out. He appears to be losing his shirt again.

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        1. Come now Malcolm, you realize your stepping in your own CRP again, don’t you?

          Your pet theory [oldstep] can be granularized into multiple [oldsteps]…
          Your FAILURE to account for the fact that multiple [oldsteps] and a [newthought] can be both patent eligible and patentable (since, as you yourself have volunteered an admission that mental steps – as part of a claim – are fully allowed under the law.

          You know, this is just one of the several things with your zombie pet theory that you ignore in raising your zombie.

          As can be seen at link to patentlyo.com

          …highlight the fact that your pet theory uses a de facto assumption that the claim elements are not integrated.

          Also lost in your rants being expunged was the reply highlighting three or four other major faults with your zombie pet theory that you never seem to want to clarify. What remains of your pet theory is an excessively banal proposition of a mere appended thought, non-integrated and tacked onto a claim resulting in a claim being not eligible. But even a claim element, completely claimed in structural terms merely tacked on and not integrated also fails (such as a claim to a bicycle and a goldfish in a copper bowl) – thus the crux of your little pet theory and your advocacy falsely centers around the mental step portion.

          Your pet theory does not handle or address the fact that perfectly patent eligible and patentable claims can have elements in the claim that are mental steps, and such steps can carry patentable weight. This has been highlighted many times when you strawman a discussion and move the goalpost to talking only about claims completely in the mind and never get back to discussing claims not completely in the mind, but having only a portion completed in the mind.

          Your pet theory does not handle or address the fact that perfectly patent eligible and patentable claims can have [oldstep]+[oldstep] configurations, let alone [oldstep]+[newthought]+[oldstep] configurations. This highlights the failure of your logic wanting to hold that “doing what is already allowed” is made infringement with but a thought, as clearly there are cases (with NO thought added) that doing a combination of things – already fully allowed – is NOT allowed.

          You seem unable to comprehend these things, and you continue to advocate even when these things are brought to your attention. Your “pet theory” is shown to be nothing more than a zombie and you just don’t care.

          Reply
          1. Anon, considering your self-declared prowess in analyzing cases, have you even read Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2d Cir. 1908), the seminal case on business methods?

            Available at link to bulk.resource.org

            Reply
            1. Nope.

              Given your past indiscretions and over-readings, your labeling the case as “the seminal case” and yet that case missing from any serious discussion of business methods in the Congressional record – you know, when they added the limited DEFENSE to business methods of a certain kind- instead of SIMPLY saying “no business methods” indicates a prima facie case of you being wrong again.

              You are aware that the 2nd circuit is not controlling law to begin with, right?

              Reply
              1. Hotel Security was the seminal case – cited by all that followed including In re Patton, a CCPA case.

                It nominally was overruled in State Street Bank in that Rich mischaracterized its holding.

                Stevens cited to the same case and got its holding correct.

                But we know that Scalia decided to go with nonsense and not the law, and we are today in a mess because of it.

              2. 3 (the new 4) is not 5.

                That is a much more important difference.

                As is the very actions of Congress with the limited business method defense.

                You seem unable to intelligently respond to that point.

    2. MM, when you speak of “older than the hills,” you really undermine the case that business methods are non statutory.

      Reply
      1. No more so than your inability to address the acts of Congress in creating a defense to something supposedly non-statutory (and would thus NOT NEED a defense), Ned.

        Do you continue to post in error so that my corrections show the sharp contrast?

        Reply
      2. Ned’s silence to a (yet another) counterpoint screams his reply.

        Reply
  3. RandomGuy I would personally say it clearly doesn’t meet 103 and call it a day.

    I don’t disagree that it’s incredibly obvious and it should never have gotten out of the PTO. But you do realize that an incredible amount of patentee-coddling nonsense has been shoved into 103 that massively increases the costs of proving obviousness against a patentee who’s willing to go to the mat.

    You don’t need to decide harder issues when the case is easily disposed of elsewhere.

    What’s hard about recognizing that the ancient abstract business principle being protected here (“any thing can be used as currency and you can can extract money or favors from people for the benefits that flow from using their thing as currency”) is ineligible for patenting, whether it’s in the context of the Internet, in the context of a carnival, or in the context of any other business transaction? The answer is: there’s nothing hard about it.

    This claim makes Alice’s jnk look like rocket science.

    Reply
    1. Because it’s not asserting the ancient principle, it’s copying the old but not ancient acts of tv advertising and they’re not verbatim ports. Abstractness applies when the scope of the claims is nothing more than improving something with an abstract idea, and I don’t think it’s fair to call this tv advertising + do it on a computer.

      There’s more there. It’s not much but its more.

      Reply
  4. At what point does SCOTUS conclude that it has, in the Federal Circuit, a serious problem on its hands? Or have its members already begun whispering to various influential folks on Capitol Hill and in the media that things just are not working out with the Federal Circuit? No matter how you feel about patents or the work of Judge Rich, if the Federal Circuit is seen as actively protecting patent interests against the jurisprudence of SCOTUS, something has got to give.

    Reply
    1. The Federal Circuit is just a proxy for the real battle between the branches.

      Reply
      1. What battle between the branches? Did anyone seriously thinking that Congress is going to help enforce patents like this not notice the huge bi-partisan majority by which the Republican House recently passed the Goodlatte Bill?

        Reply
        1. Did anyone seriously thinking that Congress is going to help enforce patents like this not notice the huge bi-partisan majority by which the Republican House recently passed the Goodlatte Bill?
          I looked at the summary of that bill, but I don’t recall seeing any mention of amending 35 USC 101. Did I overlook it?

          Reply
        2. ” … huge bi-partisan majority …”

          This only proves that — especially when it comes to patents — that democrats and republicans are both equally adept at having the wool pulled over their eyes.

          “Bi-partisan” does not = factually, legally, constitutionally … or morally correct.

          Thankfully the Senate — once they were properly informed — would have none of it.

          Bi-partisanly so.

          Reply
          1. It’s all wool pulling!

            ““Bi-partisan” does not = factually, legally, constitutionally … or morally correct.”

            But it does equal politically correct.

            “Thankfully the Senate — once they were properly informed — would have none of it.”

            In other words the elitist body shot the people down again.

            Reply
            1. Nah,

              but just like any political group, realized that they could grift some more by defeating it here and letting it run through the cycle again.

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    2. I’m glad the Federal Circuit is providing some push back against the nonsense from SCOTUS. How else will SCOTUS ever come to see the error of its ways? My problem with the Federal Circuit is that its rulings are TOO CLOSE to those of SCOTUS. A machine isnt a machine if we dont like what the machine does? A storage medium isnt an article of manufacture if we dont like the instructions it holds? Paaaleeeesse

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    3. “Or have its members already begun whispering to various influential folks on Capitol Hill and in the media that things just are not working out with the Federal Circuit? ”

      They already started whispering amongst themselves outloud in other cases. They know what is going on.

      Reply
  5. Computerizing an old method of delivering information and/or “monetizing” such delivery and/or charging people money for something is no more of a patentable improvement to the method or thing than the recitation of a step of “drinking coffee” to the prior art.

    The Supreme Court is injecting common sense into the law. It’s no surprise that the Nuttiest Patent Luvvers Ever are losing their shirts over this change. They want the merry go round to keep turning, after all. Otherwise they’ll have to find somewhere else to grift and that might require them to do some actual work.

    Reply
    1. The Supreme Court is injecting common sense into the law.
      LOL … I guess they misplaced their copy of 35 U.S.C.

      that might require them to do some actual work.
      From your prolific posting, it is PERFECTLY CLEAR that you know a lot about not having enough work to do.

      Reply
  6. The Redoubtable Judge Rader: the ’545 patent does not simply claim the age-old idea that advertising can serve as a currency. Instead, the ’545 patent discloses a practical application of this idea.” Slip Op. at 10. This statement is followed by identification of the specific steps for monetizing copyrighted products set out in the claims, many of which involve complex computer programming.

    To be clear, none of this “allegedly complex computer programming” is recited in the claim. The steps recited in the claim are as follows: receiving, selecting, providing, restricting, offering, receiving, facilitating, presenting, recording, updating, and receiving. Where is this “complex programming”? Is it the same “complex programming” that Rader imagined when he read Alice’s claims? How’d that turn out for Rader?

    The claim recites information processing steps “on a computer”. The computer in this claim does exactly what computers were made to do and were known to do, probably for as long as the “inventors” have been alive. The only thing the “inventors” have added is the type of information that is being “received”, “selected”, “provided”, “updated”, whatever. But since everyone knows that computers process information, how can the type of information being processed possibly turn an old computer into a patentable computer? Did everyone beleive prior to this patent that copyrighted information was somehow not processable by a computer? The computer somehow cares about the legal status of the data?

    …the ’545 patent does not simply claim the age-old idea that advertising can serve as a currency

    No, it simply claims the age-old idea that computers can be programmed to do stuff that people were doing before computers, e.g., use advertising as a currency, among a zillion other computerized abstractions that patents are utterly unecessary to “promote”.

    Reply
      1. You do remember how to (legally) read claims, right?

        I do. I also remember that you used to troll this blog with dozens of different sockpuppets every day. I was reminded of that when I re-visited earlier threads discussing these jnk claims. I was also reminded of how right I was then about these jnky claims and how wrong you were and still are.

        But go ahead and keep pretending that these claims aren’t jnk.

        Reply
        1. Nice topic change.

          However, since you are the reigning sockpuppet master, with your legion ad PatentDocs, you may want to choose a different topic than one that you FAIL at – especially given the way you whined like a little girl and 1ied point blank about your own sockpuppet habits.

          You really are not too bright, are you?

          Reply
          1. you are the reigning sockpuppet master, with your legion ad PatentDocs

            Uh … what?

            Reply
            1. LOL – the Vinnie Barbarino short script reply.

              Just ask Vivika M or Robert or Francis or Friend(s) of the Court or Greggie Weggie or…

              Reply
        2. when I re-visited earlier threads discussing these jnk claims
          Funny that — I came here to discuss the law. You, on the other hand, haven’t met a patent that you haven’t called jnk. Personally, I don’t care about those patents — not my clients. I just care about the law.

          Reply
          1. His focus is always on a **sniff test** and never on the underlying law.

            There is an obvious reason for this.

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      2. You do remember how to (legally) read claims, right?
        He still hasn’t figured out 35 USC 112 — but we all knew that already.

        Reply
  7. Patent No. 7,346,545 claims a method for distributing copyrighted products over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement and the advertiser pays for the copyrighted content.

    LOLOLLOLOLOLOLOL. Heckuva job, Kappos.

    Reply
  8. Replace the phrase “internet website” in step 3 with television and you have a well-known tv act.

    The most well-known way to deal with this is to simply state that under KSR the previous act in tv becomes obvious on the website. What the Supreme Court is pointing out is that the other way to look at it is to say that it is not only an act obviousness, the claim itself has a coextensive scope with “doing tv advertising on the internet”, in which case the addition is merely an idea.

    I could see this solely violating 103 rather than 101, but I haven’t read the spec either.

    Reply
    1. You must be a patent examiner. Don’t bother reading the spec pal. You didn’t read the claim, apparently.

      I stopped evaluating your TV analogy with any seriousness after steps 4 and 5. Probably more in there but I also don’t waste time deconstructing every flaw in most rejections I get these days.

      Reply
      1. “I stopped evaluating your TV analogy with any seriousness after steps 4 and 5.”

        Yeah, concepts like pay-per-view or premium channels or the fact that certain types of media are “exclusive” (See Russert’s exclusive interview with the president) don’t restrict at all. Never mind that shows used to say you could send a letter and pay to receive either a transcript or a copy of the program, which is a monetary restriction. I agree it’s not the kind of hard restriction that some internet sites have, but then again the claims don’t require that.

        Five is pretty much the heart of tv advertising, I can’t even imagine how you get that wrong.

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    2. I could see this solely violating 103 rather than 101

      Why not both? Happens all the time. There’s no reason a patent can’t fail under multiple statutes.

      The jnkiness of the claim presents itself the moment you see the faux-limitation “covered by intellectual property rights protection”. Why would such words ever appear in a patent claim — and independent claim no less! — unless the patent system has gone off the rails?

      But let’s just take the simplest version of this method:

      1. receiving information from (surprise!) a provider of information;

      2. selecting a sponsor message to be associated with the information and updating a log where you keep track of that kind of thing (keeping track of stuff that you do in exchange for money is kind of fundamental to running a business — Randy Rader might have got lost here because it sort of involves math which is like really complicated);

      3. offering the information to people (on the Internet — wowee zowee, folks, it’s like Star Trek here!);

      4. restricting general public access to the information (uh … right, we’re not giving it away — sooper dooper techno stuff here, folks! wowee!);

      5. offering the information in exchange for the user wasting his/her time watching some jnk that he/she doesn’t want to watch (this trick is older than the fracking hills — but Randy Rader thinks it’s really complicated and he’s such a cool high fivin’ guy so let’s give him a break … LOL)

      6. receiving a request for the information (surprise! that’s what happens when you offer data);

      7. responding the request by showing the ad that you said you were going to show (nobody could have predicted!);

      8. recording the transaction event to the activity log (see 2, above — keeping track of stuff is important in a business … did you know that computers can help? yup, it’s true)

      9. receiving payment (LOL! yes, folks, it’s a business method!).

      This is advertising as currency. There is nothing more here unless you are an ignorant five year old easily confused and distracted by fancy words and multiple paragraphs.

      Time for the softie wofties to grow up. We all knew it was going to be hard for them. We all knew they would screech and cry at every turn. But they are going to grow up. Let’s have fun watching them struggle!

      Reply
      1. Of course things can fail under multiple prongs.

        The 101 question is whether he adds nothing more than the idea (i.e. does he just say Do what was done before on tv on the internet) or does he add something? Certainly it comes close to just saying do it on tv, but in this case I think he adds something – the fourth, sixth and ninth steps (as he states them) don’t really fit for what happens on tv. They’re obvious changes – four and six were direct objectives for tv, and nine is just standard poll response via computer, but I think they’re attempted additions.

        I think it’s more proper to just say it’s obvious. Of course, the court views 101 as a threshold issue and I wouldn’t say it’s ridiculous to say it fails under 101, but I would personally say it clearly doesn’t meet 103 and call it a day. You don’t need to decide harder issues when the case is easily disposed of elsewhere.

        Reply
        1. I would personally say it clearly doesn’t meet 103 and call it a day.

          I don’t disagree that it’s incredibly obvious. But you do realize that an incredible amount of patentee-coddling nonsense has been shoved into 103 that massively increases the costs of proving obviousness against a patentee who’s willing to go to the mat.

          You don’t need to decide harder issues when the case is easily disposed of elsewhere.

          What’s hard about recognizing that the ancient business principle being protected here (“any thing can be used as currency and you can can extract money or favors from people for the benefits that flow from using their thing as currency”) is ineligible for patenting, whether it’s in the context of the Internet, in the context of a carnival, or in the context of any other business transaction? The answer is: there’s nothing hard about.

          This claim makes Alice’s jnk look like rocket science.

          Reply
  9. Why was not this large and continuing waste of time and money [for everyone but the attorneys] avoided by filing a CBM with prior art (not just a 101 argument) back when they first became available under the AIA?

    Reply
    1. Paul, I suspect both sides of this fight want the issue of eligibility decided because there are a lot of other patents of this ilk out there generally and perhaps one or more held by the patent owners.

      Winning on principle is important.

      Reply
      1. Winning on principle is important.
        … when it isn’t your fight. When it is your fight, winning is the only thing that matters.

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      2. Careful there – too much emphasis on “winning” will draw out the 6′s “you’re a psycopath” mantra…

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        1. I’m unaware of “wanting to win” being a specific concern under psychopathy. But perhaps you can help enlighten us on how that is?

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          1. Wanting to win is equivalent to wanting be right, as naturally in law, the one that is “right,” the one with the better legal argument is the one that “wins.”

            You really don’t know this?

            Reply
            1. “Wanting to win is equivalent to wanting be right”

              Anon, “wanting to be right” (as you put it) or rather, simply thinking you always are right and others are wrong and then usually throwing it in their faces, as well as “truth owning” are symptoms of OCPD.

              Not psychopathy. Please, pretty please, take the time (ten minutes max I promise) to read at least a couple of the articles I’ve posted for you. You can even check the two wikis for both psychopathy (aka antisocial disorder or sociopathy) and also for OCPD respectively.

              To be clear though merely “wanting to be right” is all fine so long as you keep that sht to yourself or express it as a DESIRE as opposed to stating that what you think is actual irrefutable immutable TRUTH (or FACT as the case may be).

              Either way psychopathy /= OCPD.

              You just happen to have both. Turns out the later (OCPD) presents most often in folks with some other condition (here your other condition is psychopathy).

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            2. And it is alright bro it isn’t like we’re all not talking to you anymore. But please, for the love of all that is g o o d and h o l y, just take an hour out of your life and see a the rapist and just let them get a general take. Just see what they say. Maybe ment ion someone said maybe you have a touch of both psychopathy and OCPD. You’ve got practically nothing to lose but a few hundred dollars (depending on insurance even less) and the world potentially to gain. I mean, who knows? Maybe they pronounce you totally fit! Then you can come back here, show me their signed note and totally throw it in my face! And I’ll be like omg omg I’m soooooo sorry anon. And then you can hold it over my head for like ever.

              Reply
            3. And it is alright bro it isn’t like we’re all not talking to you anymore. But please, for the love of all that is good and holy, just take an hour out of your life and see a therapist and just let them get a g e n e r a l take. Just see what they say. Maybe mention someone said maybe you have a touch of both psychopathy and OCPD. You’ve got practically nothing to lose but a few hundred dollars (depending on insurance even less) and the world potentially to gain. I mean, who knows? Maybe they pronounce you totally fit! Then you can come back here, show me their signed note and totally throw it in my face! And I’ll be like omg omg I’m soooooo sorry anon. And then you can hold it over my head for like ever.

              “Wanting to win is equivalent to wanting be right, as naturally in law, the one that is “right,” the one with the better legal argument is the one that “wins.””

              Also a quick jab at you that I can’t pass up. Under your “logic” here Alice was both “wrong” and the “loser”. Hehehe.

              persuasiveness > rightness unless it’s run of the mill. Though rightness never hurts. That’s just what I hear from the legendary attorneys.

              Reply
            4. You still trying to control through the bogus med line, while not applying any of the fabulous viewing upon yourself.

              How do you see beyond that log in your eye?

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    2. Because there was none? Same reason it was allowed?

      Reply
      1. Because there was none? Same reason it was allowed?

        I’m pretty sure there were tv commercials prior to the internet.

        Reply
        1. I’m pretty sure that statement reflects impermissible “gist” type reasoning that overlooks the claims as a whole.

          TV commercials do no read on this claim as a whole.

          TV commercials/programs do not involve these steps:

          a third step of providing the media product for sale at an Internet website;

          a fourth step of restricting general public access to said media product;

          a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

          a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

          a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

          a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

          a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented;

          Reply
          1. Pretty sure that Random Examiner already recognizes that and is just tr011ing you.

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          2. TV does read on 5-7 and 10

            TV reads on 3 but for “an internet website” so I guess you’ll have a hard search on that one.

            The business practices of television read on 4

            9 is doing a poll on the internet and receiving a response.

            But sure, go ahead and say it was allowed because there was no prior art. Let me ask what you think is novel and non-obvious? Claim as a whole? :P

            Reply
            1. “TV does read on 5-7 and 10″

              No, it doesn’t. This is 5L

              a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

              I watched 24 on monday night. I agreed to no preconditions and I viewed no sponsor message. I checked twitter during the commercials.

              this is 6:

              a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

              I most certainly did not request to view a sponsor message and most certainly did not submit a request to do so.

              Since I did not submit a request, 7 was not involved either

              since there was no transaction, there was no transaction to record.

              Are your Office Actions as fanciful and baseless as your posts?

              That explains the backlog and appeal rate….

              Reply
            2. “Let me ask what you think is novel and non-obvious? Claim as a whole?”

              The issue is 101. I have no strong opinion about 102 or 103. I do note, however, that you have not cited any compelling 102 or 103 art. ….just a lot of baseless eye rolling.

              Reply
  10. Do the same 3 justices (Rader, Lourie, O’Malley) as the prior two decisions rehear it again? Well obviously Rader can’t hear it, but I think it is unlikely based on CLS Lourie and O’Malley will reverse, since there isn’t much new in CLS.

    Reply
    1. Fed Circ: This is what we judge!

      USSC: GVR, do it right ivo our new decision

      Fed Circ: This is still what we judge!

      USSC: GVR, for srs, do it right ivo our new decision.

      Fed Circ: ???

      Tune in next thread to see if the Fed Circ does it right!

      Reply
        1. For the second time, the Supreme Court has issued a GVR decision in the patent subject-matter-eligibility case of WILDTANGENT, INC. v. ULTRAMERCIAL, LLC

          Reply
        2. Because it was. The first GVR has a different Docket No. with the Supreme Court, so it doesn’t show up in your scotusblog.com link. Here it is at the Supreme Court’s website:

          link to supremecourt.gov

          The case has been going on for a long time.

          Reply
  11. link to onpolitics.usatoday.com

    Gee, I wonder why? It seems the more outrageous the royal 9 become the more proud of themselves they become and the less respect they have from the common people.

    Rader should have stayed on as the Chief and fought the good fight.

    Reply
    1. The Supreme Court should stop wasting its time on birth control, abortion, federal appointee legitimacy, criminal procedure, health care, and other controversial subjects that make it less and less popular.

      Instead, it should take more and more patent cases. At least the results of Supreme patent cases are widely popular.

      Reply
      1. My client is a closely held religious corporation whose holy scripture states that a fetus dies every time they pay a patent royalty.

        I’m sure the Supreme Court will be very interested in hearing this case … unless of course they decide that my client’s “religious freedom” isn’t as important as other people’s “religious freedom”. That’s what “religious freedom” is all about, of course: figuring out whose “religious freedom” really matters and whose doesn’t. I wonder how a mostly male and Catholic Supreme Court will decide these difficult questions?

        Reply
  12. Everything in that claim is non statutory save the internet and the display.

    The result here would be forgone but for the fact that the Supreme Court does not look to the statute, but looks to its definition of “abstract,” which they do not define.

    Reply
    1. “Everything in that claim is non statutory save the internet and the display. ”

      Ya mean besides the fact that it recites a method?

      Reply
      1. Or transforming information which takes time, energy, and space. Conservation of information is the most important law of physics.

        Reply
      2. Mental processes are methods too, Les. They aren’t eligible and they never will be.

        Reply
          1. Hardly a “straw man” to address Les’s argument head-on. But then again e all know you’re a total fxckwit.

            Reply
        1. §101. Inventions patentable

          Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

          I don’t see any mention of mental processes in particular, do you?

          I do see ANY and I do see Process. I think ANY is pretty broad and I think ANY encompasses mental.

          Reply
          1. I get that many of you think the Supreme Court is wrong, but you can’t just ignore it. It is binding precedent. Hopefully, you are doing your clients better than this in real life. Otherwise, patents you draft will be invalidated because district courts do have to follow the Supreme Court (regardless of whether you like it or not).

            Reply
            1. I get that many of you think the Supreme Court is wrong, but you can’t just ignore it. It is binding precedent.
              What binding precedent have they given us? It is an abstract idea when we say it is — very illuminating.

              Reply
              1. Well, it is binding precedent, but I’ll agree that none of the Supreme Court’s decisions are particularly illuminating.

                District courts are going to invalidate a lot of patents under Alice, et al though.

              2. District courts are going to invalidate a lot of patents under Alice, et al though.
                Appreciably more than they would under Bilski?

                The Bilski 4 that would have invalidated all business method claims is now the Alice 3. That is a message as well.

            2. Isn’t the law binding on the Court? They haven’t declared 101 unconstitutional have they?

              Reply
              1. The Court said 102 contains implicit exceptions. It’s right up front. The response of bull, follow the merit has some merit to it. Seems strange to me that some of the conservatives on the Court are down with implicit exceptions to a statute (especially since I don’t think the cases say this is constitutionally required), but nonetheless that’s what the case says.

                Like it or not, it’s the law until overruled by the Supreme Court or Congress (assuming not constitutionally required).

              2. anonymous, ““We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Association for Molecular Pathology v. Myriad Genetics, Inc., 569
                U. S. ___, ___ (2013) (slip op., at 11) (internal quotation marks and brackets omitted). We have interpreted §101and its predecessors in light of this exception for more than 150 years.”

                But this only really means they are interpreting 101 consistent with the exclusions.

                The court has previously held that products of nature are not new compositions. There further indicated in dicta, see footnote 15 of Flook, that laws of nature are not new.

                All they need to recognize now is that abstract, as traditionally recognized in cases like Hotel Security, are nonstatutory because they are neither compositions, manufactures, machines nor Arts.

          2. The simple truth is that the “process” should have been interpreted with the the same scope as a “product by process”. We all know this.

            Reply
            1. The “but-I-slept-at-a-Holiday-Inn-last-night” representative has arrived.

              We all know that you simply don’t have a clue and that is the truth.

              Reply
        2. But, this is not a mental process…. so, which made up exception to you think it falls under?

          Is it a natural law or natural phenominon?

          Is it math?

          Reply
          1. Not a law of nature, obviously. Nor a natural phenomenon, just as obviously.

            I got it! It’s an abstract idea! And I get to call it that and you can’t stop me because there is no definition of “abstract idea”!

            Hahaha

            Reply
        3. Do you think the subject claim recites a mental process? If so, it would be another reason for you to have your own mental processes checked.

          Reply
      3. Les, a nonstatutory method.

        A statutory method from Morse:

        “It is not easy to give a precise definition of what is meant by the term “art,” as used in the acts of Congress — some, if not all, the traits which distinguish an art from the other legitimate subjects of a patent, are stated with clearness and accuracy by Mr. Curtis, in his Treatise on Patents. “The term art, applies,” says he, “to all those cases where the application of a principle is the most important part of the invention, and where the machinery, apparatus, or other means, by which the principle is applied, are incidental only and not of the essence of his invention. It applies also to all those cases where the result, effect, or manufactured article is old, but the invention consists in a new process or method of producing such result, effect, or manufacture.” Curt. on Pat. 80.”

        From Federal Statutes Annotated:

        “A system of transacting business, disconnected from the means for carrying out the system, is not, within the most liberal interpretation of the term, and ‘art,’ And unless the means used are novel and disclose invention such a system is not patentable. ” Hotel Security Checking Company v. Lorraine Company, Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2d Cir. 1908).

        Reply
          1. Les, the SC did not define a patentable process, except saying it cannot include the exclusions. I think they will in the end actually apply the traditional definition of Art as provided by Morse, Corning v. Burden and by Cochrane v. Deener, and use the methodology provided by Hotel Security.

            In fact, Alice is indistinguishable from Hotel Security except that Alice relies on “abstract” and Hotel Security relied on the traditional definition of Art to exclude business methods.

            Reply
            1. Why is it that you have yet to address the ADDITION of a limited defense to business methods,

              Why a defense if the entire category is already outside of the bounds?

              Silence screams the answer.

              Reply
              1. anon, congress reacted to State Street Bank, a case that overturned long established law to the contrary. SSB was unexpected, and the public had to be protected.

                These are the facts and the reasoning behind the limited public use defense enacted after SSB. The majority of Bilski did rely on this, the minority had a different view.

                In light of Alice, it might be high time for congress to say something about business method and its misbegotten prior user defense provoked a Bilski majority that wrongly held that business method were not categorically excluded, when, historically, they were.

              2. Your answer proves my point.

                As I said: why a defense if not allowed in the first place – Congress made a defense when they JUST AS EASILY have merely reaffirmed your (oft-repeated) mantra of “no business methods.”

                They did not. – deal with that.

              3. anon, everything you said is true. But it is high time for Congress now to fix its mistake because the Supreme Court is off on a lark with this “abstract” thing they are doing. They should simply undo the harm they did with that prior user defense statute by saying that it was not congress’s intent to endorse or authorize business methods, and that congress specifically endorses Hotel Security, the case Rich trashed, to the extent the Fed. Cir. can do something about the 2d Circuit opinions other than distort what they said and fail to follow them.

                The Supreme Court is becoming a laughingstock by not following the statute and doing its own thing.

              4. Calling it a “mistake” is more than just self-serving, Ned – your “statutory” argument is D.O.A.

                You keep on wanting to take extremely tortured views in order to grasp that which has slipped through your fingers.

                Just be honest about it already.

              5. it was not congress’s intent to endorse or authorize business methods
                Oh great … we go from trying to figure out what is meant by abstract idea (did you know that a computer is an abstract idea?) with trying to figure out what is meant by “business methods.”

                As an aside, is there any policy reason why “business methods” be excluded from patentable subject matter over other acceptable methods? What is special about “business methods” that make them deserving of special treatment under the law?

              6. “why a defense if not allowed in the first place – Congress made a defense when they JUST AS EASILY have merely reaffirmed your (oft-repeated) mantra of “no business methods.””

                Because they were on the fence, as most didn’t understand what all was going on or the real ramifications, and more importantly did not at that time have the political will to pass such a thing. Have you not been paying attention to the dysfunctional congress we have now?

                Remember the cardinal rule of our government: kick the fcking can down the road until something blows up and you have to fix things.

      1. … As long as you only apply the broadest reasonable interbutation …

        Reply
    2. There is no “display” in the claim as a noun. “Display” is only used in the claim as a verb.

      Reply
  13. Does the fact that the Supreme Court asked the Fed Circuit to review the decision again vs. simply denying cert imply that the Supreme Court would likely reverse?

    Reply
    1. It means that they have done enough Chamberlain acts for the current term.

      Patent “peace” in our day has been achieved.

      Reply
    2. Does the fact that the Supreme Court asked the Fed Circuit to review the decision again vs. simply denying cert imply that the Supreme Court would likely reverse?

      I don’t think so. CLS gives us a slightly more detailed analytical framework to work with; I think the Court is just giving the Federal Circuit an opportunity to apply it.

      I think that the Federal Circuit should get to the same answer under the new framework, although it’s a close call. Arguably the claimed method is more (perhaps not much more) than simply computerizing an abstract concept; it’s an improvement (via the transaction counters, at least) of Internet-based delivery of digital media.

      Reply
      1. I don’t know,….

        Something about “just apply it” has an unsatisfying tone…

        ;-)

        Reply
    3. You make the child do the problem over again until he gets it right, you don’t do it for him.

      Reply
  14. I fail to see how subject matter eligibility is effected by the number of steps.

    Reply
    1. Adam -

      Since “abstract” has not been defined, it might be that “abstract” means broad. In that case, the number of steps (or even the number of words), which in general has in inverse relationship to breadth, might have a bearing on whether a claim is “abstract”.

      Reply
      1. Les, indeed – abstract traditionally mean not limited to a means or method for achieving a practical result. It sounded in 112, not 101.

        We have found that a generic computer implementation is not enough. But is a detailed software implementation enough?

        That was Rader’s position, after all. He might have been right for all we know.

        But I still think the SC is using abstract as meaning non statutory — agreeing with Stevens in Bilski without actually saying they agree.

        Reply
        1. agreeing with Stevens in Bilski without actually saying they agree.

          After pointing out that 4 is not 5, and then confirming that with a 3 (the new 4) is not 5, your tortured reach here Ned borders on sheer lunacy.

          You also forget the fact that if the Court wanted to define ‘abstract’ as you are attempting to do, they could have easily done so.

          They did not.

          What they did do was expressly refuse to define ‘abstract.’

          At all.

          You cannot make up definitions where the Court has expressly stated ‘undefined.’ You are just operating in pure fantasy land.

          Reply
        2. “abstract traditionally mean not limited to a means or method for achieving a practical result.”

          Well then why was the Alice claim “abstract”?

          Alice WAS limited to a means/method. SHADOW ACCOUNT ESTABLISHMENT AND MAINTENANCE!

          Reply
  15. May the Rich spirit of directly applying the law (as written by Congress, the only true wielder of constitutional authority) and not being cowed by an addicted Royal Nine guide the CAFC.

    Reply
      1. Odder things have happened – look at the Diehr and Chakrabarty decisions coming on the heels of Benson and Flook….

        Reply
        1. Those cases were teed up because in part the CAFC recognized the massive amount of dicta that they could dismiss legitimately.

          Reply
    1. “the only true wielder of constitutional authority”

      Huh? Did you take a constitutional law course in law school? Pretty sure all three, co-equal branches of government are wielders of constitutional authority.

      But I guess in your mind, we don’t have to listen to the Supreme Court. I’d love to hear advice that you give to your clients. Hopefully, you have your views, but in practice you actually follow what the Supreme Court says.

      Reply
      1. The authority here is the authority to WRITE patent law.

        You stumbled in late and need to catch up.

        Reply
        1. I get your view, but the Supreme Court doesn’t agree. And that means the Federal Circuit, district courts and PTO aren’t going to agree.

          For your position to prevail, you need to get congress to override Alice, et al (which it can since those decisions were not constitutionally based) or you need to get the Supreme Court to reverse itself. Good luck on either.

          Like it or not, this is the world we now live in.

          Reply
          1. The addict doesn’t agree.

            Nice.

            Now open your eyes son and see why.

            I afford you your right to clench tight your eyes and march up lemming hill. But please, to say that this decision – ANY decision – must simply be accepted is to NOT understand law and the fact that the Supreme Court does get things wrong.

            Reply
            1. anon,

              I’m not sure I understand your post.

              Of course the Supreme Court gets things wrong. And you are free to criticize them here, on other websites, in scholarly articles, etc.

              My point though is that regardless of whether they are right or not, district courts have to follow Supreme Court precedent. Patents will be invalidated under Alice, and I doubt the law is going to swing in the way you want it in the near future. Keep advocating for down the road, but it’s not going to be persuasive in front of a district court judge in the present.

              Reply
          2. “which it can since those decisions were not constitutionally based)”

            Well, you say that, but that is yet to be concretely decided.

            Reply
          1. You are way beyond your capabilities JR.

            Do you even know what the separation of powers doctrine is? Do you recognize that the it is the constitution itself that delegates which branch has the sole authority to write patent law?

            Reply
  16. The fact that it is on 12b6 should implicate, enormously, the presumption of validity and, further, what is a “fact” in this context (conventional? scope of preemption? etc.).

    Reply
    1. David, I will ask this question once again: did Congress intend to overrule the printed matter and business method doctrines that held such to be non statutory subject matter when it enacted the ’52 Act.

      You know the answer to this question, but cannot answer it as it fundamentally undermines Judge Rich’s and Judge Rader’s view of 101.

      Just to refresh, both doctrines found that printed matter and business methods are neither an Art, machine, manufacture nor composition, and that in the claims before them, the novel subject matter was ineligible (neither an Art, etc.) and the eligible subject matter was old, i.e., lacked invention.

      This just happens to be the same mode of analysis of Prometheus and Alice, save that in Prometheus the ineligible was a law of nature and in Alice the ineligible was abstract.

      It seems, the more things change, the more things stay the same.

      It is a pity that the Supreme Court has had to reinvent the wheel to undo the damaged caused by Rich in State Street Bank.

      Reply
      1. Again Ned the option FULLY open to Congress was to reiterate what you take for granted – they could have merely stated “no business methods.”

        They did not

        Reply

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