Professor Bernstein’s current scholarship focuses on the role of end users in the patent system. Because end users are fast becoming major stakeholders in the operation of the patent system, I asked her to write a few words about how she conceives of these players. – Jason
Guest Post by Gaia Bernstein, Professor of Law, Seton Hall University School of Law
We usually think of two players in the patent system: the patentee and its competitor. Increasingly, however, end users – who are neither patentees nor competitors – are playing a significant role in the patent system. The attention of the press has recently turned to patent assertion entities who are suing vast numbers of customers using patented technologies in their everyday businesses. For example, one patent assertion entity has sued individual podcasters, including the Comedian Adam Carolla. End users were also principal players in some of the recent patent cases before the Supreme Court. In Bowman v. Monsanto, Monsanto sued a farmer for re-using its patented seed technology. End users also appear as patent challengers: in Association for Molecular Pathology v. Myriad Genetics, patients and physicians sued to invalidate breast cancer gene patents. And patients and drug stores repeatedly challenge pay-for-delay agreements between patentees and competitors, claiming they undermine patients’ interests in access to generic drugs. This is only the beginning: end users are likely to become even more prevalent in patent litigation, as 3D printers become more popular, making it more likely that an individual or a small business will make an infringing item that will expose them to patent liability.
All of this begs the questions what is an “end user” and how well is patent law suited to deal with this new player? In The Rise of The End User in Patent Litigation, forthcoming in the Boston College Law Review, I define end users as people and companies that use a patented technology for personal consumption or in their business. I emphasize that they are strictly users. Even if they incorporate the patented technology into a product or service they offer their customers, they do not make or sell the technology standing by itself. I explain that end users differ from competitors in three respects. First, end users usually lack technological sophistication – they are generally not technological companies and do not produce and supply the allegedly infringing technology. Second, end users usually become involved in the patent conflict relatively late in the life of the patent, after the patented technology enters the market and achieves widespread adoption. Third, end users are typically one-time players. In most cases the technology is ancillary to their business and they do not have a long-term stake.
Patent litigation is exorbitantly expensive. It is all the more expensive for end users who lack the technological expertise to challenge validity and infringement claims and cannot rely on in-house technological expertise. Because end users are often one-time players, they prefer to avoid the expense of patent litigation and settle even strong cases, making them a particularly lucrative target for patent owners. Unfortunately, even the most recent substantive patent law legislation, the America Invents Act (“AIA”) fails to address the growing role of end users. I show that while the AIA attempts to address the needs of small entities, mainly by adding and changing procedures to challenge patents in the patent office, thus providing a cheaper and faster forum for contesting validity, those same novel procedures are largely unsuitable for end users because they permit expansive challenges mostly early in the life of the patent before end users are likely to be involved in the patent dispute. The procedures that allow challenges later in the life of the patent limit the grounds available for challenging the patent. Thus, unlike even small competitors of the patent holder, end users are unlikely to benefit from the enhanced patent office proceedings put in place in the AIA. The effect of this is to leave them without the very same tools that were implemented to protect small entities.
Ultimately, the rise of the end user is a complex phenomenon that needs to be addressed by a series of reforms, which I am addressing in other works in progress. Here, however, I focus on the role that fee shifting of attorney fees and litigation expenses to the prevailing party can play in end user cases because a modest change could contribute toward leveling the footing of end users in all type of end user-patentee disputes.
Fee shifting in patent litigation has been a hot topic this year. Recently, the Supreme Court decided two fee shifting cases: Highmark v. Allcare and Octane Fitness v. ICON Health & Fitness. In Octane Fitness, the Court lowered the standard for awarding fee shifting in patent litigation. Congress is also considering multiple bills advocating different versions of fee shifting. The problem is that although some of the congressional bills address PAE’s suits against customers, neither these bills nor the Supreme Court decisions address the broader role that end users are now playing in our patent system. In the article, I argue that the case for fee shifting is strong where end users are implicated particularly because of the great inequality in technological sophistication between end users and patentees and because end users frequently represent many other parties who are not before the court. For these reasons, end user status should be considered as a factor that weighs in favor of fee shifting, particularly when the end user fits the paradigmatic form of a classic end user.
There is more in the article than I can write about here. If you are interested, please take a look at the full version. http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2440914.
This opinion link to cafc.uscourts.gov is a model of succinctness.
I think the moral here is that you shouldn’t necessarily appeal just because the PTO’s analysis is g@rbage. In this case, the PTAB affirmed the examiner’s findings that the claim term “name of a person” should be construed to include a sequence of numbers and that a functional parameter in a web query could be ignored since it was “non-functional descriptive material.” The CAFC (fortunately) saw through that silliness but (just as fortunately) recognized that the claim was blindingly obvious over the primary reference anyway.
I hope the attorneys were paid in advance.
The claim at issue:
1. A method of generating a custom web page specific to a person accessing the website, the method comprising the steps of:
obtaining a list of persons;
providing the website on a first computer device connected to the Internet;
storing the list of persons in the first computer device;
sending to each of a group of persons, a direct mail or email piece including: (i) a uniform resource locator (URL) of the website, (ii) second information designed to induce the person to contact the first device and place an order, and (iii) a suffix to the URL, wherein the suffix states a name of the person in the group to which the direct mail or email piece is directed;
receiving by the first computer device from a second device connected to the Internet a transmission by one of the persons in the group, wherein the transmission is addressed to the URL and includes the suffix to the URL;
comparing the transmitted suffix to the URL with a data base of stored information for generating promotional offers,
if the transmitted suffix to the URL corresponds to any stored promotional offer
information, generating from the data base a custom response including a selected promotional offer for the person contacting the first device, and
transmitting to the person’s second device the custom response with the selected promotional offer.
Here are the first 2 claims from the primary reference:
1. A system for creating a personalized computer user interface for a communications network in connection with a direct marketing program, comprising:
(a) database means for storing a plurality of recipient data records each comprising recipient addressing information, and a unique personal identification code for each of a plurality of recipients;
(b) distribution means for distributing to each of the recipients an electronic return address containing the unique personal identification code;
(c) computer server means operationally coupled to the communications network for serving a plurality of remote computers, including access means for allowing a responding recipient to access the computer server means by entering the electronic return address into the remote computer;
(d) retrieval means coupled to the computer server means and database means for retrieving recipient data from the database means correlated to the personal identification code contained in the electronic return address; and
(e) user interface creation means operationally coupled to the retrieval means and the database means for creating a unique interactive user interface based upon the recipient data and communicating the user interface to the remote computer.
2. The system as defined in claim 1, wherein the communications network comprises the Internet, the computer server means comprises a web server computer, the remote computer includes a web browser, the electronic return address comprises a uniform resource locator, and the user interface creation means creates a web page.
How does the rotation of duty tro11ing this art field work between you and Malcolm, Leopold?
How does the rotation of duty tro11ing this art field work between you and Malcolm, Leopold?
You’re a p@ranoid little fellow, aren’t you?
In fact, I have no problem with this “art field,” and no problem with the subject matter at issue here. In this particular case I was struck by (a) the PTAB’s poor work, and (b) the foolishness in appealing this particular case in the first place, given that the sole distinction between the appealed claim and the prior art is that the former uses a “person’s name” as an identifier (for a person) while the latter uses a number.
lol – you are not p@ranoid if they really are out to get ya.
Or do you, like Malcolm, really think that the patent system is not under attack?
At your leisure, pull your head out of the sand and take a look at what is going on.
You seem – again – only too eager to ignore what I am actually posting – so your comments about “no problem with this art field,” PTAB poor work, and particular foolishness of fighting a losing battle on the overall position of obviousness merely makes some nice dust-kicking by you.
All of this reflects that Leopold-wrong-person-just-shut-up mentality.
I am glad that you do not have a problem with this art field. My post is not concerned at all with any such notion, so why do you bring it up?
We agree with the poor PTAB, so again, why do you bring it up and pretend that such is somehow at issue between us?
The sole distinction argument was CRP, but I never indicated otherwise, so again, why do you bring it up and pretend that such is somehow at issue between us?
You are doing that “anon said” reactionary thing again – the hallmark of Leopold.
So you agree with everything I’ve said, and yet I’m “tro11ing this art field?” You’re leaping on every comment I make, for some unfathomable reason, and yet I’m “doing that ‘anon said’ reactionary thing,” whatever that is? P@ranoia is clearly not your only problem, my friend.
The “tro11ing” comment comes from the ad-hoc insertion that evidences a distaste of a certain art field (aside from the fact that you say you “do not have a problem.”
You only cement that view by trying to kick up dust with your additional “I’m innocent” style protests.
As to “leaping on every comment I make” – we’ve been down that road before – and you were wrong then too.
Oh, so Leopold of you.
Worth noting (in particular to Les and Ned):
“The CAFC (fortunately) saw through that silliness ”
to which you may be referring to this portion of the CAFC decision:
“While we question the expansiveness of the Board’s claim construction and disagree with the Board’s application of the printed matter doctrine here,”
Les, this just goes to show that Article I courts (PTAB) will get the law wrong.
Ned, please revisit the simple set theory explanation that I have provided you regarding the exceptions to the judicial doctrine of printed matter before you launch (again) into a clearly wrong explanation of something that goes to the heart of why software is a patent eligible manufacture in its own right.
Les, this just goes to show that Article I courts (PTAB) will get the law wrong.
You got that right. I’m sure there are some fine ALJs at the PTO, but there are also far too many that will stand on their heads to affirm the nonsense coming out of the examining corp.
the scary thing is the amount of deference that Article I court is taking in its, um, well, let’s call it “interpretation” of existing law and Article III court interpretations…
As I have noted to Ned, one particular founding father was especially wary of violations of the separation of powers doctrine, and the coalescing of power in one branch (as exemplified here with the Executive Branch, and the [shadow] control of a director-less Federal Agency acting of its own accord in making up its own policy, de facto legislating its own rules and “law,” and sitting in its own judgement of what the rules of law mean – with the PTAB under such close and direct control of the policy-setting power of that agency).
This would make an excellent topic for some academic to explore…
A new case out today, link to cafc.uscourts.gov , involves claims directed at the end user.
To save you some time, here’s the entirety of the opinion:
The judgment is affirmed on the grounds that (1) the asserted claim 9 of United States Patent No. 6,494,457 (the ’457 patent) would have been obvious and (2) the district court did not abuse its discretion in refusing to permit plaintiffs to amend the complaint to include claim 1 of the ’457 patent.
Claim 9, which is reproduced below, might well be invalid for reasons other than 35 U.S.C. s. 103. Claim 1, which the plaintiff apparently wanted to add to the case, but belatedly, is directed to “a method of playing an enhanced hide and seek game.”
I’d love for someone to research this and find out who the accused infringer was.
9. An enhanced hide and seek game, comprising:
an object capable of being hidden;
a transmitter unit associated with said object, said transmitter
unit configured to transmit a signal generally
outward from said object; and
a seeker unit associated with the game participant, said
seeker unit having a receiver therein for receiving said
signal from said transmitter unit; said seeker unit
comprising a calculating means for determining a first
distance between said seeker unit and said object, a
second distance between said seeker unit and said
object and a relative change in distance, said seeker unit
further comprising a speaker for transmitting one or
more messages to the game participant;
wherein after said object is hidden and said transmitter
unit is activated, the game participant utilizes said
seeker unit to find the location of said object by
receiving said messages from said speaker.
Since Shelly Conte is a listed inventor, my guess would be that the accused infringer was Jakks Pacific, Inc.
(I think you may have missed in thinking that this case was aimed at “end users”)
The change in pseudonym has not improved your accuracy Leopold.
(I think you may have missed in thinking that this case was aimed at “end users”)
It’s amazing how you can tell what I’m “thinking,” even when I say something completely different.
lol – what did you “say” that was “completely different?”
Or is this going to be (yet another) of those things where you are wrong and continue to chase your tail? How are those ladders of abstraction reference materials that you said that you were going to provide so long ago coming along?
That ability is called psychopathy.
(sigh)
6,
Your 15 minute window on the attempt to control posts by labeling them as psychopathic elapsed long ago.
Besides being a simple manifestation of your projection illness, it’s more than just a little stale now. Find some other rhetorical t00l please.
The change in pseudonym has not improved your accuracy Leopold.
Notice how the nxtcxse just can’t help itself. It just does what it does.
Prior art?
link to youtube.com
Game over man, game over.
link to youtube.com
lol,
B-b-but your honor, my reference clearly states that any number of electrons, neutrons, and protons can be combined in any combination (read that as “configured” if you like), so well, the entire fields of manufactures and compositions of matter are now poisoned.
/ nonsensical game-over logic applied to its simple conclusion
Claim 9 is classic example of functionally-claimed sooper techno hoohaw in the (trying not to laugh here) “computer-implemented” arts.
Consider the prior art “hide and seek”, which includes:
an object capable of being hidden (e.g., a person called “the hider”)
a transmitter unit associated with said object (e.g., the hider’s mouth)
a seeker unit associated with the game participant (a person called the seeker)
seeker unit having a receiver therein for receiving said
signal from said transmitter unit (ears)
comprising a calculating means for determining a first
distance between said seeker unit and said object (a brain — something clearly lacking in both of the people who filed and examined this p.o.s.)
Like thousands of other kids, we also played hide and seek with walkie talkies. You could tell when you were getting closer because the quality of the sound improved. We also hid walkie talkies and played games that way.
Of course there’s reams of examples of people using homing devices of various kinds to locate things that have been lost or hidden. But wait! I’m sure a patent txxbxgger will be right along to inform us that such systems aren’t relevant to the (again, trying not to laugh here) the “game” arts. Yes, folks, that’s called “scraping the bottom” to be sure, but it’s what they do best.
I suppose the specification here must have recited a magical compooter and so the applicant and the examiner pretended they were born yesterday and granted the claim. Thankfully there were some adults on the court.
Malcolm,
Your nit-picking QQ aside, you do realize that “in the art to which the invention pertains” is a real part of the law, right?
you do realize that “in the art to which the invention pertains” is a real part of the law, right?
I realize that you’re mentally ill. Other than that, I’ve not much else to say in response to your inane b.s.
…because actually paying attention to the specific art to which the invention pertains is….
lol – I see that you are still busy with that shovel.
Like thousands of other kids, we also played hide and seek with walkie talkies. You could tell when you were getting closer because the quality of the sound improved. We also hid walkie talkies and played games that way.
This is closer to the game, also played by thousands (millions?) of kids, for many decades, where one player hides an object for another to find, and calls out “warmer – warmer – colder – …” as the other player looks for it. In the version claimed here, one player still has to hide the object for the other, but he’s relieved of the soul-crushing labor involved with calling out the clues. The patent is pretty sad, but I wonder whether it’s not even more sad that a toy company actually built this thing.
“Like thousands of other kids, we also played hide and seek with walkie talkies. You could tell when you were getting closer because the quality of the sound improved. We also hid walkie talkies and played games that way.”
I’m sorry, I simply don’t believe you. It would make no sense to hid and then talk into a walk talkie. The point of hiding is so you are not found. The talking alone would be enough to give away your position.
The point of hiding is so you are not found.
Right. The kids who die of starvation inside the locked refrigerator are the truly smart ones.
too.
far.
“Of course there’s reams of examples of people using homing devices of various kinds to locate things that have been lost or hidden. .”
Homing devices and activities are based on direction finding…. one rotates a directional antenna until one locates a null or peak in the signal strength and then moves in the appropriate direction.
That’s not what was claimed. What was claimed includes a device that estimates a first distance and then estimates a second distance and indicates if the seeker is getting closer or not.
So…take your impermissible “gist” type reasoning and hide it where the sun don’t shine.
Homing devices and activities are based on direction finding…. one rotates a directional antenna until one locates a null or peak in the signal strength and then moves in the appropriate direction.
That’s not what was claimed. What was claimed includes a device that estimates a first distance and then estimates a second distance and indicates if the seeker is getting closer or not.
How are these distances “estimated”, pray tell? The claim doesn’t seem to limit the methodology used. Regardless, if the signal strength decreases in spot A relative to spot B then it’s a pretty good “esimation” that spot A is farther away from the signal source than spot B.
your impermissible “gist” type reasoning
What?
“What?”
Welcome back Vinnie Barbarino.
“We usually think of two players in the patent system: the patentee and its competitor. Increasingly, however, end users – who are neither patentees nor competitors – are playing a significant role in the patent system. The attention of the press has recently turned to patent assertion entities who are suing vast numbers of customers using patented technologies in their everyday businesses.”
So, the assertion entity is the patentee (id est, the one to whom belongs the patent, while the entity being sued is (by definition) the competitor (id est, one who is competing through the use of the patented technology).
Hmmm, a distinction without a difference.
Oh well, let’s look a little farther down to see if it makes sense . . .
“I define end users as people and companies that use a patented technology for personal consumption or in their business. I emphasize that they are strictly users. Even if they incorporate the patented technology into a product or service they offer their customers, they do not make or sell the technology standing by itself.”
So, the end user is “incorporating” the technology into something they (presumably) sell, but they neither “make” nor “sell” the patented technology . . .
:jaw dropped:
I guess I’m just not smart enough to be a (h)ack-a-dem-ick.
I think the author is referring to the following scenario:
Brand I has a patent on a microprocessor.
Brand A sells an infringing microprocessor.
Brand X makes computers using Brand A’s microprocessor.
In this sense, for the purpose of the discussion, Brand X is an “end user”, cause de din’t know nottin’ ’bout no pattints.
the end user is “incorporating” the technology into something they (presumably) sell, but they neither “make” nor “sell” the patented technology
This is too difficult for you to follow? Maybe you should stick to commenting over at IPPuppydog where Big G keep things simple for folks like you.
the assertion entity is the patentee (id est, the one to whom belongs the patent, while the entity being sued is (by definition) the competitor
Uh …. no. That’s your definition, not the author’s definition.
Most educated people can see the difference between businesses who compete for sales of product X and a business who buys product X from one of those businesses. I’m not exactly sure what you’re problem is but we can all take a good guess.
As discussed elsewhere in this thread, the kinds of “criticisms” you make say quite a bit about you. We’ve all been watching you launch these pathetic attacks for years. They must be compelling when you sit in a circle and screech them to each other at the Institute for Patent Abuse. They aren’t very compelling here.
Try harder.
“This is too difficult for you to follow? ”
lol – what exactly do you find difficult Malcolm?
I mean, beside being right or being on point?
Is there a point (under law for infringement by mere use) for “the difference between businesses who compete for sales of product X and a business who buys product X from one of those businesses.”
First you want to say no one is making a difference, then you seem to say the difference is obvious, but do you understand that the difference you seem to want to make a distinction about is NO difference under the law?
Try harder – lol -indeed, except it is you that needs to do so.
First you want to say no one is making a difference
Oh lookie: looneytunes is making shxt up, as usual.
?
What is it that you think that I am making up?
Maybe you should read what you have already posted…
Nah mm its just his lacking the ability to understand what you said. Is ok, just another day of psychopathy for anon.
6,
You are doing that projecting a lack of understanding thing again…
Marshm0ron the end user is “incorporating” the technology into something they (presumably) sell
Why do you presume that the technology is sold? Maybe — just maybe — they just “use” the technology in their home or in their business. Hence: “end user.”
the assertion entity is the patentee (id est, the one to whom belongs the patent, while the entity being sued is (by definition) the competitor
That’s your definition, not the author’s definition.
Most people can see the difference between businesses who compete for sales of product X and a business who buys product X from one of those businesses. I’m not exactly sure why you find this so difficult but we could take a guess.
I’m just not smart enough to be a (h)ack-a-dem-ick.
Or much else. Please save your wingnxt dxpshxttxry for Big G’s crxppy blog.
lol – several things off here (as usual).
Malcolm – you are doing that big G fixation thing again…
you are doing that big G fixation thing again…
Please say hi to Big G for me next time you are busily polishing his buttons.
?
Why are you so fixated on the big G?
The first two sentences of the article by the guest author are flat out wrong.
The rest of the 60 page edifice crumbles on such a shoddy foundation.
IN RE: DINSMORE
link to cafc.uscourts.gov
During prosecution, the examiner entered a double patenting rejection over a patent having a common inventor but a different owner. The patent applicant filed a terminal disclaimer using the standard PTO form that required common ownership for the patent to be enforceable.
The patent owner filed reissue application seeking to amend the terminal disclaimer to eliminate the common ownership requirement. The patent office refused – stating that there was no error for which a reissue could be authorized.
On appeal the Federal Circuit affirmed. The Federal Circuit observed that the only possible error that the patent owner could have alleged was the failure to recognize that the patent which was the referenced patent of the terminal disclaimer was not commonly owned. Because the patent owner never alleged this grounds, it had to be assumed that the terminal disclaimer was filed with the knowledge that the referenced patent was not commonly owned. Thus there was no error and no basis for a reissue application.
Good case summary Ned! Especially since some folks may otherwise misread this case as a new restriction on reissues.
?
End users are targeted because courts have ruled that you can’t get a patent for software.
This forces inventors to claim there inventions in the form of a method of doing something.
The real infringer is the entity that sells software that facilitates or even does the claimed method. However, since they are selling software and not actually doing the claimed method, they cannot be sued for direct infringement.
Therefore, the inventor or patent owner has no recourse but to sue the method infringers or end users.
The simply solution then is to undue the silly rulings that say software in not an article of manufacture and assert that software is an article of manufacture patentable under 35 USC 101.
poof, Court created problem goes away.
One (major) problem Les: we are not there yet.
The Court has not ruled that one cannot obtain a patent on software (regardless of what the small circle constantly obfuscate upon).
It is still a recognized fact that software is a an article of manufacture and a machine component. See Alappat, see Diehr, See Nazomi. Software is equivalent to firmware and is equivalent to hardware.
Well, I wish you would tell that to the PTO, ’cause I sure have to deal with a lot of “software per se” 101 rejections..
See also MPEP 2106 (I)
Non-limiting examples of claims that are not directed to one of the statutory categories:
i. transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se), In re Nuijten, 500 F.3d 1346, 1357, 84 USPQ2d 1495, 1503 (Fed. Cir. 2007);
ii. a naturally occurring organism, Chakrabarty, 447 U.S. at 308, 206 USPQ at 197;
iii. a human per se, The Leahy-Smith America Invents Act (AIA), Public Law 112-29, sec. 33, 125 Stat. 284 (September 16, 2011);
iv. a legal contractual agreement between two parties, see In re Ferguson, 558 F.3d 1359, 1364, 90 USPQ2d 1035, 1039-40 (Fed. Cir. 2009) (cert. denied);
v. a game defined as a set of rules;
vi. a computer program per se,Gottschalk v. Benson, 409 U.S. at 72, 175 USPQ at 676-77;
vii. a company, Ferguson, 558 F.3d at 1366, USPQ at 1040; and
viii. a mere arrangement of printed matter, In re Miller, 418 F.2d 1392, 1396, 164 USPQ 46, 49 (CCPA 1969).
There is a quote in Benson that you can respond to any rejection that (mis)uses the computer per se (wrong) MPEP language – you do remember that the MPEP has no force of law for the applicant, and if binding at all, is binding only on the examiner, right?
Well if the MPEP is binding on the Examiner and the MPEP says:
Non-limiting examples of claims that are not directed to one of the statutory categories:
….
vi. a computer program per se,Gottschalk v. Benson, 409 U.S. at 72, 175 USPQ at 676-77;
Whats a poor examiner to do?
This is why I wish you would direct your sarcasm at the PTO and get them to correct the MPEP according to your teachings….
I care less for what “the poor examiner” is to do. The poor examiner must examine to the law, and if I present the law to the examiner, I fully expect the examiner to respect the law.
If an examiner wants to quote Benson to me, I will quote Benson right back at him. I will then call the examiner (and SPE if necessary) and set them straight.
You are aware that the MPEP also states that examination is to the law (rather than to the MPEP), right?
I am under no illusion that the PTO will change the MPEP – and not according to my teachings, but according to what the law is (please do not fall into the “it’s not a fact if anon said it” red cape fallacy) . Further, as I indicate, if the MPEP is off, that does not matter to me or my clients, as the MPEP is not the law.
And then there’s the BPAI
” Restated, claim 6 is directed to software per se, a series of mathematical algorithms without narrowing limitations, e.g., implementation on a machine. “Abstract software code is an idea without physical embodiment . . . .” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). For the foregoing reasons, we find that the Examiner did not err in rejecting claims 1, 2, 4, and 6 under 35 U.S.C. § 101 as being directed to patent ineligible subject matter. According we will sustain the Examiner’s rejection of claims 1, 2, 4, and 6.
So really, please, tell it to the PTO will ya?
Unfortunately Les, I was not a part of that case before the Article I court and mere arm of the executive branch, the PTAB.
…and make no mistake, there is massive confusion across the terrain (as I have oft mentioned, due to the bumbling of the Supreme Court).
Alice is forthcoming. Let’s see if Churchill or Chamberlain takes the “official” soapbox.
Forgot the link: link to bpai101.com
“Restated, claim 6 is directed to software per se, a series of mathematical algorithms without narrowing limitations, e.g., implementation on a machine. “Abstract software code is an idea without physical embodiment . . . .” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). For the foregoing reasons, we find that the Examiner did not err in rejecting claims 1, 2, 4, and 6 under 35 U.S.C. § 101 as being directed to patent ineligible subject matter. According we will sustain the Examiner’s rejection of claims 1, 2, 4, and 6.”
Les, what is that a quote from if I might ask?
“Les, what is that a quote from if I might ask?”
A BPAI decision from 2011 that happened to come up when I googled “software per se”. A link to a summary of it is above your question.
Thanks Les, I read the decision. A good one.
anon,
I’ve had the same problem as Les regarding MPEP 2106 and software per se. You can scream at the examiner all you want that Gottschalk v. Benson said no such thing (it. clearly didn’t proscribe the patent-eligibility of software under 35 USC 101) and that the MPEP is wrong, but that won’t make the examiner budge or even blink on that point without appeal to the Federal Circuit. That’s also like trying to argue to an examiner that the nonsensical Myriad guidelines are wrong in numerous respects.
Respond with this from Benson:
“It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.”
Remind the Office that until so held, and in light with the exceptions to the judicial doctrine of printed matter, that software (claimed as more than just something in the mind) is clearly a manufacture and – with proper utility, also in the claim – passes the law.
If they balk, ask them to show the actual law (not the MPEP).
And while I do sympathize with those unsnarled in the waywardness (and I do not doubt that there are those that are so unsnarled), the number of software patents far outnumber the ones that are so held up.
And when they come back with:
“Abstract software code is an idea without physical embodiment . . . .” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007)
Then what?
“And while I do sympathize with those unsnarled in the waywardness (and I do not doubt that there are those that are so unsnarled), the number of software patents far outnumber the ones that are so held up.”
If you mean method claims, I would agree. But if you mean claims to software as in:
1. Software comprising
instructions for causing a computer to….
I say, show me.
That’s the point of original post 7, which you felt compelled to “correct”.
Respond with this from Benson:
“It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.”
anon,
I did just that. Still no budging by the examiner. What the case law says, and what the facts of cases cited by them actually says (and especially what they don’t say) is irrelevant to them. I’m not saying that’s right, but you’re only choice is to contest such nonsense by appeal (not just to the PTAB, but to the Federal Circuit).
“the number of software patents far outnumber the ones that are so held up.”
You say that though I note that some of my buds that used to examine in the softiewaftie arts mysteriously had their entire “art” “dry up” and blow away in terms of apps coming in. So they’ll be working on other stuff. Shockingly, stuff that’s in the useful arts.
“I’m not saying that’s right, but you’re only choice is to contest such nonsense by appeal (not just to the PTAB, but to the Federal Circuit).”
Exactly EG, but anon isn’t a lawlyer, so he doesn’t understand that not everybody wants to, or can, appeal at all or forever.
and anon, by the way in:
““It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.””
there is a computer. The program is servicing a computer. The assertion does not cover software per se. It covers software tied to a machine …..servicing (running on?) a computer.
I don’t think Benson is much help for a claim to software….
You say that though I note that some of my buds that used to examine in the softiewaftie arts mysteriously had their entire “art” “dry up” and blow away in terms of apps coming in. So they’ll be working on other stuff. Shockingly, stuff that’s in the useful arts.
Gee, that’s wonderful news. I hope it’s not in my useful arts.
Les,
Don’t make Ned mistakes.
A manufacture is a manufacture.
“Use of” does not cut it, as you cannot use until you change the machine.
Anon –
I have no idea to what you are referring. I did notice that you did not respond to my point about the Benson quote not being directed to software per se, but referring instead to software”servicing a computer”.
Neither did you respond to this quote:
“Abstract software code is an idea without physical embodiment . . . .” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007)