by Dennis Crouch
Enfish, LLC v. Microsoft Corp (Fed. Cir. 2016)
In a rare win for a software patentee, the Federal Circuit has rejected a lower court ruling that Enfish’s “self-referential” database software and data-structure invention is ineligible under 35 U.S.C. § 101 as effectively an abstract idea.[1] The apparent saving-grace of the claims here is that the improvement is directed to the database operation and is not tied to the business improvement or economic activity.
In this case . . . the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.
Accordingly, we find that the claims at issue in this appeal are not directed to an abstract idea within the meaning of Alice. Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table.
. . . [W]e are not faced with a situation where general-purpose computer components are added post-hoc to a fundamental economic practice or mathematical equation. Rather, the claims are directed to a specific implementation of a solution to a problem in the software arts.
However, the court clear here that Software Claims are patent eligible (as long as they are not abstract):
[We do not] think that claims directed to software … are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis. Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.
I think it makes sense to begin with a look at the claims at issue for a moment.
In thinking through abstract idea step-one, the court considered Microsoft’s proposal that the claims are directed to “the concepts of organizing data into a logical table with identified columns and rows where one or more rows are used to store an index or information defining columns.” Microsoft’s statement here is absolutely true, but the court rejects it as too “high level of abstraction” that is “untethered from the language of the claims.” If the court followed that approach, it would render the step-one all but meaningless.
Now, all of this talk about the improved computer operation might make you think that the claims are rather complex. They are not. Claim 17 of the ‘604 Patent, for instance simply requires a means for creating and indexing a self-referential logical table.
17. A data storage and retrieval system for a computer memory, comprising:
means for configuring said memory according to a logical table, said logical table including: a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information; a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and
means for indexing data stored in said table.
In considering the claim, the court found that “the self-referential table recited in the claims … is a specific type of data structure designed to improve the way a computer stores and retrieves data in memory.” As such, it is not an abstract idea.
= = =
[1] At issue are U.S. Patent 6,151,604 (claims 17, 31, and 32) and U.S. Patent 6,163,775 (claims 31 and 32). Both patents claim priority to a 1995 back when Enfish was a vibrant dotcom.
And in the blink of an eye, the CAFC finds another junky patent floating in the wake of Enfish:
TLI Communications LLC vs. A Zillion Companies Who Actually Make Stuff
Panel: Dyk, Schall, Hughes
Here’s the junk claim:
17. A method for recording and administering digital images, comprising the steps of:
recording images using a digital pick up unit in a telephone unit,
storing the images recorded by the digital pick up unit in a digital form as digital images,
transmitting data including at least the digital images and classification information to a server, wherein said classification information is prescribable by a user of the telephone unit for allocation to the digital images,
receiving the data by the server,
extracting classification information which characterizes the digital images from the received data, and
storing the digital images in the server, said step of storing taking into consideration the classification information.
Got that? It’s the storage of images and some information about the images “offline.” Because sometimes the local memory is limited. And nobody knew that until these super smart “innoavators” filed their patent. Except not.
From the case (applying Enfish — surely the only reason this wasn’t a simple Rule 36 decision because it wasn’t a close call):
The specification does not describe a new telephone, a new server, or a new physical combination of the two [<— imagine that! focusing on the physical arrangement]. The specification fails to provide any technical details for the tangible components, but instead predominately describes the system and methods in purely functional terms.…. Put differently, the telephone unit itself is merely a conduit for the abstract idea of classifying an image and storing the image based on its classification. Indeed, the specification notes that it “is known” that “cellular telephones may be utilized for image transmission,” id. at col. 1 ll. 31–34, and existing telephone systems could transmit pictures, audio, and motion pictures and also had “graphical annotation capability,” … vague, functional descriptions of server components are insufficient to transform the abstract idea into a patent-eligible invention
Much, much more to come ….
As Night has it that I deliberately misrepresent the EPO line on software patents, I thought I would set out some basics, to make it easy for Night to pinpoint where the misrepresentation occurs.
1. EPC Art 52 sets out the stuff that is not eligible. It includes the presentation of information, programs for computers and methods of playing games or doing business.
2. GATT TRIPS prescribes that patents shall be available in all fields of technology. For the EPO, what the excluded items have in common is that they lack “technical character”.
3. But Art 52 is an exclusion to be construed narrowly. Only the excluded stuff “as such” is ineligible. A computer or a data carrier does have technical character so if you claim that you escape the exclusion.
4. Not that it avails you much, because you still have to get past the EPC’s equivalent of 102 and 103, and for the EPO the only sort of non-obviousness that counts is technological non-obviousness.
5. What does the EPO mean by that? It means that unless you can present your claim as a combination of technical features that solves in a non-obvious way an objective technical problem, you haven’t established the requisite inventive step.
6. The software that programs a computer might or might not solve a problem in technology. So a claim to a signal or a data carrier might or might not be allowable, depending on what the carried program achieves.
7. So, the touchstone isn’t “abstract” or “something more”. Rather, the question is whether the claimed subject matter is a new combination of technical features that solves a problem in technology in a non-obvious way.
8. Who would dispute that the EPO is TRIPS-compliant. Who will assert that the USA is still TRIPS-compliant?
Interesting MaxDrei.
The “per se and “as such” are effectively neutered by any scriviner worth their salt (I would have made your point 3 a sub-bullet under point 1 directly, but really not worth quibbling about).
Which then reduces to “technical.”
On that point, let’s be clear about the differences in the law as written by the different sovereigns, and (politely) remind people that here in the States, our sovereign has purposefully chosen the more broad Useful Arts rather than any more limited “Technical Arts.”***
The EPO “equivalence” to our 102/103 then – keeping in mind the broader scope of the US sovereign’s choice of Useful Arts is not a true “equivalence. It would be a clear error of law to hold otherwise (let’s not mix apples and oranges at any level of a sovereign to sovereign comparison).
To your point 6, our US Sovereign ALREADY distinguishes (incorrectly in my opinion, but I do recognize the controlling law) claims to signals (See In re Nuitjen). If you have a “beef” about disparity, this “signals” disparity can be clearly seen to be a different (or at least a sub) topic, which would draw a different case into the cross-hairs.
The question then on whether the US is (not still – but rather now in addition to Nuitjen) TRIPS-compliant can – and should – be broken into the different segments of non-compliance.
I do not think that you will find Night Writer disagreeing with you if you were to postulate that some of our more recent Court (and court) decisions exhibit a “broken scoreboard” result.
Perhaps, given your long standing and widespread “influence” on the EPO side of the waters, you can persuade some of your clients to take a closer look at the apparent non-compliance with our broken score board, results driven decisions, and put pressure (through the TRIPS mechanisms) to fix the broken scoreboards.
.
***we still have far too many people on these boards being purposefully deceptive as to this difference. Be that as it may, those who truly understand our US law, readily acknowledge and do not try to obfuscate about this difference in order to reach any of a desired philosophical Ends.
Interesting, you say, anon. In what way? Is there something new in what I wrote? Isn’t it the same old same old needle stuck in the groove stuff you have been reading from me for years and years? And if it is, where then is the deliberate misrepresentation that Night Writer suddenly thinks he has spotted and for which utterance he calls for me to be banned from this blog? Is it apparent also to you? You and Night usually understand each other so well.
Can you see it too? If so, do tell because, so far, Night Writer, having uttered his wild and vituperative accusation, has signally failed to substantiate it. If he carries on like that, perhaps he’s the one who should be banned?
“In what way?”
Read the rest of my post.
“Is there something new…?”
Yes – as I commented on in the rest of my post.
“Isn’t it the same old same old…?”
Not the new part that I comment on in the rest of my post. Some of it is though – your penchant for wanting to not recognize the difference in choices that respective sovereigns have made, for example.
“You were just given the definiton of abstract, by MDT. Is your memory that short?”
I will let Night Writer identify what he thinks he sees as being “intentionally misrepresenting.” The comment I replied to has its errors – but as I also mention, you do qualify the blanket statement of your point 1 with your point 3 (and I also draw your attention to your other – repeated in form – errors).
What I CAN see – and what I have shared with you directly is that you are a relatively low intelligent person constantly shilling for the EPO way – or at least your version of what the EPO way is. You do this regardless of the number of times that I remind you of the differences in sovereign law. You do this is in a “throw the sAme CR@P against the wall manner that is beyond b0ring and tedious, showing yourself to be a person unwilling to learn.
I also see you as someone who refuses to fully engage on items brought to the table of discussion, and then – without that engagement – will repeat your comments anew on some next thread, as if the comments were never made. THAT is a blight that should be stamped out. One does not have to be banned for that blight, but the drive-by monologue style can certainly be contained by the editor of this blog – if the editor truly wanted a better “ec(h)osystem.
Maybe Night sees that too – I will let him comment on that.
Well that was rather odd – the cut and past of ““You were just given the definiton of abstract, by MDT. Is your memory that short?””
should have been:
“where then is the deliberate misrepresentation that Night Writer suddenly thinks he has spotted“
Rinse. Repeat.
Paul Michel, former Chief Judge of the CAFC:
After reading Enfish LLC, I conclude that, although labouring mightily to give clarity and administrability to Mayo/Alice, the court has failed to impart meaningful predictability to the vast expanse of computer or software-related patent claims. I estimate that hundreds of thousands of issued patents remain under a cloud of possible invalidity. That is even worse than being plainly valid or plainly invalid. The problem is that patent practitioners, examiners, judges, PTAB members and others charged with adjudicating eligibility or advising business executives cannot do so with any confidence at all.
That is not the fault of the Federal Circuit, but of the Supreme Court which has “legislated” a two-step inquiry that is fundamentally flawed. At step 1, one must decide what a claim is “directed to”, a meaningless construct. So, in Enfish, the Federal Circuit tried to give it meaning by equating it with “focusing on” or “improving” compared to prior art, as revealed in the Written Description.
The only clarity I discern is that, as in DDR, since the claimed invention in Enfish touts improvements in the functioning of the computer itself or solves a problem particular to the computer arts, it escapes Alice, step 1. But we already knew that. And, DDR remains one of only a very few decisions upholding eligibility and thus validity. This “safe harbour” looks exceedingly small to me. But, it is better than none.
Therefore, innumerable claims issued before Mayo/Alice that were perfectively valid when issued will gradually fall, ultimately in massive numbers, because the Supreme Court suddenly, radically and retroactively upended the law of Section 101. That these two decisions pretend to follow Flook and Diehr is hollow because Diehr overruled Flook, as its authour (Stevens) made clear in his dissent in Diehr. When Mayo purported to reconcile Flook and Diehr, it was sheer sophistry. Then, Alice expanded on statements in Mayo and Bilski, compounding the chaos.
In addition to pervasive uncertainty, we now face fundamental unfairness as 8,300 examiners, 275 PTAB judges, 1000 District Judges and other adjudicators cannot possibly apply the law consistently, and they are not. Many more thousands of patent attorneys cannot accurately advise clients, either. Their clients, likewise suffer both the uncertainty, which makes business decisions impossible, and unfairness, which adds considerable additional costs to securing and enforcing patents when the costs were already excessive, and now are indeed unbearable, in combination, by smaller entities. Yet, it is precisely those organisations (universities, research institutes, start-up, hospitals, emerging companies) that create most net new jobs, most economic growth, most new technologies.
I am sure the Supreme Court did not intend or foresee these damaging effects. However, only it or the Congress can remedy the problem. The Federal Circuit has been rendered ineffective, trapped by Supreme Court decisions filled with loose dicta, some of it tracing back many decades, even to the 1800s. We can see its frustration in its plea for the eligibility of the health diagnostic method in Sequenom, while invalidating it.
The recent “Guidelines” issued by the PTO are likewise unable to fix the problem; the PTO, like the Federal Circuit, has been given an impossible task: to make sense of illogical nonsense, unwittingly unleashed by the high court.
Worst of all is that this entire episode was unnecessary. Bad claims are readily invalidated under sections 102, 103, 112. But, for whatever reason, Justice Breyer’s opinion in Mayo assumed that the 101 inquiry is “better established” and the other sections not up to the task. In my opinion, it is just the opposite.
Even if the high court wanted to end the chaos, it could do so only gradually, one case at a time, over many years. Thus, as a practical matter, only Congress can end the nightmare, but it is still fixated on the greatly exaggerated, though real enough, “troll problem.”
The Federal Circuit will continue, valiantly, to contain, limit and marginally reduce the harm. But, it will not be enough. That is the lesson of Enfish.
MD: when will SCOTUS announce that writing code is within the ambit of the Useful Arts and that under 35 USC 103 it is legitimate and meaningful to examine whether any particular sequence of code (or any particular math or equation) is or is not “obvious”?
Ah, somebody dares to press up against the vaporous foundation. This is a great question. It’s also an old one.
If “software that improves computing” is eligible technology for patenting, then surely the process of writing that software is an eligible process for patenting.
More specifically, the process of writing some additional code and appending it to “improve the computing” of that old eligible code is eligible for patenting.
So let’s say we have an eligible claim to a class of computer program that “improve computing”. Next someone finds a “bug” in the software falling so it doesn’t work in one or more particular contexts (a super rare occurence, right? but stay with me…). Can the “bug” be fixed without infringing the patent? Can the detection of the bug be claimed (presumably eligible, right)? Can the process of writing software to fix the bug be claimed (presumably eligible, right)? Can those claims be asserted against the manufacturer of the software, preventing it from fixing its software (presumably yes — if the problem was “obvious”, then the seller of the original software wouldn’t have sold the defective software in the first place … right?)?
Promote the progress, indeed. But, hey, some “investors” need their “expectations” backed up so let’s pollute the system with this junk. What else could possible be more important?
“But, hey, some “investors” need their “expectations” backed up so let’s pollute the system with this junk. What else could possible be more important?”
Y
A
W
N
Malcolm being Malcolm (and being duplicitous about not wanting to provide patent protection to the form of innovation MOST accessible by the non-wealthy.
Funny how he has NEVER adequately squared his predisposition against something that he paints as the opposite. That duplicity rings out every time he pulls that “wealthy” or “special” or even that “serious” item off of his short script. But does he care? Not at all.
“Go figure Folks”
the form of innovation MOST accessible by the non-wealthy.
You still peddling that silliness?
We should open the patent system up to claiming logic because “it’s MOST accessible to the non-wealthy”?
What happens next, I wonder? Oh wait: we already know.
The patent maximalists are truly amusing. As I’ve noted for years, they will literally do and say anything if they thinks it will keep their grifting schemes a tiny bit more viable for any length of time.
Hey all you people in the vanishing middle class! Come and get your patents on logic and rules carried out “on a computer”! It’s the key to your happiness because every patent creates a job and without your contributions we’ll all end up like the Amish. It’s got to be true because The Most Important People Ever told us so, and they’re never wrong.
I am not the one “peddling silliness.”
That would be you and your attempt to make this out as some sort of 1-percenter G-g-g-grifter con sp1racy.
some sort of 1-percenter G-g-g-grifter con sp1racy.
It’s not a conspiracy. It’s just something that a certain class of wealthy entitled people do. And it’s pretty much all they do.
You really haven’t noticed?
LOL – next time grab a size or two larger tinfoil hat.
Then think about the duplicity involved with your 1-percenter G-g-g-grifter con sp1racy wanting to have patent protection on the form MOST accessible to the non-wealthy.
Clearly, you are missing a very easy piece of “logic” here.
think about the duplicity involved with your 1-percenter G-g-g-grifter con sp1racy wanting to have patent protection on the form MOST accessible to the non-wealthy.
I’ve mo idea how you find “duplicity” in that but I’m sure the answer is fascinating.
Can you try plain English and declarative sentences?
Can you try to lose the Vinnie Barbarino meme?
The wealthy professional shill known as former Chief Judge Michel (anybody know how much he gets paid to spew his bal0ney these days) is apparently still upset that the PTO isn’t granting more bingo management and “think about this correlation” patents.
Maybe it’s time to get over that? The Federal Circuit has stuck its flag in the ground and it stuck it in the ground pretty much exactly where many of us predicted it would six or seven years ago (at least).
The air is being let out of the balloon slowly and, unsurprisingly, it’s being done clumsily. It’s being done clumsily because of the lack of coherent reasoning that led to the inflation of that balloon in the first place. It’d be better for everybody to simply pop the thing but only the Supremes are likely to take that step and it’s not going to happen with Microsoft’s hand on the needle.
Below Max is intentionally misrepresenting the law at the EPO. He should be banned from this blog for doing so.
Ned is telling us that software is logic if it doesn’t go to the improvement of the operating of the computer and technical otherwise. What?
We have entered the dark ages where unscrupulous practitioners can fabricate whatever nonsense they want with no consequences.
Punish this behavior.
The old maxim “Never say never” surely applies here. Thus, never say that a claim to a method of doing business will “never” be eligible or, here, never say that a claim to software will “never” be patentable. This one got through, perhaps because it has a March 1995 priority date.
I can imagine a claim to new software that enhances images. Suppose the field of technology is imaging body tissue. We (Siemens perhaps) can improve data gathering, or it can improve data processing, to get sharper, better images. Why should its improved data gathering be patentable but its improved data processing not?
The tricky bit is to formulate a workable rule that tells us when any given software claim is eligible. How long before such a workable rule emerges, I wonder.
“perhaps because it has a March 1995 priority date”
Aside from Malcolm’s incoherency, what does a priority date have to do with the 101 question vis a vis software?
“The tricky bit is to formulate a workable rule that tells us when any given software claim is eligible”
Not tricky at all. The rule is already there: utility within the Useful Arts.
So far so good. But as to programs for computers, when will SCOTUS announce that writing code is within the ambit of the Useful Arts and that under 35 USC 103 it is legitimate and meaningful to examine whether any particular sequence of code (or any particular math or equation) is or is not “obvious”?
That part of statutory law writing is NOT within the authority of the Supreme Court.
Hint (again): look at utility.
That part of statutory law writing is NOT within the authority of the Supreme Court.
Hint (again): look at utility.
You’re doing that thing again when you spew nonsense and then follow up with silly innuendo. Do you have actually have any point to make? If not, then try to keep the flap shut so your foot remains out of it for a change.
If “software that improves a computer” is eligible technology for patenting, then — according to your own “reasoning” which you’ve been trying desperately to shove down everybody’s throat since forever — then “writing code” is a useful technological “process” within 101. The Supreme Court doesn’t have to rewrite anything to reach that conclusion.
How can it be otherwise, “anon”? Try plain English, using declarative sentences. Good luck.
Now, if there’s something missing
“You’re doing that thing again when you spew nonsense and then follow up with silly innuendo.”
You are doing that thing again wherein you accuse others of that which Malcolm does.
“Try plain English, using declarative sentences.”
Been there – done that – and yet you seem unable or unwilling to understand and connect the dots.
“Shockers”
This is what straightforward reasoning looks like “anon”:
If “software that improves a computer” is eligible technology for patenting, then — according to your own “reasoning” which you’ve been trying desperately to shove down everybody’s throat since forever — then “writing code” is a useful technological “process” within 101. The Supreme Court doesn’t have to rewrite anything to reach that conclusion.
Go ahead and explain how this could possibly be incorrect, “anon.”
This, by the way, is what a pa th0l0gical l i a r does:
Been there – done that
So go ahead and explain to everyone how — given your endlessly repeated arguments — it’s possible for “software that improves a computer” to be eligible for patenting but a “process comprising writing” that same software is not eligible for patenting.
Or just admit that your position is that writing code should be eligible for patenting. Feel free to be ashamed about that position, if you like, and refuse to make that admission. We all understand how you feel.
LOL
Let’s see you move the goalposts back and finish discussing the first issue at hand, Mr. Br’er Rabbit.
Let’s see you move the goalposts back
No goalposts have been moved.
Once again we see this weird reluctance to simply state your position on a straightforward question.
But you’re totally not evasive! Nope. You’re super serious. We all need to just listen. Asking questions is something those chattering little people do before they figure out whose ring to kiss. Right, “anon”?
C’mon, just put on the big boy pants and answer the question.
“no goalposts have been moved”
Sure they have – you want to switch the topic to patents on methods of writing code. That’s not the topic under consideration.
Move the goalposts back and let’s finish the first conversation first.
After all, that’s what “big boys” do – and not try to play Br’er Rabbit as you are doing.
you want to switch the topic to patents on methods of writing code.
I’m really sorry to have to break this news to you, but positing a question that arises directly and logically from a particular legal proposition isn’t “moving the goalpost” away from a discussion of that proposition.
It’s actually called “discussing the proposition.”
But we all know that a sincere discussion about the reasoning that’s been used to justify the patenting of logic executed “on a computer” is the last thing that the patent maximalists ever want to have. And we all know why that’s the case.
Please continue to avoid the question, by all means. Nobody is paying attention, as far as you know.
You still are trying to move the goal posts – no matter how much lipstick you want to put on that pig, it still oinks.
(and try to remember, software is not “logic on a computer.”)
Software is logic Max? Wow, just nonsense. And the chair I sit on is a set of static equations. Is software physical? yes. Is logic physical? No.
This is the other game the anti-patent judicial activist play. Software is no more logic than my chair is static equations. They have no argument to the contrary. None. Their only counter is blowing smoke.
MD The tricky bit is to formulate a workable rule that tells us when any given software claim is eligible.
The answer is almost certainly “never”.
New software isn’t created in a vacuum. New software — the only kind that appears to be eligible now anyway — is created by modifying old software with “new” logic.
So now we’re at a stage where the addition of a “new” logical step or rule to a set of existing logical steps/rules is eligible if the resulting claim results in an “improvement” to “computing” generally (as opposed to some other art field). The question is how long will it take the courts to determine that at least some “kinds” of data processing steps are so fundamental to computing generally that they can’t contribute to patentability in the computer context (just as they can’t contribute to patentability in the non-computer context).
Remember: the game for patentees is to push everything into 103 where the courts created a playground for “experts” to kick up all kinds of dust. Regardless of whether you believe that 103 “works” or not, it’s incredibly expensive to litigate it. That expense rises exponentionally when the claims are drafted using “means” languge and it’s nearly impossible for anyone to figure out what steps are actually covered by the claim.
This Enfish case is truly remarkable not only for the eligibility holding but also for the finding that Microsoft doesn’t even infringe this incredibly broad claim.
LOL – “never” says the guy who is on record as saying that software per se is never eligible.
But also cannot comprehend what “equivalence” means in the patent sense and is always kicking up dust on that point.
“Go figure Folks”
At # 11.1 Night Writer observes of this case:
“I am not sure that is good news for software. Some of it is for sure. But, all this does is put us at the technological test of the EPO.”
I think he’s wrong. Never mind how much of current USPTO scrutiny of patentability is inspired by the EPO line, I see no sign of it at the Federal Circuit.
For the EPO, you have to find in a “field of technology” the subject matter put up for patenting. Software is logic not technology.
For the EPO, the only stuff that’s patentable is a combination of technical features which solves an objective problem in technology in a non-obvious way.
One would think that the judges at the CAFC could relate to that. But only if somebody briefs them on it, and who’s going to do that, I wonder.
“Software is logic not technology.”
Simply wrong.
“For the EPO, the only stuff that’s patentable is a combination of technical features which solves an objective problem in technology in a non-obvious way.”
Are you really trying to tell me that the EPO does NOT issue “software patents”….?
Really?
MaxDrei, you have zero credibility.
Depends what you mean by “software patent”. Take Diehr. Rubber molding was old. What was new (if I understand it right) was to run the machine according to the Arrhenius equation. So, a software patent, one of the kind the EPO recognises as eligible.
…and yet to people like Malcolm, Diehr was wrongly decided.
Maybe you want to play cheerleader to Malcolm once again on a point that you “disagree” with him about, eh MaxDrie?
Max, you are intentionally not telling the truth. You know full well that software patent are issued at the EPO regularly and that one portion of the technological test at the EPO is whether they improve the performance of the computer as in this case.
Night, you are a constant drum, banging loudly, and with only one song: business methods are patentable subject matter.
Ned, the SCOTUS has not said that business methods are per se ineligible.
2) Enfish is not a business method.
Ned, pulling yet another Malcolm-like AccuseOthersOfThatWhichMalcolmDoes…
I don’t draft, prosecute or litigate software cases but I suspect that Enfish might be a good vehicle for debating patentability under the EPC. Does the claimed subject matter (despite what Judge Hughes avers) really result in a better-performing computer. My hunch is that, if the truth be told, it does not.
Max, I have prosecuted patent application similar to Enfish before the EPO. They were granted. Similar argument as to this one. And—what are you even talking about. Do I have to dig out cases? Your comments are so out of bounds it is ridiculous.
Max, what? The test before the EPO for technological in a case like this is it directed to improvement of the performance of the computer? Do you question that?
“I don’t draft, prosecute or litigate software cases but I suspect”
No sh!t.
And yet, you have a “surprisingly” strong (wrong) and closed-mind as to the topic.
Why is that?
Dennis once asked me what I thought was the problem with this blog. Well, it is people like Max, Ned, and MM getting on here and repeatedly pushing propaganda and not law.
It is NOT that an alternative “End” is desired – it is that the means to that desired End involves duplicity and chicanery and a refusal to actually address the counterpoints raised.
And yes, I do mean that the word “address” means to address in an inte11ectually honest manner and not divert, avoid, run away from, or twist beyond recognition.
One simple point (for example): Using the patent law concept of inherency, does the first computer have “already in there” ALL future improvements to the machine coming by way of the manufacture known as software?
Max, I have been a system programmer — before I went to law school. I wrote an OS.
In doing so, I tried to make my code as efficient as possible in order to take as few steps as possible in order to run faster.
Now it seems to me that code that runs more efficiently, runs faster, etc., is exactly the kind of subject matter that should be patent eligible. It is technically better.
Enfish’s invention is this. It is technically better.
Ditto Versata’s code. Better, faster, extremely valuable for that.
These inventions are more than just logic. They involve significant improvements in functionality.
>>These inventions are more than just logic. They involve significant improvements in functionality.
This statement evinces such an ignorance of computer science that I don’t believe you have a degree in computer science. You sound like one of those self taught people that never really understood the subject matter but could code. OK coder Ned.
>>These inventions are more than just logic. They involve significant improvements in functionality.
This is a belly laugh. Code that doesn’t improve the functioning of the computer is logic, but other code is logic. LAUGH! There is no “logic” in that statement at all.
But, then when your ilk claims that logic is graphic shaped in a certain way what can we expect.
Ned you have an advantage over me, with your experience of writing an OS. Now I can see that a better OS makes a better computer. But I’m not sure that a better database program results in a better computer. I’m thinking that, instead, it makes a better database program.
Oy vey.
Below is an ethical man’s reaction. Lemley is unfit to shine his shoes.
After reading Enfish LLC, I conclude that, although labouring mightily to give clarity and administrability to Mayo/Alice, the court has failed to impart meaningful predictability to the vast expanse of computer or software-related patent claims. I estimate that hundreds of thousands of issued patents remain under a cloud of possible invalidity. That is even worse than being plainly valid or plainly invalid. The problem is that patent practitioners, examiners, judges, PTAB members and others charged with adjudicating eligibility or advising business executives cannot do so with any confidence at all.
That is not the fault of the Federal Circuit, but of the Supreme Court which has “legislated” a two-step inquiry that is fundamentally flawed. At step 1, one must decide what a claim is “directed to”, a meaningless construct. So, in Enfish, the Federal Circuit tried to give it meaning by equating it with “focusing on” or “improving” compared to prior art, as revealed in the Written Description.
The only clarity I discern is that, as in DDR, since the claimed invention in Enfish touts improvements in the functioning of the computer itself or solves a problem particular to the computer arts, it escapes Alice, step 1. But we already knew that. And, DDR remains one of only a very few decisions upholding eligibility and thus validity. This “safe harbour” looks exceedingly small to me. But, it is better than none.
Therefore, innumerable claims issued before Mayo/Alice that were perfectively valid when issued will gradually fall, ultimately in massive numbers, because the Supreme Court suddenly, radically and retroactively upended the law of Section 101. That these two decisions pretend to follow Flook and Diehr is hollow because Diehr overruled Flook, as its authour (Stevens) made clear in his dissent in Diehr. When Mayo purported to reconcile Flook and Diehr, it was sheer sophistry. Then, Alice expanded on statements in Mayo and Bilski, compounding the chaos.
In addition to pervasive uncertainty, we now face fundamental unfairness as 8,300 examiners, 275 PTAB judges, 1000 District Judges and other adjudicators cannot possibly apply the law consistently, and they are not. Many more thousands of patent attorneys cannot accurately advise clients, either. Their clients, likewise suffer both the uncertainty, which makes business decisions impossible, and unfairness, which adds considerable additional costs to securing and enforcing patents when the costs were already excessive, and now are indeed unbearable, in combination, by smaller entities. Yet, it is precisely those organisations (universities, research institutes, start-up, hospitals, emerging companies) that create most net new jobs, most economic growth, most new technologies.
I am sure the Supreme Court did not intend or foresee these damaging effects. However, only it or the Congress can remedy the problem. The Federal Circuit has been rendered ineffective, trapped by Supreme Court decisions filled with loose dicta, some of it tracing back many decades, even to the 1800s. We can see its frustration in its plea for the eligibility of the health diagnostic method in Sequenom, while invalidating it.
The recent “Guidelines” issued by the PTO are likewise unable to fix the problem; the PTO, like the Federal Circuit, has been given an impossible task: to make sense of illogical nonsense, unwittingly unleashed by the high court.
Worst of all is that this entire episode was unnecessary. Bad claims are readily invalidated under sections 102, 103, 112. But, for whatever reason, Justice Breyer’s opinion in Mayo assumed that the 101 inquiry is “better established” and the other sections not up to the task. In my opinion, it is just the opposite.
Even if the high court wanted to end the chaos, it could do so only gradually, one case at a time, over many years. Thus, as a practical matter, only Congress can end the nightmare, but it is still fixated on the greatly exaggerated, though real enough, “troll problem.”
The Federal Circuit will continue, valiantly, to contain, limit and marginally reduce the harm. But, it will not be enough. That is the lesson of Enfish.
Paul Michel, former Chief Judge of the CAFC
Judge Michel again looks at Alice as radical. The problem really is not with Alice, but with Bilski because that Court chose not to define what it meant by Abstract. Enfish, in my view, is a major case for clarifying things. Landmark, in my view. It will be cited from now on, worldwide. A great case.
IMHO, The two step approach is correct because it deals with ineligible subject matter in the claim. Enfish make it clear that step 1 involves ineligible subject matter. Thus, a claim directed to subject matter other eligible does not invoke step 1.
So what is ineligible — we go with examples from the Supreme Court and the Federal Circuit. Price, Risk, Math, Rules, Information, Data, Printed Matter, laws of nature.
Except for laws of nature, everyone should be able to see the pattern of the examples. All involves the meaning something. Even math. What is a “1,” for example. Numbers are abstract, and always have been.
The view that the sky is falling is not held by all. Clearly Walls Street, so adversely affected by business method patents, did not see State Street Bank as a step forward.
IMHO-Bed law is notoriously (and selectively ) blind and obtuse.
No thanks.
Ned you read like Benson.
Below is Lemley’s reaction. So, a computer that can drive is a “general idea using computer technology.” Lemley said software has no structure and his functional paper is filled with misrepresentations. Lemley also will not debate nor respond to criticism of his rants nor defend his cites which do not support what he says they do.
I think the Federal Circuit will increasingly seek to distinguish between software patents that seem directed at real improvements in computer technology and those that simply claim the implementation of a general idea using computer technology. The court viewed this claim as directed at real technology. I think it also helped that the claim was a means-plus-function claim, so the actual technology disclosed in the specification got read into the claim.
Professor Mark Lemley, Stanford Law School
Notice too the intentional conflation of 112 with 101 with Lemley. It is shocking that a person who has so regularly misrepresented science and the facts has a good reputation with the SCOTUS. It is an indication of ignorant the justices are of science that they don’t see that Lemley is a pseudointellectual backing the anti-patent crowd.
While searching for my summary of oral arguments in the Enfish case, I discovered that Patently-O is now archiving the comment (at least publicly) for only 6 weeks. After that time, only the posts themselves are accessible (the oldest viewable comments as of today are from the third week in March 2016, or thereabouts).
Thankfully I archive most of the more interesting exchanges (for future reference). So here’s my write up. I did remember correctly that the MS attorney was not well-prepared and the panel was hostile from the beginning.
Unsurprisingly, MS never argued that software should be ineligible. They expressly stated, in fact, that they were not arguing that. But it’s equally clear that, for whatever reason, the panel here realized that they would have difficulty finding both that these claims were ineligible and defending what would remain of “software” patents.
Anyway, here’s the write-up:
Moore, Taranto, Hughes
The super serious question before the CAFC: are new information organizing “structures” (e.g., new tables) eligible subject matter?
Enfish attorney, completely missing the fact that the “narrowness” of a claim, by itself, isn’t relevant to eligibility:
“If the district judge had characterized the claim as a claim to “a single table self referential database” there would have been no need to move to Mayo step 2.”
Even if the district court’s characterization was accepted, “at step 2 the court should have but failed to grapple with the single table self referential data structure.”
Enfish doesn’t dispute that people have been organizing tables using header rows for thousands of years. Enfish, of course, doesn’t bother to explain why — given that undisputed fact — numerous applicants haven’t rushed to the PTO to patent “new table structures” until rather recently in the history of system.
The alleged invention is a table that includes at least one instance of “self referentiality”. On a computer.
At around 14 minutes into the argument there’s this exchange:
Question from judge (Hughes): If I was the first to “innovate” the relational database and I described it in a fair degree of detail, could I get a patent on it? (note: the “complete” concept of relational databases is widely credited to EF Codd of IBM; the concept was never patented nor was a patent applied for; Codd, of course, defined his data management system as a set of rules governing the logic used to manage data within the system).
MS Attorney non-answer: “It would certainly be a very different case from this one.”
Judge Taranto: I’d at least need a better answer than that. You know that there is tremendous uncertainty about what constitutes an abstract idea. Most of our cases and all of the Supreme Court cases have been about objects of the claims that are easily distinguished from this one. The object of this claim is a kind of software improvement to computer functionality. It is something like a fresh question for us. I need help in understanding how to think about the Supreme Court abstract idea concept when the whole point from beginning to end of the claim is an improved internal process in the computer using completely old hardware.
MS Attorney: “Um … I would take the court to the Versata case. In that case [starts to explain]…”
Judge Taranto: “Right, yeah, but see that’s one of the cases like all of our post-Alice cases where it’s perfectly easy to say that the object of the claim is the creation of legal intangibles — which is contractual relationships to people. We don’t have that. So I’d like to put those cases aside. I don’t think — tell me if I’m wrong — that we don’t have a case that is specifically about internal, internally processes of a computer using old hardware that make the computer function better.
MS Attorney: “With respect I’d still the court to look at Versata and claim 17 ….”
Judge Hughes: “But Versata is basically a business method that could have been taught on the street. … I agree with Judge Taranto that case is of very little relevance…. That’s why I asked you about relational databases … where those are something specific to the computer world that are novel and patentable … These types of databases I don’t see as having been done prior to the computer world. So … can you give me another try at one? So, if have you have the prior art relational databases, and not in some very general sense of using tables with tabs and columns on a computer — because that seems abstract to me — but defined in a certain way — “X number of databases working relationally in a certain way” — the way the prior art works — why wouldn’t that be patent eligible?”
MS Attorney: “If we had a relational database and you were claiming the relational database techniques, you would be far less abstract than the claims are here. And if I could just have the court indulge just one comparison to relational databases and the claims here it would be this: the claims and the specification teaches that the benefit of the invention here is to leave all of the relational database rules aside. Instead of having many tables where you try to claim like [i.e. similar] things together you are supposed to throw everything into a single table, a single logical table — any kind of record can go in there, and therefore it’s going to be a sparse matrix, you’re not going to try pack everything in like a relational database would …”
Judge Hughes: “So it’s a new kind of database!”
MS Attorney: “The specification suggests it’s different from a relational database … and the question we think this is the critical question: is that teaching part of the claims? We suggest that the answer is “no” for two reasons.”
Judge Hughes: “Well you can answer that but I’m not sure I’m going to agree with you on that. It seems there’s enough in the “self-referentiality” ….”
MS Atttorney: [irrelevant hooey deleted]
Judge Hughes: “This doesn’t sound at all like a 101 argument to me.”
MS Attorney: [more irrelevance]
Judge Hughes: [interrupts] “Okay this is not being very helpful to me. So let’s just assume I don’t agree with your reading of the claims. I find that the claims specifically incorporate one database with self-referentiality. Why isn’t that a new database that is patent eligible under 101?”
MS Attorney: “The question then becomes, with that assumption, what are you asking the computer — which is admittedly generic — to do. And here the computer is being asked to do things that people can do. A person could take data and organize it into two columns and two rows and have those rows be self-referential in the manner in which the claim is taught and therefore the claim is abstract.”
Judge Hughes: “I get that. I see … and I do think that like Versata and some of those cases if all you do is take some kind of method that’s done and ‘do it on a computer because it works faster and better’ then that’s ineligible. And I see some aspect of that here but I also I see your friend’s argument that this doesn’t just do that. It improves the way the computer itself operates — it takes less memory, it makes the database work better. To me it’s not solely the case about taking something and do it on a computer, it makes the computer work better, too. I still don’t understand — assuming I read the claims in a more specific way than you do, why that’s not enough under Alice because the brunt of your argument leads me to the suggestion that computer software is just not patentable at all.
MS Attorney: That is not our position ….
Judge Hughes: Let me ask you this hypothetical then. Do you think the invention in the specification would be patentable if claimed properly?
MS Attorney: If claimed properly, you certainly could have a patent …
Judge Taranto: How would you do it here?
MS Attorney: You could start, first, by claiming exactly what was taught in the specification. That would be a good start. And you would need to get to something that … you would need to claim the invention from the point of view of what was different and new that made the computer better, faster, and stronger, instead of claiming something that a person could do outside the context of a general purpose computer. That would make a difference. It makes a difference under the court’s precedents. And here, again, the specification teaches something: it suggests that you are going to get benefits if you have a single very large table. The patent claims just talk about a computer and “a table”, which could be “one or more” — you might follow the requirements of the claim limitations for one of your tables and not for others and therefore miss the benefits entirely. The claims reach that far because they are drafted in an abstract way and that’s what leads us into the Alice problem.
MM, great summary. Comments like these need to be preserved on the public record just as much as the opening post.
Yes please preserve MM’s bathroom breaks too.
WTMWDNR
Way too much Wah, did not read
Way too much Wah, did not read
LOL
It’s a transcript of the oral arguments from your new favorite case, d00fus.
I am more than certain that you took a few “liberties” with that “transcript.”
(and I am more than certain that you have no idea what my “favorite case” is)
I assume everyone understands the the term “logical” in the claims is synonymous with “digital” (and even to “binary” given the realities of computer circuits).
The CAFCs analysis is heading down the right path—the claim may be 101 eligible but obvious as hell in view of 1960’s technology, maybe even 1950’s.
Note that they are acknowledging the equivalence of software and hardware., which is science realty. We really need to find a way to punish those that continue to knowingly make statement that are against what we know in science to try to further their cause. No punishment would be too small. Disbarment should be a minimum. I think both Ned and MM should be reported to their state bars for continuing to make false statements.
“Nor do we think that claims directed to software,
as opposed to hardware, are inherently abstract and
therefore only properly analyzed at the second step of the
Alice analysis. Software can make non-abstract improvements
to computer technology just as hardware
improvements can, and sometimes the improvements can
be accomplished through either route”
Software can make non-abstract improvements to computer technology just as hardware improvements can
There’s a lot going on with this statement but I suppose the biggest problem is the phrase “just as”.
A set of instructions can make a “non-abstract improvement” to a cook’s dinner preparation “just as” an improved utensil can. So what? Those instructions are still ineligble.
What the CAFC is habitually unwilling to confront is that programamable computers are different. As opposed to newly designed computers with new tangible hardware that can be described structurally (just as every other machine can be), programmable computers present a completely different set of issues to the system. And that’s because “new” logic and and “new” information — as opposed to new machines — are both ineligible for patenting, for lots of great reasons.
Ignoring that fact and choosing to ge nuflect instead towards “investors” who insist that their logic is “special” and requires patent protection has never served the CAFC or the patent system well, and it never will.
MM, just yapping over and over that X is a Y is meaningless. Can something physical be logic? No. Is “software” physical? Yes.
Please stop your unethical behavior.