Did the Federal Circuit Just Adopt Functional Claiming Through the Back Door?

Guest Post by Mark Lemley. Professor Lemley is the William H. Neukom Professor at Stanford Law School and a founding partner of the successful law firm of Durie Tangri where he litigates intellectual property cases.

In Ultramercial v. Hulu, decided on Friday, the Federal Circuit held that a series of steps for serving ads to customers over the Internet, phrased at a high level of abstraction, was patent-eligible subject matter under section 101.  Chief Judge Rader wrote the opinion, which Judge O'Malley joined.  Perhaps more surprising, Judge Lourie, who wrote the plurality opinion in CLS Bank, found the requirements of that test satisfied by these claims despite the lack of evident tie to any particular hardware device or limitation to any particular software algorithm.

Part of the explanation for the result in Ultramercial stems from the procedural posture of the case.  The district court had granted a motion to dismiss, reasoning that patentable subject matter is a pure question of law and so not dependent on factual conclusions.  The district court's position was defensible, given that every prior Federal Circuit opinion has called patentable subject matter a pure question of law.  But the majority goes out of its way to suggest that factual questions are likely to predominate in a section 101 inquiry, though the court is a bit vague on just what those factual disputes might be.  The court also suggests that claim construction will normally be required before resolving a 101 issue, but that here, the court was opting to construe the patent in the way most favorable to the patentee (that is, in the narrowest way possible) to evaluate 101 on a motion to dismiss.  Curiously, however, the court never explicitly tells us what that narrow construction is.

Then the majority does something very odd: it proceeds to discuss in great detail the technology disclosed in the specification but not mentioned in the claims.  The court clearly viewed Ultramercial's claims as patent-eligible because the specification contained detailed technical implementations and a complex flow-chart, even though none of those were included as limitations in the claim.

What is going on here? One possibility is that three of the most experienced patent judges in the country have forgotten the single most fundamental rule of patent law — that as Judge Rich put it, the name of the game is the claim.  But I doubt it. If a lawyer arguing before the court tried to read in limitations from the specification in claim construction or for infringement or validity, these judges would (quite properly) tear that lawyer apart for violating this fundamental rule and ignoring the language of the claim.  It seems unlikely that each of them simply forgot that it is the claims that define the invention.

A second possibility is that the court thinks that the rule that the claims define the invention simply doesn't apply to patentable subject matter: that as long as you have a specific idea somewhere in your specification we don't care what you claim.  But that seems equally unlikely.  To begin, it directly contradicts controlling Supreme Court precedent such as O'Reilly v. Morse, where the court held narrow claims patent-eligible but a broader claim ineligible.  Beyond that, it simply makes no sense.  The patentable subject matter rule is against patenting abstract ideas.  A claim that covers only an abstract idea doesn't somehow become less abstract simply because the patentee could have claimed a narrower, more tangible invention.  

There is a third possibility: that the court is implicitly construing the broad, functional elements of Ultramercial's method claim as means-plus-function claims under section 112(f), with the result that they are accordingly limited to the particular implementations in the specification.  Doing so would be consistent with approach I suggested in my article "Software Patents and the Return of Functional Claiming".  It would explain why the court said it was adopting the narrowest construction of Ultramercial's claims but then never told us what that narrow construction was.  And it is the only reasonable explanation for why the Federal Circuit would suddenly drop its focus on the language of the claims and start to talk about whether the algorithms in the specification were patent-eligible subject matter.

The court didn't explicitly say what it was doing.  I hope that its focus on the specification signals a narrowing construction that saved the claim from ineligibility.  That would be a major step forward for both patentable subject matter law and for reining in overbroad software patents.  And the alternative — that the court has decided that the scope of the claim doesn't matter anymore — would represent a major step backward.

359 thoughts on “Did the Federal Circuit Just Adopt Functional Claiming Through the Back Door?

  1. 299

    a recipe for even more backlog, gridlock, intimidation and blackmail.

    LOL – that’s some parade of horribles MaxDrei.

    How does the U.S. do without the law of the EP?

    /off sarcasm

  2. 298

    Ned, you are wrong. The most grievous error in your “Integration Analysis” is essentially stating that Diehr was “integrated” because it passed the MoT and Prometheus was not “Integrated” because it did not pass the MoT. We know you are wrong because the Supreme Court in Bilski stated:

    (“The Court is unaware of any ordinary, contemporary, common meaning of “process” that would require it to be tied to a machine or the transformation of an article. Respondent Patent Director urges the Court to read §101’s other three patentable categories as confining “process” to a machine or transformation. However, the doctrine of noscitur a sociis is inapplicable here, for §100(b) already explicitly defines “process,” see Burgess v. United States, 553 U. S. 124, 130, and nothing about the section’s inclusion of those other categories suggests that a “process” must be tied to one of them. Finally, the Federal Circuit incorrectly concluded that this Court has endorsed the machine-or-transformation test as the exclusive test. Recent authorities show that the test was never intended to be exhaustive or exclusive.) BILSKI v. KAPPOS, 2, 2010, 561 U. S. (2010) 3 Syllabus

    There is no MoT of any kind “required” for a claim to be “integrated” and thus statutory subject matter.

  3. 297

    One quick example (and yes it is an opportunity for me to use one of my favorite words even if misspelled:

      ANTHROPOMORPHICATION

    Machines do not IN FACT think.

  4. 296

    and everything he says is wr ong.

    LOL – except I am not wrong.

    You have to deal with that slight problem with your ‘logic.’

  5. 295

    Ned,

    You forgot the quote in Bilski that actually addressed Benson.

    (and this on top of the fact that you have once again refused to engage any of the points I have made in our discussions)

    We both know why you refuse to acknowledge the valid points raised.

  6. 294

    “The answer is easy: anon is not a ta rd and 6 is (again) wrong”

    Then the “answer” to all your hor sesht that you all the time spe w is likewise easy: anon is a ta rd and everything he says is wr ong.

    There, all of your points that have ever been “put to” someone on the blog are now “answered”! Happy now?

    “By the way, STILL waiting for you to provide what you said you were going to provide.”

    Yeah I know you’re waiting with bai ted breath like the tro ll you are, but like I told you, I was going to wait until D posted a thread about the decision itself and then just post it there so I don’t have to keep reposting in ancil liary threads.

  7. 293

    Or if it makes you feel warm and fuzzy 6, the ‘answer’ to a point made is that the side against which that point was made, must account for that point in their views. They cannot ignore the valid point and merely repeat the same mantra. The mantra must be modified to account for the point made.

    The ‘legal thinking’ stuff is a bit much for you, isn’t it?

  8. 292

    “The answer is easy: anon is not a ta rd and 6 is (again) wrong”

    Then the “answer” to all your horsesht that you all the time spew is likewise easy: anon is a ta rd and everything he says is wrong.

    There, all of your points that have ever been “put to” someone on the blog are now “answered”! Happy now?

    “By the way, STILL waiting for you to provide what you said you were going to provide.”

    Yeah I know you’re waiting with baited breath like the troll you are, but like I told you, I was going to wait until D posted a thread about the decision itself and then just post it there so I don’t have to keep reposting in ancilliary threads.

  9. 291

    The answer is easy: anon is not a ta rd and 6 is (again) wrong.

    See? That was easy.

    By the way, STILL waiting for you to provide what you said you were going to provide.

  10. 290

    “But given that machine-implementation was nowhere present in any of Bilski’s method claims,”

    It’s been awhile since I did them but I’m not really sure you can do a good Monte Carlo without a machine. See claim 4.

  11. 289

    He thinks, being a ta rd like he is, that they preempt hedging. And also, claim 4 preempts a “scientific truth” of hedging.

    I presume the later are somewhat like “religious truths” in so far as they’re just made up.

  12. 288

    “do not have answers to the points already made ”

    Why would someone have an “answer” to a declaratory statement which is not a question, i.e. a “point”?

    Furthermore, in what sort of a situation is it even possible to “answer” a declaratory statement?

    If I declare: “Anon is a ta rd.”

    Or if I say: “Anon is a ta rd!”

    Who will have an “answer” for these non-questions?

  13. 287

    why you can’t have it both ways

    Nice strawman. No one is saying that you can have it both ways.

    What people ARE saying is that there is a difference between patent eligibility and patentability.

    Are you saying there is no such difference? Are you trying to use your vacuous WHATEVER logic?

    Or are you simply being a disingenuous pr1ck and doing your usual standby and [shrug]?

  14. 286

    I’m thinking you might be right, Ned, about what Judge Rader wants.

    He is often in Europe, arguing about how Europe manages eligibility, and guess what, Europe does it like your nemesis Judge Rich.

    The EPO thinks eligibility should be done first, as an absolute issue, not relative to whatever is the prior art on the day. In consequence, stuff that everybody knows to be notoriously old can still be seen at the EPO as eligible. Eligibility at the EPO is not a big deal and doesn’t detain its tribunals for long.

    Many patent judges have difficulty swallowing that. They would rather filter out such unpatentable stuff straightaway, rather than having to address novelty and obviousness.

    Why that? Because patentability over the art can be so time-consuming when you don’t use the EPO’s quick and brutal way of doing it. It is that downstream brutality which allows the EPO such a loose open upstream eligibility filter.

    Judge Rader should be careful what he asks for. Setting the 101 filter to “loose”, without first putting in place the EPO way to settle novelty and obviousness quickly, efficiently and fairly is a recipe for even more backlog, gridlock, intimidation and blackmail.

  15. 285

    Thus we have two views of Bilski: the first was that Hedging was abstract because it was essentially mathematical. The other steps were mere data gathering.

    The other view is that the problem in Bilski was that the claims were not tied to a machine.

    The second view however clashes with Benson. The first view is the one that is consistent with Benson.

  16. 284

    The SC starts its analysis with the ineligible subject matter, be it a law of nature or mental abstraction. It then looks to see if enough has been added to produce a new and useful, practical application. The clue is physicality.

    Diehr held the claims eligible because the programmed computer was integrated into an old process that otherwise passed the MOT. (traditional process) So integrated, it produced a new and improved result.

    In contrast Prometheus involved a Law of Nature that was not integrated into the old elements that otherwise passed the MOT.

    Bilski did not explain itself. What the SC had in mind can not be interpreted with any reliability.

    Thus we have two views of Bilski: the first was that Hedging was abstract because it was essentially mathematical. The other steps were mere data gathering.

    The other view is that the problem in Bilski was that the claims were not tied to a machine.

    The second view however clashes with Benson and cannot be right. The first view is the one that is consistent with Benson.

  17. 283

    The SC starts its analysis with the ineligible subject matter, be it a law of nature or mental abstraction. It then looks to see if enough has been added to produce a new and useful, practical application. The clue is physicality.

    Diehr held the claims eligible because the programmed computer was integrated into an old process that otherwise passed the MOT. (traditional process) So integrated, it produced a new and improved result.

    In contrast Prometheus involved a Law of Nature that was not integrated into the old elements that otherwise passed the MOT.

    Bilski did not explain itself. What the SC had in mind can not be interpreted with any reliability.

    Thus we have two views of Bilski: the first was that Hedging was abstract because it was essentially mathematical. The other steps were mere data gathering.

    The other view is that the problem in Bilski was that the claims were not tied to a machine.

    The second view however clashes with Benson and cannot be right. The first view is the one that is consistent with Benson.

  18. 281

    The SC starts its analysis with the ineligible subject matter, be it a law of nature or mental abstraction. It then looks to see if enough has been added to produce a new and useful, practical application. The clue is physicality.

    Diehr held the claims eligible because the programmed computer was integrated into an old process that otherwise passed the MOT. (traditional process) So integrated, it produced a new and improved result.

    In contrast Prometheus involved a Law of Nature that was not integrated into the old elements that otherwise passed the MOT.

    Bilski did not explain itself. What the SC had in mind can not be interpreted with any reliability.

    Thus we have two views of Bilski: the first was that Hedging was abstract because it was essentially mathematical. The other steps were mere data gathering.

    The other view is that the problem in Bilski was that the claims were not tied to a machine.

    The second view however clashes with Benson and cannot be right. The first view is the one that is consistent with Benson.

  19. 280

    Moreover, Max, Rich was of the view that if a claim claimed a machine, composition, article or a process that used or made any of these, the claim passed 101.

    He would have addressed limitations that were abstract at the 102/103 stage. The result may have been the same. It may not have. But the SC has now flatly rejected this approach in Prometheus.

  20. 279

    MD, you might want to read Rich’s views expressed in the overruled In re Benson.

    “The only argument put forward by the Patent Office for holding claim 13 non-statutory under section 101 is that the method is basically “mental” in character. Looking at the present case in the light of all its circumstances, we observe in claim 13 a process consisting of a sequence of steps which can be carried out by machine implementation as disclosed in the specification, by still another machine as disclosed during the prosecution, and even manually although in actual practice it seems improbable anyone would ever do that, speed measured in milli-or even micro-seconds being essential in the practical utilization of such a process. Only in the manual performance would it require the operator even to think and then only to the extent necessary to assure that he is doing what the claim tells him to do. In no case is the exercise of judgment required or even the making of a decision as between alternatives.

    Realistically, the process of claim 13 has no practical use other than the more effective operation and utilization of a machine known as a digital computer. It seems beyond question that the machines — the computers — are in the technological field, are a part of one of our best-known technologies, and are in the “useful arts” rather than the “liberal arts,” as are all other types of “business machines,” regardless of the uses to which their users may put them. How can it be said that a process having no practical value other than enhancing the internal operation of those machines is not likewise in the technological or useful arts? We conclude that the Patent Office has put forth no sound reason why the claims in this case should be held to be non-statutory.”

    link to scholar.google.com

  21. 278

    EG,

    Using a machine to perform calculations makes the claim eligible has been the leitmotif of Rich and Rader from the very beginning. See, In re Benson.

    That view is incompatible with Benson and always has been.

    But it continues to be repeated, again and again and again and again by the acolytes of Rich.

    If the SC takes this case and approves the claims based on their the use of a computer to make the calculations, then this case will effectively overrule Benson. I think that is exactly what Rader wants.

  22. 277

    101,

    Hedging.

    A particular form of mathematics applied to mathematical representations of risk that computes risk in the form of a number, and then does something to reduce risk, a number, until that number is less than another number.

    Is Hedging any less abstract if one says use a computer to make the calculations?

  23. 276

    I’m sorry, don’t see an answer to my question. I don’t know what you think the problem was with the Bilksi claims.

    Why were the claims there abstract?

  24. 274

    LOL 6,

    It is convenient for you to overlook my 7:11 post.

    I am still waiting for what you said that you would provide.

  25. 273

    When you show your ar se as much as you do, don’t be surprised if you get some fe cal matter slung onto it.

    “And, the ole professor lets your fecal matter episodes stand. That should teach you 6 that persuasive arguments (mine) are more powerful than your fecal matter tantrums.”

    Wait, wut? What in that situation should teach me that? You really believe that the “persuasiveness” of your showing your ar se through making crackpot “arguments” is what got your posts deleted and that mine weren’t baleted because they simply weren’t persuasive? You are so crazy it is funny.

  26. 271

    101 IE,

    Agreed, as SCOTUS said in Bilski, MOT isn’t the only test, be it exclusion or inclusion. I’m just noting that Ultramercial suggests that there’s a presumption that machine-implemented methods are patent-eligible (i.e., presumptively “integrated” in your terminology); that’s important for giving you a “safe harbor” to shoot for. You could still have a method fail the MOT test yet still be patent-eligible, i.e., it’s “concrete” enough under Ultramercial, as well as be machine-implemented but be too “abstract” to be truly integrated.

  27. 270

    NWPA,

    You overstate the hurling of fecal matter effect.

    In fact, 6 is a poster child of the worth of wiping a puppy dog’s nose in his own CRP.

    6’s readily apparent lack of understanding of the concept of ladders of abstraction and the imminent decimation of his ‘pet theory’ version of abstract/preempt/ineligible subject matter have actually given rise to a easily visioned analogy of ‘abstract.’

    Even Lemley’s disingenuous attempt at “these claims are at a high level of abstraction” characterization is quite easily seen as the fallacy it is by applying a “Top Rung” analogy. As anyone who has any technical training can readily understand, invention (or innovation if you want to co-opt the latest buzzword) comes (largely but not exclusively) from man’s purposeful use of the ladders of abstraction. And keeping in mind the reward, the legal essence of the patent right is preemption, one can readily see that the rungs of a ladder, rewarded with preemption IS the patent system. It is only when the very top rung is rewarded that the danger of the judicial exclusion is encountered. Not just any rung – but only the top rung. 6’s bogus “well the claim itself is not abstract, but there is an abstract idea associated with the claim” is seen as the CRPOLLA that it is. When only the top rung is susceptible to the judicial exception, the judicial exception will only be able to be applied sparingly – and not in the ‘gazillions’ of circumstances for which patent rights are meant to be eligible.

  28. 269

    Thanks NWPA,

    But my writing and my positions have been steady and true (and that is why it has been easy to be persistent/patient).

    The ‘holding accountable’ factor has been gaining strength not through a change in my part but rather on account that the weaknesses of the anti-patent little circle become more pronounced as the repetition of their limited script highlights the logical shortcomings of their positions. Every time they trot out a script and do not have answers to the points already made highlights the weakness of their position. That they continue to argue so poorly is a ‘trap’ they make for themselves.

    The obvious misstatements and the obvious attempts at such things like the Crybaby’s veto show that what ‘the other side’ want is only a soapbox and an echo that their philosophy is the right philosophy. They don’t bother with actual law (unsubverted) and rely on ‘implicit’ opinions, because “opinions cannot be wrong and everyone has a right to their opinion.” If only they can have their fifteen minutes (or nearly 21,000 words), and if only no one cares about the points of fact and law raised against the soapbox script, ‘utopia’ is within grasp.

  29. 268

    At least I don’t hurl fecal matter at people — like you recently did to me. And, the ole professor lets your fecal matter episodes stand. That should teach you 6 that persuasive arguments (mine) are more powerful than your fecal matter tantrums.

  30. 267

    Your arguments are getting more and more persuasive 101. Good show. I’ll bet that many have picked up on your arguments and your presentation will become part of patent law. I have noticed how eerie it is that some of the fed. cir. opinions have mirrored our arguments on here and some academic papers have done the same thing.

    So, there is probably some worth to your efforts to find clear and concise arguments to counter the trolls.

  31. 266

    You do seem to have improved on the technique of holding the trolls accountable, though. It is becoming actually fun to read. You are making troll trapping seem like art.

  32. 265

    You are definitely right anon. Ned just ignores the arguments and goes back to his sheets of policy that he is supposed to post on here.

    How you have the patience to deal with him I do not know.

  33. 263

    EG, I think it’s equally important to clarify that while the MoT remains an important and useful clue, it is not definitive. And it is not required. An integrated process can be patent eligible even if it is not tied to a particular machine or transforms an article or substance into a different state or thing. To presume otherwise would merely subjugate “integration” to machine or transformation, when the Supreme Court expressly refused to do so in Bilski and Prometheus.

  34. 262

    Ned,

    Once again it is you that is uncooperative.

    Once again it is you that is silent to the points raised against you.

    Once again it is you that CRPs some dogma and runs away.

    We both know why it is that you do not answer.

  35. 261

    Clearly not 6, as you have YET to provide what you said you would provide so that we can ascertain just how much you understand – as opposed to merely being a lemming and mouthing words.

    Still waiting 6. You might want to brush up on the general concept of engineering development too.

    Just curious – what is your next excuse for not delivering what you said you would provide?

  36. 260

    Ned,

    1. The abstract intellectual concept was Hedging, which claim one covered.

    2. Claim 4 was an attempt to claim a mathematical formula that represented the scientific truth of hedging. However, the math formula was not abstract per se.

    And unlike Diehr, and Ultramercial, the Bilski application did not purport to explain anything more than the abstract concept of hedging and it’s mathematical representation. Had Bilski’s concept been “integrated” like Diehr and Ultramercial, the claims would have been found eligible.

    What’s equally important for you to take away from Bilski is that there was:

    NO machine or transformation requirement.

    NO technology requirement.

    NO confining or tying of process to any other category in section 101.

    NO Business Method exception or exclusion of ANY kind.

    Any Questions?

  37. 258

    “while ‘abstract’ and ‘preemption’ may be a buzz, your pet theory is nowhere to be found.”

    “Abstract” and “preemption” is my pet theory ya re re.

  38. 257

    anon,

    Only with respect to using the MOT test to exclude a “process” from patent-eligibility, not as an indicator (i.e., a presumption) of being a patent-eligible process under 35 USC 101. That’s what I meant by the Bilski claimed method failing the “machine” prong of the MOT test for the purposes of potential INCLUSION as a patent-eligible “process” under 35 USC 101.

    Again what SCOTUS held in Bilski was that the MOT test couldn’t be used as the sole test to exclude a “process” from patent-eligibility (otherwise, they would have simply affirmed the Federal Circuit en banc ruling) and in fact excluded it from patent-eligibility as being an “abstract idea” (at least 5 of 9 Justices) or alternatively as being a “business method” (4 of 9 Justices). But given that machine-implementation was nowhere present in any of Bilski’s method claims, the suggestion in Ultramercial II that such machine-implementation is present creates a presumption that the claimed method is patent-eligible is consistent with the SCOTUS ruling in Bilski, especially with respect to this statement: “This Court’s precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101.”

  39. 255

    iwasthere, I don’t know if Mark is all that bad, but he does sound at times like he was a paid advocate of companies like those you mentioned.

    But there are others. At times, Rader sounds more like an advocate than a judge.

    Still, my own views have moderated as I moved on in my career. I once was 100% in favor of FTF, for instance.

  40. 254

    so whatever SCOTUS may have said about the “machine” prong of the MOT test in Bilski is simple dicta.

    EG, FYI, SCOTUS in Bilski was responding directly on point to the CAFC and that judicial body declaring that MoT was a legal requirement.

    Quite the contrary to ‘dicta,’ MoT not required is very much a holding.

    One other holding of the case: Bilski’s claims not allowed because they were deemed abstract (as I previously defeated Ned Heller’s long – and recurrent – crusade, the holding had nothing to do with the claims being classified or not being classified as business methods).

  41. 253

    Mr. “It’s not patentable under 101 because it’s so obvious!!!”

    LOL – Malcolm and his WHATEVER, all the law runs together.

  42. 252

    6, the ability to recognize case names does not a proper legal citation make.

    Still waiting.

  43. 251

    Best buddy…?

    You have been listening to Malcolm far too much 6.

    Again – if you understand the word, then you understand that even appearing to think is not thinking.

    This is pretty basic stuff, you know – the difference between a machine and a human.

    (and omniscience has completely nothing to do with any point here under discussion, clueless one)

  44. 250

    He said to the man whose pet legal theory, preemption, is all the talk of the town nowadays

    LOL – no, 6, while ‘abstract’ and ‘preemption’ may be a buzz, your pet theory is nowhere to be found.

    I am STILL waiting for you to supply the missing pieces on the ladder of abstraction thread.

    Can it be that you are refusing to supply these pieces, because you know that your ‘pet theory’ will suffer the flames of annihilation (as did Malcolm’s pet theory recently?)

    You know you are playing the internet tough-guy role pretty good with your response to EG, and yet, I still wait patiently for you to deliver what you said you will deliver…

    Anytime? Really?

  45. 249

    “a machine DOES NOT – CANNOT – think”

    Your best buddy Eugene’s favorite computer Watson sure as f appears as if it is thinking, and indeed, your best buddy alleges that it does think. In fact, he considers it to be omniscient in its thinking.

  46. 248

    “I am curious to see 6’s citation (proper legal citation) to this second breed, this second notion of ‘abstract.'”

    Benson, Flook, CLS Bank, the list goes on and on and would be going on further had the CAFC gotten their sht together sooner.

  47. 247

    “They were apparently deleted because of the power of words against Lemley”

    Or because you’re showing your ar se.

  48. 246

    “So shouldn’t he then go on to ask himself whether such a method of product distribution is “abstract” and, if so, whether the Ultra-claimed method of product distribution effectively pre-empts that very idea?”

    Obviously. But he doesn’t because he is a ta rd on the whole 101 question. And perhaps I’m being a little too hard on him, it isn’t that he is a ta rd so much as he simply as a fed up world view which then leads him to say ta rded things.

    “But I couldn’t find anywhere in Rader or Lourie any attempt to do this.”

    They don’t for two reasons they say: 1. the parties have agreed that the abstract idea is x as put forth by both of them, and so 2. the court will not go hunting for other abstract ideas (supposedly this is from caselawl, or his reading thereof even though Rader himself went hunting in Bilski).

    “In these columns, 6 runs towards the idea of putting under serious test the notion of pre-emption, checking whether there can be formulated an idea which is abstract and which the claim in view does indeed pre-empt. ”

    That is an eloquent way of putting it, I stand thankful MD. Although what you’ve just said is what I’ve been trying to do for the last 3 years or so, I will take the late acknowledgement and nice way of putting it.

    “By contrast, these Federal Circuit judges seem to me to be to be either willfully blind to that necessary enquiry, or deliberately shying away from it, kicking it into the long grass or under the carpet.”

    Indeed. Exactly how to put it. But on the other hand this case does have a weird procedural aspect to it which is making them more shy. They don’t want a whole bucketload of patents summarily invalidated for “failure to state a claim” when they bring suit.

    “But I forgive them if they are doing it deliberately, to tee this case up for SCOTUS review and thereby confront SCOTUS with the consequences of CLS.”

    Agreed.

  49. 245

    I’m not really sure you know what that phrase means if you’re using it like that.

    “And as you’ve repeatedly demonstrated, you’ve got no clue what patent law is. ”

    He said to the man whose pet legal theory, preemption, is all the talk of the town nowadays. Implemented, as it happens, in exactly the same way as was espoused many years ago by the same man.

    “I know far more what an “abstract idea” is then you do.”

    Really? Then pray tell why you haven’t been calling the cases correctly and why you keep blowing your top at watchdog over cases that are correctly decided to be ineligible?

    As to throwin’ down in front of a panel of ta rds at the board, sure thing ma brosef. Anytime anywhere, and any case. All your little tricks will not avail you in the face of the man that literally was the one to make this legal interpretatin of the law popular. If you want to take this dispute to the mat, or to the ring, or to a more puss ified arena like the swimming pool or the track field we can move it out there too. Just to make your humiliation complete.

  50. 244

    Did Rader indicate in any way that if the claim did not mention copyrights, the claims would not be allowable?

    Again, why are you ranting about the mention of copyright? Get past it? No one is relying on the legal status of the information for patentability.

  51. 242

    Professor Lemley writes:

    “Then the majority does something very odd: it proceeds to discuss in great detail the technology disclosed in the specification but not mentioned in the claims. The court clearly viewed Ultramercial’s claims as patent-eligible because the specification contained detailed technical implementations and a complex flow-chart, even though none of those were included as limitations in the claim.”
    He suggests three answers to this “odd” position of the majority. (1)The court forgot that claims define the invention. (2) Claims don’t define the invention when patent eligibility is at issue. (3) The Court is implicitly construing the broad, functional elements of Ultramercial’s method claim as MPF claims under 112(f). Because, the first two alternatives are untenable, the third must be correct. But is this not a false choice?

    There is at least a fourth alternative – that the court viewed Ultramercial’s claim as patent eligible because the claim, as a whole, includes meaningful limitations restricting it to an application, rather than merely an abstract idea. The Court reviewed the ‘545 patent claim, one that has 10 steps, to determine whether there are meaningful limitations, and concluded that the ten specific steps in the claim limit any abstract concept within the scope of the invention.

    Finally, the court states
    “This court understands that the broadly claimed method in the ’545 patent does not specify a particular mechanism for delivering media content to the consumer (i.e., FTP downloads, email, or real-time streaming). This breadth and lack of specificity does not render the claimed subject matter impermissibly abstract. Assuming the patent provides sufficient disclosure to enable a person of ordinary skill in the art to practice the invention and to satisfy the written description requirement, the disclosure need not detail the particular instrumentalities for each step in the process. (Emphasis added).”

    This would seem to suggest that, in the majority’s opinion, analysis should focus on the claim as a whole and not on the particular means for carrying out those steps – which cuts against a 112(f) analysis for patent eligibility.

  52. 241

    “Not true lester jester, in fact this is a good case for you to learn the difference between claims 101’d by the USSC’s analysis and those that are not. People were free to invent a filamentless light, or a bulbless light (to think modernly, an example is an LED but there are many other examples throughout history) and design right around and thus implement your “abstract idea” of “electric light” without infringing. Just because it took them 50 years or whatever to go ahead and invent an LED doesn’t mean that “electric light” was preempt. Only specifically using a filament/bulb/whatever was. And the fact that such might be vastly superior to other alternatives (which it wasn’t when first invented and without things like edison’s filament which came later) is neither here nor there with respect to 101. ”

    OMG how obtuse can one examiner be!

    THEY DIDN’T KNOW LED’S WERE POSSIBLE!

    That’s the problem with the preemption test! Every claim preempts what it covers. Back in the day, if this abstract idea nonsense were being bandied about, they would have said a claim to an electric lamp preempts the entire abstract idea: light from electricity and declared it abstract.

    If specifying filament/bulb/whatever is sufficient to move out of the realm of the abstract, then so is specifying computer/internet/whatever.

  53. 240

    “You don’t know how to analyze a claim under 103 either?”

    That’s pretty funny coming from Mr. “It’s not patentable under 101 because it’s so obvious!!!”

    I’m very familiar with the analysis required by 103.

    If you’re telling me that you know what analysis is required to determine whether a claim is nothing more than an abstract idea, then you’re full of shite. You don’t know, I don’t know, and the judges who write the decisions don’t know.

  54. 239

    It limits the claimed method t

    Uh, sure, just as the “claimed method” would be “limited” if the computer used in the claim was “a non-chartreuse color”. My point is that such a “limitation” is a b–llsh-t limitation from the perspective of the prior art and from the perspective of understanding what an incredible piece of horsesh-t this claim is.

    The legal status of the information being delivered has nothing to do with the “complex technology” that Rader imagines he’s seeing when he looks at the claim. How can it possibly matter? It’s an abstraction. Might as well be “holy” or “sacred” information. Makes no difference.

  55. 237

    “For example, when the electric light was invented, it was the only way to make light from electricity.”

    Sure thing Lester Jester, but making light from electricity via an “electric light” aka and “electric lamp” as they’d say back in the day is not an abstract idea, it involves, at the outset, an electric light or electric lamp.

    “Any claim to an electric light, reciting the bulb and filament and what ever else was required, would have “preempted” the abstract idea: electric light.”

    Not true lester jester, in fact this is a good case for you to learn the difference between claims 101’d by the USSC’s analysis and those that are not. People were free to invent a filamentless light, or a bulbless light (to think modernly, an example is an LED but there are many other examples throughout history) and design right around and thus implement your “abstract idea” of “electric light” without infringing. Just because it took them 50 years or whatever to go ahead and invent an LED doesn’t mean that “electric light” was preempt. Only specifically using a filament/bulb/whatever was. And the fact that such might be vastly superior to other alternatives (which it wasn’t when first invented and without things like edison’s filament which came later) is neither here nor there with respect to 101.

    But good job coming up with an example to prove my point easily Lester Jester, you truly have a talent for it.

  56. 236

    AAA JJ “…is it too complicated for you to do the analysis?”

    What is the analysis that needs to be done?

    You don’t know how to analyze a claim under 103 either?

  57. 235

    “6, kindly have a glace at MPEP 2141.02 (I) and (II).

    You can only arrive at your second type of abstract claim by operating contrary to those sections.”

    Even playing along that you are correct lester jester, well then, I’m sooooooo sorry that they wrote a bad MPEP section. They don’t have the power to change the lawl, and neither do I.

    “Moreover, by so operating, you can come up with an argument that any claim is directed to an abstract idea. ”

    You can come up with an argument, but it won’t be a valid one except in some circumstances. You can always come up with an argument Lester Jester, because you are a ta rd. The fact that you can coem up with an argument is quite irrelevant as to what the lawl is. You can always come up with an argument as to why something is obvious, but that doesn’t mean all patents are thus obvious under the statute/law. The same applies for 101.

  58. 234

    You can’t distill a claim down to a gist or ignore the “as a whole” requirement for any analysis, 102 or 101 included.

  59. 233

    Yeah, it’s called Morse, where they just came right out and stated the lawl of nature they were using, and Benson/Flook where they tried to hide it a bit. There are two separate types, and we refer to the lot of them as “claims directed to judicially excepted subject matter”. I myself make the distinction between the two groups to help ta rds like yourself understand what is going on though the supremes can certainly help you out with that distinction if you really really need them to hold your hand.

  60. 232

    Les,

    MPEP 2141.02 is nice – for 103.

    And please, let 6 do his own homework. He is advancing a ‘theory’ that he has pulled from his, ‘mind,’ and he needs to anchor that ‘theory’ in this reality.

    Let him flounder on his own.

    6,

    Still waiting.

  61. 231

    MaxDrei,

    You have made it more than perfectly clear that your only wish is to soapbox, regardless of what anyone has to say.

    This was made more than evident when I busted your attempt at a crybaby’s veto.

    As to me, I take your not wanting to engage as a compliment – as you know that I can rip apart your baseless views and leave you with no reply, unable to defend those baseless views. If I were you and had that mission of soapboxing, i would not want to engage someone as knowledgeable as myself either.

    But I did enjoy that “but I am here to learn CRP that you used to peddle. Almost as much as that hypocritical “I have a mind open to understanding.” Your duplicity is only matched by your errors in law.

  62. 229

    ” an abstract idea it can be one of two types, a claim directly claiming an abstract idea on its face (and thus is preempting on its face), or it can be a claim which is preempting an abstract idea even though the claim is not on its face an abstract idea. ”

    6, kindly have a glace at MPEP 2141.02 (I) and (II).

    You can only arrive at your second type of abstract claim by operating contrary to those sections.

    Moreover, by so operating, you can come up with an argument that any claim is directed to an abstract idea. For example, when the electric light was invented, it was the only way to make light from electricity. Any claim to an electric light, reciting the bulb and filament and what ever else was required, would have “preempted” the abstract idea: electric light.

    So… you know… maybe don’t operate contrary to the MPEP.

  63. 228

    If you feel that a particular piano roll would be easy to claim, kindly draft that claim.

    “Configured to..”

    See? Easy.

    (apologies for the truncation – but you still need to recognize how the useful arts impinges the application of law – just witness below how Ned ignores this and goes off on his frolic)

  64. 227

    LOL, anon, yes, I confess, I’m truly a bully when it comes to pounding 6’s “gray matter.”

  65. 226

    When all you have to do is paraphrase the claim and declare it an abstract idea, does it really qualify as “analysis”?

    I think 6 has a patent pending on that type of analysis.

  66. 225

    Why did you truncate what I said?

    What I said was:
    It’s only that it would be difficult to describe a new piece of music in terms of claim language AND that copyright lasts longer that keeps there from being a long history of patented piano music roll/ player piano patents.

    If you feel that a particular piano roll would be easy to claim, kindly draft that claim.

    Draft a claim for a piano roll for “Camp town Races”. for example, that is not a picture claim and would read on work arounds that drop a note here or there or substitute a softly played sharp or flat in a spot or two.

  67. 224

    “Why is it in the claim then? It’s completely superfluous to the (LOL) “technology.” Who drops completely superfluous limitations into their claim?”

    I answered this question. Your saying my answer is incorrect does not make it so. It is not superfluous. It limits the claimed method to work pieces for which the method is usefully applied. Why are you whining about a limitation in a claim? I would think you would be happy about anything that could be interpreted to limit a claim.

    You can you the method on non copyrighted material. Doesn’t that make you happy?

  68. 223

    But then we are back to the issues that Prof Lemley is urging on us here.

    What Prof Lemley ‘is urging’ on us is a colossal logic failure.

    You are not paying attention MaxDrei.

  69. 222

    Dead right you are, anon. But just to leave you in no doubt on the matter, I do confirm that indeed, with you I really do want no conversation.

  70. 221

    Ah-ha. Thanks again Eric, but let’s not wander off into the realms of 112, shall we. It is the notion “far more specific” that you rely on for 101-eligibility. OK.

    Are you saying that that if Bilski had written an Ultra-type claim that recites no less than eleven steps, to things like “receiving payment”, he might have done better? That would fit with my experience over here with US attorneys who think that the way to get through to issue in the EPO is to pad out the claim to double the length.

    O course I do see the force of “presumptive”. But then we are back to the issues that Prof Lemley is urging on us here.

  71. 220

    “…is it too complicated for you to do the analysis?”

    What is the analysis that needs to be done? As I said before, the analysis is, essentially, “We know an abstract idea when we see one.”

    I’m as capable of doing that analysis as you, and as capable as any of the nine. And as capable as, for example Ned, who stated that a claim discussed a couple weeks ago was “nothing more than using an internal combustion engine in running a business.” When all you have to do is paraphrase the claim and declare it an abstract idea, does it really qualify as “analysis”?

  72. 219

    There is no room for individual property rights on Lemley’s utopian collectivist ‘digital commons.’ Loved his comment on Myraid – cDNA will be anticipated/obvious over the natural DNA. Sounded like the wicked witch of the west – ‘cackling – and i’ll get your little dog too’ –

    Lemley has found himself a nice financial niche with the serial infringer/free IP for all crowd. Good to see that others view his publications for what they are – straw men, distortions of fact, reaching a predetermined conclusion – property rights are bad for innovation – google and intel’s innocent infringement must be excused, the sky is falling, government much find some optimizing collectivist solution – patent thickets, trolls, MAD, etc etc.

  73. 218

    Why, Eric, I am just shocked and abashed. That is just ‘mean.’ You must have some psychological problems to have such meanness when it comes to patent law.

    Here, wear this flower behind your ear. Make love, not war, embrace communism, for if you understood what communism was, you would hope, you would pray on your knees that someday we would someday become communists. We then would not need patents and patent law at all. We should eliminate patent law and skip down the flowered path. After all, I can give you plenty of real world examples of those nations that have seen the light and have chucked all IP protective laws in order to eliminate this ‘meanness’ that you have.

    /excessive pollyannaism off

  74. 217

    Your post reminds me 101 Integration Expert, that “technical” has never been defined by certain bloggers here.

    Instead, when I asked and pointed out the resources (the AIA and the USPTO published rules accompanying the AIA) to be used to define ‘technical” in a strictly non-circular manner, no one championing a “patents should only be for technical matters” viewpoint was willing to step forward.

    I guess they really did not want to have that conversation after all.

  75. 216

    MD,

    My “authority” is this very Ultramercial decision which also far more specific method than the “hedging risk” method in Bilski. Also, the “hedging risk” method in Bilski had far bigger issues to contend with in view of, for example, 35 USC 112, and which, from what saw in application (all 14 pages of it) would most likely have slayed it without all this colossal waste of judicial (and other) resources on the 35 USC 101 issue.

  76. 215

    As many as I could, anon, leaving no measurable/detectable quantity of 6 “gray matter” behind.

  77. 213

    I see with regret that I have attracted the usual buzzing flies.

    Apart from that nuisance though, because I am Europe-based, Eric, I am of course familiar with the idea that mere mention of a computer is enough to get you into the zone of eligibility.

    But I had supposed that it wasn’t enough in the USA.

    Suppose you have some process like “hedging” that is per se not eligible. Can you make it eligible by claiming: The process of hedging, provided that one is performing it using the Internet?

    I had thought not, but you seem to be saying that you can. What authority do you have in mind, pray?

  78. 212

    regardless that the only thing new in the claim may be music

      ARRRRGHHHH – STILL with the canard of music.

    Ned – STOP the purposeful ignoring of the basics of patent law and the limitation of patent law to the useful arts.

      How many times do I need to highlight this intellectual dishonesty?
  79. 210

    It’s only that it would be difficult to describe a new piece of music in terms of claim language AND that copyright lasts longer that keeps there

    Les, I think you are not quite right.

    You need to recognize the useful arts paradigm as separator of what type of protection is afforded by copyright and by patent.

    Of course, since Malcolm in the past has butchered the distinction of what is covered under copyright and what is covered under patent himself, I doubt that he would have reminded you of this.

    Copyright is meant to protect expression.
    Patent is meant to protect utility
    (leaving aside for the moment, Design Patents, and odd animal unto itself).

    The aspects meant to be protected are different.
    The type of protection is also somewhat different (aspects like term of coverage and defenses such as Fair Use).

    It simply is not merely a matter that music would be difficult to describe in terms of claim language (in fact, it would not be difficult at all – and rather exceptionally easy), nor whether doctrines of patent law are easily applied – it is that such doctrines simply do not NEED to be applied if the subject is not eligible in the first place.

    Thus, canards like INANE’s attempt to circumvent the exceptions to the printed matter doctrine and Ned’s and Malcolm’s attempts to obfuscate and import some type of time element (a 102/103 view) into the 101 doctrine of products of nature FAIL.

    They FAIL explicitly at the 101 level – not some other (b-b-b-b-but the statute must be conflated and read as one big ol WHATEVER) level. This explains the eager jump at obfuscating patent eligibility and patentability.

    Now it is a different question entirely HOW the 101 level is determined in the first place. That is a separate pet peeve of mine (obvious, if you have been paying attention).

  80. 209

    True anon, Bilski has relegated the MOT test to “second class” status, but hasn’t completely dispensed with it. Also, and to clarify what I said in response to MD (and as Ultramercial clearly suggests), claims which require machine/computer-implementation are presumptively (not conclusively) in the patent-eligibility zone. You can also search the Bilski claims to your heart’s content, and there’s nothing in them that necessarily requires machine/computer-implementation, so whatever SCOTUS may have said about the “machine” prong of the MOT test in Bilski is simple dicta.

  81. 208

    Les, Has agreed in principle that a claim that recites a computer readable media is eligible subject matter because a computer readable media is an article of manufacture – this regardless that the only thing new in the claim may be music. This line of thinking naturally follows from the idea that a claim is eligible if it recites a machine, process, article of manufacture, or composition of matter regardless that the machine, etc., is old and the only thing new in the claim does not modify the function of the old subject matter to produce a new result, but rather is unrelated subject matter, such as music, or a correlation between the level of metabolites and the need to adjust dosage, or the calculation of binary from binary-coded-decimal.

    Thus, according to Les, we could patent new albums from big rock stars that sell in the millions, and add to copyright infringement claims against a pirate, patent infringement claims.

    Now, how would the public perceive such a patent?

    There actually wouldn’t be a problem with this approach if we had a robust §102/103 that would not consider ineligible or otherwise non-integrated subject matter such as music.

  82. 206

    LOL – “after“…?

    You take too much credit, Eric, 6 starts off as an intellectual ‘pile of ash.’

  83. 205

    NWPA,

    I recall one of my patent law professors – who like most academicians, had a liberal Left bent and was ferociously anti-patent.

    We got along fantastically.

    The difference was that he recognized his bias and made no bones about his bias. He also recognized the difference between his bias and what the law actually was, and was RESPECTFUL of what the law actually was. He was a professional.

    We had many excellent discussions – intellectually honest discussions concerning patent law. In many respects, those are the types of discussions that I regard as high quality and would make a wonderful poster child for quality blogging.

    Instead, we have misstatements of fact, misstatements of law and misstatements of what other people post.

    Instead, we have the purposeful obfuscation of law and doctrine.

    Instead, we have the ignoring of valid points raised, and the merry-go-round of dogma presented again and again without the due consideration of those past points made.

    That is exactly why ‘the battle’ rages now for fifty plus years. You wondered if Prof. Lemley would make an appearance to defend his article. You see instead by and large the CRPfest of Malcolm.

    C’est La Vie.

  84. 204

    You forgot to thank Malcolm (and his glorious self-defeat) for being the very first to provide a link to the official USPTO application guidelines following Prometheus that highlight this integration aspect (and ‘shockingly’ say nothing at all about a certain, now well-toasted, pet theory of [oldstep]+[newthought]).

  85. 203

    And MaxDrei, please climb down your soapbox of the technical versus the useful arts. The reason you see such markers is that this case is dealing with such markers – and NOT as you would wish, that the useful arts is being limited to ONLY technical things.

    That’s like ignoring the FACT that the judicial exception concerning products of nature extends to all products of nature, be those products ranging from the simple like chemical crystals to the complex like living plants by looking at the Myriad case and saying that the Justices there ONLY talked about DNA.

    If you had more than just your 6 months experience with the law (repeated whatever upteen times), you would recognize how to apply law correctly, and I would not have to knock you off your soapbox.

  86. 202

    I am curious to see 6’s citation (proper legal citation) to this second breed, this second notion of ‘abstract.’

    It sounds an awful lot like the notion that would eviscerate patent law, because, after all, what a patent DOES is preempt what it claims.

    I am curious as well if MaxDrei has an knowledge (working or otherwise) of the concept of ‘ladders of abstraction.’ It appears not, otherwise he would have realized that his question “That would be any abstract idea, right?” needs to be restated in order to differentiate between the rungs of a ladder – as would be encountered in ANY purposeful inventive act of man – and the TOP rung of a ladder – which, by the way, might BE reached by the purposeful inventive act of man.

    The notion of ‘preempting ALL’ and the notion of abstract NOT including examples or specifics can also be identified EASILY with the las and the judicial exception of abstract, as the law regards mental steps.

    Clearly, mental steps of their own accord (if claimed in their own right) are not patent eligible. But the law IS clear (even though such as Malcolm has never answered the question put to him about claims containing mental steps), that IN FACT eligible claims CAN CONTAIN mental steps. The presence of a mental step in a claim does not render the claim ineligible because – point blank – it is only claims ENTIRELY of mental steps that are abstract.

    Malcolm’s subterfuge (dissembling, anyone?) is readily seen in his attempts on this very thread to restate (in a deceptive way) discussions of claims containing mental steps into claims entirely of mental steps.

    As far as I can tell, this strawman has NEVER been a point taken by those advocating the rights of patents for software-related inventions.

    This too, provides the opportunity for me to share one of my favorite (even if it is misspelled) words:

      ANTHROPOMORPHICATION

    .

    Machines simply do not think (no matter if Malcolm believes otherwise on his world). Just because a claim ‘sounds in‘ the human aspect of thinking, a machine DOES NOT – CANNOT – think, and thus the avenue pursued of attempted application of the mental steps doctrine needs to be seen for what it is: a bastardization attempt to deny the rightful obtainment of patent rights.

  87. 201

    6: “And the abstract idea at play is distributing copyrighted products (information of varying types) for free in exhange for iewing an advertisement with the advertiser paying for the copyrighted content,”

    If indeed an “exchange” is required then the above can’t be abstract as matter of fact or law. Your post solution analysis automatically fails since you could not as a matter of fact or law first establish an abstract idea.

    Bottom line, Ultramercial’s claims are an “integrated” technological process and you simply can’t refute that.

    :: Crickets Chirping ::

  88. 200

    MD: “What I did like though, was Rader’s repeated invocation of “technical” as a criterion of eligibility. Putting down yet another marker there, I thought.”

    Technical does not necessarily mean mechanical, which is why there is no machine or transformation requirement in US law. One of the many ways the USA is ahead of the UK/EPO.

  89. 199

    Alas poor Eric, the Supremes have stated otherwise:

    Bilski: MoT not required.

      Prometheus: MoT not sufficient.

    That glob of wax really is the nose of Law (or at least once was…)

  90. 198

    MD,

    You missing the main “pearl of wisdom” in Rader’s Ultramercial opinion: machine/computer-implemented technology puts you presumptively in the patent-eligibility zone. The claimed method in Ultramercial required the Internet (a computer-implemented technology)-“integration” as 101 IE calls it. So there’s no “merely mental steps” issue here that claims covering essentially patent-ineligible “abstract ideas” get snagged on.

  91. 197

    MD: So shouldn’t he then go on to ask himself whether such a method of product distribution is “abstract” and, if so, whether the Ultra-claimed method of product distribution effectively pre-empts that very idea?

    No. Because a process is a physical thing and it’s steps are physical parts like the gears in a machine.

    Ultramercials claims are an “integrated” technological process. This is a matter of fact and law which no one can refute. Care to give it a try Max? If you are successful I will send you a grand.

    ::silence::

  92. 196

    CORRECTION: It is a matter of fact and law that Ultramercial’s claims are are an “integrated” technological process and therefore patent eligible subject matter. No one on has ever successfully [ REFUTED ] this! In fact I will send $1000.00 dollars USD to the pay pal account of anyone that can.

    :: Silence::

    I rest my case.

  93. 195

    6,

    Sigh, you’re truly “tone deaf” on this blog. And as you’ve repeatedly demonstrated, you’ve got no clue what patent law is. I know far more what an “abstract idea” is then you do.

    Frankly, I would relish the opportunity to do battle with you at the PTAB. After I got done with you, you would be nothing but an intellectual “pile of ash.”

  94. 194

    It is a matter of fact and law that Ultramercial’s claims are are an “integrated” technological process and therefore patent eligible subject matter. No one on has ever successfully this! In fact I will send 1000.00 dollars USD to the pay pal account of anyone that can.

    :: Silence::

    I rest my case.

  95. 192

    In my own circle of friends, professors used to be respected because we knew they held themselves to a scholarly code of honor. Now, they are nothing. No more or less than a streetwise person trying to get theirs. I don’t know anyone that respects professors anymore.

    It used to be different.

  96. 191

    I consider the deletion of some of comments to be an honor. They were apparently deleted because of the power of words against Lemley. He should fear my words as he is in the wrong and should be disciplined. He represents the decay of our society. A person who is using his position to push his own agenda (what feels good to Lemley) without regard for the rules of academia.

    By the way, one reason that universities are coming to their end is people like Lemley. It is no small matter that Stanford as lost the respect of a large part of the patent bar. The respect of academia was what gave it power to shape our society. Now we see people like Lemley that merely use the great august position of professor to selfishly push their own agenda without regard for scholarly integrity.

    Try to think about this. Stanford is not enforcing academic integrity. That makes the Lemleys of the world no better than a street fighter like the rest of us.

  97. 190

    If you have to ask that question for what is supposed to be scholarly work published in a scholarly journals, then the “professor” should be facing academic integrity violations at his “university.”

  98. 189

    This notion of an “abstract” (disembodied) idea. It is a bit puzzling, I find.

    Lourie tells us that SCOTUS in CLS requires us to enquire whether the claim at bar poses any risk of pre-empting an abstract idea. That would be any abstract idea, right?

    Rader CJ tells us (page 26) that the claims at bar are directed to a method of product distribution, that forces consumers to view, and possibly even interact with, advertisements before permitting them access to the product they desire.

    So shouldn’t he then go on to ask himself whether such a method of product distribution is “abstract” and, if so, whether the Ultra-claimed method of product distribution effectively pre-empts that very idea?

    I should have thought so. But I couldn’t find anywhere in Rader or Lourie any attempt to do this. Instead, the learned judges tell us that the abstract idea they find in Ultra is one at a higher level of abstraction, namely the idea of “collecting revenue from the distribution of media products over the Internet” or “using advertising as an exchange or currency”.

    In these columns, 6 runs towards the idea of putting under serious test the notion of pre-emption, checking whether there can be formulated an idea which is abstract and which the claim in view does indeed pre-empt. By contrast, these Federal Circuit judges seem to me to be to be either willfully blind to that necessary enquiry, or deliberately shying away from it, kicking it into the long grass or under the carpet.

    But I forgive them if they are doing it deliberately, to tee this case up for SCOTUS review and thereby confront SCOTUS with the consequences of CLS.

    What I did like though, was Rader’s repeated invocation of “technical” as a criterion of eligibility. Putting down yet another marker there, I thought.

  99. 188

    it can be one of two types

    LOL – do you have a cite for this ‘two types’ of abstract?

    You know, legal authority?

  100. 187

    “So now we have 6 admitting the claim is NOT an abstract idea in the first place.”

    I’m pretty sure that I “admitted” that a long time ago. When we in the patent field call a claim a claim to an abstract idea it can be one of two types, a claim directly claiming an abstract idea on its face (and thus is preempting on its face), or it can be a claim which is preempting an abstract idea even though the claim is not on its face an abstract idea. This case is the later. As I’ve said since the beginning, and will say to the end. And which is what Wildtangent has said since the beginning and will say to the end. And which is the only controversy in the case itself (the comments from random people on the interbuts notwithstanding).

    But when this case turns out this way, I’ll point to this thread and say um, yeah, who’s clueless now ya ta rd? Just like I’ve said for the last 4 101 cases that went to the supremes, oh, and your fave, alice.

  101. 186

    Almost there 6 – put the comment in context.

    (that tends to be rather important, you know)

  102. 184

    Just because the claim covers a broad range of subject matter doesn’t make it “preemptive” under 35 U.S.C. § 101.

  103. 183

    LOL – look at those goal posts move!

    Now it is preempt ANY abstract idea even though it itself is not an abstract idea.

    So now we have 6 admitting the claim is NOT an abstract idea in the first place.

    6, you have gone from clueless to cluelessly scrambling in your cluelessness.

  104. 182

    “”The ‘545 patent relates to a method for distributing copyrighted products (e.g., songs, movies, books, etc.) over the Internet for free in exchange for viewing an advertisement with the advertiser paying for the copyrighted content. ”

    ^what EG says”

    ^what I said previously, which was accurate to the letter.

    “I never said what I quoted above was an “abstract idea.””

    I didn’t say you did. Finding the abstract idea at play would take insight blatantly beyond your ken, as you have made us aware, time after tiresome time.

    “Instead, Rader in Ultramercial defined an “abstract idea” as one that “has no reference to material objects or specific objects.””

    And that is a perfectly reasonable definition for the abstract ideas which we will be analyzing. I have no problem with that definition for the time being though it may not be the be all end all definition.

    “No wonder you get the patent law “wrong” you can’t even get the facts straight. ”

    What “fact” do I supposedly have wrong now?

  105. 181

    “In this case, claim 1 references an Internet website, for example. It also is a specific example with 10 steps.”

    I will amend my comment:

    Ok, let’s all pretend, just for a moment that we all agree with you, even Wildtangent. Let’s just pretend. Now, after we’re pretending that, perhaps you’d like to join in the current controversy as to whether or not the claim, which references an Internet website, for example, and also includes a specific 10 step example, preempts any abstract ideas even though it itself is not an abstract idea.

    I mean, I’m just saying, at some point you could address the actual topic at hand in this case.

  106. 180

    “Snapping at what you don’t unerstand is a sure way of highlighting your ignorance 6.”

    What’s to not understand? There is one black justice out of 9 on the court, the law used to be that black men only got counted as 3/5 of a vote.

  107. 179

    Of note is that comments by Malcolm, and in response to Malcolm constitute greater than 50% of ALL comments on this thread today.

    And not one substantive comment from Malcolm acknowledging the CRP that Lemley put forth. Clearly, Lemley’s comments are not fit for the legal community, and faced serious professional disdain, so Malcolm self-immolated in an attempt to distract.

  108. 177

    don’t like to discuss more than one statute at a time

    The primary reason is that legal reasoning matters, and conflation and building of strawmen to set them onfire and creat smokescreens is bad.

    So segregation of topics is NOT your brand of ‘sniff‘ and WHATEVER.

    One of the reasons you tend to stay away from substantive discussions of law (we know the toasty other reasons).

  109. 176

    I mean I’m just saying, at some point you could address the actual topic at hand in this case.

    LOL – 6 taking lessons from Malcolm now.

    6, still waiting for you.

    I’m just saying.

  110. 175

    Is Prof. Lemley’s reasoning “legalistic argle-bargle”?

    Boy, Fish Scales, I need to remember that phrase: “legalistic argle-bargle.” That’s a great way to call something rhetorical nonsense.

  111. 173

    that’s not how it’s being used

    That’s kind of the point…

    D’Oh !” (said in the best Homer Simpson tones)

  112. 172

    Funny how you demand answers, and non-switching of topics, and yet you FAIL to abide by your own demands.

    spam control on email?

    LOL – you are such a tool.

  113. 170

    for me

    Sorry 6 – that was not the point of the exercise. You do not get to turn in someone else’s homework.

    Especially since we both know that you don’t know JACK about the concept of ladders of abstraction, and that your ‘abstraction-preemption’ theory is nothing but bunk, I need you to do your own homework.

    I will also remind you that You said that the abstraction analysis to date (by the court) was wrong. I will also remind you that EG tore you to shreds for your views as well.

    You are in the spotlight, not EG.

  114. 169

    Because then we will know the relevant prior art, and will not need to depend on MM’s gut reaction to obviousness of non-pharmaceutical claims — he knows it when he sees it

  115. 168

    6,

    If you’re going to quote me, do so accurately, without improper paraphrasing:

    “The ‘545 patent relates to a method for distributing copyrighted products (e.g., songs, movies, books, etc.) over the Internet for free in exchange for viewing an advertisement with the advertiser paying for the copyrighted content.”

    I never said what I quoted above was an “abstract idea.” Instead, Rader in Ultramercial defined an “abstract idea” as one that “has no reference to material objects or specific objects.” No wonder you get the patent law “wrong” you can’t even get the facts straight.

  116. 167

    101 was intended to be a coarse filter and not used to circumscribe protection against an entire class of inventors

    Pretty sure that’s not how it’s being used but of course I can see how you would feel that way if you are a regular filer of computer-implemented j–k or if you are trying to protect a “new correlation.”

  117. 166

    Another vacuous post by Malcolm.

    Attaboy.

    If there was a difference, funny how even you with your ‘mastery’ of English as a first language has FAILED to make that difference of record in the archives.

    The record speaks for itself, and it says:

    “Mmmmmm, toasty.”

  118. 165

    The mention of copyrights merely explains why the viewer would put up with the advertisement…

    Uh … no, the reference to “copyright” doesn’t “explain” any such thing. That’s pretty amusing, though.

    I see no indication that anyone relied on that legal status for patentablity.

    Why is it in the claim then? It’s completely superfluous to the (LOL) “technology.” Who drops completely superfluous limitations into their claim?

  119. 164

    The district court will litigate the obviousness issue. After they hand down their decision we can all discuss it.

    LOL. Because why? Because you say so? Because you were born yesterday and lack the ability to know what is new and old until a judge tells you the answer? Or some other reason?

    I can think of two reasons that the proponents of computer-implemented j–k don’t like to discuss more than one statute at a time. Neither reason is particularly flattering to said proponents.

  120. 162

    That’s not to say, however, that I agree that the claim at issue is an “ineligible abstraction.”

    Ok. Would you agree that the claim is j–k, or is it too complicated for you to do the analysis?

  121. 161

    Hey anon, you know you’re all randy to figure out what the abstract idea is at play in this application and so I was going to look back and find my write up on the thing. But in the mean time I happened to stumble upon EG making a concise statement of what the abstract idea was for me. Perhaps I don’t need to go back and find my early work for you.

    Here you go:

    “The ‘545 patent relates to a method for distributing copyrighted products (e.g., songs, movies, books, etc.) over the Internet for free in exchange for viewing an advertisement with the advertiser paying for the copyrighted content. ”

    ^what EG says

    And the abstract idea at play is distributing copyrighted products (information of varying types) for free in exhange for iewing an advertisement with the advertiser paying for the copyrighted content, along with the post solution activity of doing the whole thing in the field of interweb compooting.

    Although I don’t think that’s probably long enough to encompass every little abstract nook and cranny as my previous work took into account, I just thought it was funny that your buddy EG brought it to the fore in that concise summary.

  122. 160

    Prof. Lemley’s analysis is completely awry. His very first sentence sets up the straw man upon which his entire argument stands and falls, i.e. “In Ultramercial v. Hulu, decided on Friday, the Federal Circuit held that a series of steps for serving ads to customers over the Internet, phrased at a high level of abstraction, was patent-eligible subject matter under section 101.” Thus, Prof. Lemley plants in the reader’s mind that the claims are but an abstraction. The Fed. Cir. rightly determined to the contrary, namely the claims represent a practical application of an abstract idea. The discussion of the implementation was merely support for the conclusion that the claims are not directed towards some disembodied concept.

    As Judge Rader stated, 101 was intended to be a coarse filter and not used to circumscribe protection against an entire class of inventors nor to generally thwart protection of an entire class of innovations.

    Sorry Prof. Lemley, but in this most practical of legal disciplines, there is no room for political agenda.

  123. 159

    “An abstract idea is one that has no reference to material objects or specific examples” In this case, claim 1 references an Internet website, for example. It also is a specific example with 10 steps.

  124. 158

    A question we might ask ourselves is

    Who is this ‘we?’

    The little circle club?

    Malcolm and his svckpuppets Keeping It Real, Robert, Francis, Shrivan, Vivika M.?

    Maybe the reason it is rhetorical is because Malcolm really is just talking to himself.

  125. 157

    Ned,

    You are doing that avoidance thing again. Cat got your tongue? Realize that you are riding the merry-go-around again?

    Eventually you might want to come to grips that your agenda simply has to account for the facts and points I make.

  126. 154

    Hush AAA JJ, that was, um, just, um, liberal license with facts and law to make a point.

    (should we remind Prof. Lemley of what else happened in 1952 and why EVERY 101 case since that time has OH SO CAREFULLY traced exactly where the ‘implicit’ authority derives from…?)

    No that would be a mighty meaty target for one as ‘esteemed’ as Lemley – and one I would to see cited by the Supremes themselves.

    Maybe Paul Cole could help out.

  127. 153

    Again with a slam against someone as far as I know has not ever posted here.

    What’s the matter Malcolm, no first-time-posting cancer survivors handy? no grieving sons or dead presidents?

    Don’t like the fact that the meme fits you? That you are in fact a patent-big0t because you irrationally select one art unit for your CRPfest, play the NIMBY role and completely miss the law that affects your backyard (like Myriad and nearly 21,000 words of mewling QQ and STILL not have the nuts to admit the plain fact that I was right and that you were wrong)?

    But please, keep up your ‘quality’ blogging.
    [shrug] and standby.

  128. 152

    Next time you collapse into self-parody, try to be more subtle about it.

    LOL – Like you and your massive trainwrecking today?

    Like that?

    LOL

  129. 151

    “Claim 1 is NOT an abstract idea — an abstract idea is one that has NO reference to material objects or specific examples

    Let’s just say that we all agree with you, including Wildtangent. Let’s just pretend. Now after we’re pretending that, perhaps you’d like to join in the current controversy as to whether or not the claim effectively preempts any abstract ideas even though it is itself not an abstract idea.

    I mean I’m just saying, at some point you could address the actual topic at hand in this case.

  130. 149

    Wow.

    I didn’t say something you wanted me to say so…. you can’t stand that, so you say it for me…

    “So, an article of manufacture like a book is eligible subject matter according to Les. Okay. Moving right along to 103. Let’s say that Les wants to patent a description of a new, non-obvious deity. So Les files the following (eligible) claim”

    I never said that. You did.

  131. 148

    LOL – Snapping at what you don’t unerstand is a sure way of highlighting your ignorance 6.

    Just like not understanding the concept of the ladders of abstraction – and which way is up and even wwhy that is important.

    But hey, I’m willing to give you the benefit of the doubt: what do you think the 8 3/5 Robes comment was in reference to? Take your time. You can give this answer after you provide the answer you already committed to.

  132. 147

    LOL – massive Malcolm fail.

    You the ‘master’ of English as a first language cannot explain the difference – because there is no difference.

    You set your little pet theory ablaze.

    Mmmmmm, toasty.

  133. 146

    your stories, books and sheet music now

    LOL – except we both know the controlling law on this, don’t we Malcolm? We both know what the ‘useful arts’ concept really entails don’t we (notwithstanding your dissemlbing on this already today).

    In fact, you volunteered that admission of controlling law.

    Why don’t you volunteer the controlling law again and help poor Les out.

    I even have a marshmallow for you.

  134. 145

    Wow 6 – so very helpful.

    Reminds me, still waiting for what you said that you would provide.

  135. 144

    Such a pretty strawman.

    Did you actually want to make a point? You seem to agree with AAA JJ, and then drift off into a frolic.

  136. 143

    LOL – having WAY too much fun at your expense Malcolm.

    But hey, I’ve told you how you get improve things…

  137. 141

    “…and make sure it isn’t just an ineligible abstraction…”

    As long as the test for determinig that a claim is “just an ineligible abstraction” is “we know an ineligible abstraction when we see one” then I can’t see any “meaningful difference” between the claim at issue and the claim you drafted. That’s not to say, however, that I agree that the claim at issue is an “ineligible abstraction.”

  138. 140

    “To begin, it directly contradicts controlling Supreme Court precedent such as O’Reilly v. Morse, where the court held narrow claims patent-eligible but a broader claim ineligible.”

    O’Reilly v. Morse was not about patent eligible subject matter under 35 USC 101 (especially since it was like another 90 years after that decision that section 101 was enacted).

  139. 139

    “Professor Lemley, what exactly is this level of abstraction?”

    I think he said it was a “high” one.

  140. 138

    I answered the question.

    I assume you’re referring to the parallel discussion we were having and your answer at 1:03 pm. My response to your answer appears upthread in the context of that discussion.

  141. 137

    Les If your point is

    That’s not my point, Les. Not even close. Just answer the questions I asked. What’s the matter? Too difficult for you?

  142. 136

    You’re not required to “claim all of the ‘complex programming'” in a method claim. “

    Uh … sure. You can draft any claim you want. But if you want an eligible and patentable claim, maybe it’s a good idea to distinguish it from the prior art and make sure it isn’t just an ineligible abstraction with the term “computer” and some equally conventional hoohaw salted in.

    Here’s a claim:

    1. A method for generating revenue, comprising requiring a recipient of information from a computer to sit through an advertisement before receiving said information.

    I don’t see any meaningful difference between this claim and Ultramercial’s junk. Do you? What are the meaningful differences?

  143. 135

    His point is that he his purposefully setting himself ablaze in FAIL and hoping that no one gets back to talking about how much CRP Mark Lemley has let loose with his guest post today.

  144. 134

    LOL – you forgot to [shrug] as your pet theory goes up in flames Malcolm.

    Or did you forget that I invited you to defend and explain your position and

      you
      ran
      away

    LOL

  145. 133

    Don’t play games and discuss something else.

    LOL.

    LOL LOL LOL.

    no wait,

    LOL LOL LOL LOL LOL LOL LOL LOL
    LOL LOL LOL LOL LOL LOL LOL LOL
    LOL LOL LOL LOL LOL LOL LOL LOL
    LOL LOL LOL LOL LOL LOL LOL LOL
    LOL LOL LOL LOL LOL LOL LOL LOL
    LOL LOL LOL LOL LOL LOL LOL LOL
    LOL LOL LOL LOL LOL LOL LOL LOL
    LOL LOL LOL LOL LOL LOL LOL LOL
    LOL LOL LOL LOL LOL LOL LOL LOL
    LOL LOL LOL LOL LOL LOL LOL LOL

  146. 130

    Nice misrepresentation and misuse of the reference Malcolm.

    Gee, you putting such a spin on things. Shocking.

    /eyeroll.

  147. 129

    AAA JJ,

    you made a comment the other day about 6…

    (but hey, I have no problem with you bagging on Malcolm – I like to share, and there is plenty to go around)

  148. 128

    You implicitly begged him to do that when one of your smarmy replies hinted that the archives might ‘disappear,’ and I replied that I had made copies already.

    You then let loose an improper Jane Fonda reference and I noted that such from the acclaimed ‘master’ of English of a first language was pretty pitiful.

    This too, is archived.

    Again with the accusation of 1ying. Let’s see you give ONE valid example, Malcolm. Like last time, you will (can) only run away.

    Your accusations are themselves blatant 1ies.

    Funny, how those blatant 1ies are not expunged.

    C’est La Vie

  149. 125

    however, monetizing and distributing copyrighted products over the Internet is an abstract idea, as is using advertising as currency. But that is not the invention of claim 1 with its ten specific steps and its specific reference to an Internet website.

  150. 124

    Tellingly, “[note the difference between eligible and patentable]” and note that at least three times ALREADY today Malcolm has attempted to conflate these two concepts, to kick up dust between these two concepts and to trainwreck the conversation by employing a WHATEVER ‘legal’ argument.

    One (of several) words that come to mind:
    dissembling

  151. 123

    capice?

    Not at all. You didn’t even try to answer the question I asked. Here it is again:

    if the music is new and non-obvious, then it’s also patentable under 35 USC 103 — right? And since a modern player piano could scan and read sheet music, then sheet music with new, non-obvious music is also patentable under 35 USC 103, right? That’s how it works on your planet, right? If that’s not how it works, then please explain to us how it actually does work, along with the legal and policy justifications for your alternate system.

    Answer the questions. Don’t play games and discuss something else. Your opinions about 101 is clear. Answer the straightforward questions I asked you about 103. What are you afraid of?

  152. 122

    If your point is the Supremes don’t understand the difference between 101, 102 and 103 and/or are legislating from the bench, I would agree with you.

  153. 121

    By the way, awesome Supreme Court decisions today!!

    So long DOMA! So long Prop 8!

    It’s a sad day for ignorant bigots everywhere. Thanks to this decision, Jane Fonda will be coming to their church in a few weeks and forcing all their kids to become gay married.

  154. 120

    Claim 1 is NOT an abstract idea — an abstract idea is one that has NO reference to material objects or specific examples

  155. 119

    Speaking about Prometheus, let’s share some marshmallows around the bonfire of Malcolm’s first substantive attempt at squaring that case with the precedent case most on point:

    Sorry that you might have to dig through the nearly 21,000 word Malcolm CRPfest, but at June 17 at 10:55 AM on the thread link to patentlyo.com

    we have captured in the Archive:

    All Diehr stood for was the proposition that you couldn’t find a claim ineligible per se simply becuase there was an element in the claim that would, if separately claimed, be ineligible.

    So if one element was, if separately claimed, ineligible (like a new thought) and another element was eligible [note the difference between eligible and patentable] like an old step), then you couldn’t find the claim per se ineligible.

    LOL – Is that what you are saying?

      MASSIVE MALCOLM SELF-DEFEAT

    Dance that jig, baby.

  156. 118

    “Is your position that non-obvious ineligible subject matter is sufficient to get around 103?”

    Huh? Yes, non-obvious subject matter of all types gets around 103. However, ineligible subject matter does not get around 101.

    What’s your point?

  157. 117

    I’m not sure where the courts would split the hairs between something that is both man an machine readable and something that is far more readable by machine, such as a punched player piano roll or a CD ROM carrying instructions.

    The “music”, I think is not patentable as it is either an abstract idea or akin to “software per se.” But a player piano roll is not “music”, it is a manufacture carrying instructions that guide a machine to make music…. which is different than “music per se”.

    capice?

  158. 116

    Fish Scales they conflate 101 and 103

    You wish, Fishy.

    We are “winning” because the game being played by the computer-implemented junketeers is getting really old.

    On one hand, they want to pretend that the recitation of any old eligible subject matter is sufficient to make a claim eligible (it’s not — read Prometheus). On the other hand, they (along with no small number of incompetent goons at the USPTO) also want otherwise ineligible subject matter to be considered under 103. It’s a nice trick. Or, more accurately, it was a nice trick.

    all of the details and limitations in the claim.

    LOL. Yes, this claim is really detailed and chock full of “meaningful” limitations!

  159. 115

    Lourie essentially cited himself in his concurring opinion by saying that the majority opinion should track the plurality opinion in CLS Bank, which was an opinion he authored

  160. 114

    The topic of discussion is a ruling related to 101. Why are you ranting about 103?

    LOL. I’m not “ranting about 103” Les.

    You gotta love how the patent t–b-ggers never want to discuss 103. Les is SURE that it’s eligible under 101 because it recites a computer. That’s all anyone needs to know. And by golly let’s not talk about how j–ky the claim is under the other statutes.

    Sorry, Les: this is a forum for discussing patent law. All of the patent statutes work together. 101 is just one of the hurdles. If you want to take the simplistic (and legally incorrect view, in light of Prometheus) that any old, eligible element in a claim suffices to render the claim eligible, then go ahead. But such an approach puts all the pressure on 103, then. Is your position that non-obvious ineligible subject matter is sufficient to get around 103?

    Do let us know, Les. I mean, you’ve thought this through already, right? Sure you have. You smart guy.

  161. 111

    LOL – more of that accuse-others-of what-you-are Malcolm.

    Tell, me who was right in the Myriad decision.

    Or are you ‘chicken?’ Nearly 21,000 words and still not the three that matter: “anon was right.”

    LOL

  162. 110

    Les: I believe that would fall under the category of a “manufacture”, so yes, a properly claimed roll of music, by itself, would be patent eligible,

    Okay, then. So if the music is new and non-obvious, then it’s also patentable under 35 USC 103 — right? And since a modern player piano could scan and read sheet music, then sheet music with new, non-obvious music is also patentable under 35 USC 103, right? That’s how it works on your planet, right? If that’s not how it works, then please explain to us how it actually does work, along with the legal and policy justifications for your alternate system.

  163. 109

    The district court will litigate the obviousness issue. After they hand down their decision we can all discuss it.

  164. 108

    Yes, they are winning because they conflate 101 and 103 and because they mischaracterize a decision by saying that a judicial body found an abstract idea to be patentable without even mentioning all of the details and limitations in the claim.

  165. 107

    I wonder if he cites himself in conversations too.

    Rader cites himself in a key part of his Ultramercial decision. I’m sure you feel the same way about Rader, Amanda.

  166. 106

    Who is “we all?”

    The little circle and the invited friends Keeping It Real, Robert, Francis, etc?

    Where did the ‘purely mental’ aspect come from (talk about moving goalposts – and sure enough, you accused someone else of the very thing you were attempting to do)

    The stale rhetorical tools are, well, obvious, Malcolm.

    LOL

  167. 105

    His confusion is purposeful and self-induced.

    Worse yet, he does not know when to stop with his self-delusion.

  168. 104

    The statute is of course 101 (in pertinent part, machine, manufacture,… And any improvement thereof).

    Try to keep focus, son.

  169. 103

    “Would the roll of music by itself be eligible, in your opinion? The truck gear, if properly (structurally) claimed”

    I believe that would fall under the category of a “manufacture”, so yes, a properly claimed roll of music, by itself, would be patent eligible, in much the same way as computer readable media carrying instructions for a processor to do thus and such is patentable.

    I believe such claim.., I say, I say, I do believe such claims are referred to as Beauregard claims.

    Are you not aware of that?

  170. 102

    “You recite in the claim all of the ‘complex programming’ that makes this alleged ‘invention’ patentable, instead of simply waving your hands in the air about what the magical functions of the allegedly ‘new’ computer.”

    It’s a method claim. You’re not required to “claim all of the ‘complex programming'” in a method claim. It’s a method. Methods are defined by acts or steps to be taken, not by “complex programming.”

    It’s a method claim.

  171. 101

    Making music is a “useful art”. You can patent new methods of making music and new machines for making music.

    Brilliant display of your ignorance as to what the useful arts is and is not.

    Truly astounding in the way you self-defeat and there is no doubt as to you even realizing why.

  172. 100

    Les: Whether it old or obvious is a separate analysis.

    Uh … there was this Supreme Court case called Prometheus that quite plainly said that merely appending an old and conventional (but eligible) element to ineligible subject matter was not sufficient to render a claim eligible.

    You understand why this is the case, don’t you? Of course you don’t. At least, you’ll never admit it.

    What happens if I try to claim

    1. An article of manufacture, wherein said article is a book, and wherein said book comprises [insert description of new, non-obvious useful image here].

    Is this eligible? According to your “logic”, it is. And according to 35 USC 103 it’s patentable as well. Right? Is that not how the analysis works on your planet? If not, then tell us the correct analysis under 35 USC 103 and the legal and policy justification for the analysis you describe.

  173. 98

    Les That’s all semantics.

    Of course it’s “all semantics.” It’s a patent law blog and we’re talking about patent claims. Nice try, though.

    the combination of piano hardware and a new player roll is a new machine….in the same way, a truck might be modified with a new, even lower geared transmission….Both are patentable.

    Really? Would the roll of music by itself be eligible, in your opinion? The truck gear, if properly (structurally) claimed, would certainly be eligible. Would the Federal Circuit find that computer-readable sheet music with new, non-obvious song on it was eligible and patentable? If not, why not?

    I think you should review Prometheus again and refresh yourself about the manner in which determinations of subject matter eligibility are made.

    it would be difficult to describe a new piece of music in terms of claim language

    Uh … no.

  174. 97

    “Rader does the same thing here. All he sees is a programmed computer and stops. This is not proper 101 analysis in the case of computers, and never has been.”

    What are you talking about. Its the perfect analysis for 101.

    Whether it old or obvious is a separate analysis.

  175. 96

    That’s all semantics. From some points of view, the combination of piano hardware and a new player roll is a new machine….in the same way, a truck might be modified with a new, even lower geared transmission.

    Whether those are new machines or a new uses of old machines matters little. Both are patentable. It’s only that it would be difficult to describe a new piece of music in terms of claim language AND that copyright lasts longer that keeps there from being a long history of patented piano music roll/ player piano patents.

    :-p~~~~~~~~~~~~~~

  176. 95

    Your claiming a claim is abstract does not make it so.

    The claim in the present case is not abstract.

    Including the use of a computer means that the claim passes the Machine or Transformation Test, which is an important clue to whether a claimed invention meets the requirements of 35 USC 101.

    You keep ranting about the recitation of legal status of the provided information….I see no indication that anyone relied on that legal status for patentablity. The mention of copyrights merely explains why the viewer would put up with the advertisement…

  177. 94

    This clearly was rejected by the Supreme Court in Benson

    Get your merry-go-round ticket.

    Ned – what is that quote you keep on messing up on from Benson? You know the one, the one you keep on trying to add conditions to that I then ask for you to provide legal citations for your additions and then you promptly disappear from the conersation – only to pop up again later trying desparately to make the point that refuses to acknowledge the valid counterpoints that I had raised previously.

    Shall we then reference the FACT that the Benson vommit of dicta did not constrain Rich (and rightly so based on the very reference you supplied – you know, the reference that I then used to debunk your anti-business method crusade in the Bilski HOLDING discussion?

    Or can we just have you acknowledge the points I make without you running away from them (yet again)?

  178. 93

    Ned,

    I have read it. Not only have I read it, I understand it far better than you.

    I have also explained to you (many many many many times) that a case can have more than one holding and that in the case of Alappat the fact that the government pressed for more than one reason to deny the patent yields more than one holding.

    Why don’t you accept this?

    (hint: try to remember what happened in Myriad when you refused to listen to me).

  179. 92

    Rader has consistently referred to the invention here as a programming invention that deserves protection. I don’t think really believe that he intends to limit the claim scope to the particular programs disclosed. Anyone who thinks that is a f00l.

  180. 91

    Another vacuous comment from Malcolm.

    Attaboy.

    I LOVE the fact that you cannot deny the admissions that you have made.

    The archive feature is wonderful. But maybe if you beg Prof. Crouch again, all the past posts will be wiped out and you can engage in blatant 1ying without the risk of me posting your own words and rubbing your nose in your own CRP – again (and again, and again, and again…).

  181. 90

    MM: A new machine may be eligible for patenting. … But that doesn’t mean that every claim reciting that machine in a method is forever eligible.

    Rich’ position in Benson was that reciting a computer was enough. This clearly was rejected by the Supreme Court in Benson. But Rich never gave up on it though. He continued to believe that if a claim recites a machine, albeit old, the claim is directed to eligible subject matter.

    Rader does the same thing here. All he sees is a programmed computer and stops. This is not proper 101 analysis in the case of computers, and never has been.

  182. 89

    enjoy digging yourself

    LOL – continue to use that accuse-others-of-what-you-do tool, my friend.

  183. 88

    Could there be some invalidating prior art. Maybe.

    LOL. Classic t–b-gger: “I was born yesterday.”

  184. 87

    you’re even skummier today than usual

    Since you are clearly engaged in the opposite-of-reality Malcolm ‘dialogue’ mode, this is a great compliment.

    Thank you.

  185. 86

    Again with the accuse-others-of-what-you-do rhetoric Malcolm.

    What is the 1ie?

    You do realize that everytime without fail you accuse me of this and I have asked for you to provide a valid example that you have FAILED?

    This is all archived.

    Put.
    The.
    Shovel.
    Down.

  186. 82

    Lemley: the alternative — that the court has decided that the scope of the claim doesn’t matter anymore — would represent a major step backward.

    Well, there’s at least one judge on the Federal Circuit who believes that the claims have to read on “the invention”. So, according to this (radical) theory, if the claim seems too broad, then you need to look at the specification and find the narrower “invention” that the applicant undoubtedly intended to claim. As Lemley correctly observes, this is no different from saying that “claims don’t matter anymore — the Court will re-write them for you”.

  187. 81

    You recite in the claim the structural limitation of “programmed to.”

    You know – just like you voluntarily admitted.

    LOL – strike that match, get the marshmallows ready.

  188. 80

    Compare “that (2) the ancients used computers for anything, goes without saying. Yet, in attempting to communicate with you, I feel compelled to say it.

    and “Or are y’all going to stick your heads in the sand like you usually do?

    More of Malcolm’s infamous accus-others-of-that-which-he-does.

    Great quality blogging.

    /off sarcasm

  189. 79

    “That’s how the game is played by the proponents of these kinds of patents. Somehow these “inventions” are all very “complex” and “technical”, in spite of the fact that they were surely dreamed up in five seconds. Did you notice Rader’s hilarious use of the “flow chart” figure? Very impressive. Also irrelevant.

    Mhmmm, I know, and yes, I noticed.

  190. 78

    Ignore the HOLDING of Alappat some more Ned.

    You do realize that you are violating your ethical duty to acknowledge controlling law, right?

  191. 77

    Look at this fine mess: point raised and ignored by the likes of Ned and Malcolm, re-trotted out once again.

    Get your tickets to the merry-go-round here…

  192. 76

    “Whether software has structure is not a subjective opinion you can form or not. There is science behind it.”

    The meaning of the word “structure” may be simply be being used in different ways mah brosef. Which is literally the root of the conflict. Some people, ta rds like yourself, started misusing the word to describe magical things which exist outside the spec of your patent apps, or, in the alternative, “algorithms”. The word was never meant to be used in that fashion in the field of patents. It’s that simple. Your bad. Just say “my bad” and we’ll forgive ya bro.

  193. 75

    ARRRGGHHH – the return of the canard of music and the purposeful ignoring of the useful arts.

  194. 74

    Lemley: “it proceeds to discuss in great detail the technology disclosed in the specification but not mentioned in the claims.”

    That’s how the game is played by the proponents of these kinds of patents. Somehow these “inventions” are all very “complex” and “technical”, in spite of the fact that they were surely dreamed up in five seconds. Did you notice Rader’s hilarious use of the “flow chart” figure? Very impressive. Also irrelevant.

  195. 73

    Reminds me Ned – you have STILL never acknowledged two important facets of the conversation:
    1)ANTHROPOMORPHICATION
    2) the controlling law on the exceptions to the printed matter doctrine.

    And yes, we STILL both know why this is.

  196. 72

    ” In fact at the time of his article there were other articles that clearly discussed the structure of software (including Ginsburg from NYU).”

    Well why not repeat it here or post a link? Is it behind a paylolwall?

  197. 71

    Les, you fall for the same trap as did Rich and as does Rader.

    I claim a player piano with new music; a computer with new programming.

    In one view, the claims are not abstract because they claim machines. But when one considers what is new, it quickly appears that the both the player piano and the computer itself are not new machines. The claim is attempting to patent the music or the steps of the program, limited to their performance on a particular piece of hardware.

  198. 70

    Could there be some invalidating prior art. Maybe.

    I am not aware of your alleged prior art (1). I’m aware that the Romans nailed people to wooden planks. However, I’m not aware that the ancients forced people to look at ads.

    In any event, disclosure of forced ad watching wouldn’t anticipate the voluntary quid pro quo of the present claim.

    That I am not aware that (2) the ancients used computers for anything, goes without saying. Yet, in attempting to communicate with you, I feel compelled to say it.

  199. 69

    If your method is a function of the kind (not the particular item) of data, you are clearly wrong Malcolm.

    You need to go back to your admissions of coontrolling law on the exceptions to the printed matter doctrine and review EXACTLY why.

    Tank it under 101 or tank it under obviousness

    LOL – when legal reason fails, return to the WHATEVER reasoning. Um, sure…

  200. 67

    “There is no ‘functional claiming through the back door’ either. This is a method, how else do you claim it other than by the ‘steps’ carried out by it?”

    You recite in the claim all of the “complex programming” that makes this alleged “invention” patentable, instead of simply waving your hands in the air about what the magical functions of the allegedly “new” computer.

  201. 65

    media products that are covered by intellectual-property rights protection

    each said media product being comprised of at least one of text data, music data, and video data < ---- LOL sponsor message

    The moment you see “limitations” like these in a claim, it’s a really good sign that the claim is j–k.

    You can’t use patents to protect methods of distributing particular “kinds” of content via a computer because the content is irrelevant to patentability. It doesn’t matter if the content is real estate availability content, copyrighted content, music content, movie content, Grandma’s favorite pictures content, “restaurant I am at now” content, son’s credit card account content, Republican talking points content, or any other content. It’s irrelevant. It’s just information. Computers receive, store, process and transmit information. There is no “meaning” to the information that can turn an otherwise old process of distributing information into a new, non-obvious process.

    This is a claim that is trying to patent the use of the computer in an abstract method of providing information to someone. What in the world does the “computer” add to this abstraction? Nothing, except the ancient “benefit” of automation. Tank it under 101 or tank it under obviousness. If we can all agree that it’s absolute j—k that should be tanked, then the discussion about the benefits of using one statute or the other is simplified.

    But the t–b-ggers who h*te 101 also h*te to admit that any patent claim is a piece of obvious s—t. Why is that, I wonder?

  202. 64

    as if these alleged facts matter somehow

    They do. Even you have volunteered admissions about controlling law.

    Or did you leave this world again without ‘checking out’ and you are discussing ‘opinions’ outside of patent law again?

  203. 62

    Being quoted by the Court that is royaly messing up patent law (101) is NOT an indicator of comparative knowledge and intelligence. Go ask Alice.

    That you would make such a mistake is an indicator – but not in the direction you might think.

    On the other hand… you have a great website!

  204. 61

    In patent law professor, “too broad” is measured by comparison to the prior art: 35 USC 102 and 103.

    Do you agree that Ultramercial’s patent should be found invalid as obvious in view of (1) the ancient prior art in which content providers forced people to look at ads and (2) the ancient prior art of computers that provide content (including “copyrighted” content, as if the legal status of the content could possibly make any difference to the patentability of the claim).

    Just say so, then. Or are y’all going to stick your heads in the sand like you usually do?

  205. 60

    Not worth dignifying? You mean calling out someone as a liar and having committed an academic integrity violation with a specific example is not worth dignifying?

    I think you mean that you have no respect for integrity.

  206. 59

    Rader: his court and the Patent Office have long acknowledged that “improvements thereof” through interchangeable software or hardware enhancements deserve patent protection.

    Nothing in the claims at issue here “improves” the computer from the perspective of anybody except for the d00shbag with the patent and the d00shbag trying to make money off his information. Patents are completely unnecessary for promoting the latter d00shbag to come up with schemes for making money. That’s what our capitalist system is designed to promote. C’mon, Randy. Try harder.

    it claims a particular method for collecting revenue from the distribution of media products over the Internet.

    Revenue collection is one of the useful arts? Huh. Not sure the Supreme Court would agree with that. And the use of a computer here is nothing more than old and conventional horsesh-t. Just wait until Randy gets his first iPhone. Then he can re-write this decision in ten years and substitute “hand held networking device” for “computer” and it’ll be just as devoid of substance.

  207. 58

    Rader: it is clear that several steps plainly require that the method be performed through computers, on the internet, and in a cyber-market environment

    Uh … so what? My method of thinking a new thought “clearly requires” that I sit down on a purple couch in an airplane. So what, Randy?

    if the products are offered for sale on the Internet, they must be restricted –step four- by complex computer programming

    “Complex computer programming?” Seriously? That’s funny. More like “old and conventional” programming. And then of course Rader goes on to quote himself (specifically, his beloved Allapat concurrence) saying that “software is hardware” and “the line of demarcation between a dedicated circuit and a computer algorithm accomplishing the identical task is frequently blurred” as if these alleged facts matter somehow.

  208. 57

    Rader: in Prometheus, the Supreme Court recognized that the additional steps were those that anyone wanting to use the natural law would necessarily use.

    Whether anyone would “necessarily” use the independently eligible steps or not is utterly irrelevant, at least when we’re talking about a method claim. All that mattered in Promtheus was whether those steps were old and conventional because the only new matter in the claim was an ineligible mental process (i.e., an abstraction). One could have substitute ANY old and conventional step prior to the step of “thinking about a correlation” and it would have made no difference to the eligibility of the claim. It would have remained ineligible.

    So, the above “analysis” is the foundation Rader lays for his more specific investigation of the eligibility of computer-implemented j—k. What could possibly go wrong, right? After all, now Rader can rely on his work because his views on computer-implementation haven’t yet been squashed by the Supreme Court. He never bothers to discuss what computers are and what they do and the fact that they are now as ancient as the horse drawn carriage was in 1960. Let’s just jump to the thrilling (unsuprising) conclusion:

    with a claim tied to a computer in a specific way, such that the computer plays a meaningful role in the performance of the claimed invention, it is as a matter of fact not likely to pre-empt virtually all uses of an underlying abstract idea, leaving the invention patent eligible.

    “Tied in a specific way”? “Meaningful role in the performance”? “As a matter of fact not likely”? LOL. Thanks for clearing everything up, Randy.

  209. 56

    Rader: This analysis is not easy, b

    In fact, sometimes it’s incredibly easy. But of course Rader can’t admit that.

    Rader “pre-emption analysis” summary is mostly worthless drivel because Rader, evidently, lacks the imagination to provide examples of what he’s talking about. Instead, he tries to cobble something meaningful together from the Supreme Court decisions which are nearly all horribly written.

    And then when it comes to the easy business of describing the machine-or-transformation test, Rader stunningly manages to fudge it. Try to believe Rader wrote this: “[A] claim is meaningfully limited if it requires a particular machine implementing a process or a particular transformation of matter.” Then he quotes Bilski which crucially qualifies his incorrect statement by holding that the MoT test provides merely “an important clue” to eligiblity. Gosh, I wonder why Rader would do something like that. We can only guess.

    claim also will be limited meaningfully when, in addition to the abstract idea, the claim recites added limitations which are essential to the invention.

    The “essential to the invention” test? What? Don’t even bother trying to understand what it means. Gobblydegook. Then Rader goes completely off the rails, demonstrating that he still does not “get it”. Judge Rich’s kool-aid has stained his soul and, apparently, the mark can not be removed. Here’s Rader with another one of his thoughtless “pronouncements”:

    because a new combination of old steps is patentable, as is a new process using an old machine or composition, subject matter eligibility must exist even if it was obvious to use the old steps with the new machine or composition

    No. No. No. And no. Wrong. False. And really effin d-mb. Just look at the first clause: “a new combination of old steps is patentable.” That’s not a truism. It’s only true sometimes. And it’s downhill from there. A new machine may be eligible for patenting (if it’s properly claimed as a new machine and not as abtraction). But that doesn’t mean that every claim reciting that machine in a method is forever eligible. Once that machine is old and conventional, friend, all bets are off. The only question I have about this is whether Rader’s ignorance on this point if feigned. I suspect that it’s not, which is perhaps more frightening than the alternative.

  210. 55

    Citation by SCOTUS (9 technologically-challenged and patent law-ignorant Justices) is hardly a “stamp of approval,” especially by the patent bar.

  211. 54

    You guys are a hoot.

    Leave Lemley alone, he is only a gnat on a toenail of the elephant, which is the Supreme Court’s incoherent “abstract idea” gobbledygook. It can’t be defined, but like pornography (who knew the Court had such fetishes?) the Supremes know it when they see it.

  212. 53

    Continuing on with the analysis of Rader’s “analysis”:

    the Supreme Court has cautioned that, to avoid improper restraints on statutory language, acknowledged exceptions thereto must be rare.

    There it is again, that strange “statistical” approach to subject matter eligibility. Logic suggests that the “rarity” of a court’s finding a patent (or type of subject matter) ineligible is directly related to the frequencies at which such ineligible patents are sought, obtained and asserted in a lawsuit. This is a constantly evolving situation and these points about “rarity” are red herrings. What is “rare” anyway? Is there any serious person who believes that most patents are ineligible under 101? Even 10% of patents?

    this court gives substantial weight to the statutory reluctance

    Good God, that is lame. I just threw up in my mouth a little bit. After that massive dust-kicking session, Rader finally gets to the interesting questions. Let’s share in the laughter, shall we?

    Technology without anchors in physical structures and mechanical steps defy easy classification under the machine-or-transformation categories.

    Technology without anchors in physical structures and mechanical steps? Hmm. What kind of composition is he referring to that “lacks anchors” in a “physical structure”? Non-boat “technology, maybe?

    Then Rader pretends that Prometheus never happened, just before he admits the opposite. What is the point of writing this: A court cannot go hunting for abstractions by ignoring the concrete, palpable, tangible limitations of the invention the patentee actually claims, which is absolutely false? In the very next sentence, Rader contradicts himself: the relevant inquiry is whether a claim … includes meaningful
    limitations restricting it to an application, rather than merely an abstract idea.
    Guess what phrase Rader included at the ellipses? That’s right: “as a whole”. A phrase which adds absolutely nothing to his point but by golly he’s going to say it. It’s a present to those special folks “in the industry” who have trouble remembering rules with more than four words.

  213. 51

    It’s time to walk through Rader’s “reasoned” opinion and count how many self-serving statements he makes on his path to keep Ultramercial’s j–k patent afloat:

    The district court dismissed Ultramercial’s claims for failure to claim statutory subject matter without formally construing the claims

    Exactly like the Federal Circuit and the Supreme Court did in Myriad. Why the sudden change? Hilariously, further down in the opinion, Rader notes that the CAFC has never made a “bright line rule requiring claim construction.” Let’s just cut the cr-p: some attempt at a partial claim construction at least is always required before analyzing the claims under the patent statutes. How else can a jurist explain why the claims are being approved of or invalidated?

    the only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility.

    There’s some more of that Therasense-style wa nking. Rader’s telling everyone that if he can think up a “plausible” construction that would make the claim eligible, then the case shouldn’t be dismissed. That’s the patent crack talking.

    there is no doubt the § 101 inquiry requires a search for limitations in the claims that narrow or tie the claims to specific applications of an otherwise abstract concept.

    Rader’s already muffing it badly and we’re only on page 6. Let’s fix the error in his statement: “there is no doubt the § 101 inquiry requires a search for novel and non-obvious and, most importantly, eligible subject matter in the claims that narrow or tie the claims to specific applications of an otherwise abstract concept.” There. That was easy.

    The presence of factual issues coupled with the requirement for clear and convincing evidence normally will render dismissal under Rule 12(b)(6) improper.

    This is just wa nking again. Courts shouldn’t be worrying about whether too many claims are being correctly found invalid or ineligible. There shouldn’t be any consideration along the lines of “I just dismissed that other junky patent case under 12(b)(6) last week and now here’s another jnky claim … maybe I’m doing this wrong?” Just follow the law as best as you understand it and make a good coherent argument. You’d think if anyone should be aware of that it would the Federal Circuit.

    if there are factual disputes, claim construction should be required.

    No kidding, Randy. Really? How much are the taxpayers paying for this banality?

  214. 50

    NWPA says: And, Lemley, you have position on me, but not knowledge, intelligence, or integrity. You have position and time or your arguments and reputation would be toast.

    NWPA, why don’t we defer the question of comparative knowledge and intelligence until your writings have been cited by the Supreme Court as often as Mark Lemley’s writings have been in recent years.

    (Your comments about integrity aren’t worth dignifying with a response.)

  215. 49

    It’s equally ‘false’ to say that isolated nucleic acids are ‘products of nature.’

    Your statement is clearly not supportable Malcolm.

    Come back to this world soon.

  216. 48

    the author quoted this claim to discuss its structure, but there is something even more fundamentally problematic than functional claiming at stake here.

    B-b-b-ut what about the p-p-presumption of v-v-validity?! Stop picking on those claims!

    /patent t–b-gger off

  217. 46

    EG I was making a subtle rephrasing of the expression “why look for a conspiracy when the situation can be explained by incompetency.”

    I might add that nobody in the world cares how much the patent t–b-ggers h*te Lemley. You guys can climb a hill and immolate yourselfs in the name of software patents and people will just shake their heads and move on. Nobody on earth except Ultramercial and the t–b-ggers want obvious j–k like Ultramercial’s patent to be enforceabe. Oh but wait — this about 101? And that’s “scary” because more j–k patents will get caught in the trap. Meanwhile, nothing else will change because as much as the t–b-ggers whine and cry to the contrary, patents like Ultramercial’s don’t promote anything except more j–k patent applications and patent trolling.

  218. 44

    Caught that EG – except I doubt that ‘incompetency’ flies here.

    Lemley is very much aware of what he is doing.

  219. 43

    Sorry, anon, I was making a subtle rephrasing of the expression “why look for a conspiracy when the situation can be explained by incompetency.”

  220. 42

    The link to the SSRN paper is broken and sends you to some mail system’s login page.

    This one should work.

    I had a quick look at the paper, and came across footnote 64:

    US8350481B1 claim 1 (issued Jan. 8, 2013) :

    A method of creating a light effect, said effect providing perceived moving images to the human eye,
    said method comprising:
    i. concurrently exposing a variety of colored designs to at least two different colors of light emitting
    diode lights;
    ii controlling said light emitting diode lights to provide a desired light effect selected from the group
    consisting of
    i movement, and,
    ii complete change of image colors in the designs.

    KABOOM! That was the cartoonesque sound of my head exploding.

    This beauty was filed in 2010. The dependent claims are also worth a look:

    2. The method as claimed in claim 1 wherein the venue for the use of the method is a bowling establishment.

    3. The method as claimed in claim 1 wherein the venue for the use of the method is a game parlors.

    4. The method as claimed in claim 1 wherein the method is used in an indoor mirror maze house.

    5. The method as claimed in claim 1 wherein the method is used in a glass maze house.

    This was the examiner’s search strategy from PAIR. All of it. Direct allowance.

    The author quoted this claim to discuss its structure, but there is something even more fundamentally problematic than functional claiming at stake here.

  221. 41

    AAA JJ,

    What you are not acknowledging is that Lemley is very much aware that he is standing completely in the weeds, that he has no colorful argument (570nm notwithstanding) for a “nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law,” and that he is merely spewing propaganda with his fallacious presentation. He has stepped well beyond presenting an idea for a different law system.

    Taken as a whole, I would most definitely sanction him if this was presented in my courtroom.

  222. 40

    And really! Think about it. He knows exactly the implications of this assertion of his. Exactly. Everyone that understands patent law does. And yet he makes these claims on his own that are not supported by science or law.

    And, you act as if it is some kind of subjective opinion that he is entitled to. It is a devious man that knows exactly where to press to get the result he wants. That by the way is a good description of Stern as well the architect behind Benson.

  223. 39

    AAA JJ,

    It is a false statement to say that the claims at issue were “A claim that covers only an abstract idea.”

    Let’s not pretend that a ‘clever 1ie’ is not a 1ie because of the way it is couched.

  224. 38

    AAA JJ: a false statement is one like “software has no structure” where Lemley does not discuss journal articles by some of the best academics in the field saying it does. I posted a link to that article of his. In fact at the time of his article there were other articles that clearly discussed the structure of software (including Ginsburg from NYU).

    Whether software has structure is not a subjective opinion you can form or not. There is science behind it. There are academics in law and scientific journals. One cannot simply take a position counter to law articles and science (and not even reference them.) That is an academic integrity violation. And, to be clear, Lemley knows the implications of what it would mean not to have structure. We see it here in this post of his. If the method conveys no structure then it is functional claiming and if a computer configured conveys no structure then it is also functional claiming.

    Look! This is not some minor issue that he happened to step off the path on. The structure issue is huge and academics understand the implications. I took a PLI course about 5 years ago where a professor at NH law school even discussed this very issue.

    Lemley knowingly made false statements to get a result. That is a rule 11 violation and it is an academic integrity violation. I am not why you see this as gray. It could not be more black and white.

  225. 37

    “There is no ‘functional claiming through the back door’ either. This is a method, how else do you claim it other than by the ‘steps’ carried out by it?”

    This is, of course, 100% correct. Lemley is completely out in the weeds on this one.

  226. 36

    “How AAA JJ, do you explain an academic that knowingly makes false statements in journal articles?”

    I’ve asked you numerous times to point out these “false statements” but you never do.

    If Lemley makes a statement about what he believes the law to be, or ought to be, that is not a “false statement” simply because you disagree with it. It is a difference of opinion.

    As for whether “software has no structure” is a false statement, a lot of people think that. I don’t. There’s a reason that “state machine” is (or maybe was) a term of art. But I don’t think that any and everybody who disagrees with me on that lacks integrity. They just disagree with me.

  227. 35

    He does not look for the devious, EG, he employs the devious.

    In essence, he offers the following ‘logic’:
    Ridiculous strawman 1,
    Ridiculous strawman 2,
    An implicit adoption of my latest pet theory – because nothing else can possibly make sense given that Mark has assumed that the claims are merely an abstract idea in clear violation of the law.

    Complete fallacy from top to bottom.

    NWPA, I would beg to differ: this most assuredly does NOT read like a brief, as a brief would be governed by Rule 11 and this piece of obvious claptrap would earn a very quick slap down under that Rule. I do not see any part of (b) that is not violated here.

  228. 34

    The conflict is obvious: which master do you service first: the Left or the Right?

    Sure, they are in bed for the destruction of the patent system, but what then?

    When the Left wakes up and realizes that they have been whored by the Right, which side does Mark zealously represent?

  229. 33

    I am surprised LB that you don’t see this. One academic on here said regarding claiming that software has no structure “but, that’s what you want.” The academics that are attacking patent law seem to have no integrity or sense of responsibility to represent the facts or law in a fair light.

    That is not a work of an academic.

  230. 30

    The conflict between academic integrity vs. advocating for your clients positions. I think what we see in Lemley is a person that has abandoned academic integrity for advocating for his clients (and his positions.)

    How AAA JJ, do you explain an academic that knowingly makes false statements in journal articles? His “journal” articles, in fact, read very much like briefs.

  231. 27

    Please define “high level of abstraction”, ’cause it doesn’t look abstract to me. Are you confusing “abstract” with “broad”? In patent law professor, “too broad” is measured by comparison to the prior art: 35 USC 102 and 103.

    In what sense is this abstract?

    1. A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

    a first step of receiving, from a content provider, media products that are covered by intellectual-property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;

    a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

    a third step of providing the media product for sale at an Internet website;

    a fourth step of restricting general public access to said media product;

    a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

    a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;
    a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

    an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

    a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

    a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and
    an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

  232. 26

    “…how do you resolve the inherent conflict of making money at law firm with your position as a ‘professor?'”

    What is this inherent conflict?

  233. 25

    Thoroughly agree, anon. What Lemley does is look for the devious instead of the obvious: a computer-implemented method, i.e., via the Internet. There is no “functional claiming through the back door” either. This is a method, how else do you claim it other than by the “steps” carried out by it? My disdain for Lemley’s thinking continues to grow.

  234. 24

    You know the arguments we have here at patentlyo are really examples of the same type of arguments that are going on in the greater society.

    The Lemleys of the world are winning right now. Bill Moyers had a special regarding this topic about 10 years ago. How people like Lemley can make statements that are clearly wrong and not be held accountable for them. I think we should all try to find a way to hold Lemley accountable.

    He has knowingly made false statements in journal articles. In the good old days that meant you spent the rest of your life as a carpenter.

  235. 23

    It is unbelievable that Stanford professors don’t force him to resign for academic integrity violations.

    He is knowingly making false statements in papers published in journal articles published by Stanford.

    He should be forced to resign.

  236. 22

    Beyond that, it simply makes no sense. The patentable subject matter rule is against patenting abstract ideas. A claim that covers only an abstract idea doesn’t somehow become less abstract simply because the patentee could have claimed a narrower, more tangible invention.

    Way to use both a strawman AND to assume the conclusion that you want.

    One small problem, Mark: the claim in question isn’t one that merely “covers only an abstract idea.”

    Otherwise, a real piece of CRP propaganda from you. And that’s being generous.

  237. 21

    phrased at a high level of abstraction

    This “article” is loaded with such pretentious nonsense.

    If this were ‘journalism,’ the wavelength would be about 570 nm.

  238. 19

    Lemley’s proposition is that information processing claims convey no structure to one of ordinary skill in the art. And, that computer programs have no structure. That is Lemley’s contention despite the fact that he knows that is not true.

  239. 18

    “….the Federal Circuit held that a series of steps for serving ads to customers over the Internet, phrased at a high level of abstraction, was patent-eligible subject matter under section 101.”

    Professor Lemley, what exactly is this level of abstraction? Do you have a scale of some sorts? And if so what would be the next level of abstraction after Ultramecial’s claims, as well as the level proceeding the claims, and how would both of those claims be recited at those specific levels?

  240. 17

    “…because the specification contained detailed technical implementations and a complex flow-chart, even though none of those were included as limitations in the claim. What is going on here?”

    Correct me if I am wrong Professor Lemley but isn’t the court supposed to read the claims in light of the specification and as the claims would be interpreted by a person of ordinary skill in the art?

  241. 15

    stating the abstract idea preempt

    Still waiting for you 6. What is the abstract idea that you think is here? Where on the ladder do you think you are? Why does it matter if there are abstraction rungs above the one claimed?

  242. 14

    It looks like to Lemley, all ladders have only one rung.

    Apply this philosophy across the board…

  243. 12

    >To begin, it directly contradicts controlling Supreme Court >precedent such as O’Reilly v. Morse, where the court held >narrow claims patent-eligible but a broader claim ineligible.

    You really are shameless. Is that the holding in Morse? That narrow claims are eligible and broad claims are not. Shameless amoral devil.

  244. 11

    Quite right, anon. I wonder if Lemley will have the guts to engage us. Probably not. The academics tend to rely on their perch for safety.

  245. 10

    I should add, that I hope that the USSC resolves this case by a simple one page opinion stating the abstract idea preempt and that the Federal Circuit needs to get off of its pato ot and with the program.

  246. 7

    So, according to you (Lemley) computer programs have no structure. That is wrong. And, so it is not surprising that you would incorrectly think that a recitation of an information processing machine would convey no structure. Under your reasoning a circuit has no structure.

    So, Lemley, tell us how computer programs have no structure. And, given this gross intentional misrepresentation why should we trust anything you write?

  247. 6

    “But the majority goes out of its way to suggest that factual questions are likely to predominate in a section 101 inquiry, though the court is a bit vague on just what those factual disputes might be. ”

    Obviously, because there are none, and the questions he does attempt to shoe horn into being factual inquiries are far from it.

    ” Curiously, however, the court never explicitly tells us what that narrow construction is. ”

    Because there is no such construction. Which is, as far as I’ve been made aware, why the DC didn’t write it down in the first place.

    “Then the majority does something very odd”

    Then? Then? After all that odd sht it just did that you pointed out you say “then”?

    “it proceeds to discuss in great detail the technology disclosed in the specification but not mentioned in the claims. The court clearly viewed Ultramercial’s claims as patent-eligible because the specification contained detailed technical implementations and a complex flow-chart, even though none of those were included as limitations in the claim. ”

    I know where you’re going with this, but I disagree already before you even say it. No, they didn’t adopt your pet suggestion, they’re just went plain bonkers.

    “It seems unlikely that each of them simply forgot that it is the claims that define the invention. ”

    Actually, the suggestion that perhaps they simply forgot the lawl is the most generous suggestion anyone could possibly make regarding this “decision”.

    “The court didn’t explicitly say what it was doing.”

    And it just so happens that doing that is what certain types of crazy people do.

    In any event, after I got done reading this decision all the way through my jaw literally nearly hit the floor at how amateurish the whole came across as. It seemed to me to be deliberately so, in order perhaps to provoke the supremes into making themselves even more clear that the law is the law just as they’ve said it is for the last 100 years. And I guess I can support that.

  248. 5

    LOL – still waiting for you NOT to be chickensht and deliver what you said you would on the other thread.

    And son, that is not ‘tr011ing’ you.

    The word you are looking for: accountability

  249. 4

    “reasoning that patentable subject matter is a pure question of law and so not dependent on factual conclusions”

    Correctly reasoning I think you mean.

    And I only just now, a day ago had it pointed out to me that Rader has now back-doored in some factual inquiries into the legal question of law all patent legal questions of law. It’s preposterous, so much so that I had skipped over much of his blabbering in those sections as being merely more stuff I’d likely eventually disagree with but weren’t the real holding.

    Turns out, the Federal Circuit is 100% completely off their rocker, flip ped their sht so to speak. Apparently now 101 is a mixed question of fact and lawl, or at least a question of lawl predicated on a bunch of factual findings. I must humbly disagree, as others have already brought up this possibility and I disagreed with it then. I could go on and on as to why, but I’ll wait until anon, true to form, trolls me into telling him.

  250. 3

    I have to give it to you, though. I guess having Stanford at your back gives one a lot of nerve.

  251. 2

    So, Lemley, do you really think that anyone in patent law doesn’t know that you wrote that column to provoke? We all are very aware of 112, 6 and what it takes and means to be put in that bucket. Clearly they were not in this opinion.

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