by Dennis Crouch
Planet Bingo v. VKGS (Fed. Cir. 2014)
In a non-precedential decision earlier this week, the Federal Circuit found Planet Bingo’s patents invalid as lacking eligible subject matter under 35 U.S.C. 101. The court’s opinion self-identifies as a “straightforward application of the Supreme Court’s recent holding in Alice Corp. v. CLS Bank International.”
The patent claims a computerized method for managing a game of Bingo – yes, the multi-billion dollar industry of Bingo. The basic idea of the invention is that some folks want to play ‘their numbers’ each week. The computerized system lets individuals pre-select their numbers and also helps the Bingo-hall to track sales, verify winners, and avoid tampering. VKGS and Planet Bingo compete in the marketplace for bingo equipment.
Claim 1 of U.S. Patent No. 6,398,646 recites typical computer hardware including a computer with a CPU, memory device, a printer, input and output terminal, and also a computer program with particular features. As is typical with software related inventions, the only novel features of the invention stem from software-related functionality. Here, the program is configured to allow input and storage of the pre-selected Bingo numbers in files associated with the players. A player with stored numbers can then retrieve them to play Bingo. At that point, a control number is also associated with the numbers that can later be used to verify winnings. The patents also include method claims that basically step through the program steps outlined above.
Although I am no Bingo expert, nothing here appears amazingly inventive. Of course, the challenge to the patent is not on grounds of obviousness or anticipation. Rather, the challenge is on subject matter eligiblity grounds – that the patent unduly encompasses an “abstract idea” and therefore unduly limits “the basic tools of scientific and technological work.”
The Patent Act is broadly written so as to allow the patenting of “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. 101. In addition to the text of the statute, the Supreme Court has further restricted the patenting of “laws of nature, natural phenomena, and abstract ideas.” According to the court, these exceptions to patentability are necessary to protect “the basic tools of scientific and technological work.” In Alice Corp, the Supreme Court explained:
“[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. Mayo. We have “repeatedly emphasized this . . . concern that patent law not inhibit further discovery by improperly tying up the future use of ” these building blocks of human ingenuity. Mayo (citing Morse).
Here, the Federal Court found that – yes – those building blocks of scientific inquiry are being inhibited by Planet Bingo’s bingo software patent. To reach this result, the court began by recognizing that the method and system claims are basically the same and thus should rise-and-fall with the same analysis. The court then analyzed the case through the lens of the method claims as ineligiblity tends to be easier to show for method claims.
Following the process outlined in Alice Corp., the Federal Circuit first identified the abstract idea as the steps of selecting, storing, and retrieving the bingo numbers, assigning the control number, and checking to see whether the set of numbers is a winner. These steps are collectively an abstract because they are “mental steps which can be carried out by a human using pen and paper.” Particularly, none of these steps require new technology but rather may be “carried out in existing computers long in use.” (quoting Benson). Further, the Federal Circuit was unable to find an “inventive concept” in the rest of the claimed subject matter sufficient to transform these abstract ideas into a patent eligible invention. The court writes:
Apart from managing a game of bingo, the claims at issue also require “a computer with a central processing unit,” “a memory,” “an input and output terminal,” “a printer,” in some cases “a video screen,” and “a program
. . . enabling” the steps of managing a game of bingo. These elements, in turn, select, store, and retrieve two sets of numbers, assign a player identifier and a control number, and then
compare a winning set of bingo numbers with a selected set of bingo numbers.
Here, however, the claims recite merely a generic computer and instructions that simply implement the abstract idea discussed above.
Patent Invalid.
[…] The Court’s recent, post-Alice decisions all seem to be lining up the same way: (Digitech, Planet Bingo) […]
A Rich-era patent on poker per se. Can you believe it? Really? REALLY? Poker is a useful art? Does it improve a machine, a manufacture, or composition? Clearly not.
Next we will find methods of playing bingo per se are within the useful arts. Why not training cats, or swinging on inner-tube swing? What about accurately counting the number of sheep that jump over that hedge in one’s dreams?
It is quite apparent that the PTO and the Federal Circuit were way out of control during the Rich era. Not only were they disinterested in 101 as a topic, they actively opposed any attempts others such as district courts to limit patentable subject matter. Thus, we get this, which was litigated without a 101 challenge by anyone.
Who was in charge in the PTO during this timeframe. They should raise their hands and explain, to the best of their ability, why they allowed such claims to issue.
5823873:
1. A method of playing a card game comprising:
a) dealing a first hand of at least five cards all face up;
b) selecting none, one or more of the face up cards from the first hand as cards to be held;
c) duplicating the cards selected to be held from the first hand into a second hand;
d) duplicating the cards selected to be held from the first hand into a third hand;
e) discarding from the first hand the face up cards that were not selected to be held and replacing each of those cards with a face up card;
f) completing the second hand to have at least five cards by dealing additional face up cards;
g) completing the third hand to have at least five cards by dealing additional face up cards;
h) determining the poker hand ranking of the resulting cards of the first hand, the second hand and the third hand.
There be cards there Ned – plus you have failed to account for the non-Rich era 1924 patent I posted.
Your fake umbrage is showing.
In re Russell, 48 F.2d 668 (C.C.P.A. 1931) link to scholar.google.com
Note the date of decision.
It is 7 years after the board game patent issued.
Does not address my post Ned.
Ned the date 1924 is that date of the case you want to lean on are not determinative of the issue I am asking you to address – there is a constant stream of such patents well before the Rich era solidly back to at least the 1924 patent (both before and after the case you wish to lean on).
Please address the points I present as indicative of all pre-Rich cases.
Second Request:
Tell me Ned what is the substantive difference between the manufacture of a board doing nothing more than bearing indicia, and a media that also bears indicia (as would the manufacture of software – since we both know that with software – fixed in a tangible media so as to earn copyright protection can be taken as a given for our discussion)?
Then look at this 1924 patent and let me know what is
a) the technological aspect
and
b) how the aim of this patent is anything but what we in our current age would call “abstract.”
link to pdfpiw.uspto.gov
Wherefore art thou? The silence is deafening. Your anti-Rich umbrage echoes falsely.
Ned, I take it you would argue that a new method of playing bingo or poker is not a “useful process” – the 101 category you inadvertently omitted when you listed “machine, manufacture, or composition.”
Section 101 says “any new and useful process” is eligible for a patent, but clearly you have other ideas. In your view, what is an example of a process that falls within the bounds of 101-eligibility? Do all such processes need to result in a novel and useful machine, manufacture, or composition?
In other words, can a process that is an end in and of itself (like playing bingo) be patent-eligible, or are patent-eligible processes always merely the means to an external end?
I would note that the court in Planet Bingo held that the particular claim language “consists solely of mental steps which can be carried out by a human using pen and paper” and was therefore ineligible. Is that the litmus test? If so, do you believe the same holds for the card game in the ‘873 claim you quoted, or for the slot machine method in the ‘658 patent I cited in post 30?
SlotGuy,
Section 101 says “any new and useful process” is eligible for a patent, but clearly you have other ideas. In your view, what is an example of a process that falls within the bounds of 101-eligibility? Do all such processes need to result in a novel and useful machine, manufacture, or composition?
From In re Bilski discussing In re Comiskey: “Some may suggest that Comiskey implicitly applied a new § 101 test that bars any claim reciting a mental process that lacks significant “physical steps.” We did not so hold, nor did we announce any new test at all in Comiskey. Rather, we simply recognized that the Supreme Court has held that mental processes, like fundamental principles, are excluded by § 101 because “`[p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts … are the basic tools of scientific and technological work.'” Comiskey, 499 F.3d at 1377 (quoting Benson, 409 U.S. at 67, 93 S.Ct. 253) (emphasis added). And we actually applied the machine-or-transformation test to determine whether various claims at issue were 961*961 drawn to patent-eligible subject matter.[24] Id. at 1379 (“Comiskey has conceded that these claims do not require a machine, and these claims evidently do not describe a process of manufacture or a process for the alteration of a composition of matter.”). Because those claims failed the machine-or-transformation test, we held that they were drawn solely to a fundamental principle, the mental process of arbitrating a dispute, and were thus not patent-eligible under § 101. Id.”
While the Supreme Court has said that the MOT is not the exclusive test for processes, certainly without anything else in the claim other than mental processes which are new, everything else that is otherwise eligible being old, all such claims to methods of playing poker or other games cannot be patentable under the Supreme Court cases.
The PTO has issued hundreds of “method of playing a wagering game” patents since then. Are you suggesting that they shouldn’t have, and moreover that every single one is invalid as ineligible subject matter? If so, how do you reconcile that position with the behavior of the government over that time period?
The PTO also issued thousands upon thousands of DNA patents on its own authority without ever having the issue tested in court. How is this serving the public by not raising issues of first impression to be resolved by the courts?
They also did the same thing with regard Beauregard claims – never allowing the courts to actually deal with such claims directly but simply on their own authority allowing them.
In my opinion, the PTO must bring novel issues of first impression to the attention of the courts so that the courts may resolve those issues. More often than not, the PTO by willfully issuing patents of doubtful validity does not serve the public, and the commissioners and everyone else involved in the decision-making in such cases should be fired. Their names should be identified that they should not be involved in patent law either in public service or in private practice.
But of course we all know that if we identify their names, it was soon be hired by major firms and big companies as heroes, just as Judge Rich continues to be honored by major patent law associations as if he enhanced the reputation of the patent system with decisions like State Street Bank.
Ned – you moved the goalposts from SlotGuy’s question about the place of the statutory category of process (not as a mere handmaiden or sub-category to the hard goods categories, but as a distinct and equal category in its own right) to a discussion purely of mental processes (or your non-Diehr, parse and dissect and focus only on mental processes, not looking at the claim as a whole).
Can you not play these intellectually dishonest games with the new posters?
Ned, it would seem that patent eligibility of processes is a hot-button issue for you, so much so that it clouds your vision and apparently prevents you from even reading the actual question.
I asked whether the particular claims you cited (Moody, ‘873) are patentable over the “mental process” exception to 101 you quoted from Bilski/Comiskey.
Did you actually read the claims you cut and pasted? Or are you assuming that because the first seven words of the claim are “A method of playing a card game” that the entirety of the claim is necessarily ineligible?
Can a human mentally “deal” a card, or mentally “duplicate” a card from one hand into another, as those terms are used by the patentee in the specification?
Or, getting back to the 8,814,658 patent, can a human mentally “display a play of a game” on a gaming machine with a display and processor?
Slotguy, you must know that card games are old and that everything in the claims to various card games in the various patents is old but the new way of playing. It has been the historical practice of many on the Federal Circuit to focus in on the fact that the claimed subject matter includes eligible subject matter, albeit old and conventional. That was the mistake of the Federal Circuit in Prometheus and it was corrected by the Supreme Court – unanimously. The Supreme Court has now declared that the mode of analysis of Prometheus covers all 101 subject matter – and what is that? Well, a claim that includes old and conventional eligible subject matter and novel and unobvious but otherwise ineligible subject matter is unpatentable pursuant to Prometheus/Alice.
That you asked whether the claim is saved because it recites cards, or conventional methods of dealing, etc., illustrates to me that you seem to lack an understanding of the fundamentals.
Your version is grossly wrong Ned.
Companies like IGT, Bally, and WMS Gaming have thousands of patents on slot machines. Many of them are related solely to operating functionality because modern slot machines are basically computers with touchscreens, some specialized UI buttons and cash-handling ability, and gaming companies use the same hardware to deliver hundreds of different games. For example, US 8,814,658 issued earlier this week, after Alice and the latest PTO guidelines. It covers what’s known in the industry as a “game mechanic”, that is, a novel behavior for a slot machine. It does not cover novel slot machine hardware.
Based on the Planet Bingo decision (and Alice, Bilski, etc.), should the claims of ‘658 be eligible for patent protection under 101? Why or why not?
Firmware that modifies the operation of the machine clearly is eligible subject matter because an improved machine is statutory.
Software in contrast simply uses a gen eric computer and the object of the software is not an improved machine but something nonstatutory.
“simply uses” is simply wrong.
the “object” is immaterial to the discussion, as the “object” can be EXACTLY the same for software, for firmware and for hardware.
Ned – you continue to chose to ignore this FACT. The fact is not going to go away because you clench tight your eyes.
Some slot machines use EEPROMs to store the operating instructions for the game mechanics, others use encrypted read-only hard drives. Are you suggesting that one slot machine would be statutory and the other not based on the medium in which the game instructions are stored?
Ned has never acknowledged the fact that software is equivalent to firmware and is equivalent to hardware.
From a theoretical standpoint, that’s absolutely true, and I’m speaking as a trained computer scientist. But the question isn’t about science, the question is about IP policy. Here are two very specific examples:
a) The IGT Game King gaming platform uses “personality chips” that store game instructions in firmware.
link to toplineslotmachines.com
b) The Quixant QXi-307 gaming platform uses battery-backed NVRAM that stores game instructions in software.
link to quixant.com
Both slot machine platforms (or their equivalents) are in current use on casino floors. The language of the ‘658 patent I cited doesn’t make a distinction; the methods and systems disclosed could easily be implemented on either platform. Does that make the ‘658 patent 101-eligible, 101-ineligible, or does patent eligibility depend on which of the above two platforms a game vendor chooses to use?
Sorry SlotGuy – you are asking a question that Ned will refuse to answer because of his third party interests.
Of course, the answer is, well, obvious – and is an established fact (even if the anti’s try to clench tight their eyes to it).
Bear with me, I’m not an IP attorney and the answer isn’t obvious to me (hence the original question). Are patents on casino slot machine game play mechanics, if claimed as in the ‘658 Patent, statutory or not?
And second question: should they be? IGT’s market leadership in the gaming industry is partly based on a few key patents, including Telnaes (US 4,448,419, slot machines using random-number generators) and Moody (US 5,823,873, Triple Play video poker). Both of those patents have survived multiple litigations. Would they today? Should they?
You are not doing too badly for not being an IP attorney – and my comment was less directed to you than to the regular Ned Heller with whom you are attempting to obtain a straight answer from.
If you google the name, you will see just whom are Ned’s third party interests and that will inform you as to why you will not receive a straight forward, intellectually honest answer from Ned.
Good question. My answer pre – scotus – would be yes – patentable subject matter. In fact you can even patent a novel and non-obvious board game. So certainly a novel and non-obvious slot game is patentable. There is no difference whether the game instructions are stored in EEPROM or downloadable flash or even RAM. Those who state otherwise – are obviously ignorant of the art. Now, post- alice – I can’t say for sure. Depends on the judge, i guess. Unquestionably, subject matter will be raised as a new defense to the patent. The analysis – is results oriented.
iwasthere,
“Board game is patentable.’
Cite?
Frankly, I wouldn’t trust any opinion on patentable subject matter from the CCPA or the Federal Circuit in the Rich era.
A two second search at the USPTO:
link to patft.uspto.gov
The board games all seem to include novel apparatus — that is, until Alappat. Thereafter, all bets are off and what the PTO did or did not do cannot be relied upon.
LOL – your “version” of Alappat has been wrong forever and a day.
That you look at the instant situation and take the RQ / HD path of declaring “all bets are off” says more about you than you realize.
Tell me Ned what is the substantive difference between the manufacture of a board doing nothing more than bearing indicia, and a media that also bears indicia (as would the manufacture of software – since we both know that with software – fixed in a tangible media so as to earn copyright protection can be taken as a given for our discussion)?
Then look at this 1924 patent and let me know what is a) the technological aspect and b) how the aim of this patent is anything but what we in our current age would call “abstract.”
link to pdfpiw.uspto.gov
If both of these “innovations” are functionally claimed at the point of novelty, SlotGuy, they are both “equivalently” j nky. It doesn’t matter if you call it “hardware” or “software.”
I’m not calling it either hardware or software – it’s a slot game method. But the PTO has been issuing patents on game methods for decades. Here’s a famous example: US 5,823,873, covering what is known as “Triple Play video poker”. There is no dispute from anyone in the industry that Triple Play was a brilliant idea. It has generated billions in revenues and is widely regarded as one of the most successful casino games ever. Read pp. 4-8 of this (or the whole thing, if you’re curious):
link to appellate.net
To my knowledge, not once in the numerous litigations involving the Triple Play patents has a 101 challenge been raised. Yet I presume from your replies in this thread and elsewhere that you think such functional behavior of existing machines is not patent-worthy as a matter of philosophy.
Setting aside your personal policy beliefs for the moment, how do you reconcile PlanetBingo, Alice, and other recent decisions with the decades of PTO precedent and long-held expectations that an improvement in the functioning of a machine is patentable, even if the machine itself is not changed?
SlotGuy – a minor correction: the machine MUST be changed for it to have a new capability.
In patent law this is known as the inherency doctrine. One cannot claim a new invention in something that inherently already has the capability (and it is critically important to distinguish the and keep track of the verb tense) because if the item already has the capability, then you have not actually invented anything.
The running commentary here portrays this concept under the term “oldbox.”
Notwithstanding that minor correction, the question you appear to ask of Malcolm (MM) has been asked of him nigh countless times previously – and is a simple question that he refuses to address in an intellectually honest manner.
I truly doubt that he will answer you in any meaningful way.
(I will also point out that even for argument’s sake if you are strictly using something in a new way, one CAN obtain method patent coverage for that new way – this was EXPLICITLY made clear by Congress in 1952 – again acting to smack down an overly activist and anti-patent Court). Not so surprising, many activists here try to kick dust over this legal point.
anon (there’s no reply link under your last post, so I’m putting this here):
Okay, I think I get the inherency part — you can’t patent using a chef’s knife as a shim for woodworking because it already could have been used that way.
But where does patent law draw the line at the changes that are allowed while still falling under the inherency doctrine, when you’re dealing with a flexible-by-design set of building materials?
I know I can get a patent if I build a novel/non-obvious machine out of sheet metal. But if I build a novel/non-obvious machine with an Erector Set, is that inherent and therefore ineligible? Or is it patent-eligible because I put the parts together in a different way from anyone else before?
You have a different way of putting it together?
You can get a patent on that method.
(this applies to any product of nature as well)
The point to absorb is the fact that software is equivalent to firmware and is equivalent to hardware and that you are creating an actual new machine if you change the inherent capabilities of the machine with the addition to “oldbox” of software.
Do not be confused by the dust-kicking here and the purposeful confusion of the term “using a computer.” ANY TIME you are using things that are such building blocks and your use creates something that has a capability that was not there previously, your “use” is an invention that can easily be seen as falling into the realm of patent protection (of course, another important aspect of 35 USC 101 beyond just the statutory category aspect is the utility aspect).
Any reasonable patent attorney without an anti-software patent agenda can tell you this and explain this to you in more detail (than an exchange on a blog – as you should know that our conversation does not constitute legal advice and I am not your lawyer**). You may also want to look up and read the recent Nazomi case as well as the historic In re Alappat case.
**not to be confused as a lack of advocacy, as I am most definitely advocating legal points and acting with full compliance of my ethical duties while so advocating.
SlotGuy, justt a bit of a misrepresentation by you. The claims attached to the brief you link consist of three claims from two patents – all of which simply claim a method of playing poker unrelated to any hardware or software. As such, I fail to see how these claims claim patentable subject matter at all.
Ned, I didn’t intend to misrepresent anything. The Moody patents are very clearly “method” patents — they say so. But your reply indicates that you think “a method of playing poker” is, by itself, not patentable. Is that right?
Then what should be done with all the patents issued by the PTO over the past 20 years with precisely that scope? The well-known casino game Caribbean Stud is claimed in US 4,836,553, entitled “Poker game” and that issued in 1989. If you’ve been in a casino in the past 20 years, you’ve probably walked past a Caribbean Stud table even if you haven’t actually played the game.
The PTO has issued hundreds of “method of playing a wagering game” patents since then. Are you suggesting that they shouldn’t have, and moreover that every single one is invalid as ineligible subject matter? If so, how do you reconcile that position with the behavior of the government over that time period?
The issue is whether the claims define a new machine, or whether they just call for the use of a gen eric computer to execute new software.
No matter how the Computer program is stored, if it is loaded and executed automatically by the computer, it is part of the machine.
Bios loaded OS’s certainly would qualify.
Ned – your fallacy has been exposed – one cannot “use” software on a machine until that machine has been changed with the loading of the software on the machine.
Time for you to be intellectually honest here.
Query to Ned: some slot machines offer one game only, others offer multiple games and a game-selection menu. Does your post imply that a single-game slot machine running Game X is eligible, but a multi-game slot machine loaded with many games including Game X is not eligible, because Game X is loaded automatically in the former case but loaded at the prompting of the user in the latter case?
If the program is integrated with a machine to change its mode of operation, it is a particular machine.
On the other hand, software is not directed to a particular machine, and essentially preempts.
See Curious’s rebuttal.
But I think I am right on this.
Rivets, bullets and tires, oh my.
This doesn’t make any sense.
Sure it does.
What part of a machine component being a manufacture in its own right confuses you?
What part of a machine component being a manufacture in its own right confuses you?
What part of growing up and not pretending that you’re in kindergarten confuses you, Billy?
Your silly “theory” that anything you can describe as a “manufacture” necessarily passes the eligiblity theory has been put in a coffin by the Supreme Court and buried under 10,000 tons of gravel.
If you want to sit around and stamp your feet and cry like a baby about it for the next fifteen years, why not do that at your hero’s lame-axx echo chamber instead of over here? The smell of full diapers is plainly welcomed over there. Plus you can shine Jenny’s buttons while he shoves steak in his face. It’s a match made in heaven.
Give it some serious thought, Billy.
That’s not an answer Malcolm.
Please do not tell me that you think such CRP is an answer.
And you should also try to grasp the fact that I have always held that statutory category is not the sum total of the 101 requirement.
You seem to clench tight your eyes when it comes to what I actually tell you.
I think you’re focusing too much on the software issue – software is just one form of issuing instructions to a computer. This isn’t about trying to patent disembodied software algorithms, it’s about trying to patent new behavior of a gaming machine. Isn’t new behavior of an old machine patentable?
That’s exactly the question that we’re all struggling with.
101 used to be about eligible subject matter. 102/103 were a separate inquiry about the improvement over the prior art.
Now, we disregard the language of a claim, compare the “abstract idea” in a claim (I.e., the essence of the idea) to the prior art, and then determine whether there is “enough” there to warrant patentable subject matter under 101.
Since we don’t know what “abstract” means, we don’t know what to disregard of the claim and what to keep, and we don’t know what “enough” is, we’re all just guessing as to whether 101 is met or not. No one can tell you except the Supreme Court.
Bad joke, certainly abstract must include “mental processes” as occurs with mathematics, business methods, are methods of playing games. Under the analysis of Prometheus and Alice (as well as of Hotel Security and its progeny), if the novel subject matter and the claim is ineligible, and the eligible part of the claim is old and conventional, the claim as a whole is not patentable.
This is actually quite simple.
You are (still) quite wrong Ned.
Playing games… appears to be your speciality – i gave you a pre-Rich patent and expect you to drop the charade and address the point provided to you.
I can grab a 1930 game-playing patent, a 1940 game-playing patent, or a 1950 game-playing patent and the points I present to you are identical.
Answer the points and stop running away.
Claim 1 to board path and indicia.
Compare, computer with ALU, fetch and execute hardware, and a program memory containing instructions that are fetched for execution.
Same thing.
Next, vary the indicia. One indicia leads to rock star fame. Another to sainthood. The only thing new is abstract.
Do you see yet?
Do you?
You have not responded to my questions below post 30.1.3.1.1.1.1
You realize of course, that we STANDARDIZED gaming hardware decades ago, right? It’s GENERIC so that programmers can focus on code instead of dealing with ASIC manufacturing issues.
Your comment flies in the face of reality.
[…] software patents are finally on notice at the Federal Circuit,” says the summary and lawyers do some legal analysis (not challenging the ruling but interpreting it). Progressive sites like TechDirt use a clever […]
Progressive sites like TechDirt….
(guffaw)
Otherwise known as Home of the Lemmings.
Patent leather: “…because the nonstatutory subject matter must be given no weight.”
Ned, of course that is the strict test from Flook which was cabined in Diehr. If it was resurrected in a later Supreme Court case, please cite me the passage. If that is really the test in Alice, then there would be no need for prong 1 of the Alice test, would there? Just skip to prong 2 to see what is non-conventional hardware.
I don’t think Flook can be simply interpreted to give no weight to nonstatutory subject matter. It actually said that the nonstatutory subject matter was to be considered as part of the prior art, which is something entirely different. Nonstatutory is section 101. Prior art is section 102. I thought I made this clear before.
Also, regarding the cabining of Flook, Diehr made the point that when the nonstatutory subject matter is integrated in an otherwise statutory process so as to transform that process into a new state or thing (the MOT), that the claim as a whole was patentable. I think the Supreme Court is consistently following Diehr to this extent.
Thus when the programmed computer is part of a larger machine or process and operates to improve that larger machine or process it does not make any difference whatsoever that the only thing new in the claim is the computer program. In contrast, when the only thing new in the claim is a nonstatutory algorithm or method, and that method is not integrated into an otherwise statutory process or machine so as to transform it into a new state or thing, the claimed as a whole is unpatentable because otherwise the patent laws could be easily evaded by sprinkling a claim to nonstatutory subject matter with conventional, but otherwise statutory elements. That is why Prometheus determined that the presence in the claim of the conventional blood testing process did not lend any patentable weight to the claim with a novel subject matter was the law of nature.
Sorry Ned – but wrong again – there is no dependence on MoT in Diehr.
Yet another example of your far too willingness to ignore Supreme Court words that just so happen to NOT fit into your mantra.
“ that the only thing new in the claim is the computer program”
LOL – you are edging closer to that PON Diehr killer point (and yes, I am loving it).
How is your personal struggles with the Nazomi case coming along?
(hint: think software)
Amazing to see people downthread pretending to be surprised or, worse, pretending that this is somehow the “wrong” result or “doesn’t make sense.”
It’s the right result and it’s perfectly predictable and sensible and there is much more to come. Eventually the computer-implementers will grow up and understand that the patent system wasn’t intended to protect information-processing claims that are nothing more than elementary functions tacked onto an old programmable computer that was created (long ago) for the sole purpose of carrying out those functions.
Of course, Dennis can’t help but throw some gas on the campfire with this kind of cheekiness:
the Federal Court found that – yes – those building blocks of scientific inquiry are being inhibited by Planet Bingo’s bingo software patent.
The “building blocks”, of course, would be the contributions to progress in the useful art of computing machines which are made by describing the distinct, objective structural improvements made to those machines. No such description appears in the claims at issue here. Not even close. There was not even an attempt here to make such a contribution. And yet somehow a tiny segment of the public believes that we must reward them with a patent because they told everyone that a computer can be “configured to” (try to believe it) remember and store information. Yes, even information about some silly game that we learned to play when we were five.
I’ve got news for the confused hand-wringers: computer can receive, store process, and transmit any kind of information that they are configured to receive, store process, and transmit. Not just Bingo information, but bank account information, available real estate information, Johnny’s credit card information, medical diagnosis information, rocket science information, settlement agreement information, weather information, traffic information… the list goes on (let me know if you need more examples).
I’ve been telling you this for years because it’s an important fact that for mysterious reasons is mostly ignored during Examination and during litigation of computer-implemented j nk. And it’s a very damaging fact for a great deal of the computer-implemented j nk that’s out there.
More to come! The swamp is just beginning to be dredged.
“can’t help but throw some gas on the campfire”
As 6 would say, “lulz”
And if Malcolm’s post looks like a retread in the “look at me look at me” style, just meander down to post 6.
Here is my hypothetical for you.
Claim 1: A vehicle comprising: a frame; a plurality of wheels each rotatably connected to the frame; and a seat supported by the frame.
Is this claim patent-eligible under Alice? Let’s take a look:
(1) Claim 1 is directed to the abstract idea of moving something from Point A to Point B.
(2) The claim doesn’t include “something more” “inventive” enough to save it, just old concepts that operate as they always have.
This is the problem with Alice. It can be interpreted to slam the door to all claims – not just computer-implemented claims – not directed to novel and non-obvious subject matter.
Sure, the rule from Alice is broader than it needs to be. But its a bit unclear how this overlap is problematic. Namely, what’s wrong with a claim being invalid as both ineligible under 101 and obvious under 103? The breadth of Alice is only a real “problem” when it is used to invalidate claims that are otherwise patentable.
I should note that I have previously recognized the overlap as a practical problem because of the ambiguity and philosophical policy driven approach in eligibility analysis.
A bit unclear…?
You answered your own supposition: “I should note that I have previously recognized the overlap as a practical problem because of the ambiguity and philosophical policy driven approach in eligibility analysis.”
Pretending that “philosophies” and politics are not at play is like pretending that the patent system is not under attack from the Left and from the Right: instant loss of credibility.
Because there are particular rules for novelty and nonobvious analyses. Unless these are incorporated into the 101 analysis, I see it as a huge issue.
If we take the Planet Bingo case in particular, I don’t think that there is any good evidence that the claimed invention was obvious. And truthfully, I don’t think that the court here used 101 as a substitute for 103. Rather, they saw this claim as too broadly restricting the use of the should-be-free building-blocks of technology.
electrons, protons and neutrons are too restricted as building blocks of technology.
Prof Crouch – THAT is what your argument translates to.
Or rather, more to the point, any configuration of these items should not be restricted by patents.
Wait, so we have a novel, non-obvious improvement to facilitating the play of Bingo, and that somehow unduly preempts . . . playing Bingo?
If the improvement is novel and non-obvious over Bingo, Bingo by definition is not preempted by the improvement.
Bingo ! [pun intended]
Yeah, the fine professor directly contradicted himself. I guess that’s what you get when trying to make sense of the new non-rule rule for patentable subject matter.