by Dennis Crouch
Briefing continues in the CLS Bank software patent case. The accused infringer (CLS Bank) has filed its brief arguing that the Alice patent lacks any core inventive concept and therefore lacks subject matter eligibility under Section 101 of the Patent Act. Briefs in support of CLS and those nominally in support of neither party have also been filed. Alice will file its brief in January and I expect a set of additional briefs in support. As in the Bilski case, Alice's asserted claim here is one that appears invalid on other grounds — namely obviousness. However, the district court ruled on summary judgment (and before claim construction) that the claim was invalid as lacking patent eligiblity under Section 101.
The text of the asserted claim is below:
A method of exchanging obligations as between parties, each party holding a credit record and a debit record with an exchange institution, the credit records and debit records for exchange of predetermined obligations, the method comprising the steps of:
(a) creating a shadow credit record and a shadow debit record for each stakeholder party to be held independently by a supervisory institution from the exchange institutions;
(b) obtaining from each exchange institution a start-of-day balance for each shadow credit record and shadow debit record;
(c) for every transaction resulting in an exchange obligation, the supervisory institution adjusting each respective party's shadow credit record or shadow debit record, allowing only these transactions that do not result in the value of the shadow debit record being less than the value of the shadow credit record at any time, each said adjustment taking place in chronological order; and
(d) at the end-of-day, the supervisory institution instructing ones of the exchange institutions to exchange credits or debits to the credit record and debit record of the respective parties in accordance with the adjustments of the said permitted transactions, the credits and debits being irrevocable, time invariant obligations placed on the exchange institutions.
In its first opinion, the Federal Circuit reversed the lower court ruling – finding that the claim did not merely encompass an abstract idea but instead embodied a practical implementation that fits within the scope of patent eligible subject matter. In a subsequent en banc order, the court asked that the parties focus on two particular questions of law:
I. What test should the court adopt to determine whether a computerimplemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?
II. In assessing patent eligibility under 35 U.S.C. § 101 of a computerimplemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?
I have attempted to extract some core elements of each brief. I should note that all of these brief have much more nuance than is shown. I attempted to categorize the briefs filed on behalf of neither party. My approach was quite subjective and I am confident that others would have classified them in a different manner.
Practical keys here are (1) whether subject matter eligibility is about the inventive concept or instead more focused on the scope of a well construed claim; (2) invention
Party Brief:
In Support of CLS (Defendant)
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File Attachment: BSA Software Alliance–ISO CLS.pdf (169 KB) Business Software Aliance believes that software should be patentable, but not the software at issue here.
"Simple economics makes clear that, if patent protection for software were curtailed, the adverse consequences would be swift and severe. . . . Two factors are of particular significance—whether a claim can be implemented solely via a mental process or necessarily relies upon a machine for execution; and whether the claim uses an abstract idea or law of nature in a way that is novel, useful, and limited. When an invention falls short under both of these standards, it most likey is not patentable under Section 101. . . . Assessed under this framework, the software at issue here is not patentable. . . . It is plain that credit intermediation long preexisted computer implementation, and that it is a process that can be performed in the human mind, or by a human with pencil and paper. In addition, the computer aspect of the claims here does not add anything of substance to the mental process at issue. The computer implementation of the abstract idea is not limited in any fashion. And there is no suggestion that the process here is in anyway dependent upon computer technology to accomplish the directed end."
- Download EFF–ISO CLS Patents are causing more harm than benefit. This is especially true for software patents that regularly include broad functional claims. However, Section 101 analysis is problematic because of its ambiguity. The EFF brief argues that the way to cure this is to more broadly interpret 35 U.S.C. § 112(f) (2012) so that functional software claims be given limited scope under the Federal Circuit's Means-Plus-Function doctrine. This approach stems from a recent article by Mark Lemley and fits directly within the avoidance doctrine that Professor Merges and I suggested in our 2010 article.
- File Attachment: CCIA–ISO CLS.pdf (200 KB) Prometheus requires an inventive concept to pass 101.
- File Attachment: Clearing House Ass'n–ISO CLS.pdf (819 KB) Banking industry brief argues that "threshold" language means that "the Section 101 inquiry is the first step in the legal framework to determine patentability" and should be rigorously enforced.
- File Attachment: Google et al.–ISO CLS.pdf (982 KB). Google acknowledges the difficulty with the abstract idea test because the term "abstract" is so difficult to define. However, Google argues that the abstract ideas are much easier to identify individually than to define generally. This is roughly the same as know-it-when-you-see-it test for obscinity. Google also writes that "abstract patents are a plague on the high-tech sector."
- File Attachment: Stites Amicus Brief.pdf (262 KB) "The software patent game is a less than a zero sum game for the participants and has a large inhibiting effect on software innovation." Stites argues that the court should simply eliminate software patents.
In Support of Neither Party, but Promoting a Stronger § 101 Requirement
- File Attachment: British Airways et al–ISO Neither Party.pdf (191 KB) Supreme Court has rejected the "course-filter" "manifestly-evident" approach offered by the original CLS panel. Whether a claim fails under Section 101 can ordinarily be determined very early in a case and without and detailed claim construction.
- File Attachment: Profs Hollaar & Trzyna–ISO Neither Party.pdf (217 KB) The only way to draw a clear and reasonable line on subject matter eligibility is to focus on its link to technology.
- File Attachment: Juhasz Law Firm–ISO Neither Party.pdf (285 KB) "The test to determine whether a computer-implemented invention is a patent ineligible "abstract idea" should be whether steps that are central to the claim (i.e., not token extra-solution activity) have a "physical" or "virtual" link to a specific real or tangible object."
- File Attachment: Koninklijke Philips–ISO Neither Party.pdf (549 KB) An applicant and patentee should have the burden of proving that the claimed software implementation is subject matter eligible.
- File Attachment: Internet Retailers–ISO Neither Party.pdf (2454 KB) Simply rewriting a method claim as a system or storage medium cannot render the claim subject matter eligible. The Federal Circuit should empower district courts to make 101 determinations very early in cases – well before claim construction or the completion of discovery. "The savings to the parties in money and the courts in time are self-evident. And those savings are more likely to be obtained in precisely those cases in which the patents are least likely to be valid or valuable, cases brought under low-quality patents. Judicious application of Section 101 is likely to winnow out the worst patents at the lowest cost."
In Support of Neither Party, but Promoting a Weaker § 101 Requirement
- File Attachment: IP Owners Ass'n–ISO Neither Party.pdf (301 KB) Software is generally patentable under Section 101. However, a claim "must describe the use of [a] computer with sufficient detail to avoid preempting other uses of the idea and the computer implementation must be a meaningful and significant element of the invention." A detailed claim construction is ordinarily necessary to determine whether that claim is directed to statutory subject matter.
- File Attachment: CLS-Bank_v_Alice_USA-amicus-ISO-Neither-Party.pdf (311 KB) See this.
- File Attachment: Sigram Schindler–ISO Neither Party.pdf (474 KB) The abstract idea test is sufficiently defined.
- File Attachment: NY IP Law Ass'n–ISO Neither Party.pdf (735 KB) Efforts in some decisions to dissect the claim into old and new parts or computer and non-computer elements, should be rejected as squarely inconsistent with the Supreme Court's holdings in Diamond v. Diehr, 450 U.S. 175 (1981), and Bilski. "NYIPLA does not agree that method, system and storage medium claims should ipso facto rise and fall together. Rather, each claim (regardless of its type) should be considered independently as a whole to determine whether it is directed to patent-eligible subject matter."
- File Attachment: IP Law Ass'n of Chicago–ISO Neither Party.pdf (1024 KB) Subject matter eligibility should be broad and flexible. IPLAC's test is similar to the government's factor's in its brief. However, the tone of the IPLAC questions suggest broader eligibility. When a claim includes a computer program, IPLAC would ask: "(a) Are the claims drawn to subject matter otherwise statutory, because if so, they do not become nonstatutory simply because they use a mathematical formula, computer program or digital computer. Diehr. (b) Are process claims, as a whole, without regard to the novelty of any element or steps, or even of the process itself, nothing more than a statutory process and not an attempt to patent a mathematical formula, because if so, they are not nonstatutory. (c) Do the claims implement or apply a formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), because if so, the claims are statutory. (d) Do the claims apply the laws to a new and useful end, because if so, they are statutory."
- File Attachment: Conejo-Valley-Bar-Assn–ISO-Neither-Party.pdf (1589 KB) There is no need for a strong section 101 eligibility requirement because the other sections of the patent act do the work already.
- File Attachment: IBM–ISO Neither Party.pdf (1624 KB) "In the exceptional case when the patent eligibility of a computer implemented invention is not readily apparent, the functional requirement of a computer counsels in favor of patent eligibility." Methods are different from systems and are different from storage media. As such, the subject matter eligibility issues are also different and thus, a system claim might be patent eligible while its parallel method claim may be ineligible.
The Federal Circuit granted CLS Bank International’s petition for a rehearing en banc vacated the decision on software patent eligibility reinstated the appeal and invited the parties and amici to file briefs addressing the following questions
anon, I have no idea what you are talking about. You do not seem to understand me, or, rather, you seem to diliberately misunderstand me.
“especially after the clarification it was given by the Supreme Court in Prometheus.”
Ned, Prometheus buried MOT even deeper.
Repeat after me: a clue – not a requirement.
Repeat after me: Neither necessary nor sufficient.
Now, please stop the MOT agenda.
Nick, yes it's a very good test especially after the clarification it was given by the Supreme Court in Prometheus. I think that if a claim does not pass the MOT, the court should make a presumption that it is not eligible and should move the burden of proof to the applicant or the patent owner as the case may be. The Supreme Court all but said this in Bilski, especially in light of the concurring opinion in which Scalia joined that actually said this. The entire court believed the MOT to be an important test, but not such that failing the MOT would preclude eligibility. But I think failing to pass the MOT should have consequences.
Other Justices have disdained patent attorneys as “mere scriveners” and the like.
Thanks Nick for revisiting this thread – a wealth of ideas present here.
You know, I used to be dissatisfied with the MOT. However, after reading the botched attempts by the courts to articulate a decent alternative for eligibility under 101, the MOT doesn’t look so bad. At least it is a clear test.
Sorry it has taken me so long to reply to your reply (I should check back here more promptly after I post). That statement is based on a report I heard of the oral arguments during Bilksi. Scalia was reported to have responded to a statement by Bilski’s counsel, to the effect that a broad interpretation of 101 is in the public interest, by saying “But you’re a patent attorney, aren’t you?” The clear implication being that Bilski’s counsel was not motivated by the public good or his client’s interests, but rather in ensuring the need for lawyers in his own practice area.
I think it was Bilksi.
Great post! I am glad to read this article. I would like to read more wonderful articles from your blog. Thank you for posting!
Thanks for the comments MM. You remind me of the case that went through my firm some years ago. Inventor in Japan. Method of growing tomatoes. Vibrate the medium in which their roots are located. But not with a constant frequency. The plants respond better, we are told, if you employ variable frequency vibrations, preferably some nice music.
Where’s the harm in allowing Mr Ichikawa (if that was his name) a European patent? Thin end of the wedge, you cry. But I’m more optimistic. Based on my experience of practice before the EPO, I like to think that we are entitled to expect our Patent Office Examiners, increasingly diligently and conscientiously, to limit the scope of allowed claims to be commensurate with the contribution to the art, and our intelligent judges of patent law to define for us, with ever-increasing clarity and precision, the limits of eligibility and patentability.
So I just don’t see the frightening wedge that you see.
Good point Ned. In that case, we don’t even need a new melody.
For further research, let’s all read up on how the C1A cleverly used (endlessly) a notoriously old melody (the simplest one they could find) to achieve physical effects in their prisoners.
But wait a minute. They willfully copied that technique from some other country’s intelligence service, didn’t they? Somebody should have patented it.
fix italics
you kind of missed my nod to Nuijten there son.
Not at all, and I’m not related to you or your BFF.
Nuijten was about whether signals were eligible compositions of matter. New methods for generating signals and new devices for generating signals remain eligible, provided they are properly claimed.
“t’s an exceptionally stable, specific and high frequency sine wave”
LOL – you kind of missed my nod to Nuijten there son.
You quite miss the actual point of the discussion though MM – the difference in intellectual property protection afforded by the copyright and patent regimes.
Your finding of patents with some nexus with copyright has nothing to do with the actual point under discussion.
Great example of a prevarication and smokescreen – and being completely off point.
As I said, you think you have made a point.
You have not.
Wherein Really Simple reveals that he/she/it is just trollin’:
Me: “You didn’t tell the machinest to ‘make a new, non-obvious rocket fin that does this thing that no rocket has done before.'”
RS: Computer logic is the blueprint. Computer code is the manifestation of the “blueprint” in the hands of one skilled in the art.
So we agree: patents in the so-called “computer arts”, unlike all other areas, are granted based solely on the disclosure of information-processing “logic”. There is no need for working embodiments, no novel structures need be described, and the claims cover all manifestations of the “logic”, just so long as there is a computer recited.
So to the extent that “receive info, compare info with previously compiled information, transmit result of comparison” and/or “receive info, compare info with previously compiled information, store result of comparision, transmit result of comparison” are ancient in the computer arts, then any and all methods which utilize those steps are anticipated because the information being received and transmitted can not confer patentability, i.e., the “logic” is old and unpatentable. Do I have that right?
As I have said before, you don’t have a basic understanding of software.
As I’ve said before, you’re wrong. My question about the differences between XML and JPEG “files isn’t gibberish. It’s an attempt to clarify both your earlier non-response and your earlier statement about “information not conferring patentability,” from which you seem to desperately backpedaling (no surprise there!).
Go ahead and answer my question. I’m sure you know the answer. What’s the objectively discernable structural difference between an XML and a JPEG “file”? It’s okay to admit that there isn’t any difference. Go ahead. The world won’t end.
you have made a point
Indeed I did, anon. But I wasn’t talking to you, I was talking to your new BFF.
Please feel free to let us know if the recitation of the term “copyright” in those claims is an unnecessary limitation added by an incompetent drafter, or whether its something else. I look forward to your special buddy’s answer as well so maybe you can give him a call. He seems to be laboring under the impression that the USPTO has “rules” about examining software claims but those “rules” (if they exist) would seem to contradict many of his other beliefs.
Consider a claim to a computer programmed to play a melody. The only part of the claim that’s new is the melody.
Wouldn’t you be entitled to compensation for profit-making expression of your “new” melody under copyright law?
But let’s take your hypothetical a step further. Rather than a “melody”, it’s an exceptionally stable, specific and high frequency sine wave inaudible to the human ear and/or otherwise incapable of being reasonably characterized as “music”. You demonstrate the physically transformative effects on animals exposed to the frequency for a specified (and non-anticipated) period of time. What then? I think it’s likely you’d be granted at least a facially defensible method claim, where the method claim recites all the essential limitations: the frequency, the time, the strength/volume, AND the specific class of organisms demonstrated to reproducibly exhibit the claimed effects. Obviously you can’t claim the frequency itself and a general computer or other device capable of generating the frequency would be prima facie obvious. On the other hand, if the prior art devices could be shown to be incapable of generating the signal at the specified stability, strength, and volume, you should be entitled to a composition claim on that new device (properly claimed, of course, by reference to the novel structures comprised by the device which enable the new functions).
Could such claims, if granted, be found ineligible under 101, under some as-yet-unarticulated theory? Possibly. I can imagine some concern arising should many reams of poorly examined claims on methods of “new frequency generation” suddenly be flowing out of the patent office, followed by sloppy lawsuits against anyone who produces the frequencies or sells recordings of the frequencies manufactured with legally purchased devices. Sound familiar? Perhaps it’s appropriate to cut that nonsense off at the roots.
Would you accept that claims should be limited to the useful, eligible, application? E.g., a method of designing an improved fin rather than a method of producing a number that where a disclosed application is designing an improved fin?
I think the claim should be to a method of doing something that has a novel, physical effect and not to a method of playing music.
You laugh as if you have made a point.
You haven’t.
Whether or not something is copyrighted has no bearing on whether or not it is patentable.
LOL. Really?
link to patft.uspto.gov
I since elaborated.
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Certainly – cribbed, confined, restricted, constrained,…
I like to further state that the statutory subject matter is set forth verbatim in section 101. I think the exclusions we now know to be exclusions under section 101 were originally intended by the Supreme Court to Be excludions under section 112.
Perhaps Ned, but not the point you think it does.
Verily.
Pro Se’s question was: “What is your good 101 argument for not allowing the claims at 101?”
Yes, your response was just a statement – a conclusary and rather empty one at that.
I was hoping that you would do better.
Do you even know what they meant by the term ?
Hardly.
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I am not making a argument. Just a statement.
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It illustrates a point, anonymous.
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You have made no points below. Perhaps you have forgotten what it means to make a point (you need more than a conclusary statement with your name attached).
“what used to be called, 250 years ago the “useful arts””
LOL – that term is not frozen in time.
“Each and every solution” – No. Those not in the useful arts, even though they may be a solution, are not included. Sorry, that’s the ground rules.
Hey – I did say I was playing the devil’s advocate….
Why? Because what I cite are solutions to real technical problems, and therefore “inventions” for which patents should be available in any right-thinking patent system that promotes the progress of “technology” (what used to be called, 250 years ago the “useful arts”. Each and every solution to an objective technical problem (except those solutions that deserve to be disqualified because they are i)not new or ii)obvious or iii) not enabled) should be as eligible and patentable in the USA as it is under the EPC.
Of course, a bit of skill and knowledge is needed, to craft a claim that is directed to, and competently protects, what is patentable. I’m not suggesting am I, that one claims a melody as such, or a mathematical operation as such.
To play the devil’s advocate, MaxDrei, why should the definition of eligibility better be capable of including “that?”
Current state of law via Nuijten would indicate that Maria’s building blocks are ‘too transitory’ for patent eligibility, no?
As to the melody, your assertions avail you not, as music (even music with such benefits) simply is classified as a non-useful art.
No, Ned, you are trying to obfuscate the issue by attempting to claim a non-useful art item. Any example you put forth attempting to claim music is pure drivel.
This tactic was debunked a long long long time ago. Yet you and your pal MM continue to attempt to use that poor argument. Why? It’s a non-starter.
Ned,
I am perfectly in control of myself. I invite you to read this thread, not from your email perspective, nor with your typical blinders on, to see how poorly you and MM have handled the discussion. Lies (blatant lies from MM) and deceit reign from your side, and calm, rational, and searing comments from the pro-patent side.
Ned,
That’s not an argument – that’s a conclusion. It’s apparent that a pro se person is asking the question, so please step through a logical, rational, cognizant argument.
Two thoughts on eligibility: when does software get eligible, and what is “functional”?
Consider what Maria Petrou (obituary Dec 22, 2012) did. Image processing. For that, see:
link to en.wikipedia.org
She invented “trace transformation”. Whatever definition of eligibility we adopt, it had better be capable of including that, right?
Consider a claim to a computer programmed to play a melody. The only part of the claim that’s new is the melody. Who can say that the new bit is devoid of “function”? What if I assert that it calms pedestrian traffic in shopping malls. Further, I have evidence that, played to cows being milked, it increases their yield. Even further, when played to tomatoes in a glass house, I assert, it mysteriously increases their growth rate. So shouldn’t my claim pass 101?
Reading this thread is good for Europeans. It reminds them what a mess the EPO could have made of the eligibility issue.
See below.
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Anon, get control of yourself.
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No, Anon, What I am doing is showing that simply reciting a machine, a clarinet, for example, does not itself Render the claimed subject matter eligible. It is what the claim does that's important.
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"Test?"
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101: when a claim, considered as a whole, is not directed statutory subject matter.
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If you have a point, please make it.
Ned,
Alas, I do not, as I have been constant as the Northern Star, as just as true. The same cannot be said for you and your ilk, drowning as you are just on this thread alone in lies and deceipt.
Ned,
You mistake the avoidance of introducing drivel in the form of trying to make a false argument involving non-useful arts (like music), with a normal discussion of patent law.
Most simply don’t try to focus on such fallacy to make non-existent points.
Ned Heller Wrote: “anon, but the point was clearly made in Prometheus. ”
Ned, I believe the discussion started when Fish asked you if there was a point of novelty test for 101. Well, here is what Prometheus had to say about bring 102 Novelty into 101.
“We recognize that, in evaluating the significance of additional steps, the §101 patent-eligibility inquiry and, say, the §102 novelty inquiry might sometimes overlap. But that need not always be so. And to shift the patent eligibility inquiry entirely to these later sections risks creating significantly greater legal uncertainty, while assuming that those sections can do work that they are not equipped to do. What role would laws of nature, including newly discovered (and “novel”) laws of nature, play in the Government’s suggested “novelty” inquiry? Intuitively, one would suppose that a newly discovered law of nature is novel. The Government, however, suggests in effect that the novelty of a component law of nature may be disregarded when evaluating the novelty of the whole. See Brief for United States as Amicus Curiae 27. But §§102 and 103 say nothing about treating laws of nature as if they were part of the prior art when applying those sections. Cf. Diehr, 450 U. S., at 188 (patent claims “must be consid ered as a whole”). And studiously ignoring all laws of nature when evaluating a patent application under §§102 and 103 would “make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious.”
MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC.
Throughout your discussion of this topic, you seem to add the thought that the programmed computer actually do something new. This is how you distinguish for example a programmed computer making a new rocket fin from a programmed computer playing a clarinet. The making of a rocket fin is doing something useful. playing the clarinet is not the same thing.
Consider section 282.
There is a good reason.
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Not, "nothing more" at all.
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Anon, you describe yourself there.
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What is your good 101 argument for not allowing the claims at 101?
written description not 101
“However, that precise issue was not critical to the result, in my opinion.”
LOL – your opinion is flatly and explicitly thrown out by the unanimous judgment of Prometheus. No dead letters of judicial exceptions – those things tied implicitly to the words of Congress in 101 for their authority – allowed per the Justices, Ned.
Or maybe the Justices have been wrong in every 101 decision since the 1952 act… (is that what you are saying, Ned?)
C’mon back MM, time for your next merciless (but exquisite) beatdown. Bring the popcorn.
“I’d love to believe that it’s actually true”
Prove that it isn’t.
“What is the objective structural difference between, say, a disc encoding an XML ‘file’ and a disc encoding a JPEG ‘file’? You seem to believe that those ‘files’ are possessed of properties which render them sufficient to impart patentability to an otherwise old computational method (versus other types of information content.”
It is like discussing chemistry with somebody who doesn’t know the difference between neutrons, electrons, protons, atoms, and molecules. As I have said before, you don’t have a basic understanding of software. As such, when you write what you just did, it sounds like gibberish.
“I’ll assume that you believe the answer is ‘yes'”
Why would you assume that? Whether or not something is copyrighted has no bearing on whether or not it is patentable. Copyrights protect artistic expression. Patents protect function. As I said, the whole premise of your question is silly.
“My point is that you seem to want to have it both ways.”
No – I don’t need to describe the 5-axis CNC milling machine used to create the rocket fin. Those skilled in the art understand its operation and how it can be used to create the rocket fin. Similarly, I don’t necessarily need to describe the operating system – particularly if the inventive application interacts with it in a normal manner.
“surely nothing remotely relevant to a 101 eligilbity problem lurking there”
You are absolutely right. Functional logic tied to machine shouldn’t have any problems with 101.
“You didn’t tell the machinest to ‘make a new, non-obvious rocket fin that does this thing that no rocket has done before.'”
Again, your lack of understanding of software is evident. Computer logic is the blueprint. Computer code is the manifestation of the “blueprint” in the hands of one skilled in the art. Really simple.
“It’s well-known that many (most?) of people who might qualify as an expert on ‘software’ do not agree that ‘software’ should be eligible for patenting.”
You can say the same thing about people in the biotech field. Color me unimpressed with your argument. Also, being an “expert on software” does not make one an expert in 35 USC 101. Regardless, we are again devolving into policy arguments – not the law. I don’t care if there is a sub-culture of computer programmers that want to work for free and create software that can be freely shared. The concept of “completely free” is not encompassed within “exclusive Right to their respective Writings and Discoveries.” These “policy arguments” are no more than people protecting their economic turf.
“I think we can all agree for example that music is not eligible for patenting. But what if I claim the new song with an old instrument?”
A new song is not new function. Software is functional. Your analogy drops dead right there.
FYI — the printed matter doctrine applies to non-functional descriptive material.
It is really simple …
“AAA, it is one thing to not get it, is another thing to get it and to refuse to follow.”
What a hypocrite.
Ned,
We both know that that ‘good argument’ was explicitly before the Court and that they unanimously (as in 9-0), said that it was NOT a good argument and rejected that argument.
I fail to see what you hope to gain by repeating a position already heard and rejected EXPLICITLY by the Court, and you do so with no compelling argument at all. You are only reinforcing the notion that you are purely driven by your agendas and completely out of touch with the actual law.
“Stop denying that a claim, considered as a whole, must do something new, and useful, and physical.”
Please point out with particularity (the time and date) of my post that you think provides the foundation for this accusation.
And then, stop thumbing your nose at what was actually said in the Prometheus case, and arrogantly continuing to try to conflate 101 with other portions of the statute. The Court was very clear and very particular on that point, and regardless of whether or not you now label it as dicta, you cannot go 180 against that with nothing more than your arrogant viewpoint.
Worth repeating:
Divorced from reality, specious, no idea, and unsupported empty table-pounding policy statement wrapped in lies about law and facts – given his prior admissions on “programmed to = structure” and the understanding of the “functionally related” exception to the written matter doctrine.
Yes, Simply exquisite!
It is plainly evident which side of the debate has been (and continues to) engage in sophistry.
To belabor the obvious Ned, that would be your side. But since we both know that you refuse to be objective about the issue due to your third party arrangements, we will simply have to ride the merry-go-round yet again, won’t we?
Yes, but not for the reasons you think.
I think such is not eligible under 102/203. But there is a good argument that such are not aurthorized by 100.
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But does it say that an old use of an old machine is not a statutory process under 101?
That’s the issue I think. After al,l the example has the function steps the PTO is arguing, and the result/application you seem to be advocating for.
I think we can all agree for example that music is not eligible for patenting. But what if I claim the new song with an old instrument? For example, I claim the clarinet playing the new song?
I think the logic of Judge Rich, and of course of many of the software is eligible crowd, would note that a clarinet is a form of machine, and therefore the claim is directed to patentable subject matter. There are are others though that note that the novelty is in the music and not in the clarinet; and that to agree that this form of claim was eligible would be to make a mockery of the patent law.
But there sophistry is endless. It never ends.
Simply exquisite!
Anon, of course this was dicta. They assumed that all their prior cases were based upon section 101, or its analog. However, that precise issue was not critical to the result, in my opinion. All I am saying is that the first cases on this issue were based upon what we now know to be section 112, and not section 101, at least as far as I can understand the cases. If you want the exact quotes, I can give them to you and you can give me your opinion. But let me know whether it is your opinion that Le Roy v. Tatham and O'Reilly v. Morse were based upon section 101 or were rather based upon §112. After all, the Supreme Court was heavily relying on the written description requirement of a way of making and using the invention – as claimed.
Pro se, the patent statutes make clear that a new use of an old machine is patentable as a process. By implication, an old use of an old machine is not.
I think you know where your example fits.
anon, but the point was clearly made in Prometheus.
Stop denying that a claim, considered as a whole, must do something new, and useful, and physical.
“and the SC got it wrong”
Lol – all nine?! Didn’t you just get down praising them? Arent they the best minds? dont they have the best assistants? How did all nine get it wrong? What kind of message could that ever be?
See what I said? If the Supremes aren’t aligned with your agenda, then you diss them.
The world of Ned, make believe is so very nice.
“Pro se, a method claim is a series of acts. It produces a result.”
so, are you saying a process for putting a coin into a bubble gum machine that results in a bubble gum coming out of the machine is a patentable process?
Neither necessary not sufficient.
Move on already.
I agree
Yeah, and the SC got it wrong.
Anon, the problem with the MOT is that it does not state that what the claim as a whole must do is transform something from old into a new state. Old transformations can be discounted.
Pro se, a method claim is a series of acts. It produces a result.
Start with Benson.
Also, check 112, p. 6, "acts."
Check the SC brief of the government in Prometheus on what a method step is.
Then, check Diehr. Read about the MOT.
I deny your version of what happened in those cases – as does the Court itself. You are aware that the argument you seem to want make here sounds in the government brief for Prometheus, and was explicitly rejected by all nine Justices of the Supreme Court, right?
Bold and italics tags off.
Ned,
When you say “Benson made it clear that physicality was the clue. are you really saying “Benson made it clear that physicality was the clue.“? as that is how your post reads.
I am sure that you are well aware that that was one of the points that all nine Justices in Bilski> agreed to – that MOT was only/b> a clue (albeit an important clue). Your desire to elevate MOT into more then took an additional beating in the Prometheus case, where all nine Justices acknowledged the presence of MOT and still held that it was not enough. So stick a fork in your attempts to elevate MOT already – while an important clue, it is neither necessary, not sufficient.
“I have no idea where the PTO is on this. But it seems they are in left field if they do not agree that a new, physical result is sufficient.”
Can you cite any Court cases to back up what you say because I know for a fact the PTO would respond that a claim to a method is not limited by a claimed result but instead is limited by functional steps.
And….
A method is infringed by performing the claimed steps whether or not a desired result is achieved.