By Dennis Crouch
In Prolitec, Inc. v. ScentAir Technologies,[1] the Federal Circuit has affirmed a USPTO inter partes review (IPR) decision cancelling Prolitec’s air-freshener diffuser claims. The patent at issue[2] is the subject of a co-pending lawsuit between the parties that was stayed in 2013 — awaiting the IPR outcome.[3]
Here, the patent included a claim limitation requiring a diffusion head “mounted to” a reservoir. The patentee wanted that term to be limited to require permanent joining of the head to the reservoir.
Too Clever Specification Drafting?: To achieve that permanent-joining result, the patentee first argued for a narrow claim construction of the “mounted term.” That approach failed at the PTAB and has been affirmed on appeal. The failure is to the ordinary patent drafting strategy, employed by the patentee, of using non-definite and non-limiting terms such as “may” to describe the role of various embodiments in the specification so as to not unduly limit claim scope. Here, in particular, the specification had indicated the possibility of a permanent joining in a disposable fashion, but, by clever specification drafting, had not foreclosed the potential for non-permanent mounting. Thus, that narrowing argument was foreclosed by the patentee’s own prior actions.
No Amendment without Major Proof: As an alternative approach, the patentee also requested permission to amend its claims to replace “mounted” term with “permanently joined.” As per its usual modus operandi, the Patent Trial and Appeal Board (PTAB) denied the motion to amend. In particular, the PTAB found that Prolitec had failed to prove that its proposal was patentable over the prior art of record. On appeal, the Federal Circuit affirmed – first reiterating its prior statement in Microsoft Corp. v. Proxyconn, Inc.[4] that the Board can require a patentee to establish patentability before allowing an amendment. Here, the Federal Circuit extended that doctrine to affirm the PTAB rule that, prior to amendment, patentability must be established over all prior art of record (in both the IPR and prosecution history). That rule, according to the Federal Circuit, is not contrary to any statute and is also “reasonable.” Further, the court held that the requirement of “establishing patentability” includes both novelty and nonobviousness. On the merits, the court affirmed that the patentee had failed to show that its amended claims were non-obvious over the combination of references cited in the IPR petition and found in the prosecution history file.
The majority opinion was written by Chief Judge Prost and joined by Judge Taranto.
Writing in dissent, Judge Newman argued that the refusal to allow an amendment was “contrary to both the purpose and the text of the America Invents Act. . . . [E]ntry of a compliant amendment is [a] statutory right, and patentability of the amended claim is properly determined by the PTAB during the IPR trial, not for the first time at the Federal Circuit.”
= = = =
[1] Prolitec, Inc. v. ScentAir Technologies, App. No. 15-1020, (Fed. Cir. Dec. 4, 2015) (slip opinion available at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1020.Opinion.12-1-2015.1.PDF)
[2] U.S. Patent No. 7,712,683.
[3] Prolitec, Inc. v. ScentAir Technologies, Civil Action #: 2:12-cv-00483-RTR, Docket No. 62 (E.D. Wisc., May 17, 2013). The IPR petition was filed in May 2013 but not instituted until August 2013. See IPR2013-00179. The claims of a second patent in the lawsuit were also largely been cancelled and was the subject of a separate appeal. That PTAB decision was affirmed without opinion in June 2015. See Prolitec, Inc. v. ScentAir Technologies, App. No. 15-1017 (Fed. Cir. June 9, 2015) (R. 36 affirmance without opinion).
[4] 789 F.3d 1292 (Fed. Cir. 2015).
Judge Moore’s comment on “abstract” set me thinking how poor “abstract” is as a criterion whether a claim is fit to issue. While she contends that every claim under the sun can be presented as abstract, contributers here vehemently maintain that no claim can ever be seen as “abstract”.
If you take other criteria like new, obvious, useful, moral, technical, nobody is saying that “Nothing is obvious” and nobody is contending that “Everything is obvious”. In the same vein, nobody asserts that “Everything is immoral” or that “Nothing is immoral”. There is a watershed every time. Even with “technical”. The Y/N watershed might not be a razor-sharp arrete. It might be merely an ever so slightly domed plateau. That depends on how cute the Federal Circuit and Supreme Court judges are, at explaining how to know when you are standing on the watershed. So, you might not know quite where it is, but watershed there is. Nobody disputes that.
But when it comes to “abstract”, people including judges deny that there is a watershed anywhere. I struggle to imagine a worse criterion for deciding whether a claim shall issue.
Max, Recall, that the Federal Circuit held that the claims before in Bilski were unpatentable because the
I think most of us would agree that the claims in Bilski were abstract in the sense indicated by the Federal Circuit in its majority opinion. I do not think the Supreme Court intended abstract to mean anything else at that time.
However, because they did not actually define it to be such, they left it open to wild interpretations such as provided by Judge Moore who uses the term abstract to mean anything she wants it to mean at the time she says it.
I think that a better formulation would simply be say that something is abstract if it does no more than manipulate the meaning of something I as opposed to something physical.
The majority opinion of the Federal Circuit case was set aside (one of the few things in Bilski that was 9-0).
“I think that a better formulation would simply be”
MoT was also set aside as anything but a clue.
Your “better” is just not.
MoT was also set aside as anything but a clue.
It’s a really really important clue, especially when the machine or transformation is new and the machine is structurally defined.
But you can pretend otherwise. You’re a very serious person, after all.
Nice strawman.
A clue is still (yet) but a clue. It is NOT a requirement of law.
The only thing about this “because they are not physical objects or substances, and they are not representative of physical objects or substances” is that it is how our brains work. The information processing we hold most dear fits into this category and yet “the legal brain trust for science” says it is not an invention to recreate human intelligence.
Epic ignorance that rises to the level of medieval witch burnings and Popes saying that the Sun revolves around the Earth.
Actually Night Writer, let me correct you (and stop those would would merely twist what you post).
Our brains do not in fact work like computers – the bio “circuitry” is far more complex, and as of yet, not even fully understood.
Instead, we have machines that are, well, ONLY machines. We, as humans with an imperfect ability to use another t001 called language, employ a linguistic mechanism called “anthropomorpohication to make (simply) more understandable what the machine is and does. That is, we (merely) use terms that sound in human actions.
Only a child, or someone deliberately setting out to mislead, would make the mistake of thinking that the machine items are meant to include actual human thinking.
Of course, claims – as they must be understood by Persons Having Ordinary Skill In The Art ALREADY know this (and hence, my counter point to those that would deceive).
Only a child, or someone deliberately setting out to mislead, would make the mistake of thinking that the machine items are meant to include actual human thinking.
Because “determining whether the credit card numbers match” is, like, totally inhuman.
How does the brain add 2+2 and get 4? It’s a complete mystery! Because “anon” said so.
the bio “circuitry” is far more complex, and as of yet, not even fully understood.
Not even fully understood! Just like a black box.
MM total non sequitur. The point is that they are machines. They are doing what our brains do just as our iron age machines did what our bodies did.
They are doing what our brains do just as our iron age machines did what our bodies did.
Were you allowed to claim those “iron age” machines in terms of their new functionality without describing the structural features that distinguished those machines from the prior art machines?
No. But you knew this already.
Functional claims are a different issue. But, then since you have no rational argument you must try something else.
(Also, see Deener of the 1800’s where functional language was deemed appropriate.)
..and yet again Malcolm pretends the claim format – the optional claim format is something other than what it is:
an option.
Talk about that “born yesterday” syndrome…
That is right anon. And interestingly this has a historic basis in that before modern computers all that type of information processing would be carried out in a person’s head. So, the idea was to say well equations and that sort of thing are the type of thing people do in their head so let’s exclude them. But, now with modern computers the underlying assumptions have changed.
It is intellectually dishonest by the educated and epic ignorance by the rest.
To anyone trained in science, the reality is plan: computer are information processors that perform the information processing with a physical process that takes time, space, and energy. The anti-patent crowd has created so much nonsense that it is impossible to argue with them in front of the mob.
before modern computers all that type of information processing would be carried out in a person’s head.
ROTFLMAO
It must be fun to have been born yesterday. You get to make up your own history!
Except I actually wrote a paper where part of the paper looked at the history of why “math” was seen as not eligible.
And, your post appears to be just a response to respond. It must be on your job description to respond to every post that doesn’t agree with your employers policy goals.
Really strange that the better the information processing gets the more vehement the attacks are on computers (and how the anti-patent judicial activist use this to their advantage.)
But, I note that you made not one substantive response to my posts. Nothing has changed in 10 years of blogging with you MM. Remember that I am the one that gave you your nick name.
Night Writer,
Whether or not you gave him a nickname is immaterial.
But what you state is more to the point: Malcolm has NOT changed one iota in what is approaching a decade of posting here.
Look back at the Prof’s own “let’s make a better ecosystem here” thread. Examples were provided of Malcolm’s behavior from the get go.
And yet, NOTHING is done about the ad infinitum ad nauseum propaganda machine of Malcolm’s desire NOT to engage in any sense of dialogue, but to merely dissemble and repeat his short script items.
Sure, there is a small ec(h)osystem that absolutely cheers Malcolm on, but that selfsAme number of posters ALSO do not engage the counter points long provided – ALSO do not even attempt to engage a dialogue and ALSO seek only to blanket the board with the same things in an attempt to gain some semblance of “credibility” by the “say it often enough” maxim.
Since one cannot make a horse drink at the well, how then do you keep the clutter of horse carcasses away from the well so that those horses that do want to drink can make it past the mounds of rotting horse “stuff”….?
MD: If you take other criteria like new, obvious, useful, moral, technical, nobody is saying that “Nothing is obvious” and nobody is contending that “Everything is obvious”.
In fact there were lots of people running around claiming that sky was falling after KSR. They were wrong.
I struggle to imagine a worse criterion for deciding whether a claim shall issue.
I can think of a zillion worse reasons. How about “it’s new and it’s a process”? That would be far worse than “the claim protects an ineligible abstraction.”
While she contends that every claim under the sun can be presented as abstract, contributers here vehemently maintain that no claim can ever be seen as “abstract”.
Golly, maybe both those camps are wrong. Maybe the answer is somewhere in between.
I see that our ever-present quality controller has been hard at work this week-end, and has posted a bunch of comments overnight. Even if you baulk at them, do take a look at the short sweet new comment from Paul Morgan, which you can find at 13.4.
Quite how a judge (Moore) can suppose that what she can personally remember of the relevant prior art more than a decade in the past is of any relevance whatsoever to the case at bar, and the invalidity or otherwise of the claim in view, is entirely beyond my comprehension. She should read more Mark Twain, perhaps, on the inadvisability of communicating her thoughts out loud.
Even (still) in his most recent rant at 13, Malcolm indulges in a duplicitous dichotomy that I would love for him to square away (but have an exceptionally low expectation that he would ever do so).
To wit: Malcolm chastises those who seek to point out that a claim squarely satisfying not only one of the statutory categories, but one of the “hard goods” statutory categories should be considered to “pass” the “magical” new** 101 test of Alice, and yet he himself turns right around and offers as a path to passing that “magical” test the mere idea of using but one claim option: his “self-elevated”-and-nothing-more-than-the-canard-of-Point-of-Novelty of “objective physical structure.”
Think of this situation as a Venn diagram; the “logic” he criticizes is a larger circle that totally encapsulates his own smaller (and need I remind you optional) circle.
If that selfsame logic is something he criticizes, and his own “answer” is contained within that logic, he then is fully admitting to a self F A I L.
That this mantra is both a F A I L, and simultaneously (eagerly, even glibly) not critically evaluated by those who share a common desired ends is shown by the echo-mate Ned, who pounces on every opportunity to align with the Ends that Malcolm desires, but who refuses to even acknowledge exactly what position Malcolm takes with his smaller circle fully encapsulated within the larger circle. Ned jumps all in to the “PON” fallacy, yet F A I Ls to see that such a fallacy has NO connection with how he wants to use that notion in the 101 sense.
As can be seen on the recent thread in which a simple question of basic definitions go unanswered by the sAme small circle, this logical fallacy of those sAme ones simply will have a blind eye turned to it, and I can guarantee that the nigh relentless propaganda will continue despite this glaring logical gap.
There is NO desire for a true dialogue here when that dialogue exposes such gaps. Watch now as instead of filling the gap, any response from the typical “players” will seek to shift the focus to me personally instead of the actual subject matter. That’s how they roll. That’s how they have always rolled. And that, my friends, is the source of the blight that infects this forum and makes ANY true dialogue simply impossible.
In another analogy, the ec(h)osystem problem here is that you can lead a horse to water, but you cannot make him drink. You really cannot force a dialogue, so no true dialogue occurs when one side of that dialogue is shown a gaping hole in its “logic.” Instead, you will have the endless propaganda machine, the endless dust-kicking, and the endless obfuscation of attack those who present the holes in the logic.
You all want an end to the acrimony? Simple: end the drive by monologues; end the propaganda postings that refuse to integrate the counter points raised. And this modest request would really not be that difficult. Prof. Crouch has shown the willingness to police the threads by individual, so just apply that effort in a truly objective manner.
Sort of like what I suggested to him personally some four years ago now.
anon, It is ONLY when such reliance is total and complete and falls to the optional path of 112(f). But as even Prof Crouch has provided notice (and I have explicitly reminded Malcolm of this point on numerous occasions), the ability to rely on functional language OUTSIDE of 112(f) is fully sanctioned by Congress in the Act of 1952 in any claim that is not the equivalence of a single means claim.
Anon, Congress passed only 112(f). It did nothing else.
You should know that functionally defined elements were construed prior to ’52 to cover the corresponding structure and equivalents. All 112(f) did was to prevent invalidity if novelty was in the one MPF element.
Congress did not authorize functionally claimed elements. They were authorized by the Supreme Court in Westinghouse — with the construction to cover, etc.
Ned,
You are not even close to viewing the law as it is.
Unclench your eyes, pull those fingers out of your ears, stop the “nananana” chanting and OBSERVE, LISTEN, AND INTEGRATE what Congress actually did, what Federico acknowledged, and even what the courts have noted.
Claims TOTALLY functional have the option of 112(f).
There is a Vast Middle Ground of PERFECTLY allowable claims that contain both structure AND functional terms – no matter which part of the claim element – outside of 112(f) that Congress instituted with the Act of 1952.
ANY view contrary to this is simply not inte11ectually honest.
“they were authorized by the Supreme Court in Westinghouse — with the construction to cover, etc.”
Statutory law is outside the purview of the judiciary to “authorize.”
Pre-1952, Congress has shared some of its authority, but that was limited to setting the meaning of the word “invention.”
Even that was revoked with the Act of 1952. Importantly, what is allowed in claim elements is NOT an item of setting the word “invention,” so there is NO “carryover” from pre-1952 in this aspect.
ANY attempt by you to have the WRONG branch write patent law then in this area is at “best” ultra vires.
Anon, I don’t know where you get what you say here and elsewhere about US law. But has nothing to do with US law.
The Supreme Court case law stands unless overruled by Congress. That is the way it is. You cannot simply by saying otherwise change reality .
Ned,
The plain and simple fact of the matter was that the act of 1952 simply was NOT a strict codification.
You do not seem willing (or able) to understand that very simple fact.
Following up on my comment yesterday regarding this morning’s oral arguments in Cloud Satchel v. Barnes & Noble (here: link to patentlyo.com), we now have the recording.
The claims are directed to software on a portable “document reference transport device” (LOL!) which is (surprise!) a portable computer that is capable of accessing a database of stored information, thereby increasing the amount of data “available” to the user of the portable computing device. Whoopee!
A reminder for appellants who are still pretending that Alice never happened or that Alice is limited to its specific facts: stop pretending. The first thing the panel did in this case was take the patentee to task for wasting a bunch of time with arguments that because the claim is directed to an “apparatus”, that Alice doesn’t apply and the subject matter eligibility question is moot. That’s not the law. The judges know that it’s not the law. If you want to overturn the law, you need to make a very, very compelling argument that the law must be overturned because it’s wrong. You can’t just pretend that the law doesn’t exist.
Another bizarre moment that illustrates a systemic problem with both the CAFC and the PTO: Judge Moore states that she doesn’t remember “laptops” in 1994. For cripessake, please educate yourself, Judge Moore, and recognize that what “Judge Moore” remembers about the history of computing is probably the last thing on earth that matters to anyone. First of all, the claim doesn’t recite “laptops”, it recites “portable.” Portable computers were around at least as early as the early 70s and the “Dynabrook” prototype dates to about that time. “Flip form” laptops were marketed in 1983. So much for Judge Moore’s awesome memory.
Judge Moore also states that “certainly cell phones” that you could use for obtaining remotely “did not exist” as of 1994. This is based on her “darn good memory” (because, she tells us, that’s when she graduated from law school — as if that matters).
Of course Judge Moore is absolutely wrong:
link to en.wikipedia.org
Devices that combined telephony and computing were first conceptualized by Tesla 1909 and Theodore Paraskevakos in 1971 and patented in 1974, and were offered for sale beginning in 1993. …. The first mobile phone to incorporate PDA features was an IBM prototype developed in 1992 and demonstrated that year at the COMDEX computer industry trade show. The prototype demonstrated PDA features as well as other visionary apps like maps, stocks and news incorporated with a cellular phone.
Note that — as far as anyone knows — the alleged “inventors” of this junk patent had nothing to do whatsoever with the development of COMDEX, or with Simon, BellSouth’s cell phone which was marketed in 1994 and which was able to “send and receive faxes and emails and included several other apps like address book, calendar, appointment scheduler, calculator, world time clock, and note pad through its touch screen display.”
That’s what people were walking around with in 1994. It doesn’t matter what Judge Moore “remembers” or what Judge Moore or her friends were walking around with. These weren’t “experimental” devices. These devices were sold to consumers and used.
Was the lowest moment in the argument the moment where the patentee tried to compare its junk claims to the invention of the “two-wheeled” transport machine we refer to as “bicycles”? Probably.
Judge Moore: “Tell me a claim that I couldn’t reduce to an abstract idea.”
The answer is a claim that recites a specific novel structure, described in objective structural terms, that distinguish the claimed structure from structures in the prior art. Of course Judge Moore can pretend that such a claim may be reduced to an “abstraction” but pretending doesn’t make it so.
Maybe the lowest point in the discussion was when Judge Moore said “Your body includes arms and legs. Have I described your entire body?” That was an attempt to elevate the
And then the CAFC’s real problem raises its head:
Judge Moore: “How do you distinguish DDR”?
The problem is that DDR doesn’t exist to be “distinguished”. DDR exists to be thrown in the trashbin of history because DDR is a pile of self-serving cr p that was made up out of whole cloth by the CAFC for no other purpose except to lift a junk computer-implemented logic patent out of the sewer where it belongs. There is no way to reconcile DDR with the Supreme Court’s holdings or even the CAFC’s other holdings that deal with computer-implemented junk.
In any event, the defendant’s attorney did an excellent job here of not getting flustered by Judge Moore’s regularly scheduled meltdown about subject matter eligibility. The “problem” addressed by the alleged “invention” is not a problem unique to the Internet or to computers. It’s about addressing information storage deficiencies. The “solution” described by the claims is “link to a data warehouse with greater storage capabilities.”
The defendant’s attorney also did an excellent job of highlighting the patentee’s efforts to read limitations into the claim that aren’t there. The claims don’t require fast speeds or any remoteness of storage (much less storage on “the other side of the world”).
The hyperventilating by certain judges on the CAFC about hypothetical claims to logic that save the world “but how do we save the claims???” really has to stop. It’s elephants all the way down. They know that. Painting DDR on the back of one of those elephants doesn’t change anything.
Because things like hardware are “abstract”…
Uhum.
(I am not disagreeing with your take of Alice – and would point out that Ned has not yet accepted your take)
You are also conflating 103 and 101 again but you already knew that didn’t you…?
MM, I worked on the Minuteman III. It had a flight computer. Would it be considered portable because the missile was intercontinental?
Now if such a flight computer could access a database located in a real cloud during flight to store or retrieve data? There might be something to that.
More on Judge Moore on not recalling any “laptops” in 1994. See Apple design patent Des. 316,252 issued Apr. 16, 1991 filed Jan. 23, 1989 on a “portable computer” that folds up, with the screen in the cover, like most laptops.
I bought a Dell Laptop online in 1994 (i.e., on the Dell website over the Internet using the Mosaic browser. We had a 64K connection to the Internet. 🙂 )
One commenter writes:
” I could build this system based on the claim, the spec, and what is known in the art. So, please tell me how something that passes 112 can be abstract”
Is there not a distinction in the USA between the inventive concept as claimed, and one embodiment of it, as described in detail in the specification? If so, do we not, as patent attorneys, need always to be precise, when we talk about “the invention”, as to whether we are talking about the claimed concept or the described embodiment?
And just as an embodiment can be non-obvious even when the claim it covers is bad for obviousness, so can a claim directed to an abstract concept be coupled with a description of some specific embodiment that is most definitely non-abstract and most definitely enabled by the specification.
That’s how it is in Europe. Is it different, in the USA?
I think the gentleman points out why Bilski was wrong in describing nonstatutory subject matter as “abstract.” It confuses thoroughly.
Indeed Ned. I can see the wisdom of “judicial restraint” at the level of SCOTUS. But with hindsight I think even they might now appreciate that it might have been better if in Bilski they had made a valiant attempt to tell us what “useful arts” means, rather than foisting on the law a new test called “abstract”.
Bilski was a battle for the nose of wax mashing that Stevens lost.
That context should not be (so easily) forgotten.
In the US we used to talk about enabling the full scope of the claims. The way it used to work in the US was if you claimed something very broad and there were inventive concepts that other came up with afterwards that were covered by your claims, then you claims could be invalidated for being too broad.
So, the complaint in this case would be that the full scope of the claims wasn’t enabled. The flip side to that is a court used to construe claims in accordance with the scope of enablement. (This was back when we had patent law in the U.S. Now we have a witch trial boards at the Fed. Cir., PTO, and SCOTUS.)
There were lots of policing mechanisms in place for too broad claims. 112/102/103. Now with Alice, there is merely the innovation of a chant and the claims are invalidated.
Also, functional language is used in textbooks in almost all areas of technology with the understanding the functional language represents the known solutions. I have actually reference real textbooks that are used in colleges that state exactly this.
OC: Now with Alice, there is merely the innovation of a chant and the claims are invalidated.
If that’s you’re understanding of Alice, it’s no surprise you’re having difficulties.
functional language represents the known solutions
Indeed. That’s why you’ll find claims relying on functional language being limited to the objective physical structures that are disclosed in the specification. There’s a bit of an additional problem, of course, when the novelty of the claim resides in the functionality (e.g., automation) and the recited “structure” is a generically recited tool whose purpose (to automate determinations, using logic) was well-understood. Can you think of any specific art fields where this occurs regularly? I can.
“bit of an additional problem”
The canard of Point of Novelty in the 101 sense (yet again).
“whose purpose (to automate determinations, using logic) was well-understood.”
Almost (but not quite) sounds like you want to use the inherency patent doctrine.
Of course, you run away from that point because you would then need to ascribe to the completely absurd notion that ALL future improvements to the machine are somehow (magically, but necessarily) already in there.
Why don’t you do everyone a favor, use those short declarative sentences you are always on about and place your real feelings – using proper patent doctrines – on the record?
Yeah, we both know why you would rather dissemble and prevaricate than do that.
If the “improvements” to the old machine (or process) are themselves ineligible — and they surely are in the case of improvments in logic — then you’ve got a real problem.
I’m not running away from that fact. On the contrary, I’ve been steadily holding that fact up to your face for years. Before Bilski. Before Prometheus. Before Alice. Or have you forgotten?
sounds like you want to use the inherency patent doctrine
Nope. Keep beating on that strawman, though. It makes you look really serious and smart. Sure it does.
Clearly, the inherency doctrine is not a strawman.
Also, software is a machine component.
Software is not logic.
Let me know when you grow up and want to talk with the adults about these things.
“ That’s why you’ll find claims relying on functional language being limited to the objective physical structures that are disclosed in the specification.”
A blatant misrepresentation and (repeat) moving of the goalposts.
Such reliance that Malcolm speaks of here is NOT for those relying on functional language as he would indicate.
It is ONLY when such reliance is total and complete and falls to the optional path of 112(f). But as even Prof Crouch has provided notice (and I have explicitly reminded Malcolm of this point on numerous occasions), the ability to rely on functional language OUTSIDE of 112(f) is fully sanctioned by Congress in the Act of 1952 in any claim that is not the equivalence of a single means claim.
Further, the ends-justify-the-means other partner to Malcolm, whom is Ned, simply must accept the FACT that this wide open area of mixed vintage simply is not limited – as Ned would merely wish it were to have been limited – to claims using functional language at some precise “point of novelty.” Due in part to the plain fact that anyone can draft a claim whose “point of novelty” is simply the entire claim itself (the principle annunciated in Diehr that was expressly affirmed even in the nose-of-wax-mashing later cases).
Once you realize that Congress did not write the law as these two (among others wanting a desired Ends and not faring about the Means to get there) WANTED Congress to write the law, and we realize that the judiciary would actually need to take that explicit step and re-write the law to put ANY serious teeth into what they too want the law to say, it becomes evident that the Vast Middle Ground will NOT go away, and the increasingly hostile attempts by the judicial branch as placed by their “verdicts” will only take us closer to a constitutional crises (arguably said crises is already upon us).
But returning to the point here: is there ANY justification for continued posts that so blatantly misrepresent the state of the law in pushing for a desired Ends? Surely, Malcolm must understand that what he posts is mired in deception. There can be no HONEST reason why he continues to ig nore these counterpoints so plainly (and repeatedly) provided. The ecosystem will NEVER “get better” when people are unwilling to NOT treat points of law honestly.
Your words fall on ears belonging to minds UNWILLING to understand.
Someone: I could build this system based on the claim, the spec, and what is known in the art. So, please tell me how something that passes 112 can be abstract”
Sure. As MD has already explained, the test for whether a claim fails to raise itself out of the muck of abstraction isn’t whether “you could build an embodiment based on what’s in the spec.” The test is whether your contribution to the art as described in the claim rises above an ineligible abstract concept. The allegedly “new” concept here (try not to laugh) is “determine whether a driver is inebriated automatically and keep them from driving.” How is this automation achieved, according to the claim? Evidently through the use of “an expert system.”
What’s the novel structure of this “expert system”? Nobody knows. That’s because there is no objective structure. This “system” is defined by its function, which is (allegedly) the sooper dooper techno thing that deserves patent protection. “New functionalities” aren’t eligible for patent protection, however. Among other problems, “new functionalities” are abstractions because they lack objective structure where it counts. Note again that one’s ability to create an embodiment falling within the scope of an claimed abstraction does not cure the problem presented by the claim.
Some people don’t like this analysis because it hurts their pocketbooks. But it’s not going away. Some form of it is has always been with us and some form of it is going to be with us forever. If you want to create a special exception to keep your wallet padded, then justify the exception with data. Convince everyone that the size of your wallet is important to the rest of us. Good luck.
Once again the dross of an optional claim format (objective physical structure in the claim) is made an issue by Malcolm.
Why must we all be subjected to this type of intentional and fallacious posts?
Ad infinitum.
Ad nauseum.
claim format
Your reliance on the “format” of the claim is a demonstrated loser. But don’t tell your clients! Just take their money and laugh. After all, it’s all about you.
What an arse you are.
It is not my reliance – but your own. You are the one constantly attempting to make “objective physical structure” a necessary predicate when it is merely an option.
Secondly, the only one wanting to make this about me – is you. You are the one that keeps on attempting to switch the conversation to be about me, instead of about the actual subject of patent law.
Funny how it is that you so reflexively you your number one tired and trite meme of accuse0thers0fthatwhichMalcolmdoes.
Go figure folks.
reflexively you your
should read
reflexively jump to your
Your point here MaxDrei is a good one: a claim is not just limited to any one embodiment in the specification.
But that’s a scope question, isn’t it?
Notwithstanding that, that me make sure that I understand you.
You are saying that a claim (with its full scope) can be found obvious, even if a lower level embodiment would not be found obvious.
So in a Venn diagram type of explanation, even if the scope contains points that are not obvious, even one obvious point within the scope wrecks the party.
Is that what you are saying?
If that is a correct understanding, then you are saying that so with obviousness, then too “abstractness” passing some type of 112 test….?
Which 112 “abstractness” thing are you referencing? I have to ask, seeing as even the Supreme Court has not bothered (yet) to define that term, so in a very real sense, “abstractness” itself fails a 112 view.
It’s kind of difficult to use a view that fails 112 as a 112 test – don’t you think?
It is with your if-then sentence that you go wrong. Either you do it deliberately, or you just don’t see the issue. Either way, engaging with you is a mug’s game. Bye.
So like you to immediately be snarky when I am being polite and making sure that I understand you.
So you are not saying that you are attempting to say that you are using 112 like the example of 103?
If not, then what are you saying?
You ask:
“So you are not saying that you are attempting to say that you are using 112 like the example of 103?”
So like you. Almost a parody of your style. Very funny.
I have a suggestion. Stop trying to understand what I write. It’s not meant for you and it is a waste of your precious time.
LOL – so you just do not want to clarify what you wrote….?
Soooo “mind willing to learn” of you (not).
Soooo helpful for the ec(h)osystem.
Soooo typical.
Maybe you think this is a “mug’s game” because you just don’t get how your six month’s of experience (albeit repeated no matter how many times) just does not prepare you to understand the law.
link to law360.com
Game Show Network general counsel Mark Feldman said in a statement that the company was pleased the board found the patent was invalid, as the company has contended for several years.
“Whenever GSN is faced with unsupported legal claims, whether patent-based or otherwise, we choose to vigorously defend, rather than settle,” he said. “The USPTO’s new inter partes review proceeding, which allowed us to fully participate in the board’s review of the…patent, proved to be an efficient new procedure for canceling an invalid patent.”
[US Patent 6,174,237] covers an online gaming system with a qualifying round between a player and a computer and a playoff round among players who reach a specific score and compete against the computer. The patent specifically mentions that it covers games such as checkers, bridge and crossword puzzles.
Oral arguments were at the CAFC this morning. As you can imagine, the asserted claims use much more extraneous verbiage than appears in the summary above but the scope is that absurd. Yes, folks, organizers of game tournaments used tryouts to evaluate potential contestants in the prior art before 1999! Yes, folks, games can be played against a computer even in those dark distant ages whencomputers were powered by the same waterwheel used to mill one’s corn.
Interestingly, in oral argument the patentee admitted that the PTO offered them the opportunity to file an amendment which the patentee declined (oops). The patentee chose instead to file a reissue.
To distinguish the cited prior art, the patentee argues that the claims are limited to tournaments where the computer is a rival contestant (never mind that “solitaire” is listed among the games of skill and the specification’s teaching that “[t]he qualifying round is played between a single player through a computer terminal and a host computer…. Also the host computer has the ability to act as another player if the game requires more than a single player). Query how such a distinction would overcome the inevitable obvious rejection.
“an efficient new procedure.”
It is interesting, is not, that we had the same procedure for canceling invalid patents in place from 1793 until 1836 when it was removed from the statute. It might be useful to inquire as to why it was removed. Could it be that meretricious interlopers were filing cancellation actions as they are today? Could it be that the wealthy could utterly d*stroy a small fry inventor with such a procedure?
But it is very interesting that everybody assumes that IPRs are truly new when they are not.
Ned: Could it be that the wealthy could utterly d*stroy a small fry inventor with such a procedure?
This “argument” against IPRs remains both the most frequently raised and the weakest.
In a capitalist country with great disparities of wealth (e.g., the United States) the wealthy always have the ability — in theory — to play the less wealthy like puppets. They have more resources. If you don’t like that fact, the worst way to change the situation is to increase the amount of assertable junk in our patent system. After all, the wealthy will always have more junk patents than everyone else! Just like they do now.
The way to change it is (1) increase the participation of poor people in the voting process and (2) start taxing the rich and use the insane amount of money generated to give everyone a better chance to succeed. Rest assured that the wealthy will fight you every step of the way and they will sink to the absolute lowest levels in that fight.
In the meantime, please alert me when a “small fry inventor” has been unfairly targeted and “utterly destroyed” by a wealthy “copyist” (or whatever label you choose) thanks to the IPR system. Then we can start gathering statistics about the number of those incidents and compare them to the number of times a small company has avoided injustice and expense using the IPR and the number of times that a large company with a junk patent has been dissuaded from asserting that junk because it knows there is zero zilcho nada chance of that junk surviving an IPR.
Take Facebook, for example. Their portfolio is stacked with reams of junk patents. The best thing for “small fry” who want to get into the game but who feel “blocked” by those junk patents is simply to start practicing them, en masse. Then when Facebook comes after you, you publicize what they’re doing. You mock their ridiculous junk, you mock their silly patent attorneys who can’t understand subject matter eligibility no matter how hard they try, and you mock their hypocritical tough guy posturing. And you join up with the other “small fry” and you expose the farce for what it is.
Don’t have the gut to do that? Then find something else to do. IPRs aren’t going anywhere.
MM, no doubt the rich can attempt to use their power. But courts have standing requirements. IPRs do not. That can and has led to abuse. Just for example, there are rich folk filing IPRs just to drive a companies stock price down so they can make a buck selling short. There are other companies that have filed reexaminations against the whole portfolio of small companies.
What can be abused, will be abused.
“What can be abused, will be abused”
This precious little blog “ec(h)osystem” serves as an abject example of that Ned.
When perfectly, objectively, non-offensive comments are expunged and the rampant C R P anti-patentist rants run unchecked, and posts such as “a complete asshole” glide by, it is abundantly clear that this forum is NOT a neutral viewpoint forum.
It is a forum that festers in being abused, and with such one-way street editing, is itself complicit in being abusive.
The good professor may not think this to be so, may even may be unaware that the perception that this is so (although that would really be hard to believe as he has been told nine years and running that it is so), but neither changes what is.
Ecosystem, good sir – is what you have allowed it to become – through both your actions and your inactions.
Don’t like it, Prof? You only have yourself to blame.
And yet you keep coming back for more.
LOL – and let you have your little propaganda “repeat-a-lie-often-enough-it-garners-a-semblance-of-“truth” party all by yourself…? (seeing as that even though Prof. Crouch has stated “no lies” here, he does nothing about your rampant lies and all)
I care too much about the law.
Besides, it’s rather fun to put your nose into your own C R P. (you really are not that good at the propaganda game – even if you envision yourself to be some “protector at the edge of the fields of rye against those damm G-g-g-grifters).
I care too much about the law.
Thank goodness you’re not a hypocrite.
From the queen of hypocrites…
Ned, how can you continue to call IPR petitioners “interlopers” when you know perfectly well, and have been repeatedly reminded, that the PTO has said that 80% of IPR petitions are filed by defendants being sued for patent infringement by the patent owner! And no doubt most of the others had been at least threatened with a suit.
If there were really corporations with a big budget to go around starting IPRs to pick on poor inventor’s patents for the heck of it, by spending the typical $100,000. to $200,000. or more total cost each, there would be law firms scrambling for that new business opportunity.
link to technologyreview.com
So, the machines are beginning to rival us in many areas and yet somehow this is all easy. The quantum of innovation is not what the Disney movies says it is.
I see MM keeps up the never ending propaganda war against patents for the international corporations. Putting those kids through college MM?
Putting those kids through college MM?
My kids have enough money to buy their own colleges. Thanks, Google!
Seriously, you are funny.
Fyi, as predicted, the CAFC upheld today the summary judgment tanking (under 103) of those absurd “baseball game editing” claims (Rule 36 affirmance). That was fast (oral arguments were Tuesday). Congrats to the victor MLB for taking a stand.