New 101 case… scares me…

I’m sure Dennis will do his usual magic, but Cyberphone Sys., LLC v. CNN Interactive (Fed. Cir. Feb. 26, 2014) is a prime example of the silliness of this judicial activism.  The case is available here.

Here is the claim:

A method, comprising:

obtaining data transaction information en- tered on a telephone from a single trans- mission from said telephone;

forming a plurality of different exploded data transactions for the single transmission, said plurality of different exploded data transaction[s] indicative of a single data transaction, each of said exploded data transactions having different data that is intended for a different destination that is included as part of the exploded data transactions, and each of said exploded data transactions formed based on said data transaction information from said single transmission, so that different data from the single data transmission is separated and sent to different destinations; and

sending said different exploded data transac- tions over a channel to said different desti- nations, all based on said data transaction information entered in said single trans- mission.

What’s my gripe?  First, the court says Section 101 “impliedly bars” certain subject matter. I won’t bore you by repeating the post below about the plain language and legislative history of that section, which shows no such language or intent.

More importantly, because the method claim — which expressly recites physical objects — “involves an abstract idea,” the court says section 101 is implicated.  The “abstract idea” is “using categories to organize, store, and transmit information.”

Okay… but someone identify for me a method claim that does not “involve” an abstract idea (or mental step or natural phenom or natural law or…).

Now, because the claim “involves” an “abstract idea,” the court says that it’s not enough that this abstract idea can’t be performed by a human being.  Instead, the court concludes that the claim covers the practical idea itself even though the claim is limited to organizing data and so on using telephones.  Why?  In part because you can use pretty much any telephone.

Okay… so what method claim is eligible?  If it “involves” an abstract idea (whatever that is), and uses “conventional” things, nope. Even if it changes the world… not eligible.

This sort of “reasoning” is not very helpful.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

90 thoughts on “New 101 case… scares me…

  1. 7

    101 cases all have to do with the panel. Lourie would like to see all software patents eliminated. Wallach is out of his league regarding patent stuff. So regardless of the facts of this case, the patent was doomed. If the claims really cover something so “well known” then the defendants should file a reexam on it. 101 is not the proper recourse here, but it seems like any defendant can now use it to get a free pass.

    When I was trained many years ago to write applications, we were taught to cover as many species in the spec as possible under a generic modifier, such as how Cyberfone defined “telephone” to mean numerous things. I’m wondering if, when dealing with software applications, this is no longer good practice.

    1. 7.1


      If you eliminate the ladders of abstraction (which is what you are talking about), what do you replace it with?

      1. 7.1.1

        I have no idea, maybe rely on the DOE? Under John Doll/Dudas we had a patent office that hated patents, now it’s the Federal Circuit



          There are some whose chortle-lings would indicate that DOE is a form of the ladders of abstraction (you are obtaining coverage on something not explicitly detailed, so you abstract to the three-equivalences test) and would be banished as well.

  2. 6

    My first blush was that the obtaining step meant “look at the last call dialed” or something of that manner. Neither does the forming step require a machine. I do think though that you can’t reasonably construe “sending…over a channel” to not include some sort of apparatus there though. I still haven’t read the spec, I assume it deals with routing of data packets?

    This is mightily wishy-washy to draw such a stern rebuke Dennis. If one correctly fails to import limitations from the spec or the other claims (and looks only at whats at the top of the page) the obtaining step which I think you clearly feel has an apparatus involved, does not necessarily have one. The telephone isn’t claimed, and vision is a reasonable means of achievement.

    Like I said, I think “channel” saves it, but channel is awfully close to “medium” which brings up transitory changes, like talking. I agree they are not the same and should not be treated as such…

    I think you’re correct that the court clearly came down on the wrong side, but not to such a degree of disgust you seem to have.

    1. 6.2

      This does bring up an issue which I don’t think gets enough play: The claims are read as if by one of ordinary skill in the art, but is it one of ordinary skill who has read several claims or not? i.e. Is the claim judged in respect to the general state of claiming? If not (which was my gut reaction), what business does the court have laying down even general rules regarding indefiniteness and descriptiveness, or using similar claim language examples to prove a point?

      If one sees “calculating, by a processor” 99 times, and on the 100th time one just sees “calculating”, is the reasonable interpretation to be that the applicant intends to cover that part of the claim being done in your head? Again, keeping in mind that the spec isn’t to read limitations into the claim.

      I ask because I suspect the reason I interpret the obtaining limitation differently is that I think 99 times out of 100 that would read “obtaining, by a device” (or machine or apparatus) and thus the lack of the “by a” limitation was noticeable.

      1. 6.2.1

        I guess what all of these comments are suggesting is: how can a court do a 101 analysis without construing the claim?

        But, what about the presumption of validity? I don’t think 101 is a defense to infringement, but, if it’s something, doesn’t the presumption apply? Doesn’t that at least come into play and we say, for example, “the claim must be clearly and convincingly read only to cover only ineligible subject matter”?

        The case *is* a mess. But the cause, to be clear, is the Court down the block from the CAFC.


          David, regarding the court down the block, in Bilski they trashed a very clear test, the MOT, in favor of “abstract.” But their analysis followed that of Rader’s dissent. If we have a problem, the source of the problem is Judge Rader.



            Once again, I take issue with your views and analysis (or lack thereof).

            They trashed a very clear test because the test was clearly being misapplied as law.

            That you still insist on painting the CAFC as patsy is a clear give away that you really do not agree with my position – even as you say that you do.

            Rader, whom you wish to blame in the instant case was using what the Supreme Court gave him.

            You need to realize that Rader, while having more gumption and spine than probably any other CAFC judge, still does not have the gumption and intimate knowledge that Judge Rich had (and this combination that Judge Rich had makes Judge Rich someone to be respected, not reviled as you often do).

            The problem wholly, completely and irrevocably is with the monkeying of law that the Supreme Court engages in. They need to own their responsibility as they will not solve the problem until they do. Making a patsy of the CAFC will only prompt the Supremes to pass the buck back to them (with no helpful direction). This is plainly evident because this is exactly what the Supremes have already done.

            This also feeds the Supremes addiction to making law, as since they never really solve the issue, the issue necessarily will keep coming back up to them. One sign of addiction is harmful behavior that is continued even though the harm is known. Clearly, the harm that the Supremes have created is known: with incessant p1ssing match beatdowns of the court that Congress created explicitly to creates order in patent law, the Supremes in jealously guarding their “court of last resort and final say TO EVERYTHING” have emasculated the CAFC and set them adrift, with certain judges clearly afraid to make any real decision based on law that even sniffs at being against the philosophical (note: not legal) positions of the judges and their implicit writings – clearly elevating the exceptions to swallow the explicit rules as actually written. Seriously – we are now at a point that a phone is not a ‘specific machine’ whatever the H that means in order to have a judge so obviously beaten by the Supremes try to apply an extreme view of ‘abstract.’

            The Alice en banc fiasco needs to be understood for what it is: a giant slap in the face of the Supreme Court. What needs to happen is for the Supreme Court to understand why they were so slapped. It was not a p1ssing match slap of “we are better than you.’ It was a reality-check of “Hey – take responsibility if it is the responsibility of setting a clear and consistent patent law that you want to take from us.”

            Your penchant for blaming the CAFC is completely unhelpful and completely wrong.

            We need to forcibly make the Supreme Court aware of its role and its responsibility if it wants to continue to hold onto the power “of its implicit writings” (and the power to maintain a hold on an ability to add additional implicit writings long after Congress took a real step and removed that power back in 1952).


              The MOT is straight out of Benson and Diehr.

              Rader didn’t like it. We agree on that.

              He had a problem with the Bilski claims, but he really didn’t say what the problem was.

              Neither did the Supreme Court.

              So, there we have it. 101, save for the Myriad case, is largely a mess.



              You are (again) guilty of your over-reading tendencies.

              MoT was always only and just a clue.

              In re Bilski tried to change that clue and make it a law.

              The Supreme Court correctly held 9-0 that MoT was not the law.

              And again, Rader did not make up “abstract” all on his own, so you need to stop attempting to make him the patsy.

              Your continued hesitancy to place the blame squarely where it needs to be placed continues to make me think that you do not agree with the positions I have that you said you agree with.


          The case *is* a mess. But the cause, to be clear, is the Court down the block from the CAFC.

          With all due respect, Professor, I think you’re just determined not to like this case because it’s a 101 case. This claim is a horrible poster child for your cause.


            With all due respect Leopold, being determined to show the problem is the making of (and thus the answer needs to come from) the Supreme Court) is exactly what we should be doing.

            This is not as horrible a poster child as you are scrambling to make it.


          IMHO, the presumption of validity appears to apply to factual challenges. See the concurrence in i4i. For a law-based challenge (let’s not get into whether 101 is a mixed bag–I agree it probably is), the presumption doesn’t really have any application as far as I can tell.



            An interesting assertion: “IMHO, the presumption of validity appears to apply to factual challenges

            Care to share on the IMHO drivers?

            Since validity is a question of law – How do you square the direct words of Congress? If validity were instead a factual matter, I might be inclined to give your view a little weight.


              Understand validity is ultimately a legal determination. I was thinking of the C&C standard that flows from the presumption of validity. Breyer’s concurrence in i4i indicates C&C has no place for strict legal questions. Assuming 101 is a legal question, I think it follows that you don’t need to show the claim is ineligible by C&C (how is that even possible for a pure legal question in any event?).

              Here’s the quote from Breyer’s concurrence in 141:

              Many claims of invalidity rest, however, not upon factual disputes, but upon how the law applies to facts as given. Do the given facts show that the product was previously “in public use”? 35 U.S.C. § 102(b). Do they show that the invention was “nove[l]” and that it was “non-obvious”? §§ 102, 103. Do they show that the patent applicant described his claims properly? § 112. Where the ultimate question of patent validity turns on the correct answer to legal questions—what these subsidiary legal standards mean or how they apply to the facts as given—today’s strict standard of proof has no application.

              Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2253, 180 L. Ed. 2d 131 (2011)


              Thanks Derek – it is still the apparent dichotomy of your two sentences that I wanted to focus on:

              Understand validity is ultimately a legal determination. I was thinking of the C&C standard that flows from the presumption of validity.

              Is there no effect on standards of issues at law from the law that provides the presumption of validity? What then – in law – does the particular law mean? It must mean something. And that something has to be more than what exists without the phrase being uttered, right?

              I am aware of Breyer’s quote – I am not impressed with it.


              Anon, not sure I’m following your latest post. Can you expand on that? I think the presumption of validity still has meaning in the context of fact-based challenges and legal challenges involving subsidiary factual issues. But with respect to pure legal challenges, I’m not sure how the presumption would work. Are you aware of any examples where courts have applied a standard–C&C, preponderance, etc.–to a pure legal question?



              I look at the presumption as setting the standard for one party to win – on any and all issues of the contest.

              Perhaps that is too simple…


          Congress has broad power to grant patents, but it’s not unlimited. For example, even if Congress were to specifically allow abstract ideas under 101, it would necessarily be negated by the first amendment. Ditto a patent that would result in you “owning” a person.

          Carving out abstract ideas from 101 is pragmatic in the sense of the alternative would be to find the statute unconstitutional. Assuming Congress doesn’t have absolute power to grant patents or doesn’t utilize the full range of it’s power, then certainly it would be improper to enforce a patent that doesn’t validly exist, right?


            There is a major major problem with “Carving out abstract ideas from 101 is pragmatic in the sense of the alternative would be to find the statute unconstitutional.

            The statement is simply not true.

            You lose all sense of ‘pragmatism’ since you have not (and in truth, cannot) define ‘abstract’ to any appreciable level to understand what the law is – before – you attempt to apply the law.

            For a law to be valid, it must be understood what the law means. The point of the current fiasco (caused in direct part by the Supreme Court) is that the Court’s rulings do not provide ANY (let alone any pragmatic) way forward in understanding what is and what is not patent eligible (and Random, please maintain the proper focus on patent eligiblity and not patentability).

            In this case, the ‘cure’ is every bit as fatal as the alternative of finding the statute unconstitutional.

            And this is true regardless of the mess that the Supreme Court leaves the state of the law. As I comment elsewhere, the Supreme Court does this little nebulous dance (you really have to take note of how the Court always returns to the phrase “the words of Congress”) because they KNOW that they do not have the authority to explicitly write patent law. The problem with the treatment of ‘abstract’ is that attempting to write patent law implicitly simply does not compete with the scriveners ability to manipulate words and get around any Court-implicitly-written law. The rabbit-hole of implicit is where lawyers hone their craft.

            The Supreme Court cannot come out and write patent law with force and clarity because they recognize – at some level – that the 1952 Act stripped them of that authority.

            Congress may not have absolute powers – but their powers are infinitely more powerful than the Court when it comes to actually writing the law.


            Anonymous, I think the presumption of validity applies, but when the issue is purely legal, there is no issue of “evidence,” let alone “clear and convincing.”

            Does this clarification help frame the issue?

            If it does, I don’t see how claim construction is really necessary. The claim on its face must be evaluated — with the caveat that if means plus function claims are involved that there be a corresponding method claim. Otherwise the claim might actually be claiming novel hardware as in Alappat.


              Is clear and convincing strictly an evidentiary standard or is it more?

              I would think more.

              For example, there is more than one type of burden – a burden of production (this is more like a ‘evidence’ burden) and a burden of persuasion (this is more like a ‘legal’ burden).

  3. 5

    Hmm. It looks like one of those special cases where the patent doesn’t remotely meet the requirements of §101, §102, §103, or §112. Still, the various grounds for invalidity are few compared to the dozen and more multi-billion dollar revenue companies with known giant legal departments of IP specialists being sued simultaneously.

    The three hundred words of substantive discussion in the decision are more than enough for the mercifully quick death this case deserved.

      1. 5.1.1

        I believe that the laws matter; I suppose that is where we disagree.

        That’s obnoxious, David. You’ve been spending too much time with “anon” apparently. It’s possible to disagree on these questions and still believe that “the laws matter” (unless you have some special meaning for that phrase — perhaps you should share it everyone).

        As LB noted, this is not the sort of claim that anybody should be defending. People like you who believe in a toothless 101 should do a better job of picking their battles. Do you know why? Here’s a hint: Prometheus v. Mayo. 9-0. It’ll never be overturned.

        Also, I’ll remind you that there are a many decisions that stray from the statutes. Why not spend time complaining about them? Start with 103. Doesn’t that statute say something expressly about “claims as a whole”? So why does the Federal Circuit say that you can ignore non-obvious kit instructions when evaluating a claim for obviousness? Surely you’ve been complaining about that “judicial activism” for years. Because it’s the principle that matters, right?

        There’s also a fair number of pro-patent decisions that could qualify as “judicial activism” under your unstated criteria. Why not catalogue them all and address each in turn? Because it’s the principle that matters. Right?


          I’m perplexed by this whole discussion as well, MM. To present the tanking of this claim as a “prime example of the silliness of this judicial activism” and then to refuse to actually engage any discussion of the claim scope? I’m disappointed.


            refuse to actually engage any discussion of the claim scope

            You are still closing your eyes to my post at

            Egads, I think you owe me an apology Leopold.

            As to the notion of not engaging…. Again, get in line.


              Once again, Leopold, you descend into a smarmy state and then disappear the moment that you are called out for it.

              I would rather you not leave anything to anybody in such a manner.

              I would rather you stick around and engage.

              Or at the least, lose the smarmy attitude and the snark to begin with. You clearly cannot stand the heat, yet you want to dabble in the kitchen.


              I would rather you stick around and engage.

              I think the record is pretty clear that I’ve “engaged” more than anybody on this particular thread. If your brand of engagement is what Professor Hricik wants, then he’s welcome to it. Like I said, I’m disappointed, but I’ll get over it.

              You guys have fun.


              My brand of engagement…?

              You mean like the case cite on the hurricane?

              You mean like the references on ladders of abstraction?

              You mean like, well, pretty much every legal notion that you have ever challenged me on, danced your smarmy dance, realized that you were wrong, and then skulk away?

              You mean like that, Leopold?


              Fun, Leopold, would be to have you engage.

              That fun would come from you engaging and forcing you (again) to realize that you hold the short end of the stick in our discussions of legal matters.

              But as is clear, you would rather simply run away.

              Just like Malcolm.
              Just like Ned.
              Just like 6.

              Just like every anti-patent ideologue.

              It is still fun to make you run away – just not as much fun as having you engage.


            To present the tanking of this claim as a “prime example of the silliness of this judicial activism” and then to refuse to actually engage any discussion of the claim scope? I’m disappointed.

            It is disappointing, but not suprising.

            Like certain notorious patent teabaggers who infest this corner of the Internets, David doesn’t like to talk about the details of what should or shouldn’t be eligible for patenting. He just likes to complain about 101 and “judicial activism” because “collapse of the Republic” or something.

            I guess the blogtroll “anon” has found a new playmate on the Internets. Maybe David can help anon and Eric Guttag with their drive to impeach those “activitist” judges (and Justices) who use the term “monopoly” when discussing patents. These are very serious and thoughtful people, as David surely understands.


          That’s obnoxious, David.

          Says the man more expert than anyone on being obnoxious.

          Prof. Hricik, that may be a compliment.

          However, it is difficult to tell, since Malcolm (aka MM, aka Vivika M, aka, Friend(s) of the Court, aka, Francis, aka,…) maintains the belief that posts on blogs need not be made to any standard of intellectual honesty, as to him, what is posted on a blog simply does not need to be of the same veracity and honesty as what is provided in court.


          NM, sorry if it came through as obnoxious.

          Here’s the deal:

          No one has ever said to the supreme court: read the statute. I was just reading their new case on forum selection clauses (Atlantic Marine) and they focused in on the words, the structure, and so on. Here, if they do that, they’ll conclude (which they have never analyzed) that 101 is *not* an invalidity defense. Period.

          If they conclude 101 has some meaning, they’ll have to confront the fact that in 1952 Congress got rid of the need for “invention” and replaced it with 103, because the Supremes had made a mess of things, doing exactly what they are doing now — asking subjective questions about things, focusing on “gists” of invention. Read why 103 was adopted and you’ll realize that Congress wanted 101 to have no teeth. It defanged the word “invention” in 101 and put the teeth in 103.

          I frankly could care less: if Congress wanted to say “abstract ideas decoupled from a new machine are not eligible for patenting,” have at it. My point is that laws matter – statutes matter.

          The only post 1952 101 as an invalidity defense case never raised any of these controlling statutory issues.

          Sorry if I was obnoxious. I usually only do that when I’ve not had enough caffeine.


            No one has ever said to the supreme court: read the statute.

            Why do you suppose that is? It’s not like the Supreme Court is shy about hearing 101 cases. If the argument was such a clear winner, it would have won the day long ago.

            My guess is that most litigators don’t consider it a credible technicality to argue, even as a long-shot litigation gamble. Policy is important to the Supremes, and they’re not likely to hold that a patent claim is valid and enforceable (much less all the patent claims ever, all at once) when its subject matter isn’t eligible for patenting.


              “Policy” is for Congress, is, 99.9% of the time, what the Court says when there’s a statute….


              “Policy” is for Congress

              The Supreme Court is not going to base a holding on such a far-reaching technicality when it’s clearly bad policy to do so.

              Congress is always free to explicitly legislate that 101 shall not be a defense to an infringement action, and then they won’t have a choice. But they haven’t. That’s the ball the Supremes will put in their court if they ever have to make a “policy is for Congress” statement on this issue.

              I’d still love to hear your theory of why so many litigants have decided not to even float the “read the statute” argument, if it’s such a strong one.


              IANAE asks “Why do you suppose that is?

              When I have given the answer many times.

              The power of the pre-1952 ability to shape invention by common law means was a powerfully addictive finger in the nose of law.

              Power once possessed is simply not so easily given up.

              In the 101 instance, a clear undercurrent exists between the Supreme Court and Judge Rich. This too, I have explicated many times and in great detail.

              101 remains attractive to the Supreme Court because of its Front Gate nature. It is an atom bomb type of weapon, whereas 102/103/112 are fine laser scalpels.

              But IANAE, you have been around long enough to know this.


              Agree there, IANAE as to the reason why it has never been appealed.

              The Government tried in Prometheus, but failed because it did not rely on statutory authority.

              We need someone to write definitive Article — an article that would also allow the Supreme Court to treat 101 issues within the statutory framework.


              Read section 282. Read section 101, 102, and 103.

              Now tell me 101 is a defense.

              Sure, no problem. You want a Supreme Court cite in support?


            David, I am in full agreement with you on the statutes. 101 is not a limitation on patentability, period.

            However, in conducting the 103 analysis, I think the departure from the prior art must be within the useful arts and have a technical effect.

            Scope – preemption, issues are best handled under 112.

            Laws of nature and products of nature are preexisting items in the public domain. OLD. Claims to such per se should anticipated or obvious under 102/103.

            Abstract? Check utility — technical effect or scope, 112.



              Are you trying to import EP law with the notion of technical effect?

              You do realize that you have no statutory basis in US law to lean on for your desired “technical effect”- right after you wish to join Prof. Hricik on the importance of grounding your position in statutory law…

              Also, I will remind you (again) that the 101 law of nature and products of nature rationale is not tied to a prior art basis – see Chakrabarty.

              There are good reasons why the Government’s attempt failed in Prometheus.


              anon, exactly, I am.

              And this is where the good professor would agree that it is the Supreme Court’s purview to construe statutes, and they could construe 103 in the way the Euro’s have. Didn’t the Supreme Court look to English cases for guidance on “principles in the abstract?” See, Morse. Why can not they look to Europe to determine whether all differences between the prior art and the claimed subject matter have to be considered?

              I give you the player piano with new music. Do I really, really have to determine whether the new music is obvious?


              The problem you have Ned is that the courts have already ruled that there is no technical arts test within the Useful Arts.

              If you are going to march forward with a solid statutory basis, your reliance on foreign law principles will not do well for you.

              If you are going to go back (again) to a point in time that the Court had the blessing of Congress to set invention by common law process, then too, you will not do well.

              And once again – music? Please, how many times must I lecture you to stay within the Useful Arts as a requirement for your examples? When you go beyond that, you have instantly failed and you cannot succeed in making any legal point.

              Let’s try again and be reasonable this time.


            David Here’s the deal.

            I know the “deal.” I also know that it has zero chance of success. It has less chance of succeeding even than simply arguing that “the statute says processes are eligible and my claim says ‘process’ so therefore it’s eligible.”

            If they conclude 101 has some meaning

            That’s already happened. We’re past that.

            they’ll have to confront the fact that in 1952 Congress got rid of the need for “invention” and replaced it with 103, because the Supremes had made a mess of things, doing exactly what they are doing now — asking subjective questions about things, focusing on “gists” of invention.

            That’s not what’s happening now, David. Take Prometheus, for example, a case which you seem to have a really difficult time coming to terms with. The claims in Prometheus recited an old data collection step followed by a new thought about what the data meant. Prometheus expressly told the court that it’s claim was infringed by someone who simply looked at the data, thought about what it meant, and did nothing. There were (and still are) a lot of claims floating out there with this same issue. Was this going on on a large scale in 1950? How many patents were issued in 1950?

            Read why 103 was adopted and you’ll realize that Congress wanted 101 to have no teeth. It defanged the word “invention” in 101 and put the teeth in 103.

            Where are these “teeth” in 103, David? Where does 103 say anything about mental steps, printed matter, abstractions, correlations and the like? The answer is those “teeth” aren’t there. Why not? Is it because Congress wanted patents to be issued that protected non-obvious methods of thinking, or methods of giving old information a non-obvious name, or pieces of paper with non-obvious instructions? Of course not. The “teeth” aren’t there for one of two reasons (1) Congress just assumed the common law exceptions would remain the common law exceptions or (2) Congress was incompetent. There’s a third reason, of course, but I can’t give the drafters of the 1952 patent act that much credit. They just weren’t that intelligent or far-sighted.

            So what ended up happening is that “judicial activists” tried to put “teeth” into 103 to prevent garbage patents from granting that protected, e.g., pieces of paper with non-obvious information printed on them. But nobody seemed to complain too much about that, in spite of the blatant disregard for the express language of 103.

            I frankly could care less: if Congress wanted to say “abstract ideas decoupled from a new machine are not eligible for patenting,” have at it

            And there we see the truth leaking out. Why weren’t you and “anon” and all the patent teabaggers begging for Congress to articulate what is ineligible for patenting? The answer is that “you could care less.”

            Well, a lot of us care quite a bit. A lot of us don’t like the idea of being sued for thinking a new thought about some old data, or for programming our computers to do what they were designed to do (i.e., process information). And we’re glad that the courts, including the Supreme Court, are focused on the issue because, frankly, Congress can’t keep up with 500,000+ patents granted/yr. Nobody can, really. It’s an out-of-control mess. Getting rid of 101 isn’t going to help that.

            My point is that laws matter – statutes matter.

            And courts matter, too. They interpret the statutes and laws, and preferably in a way that avoids insane, absurd results that harm the public and benefit the privileged elites who seem to disproportionately inhabit the Senate.


              And Prof. Hricik, this is what is known as a Malcolm CRPfest.

              You could attempt to wade through the bile and spin attempting to find something tethered to an ounce of fact or law, but you would not succeed.

              The problem is not with you.


              And Prof. Hricik, this is what is known as a Malcolm CRPfest.

              Choose your lapdogs wisely, Professor. This one has a tendency to leave ugly messes on the kitchen floor.

  4. 4

    Perhaps a better form of analysis is this:

    1. Collecting, organizing and transmitting information depending on categories is notoriously well known.

    2. Receiving such information from a telephone, and transmitting the information over channels to different locations does not add sufficient additional limitations because there are no details as to how the hardware is not generic.

    3. The claims are obvious a matter of law.

      1. 4.2.1

        David, the point here is that the way the case was decided, it was an obviousness case, not a 101 case.

        A “proper” 101 case would involve a completely novel “abstract idea.” An idea does not become abstract because it is well known.

        Take a look at the Nielson case discussed in Morse for an idea of what the doctrine is really about.


            Statutes matter only if you want to pay attention to who has authority to write patent law per our constitution.

            Statutes do not matter if you want to maintain a philosophical hold on such a massively powerful mechanism as the patent system and you want to “implicitly” write whatever you want to write into a clear statute that otherwise does not go in the philosophical direction you want it to go.

            Don’t get me wrong. The Supreme Court has its role in patent law. But that role cannot be connected to writing the law – even implicitly. The only time that the Supreme Court should be entertaining a case is when a case has true constitutional impacts – and then, the decision of the case needs to be focused not on any particular patent per se, but on the law as written by Congress and whether the law itself passes constitutional muster.

            The Supreme Court has a serious case of CAFC envy, and they are way out of line. I say that with all due respect as an officer of the court.


              and one more comment as I descend my soapbox – the mess we see here is directly due to the Supreme Court interference and brow-beating of the CAFC. Several members of the CAFC has been bullied and judicially whipped so badly that they have no spine left to stand up to the Supreme Court as is needed to be done.

              How I wish that we had a man of convictions and fortitude like Judge Rich – who knew the law well enough not to be buffaloed by the Supreme Court. One? We can use a whole bench of them at the CAFC to deal with the wayward Supremes.


          And just to be clear, again, in 1952 Congress said you can’t do “invention” this way — it was nonsense then. They put in 103 to get rid of this “it’s not enough” approach.


            David, excellent point there on 103.

            It does appear they are relying on their pre-52 brand of looking at “invention” their own non statutory way, but coding it as 101.

            This would be an ideal case in which to raise your statutory structure analysis saying they are finding lack of invention without going finding the claims obvious to one of ordinary skill.

            Which brings us full circle to the notion that Benson and Flook were limited to claims that ended in numbers that were applied to any use. (I think the same is true of Bilski, but that is less clear.) That certainly is not the case here.



              How many times have I told you that the 1952 Act was a removal from the Courts of the ability to set ‘invention’ by common law means?

              And several times in our discussions I have brought you directly to the point that the Court has been ultra-careful in EVERY post-1952 101 decision to hew carefully to “the words used by Congress” even though they could not break from their addiction and played the implicit nose of wax twisting.

              And before you go into the weeds again with Benson and Flook (while forgetting Diehr and Bilski which reminded all that Benson and Flook were cabined by Diehr, try to remember not to conflate the utility aspect of 101 and the statutory categories aspect of 101.

              And how many times must I point out that the Court exhibited their activistic finger in the 101 nose of wax addiction forcibly in Prometheus, so jealously guarding its exceptions from becoming dead letters – and not having a focus on the actual law?

              And how many times have I told you that it is the Supremes (and their judicial activism) that are critically at fault for the 101 mess – even as you try to paint the CAFC as the patsy?

              Need I remind you that Congress took this 101/103 action directly because of an anti-patent Supreme Court?

              History goes unlearned, and I weep.


              For reasons given elsewhere (here and on the main blog), your agreement with my position is taken with a rather large grain of salt.

      1. 3.1.1

        ..because a telephone is not a sewing machine is not an electronic cattle prod is not an automobile is not a…..

        Um, what exactly is a specific machine?


          A new machine necessary to practice the method, I’m guessing.

          This is a mess. There’s a reason Congress got rid of this nonsense, or its close cousin “inventiveness,” in 1952.


            ..not to mention the havoc wreaked on the actual words of Congress in 101 of “or any new and useful improvement thereof“…


              This is just judicial activism at its worse, imho.

              That Federalist Society kool-aid really does leave a big stain.


              Malcolm – would you care to explain why a reference to the Federalist Society should be considered a bad thing?

              Or are you just being vapid as usual?


              It should go without saying in 2014 but generally people who whine about “judicial activism” are really just whining about a result they don’t like. It’s a conservative meme, a response to change that they don’t approve of, and typically a change in the direction of social justice or diminished rights for wealthy, entitled people (e.g., the typical patentee).

              That’s why David can’t show us his extensive writings on the “judicial activism” that allows him to pretend that “103 has teeth” to take care of the sorts of junk claims that 101 takes care of. There are no such extensive writings. To the extent there is some big “principle” at issue here, it’s really not quite as big of a concern for David as he would have us believe.

              At the very least, it would be nice if David would simply acknowledge where his purge of “judicial activist” decisions in the patent sphere actually gets us. Hundreds of thousands of patents are being granted each year. None of them can be challenged for eligibility issues, e.g., because they protect non-obvious thoughts? And David can’t be bothered to propose a solution? No attempt at helping his beloved Congress come up with that magical text that he and Scalia allegedly worship? Instead he just points fingers at the Supreme Court and complains that they are ruining everything by protecting people from junk patents. Doesn’t seem right, somehow.


              generally people who whine

              a conservative meme

              Coming from the single biggest whining QQ baby in the blogosphere (that would be you Malcolm), your black is white and white is black attempt is, shall we say, ‘charming.’

  5. 2

    I don’t know, David. I think your arguments are fine, but they may be misapplied in this case. The “physical object” here is presumably the telephone, but the claim doesn’t actually require it to do anything. The actual steps are simply “obtaining information” (that happens to have been entered on the telephone) relating to a data transmission, and then re-packaging the information and sending it over a variety of generic “channels.” It’s not clear that the telephone is involved in the “forming” and “sending” operations, and until you restrict the definition of “channel” a bit it’s not even clear that any particular machine is involved.

    I think this claim could be fixed (at least with respect to 101) by clarifying how the obtaining is done and by limiting the “channels” to specific channels that are more clearly only utilized by machines.

      1. 2.1.1

        Doesn’t the data come over the phone?

        The claim doesn’t say that. It says that there was a transmission from the telephone, and that data transaction information was entered on the telephone “from” that transmission. All of that is external to the method steps, though. The claim doesn’t actually specify how the data transaction information is “obtained.”

        Although it’s a little unclear what it means for information “from a transmission” to be entered on the telephone that sent the transmission, it seems to me that if I look over your shoulder and read a text message you sent from your telephone, I’ve “obtained” the data transaction information of the claim. If I then recite half the message to one person, in one room, and the other half to another person, in another room, have I infringed the claim, all without manipulating a machine and all without transforming anything other than information?


          Something about a claim required to be read from the standpoint of an ordinary person in the art seems to make this extreme begging and dog and pony show to deny the claim more than just a little ridiculous.

          What’s next? Machines are not allowed because they think like humans?**

          **(they don’t – really, they don’t)


          Oh, looking at the patent, it appears that the obtaining step is better understood as: “obtaining, from a single transmission from a telephone, data transaction information entered on the telephone.”

          I think the court is right – all this says is “get information sent by telephone,” split it up, and send it to other “destinations” via multiple channels. The fact that the information was sent by telephone (in a step that’s not in the claim) is not enough to transform this generic processing of data into something patentable.


            Oh, looking at the patent

            ??? – Did you actually look at the patent?

            If you have not, then do so.

            Start at page one and tell me (with a straight face) that you honestly believe that the contortions necessary here to remove what a person of ordinary skill in the art would understand the claim to mean would include the tortured renditions being given?


              Pull away from the specific claim. I could eliminate any claim with this approach — everything “involves” an abstract idea, or a natural law (ha!), or a natural thing. So, then there has to be “enough” more.


              … everything “involves” an abstract idea, or a natural law (ha!), or a natural thing.

              Yes, but that’s not the entirety of the court’s argument. It’s not the case that every claim wraps nothing of interest around the abstract idea or natural law. We already knew that a data collecting operation isn’t sufficient to transform an abstract idea into patentable subject matter. In this claim, the “obtaining” step is simply a data collection step, and the rest of the claim is just subdividing the information and “sending” it via unspecified channels.


              …the contortions necessary here to remove what a person of ordinary skill in the art would understand the claim to mean would include the tortured renditions being given?

              What “contortions” are you talking about, anon? The claim says “obtain information” from a telephone, “form” data nuggets by breaking the obtained information into different pieces, and “send” those different pieces to different “destinations,” via different “channels.” They use a lot of unnecessary words to claim that.

              Are you arguing that the scope of the claim is substantively different than my paraphrase above? If so, could you please explain how it is substantively different?


              Leopold asks “What “contortions” are you talking about, anon?

              Clearly, the contortions to remove the understanding of a person having ordinary skill in the art as to what the claims mean in light of the specification.

              There is no honest way to read the claims in light of the specification and render the judgement so rendered here. You have to be trying hard to over-read them – and not just by a little, but to over-read them to a ridiculous degree (like reading over the shoulder of someone using a phone – please!)


              There is no honest way to read the claims in light of the specification and render the judgement so rendered here.

              And yet you can’t identify a single substantive difference between my paraphrase of the claim and its actual scope. Fascinating.


              Do not confuse “have not” with “cannot.”

              Further – see my post at where I have given you what you asked for.

              You are doing that blind charging thing again…


              I could eliminate any claim with this approach — everything “involves” an abstract idea, or a natural law (ha!), or a natural thing.

              This has been the battle cry of the 101 defangers from the beginning. “Everything is ineligible if I thoughtlessly apply a bogus version of your test!”

              All you are proving is that you are desperately trying to miss the point. Intellectually it’s no different than the people who complain that their marriages are somehow being “attacked” if that gay couple is given the same recognition by the government.

              Step it up, man. There must be some good arguments for patenting the use of a telephone to distribute “new information.” Or not. But you can surely do better.

  6. 1

    For some reason, I am reminded of a quip about validity of patents existing only for those that do not appear before the special group of nine…

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