Federal Circuit Falls in Line: Supporting Strong Limits on Patent Eligibility

By Dennis Crouch

In buySAFE v. Google (Fed. Cir. 2014), the Federal Circuit has found the patentee’s computer-based-transaction patent to be invalid as an abstract idea lacking subject matter eligibility. The decision by Judge Taranto and Joined by Judge Hughes is somewhat unremarkable and the holding falls easily within the framework created by Alice Corp and Mayo.  At the same time, the Federal Circuit offers several nuggets that may provide broader fodder for future eligibility challenges.

In its recent software patent decision of Alice Corp., the Supreme Court identified its underlying policy motivation for denying patent rights to abstract ideas, laws of nature, and natural phenomenon. The high court’s concern is “that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014), quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012).

Bright Line Test as a Proxy for the Policy Goals: In Mayo, the Supreme Court explained that the exceptions to patentability (law of nature, abstract idea, product of nature) serve as proxies “for the underlying building-block concern.”  Although admittedly an inexact substitute for the particular policy concern, the named exceptions are “somewhat more easily administered” and also have the benefit of substantial tradition. By using a proxy for its underlying concern, the Supreme Court seems ready to admit that some excluded inventions will not have raised substantial building-block concerns, however, the court concludes that judges simply “are not institutionally well suited to making the kinds of judgments needed to distinguish between” them. Mayo.  Thus, the result is a “bright line” exclusion against abstract ideas, laws of nature, mathematical formulae, and natural phenomenon.

Narrowness of Idea Cannot be Judged: Of particular importance here, although the breadth of an abstract idea is relevant to its impact on future innovation, the court here is clear that the breadth or narrowness is not relevant to the application of the exclusionary rule itself.  Rather, the exclusionary rule applies “even if the particular . . . abstract idea at issue is narrow.”

The Process of Determining Eligibility: The process then for determining subject matter eligibility is: (1) determine whether the patent claim is “directed to subject matter in one of the three excluded categories;” and (2) if so, determine whether “the additional elements” of the claim supply an “inventive concept” that is “significantly more than” the ineligible matter itself.  In explaining this second step, the Federal Circuit expounded that the inventive concept must be “in the physical realm of things and acts – a ‘new and useful application’ of the ineligible matter in the physical realm.” Further, merely requiring a generic computer implementation of an ineligible idea does not move the invention “into section 101 eligibility territory.”

Physicality requirement?: You might query how the Federal Circuit’s physicality requirement comports with Bilski v. Kappos, 561 U.S. 593 (2010) (rejecting the machine-or-transformation test as determinative).  The Federal Circuit actually takes an odd interpretation of Bilski.  The court here suggests that the Supreme Court rule on business method patents is that they are certainly directed to abstract ideas (step 1 above), and that they are only patentable with additional inventive concepts tied to the physical realm.

What is an Abstract Idea?:  Up to now, the courts have avoided providing any solid definition for the abstract idea test.  And here, the Federal Circuit was also able to duck that issue because the particular claims at issue are somewhat parallel to those seen in Bilski and Alice. Namely, the claims focus on arrangement involving contractual relations between parties and involving “a fundamental economic practice long prevalent in our system of commerce.”

In the present case, the patented “transaction performance guarantee” is, according to the court here “beyond question of ancient lineage.” And, the patentee’s addition of the computer and computer program in generic terms were insufficient to meet the eligibility test outlined above.

Invalidity affirmed.

I should note that the court did not discuss the presumption of validity or the standard of evidence applied to the underlying elements of the Alice Corp eligibility test.

= = = =

Claim 1 of US Patent No. 7,644,019:

A method, comprising:

receiving, by at least one computer application program running on a computer of a safe transaction service provider, a request from a first party for obtaining a transaction performance guaranty service with respect to an online commercial transaction following closing of the online commercial transaction;

processing, by at least one computer application program running on the safe transaction service provider computer, the request by underwriting the first party in order to provide the transaction performance guaranty service to the first party,

wherein the computer of the safe transaction service provider offers, via a computer network, the transaction performance guaranty service that binds a transaction performance guaranty to the online commercial transaction involving the first party to guarantee the performance of the first party following closing of the online commercial transaction.

= = = = =

An interesting element of this particular decision is that Judge Rader was originally a member of the panel but lost his vote when he retired in June 2014.  Most certainly Judge Rader’s presence on the panel would have impacted the language used to reach these results.

249 thoughts on “Federal Circuit Falls in Line: Supporting Strong Limits on Patent Eligibility

  1. I am not a lawyer yet have been following Vringo v. Google. What are your ideas on this case? Also, I see much discussion on what should/shouldn’t be patentable but seemingly no discussion on how to protect/reward ideas that lead to great improvements/efficiencies, etc… Specifically, Vringo led Google to enable billions of ad revenues to be realized yet, it was by software algorithms. Google acknowledges Vringo’s contribution but claims it was obvious. So, how should someone be properly compensated for enabling great gains to be had by others when those gains came from software innovation?

  2. The word “abstract” can be defined as “existing in thought or as an idea but not having a physical or concrete existence.” Synonyms include “theoretical” or conceptual”. In a patent context then, an abstract idea is a “mere idea”, that is, one that is non-enabling, e.g. “catching mice” or “flying to the moon”. A substantive or concrete idea is therefore one that is enabling, that describes, to continue on with the examples, an apparatus for catching mice or a system for flying to the moon. I submit that the claims in the Alice and Bilski describe substantive ideas, and that looks to be the case for the Walker, Genetic, Cote and Jung cases as well. My criticism of the SCOTUS holdings is that they are using Sec. 101 as a surrogate for what should have been, and I argue was defacto, a Sec. 102 analysis. Now, it may be true that these cases all describe methods/ideas that are notoriously well known in the prior art, and thus do not describe patentable subject matter, but that does not somehow transform them into abstract ideas for exclusion as nonpatentable subject matter under Sec. 101. First of all, how and why should we engage in what seems to be a useless exercise in distinguishing between when an idea is so well known in the prior art that despite the fact that it includes specific teachings or enablement it is nonetheless “abstract” and when it is not that well known and not abstract, when this is clearly a Sec. 102 inquiry? This approach hopelessly confuses the purpose of having, and the differences between, Sec.’s 101 and 102. The further problem then is that we will be expanding sec. 101 well beyond the reach that it was intended to have. That section was written broadly to include “any new and useful process, machine, manufacture, or composition of matter…” (Emphasis strongly supplied.) Sec. 101 was simply not intended to exclude enabling ideas or methods regardless of how well known they may be, that is the purpose of Sec. 102. That said, is the foregoing however merely a distinction without a difference in the sense that maybe it does not matter if a patent is found invalid or a technology unpatentable under Sec.’s 101 or 102, as it is just as dead either way? I would urge caution. A needless expansion of the scope of Sec. 101, at the very least, wastes attorney, court and examiner time and hence increases client’s costs by having to debate whether or not an idea is abstract even though it includes enabling subject matter, as compared to simply defining an idea as being abstract only when in contains no enabling subject matter. At worst, courts, juries and examiners will inevitably make mistakes and preclude 102 analysis of an invention that is not only not an abstract idea but one that was correctly issued as a patent or that would have been found patentable had the 102 analysis been allowed to proceed rather than being rejected under Sec. 101. Thus, rather than promoting “the progress of Science useful Arts” under Article I, Sec. 8 of our Constitution, we may be accomplishing just the opposite. It should also be pointed out that in addition to Sec. 102 we of course have Sec.’s 103 and 112 as further tools to guard against the issuance or validation of patents on undeserving technology. Thus, I would generally agree with the SCOTUS that taking a method that is not novel and merely accomplishing it with a general purpose computer is an obvious expedient. However, history teaches that “black letter law” is a concept that is dubious at best when applied to the full spectrum of human interaction, and especially, I would argue, when we attempt to apply such an approach in the context of the complexity of human invention. Thus, I think it would even be a mistake to assume that every application of a general purpose computer to a “known” system would be obvious. It could very well be that capturing a method in a software context is not merely as straight forward as it may appear on the surface, thus we would be making a mistake to prejudice our approach to the issue with the assumption that it is. I understand that what I suggest would reduce the current scope of what is not patentable under Sec. 101, but, as I contend herein, that statute was and is not supposed to be far reaching in its exclusionary ability. Moreover, it is the function of Sec.’s 102 and 103 primarily to determine whether or not an invention is patentable or used to determine if an invention was properly protected with an issued patent. Thus, I think the impact of the Bilski and Alice case holdings can and should be diminished and that could be accomplished if courts and examiners are reticent to find ideas as being abstract where they contain enabling/concrete subject matter and then move forward and proceed with a 102/103 analysis.

    1. Sten, I agree that the Supreme Court is not using the term “abstract” the way it was used in Leroy v. Tatham or O’Reilly v. Morse, or in its ordinary sense. They are using it to describe non statutory subject matter in the context of a claim that mixes both the statutory and non statutory. In such situations, the new, albeit, nonstatutory, subject matter historically (Hotel Security and its progeny, also Funk Bros.) cannot be the invention. In mixed subject matter cases, the invention still must be in the statutory parts.

      The reason we are in the fix we are in is because Stevens, who argued in Bilski for restoration of Hotel Security that had not been followed by the Federal Circuit in State Street Bank, did not gain a majority. Still Breyer, who was with Stevens in Bilski, appears to have convinced the court that its analysis is correct. Thus we have Prometheus and Alice that discounts, i.e., gives no weight to, old, conventional, but eligible subject matter in the 101 analysis. In other cases, such as printed matter, involving 102/103, the courts give the non statutory subject matter no weight.

  3. “I should note that the court did not discuss the presumption of validity or the standard of evidence applied to the underlying elements of the Alice Corp eligibility test.”

    Well Dennis, as you noted in your February 12, 2013 post, “[s]ubject matter eligibility is a question of law and is normally based on very few factual determinations.”

    What are the factual determinations of the “underlying elements of the Alice Corp eligibility test”?

    1. What are the factual determinations of the “underlying elements of the Alice Corp eligibility test”

      Does the claim implicate 101 (e.g., is there a recitation in the claim of subject matter that would be ineligible if the other elements in the claim weren’t present; e.g., does the claim refer to absractions such as legal status or other intangible relationships between people or objects)?

      Does the claim recite eligible subject matter that would be patentable on its own terms (novel structural elements, described in objective structural terms) that would rescue the claim, or does the claim merely recite old conventional informatino processing devices used for their intended purpose (i.e., processing information)?

      Those are some examples of the factual determinations.

      1. Does the claim implicate 101

        UM, are there any examples of a claim that does not implicate 101? any?

        Bueller…?

        …on its own terms” um, that would be a NO – that’s a misrepresentation and anti-Diehr non-claims as a whole approach. The Court still has not eliminated that, couching the analysis (currently) in a “look at both the individual elements and the claim as a whole.”

        Of course, that step is rather meaningless – as you probably notice – when you apply the “”Gist/Abstract” sword and go ahead and ignore claim elements anyway in getting to the “gist.”

  4. “Not institutionally well suited to making the kinds of judgments needed to distinguish between” them” is the essential reason software patents are an absurdity. Reasonable minds can disagree about expressions made in languages, which is what software is, math or no math. Patents are for THINGS.

    May this river of 101 invalidity continue until software patent assertion is no more, and software patent prosecution is seen as a waste of time. Nothing will change in the real economy as a result.

    1. Absolutely agreement here, Martin.

      It’s only a matter of time.

      I am surprised by the complete lack of any attempt at finding a practical, coherent middle-ground proposed by any proponents of functional-claiming.

      Maybe they believe that there isn’t anyway. That’s a reasonable belief, I think.

      Neverthless, it’d be nice if Dennis could dig up a thoughtful, articulate guest commenter who has given a lot of thought to a practical scheme that might satisfy the concerns of both of the warring factions, at least for the short term. Surely there must be someone out there on the pro-software patent side who recognizes that information-processing presents unique issues and who isn’t content to simply issue silly threats about an imaginary inevitable economic collapse.

      1. I am surprised by the complete lack of any attempt at finding a practical, coherent middle-ground proposed by any proponents of functional-claiming.
        Maybe they believe that there isn’t anyway. That’s a reasonable belief, I think.

        Or maybe they believe that any attempt to actually discuss the issues would be overwhelmed by the silly and repetitive noise that abounds here. That’s another reasonable belief, I think.

    2. Mr. Snyder has previously admitted knowing nothing about the law – and his posts sound in rants of pure anti-software rhetoric.

      He toned down his posts for awhile – coincidentally when my rebukes on his beliefs were coupled with an admonition for him to make sure that his lawyer had informed consent in his representation (it was doubtful that informed consent was present given how off-base Mr. Snyder’s rants were).

      We are now seeing a return to that same off-base rhetoric.

      Either Mr. Snyder is slipping up and being dishonest about material aspects of the law as he understands them – or his lawyer still is operating without informed consent.

      Neither situation is exactly tenable, is it Mr. Snyder?

      As for Malcolm jumping in and joining the rant of one so off-base, that surely is his right to his opinion, and if there were no ethical constraints on a lawyer in their advocacy – and make no mistake that Malcolm is engaged in advocacy – their would be no issue with “opinions.” But opinions from those who profess to be lawyers do have constraints, and as many (including non-lawyers) note – they turn to this forum to see lawyers talking about the law – and clearly the oaths we take and the ethical obligations we place on ourselves apply here.

      If we are going to “clean this place up” – this unethical advocacy is a much better place to start. N’est ce pa?

        1. Intolerable is a blessing and a curse – a curse to those who find inconvenient what they deem to be intolerable.

          It is no surprise at all that you and others like you (rad that as having certain views on the law) continue to ge nerate this fake umbrage.

          Such is a shallow and easily seen threw rhetorical t001.

          Stop playing such games.

    3. Mr. Snyder,

      Software is a thing. It is a manufacture made by man with the express purpose of being a machine component.

      That is the definition of software – it does not exist apart from the reason it is made.

      There is no example of software that has been made that has been made to NOT be used as a machine component. Such is an impossibility.

      Kindly stick to reality when discussing the topic here.

      Thanks.

      1. I clearly know more than nothing about patent law anon or I would not be interested in the ins and outs of the MoT test or any of the context needed to even understand the question. You can pretend that what you do is so complex and demanding that non-lawyers can’t gain standing to participate in discussions about it, but you are simply wrong.

        To your wrongness about software: software is a set of instructions with which to operate a machine. The machine should be patent eligible if there are novel structures involved.

        Novel instructions should not be patent eligible for the same reason that any other sets of instructions are not patent eligible.

        Finally your theory on my attorney’s informed consent is laughable; as in, if you ever tried to introduce that into a proceeding in the real-world, you would be actually laughed at.

        The standards for competence in a legal sense are very low- I’m sure I manage to clear that bar. You on the other hand? mmmmmmmmm

        1. Pretend complex….?

          That’s a pretty strawman. The comment about your knowledge of law stems from your very own statements.

          I do hope that you have learned something of the law since you first began your rants here. If you recall, my advice to you was to learn what you were ranting about, because your rants were filled with clear legal errors.

          I offer no such “you must be a lawyer” to converse standard. I cannot see where you are getting that absurdity from. On the other hand, I am sure that you will agree that making known false statements – be though statements ones of law or ones of fact should not be tolerated, right?

          Or do you think making known false statements is a good thing, if those known false statements advance an agenda?

        2. I certainly hope that your attorney does not share your disdain of informed consent.

          That you think such a laughing matter only highlights how little you do understand of law. You think that you meet a bar of competence while you want to glorify yourself in ignorance speaks more against your viewpoints than anything anyone could ever type.

  5. One can perform a new (and patentable) method with old structure.

    Indeed that is possible.

    Getting back to patent law, you can even claim certain such methods and some of them will be eligible.

    Of course, the second half of my comment where that issue was addressed was deleted by your li’l buddy. Not my problem.

    1. was deleted by your li’l buddy.

      Pretty sure the only person who can delete posts is Prof. Crouch.

      As to any claim to an item, are you ready (yet) Malcolm to discuss inherency and how a claim to an item cannot cover that item if the item it changed so that it now has a new capability?

      You know, the oft-discredited “House/Morse” fallacy that you still insist on using in your advocacy here?

      1. Pretty sure the only person who can delete posts is Prof. Crouch.

        I wasn’t referring to a deleted post.

        Once again, Dennis: is this the level of discourse you’re looking for? If not, then you know what to do.

        1. Prof. Crouch has already indicated a desire – but that desire does not match with your statement of “intellectual honesty is not required on a blog

          Feel free to change your ways at any time Malcolm.

  6. Let’s make yet another attempt to bring the allegedly “confused” class of 101-deniers back to reality.

    A fine example of the confusion may be found downthread when a relentlessly “confused” commenter writes:

    even being in one of the statutory categories is meaningless under the sword of “Gist/Abstract.”

    The objection here appears to be that one can claim “a process” (even a process that involves a physical transformation) or an “apparatus” (even an apparatus that you can “put on your desk”) and still run afoul of section 101. Indeed, that’s true. And it must be true unless we wish to create a giant loophole through which ineligible subject matter can still be protected with patents.

    Here are two simple examples to illustrate the problem, one for each type of superficially “statutory” claim (“process” and “apparatus”).

    With respect to the process claim, consider the case where someone discovers an ineligible abstraction such as a non-obvious and useful correlation. Then consider the following claim:

    1. A process comprising drinking a cup of caffeinated coffee and thinking about [insert correlation here].

    That claim recites a process — it even includes a physical change and a drug! — but it’s certainly ineligible because it turns law abiding coffee drinkers into infringers when they think about the ineligible correlation. It doesn’t matter how valuable or “narrow” the correlation is. The claim protects ineligible subject matter and therefore the claim is ineligible. That’s the Mayo logic in a nutshell. It’s unassailable and it’s essential to any sane patent system. When a person (allegedly) fails to understand this or fails to acknowledge that this problem exists (and will always exist — it’s not just a philosophical question), it’s extremely difficult to take anything else the person says seriously. Why bother listening to such a person?

    Now let’s look at an “apparatus” claim.

    1. I claim an apparatus, wherein said apparatus comprises a display, wherein said display is [insert useful non-obvious correlation here].

    This claim is ineligible according to the exact logic used in the preceding example. The claim protects the correlation (ineligible information) in the context of old displays. Such a claim would, if enforceable, prevent law-abiding people from displaying “new” information on old devices that were created for precisely that purpose. That’s not permitted. It doesn’t matter how useful or valuable the information on the display is.

    None of this is very difficult to understand but it is extremely important. And there are many simple variations on these hypotheticals, as well as more complex variations. Those variations don’t change the outcome, nor should they.

    The key to avoiding the problem is to recite a new structure in your claims, in objective physical terms, or a new step (or combination of steps) that causes a physical change in matter, where it was previously not known in the art that such steps could result in that change.

    Otherwise, all bets are off. As they should be.

    Patents are for promoting progress in the Useful Arts, not for protecting information and certainly not for “protecting investors” regardless of the nature of the activity the investor wants to gamble on.

    1. So that I am not (falsely) accused of taking your words out of context, please explain the legal foundation for this “key” of claims in objective physical terms (when the law permits otherwise) or steps causing a physical change in matter (part of MoT) where likewise, the law permits otherwise.

      From your insistence (repeated so constantly), it does appear that you believe this to be an actual legal requirement.

      Do you recognize that your “key” does not accord with the law?

      1. What are the odds of Malcolm responding to my post in a cogent and intellectually honest manner?

        And yet, he blithely goes about posting in a manner misrepresenting what I post – a pattern repeated ad nausuem, and clearly tied to a position of legal advocacy that exhibits a complete indifference to portraying the actual law under discussion on these many threads.

    2. MM,

      I am generally in the camp with Sten Hakanson and feel that all “abstract idea”-type eligibility concerns can be more logically handled under 102, 103, or 112. When I read your two hypotheticals, I was initially at a loss for how to square them with this view, but after some thought I have an answer. You may see it as a stretch, since it involves a fairly liberal application of 102/103, but here is how I feel these claims should be rejected:

      1. A process comprising drinking a cup of caffeinated coffee and thinking about [insert correlation here].

      1. I claim an apparatus, wherein said apparatus comprises a display, wherein said display is [insert useful non-obvious correlation here].

      First looking at the process claim, I would say that this combination of process steps is obvious under 103, regardless of how non-obvious and useful the correlation is. The process of drinking coffee and thinking is well known. An example might be found in a published story, e.g. “She sipped her coffee and thought about….” Given any known example of a specific item of thought combined with coffee, it would be an obvious modification to replace that item with [insert correlation here].

      Why? Well, imagine for a moment that the correlation is well known. It could never be successfully argued that thinking about the well-known correlation is a non-obvious thing to do with the correlation. You couldn’t say that the correlation has been known to the scientific community for many years and no one has yet considered thinking about it. So, if someone tried to patent a process of drinking coffee and thinking about the known correlation, it should clearly be obvious. But using what reasoning? Well, one might say that, given published examples in stories of people thinking about X with coffee, it is an obvious modification to think about Y with coffee, where Y is the known correlation. Why? I suppose a person having ordinary skill in the art would understand the benefits of thinking about X with coffee, such as allowing the person to deduce more about X, and such a person would have a reasonable expectation of success in replacing X with Y, i.e. a reasonable expectation that thinking about Y with coffee would allow the person to deduce more about Y. To put it differently, thinking about something is just the use of one’s thinker for its intended and well-known purpose. Thinking about a particular thing falls squarely within this purpose and typically doesn’t produce any kind of synergistic result.

      So, back to your example, I believe the exact same analysis can be applied to the case where the correlation itself is novel and non-obvious. Essentially, there is NOTHING that it is not obvious to think about, just as there is nothing that it is not obvious to say, and nothing that it is not obvious to display on a screen as in your apparatus claim. These are the intended purposes of the things that do them, and the results don’t change just because the item being thought about, spoken, or displayed is different. In other words, the results are 100% predictable. (Of course the situation could be different, like if the brain is connected to a thought-controlled input device and the particular thought produces an input that goes against expectations, but this is not your example.) Therefore, the fact that no one has yet thought about the novel correlation might make the claim novel, but it does not make the claim non-obvious. In the same way, the fact that no display has yet displayed the novel correlation only makes the apparatus novel, while the apparatus remains an obvious modification of a known display.

      Do you buy it? Does anyone? (I do, so far.)

      1. Probably one-off, the proper analysis to determine whether the claim includes ineligible subject matter, determine whether the otherwise eligible subject matter, read statutory, is new and/or nonobvious, and if not, whether the ineligible is integrated into the eligible to produce an improved result, and, if not, the claim is directed to the ineligible subject matter because that is the novel subject matter and the rest of the claim elements, although they might be statutory, are not modified by the ineligible subject matter.

        To declare a claim unpatentable under 101, it must be clear that the statutory subject matter is old. If not one must conduct a novelty analysis on the statutory subject matter. When conducting 102/103 analysis, one must discount and to give no weight to the ineligible subject matter unless it is integrated so as to modify the eligible subject matter.

        1. Thanks for your thoughts. That sounds to me more like the European approach. I don’t read Alice as completely adopting that approach (though perhaps it comes close).

          I think MM’s examples come close to presenting a scenario where a narrow eligibility rule is important to have, but I maintain that such a narrow eligibility rule is still unnecessary even in those examples. Instead, obviousness itself should be applied more liberally.

          As another hypothetical, what do you think is the proper mechanism for invalidating the following claim?

          1. A method comprising:
          counting out loud to 29;
          thereafter, within one minute, brushing someone’s teeth; and,
          30 seconds after the brushing, doing a handstand.

          I would say the method is obvious, though surely it is novel. How can we say it is obvious if there seems to be no reason to do it? The reason is, I think, that the steps have no synergy. The method is totally random and is merely the combination of processes that yield exactly the results expected of them separately.

          Or, should this sort of claim be allowed?

          Assuming we can reject this claim as obvious, I think the situation is analogous to MM’s claims. To see the similarity, first imagine an equally random thought added to the mix:

          1. A method comprising:
          counting out loud to 29;
          thereafter, within one minute, brushing someone’s teeth; and,
          30 seconds after the brushing, doing a handstand while thinking about the queen of hearts carrying two beavers by their tails.

          We don’t need 101 to invalidate this claim. Even though no one has ever thought of the queen of hearts carrying two beavers by their tails, we don’t need to go there because this method is obvious regardless of what the person has to think about while doing the handstand. Does the fact that no one has ever thought of the queen of hearts carrying two beavers really make the entire claim non-obvious? Of course not.

          This brings me to what I think is a subtle flaw in MM’s examples. He claims that the new correlation is “non-obvious.” But can we really ever say a new correlation is “non-obvious”? Just like the queen of hearts carrying two beavers, can’t we only really say that “no one has ever thought of it before”? Obviousness is a legal term of art that applies to claimed inventions. A correlation itself cannot be obvious or not, but the way it is used can or can’t be. I argue that merely thinking about a correlation (any correlation) while drinking coffee is an obvious combination of features as a whole.

          1. Probably, you do recognize that if you cannot exclude the ineligible subject matter from consideration under 103, the examiner is going to have to come up with some prior art showing all the limitations of the the claim?

            As to two unrelated things being in the same claim, the problem was once called “aggregation,” a form of indefiniteness, IIRC.

            1. Actually, I find the post-KSR framework to be very flexible and believe it is possible for an examiner to provide a reasoned articulation of obviousness without finding all the limitations in the prior art.

    3. MM, technically, in the two examples, there is a mixture of the statutory with the nonstatutory, with the statutory subject matter being old. The claims are not patentable. It confuses to say that the claim is ineligible.

  7. buySAFE and pretty much every other claim that looks like it was the target of the Supreme Court’s decision in Alice and we now know that the enforcement value of tens of thousands (maybe hundreds of thousands) of patents now rests firmly between zero and nuisance.

    The open question is whether Alice overruled Alappat, such that software cannot even be claimed in means plus function format supported by sufficiently details diagrams/appended source code/etc.

    1. The open question is whether Alice overruled Alappat, such that software cannot even be claimed in means plus function format supported by sufficiently details diagrams/appended source code/etc.

      No – that is expressly not an open question as I answered that question after oral arguments and before the decision came out by noting that since both sides had stipulated to certain facts, that that issue was not before the Supreme Court, and any notion of them overruling that case would be void as not pertaining to the case or controversy before the Court (and would thus be an advisory opinion).

      Let’s not kick up the dust on that established point.

      1. I raise it mainly because EFF in their Ultramercial amicus brief is focused on Alappat. It’s also an issue in terms of how to value portfolios for litigation.

            1. Also off-limits – the same “no advisory opinion” logic follows.

              To be perfectly blunt, what the Court is doing here simply does not even need to bother with Alappat for the simple reason that the statutory category aspect of 101 can be met, and STILL the Court can wipe out the claim based on “Gist/Abstract.”

              Your attempt here to kick up dust on Alappat simply is a non sequitur to ANYTHING coming out of the Alice decision.

              I have fully explained this previously.

                1. A higher court can overrule an entire range of lower court decisions directly or by implication.

                  There’s even an expression for it: overruled sub silentio.

                  At root, my question is whether that happened here.

                2. Not so much rigid, as not necessary accurate.

                  Doesn’t matter, I guess. Notwithstanding the disputes on this board, the reality is that nobody really knows how it’s going to shake out in practice. I have my theories, but that’s all they are.

                  Cheers

      2. “that is expressly not an open question as I answered that question after oral arguments and before the decision came out by noting that since both sides had stipulated to certain facts,”

        And anon has authority in this matter.

        1. You appear to once again confuse authority of the person with veracity of what that person has shared.

          You really should try to grasp that concept 6.

          1. “You appear to once again confuse authority of the person with veracity of what that person has shared.”

            Oh yes, “veracity”, like the “veracity” of all the horse hockey you spewed about Diehr for years and years.

    2. not anon, Alappat’s MPF claims were directed to hardware in a graphics unit for a display. Take a look at Fig. 3 of the patent that eventually issued. Circuits. That is what was claimed.

      All else in Alappat about programmed machines being per se eligible is was simply dicta. The PTO complied with the dicta however, and issued a lot of patents relying on that dicta.

      Alice did overrule that dicta.

      1. WRONG again Ned – for reasons we have already discussed in great detail (including my quoting to you what “Holding” means from Black’s Law Dictionary.)

        Merely regurging your already defeated arguments does nothing Ned.

        And as I pointed out (directly) to you previously – the issue was not there for the Supreme Court to even rule on.

        You do remember the “no advisory opinions” limitation on Supreme Court rulings, right?

      2. Well, ok. What about Fed. Cir. cases like Inventio AG, Power Integrations, and MIT where you have “circuits” being claimed functionally? What about WMS: “The instructions of the software program that carry out the algorithm electrically change the general purpose computer by creating electrical paths within the device.”

        Where’s the line? Is it really the case that you can’t bring patent enforcement suits until it’s all sorted out?

        1. The “line” – as I noted above – has absolutely nothing to do with Alappat.

          The sword of “Gist/Abstract” cuts away any concern that the Court even deal with any claim meeting any of the statutory categories.

          Period.

          Where’s the line?

          Ha – that’s a good one. The Supreme Court refuses to tell anyone – and as I mentioned to someone else asking a similar question, the reason that they so refuse to tell – that they refuse to set such a bright line – is because if they were to do so, then their finger in the 101 nose of wax addiction would be defeated.

          Their addiction has not been satiated. See Prometheus: no matter what, they will not let their own implicit writings become dead letters. It simply does not matter that applicants play “scriviner games” and write claims that meet the words that Congress has used for 35 USC 101, the Court will still see some “gaming” going on and will enforce a law that they want in place (implicitly, explicitly – with the added word of “technological” also undefined, or otherwise).

          1. Precisely none of these “electrical paths” are described in the typical computer-implemented functionally drafted claim except from a 100,000 foot level (“configured to”).

            1. And yet again, you appear to purposefully mis-advocate as to what a claim must entail, and ignore just how a claim is to be read.

              Do you really enjoy this game of yours?

        2. ““The instructions of the software program that carry out the algorithm electrically change the general purpose computer by creating electrical paths within the device.””

          First “electrical ‘paths'” aren’t a part of a general purpose computer, they are what are created in a computer when it is used. They are the product of the computer being used so to speak.

          Second, to the extent that he is referring to physical “electrical ‘paths'” as in “circuitry”, none of that changes what so ever.

          I’m starting to understand the nonsensespeak being used by these folks though. Clever word play designed to confused those ignorant of electronics.

    1. re-arranged the deck chairs on the Titanic

      Not at all. What your seeing here is Cal Hockley’s collection of 100,000 anvils being thrown overboard at the request of the vast majority of passengers who aren’t inclined to be drowned just so Cal Hockley can enjoy his steak.

      And yes: more to come.

      Get used to it. We all knew this party was going to end soon and we all knew that the entitled class of abusers was going to cry holy h ell when it happened.

        1. You do not appear to understand the way that IBP used the phrase.

          Is this the level of discourse you’re looking for Dennis? If not, then you know what to do.

  8. Dennis: the court did not discuss the presumption of validity or the standard of evidence applied to the underlying elements of the Alice Corp eligibility test

    Not really an issue here because both parties acknowledged the existence of information-processing machines in the prior art.

    What else is left? Some bizarre argument that some “skilled” person in some “art” (which one?) would not have predicted that computers could be used to facilitate commercial transactions? There probably are some patent attorneys out there desperate enough to make such an argument, given the similarly desperate “arguments” posted by the s 0ftie w0ftie cheerleaders here every day.

  9. splinter: The court’s statement about “doesn’t matter how narrow” shows how clueless they are.

    The fundamental issue resolved correctly by the Supreme Court in Mayo v. Prometheus is that you can’t protect abstractions or data or correlations or information merely be appending the recitation of such to a claim that recites otherwise unpatentable (i.e., old) technology. Period. It does not matter how complicated the information is, or how useful the information is, or how surprising the information is, or how much X is willing to pay Y to control the information for 20 years. All that’s irrelevant because you can’t protect the information (or any other abstraction) with a patent. It’s always been thus and it always will be.

    So you say you’ve “invented” a super nice “new” computer that’s “new” because it has information stored on it that’s super valuable (and retrievable on demand). Great! Enjoy it. A claim to that computer that recites nothing new except the information is ineligible because it protects that information (it prevents it from being put on a computer in a retrievable manner). As the Federal Circuit just informed you, it doesn’t matter how specifically you describe this information or how non-obvious or “narrow” the description of the information is. It’s ineligible, period.

    This is not difficult stuff to understand. It really isn’t.

    The best part is that there is more to come. There are multiple major malfunctions out there, some implicating 101 more strongly than the other statutes, and some others implicating the other statutes more strongly than 101.

    Wait until the courts and the PTO start to seriously address the plague of functional claiming at the point of novelty. Or the practice of “limiting” old information processing logic by re-labeling the information.

    Oh, it’s going to fun. Much more to come! The s 0ftie w 0ftie crowd is going to need a bigger box of kleenex.

    1. merely be appending

      because mere appending (without integration or being functionally related) as anything to do with anything….

      LOL – are you ready yet to give cogent and intellectually honest answers to the several points I have made against your “pet theory?”

      Or will you (yet again) run away?

    2. The court made comments about the narrowness of excluded subject matter – the law of nature, abstract idea, or product of nature, not being relevant. However, these comments were not about the claim as a whole. If these comments had been done about the claim as a whole, I agree with splinter that it would have been in contradiction with the preemption concern.

      1. If these comments had been done about the claim as a whole, I agree with splinter that it would have been in contradiction with the preemption concern.

        LOL. By all means let’s talk more about what the errors in statements that the court didn’t make.

    3. MM: The fundamental issue resolved correctly by the Supreme Court in Mayo v. Prometheus is that you can’t protect abstractions or data or correlations or information merely be appending the recitation of such to a claim that recites otherwise unpatentable (i.e., old) technology.

      I am still struggling with that portion. What is old technology has been new before. How is 101 eligibility supposed to work? Some inventions become non eligible from one day to the next? Based on what, published prior art, filed US applications?

        1. Good link. What evidence is there behind the concern “that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity?”

          1. I have discussed this very point previously – when I explained the constitutional angle to 6 and Ned.

            Quite simply, there is NO evidence, and there can BE no evidence, and the phrase is entirely subjectively conjecture about what may happen if a too-powerful patent is granted.

            Since such has never happened on any actual patent ever granted (and as my pal Hal Wegner would happily point out that patent law does not block experimenting ON a patented invention), such can NEVER happen, a critical eye on this line of B$ from the Court should prompt the Court to stop pretending that such is a concern**).

            **And if – even for argument’s sake, we allow for such a concern to exist, such would be a policy decision that falls to the dominion of the Legislative Branch – and not the Judicial Branch. As I also explained to 6 and Ned, our explicit grant of authority to the Legislative Branch of the government to write patent law precludes the Judiciary from writing patent law – either implicitly or explicitly. Their option upon finding a law written by Congress to be unconstitutional does NOT include changing that law to be – in their minds – constitutional. They simply do not have that authority given the direct words in the Constitution.

            1. (and as my pal Hal Wegner would happily point out that patent law does not block experimenting ON a patented invention)…

              That’s an interesting assertion. How does that work?

              1. It works given caselaw that one is not guilty of infringement for any number of ways.

                But we have had this discussion before Dan H/Leopold, and I suspect your question to be not asked in any sense of wanting an actual discussion on the merits.

                1. It works given caselaw that one is not guilty of infringement for any number of ways.

                  I’m not sure what that means, but I’d appreciate a cite to that case law.

                  But we have had this discussion before Dan H/Leopold, and I suspect your question to be not asked in any sense of wanting an actual discussion on the merits.

                  I don’t remember any such discussion. I’m simply asking for the basis of the claim that “patent law does not block experimenting ON a patented invention.” If you made it up, just say so. If you have a real basis for it, then I would be extremely interested in seeing it.

                2. Caselaw citations were given in previous conversations Leopold.

                  your “don’t know what that means”… – the Malcolm Vinnie Barbarino meme does not work for him – why do you think it will work for you?

                  two second google search: Additionally, the concept of “experimental use” may have different significance in “commercial” and “non-commercial” environments. See MPEP § 2133.03(c) and § 2133.03(e) – § 2133.03(e)(6).

                  link to finnegan.com

                  Clearly, you are not serious and merely (again) charging at the red cape of anon said.

                  (and as usual, your antics fail)

            2. there is NO evidence, and there can BE no evidence, and the phrase is entirely subjectively conjecture about what may happen if a too-powerful patent is granted. Since such has never happened on any actual patent ever granted

              There was actually a Supreme Court case called Mayo v. Prometheus where an abstract idea “a correlation” was protected by a patent. That patent was enforced all the way to the Supreme Court because, Prometheus insisted, someone at Mayo had infringed by looking at some data and thinking about the correlation.

              my pal Hal Wegner

              I’ll remember to ask Hal about this next time I speak to him.

              1. Your response Malcolm is not on point, as the Prometheus case is not related at all to the current point under discussion.

                But then again, you already knew that, didn’tcha pumpkin?

      1. Pika, your understanding might be enhanced by reading Hotel Security and its progeny, that includes In re Russell.

        Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2d Cir. 1908).

        Guthrie v. Curlett, 10 F.2d 725 (2d Cir. 1926).

        In re Russell, 48 F.2d 668 (C.C.P.A. 1931).

        The Supreme Court is essentially following these cases. If the novel subject matter is nonstatutory, the claim as a whole is unpatentable unless, as in Diehr, it is integrated into an otherwise statutory process, machine, etc.

  10. […] After the Federal Circuit’s ruling yesterday in BuySAFE v. Google, my sense now is that even if people continue to push useless patents through the patent office, practitioners are now waking up to Fed. Cir. precedent knocking down any “generic computer implementation of an abstract idea”, and litigators are realizing they have a powerful defense argument now available to them.  (link) […]

  11. So what would happen here if this case had a panel of Newman, Moore, and O’Malley? In this case, the claim is so close to Alice and Bilsky that it probably still would have been dropped on §101, but it would have been a closer call. Certainly the panel wouldn’t be taunting the patentee for bringing the case as it did here.

    So again we see that the CAFC functions as a casino where each judge gets his own law and you have to pray to get a panel that likes yours. That is no way to run a legal system.

    1. So again we see that the CAFC functions as a casino where each judge gets his own law and you have to pray to get a panel that likes yours. That is no way to run a legal system.

      Do you think this doesn’t happen in every courthouse with over a single judge? No two judges are alike, everyone has a view that in one context or another is more favorable to one side or another. There isn’t a single case where multiple judges sit the call where attorneys aren’t praying for a particular one. And that’s just a single judge rather than a panel of three.

      In this case, the claim is so close to Alice and Bilsky that it probably still would have been dropped on §101,

      So either panel would have come down the same way, the stakes being rolled on are taunting points?

      I do appreciate your sentiment though. I don’t think the CAFC is particularly good myself, but that doesn’t make it a casino. The alternative is that you don’t have a specialized court, and as much as I dislike the CAFC they’re better than people who never see patents.

      1. Do you think this doesn’t happen in every courthouse with over a single judge?
        Certainty in the law is something our system (supposedly) values and vagueness is to be abhorred.

        I don’t think the CAFC is particularly good myself
        LOL … you have zero credibility in evaluating in how good they are or not.

  12. “In the physical realm”. Is that just the antonym of “abstract”, or does it add something?

    If it does, excellent. On this blog, we have already done to death “abstract” and “technical”. Now let’s give “physical” a good kicking.

    Ah “The tie-ins that bind…..”. First there was the “abstract” tie-in. Then came the “technical” tie-in. Now suddenly we have “physical”, which will help to tie Asia in.

    I tell you, it’s all part of a diabolical plan.

    1. On this blog, we have already done to death “abstract” and “technical”

      On the contrary, neither have been “done to death” as neither have – as of yet – been given meaningful (non-circular) definitions.

      That’s kind of an important distinction to be made.

      (and btw, “physical” has already been in play and has NOT been at all successful as can be witnessed by what the Court has said about MoT (See Bilksi) and even in post-In re Niutjen cases wherein the “physicality” aspect is not pursued but instead the “transience” angle is pursued)

      The Courts are weaving a tapestry of CRP – the anti’s are getting way too happy with these CRP rulings without realizing just how rickity the entire house of cards supporting such a “desired-ends-no-matter-the-means” path has been taken.

      1. I found one particular comment on some other thread, somewhere, rather illuminating. It averred that SCOTUS is careful not to decide anything more than it has to decide. That strikes me as key.

        The EPO declines to define “technical” but instead relies on the notion that “Ye shall know them by their fruits”, and verily anon, ye shall know what “technical” means by reading their decisions (more than a thousand a year)”.

        As others have observed, first comes “policy”. Then the decision is written to conform to that policy. You can dismiss that if you like, as ends justifying means, but that I think would be quixotic of you.

        I see “transient?” as a question of degree whereas “physical?” is more of a Y/N binary thing (and therefore, in this context, preferable).

        And thus does SCOTUS trust that ye shall know what NO means, from the various ways in which it is currently pronouncing that one short word. The Federal Circuit seems to have no difficulty digesting it. Does that digestion prove the pudding?

        1. Pure B$ MaxDrei.

          Not defining IS making a decision – it is passing the buck and unsheathing a sword with no limits.

          That you think otherwise only shows the lack of critical thinking that is a hallmark of your shilling.

          Wake up and think man.

        2. first comes “policy”.
          Policy should have no place in the courts. Policy concerns is the realm of Congress.

          What we are seeing at the Federal Circuit is individual judges injecting their policy leanings into the law. Granted, SCOTUS does this all the time, but just because they do it doesn’t mean that should be doing it.

          1. Yes, it appears that to challenge the notion of the ends justify the means is “quixotic.”

            The rule of law under such lack of critical thinking is the reason why the rule of law fails again and again throughout history.

            Sorry MaxDrie – but you are the problem.

          2. I think it’s pretty clear that this is what is going on. I have no doubt that SCOTUS decided Alice with the troll problem in mind, and I also have no doubt that the Federal Circuit will run with Alice and invalidate tons of patents to stem the tide of troll litigation.

            Frankly, I don’t see it stopping any time soon unless and until the Federal Circuit finds a software-type patent that does not satisfy the Alice test or Congress takes some sort of action.

            It’s devolved into a “know it when you see it” standard, which isn’t good for anyone, including the anti-software types. Or at least the reasonable ones. Certainty and clarity is needed. As much as some of the the bleating goats on here allege otherwise, Alice didn’t clarify much, and the Federal Circuit’s interpretation of Alice seems out of whack with Alice at best and a misapplication of Alice at worst.

            1. Can you say what you mean by “this”, please? It might be “pretty clear” to you but not to me. What we do know is that not all the things that are clear to you are not clear to me, and vice versa. What we also know is that what you know is different from what I know. So it would be good if you could spell out with precision what “this” means to you.

              That said, each one of us knows “it” when we see “it”. At least on that we can all agree. After all, it’s only human.

              As for me, I think Prometheus/Alice is easy to grasp. “This” was simply a press of the 101 Re-Set button.

              1. Nothing is clear (not can be clear) to the man that refuses to open his eyes.

                The stench of rotting horses next to MaxDrei’s well should inform mmmkay of the futility of trying to teach MaxDrei something that is not already on MaxDrei’s 80-cycle six month experience list.

              2. “This” = “individual judges injecting their policy leanings into the law,” the policy leaning being, “i don’t like trolls,” whatever a “troll” means…

              3. “This claims seems too broad so I’m going to kill it.” That’s what is happening. Using “feelings” and “this reads too broad so it must be fundamental” to invalidate claims under 101 rather than using proper 102 prior art. Ignoring the preemption analysis. Etc.

      2. neither have been “done to death” as neither have – as of yet – been given meaningful (non-circular) definitions.

        Why don’t you tell us what you think a “meaningful” definition would look like, B illy, instead of complaining about the ones that other people provide for you?

        Just a thought. Maybe ask a friend to help you with the English, or your mommy.

        1. Brush away the “English is not understood” trite short script item and there is (again) nothing in the post from Malcolm…

          Shockers.

          Perhaps Malcolm, you care to see that others quite easily understand my posts. But you will have to take off that echo chamber helmet of yours…

    2. Physicality doesn’t really matter. Even generic computers are physical. The fact that you are claiming a device no longer matters as that is just the scriveners art.

      Nevertheless, I guess its always good get physical:
      link to youtube.com

  13. CAFC: The dependent claims’ narrowing to particular types of such relationships, themselves familiar, does not change the analysis. This kind of narrowing of such long-familiar commercial transactions does not make the idea nonabstract for section 101 purposes.

    In other words, if the “new” computer is configured to “process” [information pool X] to “determine” or “identify” generic species Y, it doesn’t matter if Y is described as “an object”, “a house”, “real estate”, “available real estate,” “available real estate with a lien”, “available real estate with a lien wherein said real estate includes a shed”, or “available real estate with a lien wherein said real estate includes a shed, wherein she includes a copyrighted video.”

    It’s ineligible j nk. We don’t need to look to see if some m0 r0n took a license before we chuck the claim in the t 0ilet.

    These cases were necessary to plug some gaping holes that had been created by short-sighted jurists and facilitated by a PTO that had been captured by its “customers”.

    The swamp is being dredged. Better sooner than later.

    1. Your “in other words” CLEARLY misses the mark Malcolm.

      But the provision also excludes the subject matter of certain claims that by their terms read on a human-made physical thing (“machine, manufacture, or composition of matter”) or a human-controlled series of physical acts (“process”) rather than laws of nature, natural phenomena, and abstract ideas.
      2013-1575 at 6

      In other words – even being in one of the statutory categories is meaningless under the sword of “Gist/Abstract.”

      That is the takeaway you need to recognize. Not this attempted spin of yours that the statutory category part of 101 has not been met – it clearly has.

  14. NWPA: I don’t think we would be in this situation if the judges knew more about information processing.

    If “the judges” had taken ten seconds, decades ago, to apply what they knew about information processing to patent claims, you’re correct: you wouldn’t be in this situation.

    But what happened is “the judges” (some of them anyway) pretended they were born yesterday every time they saw a claim that recited “a computer”. They’re waking up, finally. They had to eventually. Better sooner than later.

  15. splinter: The court’s statement about “doesn’t matter how narrow” shows how clueless they are.

    On the contrary: you’re failure to understand this basic point shows how clueless you are. You better figure it out quick. It’s not as if you haven’t had years to figure it out already.

    The fundamental issue resolved correctly by the Supreme Court in Mayo v. Prometheus is that you can’t protect abstractions or data or correlations or information merely be appending the recitation of such to a claim that recites otherwise unpatentable (i.e., old) technology. Period. It does not matter how complicated the information is, or how useful the information is, or how surprising the information is, or how much X is willing to pay Y to control the information for 20 years. All that’s irrelevant because you can’t protect the information (or any other abstraction) with a patent. It’s always been thus and it always will be.

    So you say you’ve “invented” a super nice “new” computer that’s “new” because it has information stored on it that’s super valuable (and retrievable on demand). Great! Enjoy it. A claim to that computer that recites nothing new except the information is ineligible because it protects that information (it prevents it from being put on a computer in a retrievable manner). As the Federal Circuit just informed you, it doesn’t matter how specifically you describe this information or how non-obvious or “narrow” the description of the information is. It’s ineligible, period.

    This is not difficult stuff to understand. It really isn’t.

    1. Your pet theory is still as bana1 as ever Malcolm – no matter how you try to push it as “the answer” here, until you address the identified limitations to your pet theory, it really just does not explain what you say it explains.

      But you don’t want to engage in that conversation.

      Shockers.

  16. /golfclap

    In before most of “the sky is falling” people.

    I’ve said it before, and I’ll say it again – business methods and computer programs (and even many mechanical devices) that are functionally claimed such that they claim the ends rather than describing and claiming a specific means have always and will always be invalid, as they are by definition overbroad and treading on building blocks. Perhaps the applicant had an actual non-obvious code, but it certainly wasn’t claimed and that wasn’t the intent: The purpose of the claim is to catch all contract formation of this type via computer.

    Today’s lesson comes from Perkin’s Glue:

    But an inventor may not describe a particular starch glue which will perform the function of animal glue and then claim all starch glues which have those functions, or even all starch glues made with three parts of water and alkali, since starch glues may be made with three parts of water and alkali that do not have those properties…A claim so broad, if allowed, would operate to enable the inventor who has discovered that a defined type of starch answers the required purpose to exclude others from all other types of starch and so foreclose efforts to discover other and better types. The patent monopoly would thus be extended beyond the discovery and would discourage rather than promote invention. That the patentee may not by claiming a patent on the result or function of a machine extend his patent to devices or mechanisms not described in the patent is well understood.

    Whether you want to call it abstract ideas, natural principles or whatever, this is the thing that the court will never let you have. You’re not entitled to it. When computer software and business methods learn to not claim things they haven’t described (in non-functional terms), the issue will go away. Till then, you’re going to keep thinking the sky is falling.

    1. Bah, it should have been A claim so broad, if allowed, would operate to enable the inventor who has discovered that a defined type of starch answers the required purpose to exclude others from all other types of starch and so foreclose efforts to discover other and better types.

    2. I’ve said it before, and I’ll say it again – business methods and computer programs (and even many mechanical devices) that are functionally claimed such that they claim the ends rather than describing and claiming a specific means have always and will always be invalid.

      That’s not really a bold assertion, Random – it’s basic patent law. Probably one of the few points on which all of us agree.

      1. That’s not really a bold assertion, Random – it’s basic patent law. Probably one of the few points on which all of us agree.

        All evidence to the contrary. Here’s how it works: Applicant describes the problem they seek to defeat very well. Applicant either doesn’t describe or describes a single way of achieving a functional result which will defeat the problem. Conveniently, that functional result happens to be synonymous with “just about every way one could solve a problem.” Applicant states that one of ordinary skill in the art would know hundreds, perhaps thousands of ways of programming a computer to also achieve that function. Applicant claims code by the function it performs.

        Applicant argues it is enabled (as anyone of skill in the art could write the code), described (because the functional description is, to them, a description) and non-obvious. This completely ignores the fact that applicant has described one way of achieving something, yet seeks a scope which will give them hundreds of completely undescribed ways of achieving it.

        To hear people like NWPA, Oh No and anon talk, it could not be done any other way. I would venture maybe 40%+ of the applications I examine have claims which do exactly this. If it is such a bedrock principle upon which we all agree, why do I constantly see it being argued against and submitted in applications? Were the scope properly policed, only a fraction of the applications would even be filed, because the inventor would know that there’s hundreds of ways of doing something, and if he isn’t entitled to all of them (which he isn’t) then the patent is worthless.

        1. Applicant describes the problem they seek to defeat very well. Applicant either doesn’t describe or describes a single way of achieving a functional result which will defeat the problem. Conveniently, that functional result happens to be synonymous with “just about every way one could solve a problem.” … I would venture maybe 40%+ of the applications I examine have claims which do exactly this.

          Here’s a question for you. When comparing these two claims:

          “A method of compressing a data set, comprising: replacing redundant element in the data set with a symbol to produce a smaller data set, where the replacement of the symbol with the element enables reconstruction of the data set without data loss.”

          “A method of compressing a data set, comprising:

          identifying, in the data set, an element that occurs at least twice;

          replacing the element in the data set with a symbol; and

          storing in the data set an association between the element and the symbol.”

          …are these two claims equivalent under your “functional result” characterization, or is there a difference?

          1. Why are you so obsessed with these cr ppy data set compression claims, David?

            They’re both equivalently cr ppy unpatentable gar bage. Should they ever have been patentable?

            Highly doubtful. <– compression of information through choice of symbols; I could have written a full paragraph but most of us have the necessary information to make the "associations"

          2. They’re equivalent in that they’re both invalid. Compression concerns itself with two things: The effectiveness in shrinking the filesize and the speed in which it does so. Because the claims are both nondescript on both of those terms the claim is directed toward the abstract idea of compression with nothing substantially more in both cases. If that claim issues it would be impossible to have a compression scheme that didn’t infringe it.

            On the other hand, you describe the algorithm by which you determine matching elements (many different routes here) and the algorithm by which you select a symbol (presumably you’d want the most common elements to get the shortest symbols, etc) and it’s eligible.

            I suspect that the point you were trying to make is that the first claim is entirely functional, while the second claim nominally has steps. This is true, but two of the steps are themselves functional, because one cannot immediately visualize a single or even a small set of algorithms that will achieve the result, (i.e. you’ve disclosed no structure as to two limitations) and I’m willing to bet whatever disclosure you have to go along with it would not support a scope of “any type of identification” anyway. Instead your argument will be as I said above – you’ll say there’s dozens of ways you can identify matching elements and one of ordinary skill could do that, and that the point of your invention is to decrease filesize and that the particular means by which you identify and substitute are irrelevant to your invention.

            That’s insufficient, because the question isn’t if the field knows one way or even several ways to achieve each step, the question is if the field knows every possible way of doing so. If the answer is no (and simple logic tells you it must be no) then you will always be extending your monopoly past your invention, and curtailing future innovation, by taking that scope.

            Your program runs a method, you can’t shortcut the method – your program has a means by which it identifies elements are occurring twice and for assigning symbols.

            A method of compressing a data set, comprising:

            selecting a first string of four bits

            iteratively comparing the first string to consecutive remaining strings of four bits to identify, in the data set, an element that occurs at least twice;

            further identifying the elements that occur at least twice by iteratively comparing a remaining string to consecutive remaining strings of four bits until all strings have been compared to each other;

            for each of the first 24 elements that occur at least twice, replacing the element in the data set with a corresponding letter of the greek alphabet; and

            storing in the data set an association between the element and the corresponding letter of the greek alphabet.

            Note how poorly my invention identifies and how limited it is shrinking the filesize. Isn’t that easy to improve upon? Shouldn’t the person who does the improving get a patent? Imagine if you had given me words I commonly see “analyzes” or “determines” to play around with.

            For a limitation like “determine whether the court will grant cert on a given case” you could write a beautiful program taking into account the voting histories of each judge, variables relating to how well the case tracks prior law, whether there is a split in different circuits, public pressure, need by industry, etc.

            You know what you could also do? Roll a 100-sided die, if it comes up >97, then yes, otherwise no.

            The fact that random number generation and if/then terminology is known should now allow vague functional language to foreclose the entirely innovative and useful program that you would write.

            1. One cannot immediately visualize a single or even a small set of algorithms that will achieve the result, (i.e. you’ve disclosed no structure as to two limitations)

              Really? One cannot imagine a single algorithm to achieve that result?

              Let’s try, shall we?

              Pseudocode:

              Create dictionaries: symbols[], tokens[]

              For each token t in input_text:
              …increment tokens[t]
              …if tokens[t] == 2:
              ……generate new_symbol
              ……set input_text.symbols[t] = new_symbol
              …if input_text.symbols[t] is not null:
              ……replace t in input_text with input_text.symbols[t]

              That “simple algorithm” directly implements the steps of the method.

              Expressing that “simple algorithm” in any language you like – C#, Python, JavaScript, Java, Objective-C, Lisp, Perl – is a trivial exercise for any computer science undergraduate student. Indeed, the Python script will look nearly this simple – if not simpler.

              No, the claim does not need to specify *EXACTLY* what data structures you’re using, what your word length is, what hashing algorithm you use to generate the symbols, etc.

              Your demand for hyper-specific implementation details in the claim is not supported by 35 USC 101 or 112, or any recent court opinion. You are imposing a constraint on the patent system that has no support anywhere.

              1. And just for fun:

                def compress(delimiter, data_set):

                …token_count = {}
                …symbols = {}
                …new_data_set = [symbols]

                …tokens = data_set.split(delimiter)
                …for t in tokens:
                ……token_count[t] = 0 if (t not in token_count) else token_count[t] + 1
                ……if token_count[t] == 2:
                ………new_symbol = str(len(symbols))
                ………symbols[t] = new_symbol
                ……new_data_set.append(symbols[t] if (t in symbols) else t)
                …return delimiter.join(str(new_data_set))

                That’s a Python script. It presents a straightforward implementation of:

                “A method of compressing a data set, comprising: identifying, in the data set, an element that occurs at least twice; replacing the element in the data set with a symbol; and storing in the data set an association between the element and the symbol.”

                And it works fine:

                print compress(‘ ‘, ‘a horse is a horse of course of course and no one can talk to a horse of course’)

                [ { ‘ a ‘ : ‘ 0 ‘ , ‘ o f ‘ : ‘ 2 ‘ , ‘ h o r s e ‘ : ‘ 1 ‘ , ‘ c o u r s e ‘ : ‘ 3 ‘ } , ‘ a ‘ , ‘ h o r s e ‘ , ‘ i s ‘ , ‘ a ‘ , ‘ h o r s e ‘ , ‘ o f ‘ , ‘ c o u r s e ‘ , ‘ o f ‘ , ‘ c o u r s e ‘ , ‘ a n d ‘ , ‘ n o ‘ , ‘ o n e ‘ , ‘ c a n ‘ , ‘ t a l k ‘ , ‘ t o ‘ , ‘ 0 ‘ , ‘ 1 ‘ , ‘ 2 ‘ , ‘ 3 ‘ ]

                Are you prepared to admit defeat about your point that “one cannot immediately visualize a single or even a small set of algorithms that will achieve the result?

                1. Errata: fixing a small bug – “token_count[t] = 1 if (t not in token_count) else token_count[t] + 1″ – produces better output:

                  [ { ‘ a ‘ : ‘ 0 ‘ , ‘ o f ‘ : ‘ 2 ‘ , ‘ h o r s e ‘ : ‘ 1 ‘ , ‘ c o u r s e ‘ : ‘ 3 ‘ } , ‘ a ‘ , ‘ h o r s e ‘ , ‘ i s ‘ , ‘ 0 ‘ , ‘ 1 ‘ , ‘ o f ‘ , ‘ c o u r s e ‘ , ‘ 2 ‘ , ‘ 3 ‘ , ‘ a n d ‘ , ‘ n o ‘ , ‘ o n e ‘ , ‘ c a n ‘ , ‘ t a l k ‘ , ‘ t o ‘ , ‘ 0 ‘ , ‘ 1 ‘ , ‘ 2 ‘ , ‘ 3 ‘ ]

                  Of course, this is a terrible compression algorithm: slow, poor compression ratio, certainly not novel. It does, however, work – and is a straightforward implementation of the method claim.

                2. Of course, this is a terrible compression algorithm: slow, poor compression ratio, certainly not novel. It does, however, work – and is a straightforward implementation of the method claim.

                  Exactly, so lets say that’s your disclosure. Explain to me why I should give you a claim scope that reads upon a good compression scheme embodiment when the only thing you’ve shown me is a bad compression scheme? Don’t we want to encourage the person who thinks up the better scheme to disclose it (which he won’t do if he knows you have a scope that can prevent him from practicing for 20 years)? Don’t we want to encourage YOU, if tomorrow you come up with a better scheme, to disclose that scheme? Why would you disclose your new scheme when your old scheme will net you all those infringers plus more anyway?

                  You give me a bad scheme, your scope should be limited to the bad scheme. It’s not an argument to say “well I’ve enabled a bad scheme, and a bad scheme is a subtype of all schemes, thus I’ve got enablement.” That’s not enough for enablement of the broader scope, and even if it was, that won’t help with description. And nothing will help you if someone decides you’re actually claiming the entire field of compression.

                3. Don’t we want to encourage the person who thinks up the better scheme to disclose it (which he won’t do if he knows you have a scope that can prevent him from practicing for 20 years)?

                  Of course we do, but you’re wrong that “he won’t [disclose it] if he knows you have a scope that can prevent him from practicing for 20 years.” If he patents the improved technique, the first patentee can’t practice the version that everyone wants for 20 years, so he has a strong incentive to make a deal. This is not an issue that’s peculiar to computer-implemented inventions.

                4. Explain to me why I should give you a claim scope that reads upon a good compression scheme embodiment when the only thing you’ve shown me is a bad compression scheme?

                  A patent examiner does not “give” claim scope, and does not “give” patents. An examiner is not Santa Claus of the patent system, with the right to “give” patents to good applicants and coal to bad applicants, and the power to decide.

                  Rather, an examiner must determine whether, for a particular claim, the rules of the patent system require the claim to be rejected. If so, the examiner must explain the reason for the rejection, in clear language that will hold up under scrutiny by the SPE and PTAB; and if not, the examiner must allow the claim.

                  My point is that asking “why you should ‘give’ claim scope” in a case is not relevant to a heavily rules-driven system such as patent examination. There is no discretion or “giving” in this process. You are not doing the applicant a favor when you allow the application: you are simply following the rules of the process.

                  Don’t we want to encourage the person who thinks up the better scheme to disclose it (which he won’t do if he knows you have a scope that can prevent him from practicing for 20 years)?

                  Nearly every patented invention is an “improvement” of a more basic invention, or of a combination of them. The incentive to disclose the “better scheme” is that the second inventor can patent it.

                  Don’t we want to encourage YOU, if tomorrow you come up with a better scheme, to disclose that scheme? Why would you disclose your new scheme when your old scheme will net you all those infringers plus more anyway?

                  Because a second patent on your improved version of the basic algorithm can be separately licensed (a licensee can choose either the basic version or the improvement), and/or separately infringed (an infringer of the improved version now infringes both patents).

                5. ” so he has a strong incentive to make a deal.”

                  That’s only after the second guy went ahead and made the better compression scheme. If the second guy sees it foreclosed to him being able to practice why on earth would he bother to make the better compression scheme in the first place?

                  Is his plan that he can run Ebay roughshod over the first guy’s patent rights and then force the first guy into a deal?

                6. “This is not an issue that’s peculiar to computer-implemented inventions.”

                  Right, but in other arts the prior art tends to limit you right down to exactly what you did. It doesn’t work out that way so much in “computer-implemented inventions”. You get the whole tamale.

                7. “Person “A” gets a patent on the broad idea.”

                  Then person A’s patent is invalid. We don’t allow for patenting of “ideas”. We allow for the patenting of inventions only.

                8. If he patents the improved technique, the first patentee can’t practice the version that everyone wants for 20 years, so he has a strong incentive to make a deal. This is not an issue that’s peculiar to computer-implemented inventions.

                  But the first patentee has no competition, because he has a monopoly on ALL compression. So when you say “the version that everyone wants” that’s true they would like the higher quality – but it’s not a version that consumers have as an option regardless of if the first guy deals or not.

                  Plus you’re missing the point – the second guy WILL NOT PUT RESOURCES INTO DEVELOPING IT. i.e. there will be no improved version, because nobody is going to spend money to research and develop any product only to put themselves into a position where they have to negotiate a deal in which they have no cards so that they can realize ANY income at all from it.

                  I have a patent that reads on all cars. You think you can design a better car than me. Are you going to research into making that idea a reality? Of course not, because you know I can keep you from market and I have every incentive not to let you actually compete with me. Would you counsel your client to violate the claims of my patent because you might be able to negotiate a license from me?

                9. If the second guy sees it foreclosed to him being able to practice why on earth would he bother to make the better compression scheme in the first place
                  6 — Comments like this make it plain as day that your experience is in the government sector — not the private sector.

                  If you have something of value to the patentee, you can practice the invention … or, if you are so inclined and want to flaunt the law, you can do so. I don’t advocate doing that, but “doing the right thing” is not a maxim that most business people follow.

                  WILL NOT PUT RESOURCES INTO DEVELOPING IT
                  Completely wrong. See me comments to 6.

                10. Of course not, because you know I can keep you from market
                  Not terribly aware of eBay Inc. v. MercExchange, are you? Try getting an injunction these days.

                11. In other words, in your reta rded world view, your entire justification for this tomschemery you propose is 1. They’ll just do it so that they can get a patent and make a deal with the patentee (presuming the stars will align) or 2. They can just flaunt the law (thus defeating the whole point of the patent system in the first place).

                  In a more robust explanation someone is going to put all this money and time and effort into making this new technology so they can then patent it (assuming the prior art permits them to get good claims) and “offer” it to the patentee so that they can reach a deal (assuming the patentee would even be amenable to such a deal). Or else they can flaunt the law.

                  /boggle.

                  Or we could just have a sane system that prevents this nonsense from the outset.

                12. All I’m doing is parroting the concerns in Morse. My concerns are the court’s concerns, and you’re arguing an issue that I have already won back then. And then I won it again and again and again and I am still winning it today to a unanimous tune. I love that everyone is telling me that I am wrong and I don’t know how the world works when I am doing nothing but restating what the court said and is saying.

                  When A is given the overbroad (and that’s what it is) scope, it chills B and C from innovating. It chills A from re-innovating. They’re not saying you can’t have a properly sized scope, they’re saying you can’t have an overbroad scope. You’re all making arguments that the overbroad scope is actually okay because of cross licensing or because even the lesser incentive is still a good incentive, or because I don’t understand how the world works (say a bunch of lawyers who have trouble understanding the law). It chills innovation. That’s the holding.

                  an examiner must determine whether, for a particular claim, the rules of the patent system require the claim to be rejected

                  The court specifically tells you outright that it has nothing to do with the rules set up by Congress, and you should know better than to think you can make this argument. Congress’ grant of power does not rise to giving overbroad scopes, and while I think 112 solves a lot of the issues, the judicial exceptions are equally applicable to extreme cases. Functional language, whether you like it or not, often results in extreme cases.

                13. They’ll just do it so that they can get a patent and make a deal with the patentee
                  Reading comprehension isn’t your forte it seems. People invent things to solve problems. Once you’ve solved a problem, then you try to sell it. Sometimes, selling it involves giving somebody who has a patent covering what you do a royalty. Other times, selling it involves completely ignoring the patent and hoping the other side won’t assert.

                  If you create value with your (patentably) idea, it is worth something to somebody — even if it is covered by another patent.

                  Or we could just have a sane system that prevents this nonsense from the outset
                  You mean a system in which you are limited to the precise embodiments laid out in the specification — i.e., a complete gutting of the system such that anybody capable of figuring out how to rub two sticks together can get around the patent. Sane = no protection, I guess that is how you see it.

                  Get a law degree, get your first client, try to protect your client’s IP, and then you’ll realize what a terrible idea you’ve presented.

                  My concerns are the court’s concerns
                  Except nobody today writes claims like Morse did back then. You are raising the specter of a boogeyman that doesn’t exist.

                  it chills B and C from innovating. It chills A from re-innovating
                  Get out in the real world — you’ll learn how completely wrong you are.

                  A is chilled from disclosing his invention to the public if all B and C have to do is make a minor change to get around A’s patent. If the quid doesn’t match the quo, you won’t get the disclosure. No reward for disclosure = the system that was thrown out centuries ago.

                14. the second guy WILL NOT PUT RESOURCES INTO DEVELOPING IT

                  Yelling it doesn’t make it any more true. Participants in the semiconductor and cellular industries have lots of mutually blocking patents; they deal with these through patent pools, cross-licensing, etc.

                15. “People invent things to solve problems. ”

                  K, so when do we get to the part about patents supposedly spurring innovation? Or does that part not fit into your world-view?

                  Maybe to you patents only spur people to disclose?

                  “You mean a system in which you are limited to the precise embodiments laid out in the specification — i.e., a complete gutting of the system such that anybody capable of figuring out how to rub two sticks together can get around the patent. Sane = no protection, I guess that is how you see it.”

                  Hardly, my patentees generally get generous protection for what they invented.

                  Bottom line, your whole tomschemery is based on expecting irrational behavior, flaunting the law, and now it appears that you’ll add to that tossing the notion of patents promoting invention in the first place out the window. Heck, maybe you’ll also toss the notion that patents promote disclosure of the inventions out the window too.

                16. Except nobody today writes claims like Morse did back then. You are raising the specter of a boogeyman that doesn’t exist.

                  I guess the court just made up all the claims in these recent 101 cases to look busy during the economic downturn?

                  Get out in the real world — you’ll learn how completely wrong you are.

                  Is this the real world where all your type of claims are being invalidated, or some other real world? I mean, as a member of the public its great you’re under the misapprehension, since we get information for free. I don’t think I’ll be employing you as my attorney though.

                  A is chilled from disclosing his invention to the public if all B and C have to do is make a minor change to get around A’s patent. If the quid doesn’t match the quo, you won’t get the disclosure. No reward for disclosure = the system that was thrown out centuries ago.

                  You know (if you’re any kind of attorney) that you cannot make a minor change to get around a patent. Try addressing DoE? Beyond that, let’s pretend you’re right – it seems like that still admits my point, since you’re agreeing we’re talking about a ratio of quid and quo. And the court has already made that decision for us, and it’s your side that is the unbalanced one.

                  If you create value with your (patentably) idea, it is worth something to somebody — even if it is covered by another patent.

                  I can see you’re still not getting it if you think that you can monetize an idea via patent law.

              2. Really? One cannot imagine a single algorithm to achieve that result?

                You’re misunderstanding. I’m not saying that I can’t picture a single code as in I picture zero. I’m saying I can’t picture a single code as in there are hundreds and you haven’t specified which. You’ve given me a haystack and not even clued me in to what the needle looks like. Therein lies the problem. Breadth is not indefiniteness (it doesn’t violate 112, 2nd) but a large breadth likely violates written description (since you have to show you are in possession of the full scope) and when it gets obscene it violates 101 (since that scope becomes synonymous with a claim to the field rather than an invention).

                The use of the functional language (simply stating the result) is an attempt by the inventor to claim more than what he posits (his particular algorithm) by banking upon the PHOSITA standard. That standard applies for enablement, but written description has a subjective component (PHOSITA does not save the inventor), and 101 has a subjective component in that it cannot allow one to overclaim.

                No, the claim does not need to specify *EXACTLY* what data structures you’re using, what your word length is, what hashing algorithm you use to ge nerate the symbols, etc.

                I’m not saying it does. I’m saying that computer programs are methods, and methods have algorithmic structures that must be satisfied as defined. Stating broad goals (even if they are goals achievable by a PHOSITA) is not an invention, it’s a research plan.

                Your demand for hyper-specific implementation details in the claim is not supported by 35 USC 101 or 112, or any recent court opinion. You are imposing a constraint on the patent system that has no support anywhere.

                That’s simply not correct. Ariad made clear that a claim to a functional ge nus requires disclosure of a sufficient number of species within the ge nus to justify giving the applicant the ge nus rather than the disclosed species. Expand your ge nus, increase the WD requirement. Lizardtech (see case, plus engine hypothetical toward the back) pointed out that removing limitations (or similarly, creating vague ones) would not allow you a larger claim scope, it would only render your claim undescribed. Abbvie recently showed how this works in a post-hoc manner – Patentee described one set of structures but had a broad functional claim, the infringer had a completely different set of structures that also fell under the broad claim. Rather than finding infringement, the court invalidated the claim under WD, which is the correct result because patent law protects disclosed structures.

                The same is true of Alice or any of the recent 101 cases (which all cite back to the Morses and Perkins and Halliburtons of yesteryear) – structure your claims in such a way that you’re essentially claiming the end result rather than a particular means of getting there (especially because you’re banking on that ‘once I state a result a PHOSITA is fully enabled’ line of thinking) and you’re going to find that your claims do not have substantially more than an abstract idea.

                Similar things happen when talking about functional results of logical code – the applicant, in their zeal to expand their scope, gets past what they actually made and starts claiming the effects of running the program that they have.

                Your demand for hyper-specific implementation details

                I simply gave you an example I knew was specific enough to pass muster when you gave me an example that didn’t. I’m not suggesting you have to be that distinct. The level of detail you need to have is a detail that would allow one of ordinary skill in the art to know what algorithm your program follows (i.e. it has to conjure up only a definable set of structures in the PHOSITAs mind, not just a vague plan and knowledge that you can achieve it). It doesn’t have to be code. But the flip side of that is that it cannot simply be any algorithm that gets “a result with this one limitation on it” which is what you had originally claimed.

                Look, Morse (the granddaddy of the judicial exception cases) claimed any machine that “printed at a distance”. Now in a sense he’s enabled, because everything we’re doing is still based on his disclosure – we’re still sending electrical 1s and 0s from point a to point b. That doesn’t change the fact that that claim reads on the cell phone text, the fax machine, the internet computer and the tv broadcast. Those are all separate inventions and Morse’s claim, were it valid and still in force today, would withhold all of them and the court WILL NOT LET THAT HAPPEN. That is just fact – the court has decided that result actually chills innovation, has found that way 9-0 several times recently and historically going back 150 years, and Congress simply lacks the power to overrule the court on the issue. This is the law whether you agree or not. You see why this is not an issue that everyone is in agreement on now :P

                The only question then becomes how close does a given claim get to that untenable position, and the answer is that functional claiming (claiming directed toward a result and untethered from a structural means that gets the invention there) is always going to be dangerously close. When you submit a claim that describes computer code not by the algorithm it performs, the method steps it takes, but by the functional result of an undisclosed algorithm, you walk a very thin line, because you’re going to run into a Lizardtech or an Abbvie or an Alice situation – you’re going to sue someone whom your claim language technically covers but there is no proof in your spec you’ve actually possessed their structure, and that’s when the court decides that what you’re actually trying to patent is the underlying idea, or that you’ve failed to prove possession of your full scope.

                1. So, you seem convinced (and I tend to agree with you) that the problem is with enablement or perhaps written description, i.e., a section 112 problem. Why are we using section 101 to address it?

                2. So, you seem convinced (and I tend to agree with you) that the problem is with enablement or perhaps written description, i.e., a section 112 problem. Why are we using section 101 to address it?

                  It is mostly a 112 1st problem, and I believe it would be better taken up there. The difference is that WD only got teeth with Ariad and the USSC hasn’t really signed off on that, while they have signed off on the functional-language-makes-a-judicial-exception issue several times. Part of it is that no WD cases have gone before the court. The other part is that if you make an argument under 112, you need to take issue with what it means to a PHOSITA. If you take the argument under 101, you can ignore that because congress didn’t have the authority to make such a broad grant (regardless of the statutory scheme it made) to begin with.

            2. The question isn’t if the field knows one way or even several ways to achieve each step, the question is if the field knows every possible way of doing so. If the answer is no (and simple logic tells you it must be no) then you will always be extending your monopoly past your invention, and curtailing future innovation, by taking that scope.

              Okay, seriously – where do you get this stuff?

              Consider U.S. Pat. No. 8,815,188, in the field of mechanical engineering:

              9. A method, comprising: adjusting an amount of reducing agent solution injected to an exhaust system based on a water content of exhaust gas in the exhaust system downstream of a reductant injection location in the presence of vaporized reducing agent.

              Do you think that mechanical engineers know every possible way of adjusting every possible reducing agent solution into every possible exhaust system? If not, is this patent invalid? If not, and if the patent doesn’t explain every possibility, do you believe that it’s invalid under 112?

              Consider this claim in U.S. Pat. No. 8,822,834, in the field of electrical engineering:

              7. A method of manufacturing a printed circuit board comprising the steps of: preparing an insulating layer formed of a porous film having a reflectivity of not less than 50% for light of at least a part of wavelengths in a wavelength region of not less than 400 nm and not more than 800 nm; and forming a conductor trace on said insulating layer.

              Do you think that mechanical engineers know every possible way of forming a porous layer on an insulating layer, and every possible way of forming a conductive trace on an insulating layer? If not, and if the patent doesn’t explain every possibility, do you believe that it’s invalid under 112?

              Your perception of the requirements for disclosure standards and claim specificity are neither realistic, nor supported by any law or court opinion.

              1. 9. A method, comprising: adjusting an amount of reducing agent solution injected to an exhaust system based on a water content of exhaust gas in the exhaust system downstream of a reductant injection location in the presence of vaporized reducing agent.

                Didnt USSC have this exact issue in the medical context? A claim to making an adjustment based upon the reading of test results? He’s attempting to claim the relationship between A and B, and the claim of a relationship is a building block that can’t be removed from the public.

                To answer your question – I don’t know about any of the underlying things in this claim, but I would assume exhaust systems are different and I assume means of injection of solutions are different. He posits a particular distribution means, he should be limited to his distribution means, not any distribution means including ones that are better. If his means truly are the only way of doing it, you haven’t narrowed the scope at all by complying with 112. If there is a non-obvious way of doing it, that inventor should take free of this inventor’s claim, because he has a totally different means of achieving the most important part of the invention. That doesn’t seem very controversial to me.

                Let me ask this – on what are you basing the idea that all injections or all exhausts are similar? The self-serving statement of the applicant? Certainly if a PHOSITA said exhausts were different enough that his injection system couldn’t be applied to a significant amount of the currently existing ones you’d have an enablement issue, right? How is that any different from saying “Your claim isn’t just applicable to current systems, but all systems, and I have no proof your invention will work on those systems”? Whereas if you use structural language, you can easily tell if one set of structures works with another set of structures.

            3. *If that claim issues it would be impossible to have a compression scheme that didn’t infringe it.*

              Actually, with a broad reading it drags in the modern LZW or Huffman sort of compression, but RLE wouldn’t be snared. And lossy techniques — including almost all innovation in the field — would not be implicated at all if the judge understands the technical issues. Of course, most judges are bamboozled once the math is harder than LSAT games.

              In any case, if the judge has to work to understand a patent, it’s unlikely that Alice will be invoked. The subject matter will be considered technical instead of abstract and §101 will be passed over. Even David Stein’s example might slide through with a little obfuscation.

              That’s unfortunate. Patents on compression are extremely harmful to innovation. Right now compression patents are damaging the industry and computer users.

              Data is not a process, machine, manufacture, or composition of matter. Neither is information or reasoning. Compression and compressed data likewise are not. And computer software is never any of those.

              The real solution here is to read the statute and precedent and clarify that information and software are outside §101 entirely. The industry and its innovators are eagerly hoping to see that understanding dawn soon.

              1. Owen, I think it self-evident that computer software per se is non statutory. However, its application to some useful end, in improving the computer, computer arts or some other technology certainly is statutory.

                Compression? Real signals in, compression, real signals out. I see nothing nonstatutory about such a claim.

                1. Which ones? How?

                  The reason your phone can’t play certain types of video or music files isn’t because there are a lack of people who know how to work with those file types or uncompress the data in those files.

                2. Horrors – you mean to say that someone is preventing others from using their protected material (in your example, that would most likely be a function of copyright protection).

                  You know, the movie studios might want to talk with you about this notion of yours of unfettered use being quashed as a “bad thing.”

                3. Open and small hardware and software makers cannot obtain permission to decode media files and play them. The Firefox project and x264 video is a classic example.

                  Experimentation in codecs is blocked by MPEG-LA refusing licenses.

                  Interoperation is blocked by licensing thickets that don’t even generate much revenue. Motorola/Google sued M’soft over XBox and obtained injunctions against distribution over pennies per box, not even enough to pay litigation costs.

                  Allowing compression patents is pure loss for the industry, consumers, scientists, engineers, and innovation.

                4. Except that it is not.

                  Clearly, you have something that did note exist before the patents at hand.

                  Clearly the market is being served.

                  Clearly, the limited time of the patent right will expire.

                  Your gripe is different.

                  That you do not recognize why your gripe is different is a “you” problem. That is not a patent problem.

                  Holders of patents do not have to let ANYONE use their invention – there is no such requirement in the trade-off of Quid Pro Quo.

        2. >>To hear people like NWPA, Oh No and anon talk,

          Random: What I say is patent law 101 (or was before the ignorbutchers took over).

          Simple. Enablement. Look at the function claimed. Does one skilled in the art know how to solve that problem? Typically there are many solutions to these problems. Typically each element of an information processing method is known and the combination is what is novel and non-obvious. Guess what? That is typical of mechanical patents too. And guess what? That is typical of chemistry patents too.

          But, Random, look at it from the perspective of one skilled in the art and (real patent law not burn down the house Lemley patent law) you will understand.

          Take a step back Random. Think. Think of the claims in terms of enablement to one skilled in the art.

          1. What I say is patent law 101 (or was before the ignorbutchers took over).

            The court isn’t saying anything different than it was saying in Morse. How long ago did these guys take over?

            Simple. Enablement. Look at the function claimed. Does one skilled in the art know how to solve that problem?

            Someone invented the sling. As soon as they did, one means of achieving the function of “firing a projectile” was known and enabled. But the scope of “firing a projectile” also reads on a catapault and a gun and a missile silo. Did the person who invented the sling know how to make a gun? Knowing one way of doing something does not mean the entire scope of doing something is known.

            Further, the person who makes the sling – he has no idea that the gun and the missile are coming down the road, because he can’t know the extent of what he doesn’t know. So why give him a claim to “firing a projectile” when he has one way of making an unknown large scope? He doesn’t know the bow will be out in the next few years, why give him a scope to exclude it? And if that’s going to be your rule, why not just make your next claim “All patent eligible subject matter not currently obvious” and be done with patent law forever, since you’ve enabled one item in that set.

  17. “the claims focus on arrangement involving contractual relations between parties and involving “a fundamental economic practice long prevalent in our system of commerce.”

    Ignorance on stilts. Dishonest. Why not just state the reality:

    “This claim is invalid because we tautologically say so.” Lies do not become men of honor.

  18. Let’s partition the claims like the court did.

    Step 1: Taking out the hardware, is this an “abstract idea?”

    1. A method, comprising:

    receiving a request from a first party for obtaining a transaction performance guaranty service with respect to a commercial transaction following closing of the commercial transaction;

    processing the request by underwriting the first party in order to provide the transaction performance guaranty service to the first party; and

    offering the transaction performance guaranty service that binds a transaction performance guaranty to the commercial transaction involving the first party to guarantee the performance of the first party following closing of the commercial transaction.

    Answer: Nope. It’s a straight-up business method, much like Bilski and Alice.

    Step 2: Do the remaining elements provide “significantly more?”

    2. The method of claim 1, wherein:

    the receiving is performed by at least one computer application program running on a computer of a safe transaction service provider;

    the offering comprises: offering the transaction performance guaranty service over a computer network; and

    the commercial transaction comprises an online commercial transaction.

    Answer: Nope. These limitations are equivalent to: “use a computer to perform the method.”

    Central holding:

    The claims in this case do not push or even test the boundaries of the Supreme Court precedents under section 101. The claims are squarely about creating a contractual relationship – a “transaction performance guaranty” – that is beyond question of ancient lineage.

    The claims’ invocation of computers adds no inventive concept. The computer functionality is generic – indeed, quite limited: a computer receives a request for a guarantee and transmits an offer of guarantee in return. There is no further detail.

    tl;dnr – Business methods are dead. No relevance to computer-oriented inventions that have a significant technical effect on a device.

    1. >Business methods are dead.

      >>of ancient lineage.

      I don’t know David. To my mind, these Alice type of decisions are to claims that are business methods that were either well-known or are just slight modifications. But, what about business methods that aren’t ancient? We haven’t see that yet.

      1. NWPA, it shouldn’t matter, given the quote in the opinion from Mayo about “narrowness.” See also this quote from Bilski:

        “Indeed, if the Court of Appeals were to succeed in defining a narrower category or class of patent applications that claim to instruct how business should be conducted, and then rule that the category is unpatentable because, for instance, it represents an attempt to patent abstract ideas, this conclusion might well be in accord with controlling precedent. See ibid. But beyond this or some other limitation consistent with the statutory text, the Patent Act leaves open the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under §101.”

        This was all predictable. The Supreme Court in Bilski sanctioned the Fed Circuit to categorize “business methods” as abstract ideas. (anyone ever wonder why the word “sanction” has two opposite meanings?) They’ve done it.

        The real question is when a software case with “non-business method” claims hits the Fed Circuit. For example, Nintendo patents a lot of their game technology which is implemented in software. In my opinion, these (and others like them) should be safe, but on the other hand the Fed Circuit has been given a mission from the Obama admin.

        1. Great post patent leather. Thanks. I am going to have to chew on that quote from Bilski and probably re-read Bilski.

        2. “Beyond this or some other limitation consistent with the statutory text, the Patent Act leaves open the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under §101.”

          I’m guessing that they’re thinking of hybrid inventions: those that provide a business method that actually does depend on a specific, computer-implemented technology with a technical effect.

          Bitcoin could be characterized that way, where the objective is to enable an exchange of money, but relies upon a specific mechanism of logging and cryptographic signing that enables a decentralized, yet scalable, network of trust and consensus. (That’s not the claim language, of course – the mechanism would be recited as an active set of steps.) I can foresee a Diehr-like holding there: “the fact that it involves a business method does not exclude it from patent-eligibility, as long as the claim, evaluated as a whole, recites technology that has a technical effect.”

          The real question is when a software case with “non-business method” claims hits the Fed Circuit.

          Yes, that’s a fascinating aspect of modern 101 case law: although many activists want to read this case law as invalidating “software,” they fail to notice or mention that the claims at issue recite “software” only to the extent of: “a set of instructions and/or data that achieve this non-technical result that has nothing to do with the device.”

          Actual software inventions, those that meaningfully affect the operation of the device – such as query processing, image processing, user interfaces, encryption, codecs, compression, memory management, browser security, etc. etc. – don’t even make it to litigation. If they’re reasonably well-written to discuss the technical effect of the software, everyone treats them as valid under 101.

        3. Nintendo patents a lot of their game technology which is implemented in software. In my opinion, these (and others like them) should be safe

          Why not show everyone the specific claims you are thinking of? There are a lot of game patents out there that are complete j nk, for many different reasons. I’m sure Nintendo owns plenty of them.

      2. To my mind, these Alice type of decisions are to claims that are business methods that were either well-known or are just slight modifications.

        We certainly don’t know that, because in every case – Alice, in Bilski, and here in buySAFE – the court has failed to evaluate the specific claim elements to determine that question. Their analysis involved circling a big paragraph and say, “this is BASICALLY a version of (basic business concept), which is an abstract idea with no technical effect.” They did not consider, or care, whether anything about the specifically recited version was new.

        This tactic reached a high ground in Alice, where all of the claims in four distinct patents were dismissed as: “using a computer to create and maintain ‘shadow’ accounts,” or, as the Court even further summarized, “electronic recordkeeping – one of the most basic functions of a computer.”

        The Planet Bingo CAFC decision from last week is similarly bad. The court looked at independent claim 1, with 342 words, and summed it up as “managing a game of bingo,” or, more specifically, “storing a player’s preferred set of bingo numbers; retrieving one such set upon demand, and playing that set; while simultaneously tracking the player’s sets, tracking player payments, and verifying winning numbers.” Was there any consideration of whether any of the nuanced language provided anything “new?” No, it was all just seen as a variation on “managing a game of bingo,” and hence an “abstract idea.”

        Of course, there is a marked conflict between the ultra-precise degree of claim-drafting precision that the courts increasingly require of patentees, where any excuse to read the claims differently will be held against the patentee (Nautilus v. Biosig, Mformation v. Research-in-Motion, and ScriptPro v. Innovation Associates), and the lazy, generalization-based, “it’s all basically (x)” summary analysis that the courts use.

        1. Another great post David.

          Donald Knuth (one of the greats of computer science and professor at Stanford ) wrote that when he started in computer science he set out to write a random number generator. He figured it would be easy. He spent the day writing the algorithm and then ran it. It repeated after 5 numbers.

          I used to teach introductory computer science as an adjunct professor. It is amazing how easy things seem until you actually try to do them. Hindsight is just so amazing. And abstract mental accomplishments are just so amazing as well.

          1. Donald Knuth (one of the greats of computer science and professor at Stanford ) wrote that when he started in computer science he set out to write a random number generator. He figured it would be easy. He spent the day writing the algorithm and then ran it. It repeated after 5 numbers.

            Great story. Yes, I’m similarly irritated with dismissive attitudes about software – the eagerness to gloss over significant technical details as mere semantics, and the presumption that ideas that, superficially, seem easy to code are necessarily trivial. The contrast with which even infinitesimal distinctions in electrical or mechanical inventions are deemed huge is extraordinary.

            This may interest you, NWPA.

          2. Night Writer,

            I am surprised to see your praise of the esteemed Dr. Knuth. He is, indeed, “one of the greats”, and is likely the world’s foremost authority in the study of algorithms.

            Given your earlier discourse regarding “academics”, and “anti’s”, it’s quite startling to see you indicating favor towards this Stanford professor who has been publicly and strongly condemning software patents for several years (maybe over a decade?).

            To a computer scientist, this makes no sense, because every algorithm is as mathematical as anything could be. An algorithm is an abstract concept unrelated to physical laws of the universe.” — D. Knuth

            Glad you’re keeping an open mind.

        2. The other game Taranto is playing, although he is so ignorant of science and technology that he may not even realize it, is that he is not comparing information processing to other areas of patent law.

          I do not see a difference between the different areas. I don’t know anyone that has practiced in the different areas who sees a difference.

          1. I do not see a difference between the different areas. I don’t know anyone that has practiced in the different areas who sees a difference.

            I have long noted the NIMBY factor – and at its core all of the anti-software patent arguments are easily amenable to simply being anti-anything patent arguments.

        3. The Planet Bingo CAFC decision from last week is similarly bad. The court looked at independent claim 1, with 342 words, and summed it up as “managing a game of bingo”… it was all just seen as a variation on “managing a game of bingo,” and hence an “abstract idea.”

          Re: Your comment at 6.2. The Planet Bingo case is an excellent example of what I’m talking about. Let’s discuss those 342 words:

          “storing a player’s preferred set of bingo numbers; retrieving one such set upon demand, and playing that set; while simultaneously tracking the player’s sets, tracking player payments, and verifying winning numbers.” Was there any consideration of whether any of the nuanced language provided anything “new?”

          I don’t view any of this language as nuanced at all. None of these tell you what steps the program takes, they simply discuss the results an undisclosed algorithm achieves. Had the claim included limitations as to how Planet Bingo’s program specifically stored, retrieved and tracked data, it probably still would have been obvious but at least it would have been eligible. Instead the program laid out guideposts as to what to achieve and left it up to one of skill in the art to get there.

          The fact that one of skill in the art COULD get there (i.e. it is enabled) is irrelevant. The questions are – What is Planet Bingo’s program? Did Planet Bingo describe their program intentionally vaguely in an effort to claim not their program but their program and most any other Bingo program? If there’s a dozen ways to achieve each of those limitations, which of the dozen ways did PB use? We have no clue. People seem to have it in their heads that their invention is “any program that has these features” and that is an eligible invention, but it is not. The eligible invention is your program, so that if someone else comes along and writes another program with the same features but does those features better they are not foreclosed from the office or the market by your inferior invention.

          1. None of these tell you what steps the program takes, they simply discuss the results an undisclosed algorithm achieves.

            Yeah, I figured that this would be your approach.

            Consider this claim in U.S. Pat. No. 8,748,382:

            1. A method of stimulating bone growth in a subject in need thereof comprising administering to said subject a storage stable composition comprising: a) a PTHrP having the sequence [Glu.sup.22,25, Leu.sup.23,28,31, Aib.sup.29, Lys.sup.26,30]hPTHrP(1-34)NH.sub.2 (SEQ ID NO.: 2); and b) an effective amount of buffer to maintain the pH in a range of about 4.5 to about 5.6.

            An non-student of biology may have many questions (“How do you generate this composition? How are you “administering” it? What do you mean by a “storage-stable composition?” What type of buffer can maintain the pH range, and how are you measuring it?” However, this method was allowed, at this level of detail, because a chemical/life sciences engineer can read each step and understand how to perform it.

            Consider this claim in U.S. Pat. No. 8,815,188:

            9. A method, comprising: adjusting an amount of reducing agent solution injected to an exhaust system based on a water content of exhaust gas in the exhaust system downstream of a reductant injection location in the presence of vaporized reducing agent.

            A non-mechanical-engineering would ask, “how do you measure the water content? what constitutes a ‘presence’ of a ‘vaporized reducing agent?’ how do you adjust the injection of the solution into the exhaust system?” – but for an average mechanical engineer, this is a plain description of the functional, active step of a method.

            Consider this claim in U.S. Pat. No. 8,822,834:

            7. A method of manufacturing a printed circuit board comprising the steps of: preparing an insulating layer formed of a porous film having a reflectivity of not less than 50% for light of at least a part of wavelengths in a wavelength region of not less than 400 nm and not more than 800 nm; and forming a conductor trace on said insulating layer.

            An non-electrical-engineer would ask: “How do you form an insulating layer from a porous film? How do you form the conductor trace on the insulating layer?” But an electrical engineer understands the steps perfectly well and can utilize them straightaway.

            Each claim meets the requisite standard under 35 USC 112, by providing “such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains to make and use the same.” The steps do not need to be spelled out in excruciating detail: as long as PHOSITA understands the step, and can think of a straightforward way of applying it (or can find a usable example in the specification), 35 USC 112 is met.

            Now let’s consider the claim in Planet Bingo:

            A method using a programmable computer having a memory to track a set of Bingo numbers selected by a player to be played in a game of Bingo which comprises the steps of:

            (a) receiving at least two sets of Bingo numbers preselected by the player to be played in at least one game of Bingo;

            (b) storing the sets of Bingo numbers preselected by the player as a group;

            (c) assigning a player identifier unique to the player to the group having the sets of Bingo numbers which are preselected by the player wherein the player identifier is assigned to the group for multiple sessions of Bingo;

            (d) retrieving the group using the player identifier;

            (e) selecting from the group at least one of the set of Bingo numbers preselected by the player and stored in the memory of the computer as the group for play in a selected game of Bingo in a specific session of Bingo wherein a number of sets of Bingo numbers selected for play in the selected game of Bingo is less than a total number of sets of Bingo numbers in the group;

            (f) assigning a control identifier to the set of Bingo numbers selected by the player to be played in the selected game of Bingo;

            (g) storing the set of Bingo numbers and the control identifier on a computer readable medium;

            (h) displaying the set of Bingo numbers to be played in the selected game of Bingo along with the control identifier;

            (i) receiving a potentially winning control identifier corresponding to a potentially winning set of Bingo numbers selected by the player after the selected game of Bingo has been played; and

            (j) displaying the set of Bingo numbers selected by the player corresponding to the potentially winning control identifier to determine whether the potentially winning set of Bingo numbers is a winning set of Bingo numbers.

            You conclude that this method “does not tell you what steps the program takes, they simply discuss the results an undisclosed algorithm achieves.” In your view, “store the Bingo numbers” and “display the Bingo numbers” do not provide enough detail to constitute an “algorithm.”

            What more of the “undisclosed algorithm” do you want? Pseudocode? Specific data structures, and maybe a database schema, with specific SQL queries? The assembly language routines for displaying the numbers on a screen? The specific layout of the user interface? What would satisfy your minimum requirements of the level of detail for the “disclosure” of the algorithm?

            Hopefully, you see the discrepancy here. According to your rationale, either you think that computer science PHOSITAs are peculiarly unskilled who can’t understand anything about your “algorithm” without handholding – or you demand vastly more specific and narrower claims for software than is required for any other area of technology.

            1. And herein David is one of the critical – and critically overlooked – side effects of the Court’s own rulings.

              KSR came out and augmented what PHOSITA is capable of.

              Notwithstanding the fact that the decision was “aimed” to the arguable detriment of obtaining patents, the unforeseen side effect was that it expressly allows a much skimpier application – and much more skimpy claims – because claims are to be read by a PHOSITA – and that PHOSITA is now (post-KSR) more powerful.

              Many pundits here (hint: Malcolm) insist on posting while not recognizing exactly what a claim is under the law, and what a claim is not.

              Or – even worse – they do understand the role of claims, but advocate in a deceptive manner in order to further their agendas.

              It’s not a pretty choice: they are either ignorant or deceitful (or perhaps even both).

    2. David Stein: Business methods are dead.

      Some are, some aren’t.

      The really cr appy ones that you seem to love are pretty dead, though. That’s great news for most people. Also not surprising in the least.

      Maybe if you could make a compelling argument explaining when and why “creating contractual relationships” became an “art” worth promoting with patents (?!?!?) you’d have more success persuading reasonable people, David.

      Work on it.

      1. LOL – another sheeplike “bleat” from Malcolm, wanting others to create a “fallback” position when following the words of Congress ought to be enough.

        There is no fall back position to the unsheathed sword of “Gist/Abstract” Malcolm – others will not create one and when your number is called under that self-same newly minted weapon, no one will be left to stand up for you.

        1. You have asked this before.

          And like pretty much any question that asks for an actual answer from Malcolm, this question too will remain unanswered**.

          **by “unanswered” I mean what a reasonable person would consider and answer – and not any schlock “reply” that Malcolm may vom1t our and call an “answer.”

        2. Business methods that recite new machines in objective structural terms are eligible for patenting.

          That was easy.

          Any other questions, Slo Mo?

          1. “Objective structural terms”

            LOL- you have been asked many times to provide a proper citation to what you pose to be law.

            You.
            Never.
            Have.

            Thus, your “easy answer” is not even an answer at all.

            Try again.

            This time with a real answer.

          2. Business methods that recite new machines in objective structural terms are eligible for patenting.
            I want a specific example — not some “functional” description.

    3. Ah, we’re receiving rejections under Alice now for claims directed to a computer that performs encryption. Anything that seems to involve some type of math seems to be getting rejected under Alice. Math? Oh my, that’s “Abstract”. Then, once something is “Abstract”, you’re dead, because a computer (in the real world) never performs anything more than implementing the math.

      In reality, the machine performing the encryption steps in one case is performing mathematics on encrypted data that is thousands or millions of bits long. That’s not in the claims or perhaps even in the specification because no one knew years ago it had to be. There is some information about how long it take a computer to perform these calculations (many hours if the keys are very large), but why does one have to add something like “performing the encryption for many hours using hardware” to make this patentable? And even if it really does take a computer to perform these calculations, and a human being could not do it, under the Alice decision, it doesn’t seem to matter, as the computer itself is merely being programmed to do something with nothing “special” added to the computer.

      1. That’s the problem with ignoring the claim language and reality. Congress is going to have to step in again and say that they really did mean what they said 60 years ago.

        1. …so the Court can once again ignore them….?

          How about we have Congress exercise its power to set (and limit) the appeal matters of the Court…? Our constitution does provide a path to doing exactly that, and if the Court refuses to pay attention, then perhaps this extraordinary path needs to be taken.

      2. In reality, the machine performing the encryption steps in one case is performing mathematics on encrypted data that is thousands or millions of bits long. That’s not in the claims or perhaps even in the specification because no one knew years ago it had to be.

        In fact, a lot of people knew that and have been telling you so for a long time.

        1. LOL- talk about form over substance…

          Ned – you are missing the point above here that even correct form matters not to the Supremes.

          Feel free to join the conversation – in full.

  19. Alice Corp is a horrendous decision. It will get reversed eventually. We’ll see case after case after case invalidity patents because they relate to “abstract ideas” despite no one ever defining what an abstract idea.

    Congress needs to step in to straighten this out.

    102 and 103 are much stronger for invaliding patents. Same with 112.

    Applying 101 as a new hurdle is unnecessary and will damage the patent system and our economy.

    1. Splinter,

      Along the same lines. Quoting the CAFC:

      “More narrowly, the Court in both cases [Alice and Bilski] relied on the fact that the contractual relations at issue constituted ‘a fundamental economic practice long prevalent in our system of commerce.’”

      “The claims [in the instant case] are squarely about creating a contractual relationship—a “transaction performance guaranty”—that is beyond question of ancient lineage.”

      Why is it necessary to invoke 101 instead of 103. Because the method is implemented with a general purpose computer? Beats me.

      1. Troubled: I think the justification is that they say there isn’t art for the computer implemented methods. Also, I think this was a power play where the SCOTUS said we are going to give judges a way to invalidate any patent they don’t like.

        1. NWPA,

          MPEP, section 2144.04, Roman III, cites In re Venner for the proposition that automating a manual activity is obvious. Thus, the only missing art is to the business methods, but these are apparently old and well known. Maybe not to the PTO Examiner, but it should have been to the applicant and disclosed, I would have guessed.

          1. The Alice Corp patent (based on the court’s description) should have been invalidated under 103.

            103 was a low hurdle before KSR, now a much harder hurdle. That’s enough to knock out these types of patents.

            The court’s statement about “doesn’t matter how narrow” shows how clueless they are. What about “preemption” being one of the legs the Court’s judicial exceptions stands on? If a claim is very narrow, likely doesn’t preempt the tech space.

            We need Congress to act (call your reps) or the Supreme Court to come to their collective senses and re-visit (e.g., a Sup Ct case that finds an alleged abstract patent claims valid under 101).

            Ps – We also need massive reforms within the US Patent Office.

            link to washingtonpost.com

            1. jI think this is about Obama appointing Taranto and Hughes based on what Google wants. Neither of them are even remotely qualified to sit on the Fed. Cir.

              I will say this again: Notice that Chen is not so bad? The USSR found out that no matter what they did to the army/police that if they came from the region and were educated that they would not put down an uprising. They just couldn’t bring themselves to slaughter people. The USSR solved this problem by training rural uneducated men from different regions and then installing them as the police/army for a region.

              Guess what Taranto and Hughes are like.

            2. MPEP, section 2144.04, Roman III, cites In re Venner for the proposition that automating a manual activity is obvious.

              Venner was applied to an automated physical action over the prior art that the physical action was performed manually in the same way. That’s not whats going on with information processing at all.

              The Alice Corp patent (based on the court’s description) should have been invalidated under 103.

              Doing something on a computer is not inherently obvious over doing it manually. The idea of doing something on a computer is an idea though.

            3. What? KSR made 103 a much lower hurdle. No teaching suggestion or motivation needed in the prior art, just a rational reason for combination.

    2. Entitled Crybaby #4932: We’ll see case after case after case invalidity patents because they relate to “abstract ideas” despite no one ever defining what an abstract idea.

      There are always going to be cases on the bleeding edge. But the massive core of crxp cases is pretty easy to identify. If you need help, just ask. Some of us have been thinking a lot about this stuff for years now.

      1. LOL – the site’s biggest crybaby calling others crybabies (still).

        Still waiting for those definitions, Malcolm.

        Yeah – we get how you want to trivialize the fact that with no definitions there is no objectivity and no accountability, but for the rational application of law (and for law to serve a proper notice function) these types of definitions really need to be in place beforehand and not years down the road after patent grants.

    3. Splinter,
      I know patent attorneys aren’t going to be feeding off small software companies anymore and the real inventors. There is not such a thing as an invention in software. Software is nothing, but set of instructions that you feed to a machine.

      Section 101 is important, you can’t patent j nk and expect me to spend money trying to invalidate something that should not have been awarded the first place.

      J nk patents we had in the last 10 years destroyed almost destroyed our economy. I know couple of friends who gone out of business, because of j nk patent.

      1. The sad thing is software engineer is that you are acting against you own self interest.

        Just wait. Employment contracts. Trade secrets. The firing of large numbers of researchers. It is going to bloody and take a huge toll on our software industry.

        And, software engineer—you don’t understand software or computers very well.

        1. Bingo

          All of the lazy tech types – what they really want is unlimited ability to copy others.

          Hey – that’s just human nature, so I “get” the want. It’s the inability of these so-called techie type to grasp the logic that they are operating under that is rather bizarre.

          1. Skilled workman in the art devoid of any spark of ingenuity or creativity (software engineer) stabs creative software inventor genius colleague in the back… because of jealousy over year end bonuses tied to inventions…

            1. Nah…

              Not so melodramatic: (un)skilled workman wants to be able to, um, “borrow” code wholesale from wherever in order to “get the job done” and collect his paycheck.

              Large Corp ladles a generous helping of KoolAid: you can’t take the easy way because patents (and copyright) are bad and stop you from inventing (never mind any sense of reality as to what inventing means, or that patents are “bad” only in the sense that Big Corp might actually have to respect someone else’s inventions).

              Grunt techie swallows and asks for another cup.

      2. I know couple of friends who gone out of business, because of j nk patent.
        You should haven’t any problem naming the companies and patents then.

      3. KSR makes it easier to invalidate many Junk patents.

        But if you develop an iphone app that detects whether I have cancer (e.g., by scanning my eyes, etc. or detecting my breath), why wouldn’t you deserve a patent based on the innovative software you wrote to turn an iphone into a diagnostic device?

        I’ve tried apps that turned my phone into a “Stud finder” (e.g, the wood not dudes) and other great functionality.

        Yes, there were plenty of crazy patents. Not just in the software space. KSR, Nautilus and other cases have greatly tightened the standards.

        That said, the Patent Office needs reforms. Plan and simple. The quality varies widely.

        You mentioned startups going out of business because of junk patents. Yes, possible but could be resolved by revising the DJ standard and also “loser pays” laws.

        With Alice Corp, there will be many startups going of the business. I guarantee. It’s a horrible decision and will hurt the US economy. No doubt in my mind.

        1. Splinter, But if you develop an iphone app that detects whether I have cancer (e.g., by scanning my eyes, etc. or detecting my breath), why wouldn’t you deserve a patent based on the innovative software you wrote to turn an iphone into a diagnostic device?

          Perhaps because that’s not the invention?

  20. This one was not much of a surprise given the similarity to Alice and given that there was absolutely nothing more than a guarantor == not even shadow accounts.

    Taranto wrote: “If enough extra is included in a claim, it passes muster under section 101 even if it amounts to a ‘business method.'”

    That should never be the test for anything in law. Evidence and a method. That was what 102, 103, 112 are for. This short circuits everything. In face, I was thinking that this 101 jurisprudence surely is in direct conflict with Graham. I mean did Graham say look at it and if you think there isn’t enough then proclaim it obvious?

    Sad to see the Google judges together again: Taranto and Hughes.

    One bright spot: the pair actually quoted “See Willis D. Morgan, The History and Economicsof Suretyship, 12 Cornell L.Q. 153 (1927).” That is remarkable as Taranto has a history of not citing any outside evidence but just giving us his non-patent law, non-science take on it and then invalidating. So, maybe the Google Judge will start to feel a need to actually cite evidence. I wonder if he realizes that his standards are lower than most 3rd world judges.

    1. Taranto is a nightmare. Ignorant of science, technology, innovation, and patent law. Some of his writing at this point should be posted on a wall of shame.

      What did he write the mere simulation of human thought? The mere simulation of human thought. That evinces such ignorance of modern science that it is just beyond me to even get my head around it.

      1. Night, Taranto is following the law here, nothing remarkable.

        I fault him highly on interpreting the 315/314(d) nexus in a case of first impression. My first impression of Taranto’s opinion ther is not favorable.

        1. I agree in this case he followed Alice and cited evidence for the abstract idea and why it was well-known. IN THIS ONE. The last one he used the standard this abstract idea is like the one in Alice and I don’t have any evidence but it is what I feel.

    2. Taranto wrote: “If enough extra is included in a claim, it passes muster under section 101 even if it amounts to a ‘business method.’”

      It’s definitely bogus, as the second half of a test that first critically turns on the undefined term “abstract.”

      I find it interesting that the critical part of Taranto’s decision asserts that “the patented “transaction performance guarantee” is “beyond question of ancient lineage.” In that case, shouldn’t 102 be an incredibly easy tool for knocking this one out of the park – based on object evidence, rather than speculation?

      1. >>shouldn’t 102 be an incredibly easy

        I think so. I think this case is in direct conflict with Graham. Graham needs to be modified to: read the claim and if it doesn’t seem to add enough over what you know judge then invalidate the claim.

    3. NWPA: “Taranto wrote: “If enough extra is included in a claim, it passes muster under section 101 even if it amounts to a ‘business method.’””

      I would look at it this way: business methods themselves are ineligible. If you have claim 1 which is an eligible claim (non-business method), and then claim 2, “the method as recited in claim 1, being used to [insert ineligible business method], then claim 2 will not become ineligible because it is a business method.

      1. errata to my post in 3.3, after “claim 1 which is an eligible” add “and allowable.” Not my preference but this is what the Court is saying.

        1. I think I understand what he is saying patent leather. My point is that historically it is the type of law that civilized countries try to avoid. It is a law of I’ll do whatever I want as the judge.

          Let’s face it. We all feel the chill. This J. Taranto is saying to us that he is going to do whatever he wants. He is saying that Alice has opened the door for the I know it if I see it test. That means J. Taranto is now the legislative branch of government. He can now make common law despite the statute.

          That is what I am getting out of this. (I do understand very well what he is saying patent leather in terms of what it will take now to get a claim allowed. Probably you could put all my comments into the whining category.)

          1. I’m sure you (and most here) know this already, but look at all the Obama Fed Circuit appointees and their stance on software patents. All against.

            So this is Obama’s solution to the patent troll problem. Just take away about half a million patents. And to think at one point I liked him…

            1. *Obama Fed Circuit appointees and their stance on software patents. All against.*

              In fact, O’Malley is a radical in favor of every kind of junk patent including software. Renya, Wallach, and Chen are unfortunately in favor of software patents but at least not the most abusive and fraudulent ones.

              Only Taranto and Hughes show any signs of following the constitution and statute and finding software generally outside patent eligibility. Thanks go to Obama for at least giving us two good ones.

              1. As with your entire group the reason you give is ’cause.

                Your entire group constantly says things that are scientifically wrong and your entire group constantly says things that are not in accordance with patent law.

                A shameful group of judicial activist.

              2. Only Taranto and Hughes show any signs of following the constitution and statute and finding software generally outside patent eligibility.
                I didn’t realize that our founding fathers were aware of the pitfalls associated with the patent eligibility of software.

                I must of missed that one during my constitutional law class.

              3. Owen, my bad, I forgot that O’Malley was indeed an Obama appointee (but before his agenda began against patent trolls). But I am interested in what you say about Reyna, Wallach, and Chen. Considering how they’ve all held so far, I put them in the anti-software camp. What info do you have that these three judges are “in favor of software patents but at least not the most abusive and fraudulent ones”?

                I’m going to refrain comment on the last paragraph of your post.

  21. Anyone care to do a speculative headcount of who is left on the Federal Circuit who might have voted to uphold this patent with respect to 101? Also, with respect to business method patents, can anyone think of any business method patent out there that likely would survive a court challenge under Bilski and Alice?

    1. Egon, the Rich/Rader view of nominalism really took it on the chin in Mayo. Simply reciting the old and conventional, but eligible, with the ineligible, was no longer enough. Alice had to come out the way it did otherwise Mayo would be overruled.

      Notice that the analysis of Prometheus/Alice is the very same as that of Funk Bros.: ignore the ineligible when determining invention — except when integrated as in Diehr to produce a new or improved result.

      1. Ned, the problem you have is the equivalence of software/hardware/firmware.

        All of these are information processing machines. The other problem you have is the court (SCOTUS) is fighting the tide. The tide is information processing. No matter what in 50 years these current bozos are going to ridiculed for their medieval thinking.

          1. Gee, so nice of you to agree that in principle they are equivalent. How about not in principle but as a scientific fact?

          2. Um…

            What context exactly, would the fact that software is equivalent to firmware and is equivalent to hardware change the principle?

            A fact is a fact, jack.

          1. Not directly, but it is built into the Alice test. And, Professor, having judges and attorneys constantly deny scientific facts is —well frankly–outrageous. The equivalence should not be an issue. It should not be an argument. If a judge on the Fed. Cir. doesn’t understand this, then it is their responsibility to learn it. Educated attorneys should not be denying this.

            And if I take a step back, I don’t think we would be in this situation if the judges knew more about information processing. It is a bit more than outrageous to live in the information age and have judges sitting on a court for technology and then make statements contrary to the most important thesis of the era–the Church Turing Thesis. How can one even begin to hope to have rational laws when the judges are ignorant and apparently proud of it.

          2. doesn’t appear that the case turned in any way on whether the program was implemented in software/hardware/firmware.

            Quite true Prof. Crouch – see the comment to Malcolm at post 9.1.

            But the bigger picture is that that lack of turning on has a more pernicious effect, as those who “celebrate” here are celebrating on the “software is defeated” angle when what is being “defeated” is much much much more than mere software.

            The takeaway here (which is being kicked over with tons of dust) is that the statutory categories become written out of 35 USC 101 with this jurisprudence of “Gist/Abstract.”

            What is actually claimed is gisted away and dismissed as a “scriviner trick.”

            It simply does not matter whether or not the words of Congress in 35 USC 101 are formally met. It does not matter even whether both sides of 35 USC 101 are met: that utility and category are met.

            The Court has rewritten what 101 means. The Judicial Exceptions have swallowed the rule of law.

            The nonsense from Prometheus: the Court refusing to let the actual words of Congress impact the implicit writing of the Court have been amplified here. Sadly, no student of the law (and apparently, no teachers of the law) seem able to read this new (implicit and explicit) writing on the wall.

            The desired-ends has blinded and shut out the critical thinking as to the ill-chosen means.

            When they came and took away the statutory categories, who was quiet?

            When they came and took away the utility, who was quiet?

            That they offered up “ends” that “aligned with certain philosophies”, will that really matter, when the same means are applied to different ends? What “fallback” positions can you think of?

            1. Yeah that is a better answer than mine anon.

              Also, Dennis, we have to listen to judges and attorneys say things that are like saying the earth is at the center of the universe. They are really that outrageously wrong. And many of us feel it is a insult to our legal system that attorneys and judges are permitted to say these things without consequences. It means essentially there are no rules. No justice. You do whatever you want and lie cheat and steal to get what you want.

              (And that isn’t really over-stated.) It breaks our system when there is no intellectually honesty. When I can’t say, that person is being intellectually dishonest and you need to figure this out. We say that now and what we get is who cares? They are winning and I’d like to be on the winning side. (Then the mob says isn’t it fun to watch the burning.)

    2. Well, to find this one eligible, a judge would have to act in complete contempt of the Supreme Court. I’ll leave it to you to figure out which judges might feel that way.

      As for radicals that support even obviously ineligible patents, the best judges for the patentee here would be Newman, O’Malley, and Moore.

      It’s possible that the enthusiasts for broad patent eligibility, far beyond precedent and statutory text, might consider a case just slightly stronger than this one. Those enthusiasts are less likely than the radicals to make a bad decision but they do offer a chance to patentees like this one. They are Lourie, Renya, Wallach, and Chen.

      The old line scholars applying law and precedent wouldn’t offer much hope to claims like these. Patentee here didn’t want serious judges like Dyk and Prost on their panel.

      The newest judges who understand and respect modern technology were both on the panel and we know how Taranto and Hughes voted.

      As for seniors, I think Mayer is an old line scholar, Plager is an enthusiast, and Linn is a radical. Maybe; I’ve read less of their work.

      That’s a speculative head count for you. As in any speculation, it could be wildly wrong and is offered only for your entertainment. What’s your speculation?

      1. That’s a speculative head count for you. As in any speculation, it could be wildly wrong and is offered only for your entertainment. What’s your speculation?

        My speculation is that you know jack-sprat about real law.

        How was your sleep at that Holiday Inn last night?

      2. >>The newest judges who understand and respect modern technology were both on the panel and we know how Taranto and Hughes voted.

        Owen neither one has any education in science. Both are unqualified to sit on the Fed. Cir.

        1. I’d also point out that Taranto wrote something to the effect: the mere simulation of human mental processes. That exhibits ignorance to such a degree that impeachment proceedings should be started.

          Simply filth.

      3. to find this one eligible, a judge would have to act in complete contempt of the Supreme Court

        You mean the Supreme Court that wrote “we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” Oh yeah, that is a hard and fast rule there.

Comments are closed.