Guest Post by Professor Bernard Chao
The issue of patentable subject matter eligibility has been in considerable flux. Currently, it’s unclear whether adding computer limitations to an otherwise unpatentable concept somehow renders the concept patent eligible. The Federal Circuit tried to settle this question when the entire court heard CLS Bank Int’l v. Alice, 717 F.3d 1269 (Fed. Cir. 2013). But the judges could not find common ground and the decision contained seven separate opinions reflecting at least three distinct approaches. Now it has been suggested that the CLS Bank Int’l provided the lower courts with absolutely no guidance. After all, no opinion garnered more than five judges’ support. In an effort diminish Lourie’s opposing opinion, Judge Rader even went so far as to say that “nothing” in the CLS Bank Int’l decision “beyond our judgment has the weight of precedent.” Id. at 1292, n 1.
Ironically, under the so called Marks rule, Judge Rader may not just be wrong, his opinion could be considered the holding of the court. The United States Supreme has said that when one of its decisions has no majority opinion in support of the judgment, “the holding of the Court may be viewed as that position taken by those Members who concurred in the judgment[] on the narrowest grounds.” Marks v. United States, 430 U.S. 188, 193 (1977). Now there is some disagreement about how to identify the narrowest concurring opinion. What’s more it’s unclear if the Marks rule applies to en banc decisions of the various Courts of Appeals. But there is certainly plenty of room to argue that Judge Rader’s opinion is the Federal Circuit’s holding under Marks.
To understand how the Marks rule would apply to CLS Bank Int’l, we have to examine the decision’s different opinions. I discuss these opinions in some detail in an upcoming article in the Berkeley Technology Law Journal, but I will provide a very short summary of the judges’ views here. Judge Lourie’s opinion (joined by Judges Dyk, Prost, Reyna and Wallach) took a “strong view” of § 101’s subject matter patent eligibility requirement. Consequently, these five judges would have found that all of Alice’s claims were ineligible for patenting. Judge Rader (joined by and Judges Linn, Moore and O’Malley) took a relatively “weak view” of § 101’s eligibility requirement. But Judges Rader and Moore applied this methodology differently than Judges Linn and O’Malley. Rader and Moore argued that the method and media claims were not patent eligible, but the system claims were. In contrast, Linn and O’Malley’s would have left all the claims intact. Finally, Judge Newman took an even weaker view of §101 arguing for almost no scrutiny of patentable subject matter eligibility whatsoever. Accordingly, she would have also found all the claims were patent eligible.
Both Lourie’s and Rader’s opinions concurred in the judgment of patent ineligibility for the method claims. So seven judges agreed that the method claims were not patent eligible. Lourie’s strong view advocated for a rule that would render many claims patent ineligible, while Rader’s weak view is more conservative and jeopardizes a smaller set of claims. As applied to the patents in CLS Bank Int’l, this meant that only the method claims would be ineligible. Under one interpretation of Marks, Rader’s opinion is the narrowest view supporting the end result and would be considered the holding of CLS Bank Int’l.
To be clear, I actually disagree with Rader’s analysis and say so in my article. I also don’t want to overstate the significance of the Marks analysis. Clearly, CLS Bank Int’l is still shaky precedent and the success of any appeal to the Federal Circuit may simply be panel dependent. Hopefully, the Supreme Court will resolve the issue. In fact, the Court is currently considering a petition for certiorari in Wildtangent v. Ultramercial. But in the meantime, software patents continue to be challenged on subject matter patent eligibility grounds and the Marks rule provides one way to try to interpret the confusing precedent now.
You should rejoice 101IE, for on the Hricik: Why Section 101 thread (this one – not the Ethics version) Ned has made the admission that software is patent eligible under 101 as a manufacture.
See the exchange at 6:09 and 6:29 yesterday.
This from Ultramercial Petition for Cert: “Also similar to the patent in Bilski, the added features, examples, or limitations of the ’545 patent do not make it patentable. That the exchange (advertisement for media) is carried over the Internet, through a facilitator, using passwords and activity logs, does not limit the patent in a meaningful way. The patent still discloses an abstract idea garnished with accessories. If the claimed invention here were patentable, it would “preempt use of this [method] in all fields.” Id.
The fact that the concept is “integrated” along with the technology into the process as a whole limits the patent in meaningful way. The “Integration” is important and therefore “meaningful” because by being “Integrated” the claims as a whole do not pre-empt the concept of [using advertising as currency], in all fields, and removing a ‘ basic tool of scientific and technological work,’ free to all men. After all, this is purpose of the Court created abstract idea exception. Now what could be more “meaningful” and likewise important than that? It is ironic that the petitioner admonishes the court for allegedly not following Mayo while not following Mayo himself by ignoring the Courts explicit use of “Integration” as the most on point analysis for what is eligible subject matter. And although this may be the reason I am banned, I will say it any way. No one can demonstrate that Ultramercials claims, ( or Alice ) are ineligible subject matter when applying the Supreme Court’s “Integration Analysis”. Not one commenter on this blog. Not one guest professor. Not one CAFC Judge. Not one patent examiner. NOT ONE!
Maybe this is why the anti’s all ignore “integration”.
No answer Mighty Mouth?
No answer Might Mouth?
Not sure what you think is funny about this Malcolm, as your inability to square the decision is related to the statement.
Maybe it’s that thing you have about burning your own fingers and laughing about that…
What do you mean by “a principle?”
LOL – you want to pick out trees in the wrong forest, and yet, you do not even attempt to recognize the words you throw about.
Try again 6 – let’s see you you make at least a minimally meaningful attempt.
LOL – wrong forest again 6 – think about it.
“I think I agree”
LOL – we know you agree: you have previously volunteered that ‘configured to’ is structural language.
No doubt, you will attempt to spin out of this latest volunteered admission as well.
That’s one of your specialities.
“ reciting a desired “function” ”
But Malcolm, that is a mischaracterization – you forgot the structural language of ‘configured to.’
Why the dissembling?
More pedanticism 6 – You are searching for a tree in the wrong forest.
procing => providing
You didn’t give a d@mm just about explains the cognitive reasoning you employ – it’s that pathological obsession you have.
And you are still factually incorrect about programming changing a computer. Put yourself in a big room, say a hall, put two of the same hardware units there. Change one of the two hardware units by fulling loading it with software, leaving the other without software.
Without further inventive activity, we will race, each using a particular machine. You have the machine without software.
You lose.
Your attempt (when the experiment was first introduced as well as now) to change the scope of “use” to include inventive activities was pointed out to you. The Star Trek replicator ‘uses’ chemical elements and molecules in EXACTLY the same way you are attempting. By your very logic then, my singular vat of elements and molecules is 102 against EVERY chemical composition.
You really should give a d@mm.
@ta boy
@ta boy
@ta boy
Leopold,
Is it still funny after the fifteenth time in one day? the mindless (and mind-numbing) regurgitation?
It’s a literal diarrhea Malcolm CRPfest.
And where are my answers? Why are you not finishing what you started?
Malcolm,
Your post at 2:34 provides the very proof that your earlier post at 10:08 contains the strawman of purely mental.
You attempt to defend by stating Prof. Crouch’s question, but fail to recognize the following hightlighted words:
“do you think that it is actually clear that adding computer limitations to an otherwise unpatentable concept renders the concept patent eligible“
PLain and simple, if you have added computer limitations, you no longer have a purely mental claim.
Whether or not Prof. Crouch’s question is reasonable to ask has no relation whatsoever to YOUR strawman of purely mental.
should itself be ineligible
Oops. 😉
that strawman
Not a “strawman” at all. Dennis asked a question. Here it is again:
do you think that it is actually clear that adding computer limitations to an otherwise unpatentable concept renders the concept patent eligible
Dennis is asking whether you can take an ineligible mental step and stick “computer” on it and render the method per se eligible.
It’s a reasonable question to ask (anybody who wishes to debate that point) whether they agree at least that the claim lacking the computer limitation should itself be eligible. Right?
“I do not understand why you insist on pedantics 6.”
Because when you get down into the specifics, you know, the nuance you’re always going on and on about, your broad overstatements about “concepts” and “what the law is or is not” turns out to be utter rubbish. Benson, as in, it’s holding, is the law, and was not “limited” what so ever.
“What do you think the limitation was?”
I don’t “think” the limitation was anything, I “observed” or “went ahead and read” that the limitation was that, specifically, where the judicially excepted subject matter (for example the abstract idea of the Arrhenius equation, OR Benson’s abstract conversion calculation) was recited in the claim, but is not wholly preempt, then the claim may survive and is not immediately tossed out for merely containing the judicially excepted subject matter in the first place. That’s the only “limitation” put on the “principle” of excluding certain subject matter from eligibility, which was made explicit in Benson, by Diehr. It really is that simple. And it doesn’t “cabin” the actual holding of Benson in any way shape or form and thus Benson, is, as has been reiterated to you by the Supremes nigh on 5 times now, and thrice in recent memory, the law. I’m not sure how much simpler this could be, or how simpler I could present it to you. You’re going to need to let go of your previous “views” and be open to actually learning something before this will sink in. Even then I’m betting dollars to doughnuts that nothing will anyway. You’re too thick headed, and you mistrust what I say even though your intellect is telling you that there might be a small problem in your “understanding” of the law, due to this little “pedantic” difference. But in fact the “pedantic” difference is important, and when you grasp it perhaps you’ll go ahead and understand the rest of the law a little better as well.
And perhaps after that, you can go along in the future understanding why I state, pedantically or not, that Benson is the law. And hopefully you can hear me say it without attempting to “correct” me when what I’m stating is “correct” in the first instance.
“Is it a limitation on the law?”
No, it was a limitation on a principle. Just like they explicitly said. This isn’t very hard to grasp, simple reading of the words in the quote should suffice to inform you. I think the problem is though that you confuse “the law” with “principles”. It’s a perfectly ok amateur mistake to make. Just for the love of go d, stop making it. You do it like all the time and for a huge number of topics. But it really is an amateur mistake.
“LOL – wait, you havent even goten past the LSAT yet. ”
/facepalm
Read what I posted, 6.
Since I asked the question, moving the goalpost to where it originally was is exactly that same place that I ‘moved’ it (hint: that means I did not move it).
Why the dissembling, Malcolm?
literally within 101 = eligible? Yep, Malcolm, disappointingly for you, it does look like CJ Rader is a fully signed-up member of the EPO tendency.
But that just puts off the e v 1 L day till he gets to take a view on 103, obviousness.
In the EPO that’s OK. See the discussion of very recent EPO decisions T309/10 on the K’s Law blog and T1670/07 on the IPKat blog. it would be much more problematic for the US Courts, for the reason you advance, what to do under 103 when the claimed subject matter is not just new but also indisputably clever, commercially rather than technologically.
Incidentally, the case on K’s Law cites the seminal Komvik case:
link to epo.org
which is short and beautifully written. If you read anything from the EPO, read that one.
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