Federal Circuit: Novelty in Implementation of an Abstract Idea Insufficient to Overcome Alice

by Dennis Crouch

The key language from the Federal Circuit’s most recent pronouncement in  Ultramercial v. Hulu (Fed. Cir. 2014) is as follows:

We do not agree with Ultramercial that the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete. In any event, any novelty in implementation of the [abstract] idea is a factor to be considered only in the second step of the Alice analysis. . . . [And, the Internet] is a ubiquitous information-transmitting medium, not a novel machine. And adding a computer to otherwise conventional steps does not make an invention patent-eligible. Any transformation from the use of computers or the transfer of content between computers is merely what computers do and does not change the analysis.

= = = = =

Following Alice Corp., the Federal Circuit has now flipped its prior two rulings in the Ultramercial case — finding this time that the computerized business method patent lacks patent eligibility.  Both prior Federal Circuit decisions in favor of patent eligibility had been vacated by the Supreme Court without opinion except with orders to consider Mayo v. Prometheus and Alice Corp v CLS Bank respectively.

This decision offers a strong signal from the Federal Circuit that the court is now understanding what the Supreme Court meant in its recent quartet of Bilski, Mayo, Myriad, and Alice and that the court will support the 101 eligibility decisions being laid-down by the lower courts and the Patent Office.

The patent at issue here covers a method of distributing copyrighted products over the internet – instead of paying for the product, the consumer watches a paid-advertisement. U.S. Patent No. 7,346,545.  The claims include some further limitations, such as using an “activity log” to select the advert to be shown based upon criteria (such as whether the advertiser has paid for another transaction). Claim 1 is pasted below.

It turns out that the advertising model works for the internet just as it previously worked for radio and television. And, as a result, the patent would be quite valuable, but only if it were valid.  It is not valid. The decision here does not eliminate all software patents, but it again calls-into question patents where the focus of the invention is either the content of information being transferred/transformed or a business transaction.  It is telling that the court added the following the caveat to its decision here: “[W}e do not purport to state that all claims in all software-based patents will necessarily be directed to an abstract idea. Future cases may turn out differently.”

The district court in this case found that the claims embodied the abstract idea of using “advertisement as an exchange or currency.” On appeal, the Federal Circuit rejected that restatement for a more detailed analysis:

The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application. Although certain additional limitations, such as consulting an activity log, add a degree of particularity, the concept embodied by the majority of the limitations describes only the abstract idea of showing an advertisement before delivering free content.

With that abstract idea in hand, the court moved to the second step of the Alice Corp test — whether the claim adds significantly more in its implementation such that the abstract idea is transformed into a patent eligible invention.

We conclude that the limitations of the ’545 claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea
with routine, conventional activity. None of these eleven individual steps, viewed “both individually and ‘as an ordered combination,’” transform the nature of the claim into patent-eligible subject matter. The majority of those steps comprise the abstract concept of offering media content in exchange for viewing an advertisement. Adding routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet does not transform an otherwise abstract idea into patent-eligible subject matter. Instead, the claimed sequence of steps comprises only “conventional steps, specified at a high level of generality,” which is insufficient to supply an “inventive concept.”  Indeed, the steps of consulting and updating an activity log represent insignificant “data-gathering steps,” and thus add nothing of practical significance to the underlying abstract idea. Further, that the system is active, rather than passive, and restricts public access also represents only insignificant “[pre]-solution activity,” which is also not sufficient to transform an otherwise patent-ineligible abstract idea into patent-eligible subject matter.

The claims’ invocation of the Internet also adds no inventive concept. As we have held, the use of the Internet is not sufficient to save otherwise abstract claims from ineligibility under § 101. Narrowing the abstract idea of using advertising as a currency to the Internet is an “attempt[] to limit the use” of the abstract idea “to a particular technological environment,” which is insufficient to save a claim. Given the prevalence of the Internet, implementation of an abstract idea on the Internet in this case is not sufficient to provide any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.”  In sum, each of those eleven steps merely instructs the practitioner to implement the abstract idea with “routine, conventional activit[ies],” which is insufficient to transform the patent-ineligible abstract idea into patenteligible subject matter.

That some of the eleven steps were not previously employed in this art is not enough—standing alone—to confer patent eligibility upon the claims at issue. 

While the Supreme Court has held that the machine-or-transformation test is not the sole test governing § 101 analyses, that test can provide a “useful clue” in the second step of the Alice framework. A claimed process can be patent-eligible under § 101 if: “(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.”  The claims of the ’545 patent, however, are not tied to any particular novel machine or apparatus, only a general purpose computer. As we have previously held, the Internet is not sufficient to save the patent under the machine prong of the machine-or-transformation test. It is a ubiquitous information-transmitting medium, not a novel machine. And adding a computer to otherwise conventional steps does not make an invention patent-eligible. Any transformation from the use of computers or the transfer of content between computers is merely what computers do and does not change the analysis. Although the preamble of claim 1 also requires a facilitator, the specification makes clear that the facilitator can be a person and not a machine. Thus, nowhere does the ’545 patent tie the claims to a novel machine. The claims of the ’545 patent also fail to satisfy the transformation prong of the machine-or-transformation test. The method as claimed refers to a transaction involving the grant of permission and viewing of an advertisement by the consumer, the grant of access by the content provider, and the exchange of money between the sponsor and the content provider. These manipulations of “public or private legal obligations or relationships, business  risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.”  We therefore hold that the claims of the ’545 patent do not transform any article to a different state or thing. While this test is not conclusive, it is a further reason why claim 1 of the ’545 patent does not contain anything more than conventional steps relating to using advertising as a currency.

The majority panel here was written by Judge Lourie and joined by Judge O’Malley.  Judge Mayer (who replaced Judge Rader on the panel) wrote in concurrence to emphasize the following three points:

First, whether claims meet the demands of 35 U.S.C. § 101 is a threshold question, one that must be addressed at the outset of litigation. Second, no presumption of eligibility attends the section 101 inquiry. Third, Alice Corporation v. CLS Bank International, for all intents and purposes, set out a technological arts test for patent eligibility.

Although Judge Mayer’s conclusions here veer somewhat from the patent eligibility doctrine, he provides a roadmap for district courts to use the doctrine in deciding Section 101 cases going forward.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

533 thoughts on “Federal Circuit: Novelty in Implementation of an Abstract Idea Insufficient to Overcome Alice

    1. Nonsense is more like it. What this author is basically arguing is that it’s okay to break the law and discriminate against one class of patents as long as you leave mines alone.
      He wants to throw business methods under the bus as long as long software is allowed to ride in the front of the bus.

      But the constitution applies equally to both. Business methods are within the useful arts just as much computer science. And if this author thinks the anti patent activists are going to be appeased and stop at taking away the rights of business method inventors he is naive at best. I say we must unite to protect all our rights. As Martin Luther King Jr. said, injustice anywhere is injustice everywhere!

  1. I have a question for a smart and knowledgeable US patent attorney.

    When is it legal for a judge to change an Inventors invention?

    It seems that everyone agrees that Judge Lourie changed Ultramercials invention at least at the conceptual stage. This was done presumably to make it possible to make the invention fit within the Lourie analytical framework to declare the invention as abstract and therefore non statutory subject matter.

    I don’t know what the law says about such an action but it certainly does not seem fair to the Inventor. Everyone knows that the concept of an Invention is first conceived and invented by the Actual Inventor. And a judge, even if a SME, in the field, should NOT be allowed to change that! Plus, in the instant case, the district court and the inventor had already agreed on the concept of the invention, and the claims were rejected for being directed to that abstract concept. So why was it even necessary for Judge Lourie to change that concept in order to uphold the lower courts ruling?

    You often hear about the so called baneful effects of the “draftmans” art but this judiciary sleight of hand is for more insidious in my opinion.

    After all, what would prevent a judge like Mayer for example, that has an ideological bent against software and business methods, to go aboutchanging everyone of those patents so that the claims can be declare as directed to a concept and held as an abstract idea.

    Such a power by the Federal court has never been sanctioned by the Supreme Court, and completely overrides the Constitutional power granted to Congress to write the patent laws.

    1. It is always legal to perform the two part analysis required by Mayo. This will usually requiring ignoring some of the fluff an attorney added to their abstract idea to get allowance.

      1. First of all, the two step analysis in Mayo does not involve ignoring elements in a aim. Besides, Lourie did not perform the two part analysis required by Mayo. In step two he is required to determine if the concept ( or other Court created exception) was “Integrated” to the point the claims did not preempt the concept.

        Remember, according to the Supreme Court of The United States in Mayo, this ( Integration ) is why Diehrs claims were patent eligible subject matter. And nothing in Diehr, Mayo, or Alice says it’s legal for a Judge to change an Inventors invention. Remember we are not talking about ignoring parts or elements, which by itself is highly questionable, we are talking about completely changing an Inventors own concept and replacing it with a new concept of ones own choosing. So Go, can you please tell me, where in the law does it say a judge has the authority to do that?

        Thank You

        1. “In step two he is required to determine if the concept ( or other Court created exception) was “Integrated” to the point the claims did not preempt the concept.”

          He did (if only implicitly) and they were not.

          1. No, 6, he did not. Remember, the initial abstract idea agreed on by the district court and Ultramercial was, “using advertising as currency.” Lourie then superimposed a more detailed abstract idea of, “showing an advertisement before delivering free content.”

            Now, my question to you 6 , becomes, Where did Lourie prove that Ultramercials claims “preempted” either of those alleged abstract concepts?

            If you can’t provide an answer I expect you to admit you are wrong and to withdraw any 101 rejections you may have using the same erroneous analysis.

            Thank You

  2. Can someone point to me where Dennis discusses the Court’s finding of “novelty in implementation” which the Court concluded was insufficient? I can’t tell if they found novelty (but found obviousness) or if they did not find novelty to begin with.

    I assume “novelty in implementation” is part of the “ratio decidendi”… since it is touted in Dennis’ “headline”.

    All I can find is in the quote from the court:

    “any novelty in implementation of the [abstract] idea is a factor to be considered only in the second step of the Alice analysis. . . . [And, the Internet] is a ubiquitous information-transmitting medium, not a novel machine.”

    Not a novel machine… To me this is not 1. a finding of “novelty of implementation” that 2. the court went on to say was insufficient to “overcome Alice”…

    I can’t find what the headline is saying. Help please?

    Perhaps my logic or precision of legal analysis is lacking.

    1. Look at the fist sentence of the first quote in the post.

      “We do not agree with Ultramercial that the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete.”

      1. The Court seems to pronounce that novelty in implementation of an abstract idea is insufficient to turn the abstract idea into something concrete, i.e. something non-abstract. This in and of itself makes no statement about the implementation itself.

        What I do not see is the court saying no novel implementation of an abstract idea could involve something which passes the second step of the Alice test. i.e. if the implementation is non-ubiquitous, non-routine, qualifies as “something more”, unobvious etc.

        I see that this case is an *example* of a particular novel implementation of an abstract idea which was insufficient to overcome Alice, not a pronouncement that all novel implementations of abstract ideas are insufficient to overcome Alice, which I think is implied by the headline.

  3. Anyone see Greg A’s email on Ultramercial III today?

    Stunningly scathing on our out of control judiciary.

    And yes, attorneys do have a duty to challenge judicial runaways as we owe a duty to the constitution that cannot be quieted when it is the judicial branch that is out of control. Black robes do NOT make unthinking obedience demanded as a matter of course. Such would place one branch above the law, above the constitution itself, would celebrate a false infallibility (and just because such would align with a desired ends, we owe a duty NOT to ignore the means).

    1. Expect worse anon. These Google judges are barbarians and Lourie is a very narrow thinker that who h@tes information processing patents and doesn’t seem to understand them. He thinks in terms of the smelly arts. Never heard a judge on the fed. cir. be so unprofessional as Lourie is in oral arguments. The law means nothing to this bird.

  4. On the subject of computer-implemented methods, I want to know what readers think, going forward from now, about relative patentability standards, in the USA and in the ROW.

    I suppose that nobody was much surprised that, until now, the USA would issue what ROW would not. The USA, world-leading in software and selling, felt its national interest lay in an expansive notion of patentability.

    But now it’s different. Various US-based commentators are gnashing and wailing (and some are rejoicing) supposing that the USA has suddenly got more restrictive than the ROW. Perhaps what is perceived as the USA’s aggregate national interest has changed?

    Are these commentators deluding themselves? Or is it a real possibility that the USPTO will from now on be refusing what the EPO will allow? What do you say?

      1. Technical character? New? Enabled? Solves a technical problem in a way that was not obvious? So, patentable? In Europe?

        1. Beauregard: Claims to a carrier bearing software. That’s the article of commerce that is traded. Don’t you need a claim to it?

        2. Nuitgen: A signal. I’m not a telephony geek but I suppose they are the ones who mostly seek Signal Claims.

        1. Nuitjen is indeed the law here, but anyone with even a high school education in physics should be able to see what a groundless decision that was.

          To rest on that decision, one must deny the reality of physics, and ignore what one sees when one looks up into a clear night sky (re: the idea of “transience”).

    1. “The USA, world-leading in software and selling, felt its national interest lay in an expansive notion of patentability.”

      I don’t know which people in the USA are included here, but retailers, Wall Street, and the software industry never wanted the patent system to colonize and exploit their industries.

      Retailers are a key force pushing for patent reform and are united fiercely to reduce the scope and impact of the system on their business. Wall Street got the CBM program, their champion Schumer as a leader for reform, and de facto exclusion of various financial methods as presumed prior art. The people who do the actual selling fear, despise, and resist the expansion of patents into their business and certainly don’t see it as in the national interest.

      Software writers are even more opposed to patents. Some of the software businesses have been co-opted by the patent bar, but most are fiercely opposed to expansion of patents into software. The overwhelming preference of the industry is that software should not be subject to restrictions and monopoly by the patent system at all.

      What the USA does have is the world’s most ambitious and creative lawyers. The patent bar and its captive courts and PTO have been the driving institutions in the world’s most cancerous patent system.

      And that clever bar hasn’t gone away. I expect that the patent abuse business will find a way to make progress against innovation again and the USA will continue to be the easiest place to get bad patents. It just won’t be quite as easy as before.

      1. I disagree that the software industry dpeanut want patents.

        Most programmers don’t want software patents.

        Most CEOs of software companies want patents.

        Where is the difference from?

  5. Lourie says Ultramercials claim, “only describes the abstract idea of showing an advertisement before delivering free content.”

    If that is true why didn’t the court invalidate the claims under 102 as anticipated by every television network, show, or movie ever broadcast or shown?

    Just as important, why didn’t the examiner reject for just such a reason?

    1. In addition, if Lourie is correct and the claim is directed to only the abstract idea of showing an advertisement before delivering free content, what is the stated problem and solution?
      After all, Judge Lourie ruled that certain non abstract elements in the claim were mere extra solution activity. In order for that to be factual, there would have to be an Initial problem and solution to begin with. Yet I see no such identification in Louries analysis. Can someone please point this out to me?
      Thank you.

      1. And perhaps most pertinent, if the purpose of invalidating the claim is to keep the abstract idea of “showing an advertisement before delivering free content” free for the public to use, why ignore/filter/dissect those elements of the claim that narrow it, and in effect accomplish just such a result?

        Hmmm…now I am beginning to see why this panel has ignored the Supreme Court’s “Integration Analysis”, it would make it too difficult to accomplish their agenda.

        1. To clarify, I don’t understand why Lourie ignored those elements that narrowed the claim and in effect prevented it from covering an abstract idea.
          Anyone have an explanation?

            1. Well, the more narrow abstract idea, ( created by Lourie ) still required Lourie to dissect/ignore/filter the non abstract elements so that the claim could be directed to the abstract idea. So my question remains, if the non abstract elements prevented the claims from covering/preempting the abstract idea, why ignore those elements?

    2. Yep. Why bother reading the claim – when the analysis is ‘only’ or ‘just’ or ‘gist’. Totally ipse dixit.

    3. More importantly, why did the PTO issue this patent? Why does it issue so many poorly examined patents?

      And could we please follow Mayer and abolish the presumption of validity now that we know there are so very many invalid patents issued?

      1. “More importantly, why did the PTO issue this patent?”

        Good question Owen. Maybe because an ethical and law abiding examiner followed the Supreme Court’s precedent and considered the claims as an “Integrated” whole and found them eligible subject matter. Followed by searching the prior art and finding no reference that performed the method steps in the same exact order and time as Ultramercial , thus leading to a conclusion of the invention being novel and non obvious. In other words, the examiner followed the law.

      2. please follow Mayer

        For at least the reason that our constitution provides authority solely to Congress to write patent law.

        That’s a rather important point.

      3. “Poorly examined” is not such. The PTO decided in the mid ’90s to remove a reference to Hotel Security from the MPEP. That lead the way. Shortly thereafter, the Fed. Cir. gave us State Street Bank.

        And the rest is history.

        One might as who decided to what in the PTO in those days, because they are the people responsible as much as it was Newman in Schrader and Rich in State Street Bank.

        1. Even under State Street, why would the PTO issue Ultramercial’s patent? There’s an easy case under §103 and probably even §102 if you look hard to block a patent as trashy as that. That’s what I meant by poor examination.

          We hardly ever see the abstract patents that could pass §103 litigated. Probably that’s a combination of being too specific to cheat whole industries and the judicial activist de facto abolition of §103 by the CAFC.

    4. He also re-wrote the claim. Little Lourie bird is a bad actor. I wonder how people like him respond to the former CEO of HP’s article saying–gee these patents actually help a lot.

      Or how someone like him responds to going to the EPO standard of technological arts when Europe is terrible in software. We are number one by far with 20 years of software patents.

      Crazy making. I think it all comes down to not having people in the judiciary that have experience with patents. Lourie has a smelly arts background. I don’t think there is one judge on the fed. cir. that has experience with software. Chen maybe a tiny bit. Obama loads it up with people that don’t like science.

              1. The US capability in software is shrinking.

                Much of it outsourced overseas – thus even less local understanding.

                According to reports, only about 1 million people in the US work in in the software industry.

                India has twice that amount.

                China has about 5 million.

                So yes, the US is at a rather severe disadvantage now.

                1. You know your nonsense is getting old. You are just a rubbish boy. I am not going to go get the statistics to make you look ridiculous, but your assertion that Europe and India have better software industries than the US is nonsense.

                  And boy, how about the my chair is math. You can’t answer that can you because your silly little assertion that computers are math is exactly the same.

                  Really, Dennis you can’t have people that just type in two sentences of nonsense in response to everyone of my posts. It is harassment. This jesse boy never says anything itself. It just gets on here and floods the board with its crxp.

                  Now boy, go get the statistics and figure out that you are wrong and try to answer my chair is math assertion. Scxm.

                2. ” your assertion that Europe and India have better software industries than the US is nonsense.”

                  I didn’t see him make that assertion.

                  I think he was talking in total numbers of people employed in various professions. You do know india has around 1 billy people over there right? China being at 1.3. US has like .3. If his numbers are correct that doesn’t necessarily make their industries “better”.

                3. “Really, Dennis you can’t have people that just type in two sentences of nonsense in response to everyone of my posts. It is harassment. ”

                  U funny bro. Just because you hit the ceiling doesn’t make a post harassing.

                4. Oh boy troll 1 comes to the defense of troll 2.

                  >Actually, Europe is better than the US currently.
                  >India better yet.

                  In context of my post, since little jesse boy feels compelled to respond to each and every one of my posts, it means exactly what I said it means 6.

                5. If only 1 in 10,000 is exceptional…

                  then having only 100 exceptional get dwarfed by the 500.

                  The advantage size has is that more people gain the experience.

                  For the last 10-15 years the US has been exporting knowledge faster than it can create it.

                  China already makes nearly all of the US computer technology, and surpassed it several times in capability.

                  It won’t be long before the US is held hostage to that fact.

          1. Really?

            Then why all the fuss over H1Bs?

            And outsourcing development overseas?

            You do realize that over half of the patents being granted are of foreign origin as well. The number I recall was 52%…

            So not invented here is becoming the norm – even if they can’t be patented in their home country.

                1. Yet another example of why you would be unable to survive in the real world. You were born for government work.

                2. “Yet another example of why you would be unable to survive in the real world. You were born for government work.”

                  Yep failure to blame big corp is “an example of why I would be unable to ‘survive’ in the ‘real world'”. Because paranoia about big corp is a pre-requisite to survival.

                1. >bludgeon the small companies with their “patents”.

                  funny how little minds like yours haven’t figured out who the real en#my is yet. The “reforms” to the patent system all go for the big corp. What’s happening is you are seeing the patent system be hijacked.

                  It did need reform. But what we have is a dismantling and repurposing.

                2. No… the real enemy are those that want to strangle innovation.

                  A program is just an expression of math. It is those mental steps that a person has to take to solve a given problem.

                  Just an expression of abstract thought.

                  Something that can’t be owned that you want to own.

                3. jesse,

                  You are not thinking critically again.

                  No… the real enemy are those that want to strangle innovation.

                  Who stands to gain more from strangling innovation – the established Big Corp entity who can compete better on non-innovation factors or the start-up who needs protection from those same non-innovation established entity factors?

                  All that you are doing is repeating the mantra that you have been fed.

                4. jesse, you are still not thinking and still doing that monologuing thing.

                  Read my post at 8:23 am – not allowing patents benefits the established MORE than the start-up. Not having patents strangles innovation because the established have much better positions in the non-innovation factors.

                  You are avoiding the logical conclusion here.

                5. It does no good at all except prevent people from creating decent software.

                  You are avoiding the fact that those “entrenced” are only maintained due to their control.

                  And that does not help the startups – even though they might actually have a patent. They still get squashed.

                6. so you’d trade “might get squashed even with a patent” to “guaranteed to get squashed” and call that an upgrade in position for startups? You can try that, but I’m not sure you’ll have many investors bite. Good luck with that.

  6. Tend to agree. But . .

    Mayer: Because the PTO has for many years applied an insufficiently rigorous subject matter eligibility standard, no presumption of eligibility should attach when assessing whether claims meet the demands of 101.

    OK, just change “validity” to “eligibility” and you’re good to go b/c there is no statutorily presumed eligibility. Nice move.

    What this means is there is no presumption of validity for any patent — past, present, or future — since presumed validity subsumes presumed 101 “eligibility.” Mayer thusly re-writes Section 282 and abrogates the separation of powers doctrine all in one sentence.

    Patent holders, the value of your portfolio just took a beating. Defense lawyers, start your engines.

    But if the PTO (and courts, mostly the courts) stinking up the place since 1952 is sufficient reason to obviate the presumption of validity w/ respect to 101, then double-ditto for 112, and triple-ditto for 103. (102 has been comparatively stink-proof b/c it’s the only major section of the Patent Act anyone can actually understand. Parts of it, anyway.)

    1. Bingo.

      And yet, supposed attorneys here are cheering those means.

      …maybe we should just all [shrug] and move on…

      /sardonic bemusement

    2. It’s not logically possible to not agree with Mayer, assuming the facts. You cannot even introduce the fact that, for example, someone has been found civilly liable for something when its a criminal trial, because the standard applied by the first jury (preponderance) is different from the standard applied by the second (reasonable doubt). There’s no rational basis for assuming anything (be it validity or eligibility) if the standard has changed from the time it was last examined.

      All 282 requires is that the initial burden is on the defendant. It does not state what is necessary to overcome that burden, and the argument that the wrong standard was applied, together with reasoning as to why the correct standard would come to a different result, would be sufficient in this case as it would in any other case where the burden is similarly situated. You’re confusing a weak standard with there being no standard at all and trying to make a constitutional issue out of something that is routinely done in pretty much every area of law.

    3. Mayer’s reason for no presumption does seem quite ridiculous. It could equally apply to 102 and 103, at least in certain art units.

      I always though the reason for no presumption is because section 101 has been ruled an issue of law. Section 282 is an evidentiary presumption that is only applicable to factual issues. See footnote 10 in the recent Nautilus Supreme Court decision.

  7. Slotguy, do you think this claim passes the Alice test?

    31. A technique for estimating the most likely sequence of multi-dimensional signal points to have been sent via a channel from a transmitter of the kind that causes said multi-dimensional signal points to carry information about said sequence based on state transitions of a finite state device, said multi-dimensional signal points being drawn from a multi-dimensional constellation partitioned into multi-dimensional subsets corresponding to said state transitions, said multi-dimensional constellation being a concatenation of constituent constellations having fewer dimensions, each said constituent constellation being partitioned into constituent subsets, each said multi-dimensional subset consisting of multi-dimensional types, each said type being a concatenation of said constituent subsets, each said multi-dimensional signal point being a concatenation of a plurality of constituent signal points of fewer dimensions, said technique comprising
    determining the distances between each received constituent signal and the nearest constituent signal points in the corresponding said constituent subsets,
    determining the distance between each said received multi-dimensional signal and the nearest multi-dimensional signal point in each said multi-dimensional subset based on a combination of said distances with respect to constituent subsets corresponding to said multi-dimensional subset, and
    determining said most likely sequence based on the distances between each said received multi-dimensional signal and the nearest multi-dimensional signal point in each said multi-dimensional subset.

    link to google.com

    This is the original (I believe) pioneering Wei Patent. Without question a very important advance in telecommunications. If this can’t pass the Alice test – Houston we have a problem.

        1. Looks like a bunch of “determining” steps. A nice math problem.

          It’s ineligible junk, at least as far as the patent system is concerned.

          [shrugs]

          Now go ahead and quote something Lincoln said about patents. That’ll change everything because, you know, Lincoln.

          Or maybe you can tell us how that claim is exactly like an airplane. You know, something really deep and thoughtful.

        2. Quick, without spending more than a nanosecond, does this remind you of any other troll that claims to have a full time job, but somehow is here posting 24/7?

          “The more dangerous social-web-fueled gamification of trolling is the unofficial troll/hate leader-board. The attacks on you are often less about scoring points against you than that they’re trying to out-do one another. They’re trying to out-troll, out-hate, out-awful the other trolls. That’s their ultimate goal. He who does the worst wins.”

          link to wired.com

            1. “and putting his nose into his own CRP.”

              Which is of course a symptom of mental illness that he swears up and down he doesn’t have.

              But hey anon, on the other hand, you’ve been doing decently better of late, at least up until this last week.

                1. I just found out someone hacked my account using a “generic” computer and is posting under my fake – pretend lawyer – pseudonym

                  if you see any posts with my moniker that LOOK like mine but are instead uncharacteristically lucid, rational and insult free…. IGNORE THEM

                  let me know if I have any recourse against this blatant impersonation of an anonymous message board weenie !

    1. And just in case you missd it the first time:

      Without question a very important advance in telecommunications.

      “Very important advance” is not part of the test for subject matter eligibility. Never was. Never will be.

      1. If “very important advance” in a technological field is not eligible for a patent then the patent system is unsuitable for its Constitutional goal.

        To iwasthere, no, I don’t think that claim would survive the existing combination of statutory interpretation and judicial exceptions after the various court rulings of late. But I absolutely think such an invention *should* be patentable, I think that rewarding the disclosure of such inventions is the entire purpose of the patent system, and I think the interests of U.S. commerce are harmed rather than helped by any disincentive to make advances such as the one you cite. I would love to see guidance from the PTO on how to properly claim such technology, but I don’t think that’s forthcoming.

        Bear in mind that it is *far* easier today to keep the details of computing technologies secret than it would have been to keep, say, the details of large-scale machinery secret, precisely because you cannot see them working. If the cited networking invention is unpatentable as “abstract” or “mental steps” or otherwise as a matter of policy, commercial researchers working in such spaces will have no incentive to publicly disclose their inventions. That leads to walled gardens of technology, lack of compatible standards, etc.

        It is incredibly ironic that many people who benefit from the public disclosure of computing technologies — including so many users of this Internet forums — view them as nothing more than “junk,” unworthy of the same patent protection that they gladly give to kitchen gadgets or cat toys. There is something very wrong with the position that a new design for a potato peeler should be patent-eligible but a faster Wi-Fi algorithm shouldn’t be.

        1. If “very important advance” in a technological field is not eligible for a patent then the patent system is unsuitable for its Constitutional goal.” — Good point!

            1. Obviously, this a setup for the troll MM aka Jesse, as this is the famed Wei QAM encoding patent, and your response demonstrates you know nothing of which you speak. All communication EE’s (the POSTA here) would consider the Wei patent a breakthrough invention for modern communications. It is clearly heuristic (invented by a person and not found in nature), is enabled and has a practical application as claimed, and does something novel, non-obvious and as concrete as you are going to get in the field of telecommunications. What the heck, I even told you it was a famous patent. Dennis, I enjoy your blog, and often there are meaningful discussions – and sometimes extremely well informed. I know for a fact, that Capital Hill staffers stop in for a look. Please give us an ignore button, so we don’t need to see MM’s paid distractions.

          1. If “very important advance” in a technological field is not eligible for a patent then the patent system is unsuitable for its Constitutional goal.

            Or the claim wasn’t written very well. There are lots of invalid claims to patentable inventions out there.

            1. Scrivining – or how well you may have written the claims – is expressly not something that is to survive the “Gist/Abstract” sword.

              You should be aware of this.

            2. I’m not talking about the claim language, I’m talking about the invention itself. If there is a particular claim-drafting technique to cover such an invention that is allowable by the PTO (and that will be respected by the courts), that’s a question of the office providing drafting guidance. They haven’t done so.

              However, the sense I’m getting from recent court rulings, and sentiments from the anti-patent crowd here, is that such technological advances are ineligible regardless of the claim language used. If that’s the case, I maintain that the patent system is necessarily failing its stated Constitutional goal.

              The Constitution was written in 1787, including the provision that “The Congress shall have Power … To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” EM radiation and radio waves weren’t really well-understood until the mid to late 1800s (Maxwell / Hertz / Marconi). It defies logic that such discoveries, or inventions related to them, would fall outside the scope of that Constitutional provision.

              1. Exactly right – that’s why 101 is meant to be a wide open welcoming gate.

                You know, expansive language and all, with (yes, nominal) broad categories and a low bar for utility.

                But politics and ideologies abound…

      1. I don’t pretend to know bio – as if i opined in those matters such as you do in EE matters – I would sound just as ignorant and uninformed as you.

        1. Brosef, my degree is in EE. Even so, it doesn’t take a degree to read a claim and identify the purported “steps”. Look I’m not saying that certain types of determining aren’t important, they probably are. In fact they may even be an “advance”. But they’re still abstract no matter how you slice the cake.

          That’s not to say that the attorney could not have claimed a patentable/eligible invention for this “invention”.

            1. ” Wow, mine doesn’t feel nearly as prestigious now.”

              It’s ok brosef, you were incompetent the whole time, gaining self-knowledge like this is to be expected as you grow older.

          1. 6 writes: ” Look I’m not saying that certain types of determining aren’t important, they probably are. In fact they may even be an “advance”. But they’re still abstract no matter how you slice the cake.”

            Can you define “abstract” as you’re using it here? I don’t mean “what the Court said” because they haven’t defined “abstract” either. Can you provide a non-circular, objective definition for what “abstract” means in the above sentence?

            And do you believe all “determining” steps in a method claim are necessarily abstract?

            1. Sure can bro.

              Abstract-

              1. thought of apart from concrete realities, specific objects, or actual instances:
              an abstract idea.

              2. expressing a quality or characteristic apart from any specific object or instance, as justice, poverty, and speed.

              “And do you believe all “determining” steps in a method claim are necessarily abstract?”

              The answer to the gist of your question isn’t really a matter of “belief”. I “observe” that all determining steps in method claims that I’ve ever seen (and can recall off hand) were abstract. Whether they are necessarily so or not I will not pretend to be all-knowing enough to know. Though it is likely that such is the case.

              I will say this though, the reason that the vast bulk of “determining” steps are abstract is most likely because the term “determining” is merely a rhetorical vehicle by which abstractions are tacked into claims by attorneys generally speaking. They could put down the (perhaps eligible and non-abstract) steps that were performed in order to make the determination, but instead they rhetorically abstract those out via the phrase “determining”.

    2. The Wei patent is another example like the ones we identified for Dennis a month ago (q.v.) that make the absolutely strongest case for software and information processing patents. I don’t know what project Dennis wants those examples for, but this is a fine one.

      For all the usual reasons, it does not appear that progress was served by issuing a monopoly here, but we’ll never really know since assignees for the patents over modern digital coding spread spectrum radio all cooperated to cross-license without much trouble from trolls. The exact contracts are, of course, secret (corrupt).

      So there was no significant benefit or cost to the makers of radios within the cross licensing agreement and the public had competitive vendors. As is often the case where various multi-billion dollar companies compete, patents neither hinder nor promote the progress very much.

      In software many startups and small companies do make progress and build new things. Those are the companies for which software patents are a disaster, a constant danger, a veiled threat, and no benefit whatsoever. Giant companies don’t have to worry so much.

    3. Even if considered “abstract” in the first part of the Alice test (which didn’t doesn’t make any sense IMO, but hey so it goes), this claim has that “something more” (ie an advance in a technical field) that should make it eligible.

      Remember: Alice is a technical arts test and this claim is pretty hard to categorize as non-technical. So it’ll probably be eligible.

      (At least I hope it would be eligible. As other commenters have noted – if this invention can’t get patent protection, the system is broken.)

  8. We are now long past the point at which this blog should still be clogged with numerous irrelevant personal opinions mere expressing liking or disliking prior Supreme Court decisions or the AIA.
    The debate should move on to relevant questions, such as what honest and valid legal advice is a practitioner professionally obligated to give a client or a financial backer of a client that requests filing an application or enforcing a patent on a business method with no actual or novel software for its spec? Does not that requisite advice now include the risk of a PTO 1o1 rejection of such an application, a high patent enforcement risk of a prompt complaint dismissal and/or a CBM petition for a granted patent thereon, etc.?

    1. I would tend to agree with this, but Paul don’t forget that right now new amendments to the patent act are on the table. And don’t forget that Google bucks are continuing to stream in and so this isn’t over…..

      However, to that end there was a great article a few years back in Landslide that showed how to recast US applications into EPO applications where the emphasis is on how the software makes the machine run more efficiently –given that the software is going to have to run on the computers. The sad truth is we should draw first on the vast body of knowledge of how to convert US applications into EPO applications.

    2. Interestingly (to those who actually care about science and innovation) is the question that was posed back at the time of Benson: that is shouldn’t a program that runs more efficiently no matter the subject matter be eligible for patentability? So, even if the subject matter is Alice, should a way to run the Alice claims be eligible for patentability? It makes the hardware more efficient.

      But, then with the mob having already with lit torches and screaming witch, it is unlikely such intellectually subtle questions are beyond our reach particularly with the likes of Renya, Hughes, and Taranto being stacked into the court.

      1. nwpa, if better algorithm for doing something, such as encryption, is deserving of a patent does that mean a worse algorithm is also deserving?

        when considering 2 programmers who are each given the task of doing something original are they, in your experience, likely to independently create the same algorithm?

        if two programmers are given the same encryption algorithm, which has been derived in pure maths research by a different person are they likely to re-create the same algorithm (with no changes) when they translate that pure maths research into a computer program?

        in the latter case, who deserves the patent, the pure mathematician who develops the algorithm or the programmer who makes it work on a computer?

        1. bert,

          The questions you ask are a bit nonsensical, as actual reduction to practice is not required.

          Either deserve a patent – that’s your answer – but I don’t think that’s the answer that you are looking for.

          (the rest of your nonsense regarding ‘derived in pure maths’ is a non sequitur and mere dust kicking to the particular point here)

            1. jesse,

              Don’t you get tired of being so wrong?

              My last paragraph reveals no position towards software and programming – rather it is a comment bringing the point of the discussion back into focus.

              At least try just a little to use some minimal level of reading comprehension in your tr011ing efforts.

          1. anon, the answers you give are vague and incomplete. i suppose that’s better than just ignoring the question.

            i was asking a set of questions based on nwpa’s assertion that a better algorithm deserves a patent

            if actual reduction to practice is not required, then isn’t the inventor the mathematician since we are in a first to invent world (if the programmers are using her algorithm)?

            and my last question was asked because i am unsure of where the inventive contribution lies. i used my words carefully when asking about a pure mathematician to ensure there was no confusion with applied maths since according to you, and others applied maths is patent eligible.

            sometimes a question is just a question

          2. anon, my previous post that you didn’t answer was:

            a statement was made,

            and you do not understand when you are discussing mathS (note the “S”)

            I asked for an explanation for why you make note of the “S”.

            1. bert,

              I did give you am answer, as I asked you to consider both the answer that explained why the “1” question was a fall a cy, and the additional questions I asked of you.

              I hoped that you would have been able to connect the dots.

              (sigh) – appearantly I hoped for too much.

              Anyway, the “S” designation indicates the topic has switched from mathematics to philosophy.

              When you move from mere numbers, quantities, and space and wrap in ‘logic,’ semantics and ‘morphisms (which, by the way are not limited to shapes), and especially do so in the view of Ancient Greek traditions, you have gone beyond the realm of math as just numbers. As I mentioned, when you have entered this domain, the work of those such as Tegmark (whether or not you ascribe to his views) is the pertinent context of your discussion. Not being able (or willing) to recognize the terrain in which you ground your views is a critical flaw.

      2. intellectually subtle questions,

        Still waiting to see one.

        shouldn’t a program that runs more efficiently no matter the subject matter be eligible for patentability

        That’s an inane question, not an “intellectually subtle one.” The answer is certainly “As a per se matter, absolutely not.”

        Try harder please.

        Or maybe you can tell the story again about how Bilski and Mayo and Alice are just limited to their facts. That was a funny one.

        1. There is no limit to the sword of “Gist/Abstract.”

          Instead of “accepting this and moving forward,” perhaps we should stomp on the gas pedal and take that logic FULLY to its destructive conclusion….

          Maybe that point is the point that needs to be understood.

            1. And so would be the good ones. We had some problematic patents in the field and instead of addressing the problematic patents we just destroyed the entire field.

              1. That would be unfortunate.

                It is rather unlikely that will happen though.

                Most of the “good” patents don’t end up in court.

                The problem with the bad ones is that it degrades ALL patents, and threatens the “assumed validity” of even the good ones.

              2. It was the greedy trolls, the greedy patent bar, and the indifferent judiciary that brought on this needed reform.

                Hopefully before more small tech businesses are destroyed for nothing – or rather, quite a bit less than nothing…

      3. I think that is overlooking the fact that all or almost all of the patents now being shot down on 101 did not claim or disclose any actual, specific, much less novel, software, so that it too soon to tell.

      1. That’s right anon. We will never abdicate. We will not go quietly into the night. We fight for our constitutional rights. We will fight for our dreams. And God so help us, we shall live them!

        1. That’s right anon. We will never abdicate. We will not go quietly into the night. We fight for our constitutional rights. We will fight for our dreams. And God so help us, we shall live them!

          It’s just like Rosa Parks, if Rosa Parks was rich, self-important and lived to sue deep pocketed corporations with junk patents.

    3. The answer to all your questions regarding business methods is yes of course. A client needs to know they are in for a long and difficult fight if they wish to have their constitutional and civil rights. But there will be one that will come knocking at your door willing and ready to pay the price. We all know the type from US history, with names like Dred Scott, Fannie Lou Hammer, Rosa Parks, and John Lewis to name a few. And when that individual, most often a lowly entrepreneur comes knocking at your door, armed with nothing but their life long dreams, and the audacity to believe in the rights the law affords them, you better dang well be ready to fight for them all the way to the Supreme Court. Or at least refer them to someone who is!

      1. Add Dr. Tafas to that list.

        (maybe Paul thinks that his efforts were also a “waste of time,” and that he too should have “just moved on already.”)

      2. We all know the type from US history, with names like Dred Scott, Fannie Lou Hammer, Rosa Parks, and John Lewis to name a few.

        The complete lack of perspective of the More Patents Easier to Enforce All the Time sychophants has been recognized for many years already … but thanks for reminding everyone, Mr. “Expert” (who is wrong about everything).

        By all means start “publishing” your deep thoughts. Because that will make a huge difference. If nothing else, NWPA will have some new reading material for his bathroom.

        1. …as if your perspective and implicit insults is any way to look at the patent system….

          As for “who is wrong about everything,” you are doing that AAOTWMD thing again too…

            1. Watching…?

              While you run from engaging in any actual discussion on the merits of the legal means…

              Yeah, the “fun” of an intellectual coward is what you have.

              How nice.

        2. “thanks for reminding everyone, Mr. “Expert” (who is wrong about everything).”

          I was right about Prometheus V. Mayo. In that case the Court reconciled its controlling precedent in Diehr with it’s other 101 cases by characterizing the claims as, “Integrated”, that being the reason Diehr was and still is statutory subject matter. In fact I explained this to you in great detail and your only response was to laugh, and say that “integrated” was just a word. This was followed by you trying to pass off a mental steps test dissection proposition as being what Diehr and Mayo stood for. A few days later you were the first on this blog to post the link to the then Interim Guidelines from the PTO on how to interpret Mayo, while bragging you were right. However, much to your chagrin, when read, it turned out that the USPTO adapted the “Integration Analysis” I presented on this blog as the correct way to interpret and apply Mayo to 101,while completely ignoring your pet dissection theory. Thus proving I was right you a complete f00l. And that’s a fact.

          1. psssst, whisper “Myriad,” and watch him first say he doesn’t care, then launch into a 30,000 plus word meltdown of a confused and angry diatribe.

    4. The debate should move on to relevant questions

      Aw, c’mon, Paul.

      It’s so much for fun to simply recite those pleasing lies like “every patent creates a job” and meaningless jibber jabber like “Royal Nine has no clothes.”

      These people really important and serious, after all. Without them, we’d all be just like the Amish. We know that because they told us so.

        1. Malcolm – everyone of your comments are of the tr011ing variety.

          Just responding to your tro11ing, “anon.” After all, you and NPWA got that market cornered.

          That’s your speciality.

    5. “this blog should still be clogged with numerous irrelevant personal opinions mere expressing liking or disliking prior Supreme Court decisions or the AIA.”

      If AIA (2011) and Alice (2014) are old hat clogging comments, then when should we stop discussing O’Reilly v Morse (1853), the 1952 patent act, and the Constitution’s requirement that patents promote the progress instead of just monopolizing abstract concepts (1789)?

      1. If AIA (2011) and Alice (2014) are old hat clogging comments, then when should we stop discussing O’Reilly v Morse (1853), the 1952 patent act, and the Constitution’s requirement that patents promote the progress instead of just monopolizing abstract concepts (1789)

        We must always discuss these things because very serious people like “anon” and NWPA and 101 Blathering Expert will never stop bringing them up.

        They are the most civilized and serious people on earth because they keep telling us that. So we must listen to them and incorporate their awesome beliefs into our discussions or else we are “biased” which is the worse thing ever unless, of course, you are biased towards granting as many junky patents as possible in as short a time as possible. In that case, you’re just a patriot and someone who as True Understanding of technology.

        Go and read IP Puppydog if you don’t believe this. It’s all true.

    6. Paul: what honest and valid legal advice is a practitioner professionally obligated to give a client or a financial backer of a client that requests filing an application or enforcing a patent on a business method with no actual or novel software for its spec? Does not that requisite advice now include the risk of a PTO 1o1 rejection of such an application, a high patent enforcement risk of a prompt complaint dismissal and/or a CBM petition for a granted patent thereon, etc.?

      Because the mere fact that the patent is otherwise invalid doesn’t really matter to such people, does it? And it never did, did it?

      I’m sure many practitioners will be happy to the take the money, blow some sunshine up the client’s behind, and build some word salad around the ineligible innovation just as they did before.

      But it’s going to look increasingly like what it always was: stealing.

  9. ” Because the purportedpurported inventive concept in Ultramercial’s asserted claims is an entrepreneurial rather than a technological one, they fall outside section 101.”
    Wow! Mayer just overruled the Supreme Court of the United States in Bilski and declared business methods non statutory subject matter!!

    First, this panel completely ignores the Courts Integration Analysis and preemption inquiry, now this. Talk about a bunch of judicial scuff law bad boys. This group is the stuff!

    So is “entrepreneurial” going to be the new code word for business method like filtration is for dissection?

    And if so how could this ever be constitutional? Last time I checked a business degree required a bachelor’s of science. Not a bachelor’s of arts. So business is definitely within the useful arts and sciences and therefore constitutional patent subject matter. And wasn’t the first patent a method for making potash? I am certain that the inventors that were mixing it up were doing it to make money and not simply for the fun and enjoyment of playing with the first chemistry set. Not to mention he created a technological arts test requirement in direct opposition to Bilski and Congress!! That’s some nerve. In fact every invention that has ever been patented since the first has had an “entrepreneurial” concept. Can anyone show me one that wasn’t? And while you are at it show me how you can apply any business method without technology? I can tell you now that no one is going to be able to answer either question factually. Which only goes to prove Mayers new test is not a test at all ( since no business method could pass it) but just a ruse to make an end run around congress and the Supreme Court and in effect make business methods non statutory. I guess these guys have not heard, 3, the new 4, does not make 5!!

    1. 101 you are basically right, but the judicial branch has decided to legislate. What is amazing is that OMB said there wasn’t a troll problem (and they are without question the most creditable branch of the federal government.)

      But, we are seeing what money buys. Big corp said you must end anti-trust restrictions, and all have gone except the giant pillars like price fixing. We now live in a world that is dominated by corporations that have market power. The big corps (or some of them. I am sure that Google is still stinging from not getting the patent laws bifurcated) want an end to patents as we know them. Patents will stay around but in a morphed form that is good for big corp. It is the money.

      There are lots of little minds that don’t get the big picture and have their little axes to grind and believe in their ignorant hearts that information processing patents are bad. True enough. But, the dismal tide is the Google bucks. And, —sorry to say—but we are going to lose. The Google bucks are going to buy revision after revision of the patent laws until they make about as much sense as the regulations for anti-trust. In anti-trust we are at the point where one corporation is OK in a market as long as it is “regulated” (meaning they are entitled to a 40% return every year).

      1. There are lots of little minds that don’t get the big picture and have their little axes to grind and believe in their ignorant hearts that information processing patents are bad.,

        Too funny.

    2. “Last time I checked a business degree required a bachelor’s of science”

      – and –

      “So business is definitely within the useful arts and sciences and therefore constitutional patent subject matter”

      Globally, your statement is incorrect on its face. On a case by case basis, in the majority of cases (see link below), you are incorrect. In fact, I haven’t personally seen a B.S. in business… But I’m willing to assume a minority (even a substantial minority) of institutions offer one.

      However, as noted in the link below, the difference between a B.S. in business and a B.B.A. in business is in the general education requirements (read: more math and science courses for the B.S.).

      I hardly see how having to take courses outside of a business school in math and science somehow transforms business into the “useful arts and sciences” using your line of logic.

      There are other, better, arguments for business being within the “useful arts and sciences.” However, this is not one of them.

      link to en.wikipedia.org

      1. At one point in time, Malcolm tried to use the scientific method as a distinguishing point.

        But he had to turn tail and run away when I discussed Demming and the fact that modern business heavily uses the scientific method.

        1. Actually, the last time I was working in/for business, they used sociology with questionable statistics…

          And called the result “scientific”. Not that it really was – just using “scientific” as a magic word to make things seem like they actually were.

      2. My point being that a bachelor’s science in business, or even a bachelor’s of business administration, is not a bachelor’s of arts. A bachelor’s of arts degree comes under the liberal arts. Liberal arts are outside of the Constitutional useful arts from whi h the subject matter of patents come from. Therefore business is not a liberal art, its a useful art. These facts apply equally to computer science as well.

          1. But “entrepreneurs” do want patents. And since you tacitly concede that “business” is within the useful arts, what Mayer wrote about creating a subject matter exception for patents with an “Entrepreneurial” concept is unconstitutional at best.

                1. You are wrong Jesse, because I personally know entrepreneurs that are mathematicians and programmers that want their inventions protected by patents. Of course big corps like Google would rather copy and use those inventions for free rather than have to pay some pesky little upstart, one person mathematician or programmer company a royalty. It’s clear whose side you are on.

                2. You are wrong Anon,because I personally know entrepreneurs that are mathematicians and programmers that have been bludgeoned with threats of lawsuits over compression.

                  See, it works both ways.

                  Some experts in the field DON’T want patents on software. A few do.

                  Most that do seem to be working from the hardware view. Those that don’t, as most programmers do, are working from the mathematics.

  10. what was the mechanism for adding Mayer to the panel? Was he randomly chosen or selected by the Chief? if the latter, that smells pretty rotten. I can’t see where this is addressed in the Fed Circuit rules

    1. Good question.

      The original panel of Rader, Laurie, and O’Malley was heavily biased toward the most radical and senseless proponents of abusive software patents. It’s hardly a surprise that those three insisted twice, even against Supreme Court remand, that Ultramercial’s pure garbage patent survive.

      Adding Mayer, known for being a moderate, to that panel balances it somewhat. Since the CAFC is not stacked with moderates, it’s possible that CJ Prost was trying to moderate a radical panel with the addition. I don’t know whether the rules allow her to do that or suggest more random selection.

      Perhaps the better informed court watchers can tell us.

    2. The Chief Judge has discretion in choosing the replacement.

      I don’t know whether Chief Judge Prost set-up any particular operating procedure for the panels that were previously associated with Judge Rader.

      1. I think Mayer is the most anti-software judge on the Fed Circuit. If Prost really picked him intentionally, I feel it is improper. It should be a random determination since the panels are chosen randomly. If Prost chose Newman, then I think there would have been a chance the claims could have survived. I don’t think O’Malley wanted to be such a pariah on this panel.

        1. I think Mayer is the most anti-software judge on the Fed Circuit. If Prost really picked him intentionally, I feel it is improper.

          What are you going to do about it?

  11. Maybe Dennis was planning to post more on Judge Mayer’s concurrence. Lots of good stuff in there. After noting correctly that the proper use of 101 to tank the patent as early as possible will spare judicial resources from being wasted and reduce the ill effects of vexatious litigation, Mayer notes that:

    [M]ost importantly, turning to section 101 at the outset protects the public. See Cardinal Chem., 508 U.S. at 101 (emphasizing the public interest in preventing the “grant [of] monopoly privileges to the holders of invalid patents” (footnote omitted)). Subject matter eligibility challenges provide the most efficient and effective tool for clearing the patent thicket, weeding out those patents that stifle innovation and transgress the public domain. As a general matter, trial courts have
    broad discretion in controlling their dockets and in determining the order in which issues are to be adjudicated. But the public interest in eliminating defective patents is an “even more important countervailing concern[],” Cardinal Chem., 508 U.S. at 99, which counsels strongly in favor of resolving subject matter eligibility at the threshold of litigation. Indeed, it was this impulse which impelled the Supreme Court to insist that this court address invalidity claims, notwithstanding a finding of no infringement. Id. at 99–101. The need for early resolution of eligibility is even
    more compelling.

    Then there’s this:

    The rationale for the presumption of validity is that the United States Patent and Trademark Office (“PTO”), “in its expertise, has approved the claim.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 426 (2007). That rationale, however, is “much diminished” in situations in which the PTO has not properly considered an issue. Id. Because the PTO has for many years applied an insufficiently rigorous subject matter eligibility standard, no presumption of eligibility should attach when assessing whether claims meet the demands of 101.”

    It’s been a while but it’s worth saying again: heckuva job, Kappos! Nobody on the planet is more responsible for the hundreds of thousands of ineligible junk patents whose terms have not yet expired. But he’s a very serious person and all those design patents that he’s shilling for are rock solid and sooper valuable — you can trust Big Dave!

    As many commenters included myself have observed, Mayer then observes that so-called business methods are particularly susceptible to 101 problems. That is not to say, of course, that anything that can reasonably be categorized as a “business method” is ineligible — far from it. But he makes a very reasonable observation:

    A rule holding that claims are impermissibly abstract if they are directed to an
    entrepreneurial objective, such as methods for increasing revenue, minimizing economic risk, or structuring commercial transactions, rather than a technological one, would comport with the guidance provided in both Alice and Bilski.

    Mayer then proceeds to tear up another one of the endlessly regurgitated “arguments” for a toothless 101, i.e., the argument that the other sections of the patent statute are adequate.

    The simple fact … is that this court’s approach to sections 103 and 112 has proved woefully inadequate in preventing a deluge of very poor quality patentsand. See, e.g., Gerard N. Magliocca, Patenting the Curve Ball: Business Methods & Industry Norms, 2009 BYU L. Rev. 875, 900 (2009) (“[T]here is no evidence that relying on §§ 102, 103, or 112 will solve the problem [of poor quality business method and software patents]. This claim was made ten years ago. It is still being made now. At what point does this argument run out of credibility?”

    The answer to that question is, apparently, that for a tiny handful of folks the argument *never* runs out of “credibility”, much as the false assertion that courts aren’t allowed to “dissect” claims during the course of a validity or eligibility analysis continues to haunt the Internets and the PTO like some brainless zombie that refuses to die … even after it’s been buried under ten feet of concrete.

    Anticipating some of the criticism that will no doubt be voiced (and already has been by the usual suspects here), Mayer then correctly observes that:

    It is not that generic computers and the Internet are not “technology,” but instead that they have become indispensable staples of contemporary life. Because they are the basic tools of modern-day commercial and social interaction, their use should in general remain “free to all men and reserved exclusively to none,”

    My quibble with this is that what should in general “remain free to all” is not just technology that is an “indispensable staple” (like computers … or PCR) but any technology that is in public domain or will be in the public domain before the expiration of a patent that purports to tie up the use of that technology for information-gathering, dissemination or processing purposes.

    That minor quibble aside, it’s a great concurrence and worth reading.

    Progress is being made to restoring some sanity to the US patent system. Cheers!

  12. For those of you that have asked, or have been wanting to know. Here is the ordinary, contemporary definition and use of the term, from dictionary.com

    integrated

    [in-ti-grey-tid]

    adjective

    1. combining or coordinating separate elements so as to provide a harmonious, interrelated whole.

    2. organized or structured so that constituent units function cooperatively.

    Copyright 2014 Dictionary.com LLC
    The Supreme Court made it expressly clear in Mayo that the claims in Diehr were found statutory because they were, “Integrated”. In reconciling Diehr with it’s precedents the Court established an “Integration Analysis”. Therefore, in all 101 cases the claims must be considered as an “Integrated Whole” in the concluding analysis, as was done in Mayo and Alice. In the concluding analysis, the concept, ( or other Court created exception ) “must” be “Integrated” to the point the concept itself is not preempted. If not the claims will fail 101, as was the case in Mayo and Alice. Business methods and software are not Court created exceptions and therefore should not be treated as such. Instead, such claims should be afforded a full and proper “Integration analysis” as was done in Mayo and Alice and allowed to rise and fall on their individual merits.
    Today, many members of the Judiciary are not following the Court’s Integration and instead following a dissection analysis under the guise of such terms as, filtration, gist, and distillation, or just as flagrant, totally ignoring “Integration” and inserting another test in the concluding analysis, such as machine or transformation. Judge Lourie is the latest and highest ranking member of the courts to do just that. If the Supreme Court wanted to reinterpret it’s precedent in Diehr as standing for any form of dissection it would have done so in Mayo, instead the Court introduced the term “Integrated” and proceeded with a framework that considers the claim as a whole, in its concluding analysis. Those members of the lower courts that ignore, and willfully violate the Supreme Court’s Integration, must be held accountable. They must have their feet held to the fire of the law!

      1. Please write an article with your viewpoints and have it published.

        Yes, that will make a huge difference.

        Also be sure to always capitalize “integration analysis” because that makes it seem so much more weighty and important. It doesn’t make you look silly or desperate.

        Also “fire of law”. That was good. Very compelling.

      2. Thank you Fish and everyone else that has asked me to write an article on the Courts Integration Analysis. I will contact Dennis and request to submit just such an article for Patently O readers. Anyone have any other suggestions on where to publish?

    1. I think we should all read MM’s posts AFTER he explains how he has had 10 hours a day, six days a week for 10 years to post anti-information processing posts on blogs.

      1. Perhaps your 12 hours (since you post all day and some of the night too), and all week long would be of interest too.

        I admit to having noticed a 3 day vacation about 2 weeks ago…

        1. Jesse I spend about 1 hour a day at most blogging. MM on the other hand is the top blogger on this blog and this is by no means his only blog.

  13. This of course the right decision.
    But it shows that “abstractness” is not a very clear reason to refuse patents.
    The only reason is that the Supreme Court repeatedly stated that “abstract ideas” are not patent-eligible.
    But in fact ever genuine invention is a nove implementation of an (initially) abstract ideas.
    A better reason not to allow business method patents is that they consist of mental steps. The EPC excludes business methdos (as such) for that reason, see Art. 52(2c) EPC.

    1. >>they consist of mental steps.

      What in the world is that? A mental step on a computer? So your definition is a step that a person may do, but that a computer does instead. Gee. Automation. Doesn’t sound like innovation at all. Sarcasm off.

      1. (and of course, you are correct NWPA, as a claim to a machine CANNOT be a claim to a true mental step, as EVERYONE knows, machines do not think (using the appropriate contextual meaning of that word))

        And yes, the word that fits here: anthropomorphication

        (Maybe Joachim can help out our pal Reiner)

        1. Oooh lookie: capitalization and bold! Very, very impressive.

          <ias EVERYONE knows, machines do not think

          Right. Computers “determine” stuff and “process” information and store information in their “memories”. Those same words appear all the times in “do it on a computer” patent claims.

          But it’s nothing at all like a mental step. How do we know that? Because “anon” said so and he used capitalization and bold letters.

          Deep, serious stuff folks. And he’s the best they got. Right?

          LOL

          1. You do know that metal step pertains only to a human mental step, right!

            Instead of focusing so much on form, perhaps you should spend your time on content.

            1. (or perhaps you want to cheerlead your new BFF jesse and push for equal rights under the law for programmable toasters, primates, dolphins and other animals)

              That’s more your ‘legal logic’ speed, isn’t it?

              1. 1. A method wherein said method comprises determining whether the time to eat a purple pickle has arrived, wherein said time is determined based on a dog hair value.

                2. The method of claim 1, wherein said method is performed with a ball point pen and paper.

                3. The method of claim 1, wherein said method is performed by an old general purpose computer.

                Seems to me and a whole lot of other people including the entire Supreme Court and most of the Federal Circuit that all these claims are ineligible for pretty much the same reason. And it’s a good reason.

                1. Not at all on point Malcolm.

                  We are talking about the mental steps doctrine here.

                  Please show me one single reference that teaches that the mental steps doctrine is meant to protect non-human mental steps.

                  One.

                  You will not, because you cannot.

                  (and you might want to stop listening to your toaster)

            2. Anon, Why should it be “human” only?

              There are many species that carry out mental steps… in fact, nearly all of them (I still tend to exclude jellyfish, but only provisionally – they do detect and carry out some form of steps to get food). Even plants carry out “mental steps” in seeking out nutrients – that is why plants near a leaking sewer are much larger…

              1. jesse, I have answered you previously and invited you to engage in a dialogue, to reach the conclusion that your ‘logic’ takes you to.

                It is you that has been non-responsive.

                But let me again give you the answer. It is a one word answer that carries with its legal meaning the foundational aspect of the mental steps doctrine.

                The answer: chattel.

                1. Ah.

                  Slavery.

                  I kind of thought that was what you wanted for others.

                  But that still doesn’t mean that “mental steps” are a property only of humans.

                2. jesse,

                  Your reply is nonresponsive.

                  Animals and inanimate objects cannot be slaves in the attempted use (legal) that you are using the word.

                  If you want to continue with nonsense posting, let me ask you this: have you eaten today? Is not that act even worse than the acts of ‘slavery’ that you would decry? Where is your logic?

                3. jesse,

                  Stop.

                  Think.

                  Context – you have to apply the logic in context.

                  Have you eaten today? Is not that act even worse than the acts of ‘slavery’ that you would decry? Where is your ‘logic?’ Why are you not answering me?

                4. You wish to (or be able to) own all “mental steps”, and disregard others rights.

                  If I manage to figure out the mental steps taken by my cat, I don’t own the steps. They still belong to my cat (or in my case, cats). Even if I put the mental steps into data for a computer, I still don’t own them.

                  As it is, computer learning algorithms are learning how to do things even people can’t do very well – such as identify people likely to commit suicide.

                  And there are/will be algorithms that learn how to learn. Who will own those “mental steps”? Certainly won’t be what created them. And as things are going, you won’t either.

                5. jesse,

                  Your response is completely inaccurate.

                  I don’t know what “reality” you live in that your chattel has ownership rights, but it is not this reality.

                6. …and you still have not answered me about what you have eaten today, and how that must be way worse than the ‘slavery’ that you are clamoring about.

                  Speak up son.

                7. Doesn’t deserve…?

                  What a cop-out. You are (once again) afraid of where your logic takes you.

                  Own your logic. Grow some.

                1. All that you have is your inanity.

                  The answer is there – you just have to open your eyes and take your fingers out of your ears.

                  But please, continue with your parrot-like responses as you are want to do. And when you want to actually join the dialogue, please do so.

                2. jesse,

                  An answer is still an answer (even if you choose to clench tight your eyes and just repeat your mindless mantra.

    2. Reiner,

      You realize that your “of course” is wrong?

      You seek to imply EP law for a US law question.

      Not only that, but “mental steps” alone – as a part of a claim – are perfectly allowable (business method or otherwise).

      Please respect our sovereignty in your comments.

  14. From Judge Mayer’s concurring opinion:
    Alice Corporation v. CLS Bank International, 134 S. Ct. 2347, 2356–59 (2014), for all intents and purposes, set out a technological arts test for patent eligibility.

    Someone needs to draw a bright line between what’s “technological” and what’s not. Without defining “abstract” or what this “technological arts test” is, there is insufficient guidance to understand which software-implemented inventions are eligible under the current judicial thinking.

    A month or two ago, I suggested that a firmware upgrade to a Blu-Ray player that improved video playback may be patentable. That is inarguably technical, but several readers here suggested that “because it’s just firmware and information processing, it’s not patent-eligible.”

    Perhaps this is a clearer example: suppose a Microsoft software engineer invented a totally novel and dramatically more-efficient data processing algorithm for Wi-Fi signals and then implemented it as a software device driver for MS Windows. You install it from Windows Update and, presto, your browsing and Netflix just got 300% faster. That’s purely software, it uses 100% existing hardware, and nobody could possibly argue that’s outside any sensible “technological arts test.” But to the anti-patent crowd that would just be “information processing” or “math” or transferring information from one computer to another, and, per Judge Lourie in the instant opinion, “the transfer of content between computers is merely what computers do.” Naturally in such a situation, Microsoft applies for a patent on that Wi-Fi speed-enhancing software. Should they get it?

    I would submit that any patent-eligibility regime under which the eligibility of software-implemented “clearer video playback” or “faster Wi-Fi speed” is even remotely questionable must be rejected. It defies logic that such would be the intent of Congress, and Judge Lourie in the instant opinion essentially says the same thing: “we do not purport to state that all claims in all software-based patents will necessarily be directed to an abstract idea.” However, if *some* software-implemented inventions are patent-eligible while others are not, then we need to understand how and where to draw the line.

    Put another way, if a software-implemented invention (relying on existing hardware) may be patent-eligible, as the Court indicates, then the use of software per se is *not* dispositive to eligibility and therefore something else must be the deciding factor. What is that factor?

    1. Careful there SlotGuy, you seem intent on obtaining a rationale answer with a software as a machine component premise…

      😉

    2. Part of the problem with software patents is that the claims (to which we are told we must look to to see the scope of the invention) are not drawn to the technological improvement, i.e. how it is achieved, but rather to the result that is achieved.

      So based on your example, what we would see is a claim that claims “A computer-readable medium containing computer code configured to process wi-fi signals so as to achieve efficient data processing by: receiving a wifi signal; processing the wifi signal in an efficient manner; transmitting the wifi signal”

      Obviously this is fictional and a bit over-emphasized, but serves to illustrate the point: if the claim were limited to the actual method of achieving better wifi results (rather than just that result), it could perhaps be patentable (so long as it met the other conditions of patentability). Instead in software what we see is claiming of a result, then leaving it to the “skilled artisan” to fill in the details, and a claiming of all ways to do it (even if never described in the patent).

      I too would like faster wifi, but why should someone get a patent on all ways of doing it if they’ve only told me one way? Shouldn’t I be entitled to try to innovate to find other ways that aren’t the way you invented? This is the fundamental problem with software patents. They claim a result broadly, without any corresponding disclosure of knowledge to the commons in return for the patent grant.

            1. It absolutely is when “the field of math” is what phosita is skilled in. Suppose after 20 years of research, I develop a practical and efficient algorithm for computers to perform object recognition and identification in real-time on a live video stream. This is a *ridiculously hard* problem. I want to file for a patent, claiming essentially any computer system that implements my new algorithm for computer vision. I don’t care what the setting is; my algorithm has applications including automatically avoiding vehicle crashes, detecting manufacturing defects, anti-missile defense, surveillance, search-and-rescue, robotics, etc., etc.

              I think a ground-breaking advance like that deserves a pioneer patent. Do you? Should I disclose my algorithm in exchange for a limited government-issued monopoly, or should I keep my algorithm trade-secret? What do you think best promotes the progress of the useful arts?

              link to xkcd.com

              1. You’re fantasies about being some sooper genius who’s precious “rights” are denied make very entertaining reading.

                But they are irrelevant to the issues that are being discussed and addressed in these court cases. You might as well cry about all the children that will die because you can’t protect a medical correlation with a patent. That’s not a problem of the patent system. That’s your problem because you seem to believe that without patents on X, then nobody will work on X. That’s pure baloney and everyone knows it.

                And reminding you of that doesn’t make me “anti-patent”. It makes me “anti junk patent.”

                Huge difference. Try to figure it out.

              2. because you seem to believe that without patents on X, then nobody will work on X

                You are slipping back into your old habits of projecting a strawman (here the “but for” reason for having a patent system) onto others.

                Your strawman rhetoric is a bit lame and f001s no one.

              3. It’s obvious that people will work on a given topic with or without patents. A lot of that happens through research, including federally-funded research. Here’s an example:

                US 8,526,451, assigned to Harvard and supported by several government grants.

                This is a perfect example of what I meant by a claim to a method that is limited to a novel algorithm as set forth in the specification. The patent itself states “It is to be understood that the embodiments of the invention can be embodied strictly as a software program, as software and hardware, or as hardware and/or circuitry alone, such as within a data communications device.”

                Does anyone think this patent is non-technological, abstract, or otherwise a junk patent? Assuming not (but maybe you do?) where do you draw the line between this software patent and any others?

              4. It is also an example of the public paying for the research, and getting nothing out of it.

                It used to be that research paid for by the government was public domain.

                Second, it looks like a variation of TCP windowing with a routing control packet added. The claims, to me anyway, look like it is claiming a network router. Any router.

                The description though appears a bit different. That changes the existing TCP protocol a bit.

                As to whether it is useful or not depends. The discussion indicates it has only been tested in a local wireless environment… it would have to be reproduced and tested in a more realistic environment first.

                More like what a journal article should be.

      1. WT, I don’t think that’s a fair example claim. I agree that a claim that basically says “I claim faster Wi-Fi, someone else can figure out the details” is out of bounds. But that’s not the example here. In this example, the Microsoft engineer invented a novel, non-obvious algorithm that represents an advance in network technology. If the XYZ algorithm is fully described in the specification such that phosita could implement it on their platform of choice, the claim could read: “A computer-readable medium containing computer code configured to process wi-fi signals so as to achieve efficient data processing by: receiving a wi-fi signal; processing the wi-fi signal according to the XYZ algorithm; transmitting the wi-fi signal.” (I just edited your claim, I don’t pretend this is the right thing to submit to the PTO.)

        There may be dozens or hundreds of different ways to implement the XYZ algorithm across the various hardware platforms to which it would apply. If the new algorithm makes all of them work better, I believe it should be broadly-claimable so as to cover all implementations of that algorithm.

        That’s not to say that the claim covers (or should be construed to cover) the end-result without being limited to using the algorithm in the first place. If someone else implements a different (even worse) algorithm and uses that instead, they wouldn’t infringe. But do you agree that if the algorithmic structure is properly disclosed in the spec, the patent system should grant a patent on its implementation for wi-fi enhancement regardless of the details of that implementation? And further, if a subsequent engineer makes an obvious variation of that algorithm, that the original claims should cover that as well and therefore the variation should be liable for infringement?

        1. I agree that a claim that basically says “I claim faster Wi-Fi, someone else can figure out the details” is out of bounds.

          This is the point. This is what we see in a lot of software patents. Someone thinks “wouldn’t it be nice if we could rate restaurants using a mobile device” and all of a sudden, they get a claim saying essentially that.

          If it truly is the case that the ways of reaching that result would be within the knowledge of an ordinary artisan (and thus such a claim is enabled), then the claim is to nothing more than an abstract idea. The patentee got the right to exclude without doing any of the technological work (actually programming/figuring out how to implement it) and has instead claimed a result. Or to put it in terms of Mayer’s concurrence, has claimed an entrepreneurial advancement, not a technological advancement, which is not something patents were intended to protect.

          1. You’re still missing the point, I think. The mere idea of “rating restaurants using a mobile device” is just an idea, that’s not patentable. But if I present a specific algorithm for rating restaurants using a mobile device, and that algorithm is not old or obvious, why shouldn’t that be eligible? I don’t need to actually implement my algorithm (in software) to have properly designed or disclosed it, just like I don’t need to have a symphony performed by an orchestra in order to have written and scored it.

            This idea of a technological test is troubling to me because Congress has set no guidelines on what counts as sufficiently “technological” and what doesn’t. It should not be for the Courts to decide on whether a process is “sufficiently technical” because then we’re back to playing word games with claim language and making value judgments on what industries are worthy of patent protection.

            Suppose I develop a novel method for controlling a motorized roller that involves algorithmically-controlled pseudorandomness, and my first idea is to apply it to a cylindrical joint for a precision manufacturing robot whose movements need to be controllably-random. I’m sure I could get a patent on something like that.

            But what if the roller is a slot machine reel instead? Should I be able to get a patent on controlling a slot reel in exactly the same novel way? Are we going to judge patent eligibility by the field of commerce toward which a method is directed?

            see U.S. 4,448,419
            link to google.com
            Do you think the ‘419 patent should be patent-eligible? Do you think it actually would be after Alice/Ultramercial.

      2. That’s a clear sign the patentee has claimed nothing but an abstract idea. If all the actual implementation is left to the skilled artisan, the patentee is adding nothing but an abstract idea.

    3. “I would submit that any patent-eligibility regime under which the eligibility of software-implemented “clearer video playback” or “faster Wi-Fi speed” is even remotely questionable must be rejected”

      On the contrary, since software patents, even the imaginary and physically impossible one you propose, are harmful to innovation and the software industry any regime that allows any of them must be rejected.

      The nature of software is that it is always pure mathematics and any operation possible in software is implied by the mathematical nature of computation. There is no objective way to say that some particular algorithm is being used or not because mathematics is an integral whole. You would just end up with experts arguing over whether two things that are logically equivalent seem subjectively different to them or not.

      In practical experience we can observe what happens to video compression techniques. They are a minefield of compatibility questions, litigation and threats, supposedly open standards being blocked and innovation being stalled by multiple abusively invalid patents being used by a cartel to block competition. No good has come from issuing any of those patents. The usefulness of video compression has not been advanced, nor has better research been done because such patents are issued, indeed the opposite is true.

      1. You don’t think there’s an objective way to distinguish between one algorithm and another?

        Tomorrow morning, I invite you to bubble-sort your sock drawer and then pick your daily pair using a linear search. If that’s not objectively slower than what you do every other morning, you have more important issues to address than patent policy.

        1. Your proposal is equivalent to claiming all O(N^2) sorting followed by O(log n) searching algorithms. That is the second most common and worst kind of abusive software patent. It is the same problem identified in 25.3 and you will find software patents are written that way for a reason: that is the way to get a lucrative monopoly. And it is pure abuse that contributes nothing and always impedes the progress.

          What you need instead for your proposal is a program that evaluates by reading code whether bubble sort is used rather than another, e.g. a merge sort or quicksort, that produces the same sorted result and distinguishes which of those the code is using objectively in every case. You will soon find that no such program exists. I suspect it’s equivalent to the Halting Problem but I don’t have a proof at hand.

  15. So the shock and outrage…

    Is that cause some patent lawyers are worried about an end to the software patent gravy?

    If they’ve been feeding on patents like this I say let the ****ers starve.

    1. To your moniker, it is not the law – and if you bothered to read the comments, you would see that it it the misapplication of the law that is driving the “shock and outrage.”

      Read, THINK, and understand prior to coming to your opinion and posting.

      1. I did think that maybe my moniker would be taken for what it is, a little bit of topical banter. But maybe the stress is getting to you and you’ve lost your sense of humor?

        Wait… you’re saying lawyers don’t like it when the law is misapplied? Or is that only when it’s misapplied and they don’t like the result…

        *sniffle*

        1. My sense of humor is fine – your moniker coupled with your message, though, painted you as an ill-informed, kick-them-when-they-are-down, non-thinking idjit.

          I left the Be-vis style of ‘humor’ that your lack of thinking represents back in grade school.

          And if you were paying any attention whatsoever, you would redcognize that your reply here simply and completely misses the mark of my posts.

          Again, my suggestion to you is that you take the time to inform yourself before coming to an opinion and expressing yourself.

          Being an @$$ is no way to go through life, son.

          1. Are you really that down? Maybe it was mean of mean to kick you, I didn’t actually know it was you until you rolled over and started calling me names.

            I must have struck a nerve… Ooops.

            *blows kiss*

                1. Did I call myself a sage?

                  Or did I describe the advice I gave?

                  Did you actually have an issue with the advice, or – as is apparent – you are just doing your tr011ing?

                2. jesse,

                  In either case – nothing.

                  Move the goalposts back and answer the point put to you: do you have an issue with the advice given?

                  Perhaps you should think (really think) before you attempt your silly tr011 games.

  16. Let’s try to keep in mind that a court cannot change reality. That Lourie is paid to process information. That according to Lourie’s rules a program that performed Lourie’s job better than he would be ineligible for patentability. The moral thinking people among us know that cannot be the right result.

    Information processing is a physical process. It takes time, space, and energy. Conservation of information is the most important law in physics and their is a relationship between energy and how much information can be processed. Thinking does not occur in the spirit world. Math is something that is a structure inside our heads. A 1 has a structure in our heads and in a computer.

    There are paid bloggers everywhere on the Internet.

    1. And let’s also keep in mind that all of this house of Alice is being built on the premise that the claims are somehow too broad, which immediately brings to mind the question: well, then how does one claim an information processing invention?

      But, what we are seeing is a door opened regarding claim scope, then it being morphed into claim that processing information is not eligible for patentability.

      1. You know it’s a bit lame to keep replying to your own posts… It’s the internet equivalent of sitting at the end of the bar talking to yourself.

        Lay off the bottle mate.

    2. NWPA,

      Your comments would support a regime that places restrictions on what its subjects are allowed to think. While I don’t believe the Constitution addresses “freedom of thought”, I doubt you will find a congressperson willing to attempt legislating such restrictions.

      I would also lke to remind you that any meaning assigned to the data, signals, or quantum-based “information” being processed by an information-processing-machine is purely abstract (by virtually anyone’s definition, except possibly yours).

  17. Looking in from outside:

    The US Constitution permits the Congress to enact a law of patents, but only within the ambit of the “useful arts”.

    The intended purpose is to “promote” the “progress” within that field.

    It is contrary to that intended purpose to promote claims that purport to be directed to a contribution to progress within the useful arts but in fact are an attempt to monopolise a contribution to some field (like the art of selling things) that is outside the ambit of the useful arts.

    SCOTUS is doing no more than re-setting the patent law to be in conformity with the Constitution and in accordance with the patent statute.

    The lower courts and the PTO are following the lead set by SCOTUS. This is painful for all those who have built a business on the former temporary deviation in the jurisprudence caused by the rogue State Street decision.

    So, in the greater scheme of things, what’s all the fuss about? Give it a year or two and everybody will get used to the new normal.

      1. anon, as Max said, this is constitutional in nature. Congress really has no power to overrule that, so set aside your thinking to storm Congress with pleas for help.

        1. It is a false premise that this is constitutional in nature.

          I have already posited why: the lack of actual case or controversy and the purely conjectural speculative musing of the Court as to “impeding progress.”

          Hand waving of the finest, but since such is entirely future based, such is completely outside of what the Court has been authorized BY the Constitution to deliberate upon.

          Isn’t there an animal rights case that parallels this?

          1. The case that I was thinking of was Lujan v. Defenders of Wildlife, 504 U.S. 555.

            The hand-waving of the Court should not be accepted for the bootstrapping overreach of that very same Court.

            If we allow such purely conjectural projected future “harm” to serve as a present condition, then anything at all is within reach of the Royal Nine.

            This notion of “may impede” (and yes, please note the explicit words so carefully scrivined by the Court – “may” – not “has,” not even “will”), we have the Court engaging in speculation, giving what amounts to a policy legislation with a future-based “advisory opinion” to re write the actual law sanctioned by the Constituion to be written by the legislative branch.

            People here are giddy over the ends obtained, ignoring the means used – people whose profession SHOULD alert them to the danger of this type of legal maneuvering.

            Again, there is only shame in the celebration here.

              1. Even assuming for argument’s sake your first statement (which, btw, I have already shown to be false), you exhibit the fallacious logic of “two wrongs make a right.”

                Classic.

          1. No.

            I was the first to state here that my posts are my own, and not done in furtherance of my clients.

            Pay attention – we’ve already been over this.

    1. Assuming you’re correct: Is there a subset of software-implemented patents that fall within the “useful arts” (those directed to eg operating systems, lower-level networking protocols, compiler design, graphics processing, etc)? The cases currently on the books tend to indicate . . . maybe not . . . though they’re quite murky . . .

      1. …the right kind of “abstract” (as that term is being intended to be recognized)?

        Nope – won’t happen That’s Right.

        Pay attention – Alice removed the “nominalism” of meeting the statutory category portion of 101 as any type of protection.

          1. It won’t happen because the “Gist/Abstract” sword has no limits.

            The statutory category portion of 101 is ignored.

            You really think that the utility portion of 101 is NOT going to be ignored as well?

            That’s as naive as Ned thinking that Diehr would have survived under today’s “logic” in his contorted attempts o ignore what the Court did to the statutory categories while attempting to hold onto those same statutory categories.

      2. The answer to your question, Right, is: Yes.

        Most everything technological these days is implemented in software. Everything in the useful arts (technology) that is new, enabled and not obvious (across the full scope of the claim) is worthy of a patent. And that’s a helluva lot of patentable matter.

        The EPO does it like this:

        Eligibility first. Does the claimed subject matter have “technical character”? if yes, eligible.

        Novelty next. In ist technical content, is there some novelty in the claim? If yes: novel.

        Next up, obviousness. Only such subject matter that solves an objective technical problem counts towards non-obviousness. Clever new abstract ideas that do actually solve non-technical problems don’t count towards patentability.

        I get the feeling that EPO-thinking (by now more than 30 years old, and adopted more or less everywhere else in the world) is diffusing into the USA, into the brains of people in positions of influence who are belatedly “willing to understand”.

        Meanwhile, these columns reveal the thinking of various Luddites intent on not understanding.

        1. The false superiority complex of “the EPO must be right” and therefor everyone else is a Luddite (from the king of purposefully not understanding, no less)

          Another classic.

        2. Good comment.

          I note also that a number of other jurisdictions have tests for patentable subject matter that allow for software patents, provided the claimed subject matter is sufficiently technical. CN, TW, JP come to mind. Different methodologies than the EPO one but arriving at the same result most of the time.

            1. That was understood – of course, you do understand that law is a sovereign matter, and that this country does not operate under EP law – in either the a) substance of the law, or b) the appropriate manner of changing the law, right?

              You may like whatever ‘ends’ you like, but please pay attention to the ‘means.’

              1. Thats odd.

                It always seems like you want US law to rule everything…

                All those international trade treaties to make things “integrated” always seem to be biased in favor of the US, and not the other country, and requiring the other country to change their laws…

                1. What is odd jesse is how you can make things up like this whole cloth.

                  I have never asked or even intimated that another country should change their sovereign laws for US law.

                  Never.

                  Take a break from posting if you are tired of being beaten with your bad logic – don’t resort to making things up.

                2. Just noticed your comment here – your reading comprehension needs some serious fixing – take your time to read the exchange.

      1. Max, what you say would only be true if they were allowed to claim more than they invented. We have case law that should have been used to police claim scope.

    2. Please provide proof that “the art of selling things” is not a “useful art” within the meaning of the Constitution. To ordinary people, no selling things => no economic activity => depression (!) Considering that GDP and S&P 500 are so talked about today, “the art of selling things” seems like a “useful art.”

      When you’re done with that, please provide proof that developing “software” is not a “useful art.” And try typing your comments onto an Internet blog without the use of any software.

      Good luck.

  18. Why shouldn’t SCOTUS rewrite laws Congress passed (101 contains NO exception for tautologically defined “abstract ideas”)? The President does it all the time.

    Suggestion: inter the Constitution with the best remaining original copy of Magna Carta in Salisbury. Two once-important documents, to be viewed only with a curiously abstract attitude. Bonus: that same day you can take in Stonehenge, which existed even before the knuckle-dragging Druids arrived.

    1. Meh, it’s only Czechoslovakia.

      A justice of the peace commission is easily seen to be so much more important, right?

      Anybody remember that case? I bet there were plenty of people who said, “it’s done, let’s just move on”

  19. What we really need is an e-commerce case with claims containing a “determining” or “computing” step. The present claims just moved data around which is insignificant extra solution activity and is a poor example for clarification of Alice.

    I want some guidance on whether determining/computing ANYTHING on a computer is or isn’t”something more”.

    For example, “determining, by a computer processor, a second position for a purchase button on a web page, wherein the determination is based on a default position, a purchase history of a user, and a category of a selected product.”

    On one hand, I find it hard to argue that that’s some sort of abstract idea which if allowed would swallow an entire field of technology. It lacks any real-world corollary. Even if it is an abstract idea of say “enticing a user to buy a product” it is different from what has come before it. When one enters a physical retailer there is no “buy” button. I suppose one could argue it’s similar to a checkout register and Walmart may move those around to increase sales (ex., placing them at the back of the store is a bad idea). But it’s hard to argue that Walmart moves them around after building the store. They don’t say “Oh hey, Bob is coming in and he likes them near the produce section.” This seems like something more.

    On the other hand, the computer is just doing what computers do – i.e., compute stuff. Maybe the algorithm defining the formula does not matter and if the invention is simply what is being determined then it will fail 101. Answer me that and you get the golden ticket.

    1. I want some guidance on whether determining/computing ANYTHING on a computer is or isn’t”something more”.

      For example, “determining, by a computer processor, a second position for a purchase button on a web page, wherein the determination is based on a default position, a purchase history of a user, and a category of a selected product.”

      That claim is ineligible garbage. You can do it your head for cripes sake. Why in the world would we grant patent claims on garbage like that? Because “do it on a computer”?

      It’s like granting patents on “determining” where to put the stick figure in your crayon picture based on “default position, the color of your hair, and the legal status of your car.”

      Pure unadulterated junk.

      This stuff is all getting kicked to the curb and the street cleaner is coming by shortly. Kiss it goodbye. Good riddance.

      1. Thanks for thoughts! I can really tell that you have done a good job of laying out an intelligent opinion and weighing both sides of the argument. My heart was almost racing at the wisdom you have bestowed to us. I really want to thank you and hold up your response as one of the best I’ve seen in quite awhile.

        Most of the comments on these forums are from people who are so biased it’s almost like they demanded from God to be born a particular gender. “You must not have received the memo; I’m not being born a Girl. I demand a pair of balls!” Reading their remarks generally lowers one’s IQ because they are full of unintelligible garble. The same goes for their artwork. The best I can decipher is a bunch of stick figures making out.

        So again, I really appreciate your wisdom. I will cherish it always.

        1. “I can really tell that you have done a good job of laying out an intelligent opinion and weighing both sides of the argument.”

          There is no “argument”. You found it hard to argue, remember?

          “I find it hard to argue”
          -you

          Then you supposed someone could argue something.

          “I suppose one could argue”
          -you

          And then you found it hard to argue again.

          “But it’s hard to argue ”
          -you

          “if the invention is simply what is being determined then it will fail 101. Answer me that and you get the golden ticket.”

          That is true, can I haz golden tix now?

        2. “Most of the comments on these forums are from people who are so biased it’s almost like they demanded from God to be born a particular gender. “You must not have received the memo; I’m not being born a Girl. I demand a pair of balls!””

          Did you just say that people are so biased on here that they’re like a transsexual individual?

          lol. Never heard that one before. I didn’t even know transsexual persons were biased.

          “Reading their remarks generally lowers one’s IQ because they are full of unintelligible garble.”

          Said the man that just compared bias in commentators to being transsexual.

      2. Imagine, MM, if Matt had specified that some specific multi-layer neural net with weightings determined by some specific version of backpropagation of high sales points with data from some specific sampling technique one the user and multiple other users’ behavior had determined the button position on the page.

        Still garbage, but it’s a lot closer to the mistaken position of four justices in Bilsky that linear programming and data compression could be eligible. (Yes, twenty years of math classes taught me that four is not five.) I wonder as Matt does what the courts will do with that one.

            1. Other than a mere attempted slam at lawyers, your comment here jesse is absolutely meaningless and inappropriate to the discussion.

              Try at least to say something pertaining to the discussion.

                1. “Smearing” has nothing to do with this, even as you attempt to “jokingly” smear all attorneys.

                  Wake up already and focus on the topic of conversation.

                  Your ‘humor’ cannot hide the evidence if bias.

    2. If I understand you correctly, you’re looking for what kind of software claim can pass 101?

      Everyone, please feel free to chime in, but here has been my approach. Because I have had a few software/business method applications recently.

      I focus the claims, as much as I POSSIBLY can, on how the software, business method interacts with a real world thing or causes a transformation of matter. For example, using your example of an online purchase, I would try to include something physical, like shipping the purchased product to the end user. Or causing a receipt to print.

      I’m not saying it will always work, but I think it is a decent strategy, especially when like me you don’t get to choose what applications you write.

      Until a court case tells me otherwise, I’m assuming that if it is pure digital information going in and pure digital information going out, it is ineligible. If I can show that the processing of information causes a transformation of matter or does something in the real world, maybe I have a shot.

      1. It might be fun to try a claim of the form “A method for heating a room, said method comprising putting a computer in a room, turning it on, and running my Ultramercial program, whereby matter in the room is transformed by absorbing energy from the computer.”

      2. sorry go – won’t work under Alice.

        Do I really need to remind you that the “nominalist” approach won’t work? That both parties in Alice had stipulated that the statutory category portion of 101 had been met?

        Have you not noticed Ned’s contortions and change in verbiage from “statutory category” to “statutory?” Why do you think he went through such contortions?

        Why do you think that there is NO dialogue on the fact that what the Supreme Court has done has written out the statutory categories from 101?

        You cannot be a little bit pregnant. The anti- nominalist position requires you to embrace the judiciary overthrowing the legislature as writer of patent law.

        If you think MoT will save you, think again.

        You will need a different strategy.

        As to pure digital in and out, you might look at the encryption arts (before those too are taken away – and gee, who would benefit from that…?)

          1. You cannot copyright “just math” either. (and you should take a pause at Ned’s position on this on the Copyright thread jesse – open your eyes to the logic in play)

            Next step: why should anyone pay programmers for this “just math” stuff…?

            March, my little lemming friend, march.

            1. Mathematicians get paid for doing their jobs…

              Programmers get pad for doing theirs..

              And if you forget, math gets copyrighted. Just like phone books do. Both contain elements that can’t be copyrighted…

              1. Still wrong on the math gets copyrighted thought jesse.

                It is not the math that is protected, just like it is not the data in a phone book that is protected.

                Software is not math – and you better pray that this is recognized if you want ANY IP protection at all.

                1. Reality bites.

                  Software is math. Just a (usually) more verbose notation to compensate for the limited character set in use.

                  Just as the aggregate information in a phone book gets copyrighted, so will the aggregate information in math, or programs.

                  You can copy individual parts without a problem. You just can’t copy the aggregate. You can even re-do the aggregate. The same result as with books. They do get revised – especially text books. Different text books get different copyrights – even though they both may cover the same information.

                  The problem for you is identifying the maximum size of that “aggregate”. Individual phone numbers are not a problem. Even all of the phone numbers. There is no inherent tie from one number to another. Individual formula is not a problem – even individual lines of code.

                  But the question is “how many lines does it take to make it protected”? Assuming “lines” is an appropriate measure. Personally, I don’t think “lines” should be used – as a single formula (such as a Taylor series) may expand to 30 to 60 lines (depending on which one, and the language used for the code). And none of those ought to be any more copyrighted than the original formula the code was derived from.

                  There is a tie between the individual entries in math. Without that connection, the individual entries don’t mean very much. And that justifies why math formulas aren’t copyrighted, and should not be patented either.

                  Which is one reason APIs shouldn’t be copyrighted… The individual entries don’t mean much. They are only a list of data types, names, and parameter types as a unit… Not very useful in itself.

                2. It is jesse’s reality rhat bites him as his own words here doom his point of view.

                  Just as software is not a “1” for at least the three reasons given to jesse on the Copyright thread (reasons jesse has not and likely cannot rebut), yet another reason is given here by jesse himself: aggregation.

                  Just as an electron has characteristics and yet is more than any single characteristic, likewise software is more than just any mere single characteristic.

                  Math may in fact be a very important characteristic, but software is more than just that characteristic.

                  Through each of the points I have raised and now including Jessie’s own point, I ask for – and jesse refuses to deliver – a further dialogue and application of logic.

                  Instead, all that we are treated to is the monologuing conclusion that jesse has memorized.

                  Step up your game jesse – you need more here.

  20. If a drug is old but I come up with a new way of dosing it that is way more effective than anybody else’s dosing methodology (e.g, X mg the first day, X+5 mg the second day, X-3 mg the third day, etc.), I should be able to get a patent on that method. Even though the drug itself is old/known.

    With these software-implemented inventions, the computer is (arguably) old, but the method for using it (what it does / what it accomplishes) is new.

    To drive home this analogy: old drug = old computer; new dosing methodology = new feature that computer implements.

    As patents that cover new dosing methods are valid, patents that cover new uses of computers should be valid.

    I bet you can’t articulate a persuasive contrary argument!

    1. I don’t think you’re wrong, exactly, but I do think you’re sort of missing the point.

      Specifically, noone has a problem with using a computer for a new purpose (Diehr).

      The problem comes when you use a computer to protect an abstract idea. Like Alice. Like Ultramercial. Same thing with drugs. Like Mayo.

      1. So you’re saying:

        The first time somebody uses a computer for a new purpose, you can get a patent on that.

        But the second time you use a computer for something, that’s “abstract” and not patent-eligible. (Note that I specifically said “abstract” there and not “obvious.”)

        Okay, makes sense!

        1. My goodness. That’s not what I’m saying.

          Look at Mayo as a good example that doesn’t relate to computer, its the same principle.

          You can use a computer to do all sorts of things that may at one time been patentable. I’m sure there are many, many more such uses that can still be patented.

          Here’s the key: if the only difference between your claim and the prior art is an abstract idea, then you’re in 101 trouble. For example, in Mayo it was a correlation.

          I feel like you’re being deliberately obstinate. I’m not saying the Mayo framework isn’t without some ambiguities (what legal test isn’t), but it really isn’t that hard to understand if you try.

          1. go,

            Not to toot 101’s horn but you left out a critical element: integration of the claim elements.

            Thus your key is faulty, as even when you have NO differences between the sun total of your elements and the prior art, you may still earn a patent. See the “only God starts with nothing” adage.

            1. even when you have NO differences between the sun total of your elements and the prior art, you may still earn a patent.

              Or you may not.

              Your comment adds nothing to the good points that “go arthur” made.

              1. Lol, as usual Malcolm, you are de@d wrong, as exposing the fallacy of the “good points that ‘go arthur’ makes” is definitely not nothing.

                Perhaps now, emboldened with this panel decision, you would be willing to honestly deal with my points to your pet theory (which resembles go’s “good points”), but given your over reaction already, I am not going to hold my breath.

    2. As patents that cover new dosing methods are valid, patents that cover new uses of computers should be valid.

      Uh, those new dosing methods need to be non-obvious, not just new. Using computers to compute and/or send information from one place to another is per se obvious, and so obvious that it’s just plain silly to argue that an analysis under 103 is necessary. So, if your “new use of computers” adds nothing more to an abstract method than using computers to compute and/or send information from one place to another, then you’ve got nothing patentable.

      It’s not that hard. You don’t have to like it.

      1. You want obviousness (even “per se” obviousness) to be NOT decided under 103 (which Congress wrote for that very purpose), but to be decided under 101?

        My turn to ask for a citation.

        1. Yep, DanH/Leopold,

          Just like the ladders of abstraction discussion, I give you what you ask for, and you fail to give me what I ask for in return.

          It might turn out better for you if you have your supporting references in hand before you start with your smarmy post.

      2. Okay, I get it.

        If I can come up with a program that solves any of the really big challenges in computing (see this article for a list of things that humans currently can do better than computers: link to m.theatlantic.com ), then that program is per se obvious.

        And those programs are obvious because . . . all programs are obvious?

        In between drinks at happy hour this evening, I’m going to go program a search algorithm that’s superior to Google’s. Shouldn’t take more than 5 or 10 mins, because programs are obvious.

        1. I’m going to go program a search algorithm that’s superior to Google’s. Shouldn’t take more than 5 or 10 mins, because programs are obvious.

          Apparently you think some of the commenters here were born yesterday and haven’t heard this silliness before.

          If you really believe in the dying paradigm for claiming software then you don’t need to program anything to get your patent. You aren’t aware of that? You just need to dream up what you’d like your computer to be able to do and then you write it down with the word “configured to” standing in for all the work that some skilled programmer will need to do before your dream comes anywhere near to being a reality. Ideally you will also make up some silly terms to cover the fact that you’re just applying well-known logical principles to an information processing task.

          Equally importantly, to the extent that what you’re doing to this old machine is so new fangled and exciting that you deserve a patent, you should be prepared to describe in detail all of the necessary changes you’re making to that machine using objective structural terms. Just like everybody else has done since pretty much forever.

          1. If the issue is that people are getting patents on inventions they didn’t actually build, that’s better dealt with via more robust application of 112. Not 101.

            (Similarly: if people are getting patents on obvious stuff, enhance how 103 is applied. Not 101.)

          2. MM: you never answered how you have 10 hours a day/six days a week for 10 years to blog.

            And, nonsense again from you. All information processing is the same according to you. What do the SCOTUS justices do? Process information.

          3. I think MM hit the nail on the head. The biggest problem with software, in my opinion, is that the drafting attorney never talks to the programmer and therefore never understands how the software actually works. So often, the application only describes a high level “user experience” view of the invention. I personally think 112 and 103 are far better for addressing these applications than 101.

            My experience has been that if you only need a couple minutes to fully understand a software invention, it probably shouldn’t be patentable. Most, if not all, computer implemented business methods would fall into this category.

        2. Certainly the patent in question was so laughably obvious and trivial I don’t understand how anyone could consider it would be a good idea to have crap like that patented.

          But then it often seems that people who have little or no understanding of how computers work almost look on as if it is some kind of magic.

          You also make the mistake of conflating the cost of implementing a solution with the cost of inventing it. That’s like saying it takes 6 months for an architect to design a house because that’s how it took to build.

          1. [“That’s Right”] also makes the mistake of conflating the cost of implementing a solution with the cost of inventing it.

            Even that’s too generous. In most computer-implemented claims the “problem” is nothing more than “a need for another restatement of the infinite number of different ways to describe a useful series of logical steps for processing information in a particular context”. And the “solution” is that restatement.

            The cost is zilcho which is why so many bottom feeders rushed in to play the game. Who won? The bottom feeders who cashed in and got out quickly, and their patent attorneys. Who lost? Pretty much everybody else. What’s left? A broken patent system just starting to heal itself.

            1. Well exactly, the cost to invent is so low, it makes it questionable if patents are really needed at all. The patent in question here could have been scribbled on the back of a napkin while sitting in a coffee shop, it’s that trivial / mundane.

              I tend to see it in a pragmatic sense and ask would they bother inventing / creating it if they couldnt get a patent on it. I’ve yet to see think of an example where the answer is no. Because anything significantly large / complicated enough to require high levels of investment can simply be protected by keeping your source code private.

              1. protected by keeping your source code private

                Because that is perfectly in line with why we have a patent system…

                Um, no wait, that’s actually the exact opposite.

                1. jesse,

                  Must you be so shallow all of the time?

                  Think, man – whether or not the source code is in patents is not the point. The point is protection. With patent protection even if the source code is not in the patent, it need not be kept secret. Patent protection enabled all types of collateral disclosure. Without patent protection, OTHER forms of protection will be sought.

                  For someone who values logic, you are really bad at using it.

                2. You remain shallow and miss the point.

                  Why don’t you slow down just a little bit, read what I post, THINK about it, and realize the logic that you are missing in your haste to post against what I have to say?

                3. The software industry has grown at breakneck speed since it’s inception, and for the vast majority of that time there were no patents and investment was protected by keeping source code private.

                  And yet it worked, go figure.

                4. The level and amount of growth between patents and no patents HEAVILY favors patents.

                  But don’t let such things as facts get in the way of your “glory times” fantasies.

                5. Anon, how?

                  There has been a lot of stagnation but not due to patents (no help there) – due mostly to restrictions on information by repressive monopolies.

                  Patents on software have just made things worse.

            1. There is a difference…

              The chemistry lab will kill.

              The computer lab can’t – unless someone pounds you over the head with the computer.

              As reported, it only takes about three months of study…

              1. Consider cyber security and cyber war….

                Oh the chemistry lab has its own effects for sure, but you need to wake up if you think that the differences mean that code is benign.

                1. Your ignorance is in full gear this morning – it is not sloppy code that is patented, is it?

                  Do you think at all before you post?

                2. Sometimes it is, a number of patents are from sloppy code… Things like patenting the use of exclusive or… patenting the inverse of a comparison…

                  Bad math is still bad.

                  Fortunately, bad code (patented or not) tend not to be used for anything other than examples of bad code.

    3. new dosing methodology = new feature that computer implements.</i?

      Also: new dosing methodology = new feature that the ball point pen implements.

      Does anyone buy that argument? I doubt it. Computers are old machines, just like ball point pens.

      As patents that cover new dosing methods are valid, patents that cover new uses of computers should be valid.

      Depends on the claim.

      Information processing is different than, say, curing leukemia.

      It’s true. You can pretend it’s not true but then you’ll just end up being on the wrong side of history, exactly like the losers of all these cases.

      1. If pens had only ever been used for writing, a claim that covers using a pen to e.g. pick a lock should be patent-eligible. (It may be obvious depending on the art, but should be eligible.)

        Thus, computers programmed to do new/non-obvious stuff should be eligible. (If the stuff they’re programmed to do had already been done not on a computer, then the claim should be deemed novel but obvious. Eligible & novel, but obvious.)

        Thinking about things this way makes so much more sense than Alice & its progeny.

        1. If pens had only ever been used for writing, a claim that covers using a pen to e.g. pick a lock should be patent-eligible. (It may be obvious depending on the art, but should be eligible.)

          Nobody ever said otherwise.

          Are you comparing a claim that recites the detailed steps for using a ball point pen to pick a lock (where a material object is changed by the method) to a claim that recites the use of a computer for processing information? Seriously?

          That’s pretty funny. This is why you guys are losing.

          Try harder.

            1. You forgot to make one critical distinction, Ahan: you cannot use the software in a manner of a method unless you first change the machine by configuring the machine with the machine component known as software.

              No one yet has explained the way to use the capability (functionality) of the software without this critical change.

        2. Thinking about things this way makes so much more sense

          Only if all that matters to you is that you can continue to claim ineligible abstractions by tossing in the words “using a computer configured to do it.”

          But otherwise it makes no sense at all and turns the patent system into a complete joke. Which is what happened.

    4. That’s Not Right: new dosing methodology = new feature that computer implements.

      Ah yes, the false equivalence game.

      Far more accurately, what you’re trying to say is “new dosing method” = “new information processing functionality carried out with the aid of a computing machine.”

      If we accept your false equivalence, then new dosing methodology is also equivalent to new “functionality” implemented with a ball point pen and paper. After all, computers are old machines, just like ball point pens. And of course a “new use” of a ball point pen is per se eligibile subject matter, right.

      Wrong.

      As patents that cover new dosing methods are valid

      Depends on the claim. See, e.g., Prometheus v. Mayo.

      patents that cover new uses of computers should be valid.

      Again, it depends on the claim.

      Try to remember that information processing is different than, say, curing leukemia. It really is different and information processing raises issues that aren’t raised in your typical valid and well-drafted medical treatment claim. You can pretend it’s not true but then you’ll just end up being on the wrong side of history, exactly like the losers of all these cases.

    5. That’s Right?, but a new use of an old drug produces, arguably, a new and useful physical result.

      The use of a old computer to do what old computers do, calculate, without more does not produce a “new” result different in “kind.”

      Ditto, simply reciting the use of the internet for conveying messages. Conveying messages is quite old, and the content of the messages does not make the message new in any “patentable” sense.

      If one were to assume that any new use of any machine — without reference to what the new use achieved — were deemed eligible without more, then 101 would be reduced to nominalism, where the mere recital of an old machine and any new use would be sufficient to pass 101. That clearly has not been the law at least since Benson.

      1. Sure it is.

        It may not be the well known gen e ral one, but it is the one that has been used on this blog by a guest writer (and thus, is the more pertinent one).

            1. Is this going to be another “ladders of abstraction” debacle for you?

              Let everyone know about the first one, “anon.”

              I don’t remember it. Does your doctor remember it?

    1. anon, it is time you stop lecturing us on what the law is on 101. Even the Federal Circuit is now on board with the Supreme Court, and the MOT has a recognized utility.

      Moreover, the court now recognizes that the test’s particular machine really means “new” (or improved) machine. Where did they get that? Reading Hotel Security?

  21. Yet more proof that the Alice test is utterly broken. The Federal Circuit went many steps backward with this remand decision in Ultramercial.

    We frankly need a judge like Mariana Pflaelzer from the CD Cal. to be on the Federal Circuit bench in place of Lourie and Mayer who should be retired. As Pflaelzer correctly said in Caltech v. Hughes Communications, the Royal Nine on patent-eligibility under 35 USC 101 “often confuse more than clarify.” With this remand decision in Ultramercial, she is also correct that Federal Circuit decisions post-Alice “provide either false guidance to district courts, or no guidance at all.”

      1. Hey NWPA,

        I can only sigh. The Royal Nine, and now many of the judges currently sitting on the Federal Circuit bench are frankly embarrassing in their ignorance of science and technology, as well as their disingenuous misinterpretation of the patent statutes. Policy on patent law should be coming from Congress, not from the judiciary.

    1. EG: With this remand decision in Ultramercial, she is also correct that Federal Circuit decisions post-Alice “provide either false guidance to district courts, or no guidance at all.”

      You have Judge Pfaelzer is on the record saying that about this decision?

      Call her up and ask her if she thinks there is “false guidance” or “no guidance at all” in this decision.

      Of course, it does help if you have an ounce of understanding about why we have restrictions on subject matter eligibility in the first place, as well as some tiny understanding about the fundamental logical steps that are necessary to enforce those restrictions.

      1. Yup – you identified the source correctly (but that won’t stop the acrimony towards this panel, nor the version rendered from the source you identify (the version being this immediate scrivining by Judge Lourie). And it shouldn’t.

      2. How is this the Federal Circuit’s fault?

        The Federal Circuit handed out the kool aid cups to gullible folks who bought the line that “I can put it on my desk” is somehow a valid response to very well-reasoned arguments that a claim that recites an old machine presenting “new” information is a claim that protects an abstraction.

    2. EG, your weeping and gnashing bespeaks of a practice besotted with the “computer implemented” brand of subject matter.

      Are you going to tell your clients about this case? What are you going to say?

        1. He is just giddy with this panel decision – he has his ends in sight – who really cares about the means taken to get there? Not those from the outside. Not those with the anti-patent agenda.

          What are you going to tell your clients? (serious question)

  22. A small correction: it was Judge Mayer who replaced Judge Rader. Judge O’Malley was on the panel the last time.

    1. I’d be suprised to see a petition for cert filed at this point but if the attorneys for the patentee have been blowing a lot of sunshine up the patentee’s behind, they might be obliged to “go the extra mile.”

      Maybe they’ll try to run with something in Mayer’s concurrence but given that these particular claims are never going to be enforceable again …

      1. MM, man, they got dismissed under 12(b)(6), defended Rader twice to the Supreme Court to no effect, and still pursued the matter after the second vacation and remand. Couldn’t they ever settle out?

        These folks seem like Sisyphus. Why do they do it?

        1. And didn’t they already cash their big settlement checks from YouTube and Hulu? Why spend that fortune they collected trying to get a pittance from small fry WildTangent? Surely the legal fees are already more than they hope to win.

    2. I actually would really like to see the Supremes take up this case, even if only to affirm. We really need more data points for figuring out what this dividing line is supposed to be.

      Ultimately, though, the most important thing will be for them to take a case that puts a data point on the opposite side of the abstractness line. There have to be limits to this principle, but it’s not clear yet what those limits are. I don’t think Ultramercial will be that case, though.

      1. There have to be limits to this principle, but it’s not clear yet what those limits are

        It’s actually crystal clear what the limits are: novel objectively defined structure or a new transformation of physical matter achieved by steps that were not previously disclosed. Same as it ever was.

        The question is whether there is some other as-yet-undefined justifiable exception to that limit that will hold up to judicial scrutiny. I don’t think the answer — if there is one — is going to be as simple as “recite a new algorithm”. In part that’s because the term “algorithm” needs to be given much clearer and contextual (i.e., computer-related) definition before any such test can have practical meaning.

        This tiny group of people out there who insist that patents on software are essential to the “software industry” should start seriously thinking about the answer to that question. They should have been thinking about it years ago but instead they chose to just insult anybody who asked them to think about it.

        1. Your position cannot be correct as it elevates MoT to a requirement rather than a clue, and it makes the option of claims with objectively defined structure more than just an option.

          Whatever the law is, it is not what you say it is here.

          Serious thinking also should not be given to how to capitulate or accept patent peace for our time.

            1. Not sure I understand your question, go.

              Are you asking about the other option as to claiming methodology allowed under law (still), or the “option” of properly understanding the distinction between a requirement and a clue?

              Are you asking what to do about rogue law? Think about what happened in 1952.

              It should be obvious what I want.

              1. Not sure I understand your question, go.

                That’s because it includes the term “realistically.”

                re you asking what to do about rogue law? Think about what happened in 1952.

                Dream on, “anon.” Dream on.

  23. Would you look at that? It only took them three tries to get it right!

    Looks like they had one of their clerks go back and look up my old posts on the subject and then just paraphrase into the decision. It’s ok fed circ. I do this professionally.

  24. >The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application.

    Seriously? That is an abstract idea? Seriously.

        1. The whole thing sounds abstract to me.

          “Abstract” means just what it is defined as:

          adjective
          1. thought of apart from concrete realities, specific objects, or actual instances:
          an abstract idea.

          1. So displaying an ad is abstract? Really. In my world (the real world) that has a pretty concrete definition and certainly with the ladders of abstraction a very clear meaning.

            1. “So displaying an ad is abstract?”

              Yeah bro, it’s little more than some flashes of light at best, a conveyance of information regarding the thing via hand signs or smoke signals etc. at worst. Women of the night “display an ad” by their dress alone.

              “In my world (the real world) that has a pretty concrete definition and certainly with the ladders of abstraction a very clear meaning.”

              In “your world”. Yeah, I know, in your imaginary “world” where you surround yourself with like thinking delusional people it is a “pretty concrete” thing, with a “pretty concrete” meaning.

              And besides all that, your invoking the “ladders of lolabstraction” is clear indication of such being abstract immediately. If you catch yourself doing that then go ahead and bet on whatever it is under discussion being abstract.

              1. You do realize that 99.9% of claims of any value use (across the full spectrum of all arts) use the ladders of abstraction, right 6?

                Quick experiment: kitchen table : now draw that. How many non-ladders-of-abstraction different drawings do you think there would be from others doing the same? How many claims are there that do NOT claim ANY rungs and are perfectly exact picture claims? In any art field?

                “Yeah bro”

                1. “You do realize that 99.9% of claims of any value use (across the full spectrum of all arts) use the ladders of abstraction, right 6?”

                  Then 99% of claims of any value are subject to likely invalidation. Not my problem that people supposedly started draftin like an arse all of a sudden according to you.

    1. Seriously? That is an abstract idea?

      Yes. And that’s generally true of methods of communicating information in exchange for money using old technology. It doesn’t matter what the content of the information is.

      1. that’s generally true of methods of communicating information in exchange for money using old technology [they are abstract]. It doesn’t matter what the content of the information is.

        Nor does the identity of the producer and recipient of the information matter, nor does it matter where the producer and recipient are located, nor does it matter if the information is “secret” or “public”. Nor does it matter if the information is super valuable or not valuable or at all.

    2. Again. The process was arguably OBVIOUS. The Google Ct. admitted that it was potentially novel. So in essence, the claims were directed to something that was at least partially new (never been done in the way claimed), but nonetheless ineligible. The exceptions continue to swallow the rule.

      1. The process was arguably OBVIOUS.

        It was certainly obvious.

        But that’s beside the point for the eligibility analysis, as most of us have known for a long time and as the courts have now made expressly clear.

        I might have come up with a thousand different ways of forcing you to write better patent claims. But to the extent those ways are just legal arguments, none of them are eligible for patenting. It doesn’t matter how effective they are and it doesn’t matter how valuable they are and it doesn’t matter that I made the arguments “over the Internet.”

        As it should be.

    3. Any and every patent claim that relies for patentability purposes on abstract legal terms like “copyright” or information content descriptors like “ad” is almost certainly going to be ineligible.

      As it should be.

      “Limitations” such as “receiving payment” for a service are even more ridiculous. What next? Limitations reciting a step of “thinking about” some old data — oh wait, somebody already tried that.

  25. My question to this court is, where is the Supreme Court’s Integration Analysis in your decision?

    By failing to apply Integration analysis this court has eviserated the Supreme Courts rule that, “in applying the §101 exception, we must distinguish between patents that claim the “‘buildin[g] block[s]’” of human ingenuity and those that “integrate” the building blocks into something more, Mayo, 566 U. S., at ___ (slip op., at 20), thereby “transform[ing]” them into a patent-eligible invention, id., at ___ (slip op., at 3).” [Emphasis Added

        1. Lourie appears to not understand the 101 analysis at all. Either that or he is heavily under the influence of the anti patent lobby.

  26. OMG what is this nonesense:

    “While the Supreme Court has held that the machine-or-transformation test is not the sole test governing § 101 analyses, that test can provide a “useful clue” in the second step of the Alice framework. A claimed process can be patent-eligible under § 101 if: “(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” The claims of the ’545 patent, however, are not tied to any particular novel machine or apparatus, only a general purpose computer.”

    How did we leap from being tied to a machine to a requirement that the machine be a novel machine?!!?!

    OUTRAGEOUS!

      1. How did we leap from being tied to a machine to a requirement that the machine be a novel machine?

        It’s not a requirement. It’s a clue.

        A big juicy clue.

    1. Les, INDEED! Novel apparatus! Who’d thunk it?

      Someone’s been a-read’n my posts.

      I’m not really suggesting that the Federal Circuit has been influenced by my remarks here. But they now seem to get it. I have been referencing Hotel Security for long enough now for someone to have read that case on the Federal Circuit. It is not surprising at all that they have now come around and all but fully adopted the analysis of that decision.

    2. Lourie commits a gross legal error by using the MoT at step two of the Alice two step test. He commits this error on purpose to avoid applying the Supreme Court’s Integration Analysis and the preemption inquiry which is a subset of Integration Analysis. If this case is granted cert, it should be based on this failure of the Federal circuit to properly apply Supreme Court precedent.

  27. I have yet to read the entirety, but the language Dennis quotes seems to be a fairly good articulation of the principle that the SCOTUS wants courts to follow: using technology in a manner that it was intended to do something that has a meatspace analog does not make that thing patent eligible. Bravo.

    The inquiry might simply be something like this:

    Is there a non-computer analog for what you’re doing?

    If no, there shouldn’t be a 101 issue.

    If yes, then do your claims do something other than what a generic computer is expected to do? (e.g., something other than things like storage, transmission, receipt, and display of information)

    If yes, there shouldn’t be a 101 issue.

    If no, you’re in trouble.

    The second question might actually be a bit more limited: “do your claims do something other than what a generic computer would be expected to do TO ACHIEVE THAT ANALOG?”

    1. >If yes, then do your claims do something other than what a generic >computer is expected to do? (e.g., something other than things like storage, >transmission, receipt, and display of information)

      Inventions are the combination of old steps almost always.

      1. Inventions are the combination of old steps almost always.

        And computer-implemented claims are very often just ineligible information processing steps given fancy names and performed “on a computer.”

        Good riddance to them.

        1. Right. Good riddance you say to the entire field which is probably the most innovative field of all the technologies and which is driving the economy forward.

          But, somehow, despite being a large percentage of the GDP and being filled with Ph.D. with IQ over 150 innovating, somehow it is all abstract garbage. Seriously?

          Lourie may be able to get away with this, but that doesn’t make it right nor in conformance with reality (as in science.)

          1. Good riddance you say to the entire field which is probably the most innovative field of all the technologies and which is driving the economy forward.

            I don’t think that drafting invalid computer-implemented claims is the “most innovative field of all technologies”. What were you referring to?

            In any event, let’s all watch the stock market plummet just like it did after KSR, Mayo and Alice — cases which a certain vociferous crowd of patent-luvvers were certain were “the end of patents” and the beginning of our return to the “iron age.”

            Seriously, this is a major and necessary clean-up. It was a long time coming and it was utterly predictable.

            And yes there’s more to come.

            And yes people will continue to write software. The difference is that they won’t need an attorney to analyze ten million patents first.

            1. …because the stock market NOT plummeting indicates that the owners of patents are NOT all these 1%ers and “grifters” that you are always on about…

              Um, no wait, that’s self-contradicting (and yes, par for the course)

              1. …because the stock market NOT plummeting indicates that the owners of patents are NOT all these 1%ers and “grifters” that you are always on about… Um, no wait, that’s self-contradicting (and yes, par for the course)

                No idea what you’re talking about but please keep arguing with yourself.

              2. “…because the stock market NOT plummeting indicates that the owners of patents are NOT all these 1%ers and “grifters” that you are always on about…”

                That double negative is particularly egregious. I can’t even tell what you’re saying.

                1. Looking up for Big Corp 1%ers that run the industry, you mean.

                  For the (replaceable) lemmings, not so much.

                  Keep marching – and note that Ned’s Neither-Nor scenario that I pointed out on the Copyright thread is now a step closer.

          2. “despite being a large percentage of the GDP and being filled with Ph.D. with IQ over 150 innovating, somehow it is all abstract garbage. Seriously?”

            Your desire to leach off the work of smart people doesn’t mean the government should be handing out monopolies over their work to anyone who comes up with clever paperwork.

            Noticing that there is a profitable industry does not grant you the power to form a private taxation bureau using the patent system to transfer the product of their work into your pocket.

            And identifying the computer software industry as important does not imply in any way that patents on software are appropriate, useful, or beneficial.

          3. But, somehow, despite being a large percentage of the GDP and being filled with Ph.D. with IQ over 150 innovating, somehow it is all abstract garbage. Seriously?

            I’ve gotten to know more than a few such IQ-over-150-innovating types over the years, but have yet to hear any of them speak out in favor of software patents. Not a one. Not in public, not in private. To the contrary, they more typically damn the whole patent system for getting in the way of their work with patents on things that they view as obvious abstractions that should be beyond patenting.

    2. …because computers are not machines… (or something like that…)

      And contrary to the spin, claiming a machine is not ‘magic words’ – it is meeting the words of Congress (the branch that was given the authority to write patent law).

      1. …because computers are not machines… (or something like that…)

        Computers are old machines. Very old machines, in fact.

        That’s the important part that you seem to be missing.

        contrary to the spin, claiming a machine is not ‘magic words’ – it is meeting the words of Congress

        Congress said “processes” were eligible too but nobody believes that language includes “all processes” (e.g., mental processes and other information processing methods wholly divorced from the recitation of objective physical structure in the claim).

        Moreover, Congress certainly didn’t say anything about treating machines as processes, which is one of the key bits of Federal Circuit judicial activism that helped to create this mess in the first place.

        There’s more to come, by the way. The other shoe hasn’t dropped yet. But it will.

        1. I know right. And test tubes have been around for hundreds of years and all this fuss about making new molecules is ridiculous. They are just using the same lab techniques they have used for 100’s of years (and I might add the same atoms too.)

          We need an Alice for the smelly arts where you need to make the molecule with a new step or it is not eligible and you need to use a new atom that hasn’t been discovered or it is just abstract.

          1. We need an Alice for the smelly arts where you need to make the molecule with a new step or it is not eligible and you need to use a new atom that hasn’t been discovered or it is just abstract.

            Why?

            Last time I checked there isn’t a class of wealthy self-important “innovator” patent attorneys sitting around trying to “get rich off the pharmaceutical industry” by trolling them with junky claims.

              1. Isn’t everything about patent law policy-driven? I mean, the Constitution itself bases the ability for Congress to grant patents on a policy reason.

                If patents are used in ways that do not actually “promote the progress” of science, like what we’ve seen with abstract software patents that stifle, rather than promote innovation, then that is in fact meeting the policy goals set forth in the constitution.

                1. Do you have a case cite wherein an injured party had a documented (rather than pure future-conjecture) example of “impeded progress” because of a patent?

                  You do know that what a patent prevents is not other innovation, right?

                2. Move the goalposts back please.

                  Overbreadth is not a patent eligible subject matter issue.

                  Please don’t toss around terms of law that you don’t understand – you just look foolish doing so.

                3. Ok. It was a junk patent that shouldn’t have been issued in the first place.

                  After all, flaps on a wing was patented somewhere in the 1870s in England.

                  As far as Europe went, the Wright patent didn’t slow them down much.

    3. “using technology in a manner that it was intended to do something that has a meatspace analog does not make that thing patent eligible. Bravo.”

      Name one invention that doesn’t use technology in a manner that it was intended.

      A mouse trap uses all of its components in the manner that they were intended. The wood provides structure. The spring provides springiness. etc…

      link to google.com

      1. Name one invention that doesn’t use technology in a manner that it was intended.

        Oh boy here we go again with another round of the “everything is unpatentable if I can’t get the patent I want!” baloney.

        Many methods of administering drugs to treat new indications would seem to fit your bill. But go ahead and make a nutty argument that “proves your point” that you can make a nutty argument.

        1. Administering a drug is ancient. A claim to administering a drug is an effort to capture the abstract idea of treating a disease with a substance.

          Claiming a “new” drug is an effort to claim a natural law i.e., that substance X treats aliment Y or it is an attempt to claim an assembly of components each of which is a natural technology doing what it was intended (bonding to other atoms that it is designed by the creator to bond with).

  28. Dennis: It turns out that the advertising model works for the internet just as it previously worked for radio and television.

    And newspapers. And side show barkers.

    Truly a great day for the patent system.

    Now the PTO needs to do very quickly get its act together and cut off the pipeline leading out of the office until all of the computer-implemented junk like this gets re-routed to the trash can.

    1. I would guess that this is what they were waiting for… Maybe a little more slow stepping until they see cert denied. Maybe.

      This is not good. Not good at all. A lot of patent attorneys are about to lose their jobs. This decision just put an expiration date on many EE/CS patent attorney careers.

      Next up, patentlyo will be discussing the incredibly shrinking patent office and law firm layoffs. Maybe in the same article.

      1. Curious, do you really think that patent attorneys who can deal with circuits, computer architecture, and software improvements to machines and processes are going to be out of work?

        If there are real inventions there to real technology, there should be no “real” problem It is only when the invention is directed to something truly nonstatutory like business methods that one has a problem.

        Take for example, an OS. I think improvements to OSs will have no problems. Ditto, improvement to word processors and the like.

        It cannot be as bad as you suggest.

        1. If software is out the door, yes it will be that bad.

          The brutal secret of EE/CS pros is that most of what has been filed under that EE/CS guise is merely software with some other “nonce” hardware included to skirt past the eligibility line.

          old display + [new gui function]
          old sound processing system + [new audio algorithm]
          … the examples go on and on …

          I think you should take a long hard look at what is actually filed in TCs 2400 and 2600. Most of that stuff is at risk now.

          A friend of mine suggested that for every 1 non-software EE/CS app filed, 10 software apps are filed. From what I have seen, that appears to be pretty close to the mark.

          “software improvements to machines and processes”

          I see the current fad in legal reasoning as software is an algorithm and algorithms are abstract. Addition of old hardware to an abstraction does not confer eligibility to that abstraction. Therefore computer plus software is ineligible.

          I dont necessarily agree with the reasoning, but I am not going to put blinders on and try and pretend that its not there.

          You can bet your bottom dollar that this is the reasoning the PTO will be using in the near future… When the slow stepping stops.

          1. But, Curious, I hardly think it is as bad as you think.

            If the novel software is functional to improve the underlying machine, system or process in a technical way, think Diehr, then there should be no problem.

            Think “printed matter doctrine.” When does otherwise ineligible printed matter become eligible? When it is functional to the eligible machine, article or system to improve the machine, article or system.

            1. A better question is:

              “What is the state of the printed matter doctrine, as currently understood from CCPA and Federal Circuit opinions, in view of Alice?”

              If adding new data to an old computer is not sufficient for eligibility, regardless of the “functional” relationship between the interactions of the data and the computer… Does the functional relationship between words or markings on a substrate and the substrate itself make any sort of difference? I simply cannot see how one can stand and the other fall. These situations either rise or fall together.

              I have some serious doubts that the printed matter doctrine is still good law.

              1. However, Curious, you don’t seem to have it quite right. You stop in the middle. It is not just that the data be functional, but also modify or improve the machine, system or process. See, Diehr.

            2. Not as bad as you think – why? Care to offer any patented software claim that you think would pass 101? Dennis recently made the assertion that he thinks software is patentable on other grounds, but left it at that. Surely we can identify examples in the myriad of existing claims that illustrate patent-eligible software.

              1. Ned’s duplicity is on full display at the recent Copyright thread.

                See also post 1 here: No limits to the sword of “Gist/Abstract” as well as post 12.1.1.1.2.1.1 – as well as the (ALL art field, meh so they go down) response.

                As I have mentioned: the anti-software patent argument is really an anti-patent argument.

                Enjoy the slide on that slippery slope.

                1. Sorry jesse, but no.

                  But please, try to explain why the statement is “false on its face.”

                  Feel free to use logic and step everyone through your thought process and how you got to that conclusion.

                  Or are you just trying to use “on its face” as an excuse to be conclusory?

                2. False statement: As I have mentioned: the anti-software patent argument is really an anti-patent argument.

                  Not all anti-software patent arguments are against patents. They are against patenting abstract ideas. And math is one such idea.

                  Thus false on the face of it.

                3. You are NOT paying attention.

                  The sword of “Gist/Abstract” has no limit.

                  The use of the ladders of abstraction affect 99.9% of all claims in all art units that have any value.

                  Thus NOT false on its face (whether or not those using the ‘logic’ are against all patents is just NOT material.

                  Think man – think.

                4. I answers your question bert.

                  Please don’t tell me that you are going to attempt that lame ‘runaway’ CRP again, are you?

                  You said you wanted some time to answe the questions I put to you, but then supplied some rather empty flash answers.

                  You are a bright boy (I suspect – and hope brighter than jesse), and you should be able to figure out from both the answers I have already given to you, as well as the questions asked of you, what the answers are to your initial questions. I do hope that you at least can apply logic and critical thinking.

                  Perhaps I gave you too much credit and need to hold your hand a little bit. In that case, what do you not understand from the answers that I have already given you?

                5. I didn’t say that I wanted time. Some of the questions that you asked would potentially require essays, they were vague and there’s no way that I’d be able to answer adequately without missing something out.

            3. Ned, you are painfully naive if you think Diehr would survive if decided under the ‘logic’ in play in these decisions.

              You can attempt to mollify now with a comment on printed matter (funny how you now seem to approach my Set C position, but would not engage me in dialogue directly), but all that is is you donning a sheepskin.

    2. And if you are a fresh out of law school EE/CS, you are going to feel as though the world owes you an apology in the near future.

      Start thinking about Plan B.

      Really, everyone in the EE/CS patent pros arena needs to start thinking about Plan B. And if you think Plan B includes a triumphant return to engineering… Well, good luck with that.

  29. As I have previously noted (see concurrence), the Supreme Court has now explicitly added words to those that Congress chose, rewriting the law with “technological.”

    Wrong branch. See US Constitution.

    1. Maybe you should make some giant papier mache puppets of Breyer and Thomas and start protesting in front of the Supreme Court. There must be dozens of people out there like you who want to make a “Constitutional crisis” out of the Supreme Court’s failure to approve patents on the lowest form of innovation.

      1. Your spin of using the emotion laden word of “lowest” cannot hide the fact that you are missing the point.

        You are too busy celebrating the ends achieved, ignoring the means to that end.

        As an attorney, you should be ashamed.

        1. As an attorney, you should be ashamed.

          As an attorney, I feel pretty vindicated that the arguments I’ve been making here for years are now the law of the land.

          And your arguments are lying in a ditch somewhere with pretty flowers growing out of them. Go have a smell.

          1. “As an attorney, I feel pretty vindicated that the arguments I’ve been making here for years are now the law of the land.”

            Actually they always were, it was just the scofflaws on the federal circuit tampering with the law that said otherwise.

  30. >Third, Alice Corporation v. CLS Bank International, for all intents and purposes, >set out a technological arts test for patent eligibility.

    Wow, that is a clear admission from the judiciary that Alice is legislation.

      1. Statutory interpretation? In no way does a technological test come under the heading of statutory interpretation. And the SCOTUS certainly wasn’t anywhere near the statute in Alice, but only in the area of their made-up judicial exceptions.

        So, what in the world are you talking about?

        1. What I’m talking about is this: under our system, Congress makes laws and courts decide what those laws mean when people disagree about it. A “judicial exception” adjudicated by the Supreme Court has as much legitimacy as the statute itself- that’s what co-equal branches MEAN in practice.

          The ‘test’ in question is not bright-lined to a given technology or art area, and even in that aspect, the agency power of the USPTO is fairly substantial itself. What in the world are YOU talking about with “made up” exceptions. Are there any other kind?

          1. Mr. Snyder, you do know that there is a difference between reading a map and writing the map, right?

            You do know that “co-equal” does not trump separation of powers, right?

              1. There is no such thing as a perfect map.

                Now try not to be so obtuse and view the phrase in light of the immediate context.

                Better yet, ask your attorney what this means. Let me know what she tells you.

  31. After decades of pretending that computers were invented yesterday, it looks like US patent law is finally coming out of the weeds. Cheers!

    A quibble with this:

    The claims’ invocation of the Internet also adds no inventive concept. As we have held, the use of the Internet is not sufficient to save otherwise abstract claims from ineligibility under § 101. Narrowing the abstract idea of using advertising as a currency to the Internet is an “attempt[] to limit the use” of the abstract idea “to a particular technological environment,” which is insufficient to save a claim. Given the prevalence of the Internet, implementation of an abstract idea on the Internet in this case is not sufficient to provide any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.”

    It’s not really the “prevalence” of “the Internet” that is the key to the result here. It’s the fact that “the Internet” wasn’t invented by patentee (it’s in the prior art), nor was its usefulness for disseminating information discovered by the patentee.

    It’s also important to remember that it doesn’t matter what kind of information is being disseminated — copyrighted information, previously unwatched movie information, 3-D printer information, real estate availability information, credit card information, bingo scores, etc — because all information is inelgible for patenting. If your claim protects information — any information — in the context of an old system, method or apparatus, then your claim is ineligible.

    These manipulations of “public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.”

    There’s a really big clue there as to one way to “integrate” your claim if you want the claim to be eligible.

    1. MM, may I offer you my congratulations. The position you have argued here for so long, a position I also support, has finally prevailed in the Federal Circuit.

      Were we in the same city, I would suggest that we get together and offer a toast to “our” success.

      We should also offer our congratulations to none other than Richard H Stern, who drafted the government briefs in both Benson and Flook.

      Finally we should also say thank you to the various Supreme Court justices who had a hand in today’s victory: Douglass, Stevens, Breyer and Thomas.

      1. And, MM, might I also add that it is about time for the following to put a sock in it:

        1. AIPLA – the organization that put Rich on the Court and who continued to advocate for patenting computer implement business methods as if reciting a computer were sufficient.
        2. The Patent Bar that continues to snarl like a wounded animal, and which speaks with threatening intonation about the Royal Nine.
        3. The folks at the PTO who Meyer cites as having have had an erroneous view of the ’52 Act on 101 for far too long.
        4. anon, NWPA, 101 and variants, and Paul Cole who believe in nominalisim.
        5. Anyone who filed briefs in Alice suggesting that a programmed computer was “enough.”

        The PTO, armed with this opinion, needs to eradicate not only applications directed to business methods, but any and all examiners who believe they have a right to issue them despite Alice and now Ultramercial.

        1. ” Because the purported inventive concept in Ultramercial’s asserted claims is an entrepreneurial rather than a technological one, they fall outside section 101.”
          Wow! Mayer just overruled the Supreme Court of the United States in Bilski and declared business methods non statutory subject matter!!

          First, this panel completely ignores the Courts Integration Analysis and preemption inquiry, now this. Talk about a bunch of judicial scuff law bad boys. This group is the stuff!

          So is “entrepreneurial” going to be the new code word for business method like filtration is for dissection?

          And if so how could this ever be constitutional? Last time I checked a business degree required a bachelor’s of science. Not a bachelor’s of arts. So business is definitely within the useful arts and sciences and therefore constitutional patent subject matter. And wasn’t the first patent a method for making potash? I am certain that the inventors that were mixing it up were doing it to make money and not simply for the fun and enjoyment of playing with the first chemistry set. Not to mention he created a technological arts test requirement in direct opposition to Bilski and Congress!! That’s some nerve. In fact every invention that has ever been patented since the first has had an “entrepreneurial” concept. Can anyone show me one that wasn’t? And while you are at it show me how you can apply any business method without technology? I can tell you now that no one is going to be able to answer either question factually. Which only goes to prove Mayers new test is not a test at all ( since no business method could pass it) but just a ruse to make an end run around congress and the Supreme Court and in effect make business methods non statutory. I guess these guys have not heard, 3, the new 4, does not make 5!!

      2. I wouldn’t toast yet Ned, even though I am on your side with respect to the outcome.

        Early indications are that the courts are describing an outcome without any distinct stepwise path to get there.

        That’s called arbitrariness, or the whim of the king, and serves nobody well.

        It’s hardly surprising that this should be happening, since pathfinding and clearing require actual work, whereas state of the union addresses require nothing more than whimsical fantasy–and we know how loathe the public sector is to do any ACTUAL PRODUCTIVE WORK, and that includes the CAFC.

  32. PTAB has been going in a polar opposite direction from the Google Ct. on 101. Wonder if that will continue?

    1. PTAB has been going in a polar opposite direction from the Google Ct. on 101. Wonder if that will continue?

      It’s not going to continue.

      Any other questions?

    2. Bluto, I don’t exactly what you mean by stating the PTO has been taking an opposite tact from the Google court, but Judge Meyer identified the PTO as significant part of the problem and not part of the solution. He stated that there should be no presumption of eligibility with patents issuing from the patent office because they have for so long been operating under an incorrect reading of the ’52 Act.

      As was discussed in Meyer’s opinion in Bilski, if I recall correctly, State Street Bank was a major sea change in law and was recognized as such by most. Those who suggested that State Street Bank did not change the law were operating under a very mistaken view of ’52 Act. State Street Bank represented the apex of patentable subject matter heresy of certain members of the Federal Circuit, aided and abetted by the patent office who apparently viewed the ’52 act in the same way.

      The brief filed by the AIPLA in Alice said it all when that brief cited Alappat for the proposition that a programmed computer was eligible per se. I presume that that brief represented the thinking of the AIPLA. How wrong that organization was and probably still is on patentable subject matter.

  33. “Second, no presumption of eligibility attends the section 101 inquiry. ”

    Ok, so who replaced Mayer’s normal concoction for his pipe today? Did he stop reading at 35 USC 281 and skip over to 283?

        1. That would make sense but it is interesting to hear it for the first time from a court that I know of.

          There is a chance though that he’s saying this because 101 is a pure question of lawl, and the presumption of validity is supposedly to affect questions of fact.

    1. Presumptions are for evidentiary issues, i.e., questions of fact. Eligibility under section 101 is a question of law; thus, presumptions are irrelevant and inapplicable.

    1. Makes we wonder if people like Lourie understand the consequences of their actions. Our entire country no longer believes in anything. And when we get Fed. Cir. judges making legislation, it just adds to the general sense that there is no point following any rules and that there is no law. Just get what you need to survive. That is basically what the US has become.

      Lourie backed by the Obama appointments.

          1. Not intended to be an insult. But it does appear that you have many many insults in the comments to this post.

            My point is, even if the judges didn’t like Alice (for example, if Rader was still on the bench), they still have to follow it. This isn’t the Federal Circuit making legislation. It’s following Supreme Court precedent. Maybe you can make that point about the Supreme Court, although I and many here won’t agree, but you can’t make it every time the Federal Circuit or district court invalidates a patent under section 101.

            1. That is not true at all. This is an extension and particular interpretation of Alice. Please. Be real.

              You think that Alice necessitates a technological test, for example?

        1. “Federal Circuit has to follow Supreme Court precedent”

          Newman and Rader never thought so.

          A blogger whose name includes the letter G and the number 3 doesn’t think so.

          Giles Rich certainly never thought so.

    1. He’s telling us the Internet holds some kind of special status as the commons. Disappointing, but not surprising from Lourie. Lourie is real bad.

      1. No – he has modified MoT into more than a clue, while disingenuously saying it is only a clue and also saying that only novel machines are machines.

        This is what happens when a lower court is repeatedly brow-beaten by the Royal Nine.

        Congress: remove patent appeal jurisdiction from the Supreme Court and reaffirm the law as reflecting the words that you have chosen.

        1. Yeah he has done that too. He also re-wrote the claim language without saying he did it. This is real bad. But, Lourie in oral arguments almost spits at attorneys defending software patents. He hates them and it is clear that it is personal. Lourie is not the type of person that should be a judge. He shames our nation.

          1. “Lourie in oral arguments almost spits at attorneys defending software patents. He hates them and it is clear that it is personal.”

            Lourie approved the insanely ineligible claims in this patent twice. Lourie is plainly a radical in favor of software patents of every stripe.

            But Lourie does respect the Supreme Court and is willing to do his job.

            1. >Lourie is plainly a radical in favor of software patents of every >stripe.

              Have you read Alice? The Fed. Cir. version? Did you listen to the oral arguments? Lourie spits at the attorneys for software patents. Lourie’s opinions and attitude align with MM’s.

              Go back to Mayberry Owen.

              1. Have you seen the first two versions of the Ultramercial opinion?

                Even a radical for more and trashier software patents might find himself finally repulsed at Alice as Lourie did; that’s no evidence either way. Signing on to any kind of opinion in favor of eligibility for Ultramercial shows that Lourie is a giant backer of the worst kind of software patents.

                But Lourie has the integrity to do his job and keep his oath of office. That’s not as common a thing on the CAFC as we might hope.

        2. “Congress: remove patent appeal jurisdiction from the Supreme Court and reaffirm the law as reflecting the words that you have chosen.”

          if they did that tho they’d have to choose new words. Too much bother.

          1. …choose new words…

            You mean, like they did once before in 1952?

            Nah, not too much bother, and they could just come out and say that the Royal Nine got it wrong and say that this type of follow on is just as wrong.

            1. Sure, they could always tack some stuff on the end of 101 that says: and we intend to make abstract ideas, lawls of nature and natural phenomena and claims that effectively preempt such eligible as well.

              But then they’d get the whole entitlement program declared unconstitutional so I doubt that’ll happen.

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