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.
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!
“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.
there is no limits to the sword of “Gist/Abstract”
Because “anon” says so.
And he’s a super serious person.
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.
And every non-judicial activist says so too…
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.
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)
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.
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.
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)
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.”
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.
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.
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.
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?
(excuse the auto correct error: change “loci” to “logical”)
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.
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.
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. 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.
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.
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.
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.
“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.
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.
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.
“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.
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?
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.
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.
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.
Anon, my reply awaits moderation. But I say we fundamentally agree.
Anon, my post at 12:41 PM still awaits moderation.
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.
haha, you and me definitely agree on that one, Anon.
if only that were possible!
I agree. This is a poor idea.
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.
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.
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.
“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.
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.
“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.
You do realize that the “claim as a whole” has 101 implications as well, right 6? You seem to think it only applies to 102 and 103.
I think it has to apply to 102, because 102 is an issue of fact. I also think it is statutorily mandated in 103. It is notably not in 101.
Are you sure that you want to discuss what is notably only actually (explicitly) in 101…?
Hint: many of your anti-patents fav’s go bye bye
“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”.
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.
“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?
So any defendant asserted upon is automatically out the million bucks it costs to get a 102/103 adjudication? Oh well, if you want omelets…
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?
[…] additional infringement actions against e-commerce companies, and Patently-O predicts in its analysis of the case, that there will be a strong push for en banc review and […]
News flash for Greg Aharonian: getting rid of “101” doesn’t get rid of subject matter eligibility issues.
Nice try, though.
Please give us examples.
“Lost” in translation, NWPA, the extra-statutory writing of patent law by the judicial branch is the ‘example’ that should be clear to everyone.
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.
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.
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.
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.
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.
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.
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.
So where is the your winning entry MM?
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.
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.
Well the moderator/filter will not allow anymore of my post. Hope you get the “gist”‘
It is what I said. It is hard to get judges that respect science and patent law to act on the behalf of Google.
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.
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?