Judge Mayer Raises 101 When Not In Issue: Other Panelists Don’t

I am sure Dennis will do his usual full and grand treatment, but this one is sort of the counter-punch to Ultramercial. In I/P Engine, Inc. v. AOL Inc. (Fed. Cir. Aug. 15, 2014) (per curiam), the court split on whether the claims were properly found by the jury to have been not obvious, with Judge Chen dissenting on that point and the per curiam opinion reversing the finding of no invalidity. (The other panel members were Judge Wallach and Judge Mayer).

Recall that in Ultramercial the court emphasized that 101 was seemingly a defense, and so evidence was needed and the usual presumption of validity applied, and so on.  Here, Judge Mayer seemed to take precisely the opposite tact, though it’s not quite clear.  In addition to writing at length about what he perceives the “technological arts” test to mean and require, he wrote:

The Supreme Court has dictated that the subject mat- ter eligibility analysis must precede the obviousness inquiry. Flook, 437 U.S. at 593 (“The obligation to determine what type of discovery is sought to be patented” so as to determine whether it falls within the ambit of sec- tion 101 “must precede the determination of whether that discovery is, in fact, new or obvious.”); Bilski, 130 S. Ct. at 3225 (explaining that the issue of whether claims are directed to statutory subject matter is “a threshold test”); see also In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (“Only if the requirements of § 101 are satisfied is the inventor allowed to pass through to the other requirements for patentability, such as novelty under § 102 and . . . non-obviousness under § 103.” (citations and internal quotation marks omitted)). To fail to address at the very outset whether claims meet the strictures of section 101 is to put the cart before the horse. Until it is determined that claimed subject matter is even eligible for patent protection, a court has no warrant to consider subordinate validity issues such as non-obviousness under 35 U.S.C. § 103 or adequate written description under 35 U.S.C. § 112.

From a practical perspective, there are clear advantages to addressing section 101’s requirements at the outset of litigation. Patent eligibility issues can often be resolved without lengthy claim construction, and an early determination that the subject matter of asserted claims is patent ineligible can spare both litigants and courts years of needless litigation. To the extent that certain classes of claims—such as claims on methods of doing business—are deemed presumptively patent ineligible, moreover, the United States Patent and Trademark Office will have more resources to devote to expeditiously processing applications which disclose truly important advances in science and technology.

Even more fundamentally, the power to issue patents is not unbounded. To the contrary, the constitutional grant of authority “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries,” U.S. Const. art. I, § 8, cl. 8, “is both a grant of power and a limitation,” Graham v. John Deere Co., 383 U.S. 1, 5 (1966); see Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989). Section 101’s vital role—a role that sections 103 and 112 “are not equipped” to take on, Mayo, 132 S. Ct. at 1304— is to insure that patent protection promotes, rather than impedes, scientific progress and technological innovation. A robust application of section 101 ensures that the nation’s patent laws remain tethered to their constitutional moorings.

I am guessing we’ll see another en banc case soon…

309 thoughts on “Judge Mayer Raises 101 When Not In Issue: Other Panelists Don’t

  1. anon, Some Juicy Bilski reminders:

    The Court is unaware of any “‘ordinary, contemporary, common meaning,’” Diehr, supra, at 182, of the definitional terms “process, art or method” that would require these terms to be tied to a machine or to transform an article.

    Wow, anon. You have to remind me once again just how aberrational Bilski was!

    Congress did not intend to change the law by changing Art to Process. The lower court in Bilski demonstrated that Art meant pretty much what the lower court said it did. Never in the history of statutory interpretation did the Supreme Court simply ignore the history of a statute to determine its meaning.

    Bilski will stand as the worst Supreme Court case on this topic since the dawn of this nation. I lost a lot of respect for the justices who signed that opinion. I give Scalia some credit for his joining with Breyer to praise the MOT.

    Besides, this aside is mere dicta.

    Reply
      1. (it was one of two unanimous holdings – and directly on point to the en banc CAFC decision)

        Reply
    1. From below, the comment to which Ned is responding here:

      Some Juicy Bilski reminders:

      The Court is unaware of any “‘ordinary, contemporary, common meaning,’” Diehr, supra, at 182, of the definitional terms “process, art or method” that would require these terms to be tied to a machine or to transform an article.

      561 U. S. ____ (2010) at 7

      Flook took a similar approach, “assum[ing] that avalid process patent may issue even if it does not meet [the machine-or-transformation test].” 437 U. S., at 588, n. 9.

      561 U. S. ____ (2010) at 8

      A conclusion that business methods are not patentable in any circumstances would render §273 meaningless.This would violate the canon against interpreting any statutory provision in a manner that would render an-other provision superfluous. See Corley v. United States, 556 U. S. ___, ___ (2009) (slip op., at 9).

      561 U. S. ____ (2010) at 11

      and finally:

      Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.

      561 U. S. ____ (2010) at 14

      Funny isn’t it, how the word limitation seems lost to those who are proud believers in the Royal Nine when that word just so happens to get in the way of their pogrom?

      Reply
      1. Great quotes. I am sure Ned will ignore them or interpret them in some tortured way.

        Reply
        1. Yes, per our deal Ned was to stop making things up, and stop his crusade (or at the minimum, was to recognize the valid counterpoints and integrate those points into his advocacy (as is required under the ethical rules for treating material points of law).

          Ned never batted an eye continuing with his curse-sade.

          Reply
  2. patent leather:

    Ned, I think Flook and Diehr are very difficult to reconcile. If Diehr hadn’t come along (with its language that you shouldn’t mix 101 and 102), then I think the USPTO would never have issued any patents on software (unless another such case came along). I think Flook is pretty devastating to claims involving software for a lot of reasons including the ones you mention.

    It’s fascinating how random our judicial system really is. If Diehr hadn’t applied for his patent, most likely no software would have issued due to Flook. And Diehr was only a 6-5 decision. That’s why these things are really better left for Congress.

    I think you misread Flook and over-apply Diehr.

    Flook made it clear that math was nonstatutory, that the claim before it ended in a number, and that nominal elements added to the claim such as obtaining data from a generic process and/or providing nominal postelection activity would not save the claim.

    Everything else in Flook was dicta.

    Diehr was quite different from Flook in that a specific process was described, and the role of the mathematics/software in improving the process was considered essential.

    All the discussion about “claim as a whole” and “novelty” was dicta in that it had nothing to do with the holding of the case. It was put there because of Judge Rich’s lecture in In re Bergey to which the Supreme Court cited. Obviously, the dicta was decidedly out of place with historic jurisprudence where nonstatutory subject matter was given no weight in determining patentability. These cases include, of course, Funk Brothers, Benson and Flook. They also include such lower court cases as Hotel Security (business methods), In re Russell (printed matter), all of which gave the nonstatutory subject matter no weight in determining patentability. These cases were an anathema to Judge Rich who wanted to focus all considerations of invention into 102/103. The Supreme Court had not yet caught on to Judge Rich’s sophistry which became very clear when in State Street Bank he overturned the historical exclusion of business methods.

    In any case, the Supreme Court in Prometheus made clear that the presence in the claim of old and conventional subject matter by itself was insufficient. The ineligible subject matter had to be used in combination with the conventional subject matter so as to transform it. This is called integration. Thus, Diehr was limited to “integration.”

    Hope this helps.

    Reply
    1. patent leather:

      Ned, I think Flook and Diehr are very difficult to reconcile. If Diehr hadn’t come along (with its language that you shouldn’t mix 101 and 102), then I think the USPTO would never have issued any patents on software (unless another such case came along). I think Flook is pretty devastating to claims involving software for a lot of reasons including the ones you mention.

      It’s fascinating how random our judicial system really is. If Diehr hadn’t applied for his patent, most likely no software would have issued due to Flook. And Diehr was only a 6-5 decision. That’s why these things are really better left for Congress.

      I think you misread Flook and over-apply Diehr.

      Flook made it clear that math was nonstatutory, that the claim before it ended in a number, and that nominal elements added to the claim such as obtaining data from a gen eric process and/or providing nominal postelection activity would not save the claim.

      Everything else in Flook was dicta.

      Diehr was quite different from Flook in that a specific process was described, and the role of the mathematics/software in improving the process was considered essential.

      All the discussion about “claim as a whole” and “novelty” was dicta in that it had nothing to do with the holding of the case. It was put there because of Judge Rich’s lecture in In re Bergey to which the Supreme Court cited. Obviously, the dicta was decidedly out of place with historic jurisprudence where nonstatutory subject matter was given no weight in determining patentability. These cases include, of course, Funk Brothers, Benson and Flook. They also include such lower court cases as Hotel Security (business methods), In re Russell (printed matter), all of which gave the nonstatutory subject matter no weight in determining patentability. These cases were an anathema to Judge Rich who wanted to focus all considerations of invention into 102/103. The Supreme Court had not yet caught on to Judge Rich’s sophistry which became very clear when in State Street Bank he overturned the historical exclusion of business methods.

      In any case, the Supreme Court in Prometheus made clear that the presence in the claim of old and conventional subject matter by itself was insufficient. The ineligible subject matter had to be used in combination with the conventional subject matter so as to transform it. This is called integration. Thus, Diehr was limited to “integration.”

      Hope this helps.

      Reply
      1. I think you misread Flook and over-apply Diehr.

        Just the opposite Ned – see above with the quote from Bilski.

        Reply
  3. Taking suggestions for naming Ned Heller’s new legal creation of the super hyped over-read point of novelty machine or transformation transformed clue into requirement vehicle.

    Quite distinct from anything anywhere within the Congressional Record, Ned’s creation is a vital tool in his pogrom and rewriting of history and US patent law and deserves a suitable moniker.

    Come one, come all, let’s hear your nominations for a place in the Ned_IMHO-Law hall of f(sh)ame.

    Reply
  4. It should be noted that Mayer’s concurrence reads a lot like his dissent in Bilski (In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) where he called for an outright reversal of State Street Bank. He chose his words carefully, “We took this case en banc in a long-overdue effort to resolve primal questions on the metes and bounds of statutory subject matter. The patent system has run amok, and the USPTO, as well as the larger patent community, has actively sought guidance from this court in making sense of our section 101 jurisprudence.”

    On the MOT, Mayer argued, “Although the Supreme Court has stated that a patentable process will usually involve a transformation of physical matter, … it has never found a process patent eligible which did not involve a scientific or technological innovation.” Id. at 1009.

    “The time is ripe to repudiate State Street and to recalibrate the standards for patent eligibility, thereby ensuring that the patent system can fulfill its constitutional mandate to protect and promote truly useful innovations in science and technology. ” Id. at 1011.

    Reply
    1. And yet, reality leaks in. Information processing takes time, energy, and space. Information processing is a physical process that transforms represented information.

      Our brains/minds according to the antiquated logic of Mayer are nothing but maths. Nature/G-d created our brains to perform information processing methods. The same type of methods that are claimed in information processing patents.

      According to MM none of these methods are worthwhile. So, the method that a eagle uses to swoop down and grab a mouse is worthless garbage to MM.

      Judicial activist is what you are.

      And, big picture–amongst all the complaints about information processing methods, we the USA are by far number one in creating information processing methods–by far, far, far.

      Big picture, patents have resulted in the hiring in 100,000’s of tech workers.

      Big picture, politics has captured our patent system.

      Big picture, Ned is a smelly hound.

      Reply
      1. “Big picture, politics has captured our patent system.”

        Our patent system is nothing but politics. Never has been anything else.

        Reply
        1. Sorry 6, but wrong again. Now it is captured by the political system. Different qualitatively than it was 10 years ago.

          Reply
          1. Well here’s the thing NWPA, it was captured by the Federal Circuit 10 years ago. That much is beyond question. Though I consider that still to be politically captured. If you consider it to not be politically captured when captured by the Federal Circuit then ok, I can live with that.

            Reply
            1. captured by the Federal Circuit

              (sigh)

              Let’s pretend that you have a clue as to the mandate given to the Federal Circuit and that you have a clue as to what “captured by” means.

              Where are my pretty gifs.

              Reply
      2. “Smelly hound?”

        Night, you must be a girl. No man would ever speak like that.

        Reply
        1. Sounds like a misogynistic comment to me, Ned.

          Didn’t you just get all huffy about such things?

          Reply
        2. Smelly hounds says: “Night, you must be a girl. No man would ever speak like that.”

          Ned, Ned, Ned, you are losing your compass. Once you strived to rise above the pettiness here on patentlyo. Now you are one of the pack leaders taking us to the lowest common denominator.

          You lost your compass. Try to get it back. (And stop spending so much time licking your gen itals.)

          Reply
      3. And, big picture–amongst all the complaints about information processing methods, we the USA are by far number one in creating information processing methods–by far, far, far.

        Because nobody else views them as patentable.

        Big picture, patents have resulted in the hiring in 100,000′s of tech workers.

        No, selling products results in hiring of 100,000s of tech workers. Those people would still be hired if there was no patent protection, they’d just be hired by different people.

        Big picture, politics has captured our patent system.

        Nah.

        And yet, reality leaks in. Information processing takes time, energy, and space. Information processing is a physical process that transforms represented information. According to MM none of these methods are worthwhile…So, the method that a eagle uses to swoop down and grab a mouse is worthless garbage to MM. Judicial activist is what you are.

        And this is your problem. You think that because Congress wrote a 101 which nominally allows anything under the sun to be patented that Congress has the power to allow the patenting of anything under the sun. Congress lacks the power to grant a patent monopoly to a person who has not invented that thing. Congress lacks the power to create a patent scheme which by definition would inhibit innovation.

        The method that an eagle uses to swoop down and grab a mouse is not worthless garbage, especially to the eagle. It is, however, unpatentable.

        Nobody is telling you you can’t go out and sell your product. In most cases, nobody is even telling you you can’t patent your product. You’re just being told you can’t stop others from offering competing products because you try to describe your product with super broad claims that would remove all competitors, especially when its clear you never posited your competitor’s machine.

        Reply
        1. selling products…

          Um, do you need a lesson again on what the patent right provides?

          Reply
          1. That’s right. NWPA needs to stop making it sound like information processing patents create jobs. Even the applicants of information processing patents admit that anyone can make their code/inventions. The only thing the patent controls is who can legally make that code. The patent controls who hires people, it doesn’t create jobs.

            When you tell an information processing applicant they can’t have a patent, it doesn’t stop them from coding it or making a product for it, it just stops them from stopping others from making the product. It shifts around who employs the coders.

            Reply
            1. Random, why did Microsoft hire all those researchers in information processing?

              Why do you think that information processing patents are different than other patents?

              I can tell you they are not. And, once someone knows the goal of what to make in almost every case, then one skilled in the art can make it. No difference in any field.

              I’ve worked in the smelly arts, mechanical, electrical, and information processing.

              Reply
              1. Random, why did Microsoft hire all those researchers in information processing?

                To guess as to why they’d do that, you’d have to tell me what they do, but I assure you it isn’t “look into patents to find answers to their problems” as the patents don’t teach anything. More likely it is “figure out ways that we can monopolize completely mundane solutions to commonplace problems by describing them in the correct manner.”

                Why do you think that information processing patents are different than other patents?

                Because my area involves a lot of information processing and I see the applications. Maybe it’s true of all applications but I doubt it. To be clear: there’s nothing inherently wrong with information processing other than because the solutions are code and because the code is always considered enabled, it lets applicants think they can get away with claiming things on no disclosure. The problem isn’t inherent in the art, it’s in the attorneys drafting the disclosures.

                The vast majority of patents for me are not solutions to problems, they are descriptions of problems and a general statement that one could write code to solve the problem. The “good” ones at least tell you what that code might somewhat look like before claiming that code and any other that has the same effect. The “bad” ones won’t even do that – they will simply say that code can be written to solve the problem and it would be within the skill of the art to write that code.

                We don’t give patents for describing problems. We give patents for describing solutions. The majority of information processing applications are description of problem + statement that it is possible to solve that problem with some sort of code.

                If you applied the same idea anywhere else it would be ludicrous: “One of the problems in the world is a shortage of food. However, one of ordinary skill would know that one could solve the shortage of food by performing acts which would provide a sufficient amount of food to everyone. I claim any acts which constitute the function of solving food shortage.” That doesn’t teach anyone anything, nor does it even suggest you have one concrete answer to the problem, let alone all of them. Yet the same thing in the computer context is submitted every day.

                And, once someone knows the goal of what to make in almost every case, then one skilled in the art can make it.

                Too bad that is not what patents are about, at all. We don’t give patents for saying what goals would be nice to have. We give patents for instructions on particular ways to make it to that goal. Your statement is an admission that you aren’t inventing anything, you’re leaving it up to others to invent. Brainstorming isn’t inventing. I bet you had a hissy fit when abstract idea cases came down, because you clearly don’t understand the concept.

                Reply
            2. Random Examiner,

              You really need to reassess your understanding of what a patent is – for ALL art fields.

              Reply
              1. Pretty sure it’s for the useful arts and the useful arts does not include “processing data,” aka “information processing” absent the description of a new data processing machine in objective structural terms. If that weren’t the case you could patent a new medical encyclopedia based on its new and useful information providing functionality, which is pretty much what that ridiculous ABL company tried to do in their case against SmartGene (and failed miserably, and predictably).

                Reply
              2. Pretty sure patents are for the “useful arts” only and the “useful arts” do not include “processing data,” aka “information processing,” at least not absent the description of a new data processing machine in objective structural terms.

                If this weren’t the case you could patent a new medical encyclopedia based on its new and useful information providing functionality, which is pretty much what that ridiculous ABL company tried to do in their case against SmartGe ne (and failed miserably, and predictably).

                Reply
              3. (and love the insertion of the canard of but-only-structural that you tried to slide in there – you and Random Examiner need to have that same chat about the law allowing the use of functional language, and in more than one section of 112, at that)

                Reply
              4. the law allowing the use of functional language,

                Nobody is arguing that the law doesn’t allow functional language, Billy.

                Nevertheless, and sadly for you, Section 101 does not include “new functionalities” as an example of eligible subject matter. And when the only new elements in your composition claim are new functions, then you are effectively claiming the new functionality and not a new composition.

                We all know how this ends, Billy. Like I said: it’s too bad for you. The rest of us will be celebrating.

                Reply
              5. Funny how you just cannot seem to bring out your vapid little pet theory (in name – although you do allude to it).

                Still waiting for a simple yes/no answer from you as to whether or not you would be willing to give cogent and intellectually honest answers to the the several points of mine that rip apart your little pet theory and reduce it to a simple banal theme.

                As typical, you ran away the last time we got to this point in the Crp-Run-Away-Crp Again merry-go round.

                Reply
        2. patent scheme which by definition would inhibit innovation.

          Great. No one is arguing otherwise.

          Oh wait – you want to merely except the future conjectural projection of a possibility of inhibiting innovation that in no way has ever been verified.

          Gotcha.

          Reply
          1. except the future conjectural projection of a possibility of inhibiting innovation

            It’s no more conjectural than the idea that patents advance innovation to begin with. If the idea is that right to exclude is a financial incentive to the patentee because it excludes competition, then it necessarily is a disincentive for other people to operate within the scope of the patent. Why would someone invest in research in an item they can’t commercially exploit because it’s within someone else’s scope? When the scope is tailored to what was invented, the advancement/disclosure outweighs the loss. When the scope is much larger than what was taught, the balance tips.

            When the scope granted is artificially large (for example, via a claim directed to abstract ideas or functional claiming) then the patent is functioning as a disincentive to future innovation. Further, when the claim is directed towards the same result, but via a completely different means, that is taking from the public something rightfully belonging to them until THAT inventor of those different means decides to claim:

            “For aught that we now know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff’s specification. His invention may be less complicated — less liable to get out of order — less expensive in construction, and in its operation. But yet if it is covered by this patent the inventor could not use it, nor the public have the benefit of it without the permission of this patentee.”

            Moreover, when the first scope is overbroad, even further disclosure of research by THAT inventor is inhibited, because there’s little to no incentive to disclose an advantage that was previously within his scope:

            “Nor is this all, while he shuts the door against inventions of other persons, the patentee would be able to avail himself of new discoveries in the properties and powers of electro-magnetism which scientific men might bring to light…And if he can secure the exclusive use by his present patent he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery, upon the records of the patent office.”

            And the conclusion is obvious:

            “In fine he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent. The court is of opinion that the claim is too broad, and not warranted by law.”

            Reply
            1. “Quid Pro Quo incentivizes innovation”

              “Well what if your overbroad Quo takes away other’s Quid?”

              That’s cool

              “Well, what if your overbroad Quo incentivizes you not to Quid anymore?”

              That’s fine too

              Using functional language to make overbroad claims simply isn’t allowed.

              Scoreboard.

              Reply
            2. Random Thoughts, tell us the difference between information processing patents and other patents?

              Reply
              1. Random Thoughts, tell us the difference between information processing patents and other patents?

                I did this above, but again – Coding has qualities that lends itself to mere disclosure of abstract idea. There’s nothing inherently wrong with information processing except the applicants think they can write such terrible disclosures in it.

                The majority of information processing applications are not descriptions of a solution to a problem followed by a claim to that solution (which is, btw, the only valid claim), nor are they even descriptions of a solution with an overbroad claim related to that. Instead information processing applications are descriptions of a problem and a statement that anyone of skill could program a computer to solve that problem.

                If I say “One problem faced by humanity is a lack of clean water. But one of ordinary skill in the art would know that you could have clean water by cleaning dirty water. I claim any machine that performs the function of cleaning water.” That sounds ridiculous, because everyone would understand you can’t just say you have a magic box that cleans water, you have to explain how it cleans the water.

                But you take the exact same thing in an information processing context: “One problem faced by humanity is having to ge nerate reports on X by hand. But one of ordinary skill in the art would be able to program a computer to automatically ge nerate reports on X. I claim all code which causes the ge neration of a report on X.” That kind of limitation you see all day long.

                You simply aren’t teaching anyone anything. You’re not providing anything of value at all. There’s no reason you should be given a patent because you not saying “here’s a solution to the problem” you’re saying “a solution to the problem exists and I think you’re smart enough to go find it.”

                Now, COULD one explain the steps their code takes in their patent? Yes. That’s done in every other context, because it would be ridiculous to claim cleaning water without saying how you clean water. COULD one limit their claims to their described means rather than “any means which achieves the same function”? Yes. In fact that law requires you to claim your particular means, not any solution. Does that in fact happen? No. That’s why information processing patents are terrible.

                Reply
            3. It’s no more conjectural than the idea that patents advance innovation to begin with.

              LOL – so you want to join the hunt for a modern advanced society that has done away with all IP protection laws…

              Your true colors are shining through, Mr. Anti.

              Using functional language to make overbroad claims simply isn’t allowed.

              Y.A.W.N. no more so than using structural language to make overbroad claims is likewise not allowed. Nice strawman with the ASSumed “functional language must be bad” intimation.

              Now come back to this world and US law which allows functional language in claims – under multiple sections of 112.

              Reply
              1. We all know Billy’s positions on functional claiming.

                We also know that he’s just wa n k ing away on behalf of his own wallet and doesn’t have any ground to stand on.

                Let’s just wait and see how Billy’s beloved functional claims hold up over the next year or three. After all, Billy really knows what he’s talking about when it comes to understanding trends in patent law. That’s why he’s been so far ahead of the curve when it comes to cases like Bilski and Prometheus.

                LOL.

                Reply
              2. doesn’t have any ground to stand on

                LOL – you mean, besides the actual law?

                Thanks Malcolm – that’s enough ground (and sure as sht beats your “policy”/opinion only table pounding)

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              3. Like BiLksi

                LOL – tell me again how you went into hiding for three months after that case came out because your “glorious” predictions that Diehr woudl be overturn and that ALL business methods would be outlawed came out.

                Love the Malcolm self-FAIL.

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              4. actual law

                LOL. Like the “actual law” Billy screeched about endlessly in the run-up to Prometheus.

                Go ahead and stand on your “actual law” Billy. Whatever turns your crank. If nothing else, you can bilk some more money from some s u c k e r clients before they wise up.

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              5. your “glorious” predictions that Diehr woudl be overturn

                The Diehrbot theory that you could not “dissect” claims into old and new elements when determining eligibility was certainly “overturned”, Billy. You’d have to be either a complete i d i 0 t or a ly ing sack of shirt not to acknowledge that much.

                that ALL business methods would be outlawed

                I don’t recall ever making such a prediction, Billy, at least not without indicating what I meant by “business methods.” Perhaps you can tell everyone what you mean by the term “business method” since you endlessly suggest that “business methods” are eligible per se (even though everyone understands that some “business methods” are eligible and some “business methods” are not eligible, depending on how one defines the term “business method”).

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              6. at least not without indicating what I meant by “business methods.”

                (guffaw)

                Sure, let’s go with that…

                /eye roll

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              7. are eligible per se

                And again with the unethical mischaracterization of my position.

                I have NEVER claimed a “per se” status.

                Try again.

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              8. LOL – so you want to join the hunt for a modern advanced society that has done away with all IP protection laws…

                No…I’m saying that if you believe patents provide an incentive (and clearly you must) for disclosure then it naturally follows that an overbroad patent provides a disincentive to disclosure.

                I’ll make this simple for you: Let’s say I invent a new pen, but for some reason the office mistakenly gives me a claim (and a court later upholds, or prior to a court deciding) covering all machines that assist in the function of writing. What incentive does someone have to improve upon a word processing program? None. They know they can’t sell any improvement they make, because I will sue them with my overbroad pen patent. So I have killed off or otherwise disincentivized any research into word processors when my disclosure has nothing to do with a word processor at all. When the scope is larger than what I have disclosed, it hurts research in those overbroad areas and the public gets nothing for it.

                This happens (although not to the degree) in all functional claims, because you’re not limiting yourself to what you have disclosed (your pen and it’s structural changes) but instead to the EFFECT of those changes. But there’s all sorts of completely different ways to achieve that effect.

                Like I’ve said before, you can’t invent a bow and describe and claim it as “a hand held machine for firing projectiles” because that does not enable or describe a gun. Further, it disincentives research into the gun. 112, 1st and 101 issues.

                Your true colors are shining through, Mr. Anti.

                Hardly. You mistake wanting properly-scoped claims, which is healthy for the patent system and what I want, with not wanting patents at all. I refuse to believe that it’s “anon gets what he wants or they’ll be no patents at all”.

                Nice strawman with the ASSumed “functional language must be bad” intimation.

                I routinely tell you that not all functional language is bad. Simply the way it’s commonly being used nowadays is, because when you use it in that manner you will always violate 112, 1st and 101. You CAN use structural language to describe the new feature of your machine and not have a 112 problem. If you use functional language to describe the new feature you will ALWAYS have a 112 issue.

                Now come back to this world and US law which allows functional language in claims – under multiple sections of 112.

                Point to one place in the law outside of 112, 6th that says functional language is allowed. Then point to what the requirements of 112, 6th are.

                Reply
    2. Not only Mayer, but ALL of the CAFC “actively sought guidance from [the Supreme Court] in making sense of [the Supreme Court's] section 101 jurisprudence.

      Put the blame where it rightly goes Ned: the Supreme Court punted in Alice with their Chamberlain decision.

      Reply
    3. Ned,

      Relying on disingenuous CAFC judge mongering in your attempt to re-elevate MoT is a FAIL.

      MoT is not a requirement. MoT is a clue. You really need to be intellectually honest with this point and stop trying to obfuscate the matter.

      Reply
      1. That’s like telling a hound dog to stop licking his gen itals.

        Reply
      2. Well, Mayer does seem to agree with you on the MOT because he foresaw that one could simply sprinkle the claim with irrelevant transformations of old elements to pass that test. His prediction came true when Rader relied on the MOT of old elements to uphold the claims in Prometheus.

        The failure of the majority in Bilski was not to address the “novel subject matter” issue: It is THAT subject matter must effect the transformation, and it matters less whether the old and convention elements independently passed the MOT.

        While Mayer cites Hotel Security, he does not actually cite its test or its reasoning. Even though Mayer was close, he was not actually there yet.

        Reply
        1. Once again Ned – your version is lacking.

          As I have long told you:

          Bilski: MoT not required.
          Prometheus: MoT not sufficient.

          And yet, the likes of you and Malcolm continue to attempt to transform MoT from a clue into a requirement.

          Instead of embracing what I have shared with you (which is correct, not because it is I that have shared it, but is shared by me because it is correct – see link to en.wikipedia.org , you continue to post with intellectual dishonesty in order to pursue your agenda.

          As to Hotel Security, you continue to attempt to parse and pick and choose from that case, ignoring the fact that the penultimate paragraph of that cases uses language expressly implicated by the Act of 1952.

          You continue to run away from the multitude of legal points that I have presented to you.

          You f001 no one.

          Reply
          1. Anon, as I said, the MOT as announced by the Federal Circuit in Bilski was not sufficient in that it did not discriminate against transitions involving old elements, and thus we got Rader’s opinion in Prometheus.

            Had the test been the test used in Hotel Security Where the focus of the analysis was on the novel subject matter and his relationship with any to the old But eligible, the test would’ve been complete and sufficient.

            Regarding your last point about the last clause of Hotel Security, you’re obviously confusing this case with the Guthrie case. This indicates that you have not even read Hotel Security.

            Regarding the Hotel Security line of cases, just what about them are implicated by the ’52 Act? Assuredly, you do not suggest that Congress intended to overrule Hotel Security, or for that matter the printer matter doctrine, when it enacted §103? Congress had no such intention, and it would be absurd to think that they did.

            Reply
            1. As I pointed out before, read the last paragraph of the case and note the language used in the Congressional record for the reason for splitting off from what became 101 the section of 103 and the explicit move by Congress to rescind the common law evolution tool from the Court of setting the definition of “invention.”

              This is established historical fact that you keep on ignoring, Ned.

              Reply
            2. Further, you continue to ignore the fact that is was a judicial doctrine that introduced the prohibition against Type B printed matter. You continue to ignore the fact that Type C printed matter is fundamentally different than Type B printed matter in the patent context.

              Intellectual honesty from you Ned on this point is still desired Ned.

              All of our discussions will come back to the basic points that you clench tight your eyes to. You cannot avoid the facts. You cannot avoid the law as it truly is.

              Reply
              1. Anon, you still have not read Hotel Security.

                Regardless of your thinking about “invention,” clearly giving weight or no weight to nonstatutory subject matter was not a topic discussion in ’52. Congress had no intention to upset and overturn the well-established case law that nonstatutory subject matter would be given no weight in patentability determinations. The thinking that they did is just simply and totally bizarre.

                Nonstatutory subject matter is nonstatutory. There is no debate here that nonstatutory subject matter is excluded because of some judicial doctrine. It is excluded from patentability considerations because it is not statutory.

                May I point to an analogous situation? Obviousness-type double patenting is a judicial doctrine. Double patenting itself is called statutory because of section 101. There is a distinction and a difference between nonstatutory subject matter and judicial exceptions. Your continued insistence that nonstatutory subject matter is excluded because of some judicial doctrine is completely and totally insane.

                Reply
              2. Nonsense Ned – I have read the case – the whole case (which I why I can say that you are artificially parsing the case).

                Reply
              3. Anon, from Hotel Security, 160 F. 467 (2d Cir. 1908):
                “The principal defense is lack of novelty and invention. Section 4886 of the Revised Statutes (U. S. Comp. St. 1901, p. 3382) provides, under certain conditions, that “any person who has invented or discovered any new and useful art, machine, manufacture or composition of matter” may obtain a patent therefor. It is manifest that the subject-matter of
                the claims is not a machine, manufacture or composition of matter. If within the language of the statute at all, it must be as a “new and useful art.” One of the definitions given by Webster of the word “art” is as follows: “The employment of means to accomplish some desired end; the adaptation of things in the natural world to the uses of life; the application
                of knowledge or power to practical purposes.” In the sense of
                the patent law, an art is not a mere abstraction. A system of transacting business disconnected from the means for carrying out the system is not, within the most liberal interpretation of- the term, an art. Advice is not patentable.”

                It cannot be maintained that the physical means described by Hicks, -the sheet and the slips,-apart from the manner of their use, present any new and useful feature. …[T]the claims cannot be upheld because of novelty in the appliances used in carrying it out,-for the reason that there is no novelty. ”

                The court goes on to show that even the bookkeeping Art of Hicks was old and/or obvious.

                The 2nd Circuit then concludes: “It is unnecessary to multiply authorities as we are convinced that there is no patentable novelty either in the physical means employed or in the method described and claimed in the Hicks patent.”

                But this dicta also occurred earlier:

                “If at the time of Hicks’ application, there had been no system of bookkeeping of any kind in restaurants, we would be confronted with the question whether a new and useful system of cash-registering and account-checking is such an art as is patentable under the statute. This question seems never to have been decided by a controlling authority and its decision is not necessary now unless we find that Hicks has made a contribution to the art which is new and useful. We are decidedly of the opinion that he has not, the overwhelming weight of authority being that claims granted for such improvements as he has made are invalid for lack of patentability.”

                Now, please explain how the ’52 Act affected the patentable subject matter aspects of this case — the part about “overwhelming weight of authority”?

                Reply
              4. I quoted the penultimate paragraph. It is this:

                “It is unnecessary to multiply authorities as we are convinced that there is no patentable novelty either in the physical means employed or in the method described and claimed in the Hicks patent.”

                I believe you have not read this case but are still focused on Guthrie v. Curlett, 10 F.2d 725 (2d Cir. 1926) that ended thus:

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

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

                Reply
              5. So instead, this is the one that you need to respond to my counter point as to why would Congress act to set up a limited defense to business method patents if – as you would hold – they were already non-statutory.

                You have never answered that point.

                (you do have a sizable number of points from our discussions that you have never provided cogent and intellectually honest answers to)

                Reply
              6. Ned – the simple set theory explanation of the differences between Set B printed matter and Set C printed matter wreck your attempted misuse of the Hotel Security case.

                You keep on using the case without taking into account the counterpoint provided to you – as if ignoring the counterpoint makes the counterpoint go away.

                Your purposeful ignorance is no excuse to understanding the actual law, and is in fact an ethical breach for purposefully mischaracterizing material portions of the law.

                Reply
              7. anon, regarding linking Hotel Security and Guthrie, of course I do. Hotel Security laid down principle that a business method was nonstatutory and was not patentable if claimed in combination with old, but otherwise eligible subject matter. But that was dicta in that case because the Court rested its holding on the fact that the business method aspects of the claim were old. Guthrie rested its holding in its case however on the fact that the business methods there claimed were nonstatutory and the index cards, the statutory part, were notoriously old.

                But in deciding State Street Bank, Judge Rich cited only Hotel Security and distinguish it because the business method being unpatentable part was dicta. You can see just how disingenuous that discussion of Hotel Security was given the fact that for 90 years thereafter it was followed in holding after holding.

                “So instead, this is the one that you need to respond to my counter point as to why would Congress act to set up a limited defense to business method patents if – as you would hold – they were already non-statutory.

                You have never answered that point.”

                Anon, I already told you that what happened was that we were trying to get a broad prior user right, that was resisted by some elements including universities, and we settled on the limited prior user right for business methods because there was consensus that the law there had changed in an unexpected way and people who are caught needed to be protected. At the time, people were shocked and surprised about State Street Bank. But many in the patent bar approved of the case for obvious reasons in that it expanded patentable subject matter into areas previously unknown, it anything that expanded patentable subject matter was good for the patent bar.

                People on the receiving end of business method patents had yet to be heard in Congress. But they have now been heard, with the likes of eBay, Amazon, and Wall Street all combining to oppose business method patents.

                Reply
              8. because the business method being unpatentable part was dicta. You can see just how disingenuous that discussion of Hotel Security was given the fact that for 90 years thereafter it was followed in holding after holding.

                Except for two things: it was not universally applied and it was not good law.

                As witness by the fact that Congress did not merely state that business method patents were not statutory material, but rather, formulated a limited defense to business method patents.

                You keep on coming up short in your (absence) of explaining what Congress did. The plain and simple point here Ned, is if your were to be correct, Congress would have acted very differently.

                You continue to deny this historical fact without explanation.

                Reply
              9. Your attempt at obtaining a broad Prior User Right (troublesome enough in its anti-patent effects) is really a non-sequitur to the CHOICE by Congress to provide a limited defense as opposed to the (much easier) simple proclamation that you now attempt to rewrite history with.

                You also neglect to account for the Supreme Court math that 3, the new 4, is not 5.

                Reply
              10. And your notion of “expansion ” is false.

                Look at Prof. Risch’s work on the actual state of business method patents – especially in the first fifty years of this country.

                You are simply wrong across the board here Ned – picking and choosing and over-reading case law that supports your agenda and (attempting to) ignoring all the other items that I have provided to you in our discussions.

                Reply
              11. Anon, you have to understand that many times the PTO will issue patents on what appears to be business methods when the means for carrying out the method are novel. That essentially is what Hotel Security said.

                Unless you make this distinction, you cannot have a rational discussion about what the claim is covering.

                For example, in Prometheus, the only thing that was the correlation – everything else in the claim is old and old in combination. Thus the claim was directed at the correlation as opposed to the prior process that was old.

                Ditto Alice. It was no computer invention there. The invention if anything was in the business method and the computer hardware recited was simply nominal.

                Is quite clear from the questioning by the Supreme Court judges at oral argument analysis that they got it. They were looking at the the novel subject matter in a claim and asking whether there is improvement in the computer system or whether the improvement was in the business method.

                Separate the wheat from the chaff, anon. Elevate substance over form just for a change.

                Reply
              12. the improvement was in the business method.

                Still wrong Ned – this has been your mantra since Bilski and is simply not in accord with the law that allows patents on business methods.

                Reply
            3. ..and your apparent attempts now to somehow fashion a new beast – a hyper PON MOT simply have no basis in any actual law – You are creating Ned-IMHO-Law and attempting to somehow rewrite history and replace the actual law with law you desire to have been written instead.

              Reply
              1. anon, no basis in any actual law

                This is another example of your complete insanity. I say to chapter and verse time and again in cases, and you choose to ignore them.

                It was well-established law until the advent of Judge Rich that nonstatutory subject matter would be given no patentable weight in novelty considerations. Conversely, when the claim is directed to nonstatutory subject matter the addition of the routine in conventional does not render the claim patentable.

                This was well understood law for a very long time, until Judge Rich tried to change everything, and brought the idea into being that if a claim nominally was directed to subject matter that was eligible, that all other patentability considerations had to be determined under 102/103, and no subject matter in the claim would be excluded from patentable weight.

                It is clear that Judge Rich was at war not only with Supreme Court But with the Second Circuit, and with any other case or court that he disagreed with. He overturned so many, many cases of well-established vintage that is almost impossible to count them. The man was a judicial monster; and he almost single-handedly sank the patent system.

                As Judge Meyer noted in his dissent in Bilski, he believed it was mandatory to repudiate State Street Bank because it has allowed the patent system to run amok. Repudiate, not simply overrule. And who was the author of that case? Your icon, your patent God, the man who could do no wrong, the author of the ’52 Act, a mover and shaker in the patent bar before his appointment to the CCPA, the worst judge in all history because of his agendas, Giles Sutherland Rich.

                Reply
              2. You mis-state chapter and verse.

                You ignore the corrections and continue on your pogrom.

                Again Ned – it is your versions of case law that I question. And your unwillingness to address the points that I present to you.

                Reply
    4. On the MOT, Mayer argued, “Although the Supreme Court has stated that a patentable process will usually involve a transformation of physical matter, … it has never found a process patent eligible which did not involve a scientific or technological innovation.”

      Define “scientific or technological innovation.”

      The EU has gotten itself wrapped up into knots by scattering “technical” throughout their patent-eligibility standards without ever defining what it is. The law is a mass of “software as such” and “technical character” and “technical effect” and “technical solution.”

      The best that the EU can do is to provide some rough, contrasting examples of each term. But as a result, patent disputes boil down to: “Our invention is patent-eligible because looks like invention (X), which the courts ruled to be eligible,” vs. “That invention isn’t patent-eligible because looks like invention (Y), which the courts ruled wasn’t eligible.” It’s just a mass of smell tests.

      Reply
      1. Define ‘scientific or technological innovation.’

        Asked many times.

        Number of non-circular answers provided from the typical anti’s little circle: ZERO.

        Reply
      2. David, I think Mayer was prophetic in that an MOT that did not focus on the novel aspects of the claim could easily be made a laughingstock as Rader made it in Prometheus by claiming old elements that transform.

        I also share with you concern with a test that uses undefined terms. That is why I constantly point out that we must look to the statute which states that “new” and “improved,” and “useful,” “machines, manufactures or compositions” are eligible. New and useful processes that are tied to making or using these are also statutory. Processes that are disconnected from improving the three categories, or do not involve a novel or improved use of them to produce a useful result, are also nonstatutory.

        Using an old, conventional computer to do an old and conventional thing like calculate numbers does not define a statutory process. Using an old and conventional computer to improve a disc drive, to drive a car, to smooth the waveform on a display, etc., etc., are all statutory.

        Reply
        1. You left out one of the statutory categories (AGAIN) Ned.

          The world of patents is more than just hard goods.

          Reply
        2. Processes that are disconnected from improving the three categories, or do not involve a novel or improved use of them to produce a useful result, are also nonstatutory.

          35 USC 101 reads: “Any new and useful process, machine, manufacture, or composition of matter.”

          Those four statutory classes are recited as peers, Ned. “Process” is not recited as a subset of “machine, manufacture, or composition of matter.” You can’t even argue that “process” is subordinate due to implicit factors such as the order, since “process” is actually the first item in the list.

          Using an old and conventional computer… to smooth the waveform on a display, etc., etc., are all statutory.

          So you would expect a claim providing: “A process of smoothing a waveform, comprising: apply (algorithm X) to the waveform” to be non-statutory, but “apply (algorithm X) to the waveform, and display the waveform on a display device” to be statutory?

          On the contrary, the “displaying” step seems like a hallmark example of the Federal Circuit’s “insignificant post-solution activity” under In re Bilski.

          And under Alice, if the CAFC or the Court found algorithm X to be abstract, they would ask whether the “displaying” step “adds significantly more,” and conclude that it doesn’t.

          Reply
          1. David, the changing of Art to Process is not intended to change law, and the law was as I quoted it prior to 1952. To read process as any series of steps unrelated to the other three categories is a perversion. All you have to do is read the Federal Circuit opinions in Bilski, particularly the majority opinion and the opinion by Meyer see that Art was placed into the statute to describe the process for creating a manufacture. This was a course interpreted as including new or improved machines or compositions. It was also interpreted to include the novel use of these to create new, physical results, as in the Telephone Cases.

            As an Alappat, a process that modifies a waveform for use in a display is statutory. This essentially is the same holding as in the Telephone Cases where the creation of a novel physical signal was upheld by the Supreme Court as statutory. The display itself is not have to be in the body of the claim, but it can be in the preamble.

            Reply
            1. To read process as any series of steps unrelated to the other three categories is a perversion.

              The perversion is yours Ned.

              Once again – you attempt to elevate MoT into a requirement from a clue.

              Even your beloved Royal Nine have solidly refused that aspect of your agenda.

              As I recall, you cited not to only legislative record for this notion, but to a treatise – a treatise that has a number of (now) well recognized errors.

              You really need to come into the modern world.

              Reply
            2. And on the other hand – U.S. Patent No. 8,804,839:

              1. A method for image prediction of a multi-view video codec, comprising: obtaining information about a representative disparity of a first view picture comprising a plurality of slices with respect to a second view picture comprising a plurality of slices; obtaining information about two or more regional disparities of two or more slices of the first view picture with respect to two or more slices of the second view picture; and coding or decoding the first view picture using the information about the representative disparity and the two or more regional disparities, wherein the coding or decoding the first view picture comprises differential coding or decoding, respectively, in which differences between the representative disparity and disparities of the other slices in the first view picture are used.

              Hundreds, literally hundreds, of issued patents feature claims written like this. None of them would get reversed by either the CAFC or SCOTUS, because media codecs are a class of data manipulation methods that have clear utility. Others include: encryption/decryption, hashing, general-purpose data compression/decompression, waveform manipulation, search, data synchronization, resource schedulers, watermarking, etc.

              All of these classes of algorithms have such obvious utility that the claims need not recite hardware. As long as the algorithm is adequately described and distinctly novel, it will sail through examination to issuance without a hitch.

              Reply
              1. David, the claim does not clearly operate on video signals to produce video signals for display. Why not add that into the claim just to make it certain that what is being claimed is not pure math.

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              2. David, I also think you misunderstand the basic inquiry. Is not utility. It is statutory subject matter.

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              3. Ned – 101 is both utility and statutory category.

                What else (besides category) do you mean by “subject matter”?

                Where in 101 are you reading this?

                Or is this – too – another how deep into the rabbit hole of “implicit” do we go?

                Reply
              4. anon, something that has utility but is not withing the four classes or that is not new or improve, is not statutory regardless of utility.

                Statutory subject matter is more than just utility is the whole point here.

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              5. See right here Ned is why you are so often wrong in our discussions and why your accusations that I am merely a nominalist is just so off into the weeds.

                How many times have I corrected you as to your mischaracterizations of my view on 101?

                Add another one.

                Reply
              6. David, the claim does not clearly operate on video signals to produce video signals for display. Why not add that into the claim just to make it certain that what is being claimed is not pure math.

                Ned, that’s a question of drafting style, not legal requirement.

                In some cases, I do draft my claims with something like “show the output on the display” presented. In other cases – including the one above – “displaying” might not have been included because the resulting data can be used for things besides displaying, such as simply storing the predicted image data or transmitting it to another device.

                However, you have not addressed my point. Your interpretation of current law – that a “process” must be tied to a machine, manufacture, or composition to be statutory – does not explain why thousands of patents have issued with claims such as the above, and will not be invalidated under 35 USC 101.

                Reply
              7. Ned,

                You are seriously dodging the point of David’s questions.

                I realize that you attempted no deal with David, but you need to step up your game if you want better blogging.

                Reply
              8. David, I don’t know how you can seriously contend that a video signal is not tied to a machine.

                Ned, look again at the patent claim that I posted above: there is no “video signal.”

                There is only an image that is encoded or decoded with additional information. The claim includes nothing about how the data is used, or hardware of any kind.

                A search for recently issuing patents with the word “codec” in the title or abstract will produce dozens of such patents. Similarly: “encryption,” “data compression,” “watermarking,” etc.

                My question to you is: How do you explain the fact that, post-Alice and post-Hirschfeld guidance, the USPTO is still issuing dozens of patents every week, with method claims that are not “tied to a particular machine” in any way? Are all of those patents clearly invalid under 101?

                Reply
              9. David, but the claim is to a “video codec.”

                To one of ordinary skill, the seems to state that the codec is for a video signal, something physical, for a display — a machine.

                If the codec is not tied to any kind of machine or signal, it may fail under 101 as being directed to disembodied math.

                Reply
              10. David, but the claim is to a “video codec.”

                To one of ordinary skill, the seems to state that the codec is for a video signal, something physical, for a display — a machine.

                First: Are you really taking the position that data is “tied to a particular machine” even if it includes no such language, due to the implication that the output of a “video codec” can be utilized with hardware? Even if nothing in the claim says so?

                That seems like an awfully weak reading of the machine-or-transformation test… seems like a regression to State Street, Ned. I don’t think anyone could support that proposition.

                Second: A codec such as this can be used simply to encode an image that is never displayed – e.g., machine vision. Google’s self-driving car could use this very codec to read data from its cameras, and to predict movement in the objects depicted in the multi-view images. No displaying need occur: it is simply part of the algorithm to decide how to drive.

                Of course, this is exactly my point. A method reciting only an algorithm having clear utility is patent-eligible even without reciting any hardware whatsoever.

                If the codec is not tied to any kind of machine or signal, it may fail under 101 as being directed to disembodied math.

                But it did not fail: it issued as a patent. So have dozens of patents similarly reciting methods with no hardware, post-Alice and post-Hirshfeld. None of these patents will be challenged, and none of them will be invalidated – because they are all valid under 101.

                Reply
              11. David, what are your views towards In re Nuitjen?

                Simple – that a patent claim that begins: “A signal…” does not recite one of the statutory classes of 35 USC 101, and is therefore not patent-eligible.

                In re Nuijten accurately reflects the plain statutory interpretation of 35 USC 101. While I think that the practical effect of this ruling provides a massive opportunity for blatant infringement of the disclosed invention – take the disclosed algorithm, create a blatant knockoff, put it on a server that’s not in the U.S., and allow anyone to download the knockoff – I believe that this loophole can only be closed by an act of Congress revising 35 USC 101.

                Reply
              12. Well, David, the term “video” is specific as to the kind of signal processed. I don’t think these patents are valid because they have “clear” utility. They may be valid because they have a specifically claimed utility.

                Still, we skate very close to Flook, do we not?

                And, just because the Office issues them does not mean they are valid, now does it?

                Reply
              13. And, just because the Office issues them does not mean they are valid, now does it?

                I think that we are to legally presume so…

                ;-)

                Reply
              14. Still, we skate very close to Flook, do we not?

                No, we don’t.

                In Flook, the conversion of binary to BCD is a raw mathematical process. It has no inherent use or scenario. BCD has no inherent value that binary does not: it is a different format of the same information. It begs the question: “You start with binary, you get BCD… and then what do you do with it?”

                On the other hand – U.S. Patent No. 8,804,839 enables a different technique for encoding video in a scene, using motion detection based on an alternate view of the same scene. You start with video, and you get to encoded or decoded video faster than you would otherwise. The utility is readily apparent, in the form of more efficiency. You can encode or decode video using lower-capacity processors, less battery power, and/or less time. You can encode or decode video in real-time that you couldn’t achieve using the same equipment with less efficient techniques. You can scale your server to encode or decode a larger number of video streams, without adding new hardware. Etc. There is no “and then what?” here.

                And, just because the Office issues them does not mean they are valid, now does it?

                No, but do you see any of these patents even being challenged? All of the patents that have been invalidated under 101 are for business methods (financial transactions, advertising, risk mitigation) or mental processes (MedImmune).

                Consider what the Alice Court plainly stated about the patent-ineligibility of the claims at issue:

                Viewed as a whole, these method claims simply recite the concept of intermediated settlement as performed by a generic computer. They do not, for example, purport to improve the functionality of the computer itself or effect an improvement in any other technology or technical field.

                A method that processes video faster than other methods, such as that of the patent above, inherently “improves the functionality of the computer.”

                Reply
  5. patent leather presents a timely and relevant hypothetical:

    1) a controller for a self driving car, comprising: a) a conventional pair of cameras to capture a 3-dimensional image in front of the car; b) a conventional processor programmed to receive the 3-dimensional image and [INSERT non-obvious, non-abstract, non-fundamental, non-preemptive algorithm] to determine a vector to steer the car; c) a conventional steering means to receive an electronic transmission of the vector and automatically change a direction of the car in accordance with the vector.

    and asks whether it’s statutory.

    The short answer is “no” because this is nothing more than a field-limited claim to an algorithm, and algorithms are not eligible subject matter (note: I’m assuming we are discussing a flow chart or a set of logical rules for processing information as opposed to a linear method of information processing devoid of “if-then” statements … but I don’t assume that it makes a difference).

    Per the hypothetical, nothing else in the claim is new. Indeed, the concept of robots capable of processing information with their computer brains in a manner that allows them to move about among us predates computers themselves. And of course the more information that we teach the robot to process (or that we teach the robot to teach itself), the more “competent” the robot becomes — the only limitations being memory storage requirements, processing speed and the mechanics of the robot.

    None of this is to discount the awesomeness or importance of new and useful algorithms in robot cars or robot surgeons or any other new and useful information-processing device. The point that is danced around by the Supreme Court in Flook but immediately recognizable from the beginning of the information-processing patent crxpstorm is that if you permit algorithms to be eligible for patenting — whether field limited or not — the patent system (absent counterailing measures that are inevitably perceived as “radical” by the proponents of algorithm patents — go figure) quickly turns into a swamp, ripe for exploitation by pretty much anyone with the time and money to spend acquiring information-processing patents.

    There are a variety of reasons for this but the simplest to understand is that “inventing” an algorithm requires no skills in any “useful art” whatsoever. All that is required is that I’m a human being with a brain capable of processing information. I can easily “innovate” a hundred new algorithms today related to, e.g., driving a car or gambling on the outcome of a patent case, and everyone one of them will be “useful” and you’ll have a tough time finding anticipatory prior art (and as a protective measure I’ll file a patent on an algorithm for performing that task in this specific context as well). Please note that I am not saying that every algorithm is one that can be “innovated” by a bright high school student. Not at all. The point is that there are an infinite number of algorithms at the bottom of the barrel that would be patentable (if we allow algorithms to be eligible) and, as a practial matter, the patent system is incapable of dealing with them in a manner that justice requires (both at the examination level and in the courts).

    A second (related) reason is that our patent system was conceived of and designed to promote non-abstract technology, not information-processing (for reasons having to do with the issues discussed in the previous paragraph). You can’t protect information with patents, whether that information is important for maneuvering a car or for identifying a terrorist, nor can you protect a method that merely changes one ineligible abstraction (information) into another ineligible abstraction (information) absent the recitation of a new machine in objective structural terms. If you can’t describe the novel features of your machine in terms of its objective new structure, then you haven’t invented a machine that’s eligible for patenting. If your method doesn’t recite a new combination of steps that materially changes a physical object, it’s not eligible for patenting. We can argue all day about whether the existing laws permit other inventions to be patented or not. But this is where we end up at the end of the day, i.e., where we began.

    MaxDrei writes: there is a qualitative difference betwen steering something like a car and steering a human activity like buying and selling derivatives. In navigating the line, from one to the other, you go through a border, between what subject matter is technology and what is not. Hard to define the precise line of that border.

    Actually that particular border is easy to define. It’s the difference between information-processing directed to an abstraction (“legal ownership”) and information-processing directed to an objective physical change (“movement of a car”). What’s far more difficult to define is what constitutes a patentable contribution to the “art” of writing a flowchart or any other logical “framework” in view of the vast amount of human information processing that has taken place up to the present time, almost all of which is unpublished and/or unsearchable.

    Reply
    1. contribution to the “art” of writing a flowchart or any other logical “framework” in view of the vast amount of human information processing that has taken place up to the present time, almost all of which is unpublished and/or unsearchable.

      translation: Wah.

      Reply
    2. I personally think the claim is statutory but I’m too busy this afternoon to write a lengthy rebuttal. But for starters, how do you square your position with Diehr?

      Reply
      1. how do you square your position with Diehr?

        Diehr addressed the question as to whether a claim that recited ineligible subject matter (e.g., an algorithm) was ineligible per se. That question was answered in the negative (and rightly so).

        Nothing in Diehr suggests that any claim which recites an eligible element is eligible per se. As for the claims that were found eligible by the Supreme Court in that case, I don’t really have much to say about how they relate to the sorts of things that people are trying to patent today (has anyone recently successfully patented and enforced the use of a computer applying an admittedly old algorithm in the context of an old process/device?). There was a time and a season, perhaps, when an “automatic” machine like the one claimed in Diehr might have seemed like the cat’s meow to the Supreme Court and to the relevant industry because … automatic! I’m pretty sure that time and season have passed and the Supreme Court seems to me to be distancing itself from any interpretation of Diehr that might represent a meaningful bulwark for defenders of otherwise old devices that are newly “computerized” in some manner.

        Reply
        1. Those information processing machines. Only going to replace 20+ million people over the next 10 years in the USA.

          Can’t be useful with only 20,000,000 people replaced.

          Reply
        2. LOL – you still have not squared Diehr with your ramblings and your little pet theory, as to do so reduces your pet theory to a minimal banal holding.

          You keep on wanting to kick up dust with this “pe se” notion….

          Reply
          1. MM has previously gone on record to state that the Court reached the wrong conclusion in Diehr, so he doesn’t consider it good law.

            Never mind that every major CAFC and SCOTUS decision for 30 years has cited Diehr as the quintessential example of patent-eligible subject matter. MM disagrees with the outcome, so it’s dead to him, and his legal analysis needn’t jive with it.

            Reply
    3. >There are a variety of reasons for this but the simplest to understand is >that “inventing” an algorithm requires no skills in any “useful art” >whatsoever.

      Well, to the extent that you are saying you are math and that you are worthless I would agree.

      Everything else you said is rot.

      Reply
    4. MM, well you and I disagree here. The controller is like the Rasterizer in Alappat that worked on digital inputs and outputs, but was claimed as a part of a larger apparatus, a graphics unit for a display. To the en banc Federal Circuit, it made little difference whether the algorithm was composed of circuitry (Fig. 3 of the patent) or programmed computer (a non disclosed equivalent). The claim as a whole was to a component of a machine of a larger apparatus not simply to the mathematics itself.

      The controller here is for driving a car, and novelty is very much in the algorithm and not so much in the form of its implementation, electronics or program computer. Either one is equivalent.

      Consider the disk drive for example. A lot of the inventions made over the last quarter-century were improvements in algorithms for controlling the actuator motor so as to move from track to track faster and quieter. I am sure that you would not object to patenting such improvements regardless of whether the improved disk drive was composed only of circuitry, or whether the algorithms were computed in DSPs having analog-to-digital converters and digital-to-analog converters connected to real signals.

      Reply
    5. If your method doesn’t recite a new combination of steps that materially changes a physical object, it’s not eligible for patenting.

      You still haven’t gotten the memo on MoT?

      (Hint: it was one item that all nine Justices agreed to in Bilski)

      Reply
      1. Are electrons physical, Milly Math (MM)?

        Reply
        1. Night (who has said that those who disagree with him are rapists and killers, a man for whom women have no place being directors of the USPTO, a man who continually inspires all to follow him (not) through choosing his words carefully), why don’t you just come out with it:

          Anything that reduces entropy is eligible subject matter; and those who disagree are paid bloggers, or women, or rapists and killers.

          Reply
          1. Wow, Ned!! Laying on the nonsense there. I see you have shown your true colors!!!

            >who has said that those who disagree with him are rapists and >killers,
            That is a lie. Never said that.

            > a man for whom women have no place being directors of >the USPTO,
            That is a lie. Shadow director Lee’s gender has absolutely nothing to do with my criticism of her. To suggest otherwise has no basis in fact.

            > a man who continually inspires all to follow him (not) >through >choosing his words carefully),

            Again, simply not true. Look at the record. I have introduced into this blog the Church-Turing Thesis, the conservation of information (the most important law in physics), etc.

            Ned, truly you have shown yourself to be a belly crawler.

            Reply
          2. I see Ned is losing it. You know, of course, that I am right, so the last thing you have is to throw mud.

            Fact is that MM’s game of those good algorithms that have to do with driving and medicine vs. those bad algorithms that have to do with any patent he doesn’t like is simply not a basis for real law.
            The Church-Turing Thesis tells us that MM basis is wrong. And the rule of law tells us that we should write laws and apply them and not invalidate patents because we don’t like a company.

            Reply
          3. I might the continued denial of scientific facts like the equivalency of firmware/software/hardware.

            Etc. Just bizarre that Ned and his gang try to claim they are the ones that are presenting facts. Ned sits there and misinterprets cases all day long.

            Reply
    6. MM, your argument is based on a lot of policy arguments (which I respect) and it’s clear that is how you think the world should be. But I’m just looking at the precedent.

      Applying the strict Flook test (the new material must be eligible) then yes, the claim is non-statutory. But fortunately for those in my camp, Diehr came after Flook. The two are tough to reconcile but I agree with you that the Court in Diehr may have been more “impressed” with the Diehr invention. I also think two of the justices realized that staying on board with Stevens’ anti-patent agenda and his judicial exceptions was straying too far from the language of the statute.

      I also agree with you that Diehr is incorrect when it says the 101 inquiry must be completely separate from 102/103. Some people still don’t understand this but if this were not the case then claims like claim 23 (which recites a conventional “video camera”) of 20050282140 could slip through. But post Diehr, Steven’s strict test no longer has to be followed and the strict test was never resurrected.

      The Federal Circuit Alice stated, “But danger also lies in applying the judicial exceptions too aggressively because “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., ___ U.S. ___, 132 S.Ct. 1289, 1293, 182 L.Ed.2d 321 (2012). Taken too far, the exceptions could swallow patent law entirely.”

      The Supreme Court Alice reworked this verbiage into, “At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. Mayo, 566 U. S., at ___ (slip op., at 2). At some level, “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id., at ___ (slip op., at 2). Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. See Diamond v. Diehr, 450 U. S. 175, 187 (1981) . “[A]pplication[s]” of such concepts “ ‘to a new and useful end,’ ” we have said, remain eligible for patent protection. Gottschalk v. Benson, 409 U. S. 63, 67 (1972) .”

      Thus, they added in a quote from Diehr (which says “REMAIN ELIGIBLE”), but nothing from Flook to this directive. If the Alice Court wanted to apply the strict Flook test, they easily could have done so in a very short opinion. Perhaps Breyer would have wanted this but the others wouldn’t sign on. Anyway, the test is whether the claim is “directed to” or “drawn to” an abstract idea. While what “directed to” means is not clearly defined in, it seems from Alice (and Mayo) that this means looking at the claim as a whole to determine if it is a non-preemptive real world application of an abstract idea. No instructions to perform a “strict dissection.”

      The hypothetical claim is a real world application of a “non-preemptive” and “non abstract” algorithm (granted I realize the hypothetical may be flawed in that some would say an algorithm could not be “non-abstract.”) Therefore, it is directed to a particular machine which is a practical application of the algorithm and thus not directed to an abstract idea itself, and is therefore statutory.

      Now the USPTO can take whatever strict interpretation they want (which seems to be the case since rumor has it that Lee is anti software patent), and Obama can continue to stack the Fed Circuit with anti software patent Justices. So MM you may get your wish. But according to the precedent, I hang my hat that the claim is currently statutory.

      Dennis, what do you think?

      Reply
      1. pl,

        While I do not agree with many of your views, you have stated them intelligently and openly (plainly) and should be commended.

        Reply
        1. Thanks anon, I appreciate it. Since you are “anon” (and I assume there are lots of “anons” here), I have no idea what your views are. But thanks.

          Reply
  6. Nice write-up on the history of this obnoxious tr 0ll here:

    link to arstechnica.com

    The harsh result for Vringo was bad enough that at least three other patent troll stocks also saw modest price drops.

    LOL. Any bets on how many of the p at e nt t e a b agg ers who post here are habitual gamblers at the J nk Patent Casino?

    But remember: critics of ridiculous computer-implemented horse-shirt like the claims asserted in this case are just “jealous” because we “bet on the wrong horse.”

    Sure we did.

    Keep the hits coming, folks.

    Reply
    1. Milly says not only are they bad guys but all those people on here that disagree with me are bad guys too. So they are wrong as bad guys.

      Reply
    2. LoL, just(ly) so:

      Vringo’s stock began to plummet after the ruling was released. NASDAQ halted trades on the VRNG stock for just over one hour, before allowing it to resume after noon Eastern time. The stock is down 70 percent, trading at just under $1 per share at press time.

      Reply
      1. Geez, I am going to have to follow these stock cases closer. That opinion was a no brainer given the panel. I could have made a lot of money.

        Reply
        1. I could have made a lot of money.

          You mean you didn’t patent your gambling method? Why not? Then you could have sued the people who made money. Because … innovation!

          Reply
          1. Right MM. Please do not attribute the absolute worst behavior on the part of patent applicants to all information processing applications.

            Reply
          2. Seriously MM, if ever one of these comes up again I hope someone will announce it. This was a golden opportunity lost. That decision was again a no brainer given the panel.

            Reply
            1. And, MM, I will stop calling you Milly if you stop calling anon Billy.

              I can tell that being called Milly bothers you. And, Milly’s Math makes you turn a bit red.

              Reply
          3. Because … innovation!

            Y.A.W.N.

            Malcolm and his tired “grifters” mantra, obviously still brooding over the fact that the patent office is organized under the department of commerce instead of the department of education.

            [link to the Wall Street Journal Marketwatch article "Action of spoiled 1d1ots’ don’t know how good they got it" - August 18, 2014, 6:28 AM ET By Shawn Langlois] blocked.

            Contains multiple blocked words in title and hyperlink.

            Reply
        2. Exactly. Not only that, but anyone can file for a review here shortly on a lot of cases. It’s like insider destruction for profit.

          Reply
      2. Right Mellow. They deserved to lose because they are bad people, right?

        And they are bad people because you think so.

        Reply
        1. Technically speaking they “deserved” to have the app rejected rather than granted. And not because they were “bad”, but because “the law”.

          Reply
  7. Mayer: “Instead, the inventive concept itself must be new technology, a novel application of scientific principles and natural laws to solve problems once thought intractable.”

    Ummm Judge, this was the test in Flook which was apparently overruled in Diehr:

    “Respondents’ claims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. The questions of whether a particular invention meets the “novelty” requirements of 35 U.S.C. § 102 or the “nonobviousness” requirements of § 103 do not affect the determination of whether the invention falls into a category of subject matter that is eligible for patent protection under § 101.”

    While Mayo and Alice did conflate 101 to some extent, it was seemingly to determine what the claim is “directed to”, not to determine whether the novel material was in itself eligible.

    To raise an issue sua sponte and apply outdated law just throws “due process” out the window. Mayer pulled the same sua sponte 101 rejection in Alexsam v. IDT. He also dissented in Bilski that business methods are just not patentable. At least he doesn’t beat around the bush as to his agenda.

    The law may (mistakenly, in my opinion) return to the strict Flook test (which would render all software unpatentable). But this hasn’t clearly happened yet. Some may say it has, but it hasn’t until the Supreme Court clearly resurrects this test. Mayer is Stevens’ twin, and I hope he joins Stevens in retirement soon.

    Reply
    1. When performing the 101 eligibility test, it seems to me not only reasonable and necessary but also in accordance with the aggregate of the precedent that today binds, to enquire “All in all, what actually is the claim directed to?” and then mull over whether that to which it is directed is or is not “eligible”.

      In other words, I don’t yet see that Flook and Diehr are irreconcilable.

      What is inventiveness, if not solving a problem?

      Reply
      1. First conflate 101, 102, 103, and 112, and then generate a new test that includes all four but pretends not to. Then argue endlessly about it. And, then have judges that proclaim that inventions aren’t cause they don’t like them. Absent any evidence. Just a judge that is completely ignorant of patent law and science proclaiming that an invention doesn’t add substantially more.

        Joy. No law. Go before a judge and they say guilty or innocent. Nothing more.

        Reply
    2. Patent leather cites this passage from Diehr: “Respondents’ claims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.

      To the extent that this ill-considered passage from Diehr ever prevented one from determining the relationship of the eligible and ineligible steps in a method claim to the prior art in the course of determining whether a patent claim protects ineligible subject matter, it was destroyed by the Supreme Court in Prometheus. The reason that the Supreme Court destroyed this proposition was out of pure necessity. I’m happy to explain this to you again, patent leather, although I’m sure you’ve seen (and understand) the explanation already. But do let me know.

      While Mayo and Alice did conflate 101 to some extent

      There’s no “conflation”. There is simply a necessary determination of the relationship of the eligible and ineligible elements of the claim to the prior art. This issue never goes away and it never will, unless you wish to turn the patent system into a j nk-filled swamp.

      it was seemingly to determine what the claim is “directed to”, not to determine whether the novel material was in itself eligible.

      I’ve no idea what distinction you are trying to draw here. Of course the point of the dissection is to determine whether the novel elements are eligible. That’s because if the only novel element in the claim is ineligible, then the claim is almost surely going to be protecting that ineligible subject matter, albeit in some field-limited matter. That’s not permitted. Put another way, if a patent claim prevents just one otherwise lawful actor (e.g., someone practicing the prior art) from engaging in an act that, by itself, would be ineligible for patenting, then the claim is toast.

      To raise an issue sua sponte and apply outdated law just throws “due process” out the window.

      Nobody here was denied “due process”.

      Reply
      1. Malcolm, I don’t disagree that if a claim’s only novel steps are pure “mental steps” then of course the claim must be ineligible.

        “I’ve no idea what distinction you are trying to draw here. Of course the point of the dissection is to determine whether the novel elements are eligible. ”

        I read Flook and the recent cases to be applying a somewhat different standard regarding the relevance of 102 to 101. In Flook, Stevens’ strict test required the novel elements to be eligible. Under Flook, all software would be ineligible (Stevens made it clear outside of the the Court this was his vision). It seems Mayer has this same viewpoint.

        The language in Alice (and others) is whether a claim is “directed to” an abstract idea. I read this to be a somewhat softer standard than Flook. Consider for example this claim:

        1) a controller for a self driving car, comprising: a) a conventional pair of cameras to capture a 3-dimensional image in front of the car; b) a conventional processor programmed to receive the 3-dimensional image and [INSERT non-obvious, non-abstract, non-fundamental, non-preemptive algorithm] to determine a vector to steer the car; c) a conventional steering means to receive an electronic transmission of the vector and automatically change a direction of the car in accordance with the vector.

        Statutory Malcolm?

        Under the strict Flook test, since the novelty is ineligible (algorithm), it would be unpatentable. Under the “directed to” test, the claim as a whole is directed to a self-steering car that is not an abstract idea and therefore is statutory. This is how I read the cases and thus I think this claim is statutory. But those in the “technological improvement” camp would require some novel physical aspect of the car. I don’t read Mayo or Alice to take it to this level (although I don’t doubt it could happen in the future).

        I do agree that Mayo and Alice were easily predictable considering the current composition of the Supreme Court and that those claims were both horrible test cases. I’d like to see a good test case get to the Supreme Court once and for all.

        Reply
        1. Nice job laying this out. I don’t completely agree with the framework, but within the framework good job.

          I think it highly unlikely that MM will give you a substantive response.

          Reply
        2. Do you put Europeans in the “technological improvement” camp?

          It is just that I think they do not require some novel physical aspect of the car. A data carrier bearing new and enabled software is technology. If that technology really does solve in a non-obvious way a problem in the technical field of steering cars I think it would under the EPC be good subject matter for patenting.

          I have to conclude that the American “technological improvement” camp is something else. Could you be more specific, perhaps?

          Reply
          1. Afterthought: there is a qualitative difference betwen steering something like a car and steering a human activity like buying and selling derivatives. In navigating the line, from one to the other, you go through a border, between what subject matter is technology and what is not.

            Hard to define the precise line of that border. SCOTUS will duck out of doing it until it has no other choice. But, if all goes well, its successive decisions, and those of the Feral Circuit will sharpen up the boundary.

            As the English judges say (in the context of whether a claim is valid) a little bit of residual fuzziness at the boundary is no good reason to invalidate the entire construction. Indeed, a bit of fuzziness at the boundary can be a good thing. Unless it’s the Doctrine of Equivalents, of course.

            Reply
          2. At the EPO the test is technological improvement which includes software that improves the operation of the hardware.

            Ridiculous test. Anyone that understands information processing knows this is untenable. At the EPO what you have is a marginal line. If you want to fight the marginal line, then you better have $1 million dollars. It isn’t a fun fight either.

            Reply
            1. Fighting marginal lines is what we do, isn’t it, NWPA? I fail to conceive of a patent system that has no marginal lines. Pushing the envelope never comes cheap. Not everybody needs to do it though. Especially if the envelope accords with common sense.

              In any sport, whether for kings of for poor people, fighting away from home is never as much fun as playing at home.

              Reply
              1. Well, Max, I think that works for the Europeans. But, it is not the way in the US. We like rules that we can work by. We believe this creates an incentive for innovation.

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        3. patent leather, there is absolutely no doubt that claim you framed is directed either to a new or improved machine as opposed to something essentially nonstatutory.

          I don’t think Malcolm has ever said anything to the contrary.

          Take your claim to the Supreme Court and you will have a repeat of Diehr.

          Reply
          1. I note that Ned is still playing his new pedantic game of using a shortcut of “statutory” when what he means is “statutory category.”

            Completely disingenuous of you Ned how you attempt to ignore your own professed difficulty with the Alice decision by obfuscating what the Court actually did in Alice by their total ignoring of the statutory categories.

            Reply
          2. I don’t think Malcolm has ever said anything to the contrary.

            Take your claim to the Supreme Court and you will have a repeat of Diehr.

            You would be wrong, Ned, as Malcolm has openly criticized Diehr as bad case law.

            He has forever and a day wanted that case to not exist at all, and has consistently failed to integrate that case into his short script blatherings.

            Reply
          3. Ned, my big problem with Mayer’s dissent is he states (footnote 3), “By contrast, the section 101 inquiry is broader and more essential: it asks whether the claimed subject matter, stripped of any conventional elements, is “the kind of ‘discover[y]’” that the patent laws were intended to protect. Flook, 437 U.S. at 593.”

            Trying to resurrect the “strict” Flook test (looking to see if what is new is eligible in itself). While there is currently some comingling of 101 and 102 (and I completely understand why), the strict Flook test never survived Flook. If it was resurrected then Mayo and Alice would have clearly stated so and those opinions would have been extremely short and simple. If Flook was strictly applied (as Stevens even stated in interviews), no software would be patentable which was his goal.

            In my example above, the only feature not part of the prior art is the algorithm. An algorithm itself is ineligible (although I suppose this can be debated like anything else regarding 101) thus the claim is nonstatutory according to the strict Flook test. That’s my problem with Mayer’s dissent. Raising sua sponte dicta not clearly the law. Fortunately, being on senior status he can’t participate in en banc decisions.

            “I don’t think Malcolm has ever said anything to the contrary.”–
            I don’t recall him say anything in software is statutory (but admittedly, I haven’t been following along daily, so he may have). That’s why I wanted his take on that claim. But interestingly, he’s disappeared. Wonder why?

            Reply
            1. Patent leather, regardless of what you think about Flook, virtually everyone agrees that nonstatutory subject matter can be applied or integrated into statutory subject matter in a way by which the statutory subject matter is improved. I think that was the lesson we took from Diehr.

              So the real question is whether the nonstatutory subject matter is the object of the claim or whether it is applied to improve the otherwise statutory.

              You must know that Judge Rich had an agenda and that was the final all considerations of patentability other than pure novelty into §103. Thus he was a nominalist – if the subject matter recited was a nominally directed to statutory subject matter, the patentability analysis then shifted to §103. But he also was categorically against not considering nonstatutory subject matter in the §103 analysis. The proof of this is in State Street Bank where he “overruled” the long line of cases stemming back to Hotel Security that determined that nonstatutory subject matter such as business methods or printed matter would be given no weight in the patentability analysis. He was also the author of In re Bergey, where he lectured the Supreme Court on nominalism, essentially stating that if the claim was nominally directed to statutory subject matter it passed 101, move on to 102/13/112. The Supreme Court in dicta in Diehr seemed to buy into Judge Rich’s nominalism. But that dicta only survived until Prometheus, where again the Supreme Court adopted the analysis of Hotel Security and its predecessor’s decision in Funk Brothers that nonstatutory subject matter would not be given weight in the patentability analysis.

              With Alice, we see that the approach of Hotel Security is fully restored, albeit by labeling anything nonstatutory as “abstract.”

              “Ned, my big problem with Mayer’s dissent is he states (footnote 3), “By contrast, the section 101 inquiry is broader and more essential: it asks whether the claimed subject matter, stripped of any conventional elements, is “the kind of ‘discover[y]’” that the patent laws were intended to protect. Flook, 437 U.S. at 593.”

              But of course, the kind of discovery the patent “laws” were designed to protect are “new” or “improved,” “useful,” machines, manufactures, or compositions. Simply using one of these to do something else, nonstatutory, does not make a new or improved machine, manufacture or composition.

              Reply
              1. Ned,

                You do realize of course that the “integrated” point is where Malcolm’s pet theory goes to H in a handbasket, right?

                Reply
              2. But of course, the kind of discovery the patent “laws” were designed to protect are “new” or “improved,” “useful,” machines, manufactures, or compositions.

                You forgot (again) one of the four statutory categories – with no mistake as that category is one that you seek to diminish to being nothing but a handmaiden of the hard goods categories (and your implicit error in depending too much on MoT to get you there).

                Reply
              3. Ned, in 19.2.1.3 you (I think) indicated that you think my hypothetical claim is statutory. But above you write, “…Simply using one of these to do something else, nonstatutory, does not make a new or improved machine, manufacture or composition.”

                So do you think my hypothetical claim above is statutory or not?

                Reply
              4. Patent leather, of course is patentable for the very reasons I’ve been talking about – the machine is improved.

                When I say “simply” using a machine, manufacture or composition I mean without more such that the machine manufacture or composition is not changed it anyway.

                In your example, you state that all the apparatus is old and conventional. While that might be, but with the addition of the new software, the machine actually is improved. It operates in an improved manner.

                In contrast, a computer used to calculate numbers for process that is related to determining an improved number and for no other purpose related to improving the machine or the operation of two machines together, or for improved process regarding manufactures or compositions, does not make a new machine or use a machine in a manner that is statutory.

                Reply
              5. When I say “simply” using a machine, manufacture or composition I mean without more such that the machine manufacture or composition is not changed it anyway.

                …and yet Ned refuses to address the inherency doctrine, or the fallacy known as “House/Morse.”

                …and yet Ned refuses to address (properly) the Type C different than Type B printed matter, and how that difference provides patentable weight to software as a machine component and manufacture in its own right.

                …and yet Ned refuses to address the fact that software is equivalent to firmware and is equivalent to hardware.

                ..and yet Ned refuses to address the lesson of the Grand Hall Experiment, nor acknowledge his own continued personal choice not to understand the Nazomi case.

                Reply
            2. “An algorithm itself is ineligible (although I suppose this can be debated like anything else regarding 101) thus the claim is nonstatutory according to the strict Flook test. ”

              It appears patent leather just stumbled upon the correct answer to his question.

              Reply
              1. 6, yes if you were John Paul Stevens. But Alice doesn’t quite read this way if you read carefully. The claim is currently statutory. But I don’t deny that another Supreme Court bench could expand 101 some more and render it non-statutory.

                Reply
              2. Brosef, I came up with the “alice standard” (or the way alice reads) about 5 years ago. I know all about it. Alice is nothing but a blend of the BFDB series into a glorious whole. And it meshes 100% perfectly with the “flook” standard. If you fail flook, you fail alice.

                ” The claim is currently statutory.”

                Lulz.

                Not likely ivo your admission above re the algorithm itself. But gl with that.

                Let me get this straight though patent leather, what “more” or “other inventive activity” in this claim is there other than the algorithm (which you already admitted was the non-statutory subject matter that triggered the whole inquiry)?

                Reply
              3. Sorry 6, you’re wrong.

                Alice, “Accordingly, in applying the §101 exception, we must
                distinguish between patents that claim the “‘buildin[g]
                block[s]’” of human ingenuity and those that integrate the
                building blocks into something more, Mayo, 566 U. S., at
                ___ (slip op., at 20), thereby “transform[ing]” them into a
                patent-eligible invention, id., at ___ (slip op., at 3). The
                former “would risk disproportionately tying up the use of
                the underlying” ideas, id., at ___ (slip op., at 4), and are
                therefore ineligible for patent protection. The latter pose
                no comparable risk of pre-emption, and therefore remain
                eligible for the monopoly granted under our patent laws. ”

                The hypothetical claim integrates the algorithm into a practical application. The hypothetical algorithm is “non-fundamental”, “non-preemptive”, and “non-abstract.” Thus, the claim as a whole is directed to an improved steering mechanism and is not directed to an abstract idea.

                If your view is correct then how do you explain Diehr? I don’t have the time (or desire) to debate this with you. If your view is correct, then the USPTO would shut down 100+ art units (wireless systems, signal processing, control systems, image processing, just to name a few).

                Reply
              4. “Sorry 6, you’re wrong.”

                Sure thing. Gl with that.

                “The hypothetical claim integrates the algorithm into a practical application. ”

                Gl with that too. Benson “integrated” his algorithm into a practical application and look how far that got him. Flook did the same by limiting his to a very specific field of use (like you’re doing here).

                “Thus, the claim as a whole is directed to an improved steering mechanism and is not directed to an abstract idea.”

                Except that, as you just admitted, the only thing that is “improved” or different in any fashion is the algorithm. Again, gl.

                “If your view is correct then how do you explain Diehr?”

                The same way I’ve explained it a thousand gazillion times. Missing limitations from each prior art reference with respect to the claims other than the algorithm. The same way the USSC just now got through explaining it to you. And the same way you should be explaining it to yourself. If you’d bother to actually read the references in the Diehr case maybe one day you’ll be able to explain it to yourself.

                Really, leather, sit down sometime, read the prior art in Diehr, and come up with all the missing limitations from each ref. Then, take a look at your list. Then get back to me.

                Reply
              5. “If your view is correct, then the USPTO would shut down 100+ art units (wireless systems, signal processing, control systems, image processing, just to name a few).”

                Yes, I just got through discussing just that subject internally.

                Reply
              6. Wow 6, did you read the cases and the hypothetical claim? The hypothetical said “non-fundamental” “non-pre-emptive” “non-abstract”. In Benson, the algorithm therein was on a fundamental algorithm to convert numbers between forms (“sweeping” was the word I recall the Court used). All digital computers back then may have needed this algorithm. In Flook, the claim was scant and mostly consisted of the formula (abstract) but didn’t contain limitations applying the formula (as in Diehr) which is why it was tantamount to a patent on the equation itself. In my hypothetical the inputs/outputs are clearly defined.

                Regarding Diehr, you state it was statutory because, “Missing limitations from each prior art reference with respect to the claims other than the algorithm” Care to cite me the portion of the majority opinion you are referring to?

                Reply
              7. Patent Leather: Wow 6, did you read the cases and the hypothetical claim? The hypothetical said “non-fundamental” “non-pre-emptive” “non-abstract”.

                Patent, may I suggest that the real problem with the claims to algorithms in Benson and Flood were that they were nonstatutory?

                Compositions and Laws of Nature, though discovered and not previously known, are unpatentable even though not known because they are not new. See, Myriad for the one and Flook footnote 15 for the other.

                Regarding abstract, what the Supreme Court is doing is calling both broad ideas and not statutory subject matter “abstract.” Regardless, the patent laws require, as a prerequisite of patentability, that ideas and nonstatutory subject matter equally be applied in a manner such as to produce a new physical result that is useful.

                Math is not simply an abstract idea. Rather math is nonstatutory. The problem with Benson and with Flook was that the nonstatutory math is not used, i.e., applied, to any useful end. The statutory subject matter recited in the claims in both cases was simply old and conventional and was not modified in any way by the mathematics to produce a new physical result.

                The concept that the some math less fundamental and less abstract could be patentable is naïve because it does not solve the problem that math itself is nonstatutory. To be eligible, again, nonstatutory subject matter has to be applied to the eligible, statutory subject matter in a way such as to transform it to produce a new (or improved) result. That is what happened in Diehr.

                Reply
              8. “The hypothetical said “non-fundamental” “non-pre-emptive” “non-abstract”. ”

                Where in the hypothetical did it say such an absurd thing? In the hypo it said that it was an algorithm. Which you went on to admit was non-statutory.

                Of course, if you take as a given that the claim (or algorithm) is “non-fundamental” “non-preemptive” and “non abstract” then you assumed the answer to the inquiry before you began the inquiry.

                Just fyi, this is the hypo we’re talking about:

                ” Consider for example this claim:

                1) a controller for a self driving car, comprising: a) a conventional pair of cameras to capture a 3-dimensional image in front of the car; b) a conventional processor programmed to receive the 3-dimensional image and [INSERT non-obvious, non-abstract, non-fundamental, non-preemptive algorithm] to determine a vector to steer the car; c) a conventional steering means to receive an electronic transmission of the vector and automatically change a direction of the car in accordance with the vector.”

                And you admitted later that the algorithm is non-statutory.

                The hypo itself does not say anything about presuming any of what you just said at the get go.

                “All digital computers back then may have needed this algorithm.”

                They didn’t. Nor did the court say they did. If you had any technical knowledge in this field you’d know that. The conversion was binary to bcd. Not all computers “needed” to convert between binary to BCD. That didn’t stop Benson from seeking to preempt all uses of his algorithm on a compooter. Just like you are not stopping yourself from seeking to preempt all uses of your algorithm on the only machine that it appears to be useful on (though you can add facts if you like to make it a more useful algorithm outside of this context, not that such is likely to help you, see flook).

                “In Flook, the claim was scant and mostly consisted of the formula (abstract) but didn’t contain limitations applying the formula (as in Diehr) which is why it was tantamount to a patent on the equation itself. ”

                Not technically true. They had some field of use limitations and some post-solution activity tacked on. Just like you’re tacking on the post solution activity of adding the algorithm to a car to be driven.

                “Regarding Diehr, you state it was statutory because, “Missing limitations from each prior art reference with respect to the claims other than the algorithm” Care to cite me the portion of the majority opinion you are referring to?”

                Nope, not until you do me a huge favor and go ahead and make yourself a nice and tidy list of missing limitations from each ref. (There’s only like 6 cited and only 2-3 that you really need to do, and you’ll know which they are pretty much immediately upon reading them). I can’t teach you if you refuse to do the essential things which will fundamentally help you understand what is going on.

                Besides, I’ve pointed you, and everyone else here to the part I’m citing a gazillion times. And it is easily found on your own as it is the part where the majority discusses what the patentee feels his invention is, and they describe the factual situation a bit. Even so, I will trouble myself to help you out if you’ll trouble yourself to help yourself a tiny bit first.

                ____________________

                See the real issue here is your profound lack of insight into the BFDB cases leather. Profound. If you’d take some time to dig into them for what they are then you wouldn’t be on the interbuts arguing with me (and frankly wasting my time) right now. You’d be all good to go.

                ____________________

                I will say this though leather. If, IF, your invention lead to the car being better and all this, at least you may stand a chance. I wouldn’t go admitting that the algorithm isn’t statutory if I was you though. If I were you, I’d argue that the algorithm is statutory because it improves a car. Or else I’d never say jack about the whether the algorithm is statutory or not, and simply argue that the claim, along with the algorithm as recited, is statutory because the algorithm improves the car. Who knows? You may draw a judge that doesn’t know his ar se from an algorithm and win, then get a sympathetic panel on the CAFC. Otherwise you may as well kiss the whole thing goodbye.

                Reply
              9. The concept that the some math less fundamental and less abstract could be patentable is naïve

                some math…?

                Care to explain this strawman Ned? Perhaps you are confusing the difference between pure math and applied math? Or are you conflating “Maths” (the anti-software patent hoard’s Univerisality construct) with applied math?

                What exactly is this sub-group of yours of this “less fundamental” and “less abstract” math?

                Is it the same “math” that you are allowed to obtain copyright protection for? Because, you know, that is going to be a slight problem since you are not allowed copyright protection for math….

                Reply
              10. 6:

                1) you quoted me as saying, “The hypothetical said “non-fundamental” “non-pre-emptive” “non-abstract”. ‘ and then you wrote, “Where in the hypothetical did it say such an absurd thing?”

                Ummm, where the hypothetical said, “[INSERT non-obvious, non-abstract, non-fundamental, non-preemptive algorithm”

                2) You say, “And you admitted later that the algorithm is non-statutory.”

                Any patent claim that merely said “1) a method comprising: starting with X, computing Y(x).” where Y is any function or set of logical steps is nonstatutory because it is a disembodied concept, abstract idea, mental step, etc. I”m not sure why you have to say I “admitted” it was nonstatutory. Non abstract applications of algorithms are what is patentable. Diehr, Alice (and many others) make this clear.

                3) you wrote, ” If you had any technical knowledge in this field you’d know that. The conversion was binary to bcd. Not all computers “needed” to convert between binary to BCD.

                Benson: ‘Here the “process” claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion. The end use may (1) vary from the operation of a train to verification of drivers’ licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus.’

                This is why the algorithm in Benson is “pre-emptive” and hence not patentable. The algorithm in my hypo was stated to be “non-preemptive.”

                4) going back to what you wrote earlier about Diehr, “Missing limitations from each prior art reference with respect to the claims other than the algorithm”

                I will take you up on your offer below to cite to me the portion of the Diehr majority opinion which states they found it statutory because of these “missing limitations” not found in the prior art.

                5) “See the real issue here is your profound lack of insight into the BFDB cases leather. Profound. If you’d take some time to dig into them for what they are then you wouldn’t be on the interbuts arguing with me (and frankly wasting my time) right now. You’d be all good to go.”

                Wow 6, I can see why nobody takes you seriously on these boards. You apparently view yourself as a real patent “academic” who knows it all and never considers another’s opinion. Trouble is, I’m guessing not one person on this board would agree with your analysis on anything. On second thought, don’t bother responding because I”m not going to respond to you any longer. Resorting to personal attacks and condescension just tell me you are internally very insecure and have something to prove (at least to yourself). I don’t agree with everyone here but we discuss things respectfully and acknowledge each other’s points. At the end of the day, think about why most people on these boards don’t take you seriously. I wonder if this holds true in your real life as well.

                Hasta Lavista, 6.

                Reply
              11. Hey, patent leather, give 6 a break. He has a blind spot about preemption and always had had such a blind spot. But on virtually every other matter he does have cogent comments.

                Regarding preemption itself, I think Flook did point out that “entirely preempt” is not required at all because the problem was that math was nonstatutory. In order to be patentable therefore, math had to be applied to some specific use, and it was not sufficient to refer to a broad category of uses in the preamble.

                Reply
              12. Ned, I think Flook and Diehr are very difficult to reconcile. If Diehr hadn’t come along (with its language that you shouldn’t mix 101 and 102), then I think the USPTO would never have issued any patents on software (unless another such case came along). I think Flook is pretty devastating to claims involving software for a lot of reasons including the ones you mention.

                It’s fascinating how random our judicial system really is. If Diehr hadn’t applied for his patent, most likely no software would have issued due to Flook. And Diehr was only a 6-5 decision. That’s why these things are really better left for Congress.

                Reply
              13. pl,

                Note how the anti’s despise Diehr and seek to ignore the cabining effect the case has on Flook – See Bilski.

                This is not on accident, no matter the ethical breach involved for a lawyer to omit a material part of the law in their advocacy efforts – It’s not as if they are not reminded of what the law is…

                Reply
              14. Some Juicy Bilski reminders:

                The Court is unaware of any “‘ordinary, contemporary, common meaning,’” Diehr, supra, at 182, of the definitional terms “process, art or method” that would require these terms to be tied to a machine or to transform an article.

                561 U. S. ____ (2010) at 7

                Flook took a similar approach, “assum[ing] that avalid process patent may issue even if it does not meet [the machine-or-transformation test].” 437 U. S., at 588,
                n. 9.

                561 U. S. ____ (2010) at 8

                A conclusion that business methods are not patentable in any circumstances would render §273 meaningless.This would violate the canon against interpreting any statutory provision in a manner that would render an-other provision superfluous. See Corley v. United States, 556 U. S. ___, ___ (2009) (slip op., at 9).

                561 U. S. ____ (2010) at 11

                and finally:

                Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.

                561 U. S. ____ (2010) at 14

                Funny isn’t it, how the word limitation seems lost to those who are proud believers in the Royal Nine when that word just so happens to get in the way of their pogrom?

                Reply
            3. But interestingly, he’s disappeared. Wonder why?

              Because I ate dinner, watched a movie and went to sleep.

              You expect me to sit in front of a computer answering questions about hypotheticals … on a Sunday night?!? C’mon, peeps.

              Reply
          4. “patent leather, there is absolutely no doubt that claim you framed is directed either to a new or improved machine as opposed to something essentially nonstatutory.”

            That’s interesting, it looked to me like it was directed to the algorithm. I’m not 100% sure if such algorithms are themselves eligible.

            Reply
    3. Nothing new from Mayer. Check his GraphOn v. MySpace concurrence (or dissent).

      Reply
    4. patent leather,

      A minor nit: While technically speaking the case of Diehr did alter the case of Flook in a critical manner, “Ummm Judge, this was the test in Flook which was apparently overruled in Diehr:” is not how the Court describes what happened (they do not like to use the term “overrule” so easily).

      Instead one can just look at Bilski to see how the Court describes how Diehr affected both Flook and Benson. As I have often posted, an accurate term that can be used would be the term “cabined” – to confine to a small space, or limit. See link to thefreedictionary.com

      When one takes the historical battle into perspective, noting the players on the Court as he cases have unwound throughout history (in this case, Stevens played a crucial role), one can breath better understanding into the Court decisions. The Chakrabarty and Diehr cases were Churchill type cases in reaction to the Chamberlain type cases of Benson and Flook.

      Alice could have been a Churchill case as well, but the Supremes punted. There has been others who have noted that this Court has provided a number of unanimous decisions that have been made in a “peace for our time” mode, skirting the chance to actually resolve matters. I believe that it was a National Law Journal article from a few weeks ago that addressed this (and provided several non-patent law examples).

      Reply
      1. patent leather, why do you think the Supreme Court will ever endorse patenting nonstatutory subject matter?

        Reply
      2. Anon, thanks, I suppose that is true that “cabined” is a better word than “overruled”, especially since 2 of the Flook bench switched sides in Diehr (and of course nobody likes to admit they were wrong).

        In reality, all these cases are “I’ll know it when I see it.” Once the judge decides whether they think it’s statutory or not, they then work backwards to come up with the logic. But I suppose this is how all cases are decided.

        Reply
  8. Meh … anyone else notice that this decision is NON-precedential?

    So what difference does Mayer’s improper sua sponte conflation, misdirection, and confusion make anyway?

    Looks like the non-precedential fairy made another good call.

    Reply
    1. Some of us prefer to read the writing on the wall instead of burying our heads in the sand.

      Reply
      1. Be careful calling those numbers you read “on the walls” from that truckstop restroom.

        Reply
    2. Of course it is non-p. What would be p about a straight forward obviousness call?

      Reply
      1. 6,

        I think the comment is directed to Judge Mayer and his 101 musings. The straight forward obviousness call, although interesting in its own right, given the Chen dissent, is quite separate.

        Reply
    3. Steve, I agree basically. But, the problem is who is left to hold the fort? Are we going to get another nut case as a fed. cir. judge? How much did Obama get for this appointment.

      It looks like Chen might reform himself into a decent judge. I think it is because he actually has some experience in science and patent law (and doesn’t have a depraved heart.) It is harder for the educated to burn down the system as they understand what they are doing.

      But what dixt bag is Obama going to put on the fed. cir. next?

      Reply
      1. “hold the fort”

        That sounds like you are resisting the efforts to wear you down.

        ;-)

        Reply
        1. Milly’s Math would never be able to ware me down. But, I am a realist. You can’t fight the PTO, Fed. Cir., and SCOTUS. It works when one or two of them aren’t ridiculous, but when all 3 are, then it is time to hand up the hat.

          Reply
      2. Not a big fan of a heavy moderation hand, but folks accusing sitting presidents of accepting bribes for judicial appointments seems to argue for just such a hand.

        Reply
        1. Hardly Mellow. No one said a bribe, but campaign contributions.

          Be real. Read about inside the Beltway. Educate yourself about what is going on in the patent world.

          Reply
          1. (daggit, hung myself in the filter again)

            “How much did Obama get for this appointment.”

            That was not a comment regarding ge_ne_ral campaign contributions. It was specific to the appointment itself.

            But let’s pretend your walkback is the way you originally intended it.

            It is simple enough for you to have done a donor name search on open secrets. Did you conduct this simple search prior to leveling your allegations of purchased bench seats?

            And if not, why not? Wouldn’t that have been the ethical thing to do?

            Reply
            1. “walkback”? In your dreams Mellow. I can see how you misread what I wrote, but if you look back at other posts of mine there are reports of Obama furiously raising money for the Democrats.

              “It is simple enough for you to have done a donor name search on open secrets.”

              I can see you are completely ignorant regarding politics.

              You would be best to limit your comments to patent law. At least there is some hope that occasionally you will make a worthy comment.

              Reply
              1. And, by the way, if you bothered to read the big story is how the patent world has become the object of the lobbyist on K street.

                Now, do you really think an elephant like a fed. cir. appointment isn’t being heavily lobbied right now?

                Reply
        2. And Marsher, do you want to defend the recent appointments? Tell us why there hasn’t been a person that has actually practiced patent for a significant amount of time for a long, long time.

          Reply
          1. So, Mellow runner decided to level more attacks on me and not stand up for himself. What a surprise.

            Reply
    4. Steve, to the extent you think Mayer is off base at all, well, I would suggest that you might consider yourself living in some sort of fantasy world.

      Attorney will read Mayer opinion and cite it. Judges will responds.

      I also think the PTO will respond in examinations.

      Reply
      1. Because citing to a concurring opinion (that only 1 of 3 judges signed up to) in a non-precedential case is so, um, compelling…

        NOT.

        Reply
        1. I know right anon. Ned should be banned for making such intentionally deceptive remarks. Ned is well aware that a concurring opinion is not going to be heavily cited and highly unlikely to be cited by the PTO.

          Ban the NED! Ban the Ned!

          Reply
        2. If the reasoning is compelling, it does not matter too much where the cite is found, Billy.

          I know this will be terribly difficult for you to understand.

          Reply
          1. It is comments like this that make me sure you are not an attorney, Milly.

            Reply
              1. No, because attorneys don’t cite to non-precedential concurring opinions that are bring up new issues.

                Reply
              2. Because NWPA needs a cite

                LOL – lovely AOOTWMD, as Malcolm, Ned and Random Examiner are the ones who will fall to the logical fallacy of requesting a Supreme Court citation on point of law, claiming that any direct reading of law has not been “decided” until the Supreme Court rules (and, alternatively, seeking the re-writing of law by the Royal Nine as a shortcut around the constitutionally appointed apportionment of power and authority as a manner of writing law – attempting to revive the pre-1952 availability to write law using the common law development power that Congress had earlier granted to the Court, but that had been revoked in 1952).

                Funnier yet, are the ignorant wanting to teach on what plainly has been captured in history.

                History repeats. And it is those that fail to recognize and learn from history that this most often smacks upside the head.

                Reply
  9. It seems incredible to me that Mayer is suggesting that a search engine is not patentable subject matter. Electronic information retrieval is a technological art and a software-implemented process that enables desired electronic documents to be retrieved more efficiently would seem to constitute an improvement in that technological art.

    I am not commenting on the novelty/non-obviousness of the particular search algorithm claimed in this case. I am just observing that it seems to be a bit divorced from reality to suggest that search engines aren’t in a technological art.

    Reply
  10. Mayer is trying to broaden Alice by turning it into a technology test when it clearly is not meant to be so when Bilski is considered.

    The first prong of Alice said the method was well-known that is why they moved into a tech test to see if there was anything there.

    Reply
    1. Gee Obama are we going to get another shill on the federal circuit to replace Rader? How much money are you taking for the Rader appointment Obama?

      Reply
  11. Me again. A propos eligibility, earlier today, in reply to 6, anon posted this:

    “I love the fact that you think that since I presented Tegmark, that you think that I must think that Tegmark is right, so you proceed to attempt to belittle Tegmark, thus you proceed to belittle the slashdot/techdirt software is Maths crowds, not realizing that your own reaction – to the red cape of anon says – is a reaction to the belieb system that you follow lockstep marching up your lemming hill.”

    here:

    link to patentlyo.com

    I have no idea what it all means. Is it anon’s way of telling us to take no notice of anything which he himself “presents” here? I doubt it. But if not that, then what? Has anybody any other ideas?

    I recall somebody did once observe, some months ago, that anon is specially garrulous at week-ends. Instead of staying in and posting here, he would do better to get out more. I shall now take my own advice.

    Reply
    1. I have no idea what it all means.

      LOL – of course not, pumpkin.

      It would take some thinking and understanding to have any idea. But be forewarned – thinking (especially critical thinking) may cause you to question your own unrelenting dogma of EP uber alles.

      Reply
      1. “LOL – of course not, pumpkin.”

        Of course not pumpkin it’s written in psy cho path babble-speak.

        “It would take some thinking and understanding to have any idea.”

        It would take some thinking and understanding to have any idea of what the psy chopath is saying. Just like every other time psy cho paths write in their special babble-speak.

        Reply
  12. OT but of possible interest to some readers, the IPKat blog is running a thread about the prior art effect under the AIA of WO publications in Chinese. Here is the Link:
    link to ipkitten.blogspot.de

    the issue is whether US national phase entry is needed, to trigger the prior art effect. There is interesting comment from Australia.

    Contributers Meldrew and MaxDrei suppose that entry into the USPTO is NOT needed. Mark Summerfield in Australia had supposed until now that entry IS needed. Contributer Anonymous, yesterday at 16:38, purports to know all about the USA, but seems not to know whether or not entry is needed.

    Can anybody here help?

    Reply
    1. Interesting link – thanks MaxDrei.

      I thought that a different change of the AIA: publication – on its own – anywhere in the world (and in any language) would moot the point.

      Reply
      1. What is so staggering about that comment from anon is not so much that he doesn’t appreciate what’s in the AIA. Everybody’s struggling with that.

        No, what is so staggering is that he doesn’t even understand Sections 102 and 3 of the 1952 Statute.

        Come on everybody. I am referring to the 9 out of 10 Chinese-originated WO publications that lapse before the end of the International Phase. As soon as they are WO-published, are they obviousness attacks under the AIA, that are effective as of their filing dates in China?

        An artefact of First to File. So, you know. Simple question. Yes or No?

        Reply
        1. Love the accusation, coupled with “anon does not appreciate” B$.

          You are so full of yourself MaxDrei – so hypocritical in your own soapbox “EP uber alles” and your own lack of understanding different legal systems operating in different sovereigns, always “provoking” (snicker) by the mere assumption of some “universal” law that simply does not exist.

          Wake up son.

          And wtf does “An artefact of First to File. So, you know. Simple question. Yes or No?” even mean? Are you even aware that the large bulk of Chinese filings have been critically attacked for their lack of substance? That the large bulk are indeed worthless? Or did you – as typical – merely ASSume that which feeds your own world view?

          Your ability to apply critical thinking skills needs a massive amount of work. I am afraid that your 80 cycles of 6 months experience likely makes it impossible for you to actually learn to critically think.

          C’est la vie.

          Reply
        2. So, Chinese app filed in the CN RO? I think the answer is yes, but I am not sure I understand your question.

          Reply
    2. Max, a PCT published, designating the US, is deemed published under 122(b). Section 374 states: “The publication under the treaty defined in section 351(a), of an international application designating the United States shall be deemed a publication under section 122(b), except as provided in section 154(d).”

      102 references applications published under 122(b).

      There is no language barrier.

      Reply
      1. Ned, thanks for that clarification but I do know the language point. It was anon, not me, that mentioned that red herring.

        Interesting, that nobody here yet gets the “18 month black hole” point that is being discussed on the IPKat. What is surprising for ROW is, for Americans, so acte clair as not even needing to be stated. A nice example of the difficulties of advising, across the Atlantic or between the USA and Oz.

        anon supposes the large majority of CN filings to be useless. We’ll see. But they are not absolutely useless, that’s for sure. See again the IPKat blog.

        Reply
        1. Of course they are not absolutely useless – as one CANNOT take that as a message of my post, no matter how hard you may want to try.

          They are not useless to the EXACT extent that they are not CRP filings.

          No more.
          No less.

          You keep on trying with your futile attacks on the messenger, while you keep on glossing over the message.

          Wake up son.

          Reply
      2. I will try again. Suppose I file in English at the UK Patent Office and 18 months later, my UK-A publication emerges. As a prior art attack under US law, as of what date is it effective?

        Now suppose that I file in China, in Chinese, but under the provisions of the PCT. 18 months later, my WO is published. I then withdraw abandon or let lapse my PCT application, without entering the US national phase. What date does my WO publication have, in the USA, as a prior art attack under 35 USC 103? Is it the WO publication date of the CN filing date, 18 months earlier?

        Reply
        1. Max,

          All 102 prior art is available under 103.

          English application is not prior art as of its filing date as it is not deemed published under 122(b). Its pub date is its effective prior art date.

          The filing date of the Chinese PCT designating the US is the effective date of the Chinese PCT application after publication. The failure to enter the US national stage seems without moment.

          It seems that the world has a strong incentive to file PCT first.

          Reply
          1. Ned, I’m obliged. From the IPKat, here (next single para below) is the view from the poster in AU, who supposes that US national phase entry is needed, before a WO publication gets in under the ambit of 122(b):

            “In the US, a ‘national stage’ application must be filed by meeting the requirements of 35 USC 371(c), including the filing of an oath or declaration. My understanding is that unless these requirements are met, there is no ‘application’, and thus no prior art effect”

            But you Ned, I take it, do not subscribe to that view.

            Ned, as you say, if you are going to file, then filing PCT has extra attractions. And it isn’t so expensive either, if you stop before national phase entry. Defensive filing, to keep your forweard technological path clear of the patent rights of others, is standard stuff throughout Asia. The 18 month delay, between i) the date you are prior to the patents of others and ii) your publication date, is in many fields these days, quite enough to keep ahead of the competition.

            Reply
            1. If I file a science fiction novel as a provisional patent application, doe it then become a candidate for being considered prior art (based of course, on proper reference and consideration as being published for some later non-provisional claiming some small aspect of the work of fiction and treatment of ‘publication’)?

              Or do you think that the some total contents of anything filed becomes prior art?

              Reply
  13. Having read comments 2-11 overnight, and in particular Dhuey pouring cold water on the idea of en banc review, a thought strikes me: is this Panel hunting as a pack.

    After all, it is a per curiam opinion, and Chen in his dissent has nothing to say at all about 101 eligibility.

    I put it to you then, that the Chen Dissent is in there, deliberately, at the behest of the majority, to stiffen resolve down at the PTO and with litigants in the District Courts, from now on, to do 101 first, and to do it properly (because otherwise, Chen reminds us, the obviousness issue will go on for ever).

    Reply
    1. The office engages in compact prosecution, so it doesn’t matter whether 101 is thought of first or second, both rejections have to come out in the same action. I have indeed argued many times on this board that if you don’t raise the “unfixable” rejections (101 and 112) you’re ultimately going to be worn down on unimportant 103 limitations. That is problematic.

      Reply
      1. So much in that short comment. Thanks. Problematic? You bet!

        I spy the words “worn down” and was immediately reminded of how attacks on validity go, in inter partes proceedings at the EPO.

        If all you have is prior art attacks, Art 100(a) EPC, the opposed patent will likely survive, albeit with narrower claims. Might it be wiser then, not to oppose?

        But if you have an Article 100(b) or 100(c) attack, the patent owner has to be afraid, very afraid, because such attacks (insufficiency of disclosure, matter added during prosecution) are attacks that can wipe out the patent, however many narrowing limitations the owner pumps into the claim.

        BTW, some attorney bloggers vehemently deny the existence of the “wearing down” phenomenon. MRDA! Like Mandy Rice-Davis said (almost) “Well, they would, wouldn’t they?”

        Reply
        1. The only place that I have ever seen the canard of “worn down” is from examiners who just don’t seem to get that an applicant is fixed by what is present at the filing date.

          And others who cannot seem to understand US law.

          Reply
      2. Just think Random bozo that all of these problems are being caused because you guys can’t examine a patent application. And your shadow director is not even trying to improve examination but trying to find ways to burn the system down.

        And we get some bozo getting on here voicing their opinion in light of a terrible job performance. Shameful. Shameful. Shameful.

        Focus on trying to learn your job. You are a national disgrace. Lee is a national disgrace. And when she gets her $10 million I hope the dixt bag can’t sleep at night.

        Reply
          1. Because it’s per NWPA.

            Oh, wait, forgot the hybole.

            Because it’s hy-per-bole NWPA.

            Reply
            1. How about because Lee was never confirmed by the Senate. Lee was first taken to the Oval Office to be approved by Google and other business “leaders.”

              Lee has focused on explaining the policy of why there are other incentives but patents rather than focusing on her job.

              The great disgrace is coming when Lee leaves and takes her $10 million in stock options from Google.

              Mellow: seems like I have understated how much of a disgrace shadow director Lee is to this country.

              Reply
              1. Let’s not forget the series of closed-door meetings with private industry back in the January-February timeframe of this year….

                Reply
  14. Couple points after reading the case:

    1) This citation is key, not for this case, but for most programming in ge neral – “As we have previously made clear, near simultaneous development of a claimed invention by others can, under certain circumstances, demonstrate obviousness. See Geo. M. Martin, 618 F.3d at 1305 (“Independently made, simultaneous inventions, made within a comparatively short space of time, are persuasive evidence that the claimed apparatus was the product only of ordinary mechanical or engineering skill.” (citations and internal quotation marks omitted))”

    I’ve made that argument before, and was not aware there was a case to back it up. An analysis of an invention is not a one-tailed affair that begins based on looking back from the date of filing. There are areas where the law and the MPEP specifically allow for postdated art to be cited. And even when there is no rule allowing it, there is never a rule disallowing it. Evidence is evidence for what it shows, and when there is a logical basis for using a postdated citation, that reference is valid under the standard evidentiary rule – it must be relevant to some fact in dispute and be more probative than prejudicial.

    The area where it is most ripe for use: Wherein there is an “anticipatory” post-dated reference prior to the publication date of the application under review. That reference is prima facie proof of motivation to combine.

    2) This case is a great example of why we can’t have nice things. Here the applicant was actually, you know, honest. He said A preexisted, he said B preexisted, and he said he made AB. Unfortunately for him, KSR came down and gave the motivation to combine its proper power, because there’s always a motivation to combine software functionality (that’s why the functionality exists anyway, because someone thought it would do something useful) – leading to the AB combination being obvious. The fact that they won at trial when the patentee admits both pieces of his invention in a perfectly predictable art were well known speaks volumes about both side’s trial attorneys. When Applicants are honest, rarely does that enhance one’s ability to get a claim past rejections. Applicants appear to have caught on to this, which is why you never see admissions like that any more. Honesty hurts.

    3) “Thus, while the jury found that the prior art did not disclose all of the elements of the asserted claims, J.A. 4170-71, it never determined whether it would have been obvious to one skilled in the art to bridge any differences between the prior art and the claimed invention.” This is something I’ve noticed that new examiners are especially poor at and it tends to linger until someone sets them right. I’ve also gotten arguments about this too, and I’m not sure if the attorneys actually believe or if they’re trying to capitalize on inferior skills.

    The office teaches a system where one breaks apart a claim and quotes art for each broken off limitation (or part of limitation). This creates a bias in the uninformed examiner that each limitation NEEDS a citation, and if one can’t be found the claim must be allowable. Anticipation is the epitome of obviousness, but obviousness is not a series of anticipation rejections. It’s entirely possible that the Applicant has created a limitation that has never been done before and yet that limitation would be obvious and the claim as a whole would be obvious, one would just have to logic it out. In this manner, the standard practice of the office is unfortunately rigid for the proper type of approach that needs to occur.

    Reply
    1. 4) “Section 101 mandates not only that claims disclose an advance in science or technology—as opposed to an innovation in a non-technological discipline such as business, law, sports, sociology, or psychology—but also that this advance be both significant and well-defined.” I can’t get on board with this. Section 101 does not do so. Rather the judicial exceptions may remove from 101 those other areas. Or similarly, one would argue that Congress has no constitutional authority to provide patents outside of the technical arts. Those are different statements from saying that 101 does not cover it.

      5) “Of course, if claims are drawn to the application of principles outside of the scientific realm— such as principles related to commercial or social interaction— no amount of specificity can save them from patent ineligibility.” It is entirely possible this is true, and I get that Mayer is attempting to provoke the issue, but it seems out of place for this case.

      6) “By contrast, the section 101 inquiry is broader and more essential: it asks whether the claimed subject matter, stripped of any conventional elements, is “the kind of ‘discover[y]’” that the patent laws were intended to protect. Flook, 437 U.S. at 593.” This is an inartful way of conveying the right idea. You don’t necessarily strip the conventional elements in every case. I view the guidance as follows: One has to characterize, as a threshold issue, whether the attempt is to claim “an improvement” upon a known machine. (For example, a standard computer with code that causes a new feature) When the claim does draw that characterization, the improvement must be a concrete way of achieving the improvement, not simply the scope of improving to include the feature. The court has consistently rejected as abstract ideas a claim drawn toward “old thing + new feature” where “new feature” isn’t limited to one way of doing the new feature but instead the feature itself. At that point it becomes “old thing + new abstract idea.” (You can see how this creates a possible 101 issue for all functional language) When a claim is not properly characterized in that manner, what you really have is a valid combination claim of old elements, which is eligible.

      7) “applicants who make little, if any, substantive contribution to the existing body of scientific and technological knowledge should not be afforded broad monopoly rights that potentially stifle future research and development.” If only there was some sort of statute that was put in place to limit the scope of the invention, like 112, 1st. The answer is there.

      8) Complaints aside, there’s no question these claims fail under the Alice standard.

      Reply
      1. Mayer is provoking alright, and there are many things “out of place.”

        Reply
        1. I would think you would be in favor of it, since you always point out that three is not five. Why not send it to the Supreme Court and have them conclude once and for all that business methods are eligible?

          I suspect your lack of confidence is because the court has never squarely considered the issue and you’re not sure if 3 is an accurate count. Or it might be because of a large rectangular object identifying the current number of points each team has.

          Both are excellent reasons for trepidation.

          Reply
          1. What part of 3 is not 5 do you have trouble understanding?

            No wonder you like the ‘scoreboard’ meme – you cannot read the score.

            Reply
            1. What part of 3 is not 5 do you have trouble understanding?
              Like the other few antis on this blog, he keeps dreaming/hoping that SCOTUS may have overlooked that the claims in Bilski and CLS Bank could have been characterized as “business methods” and they forgot to address that issue.

              Reply
              1. he keeps dreaming/hoping that SCOTUS may have overlooked that the claims in Bilski and CLS Bank could have been characterized as “business methods” and they forgot to address that issue.

                The question of if business methods are 101 eligible has never been taken by the court and no argument has been had on the issue. This isn’t a case of “forgetting”, this is a case of 6 justices correctly expressing no opinion on a question not before them. Clearly three justices, as well as Mayer, want the issue in front of them.

                It is entirely possible that the other 6 justices disagree. For that matter, it is also entirely possible that the 3 concurring justices would change their mind upon argument. But it’s also possible the case goes 9-0 in favor of ineligibility. We simply don’t know.

                When Scalia made that remark, he made it when the outcome of the case he was referring to was already known. To make the remark before the case is even argued is dubious reasoning. I’m chiding anon because I’m confident enough to have the fight. Have them take the issue, see what they say. It’s important and ripe for decisionmaking. I’m willing to take the “handicap” of only 3 concurring judges, and of them not disposing Bilski and CLS Bank in that manner to get the court to speak on it.

                anon mistakes the pre-game odds in Vegas for the final scoreboard. Don’t fall into his trap, as that’s only going to leave you penniless.

                Also, could you give him this message for me: “Scoreboard”

                Reply
              2. When Scalia made that remark, he made it when the outcome of the case he was referring to was already known

                …he made it as a reminder to his fellow Justice, who was in the minority on that case and who was acting as if she was in the majority.

                You really bite at this understanding law thing Random Examiner, no wonder why you whine all the time about having to deal with those who know what the law really is.

                Reply
              3. anon mistakes the pre-game odds in Vegas for the final scoreboard.

                LOL – you cannot even get the analogy right – the comparison you are looking for is what the scoreboard says now and what the final score will say (dealing with future events). There is no “Vegas odds” in the analogy, and your attempt to add it falls flat.

                Reply
            2. the comparison you are looking for is what the scoreboard says now and what the final score will say (dealing with future events). There is no “Vegas odds” in the analogy, and your attempt to add it falls flat.

              This game (the court deciding whether 101 can constitutionally encompass business methods) hasn’t even begun yet. As I’ve pointed out, there is no “three” there. There’s three justices who want the issue before them, and nobody has stated (indeed how can they know when they haven’t squarely considered it) what they’re going to do. Pre-game odds is the best analogy.

              …he made it as a reminder to his fellow Justice, who was in the minority on that case and who was acting as if she was in the majority.

              That’s right, he stopped the side that lost from spiking the ball. A skill you might seek to follow, by the way. That’s a totally different statement from an issue where there is no majority/minority win/loss yet.

              You really bite at this understanding law thing Random Examiner, no wonder why you whine all the time about having to deal with those who know what the law really is.

              I’ll consider your opinion when I lose a round. Until then you might want to consider the scoreboard, which shows me as undefeated. Please, it’s late, don’t make me dredge up your comments from the Alice posting about how you were sure you had at least 6 votes. By the way, is that scored as one point for me, or six, or nine?

              That being said, I don’t have a dog in this particular fight, as I don’t examine business method patents. This is an issue that could draw a split court. It has execution issues (how does one define a claim as a business method? One would have to adopt a technology test like Mayer does) and it has deference issues that simply didn’t exist in the so-obvious-I-can’t-believe-anyone-could-get-it-wrong Alice case. I do toss my lot in with the unconstitutional side (without particular claims to pass on) though, as most of what we would call business methods are not claims which advance the progress of science and the useful arts.

              Reply
              1. As I’ve pointed out, there is no “three” there.

                /face palm.

                And as I have pointed out, you don’t know how to read the scoreboard.

                Reply
              2. That’s right, he stopped the side that lost from spiking the ball. A skill you might seek to follow, by the way.

                LOL – way too funny, as it is a skill that I often display – if you were smart enough to understand law, you would so much more appreciate my posts (and see when you have been spiked).

                Instead, like poor MaxDrei, you continue to stumble on with your eyes clenched tight, running full speed into the walls about you. Which makes your comment “I’ll consider your opinion when I lose a round.” all the more ironic, since you are incapable of even understanding when you have lost a round. The scoreboard does not say what you merely want it to say.

                As to my prognostications on the Alice case, I was wrong – but that proves nothing as I have also explained why – the court took a Chamberlain path and not the Churchill path I thought (and hoped that they would take) – the path that I thought that they needed to take in order to give an actual answer to the punt from the CAFC. The fact that you miss this is most telling. The fact tha tyou think that this is some type of “victory” for your viewpoint is a very sad mistake on your end. That scores ZERO points for you – as you yet continue to persevere even with the decision as rendered to somehow believe that the diminished count (from 4 to 3) supports something that it clearly does not.

                That being said, I don’t have a dog in this particular fight, as I don’t examine business method patents

                You lack more than just a dog, my random examiner. You lack an understanding that the useful arts are not synonymous with the technological arts (whatever those are – note that my call for a non-circular definition continues to go unheeded). Care to give it a try?

                Reply
              3. as you yet continue to persevere even with the decision as rendered to somehow believe that the diminished count (from 4 to 3) supports something that it clearly does not.

                I’m sure when you lose this one you’ll have some reason why you lost it too. Just because you can identify why you lost doesn’t mean you were right or that you’re not now wrong, it simply means you’ve wisened up a bit. At least until your next completely incorrect quote.

                I’m going to teach you some law here: Neither the constitution nor the statute is changing, so I don’t lose until the Supreme Court speaks against me (something that routinely happens to you). The law is the law, and until the court decides an issue it ain’t decided. Any “indicators” before argument is just prognostication. Prior to that I could, if I so chose, quit my job, take the first business method defense and ride it up to the Supreme Court and have them speak on it since it’s clear they want to speak on it.

                You’re not winning because patents which may or may not be invalid are being issued. You’re just building argument on a house of cards.

                Reply
              4. We already know that some “business methods” are ineligible. Others are not (e.g. Methods that recite a new machine in objective structural terms).

                But Billy is incapable of acknowledging such nuances, which is one of the reasons Billy refuses to give us his definition of an eligible “business method”.

                Reply
              5. I’m going to teach you some law here:

                Massive FAIL.

                You cannot teach that which you do not understand.

                Reply
              6. We already know that some “business methods” are ineligible.

                We also know that some medical methods are ineligible. See Prometheus.

                Does this mean that all medical methods are ineligible?

                Have you ever defined what “medical methods” mean? Do you recognize the red herring of even suggesting the need to so define?

                Come man, try to grasp and use consistent legal logic to back up your position.

                Reply
          2. I suspect your lack of confidence is because the court has never squarely considered the issue
            Never squarely considered the issue? That statement believes your ignorance of how the courts work. The Supreme Court had that issue before them at least twice in Bilski and CLS Bank. As I reminded you once before, the Supreme Court has a great latitude in framing the question they want to address.

            In Bilski and in CLS Bank they could have easily framed the issue as “whether business methods are patentable subject matter.” They didn’t — because those advocating that position only had 4 votes the first time around and 3 votes the second time around. Since there wasn’t enough support for framing the question that way, SCOTUS knocked down those claims on (much) narrower grounds.

            To remind you (yet again), we are talking about judicially-created exceptions to 35 USC 101. There is no need for SCOTUS to say “we didn’t create an exception for business methods” because the default position is that all methods are within the scope of 35 USC 101.

            Reply
            1. Never squarely considered the issue? That statement believes your ignorance of how the courts work. The Supreme Court had that issue before them at least twice in Bilski and CLS Bank. As I reminded you once before, the Supreme Court has a great latitude in framing the question they want to address.

              They have absolute latitude in framing the question they want to address. They also have a self-imposed requirement to solve the case on narrower grounds and more well-trod issues if they can. They need not venture into the issue of creating a test for business method eligibility when they have a partially sketched out (and yes, that’s what their cases intend to do) shell for determining the boundary of abstract ideas. Why would they open another can of worms on “what constitutes a business method” when its clear their work on “what constitutes an abstract idea” isn’t done?

              They didn’t — because those advocating that position only had 4 votes the first time around and 3 votes the second time around. Since there wasn’t enough support for framing the question that way, SCOTUS knocked down those claims on (much) narrower grounds.

              Thanks for admitting that it was much narrower grounds, as that makes my job easy:

              You’re backward. The court doesn’t seek to start broadly and then move inward until it finds a majority, it starts narrowly and moves out. The court always seeks to act with the narrowest view it can maintain because that creates stability in the law. You might want to look up judicial minimalism. If your view was correct the court would have struck down Section 101 rather than applying judicial exceptions to it.

              Take a look at NASA v. Nelson, where the court went 8-0 in favor of the government on narrow grounds. The court refused to take on the broader grounds despite Scalia’s convincing concurrence arguing that the appellant couldn’t even point to what constitutional provision the government offended. Alito’s statement in Footnote 10 is entirely accurate, and ends with “We therefore decide the case before us and leave broader issues for another day.” The exact same situation applies here.

              The fact that the claims were knocked down on much narrower grounds is only evidence of what we already knew – there was a majority that could decide the issue on the narrower grounds. The fact that others have chosen to express their view on the broader issue actually means not a lick about what the holding on that issue would be, and it certainly doesn’t mean that the people who choose to not sign on to that issue are against it.

              You’re embarrassing yourself here Oh no. Please, stop while you’re behind.

              That statement believes your ignorance of how the courts work.

              hahaha. Just think of the chaos that would follow if you were right. You’d have appellants arguing particular fact issues in a criminal case (the epitome of narrowness) and the court would take it upon itself to decide the underlying constitutionality of the law (incredibly broad) despite it not being raised or briefed. Every case would not be about what was being argued but whatever the judges felt like discussing (which, by the way, is the problem with Mayer here – using the “threshold issue” language about 101 to just raise the broader issue not before the court). There would be zero uniformity in the law until the supreme court spoke on every single issue possible.

              Reply
              1. I forgot one:

                To remind you (yet again), we are talking about judicially-created exceptions to 35 USC 101. There is no need for SCOTUS to say “we didn’t create an exception for business methods” because the default position is that all methods are within the scope of 35 USC 101.

                It’s the reverse. There’s no need for the court to discuss (nor is it wise for them to raise without briefs, nor just for the patnetee to allow argument on without procedural process) whether or not business methods as a class are valid because the default position is that this particular claim before them is an invalid abstract idea.

                The reason we have judicially created exemptions to 101 is because we have a court that is smart enough not to just go around striking entire laws when Congress’ net happens to get some unconstitutional area in it. If they can cut out the unconstitutional area (and it’s clear Congress would have passed the law without that area), they do.

                That’s what some of those who belittle the Supreme Court don’t understand – the alternative to the exemptions is for the court to declare 101 unconstitutional, and then nobody gets patents until congress fixes it. None of the court, congress, the public or inventors wants that, so they don’t, despite the fact that it has been routinely made clear that there are claims which fall within the 101 scope and yet are not eligible. Under the “broadest ruling first” logic, the court would be mandated to declare 101 unconstitutional, as that is the broadest fix to the problem, and one that garners the full 9-0 support of the court.

                Reply
              2. hey also have a self-imposed requirement

                How Fn naive.

                And why is their work on what “abstract” means incomplete? Come man, the answer is easy: it is their finger in the 101 nose of wax addiction.

                The court doesn’t seek to start broadly and then move inward until it finds a majority, it starts narrowly and moves out.

                So you now know how the Court works….

                Where did you pull that out of? You need to clean off that brown stuff.

                You might want to look up judicial minimalism.

                It’s a nice concept – but it just is not the only concept in play.

                You’re embarrassing yourself here Oh no. Please, stop while you’re behind.

                Advice you should take yourself examiner.

                hahaha. Just think of the chaos that would follow if you were right.

                Um, you don’t think the Chamberlain decision has caused chaos? Keep on running full steam into that wall with your eyes clenched tight. You (almost) seem to grasp but one of the issues with the Mayer vom1tfest. Almost.

                ANd your view of the revers of the judicial exception is dead on a$$backwards of how exceptions to the law work. You seek to avoid the very reality that 3 is not 5 by the FACT that the Court instead of choosing the business method path chose instead the abstract path. You neglect the FACT that three Justices HAVE IN FACT wanted to go that path, but that 6 HAVE NOT IN FACT agreed with them. Here. Now. On the scoreboard (the game is not in the future to be started, the game has started and these cases are the game in progress – your Vegas odds add-on still falls flat).

                What you fail to understand is that your “snipping out” can very much be actual re-writing the law – which is beyond the authority of the Court to do. Put this in context that you may understand – can an applicant omit features in a claim to arrive at something unsupported by the specification and thus outside of what he possessed at time of filing? If an applicant can so do this, can a Justice likewise “snip out” some part of the words of Congress and by so doing, act like a scriviner and write law?

                Reading a map is allowed.
                Writing the map is not.

                Reply
              3. Reading a map is allowed.
                Writing the map is not.

                The court has already made the determination that the judicial exceptions are severable and that Congress would have passed 101 without them. That’s why they they threw out that bathwater rather than the whole tub.

                The fact that you don’t agree with their determination doesn’t make it wrong. If you believe they are wrong, your recourse is to tell Congress to reassert their intent and wholeheartedly repeal 101 or amend it with a nonseverability clause so that the court is forced to declare the whole thing unconstitutional. Either way though, you won’t get a patent on the ideas/laws that the Court thinks weren’t given to Congress as a power to patent.

                Your problem is with the concept of judicial review altogether. You don’t want to admit that the patent clause has limits, and that its the job of the court to stop Congress from going past those limits. You just want Congress to have that free hand and to exercise it completely. Well the court is not going to overturn Marbury just so that little anon can have his “do it on a computer” patents.

                If you force the court to declare 101 unconstitutional, it will. The only thing that will do is stop everyone from getting patents until a valid version of 101 goes back up.

                Reply
              4. You’ll never be able yo make Billy understand this stuff, RE, but hopefully you’ll succeed in helping others understand.

                Billy’s fantasy is to literally turn the clock back to 1952 and erase Prometheus so that Billy and his cohorts can protect functionality and abstractions (primarily in the computing context) with patents, without any review by the Supreme Court. If you disagree with Billy, then you are by definition a communist, Amish, or willfully ignorant of the Constitution. That’s his schtick.

                Reply
              5. News flash: the “chaos” resulting from Prometheus and Alice is nothing compared to the n utsanity that we were running into before those decisions.

                And I’d suggest stepping out of your bubble filled with screeching b o t t o m fe eders before commenting on this “chaos.” Most normal people don’t have any problem at all with these predictable and welcome decisions.

                Reply
              6. The court has already made the determination that the judicial exceptions are severable and that Congress would have passed 101 without them.

                You are speaking of the addicted proclaiming that they will not allow their own writing to become dead letters – no matter what.

                You don’t seem to be able to recognize the big picture of who is wielding an inappropriate level of power in writing law, nor why the separation of powers doctrine has been violated.

                Open your eyes. Think.

                Reply
    2. Random: you are out of your mind. The Office has the advantage in prosecution by far. Examiners should be put back on a strict TSM test.

      You are so full of it Random. There is so much art out there that examiners can find rejections and TSMs if they work at it.

      Go back to objective tests is what we need. We don’t need these ’cause test and we don’t need lammo examiners complaining about their job. If you can’t find each element in a reference and a TSM, then it should be allowed.

      You are just some giant whiner that doesn’t want to learn their art unit. That is why TSM is so good. The examiner can be found to have missed TSMs.

      Reply
      1. Let’s be clear too Random bozo that you guys do such a poor job at the PTO that it now costs clients $550,000 to have a patent examined to go to dist. court. Shameful.

        And you shadow director Lee gets up and talks about how there are other incentives besides patents rather then doing her job. She is a national shame. And her $10 million in stock options that I am sure Google will pay her for her part in burning our system down is criminal.

        Reply
        1. Let’s be clear too Random bozo that you guys do such a poor job at the PTO that it now costs clients $550,000 to have a patent examined to go to dist. court.

          I know office fees for a round of examination aren’t close to that much. It sounds like you’re complaining on behalf of your clients because you continually file RCEs/overcharge them?

          By the way, if you’re going to district court that means at least 5 people have upheld the Examiner’s work so far.

          Reply
          1. The fees are from having to engage in post grant procedures as well you know.

            Moreover, the reason we have the post-grant procedures is that the examiners do such a poor job examining.

            Goodness Random you don’t mind worming your way out of anything do you? Own up to the fact that the examiners do a terrible job and that is at the heart of the problems. Now add to it all these judicial activist that are shills for Google and we have a disaster. A registration system.

            Reply
      2. The Office has the advantage in prosecution by far.

        In most cases that’s not true.

        Examiners should be put back on a strict TSM test…There is so much art out there that examiners can find rejections and TSMs if they work at it.

        Why? That’s not the law. Besides, let’s say that’s true – if you’re going to make the argument that TSMs are always out there there’s no reason to require either a TSM or a motivation to combine. You’re proposing the test purely because you know TSMs are not always written down.

        If you can’t find each element in a reference and a TSM, then it should be allowed.

        That’s definitely never going to be the law, since the court has made it clear that patentability doesn’t depend on the draftman’s skill. You’re suggesting that the same scope can be allowed or rejected based upon the way that the attorney phrases it (perhaps by where he chooses to place the comma).

        You are just some giant whiner that doesn’t want to learn their art unit. That is why TSM is so good. The examiner can be found to have missed TSMs.

        Since I’m following my office procedure which complies with the law, it sounds more like you’re the whiner who doesn’t want bad applications to be rejected. That being said, neither the PHOSITA nor the examiner need be an automaton. If I can reason out why someone would be motivated to do something, I don’t need it written down by a third party to do so.

        Follow up question: Assuming we went back to TSM, is your suggestion that no patent should issue unless it explains why it is making all the combinations it makes? Because if you’re not willing to reject on that basis, then Applicants will never include the reason, and the end result is that five years down the line it will be easy to find elements and impossible to say why they needed to be combined. That objective test cuts both ways right?

        Reply
        1. unless it explains why it is making

          Is explaining why a requirement to obtain a patent?

          In fact, is not part of 103 put in there in a type of opposition as to “explaining why?”

          Reply
          1. Is explaining why a requirement to obtain a patent?

            Just so we’re clear – I’m in NWPA’s bizzarro world where TSM is still the required obviousness test.

            If the argument is that a combination is outside of the skill of the PHOSITA until a TSM for that specific combination is given, then the same necessarily applies to enablement.

            As I have always pointed out, and constantly do so again: You cannot, out of one side of your mouth, argue that one would not know to combine A with B (i.e. the proposed combination is non-obvious) and then out of the other side argue that A can be combined with B simply because you place the two concepts in the same document (i.e. enabled combination without particular disclosure). Any encyclopedia will place two features in the same document. Either you come to the conclusion that a specific TSM is needed to make the combo work, or you allow any reasoning to fit the bill.

            NWPA wants to go back to the TSM test, fine. I just want to make sure he is aware that it applies to his enablement as well.

            In fact, is not part of 103 put in there in a type of opposition as to “explaining why?”

            It sure is, if you give the law its proper meaning and not an overly rigid test. But that would require you to live in the actual world, and NWPA’s world.

            Reply
    3. So, the short message Random bozo—learn to do your job and shxt up. Go back to TSM and prepare to be fired if you miss TSMs in the art. That is a real job. You are a lame government employee that should not dare to speak an opinion on anything other than how to improve your job.

      The PTO is a national disaster. It is run by a woman hired by Google.

      Get real boy.

      Reply
      1. Guys, I think we broke our NWPA. Can we get another? Who else am I going to hear “enablement is the only standard of scope” from?

        Reply
      2. I’ve been with you right up to the woman bashing. Google yes, women no.

        Reply
      3. Because bald guys who prosecuted airplane toi let queue patents for IBM are always better.

        Reply
      4. Night, “The PTO is a national disaster. It is run by a woman hired by Google.

        Get real boy.”

        Now that was way beyond the pale.

        I call for a ban.

        Reply
        1. Your “call for a ban” is ludicrous, given how much you ignore the vileness of Malcolm, who goes far beyond most anything ever posted by NWPA. In fact, the “only a woman” does not even begin to approach the misogynistic posts of 6 – whom you also never seem to be bothered by (again, because 6 so often aligns with your jihads).

          Being one-sided as much as you are Ned lessens your credibility and only reinforces the notion that you are here only to shill.

          Reply
        2. I call on a ban of Ned Heller for continued ridiculous arguments regarding 101.

          Reply
          1. It is not necessarily the ridiculousness that is offensive.

            It is the plain evidence of shilling for third party interests when Ned refuses to integrate valid counter points raised that establish his views cannot stand.

            It is the CRP-runaway-CRP again merry-go-round that results.

            Reply
        3. I don’t think he was focusing on the woman part there ned. Though it is pretty bad looking how he tacked on the “get real boy” on the end. But then, that’s just a st up id phrase that his old as holds onto from long ago.

          Reply
  15. I doubt the Federal Circuit has an appetite for another en banc 101 case any time soon. I think the Supreme Court has also had its fill for at least a few years. Whatever the merits of Judge Mayer’s views, he has no vote on whether to take a case en banc.

    Reply
    1. “I think the Supreme Court has also had its fill for at least a few years”

      Only if the en banc Fed Circ manages to not f up.

      Reply
  16. Although labeled per curium, the panel majority here did an unusually thorough job of factually demonstrating [presumably from a good defendant's brief] that the jury verdict on 103 was one that no reasonable jury could have made if they had payed attention to the prior art and the spec admissions, and thus reversed, finding invalidity. Mayer just added icing to the cake that the two week jury trial on this kind of claim was a big waste of everyones time and money that could have been avoided by a 101 S.J. [Could it not have been avoided even cheaper and faster by an inter partes reexamination on the same prior art, or an IPR if only the suit had been filed a bit later?]

    Reply
    1. Did you read the dissent yet Cur? Thoughts in juxtaposition to the majority?

      Reply
      1. Where in Judge Mayers concurring [not dissenting] opinion can you read that he would have sustained, rather than reversed, the jury’s 103 decision? Quotation please?

        Reply
  17. The Supreme Court in Alice Corporation v. CLS Bank
    International, 573 U.S. __, 134 S. Ct. 2347, 2359 (2014),
    for all intents and purposes, recited a “technological arts”
    test for patent eligibility.

    Yup – just as I noted – the Supreme Court has now taken the role of scriviner itself and has inserted a word into 35 USC 101.

    How deep the rabbit hole of “implicit”? – deep enough now to be explicit.

    Beat on the CAFC long enough and they will become your B otch.

    Reply
  18. It’s “opposite tack” not “opposite tact.”

    Reply
    1. Supposedly pointing out spelling or word selection errors on this blog is the opposite of tact.

      Reply
      1. So true Mellow – and the quote of the good professor himself is a handy quote to have when those eager to charge at red capes see a grammar tree in the wrong forest and want to point out such paltry errors.

        Reply
  19. This isn’t the first time Mayer has attempted to invalidate a patent on a ground /issue not before the court. He did it in Alexam v IDT too.

    Reply
  20. Even more fundamentally, the power to issue patents is not unbounded. To the contrary, the constitutional grant of authority “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries,” U.S. Const. art. I, § 8, cl. 8, “is both a grant of power and a limitation,” Graham v. John Deere Co., 383 U.S. 1, 5 (1966);

    Not according to some on this board. You throw some “anything under the sun” language at them and they run with it past the point of exhaustion.

    Reply
    1. Mayer’s comments are way out of line with Alice. Mayer is way over his head intellectually. A brut with an axe.

      Reply
      1. The comments I quoted are completely correct. There is nothing in the quoted language at all, with the possible exception of the assessment that all business method patents are “presumptively ineligible” (which isn’t clear if he’s talking about what he believes or just giving an example of how it would help the PTO to completely shelve those kind of patents) that is improper.

        Not all patents are eligible, eligibility IS a threshold issue, and there are benefits to actually considering it first. I’ll go one further than that – this logic isn’t only applicable to 101, but there are some 112s that can be resolved as a threshold issue without either claim construction or taking evidence as to the state of the art.

        Reply
  21. As always, it’s worth checking out the claims to see how deeply down into the bottom of the barrel the US patent system has descended. In this case, we’ve pretty much broken through:

    A method for obtaining information relevant
    to a first user comprising: searching for information relevant to a query associated with a first
    user in a plurality of users; receiving information
    found to be relevant to the query by other users;
    combining the information found to be relevant to
    the query by other users with the searched information; and content-based filtering the combined information for relevance to at least one of the query and the first user.

    Anyone impressed? If so, I’ve got a bridge to sell you. It’s called the “I’m too st 00 pit to understand that lawyerly stuff so it must be awesome!” Bridge. And I’ll put it a big shiny bow on the deed, too, because … shiny! You can admire the bow when you’re sitting on a jury down the road, a task which I’m certain you’ll take very, very seriously because you’re a very serious person.

    For most ordinary patent attorneys with half a brain it takes two seconds to dispose of j nk like this. It recites nothing more than obtaining answers to somebody’s question by gathering information from other people and eliminating the non-answers “on a computer” (except the patentees in this instance were too lazy to use even that tired phrase). How this case could not have ended with massive sanctions against the patentee is one of those mysteries that must be appreciated before one can understand the miserable broken-ness of the US patent system.

    The real money quotes from Mayer are the following:

    claims do not meet the demands of section 101 simply because they recite the use of computers
    or other technology. Instead, the inventive concept
    itself must be new technology, a novel application of
    scientific principles and natural laws to solve problems once thought intractable. …

    Section 101 mandates not only that claims disclose an
    advance in science or technology—as opposed to an innovation in a non-technological discipline such as business, law, sports, sociology, or psychology—but also that this advance be both significant and well-defined. …

    Of course, if claims are drawn to the application of principles outside of the scientific realm— such as principles related to commercial or social interaction—no amount of specificity can save them from patent ineligibility.

    Well done, Judge Mayer. Nice to see that someone gets it. In contrast, Judge Chen’s dissent is the picture perfect example of someone elevating a principle above reason for no purpose except to be principled. That’s not why we have judges. That’s why we have computers.

    Reply
    1. So, “are you impressed” test from Milly. What a surprise. J. Chen was right that you need arguments and facts and not a, gee I don’t like it test.

      Typically Milly to drag us down to the “are you impressed” test.

      Let’s start convicting people too because we don’t like them or because they are bad guys in gen eral.

      Right Milly’s Math?

      Reply
    2. Forgive me if I am wrong, but doesn’t your simplification include all Internet search engines ever invented? Are you suggesting that the method of a search engine, finding all of the information relevant to a user query from a catalog of content, is not patentable?

      For a glimpse into what kind of questions someone skilled in the art around that time was asking, we need only look to a question posted on the Usenet by Larry Page himself asking how to set a User – agent string in an HTTP request using the Java programming language, link to groups.google.com

      Today, that would be common sense ($_['HTTP_AGENT'] = ‘something’), or a simple Google search. At the time, it required a Stanford PhD student to pose the question to a group of programmers. It seems to me that the majority is lending an awful lot of weight to the state of the art at the time.

      Reply
      1. Of further interesting note, a simple content management system like WordPress today would probably have run you about $100k in 1998.

        Reply
  22. Mayer definitely is trying to extend 101. Chen surprisingly took the right opinion in this case. Mayer is trying to turn 101 into a technology test, but I think he is forgetting that as a first step the SCOTUS held that Alice was notoriously well known so that the only thing they could possible add (according to Thomas) was technology. Mayer assuming that first step is always true and trying to turn the test into a technology test.

    Mayer — a person not having ordinary or extraordinary skill in the art.

    Reply
    1. as a first step the SCOTUS held that Alice was notoriously well known

      These claims are just as bad or worse than Alice’s claims any way that you want to slice them.

      Of course, if you want to pretend that merely describing a computer can perform a specific information processing task successfully means that you have invented a machine that achieves that goal, then all bets are off. Thankfully most of us understand that such mindlessness leads to the merging of “innovation” with “speculation”, which is exactly why we’ve seen hordes of rich, entitled grifters and their lawyers rushing into the broken system these past couple decades.

      Reply
      1. The SCOTUS held that the method itself was notoriously well-known, thus the movement into whether the technology added anything. That is the part that Mayer either doesn’t understand or choses to ignore (more likely given the person.)

        Reply
        1. The SCOTUS held that the method itself was notoriously well-known, thus the movement into whether the technology added anything.

          That’s not what they held. But even if it was the same would apply here. If you ever combined two class outlines from your study group in law school you have infringed the method claim.

          Reply
  23. Wow a judge that knows what he’s talking about on the Fed. Circ!

    WILL WONDERS NEVER CEASE?

    Reply
  24. Mayer: The Supreme Court has dictated that the subject matter eligibility analysis must precede the obviousness inquiry. Flook, 437 U.S. at 593 (“The obligation to determine what type of discovery is sought to be patented” so as to determine whether it falls within the ambit of section 101 “must precede the determination of whether that discovery is, in fact, new or obvious.”)

    It probably makes sense as a practical matter to look for subject matter ineligibility right off the bat because in some cases it may be easier to end the dispute (or reject the claim) by doing so. In other cases the opposite will be true. That’s because in many (nearly all?) cases the determination of eligiblity will require an analysis of the relationship of the claimed subject matter to the prior art and sometimes that relationship will end the dispute without any foray into subject matter eligibility (because the claims are anticipated or obvious).

    Here are some straightforward examples:

    1. I claim a process of calculating a desired number, comprising dividing a first number by 2.234343434 and substracting 3.43433 from the resulting number to obtain the desired number.

    That claim is ineligible. Among other reasons, it covers the mental process of calculating a number, therefore it’s quintessentially abstract and ineligible for patenting. Nobody needs to waste any time determining if the calculation (sometimes known as an “algorithm”) is “new” or “non-obvious.” So goodie for us: we saved everyone a lot of time by using our brains to find the claim ineligible “at the threshold”. Now let’s look at another example:

    2. I claim a process of optimizing medical treatment, comprising measuring a fingernail and dividing the length in centimeters by 2.234343434 and subtracting 3.43433 to obtain a test value, wherein if the test value is greater than 5.3, treatment for cancer is indicated.

    That claim is also ineligible and easily disposed of. From a legal standpoint, it’s distinguishable from the claims in Prometheus only by virtue of the fact that “fingernail measurement” is something people can do with their eyes (no physical transformation). Does the PTO need to provide evidence of fingernail measurement in the prior art (requiring an analysis of the prior art) or can it simply take “judicial notice” of that fact? You can argue about that all day long if you like. Bottom line: the claim is ineligible.

    Let’s try one more:

    3. I claim a process of optimizing medical treatment, comprising [insert elaborate series of data gathering steps here] and dividing the [insert value obtained by said data gathering steps here] by 2.234343434 and subtracting 3.43433 to obtain a test value, wherein if the test value is greater than 5.3, treatment for cancer is indicated.

    This can be a relatively difficult claim to assess for subject matter eligibility without an analysis of the prior art because of the “elaborate series of data gathering steps”. Of course, if the none of the data gathering steps are eligible themselves (i.e., they are all methods of merely “determining” things that can be determined without physical transformations) the analysis is made very easy. But if these elaborate steps require a physical transformation of matter (other than, e.g., a trivial transformation such as the use of electricity or fuel to power an old data-gathering device), then we enter another ballpark. Now it is essential that we analyze the relationship of these eligible steps to the prior art. If those steps are anticipated or obvious (=old, conventional) then the claim is ineligible. Otherwise, the claim is golden and we need not worry ourselves further with the 101 analysis (at least not outside of the context of naturally-occuring materials). We only need ask ourselves why the patentee bothered throwing the baloney about the calculation into the claim.

    I could write up an analogous series of examples for information processing or methods of profiteering (taking into account the guidance provided in Bilski/Alice) but that would be painful on a Friday evening. Maybe someone else would enjoy doing that. It’s certainly a useful exercise.

    Reply
    1. The nut cases are excited over Mayer. Mayer that should give you a clue that you are out there.

      Reply
      1. Mayer that should give you a clue that you are out there.

        Explain why.

        Reply
        1. MM: explain why

          Uh, yeah right. Play your engage and confuse the issues game. No thanks.

          Reply
  25. Chen writes that the majority’s invocation of “commonsense” unsupported by evidence, to bridge the gap from the state of the art to the subject matter of the claim, does not give enough deference to the findings of the jury.

    I like it.

    If this case has indeed been flagged up within the Federal Circuit as a candidate for en bancing, why not in that situation put on the shopping list as many hot topics as the case will admit?

    Reply

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