Eligible Software Patents

I’m looking for a few examples of high quality software patents outside of the business method realm and that should remain patent eligible under Alice & Bilski. Only send me ideas that you are fine with being publicly discussed.

DC

176 thoughts on “Eligible Software Patents

  1. 14

    If what you mean by “software” is a claim directed to a general purpose processor/computer performing an algorithm of any type, then I believe all of those are invalid under Alice (though not necessarily under Bilski). Why? Well anything performed on a computer can be abstracted out to some “abstract idea”, and then once that’s done, a generic processor/computer doesn’t add anything “more”.

    GPS patents? Dead. GPS is at its core simply a mathematical algorithm for determining location based on a bunch of signals. The apparatus itself is just a processor that performs the mathematical manipulation.

    Ecryption? Dead. Encryption is at its core simply a mathematical algorithm for modifying data. The apparatus itself is just a processor that performs the mathematical manipulation.

    Filtering? Dead. Filtering is at its core simply a mathematical algorithm for modifying data. The apparatus itself is just a processor that performs the mathematical manipulation.

    Modulation? Dead. Modulation is at its core simply a mathematical algorithm for modifying data. The apparatus itself is just a processor that performs the mathematical manipulation.

    1. 14.1

      Depends on the modulation…

      The standard hardware for modulation (as used in radio/television) are patented as a product of matter.

      If by “modulation” you simply mean the encoding of signals using math on a computer… then yes.

      The same can be said for “filtering”.

      GPS patents should not have been issued anyway. These were done back in the 70s (and earlier)… The same math is used whether it be LORAN or GPS. They are still range-range solutions. Even using hyperbolic geometry has been done for both LORAN and GPS. In fact, one of the reasons the high resolution GPS signals dropped encryption was because hyperbolic math provided the equal resolution using the already public GPS signals – the only issue was that the hyperbolic computations took longer than the range-range computations. But computers caught up.
      It also depends for encryption – making an enigma box was patentable… but using software to emulate the box would not be.

      1. 14.1.1

        So, is what you’re saying is that modulation, which is incredibly important for cell phones for instance and their receiving and transmitting data, is not patentable simply because it’s mathematical? That seems to me to be the logic that Alice uses, but all something has to be is new and useful. A claim to a machine that performs a new and useful modulation should be patentable under 35 USC 101.

        1. 14.1.1.1

          ALL engineering is “mathaematical.”

          In a very real sense, anything that falls into the Useful Arts is “mathematical.”

          1. 14.1.1.1.1

            No it doesn’t.

            Math is a descriptive language. It cannot affect the real world.

            DEVICES that affect the real world may be described by math.

        2. 14.1.1.2

          Not what I’m trying to say at all…

          Modulation (as used in phones) is an analog operation, not digital. The created radio signal is analog, not digital.

          The radio signal is decoded by analog devices… which extracts the symbols. But those are still just numbers.

          No significant difference between that and the old acoustic modems of yesteryear – except the frequency used.

          1. 14.1.1.2.1

            You seem to think that there is some magical difference between an analog device and a digital device…

          2. 14.1.1.2.2

            Simply the lack of math.

            The analog device is a physical device. It may meet some math description… but it is not math.

            The analog device always has more – the physics of reality demand it.

            1. 14.1.1.2.2.1

              jesse,

              The digital device is also a physical device.

              The same set of physics applies EQUALLY to both.

                1. Is not… what? real? beholding to the exact same set of physics and laws that affect an analog device?

                  Rest assured it is.

                2. Let’s walk through the three resistors example as well.

                  Three resistors in a box.

                  Has a certain mass.

                  The resistors are configured in series.

                  No change in mass.

                  The resistors are changed – configured in parallel.

                  No change in mass.

                  Reality and the laws of physics have applied throughout.

                  Your “mass” angle is a logical fallacy.

                3. Some people want to call the entire universe “maths.”

                  (I have previously supplied links).

                  EXACTLY like that person, your position of “it’s math” is merely an ontological philosophical position. A belief system. It does not align with the reality of our legal world, of our physical world. The continued monologue of “it’s math” just is not helpful in the patent law arena.

                  Software is equivalent** to firmware and is equivalent to hardware.

                  Software is a man-made manufacture and machine component, built for a utilitarian purpose***

                  ** yes, we do need to maintain focus and remember that equivalent does not mean “exactly the same as”

                  *** yes, some software may be made for some non-utilitarian purpose. I am speaking of the ge n eral case, as a person having ordinary skill in the art would speak.

                4. The paper is what has mass as a composition of matter. The ink has mass – the same way.

                  The information does not.

                  Neither does it have energy – and for the same reason.

                5. You really should look into the legal reality of the exceptions to the printed matter doctrine – Set C printed matter has the necessary weight in the patent domain.

                  You want to think that you can ignore this, that the ink and paper can be disassociated, and that ONLY the thoughts that you yourself pick up are present.

                  Such just is not so.

                  The problem you have is that software is not JUST for human consumption, or understanding. It is NOT just a novel. It is a machine component. That is the definition of software.

                  And this single thing makes all the difference in the world. You should not try to ignore its existence.

                6. A layman’s idea…?

                  Not at all.

                  I am taking the proper legal view. The one you “don’t care about.”

                  You really should care about these things.

                7. Look again at the three resistor example jesse.

                  The point is not that the resistors have mass.

                  The point is that a changed configuration that includes no new mass has a very real and very physical change.

                8. It is, as you say, a physical change….

                  You are confusing the expression of an idea with the idea.

                  You should be able to copyright an expression of an idea.

                  But not the idea itself.

                9. Software is real.

                  Your banter of trying to have me be the one that is confused is insulting, as clearly I am not confused.

                  Try making a real argument for us to discuss. Expressions – in fixed media (thus tangible and real, which wrecks your non-real argument) enjoy a certain legal protection. Manufactures and machine components – also real, and not “of the mind” enjoy a certain legal protection.

                  Machines really are re-configured with software to effect a change in the machine (enhanced capability).

                  This is a fact in this reality.

                  It is as if you do not want to recognize that a real difference exists between three resistors configured in parallel and three resistors configured in series. It is as if you want to say that the “idea” of different configured resistance is only math.

                  This is eminently illogical.

                10. jesse,

                  You are acting like a bad comic super-villain: monologueing again.

                  Now you want to have software only be “expressions of ideas in language” while you want to ignore the very thing that makes software valuable: its utility.

                  The “expressions of ideas in language” that does not have utility as recognized under the patent system does exist and is quite different from software. It is called literature.

                  Come back to this reality please, if you want to have a serious discussion on law and innovation.

                11. And like anything else symbolic… all require something to interpret it.

                  Even literature as an utility.

                  It just needs something or someone to interpret it.

                  Just like math. Or software, which is the same thing.

                12. You think literature has the utility that the patent law domain covers…?

                  You are not even close to the ballpark jesse.

                  How can I have an intelligent conversation with you when your refuse to be informed on the most basic principles?

                  All that you want to do here is monologue. Let me know when you decide to have a dialogue, when you come prepared to discuss law and reality.

  2. 13

    While before the Supreme Court for a different question of law, i4i’s U.S Patent 5787449 is undoubtedly a software patent, replete with a focus on “written matter” and being but a tool “for use by computer software developers” (published patent, column two, paragraph 57).

    1. 13.1

      Dare I add the Nazomi case, or does that fire on the hallowed grounds of those that shall not be challenged?

      1. 13.1.1

        Ugh. That Nazomi case is just utterly wrong on the facts. I’m disgusted that the infringers got away with it. I’m more disgusted that Dyk, Lourie, and Wallach were so trivially bamboozled.

        I’m pretty sure 7,080,362 is a hardware patent, though.

        A central processing unit (CPU), capable of executing a plurality of instruction sets comprising:

        an execution unit and associated register file …

        a mechanism to maintain at least some data…

        a stack control mechanism that includes at least one of an overflow and underflow mechanism…

        a mechanism to generate an exception in respect of selected stack-based instructions.

        1. 13.1.1.1

          It looks like the normal macro instruction translation to hardware instruction translation.

          That same process is done by the Caruso processor for emulating the X86 instruction set, or what the Intel processors to to translate the X86 instruction set into the RISC set actually used…

          The translation may actually be done by hardware. A table lookup with parameter substitution.

        2. 13.1.1.2

          Actually, that’s an abstract idea, which is that the idea keeps track of two different instruction sets and processes the instruction sets. It’s merely manipulation of data (instruction sets). Since the abstract idea is applied to a general purpose processor and nothing more is added other than applying the idea, the claim is invalid.

          Anything performed on a general purpose processor/computer is invalid under Alice, since anything performed on a computer can be abstracted to a level required to meet the nebulous “abstract idea” test.

          1. 13.1.1.2.1

            “Anything performed on a general purpose processor/computer is invalid under Alice, ”

            Really?

            1. 13.1.1.2.1.1

              I think that PatentBob was just exploring the limits that the Supreme Court actually left in place for their newly written law.

  3. 12

    Dear Professor Crouch:

    Since you asked for software patents outside of the business method realm, I thinks its fair to ask how do you define patents inside the “business method realm” and how they differ from software patents? Please provide examples of actual patents. Thank you in advance.

  4. 11

    The following are all software patents, after a basic version exists as prior art (i.e. sensors and detectors are not considered part of the novelty):
    1. Machine vision, including OCR, face recognition and automated labs
    2. Air-traffic control
    3. Car-safety systems that involve no new specialized hardware
    4. Navigation, including route calculation, turn-by-turn diorections and traffic-responsive routing
    5. Smart traffic lights that respond to actual traffic
    6. Weather forecast systems

    1. 11.1

      Per your conditions, Diehr was a software patent.

      The basic version existed prior: autoclaves, thermocouples, even computer run cures. The only novelty was a computer program that used the Arhenius equation on a continual basis (you know, something computers just do).

      1. 11.1.1

        To be precise, it doesn’t run continually.

        Since it is on a digital computer, it can’t. You only get numbers out at the end of a computational cycle of the formula. Thus, not continual.

        To get continual output requires a physical, analog device….

          1. 11.1.1.1.1

            And digital computers can’t do them either.

            At the macro level where material can be manipulated, machined,… quantum fluctuations don’t enter the system…

            And if they did (which would be fine), you would still need other physics to control them. Not simulations.

    2. 11.2

      Also, I would add to my list all forms of CAD/CAM, video compression, audio compression, disk management and memory management (including error detection and error correction), image procession (including white balance, sharpening), text to voice, voice to text, and a zillion other innovations that really matter, many of which would have never been developed without patent protection.

      1. 11.2.1

        Those would have been discovered anyway, just to provide a better service.

        Patents didn’t contribute to it one bit. CAD/CAM existed before software patents, as did video compression, and audio compression.

        Disk management existed ever since IBM created drum drives. Memory management (depending what reference as disks/drums existed since about the mid 1950s) also existed. memory error detection and correction was a hardware function, and didn’t patent the math used.

        1. 11.2.1.1

          Jesse, by disk management are you talking about filesystems or are you talking about flaw maps?

          Just to say, I think an improved disk drive that has data compression or data encryption is entirely statutory.

          1. 11.2.1.1.1

            Either one actually.

            Flaw maps have been used for years – in software. A read error causes retries (in the case of the disks I worked with, up to 40 times with the heads shifted to either side of the central track) – when the error count is exceeded, the error sector number gets added to a list – and the list is written back to the disk. Currently that activity is done by the CPU on the disk formatter board, and not the host CPU.

            In the case of recent filesystems, errors are also being examined, with extended ECC, checksums being added on top of what the disk subsystem (whether driver or disk unit) does.

            This is also what the RAID design does as well, though RAID allows the use of replication as well as parity/ECC/double parity error recovery.

            Same thing for tapes – though the tracking location was different (a tape management system instead of previously used sectors for the flaw list).

            Disks don’t work very well with compression – the need for block updates usually prevents any compression. Tapes it works for… but not exactly well (already compressed data tends to take up more space). But both compression and encryption are done in software – though there can be some hardware acceleration aids to improve throughput – and those aids I would expect to be patentable; otherwise, no – I wouldn’t expect to be patentable.

    3. 11.3

      Pro se, I didn’t see is software patent and that entire list. You are talking about machines, and improvement in machines in every case. That the software might be at the heart of the improvement is not a problem under the law see Diamond v. Diehr.

      No one seems a have a clear definition of a software patent because people are constantly citing examples like yours as examples of software patents. If that were is what is software patent is then there is an should be no problem with software patents under the law. What we are talking about is not software patents per se, but patents to business methods, patents to math, patents to method of playing card games. All these, or nonstatutory, and have been considered to be nonstatutory for very long time, that is, until notorious State Street Bank case was decided.

      1. 11.3.1

        The fact that CAD/CAM, error correction or audio compression are old news is immaterial since it relates to 102/103 aspects – and we are talking here about 101 aspects.

        Had I invented CAD today , for instance, I would certainly have met an automatic 101 Alice rejection, since “design is an abstract concept and CAD is an implementation of the abstract concept on a generic computer”.

        Look into my examples (or similar examples you are invited to come up with), with fresh 101 Alice eyes, completely ignoring their 102/103 perspective, and you’ll see that there is a fundamental, terrible flaw in the USPTO (and courts) wholesale adoption of Alice.

        If one wants to target the patenting of “making money from money”, the solution is to state, clearly, that “making money from money is not patent eligible”, similarly to the way tax-avoidance patents were banned.

        1. 11.3.1.1

          Pro-se, please see below at 10.1.1 for the way the tax items were banned.

          Even Congress is reticent about making things ineligible.

        2. 11.3.1.2

          If one wants to target the patenting of “making money from money”, the solution is to state, clearly, that “making money from money is not patent eligible”, similarly to the way tax-avoidance patents were banned.

          That’s one solution. Not the only solution.

          What’s happening now is a process towards arriving at a solution. Everyone is welcome to participate.

          That process, by the way, is inelgible for patenting, regardless of any unexpected turns it may take.

          1. 11.3.1.2.1

            Everyone is welcome to participate

            Absolutely correct – as far as that goes.

            Of course, to put the proper meat on that bone, we should state that the participation is properly limited to petitioning your congressmen to write the law – as for patent law, this is the only branch that is sanctioned under the authority of the constitution to actually write the law, and clearly what is under discussion here is the change – or writing of a new law.

    1. 10.1

      “Tax-free gifting”

      Are you frick’n joking? The novel subject matter is a method of avoiding taxes?

      I really, really, really believe that you guys who support this kind of patent are smoking something. What planet do you come from?

      Seriously.

      1. 10.1.1

        Ned,

        I think you move much too fast to dismiss the comment (and do so with an undeserved insult).

        Let’s discuss taxes and the America Invents Act. Why do you think Congress in section 14 of the America Invents Act choose to make inventions related to strategies (read that as methods) for reducing, avoiding or deferring tax liability as prior art as opposed to simply declaring such as ineligible subject matter?

        Then please discuss section (c)(1) therein, which still allows patents for methods for preparing tax returns or tax filings including the mere organizing of data for such.

        We can also discuss section (d), but I have already previously explained that section in great detail on the Hricik side of the blog.

        Thanks.

      2. 10.1.2

        What world do you live in Ned? Innovation is information processing in the 21st century. A growing portion of economy is all about creating software.

        Sheesh! The ignorance evinced by your statements are astounding.

        The methods used for all information processing are changing because of the ability to automate the processes. That is innovation.

        You should read the Luddites. They hated the machines and say many of the things you do about automation of physical processes that you say about the automation of information processes.

        The mystics on this board are thick.

  5. 9

    1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

    2. The method of claim 1, wherein said blue noise mask is used to halftone a color image.

    11. A method for the halftoning of color images, comprising the steps of utilizing, in turn, a pixel-by-pixel comparison of each of a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein a plurality of blue noise masks are separately utilized to perform said pixel-by-pixel comparison and in which at least one of said blue noise masks is independent and uncorrelated with the other blue noise masks.

    (from the opinion in Research Corp v. Microsoft (Fed. Cir. 2010).

  6. 8

    What we now know about abstractness?

    A claim is abstract if the novel subject matter is directed to “fundamental” economic principles.

    A claim is abstract if the novel subject matter is directed to mathematics.

    A claim is abstract if the novel subject matter is directed to a method for playing card games.

    A claim is abstract if the novel subject matter, the exact point of novelty, is “functional” within the meaning of O’Reilly v. Morse, i.e., claiming a result without specifying any of the novel means or methods for achieving it.

    I think the last is the only true abstractness. I think the other examples are examples of nonstatutory subject matter and the Supreme Court is merely using the word abstractness in a way that includes nonstatutory subject matter because of Bilski. Had the court followed Stevens and his desire to reinstate Hotel Security, this problem of ambiguity would never have occurred.

    1. 8.1

      Thank you. Don’t know if you are correct, but your analysis certainly makes sense, and more importantly, makes it easier to evaluate my claims.

  7. 7

    I’d consider looking at some of the basic wireless LAN patents like US 5487069. Though not purely software, a central part of the invention is the use of signal processing software.

  8. 6

    No software is patent eligible under §101 or under Alice, Mayo, and Bilsky. Software is inherently abstract mathematical operations.

    Furthermore, no software should ever be eligible because the field is creative more than technical, cheap to innovate in, subject to the thickest of all patent thickets due to its incremental nature, adequately protected by copyright, profitable without any patent protection, and impossible to draw clear boundaries within, making patents inherently subjective and fuzzy and very expensive to litigate.

    Nevertheless, to test the position — held by the vast majority of software writers — that patents are completely and always inappropriate, we should consider the very best sort of software patents that have issued. These are a tiny fraction, much less than one percent, of software patents the PTO rubber stamps; they are the ones that represent actual advances described in technical language written so that a programmer could use them.

    The Diffie-Hellman patent 4,200,770 was known by everyone to be invalid when issued but claim 8 describes an earthshattering stroke of genius that changes the way you and I and everyone around us works and plays every day. Diffie and Hellman published their paper disclosing their discovery fifteen months before applying and didn’t even think of getting a patent until after the one year deadline, so no incentive was provided by the patent system. The invalidity of the patent ensured that it was not useful in litigation, but it is an example of what a software patent could be and utterly unlike what we see in actual software patent litigation where vague useless derivative garbage patents are the only currency.

    The RSA patent, 4,405,829, was built on the key Miller-Rabin algorithm applied to the Diffie-Hellman patent above. It was a significant advance and MIT decided to patent it after RSA had already publicised the technique but before the one year deadline. The result was that US cryptography practice fell behind the rest of the world where the algorithm was still free. In fact, the licensee had to import the Free software code from the free world into the United States to produce usable software implementing the idea in their own commercial product. I spent thousands of dollars myself trying to get our licensed version to work as well as the versions the rest of the world could use freely. But the patent is certainly defensible from a certain standpoint; it does describe a better technique that was unknown before RSA thought it up and it’s not at all analogous to ‘bingo or escrow but on a computer’ style patents.

    In another field, compilers have often struggled with optimization techniques given the limited resources that actual programs have and the Halting Problem limits on predicting what code will do. IBM researcher Chaitin elegantly optimally solved one such problem and described it in US patent 4,571,687. IBM offered a free license to use the technique to the world and we’ve all had a slightly better time running programs ever since. If a pure algorithmic software patent could be valid (and it could not — see Flook) then this one would be a classic example of a clear, simple, new, non-obvious, well-described improvement.

    So there’s a set of three top quality software patents to discuss. When software writers discuss patents, we’re nearly all absolutely opposed to them in our field, with no exceptions. These are the three classics most often discussed when we test our beliefs against the facts to see if there are any such patents at all that we could support. They are the hardest cases. Enjoy them.

        1. 6.1.1.1

          Mr. Nobody, the alphabet was not patented, nor the correlation between the dots, dashes and spaces and certain letters and numbers.

          Just the system of communicating using dots, dashes and spaces.

          The Supreme Court approved this claim. So, I daresay, all claims like in the are eligible even today.

    1. 6.2

      Owen how do you square “abstract mathematical” with the fact that a real machine is sitting there doing useful work? Do you understand that “abstract mathematical” is a word like “witch”?

      1. 6.2.1

        Night, you are contending, of course, that any use of a machine that does work makes a claim eligible.

        Thus, any method for doing business become eligible if one requires the use of telephone for the simple fact that telephones are machines.

        1. 6.2.1.1

          I am right now talking about the narrow contention that this invention was being implemented on a real machine, was doing real work, and people were paying real dollars for it.

          Doesn’t sound “abstract” to me. This word “abstract” is being used just like witch was.

          1. 6.2.1.1.1

            With a big difference. There is evidence for “abstract”.

            Math is one. Law is another. “money” is a third.

          2. 6.2.1.1.2

            “on a real machine, was doing real work, and people were paying real dollars for it.”

            Completely irrelevant.

            Telemarketing scripts used over a phone to goad weak minded people into spending would be eligible. Plots of screenplays written on word processors would be eligible. Jazz riffs played on saxophones would be eligible.

    2. 6.3

      > No software is patent eligible under §101 or under Alice, Mayo, and Bilsky. Software is inherently abstract mathematical operations.

      > Furthermore, no software should ever be eligible because the field is creative more than technical…

      (1) Given that mathematics is quintessentially functional, it is not rational to argue that software is both “inherently mathematical” and “creative more than technical.”

      (2) Web design, graphics, and user interface composition are creative.

      Data compression and decompression are purely technical. So is encryption. So are searching, sorting, hashing, image recognition, memory management, watermarking, signal extraction, transaction processing and concurrency, version conflict detection and resolution, language parsing, learning algorithms, code optimization, etc., etc.

      This difference is easy to demonstrate: in the latter batch of technologies, no one cares about appearance. They simply run the Patented_Function() as a black box, and get a useful result. Accuracy, speed, and efficiency matter; the “creativity” with which the programmer “expressed” the algorithm doesn’t.

      In fact, when you “express” an algorithm in a typical high-level language, the code that ends up reaching your processor has been so completely mangled by the compiler and optimizer that all of the “expression” is gone. Every single “creative” choice – filenames, class and variable names, function names, comments, whitespace, documentation – it’s all stripped away. All that remains is a minimal set of instructions that achieve the functionality of the code.

      1. 6.3.1

        > No software is patent eligible under §101 or under Alice, Mayo, and Bilsky. Software is inherently abstract mathematical operations.

        > Furthermore, no software should ever be eligible because the field is creative more than technical…

        Web design, graphics, and user interface composition are creative.

        Data compression and decompression are purely technical. So is encryption. So are searching, sorting, hashing, image recognition, memory management, watermarking, signal extraction, transaction processing and concurrency, version conflict detection and resolution, language parsing, learning algorithms, code optimization, etc., etc.

        This difference is easy to demonstrate: in the latter batch of technologies, no one cares about appearance. They simply run Patented_Function() as a black box, and get a useful result. Accuracy, speed, and efficiency matter; the “creativity” with which the programmer “expressed” the algorithm doesn’t.

        In fact, when you “express” an algorithm in a typical high-level language, the code that ends up reaching your processor has been so completely mangled by the compiler and optimizer that all of the “expression” is gone. Every single “creative” choice – filenames, class and variable names, function names, comments, whitespace, documentation – it’s all stripped away. Elegantly crafted loops are unrolled; elegant syntax is gone; code readability is replaced by rote machine instructions. All that remains is a minimal set of instructions that achieve the functionality of the code.

        1. 6.3.1.1

          David Stein: All that remains is a minimal set of instructions that achieve the functionality of the code.

          Is a “set of instructions” for someone else (or some thing) to follow eligible subject matter? Since when? And why?

          It seems that what you are trying to protect when you recite a “set of instructions” at a high level of abstraction is a broadly described process of programming a computer to impart a specific function to that computer, or (for example) a broadly described process of creating a disc that can impart such functionality.

          Assuming for the sake of argument that you are entitled to such broad protection for that process even where you haven’t disclosed a single actual working embodiment (e.g., code that actually performs on a relevant existing computer system) should the description of that broadly described process entitle you to protection of the computer or the disc itself? That seems like a huge leap — the sort of leap that even Judge Rader understood when he limited product-by-process claims to the steps recited in the claims.

        2. 6.3.1.2

          Web design, graphics, and user interface composition are creative.

          Data compression and decompression are purely technical. So is encryption. So are searching, sorting, hashing, image recognition, memory management, watermarking, signal extraction, transaction processing and concurrency, version conflict detection and resolution, language parsing, learning algorithms, code optimization, etc., etc.

          This difference is easy to demonstrate: in the latter batch of technologies, no one cares about appearance. They simply run Patented_Function() as a black box, and get a useful result. Accuracy, speed, and efficiency matter; the “creativity” with which the programmer “expressed” the algorithm doesn’t.

          This is an interesting distinction, David, and maybe even a practical one.

      2. 6.3.2

        Hey David Stein, I daresay that the use of computers to do web designs and to better communicate between computers should be patentable. I think Diehr is clear on this. But just for the sake of argument, also consider Morse claim 5 that endorsed using dots, dashes and spaces to communicate.

        The reason improved web designs and methods of communication are patentable is that they improve computers and ways of using computers as opposed to something completely abstract, such as balancing risk.

        1. 6.3.2.1

          Nearly all web designs are actually done by programs meeting a given spec (put this there, that down there, make this scroll…) done via a GUI.

          I could sort of see a design patent, maybe… but the real work at creating web pages is done by various programs… Including the users browser. The “creative” work is actually art…

          It doesn’t “improve computers” at all, what it tries to improve is the advertisements being presented to induce the viewer to purchase… definitely something that is abstract (the inducement).

        2. 6.3.2.2

          I daresay that the use of computers to do web designs and to better communicate between computers should be patentable.

          Ned, I completely agree with you. Wire protocols, schematization, the OSI model – all 100% functional.

          But that’s not “web design,” which is: colors, layout, fonts, spacing, images, organization, etc. All of that is 100% creative, and exclusively the subject of copyright.

      3. 6.3.4

        >>(1) Given that mathematics is quintessentially functional, it is not rational to argue that software is both “inherently mathematical” and “creative more than technical.”

        A very, very tiny fraction of math is useful, all math is creative. If you haven’t bothered to learn any pure math and just memorized the plug-and-chug formulas we lovers of math have simplified for you, you might think it’s mechanical but that’s because you’ve never seen it being made.

        Ask a couple researchers at a symposium at your local university math department.

        >>Data compression and decompression are purely technical. So is encryption. So are searching, sorting, hashing, image recognition, memory management, watermarking, signal extraction, transaction processing and concurrency, version conflict detection and resolution, language parsing, learning algorithms, code optimization, etc., etc.

        Have you ever tried to create new ideas in those fields? There is speculation, dreaming, art, and deep uncertainty over the subjective creative value of the final project.

        None of those subjects is any more technical than poetry until the creation is done and standards are set. If §102 doesn’t block a math patent yet, the math is still too abstract and artistic to pass §101.

        1. 6.3.4.1

          Have you ever tried to create new ideas in those fields?

          I have, actually, while earning a graduate degree in computer science.

          All of my study focused on technical analysis: learning how and why certain techniques worked, identifying causal relationships in the function of the machine, applying techniques to specific problems, evaluating the results. I dealt with purely functional problems, and strove to develop purely functional solutions.

          I certainly knew a few students who sat around “dreaming” about computer science, rather than sharpening it as a skill. As I recall, they didn’t graduate.

    3. 6.4

      No software should ever be eligible because the field is… cheap to innovate in, subject to the thickest of all patent thickets due to its incremental nature, adequately protected by copyright, profitable without any patent protection, and impossible to draw clear boundaries within, making patents inherently subjective and fuzzy and very expensive to litigate.

      Maybe true, maybe not – but all of this is irrelevant to this discussion.

      The judiciary is not supposed to set policy. It is not the guardians of the economy or the protectors of technology. Its members are not elected by the people, and thanks to lifetime appointments, they are not accountable to the public for their decisions. The judiciary has one job: apply the law as written and intended by Congress.

      Where Congress is silent and ambiguous about economic policy, it is not the Court’s job to take up the cause and run in a desired direction. That very specifically not how the Court is supposed to function.

      In these cases, the Court is choosing to pursue an economic policy agenda of its own volition, and is doing so based upon 35 USC 101 – a statute that was not intended to have any substance whatsoever, but merely as an introduction to a section of law.

      The Court is not operating as an interpreter of law, but as a policy advocate. These actions exceed the authority of the Court, and damages its foundational reputation as a disinterested interpreter of congressional intent.

      1. 6.4.1

        Absolutely agree, David. Congress can make software patents invalid, but the Supreme Court should not. The Supreme Court should allow any claim directed to a machine that is new and useful, and Alice does not allow that to happen.

          1. 6.4.1.1.1

            Jesse, when “software” is added to computer “hardware,” what is really happening is that the structure of the silicon mosaic is changing, because the silicon material itself is changing electronic properties.

            Humans create an asbtraction that software is somehow different than the hardware because it helps humans comprehend the machine.

            Next time, find a music box (the toy that has little metal tongues and a cylinder with stubs on it; when the cylinder rotates, the stubs perturnb the tongues and create sound of different frequencies — music). Can you distinguish the “software” from the “hardware” in that?

            1. 6.4.1.1.1.1

              Elegantly expressed Edwin

              It bears mentioning, too, that is only by virtue of the computing “hardware” itself being reconfigurable (i.e., one uses a silicon “memory” that is alterable and can store different “soft” programs) that software comes about in the first place. The two are inextricably intertwined, because every machine effectively can be “programmed” – its just a matter of degree and difficulty – even a “hammer” can be “programmed” by using different grips, heads, etc.

              1. 6.4.1.1.1.1.1

                JNG, you guys have to stop playing these games. It really, really gets old.

                This kind of nonsense gives patent attorneys a bad reputation, and it has given the Federal Circuit a very bad reputation.

                Please stop it.

            2. 6.4.1.1.1.2

              Edwin, you fundamentally do not get it, do you?

              Think.

              I create a book with printing on it. Patentable.

              I create a second book with printing on it. Not patentable, right? Not even if the meaning of the words change.

              And why is that?

              Computer memories have changed over time. Patents on them are valid. But if one were to allow patents computer memories to be reissued time and again because of the meaning of what is recorded, then we would effectively be granting patents on that meaning, and not on the computer memory or the computer hardware.

              Sophistry will only get you so far.

              1. 6.4.1.1.1.2.1

                The analogy fails because changing the words in the book does not change the functionality or utility of the book: it is a means of conveying information.

                Changing the code in a computer memory does change the functionality and utility in most cases. If the software that you load on the computer is only a different piece of music or a different movie, then yes, the analogy holds. When the software changes the function, it does no.

                1. Well stated Silicone Valley girl.

                  And of course this logically follows from the facts as I have discussed in my Set B and Set C printed matter distinctions.

              2. 6.4.1.1.1.2.2

                Ned,

                If you want to make the policy argument that, as a legal matter, no software should be patentable, that’s fine; we can debate it.

                This post of mine is to ensure the engineering/scientific truth is preserved. I began as an engineer, and will always be one. As far as science/engg is concerned, what I say is fact. When you stare carefully, there is no meaningful distinction between “software” and “hardware.” They are not, in physical fact, separable.

                1. Edwin, you do know that software consists of computer instructions and hardware consists of physical circuits.

                  Software is really an abstraction.

                  What you are talking about in terms of physics is the state of a computer’s program memory when programmed. A circuit will have inputs and outputs, the output could be a mathematical function of its input. But a programmed memory instruction is simply a state of bits in a memory. Those bits

                  DO NOTHING!

                  They are not the equivalent in any manner or respect to a circuit that has conducts math or logic.

                  I really believe you either do not understand computers, or that you are using words to camouflage your real intent.

            3. 6.4.1.1.1.3

              Nope. The electrical properties are unchanged.

              “Humans create an asbtraction that software is somehow different than the hardware because it helps humans comprehend the machine.”

              Nope.

              The machine just does math. The machine itself is
              an emulation of math. Everyone that has more than a trade school knowledge of computers knows that. The abstraction is the math algorithm that is being emulated.

              “Next time, find a music box (the toy that has little metal tongues and a cylinder with stubs on it; when the cylinder rotates, the stubs perturnb the tongues and create sound of different frequencies — music). Can you distinguish the “software” from the “hardware” in that?”

              Nope. Only where it is stored. The pegs on the cylinder are just pegs. Now if you also know WHAT each peg represents, AND when it is supposed to represent it (timing is a lot of music), then you can deduce the “software”.

              It is easier to listen to it and reconstruct it.

              1. 6.4.1.1.1.3.1

                “Nope. The electrical properties are unchanged.”

                Two simple examples are PCM and Flash, Jesse.

                Why is anyone engaging with this person anymore?

                1. Got me. I did forget about flash.

                  As far as engaging – The most distinguished people in my field have the same view of computer science that I do.

                  Whether patent lawyers and courts want to believe it or not.

          1. 6.4.1.3.1

            Jesse, backwards. I was a court that found math to be nonstatutory. Benson, as clarified by Flook.

              1. 6.4.1.3.1.1.1

                Jesse, the RSA patents were not on math, but on the use of math in communications. Communications are statutory. Improvements to communications are statutory — even if the only thing new is math. See, e.g., Diamond v. Diehr, 450 U.S. 175, 101 S. Ct. 1048, 67 L. Ed. 2d 155 (1981). link to scholar.google.com

                1. Ned, the point that you are not getting here is that software – or equivalently firmware is that applied math, created for a utilitarian purpose as a man made manufacture and machine component.

                  Note that jesse rejects your view on firmware for the EXACT same reason he rejects software (and note that your defense here and elsewhere of firmware applies fully to software).

                  Once you realize the fact of the matter that software is equivalent to firmware and is equivalent to hardware, you will see the conclusion is inescapable.

                  And let’s keep the discussion from getting off track and remember that equivalent does not mean identically the same as – that such is not required for our discussion of patent law.

                2. anon, “Once you realize the fact of the matter that software is equivalent to firmware and is equivalent to hardware”…

                  needs the phrase “is logically equivalent”.

                  Otherwise you fall into the false conclusion that software and firmware is hardware.

                3. jesse,

                  I do not need to use the word “logically.”

                  Two reasons (at least):

                  The first is that as we discussed (and regardless of whether you care or not) software is not something “totally in the mind” and thus more than just logic is necessarily involved.

                  The second is that no one is saying “is” like you are implying. You are attempting the “exactly same as” view that simply is not appropriate in this discussion of patent law.

                  Thus, your attempt I steer the conversation to your desired end of “false conclusion” is itself false.

                  The point I have presented stands.

                4. Actually jesse, that is precisely what the science, what the facts (reality) AND what the law all say is true.

                  You “personally don’t care” about that though, as evidenced by your consistent repetition of the anti-software mantra, which is repeated wholesale in an evidently non-thought through manner.

                  I have given you the facts straight up. I have given you the law straight up. Whether or not you accept these, whether or not you like them, or personally care about them, does not change them.

                  They ARE. And they will REMAIN.

      2. 6.4.2

        Of course only Congress makes new law. If Congress wants to amend §101 and Article I Section 8 of the Constitution to allow software patents, it can (with consent of the President and three quarters of state legislatures).

        Until then we the people are sick and tired of activist courts illegally allowing software patents.

        1. 6.4.2.1

          Owen,

          Since software is defined to be a machine component and a manufacture, the words of Congress need no new or further changes to allow software patents.

          No need for any heightened constitutional amendment either.

          The plain words of the statute (and not the courts) always provided for patents for machine components and manufactures to be patented.

    4. 6.5

      Said this before on P-O, and will say it again. It’s amazing how many anti “software patent” arguments are equally applicable to any technology.

      Consider this argument from Owen’s post: “no software should ever be eligible because the field is creative more than technical, cheap to innovate in, subject to the thickest of all patent thickets due to its incremental nature, adequately protected by copyright, profitable without any patent protection, and impossible to draw clear boundaries within, making patents inherently subjective and fuzzy and very expensive to litigate.”

      You could make this argument about many technical fields. So we now have a rule that if a patent is unavailable if it is in a field that is (i) cheap to innovate in, or (ii) crowded with activity, or (iii) has alternative protections available, or (iv) innovation tends to be “incremental”.

      Owen, yours is not an anti-software-patent argument, it’s an anti-patent argument.

      1. 6.5.1

        The whole argument that “functionality at point of novelty” triggers 101 is complete … nonsense.

        By that logic, there are no valid method claims of any kind, because, by definition, a method claim relies on a “novel” step/operation (“function”) that is either entirely new (“x is done with y”), or a modification of an existing step (“y’ is done instead of y).

        This type of reductio ad absurdum argument has no end, because can always parse the claim limitations at finer and finer levels, until one reaches a level of abstraction that serves one’s needs. The McRO patent which sets out using “…a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence” is more specific and less “abstract” than the Morse “alphabet” for performing communication.

      2. 6.5.2

        Doesn’t present any problem for pharmaceuticals, metallurgy, petrochemicals, medical devices, polymers and adhesives, mechanicals, and electricals.

        If you don’t see the patent system as a scheme to stab productive companies with a vague and abstract information patent on bingo, escrow, linear matrices of animation primitives, or something and potentially win the lotto in spite of making no contribution to the world, there’s no problem.

  9. 5

    What about the (now expired) fundamental patents in the public key cryptography field? See, e.g., the RSA patent, US4405829 (esp. claims 23 & 24) (1109 citations), or the Diffie-Hellman patent, US4200770 (741 citations).

    Can you think of a technological development more important than encryption for facilitating our present digital/e-commerce/cloud-workplace environment? This goose laid a lot of golden eggs over the past 30 years. Go ahead, trash these patents. But I ask this – Would we really have been better off if these had not been patentable? I sincerely doubt it.

    1. 5.1

      Your analysis seems to presume that patents were necessary for that innovation to have taken place in a timely manner (do you have evidence of this)?

      Other than hindsight (“this laid a lot of golden eggs over the years”), how do you categorically distinguish the “worthwhile” computer-implemented information processing claims from the infinite number of “worthless” information processing claims that dismay most people and ruin the patent system for everybody?

      1. 5.1.1

        Malcolm,

        Let’s discuss your first paragraph here as you appear to employ the rhetorical tool of assuming a position for your opponent, and then seek to knock down that position.

        Some may call this a strawman.

        As I have discussed with you previously, the “but-for” reason for having a patent system is only one reason – and most assuredly not the only reason.

        To attempt to build an argument on the premise that the patent system only exists for such “but-for” advances is to engage in a fallacy that cannot withstand scrutiny.

        Yes, “but-for” is A valid reason to have a patent system. But it most absolutely must be remembered that the US patent system was not built ONLY for such “but-for” situations.

        Innovation simply is not, cannot – and should not – be so constrained.

    2. 5.2

      Actually, it retarded development.

      I personally was persuaded to not investigate the math as my professor said that anything I did could not be published, nor could I use it for anything else due to patent infringements.

      YES we would have been better off.

      1. encryption research moved out of the US (partly due to being classed as “munitions”). Investigation of the RSA math and applications had to take place in Switzerland/Austrailia.

      2. RSA business usage became fairly well known and used starting in 1995, but only outside the US.

      3. OpenSSL was under threat if anyone used it (US based) until about 3 months before the patent expired and RSA Inc released it to anyone to use.

      It would have been much easier to experiment with it in its early history than later – as theoretical attacks could have been tested where the keys were shorter. As it is, the extensive tests didn’t occur until the key lengths reached 128 bits or greater.

      1. 5.2.1

        I personally was persuaded to not investigate the math as my professor said that anything I did could not be published, nor could I use it for anything else due to patent infringements.

        Then you were given terrible advice. Simply studying and discussing a technique described in a patent is not patent infringement. For example:

        The common law research exemption is an affirmative defense to infringement where the alleged infringer is using a patented invention for research purposes. The doctrine originated in the 1813 decision by Justice Joseph Story appellate decision Whittemore v. Cutter, 29 Fed. Cas. 1120 (C.C.D. Mass. 1813). Story famously wrote that the intent of the legislature could not have been to punish someone who infringes “merely for [scientific] experiments, or for the purpose of ascertaining the sufficiency of the machine to produce its described effects.”

          1. 5.2.1.1.1

            The experimental use exception was altered, and perhaps narrowed, in the 00’s. Jesse’s comments above were about experimental use of RSA in the 1990’s.

            Also, the narrowing of the exception involved research with the specific intent of furthering a commercial product or process. For example:

            Embrex designed machinery that implemented the claimed vaccination method in industrial chicken farms. In attempts to design around the patent, defendant Service Engineering Corp. (“SEC”) hired a professor to develop a prototype that would inject vaccine into the chorioallantoic sac (“CAS”), a part of the egg that was outside the scope of the method specified in the patent.

            Industrial research is product development. Academic research isn’t, and doesn’t infringe any patent. This is a basic, timeworn principle of patent law.

            1. 5.2.1.1.1.1

              It was around 1975 – very shortly after the paper was available. My professor asked for opinions on how to attack it. Even then, a plaintext attack appeared to be the simplest. That was when I asked about implementing it to see how hard it actually was.

            2. 5.2.1.1.1.2

              Even now, researchers in security are threatened with lawsuits over work done on cryptography. Just review the number of papers withdrawn from conferences, disappear from web sites…

              1. 5.2.1.1.1.2.1

                And, yet, all this time math was purportedly unpatentable.

                Still, methods of communications including codes are patentable. See Morse claim 5, dots, dashes and spaces.

              2. 5.2.1.1.1.2.2

                Even now, researchers in security are threatened with lawsuits over work done on cryptography. Just review the number of papers withdrawn from conferences, disappear from web sites…

                Those lawsuits are based on (1) national security, or (2) the DMCA.

                And while I agree with you 1,000% that those lawsuits are specious and extremely damaging, they are not relevant to patent law – which, as noted, features a strong “experimental use” exception.

                1. they are not relevant to patent law – which, as noted, features a strong “experimental use” exception

                  Even your own Wikipedia citation doesn’t support the notion that the experimental use exception is “strong,” David. I think it’s a bad idea to advise researchers that infringement is not a problem if it’s done as part of “academic research.”

                2. “patent law – which, as noted, features a strong “experimental use” exception.”

                  I’ll echo DanH’s comment (“bad idea”) and up the ante to outright irresponsible to assert such things without caveating them.

                  The experimental use exception has repeatedly been characterized as very narrow – not “strong” for at least the last ~ 15 years.

                  Even as to universities. See the Duke University case or go ask the folks in Duke’s electron laser research lab if they think the experimental use exception is a “strong exception” or an “extremely narrow” exception.

                3. I am curious Mellow – why do you think it is a bad idea? Are you familiar with the original write-ups on the experimental use doctrine? Such use has always been divorced from experiments that would lead to actions that would diminish the value of the patent (read that as commercial experimental use).

            3. 5.2.1.1.1.3

              The experimental use exception was altered, and perhaps narrowed, in the 00’s. Jesse’s comments above were about experimental use of RSA in the 1990’s.

              That’s nice. Your statement of law was in the present tense, though – that’s what I was responding to.

              Industrial research is product development. Academic research isn’t, and doesn’t infringe any patent. This is a basic, timeworn principle of patent law.

              The court in Madey didn’t draw a distinction between “industrial research” and “academic research.” The Madey court found that Duke was in the “business” of research, and that the use of a patented invention in the “furtherance” of that business was infringement. I don’t care much for the Madey decision personally, but it definitely undermines the “timeworn principle” that you mention.

              1. 5.2.1.1.1.3.1

                DanH,

                I am uncertain why you would not care much for the Madey decision personally, as the decision merely reflects the nature of what a patent is, and protects the full gamut of the nature of the exclusionary right. Pure research – which in fact remains the timeworn and yes still strong patent principle remains intact if the exclusion is enforced from those activities that are geared to commercial advantage. As I discussed the last time this subject came up (even as my posts were attempted to be rudely shouted down, Internet style), the fact that the experimental use exception to infringement dictates that commercial activity must be maintained separate from the experimental nature is a conscious choice – a feature and not a bug. This view has not changed, even as the modern research mechanisms have changed to be more profit driven and less pure research for research’ sake driven.

        1. 4.1.1.1

          Well it would be funny if el Judgo Wu of the witch burning court were to cut and past the entire claim after the phrase, “I find the following to be abstract:”.

      1. 4.1.2

        8609158 – oh, my oh my. Note especially column 9 starting around line 44, with particular attention to lines 60 et seq. for some of her “extra special” Manna ingredients.

  10. 3

    Dennis,

    U.S. Pat. Nos. 5,111,310 and 5,341,228 on a halftoning process and related machine technology from Research Corp. Technologies v. Microsoft Corp. Were patent-eligible then and should remain patent-eligible now under 35 USC 101, even under the “broken” nonsensical Alice test.

    1. 3.1

      I thought computer halftoning went back to the mid 70s…

      I remember being an operator and printing ASCII art that used halftoning to create the image.

        1. 3.1.1.1

          I used to an operator while an undergraduate and I used to do that too. Those were high-art back in the late 1970’s.

          1. 3.1.1.2.1

            There are many different ways to do halftoning. There are many patents to many different ways of halftoning. You can’t distilling claims down to a one word “gist” . One must pay due respect to the “as a whole” requirement …i.e. consider the particular details of the claim.

      1. 3.1.2

        I thought computer halftoning went back to the mid 70s…

        These patents don’t cover the concept of halftoning, but rather specific ways of halftoning. Specifically:

        1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

        and

        1. A method for the halftoning of color images, comprising the steps of utilizing, in turn, a pixel-by-pixel comparison of each of a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein a plurality of blue noise masks are separately utilized to perform said pixel-by-pixel comparison and in which at least one of said blue noise masks has its pixels shifted by at least one pixel prior to performing said pixel-by-pixel comparison.

        On the other hand, the Supreme Court could ignore all of the details and say, “this is ‘basically’ the concept of half-toning,” and dismiss both of them as an abstract idea.

        1. 3.1.2.1

          That claim wasn’t invented in a vacuum.

          The question is: how does the claim relate to the prior art, i.e., what was added to the prior art?

  11. 2

    Here are some patents that are currently being litigated by Straight Path IP Group (an NPE) against a number of operating companies, including Avaya, Cisco, and Apple, and which should satisfy 101:
    6,108,704
    6,131,121
    6,701,365
    7,149,208

    Priority date for these = 1995.

    An exemplary claim, from the ‘365 patent:
    1. A computer program product for use with a server operatively coupled over a computer network to a plurality of processes, the computer program product comprising a computer usable medium having program code embodied thereon the program code comprising:
    a. program code configured to receive the current network protocol address of one of the processes coupled to the network, the network protocol address being received by said one of the processes from an Internet access server;
    b. program code configured to receive an identifier associated with said one process; and
    c. program code configured to receive queries for one of the network protocol address and the associated identifier of said one of the processes from other processes over the computer network at the server, and to allow the establishment of a packet-based point-to-point communication between said one of the processes and one of said other processes.

    The ‘365 patent survived a reexam that concluded in 2010, getting all claims through without amendment.

    On the one hand, they’re definitely not business method patents (in the sense that they address a software/networking problem) . . . on the other hand, some of the claims are pretty broad and I could see them being “abstracted” into oblivion.

    “High quality” is in the eye of the beholder . . . Somebody thinks these are high-quality enough to kick off a bunch of litigations this week against companies who aren’t afraid of defending themselves.

    1. 2.1

      How does program code on a medium receive a current network protocol address?

      This claim may not have 101 problems of the kind we normally talk about, but program code itself does nothing, I can assure you.

      1. 2.1.2

        Er… pretty simply, actually:

        int ProcessQuery(struct ip_address, int process_id) { /* something useful goes here */ }

        Write code like that and encode it on a “computer program product.” There’s your infringing article.

        This claim does have two serious problems: (1) “to allow the establishment of a packet-based point-to-point communication” is probably not a functional limitation, but simply recites a result; and (2) the claimed invention begs the question of utility. But that part of the claim is pretty straightforward.

    2. 2.2

      1. A computer program product … having program code embodied thereon … comprising:

      a program code configured to receive [information about a process];

      b. program code configured to receive [other information about said process]; and

      c. program code configured to receive queries [about information referred to in (b) and (c)], and

      [program code] configured to to allow the establishment of a packet-based point-to-point communication [between two processes on a network].

      And let me guess: the theory of the case is that the accused infringers are practicing “packet-based point-to-point communication between two processes on a network” or something like that.

    3. 2.3

      None of that is going to survive IPRs from the legal and research teams at Apple and Cisco. Claims that recite basic computer networking concepts have been issued by the thousands for decades and still are today. Nevertheless, there was prior art describing all the combinations by the 1970s.

      The claim quoted reads on DNS, which was proposed, designed, published, put through committees, and standardized and published as a worldwide standard by 1983.

      1. 2.3.1

        DNS doesn’t work on a per-process basis as recited in the claims.

        And if was really that easy to invalidate over DNS, that wouldn’t have come out in the reexam? Just sayin.

  12. 1

    Dennis, I submit the judges have officially jumped the shark now with this one:

    link to docs.justia.com

    IMO that was an example of a patent claim that is entirely fine even under Alice and Bilski; the judges now feel though that they can now “abstract” the “abstract” by inventing yet another test.

    1. 1.1

      That’s a really interesting decision.

      The court uses the patent’s own admitted prior art to tear it down (as part of the 101 analysis) — yet another example of why it’s important to keep your Background section as short as possible.

      1. 1.1.1

        this has got to be the most absurd example I’ve seen so far; we’re not talking about an old function (X) being patented on a computer; its an entirely new function (Y) that has never been done

        under this ridiculous logic, there would be no “pioneering” invention in any field because by definition, the new function would of course preempt the “new” abstract idea of that function

        the opinion is a perfect example of how 101 is now being adulterated even more to circumvent 103’s role, because the attacking the “gist of the invention” test that is being played here by this Judge is not acceptable anymore for 103 jurisprudence

        1. 1.1.1.1

          Why are the pioneers resorting to functionally claiming their supposedly pioneering “invention”? Is their invention the function?

          1. 1.1.1.1.1

            6, all of this talk of function vs. the invention sounds so nice in the abstract (I shudder to even use that word anymore.) But, real life examples show that functional claiming is not only needed but the right way to go.

            Unbelievable that Lemley has pushed this to the extent he has. Amazing really.

            1. 1.1.1.1.1.1

              Lemley didn’t “push” patent law to this point.

              The people seeking and granting these invalid claims did that.

              1. 1.1.1.1.1.1.1

                >>Lemley didn’t “push” patent law to this point.

                Yes he did. He fabricated the law in his functional claiming paper.

      2. 1.1.2

        The court uses the patent’s own admitted prior art to tear it down (as part of the 101 analysis) — yet another example of why it’s important to keep your Background section as short as possible

        But remember, practitioners: don’t forget to cite the best art that you are aware of for invalidating your patent — including any art relevant to the 101 analysis which often comes from non-patent literature and writings that predate home computers

        Otherwise you might have a wee inequitable conduct problem in the future, in addition to your eligibility problem.

    2. 1.2

      Thanks JNG, that was an interesting decision. Judge Wu’s error there is he applied Stevens’ overruled dissection test. This is no longer good law, I don’t care what anyone says. He writes, “Thus, where a claim recites tangible steps, but the only new part of the claim is an abstract idea, that may constitute a claim to an abstract idea. See Alice, 134 S. Ct. at 2358. (disregarding the presence of a computer in the claim given “the ubiquity of computers”);”

      WRONG. A claim as a whole does not have to be “directed to an abstract idea” even though it’s novelty might be considered “abstract.” In Alice, the claim as a whole was still abstract (a fundamental economic practice). Judge Wu didn’t even apply a the two prong analysis, he incorrectly applied prong I then stopped. The part of Alice Wu quoted was referring to prong II.

      I’m not saying another judge couldn’t find this non-statutory under Alice. But the proper approach would be to conclude that the whole claim of animating lip movements is directed to an abstract idea. But I would beg to differ. Judge Wu even admits that “facially, these claims do not seem directed to an abstract idea.”

      I hope this case gets appealed to the Supreme Court. I predict the claims would be upheld. Judge Wu is known for making other controversial decisions as well.

      1. 1.2.1

        He writes, “Thus, where a claim recites tangible steps, but the only new part of the claim is an abstract idea, that may constitute a claim to an abstract idea. See Alice, 134 S. Ct. at 2358. (disregarding the presence of a computer in the claim given “the ubiquity of computers”);”

        WRONG.

        He’s absolutely correct. And you haven’t come close to explaining what the alleged “error” in his statement. He could have cited Mayo as well for the same proposition, or even some printed matter cases.

        1. 1.2.1.1

          Printed matter cases are different since they don’t serve a function. You are correct that he did also cite Mayo. But I explained the error. “directed to an abstract idea” is different than Stevens’ strict dissection test. Show me where in Alice, prong I, the court discusses stripping the claim of old and new elements. You would be really loving life if Flook came after Diehr, but it didn’t.

          If the quote you say is “absolutely correct” is really correct, than you have a District Judge overruling the Supreme Court (Diehr as you know).

          Plus, if the current test is really to identify a claim’s new elements and see if they are statutory, then there would be no need for Alice prong II, would there?

          But one thing I think we can all agree on is we are all tired of debating these things. I’m ready to call this blog quits for a while, as I’m not sure there is any “learning” going on here anymore with regard to 101, just lots of mudslinging. At this point I would accept a congressional amendment to 101 which limits (not prohibits) software just for the certainty of it all so attorneys can advise clients correctly, not this “we’ll have to wait and see what the higher courts do” mentality that is prevalent now. If you think everything is all completely decided right now then you are just kidding yourself. Someone finally needs to take some “good” claims to the S.Ct (just wait, it might be me).

          1. 1.2.1.1.1

            patent leather: Printed matter cases are different since they don’t serve a function.

            I’m not sure what that’s supposed to mean. The classic “printed matter” case is a “new” kit that differs from an old kit only by the inclusion of “new”, non-obvious and completely functional instructions (specifically they function to inform the purchaser of the kit how to use the kit). Being ineligible subject matter, however, those instructions are given no patentable weight and the claim is deemed invalid in view of the prior art.

            There’s certainly “dissection” of the claim in that analysis. And there’s no way around doing such a dissection in the course of analyzing whether a claim protects ineligible subject matter.

            To the extent that Diehr ever stood for the proposition that you could not determine the relationship of a claim to the prior art during the course of an eligibility analysis (which it didn’t) that ill-conceived concept was decimated by the Supreme Court in Mayo and Alice, and rightly so.

            But the proper approach would be to conclude that the whole claim of animating lip movements is directed to an abstract idea.

            No, the proper approach is to ask whether the claim protects ineligible subject matter in any field of use.

            If you think everything is all completely decided right now then you are just kidding yourself.

            Of course it’s not all “completely decided right now” but I think it’s more clear now than ever before that the worst innovations out there are getting the righteous hammering that they’ve deserved for a long, long time. And the end of the road for the patenting of computer-implemented information processing inventions as we have come to know them is plainly visible. That’s because when you try to apply patent laws conceived of and written to promote progress in the manufacture and processing of physical objects to information processing methods you quickly run into enormous problems at all stages of the system.

            The door should never have been opened. But it was opened and it was opened by wide by some incredibly short-sighted people.

            1. 1.2.1.1.1.1

              You continue to attempt to shout down the difference between Set B printed matter and Set C printed matter, even after you have volunteered admissions as to knowing the controlling law on this subject.

              I thought such games were to have been not played on the new Patently-O…

      2. 1.2.2

        Patent Leather, may I submit for your consideration that Prometheus is controlling law, not Diehr dicta.

      3. 1.2.3

        News flash leather there is no “prong 2” when it can be plainly seen that the claim is directed entirely to preempting excepted subject matter under “prong 1”.

        Besides that, in truth there are no “prongs” and what you are talking about when you say “prongs” certainly do not need to happen in an order (you could do prong 2 before one and you’ll still get the same answer if you did it right). The “prongs” you refer to are simply assistance for simpletons when theyre having a hard time figuring out what the claim is attempting to cover and whether what they are attempting to cover is judicially excepted, or explaining to the same how some judges found as they did in a case. That’s it, that’s all. Neither of them is strictly required, though of course for simpletons it is always good to run through them.

        Sorry.

    3. 1.3

      It looks like Wu has been reading my posts. He seems to really get it:

      From page 14,

      “This dual analysis tracks the law’s long-standing concern with patents that consist of old material with the addition of a new, but abstract, idea: “the vice of a functional claim exists not only when a claim is ‘wholly’ functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.” Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371, 58 S. Ct. 899, 903 (1938). An abstract idea is the extreme case of functional language.

      “Thus, where a claim recites tangible steps, but the only new part of the claim is an abstract idea, that may constitute a claim to an abstract idea.

      “Here, the patents teach that in the prior art, three-dimensional character lip synchronization was performed using a “timed data file of phonemes having a plurality of sub-sequences,” as recited in the claims. ‘576 Patent 1:32-43. But the prior art did not, according to the patents, involve obtaining rules that define output morph weight sets as a function of the phonemes, or using those rules to generate the morph weight sets. Instead, an artist manually set the morph weights at certain important keyframes, and a computer program then interpolated the frames between
      the keyframes. ‘576 Patent 2:29-37. Therefore, while tangible, the steps of (1) using a timed phoneme transcript, (2) setting morph weight sets at keyframes, or (3) interpolating between keyframes, are not “inventive steps” that could transform the claims herein into patent eligible subject matter, if those claims are directed to an abstract idea.”

      “However, the patents themselves teach that the prior art includes using morph targets that correspond to phonemes and calculating delta sets that contain the vectors from each vertex on the neutral model to the morph target. ‘576 Patent at 1:44-62. So, while Defendant’s characterization is overly broad, it would be fair to characterize the claims as drawn to the idea of automated rules-based use of morph targets and delta sets for lip-synchronized three-dimensional animation.

      “except that no particular ‘explicit and distinct’ rules are required by the claims. The question is therefore whether the inclusion of that concept in the claims satisfies § 101 given (1) the prior art, and (2) the fact that the claims do not require any particular rules. The question is therefore whether the
      inclusion of that concept in the claims satisfies § 101 given (1) the prior art, and (2) the fact that the claims do not require any particular rules.”

      “So, what the claim adds to the prior art is the use of rules, rather than artists, to set the morph weights and transitions between phonemes. However, both of these concepts are specified at the highest level of generality.”

      “Because the claim purports to cover all such rules, in light of the prior art, the claim merely states “an abstract idea while adding the words ‘apply it.’”

      Functional-at-the-point of novelty, meet 101.

      1. 1.3.1

        Great analysis and a great result.

        This is how a broken patent system begins fixing itself.

        no particular ‘explicit and distinct’ rules are required by the claims. The question is therefore whether the inclusion of that concept (i.e., “rules”) in the claims satisfies § 101 given (1) the prior art, and (2) the fact that the claims do not require any particular rules.

        There was simply no eligible contribution to the prior art that could be claimed.

        Very well done.

      2. 1.3.2

        It does look very close to your arguments, Ned. I found that interesting.

        There is also this:

        Concomitantly, we must be wary of facile arguments that a patent preempts all applications of an idea. It may often be easier for an infringer to argue that a patent fails s 101 than to figure out a different way to implement an idea, especially a way that is “less complicated – less liable to get out of order – less expensive in construction, and in its operation.” But the patent law does not privilege the leisure of an infringer over the labors of an inventor. Patents should not be casually discarded as failing 101 just because the infringer would prefer to avoid the work required to develop non-infringing uses of the abstract idea at the heart of an appropriately circumscribed invention.

        Of course, Wu then goes on to find that the patent is “preemptive” centrally because no one can use the specific technique that it recites… which is, by definition, the sole consequence of every patent. So that’s not very encouraging for support by higher courts.

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