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.
IANAE, I was trying note that, despite this, the Fed. Cir. still utilizes the MoT test as a framework for analysis, and further jumps through hoops to create an exception to the machine prong.
>> To put it another way: The use of a computer, as recited in claim 2, leads to a different, and much better, solution than the purely human-mind-based implementation that is excluded from the claim.
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.
The “human” test is a test of essence of content. Like a Turing Machine, no one is ever going to build one, but the concept is invoked repeatedly (at least implicitly) in theory and analysis. We can replace the “human” in the test with any advanced existing machine that does the same thing: follow steps to arrive at a predictable result. The human reference in the test is symbolic of isolating certain crucial aspects of those claims, the description aspect that can be broken down into algorithmic steps.. defined as, for example, steps a human could perform.
Why is this definition good? Well, it captures a subset of claims that don’t claim any new process, machine, or improvement thereof.. as the Court interprets that part of the law in the context of the Bilski and other rulings.
As far as I know, none of the patents I have worked on have been declared invalid, or even challenged.
By physical analog, I mean, analogous to taking something relatively accepted and standard, mixing in “Internet”, and declaring that it is new. I don’t recall the particulars, nor am I interested in relating them, but it was something like “but with wires connecting two PC boards”, where there was no published record of anyone doing that particular thing for the particular patented purpose. So, meeting the objective standard for patentability, while utterly failing the subjective “Duh!” test.
The issue with software patents for me is that though there is a lot of dancing right up to the objective (statutory) line, quite a few of them pass the Duh test with flying colors (e.g., that one of mine that I mentioned, which is so hard that understanding flees my brain (and probably yours also) like a watermelon seed.) The nearness of the dancing to the “can’t patent mathematics line” seems irrelevant to the novelty, difficulty, or economic impact of the invention.
That depends on which EM signal you’re talking about. Are you talking about a radio signal from our local radio station? In that case no it isn’t a phenomena o nature. Or are we talking about an “EM signal” aka light from a distant star or our sun? In that case it is.
“Here’s a hint: a “manufacture” is a creation of man.”
You should try reading Nuijten instead of arguing with me pingerdoodle.
Also note that the original topic was about telephone signals, which are electrical signals not “EM” signals per se.
“Anyone with a basic understanding of physics and human history know that man has long understood how to manufacture transitory propagating signals.”
And anyone with an advanced understanding of physics and human history knows that man has long understood signals to not be a “manufacture”. Anyone with an advanced understanding of patent lawl knows that they certainly aren’t a “manufacture” as that term is used in the patent statute.
“Do not merely accept such a shallow view of Nuijten. ”
Instead I should adopt your ret arded view? No thanks bucko.
“Let me know what you think the answer is to this deeper question.”
Because of their definitions. Period. End of story. And end of this pointless conversation.
JCD: “it is not clear that a computer programmed to perform a process [fails the MoT test].”
MOT isn’t the test anymore. The prevailing Supreme Court authority holds that MOT is for people who need to get a clue.
As evidenced by not only this decision but by others as well, these are interconnected concepts that the court refuses to take the time to investigate and understand. The court has no general understanding of patenting, and only addresses issues discretely as they are presented by litigants, without regard to how their narrowly-drawn opinions affect the interconnected totality of patenting.
Yeah, and this kills me.
The CAFC (like its predecessor, the CAFC) is a unique body in the legal world: it is the only federal appellate court with subject-matter jurisdiction rather than hierarchical jurisdiction; it has the exclusive power to hear district court appeals for patent cases. It is supposed to be a body of the best minds we can find, who will carefully tend the incredibly complex web of issues comprising the framework of patent law.
I don’t mind that these experts are trying to shape the patent system – even in ways that I consider regrettable or damaging.
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.
The rule of law, first and foremost, is about consistency and predictability: if a case presented today with facts (ABC) results in verdict (X), then a case presented tomorrow with facts (ABC) should also result in verdict (X) unless there’s a reason to change it. But these wildly vacillating decisions, supported by conclusory or illogical explanations that shift with the whims of the court, erode our confidence in predictions and expectations of consistency.
Regardless of the result – the logic of the CyberSource opinion is clearly dishonest in two ways.
First, it rejects claim 3 for lacking (x), then rejects claim 2 for resembling unallowable claim 3, while also denigrating the extensive presence of (x) in claim 2 as merely “form.”
Second, it supports its reasoning with references to CAFC panel decisions (Comiskey, Warmerdam, Schrader, Grams)… and yet fails to discuss THE CASE of that period – decided by the Supreme Court, routinely cited in every subsequent decision as good law, and articulating rationale that’s directly applicable to this case. (Even worse than totally ignoring it, the opinion demotes Diamond v. Diehr to a footnote on the second-to-last page, and cites it solely as a weak nod to another case.)
Simply put – that is not honest law-making. Regardless of how you feel about the result, you cannot support the way in which this result is achieved.
A mental process clearly fails the MoT test (excepting potential transformation of the brain), but it is not clear that a computer programmed to perform a process does. It is the hoops the court jumps through to undermine the machine prong of the MoT test that I am not sure make total sense.
From Diehr:
“Parker v. Flook, supra, presented a similar situation. The claims were drawn to a method for computing an ‘alarm limit.’ An ‘alarm limit’ is simply a number, and the Court concluded that the application sought to protect a formula for computing this number. Using this formula, the updated alarm limit could be calculated if several other variables were known. The application, however, did not purport to explain how these other variables were to be determined, [Footnote 10] nor did it purport ‘to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm limit.'”
From In re Bilski:
“Our predecessor court’s mixed result in Abele illustrates this point. There, we held unpatentable a broad independent claim reciting a process of graphically displaying variances of data from average values. Abele, 684 F.2d at 909. That claim did not specify any particular type or nature of data; nor did it specify how or from where the data was obtained or what the data represented. Id.; see also In re Meyer, 688 F.2d 789, 792-93 (CCPA 1982) (process claim involving undefined “complex system” and indeterminate “factors” drawn from unspecified “testing” not patent-eligible). In contrast, we held one of Abele’s dependent claims to be drawn to patent-eligible subject matter where it specified that “said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner.” Abele, 684 F.2d at 908-09. This data 963*963 clearly represented physical and tangible objects, namely the structure of bones, organs, and other body tissues. Thus, the transformation of that raw data into a particular visual depiction of a physical object on a display was sufficient to render that more narrowly-claimed process patent-eligible.
We further note for clarity that the electronic transformation of the data itself into a visual depiction in Abele was sufficient; the claim was not required to involve any transformation of the underlying physical object that the data represented. We believe this is faithful to the concern the Supreme Court articulated as the basis for the machine-or-transformation test, namely the prevention of pre-emption of fundamental principles. So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle.”
Ned, in your opinion, would a computer programmed to perform information processing represent patentable subject matter? Should it turn on whether or not the information processing can be performed by a human mind? (Because, in effect, that is what the court is proposing.) Once again, not only is the human mind an amazing thing, but we are not even entirely sure what the limits of the human mind are. (See, e.g., link to scottaaronson.com)
Note that I am not intending to express an opinion one way or another regarding whether information processing should be patentable per se, I just am not sure the court’s reasoning makes a lot of sense.
Nor am I sure that it is consistent with Bilski’s insistence that “[a]ny suggestion in this Court’s case law that the Patent Act’s terms deviate from their ordinary meaning has only been an explanation for the exceptions for laws of nature, physical phenomena, and abstract ideas. … This Court has not indicated that the existence of these well-established exceptions gives the Judiciary carte blanche to impose other limitations that are inconsistent with the text and the statute’s purpose and design.”
That is, I believe that the court’s proposed Alappat exception in combination with the MoT is potentially inconsistent with the statute’s text and the statute’s purpose and design in that it can potentially exclude subject matter that does not fall under the law of nature, physical phenomenon, or abstract idea exceptions.
For example, does a computer programmed to solve a problem that a human mind could solve always represent unpatentable subject matter? Is it the court’s position that the methodology for solving a problem that a human mind can solve will never involve more than an abstract idea?
You can make a living writing software. You can make a lot of money. You can let your creativity flourish. You can gain tremendous prestige and be praised throughout history…
…unless another software company (especially one that’s already very well-known and has lots of development resources on hand) sees your idea, appreciates its value, and creates a knockoff.
Exhibit A:
link to blogs.sfweekly.com
This market seems to have worked out VERY well… for the copier (Zynga is now valued at $11.5 billion). For the other developers – the guys who actually came up with the ideas and released their products first? Not so much.
Of course, that’s the world of copyright, not patent. My point is that copyright is wildly inadequate as a sole form of protection for software. Copyright prevents people from redistributing your software (code or binary) or copying the artistic representation (but only with a very high degree of similarity)… but it completely fails to protect the *idea*.
So the question, Jose, is this: What sort of “free speech” software market do you want? Do you want a market with a bunch of great new ideas… or one where the big players sit around and wait for someone else to develop a great idea, and then develop a bunch of knockoffs?
Software is instructions for processing information, written to be understood by a machine that processes information according to what instructions are provided to it.
Software should be treated like instructions.
The upshot of the above post?
You guessed it–money talks, b.s. walks.
(rational legal reasoning being the b.s.)
Want to know how the CAFC is going to decide?
Follow the money–all of it.
To be fair Ned, Judith Dyk makes the same type of error.
In the opinion, she assumes what she sets out to prove, she does not ARRIVE at a conclusion via a process of reasoning from admitted fact and cogent argument.
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.”
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.
The article DOES NOT contain “program instructions”, it embodies a particular physical structure. The physical machine that is the object of the article’s asserted utility is able to detect that physical structure and, based upon the particular physical structure of that machine, is able to recognize an informational content in the physical structure of the article when the physical structure of that article is detected in a way particular to the machine, and is able to produce changes in its own physical structure in response to that informational content.
The article does NOT contain “program instructions”, it embodies physical structure that can be interpreted as program instructions by a completely different, unclaimed machine.
The rest of the so-called “reasoning” proceeds from this flawed basis.
Of course, the literal language of the claim read: “A computer readable medium containing program instructions…”, but according to the court’s own prior reasoning, the language “containing program instructions” is NOT a direct description of “program instructions”, but is instead a permitted indirect description of the physical structure of said computer readable medium.
That illuminates the essential problem with this opinion perfectly–the court, in initially having developed a way to allow software-related claims, devised a mechanism whereby the literal meaning of the claim could be construed as merely a description of a different concept, and the claims would be examined on the basis of that different concept rather than on their literal meaning.
Software-related claims were therefore allowed. That fact in itself should have evidenced unequivocally the error of this type of approach.
To correct that error, the court here reverses course, and now examines the claim in light of its literal meaning, rejecting their formerly-approved claim interpretation device.
The problem is that in this same opinion, very shortly after correcting that first error, THE COURT ONCE AGAIN MAKES PRECISELY THE SAME TYPE OF ERROR THAT IT JUST CORRECTED!
Only 2 pages after rejecting the figurative approach of claim interpretation in favor of the literal approach, Judith Dyk proceeds to put the literal approach right back in the drawer, and resurrects the just-discarded figurative approach:
“Regardless of what statutory category (“process, machine, 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.”
This is inefficient and confusing. I’m absolutely certain that not even Judith Dyk is aware of exactly what she is doing, and how, let alone future panels, litigants, and patent applicants.
More obfuscation from the CAFC is totally unhelpful to the whole patent paradigm. What will the CAFC do next? Who knows?
The only way to divine the disposition of a particular case is to figure out which way the policy winds are blowing, and to follow them.
Back in the ’90’s, software was HOT, silicon valley was booming, all sorts of people were jumping on the bandwagon and making lots of money on IPO’s and in the markets, everything was great–and you got software-related patents.
Fast-forward to 2010, money is in short supply, development costs have risen and development has been offshored, silicon valley valuations are falling, everybody is jumping off the bandwagon into gold and losing lots of money, IPO’s are dead compared to what they used to be, nothing is great–and you got the death of software-related patents.
Is this sort of flexibility a good thing? Does it represent a type of responsiveness that the courts should have to prevailing social conditions? Any answer to that would require an analysis of whether or not the patent system actually contributed to the rise and success of software-based ventures, and if so to what extent–and any such suggestion is, of course, totally up for debate, and is unresolved.
In view of the fact that it is unresolved, and because it is the initial proposition that must be justified, that software-related patents helped the industry, the initial proposition should be rejected, IMHO, as inadequately proven.
The figurative approach to claiming shorthand should never have been instituted, and software-related patents should never have been granted in the first place. How much more efficient THAT would have been.
But we found ourselves in the situation where the figurative approach was carrying the day. Instead of putting it to bed once and for all, and invalidating Cybersource’s claim 2 using 112, 102, or 103 based on a literal meaning approach to claim interpretation, the court has (most likely unwittingly) perpetuated the very problem it purports to have solved.
For the problem was NOT that software-related patents were granted, but was instead the REASONS that were used in justifying that grant.
Those reasons permit arbitrariness, and thereby create a diminution in certainty/predictability, and certainty/predictability is one of the fundamental reasons for the existence of the judicial system.
And those REASONS remain totally unchanged by this opinion.
Indeed, they have been reinforced.
In developing the figurative approach, the court enlarged the scope of its power–but power without awareness is dangerous, and is the mark of a brute.
The court, as currently configured and operated, is failing. The mode of its failure is representative of the mode of failure of the broader public-sector in the U.S. today. Even at the Fortune-500 corporate level, the single largest concern is that of UNCERTAINTY in the course of government action.
The CAFC, via opinions like Cybersource, is both a symptom of, and is contributing to, the decline of not only the U.S., but of the totality of western civilization.
The CAFC must be totally re-organized–the brute must be slain.
Individual jurists currently serving on the court may indeed be extremely capable juridically–I pass no particular judgment on any of them personally. It may be the institutional limitations that affect them, it may be the overloaded docket, it may be the method of appointment and political considerations, I don’t know. Also, there remains the possibility that they are personally incompetent to sit on the court, it cannot be discounted.
The court needs to be populated first with good minds, then given freedom to operate as it sees fit, within the bounds of the law. If it needs to be expanded into a hierarchical sort of system to meet the workload, then so be it.
But things need to change–and one of them is the CAFC.
If you’re going to make a completely bogus judicial decision/opinion about CRMs, why not make one about types of prior art applicable to anticipating mental methods?
There is no point to that because claims literally drawn to mental processes are already forbidden by 101. Even the patent txxbxggers tend not to dispute this, but I suspect that will change.
Ah.. .. I don’t know what came over me
That’s called “emotion.” And as obvious here, emotion tends to drown out reason.
You just won’t get that type of wake up call over at slashdot or from those that see no problem in buddying up the law. But just because you don’t get that type of wake up call does not need you don’t need that type of wake up call.
Software is not math. It is not literature. It is not music.
Software is a tool to DO SOMETHING. Software is and should be treated just like firmware, just like hardware.
NO PARTY, appellee or appellant, nor the court sua sponte has raised a 112 issue. Neither has the Office in either of its two examinations.
Doesn’t change the fact that there are 112 problems with B-claims. Big problems.
“Diehr is a bad call IMO. I think this new ruling is more consistent with earlier rulings than is Diehr.”
Yes – precisely. The trouble is that neither you nor this court gets the option of disregarding Diehr.
Well played, Ned.
Would it put even more bees in your bonnet if I told you I signed the action myself? Oh noes!
And yes, conclusion as in the normal sense of the word. I concluded it was a “finding of fact” in the legal sense.
Re: the would vs could, if it was “would” it would have been an inherency argument. It wasn’t, so it was an obviousness argument.
Re: the CRM vs. computer, the entire point of contention (which Dyk is discussing) is that only the preamble of these claims have anything to do with CRM. The entire body of the claim is “a computer processor executing these steps:” and reciting a method. So would in re Venner be applicable to such a CRM claim? I don’t see why not.
And the human being cite was slightly facetious. If you’re going to make a completely bogus judicial decision/opinion about CRMs, why not make one about types of prior art applicable to anticipating mental methods? Make a ruling along the lines “The structure of a human being can inherently perform the claimed functionality without any modification whatsoever”. Something similar to In re Schreiber. But make the decision so it can’t be also applied to cite generic computers against any programmable functionality.
JADP The form (i.e., the structure) follows the function (i.e., how the machine behaves).
No it doesn’t because there are an infinite number of ways to encode a program for carrying out steps X-Z. And depending on how the program is encoded (and decoded), the same structure could encode a program for carrying out different steps.
Try reading 112, it talks about claims that distinguish (i.e., distinctly claim) the invention from the prior art. There is no limit to how that is done.
Yes, there are limits. One of the limits is that you can’t distinguish a new composition from an old composition merely by saying “wherein the new composition differs from the old composition because it causes another composition to behave differently,” particularly where the described function does not correlate necessarily with any change in structure.
Here we go —> conflation of copyright and patents…
(sigh)
Malcolm, please escort your friends back to slashdot.
fails to mention
Let’s correct that oversight:
Whether the Cybersource invention is patentable as passing 112 is not at issue;
NO PARTY, appellee or appellant, nor the court sua sponte has raised a 112 issue. Neither has the Office in either of its two examinations.
But in Diehr and Allapat, the data being transformed was specified as to what it represents.
Diehr didn’t get his claims because the data was data about rubber. Diehr got his claims because some rubber actually got cured in his claims.
Flook’s data was data about stuff too. Didn’t do him much good.
Jules: I disagree. A new use of an old machine is patentable.
Yes, it’s called a method claim. Whatever you’re driving at, it is not relevant to B-claims.
As for the computer-implemented method in claim 2, as the court explained, it’s simply too abstract for patent eligibility and reciting the use of a computer in the method isn’t substantial enough to rescue the claim.
Even further, the panel misapplied Allapat in finding no transformation becasue the computer only reorganizes data. But the computer transforms the data, which is specified as to what it represents in the real world, into true/false fraud detection results. The CAFC en banc said in Bilski that Allapat makes clear that there is a transformation so long as what the data represents in the real world is specified, and they reiterated it in Bilski for clarity. That was the difference between Diehr and Flook and Benson. In Benson, the data were just binary and decimal numbers. In flook, it was just a parameter of an unspecified process. But in Diehr and Allapat, the data being transformed was specified as to what it represents. The SCOTUS majority cited with approval the CAFC’s commebnts in Bilski, and advised practitioners to review these comments by the CAFC for guidance. But this panel has missed the boat in saying there is no transformation.
Whether the Cybersource invention is patentable as novel and nonobvious is not at issue;
LOL – the great Hal Wegner fails to mention the 112 issues that plague B-claims.
Apparently you’ve never discussed Nuijten with anybody who knows anything.
How about claims directed to a cook book containing novel and non-obvious steps for preparing food? Does the fact that I claim something made of paper and glue and ink get me past 101?
Seriously, does it?
It certainly should if you subscribe to the beliefs of the patent txxbxggers. They’ll wave their hands about the “printed matter doctrine” but it doesn’t escape the fact that a human or a computer (some people call them “robotos”) could absolutely read those recipes and become a “new machine”, at least as the term “new” is used by the patent txxbxxgers.
I listened to the ol’ Nuijten oral arguments last night and one of the good judge’s comments to the PTO solicitor seem to be a bit more writing on the wall for the entire claim format. i don’t even think I had listened to these args before.
I also found out that apparently you’re supposed to pronounce “Nuijten” as approxmiately “Niten”.
“An improvement of a process would be a new process. An improvement of a machine would be a new machine.”
I disagree. A new use of an old machine is patentable.
35 USC 100: “The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.”
What we have here is the nontechnical getting caught up in the anthropomorphism of a machine
That’s exactly how software claims are written. Don’t blame the court. Blame the claim drafters.
I agree with your 10:09 comment, Jose_X.
35 USC 101:
“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title [wherein this section shall not be used to deny or invalidate a patent].”
The “new” language of 101 will be handled by the 102/103 “conditions and requirements of this title”.
The “useful” language of 101 will be handled by the 112 “conditions and requirements of this title” wherein 112 states “The specification shall contain a written description of the invention, and of the manner and process of making and using it …” Note that if something can be used, then it is useful.
A simple 1 page passage through Congress should suffice. There’s no need for a bloated bill with a bunch of other stuff.
Hal Wegner makes some powerful points in an email message broadcast today:
“Yesterday in CyberSource Corp. v. Retail Decisions, Inc., __ F.3d __ (Fed. Cir. 2011)(Dyk, J.) opinion below, 620 F.Supp.2d 1068 (N.D. Cal. 2009), a panel implicitly repudiated the patent-eligibility under 35 USC § 101 of the tens of thousands of “Beauregard claims” issued under the 1995 Patent Office acknowledgment In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995)(Order)(Archer, C.J.)( “The Commissioner now states ‘that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101 and must be examined under 35 U.S.C. §§ 102 and 103.’”).
Conflict with Research Corp. v. Microsoft; State Street Bank: Whether the Cybersource invention is patentable as novel and nonobvious is not at issue; rather, the Cybersource “Beauregard claim” is directed to a tangible medium and under State Street Bank is hence patent-eligible subject matter under 35 USC § 101: “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.” State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1372 (Fed. Cir. 1998)(footnote omitted quoting extensively from In re Bergy, 596 F.2d 952, 960 (CCPA 1979)).
Neither is the Cybersource tangible medium “abstract” in the sense of Research Corp. Technologies, Inc. v. Microsoft Corp., 627 F.3d 859, 868 (Fed. Cir. 2010)(Rader, C.J.)(“[T]his court … will not presume to define ‘abstract’ beyond the recognition that this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act.”).”
The Red Flag has been thrown on the field. The play is under review.
>> Nailed it .. they use a “I know [an obvious claim] when I see it”
Well, A (the law) does not equal B (MOT) does not mean that there is a whole lot of other testing area. The SCOTUS could not come up with a better test and no exceptions have been given.
When one day that boundary case arrives and is argued by the patent owners, then a new test might be born.
It’s entirely likely that the law is too vague and the Courts are trying to capture the vast context of the law while at the same time not running afoul of the Constitution (eg, “to promote the progress”) without having to resort to a very elaborate test or to always hearing a barrage of experts and statisticians trying to nail down this time what “promote” and “progress” and “art” mean.
If you want to simplify your life, read the writing on the wall that software, aka digital information, is not patentable (and we all intuitively know what sw is). It is copyrightable, apparently, but is not patentable. You can make a living writing software. You can make a lot of money. You can let your creativity flourish. You can gain tremendous prestige and be praised throughout history, but stop trying to patent it and stifle the rest of society. That is disgusting. It is unconstitutional whether ruled that way or not. It does not promote the progress. It abridges speech. It tries to neuter the copyright protections for independent works and against ideas. Stop it and breathe a sigh of relief or keep being a pest on society and industry. @%^%$#%#$%#$%#$%#$^%^#$%#$%
Ah.. .. I don’t know what came over me. Sorry.
David–
Yes, that is the upshot of Cybersource.
The inclusion of the program and functional description was one of claiming, examination, and adjudication efficiency.
Having to explicitly include all sorts of stuff now will be unwieldy, and is unnecessary. How the pendulum has swung with this overly-reactionary court, leaning whichever way the wind is blowing.
What happened to the understanding of one of ordinary skill in the art? What happened to using the spec as an aid to claim interpretation? What happened to MPF claiming?
As evidenced by not only this decision but by others as well, these are interconnected concepts that the court refuses to take the time to investigate and understand. The court has no general understanding of patenting, and only addresses issues discretely as they are presented by litigants, without regard to how their narrowly-drawn opinions affect the interconnected totality of patenting.
AGAIN, FOR EVERYBODY ELSE, I AGREE THAT “SOFTWARE-RELATED” CLAIMS SHOULD ESSENTIALLY NOT BE PATENTABLE, INCLUDING CRM CLAIMS.
I believe that in order for them to survive 112 and 101 that they need to be narrowly-drawn and very specific, and that they will thus be made easy to invalidate under 102 and 103.
What a mess.
Diehr is a bad call IMO. I think this new ruling is more consistent with earlier rulings than is Diehr.
The Courts may not know what to look for in a process that would pass muster (although they seem to have identified that opening a door or a computing car does not create a new car).
I suggested in another comment:
“if the process is described through algorithms (mental steps), rather than as new/novel/non-obvious/precise/etc physical changes to some structure, then we don’t have a [patentable] process.”
The Court is not an expert in software or with advanced machines. It would be reasonable to expect that they would get it wrong here and there. The earlier cases were with concepts more familiar to more people (counting and algorithmic steps). A modern computer is simply a more efficient counting beast (than prior ones) with more sophisticated steps. The hardware is patented already separately, and the algorithms are the sorts of things mathematicians and others evolve daily without any need for patents and thankfully without the obstacle patents would present.
More importantly, what how would this differ from what copyright allows already and not also not violate the decision that ideas cannot be owned.
I could ask how software patents promote the progress, but I have very high confidence that there is no reasonable and affirmative response to that question. In essence, this value given to 101 and stating that ideas cannot be owned is a way the Courts have said that we can’t possibly promote the progress if we allow otherwise.
Trying to keep my comments on this thread to a minimum, but Ned, when you stated that:
“…the program functionality claimed has nothing to do with any functional relationship of the program to the CRM. This lack of correspondence of function…”,
you demonstrated, IMHO, a lack of understanding of the basic concepts underpinning claiming and claim construction.
I’d like to see if the formulation that I use has any internal deficiency–not relative to what can be legally argued based on case law, but on a logical basis alone. There are, to be sure, legal objections to this formulation, but there are also legal supports therefor–in fact, it was not I, but the courts, who conceived this formulation in the first place. So let’s set aside strictly legal considerations for the moment…
“the functional relationship of the program to the CRM”
Ned, there IS no “functional relationship” of the program to the CRM, as you characterize it. The “program” and the “CRM” are NOT 2 distinct parts of an assembly, which parts are expected to functionally cooperate. Instead, the article claimed is one thing, and one thing only: a physical article with a particular physical structure. The article claimed is unitary, not assembled from 2 discrete cooperating components. The “program” is merely an indirect description of the structure of the unitary article, and the “program” itself is NOT a claim limitation, and does NOT constitute a part of the claimed article.
There is no requirement that the program have any functional relationship to the CRM whatsoever, as the “program” is not claimed–so when you articulated the concept of “the program functionality claimed”, you were articulating a fictitious concept that does not in fact exist.
Finally, there is absolutely no requirement that any functionality of the fictitious “claimed program” have anything whatsoever to do with any totally unnecessary “functional relationship of the program to the CRM”.
What say you?
>> you ignore the “or any new and useful improvement thereof” portion of 101 in your disapproval of computer-implemented inventions
An improvement of a process would be a new process. An improvement of a machine would be a new machine.
The Court is saying (as I interpret it) that neither to a base process nor to a base machine can you create a new one simply by explaining, in detailed fashion, novel fashion, non-obvious fashion, or otherwise, steps that the alleged new process or machine takes differently than was the case before. In particular, if the structure of a machine has not changed (eg, we merely open a door to signify 1 rather than having left it closed to signify 0; eg, we merely reconfigure the machine), then we don’t have a new machine. And if the process is described through algorithms (mental steps), rather than as new/novel/non-obvious/precise/etc physical changes to some structure, then we don’t have a new process.
Mathematicians do very advanced algorithmic development daily and don’t get patents. That is how it should be. You don’t need a billion dollars to put these broad ideas into development, manufacture, and distribution. You don’t need a patent. Competition is healthy without the stifling monopoly patent suits that are hurting the US’s advance and progress.
I want to add that the reason the Court might want to consider 101 as the defining law in this trivial case is that this triviality (where there is nothing remotely new claimed outside of the mental steps) would not make any such invention, in the Court’s opinion (ie, in my opinion of what the Court might be saying), be deemed to be any more patentable should sections 102, 103, 112, and any others of the law be changed tomorrow. This is important because it says that this triviality of trying to patent mental steps by simply invoking some generic entity that will carry them out will never be tolerated as long as 101 is part of the law as it currently is.
This interpretation of their opinion, if correct and if the opinion is not neutered by a higher authority, is a setback to all patents whose novelty lies in algorithms, no matter what fancy language is used in the patent application and no matter how complex are those algorithms or accurate/efficient they are in solving an information problem. For consolation, mathematicians and many other derive highly complex solutions to many information problems on a regular basis and get no patents.
Note that this does not forbid describing a precise structure of a machine from which those algorithmic steps can be proven to be achieved under a particular context. I see the Court considering potentially any specific circuit as being patentable on analysis of its structure in the claims but not based on any algorithmic description of such circuit.
As for what would constitute a legitimate 101 process patent, I presume that would have to include a description of a specific process that puts an existing machine to work in rather non-trivial ways (non-obvious, etc) where the Court considers *for the purpose of non-obviousness, novelty, etc*, the *physical* details of *how* something is achieved. This is a subtle and subjective exercise. I don’t know what else to say.
A redo of Diehr under this light may or may not lead to a different ruling. IIRC those claims were rather generic as well, and I would think a future Court redo would come to a different conclusion than the Court did in the past. The Court’s understanding evolves. They may go back and redo the equivalent of Diehr. [Again, I only glanced at those claims, am trying to recall from memory, and have limited experience with patents.]
Interesting to note that Ned chooses to endorse one (smaller) concurrence at the same time proclaim that another (larger) concurrence is not the opinion of the court.
Ned, you cannot have it both ways.
>> Show me an issue that does not meet your description of “an issue that can be addressed whenever it arises.”
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.
That said, I don’t know what the courts actually intended, but when trying to figure out what invention is claimed, all parts of the invention must be dealt with.
The above claim just refers to a generic piece of hardware which is holding encoded information, ie, has a particular configuration, such as a door that is ajar (to signify a 1) as opposed to closed (0). The claim then immediately turns to describing methods.
The part of the Court’s opinion included in this article appears to say that it is trivial to state that a generic piece of hardware that can hold information is not a patentable invention. For example, it adds nothing to the prior art, as it is but a short generic description. Because of this triviality of the explicitly claimed invention and the fact the long body of the claim deals with methods, the Court chooses to address whether the patentability of those methods enables the claimed invention to be patentable. In this regard (and considering that the claimed invention is trivial otherwise), the Court asserts that the methods are mere mental steps not patentable under any circumstance (as the current trivial one) where it is assumed little more than a machine or human capable of carrying out these steps is instructed to do so.
The “normalcy” you seek to reestablish is the arcane world of Flash of Genius, Only the Kings can Play.
Nobody is saying that the claims are invalid because the recited method isn’t clever enough. That would be an obviousness issue.
The world’s most brilliant and most statutory method, written down as a set of instructions, is still nothing more than a set of instructions. It doesn’t matter what is written or who wrote it.
All the CAFC did was tear down the poster. The medium is not the method.
It tells us that bureaucrats should not decide what is patent eligible.
“It’s too new” is a horrible reason.
“It’s too hard” is a horrible reason.
“I don’t have a database of prior art” is a horrible reason.
It tells us that the presidential commission was WRONG. Even after this decision, the Beauregard claim is still a valid format – the substance of the claim has been nixed in this case.
Do not confuse the two. Re-read the decision, it expressly allows this claim format to be used for patent eligible inventions.
People need to not buy into the mindless hype!
Jose_X,
CRM = Computer Readable Medium.
Be careful of not understanding the legal meaning of what you read – just as no one would expect that programming in multiple languages in a single program would actually result in a working program, recognizing what the actual language of the discussion entails is critical.
Hi Ned, the concept of “free beer” is used more or less flippantly, by English barristers, as code or short-form for a claim that recites a devoutly wished-for, long felt want, that is easy to define in a claim but which looks more like a statement of a problem to be solved than it is a solution to a problem.
In other words, enablement is the issue, 112.
All these claims to a DVD carrying instructions to a computer are not so different from a “free beer” claim.
Tension arises (of course) when those championing the Beauregard claim assert that enablement is a matter of pure routine.
If 101 does not bite, because the claim is to a manufacture, and 112 does not bite because imnplementation is routine, and 102 does not bite because you cannot prove that the DVD is not new, what then? Allow (USPTO) or take a 103 hammer (EPO) to the area of the problem being solved. Is it a technical one or a commercial one, a problem within the useful arts or outside the ambit of the useful arts?
Which Beauregard jurisprudence (Europe or America) better promotes the progress of useful arts is the issue in dispute. Europe recognises patent-eligibility in B claims.
As you know, Europe grants B claims when they embody non-obvious solutions to objective technical problems.
“has nothing to do with any functional relationship of the program to the CRM.‘
Respectfully, this is crrp. It was crrp on the previous threads and remains so now, no matter how many times it is repeated.
Review the hatband case. Review the measuring cup case.
I have yet to see a cogent legal argument that can overturn the law of those cases.
Ned, in either of those cases did the material of the printed matter have a functional relationship to the material of the substrate that you are demanding of the printed matter to the CRM?
The answer is clearly NO.
Clearly it was the “what” of the ink and the “what” of the numbers that held the functional relationship.
Likewise, clearly in this case as well it is the “what” of the code that is the focus of patent eligibility question that the court has answered.
The “what” of the code is identified in the patent ineligibility of the pure method claim. The court here is actually applying the exception to the printed matter doctrine fully and completely – the court here embraces the printed matter doctrine including the exception – something that those who deny the existence and meaning of that (complete) doctrine cannot see because they have chosen to remain blind to what that doctrine really means.
>> So now a CRM is a computer?
If this refers to Customer Relationship Management system and no details are given as to how this is implemented, then how can we assume anything more specific than the common software implementation on a programmable device based system (aka a computer)?
You will still be reciting mental processes carried out a computer
Can computers now think?
If a process is carried out on a computer, that process is no longer strictly a “mental process.”
It may be a process that can also be done by a human, but the process itself – as claimed – is not being done by a human.
What we have here is the nontechnical getting caught up in the anthropomorphism of a machine and confusing the fact that a machine process is limited to being a machine process.
I can buy the denial of a claim that can be performed entirely in the mind of a person, but is that what is actually claimed here? Has the human mind been absorbed into the Internet? I think the court erred in dismissing the technical elements, and while the Internet is ubiquitous, it most definitely is not an abstraction. An anthropomorphical corollary to the reasoning (I believe in the lower court’s opinion) is to look at the individual “bits” of a living being. The body regenerates the actual material compositon over the course of time, yet still is the same nonabstract body.
Lazy and hazy thinking is a result of the “take your pick” mentality. Yet another reason to stay sharp when it comes to the law.
Actually Al, I just made a post on this very topic in reply to a post by Mr. Stein. Why don't you search this thread for that post and reply to it.
However, in short detail, the holding in Diehr required that the process modified by the programmed computer be a process that also passed the MOT test. The problem with the claimed subject matter in this case is that the claimed subject matter did not passed MOT test.
Understatement, or should I rather say, "Misunderstand statement."
I seek to reestablish the stone Age?
I thought that was what Eco-Freaks advocated.
But seriously, a presidential commission recommended that we not patent computer software, for several reasons, but mainly because they could not properly be examined. We have been patent computer software, per se, in the form of Beauregard claims, for approximately 15 years. What does the experience tell us?
It tells us that the presidential commission was right.
From:
JCD, yes. And even though the MOT test is not exclusive, the Breyer/Scalia concurrence said that it would be unlikely that anything that failed the MOT test would be patentable subject matter.
I believe the section you are quoting from Kennedy’s opinion regarding “information age” (section II B 2) was not joined by Scalia. It is not the opinion of the court.
In contrast, the MOT test was endorsed by all nine justices. Even Stevens concurrence emphasize that it was a critical test.
Information processing per se does not pass the MOT test. Period!
6,
What an electromagnetic signal also is not, is not a denial of what it is.
Or do you think that an electromagnetic signal is not a phenomena of nature? If such is not a phenomena of nature, that is must be a creation of man. Here’s a hint: a “manufacture” is a creation of man. Are you saying that man cannot manufacture transitory propagating signals? Anyone with a basic understanding of physics and human history know that man has long understood how to manufacture transitory propagating signals. Do not merely accept such a shallow view of Nuijten. One must do more than merely read a decision. Push your understanding one layre of abstraction deeper and ask “Why is a transitory, propagating signal like Nuijten’s not a member of the four categories?” Let me know what you think the answer is to this deeper question.
Be careful here to avoid the “transitory” claptrap (even all of the wonderful inventions you listed on this thread are all “transitory”).
David Stein said,
“Again, I only need to cite Diamond v. Diehr to you. The holding in that case that the “mere recitation” of a computer to perform a process that could be performed by a human mind, but with less precision and resulting in an inferior product, converted an otherwise ineligible process into an eligible process.”
That is not a fair statement of Diehr. Here is a direct quote,
“We think this statement in Mackay takes us a long way toward the correct answer in this case. Arrhenius’ equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is at the very least not barred at the threshold by 101.”
Earlier in the opinion the Supreme Court said this,
“In contrast, the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. ”
And this,
“”Transformation and reduction of an article `to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.” 409 U.S., at 70 .
Analyzing respondents’ claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the 101 categories of possibly patentable subject matter. That respondents’ claims involve the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing cannot be disputed. The respondents’ claims describe in detail a step-by-step method for accomplishing such, beginning with the loading of a mold with raw, uncured rubber and ending with the eventual opening of the press at the conclusion of the cure. Industrial processes such as this are the types which have historically been eligible to receive the protection of our patent laws.”
Clearly then, the distinction between this case and Diehr lies in the fact that the Diehr process passed the MOT, while the process claimed here did not.
Jules, how would you phrase such a statute? Would you add a new class of patentable subject matter, i.e., computer software?
“Admitting your mistake,”
LULZ.
NOT. GOING. TO. HAPPEN.
Ned,
Your heathen ways simply omit the critical item that Benson itself was abbrogated – by Diehr and confirmed in Bilski
!!! Bilski 14 !!!
This panel decision will not stand. It clearly violates the law of the Supreme Court. It is a renegade decision that is tantamount to p1ssing on the Supreme Court by ignoring Diehr.
The definition of what a new machine is clear. Such was clearly stated and such clear statements cannot be overturned by innuendo. No court in its right mind would allow such perversity.
!!! Bilski 14 !!!
Someone give a copy of this to Dyk.
Dyk, Supreme Court? Perhaps. But it does seem very consistent with Bilski and Benson. It is inconsistent with Alappat, but is Alappat really good law? See my separate post on this question.
“This does raise an interesting point in that the test seems incomplete.”
More than merely “seems” – it is incomplete. So says the Supreme Court. See Bilski.
What does Alappat really stand for? The CCPA held in Benson that a programmed computer was a new machine without requiring a demonstration of a new result. That case was overturned by the Supreme Court in Gottschalk v. Benson.
Alappat had dicta that suggested that a programmed computer was a new machine, but it also held that the programmed computer in that case produced a “useful, concrete and tangible result.”
The Bilski Federal Circuit case “abrogated” all prior cases involving the use of “useful, concrete intangible result” as a patentability test. It did not specifically state that Alappat was abrogated.
If Alappat remains good law, what does it stand for?
“The present case represents a return to the stone age.”
Fixed.
Judge Rich simply saw reality and a cabal of those with a mindest to stifle that reality. The “normalcy” you seek to reestablish is the arcane world of Flash of Genius, Only the Kings can Play. Patents were meant for all.
Look at the Commission Report that the anti-patent people rely on: “this would make our job too difficult” Are you kidding me? The patent office is not there for an easy job. All truly fundamental waves of innovation would be defeated by this type of thinking.
“does not pass”
This does raise an interesting point in that the test seems incomplete. It does seem to suggest, does it not, that if the subject matter claimed the not pass the MOT test, it should not be patent eligible subject matter even if the process claimed can only be performed on a machine.
My only question is whether “cheap” beer would be considered an infringing equivalent.
Judicial Activism, read my post reciting the history of 101 jurisprudence in connection with computer software. The activists here, are not the Supreme Court, but rather the CCPA, particulary Judge Rich. It was the CCPA and not the Supreme Court that overturned long settled case law in order to hold that computer software was patentable subject matter when claimed either as a programmed computer or as a process.
Judge Rich was behind both Alappat and State Street Bank. It was Judge Rich, more than any other judge, who was the “judicial activist.”
The present case represents a return to “normalcy.” The only reason, I believe, that conservative jurisprudence has returned to the Federal Circuit is that Judge Rich is no longer on that court.
Stuart, one could argue also that bad law leads to fuzzy claims.
“direct an economy?”
“Mushy, directionless, common law?”
Hmmm….
>> This practice of invalidating thousands of patents, years after issuance, …[is] not a good way to direct an economy.
Many parties are not being honest when they petition you, Congress, or when they petition the courts. You don’t know who is being honest, and, like the courts, you are not experts. What do you expect?
If you want a tip from yet another party: information itself should not be patentable, especially when it merely meets the ankle-high bar: non-obvious to a PHOSITA. We are a nation of competitors and an open society. Anyone who actually writes software knows it is just information (instructions given to a “robot” of sorts). Monopolize information many can and will derive independently, and you have a wonderful recipe for stifling the US economy and progress in the relevant arts.
You can help us by making it clear that “digital” (sometimes know as “abstract”) information and any other “zero-cost” process or method cannot be patentable, by allowing independent invention to be a cheap and effective defense, by allowing small-scale commercialization to be fair use, and by raising the inventiveness bar.
There is value to those who reveal this information and who work to discover it. There is also a huge amount of competition because no one needs 1 billion USD to undertake this process and manufacture. A monopoly here makes no sense if the goal is to promote the progress. This is true even for very sophisticated information.
Separately, so many patents are broad and obvious to many who practice because the law allows it to be so; “non-obvious” to a person having “ordinary” skill in the art is a ridiculously low bar sure to create patents that would hand-cuff many above average creators (never mind the geniuses or even the average folk who persist with what they find to be “non-obvious”). Software, not being limited to million and billion dollar laboratories and plants, should have made this clear by now to unbelievers of the bell curve.
Obviously this may be an exercise in Finger pounding … But to the Munroe Two. I asked you for help for years. Then all of a sudden you realize after some legal help that all your cr@p about letting it go, and Sally just forget about it. Even after you clearly see Mail Fraud! A Post Mmn no less! Now, I do exist for more than maid service. And that I do have Brains, and that I am an almost Patentee.
So maybe after all this I only have Copyrights, and a Trademark that may or may not go. And of course a Design Patent APPLICATION because 5,560,312 does not exist because they wanted it. And Claim #1 being the only one that really works in the second Application. And obviously legally it can’t be a Patent yet because it is labeled as a CIP of one that does not exist.
And how can anyone look at the Case on Sept,25, 1996 and print the first that STILL does not legally exist baffles the mind, only then to add a number to the second one Number 15 I might add to circle around the horn again.
And think about this? It will baffle the mind. If #15 is an Embroidered label, a label I never went with. Then the label can be hand done, thereby leaving the software in the dust.
And to Michael R. Thomas, I see they are having a very hard time channeling you SUN! There were times when you were lucid. I guess your EGO at times showed through. Were you also connected with Mr.Evans?
Shooting Fish in a barrel you say? I think it will be as easy as 1,2,3,4,5,6,7,8,9,10,11,12,13,14, and15.
Or better yet 10,12,14,18,20,110,112,114, and 121.
Why would anyone pretend to be someone else while trying to bury their own Mother alive?
Also note CERT DENIED. I just noticed that the other day.
Have you ever read Nuijten? I’m guessing not.
“A transitory, propagating signal like Nuijten’s is not a “process, machine, manufacture, or composition of matter.” Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.”
link to uspto.gov
[electromagnetic signals] are not judicially excepted
electromagnetic signals are phenomena of nature – isn’t that the basis of In re Nuijten?
He is saying that they are not judicially excepted.
“the otherwise statutory nature of electromagnetic signals”
???
Why are we still even talking about Beauregard claims? If you claim a machine readable medium, what possible patentable difference can it make what you have saved to that medium? Can I get a patent on a book containing a string of characters defining a plot with elements A through R provided the plot is “novel” and “non-obvious”? How about claims directed to a cook book containing novel and non-obvious steps for preparing food? Does the fact that I claim something made of paper and glue and ink get me past 101?
Seriously, does it?
“For starters, how about 112?”
For anyone actually interested in reading the case, the claims passed 101, 102, 103 and 112 – essentially twice (these were claims that passed reexam).
The burden of passing – as Malcolm is so found of conflating – 112 was met and accepted by the Office (twice), the applicant and the defendant (who did not raise that issue).
Why does it matter to know which section of the law pertains?
Oh, I don’t know, perhaps because we may at least pretend to be lawyers.
“They just held certain types of computer-implemented methods and their corresponding Beauregard claims ineligible under 101.”
Actually this statement and the title of this thread are both in error.
It was because the method claim exceeded being a “software claim” (thread title) and was not at all a computer-implemented method (Malcolm’s comment) that the first claim was held to be not a patent eligible method. The second claim merely flowed from this first conclusion.
Ned IBM was too clever, in my opinion, in creating B-claims; and the PTO too “accommodating” of IBM to capitulate as it did when the matter was already pending before the Fed. Cir. The legal situation that we find ourselves in at this point in time is uncertain. We only have the Commissioner to blame for that.
I’d like to subscribe to your newsletter.
“And I love it that you think I am incompetent in any areas of technology or law that I ask your opinion. It is really part of your charm. ”
I know right?
“I think you neatly avoided the question because of the otherwise statutory nature of electromagnetic signals.”
You are correct.