In re Smith (Fed. Cir. 2016)
Ray and Amanda Smith’s patent applications claims a new method of playing Blackjack. The new approach offers ability to bet on the occurrence of “natural 0” hands as well as other potential side bets. Claim 1 in particular requires a deck of ‘physical playing cards” that are shuffled and then dealt according to a defined pattern. Bets are then taken with the potential of more dealing and eventually all wagers are resolved.
In reviewing the application, the Examiner Layno (Games art unit 3711) rejected these card games patents as ineligible under Section 101 – noting that the claim is “an attempt to claim a new set of rules for playing a card game [and thus] qualifies as an abstract idea.” The Patent Trial & Appeal Board affirmed that ruling – holding that “independent claim 1 is directed to a set of rules for conducting a wagering game which . . . constitutes a patent-ineligible abstract idea.” The particular physical steps such as shuffling and dealing are conventional elements of card-gambling and therefore (according to the Board) insufficient to transform the claimed abstract idea into a patent eligible invention.[1]
On appeal, the Federal Circuit has affirmed – agreeing that the method of playing cards is an unpatentable abstract idea. The court held that a wagering game is roughly identical to fundamental economic practices that the Supreme Court held to be abstract ideas in Alice and Bilski. “Here, Applicants’ claimed ‘method of conducting a wagering game’ is drawn to an abstract idea much like Alice’s method of exchanging financial obligations and Bilski’s method of hedging risk.”[2] Following the Board’s lead, the appellate court then found that the “purely conventional steps” associated with the physical act of playing cards do not “supply a sufficiently inventive concept.” “Just as the recitation of computer implementation fell short in Alice, shuffling and dealing a standard deck of cards are ‘purely conventional’ activities.
In dicta, the court wrote that some card games will still be patent eligible – perhaps those claiming “a new or original deck of cards”
The applicant also asked the Federal Circuit to review the USPTO’s Interim Guidance on Patent Subject Matter Eligibility. The court, however, refused to pass any judgment on those guidelines because they were not directly binding rules upon either the examiner or the Board. The court’s conclusion makes sense here, but glosses over the fact that an examiner’s performance is judged according to whether that examiner follows the eligibility guidelines. This transforms the guidelines into de facto rules. Update: As “6” commented below and I have now confirmed, examiners are not required to follow the “eligibility guidelines” and are not formally reviewed using those guidelines as a measuring stick.
= = = = =
[1] The examiner did allow Smiths’ claim 21, that was directed to the same method with the exception that instead of being a ‘physical’ card game, it required a ‘video gaming system’ that used a processor (rather than real cards and a dealer) to accomplish the methodological approach.
[2] See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (finding offer-based price optimization abstract), cert. denied, 136 S. Ct. 701 (2015); Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1007–08 (Fed. Cir. 2014) (determining that methods of managing a game of bingo were abstract ideas).
I’ve cut-off comments for this post.
Could you please post some of the patent applications you’ve filed (or anyone else has filed) that are “non-junk”? I’d like to see those.
Fix this: 20 more defendants in Texas; all of us will pay more for whatever as a result, and how many hundreds more people will see the patent system as an illegitimate racket for the rest of their lives?
There are no teeth in Section 285 and no real disincentive for plaintiffs to stop shaking people down. For every one of these I post, how any “settlements” occurred that nobody will ever know of? Feel the innovation; see how it improves things for everyone…
US 5,845,070 A1
1. A method of authenticating a user’s confidential information and preserving the confidentiality against unauthorized use, said information being essential for conducting Internet transactions between a log-in and log-out session, comprising the steps of:
accessing the Internet by the user entering a first data set into a computer based controller to control modems and communication protocols;
establishing a data base containing confidential information subject to authentication with a user’s first data set;
submitting said first data set to a tracking and authentication control module requesting authentication of the user, said tracking and authentication control module including a data base containing user’s confidential information, an authentication server for authenticating said first data set and a certification server, said certification server containing validation data for authenticating and internet entity approved for conducting internet transaction;
comparing the user’s first data set input to the authentication server incident to accessing the internet with the I.D. and password in the data base and subject to a validating match;
issuing a second data set in real time by the authentication server subject to a validation match of the I.D. and password with the data in the database usable for the instant transaction;
submitting the second data set to the certification server upon the initiation of a transaction by the user;
consummating the transaction subject to validation of the second data set by tying the confidential information in the data base to the user whereby the confidential information is retained undisclosed in the data base.
Your “Wah, my Ends are important” still does not justify the means.
Why do you keep repeating this? This is an opinion, not fact.
I keep repeating it because it is germane and it IS a fact for this type of law.
You may not like it – but that is your opinion.
Also, this cuts to the chase as to why there are problems in the law (broken scoreboards), when people think that things are “opinion” when they are not, and cannot understand “what the big deal is.”
This is also known as not understanding the terrain of the conversation. Note that you “don’t have to be an attorney” to understand the terrain (and even attorneys can get this “wrong,” sometimes on purpose), but coming to a realization that the ends do not justify the means is CRITICAL to understanding what the issues really are in this legal terrain.
We will never abdicate. We will not go quietly into the night. We fight for our constitutional rights. We will fight for our dreams. And God so help us, we shall live them!
The above quote was written by one of anon’s bffs in defense of one of the junkiest patents ever written.
It’s still as funny as ever. The entitled class of rich whining attorneys: they never cease to amuse.
patentcat: Why do you keep repeating this?
Because he’s got nothing else.
Even non-lawyer me understands that the ends are, in fact, the more important part of a functioning civil justice system. Equity has been accepted as the superior of law for hundreds of years, and merely because we formally merged separate administration, the essence remains. To make a fetish of what amount to arbitrary means and dismiss certainly unjust ends is, IMO, unAmerican.
The American creed is to adapt, overcome, and always seek improvement in the practical world.
I’m not going to just sit here and let people badmouth the United States of America.
I’m looking for something that’s “non junk” according to MM. He supposedly files such patents/applications all the time, yet I’ve never seen him say what those are.
So, I have no comment on the claim you posted (unless you’re saying that this is a “non junk” patent according to MM).
How about you post some of the cases you’ve filed that have been rejected under Alice but you don’t think should have been? Or some of the cases you feel have been unfairly rejected?
Oh, wait, nobody is going to reveal themselves on the interwebs.
I’m not asking for MM to post his own. I’m asking him to post ANY patents he thinks are good. Just one. I honestly have no idea what he thinks is a good patent, but he seems to think he knows.
And I don’t have a problem with the modern patent system, other than the SC seems to be reading “new and useful” out of the law. For instance, under Alice most or all of these patents (for arithmetic coding) would be invalid:
link to en.wikipedia.org
Arithmetic coding is important. Assuming it’s new and useful, why does Alice now bar this?
Malcolm calling someone else a hypocrite…?
(and the ten year title is ALL yours, Malcolm)
As to your “dredging” meme, as I have told you, the means to even honorable ends really do matter.
You seem to not want to discuss the actual means, and only want to preach your desired ends.
You want to talk about “knuckle-dragging”….?
There’s only one person who uses zeros in place of the letter “o” on this page. Why would someone use one anonymous identity to lay cover for his other anonymous identity? It’s comic. An anonymous stranger feels the need to use _two_ anonymous identities in the same comments section. Why? Bizarre. Maybe they have a lot of emotional investment to protect.
I’ve been participating in Internet discussions since the late 80s. Since at least then, and forever onward, people with behaviors that are not socially acceptable gravitate to this kind of forum. It’s the perfect outlet for embarrassing and shameful behavior. Mostly it’s funny, what people reveal about themselves through anonymity, but sometimes it’s ugli and creepy.
Because some words prevent posting? And that seems like the best way to pass the filter without inserting a bunch of random capitalized letters with the vowels removed?
But oh yeah, I’m def MM or whatever. You caught me. Good work, Inspector Clouseau.
But wait! MM and anon both use spaces to bypass the filter!
They’re the same person!!! ZOMG!
Break out your tinfoil hats, everyone!
There’s only one person who uses zeros in place of the letter “o” on this page.
LOLOLOLOLOLOLOLOLOLOLOLOL
I’m not defending/cheerleading anyone. I disagree with MM on plenty.
Apparently being deliberately obtuse is so much better than calling names for establishing a healthy ecosystem or whatever you call it.
“disagree with MM on plenty.”
That’s funny, as I cannot recall even one single time that you have disagreed with Malcolm and taken him to task.
Not once.
(Doing so in your mind, and then cheerleading in the board just sends a different message)
There is no “being deliberately obtuse” on my end – to wit, look who did (yet another) “look at me, look at me” by breaking the comment string and posting on top at post 26.
Wake up son.
To those of you who are interested in reading the comments on this Patently-O entry, or any other entry for that matter, below are representative comments from just one poster. These are examples of what Patently-O considers acceptable discourse on “America’s leading patent law source”.
But before taking a look, think about the Preamble to Maryland’s Rules of Professional Conduct, which, like most ethics rules, mention “A lawyer should demonstrate respect for the legal system and for those who serve it, including judges, other lawyers and public officials.” How do the the lawyer’s comments below, made to other lawyers, measure up?
MM: “Speaking of coke, RG, did you happen to stumble across some? I’m having quite a bit of difficulty following your ravings here.”
MM: “Except that nobody is saying that so you are arguing with your mirror.”
MM: “please try harder to keep up. Here it is in even plainer terms since you somehow missed it the first time:”
MM: “Again we have to ask: are these people ign0rant, dishonest or both?”
MM: “Does an ign0ramus low-rent attorney like you dissemble further and move the goalposts when he’s caught pitching pure b.s.? Of course you do.”
MM: “What a pack of rich entitled cl0wns.”
MM: “you are definitely l y ing to your clients.”
MM: “So now we have at least four toxic lying f00ls in the thread.”
MM: “says the bigtime l0ser who has been wrong about pretty much everything since forever”
MM: “I’m not going to waste my time with a third grader. Grow up, man.”
MM: “There’s way more to eligibility than “new and useful steps”, as every educated patent attorney knows.”
MM: ” Translation: “I’m a braindead g00fball who will do and say anything.””
MM: “Then you should apologize to your clients because you’re incompetent.”
MM: “so here’s some friendly advice: get over yourself”
MM: “Try harder to keep up. I know this is a difficult subject for you.”
MM: “You lost, bigtime, just like Scalia and his fellow bigots lost, bigtime. Now try shutting your trap and stop making an a s s out of yourself. Good luck”
The fact of the matter is that this is exactly what Malcolm has been doing – for ten years solid now.
(and he his proud of it)
You might actually have a point, HoPB, if all ideas were, in fact, equal.
But they’re not.
Pretending otherwise is a quick ticket to the shirthole.
There’s some reasonable people out there who can actually follow a logical conversation about the law and have a productive intelligible conversation about it, even if they disagree with the conclusions. RG is one of those people (you’ll note that he’s not crying about my quip and we had an extensive discussion).
Les and Night Writer and “anon” are simply incapable of having a rational discussion about subject matter eligibility and if you can’t see that, well, you might as well join their club. Oh wait: you already did.
Here’s an itty bitty question for you:
(1) why on earth, in 2016, should someone take seriously any patent lawyer who continues to discuss subject matter eligibility as if Bilski, Prometheus and Alice were decided oppositely from the way they were actually decided?
(2) why on earth, in 2016, should anyone take seriously any patent lawyer who argues that “everything is ineligible under under Mayo” when Mayo is almost four years old, the PTO is presently granting three hundred thousand patents a year, and both the PTO/courts regularly uphold the validity/eligibility of well-drafted claims to perfectly acceptable inventions that everyone agrees deserves to be patented?
Serious questions.
Bear in mind that the self-entitled people in (1) and (2) invariably consider themselves the most civilized people on the planet, in spite of their incredibly cruddy arguments. They relentlessly slag on their critics as “communists” (or worse) and they are just so sure that everyone who disagrees with them is paid for by their “enemies” (usually ‘Big Corp’ — those bad ol’ companies who copy everything).
So answer the questions I asked. You’re super serious so I know you’ll have awesome answers.
Malcolm’s who knows no bounds and he clearly thinks that “rules” don’t apply to him.
It is humorous to have to point this out as to why I will follow only the rules that I see enforced, and Malcolm skates free and clear of any “ecosystem” rules wantonly (and yes, has done so for the longest of ANY poster – he is quite proud of his Decade of Decadence).
Of course, this was explained in great detail (on these boards, as I refused to have “back door” talks off the record) some four years ago in a previous “let’s get along and have a nice ecosystem” attempt.
Instead, we have Echoes such as Ned, MaxDrei, DanH, and patentcat cheerleading Malcolm on – and the moderator asleep at the switch.
“Go figure.”
You kind of gloss over the fact that the scoreboard is broken (and all of the discussion points thereof).
“Go figure.”
Here we have another thread that will hit 300 comments, with many of the Usual Suspects arguing their positions.
-MM is philosophically opposed to patents on any information/algos regardless of utility, novelty, non-obviousness, or complete description. He knows that abused patents on these things have cost too many people far too much money. He is feeling less inhibited than ever in being dismissive /aggressive.
– anon is sure everyone is wrong about everything, except himself, the reanimated ghost of Judge Rich, and the sitting congress of 1952. He continues to make up his own law and doctrine as needed to “prove” he is right and decimate the opposition.
-NWPA is sure that patents are the sole reason the USA has a vibrant software industry, and there is some scientific law regarding the conservation of information, or something…
– Random observes that the CAFC is hopelessly muddled on how to apply Alice and how to handle information inventions generally.
-6 is cynically aware of how things actually happen at the USPTO
-Ned thinks if we just embraced Hotel Security, information patents would all clear themselves right up and we could cull the statutory from the non-statutory with ease.
Les and Patent Bob et al. don’t have positions exactly, but they have questions. Lots and lots of questions. They appear to be questions that lead to more patents for more “inventions”.
I believe I am the only regular here who is not a lawyer or examiner, so my view is from the actual trenches of small tech (i.e. “job creator”) who has experienced litigation.
I have a firm position on Alice/101 and I have been stating it on various threads. I’m going to summarize it in this comment and link to an SSRN-posted paper I wrote that covers it in extensive detail. I’ll likely paste it into future threads as-is, so forgive me Usual Suspects for being repetitive in order to catch the attention of lurkers from time to time.
In a nutshell: I disagree with MM that new, useful, fully described and non-obvious information/algos should not be eligible as “processes” under Section 101 merely because they are intangible. I don’t believe that “abstract” for legal purposes is limited to intangibility, although all abstractions are intangible.
I believe that Alice is a flawed decision and that the core of the flaw is the fact that “abstract ideas” for legal purposes have two distinct, unrelated meanings. The first meaning affects eligibility, and the second meaning affects patentability, and the bifurcation is inherent because the patent act itself is bifurcated between eligibility and patentability.
At eligibility, abstraction must be intrinsic to the invention, and cannot mean merely intangible. Looking at the root of the word and it’s meaning in the world, I conclude that an abstract idea is information consumed by a human being. Therefore, if the result of a process is information, and the utility of the information arises in human consumption, the invention should not be eligible for a patent.
At patentibility, and abstract idea is an intangible expression of ideas in claims that may or may not be a patentable inventions based on a combination of lack of utility, lack of novelty, ability of one skilled in the art to come up with the idea, or failure to describe the idea with enough detail to enable an invention. As of now, eligibility is seen as a threshold issue, but in a proper procedure, a baseline of patentibility should also be a threshold issue, and a matter of law construed just as the terms of a claim are, ideally at the Markman stage.
The link to the paper is here: link to papers.ssrn.com
In the case at issue in this thread, the reason the invention is abstract is that it consists of information consumed by a human being (the rules of the game). The CAFC, not having the tools at hand that I suggest, muddles its way around on claim 21, which is directed to the same method, with the exception that instead of being a ‘physical’ card game, it required a ‘video gaming system’ that used a processor rather than real cards and a dealer to accomplish the methodological approach. In that case, the invention would be eligible in my view, since the video machine is consuming the information comprising the rules, but abstract at patentibility as an obvious idea- being within the easy ability of one skilled in the art of creating card games to generate.
The “ease to do” – but only with hindsight – is yet another flaw cropping up.
Of course, your characterization of me is incorrect, as I have made up no law – all law I reference is readily available. Funny too, as you yourself merely want to apply your own admitted “made up” law (except you refuse to bother with understanding the terrain upon which you wish to do battle).
KSR is the law, my point makes itself anon. You don’t like KSR, so you pretend it never happened.
Hindsight or foresight; KSR says that if you don’t get unexpected results from a combination of known elements, you don’t have an invention.
Not at all – your version here is NOT KSR (in case you wanted to be aware of the terrain).
“Of course, your characterization of me is incorrect, as I have made up no law”
After Martin calls anon out for thinking everyone is wrong, anon states that Martin is wrong (also).
Lulz, anon, never stop being ocpd. It’s almost like a daily gift of comedy once you see it.
“You’re wrong, and you’re wrong, and you’re wrong and you’re wrong, and they’re wrong and everybody’s wrong! And anybody that points out that I’m stating that everyone is wrong is also wrong!” – anon
I do not think everyone is wrong.
I do think that certain people are almost always wrong. I explain why and provide a path to NOT being wrong – and I am not timid about telling people that they are wrong when they insist on repeating themselves in being wrong.
Your “meds/ill” line is C R P – and you know it.
“I do think that certain people are almost always wrong”
Yea I know, you don’t think you yourself is wrong.
“I explain why and provide a path to NOT being wrong”
Yeah, I know, that’s the socially controlling part of OCPD.
Hilarious, you yourself state unequivocally that you’re doing exactly what people with OCPD do, but you’re all, “I’m not OCPD, you’re wrong, you’re wrong, here let me make you a list of why I’m not OCPD”. Lol.
There is no “social control” 6.
If anything, it is you that seeks to control my posting. Somehow you seek to discredit what I post, wanting to make my posts to be something that they are not, and thus employ ad hominem instead of addressing directly the things that I post.
Such a move is simply C R P.
“There is no “social control” 6.”
I know, because you’re bad at it. You’re OCPD.
“If anything,”
If anything, if anything, if anything wah wah wah. Jesus, just go to the doctor dude.
That is not a responsive reply 6.
Of course, you already knew that.
Maybe you want to stop your games (they do not f001 anyone)
MS: In a nutshell: I disagree with MM that new, useful, fully described and non-obvious information/algos should not be eligible as “processes” under Section 101 merely because they are intangible.
The “lack of intangibility” per se certainly isn’t the only justification for my position on info/algos, Martin (although it is certainly among the reasons). ‘Nuff said for now.
Enough said…?
How about your on the record statements that ALL software is PER SE ineligible….?
…”is feeling less inhibited than ever in being dismissive/aggressive”
Wrong.
Malcolm has been this way for a solid decade now – as was noted on the most recent “ecosystem” thread.
The fact that his antics contain nothing new should not be lost on anyone actually wanting a place for dialogue.
“Wrong.”
It’s like anon is writing solely to amuse me by stating people are wrong.
Not sure why you are amused when people insist on being wrong (and then you want to point at me, that’s just odd)
“Not sure why you are amused when people insist on being wrong ”
I’m not amused by their being wrong jack ar se, I’m amused by you always posting that they are.
So….
Do you find the propaganda move of repeating a L I E often enough that it garners some semblance of truth (the items that I respond to) “amusing?
Wake up son.
MS: The CAFC, not having the tools at hand that I suggest, muddles its way around on claim 21
No.
In fact, the CAFC said nothing about claim 21 because the claim was not before the CAFC (applicants don’t typically appeal the PTO’s decision to grant the claims applicants asked for!).
Based on the oral argument (not to mention plenty of solid case law, including this decision), we can all be 99% assured that claim 21 would never survive a motion to dismiss on the pleadings or any other well-argued effort to tank it.
I didn’t hear the argument, instead depending on Prof. Crouch’s footnote [1].
I’m listening to TC Heartland right now. So far, Texas is winning.
Now is that all you get from my posts. No wonder your paper was such a mess.
I don’t care what you say about my paper- just keep saying it. Pile up the views is the name of the game on the Intertubes.
6, it’s almost a guilty pleasure with anon….Can I be wrong about that?
“I don’t care what you say about my paper- just keep saying it. Pile up the views is the name of the game on the Intertubes.”
Lulz – Yay Ec(h)osystem !
“6, it’s almost a guilty pleasure with anon….Can I be wrong about that?”
I know right?
Hey you link to 0.gravatar.com
Where is my shout out?!
youwasntthere?
Just for the record:
Arguably questions (mostly rhetorical) : 15.3.2, 15.3.2.1.1, 1.2.1.1, 17, 17.1.1
Insightful Analysis 21.5
Answers to Questions: 15.2.1, 15.3.1.1.1, 15.3.1.1.1.1.1, 3.2.1, 3.2.1.1.2, 1.1.2.1
Concluding that the current state of subject matter eligibility precludes new drugs because a new drug starts with an abstract idea is not insightful Les- rather it’s a scare tactic based on a slippery slope argument that reasonable jurists would never, ever accommodate.
Try going in and arguing that a patent uses protons and electrons and thus is an old combination- you will be laughed out of court and laughed off this page…I’d love to see someone try it someday.
Meanwhile, back in Texas, more prices for more stuff we buy just went up, for a mid 8 million patent number that is the purest of pure junk.
For an aperitif, see a nice design patent that is 100% functional – one of dozens of cases filed since Apple v. Samsung (as predicted), and which does not look good for cert this term. Anyone care to wonder what kind of design patent activity is going on at the office right now?
US 8,429,005
1. A method for providing to a user an interactive and electronic replication of at least a portion of a corresponding physical publication page, comprising:
associating a page number of a physical publication page with an interactive and electronic replication of at least a portion of a physical publication page;
the physical publication page having at least two different products appearing on the physical publication page;
the page number appearing on the physical publication page along with the at least two different products;
the page number and the two different products being visible on the physical publication page;
receiving by a host computer comprising at least one computer processor an input representing the page number;
providing from the host computer the interactive and electronic replication of the at least a portion of the physical publication page in response to receiving the input representing the page number;
the interactive and electronic replication of the at least a portion of the physical publication page including duplications of the appearances of the at least two different products;
the duplications of the appearances of the at least two different products being exact reproductions of the appearances of the at least two different products contained within the physical publication page;
the interactive and electronic replication enabling the user to obtain additional information on the at least two different products contained within the interactive and electronic replication; and
wherein the user is able to see the interactive and electronic replication and the at least two different products in the physical publication page and can obtain the additional information on the at least two different products contained within the interactive and electronic replication of the at least a portion of the physical publication page by receiving the interactive and electronic replication.
USD535388S1 for the dessert: an aerodynamic fan blade- completely unadorned. Nice little racket for everyone involved, except the marks of course….
You are misplacing both the laughing and the criticism.
Open your eyes to the necessary implications that arise from the “logic” that is being used by the Anti’s.
(Yes, that logic is indeed abysmal, but your barn aimed at Les is simply aimed at the wrong target)
“Concluding that the current state of subject matter eligibility precludes new drugs because a new drug starts with an abstract idea is not insightful”
I came to no such conclusion Martin. My remarks were :”directed to” METHODS of making drugs…
A method that results in new composition of matter is not going to be found abstract via Alice- it’s a distinction without a difference because nobody is going to claim a method without the new composition.
You do realize that Alice was the opposite, right (both sides stated that some claims were to a non-method category), eh?
I wasn’t commenting on Alice. I was commenting on the reasoning applied in the subject card game case, which requires new hardware (cards) for the method to be allowable.
Quoted from the article:
“the appellate court then found that the “purely conventional steps” associated with the physical act of playing cards do not “supply a sufficiently inventive concept.” “Just as the recitation of computer implementation fell short in Alice, shuffling and dealing a standard deck of cards are ‘purely conventional’ activities.”
So, in any method of making a drug, the steps are going to be purely conventional, measuring, mixing, heating, stirring, cooling etc…
Your argument that the courts will only apply the ridiculous rulings in Alice to patents you don’t like is no comfort.
“Try going in and arguing that a patent uses protons and electrons and thus is an old combination- you will be laughed out of court and laughed off this page…I’d love to see someone try it someday. ”
MM argues that using an old computer in a method makes the method ineligible, 5 times a day.
Why are chemical reaction vessels any different? If the method is implemented using old reaction vessels it must not be patentable (according to the logic of MM).
Personally, I think the issues are complex. There are claims that probably should not be issued. On the other hand, the current SC guidance has mucked things up enough that some things that should be patentable may not be.
You also have to realize is that you can pontificate on what you believe the rules should be. As patent professionals (prosecutors/litigators), we cannot. We have to live with whatever the rules are. This is particularly true, as the Examiners have a difficult time with law, and the SC does not help this with their unreadable, opaque “guidance”. I was just speaking with someone who said the Examiners cannot articulate what the standard is for claims to be patentable under Alice and its progeny. The sad fact is that I cannot either. So, when I counsel my clients about claims and 35 USC 101, I basically have to say that I have no clue — except in rare instances — whether claims are patentable under 35 USC 101. We’ll have to wait until litigation. And that’s not a comfortable position to be in, and was not the position before Alice, when “concrete, useful, and tangible” or “machine or transformation” at least made sense.
I admit you are stating a position, and I agree mostly with it.
MM is correct that you can broadly predict which claims may be subject to an Alice challenge. However, the test is entirely random from there, including the auspices under which it will even be applied.
“I was just speaking with someone who said the Examiners cannot articulate what the standard is for claims to be patentable under Alice and its progeny.”
If you guys cannot articulate “Make sure the applicant is not trying to patent any of the judicial exceptions, or for all practical purposes be trying to do so” then all of you are bad at your job.
6, Standard? What standard?
The central vice in Bilksi’s “Abstract” is its complete lack of any standards because the court neither explained what “abstract” was, nor explained why the claims in that case were abstract. Ever since then, courts have been determining things are abstract only by analogy.
However, some of us believe that the problem with the Bilski claims is exactly that they failed the MOT, and where fact business methods. Alice helped quite a bit because it identified that at least the problem with the Bilski claims was not because they failed to recite generically the use of a general-purpose digital computer. That question had been left open by the court in the Bilski case. It was resolved with Alice.
An application that transforms the abstract idea into a inventive application has to be some innovation in the areas that we would otherwise appreciate as being technological. This would include of course machines, manufactures, compositions and processes that otherwise pass the MOT. Beyond that the courts have not gone.
As I have said before, by not siding with Stevens, Scalia may have made the biggest mistake of his legal career. He was always in favor of simple clear rules because the law is about rules and not about the balancing of factors. Equity is about balancing of factors.
But Bilski really took the cake in terms of vagueness.
Ned,
There was NOTHING vague about the treatment of MoT in Bilski – that was one of the items that was 9-0.
Forever and a day since then, you have been trying to resurrect MoT – all the while simply ignoring what the Court actually stated about it.
And let me remind you (yet again), that Stevens having the majority would have been a disaster for separation of powers. Stevens would have had to nullify the direct words of Congress to get what he wanted.
Over lunch I listened to the oral argument in this case (see here: link to cafc.uscourts.gov) and, according to the attorney for the PTO (shortest rebttal ever), the PTO has been nixing claims to “new” games using a standard card deck since shortly after Bilski was decided (according to the PTO’s attorney, the office had argued against the eligibility of such claims in its amicus briefing).
Interestingly, the bitter and righteous attorney (Mark Litman) who argued this case admits during the argument to writing several patents on standard deck card games himself! Indeed, he is the named inventor on multiple gaming and gaming-related applications (see here: link to patents.justia.com).
Totally shocking, I know! Who could have predicted?
Fyi, there’s a nice write-up online describing some of Litman’s more esoteric interests: goo.gl/Ui0JZg
Lol. Who would have thought?
Man I almost feel bad for ol Mr. Litman, 50 years of prosecution and now in his twilight the patent system is just now coming out of the mini-dark ages that occurred. I also liked his argument about the shuffling (lol). I also liked the bit about using a “thermonuclear” device as a mouse-trap. “It’ll kill the mice, but it’s not going to be socially useful”. Lol. This guy. If he’s not too busy being retired soon he should definitely go into comedy.
One other thing that’s rather odd is how he doesn’t seem to think other people “get” what he’s arguing, so he repeats the same thing 100 different ways. We all get it old timer.
There is indeed AU’s that do playing card games though, that much I do know.
Judges: “I want hear about this playing card group” lol.
His clients should refuse to pay whatever bill he sends them. That was one of the worst oral arguments I’ve ever heard. And that’s no hyperbole. Shameful.
At 11 below I discuss why I believe the Fed Cir botched the analysis here, but now I’d like to go the other route and consider the precedent this case sets. Here’s what the fed cir says:
“We could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice.”
So here is their logic:
1) Wagering is an abstract idea
2) When conventional wagering implements are used (i.e. a conventional 52 card deck that has conventionally been used for wagering), presumably novel method steps which change the shuffling/dealing of cards is always insufficient to overcome Alice Step Two.
3) Conversely, a product claim to novel wagering implements can be eligible (“a new or original deck of cards”)
4) And the inclusion of a novel product in a novel method confers the method with eligibility (“claims directed to conducting a game…”)
The reading of 3 and 4 together is that the method is essentially borrowing or piggybacking on the eligibility of the product to render itself eligible. I agree that this could happen. For example, in Alice the court had to take notice of the fact that generic computers are conventional. Thus if the Alice patentee *had invented the computer* then the computer would imbue its eligibility into the method of performing risk hedging on it.
But the reasoning of 2 suggests that *the method cannot obtain eligibility in any other manner other than by reference to the novel product*.
So for example – Computers exist. Google Maps, which is an application that resolving driving directions and estimates arrival time, exists as do many other similar applications. Google Maps uses an algorithm for determining which route to suggest and how long the route will take. Other algorithms certainly exist. In fact, better algorithms certainly exist, because Google Maps does not take into account every variable that may influence your travel. According to the logic of this claim, “Route Resolution” is an abstract idea. A computer is a conventionally used implement to perform route resolution. Therefore, by 2-3-4, no other algorithms for route resolution are eligible (algorithms are, after all, nothing more than a ruleset) for patenting on a computer, because the novelty in the method steps does not confer eligiblility and the computer is conventional and does not confer eligibility.
Conversely, if one invents a new processor, and decides to package their route resolution *into a method with the same effective filing date as the new processor* the algorithm becomes eligible because it piggybacks off the eligible processor. Also conversely, if one does not claim the algorithm in software but instead claims a physical circuit or processor for the software, the claim is eligible.
The conclusion, of course, is that software is generally never eligible. So long as anyone in the art has performed some calculation that shares any abstract idea with the algorithm you have, the overlapping abstraction renders the modified algorithm ineligible. Conversely, if the same thing is done in hardware form, it is generally eligible, as it is a novel structure.
This appears to be the very distinction Alice was taken to correct.
I am, of course, relieved to know that because I am in networking and because I never have new hardware (as opposed to conventional hardware with new software) in my claims I never need allow anything again.
But its not just me – we can shut down anything where the claim is solely directed to a novel method uncoupled from novel machinery. So all of the arts that are technique based can largely be shut off right now.
Let’s say I discover a method of removing impurities from gold. “Purification” is an abstract idea. Impure gold (the subject of the technique) is preexistent. Other methods (which may or may not be as good) of removing impurities exist. So unless I can show that my method achieves a different resulting level of impurities in the gold, my method is ineligible no matter how much more efficient, cheaper, easier it may be than currently used methods, right? How is the command to generate a novel deck before eligibility can be found any different than a command to generate a novel level of purity before eligibility can be found?
I just want to know how far I can take this. The logic seems to suggest I should be issuing an abstract idea to every application before me so long as the sole distinction is in the algorithm performed by a processor. Is that what I should do?