Dickstein Shapiro Dodges Malpractice Suit by Showing Long-Ago Issued Claims Were to Ineligible Subject Matter

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.

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.

131 thoughts on “Dickstein Shapiro Dodges Malpractice Suit by Showing Long-Ago Issued Claims Were to Ineligible Subject Matter

  1. 13

    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).

    1. 13.1

      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.

  2. 12

    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.

    1. 12.1

      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

      ;-)

  3. 11

    “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.

    1. 11.1

      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.

    2. 11.2

      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.

      1. 11.2.1

        …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.

        1. 11.2.1.1

          (I would add for the non-historically inclined that the adage of Nose of Wax is directly related to this legal concept)

  4. 10

    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.

    1. 10.1

      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.

      1. 10.1.1

        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.

      2. 10.1.2

        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.

        1. 10.1.2.1

          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

          1. 10.1.2.1.1

            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.

            1. 10.1.2.1.1.1

              Ned reminds me of the mindless propaganda machine – anyone here (yet) how Obama has responded to the (long overdue) Katznelson filing?

          2. 10.1.2.1.2

            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.

            1. 10.1.2.1.2.1

              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.

              1. 10.1.2.1.2.1.1

                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.

  5. 9

    Anyone want to hire Dickstein Shapiro as their legal counsel? If I were a client, I would be a bit concerned.

    1. 9.1

      With only a modicum of snark, good luck finding any counsel that can survive the shifting sands of 101 without blemish.

  6. 8

    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.

    1. 8.1

      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.

        1. 8.1.1.1

          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.

          1. 8.1.1.1.2

            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.

            1. 8.1.1.1.2.1

              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.

              1. 8.1.1.1.2.1.1

                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.

      1. 8.1.2

        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.

          1. 8.1.2.1.1

            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…

          2. 8.1.2.1.2

            Yes, and correctly so. Too bad there isn’t a jurisprudentially sound way to reach that outcome.

            1. 8.1.2.1.2.1

              there isn’t a jurisprudentially sound way to reach that outcome.

              I’m sure it seems that way from inside your cave.

              1. 8.1.2.1.2.1.1

                …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.

    2. 8.2

      UH grad (Houston? – I taught there long ago), the court did consider that. It’s a pretty convoluted discussion.

    3. 8.3

      This court addresses that in the context above: because 101 “always” meant what’s in Alice, it was applying the law of 1993. Yup.

      1. 8.3.1

        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.

        1. 8.3.1.1

          …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….

  7. 7

    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.

    1. 7.2

      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.

    2. 7.3

      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?

  8. 6

    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.

    1. 6.1

      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

      1. 6.1.2

        @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.”

        1. 6.1.2.1

          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.

        2. 6.1.2.2

          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.

    2. 6.2

      “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.

      1. 6.2.1

        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?

        1. 6.2.1.1

          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?

          1. 6.2.1.1.1

            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.

            1. 6.2.1.1.1.1

              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.

              1. 6.2.1.1.1.1.1

                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

          2. 6.2.1.1.2

            Judge Rich is an outlaw for reversing a 1908 case by the second circuit?! C’mon, you can do better than that.

            1. 6.2.1.1.2.1

              Check ALL the well established cases that Rich overturned in his career. It was his “specialty.”

      2. 6.2.3

        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.

    3. 6.3

      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?

      1. 6.3.1

        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.

  9. 5

    Given the plain and undeniable fact (unless your eyes are clenched tight, your fingers are in your ears, and you are chanting “La la la la la, this line of legal logic BLOWS UP the Supreme malfeasance on at least one of the following levels:

    The Judiciary does not have constitutional authority to change the law.

    The CURRENT batch of decisions (those that are deemed by the Court to be “active” and “good law”) are NOT compatible with each other and are clearly divergent and contradictory.

    The Court, faced with this – from a purely “we are not ‘changing’ the law” angle has only one option: rule the statute itself void for vagueness and kick the whole thing back to Congress to re-write.

    What the judicial branch clearly lacks (hello academics, anyone home?) is the authority to write statutory law to “fix” the statute – and as can be seen by any objective person, who reads ALL of the decisions, and notes who is saying what, when, there is NO way that all of this is “mere interpretation.”

    The statute is simply written far too simply and directly to support the train wreck that the Highest Court has unleashed.

    That wax nose has been burned and consumed in the fires of judicial activism.

    1. 5.1

      Probably one of the best pieces of evidence for what you are saying anon is Graham. If the SCOTUS wrote Graham after Alice it would have looked very different.

      1. 5.1.1

        No one has really come to grips with it yet, but Graham has been modified/overturned. In fact–not the bizzarro world that the anti-patent K street Google movement has built–Graham is overturned as a practical matter.

        1. 5.1.1.1

          Night, I don’t have a clue as to what you’re talking about. Graham concerned 103, not 101. How is Graham affected by Alice? Please explain.

          1. 5.1.1.1.1

            Ned, any real patent attorney that does real work knows how Graham was affected by Alice.

            If you get off the witch wagon and apply real art to real claims and try to make real arguments for the patentability of the claims, then you see that the art may be applied in two ways. One under Alice or another under Graham. In Alice a judge may merely gist away all details and decide the concepts are the same so your claim is obvious over the prior art.

            Come one. Any real patent attorney knows that Graham has been overturned by Alice.

            But, you have to do real patentability studies and under science to know that. That let’s out 90 percent of the Fed. Cir.

            1. 5.1.1.1.1.1

              Night, I still do not understand how you can say that Graham has been overruled. Alice is about identifying whether there is unpatentable subject matter in the claim, and then seeing whether there is invention in the patentable subject matter in the claim or whether the unpatentable is applied to transform the claim into something otherwise patentable.

              Now if the otherwise patentable subject matter is at least new, then it would be inappropriate to hold a claim invalid under 101 merely because it contains unpatentable subject matter. I don’t think that’s what Alice held. Rather, if the otherwise patentable subject matter is new, one has to determine whether that subject matter is patentable in its own right under 102/103.

              So the idea that Graham has been overruled rests on the notion about Alice which is not, in my opinion, correct.

    2. 5.2

      Please disregard that post. It was written by a troll trying to make me look like an obnoxious douchenozzle.

      1. 5.2.1

        Once again sister anon, no one cares whether you use such a moniker.

        This though – the purposeful deception by nym theft – only makes you (the real world you) an arse or worse.

        Son, if all that you can muster in reply is such p@thetic and low tricks (which f001 no one, and just are not funny), you need to do something else with your life.

        1. 5.2.1.1

          It may be nym infringement or nym misappropriation, but it is not nym theft.

          1. 5.2.1.1.1

            (s i g h)

            Merriam Webster:

            misapropriate:
            transitive verb
            : to appropriate wrongly (as by theft or embezzlement)

            1. 5.2.1.1.1.1

              you should be bolding the word “as” because:

              dictionary dot com

              as:
              adverb
              :for example, for instance.

              So misappropriation does not necessarily imply theft. Says the guy who goes on about “1nte11ectual h0n3s7y” or whatever.

              1. 5.2.1.1.1.1.1

                the word “as” does not reach what you want to reach.

                The word “or” though provides an option for misappropriation.

                Nonetheless, this being a blog, I think your pedanticism is well out of place and haw ZERO to do with any sense of inte11ectual honesty.

                1. …in other words, “theft” fits and is a perfectly good description of the purposefully offensive action.

                  One way streets though….

            2. 5.2.1.1.1.2

              Theft

              n.
              the generic term for all crimes in which a person intentionally and fraudulently takes personal property of another without permission or consent and with the intent to convert it to the taker’s use.

              So even with “misappropriation as by theft,” this situation is not theft. Therefore, is is not misappropriation as by theft.

                1. Unless of course it is overly pedantic (and makes no real difference to the point at hand).

                  That is decidedly NOT the type of victory to be aimed for, nor overly celebrated.

                  It just shows you being a schmuck.

                1. (when the filter does not allow quotes from Black’s Law Dictionary….)

                  OSitA,

                  Do you have access to a Black’s Law Dictionary?

                  My handbook version has the definition you provided, but does not stop there:

                  “2. Broadly, any act or instance of ste@l1ng, including l@rceny, burg1@ry, embez zlement, and f@1se pretenses.” (emphasis added)

                  Clearly my friend, the point of the matter is not the “property” aspect, as I have clearly stated that anyone can use the moniker. The point of the matter is the deliberate falsity and attempted mis-perception that the poster was attempting to lay ownership to a post that was not his.

                  The first post was indeed my property. The attempt was to take that property as if it were not anothers and “apologize” for it.

                  Deception layered with false politeness – an even more egregious and despicable act – and made all the more egregious as the blog only very recently removed two instances of the exact same behavior.

                  Do you really want to come down on the side condoning that behavior?

                2. and another try….

                  (when the filter does not allow quotes from Black’s Law Dictionary….)

                  OSitA,

                  Do you have access to a Black’s Law Dictionary?

                  My handbook version has the definition you provided, but does not stop there:

                  “2. Broadly, any act or instance of ste@l1ng, including l@rceny, burg1@ry, embez zlement, and f@1se pretenses.” (emphasis added)

                  Clearly my friend, the point of the matter is not the “property” aspect, as I have clearly stated that anyone can use the moniker. The point of the matter is the deliberate fals1ty and attempted mis-percept10n that the poster was attempting to lay ownership to a post that was not his.

                  The first post was indeed my property. The attempt was to take that property as if it were not anothers and “apologize” for it.

                  Decept10n layered with fa1se politeness – an even more egregious and desp1cable act – and made all the more egregious as the blog only very recently removed two instances of the exact same behavior.

                  Do you really want to come down on the side condoning that behavior?

    3. 5.3

      That wax nose has been burned and consumed in the fires of judicial activism. No one who writes like this has any business criticizing a court.

      1. 5.3.2

        The prose is outstanding. I would only add something about ‘curling and pointing in meaningless directions’.

  10. 4

    I don’t think this “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.” would be hard to do. Alice is written such that anything can be considered to be “abstract”, and you just modify what’s the “abstract” idea based on what result you want. Simply put, you could work backwards: determine the result you want (valid or invalid), then make sure the “something more” is as big as you need it to be to get your desired result. What’s left is the “abstract idea”. Make the “something more” smaller, and all you do is make the “abstract idea” bigger. It’s simple.

    1. 4.1

      As I have pointed out in the past, even non-criminal law (especially law that deals with property) can be found to be void for vagueness.

      The law cannot and should not be allowed to be such an indescriminate, “work backwards,” type of thing.

      Patent law after all remains statutory law – not common law (and yes, the gaping absence of the academics on the difference between the two is yet another “hey, WAKE UP” moment).

  11. 3

    To my mind all of these issues were obvious ones at the time of Alice. The fact that the SCOTUS didn’t address them is just further indication of their arrogance and the fact that Alice is judicial activism of the worst kind.

    1. 2.1

      It’s complete BS in my opinion. The “law” with regard to 101 has changed from “concrete, tangible, and useful” to “machine or transformation” to “abstract idea + something more” in the last 7 years or so. To say otherwise is ignorance. There are many cases that meet requirements under the two previous sets of “law” (think encryption, error correction coding, modulation, etc. on a single machine) that likely no longer meet those requirements under Alice.

      1. 2.1.1

        Actually, the best evidence of this is the SCOTUS denied cert of State Street and then many years later expressly overturned State Street in Bilski.

        1. 2.1.1.1

          Point to Night.

          I would like to look at the briefs to the Supreme Court in State Street Bank. It is wonder that they did not do something.

      2. 2.1.2

        ““concrete, tangible, and useful” to “machine or transformation” to “abstract idea + something more” in the last 7 years or so. To say otherwise is ignorance.”

        The first two tests were tests the federal circuit made up. They were never “the law.” Needing more than an abstract idea is consistent with every SCOTUS case on 101.

        1. 2.1.2.1

          topce,

          You are again exhibiting that unhealthy (and quite simply non-objective) “blind eye” treatment again.

          Using what has been actually said in the sum total of the Supreme Court cases, define “Abstract.”

          You do NOT get to “punt” like they have if you are going to turn around and say “gee, only Supreme Court cases count.”

          You have a fundamental flaw in your legal logic. Since you appear to be an examiner (and a very reasonable one at that), I can cut you some slack for not understanding how the structure of law works.

          Others here – and especially academics who teach this stuff do not (and should not) be treated so kindly.

          1. 2.1.2.1.1

            (You do NOT get to “punt” like they have if you are going to turn around and say “gee, only Supreme Court cases count.”)

            Not at all what I am saying. I am saying that if you look at SCOTUS’s opinions, they have consistently maintained that the Federal Circuit has arbitrarily narrowed the test under 101 and consistently maintained that significantly more than an abstract idea is required.

            SCOTUS never adopted any of the arbitrary tests. The Court consistently told the Federal Circuit it was wrong.

            The Court has never actually defined “abstract idea” but the court has given examples of things it considers to be abstract ideas (mathematical formulas, laws of nature, methods of conducting economic activity).

            The only anomaly was Diamond vs. Diehr, which also had very little to say about what exactly in the claims rendered it patent eligible.

            Honestly the more I think about it, the more 101 cases remind me of the old obscenity cases (“I know it when I see it”). This is how SCOTUS has treated 101 cases thus far. My position has always been that 101 is inconsistent and intellectually dishonest policy-making from the bench. The policy is sound, but there is little (no?) legal basis behind it.

            So in the end, we are left with very little. The only thing we can say about 101 is that an abstract idea will not suffice. Nothing has really changed.

            1. 2.1.2.1.1.1

              Where the concept of “abstract idea” itself came from is also dubious. It isn’t in the text of 101. So where did it come from? The “Federal Common Law of patents?”

              At the end of the day though, Congress hasn’t changed anything. So where does any alternate interpretation of 101 come from? SCOTUS has had the last word up to this point.

              1. 2.1.2.1.1.1.1

                Let me ask again:

                Define “Abstract.”

                Also – do a little reading on the difference between statutory law and common law.

                Rent the (older) movie: The Paper Chase, and note carefully the comment at the hour and six minute mark.

                For any lawyer worth their salt, this is basic stuff.

                1. (and let me make it clear, if you have not picked up on it yet – my beef is less with you, whom I will add a complimentary note that without legal training has picked up on the underlying B$), but more so with those trained in law and for whom have taken oaths (various states) to uphold the law vis a vis the constitution, but who rampantly seek to place their “policy” agendas ahead of what the statutory law actually is.

                  I will further note that I have yet to come across ANY state oath that places the judicial branch – including (especially) the Supreme Court above the constitution.

                  We have far far far too many people crying against “grifters” or for other “policy” drivers who themselves are bereft of legal ethics.

                2. Abstract: existing in thought or as an idea but not having a physical or concrete existence.

                  Sounds a lot like “useful concrete and tangible.” All well and good except for the fact that the word abstract appears nowhere in 101. It was all made up.

                  But a literal interpretation of 101 itself provides no useful guidance, so what are judges supposed to do? They are still required to resolve disputes.

                  What is 101 really? Does any body actually know? Everyone has their own little pet theory but the statute itself says very little. Judges are doing the best they can to make sense of a poorly drafted provision.

                  Congress is supposed to check the judicial branch when they don’t agree with their interpretations of laws. But congress hasn’t.

                  If it was just an issue of statutory law being disregarded, I would be one board. But nobody knows what the law means!

                  Perhaps 101 should have been ruled void for vagueness.

                3. isting in thought or as an idea but not having a physical or concrete existence.

                  That is explicitly NOT the definition used by the Court in Alice.

                  Do you want to try again?

                4. As for 101 itself, you are new here and may have missed my explanation.

                  101 is a wide open welcoming gate, with but two strictures:
                  1) the proper utility (useful arts and such)
                  2) able to gen erally be put into one (or more) of the four categories (See Chakrabarty).

                  It is NOT meant to be the “policy” atom b0mb that it has become from the “legislators from the bench.”

                5. the word abstract appears nowhere in 101

                  The term “mathematical equation” doesn’t appear in 101 either. Nor does the term “information.” You want to make some hay about that, too?

                  the more I think about it, the more 101 cases remind me of the old obscenity cases (“I know it when I see it”).

                  You should think about it a lot more, in that case. Or you could just ask questions if you have them. It’s really not that difficult.

                  Abstract: existing in thought or as an idea but not having a physical or concrete existence.

                  Sounds a lot like “useful concrete and tangible.”

                  It does, I suppose. But do you recall how the CAFC applied that “useful concrete and tangible” test to actual claims? It’s kind of important.

                6. “policy” atom b0mb

                  More like a “policy” pump designed to dredge the pond of toxic s c u m.

                  And it’s actually starting to work which is why the volume of your screeching has ticked up quite a bit lately.

                  Did I mention in January that it was going to be a really hard for you? Yes. Yes I did.

                7. Volume of my screeching – says the guy with the most words – by at least a factor of ten….

                  Lovely A.O.O.T.W.M.D

                  what a chump

                8. Abstract subject matter.

                  1. Subject matter that is non statutory.

                  2. Claiming a result, a.k.a., claiming an idea.

                  Per Flook (and Hotel Security, and Mayo, and Alice) invention must be in otherwise statutory subject matter.

                  Subject matter that is “abstract” can be applied to produce a new result, think “printed matter doctrine.” Thus the structure of the Alice test that sources all the way back to Le Roy v. Tatham.

                9. Ned,

                  You engage in circular or inopposite versions of cases that are just “not enough”

                  Abstract subject matter.

                  1. Subject matter that is non statutory.
                  is plainly circular.

                  That’s abstract.
                  Why?
                  Because it is non-statutory.
                  Why is it non-statutory?
                  Because it is abstract.
                  Return Do Loop

                  Are electrons, protons, and neutrons statutory?
                  Is the configuration of such statutory?

                  Software is a configuration, a manufacture by the hand of man in its own right, and a machine component.

                  Are you at least willing to be inte11ectually honest enough to start with these basics?

                  2. Claiming a result, a.k.a., claiming an idea.
                  You have some ground here, but then you muddle yourself with the inappropriate pick and choosing from the MESS that we are pointing to of “Per Flook (and Hotel Security, and Mayo, and Alice)

                  You need to realize:
                  Flook was cabined and is NOT good law unto itself.
                  Hotel Security is inopposite, for MANY reasons, including the explication from David Stein that you continue to simply ig nore, and the direction from Prof. Crouch that you are not applying that case correctly.
                  Mayo/Alice and the “modern” Supreme Court legislation from the bench violates the separation of powers

                  invention must be in otherwise statutory subject matter.

                  Invention is the claim as a whole for 101 purposes. You do not get to have the canard of “Point of Novelty” for 101. There is no such thing as “eligibility” of a claim element. Such is improper dissection.

                  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.

                  Subject matter that is “abstract” can be applied to produce a new result, think “printed matter doctrine.” ”

                  Your view of printed matter doctrine is EXCESSIVELY flawed. Until you grasp the whole doctrine, its actual history, the exception to the judicial doctrine, and the PLAIN FACT as explicated in my easy to understand set theory, anything you say on that matter means Nil.

                  Thus the structure of the Alice test that sources all the way back to Le Roy v. Tatham.

                  Only in your mind and your version do you see the “Alice test” in such a light.

              2. 2.1.2.1.1.1.2

                “Where the concept of “abstract idea” itself came from…”

                Le Roy v. Tatham.

                But it is now being applied to describe non statutory subject matter in addition to claims that are claiming results. Once one understands this (by reading the Supreme Court cases the Supreme Court cites), then everything become clear and simple.

          2. 2.1.2.1.2

            “Define abstract”.

            Sorry anon. That’s your job. Quit whining, construe “abstract”, advise your clients, and DO YOUR FN JOB. Don’t like it? Quit.

            1. 2.1.2.1.2.1

              It certainly is not my job and it certainly is not whining to point out the shortcomings of the Court’s own scrivinings.

              That’s actually an important skill for lawyers, my amorphous friend. Perhaps you can find some funny gifs…

              1. 2.1.2.1.2.1.1

                Ah, my mistake. I thought you were a patent attorney.

                A patent attorney’s job is to interpret the law and advise their clients on how to proceed. Patent attorney who complain about the difficulty of interpreting Alice are just whining that their job isn’t easy. System isn’t easy? System making unreasonable demands? Tough. Do your FN JOB or quit.

                1. It’s your mistake alright – just not the one that you were thinking of.

                  Read again 2.1.2.1.2.1.

                  I am perfectly happy and capable of advising my clients that the Supreme Court has boffed the law because they did not define “Abstract.”

                  If you had any sense at all, you would realize that attorneys do not get to do the job of EITHER legislators, nor judges.

                  6 – celebrating someone else’s pointlessness like it’s a good thing neither makes it a good thing, nor reflects well on your “judgment.”

                  But I am not surprised…

                2. Don’t you ultimately have to provide advice for your clients regarding the current state of 101? Or do you refuse to consider Alice when you file an application? It seems unlikely that you could do your job without defining “abstract” for your clients.

                  Whining to your clients about the Supreme Court is a waste of their time and money. You’re usually so good at the distinguishing between desires and reality. What you want is irrelevant. How it “should” be is irrelevant. Just do your FN job or quit.

                3. “Bob”,

                  what part of:

                  I am perfectly happy and capable of advising my clients that the Supreme Court has boffed the law because they did not define “Abstract.”

                  did you not understand?

                4. Further,

                  I really do hope that you recognize that advocating on a blog is just not the same as “whining to clients.”

                  You are off, continue to be off, and are going MORE off with every post.

                  Seems we have done this little dance before.
                  Many times.

                  You never get the better part of the deal.

                5. “I am perfectly happy and capable of advising my clients that the Supreme Court has boffed the law because they did not define “Abstract.””

                  Sounds like blatant malpractice. And a violatin’ of your duty as an office of the court.

      3. 2.1.3

        I agree with you, PatentBob, that the Federal Circuit law changed. The problem was that State Street Bank itself overturned Hotel Security (and the C.C.P.A. cases that followed it) and Benson, neither of which a federal circuit panel had the power to do. It was simply a matter of time until State Street Bank was overturned. It was one of the most radical decisions ever panned by Judge Rich, and he penned quite a few radical decisions.

        Only those who first learned patent law recently with think there was a change in law in Bilski and then in Alice. The real seismic change took place in State Street Bank.

  12. 1

    “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.”

    And there’s some judge, in some courtroom, in some district, no matter how convoluted the argument that would be gullible enough to buy into it.

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