If the software method is not patentable, then neither is the “computer readable medium”

CyberSource Corp. v. Retail Decisions, Inc. — F.3d — (Fed. Cir. 2011)

In an important decision, the Court of Appeals for the Federal Circuit has rendered many broadly written software patents invalid under 35 U.S.C. § 101 as interpreted by Bilski v. Kappos, 130 S. Ct. 3218 (2010). Most patent decisions involve questions of whether an invention is obvious under 35 U.S.C. § 103(a) or sufficiently described under 35 U.S.C. § 112. Section 101 asks a slightly different question – whether the patented invention is the type of innovation that properly fits within our patent system. In language virtually unchanged for over 200 years, Section 101 indicates that a patent should be awarded to the inventor of “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Over the years, courts have repeatedly held that Section 101 bars the patenting of ‘laws of nature, physical phenomena, and abstract ideas.’

CyberSource’s patented invention is simple: when validating online credit card purchases, use IP address information (such as IP addresses) as a check against fraud. Thus, the patented method might raise a red flag if someone attempts to make a large internet purchase through an IP address that had previously been used for a fraudulent transaction.

In the lawsuit, CyberSource only asserted two claims: Claim 3 is the method of fraud detection roughly described above and Claim 2 is directed to a “computer readable medium containing program instructions” for causing a computer to perform the method. Claim 2 is written in “Beauregard” form. See In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).

The claimed method is written as follows:

3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:

a) obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;

b) constructing a map of credit card numbers based upon the other transactions and;

c) utilizing the map of credit card numbers to determine if the credit card transaction is valid.

Machine-or-Transformation: As written, the claim does not require the use of any machine and it does not require the transformation of any article into a different state or thing. Here, the court repeated its stance that mere data gathering steps such as “obtaining information” cannot be sufficient to “make an otherwise nonstatutory claim statutory.” And, although the patent is designed to facilitate transactions over the internet, nothing in the claim actually requires that the internet be used. Finally, data structures such as the claimed “information” and “map of credit card numbers” will not be considered technical because they could be simply written down using pencil and paper. Thus, at the outset the claim fails the Machine-or-Transformation test that the Supreme Court identified as an important clue of patentability under 35 U.S.C. § 101.

Because the machine-or-transformation test offers only a legal clue to patentability, the court went on to consider additional indicia that led to the conclusion that the claim does not qualify for patenting under Section 101. In particular, the court focused on prior case law holding that mental processes standing alone are not patentable. CyberSource’s claimed method is such a mental process because it can be “performed … by a human using a pen and paper.” Thus, the claim is invalid.

Beauregard Claims: CyberSource’s claim 2 comes in a different form. However, the court interpreted it as “nothing more than a computer readable medium containing program instructions for executing the method of claim 3.” The most natural implementation of the invention is using software and the claimed “computer readable medium” is the storage device that holds the software.

The claim:

2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:

a) obtaining credit card information relating to the transactions from the consumer; and

b) verifying the credit card information based upon values of plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent, wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent,

wherein execution of the program instructions by one or more processors of a computer system causes that one or more processors to carry out the further steps of;

[a] obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;

[b] constructing a map of credit card numbers based upon the other transactions; and

[c] utilizing the map of credit card numbers to determine if the credit card transaction is valid.

Claim Form Versus the Underlying Invention: CyberSource argued that the claim is patent eligible per se because it is directed to a man-made article of manufacture – “a computer readable medium.” The court rejected that technical distinction. Instead, for patent eligibility purposes, the court directed focus away from the claim’s literal statutory category and instead focus on the “underlying invention.”

Regardless of what statutory category (“process, ma-chine, manufacture, or composition of matter,” 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes. Here, it is clear that the invention underlying both claims 2 and 3 is a method for detecting credit card fraud, not a manufacture for storing computer-readable information. This case is thus similar to In re Abele, 684 F.2d 902 (CCPA 1982). In Abele, claim 5 of the patent at issue recited “[a] method of displaying data” comprising the steps of “calculating the difference” between two numbers and “displaying the value.” Id. at 908. The court concluded that claim 5 was not directed to patent-eligible subject matter because it claimed an abstract idea. Id. However, claim 7 was argued to be different because it recited an “[a]pparatus for displaying data” comprising “means for calculating the differences” between two numbers and “means for displaying the value.” Id. at 909 (emphases added). Though claim 7 literally invoked an “[a]pparatus,” the court treated it as a method claim for the purpose of its § 101 analysis. Due to its “broad” and “functionally-defined” nature, the court found that treating claim 7 as an apparatus claim would “exalt form over substance since the claim is really to the method or series of functions itself.” Id. (citation omitted). Accordingly, the court placed “the burden . . . on the applicant to demonstrate that the claims [were] truly drawn to [a] specific apparatus distinct from other apparatus[es] capable of performing the identical functions.” Id. (citation omitted).

Here, the patentee was unable to provide suitable reasoning why the computer readable medium invention was fundamentally different from the method claim.

Pen, Paper, Computer: Following precedent set by Benson and Abele, the court here held that an unpatentable mental process remains unpatentable even when restricted to use on a computer.

Abele made clear that the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium. Thus, merely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test.

That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.

Holding: Invalidity affirmed. Neither the method nor the computer readable medium qualify as patentable subject matter.

428 thoughts on “If the software method is not patentable, then neither is the “computer readable medium”

  1. 428

    “And if a claim to a compact disc or piano roll containing a newly discovered song were regarded as a ‘manufacture’ and within Sec. 101 simply because of the specific physical structure of the compact disc, the ‘practical effect’ would be the granting of a patent for a discovery in music.” In re Alappat, dissent.

  2. 424

    Presuming you refer to the SCOTUS Bilski v Kappos opinion, then you are mistaken. The majority instructed “students of patent law” to look to the underlying “In re Bilski” opinion for guidance in the 4th paragraph of the opinion, which is section 1, and is not a minority part of the opinion. They go on to characterize each of the opinions from In re Bilski, and clarify that the MoT is not to be the only test, but that it is a very useful test. But they clearly invoke with aproval the analysis from In re Bilski of what constitutes a particular machine or transformation.

  3. 423

    Presuming you are referring to the above excerpt from Diamond v Diehr, you are mistaken. 5 of the 4 Justices fully joined the opinion. There is no minority portion of that opinion.

  4. 422

    Presuming you refer to the above excerpt from In re Bilski, you are mistaken. The opinion was fully joined by Michel, Lourie, Schall, Bryson, Gajarsa, Linn, Dyk, Prost, and Moore. Only Newman, Mayer, and Rader dissented. Linn and Dyk wrote separately to respond to the dissents, but still fully joined the opinion. Thus, there is no minority portion of the opinion in In re Bilski.

  5. 420

    “The claim is indefinite under 112, so indefinite in fact that it reads on a mental process. Therefore, we find the subject matter it was directed to unpatentable under 101.”

    “This is a really crappy picture of a cow, ergo pictures of cows are not art.”

    That’s my take on this decision. Both claims were trash under 112, and in a perfect world that would be the end of it.

  6. 419

    This discussion is fascinating, in that, just like the judges, everyone involved seems to be either for or against software patents, and finds arguments for and against. I think Beauregard was simply a cop-out. By the way, 101 is not set in stone. Direct complaints where they belong, to Congress. Let them make clear whether computer software is or is not patentable, rather than force every yahoo in town to add the silly CRM language, nowadays CRM non-transitory (even sillier). I think I remember it is up to them to make law, and not up to judges. “Judicially created exceptions” should be abhorrent, particularly given the age of most judges in the Court of Appeals and the Supreme Court, and their background.

  7. 418

    Highly entertaining–if you’re married to your cousin.

    The lack of case law is not puzzling at all, as explained in my post above.

  8. 417

    He is the John Madden of patent law.

    Highly entertaining and knows his stuff (having coached a Super Bowl winner and all)

    There most certainly ARE huge 112 issues with B-claims

    And yet, aside from the (many) complaints here, the absence of case law on the subject seems a bit puzzling…

  9. 416

    A couple of things:

    1) Harold Wegner’s inarticulation in the second paragraph quoted above rivals that of Timothy Dyk in the Cybersource opinion. For years now, his “email broadcasts today” have been yesterday’s news (if that). He is the John Madden of patent law.

    2) There most certainly ARE huge 112 issues with B-claims–of course the court will never want to address those issues, as they require both perspicacity and considered deliberation–2 things that are in short supply at the CAFC for one reason or another.

    3) Like I said elsewhere in this thread, so-called “system” claims should be the next illegitimate claim genus to fall. A claim can describe either a physical article or one or more steps of a process–I have seen more than one of these so-called “system claims” that attempt to be article/process hybrids, that are literally neither but instead are a mere conceptual framework without any required “reduction to practice” (reduction to either an article or a process). These should all be held invalid under 112p2 for failure to distinctly claim.

    Does anybody know of any such “system claim” that is on appeal to the CAFC under either 112 or 101 grounds, or both?

  10. 415

    “An integrated verification system” with a controller and “detector means”.

    LOL. What a total piece of cxxp.

    Computer-implemented biz method prosecutors really do practice at an infantile level. If only the PTO hadn’t wasted so much money on the giant playroom.

  11. 413

    Excuse me, maybe it was not raised at the Fed Cir but it was raised in a SJ Motion and Denied (ND Cal), lawyers usually check on procedural history. Denial of the 112 challenge led to the SJ Motion on 101. Check out the app as filed, handwritten comments, etc., however, it included a claim for “An integrated verification system” with a controller and “detector means”. Looks like a quickie app . . . . Perhaps someone already mentioned this info in the thread?

  12. 412

    PAGING DENNIS CROUCH…PAGING DENNIS CROUCH

    SHOW MORE COMMENTS TAG STILL NOT WORKING!!!!

  13. 410

    It’s about time the courts started to see through patentees’ device of throwing in language to the effect of “performed using a computer” in order to make their method claims patentable. Hopefully, this decision will help to improve the quality of issued patents henceforth. Those in the anti-software-patent set should also be pleased with this ruling, which potentially sets the stage for invalidating patents on software.

  14. 409

    It’s about time the courts started to see through patentees’ device of throwing in language to the effect of “performed using a computer” in order to make their method claims patentable. Hopefully, this decision will help to improve the quality of issued patents henceforth. Those in the anti-software-patent set should also be pleased with this ruling, which potentially sets the stage for invalidating patents on software.

  15. 408

    Sure. You can have your patent.

    Er … um … unless your invention is TOO valuable, of course.

    Like here.

    Regards,
    Your Friends at the CAFC

  16. 407

    Bravo! A Beauregard claim cannot render an otherwise unpatentable method patentable. Same as I have been opining since the Beauregard claim was invented.

  17. 406

    When fixing the machinery here, watch so as not to get splinters…

  18. 402

    Probably because in the public domain they’re not conveniently categorized. The only reason I find good art is that it is only halfway horribly categorized and the NPL is some of the best referenced works on the face of the planet.

  19. 401

    Praytell, what is “a particular machine”?

    for my common sense point of view a particular machine is a machine that is particular.

    In other words, merely syaing “machine” does not cut it. A particular machine can be one of a toaster, a lawn mower, a computer, a printing press, even a magic hat.

    If you tie your process to a particular type of machine, then you have tied to a particular machine.

    To me, this falls best to the mandate under 101 to stay true to the actual Congressionally chosen words. See page 6 of the instant decision, in a paragraph that is included, but all but thrown away for its actual meaning:

    In choosing such expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.” Bilski, 130 S. Ct. at 3225 (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)).

  20. 400

    ” I want examples of what constitutes a particular machine that is also a computer (I assume there is no particular reason why a computer cannot be a particular machine).”

    Well according to the SCOTUS, a machine is defined as follows:

    “In CORNING V. BURDEN, 56 U. S. 252 (1853) @ 56 U. S. 267-268 (1854), the Court explained: “The term machine includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.”

    Then in BURR V. DURYEE, 68 U. S. 531 (1863) the Court said ” a machine is a concrete thing, consisting of parts or of certain devices and combinations of devices.”

    Now I have not read this case but if computer readable medium is referring to a CD or other disc, that is certainly an article of manufacture or apparatus. And if computer readable medium is referring to a computer, that is of course a machine.

    And any 8th grader can tell you that software language is basically useless unless its running a computer/machine. So using basic science and common sense software is patentable, But of course we are dealing with the tea party of anti patents types out there and they can rationalize anything that’s a process, business method or software as non patentable subject matter.

  21. 399

    Maybe Wolf359 can offer some free help to Dennis to fix the blog’s “show more comments’ link.

  22. 398

    The plain and unambiguous meaning of § 101 is that any invention falling within one of the four stated categories of statutory subject matter may be patented, provided it meets the other requirements for patentability set forth in Title 35, i.e., those found in §§ 102, 103, and 112, ¶ 2.

    What we have here is a great p_1ssing match between the courts, and between the philosophical camps within and between those courts.

    WHO gets to decide what is the plain and unambiguous meaning?

    Because if an object is not an object but a process “for this section of the law” then “this section” is not really unambiguous, is it?

    should exhibit itself so manifestly

    Well now it does depend on who is making the “so manifestly” determination… Yet another layer of ambiguity because the wax nose of 101 can be (and is) constantly tweaked depending on just who is making that determination (and that determination is driven by personal philosphy).

  23. 397

    The plain and unambiguous meaning of § 101 is that any invention falling within one of the four stated categories of statutory subject matter may be patented, provided it meets the other requirements for patentability set forth in Title 35, i.e., those found in §§ 102, 103, and 112, ¶ 2.

    What we have here is a great p1ssing match between the courts.

    WHO gets to decide what is the plain and unambiguous meaning?

    Because if an object is not an object but a process “for this section of the law” then “this section” is not really unambiguous, is it?

    should exhibit itself so manifestly

    Well now it does depend on who is making the “so manifestly” determination… Yet another layer of ambiguity because the wax nose of 101 can be (and is) constantly tweaked depending on just who is making that determination (and that determination is driven by personal philosphy).

  24. 396

    The plain and unambiguous meaning of § 101 is that any invention falling within one of the four stated categories of statutory subject matter may be patented, provided it meets the other requirements for patentability set forth in Title 35, i.e., those found in §§ 102, 103, and 112, ¶ 2.

    What we have here is a great p1ssing match between the courts.

    WHO gets to decide what is the plain and unambiguous meaning of this sledgehammer of 101?

    Because if an object is not an object but a process “for this section of the law” then “this section” is not really unambiguous, is it?

    should exhibit itself so manifestly

    Well now it does depend on who is making the “so manifestly” determination… Yet another layer of ambiguity because the wax nose of 101 can be (and is) constantly tweaked depending on just who is making that determination (and that determination is driven by personal philosphy).

  25. 395

    Congress in all that time has chosen not to change the essence of what is patentable subject matter. I think they leave that to the wisdom of the Supreme Court.”

    So the Supreme Court cannot change that which is up to Congress to change.

    So I would say that your statement is lacking.

  26. 393

    Judge Dyk is a brilliant man. He really knows how to keep those patent prosecutors and their pesky little Beauregard claims under control. We could use more judges like him in my country.

  27. 392

    The vast majority of software algorithms are public knowledge

    If that is so, then why does the Office have such a hard time finding these things and thus eliminating the scourge of obvious patents?

  28. 391

    The vast majority of software algorithms are public knowledge

    If that is so, then why does the Office have such a difficult time finding these things and thus eliminating the “scourge” of obvious patents?

  29. 390

    What I observe is a fair amount of broken logic of how this patent system works if the aim is to promote the progress. I see the obvious unfairness of many parts of the system.

    It would be interesting if you decided to try and justify the system rather than to punt by saying I do not know the ugly little details, but I don’t blame you because I “know” you have a lot invested in the details, some of which you don’t care to challenge or expect to change in the near future. Your main job is likely not in getting laws changed so that they are “fair” to some X or Y that josex finds valuable but in working within the system for maximum benefit for Truth Hurts or for some other reason likely totally unrelated to josex (including possibly working to change key laws/court interpretations every once in a blue moon). I hope you don’t interpret this comment as an invocation of a morality card. I’m simply one who is concerned from a certain perspective that I imagine from your comment you don’t find very interesting or worthwhile tending to. No offense taken here. I don’t hang around patently-o, but I may visit once every blue moon. Carry on.

    [I got my “satisfaction” when I concluded (correctly or not) that this ruling is not as significant as I was hoping.]

  30. 389

    I’m well aware of other ways of solving problems, and have engaged in some of that myself over the years. Nonetheless, this was a nice algorithm for solving a hard problem.

    I don’t think you read the patent carefully enough, if you think the queues contain threads, or that this is a reinvention of something in STL. I suggest the front matter; if my preferred way of expressing these things were patent claims, why, I would write them myself (THAT, is a gripe, that the legal quest for generality detracts from the readability of the patent claims. I understand why they do it, but if the courts were going to crank down on anything, that would be my choice).

  31. 387

    I acknowledged that these are different but (I didn’t bother to state so initially and it doesn’t matter because..) the justification for the copyright approach would be similar to that scenario that would present itself down the line for patents on written material .. which is what software is.

  32. 386

    You didn’t read carefully. I said can you explain why anyone would want to copy or how it could be worth more than $100 (absent the patent threat).

    As for what is law, there is always hope that the constitutional argument will have an impact on a future court. I hope one day enough people will complain to Congress to overwhelm big money interests. .. or maybe a company like Google will decide that if anyone sues anyone using open source software for a swpat infringement, they will sue all the major players (nuke option). [This last would fail (not that Google or anyone else with lots of patents and disgust for most swpats would do such a sacrificial maneuver) because no court is going to let the us sw industry destroy itself. All sort so exceptions to the law and practice would pass if Congress didn’t act first.]

  33. 385

    You have it backwards. The Feds long opposed the Supreme Court. But now that Rich is no longer around, they are beginning to actually follow the Supreme Court. The loan holdouts, it seems, may be Rader and Newman. I say Rader because he did not buy into the MOT, and seemed to want to preserve Alappat and State Street Bank. He was on the court for both cases, and even wrote a somewhat “way out there” concurring opinion in Alappat. Read it and laugh.

    An excerpt:

    “Thus, in Diehr, the Court specifically confined the holdings of Benson and Flook to the facts of those cases. Significantly, the Court thereby refused to classify all algorithms as non-statutory subject matter. Only algorithms which merely represent discovered principles are excluded from section 101. The inventions in Benson and Flookinvolved such algorithms. In Benson, the invention was simply a way to solve a general mathematics problem; in Flook the invention was a way to obtain a number. Diehr, 450 U.S. at 185-86. In pronouncing the severe confinement of the earlier decisions, the Supreme Court restored the Patent Act’s clear meaning that processes and machines are patentable subject matter even if they include an algorithm. In the wake of Diehr and Chakrabarty, the Supreme Court only denies patentable subject matter status to algorithms which are, in fact, simply laws of nature.”

    link to digital-law-online.info

  34. 384

    They were trying to limit damage to their own portfolio.

    Yes, their awesome portfolio of ZERO patents and ONE published patent application….

    This is a recurring theme.

    Yes it is. Malcolm with his handwaiving vacuous legal positions, ZERO checks on facts and lots and lots of table pounding.

    T O O L

  35. 383

    They were trying to limit damage to their own portfolio.

    Yes, their awesome portfolio of ZERO patents and ONE published patent application.

    This is a recurring theme.

    Yes it is – vacuous handwaiving at law, zero checking of facts, but lots and lots of table pounding.

    T O O L

  36. 382

    David, I think they were addressing a powerful dissent by Stevens who was raising the very argument you think important and ignoring the differences between Diehr and Flook on what was going on in terms of data gathering and using the data.  Stevens essentially was doing just that, ignoring those elements of the claim.  The majority ended up making a flat out statement that one could not ignore the old elements, but had to consider the claim as a whole.

    So a lot of what the Diehr majority was talking about was in direct rebuttal to Stevens.  

  37. 381

    Well the fluff that the CCPA saw in prior Supreme Court decisions and chose to ignore the Supreme Court on review thought important.  Time and again they reversed cases written by Judge Rich.

    For example, in Bilski, all justices expressed "disgust" with "useful, concrete and tangible" of Alappat and State Street, both written by Rich, as was the Benson decision they overturned in '72.  link to digital-law-online.info; Read that opinion to see that it reflects a lot of the arguments put forth today by everyone on this blog who think that the Feds got it wrong in this case.  Rich made the arguments, but ignored the Supreme Court cases on
    processes.  

    Judge Rich tried, but failed, to change the law to allow patenting of programmed computers in defiance of the presidential commission, in defiance of the PTO, in defiance of the Supreme Court.  And you have the gall to say it was the Supreme Court that was wrong?

  38. 380

    The Hawk will not bring back comments because he only likes to pontificate and cannot handle the spotlight when it shines on his thinking.

    He only likes the view when he is leading the pack, which was happening with greater infrequency nigh his decision to stop comments.

  39. 379

    The vast majority of software algorithms are public knowledge. A 1% corner case will not convince me otherwise.

    I’m not so arrogant as to think that no one else can think of what I thought of. When another company needs to do what you did (either in your patents or in your trade secrets), they’ll find a way. As with all software, algorithms and programs, there are likely more ways to do any single task than you can cover in a single patent.

    Do you honestly believe that copying data from a smaller queue to a bigger queue is the one and only way to expand a list of threads? Ever look into STL?

  40. 377

    I’m sorry, IBP, I guess I did miss your point. On reading your post again, my understanding of your point has not improved.

    I think the issue of patentability of CRM per se was not addressed in Cybersource because the court held the program itself to be unpatentable.

    I listened to the oral argument. IIRC, when the attorney for the patentee began to contend that claim was a thing, the court asked whether encoding an abstract idea in Braile would make “it” patent eligible.

    The attorney said no, because of the PMD. He said the different here was that the program “had a functional relationship.” He did not explain what that meant, or the legal requirement of a functional relationship, although he did refer to In re Lowry.

    He was asked about Benson. Were the claims there to recite CRM, would the result have been different. In the end, the attorney agreed that it would not — not in that case.

    So, if you could explain yourself just a bit more, perhaps I can get back to you with an answer.

  41. 376

    Yes, I object to any patenting on a “new” way to use a common ordinary hammer.

    The new use does not make the tool newly patentable. It only covers the new use of the tool.

    New uses of known tools have qualified as patentable processes for the entire history of U.S. patent law. It has rarely been a source of controversy.

    Actually, objections to “new uses” have been raised and debated once before – when the biotech industry started patenting life-sciences techniques in the 1980’s. Opponents of patents in those areas objected very loudly, arguing that life sciences innovation didn’t need patent protection, and that “patenting life” was wrong (much like the ridiculous arguments about “patenting math”…) And when those opponents lost, they made very dire (and very familiar) predictions about the catastrophic impact that patents would inevitably have on life sciences research: NO NEW RESEARCH OR THERAPIES! EVERYTHING WOULD GRIND TO A HALT!

    Those predictions did not come to pass.

    We can (and should) have some very serious decisions about what high-tech healthcare costs. However, the question of the rate of healthcare innovation is easily resolvable: the last 30 years have been awesome for medical technology. Compared with today’s practice of medicine, healthcare techniques from the 1980’s looks like trepanning and leeches.

  42. 374

    In my amateur opinion, this is why they need to find a way out of software patents.. or to restrict it sufficiently (perhaps by paying attention to 112) that it essentially becomes something like a copyright case (narrower scope) where this issue of free speech has been considered a little more carefully (if not necessarily in ideal fashion).

  43. 373

    >> A CRM is not a magical portal to an ethereal, abstract dimension of thoughts and information. A CRM is a physical object with a particular physical structure. It does not encode bits and bytes; it has a specific physical structure of a sequence of magnetic charges, a sequence of chemically altered positions resulting in different optical characteristics, etc.

    If that is the case, then is there a single patent that is well-specified? Is there a single patented invention that has narrowed down the particulars of this atomic state? Section 112 states:

    “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

    So if you want your invention to be defined by these particulars, then you must define them. Since there is no source code of exact instructions and semiconductor level detail, you can’t be claiming anything of that specificity.

    If you don’t claim something of that specificity, then variations at that level are not a part that defines the claimed machine.

    In this case, as I recently commented, the alleged infringer can state their machine, in its natural state, behaves differently (it has no sw loaded). And any future use (eg, when sw is loaded) is but a distinct use of the SAME machine — which is not the patented machine.

    So this new machine was not infringed if the patent claim was specified at a high level and the producer makes an initial form of their machine that behaves differently from the patent description and “works” only later when it is put to the use as defined by the loaded software.

    So this new machine was no infringed if the patent claim was specified at a low level quantum level as that almost certainly won’t coincide with any produced machine at any point in time.

    If the claimed machine includes specific sw details, you can no longer claim that the machines that look alike at the high level are the same machines. We’d have to look at software details to see if they are really the same.. at which point we have walked right into copyright domain should we choose to invoke that. Copyright gives broader scope in what infringes or not, but it respect independent creation (which patent does not).

    To re-recap: A) If you specify at high level, then infringement doesn’t happen with machines that behave differently in “natural” state as claimed by alleged infringer. Any semblance of those machines (when being used) to this high level patented description is but that same machine looking like the patented one on the outside as it is used, but they are still different machines. There is no violation as the claim was over a machine with certain behavior, not over a process. And if the patent claim was a process claim, that process would have to apply to a machine, which wouldn’t be matched by the producer. B) If the specificity of the patent claim is at a lower level (b1) like software code details or (b2) quantum level details, then it surely would be very likely that infringement also does not happen or can be worked around at a fair cost and once and for all (eg, use a different chip or semiconductor process technology or different sw instruction setup). In the low level cases, copyright might apply anyway and perhaps be broader than would such patent claims.

    Now, I assumed the alleged infringer could define what their machine is just as the patent applicant does. Patent law makes reference to process and to machine. If the applicant can define these, why not the producer of a product? Note that the problem happens because you are trying to claim the software effect by using an existing machine hull. Naturally, if you come up with a novel machine body at some high level, then you have a hardware patent and anyone using an existing machine + software would be fine as well.

    If you want the courts to help you out with this software case, then you likely are cheating the producer, and in any case, you should not be looking a gift horse in the mouth.

    If you are not in favor of software patents, then keep up the good work.

  44. 372

    I think that if the claim as a whole reduces an article to a new state or thing (MOT) it is patentable. That is what, in my opinion, Diehr was saying this claim was — to a molding process that was within the MOT and not to a solution to a mathematical problem with a limitation to a particular use.

    Ned, if that were the case, then why did Diamond v. Diehr spend so many words on the issue of whether using a computer was equivalent to using a human mind?

    Under your rationale, that point is totally moot: whether you use a human mind or a computer, you are still transforming the article. The answer to the question: “Why is the use of a computer in this context patentable under 101?” can’t just be, “because it transforms an article”… because so does the “human mind” version, right? It’s a non sequitur answer, Ned.

    Under your rationale, that’s the end of the argument. Transformed article = case closed. Didn’t need the Supreme Court to weigh in on such a trivial question.

    But the Supreme Court did weigh in, and wrote a 28-page majority opinion that extensively discusses the differences between using a computer for this process and using a human mind, and why the former process is patent-eligible under 101. Specifically, the key question of 101 was: Why is using a computer for this task not equivalent to a “mental step?” And the answer… has nothing to do with with the transformation of an article.

  45. 371

    >> There is no requirement that the program have any functional relationship to the CRM whatsoever, as the “program” is not claimed
    >> What say you?

    The alleged infringer can state that their product does not infringe, as it is a single product as well, a general purpose CPU with assembly (old invention) which does very little. They can say that the machines are thus different machines.

    Then the infringer can appeal to a particular use of their product (initialized to a certain software state). The newly configured machine is no more a new machine as would a set mousetrap become a new mousetrap or a house with doors open become a different house then when doors were closed. [The house might be a computing house where motors and sensors cause doors to open and close based on prior state and optionally input from user.]

    So if your claim was of a machine, one indivisible item, then it is not being infringed by any other machine that can be reprogrammed and which behaves differently in its natural “claimed” state.

    You are at least touching upon the fact that a hardware implementation has differences to a software implementation.

  46. 370

    I’ll quote the Hawk, who did a good job summarizing this case:

    “This ignores that the claim inherently requires use of a computer, and applies to computer transactions.

    There is no way for the claimed fraud detection method to work without using a computer and tracking the Internet addresses used for purchase transactions.”

    link to patenthawk.com

    Come on Hawk, bring back comments. Your site needs it, otherwise your readership will decline.

  47. 369

    Well Jose_X, perhaps I was a bit harsh on you above.

    One day here and you have accomplished what malcolm has not been able to do for at least half a decade – learn something about the law.

    And the reason why things go against some of the things quoted from Gottschalk v. Benson is because they did go against Gottschalk v. Benson.

    Normally a court will label this as “overruling” – but not always. Nevertheless, the result is the same – the earlier decision is no longer Good Law on that point.

  48. 368

    Can you explain…

    Short Answer: Because that is the law.

    Long Answer: See my post above.

  49. 366

    Jose_X,

    Sorry, but the paucity of your knowledge of actual law is a far greater hurdle for me to overcome than I have either the time or inclination to attempt.

    But rest assured – you have no clue as to what you speak of.

    With that in mind, you will fit in well with many of the regular posters here (even [especially] those that do not change their names every week).

  50. 364

    The problems began when the CCPA begin to say that the Supreme Court was wrong and they were right on the issue of computer software.

    That would be incorrect, as the Supreme Court would flat out tell the CCPA so.

    What did happen was that the CCPA simply noted the fluff put out in a decision and knew that that fluff was not even dicta. It was philosophical grandstanding.

    Not everything put out by the Supreme Court is law.

  51. 363

    The Supreme Court is not a legislative body and Congress cannot leave law making to that body.

    The Supreme Court interprets the law. Period.

  52. 362

    They never considered the patent-eligibility of the program, Ned, because it is IRRELEVANT!!!!!

    I’m not at all suggesting that time and effort be spent resolving an IRRELEVANT issue–exactly the opposite, in fact!

    Ned, because you missed entirely the point of my brief and concise post,I have a feeling that this thread has outgrown its usefulness, and that its organization only permits functionality up to a certain size. It’s now unwieldy as a tool for discourse, so I’m out.

  53. 360

    Stein (Q1) Does the claimed technique preempt every use of an abstract concept?

    (A1) Clearly not. No one even raised this question as a serious argument.

    The defendants didn’t raise it because they weren’t engaged in all out nuclear war. They were trying to limit damage to their own portfolio. This is a recurring theme.

    Software inventions have just gotten a lot more complex. Patents in 2002 were directed to “e-commerce on the web.” Patents in 2011 are directed to (FICTIONAL INVENTION TITLE AND IDEA) “reconfiguring managed code for flexible deployment in dynamic mobile computing scenarios.”

    Right, except for all the lame claims I’ve posted in this thread and the earlier thread over the last few days and which issued on Tuesday and which took me five minutes me to find. Need more examples, David?

  54. 359

    “Describing the engine functionality in the airplane in more detail or less is irrelevant to a description of the functionality of the engine to the cart.”

    But but but, without the engine in the cart the airplane never goes anywhere it just sits there! And but but but, without the engine being in the cart the cart will never cause the airplane to go forward, go forward some more and go forward some more. The cart would lack that functionality without the engine being in it!

    Obligatory but but but, surely an airplane with an engine is different from an airplane without an engine!

  55. 358

    “A cart bearing an engine to an airplane has no functional relationship to the engine other than a conveyance function.”

    But but but, isn’t it a cart that, when the engine is used in the airplane, causes the airplane to execute a series of steps including going forward, going forward some more and going forward some more?

  56. 357

    “I can’t imagine how it would arise in that context. ”

    Which is why it has taken 15 years to get this in front of the court.

    That and also the apparently low numbers of B claims in litigation, they had a graph on some other blog that showed the numbers of B claims in litigation since they arrived and it was like 25, 50, 50, … until like 250 last year and like 150 this year. I’m not 100% sure who these litigants are (perhaps they have their own b claims they’d like to keep), or what kind of lame arguments they make against these claims, but we should have seen something, one would think, before now.

  57. 356

    David, the purpose of a B-claim is to be able to sue a seller of software for direct infringement — to avoid the knowledge of infringement requirements of 271(c).  There is no other purpose.  

    I know this because the IBMers who devised B-claims were at the time not chary of talking about the "unfairness" of 271(c) and the reason why B-claims were necessary.

  58. 355

    Well, IBP, the court never really addressed CRM's patent eligibility if the program were otherwise patent eligible.  That question was beyond the scope of the opinion, and will only be addressed, if ever, if someone is sued for infringement of a B-claim where the measure of damages is affected by the legal theory of infringement.  If it does, then I suspect the defendant will make an issue of whether a B-claim is really patentable subject matter.  Until then, why waste the time and effort if the outcome of the case does not depend on the answer?

  59. 354

    Yes, I am referring to 101.  I grew up at a time when one called 101 "patentable subject matter."  I tend to use patentable in that sense when talking about 101.

  60. 353

    I did say “if”

    From what I’d guess Computer Readable Medium might mean, it doesn’t appear to be a computer.

  61. 352

    “Would it put even more bees in your bonnet if I told you I signed the action myself?”

    Lulz, no, it would just confirm my original suspicion that you were probably one of the inept people with a sig.

    How you guys manage to make it through the program is a mystery to me. Maybe making it through the program is easier than it is over here. Over here if you make blatant errors of lawl, they charge you with an error in your sig program.

    “And yes, conclusion as in the normal sense of the word. I concluded it was a “finding of fact” in the legal sense.”

    So, you “concluded” that your assertion about what one “could detect” was a finding of fact that supported a rejection calling for what they actually do?

    Can I get an lol from the gallery?

    “so it was an obviousness argument.”

    Just fyi brosky, there is no such thing as an “obviousness argument” upon which you may base a rejection. Obviousness is a question of lawl, based on underlying facts. Specifically it is a question which requires you to make a conclusion. Not arguments. You either come to a conclusion of obviousness or you do not. You do not “argue” it. You can “argue” about whether or not your conclusion was correct or not, but that is plainly not what you’re talking about. What you’re suggesting is that argument may take the place of facts. That is, the rejection may be based on arguments and facts instead of only facts. Again, this is incompetent.

    “I don’t see why not.”

    First of all, the preamble probably includes the part about the computer, the part about the computer is not in the body. The body is just steps aka a method. I say probably because we’re addressing your case which I haven’t yet seen, but I presume it is standard B claim format where the computer is in the preamble.

    Second of all, because Venner did not even come close to addressing a CRM.

    And third of all, you seem to think Dyk should simply ignore the CRM part of the claim, but not ignore the computer part. Whereas he ignored both and called it a method. Both ways of viewing the situations are incompetent. Why substitute your brand of incompetent analysis for his own? If he’s going down the road of incompetence why not let him do it his own way?

    “And the human being cite was slightly facetious.”

    Ahhh, facetious. Gotcha, sorry, you had posted so much other incompetent things that you just did in an actual OA that I figured you were srs.

    Like I said, quit the board before you make us look even worse. k thx in advance.

  62. 350

    I don’t know the answer to that. I haven’t researched it. I indicated I really didn’t know, and I meant it. :-)

    OK, I did a tiny amount of research. I may suggest (devil’s advocate) that it’s a term used in other parts of law, so they might use it here to suggest that this test should be the first test done because it is the most basic and perhaps because it is independent of all the others while the others might not necessarily be independent of it.

    This is a guess.

  63. 349

    David, the CRM issue was tangential and really unimportant, in my view. The CRM issue will be joined if and when an otherwise patentable program is involved.

    I can’t imagine how it would arise in that context.

    Adding something to a patent-eligible invention cannot make it non-patent-eligible.

    The purpose of a CRM claim is to combine two items that are not eligible in isolation – a set of instructions as an abstract concept, and a physical medium carrying any instruction set – and to put them together to form a manufactured article that can solve a particular problem… and that should be patent-eligible as a physical article.

    It’s what used to be stated in 35 USC as a “combination” patent… until it was realized that all patented inventions are some type of “combination.” :)

  64. 348

    Ned–

    “old = not novel” Check.

    “old + obvious = obvious” Check.

    “includes nonstatutory s-m = 101 rejection” Check.

    The problem is that the nonstatutory s-m is only “added” to the claim, as you put it, under a literal reading of claim 2, but NOT under a figurative reading of claim 2, and that the court simultaneously uses both a figurative AND a literal approach to claim interpretation.

    So even though I agree with your third proposition, that proposition is inapplicable to this opinion, where an essential element of that proposition remains unresolved by the court.

  65. 347

    Sorry, the aside was from another comment I wrote quickly right before this one above. [search for “aside” and you will probably come across it.]

  66. 346

    >> And as obvious here, emotion tends to drown out reason.

    OK, instead of claiming that emotion in my case above drowned out my reason, why don’t you show where my reason failed.

    >> Software is a tool to DO SOMETHING.

    So can be and are math, literature, and music. These also have a great deal in common with software that is not shared by any invention that requires the creation of a never before seen machine. These are all processes of existing machines.

    What you find remarkable is that “software” is the language of Turing Machines + peripherals in common use today, but this speaks nothing of the ability for any other form of writing to be instructions to some machine or to explain why software should be given a patent or why such a patent promotes the progress or fails to stifle the progress.

    There is another aspect of software patents not discussed. No Fair Use has been defined clearly. That doesn’t mean no such fair use exists. Any use where enforcing infringement would not promote the progress would need to be something like fair use in order to be Constitutionally sound. Because of a number of reasons, perhaps all grounded in the “cheapness” of software (like any other form of writing or pure information), patent monopolies would take more out then they put in.

    Thank goodness Einstein did not have to deal with patents, especially not those “non-obvious” to a person having ordinary skill in the art.

    Anyway, the aside above is provoked by these sorts of questions about promoting the progress. A fair use that allows small firms and the millions of software developers to indulge in software (and not worry about reinventing something for example or coming up with a superior solution that is a narrow form of some patent) would be less likely to stifle progress or abridge free speech.

  67. 343

    David, the CRM issue was tangential and really unimportant, in my view.   The CRM issue will be joined if and when an otherwise patentable program is involved.

  68. 341

    You are assuming that the “great idea” would not exist otherwise.

    You are assuming that the person with the “great idea” didn’t leverage a bunch of great ideas from others. I am almost certain the latter happened. I can almost assure you that that game (Internet trimmings and all) would not exist if that person had spent 20 full patent monopoly time period years in a cave right before starting to “come up with that idea”.

    You are assuming that there aren’t 100 other people in obscurity who had a very similar idea but didn’t even make as far as that person you mentioned.

    You are assuming that the person you claimed failed can’t succeed now and into the future.

    You are attributing to the Zynga firm their success solely or primarily based on the idea.

    You also probably can’t explain why you would think that anyone with a patent should be able to attack a firm that has revenues in the low millions or market share that is a fairly small part of the total market share. [This one is a bit as an aside.]

    Can you explain how coming up with something that meets the extremely low bar of “non-obvious” to a person having “ordinary” skill in the art, which is the only degree of quality we can assume we have from a patent and is also the most likely because of the value in breadth and because the easy invention ideas occur before the complex ones, is an invention that anyone else would want to copy (as opposed to independently realize) or that would be worth more than say $100?

  69. 340

    The CCPA Benson case overruled in the Supreme Court Benson case essentially held that a programmed computer was patentable as a machine without regard to showing a new use withing the MOT.  So, the case has already been to the Supreme Court and answered in the negative.  

     A programmed computer that only processes information and does not produce a new use within the MOT, as arguably did the rasterizer of Alappat, is not patentable subject matter.

    From: TypePad

  70. 339

    Judith!

    Ah, got you now.

    (FYI, I double-checked before I replied. Your comment was:

    “She stated, before proceeding with any analysis, that ‘A Beauregard claim…is a claim to a computer readable medium…containing program instructions for a computer to perform a particular process.'”

    …and I actually checked the text of CyberSource to confirm that Judge Dyk’s opinion actually included that statement before concluding that you’d made an error.

    I blame this one on the less-than-stellar CSS formatting of the Patently-O comments interface. Like Facebook, it ruins readability by spooling out medium-length posts as nine words across x six pages down. It’s like trying to read something printed on a roll of toilet paper.)

  71. 338

    Ned,

    I apologize for my simple mind, but I do not know if you actually answered my question here.

    By your phrase of “patentable per se,” do you mean “patent eligible?”

    I ask because “patent eligible” indicates a 101 compliance which is more than merely fitting into one the four categories.

  72. 337

    David, while I always get a lot of debate from the PTO types on this, I think that “wholly preempt” is not the be all and end all of the MOT. I think that if the claim as a whole reduces an article to a new state or thing (MOT) it is patentable. That is what, in my opinion, Diehr was saying this claim was — to a molding process that was within the MOT and not to a solution to a mathematical problem with a limitation to a particular use. The difference between Diehr and Flook illustrate the difference between “insignificant” post solution activity and a real process. Flook did not measure anything and it ended up outputting a number that could be used to do something, but did not actually require its use to do something. Diehr, in contrast required both measurements and actual use.

  73. 336

    David, the patentability of CRM claims is beyond the scope of Cybersource.

    Why do you presume that it is “beyond the scope” of CyberSource?

    The reason that this case was interesting enough to secure an article on Patently-O, and the reason that it has picked up 250 comments, is that the rationale expressed by Judge Dyk could be applied to any CRM.

    Also, keep in mind that CyberSource is a three-judge panel decision of the CAFC… pertaining to the same area of law as the three-judge panel decision of the CAFC issued in Beauregard. So there’s clearly a chance of precedent here.

    A cart bearing an engine to an airplane has no functional relationship to the engine other than a conveyance function. Describing the engine functionality in the airplane in more detail or less is irrelevant to a description of the functionality of the engine to the cart.

    Again, you’re confusing “tool” and “use.”

    The cart is a tool. It can carry anything, and claimed in isolation, it is the same object regardless of what it is carrying.

    However, the coupling of the cart with a new type of engine is a distinctly new invention. It does not become unpatentable simply because the cart is not new. This is doubly so if the new engine and cart are claimed together as a single manufactured article, where the cart and engine are provided together as a physical component.

    Similarly: the manufacturing of CRM to contain the physical structure of a particular set of instructions that can be physically coupled with a computer, thus causing it to operate in a particular manner and solve a problem through a new solution, is a distinct physical article from the CRM in isolation.

  74. 335

    But those quotes from Diehr answer a different question.

    David, perhaps you are new here and have not had many conversations with Ned Heller. Such misquotes are standard fare (when you can even get an answer, one that does not mistate the question, your response, or both).

  75. 334

    While that is true, if Diehr has a fundamental problem, we should be able to go around it by invoking something else. If that analysis is clean and convincing and happens to disagree with Diehr, it might persuade the SCOTUS to revisit Diehr or at least address that apparent inconsistency.

  76. 332

    More specifically, we set up a position in the future to reconcile why we would allow ownership of ideas under one law but not under the other.

  77. 331

    Perhaps all you say is right.  Still, the Supreme Court jurisprudence on this topic is very very old and Congress in all that time has chosen not to change the essence of what is patentable subject matter.  I think they leave that to the wisdom of the Supreme Court.

  78. 330

    I’m not mixing them up. An idea is an idea. That ruling was under the context of copyright, but it covers an important aspect that applies to software. If we allow software patents, we effectively violate this unacceptable position of ownership of ideas.

  79. 329

    Not really.  The problem is that something that does not produce a new, physical, result has long been held not to be patentable subject matter.  It seems to be a matter of utility, the "kind" of utility that is within the Useful Arts.

  80. 328

    Mooney–

    You should be more careful to distinguish those who agree with mere statements you make of fact and position, from those who agree with your statements of opinion.

    This from a courageous goon who does not switch his username every week.

  81. 327

    >> I disagree. A new use of an old machine is patentable.

    I didn’t cover that case in that phrase you quoted, but I think what I stated afterward covers that case.

  82. 326

    That is correct, but an actual new computer is not being claimed. The generic machine mentioned is totally without details of any significance beyond the description of what any existing machine (a generic machine) can do. What is claimed? In fact, there is no indication that this invention does the computations any faster than say an existing supercomputer.

    You are conflating “tool” and “use.”

    CyberSource did not claim a computer that can be programmed in any way, including the way suggested in the disclosure. That would, in fact, be a claim to a general-purpose computer without any novelty. A hammer does not become newly patentable simply because someone devises a new type of nail that it can be used to hammer.

    Rather, CyberSource claimed a solution to a problem, where the solution involved configuring a general-purpose computer in a particular manner to solve the problem in a particular way. The purpose of the invention is to identify fraudulent electronic transactions; and the solution is to use a computer to do what a human might have done otherwise, but more slowly, inaccurately, and narrowly.

    Objections to the patentability of this problem and solution, because it uses a general-purpose computer, are logically equivalent to objections to new carpentry techniques that happen to use a hammer, on the rationale that the hammer is a well-known and general-purpose tool.

  83. 325

    IBP, I think like this:

    If the article is old, it is not novel.

    If the article varies from the prior art by the addition of obvious variations, it is unpatentable under section 103.

    If the article varies from the prior art by the addition of nonstatutory subject matter, it is unpatentable under section 101, are obvious under section 103.

    Because a computer program does not modify the article (CRM) in any way that is non-obvious, and because a computer program per se is abstract and unpatentable
    subject matter as such, I believe it is proper to find such claims unpatentable under either section 101 or under section 103.

  84. 324

    That is not a fair statement of Diehr. Here is a direct quote:

    But those quotes from Diehr answer a different question.

    There are two basic questions of patentability raised in Diehr:

    ===

    (Q1) Does the claimed method preempt every use of the Arrhenius equation?

    (A1) No, because it limited to a practical problem and solution.

    ==

    (Q2) Is using a computer to control this process equivalent to using a human mind, and therefore ineligible under the “mental steps” doctrine?

    (A2) No, because the use of a computer leads to a fundamentally different solution with demonstrably better results than using a human mind.

    ===

    It wouldn’t make any sense to answer (Q2) with: “No, because it is tied to a physical article.” That doesn’t answer the question.

    Applying those same questions to CyberSource:

    ===

    (Q1) Does the claimed technique preempt every use of an abstract concept?

    (A1) Clearly not. No one even raised this question as a serious argument.

    ===

    (Q2) Are claims 2 and 3 rejectable under the “mental steps” doctrine?

    (Dyk’s A2) Claim 3 only contains mental steps. Claim 2 contains computer elements, but we can ignore them because they’re not important, and what’s left is just mental steps.

    (LEGALLY HONEST A2): Claim 3 only contains mental steps. Claim 2, IN EXACTLY THE SAME WAY AS DIAMOND V. DIEHR, by including the use of a computer, leads to a fundamentally different solution with demonstrably better results than using a human mind.

    ===

  85. 323

    Hi, Jules.  You have to understand that we have 150+ years of Supreme Court case law on the issue of patentable subject matter.  The problems began when the CCPA begin to say that the Supreme Court was wrong and they were right on the issue of computer software.  

  86. 322

    Max, I think the real issue United States relates to a subtlety in US law regarding contributory infringement.  We have a specific statute that requires specific proofs, that IBM wanted to avoid.  They wanted to make the seller of the software a direct infringer, rather than a contributor or inducer of infringement of the end-user.

    Properly viewed, this is an end run around 35 USC §271(c), and nothing more.  No one doubts that a programmed computer that produces a new result falling within the MOT is
    patentable subject matter.  No one seriously doubts that the sale of software to an end-user who operates software on their computer is a contributory infringer.  It is just that contributory infringement has been so ladened with extra burdens by statute that such proof is difficult.

  87. 321

    BTW, there is still room, based on Bilski, for a more comprehensive test that saves software from the handcuffs and whipping of unjust software patenting, but if any steps were taken today, they weren’t that long.

  88. 320

    The rest of Malcolm Mooney’s paragraph tries to clarify. Reading through it, I would adjust that initial phrase to say,

    “an issue that *must* be addressed whenever it arises.”

    Put differently, it would be a threshold that *must* be maintained *at all times* when deciphering the claim. This might contrast with a requirement tested only at the initial entry point description of the claim.

    How is that different from 102, 103, or 112? Mustn’t those requirements also be “maintained at all times,” and “addressed whenever they arise?”

    If so – then why did SCOTUS, the CAFC, and the PTO all make a very clear point of stating “s 101 is a threshold inquiry” in their most important 101 cases? Why would they find it important to make this point, if it only means that it “must be addressed whenever it arises” (just like 102, 103, and 112), or that it “must be maintained at all times when deciphering the claim” (just like 102, 103, and 112?)

  89. 319

    I wasn’t sure if you had made a mistake, so I felt compelled to read the opinion in this case. Sadly, I no longer think this decision will save software from patenting. The Court is a little loose in the reasoning, but what troubled me was, first, that they consider a programmed general purpose machine to be a particular machine (I think this means sw+hw would generally pass the M test if the hw isn’t trivial in their eyes) and, second, that the human test means that the calculations must be what a human could reasonably perform to a similar degree as claimed. They site a Microsoft case where they foolishly imply that calculating a few too many values (mask values with halftone with blah blah) could be sufficient to ensure patentability. This seems possibly to go against some of the things quoted from Gottschalk v. Benson, but that is what they judge.

    A great day sours at the end. All we have is more patent related guaranteed work for the legal profession and continued injustice for software development and consumers.

  90. 318

    “It doesn’t always work like that. I worked in a few startups that went belly-up, and most of the work is now owned by the investors, unpublished, not shared. ”

    And yet I don’t really mind that some investors have some code locked up in their safehouse. That code is worth exactly piss to me.

    “So in my experience, it is definitely NOT the case that all software gets shared, and it’s not all free.”

    Nah, just the stuff that’s worthwhile. Otherwise, someone else will come along and make it and “share” it in some form or fashion, perhaps with a $$$ attached.

    I have a lot of code I myself wrote, but that doesn’t mean it’s worth jack, or that it should be worth jack after I filed for a patent on it.

    He ll, I’d give it away, but it is worth less than the time it would take me and one other individual on the planet to transfer it between ourselves.

  91. 317

    Anon, I would be pleased to review the cases you cite, can you give me a link or a citation?  The only Federal Circuit case I know of that is on point is In re Lowry.  It is interesting that in your about me, you don't rely on that case.

  92. 316

    I also found out that apparently you’re supposed to pronounce “Nuijten” as approxmiately “Niten”.

    That’s what I learned at the AIPLA annual meeting in ’07. =)

  93. 315

    should I rather say, “Misunderstand statement

    Should you? No.

    Do you? Yes. Most of your statements are based in misunderstandings.

    And “most” is an understatement.

  94. 314

    This is also an excellent ruling for patent attorneys with a CS degree. Applicants will need someone that understands the intricacies of a computer program instead of someone with no understanding of CS patents. Unfortunately, the patent attorneys without a CS degree tend to slap together CS applications without an understanding of the underlying data structures and manipulation of them. They then add a flowchart or two and state it will work on a computer system. It’s ridiculous that the PTO allows them.

    Excellent argument… that is no longer applicable.

    When I first entered the field of IP after law school (2002), it KILLED me to look at the classifieds sections of IP journals and see: “EE/physics patent attorney needed for prep/pros of software inventions.” Here I was, a dyed-in-the-wool programmer for 20 years (first computer: 1978, TRS-80 with 4KB RAM hooked up to a TV), with a freshly minted law license and PTO reg number… and yet, for their software patent work, patent firms preferred hiring people with physics degrees. Yes, I’m sure that searching for the Higgs boson was excellent technical training for understanding the mechanics of configuring web applications executing in a browser to circumvent cross-domain policy restrictions.)

    As a result, many – many – of the software patents filed back then, issuing around 2005-2007, were poorly written. The drafters clearly didn’t understand the context of the invention – where, within the complex machinery of the computer, the invention resides; how it is carried out; what makes it interesting. The written description does not flow as a narrative, because the drafter could not confidently discuss the invention – it simply states the legalistic claim language in a very stiff and stilted manner.

    But I think that the field started changing in 2005. Most of the practitioners I meet in the software arts have some software background. And I think that the quality of the written descriptions of more recently filed patent apps, as public disclosures of inventions, has markedly improved over the last several years.

    I attribute this change to three factors:

    1) There’s a much greater supply of patent attorneys with software backgrounds.

    2) Patent boutiques have come to respect software patenting as a distinct practice specialty (rather than just an offshoot of traditional and respected arts that can be provided as an add-on service), with sufficient demand from clients to support a need for specialized practitioners.

    3) Software inventions have just gotten a lot more complex. Patents in 2002 were directed to “e-commerce on the web.” Patents in 2011 are directed to (FICTIONAL INVENTION TITLE AND IDEA) “reconfiguring managed code for flexible deployment in dynamic mobile computing scenarios.” Just understanding the software invention, let alone being able to describe it, understand an examiner’s analogies to prior art, and persuasively distinguish references, requires the practitioner to have either a preexisting familiarity with the field, or A WHOLE LOT OF TIME to develop that familiarity. (And that time is usually not billable.)

    As a result, practitioners who don’t already “get” software either can’t complete the work in a profitable time frame… or cut corners and produce shoddy work. The field has weeded itself out.

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    Judith!

    I mixed up an intended response to Mooney with this post. And that’s what you get when you cut-and-paste.

    It was Mooney’s response to Judith_IP that I initially was responding to with a cut-and-paste of his text which read “Judith Dyk…”, which should have read “Judith, Dyk…”

    I attribute the error entirely it to the “Mooney effect”.

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    To be fair Ned, Judith Dyk makes the same type of error.

    (*ahem* Timothy. :) )

    link to cafc.uscourts.gov

    NO, it is NOT–it is a claim to a unitary physical article that has the potential utility of being able to produce a change in the physical structure of a physical machine that itself initially embodies a particular physical structure.

    This excellent point has no counterargument.

    Greg Aharonian (of PATNEWS fame) doesn’t have a lot of mindshare in the IP world, but he has made many resoundingly good points over the years – and this is one of them: INFORMATION IS PHYSICAL.

    A CRM is not a magical portal to an ethereal, abstract dimension of thoughts and information. A CRM is a physical object with a particular physical structure. It does not encode bits and bytes; it has a specific physical structure of a sequence of magnetic charges, a sequence of chemically altered positions resulting in different optical characteristics, etc. This structured medium physically interacts with the reader of the computer, which leads to physical changes within the computer that solve a problem.

    Those who deny that this is a physical process are being disingenuous. They refuse to acknowledge this inconvenient truth because it does not suit their philosophies and agendas.

    As an analogy: What about a key – a physical key on a keyring? The teeth on the key interact physically with the levers inside the lock mechanism of a door. Does the fact that the pattern of teeth on the key make the key somehow not a “physical object?”

  97. 311

    It is clear that a handful of judges on the Federal Circuit bench are trying to re-make standing case law to dictate the outcome that they want. This is the worst sort of judicial activism. Didn’t we have enough turmoil over the ill-fated Bilski machine or transformation test? Now, we will have to go through that all over again. Why don’t these elitists run for congress and try to change the law the correct way instead of legislating from the bench? Congress has established that so-called “business methods” are patent-eligible subject matter.

  98. 310

    That is a good description of what may have been the implied test (augmented MOT).

    The reference to “conventional” (defined at least within the context of the patent application date but perhaps also within the context of when the patent is brought before a court in a suit) is important. For example, a person won’t buy a semiconductor fab or have access to one (at least not today), so a fab and related items would not be conventional. Household items likely are items which would be conventional.

    We are differentiating between “industrial” (high capitalization) processes, where a patent might conceivably help promote the progress, and ordinary processes, where the progress would almost surely not be promoted via the monopolies.

    Besides software use, another example of the potential use of conventional items within a process would be: stretching a set of spandex tights, in the manner that coincides when one does jumping jacks with them on, while typing on an ipod with a thimble). Again, these processes on these “conventional” items are processes where competition is furious (eg, due to low costs .. and particularly when the spandex are really tight and sexy on the human model), independent invention is expected, and where a monopoly would be brutally restrictive on citizens.

    I would add that the transformations taking place inside the computer are all of matter that is essentially a part of the computer (keeping in mind that a new structurally distinct computer is not being claimed). The T in MOT would fail (?not sure of the definition there).

    Also, I think it is very likely that inventions that were assumed to be patentable in the past, might not pass this test (within their historical context). That is fine, since most patents never get tested in court or can succeed under one criticism yet fail later under a different one. Also, historically, many processes now being patented (or those similar using historical context) were not patented in the past.

    Finally, we can either define the test as allowing the human to use any conventional item, or else we can look to see if the specific claimed items are conventional items. It should be sufficient to use the latter interpretation. I’m not sure if using the former definition has extra value (eg, for determining “abstract ideas”).

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    For example, does a computer programmed to solve a problem that a human mind could solve always represent unpatentable subject matter?

    Hmmm, sort of like, an abacus.

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    understood by a machine that

    Machines now “understand”?

    It’s a FN machine!

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    112 was met and accepted by the Office (twice)

    So what?

    the applicant

    LOL

    and the defendant (who did not raise that issue).

    And we know why, don’t we?

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    What I DO mind is when they do it dishonestly and unfairly – when their opinions are logically inconsistent; when they warp and lie about the facts; when they don’t just change precedent, but completely ignore it.

    Which is why you were here complaining about Beauregard claims before this case, right?

  103. 304

    Another possible difficulty of treating an article claim as a process claim, in addition to the parameters of the search, are the parameters of the duty of disclosure.

    Indirect description of structure by direct description of potential function in a particular and specified or understood operating environment does not require the disclosure of similar functions in the prior art because the function is not claimed, and hence functions disclosed in the prior art cannot be material to patentability.

    As long as the function is described sufficiently in the application to satisfy the requirements of 112 (which BTW requires specification of the operating environment), it indirectly describes the article’s physical structure sufficiently to satisfy the requirements of 112, and no additional information regarding that function is required for the description of that function to completely fulfill its purpose in the patent application, and any such additional information cannot be material to patentability.

  104. 303

    It doesn’t always work like that. I worked in a few startups that went belly-up, and most of the work is now owned by the investors, unpublished, not shared. At one of those jobs, we did file a patent on one of the harder and more useful things that we did. That got published — almost nothing else did. I still know a lot of it, but trade secret law being what it is, I try to avoid putting myself into situations where that would be a problem.

    And we absolutely made an economic judgement that we would patent the thing most likely to be useful to other companies that might follow in our footsteps. And I can talk about it, too.

    So in my experience, it is definitely NOT the case that all software gets shared, and it’s not all free.

  105. 302

    Nah I’ve never discussed Nuijten with anyone irl with anyone that knows anything. I’ve never had to address signal claims with anyone that knows anything irl. The only people I’ve discussed claims that violate the holding of Nuijten with are examiners :(

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