By David Hricik
This one will make your head spin, especially the statutory construction part. The case is Encylopaedia Britannica, Inc. v. Dickstein Shapiro LLP (D. D.C. Aug. 26, 2015).
The Dickstein Shapiro firm was retained by Encyclopaedia Britannica, Inc. (EB) in 1993 to file a patent application. The patent issued, and in 2006 EB sued several companies for infringing it. The patent was held invalid due to “an unnoticed defect” in the 1993 application. The basis for invalidity was not 101, however.
EB then sued the law firm for malpractice in prosecuting the 1993 application. EB contended that, but for the firm’s negligence, it would have made a lot of money in the infringement suit.
After the malpractice suit was filed, Alice was decided. The firm then argued that, as a result, the claims were ineligible and so any malpractice by it in 1993 could not have been the but-for cause of harm. The claims would have been “invalid” under 101 even had it not botched the 1993 application, and so there was no harm caused by any error it made.
To put this in context: Because of a 2014 Supreme Court decision, the 2006 case would have been lost anyway because, in 1993, the claims were not eligible for patenting.
And the argument worked. The district court granted a motion to dismiss for failure to state a claim, finding the subject matter ineligible on the face of the patent.
I’ll leave the merits of that to others.
What is interesting is the court’s approach to retroactive application of Alice. The issue was whether in the 2006 case, even had the firm’s alleged malpractice not caused the invalidity judgment, the claims were “invalid” under 101 then. The district court held that Alice did not change the law, but merely stated what it had always been. Specifically, the district court stated:
When the Supreme Court construes a federal statute… that construction is an authoritative statement of what the statute has always meant that applies retroactively. Alice represents the Supreme Court’s definitive statement on what 101 means — and always meant. Because the underlying case is governed by 101, it is appropriate for this Court to apply the Supreme Court’s construction of 101 as set forth in Alice.
(Citations omitted).
For this and other reasons, the court reasoned that “the only rule that makes sense in this context is to apply the objectively correct legal standard as enunciated by the Supreme Court in Alice, rather than an incorrect legal standard that the [district court in the 2006 infringement case] may have applied prior to July 2015 [when the court was deciding the motion.]” The court then applied Alice and found the claims “invalid” under 101.
There’s a lot to unpack here.
First, the retroactivity of Alice bodes ill for lawyers who obtained patents now being held “invalid” under 101. If the law “always” was this way, why did you advise your clients to spend so much money on a patent so clearly invalid that a judge could decide it by looking at it? But keep reading, because you and I know Alice and the rest changed the law. (Indeed, the USPTO changed its examination procedures to adjust to it!)
Second, there could be enormous consequences if Alice changed the Court’s prior interpretations of 101.
While as a matter of statutory construction the retroactivity principle relied upon by the district court is correct, retroactivity does not ordinarily apply when an interpretation is changed. (This perhaps explains why the Supreme Court is careful to avoid saying it is changing an interpretation, because changes to interpretations of a statute are prospective, only, as a general rule. In that regard, think about Therasense for a moment.) So, if Alice changed the law, then the district court was likely wrong to apply it retroactively.
More broadly, however, if Alice (and the rest) changed the meaning of 101, then it means many patents now being held “invalid” should not be judged under Alice.
I’ve been waiting for someone to make the retroactivity argument (as with Therasense, which clearly changed the CAFC’s interpretation of “unenforceability”). It would be fun to try to see someone use Alice and apply it to the Supreme Court line of cases and make them all fall in a line.
Maybe I misunderstand something important about the applicable law on malpractice in this case, but it seems incorrect to apply Alice retroactively on the question of causation. That strikes me as primarily a factual inquiry, not a legal one: at a particular point in time, did the alleged negligent act or omission cause the plaintiff to suffer a loss? The state of the law as it was during that time period determines whether the negligence actually caused the plaintiff any harm. It seems odd to disregard actual causation in the real world, and instead imagine how the infringement case would have turned out in a legal world that never existed (i.e., Alice as controlling law for a case filed in 2006).
Andrew, I agree. EB lost its patent b/c of the defect. If the patent was “always” invalid under 101, EB has an additional reason to complain about the law firm’s representation.
Angry, uninformed comment.
Stupid Acronym.
Dodging question by saying I’ve already answered question beforehand. more bold text.
Go watch this movie at the one hour and six minute mark.
DO YOUR F N JOB.
lol – love the icon, sister anon.
Have you watched the movie? Do you have a clue?
Try to be a little less angry and a little more informed. You have a moniker reputation to upkeep
😉
“This perhaps explains why the Supreme Court is careful to avoid saying it is changing an interpretation, because changes to interpretations of a statute are prospective, only, as a general rule. In that regard, think about Therasense for a moment.”
Why? It seems absurd that somebody should still be deemed guilty of inequitable conduct just because their case was adjudicated before the misunderstanding of law got corrected.
Ken,
The point was “notice” and due process.
You cannot change the law (gen erally) and apply that changed law retroactively, without violating certain aspects of notice and due process.
This – like the void for vagueness doctrine – are often more readily brought to mind in criminal law matters, but can (and do) apply in civil matters, notably in situations involving property rights.
As Roger Goodell just discovered…
We’re entitled to rely on the law. The fiction when the statute is not yet construed is that, once it is, the interpretation is retroactive because that’s what it “always” meant. But when a court changes a prior interpretation, the notice that the court gave as to what the law meant was ‘wrong’ and so is prospective because of reliance issues.
The same weird fiction underlies the common law: courts are just “saying what’s always been there.” I don’t know the rule if a court switches a common law meaning, however. I assume that’s rare because a court can always say “well that case is limited to its facts” and dodge that issue.
…the ex post facto effect.
For example, see U.S. Constitution Article I, Section 9, Clause 3, or Article I, Section 10, Clause 1.
And yes, Article I pertains to the Legislature – the very same (and only branch of the government that has been allocated authority to write the statutory law that is patent law. Anyone wanting to make an argument (no matter how weak) that Congress has shared that allocation with the judiciary must accept that any such sharing necessarily carries with it the ex post facto effect.
(I would add for the non-historically inclined that the adage of Nose of Wax is directly related to this legal concept)
In a nutshell:
There is a clear difference from the looking at each element AND looking at the claim as a whole compared to what you (and Malcolm) are attempting with a “take the claim as a whole AND dissect it, then if one element is not to your liking, Gist away the rest of the elements, point to that one element, call it the “Point of Novelty” and attempt to apply 101 to that less than whole claim element.
looking at the claim as a whole
Tell everyone exactly what you mean by this, “anon”, instead of spewing it out like some kind of magical spell that’s makes all your problems disappear. You and your cohorts tried that latter tactic already. It failed.
And it’s always going to fail for the simple reasons I’ve explained over the many years here hundred and hundreds of times.
It means that even if wood and canvas are ancient, configuring them to make a flying machine can be new, so you can’t just find the sub-components of a claim to be ancient and therefore declare the claim to be of something ancient. You have to consider the claim as a whole.
“for the simple reasons I’ve explained”
Wow, talk about your “some kind of magic spell”….
Your “explanations” are nothing but short script ad hominem and b@nal canards notably without addressing ANY of the counterpoints presented to you.
Somehow you think that your “hundreds and hundreds of times” has any value when each time is actually a negative value.
Wake up son.
Your “explanations” are nothing but short script ad hominem
There’s nothing “ad hominem” about pointing out that a claim in the form
[oldstep]+[newthought]
impermissibly protects the step of [newthought] when viewed from the perspective of those practicing the prior art [oldstep].
Like I said, that’s just basic reason and logic. That’s why Prometheus was a 9-0 decision that will never, ever be overturned. As long as any patent system relies on words to describe innovations, this fundamental principle will remain a key part of that system.
What’s sad is that you and your cohorts have such great difficulty admitting this. Either you’re incredibly ignorant (sad) or incredibly dishonest (sad) or both (really, really sad).
The funny part is that, at this late date, most of the world can see right through you and your fellow professional dissemblers, “anon”, but for some reason you keep pretending that’s not the case.
Maybe you should try arguing some kind of religious exception to the Supreme Court’s holdings. LOLOLOLOLOL
MM, as well, I don’t think that Congress will legislatively overturn Bilski->Alice as those cases are in line with suppressing the troll phenomena.
Ned reminds me of the mindless propaganda machine – anyone here (yet) how Obama has responded to the (long overdue) Katznelson filing?
You have confused yourself again in the land of the mere aggregation.
Not sure what your point is with the “religious”angle, maybe make your point with those short and direct sentences you are always on about.
You have confused yourself again in the land of the mere aggregation.
Spewing “Mere aggregation! Mere aggregation!” doesn’t answer the question you were asked.
But you knew that already.
It absolutely does answer it Malcolm.
In a short declarative sentence even.
That you don’t want to understand that answer is a “you” problem.
And yes, we both already knew that.
Anyone want to hire Dickstein Shapiro as their legal counsel? If I were a client, I would be a bit concerned.
With only a modicum of snark, good luck finding any counsel that can survive the shifting sands of 101 without blemish.
Hear hear.
There’s law at least in some states that says for malpractice cases you evaluate the law as it stood at the time of the act of malpractice, not forward looking. Not sure if that was considered in the decision or not.
Shall we take a look at what Apple, Google and Facebook are filing in the wake of Prometheus and Alice to see how much the typical patent attorney cares about “the law as it stands”?
It’ll be fun. I promise you that.
Oh, you’re of the opinion the law won’t have changed in 5 years? Serious guy!
Oh, you’re of the opinion the law won’t have changed in 5 years
Not at all. Of course the law is going to change.
But it’s never going to be the case that your subject matter eligibility problems disappear just because you recite “computer” or “take a blood sample” or any other old “technology” in your claim.
That’s what the Dierhbots wanted (and we all know why).
The people who think Prometheus v. Mayo can be “overturned” are the people who either (1) don’t understand what the case was about or (2) don’t care or (3) both. That’s been established.
You’ve lost your way in that mere aggregation land again…
Under the “concrete, tangible, and useful” test of years past, many claims that are now ostensibly invalid under Alice would’ve been approved by everyone (including the courts). Under the subsequent “machine or transformation” test, ditto. It’s worse than trying to hit a moving target, because at least with a moving target, you have some idea which way it’s going. With the SC, you don’t.
It’s worse than trying to hit a moving target, because at least with a moving target, you have some idea which way it’s going. With the SC, you don’t.
Except some of us can see which way it’s going, PB.
And we’ve been telling you for a long time now. And we’ve been right for a long time now.
Let me guess: you watch a lot of Fox News and you’re really impressed by Bill Kristol. Cuz he’s super smart. After all, he’s on TV. Right? Yes, we are familiar with the “it’s all so confusing!” class of patent attorneys out there. Real deep thinkers. Maybe just stockpile your ammo and stay away from patents for a while.
Let me know when the law is changed to what you want by the branch of the government actually authorized to write patent law.
Perhaps you reacquaint yourself with the fundamental understanding of the difference between statutory law and common law.
Well, LinkedIn is still filing totally abstract concepts as “inventions”
See application 20150248647
1. A memory device, the memory device communicatively coupled to a processor and comprising instructions which, when performed on the processor, cause the processor to: receive a message from a member of an online social networking service indicating an interest in applying for an employment position; compare a profile of the member against one or more requirements for the employment position, one or more members of the online social networking service currently employed in the employment position, and profiles of other members who have indicated an interest in the employment position; compute a rank of the member based on the comparison of the profile of the member to the requirements for the employment position, the comparison of the profile of the member to the one or more members currently employed in the employment position, or the comparison of the profile of the member to the profiles of other members; and transmit a message to the member regarding the rank of the member.
Pure junk that will never, ever be enforceable.
Wrong MM- if that patent issues, LinkedIn will be able to lean on peoplez with it, and it will be constructively enforceable because some sucker will have to pay a million bucks to kill it.
That’s the brutal truth of the system, and it’s barely budged post Alice, Octane Fitness, etc…. Even an IPR gonna be half a mil with the trimmings….and no chance of fees back there…
Yes, and correctly so. Too bad there isn’t a jurisprudentially sound way to reach that outcome.
there isn’t a jurisprudentially sound way to reach that outcome.
I’m sure it seems that way from inside your cave.
…cave…?
This from the guy who wants to block protection on a per se basis for the modern era’s number one form of innovation (and accessible by the most people, yet somehow he portrays as class warfare like uber rich only type of thing)….
He funny.
Why are you insulting? What does that add? @sshat.
UH grad (Houston? – I taught there long ago), the court did consider that. It’s a pretty convoluted discussion.
This court addresses that in the context above: because 101 “always” meant what’s in Alice, it was applying the law of 1993. Yup.
2006, when suit was filed (or 2009 when summary judgment was entered). The point’s the same: 101 always was Alice (and Bilski and Myriad and…), according to this court at least.
…and that’s the fallacy made Supremely evident because the “always was” is simply incongruent with itself – no matter what (poor) attempts at scrivining the Court has done, the decisions are NOT in fact congruent.
One only has to pay attention to the FULL decisions (dissents and dissents dressed as concurrences) to objectively see that.
A rose by any other name and all….
why did you advise your clients to spend so much money on a patent so clearly invalid that a judge could decide it by looking at it?
What a great question. I’ve been asking that question of the shallow-thinking defenders of the worst junk ever granted by any patent office in the history of the world for many years now. Nice to see David starting to ask the question as well.
It’s an especially great question given how many people out there were explaining to everyone for a long, long time exactly why the law set forth in Prometheus and Alice was always the law.
But then again you had a hard time with that, too, didn’t you?
Please share with everyone the embarassing claims at issue in this case, David. It’s rather odd that you chose to bury them.
Your sarcasm detector needs lube.
I think that he might think that that is a good thing…
It’s the usual garbage, MM. There’s no way any of this was ever statutory and no one can be held liable for the fever dream of State Street anymore.
7,051,018
1. A computerized map system, comprising:
a computer readable storage medium;
computer software stored on the storage medium and operable to:
cause an image of at least a portion of a map to be displayed on a display screen;
provide a zoom feature wherein portions of the map can be viewed on the display screen in various scales;
provide a pan feature wherein the user may provide input to cause the map image on the display screen to pan in a plurality of directions;
display a plurality of place indicators on the display screen, wherein a specific place indicator indicates the position of a place on the map and indicates that further information about the place is available;
display text information associated with a first one of the plurality of place indicators in response to input from a user indicating selection of the first place indicator;
provide a text browse feature that allows the user to browse a first list of places, select a first place from the first list, and display an image of a part of the map indicating the location of the first place in response to input from the user; and
provide a text search feature that allows the user to enter textual search information to search for a second place, receive a second list of places in response to the search, select a second place from the second list of places, and display an image of a part of the map indicating the location of the second place in response to input from the user.
And 7,082,437
1. A machine-implemented method for retrieving information, comprising:
storing textual information and graphical information of any type on a computer-readable medium in at least one database;
providing a plurality of entry paths for searching at least a portion of the stored textual and graphical information, each of the entry paths capable of being used without regard to the other entry paths, the entry paths comprising:
at least one textual browse entry path allowing a user to select textual information from a predetermined list of textual information;
at least one textual search entry path allowing a user to enter text to search for in the stored textual information; and
at least one graphics entry path for graphically searching at least a portion of the graphical information;
retrieving textual information based on input of the user in the textual browse entry path or the textual search entry path;
providing a first indicator associated with the retrieved textual information indicating the availability of associated graphical information;
retrieving the associated graphical information in response to input of the user associated with the first indicator;
retrieving graphical information based on input of the user in the graphics entry path;
providing a second indicator associated with the retrieved graphical information indicating the availability of associated textual information; and
retrieving the associated textual information in response to input of the user associated with the second indicator.
Owen, being Owen….
And why did the patent office hand a private party a weapon of mass economic destruction when a judge could see it’s invalid on its face?
And why does the patent office get off without any penalty or disincentive of any kind to keep doing it?
…because neither the Executive nor the Judiciary get to set the rules.
David, State Street Bank shocked the world with its audaciousness — overruling Hotel Security, and overruling in the process, Benson. Congress was concerned. It passed 273 to control the damage. Eventually, Bilski and then Alice demonstrated that it was State Street Bank that was out of step with the Supreme Court.
Retroactivity? Hardly. State Street Bank was and still is THE problem. Nobody should have taken that case to the bank, as it was just a matter of time until it was overturned.
Eventually, Bilski and then Alice demonstrated that it was State Street Bank that was out of step with the Supreme Court. Retroactivity? Hardly. State Street Bank was and still is THE problem.
Yup.
But as we can see from recent threads, the True Believers are hard at work on their revisionist history, planning for the awesome day when scrivening circles around subject matter eligibility is totally legal and Prometheus and Alice will seem like a bad dream.
Unfortunately that day is never going to come. But David Hricick can’t be bothered to teach that simple fact to people. It would be irresponsible to speculate why.
LOL
^^^ what an arse
The A.O.O.T.W.M.D. back in full bloom….
@MM “Unfortunately that day is never going to come.”
Alice and Mayo are closer to being overturned every day the CAFC exists. Still the best thing ever written about patent law by a Ge nerally insightful commentator (back when Mayo was handed down):
“How long will it take the Federal Circuit to overrule this inexplicable nonsense? The novice reader may find that question to be ignorant, since the Supreme Court is the highest court of the United States. Those well acquainted with the industry know that the Supreme Court is not the final word on patentability, and while the claims at issue in this particular case are unfortunately lost, the Federal Circuit will work to moderate (and eventually overturn) this embarrassing display by the Supreme Court. This will eventually be accomplished the same as it was after the Supreme Court definitively ruled software is not patentable in Gottschalk v. Benson, and the same as the ruling in KSR v. Teleflex will be overruled.”
Alice and Mayo are closer to being overturned every day the CAFC exists
What is there to overrule in Alice? The Supreme Court turned its back on identifying what is meant as being “directed” to an “abstract idea.” You cannot overrule what wasn’t there to begin with.
“ Supreme Court definitively ruled software is not patentable in Gottschalk v. Benson”
How does that match up with the exact opposite of:
“We do not so hold“…?
Serious question.
But now you are dealing with a Fed. Cir. that was chosen by Google.
“It passed 273 to control the damage. Eventually, Bilski and then Alice demonstrated that it was State Street Bank that was out of step with the Supreme Court.”
Ned, if Congress felt that claims like State Street were invalid then they could have just amended 101 to invalidate business methods. By passing 273 instead of amending 101 to invalidate business method claims implies that congress approved of the eligibility of business method claims. I am convinced this is why Roberts sided with the majority in Bilski. Stevens’ “red herring” dissent regarding this point was a joke.
The other problem with State Street is that the Supremes denied cert. Seems reasonable to rely on this as good law. You complain about Judge Rich a lot in the State Street ruling but the Supremes did worse damage by denying cert. (not only in State Street but a lot of other software cases as well) and then 15 years later issuing a ruling which invalidates tons of patents retroactively.
By the way, before State Street, the USPTO had already removed the “business method rejection” from the MPEP and considered these types of claims proper (obviously otherwise the State Street patent wouldn’t have issued). At that time this seemed to be where things were headed. I’ve been practicing a very long time and when State Street came out there was more praise than criticism. I’d love to see an article criticizing the State Street decision immediately after it came out.
By the way, Ned, you keep referring to the “Hotel Security” case which I am not familiar with. Could you please post a link to the decision?
Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2d Cir. 1908).
I downloaded 160 F. from Bulk Resources. But the link is not working now.
Does anyone know why?
Ned, it is just insane for you and the group of anti-patent people to try to use case law that pre-dates modern information processing.
It illustrates such an ignorance of science and the patent system as to shame our entire community.
Night, Hotel Security held that business methods were not patentable subject matter under 101. That was good law at the time of the ’52 Act, and was good law until 1998.
Congress clearly thought differently Ned, and as patent leather reminds you of what I have previously put on the table for dialogue, Congress would not carve out a certain limited protection for something that – in your IMHO-world, did not NEED any protection in the first place.
But go ahead and pretend that you are being shouted down again when what is happening is that you are being implored to discuss an inconvenient (for you) reality.
and the Merry Go Round continues
Judge Rich is an outlaw for reversing a 1908 case by the second circuit?! C’mon, you can do better than that.
Check ALL the well established cases that Rich overturned in his career. It was his “specialty.”
of course, much expected silence from the muscachioed maven
Points to you.
Praise of State Street Bank? I didn’t praise it. I was shocked.
But I grant you, the likes of IBM were thrilled. But at the time, IBM was all for software patents and saw the Supreme Court as the problem and Judge Rich as their white night.
At the time, however, I was becoming aware that Judge Rich was way out there, a radical among radicals. Never will we see such radicalism again. I hadn’t paid much attention to 101 as computer hardware, where I practiced, had no 101 issues to speak of.
State Street Bank was certainly an odd decision, but what are you suggesting here?
Should everyone have ignored the CAFC decision? Didn’t SCOTUS deny the petition to review State Street?
Well, you are right that not taking the case on cert was a form of endorsement.
I wish someone would post the briefs to the Supreme Court in that case to understand why they might not have taken the case. But at the time, a lot of us wanted to first see what would happen before recommending a legislative reversal. So, the only thing we could think of to contain the damage was 35 USC 273.
Within a very short time, the troll phenomena really took hold due to State Street Bank. Complaints rose. The PTO, thanks to Dudas, picked up the fallen flag, circled the wagons, and began once again to fight the good fight. We got Bilski. That opened the floodgates of Supreme Court intervention big time.