This is a guest post written by Tim Molino who is the Policy Director for BSA, which as shortened its name to The Software Alliance. Prior to joining BSA, Tim was Chief Counsel for Sen. Klobuchar (MN) and before that, he was a patent litigator for eight years. The BSA has just filed an amicus brief in the Activision Blizzard case whose Section 101 issue is pending before the Federal Circuit. This is one of the several cases where parties are testing for the boundaries of Alice Corp. – Dennis
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by Tim Molino
The highly-anticipated Alice Corp. v CLS Bank case was widely expected to clarify the application of Section 101 to computer-implemented inventions and many expected the decision would answer the contentious question of whether software is eligible for patent protection. Instead, the Supreme Court issued a relatively narrow ruling that cast doubt on the eligibility of most business methods, but suggested that software-based inventions that “improve the functioning of the computer itself” or “effect an improvement in any other technology or technical field” would likely be eligible.
Now lower courts are beginning to apply the Alice and the Supreme Court’s distinction between abstract business practices and technological inventions. To date, the bulk of the district court decisions have dealt with so-called business method patents that recite a business practice or economic concept combined with a token recitation of implementation on a computer. District courts have correctly invalidated these patents under 101 in the wake of Alice and Bilski. But we have also seen some troubling decisions where Alice has been misapplied to invalidate patents directed to real technology, rather than abstract business concepts.
Docket Navigator data suggests that in 2015, we could see more than 150 patent cases in district courts, arguing the patents are invalid on 101 grounds – and if the current trends continue, the patent would be invalidated in as many as 111 of those cases. These trend lines are troubling. With more than $50 billion in software research and development incentives at stake, it is imperative that the Federal Circuit make a course correction and send a clear signal that software-based technology is eligible for patent protection.
McRO v. Activision Blizzard – An Opportunity
Fortunately, the Federal Circuit has an opportunity to provide much-needed guidance to the lower courts in the upcoming McRO v. Activision Blizzard appeal. The McRO patents describe a computerized process for “automated rules-based use of morph targets and delta sets for lip-synchronized three-dimensional animation” that was a significant improvement over computer-aided processes previously used in the industry.
In this case, the Federal Circuit will use the Mayo and Alice decisions to guide their ruling. The Mayo and Alice decisions set forth a two-step analysis for eligibility: First, the court must “determine whether the claims at issue are directed to” an ineligible “abstract idea, law of nature, or a natural phenomenon.” If so, the court must then consider the elements of each claim to determine whether they contain sufficient detail and additional limitations “to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”
The lower court began its eligibility analysis in McRO v. Activision by noting that “[f]acially, these claims do not seem directed to an abstract idea. They are tangible, each covering an approach to automated three-dimensional computer animation, which is a specific technological process.” However, instead of stopping there and recognizing that the patents did not involve an “abstract idea,” the court proceeded to invalidate them based on its conclusion that the claims covered nothing significantly more than the abstract idea of “using a rules-based morph target approach” to accomplish “automatic lip synchronization for computer-generated 3D animation.”
As we argue in our brief, reaching this counterintuitive (and seemingly counterfactual) conclusion required fundamental errors in applying both steps of the Alice analysis.
Step One – Are the claims directed to an abstract idea?
The claims at issue are directed to a specific, practical and useful improvement to an existing technological process. Claim 1 of the ‘576 patent reads:
A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;
An apparatus for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
obtaining a timed data file of phonemes having a plurality of sub-sequences; generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;
generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and
applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.
Clearly, this claim describes a concrete, real-world innovation that solves the difficult problem of accurately replicating the human face and speech in CGI and animation.
So how did the lower court conclude that it recites nothing more than an abstract idea? It did so by reversing the order of Alice’s two analytical steps and by collapsing them into a single inquiry.
Rather than first determining whether the claim as written was directed to an abstract idea and then assessing the claim’s “additional element” to determine whether they add significantly more to the idea, the court began by seeking to uncover the “abstract idea” lurking underneath the claim language by stripping away all elements that were known in the prior art in an attempt to discover the claims “point of novelty.”
Step Two – Does the claim contain additional elements that ensure the patent amounts to “significantly more” than the underlying abstract idea?
The lower court’s application of step-two is equally misguided and problematic. In step two of the Alice test, the court must assess whether the “additional elements” (i.e., any element beyond the abstract idea itself) places meaningful limitations on the scope of the claim.
In describing step two, the Supreme Court stated in Mayo that “well-understood, routine, conventional activity” previously used in the field “is normally not sufficient to transform an unpatentable [abstract idea] into a patent-eligible application . . . .” In other words, it is not generally “enough” simply to append routine, conventional steps – described at a high level of generality – to the abstract idea.
Unfortunately, the lower court fundamentally misinterprets this statement to mean that only novel elements (rather than all “additional elements”) should be considered for purposes of the “significantly more” analysis. The court then proceeds (yet again) to read all of the additional elements out of the claim because they lack sufficient novelty. Unsurprisingly, once all of the additional limitations recited in the claim are stripped away, all that is left is the abstract idea, leading the court to conclude that the claim fails the “significantly more” test.
This approach lacks any basis in the case law and ignores the fundamental difference between what is “known” in the prior art and what is “conventional” in industry practice. For something to be conventional it must not only be known, but widely-adopted. Put simply, the fact that space travel is “known” in human society by no means makes it a “conventional” practice.
Conflating these two concepts and disregarding any element that has a basis in the prior art makes it virtually impossible to satisfy step two. As the Supreme Court recognized in Mayo, “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas,” and as a result “too broad an interpretation” of these implicit exclusions from eligibility would “eviscerate patent law.”
The approach taken by the lower court would fulfill this dismal prophesy. As Judge Pfaelzer noted in a subsequent decision, “it is difficult to imagine any software patent that survives under McRO’s approach—most inventions today build on what is known in the art, and an improvement to software will almost inevitably be an algorithm or concept which, when viewed in isolation, will seem abstract. This analysis would likely render all software patents ineligible, contrary to Congress’s wishes.”
The Federal Circuit must be clear and decisive in nipping this in the bud. In deciding McRO, not only should they overrule the lower court’s erroneous conclusion, but they should take care to provide additional guidance regarding the correct application of the Alice test to avoid similar misapplication in other cases. This would provide much-needed clarity and certainty to patent holders and industries that rely on technology and software patents, shoring up our economic competitiveness and maintaining more than 2.5 million American jobs.
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BSA’s members include: Adobe, Altium, Apple, ANSYS, Autodesk, Bentley Systems, CA Technologies, CNC/Mastercam, Dell, IBM, Intuit, Microsoft, Minitab, Oracle, PTC, salesforce.com, Siemens PLM Software, Symantec, Tekla, The MathWorks, and Trend Micro.
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Briefs Filed Thus Far:
[…] Microsoft-backed pro-software patents lobbying group (BSA) was given the platform right here, promoting software patents of course. This piece of lobbying/propaganda was posted by Dennis […]
“Instead, the Supreme Court issued a relatively narrow ruling that cast doubt on the eligibility of most business methods,..”
Excuse me but when in Alice did the Supreme Court cast doubt on business methods?
And how could doubt be cast on business methods when the Court has never even defined a business method? In reality there is no such thing as an abstract business method. Abstract concepts and ideas are patent ineligible. Business methods, with or without software, are just fine.
McRo needs to advance a cogent “Integration Analysis” if they want their claims to be upheld as patent eligible subject matter. Because as the Supreme Court of The United States, has said on more than one occasion, “Integrated claims pose no threat of “preemption” tying up abstract ideas, or laws of nature, and therefore remain patent eligible.
I was going to post something about this, but I’m just too busy getting software patents issued for my clients. The Alice decision is just one of Rowling’s boggarts.
Noticed you didn’t say “enforcing” for my clients.
Here’s the real problem with the Alice case for those who prosecute patents. I’m looking at a case where the idea is to reduce intermodulation effects of a transmitted signal. The claims have been allowed, with no Alice rejections. The question I have is whether these claims — in a subsequent litigation — would pass the Alice test. And I have no idea what the answer is. None.
At least with “machine or transformation” or “concrete, useful, and tangible”, I could ascertain whether the claims were patentable under 101. With Alice, I cannot determine whether these claims are patentable under 101.
Furthermore, I can’t even state what could be added to the claims in order to pass muster under Alice (assuming I think we might need something else in the claims, even as a dependent claim, just in case). One could argue that reducing intermodulation effects of a transmitted signal only operates on the signal and does not improve the functionality of the “computer” itself. If that’s the case, there could be nothing I could add to the claims that would make the claims patentable under Alice.
How do I counsel my client in light of Alice? I can’t do it.
“How do I counsel my client in light of Alice?”
Wait wait, so you cannot counsel your client [to allowance] in light of Alice? Maybe you missed the point of Alice: to get the garbage you’re trying to patent out of the patent system?
6, do you examine applications per an objective reading of Alice and the USPTO’s Guidelines or per your anti-patent bias?
Serious question. Your apparent wholehearted adoption of MM’s soliloquies, and particularly the parts that aren’t actual law, is troubling given what you’re paid to do by the USPTO.
I can’t imagine your superiors would be too happy with these statements. Just food for thought. Thank goodness for anonymity!
I once interviewed an attorney and asked him whether he thinks a particular claim he drafted was allowable. When he protested that it was not a fair question, then I knew he could not make a straight face argument in favor of the claim’s allowance and that particular claim was probably garbage.
Though I could hardly fault an attorney for not being able to argue in favor of 101 eligibility, given that the patent bar + Fed Cir + PTO were too busy complaining about the Supreme Court’s 101 precedents rather than sitting down and reading between the details of Benson, Flook, Diehr, Bilski, Mayo, Myriad, and Alice to come up with an organized guideline.
“6, do you examine applications per an objective reading of Alice and the USPTO’s Guidelines or per your anti-patent bias?”
Brosef, I wrote the “Alice” standard years before the decision even came down. It’s nothing but Benson restated 60 years later. So yes, I “examine applications per an objective reading of Alice and the USPTO’s Guidelines” in so far as the guidelines are in accord with the law. And they are for the most part, they’re a tiny rough around the edges but that’s not going to affect most 101 determinations, and I only do like 2 101’s a year max.
That’s not an “anti-patent bias” lol. I’ve issued more patents than you I bet.
“I can’t imagine your superiors would be too happy with these statements. ”
My superiors, especially the ones I’ve had before the current one, are wayyyy on board. The current one I haven’t really had need to bring up 101 with.
You’ve already perform Step one under Alice, by concluding that your claim recites an idea for reducing intermodulation effects of a transmitted signal.
Now, perform step two and ask yourself “What else is there”?
(1) Are the steps recited therein for reducing intermodulation effects conventional? Conventional steps are steps that anyone who wants to reduce the intermodulation effect must necessarily use. For example, generating a signal for transmission, modulate the signal however developed, storing the signal, or using an antenna to transmit a signal.
(2) Are the steps recited therein for reducing intermodulation effects purely obvious?
The Supreme Court held that 101 inquiry sometimes overlap 102 inquiry. Mayo, 132 S. Ct. at 1304. This means that 101 inquiry sometimes reach the same conclusion as 102 inquiry (i.e., it is sometimes possible for something that is not “new” under 101 to be not “novel” under 102). This does not mean 101 should be conflated with 102/103. In fact, the Supreme Court held that 101 inquiries must precede 102/103 inquiries. Flook, 437 US at 593 (“The obligation to determine what type of discovery is sought to be patented must precede the determination of whether that discovery is, in fact, new or obvious”). Further, “novelty” of any steps in a process or even of the process itself is of no relevance in 101 inquiries. See Diehr, 450, US at 188-89 .
If we are to make 101 inquiries before we could actually inquire whether something is actually “novel” under 102 and “nonobvious” under 103, then how could we declare certain combination of steps as well known or obvious when making 101 inquiries?
I noticed that in Bilski and Alice, the Supreme Court pointed to textbooks to illustrate that hedging and intermediated settlements are “fundamental economic practice long prevalent in our system of commerce”. But note that the textbook or sources cited by the Supreme Court to support that point are not prior art. Rather, the textbook and the sources were useful to make a point: if these concepts could be found in a textbook or historical studies, then they are undoubtedly fundamental ideas.
Rather, when the Supreme Court made 101 inquiries, the statements about “purely conventional”, “purely obvious”, “routine”, “long practiced” are not prompts to make finding of facts under 102/103. Instead, these findings are relevant to determine whether the additional steps are utterly undisguised attempt to patent a 101 exception.
For example, no one needs to make a 102/103 inquiry to know that displaying the signal on a TV screen, or using the signal to drive a sound speaker, or transmitting the signal to a distant recipient are purely obvious. They are as common place of a knowledge as the sky is blue, what comes up must come down under Earth’s gravity, the planets of Solar System orbits the sun etc.
If you think that the additional steps for reducing intermodulation effect is so commonly practiced and known to everyone, without even making a 102/103 inquiry, then the steps are purely obvious.
If you find that the claimed combination of steps are not (1) conventional and (2) not purely obvious, then make the arguments based on those findings in Court in addition to context.
Arguments about context is important as these arguments give the court a point of reference to treat the claims in the most favorable light (Fed Cir still presumes patent validity). I bet the counsel in Diehr made a strong argument on how applying Arrhenius equation using a particular combination of steps, even if the individual step is well known or the combination is well known, solves a practical industrial problem of overcuring / undercuring rubber.
If you do at least these, then you’ve made a strong argument for your client you’ve done your job.
I think the whole crossing over between 101 and 102/103 directly results from the S.Ct.’s unwillingness to simply hold that eligibility should be decided by an industrial arts test.
I don’t think the Supreme Court intended this cross over. Rather, Flook and Diehr both prohibited such cross over.
My theory is that “new” in 101 is ambiguous (assuming language in statutes are not superfluous) because 102 and 103 set forth the requirement of “novelty” and “obviousness”. The Supreme Court exploited this ambiguity in 101 and read “new” to exclude laws of Nature, Natural Phenomena, and Abstract Ideas as an exercise in Constitutional Avoidance: to interpret patent statute to exclude subject matter that, if granted an exclusive right, would cover subject matter that inventors did not discover and thus obstruct the progress of science and useful art. Myriad, 133 S. Ct. at 2116 (“As the Court has explained, without this exception, there would be considerable danger that the grant of patents would “tie up” the use of such tools and thereby “inhibit future innovation premised upon them.””).
One could argue that reducing intermodulation effects of a transmitted signal only operates on the signal and does not improve the functionality of the “computer” itself.
What makes you think that changing the physical characteristics of a transmitted signal (as opposed to changing its informational content) isn’t enough? Unless your claim says no more than “reduce intermodulation effects of a transmitted signal,” you’re likely just fine under 101.
Put another way, “improving the characteristics of a communication signal” might well be an “abstract idea.” But once you start reciting steps that are performed on an actual signal, you’ve gone to a specific application of that abstract idea, which, by definition, means the claim is not directed solely to an abstract idea.
It’s really not as bad as some pretend to think.
In re Nuitjen
Discuss.
PatentBob, what you claim seems on its face eligible unless you claim is functional at the point of novelty — then there might be a problem. How Wu’s opinion will be handled by the Federal Circuit is still TBD.
Think if it this way, if the ineligible subject matter is applied to produce something new or improved, and that something new or improved is physical, then you have something that is presumed eligible since Benson. (But simply programming a generic computer to process information does not even pass Benson.)
The improved modulation of a transmitted signal seems to be exactly the kind of thing that should be eligible.
Criminy Ned – do I have I ask you about that section of Benson that states “we do not so hold” yet again?
Don’t you ever tire of your errors?
This question goes out to MM or anyone else on the “categorically ineligble” side of the info-processing/software debate: Do you think that Diehr was decided correctly, why or why not?
I primarily practice in the oil/gas and mining arts, so I have little skin in this game, but I am working on an application for a “process” that, like Diehr, involves algorithmic control of other, claimed physical components (think pumps, compressors, and the like). I do wonder whether, if the pendulum keeps swinging along its current trajectory, will Diehr-like claims soon be held ineligible.
Malcolm is already on record that Diehr was wrongly decided.
Ned is “on record” for ig noring the particular PON of Diehr: a software program purely using the Arrhenius equation and no new physical equipment.
And yes, it is worth noting that even prior to Diehr, the result of perfect cures was in fact old.
I wish you the best of luck PG in our replay of history prior to 1952.
Peanut,
I think Diehr’s holding is pretty borderline, but I think there is a good chance it would be decided differently today.
Read in view of current 101 law, I think Diehr can basically be read as holding that step 2 of Alice was satisfied by all the other parts of the claim:
“[T]he respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to pre-empt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process. These include installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time. Obviously, one does not need a “computer” to cure natural or synthetic rubber, but if the computer use incorporated in the process patent significantly lessens the possibility of “overcuring” or “undercuring,” the process as a whole does not thereby become unpatentable subject matter.”
Now, looking back, there is a good chance that all of that now would be classified as conventional, or insignificant post solution activity.
Policy question in general:
The Arrhenius equation is used in part to estimate the rate of chemical reaction. Should we allow applicant’s to take this equation out of the public domain because they found a useful application for the formula? I say no, but opinions obviously differ.
I’m not sure what you’re talking about, quite frankly.
Whether Diehr would be decided differently today is irrelevant. SCOTUS considered Diehr and said it passed the Alice test. Bunch of old conventional hardware well-known in the field + use of an abstract idea (i.e., equation) to operate those old components = OK under Alice. It’s not that hard. Still waiting for a non-GP computer claim to be found invalid. Pretty tough to do that w/ Diehr’s facts.
While certain mouthpieces squawk otherwise, there is no novel hardware requirement for eligibility and software isn’t dead (by SCOTUS’s own words, actually). SCOTUS didn’t implement one in Alice, and Diehr certainly didn’t have novel hardware.
I’m still waiting for MM to point out that novelty requirement so we can put this debate to rest and go back to squabbling about other inconsequential sh*t, but he hasn’t, won’t, and can’t. Classic case of those who speak the loudest have the least to say. *Shrugs*.
How do you take the Arrhenius equation out of the public domain by claiming the useful application for the Arrhenius equation? Won’t such a patent claim only preclude said useful application for the Arrhenius equation? If someone else comes up with another useful application thereof unobvious from said useful application, the unobvious and useful application of Arrhenius would not have infringed the patent claim. And that pretty much sum up the Supreme Court’s utility for 101 inquiry: limiting exclusive rights to only what the inventors discovered and nothing more so as to promote the progress of science and useful art.
“Now, looking back, there is a good chance that all of that now would be classified as conventional, or insignificant post solution activity”.
In Mayo, the steps of telling doctors to gather data from which they may draw an inference in light of correlations set forth by certain laws of nature are well-understood, routine, and conventional activity already engaged in by the scientific community. This is because anyone who wants to make use of the laws of nature must first administrate the drug and measure the resulting metabolite concentrations such that the steps amounted to nothing more than an instruction to doctors to apply the applicable laws of nature when treating their patients. Mayo, 132 S. Ct. at 1298.
In that portion of the decision in Mayo, the Supreme Court took pain to point out the rule set forth in Diehr that a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.
In essence, the Supreme Court rolled their eyes on barely disguised attempt to claim 101 exceptions with “apply it” by reciting (1) conventional steps such as having a computer storing an algorithm into the CPU in order to calculate the results using the algorithm (any computer that needs to do calculation using the algorithm must necessarily store the algorithm into its RAM in order to apply the algorithm) or (2) insignificant pre/post salutation steps such as gathering particular variables for an algorithm or attach the calculated results onto an email and transmit it over the network to a recipient. Flook, 437 US at 590 (“The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance”; note that this statement simply refutes the blanket argument that applying a 101 exception in any manner, no matter how conventional or obvious, is enough for patent eligibility. This does not per se exclude patent eligibility for application of 101 exception using well known and obvious steps).
But, applying an algorithm or a math formula with a new combination of well known and commonly used steps may be patentable. In fact, even an application of a law of nature or mathematical formula to a known process may well be deserving of patent protection. Diehr, 450 US at 187-88.
For example, the individual component steps of (1) installing rubber in a press, (2) closing the mold, (3) constantly determining the temperature of the mold, (4) constantly recalculating the appropriate cure time through the use of the Arrhenius equation, and (5) automatically opening the press at the proper time may be individually known.
However, the combination of these steps, when used to apply the Arrhenius equation on a computer, results in a more efficient solution of an industrial problem by lessening the possibility of “overcuring” and “undercuring” is not bared at the threshold by 101. Diehr, 450 US 187-88. Even if the combination of (1)-(5) are well known in the industry, they are still not barred at the threshold by 101 when a computer could apply the Arrhenius equation with steps (1)-(5) to lessen the problem of overcuring and undercuring.
In sum, even if decided today under Alice Two Steps, Diehr would still be patent eligible because its process applies the Arrhenius equation using steps that are not purely conventional or purely obvious; i.e., the combination of steps applying the equation is not something that is routine and long practiced in the art.
Richard,
The point I’m making is more 103 than 101. The equation is used to calculate the rate of chemical reaction.
How can adding the Arrhenius equation to a known process…to calculate the rate of chemical reaction…EVER be non obvious? Although I do think it overlaps with 101.
Go,
You appear confused by your conflating.
Turnaround – do you have a technical background? I mean real world experience and not just a degree (if that)?
Yup!
Thanks for the straight answer.
Peanut, Diehr’s holding remains unclear given that the court stated that the alleged invention also included the use of thermocouples inside the mold to actively measure temperature – something that allegedly had not been done before.
But one thing is very clear – the presence in the claim of unpatentable subject matter such as mathematics will not categorically make the claim ineligible.
But the case has come to be an example where the ineligible subject matter, mathematics here, is applied in a conventional process, a process that passes the MOT, to improve it.
Now that we are un-moored from the “clue” that is MOT, I’m afraid it will be difficult for the courts to define a consistent test for software/info-processing eligibility (apart from categorical ineligibility). I sympathize with other practitioners, like PatentBob above, just trying to figure out how to best advise clients in this area. I agree that the “I know it when I see it” test is unsatisfactory, but unfortunately I think it’s here to stay unless Congress steps in. The S.Ct. doesn’t appear willing to provide any meaningful, broadly-applicable guidance.
Peanut, I would look at Diehr and Alappat as good examples of the use of math in the larger context to improve in the one a conventional process that passed the MOT, and in the other, a display.
Throw in Arrythmia (sp?) and the whole art field of encryption…
“Do you think that Diehr was decided correctly, why or why not?”
Yeah, because it’s a process of vulcanizing rubber and did not seek to tie up the Arrhenius equation.
To play devil’s advocate, couldn’t the whole vulcanizing part be characterized as conventional post-solution activity (Goodyear and Hancock first vulcanized when, ca. 1840?).
Are you not advocating for a technical or industrial arts test? If so, that’s fine, but the S.Ct. does not appear willing to call that spade a spade.
They are not willing because they lack the constitutional authority to write patent law that way in the first instance.
Given that Congress has explicitly written patent law reflecting BOTH patent eligibility for business methods AND software, the Court is reduced to its own versions of “clever drafting” and “scrivining.”
(They, obviously, are not very good at it)
“To play devil’s advocate, couldn’t the whole vulcanizing part be characterized as conventional post-solution activity”
No.
And why not? Before you come asking me that question, please, take a gander at the claim itself.
“Are you not advocating for a technical or industrial arts test? If so, that’s fine, but the S.Ct. does not appear willing to call that spade a spade.”
I’m on board with that, though no, I do not specifically go out of my way to advocate for that.
If it was my idea, that wouldn’t be a judge made “test”, that would be a statutory requirement made to comply with the constitution (maybe after some id iot applicant/patentee forced the USSC’s hand to strike down 101 as unconstitutional to get congress to get off its a rse). But that is unlikely to be required, or really needed.
You do realize that such is not a patent law writing that the judiciary has been allocated authority under the constitution to engage in, right?
6,
How disappointing as you of all people should have been front and center with the “just limiting to a particular technical field does not save you” line.
Instead, you post the opposite…?
Maybe someone is impersonating 6 today…
“just limiting to a particular technical field does not save you”
That’s because it wasn’t “just limiting to a particular technical field”. I’ve been over and over this with you on the facts anon. And now the USSC reviewed your take on the facts when IEEE submitted their amicus in Alice iirc. They find against your take on the facts (just like they did when Diehr was decided) and for my take on the facts. I’m sorry, but the facts in Diehr indicate that their particular method of vulcanizing rubber, complete with being able to get the readings and auto-opening and all that, was likewise novel over the closest art o record. But you’re never going to believe that, no matter how many courts tell you otherwise, and that is why you’ll still harp on this “technical field” line. Maybe if you had a background in the useful arts you’d understand Diehr better, though it was embarrassing for IEEE themselves to mistake the facts similarly.
You are contradicting yourself again 6 – specifically your pet notion of “pre-emption” and the notion that the Court has indicated that NO sub-set of a particular technical field would do.
All that you are doing here is spinning out gobbledyg00k – the technical field IS the field of vulcanizing rubber.
I have a nasty feeling that any patent that specifies rules without specifying what the rules are that produce the new result is headed for the trash bin.
I suspect that there is an important underlying discovery, but that it has somehow not found its way into the underlying claims. That being so the Federal circuit is more likely than not to send the patent to the above indicated place.
Perhaps we are being too ambitious. The most useful claim scope is not necessarily the broadest that can be got through the Paten Office on a Friday afternoon, but is instead the broadest that can stand up to serious challenge.
Sadly there’s not.
‘morph weight set’: A set of numbers which describe how to ‘stretch’ a shape, for example how to stretch a circle into an oval or how to stretch a picture of relaxed lips into a picture of lips making an ‘oooooh’ sound.
‘phoneme sequence’: a set of sounds that lips make. For example ‘pah’ ‘te’ ‘en’ ‘lee’ ‘oo’ is a phoneme sequence.
‘A set of rules to define output morph weight set stream as a function of phoneme sequence’: Rules which say ‘If the phoneme is oooo then shape the mouth into a circle with the lips pushed out’
‘transition parameters’: Lips are shaped one way for ‘leee’ sounds and a different way for ‘ooo’ sounds. For example look in the mirror and say ‘Patently-O’. When your lips changed shape from ‘leee’ to ‘oooo’ they went through a transition. The transition parameters describe the change.
The above 4 things are all ‘hard’ to create requiring lots of research and experimentation. But the claim does say how to create any of the hard things. Instead it describes the order to do the hard things in to feed information from one step to the next.
Correction: The above 4 things are all ‘hard’ to create requiring lots of research and experimentation. But the claim does not say how to create any of the hard things. Instead it describes the order to do the hard things in to feed information from one step to the next.
Slashdot, if I understand the facts correctly, the rules on how to do lipsticking were old and notorious and that the only thing new in the claim is the limited concept of automating that which was formerly done by hand.
Now, if the claim were to proscribe something really novel in terms of technology, then, of course the use of old or notorious rules per se would be entirely beside the point.
Ned
Have you morfed the Courts “notoriously old” into old and notorious? If so, why the transition and transformation?
Les, good catch there. Almost laughed.
Paul, if I understand the district court opinion, everything in the claim is old but for the use of a machine to automate that which was hitherto done by hand. Everything.
As such, what we have is a claim to automating an old process. That has to be and unpatentable idea, per Wyeth v. Stone, which Morse cited as directly on point. Viz., Curtis, 1867, at Section 147 link to books.google.com
Had the process be new in any regard, then the claimed subject matter may have been enough per Diehr.
From Wu’s memorandum,
“In attacking the claims as simply drawn to the abstract idea of “rules-based lip-synchronized animation on a computer,” Mot., Docket No. 338 at 3, Defendants’ argument does not account for the presence in the claims, or the Court’s construction, of “morph weight set.” The Court construed “morph weight set” as a “set of values, one for each delta set, that, when applied, transform the neutral model to some desired
state, wherein each delta set is the [set of vectors] from each vertex on the neutral (reference) model to each vertex on a model of another mouth position.” Rulings on Claim Constr., Docket No. 298-1 at 9.
However, the patents themselves teach that the prior art includes using morph targets that correspond to phonemes and calculating delta sets that contain the vectors from each vertex on the neutral model to the morph target. ‘576 Patent at 1:44-62.
So, while Defendant’s characterization is overly broad, it would be fair to
characterize the claims as drawn to the idea of automated rules-based use of morph targets and delta sets for lip-synchronized three-dimensional animation. Indeed, Plaintiff’s expert opines that:
“A central part of the creative insight of the patents is the realization to
use the specific approach of using morph weight set representations of
the facial shape coupled with rules, including explicit and distinct timing
rules, to generate keyframes. This approach uniquely provides the
automation required to produce animation in a cost-effective way, yet
provided the necessary artistic control required to produce commercial
grade animation.”
“Plaintiff’s expert opines that a central part of the patents is “using
morph weight set representations of the facial shape coupled with rules, including explicit and distinct timing rules, to generate keyframes.” Everyone appears to agree with that characterization, except that Defendants point out that no particular “explicit and distinct” rules are required by the claims. The question is therefore whether the inclusion of that concept in the claims satisfies § 101 given (1) the prior art, and (2)
the fact that the claims do not require any particular rules.”
…
So, what the claim adds to the prior art is the use of rules, rather than artists, to set the morph weights and transitions between phonemes. However, both of these concepts are specified at the highest level of generality. … Because the claim purports to cover all such rules, in light of the prior art, the claim merely states “an abstract idea while adding the words ‘apply it.’” Alice, 134 S. Ct. at 2358″
>>Because the claim purports to cover all such rules, in light of the prior art, the claim merely states “an abstract idea while adding the words ‘apply it.’” Alice, 134 S. Ct. at 2358″
This is witch trial talk. How about prior art and reasons to combine along with the ladders of abstraction. You know, real stuff. Not imaginary nonsense generated by judges to justify striking the match to burn the witch.
The more any attorney reads this nonsense the more he/she should be offended.
Sheer rubbish. Offensive nonsense that was started by Benson and should be removed from the record of American jurisprudence.
I have a nasty feeling that any patent that specifies rules without specifying what the rules are that produce the new result is headed for the trash bin.
Why is that a nasty feeling? If you don’t disclose rules, how have you advanced the art? With the idea that rules can be used. The same is true of software in general btw – without disclosure and claiming particular algorithms, the claim to functional code is just the idea that code can be to achieve a goal.
I suspect that there is an important underlying discovery, but that it has somehow not found its way into the underlying claims.
The “how” ought to be obvious right – if you claim particular rules they will be designed around (because the invention is not that great). If you claim the concept of USING rules, well that can’t be designed around, can it?
That being so the Federal circuit is more likely than not to send the patent to the above indicated place.
Oh, you give the federal circuit too much credit my friend. I expect a reversal followed by a supreme court reversal.
The most useful claim scope is not necessarily the broadest that can be got through the Paten Office on a Friday afternoon, but is instead the broadest that can stand up to serious challenge.
Yep
Random’s “Ladder of Abstraction”
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Paul, do you agree or disagree that a claim that says nothing else but to automate a known process formally done by hand is abstract?
Does it make any difference if that known process is described in detail?
@ Ned
Over here it was held, if my memory is right by Fletcher-Moulton L.J. (as he then was) that it was clearly obvious to automate a known process. The opinion was in British United Shoe and is more than 100 years old.
It is, I think, arguably an abstraction if all that is specified is automatic means without specifying any of the elements that enable the claimed thing to proceed automatically. Rules, arguably, are also an abstraction unless the content of the rules is sufficiently specified.
Our skill should be to create broad and useful claims that correctly identify the key technical advance and cannot be dismissed as mere abstractions whilst providing useful protection to our clients.
Speaking of abstract ideas, what about this idea: “Video dock for portable media player” from patent 7599177 issued 12/12/2007.
Is the phrase “Video dock for portable media player” an abstract idea?
Does the claim add ‘something more’?
Claim 1:
1. A docking station for a portable media player, the docking station comprising:
a docking connector to physically secure the portable media player;
a communication interface to communicatively couple the portable media player to the docking station when the docking connector is physically securing the portable media player; and
a projection module operably linked to the communication interface and configured to receive video information from the portable media player via the communication interface, and to project a video image derived from the video information away from the docking station onto a viewing surface.
Oh boy here comes Slashdot with his “surely you’re not going to tell me this isn’t eligible either!” shtick. Because everybody knows that without that junky patent claim we’d never have “video docks” and the economy would implode!
s the phrase “Video dock for portable media player” an abstract idea?
Wrong question, Slashdot. Pay close attention now because this is really, really, really hard for you, apparently. Connecting information storage devices to displays is really, really old. “Portable” devices were also old as of the time of filing of this application. Docking was old. What’s new here? Well apparently this idea of being “configured to receive video information”.
Video information is an abstraction. The claim purports to protect the kind of information that can be displayed by old otherwise unpatentable technology. Hence: ineligible claim.
That’s how the analysis works. It’s pretty straightforward. We know why it’s hard for you: you just love shiny things like “docking stations” and you have drunk so much patent kool aid that you can’t separate the existence of those things from the granting of junky functionally-claimed patents covering the kinds of information that is stored, processed and communicated by such things.
Anyway, try to focus on the awesome claims at issue in this case. “Rules”, baby! Yes we must grant patents on “rules” because otherwise nobody will try to improve computer animation or anything else involving computers. How do we know that? Some directly invested, self-interested person told us so!
This doesn’t even get a 101 rejection at the PTO, and I’d buy a ticket to watch you lose in court. Novel hardware is not a requirement for eligibility under 101. If you believe it to be, I’d love for you to show me where the Supreme Court or the Federal Circuit said so.
You really need to stop touting your opinion as to what you desire the law to be as the law. It’s misleading and borderline unethical. Truly. I can’t believe you think it’s OK to do that.
his doesn’t even get a 101 rejection at the PTO
Remember: neither did Prometheus’ claims, which covered a method of thinking about a new “rule” for administering a drug. What’s your point?
you really need to stop touting your opinion as to what you desire the law to be as the law.
Because some guy on the Internets says so! You’re hilarious.
Mr. Right, I know you are right, which means that there may be something very wrong at the PTO.
That’s your analysis? Good luck, friend.
That’s your analysis? Good luck, friend.
Thanks! Good luck pretending that “portable” is a meaningful limitation and good luck pretending that component parts (screens; hard drives) weren’t understood to be separable at the time that junk patent was filed.
How much kool-aid does your stomach hold anyway? Good thing that the patent doesn’t use the term “wireless”! That might be too much technology for anyone to digest without his/her head exploding. Wowee zowee! Oh wait — my docking station is in my robot car. It’s not conventional! It’s configured to flash a message when I speed! Can I haz patent now?
Lots of words, yet no substance. About right. Fun!
Au contraire mon frere MM! I do not like this claim from a policy point of view. In 2007 projectors were big and expensive. It makes no sense to try to sell a docking station projector. However if there is a breakthrough in projector technology (making them cheap and cheerful) anytime between 2007 and 2024 then you can profit!
It also seems to indicate that if you are in the docking station business and someone invents a new kind of display that you should apply for a patent immediately. For example take the above claim and replace ‘video information’ with ‘3D sound field information’, ‘3D video information’, ‘subsonic sound information’ or ‘Virtual reality display and control information’. These will all be a lot of work to actually implement in a docking station, involving plenty of research and experimentation. But I do not need to worry about that because I can patent the abstract obvious flow of the information through the new system rather than doing any hard work. (Or I could of, I think I just made these into prior art…).
The idea is to think of an idea, plugin some generic language and apply for a patent without leaving you desk.
You seem to implying that the application has an enablement or written description problem.
There’s a statute for that.
It’s just that it is not 101.
I don’t see such a enablement problem. Surely all of these are well known and obvious how to implement to a PHOSITA:
a) Docking connector (able to handle video information)
b) Communication interface (able to handle video information)
c) A projection module (able to handle video information)
Physically connecting the a), b) and c).
What is left in the claim is the flow of video through a), b) and c) and given everything else how could that not be enabled?
Well if you agree that its enabled, they why do you think there is undone hard work?
“. But I do not need to worry about that because I can patent the abstract obvious flow of the information through the new system rather than doing any hard work. (Or I could of, I think I just made these into prior art…).”
Slashdot Reader f you are in the docking station business and someone invents a new kind of display that you should apply for a patent immediately. For example take the above claim and replace ‘video information’ with ‘3D sound field information’, ‘3D video information’, ‘subsonic sound information’ or ‘Virtual reality display and control information’. These will all be a lot of work to actually implement in a docking station, involving plenty of research and experimentation. But I do not need to worry about that because I can patent the abstract obvious flow of the information through the new system rather than doing any hard work. (Or I could of, I think I just made these into prior art…).
Ah, so you do have some understanding of how the game is being played. Congrats! Recognize also that you need not be in the “docking station business” at all to play this game. All you need to be “in” is the patent speculation and/or assertion business.
And there are worse claims than this one out there. Far worse. With less technology and even more emphasis on the information.
Plus I know of a website where you can find stories about all the latest technology so its easy to find ideas for patent speculation! I won’t reveal the name though.
Plus I know of a website where you can find stories about all the latest technology so its easy to find ideas for patent speculation! I won’t reveal the name though.
No kidding.
And let me guess: the big companies responsible for that “latest technology” are endless disparaged by the same website as being “not innovative”.
Thank goodness there’s nothing transparently sleazy about that website.