Slicing the Bologna: Judge Chen Distinguishes this Business Method from those Found Ineligible in Alice, Bilski, and Ultramercial

By Dennis Crouch

Typically, Supreme Court patent cases alter Federal Circuit precedent, while – at the same time – leaving many open questions for the appellate court to address.  That standard certainly fits the recent set of patent eligibility cases.  In Alice Corp v. CLS Bank (2014) the Supreme Court outlined an eligibility test whose practical impact will vary greatly depending upon how it is implemented by the Patent Office and the court: broadly or narrowly?

In DDR Holdings v. Hotels.com, the Federal Circuit has affirmed the patent eligibility of DDR’s eCommerce patent.  U.S. patent No. 7,818,399. Particularly, Judge Chen authored the majority opinion that was joined by Judge Wallach. Judge Mayer wrote in dissent.  The case is close enough to the line that I expect a strong push for en banc review and certiorari.  Although Judge Chen’s analysis is admirable, I cannot see it standing up to Supreme Court review and, the holding here is in dreadful tension with the Federal Circuit’s recent Ultramercial decision.

The basic idea behind DDR’s patent (as claimed) is to allow a website operator to include various pages within its website that each corresponds to a different merchant (such as a cruise line) with products being sold through a broker (such as a cruise broker).  The various pages will have a look-and-feel that corresponds to the particular merchant (by including, for instance the cruise line logo).  And, the system dynamically populates product options on the site by pinging the broker’s server.  To accomplish all this, the invention uses computer networks in what appears to be standard form without what I would call “new technology.”  Judge Chen writes that a major purpose of this setup is to be able to provide a diversity of stores while keeping customers on the same overall website. Representative claim 19 is posted below.  The accused infringers summarize this as simply “syndicated commerce on the computer using the Internet.”

Patent Eligibility under Alice Corp: The two-step approach to eligibility decreed by Alice Corp first queries whether the invention is directed to an abstract idea. And, if so, then looks to whether the invention includes an “inventive concept” sufficient to “transform” that abstract idea into a patentable invention. In Alice, the Supreme Court particularly held that transformation is not satisfied by merely the recitation of generic computer limitations.

Here, Judge Chen finds that neither step of Alice Corp implicate the patent in question.  In doing so, Judge Chen attempts to cabin-in the scope of ideas that qualify as “abstract ideas.”

Not An Abstract Idea: First, Judge Chen found the solution here to be internet-focused with no direct corresponding offline equivalence. That conclusion is important because it helps distinguish Alice Corp where the Supreme Court found the patented invention there abstract because it related to a longstanding business practice. Judge Chen writes:

[The asserted claims do not] recite a fundamental economic or longstanding commercial practice. Although the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet.

In the dissent, Judge Mayer challenges this conclusion by drawing an analogy to the pre-internet business of having kiosk within a mall or warehouse shore that sells third-party cruise vacation packages.  Judge Chen rejects that analogy because it does not “account for the ephemeral nature of an Internet “location” or the near-instantaneous transport between these locations made possible by standard Internet communication protocols.”  According to Judge Chen, those differences introduce new problems – and it is those problems that are particularly addressed by the patented invention.

In Ultramercial, the Federal Circuit found that even novel ideas can be abstract. Distinguishing from that case, Judge Chen writes that the claims here:

are different enough in substance from those in Ultramercial because they do not broadly and generically claim “use of the Internet” to perform an abstract business practice (with insignificant added activity). Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result—a result that overrides the routine and conventional sequenceof events ordinarily triggered by the click of a hyperlink.

Moving on, Judge Chen finds that – even if the claims are directed to an abstract idea – they do not preempt that idea but instead represent a “specific way” of creating a composite web page “in order to solve a problem faced by websites on the Internet.”

Writing in dissent, Judge Mayer argues that the patents at issue here are “long on obfuscation but short on substance. Indeed, much of what they disclose is so rudimentary that it borders on the comical.”

DDR’s claims … simply take a well-known and widely-applied business practice and apply it using a generic computer and the Internet. The idea of having a “store within a store” was in widespread use well before the dawn of eCommerce. For example, [NLG], one of the defendants here, previously “sold vacations at . . . BJ’s Wholesale Clubs through point of purchase displays.” . . . DDR’s patents are directed to the same concept. Just as visitors to [BJ’s] could purchase travel products from NLG without leaving the BJ’s warehouse, the claimed system permits a person to purchase goods from a third-party vendor, but still have the visual “impression that she is viewing pages served by the [original host merchant].” Indeed, any doubt as to whether the claimed system is merely an Internet iteration of an established business practice is laid to rest by the fact that one of the named inventors acknowledged that the innovative aspect of his claimed invention was “[t]aking something that worked in the real world and doing it on the Internet.”  . . .

The solution offered by DDR’s claims, however, is not rooted in any new computer technology. Its patents address the problem of preventing online merchants from losing “hard-won visitor traffic,” and the solution they offer
is an entrepreneurial, rather than a technological, one. DDR has admitted that it did not invent any of the generic computer elements disclosed in its claims. There is no dispute, moreover, that at the time of the claimed invention the use of hyperlinks to divert consumers to particular web pages was a well-understood and widely-used technique. While DDR’s patents describe the potential advantages of making two web pages look alike, they do not disclose any non-conventional technology for capturing the “look and feel” of a host website or for giving two web pages a similar appearance.

In concluding that DDR’s claims meet the demands of section 101, the court focuses on the fact that “they recite a specific way to automate the creation of a composite web page . . . .” The Supreme Court, however, has emphatically rejected the idea that claims become patent eligible simply because they disclose a specific solution to a particular problem. . . . Indeed, although the claims at issue in Alice described a very specific method for conducting intermediated settlement, the Court nonetheless unanimously concluded that they fell outside section 101.

= = = = =

This case may end up again delaying the expected USPTO examiner guidance on abstract idea analysis.

= = = = =

The patent itself issued in 2006 but claims priority to a 1998 filing.  Five inventors are listed including father-son pair: DD Ross, Sr. and Jr. – hence DDR Holdings.

= = = = =

Claim 19. A system useful in an outsource provider serving web pages offering commercial opportunities, the system comprising:

(a) a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first web pages; (i) wherein each of the first web pages belongs to one of a plurality of web page owners; (ii) wherein each of the first web pages displays at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants; and (iii) wherein the selected merchant, the outsource provider, and the owner of the first web page displaying the associated link are each third parties with respect to one other;

(b) a computer server at the outsource provider, which computer server is coupled to the computer store and programmed to: (i) receive from the web browser of a computer user a signal indicating activation of one of the links displayed by one of the first web pages; (ii) automatically identify as the source page the one of the first web pages on which the link has been activated; (iii) in response to identification of the source page, automatically retrieve the stored data corresponding to the source page; and (iv) using the data retrieved, automatically generate and transmit to the web browser a second web page that displays: (A) information associated with the commerce object associated with the link that has been activated, and (B) the plurality of visually perceptible elements visually corresponding to the source page.

About Dennis Crouch

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

459 thoughts on “Slicing the Bologna: Judge Chen Distinguishes this Business Method from those Found Ineligible in Alice, Bilski, and Ultramercial

  1. Mayer from the dissent: The idea of having a “store within a store” was in widespread use well before the dawn of e-commerce.

    When was the “dawn of e-commerce”?

    I’d place it right about that time that electricity could be used to communicate information. I’m going to go waaaaaay out on a limb here and guess that sometime in the 19th century someone conducted some business using electricity.

    How many patent applicants tried to claim the use of old technology to communicate information related to commerce between, say, 1875 and 1985? Compare those numbers to the numbers between 1985 and the present.

    What happened? The Internet was “more imporant” than the telegraph, the phone or TV or radio? Or did something else happen?

    Here’s what happened: some short-sighted judges 0pened the gates and the lowest forms of innovators rushed in to grab the cash and seek their rent payments from whoever was most compliant. And the Federal Circuit cheered them on and for a while there was nobody around to question what was happening.

    All that changed.

    The “software patenting” industry is going to grow up and they are going to need to do it quickly. Will someone step up and “articulate” something remotely reasonable that works for everybody? If not, then reap the whirlwhind because there is much more to come and the best arguments — all of them — lead to one conclusion: information processing patents are biting the dust.

    Personally, I’d prefer to just rip the band-aid off and get it over with. But we have to let wealthy entitled people down gently, after all. They’re very serious and important. How do we know that? Because they tell us so!

    1. “reap the whirlwhind” [sic] is right.

      Be careful what you ask for, as there is no limits to the sword of “Gist/Abstract” and the logic that the Court uses is not limited to your NIMBY anti-software and anti-business method curse-sade.

        1. Malcolm,

          You are engaging in dissembling again.

          It is NOT “because I say so.”

          I merely say so, because it is.

          If you believe differently, then instead of a vapid insult, please provide the citation per the Supreme Court that delineates this limit.

          1. I can absolutely guarantee that we will not see Malcolm join the dialogue with a legitimate legal point in response to either 46.1.1.1 or 46.2.1.1, as he has NO legal point to be made in response.

            All that he has is bitter invective. He is an empty wagon, clanging noisily along the sidewalk. Repeated calls for him to join the dialogue have all come to the same results: only insults and no legal points.

            Such has been his way for eight years and running.

    2. Rip the band-aid off, stomp on the gas pedal – let’s see where the logic used leads us.

      Let’s do this.

      (even your picture claims fully in objective physical terms won’t be safe)

      1. even your picture claims fully in objective physical terms won’t be safe

        Because “anon” says so! “anon” either gets his way or nobody gets anything.

        Deep stuff.

        1. Again Malcom, all that I am doing is not wavering in applying the logic that the Court itself wields.

          If you disagree, then please provide a substantive counter instead of mere insults.

      2. What makes you think this is going to happen? I’m genuinely curious.

        (this=invalidate picture claims fully described in objective physical terms…presumably under 101)

        1. go,

          Once you realize that both parties in the Alice case had stipulated that the statutory category aspect of 101 had been met, it is entirely logical to realize that any claim drafted to meet any statutory category is not safe.

          That naturally includes even picture claims.

          The oddest thing about this being that Malcolm has expressed this very thing and Malcolm’s erstwhile buddy Ned continues to post as if the Supreme Court in Alice somehow hewed to some fantasy version of “statutory” in which Ned plays pedantic semantics by using only the word “statutory” when he means “statutory category.”

          1. That’s an interesting idea, and I’ll admit being a little skeptical.

            Here is a recent claim from 8906014 describing a medical instrument:

            ****
            IC1:

            1. A medical instrument, comprising: an endoscope having an endoscopic shaft and an eyepiece, an instrument shaft having a distal end, a proximal end and a longitudinal axis, a work element arranged at said distal end of said instrument shaft, a handle arranged at said proximal end of said instrument shaft and having at least one moveable part for actuating said work element, a first securing element for securing said endoscope to said distal end of said instrument shaft in a direction transverse to said longitudinal axis of said instrument shaft, and a second securing element for securing said endoscope to said moveable part of said handle such that actuation of said movable part of said handle is configured to displace said endoscope relative to said instrument shaft in a direction of said longitudinal axis of said instrument shaft, said first securing element and said second securing element being designed in such a way that said endoscope is arranged alongside of an outside of said instrument shaft at least between the distal end and the proximal end of the instrument shaft, and wherein said eyepiece of said endoscope, in the state when said endoscope is arranged on said instrument shaft, lies outside of said longitudinal axis of said instrument shaft, wherein said endoscopic shaft extends from said distal end of said instrument shaft to said second securing element, and wherein said endoscopic shaft has a curvature between said first securing element and said second securing element, said eyepiece being at an angle to the longitudinal axis of the instrument shaft.
            ****

            This claim seems pretty structural to me. Is it your position that this claim can (would??) be invalidated under 101? I’m very curious what that analysis might look like.

            1. go,

              It is more than just an interesting idea and frankly, I don’t give a rip about your level of skepticism, nor will I accept your invitation to jump into the briar patch and discuss the offered claim.

              If instead you wish to discuss the law and have a legal argument to make in response, I would be more than happy to continue the dialogue.

              1. Anon,

                You’ve made the (fairly remarkable) claim that courts can (and will?) invalidate an apparatus claim defined in objective structural terms. To my knowledge, this is something no court has ever done.

                All I did was ask you for an example of what that analysis would look like. It is your theory: are we supposed to guess?

                Feel free to provide the claim of your choice and apply the analysis. I’m very curious.

                1. go,

                  It’s not a theory.
                  It’s not even fairly remarkable.

                  It’s a simple application of loci and understanding of what actually happened in the Alice case, in which the Court wiped out a claim stipulated by both parties as having met the statutory category part of 101.

                  No guessing need be made.

                  Why are you struggling with this legal concept? Do you really think that there is some delineation of meeting the statutory category aspect of 101 and REALLY REALLY meeting the statutory category aspect of 101?

                  How did you get through law school without developing critical thinking skills?

              2. Anon, while Go Away Author, may not call you names like Malcolm, I would not put to much hope in any kind of substantive discussion from him. It has been my recent experience that he will ask a long series of repetitively redundant questions, then just Go away.

    3. Idea of having a “store within a store” was in widespread use well before the dawn of e-commerce”

      Dear Judge Mayers,
      So what?
      Here the claim is fully enabled, useful and is to be considered as an, “Integrated whole”. See Diehr, Mayo, Alice. In addition what is the logical reasoning for declaring that the idea of the invention is old? After all, isn’t every invention a mere improvement of an old idea? And even if your approach to distill the invention down to the gist of an idea, like a store within a store, is correct, doesn’t the Supreme Court require you to determine if the idea is “Integrated”, into the claim to the point the idea itself is not preempted? Again, see Mayo and Alice. In fact if you proceed with the subsequent preemption inquiry as the Court said you, “must”, you would reach the same conclusion as Chen, and Wallach. You would see that the claim is not directed to and does not cover the idea of a store within a store, and is therefore patent eligible subject matter.

  2. From Judge Mayer’s dissent (is he “anti-patent” or just the voice of the lone judge on the panel who wasn’t born yesterday and who actually understands the Supreme Court’s opinions in Mayo and Alice (not to mention the CAFC’s own precedent):

    DDR’s patents are long on obfuscation but short on substance. Indeed, much of what they disclose is so rudimentary that it borders on the comical. For example,
    the patents explain that two web pages are likely to look alike if they are the same color, have the same page layout, and display the same logos. See ’572 patent col.14
    ll.5–18. The recited computer limitations, moreover, are merely generic. The claims describe use of a “data store,” a “web page having a link,” and a “computer processor,” id. col.29 ll.1–13, all conventional elements long-used in ecommerce. Because DDR’s claims, like those at issue in Alice Corporation v. CLS Bank International, “simply instruct the practitioner to implement [an] abstract idea . . . on a generic computer,” they do not meet section 101….

    The court concludes that the asserted claims of DDR’s ’399 patent fall within section 101 because “they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.” Ante at 20. This is incorrect.

    It’s incorrect in multiple ways, in fact. First, legally it doesn’t matter if the otherwise ineligible business idea was from the “pre Internet world.” Second, the Internet is old and, for patent purposes, it’s ancient. That’s key. It’s time for Chen and Wallach and the entire field of Internet patent lovers to grow up already and stop pretending that we were all born yesterday.

    DDR’s claims do, in fact, simply take a well-known and widely-applied business practice and apply it using a generic computer and the Internet. The idea of having a “store within a store” was in widespread use well before the dawn of e-commerce.

    Indeed. This has to be explained to people? By a team of experts and attorneys? At a cost of hundreds of thousands of dollars not to mention the wasted time?

    [A]ny doubt as to whether the claimed system is merely an Internet iteration of an established business practice is laid to rest by the fact that one of the named inventors acknowledged that the innovative aspect of his claimed invention was “[t]aking something that worked in the real world and doing it on the Internet.”

    Appeal this decision and watch these claims melt like grilled cheese on molten lava. What an incredible joke.

    1. 1. Where does Judge Mayers get the legal authority to create an exception to statutory subject matter for inventions that have an “Entrepreneurial” solution as opposed to a technical solution?

      And providing you can even supply the proper pincite(s), define exactly what an “Entrepreneurial” solution is, pl and how it’s different from a technical solution.

      1. 2. Where in Judge Mayers dissent does he address the Supreme Courts use of the legal concept of “Integrated” claims, that the Supreme Court used in Prometheus v Mayo to characterize and reconcile the claims and decision in Diehr with it’s precedents?

        If Mayers understands Mayo like you say he does than surely he explain how his own legal propositions are in concert with the Court’s Integration Analysis, right?

        And since you are a self proclaimed patent attorney on this blog, surely you can do the same, right?

        After all the same “Integrated” framework was reiterated by the Court in Alice, and incorporated in two Official USPTO Guidance on how to determine 101 statutory subject matter.

        1. 3. Where does the Supreme Court in Alice interpret the constitution or congressional statute to include a technological arts test for eligible subject matter, as Mayers proclaims in Ultramercial III, an pressumes in his dissent.

  3. Here’s my counter proposal (not off the top of my head):

    The only reason why the doctrine of Mutual Assured Destruction worked (and it cannot be stressed enough that the doctrine did in fact work, no amount of anti-Reagan spin can change that, no matter what “political leanings” you may have) was that the enemy believed that we would in fact pull the trigger.

    Please feel free to take a stand that matters: Churchill – not Chamberlain.

    What we see – polite as from ‘go’ and otherwise, is an incessant call to “blink” and indicate that “gee, we shouldn’t pull that trigger.

    Bottom line people is that accountability even and especially through the difficult time is what makes us ALL stronger in the end.

    The Court wants to play “policy-maker?” Then they have to see the ramifications of it. Accountability for the inevitable conclusions is the proper means to whatever ends we hope to achieve.

    This has an exact parallel in their wanting to unleash a “Gist/Abstract” sword without limits.

    Why should the side that reads the law as intended by Congress even want to offer a “fallback” position?

    Please feel free to take a stand that matters: Churchill – not Chamberlain.

    Is this a “strong” analogy?
    Yes.

    Does it disrespect those that actually suffered under the Chamberlain fallout and “fallback position” consequences?
    No.

    Was the object of the controversy that shaped our separation of powers doctrine far far far less important than the engine of innovation?
    Yes.

    Why then shy away from a strong analogy? Would not the advice to just [shrug] and move on be far far far more fitting for a mere Justice of the Peace commission?

    Please feel free to actually engage this conversation instead of trying to sweep it under the rug.

    Please feel free to take a stand that matters: Churchill – not Chamberlain.

    1. “Why should the side that reads the law as intended by Congress even want to offer a “fallback” position?”

      Because otherwise when the germans blitzkrieg yo static defenses your whole country falls in a matter of weeks and you never really recover.

      For all your blabbering about WW2 you sure didn’t learn any lessons from it. Software patents are France, a big juicy target right up front in the war with tissue for defense. Not England with a nigh impassable barrier surrounding you like the patents in the actual Useful Arts have.

      1. 6, you have a good point there about France. England could declare war on Germany all day long and not seriously be threatened with invasion.

        But France?

        What in the world were they thinking?

        And Poland. What were they thinking when they actually believed that England would come to their defense by sending tanks and planes? Were they out of their minds?

        Poland needed the USSR as an ally, not England. But Hitler got there first.

      2. In the metaphor sense, France did not have the bomb.

        Mutual Assured Destruction of Fully applying the logic that the Court wants to use, fully wielding that “Gist/Abstract” sword…

        Try again with your analogy 6.

        1. “In the metaphor sense, France did not have the bomb.

          Mutual Assured Destruction of Fully applying the logic that the Court wants to use, fully wielding that “Gist/Abstract” sword…”

          ^I can’t even tell what this gibberish means.

  4. Ok, here is my proposal (off the top of my head) for how we should protect software, through a modified patent system:

    1. Shortened term, something like 5 years from the date of issue. We would need some procedure to ensure that prosecution can’t last too long.

    2. Lowered standard of obviousness, this is sort of the trade off for the shorter term. We would still require novelty. I’m not sure exactly how much lower it should be.

    3. Limited/no functional language. This is necessary for a variety of reasons that have already been discussed.

    The idea would be very quick and easy prosecution, a short term, and is only enforceable against parties that are basically copying your software. There would need to be some doctrine of equivalents to prevent trivial variations. The way I see it, a system like this would be better suited to protecting software.

    Thoughts?

    1. You offer a lot less at a higher “cost” and wonder why I don’t just say – look at how the law really is…?

      This is worse than Chamberlain.

      No thanks.

      1. anon, speaking of term, we agonized in ensuring that patent owner would get a minimum of 17 years of exclusivity when moving from a term measured program to a term measured from filing date. That is why we enacted patent term restoration if prosecution took more than three years.

        But all we did there has come to nothing because reexaminations and IPRs have made a mockery of the guarantee of 17 years exclusively. All the while a patent is an reexamination or while it is subject to an IPR it is not enforceable because courts routinely stay actions. Because the bar to begin a reexamination or an IPR is so low as to be nonexistent, the patent owner can be kept in the patent office until his patent expires by those with the money to file petitions. This is a fact.

        All we hear from the infringer bar is that reexaminations and IPRs are for reducing the cost of litigation. The reality is far different. Reexaminations and IPRs as a practical matter are used by the wealthy to impose costs on the impecunious through PTO litigation costs by keeping their patents tied up in the patent office until the patents expire or the patent owner gives up or goes bankrupt.

        When two major companies actually engage in litigation over validity, it makes no real difference whether that litigation occurs — in the patent office or in the courts. But it does make a difference if the one side has deep pockets one the other side depends upon a judgment for damages or ongoing royalties at some time reasonably soon in order to finance the litigation. It is clear that reexaminations IPRs are fundamentally unfair given the low threshold and routine court stays.

        The patent office is not had has never been serious about enforcing a high threshold. They routinely begin reexaminations and IPRs over the very same art which effectively allows the PTO to reconsider their own examiners and the judgment of juries and courts. What the heck is going on? Did we really think this through or is this an agency gone amok?

        There is little doubt now that patents do not have any guarantee of term at all. A patent is not a right of exclusivity, but a guarantee to litigate for years in the PTO until one gets it through one’s thick head that he or she can never prevail.

        The PTO, whether it likes it or not, is primarily to blame here. The patent system is going to soon fall apart unless the PTO Stops what it is doing and reverses course.

        1. Interesting thoughts Ned.

          You almost seem to be at the point I advanced previously that there is a taking by the Executive branch with any non-voluntary post-grant removal of one of the sticks in the property rights bundle.

    2. Your “offer” -confusing and conflating copyright as poorly as it does make me question whether you understand either what patents and copyrights protect.

      As politely as possible, you need to get your money back for your legal education.

  5. Greg Aharonian: Show me one patent or patent application that is not valid that CAN’T be invalidated with 102/103/112

    Greg, the answer is the Mayo patent and the reams of similar method claims that recite (1) old technology (e.g., data gathering technology, data storage technology, data transmission technology) and (2) ineligible but non-obvious information (e.g., a correlation).

    You can’t invalidate those claims under 102/103/112 … unless of course you want to move the subject matter eligibility analysis into those statutes, in which case it’s not clear at all what point you’re trying to make.

    Subject matter eligibility concerns do not go away just because you call them somethiing else. And they’re never going to go away. You need to get used to them and start thinking more deeply about the problems that were caused when people (invariably people directly invested in an exploding patent system) turn a blind eye to the enormous problems that arise when the gates are opened too wide.

    1. MM,

      Let me be a bit more specific about eliminating 101. I would eliminate everything from 101, except for “useful”. Or I would move “useful” into 102 – something has to be “new and useful”, and fully delete 101.

      So let’s take Mayo. “old medical technology” + “new type of old medical correlation”.

      With my modified 102, pretty much all of the claim is ineligible for not being novel. And I doubt highly that acting upon medical correlations is novel. So I am left with this new correlation, which depending on its enablement in the spec, I can argue isn’t “useful” under modified 102 or is “obvious” under 103.

      And more easily, for the Benson, Bilski, Alice and Ultramercial patents – all of which spawned horribly-written 101 case law, I have found plenty of 102/103 prior art for clear invalidity arguments. Even Benson has 102 prior art, not disclosed at the time of Benson, but if you really have to know university library systems to find that prior art. 101 wasn’t needed in any of these cases,

      So take “useful” out of 101, put it into 102 or 112, and get rid of 101.

      What do I have do, pay Reines to bribe Congressmen to pass 101-killing legislation? (and I consider the entire PatentlyO forum unethical for refusing to talk about the possible violations of criminal statutes by Reines and Rader with Reines gifts to Rader). There should have been a collective letter from the PatentlyO forum to the Justice Department asking them to do what the CAFC, in its unethicalness, refused to ask – to have the DoJ investigate what Reines gifted to Rader.

      1. It’s interesting that you seized up on the one term I omitted from the hypothetical (and which I usually include for just this reason).

        Shifting everything over into “useful” isn’t going to get us anywhere, Greg, unless you want to define “useful” in some special way. If you don’t provide that special definition, rest assured that the courts are going to do it for you (with the assistance of people like me who understand why we have subject matter eligility restrictions in our patent system).

        Greg A: I am left with this new correlation, which depending on its enablement in the spec, I can argue isn’t “useful” under modified 102 or is “obvious” under 103.

        In fact you can’t argue that it’s “obvious”, Greg, because it isn’t obvious. You don’t get to rewrite my hypothetical. And I don’t think it’s easy to argue that the typically newly discovered correlation is “obvious” (true of many newly discovered and patent ineligible facts).

        What’s your argument that a fact (like a correlation) that could save the lives of millions of children isn’t “useful”? That would be an interesting argument to read. I’m going to go way out on a limb and guess that it sounds something not terribly different from a subject matter eligibility argument.

        What do I have do, pay Reines to bribe Congressmen to pass 101-killing legislation?

        You can pay any Congressperson as much as you want. Your legislation will be tanked as unconstitutional within a year.

        I have found plenty of 102/103 prior art for clear invalidity arguments.

        That’s nice. I have found plenty of “experts” more than happy to accept a wad of cash in exchange for testimony that will make your “clear” arguments seem far less clear to a judge or a jury. Besides, on the 103 front at least we’ll have to battle it out over all those “secondary factors” some of which have little or nothing to do with the technical substance of the prior art and everything to do with the magical story that my expert and my smooth talking Texas attorney is going to tell about the bad old corporate copyist making boatloads of money off “the little guy”.

        I’m all for patent reform, too, Greg. But getting rid of subject matter concerns is a really bad idea. Thankfully it’s never going to happen.

      2. “something has to be “new and useful””

        Then you just moved the exceptions to 102. The “new” part is the part with the exceptions included brosefus.

        No point in your suggested amendment.

        1. Actually 6, the “new” part is not the part impacted by the exceptions. see Chakrabarty, and remember that the universe, the warehouse of nature, is not a static thing.

      3. “I can argue isn’t “useful” under modified 102 or is “obvious” under 103.”

        You can argue that. But you’ll lose because it would be incorrect. “claim as a whole!!11!11!!” it is “useful”. Likewise, “claim as a whole” for 103, and it isn’t obvious. Sorry. You lose.

        Now, maybe if you take out the “claim as a whole” part from 103 you’ll be in business, at least for the mayo case, but not for many many others.

      4. “and I consider the entire PatentlyO forum unethical for refusing to talk about the possible violations of criminal statutes by Reines and Rader with Reines gifts to Rader”

        A forum is “unethical”? Lulz? You and anon and your dreams of “unethics”.

        1. 6,

          Not sure why you think ethics is something that cannot be brought up or discussed, or that certain people really are constrained by such rules.

          Most odd.

      5. “There should have been a collective letter from the PatentlyO forum to the Justice Department asking them to do what the CAFC, in its unethicalness, refused to ask – to have the DoJ investigate what Reines gifted to Rader.”

        You do know that you can make that submission yourself, without the “whole forum” here on PO correct?

    2. Consider the claim to an old method or to an old composition, plus newly discovered information, which newly discovered information is a property inherent in the old method or the old composition.

      Can we “repatent” the old method or old composition and simply recite the newly discovered inherent property, or should we limit the patent to the use of the newly discovered property to do something useful? Clearly the newly discovered information is useful, but authorizing patents on old methods and old compositions would make infringers of those who are only practicing the prior art.

      Is this issue one of 102/103 or of something else?

  6. News flash for Greg Aharonian: getting rid of “101” doesn’t get rid of subject matter eligibility issues.

    Nice try, though.

      1. “Lost” in translation, NWPA, the extra-statutory writing of patent law by the judicial branch is the ‘example’ that should be clear to everyone.

  7. To Greg Aharonian: I have had a challenge on here for months for someone to come up with an invention where 101 would remove it from eligibility when 102/103/112 would not.

    Not a single one despite many attempts has been presented.

    1. See my aggregated claim at 32.3.2.

      Note that 101 is NOT just a statutory category listing (and should not be parsed to read that way).

      101 is both a statutory category AND utility requirement.

      It is with this basic understanding – my consistent stand on 101 – that defeats the parsed “nominalist” smokescreen from Ned.

      It has never been the case of “you fit a category and you pass 101” as the utility requirement has always ALSO been there.

      6 squawks below about Useful Arts, and (once again) reveals his ignorance of what that term means.

      Bottom line here is that 101 was never meant to be used as such an @tom bomb of limitation and the necessary – yes people, necessary – consequence of a judiciary using it for its policy “wants” is that there is NO “fallback” position that is tenable.

      It’s only Czechoslovokia did not work in the past, and will not work here.

      There is nothing at all reasonable in the anti-software patent crowd looking for those who recognize what the plain words of Congress means to come up with some “fallback” position. Why should we aid those that would subvert the law? Why should we alliviate the natural consequences of that subversion?

      The tactical and best answer is to STOMP on the gas pedal and accelerate to reach the logical conclusion faster, so that the clarity of that logical conclusion is front and center for those wishing to subvert the law to see the fruits of their labors.

      Yes, this point could be put forth politely (re: go), but the point must be emphatically made and the attempts to pooh-pooh it rejected (re: Paul Cole).

      The reality is that there is an ideological war going on. The reality is that the patent system is under attack. Politeness has its place – but the call for politeness must not be allowed to obfuscate the reality of the ideological war that is being waged.

      1. Anon,

        When you suggest that we ‘stomp on the gas pedal,’ are you suggesting that:

        because the Mayo/Alice framework is ambiguous, courts will start invalidating structural mechanical/chemical claims under 101? Functional claims will come under attack? Both? Thanks.

        1. go,

          I am suggesting that actions be taken that highlight rather than obfuscate the inherent illogic and disregard for statutory law.

          What the courts do is up to the courts**.

          **aside from additional suggestions that I have made which include Congress acting under its constitutional authority and limiting a section of appellate review from the Supreme Court. While this suggestion was pooh-poohed as “too difficult,” the legal grounds of the suggestion stand scrutiny. Yes, this suggestion would be difficult to enact – due more to the current state of Congress, than to any legal ‘infirmity’ of the suggestion itself.

      2. If you take “useful” out of 101, delete the rest of nonsense, and put “useful” into 102, then your aggregated claim “bicycle, goldfish, hammer and fake lemonade stand” is an aggregation of objects that are not novel (plenty of prior art) and there is no novel synergy claimed (as required by tons of case law). Thus your claim can be invalidated under a modified 102 with no need of 101.

        I repeat, the only purpose of 101 is to allow the courts to play philosophical games with terms that they don’t understand to drive up costs for patent applicants and patent owners.

        We can easily incorporate 101’s “useful” into 102/103/112, and junk the remainder of 101 that has no use. As I said, read many of the Bilski briefs that argued this solution in more detail.

        You support 101? You should driving up the costs to use patent applicants and owners. Go steal candy from children.

        1. I hear you Greg – and only pointed out that 101 has been twisted like a nose of wax beyond recognition.

          Note too that Malcolm’s pet theory disappears if 101 were to be treated properly and as Congress wrote it.

    2. NWPA: To Greg Aharonian: I have had a challenge on here for months for someone to come up with an invention where 101 would remove it from eligibility when 102/103/112 would not. Not a single one despite many attempts have been presented

      To Greg Aharonian: there’s a big difference putting someone failing to meet a challenge and some guy on a blog failing to acknowledge that the challenge has been met in spades a million times.

      Just a friendly reminder as to how things work sometimes.

  8. PART I

    I would simply like to give credit to Judge Chen for being the first Federal Circuit judge to come close to completely applying the Supreme Court’s Integration Analysis, as established in Prometheus v Mayo. What Chen clearly understands is that all fully enabled claims enjoy a presumption of Integration, and as such, there is no legal, logical, or scientific reason to filter the claims down to an abstract gist. Nor is there any legal basis to superimpose a court created concept onto the invention and determine the claims to be directed to that concept, as was done in Ultramercial lll.

    1. PART II

      It was very astute for Chen to apply an even if scenario, and demonstrate that even if the court did declare the claims abstract, the claims did not preempt the abstract idea itself.

      1. The problem we have is that the fed. cir. is stacked with judges that have never shown any interest in science before getting their gravy train appointment.

        Taranto, Hughes, Reyna should step down. They are unfit.

  9. It is obvious that in the 50+ years since Benson, the entire federal judiciary has been unable to resolve the issue of 101, relying on judicial legislation, violating their own precedents, layering on additional undefined terms, and a variety of lapses in construction logical arguments. As many of the amicus briefs argued in Bilksi, 101 can easily be removed from the statutes by relying on 102/103/112. 101 is the appendix of patent case law.

    There can be only one professional reaction to these latest 101 confusions – time for the patent bar to organize an effort to have 101 repealed. The only reason to support the continued existence of 101 is to force applicants to spend more money acquiring patents. Every patent in these cases – Bilski’s, Alice’s, Ultramercial’s – there was plenty of 102/103 prior art for clean invalidity charts. 101 is not needed. Indeed, Justice Thomas’ “abstract” argument in Alice used logic solely for 102 and 103.

    101 must be vanquished. Its case law is a cancer in the system. Will any of you leaders in the patent bar, in the academia, step forward as a leader and champion this vanquishment?

    1. Greg, you cannot be serious. 101 has been with us in substantially the same form since 1793. It is foundational.

      The advent of computers presented a challenge. Rich also had a view about the relationship of 101 to the rest of the statute. The combination resulted in a long test of wills between Rich and the Supreme Court. Rich had strong views and a bully platform, and in a Supreme Court went out of it way to be unclear and limited in its holdings so as to not strangle prematurely the new computer/software industry. The seesaw battle was epic, and should make a good story.

      Randy R, why don’t you sit down and write it. You knew Judge Rich well.

      1. Ned,

        I am completely serious about eliminating 101. As were all of the writers of many amicus briefs in Bilski, who very strongly argued that there is no practical need for 101 – that 102/103/112 can filter non-inventions. Show me one patent or patent application that is not valid that CAN’T be invalidated with 102/103/112, with no need for vague/meaningless semantics.

        The statute has become obsolete, it only use to be to provide an opportunity for the Supreme Court and CAFC to inflict incoherent case law on patent applicants, who have to pay more and more to obtain their patent rights. I don’t care about these squabbles of Judge Rich. He’s not around any more, and too many of the current federal judges don’t care in the least about the increased costs their decisions create for patent applicants. We don’t need any useless law review article about “history”. What we need are law review articles with proposals on how to eliminate 101.

        101 continues to exist for only one reason – to drive up the costs of acquiring a patent. It provides no other use. It is time that someone championed the interests of patent applicants and patent owners, who pay the bills for this intellectual circus. To argue against eliminating 101 is to argue for driving up costs.

        Greg

        1. 1. 101 does not always drive up costs. Or, at least, it depends on the costs you are talking about. For example, we have seen recent patent litigation cases dismissed under 101 on the pleadings. Surely this lowers costs?

          2. Speaking of costs, when you mention ‘championing interests,’ what of the 99.9999% of people who don’t own patents that can be invalidated under 101. Surely 101 lowers costs for them by removing (in my opinion) silly patents?

          3. For an example of a claim that cannot be invalidated under 102/103/112, Mayo provides a good example. Basic format, as MM would say is [old step] + [new thought].

          1. …and I am curious as to why an ultra-polite, yet ultra-Malcolm fan gets one of these Congressional law written “I think that’s silly” defeat the law powers.

            Because, as any attorney really knows, such “power” runs naturally from law school’s indoctrination of the respect for the rule of law.

            Well, at least that’s what the Infringers Handbook chapter 17 Plying Politeness says.

            Or maybe you conveniently forgot about the law part about patents and presumption of validity and such (and your oh so willing eagerness to already believe in invalidity)

            Oops.

              1. and I would say that you forgot that legislating from the bench is not the mechanism for enforcing the will of the people (the legislative function does not belong to the judiciary), but you would have to have known that first in order to have forgotten it, and frankly, your grasp of such basics indicate that you have never known the law.

                1. Of course “anon” has no problem with “legislating from the bench” if it gets “anon” the result that he wants.

                  But he’s super “principled” and serious, folks. We must pay attention to his deep thoughts on his favorite pony.

                2. And you forget that it is the judiciary that has to interpret the laws.

                  You may not like it, but it is still better than forcing the laws to be declared unconstitutional.

                  And times change. And that change requires reinterpretation.

                  Personally, I would prefer all laws to have automatic expiration dates. That way updated laws would be put on the books, and laws that are no longer sensible would disappear.

                3. jesse,

                  Your inability to recognize and appreciate the terrain upon which you stand is highlighted once more. Please read – and understand – Sun Tzu.

                  it is still better than forcing the laws to be declared unconstitutional” is simply NOT true if the means to that end is itself unconstitutional (violating the separation of powers).

                  The ends do not justify the means.

                  Ever.

                4. …and jesse, may I remind you yet again that interpreting the law (even re-interpreting it) just is not the same as being allowed to write the law.

                  I invite you to explore the ethics side of the blog, as Prof. Hricik has written on this fundamental legal difference.

                  Please inform yourself.

                5. Anon, If the courts are not allowed to interpret the laws, then they cannot supervise a court.

                  And there would be no justice system.

                  Interpreting laws is part of the courts duty.

                6. jesse – pay attention.

                  There is a difference between reading the map and writing the map.

                  Interpretation is NOT at issue – writing the law is.

                  As I have also explained, there is a clear difference between common law, in which judges can write law, and statutory law, in which judges are constrained (see the movie The Paper Chase at the one hour six minute mark).

                  Try to keep up with the dialogue.

        2. I agree with you regarding the cancer though.

          And also I agree with you regarding:

          “and too many of the current federal judges don’t care in the least about the increased costs their decisions create for patent applicants”

          It’s true. Nobody cared when the floodgates didth open with SS bank etc. Nobody much cared that huge costs would follow such a tremendous blunder that the CAFC suffered. They were all just giddy to expand the entitlement program.

          1. >>They were all just giddy to expand the entitlement program.

            6, you have been nothing but a Fed. Gov. employee your whole life. You are laughable.

            I’ve worked for international corporations, lead development work, invented, worked as parts of teams in innovations, etc.

            You have absolutely no idea what you are talking about. Quit your job and go work in the real world. Entitlement program? What a joke. The big tech companies I work for pour money into innovation so they can have a good patent portfolio. The patents are integrated with the tech teams and patents apps are used as a way to determine whether something is a new chunk above what they were doing or not and as a way to explain what is going on.

            Entitlement program? Ha! You are a federal government employee. Shhhh. You have no right to say anything but thank you tax payers for your money.

                1. “Nobody much cared that huge costs would follow such a tremendous blunder that the CAFC suffered. ”

                  “It means that 6’s opinion with nothing more is meaningless.”

                  I don’t think those huge costs are meaningless. But maybe you do.

        3. I agree Greg. Not only that but what Judge Rich said would happen is happening. He said that if you expand 101 then you are necessarily going to then put 102/103/112 tests into 101 which makes no sense. Alice clearly has 102/103/112 tests built into it so that it is doing a patentability test eligibility test all rolled into one.

        4. What we need are law review articles with proposals on how to eliminate 101.

          Go ahead and write one.

          Maybe you can tell everyone what you intend to replace “101” with because nobody is ever going to put up with a patent system that doesn’t have a subject matter eligibility filter of some sort.

          Why do we think nearly everyone who isn’t directly invested in patent expansionism has been pressing for these recent Supreme Court decisions on 101? Just for grins?

          And there’s more to come, Greg. If you don’t like it, maybe it’s time to get out of the biz.

          1. “Invested in patent expansionism”

            Tinfoil hat moment of the day.

            Yep from the type of pro-patent person all the Amish children running through the field of grain must be trained to adore.

        5. Well, Greg, the solution is at hand. Just read Section 282. 101 is not expressly included. What does that mean?

          Prof. Hricik has been arguing that 101 is not a defense to the validity of an issued patent for this reason.

          Note that printed matter is a 101 type exclusion, but it is handled in 102.

          And, I fundamentally agree that 102 provides a better home for the analysis. I reference Hotel Security which first divides a claim into the statutory and nonstatutory and focuses the novelty inquiry solely in the statutory. Without 101, the division could be between the useful subject matter and the non useful, or something like that.

          Thus in analyzing the old CD with improved music, where novelty was in the non useful music, the claim could be unpatentable under 102/103 because the sole novelty was in something non useful.

          1. Ned,

            Your views on printed matter are deficient and will continue to be until you recognize what I explained to you with the easy to understand Set B and Set C post.

            (and please, once again, use the full and correct terminology instead of your pedantic shortcut – yes, Ned, you do run the risk of appearing two-faced by accusing others of being “nominalists” while also wanting to depend on those same nominalist categories, but at least you won’t be succumbing to being obfuscatory).

            1. anon, I still am not sure of what you talking about. Printed matter that simply relates to the underlying subject matter the way any printed matter has historically related provides no patentable weight.

              Do you agree or disagree?

              Printed matter that relates in a new way so as to modify or improve the underlying subject matter is patentable subject matter.

              I simply do not understand your third path. Can you explain just a bit more?

              1. Ned,

                Functionally related is NOT how you characterize with “new way so as to modify or improve the underlying subject matter

                The only way for you to not understand even after my crystal clear Set B and Set C explanation is by your choosing not to understand.

                I have referenced the explanation many times, provided links many times, BEGGED you to discuss any drawbacks with my explanation when I gave it.

                Your have never responded on point. Instead you have played the waiting game coupled with the Vinnie Barbarino schtick.

                Can I explain just a bit more?

                Why should I when the explanations already given should suffice? The Set B and Set C discussion cannot make it any simpler to understand.

              2. Leaving aside software entirely, the band in the hat band case did not modify or improve “the underlying subject matter.”

                Likewise, the markings on the glass container did not modify or improve “the underlying subject matter.”

                “Underlying subject matter” is in quotes given your already bizarre habits of twisting the statutory categories points, for which you have yet to come to grips with my identification of your chicanery.

                It is abundantly clear that you would use the “Gist” effect as to some magic determination of what “underlying” means.

                Dissect the word, implict/explicit add “hand” to the “under” portion, and let the last two syllables stand on their own, and we have an apt description of what is going on with all of the pedantic semantics.

                1. anon, I understand the point you are trying to make — it is the main argument against the MOT in that many times the patentable invention does not alter in any permanent way the underlying subject matter, e.g., washing a cloth.

                  But, you must agree that the printed matter should have some relationship to statutory subject matter so that something useful is done to it or with it?

                2. Ned, if you understood my point (or perhaps more accurately, acted in accord with understanding my point), you would desist from your chicanery. The only relationship needed is to be functionally related. I continue to reject the games you are playing with the notion of “to statutory subject matter” and your attempts to parse within the claim for some “inner” meeting of “subject matter,” all the while ignoring what the Court really did in Alice where it was a given for the Court that the portion of 101 dealing with the statutory subject matter categories was met.

                  You really do have to stop your games.

                3. But, anon, all printed matter is functionally related to its underling substrate. The relationship has been fundamentally the same for thousands of years.

                  Yes, we can come up with new ways of attaching ink to cloth, etc., but the printed matter doctrine we are talking about is where the meaning of words has an effect with respect to some statutory subject matter.

                  Take CDs. Both music and data can be recorded using similar recording techniques because music and data can both be digital.

                  But, tt is the “meaning” of the data that transforms the program to something potentially within the useful Arts.

                  Do we agree?

                4. Ned, With IBMs Watson, ANY data may be used as an effect… After all, it uses neural nets to analyze the data, which in turn provides the programming.

                  So what part of data is now not something Anon wants to patent?

                5. So are you ready yet to discuss the functional relationships of electrons, protons, and neutrons – given how fundamentally the same for, well, nearly all of time those relationships have been?

                  Are you ready yet not to drag in the canard of music?

                  And no, it is not the meaning of the data – it is the utility.

                6. Again jesse, you do not recognize not appreciate the terrain upon which you stand, as with the analogous written matter, data is NOT just still data and it matters very much the who versus the what.

                  The who cannot include TOTALLY IN THE MIND (which shows the error of your “it’s not relevant” non-answer, as well as the error of your conflation of the thought of software and software, which software is defined to be a machine component, and thus cannot be TOTALLY IN THE MIND.

                  You continue to monologue instead of understanding the dialogue.

                7. Anon, you keep ignoring reality.

                  Software may be defined to be a machine component… But not by the science.

                  It may be a a “component” of a solution, but it has no mass.

                  “components” exist as a singular object. Software cannot. To use software you have to copy it…. Multiple times.

                  It would be the ONLY component that gets copied an unlimited number of times for use..

          2. …and please Ned, your obfuscation tactic of trying to use a MUSIC example is downright egregious.

            “not even wrong” and a nonstarter quite apart from ANY other legal point that you could even try to make.

      2. Ned, your tortuous and ridiculous analysis of subject matter in an attempt to limit software is ridiculous. You have forever destroyed your reputation just like Richard Stern has.

        Frankly, you are a very bad actor. You confuse the issues rather than clarify. Your motives are judicial activism.

        Just remember what Chisum has said (and me many times too) that Benson is root of all evil. And you do everything you can to nourish that evil.

        1. Speaking of reputations, Stern has been vindicated, has he not? Rich’s State Street Bank is up there with Dred Scott.

          I don’t know about Chisum now because of what you just said. What did Chisum say about Hotel Security?

          1. On the contrary Ned, the well known fact that propaganda works does NOT mean that Sterns has been vindicated.

            You continue to attack Judge Rich while ignoring the fact that it was Congress that passed the Act of 1952.

            You continue to misrepresent the weight of Hotel Security, even after Prof. Crouch himself corrected you on the matter.

            You continue to ignore the plain impact of the Alice case regardless of whatever twist you want to spin from Hotel Security – you continue to play pedantic semantics with the words “statutory category” switching to “statutory” or omitting the category reference when it suits you (and when you want to make a “nominalist” accusation), but you want to return to some untethered view that that same “category” approach is what drives the Supreme Court.

            It just is not so – and there is NO honest way for you to try to twist and mangle the Court’s writings to reach that view.

            It is plainly INSULTING that you continue to try to twist the law this way. You need a different meme.

                1. The irony of jesse’s propensty for self-fail.

                  It is doubtful that jesse is aware of the fact that the lyrics to the Mandred Mann song he references where written specifically to be phrases jammed together in a meaningless way (original composition by none other than the Boss).

                  The doosh part befits you well.

                2. Picking a song with the word “blinded” in the title and assuming that it may relate to our discussion tells me that you failed more than just biology.

                  And that’s no snake oil.

                3. Anon …’bout that not snake oil. What is it then, lil early pearly?

                  Apologies to the blog, but this is less a non-sequitur than the increasing obfuscation tactics of (new metaphor warning)playing chicken. Unfortunately it’s all drive bys, we need a head on crash or someone has to get forced off the road in that big wheel he is peddling.

                4. I’m not sure what “early pearly” means, thePeople, but I have been discussing the law and facts.

                  I get that you might not understand these things.

                  I get that you might not even like these things.

                  But these things are what they are nonetheless.

                  The head on crash is merely forcing the Court to be accountable for the logic IT chooses to use. IT does not have to use such poor logic.

                5. anon says:
                  I’m not sure what “early pearly” means, thePeople, but I have been discussing the law and facts.
                  Yes, you said those lyrics were meaningless, however, we do believe you know the reference, even if we misspelled it. It was used in kind to your “wrap up” of Jesse’s retort to Yoda. You must agree the ad hominem (not befitting) “duece” was neither a discussion nor fact, but that does not exclude that you have elsewhere discussed law and fact (or asserted your perceptions of fact). We are not Jesse’s Girl so that is all we will do-wah-diddy on that.

                  I get that you might not understand these things.
                  Then you understand that we might. Fact is we understand quite a bit, and actually pay attention and learn, but also understand we are not mired in the midst of things the same way. We have more knowledge and experience than you believe.

                  I get that you might not even like these things.
                  Or that we might…whatever these things are.

                  But these things are what they are nonetheless.
                  Yeah, they can’t be what they are not, can they?

                  The head on crash is merely forcing the Court to be accountable for the logic IT chooses to use. IT does not have to use such poor logic.

                  We are not challenging your deontological stand on that. We don’t believe that crash is institutionally possible.

                  Poor logic, and weasely stands are not isolated these days either. We want some of these to either hit head on, hold their lane or honestly change. There is little persuasive or other value in incessant polemics.

                6. We don’t believe that crash is institutionally possible

                  Your careful phrasing betrays you: as surely as you can maintain ANY belief, ANY opinion that you would care to, the fact of the matter is quite different than that belief.

                  The crash is not only institutionally possible, many such crashes have already occurred (and occur far more often than your belief system evidently has learned).

                  As for as homenim, surely you realize that not all as hominem is improper, let alone incorrect in pointing out the shortcomings of a poster intent only on monologues.

                  As to having “more knowledge and experience than [I] believe” – since you do not know – and cannot know – what I believe in that regard, your statement resolves to an empty boast.

                  Finally, as to “incessant polemics,” it would appear that you then would align with my calls for true dialogue, which necessitate the integration of valid counterpoints made, and the abhorance of those that would knowingly (from self-volunteered admissions) misrepresent law and facts.

                  To that, I say welcome aboard.

    2. “There can be only one professional reaction to these latest 101 confusions – time for the patent bar to organize an effort to have 101 repealed.”

      If you repeal 101 nobody gets any patents brosefus.

      First because the only reason they can even get a patent is 101.

      And second because if you take away the conditions implicit in 101 the whole thing is unconstitutional almost certainly.

      1. Funny about that 6, I explicate in fine detail the constitutional ties.

        You have never returned the favor.

        Further, 101 is statutory and has NO directed tie as you seem to want to believe. Can you explicate why you think there is a de facto “must” style link from the statute to the constitutional grant of authority to Congress (which let them write pretty much any law they wanted?) you might use Golan v Holder as a starting point to what the Court already thinks what Congress can do.

        1. For the millionth time, if everything that is judicially excepted becomes eligible there is plenty that will then fall through the 112/102/103 cracks and will necessarily curtail constitutional rights or else be so blatantly outside the useful arts that even the USSC will be like “nope, not in the useful arts, congress attempted to “protect it” thus 35 USC goes down the drain”.

          Golan is inapposite, but you’d know that if you were an attorney.

      2. Don’t worry; @Greg’s comment is from the future “50+ years after Benson (1972)” so clearly there’s a well thought out alternative section by then.

      1. The problem is not 101 (per se).

        The problem is the judicial activists.

        Removing 101 won’t stop the Court from just writing a new map and sticking it in some other clause, first implicitly, then with growing boldness, explicitly.

        Greg’s move slows them down but will not stop them.

        There is another constitutionally authorized path.

        Remove the addicts from the appellate review process.

      2. Unfortunately the brow beating from on high has created the need to reset back to what Congress explicitly wrote and removing the addicts won’t be enough. Congress will have to be more explicit.

        In any regard, Congress does need to address the theft of its constitutional power to write patent law, or the activism will only grow worse.

  10. Three observations:

    1) I am surprised by how much relevance the CAFC attributed to the fact that the embedded content items preserve the “look and feel” of the host web page.

    It was my understanding that one of the few well-settled points in the software patent debate was: If your invention is a data manipulation algorithm, what the data represents is immaterial if it doesn’t functionally relate to the algorithm. So, if your invention is a method of serving pages, the content of the web pages doesn’t matter.

    Functionally, the claim recites a method of serving a web page that includes adapting its content based on a content description. We can argue all day about whether that’s eligible, novel, enabled, etc. – but that’s the functional part of the claim, and where I would have expected the CAFC to focus.

    Instead, the majority opinion gives extensive consideration to the fact that such description and embedded content reflect the “look and feel” of the host web page. This is a surprising and different tack – it is non-functional claim elements that somehow manage to secure patent-eligibility.

    I’m not quite sure what to make of it. My initial reaction is that following the tide of 101 invalidations under Alice, the CAFC was anxious to identify a patent-eligible claim in the software field, and this was the best one at hand.

    I wonder how much of this opinion will appear in the imminent release of the USPTO’s updated guidelines on post-Alice patent eligibility…?

    2) I am also surprised that claim 13 was found eligible as fulfilling the statutory classes of 35 USC 101.

    Over the last two years, examiners have insisted, increasingly, that system claims must include physical elements. Arguments I’ve encountered include:

    “A ‘data store’ is an abstract term. Could just be a container, like a database. You need to recite: ‘physical storage device.'”

    “A ‘processor’ can be anything, including a virtual processor. You need to recite: ‘a physical processor.'”

    “All of the components that you recite could be emulated. You need to include the term ‘hardware,’ like ‘a hardware processor device.'” (Three different examiners, in three different art units, have insisted on the inclusion of the word “hardware” in the system claims.)

    That trend directly conflicts with the CAFC’s approval of claim 13:

    An e-commerce outsourcing system comprising:

    a) a data store including a look and feel description associated with a host web page having a link correlated with a commerce object; and

    b) a computer processor coupled to the data store and in communication through the Internet with the host web page and programmed, upon receiving an indication that the link has been activated by a visitor computer in Internet communication with the host web page, to serve a composite web page to the visitor computer with a look and feel based on the look and feel description in the data store and with content based on the commerce object associated with the link.

    The “hardware” in this system includes: “a data store,” and “a computer processor.” That’s it. It’s impossible to reconcile this result with the USPTO trend about system claims.

    3) “Must be structural at the point of novelty” cannot be reconciled with this case, as both approved independent claims are almost purely functional.

    Yes, it’s true that one CAFC case does not make law – but if future cases follow this trend, then that principle becomes untenable.

    1. David, I think the claims pass 101 for the reasons you identified. But I agree, the focus of Chen on the nonfunctional aspects as being within 101 is confusing.

      Perhaps on rehearing, Chen will clarify.

      1. “David, I think the claims pass 101 for the reasons you identified. ”

        On the other hand I will be here to enjoy lolin’ at Ned and David on the day of reversal. Hopefully Ned will join me in this lolin and subsequently change his views to the law as it actually is.

    2. @Dave “I am surprised by how much relevance the CAFC attributed to the fact that the embedded content items preserve the “look and feel” of the host web page.”

      It’s worth noting that http user agents (“browsers”) are under the control of third parties and there are several standards and many competing implementations as to how they should render data, if indeed they render it at all — since many do not. In any case, the rendering is done outside the control of accused infringers in this case and outside their ability determine precise display properties.

      Which makes direct infringement impossible under Limelight.

    3. >>independent claims are almost purely functional.

      David, I don’t agree. They are structural to a POSITA. Moreover, I don’t think there is meaning to “purely functional” to any claim viewed in terms of the knowledge of a POSITA and the specification.

  11. This claim from 8907933 seems pretty weak to me, Rick. What do you think?

    IC1:

    1. A method of processing a top result of a recognition by an automatic speech recognition (ASR) system on a speech input, the ASR system producing a plurality of results comprising the top result and at least one alternative result of the recognition, the top result being identified by the ASR system as most likely of the plurality of results to be a correct recognition result for the speech input, the method comprising: determining whether the top result includes a member of a set of words or phrases, the set of words or phrases comprising a plurality of members and each member of the set comprising a word or phrase; and when it is determined that the top result includes a word or phrase of a first member of the set, producing a modified result by substituting a word or phrase of a second member of the set for the word or phrase of the first member in the top result, determining, using a language model related to a language and/or domain of the speech input, a likelihood of the modified result occurring in the language and/or domain, evaluating the likelihood of the modified result occurring in the language and/or the domain, and determining whether to trigger an alert based on a result of the evaluating.

    1. Ugh, yet another reason to limit or eliminate the use of preambles. If the material from the preamble limits the claim, then I’d say using the technique to determine a likely result of speech recognition should pass the Alice test. (Or at least let’s hope it does, as if you can’t patent automatic speech recognition, we’re in trouble.) If the material from the preamble does not limit the claim, the claim likely wouldn’t pass the Alice test.

      1. The claim is ineligible and is a quintessential example of how broken the patent system is.

        It’s a method for “determining” — described in literal terms with precisely zero technology (!) — whether a “result” includes a set of words and then modifying that result with a “model.”

        Lowest form of innovation. The fact that any adult human could be f00led into believing this is “innovation” just shows how incredibly ignorant people can be when they’ve been drinking the kool aid for too long.

        Grow up, people.

  12. inventors and their assigns seem to want it very much

    I’m certainly an “inventor” (according to your criteria) and I don’t want software patents.

    What percent of the US population are we talking about here that wants these entitlements so badly?

    1. You are an inventor and don’t want one? Great. Don’t file and publish.

      Oh wait – you mean that you want no one else that may invent to file either…?

      Gee, you are out of luck (and rightfully so).

  13. Such a simple statute…

    35 U.S.C. 101 Inventions patentable.
    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    And prior to Alice, the Courts and USPTO had established reasonable precedent and procedures…

    M.P.E.P. 2106 Patent Subject Matter Eligibility [R-11.2013] (please reread)
    … While abstract ideas, physical phenomena, and laws of nature are not eligible for patenting, methods and products employing abstract ideas, physical phenomena, and laws of nature to perform a real-world function may well be. In evaluating whether a claim meets the requirements of 35 U.S.C. 101, the CLAIM MUST BE CONSIDERED AS A WHOLE to determine whether it is for a particular application of an abstract idea, physical phenomenon, or law of nature, and not for the abstract idea, physical phenomenon, or law of nature itself. Diehr, 450 U.S. at 188, 209 USPQ at 7.

    … Eligible machines, manufactures, and compositions of matter are non-naturally occurring products typically formed of TANGIBLE elements or parts that embody a particular or specific, tangible practical application of the invention.

    … “[T]ransformation and reduction of an article ‘to a different state or thing’ is the clue to patentability of a process claim that does not include particular machines.” Bilski v. Kappos, 561 U.S. ___,___, 130 S. Ct. 3218, 3227,

    … An “article” includes a physical object or substance. The physical object or substance must be particular, meaning it can be specifically identified. An article can also be electronic data that represents a physical object or substance.

    … “Transformation” of an article means that the “article” has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article. A new or different function or use can be evidence that an article has been transformed. Manufactures and compositions of matter are the result of transforming raw materials into something new with a different function or use. Purely mental processes in which thoughts or human based actions are “changed” are not considered an eligible transformation.

    Notice that “tangibility” is the one thing required for subject matter eligibility, even when considering the four categories of judicial exceptions.

    Simply put, the claim AS A WHOLE must be analyzed. A subject matter eligible claim need only include a single tangible limitation to be subject matter eligible (that is not to say it is “patentable” per se… Too many practitioners misuse the term “patentable” (considers all statutes) when referring to “subject matter eligible” (considers a single statute).) The tangible limitation can be a tangible object (article) or a step that provides a tangible result. If the claim as a whole is directed to an “article”, “machine” or “composition”, it is necessarily subject matter eligible. If the claim as a whole is directed to a process, it is necessarily subject matter eligible if it provides a tangible result or include a tangible transformation.

    A proper 101 analysis cannot and should never require dissection of a claim followed by consideration as to the subject matter eligibility or novelty of individual limitations of the claim. By dissecting a claim, then inquiring about novelty and then inquiring about subject matter eligibility of the novel limitation, the Court in Alice created a mutated 101/102/101 surgical analysis that fails to consider the claim as whole.

    Alice is simply poor jurisprudence that flies in the face of a long history of judicial precedent.

    For example, if a claim directed to a business method includes a step that provides a tangible result (transformation of an article (see above as to electronic data qualifying as an article)), then the claim as a whole is subject matter eligible (again, not saying that it is patentable).

    As another example, a business method executed by a computer should be subject matter eligible if the claim as a whole includes at least one step wherein a tangible transformation occurs, e.g. transfer of funds, execution of a financial transaction, display of particular information, etc… Notice that simply calculating a value should not render a method claim subject matter eligible; however, calculating a value and then doing something tangible with that calculated value should render a method claim subject matter eligible.

    1. Rick, whoever wrote that in the MPEP must have been a Rich acolyte.

      Regardless, nominalism has never been the law except when Rich was writing the opinion. We had a long struggle between Rich and the Supreme Court, and in two cases, Bilski and Alice, the Supreme Court finally overruled Rich.

      Get over it.

      1. We had a long struggle between Rich and the Supreme Court, and in two cases, Bilski and Alice, the Supreme Court finally overruled Rich.

        It was Prometheus v. Mayo that put the Supreme stake in Rich’s logic.

        But Rich’s short-sighted logically incoherent views (and I’m being generous here because Rich probably knew he was pitching pure baloney to his fellow patent expansionists) were trashed long before Mayo by other courts, including the Federal Circuit. The CAFC refused to follow its own precedent when it realized that it would seriously undercut the house of cards it had been so diligently building for a generation.

        1. The spin here is to “blame” Judge Rich and ignore the fact that it wa Congress and not Judge Rich that changed the law. Rich may have had a hand in writing the law as passed by Congress, but that only strengthens (not weakens) the notion that he knew that law better than the nose of wax addicted Justices.

          Keep focused gentlemen.

          1. The spin here is to “blame” Judge Rich and ignore the fact that it wa Congress and not Judge Rich that changed the law. Rich may have had a hand in writing the law as passed by Congress, but that only strengthens (not weakens) the notion that he knew that law better than the nose of wax addicted Justices.

            Anybody follow this “logic”?

          2. anon, it is clear Rich was dedicated to the “nominalism” he enunciated in Bergy, where he divided the statute into buckets, there being a 101 bucket, a 102 bucket and a 103 buckets, each to be addressed in that order. A nuanced approach, where one would dissect the claim into the statutory and the nonstatutory and then look for inventions only in the statutory, was an anathema to his nomilalist bucket approach whereby novelty considerations were to be undertaken only in the sections 102/103 buckets.

            Rich’s approach might have work regardless if the novelty sections, 102/103, were to interpreted to exclude consideration of nonstatutory subject matter unless integrated into the statutory produce something new or improved in the statutory. But Rich eschewed even this approach, and therefore he had to fail.

    2. A proper 101 analysis cannot and should never require dissection of a claim followed by consideration as to the subject matter eligibility or novelty of individual limitations of the claim.

      Still fighting a lost battle that you’ll never, ever win.

      It would be funny if your ignorance wasn’t so widespread. Keep listening to “your leaders”. It’s so much easier than using your brain.

      the Court in Alice created a mutated 101/102/101 surgical analysis that fails to consider the claim as whole.

      That’s just false. But go ahead and pretend otherwise! After all, some loudmouthed “experts” engage in the same deception day in and day out. They’ve been wrong about pretty much everything for a long time but, hey, they have big mouths and money so they must be important and serious.

      Here’s the basic fact pattern again:

      1. A method of drinking a cup of coffee and thinking [insert new, non-obvious and incredibly useful thought here].

      That claim is ineligible. Why? Because it protects ineligible subject matter. How do I know that? Because I drink coffee and while I drink coffee I think about stuff. But if I think about this particular super duper important thought while going about my daily (and perfectly legal business) suddenly I’m an infringer. That can’t be right because patents can’t be used to protect thoughts.

      Note that while administering the drug we call caffeine to a person might have been patentable (and eligible) once upon a time, it’s “old technology” now. The recitation of that step no longer suffices to remove the eligibility issue for the reasons I’ve just explained (in simple terms, for the thousandth time).

      How do you propose to eliminate these claims without “dissection”? Please don’t hurt yourself doing somersaults while you formulate your very serious and thoughtful answer.

      1. Please consider each claim as a whole.

        The claim “1. A method of drinking a cup of coffee and thinking [insert new, non-obvious and incredibly useful thought here].” wouldn’t even pass muster under 112.

        The claim “1. A method of drinking a cup of coffee comprising: thinking [insert new, non-obvious and incredibly useful thought here].” would pass muster under 112, but I agree with you that it should not pass muster under 101, because the only step defined in the claim is “thinking” (not subject matter eligible).

        The claim “1. A method of drinking a cup of coffee comprising: a) drinking coffee from a cup; and b) thinking [insert new, non-obvious and incredibly useful thought here].” would pass muster under 112, and should pass muster under 101, because it includes the tangible step of “drinking” even though it includes the intangible step of “thinking”. But, that claim would not patentable per se due to 102/103 considerations.

          1. Please refer to my commentary (pg 10-11) in response to the USPTO’s request for comments on the Guidance for Determining Subject Matter Eligibility.

            link to uspto.gov

            The upshot is: the Court’s finding of invalidity in Mayo was right but for the wrong reasons. It should have been invalidated under 102/103 not under 101. They misapplied 101.

            Mayo and Alice share much the same problems.

            1. The upshot is: the Court’s finding of invalidity in Mayo was right but for the wrong reasons. It should have been invalidated under 102/103 not under 101.

              Still beating the dead horse.

              Please tell everyone how your “102/103” analysis works to get rid of the coffee+non-obvious thought claim we’re discussing, “Rick”.

              I can hardly wait to hear it since you sound like a real thoughtful guy.

        1. Rick: The claim “1. A method of drinking a cup of coffee comprising: a) drinking coffee from a cup; and b) thinking [insert new, non-obvious and incredibly useful thought here].” would pass muster under 112, and should pass muster under 101, because it includes the tangible step of “drinking” even though it includes the intangible step of “thinking”. But, that claim would not patentable per se due to 102/103 considerations.

          Please tell everyone what these “102/103 considerations” are, Rick.

          I can hardly wait because you are obviously very serious and super knowledgeable about patent law.

          1. From Graham,

            “Here, the patentee obtained his patent only by accepting the limitations imposed by the Examiner. The claims were carefully drafted to reflect these limitations and Cook Chemical is not now free to assert a broader view of Scoggin’s invention. The subject matter as a whole reduces, then, to the distinguishing features clearly incorporated into the claims.”

            1. anon, OK.

              However, the dissection going on here is between the statutory and the nonstatuory, not between old and new.

              Do you see the distinction?

              1. Your bizzaro “change statutory category to statutory but ignore what the Court did in Alice” does not fly when someone is paying attention to what you are saying.

                Try something else, something plausible.

      2. The basic “fact pattern” is nothing more than Macolm’s pet theory, which at its best, merely devolves into a statement that claims cannot be mere aggregations (they must be integrated).

        The same pet theory applies to a claim with NO mental steps at all:

        I claim:

        A bycycle,
        a goldfish in a blue bowl,
        a hammer, and
        a fake lemonade stand.

        Guess what?

        No mental steps at all, and this claim is not eligible.

        All that Malcolm is doing is playing the role of the Wizard of Oz, and all that go is doing is attempting to stop Toto from pulling the curtain open.

    3. “Rick”: An article can also be electronic data that represents a physical object or substance.

      LOL. Let’s just make up ridiculous self-serving nonsense and hope that nobody notices!

      Nice try, Rick.

        1. An MPEP cite to a self-serving proposition that is nonsensical on its face doesn’t really do much here.

          But I did just “innovate” a method of turning a freshly cut lawn grass “article” into a juicy steak “article.” Can I haz patent now?

          I hope so because I got a few million more “innovations” like that and every patent creates a job. Or something.

    4. “A proper 101 analysis cannot and should never require dissection of a claim followed by consideration as to the subject matter eligibility or novelty of individual limitations of the claim. By dissecting a claim, then inquiring about novelty and then inquiring about subject matter eligibility of the novel limitation, the Court in Alice created a mutated 101/102/101 surgical analysis that fails to consider the claim as whole. ”

      I thought Alice treats claims as “ordered combination” and that any ordered combination must do “something more” than just appending an idea with “let a computer apply it” or something purely conventional / generic.

      A lot of people chose to interpret “conventional” or “generic” with novelty inquiry under 102. Sure, the Supreme Court conceded that patent eligibility determination (which determines what is “conventional” and “generic”) sometimes overlap with what is novel, Mayo 132 S. Ct. at 1304, but the Supreme Court in Flook also stated that patent eligible is a distinct inquiry that must precede novelty / obviousness inquiry. Flook, 437 U.S. at 593. Apparently, patent lawyers, unlike Constitutional lawyers, chose not to read between the lines but instead plead for some bright line sweeping inquiry that the Supreme Court will not give.

      Another fallacy that many patent attorneys appear to fall into is the Diehr holding that claims must be treated as a whole, Diehr, 450 US at 188, and interpret it as a blanket prohibition that one cannot look at the claims to determine whether it involved an abstract idea and then determine whether the claim applies the abstract idea in a particular manner or the claim simply says “apply it” using very generic step (like displaying data on a LCD) or “apply it with a computer”.

      This fallacy intentionally ignored the Diehr court’s analysis where Diehr claim defined a well known mathematical equation and the claim is only eligible because the combination of steps of applying the equation on a computer lessens the probability of overcuring or undercuring rubber. In other words, even the Diehr Court extracted the abstract idea in the claim and determine whether the claim is really just on the idea so as to pre-empt it. Diehr, 450 U.S. at 187.

      Sure, everyone’s life (especially mine) would be a lot easier if a claim simply recite some magic word regarding transfer of funds, execution of a financial transaction, display of particular information to make it patent eligible. But that requires ignoring the “their….discoveries” in the Progress Clause or rewritting the Constitution to say: “To promote the Progress of Science and useful Arts, by securing for limited Times to…Inventors the exclusive Right to their…Discoveries and any related Discoveries that is not theirs”.

      For some patent attorney, patent rights is a form of property right different from others. For example, in real estate, if a person owns a piece of property in County A, then the person goes to the local government to register the deed describing the boundary of that piece of property. It would be ridiculous for anyone to pretend that simply because one owns that piece of property, one was entitled to claim the entire County A on the deed. That is precisely what a lot of patent attorney seeks to do.

      An inventor comes up with an idea to achieve an end objective and implements a particular manner of achieving that end objective. Instead claiming the particular manner of achieving that end objective that the inventor actually made, a patent attorney would attempt to claim the idea and the end objective, however developed. Just like Morse claiming the however development of electromagnetism to print characters at a distance, these claims far exceeded the scope of the inventor’s actual achievement to cover any other way of developing that idea to achieve the same objective.

      While i do not believe in the infallacy of the Supreme Court, i do believe that their precedents on 101 have merits: an idea to an end covers not just an inventor’s own means to that end, but also everybody else’s means to that end.

      1. Lot’s of food for thought. Thanks for the cogent reply.

        I agree there are many nuances and seeming contradictions in Bilski, Mayo, Myriad and Alice that are over generalized.

        Not side-skirting your reply, but I am not capable of adequately discussing all of the points in a blog setting. I wish there was some better way to discuss all of these issues more comprehensively with our judges and justices other than through a blog and litigation.

    5. Simply put, the claim AS A WHOLE must be analyzed. A subject matter eligible claim need only include a single tangible limitation to be subject matter eligible (that is not to say it is “patentable” per se…

      haha, it’s a wonder all these well-educated attorneys don’t claim the computer being inside a concrete building, or including a tangible pencil in their system claims when it’s clearly so easy to defeat the 101 standard.

      A proper 101 analysis cannot and should never require dissection of a claim followed by consideration as to the subject matter eligibility or novelty of individual limitations of the claim.

      What about when the invention is a single limitation to “solve the problem”, and the other ten limitations are discussing the concrete area within which one is most likely to perceive the problem? The court also warned against describing what is known (a very easy thing) and then conveniently turning vague at the point of novelty.

      For example, if a claim directed to a business method includes a step that provides a tangible result (transformation of an article (see above as to electronic data qualifying as an article)), then the claim as a whole is subject matter eligible (again, not saying that it is patentable).

      Doing math on paper and pencil transforms numbers. I suppose that should be eligible under this view?

      a business method executed by a computer should be subject matter eligible if the claim as a whole includes at least one step wherein a tangible transformation occurs

      Just to be clear – its your view that Congress cannot write a law that prevents people from expressing their ideas, but Congress can and did write a valid law that allows them to restrict an idea so long as any tangible change (such as writing on a sign) accompanies it? Does your mind distinguish between “invention” and “thought”?

    6. Rick, you clearly do not know what claim as a whole means. It refers to the novel subject matter that was identified in the prosecution. It might start out as everything in the claim, but it is reduced to what is new at the end.

    7. Rick, A proper analysis cannot and should never require dissection of a claim followed by consideration as to the subject matter eligibility or novelty of individual limitations of the claim. By dissecting a claim, then inquiring about novelty and then inquiring about subject matter eligibility of the novel limitation, the Court in Alice created a mutated 101/102/101 surgical analysis that fails to consider the claim as whole.

      Alice is simply poor jurisprudence that flies in the face of a long history of judicial precedent.

      Actually, Rick, the mode of analysis adopted by the Supreme Court is the same mode of analysis as used by Hotel Security and the cases that followed Hotel Security since 1908. It is still followed in the Federal Circuit today in the analysis of printed matter, which doctrine stems directly from the Hotel Security.

      Simply put, when a claim has mixed subject matter, some statutory and some nonstatutory, the novelty must be in the statutory. Conversely, if the statutory is old and conventional, the claim as a whole is not patentable.

      1. Except we BOTH know that is not what the Supreme Court did in Alice, don’t we Ned?

        Not even close.

        And you ended up not liking what they did in Bilski

      2. …for as much as you whine about “nominalism,” your ENTIRE schtick here with the district court case is a pure function of that very same “nominalism” and dependency on statutory categories.

        That’s why you attempt the semantics games with the sleight of hand and your odd changing of “statutory category” to merely “statutory.”

        But it just doesn’t fly with the reality of what the Supreme Court did.

        And deep in your heart, you know it.

  14. While we’re waiting for this ridiculous opinion to be expunged, let’s all refresh ourselves again on what the most vociferous lovers of software patents (and patent expansion generally) have gone to the mat arguing for in the past:

    -common sense should be disallowed in an obviousness analysis (they were wrong)

    -“new” electromagnetic signals should be eligible for patenting (they were wrong)

    -investment strategies should be eligible for patenting (they were wrong)

    -information should be protectable with a patent if the data is gathered with an old but otherwise patent-eligibile method (they were wrong)

    -an otherwise ineligible system for facilitating financial transactions should become eligible if the claim is salted with old computer technology (they were wrong)

    Why does anyone care what any of these patent expansionist “experts” think about anything? You can’t get a straight answer out of them because they’re too busy calculating how that answer might affect one of their clients (or, in the worst cases, their own portfolio of patents that would make most reasonable people choke on their own p uke).

    Here’s the question again: what’s the fallback position? You want some software to be eligible for patenting? Tell everyone what you believe is worthy and what isn’t and what applicants are going to need to provide in their claims and in their specifications. This business of writing out our dream functionality to be carried out by existing technology is going to come to an end out of necessity, whether the patent expansionists like it or not, and it’s going to happen soon.

    So what exactly should survive? We’ve gotten hints from the Supreme Court already as to where a line might reasonably be drawn. There’s really nobody out there capable of articulating something that might serve as a backstop until (inevitably) the patenting of information processing logic is wiped out completely?

    What’s the problem exactly?

    1. Plenty of strawmen and misdirections (shockers), but this is priceless: “You can’t get a straight answer out of them

      Malcolm – there are MANY questions put to you, awaiting straight answers.

      Maybe you should spend less time concocting strawmen, and more time, you know, giving answers and actually engaging in dialogue.

      (and please, not the p@thetic Chamberlain gee you better accept something CRP)

      1. “anon” there are MANY questions put to you, awaiting straight answers.

        Deep, compelling stuff from a guy who fought tooth and nail for all the tanked claims I described above and who still can’t articulate what Mayo v. Prometheus was about or why the claims were tanked.

        Meanwhile, the rest of the world has moved on. But he’s a very serious person! If “anon” says there are many unanswered questions (in all caps, no less!) then it must be true. And we can all rest assured that those questions are really really thoughtful and not just a bunch of self-serving loaded baloney that assume the answer “anon” wishes were reality.

    2. MM,

      I don’t think anyone is going to give a substantive response to your post. Hopefully I’ll be surprised. For my part, I would support Diehr providing the basic framework.

      “When a claim containing a mathematical formula [or abstract idea] implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.”

      In my opinion, transforming the display of a monitor, changing the configuration of a computer readable medium, etc. don’t “count” as they are just drafting exercises designed to evade 101.

      That’s my proposal. I suspect it will be criticized without an alternative being offered. Let’s see.

      1. The alternative is to follow the law as written by Congess.

        Not sure if this counts as the “criticism” you were expecting, but it’s better than your parsed renditions and pom-poms.

      1. While I think about your post Ned, do pharma patents protect the drugs one has possession of at the time of filing? (You know, with utility possessed?)

        And what do we do with constructive reduction to practice?

        1. anon, a central complaint is that the many practitioners are simply claiming concepts and are not protecting actual software. I don’t think anybody would seriously object to patents that are intended to protect real software so that when one wants to find out what these functional elements reference one could actually see the code to which they refer so that one may say that the functional expression covers the code and equivalents. As far as I know that is not law in that we don’t have to disclose the software we’re trying to protect.

          The Federal Circuit decisions about looking for algorithms that correspond to functional expressions is somewhat of a joke in that they only are looking for high level algorithms by which programmers could write code. The code itself is not required.

          And so long as this is the case, there will be fundamental objections to software patents because there is no requirement that there be software that is being protected. What is going on is that the patent are pure concept patents that cover the implementation of others, and this is fundamentally at odds with the whole point of the patent system.

          1. >functional elements reference one could actually see the code to which they refer so that one may say that the functional expression covers the code and equivalents

            This is gibberish. A POSITA knows what solutions there are to functional information processing claims in view of the specification.

          2. The judicial activists are trying to turn “functional” into a witch term like “abstract.” They want a judge just to look at it and hold it is functional therefore only covers exactly what is in the specification.

            That is the front line of the game they are playing.

          3. ALWAYS take complainers with a grain of salt and never at face value.

            Further, Ned, you appear to have a “which rung on the ladders of abstraction” problem and neglect to notice that any such problem is being attacked with the @tom bomb of patent eligibility.

            You make mistake as others regarding “code” and you insert a value judgment where none is either needed nor desired. You make the mistake of quaffing the koolaid from the complainers and assuming they have a legitimate complaint – you then compound this assumption by not critically evaluating the means used to get to that philosophical ends.

            Beside that, any comments on the two items I posted at 31.3.1? If you take off the particular art field blinders for a moment, your response might be interesting.

      1. Of course, that’s AFTER eligibility requirements which is both sequentially before the unless and conceptually before the unless.

        Also, I think there’s a good argument that, under the circumstances, we should just revisit 102: if you want an affirmative grant of an exclusionary right, the burden is on the applicant to PROVE the eligibility, novelty, non-obviousness of their invention by clear and convincing evidence.

        The PTO already operates in bizzaro land as compared to other Federal agencies. It’s never been clear to my why the ex parte actions of a government agency that give rise to strict liability are treated with the level of deference of a fully adjudicated decision. What’s more, the benefit of incomplete evidence presented or considered by the PTO inures to the only party asking for the exclusionary right. So wrong on so many levels.

        1. >PROVE the eligibility, novelty, non-obviousness of their invention by >clear and convincing evidence.

          That is a total flipping of the statute. Moreover, from a practical point of the view he agency is in the position to be the expert and determine patentability. That is how it should be form any logical analysis of the problem.

  15. link to xkcd.com

    This a very important cartoon. It illustrates the fallacy that a “funcational” claim in information processing does not connote structure and the fallacy that any functional claim can be done by the boy down the hall for a pizza (ala Stevens and Posner.)

    The fact is that a functional claim to a person skilled in the art may convey a set of solutions that each correspond to structure and to a special purpose chip that carries out that structure.

    Now understand that and then read Lemley’s map for judicial activism on functional claiming. And note that MM has said that all functional claims in information processing are trivial to carry out, so he is clearly the standing supervisor in the cartoon.

      1. Because if the POSITA knows how to build it (program it or build a chip to do it) then it has structure. That set of solutions is the structure (and is equivalent to a set of special purpose chips that perform the structure).

        That is why the phantom functional claiming “problem” is not a problem.

        The judicial activist are playing a game of removing the PHOSITA.

        It is as outrageous as Alice. Lemley is master at judicial activism.

        1. Because if the POSITA knows how to build it (program it or build a chip to do it) then it has structure.

          No. If a POSITA knows how to build it that just means it is enabled. That does not mean it has structure. Aristocrat was very clear on this point – at oral argument the patentee argued that any code that performed the function would infringe and that one of ordinary skill in the art would know how to build it. The court strictly forbade that scope in its opinion because that would amount of non-structured pure functional claiming. Aristocrat is in direct opposition to this statement.

          Let’s do an example: If I told you to write me a story about a teenage wizard and his archnemesis, I’ve given you an idea that you are enabled to turn into an unknown number of forms. If I point to a Harry Potter book, now there is structure.

          That set of solutions is the structure (and is equivalent to a set of special purpose chips that perform the structure)

          Put a number on how many forms my idea could take. How many is it? In how many ways can you express the concepts of teenage and wizard and archnemesis. The answer is there is no number, as there are a limitless number of ways to express an idea, which is why there is a 101 issue to begin with. But let’s ignore that for a second – let’s assume there is a valid number – hundreds of thousands we’ll say. That number (hundreds of thousands) does not reasonably convey the scope of what your inventor has made (ONE expression) – 112, 2nd issue. Further, your inventor does not in fact possess the other hundred thousand ways – 112, 1st WD issue.

          And, to take issue with your original given – even if any person of even minor imagination and basic writing skill would be enabled to create A (as in ONE) story, or even a handful of stories, or even many many many stories, from a scientific viewpoint you cannot come to the conclusion that he can make ALL OF THEM, as science, by definition, is inductive. It is impossible to say that you know all of the ways there will ever be, and yet the scope is a scope directed to all of the ways there will ever be. So while there is some level of enablement, the full scope is not enabled. 112, 1st enablement issue.

          You seem to think that because the functionality places a single limitation upon it (i.e. it reduces the claim from “all things” to “something less than all things”) that therefore it has structure. The first problem with that (as I recently posted to you) is that since Nautilus it has been clear that “some” definition is not necessarily “reasonable” definition, which is necessary to pass 112, 2nd. The second problem is that ever since man was capable of negation, saying that zero is not one, it was possible to place some limitation of the form of something, but that does not make it structured.

          So let’s assume for the moment that functional claiming was inherently proper (something no court has ever said, btw). How do you get around the inherent 101, 112 1st and 112 2nd issues that will pop up?

          1. >No. If a POSITA knows how to build it that just means it is enabled. That does not mean it has structure. Aristocrat was very clear on this point – at oral argument the patentee argued that any code that performed the function would infringe and that one of ordinary skill in the art would know how to build it. The court strictly forbade that scope in its opinion because that would amount of non-structured pure functional claiming. Aristocrat is in direct opposition to this statement.

            That is just not reality.

            1. That is just not reality.

              Sigh, quoted from 1336:

              Aristocrat also argues that , even if there is no disclosure of an algorithm in the patent, the disclosure of a microprocessor with “appropriate programming” is a sufficient disclosure of structure for meansplus-function purposes, because the evidence showed that one of ordinary skill in the art could build the device claimed in the ‘102 patent based on the disclosure in the specification. That argument, however, conflates the requirement of enablement under section 112 paragraph 1 and the requirement to disclose the structure that performs the claimed function under section 112 paragraph 6.

            2. “Can build” is enablement which is 112, 1st. “Structure” goes to definiteness which is 112, 2nd and partly to possession under WD in 112, 1st. Enablement is enablement. It is not other things.

              1. What? What nonsense. First, all software has structure. Second, a claim may be functional and a POSITA will know solutions (a set of them) that each have structure.

                112 would go to whether or not the POSITA can tell what the claim means.

                I don’t believe you honestly believe the nonsense you are writing.

                1. First, all software has structure.

                  Software has no structure. Software on a disk has structure, but only in the context that the structures on the disk will cause the processor to take certain steps. But you’re not limiting it to certain steps, you’re claiming any code that causes a result. That has no structure.

                  Second, a claim may be functional and a POSITA will know solutions (a set of them) that each have structure.

                  And there’s the distinction. The solutions have structure, but you’re not claiming a solution, you’re claiming all solutions. That’s like saying that because my sandwich has a structure (it does) that the concept of lunch has a structure (it doesn’t) merely because a sandwich can be used for lunch. It doesn’t work that way. Under your interpretation EVERYTHING has structure, including abstract ideas.

                  112 would go to whether or not the POSITA can tell what the claim means.

                  Nautilus was the most recent case on 112, 2nd.
                  I’m going to ask this straight out: Is that what you think Nautilus said?

                2. Can you explain how you maintain the statement that “software has structure” is correct in light of the Aristocrat quote right above, where the court specifically found that no structure was conveyed when he pointed to a processor with appropriate programming to achieve a function?

                3. …and you fall to that SAME code error in your thinking – again.

                  Pay attention son. Stop blindly repeating your mistakes.

                4. Random, you are confusing the idea of software with software.

                  No, he’s not.

                  He is, however, confusing NWPA with someone capable of learning.

                5. >>Software has no structure.

                  this is just a ridiculous statement. Please go read about software and structure in computer science/ EE journals.

                6. >The solutions have structure, but you’re not claiming a >solution, you’re claiming all solutions.

                  This is just nonsense. What you are claiming are the solutions that are known to a POSITA without undue experimentation in view of the specification.

                  It is the front line of the judicial activism that they are trying to change this to a witch test.

                7. This is just nonsense. What you are claiming are the solutions that are known to a POSITA without undue experimentation in view of the specification.

                  Every single one of the claims you write must be invalid. Every. Single. One. No wonder you’re so upset at the courts.

                  Here let me explain something – I don’t know how to code, but I, as an end user and examiner, know what the art is capable of. I CANNOT be an inventor in the computer arts. The suggestion that I could propose an idea that others know how to implement and get a patent for it is folly, because I AM INCAPABLE OF ADVANCING THE ART. The only thing I can contribute is an idea that someone else can realize, and my idea is not protectable. Further, even if I tell someone my idea and they create one embodiment of it, they are not entitled to all embodiments, regardless of how easily the art can produce them.

                8. >>I don’t know how to code,

                  OK. There we go. So you don’t have a clue what you are talking about.

                  Go educate yourself and then come back. Software has structure. Functional claims are enabled by a set of solutions each of which has structure. That is reality.

                9. software has structure” is correct in light of the Aristocrat quote right above, where the court specifically found that no structure was conveyed when he pointed to a processor with appropriate programming to achieve a function?

                  Gross ignorance.

                10. Gross ignorance.

                  One of these is a court we all have to listen to, the other is some lawyer on the internet that is constantly on the wrong side of opinions. There is gross ignorance here, but it’s not coming from where you think.

                  OK. There we go. So you don’t have a clue what you are talking about.

                  The fact that I don’t know the commands doesn’t mean I don’t know what’s going on. Kind of analogous to how you seem to somewhat understand procedure even though you lack all substantive knowledge about the law.

                  Software has structure. Functional claims are enabled by a set of solutions each of which has structure. That is reality.

                  A particular piece of software performs a method that has structure. The concept of software (or, as you like to put it “the sum of a set of solutions”) has no structure, because it embraces methods of completely different structure. We’re going about in circles. The courts agree with me. I cannot help you if you refuse to argue the law. Point to a case showing Aristocrat is wrong.

          2. >>pure functional claiming.

            What in the world is that? Add a POSITA and there isn’t really such a thing as “pure functional claiming” is there?

            Man, the games that are being played here are unbelievable.

            Look, just stick to reality. To real words and then what meaning they convey to a POSITA. Stick to that and you will get to the result I did. Add witches and you won’t. The witch of the pure. The witch of the “all”.

            Just bizarre the way people use abstractions to buzz off into never never land.

            1. >>pure functional claiming.

              What in the world is that? Add a POSITA and there isn’t really such a thing as “pure functional claiming” is there?

              Now I’m just starting to think you were counsel in Aristocrat, from 1337:

              Enablement of a device requires only the disclosure of sufficient information so that a person of ordinary skill in the art could make and use the device. A section 112 paragraph 6 disclosure, however, serves the very different purpose of limiting the scope of the claim to the particular structure disclosed, together with equivalents. The difference between the two is made dear by an exchange at oral argument. In response to a question from the court, Aristocrat’s counsel contended that, in light of the breadth of the disclosure in the specification, any microprocessor, regardless of how it was programmed, would infringe claim 1 if it performed the claimed functions recited in the means-plus-function limitations of that claim. That response reveals that Aristocrat is in essence arguing for pure functional claiming as long as the function is performed by a general purpose computer. This court’s cases flatly reject that position.

              Now that was in means-plus, so it is not limiting when outside of means plus, but the point is the same – A claim to a scope is a claim to the infringing structures within the scope, and establishing enablement is not establishing either definiteness of the structures within the scope nor possession of all of them.

              In any case, as the court says, you cannot have pure functional claiming (i.e. claiming “anything that makes X occur”) even if you limit it to a particular context (i.e. “as long as the function is performed by a general purpose computer”).

              Look, just stick to reality. To real words and then what meaning they convey to a POSITA. Stick to that and you will get to the result I did.

              By “the result I did” you mean the wrong result. But let’s swap to Ariad now – This is what you said:

              Because if the POSITA knows how to build it (program it or build a chip to do it) then it has structure. That set of solutions is the structure (and is equivalent to a set of special purpose chips that perform the structure).

              How will you prove to me by a preponderance of the evidence that your inventor has “that set of solutions” as opposed to “one specific solution”?

              1. >How will you prove to me by a preponderance of the evidence that your inventor has “that set of solutions” as opposed to “one specific solution”?

                It is judged by a POSITA! If it is not, then a patent application would need 10’s of thousands of pages.

                1. I declare that I own a corgi, I describe my corgi. I then declare that I want a scope that covers every dog. You ask all dog owners “Does he have every type of dog?” You think they would answer Yes?

                  Being a POSITA doesn’t add anything to the equation – showing that you own one species of something does not convince others that you own all species in the genus.

                  Look we’ll do it again: I write the code for Waze. Does that mean a POSITA believes I have the code for Google Maps or Apple Maps?

                  You understand that claiming a larger scope means you have to show you have the larger scope right?

                2. Random,

                  Are you saying that a separate patent should be available for every single instance of different code…?

                  Really?

                3. In other words, your fondness for using the species/genius phraseology is betrayed by your lack of understanding of both the phraseology and the art field you want to discuss.

                  You just don’t have a grasp here of what the ladders if abstraction portend.

                4. your lack of understanding of both the phraseology and the art field you want to discuss.

                  You just don’t have a grasp here

                  And there it is again.

                  Rinse, recycle, repeat.

                5. “If it is not, then a patent application would need 10’s of thousands of pages.”

                  Cry us all a river. Then get to disclosin’. It’ll be great to have this much disclosure from you guys. Really. Then other softiewaftie applicants will have some real art to contend with when they come in instead of only needing to distinguish over a bunch of bogus “statements of purpose”.

                6. “Being a POSITA doesn’t add anything to the equation – showing that you own one species of something does not convince others that you own all species in the genus.”

                  I’ve tried to convince people of that. But apparently “policy” trumps lawl and imaginary men.

                7. Are you saying that a separate patent should be available for every single instance of different code…?

                  I’m saying the first instance of software performing a function is patenable as that instance, and I am saying upgraded instances are patentable provided they can be proven to be non-obvious variants of what has already been disclosed, just like every other art.

                  Replace “software performing a function” with “function for printing at a distance” and you have the opinion in Morse. It’s that simple.

                  You disclose your algorithm, you get a patent. That algorithm disclosure renders many other algorithms obvious, and through DoE those are protected under the patent. Other algorithms which achieve the result through completely different means are not obvious, are also patentable, and do not infringe the first patent, because no valid scope can issue to the first patentee that includes the non-obvious different means for achieving the same functionality.

                  The first person to disclose an algorithm gets that algorithm, people who provide better, non-obvious versions get those algorithms protected, JUST LIKE EVERY OTHER ART.

                  In other words, your fondness for using the species/genius phraseology is betrayed by your lack of understanding of both the phraseology and the art field you want to discuss.

                  Nautilus destroyed this usage of ladders of abstraction as you’re attempting to use it. Let’s see if you can figure out what is “reasonable definiteness” (hint: When there is an easily conveyed more-accurate terminology, it cannot be reasonable to be intentionally vague) Your ladder has lost its rungs. Point to a single post-Nautilus opinion endorsing ladders of abstraction as you’re using it here.

                8. Random,

                  You keep on repeating the same mistakes.

                  “Algorithm” is not code.

                  The ladders of abstraction (as I am using the term) has NOT been wiped out by Nautilus.

                  At all.

                  I need not provide any opinion for that – you need to provide an opinion supporting your errant view.

                  Quite simply, you continue to clench tight your eyes to the vast middle ground of allowable usage of functional terms allowed by law.

                  Software and ladders of abstraction as I am using the terms is not your PURELY functional, or your claims TOTALLY IN THE MIND.

                  It’s that simple.

          3. Watch the moving goalposts about “functional claiming” from the option of PURE functional claiming as allowed by 35 USC 112(f) and the difference that the use of functional language is indeed allowed under law outside of section (f), as long as it is not PURELY functional (the Crouch-named vast middle ground) that our friend Random Examiner cannot see because his eyes are clenched tight.

            Just like Malcolm’s goal post attempts of placing entire claims totally in the mind, Random attempts to obfuscate along the PURELY word, and somehow arrive at the notion that NO functional language (outside of section (f)) is permitted under the law.

            His view is simply and utterly wrong, and no amount of spin can save it.

            1. Watch the moving goalposts about “functional claiming” from the option of PURE functional claiming as allowed by 35 USC 112(f) and the difference that the use of functional language is indeed allowed under law outside of section (f), as long as it is not PURELY functional (the Crouch-named vast middle ground) that our friend Random Examiner cannot see because his eyes are clenched tight.

              First off, nothing allows pure functional claiming, not even 112f. That is why 112f exists, because Halliburton found it to be pure functional claiming and Congress had to make it be construed as calling a particular structure.

              Second, to the extent your argument is an argument that “functional claiming in the middle ground is not disallowed” the most that can mean is that it is subject to the same strictures of structural claiming – 112 1st and 2nd. I haven’t heard an argument from you as to why the scope surpasses 112 1st and 2nd.

              the difference that the use of functional language is indeed allowed

              And by this the court you quote (and I hope you) meant “allowed” as in “not specifically disallowed.” Certainly you can’t argue that phrasing your claim with functional language means it doesnt have to comply with 101, 103 and 112, right? Then solve my 112 questions.

                1. The incorrect was HAS been articulated.

                  That you choose the Vinnie Barabarino meme response is a “you” problem.

                  Eppur si muove

    1. NWPA,

      Respectfully, I beg to differ with your interpretation of the comic.

      The standing person is obviously the inventor, who has just patented “a portable computing device with global positioning sensor and camera, configured to identify captured images of birds in national parks”.

      Of course, the inventor need not trouble himself with how to configure that device to accomplish his invention, what with there being no problems with functional claiming at the point of novelty or anything, and any competent PHOSITA being able to implement the described functionality.

      1. I am not sure what you are saying.

        Maybe you are just blowing smoke to obscure a central issue at the Fed. Cir. right now.

        Clearly the cartoon is says that your last paragraph is wrong. That functional claiming must be looked at in how a POSITA would view the functional claiming. This is at the core of what Lemley is trying to obscure.

        The point of novelty nonsense is just that nonsense. With a POSITA interpreting the functional claim in view the spec there is no problem whatsoever. The claim then is entitled to the scope of enablement.

        Anyone who disagrees with please try to present a cogent argument without smoke. Amazing the way the judicial activists will generate so much smoke that the average person cannot even understand the issues.

        This is not hard to understand and is clearly right.

        1. “The claim then is entitled to the scope of enablement.”

          You keep posting that, but it doesn’t make it true. The applicant is not entitled to everything enabled by the specification. The written description requirement is still there, and it limits the applicant to what the applicant can prove he/she/it had possession of at the time of filing.

          1. AAA JJ,

            How, in your view, is that possession proven?

            Keeping in mind two items of patent profanity: no one says my invention is only this, and, common boilerplate as to such expansion type things as my invention covers not just the items and combinations, but also the obvious variants that would occur to PHOSITA…

            1. “How, in your view, is that possession proven?”

              By a preponderance of the evidence.

              “Keeping in mind two items of patent profanity: no one says my invention is only this, and, common boilerplate as to such expansion type things as my invention covers not just the items and combinations, but also the obvious variants that would occur to PHOSITA…”

              Do you think common boilerplate can establish possession by a preponderance of the evidence?

              A claim can’t cover what you didn’t invent. If a patentee is seeking a claim construction or an equivalent of the claim through the DOE, but can’t prove, by reference to the application/patent, that they were in possession of that invention as of the filing date, they don’t get it.

              If the patentee argues, “Well, I can prove I invented that. Look, see, my patent says at the end, ‘my invention covers not just the items and combinations, but also the obvious variants that would occur to PHOSITA…'” would you find that persuasive?

              1. Sorry AAA JJ, I should have been more clear (I know what the standard is).

                What in your view is the proper way of meeting that standard?

                I am not a big fan of boilerplate, but at the same time, i do recognize that boilerplate exists because it has a useful purpose. No, you don’t just slap it in, but at the same time, you don’t leave it out if doing so hurts you.

                Also, your rejoinder of “a claim can’t cover what you didn’t invent” is a throw away line, as I am asking you how you advise to show possession of what you did invent (try to answer the question I did ask, and not a different one – usually you are pretty good at staying on track).

                In other words, what explicitly do you mean when you say “by reference to the application/patent, that they were in possession of that invention” without going all circular on me.

                1. All I can tell you is that it’s fact specific. How many species embodiments do you need to disclose to prove possession of a genus claim? I don’t know. It depends on the technology. Look at Lizard Tech, where the court said:

                  “The trouble with allowing claim 21 to cover all ways of performing DWT-based compression processes that lead to a seamless DWT is that there is no support for such a broad claim in the specification. The specification provides only a single way of creating a seamless DWT, which is by maintaining updated sums of DWT coefficients. There is no evidence that the specification contemplates a more generic way of creating a seamless array of DWT coefficients.”

                  The court than said of enablement and WD,

                  “Those two requirements usually rise and fall together. That is, a recitation of how to make and use the invention across the full breadth of the claim is ordinarily sufficient to demonstrate that the inventor possesses the full scope of the invention, and vice versa. This case is no exception. Whether the flaw in the specification is regarded as a failure to demonstrate that the patentee possessed the full scope of the invention recited in claim 21 or a failure to enable the full breadth of that claim, the specification provides inadequate support for the claim under section 112, paragraph one.”

                  The court then concluded,

                  “Placed in that context, it is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention and to enable such a person to make and use the invention without undue experimentation.”

                  So you’ve got to do more than enable the claimed invention. You have to show possession. My advice to clients that don’t want to include particular disclosures or embodiments because, “we don’t need to disclose that, everybody knows it could be done that way” would be to tell them, “Well, you’d better disclose them if you want to claim them or exclude others from using them.”

                2. All you can tell me is…

                  Not much, stuff I already know, and answers to questions not asked.

                  Thanks for (literally) nothing.

                  Sorry for the harshness, but you usually do a bit better and I expect more from you than from others.

                  (the additional quotes are nice, and I already also get what the courts have said – was looking for your personal view)

                  I will point out that your quotes do augment one of my positions: that the Supreme Court in its KSR decision has created a possible unintended consequence by augmenting PHOSITA as reflected in your last court quote paragraph.

                  Far too many people do not grasp this critical nuance when they expect the legal document known as the application to be some engineering document.

                  The Court in trying to make it tougher to get a patent made it easier to include less.

            2. How, in your view, is that possession proven?

              A little common sense helps, too.

              What I see a lot is the argument that:
              1) This has never been done before and
              2) I am telling you what functional result needs to occur and
              3) By me simply telling you the functional result, anyone of skill could come up with any way of doing it

              But those statements taken together say two things, first, that the only thing I needed to convey to obtain a patent was an idea (which raises large 101/constitutional issues) and second, that now that I have conveyed the general idea, I also know all of the particular expressions of that idea. But the latter is almost never true for any idea of relatively large scope and is unreasonable to believe.

              I mean why bother having a CAFC – they’ve already issued one opinion that performed the function of solving a patent dispute, why force them to write down another when the one expression made obvious, enabled, and proved possession of every other opinion they could possibly write, right? Could it be that another decision could go about the function in a completely different way that there is no evidence the first decision considered? Or perhaps particular facts in a different context (but still within the general forum of the “patent dispute processor” that is our judicial system) would lead one of skill in the art to a different conclusion while still fulfilling the function?

          2. I think that is a secondary issue AAA JJ. The battle is with how to interpret functional claiming in information processing claims.

            If the wd is taken into account, I have no problem with that.

            1. “The battle is with how to interpret functional claiming in information processing claims.” I don’t think there’s anything special about “information processing claims” that requires anything different from the rules of claim construction in any other art. The questions still remain: is the claim enabled and supported/described? With the understanding that the questions are asked from the view of one of ordinary skill in the art.

              1. Worth repeating and emphasizing:

                With the understanding that the questions are asked from the view of [the Supreme Court augmented] one of ordinary skill in the art.

                See above at 1:51 PM.

              2. AAA JJ I agree. But, read the cases and Lemley’s paper.

                Lemley has said something to the effect that if he can get rid of functional claiming then all the software patents are essentially gone.

                This is the current front. Functional claiming is the new abstract.

        2. NWPA,

          My last paragraph was intended to be sarcasm, but I’ll take the blame there for not throwing in tags.

          My point, simplified: the “inventor” in the comic, by claiming an old computer/GPS/camera “configured to” perform a broadly-described data-processing function, has no invention.

            1. My point, simplified: the “inventor” in the comic, [by tossing out an idea that the programmer was already enabled to complete] has no invention

              Not surprisingly, Dobu, you misunderstand what an inventor is.

              Past couple of months haven’t fixed you yet, have they?

                1. (you pick an odd place to make the comment, on the definition of inventor…)

                  It’s not an odd place, as under Alice the Supreme Court makes clear that the person in the comic isn’t an inventor (within the context of patent law). NWPA fails to see that.

                  You can’t simply tell someone in the art an idea you have and call yourself an inventor because the art has pre-enabled an embodiment. You’re still adding nothing more to the art that mere idea, which is not invention.

                2. What does “the art has pre-enabled an embodiment” mean to you? To a PHOSITA?

                  Would you like to play with my big box of electrons, protons, and neutrons? Or do you think that you need to invent new elementary particles because these are “pre-enabled in the art?”

                1. Well perhaps you can tell us instead of providing a citation to a book most of us do no have nor can get all that quickly or easily.

    2. a functional claim to a person skilled in the art may convey a set of solutions that each correspond to structure

      That’s nice. Unfortunately for you, the existence of some undescribed “solution” that “corresponds to structure” is not the same as actual structure. It’s not even close.

      You’ve claimed to be a person skilled in the art but you’ve never been able to tell us the objective physical structure that corresponds to “determine if Billy’s joint credit card is being used in Montana and send an email to Grandma if Grandma doesn’t want Billy to max out in Butte.”

      Everytime you are asked you just collapse into a heap and mumble that you don’t have to do this because … everybody knows the structure! And somehow you don’t see how ridiculous this behavior appears.

  16. Inventor : Hi, I’d like a patent on intentionally infringing someone’s trade dress.

    Patent guy : Send. It. Over.

    1. Place it right next to that valid and patent eligible fake lemonade stand patent.

      Then think about why the “save the children running through the field of grain” hype is out of place as noted by the great Judge Learned Hand.

      (but you know, he was probably a “grifter” too)

      1. Then think about why the “save the children running through the field of grain” hype is out of place as noted by the great Judge Learned Hand.

        Pretty sure the “saving children” hype is coming mostly from the patent-huffing loudmouths who believe that correlations and “new” DNA primers should be eligible for patenting.

  17. In a period of legal uncertainty, in a jurisdiction of Binding Precedent, this deliberate habitual use of the 2:1 majority:dissent trick strikes me as a great way to cope, and to accelerate advance of the law. Kudos to the CAFC!

    The trick? Find a suitable case, one that has been allocated to an “up for it” CAFC Panel.

    Then agree amongst the Panel, who will write the opposed “Takes” on the issues (here Chen and Mayer). Then, with deliberately opposed sides of the debate exaggerated in the opinions of the opposed protagonist judges, put these two opposite postures out for public debate. Praise to the two judges with the gumption and energy to do it.

    In the ensuing public debate, the SCOTUS “test” is the subject of learned, informed discussion and exposed to commendation, criticism or even ridicule. That debate informs the judiciary, and thereby hastens the day when the bindings of precedent work as they should.

    Come on folks, buck up” The Federal Circuit is asking for your help!

    1. That is some rich fantasy that you have there, thinking this is purposefully orchestrated with such thoughtfulness.

      It’s almost as if you think that this is the proper way of passing legislation.

      Oops – that belongs to a different branch.

    2. I also wonder if MaxDrei also sees some “superb order” in the machinations unfolding in his own backyard vis a vis President Battistelli and the EPO’s own meltdown of separation of powers.

  18. Everyone loves a scorecard, even in what we call the Game of Kings — though even kings (and apparently Samsung) would be pressed to afford a phalanx of quality patent lawyers nowadays.

    Hotels.com will doubtless submit a petition for en banc rehearing in the next thirty days (rule 40) after entry of judgement (5 December). DDR may petition also on the ‘572 issues. The CAFC can respond as it pleases or not respond at all (rule 35), but usually asks for an answer brief before granting a rehearing so both sides may be making a second round of arguments before the CAFC decides whether to rehear.

    Judge Mayer is a senior judge and cannot participate in the decision to rehear a case en banc, though he is empowered to participate in any en banc rehearing that the active judges order on a case where he was on the original panel. There is a strategic dynamic here. Mayer is known as a smart and persuasive moderate and the extremists might want to keep him off the en banc court that writes post-Alice precedents. Judge Mayer, like all the senior judges, is not empowered to participate en banc when he is not on the initial panel. The extremists may prefer to wait for a case where Mayer isn’t available. On this case the extremists already approve of the most critical decision on the ‘399 patent so they may just hope that the Supremes won’t deign to grant cert again so soon.

    If there is an en banc rehearing, we can expect that Mayer will hold to his moderate position and it is likely the usual moderates like Prost, Dyk, Taranto, and Hughes will join him. Chen and Wallach will probably be joined by the known extremists Newman, O’Malley, and Moore. Lourie usually joins the extremists but is known to respect Supreme Court precedent sometimes and is therefore unpredictable while Renya leans somewhat toward the moderates. It’s just what sports fans want (though not so much practicing attorneys): a likely six to six tie with thirteen different opinions giving no useful guidance to district judges and working lawyers with confused clients.

    That might attract Supreme attention again, too, which is like double overtime for the patent law fans.

    Now the extremists will have reason to avoid the whole issue by refusing rehearing. Rehearing requires a majority of the eleven active judges so if extremists can hold discipline between Newman, Lourie, Moore, O’Malley, Wallach, and Chen and think strategically, they can just let this one pass and wait for a better pitch.

    The extremist side has been burdened on §101 by cases where no reasonable person could possibly find the patents in question valid under several sections of 35 USC. I’d advise them to hold their fire and wait for a patent to come along that might pass §103 without laughter to best present their point of view to the Supremes. Alice, Bilsky, and Mayo are the Rosa Parks of patent law and the Bull Connor side should wait for a less charismatic victim; this is not that case.

    1. Owen, I do not see this case they way you do. Retrieving and displaying specific portions of a host webpage to communicate the same look and feel does not seem to be claiming something outside the statutory categories given Morse’s claim 5.

  19. Two and a half years ago, Dennis wrote, “It is simply ridiculous that after 40 year of debate, we still do not have an answer to the simple question of whether (or when software is patentable.”

    It’s even more ridiculous 2 1/2 years later. Congress can’t really enact a clear statute that would invalidate patents retroactively because it could be found to be unconstitutional (but some reason, the Supreme Court seems to have this power though). If the PTO wants to overreach and ignore DDR then there could be a potential APA claim against the PTO (like we had with Dr. Tafas and the “new rules” where the USPTO took a beating in terms of credibility).

    What a mess. There will be no end to this madness until the Supreme Court finally writes a clear opinion with a concrete test. I’m not holding my breath.

    1. The SCOTUS will never cut the knot on this one. The SCOTUS is into slowly dissolving patents like they did for anti-trust law. That is the big picture. Congress is the only hope of fixing it and that is a slim hope at best.

      Google wins—again.

    2. …and as exemplified by the ever polite albeit naive go author, that multi-decade battle continues in part because those unaware of history are doomed to repeat it.

      That’s what happens when monologues are ‘promoted’ instead of dialogues.

    3. patent leather, retroactively? You seem not to understand that a panel of the Fed. Cir. exceeded its authority in State Street Bank when that court overturned binding precedent of vintage.

      1. …and you Ned forgot what Prof. Crouch told you about the case you keep on trying to elevate from a pre-1952 district court into some type of binding precedent.

        I think your “misunderstanding” is far worse.

  20. Dennis, “ Although Judge Chen’s analysis is admirable, I cannot see it standing up to Supreme Court review and, the holding here is in dreadful tension with the Federal Circuit’s recent Ultramercial decision.

    I do not agree.

    Ultramercial’s novelty depended upon information novelty, e.g., whether the information displayed was an advertisement, and the desired information copyright protected. The present case does not depend upon information novelty, but on displaying visually perceptible elements from a host of a specific type.

    The novelty is physical because the claim require displays of visual images of specific host webpage content in a specific manner.

    Consider the factory where items are colored red, blue or green depending upon the action the assembly machine is supposed to take with respect to the item. Is color there nonstatutory when it is used to invoke a specific machine process on the item?

    Once Alice step 2 establishes novelty in something statutory, one cannot say that the invention is “directed to” the nonstatutory. Alice step 1 is really a reprise of Alice step 2.

    1. “The novelty is physical because the claim require displays of visual images of specific host webpage content in a specific manner.”

      I lulzed.

      Now light beams/rays are “physical” to ned.

      1. 6, I assume that a claim calling for a traffic light displaying three different colored lights for recognition of different signals would, in your view, not be patentable?

        Now let’s consider claim 5 of Morris — marks, lines and spaces.

        They were used to transmit letters, number and punctuation. But they were physical and they were patentable.

            1. Is that what you believe?

              I do have to chuckle as you make a joke at Ned’s strawman (software is not a “1”), while Ned’s position on “space” contradicts his own strawman.

              As for you jesse, how goes that copyright for that “something in the mind?” – time for you to run away now.

            1. There are much more than just two spaces there Ned, and no matter what it “seems” (to you or to the Romans), you STILL have not answered my question.

              What is the structure of the space?

                1. How about the same comment as 25.1.2.1.1.1 a the strawman of “software is “0” fails every bit as the first strawman.

                  Where’s my answer to the copyright for that “something in the mind,”

                2. jesse,

                  So “no answer” is your answer yet again.

                  Or was it your admission that your argument is irrelevant…?

                  For someone who prides themself on “logic,” you really blow at using it.

        1. “I assume that a claim calling for a traffic light displaying three different colored lights for recognition of different signals would, in your view, not be patentable”

          If it is a claim for an article, say a traffic light housing assembly with three different lights then it will be fine to proceed to 102/103. If you start adding limitations on there about how the article is acting, currently (i.e. displaying three different colors), by adding method step limitations then you’re mixing your claim categories.

          Either you’ll be left with a product by process claim or an ineligible mixed claim type. The former of which will simply reduce down to the product itself for patentability and restrict your scope with the method steps for purposes of infringement proceedings. And the latter of which will go down the 101/112 tubes.

          As to the “patentability” under 102/103 those are different questions and will depend on the art at hand. Though yes I believe there will be likely be a 102 for the subject matter you’re describing.

          “Now let’s consider claim 5 of Morris”

          Why? We were just sharing a lol at your nonsensical view that light beams or rays are “physical”.

          1. 6,

            We have not yet even gotten to the cutesy “How much does that weigh” rejoinder to:

            Now let’s consider claim 5 of Morris — marks, lines and spaces.

            They were used to transmit letters, number and punctuation. But they were physical and they were patentable.

  21. I highly recommend picking up and browsing through the 85 year anniversary edition of Bloombeg Businessweek.

    Malcolm has coyly asked “what’s next” in an attempt to diminish the innovation revolution we are in the midst of.

    This periodical, when viewed as an exhibition of change over the last 85 years, reveals just how petty and distracting the anti-business method and anti-software patent crusades are.

    Give it a read, and more importantly, give it a think.

    1. the innovation revolution

      I can hardly wait to see what “new” methods will be developed to persuade me to give money to other people!

      The future … it’s super shiny!

      1. Most of us that actually enjoy this profession do like to think that the future is Shiny.

        (said in the best Capt. Reynolds tones)

  22. I tell you guys, honestly, at this point it seems like all this software/biz method nonsense is nothing but an excuse for the CAFC to jump in the spotlight. To be relevant. Otherwise, the outside world just doesn’t care about them.

  23. For an interesting “compare and contrast” moment in the history of consumer manipulation, let’s revisit the words of the “great” Judge Rich in Juicy Whip (CAFC 1999): “[W]e find no basis in section 101 to hold that inventions can be ruled unpatentable for lack of utility simply because they have the capacity to fool some members of the public”

    Of course, the claims in Juicy Whip were directed to a new arrangement of physical articles, not some information being displayed on a screen whose only purpose for existing is to display information.

    (And, as an aside, the claimed invention did not merely “have the capacity” to fool people; it was designed to fool people and that was its entire point as Judge Rich surely knew. But, hey, “Congress could have told him not to write that sentence but they didn’t”)

      1. The item you offer does not support your views.

        Exactly which “item” are you referring to, exactly which views are you referring to, and what is your reasoning?

        Thanks in advance for your coherent and direct answer to this obvious question regarding your conclusory statement.

        1. Obvious question…?

          You do know the takeaway from the JuicyWhil case, do you not?

          Let’s start with you going first, since you selected the case as an example first.

        2. Here’s a hint since you once again seem intent on burning your fingers in trying to discuss (?) substantive law: MPEP 706.03(a)III.

          Maybe after reading (and understanding) the case that you yourself introduced, you will actually engage in a dialogue here and back on the Williamson thread.

          Don’t worry, no children, Amish or otherwise will be in danger running through the field of grain while you engage in a dialogue on the law.

  24. So how does DDR effect that PTO’s form paragraph which reads: rejected under 101 as not falling within one of four statutory categories of invention. Supreme Court precent and recent Federal Circuit decisions indicate that a statutory “process” under 35 U.S.C. 101 must (1) be tied to another statutory category (such as a particular apparatus), or (2) transform under subject matter (such as an article or material) to a different state or thing.”

    and then the examiner in one case wants the method claim to be amended to include a computer for carrying out the steps of the method. (and the method does not deal with business methods but clearly deals with technology)

    1. You filed a claim that doesn’t transform any physical article and it doesn’t recite a machine but it “clearly deals with technology”?

      Sounds to me like you’re trying to protect information or maybe a mathematical relationship between a measured value and some other number. Are either of those things “technology”?

    2. That form paragraph is incorrect under the law regardless of this case.

      Nowhere under the law is one statutory category a mere subset of the hard goods categories.

      MoT is NOT a requirement, being neither necessary (see Bilski), nor sufficient (see Prometheus).

        1. “So how does DDR effect that PTO’s form paragraph which reads: rejected under 101 as not falling within one of four statutory categories of invention. Supreme Court precent and recent Federal Circuit decisions indicate that a statutory “process” under 35 U.S.C. 101 must (1) be tied to another statutory category (such as a particular apparatus), or (2) transform under subject matter (such as an article or material) to a different state or thing.””

          Technically speaking it doesn’t. The FP stays the same.

          “and then the examiner in one case wants the method claim to be amended to include a computer for carrying out the steps of the method. (and the method does not deal with business methods but clearly deals with technology)”

          Sounds like you should put a computer in the claim. Also you should check whether the claim is in fact eligible regardless of what the examiner stated.

        2. I might be infringing your claim but based on what you’ve said (and what you haven’t said) it sounds like it’s almost certainly ineligible so I won’t worry about it and I’d advise others not to worry about it either.

          How does your client propose to make money off it? Do they have a product they are selling, or is their plan just to threaten people who actually offer goods and services with an ineligible patent that should never have been granted?

              1. I ask because I doubt your philosophy behind patent-eligibility has anything to do with whether a patent owner is using her patent or trolls, but I could be wrong.

                1. And I answered because my views on patent eligibility are not dependent on whether a particular claim is owned by a patent troll.

                  There’s nothing suprising about that, by the way.

                  What’s surprising is that some allegedy (self-described) “experts” think that the debate about the patenting of information and information processing logic is about “following the money.” That, of course, says a lot more about the values and “philosophy” of those “experts” than they will ever realize on their own.

                2. They why include inflammatory anti-troll rhetoric that distracts from the discussion at hand? Whether or not one has a product or is threatening to enforce a patent without practicing that patent is irrelevant to this discussion.

                3. Here’s the question I asked: How does your client propose to make money off [the putative patent]? Do they have a product they are selling, or is their plan just to threaten people who actually offer goods and services with an ineligible patent that should never have been granted?

                  How is that inflammatory? Welcome to the real world of patent prosecution with real clients, some of whom are con artists with much emphasis on the con. I could equally have asked how much money the client has and whether they owe more than their retainer — that’s might also be relevant to choosing a response to an inartfully worded rejection that is otherwise perfectly deserved based on what has been offered about the claim.

                  And that presumes that this mysterious claim is real. It seems to me that it would be helpful and straightforward to paraphrase the claim and provide a bit more detail about what was allegedly “innovated” and why the magical eference to a computer wasn’t put in the claim from the get-go.

                4. spin spin spin – how is your dance away from the question of your post being inflammatory and having nothing to do with the issue NOT so transparent as to being the usual Malcolm mantra?

                  Try to keep those goal posts in place.

          1. “Have a product”

            Besides the fact that no product is actually required under patent law, this misdirection belies the nature of a patent as a negative right.

            Let’s try to not kick up so much dust…

      1. Mayo v. Prometheus actually punted on whether it MoT was “sufficient,” by holding that there was no transformation in that claim as recited. (They left room for the possibility that physically requiring a blood draw might have saved the claim.)

        1. Mayo v. Prometheus actually punted on whether it MoT was “sufficient,” by holding that there was no transformation in that claim as recited. (They left room for the possibility that physically requiring a blood draw might have saved the claim.)

          I will concur with my comrade “anon” here, Ken: this is completely wrong.

          The Supreme Court acknowledged that there was a transformation in the recited claim (that was the only way to obtain the data from which the correlation was drawn). That fact, however, was insufficient to rescue the claim because the transformative step was in the prior art (“well known and conventional”) — indeed, the data gathering step was not even protected by a patent and was wholly within the public domain.

          Limiting the data gathering step to a more specific but equally conventional “blood draw” would have accomplished nothing for the claim.

    3. That is a very old post Bilski paragraph the Examiner is using. Point how out of date it is and quote one or more of the later memos that focus on abstract ideas.

  25. Mayer correctly criticizing the majority: In concluding that DDR’s claims meet the demands of section 101, the court focuses on the fact that “they recite a specific way to automate the creation of a composite web page . . . .”

    Here’s some more “specific” ways to “automate” the creation of a composite web page:

    Obtain information about the aesthetic preferences (e.g., favorite colors) of the browsing party and automatically use that information to automatically create a website with the look and feel of an appropriately pleasing website.

    Obtain information about a departed loved one or pet of the browsing party and automatically use that information to automatically create a website with an increased likelihood of retaining the interest of the browsing party.

    Obtain information about the amount of money that a browsing consumer has to spend and automatically use that information to automatically display a proposed means of paying for a commerce object displayed on the website that minimizes the financial burden on the browsing consumer.

    Obtain information about the appearance of a colleague or friend of the browsing consumer who is trusted by the consumer, then automatically incorporate that information into a non-fraudulent website which displays a character with the look and feel of that trusted friend or colleague along with a testimonial about the merits of a commerce object.

    Etc etc etc.

    I can do this all the day. Anybody can. Maybe I’ll give my dad a call.

    LOL

  26. ““[t]aking something that worked in the real world and doing it on the Internet.” ”

    In other words, the inventor himself admitted that it wasn’t patent eligible. lulz. Yeah this one’s sure to pass the supremes.

    1. I don’t think adapting something to another context necessarily rules “in” or “out” any particular concept. It depends what it takes to do so.

      (Whether this case meets that threshold is another matter, about which I’m not as certain.)

      1. Whether this case meets that threshold is another matter, about which I’m not as certain

        I’m 100% certain that “automatically” doesn’t reach the threshhold.

        Also 100% certain that “configured to” means the exact same thing as “automatically” in most of the computer-implemented j nk that is being claimed today.

      2. “It depends what it takes to do so.”

        If there was anything that needed to be done that had been recited in the claims then sure thing bro. Since there isn’t (as noted by majority and dissent alike) then we need not walk that road in this case.

  27. Imagine that tomorrow someone invents a new implantable information processing system.

    Do we re-boot this nonsense all over again? Does this “new” information communicating system mean that we were all born yesterday? Will judges be impressed when lawyers try to “make a lot of money” off the new system by claiming an infinite variety of information to shove in people’s faces with the system? Even when that information and its purpose is older than the hills?

    Is that how the patent system works?

    Because somehow the patent system didn’t work that way in the past, even when litigious pioneers like Edison and Hearst were in the game.

    What changed?

        1. Anon,

          Skimmed the article. I don’t see how that addresses the concern MM raised in his post? My pom-poms are probably here to stay = )

    1. Imagine that tomorrow someone invents a new drug delivery system.

      Do we re-boot this nonsense all over again? Does this “new” drug delivery system mean that we were all born yesterday? Will judges be impressed when lawyers try to “make a lot of money” off the new system by claiming an infinite variety of known pharmaceuticals to shove in people’s faces with the system? Even when those drugs and their purposes are older than the hills?

      Specifically, MM, say I invent a new aerosolized delivery system… Would you subsequently file claims directed to:
      1. A method of curing headaches, comprising:
      administering a therapeutically effective dosage of aspirin to a patient suffering a headache, via Dan’s aerosolized delivery system.

      Would that be a valid claim under 101?

      1. Imagine that someone has no response to a question but they see the world through bizarro glasses in which everything on earth is just like information processing.

        What does their response look like? Thanks to “Abstract iDan”, we now know the answer to that question.

        1. Imagine that someone has no response to a question

          … he says while responding to a post containing a question for him.

          Do you think anyone falls for this, MM?

          1. … he says while responding to a post containing a question for him.

            LOL. Can you follow a thread? See comment 18 to discover who asked the question.

            1. Yes, MM, you asked a rhetorical question. Rhetorical questions don’t seek answers. That is, unless you really, truly are asking “is that how the patent system works” and if so, I’d be happy to direct you to a basic primer on patent law. But, no, I don’t think you’re really asking that.

              However, I asked you a specific question – do you believe the claim I proposed above is valid or invalid under 35 USC 101?
              You apparently refused to answer, instead providing the self-answering question: “Imagine that someone has no response to a question… What does their response look like?”

              If you’d like to take another swing and actually answer the question, please do.
              Incidentally, I’m still waiting for you to answer any of the other questions I asked you at 13.1.1.2, seeking a more insightful or enlightening response than your answer at 13.1.1 of “Nope.”

              1. Here’s my specific question again, assuming that you’re done moving the goalpost.

                Imagine that tomorrow someone invents a new implantable information processing system.

                Do we re-boot this nonsense all over again? Does this “new” information communicating system mean that we were all born yesterday?

                Yes or no. If you can think of a caveat, provide it. If you don’t know what it means to be “born yesterday”, just ask, If you don’t know what I’m referring to by “this nonsense”, I’m referring to the practice of treating literally described information processing logic as “technology” when the purpose of the information processing is older than the hills, where the only technology in the claim is old technology whose sole purpose is to facilitate the transmission and processing of information, and where the information communicated is itself ineligible for patenting.

                Fyi: if I’m asking a rhetorical question, I’ll very often say so.

                f you’d like to take another swing and actually answer the question, please do.

                I never swung. Your question is easy to answer (still no idea why you think it’s relevant to this thread) and I’d be happy to answer it if you hadn’t already indicated an intention to tr0ll.

                But I long ago stopped playing question-and-answer games with silly nymed newbies here who don’t seem to “get it” and who have no interest in learning, after having been treated to their sickening merry-go-round rides too many times. You can understand that, right?

                So let’s hear your thoughts on my question first, “Abstract iDan”. Then you can tell us why your awesome question about the obvious use of an aerosolization method to physically transform a composition of matter is relevant to the topic of the ineligibility of both information processing logic and information itself. Thanks in advance.

                1. An intellectually honest person arguing in good faith places any personal animosity aside and answers the questions posed to him. So, let’s see how the rest of this thread plays out.

                  Imagine that tomorrow someone invents a new implantable information processing system.

                  Do we re-boot this nonsense all over again? Does this “new” information communicating system mean that we were all born yesterday?

                  Yes or no… If you don’t know what it means to be “born yesterday”, just ask.

                  I don’t, actually. I mean, I know the phrase, and I believe I understand your personal bias regarding this topic, but I don’t actually know what your question is trying to ask.

                  If you don’t know what I’m referring to by “this nonsense”, I’m referring to the practice of treating literally described information processing logic as “technology” when the purpose of the information processing is older than the hills, where the only technology in the claim is old technology whose sole purpose is to facilitate the transmission and processing of information, and where the information communicated is itself ineligible for patenting.

                  I’m still not actually sure what you’re asking. Rather than posing it as a question and then providing a paragraph of explanation of what your question means, can you ask a question that doesn’t need extra definition? For example, you say “treating literally described information processing logic as ‘technology'” but then you add in four conditions in which the purpose is “older than the hills”, it’s only “old technology”, the sole purpose is facilitating transmission and processing of information, and the information is ineligible for patenting… What about just the base question – should “literally described information processing logic” be treated as ‘technology’? Is a 4-bit adder ‘technology’? Sure. I wouldn’t try to patent one nowadays, though. But the question of whether something is ‘technology’ seems both irrelevant and hugely broad.

                  So that doesn’t seem to be what you’re asking. What I think you’re asking is this – and please confirm or rephrase or otherwise address it, because I would hate to put words in your mouth – I think you’re asking whether “[known method] performed on [new implantable information processing system] should be patentable.”

                  If that is your question, then the first person who invents that implantable information processing system should be able to get a patent on it. The next person, who merely says “do [known method] on [what is now a known machine]” should not, as it would be obvious under 103.

                  To be more explicit, it would pass 101, since it’s a method. It would pass 102, since it’s a new method. It would fail 103, since it’s new, but is a trivial combination of known elements (assuming that to be true, and that the implementation doesn’t present new difficulties that would require new elements in the claim).

                  Was that your question, MM? And if I answered the wrong question because I didn’t understand what you meant by “nonsense” or being “born yesterday”, please clarify, rather than accusing me of moving the goalposts, since, y’know, I’M ASKING YOU WHERE THE DAMN GOALPOSTS ARE.

                  I never swung. Your question is easy to answer (still no idea why you think it’s relevant to this thread) and I’d be happy to answer it if you hadn’t already indicated an intention to tr0ll.

                  But I long ago stopped playing question-and-answer games with silly nymed newbies here who don’t seem to “get it” and who have no interest in learning, after having been treated to their sickening merry-go-round rides too many times. You can understand that, right?

                  Nope. I can’t understand it. It’s “easy to answer” and you’re “happy to answer it”, but yet, I DON’T SEE AN ANSWER ANYWHERE. Maybe you’re not happy to answer it. Maybe it’s not easy to answer. Certainly, there’s no evidence to the contrary, since there’s no answer.

                  So let’s hear your thoughts on my question first,

                  Done. Your turn. Prove you’re an intellectually honest person debating in good faith.

                  Also…

                  “Abstract iDan”.

                  Why the quotes? Does this have to do with your reference above to ‘silly nymed[sic] newbies’? I originally used the nickname “Dan”, but people were (understandably) getting me confused with “DanH”, so I adopted this one (during a discussion of the abstract idea doctrine) for clarity. If you think that’s silly, then feel free to petition Dennis to require avatars or real names or code numbers or some other unique identifier. But you can drop the quotes. I don’t think anyone thinks you actually believe it’s my real name.

                  Then you can tell us why your awesome question about the obvious use of an aerosolization method to physically transform a composition of matter is relevant to the topic of the ineligibility of both information processing logic and information itself.

                  Happy to do so – once I hear your thoughts on my question first. You placed that requirement on me and I met your “challenge”, so your turn, MM. Answer my questions. Then we can discuss relevance.

                  Thanks in advance.

                  You’re most welcome. I’m always happy to have a good faith intellectual discussion with another professional… I mean, you are one of those, and that is what we’re having, right? If so, I’m sure you will provide a non-insulting, respectful, and complete reply shortly.

                2. “Abstract iDan”: To be more explicit, it would pass 101, since it’s a method.

                  Calling something a method doesn’t make it eligible under 101.

                  This is fundamental patent law. There’s no point in wasting anymore time with you.

              2. Malcolm is taken to task for evading a question and accuses the person who is trying to get Malcolm to answer the question of moving the goalpost…

                Classic.

                Eight years and running.

                Then call him a tr011 – because wanting a dialogue instead of a monologue is such a tr011-move.

                No wait, wanting a dialogue is what is supposed to happen here.

                But long ago I stopped playing

                Um, you actually have to play in order to stop playing. And even then, the rules here meant for us to play really really do apply to you.

                At least that’s the theory as I understand it.

                And in the end, Malcolm STILL does not answer the question and spins another answer my question first…

  28. “This case may end up again delaying the expected USPTO examiner guidance on abstract idea analysis.”

    It wouldn’t be so bad to have a data point on the “other side” being factored into the revised guidance, but wouldn’t they need to wait until at least a denial of en banc / cert? How long would those take?

    1. It wouldn’t be so bad to have a data point on the “other side” being factored into the revised guidance,

      Tell everyone what the “data point” is and what it means.

      1. I’m not going to the mat for this particular case; my main point is that it’s probably good to establish in principle that at least “there’s such a thing” as a patent-eligible software/internet concept. In other words, this case is at least a little “closer” to being eligible than Alice; whether it’s “different enough” is another matter IMO.

        (And BTW, can we soften the tone a bit? I mean I care about patent law as much as the next guy, but…)

        1. Too funny – eight years and running of that “the rules apply to someone else.”

          But hey, two way streets are OK, are they not, Professor?

        2. “it’s probably good to establish in principle that at least “there’s such a thing” as a patent-eligible software/internet concept.”

          Please tell me why that would be.

          1. Well I suppose it’s mainly a policy view…but I think that software innovation (albeit maybe not pure “business methods”) deserves at least some room for patent protection for much the same reasons as other fields, and it doesn’t seem fair to section off an entire tech sector as per se ineligible.

            Again, there are reasonable debates about where exactly the line should go, and I don’t argue that this case necessarily draws it in the best place.

            1. I think that software innovation (albeit maybe not pure “business methods”) deserves at least some room for patent protection for much the same reasons as other fields, and it doesn’t seem fair to section off an entire tech sector as per se ineligible.

              Again, there are reasonable debates about where exactly the line should go

              Really? Who are the reasonable person on the side of finding some software eligible but not others and how are they proposing to draw the line? What’s the test and what will be required of those seeking patent protection for their software (or will these “innovators” still be protecting mostly software that they never wrote, assuming that they possess the skill to write it in the first place)?

            2. Good to hear that at least someone can at least admit that their desire for patentability/eligibility of software is just a policy goal. Nothing more, nothing less.

              As MM notes below, we’re not privy to these supposed conversations amongst reasonable people as to where the reasonably drawn line is. I have yet to hear tale of any such reasonable proposals.

          2. It’s important to establish whether or not these types of patents are eligible because people have built business models and careers on the presumption that these sorts of patents are available.

            We all have our opinions about whether or not they ought to exist, but legal uncertainty puts a lot of people in an awkward intermediary stage that makes personal and business planning difficult.

            1. “It’s important to establish whether or not these types of patents are eligible because people have built business models and careers on the presumption that these sorts of patents are available.”

              I can agree with that entirely. So, it is my proposal to call them ineligible and let everyone move on until congress decides to implement a software patenting act, if they should so choose to do so. Since most folks think congress would be unlikely to do so, the softiewafties, as we like to call them, are not happy people since they wouldn’t be getting an entitlement program just for them.

              “We all have our opinions about whether or not they ought to exist, but legal uncertainty puts a lot of people in an awkward intermediary stage that makes personal and business planning difficult.”

              I agree entirely. I’m just a simple man myself, and I’ll take simple rules/law over convoluted nonsense for a law anyday. I also think that is the way legislation and the law as a whole needs to be for everyday people.

        3. Abstract iDan,

          MM (or among many other names) is also known as Malcolm. He just does not care about your suggestion – and never has.

          In the last merry go round of attempted civility, I learned that Malcolm has been posting in the exact same style for eight years and running – long, long long before I started posting here.

          The complaints from back then were exactly the same.

          While I personally do not believe that Malcolm and Prof. Crouch are the same person, the perception that some beyond ordinary interaction is quite natural to reach.

          And that does – and in truth, should – hurt, as there really is no bigger blight on these boards than Malcolm.

        4. people who have never previously spoken to you

          And yet somehow I could write your own comments for you because it’s the same recycled, debunked and Supremely trashed hogwash that your crew has been pumping since forever.

          You don’t realize this?

          1. your crew“…

            Yes the official tinfoil hat time has arrived.

            could write out your commentsfor you

            First, it is not the writers’comments being asked of you, but rather answers, and secondly, you can identify the questions because they appear to be the same ones you keep on running away from.

            Why don’t you stop running away, join the dialogue and answer the questions?

  29. “The case is close enough to the line that I expect a strong push for en banc review and certiorari. ”

    Bro it ain’t even near the line. They could just GVR.

  30. Judge Chen finds that – even if the claims are directed to an abstract idea – they do not preempt that idea but instead represent a “specific way” of creating a composite web page “in order to solve a problem faced by websites on the Internet.”

    LOL. The “specific” way is “do it automatically”.

    Because prior to 1998 nobody had used computers to do stuff automatically before! So many had tried but they lacked the incredible skill of these genetically brilliant patent trolls.

  31. Judge Chen, born yesterday: Although the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet.

    Although the claims address a business challenge (keeping readers from turning the page), it is a challenge particular to newspaper advertisting technology.

    Although the claims address a business challenge (keeping callers from hanging up), it is a challenge particular to phone technology.

    Although the claims address a business challenge (keeping telegraph recipients from canceling the receipt of the transmission), it is a challenge particular to telegraph technology.

    Although the claims address a business challenge (keeping people from wandering away from the carnival barker), it is a challenge particular to cone-shaped volume enhancing technology.

    Rinse, recycle, repeat.

    It really is quite sad.

    1. Judge Chen, born yesterday: Although the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet.

      Although the claims address a medical challenge (curing cancer), it is a challenge particular to pharmaceutical technology.

      Would you argue that all method of treatment claims are invalid, MM?

      Or to go one step further, there are methods of treatment claims that include entirely new drugs, and methods of treatment claims that are new uses of known drugs… Would you argue that the latter are all invalid, under the same doctrine that new uses of a standard computer are also invalid?

      1. Would you argue that all method of treatment claims are invalid, MM?

        Nope. Hilarious attempt to “analogize” there, by the way.

        there are methods of treatment claims that include entirely new drugs, and methods of treatment claims that are new uses of known drugs… Would you argue that the latter are all invalid, under the same doctrine that new uses of a standard computer are also invalid?

        Nope. Which part of “information processing is diffferent and presents unique eligibility issues” do you find difficult to understand?

        1. That’s a ‘nice’ non-answer and attempted shift back onto Abstract iDan of a simple and logical question put to you, Malcolm.

          Your dodge is not unexpected.

        2. Nope. Hilarious attempt to “analogize” there, by the way.

          Always happy to amuse. Would you like to explain why you answered “nope”, though?

          Which part of “information processing is diffferent and presents unique eligibility issues” do you find difficult to understand?

          The part where that’s not recited in 35 USC 101.

          But come, let’s hear your analysis… The USPTO suggests that this is patentable:
          1. A method of treating colon cancer, comprising:
          administering a daily dose of [known drug] to a patient for [time period], wherein said daily dose comprises [amount].

          But that this wouldn’t be patentable:
          1. A method of processing information, comprising:
          administering a daily dose of [known database logs] to a computer for [time period], wherein said daily dose comprises [amount].

          Frankly, I agree that the latter isn’t patentable under Alice… but why isn’t the former? And your handwavy “well, that involves a person” actually makes things worse: treating patients is a longstanding process going back millennia, much longer than double-entry bookkeeping, for example.

          1. Change the wording slightly:

            1. A method of treating [known disease], comprising:
            administering a daily dose of [known drug] to a patient for [time period], wherein said daily dose comprises [amount].

            Which is exactly the same treatment used for a bit over 2000 years for various [known disease].

            I used the exact same treatment for a cat with an eye infection… As well as various other ailments.

          2. Very serious guy “Abstract iDan” wants me to explain why every method of treating a disease using known drugs isn’t invalid.

            After all, if “iDan’s” favorite claims aren’t valid, then how can it be that someone else’s favorite claims remain valid? Apparently “iDan” needs someone to hold his hand and walk him through the big tunnel of life that reads “it’s not all about you.”

            Yes, he’s a very serious person.

  32. Judge Chen, born yesterday: Although the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet.

    Because keeping a third party from losing interest by displaying some interest-retaining information is toooooooootally different when you are using an old computer display.

    If anything, the “challenge particular to the Internet” is far, far less of a “challenge” than that faced by previous advertisers because (wait for it) it’s the Internet.

    I wonder what other kinds of advertising scams Chen is unaware of? One wonders how many viruses the guy dumps onto his computer every day because he thinks he’s looking at one thing but (oh my gosh!) it’s just another website trying to get his credit card number. Maybe one of his clerks can help him “get up to speed.”

  33. Richard wrote this down below:

    Judge Chen did more than that: in his Alice Step Two analysis, he reasoned that the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks. Slip opinion, id. at 20. In effect, the judge said that the claim necessarily required a machine and this is a useful clue of its patent eligibility.

    Whatever utility the “machine or transformation” test has in today’s world, one thing is certain: the mere recitation of some old machine in the claim is not a useful “clue” that the claim is eligible. That’s because in so many ineligible claims floating out there the old machine is likely to be a “computer”. In fact, if the old machine is “a computer”, then the opposite is true: the claim is more likely to be ineligible than a claim that recites a non-computing machine.

    Why is that? That’s an easy question to answer. The answer is : bcause computers exist to process information, and claims that implicate information and information processing are always going to be far more likely to present patent eligibility issues than other types of claims.

    A bona fide “clue” to the likelihood of eligibility of a claim is not the mere recitation of some “machine” but rather the recitation of a new machine, described in objective structural terms. That kind of claim is almost always going to be eligible for patenting, as will be a process claim that recites the use of that machine (as long as the machine’s structure is defined to distinguish it from the prior art). The only clear-cut exception to this rule would be a claim that recites something like “A method, wherein said method comprises looking at [insert objective physical description of new machine here].” That claim, of course, is also ineligible for patenting.

  34. Dennis: The patent itself issued in 2006 but claims priority to a 1998 filing. Five inventors are listed including f a ther-s on pair

    Who are the other three? Let me guess: the wife of the chair of the law firm where the dad works, another patent attorney, and a college buddy of the dad.

    LOL

  35. mmm The only thing that isn’t covered by either shared hosting / HTTP RFCs that both pre-date the patent is the idea of carrying forward the branding.

    No doubt about that.

    I also think it’s safe to say that that idea [carrying forward the branding] doesn’t really have a real world analog.

    That’s a joke, right? Did you ever open up a newspaper and see a bunch of advertisements with different “branding”?

    How do you think that particular information got in front of your face?

    I’ll tell you: various distinct parties used existing technology to determine what information you would see when you opened that paper.

    But old computer displays are like tooooootally different from old newspapers, right? Because …. “computer”!

    When is software patenting going to grow up? How long do we have to put up with this ridiculous “I was born yesterday” nonsense that promotes precisely nothing except lawsuits and lawyering?

    1. “First, Judge Chen found the solution here to be internet-focused with no direct corresponding offline equivalence.”

      Isn’t the corresponding offline equivalent something like a snail-mail catalog?

    2. Judge Chen found the solution here to be internet-focused with no direct corresponding offline equivalence.”

      We must wonder here: what exactly does “direct” mean to Judge Chen?

  36. Dennis: Although Judge Chen’s analysis is admirable, I cannot see it standing up to Supreme Court review and, the holding here is in dreadful tension with the Federal Circuit’s recent Ultramercial decision.

    All that’s “admirable” about Chen’s analysis is the wicked somersaults he does to avoid directly facing the facts and applying the law that the Supreme Court and his own circuit require him to apply.

    Of course, if he did that he’d end up reaching the conclusion that he plainly was trying not to reach.

    Practice tip: “limitations” about who owns something recited in a claim are almost never the kinds of “limitations” that are going to turn your otherwise ineligible or unpatentable claim into something that you can enforce against a defendant with half a brain and half a spine.

    On the contrary, dropping such limitations into claim provides an enormous clue that your “innovation” is ineligible or merely the obvious application of old technology to the equally ancient “field” of communicating information designed to encourage someone to buy your baloney (aka “commerce”).

    Live and learn, folks. Assuming the defendant doesn’t roll over here, this opinion is going to quickly become an infamous example of the Federal Circuit’s rank incompetence.

    1. Not really. What Chen did was a real analysis of the technology. You know what it really does not your fantasy where all functions that can be written can easily be implemented on a computer. (I wish I could upload a cartoon on that one. There is a cartoon going around that makes fun of the ignorant that think that merely being able to verbalize something means you can do it on a computer.)

      The ignorant and base MM.

          1. All information processing is the same according to you. So according to you my post is the same as your post.

            Riiiiiiight.

            Great “argument”, buddy.

  37. “the holding here is in dreadful tension with the Federal Circuit’s recent Ultramercial decision.”

    Yes, but here is how the Ultramercial decision was decided:

    Chief Prost to Lourie and O’Malley: “I won’t tolerate another remand here or even any dissent”
    Lourie: “OK, even though I already opined twice that it is not an abstract idea, I can change my mind now”
    O’Malley: “But Sharon, this is a 12(b)(6) motion….”
    Chief Prost: “Silence. Your opinion won’t matter. I am appointing Mayer to the panel”
    O’Malley: “gasp”

  38. The manner and content of presentation for this case has been very insightful. I think I have a better understanding of Dennis’ views. Thanks.

        1. A sock puppet implication from you is delightfully ironic, Malcolm, seeing as Dr. Noonan has again slammed you and your sock puppet.

          You need a better meme than the “grifters” meme.

      1. Well, whoever this “MM” is, he/she/it certainly has a lot of time on his/her/its hands. He/She/It appears to have made a ton of long posts here, in an amazingly short period of time.

        Personally, I skip all of MM’s posts: there are simply too many to read, and all the ones I’ve actually read appear to be the same argument over and over again. Further, I skip entire threads started by MM, as I know that any thread that starts with MM’s posts will start at or degenerate into name calling.

  39. Obama also said something about transperancy…

    Now using the dubious Ms Palin as an answering point is itself dubious, the view on ‘transperancy’ should not be clouded with post facto “well, we meant other people being transparent” types of ‘reasoning.’

      1. I did not miss that, Richard.

        My reply though strikes directly back at something far more pertinent, without becoming snarled in a wacky Repulican figure.

  40. I do tend to think that these claims ARE NOT like those in some of the other cases. But reading the claims makes me want to scratch my eyes out.

    (a)[0] have a bunch of webpages with an owner’s branding (visually perceptible elements is a stupid person limitation)
    (a)(i) each webpage belongs to some owner
    (a)(ii) each of the webpages has a link to buy something from a merchant
    (a)(iii) the host, webpage owner and merchant are all different

    (b)[0] a web server
    (b)(i) that can receive an HTTP request for one of the links
    (b)(ii) that understands the referrer (“source page”)
    (b)(iii) get data about the source page
    (b)(iv) build a new page by
    (A) displaying the thing to be sold
    (B) displaying owner’s branding.

    The only thing that isn’t covered by either shared hosting / HTTP RFCs that both pre-date the patent is the idea of carrying forward the branding. I also think it’s safe to say that that idea doesn’t really have a real world analog.

    I don’t think that this is going to make it very far on validity. If for no other reason than the fact that “outsourcer” is just a webhost meaning that the only thing that remains is a “merchant” and a “dealer” sharing a common infrastructure. Remember that in 1995-1996, domains weren’t regularly acquired by companies. Dealerships likely had a subdomain of their brands’ domain. Ditto for Franchise/Franchisee relationships.

      1. I think this plan of attack stems directly from the growing belief that 101 for anything computer related is all but a backboard-shattering-slam-dunk. I assume that the defendants believed that under Alice and follow on case law at the Fed. Ct. there was no reasonable expectation of the patent surviving.

        1. I assume that the defendants believed that under Alice and follow on case law at the Fed. Ct. there was no reasonable expectation of the patent surviving.

          And they were correct.

          The fact that this particular panel made a joke out of the entire Federal Circuit doesn’t change any of that.

          Reversal on the way.

            1. f you really believed that, you wouldn’t be ranting so.

              Not true at all.

              I really do believe this and what you seem to believe is “ranting” is just a statement of all the reasons that the reversal is coming and it’s going to come down hard.

              1. Malcolm rants regardless – as he has shown zero interest in actually partaking in a dialogue (eight years and running).

                Maybe because on those rare occasions that he has ventured from his script, he volunteers admissions about knowing controlling law in certain areas…

          1. MM, I wouldn’t be so sure of that. The novelty seems to be displaying specific kinds of visibly perceptible fields from the host webpage. The novelty is not on the “meaning” of anything.

      2. Well one could argue they did with Alice as Alice really makes all old 102 and 103 law bad. Graham is clearly no longer good law.

        1. And I mean that from a practical point of view of advising clients. A client can compare their invention to what is known and I don’t know how to compare the two. Will it be a gist performed in the head of a science ignorant judge or will there be some sort of real analysis performed? I don’t know. That is why all 102, 103, and really 112 law is bad law now.

          1. I am not sure that ‘bad law’ is entirely accurate. To the extent that that law still knocks out patents or makes enforcing them more difficult, that law will still be considered good law.

            And yes, to the extent that such use of the law is good law, it remains good law. That is to say (to squelch the dust kickers), not all of that law should be gotten rid of just for some silly over the top notion of “more patents” schtick.

            1. Well it is modified. Graham is no longer good law in the sense that we can’t rely on it. It has been modified by Alice. I.e. you might be gisted away with no analysis done.

                1. Please publish an article on your viewpoint so it can be taken more seriously and so it reaches a wider audience and can be cited.

      3. “Regarding novelty/nonobviousness: I should note that the defendants in this case did not even challenge novelty/obviousness for this patent.”

        I hope their malpractice insurance is paid up

    1. “I also think it’s safe to say that that idea doesn’t really have a real world analog.”.

      Whether the algorithm was in fact known or unknown at the time of the claimed invention, as one of the “basic tools of scientific and technological work,” it is treated as though it were a familiar part of the prior art. Parker v. Flook, 437 US 584, 591-92 (1978).

      If we apply the above holding to Step One Under Alice, then it really does not matter whether the idea really has a real world analog because the Supreme Court will treat even novel abstract ideas as though they were familiar parts of the prior art. In my opinion (for whatever it is worth), Judge Chen’s differentiation of Alice on the basis that redirecting user to a hybrid webpage containing contents from user selected web page and contents of commercial objects of some third party is not a long standing practice would not support a case for the claim’s eligibility.

      But Judge Chen did more than that: in his Alice Step Two analysis, he reasoned that the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks. Slip opinion, id. at 20. In effect, the judge said that the claim necessarily required a machine and this is a useful clue of its patent eligibility.

      The judge further pointed out that in contrast to conventional processes of internet hyperlinking, a click on a particular website would instantly transports user away from a host website the user actually identified but to a domain hosted by a outsource provider who construct and serve to the visitor a new, hybrid webpage that merges products of third party merchant with visually perceptible elements from the identified domain host. Id. The judge concluded that the claims in the case specified how interactions with the itnernet are manipulated to yield a desired result, a result that is not routine and conventional consequence of events ordinarily triggered by the click of a hyperlink. Id. at 22. As an ordered combination, the claims recite an invention that is not merely the routine or conventional use of the internet.

      To buffer the conclusion, the judge concluded that the claims do not preempt every applicaiton of the idea of increasing sales by making two web pages look the same because the claims recite a specific way to automate the creation of a composite webpage by an oursource provider that incorporates elements from multiple sources in order to solve a problem faced by websites on the internet. Id. at 23. According to the judge, that provided “more than a drafting effort designed to monopolize an abstract idea.

      A valiant analysis by Judge Chen to distinguish the claims from patent ineligibile claims in previous cases. Though i think Judge Chen looked more at Claim 19 more than Claim 13 when he did his analysis.

      Claim 13, despite reciting a computer processor and the inherent need of a machine to implement the underlying subject matter, probably would not survive Alice Two-Step. The abstract idea involved generating a composite webpage combining look and feel description of a host webpage with content of commerce object. Under Step One, this is treated as though it was a familiar part of the prior art and thus not “new and useful”. Under Step Two, the claim calls for a processor to implement the above idea and a data store to store the look and feel description of the host webpage. As the Supreme Court held in Alice that “apply it with a computer ” is not enough, Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347, 2358 (2014), claiming a processor to “apply it” is just not the “something more” that is required under Step Two. Further, storing the “look and feel” on a computer is a purely conventional / obvious step just like claiming that Sky is blue, internet may be used to connect to another website, or transmitting data from one network node to another network node etc.

      Judge Chen’s Step Two analysis as applied to Claim 19 probably will not survive Alice scrutiny.

      True, if the idea is, upon activation of a link to a commerce object on a webpage, to generate a hybrid webpage using “Look and Feel” description of host web page and content of the commerce object, Claim 19 particularly pointed out one manner of generating that hybrid webpage. However, the claim probably recited nothing like the “something more” the Supreme Court was looking for: something that is not conventional or necessarily required by an abstract idea. All the variables of the idea are defined under sub-section (a) of Claim 19. This portion is analogous to the math formula and the algorithm claim of Flook as it recited no more than a definition of the various variables comprising an abstract idea.

      Under sub-section (b) of Claim 19, the claim recited various steps of applying the variables defined in sub-section (a). The question is whether Steps (b)(i)-(iv) are more analogous to Diehr’s particular application of a well known equation to cure rubber by particularly pointing out where on the mold cavity to obtain variable Z for use in In v = CZ + x, how to repetitively calculate the curing time using In v = CZ + x (at regular intervals), and when to open the mold. Note that purely conventional/obvious steps comprises obtaining C somehow, obtaining Z somehow, obtaining x somehow, calculate v using the equation, and apply it to cure rubber.

      The idea of generating hybrid webpage using description data of host webpage and a commerce object upon activation of a link on the host webpage correlated with the commerce object requires purely conventional steps like determining activation of the link, if there is activation then : obtaining description data of host webpage, obtaining data of commerce object, and generate the webpage using the obtained data, however developed.

      Compare subsection (b) of Claim 19, Claim 19 probably recited no more than the aforementioned conventional steps. (b)(i) – b(ii) recited identifying the host webpage with the link that was activated much like identifying temperature Z somehow without explaining where to measure temperature Z in Diehr. (b)(iii) simply retrieves stored data about the host web page much like obtaining activation constant C unique to compounds being molded for In v = CZ + x.

      (b)(iv) generates a webpage that displays information about the commerce object and visual elements of the host webpage and transmit it to the web browser used by a user who activated the link. The generation step is akin to the creation of shadow debt/credit records in Alice without explanation as to how exactly the records are created. The transmission step of transmitting the hybrid webpage is a purely obvious step unlike the application step of Diehr. One may argue that Diehr’s repetitive measuring and monitoring steps to cure rubber may be well known, it is not purely obvious like the one in the instant case: merely requiring the computer to transmit the webpage without any ordered combination of even well known steps.

      For whatever my opinion is worth, I think Claims 13 and 19 would probably not survive Alice framework, if the Supreme Court grants cert or Fed. Cir. grants en banc.

      1. “Whether the algorithm was in fact known or unknown at the time of the claimed invention, as one of the “basic tools of scientific and technological work,” it is treated as though it were a familiar part of the prior art. Parker v. Flook, 437 US 584, 591-92 (1978).”

        That’s true only if it has already been determined that the claims are “directed to” a mathematical algorithm, right? At least, that’s all the Parker v. Flook supports, as far as I can tell.

        “If we apply the above holding to Step One Under Alice, then it really does not matter whether the idea really has a real world analog because the Supreme Court will treat even novel abstract ideas as though they were familiar parts of the prior art.”

        This seems to assume the conclusion. Step One implicitly requires both determining what idea the claims are directed to and then determining if that idea is Abstract. Your statement is only true for claims that have already been determined to be directed to Abstract ideas, and Judge Chen is holding that the idea to which these claims are directed is not Abstract.

        RE claim 13: “The abstract idea involved generating a composite webpage combining look and feel description of a host webpage with content of commerce object.”

        Why is that Abstract? What’s the actual reason?

        Perhaps you’re suggesting it is Abstract because “[t]his portion is analogous to the math formula and the algorithm claim of Flook as it recited no more than a definition of the various variables comprising an abstract idea.”

        If so, it seems like a far stretch. Flook expressly dealt with a mathematical algorithm for calculating an alarm limit. What is the corollary mathematical algorithm in the “idea” you define above?

        RE Claim 19, you state that the idea is “upon activation of a link to a commerce object on a webpage, to generate a hybrid webpage using “Look and Feel” description of host web page and content of the commerce object, Claim 19 particularly pointed out one manner of generating that hybrid webpage.”

        As with claim 13, why is this Abstract?

        1. “That’s true only if it has already been determined that the claims are “directed to” a mathematical algorithm, right?”

          Or any other abstraction/abstract idea.

        2. “That’s true only if it has already been determined that the claims are “directed to” a mathematical algorithm, right? At least, that’s all the Parker v. Flook supports, as far as I can tell.”

          A narrow reading of Flook in order to make the slightest distinction. Though i doubt such distinction would prevent the Supreme Court from applying that holding to all forms of judicial exception. In particular,

          “Respondent’s process is unpatentable under § 101, not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention”; Parker, 437 US at 594. “Excluded from such patent protection are laws of nature, natural phenomena, and abstract ideas”. Diamond v. Diehr, 450 US 175, 185 (1981); and “Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection…”; Diehr, 450 US at 189.

          The Supreme Court effectively asserted that all judicial exceptions, not just algorithms, are not patent eligible because once they were treated as though they were familiar parts of the prior art, they were not “new and useful” and thus excluded from patent protection.

          “Why is that Abstract? What’s the actual reason?”.

          the Supreme Court interpreted §101 to exclude judicial exceptions consisted of laws of nature, natural phenomena, and abstract ideas; abstract ideas being a category consists of principles / fundamental truths, original cause, motives, algorithms and mental processes or abstract intellectual concepts. Diamond v. Diehr, 450 U.S. 175, 185-86 (1981). See also Gottschalk v. Benson, 409 U.S. 65, 67 (1972). Further, the line between processes and principles is not clear because both are conceptions of mind seen only by their effects when being executed or performed. Flook, 437 US at 589.

          Claim 13 was drawn to an idea, a conception of mind, that upon activation of a link within a host webpage, respond with a hybrid webpage with features of the host webpage and the commerical object correlated with the link. Without describing a process with non-conventional steps of creating the hybrid webpage, the claim simply described an idea of creating such hybrid webpage using a processor. The additional step of the processor using information about the host webpage stored in a computer to “make it” or “apply it” does not make the “something more” that Alice Step Two seeks.

          This is because “something more” requires steps that if one skilled in the art were to use the idea, which is assumed to be a familiar part of the prior art, the steps are not the kind of steps one skilled in the art would necessarily use to “apply it” the idea. Mayo, 132 S.Ct. at 1298 (“Anyone who wants to make use of these laws must first administer…so the combination amounts to nothing significantly more than an instruction to doctors to apply the applicable laws…”); see also id. at 1299-30 (defining conventional steps as steps that must be taken in order to apply the laws in question).

          Examples of such generic steps: the principle that 2πr is useful to calculate a circumference of a wheel with a prompt to “apply it” prescribes only generic pre/post-solution steps necessary to implement the principle comprising: (1) obtaining the wheel, (2) determining its radius (“r”), and (3) computing the circumference of the wheel in accordance to 2πr.

          Under Step Two, given an idea or a principle, we assume that one skilled in the art would use it. In that assumption, there are certain steps that the idea, if one was to “apply it”, would necessarily use (the so called “generic steps”). By determining these generic steps and compare those generic steps with the actual claim, we could determine whether the claim recited “something more”.

          If there is no “something more”, then the claim recited no more than an abstract idea.

          1. First you say: “abstract ideas being a category consists of principles / fundamental truths, original cause, motives, algorithms and mental processes or abstract intellectual concepts. Diamond v. Diehr, 450 U.S. 175, 185-86 (1981). See also Gottschalk v. Benson, 409 U.S. 65, 67 (1972).”

            Then you say that “Without describing a process with non-conventional steps of creating the hybrid webpage, the claim simply described an idea of creating such hybrid webpage using a processor” before moving again to Step Two. Where is your Step One reasoning? I still haven’t seen the argument by which you are suggesting that “creating such hybrid webpage using a processor” is abstract. Here are my thoughts, using your enumerated categories:

            “creating such hybrid webpage using a processor” is not a “principle / fundamental truth.” This seems clearly true.

            “creating such hybrid webpage using a processor” is not an “original cause.” Ditto.

            I don’t think “creating such hybrid webpage using a processor” is a “motive.” I’m not sure what the Court in Le Roy v. Tatham was referring to with the word “motive,” but I’d argue that the burden would be on the person setting forth the rejection to say that “creating such hybrid webpage using a processor” is a “motive.”

            “creating such hybrid webpage using a processor” is not a mental process (note that it cannot be, when it uses a processor).

            “creating such hybrid webpage using a processor” is not an algorithm. I tried to make this point in my last post (contrasting the alarm limit calculation algorithm with the claims of this case).

            Is “creating such hybrid webpage using a processor” an “abstract intellectual concept?” That’s essentially the inquiry in Step One of the Alice test, so if you assume the answer to this question is yes, then you have not actually done any underlying Step One analysis.

            In other words, while you’ve listed a series of things that can be considered judicial exceptions, you have not provided a basis for concluding that “creating such hybrid webpage using a processor” falls within any of them.

            I think you’re implying that a 112 1st paragraph deficiency is present, and that this deficiency causes the 101 issue. This is like Judge Mayer’s “technological arts” test, which was not the holding of Alice (if it were, why did the court expressly not invalidate all business method or software patents?). Could you elaborate on this theory, if I’m right?

            “the line between processes and principles is not clear because both are conceptions of mind seen only by their effects when being executed or performed. Flook, 437 US at 589.”

            Out of context, I’d say that a process is a series of steps, while a principle is not a series of steps. The distinction seems quite clear to me, so I’m not sure what result you draw from this dicta. Are you trying to use this quote to suggest that every method claim arguably fails Step One, due to some lack of a distinction between processes and principles? Such reasoning would be a clear violation of the statutory language of 101 (“any new and useful process…”).

            Without getting to your discussion of Step Two, I ask again: what makes “creating such hybrid webpage using a processor” abstract?

            1. “Is “creating such hybrid webpage using a processor” an “abstract intellectual concept?” That’s essentially the inquiry in Step One of the Alice test, so if you assume the answer to this question is yes, then you have not actually done any underlying Step One analysis.” and “Without getting to your discussion of Step Two, I ask again: what makes “creating such hybrid webpage using a processor” abstract?”.

              Step one is simple and straight forward. People do not need to engage in extensive mental exercise to differentiate an idea or abstract intellectual principle from particular manners to implement an idea.

              An idea states a general goal /desired end with general outline of how to implement this goal. For example, using computer to achieve end A.

              Suppose i want to create a webpage that allows people to reserve shopping of desired items on Black Friday one week ahead of black friday. Do you consider this an idea? Do you consider this a motive?

              I stated a general desire to make something in order to achieve an aim and the idea behind implementation of this aim is to generate a webpage. Here, i stated no particular way in which this webpage operates other than that it would be correlated with desired items people wished to buy on black friday. There is no particulars as to how the website would coorindate with potential merchants, no particular with respect to how the website would coordinate with potential merchants to make the advance reservation, and no detail as to how the website would “look and feel” like or be organized.

              Under Step One, all that is just an idea. Now suppose i want to use a processor to generate a webpage for the web site; in effect, to “apply it” using a computer. As the Supreme Court made it clear, using a computer to generally apply an idea is insufficient.

              Similarly, Claim 13 recites an general idea that in response to the activation of a link correlated with a merchandise, generate a webpage with “look and feel” of a source webpage and information about the merchandise. Under Step One, that idea is treated as familiar parts of the prior art. Under Step Two, what else is there? A processor to generate the hybrid webpage is akin to having the computer to “apply it” the idea.

              Another way of thinking about ideas is that an idea comprises a desire / motive with a general overview of how to implement the idea like going to a client and say i will obtain a patent for you by persuading the Patent Office to grant you a patent. However, i do no explain to him/her the patent drafting process, the patent prosecution process, and the patent issuing process.

              “I think you’re implying that a 112 1st paragraph deficiency is present, and that this deficiency causes the 101 issue. This is like Judge Mayer’s “technological arts” test, which was not the holding of Alice (if it were, why did the court expressly not invalidate all business method or software patents?). Could you elaborate on this theory, if I’m right?”

              People are fixated on this “technological arts” test. I am not one of them. As Diehr pointed out, even an application of a well known process may well deserve patent protection.

              The question is really whether the scope of protection granted commensurate with the scope of an inventor’s discovery. I theorized that the Supreme Court uses 101 as a last ditch defense to ensure that exclusive rights secured are limited to only what the inventor discovered, nothing more. The trouble with protecting idea is that an idea covers not only what the inventor discovered and implemented, but also what the inventor did not discover and failed to implement.

              A lot of people argued that 112 prevents inventors from claiming discoveries he/she did not make. A lot of time, it may be. But 112 does not absolutely ensure this end so the Supreme Court uses 101 “new and useful” as a last ditch defense to ensure this end. See example of Myriad’s hypothetical about how Myriad’s patent to isolated cDNA would cover isolating cDNA + one nucleotide (which, according to the Supreme Court, Myriad did not isolate).

              “Out of context, I’d say that a process is a series of steps, while a principle is not a series of steps. The distinction seems quite clear to me, so I’m not sure what result you draw from this dicta. Are you trying to use this quote to suggest that every method claim arguably fails Step One, due to some lack of a distinction between processes and principles? Such reasoning would be a clear violation of the statutory language of 101 (“any new and useful process…”).”

              The 2πr example illustrates my point. I have a general idea of using 2πr to calculate circumference of a wheel. To apply it, i would only need to (1) find a wheel, (2) measure the radius of the wheel, and (3) calculate 2πr base on (2). In all substance, (1)-(3) are steps constituting an idea that 2πr is useful to calculate circumference of a wheel; now that is a process within the meaning of 101.

              According to the Supreme Court, an idea like is not “new and useful” because we have to treat it as familiar part of the prior art and thus, one which 101 was not enacted to protect.

              People could disagree with respect to what constitutes “more” under Step Two, but i think there is very little room for you to argue what constitutes an idea under Step One.

              1. Richard,

                Is there anything that is not an “idea” as you are using that term here?

                Kitchen table.

                Quick – is that not too an idea as you use that term?

                1. Kitchen table is an apparatus, a composition of matter, or an article of manufacture. It is not a process. My position is that, all process / method claim involves an idea at some level. Once we identify the idea, we must determine whether the claim recites “something more”. Reasonably people may disagree on what constitutes “something more” but I really don’t think Alice Step One is as controversial as people thought that it should be.

                2. Not only do you miss the point, but you do so by ignoring the very warning that the Supreme Court gave you about “scriviners” and the ability to portray an invention in any of the statutory categories.

                  You also ignore what the Office is trying to do by using ALL of the Court’s decisions for one set of guidance for ALL categories.

                  I think that you have lost your way, and are in the weeds of making up your own law and your own guidance to your own law.

                  What’s worse is that you are just not aware of how deep into the weeds you are.

              2. “An idea states a general goal /desired end with general outline of how to implement this goal.”

                My best read of your position is that you think every method claim fails Step One. This seems to be a very strange interpretation of the statute and case law, but thanks for clarifying. I think we’ll just have to agree to disagree.

                1. I think you misunderstood my position. My position is actually that Step One does not fail any method claim at all. Rather, Step One is about identifying the abstract idea within the claim because all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas. Mayo Collaborative v. Prometheus Labs., 132 S. Ct. 1289, 1293 (2012).

                  It is only under Step Two where if i determine that the claim lack “something more” that the claim fails the Alice test. In my opinion, with the exception of some very broad business method claim like the one in Bilski, almost no modern method claim would fail Step One (at least the kind of software claims that i focuses on: image processing and speech processing).

                  My conclusion of Claim 13 is substantially a claim on an abstract idea was not base on Alice Step One, but Alice Step Two as i pointed out that Claim 13 simple recited: (1) a processor to apply the idea and (2) a storage that stores some kind of data about the “look and feel” of a webpage.

                  To me, if i am to apply the Supreme Court’s holding in Flook and Diehr that 101 analysis is distinct from and must precede 102/103, Mayo’s concept of “purely obviousness” must be different from the obviousness under 103. Using that understanding, (2) is a purely obvious concept much like we know a LCD displays an image, a phone could connect a call, a Flash drive stores data because storing data on a computer about a webpage is so notorious that inquiry under 103 is really not necessary.

                  Here is an example of a claim that i think, stands a good chance of surviving Alice Steps One and Two. From research v. microsoft:

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

                  Under Step One, the claim contains severl judicial exceptions: (1) mathematic formula (i.e., a random non-deterministic, non-white noise single valued function), (2) an algorithm that uses a blue noise mask formed using (1) in a pixel by pixel comparison process, and (3) a motive to produce visually pleasing dot profiles.

                  Under Step Two, i ask, what else is there in the claim? How does the claim apply (1) and (2) to accomplish (3)? According to the claim, to accomplish (3), we apply (1) and (2) to threshold at any level of said gray scale images.

                  I spent most of my career examining halftoning claims and in my experience, using a halftone mask threshold at any level of grayscale image is a well known process. However, 101 does not ask whether “threshold at any level of grayscale image” using (1) and (2) is well known under 103. Rather, 101 asks whether “threshold at any level of grayscale image” using (1) and (2) is purely conventional or purely obvious.

                  In my experience, my conclusion is that it is not purely conventional or purely obvious. Conventional halftoning techniques using either AM or FM mask, when threshold at any level of grayscale image, would not produce visually pleasing dot profiles because AM or FM masks could only produce visually pleasing dot profiles at certain levels of grayscale image. That is why conventional techniques often mix AM mask with FM Mask to threshold images by applying AM mask to the range of grayscale where it would produce pleasing dot profile while applying FM mask to the remaining range of grayscale where FM would produce pleasing dot profile.

                  Applying AM mask or FM mask alone at all levels of gray would produce only pleasing dot profile at certain level of gray while producing artifacts at remaining levels of gray.
                  Therefore, the instruction to apply a blue noise mask across all grayscale levels to produce pleasing dot profile is not conventional at all.

                  Is “threshold at any level of grayscale image” purely obvious? While “threshold at any level of grayscale image” using a halftone mask is very well known in the art, as i previously pointed out, conventional halftone mask does not produce pleasing dot profile when so thresholded. So it would not be purely obvious to one skilled in the art at the time of the invention to recognize that a blue noise mask, using a well known process, would generate a pleasing dot profile.

                  Accordingly, when i looked at the claim as an ordered combination: applying (1) and (2) to produce (3) by “threshold at any level of grayscale image”, the claim recited something more because it is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. Diamond v. Diehr, 450 US 175, 187 (1981).

      2. Richard,

        I realize this is OT and that this thread is already getting long, but since the SAWS incident does not yet (?) have its own thread, I just wanted to note that one of your rationales has been further shot down. The “but the program is not secret so no FOIA action was necessary” line cannot stand up to scrutiny as two more FOIA requests have been revealed as being rejected by the Office for the flimsiest of reasons.

        The saga continues and instead of transperancy, clarity and explanation, we continue to get hiding the ball and obfuscations.

        See link to ipwatchdog.com

        1. What i know about SAWS is pretty much what the public knows about SAWS. If there are additional SAWS procedures that the PTO is hiding from the public, the PTO is also hiding that from the examiners; which would be pointless since Examiners are on the front line of identifying patents for SAWS.

            1. Taking a narrow interpretation of a very broad answer. You asked a question pertaining to what else is the PTO hiding. My answer is: gee, i don’t know.

              If the PTO is hiding something even i don’t know about such as SAWS actually do prescribe some kind of unknown rule that applicaton regarding particular subject matter or particular inventor / assignee should be subject to heightened scrutiny, then you might be right.

              If the PTO is simply asserting deliberative privilege not to have the public second guessing how a SPE utilizes the objective criteria on the disclosed FOIA document to either flag or unflag a case for heightened review without biase against a particular inventor/assignee, then there is nothing nefarious.

              Since i am at the bottom of the totem, i don’t have the answer to your inquiry so i can’t tell you whether or not “Gee, anon you are correct”. But then again, you have a presumption that government is doing something bad.

              1. It is NOT just a presumption – or have you forgotten about 37 CFR 1.2 – and trying to hide behind the “deliberative” screen does not fly for individual application processing, nor does it address the fact that the record is not complete – nor ever made complete.

                Richard you try way too hard to ignore and excuse the obvious.

                1. “It is NOT just a presumption – or have you forgotten about 37 CFR 1.2”.

                  District Attorney may deliberate base on the facts and proceed to issue an indictment base on that deliberation. In certain states, the DA goes to a grand jury to get the indictment. As we observed in the reports about recent Ferguson Grand Jury and New York City Grand Jury, the basis upon which the Grand Jury issues an indictment may or may not be available to the public and hence not subject to public scrutiny or even challenge by the opposing attorney. What the opposing attorney could challenge, DURING TRIAL, is the strength of the evidence, the admissibility of the evidence, and the weakness of the DA’s position.

                  The reporting process outlined in SAWS is comparable: According to SAWS memo, SPEs do have to prepare a report to the director giving reasons for flagging a case. I presume that report is written and that is what the PTO thinks is subject to the deliberative exception.

                  Like a DA’s presentation to a grand jury, the SPE report to the director set forth the basis upon which a case should be flag for further review. Like the grand jury making a determination to indict on the basis of DA’s presentation, the director makes a determination to flag the case for heightened review. Like grand jury’s deliberative process is not subject to public scrutiny and challenge by opposing party, the deliberative process the SPE and the director went through to flag a case for further review is not subject to public scrutiny and challenge by applicant’s representative.

                  What the applicant and his/her representative could challenge is the actual basis of a rejection that was actually issued as result of that heightened review, if and when any such rejection is issued; much like the defendant’s attorney could challenge, in court, the totality of the evidence that forms the basis for the DA to sustain the indictment.

                  Is it possible for a DA to harbor biase and the capacity for malicious prosecution? Certainly. Likewise, it is certainly possible for a SPE or director to flag a case base on biase against certain applicant or assignee and demand that the examiner reject on very weak grounds.

                  However, without some sort of objective evidence to suggest such malfeasance, the public has no basis to inquire into internal deliberation because accountability does not involve letting the public second guessing every possible decision made by a government official in the conduct of official business just like the public does not have the right to know how a grand jury decides on an indictment.

                  Since I do not share the same biase you have to presume government malfeasance based on rumours alone so i don’t see the kind of “obvious” malfeasance you see. Hence, invoking deliberative exception alone does not raise an obvious case of malfeasance sufficient for the public to subpoena the government into revealing the actual deliberative process.

                  If you want written record of SPE/director’s deliberations, you need objective evidence of malfeasance, not on a presumption that something fishy is going on.

                2. Lots of words with NO meaning, as this is in no way shape or form analogous to a District Attorney proceeding and you have completely – absolutely completely – ignored the CFR I presented to you.

                  There is NO allowance for ANY “internal deliberations” off of the record.

                  You continue to basically say “trust us” after that trust has been violated – even if (and it’s not) proceeding on trust was allowed.

  41. Implemented broadly or narrowly…

    Paul Cole has taken several forums to advocate a “let’s be calm and implement these Supreme Court decisions narrowly” approach.

    Respectfully, this type of advocacy is simply and seriously misplaced. This type of advocacy ignores human nature and ignores the plain fact that ideological forces have been waging a battle for decades. This type of ‘call for reason’ ignores the plain fact that reason has long been placed to the side, and that an ends no matter the means view has long been embraced.

    The problem of course is that the Supreme Court did not actually say to implement these decisions narrowly, and in fact, have arguably sent an implicit message to NOT implement narrowly with its specific brow beating of the CAFC as that lower court has served (poorly) as a placeholder for Congress in the long battle of which branch of the government gets to “set policy” and write patent law.

    The Supreme Court simply did not place any limits on the use of the “Gist/Abstract” sword.

    Lots of calls for “Gee, let’s find some middle ground,” and one very principled reason for rejecting this type of Chamberlain acquiescence.

    The Suprme Court wants to play with the nose of wax and whip out that sword, then they should face the consequences – the full consequences – of doing so.

    Maybe then and only then will they recognize why the founding fathers placed patent law writing in the legislative branch instead of the judicial branch.

    There is bologna slicing going on alright – but a step back reveals that the slicing is at a different level – a far far far more pernicious level.

    The ends do not justify the means.

    Ever.

    1. I agree with you anon, but the problem is money. Google is pouring money into lobbying Congress and they don’t want patents. It is hard to image Congress doing anything about this without a disaster occurring. My guess is that even if all patents were wiped that a disaster would not occur for many years. We would get mediocre output of the monopolies (Google) and they would feed the Congress to keep them quiet.

      It is a different world than we have ever seen before and the irony it is different because of information processing machines.

    2. “The ends do not justify the means. Ever”.

      Not true.

      Richmond Screw Anchor Co. v. U.S., 275 U.S. 331, 346 (1928) (explaining that when interpreting statutes, the Supreme Court has a duty to reach a conclusion that will avoid serious doubt of their constitutionality); Robertson v. Seattle Audubon Soc., 503 U.S. 429, 441 (1992) (citing NLRB v. Jones & Laughlin Steel Corp., 301 U.S. 1, 30 (1937)) (stating that between a valid interpretation and an unconstitutional interpretation of a statute, the Supreme Court has a duty to adopt the valid interpretation).

      Whenever an act of Congress comes dangerously close to breach a limitation imposed by the Constitution, the Supreme Court performs “creative interpretation” of a statute to avoid striking it down. In those cases, the Supreme Court believed that the ends justified the means.

      1. I so not understand what fallacy drives you to think that such action performed by a Supreme Court justice somehow makes that OK.

        It does not.

        If anything, given that such represents the top of the judicial branch of the government, such thinking should be held in even higher disdain.

        1. The “fallacy” here is that there is a hierarchy prescribed by Article III of the Constitution, which the Supreme Court interpreted it to mean that the Supreme Court held the final say in laws that mattered.

          This is why we have things like Dredd Scott, Plessy v. Ferguson, Brown v. Board of Ed, Roe v. Wade, NFIB v. Sebelius, Shelby County v. Holder. Until the Supreme Court is persuaded to abandon a precedent it had set forth, all officers of the court are bound to follow it. The Supreme Court may be wrong, but no one gets to say that the Supreme Court is wrong except the Supreme Court or Congress by Constitutional amendment.

          My life would be infinitely easier if “machine or transformation” is the test for eligibility. Since it is not, i need to figure out what the Supreme Court want and why the Supreme Court want it so. Its hard for me to criticize the Supreme Court in judicial exception to 101 cases when i think they actually have a point that the Progress Clause of the Constitution imposed a limit on Patent Act of 1952 that Congress may not ignore:

          Congress may not pass an act granting Fulton a property right over a steam engine that burns coals when Fulton only implemented a steam engine that burns wood; which it would be the case if Fulton claims the idea of using steam to propel a mechanical vessel, however developed. The reason being: progress of science and useful art is promoted when inventors secured exclusive rights for their discoveries, not when inventors secured exclusive rights to discoveries that the inventors did not make.

          1. Check your oath again Richard (again).

            Officers of the court are NOT slavishly subsevient to the Court, but instead to the constitution.

            You really need to adjust your view of the branches of government and realize that the Supreme Court is not above the law.

            1. The Constitution lets which branch of the government decide who is above or not above the law? Its kind of hard to be above the law when you get to move the goal post separating what is above and what is not above.

              1. Sorry to be harsh, Richard, but your ignorance of the law here is staggering, as it is exactly because it is very easy for an unchecked judiciary to move the goal posts necessitates diligence and why attorneys do NOT swear fealty to the Court itself, but to the constitution.

                I recognize that you want it to be different, but it just is not how you want it to be.

                1. Actually, i was being cynical. How do you tell the Supreme Court that they are above the law when they decide the line between what is above or what is below?

          2. And (also) again, future conjectural “may happen” statements FAIL to satisfy the current case or controversy requirement for Court authority to adhere.

            No advisory opinions are allowe from the Court.

  42. The outcome here nourishes the great hope of many who have built their practices around getting patents like this one allowed, that a panel will be found on the Federal Circuit to provide the leadership necessary to moderate to the point of neutering recent Supreme Court decisions. Of course, for this to work there have to be enough judges left on the Federal Circuit willing to go along, and a general weariness on the part of the Supreme Court over having to rule again and again and again on these points in the hope that the Federal Circuit finally “gets it.” The Hope is that SCOTUS will just tire of these cases, stop granting cert on them and let the Federal Circuit again be the Supreme Court of Patents. The risk is that yes, the Supremes will tire of dealing with the Federal Circuit, but that instead of deferring to their judgement, will find a way of cutting them out of the loop in all patent cases.

    1. The hope is that the SCOTUS will stop legislating. The hope is that the inventions will be treated fairly instead of with ignorance. The hope is that the law will be applied.

      That is the hope.

        1. NWPA’s meaningless poem does sound a lot like a prayer, doesn’t it?

          You’d think that would give the True Believers some pause. But they just can’t help themselves.

            1. I know. I know. You say it doesn’t matter. Google has the Fed. Cir. locked down. I agree. We need to start teaching science according to the Google judges.

    2. Huh?

      Chen’s opinion seems to focus on the isolation, and co-display of info from the target page and the host page, with the host page info being specific kinds of things to create a look and feel. This solves a specific problem with the way the internet browser works.

      I don’t think it is a harbinger of anything like a reversal of Bilski/Alice.

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