by Dennis Crouch
WIldTangent v. Ultramercial (Supreme Court 2012) Docket No 11-962
The Supreme Court has rejected another Federal Circuit patentable subject matter decision with a GVR and has ordered the appellate court to review its patentability decision with further consideration of Mayo Collaborative Services v.Prometheus Laboratories, Inc., 566 U.S. ___ (2012). In its standard GVR language, the Supreme Court wrote:
The petition for a writ of certiorari is granted [G]. The judgment is vacated [V], and the case is remanded [R] to the United States Court of Appeals for the Federal Circuit for further consideration in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012).
The patent at issue in this case claims a particular method for distributing copyrighted products over the Internet. Patent No. 7,346,545. The basic gist of the invention is that the consumer receives a copyrighted product in exchange for viewing an advertisement — and it all takes place over the internet and with a particular monetization scheme.
In its broadly written opinion, the Federal Circuit (Rader, C.J.) found the claimed invention patentable under Section 101 based upon the requirement that a computer be used to perform the method and the programming complexity required to carry out the claimed elements. The court wrote that while “the mere idea that advertising can be used as a form of currency is abstract, just as the vague, unapplied concept of hedging proved patent-ineligible in Bilski,…the ‘545 patent does not simply claim the age-old idea that advertising can serve as a currency. Instead, the ‘545 patent discloses a practical application of this idea.”
Following the Federal Circuit decision in Ultramercial, the Supreme Court decided Mayo v. Prometheus. In that case, the Supreme Court rejected the Prometheus patent as effectively encompassing an unpatentable law of nature. That revives the historic notion that the scope of knowledge held in the prior art is an important aspect of the Section 101 analysis.
The Supreme Court issued a parallel GVR in the gene-patent case of Myriad Genetics. Other pending 101 appeals include Fort Properties v. American Master Lease (en banc petition); Accenture Global v. Guidewire; Bancorp Services v. Sun Life; and others.
Claim one the ‘545 patent reads as follows:
1. A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:
a first step of receiving, from a content provider, media products that are covered by intellectual-property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;
a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;
a third step of providing the media product for sale at an Internet website;
a fourth step of restricting general public access to said media product;
a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;
a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;
a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;
an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;
a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;
a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and
an eleventh step of receiving payment from the sponsor of the sponsor message displayed.
small.
Second “Show More Comments” hyperlink is busted.
There do seem to be a very odd crowd that want to end software patents. Just remember that in Diehr the SCOTUS recognized that software patents could be, but shouldn’t be, excluded using one of their exceptions. You know, all of this brings up a rather interesting point. If Congress amends the patent act to include software patent explicitly, then the SCOTUS would have to declare that unconstitutional under their current course.
I think a lot of the madness on this blog are from PTO folks or people aligned with them that just don’t want to do their work. I think Ned may be Richard Stern. It is certainly possible.
“And you have YET to reconcile the Diehr case with Prometheus.”
Yet to be done because it cannot be done.
Once more for giggles: https://patentlyo.com/patent/2012/03/h%5Binsert “i” here]tler-reacts-to-mayo-v-prometheus.html
or direct: link to youtube.com
“It’s time for a little honesty. It’s time for those who don’t know the art to recognize that others who do see right through the falsehoods propagated in order to fulfill some agenda. It’s time to end that denial.”
It’s time that everyone on this blog call Ned out for being the dishonest, shilling, agenda pushing POS that he shows himself to be.
“by claiming their use of old and conventional tools”
“But this is exactly what Diehr did”
That’s exactly right. I tried to tell Mr. Heller this, that everything physical was old and conventional. He could not accept the fact that the only thing new in Diehr was basically the control programming. That such was the true focal point of novelty.
Also, see the post by “Some Common Sense From The Manufacturing World,” who on May 22, 2012 at 07:27 AM said in reply to 101 Expert Clears Things Up:
“The chemical processes involved in rubber curing are well known, as are the monitoring of process variables, the use of arrhenius equation to compute cure time, the notion that variables be recomputed and readjusted, and the use of computers for ‘automatic process monitoring.’ ”
THREE YEARS before Diehr, the above quote has been only superficially modified and shows the complete difference in the cases of Flook and Diehr was where Stevens speaks from.
In one, he speaks from the majority, in the other he speaks from the dissent.
If anyone tries to tell you that what is going on is anything else but a philosophical tug of war, they are being dishonest. Anyone with any background in manufacturing can see right through the crrp and see that there is no fundamental difference between Flook and Diehr. None.”
It’s time for a little honesty. It’s time for those who don’t know the art to recognize that others who do see right through the falsehoods propagated in order to fulfill some agenda. It’s time to end that denial.
“Mathematical algorithms, abstract ideas, mental steps, and laws of nature cannot be made in the patentable subject matter simply by claiming their use of old and conventional tools.”
But this is exactly what Diehr did. And you have YET to reconcile the Diehr case with Prometheus.
Here is a hint, integration. Oh wait, you are afraid to broach that subject too.
Ned, you dishonest POS, what is so hard to understand about ,
WE DO NOT SO HOLD”?!?!?!?!?!????
Your reply is a primary example of a member patent bar living in denial.
“holding by the Supreme Court in Benson”
More of the crrp Ned? Last time you said this someone stuffed your piehole with a quote from Benson that emphatically said the opposite. WE DO NOT SO HOLD”
You L I E S have all been seen before. Your crusade is a tired repeat.
patent litigation, what you say here is undoubtedly true — That the patent bar neither knows what an abstract idea is, and seems to think that calling for the execution of a nonpatentable abstract idea on an old and conventional computer somehow is sufficient. But that shows just how resistant the patent bar actually is do what should have been a very obvious and clear holding by the Supreme Court in Benson where the Supreme Court held that to be patentable, a process had to provide a new and useful result. Simply reciting in a claim its execution by generic general purpose computer, or by analogy, any old and conventional tool, such as the Internet, is not sufficient. That case was clear on this point, but has been resisted by the patent bar ever sense.
First they tried to confine the scope of the holding in Benson to mathematical algorithms.
Next they tried to confine the scope of the holding to process claims, believing that a claim to a programmed computer was per se patentable.
When the Federal Circuit came down with its Bilski decision, confining process claims to subject matter that transformed an article into a different state or thing, or was limited to a particular machine, understandably the patent bar was beyond perturbed. They argued, and justifiably so, that the holding of the Federal Circuit threw into doubt claims to programmed computers, or processes claiming execution on a programmed computer or the Internet. They argued that while the Bilski claims were not to be consider patentable subject matter, they argued that the problem with the Bilski claims was that they were not limited to execution on a programmed computer.
All this goes to show is that the patent bar has been existing in an alternative universe of their own making, all but denying that Benson ever existed. The Supreme Court now, in Bilski and in Prometheus, has reaffirmed in spades that not only does Benson still exist, it means what it says. Mathematical algorithms, abstract ideas, mental steps, and laws of nature cannot be made in the patentable subject matter simply by claiming their use of old and conventional tools.
Certainly, it seems like this and similar patent cases are just begging to be shot down; while it doesn’t appear that any of us really knows what an “abstract idea” is exactly, it’s increasingly clear to numerous observers that tying a process to the internet should not necessarily transform an abstract process into a patentable invention.
“Software doesn’t need patents to be 15% of GDP.”
Nice strawman.
“It’ll happen with software too.”
Wow, never knew that software was just like perpetual motion machines.
“They can’t refuse to hear a case”
Check again – they can refuse a case if they so choose. They do it quite a lot actually.
IANAE, you are a yutz!
“There’s nothing in the statute about perpetual motion machines either”
Look again.
“And by the way, you have not answered my question.”
Get in line. Get in line.
Oh look Anon, no answers yet!
Don’t let any olive branches get in the way of those dodgeballs.
The SCOTUS said in Diehr that computer programs should be decided by Congresss,
That doesn’t mean they don’t all individually fall within the exception. It just means that they shouldn’t be making a technology-specific rule. Especially in Diehr, which was not a software case.
There’s nothing in the statute about perpetual motion machines either, but the courts decided that they all have something in common that coincidentally happens to exclude them from patent eligibility. It’ll happen with software too.
Believe me, when someone finally decides to challenge Beauregard claims, the Supremes will have no problem deciding. It’s not like they’ll have a choice. They can’t refuse to hear a case because Congress should have passed a more specific law about it.
They’ll hear the defendant’s argument that the claim is to a description of an abstraction printed on a thing, and they’re not going to be any more impressed by the disk than they were by the “transformation” in Prometheus.
you mean the narrow triple 20 that is now about 15% of GDP?
Like I said, everybody is aiming for it.
I suppose these are the same kind of statistics as the recent study claiming that “we owe 25% of our jobs to IP” because grocery stores have signs out front. Bill Gates became an ultrabillionaire without patents, and people will keep buying software as long as they keep buying hardware. Software doesn’t need patents to be 15% of GDP.
IANAE, this is just absurd on your part. The SCOTUS said in Diehr that computer programs should be decided by Congresss, which means–guess what–that they don’t fall within the exception. That is what they said in Diehr.
A narrow triple 20, golly, you mean the narrow triple 20 that is now about 15% of GDP? That narrow triple 20?
6, the SCOTUS said in Diehr that this swath that we are talking about should be decided by Congress. Guess what that means? It means that if they so held, then they are going against Diehr’s holding in now claiming it is all covered by an exception. Abstraction? Which must be the most finger on scale exception in the history of man kind. Basically, I don’t like you so you die.
Ned, really.
You obviously want to import european practice regarding 101 into the U.S. I can tell you from my practice that european practice is a mess. Terrible. Horrible. And, any set of rules that encourages attorneys not to claim the invention for what it is, is a bad set of rules.
But, you know all this. Anyone that deals with europe konws how absurd the 101 jurisprudence is.
And, any 101 test that takes you 20 minutes to explain and involves at several subjective judgements on the part of the fact finder is a bad test. Bad test. The SCOTUS has take MOT and TSM, both of which were basically good tests that would have enabled the USPTO to function properly and destroyed them for no apparent reason other than they seem to like to burn down the system. The conservatives on the court are now the black panthers of the 1960’s. Burn baby burn.
“Look, Rich’s main vice was that he thought he knew better than even the Supreme Court.”
Isn’t that the point that David Stein makes? The judges at that level do know more than the Supreme Court Justices. In fact, this particular judge intimately knew more, since he wrote the law.
Your answer seems to only fan the flames of those posters who (apparently correctly) are wondering why you harbor such animosity towards one particular person.
Your answers just are not adding up.
And by the way, you have not answered my question.
Wow, that’s some serious pedantic semantic game playing Ned.
But you forgot your asterisk as once again you obfuscate the difference between patent eligibility as discussed in a single application subject matter context and the category group context. Once you keep this in mind (and appropriately note your comments with suitable asterisks) we can all have as many olive branches as you have tucked away.
Night, not really.
Consider a disk drive (an area where I have a great deal of experience) that has an electric motor that we want to spin at a particular RPM. If the prior art used an analog circuit to control the RPM, I consider the substitution of a general purpose digital computer for the analog circuit to be entirely patentable. Here, the general purpose of the computer would be hooked into the disk drive circuitry at one end with what we know as an analog-to-digital converter, and at the other end with a digital-to-analog converter. The sole novelty however could be in the algorithms implemented in the digital computer.
Àlappat was just like this example to the extent that a digital computer hypothetically could have been substituted in for the special-purpose digital circuitry disclosed and claimed. There the digital computer would’ve had to accept digital data words output by other circuitry in the graphics display machine and would have to output digital data words in a format understandable by downstream circuitry in the graphics display. The hypothetical general purpose digital computer substitution would have then been tied to the specific machine disclosed and claimed.
I fully support the application of computers to improving circuits, particular control circuits. There is nothing at all about this though that would justify the general notion that programmed digital computers are patentable subject matter when they are not tied into a specific use or a specific machine. I hope you can see the distinction.
Anon should reply: “Ned, I accept your offer of defeat, but typically it is the victor that sets the terms.”
Suggested terms:
– Ned be the one that puts an asterisk in his arguments that clearly indicate when he is prevaricating or obfuscating or simply making things up whole cloth (might need multiple asterisk designations in order to keep track).
– Ned openly admit defeat when bested iin legal and other discussions, so as to not give olive branches a bad name.
– Ned actually learn the law of 101 and how to understand case law and address his changes to the law as what they are: changes to match his agenda.
I would be supremely disaapointed if Anon accepts anything less.
Ned is going down in flames and offers to give an olive branch?
Must mean that he can give no answers.
The next time Ned that you want an adult conversation, be prepared to give answers to the tough questions, not olive branches. Olive branches don’t explain your duplicity and only appear like you are trying to buy off the opposition.
Look, Rich's main vice was that he thought he knew better than even the Supreme Court. He wanted to rewrite patent law using his bully pulpit and his status as being a co-author of the '52 Act to shape patent law to his view of things. He was not just pro-patent.
Can't simple, as you should have noted, Dragon inserted "plane" for "plain" and I didn't catch it.
But in general, machines are patent eligible by statute. The question in a particular case is whether the claim is legitimately for a machine.
The same is not true of a particular kind of machine (such as a programmed computer). The statute does not mention programmed computers.
Ditto methods or processes. While these are patentable if certain requirements are met, not all processes are patent eligible. Bilski emphatically decided that issue, as the argument on appeal was that the Bilski claims defined a process (a series of steps) and that should have been sufficient to move on to 102/103/112.
But, just like machines, specific kinds of processes are not mentioned in the statute and therefor are not anywhere near the kind of categorical inclusion as are machines or compositions of matter.
anon, since we have had good conversations in the past, I will offer you an olive branch. If, in the future you say
"Business Methods are* eligible subject matter under 101."
or the like, use an asterisk like the above to indicate that you do not mean "categorically" eligible. I will be happy with this.
OK?
“And, if you built a phycisal machine to perform the information processing algorithms, they would have just as much structure.”
The day you submit such an application is the day they will begin to be legitimately granted, if they pass 102/103. However, after a few hundred thousand are issued, then the art will start to dry up because we will know about these special structures.
That is legitimate and I will condone it, just as the judges condoned it in Alappat where there was a means p f bringing actual structure into the claim.
However, NWPA, you guys want to file apps on just the function, and not tell us about the special structure, then we end up with an art of functions, and no structures upon which we can base future rejections (and indeed, have a record of for posterity).
And btw, the judges I think do understand it. Indeed, this is the very reason why many of these claims are going to start falling (like ultramercial). Randy thinks the claim requires an extensive (and we presume, special) computer interface and programming etc. but the applicant doesn’t tell us anything about these special structures. He just tells us about the function thereof, and that is an abstraction. As such it’ll get blown away.
“claims that the structure of a computer program is unrelated to its function, which is of course, a total and complete lie.”
Idk about that man, I mean, it CAN be. In certain comps. But in other machines different parts might be arbitrarily arranged at a given time to perform a function. Those are known as “general purpose computers”. And people are all the time trying to claim these general purpose computers by relying on functional language that is “related” to the actual underlying structure which BTW they did not disclose and nobody knows what is.
O and NWPA, don’t presume maliciousness when ignorance will explain Lemley’s actions.
Why do you assume (or at least imply) that being Pro-Patent is a bad thing?
“Gosh, let’s just apply a narrow exception to wipe out patents for a large swarth of inventions because we don’t like them.”
Well, to be sure, that “large swath” is actually just a very narrow swath of the whole of inventions.
“Just bully and lie and life goes on.”
Says the man that’s been bullying and lying about software for the past 30-40 years.
“So, I guess the court is saying that one can get a patent for a physical machine with gears and paper cards that performs information processing methods, but if you figure out how to abstract the problem so that you can solve the problem without actually building the physical machine, then you get no patent.”
Don’t be so sad, you can still get a patent if you abstract the problem so that you can solve the problem without actually building the physical machine as long as you go ahead and build the physical machine and claim that.
Idk about that, the people submitting inventions before me the majority of the time I’m quite happy to have helped out. It’s just you fringe elements that need a stampin’.
“Obviously they are not on the same plane”
Why not? Are you saying that the categoty of “process” (i.e., “method”) is not on the same plane?
Can you supply, as Anon notes, some legal authority for making a different plane for method patents from that of machine patents?
“anon, you do not disassociate yourself from the sock puppets who consistently used ad hominem attacks as a substitute for legal argument. As far as I know, you are a sock puppet.”
Same can be said for you Ned, especially with “MM” or “Malcolm” or “Hans Blix” or any other name that entity engages under. See my posts about you and your love affair with Malcolm, 6 and their “ilk” and their “swagger.” Your response to that whole pile of offensiveness is to “enjoy it.”
You too consistently use ad hominem attacks as a substitute for legal arguments. Stop with the indignation game. Stop with the accusing others of that which you do game. Those things do not work for Malcolm. They do not work for you. They are petty attempts at not answering questions put to you.
Stop the games and join the conversation.
As for your instant accusation that I do not engage in particular case analysis, that is patently false. We have crossed swords on a number of particular cases including Alappat and my legal reasoning overwhelms your position time and again. The fact that you do not acquiesce to my analysis is a “you” problem which I cannot resolve.
As for putting things “on the same plane” it is you againthat engages in sophistry. Show me the legal source of your authority to engage in category-level discrimination. You mouth an argument based on individual application claim level eligibility, and then retreat to a false “as a category” position. I call you out on this very thing and you supply only accusations and shallow indignation, but no answers and definitely no legal authority for your actual – and not pretend – actions.
Sophistry indeed!
“A quite demonstration will illustrate”
If you have a point, make it. If you think you made a point, you have not. As I noted, the use of the word eligible has different subtle legal connotations when used in the singular instance of claims and whenused in the group instance of “as a category.” It is you that is playing the word games by obfuscating this. I am seeking clarity.
You said “I remain your humble servant. What questions do you want to ask?”
I take the time to put the questions in context and address you directly so that you cannot claim you did not see them and to reduce the chance that you take things out of context.
I receive indignation from you. I receive no answers from you.
Ned, you can do better. If, as you claim, you want to have a meaningful discussion, you must do better.
As I posted: what you don’t say speaks volumes; when you choose not to say anything speaks volumes. The ball is in your court. Answer my questions.
anon, you do not disassociate yourself from the sock puppets who consistently used ad hominem attacks as a substitute for legal argument. As far as I know, you are a sock puppet.
But my rejoinder do you remains. You criticize me for among other things misquoting cases. You say that in general. You will not however engage in an argument about a particular case. Therefore your argument and your statement cannot be rebutted by counterdemonstration. What you do is like demagoguery. It is a form of ad hominem argument, but just a slight or polite.
Regardless, the topic at hand is the statement that "business methods are patent eligible" or that "program computers are patent eligible." You place these on the same plane as "machines" are patent eligible. Obviously they are not on the same plane. So your attempt to put them on the same plane is sophistry, plain and simple.
What was the question again? I think I was answering the observation that Benson did not hold that an old computer programmed to execute the claimed BCD-to-binary algorithm was not eligible for patenting. I think it did.
Put it to rest, anon. It is you and your ilk that are playing word games and who have the agenda. A quite demonstration will illustrate
Machines are patent eligible.
Compositions of matter are patent eligible.
Articles of manufacture are patent eligible.
Business methods are patent eligible.
Program computers are patent eligible.
Sock puppet, repeat after me:
Business methods are patentable subject matter.
Programmed computers are patentable subject matter.
Machines are patentable subject matter.
Compositions of matter are patentable subject matter.
Do you see the problem yet?
Regarding your last point that the CAFC may be more familiar with patent law then the Supreme Court, I would agree that this is true. But when an issue gets to the Supreme Court, the judges on the whole, their clerks, the lawyers arguing the cases, the amicus briefs, flesh out a particular issue far beyond what happens at the Federal Circuit level. There is an amazing boost in brainpower, research and overall skill level when an issue reaches the Supreme Court not only from the Federal Circuit, but from any circuit court.
The alleged reason once upon a time for the duration of the Federal Circuit was to provide national uniformity the patent law. Prior to 1980, some circuits were considered anti-patent and others pro-patent. This led to forum wars.
But I think the basic reason for the creation of the Federal Circuit was not this alone. The powers that be at that time, including the CEOs of several major companies that depended on patents for their business life, wanted to get the country back onto a pro-patent track. They viewed the CCPA as exceedingly pro-patent, but best of all that court had Judge Rich, who is the most pro-patent of any of the judges on that or any other circuit court. He had a big reputation, and the patent bar was eager that all serious patent law issues be placed at his feet.
Ned,
I am on that list.
Do you view my attempts to hold an intellectual conversation with you to be a case of “specialize in maligning [you]“?
I have no need to apologize. What I malign are the positions in law that you have taken and the false positions that you have attempted to foist as law.
“Regardless, there is a major difference between saying a machine is patent eligible and a business method is patent eligible. A machine is a listed category, for starters. Your attempt at equating the two is farcical.”
What is farcical is your continued afferts to denigrate the valid category of methods. For starters, let’s look at the actual law:
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.
Process is right there next to machine. You cannot miss it. As to business methods as a category of methods, well, see my post earlier today.
Gosh, let’s just apply a narrow exception to wipe out patents for a large swarth of inventions
Oh, you’re back on the “narrow exception” thing? Still can’t understand why so many claims seem to run afoul of the “narrow” exception?
Ever watch professionals play darts? The dart board is a smallish circle on a really big wall. The triple 20 is a tiny and narrow part of that smallish circle. How come so many darts hit the triple 20? Because they’re AIMING FOR IT.
That’s what you’re doing when you draft a Beauregard or business method claim. You’re aiming for the narrow exception and hitting it.
David, another excellent post and I largely agree with it.
Indeed today there seems to be a balance in the court where in yesteryear there was quite a bit less balance. I think you did correctly identified the judges on the court court today that remain expansionists. I think the reason that the court in the 1990s and before was so radical in expanding the scope of patent rights without waiting for Congress to act had to be laid at the foot of one judge. Rich.
Gosh, you make everything just so clear, IANAE. Gosh, gosh, gosh, if only you had a brain. Gosh, let’s just apply a narrow exception to wipe out patents for a large swarth of inventions because we don’t like them. Gosh, let’s just lie about the invention. Gosh, let’s just pretend that we can’t understand a few simple concepts. Gosh, let’s just harass everyone that contributes a comment that takes more than 1 second to understand. Gosh. Gosh, I don’t care about the law or the truth. Gosh. Oh gosh. Who cares. Gosh. Just bully and lie and life goes on. Gosh, who cares. Gosh people will just work long hard hours on inventions for me because, gosh, they like me. Gosh.
IANAE: you have and always will be an $diot.
In my opinion anything new and marketable and valuable is in need of protetion from competition therefor grant the patent or your allowing the theft of the usage of it as long as its not stolen.
Below, the folks you list specialize in maligning me. Have you ever asked them to apologize?
Regardless, there is a major difference between saying a machine is patent eligible and a business method is patent eligible. A machine is a listed category, for starters. Your attempt at equating the two is farcical.
So, I guess the court is saying that one can get a patent for a physical machine with gears and paper cards that performs information processing methods, but if you figure out how to abstract the problem so that you can solve the problem without actually building the physical machine, then you get no patent.
If you invent a physical machine, you can patent it. But try patenting it without the actual machine, and you can’t anymore. Gosh, patent law sure is complicated.
You just go to your local programmer or local boy that can invent and tell him what you want and the invention pops out.
Pretty much, yeah. You don’t even need a programmer, since “instructions for doing what you want” generally ends up being the patent claim in its entirety.
I don’t think your cut-n-paste argument is appropriate here.
The quote from Benson is direct and straightforward, as is the given interpretation. Why do you not address this in an equally straightforward manner?
Ned, let’s put this on the table in its entirety.
“One cannot say that any kind of methods are eligible subject matter without determining whether they are in fact claiming abstract ideas or laws of nature or natural phenomena. Every claim is subject to the exceptions. Every.”
Here’s where Ned Heller is playing word games and obfuscating:
Ned is once again taking a specific singular instance and applying the Court’s rationale to a targeted, entire category.
Note that Ned’s quote is dealing with subject matter, not as a category, but as an identified example. In Ned’s quote, it is in the specific instances, and thus singularly, that claims are determined to violate the judicial exceptions or not.
Ned subtlely takes this quote out of that singular claim context and applies it at a doctrine level into a vendetta against an entire category of method claims in the first instance.
That is a clear legal error. And it is deceptive to even attempt to paint the situation otherwise.
Consider Ned’s misdirection:
“Thus, the term “eligible” has a specific meaning in patent law. It means that the claimed subject matter qualifies under Section 101 as patentable subject matter. The question still remain whether the claimed subject matter is patentable under 102/103/112.
Thus further, when one states without qualification that a claim is eligible for patenting or that claimed subject matter is eligible for patenting, his meaning in that subject matter is patentable subject matter under 101, subject to disqualification under 102/103/112 for want of novelty and the like. The term is a legal term with a specific legal meaning.”
While it is true that the term has a specific legal meaning, it is Ned, not his opponents that then misuses that term. When Ned’s opponents talk about business methods, they clearly are talking about them not in a singular claimed matter, but as a category, a larger entity. Ned’s opponents are clear in which context the legal term is used – and used correctly.
The ongoing discussion thus uses “eligibility” in a different sense than how Ned provides in his argument. The “trick” is that Ned, too, is using “eligibility” in this SAME larger group sense – and yet he is pretending NOT to. Ned is pretending that he is following the legal norms of the word in the sense of the singular instance. He is not.
Cloaked is an attack on subject matter as a broad category and the legal term as applied against a singular instance of claimed subject matter. Ned would have everyone believe that those advocating for business methods to be deemed patent eligible are doing so recklessly. But it is Ned that is reckless. Ned twists a specific legal meaning and takes it from a singular instance context to apply it to an entire (and entirely targeted) specific category context. Clearly, it is the misuse and deliberate obfuscation of context that Ned uses in his arguments. The target of his agenda is clear and undeniable. He targets an entire category. Nowhere has he ever posted with such vim against any other category. It is Ned that is playing games with context.
One can no more make a blanket statement that business methods are patent ineligible than one can make the statement about any other category of methods. That is the sole reason why the example of medical methods stings so much.
Does Ned endlessly rail against medical methods? No. Why? And more importantly, why does Ned endlessly speak out against business methods?
The question, Ned, is consistency.
You throw out a quote from State Street, impliedly stating that business methods were errantly forced into the patent world. In doing so you confirm that you have an agenda, since not only do you not explain your inconsistency; you continue to seek to validate that inconsistency.
One would have thought that the majority opinion in Bilski would have been enough. That the rationale accepted by the highest court behind Congress choice of enacting specific legislation would have been enough, but no – much like Stevens, who would rewrite law and directly countermand Congress from the bench, Ned continues his quest against an entire targeted category of methods.
This, rather than some “colloquial usage,” has the debate been about.
The “whole debate” has been about Ned’s improper usage and selective category targeting.
The usage of the legal term of eligibility simply is different when discussing an entire category, precisely because a category is not a specific instance. It is telling that the quote Ned pulls from State Street is the court’s renunciation of a categorical approach of denying eligibility to an entire group of subject matter regardless of individual claimed subject matter, a categorical approach that is clearly the focus of Ned’s agenda.
One can – and should – talk about the eligibility of A claim, ANY claim, ALL claims – in their singular instances. But that does not mean that one cannot also discuss eligibility on a larger scale, on the scale of “as a category.” This is expressly, legally correct when discussing a doctrine, such as the business method exception to patentability, that itself treats the entire category as eligible or ineligible.
The duplicity, then, is that Ned points to his opponents and rests his case on an alleged misuse of a legal term when it is Ned and his agenda that is misusing the term, obfuscating the singularity and the group aspects to suit his agenda. It is no accident that Ned rails against Judge Rich, whom he sees as personally responsible for the group (as a category) eligibility of business method patents.
But that is simply what the law actually is.
As a group, business methods are patent eligible. No one has ever said or implied that any member of ANY group gets a free ride past the individual and specific analysis of eligibility. Ned’s dance between the distinct and equally valid legal meaning of the term in two different contexts – group first, then singular instance – is what the debate has been about.
Thus, properly framed and in clear context, Ned, explain your inconsistent treatment of the group, as a category and not in any singular instance of particular claimed subject matter, of business methods. Your agenda of reinstalling the discredited business method exception is clearly aimed at the group level, the as a category level. Why do you single out as a topic business methods? Why do you target the category of business methods in your endless posts? I have commented previously about having a summer intern pound through the raw data of Ned’s posts by subject matter.
But we both know what the result of that exercise would be, don’t we?
Shall we stipulate your unhealthy bias?
Shall we stipulate the fact that you do have a singular (category) target?
Shall we stipulate that you have an agenda?
Why the inconsistency Ned? Why the agenda?
So, I guess the court is saying that one can get a patent for a physical machine with gears and paper cards that performs information processing methods, but if you figure out how to abstract the problem so that you can solve the problem without actually building the physical machine, then you get no patent.
I think KSR is related to this. As they have decided that hind sight is just fine and that no invention is really worth much. You just go to your local programmer or local boy that can invent and tell him what you want and the invention pops out. That is why the whole world without patent systems does so well inventing (sarcasm if you didn’t figure it out).
A key to these arguments is structure and where is the structure. It is hard to understand and you can’t “see” it with information processing algorithms, but it is there every bit as much as an oven.
Consider making physical machines that can do the information processing. For example, consider card readers. They had physical structure and no one doubted that they were eligible for patentability. And, if you built a phycisal machine to perform the information processing algorithms, they would have just as much structure. And, a patent application would recite or refer to all the known structure for performing various subfunctions. In other words, there is every bit as much structure associated with an information processing algorithm as there is with any physical object. The judges just either do not understand it or do not want to understand it.
===what I have said above is core and key to understanding everything to do with 101==============================
One interesting fact is that Lemley who is a product of Silicon Valley which in many ways is far more an exploitor of inventions than a creator of invetions, claims that the structure of a computer program is unrelated to its function, which is of course, a total and complete lie. This is simply wrong which anyone that has a mind to read alittle of the literature would quickly come to understand. So, this is a a Lemley. An intentional lie that strikes at the heart of patentability.
Imagine taking any of these information processing algorithms and building a physical machine that represents information and then carries out the information processing method. A complex card reader for example that can write cards would work. Do you really think that the information processing algorithm would not affect the structure of the physcial machine? Outrageous lies in outrageous times with shameful amoral people.
And yes I would welcome a challenge by Lemley to try to defend his outrageous statements that the structure of an information processing method is unrelated to the function of the information processing method. The only thing I can figure is that the great unwashed is just unable to see through people like Lemley.
For the rest of the story and in context, State Street Bank continues with:
“The business method exception has never been invoked by this court, or the CCPA, to deem an invention unpatentable. 11 Application of this particular exception has always been preceded by a ruling based on some clearer concept of Title 35 or, more commonly, application of the abstract idea exception based on finding a mathematical algorithm. Illustrative is the CCPA’s analysis in In re Howard, wherein the court affirmed the Board of Appeals’ rejection of the claims for lack of novelty and found it unnecessary to reach the Board’s section 101 ground that a method of doing business is ‘inherently unpatentable.’” (citations removed)
The reason why Rich was able to toss the SC Benson decision aside as he did was because everyone at that level knew that Stevens was wrong and Rich was right. Stevens’ dicta, full of the anti-patent philosophy would wither if put to the test. Stevens applied excpetions based reasoning because he knew the SC does not have the consitutional authority to write patent law from scratch and thus had to finagle an exception to what otherwise passes the congressional (read that as real and constitutionally authorized) law.
Stevens, not Rich is the judicial scoundrel, the activist stepping outside the bounds of law. Bend the nose of wax? Stevens took a sledgehammer to it.
The only one doing the misleading is Ned Heller.
Imagine, trying to apply the exception as if it were an exemption.
Silly Ned, exceptions only apply to things that pass the first gate. No first gate, no exception. That’s why things can be patent eligible and still fail 101. That’s why your little word games with eligibility are a crock of shht. That’s why you keep getting pummeled in these 101 threads.
So since Bilski was denied a patent under the EXCEPTION of being abstract, his business method had to first pass and be eligible under the law, right?
Boy, that puts a bit of a damper on Ned’s Crusade.
You have shown Ned Heller an inconvenient truth.
Let’s see if a) he answers, and b) he answers honestly.
Ned’s anti-patent bias peeks through.
No real surprise.
“Open your eyes and answer the questions.”
Sorry AE, the line for Ned to answer questions begins way, way, way over there. He will ignore your questions just like he ignores anyone else who asks him questions on things he does not want to address.
Ned is in denial.
He cannot see what he refuses to see.
He refuses to know that he doesn’t know.
There is something seriously wrong with the dude upstairs.
And on another note, has anyone else observed the subtle drift in language used to describe the judicial exceptions? Re-reading A New Light’s view on ppower grabbing by the Court, one has to wonder why the intelligensia have not picked up on the fact that the three Court additions are called exceptions. That is, they are exceptions to what the legislators have decided what the law is.
As A New Light has pointed out, they have placed a gate before the gate. This is also how Ned looks at this. He has posted that you have to treat the exception first. This of course is wrong. Everyone knows that the way to treat legal exceptions is to first treat the condition and only if the conidtion is met then you apply the exception to see if it falls out. In a very real sense then, eligible is indeed a very large set.
Once you figure out eligible, then and only then do you apply the exceptions.
So, according to the constitutional design of appropriate power, it is perfectly correct to say that business methods are eligible. In a nod to Anon, they are eligible just like any other method (and yes, Ned, Anon has been consistent in his views and in his application of law, unlike you). It is only after the rule of eligibility as designed by the legislative branch does the question of exceptions created by the judicial branch get to be asked.
The point is clear. All law is applied to methods, regardless of category equally. No wonder why so many people like to yank Ned’s chain with the medical methods logic. The Prometheus case is a perfect foil for shinging a light, a giant spotlight on Ned’s inconsistency.
“So, how can this claim be seen as allowable regardless of any 101 question?”
Because courts overlook what amounts to an objectionable matter all the time.
> The whole country notices how the Federal Circuit historically seemed bent on expanding patentable subject matter into new areas (bacteria, plants, mice, DNA, business methods and software, to name a few), lowering the standard of invention, and otherwise being a tool of the patent bar.
I don’t buy it.
First: The clear trend in CAFC decisions over the last decade is a constriction of patent owners’ rights. Consider the rising requisite standards of the disclosure; the reasons by which a patent can be invalidated or limited (e.g., estoppel and inequitable conduct); and the restriction and negation of claim styles like means-plus-function and signal claims.
Many of those changes were imposed by the CAFC. As but one example, consider Bilski – arguably the most important section 101 case since State Street Bank. The CAFC’s Bilski machine-or-transformation test was arguably more rigorous than the standard set by SCOTUS in abandoning this test.
Second: “The patent bar,” if it can be considered as a unit, is one of the most disorganized and feckless entities in existence.
I can name exactly one instance where “the patent bar” united to argue a coherent position: Tafas v. Dudas, the case against the PTO’s intention to throttle its incoming docket by restricting RCEs. That’s it. In every other case, you have some patent owners arguing one way, and other patent owners arguing the other way, and the rest of the “patent bar” (e.g., AIPLA) refraining from comment. Indeed, even in issues where “the patent bar” should be a coherent and central player – e.g., the competing reform bills that culminated in the America Invents Act – AIPLA was largely helpless (because the competition was largely a dispute between various sets of large companies).
As for the judges: I once saw a chart indicating the percentages of CAFC judges’ pro-patentee and anti-patentee decisions. Wish I could find it again, but I can’t. Anyway, it illustrated that the CAFC has judges who typically lean toward expansion, like Rader and Newman, and judges who typically lean toward restriction, like Michel, Dyk, and Mayer. It’s a gradient – as it should be.
Again, my central problem is that the CAFC = experts in patent law who spend 90% of their time on patent law, while SCOTUS = general law experts who spend less than 2% of their time on patent law. Do you contest these facts?
Ned, if you think your response is making a point in my call for you to apply the law consistently, you have missed – and missed badly.
“business methods have been, and should have been, subject to the same legal requirements for patentability as applied to any other process or method.”
This legal truth remains in place regardless of what the Supreme Court did in Bilski. The plain fact of the matter is the the claim in Bilski failed because it was abstract, not because of what category the claim would be classified under.
You are guilty of at least three logical fallacies:
1) the Supreme Court does not recite every tennent of law in every case. Just because it was not used in Bilski, does not mean that it is no longer a legal truth.
2) the legal truth calls for equal and consistent treatment. Forever and a day this has been my position and quite frankly, the antithesis of yours. You are he with an Agenda and the attempted unequal treatment under the law based solely on category of method. You offer no defense to this damming charge other than unbelievable – and patently false – denials. You still have not addressed that issue of consistency of legal treatment, playing dodgeball.
3) In no way do you address the false position advanced by Stevens and apparently subscribed to by you as current law – in that the animosity toward business methods is untethered in any law passed by congress or in the constitution. You have zero basis for your bias. Zero legal basis, that is – I know, in fact it is plainly evident, that you have a philosophical basis. It is plainly evident that that is what your agenda is.
Your penchant for getting case law so horribly wrong and so often on this topic is clearly driven by your zeal for your agenda, as you are clearly running blind.
Ned: “Actually, at one time AI did contend exactly that business methods were eligible, move on to 102/103/112.”
There is nothing wrong in saying that.
That’s the same as saying processes, machines, articles of manufacture, and compositions are eligible, move on to 102/103/112.
Yes, we all know about the judicial exceptions. And no one has ever said business methods are exempt from those exceptions either
So the above is a fact and it’s the law.
And now you owe an apology to anon, AI, and anyone else you have accused, misquoted, maligned and insulted on this issue.
> Please say it ain’t this bad.
Signs point to regrettable:
link to inventivestep.net
> What happens to your patent term during this seven years?
According to the PTO, the application is entitled to a patent term extension… but only for successful appeals. If you lose at appeal, yes, seven years of your patent term are flushed.
This issue deserves more visibility in our community.
David, no.
We can and do get judges on the Federal Circuit with pro-patent agendas. The whole country notices how the Federal Circuit historically seemed bent on expanding patentable subject matter into new areas (bacteria, plants, mice, DNA, business methods and software, to name a few), lowering the standard of invention, and otherwise being a tool of the patent bar. The members of the court are, after all, wined and dined by the patent bar and by patent law firms.
Not so with the Supreme Court who keep the big picture in view, and who are not creatures of the patent bar. Better, the Supreme Court Justices and their clerks are uniformly the best judges in the land, and among the best this planet has to offer. They normally will get the policy right, leaving the minutiae to the Federal Circuit.
Would you trust a military whose commander in chief was appointed for life like a judge and who answered to no one? If not, why not? After all, leaving military affairs to the military seems to be the most efficient.
But there are larger issues, not so?
That’s right: If you appeal a case, it will vanish for seven years.
:: Mouth Drops Open::
O M G! Seven years???
Please say you are just trying to scare us.
Please say it ain’t this bad.
I always heard in was 2 years tops for appeals to be heard.
What happens to your patent term during this seven years? Especially if it took 3-4 years just to get to the appeals stage.
That’s 11 years gone from your patent’s life.
And even worse, what if everyone is now infringing your patent claims, while your application is still pending?
That’s 11 years of losing money and allowing others to get rich by stealing your invention.
That has to be a better way than this.
There has to be a brighter future.
Anyone else have a rosier outlook?
> The bottom line, the Supreme Court is pretty good at getting things right. The collective wisdom and brainpower at the court is the best in the US, and perhaps the best in the world. Give them some respect.
They are the best general-purpose judges in the United States. They are experts in general principles of law – especially the Constitution. They are not well-trained in the minutiae of every area of law.
Why does patent law get the distinction of being the only topic in federal law with its own appellate court, populated with experts from the specific field of patent law? Because patent law is the most esoteric, specialized, and difficult area in the entire body of federal law. Even the tax code doesn’t have a specialized court.
We have selected the brightest minds in the country on the specific topic of patent law, and asked them to spend 90% of their time adjudicating patent law issues. And over them, we have placed a body of 12 extremely bright generalists who spend about 1% of their time on patent law issues. Do you see a problem with that strategy?
Actually, at one time AI did contend exactly that business methods were eligible, move on to 102/103/112.
Further, the statement that "business methods ARE eligible" subject matter under 101 means exactly that to the ordinary observer. I know you know this to be the case as well. So the statement is intended to mislead and is misleading.
> Do Examiners get productivity counts when you file an appeal? If no then why not just skip the RCE and file the appeal?
Here’s the key fact about BPAI appeals, from David Kappos’s blog:
“As of March 2012 (half way through FY2012), the board had disposed of 4,310 ex parte appeals from patent applications. That’s a pretty good pace of 718 per month. Unfortunately, 6,722 appeals were filed during that same time frame, an average of 1,120 per month. So, a net 402ex parte appeals from patent applications are being added to the board’s docket each month. The backlog of 23,963 appeals at the end of FY2011 has grown to 26,375 as of March. The pendency from filing to board decision for these applications is 83.8 months or nearly 7 years.”
That’s right: If you appeal a case, it will vanish for seven years. By that time, the examiner will have moved on to SPE or left the PTO – and a finding against the Examiner’s position will be Someone Else’s Problem.
In other words: Filing an appeal causes the case to essentially vanish, and never bother the Examiner again (aside from the Examiner’s answer to the appeal brief… about which, see below).
The Board is effectively unavailable, and this situation will persist for a long, long time.
> Also, in your experience is it true that Examiners often allow the case when appeals are filed, partly because they don’t want to take the time to write a response?
“Writing a response” = “cutting and pasting the last office action into an Examiner’s Answer.” I doubt the examiners even read the appeal brief. It can’t take more than a few minutes, start to finish.
I’ve appealed five cases. Four went through the appeals filing process without additional substantive comment from the examiner, and will be adjudicated on the briefs in the indefinite future. For the fifth, the examiner simply withdrew the case from appeal and presented the same rejection citing different references that, in truth, aren’t any better than the earlier rejections.
David, your post here needs to be cast in Bronze and placed in the forum of every PTO building for all to read.
"Eventually, we'll reach the point where the office action will simply state one word – YES or NO – and a bunch of boilerplate."
When I first started practicing, they simply checked a box for the statutory grounds and listed the references as A v. B (referencing the list of references cited.) The trend towards a long-winded explanation is very modern, an artifact of modern word processors, PDF technology, and the internet.
Ned,
AI, anon, nor anyone EVER in the history of Patently O has ever said, business methods are NOT subject to the same conditions and requirements of 102 103 and 112 as any other method. For you to imply such is just below the belt dishonesty. Why, it’s lower than a slugs anus.
anon, I asked the reader to reference State Street Bank. You should too. It says, in part,
"As an alternative ground for invalidating the '056 patent under § 101, the court relied on the judicially-created, so-called "business method" exception to statutory subject matter. We take this opportunity to lay this ill-conceived exception to rest. Since its inception, the "business method" exception has merely represented the application of some general, but no longer applicable legal principle, perhaps arising out of the "requirement for invention" — which was eliminated by § 103. Since the 1952 Patent Act, business methods have been, and should have been, subject to the same legal requirements for patentability as applied to any other process or method.[10]"
Rich believed Section 103 overturned the exception. Really? In the end, the SC held in Bilski that Congress had not categorically excluded BMs, but did not rely on Section 103!
David, I have a couple of questions.
Do Examiners get productivity counts when you file an appeal?
If no then why not just skip the RCE and file the appeal?
Also, in your experience is it true that Examiners often allow the case when appeals are filed, partly because they don’t want to take the time to write a response?
Thank you again. Not does this show what the CAFC actually held, it demonstrates that Ned does not understand the difference between dicta and the holding in a case.
Quite the opposite Colin, as patents allow the small to compete with the big established players, you know, the ones that doing that moving offshores bit.
But by all means, continue to drink the kool-aid anti-software patent muck those same big established players feed you.
You are right about one thing. You are extremely unqualified to comment on the legalaspects involved.
> david, I have not had any serious KSR problems, ever. KSR is indeed cited, but the examiners are still persuaded by logic and at times evidence.
A year ago, I moved to Alexandria in order to conduct most of my interviews with examiners in person (and in the presence of their SPEs, when necessary). I’ve conducted probably 60 in-person interviews in the past year.
Based on these experiences, I’ve concluded that there are two kinds of examiners: those who understand and care about the technology, and those who don’t.
In the first case, you can talk to the examiners about the subject matter of the case and the references. They will respond accordingly: if their references aren’t valid or can’t be combined, they will find new references or allow the case. (However, these examiners are less likely to have presented irrelevant or uncombinable references in the first place.)
In the second case, the examiners care about exactly one thing: the length of your independent claims. If your claims are long, the examiner will allow them; if not, they will be rejected.
Don’t bother talking to them about the contents of the specification or their cited references. Literally, they do not care, and nothing you say will make them change their positions. Their argument is not *based on* their references, but simply *nominally cites them*. If their SPE or the Board says their arguments aren’t sufficient, they will present the same rejection with other references (which often aren’t any more relevant).
Examiners know two things:
(1) Your client’s budget is limited, and if you don’t change position, you will eventually abandon the case.
(2) Every time you file an RCE, they get additional productivity counts.
Based on these constraints, examiners have no incentive to allow your case unless they’re actually forced to.
KSR is part of a trend of reducing the requirements for Examiners’ office actions. I suppose that this reduces Examiners’ backlog (at the expense of higher appeals, but that problem is self-limiting: despite the diminishing quality of office actions, applicants are less open to filing appeals *because* the BPAI is so backlogged).
Eventually, we’ll reach the point where the office action will simply state one word – YES or NO – and a bunch of boilerplate.
Nobody has mentioned –
This claim does not pass 112/2 for three reasons:
1 – “the number of transaction cycles” lacks antecedent basis (and note, transaction cycles is not an inherent property);
2 – “the transaction event” lacks antecedent basis;
3 – “transaction cycles” does not provide antecedent basis for “the transaction event”;
So, how can this claim be seen as allowable regardless of any 101 question?
“Business methods were historically thought to be ineligible.”
I’m not sure this statement has any traction, as the thought that accompanies it, via Bilski, is that that historical thought was held to be incorrect.
Review the “dissenting” concurrence by Stevens and what he would have done outright to busines methods. His minority view is expressly not the law, and yet that is exactly how Ned reads the law.
Clearly, Ned is incorrect.
If it were the law, Stevene would have prevailed. He did not. Likewise, Ned does not.
Ned,
Your dissertation on “eligibility” is false. Like much of the “tricks” you have relied on in our discussions, (notably the categorically versus as a category twisting), you do not get to define the field to suit your agenda. I am (painfully) reminded that you have stopped short of actually engaging me in conversations when they conveniently no longer suit your purposes. Be that as it may. What you don’t say – and when you don’t say it – speaks volumes.
anon, on answering you questions, I remain your humble servant. What questions do you want to ask?
I am extremely unqualified to comment on the above: I have worked in the software industry for over 40 years.
I think it is right to distinguish what is useful to convert technology leadership to commercial leadership. In most cases, innovative companies have had to display strong commercial awareness, and have been able to outclass their competitors (better execute). Patents, or rather licensing, has had a major impact in my field: specifically, the restraints have applied to set standards across this field, and the impact of those standards have been truly beneficial.
Nowadays, these standards are set predominantly by committee, and many require the standards not to be encumbered by patents, or to be licensed in a largely non-discriminatory manner.
But this is what WAS, not will be.
What will be? Innovation has moving offshore. The thirst for education, the collapse of the barriers to entry, and the wholesale outsourcing of skill have moved the new centres of innovation off-shore.
So by all means continue with your “patent laws must follow”: it’s the last gasp of a dying industry. It will freeze the developed world out of innovation for the next century.