Alice, Artifice, and Action – and Ultramercial

Guest post by Emily Michiko Morris, Associate Professor, Indiana University Robert H. McKinney School of Law

Anyone familiar with recent Supreme Court patent jurisprudence was perhaps disappointed but certainly not surprised by the Court’s latest decision, Alice Corp. v. CLS Bank Int’l. The Court once again left many questions unanswered and failed to provide a clear rubric for identifying patentable subject matter. When viewed within the broader context, however, Alice fits nicely within what is actually a long-standing pattern in § 101 cases. IF Ultramercial v. Hulu follows this pattern after its now second GVR, the Federal Circuit may finally affirm that the internet-mediate advertising method at issue there is unpatentable subject matter.

In What Is “Technology”?, I explain that as unmethodical as patentable subject matter often seems, two surprisingly consistent concepts explain how courts identify patentable subject matter. The article dubs these concepts “artifice” and “action.”

Artifice refers to the well-recognized requirement that patentable subject matter be the product of human ingenuity, not nature. Less appreciated is the fact that artifice requires more than just changes in structural or other physical characteristics; to be patentable, a claimed invention must also function in some new, non-naturally occurring way. We can see this latter point illustrated in the purification line of cases as well as Myriad, Funk Brothers, and Chakrabarty.

Much more obscure but more relevant to Alice is the concept of action. Roughly defined, action is the requirement of active rather than passive utility through operating, behaving, performing, or otherwise actively doing something; that is to say, an invention must be “self-executing.” Inventions that display, transmit, or even store information may satisfy the action requirement, but works such as laws of nature, mathematical algorithms, and “abstract ideas” are (perceived as) merely informational or descriptive in value and therefore unpatentably inert. Moreover, as Alice explains, the abstract idea category is not “confined to ‘preexisting, fundamental truth[s].’” By definition any purely informational or descriptive content, whether naturally occurring laws of nature and mathematical algorithms or human-made financial and economic methods, fails the action requirement. As the Court in Diamond v. Diehr put it, such works simply do not “perform[ ] a function which the patent laws were designed to protect.”

To the extent different tests appear to govern natural products versus laws of nature and abstract ideas, then, artifice and action – and more importantly, the circumstances in which each are likely to be invoked – account for these differences. Artifice obviously plays its largest role in cases involving products or laws of nature, whereas action is most important in cases involving abstract ideas and laws of nature. Nonetheless, patentability under § 101 requires both artifice and action.

Both Alice and Bilski illustrate what role action plays under § 101. The methods in both Alice and Bilski involved hedging risk during business transactions by relying on intermediaries, but more importantly, both methods served solely to inform parties about when they can safely transact. The Alice and Bilski opinions describe this as the abstract concept of intermediated settlement, but really it is just information – information about risk. As such, both methods were unpatentably inactive under § 101.

And although Alice differs from Bilski in that Alice’s method was computer-implemented, the Court found both methods to be unpatentable. Like artifice, action is also a scalar characteristic. Just as artifice depends on an invention’s perceived degree of alteration from nature, action depends on an invention’s perceived degree of activity, and despite Alice’s computer-implementation, the method was still not active enough under § 101.

Indeed, both Alice and Mayo emphasize the scalar nature of patentability under § 101. Under Mayo’s two-step test, a court first determines whether a claim is directed to a law of nature, natural phenomenon, or abstract idea. As the Alice Court observed, however, all inventions are directed to one of the patent-ineligible concepts at some level. The second and pivotal step is therefore to determine whether the claim demonstrates an “inventive concept” – that is, does the claim add elements “sufficient” and “enough” to establish patentable subject matter.

And to see that a sufficient “inventive concept” requires sufficient action, one need only look at how the Court treats computer-mediated elements with regard to patentability under § 101. Computers are widely regarded as “technological,” but much computer technology is “information technology,” and computer use primarily to manipulate data or other information thus adds no patentable action. Computer implementation in Alice’s method followed exactly this pattern – as the Court noted, the computer served only to create and maintain “shadow” accounts, obtain data, adjust account balances, and issue automated instructions. Accordingly, whether Alice claimed its invention as a method, system, or medium, the invention failed to provide an adequate “inventive concept” because it did not demonstrate sufficient action.

Under an artifice-plus-action standard, then, Ultramercial’s internet-mediated advertising method fails § 101. Ultramercial claimed a method of distributing copyrighted content for free in return for viewing an advertisement. The method is purely an exchange of informational and expressive content and performs no action whatsoever, and the claim’s cursory reference to the internet does nothing to add a “sufficient inventive concept.”

This is not to say, of course, that computer-implemented methods are never patentable subject matter. The Alice Court pointed out the difference between computers used purely for information processing and computers used to effect improvements in “any other technology or technical field,” or improvements in the function of the computer itself. Diehr’s computer-assisted rubber-curing process, for example, was adequately “technological” and therefore patentable, whereas the computer-implemented methods in Benson and Flook yielded “simply a number” and were therefore unpatentable. Per the view of the patent system, information processing is simply not “technological.” Similarly, computer or storage media that are distinguishable only by their informational or expressive content alone been held unpatentable if the content has no “functional” relationship with the device. The variable role that computers and other tangible devices can thus play in an invention may be why the Supreme Court rejected the machine-or-transformation test as the sole test for methods under § 101.

And while the discussion here focuses mostly on business methods, note that the Mayo two-step test as stated in Alice covers all patent-ineligible abstract ideas, laws of nature, and even phenomena of nature – all are subject to the same requirement that a claimed invention add “enough” to constitute a patentable inventive concept. For claims directed to phenomena of nature, “enough” means artifice and meeting the age-old test of “markedly different characteristics from any found in nature.” For abstract ideas, laws of nature, mathematical algorithms, mental processes, and all other forms of information, “enough” means action and demonstrating function beyond merely informing.

As simple as artifice and action may sound, however, patentable subject matter clearly remains a difficult and ambiguous issue. The difficulty lies in the scalar quality of both artifice and action and deciding where along these spectra any given new invention falls. The requisite degree of artifice and action has also varied over time as the liberality of patentable subject matter has waxed and waned, creating yet further uncertainty. Most significantly, where the line between patentable and unpatentable lies along the spectrum is entirely unclear. There are no bright-line rules and no magical claim elements that can guarantee patentability under § 101.

The Court has often (but not always, as our host Jason Rantanen has pointed out) expressed a preference for a “functional” approach to patent law, however: that is, a preference for standards over hard and fast rules. As stated in Bilski’s rejection of the machine-or-transformation test, to do otherwise would “make patent eligibility ‘depend simply on the draftsman’s art.’” True, the artifice-plus-action standard requires courts to make many judgment calls about where along the spectrum of artifice and action any given invention must fall before it can be considered patentable technology, but standards are often vague. Besides, patent law frequently must address these kinds of line-drawing exercises. The non-obviousness, utility, enablement, and even written description requirements all force courts to make judgment calls.

Compounding the difficulty is the fact that § 101 determinations are in the end based on nothing more than intuition. As I and a number of others have noted, none of the pragmatic justifications commonly cited in support of § 101, such as preemption and disproportionality explain how patentable subject matter determinations are actually made or, more importantly, why. Thus, although artifice and action consistently appear in patentable subject matter, the combination does not necessarily reflect the most efficient or “correct” way to define patentable subject matter. Rather, the combination merely reflects an underlying intuition about what constitutes technology. (In Intuitive Patenting, a companion article to What Is “Technology”?, I argue that there simply are no more objective bases on which to make these determinations.) Unfortunately, patentable subject matter’s intuitive nature leaves courts effectively unable to specify how they reached their determinations. This often leads to language that sounds more like non-obviousness, novelty, or utility than to § 101, but in the end, artifice and action are better explanations for these otherwise perplexing references.

268 thoughts on “Alice, Artifice, and Action – and Ultramercial

  1. […] the popular IP blog, PatentlyO, seeks to explain if not justify the Court’s ruling. In “Alice, Artifice, and Action,” Jason Rantanen elucidates the thinking of the Court as he explains that the problem with […]

    Reply
  2. Seriously 6?

    ““COURTS impermissible “gist” type reasoning, ”

    Well you’re going to need to set that aside. And that is because there is no “gist” type reasoning in these decisions. That’s just you imagining sht from thin air and attributing it to the USSC.””

    “_________________
    _________________
    1
    Cite as: 573 U. S. ____ (2014)
    Opinion of the Court
    NOTICE: This opinion is subject to formal revision before publication in the
    preliminary print of the United States Reports. Readers are requested to
    notify the Reporter of Decisions, Supreme Court of the United States, Wash
    -
    ington, D. C. 20543,
    of any typographical or other formal errors, in order
    that corrections may be made before the preliminary print goes to press.
    SUPREME COURT OF THE UNITED STATES
    No. 13–298
    ALICE CORPORATION PTY. LTD, PETITIONER
    v.
    CLS
    BANK INTERNATIONAL
    ET AL
    .
    ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
    APPEALS FOR THE FEDERAL CIRCUIT
    [June 19, 2014]

    “We hold that the claims at issue are drawn to the abstract idea of intermediated
    settlement, and that merely requiring generic computer
    implementation fails to transform that abstract idea into a
    patent-eligible invention. We therefore affirm the judgment of the United States Court of Appeals for the Federal Circuit”

    No mention of shadow accounts or the many particular steps recited…. just an arrogant distillation down to a gist ” intermediated settlement”.

    Then a later allegation that this is somehow fundamental and therefore abstract…. or abstract even though it isn’t fundamental.

    Geeeezuz

    Reply
    1. Oh my! No mention of “shadow accounts”! No mention of all the other abstract steps that are part of the intermediated settlement! O noes! O noes! They must be looking for the “gist”! They must! They must! There’s no other explanation! I just can’t think of any other explanation!

      Yes, I’ve mentioned to you and all the others already that they should go ahead and spell out the entirety of the abstract idea at issue so that people like yourself don’t delude/confuse yourself just like you’re doing right now. But they’re the supreme court and I can’t tell them what to do. And technically there is little need for them to.

      Again, for like the dozenth time, all of “intermediated settlement” is excepted because everything in that “class of things” is an abstract idea. That includes intermediated settlement using “accounts” in whatever “process” of intermediated settlement you’re describing, regardless of whether those accounts are shadowy or not. It includes intermediated settlement using an e-calendar program to figure out the date/time as well. It includes all the others of a million abstract things within the category “intermediated settlement”. And all of them you can fairly say are just directed to a manner of intermediated settlement, all of which class of things is excepted.

      And that’s not to say that it would be impossible to make an invention in the space. You could have made up a specific type of machine to do the transaction and then told us all about its novel structure. But you wouldn’t want to do that, because that would involve effort and the patent you got wouldn’t be worth the paper on which it is printed. In this space you generally have to be able to claim the abstract idea for it to be worth jack. And that’s precisely what you cannot patent.

      Reply
      1. Do you realize that you missed the point earlier and all this comes across as is your inability to see your own limitations, 6?

        You could have made up a specific type of machine to do the transaction and then told us all about its novel structure

        You missed the memo from the Supremes: actual categories don’t matter. Machines can be “abstract” too.

        Reply
      2. Here is where you are mistaken:

        “That includes intermediated settlement using “accounts” in whatever “process” of intermediated settlement you’re describing, regardless of whether those accounts are shadowy or not. It includes intermediated settlement using an e-calendar program to figure out the date/time as well. It includes all the others of a million abstract things within the category “intermediated settlement”. And all of them you can fairly say are just directed to a manner of intermediated settlement, all of which class of things is excepted. ”

        Specific forms of intermediate settlement are not abstract as they are specific. You might allege that Fast Fourier Transformation is an abstract idea. However, specific ways of performing FFT or specific ways of getting a machine to perform FFT are clearly not abstract.

        If any particular form of intermediate settlement is abstract, then any particular form of flying is abstract, any particular form of generation light is abstract, and any particular way to clean cotton is abstract and no one can patent a plane, light bulb or cotton gin.

        Reply
        1. 6 has previously stuck his foot in his own mouth on the topic of “abstract” and what was not covered by the claims.

          I noted his self-contradiction on the earlier Alice thread.

          Reply
  3. You lost me with “it is just information.” It’s time for those in the IP profession to recognize what many scientists and engineers have long understood: that information is physical. Just as E=MC^2 helps us understand the relationship between matter and energy, the laws of thermodynamics plus a good deal of modern quantum mechanics and other fields helps us understand the physical relationships between information, matter, and energy. Entropy is one of the key physical concepts that helps us appreciate that linkage. See Wikipedia’s article on this topic: link to en.wikipedia.org

    See especially the section, “Information is physical.”

    Information cannot be processed without physical, material change often affecting more than just physical entropy alone. That information processing may be in the form of electronic signals, computer chips, magnetic media, graphical interfaces, or chemical reactions with DNA (DNA, of course, is “just information” encoded with a brilliantly simple and tangible system).

    In the Industrial Age, we focused on inventions made with cogs and pistons, steel and glass–crude, weighty, and easy to touch or see. Their making and their use involved smoke and flame, clangs and whirrings that nobody could miss. But we have moved into the the Information Age, where the greatest innovations that will drive our economy, the Knowledge Economy, are much finer, often microscopic, involving silent, invisible change that is still every bit as physical and real as anything a blacksmith hammered out. To dismiss the workings of the new electronic machines of our day and their many fruits as mere abstractions, intangible, immaterial, the whisps of ethereal spirit devoid of substance, is to miss the reality of the greatest era of innovation and invention ever. To exclude inventions in handling information as inherently unpatentable is a tragic error.

    Reply
    1. Jeff, which is “information,” a manufacture, a composition, or a machine?

      Reply
      1. Ned -
        Information is a work piece. No one is claiming information. We are talking about claiming a process, which you left out of the list, by the way. Processing information is patentable.

        Reply
        1. Ned chastised recently about treating the statutory categories respectfully, yet habitually disrespects them himself by attempting to denigrate the fourth equal category as being merely a sub-category of the hard goods.

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            1. anon, but the statement that processing information is patentable subject matter is a tad overbroad because it would encompass Benson.

              Reply
              1. Not at all Ned – look at the Benson decision itself and note the most definite strict view the Court there was taking on the meaning of the term before them: “A procedure for solving a given type of mathematical problem is known as an ‘algorithm.’” and “t if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.

                It may be that the patent laws should be extended to cover these programs, a policy matter to which we are not competent to speak.

                Clearly, there is a difference between applied math and “using math” (whatever that means) to process information and a math formula (pure math) all on its own.

    2. silent, invisible change that is still every bit as physical and real as anything a blacksmith hammered out.

      Stay away from drugs, kids. You really don’t want to end up like Jeff here.

      Reply
    3. The sound of one Jeff clapping:

      Information cannot be processed without physical, material change often affecting more than just physical entropy alone.

      Fascinating.

      Does a movie weigh less after somebody watches it?

      Which is more dense — available real estate or Johnny’s credit card account number?

      Reply
      1. If you want to talk about fascinating, read the part of the wiki about the “it’s totally physical” or whatever. The first “proof” of its “physicality” is a “thought experiment” involving a “demon” iirc. I didn’t bother with the rest after that lolfest. Information “scientists” at work you guys, lol!

        Reply
        1. 6, there are many metaphors and thought experiments that are used to illustrate principles in science. One can also get a good chuckle out of Schrodinger’s Cat as well and a dozen other models and metaphors in current use with varying degrees of silliness coupled with utility. Even the classical model of an atom as little balls in the center with other little balls orbiting it is almost as laughable as atomic-sized “demons” trying to reverse entropy, but both can be useful to illustrate concepts. “Maxwell’s Demon” is a light-hearted model for addressing concepts related to the Second Law of thermodynamics, but the concept can be used to illustrate relationships between information and entropy.

          Whatever thought experiment or physical experiment is used, one has to face the reality that there is no such thing as purely abstract information that we can use and process without affecting the physical world. All information is linked to tangible matter and reading, storing, or processing it changes the physical states of associated matter. Often the changed matter is microscopic and hidden, hence “invisible” to the naked eye, but sometimes the changes are easy to see. Look at a DVD onto which your “abstract” movie information has been recorded, or “burned.” You can see that where it has been recorded, it looks physically different. Ditto for music on old-school vinyl. With just a magnifying glass or better a microscope you can easily see the grooves and their nonuniform wiggles that encode the information you can hear as music. Whether it is punched on a code, stored in magnetic bits of memory, written to a DVD, or embedded in DNA, real information, the kind that can be used and processed in the real world, is linked to changes in matter, and reading, storing, and processing it also involves changes in matter. You don’t see the sparks and smell the smoke (certain laptop brands excluded), but using information involves physical change and is not “merely abstract.”

          Reply
          1. 6 plays the f00l – but noting that 6 plays the f00l is not allowed…?

            C’est la vie

            Reply
            1. lol – and the proper explanation for structure as understood in the art is lost…

              Not that those needing to understand such an explanation would be open to learning it…

              Reply
          2. “6, there are many metaphors and thought experiments that are used to illustrate principles in science.”

            Yeah so what? You don’t have to lay out a list of metaphors used, I’m familiar. Information being physical is not some abstract “principle” that merely needs a demonstration as to how it COULD occur, you need to prove that shizzle because at present it is nothing more than a hypothesis you really wish were so. And ain’t none of that stuff done so.

            “Whatever thought experiment or physical experiment is used, one has to face the reality that there is no such thing as purely abstract information that we can use and process without affecting the physical world.”

            O noes! You have to “face that reality”!

            Yeah we faced it. And we’re still waiting on evidence for your little hypothesis. Of course it will never come because fundamentally information is an abstract concept. By definition if for no other reason. Both of the word “information”, and of “abstract concept”. Information will never be “physical” because it wasn’t defined that way in the first place. And any attempt to prove that information is “physical” will fail until you successfully redefine the word.

            “All information is linked to tangible matter and reading, storing, or processing it changes the physical states of associated matter. ”

            Is that right? Funny, I thought the photons transmitting this message to you were completely without mass. But I mean, if you have evidence the contrary then by all means, win a nobel prize!

            And you don’t have to run down a laundry list of how information can be physically encoded. I know all about it. Doesn’t change one dam thing. Certain representations of information can be physical. Whoptie do! Doesn’t come within a logical mile of proving what you’re attempting to set forth and need to eventually prove if you want your hypothesis to have legal weight.

            Reply
            1. Sounds like you are suffering from one of your OCPD moments there 6 – wanting all kinds of “facts” and whatnots, instead of embracing your “lawl is subjective totally in the mind so anything goes” view.

              Oh, wait, that view is only for you when you don’t want to face the facts (and the law) that shows you to be objectively wrong.

              Gotcha. It will be our little secret ;-)

              Reply
              1. “Oh, wait, that view is only for you when you don’t want to face the facts (and the law) that shows you to be objectively wrong.”

                You know what though, I’ll bite, what am I “objectively” wrong about today? My main statement is that there is no evidence put forth to support his hypothesis. So how am I “wrong”? Do you have evidence? Put it forth. Support his hypothesis with some evidence already. Go ahead. Be my guest. We can set the “law” aside for a moment and focus just on his hypothesis alright? What’s the evidence?

              2. You are objectively wrong in being a hypocrite 6.

                Your pursuit of the “med-line” control gambit is clearly out of line with any of the regular contributors on this blog, and notably, the ones that happen to align with your anti-patent views.

                Wanting evidence to support a hypothesis put forward has nothing to do with being OCPD re re.

                Pure hypocrisy.

                We both know this, and yet you persevere in a course of action that just wastes both of our time. We also both know why you do so – as you have no other ‘comeback’ when I am the one putting points in front of people and asking them for evidence to support their hypothesis in view of the counterpoint. Then, you clamor that it is I somehow seeking “control.”

                You should talk to your doctor about this.

              3. “Pure hypocrisy.”

                There is nothing hypocritical about that. Being a scientist so to speak and merely wanting evidence to support a hypothesis is not an indication of OCPD. There are many lists of the symptoms of OCPD and that is not one. It’s that simple. You’re just making that up out of thin air because you have felt like that’s what you’ve done in the past and I called you on it. In reality of course you were in fact not simply asking for evidence (though you did that additionally sometimes as well), and instead you were simply insisting for the thousandth time you were “right”, usually using that word. And not to mention, that others were “wrong”, again usually using that word. Note that you’re doing that as we fcking speak.

                There is a difference anon. One way, simply putting your view forward and asking for evidence for the other person’s position (so that you’d be convinced) is not socially dysfunctional. The other way, “knowing you’re right about everything” and telling everyone about how right you are, and how wrong they are, all the time, is socially dysfunctional.

                That’s just how it is brosef. If you want to ask for evidence I’m not ever going to say you’re OCPD SOLELY as a result of your asking for evidence. If you go on to tell the person you’re right and they’re wrong, for the tenth time that week, then yeah, I might call you out.

                I know this is difficult to comprehend. Just try to sit and think it through for a minute. Socially dysfunctional. One way is, the other way is not.

              4. There is nothing hypocritical about that

                Your denying your hypocrisy does not change your hypocrisy 6.

                It is objective – it is there. The only thing you can do is change your tactics and not be a hypocrite.

                You’re just making that up out of thin air because you have felt like that’s what you’ve done in the past and I called you on it

                LOL – you’ve got that backwards my friend – lovely AOOTWMD.

                What is “socially dysfunctional” are your antics and the very premise of your posts: lawl is subjective, totally in the mind and anything goes.

                Time to face the facts 6 that my easy ability to use your won vap1d med-lines against you should lead you to stop begin so banal about their use and focus instead on the actual issues of law and fact.

                Just like I have always asked that you do.

              5. You’re bat sht insane dude. What I most certainly did do, like a big ol fat id iot, was JADE. The standard issue response to the OCPDer. I’d already read about this before and I totally forgot how essential it is! Or rather, how essential not doing it is! I’m not going to sit and JADE with you more today Mr. OCPD. I didn’t even catch myself up above. JADE’d my little heart right out didn’t I?

                Meh. O well. Live and learn with your handy dandy neighborhood OCPDer.

                I didn’t even realize until today what the deal is with your little accusations of hypocrisy and AATOTOAOTMD etc. But I will explain. Though for other people, not you so much. They’re “emotional arguments”. That’s why they’re so standardized. That’s why they practically never have anything to do with the actual explicit behavior that occurred on a given day. And why you practically never give an explanation of what the offending action was, you simply tell us the offense. Instead these arguments are just g e n eralized things other do. And they have to do with how you, or those you’re talking to (your audience for example), do or will feel about what occurred. I have to say I probably would have gone to the end of time having never figured this out on my own.

                Just as a quick example, MM states anon lied. Anon says he’s accusing you of that which he does with no further explanation. Doesn’t matter how this thing (the accusation of you for something you think he does) happened to you, anon, since it happened. You feel it. It happened. To you. This horrible thing was perpetrated against you (cue righteous indignation). Nothing MM can say or could say (or in fact did say) will change that. It did in fact happen. To you. That much is “objectively true”. It totally happened.

                The only funny part is you expect others to pick up on these things when of course we have no way of doing so on the interbuts and you just end up looking silly.

                But even though I’m not going to JADE with you today, I’ll tell you what I will do. If you’d like, I will take the standard OCPD test if you will. Both report our scores, openly, honestly. K?

                How’s that sound brosefus who totally does not have OCPD?

                __________

                MM (or ned etc) if you happen to read this do be a bro and remind me not to JADE with anon.

                Justifying, Arguing, Defending, and Explaining – you just can’t do that sht with an OCPDer, it just makes the whole situation worse.

              6. emotions are standardized..?

                6, you are loosing it, just as you are accusing me of loosing it.

                You are doing that projecting thing again.

                You might want to mention this to your doctor.

              7. Just as a quick example, MM states anon lied

                You see 6, your focus is all wack again.

                Every time Malcolm has laid out that accusation, he has failed to give an actual example.

                Not one example.

                And yet, time and again, he fails and is caught dissembling (robot chefs and his volunteered admissions as to knowing and understanding the exceptions to the judicial doctrine of printed matter, anyone?)

                The problem you have 6 is that you have fallen into your lemming march with the wrong crowd and you refuse to change your belieb system.

                All you are left with is shallow games that are ever so easily turned on you. The more you struggle, the worse your situation becomes.

              8. Once again 6 you prove my point with your nonsensical Med-line control gambit.

                Justifying, Arguing, Defending, and Explaining – you just can’t do that sht with an OCPDer, it just makes the whole situation worse.

                All you ever wanted here was a place to climb up on your soapbox and vom1t your views uncontested without any critical feedback.

                You have never been interested in a conversation, let alone anyone pointing out inconvenient things like law and facts. Much like the other anti-patentists who really do not want to have actual conversations on the merits.

                So you just go ahead and label anyone who would dare provide law and facts contrary to your belieb system as having a medical condition, and excuse yourself from any actual accountability to the points presented against your belieb system (all the while whining that you should be able to counter other people’s hypothesis, because “that’s different”).

                A shallow hypocrite is what you are exposed as. Your control gambits fail and you f001 no one. Go ahead and do nothing to the counterpoints of law and fact provided. The silence screams volumes. Oh, how it must irk you to not have your views simply be “accepted” as the gospel truth you belieb them to be.

      2. You cannot watch a movie without changing the physical state of many entities. In a theater, thousands of Joules of energy will have supplied and consumed. From your computer, significant energy will have been used – yes, your computer may weigh a little less (e=mc^2)-and the physical state of devices in the computer will have been transformed in many ways to read the information, process it, and display it. Physical change cannot be avoided. “Invisible” to the naked eye, but real.

        Reply
        1. The point about “to the naked eye” is not new, and has been applied in law previously (outside of – and independent of – your position regarding “information”) – it is a critical point in understanding the holding (yes, Ned Heller, the holding) of Alappat.

          Ned is willing to accept software burned into a machine as an actual change – not understanding that this acceptance is enough to wreck his agenda against software per se. By accepting the software burned into the machine, he accepts the notion that you put forth Jeff – the notion that changes not visible to the naked human eye, nonetheless are real.

          When all is said and done, ‘oldbox’ is in fact changed when it is configured with new software, because ‘oldbox’ can in fact do something it could not before.

          This is an objective fact. No amount of spin, of hand waving (or magic wand waving), of attempting to confuse with “using” or “data” changes the fact that ‘oldbox’ is indeed changed with the configuration – changed physically, even though that physical change cannot be seen with the naked eye.

          Reply
        2. You know you could just answer the question he asked instead of going off on tangents. The answer is no of course. The movie does not weigh any less.

          Reply
          1. Two sets of three resistors, 6.

            Each identical in weight.

            Configure one set in series and the other in parallel.

            Do you have things physically different? Operationally different? Weight different?

            Now magnify a million fold.

            Connect the dots.

            Reply
            1. What do resistors have to do with the weight of a movie being the same or different after you watch it?

              Reply
              1. The analogy is not a non sequitur.

                Speak to it – commit to a position. Then I will help you see.

                That is, if you are willing to back up your “hypothesis” in light of the counterpoint I present – well 6, are you? Why the refusal to back up your hypothesis? Huh 6? Why?

                Yes, 6, we both know why – your view is off-base and you know it. Strictly speaking, a change in weight is quite meaningless.

  4. There seems to be no end of the not particularly useful theoretical pontificating by academics on this Alice decision.
    The one thing here that I partially agree with is: “compounding the difficulty is the fact that § 101 determinations are in the end based on nothing more than intuition.” [these days]
    That is, of course, is precisely why S.J. motions based on “unpatentable subject matter” have now become suddenly much more popular with defendants and judges, as more likely to get granted to avoid expensive trials or settlements, and now more likely to be sustained by the Fed. Cir.
    But after a few future Fed. Cir. decisions I think this trend may well shake out to impact mostly those claims that really deserve it [especially those closer to the facts in Alice and Bilksi] – i.e., purely functional very broad claims, especially, but not necessarily, business methods, with or without added “structural” claim language that is really no more than “do it on any computer.” Especially with no clear technological advance. Even if we ARE stuck with their being decided on essentially a “I know it when I see it” or “intuition” basis! [Plus some medical diagnostics and/or medical treatment patents with key mental steps or claiming unaltered genes?]

    But note that more and more defendants are wiseing-up to attacking such extremely broad claims in an IPR or CBM on a § 103 basis to kill them before even needing to file an S.J. motion based on “unpatentable subject matter”. KSR has helped that. This should greatly reduce the NEED for “unpatentable subject matter” defenses. An IPR or CBM is also vastly cheaper for suits with those D.C. judges who will not even seriously consider an S.J. motions until near trial dates, which is too late to save millions in defendant litigation costs.
    Using IPRs or CBMs should also satisfy those who object to this enhanced [but long standing] Sup. Ct. case law [not in § 101] unpatentable subject matter defense as being a backhanded way of killing very broad claims that should have never issued under § 103 with a proper prior art search and examination.

    Reply
    1. Paul Morgan after a few future Fed. Cir. decisions I think this trend may well shake out to impact mostly those claims that really deserve it [especially those closer to the facts in Alice and Bilksi] – i.e., purely functional very broad claims, especially, but not necessarily, business methods, with or without added “structural” claim language that is really no more than “do it on any computer.” Especially with no clear technological advance. [Plus some medical diagnostics and/or medical treatment patents with key mental steps or claiming unaltered genes?]

      Paul — agreed. And those claims are never coming back. Good riddance to them! As Dennis wisely pointed out years ago, State Street Bank was the height of the in s a n i t y in this area. We’ve pulled back from there, thankfully, but there’s still some pulling back to do and a lot of those jn ky patents are still in the system waiting for someone desperate enough to try to enforce them.

      What I’d like to see is more discussion about where the line on the eligility of information processing b .s . should be drawn and what words should be used to draw that line. It’s difficult to have that discussion here, of course, when you’ve got ten clooless b 0 z 0s accusing you of being a c-mmunist or a ra pist because you don’t own an autographed copy of “Patents and Why I Love Them” by Judge Rich.

      Reply
      1. Paul Morgan after a few future Fed. Cir. decisions I think this trend may well shake out to impact mostly those claims that really deserve it [especially those closer to the facts in Alice and Bilksi] – i.e., purely functional very broad claims, especially, but not necessarily, business methods, with or without added “structural” claim language that is really no more than “do it on any computer.” Especially with no clear technological advance. [Plus some medical diagnostics and/or medical treatment patents with key mental steps or claiming unaltered gen es?]

        Paul — agreed. And those claims are never coming back. Good riddance to them! As Dennis wisely pointed out years ago, State Street Bank was the height of the in s a n i t y in this area. We’ve pulled back from there, thankfully, but there’s still some pulling back to do and a lot of those jn ky patents are still in the system waiting for someone desperate enough to try to enforce them.

        What I’d like to see is more discussion about where the line on the eligility of information processing b .s . should be drawn and what words should be used to draw that line. It’s difficult to have that discussion here, of course, when you’ve got ten clooless b 0 z 0s accusing you of being a c-mmunist or a ra pist because you don’t own an autographed copy of “Patents and Why I Love Them” by Judge Rich.

        Reply
    2. Paul, I agree with you completely.
      While not necessarily intellectually satisfying, or easy to apply, the criteria you describe do seem to be the guideposts for assessing claims under 101.
      Where exactly to draw the line between patent-eligible and not, and how to rationalize the intrusion of 103-sounding language into the eligibility assessment, may not be answerable.

      Reply
        1. anon, I feel genuine pity for the psychological condition that compels you to obsessively post on this site. While your inscrutable posts and ad hominem attacks make you come across as a troll, I believe you are a decent human being who simply needs help.

          While MM clearly cannot control himself, I hope that others will refrain from feeding your obsession. I personally commit to you that I will not read or respond to your posts, because it is not healthy for you. Please talk to someone in your support network. Your real friends and family would not want so much of your life to be wasted on a tiny corner of the internet.

          Reply
      1. Michael, regarding the intrusion of novelty and obviousness into §101, have you read the cases overruled by Judge Rich in State Street Bank, and most particularly Hotel Security?

        Well it turns out that the analysis historically used prior to State Street Bank employed just such an analysis as the Supreme Court has developed in Prometheus/Alice – if the new part of the claim is ineligible, the eligible part of claim must show invention.

        What the Supreme Court seems to have done, is reinvent the wheel.

        Reply
        1. What the Supreme Court seems to have done, is reinvent the wheel.

          As pointed out Ned – you are off a few years, and again misstate who the Supreme Court is ignoring.

          They are less “reinventing the wheel” and more tossing the words of the statute aside.

          To adopt Judge Markey’s words:

          “[o]ur concern here is with plain, simple disregard of the statute—
          evidenced in the promulgation of some words and phrases that muddy
          the decisional waters and other words and phrases that render the law
          as written by congress a nullity
          . In sum, when it comes to patent cases,
          the statute is the law—and court opinions containing language and
          concepts contrary to the statute are unlawful.

          Howard T. Markey, Why Not the Statute?, 65 J. PAT. OFF. SOC’Y 331, 331 (1983). (italic emphasis in original, bold emphasis added)

          And you should note that this is Markey, nor Rich.

          Reply
          1. Anon, I of course agree with Markey. That is why I constantly suggest that the court should not use the word “abstract” to describe something that is nonstatutory, i.e., not a process, machine, manufacture, or a composition of matter. And of course, process has the same meaning as Art in the statutes prior to 1952 because no change was intended.

            Reply
            1. I notice that you are still engaging in your new semantic game of not saying “statutory category” and instead saying “statutory.”

              May I suggest that you not do so? It makes you appear, well, amateurish .

              Reply
  5. Ned -

    You said -

    “Transformation of information is non statutory.

    A new or improved machine that enables the transformation of information is statutory.”

    A new or improved process that transforms information is also statutory. Processes are not second class inventions. Why would you assert otherwise?

    A process that identifies people from their photograph would be statutory.
    A process that sharpens photographs (such as those taken with a ill designed telescope) is statutory.
    A process that calculates Fast Fourier Transforms of a stream of data samples is statutory.

    Reply
    1. The simple question put to Ned was:

      Is grain statutory?

      (the follow on of “Is any of electrons, protons, and neutrons statutory?” is equally – if not even more – appropriately placed before Ned)

      What are the chances that we will see a simple, straightforward and intellectually honest response?

      Reply
    2. Your examples are not limited to processing of information.

      Processing of information is math.

      Benson held that math cannot be patented as a process.

      Reply
      1. Those are not answers to a direct and simple question, Ned.

        Further, must I (again) remind you of the quote fromBenson that you never seem to remember (hint: We do not so hold)?

        Are you going to provide an honest straight forward answer, or will your lack of answer yet again scream volumes in its silence?

        Reply
        1. Anon, computer programs are not necessarily math. Benson had nothing to say about computer programs as a categorical proposition.

          But it did have something to say about mathematics as a categorical proposition. What was that?

          Reply
          1. nothing to say?

            Au contraire.

            (and no one is arguing about pure math – nice strawman)

            Reply
          2. Ned,

            “Cryptography”

            I sure hope that you realize that there is more than just a semantic difference between pure math and applied math Ned.

            Reply
      2. Processing of information is math.

        Can you obtain copyright on math?

        Reply
      3. Ned -

        These are my examples:

        A process that identifies people from their photograph would be statutory.
        A process that sharpens photographs (such as those taken with a ill designed telescope) is statutory.
        A process that calculates Fast Fourier Transforms of a stream of data samples is statutory.

        Which one(s) are not directed toward processing information?

        Benson did not say what you said is say.

        Reply
        1. Les:

          A process that identifies people from their photograph would be statutory.

          Perhaps. But this appears to be an application of information processing to physical phenomena.

          A process that sharpens photographs (such as those taken with a ill designed telescope) is statutory.

          Perhaps. Another application, this time to a machine.

          A process that calculates Fast Fourier Transforms of a stream of data samples is statutory.

          Perhaps – if claimed as an improvement to a computer system or as an improvement to communications between machines. Otherwise, one will be claiming mathematics itself, and that is not patentable subject matter per Benson.

          Which one(s) are not directed toward processing information?

          Directed to processing information or rather directed to useful applications of data processing? Benson did say applications where the pith in essence of patentable subject matter, and that physicality was a clue.

          Benson did not say what you said is say.

          Information is nonstatutory. Processing information without more is nonstatutory. However, useful applications of nonstatutory subject matter may be eligible.

          Integration is the key.

          Reply
          1. While integration may be the key, your answers here still show the bias of MoT.

            I now notice that you are drawing a distinction between ineligible “physical” things and ineligible non-physical things.

            Pray tell the authority for such a distinction, Ned? Keep in mind that clues are not requirements (and your reliance on MoT cannot save you here).

            You appear to be engaged in some serious circular bootstrapping.

            Reply
          2. Ned -
            You seem to have swallowed one of anon’s pedantic pills.

            This being 2014, when I said photograph I meant digital photograph, which is “just bits”.

            When I say processing information is patentable, I mean particular new, non-obvious methods of processing particular kinds of information are patentable.

            The source of the image data can not, in any sane system, be the key to patentability.

            So, whether the image comes from a security camera or the Hubble telescope, or some other source does not, or at least should not matter.

            The claimed processes, I was proposing in two examples, receive digital image data and process it and place the result in memory. It may later be displayed or printed or analyzed. But that is not part of the claim and should not have to be as it is insignificant post solution activity.

            Benson was absurd.

            Reply
  6. Artifice, Action, and Abstract: who knew so many worthless tautologies begin with “A”?

    The Supreme Court jurisprudence in this area is execrable. It relies on no reasoning. It relies on ad hoc decisions that specific claims are or are not abstract. Without defining “abstract”.

    Let’s stay with “A”. Supreme Court law on what is statutory is not worthy of Anglo-American legal traditions. It should be enshrined in the august majesty of Albanian jurisprudence. Or some such.

    Reply
    1. I would hate to cast aspersions on the Albanians, who have done me no wrong. Perhaps we could attribute the Supreme Court’s 101 decisions to the Assyrians, given that their civilization has ceased to exist, and likely had equally valuable subject matter eligibility jurisprudence.

      And thank you for making me laugh. I may not be appreciating the genius of this piece, but execrable tautology is my current assessment of artifice/action.

      Reply
  7. To the extent that mere semantics are at play, there is instant failure here.

    If “artifice” is semantic pedantics for “machine,” and

    If “action” is semantic pedantics for “transformation,”

    The court in Bilski already HELD that such are not requirements under patent law.

    Reply
    1. Hey, anon, did the Bilski court hold that statutory subject matter was not limited to

      “new” or “improved”

      “useful”

      “processes, machine, manufactures or compositions?”

      I didn’t see that in the opinion, or did I miss it.

      So, what is the transformation of something that is non statutory such as risk?

      Reply
      1. Ned,

        I have see that you have slipped into a new “pet phrase.”

        However, your phrase is ambiguous at best. What exactly do you mean by “non statutory?”

        Are you having difficulty wrapping your head around the fact that the Court has disregarded the statutory categories?

        Reply
        1. anon, “Are you having difficulty wrapping your head around the fact that the Court has disregarded the statutory categories?”

          Absolutely!

          I think that Supreme Court should stop making things up and should confine itself to the statute. The case law prior to 1952 relied exclusively on the statutes in that that case law did not find subject matter statutory and then say there were exceptions. Rather, the cases found the subject matter either within the four classes or without, or not new or improved even though within the four classes.

          Benson found math not the be patentable as a process. It did not find that math was patentable as a process, but nevertheless there was an exception. Thus speaking of “laws of nature,” “products in nature” or “abstract ideas” as exceptions fundamentally mischaracterizes the issue.

          It is clear that products in nature are not “new” compositions. They are not statutory by the words of the statute itself.

          It is clear that “laws of nature” are not statutory. Even if framed as a statutory process, such a process is not “new.” See, Flook at footnote 15.

          Regarding abstract ideas, their basic problem is that they are not statutory under section 112. See, e.g., Morse.

          However, with respect to business methods, methods that manipulate concepts such as price, and risk; music; printed matter; information, and the like, none of these are even statutory because none of these are within the four classes. Rather than say that these things are exceptions to statutory subject matter, they are simply not statutory the first place.

          So rather than be clear on the subject of statutory subject matter, the Supreme Court engage on an odyssey that is strange. You need to get back on track.

          Reply
          1. The case law prior to 1952 relied exclusively on the statutes

            ABSOLUTELY FALSE.

            That’s not even close Ned – and we both know that prior to 1952, Congress had sanctioned the Court to develop the definition of “invention”** by NON-STATUTORY common law evolution.

            Your busy-ness in trying to recraft a new history still strays far from reality.

            **”invention” was only one of a plethora of words that the judiciary could NOT resolve with the power granted to them by Congress. In fact, the judiciary became so addicted to this power from Congress, that to this day they refuse to let their NON-STATUTORY pronouncements become dead letters.

            Reply
          2. Benson found math not the be patentable as a process.

            And what is the enjoining quote from Benson that I must always remind you of? (hint: We do not so hold)

            Reply
    2. The court in Bilski already HELD that such are not requirements under patent law

      As you’ve been informed umpteen times already, the court held that the mere presence of any machine (and I include a physical object or composition under the term “machine”) or the mere presence of any physical transformation in a claim does not mean that the claim is automatically eligible (for example, adding “a computer” to Bilski’s method wouldn’t have saved the claim; nor was the ineligible subject matter in Prometheus saved by the transformative data gathering step — because it was old).

      The Supremes were very clear, however, that the presence of a machine or transformation is a decent clue that the claim is more likely to be eligible than a claim that recites neither a machine or transformation. In fact, you may have noticed that in the wake of Bilski exactly zero claims challenged under 101 have been upheld as eligible when the claim lacks either a machine or a physical transformation of matter. And I can guarantee you that the Supreme Court will never find such a claim eligible. Indeed, I have guaranteed you that the Court will find claims with physical transformations and machines in them to be ineligible. That happened, in fact, over two years ago and it just happened again last month, exactly as I predicted.

      Either you are too ignorant to follow this basic stuff or you are simply too proud to give up already. It’s boring trying to figure out which is more correct.

      Reply
      1. lovely AOOTWMD with you STILL not getting the difference between a clue and a requirement.

        As to your, um, “predictions,” well, that’s a pretty fantasy world you inhabit. Come back to planet Earth soon.

        Reply
        1. Does anybody think I’m wrong who can articulate why? Seems like Billy is having his usual language difficulties again.

          Reply
          1. Another lovely AOOTWMD – it is not I with the language difficulties.

            (and you might want to refresh your understanding of case law and the position of MoT – given that the Court rejected – and rejected by 9-0 – the elevation of MoT by the CAFC that you (and apparently a few others) so desired to be law (but alas, simply is not).

            Come, join us on planet Earth.

            Reply
          2. I’m still waiting. Surely there is someone who can come to Billy’s aid here.

            Or is he just a True Believer all alone on his sad little island?

            Reply
            1. You (and your AOOTWMD) are going to be waiting fro a long time, for something that is not to be provided (as such is simply not necessary).

              Perhaps if you held your breath while you waited… ;-)

              Reply
  8. ” The second and pivotal step is therefore to determine whether the claim demonstrates an “inventive concept” – that is, does the claim add elements “sufficient” and “enough” to establish patentable subject matter.”

    Yes, but these are judged under 102 and 103, NOT 101.

    Reply
    1. Les, “‘The second and pivotal step is therefore to determine whether the claim demonstrates an “inventive concept” – that is, does the claim add elements “sufficient” and “enough” to establish patentable subject matter.’

      Yes, but these are judged under 102 and 103, NOT 101

      Absolutely.

      But, if the statutory aspects of the claim are admittedly old, there should be no issue under 102/103.

      Reply
      1. In which case did the applicant admit that 1) there was merely a statutory aspect and 2) that said “statutory aspect” was old?

        Reply
  9. “Roughly defined, action is the requirement of active rather than passive utility through operating, behaving, performing, ”

    Alice passes an action test.

    i) creating shadow credit and debit records for each party at the supervisory institution;
    (ii) obtaining start-of-day balances for the shadow records;
    (iii) adjusting the shadow records at the supervisory institution for every transaction if the parties have sufficient funds to satisfy their respective obligations; and
    (iv) sending an end-of-day instruction by the supervisory institution to update actual credit and debit records to the reflect permitted transactions.

    I see verbs. What does the author of the above article see if not “action words”.

    Lolly lolly lolly get your ……
    No….
    Conjunction junction, what’s your function…
    No…

    “I get my thing in action (Verb!)
    To be, to sing, to feel, to live (Verb!)
    That’s what’s happening

    I put my heart in action (Verb!)
    To run, to go, to get, to give (Verb!)
    (You’re what’s happening)

    That’s where I find satisfaction, yeah! (Yeah!)
    To search, to find, to have, to hold
    (Verb! To be bold)
    When I use my imagination (Verb!)
    I think, I plot, I plan, I dream
    Turning in towards creation (Verb!)
    I make, I write, I dance, I sing
    When I’m feeling really active (Verb!)
    I run, I ride, I swim, I fly!
    Other times when life is easy
    (Oh!) I rest, I sleep, I sit, I lie”

    Yeah that’s it….

    Reply
    1. Information is processed magically. Conservation of information isn’t the most important law of physics and information can be transformed without energy, space, or time. It is done by angels on spinning on pins. Just go ask Stevens.

      Reply
      1. Night, I like your straw men. Your unstated assumption is that information is statutory, thus manipulation of information is statutory.

        I don’t buy your assumption. Which is information? A machine, manufacture or a composition?

        Reply
        1. I don’t buy your assumption. Which is information? A machine, manufacture or a composition?

          Because conservation of information is the most important law of physics, we know information is something. A machine that processes information is statutory. A method that processes information is statutory. (or should be in both cases.)

          Our brains process information. We live in the information age. Machines that process information are projected to replace some 20 to 50 million jobs in the U.S. over the next 20 years.

          Please. Can’t we live in the real world?

          Reply
          1. “A machine the processes information is statutory.”

            Not really.

            In order to be eligible, the machine also be “new” or “improved.”

            Did you miss this quotation I gave you from Federico?

            “The definition does not modify in any way the statement in section 101 that a new machine, a new manufacture, or a new composition of matter, can be patented; if a machine is not new, if a manufacture or composition of matter is not new, it still cannot be patented. The decision of the Court of Customs and Patent Appeals in In re Thuau, 135 F.2d 344, has not been overruled by the statute. “

            Reply
              1. Night, no quibble. Information is and shall remain non statutory.

                Transformation of information is non statutory.

                A new or improved machine that enables the transformation of information is statutory.

                But, a claim to a machine the only thing new of which is new information is not patentable under 102/103 because the only thing new is not statutory. Hotel Security.

                What we should agree on is that the Supreme Court has not addressed 101 in a coherent fashion equivalent to the otherwise coherent Morse case, and Hotel Security and its progeny that include Guthrie v. Curlett and In re Russell.

              2. progeny….

                …Guthrie…?

                Um, what did that last paragraph in Guthrie say exactly Ned?

                What was the specific phrase?

                Then check the history of the 1952 Act – particular the section carved out and newly created in 103 – that EXACT phrase is captured.

                You are continuing to (badly) mis-cite case law and ignore statutory law.

            1. Guthrie:

              “The only thing constant about this index is the method or art of compiling it; i. e., advice as to how to compile, which is not patentable.

              Thus as a question of fact we consider this patent as disclosing merely advice as to how to make an index, and the means (if any) disclosed for doing it as not patentably novel.”

              I note for the record that anon wants to change the holding by selective quotation.

              Reply
              1. You need to read the entire decision to see that the snippet and the term in that snippet that you want to hang your hat on does not mean what you are trying to portray it to mean, and that your argument is EXACTLY the point that Congress took umbrage with the courts for malfeasance and the basis for their action in 1952 to revoke the authority of the judiciary to set the definition of “invention” and the myriad of like terms and CARVE OUT OF the previous 101 the new – and separate – section of 103.

                This is historical fact Ned – no amount of your attempts to reshape history can change this.

              2. Ooohhh – yet another empty comment from Malcolm.

                Um, maybe you want to actually say something next time?

                I mean, something substantive, or on point, or at least off of your short script.

        2. In fact we know that information can’t be changed with energy. Think about that. A machine that transforms information like our brains.

          Really it is unbelievably medieval of you and the other anti-patent crowd not to understand this.

          Reply
          1. Night, now matter how much energy you pump into your strawman balloon to enlarge it, it does not change simple fact that information is not eligible because it is neither a machine, a manufacture, nor a composition.

            Reply
            1. So, a machine to dig dirt is not eligible because dirt isn’t a machine, a manufacture, nor a composition.

              Ned, stop being silly. The machine transforms information. The machine and methods are what are eligible.

              So, Obama even said understanding the brain is perhaps the most important thing man can do, and yet you want to tell me that machines that are doing what the brain is doing aren’t eligible? Medieval nonsense.

              Reply
              1. Night, new and improved machines are statutory.

                Information is not.

                If a claim does not claim anything new about the machine, but only claims new information, what we have in not patentable. We can quibble about 101/102/103. But ultimately, the claim as a whole is not patentable where the newness in the claim is ineligible subject matter.

              2. Ned, a method on a general machine is an improvement to the machine and a different machine. If we agree on that, then you are getting closer to leaving the 1200′s.

              3. Ned, a method on a machine is an improvement to the machine and a different machine in computers. If we agree on that, then you are getting closer to leaving the 1200′s.

              4. Night, by statute a new use of an old machine is a method or process.

                Thus, use of an old machine to define a new method does not, without more, define a new or improved machine.

                An old machine configured to automatically conduct a new method might, however, define a new machine. This the point I concede. However, anon, for one, will not accept the requirement of automatic, non transient or any such.

              5. Ned, You have ever failed (even as I ever request) to provide authority for your sua sponte new requirement of “automatic.”

                Why is that?

                As to “transient,” well, that is a whole different kettle of fish. One for which I have numerous times acknowledged (without prevarication or dissembling) the controlling law if Niutjen, but also mock the lunacy of that decision, even now, as I state up into the clear night sky and witness things of transient nature that are older – and more durable – than ALL of mankind.

            2. Once again Ned reveals his bias by not listing all four categories as equals and attempting to make the process category a mere SUB-category of the hard-goods categories.

              Reply
  10. ” to be patentable, a claimed invention must also function in some new, non-naturally occurring way. ”

    I don’t think that is true. The Wright Flyer warped wings to control direction. Birds to that, bees do that, heck, I think even educated fleas do that.

    Reply
    1. >>in some new, non-naturally occurring way. ”

      You mean like by a new machine that didn’t exist before?

      Reply
      1. No, my point is the WAY did occur in nature…

        Tug on the skeletal structure to bend it and change its shape….Birds do it, bees do it… fleas do it.

        Reply
        1. “Tug on the skeletal structure to bend it and change its shape….Birds do it, bees do it… fleas do it.”

          I didn’t realize that birds tugged on cables to bend a skeletal structure and change its shape. And bees surely don’t seem to do that. They have no cabling at all that I’ve ever seen.

          Reply
              1. Here’s claim 1 (blame Google for the errors, or praise them for the parts they got right)

                Oh my gosh: “functional claiming”. What horrors.

                1. 11m a flying-machine,v

                lateral margins at a normally flat aerop) ane “having lateral marginal portions capa le of movement to different positions above or blow the normal plane of the body of the-aeroplane, such movement being about an axis transverse to, the line of flight, whereby said lateral marginal portions may be moved to different angles relatively to the normal plane of’the body of the aero lane, so as to resent to the atmosphere di erent angles ofhncidence, and means for so movin said ,lateral marginal portions, substan tifily’as described. 3

              2. Oh lookie, there is a claim that recites “cables” (albeit in means plus function form) (see means for imparting helicoidial warp)…

                9. In a flying-machine, an aeroplane normally flat and elongated transversely to the line of flight,- in combinationl with means for imparting to said aeroplane alhelicoidal warp loo around an axis transverseto the line of flight and extending centrally along the body of the aeroplane inthe directio of-”the elongation of the aeroplane, substantially as described 10. In a flying-machine, two aeroplanes, each normal y flat and elongated trans- ,versely to the line of-flight, and upright standards connecting the edges of saidaeroplanes to maintain their equidistance, the connections between said standards and aeroplanes bemg bymeans of flexible joints, in

                combination with means for simultaneousl imparting to each of said aeroplanes a hellcoidal war around an axis transverse tothe line of-flig t and extending centrally along n5 standards eonpecting the edges of said aeroplanes to mainta n their equidistance, the

                connections between such-standards and aeroplanes be ng means of fiXi-ble 1 25 in comb nation with meanstor {simultanesiy iiu arting to each-of; said aeroplanes a b ‘Paronnd: axis transverse to the line I of flight and extending centrally along the body of the aeroplane in the direction of the elongation of the aeroplane, a verstantially horizontal flexible rudder, and means; for curving said r’udderrearwardly and upwardly or rearwardly and downwardly with respect to its normal plane, substantially as described.

              3. “nd means for so movin said ,lateral marginal portions,”

                Les that’s interesting. I wonder if those “means” are “cables”. Seems pretty likely.

                Not to mention that then entire rest of the claim appears quite structural and not abstract at all. And not to mention the “substantially as described”.

            1. Actually, the means in the illustrated examples were ropes.

              I’m not sure what your point is. I SAID they claimed: wood, burlap and cables (rope) CONFIGURED TO warp wings to control flight direction.

              Wood, burlap and rope were all pre-existing. moreover, they were all previously used to harness the air. Yet the Wrights were able to get a patent on their particular configuration.

              So, a preexisting computer CONFIGURED TO do something new, like translate voice to text or calculate an FFT in a new way, or establish and maintain shadow accounts, is also patentable.

              To highlight the childish absurdity of the rulings of THIS SUPREME COURT, I also noted that applying the COURTS impermissible “gist” type reasoning, one would have to distill the Wright’s claims down to the abstract idea of: changing the shape of a wing to control flight, which is as ancient as the fifth day (Gen 1:21) and therefore abstract.

              Reply
              1. Les,

                It might help (well, it might not, given whom you are talking to – but at least you would be more accurate yourself) to recognize and use the proper terminology of patent eligibility and patentability.

              2. I’m pretty sure the proper terminology to use here is: pedantic.

                Here’s 35 LC 100

                as used herein by Les, “new” means new and not obvious.

                Memorize it and quit picking nits.

              3. Anon, did you catch the fact that the Supreme Court in Alice said that the exceptions were not patentable, and they were interpreting §101 and its predecessors in light of this exception for 150 years?

                “‘We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.’ …We have interpreted § 101 and its predecessors in light of this exception for more than 150 years. … see also O’Reilly v. Morse, 15 How. 62, 112-120 (1854); Le Roy v. Tatham, 14 How. 156, 174-175 (1853).”

                You know what that means, right?

              4. Did you catch that I have repeatedly said the Court was holding onto its addictions of the past?

                Also note the bold part of the Markey quote – the quote that you said you were in agreement with me on (and that agreement include the unlawful actions of the Supreme Court).

                That part of the quote again: and phrases that render the law as written by congress a nullity.

                You know what that means, right? (I notice that you STILL have not answered me regarding why Congress would create a defense to something that is “nonstatutory” and thus would NEED no defense).

              5. “Actually, the means in the illustrated examples were ropes.”

                Cables ropes whatev. Some sort of physical item.

                “I’m not sure what your point is”

                My point is that that your theme that “them’s Right Bros Patents Dun shoulda Gone Down under thems abstract Exceptions” is ridiculous. There is nothing about their claims that is “abstract”. The whole thing is talking about airplanes like the one in the smithsonian and bending the wings thereon. Not one abstract thing what so ever involved.

              6. “So, a preexisting computer CONFIGURED TO do something new, like translate voice to text or calculate an FFT in a new way, or establish and maintain shadow accounts, is also patentable.”

                I lulzed.

                How do you not hear yourself talking lester jester? Seriously? There is a huge difference. The one is just you trying to patent an abstract idea about financial intermediation by putting it “on a compooter”. The other is a man trying to patent his new airplane. F F S son.

              7. “COURTS impermissible “gist” type reasoning, ”

                Well you’re going to need to set that aside. And that is because there is no “gist” type reasoning in these decisions. That’s just you imagining sht from thin air and attributing it to the USSC.

        2. I understood. Les the new way is another outrage. An invention that mimics nature is not an invention? Since when? Goodness this stuff is just so delusional.

          Reply
          1. “An invention that mimics nature is not an invention? ”

            Nobody ever said that. You guys just have your panties in a bunch over nothing as usual.

            Reply
            1. 6,

              As usual, you are not understanding (nor caring that you are not understanding) the conversation.

              Reply
      2. Furthermore, wood, burlap and cable all existed before as well. All that was new was the particular configuration.

        In Alice the configuration of a preexisting computer was changed so that it would create and maintain/manipulate shadow accounts in a particular way….

        If the Wrights had a new machine, then so did Alice.

        Reply
        1. Les, THAT was their only hope. I didn’t see that in their briefs or in their oral argument.

          Reply
        2. In Alice the configuration of a preexisting computer was changed so that it would create and maintain/manipulate shadow accounts in a particular way….

          Right. But the claim didn’t describe in structural detail those “configuration changes.”

          I wasnt granted a patent on my “plane configured to hold an American’s real estate deed, an Italian’s patent application, and a copyrighted film digitally encoded on tangible media wherein said film about a woman who gives birth to a fly” either.

          I told the PTO it was new and useful and any skilled plane configuration guy could configure a plane to do that but they still said “no way.” Later I learned that a plane meeting my limitations actually flew across the Atlantic. Nobody paid me! I got no money from any of the people on board or from the airline because I didn’t have the patent. Boo hoo hoo hoo hoo hoo! America is turning communist!

          Reply
          1. But the claim didn’t describe in structural detail

            Not only is this a non-sequitur to the point under discussion, it (again) evidences a lack of understanding of what the claim is for.

            Malcolm knows – or should know – this and yet insists on dissembling in his continued attempts at advocating a change in law under the guise of seriously mischaracterizing what the law is today.

            Reply
            1. There’s evidence here of your sad delusions and soci0 path0logy but little else, Billy.

              You are a l0 ser, by definition. You lost and you’re going to keep losing. We all know that hurts you. [shrugs]

              Reply
        3. If the Wrights had a new machine, then so did Alice.

          (sigh)

          Nice. But that was not the question before the Court in Alice.

          The statutory categories were not at issue in Alice.

          Reply
        4. The Court’s “Abstract/Gist” sword just does not care if the claim nominally meets the statutory category requirement.

          Why do you think that we are seeing so much dissembling from Malcolm (his denial and then the next day his “prediction” of the same thing he denied) and the flabbergasted consternation of Ned, and his mad scrabble (failed, mad scrabble) to re-craft some new “magic” phrase in an attempt to re-ground his long running agenda in “the statute”?

          Clearly, the typical anti-patentists are struggling to accept that the judicial activism on display (the reaching of ends regardless of the means) just does not match the actual statutory words, nor comports with adherence to the separation of powers doctrine.

          Reply
    2. Les, I agree that “non naturally occurring” does not seem to be supported in the case law.

      What is supported is what Morse discussed, that natural forces, or machines, or compositions, must be applied to articles to produce new results. It makes no difference whether the subject matter operated upon is new or old — only that it be statutory.

      Reply
        1. A moving scroll on which are there long and short marks and spaces between is statutory. Dots and dashes, sir.

          Reply
            1. anon, take a look at the spec. A moving scroll and a pen adapted to make short or long swipes. The space between are used to separate characters — but they are simply spaces between marks.

              Modern communication typically his one or more voltage levels in a continuous signal that varies from level to level: e.g., 0/1, 0/-1/1.

              Each of these signals can be converted into binary, octal or hex or decimal, depending. Morse converted them in to letters and numbers.

              But there is very little difference between Morse’s claim 5 and modern signaling techniques. The one difference is that today, there is no need for spaces between signals.

              Reply
      1. “It makes no difference whether the subject matter operated upon is new or old — only that it be statutory.”

        Now the work pieces have to be statutory? Where do you get this stuff?

        “must be applied to articles to produce new results”

        The results have to be new? Where do you get that?

        In a world that put holes in plates with a drill, I can patent a method for putting a hole in a plate using a laser, even if the holes are identical. The results do not have to be new.

        As far as this goes:

        “must be applied to articles”

        I would point out that bits of information (e.g., ones and zeros) are articles….

        processing information IS a process applied to “articles.”

        Reply
        1. Now the work pieces have to be statutory? Where do you get this stuff?

          Let’s see if he responds to the question of the workpieces of natural grain (or electrons, protons and neutrons) are “statutory” or not.

          (in a way, this mirrors the confusion with the exceptions to the judicial doctrine of printed matter, in that some seek to unnecessarily require that the functionality itself must rise to the level of being able to earn a patent in its own right, when such a level is simply not required)

          Reply
  11. I have nil of substance to add to this very comprehensive analysis or the excellent comments. I just don’t understand the choice of the term “artifice.” I would have said “artifact.”

    “Artifice” normally leaves an acid taste in one’s mouth as it has the connotation of dishonesty, or trickery, or cunning. It brings to mind the SOP of my third wife.

    However, I do see in my Funk and Wagnel’s a second definition that could fit here: “ingenious device.” But even that definition would be tainted by the negativity of the more commonly used first definition.

    “Artifact,” OTOH refers (almost) exclusively to that which is made by humans, and is used to distinguish man-made thingys from naturally occurring thingys. Even when it is used in a negative sense – such as the unintentional/unwanted results of an experiment – it refers to a human glitch or result that wasn’t supposed to be there.

    Of the two words, I would definitely say that “artifact,” not “artifice,” best fits in this assertion from the post:

    For claims directed to phenomena of nature, “enough” means artifice and meeting the age-old test of “markedly different characteristics from any found in nature.”

    Maybe I’ve missed “artifice” being expropriated by patent mavens and twisted into a legal term of art. That would be a shame given a valid and proper word exists.

    Reply
    1. “third wife”

      Didn’t learn the first two times eh?

      Reply
    2. I thought the choice of word a good one.

      Artifice….think Arti – ficial, i.e, not natural, man made. I believe that is why the word was chosen.

      Reply
      1. Car keys please.

        ( dd you not read the rest of what Babel talked about?)

        Reply
    3. BB: I just don’t understand the choice of the term “artifice.” I would have said “artifact.”

      I’m guessing the choice was based on the alliterative properties of “artifice and action.” I don’t like either term, and I don’t like “artifact” either.

      For physical objects (compositions, apparati, manufactures) the key to eligibility is the rectiation of new objective physical structure. That way one will avoid protecting “new” (and ineligible) “functionalities” or (ineligible) information used in an old context/field.

      For methods, the analysis is necessarily different. Certainly if you recite a machine in your method and that recitation is eligible on its own terms (see preceding paragraph), then you’re golden. Otherwise a reasonable, workable approach is to look for a new combination of steps that produces a physical transformation. Note that this is not the “transformation” prong of the rejected “machine or transformation” test. The critical transformation here needs to flow from a new combination of steps, not a combination of steps in the prior art.

      Yes, this approach has severe consequences for your typical information processing computer-implemented method patents (and faux-apparatus/composition claims that recite only information processing steps). As Ned has already pointed out in this thread, it was the CAFC’s short-sighted eagerness to protect methods that drove 101 “off the rails” (his words, not mine). They really have no place in any ordinary patent system for reasons that have been articulated a hundred times and don’t really need to be articulated again right now.

      Is there some reasonable fallback position that will rescue some computational methods more worthy than the typical “Netflix queue manager” b.s. that is presently turning our patent system into a gigantic pool for b o t t o m f e e d ers with too much money and time on their hands? The Supreme Court has hinted at such but the contours of that analysis are presently very fuzzy indeed. I’m open to any suggestions.

      Reply
      1. What about a fallback position for the failed attempt to elevate the clue of MoT to something all nine justices threw out (a holding) in Bilski – or does the rudimentary difference between clue and requirement still confuse you?

        Reply
      2. This is all very funny to me. If you know the old school definition of artifice it is the perfect word for his piece. It’s just like “worksmanship” or “craftsmanship”. Kind of an old school equivalent/companion of “useful arts” or nearly so.

        The dictionary deems this definition “obsolete” though.

        “1. a clever expedient; ingenious stratagem
        2. crafty or subtle deception
        3. skill; cleverness
        4. a skilfully contrived device
        5. obsolete craftsmanship”

        I will note that I have seen it used quite a bit in the scholarly world. I read a book regarding “time” the other day that was replete with mentioning artifacts (including modern artifacts laying around your house like TV’s etc.) and the artifice (craftsmanship) that brought them into being.

        Frankly I say it is time for a comeback for that word! It was a good word and it was a useful word. It should have stuck around.

        Though I don’t like the overall theme of the piece. It goes beyond simply stating that everything in the statutory categories is eligible save that which is excluded. And that be the lawl, so I see no reason to get into all the rest of this stuff.

        Reply
        1. Sorry 6, it cant be used as it is clearly indefinite. …. more fuzzy than “adapted to”

          How do you like being 112ed for a change? :-p

          Reply
  12. Professor, “technology?” Why not look to the statute: machine, manufacture, composition? Art is defined in Morse and it, like all eligible subject matter, requires a new result or effect based on forces of nature on articles, or by action of machines, compositions.

    Then we address the combination of the ineligible (subject matter that is not one of the four classes) combined with the otherwise eligible. The cases were discussed in Steven’s concurring opinion in Bilski:

    Begin with Hotel Security that held:

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

    The we have In re Russell, 48 F.2d 668 (C.C.P.A. 1931):

    “The mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute “any new and useful art, machine, manufacture, or composition of matter,” or “any new and useful improvements thereof…” citing to Guthrie v. Curlett, 10 F.2d 725 (2d Cir. 1926).

    What do these cases tell us? Pretty much the same thing as your argument, but tied expressly to the statute. Moreover, there is no ambiguity as to whether the claim is directed to ineligible subject matter here. If what is new in the claim is non statutory, it is not eligible. The claim becomes eligible if there is invention in the otherwise eligible.

    All the modern 101 cases are consistent in result with the above analysis, if not consistent in their language. However, since Prometheus, the historical analysis provided by the Hotel Security-In re Russell line of cases, together with Morse, is substantially fully restored and recognized.

    It is to be observed here that 101 jurisprudence went off the rails when computers and computer programming became of issue. There was a consistent push to patent computer programming, and the CCPA/Federal Circuit sought to comply. The Supreme Court simply reacted to the CCPA/Federal Circuit, and has now, in Prometheus and Alice, all but restored patent law to its historical foundations. It is for us to point out to the Supreme Court/Federal Circuit these historical cases that they stop trying to reinvent the wheel.

    Circling back: Technology? Look at the statute, please.

    Reply
    1. Ned -

      I’m happy that you are reading that statute.

      But puzzled that you would suggest reading the statue and then sign on to ignore that fact that a book is a manufacture and sign on to an “interpretation” that reads books as ineligible.

      Once you make that exception to get the result you want, you open the door to all the other imaginary exceptions.

      Reply
      1. Les, I am not adverse to treating the matter under 102/103 so long as ineligible subject matter is given no weight.

        Reply
        1. You still don’t get what the CONTROLLING LAW is in regards to the exceptions of JUDICIAL DOCTRINE of printed matter means, do you Ned?

          Reply
        2. So, wood, burlap and cables get no weight…. then how do you patent a plane?

          Reply
          1. Note Les, that Ned is NOT answering the question concerning the legal difference between patent eligibility and patentability.

            Since he refuses to answer this, one must conclude that he is purposefully engaging in obfuscation.

            Reply
    2. Ned, your analysis is just silly. A method to process information by a machine is not patent eligible under which one of those cases?

      Reply
      1. Night, since information is not statutory. Any way of processing it, by using hammers, shovels, calculators, slaves, or the like, does not change the fundamentals that information is non statutory.

        Reply
        1. Ned, information is not statutory? What? The thing the machine and method operate on do not have to be “statutory.” Is grain statutory?

          Reply
          1. Night all you are saying is that if a claim recites old machines and new information, it is patentable.

            That cannot be the law, and it is not the law.

            Reply
            1. That is NOT all that he is saying Ned.

              He asked you a simple and direct question.

              One that happens to point out that your latest “pet phrase” is stillborn.

              Answer the question Ned. Please.

              Is grain statutory?

              (and for that matter, are electrons, statutory? How about protons? How about neutrons?)

              Reply
            2. YOU are saying that if the cotton and the seeds are not statutory then the machine that picks the seeds out of the cotton is not statutory….

              THAT is nonsense.

              Reply
    3. Circling back: Technology? Look at the statute, please.

      Please help me find that word in the actual statute in the pertinent section of which Congress discusses the patent eligibility (as distinguished from patentability).

      There is a reason why such search comes up empty.

      Reply
  13. Prof. Morris: Compounding the difficulty is the fact that § 101 determinations are in the end based on nothing more than intuition. As I and a number of others have noted, none of the pragmatic justifications commonly cited in support of § 101, such as preemption and disproportionality explain how patentable subject matter determinations are actually made or, more importantly, why.

    I admit to not having read yet Prof Morris’ other article on this topic (but I will) but on its face I don’t agree with this paragraph and I don’t think it’s helpful to any attempt to formulate a logical reasonable approach to determinations of subject matter ineligibility.

    Perhaps there are or were some claims that were found ineligible based on “nothing more than intuition.” But there are vast numbers of claims that have been found ineligible, and will be found ineligible and were never even filed because the eligibility issues were right out in the open for anyone with open eyes to see them. Consider:

    I claim: A method of increasing one’s happiness by thinking about a purple unicorn wearing a diamond tuxedo and a correlation between drinking grape juice and chronic impetigo.

    Of course that claim is not eligible. It protects a thought. It doesn’t matter how non-obvious or “non-natural” the thought is or how useful the thought is. Thoughts aren’t eligible subject matter. Let’s say you delete the silly part about the unicorn and leave just the correlation. Does it change anything? Is more “intuition” required? Nope. Same issue. Easy for anybody to follow.

    Now put in front of that “thinking about a correlation” step a gen-eric/old/conventional method of gathering data relevant to that correlation. Does it change anything? It changes only the size of the class of legally acting persons who are turned into infringers when they think about the correlation. The claim still protects the ineligible correlation and the ineligible method of thinking about it, at least as far as people practicing the prior art data-gathering step are concerned.

    There’s nothing “intuitive” about this analysis. It’s straightforward. And it’s also not some unlikely hypothetical. This is exactly the type of claim Prometheus was going after and they were hardly alone in that regard. Breyer certainly could have been more direct and expansive in his discussion of the underlying issues but I think he made a conservative choice to stick to the arguments made by the various parties (which were, as a whole, not nearly as thoughtful as they could have been — Mayo seemed to do everything in their power to make the issues as opaque as possible for everyone involved).

    patentable [eligible] subject matter’s intuitive nature leaves courts effectively unable to specify how they reached their determinations

    Information isn’t eligible for patenting. You can’t protect information with patents. There’s nothing “intuitive” about this. Nor is there anything “intuitive” about the proposition that lawyers seeking to protect information with their patent claims will choose words that appear to protect something else. That’s why the Supreme Court has been very clear about discouraging lawyers from wasting their time trying to play word games and draft around the issue.

    the combination [artifice and action] merely reflects an underlying intuition about what constitutes technology

    That may be true, but it also reflects (or should reflect) fundamental truths about what constitutes ineligible subject matter in our patent system. Regardless of how we choose to define “technology”, nobody going to argue that performing a math equation in your head or doing it with a pencil and paper is “technology.” What about a calculator? I think that’s also an easy fail that requires little or no “intuition.” And what’s the difference between a calculator that computes stuff and a computer that computers stuff? Do we need “intutition” to answer that question? I don’t.

    These are my major/minor quibbles. But this was a fine and thoughtful article. Please keep ‘em coming!

    Reply
    1. MM, I have responded to you about Myriad a number of times and each time my post has be swallowed by the filter.

      I think you overcomplicate Myriad. Simply, the invention claimed was a sequence that produced a specific protein. Isolation was not given any structural weight. As such, the claim covered sequences found in nature.

      Compositions found in nature are not new.

      Reply
      1. Isolation was not given any structural weight.

        I don’t know what that could possibly mean, Ned. The opinion is quite clear on the matter (correctly or incorrectly) that Myriad’s claimed compositions aren’t found in nature. So they must have given the term “isolation” some “structural weight”.

        Compositions found in nature are not new.

        Right. I agree with that. That’s a perfectly fine way to analyze a composition that is found “in nature”. It’s very problematic as a general approach to evaluating compositions/objects that are not found “in nature” because, well … nature is big place and you can find pretty much everything there in some form or another.

        Everyone agrees that polynucleotides are “special” because of their information value. It’s that information value (i.e., knowledge of the existence of the polynucleotides in our genomes or in our pet’s genomes, and the ability to do further research on the molecules) that companies like Myriad want to charge everyone for. But these considerations aren’t relevant to most other new compositions with a recognized substantial utility.

        Reply
      2. Ned: Isolation was not given any structural weight.

        I don’t know what that could possibly mean, Ned. The opinion is quite clear on the matter (correctly or incorrectly) that Myriad’s claimed compositions aren’t found in nature. So they must have given the term “isolation” some “structural weight”.

        Compositions found in nature are not new.

        Right. I agree with that. That’s a perfectly fine way to analyze a composition that is, in fact, found “in nature”. It’s not new. It’s not man-made. It’s ineligible.

        But it’s problematic as a gen-eral approach to evaluating the eligibility of man-made compositions/objects that are similar to those found “in nature” because nearly every man-made composition is derived from compositions found “in nature” (or in the prior art … which is no more or less “non-natural” than anything else you might find, say, floating out in the ocean).

        Everyone agrees that polynucleotides are “special” because of their information value. It’s that information value (i.e., knowledge of the existence of the polynucleotides in our genomes or in our pet’s genomes, and the ability to do further research on the molecules) that companies like Myriad want to charge everyone for. But these considerations — which were certainly in the Court’s mind when they wrote their decision — aren’t relevant at all to most new compositions, bio-related or not, which have a substantial utility.

        Reply
        1. MM, the “information” of DNA is functional. In a way, all chemicals are functional otherwise they have no utility.

          We both agree that isolated DNA is manmade an not found in nature. That should have decided the case.

          But the functional portion of the isolated DNA was found in nature. Since the function of DNA was claimed, this is the key.

          I am not sure that the result would have been the same had the isolated DNA instead been claimed entirely in terms of its structure without any reference to its function. That structure, per Lourie, is not found in nature.

          Thus, one should be able to claim sequences from here to there, in detail, with termination structures and not face a 101 problem if the claimed structure is not found in nature.

          Reply
          1. What is key, Ned, is that Malcolm’s mantra of “physical” was shot to pieces in Myriad.

            Physically different was acknowledged by the Court.

            Reply
            1. all chemicals are functional otherwise they have no utility.

              I have no idea what this is supposed to mean, Ned.

              You do understand that there are chemicals and formulations that have no substantial utility, right?

              Reply
          2. I am not sure that the result would have been the same had the isolated DNA instead been claimed entirely in terms of its structure without any reference to its function.

            I am 100% sure that the function is irrelevant.

            Please try to understand, Ned, that Myriad’s claims described unambiguous structural features that could be identified by any child, objectively. They had narrow claims protecting very specific polynucleotides — claimed as such, without regard to what the sequences “coded” — that were shot down as well.

            Reply
            1. I am 100% sure that

              Not surprisingly, you are also 100% wrong (objectively).

              Reply
            2. MM: I claim an isolated polynucleotide comprising SEQ ID X. I teach that SEQ ID X is useful for treating cancer.

              Why “isolated?” Does this term denote specific structure? Why not just claim that structure?

              Reply
              1. (lol – Ned. Malcolm and I had that discussion – Malcolm retreated to the notion that that particular art recognized the term for a type of structure)

                Every bit the same logic as “configured to” evokes structure. He even volunteered an admission as to recognizing this.

                But you are STILL missing the point here – the Court recognized the structural difference in Myriad. The structural difference did not save the day. You seem steadfastly oblivious to this.

                You refused to understand what the Court was doing then, and apparently still do.

                The Court is applying the same exact thing that you are struggling with in the Alice case and the same exact thing that you decry (vociferously) in the Bilski case: the Court is ignoring the statutory category aspect of 101.

                They (clearly – so I wonder how you miss this) say that “scriviners can play games and ‘get’ the claim to be in a statutory category, so WE DON”T CARE about the statutory categories in applying our own (implicitly) written law.”

                You continue to ignore exactly who is messing up the law of 101.

              2. Try again Ned. The Court clearly allowed that the structure (a different structure) was claimed. You need to NOT do you usual snip/parse view of the Court’s decision.

              3. Held: A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring. Pp. 10-18.

                segment – product – physical – structure

                Nor are Myriad’s claims saved by the fact that isolating DNA from the human genome severs chemical bonds and thereby creates a nonnaturally occurring molecule.

                molecule – physical -structure – different – not enough

                link to www2.bloomberglaw.com

              4. Held: A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring.

                segment – product – physical – structure

                Nor are Myriad’s claims saved by the fact that isolating DNA from the human g3nome severs chemical bonds and thereby creates a nonnaturally occurring molecule.

                molecule – physical – structure – different – not enough

                link to www2.bloomberglaw.com

      3. Ned,

        Another simple question that you have evaded answering:

        Is the universe static?

        Reply
        1. anon, “static?”

          Is the universe statutory? If not, whether it is static or non static is irrelevant.

          I have one for you: We all know that location is valuable.

          Is location statutory?

          Reply
          1. Does not answer the question Ned.

            Why are you having such terrible time giving me straight answers to simple questions?

            Reply
  14. Prof. Morris: Compounding the difficulty is the fact that § 101 determinations are in the end based on nothing more than intuition. As I and a number of others have noted, none of the pragmatic justifications commonly cited in support of § 101, such as preemption and disproportionality explain how patentable subject matter determinations are actually made or, more importantly, why.

    I admit to not having read yet Prof Morris’ other article on this topic (but I will) but on its face I don’t agree with this paragraph and I don’t think it’s helpful to any attempt to formulate a logical reasonable approach to determinations of subject matter ineligibility.

    Perhaps there are or were some claims that were found ineligible based on “nothing more than intuition.” But there are vast numbers of claims that have been found ineligible, and will be found ineligible and were never even filed because the eligibility issues were right out in the open for anyone with open eyes to see them. Consider:

    A method of increasing one’s happiness by thinking about a purple unicorn wearing a diamond tuxedo and a correlation between drinking grape juice and chronic impetigo.

    Of course it’s not eligible. It protects a thought. It doesn’t matter how non-obvious or “non-natural” the thought is or how useful the thought is. Thoughts aren’t eligible subject matter. Let’s say you delete the silly part about the unicorn and leave just the correlation. Does it change anything? Is more “intuition” required? Nope. Same issue. Easy for anybody to follow.

    Now put in front of that “thinking about a correlation” step a generic/old/conventional method of gathering data relevant to that correlation. Does it change anything? It changes only the size of the class of legally acting persons who are turned into infringers when they think about the correlation. The claim still protects the ineligible correlation and the ineligible method of thinking about it, at least as far as people practicing the prior art data-gathering step are concerned.

    There’s nothing “intuitive” about this analysis. It’s straightforward. And it’s also not some unlikely hypothetical. This is exactly the type of claim Prometheus was going after and they were hardly alone in that regard. Breyer certainly could have been more direct and expansive in his discussion of the underlying issues but I think he made a conservative choice to stick to the arguments made by the various parties (which were, as a whole, not nearly as thoughtful as they could have been — Mayo seemed to do everything in their power to make the issues as opaque as possible for everyone involved).

    patentable subject matter’s intuitive nature leaves courts effectively unable to specify how they reached their determinations

    Information isn’t eligible for patenting. You can’t protect information with patents. There’s nothing “intuitive” about this. Nor is there anything “intuitive” about the proposition that lawyers seeking to protect information with their patent claims will choose words that appear to protect something else. That’s why the Supreme Court has been very clear about discouraging lawyers from wasting their time trying to play word games and draft around the issue.

    the combination [artifice and action] merely reflects an underlying intuition about what constitutes technology

    That may be true, but it also reflects (or should reflect) fundamental truths about what constitutes ineligible subject matter in our patent system. Regardless of how we choose to define “technology”, nobody going to argue that performing a math equation in your head or doing it with a pencil and paper is “technology.” What about a calculator? I think that’s also an easy fail that requires little or no “intuition.” And what’s the difference between a calculator that computes stuff and a computer that computers stuff? Do we need “intutition” to answer that question? I don’t.

    Reply
  15. How refreshing to see an article which makes a bona fide attempt to understand current trends without engaging in pointless, alarmist rhetoric about, e.g., “the complete evisceration of the patent system” or similar nonsense.

    There’s lots to discuss here and I think much of the analysis is spot on. I have a few comments below but at the outset I think it’s always worth remembering that whatever your position is regarding what should be eligible, or whether the so-called “judicial exceptions” are legally suspect as a category, there is not much room for disagreement as to whether 101 permits information or the organization of information to be protected by patents. It doesn’t. Likewise, 101 doesn’t permit new functions or new relationships to be protected by patents. When evaluating “methodologies”, then, it’s easy to start by looking for the presence of limitations in claims which implicate these examples of excluded subject matter and work outwards from there asking the question: does the claim protect this excluded subject matter, in any context regardless of how limited that context is? If the answer is yes, the analysis is complete and the claim fails 101.

    A second more pedantic but very important point: authors should avoid using the terms “patentability” and “eligibility” interchangeably when discussing eligibility. It confuses many readers (or, in some cases, leads the reader to wonder if the author is confused). The Supreme Court itself could do a better job maintaining a distinct vocabulary in this regard.

    Moving along, then:

    Artifice refers to the well-recognized requirement that patentable [eligible] subject matter be the product of human ingenuity, not nature. Less appreciated is the fact that artifice requires more than just changes in structural or other physical characteristics; to be patentable [eligible], a claimed invention must also function in some new, non-naturally occurring way.

    This paragraph appears to be an attempt to re-formulate the strange-ness that the Supreme Court presented us with in its decision in Myriad. As the the Court recognized, rightly or wrongly, (and Professor Morris appears to acknowledge this as well), the claimed compositions in Myriad were deemed structurally distinct from naturally occurring compositions and the structural distinction (the “isolation”) was recited expressly in the claim. In short, they were “man-made.” But clearly these structural differences weren’t enough in the peculiar context presented by Myriad, i.e., man-made isolated polynucleotides with no other utility than their own information value (“the sequence is present”) or as tools for further research (“express it and see what happens”).

    Most of us will remember that certain expressed sequence tags (“ESTs”) were previously deemed ineligible under the utility prong of 101, with much less consternation from the peanut gallery.

    I think a “substantial utility” approach is much more logical and “workable” than asking whether a man-made biomolecule (or any other composition, for that matter, that is similar to something found “in nature”) also “functions in some new, non-naturally occuring way.” The reason is that every physically transformative event in our universe happens in a “naturally-occuring way” (what’s the alternative?). This, too, has been recognized by the Supreme Court (and also acknowedged by Professor Morris). Indeed, there is nothing “new” or “non-natural” or about an isolated DNA molecule whose function is to, e.g., encode a mRNA which encodes a protein nor is there anything “new” or “non-natural” about an isolated DNA which binds to its complementary sequence in a detectable manner. What’s “new” (and what apparently makes all the difference to the Supreme Court) is an isolated DNA with a primary sequence (i.e., a bona fide physical structure) that isn’t found anywhere else, whether that “somewhere else” is in some Amazon frog’s liver or in some completely man-made molecule floating in a test tube taught in the prior art (and therefore, for patent purposes, no less “natural” than any other molecule in our universe).

    Courts should be very, very careful about extending the poorly articulated “principle” behind the Myriad decision beyond the peculiar emotionally charged subject matter at issue in that case. Why? Because — at least with regard to the claiming of physical compositions, articles, and apparati — the recitation of novel structure in claims really is the lynchpin of a healthy functioning patent system. By necessity, it must be the fundamental hurdle for claiming such inventions and, because we live in the same universe, all structures function “naturally”. In my opinion, the best way to deal with properly claimed (i.e., structurally distinguished from the prior art) physical matter is the “traditional” way: look for a substantial utility under 101, then look at 102 and 103, including inherency considerations. Note that Myriad’s composition claims could have been easily felled under any number of theories without opening Pandora’s Box. And perhaps the Court will evolve those theories in retrospect (as it seems to be doing with its ever-shrinking justification for granting Diehr’s rubber-curing “invention”).

    Reply
    1. Your structure uber alles went bye bye and you STILL are all QQy and apoplectic about it.

      Your pvssyfootong and double standards is quite humorous.

      Reply
      1. If you think Myriad eliminated the fundamental importance of structure in patent composition claims, you are an even bigger i d i 0 t than anyone guessed.

        Reply
        1. LOL – nice spin.

          Eliminate? Why use that word? Clearly what I have put forth is that the Court has merely tossed aside the statutory categories in the execution of their implicit writings.

          You flat out denied this previously when I put this forth, and only recently did a 180 and now claimed that you “predicted” this.

          That you so quickly jump to ad hominem (with nothing more) is also not surprising. Your short script just does not enable you to have a conversation without appearing to be an unmitigated arse.

          Reply
  16. How refreshing to see an article which makes a bona fide attempt to understand current trends without engaging in pointless, alarmist rhetoric about, e.g., “the complete evisceration of the patent system” or similar nonsense.

    There’s lots to discuss here and I think much of the analysis is spot on. I have a few comments below but at the outset I think it’s always worth remembering that whatever your position is regarding what should be eligible, or whether the so-called “judicial exceptions” are legally suspect as a category, there is not much room for disagreement as to whether 101 permits information or the organization of information to be protected by patents. It doesn’t. Likewise, 101 doesn’t permit new functions or new relationships to be protected by patents. When evaluating “methodologies”, then, it’s easy to start by looking for the presence of limitations in claims which implicate these examples of excluded subject matter and work outwards from there asking the question: does the claim protect this excluded subject matter, in any context regardless of how limited that context is? If the answer is yes, the analysis is complete and the claim fails 101.

    A second more pedantic but very important point: authors should avoid using the terms “patentability” and “eligibility” interchangeably when discussing eligibility. It confuses many readers (or, in some cases, leads the reader to wonder if the author is confused). The Supreme Court itself could do a better job maintaining a distinct vocabulary in this regard.

    Moving along, then:

    Artifice refers to the well-recognized requirement that patentable [eligible] subject matter be the product of human ingenuity, not nature. Less appreciated is the fact that artifice requires more than just changes in structural or other physical characteristics; to be patentable [eligible], a claimed invention must also function in some new, non-naturally occurring way.

    This paragraph appears to be an attempt to re-formulate the strangeness that the Supreme Court presented us with in its decision in Myriad. As the the Court recognized, rightly or wrongly, (and Professor Morris appears to acknowledge this as well), the claimed compositions in Myriad were deemed structurally distinct from naturally occurring compositions and the structural distinction (the “isolation”) was recited expressly in the claim. In short, they were “man-made.” But clearly these structural differences weren’t enough in the peculiar context presented by Myriad, i.e., man-made isolated polynucleotides with no other utility than their own information value (“the sequence is present”) or as tools for further research (“express it and see what happens”).

    Most of us will remember that certain expressed sequence tags (“ESTs”) were previously deemed ineligible under the utility prong of 101, with much less consternation from the peanut gallery.

    I think a “substantial utility” approach is much more logical and “workable” than asking whether a man-made biomolecule (or any other composition, for that matter, that is similar to something found “in nature”) also “functions in some new, non-naturally occuring way.” The reason is that every physically transformative event in our universe happens in a “naturally-occuring way” (what’s the alternative?). This, too, has been recognized by the Supreme Court (and also acknowedged by Professor Morris). Indeed, there is nothing “new” or “non-natural” or about an isolated DNA molecule whose function is to, e.g., encode a mRNA which encodes a protein nor is there anything “new” or “non-natural” about an isolated DNA which binds to its complementary sequence in a detectable manner. What’s “new” (and what apparently makes all the difference to the Supreme Court) is an isolated DNA with a primary sequence (i.e., a bona fide physical structure) that isn’t found anywhere else, whether that “somewhere else” is in some Amazon frog’s liver or in some completely man-made molecule floating in a test tube taught in the prior art (and therefore, for patent purposes, no less “natural” than any other molecule in our universe).

    Courts should be very, very careful about extending the poorly articulated “principle” behind the Myriad decision beyond the peculiar emotionally charged subject matter at issue in that case. Why? Because — at least with regard to the claiming of physical compositions, articles, and apparati — the recitation of novel structure in claims really is the lynchpin of a healthy functioning patent system. By necessity, it must be the fundamental hurdle for claiming such inventions and, because we live in the same universe, all structures function “naturally”. In my opinion, the best way to deal with properly claimed (i.e., structurally distinguished from the prior art) physical matter is the “traditional” way: look for a substantial utility under 101, then look at 102 and 103, including inherency considerations. Note that Myriad’s composition claims could have been easily felled under any number of theories without opening Pandora’s Box. And perhaps the Court will evolve those theories in retrospect (as it seems to be doing with its ever-shrinking justification for granting Diehr’s rubber-curing “invention”).

    Reply
    1. My comments 5 and 4 are duplicated except I put a hyphen in “strange-ness” in comment 5 to get it past the moderation filer.

      The powerful computer brain that “moderates” these comments apparently doesn’t like the letter sequence “gen” in many seemingly innocuous contexts.

      Reply
  17. “Computers are widely regarded as “technological,” but much computer technology is “information technology,” and computer use primarily to manipulate data or other information thus adds no patentable action.”

    Yes, I have often thought that there is no difference between a computer that can drive and one that detects tumors. Bizarre reasoning. And, there is no difference between going to a doctor for a diagnoses and tarot card reader. They both just process information after all. And we all know that to get a computer to process any information you just go to your local boy and tell them to get it done and hand them a pizza. Stevens and Posner told us that so it must be true.

    Reply
    1. And we all know there is no equivalence between an information processing method and a special purpose machine. And, we all know that information processing doesn’t take time, energy, and space. And, we all know that this stuff is so easy that they don’t even give out ph.d’s for this stuff.

      Let’s see how reality meets our SCOTUS: EU scientist are boycotting a $1 + billion dollar experience to simulate the human brain on a computer because they think it is impossible with what we currently know. But this can’t be right. Tarantula just held that it is unpatentable because it is so easy to simulate any human thought method.

      Any written who is spitting mad at the SCOTUS for being $diots isn’t worth their salt.

      Reply
        1. I was afraid that he would declare a jihad on me if I was too persuasive or abused the author too much. Plus I am worried other professors may write articles –again–about how mean I am.

          Reply
          1. sheesh, 4 in a row, all to yourself (i.e., your adoring audience). Izzat a record or what?

            Reply
    2. Night, no one is talking about computers applied to produce some new technical effect. That has always been eligible subject matter even since Morse. The cases since Benson have not been about the application of computers to new, technical ends. See, e.g., Alappat (rasterizer of a graphics display).

      The beef is about computers doing nothing new and not being applied to doing something new technically. When the programmed computer is not improved technically, or does not operate to improve a larger machine or process, it is not doing something within the statute.

      Remonstrating that a computer is a machine is elevating form over substance. Old machines are not eligible per the statute. Using an old machine must produce a new technical result. Morse.

      Reply
        1. But, Night, information is not statutory. Old information, new information, transformed information, processes to transform information, packaging information, shooting information from cannons, burying information six feet deep, filling balloons with information, stuffing mattresses with information, burning information, using information to power cars — all are non statutory.

          Reply
          1. How about Morse’s “space,” how many balloons can you fill with that?

            Reply
          2. Grain is not statutory. Old grain, new grain, processed grain. And yet machines that process grain and methods that process grain are statutory.

            I see your little game Ned. You want to try to blur information and methods that transform information. Another Ned game. Are you competing with Lemley, Laurie, Posner, Stern, and the other dirt bags?

            Reply
            1. Funny NWPA, that once again Ned will choose to disappear from the conversation and refuse to answer simple straight-forward questions with any sense of intellectual honesty.

              You have now run into the limit of Ned’s willingness to hold a discussion, as you have provided a point that hurts Ned’s third party interests and he simply will not discuss the matter further because he views ANY such (non dust-kicking) discussion a violation of his duty to his clients. I would point out that this is EXACTLY why posts here are supposed to be of a personal nature only, so that such discussion-ending points are avoided and the discussion of law can proceed to their logical conclusions.

              You have hit the “run away” section of the “CRP-run away from valid counterpoint – post the same CRP again” cycle.

              Reply
            2. Night, to make it clear, then, we agree that both grain and information is non statutory.

              May we further agree that machines that process either are statutory.

              But it is clear that Benson held that mathematics, by definition a process of transforming information from one state to another is, without more, not a patentable process.

              But the same is not true of grain. A process that transforms grain from one state to a different state is entirely patentable.

              While we seek to dodge the MOT, one can see it aptly describes the difference between the examples.

              Reply
              1. While we seek to dodge the MOT

                UM, first who is this “we?”
                Then, why are you trying so hard to dodge it?

                (lol – the second question is rhetorical, as we both know that the Supremes in Bilski reversed the en banc CAFC and HELD that that MoT was not required.

                9-0.

                A clue is not a requirement. Maybe you can explain this to Malcolm, who does not seem able to understand the plain English (even given his vaunted skills of English as a first language).

      1. Another question you seem to be dodging Ned:

        Do you know the difference between patent eligible and patentable?

        You seem to NOT be using the proper (and basic) terms correctly. Does this have anything to do with your odd phrasing of “statutory” when you appear to mean “statutory categories?”

        Reply
  18. anybody know the rules on how the panel is determined here? Will it be the same Lourie, O’Malley and a random judge (replacing Rader)? Who else thinks it’s messed up that a random determination will decide this case?

    Reply
    1. I forget how this works, but I think the CJ has something to do with it.

      Reply
  19. patentable subject matter clearly remains a difficult and ambiguous issue
    Only after SCOTUS decided that they wanted to monkey around with the plain language of the statute. Stick with 35 USC 101 and it is incredibly easy.

    Infringers with savvy attorneys have found that it is easier to invalidate a patent — not by 102/103 — but by arguing that it is nonstatutory subject matter under the guise of judicial exceptions to statutory subject matter. Judges, rarely shy about sticking their noses into the fray, have been more happy to obliged these infringers. Instead of going to Congress to change 35 USC 101, these infringers have found that it is easier to convince a few judges that, despite the plain language of 35 USC 101, a certain patent shouldn’t be granted.

    The professor here attempts to find some rhyme or reason to explain 35 USC 101 jurisprudence — it is a useless endeavor. While a patent does not grant a “monopoly,” it is seen as doing so, and many judges have a natural antipathy for monopolies. As such, since they have been more than happy to whittle away at what constitutes statutory subject matter. I’ve read enough case law in my time to realize that a lot of (bad) case law gets written to justify an end result that the judge has already predetermined.

    Reply
    1. Oh No Stick with 35 USC 101 and it is incredibly easy.

      Please let everyone know how your “incredibly easy” understanding of 101 applies to evaluating the eligibility of a new, non-obvious and useful mental process. Likewise, let everyone know how your “incredibly easy” understanding of 101 applies to evaluating the eligibility of a method of gathering data using an old conventional machine and then thinking a new, non-obvious and useful thought about that data.

      Thanks.

      Reply
      1. It would be really hard if we didn’t have definitions. Oh wait, we do!

        35 U.S.C. 100:
        When used in this title unless the context otherwise indicates—

        (b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

        It’s almost like the statute was written so that you could evaluate whether old machines can do new things! Oh wait, it’s exactly like that!

        All this reading of “what the judges say today” made me almost forget there was a statute.

        Reply
        1. It’s almost like the statute was written so that you could evaluate whether old machines can do new things

          Hi, Sally! How about an old display machine that displays a new, non-obvious picture of your mommy? A typical kindergartner would tell you that machine is doing “a new thing” so … eligible for patenting, right?

          Let everybody know if you agree. Thanks in advance, Sally. Graham crackers and milk are in the fridge.

          Reply
          1. But….but…isn’t that technical? I’m displaying a picture, and pictures are technical things, aren’t they? Maybe X-rays, CT machines, ultrasounds, a dynamic CT aren’t technical……I mean, they just produce pictures, right?

            Uh oh, somebody needs to tell the Glorious Nine that medical devices aren’t patentable!

            Thanks for playing though. Still can’t make a coherent argument.

            Reply
          2. No. The kindergartner would tell you that the machine is doing a thing and therefore eligible for patenting.

            Newness is judged under 102, after the eligibility hurdle has been successfully negotiated.

            Reply
            1. Les, take two machines, one multiplying a number and another dividing a number. To the kindergartener, the machines simply consume power. Nothing is displayed. Nothing is input. They just sit there, calculating.

              What do you think the kindergartener would say about the two machines?

              Reply
              1. What do you think the kindergartener would say about the two machines?
                Ask them if they think they are a machine. I would think that they would. Ask SCOTUS the same question, and they might say they were nothing more than abstract ideas.

              2. Can I hook up a logic analyzer to show them what is going on inside?
                Or must we keep what is actually happening hidden and pretend that if you can’t see it, taste it, smell it, it or feel it, it isn’t happening.

                THAT is the childish logic upon which the case law you rely upon is based.

              3. Answer the question I asked you, Oh No.

                I’m trying to help you follow the kindergartner “logic” to its kindergartner conclusion.

                Here’s the question again.

                How about an old display machine that displays a new, non-obvious picture of your mommy? A typical kindergartner would tell you that machine is doing “a new thing” so … eligible for patenting, right?

                Answer the question.

              4. Malcolm, your advocating on this modern social media in violation of ethical norms by dissembling and mischaracterizing KNOWN controlling law (you know, the controlling law that you volunteered an admission against interests in knowing and understanding – the exceptions to the judicial doctrine of printed matter) is peculiar.

                Have you lost your copy of the ABA model rules of professional responsibility?

                Are you even an attorney?

          3. (sigh)

            Yet more intellectual dishonesty from Malcolm who has volunteered the admission to knowing and understanding the controlling law of the exceptions to the judicial doctrine of printed matter, and yet STILL advocates in a deceptive manner.

            Reply
        2. All this reading of “what the judges say today” made me almost forget there was a statute.
          That is what SCOTUS wants you to believe.

          Reply
      2. Please let everyone know how your “incredibly easy” understanding of 101 applies to evaluating the eligibility of a new, non-obvious and useful mental process
        Hmmm, the plain language says “Whoever invents or discovers any new and useful process … may obtain a patent therefor.” I see nothing in the statute about the process being limited to mental or not. See wasn’t that easy?

        Statutory construction is easy when ones doesn’t have a preconceived notion of what should or shouldn’t be covered by the statute. Only those that think Congress got it wrong have a problem with statutory construction.

        Reply
        1. Only those that think Congress got it wrong

          LOL – you mean like Ned, who is fervently trying to rewrite history? Or Malcolm, who seems to think that we needed the Justices to “save us” from the actual words written by Congress in 1952?

          Reply
          1. anon, re-writing history was a specialty of the Judge Rich. See, e.g., State Street Bank.

            Reply
        2. Only those that think Congress got it wrong have a problem with statutory construction.

          Do you think that Congress “got it right” when they wrote the 1952 patent act?

          Tell everyone if you believe that there are any new processes that aren’t eligible under the 1952 act. Give examples of the major classes of processes that aren’t eligible under the act, if any. Same with machines. Is every new and useful machine eligible under the 1952 patent act, no matter how it is claimed? If there are any major classes of new machines that aren’t eligible, give us examples of them.

          After you answer these questions, then we can discuss the other statutes and how they relate to 101.

          Better put on your big boy pants first. And your thinking cap.

          Reply
          1. Trnaslation: Wah wah wah – Royal Nine please help us – we don;t care what means you use, we want he ends we want. wah wah wah.

            Lovely AOOTWMD with the ‘big boy’ pants.

            Don’t like what Congress did? Contact your Congressman.

            Until then, find a profession that does not turn your psyche to sludge with the self-h@t red that you reek of.

            Reply
      3. your “incredibly easy” understanding of 101 applies to evaluating

        LOL – are we almost at the point of you asking people to re-write 101 to add protections that you want to be in the law, Malcolm? (thereby admitting implicitly that the law as written is not what you want it to be?)

        Reply
        1. are we almost at the point of you asking people to re-write 101 to add protections that you want to be in the law

          In fact, we’re past the point of me asking you how you would re-write the 1952 patent act to fix it because if we take your word for how the statute should be interpreted, then it’s a complete piece of s h i t. There is pretty much nobody out there except for a tiny handful of self-interested greedy cl 0 w n s like you out there who want to live in that world so it would have to be re-written.

          But you won’t ever answer that question. And we all know why.

          Reply
          1. You ASSume it needs to be re-written.

            (call your Congressman then – respect the rule of law and the separation of powers doctrine – have you heard of those?)

            Reply
    2. The professor here attempts to find some rhyme or reason to explain 35 USC 101 jurisprudence — it is a useless endeavor.

      Not at all. Those of us who have been paying attention have found it very useful when advising others about what sort of claims they are likely to have difficulty enforcing down the road. For clients with limited resources, this kind of advice can be very helpful.

      Of course, if your goal is simply to separate clients from their money without providing anything of value to them then, yes, nearly all analysis of trends in patent law is “useless.” You would be much better off simply reading some old books about How to Succeed in Sales. You won’t be alone, that’s for sure. There’s lots of patent agents like you out there.

      Reply
      1. Those of us who have been paying attention have found it very useful when advising others about what sort of claims they are likely to have difficulty enforcing down the road. For clients with limited resources, this kind of advice can be very helpful.
        hahahaha … that is a good one. You’ve been advising clients to stay away from software patents for how long? 5-10 years? In the mean time, my clients have made millions and millions and millions of dollars off of software patents. The MM fool is also a tool.

        Reply
        1. my clients have made millions and millions and millions of dollars off of software patents.

          Sure they have, Billy.

          Reply
          1. Of course they have Malcolm, they are “grifters” – don’t you endlessly whine about that?

            Reply
    3. Only after SCOTUS decided that they wanted to monkey around with the plain language of the statute. Stick with 35 USC 101 and it is incredibly easy.

      In Alice, Justice Thomas pinned it on the Constitution (finally), so it’s a lot more complicated than just reading 101.

      Reply
      1. Where did Justice Thomas pin it on the constitution? Unless I missed something, I don’t see that in the opinion. The following is in the opinion:

        “[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. Mayo, supra, at ___ (slip op., at 2); see U. S. Const., Art. I, §8, cl. 8 (Congress “shall have Power . . . To promote the Progress of Science and useful Arts”). We have “repeatedlyemphasized this . . . concern that patent law not inhibit further discovery by improperly tying up the future use of ” these building blocks of human ingenuity. Mayo, supra, at ___ (slip op., at 16) (citing Morse, supra, at 113).

        But that section is not clear. Maybe this can be pinned on the constitution (I know multiple commentators here support such a view), but I don’t think Alice held so.

        Reply
        1. Where did Justice Thomas pin it on the constitution? Unless I missed something, I don’t see that in the opinion.
          It isn’t. APOTU appears to have pulled that statement out of his nether region.

          Reply
        2. That’s basically what I was referring to. I know it’s somewhat implicit, but as far as I can tell, it’s the first Supreme Court opinion to suggest that judicial exceptions are motivated by the limitations placed on Congress by the Progress Clause. But I wasn’t claiming it as an actual holding of the case, just that Thomas included it as part of his logical argument in favor of judicial exceptions to 101.

          Reply
      2. If there is a constitutional problem with the words of Congress, the Court does not have the authority to rewrite those words.

        Writing the map just is not the same as reading the map.

        Reply
    4. Why are so many patent practitioners adamant that patents aren’t “monopolies”? I’m not sure that terminology really matters that much here, but haven’t patents historically been treated as monopolies?

      The Statute of Monopolies from 1624 seems to support that view, as does Brown v. Guild, 90 U.S. 181 (1874) and Pennock v. Dialogue, 27 U.S. 1 (1829). A little more recently is U. S. v. Line Material Co., 333 U.S. 287, (1948) and Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989).

      And, of course, Alice also supports the view.

      Reply
    5. Oh No, I agree we should focus on the statute. But I am not sure how you would deal with a claim to a book (manufacture) that has an ad that has some new slogan.

      What is wrong with this claim, if anything?

      Reply
      1. But I am not sure how you would deal with a claim to a book (manufacture) that has an ad that has some new slogan.
        Hint … there are other statutes besides 35 USC 101.

        Reply
      2. Straight up question Ned: where does the Supreme Court obtain authority to write patent law?

        Reply
              1. LOL – asking me to answer the question when I am pointing out that YOU have not answered the question is pretty audacious.

                Pretty silly, seeing as the black and white here clearly shows that you have not answered my question in a direct and honest manner, but audacious as well.

                You first.

                I insist.

          1. “Write?”
            Actually, I think he meant “erase and then rewrite.” I got the point though.

            Reply
            1. preaching to the choir Oh no – it is not you that needs to recognize the point – it is Ned.

              Reply
    6. “Infringers with savvy attorneys have found that it is easier to invalidate a patent — not by 102/103 — but by arguing that it is nonstatutory subject matter under the guise of judicial exceptions to statutory subject matter. Judges, rarely shy about sticking their noses into the fray, have been more happy to obliged these infringers. ”

      LOL, what a baseless crock-o-stuff that is. Tell us, what percentage of litigated patents are invalidated as non-stat subject matter?

      For that matter, here’s a softball, Pumkin – tell us in what percentage of litigated patents is it even asserted by the defense that the patent should be invalidated as non-statutory subject matter?

      LOL all the way to the bank and back on that one, Pumkin.

      Reply
    7. Oh No. “I’ve read enough case law in my time to realize that a lot of (bad) case law gets written to justify an end result that the judge has already predetermined.”

      Dr. No, what is your opinion of State Street Bank, by Rich?

      Reply

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