by Dennis Crouch
McRO (Planet Blue) v. Activision Blizzard, et al. (C.D. Cal. 2014) Decision PDF
In his second major Section 101 decision in as many weeks, Judge Wu (C.D. Cal) has relied upon Alice Corp. (2014) to invalidate all of McRO’s asserted patent claims. The case is quite important because it is one of the first major applications of Alice Corp. to invalidate non-business-method claims. Here, the invention is directed toward a specific technological problem that had troubled the field of animation – automatically animating lip synchronization and facial expression of animated characters. See U.S. Patent Nos. 6,307,576 (“‘576 Patent”) and 6,611,278 (“‘278 Patent”). The appeal will be interesting and may serve as one of the Federal Circuit’s first opportunities to draw a new line in the sand.
The problem addressed by the invention is that it has been historically quite difficult to match-up animation audio and video — so that the character’s mouth and face are moving to match the sound overlay. Historically, this has been very expensive and time consuming to do well. What you might call the ‘gist’ of the invention is simply a data transformation — from an audio signal to a visual animation output. The details are a bit more technical. According to claim 1 of the ‘278 patent, the invention operates by first creating a set of phoneme sequences keyed to a pre-recorded audio sequence. Then, those phenome sequences are used to create a set of morph-weight-set streams (based upon a set of factors provided by the animators). Those morph-streams are then used as input sequences for the animated characters to provide both timing and movement of facial expressions, including emotion. The inventions claim priority back to 1997.
1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence;
obtaining a plurality of sub-sequences of timed phonemes corresponding to a desired audio sequence for said three-dimensional characters;
generating an output morph weight set stream by applying said first set of rules to each sub-sequence of said plurality of sub-sequences of timed phonemes; and
applying said output morph weight set stream to an input sequence of animated characters to generate an output sequence of animated characters with lip and facial expression synchronized to said audio sequence.
In writing about this patent claim, Judge Wu noted that – in isolation – it appears tangible and specific rather than abstract.
They are tangible, each covering an approach to automated three-dimensional computer animation, which is a specific technological process. They do not claim a monopoly, as Defendants argue, on “the idea that the human mouth looks a certain way while speaking particular sounds,” “applied to the field of animation.” Further, the patents do not cover the prior art methods of computer assisted, but non-automated, lip synchronization for three-dimensional computer animation.
Further, the defendants raised a defense of non-infringement – explaining that their particular method of automated lip synchronization is not even covered by the patents. Thus, Judge Wu writes: “At first blush, it is therefore difficult to see how the claims might implicate the ‘basic underlying concern that these patents tie up too much future use of’ any abstract idea they apply.”
However, Judge Wu recognized that the Supreme Court’s analysis of Alice Corp was not done in a vacuum but rather made reference to what was already known in the the art and asked whether the claimed invention extended that knowledge with an inventive concept that goes beyond a mere abstract idea. In Judge Wu’s words the Section 101 eligibility of “the claims must be evaluated in the context of the prior art.”
Judge Wu’s approach was to identify the point-of-novelty for the claimed invention and then consider whether that point-of-novelty was itself an abstract idea. That approach was made easy because the patents admitted that many elements of the invention were already part of thee prior art. However, the patents claimed the new elements as the use of rules that define morph sets as a function of the phonemes which the court sees an an abstract idea that cannot be patented because it would allow the patentee to “preempt the field of automatic lip synchronization for computer-generated 3D animation … using a rules-based morph target approach.” Thus, the claims are invalid.
Judge Wu does show some sympathy to the patentee here — indicating that it appears to be a nice and important invention – just one that is not patent eligible.
But a § 101 defect does not mean that the invention was in the prior art. The invention here may have been novel, but the claims are directed to an abstract idea. And the patent’s casual – and honest – description of the prior art was made at a time when, under the then-prevalent interpretation of the law, such admissions were unlikely to be harmful. One
unintended consequence of Alice, and perhaps of this and other decisions to come, is an incentive for patent applicants to say as little as possible about the prior art in their applications.
Although he does not cite the Supreme Court’s 1946 decision in Halliburton v. Walker, Judge Wu does offer closing remarks that hearken back to the principle that patent claims must be specific at the point-of-novelty. He writes: “This case illustrates the danger that exists when the novel portions of an invention are claimed too broadly.”
There are many interesting aspects to the decision, but I wanted to post these initial thoughts before moving forward.
Hello Les,
My apologies if this gets posted twice, Have problems with the filters. Thank you for the opportunity. There are basically two Integration Analysis arguments in the wake of Alice that everyone should be using, if they can.
1. The claims are a fully “Integrated” process and not one of the implicit exceptions and therefore it’s a gross legal error to apply step two of the Alice two step test. Show your rational and facts to support the argument. NOTE: (Step two is usually were examiners, and judges too, are running amok and impermissibly distilling inventions down to the “gist”.)
or, if you do have to go to step two argue…
2. The claims which do contain this concept (one of the implicit exceptions), further “ Integrate” the concept into a process that is new and useful and therefore transform the claims into an inventive application of the concept. With “new” being a new combination, and “useful” meaning one or more benefits that could not be achieved with just the concept standing alone. Cite the appropriate sections of Diehr, Mayo, and Alice. Stick to your guns and force the Examiner, SPE, or the PTAB to deal with your “Integration Analysis”.
Let me know if you have any questions.
“Stick to your guns and force the Examiner, SPE, or the PTAB to deal with your “Integration Analysis”.”
Yeah, sounds super hard. The examiner just repeats the abstract idea you’re trying to patent upon and says “final”. And you’re all like “o snap!”.
Rather than ignoring “Integration Analysis”, how about the Examiner rely on the facts and allow claims according to the law?
Really, how hard could that be?
How hard would you like it to be? Masochistically? Keep talking and we can always make it harder if you’re going to beg for it.
Bluto: Mental processes are not patent eligible because: (1) you can’t impinge on people’s right to think (would be the ultimate form of preemption); and (2) there is no discernible “process” with a set of mental steps other than a single process of thinking.
Okay. We’re more or less on the same page here. You were confused about my follow up question but you didnt indicate what was confusing about it. I’ve rewritten it here to make it as clear as possible:
You agree that mental processes are ineligible subject matter for protection by a patent. Does your answer (eligible or not) change when an old but eligible data gathering step is placed before the admittedly ineligible mental step? If so, why? When you answer that question, consider your rationale for the answer you gave to the original question (the ineligibility of mental proceeses) and imagine that you are giving your explanation to a patent attorney who happens to be practicing that old data gathering step.
I think that’s pretty straightforward. If you’re still confused by the question, let me know where the confusion lies.
I’ll get to the question of the eligibility of “improved” manufactures that receive, store and display information after lunch. Don’t freak out if it takes a few hours.
Thanks again for the cut-and-paste. Moving along now.
I didn’t “cut and paste” Bluto.
I revised the question I asked you to make it more “clear” so you were no longer confused by the question.
Are you still confused, Bluto?
Or is there some other problem now?
I guess we can always revisit the dicussion later, Bluto. Your choice. I’ve got this bookmarked, at least, so you won’t be able to claim that you answered the question. It’s an important question and a highly relevant one to the topic of subject matter eligibility, which seemed to be an interest of yours.
If we are now to interpret 35 USC 101 as preventing the patenting of things that are supposedly well known or “not new”, what now do we make of 35 USC 102? Has 35 USC 102 been nullified by common law? If not, what practical use is 35 USC 102 anymore if inventions that are “not new” are ineligible subject matter? Is there any room in US patent law for anticipation?
If we are now to interpret 35 USC 101 as preventing the patenting of things that are supposedly well known or “not new”, what now do we make of 35 USC 102?
You mean this statute?
35 U.S.C. §102.
(a) Novelty; Prior Art.— A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) Exceptions.—
(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) Disclosures appearing in applications and patents.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(c) Common Ownership Under Joint Research Agreements.— Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(d) Patents and Published Applications Effective as Prior Art.— For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365 (a), or 365 (b), or to claim the benefit of an earlier filing date under section 120, 121, or 365 (c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
Seems perfectly practical to me.
Thanks for the cut and paste, sweet-ums.
Now, can you try and actually answer the question now? What is the point of 102 now that 101 is a catchall for anything “not new”? What need is there for determining whether something is anticipated if the invention is NOT eligible for patenting in the first place because it’s not new?
Anything that is anticipated implicitly already dispatched under 101 as being ineligible because it’s “not new”.
What is the point of 102 now that 101 is a catchall for anything “not new”?
If your premise leads to absurd results, perhaps you should revisit your premise. Who, besides you, says that “101 is a catchall for anything ‘not new’?”
Well for one, Ned’s anti-nominalism position is synonymous with what BlutoBlutatsky states.
I don’t know what Ned’s “anti-nominalism position” is, but I’m surprised to hear that Ned has stated that 101 captures everything that is “not new,” thus rendering 102 superfluous. Are you sure you’re accurately characterizing Ned’s position?
That’s a fair question as Ned’s reimagining and versions of case law are not so easily tracked to the real world and contain inconsistencies that may render any characterization necessarily inaccurate.
I am referencing his penchant for focusing on the word “new” not only in the current version of 35 USC 101, but in the precursor statutes as well.
See my post at 41.2.
We have suffered numerous arguments over the last months talking about how the aspect of “new” in 101 precludes eligibility for anything that isn’t new. Let me provide you with a freshly excreted argument from this thread:
***”That would be inaccurate in this instance. People have been matching sound to facial features in moving images for a long, long, long, long time. And people have doing that using “rules” and an information-processing tool known as “the brain.” They also have employed at various times pencils and paper, pens and paper, and calculators. And computers. All before these “innovators” came up with additional concept of (wait for it) using “rules” to assist to with the process.”***
This ENTIRE argument against the eligibility of the claims hinges on the fact that the inventive limitation in the claim was not NEW.
If something is not new, it is anticipated under the statute, not ineligible subject matter. When you conflate “new” as found in 101 and interpret it as the same as “anticipated” as in 102, you essentially destroy any need for 102 to exist anymore. Everything that was previously anticipated can be now invalidated under 101 ‘cus it aint new.
For good or ill, the Supreme Court does seem to be considering the “newness,” of a practice under 101. Or, as I prefer to think of it, they are using the fact that a practice is very old as a clue that it is an abstract idea.
Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.
Bilski
Like the risk hedging in Bilski, the concept of intermediated settlement is “ ‘a fundamental economic practice long prevalent in our system of commerce.’
Alice Corp
go, let’s not misstate the reason for the reference to hedging being notorious — it was to demonstrate that hedging was fundamental.
The court did not find the method disclosed to be old, just that it was hedging and hedging was a fundamental economic practice.
Some of the dependent claims recited specific math. These were declared invalid as well even though there was no finding that the math was known. Why? Because hedging was not patentable subject matter, and adding math, itself nonstatutory, added nothing.
That said, the bit about preemption was confusing at best.
Hedging untethered from anything else is fundamental. Just like “a conveyance from A to B”, also referred to as a car, is fundamental. Improvements to a car are patentable.
The claimed process in Bilski was not hedging in an abstract sense. Bilski claimed a very specific method for risk hedging, in essence the improvement.
No one presented prior art to prove that method was well know.
It’s easy to “prove” something is old when the only evidence required is handwaving.
Let me state that I believe that “conveyance from A to B” would be abstract, but the car obviously is not. Whether a car is known or not is not relevant to an analysis under 101.
Bluto, I agree that Bilski’s hedging method was not abstract in the way the Supreme Court used abstract in Le Roy v. Tatham, and O’Reilly v. Morse. Neither was the hedging method described in the claims old.
Clearly, to me, the problem with Bilski’s claims was that they were nonstatutory , exactly as law had held business methods to be prior to State Street Bank. Stevens wanted to restore that law. The majority of the Supreme Court decided to go off on a lark. There is no other possible explanation for what they did that makes any sense.
We do know today is that “fundamental” economic practices are “abstract” – meaning they are nonstatutory. Thus the patentability, if anything, must be in the statutory subject matter the claim, typically the computer systems. But if the computer systems are claimed in a very gen eric level, they hardly are inventive.
Your point about business methods would be well taken, if they weren’t codified into the law. I get that you think this should be the law, but it’s not, so let’s move on from that point.
I’m also all for allowing applicants to dump the perfunctory computer-implementation parts in methods. If you recall, the reason why this was done was to satisfy elements of the MOT test.
Finally, can you tell me what “fundamental” means?
We went from ineligible by abstractness, to abstractness because it’s fundamental. Looks like we just replaced the label on the bottle without defining the contents.
As far as I can tell, “fundamental” can only be determined with reference to what is known, hence we are back to whether the process is old and well known.
It’s a ridiculous and unworkable test.
Bluto, 273 was never intended to change 101. What a fricken disaster.
I have told the story of its enactment to anon some time back. Did you follow it then?
Your ‘story’ Ned was your unsubstantiated opinion and nothing more – note particularly that the actual record in Congress and the words of the Supreme Court tell a decidedly different story.
To be precise, the Supreme Court is using the fact that a claimed practice is very old as a clue that the patentee is including it merely to overcome the 101 threshold, but actually is trying to block use of a judicial exception entirely.
The 101 question is now a question of patentee intent, and the Supreme Court is trying to think — what is the patentee going after?
Not that I agree with this approach, but I think that’s what S.Ct. is doing.
“Inventive limitation” was not new?
Hardly.
While I somewhat disagree that abstractness should be a 101 issue, the problem with the claim was the invention claimed at the point of novelty was stated too broadly, too abstractly.
To reach this result, the court had to determine as a preliminary finding that everything in the claim was old but the use of rules. The court did this because everything in the claim but the use of rules was admitted to be old and conventional.
Did both parties stipulate to this interpretation of the claims? Even if they did, why is the use of “rules” in the process not patentable? Had anyone used rules previously? Did the use of rules provide an improvement over the state of the art?
Do you object to the fact that the claims didn’t explicitly recite what the rules were? If so, that seems to be a 112 issue. Clarity and definiteness are, just like 102, separate sections of the code for a reason. Congress did not intend 112 and 101 to be interchangeable.
It seems abhorrent to allow a Court to punish a patentee for obtaining claims that were definite enough to pass muster at the PTO, simply because the Court doesn’t like the breadth of the claims that issued. This is why the standards for asserting indefiniteness post-issuance are so much greater than the requirements during prosecution. We need examiners to make sure claims are definite and enabled. Once they pass PTO review, claims should be invalidated for indefiniteness by a non-technical individual like a judge, only in rare occasions.
Bluto: Had anyone used rules previously?
Is that a serious question?
Are you seriously asking whether someone who was matching sound to moving images “used rules”?
Seriously?
It is not a “catch all” brosef. The only time we’re talking about what is “new and not new” in 101 is when we’re talking exceptions.
Yes. Exceptions that swallow the rule, brosef.
What “rule” is being “swallowed”?
The rule is 101. Do please try and keep up.
The exceptions of the judicial created doctrine have rendered even the explicit categories that are supposedly eligible, ineligible. We might as well remove “manufacture” and “process” all together. Claims that clearly fall into these explicit categories are now ineligible due to these lovely common law exceptions. There is literally nothing left in 101 except for “new” and “useful” after Alice. Even “useful” is irrelevant because the claims in Alice and Bilski were useful.
“New” is being interpreted as something that is not “abstract”. For example, risk hedging schemes are clearly methods. These methods are now not patentable because the underlying subject matter is not “new” because risk hedging schemes have been known for centuries. Not the claimed risk hedging schemes mind you, but the basic concept of risk hedging.
Should read “judicial exceptions to the black letter law”
bro we just got through giving out 300k apps this last year. I think there’s plenty left in 101 eligible subject matter. The exceptions have not “swallowed” the rule one little bit it seems from the numbers of patents issuing. Not even a tiny bit.
Now, if on the other hand the number of patents issued yearly fell to say, 10, then you might have a point. Especially if we finally rejected the 300k others with nothing but 101.
““New” is being interpreted as something that is not “abstract”.”
Not really :/ The exceptions have little to do with the word “new”.
‘These methods are now not patentable because the underlying subject matter is not “new” because risk hedging schemes have been known for centuries.”
Technically speaking they were never patent eligible. But either way, they still are not ineligible simply because risk hedging schemes have been known for centuries. It’s because risk hedging schemes are abstract ideas and are excluded, as a category. Regardless of them being old or not.
“bro we just got through giving out 300k apps this last year. I think there’s plenty left in 101 eligible subject matter. The exceptions have not “swallowed” the rule one little bit it seems from the numbers of patents issuing. Not even a tiny bit.”
An exercise in missing the point entirely. The USPTO is not invalidating issued patents.
“Technically speaking they were never patent eligible. But either way, they still are not ineligible simply because risk hedging schemes have been known for centuries.”
How can a method that has steps that were previously unknown in the art not be “new” under any definition?
IOW, Prove to us that the claimed risk hedging scheme had ever been used or was known prior to disclosure by the Applicant. No one disagrees that “risk hedging” in various forms has been done for centuries. That’s not the question. The question is ***was the risk hedging method included in the claims*** known?
If the risk hedging scheme is even nominally different from previous schemes known in the art, and the scheme is useful, it should pass 101.
“An exercise in missing the point entirely. The USPTO is not invalidating issued patents.”
I take it then that your point is “the uspto is not invalidating issued patents”? I don’t really follow your point or why you’re bringing that point up.
“‘These methods are now not patentable because the underlying subject matter is not “new” because risk hedging schemes have been known for centuries.””
Yes I’ve discussed this inartful way of expressing the holding before. First, when we read in context, the sentence begins to make a bit more sense. And second, even if you leave the sentence as a sound byte divorced from context you can ultimately suss out the ultimate meaning, which is that the underlying subject matter is a risk hedging scheme, aka an abstract idea that has been around for centuries.
But you may feel free to continue to not understand the decision, be my guest. It isn’t going to change that the law is not going to be what you’re thinking it is.
“How can a method that has steps that were previously unknown in the art not be “new” under any definition?”
I don’t need to bother with this question, because under my understanding (the proper and quite in context understanding) of the sentence he was never saying that a method with previously unknown steps was not “new”. He was merely saying that the claim is to underlying subject matter, aka hedging risk (which happens to be abstract they note in another place) which is not new. And expressing himself inartfully. I’m probably expressing myself inartfully right now simply because this is difficult to explain to someone that is dead set on not understanding, since you have to “start in the middle” of the explanation.
“IOW, Prove to us that the claimed risk hedging scheme had ever been used or was known prior to disclosure by the Applicant.”
Again, there is no need to under my interpretation of the decision.
“No one disagrees that “risk hedging” in various forms has been done for centuries. That’s not the question. ”
Great. Now if you’ll be so kind as to also “not question” that hedging risk is 100% abstract and that this claim was unquestionably directed to hedging risk then we’ll be like 100% done with this whole analysis.
” The question is ***was the risk hedging method included in the claims*** known?”
That’s actually not “the question”. That is simply “the question” that pops into your mind because a USSC justice expressed himself inartfully and you cannot see the forest for this big ol tree.
“If the risk hedging scheme is even nominally different from previous schemes known in the art, and the scheme is useful, it should pass 101.”
That’s your opinion, and what a mighty fine opinion it is! But like a lot of opinions, yours simply doesn’t matter here. The USSC’s opinion however does.
“bro we just got through giving out 300k apps this last year. I think there’s plenty left in 101 eligible subject matter. The exceptions have not “swallowed” the rule one little bit it seems from the numbers of patents issuing. Not even a tiny bit. ”
Those 300K apps were not evaluated under Alice, were they?
“Those 300K apps were not evaluated under Alice, were they?”
Maybe not all of them were. Doubtless at least one or two examiners were up to the task of applying the law correctly before Alice was handed down for simpletons still not on board. But even if you’re entirely correct, that number isn’t going anywhere near 10 anytime soon.
Bluto, you hit upon the central weakness of the Supreme Court current analysis, and why it might be preferred to address the issue in the context of 102/103/112, but giving no weight to the nonstatutory unless “integrated.”
However, if the statutory subject matter, e.g., the computer, is claimed at such a high level of abstraction that there is no possibility of being invention in the statutory, the patentability of the claim can be resolved as a threshold issue under 101.
In contrast, if there is arguably invention in the statutory subject matter, the courts must conduct data analysis under 102/103, but again giving no weight to the nonstatutory subject matter unless integrated.
you hit upon the central weakness of the Supreme Court current analysis, and why it might be preferred to address the issue in the context of 102/103/112, but giving no weight to the nonstatutory unless “integrated.”
It’s the same analysis regardless of what statute you use.
Either you celebrate form over substance (as the Federal Circuit did) or you do the analysis and look at what the applicant is adding to the prior art (so-called “dissection”). If what is added is only ineligible subject matter, you are most surely up Brown River without an oar.
It’s not the same by any stretch of the imagination. 102 and 103 require actual evidence in order to be applied in a way that passes the laugh test. 101 now requires nothing of the sort to prove that something isn’t “new”.
Can you point to any of the recent 101 invalidation opinions where claim construction was conducted and and element-by-element analysis of the claims occurred, specifically with reference to prior art? You know, that pesky process the USPTO has to engage in to justify a prima facie case of anticipation or obviousness?
I’m not talking about general and vague references to books or prior art that supposedly exists and is “known to everyone”, but actual evidence in the record.
IOW, it’s implicit that you prove, by clear and convincing evidence, that what you assert is ‘prior art’ actually exists. I.E., you can show a book, patent, or any other objective evidence that proves your position.
Taking an otherwise known method and saying “execute it on a computer” is not patentable because both the computer and the method are known in the art. They are anticipated.
Neither Alice nor Bilski involved prior art of any kind. You don’t need prior art when you ignore claim limitations and view the claim without regard to the actual words used in the claim.
The real advantage in Alice is that scientifically ignorant people in robes can chant the incantation of “abstract” without being bothered to figure out if the method underlying the claim has ever actually been practiced before.
“IOW, it’s implicit that you prove, by clear and convincing evidence, that what you assert is ‘prior art’ actually exists. ”
Only if not everyone is on board. If all parties are in agreement it shouldn’t be a problem for the fact to be entered onto the record in some form or fashion, if by nothing else, then judicial notice will suffice.
“They are anticipated.”
But when combined they might not be. Then we have to get into “obviousness” and that whole can of worms.
“The real advantage in Alice is that scientifically ignorant people in robes can chant the incantation of “abstract” without being bothered to figure out if the method underlying the claim has ever actually been practiced before.”
Your sentence is technically correct, though not in the fashion you meant it to be construed. The fact is they need not determine the oldness of the “method underlying the claim” at all in most instances.
I totally agree. A 101 analysis is now performed by a judge with no evidence as to what is or is not known. Thus, a judge can simply say “this is well known” and therefore the claim is invalid.
If it “looks” old and abstract, it’s invalid under 101.
Bluto, if the eligible subject matter is not clearly old, the analysis has to be under 102/103/112.
Again, this is completely circular. Have any of the decisions we’ve seen proven that the supposed ineligible subject matter was actually and clearly old? Not the basic gist of the claim, but the actual method steps. Not with handwaving but with actual objective evidence.
Even if we assume that this is the new test for eligibility, why are we willing to accept a standard of proof for evidence for 101 that is significantly lower than the standard of proof for evidence for 102? Why must the USPTO prove to an applicant that prior exists which anticipates? Should we now just allow examiners to write rejections that say:
“Claim 1 has been rejected under 35 USC 102(a) as anticipated because I remember programming a computer to do something similar back in college.”
BlutoBlutarsky, Have any of the decisions we’ve seen proven that the supposed ineligible subject matter was actually and clearly old?
Huh?
Why you talking about the ineligible subject matter at all? Is not a question of whether the ineligible subject matter is new or not new because it is given no weight at all the patentability consideration.
What is critical is that the eligible subject matter be old and conventional.
“IT is not a question of whether the ineligible subject matter is new or not new because it is given no weight at all the patentability consideration.”
^ Fixed.
Also, Ned you can tell him this until you are blue in the face. A USSC justice expressed himself poorly in one decision and Bluto will never get over that, his reading skills simply do not appear high enough bro. And that’s no crack on his skills. It takes stupendous reading ability to correctly understand what the justice was saying in Bilski. Even so, when I’ve tried to assist him he’s not showing much progress.
“It’s the same analysis regardless of what statute you use.”
This is NEVER true.
Ever.
You are exhibiting a massive “ends justify the means” moment.
hierarchyofpb: no one skilled in the art cares what letters are used, they care about how the algorithm has been improved.
Improved for what purpose exactly? Any purpose? It’s math. By its nature, it could be used in an infinite variety of contexts. There’s no such thing as math that is “too sturdy to fit into a hole” or “too loose to support that beam”. Math applies wherever you seek to apply it. Whether you get a result that’s useful to you depends on what result you are looking for.
How much improvement is necessary to qualify as “an improvement” to an algorithm? Will any improvement suffice? Is a 0.1% increase in computing speed in any specific arbitrary context (e.g., “on a MacBook Pro running the Ocelot system”) that the applicant chooses sufficient for a patent on a computer applying the algorithm in contexts other than the specific arbitrary context chosen by the applicant? Why or why not?
Your comment that “nobody skilled in the art cares what letters are used” gets us right back to my initial point about the lack of a standard lexicon. How do Examiners and other evaluators of validity identify algorithms that have the same “structure” but use different letters? Is there a database at the USPTO equipped to perform that analysis? Presumably the use of “different letters” isn’t enough to confer patentability upon an old algorithm — but you may have a different idea. If so, please share.
Edwin Starr “101 IE, could you do the integration analysis here for us, using the facts of this case? I.e., show us what the Judge should have said in the opinion.”
Hello Edwin:
Thank you for your question. If Judge Wu wanted to follow the law he could have concluded by saying something like…..This court, in not wanting to take an activist approach in invalidating software, has decided to follow the law, particularly as it has been interpreted by the Supreme Court. We have before us today a fully and legally integrated claim ( See Prometheus) that involves complex information processing. On reading the specification there is no stand alone abstract concept like Bilksi’s hedging. ( See Bilski and Alice ) Likewise when reading the claims themselves one can find no concept being claimed or claims followed by applying the concept on a computer, which would be extra solution activity and/or field of use limitations. ( See Flook ) That the invention involves software does not negate the invention at 101, the Court has never held that software is per se, an exception. (See Benson, “We do not so hold” regarding the ineligibility of software.) This court must follow Supreme Court precedent and the standard, for interpretation of the 101 statute and consider the claims as a fully Integrated whole. ( See, Prometheus, Diehr) (See Bilski, ” describing the courts precedents on 101 standing for no more than the holding in Diehr”). Finally the court recognizes the invention can’t be performed entirely within the mind, or by pencil and paper, thus the claims are a legally integrated process and are so held as statutory subject matter, fully eligible for a patent. Whether the claims pass the tests of 112, 102, and 103, this court does not give an opinion.
Likewise when reading the claims themselves one can find no concept being claimed or claims followed by applying the concept on a computer, which would be extra solution activity and/or field of use limitations.
That would be inaccurate in this instance. People have been matching sound to facial features in moving images for a long, long, long, long time. And people have doing that using “rules” and an information-processing tool known as “the brain.” They also have employed at various times pencils and paper, pens and paper, and calculators. And computers. All before these “innovators” came up with additional concept of (wait for it) using “rules” to assist to with the process.
If the single remaining limitation is known in the art, the proper tool for dealing with the claim is:
…wait for it…
…wait for it…
35 USC 102.
MM:”People have been matching sound to facial features in moving images for a long, long, long, long time…”
I went back and reread the claims again, and the claim is clearly to a process; a series of steps that produce an outcome that can be “objectively” evaluated. The claim is definitely not to the general idea of as you say….”People matching sound to facial features in moving images.” Now if your concern is that the specification does not fully and precisely disclose how this is done then you have a 112 issue and not a 112 problem. Likewise if as you claim, the prior art already discloses the specific computerized process the inventor claims to have invented then you have a 102 problem. But there can be know doubt the claims are directed to an “Integrated technological process” and therefore fully statutory subject matter. Even Judge WU admits the claims are a technological process, he just conveniently leaves out the “integrated” part. ( Just like you “MM” are famous for doing). Presumably because dealing with such an “Integrated” analysis would change the legal outcome of his opinion and prevent him from tanking another software patent. Any other questions?
1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence;
obtaining a plurality of sub-sequences of timed phonemes corresponding to a desired audio sequence for said three-dimensional characters;
generating an output morph weight set stream by applying said first set of rules to each sub-sequence of said plurality of sub-sequences of timed phonemes; and
applying said output morph weight set stream to an input sequence of animated characters to generate an output sequence of animated characters with lip and facial expression synchronized to said audio sequence.
Just like you “MM” are famous for doing
Shall we talk about what you’re “famous for doing”, Mr. Expert?
You seem to want to have that discussion.
Let everyone know if you really want to have that discussion.
Replying to this from Malcom:
“‘English is a form of math, so anything that can be described in English (just as computer science can be described in the language of math) is abstract and not patentable.’
I don’t believe these arguments ad absurdum are persuasive to anybody when it comes to defending computer-implemented information processing patents.
The arguments against software patents may seem existential to you if you rely on such patents for your existence. But they’re not existential to the 99.9999% of society who doesn’t rely on them and who sees them as a blight on the patent system.”
Several points. First, since you are able spot a formal argument, I find it interesting that you don’t resort to logic to actually attempt to disprove the argument. Instead you take the easy out and call it “[un]persuasive”.
Second, my personal ability to support myself is irrelevant to the discussion. Why do you bring it up? How does it bear on the _truth_ value of what is being argued (my own view is that it shows a curious preoccupation with the income of others). But since you want to make this personal, fine. I think the Alice trend makes skilled patent attorneys who actually understand their field more valuable than ever. If I were hiring an attorney, I’d be danged sure they were an expert in their field. I wouldn’t hire a chemist to do a computer scientist’s job.
Third, the point about English and Mathematics is that calling something “math” adds nothing the debate. Physical Chemistry is notorious for being math intense … thermodynamics, for instance, can’t be discussed without involving “math”. To call computer science “math” does nothing. We can describe any field of endeavor as “a thing that can be studied and discussed using an agreed-upon set of abstractions like symbols, rules, and conventions”. Human languages are such a set. So are computer programming languages, pseudo-code shorthand conventions, etc.
How about this patent: 8,671,381. Invalid under 101?
Should be invalid? No.
In spirit of the law is invalid? No.
Could be invalidated by a district court judge with a minimal of effort? Yes.
As more district court cases come out, I’m feeling more justification for the approach of pinning down, in claims, a solid technical environment for software-implemented inventions. Too many patent attorneys have been trained for the “maximum breadth” mentality. Consider all the technical things that an infringer would have to implement that alone are not new, and include in claims as needed. Define the context of the “problem” being solved. Technical details that don’t _practically_ narrow the set of possible infringers should be included liberally. But this requires someone knowledgeable in the art.
Consider all the technical things that an infringer would have to implement that alone are not new, and include in claims as needed.
You are completely missing the critical point of these recent cases if you think that adding old steps that “infringers have to implement” are going to help you.
Technical details that don’t _practically_ narrow the set of possible infringers should be included liberally.
Why? To confuse people? To impress them with your knowledge of “technical details”?
How about you just describe the “technical” improvement to the old machine in objective structural terms like those “arrogant” practitioners in other fields do?
MM: How about you just describe the “technical” improvement to the old machine in objective structural terms like those “arrogant” practitioners in other fields do?
To repeat myself from a post I just made: suppose I invent a novel image-processing algorithm that improves the playback fidelity of an existing Blu-Ray player when playing existing Blu-Ray discs on an existing HD television. I implement that algorithm as a firmware update to a certain brand of Blu-Ray player (because that brand uses firmware-upgradable system boards).
What, if anything, is patent-eligible about that invention? Is it nothing, or is there something patent-eligible about that, if claimed properly? There are zero hardware differences between the old Blu-Ray player and the improved one; all the changes are in the firmware stored in the machine. Do you think that’s patent-eligible under 101?
What, if anything, is patent-eligible about that invention?
Nothing.
I realize that might seem like a big problem to you if you are personally invested in the existence of such patent claims
It doesn’t seem like a big problem to a lot of other people however. The problems presented by granting claims on “new math” seem far greater.
Copyright your specific software and sell it. Set up a subscription program and sell it. And then when someone else comes up a better algorithm, watch your profits shrivel up and disappear. Or, because you are really smart, improve it yourself a couple months later and sell the new update.
MM, may I respectfully disagree. The Supreme Court has time and again been careful to note that the application of the nonstatutory to the statutory to improve the statutory is patentable subject matter.
Diehr is the best example. The process there was improved, and the math was applied even though the court openly declared math to be nonstatutory.
Blu Ray players don’t change any “articles”, Ned.
“On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101. “
If I had instead installed a new ROM chip inside the Blu-Ray player to make it work better, instead of using firmware, would that be patent-eligible?
Not to me. It is still software.
Now you should be able to patent the ROM as a new type of ROM if it uses something new to instead of the fuses/direct wiring currently used.
But otherwise you are just patenting the software written into the ROM.
Did you read the quote from Diehr that Ned cited above?
Do you actually believe a Blu-Ray player that has clearer output is not “an improvement to a machine” as those words are used in 35 USC 101?
What difference is there between a chip ROM and a CD-ROM or a DVD-ROM or a Blu Ray ROM?
Hooray for more field of use limitations!