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:
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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.
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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.
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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.
- Take care when evaluating inventions for meeting statutory subject matter – rarely are things as simple as they look.
- 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.
- 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.
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.
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.
“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.
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!
“ 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.
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.
“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.
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.
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.
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?
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.
You’re right, it did have “g e n” in it. Why is that a bad word?
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.
LOL – um, sure, blame the person that you have an obsession with….
/eye roll
MM, I think you have something there. Perhaps there was an actual threat.
Ned, perhaps there is something there – now who do you lay the blame on?
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.
LOL – bashing appears to be the only option when valid counterpoints are purposefully ignored.
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?
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.
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.
Patent leather, can you tell me whether bingo is a machine, and manufacture, or composition of matter? And if not why is bingo statutory?
Morse claim 5 (not claim 6) – why is that statutory Ned?
Remember, there are no instrumentalities in Claim 5.
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.
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.
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
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.
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.
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.
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.
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).
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.
snnnnnifffff – The Red Queen / Humpty Dumpty is now ready to make another proclamation.
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.
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!
wow imagine that – no new law was necessary.
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]
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.
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.”
“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…
David, the controversy is more about new and improved machines, manufacturers, or composition of matter.
Ned,
You remain with your head in the sand.
“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.
LOL – except 6, the legislative history and the constitution do not support your views.
Oh snap.
Well, according to you that is. According the authorities they do.
According to “the authorities…?”
Um, kindly list these authorities, thanks.
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
Not that the Courts care that a new use of an old (“generic”) machine is clearly a statutory process….
Is the use of a pen to write a Poem truly a new use?
JFC Ned – not even wrong.
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?
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.
… 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?)
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.
How can any machine be novel, when nuts and bolts have been known for millennia?
Drive that a step further (logically): electrons, protons and neutrons…
anon won’t even accept Marbury, a case they teach on saturday morning cartoons. good luck with that….
LOL – Sorry Marty – I wish you had a clue as to what Marbury stands for as it is clear that you do not.
“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!
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.
…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.
“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?
^^^^ clueless as to the rule of law under discussion
(sigh)
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?
“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.”
Worth repeating: you are the last person on the planet that should be advising anybody what to do with their time, Billy.
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Huh what, did Malcolm say something of merit…?
No?
OK.
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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.
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