by Dennis Crouch
In Tuxis Tech v. Amazon, Delaware District Court Judge Andrews has invalidated asserterted claim 1 of Tuxis Tech’s Patent No. 6,055,513 – finding that the claim lacks eligibility under 35 U.S.C. 101. 2014 WL 4382446 (D.Del September 2014) (TuxisDecisionOnPleadings). Like other decisions this week, this case was decided on the pleadings.
The patent claim is related to a computerized method for individualizing up-selling based both on the identity of the purchaser and the original product being purchased. This generalized idea (the ‘gist’) is quite old in our market economy with sellers first obtaining a commitment for an initial purchase and then use that anchor to seek to add-on purchases based upon what the seller thinks might work for the buyer. Amazon does this regularly and thus was an obvious target for infringement allegations.
Of course, the ‘gist’ as described above is not what was particularly claimed, rather the claim walks through a multi-step algorithm of electronic communication and data processing. Those steps are at a fairly high level of abstraction — using action verbs such as “obtaining … transaction data”, “generating an upsell offer”, “utilizing … transaction data”, etc.
Here, Tuxis agreed that the mere notion of “upselling” is an abstract idea and with that in-hand, the court moved forward with the question of whether the claims offer an inventive concept that goes beyond upselling — answering that in the negative.
None of the limitations recited by Tuxis, however, are “meaningful.” Although the claim elements have some narrowing effect on the scope of claim 1, the practical effect is insubstantial. . . .
Claim 1 requires nothing more than suggesting an additional good or service, in real time over an electronic communications device, based on certain information obtained about the customer and the initial purchase. Shrewd sales representatives have long made their living off of this basic practice.
A simple hypothetical is instructive: A man enters a clothing store to purchase a new pair of dress slacks (“a user initiated primary transaction for the purchase of a good or service”). The sales representative assists the man in finding a pair of pants, and in the process learns that the man is a banker (“a second data element relating to the [identity of the customer]”). Knowing that suspenders are fashionable in the banking profession, the sales representative offers the banker a pair of suspenders that match his pants (“utilizing at least in part the primary transaction data including the identity of the good or service of the primary transaction and the second data element [related to the customer] and determining at least one item for a prospective upsell”). The customer agrees with the sales representative and purchases the suspenders (“receiving an acceptance of the offer … in real time”). This type of marketing strategy is at the heart of claim 1 and has been practiced as long as markets have been in operation. Conduct this transaction on “an electronic communications device” instead of in a physical store and it would be an infringing sales practice if claim 1 were valid. This cannot be permitted, as it would “tend to impede innovation more than it would tend to promote it.” Mayo.
Claim invalid.
One thing is clear – the short-circuiting of the litigation process here is a powerful tool in the hands of defendants.
= = = =
Claim 1 is as follows:
1. A method for providing offers in real time of an item constituting a good or a service in the form of offers for purchase of the item to prospective customers as users of the system, utilizing an electronic communications device, comprising the steps of:
establishing a communication via the electronic communications device between the user and the system for purpose of a user initiated primary transaction for purchase of a specific good or service,
obtaining primary transaction data with respect to the primary transaction, including the identity of the prospective customer and of the good or service for purchase in the primary transaction,
generating an upsell offer as a result of the user initiated primary transaction by:
utilizing the identity of the prospective customer to obtain at least a second data element relating to the user,utilizing at least in part the primary transaction data including the identity of the good or service of the primary transaction and the second data element and determining at least one item for a prospective upsell transaction with the prospective customer, and
offering the item to the prospective customer and receiving an acceptance of the offer from at least one user in real time during the course of the user initiated communication.
[…] case is noteworthy as an exception to an emerging rule: other courts applying Alice have granted almost all such motions to dismiss in software patent cases. That trend has led some […]
Dennis — given that this judge didn’t (and legally can’t) render an entire patent ineligible, in the name of accurate legal scholarship, the “ECommerce Patent Ineligible” headline should instead read:
“One Claim of an ECommerce Patent Ineligible” or
“Claim One of an ECommerce Patent Ineligible” or
“The Asserted Claim of an ECommerce Patent Ineligible”
Though it is of course more dramatic to say an entire patent was found ineligible rather than some subset of its claims, it’s simply not true.
This distinction is an important one.
Shouldn’t accuracy trump the inaccurate dramatic?
Especially on America’s leading patent law source?
This distinction is an important one.
LOL. Which of the other 266 claims do you think are likely to be valid, Steve?
I just learned that this is a Ronald Katz innovation. Big surprise.
Shouldn’t accuracy trump the inaccurate dramatic?
Seems like you’re the one getting dramatic here, Steve.
Steve – I see you called me out on this.
From the case: “Claim 1 of the ‘513 patent is representative of the numerous asserted claims.”
Good point, Dennis.
Respectfully (love your blog and all the hard work of you and your other writers — the patent / IP world wouldn’t be the same without PatentlyO), also from the case’s Conclusion: ” … to Dismiss for Failure to State a Claim is granted with respect to claim 1.”
These seemingly “dueling” findings / rulings raises an important question of just what the scope of the decision includes.
Has just claim 1 been ruled ineligible?
Or have all the asserted claims … since the judge has ruled(?) that they all are “represented by” claim 1?
I haven’t read the respective briefs, but would Tuxis have foolishly said — or agreed — with the terribly contention / proposition that claim 1 is representative of all the asserted claims?
Tuxis have foolishly said — or agreed — with the terribly contention / proposition that claim 1 is representative of all the asserted claims?
That would have indeed been foolish. But from a quick look, claim 1 is indeed representative not only of all the asserted claims but of all 267 claims. Even if the ruling only strictly applies to claim 1, this patent is dead. In my humble opinion, of course.
The Internet dates to July 1969. It became, to some extent, ubiquitous when America Online was sending everybody compact discs with their software in the mid 1990s.
It’s amazing to see how little it’s changed in that much time.
The Internet is 55 years old. It predates the birth of most people living on Earth, but you’d never know that to hear the computer-implementers talk about it. You’d think it was invented yesterday.
Ball point pens — “the invention that changed we write” — were invented roughly 125 years ago. Is there a legal historian out there who can remind everyone how many patents were filed on methods of using ball point pens to carry out the infinite number of business transactions that were ancient even as far back as 1888?? Or methods of using ball point pens to communicate “new” information to people?
Thanks in advance.
Your examples fail. The issue is not whether the pen/computer is eligible.
If a claim states a method with various gerrund steps, the eligibility analysis should end there. Methods and processes are a defined statutory class. End of debate.
In claims that involve computers, remove those limitations. Look at the method sans the computer aspect.
If a claim states a method with various gerrund steps, the eligibility analysis should end there. Methods and processes are a defined statutory class. End of debate.
The debate is indeed over and you lost the debate. Promethes v. Mayo. Look it up. It was a big Supreme Court case, predicted for years by many of us. It was 9-0 decision — a great one — and it completely contradicts what you’re saying.
Also it’s over 2 1/2 years old and it’s stunning that you don’t seem to understand what it was about.
My analysis was in direct response to your examples that misunderstand that tying a claim to a computer is irrelevant. Remove the computer elements and analyze the method that underlies the claim. Alice made this process abundantly clear. What we have now is a failure to consider the actual method itself.
What the courts are currently practicing (as well as you), is the following:
(1) Does the claim mention a computer or computer implementation? Ineligible unless you prove to me otherwise.
Move to step 2. (although this step is merely sophistry as the decision has already been made due to the presence of a computer)
(2) Does the method include any word, words, or steps that you’ve heard before? If so, invalidate the claim regardless of the actual details or processes involved.
Bluto: What the courts are currently practicing (as well as you), is the following:
(1) Does the claim mention a computer or computer implementation? Ineligible unless you prove to me otherwise.
It only seems this way to you. These claims scream “I’m ineligible!” even without the recitation of the computer.
Does the method include any word, words, or steps that you’ve heard before? If so, invalidate the claim regardless of the actual details or processes involved.
I have no idea what you’re talking about because that’s not the analysis that I’m using or any of the courts are using.
Judges are well aware of the fact that any attorney — indeed, any high school student or articulate middle school student — can take a simple concept and make it seem incredibly complicated. You seem to want judges to hold your hand and walk you through every obfuscation effort in the claim as if you were born yesterday. That’s never going to happen. In fact, that’s one of the driving reasons for using 101 to get rid of these invalid claims.
Also, can you explain to me the newly discovered law of nature that is implicated by the claims or the attempt to apply that law? Since Mayo reads so perfectly on this fact pattern this should pose you no problem.
The logic in Mayo isn’t limited to “laws of nature.”
Everybody knows this. Where have you been?
Bluto: “If a claim states a method with various gerrund steps, the eligibility analysis should end there. Methods and processes are a defined statutory class. End of debate. ”
Even if the method involves processing non statutory subject matter?
You have got to be kidding. That was the proposition advanced on cert. in Bilski. That proposition did not prevail.
The very good Retailers amicus in Alice asked for §101 to be put in front of cases as a threshold test before expensive litigation could proceed. They cited costs of litigation and especially of discovery and claim construction before even summary judgement as a painful setback for commerce in America.
The judges in the cited cases decided on pleadings by J Bryson and two judges in Delaware are answering the Supreme Court and the Retailers with a powerful message of support for honest business.
Delaware is second only to EDTX in patent filings, but I expect we’ll see the trolls and abusers moving out if this continues any longer. After all, judges that like abuse and corruption can just refuse decisions on pleadings and summary judgement, which no party is really ever entitled to unless the judge prefers, and keep the cases running to their courtrooms. Certain judges — perhaps even in EDTX — might just have a reputation for promoting abusive patentees and, after all, it is the plaintiff that chooses the venue.
Which is the third most common district? Central California? I’d like to see some §101 knockouts on the pleadings there, too. Keep with with the Blue Hens, Californians.
Wolfcastle below cites Eclipse IP LLC v. PayByPhone as a fine decision in Central California. Judge Wu is a Bush43 appointee. Nicely done, Judge Wu.
“One thing is clear – the short-circuiting of the litigation process here is a powerful tool in the hands of defendants.”
I agree, Dennis. It’s also clear that prevailing on these out-of-the-gate motions to dismiss is a major bummer for the defendant’s law firm. That’s the sort of win you want at the Federal Circuit after years of discovery and a jury trial.
You have to believe that the SCOTUS did that on purpose.
huzzah?
Andrew, careful now, inside counsel may be asking hard questions of outside counsel who do not even move from judgment on the pleadings.
I won’t be surprised if we see a malpractice case where a defendant prevails on a 101 motion made after lots of expensive discovery. If the 101 motion is a facial attack on the patent and there are no claim construction or other factual disputes that affect the 101 analysis, it’s hard to see any valid reason for not filing the motion at a very early stage in the case.
Andrew Dhuey: I won’t be surprised if we see a malpractice case where a defendant prevails on a 101 motion made after lots of expensive discovery.
Deep stuff, Andrew! Yes, 101 is a statute and its interpretation will affect legal strategy. Like every other statute in the United States and every Supreme Court case, if lawyers go out of their way to ignore the statute in order to drive up bills, they are opening themselves up to malpractice claims.
Of course the patent prosecutors who have been charging clients to obtain these claims which many of us have known for years were going to get thrown in the trash, they are just “zealous.”
Right, Andrew? Riiiiiiiiiiight…..
It’s also clear that prevailing on these out-of-the-gate motions to dismiss is a major bummer for the defendant’s law firm.
Is that what they told you, Andrew?
This analysis could be reigned in by Examiners and the courts using the following principles in applying Part 1 of the PTO Guidelines and Mayo approach:
(1) When determining what the claims are “directed to”, the Examiner must use the claim language and must include the important features that render the claim patentable. The non-obvious features of the claim should be included in what the claims are “directed to.” The Examiner cannot broadly characterize the claim in a way that does not encompass the features that are non-obvious. Otherwise, the characterization of what the claims are “directed to” has no meaning in the context of the claim. Applicants cannot argue that the invention is X, where X is not in the claim language. Neither should the courts or the patent office be able to argue that the invention is directed to Y, if Y is not in the claim language.
(2) If the abstract idea appropriately characterized in (1) above is asserted to be a fundamental economic practice by the Examiner/court, then they must also provide evidence, as the Supreme Court did, that the practice covered by the claim was “long prevalent in our system of commerce.” This is the equivalent of a prior art analysis where evidence must be cited.
Isaacs, I think the PTO has a hard time with 101 ever since Alappat and State Street Bank.
I assume you are aware that under prevailing Federal Circuit and Supreme Court case law that non statutory subject matter is given no weight in 102/103 analysis. It will be interesting to see whether the PTO follows the law, or gets lost.
Under Alice, the prong “long prevalent in our system of commerce” was supported by the Supreme Court with citations to text books, showing its prior use. They did not call it “prior art” or a 1o2/103 analysis but that is exactly what they did.
Ned: I assume you are aware that under prevailing Federal Circuit and Supreme Court case law that non statutory subject matter is given no weight in 102/103 analysis.
I don’t assume anything anymore, Ned.
I’m beginning to operate under the assumption that people who draft computer-implemented claims for a living are incapable of reading or understanding any case law.
MM, agreed.
On a different note, check out In re Huai-Hung Kao, 639 F.3d 1057 (Fed. Cir. 2011) link to scholar.google.com
Linn, Rader and Moore giving no weight to printed matter. The issue of whether prior cases held the claim invalid because the nonstatutory subject matter was known or obvious was decided here. It makes no difference whether the nonstatutory information was know or unknown.
Can you imagine it? Rader getting a 101 case right?
Can you imagine it? Rader getting a 101 case right?
I imagined agreeing with him on the subject matter eligibility of Myriad’s claims but he didn’t get to write those cases. 😉
I haven’t thought about HHK in a while. Worth revisiting.
Ned and MM: What do you call on page 9 of the Alice Slip Opinion to the Studies in History, Economics and Public law from 1896 for the concept of a clearing house being “long prevalent in our system of commerce.”? My point is that under the Supreme Court Analysis under section 101, for abstract ideas, they include a 102/103 like component where they cite a document to show that the concept is “long prevalent.” That is the same essential analysis as 102.
Isaacs, good observation this.
From the later discussion, this text was cited to show that intermediate settlement was, like hedging in Bilski, a fundamental economic practice.
This did not mean, I think, that the particular method claimed was not new or non obvious. The court never went that far.
But thanks for the cite.
The non-obvious features of the claim should be included in what the claims are “directed to.”
Only if those non-obvious "features" are eligible on their own terms.
Otherwise your "test" doesn't achieve what it must achieve.
Neither should the courts or the patent office be able to argue that the invention is directed to Y, if Y is not in the claim language.
Given that the patent can be his/her own lexicogrpaher, that is an absurd requirement for an eligibility test.
Reformatted:
The non-obvious features of the claim should be included in what the claims are “directed to.”
Only if those non-obvious “features” are eligible on their own terms.
Otherwise your “test” doesn’t achieve what it must achieve: exclusion of claims that recite a data gathering step followed by an ineligible but non-obvious mental step.
Neither should the courts or the patent office be able to argue that the invention is directed to Y, if Y is not in the claim language.
Given that the patent can be his/her own lexicographer, that is an absurd requirement.
MM: When I prosecute a patent application through the patent office, if I argue the “invention” is patentable because it does X, let’s say a step of transmitting a result to a device. But that limitation is not in the claim, the PTO will respond by pointing out that that feature is not the invention because it is not recited in the claim language. Therefore, the argument is given no weight. Then when you amend the claim language to include X, the argument finally works and if the claim is novel and non-obvious, it is allowed. My problem is that we should not allow the Patent Office to define the invention as being “directed to” X, when that language is not in the claim or the characterization is simply a broad abstraction of the particular limitations within the claim that rendered the case allowable. The invention is defined by the claim language. Of course the patentee can be his own lexicographer. That has no bearing on a requirement that the characterization of what the claim is “directed to” should include the actual claim language. Otherwise, there is way too much leeway with the PTO and litigators/judges on striking down claims that are novel and non-obvious. This requirement would move the pendulum back to the middle a bit.
Everyone should take a moment to contemplate the fact that these judges are invalidating patents with little or no evidence. They are telling us how they think about the patents —not using evidence of how one skilled in the art would think about the patent. They are making their own 103 jumps with no evidence and anecdotal stories.
It is outrageous to anyone that cares about the law. The 1952 has been replaced by a new law of the SCOTUS. It is call appropriately Alice.
Have you seen yesterday’s Eclipse IP LLC v. PayByPhone ruling? At least the judge in that case was pretty honest in admitting that the 101 standard is now basically the “we know it when we see it” standard that was set for hard-core porn
I’ll check it out. I assume he said this is hard core porn.
Yup, no 1st amendment/101 eligibility…
…brown chicken, brown cow…
Night, I do not agree. If the claims recite generically old computer hardware, it is very easy to see that the rest is nonstatutory. If that subject matter does not produce an improved machine, then it is clearly not patentable.
That said, when we get into biology, I don’t know for a fact whether the statutory subject matter in the claim is old or new. I don’t know whether a court can make that finding on its own accord either.
Alappat. That case written before the great policy wars and before the U.S. was bought by off by big corp. The new gilded age is here. That means either you are very rich are you are wrong.
And by the way Ned, Alappat got the science right. That is indisputable by any scientist.
Night, The major powers were pushing for the patenting of software back in the ’60s. Rich and the CCPA sought to facilitate. The Supreme Court (and at first the PTO) were and still are resistant.
After 50 years, it appears that the dust has finally settled. Let the era be known as the 50-year war. The Don Quixote character will be played by Sir Giles Rich. His faithful acolyte and keeper of the flame by Squire Randy Rader.
Major roles will be played by Richard H. Stern as the Sheriff of Nottingham, Justice Douglas as Black Night, Justice Stevens, Breyer and Thomas as Douglas’ acolytes.
Also appearing late in the contest, in the role of Joan de Arc, is Malcolm Mo0ney. Mooney, as St. Joan de Arc, took up the fallen banner after the battle of State Street Bank where the forces of Stern look all but beaten. Together with his fans on Patently-O, they rallied the demoralized troops and won the war, driving Squire Rader from the battlefield entirely after the great battles of Mayo and Alice.
The battle was epic and shall long live in patent lore.
Well you forgot the second biggest player Mark Lemley and the biggest player big corp. And your black flag with “Anti” in a circle.
But, Ned, really, the SCOTUS has not held what you say it did. There are now only 3 that hold to the medieval Stevens dissent in Bilski.
Right now what we have is a rouge SCOTUS that is rebelling against the rightful laws of the Congress and President that is more influenced by Google than at least 200 million citizens of the U.S.A.
Fear not for we still have science on our side and science has a way of winning in the long run.
Right…. Lemley. What character best describes his role?
An angel of the Lord who suddenly appeared bringing new tidings of hope to those who manned the barricades in a desperate last stand again the rampaging horde of trolls unleashed by Don Quixote at the battle of State Street Bank?
>>angel of the Lord
Ned, seriously?
Yeah, I know, Night. Not quite right.
Let’s see….
Ahh…
The False Prophet!
You’re using the wrong test – it’s not what they THINK about the patents, it’s how the patent SMELLS.
Not surprisingly, these early “low hanging [Apple] fruit” cheap 1o1 ab initio litigation disposals have set off a massive “blame game.” This is to suggest one source of blame being conveniently overlooked:
I wonder if any of the major [non-troll] companies that have been extensively assigning patents to patent trolls [professional PAEs if you prefer] to “monetize” realize that they have reduced the value of the rest of their patent portfolio as well by all the media, legislative, exectutive branch, and judicial backlash against patent enforcement that these patent trolls have generated in widely suing on those tens of thousands of troll-assigned patents? Especially the recent Sup. Ct. decisions on 101 [as here], on sanctions, on claim ambiguity, etc. Already this conduct bred the AIA IPR and the AIA non-joinder venue transfer assist. Furthermore it is breeding a very good chance for strong anti-troll [anti-patent -enforcement] legislation next term, especially with the expected Republican Senate majority. [Remember the vote in the Republican House passing the tough Goodlatte Bill?]
*Congress is also waking up to the fact that often these patent “sales” to a troll shell company actually retain a significant secret financial interest in the settlement and lawsuit recoveries by the original patent owner.
I’m quite sure that the savviest of these players have known for quite a while that the curtain was going to close. The idea was to strike while the iron was hot, use the system to grab the cash, wait for the courts and the public to lose patience, then divest, and watch the losers scrounge around for crumbs. The broken patent system? Whatever. Let someone else worry about it.
MM, I agree. The fire sale on business method patents must have been underway for some time.
I also think that enforcement firms have known or should have known that the handwriting was on the wall — unless they were advised by many of the posters here that think that a programmed computer is per se patentable subject matter. If I lost my shirt in response to legal advice from these folks, I’d be out for blood. Perhaps class actions might be appropriate.
I don’t think that’s really what’s going on here.
It isn’t big companies monetizing their portfolios through trolls that make up the really big abusive cases. The scan to email patents, the i4i patents, the eolas patents, the NTP patents, the podcast patents, the uniloc patents, Alice and Bilsky, and Prometheus all have in common that not one of the original filers was using the patent system mainly to protect and promote a business. They were all trolls intending to get rich off someone else’s work right from the start.
In fact, when a big company really does try to exercise its portfolio of technical patents, they end up like Motorola v. Microsoft, gaining tiny verdicts much less than the cost of litigation. The actual technical advances in those patents are tiny and don’t claim whole industries in one gulp. They don’t foreclose swathes of common user interfaces or entirely block the use of standards since eBay. So they get tiny payouts.
There are some big company abuses like Apple and Microsoft’s touch input and long file name patents, but they make up a tiny fraction of the companies’ portfolios and aren’t all that lucrative usually. And they don’t have to be farmed out to trolls.
Owen, any company that invests in software patents as a means of obtaining revenue from others rather than protecting its own business from competition is a troll in my book.
What company comes to mind when I say that? What company has been advocating software and business method patents, has been amassing them by the thousands every year, has been forthright about its business model of using patents as a profit center, and who does everything in its power to deflect new anti-troll legislation from focusing too much on its own activities?
Name that company.
Well, that could be lots of companies.
Intellectual Ventures is the classic troll in that mold and an obvious villain harming innovation on purpose without even pretending to promote any kind of progress in the subject areas it sues over. (They are intent on cooking some pretty fancy and arguably innovative food, though.) And having a single moustache twisting villain is helpful to real innovators when they ask Congress for relief or ask media to cover the patent mess, so it’s better to have them than a thousand entrepreneurial patent litigators each abusing a small portfolio.
But, to respond to post 9, IV usually isn’t obtaining its litigated patents from big companies. It does have patents from Microsoft and such, but those aren’t the lucrative ones.
—
I have to admit that IBM came to mind from your second paragraph, too. Of course, IBM loses money on patents and keeps filing en masse for prestige value. They even claim to have a profit center in licensing and portfolio sales, but income and expense accounting belies that claim. Actual technological computer patents just aren’t that lucrative compared to the ones that fail §101.
Intellectual Ventures is the poster child for everything that is broken with the patent system.
If you want to see the future of the patent system under the old status quo, look no further than Intellectual Ventures and their apologists because that’s what the typical patent holder will look like in the future: a bunch of lawyers sitting around speculating on who the best targets for litigation are going to be in the future and assembling massive portfolios of invalid patents with the goal of holding those targets hostage.
These are the same folks who want the fear of a patent lawsuit to be part of every business’s life, if not every citizen’s life. When they aren’t telling you to be afraid that they might have to sue you, they’ll recommend that you buy some litigation insurance from their “friend”.
But they’re very rich and powerful so we must listen to them and take them very seriously when they tell us that nobody will write new software if we take away their precious patents.
Cur, good observation.
I too am against patents on non statutory subject matter that are so often used by trolls. But I am also dead set against some, if not all, of the legislation being promoted to undermine the patent system to fight trolls.
There is an old saying about a whirlwind. Now what was it?
When we return to a sane patent system and purge it of this functionally-claimed information-processing baloney, the troll problem will vanish on its own and some of those provisions will be unnecessary.
Until it’s 100% clear that’s happened, I believe it’s prudent to move forward with any statutes or judicial fixes that make it as difficult as possible for full-time patent monetizers to harass people.
Remember: there really isn’t much of a problem out there with chem/bio patent trolls. There’s a reason for that and it’s certainly not because there aren’t any big companies out there to sue.
Those steps are at a fairly high level of abstraction — using action verbs such as “obtaining … transaction data”, “generating an upsell offer”, “utilizing … transaction data”, etc.
Yes! Now you’re getting it.
None of the limitations recited by Tuxis, however, are “meaningful.” Although the claim elements have some narrowing effect on the scope of claim 1, the practical effect is insubstantial.
And the judges are getting it too. Good job all around.
Agreed. Nice analysis by the judge here.
Patentees and applicants should feel free to argue that their claims are improvements to computing technology. Of course, if that’s actually true, one would expect the claims to recite terms relevant to computer technology and not terms that you’d hear in an elementary school or a 1950s record album on how to make it big in business.
When you see only generic terms such as the ones Dennis identified accompanied by abstractions (descriptions of data content) that’s a good sign that the claim is protecting the ineligible.
>Those steps are at a fairly high level of abstraction — using action verbs >such as “obtaining … transaction data”, “generating an upsell >offer”, “utilizing … transaction data”, etc.
And did the judge introduce any evidence into the record (the judges are clearly acting like defendants here) of how one skilled in the art would interpret these words? Or did he do a Stevens/Bryer analysis? How does that make me feel, and send it to a boy to get it programmed.
There is so much crxp flying in this thread it isn’t even funny.
And did the judge introduce any evidence into the record (the judges are clearly acting like defendants here) of how one skilled in the art would interpret these words?
Yes, there was no material difference between the competing interpretations offered.
It must be fun to be a judge – you can create hypothetical situations and “prior art” to show that an invention is an abstract idea. It’s like an official notice with a slice of fiction.
I’m sorely disappointed that the only thing the judge in this case could come up with was a mundane example about bankers and suspenders. Where is the imagination, the creativity?
I agree with Dennis that the proponents of these patents have made it difficult for folks to tell if they are being serious or not.
I thought the judge’s example was excellent.
Of course requiring the PTO or defendants to dig up prior art to “prove” that salesman try to sell stuff is exactly what you’d demand if you wanted to encourage endless efforts to hide the ball and flood the patent system with more of this nonsense.
Literally nobody except for patent attorneys and their paper-pushing clients are in favor of protecting claims like this one.
Dennis,
The unfairness lies in the fact that for a 101 rejection there is no cited prior art to back up the court’s claim of the state of the art. For example, the court did not say specifically where or when the salesman example took place. They are just assuming it did. An obviousness rejection would require citing specific prior art, which is lacking here. Therefore, the new 101 rejections are an end-run around the 103 rejection.
It’s not unfair. These patent claims are crazy. This is yet another example of “just do it on a computer” where the computer isn’t doing anything more than computerizing something done for a long time.
Putting stuff in memory, telling it to do something, outputting data and sending network messages, in the generic, IS NOT the stuff of inventions. These are the “ideas:” a thought or a suggestion to a possible invention.
There are real computer inventions out there. They do not merely provide a 30,000 foot level flowchart of how you put a manual process on a computer.
In this case, I think you could turn this into an invention by:
1. Actually claiming the platform on which this works
2. Actually claiming the “upsell” functionality that they’ve invented (what makes it different than a salesman doing it?)
3. Actually claiming how you “offer” the upsell
4. Actualy claiming how you “receive” acceptance of the upsell.
Notice that these claims don’t do anything one might expect. They are the vague notions of how you’d generically do it. The generalness lends itself to “gistifying” the claim.
If you’re a defendant, one other way to attempt to counter that this tendency to characterize the process as “something old merely done on a computer” is to point out where in the claims has no meatspace equivalent AND/OR where in the claims you could do the meatspace thing on a computer in a non-infringing manner.
Disregard the computerized aspect all together and show us the prior art that supposedly makes this method well known. When doing so please don’t disregard the actual words of the claims.