Alice Corp. and Patent Claiming: A Simple Example

By Howard Skaist[1]

In the wake of Alice Corp (“Alice”), many practitioners, including myself, are thinking about its implications, in particular, with respect to drafting patent claims. Of note, especially, is the Court’s statement, recited more than once in Alice, that “this Court has long “warn[ed] …. against” interpreting section 101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.’”  See 573 U.S. ____ (2014); slip opinion at 16. I would like to test that notion and, potentially, its general boundaries with a simple example.

Let’s consider, as an example, the early days of computers and the creation of VisiCalc.  If today’s law applied then, e.g., Alice, would a patent claim covering VisiCalc have been statutory? I would be inclined to say, even today, that it depends a lot on the particular claim, but we also have the Supreme Court’s position on the matter, mentioned above. So, to what extent does the answer depend on the particular claim?

Here is one possible claim to VisiCalc:

  1.  A method comprising:  implementing a spreadsheet on a computer.

One issue worthy of mention here is that cases getting to the Court are ones in which the claims do not appear on their face to appropriately flush out the subject matter considered innovative, at least if we can rely on the opinions without taking the trouble to look at other claims of the particular patents.   However, most skilled practitioners tend to make sure that a spectrum of claims are included, at least for considerations related to section 103.  As shall be seen, this may also be the best practice for addressing 101 issues.

The claim above, thus, is in line with claims previously adjudicated before the Court.  That is, the claim on its face does not appear to communicate details about the innovation itself. Rather, this claim would likely be held non-statutory under the approach in Alice.  Applying the analysis, spreadsheets constitute a way to organize human activity that is of longstanding use.  Thus, it would seem that, following Bilski and Alice, a spreadsheet may potentially be deemed an abstract idea or a fundamental concept.  Thus, it is, if anything, a building block for human ingenuity and, on policy grounds, section 101 exceptions to statutory subject matter are potentially implicated.

Again, then, following the approach in Alice, the aspect of the claim calling out implementation on a computer likewise does not constitute a sufficiently meaningful addition, whether analyzed element by element or as a whole.  It might be argued that computer implementation is faster than performing spreadsheet calculations on paper, but merely being faster is not sufficient, generally, to pass muster here.

It is important to realize, however, that when technology is implemented, rarely does it just result in being faster and nothing more.  Usually, the implementation provides other advantages.  Here, referring to this simple example as an illustration, VisiCalc made a type of functionality possible that had not existed before.  Therefore, if that aspect were particularly claimed, perhaps such a claim would be deemed statutory under the analysis in Alice.

For example, consider the following two claims, recognizing that this example is not intended to illustrate the best claims possible, but is just a simple example to test the Court’s recent pronouncement.

  1.  A method comprising:

generating and displaying a matrix of cells comprising an electronic spreadsheet on a computer, said electronic spreadsheet to implement on said computer one or more user-specified mathematical operations in which one or more operands for said one or more user-specified mathematical operations are to be entered in particular cells of said matrix and results of performing said one or more user-specified mathematical operations on said one or more operands are to be displayed in other particular cells of said matrix; and

displaying on said computer, in said particular cells and in said particular other cells, after said one or more operands are entered, said one or more operands and said results of performing said one or more user-specified mathematical operations on said one or more operands, respectively.

  1. The method of claim 1, wherein said results of performing said one or more user-specified mathematical operations on said one or more operands comprise one or more operands of one or more other user-specified mathematical operations either with or without displaying said one or more operands of said one or more other user-specified mathematical operations in cells of said matrix.

Several arguments are available that one, if not both, of these claims is statutory.  To turn the issue around, we should, perhaps, ask the following:  If we ignore the conventional hardware elements of the claim, is the implementation, as claimed, more than merely conventional?

This question, of course, as framed, clearly is not the same question presented under section 103. Thus, while the Court may be criticized for making considerations under 101 more similar to considerations under 103 than had previously been the case, the analysis is still different.

To be even more explicit, we may ask:  is an innovation being claimed (even if it may in light of prior art later be determined to be an obvious one)? 

Here, the answer is quite arguably, yes!

Most everyone is familiar with the functioning of VisiCalc and Excel.  Certainly, at the time Apple introduced VisiCalc, it was an innovation over what had been done previously with conventional spreadsheets of the time.

Perhaps I am overly optimistic and not everyone will agree that claim 2 at least is statutory.  However, these claims call out an improvement over existing processes involving spreadsheets. See 573 U.S. ____ (2014); slip opinion at 13 (discussing that the claims in Diehr improved on an existing process).  A user is able to link together in a spreadsheet format, complex calculations and display the results in a manner so that any change in “operands” is able to be rippled across the spreadsheet and displayed immediately.  This is an improvement over use of a paper spreadsheet and provides a new functionality that previously did not exist.  I am not arguing that this is necessarily patentable, since that is judged relative to particular prior art, only that it is at least statutory because it is not merely conventional.

If it were generally agreed that the first example is likely non-statutory under the Court’s recent pronouncement and the second example is likely statutory[2], then what does that tell us in terms of claim drafting? One thing it demonstrates is that including limitations directed to innovative aspects of particular implementations may provide a claim drafting safe harbor, so to speak, for this area. Where this is done correctly, it would seem that claims of value to a client should ultimately stand up as statutory.  As was mentioned, most practitioners tend to make sure that a spectrum of claims are included.  This is good practice, now, to address, not just 102 and 103, but also 101.

If we compare the two example claims above, what is the difference?  Why, from a policy perspective should one be statutory and the other not, since they are both directed to what is meant to be the same core subject matter?  It appears that section 101 imposes a statutory requirement of proper form.  That is, from a formal perspective, it is necessary that innovative aspects of the invention, as implemented or intended to be implemented, be on the face of the claim for the claim to be statutory.[3]

Recall that we started with the notion that “this Court has long “warn[ed] …. against” interpreting section 101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.’”  The ironic twist here seems to be that, if section 101 imposes a statutory requirement of proper form, then the prevailing situation would seem quite the opposite of the Court’s stated view.  That is, that patent eligibility indeed depends on the draftsman’s art and our example appears to confirm as much.

Several points are therefore addressed with this example.

  1. Take care when evaluating inventions for meeting statutory subject matter – rarely are things as simple as they look.
  2. Great care is needed in drafting claims in general but particularly in this area because otherwise there may have been a statutory invention inadvertently left unclaimed.
  3. The policy view that patent-eligibility should not turn on the draftsman’s art is not the full story.

[1] Howard Skaist founded Berkeley Law & Technology Group (BLTG) in 2003 after having been employed as the Director of Patents for Intel Corp.  BLTG has a total of twelve patent lawyers and handles all aspects of intellectual property law practice, including patent law.  Mr. Skaist has also been an adjunct professor at Boalt Hall Law School in Berkeley, CA, at Willamette School of Law in Salem, OR, at Lewis and Clark Law School in Portland, OR, and at Albany Law School.

[2] A separate twist is raised by Sotomayor’s concurrence (also expressly by Judge Mayer recently in I/P Engine v. AOL). Would the second example get over those hurdles?  I would say probably not.  It appears difficult here to argue that the problem solved is technical in nature rather than being directed to organizing human activity.  Thus, three justices would probably say that the second example is also non-statutory.

[3] Of course, one would expect that this would also be true to meet section 103.  However, perhaps a difference is that, for purposes of section 103, dissection is not permitted, at least not yet.  While Alice looks at the claim as a whole as well as the claim elements, it was clear as far back as Flook, that some amount of dissection was permissible.  Alice has made that even clearer, following Mayo, by permitting an element by element analysis.

227 thoughts on “Alice Corp. and Patent Claiming: A Simple Example

  1. That is quite a fanciful history, and it is bizarre to attribute blame to the USPTO. I think your history ignores SCOTUS refusing to take cert on subject matter cases, Congress passing laws, etc. Clearly the history is of judicial activism. The SCOTUS first OK’ing the information processing patents by refusing cert and then after deciding there was a problem (with no empirical evidence) deciding they would legislate and change the law.

    Outrageous to act as if the SCOTUS suddenly discovered some 15 years later a problem. Or that the Congress hasn’t passed major legislation during this time.

  2. The MS doctrine seems like an arbitrary doctrine that draws an “artificial” line.

    It doesn’t seem “arbitrary” to most people I’ve spoken to. Why does it seem “arbitrary” to you?

    Do you believe that people should be able to patent mental processes? Do you believe that people should be able to patent information-processing methods performed with a pencil and paper?

    What seems “arbitrary” is the idea that tossing the phrase “on a computer” onto an otherwise ineligible claim would ever be deemed sufficient to confer eligibility, especially in 2014 when the computer is older than most of the people on the planet.

    1. “Why does it seem “arbitrary” to you?”

      During oral arguments during Planet Bingo, the judges seemed to imply that if the claim required a large number of number sets to be maintained, then this might be outside of the mental steps doctrine and require further contemplation. The lawyer tried (quite helplessly) to argue that a large number of sets was required by reading the spec, but of course that’s a futile argument.

      So if the claim required 100 such sets then it is arguably outside of the mental steps doctrine. But a claim requiring only two sets are nonstatutory. That’s why I say it’s an arbitrary doctrine, because it’s really the same invention. Of course, your response would be that it wouldn’t matter if it was 1,000 sets, it is still nonstatutory. I understand that argument.

      What about a signal processing claim which receives input from an analog signal decoder, converts it to digital, and outputs the proper signal to a router along with a particular packet header so it gets to where it is supposed to go? If I had more time, I could dig up an issued claim which would make this discussion easier, but I don’t have the time. A human could in theory make all these calculations with a pen and paper and generate the packets with a keyboard and click “send.” That is, a human that can work 100,000 times faster than real humans. Thus, this type of claim would be outside of the mental steps doctrine and currently statutory (at least to everyone but an unknown German singer).

      But I know it’s not arbitrary to you because you think all claims implemented by a computer are non-statutory.

      The recent 101 Supreme Court cases were admittedly weak and their results were predictable to all those paying attention. Eventually, the Supreme 9 will take up a software case with good claims and the result might surprise you.

      1. patent leather: if the claim required 100 such sets then it is arguably outside of the mental steps doctrine. But a claim requiring only two sets are nonstatutory. That’s why I say it’s an arbitrary doctrine, because it’s really the same invention.

        Got it.

        Of course, your response would be that it wouldn’t matter if it was 1,000 sets, it is still nonstatutory. I understand that argument.

        Right. There’s no “arbitrariness” if you recognize that there is no new technology being described, just new labels (abstractions) being layered on top of an old information processing method.

        What about a signal processing claim which receives input from an analog signal decoder, converts it to digital, and outputs the proper signal to a router along with a particular packet header so it gets to where it is supposed to go?

        Correct me if I’m wrong, but that’s old and unpatentable.

        Is there something novel about the structure of the analog signal decoder that you are reciting in your claim, or are you just sticking a new math equation into the claim?

        A human could in theory make all these calculations with a pen and paper and generate the packets with a keyboard and click “send.” That is, a human that can work 100,000 times faster than real humans.

        Computers are old. It’s well-known and ancient knowledge that computers are can perform calculations faster, tirelessly and more accurately than a human. That ancient fact can’t possible be the basis for a patent-worthy invention.

        Eventually, the Supreme 9 will take up a software case with good claims and the result might surprise you.

        Disappoint me, maybe. But it wouldn’t surprise me. It also wouldn’t surprise me if this hypothetical opinion was incoherent and riddled with nonsense but is nevertheless paraded around by the computer-implementers like one of those deformed fetus gods in some Indian village. Because they are so principled, you know.

        Here’s my question for you (and everyone else who thinks functionally claimed computer-implemented j nk should be patentable): how do YOU tell the difference between a “good” computer-implemented information processing claim and one that isn’t “good”? Is everything that recites “on a computer” eligible for patenting? Surely you don’t believe that (and if so I’ll set you straight very quickly).

        So what test(s) do you propose? You seem like a thoughtful articulate person. Speak up!

        1. old and unpatentable.” –

          How about patent eligible…?

          about the structure… reciting in your claim

          Again with the structure only canard? Where is my cite for such, oh “but-I-do-give-answers-I-do-I-do-I-do” (said in the best cowardly lion tones)

          Computers are old

          So are electrons, protons and neutrons… oh wait, you want a change that is not present in ‘oldbox?’… Well why didn’tcha say so?

          Speak up – no conjecture even needed.

          1. anon, MM, Random and even the Supreme Court are not dealing with mixed subject matter claims in a coherent fashion.

            The only proper way to deal with these claims is under 102/103, with subject matter that is nonstatutory and not integrated as in Diehr, being given no statutory weight.

            In the end, mixed category claims are unpatentable under 102/103 if at all.

            1. and not integrated as in Diehr

              Diehr-PON alert (hint: think software)

              Note that there is no such thing as software that is not a machine component.

              Think about it.

            2. If you’re going to give “no statutory weight” to a limitation, Ned, then the reason you choose will depend on the statute you work under.

              But the result is the same if your reasoning is sound. 103, of course, as presently interpreted, affords applicants extra bites at the apple. That’s why the tbggers love it so.

              1. Translation: “Wah”

                And while Malcolm seems to actually make a step forward in legal logic (the reason you choose will depend on the statute you work under – a far cry from his typical WHATEVER), he then steps in CRP with the “result is the same” which translates to “the ends justify the means” given that Malcolm would not recognize sound reasoning if it smacked him upside the head.

    2. Dennis, I responded here earlier today and my post for the first time says “your comment is awaiting moderation.” Did I do anything to get on your censored list?

      1. Check your comment for the string of letters g e n (without the spaces). Insert a space between the “e” and the “n” and you should be golden.

          1. The prevailing theory is that someone named ge ne might file some half-cocked lawsuit if the endless opportunities for mocking him aren’t squelched in some manner.

                1. Well, anon, I never read that other guy’s blog.

                  That said, I think it would help if we would all stop bashing each other when we simply disagree.

                2. As to “the other guy” – you should be aware that Malcolm’s obsession and rants to that guy were (and continue to be ) completely one-sided, as Mr. Quinn does not even post here.

                  Don’t you think Malcolm’s obsession with someone that does not even post her to be a bit odd?

  3. Howard: I agree that no one knows with any real precision what will stand up and what will no stand up.

    Speak for yourself, Howard.

  4. If you listen to the oral arguments in Planet Bingo, the judges clearly can’t get past the mental steps doctrine (citing Cybersource) and insist that the Planet Bingo claims could be performed by hand. They also noted that the claims only required 2 sets of bingo numbers which is in the realm of pen/paper human resolution. It was then clear how the case would end up. PB’s attorney didn’t really have a good answer other than to argue that the claims do require a computer. PB’s attorney may have been better off trying to distinguish Cybersource from this case and that “mental steps” was never sanctioned by the Supreme Court (the dicta in Benson is just that, dicta from a long time ago).

    With the same panel of judges as PB, both of the spreadsheet claims may unfortunately have the same problem. What about claim 3:

    3) The method of claim 2, wherein the matrix comprises at least 10 cells which are instantly updated.

    Would claim 3 help? I don’t know, but one would be wise to include such a claim with the proper support.

    Howard writes, “The policy view that patent-eligibility should not turn on the draftsman’s art is not the full story.” Yes, the “nose of wax” is even more malleable than ever.

    I don’t think the “mental steps” doctrine in Planet Bingo was a fair way to resolve that case. Does anyone have any ammunition against this doctrine? I don’t see why it should prevent Howard’s claims above from being valid. The MS doctrine seems like an arbitrary doctrine that draws an “artificial” line.

    1. Patent leather, can you tell me whether bingo is a machine, and manufacture, or composition of matter? And if not why is bingo statutory?

        1. A system of marks and spaces are physical signals marked on a moving scroll define a manufacture, produced by a new machine and a new process.

          Effectively a mechanical process claim.

          1. Try again Ned – claim 5 (and once again, differentiate with claim 6, which does claim instrumentalities).

            This is not all that difficult Ned – the claim is in black and white.

  5. Interesting article and typical Patently-O discussion full of the usual nuggets and witty repartee. . .

    This is just a nit for the professor that I have not seen anyone else note yet.

    “Certainly, at the time Apple introduced VisiCalc, it was an innovation over what had been done previously with conventional spreadsheets of the time.”

    If I understand this sentence correctly, it is both incorrect and misleading.

    While Visicalc was indeed a notable innovation at the time, credit for the introduction of Visicalc does not go to Apple but to Visicorp or its predecessor, Software Arts. Software Arts was the publisher of Visicalc which was developed by Personal Software.

    While Apple clearly benefited at the time from the introduction of Visicalc – it did not ‘introduce” the software and as best I can tell had nothing to do with it (from inception to development to publishing and marketing).

    For some interesting history see: link to anderson.ucla.edu

    Thanks for the article – it was thought provoking and brought back memories – I do recall running Visicalc on an Apple II+ with dual floppy drives and a 16 K language card.

    It was quite cool and rather amazing at the time to literally watch the numbers change before your eyes. I’m probably slow, but certainly it was not obvious to me or others in the lab at the time. . . In fact, at the time no one questioned its “obviousness”. However, I still recall having to convince many folks of its “utility” e.g. “What good is that?” “What would you do with it?”

    Cheers!

    Scott

  6. I do agree with Howard Skaist that a valuable and innovative concept like the electronic spreadsheet *should* be eligible for patent protection. It was a very astute, insightful, and tremendously effective use of personal computer technology, and pioneered an entirely new product category. After its introduction and initial success, the invention was soon imitated by competitors who took over the inventor’s market and paid him no compensation. That’s exactly the scenario that patents are meant to address, I think.

    (To those who believe in the supposed anti-competitive impact of broad software patents, please note: the absence of patents for small companies/inventors in this case enabled Microsoft to do just that — completely monopolize the spreadsheet product category with Excel and wipe out all competition. Microsoft didn’t need or use any patents for that neat trick, just standard market domination tactics: network effects, branding, bundling, etc. Absence of patents allowed them to do so without fear of even owing any compensation. Hello Alice, and welcome back to the 1980’s! But I digress… )

    That said, I don’t agree that Howard’s revised version of the spreadsheet claim overcomes the “mental steps” version of the eligibility requirement that he lays out. Quoting the post:

    “It might be argued that computer implementation is faster than performing spreadsheet calculations on paper, but merely being faster is not sufficient, generally, to pass muster here. It is important to realize, however, that … VisiCalc made a type of functionality possible that had not existed before. Therefore, if that aspect were particularly claimed, perhaps such a claim would be deemed statutory under the analysis in Alice.”

    The post goes on to describe this “new type of functionality” as follows:

    “A user is able to link together in a spreadsheet format, complex calculations and display the results in a manner so that any change in “operands” is able to be rippled across the spreadsheet and displayed immediately. This is an improvement over use of a paper spreadsheet and provides a new functionality that previously did not exist.”

    But this is also precisely what happens if you create a spreadsheet on paper, just more slowly. If you change the value/operand in any field, you then have to propagate it across the spreadsheet and change all affected values, using arithmetic and a pencil with an eraser. Well, a computerized spreadsheet essentially does the same thing: it re-calculates all of the affected values and displays the updated results in those cells. It’s not as if the spreadsheet invention intuits the new values, or uses some brand new form of arithmetic, and magically “ripples” the changes across. The computer has to do the same basic steps of arithmetic recalculation and updating cell content — it just does so much more quickly than pencil and paper. As Howard says, the results appear “immediately” to the human eye, which is very cool and is incredibly useful/valuable, but nevertheless his claimed method is still just a faster, automated version of the same basic pencil & paper process.

    So, assuming that the very broad “electronic spreadsheet” claim were truly ineligible because of mental steps concerns, how and why exactly does the more detailed claim overcome those concerns? I don’t believe I see anything in the longer claim that is fundamentally different (not just faster) than what happens with paper and pencil, except for throwing in the words “computer” and “electronic” several times.

    I agree of course that in practice, for psychological reasons, there is far greater likelihood these days that an examiner or judge might approve the longer claim than the one-line “electronic spreadsheet” version (which has no chance, sadly). I just don’t see any logically sound theory behind that.

    1. May I add that this post also illustrates the problem with describing patentable subject matter as “technology.” In a recent concurring opinion judge Dyk said that patentable subject matter was limited to
      technology.

      But in the post describing VisiCalc, the posterer defined VisiCalc to be an example of technology.

      Whose to say, that he is not right.

      But is VisiCalc a machine, a manufacture, or composition of matter? Those are the real questions we have to ask.

      1. There is no such thing as software that is not a machine component – a manufacture.

        The answer to your question is already there Ned. You do need to unclench your eyes to see it.

  7. the claims are crap because they recite functional language describing the experience of using a spreadsheet from the perspective of the spreadsheet user. they are abstract because they are simply observable functions that can be manipulated by pushing buttons or a mouse.

    that’s NOT what the programmer made. the programmer devised an algorithm that needs to be claimed from the perspective of “the computer”. what did the programmer “tell the computer to do”? that’s what the inventor MADE and what must be claimed. such claims are NOT unreasonably narrow, and if properly worded provide broad coverage.

    perhaps a useful change in the law would have all such claims be deemed means+function claims (limited to supporting structure in the spec, i.e. the algorithm) without the usual step by step analysis crap where “the draftman’s art” can weasel the claims away from being deemed means+function. then such crappy functional claims would be limited to the algorithm disclosed in the spec, else being invalid.

    1. abstract… can be manipulated….

      Um, you seem to be contradicting yourself there.

      Further – you are falling into the trap of thinking that the law allows functional language ONLY in 112(f) – (hint: it does not).

  8. Ned: the court in the bingo case did suggest that if the details of the programmed had been claim, the result may have been different. This could signal the debate that is now taking place at the Federal Circuit about Ultramercial.

    There are no “details of the programmed” [sic] in Ultramercial’s claims.

    Ultramercial’s claims are a poster child for the worst of the worst j nk that is out there. They’re nothing more than the recitation of basic logic for determining when to show somebody some information “on a computer”. The only “limitations” in the claim that distinguish the claim from a myriad of ancient information exchange practices are the “limitations” describing the content of the information being sought or delivered.

    Anytime you see a claim that recites “media products that are covered by intellectual property rights protection” or some other such abstract descriptor of information you can bet your sweet behind that you are looking at some woeful gar bage. Why would anyone put a ridiculous “limitation” like that in their independent claim? There’s only one reason and we all know what it is.

    1. Why of course, MM, I agree with you. But the fact that it is taking some time, and with little hints like these, one must think that the court is really struggling with Ultramercial.

  9. Sheldon Golberg’s j nky patent company nailed for $1.3 million in attorney fees by Judge Gilstrap after loss in breach of contract case.

    Yummy.

    link to arstechnica.com

    Grifters just gotta keep grifting. The patents are typical word salad b.s. directed at shoving “one or more advertising presentations” in your face while your surfing the Internet. I wonder how those “online blackjack” patents are holding up?

    Man, what a great year this has been.

    More to come!

  10. A different – and while radical, completely constitutional example of a different change that bears discussion (from the link provided by Prof. Crouch below):

    Repeated from below, with minor changes and link added.

    While not (here) endorsing the comments regarding the Royal Nine, it is abundantly clear that NWPA has hit the nail squarely on the head that this is nothing more than a p1ss1ng contest between the branches of the government with the CAFC serving as a proxy for the Congress.

    Never will the Royal Nine let the actual words of Congress get in the way of their power and make their implicit writings become dead letters. See Prometheus.

    With Alice we move beyond “implicit” writing into explicit writing with the insertion of the word “technological.”

    Congress has the constitutional authority to create inferior (subject specific) courts. [They also have constitutional authority to LIMIT the appellate jurisdiction of the Supreme Court – see the wiki at link to en.wikipedia.org

    in pertinent part: “However, the appellate jurisdiction of the Court is different. The Court’s appellate jurisdiction is given “with such exceptions, and under such regulations as the Congress shall make.” – the related wiki links are worth exploring as well, including the one on “jurisdiction stripping.”]

    The only cases taken up by the Supreme Court from this court so designated to be the last word on interpreting patent law is when a clear constitutional issue is at stake. [highest court in the land review for any true constitutional issue can be maintained] The Court lacks this comity, and through that lack browbeats the CAFC – not on constitutional issues, but on pure interpretation issues.

    This finger in the wax nose of 101 is NOT the role that the Court is intended to play.

    The addiction of power runs amuck.

    Further, for those issues that do rise to the level of the Constitution, the Constitution itself is clear (the separation of powers doctrine) that the options available to the Court do NOT include the Court picking up its own pen, becoming a scriviner in its own way, and writing (yes, Ned Heller – writing – a word you seemed to all of a sudden lose your ability to understand) its own version of how it wants the law to be. [Such common law tactics may be considered in other areas of law, but not patent law, as the founding fathers gave strict instructions as to which branch – and only one branch – has that authority]

    1. Plus:

      See also: link to heritage.org

      To wit: “The latter vote was very close, however; James Madison moved as a compromise “that the National Legislature be empowered to institute inferior tribunals.” Madison repeated his earlier argument that “unless inferior tribunals were dispersed throughout the Republic with final jurisdiction in many cases” [the words are emphasized in Madison’s own notes], there would be docket overload and oppressive expense. The delegates’ approval of this compromise resulted in three separate but related constitutional provisions: the Inferior Courts Clause in Article I, granting Congress power (and discretion) to constitute “inferior” tribunals; the phrase in Article III, alluding to “such inferior Courts as the Congress may from time to time ordain and establish”; and the Appellate Jurisdiction Clause in Article III, Section 2, Clause 2, which provides that judgments may be excluded by Congress from Supreme Court review.

    2. Never will the Royal Nine let the actual words of Congress get in the way of their power and make their implicit writings become dead letters.

      It’s certainly very interesting that this entire body of cases – Bilski, Alice, Prometheus, Planet Bingo, etc. – and all of these thousands of pages of jurisprudence are presented as an interpretation of two words of 35 USC: “useful,” and “process.”

      There is absolutely nothing in the legislative record that guides their interpretation of these terms. 35 USC, 37 CFR, and the entire legislative history, together, provide absolutely nothing, beyond the bare terms “useful” and “process.” Instead, the courts fall back on their own past cases – some of which (Morse and Hotchkiss and Funk Brothers) even predate the Patent Act of 1952.

      How any of this comports with the federal separation of powers is, well, certainly an interesting question. Moreover, the extraordinary, extreme judicial activism in this context is a fascinating contrast with the Court’s extremely conservative ruling in other areas, like Citizens United and Hobby Lobby, where the Court has adopted the stance of “we must slavishly follow the letter of the law, and we have no authority to deviate from the written word.”

      1. How any of this comports with the federal separation of powers is, well, certainly an interesting question

        I would daresay one that is worthy of some scholarly research…

      2. “Instead, the courts fall back on their own past cases – some of which (Morse and Hotchkiss and Funk Brothers) even predate the Patent Act of 1952″

        Well, that and the legislative history and the constitution. They’re in the mix as well.

      3. Well…. there is 35 USC 100(b):

        §100. Definitions

        When used in this title unless the context otherwise indicates—

        (a) The term “invention” means invention or discovery.

        (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.

        (c) The terms “United States” and “this country” mean the United States of America, its territories and possessions.

        (d) The word “patentee” includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.

        (e) The term “third-party requester” means a person requesting ex parte reexamination under section 302 or inter partes reexamination under section 311 who is not the patent owner.

        link to gpo.gov

            1. What would be an example of a “real” new use of an old machine Ned?

              In 1950, is speaking into a microphone and having the spoken words typed on paper a new use of an old machine? Microphones, computers and typewriters were all old….would THAT be a new use?

              1. Take the pen. Its use is to write. A new use of the pen to stab might be the kind that might
                Be eligible.

                But when it is used to write, varying the content of what is written is not a new use per Hotel Security.
                The novel aspect is not statutory.

              2. … unless that content has a functional relationship…

                You know – like Set C printed matter.

                (and you do realize that by functional relationship, you also necessarily have integration, right?)

            2. By the way Ned, I respectfully submit that if Bingo and Crestor are not comparable, as you implied in another thread, then pens and computers are comparable.

  11. “In the wake of Alice Corp (“Alice”), many practitioners, including myself, are thinking about its implications, in particular, with respect to drafting patent claims.”

    Dude, nobody will consider you effete or snobbish if you use the correct pronoun: it should be “including me” not myself.

    Yechhhh!

  12. These claims call out an improvement over existing processes involving spreadsheets. … This is an improvement over use of a paper spreadsheet and provides a new functionality that previously did not exist. I am not arguing that this is necessarily patentable, since that is judged relative to particular prior art, only that it is at least statutory because it is not merely conventional.

    This is certainly true in a legal process in which courts are required to scrutinize each element of the claim in order to decide the 101 issue.

    However, that is not the legal process that we have at the moment. The Alice Court did not scrutinize the elements of Alice’s claims. They simply stated: “On their face, the claims before us are drawn to the concept of intermediated settlement.” That is the totality of the Court’s analysis of the claims in four separate patents, before pontificating at length about the result of that conclusion.

    The same is true of Tuesday’s holding in Planet Bingo v. VKGS. Did the panel there scrutinize the claims to decide whether it provides something more than “the concept of playing Bingo?” No, the panel has makes two statements about the subject matter of the claims: “The patents claim managing a bingo game while allowing a player to repeatedly play the same sets of numbers in multiple sessions,” and “the claims recite a program that is used for the generic functions of storing, retrieving, and verifying a chosen set of bingo numbers against a winning set of bingo numbers.” Full stop.

    This judicial tack raises an obvious question: What would stop any court from looking at method claim 1 and saying, “This is basically the concept of a spreadsheet,” before deciding the 101 question? Pointing out how this claim improves upon existing spreadsheets is irrelevant, because that’s a question of 102/103, not 101.

    1. …the sword of “Gist/Abstract” means that actual claim elements can be ignored. After all, actual claim elements are merely the tricks of the scriviner meant only to meat the actual words of Congress.

      What is missed by the guest author is that the Court does not care if your claim is statutory (category) – Such was stipulated by both parties in Alice.

      Even Ned Heller has professed troubles with the action of the Court in this regard – and he is one of the most devout followers of the Royal Nine.

    2. “On their face, the claims before us are drawn to the concept of intermediated settlement.” That is the totality of the Court’s analysis of the claims in four separate patents, before pontificating at length about the result of that conclusion.

      What more “analysis” do you expect for claims that are nothing more than methods of intermediated settlement “on a computer”?

      There was zero new technology in those claims. None at all.

      Now they’re dead. Good riddance.

      You want to defend Prometheus’ claims, too, David? Or did you finally figure those out?

    3. What would stop any court from looking at method claim 1 and saying, “This is basically the concept of a spreadsheet,” before deciding the 101 question?

      Why would a court need to be stopped from saying that prior to deciding anything? If the claim is “basically the concept of a spreadsheet” then by all means courts should say so.

      What would you rather have them do? “This claim recites a lot of words that sound fancy and it involves a computer so it must be sooper dooper technical therefore we must pussyfoot around any possible suggestion that some patent lawyer is just making word salad in a desperate attempt to protect something with a patent that we would all immediately recognize as ineligible subject matter if it were just spelled out in plain English without all the extraneous b.s.”

      Would you prefer that?

      1. some patent lawyer is just making word salad

        Worth repeating: Get into a profession in which you can believe in the work product you produce for your “clients.”

    4. Actually, what I think they do is first determine whether any new or improved machine, manufacture, composition or traditional process is recited. If not, the balance of the claim is nonstatutory and therefor abstract.

      1. Nonstatutory and therefore abstract? I thought it was abstract and therefore non-statutory!

        …and when did “traditional” work its way in there?

        I thought the Fiddler did away with tradition.

  13. You guys sure do have fun trying to apply logic and science to interpret the illogical and unscientific patent law decisions coming from SCOTUS. Under our system the law is a narrative, not an algorithm. The Supremes add a plot twist to the narrative, and all of us prep and pros patent attorneys start arguing about how to understand the changes as a logical framework. As far as SCOTUS is concerned, statutory subject matter is like pornography, they can’t really define it, but they (think they) know it when they see it. This results in decisions that are impossible to parse logically.

    Logic be damned, if you structure the narrative of your application to comport with the concept of patentable subject matter limned by the caselaw, and structure your claims to reflect the narrative of your application, you’ve done the best you can do. You then have to try to structure your prosecution arguments and claim amendments to comport with (or in rare cases to rescript) the examiner’s concept of the narrative of the law so as to get your claims to issue. At that point you just have to hope the narrative doesn’t get redirected by a subsequent decision in a way that irrevocably invalidates your claims while your unexpired patents retain commercial value.

    1. Accepting this – like a lamb being led to the slaughter is the wrong course to take.

      Look to history – Congress acted once before to curb an activist Court.

      1. Congress acted once before to curb an activist Court.

        Tell everyone exactly what you have in mind, Billy.

        Or are you going to let someone else figure that out for you because, uh, you’re way too st 00pit and inarticulate to figure it out for yourself.

        Let everyone know, Billy.

        1. Brush away the ad hominem – and (yet again) nothing from Malcolm.

          Maybe you should attempt to read the posts instead of having this reflex of short script nothingness….

  14. hen the Law becomes informed with uncertainty and inapplicability, then the irrational and the arbitrary (i.e. random choices by unguided decision-makers) are substituted for principles of Law.

    Justice, a reflection of the application of principle, becomes victim to arbitrary whim and the situation becomes not one of the Rule of Law but the Rule of the momentary whim of a man (or small group or people)

    So you’re not a big fan of juries then either, right?

          1. hahaha you know nothing, seriously, nothing. Look up what the “guidance” is for determining reasonable doubt in most states, because that standard by design and definition is meant to be nearly completely undefined as to what will meet the threshold. Talk about a “whatever they say it is standard” hahaha. In my state the jury instruction literally says “Nobody can tell you what constitutes reasonable doubt. It is solely for you to decide what evidence meets that standard.” The abstract idea doctine is a fountain of guidance compared to that. Yet juries, who have no legal training and don’t do this for a living, render those decisions in life and death cases every single day.

            The best part was the co cky way you said “(this is only getting worse for you)”. Seriously, pull your head out of your butt, it’ll smell better.

            I think I should keep a separate scoreboard for general law issues so we can decide whether you should even be allowed to have a general license. We’ll just let that lapse and you can re-register with the office as a (bad) agent.

          2. hahaha you know nothing, seriously, nothing. Look up what the “guidance” is for determining reasonable doubt in most states, because that standard by design and definition is meant to be nearly completely undefined as to what will meet the threshold. Talk about a “whatever they say it is standard” hahaha. In my state the jury instruction literally says “Nobody can tell you what constitutes reasonable doubt. It is solely for you to decide what evidence meets that standard.” The abstract idea doctine is a fountain of guidance compared to that. Yet juries, who have no legal training and don’t do this for a living, render those decisions in life and death cases every single day.

            The best part was the co cky way you said “(this is only getting worse for you)”. Seriously, pull your head out of your butt, it’ll smell better.

            I think I should keep a separate scoreboard for ge neral law issues so we can decide whether you should even be allowed to have a ge neral license. We’ll just let that lapse and you can re-register with the office as a (bad) agent.

  15. what does that tell us in terms of claim drafting? One thing it demonstrates is that including limitations directed to innovative aspects of particular implementations may provide a claim drafting safe harbor, so to speak, for this area.

    This is one of the most correct statements I have ever seen on this site. A claim claims the innovative aspects of particular implementations. What is shocking to me is that it is apparently shocking to others. Clearly if you don’t have an innovative aspect it will fail under 103, but if you don’t tie it to a particular implementation you’ve got a Morse issue.

    Why, from a policy perspective should one be statutory and the other not, since they are both directed to what is meant to be the same core subject matter?

    They’re not directed to the same core subject matter. The first example is directed to any spreadsheet on a computer. i.e. It covers a computer with the ability to add text and the ability to draw boxes. The second example is far more limited (though I do question whether it is statutory, spreadsheeting is a poor choice of example because it brings in mathematical principles into the mix too). In a more real world case, the second claim 1 would actually be a dependent of the first claim 1, and the defendant is someone who infringes 1 but not 2. Claim 2 may be allowable, claim 1 certainly is not.

    “this Court has long “warn[ed] …. against” interpreting section 101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.’” The ironic twist here seems to be that, if section 101 imposes a statutory requirement of proper form

    That’s not form, that’s a substantive difference. The “don’t depend on the draftsman’s art” language means that if claim a describes a scope and claim b describes the same scope, a and b should stand or fall together. This should be true whether a says “do spreadsheets on a computer” or whether b discusses a computer doing acts that everyone would understand as spreadsheeting.

    This is particular clear in the case the court keeps sending down the the federal circuit – the advertising on the internet case. The fact that they point out a bunch of steps that commonly occur in advertising doesn’t excuse the fact that what the claim is directed to is advertising on the internet. Making a claim “long” does not increase its eligibility if the scope is the same.

    1. The fact that we have not heard about Ultramercial for sometime could help explain why the court has been labeling its 101 opinions as nonprecedential.

      In addition, the court in the bingo case did suggest that if the details of the programmed had been claim, the result may have been different. This could signal the debate that is now taking place at the Federal Circuit about Ultramercial.

      1. I think you’re correct about the debate but I think the result of that debate in Ultramercial is that it’s still ineligible.

    2. RG: Making a claim “long” does not increase its eligibility if the scope is the same.

      Way too much nuance here for the typical patent t e a b ag g er.

  16. Yes, what is in the claims, and whether it is all sufficiently supported in the spec, matters a lot, even more with the new 101/103 amalgum. That means more application prep and prosecution effort, with more claims of varying scope and more spec support for those claims which call for something more specific than “just do this method on a computer.”
    Unfortunatly, that is not consistent with the efforts of many corporations these days to obtain patents as cheaply as possible on a low bidder or low fixed prices basis. Folks should start constructively addressing things like that, rather than wasting time fantasizing that current Sup. Ct. decisons are going to somehow just go away.

    1. PM Folks should start constructively addressing things like that, rather than wasting time fantasizing that current Sup. Ct. decisons are going to somehow just go away.

      No doubt. It’s called “growing up.” For those of us who have been busting our behinds for years doing a heck of lot more than dreaming up “functionalities” that we’d like to see implemented on some old machine, the endless whining of the computer-implementer types is beyond p a thetic.

      more application prep and prosecution effort, with more claims of varying scope and more spec support for those claims which call for something more specific than “just do this method on a computer.” Unfortunatly, that is not consistent with the efforts of many corporations these days to obtain patents as cheaply as possible on a low bidder or low fixed prices basis.

      Make no mistake: everybody — not just “corporations” — wants their patents drafted and examined for free. Remember when hucksters tried to sell us computer programs that would write our patent applications for us? Gee, I guess it’s about time for a “sofware update.” Hey, I just thought up some nifty functional language I could use for my computer-implemented patent application-drafting assistant “innovation”. Oh wait …

      That means more application prep and prosecution effort, with more claims of varying scope and more spec support for those claims which call for something more specific than “just do this method on a computer.”

      It also means telling some of your clients: “My professional opinion is that you are wasting your money trying to obtain a patent on this. Spend it on something else.”

      That can be the most difficult thing for certain patent attorneys to do.

      1. “growing up” – from the site’s single largest crybaby and poster with the absolute most posts being expunged for, well, let’s politely call it “lack of being grown up.”

        KA-BLOOEY !

      2. It also means telling some of your clients: “My professional opinion is that you are wasting your money trying to obtain a patent on this. Spend it on something else.”

        That can be the most difficult thing for certain patent attorneys to do.

        You seriously have not been paying attention to what the likes of me, AAA JJ, and several others have been saying in regards to this point (and especially in regards to this point and examiners doing their Fn job.

        Wake up and pay attention.

      3. It is not just difficult for certain patent attorneys to tell that to their clients. It is also difficult for some companies which think that getting lots of patents on as many bare ideas as possible will make them look like a higher tech company that deserves a higher PE ratio and stock price, and thus do not want to be told that by their patent attorneys.

        1. cur – the “logical” answer to that is that your clients should not be so greedy and “grifting” – or some such Malcolm nonsense.

          ;-)

        2. companies which think that getting lots of patents on as many bare ideas as possible will make them look like a higher tech company that deserves a higher PE ratio and stock price, and thus do not want to be told that by their patent attorneys

          Gosh what a terrible thing it will be for everyone if the stock price of a paper pony like that goes down the t oilet.

          1. You don’t see a problem with a broad based stock market crash? I knew that you didn’t understand economics, but wow, you should have just kept this tidbit to yourself.

    2. Folks should start constructively addressing things like that, rather than wasting time fantasizing that current Sup. Ct. decisons are going to somehow just go away.

      Good practitioners are already doing that. Post-Alice, my specifications are about 10 pages longer, with a few additional figures – mostly presenting (1) a list and discussion of technical effects that are achievable by the invention, (2) some implementation examples, especially those that are non-trivial, and (3) specification support for additional types of claims, even if we’re not originally presenting them in the claim set.

      However, the Court’s decisions raise serious questions of whether or not any of that will matter – whether any amount of disclosure, no matter how detailed or “technical,” will satisfy the 101 issue for reviewing courts. Certainly, the Court envisions some patents as valid – hence, the Court’s explicit and steadfast refusal to find all software inventions patent-ineligible, much to the consternation of many folks here. But exactly what does constitute a valid patent is difficult to determine, in light of the Court’s 100% invalidation rate on 101 of the patents brought before it.

      Of course, there’s the adage that solid patents don’t get litigated, bad patents get weeded out early, and only the most borderline cases make it up the chain of review. So it’s the goal of most good practitioners to draft applications that are clear and specific enough not to warrant any undue attention.

      But the vast uncertainty that prompted Dennis’s post on Thursday lingers largely because the Court refuses to give any reliable indication or example of a 101-eligible patent. And it will remain so until the Court does something different.

      1. David, I think the real problem is and has always been business method patents and the like that do not improve the computer, or the way the computer interfaces with the user or communicates with other computers. All these should continue to be eligible because they improve the computer art.

        From previous post of yours, I think you deal mainly with OSs and the like. Therefore I think you should have no problem.

        1. Ned, for the most part, I agree with you.

          You’re correct that much of my work involves inventions that fall within conventional computer science, i.e., improvements in the performance of a computer. Based on our former discussion, you and I differ as to how much of that needs to be in the claims – i.e., data compression techniques have inherent technical merit, so the claim does not need to “tie it to a machine,” e.g., “and then store the compressed data on a memory device.” But generally, yes, we agree.

          However, it’s past time for the Court to identify a recent claim in this field that satisfies 101. Because on the one hand, we have the Court’s vague descriptions about patent-eligible computer-implemented inventions; and on the other hand, the only specific example the Court cites is Diehr.

      2. However, the Court’s decisions raise serious questions of whether or not any of that will matter – whether any amount of disclosure, no matter how detailed or “technical,” will satisfy the 101 issue for reviewing courts.

        Um, let’s see: how does the Court feel about scriviners that currently – as Ned would negatively put it as being “nominalist” – meet the actual words of the statute?

        This is not a difficult question (while those that respect the rule of law should find that same answer difficult to accept).

        Further your call for the Court to provide clarity (as echoes another’s similar call) would mean the end of the Court’s finger in the 101 nose of wax: leaving this up to the addict only means that such will never happen (See Prometheus and the comment on the Court’s implicit writings).

        1. And note – Congress does have the constitutional power to limit the oversight of the Supreme Court on patent law decisions.

          Wouldn’t that make a fine academic article…?

  17. Mr. Skaist –

    I think you made a bold assumption here:

    “This is an improvement over use of a paper spreadsheet and provides a new functionality that previously did not exist. I am not arguing that this is necessarily patentable, since that is judged relative to particular prior art, only that it is at least statutory because it is not merely conventional.”

    We now have a Fed. Cir decision based on Alice (see the Bingo story below yours) that makes the mental steps assertion/argument and extends mental steps to include those that need pen and paper to implement. Anything in your VisiCalc claims can be done with mental steps, pencil and paper (as long as the pencil has an eraser).

    By the way, I could not follow your claim 2 and think it might not say what you think i says.

    1. Anything in your VisiCalc claims can be done with mental steps, pencil and paper (as long as the pencil has an eraser).
      It is like saying that a claim to an improved tunnel boring device (i.e., the machines the size of a house that dig, e.g., subway tunnels) is non-statutory because digging is something that occurs in nature.

      How a computer-implemented spreadsheet operates is entirely different than how a spreadsheet may be employed using pen and paper.

      1. I don’t disagree with you.

        I am merely applying the logic of the Court in the Bingo case to the claims proposed above.

  18. It’s unlikely that the illustrative claims survive Alice. I know I wouldn’t take them into litigation.

  19. So if 103 is a higher bar, why don’t we just use that? like, all the ridiculous patents that anti-s/w patent folks are so concerned about would have been caught by 103.

    This whole 101 debate seems so misguided to me. It’s like saying we should just apply 101 to any process written in a particular language, say English. After all, English is much more abstract than a programming language. Anti-s/w patent folks think the “abstractness” of s/w patents come from the fact that the s.m. is in s/w. It’s not; the “abstractness” comes from the fact that the s.m. is a process. s/w is just a class of languages that happen to be way less “abstract” than any human languages.

    1. Completely agree. This whole line of decisions is silly. The second paragraph of page 9 of the slip opinion basically says, “intermediated settlement is a well-known concept, therefore it is abstract.” If I had written that sentence in patents 101 in law school, I would have flunked the class. (Hint: if something is old, it is non-novel or, perhaps, non-obvious; nothing with respect to section 101 is involved). But it’s now the law of the land.

    2. clsmooth if 103 is a higher bar, why don’t we just use that?

      I don’t follow the logic. Do you believe that 103 is a “higher bar”? The proponents of functionally-claimed computer-implemented j nk made this same argument over and over and over again in the run-up to Prometheus (and apparently they haven’t given up).

      Here’s the answer again. I claim:

      1. A method of improving cancer treatment, comprising measuring factor XIII in a patient’s blood sample [an old step], wherein **a level of factor XIII greater than 5.3332 mg/blood cell indicates a need to administer a therapeutic amount of 2-cis-glucage natic acid to the patient.**

      There’s nothing obvious about this method. But it’s ineligible. It would remain ineligible even if the claim text bounded by the two asteri is one thousand pages long and includes, in addition to thinking about the need to adminster the drug also includes a step of thinking about the need to construct a replica of the Taj Mahal out of graham crackers. It remains ineligible even if the method is deemed the single most important and valuable method in the history of human civilization. And that’s the right result.

      Requiring Examiners to not only identify prior art for such claims but also to deal with the inevitable “secondary indicia” that will be thrown at them by Applicants completely misses the point of what’s being protected by the claim which is ineligible information (specifically, this information: “a measured level of factor XIII greater than 5.3332 mg/blood cell indicates a need to administer a therapeutic amount of 2-cis-glucage natic acid to the patient”).

      Once again: you can’t protect information with patents.

      What’s happening with many computer-implemented claims (but this is hardly the only issue that arises) is that the only difference between the prior art and the claim is the label given to the data going in and out. The prior art says take a computer and store Johnny’s “password” and “credit card activity” on it and “ge nerate” a summary table for display upon request from “a user”. The “new” claim says take a computer and store bingo “identity codes” and “bingo activity” and “ge nerate” a summary table for display upon request from “an account manager”. Another “new” claim says take a computer and store “client recognition ciphers” and “prTol usage values” and “ge nerate” a summary table for display upon request from a “virtual friend of said client with administrator level clearance”.

      This is a bottomless swamp of endless j nk. I could “innovate” this cr ap all day, every day. Anybody can, but it’s especially easy for a patent lawyer because it requires precisely zero technical skill and just the barest modicum of legal skill (and yes that explains a lot of the incredibly silly arguments we see presented by the proponents of computer-implemented j nk). Just keep changing the labels and inventing new terms. You really expect Examiners to be able to keep up with that game by applying 103 as you shove endless exploding reams of the same recycled cr ap at them? So you can keep moving the goalpost and inventing new terms and re-defining them ad infinitim? And force the Examiner to deal with secondary factors on top of that? Of course that’s the game the computer-implementers have been playing for years. They love it and we all know why. Sadly, that game is going to come to an end in the near future, as we all knew that it would.

      And, once again, here’s why: all the technology in those example claims is pre-existing and no new technology is recited in the claims. All that’s “new” is the labels I’m giving to the information going in and out of the computer. As a practical matter, that means that I’m protecting the use of computers for “processing” that information. And as a further practical matter, that means I’m protecting the information itself in the ubiquitous and conventional field of computers. Hence the eligibility issue.

      There is no legal distinction to be drawn in 2014 (or in 1964 for that matter) between a general purpose programmable computer and a pencil and paper. They are old and conventional tools to assist human beings with the storage, processing and transmittal of information.

      You want to patent a new pencil and paper “system”? You don’t get to do that by describing the “new” information that you write down. You need to describe a new objective structure that distinguishes those objects from the objects in the prior art. Same with your new computing machines. Join the rest of the grown-ups.

      Is there an intermediate “fallback” position that can be artificially created to appease the computer-implementers? Maybe. But they won’t tell us what it is. And judging from some of the recent exchanges I’ve seen on prominent blogs that tend to heap endless praise on the worst computer-implemented j nk, they are incapable of even understanding what the issues are. All they care about is the size of the their wallets.

    3. clsmooth if 103 is a higher bar, why don’t we just use that?

      I don’t follow the logic. Do you believe that 103 is a “higher bar”? The proponents of functionally-claimed computer-implemented j nk made this same argument over and over and over again in the run-up to Prometheus (and apparently they haven’t given up).

      Here’s the answer again. I claim:

      1. A method of improving cancer treatment, comprising measuring factor XIII in a patient’s blood sample [an old step], wherein **a level of factor XIII greater than 5.3332 mg/blood cell indicates a need to administer a therapeutic amount of 2-cis-glucage natic acid to the patient.**

      There’s nothing obvious about this method. But it’s ineligible. It would remain ineligible even if the claim text bounded by the two asteri is one thousand pages long and includes, in addition to thinking about the need to adminster the drug also includes a step of thinking about the need to construct a replica of the Taj Mahal out of graham crackers. It remains ineligible even if the method is deemed the single most important and valuable method in the history of human civilization. And that’s the right result.

      Requiring Examiners to not only identify prior art for such claims but also to deal with the inevitable “secondary indicia” that will be thrown at them by Applicants completely misses the point of what’s being protected by the claim which is ineligible information (specifically, this information: “a measured level of factor XIII greater than 5.3332 mg/blood cell indicates a need to administer a therapeutic amount of 2-cis-glucage natic acid to the patient”).

      Once again: you can’t protect information with patents.

      What’s happening with many computer-implemented claims (but this is hardly the only issue that arises) is that the only difference between the prior art and the claim is the label given to the data going in and out. The prior art says take a computer and store Johnny’s “password” and “credit card activity” on it and “ge nerate” a summary table for display upon request from “a user”. The “new” claim says take a computer and store bingo “identity codes” and “bingo activity” and “ge nerate” a summary table for display upon request from “an account manager”. Another “new” claim says take a computer and store “client recognition ciphers” and “prTol usage values” and “ge nerate” a summary table for display upon request from a “virtual friend of said client with administrator level clearance”.

      This is a bottomless swamp of endless j nk. I could “innovate” this cr ap all day, every day. Anybody can, but it’s especially easy for a patent lawyer because it requires precisely zero technical skill and just the barest modicum of legal skill (and yes that explains a lot of the incredibly silly arguments we see presented by the proponents of computer-implemented j nk). Just keep changing the labels and inventing new terms. You really expect Examiners to be able to keep up with that game by applying 103 as you shove endless exploding reams of the same recycled cr ap at them? So you can keep moving the goalpost and inventing new terms and re-defining them ad infinitim? And force the Examiner to deal with secondary factors on top of that? Of course that’s the game the computer-implementers have been playing for years. They love it and we all know why. Sadly, that game is going to come to an end in the near future, as we all knew that it would.

      And, once again, here’s why: all the technology in those example claims is pre-existing and no new technology is recited in the claims. All that’s “new” is the labels I’m giving to the information going in and out of the computer. As a practical matter, that means that I’m protecting the use of computers for “processing” that information. And as a further practical matter, that means I’m protecting the information itself in the ubiquitous and conventional field of computers. Hence the eligibility issue.

      There is no legal distinction to be drawn in 2014 (or in 1964 for that matter) between a ge neral purpose programmable computer and a pencil and paper. They are old and conventional tools to assist human beings with the storage, processing and transmittal of information.

      You want to patent a new pencil and paper “system”? You don’t get to do that by describing the “new” information that you write down. You need to describe a new objective structure that distinguishes those objects from the objects in the prior art. Same with your new computing machines. Join the rest of the grown-ups.

      Is there an intermediate “fallback” position that can be artificially created to appease the computer-implementers? Maybe. But they won’t tell us what it is. And judging from some of the recent exchanges I’ve seen on prominent blogs that tend to heap endless praise on the worst computer-implemented j nk, they are incapable of even understanding what the issues are. All they care about is the size of the their wallets.

      1. Wow … you must have no clients to post so much on this blog. Really, you must spends hundreds and hundreds and hundreds of hours on this blog. You need a life.

        1. You need a life.

          Here’s an idea, Yawny McPatentslurp:

          I’ll worry about j nky computer-implemented patents and their e ffed up effect on the patent system. And you can worry about me.

          Sounds good?

          LOL.

          1. Here’s an idea … get some clients and get a life. You spend hours on this blog EVERY DAY. Does your significant other miss you? Don’t you have children you need to spend time with? Don’t you have clients for whom you need to diligently do their work? Don’t your parents want you out of the basement yet?

            You clearly have no interests outside this blog. No GOOD patent attorney has as much time on their hand as you do. There are so few of us that the good ones always have work to do.

      2. so your argument is, 103 is too hard, so let’s not do it that way. so it’s more of a pragmatic argument. but maybe that means we need to fix 103.

        sir, software is just a class of language. do you understand that? what you’re saying is analogous to, “Let’s not allow process patents as a subject matter that are written in English/Spanish/Chinese or whatever, because it’s too hard.” That’s your position. Subject matter is about the idea, not the expression of that idea. Languages are about expressions. You can express same ideas in multiple languages.

        And your claim up there being “ineligible”? Sounds to me like a 112 issue.

  20. Howard: However, most skilled practitioners tend to make sure that a spectrum of claims are included, at least for considerations related to section 103.

    And 112.

    As shall be seen, this may also be the best practice for addressing 101 issues.

    Of course that’s true. Why would anyone on earth ever have thought otherwise? The rub is always going to be that somewhere in your specification or originally filed claims you’ve got to have an eligible invention. If all you’ve got, e.g., is a mental process for identifying cancer in kids, it doesn’t matter how narrow you write your claim. You can write a 200 page long claim to that mental process. You’re still screwed. And, yes, that’s the right result.

    Here, referring to this simple example as an illustration, VisiCalc made a type of functionality possible that had not existed before. Here, referring to this simple example as an illustration, VisiCalc made a type of functionality possible that had not existed before. Therefore, if that aspect were particularly claimed, perhaps such a claim would be deemed statutory under the analysis in Alice.

    One major problem with this approach is that “new functionalities” are not patentable subject matter. This approach is little more than a rehash of the untenable, flea-weight approach to “inventing” that the computer-implementers found themselves addicted to.

    The claim you wrote, Howard, is just a classic example of the j nk that the computer-implementers have been throwing at the PTO for years. You’re adding more verbiage but nothing else. Look at the ridiculous first step in your method claim: “ge nerating”. Seriously?

    “My computer ge nerates blah blah blah blah blah blah blah so give me a patent.” No, friend, that’s not going to fly (although you might get it past the PTO — hooray for you!). And it’s not going to fly for the same exact reason that the non-computer implementers aren’t granted claims to, e.g., “A method, wherein said method comprises turning on a machine, wherein said machine ge nerates nearly perfect lavender-colored spheres embossed with the names of dead presidents in gold courier font at a rate between 1000 and 10,000 spheres/minute.” Could someone make that machine? Sure. The question is: did you make it and, if so, exactly how does the structure of that machine differ from the closest prior art machines?

    See how that works? Note that there’s nothing the least bit radical or odd about this analysis. The difficulty computer-implementer types have is that they have come to believe (or they enjoy pretending to believe) that what they have been routinely getting away with for years is not radical or odd. But it certainly is and one need only look at how your house of cards was built over the years (on quicksand) to appreciate that.

    Certainly, at the time Apple introduced VisiCalc, it was an innovation over what had been done previously with conventional spreadsheets of the time.

    That’s nice. Not all innovations are eligible for patenting. And even the innovations that are eligible for patenting need to be described in such a way that the claims do not protect ineligible subject matter, e.g., abstractions, in any sub-field of any technology. This problem is always, perpetually going to be far more sharply and keenly felt in the field of information-processing compared to any other field.

    patent eligibility indeed depends on the draftsman’s art and our example appears to confirm as much.

    You are making a grave error here unless you are just stating the trivial proposition that it’s better to have a skilled professional draft your claims than someone who has no understanding whatsoever of subject matter eligibility.

    for purposes of section 103, dissection is not permitted, at least not yet.

    That is also incorrect and completely backward. Last time I checked the so-called “printed matter doctrine” was still recognized as part of 102/103 jurisprudence by the Federal Circuit. Certainly the time is ripe for the Federal Circuit to revisit and revise its approach to so-called “printed matter” in light of the more recent Supreme Court cases because the real issue in the Federal Circuit’s “printed matter” cases has always been subject matter eligibility, not anticipation or obviousness.

    1. A point of order:

      You can write a 200 page long claim to that mental process.

      Now take a claim that is NOT to a mental process – but that uses language with functional attributes (that is fully allowed under the existing law). This same poster has made it clear that a 200 page long claim , detailing out in (thusly incomprehensible) full structural description of say pits at location x.xxx1, hill at location x.xxx2 – ad nauseum – would be a legitimate claim as opposed to a claim more understandable (and using the language recognized by persons having ordinary skill in the art to which the invention pertains).

      This person is a blatant 1iar.

      And yes, that person is Malcolm.

      Seriously.

      1. a 200 page long claim , detailing out in (thusly incomprehensible) full structural description of say pits at location x.xxx1, hill at location x.xxx2 – ad nauseum – would be a legitimate claim

        Do you disagree that such a claim would be legitimate?

        the language recognized by persons having ordinary skill in the art

        In the art of “what”? Bingo playing? Real estate availability? Banking? Eating dots in a maze?

        We all understand that the computer-implementers became immediately addicted to functionally claiming their “innovations.” And we all understand why.

        Most of us also understand — and have understood for years — that allowing such claims was a very, very st 00pit and short-sighted decision. And — please correct me if I’m wrong — this understanding is shared by most people “skilled in the art”. Your understanding is shared primarily by a tiny cadre of aggressively entitled and well-heeled patent attorneys who are always looking for s ucker client to con.

      2. This same poster has made it clear that a 200 page long claim , detailing out in (thusly incomprehensible) full structural description of say pits at location x.xxx1, hill at location x.xxx2 – ad nauseum – would be a legitimate claim as opposed to a claim more understandable (and using the language recognized by persons having ordinary skill in the art to which the invention pertains).

        While I don’t endorse MM’s entire line of thinking, you must see that listing out the structure as you do that there’s only one thing there, and the applicant clearly possesses that thing. When you use the functional language (that sure, is completely understandable to the art) that encompasses a wide range of things that there is no proof the applicant ever possessed or will even remain constant during the lifetime of the patent.

        1. You too quite miss the point that a 200 page detailed structural description is not examinable.

          Where do these people come from?

          You too quite miss the point that there is no law requiring a structure-only claiming style – that 112 fully permits the use of functional language (and yes – outside of 112(f)).

          You really ought to know this stuff.

    2. MM – Your discussion of simply claiming the functional results makes sense to me. That would seem to suggest that you should be able to get a patent if the claim recites the precise elements of how the program operates on the computer, right?

      1. Prof Crouch – that would be merely deemed the work of a scriviner, and some new Court language would be invented to prevent such a patent.

        1. Such a claim would be a picture claim and better (longer) protection for the pictured item could be had via copyright.

          Ding ding ding!!!!!

          But then some patent lawyers would see their income shrink a tiny bit. And that would be the worse thing ever.

          1. ding dong is more like it, as yet another set of keys needs to be taken from Les, who apparently also does not understand the differences that copyright law and patent law have.

            1. Your arrogance is showing again.

              What did I say that implies I don’t know the difference between patent protection and copyright?

              If you claim a picture claim with the detail that Dennis suggested you would essentially be claiming one embodiment, the one implemented with one version of software. You might as well just use copyright. My point was, Dennis’ suggestion is not practical.

              1. You confuse patent protection for what copyright protection provides.

                And you still do in your second reply.

                You also continue to mistake arrogance for my simply identifying that you don’t know this area of law.

                At all.

                Instead of getting mad at me, you would be far better off spending your energy studying the law.

              2. I’m not confused at all. A 200 page claim would be a claim that covers one version of the software.

                Change one line, and the result would not infringe.

                With copyright, you would still have a cause of action re the 199 plus pages of code.

                capice?

              3. Change one line, and the result would not infringe.

                (sigh)

                Ever hear of doctrine of equivalents?

                Sorry, but no, changing one line may not – in fact – do as you indicate.

                Further, copyright protects a different aspect of software than what patents protect. You are aware (I hope) that currently you can obtain both protections, and that each protects something different… right?

                Try to get these basics down.

              4. Fine. Spend millions litigating over whether the changed line is equivalent or not.

                The point is. A 200 page claim has very little value and you would be better off using copyright.

              5. No Les – you quite miss the point that the 200 page claim would be exactly equivalent to the current claim – but that forcing a “structure-only” approach is complete nonsense.

                Remember: even the two hundred page claim STILL must be read as a whole.

                And you STILL don’t get the FACT that copyright and patent protection cover different things.

                You still need to hand over your keys.

              6. No Les – you quite miss the point that the 200 page claim would be exactly equivalent to the current claim – but that forcing a “structure-only” approach is complete nonsense.

                Ever hear of doctrine of equivalents?

                These two statements contradict each other though, don’t they? Because if you use the structural claim, the doctrine of equivalents places the burden on the patentee to show that the defendant has performed substantially the same function in the same way to yield the same result. In the functional claiming example, the patentee need only show that the code achieves the same result. Its an attempt to take from the court the determination, and the patentee’s burden, of showing a similar way of function.

                If the function is “determine who will likely win the super bowl” and one program performs it by a detailed analysis of each player’s strengths, propensity to get hurt, the coaching strategy, the historical strength of schedule, etc and another program determines it by rolling a 32-sided die, should the former be found to be infringing of the latter? Why would you want to discourage innovation or disclosure by the former (or deny its sale to the public) by giving the latter a scope that covers it? They’re not the same program at all.

                If you’re going to run your system, nobody is going to take the time to actually make a good product when they know they’ll get the same scope for putting out D-grade work. Under your system, the public gets nothing but the absolute worst, “quick, get something out there” disclosures and is denied the best commercial products because the worst product has a legal means of preventing better (though completely differently working) products from coming to market. Do you have any respect at all for the inventor who makes the better program?

              7. These two statements contradict each other though, don’t they?

                No they don’t.

                You don’t get the DOE at all, do you?

                As for your D-grade work comments – try again, you are speaking gibberish.

              8. Random Guy –

                Even if your D grade dungeon master Guy gets a patent with claims that read on the A grade work, all is not lost. The A grader can patent his A grade way. The Public will soon understand the the dungeon master is selling crap and the D grader will go bankrupt. At that point the A grader purchases the D grade patent or works out a cross license deal with the D grader (he did have the big picture idea first after all). Life goes on. You can place your bets with certainty and destroy Las Vegas and put thousands out of work.

              9. Even if your D grade dungeon master Guy gets a patent with claims that read on the A grade work, all is not lost. The A grader can patent his A grade way. The Public will soon understand the the dungeon master is selling crap and the D grader will go bankrupt.

                The A grader can patent his own way, but he can’t sell his A invention at all without the consent of D. Further, D isn’t going to give consent to A either. The end result is that the public is only aware of one invention – D’s. And it will be that way for the life of the patent unless you can convince D that it is in his financial interest to license to A.

                At that point the A grader purchases the D grade patent or works out a cross license deal with the D grader (he did have the big picture idea first after all). Life goes on.

                Evidence suggests that D would never license. Either D goes to market or D doesn’t practice at all, A goes to market, and then D files a lawsuit, which will be construed as a troll lawsuit. The issue, of course, would never come up if D was only given protection of D’s D-grade invention, and A was free from the scope of D’s patent. That’s how it should be in many cases.

                1. What evidence of is that?

                  Evidence is quite the contrary. Aren’t the dreaded alleged “trolls” offering licenses to people?

      2. Dennis: you should be able to get a patent if the claim recites the precise elements of how the program operates on the computer, right?

        It’s difficult to answer this question because it’s not clear what is meant by “the precise elements of how the program operates on the computer.”

        For instance, the term “the computer” is broad. Does it mean “any computer”? If so, we are already have a potential issue in that the claim is presumably not directed to any specific piece of software (which experience — and the “experts” — tells us will need to be customized to execute and function successfully on any given operating system, which are themselves continually evolving) but rather to a series of logical steps.

        So right here we’ve highlighted another example of the extreme lengths the patent system has gone to coddle the computer-implementers: enablement is barely given any thought because “skilled programmer” can get it done once he knows the functionality that’s desired. Meanwhile, we hear endlessly that judges don’t appreciate how much work goes into writing software that actually functions as it’s supposed to, all the endless de-bugging, upgrades, etc, etc ad nauseum. Complete inconsistency! Whatever argument is most convenient at the moment, that’s the argument that will be made by the computer-implemeners and never mind what they’re saying out of the other sides of their mouths. This has been going on for yeeeeears.

        The other part of your question that it is unclear is the term “precise elements” as it applies to “the program.” What are these “elements”?

        This is why I continually request from the computer-implementers a suggestion as to what they would consider a rational and reasonable “fallback position” that might be sustainable for some period of time. That is, what terms would be acceptable for separating technological improvements in the “computer arts” versus the abstractions we see being patented today. And how are the terms corresponding to these “precise elements”, if they are not structural and only result in conversion of one abstraction into another, going to be evaluated against the “precise elements” in the prior art?

        I’m not certain that one exists but I’m always surprised by the profound lack of effort to come up with anything resembling a middle-ground. It’s almost as if they believe that its better for the courts to simply roll over them for a few years and then they’re going to rise like the Phoenix — more abstract than ever!! — with the help of some arm-twisting NRA-like group backing them up in Congress. That seems incredibly naive to me and many other people but how else to explain the endless regurgitation of the same demolished talking points year after year?

        1. “How else to explain the endless regurgitation of the same demolished talking points year after year…”

          Indeed, it does get annoying at times when the proponents of software patents simply stick to their talking points and never really engage in rational debate.

          1. That’s one huge AOOTWMD from you (especially you) Ned.

            How long is the list of counterpoints that I have presented to you that still await rational, cognitive – and intellectually honest – responses from you?

      3. you should be able to get a patent if the claim recites the precise elements of how the program operates on the computer.
        Your clearly have never done any serious programming. Give 100 programmers a task (i.e., perform X function which involves using R, S, and Q inputs to obtain W result), and you’ll likely get 100 different ways of doing it (unless they copy from one another).

        You also forget (yet again) that claims aren’t required to ENABLE the invention — just distinguish it over the prior art.

        Requiring the “precise elements” (computer implemented invention or otherwise) is the giant loophole that would make any patent claim useless. If you intention is to completely gut the scope of patents, keep supporting that position.

        1. Your clearly have never done any serious programming. Give 100 programmers a task (i.e., perform X function which involves using R, S, and Q inputs to obtain W result), and you’ll likely get 100 different ways of doing it (unless they copy from one another).

          I’m willing to bet it’s even more than 100. Why should the worst way of doing something be granted a scope that covers the other 99 ways? If I write a terrible program that barely achieves its function and does so incredibly poorly, why should that prevent you from writing an excellent, detailed algorithm that does a much better job? Why should I be able to prevent you from coming to market? And if I can, what’s the point of anyone writing better code, since they can’t make money off it.

          It sounds like you’re encouraging people to disclose the quickest, worst way of doing something, and rewarding them with a scope that ensures that they won’t ever have any commercial challenges for 20 years. They won’t innovate and neither will anyone else. Sounds like the exact opposite of the point of patent law.

          On the other hand, you give the guy his scope of his 1 way, and that encourages him to actually take the time to find the best way, or to file multiple disclosures for multiple ways, and it leaves room for other people who figure out better ways of achieving the function to also get patents and to avoid liability for their completely different way.

          You also forget (yet again) that claims aren’t required to ENABLE the invention — just distinguish it over the prior art.

          The full scope of a claim must be enabled and described though. If I remove a limitation and that drastically broadens my scope, I run the risk of the claim being invalidated. Lizardtech is a great example of this.

          Requiring the “precise elements” (computer implemented invention or otherwise) is the giant loophole that would make any patent claim useless. If you intention is to completely gut the scope of patents, keep supporting that position.

          That’s one way to look at it. The other way to look at it is that it would encourage a lot more disclosures, as everyone would continually jockey to keep at the forefront, rather than the first guy getting to shut everyone else out of the whole sector. It would also allow competition for devices in the marketplace. A patent is a right to exclude others from a particular invention, it’s not designed to be a monopoly grant. You give someone an overbroad scope and nobody else will bother to research in the area, because they’ll never be able to practice their result for 20 years. You give someone the right size scope and there will be constant research.

          1. Why should the worst way of doing something be granted a scope that covers the other 99 ways?
            The SAME logic applies to just about anything claimed. Take a claim directed to a simple mechanical device, give the specification to 100 engineers with the instruction of give us your version of doing this, and you’ll get 100 versions. Unless your preamble includes the term “consisting of” instead of “comprising,” claims are ALWAYS going to cover more than what is disclosed in the specification.

            why should that prevent you from writing an excellent, detailed algorithm that does a much better job
            It doesn’t and that person can get a patent on the better algorithm as well — its called an improvement patent (pretty common in all fields).

            And if I can, what’s the point of anyone writing better code, since they can’t make money off it.
            See above, people get improvement patents all the time — they have particular value in cross-licensing agreements.

            The other way to look at it is that it would encourage a lot more disclosures, as everyone would continually jockey to keep at the forefront
            No. It would require 2000 page specifications that would cost $100,000+ to prepare. This would remove patents as an option entirely from startup companies (long regarded as being innovators). Moreover, the cost would be prohibitive to most large companies as well.

            Your problem is that you don’t think your proposals through. Your analysis is so superficial as to be laughable. You do not appreciate the cost of your proposals or how your proposals will actually impact behavior.

            You give someone an overbroad scope and nobody else will bother to research in the area
            On the contrary, broad patents force competitors to either license or look much farther afield in their research (e.g., take the road less traveled). Ineffective patents merely encourage copying. Innovating is costly and very speculative, so why innovate when you can copy?

            1. Yawn,

              Your logic is impeccable – but your are throwing these pearls before an examiner known for kvetching that it is unfair in prosecution that lawyers know the law…

            2. Take a claim directed to a simple mechanical device, give the specification to 100 engineers with the instruction of give us your version of doing this, and you’ll get 100 versions. Unless your preamble includes the term “consisting of” instead of “comprising,” claims are ALWAYS going to cover more than what is disclosed in the specification.

              The fact that you can forge overbroad structural claims does not excuse the fact that functional claiming is almost always overbroad. You might be able to make 100 versions, but each of those versions will necessarily have at least some structures and workings in common. Not so with functional claiming. And if the 100 structural versions are too different, guess what, those are overbroad too. But please, don’t pretend like functional claiming doesn’t give you a broader scope than structural claiming. That’s why you’re writing the functional claim to begin with – you know it’s a broader scope.

              Even if we were to accept the strawman that you would have to fill out 2000 page specifications, the most that can be in that 2000 pages is every possible way known to the inventor. The functional claim is a claim to every possible way of achievement. By definition is cannot be less broad than the structural claim and in every case since the dawn of man is broader. We cannot say that we know everything there is to know about any single subject yet, let alone all the different subjects where we’re using functional claims.

              It doesn’t and that person can get a patent on the better algorithm as well — its called an improvement patent (pretty common in all fields).

              It’s meaningless though, since the functional scope of the previous patent prevents him from practicing. Person A invents bow, claims it as “machine that performs function of firing projectiles.” Person B invents gun. Person B can have a patent, and that’s great, but he can’t exploit his gun (despite it being nothing like the bow in form or mode of operation) for the duration of A’s patent. In the computer context, this practically means he can never exploit it, because A’s patent is going to run long enough that B’s invention will be moved past before he can practice.

              Of course, if A claimed properly, he would be forced to use DoE to compare the bow to the gun, and he would fail. No infringement. Which is the right response, because nobody in their right mind would argue that the goals of patent law are served when the person who invents the bow can prevent the person who gets the gun from exploiting his invention.

              Improvement patents are an answer when the second invention is truly an improvement of the first, not when the second invention is totally different but that it ultimately achieves an outcome that falls into the same class as the first.

              No. It would require 2000 page specifications that would cost $100,000+ to prepare. This would remove patents as an option entirely from startup companies (long regarded as being innovators). Moreover, the cost would be prohibitive to most large companies as well.

              That’s not true, it would just require a different means of describing which wouldn’t be hard to do. Further, I’ll just quote a case where the court struck down a functional claim over this exact argument –
              The Circuit Court of Appeals below suggested that “in view of the difficulty, if not impossibility, of describing adequately a number of microscopic and heteroge neous shapes of crystals, it may be that Pacz made the best disclosure possible, . . .” But Congress requires, for the protection of the public, that the inventor set out a definite limitation of his patent; that condition must be satisfied before the monopoly is granted. The difficulty of making adequate description may have some bearing on the sufficiency of the description attempted, but it cannot justify a claim describing nothing new except perhaps in functional terms. It may be doubted whether one who discovers or invents a product he knows to be new will ever find it impossible to describe some aspect of its novelty.

              Your problem is that you don’t think your proposals through. Your analysis is so superficial as to be laughable. You do not appreciate the cost of your proposals or how your proposals will actually impact behavior.

              The correct way to do it, as it has always been before the federal circuit got all screwed up over computers, is to describe your embodiment, describe the principle that allows for swapping of elements (perhaps with a short list of examples, not 2000 page documents), and then argue DoE at trial against an infringer who applies the same principle you’ve shown you considered to swap an element. Because you’re too scared to actually do what the law requires of you, you try and shortcut into functional language, which just results in your claim being invalid. The law is the law, and you’re not going to be able to reach an “infringer” who achieves the same end through completely different means, because patent law has never protected ends, it has always only protected means, and only means you’ve shown you have.

              The Supreme court has spoken 9-0 on the issue several times now and the federal circuit is beginning to catch on, so let me ask you, as a practical matter, which of us does not appreciate the cost of their argued position? Because you and I can argue back and forth (and you can completely disrespect my position), but for you to continue writing these claims and ultimately prevail with them the supreme court would have to completely reverse itself several times over. I don’t foresee that happening. Do you? Are you okay banking your clients’ rights on it? Is this comment really fair to me?

              On the contrary, broad patents force competitors to either license or look much farther afield in their research (e.g., take the road less traveled). Ineffective patents merely encourage copying. Innovating is costly and very speculative, so why innovate when you can copy?

              Morse claimed any machine that prints at a distance. That reads on the tv broadcast, the fax machine, the cell phone text and the internet-capable computer. Had that claim not been struck down, there would be zero incentive to research those devices for the duration of the patent. Further, if Morse himself had invented those things he would have zero incentive to disclose them, because he already has a scope that covers it. I don’t know how much “farther afield” one can get, but regardless of that I don’t think anyone would reasonably call Morse the inventor of the tv, fax, text and internet. I think the people who actually made those machines are inventors in their own right and should be allowed to practice their completely different inventions free from any encumbrance the scope of the Morse disclosure would pin on them.

              Certainly “ineffective” patents invite copying, but the solution is not to give overbroad patents. That argument completely ignores the fact that truly obvious changes are covered under DoE. Besides, if the copy is so easy to postulate there would be no problem either including it in the original disclosure or (especially in the fast-moving context of computers) at least disclosing it before the publication date.

              The thing is this: I’m all for giving properly sized protection, but I have a real issue with an applicant disclosing one way of doing something, summarily declaring in his own self-interest that every other way of doing it is not patentably distinct from his disclosure (A claim he can’t reasonably make – by definition he cannot know whether he is the last word on the subject, and it’s arrogant to think so) and then putting the onus on anyone who wants to achieve the same goal (which they have a right to do – patent law is not a monopoly granting business) to justify that they shouldn’t have to pay for their machine which possibly functions completely differently from the disclosed one. Same type of structure/working with minor changes – I’m with you. Completely different type of structure/working – doctrinally and statutorily you don’t have a leg to stand on. You don’t have to picture claim, but there’s a world of difference between “not picture claiming” and “sweeping up anything that achieves a similar end, regardless of how it’s constituted.”

              1. The fact that you can forge overbroad structural claims does not excuse the fact that functional claiming is almost always overbroad
                I claim: A device comprising: a light that is connected to a support with a pivot.
                There is your structural language. Got a problem with it?

                It’s meaningless though, since the functional scope of the previous patent prevents him from practicing.
                So what — same thing happens with structural claims.

                [blah, blah, blah]
                Frankly, I didn’t read the rest of what your wrote. Get a law degree, understand the difference between holdings and dicta, practice 10 years and then let’s talk.

      4. That would seem to suggest that you should be able to get a patent if the claim recites the precise elements of how the program operates on the computer, right?

        Yes. Disclosure and claiming of the particular algorithm of your machine is the only means by which you can obtain a valid software program. Your program executes a series of steps to achieve an objective. The only thing you are entitled to protection on is your series of steps, not anything that will achieve the objective.

  21. I think the issue of patenting spreadsheets came up a long time ago, and they were held to be unpatentable.

    How is doing the same thing, but this time on a computer, any different?

    Anywho, it would be nice to have someone give us a cite to that case.

  22. Howard, Thank you for this guest post.

    When thinking of the power of claim drafting, one case that quickly comes to mind is the 1860’s decision in Morse. You will remember that the Supreme Court rejected the broad functional claim of communication of characters using electro-motive force but did allow the more narrowed claims that were tied Morse’s particular implementation of the telegraph. Both were directed to the same invention, but the supreme court found the functional claim “too broad”(not on prior art ground). Of course, I think that one point of your claim drafting is to figure out how to claim broadly while still fitting within the law.

    Despite my agreement that claims matter — it would be an easy exercise for a court to apply Alice & Bingo Planet and find your more detailed claims invalid under 101 as unduly encompassing abstract ideas.

    1. Claim 5, Prof. Crouch – check it out (not tied to the implementation of the physical telegraph).

      Would that claim survive today?

      1. Morse Patent:

        “Fifth. I claim as my invention the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.”

          1. I recognize that the formalities have changed, but claim 5 doesn’t appear to be directed to a method, apparatus, or composition of matter, so no, it’s not patentable subject matter. I think you’d have to rewrite it to have a more nuanced discussion, but my first thought is that it covers nothing more than the assignment of certain meanings to particular symbols (albeit for a particular field of use), and is therefore “abstract” and unlikely to be unpatentable subject matter even if you convert it to a method.

            What do you think – would it survive under Alice? Should it?

            1. I think it survives Alice as the novel aspects, the physical dots and spaces, are integral to the method of signaling. Method of signalling using machines were confirmed as eligible in the Telephone cases.

              Later in Morse, the infringer defended that he used a different code. The Supreme Court found that defense inapplicable, because the invention was not in the content of the signals, but in the physical process embodied in dots, dashes and spaces separating them.

              Had the system of dots, dashes and spaces been known and all that Morse tried to patent was his dictionary, the result would have been different as the point of novelty would have been the non statutory/abstract dictionary.

              1. Dennis, had I claimed physically encoding a circuit with two, readable, voltage states as a way to encode binary information, I would be hard put to call such a claim “software.”

            1. …and yet, Morse is seemingly used as the “bedrock” of the Judicial law writing – how is it then, that the judiciary ignores its own bedrock…?

              (and this has nothing at all to do with “recognizing changed formalities” – unless the “changed formality” is that the Court is making things up out of whole cloth)

                1. In the history of the US, congress has been relatively hands-off with regards to patent law policy. Although I don’t have a tally, I would guess that most of the important patent policies over the past 200 years have been derived from courts acting in their quasi-common-law policy making role. Many of these were later implemented in statute.

              1. But contrast this (sharply) with what happened in 1952 and the actions of Congress to remove the common law ability of the Court to set the meaning of the word “invention.”

                A ge neral note about how typically Congress has been “hands off” absolutely fails on this immediate topic.

                History repeats.

              2. Fish,

                The point to be made from the discussion with the good professor was that – for a time – Congress had sanctioned the courts to develop the notion of “invention” through the use of the tool of common law evolution.

                This expressly stopped in 1952.

                For a look at how Congress permits a current (ongoing) development by the courts, see the express language in 35 USC 283.

                The Professor’s point about historical “hands-off” cannot apply in an instance in which Congress acted directly to correct an over-zealous (read that as activist) Court.

                This is a crucial point to be understood in the 101 war.

                I “get” that many feel that some of the best patent law happened to have been developed through – as the professor puts it – “from courts acting in their quasi-common-law policy making role” – I do understand that and I do understand the “desire” for quick changes that can come from judicial tinkering. But I also understand the historical context of this particular section of law. Something – apparently many are far too eager to clench tight their eyes to.

                This “desire for ease of change” however does not – and cannot – negate the fact that actual law writing authority – putting policy into the law – has been expressly designated in our constitution to a single branch of the government (not the judiciary) in an overall sense – and for 101, in particular, Congress has taken direct and express steps to remove that common law approach from the courts.

                As I have noted, Congress does have the power (if properly done) to share its law-writing power. But when a different branch acts (be it the executive or the judiciary) in direct contradiction to what Congress has done, those that understand and respect the rule of law are – and should be – deeply offended and alarmed.

        1. Nothing in Section 101 suggests that one can patent a code or any other set of rules for converting one type of information into another.

          1. A method of determining an answer to a question about the future, comprising (1) asking said question; (2) identifying an image of an iridescent insect, wherein if the insect has wings the answer to said question is “yes” and wherein if the insect lacks wings the answer is “no.”

          That ain’t eligible. Good luck finding prior art.

          Like Diehr, Morse is a case of ever-shrinking influence. Looking at the claims allowed in Morse to make an argument for the computer-implement j nk we’re seeing today is a pretty weak move.

          1. LOL – your claiming this is a “pretty weak move” only shows how little you understand the concept of foundations in law.

            I am not surprised by your petty views.

          2. Prior Art:

            link to en.wikipedia.org

            See also coin flipping. (coins have eagles, eagles have wings, it would be obvious to replace eagles with insects as they both have wings and the selection of eagles or insects is merely a design choice within the abilities of one of ordinary skill in the art).

            The 8 ball and the coin are not iridescent.

            However iridescent insects are known.

            link to google.com

            It would have been obvious at the time of the invention to substitute an iridescent insect for an insect/eagle as it is merely a design choice. One would have been motivated to do so because oooOOOOoo glowy pretty.

            103’d

            QED

            1. That’s pretty good, Les.

              Of course, I’ve plenty of arguments and/or amendments and some secondary inidicia to cite and I’d eventually get my claim through if that’s the only turf we’re battling on.

              But none of those amendments or arguments or evidence would change the eligibility status of the claim. That’s the beauty of 101. You get to focus on more important “innovations”. I get to sell my ineligible cr p the honest, old-fashioned way or I find something more constructive to do.

          3. MM, claim 5 was not to the code. Morse made that clear, very clear.

            It was to a way of signaling involving physical dots, dashes and spaces then written on a moving scroll.

            An analogy would be a physical circuit that could sustain two voltage levels, be programmable, and readable, for physically holding information such as a bit.

            Such a claim is not to binary information, an alphabet, to a code or anything of the kind. Such a claim is to a physical machine.

            Since the Telephone Cases, methods of communicating using real physical signals have been eligible, and the Telephone Cases relied on Morse – at least to distinguish the claim before it from claim 8 of Morse.

            That does not mean that if the only novelty is in the content of the signals, like a code or something like price, that the subject matter is patentable. That would again be an example of mixing the ineligible with the eligible where the ineligible must be given no weight.

            1. MM, claim 5 was not to the code. Morse made that clear, very clear.

              To wit: “Fifth. I claim as my invention the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.”

              Simply WRONG Ned.

            2. As I indicated, claim 5 is to be contrasted with among other things claim 6 – which does claim the instrumentalities.

              If you don’t like my telling you that you are simply wrong, do not be so blatantly simply wrong.

            3. As to content of the signals, you are still IGNORING Set C printed matter.

              Um, you do realize that you are misrepresenting a material aspect of law in your advocacy here, right?

        2. That’s just the abstract idea of coding data. There’s no structure there that can be done with pen and paper. Alice says that this is unpatentable subject matter, no matter how you phrase that claim.

    2. On what basis could a claim be, in all other respects perfectly valid, but “too broad”? i.e. a claim that was new and unobvious and did not read on ineligible subject matter, did not read on embodiment without utility, not read on prior art etc.

      By this I mean to say, if a claim only read on valid subject matter, for example wheeled vehicles, by what principle could one say that that the claim was directed, simultaneously at too many subclasses of wheeled vehicle. If one were to pronounce that each claim should only be directed to a single possible or existing subclass or some delimited subcategory of wheeled vehicles in order to be valid, how would a group of claims covering the entire field of wheeled vehicles be any different from the single broad claim?

      I guess I do not get how the court could say the claim was “too broad” as such instead of concluding that the claim read on something ineligible, did not have utility, read on the prior art, or beyond the scope supported by the description…

      Thoughts?

      1. I do not get how the court could say the claim was “too broad” as such instead of concluding that the claim read on something ineligible, did not have utility, read on the prior art, or beyond the scope supported by the description…

        Thoughts?

        The case was written by 19th century Justices in 1854, nearly 100 years (!) before the 1952 patent act and almost 170 years before contemporary times where attorneys and courts still struggle with the English language, not to mention the precise use of terms specific to patent law.

        1. Very good point…. I’m almost embarrassed by how obvious the answer is.

          Would you say the Courts today would be less likely to make such a pronouncement, i.e. a claim being “too broad” as such?

          1. Would you say the Courts today would be less likely to make such a pronouncement, i.e. a claim being “too broad” as such?

            Aren’t there written description cases that say exactly that?

      2. I guess I do not get how the court could say the claim was “too broad” as such instead of concluding that the claim read on something ineligible, did not have utility, read on the prior art, or beyond the scope supported by the description…

        One can be “too broad” in the 112 sense, to paraphrase Lizardtech, one may describe and enable a single instance of a fuel efficient engine, but that does not necessarily support a scope that goes to all fuel efficient engines, no matter how different in structure or working. Enabling/Describing your species doesn’t inherently enable/describe every genus it could belong to.

        One can also be “too broad” in the 101 sense. i.e. One can discover and apply a new principle and then state “oh by the way, now that I’ve enabled a use of my principle, I note that it has infinite applications and I claim all of those applications” or “I have achieved a means of using a machine to fire a projectile, all other machines will use my same principles, therefore I claim all projectile firing machines.” You could make the argument it is enabled, since the principle has worked once and one of skill could make it work again in any other context, but those other contexts would be other inventions in their own right. Inventing the bow achieves the same general function of firing a projectile that inventing a gun does, but the gun does it much better. Yet if you allow the functional claim on the bow to issue, you’d never have a gun, because why would you spend money to research what you can’t exploit because of the overbroad prior patent? That’s not a claim that improves science, it’s a claim that holds science back, it’s clear in hindsight that it shouldn’t have issued.

        Then the question becomes do you have to wait for the hindsight or not? Morse made it clear you don’t.

        1. Your views are wack – you over extend and misplay the doctrine of equivalents for what a properly step-up-a-rung ladder of abstraction claim would cover (and would need support for) as well as continue to misapply your curse-ade against claims with functional language descriptions irrespective of the field of art to which any invention may pertain.

          1. your curse-ade against claims with functional language descriptions irrespective of the field of art to which any invention may pertain.

            Is it your argument that different rules for functional language apply depending upon what field the invention is in?

          2. Random, regarding Morse claim 5, he invented a system of dots, dashes and spaces on a moving scroll that could represent characters. This claim was found infringed by a competitor who used a different code because the code was not the invention, but the system for communicating symbols.

            1. on a moving scroll

              NO – not a part of claim 5 Ned.

              Pay attention – the instrumentalities were a part of claim 6 – claim 5 is the base system without instrumentalities.

              This has been explained to you already.

            2. This claim was found infringed by a competitor who used a different code because the code was not the invention, but the system for communicating symbols.

              The claim was found infringed by someone who used a different code, but which the court found worked in substantially the same manner. In other words, there wasn’t literal infringement, but DoE applied. That is as it should be.

              This claim was found infringed by a competitor who used a different code because the code was not the invention,

              When you say “the code was not the invention” you mean it was not the invention in the second, infringing machine. That’s why the court was able to say that it was substantially the same and DoE applies. But had OReilly come forth with a claim toward a more efficient mapping that was substantially different, that would have been its own invention.

              The entirety of the infringement language is just a factual finding that states there is no substantial difference in operation. Kinda not shocking in the least – they knock out claim 8 and then say “by you’re not substantially different from what’s left.” That is, pretty much, still the standard. The weight given to the limitations has increased and the DoE test is more refined, but the test has always been pretty much the same test: Is the device substantially the same as what the patentee has disclosed? That’s an oversimplification, but still.

              1. B-b-b-but Morse didn’t list that different code…

                /eye roll

                Hmm, seems like that “substantially” is measured by one rung up on the ladder of abstraction, and here, you see no problem with the absence of every species…

                One wonders why you are so thick in other regards on these concepts.

              2. Just to be clear, the code was not the invention, but the use of marks and signs imposed on paper, just as claimed. From the case itself:

                “Neither is the substitution of marks and signs, differing from those invented by Professor Morse, any defence to this action. His patent is not for the invention of a new alphabet; but for a combination of powers composed of tangible and intangible elements, described in his specification, by means of which marks or signs may be impressed upon paper at a distance, which can there be read and understood. And if any marks or signs or letters are impressed in that manner by means of a process substantially the same with his invention, or with any particular part of it covered by his patent, and those marks or signs can be read, and thus communicate intelligence, it is an infringement of his patent. The variation in the character of the marks would not protect it, if the marks could be read and understood.”

              3. but the use of marks and signs imposed on paper, just as claimed

                Once again Ned – you are ignoring claim 5 and speaking to claim 6.

                As such – your statement is simply WRONG.

              4. Hmm, seems like that “substantially” is measured by one rung up on the ladder of abstraction, and here, you see no problem with the absence of every species…

                One wonders why you are so thick in other regards on these concepts.

                You continue to ignore that I am fine with DoE being applied as DoE was always meant to apply. My problem is with an applicant taking DoE out of the court’s hands (and lowering his burden against the infringer) by summarily deciding on his own accord that everything that performs the same function will be substantially similar.

                As Lizardtech said, one can enable and describe a particular fuel-efficient engine, but that does not support a claim to every fuel-efficient engine no matter how different in form or work.

                Neither is the substitution of marks and signs, differing from those invented by Professor Morse, any defence to this action.

                The court found that the markings were different, but not substantially so. In today’s parlance this would be a finding that the court considered Morse Code, considered OReilly’s code, and found them to be substantially similar, in other words, DoE.

                Had OReilly’s code been substantially different, then an analysis comparing the claimed product with the infringing product would have led to a different result today. See: link to patently.wpengine.com

                This is a different question from using functional language to summarily ignore the DoE question, which is what claim 8 did. The court properly struck that down under 101, but note that under the WD test in AbbVie it would have also been struck down under 112 1st.

                The problem, of course, is that it’s clear in hindsight which claims are overbroad, but a) you have to get the court to apply the right standard and b) it really needs to be found out at the office, before this problem issues. As I have been saying since I first started posting, the office needs to properly apply 112, 1st so that they can anticipate that Janssen would come along and never allow Abbvie the overbroad scope to begin with.

    3. You will remember that the Supreme Court rejected the broad functional claim of communication of characters using electro-motive force but did allow the more narrowed claims that were tied Morse’s particular implementation of the telegraph. Both were directed to the same invention, but the supreme court found the functional claim “too broad”(not on prior art ground).

      Both were not directed to the same invention, that’s specifically the problem the court pointed to. The scope of claim 8 covered not only the actual invention but any other improvement upon it (each their own invention).

      Claiming a species and claiming a genus are simply two different things. The fact that the species fits within the genus does not make them the same thing.

      Fifth. I claim as my invention the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.

      Translation is not eligible. If one discovers the rosetta stone one cannot claim translating into ancient egyptian. That leaves the question of whether the images themselves have value. i.e. Can you patent a language as a method of communication? I think the answer to that is yes. But if so, so what? Let’s not forget what was just said: If someone were to use a different code set (i.e. having -. mean something other than “n”) they would be noninfringing as the act of translation can’t be captured. So while Morse may prevent others from using -. to express the character N via the telegraph, he can’t prevent others from expressing the character N via the telegraph in general.

        1. The system of signs is eligible. Just like if I were to invent pig latin or C+ computing language or even court stenography shorthand and claim it as a method of communication, it would be eligible. There’s no harm in that, of course, because the important, broad act of translation (which claim 5 is not directed to) is not eligible.

          Morse can develop a code where the most common letters have the shortest expression time and claim it as Morse Code. Morse cannot claim “Morse code or any other code that would be understood to equate electrical current into letters and numbers” because that is a claim on the act of translation itself.

          As long as you’re free to attach a meaning to any signal in general, the fact that you’re prohibited from using a particular signal-to-meaning translation is not a problem because the underlying act of communication is still public and that’s the building block that needs to remain free.

          As usual, it’s a matter of particularity. If claim 5 was in terms as broad as claim 8 (i.e. directed to any meaning whatsoever attached to electrical current) then you would have a problem. But Claim 5 as actually constituted does have “significantly more” than an abstract idea because the abstract idea is communication via electrical current and the significantly more step is met because Morse’s system achieves more efficient communication because its particular signal-to-letter combination is efficient. Remove that claimed structure and you lose the significant efficiency and you have an abstract idea issue.

          Printing at a distance, invalid. Printing using a telegraph, valid. Communicating using electrical current, invalid. Communicating using Morse code, valid.

    4. Yes, the point is to try to protect the investment in innovation while remaining within the legal doctrines. I agree that no one knows with any real precision what will stand up and what will no stand up. These examples are reasonably broad claims and in a full set of claims, if one follows the suggestion I am making, additional narrow claims would be added to provide additional basis for argument regarding implementation aspects, perhaps bring into the claim, for example, moving states into and out of memory. This, again, was a simple example or exercise.

      One thing I see repeated in the comments is the importance being placed on Bingo and you mention it as well. It is a non-precedential case and the court did not even recite the claim in the opinion. Therefore, I think that case is being over interpreted.

  23. Nice article, Howard. It’s nice to see an intelligent, non-hysterical, analysis of the situation. I agree that your detailed claims should be patentable subject matter. As a practitioner I’m very concerned, however, that the patent office is not capable of making the distinctions that you suggest.

    I think your question, “If we ignore the conventional hardware elements of the claim, is the implementation, as claimed, more than merely conventional?,” is a good way to look at some, but not all, computer-implemented inventions. The difficulty, as you suggest, is recognizing that “merely conventional” is not quite the same as “in the prior art.”

    I don’t think this covers all of the situations that raise concerns, though. Another question that might be asked, for example, is “If we ignore the conventional hardware elements of the claim, does the technique, as claimed, do no more than specify or otherwise represent relationships between humans or organizations?” If the answer is yes, then I suspect the claim is not directed to patentable subject matter either.

    1. “If we ignore the conventional hardware elements of the claim, does the technique, as claimed, do no more than specify or otherwise represent relationships between humans or organizations?” If the answer is yes, then I suspect the claim is not directed to patentable subject matter either.

      That’s a thoughtful articulation of a very potent test for eligibility, DanH. There are many other such tests that could and should be articulated (and others that already have been articulated).

  24. While there may be merit to the notion that a claim reciting a new algorithm or business method is statutory, I don’t think these particular claims are going to cut it. According to how CLS Bank is being applied, merely implementing a mental or pen and paper process on a computer is not patent-eligible. Take a look at Planet Bingo, LLC v. VKGS LLC (Fed. Cir. 2014) and some recent PTAB cases for examples.

    1. No. It doesn’t. Not even close.

      If you really believe this, you have no business practicing patent law or any other kind of law.

        1. The sword of “Gist/Abstract” destroys all.

          If you really believe this then there’s no patent law left to be practiced, is there?

          1. I think his point is that when the Law becomes informed with uncertainty and inapplicability, then the irrational and the arbitrary (i.e. random choices by unguided decision-makers) are substituted for principles of Law.

            Justice, a reflection of the application of principle, becomes victim to arbitrary whim and the situation becomes not one of the Rule of Law but the Rule of the momentary whim of a man (or small group or people)

            Gisting is the destroyer of Justice.

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