Deciding Foreign Case Law; Certifying Questions; and Patent Assignments

by Dennis Crouch

The Wi-LAN decision focuses on a litigation discovery dispute. In 2009, Wi-LAN had its attorneys at Kilpatrick Townsend (then Townsend) analyze the scope of LG's infringement.  After LG refused to pay, Wi-LAN forwarded the results of the Townsend inquiry (the Townsend Letter) to LG.  Once litigation started, LG requested that Kilpatrick disclose documents and testimony relating to the Townsend Letter.  Kilpatrick refused based upon its argument that the requested information was protected by attorney-client privilege.  On the other side, LG argued that any privilege was waived by Wi-LAN's voluntary disclosure of the results.  The district court sided with LG and held Kilpatrick in contempt-of-court.

On appeal, the Federal Circuit has vacated the decision –  holding that the district court applied the wrong standard in determining the scope of waiver. Hefe, the court focused on Ninth-Circuit law to determine the scope of privilege waiver and held that –  if faced with this case – would require a fairness balancing before requiring disclosure of otherwise privileged information.

The most inwardly interesting aspect of the decision stems from the short opinion dubiante by Judge Reyna.  A dubiante opinion is typically seen as the weakest form of concurrence.  Here, Judge Reyna writes:

The majority embarks on a winding course as it explores Ninth and other regional circuit case law, and evidentiary rules. At the start of its journey, the majority recognizes, “The parties do agree that the Ninth Circuit has not spoken squarely on this issue, i.e., whether fair-ness balancing is either required or proscribed in this case.”

Still, the majority discerns a trend in the law and on that basis takes a guess that the Ninth Circuit, if its hand were at the helm, would hold that there must be a fair-ness balancing in the context of express extrajudicial waivers.

I examine the trend and find in it no gates that lead to secure blue water. Indeed, I find that even a route that lies opposite the route charted by the majority is as good a route as any.

Thus, while instinct tells me the majority could be correct, I am concerned that our heading is not based on an accurate bearing. As I cannot prove or disprove our result, I go along with the majority—but with doubt.

Certifying Questions of Non-Federal-Circuit-Law: The decision here could well be contrasted with the court's recent opinion in Preston v. Marathon Oil (Fed. Cir. 2012).  That case involved a patent ownership dispute between Mr. Preston and his former employer Marathon.  At oral arguments, the court discovered a disputed question of Wyoming law as to whether particular additional consideration is necessary to support an IP assignment agreement signed by an at will employee.  The Wyoming supreme court took-up that case and held that the continuation of the at-will employment is sufficient consideration.   Preston v. Marathon Oil Co., 277 P.3d 81, 82 (Wyo. 2012).  Based on the state court decision, the Federal Circuit then quite easily held that the assignment agreement was valid and that the disputed patents were owned by Marathon.

Perhaps Judge Reyna would have been more satisfied with certifying the Wi-LAN case to the Ninth Circuit for determination of the privilege question in that case.  

= = = = =

Employment agreements are generally covered by local law –  thus, this result may vary state-to-state. One catch is that the court has federalized some bits of the law of IP assignments. Probably most importantly, the Federal Circuit has held that a prospective assignment agreement works to automatically transfer ownership rights at the moment of invention –  so long as the previously-signed agreement includes the correct magic words.

Made or Conceived: As an aside –  but critical to Preston's case – the IP assignment agreement included an assignment of any “invention … made or conceived” while at Marathon.  Preston argued that he had the idea for the invention before starting work.  The Federal Circuit found Preston's argument lacking, even if factually correct since the invention was made (i.e., reduced to practice) after Preston joined Marathon.  The Court did not indicate whether this aspect of its decision was decided under state law or federal law.  

294 thoughts on “Deciding Foreign Case Law; Certifying Questions; and Patent Assignments

  1. 294

    Mr. 101, let the record show that I do indeed duck your challenged.  I am not worthy, Mr. Expert, as you well know.  I am not an expert in the same class as you claim to be.  Not at all.  Unworthy…..

  2. 293

    Mr. Heller:
    First, let the record show, you Ned Heller continue to duck the challenge to:
    Perform the “Integration Analysis” of the USPTO Official Guidelines to Ultramercial’s claims. Second, no one is denying Benson. That is a pure strawman argument meant to distract from your blatant intellectual cowardliness in applying the Official USPTO Guidelines on Integration Analysis, to Ultramercials claims. Third, you implicitly deny Diehr as controlling case law, by refusing to specifically acknowledge it as such, and not accepting the concept, application, and Integration analysis the Court has said the case stands for. Now on to your conflation and willful misrepresentation of the law.

    Ned: 1. The claim seems to manipulate or transform abstract concepts. For example, providing access to proprietary content in exchange for reading an advertisement.

    WRONG: The claim “applies” an abstract concept, which is the way to establish statutory subject matter. ( See Diehr). The abstract concept has been objectively defined by the court and the actual inventor as ”

    “Using advertising as currency” See (Ultramercial defining the abstract concept.) “providing access to proprietary content in exchange” Is a physical act carried out in the real world. It can’t be solely performed in the mind and therefore is not abstract, see (CAFC defining Abstract ideas in Cybersource, also see Research Corp, and Alice, relying on that definition.)

    Ned: “Reading itself is a mental step. Let’s move on…”

    WRONG! You are not allowed to ignore and skip steps, even if they are mental steps, and simply move on. That would be dissection analysis which is expressly prohibited by Diehr, see footnote 12. Most importantly dissection is NOT integration analysis, which is now required. See (Prometheus describing integration of Diehrs claims.) Also see the new Office Guidelines, example number 3 using Integration for process claims.

    Ned: “If the details of how access is provided is detailed and claimed, we may have something physical and patentable.”

    WRONG: The details are in the specification. That is a 112 issue. This case and analysis is a 101 issue. You are NOT allowed to conflate the separate categories of the statute. See (Prometheus rejecting just such an approach.) Second, “patentable” is not the same as statutory or 101 eligible. Again, that would be conflating all the categories 101, 102, 103, and 112, and all that is required here in a 101 analysis. Andour entire point at number 2 about use of machines, is irrelevant because of the fact that no machine is required in order to determine the claims statutory. Diehr, Bilski, and Prometheus never said such! SO STOP THIS WILLFUL DISHONESTY & MISREPRESENTATION OF THE LAW!!!

    Ned: “It varies from the prior art only in its abstract content.”

    How any machine used or step performed varies from the prior art is a 102 or 103 issue. You are NOT allowed to bring 102, 103 issues into 101. You know better than to conflate the categories. To continue to do shows the ultimate contempt for the current law. Shame on you Ned Heller.

    Ned: “Which leaves us with only one possibility for patent eligibility, right. ”

    Right, Apply the integration Analysis from the Official USPTO Guidelines to Ultramercial’s claims and you will reach the right conclusion.

  3. 292

    A lot of time and energy by Ned Heller avoiding the point better served by takiing up the challenge by 101 Integration Expert.

    Why are you so afraid Ned Heller?

  4. 291

    Mr. Benson-denier, 

    You said, "Furthermore there is nothing in the case law, that so states a process that does not use machines is not tied to the physical world, and is therefore abstract. That is a classic example of your "wish is was" the law."

    I don't think that that is what I said or even implied.

    Let's break down what I said in detail,

    1. The claim seems to manipulate or transform abstract concepts.  For example, providing access to proprietary content in exchange for reading an advertisement.  The actions: reading, and then being provided access.  Reading itself is a mental step.  Let's move on to the providing access.  The step is abstractly stated.  If the details of how access is provided is detailed and claimed, we may have something physical and patentable.

    2.  The fact that the advertisement has to be displayed in some fashion is the use of a machine.  But the machine is simply being used.  It varies from the prior art machines only in the abstract content being displayed.

    3. The fact that the proprietary content must be stored someplace is itself only using a storage device for its intended purpose.  It varies from the prior art only in its abstract content.

    Which leaves us with only one possibility for patent eligibility, right.  It is the details on how access is provided, what machines and programming do that.  If that is detailed and claimed, then we might have something.

  5. 290

    “Mr. Expert, if there is no tie to the physical world other than the use of machines, and all that is being transformed are abstract ideas, I think the case law would suggest that the ship has long ago left port and is now gone, never to be seen again.”

    Mr. Heller, that is not a very cogent argument. At the least, I don’t see the point you are trying to make. Furthermore there is nothing in the case law, that so states a process that does not use machines is not tied to the physical world, and is therefore abstract. That is a classic example of your “wish is was” the law.

    Now if you want to discuss “actual case” law then there can be no dispute, that concept, application, and integration is all the Court requires for a process to be 101 statutory subject matter. Follow the cites:

    “The application of an abstract idea to a “new and useful end” is the type of invention that the Supreme Court has described as de- serving of patent protection. Gottschalk v. Benson, 409 U.S. 63, 67 (1972).”

    ” It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. Diehr Page 450 U. S. 188″

    “”The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole.” See From the Syllabus in Prometheus: (12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC. describing Diehr. Opinion of the Court) Emphasis added.

    Oh and Mr. Heller, as for as Benson being good law, yes it is only in so much as Diehr has cabined Benson and remains the case most on point.

    See Bilski 14, citing Diehr as controlling case law and Prometheus citing Diehr as the case most on point.

    Now, I suggest you stop ducking the challenge and go find Ultramercial’s claims, and look up the Official USPTO Guidelines on Integration, and apply Integration Analysis.

  6. 289

    Mr. Expert, if there is no tie to the physical world other than the use of machines, and all that is being transformed are abstract ideas, I think the case law would suggest that the ship has long ago left port and is now gone, never to be seen again.  Benson is good law, Mr. Expert.

  7. 288

    “Why do you think that Ned Heller never actually engages in a meaningful discussion?”

    I must concur. Ned, wants to Shilll for M o T, or some version of it, because it effectively eliminates a large swath of software and business method patents, and narrows the Congressional intent of a broad interpretation of the Statute at 101.

    This is why Ned will not engage in the “Integration Analysis” and refuses to apply The Office Official Guidelines to Ultramercial’s claims.

    He knows he can’t defeat the “Integration Analysis” and therefore it is a threat to his agenda.

    He would rather spin his own version of what he wants the law to be, rather than discuss and debate the actual law, as it exists today.

    I wonder what David Hricik, the new commenter with a background in legal Ethics, would think of Ned Heller’s online Ethics and antics?

    Well, anyway I am sure you right and the shilling shall continue, but so will the facts, the law, and Integration Analysis.

  8. 287

    Just as MaxDrei is “here to learn,” Ned Heller wants “to have a meaningful discussion.”

    Neither wants anything of the sort.

    Both are here for one thing and one thing only: to shill.

    Why do you think that MaxDrei never actually learns?

    Why do you think that Ned Heller never actually engages in a meaningful discussion?

  9. 286

    “The central problem with the first court opinion was that it seemed to assume that a programmed GP computer without more was just such a special purpose computer. Had that been the case, I believe, the claims in Benson would have been patent eligible just as Rich said in In re Benson.”

    Mr. Heller:

    What does any of the above have to do with the “Integration Analysis” from Prometheus and adapted in the Official Guidelines of the USPTO?

    Furthermore, the fact that a computer may be used in Ultramercial claims does not mean it is required.

    You do remember, there is NO Machine or Technology requirement whatsoever for 101 statutory purposes.

    Therefore the presence of a computer, no matter how you define it, can’t render a claim non statutory.

    Which brings us back full circle to the issue you duck.

    “Integration Analysis” is the key to as the Court said: : transform a process into an inventive “application” of a concept/formulae.

    A fact you apparently can’t dispute.

  10. 285

    “David, why should I perform any analysis on Ultramercial.”

    Mr. Heller:

    First of all demonstrate that you can show some decency and respect in a conversation by not calling me David. I am not David. I am 101 Integration Expert. I am not calling you any other name but that which you wish to be called, so try to do the same in return please.

    Second, you should accept the challenge and perform the “Integration Analysis” on Ultramercials claims, according to USPTO Guidelines to prove to yourself that “Integration” is indeed the key to as the Court said: : transform a process into an inventive “application” of a concept/formulae. A fact that you have explicitly denied, based on mere opinion. Of course if you do not want to face the truth, nor have an honest presentation and discussion of the law, then refuse to accept the challenge. The choice is yours.

  11. 284

    You give me different answers all the time, su ckie, whether I ask for them or not. That’s because you’re a m-r-n completely lacking in intellectual rigor and integrity.

    Compare

    MM said in reply to Give A Little Instead Of Always Taking It…
    At 1:24:
    Of course you fxxxxxing idjit.

    At 1:25:
    LOL. Of course not, you f—-ing ijdit.

    W

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    F

    MM, your ability to troll and to exhibit the tendencies that you accuse others of is astounding.

  12. 283

    David, why should I perform any analysis on Ultramercial.  The courts have not done so, and this is a case that might require a remand to the District court to conduct the analysis in the first instance.

  13. 282

    “David, “Because” is a proper answer to “why.”

    First of all who is David?? Oh never mind. “Because” does not provide an explanation of why you will not Apply “Integration Analysis” to Ultramercial’s claims. To refuse and then not provide an explanation, followed by a flippant remark of “Because” clearly shows you are not interested in honestly discussing and applying the law.

    “As I said before, with a proper analysis, the Ultramercial claims may be valid.”

    The “Proper” Analysis is the Official Office Guidelines for Integration Analysis.

    ” I really do not have time to read your entire post and respond to it.”

    You don’t have to. Read the Office Guidleines and apply the Integration Analysis to Ultramercials claims. That is the challenge before you.

    “I think the Court needs to show “integration” sufficient to make the programmed computer into a special purpose machine, as it appears to be a given than the claims do not pass the MOT. (The claims do appear to be attempting to claim a abstract business concept.)”

    M o T is irrelevant. And no one has asked for your supposition on abstract business concepts or interpretation of other cases. We have Official Guidelines now for the use of Integration Analysis. Do not tell me what something “appears to be attempting”. Perform the analysis according to the Official Office Guidelines for Integration Analysis, and come up with a result. The ENTIRE Examining Corps is required to do it.

    Why do you refuse??????

  14. 280

    David, "Because" is a proper answer to "why."

    As to your litany, that ends in "Because of all of that?",  I reply, "David, I really do not have time to read your entire post and respond to it."

    As I said before, with a proper analysis, the Ultramercial claims may be valid.  I think the Court needs to show "integration" sufficient to make the programmed computer into a special purpose machine, as it appears to be a given than the claims do not pass the MOT.  (The claims do appear to be attempting to claim a abstract business concept.)

    The central problem with the first court opinion was that it seemed to assume that a programmed GP computer without more was just such a special purpose computer.  Had that been the case, I believe, the claims in Benson would have been patent eligible just as Rich said in In re Benson.

  15. 279

    Ned replies “The SC Wrong” when the previous poster is pointing out errors in a dissent.

    Way to go Ned.

    So notwithstanding the fact that the Supreme Court can be (and has been) wrong in majority decisions, you are attempting to paint dissents as “not wrong.”

    No wonder you like dissents so much. Stevens in Diehr and Stevens in Bilski must have made you wet your pants (no matter how wrong each were).

  16. 278

    Ned Heller: “Because ….”

    Because of what exactly Mr. Heller?????

    Because In Ultramercial the court and the inventors have agreed the concept is:“Using advertising as currency”?

    Because Claiming a concept without applying it is considered an abstract idea. Abstract ideas, like a law of nature, or physical phenomena, are not patentable subject matter. Therefore the question before the CAFC is as follows: Is Ultramercial’s claims an abstract idea in view of Prometheus?

    Because the answer is clearly no?

    Because the claims in Ultramercial are an inventive application of the concept.

    Because of the way the steps of the process “integrate” the concept into the process as a whole?

    Because we can see Prometheus citing Diehr and Flook:
    “ Diehr and Flook, the cases most directly on point, both ad- dressed processes using mathematical formulas that, like laws of na- ture, are not themselves patentable. In Diehr, the overall process was patent eligible because of the way the additional steps of the pro- cess integrated the equation into the process as a whole. 187. These additional steps transformed the process into an inventive application of the formula.” (Syllabus Prometheus V Mayo 566 U. S. ____ (2012) )

    Because if Ultramercial’s claims were a mere application of a concept without integration they could read as follows:

    a method for using advertising as currency.
    1. offering a service
    2. accepting advertising as payment

    And if the specification to the above claims offered no further definition of the terms then the CAFC could rightfully rule Ultramercial’s claims to be an abstract idea based on the “integration analysis” used in Prometheus and referenced to Diehr. The claims would in effect be no more than simply stating the concept and saying apply it. See Prometheus as Authority (Still, as the Court has also made clear, to transform an un-patentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.” See, e.g., Benson, supra, at 71–72.) (( Opinion of the Court 3, Prometheus V Mayo 566 U. S. ____ (2012) )

    Because Ultramercial’s claims integrate the concept with 11 steps that when viewed as a whole and as an ordered combination offer more than the parts do separately?

    Because we can see Prometheus explaining why the claims as a whole are not fully integrated: “Finally, considering the three steps as an ordered combination adds nothing to the laws of nature that is not already present when the steps are considered separately.” ( Opinion of the Court 11, Prometheus V Mayo 566 U. S. ____ (2012) )

    Because Ultramercial’s steps can’t be completed in the mind and are not mental processes. Nor can they be completed with mere verbal instruction or with pencil and paper?

    Because the concept of the claim is still free to use in all fields and technological environments. Therefore the invention does not violate the pre-emption analysis from Benson?

    Because the CAFC and The USSC should hold Ultramercials claims as statutory subject matter?

    Because the steps of the process “integrate” the concept into the process as a whole and thus transform the claims into an inventive application of the concept.?

    Because of ALL that Mr. Heller?

    :: Awaits Your Answer::

  17. 277

    suckie First I want to thank everyone that responded to this thread

    Man, this blog has the d-mbest trolls.

  18. 276

    Can you give me a cogent reason why AI should not continue to speak?

    It’s more difficult for Nurse Ratched to put the pills in his mouth when he’s speaking.

  19. 275

    Yes or no: does your theory require [oldstep] to be a patent ineligible step?”

    LOL. Of course not, you f—-ing ijdit.

  20. 274

    Yes or no: does your theory require [oldstep] to be a patent ineligible step?”

    Of course you fxxxxxing idjit.

  21. 273

    6 would write:

    “I don’t have to apply the “Integration Analysis” because I don’t agree with it, and I am smarter than you all. Besides, you (BPAI) panel members are all Tards.”

  22. 272

    and yet you continue to ignore the critical aspect of modern day law. Personal attacks when I ask you to provide a timely legal citation is the stuff of trolls.

    Compare

    You have to be smoking something!!!!!!!!!

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    F

    Ned, what is wrong with you? Find a quote from the modern era or STFU. At the very least, stop with the nonprofessional personal attacks. What Modern Day Law is asking for is completely reasonable. You keep on citing cases before the critical time period which prove nothing. You are doing a ton of work looking up these cases. Can you not find one in the modern era? If you cannot, what do you think that tells you?

  23. 270

    “Evaluating your approach based on its acceptance by patent professionals is certainly a reasonable approach, albeit not foolproof.”

    I am not saying or implying that a certain number of Patent Professionals agree with me in anyway. Although in the months to come we will certainly find out how many Patent Professionals agree with the Office Guidelines.

    What I am saying is that a TRUE Patent Professional, e.g., a Patent Examiner working for the Office, or a Patent Attorney representing an Actual Inventor, would recognize the use of “Integration Analysis” in the new Office Guidelines, and be prepared to deal with it, one way or another.

    On the other hand, someone that ducks and ignores what the Office has acknowledged and written, is not someone I consider exhibiting professional behavior, and not someone I would ever hire.

    Finally, the vocal minority, has muddied up this blog for so long, that calling them out to respond on a substantive issue like “Integration Analysis, can only help to elevate the discussion of patent law for everyone.

  24. 269

    First I want to thank everyone that responded to this thread, pro, or con. Of course you all know 6, has rationalized in his mind that you ALL must be Actual Inventor. But that is another issue. In response to you 6, I simply want to say…

    I DON’T CARE WHAT YOU …”THINK!”

    I care first and foremost for the LAW.

    And I mean the actual law, as it is written by Congress and not how you, Ned, or MM wish it was written.

    And as someone that truly cares about the law, and the Congressional mandate to Promote the progress of the useful arts, I will not in good conscience sit back and allow your vocal minority to flat out ignore, and/or obfuscate, conflate, and twist the law to advance your own philosophical agenda’s.

    I am not asking you to respond to me. I am demanding that you respond to the Official Office Guidelines incorporating “Integration Analysis”. While I did champion this concept after Prometheus, the Office wrote the instructions for applying the concept of Integration Analysis, and it destroys each one of the vocal minorities pet theories.

    MM. dissection theory is DECIMATED!

    Ned’s, irrational reliance on MoT as definitive is DONE!

    And 6, your own misuse, abuse, and inappropriate overreaching with Benson’s Pre-emption has been put in check and is FINISHED!

    You want me to be quiet?

    You want me to stop calling you out to apply the Office Guidelines to Ultramercial’s claims?

    Fine, you, Ned and MM, cease vocalizing your wish it was the law theories as if they are the actual law and I won’t say a word.

    But the minute ANY of you resort to your usual antics I will be right here, to B slap you with Prometheus and The Office Guidelines rolled into to one! And I plan to use this moniker all the way up until the Court rules, on Ultramercial. So get use to the issue of “Integration Analysis” being in your face!

  25. 268

    Modern, state for the record whether a recorded employment agreement automatically assigns all future inventions of the employee. 
     
    That is, after all, your position and it is contrary to law and to common sense.  Contract law cannot have anything to do with this.  This is Federal Patent Law.

  26. 267

    Not my battle, but 6, it is easy to see why “AI” does not just sit back and be patient. The “vocal minority” is not sitting back. The “vocal minority” still have not acquiesced to the reality that is now. The “scoreboard” is what it is. The official Office guidance is what it is. You are still denying something that you must follow (the Office guidance). You are still in a state of denial (Ultra dies) without explaining why you hold that view. You still refuse to defend that view by the very means that you must use.

    Can you give me a cogent reason why AI should not continue to speak? I do know one thing that would shut him up: you acknowledging that he is correct (that is, as the current legal situation presents itself).

  27. 266

    Why is well established law bad law?

    Because the foundations of those decisions: contract law, has shifted.

    It’s that simple.

    I have met my burden by multiple examples of what that modern day law is. The ball is fully in your court to present some modern day legal foundation to replace the old foundation which is no longer suitable.

    And if you think I am “a pest,” then fumigate with a dose of a proper legal citation that is timely; that is, that properly accounts for the shift in the foundational contract law.

    As it is, your edifice is built on a foundation that does not pass inspection. Shore up your foundation with a cite to proper modern law.

  28. 265

    Why is well established law bad law?

    Because the foundations of those decisions: contract law, has shifted.

    It’s that simple.

    I have met my burden by multiple examples of what that modern day law is. The ball is fully in your court to present some modern day legal foundation to replace the old foundation which is no longer suitable.

    And if you think I am “a pest,” then fumigate with a dose of a proper legal citation that is timely; that is, that properly accounts for the shift in the foundational contract law.

    As it is, your edifice is built on a foundation that does not pass inspection. Shore up your foundation with a cite to proper modern law.

  29. 263

    Bad Law?
     
    The language was put into the statute in 1836.  Cases interpreting the statute date from that time. 
     
    Bad Law?
     
    Nothing has changed in the statute.  The cases have considered the issue and they have been decided.  Why is well established law bad law?
     
    It is rather you burden to show any case where an employer filed suit on a patent owned by an inventor in his own name where there was no assignment of the patent or application and only an employment agreement to assign future inventions.
     
    Look hard.  Such a case does not exist.

  30. 261

    Ned,

    Your posting bad law in several places on a single thread is making this thread difficult to follow and is unduly repetitive.

    It also does not make your posts any more correct.

    You are not providing a simple thing that you need to provide: a modern day citation. Why are you spending an incredible amount of effort in avoiding what would make the case you are trying to make?

  31. 260

    Ned,

    Your posting bad law in several places on a single thread is making this thread difficult to follow and is unduly repetitive.

    It also does not make your posts any more correct.

    You are not providing a simple thing that you need to provide: a modern day citation. Why are you spending an incredible amount of effort in avoiding what would make the case you are trying to make?

  32. 259

    Ned,

    Your posting bad law in several places on a single thread is making this thread difficult to follow and is unduly repetitive.

    It also does not make your posts any more correct.

    You are not providing a simple thing that you need to provide: a modern day citation. Why are you spending an incredible amount of effort in avoiding what would make the case you are trying to make?

  33. 258

    then it is YOUR position that recording of an employment agreement in the PTO automatically assigns title in all future inventions of the employee without MORE?!!!!!!!!!!!!!!

    I do not think the excessive use of exclamation points makes up for the fact that you are misrepresenting what I am saying.

    I have been polite, yet direct. You can only be misunderstanding me if you are trying to misunderstand me.

    The point is simple and straight forward: You need to account for the modern day law of contracts.

    You have not.

    It is as simple as that. Find some legal authority that actually addresses the issue as it exists today. Without doing so, you are only addressing an issue that no longer applies, because you are using law that requires contract law to be a way that it no longer is.

    Getting excited about law, any law, even Supreme Court law that is no longer applicable does not make that law applicable. Try to remain calm and professional about this. Getting excited and out of control only hurts your effectiveness. Pounding the table with more force is simply not effective.

  34. 257

    Mr. Day, I do not.  I only have to point out that your position makes no sense.  If you record an employment agreement in the PTO it does not automatically assign title to all future inventions of the employee to the employer.  That is more than ridiculous.   The law has been to the contrary for nearly 200 years!
     

     

  35. 256

    Mr. Day, then it is YOUR position that recording of an employment agreement in the PTO automatically assigns title in all future inventions of the employee without MORE?!!!!!!!!!!!!!!
     
    You have to be smoking something!!!!!!!!!
     
    The personal obligations between the employee and the employer are one thing.  Title is quite another.  Title vests by law in the inventor and can be assigned legally only after the invention is described in a specification and filed as a patent.  See the fricken Supreme Court cases I cited!!!!!!!!
     

     

  36. 255

    Ned,

    As previously posted, you need a modern day law cite to carry the day. All of the citations that depend on contract law pre-acceptance of the second restatement of contracts are quite meaningless and carry no legal weight.

    In fact, your knowing that such are meaningless and still advancing the argument can be considered unethical. Yes, I know a blog is not a legal forum, but you are advancing a legal position that you must know is not sustainable. At the very least, such is intellectually bankrupt and should be avoided by those who consider themselves professionals.

  37. 254

    explain exactly what I have been saying

    Except what you have been saying is legally inaccurate.

    Ned, you still fail to incorporate the modern understanding of contract law. All of your references are from an era that did not contemplate the modern legal understanding and thus fail to adequately represent the law as it is today. You merely repeat the error that Justice Breyer did in his dissent in Stanford (one of his errors).

    I do not appreciate all of the dust you try to kick up and yet you continue to ignore the critical aspect of modern day law. Personal attacks when I ask you to provide a timely legal citation is the stuff of trolls. You must eventually open your eyes and accept that what is, is.

  38. 251

    Cite That, I have cited a series of cases that explain exactly what I have been saying.  Search for Gibson v. Cook, and Gayler v. Wilder in this tread.

  39. 250

    Gibson v. Cook, reported in Curtis (1867, at Section 184): a contract to assign future inventions does not pass legal title.

    “”Probably it has occurred within the professional experience of many of my readers to be called upon to consider the operation of contracts, sometimes made by inventors, by which they have obligated themselves to convey inventions not in esse; and the question may arise whether tlie recording of such contracts in the Patent Office, within three months from the time of their execution, will operate as notice of title, so as to prevent the acquisition of a title by another purchaser after a patent has been obtained.
    We have seen that a contract of sale of a future invention, although in terms an absolute sale, can operate only as a contract to convey; and there is no statute which contemplates or requires the recording of any conveyances excepting assignments of existing patents after patents have been obtained, or assignments of inventions made and perfected, when it is intended to have the patent issue to the assignee. It has always been assumed that the object for which the act of 1836, § 11, requiring the recording of assignments of existing patents within three months, is the protection of subsequent bona fide purchasers; although this object is not specially declared. Assuming, then, that the recording of such an assignment operates as notice to everybody of the title of the assignee, can such an effect be attributed to the recording of a contract to convey an invention that is not only not patented, but has not yet been made?
    With respect to patents already issued, an assignment necessarily points to the patent conveyed, and the public records afford to everyone the means of ascertaining what has passed by the assignment. But a contract to convey an inveution not in esse, although recorded, affords a subsequent purchaser of an interest in a patent no means of ascertaining what the inventor had bound himself to convey to another person. It is true there might be cases where it could be made certain by inquiry whether the invention contemplated by the contract was the same as that subsequently patented. But is the subsequent purchaser bound to institute such an inquiry? We are considering a question of notice of title; and if the instrument supposed to operate as a notice could not, in the nature of things, give the information, can the subsequent purchaser be bound to look elsewhere? This difficulty, as well as the further consideration that the statute does not contemplate the recording or such contracts, should, perhaps, lead parties to understand that contracts for the conveyance of future inventions are really of no greater force than as the personal covenants of the inventor, to be specifically enforced against him; and that to record them will not necessarily operate as notice of title, so as to defeat a title made by the inventor to another person after he has perfected the invention and applied for or obtained a patent. At the same time, there may, in some cases, be a practical benefit to be derived from recording such contracts.”

  40. 249

    Ok AI, then why don’t you just hush until we see the results of the pending cases? I’ve said that Ultra dies, you say it lives. You can stop trying to “make” people respond to you now. Just sit back and be patient.

  41. 248

    Gayler v. Wilder, 51 US 477 – Supreme Court 1851
     
    "The inventor of a new and useful improvement certainly has no exclu~ive
    right to it until he obtains a patent. This right is created by the patent, and no
    suit can be maintaiued by the inventor against anyone for using before the patent
    is issued. But the discoverer of a new and useful invention is vested by law with
    an inchoate right to its exclusive use, which he may perfect and make absolute by
    proceeding in the manner which the law requires. Fizgerald possessed this inchoate
    right at the time of the assignment. The discovery had been made, and
    the specification prepared to obtain a patent."

     

  42. 247

    Curtis (1867), Section 170: "The statutes, however, which authorize the assignment
    of an invention before the patent has been obtained, appear to emhrace
    only the cases of perfected or completed inventions. There
    can, properly speaking, be no assignment of an inchoate or incomvlete
    invention, although a contract to convey a future invention
    may be valid, and may be enforced by a bill for a specific performance.
    2 But the legal title to an invention can pass to another
    only by a conveyance which operates upon the thing invented after
    it has become capable of being made the subject of an application
    for a patent."
     
    More to come.
     

     

  43. 246

    The language was first introduced in 1836.  That act required the recording of patent assignments to be effective.
     
    SECTION 11. Ahd be it further enacted, That every patent shall be assignable
    in law, either as to the whole interest, or any undivided part
    thereof, by any instrument in writing; which assignment, and also every
    grant and conveyance of the exclusive right, uDder any patent, to make and
    use, and to grant to others to make and use the thing patented within and
    throughout any specified part or portion of the United States, shall be recorded
    in the Patent Office within three months from the execution thereof,
    for which the assignee or grantee shall pay to the commissioner the sum of
    three dollars.

     

  44. 245

    Q: “how many true patent professionals have signed on to your “Integration Analysis” approach, whether on this forum or elsewhere?

    A: All of them.

    That’s the real point here. The USPTO has published Official Guidance to the entirety of the examining corps. There is no option but to use the “Integration Analysis” approach. The fact that the vocal minority run away and refuse to answer on this blog (for whatever reason: “because” or otherwise) is quite besides the reality that the artist formerly known as AI was correct in his legal assessment of 101.

    The score is on the scoreboard. The vocal minority cannot do anything to the reply of pointing up to that scoreboard.

    Reality wins.

  45. 244

    Wanted, I will see if I can find case on on this for you.  It is an interesting point.
     
    I found that the current provision essentially copies the provision from the 1870 patent act.  I'll check earlier versions to locate just when the concept was introduced into the statutes.
     
    From the 1870 Act:
     
    "SEC. 36.
    And be it further enacted, That every patent or any interest therein shall be assignable in law, by an instrument in
    writing;"
     

     

  46. 243

    A true patent professional would appreciate that “Integration Analysis” is from the case most on point and integral to the hot button issue of the day, 101 statutory subject matter. And so a true patent profession would gladly accept the challenge and engage!

    Evaluating your approach based on its acceptance by patent professionals is certainly a reasonable approach, albeit not foolproof. So, how many true patent professionals have signed on to your “Integration Analysis” approach, whether on this forum or elsewhere?

  47. 242

    this appears to be a straightforward admission that you are attempting to incite a response, aka trolling

    You have a rather odd definition of “trolling” young man if you think that asking questions in order to obtain meaningful responses rises to the level of “inciting.” Your personal interaction skills need some serious work.

  48. 241

    “more a matter of making”

    You desire power. Sad you don’t have any isn’t it? I also note that this appears to be a straightforward admission that you are attempting to incite a response, aka trolling.

    “more a matter of making the most vocal posters actually say something worthwhile”

    I’ve said things which are worthwhile. It is up to you to go and read them.

    Now, if you don’t mind, please stop trolling.

  49. 240

    Try extending your understanding to the depths of the USPTO Official Guidance.

    Such does include the “integration analysis” and your job depends on it.

  50. 239

    I think the “and without requiring any further act by the assignor” with proper legal citaion trumps your “one must reduce the assignment to a legal assignment” without legal citation.

    I don’t know about you, but I just find it oh so much more convincing.

  51. 238

    To be a legal assignment, the res must be in existence and must be identified with particularity.

    Cite please.

    Oh wait, you have already ignored this call for citation repeatedly.

    Oh well, yet another call for proper legal citation that Ned must reply with silence.

  52. 237

    Sotomayor was wrong.

    Breyer was wrong.

    It happens.

    Lucky for all their opinions in dissent and support of the dissent don’t mean diddly as the rest of the Court told them to F.O.

    The plain fact is that if Stanford was successful in arguing the assignment was one or equity, Breyer’s position would have held.

    It didn’t.

    That’s the law.

  53. 236

    Because

    Oh, the stunning legal mind at work.

    /off sarcasm

  54. 234

    I think it’s less a matter of caring what you think and more a matter of making the most vocal posters actually say something worthwhile.

    It’s also a matter that you three have been the most wrong on an issue that 101 Integration Expert has been right on, and he is justly validated by rubbing your noses in what the Office has published as Official Guidelines.

    Whether you actually come out and apply the Office Guidelines is not what matters. What matters is that you three consistently choose not to because (and seemingly ONLY because) 101 Integration Expert was right in his views.

    The scoreboard says what the scoreboard says. There is a lot of satisfaction in that. Does he really care what you all think? I highly doubt it.

  55. 231

    “He simply can’t do it. It is something that is apparently beyond his intellectual capacity.”

    It is true that my intellectual capacity does not extend to understanding the depths of your tar d mind and its contents, including the “integration analysis”.

  56. 230

    I don’t understand why you’re so interested in my, MM, or Ned’s views though. Why do you care what we think?

  57. 228

    Enforceability is quite beside the point. Quite.

    The statute requires a legal assignment.

    To be a legal assignment, the res must be in existence and must be identified with particularity.

    We assign patent applications and patents by number or by some other reliable and clear identification, such as divisions and continuations thereof. If the invention is assigned, all continuations and divisions are automatically assigned. There is a Supreme Court case exactly on point.

    On initial filing, the assignment can refer to the invention by title and be filed with the application.

    Regardless of whether other assignments are filed in the PTO, their effect remains subject to court interpretation.

    If one has only an equitable assignment, one must reduce the assignment to a legal assignment or join the legal title holder.

    Thus, if an employer has only an equitable assignment and the inventor has legal title, the employer cannot sue on the patent without joining the inventor. For example, if all the employer has is a present assignment of future inventions made by the employee, he still must obtain title from the employee inventor in some fashion, especially if the employee has filed the application himself.

    Again, the central problem here is that the statute requires a legal assignment, so the fact that modern law has largely ignored the distinction is immaterial.

    The fact that Stanford’s attorney did not properly raise this issue is quite beside the point. The three SC justices did raise it. It is not an issue that is going to go away.

  58. 227

    Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing

    I think a better reading of the statute indicates that “any interest” related to a patent assignment is automatically deemed to be an assignement in law. That any such assignment by an instrument in writing shall be “in law.” The Majority of the Supreme Court, after all, do say “In most circumstances, an inventor must expressly grant his rights in an invention to his employer if the employer is to obtain those rights.” Tellingly, “most” is NOT “all.”

    To answer Wcfmul, there is no such legal requirement for the patent or application number to be listed. This is not the Library of Congress where the copyright office DOES require such exactitude. Assignments not listing numbers are routinely filed, and all perfectly legal.

    Ned does not answer you because (as typical when he does not answer a question), the answer shows that he is wrong.

  59. 226

    What’s the point being made by Ned (and 6 and MM) in refusing to apply the OFFICIAL USPTO post-Prometheus guidance to the Ultramercial claims?

    What was that quote?

    Oh yeah:

    What you don’t say speaks volumes. When you don’t say it screams so loud I cannot hear anything else you are trying to say.

  60. 225

    Maybe Ned’s still having trouble locating the claims…

    After all, he always has trouble when it comes things that prove him flat out wrong.

  61. 224

    What you call “avoiding” other people merely call focusing on the right issue.

    But let’s see where you stand on this question:

    Is “I do hereby assign” the same legally as “I do hereby agree that I am obligated to assign in the future.”

    It’s a really simple question, even if three of the Supreme Court Justices can get it wrong.

  62. 223

    Apply “Integration Analysis” to Ultramercial’s claims.

    If you continue to refuse then explain to me why .

  63. 222

    ” You studiously avoid discussing it.”

    You would know all about that Ned. The way you “studiously avoid” performing the “Integration Analysis” for Ultramercial’ s claims.

    Coward!

  64. 221

    Ned,

    Once again, you refuse to provide a proper citation.

    I ask for a citation to your assertion. Your assertion does not match the statute. Thus, the statement “Read the statutue” is not an appropriate response. Posting a link to the statute is not a proper response. Saying people don’t understand the difference between a legal assignment and an equitable assignment is not a proper response.

    The problem is that you are not giving a proper response.

    So once more,

    “In patent law, one has to assign a patent or application by number, or by attaching the assignment to the invention on filing, identifying it. Anything else is an equitable assignment.”

    Cite please.

  65. 220

    Well below MM posts a question to several posters. It appears that MM thinks this a definitive victory.

    It is not.

    Next consider the following: 1. A method comprising carving a piece of wood into the shape of a violin and [thinking newthought]. Is this claim ineligible subject matter? Why or why not?

    While several posters note your apparent intention to drive my desire to understand your “theory” into the weeds (someone correctly noted that it is you that is playing dodge by asking more questions and not answering my question which only sought clarity), I will answer the question that you seem to have fallen in love with (you will have to forgive me if I do not answer right away as I do have real work to do).

    Before I do, I will also point out that regardless of what you say, your mantra is only a theory and while “prove” may not technically be precisely the proper word, you do need to ground that “theory” with a proper legal foundation. You have shown no such legal foundation as of yet.

    The answer: The claim is most likely not patent eligible subject matter.

    As to why, (the answer below of the claim failing 112, while may be true, is not an answer to the patent eligibility question), the claim, as a whole, is drawn to mere carving into a shape, which WITHOUT MORE can still be thought of artistic, and thus still falls to the non-Useful Arts (I leave room for design patents, which evidently is not part of our discussion).

    I purposefully note that while carving into a shape may be a manufacturing step, it is probably the least likely patent eligible step you could have chosen. And make no mistake, I do notice your attempt to drive this discussion into the weeds by choosing such a step (my words were merely “a step in the manufacturing of a violin). You could have quite easily chosen a step squarely in the Useful Arts.

    Regardless of your attempts, I wish to take the necessary steps to keep you out of the weeds as we take each step towards grounding your “theory” properly. Whether or not you have done this before, I really do not know. I do know that you have not done so for at least the last three years. If you have done so, I suggest you cut out the juvenile antics and make a case for yourself . As abundantly noted, your asking questions is not the way to do that.

    The reason I noted in my comment that we were getting to something “interesting” was because you appeared to be on the verge of changing your own ground rules about [oldstep] being patent ineligible. I wanted to see if you were attempting to move the goalposts without saying anything. It’s an old examiner trick to purposefully “flub” like that, and let the other person do too much talking down the wrong garden path. Even so, moving on let me attempt to preempt what I think your next question may be (and I am still expecting clarification from you that [oldstep] must be patent ineligible).

    Let’s consider the following: 1. A method comprising [patent eligible step] and [thinking newthought].

    The claim is most likely patent eligible subject matter.

    I base this on Prometheus and looking at the claim as a whole. Since the example is a little sparse on both just what the new thought is, and on what the patent eligible step is, I take the liberty when I evaluate the claim as a whole to decide that in this particular case the claim as a whole is more concerned (overall) with the patent eligible first step. This accords with Prometheus in that for that case, the Court evaluated the claim as a whole and concluded that the claim as whole to be more concerned (overall) with the non-patent eligible Law of Nature. The converse holds.

    Of course, the rest of the patent statute must still be satisfied (including 102, 103, and yes, 112).

    And of course, I could have chosen the claim as a whole to mainly focus on an inventive aspect that would violate one of the judicial exceptions in the Court’s eyes and thus be patent ineligible (ala Prometheus, and quite possibly Myriad). You asked an open question and I have provided an answer. I trust that we can get back to you providing a little more substance as to the legal foundation of your views. And please note, that taking such an absolutist view that [oldstep] + [newthought] is ALWAYS patent ineligible is disproved with but a single example.

    Be careful what you say your “theory” is.

    And in closing, I choose to ignore your baseless questioning concerning the performing arts and if only playing a violin so qualifies. The better point in that discussion would be your explanation as to why something drawn to the performing arts would be patent eligible. As I posted in my earlier response, that way is optional. However, a snarky response from you again stating that you are not entirely convinced that all processes for making music are ineligible and then asking me to explain my example of the playing the violin will not fly. You asking someone to define “the performing arts” is not germane to understanding your theory and does not fly. People should run away from these obvious attempted trainwreck diversions. As I said, you should stay away from your silly strawman restatements and stick to a professional discussion. You need better tactics than what you may be used to using. I suggest you get your game in order.

  66. 218

    You must identify the patent application, patent or the invention when you file.  That is a legal assignment of the application for patent or patent.  The statute says that applications and patents may be assigned in law.  link to uspto.gov
     
    The problem we are having in this conversation is that the people here do not understand the difference between a legal assignment and an equitable assignment.

  67. 216

    I am officially calling out Ned, MM, and 6 to perform the “Integration Analysis” to Ultramercial’s claims, using the USPTO Official Guidelines on “Integration”.

    If you continue to fail to perform, I thus declare you nothing more than shameless Trolls, Shills, and Intellectual cowards.

    After all I am not asking you to prove some whacky theory I dreamed up. You are being directly challenged to apply actual case law from a 9-0 Supreme Court decision that has been adapted by the USPTO in their official guidelines, and remanded to the CAFC for review.

    A true patent professional would appreciate that “Integration Analysis” is from the case most on point and integral to the hot button issue of the day, 101 statutory subject matter. And so a true patent profession would gladly accept the challenge and engage!

    Even if you continue to duck this issue as you have for the last month, I will continue to confront you with it, and shine a light on your cowardliness for all the patent community to see, right up until the time the CAFC comes back with it’s response to the USSC.

    You all can run but you can’t hide!

  68. 213

    “Stop asking questions Malcolm, and get busy proving that you are not a troll. If that’s possible at all.”

    It’s not possible MM obviously is a Troll. He was the blogs original and sole troll for many years. Yes, LogicSteps really did ask good questions that could have helped MM flesh out and validate his theory, provided he had any substance and legal foundation for it. But when challenged his theory collapses like a house of cards.

    It’s the same way MM wont dare broach the subject of “Integration Analysis”. All he seems capable of doing is acting like a clown.

  69. 212

    Still waiting

    And you will keep on waiting.

    Malcolm doesn’t give answers.

    Look at how he (mis)treated Logic Steps, who set about in an earnest attempt at an adult conversation with Malcolm to discuss Malcolm’s theory and Malcolm dodges behind asking questions and insulting anyone who “looks too close” instead of actually explaining the theory, even throwing out the “I’ve explained this a billion times” line of crrp.

    It’s the same ploy every time. Malcolm does not give substance because he has no substance. It’s the man behind the curtain, pulling levers to make noise and give off smoke, but there is really nothing there.

    His only gambit is to ask questions so he does not have to back up anything. Logic Steps handled his questions, and instead of playing fair and providing an answer, Malcolm hides behind his third question (which is not really on point anyway). Anyone joining in and trying to keep Malcolm honest is merely greeted with that same tangent-leading question.

    He wants others to explain things, when it is his view that needs to be explained (for the first time, completely and tied to proper legal foundations).

    Stop asking questions Malcolm, and get busy proving that you are not a troll. If that’s possible at all.

  70. 211

    “Actual Inventor’s position was still reached. You keep on forgetting that capstone event.Your view of dissection without a re-integration plays right into Actual Inventor’s argument. In essence, you are dissecting the discussion of dissection and leaving out the critical parts as captured in the Office Guidelines.”

    That’s exactly right. MM, wants to strip away and ignore element(s).
    That is dissection.

    Integration analysis looks at the parts of the claim and then integrates them as a whole for consideration. This is made clear in Prometheus, 9-0!

    It’s in the Official USPTO Official Guidelines. See below:

    “This claim ( Diehrs) would pass Inquiries 1-3 in the above analysis as it is a process that includes the Arrhenius equation as a limitation, with additional steps that “integrate” the Arrhenius equation into the process..”

    The reason MM, or Ned and 6, for that matter, won’t perform the “Integration Analysis” on Ultramercials claims, is that “Integration” is inclusive, and supports the concept of 101 being a broad and expansive door to patentable subject matter.

    That’s how congress wrote the law and Judge Rich rightfully interpreted the law.

    The vocal minority want to exclude, weaken and limit patents, and they desperately need dissection ( strip away and ignore) to implement their agenda. But as it is well known, integration is the antithesis of dissection!

    Integration Analysis is the future and the future is NOW!

  71. 210

    “1. A method comprising carving a piece of wood into the shape of a violin and [thinking newthought].”

    Is this claim ineligible subject matter? Why or why not? ”

    Your claim fails 35 U.S.C. 112.

    You have no preamble, or step(s). And the claimed [“thinking newthought”] is not described in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, to understand and execute the claim.

    Now why are you wasting time making up these strawman examples when we have real claims in Ultramercial waiting to be analyzed with the “Integration Analysis” ?

    Are you that afraid to acknowledge what the supreme Court has set forth, and the USPTO has adapted into their Official Guidelines?

    Now stop being such a coward and perform the” Integration Analysis” on Ultramercial’s claims.

  72. 209

    Let the record show that 6 , for over a month now has run from the challenge to apply peform the “Integration Analysis” to Ultrammercial’s claims.

  73. 208

    “What are the odds that the exact same results of this alleged posting by 6 matches “6 having performed the i integration analysis on the Ultramercial claims” ?”

    6, will never perform the “Integration Analysis” on Ultramercial’s claims.

    He simply can’t do it. It is something that is apparently beyond his intellectual capacity.

  74. 207

    Mr. Heller:

    What are you talking about? We are not involved in any debate. You have not even begun to apply the Office Guidelines on Integration, to Ultramercial’s claims,. Do that and we can debate the results of your analysis. No more excuses please. Just do the analysis already.

    ::waits::

  75. 205

    I ask for a citation to your assertion. Your assertion does not match the statute. Thus, the statement “Read the statutue” is not an appropriate response.

    So once more,

    In patent law, one has to assign a patent or application by number, or by attaching the assignment to the invention on filing, identifying it. Anything else is an equitable assignment.

    Cite please.

  76. 201

    On the contrary, the “what is being assigned” is a non-issue under California law (passim).

    The issue is the distinction between obligation to assign in the future and actual assignment of a future right.

    The SC was operating using Fed. Cir. law

    Bingo.

    If that law was wrong, would the SC operate using it? Especially as the matter touched on standing, which is arguable at any state of a case?

    You rest on a dissent (which is in clear error trying to equate future obligation with actual assign – very much contrary to your immeidate assertion of “The words “assign” are not the problem.” and a concurrence of one (which only agrees with the errant Breyer views) as some type of holding to support your view.

    Too much of a stretch, with too little support.

  77. 199

    The SC was operating using Fed. Cir. law, specifically, Film Tec.  The "very competent" Standford attorneys apparent chose not to raise the issue of Film Tec on cert.  Sotomayor, Breyer and Ginsburg all noted this as the reason the Court did not raise the issue.

  78. 196

    As relevant here, Roche responded by asserting that it was a co-owner of the HIV quantification procedure, based on Holodniy’sassignment of his rights in the Visitor’s Confidentiality Agreement. As a result, Roche argued, Stanford lacked standing to sue it for patent infringement.” Stanford v. Roche citing 487 F. Supp.2d 1099, 1111, 1115 (ND Cal. 2007).

    Yes. The Supreme Court recognized that a present assignment of a future right under the applicable situation in front of it (thus under applicable California law, even if not directly cited) was a LEGAL assignment.

    As for brains, even Ned has “a brain.” We see how over-rated that is.

    Why, anybody can have a brain. That’s a very mediocre commodity.

    Every pusillanimous creature that crawls on the earth or slinks through slimy seas has a brain!

  79. 195

    From Stanford v Roche:

    Roche responded that Holodniy’s agree- ment with Cetus gave it co-ownership of the procedure, and thus Stanford lacked standing to sue it for patent infringement.

    That looks like a legal assignment to me as opposed to an equitable one.

  80. 194

    Reagon…
    Creotards…

    Really reaching there MM.

    How sad.

    Your over-indulgence in h_ate-speech only hurts you.

    I don’t know why Dennis Crouch puts up with this.

  81. 193

    Serious Strawman there Ned.

    Tell me what do you think of these words: “and do[es] hereby assign

    Legal or equitable?

    Hint: The Supreme Court has already answered this question.

  82. 192

    MM still is missing the comment. Pvssy 6 is nowhere to be seen in holding MM’s feet to the Prometheun fire.

    Funny how that works.

  83. 191

    Let the record show that MM runs away from a basic and simple question about his own theory, donning his tinfoil helmet and calling the rest of the world “suckies.”

    And that question again: “Malcolm, are you committing to this notion? Yes or no: does your theory require [oldstep] to be a patent ineligible step?

  84. 190

    In patent law, one has to assign a patent or application by number, or by attaching the assignment to the invention on filing, identifying it.  Anything else is an equitable assignment.”

    Cite please.

  85. 189

    If you really want to join the conversation, you would climb downpff of your thrown and read the blog like a normal person.

  86. 187

    Let the record show< -I>”

    Does this mean that the record should also show all of the questions you have not answered?

  87. 185

    suckie yes it is a theory

    I have I mentioned lately how much suckie resembles the creotards at Answers in Genesis?

    It’s pretty remarkable.

  88. 184

    What question. I ask because all I see is your e-mail

    Get off your duff and read the blog like everyone else.

  89. 183

    Let the record show: when presented with the following claim

    1. A method comprising carving a piece of wood into the shape of a violin and [thinking newthought].”

    suckie could not tell us whether the claim was ineligible for patenting or not, nor could suckie articulate why it was impossible for suckie to answer the question.

  90. 182

    If you need additional information to answer the question, just let us know ”

    Already asked for.

    Still waiting.

  91. 181

    “anon” = suckie:

    “I think this is the first time ever we find out that MM’s favorite banal canard has an [oldstep] that is itself ineligible for patenting.”

    This is the first time I am seeing this interpretation.

    This is the first time I am seeing suckie admit that he was involved in the attempt on Reagan’s life.

    Great game, trolls.

  92. 180

    When you start with an incomprehensible, undefined and inane theory (and yes it is a theory), there is no ability to “offer any coherent explanation“.

    That you think this makes you superior only shows how truly warped you are.

    That tinfoil hat is buckled on way too tightly.

  93. 177

    Mr. Integration, nice try there, the bit about losing a debate.  Just because I cannot get you to concede a point does not mean that you are right.

  94. 176

    suckie MM, you have never proven your theory

    It’s not a “theory”. There is nothing to prove. All claims in form [oldstep]+[newthought] are ineligible for patenting. Saying that you disagree does not change that fact, especially when you are unable to offer any coherent explanation as to why you disagree. You really do s-ck, suckie.

    So, answer the question:

    1. A method comprising carving a piece of wood into the shape of a violin and [thinking newthought].”

    Is this claim ineligible subject matter? Why or why not? What’s the matter, suckie? Just apply your “integration test” to the claim and let me know. If you need additional information to answer the question, just let us know exactly why you need the information, suckie. Thanks, suckie. In the meantime, there’s a brown stain on your pink track shoes. It smells. Go talk to mommy about it.

  95. 175

    Mr. Explain,

    If you have legal title, you can go into court and sue others for patent infringement without more.  

    Suppose the inventor files and obtains a patent.  He used to be an employee of your company.  You think his patent is based on an invention made while he was employed and pursuant to an employment agreement giving you as employer title. What you have is a right to sue him to obtain a legal title by court order.

    However, you do not have the right to go into court and sue others without that court order.  All you have is equitable title.  Period.  You first have to reduce your equitable title to a legal title.

    Think about it for awhile and you will agree.

    Just think about a company, let's call it Big Blue, trying to assert a patent in court when all it has is an employment agreement whereby the employee assigned future inventions within the scope of their employment; and when the legal title remains in the inventor?

    Think.

    Now you can begin to see the big picture.

    A legal title is good against the world:  equitable only against the obligor.  

    In patent law, one has to assign a patent or application by number, or by attaching the assignment to the invention on filing, identifying it.  Anything else is an equitable assignment.

    By statute, patents and applications are assignable only by legal assignments.

    Check this for more on the difference:

    link to jstor.org

  96. 174

    Lolz at MM.

    Wanting answers and not providing any.

    Did you really think that no one would notice that you did not answer the question that Logic Steps first asked?

    That question: “For the [oldstep]… ineligible or not patentable?

    Your “answer” recognizes the huge difference, but you NEVER actually gave an answer.

  97. 172

    suckie = people who never question suckie when suckie makes bizarre statements

    What a bizarre statement. I just have to question it.

  98. 171

    Then I will provide my answer (for the ten billionth time here in these threads) and you can critique my answer to your little heart’s content.

    I have checked all ten billion of these so-called answers and there is nothing of any substance there. All that is ever found is “sound byte (non)legal quips” accompanied with insults and invitations for others to prove your own theory. MM, you have never proven your theory, let alone established any legal basis for that theory. It is actually surprising that a term of your theory has started to be defined (your [oldstep] being a patent ineligible step).

    Once again, we see that you are a legend in your own mind, the lonely and desolate place that it is.

  99. 170

    Someone once said “It’s what you don’t say that speaks volumes. It’s when you don’t say it that screams so loud I cannot hear anything else you say.

    This fits particularly well with Ned Heller, who is Patently-O’s most prolific poster, except when necessary to answer points raised against his views.

  100. 169

    Copying MM and 6 in accusing others of being “trolls” while avoiding actually addressing the points raised on the blog is decidedly poor taste.

  101. 168

    1. A method comprising carving a piece of wood into the shape of a violin and [thinking newthought].”

    Is this claim ineligible subject matter, suckie? Why or why not? Explain your answer.

  102. 167

    Mr. Heller:

    First I noticed that when you lose a debate you always like to claim the other person is not a lawyer, or is not as smart a lawyer as you. Well, with all due respect, if you were truly so superior, you would not have to say so. You could simply when the argument on the law and facts.

    Now with that being said, when will you stop ducking the “Integration Analysis” issue and apply the Office Guidelines on Integration, to Ultramercial’s claims?

    I mean since you are obviously a lawyer, and in your own mind at least, a superior one, this simple request should be a cake walk.

  103. 166

    So you must understand my (MISUNDERSTANDING THE TRICK) Fake Patent #1 and the next Fake Patent were similar… accept for trying to hide the fact that I was told I could only have THREE… COUNT EM THREE… now FOUR DRAWINGS. This was about making me look like a liar when I spoke with Karl and what he said I could and couldn’t have as time went by… Then on August 26,1995 PUFF… A BRAND NEW HAHAHAHAHAHAHAH LAWYER? BUT GUESS WHAT! COIF= Clear
    Only
    Inteligence
    Fails
    But Tricks are made for Kids! And I was one (D)umb Kid!

  104. 165

    As everyone (including you) is well aware, that conclusion was reached only after the claims were dissected, you willfully ignorant —-k—x–ard.

    That’s some dustcloud you have kicked up Malcolm. The conclusion was still reached, Actual Inventor’s position was still reached. You keep on forgetting that capstone event.

    Your view of dissection without a re-integration plays right into Actual Inventor’s argument. In essence, you are dissecting the discussion of dissection and leaving out the critical parts as captured in the Office Guidelines.

    It’s quite amusing watching you do everything you accuse others of doing (trolling, self-defeating, being tiresome and incomprehensible).

    Could you flail about anymore ineffectively as you are doing now? I do not think so.

  105. 164

    EXACTLY! I now realize the change was on the first one in the Copyright. Ephiphany.. YAH THAT”S IT! The drawings on the second were not considered as real for the Patent because they had no numbers. But the very first one sent to me was changed only for my benefit, so that did give them more ROPE TO HANG THEMSELVES. And me being sent in a million directions didn’t get it. I love me today. I must be a Genuimusss!
    Now when asked would I sue for the Copyrights, I would understand what they did when they changed them! Not knowing who’s on first is important in Law! It makes nothing understood by the Client. How can the client Sue when she doesn’t know who’s on first! Laurel and Hardy… ha ha ha Hardee harr harrr

  106. 163

    Or at least describe it in the Art you put on your Application. Sort of like showing a slotted Swim platform but not describing it anywhere LOLOLOLOL? It sucks when you send in the Art. then send the client something else claiming you fixed it LOLOLOLOL!

  107. 162

    The claim is ineligible because it is a thought. And a thought is not on Paper. You can’t draw a thought! Bit you can Patent an Idea that is still in fruition as long as you make enough art!

  108. 161

    1. A method comprising carving a piece of wood into the shape of a violin and [thinking newthought].”

    Is this claim ineligible subject matter, “anon”? Why or why not? Explain your answer.

    Thanks.

  109. 160

    “anon” He wants to prevent you from dodging

    LOL. You got that completely backwards, “anon.”

    Your concern is appreciated, though.

    LOL.

  110. 159

    “anon” I see why Logic Steps is asking. He wants to prevent you from dodging and wants you to commit.

    Please read suckie’s statements in this thread and let me know if you agree with all of them. If you disagree with any of them, explain why. If you don’t disagree, just say so. Also, let me know if you believe that a claim to a purely mental step (e.g., “thinking a new thought”) is eligible subject matter.

    With respect to suckie’s statements, I’m interested in whether you believe that methods of making music are per se ineligible? Or is it the case that only methods of making music with a violin are per se ineligible?

    suckie = people who never question suckie when suckie makes bizarre statements

    Prediction: anon is suckie

  111. 158

    I think this is the first time ever we find out that MM’s favorite banal canard has an [oldstep] that is itself ineligible for patenting.

    This is the first time I am seeing this interpretation.

    However, in true Malcolm style, it is not clear whether Malcolm is actually committing to the dedication of his [oldstep] to being (or only being) a patent ineligible step.

    Malcolm, are you committing to this notion? Yes or no: does your theory require [oldstep] to be a patent ineligible step?

    doesn’t seem like a very smart way to advocate or support a legal theory.

    Malcolm has never been accused of being very smart.

  112. 157

    Not to butt in to your fine dialogue (well, as fine as someone having a dialogue with you can be), but it appears that you do not comprehend the question being asked. It is not what Logic Steps considers that is being asked, it is what you MM consider.

    I see why Logic Steps is asking. He wants to prevent you from dodging and wants you to commit. Please answer the question MM, do you consider the claim under discussion to be a claim in the form [eligible subject matter]+[ineligible subject matter]?

  113. 156

    suckie I gave you a couple of answers and asked for only one from you.

    As I noted previously, suckie:

    you [suckie] already indicated that you [suckie] consider “a step in the manufacture of a violin” to be eligible subject matter and old step, which is why I chose to use that limitation in the hypothetical claim — this way we won’t waste time arguing about that aspect of the hypothetical

    Comprende? Now, please stop -ffing around, suckie, and answer the question you were asked. Probably makes most sense to respond to my 12:32 comment below, where the question has been repeated for your convenience.

  114. 155

    Me: if you have a claim, e.g., a method claim in the form [eligible subject matter]+[ineligible subject matter], you can’t just look at one element and say “Oh, that element is ineligible so the claim must be ineligible.

    Office: It is improper to dissect a claimed invention into discrete elements and then evaluate the elements in isolation

    There’s no contradiction here, suckie. Your ignorance and confusion makes me sad. Oops… check that. It actually makes me laugh.

    LOL.

  115. 154

    suckie: The answer I gave was a method: playing the violin.

    Are all methods of making music non-eligible subject matter per se? Or just methods of playing the violin, suckie? I’m curious.

    Unless (again) you somehow think the performing arts are part of the Useful Arts

    Please define “the performing arts”, suckie. Are all methods of “performing” ineligible subject matter ineligible per se, suckie? Or just methods that involve a violin?

    While you are running away from those obvious questions (you’re the one who brought the issues up, suckie, not me!), maybe you can get back to the core question we’re discussing. Remember that, suckie? Here it is again:

    1. A method comprising carving a piece of wood into the shape of a violin and [thinking newthought].”

    Is this claim ineligible subject matter? Why or why not?

    You still haven’t answered the question, suckie. And please explain your answer. That includes explaining your assumptions/beliefs about what is or isn’t eligible subject matter and what is or isn’t old in the art, if you deem that necessary (I note that you already indicated that you consider “a step in the manufacture of a violin” to be eligible subject matter and old step, which is why I chose to use that limitation in the hypothetical claim — this way we won’t waste time arguing about that aspect of the hypothetical). Please answer the question. If your answer is not clear, I will likely ask you to clarify your answer. Then I will provide my answer (for the ten billionth time here in these threads) and you can critique my answer to your little heart’s content.

    Thanks, suckie.

  116. 153

    Mr. Modern, whether an obligation exists or doesn’t exist, or to the extent that it is effective, is wholly aside from the whole question on the table. The question on the table is whether the obligation is an equitable obligation or a legal obligation. The question is not whether there is an obligation.

    Parallel to my other post, this does not make sense.

    Don’t you first have to figure out if what you have is merely an obligation or if you have an assignment? Ned’s “question on the table” cannot be right. The use of the term “obligation” seems confused at best.

    If you ARE assigning something NOW, there is no future obligation, legal or equitable to be had.

  117. 150

    Casual, you miss the same point as Wheeler.  The issue is not whether there is an obligation, but whether the obligation is equitable in nature.  Under California Law, it is equitable.  There is nothing in the Restatement to the contrary.

  118. 149

    one has an an equitable obligation to assign.”

    This may seem like a silly question, but how can one have an obligation TO assign, if one actually is presently assigning? Isn’t it common sense that if you are presently assigning that there is no need for an obligation to assign in the future.

  119. 148

    However, there is no federal common law.

    Then you agree with A New Light that the authority for the patent judicial exceptions does not rest in Court authority then, right? After all, if there is no federal common law, then the authority must come from somewhere else and even the Court says that the authority implicitly comes from Congress rather than the Court.

    Or do you happen to think that those particular words were exceptionally NOT chosen with care and meaning?

    I hope you realize this wrecks your whole holding/dicta common law basis for ignoring the Product Of Nature as part of the judicial exceptions to patent eligibility argument.

  120. 147

    I think this is the first time ever we find out that MM’s favorite banal canard has an [oldstep] that is itself ineligible for patenting. No wonder why he could never rejoin a conversation about mental steps doctrine. Mental steps doctrine involves mental steps with patent eligible [oldsteps].

    Now that makes sense that MM always refused to integrate his pet theory into the case law making up the mental steps doctrine.

    But why was he always circumspect about it? Playing “hide the meaning” doesn’t seem like a very smart way to advocate or support a legal theory.

  121. 146

    Let’s not forget about MM’s response to the Office Guidance (in key part):

    All that this means is that if you have a claim, e.g., a method claim in the form [eligible subject matter]+[ineligible subject matter], you can’t just look at one element and say “Oh, that element is ineligible so the claim must be ineligible.”

    After all, this premise needs no support and must be taken as a given since “The only people who can’t understand this basic and fundamental fact are the r-t-rds like suckie who troll this blog.

    Of course, this derives from the key Office guidance of “It is improper to dissect a claimed invention into discrete elements and then evaluate the elements in isolation because it is the combination of claim limitations functioning together that establish the boundaries of the invention and limit its scope.”

    Funny thing about this guidance, is that this is the position of 101 Integration Expert and the opposite of MM’s position.

  122. 145

    Such precise logic and reason is going to make MM’s head explode!

    :: Grabs Popcorn and Butter::

  123. 144

    And let’s not start with the silly strawman restatements like “You seem very attached to your comment that “music is not eligible for patenting.” The comment is irrelevant because “music” is not an “old step”.

    The answer I gave was a method: playing the violin. “Music” is just a way of characterizing that and definitely not the way you are attempting to spin it as “music” the category. Unless (again) you somehow think the performing arts are part of the Useful Arts (which would warrant an explanation).

  124. 143

    I gave you a couple of answers and asked for only one from you.

    I am pretty sure that Before I answer this question, I have a question for you: Do you consider this a claim in the form [eligible subject matter]+[ineligible subject matter]? is something you can handle.

    If you want to give more, you can explain how any making music could possibly be patent eligible (but it’s not really necessary).

  125. 142

    suckie You specifically asked “please give me an example of and [oldstep] that is not eligible for patenting?”

    I did so.

    So you believe. I’m not entirely convinced that all processes for making music are ineligible. Or is it just making music from a violin that is ineligible? Please explain, suckie.

    You seem very attached to your comment that “music is not eligible for patenting.” The comment is irrelevant because “music” is not an “old step”. It’s not a step at all, in fact. That’s why it’s irrelevant to our discussion, at least at this early stage.

    Your question concerning ineligible and old is completely immaterial to a patent discussion

    No it’s not immaterial because if you believe that a claim in the form [old,ineligible step]+[newthought] is eligible for patenting, then we need not continue the discussion. But you answered reasonably well. Only a n0tcase would flup that one up, though. Let’s see how you did with the next question.

    “1. A method comprising carving a piece of wood into the shape of a violin and [thinking newthought].”

    Is this claim ineligible subject matter? Why or why not?

    Oops, you didn’t answer the question.

    Please answer the question that was asked: Eligible or not? And explain your answer. That includes explaining your assumptions/beliefs about what is or isn’t eligible subject matter and what is or isn’t old in the art, if you deem that necessary (I note that you already indicated that you consider “a step in the manufacture of a violin” to be eligible subject matter and old step, which is why I chose to use that limitation in the hypothetical claim — this way we won’t waste time arguing about that aspect of the hypothetical). Please answer the question. If your answer is not clear, I will likely ask you to clarify your answer. Then I will provide my answer (for the ten billionth time here in these threads) and you can critique my answer to your little heart’s content.

  126. 141

    Now Modern Day Law is Actual Inventor? Why can’t you, and Ned, just engage in a debate without, at the first sign of losing, calling everyone AI?

  127. 140

    MM: No, I want people to remember that when you were asked to provide an example of a claim in the form [oldstep]+[newthought] that passed your beloved “integration test”, you were unable to do so provide.

    101 Integration Expert: I did provide the claim and will do it again. In fact I will give you three. [ see Jul 17, 2012 at 08:44 PM for the claims and proof they pass “Integration Analysis”. ]

    MM: Where’s the [newthought] in that claim..

    101 Integration Expert: Every step requires new thoughts.

    MM: Please provide a cite showing where the Supreme Court or any other court construed the claims in Diehr such that infringement required an actor to “think a new thought” at every step in the claim.

    101 Integration Expert: What does this new question have to do with the original challenge to , “ provide an example of a claim in the form [oldstep]+[newthought] that passes the Prometheus Court’s and USPTO Guidelines on “Integration Analysis” ? I met that challenge and now you move the goal post. I don’t see any reason to do anything more. Now how about you apply the Prometheus Court’s and USPTO Guidelines on “Integration Analysis” to Ultramericials claims? Since you are so afraid I will go first:

    INTEGRATION ANALYSIS

    In Ultramercial the court and the inventors have agreed the concept is:“Using advertising as currency”

    Claiming a concept without applying it is considered an abstract idea. Abstract ideas, like a law of nature, or physical phenomena, are not patentable subject matter. Therefore the question before the CAFC is as follows:

    Is Ultramercial’s claims an abstract idea in view of Prometheus?

    The answer is clearly no.
    The claims in Ultramercial are an inventive application of the concept. We know this is correct because of the way the steps of the process “integrate” the concept into the process as a whole. See Prometheus citing Diehr and Flook:
    “ Diehr and Flook, the cases most directly on point, both ad- dressed processes using mathematical formulas that, like laws of na- ture, are not themselves patentable. In Diehr, the overall process was patent eligible because of the way the additional steps of the pro- cess integrated the equation into the process as a whole. 187. These additional steps transformed the process into an inventive application of the formula.” (Syllabus Prometheus V Mayo 566 U. S. ____ (2012) )

    If Ultramercial’s claims were a mere application of a concept without integration they could read as follows:

    a method for using advertising as currency.

    1. offering a service
    
2. accepting advertising as payment

    And if the specification to the above claims offered no further definition of the terms then the CAFC could rightfully rule Ultramercial’s claims to be an abstract idea based on the “integration analysis” used in Prometheus and referenced to Diehr. The claims would in effect be no more than simply stating the concept and saying apply it. See Prometheus as Authority (Still, as the Court has also made clear, to transform an un-patentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.” See, e.g., Benson, supra, at 71–72.) (( Opinion of the Court 3, Prometheus V Mayo 566 U. S. ____ (2012) )

    Ultramercial’s claims integrate the concept with 11 steps that when viewed as a whole and as an ordered combination offer more than the parts do separately.

    See Prometheus explaining why the claims as a whole are not fully integrated:
    “Finally, considering the three steps as an ordered combination adds nothing to the laws of nature that is not already present when the steps are considered separately.” ( Opinion of the Court 11, Prometheus V Mayo 566 U. S. ____ (2012) )

    Ultramercial’s steps can’t be completed in the mind and are not mental processes. Nor can they be completed with mere verbal instruction or with pencil and paper. The concept of the claim is still free to use in all fields and technological environments. Therefore the invention does not violate the pre-emption analysis from Benson. That the claims may be beneficial to conducting business on the internet is not a judicially created exception to statutory subject matter. Also that the claims do not provide detailed workings of convention transformations, apparatus, and machines are also no barrier to statutory subject matter. Therefore the CAFC and The USSC should hold Ultramercials claims as statutory subject matter because the steps of the process “integrate” the concept into the process as a whole and thus transform the claims into an inventive application of the concept.

  128. 139

    MM,

    If you cannot put aside the snark, should I bother even trying to hold a discussion with you?

    Your question concerning ineligible and old is completely immaterial to a patent discussion. It simply matters not whether “old” or “new” if ineligible. It’s quite literally, pointless. I thought that was clear from my comment “Your use of “old” in “oldstep” is a bit misleading“.

    Anyway, your method claim “1. A method of thinking about the sky.” is indefinite (besides ineligible as a comepletely mental step). One cannot know by what you have written whether the thinking is new or old (either way, as I mentioned, it’s pointless), so on ecannot answer your question of “You do agree that such a method is both ineligible subject matter and old in the art, do you not?

    Moving on.

    Music being “not particularly relevant at this point in our discussion” is far more relevant than your attempted “ineligible and old” point.

    You specifically asked “please give me an example of and [oldstep] that is not eligible for patenting?

    I did so. If you now find this irrelevant, why did you ask the question?

    Moving on.

    The claim “1. A method comprising playing the violin and [thinking newthought].” is patent ineligible. It is ineligible because it is still concerned with something not in the Useful Arts.

    Finally, we get to something interesting. “1. A method comprising carving a piece of wood into the shape of a violin and [thinking newthought].

    Before I answer this question, I have a question for you: Do you consider this a claim in the form [eligible subject matter]+[ineligible subject matter]?

  129. 138

    suckie For the [oldstep], I want to make certain: ineligible or not patentable? There is a huge difference

    There is a difference between “ineligible” and “not patentable”. I’m well aware of the difference. But you do agree that it is possible for a process to be both ineligible subject matter and old, do you not? For example, consider the following method claim:

    1. A method of thinking about the sky.

    You do agree that such a method is both ineligible subject matter and old in the art, do you not? If you do not agree, just say so and we can end the conversation. I’m not interested in discussing this subject with dissemblers and ignorant —holes.

    Music (in and of itself) is not one of the Useful Arts.

    Thank you. I knew that. It’s not particularly relevant at this point in our discussion.

    So, moving on, let’s look at an [oldstep]+[newthought] claim using the ineligible (according to you), old step of “playing the violin” as the first step in our hypothetical claim.

    Consider:

    1. A method comprising
    playing the violin and
    [thinking newthought].

    Is this claim ineligible subject matter? Why or why not?

    Next consider the following:

    1. A method comprising
    carving a piece of wood into the shape of a violin and
    [thinking newthought].

    Is this claim ineligible subject matter? Why or why not?

    And shttcan the “suckie” reference.

    For the moment. I’m pretty sure that you’re suckie, though. We’ll find out soon enough. I look forward to reading your answers and discussing them.

  130. 137

    You are welcome. And good luck with getting any kind of mature, rational, and logical confirmation from MM. You will have better look with a bunch of 6th graders in a name calling contest.

  131. 136

    Or you can just admit that you are a troll and a goalpost-moving, dissembling a–hole.

    LOLs.

    I think this is the first time ever we find out that MM’s favorite banal canard has an [oldstep] that is itself ineligible for patenting.

    No wonder why he could never rejoin a conversation about mental steps doctrine. Mental steps doctrine involves mental steps with patent eligible [oldsteps].

    That’s some serious goalpost movement! Even for a dissembling a–hole like MM.

    Bravo, a new low.

  132. 135

    MM: “Or you can just admit that you are a troll and a goalpost-moving, dissembling a–hole.”

    You are describing yourself as far as the goal post moving is concerned. You have continuously asked me to exapand on and answer new questions that prove and confirm your own theory. This is YOUR theory. If you want it validated and accepted then you must prove it. Just like I proposed and predicted “Integration Analysis” and took the bold step to demonstrate it here on this board for everyone to see and challenge if they could. And look what happened?

    The Supreme Court has confirmed 9-0 and used “Integration” as the key in it’s 101 analysis.

    The USPTO Official Guidelines now rely on “Integration Analysis” for laws of nature with plans to expand it to abstract ideas.

    And the CAFC has been ordered to review Ultramercial in view of Prometheus’s integration analysis!

    Mean while you, and the vocal minority are afraid to accept the challenge of applying “Integration Analysis” to Ultramercial’s claims. And you, MM, run around like a 10 year old calling people names if they wont accept your own theory. Grow up already.

  133. 134

    Modern, the second restatement does not state that the obligation to assign a future invention is a legal assignment.

    Not sure if flat out being wrong is the same as straw, but close enough.

    “expected to arise out of an existing employment or other continuing business relationship is effective in the same way as an assignment of an existing right” sure sounds like a legal assignment.

  134. 133

    Strawman alerts:

    Mr. day, with all due respect, the restatement of contracts second is not law.

    Mr. day never said it was. This quite ignores the evident meaning that many states have made it law. Mr. day was clearly asking you if California was one of those states.

    There is a lot in the restatement that speaks to remedies, but they are almost all equitable remedies.

    Except remedies has nothing to do with the immediate question at hand and the proffered Section. You keep on wanting to talk about things not at issue.

    Finally I like to point out statute to you, one more time.

    Ditto the keep on talking about things not at issue.

    Finally, the Film Tec case violates Erie Railroad v. Tompkins.

    Ditto the keep on talking about things not at issue.

    That’s a lot of straw to hide behind instead of addressing Section 321.

    Second, it fails to recognize that assignments of future interest are equitable assignments.

    This is the point you keep on assuming to be true without addressing the points raised in opposition.

  135. 132

    Under all controlling case law, an agreement to transfer a future interest is an equitable assignment, not a legal assignment.

    I think this is where the subtlety comes in. The statement needs more. Is the agreement like the one that Stanford had (an agreement to do something in the future, otherwise recognized as an equitable claim), or was it like the one the private company had (a present agreement to transfer a future right, recognized as a legal claim)?

    Where Breyer’s dissent goes off track is his insistence that a contract is the same with these very different conditions. The two phrases simply do not (and cannot) mean the same.

    Just as in the present thread, they do not (and cannot) mean the same.

  136. 131

    It is my position that California law controls a California contract.  Are you conceding a point?

    It is also the position of Modern Day Law that California law controls a California (employment) contract.

    The deciding factor is, what is California law for employment contracts with present assignments of future inventions.

    Ned, that’s why the focus on section 321 is so critical.

  137. 130

    Equity: one has an an equitable obligation to assign. It generally is a creature of contract. Under California law, the obligation arises when one agrees to assign in the future or one assigns presently a future interest.

    …Equity: … or one assigns presently a future interest.

    Ah, the crux of the matter. In the Stanford case the assignment that Stanford contested was of this nature and the Supreme Court held that such an assignment was of legal (as opposed to equitable) nature.

  138. 129

    CONGRESS HELPED MICKEY ROONEY! WHY CAN’T THEY HELP ME. THEY SEE THAT KARL TAMAI HAD SOME BIG FISH AND HIM AND HEATHER HOOKED THEM. I PROMISE YOU THIS IS NOT OVER YOU WILL PAY YOU SCUM BAGS! EXPOSE! I PROMISE FROM THE POLICE TO THE EGANS AND MY SON. DON’T EVER COME NEAR ME AGAIN YOU PIGS! AND CONGRESS KNEW WHAT THEY DID. AND OED KNEW WHAT TAMAI DID! THIS IS SICK!
    AND YOU PLAYED RIGHT INTO GUERWOOD LEWIS PEDIOPHIE HANDS.

  139. 128

    Strawman Alert:

    Modern, the second restatement does not state that the obligation to assign a future invention is a legal assignment. The weight of authority, including that of California, is that such an obligation is an equitable obligation.

    Except for one thing: the discussion is not on an “obigation to assign a future invention” but rather a “present assignment of a future invention” (Note that the Stanford case made this very distinction, which the dissent also tried to muddle).

    Obligations may indeed be equitable. Actual current assignments are a different issue. The two things just are not the same.

    Ned, thrower of straw, is the one attempting to confuse and conflate.

  140. 127

    Of possible interest:

    California Code § 2870. Employment agreements; assignment of rights

    (a) Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer’s equipment, supplies, facilities, or trade secret information except for those inventions that either:

    (1) Relate at the time of conception or reduction to practice of the invention to the employer’s business, or actual or demonstrably anticipated research or development of the employer; or

    (2) Result from any work performed by the employee for the employer.

    The fact that the code recognize both an assignment and an offer to assign indicates that the two must be treated differently, as they are separate and distinct items.

    I propose that mere offers to assign are equitable and actual assignments are legal.

    Fair enough to all?

  141. 126

    Equity…
    Law…

    Purposful confusion.

    However, we need not pursue further the esoteric refinements of equitable assignments. In California the distinction between assignments of expectancies coupled with an interest and those which were formerly only enforceable in equity has largely been reduced to a matter of historical interest. (H. S. Mann Corp. v. Moody, 144 Cal.App.2d 310, 318, 301 P.2d 28; 5 Cal.Jur.2d, Assignments, ss 3, 5. See Bridge v. Kedon, Supra, 163 Cal. 493, 497—498, 126 P. 149.)

    As stated in 5 California Jurisprudence, Second Edition, at page 375; ‘(T)he formal separation of courts of law and of *368 equity has never prevailed in California; a single court enforces the substantive law derived from both sources; and the modern rules of practice and procedure have largely eliminated the distinctions which were of great importance in determining and enforcing assigned rights in an earlier period. Also, the modern law of assignments under which the assignability of intangible rights is taken for granted in the business and commercial world is in large part entirely of equitable origin; few modern assignments would have been enforceable in the law courts which originally had exclusive jurisdiction to enforce the common law. . . .’ (fns. omitted.)

    See also Cal.Civ.Code § 699 “Future interests pass by succession, will, and transfer, in the same manner as present interests.”

    Also “The courts give effect to an assignment of a future interest, not as a present transfer, but as a present contract to become operative as soon as the future right to which the assignment refers has ripened into existence, and without requiring any further act by the assignor.” In re Freeman, 489 F.2d 431 (9th Cir. 1973); Critz v. Farmers Ins. Group, 230 Cal. App. 2d 788, 41 Cal. Rptr. 401, 12 A.L.R.3d 1142 (3d Dist. 1964) (disapproved of on other grounds by, Crisci v. Security Ins. Co.of New Haven, Conn., 66 Cal. 2d 425, 58 Cal. Rptr. 13, 426 P.2d 173 (1967)); Cox v. Hughes, 10 Cal. App. 553, 102 P. 956 (3d Dist. 1909) (assignment of future wages).

    By the way, the holding in Gintel v Green is distinguished to the context of an employment agreement given that the concerning that case was from a third party (not in relationship). That case does with equitable assignments (which do exist), but the type of assignment involved in this thread’s discussion is not the same.

  142. 124

    The California case I quoted to you makes it clear that the obligations equitable, not legal.

    Heller, it is clear to anyone reading the exchange that the case you provided is not enough because it predates the second restatement of contracts. There is no one (including and especially MDL) that is saying that state contract law does not apply. It really is simple: MDL is asking you to verify with a properly cited (i.e. proper time) case or other indication that California does not follow the identified second restatement of contracts as its state law.

    MDL has made it quite clear that you need to provide either a case on point POST-second restatement or some other LEGAL indication that California does not follow the second restatement.

    Further, it is quite clear that for any state following the second restatement, for employment contracts anything other than an express “future mere obligation to assign” (that is, a current assignment of future invention) is a legal assignment as opposed to an equitable assignment.

    You are kicking up all manner of obfuscation on something that is in reality quite simple. A single question only needs to be answered.

    If you would simply do one thing, the matter would be resolved. Answer the question: Does California embrace the second restatement of contracts, specifically section 321?

    And yes, everyone knows that the restatement itself is not law. No one is saying otherwise. You do recognize though (or perhaps you you do not), that most states have accepted that treatise as law, either directly or mirroring the identical (or near identical) language into its law. This really is “Basic.” It’s as basic as providing a proper legal citation (which you have not done – you 1958 citation is not proper for the reasons identified).

    You do not need to add any other comment to the answer to that specific question. You do not need to discuss remedy, or the patent statute, or Erie Railroad v. Tompkins or Gintel v. Green, or the status of the second restatements in and of themself. All of these are distractions to the point that first needs to be established.

    And stop accusing other of confusing and conflating issues as you are the one throwing up the tangents to an orderly step by step discussion. Stop accusing others of not knowing law as it is you that is evidently quite confused about what is being asked.

    Take that first step: settle if California follows the second restatement of contracts section 132.

  143. 123

    where [oldstep], by itself, is ineligible for patenting

    For the [oldstep], I want to make certain: ineligible or not patentable? There is a huge difference, and the apparent limitation to being a patent ineligible step is a crucial and rather limiting distinction.

    For example, an [oldstep] ([oldstep1]) that is not eligible for patenting would be playing the violin. Music (in and of itself) is not one of the Useful Arts. In contrast, an [oldstep] ([oldstep2]) that is eligible for patenting, but not patentable would be a step in the manufacturing of a violin that is “old” in the art (102) of obvious in view of what is known in the art (103).

    Your use of “old” in “oldstep” is a bit misleading.

    And shttcan the “suckie” reference. Try to grow-up just a little.

  144. 122

    suckie: I take it [oldstep] is patent eligible, right?

    Wow, we are starting from square one again, suckie? Okay, fine. It’s a good place to start. Let’s consider an [oldstep]+[newthought] claim where [oldstep], by itself, is ineligible for patenting.

    Just so we can confirm that (1) we’re all on the same page and (2) you’re not completely overflowing with ignorant b—s–t, can you please give me an example of and [oldstep] that is not eligible for patenting? Thanks, suckie.

  145. 121

    6, I think the issue is very simple: the Supreme Court in Stanford held that legal title vests initially in the inventors.  The statute requires a legal assignment to transfer title.  Under all controlling case law, an agreement to transfer a future interest is an equitable assignment, not a legal assignment.  Thus the Film TEC case seems contrary to both Stanford and the statute regardless of Erie Railroad v.  Tompkins.

  146. 118

    Mr. day, you still do not understand the issue of equity versus law.  Furthermore, look into the Stanford v.  Roche case for any discussion of restatement of contracts second, section 321.  If you do not find it, please explain why.

    Further, why are you discussing the restatement and California law when the Federal Circuit says that the issue is one of federal common law?

    It is my position that California law controls a California contract.  Are you conceding a point?

  147. 117

    Modern, the second restatement does not state that the obligation to assign a future invention is a legal assignment.  The weight of authority, including that of California, is that such an obligation is an equitable obligation.

    You are confusing and conflating issues.

  148. 116

    Embrace?

    What you seem to fail to understand is that the second restatement is not law.  It is a treatise.  It is secondary authority.  It is not law.  Repeat after me, it is not law.

    Even if California courts look to the second restatement for secondary authority, there still must be a case in California courts to establish California law on a particular point.  On point in question, in California, the law is that a present assignment of a future obligation is an equitable assignment.  Until that case is overturned, it remains good law.  If you check the citations to the California case I cited to you, you will see they California treatises on California contract law still cite to that case.  It is not been overturned.  It remains good law.

    Therefore, even if the second restatement could be considered to be secondary authority that a present assignment of a future interest is a legal assignment, it doesn't clearly state that; and furthermore, it is not binding authority in California.  Even the case you cited to me states this.

    Furthermore, the second restatement is secondary authority for state law.  The problem with the Film TEC case is that it didn't cite any authority for its holding.  Later cases made it clear that the Federal Circuit was deciding the issue based upon federal law common law.  However, there is no federal common law.

    In all our discussion here you have never addressed this one simple fact:  You refuse to even discuss the issue of Erie Railroad v.  Tompkins.

  149. 115

    suckie: Oh, can’t you read and comprehend? Every step requires new thoughts.

    Please provide a cite showing where the Supreme Court or any other court construed the claims in Diehr such that infringement required an actor to “think a new thought” at every step in the claim.

    Or you can just admit that you are a troll and a goalpost-moving, dissembling a–hole.

  150. 114

    Mr. Modern, whether an obligation exists or doesn't exist, or to the extent that it is effective, is wholly aside from the whole question on the table.  The question on the table is whether the obligation is an equitable obligation or a legal obligation.  The question is not whether there is an obligation.

    The California case I quoted to you makes it clear that the obligations equitable, not legal.  That means once the invention comes into being, the inventor is equitably assigned.  In order to enforce the equitable assignment, and has to be turned into a legal assignment.  Courts in equity will order a special master to sign a legal assignment if the inventor refuses to sign.  That is a equitable remedy.  However, as in all cases involving equity, the equitable obligation is still subject to equitable defenses.  One must do equity to receive equity.  That is a maxim of equity jurisprudence.

    The Federal Circuit has equated an equitable assignment to a legal assignment and, in doing so, refused to consider equitable defenses.  Not only is this contrary to all equity jurisprudence, is a direct violation of the statute.

    The Supreme Court is more than right here.  The Federal Circuit is dead wrong.

  151. 113

    From above,

    You seem to not understand the difference between a legal assignment and an equitable assignment.

    On the contrary, Mr. Heller, I find that this is yet another smokescreen that you are employing in our discussion. I maintain that under modern California Law, following the second restatement of contracts, specifucally section 321, the pertinent contract under discussion creates a fully legal assignment and not an equitable assignment.

    You have failed to properly respond to the more recent, (modern) indicators that California has embraced the second restatements. I am perfectly willing to concede to you that California has not done so, but I have found NO indicators of this. All of your support lies prior to the formation of the second restatement. All you have to do to make a convincing point (which you simply have failed to do so far) is to find some meaningful authority that indicates that California has rejected the pertinent second restatement of contracts.

    You offer nothing on this point.

    For your benefit, I repeat my posts from the bottom of the thread. I will repost this post there as well. Let’s agree to continue our discussion in one place. I recommend below.

  152. 112

    You seem to not understand the difference between a legal assignment and an equitable assignment.

    On the contrary, Mr. Heller, I find that this is yet another smokescreen that you are employing in our discussion. I maintain that under modern California Law, following the second restatement of contracts, specifucally section 321, the pertinent contract under discussion creates a fully legal assignment and not an equitable assignment.

    You have failed to properly respond to the more recent, (modern) indicators that California has embraced the second restatements. I am perfectly willing to concede to you that California has not done so, but I have found NO indicators of this. All of your support lies prior to the formation of the second restatement. All you have to do to make a convincing point (which you simply have failed to do so far) is to find some meaningful authority that indicates that California has rejected the pertinent second restatement of contracts.

    You offer nothing on this point.

    For your benefit, I repeat my posts from the bottom of the thread. I will repost this post there as well. Let’s agree to continue our discussion in one place. I recommend below.

    ++Repeated Posts++

    There is nothing in the restatement that is to the contrary.

    On the contrary, you could not be more wrong; see the post by Basics above:

    See second restatement of contracts, section 321 and note that a contract (i.e. an employment contract) is what is discussed as being in existence, and NOT the right (of the future invention) itself. Thus in the current context, present assignment of a future right that does not yet exist is fully a legal assignment, and is in fact more than just an equitable obligation.

    The section you seemingly refuse to even acknowledge is “expected to arise out of an existing employment or other continuing business relationship is effective in the same way as an assignment of an existing right.

    If I were to balance authority weight on the scales of any legal discussion, the second restatment would well outweigh a wikipedia post.

    And while the restatement is not law itself, many states have taken it as law, including (it appears as far as I can tell) California. I have given you several different decisions so indicating, and you have given NOTHING post-second-restatement.

    Your link to wikipedia does discuss equitable assignments, but does not discuss the current situation at all. In other words, you lean on authority that is silent, even as it is questionable. On the other hand, you ignore the second restatement section on point to the dicussion!

    What you fail to understand is that contract law is a creature of state law and not of federal law.

    I make no such assumption or failing, and your repeated cries to such are a fallacy.

    I ask you point blank: does California embrace the second restatement of contracts.

    You refuse to answer.

    The point that I impress on you is that as far as I can tell, with case law post-restatement, with jury instructions, with choice of law discussions, all indicators are that California in fact has embraced the second restatement of contracts.

    You have shown absolutely no controlling authority in the proper timeframe to indicate otherwise.

    As it appears fully that California law complies with the second restatement of contracts, and the pertinent section (section 321), which fully indicates that contract law of the nature involved makes such future assignments to be assignments in law, there simply is no violation of Erie Railroad v. Tompkins. The purported issue you are trying to focus on (State versus Federal) is a red herring to the actual issue under discussion (legal versus equity).

    To further deflate your Wikipedia link, no one is saying that there cannot be equitable assignments per se (such is a strawman and a weak strawman at that).

    What is being said is that the type of assignment at issue, the present assignment of future invention as related to an employment contract which employment purpose foresees such invention and for which a present assignment is made (and notably, more than a mere present obligation), that such an assignment is a legal assignment.

  153. 111

    What you fail to understand is that contract law is a creature of state law and not of federal law.

    I make no such assumption or failing, and your repeated cries to such are a fallacy.

    I ask you point blank: does California embrace the second restatement of contracts.

    You refuse to answer.

    The point that I impress on you is that as far as I can tell, with case law post-restatement, with jury instructions, with choice of law discussions, all indicators are that California in fact has embraced the second restatement of contracts.

    You have shown absolutely no controlling authority in the proper timeframe to indicate otherwise.

    As it appears fully that California law complies with the second restatement of contracts, and the pertinent section (section 321), which fully indicates that contract law of the nature involved makes such future assignments to be assignments in law, there simply is no violation of Erie Railroad v. Tompkins. The purported issue you are trying to focus on (State versus Federal) is a red herring to the actual issue under discussion (legal versus equity).

    To further deflate your Wikipedia link, no one is saying that there cannot be equitable assignments per se (such is a strawman and a weak strawman at that).

    What is being said is that the type of assignment at issue, the present assignment of future invention as related to an employment contract which employment purpose foresees such invention and for which a present assignment is made (and notably, more than a mere present obligation), that such an assignment is a legal assignment.

  154. 110

    There is nothing in the restatement that is to the contrary.

    On the contrary, you could not be more wrong; see the post by Basics above:

    See second restatement of contracts, section 321 and note that a contract (i.e. an employment contract) is what is discussed as being in existence, and NOT the right (of the future invention) itself. Thus in the current context, present assignment of a future right that does not yet exist is fully a legal assignment, and is in fact more than just an equitable obligation.

    The section you seemingly refuse to even acknowledge is “expected to arise out of an existing employment or other continuing business relationship is effective in the same way as an assignment of an existing right.

    If I were to balance authority weight on the scales of any legal discussion, the second restatment would well outweigh a wikipedia post.

    And while the restatement is not law itself, many states have taken it as law, including (it appears as far as I can tell) California. I have given you several different decisions so indicating, and you have given NOTHING post-second-restatement.

    Your link to wikipedia does discuss equitable assignments, but does not discuss the current situation at all. In other words, you lean on authority that is silent, even as it is questionable. On the other hand, you ignore the second restatement section on point to the dicussion!

  155. 109

    Mr. Modern, also you extensively cite the restatement for what other state jurisdictions “follow” the restatement. What you fail to understand is that contract law is a creature of state law and not of federal law. The Film Tec case cites no authority, state or otherwise, for its holding. Subsequent cases have stated that the issue of legal effect of an assignment is a question of federal law, not of state law. However, they do not cite authority for this proposition either; and it appears to be a direct violation of Erie Railroad v. Tompkins.

  156. 108

    I would also like to note that I did cite you the case*, which remains good law in California, on the topic of assignment of future interests. It is an equitable assignment. There is nothing in the restatement that is to the contrary.

    *Gintel v. Green. Supra.

  157. 107

    I will repeat a post made above here for your benefit.

    Mr. day, with all due respect, the restatement of contracts second is not law.

    The Donovan case you cite, while referring to the restatement, only does so for the point that under certain circumstances a contract may be rescinded. What you fail to understand, it appears, is that rescission is an equitable remedy.

    There is a lot in the restatement that speaks to remedies, but they are almost all equitable remedies. The legal remedy for breach of contract is damages.

    To help explain the difference to you, I ask you to read this Wikipedia article on assignments. link to en.wikipedia.org it specifically notes that assignments of future interests are equitable assignments.

    Finally I like to point out statute to you, one more time. The statute specifically requires that assignments be legal assignments. You seem to not understand the difference between a legal assignment and an equitable assignment.

    From every thing I see, it appears that the Film Tec case is wrong on a number of grounds. First, it seems to be inconsistent with the statute that requires that assignments be legal. Second, it fails to recognize that assignments of future interest are equitable assignments. Third, it fails to recognize that with respect to all equitable this assignments, there still must be specific performance to render the assignment legal. Finally, the Film Tec case violates Erie Railroad v. Tompkins.

  158. 105

    Mr. day, with all due respect, the restatement of contracts second is not law.

    The Donovan case you cite, while referring to the restatement, only does so for the point that under certain circumstances a contract may be rescinded.  What you fail to understand, it appears, is that rescission is an equitable remedy.

    There is a lot in the restatement that speaks to remedies, but they are almost all equitable remedies.  The legal remedy for breach of contract is damages.

    To help explain the difference to you, I ask you to read this Wikipedia article on assignments. link to en.wikipedia.org it specifically notes that assignments of future interests are equitable assignments.

    Finally I like to point out statute to you, one more time.  The statute specifically requires that assignments be legal assignments.  You seem to not understand the difference between a legal assignment and an equitable assignment.

    From every thing I see, it appears that the Film Tec case is wrong on a number of grounds.  First, it seems to be inconsistent with the statute that requires that assignments be legal.  Second, it fails to recognize that assignments of future interest are equitable assignments.  Third, it fails to recognize that with respect to all equitable this assignments, there still must be specific performance to render the assignment legal.  Finally, the Film Tec case violates Erie Railroad v. Tompkins.

  159. 104

    Mr. Heller, I am puzzled by your choices. Specifically, your choice to keep quiet on what the law may actually be. Why do you choose to post a case more than fifty years old when intervening circumstances point in a different direction? Why that choice?

    And speaking about choices, see link to proskauerguide.com and CHoice of Law Issues, Selecting the Appropriate Law by Jessica Freiheit, which in part states:

    The Second Restatement contains certain sections governing specific causes of action as well as an umbrella “significant relationship” test in Section 6(2). The specific sections governing torts, fraud and contract each refer back to the principles and overriding “significant relationship” test. Some version of the Second Restatement is followed by the majority of States (for example, New York, Delaware, Colorado, Connecticut, Alaska, Arizona, California (contracts only), Idaho, Illinois, Iowa, Maine, Mississippi, Missouri, Montana, Nebraska, South Dakota, Ohio, Texas, Utah, Vermont, and Washington). See Symeon C. Symeonides, Choice of Law in the American Courts in 2006: Twentieth Annual Survey, 54 Am. J. Comp. Law 697, 712 (2006).” (emphasis added).

    As I mentioned, I do not practice in the State of California, but tell me, does California follow the second restatement of contracts (which, of course, would supersede your 1958 citation?)

  160. 103

    Ned,

    Please take into account modern law. Why do you avoid commenting on the second restatement of contracts like the plague?

    What say you to modern law, Mr. Heller? Has California embraced the second restatement of contracts?

    Your posts are quite meaningless unless you can account for the plain words therein.

  161. 102

    Equity: one has an an equitable obligation to assign. It generally is a creature of contract. Under California law, the obligation arises when one agrees to assign in the future or one assigns presently a future interest.

  162. 101

    Thanks 101 Integration Expert, but I am looking for MM to confirm. It’s his “theory” I want to make sure I understand, step by step.

  163. 100

    Where’s the [newthought] in that claim..

    Oh, can’t you read and comprehend? Every step requires new thoughts. That’s just a neurological fact, and common sense. Here read them again, or get someone to help you with it. And of course we know those claims are statutory because of “Integration”. Again see Prometheus, and then read the official USPTO Guidelines on “Integration Analysis. If you were not such a coward and would just apply the integration analysis to Ultramercial’s claims you would understand this fact. Integration is here. Dissection is dead. Long live Integration!

    11. A method of manufacturing precision molded articles from selected synthetic rubber compounds in an openable rubber molding press having at least one heated precision mold, comprising:”
    “(a) heating said mold to a temperature range approximating a predetermined rubber curing temperature,”
    “(b) installing prepared unmolded synthetic rubber of a known compound in a molding cavity of predetermined geometry as defined by said mold,”
    “(c) closing said press to mold said rubber to occupy said cavity in conformance with the contour of said mold and to cure said rubber by transfer of heat thereto from said mold,”
    “(d) initiating an interval timer upon the closure of said press for monitoring the elapsed time of said closure,”
    “(e) heating said mold during said closure to maintain the temperature thereof within said range approximating said rubber curing temperature,”
    “(f) constantly determining the temperature of said mold at a location closely adjacent said cavity thereof throughout closure of said press,”
    “(g) repetitively calculating at frequent periodic intervals throughout closure of said press the Arrhenius equation for reaction time of said rubber to determine total required cure time v as follows:”
    “ln v = cz + x”
    “wherein c is an activation energy constant determined for said rubber being molded and cured in said press, z is the temperature of said mold at the time of each calculation of said Arrhenius equation, and x is a constant which is a function of said predetermined geometry of said mold,”
    “(h) for each repetition of calculation of said Arrhenius equation herein, comparing the resultant calculated total required cure time with the monitored elapsed time measured by said interval timer,”
    “(i) opening said press when a said comparison of calculated total required cure time and monitored elapsed time indicates equivalence, and”
    “(j) removing from said mold the resultant precision molded and cured rubber article.”

  164. 99

    “I take it [oldstep] is patent eligible, right?”

    Yes that is right. Even if it is a process of an old step plus a new step which is purely a thinking step it’s patent eligible. The only way such a process could be declared non patent eligible is by stripping away and ignoring steps. But Diehr expressly prohibited dissection. And Prometheus buttressed that ruling by adding “integration analysis” to 101. Integration is the antithesis of dissection. That’s why “Integration Analysis” is expressly a part of the new USPTO Guidelines, and dissection of old or mental steps is not included. Some on this board heavly invested in an anti patent ideology find it hard to accept this fact. But it is nonetheless a fact

  165. 98

    Yes, see :

    35 U.S.C. 100

    “(b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.”

    The Court has NEVER held that any process with a combination of old steps, be it physical, machine implemented, or mental is non statutory.

    Like wise the Court has NEVER held that any process with a combination of new steps, be it physical, machine implemented, or mental is non statutory.

    Anyone proposing a theory to the contrary violates the Courts statutory interpretation which says: Courts “ ‘should not read into the patent laws limitations and condtions which the legislature has not expressed,’ ” Diamond v. Diehr, 450 U. S. 175, 182, and, “[u]nless otherwise defined, ‘words will be in- terpreted as taking their ordinary, contemporary, common mean- ing,’ ” ibid. .

  166. 96

    provide an example of a claim in the form [oldstep]+[newthought] that passed your beloved

    I take it [oldstep] is patent eligible, right?

  167. 95

    Can you discuss patent law like a mature adult for just one moment? What you ask has already been done. See the Alice thread. Besides It is not my obligation to prove your theory. Especially since it has not been recognized or sanctioned by the Judiciary or the USPTO. That burden lies on you. And quite frankly no one cares.

    Now, what has been held by the Supreme Court of the United states, and recognized and sanctioned by the USPTO in their Official Office Guidelines, is “Integration Analysis”. You have been repeatedly invited to apply the Offices’ new Integration Guidelines to Ultramercial Claims. The same task that is currently before the CAFC. You have shrank, run, dodged and ducked that challenge in every cowardly manner imaginable. Now if you are not intellectually competent enough to handle that challenge then kindly go away and leave the discussion to the adulst . The CAFC and the Court will be addressing Integration Analysis soon enough, with or without your input.

  168. 93

    California Law as it stands today

    Are you speaking directly in relatively ancient times, Mr. Heller?

    I do not practice in the State of California, but tell me, does California follow the second restatement of contracts (which, of course, would supersede your 1958 citation?

    Does it? For help, you might reference Donovan v. RRL Corp., 27 P.3d 702 (Cal. 2001), a much more timely source, albeit on a different topic. Elsewhere I look, other sections are applied with authority (specifically the forms of jury instructions in contract and tort matters).

    What say you to modern law, Mr. Heller? Has California embraced the second restatement of contracts?

    It has been point out by several on this thread, and yet, you have avoided commenting on it like the plague.

  169. 92

    Mr. Day, if a state like California

    Are you speaking directly in hypotheticals, Mr. Heller?

    I do not practice in the State of California, but tell me, does California follow the second restatement of contracts (which, of course, would supersede your 1958 citation?

    Does it? For help, you might reference Donovan v. RRL Corp., 27 P.3d 702 (Cal. 2001), a much more timely source, albeit on a different topic. Elsewhere I look, other sections are applied with authority (specifically the forms of jury instructions in contract and tort matters).

    What say you to modern law, Mr. Heller? Has California embraced the second restatement of contracts?

    It has been point out by several on this thread, and yet, you have avoided commenting on it like the plague.

  170. 91

    Question:

    35 USC 261 states, in part, that

    “Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.

    “An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.”

    Is the “assignment” referenced in the last clause the assignment of a patent or application for patent of the first clause?”

    Second,

    What is the effect of the “in law” provision on an equitable assignment? Does this provision actually mean that applications for patent and patent are NOT assignable except by legal assignments?

    Does this mean that owners of equitable title to inventions must still obtain legal assignment of a patent or application?

  171. 90

    I would also like to add that under California Law as it stands today, a present assignment of a future interest not yet in existence is in fact an equitable assignment and not a legal assignment.  The US statute requires a legal assignment to transfer title to patents.

    See, Gintel v.
    Green, 165 Cal. App. 2d 723 – Cal: Court of Appeal 1958, 
    link to scholar.google.com


    "The assignment
    of March 7 is to be treated as an equitable assignment under 
    California law; that is, as a present
    contract to become operative as soon as the future right to which the assignment
    refers has ripened into existence, and without requiring any further act by the
    assignor. By such an assignment there is created a present equitable charge on
    the property which equity recognizes as vested, although it is neither vested
    nor valid at law; and which, when the right
    becomes existent, ripens into a preferred and enforceable right. (See 5
    Cal.Jur.2d, Assignments, 27, and cited authority in footnotes
    19 and 20.) Accordingly it appears from the record that appellant established
    title to the attached property."

  172. 89

    suckie: “I want people to remember that when you were asked to provide an example of a claim in the form [oldstep]+[newthought] that passed your beloved “integration test”, you were unable to do so provide.”

    Wrong. I did provide the claim and will do it again.

    Where’s the [newthought] in that claim, suckie? And so you don’t waste bandwidth with your usual handwaving, please provide the pincite to the passage in Diehr where this alleged novel step of thinking is expressly discussed. For example, wherein Diehr (and I’m including the district court and appelate cases) was the claim construed so that it would be literally infringed by someone who (1) practices the prior art and (2) thinks a novel thought.

    Thanks, suckie. We’re almost to the end of the road. Your education is nearly complete. That must be a wonderful feeling for you after these many years.

  173. 88

    Mr. Day, if a state like California work make it illegal to have present assignments of future inventions, and/or mandated that they be interpreted to be equitable obligations to assign, what law would control and why?

    In your answer, please analyze the requirements of Erie RR. v. Tompkins.

  174. 87

    You imply “stripping away” things that were not there given the second restatement of contracts and the modern day employment contract.

    You seem to be picking a fight from the wrong era. Employment law moved on. So should you. Time to face reality.

  175. 86

    When you use the doctrine to strip from the individual their ordinary defenses such as waiver, laches, statute of limitations and the like — that is harsh.

  176. 85

    There once was a girl named SEA,
    who thought she had something you’d need.
    but she was put in a basket at the SEA of Nantasket,
    And left for the sharks, for to feed.

  177. 84

    There once was a girl named SEA,
    who thought she had something you’d need.
    But she was put in a basket at the SEA of Nantasket,
    And left for the sharks, for to feed.

  178. 82

    And to all those that told me over and over … You only have so much time. And this one… after a while we won’t give you any more attys. to speak with! Just like Insurance Agents that want you to settle before you realize the damage.
    Oh contrairre who was I supposed to SUE? That’s like going into a Gun Battle with 1 bullet and 6 targets… And I truly didn’t know which one to shoot at until now. Soon Game Set and Match.

  179. 81

    So you think what you signed is legal? It would be if it was your property to give. So because you have egg all over your faces you allow the other side of the pond to say…Game Kettle? But you just don’t get the logistics, Fish swim in the SEA not in Pots or Kettles. And your mistake was putting her in each!

  180. 80

    So obviously the Pierce Arrow is also either running with a flat this time, and Dick Head is between a Brick and another Brick and the poor litttle wiittttle brainless Fish is flopping in the SAND.

  181. 79

    So is this recent rendition of the brainless wonder a compilation of the same group hiding under a rock? Or is it from the other side of the pond throwing rocks? I think i’m on to something here. I think pot has truly met kettle, and i have always been the Fish that went into the Pot and Kettle
    Ant it is not to late. I had to know that there really was an end of the link or at least a link(s) I could recognize with proof.
    Obviuosly my genetics are Pot and Kettle.

  182. 77

    “I want people to remember that when you were asked to provide an example of a claim in the form [oldstep]+[newthought] that passed your beloved “integration test”, you were unable to do so provide.”

    Wrong. I did provide the claim and will do it again. In fact I will give you three. Not only that but I wiped the floor with you every time you made a whacky fallacious remark. It’s all in the comments section in the sealed records under the Alice thread.

    Here are the claims:

    “1. A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:”
    “providing said computer with a database for said press, including at least,”
    “natural logarithm conversion data (ln),”
    “the activation energy constant (C) unique to each batch of said compound being molded, and”
    “a constant (x) dependent upon the geometry of the particular mold of the press,”
    “initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,”
    “constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,”
    “constantly providing the computer with the temperature (Z),”
    “repetitively calculating in the computer, at frequent intervals during each cure, the Arrhenius equation for reaction time during the cure, which is”
    “ln v = CZ + x”
    “where v is the total required cure time,”
    “repetitively comparing in the computer at said frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and”
    “opening the press automatically when a said comparison indicates equivalence.”

    “2. The method of claim 1 including measuring the activation energy constant for the compound being molded in the press with a rheometer and automatically updating said data base within the computer in the event of changes in the compound being molded in said press as measured by said rheometer.”
    “* * * *”

    “11. A method of manufacturing precision molded articles from selected synthetic rubber compounds in an openable rubber molding press having at least one heated precision mold, comprising:”
    “(a) heating said mold to a temperature range approximating a predetermined rubber curing temperature,”
    “(b) installing prepared unmolded synthetic rubber of a known compound in a molding cavity of predetermined geometry as defined by said mold,”
    “(c) closing said press to mold said rubber to occupy said cavity in conformance with the contour of said mold and to cure said rubber by transfer of heat thereto from said mold,”
    “(d) initiating an interval timer upon the closure of said press for monitoring the elapsed time of said closure,”
    “(e) heating said mold during said closure to maintain the temperature thereof within said range approximating said rubber curing temperature,”
    “(f) constantly determining the temperature of said mold at a location closely adjacent said cavity thereof throughout closure of said press,”
    “(g) repetitively calculating at frequent periodic intervals throughout closure of said press the Arrhenius equation for reaction time of said rubber to determine total required cure time v as follows:”
    “ln v = cz + x”
    “wherein c is an activation energy constant determined for said rubber being molded and cured in said press, z is the temperature of said mold at the time of each calculation of said Arrhenius equation, and x is a constant which is a function of said predetermined geometry of said mold,”
    “(h) for each repetition of calculation of said Arrhenius equation herein, comparing the resultant calculated total required cure time with the monitored elapsed time measured by said interval timer,”
    “(i) opening said press when a said comparison of calculated total required cure time and monitored elapsed time indicates equivalence, and”
    “(j) removing from said mold the resultant precision molded and cured rubber article.”

    Now I know these claims pass the “Integration Analysis” because these claims are from Diehr, and Diehr is the authority relied on for “Integration Analysis” in Prometheus. See Prometheus referencing Diehr:

    ” In Diehr, the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. These additional steps transformed the process into an inventive application of the formula.”

    In addition, the USPTO, has adapted the concept of integration, and used it in four distinct sub sections of USPTO Guidelines for 101 statutory analysis, most notably relying on Diehr’s claim as an example of a claim that passes the “Integration Analysis” and in effect buttressing Diehr’s Concept and Application Test/Analysis in which it is mandated to evaluate claims as a whole. See from the Guidelines:

    “1. To show “integration”, the additional elements or steps must relate to the natural principle in a significant way to impose a meaningful limit on the claim scope. The analysis turns on whether the claim has added enough to show a practical application.

    2. Along with “integration”, the additional steps must be sufficient to ensure that the claim amounts to significantly more than the natural principle itself by including one or more elements or steps that limit the scope of the claim and do more than generally describe the natural principle with generalized instructions to “apply it.”

    3. A machine or transformation that is merely nominally, insignificantly, or tangentially related to the steps or elements, e.g., data gathering or data storage, would not show integration.

    4. This claim ( Diehrs) would pass Inquiries 1-3 in the above analysis as it is a process that includes the Arrhenius equation as a limitation, with additional steps that “integrate” the Arrhenius equation into the process and are sufficient to narrow the scope of the claim so that others are not foreclosed from using the Arrhenius equation in different applications. ( emphasis added)

    Now MM you may have your melt down. And perhaps the moderators will close the comments section to prevent you from further embarrassment. But before they do, care to apply Integration Analysis to Ultramercials claims using the new USPTO Guidelines ? Or are you still afraid???

  183. 76

    Basics, the law is harsh.

    Correction: the law is just.

    Big business is harsh.
    The world is harsh.
    Reality is harsh.

    But things could be worse. You could be MM.

  184. 75

    the form of the claim is often nothing more than an exercise in drafting.

    MM missed that comment.

    Funny how that works.

  185. 74

    Bigger corrections needed (yet another thread with a busted Show more comments javascript)

    I would add that this is because the multi-hundred thread pounds the crrp out of the vocal minority, but all multi-hundred threads pound the crrp out of the vocal minority.

  186. 73

    you will have to provide pincites and explanations.

    LOLZ – good luck with that. That’s too much like real law and real answers.

  187. 72

    But since Stanford v. Roche, the Federal Circuit continues to ignore Breyer et al. I smell another thrashing on its way.

    This is a little confusing as it was the rest of the Supreme Court Justices that said F.U. to Breyer in that very Stanford v. Roche decision.

    Further, I think the Supreme Court may have been a little startled with the vociferous blowback it received from the 9-0 Prometheus decision. (Flash history quiz: what happened to the pendulum swing after the 6-0 Benson decision).

    I am not sure what you are smelling, but your if your mishandling of case law is any indicator, you don’t have to look far.

  188. 71

    All engineers and scientists need to be warned about these agreements and they should refuse to sign them.

    Good luck with that. Your outrage is impotent because it is unfocused. You need to identify a real target that would make a real difference.

    This is not “fraud.” Employees right now do not have to sign these agreements. They also don’t have to take the jobs that these agreements are attached to.

    This is not e. v. i. l., nor is it against the law.

    It is what it is. Don’t like it? Tough. Do something different. Start your own company. Change careers. But don’t whine about it.

  189. 70

    And after the trot around the bases in your mind, you are left stunned as the umpire tells you “Son, that’s strike three, move along now.”

    That’s OK, you can still celebrate in your mind. Just make sure your tinfoil hat is on securely.

    T O O L

  190. 67

    suckie quoting Prometheus: Our conclusion rests upon an examination of the particular claims before us

    Ah yes. The particular claims that were (wait for it) method claims, not composition claims.

    [watches ball sail out of stadium into the parking lot]

    [rounds bases]

    [pops champagne]

    Yum.

  191. 65

    Basics, the law is harsh.  The employee may notify the employer.  He may obtain a waiver.  But he still does not own the patents according to the Federal Circuit.  As soon as the employee attempts to enforce his patent, he will find himself nonsuited.

    This is a fraud on all employees.  It is wanton and e. v. i. l. beyond any redeeming virtue.  All engineers and scientists need to be warned about these agreements and they should refuse to sign them.

    If someone does not take the Federal Circuit up to the Supreme Court to overturn Film Tec, Congress really needs to get involved.  This is wrong.

  192. 64

    Basics, the reason the cases are so old is that the topic of assignments was hotly litigated at the Supreme Court level that long ago.  The doctrines set down then were well established and well understood.  Employment assignment agreements created only equitable obligations that could be enforced in equity.  However, and this is critical, they actually have to be enforced, and are subject to normal defenses such as laches, estoppel, statutes of limitations, etc.  An employer, after notice, cannot simply sit on his rights.  He must act.

    This was well understood law until the Film Tec case which, without citation to any authority, made the change it did.  This change was noted by Breyer, Ginsburg and Sotomayer as being without support and contrary to law.  

    The last time the Federal Circuit ignored the Breyer was in connection with the dismissal of cert. where Prometheus-styled claims where at issue.  Rader thumbed his nose at Breyer and said, in effect in his Prometheus decision, F.U.  

    The Empire struck back in a 9-0 decision in Prometheus.  Everyone noted that the Supremes seemed to be sending Rader and the rest of the Federal Circuit a message.  

    They are polite, these Supreme Court Justices, but they do not like to be ignored.  But since Stanford v. Roche, the Federal Circuit continues to ignore Breyer et al.  I smell another thrashing on its way.  

  193. 63

    The cybersource claims (although interpretloled to be methods)

    Probably Myriad’s claims. But I’m not competent to speak to the subject as, for all practical purposes that requires someone with a doctorate in Bio or at least a masters or barely sufficient would be someone with a bachelors. Not to even mention that said person also needs to understand the abstract idea inquiry. There is probably something like 10 people in the entire world truly meeting that criteria.

    Probably Alice’s composition/B claims (I haven’t actually even looked at them yet).

    Fully half, or more, of the B claims in existence. Although their anticipation, or not, is yet to be addressed by a court with a competent attorney arguing the anticipation of all B claims.

    In my own cases I had to sacrifice a case directed to what might even be traditionally a patent eligible device because they defined the novel part of it in terms of a math equation and that device appeared to be the only possible use of the math equation. Although that was their bad, they simply should have defined the device in a better fashion.

    I also had a case that was a method, but could have been rewritten easily as a device to perform that method. That was the case where applicant hired an expert (appeals guy) in PTO policy to help him persuade my SPE to follow policy where and my SPE pussied out on honoring his oath to follow the law in favor of following policy as it was dictated to him by some crony who had never even bothered to read the relevant cases.

    I have slain a few B claims now, although I put the hammer down with 102 and 112 as well. Though, whether those 112 and 102 were valid is for a court to decide.

    The claims in Research Corp should have died but for Rader leading the CAFC into rebellion/not understanding what was being claimed.

    The list is literally gigantic bro. Probably half the programming arts go down, including most, if not all, of what my buddy behind me works on. The lion’s share of business methods and “machines performing business methods” go down. Etc. etc. As has been noted to you guys, the form of the claim is often nothing more than an exercise in drafting.

  194. 62

    I have discussed this very thing on previous threads Mr. Wheelertar d. Years ago, and probably on the office’s newest notes page or the page before that where Ned posted them initially.

    LOLZ – the reference wasn’t “years ago” – try upping your reading comprehension, will you?

    What are the odds that the exact same results of this alleged posting by 6 matches “6 having performed the integration analysis on the Ultramercial claims” ?

    Oh, And I am more than sure that it did come up in the threads of the last month.

    And finally, I am not Mr. Wheeler, or Mr. Wheelertar d, or AI, or 101 Integration Expert, and I am not associated with any of the above entities. But you do like prooving him correct that any time you feel threatened you lash out as if it were him making posts. He really continues to pwn you over these threads, so much that you cannot stop thinking of him.

    That’s really sad.

  195. 61

    More to the point, the discussion in Prometheus did not suggest, even implicitly, that the same analysis with respect to anticipation would apply to composition claims as well as method claims

    On the contrary:

    Our conclusion rests upon an examination of the particular claims before us in light of the Court’s precedents. Those cases warn us against interpreting patent statutes in ways that make patent eligibility “depend simply on the draftsman’s art” without reference to the “principles underlying the prohibition against patents…

    Prometheus at 3 quoting Flook, at 593.

  196. 60

    Dude,

    That’s some meltdown

    LOL. Your suckie sock has some holes in it, bro’. Get your mom to sew them up for you.

  197. 59

    I have discussed this very thing on previous threads Mr. Wheelertar d. Years ago, and probably on the office’s newest notes page or the page before that where Ned posted them initially. But, if I didn’t address it in those threads in the last month it was because it didn’t come up. Do I have to address every last issue that tar ds like yourself could frivolously raise sua sponte?

  198. 58

    Dude,

    That’s some meltdown.

    It’s one thing to get pwned as badly as you have been, but ranting about it so only validates the continued posting of you and your “evermore eplectic rants of rage.”

  199. 57

    Yes, me and Zeus were going to corner the market on lightening. Either that or it was lighting I was thinking about going into. But, I have too bad of allergies when in the San Fran region. I went over for awhile and it is a pain just being alive over there, much less working. Non-stop sneezing and swollen nasal passage ftl.

    inventloled is invent+lol. And meh, idk about industrial applicability. Industrial businesses have to pay bills and remember when to pay them. Idk the EU standard.

  200. 56

    The central problem with the theory propounded by the Feds is that the present assignment operates as a fraud.

    Fraud? Really? Your use of the legal term is not proper. At least, your post does not support its use.

    I think you confuse “reliance” and “assumptions” with an actual clear and unequivocal transfer of rights that an employee should obtain if an employee even thinks he may have signed away rights in an employment contract, rather than assumes that he has rights to an invention. The employee went to the trouble of signing a contract to begin with, it is only prudent that he obtains a clear (signed) document transfering any rights back to him.

    Your sense of “fundamental unjustness” is misplaced. It is not “un-American” to “coveryourass.” In fact, it is typically American to do exactly so.

  201. 55

    suckie You want people to remember when the Supreme Court ruled 9-0 that “Integration” is the key to transform an invention into patentable subject matter?

    No, I want people to remember that when you were asked to provide an example of a claim in the form [oldstep]+[newthought] that passed your beloved “integration test”, you were unable to do so provide.

    So I’ll remind them again.

    Suckie was asked to provide a single example of a claim in the form [oldstep]+[newthought] that passed its beloved “integration test” and suckie was unable to provide a single such example.

    Prediction: suckie will never be able to provide such an example.

    Prediction: suckie has no idea how to apply its beloved “integration test” to invalidate any currently pending claim and will never be able to predict with reasonably accuracy how the Supreme Court will rule in any patent eligibility case.

    Prediction: even after these predictions are proven to be accurate, suckie will not admit the predictions were accurate.

    Prediction: suckie is wrong about the per se ineligibility of novel and useful isolated nucleic acid composition claims whose sequences may be found buried in the genomes of obscure animals.

    Prediction: suckie will complain that the immediately preceding prediction is not sufficiently precise but suckie will be unable to articulate where the lack of precision lies.

    Prediction: suckie will never, ever stop s–k-ng.

  202. 54

    suckie You want people to remember when the Supreme Court ruled 9-0 that “Integration” is the key to transform an invention into patentable subject matter?

    No, I want people to remember that when you were asked to provide an example of a claim in the form [oldstep]+[newthought] that passed your beloved “integration test”, you were unable to do so provide.

    So I’ll remind them again.

    Suckie was asked to provide a single example of a claim in the form [oldstep]+[newthought] that passed its beloved “integration test” and suckie was unable to provide a single such example.

    Prediction: suckie will never be able to provide such an example.

    Prediction: suckie has no idea how to apply its beloved “integration test” to invalidate any currently pending claim and will never be able to predict with reasonably accuracy how the Supreme Court will rule in any patent eligibility case.

    Prediction: even after these predictions are proven to be accurate, suckie will not admit the predictions were accurate.

    Prediction: suckie is wrong about the per se ineligibility of novel and useful isolated nucleic acid composition claims whose sequences may be found buried in the genomes of obscure animals.

    Prediction: suckie will complain that the immediately preceding prediction is not sufficiently precise but suckie will be unable to articulate where the lack of precision lies.

    Prediction: suckie will never, ever stop s-cking.

  203. 53

    suckie You want people to remember when the Supreme Court ruled 9-0 that “Integration” is the key to transform an invention into patentable subject matter?

    No, I want people to remember that when you were asked to provide an example of a claim in the form [oldstep]+[newthought] that passed your beloved “integration test”, you were unable to do so provide.

    So I’ll remind them again.

    Suckie was asked to provide a single example of a claim in the form [oldstep]+[newthought] that passed its beloved “integration test” and suckie was unable to provide a single such example.

    Prediction: suckie will never be able to provide such an example.

    Prediction: suckie has no idea how to apply its beloved “integration test” to invalidate any currently pending claim and will never be able to predict with reasonably accuracy how the Supreme Court will rule in any patent eligibility case.

    Prediction: even after these predictions are proven to be accurate, suckie will not admit the predictions were accurate.

    Prediction: suckie is wrong about the per se ineligibility of novel and useful isolated nucleic acid composition claims whose sequences may be found buried in the genomes of obscure animals.

    Prediction: suckie will complain that the immediately preceding prediction is not sufficiently precise but suckie will be unable to articulate where the lack of precision lies.

    Prediction: suckie will never, ever stop sucking.

  204. 52

    Upon consideration of the suggested cases, there is nothing in either that changes my mind.

    If you think these cases detract from my position or support your views, you will have to provide pincites and explanations.

    In Standard Parts, “We concur with the district court, and therefore reverse the decree of the circuit court of appeals. Reversed.” There simply is nothing in Standard Parts that supports your views. Nothing.

    In Littlefiled, (from 1875, really?), concerning equity and alleged assignment, which is not on point at all to the immediate discussion, involving an unrecorded supplementary agreement, improvements upon an original patent and the focus of the case being whether or not the recipent was a true assignee or merely a licensee.

    Your need to resort to a court case 137 years old to delve into dicta concerning the difference between law and equity is laughable, if not outright pathetic. That you label such “controlling Supreme Court precedence” as if such was holding and actually “controlling” is utterly ridiculous, even (especially) by your standards of holding and dicta.

    And even IF we were to transport back into time, the result is not what you would lead to: “In other words, this complainant is in equity an assignee, and entitled to protection as such. If the assignment in precisely its present form had been executed after the last reissue was granted, we think it would hardly be claimed that the legal title to all the present outstanding patents did not pass with it. What such an assignment could do in respect to legal titles this has done in respect to such as are equitable

    In other words, the Court is directing that the assignment be treated as it were an assignment under law and not equity. Any (and all) otherwise views are easily distinguished with the particular facts of the case: “The assignment in this case, by its express terms, covers all improvements in the original patent or the invention described in the application of 1852. It carried with it the legal title to the existing patent.

    Furthermore, you are still ignoring the actual current law that is in play. Clearly, you have not read the second restatement of contracts yet. Your absence of any comments on the section I pointed out tells me enough.

    So on the whole, rather, these cases support the views as I have posted them and do not support your views.

  205. 51

    IMAGINE THEY HAVE MY SO CALLED FAMILY SO AFRAID OF THE TRUST THEY STOLE FROM ME. THAT THEY TURN THEM INTO PERSONAL TERMITES. THAT PERSONALLY TRIED TO BURY ME WHEN IN FACT IT WAS “YOU” THEY PLAYED AS MUCH AS THEY PLAYED ME. PERSONALLY I CAN’T WAIT TO GET MY DAY IN COURT!

  206. 50

    Those “lessons” are more accurately characterized as “suckie’s fantasies”. Put down the crackpipe. Remember what happened last time, suckie? 9-0.

    Are we talking about Prometheus again? You want people to remember when the Supreme Court ruled 9-0 that “Integration” is the key to transform an invention into patentable subject matter?

    And how the “Integration Analysis” was adapted in the USPTO Official Guidelines and your whacky mental test steps theory was completely ignored??

    Remember how you, 6, and Ned completely ducked, dodged, and ran away from the challenged to apply “integration analysis” to Ultramercials claims.

    You want us to remember how you were eviscerated so badly in the Alice thread that the moderators had to disable the view comments section, in order to seal the records and keep you from being permanently humiliated?

    Yes, I remember it like it was yesterday!

  207. 49

    “Hefe, the court focused on Ninth-Circuit law to determine the scope of privilege waiver and held that – if faced with this case – would require a fairness balancing before requiring disclosure of otherwise privileged information.”

    Which one on the panel are you referring to as Hefe?

  208. 47

    Sotomayer, Breyer and Ginsburg…

    Yep – when Basics said that Ned was “obviously confused with Breyer’s dissenting position and you have become mired in that dissenting opinion and have mistaken that opinion for law. It is in Breyer’s dissent that “obligation to do something” and the present act of doing something gets conflated and confused” he hit the nail on the head.

    What did you recently say about dicta and holding in relation to law? How does that apply to something less than dicta, that appears only in a dissent?

    Try again.

  209. 46

    The central problem with the theory propounded by the Feds is that the present assignment operates as a fraud.  The employer should be required to assert its rights in a timely manner once on notice.  There are laches and statute of limitations that put a limit on how much time the employer should have.  But under the Feds theory, no matter how long the employee has relied on his patent to his detriment, even after notice to the employer, the employer's rights can be raised in a motion to dismiss on standing.  If the employee loses, even after decades of investment and even after notice to the employer, he loses his patent to the employer.  No laches.  No Statute of Limitations.  Nada.

    This is fundamentally unjust, IMHO.  It violates every sense of justice and due process imaginable.  It is un-American in its harshness.

  210. 44

    suckie lessons from Prometheus

    Those “lessons” are more accurately characterized as “suckie’s fantasies”. Put down the crackpipe. Remember what happened last time, suckie? 9-0.

    you seem to be

    Again, suckie, what “seems” to be happening from your drug-fouled, perpetually skewed and invariably fact-barren perspective is so far removed from what the rest of us recognize as reality that we are forced once again to ask you kindly to just STFU.

  211. 43

    Mr. Basics, the SC did not address the issue directly as that was not the point on appeal.  However,

    This from Sotomayor:

    "I write separately to note that I share Justice BREYER's concerns as to the principles adopted by the Court of Appeals for the Federal Circuit in FilmTec Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (1991), and the application of those principles to agreements that implicate the Bayh-Dole Act. See post, at 2202-2205 (dissenting opinion). Because Stanford failed to challenge the decision below on these grounds, I agree that the appropriate disposition is to affirm. Like the dissent, however, I understand the majority opinion to permit consideration of these arguments in a future case."

    Breyer and Ginsburg said,

    "patent law appears to have long specified that a present assignment of future inventions (as in both contracts here) conveyed equitable, but not legal, title. See, e.g., G. Curtis, A Treatise on the Law of Patents for Useful Inventions § 170, p. 155 (3d ed. 1867) ("A contract to convey a future invention … cannot alone authorize a patent to be taken by the party in whose favor such a contract was intended to operate"); Comment, Contract Rights as Commercial Security: Present and Future Intangibles, 67 Yale L.J. 847, 854, n. 27 (1958) ("The rule generally applicable grants equitable enforcement to an assignment of an expectancy but demands a further act, either reduction to possession or further assignment of the right when it comes into existence").Under this rule, both the initial Stanford and later Cetus agreements would have given rise only to equitable interests in Dr. Holodniy's invention. And as between these two claims in equity, the facts that Stanford's contract came first and thatStanford subsequently obtained a postinvention assignment as well should have meant that Stanford, not Cetus, would receive the rights its contract conveyed.In 1991, however, the Federal Circuit, in FilmTec, adopted the new rule quoted above—a rule that distinguishes between these equitable claims and, in effect, says that Cetus must win. The Federal Circuit provided no explanation for what seems a significant change in the law. See 939 F.2d, at 1572. Nor did it give any explanation for that change in its opinion in this case. See 583 F.3d, at 841-842. The Federal Circuit's FilmTec rule undercuts the objectives of the Bayh-Dole Act. While the cognoscenti may be able to meet the FilmTec rule in future contracts simply by copying the precise words blessed by the Federal Circuit, the rule nonetheless remains a technical drafting trap for the unwary. See AAU Brief 35-36. But cf. ante, at 2199 (assuming ease of obtaining effective assignments). It is unclear to me why, where the Bayh-Dole Act is at issue, we should prefer the Federal Circuit's FilmTec rule to the rule, of apparently much longer vintage, that would treat both agreements in this case as creating merely equitable rights.At the same time, the Federal Circuit's reasoning brings about an interpretation contrary to the intention of the parties to the earlier, Stanford, contract. See App. to Pet. for Cert. 120a (provision in Stanford contract promising that Dr. Holodniy "will not enter into any agreement creating copyright or patent obligations in conflict with this agreement"). And it runs counter to what may well have been the drafters' reasonable expectations of how courts would interpret the relevant language."

  212. 42

    I’ve no regrets

    Your “evermore eplectic rants of rage” over several posts, begging and pleading that lessons from Prometheus not be applied to Myriad plainly says otherwise.

    Face it, the flame of that decision when it reaches your backyard is a bit too hot.

    I notice too that you seem to be conveniently ignoring the admonitions of the Supreme Court as to the form of a claim (i.e., which enumerated category the claim is drawn to) not mattering to the application of any of the judicial exceptions. All of a sudden, when it is your backyard, it seems to matter which enumerated category is under discussion.

    Your problem is that such a distinction (your neighborhood or someone else’s) matters not to the judicial exceptions.

  213. 41

    Ned,

    You have not only missed the point of my earlier post (and badly so), you have ignored the second restatement of contracts section I provided and you are now badly mangling case law.

    If “a present assignment of a future interest creates, an equitable obligation, not a legal assignment” was actually true, Stanford would have won the case because the assignment to the third party would have been considered equitable in nature and Stanford would have at least had a better argument for title. As it is, Stanford was flatly denied.

    You are obviously confused with Breyer’s dissenting position and you have become mired in that dissenting opinion and have mistaken that opinion for law. It is in Breyer’s dissent that “obligation to do something” and the present act of doing something gets conflated and confused.

    Try Again is correct.

    The direct quote from the Stanford case (from Dubilier Condenser Corp 289 US at 187): “The respective rights and obligations of employer and employee, touching an invention conceived by the latter, spring from the contract of employment.” clearly reinforces the second restatement of contracts section that I provided above. Please read that section before replying.

  214. 40

    suckie morning after regret

    I’ve no regrets about the Prometheus decision whatsoever, suckie.

  215. 39

    Yet another morning after regret from MM and his over-exuberance of the Prometheus decision.

    Live and learn.

  216. 36

    LOLZ – the Supreme Court has made this a non-sequitur

    LOLZ- that was a method claim, troll. You will (of course pretend not to) recall an extensive discussion in Prometheus addressing why the Supreme Court did not use 102 to destroy the method claims at issue in that case. You will also (pretend not to) recall that it was you, suckie, who insisted that 102 was the proper route to go for tanking Prometheus’ claims, even though you could not articulate how that analysis would work. So you lost, suckie. 9-0.

    More to the point, the discussion in Prometheus did not suggest, even implicitly, that the same analysis with respect to anticipation would apply to composition claims as well as method claims. Indeed, that’s because the analysis clearly does NOT apply to composition claims.

    So, another failure on your part, suckie. How do those track shoes fit, by the way? They seem to fit really well. The pink glitter looks great on you. Unfortunately, they don’t obscure the pervasive stink that hangs on you.

    Please provide a single example of a composition of matter claim that “pre-empts a judicial exception” and which also is not anticipated.

  217. 35

    The Supreme Court made this point clear in Stanford v. Roche.

    Actually, quite the opposite.

    Try again.

  218. 34

    But that is what a present assignment of a future interest creates, an equitable obligation, not a legal assignment.

    Wrong. Did you bother reviewing what else was presented?

    Try again.

  219. 33

    and which also is not anticipated

    LOLZ – the Supreme Court has made this a non-sequitur. See Prometheus.

  220. 32

    "Misses the point," I agree that a patent is not assignable in equity.  But that is what a present assignment of a future interest creates, an equitable obligation, not a legal assignment.  The Supreme Court made this point clear in Stanford v. Roche.

    Regardless, the law referenced in the statute is common law, a creature of state law, not federal.  The CAFC cannot under Erie RR v. Tompkins override state contract common law.

  221. 30

    I think the emphasis was on law versus equity rather than law (state) versus law (federal)…

  222. 29

    we should totally allow comp/manu claims that preempt on a judicial exception

    Please provide a single example of a composition of matter claim that “pre-empts a judicial exception” and which also is not anticipated.

    Thanks.

  223. 28

    Basics, "Law" in the statute references state common law.  Ditto the Restatement.  According to Erie RR v. Tompkins, there is no Federal Common Law.  The Federal Circuit cannot therefor declare its own rules of common law, but instead are bound by the state law common law as it pertains to contracts.  

    There in a nutshell is the "basic" problem.

  224. 27

    OT… (from Patent Docs), our friend 6 chimes in:

    “This is because “it makes no sense” to apply the Court’s analytic methods for assessing the patent-eligibility of a method claim to a manufacture or composition of matter claim.”

    Right, because we should totally allow comp/manu claims that preempt on a judicial exception whereas method claims doing the same are totally bad. People who do not understand that the judicial exceptions cut across all subject matter annoy me.

    Except 6 was like totally quiet on this topic amongst the several several-hundred post threads raging.

    6, does upsetting your buddies MM and Ned Heller scare you that much that you post this at the Docs, but remain quiet here?

  225. 26

    Weren’t you heading into industry a while ago? I vaguely remember something relating to lightening technology. That would provide ample opportunity for filing inventions.

    And “inventloled” sounds like a scary combination of invent and violate. Is there industrial applicability here?

  226. 25

    They have created a unique law that pertains only to patent assignments

    Doesn’t 35 USC 261 make this an issue at law as opposed to an issue in equity?

    I am thinking of “Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing…”

    Or am I missing something?

    Also, isn’t the notion of “future right that does not yet exist” specifically overtaken in contracts of employment dealing with the acts of invention, for which such such future rights are explicitly assignable in the present under law (and not equity)?

    The thinking that such assignments are mere equitable assignments does not comport with what the law everywhere in the United States actually is.

    See second restatement of contracts, section 321 and note that a contract (i.e. an employment contract) is what is discussed as being in existence, and NOT the right (of the future invention) itself. Thus in the current context, present assignment of a future right that does not yet exist is fully a legal assignment, and is in fact more than just an equitable obligation.

  227. 24

    Trade secrets and the AIA

    According to Sen. Kyle, and to Bob Armitage, the “otherwise available to the public” language of the new 102 will put a gloss on the “on sale bar” such that trade secret usage is not an on sale bar. With such an interpretation, one could practice a trade secret for years and still obtain a patent.

    This opens up several opportunities that we need to understand. For one, the opportunity to obtain a patent is lost if somebody else discloses the invention first, or discloses so much of the invention as to make it obvious. This would seem to suggest that the trade secret user should continuously file provisional patent applications (i.e., at the end of the year and just before the provisional patent application expires, abandoning that application and filing a new one) so as to be able to antedate any public disclosure using his provisional application.

    I would also suggest that we ask the Director to allow a hypothetical prosecution of a trade secret case such that if and when the trade secret user needs to actually file and prosecute a non-provisional application, he could have his non-provisional application all but allowed, subject only to a final confirmatory search. In this way, the trade secret user would have a very short path to obtaining a patent if and when he needs it. But until he needs it, he could maintain his patent application in secret while continuing to exploit his trade secret commercially.

    I can only wonder whether the court would approve of this procedure.

  228. 23

    Basics, let me be clear that whether a document is an assignment or not is a question of federal law.  You should actually read the case is on this topic, they are legion.  Whether document purporting to be an assignment of a patent is in fact an assignment is a question of federal law and always has been.  Siegel Waterman case I quoted earlier.

    Regarding the present assignment of a future right that does not yet exist, the law everywhere in the United States as far as I know is that this is only an equitable assignment creating in the obligor the obligation to assign when the right comes into existence.  The Federal Circuit is way out of step with the law as a generally exists throughout the United States, and I believe throughout the world.  They have created a unique law that pertains only to patent assignments, and their authority for doing so is suspect at best, because there is no authority in the federal courts over matters of common law.

  229. 22

    Patent law interprets the legal effect of an assignment

    Not sure that this is correct. The filing of assignments with the Patent Office explicitly includes the message that the legal effect of the filing is not ascertained.

    You can file anything as a supporting document with your assignment filing and the Office will not say anything at all.

    In fact, the following are a few choice Q & A from the PTO website:

    Is the Assignment Document read ?

    No. Everything required for the public record is transcribed from the cover sheet.

    Are documents submitted for recordation examined ?

    No. All documents that meet the minimum requirements outlined in 37 CFR 3 are processed and recorded.

    Are title searches conducted by the PTO prior to recordation ?

    No. All documents that meet the minimum requirement in 37 CFR 3 are processed and recorded. Persons buying or selling properties should be sure that there is an accurate chain of title in place before submitting recordation requests.

    Further, these thoughts are not new and have been posted on this blog before.

    As for the separate issue of any future conveyences, I have two thoughts:

    1) The Stanford case is a ridiculous example, as Stanford chose the wording of its contracts at a time when “better” wording was well known in the industry. They have no one to blame but themselves.

    2) Wording is everything. In this sense, there is a clear distinction between wording as to “obligation” contrasted with the present act of future assignments of future inventions. “I do hereby assign” is a legal act, not an equitable one.

  230. 19

    You guys want to hear something funny? I inventloled the “manilla” program you’re sure to start seeing commercials for shortly not a year ago and documented it although it may well have been invented in the 1980’s also. But I suppose since I work at the office and can’t file for a patent they’ll skate this time, presuming I could have patented it. My “manilla” goes even further than the one they’re offering though. They’ll catch up with the rest my inventionlol shortly.

  231. 18

    Imagine another one dated Nov.10, 1995… Then he thinks or is told. you need to call her. so on Nov. 22, 1995 Wenzel calls me and tells me about his Grandfather in Gloucster Mass. He was fishing to see if I knew who I was.So then the Nov 10,1995 dated cover pages are hidden. Thinking he can say I spoke with him about patent matters instead of his Grandfather. LOLOLOLOL

  232. 17

    And now that I know why HH called I will begin again. The only reason she told me it was RCL is because they had decided my Statute to it was expired and she said woweee, so he did it! And the reason Wenzel was allowed back is because he knew it was Karl who cast the first “Brick!” and the reason Moatz claimed Karl did nothing, I have no idea what or why he would say that! But I do know it may be because I didn’t get what it was that Karl did! So why did thwey not charge Wenzel. Obviously because Wenzel claimed it was Karls idea and he did it,and he only followed like a lemming.

  233. 16

    Ned,
    You claim ALL branches make Law! LIAR! You also claim an assignment that is written correctly is unbreakable! But Ned I did not assign my IP. My IP was stolen. And now I know exactly how. My Trademark was taken because my IP was stolen. My Copyrights were changed and somehow held bck because they were the key to the facts until I figured out the very first association link. So now the Mail fraud.. hmmmm. The more than one beer drinker is more responsible than I thought.

  234. 15

    Paul, I agree with you that the Federal Circuit has gone way too far. Patent law interprets the legal effect of an assignment, i.e., whether the transfer is of all substantial rights. But whether anything is assigned seems to be a matter of State Law.

    Even the case announcing that the Federal Circuit henceforth would decide the issue of whether an assignment was a present assignment of a future invention or whether it was only an obligation to assign in the future as a matter of federal law did so without any analysis whatsoever.

    This is the same kind of thing that happened in the case that said that a present assignment of a future invention was a legal assignment. They just did without citing any authority whatsoever and what they said was flatly inconsistent with the all prior case authority. All.

    Two strikes.

    It does appear that the Federal Circuit is prone to making fundamental errors of law in this area without any legal support whatsoever. It is a wonder that the Supreme Court did not sua sponte take up the issue of whether the Federal Circuit was right on these points when they decided the case of Stanford v. Roche.

    Regarding the Watermen case, it remains the leading case on the issue of assignments in is cited frequently even by current cases.

  235. 13

    So obviously his association with HH was immediate because he realized ethics were involved… HO HUMM I can’t believe it. i now have even linked that association!

  236. 12

    On July 18, 1995 when I spoke with K. T. he was a licensed atty. in Maryland. So when he asked me what my Idea was he was practicing Law in the state of Virginia. As he continued his game with me, he gave up his license in Maryland. Now did he give up his license because he was practicing law in Virgina over the phone, or did he give it up so he wouldn’t get charged with that as a Crime?
    And as a matter of fact I told the Shadow very early in the meeting with him that the letter dated Oct 19, 1995 from Wenzel was a Forgery, and then when he realized I knew what he had done in my Complaints to the USPTO he then put a slash JRW after the Forgery. and then I am almost positive that a paragraph ( the first) was cut and pasted and moved below to the second paragraph in the letter. Too bad though after all that to hide their Crimes he still forgot to remove the phrase slotted swim platform which he spoke of because he asked me to send different Drawings than the ones that I sent Karl trying to claim a later date to my Idea being understood earlier by karl and he knew all about my association with Karl and the Drawings I sent Karl following day July 19, 1995 the very same Drawings he claims he never got! Does this epiphany about the practicing by Karl as a licensed atty. in the wrong State change anything?

  237. 11

    Sosa v. Alvarez-Machain 542 US 692, 124 S. Ct. 2739, 159 L. Ed. 2d 718 – Supreme Court, 2004: “Erie R. Co. v. Tompkins, 304 US 64 (1938), was the watershed [overuling prior Federal case law] in which we denied the existence of any federal “general” common law, id., at 78, which largely withdrew to havens of specialty, some of them defined by express congressional authorization..”

    The patent statute provides for recording assignments, but does not define them, or their requirements, and does not define or control employment agreements.

  238. 10

    Ned, even in this 120 year old Sup. Ct. case you cite [long before Erie v. Tompkins in about 1937?] it DOES cite state law,saying: “Before proceeding to consider the nature and effect of the various instruments ..it is fit to observe that .. by the law of the State of New York, where all the instruments were made and all the parties to them resided, husband and wife are authorized to make conveyances and contracts of and concerning personal property to and with each other..”

  239. 9

    Paul, patent assignments and their legal effect are somewhat a creature of federal law, made so by statute. Whether something is an assignment is critical to standing, see Waterman v. McKenzie, US Supreme Court, link to scholar.google.com

    I can see the issue of whether a document is an assignment or not being one of Federal Law. I think, though, that equitable and legal defenses such as laches, estoppel and Statutes of Limitations do apply are creatures of State Law.

    That said, as discussed by the Supreme Court in Stanford v. Roche, the Feds have the law wrong on a “present assignment of future inventions.” These are not legal assignments, but equitable. Someone really needs to take that issue up to the SC ASAP, as the Feds seem unwilling to correct their very obvious error.

  240. 8

    Do you want to try again? This time take a deep breadth, relax, and compose your thoughts into intelligible sentences.

    Try again.

  241. 6

    Re the above-noted inconsistency between Fed Cir. panels [also arguably inconsistent with Sup. Ct. precident, since Erie v. Tomkins, normally requiring Federal Courts to apply state law to non-federal matters like contracts] as to whether to apply state law to employee contracts with patent assignment provisions, or to apply their own “Federal?” view of what that law should be, note the unresolved issue raised by Justice Bryer [that should have been argued by Stamford below at the Fed. Cir.?] in the June 6, 2011 U.S. Supreme Court decision in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. re who’s law should applies to CA employee CA patent assignments of prospective inventions. It was held by thatother Fed. Cir. panel in that to make a difference depending on how the employee agreement was worded, without any reference to state law, even though allegedly it would not have if CA law had been applied per the following article: the Jan./Feb. 2011 ABA IPL “LANDSLIDE” magazine article starting on p.24, with extensive legal research.

  242. 5

    The Federal Circuit should start using this in section 101 cases given that existing Supreme Court precedent is nebulous.

    Except for the fact that the Supreme Court asked the Federal Circuit to “redo” the 101 jurisprudence (See Bilski), not “punt” on the question if (and when) it comes up front and center.

    Rule 19 is also discretionary. What’s to stop the Supremes from simply pushing it back down again? Do you really think the Supremes want to decide more than they have to?

  243. 4

    “The Federal Circuit should start using this in section 101 cases given that existing Supreme Court precedent is nebulous. ”

    Either that or the CAFC really really doesn’t want to apply it.

  244. 3

    Dennis:

    It’s “dubitante” and not “dubiante.”

    Also, is certifying a question to the Ninth Circuit even a possibility? Federal courts can’t answer hypothetical questions because of the “case or controversy” clause of the U.S. constitution. And as to the non-hypothetical question, the Ninth Circuit wouldn’t have jurisdiction because of the statute giving such to the Federal Circuit.

    Talk of “certification” makes me think, a circuit court can certify a question or proposition of law to the U.S. Supreme Court under Supreme Court Rule 19. The Federal Circuit should start using this in section 101 cases given that existing Supreme Court precedent is nebulous. It would be great if the Supreme Court issues a GVR Order, and then the Federal Circuit in response certifies a question under Rule 19.

  245. 1

    I don’t think “apropos” is the right word in the last paragraph. Perhaps “unavailing” or something similar is what is meant.

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