Federal Circuit: No Opinion Serves as the Basis for Our Opinion

By Dennis Crouch

Chicago Board of Options Exchange v. International Securities Exchange (Fed. Cir. March 25, 2016)[1] and International Securities Exchange v. Chicago Board of Options Exchange (Fed. Cir. March 25, 2016) (Appeal No. 2015-1743)[2]

These appeals involve three CBOE patents directed to automated trading exchange systems. All three patents (all claims) were challenged in covered business method reviews and found by the PTAB to be ineligible under Section 101 (abstract ideas).  In addition, two of the same patents (a subset of claims) were challenged in inter partes review proceedings, but in those cases the PTAB sided with the patentee and found the ISE had failed to prove invalidity (either obvious or anticipated).

The CBOE appealed the 101 invalidations, and ISE separately appealed the inter partes review denials.  In an odd set of judgments, the Federal Circuit affirmed the PTAB 101 rejections in a Rule 36 Judgment (no opinion issued).  At the same time, the Federal Circuit also dismissed the IPR appeal as moot. However, in this second case the court did issue an opinion to explain the mootness following from the original no-opinion judgment. The court writes:

In this appeal, International Securities Exchange, LLC (“ISE”) challenges the determination of the Patent Trial and Appeal Board (the “Board”) in inter partes review proceedings involving U.S. Patent Nos. 7,356,498 (“the ’498 patent”) (IPR2014-00097) and 7,980,457 (“the ’457 patent”) (IPR2014-00098). The Board found that ISE failed to show by a preponderance of the evidence that the challenged claims of the ’498 and ’457 patents are unpatentable as either anticipated, obvious, or both, under 35 U.S.C. § 102(e) and 35 U.S.C. § 103(a). In light of our decision in Chicago Bd. Options Exch., Inc. v. Int’l Secs. Exch., Case Nos. 2015-1728, -1729, and -1730, issued contemporaneously herewith, affirming the Board’s conclusion that both patents address unpatentable subject matter under 35 U.S.C. § 101, we find this companion case moot. We dismiss the appeal and vacate the Board’s decisions.

The Federal Circuit’s use of R.36 No Judgement opinions is on the rise even while wringing its hands over the USPTO’s failure to explain its judgments to institute AIA trials.[3]

= = = = = =

[1] Appeal Nos. 2015-1728, 2015-1729, and 2015-1730. These cases are on appeal from three Covered Business Method Post Grant Review Proceedings. CBM2013-00049 (Pat. No. 7,356,498), CBM2013-00050 (Pat. No. 7,980,457), and CBM2013-00051 (Pat. No. 8,266,044).

[2] Appeal Nos. 2015-1743 and 2015-1744.  These cases are on appeal from two inter partes review proceedings. IPR2014-00097, IPR2014-00098.

[3] See, Dennis Crouch, Federal Circuit: Our Muscles are Not Working, Patently-O (March 23, 2016)

About Dennis Crouch

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

93 thoughts on “Federal Circuit: No Opinion Serves as the Basis for Our Opinion

  1. The incredible impossible world of Junk Patents, Chapter 894.

    US 8,918,339
    Assignee: Facebook, owner of vast numbers of the world’s junkiest patents

    Try to believe this one:

    1. A computer implemented method comprising:

    storing one or more emoji in a social networking system, each emoji providing a visual representation of an emotional state associated with a user;

    presenting content items to a viewing user of the social networking system;

    receiving a request from the viewing user to associate an emoji with a selected content item from the presented content items;

    retrieving one or more emoji eligible to be used by the viewing user;

    presenting the retrieved one or more emoji to the viewing user;

    receiving a selection of a selected emoji from the one or more emoji from the viewing user;

    prompting the viewing user for payment information associated with the selected emoji;

    associating, by a computer, the selected emoji with the content item when payment information is received; and

    displaying the selected emoji along with the content item to one or more additional users of the social networking system connected to the viewing user and viewing the selected content item.

    Heckuva job, PTO.

    Wow. Just … wow. Hey, Facebook: call your patent attorneys. I’m practicing this claim right now. Please come get me! It’ll be great press for you and your awesome attorneys.

    LOL

    1. Numbered almost 9,000,000…and lurking as a weapon of economic destruction for the next 25 years. The self evident absurdity does little to balm the knowledge that there are hundreds of thousands like it buried like landmines in a benighted former warzone….

      1. You do realize what the laws are with regard to the number of years patents are enforce, don’t you? (It’s not 25 years.)

        And this requirements payments to associate emoji with content, and also to send this emoji (and content) to other users. Who can Facebook sue for this?

        But it would be better if you could ignore MM’s constant posts (only tangentially related to the topic), as that only encourages him.

        1. do realize what the laws are with regard to the number of years patents are enforce, don’t you? (It’s not 25 years.)

          Friendly reminder, PB: Even if a patent is expired, the patent owner has six years from the expiration date to file a lawsuit in order to collect monetary damages for past .

          See link to uspto.gov to learn more! But of course you know everything already.

          Who can Facebook sue for this?

          LOL. Is Facebook the only “social network” on earth? If so, how on earth did that happen? LOLOLOLOLOLOLOLOL

    2. Granted on Dec. 31, 2014.

      Basically, tagging a content item (picture or video) with an emoji that is selected from a group, and paid for.

      I do not understand how this is not a method of doing business.

      1. I do not understand how this is not a method of doing business.

        It is a method of doing business. There’s zilcho techn0l0gy and to the extent there is anything “inn0vative” that “innovation” is ineligible abstract junk.

        It’s no more eligible than putting a sticky star next to a kid’s name on a bulletin board (or any other “content”), wherein you paid for the star using “an electronic payment method” offered by a “third party.”

        Junk from top to bottom. It takes about five seconds to see through the crxp but apparently that’s four seconds too long for the PTO or for the genius attorneys employed by Facebook. Who are these people and what is their major malfunction?

        1. Five seconds AND $600,000 via IPR, or $1.5M via litigation, if you are lucky, according to the AIPLA Economic Report on the Survey.

          Of course you could get lucky on any early Alice motion, but that’s strictly a crapshoot.

          The real point is if Facebook comes calling, you are going to pay them, and that’s that. The FB lawyers know exactly what they are doing and will get ROI from the effort. Meanwhile there is no disincentive whatsoever for the USPTO to not grant junk, and every incentive for them to grant as much junk as they can push out the door, since their revenues depend on the manufacture of as many patents as possible- regardless of quality.

          It’s a distorted mess that created the greatest single racket in the history of mankind. Makes the gangsters of prohibition look like penny ante playas.

          1. “The real point is if Facebook comes calling, you are going to pay them, and that’s that. The FB lawyers know exactly what they are doing and will get ROI from the effort. Meanwhile there is no disincentive whatsoever for the USPTO to not grant junk, and every incentive for them to grant as much junk as they can push out the door, since their revenues depend on the manufacture of as many patents as possible- regardless of quality.”

            I agree.

            In order to fix this issue, Congress needs to put the screws on the PTO so that their budgets, their BONUSes, and everything about that agency is directly tied to their stopping issuing so much business method junk. Assign a special inspector General with plenary power to review the work of the PTO.

            Now if examiner bonuses were on the lie for screw ups by their fellows, there might be some insistence on peer review before patents in certain areas are granted.

            1. How about starting with a full refund from pto to treasury general fund when a patent is invalidated? At least some skin in the game would tend to focus minds on quality…

              1. Martin, what bugs me is when the PTO itself invalidates an issued patent over the very same (or not materially different) art considered by the examiner in allowing the claims.

                1. That raises a good point. I suppose all original examinations should be made inter-partes – just give the public a direct input once the applications are published, and if an objector is overruled and eventually prevails either in court or PTAB, refund to the general fund of all fees.

                  Its an issue of aligning interests, and right now, as usual, nobody is looking out for the public.

                2. Mr. Snyder,

                  Do you think that the pejorative “Tr011” was (and is) bandied about for the “public interest“…?

                  Are you really that naive?

                3. Let’s do it one better, like they do it in Japan. Once the patent application is published, a call is quietly made to the examiner by concerned local citizens representing of course big Japanese businesses and the patent application never gets allowed.

                  Some think that something similar is going on in USPTO, not only in ex parte examinations but in inter partes reviews, where big companies go in in openly lobby the director concerning pending examinations and reviews.

                4. I think you misspoke there Ne d- it is not OPEN lobbying – those closed door meetings were not open and no records of those meetings were ever published.

                  But hey – who cares about the means when the ends coincides (for now) with the desired ends, eh?

                  Something along the lines of Sir Thomas More comes to mind…

            2. “In order to fix this issue, Congress needs to put the screws on the PTO so that their budgets, their BONUSes, and everything about that agency is directly tied to their stopping issuing so much business method junk. Assign a special inspector General with plenary power to review the work of the PTO.”

              It would be so much easier, and a thousand times more effective, to simply amend the law.

              1. 6, what law would that be?

                Today is business methods. Yesterday it was DNA. Tomorrow it might be functional claiming. The patent office always seems to have a systematic problem in some regards where it gets way out of step with the law and reality.

  2. Cert denied today to patent tr0ll ParkerVision in its desperate hail mary quest to restore a $173 million jury verdict against Qualcomm that the judge tossed out because the jury was clueless.

    Petition was filed on March 1. That was quick. Good riddance.

    The question that ParkerVision had asked the Court to review was “whether and under what circumstances an inconsistency in expert testimony permits a court to set aside a jury verdict and grant the losing party judgment as a matter of law.”

    1. Also denied: DAIICHI SANKYO COMPANY, LTD. V. LEE, MICHELLE K.

      link to lexislegalnews.com

      Daiichi petitioned for writ of certiorari with the Supreme Court to answer:

      “1. Whether the Patent and Trademark Office could properly rely on the limitations period for judicial review in denying administrative review to correct its own acknowledged errors, resulting in the loss of rights guaranteed by Congress.

      “2. Whether the limitations period for judicial review of the Patent and Trademark Office’s final agency action is the six-year period made generally applicable by the Administrative Procedure Act, or a 180-day period that Congress established for review of an interim decision.”

    2. MM, on Parkervision, they lost because their infringement expert testified that signal X was created before it reached capacitor’s Y so that Qualcom could not infringe a claim that required that the signal be generated from energy stored on the capacitor.

      Parkervision tried all sorts of arguments to overcome this admission, to no avail. Either the expert’s testimony was screwed up, or Parkervision really did not have a case to begin with.

      Whose to judge at the appellant level? I would agree that jury verdict for Parkervision was not supported by substantial evidence.

      This case on its face does not seem like it presents a issue of law. The Feds twice, panel, an petition for rehearing, marked their decisions non presidential.

      The Supreme Court saw it the same way. However, I would not say that Parkervision is or was a troll.

        1. MM, file patents and sue people?

          I have no idea what P’s BM is. But R&D ventures conduct research, file for patents, license them and sue infringers. I think that is exactly what the patent system is about.

  3. Two Rule 36 opinions issued by the CAFC today.

    The first opinion affirmed the tanking of patent tr0ll EveryMD LLC’s patents in an IPR. The oral arguments were last Wednesday (haven’t listened to them yet but I’m sure they were fun because EveryMD’s claims are super junky and the company is incredibly whiny).

    Background info on that case here: link to law360.com

    Here’s claim 1:

    1. A method for providing e-mail communications between a sender and a recipient by a first computer system comprising the steps of:

    said first computer system creating a first created e-mail address for a recipient;

    said first computer system receiving an incoming first e-mail message from a sending entity other than said first computer system comprising a first existing e-mail address of a sender addressed to said first created e-mail address of said recipient;

    said first computer system creating a second created e-mail address for said sender different from said first existing e-mail address and from said first created e-mail address;

    said first computer system creating a first modified e-mail message by replacing said first existing e-mail address in said incoming first e-mail message with said second created e-mail address;

    said first computer system delivering said first modified e-mail message to said recipient;

    wherein said step of said first computer system delivering said first modified e-mail message to said recipient comprises said first computer system sending said first modified e-mail message to a second existing e-mail address of said recipient different from said first created e-mail address of said recipient.

    Super techn0 stuff! Whoohoo! Wow. Like rocket science … except there’s no rocket and no science. It’s as if nobody communicated stuff in the prior art before using intermediaries, or as if the patentee’s were born yesterday or were too ign0rant to do some basic research. So sad. Let’s all shed a great big tear for EveryMD. Boo hoo. Hoo.

    1. The other case published today a Rule 36 opinion affirming the tanking of tr0ll Grandeye Lmtd’s claims by the PTAB (per petitioner’s Google’s request).

      Those oral arguments are available

      link to cafc.uscourts.gov

      and provide a useful description of how patent tr0lls operate before the PTAB. The CAFC definitely does not enjoy wasting its time with absolute hackery and briefs that say nothing. It’s unfortunate that so many of these inept tr0lling cases result in Rule 36 opinions (against them) because folks who don’t keep up are missing out on descriptions of the w0rst b0ttom-feeding ventures out there.

    2. MM, thanks for the claim.

      I was reading it through to try to figure out if this was an improvement in computer data processing, but instead concluded that it was a modified e-mail method directed to swapping e-mail addresses at an e-mail server. There really is no improvement to anything physical that I can see.

      Do you agree that claims like this one should be invalidated under 101?

      1. Do you agree that claims like this one should be invalidated under 101?

        Yes. Contacting people using intermediaries is as old as human civilization and this method is nothing more than “do it with a computer as applied to pre-existing methods of communicating on a network.” Piles of lawyerly scrivening layered on such an incredibly basic concept changes nothing.

        But you know if you really wanted to you could clench your eyes super tightly shut and pretend that it is addressing a problem “unique to computer communications.” People make equally frivolous arguments all the time and they aren’t sanctioned for it (but they should be).

        1. If they’ve been doing this for years, why does 101 come into the picture? That’s one of the many problems with Alice — it makes 101 an issue for things that logically should be handled under 102/103. It’s really quite confusing and makes no sense.

          1. PB: If they’ve been doing this for years

            Nobody said people have been practicing the claim for years.

            why does 101 come into the picture?

            Because there’s nothing new in the claim except for the “do it on a computer” lingo.

            it makes 101 an issue for things that logically should be handled under 102/103.

            102 is for anticipation. 103 is obviousness. 101 is “an issue” whenever the claimed “innovation” lies in the merging of an ineligible abstraction with existing technology.

            If you don’t understand why 103 is woefully inadequate to deal with that situation then you shouldn’t be allowed anywhere near a patent or a patent application.

  4. To go along with post 5 below:

    http://ww
    w.csmonito
    r.com/Technology/2016/0326/How-a-Fredkin-gate-could-be-a-quantum-leap-forward-for-computing

    Careful kiddies – there be talk of “math” as structure here (let’s see if the dialogue In The Art can be understood by the anti-patentists, or if it will be bumbled as usual)

  5. “anon” He ran away and has never returned to attempt to define “technological” in a non-circular manner since.

    In fact, you ridiculous path0 l0gical l y ing halfwit, I’m right here.

    And I’ve defined “techn0l0gical” in a non-circular manner many times, including as recently as a couple weeks ago.

    Anytime Greg wants to step up and defend the worst junk ever patented in the history of any patent system on earth, he’s welcome to come here and do that. As I recall, the last time he showed up here he mewled some nonsense about 103 “taking care of everything”, thereby revealing his complete ignorance of the issues.

    Using logic or math to calculate a price or decide what to shove in a person’s face isn’t techn0l0gy and only a patent-worshipping hack would pretend that the use of logic and math for that purpose is a recent development. Unfortunately, as we’re all very well aware, there is no shortage of patent-worshipping hacks out there. They’re like zombies, except less intelligent and not as conscientious.

    1. Once again, Malcolm, the use of the term “run away” is that you did not engage the discussion.

      Yes, we ALL know that you are “right here.”

      Being vapidly “right here” just is NOT the same as engaging in an inte11ectualy honest manner.

      This was explained to you in short declarative sentences – you know, the kind that you say that you like.

      .

      As far as “using logic or math” – great – you just described engineering.

      What was that about being a “hack” – Congrats you have once again Accused Others Of That Which Malcolm Does.

      1. ou did not engage the discussion.

        Except that I did — and I have — many, many times. Doubling down on the l i e s is a really poor strategy on your part, “anon.” And quite frankly engaging in discussions with you is almost always pointless except for the laughs at your expense. Pretty much everybody knows that.

        “using logic or math” – great – you just described engineering.

        That’s nice. In fact, logic and math are fundamental tools used in all kinds of human activities — even in religious activities where they certainly aren’t necessary.

        Again: basic stuff that most eighth graders know.

        The use of logic and/or math in an endeavor does not turn the endeavor into “technology”. And calling any endeavor that uses logic and/or math “engineering” is a rather silly and transparent means of turning that endeavor into some sort of “science” that must be recognized by the patent system. But such are the games that lawyers love to play.

        Now if you’ll excuse me I need to “engineer” my lunch. After that I’ll use my degree in Entertainmentology to “scientifically” figure out what I should watch. Or mabye I’ll pay somebody to figure that out for me using a super awesome “algorithm”! After all, that’s what The Most Important Ever think is best for everybody.

        LOL

        1. I have already pointed out that your version of “engage” is not engaging in an inte11ectually honest manner.

          Your Accuse Others Of That Which Malcolm Does is on display yet again with your accusation of “ Doubling down on the l i e s

          “Go figure”

        2. Engage this:

          Long story short, they defined “technology” as does the vast majority of science, engineering, and philosophy of science/engineering does – TECHNOLOGY IS APPLIED SCIENCE.

          But attackers of business method patents can’t use this definition, because to do so is to explicitly make large domains of business patentable because they are applied methods from the various sciences

          (ps, you very much DID run away when we had that conversation)

        3. Malcolm declares “In fact, logic and math are fundamental tools used in all kinds of human activities — even in religious activities where they certainly aren’t necessary.

          From your dazzling “logic” then, you are saying that software is religion now….? Or somehow “fundamental” to religion…?

          What exactly is your point?

            1. Does not answer the points put to you Malcolm.

              Then again, you already knew that and just wanted to be an arse with your unconnected “English” short script nonsense, eh pumpkin?

    2. So building machines that perform information processing tasks (like our brain) isn’t technology? Sure. OK. And the Sun orbits the Earth.

  6. “http://www.npr.org/sections/health-shots/2016/03/24/471307905/scientists-build-live-no-frills-cell-that-could-have-a-big-future”

    An interesting development, bio folks finally start getting in on traditional inventing, comprising actually making their little cells themselves. Took awhile.

    1. Sure, no danger there in creating an entirely new organism with no awareness of what might happen next (naturally)….

      But hey – watch out for those G-g-g-grifters making the fields or rye soooo unsafe….

      /off sardonic bemusement

      1. Have we mentioned lately that the patent maximalist ignorami are also among the least funny people on earth (except in their own minds)?

        Here’s another exhibit. Totally “bemusing”, ain’t it?

  7. From Greg:

    IBM, Google and PTO disagree on Alice.

    BNA has an article on more incompetent discussions about 101 and Alice and “technological”. At a recent IPO meeting (a priori, nothing will be accomplished), IBM’s Manny Schecter complained loudly about the idiocy of Alice: “We can debate the how, but something has to change.” Yeah Manny, use IBM’s resources to lead an effort to delete 101. Google’s lawyer, Laura Sheridan, demonstrating a gross ignorance of the basics of patent law, argued that Alice was an “important correction” of overly broad, ambiguous patents. Hey Laura, “overly broad” are 102/103 concerns, and “ambiguous” are 112 concerns, which have no place in a 101 discussion, despite the unethical unconstitutional fusion of 101/102/103/112 by Judgey Thomas in Alice. Sheridan’s solution, borrowed from the Pam Samuelson school of unethical legal advice (see below) – have a test to see if there is a “technical solution to a technical problem” – COMPLETELY MEANINGLESS WITHOUT A DEFINITION OF “TECHNICAL”, which I argued 14 years ago to insult the EPO’s Pension Benefits barf-indecision. To make sure nothing was accomplished, the PTO’s Drew Hirshfeld stated the trite and offered no leadership (but at least smacked down Sheridan’s/Samuelson’s nonsense): “But courts have not given us a technological test. If we [use that test], we will be creating more uncertainty.”

      1. That is well written. Just look at what Google has done with copyright law and books. Google is a monopoly and they are going to do everything they can to keep it that way. Their game is you invent it and we will incorporate it into our platform. Microsoft in the 1990’s.

      2. I cannot have even a smidgeon of respect for anyone that defends Alice on the grounds that it in anyway is Constitutional or consistent with patent law. What the mighty ossified m@rons might want to consider is that by legislating on their bench, they are enablers. They are encouraging the legislators not to take responsibility. Let’s face it–the eight are no better than Donald Trump. I would rather have Donald Trump as a justice than any of f1lth that is on the bench now. They have no integrity, morals, or ethics. Just f1lth.

    1. Hey Laura, “overly broad” are 102/103 concerns, and “ambiguous” are 112 concerns, which have no place in a 101 discussion

      Breadth and ambiguity are inherent issues to all the majory statutory patenting hurdles, including 101.

      Trying to convince yourself otherwise is what you do when you are a completely clueless hack.

      IBM’s Manny Schecter complained loudly about the idiocy of Alice:

      LOLOLOLOL

      Manny loves junk patents. But he’s very serious! We all have to pay attention to him because … $$$$. Never mind that he can’t argue his way out of a cardboard box.

      1. MM, IBM wobbles between pro-patent or pro-infringer positions depending on the times and perhaps the issue. They seem at war with themselves at times.

        Google is solidly on “we do not want to be bothered by patents” side of the fence. Way on that side. Now, what they might say at times might be sensible, are extremists, people so biased that they cannot be trusted.

        1. Google is solidly on “we do not want to be bothered by patents” side of the fence. Way on that side.

          Can you show me a single person who does want to be bothered by patents?

          1. You mean besides those that thought so highly that they expressly gave a certain branch of the government authorization to write laws on such….?

            Oops for you, you anti-patent Trump.

        2. Google is also on the “we don’t want to be bothered by copyright laws, privacy laws, basically any laws that get in the way of maximizing our profits and controlling everything and anything we want to control.”

      2. The (y a w n) “so serious” meme is NOT a plank in any argument that would get you out of that selfsame cardboard box, Malcolm.

        Maybe you should try less of the empty ad hominem….

        I realize that things might be a tad more quiet around here, but your type of noise really is a bug and not a feature.

    2. COMPLETELY MEANINGLESS WITHOUT A DEFINITION OF “TECHNICAL”

      Completely meaningless without a definition of “completely”, “meaningless”, “without” and “definition”!!

      Yes, folks, the deep thinkers are having a sad. But we all have to listen to them because they don’t understand anything (patent lawz is teh hard!) and well, it’s frustrating being rich and not getting everything you want all the time.

      1. You do know that it was Greg that made the point about the lack of definition for “technical,” right (last I checked, he did not fit your screed of “being rich”….)

        Funny point (again) – you make the “being rich” argument and have yet to square the fact that the item you want PER SE ineligible is in fact the item most accessible to the NON rich: software.

        Typical silence from you on that point….

    3. Also from Greg:

      On the other hand, practitioners (i.e., people spending their own money within the patent system, something most flaw professors never do despite suggesting inane solutions that no one using the system, with their own money, would suggest), practitioners have offered definitions of “technology”. One of the better definitions was provided by Goldman Sachs in their amicus brief in Bilski, written with the folks at Accenture. Long story short, they defined “technology” as does the vast majority of science, engineering, and philosophy of science/engineering does – TECHNOLOGY IS APPLIED SCIENCE.

      But attackers of business method patents can’t use this definition, because to do so is to explicitly make large domains of business patentable because they are applied methods from the various sciences. Attackers would rather lie about law, semantics, science, engineering and business, then accept definitions well accepted by those skilled in these arts, but has a consequence they don’t like – a priori patentability of business methods.” (emphasis added)

      The “Oh Noes” G-g-g-grifters ‘cohorts'” meme aside, Malcolm once tried to use the “technology is applied science” line – that is until I showed him the direct and logical result of that use, as captured in Greg’s comment.

      He ran away and has never returned to attempt to define “technological” in a non-circular manner since.

      Malcolm, this is NOT about “fawning over Greg A.” as you dust-kickingly try to make it be. This is about your LACK of having the integrity of addressing (yes, addressing in an inte11ectually honest manner) these things, instead of your usual short script of blathering one-way street monologuing ad hominem.

  8. Paul: This is not really a “no opinion” situation, it is a sustaining of the CBM decision opinion.

    I agree. The title of this post is, at best, incorrect.

  9. “anon” The problem is that the Court wants things “fleshed out” by the lower courts, but will not provide enough guidance

    The Court has provided more than enough guidance.

    The problem is certain members of the patent bar resisting that guidance and pretending that it doesn’t exist.

    But I bet you have no idea what I’m referring to! I highly highly recommend listening to the oral arguments when these 101 cases are argued before the Federal Circuit. The judges are practically begging for input from the attorneys but, with few exceptions, the attorneys just shoot blanks and provide mealy-mouthed answers about what they’re not saying.

    My advice to practitioners is to start from first principles and work outwards. If you have a good foundation and use logic from that foundation, you’ll be in good shape. The worst approach is to assume that X or Y simply must be patentable (because some rich entitled people say so!) and then work backwards, ign0ring whatever gets in the way or creating a legal fiction to fill in the missing part. That’s the approach used by most of the hardcore detractors of subject matter eligibility jurisprudence and it’s never going to result in satisfaction (although it will allow some short-term skimming which is good enough for a lot of the players out there).

    1. The Court has provided more than enough guidance.

      NO ONE with any credibility whatsoever agrees with that statement.

      No one.

      1. NO ONE with any credibility whatsoever agrees with that statement

        So says the habitual l o ser with no credibility whatsoever.

        LOL!

        Love the fawning over Greg A, btw. He’s a real deep thinker, that one.

      2. The real whining, of course, comes when the Court provides the additional guidance that The Most Important People Ever so desperately pretend to crave.

  10. OT, but rather interesting in the basics being explored…

    (they are not 1’s or 0’s, but a super-imposition of both at the same time…

    But is that too “abstract” for those who currently cannot handle the fact that software is a manufacture and machine component….

    😉

    http://ww
    w.newswee
    k.com/quantum-computing-breakthrough-paves-way-ultra-powerful-machines-440444

    1. (you’all going to have re-concatenate that URl as the “filter” thinks it “d1rty talk” for some odd reason)

    2. Can you copyright a machine component? Let’s check 17 U.S. Code § 102:

      (1) literary works;
      (2) musical works, including any accompanying words;
      (3) dramatic works, including any accompanying music;
      (4) pantomimes and choreographic works;
      (5) pictorial, graphic, and sculptural works;
      (6) motion pictures and other audiovisual works;
      (7) sound recordings; and
      (8) architectural works.

      Nope, no “machine components” on that list. So, since you can copyright software, that means software can’t be a “machine component”.

      . . .

      Or, maybe, since expressions of math (including authored software) can be copyrighted . . .

      1. Classic misstep from Dobu – it is the various ASPECTS of something that fall into (or not) the various intellectual property protections.

        The plain fact is that a machine component CAN HAVE aspects that fit under more than one intellectual property regime – each for its preper purposes.

        To wit:
        Copyright for expressions
        Patents for utility.

        Also, straight expressions of math – how you seem to want to use that term, are NOT allowed to be copyrighted (do not try to move the goal posts from math to a math book, thanks)

        DOH ! (said in the best Homer Simpson tones)

      2. p.s. you forgot part (b):

        (b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

        Such is the domain of the patent protection aspects!

        (don’t quit your day job friend)

        1. What a hypocrite.

          It’s exactly the same argument you repeatedly use to “prove” (laughably) that “software isn’t math”.

          You can’t have it both ways, anon. If eligibility for copyright proves software isn’t math, it also proves software isn’t a machine component.

          1. There is nothing at all hypocritical about the fact that software has multiple aspects, and that these different aspects obtain different protections under the different IP laws.

            You (again) make the simple error of not recognizing this simple fact, and your “logic” in thinking that my statements are incongruent is simply wrong.

            Math is not protected under either of the two IP regimes discussed here, and since software is not math, your assertions are baseless. There simply is a difference that you are not comprehending between being math and using math.

            Your philosophy is again getting in your way.

            1. Here’s a helpful hint to remember: it is NOT an either/or item of software having one of patent or copyright protection – therefore “I” (and truthfully, you also err in trying to personalize this) CAN have it “both ways.”

              1. Your pomposity does nothing to lessen your hypocrisy.

                Authorship is protected by copyright – including, but not limited to, software and other mathematical writings.

                1. You still are missing the simple point that there is more than one aspect to software.

                  You also mistake my correcting your obvious error with “pomposity.”

                  That you don’t like being corrected does not mean that there is ANY hypocrisy on my end.

                  Grow up.

                2. PS – your glib “mathematical writings” had previously been deconstructed – the difference in a book of math and math and what aspects of a book of math that copyright may attach to. Hint: you cannot copyright math. Period.

                  There is limited (and thin) copyright in a book of math, but that copyright only goes to the layout expressions and NOT to the math itself.

                  It is hilarious that you somehow think that you have some (mysterious) “Ah-Ha” anon-is-caught view on this subject, and your continued persistence only highlights just how little you understand the law in this area.

  11. ? Fed. Cir. affirming of the CBM 101 rejection of the claims rendered the claims dead, so why is the favorable IPR 103 decision on the same claims not fully moot, with no reason to even consider it? IPRs cannot even consider 101 issues.
    This is not really a “no opinion” situation, it is a sustaining of the CBM decision opinion. [Both CBM and IPR decisions are usually fairly extensive, unlike many ex parte Board decisions.] There is no requirement for appellate courts to rehash opinions below that they decide not to disagree with.

    1. Yeah I don’t know what D is talking about or why he seems to be implying something is “wrong” or “wrongish” about this going on.

    2. I believe the Federal Circuit wants to avoid uncomfortable instances where the same claims are demonstrably nonobvious under 103 but ineligible under Alice. It’s one thing to summarily wipe out claims under 101 if you can tell yourself that they are “probably invalid” anyway. But at least some people are less comfortable explaining how a demonstrably nonobvious invention can lack an ‘inventive concept.’
      I’m not saying that was necessarily the case here. Just that the Federal Circuit went out of its way to deny the patentee an opportunity to discuss, in further proceedings, the tension between 103 and the extrastatutory Alice framework. If the court agreed with the outcome of the IPR, at least it could have affirmed that too under Rule 36.

  12. The Federal Circuit’s use of R.36 No Judgement opinions is on the rise even while wringing its hands over the USPTO’s failure to explain its judgments to institute AIA trials.

    There’s a difference between an appellate court doing this and a first-instance decisionmaker doing this.

    1. dcl, context, dcl, context.

      Institution decisions are not reviewable even for abuse of discretion if Congress provides that the institution decision not be reviewable. See e.g., Heckler v. Chaney, 470 US 821 – Supreme Court 1985.

      When the PTO decides that there is or is not a likelihood that a petitioner might be successful on one claim, that decision is unreviewable. Thus, the PTO does not need to explain why it either denied or instituted.

      I exclude from these remarks decisions under 315. These are final decisions and are reviewable IMHO despite Achates. MCM will raise this issue in its petition to the Supreme Court.

  13. The PTAB refuses to make any of its decisions precedential. The Federal Circuit decides appeals from the PTAB mostly in Rule 36 summary affirmances without opinion. *When* the Federal Circuit issues PTAB appeal opinions it mostly marks them nonprecedential. Meanwhile, the PTAB insists that its institution decisions are “unreviewable.” The only politically accountable person (the PTO Director) abdicated all her responsibility to the Board and refuses to articulate any agency policy on how the Board will handle the unfettered discretion on which it insists. Take all this together and you have a perfect situation where NO orderly administrative law can develop; nothing becomes precedential; no PTAB practices become firmly established; and nobody can have any expectations. It’s the definition of arbitrary agency action, and in the PTO’s case it’s institutionalized and deliberate. It is a shame that the Federal Circuit sits by, paralyzed and undecided.

      1. Not really. There are some good issues brought forth, but they are too run together to make it a “good highlight.”

        Some of the issues are Constituonal, some institutional, some truly political, some not.

    1. Actually, the PTAB has designated several of its opinions as precedential, but of course it is precedential only for themselves.
      The reviewability distinction between the declaration of an IPR and its final decision is due to a statute, and its interpretation by the Fed. Cir., not the PTAB, That statutory interpretation thus sticks unless and until that interpretation is reversed or limited to interlocutory appeals by the Sup. Ct. in Quozzo re it’s cert question number 2.
      I appreciate the dislike by many patent attorneys on this blog of Alice and other recent Sup. Ct. decisions, and the AIA, but getting more full or precedential opinions below is no remedy or cure.

      1. Paul,

        If you take note of what the Court itself said, your view of “no remedy or cure is just not correct.

        The problem is that the Court wants things “fleshed out” by the lower courts, but will not provide enough guidance, and is only to eager to pull a pointy-haired boss (Dilbert reference) NOT telling poor Dilbert what the “strategic plan” is, but hovers over Dilbert’s shoulder yelling “No, Not That” at every step.

      2. Paul, I agree that one the claims are held unpatentable in an IPR, they are effectively gone from the patent.

        Thus any argument that one is not denied a trial by jury by an IPR are just nonsense.

  14. I see nothing wrong here. I do not think the PTAB has to provide any explanation when it denies institution. It does not have to explain why it instituted, just the claims and grounds.

    That said, issues under 315 are a horse of difference color. Decisions to institute denying the patent owner 315 rights must be explained.

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