UK Take on Software Patent Eligibility: Claim Must include Feature that is both Technological and Innovative

By Dennis Crouch

Lantana Ltd. v. UK Comptroller General of Patents, [2013] EWHC 2673 (Pat)

Earlier this month, High Court Judge Colin Birss released a new opinion on the European view of software patentability as seen through the eyes of an English judge. The basic rule coming from the EPC is that "programs for computers . . . as such" are not patentable. EPC Article 52. This particular case arises from the refusal of the UKIPO (not the EPO) to grant a patent to Lantana. However, the UK Patents Act of 1977 implements Article 52 UK roughly follows the law set down by the EPO.

Digging in, the main subject-matter related question that the UK court asks in software related inventions is whether the invention offers an innovative technological contribution beyond the computer program itself. In HTC v Apple [2013] EWCA Civ 451 and Aerotel Ltd v Telco Holdings Ltd, [2006] EWCA Civ 1371, the UK Court of Appeals explained the four-step process for determining whether a particular claimed invention meets this technological contribution requirement. The steps are:

i) construe the claim;

ii) identify the actual contribution offered by the claimed invention;

iii) determine whether the contribution falls solely within the scope of excluded subject matter (i.e., programs for computers); and

iv) determine whether the contribution is actually technical in nature.

In those cases, the courts made clear that the technical contribution could be either a technological mechanism or a technological effect.

A key point in the US debate on patentable subject matter is whether the technological (or non-abstract) contribution needs to be innovative. In the UK/EPO, the answer is yes, that contribution must itself be innovative in the way that it makes a "contribution to the known art."

Here, Judge Birss followed anything but an integrative approach to patentable subject matter. Rather, the focus is on whether the elements of the invention that qualify as subject-matter-eligible (i.e., technological) also offer an innovative contribution. Lantana argued that this approach conflated the question of subject matter eligibility with those of novelty and non-obviousness. However, Judge Birss disagreed:

Mr Beresford [Counsel for Lantana] submitted that [Judge Birss's approach] conflicted with the acceptance by the examiner that the claim was novel and non-obvious. I do not agree. Those matters [decided by the examiner] apply to the claim as a whole, that is to say the entire combination of features. The point here is a different one, i.e. that the idea of an email message containing machine readable instructions as a contribution to the art in this case is wrong. The computers in the claim are not operating in a new way. . . .

The claim has been found to be novel and inventive by the examiner and in that sense it makes a contribution of some kind to the art [when examined as a whole], but the applicant has been unable to identify anything which this claim can fairly be said to contribute which has a technical character.

Thus, the focus here is on finding elements of the invention that are both innovative and have a technical character. Although Judge Birss did not cite to the U.S. case of Parker v. Flook, 437 U.S. 584 (1978), he could have so reach out for support. In Flook, the U.S. Supreme Court similarly pushed patent applicants for an inventive concept that itself is a practical application, writing:

Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.

I suspect that the rule supported by Judge Birss here is not too far removed from that which the current U.S. Supreme Court would also fashion if given the chance. However, the current USPTO does not require that particular elemental linkage.

One important result of this approach – well recognized by Judge Birss is that the scope of subject matter eligibility shifts over time. The Lantana case involves a particular use of email systems. If the patent had been filed in the early days of email and was able to introduce an a technological mechanism that was new at the time then the application would be subject matter eligible. However, the reality is that email systems were already very well known by the time Lantana filed its application. In Judge Birss' words, the technological aspect of the invention was "conventional." As such, there was no technological contribution to be found.

In the end, the result here is that Lantana's appeal has been dismissed with the UKIPO's judgment of nonpatentability still standing.

= = = = =

As an aside, Lantana is a small US based company and the listed inventor John Wysham is the company CEO. The US version of the application (Serial No. 12/867825) was abandoned after a final obviousness rejection.

= = = = =

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246 thoughts on “UK Take on Software Patent Eligibility: Claim Must include Feature that is both Technological and Innovative

  1. 245

    Processing circuits are old. You’re wanting to convert it into something new by slapping new functionality on it. Doesn’t work in other arts, didn’t work in the Haliburton case, and yet magically does work in this art. Which you certainly already know but seem to be playing coy about.

    Of course processing circuits are old. You’re telling me that old elements aren’t allowed in other arts?

    For example, in the “programmed processor” “art” “functional” language is not “what the device is capable of doing” as it is in every other art every day of the week.

    This is the real source of any disagreement we have. I think you need to read those claims more carefully – this is a matter of grammar and logic, not anything special about a particular art. There is a real difference between a “processor capable of doing X,Y,Z” and a “processor configured to do X,Y,Z.” That’s an objective, testable, verifiable difference. If you don’t agree, then we’ll just have to agree to disagree.

  2. 244

    6, please abstain from using any invention associated with this ‘boondoggle.’

    LOL – let’s see if you can last a day.

  3. 243
      Nah, but a lot of that is also thus caused. The ruckus is the denouncement of the whole patent system as a sham by thousands of people because of the nonsense going on in this one area that is supposedly an “art”. Not to mention a slew of trolls, suits, a huge backlog at the PTO, the board etc. etc. we can throw all of that stuff in as well.

    that’s some serious pathological obsession against software patents, 6.

    Perhaps you might want to consider that the litany of horrers is actually caused by those fighting (as you do) against software. Perhaps you might wish to join your fundamentalist friend Malcolm in abstaining from using anything that is so ‘tainted’ with this software tinge – have fun in Amish land together.

  4. 241

    “If you’re talking about the 101 “ruckus,” I think you’re mistaken.”

    Nah, but a lot of that is also thus caused. The ruckus is the denouncement of the whole patent system as a sham by thousands of people because of the nonsense going on in this one area that is supposedly an “art”. Not to mention a slew of trolls, suits, a huge backlog at the PTO, the board etc. etc. we can throw all of that stuff in as well.

    “If this was the true cause of the ruckus, and if this was truly a “legal fiction,” it could have been easily dealt with under Section 112, a long time ago”

    It still can, but it’ll take the USSC to do that since a few judges of the Federal Circuit decided a long time ago to make it that way. Either that or a miracle will need to occur and the Federal Circuit itself will reverse course. Note though that this could happen as people who aren’t quite so old and out of touch get put on the bench.

    “How come this never even comes up under Section 112?”

    It does. It came up in a case just the other day, or just the other year (time flies) at the fed circ. The Federal Circuit just puts its stoic face on and soldiers on, sometimes making up brand new pronouncements to justify their earlier nonsense. For example, in the “programmed processor” “art” “functional” language is not “what the device is capable of doing” as it is in every other art every day of the week. It is instead some sort of bizarro hybrid between intended use/capable of/intentional programming product by process limitation. At least according to Newman. It’s a travesty to see this sort of nonsense every single time it happens and I feel for the defendants. And the court probably will do so until someone takes it to the supremes. The office higher ups decline to do so, though it is technically their responsibility. Why would they want to? The way things are, they’re super important and edgy, probably the sexiest bureaucracy there is. Not to mention their budget is bloated.

    Though I was heartened to hear Linn in that speech someone posted the other day talking about the court revisiting some of its earlier nonsense that was too extreme.

  5. 239

    6 admits of Office position:

      he relies on the finding in Alappat to try to say that the functional language in computer/b claims is actually not “purely” functional language. It is only “functional language”. In fact, he clearly stated that so far as he was aware (and this was his direct area that he worked in at the office) this was the office’s official position.

    LOL – and are you still buying that bridge from Malcolm?

    LOL

  6. 238

    And by the by, 6: the controlling law part will tie into the part that you have already professed ignorance about: Congress, the courts and the Office.

    You know, our intellectual honesty ‘pooch-you-already-screwed.’

    LOL

  7. 236

    “There is a big difference between a “purely functional claim” and a claim that includes structure that is distinguished over similar prior structures using “purely functional terms.””

    Obviously.

    ” One big difference you might notice is that the latter includes structure, while the former does not.”

    Yes, it has the old structure. Agreed.

    “That sounds like what your lawlyer instructor calls “functional claiming,” so if it makes you feel better to leave out the “purely,” go for it.”

    No, that’s what you (and the federal circuit and some at the office) would like to be called “functional claiming” but is actually nothing more than taking the old processor and claiming it purely functionally (aka without ever telling what the structure is). It is a legal fiction, that you only get away with because you have the backing of the federal circuit. Do not worry, the practice will come to an end in due time, the government takes so very long to act on these things.

    “However, note particularly the part of your quote where it says that the claims DO NOT run afoul of the rule against purely functional claiming”

    Yes, and note the part in my commentary about this being them getting a pass, where other arts do not.

    ” However, the seven claims at issue here are means-plus-function claims, so this isn’t very helpful for the present discussion.”

    True enough. But in either event, it’s the same ol same ol in other cases just like them.

    “Sure it may. It may not”

    Right, you don’t get a free pass, as you do with your processors, day in and day out. What I’ve been saying. This phenomena is so bad in the softiewaftie arts that a good 2/3rds of the examiners I’ve personally asked about the law in those AU’s LITERALLY DO NOT KNOW THE FIRST THING ABOUT 112. And that is simply because, in their own words “they never use it”.

    “Sure, they may. But I already told you that my claim recites a processing circuit, i.e., the particular structure.”

    Processing circuits are old. You’re wanting to convert it into something new by slapping new functionality on it. Doesn’t work in other arts, didn’t work in the Haliburton case, and yet magically does work in this art. Which you certainly already know but seem to be playing coy about.

    “That’s true, they may not. On the other hand, they may”

    And yet, again, the exception is the softiewaftie “arts”.

    ” there are no special legal requirements for functionally-described limitations.”

    I never said that there was a “special requirement”. Just like all other terms that are in the claims, their structure needs to be shown in the drawings and likewise described in the specification. It isn’t “special” at all. It is “standard”. Yet some people get a pass, perhaps you can tell us why that is LB.

    “I’m not asking the office for any special favors regarding my apparatus claims that include functional language – please go ahead and apply exactly the same rules as you do everywhere else”

    And generally that is the feeling amongst attorneys I talk to. Yet, when I do, claims to CRM’s and “processors configured to x” limitations start getting cancelled left and right.

    ” I do ask, however, that you not try to apply means-plus-function case law to claims where it does not apply.”

    Course not. Ha te the stuff, never touch it unless I absolutely have to. A boondoogle that never should have happened.

  8. 235

    … supposedly, a verbal description of how something was programmed to function is magically a description of its structure to an imaginary man.
    This is, specifically, what has caused all the ruckus for years and years.

    If you’re talking about the 101 “ruckus,” I think you’re mistaken. If this was the true cause of the ruckus, and if this was truly a “legal fiction,” it could have been easily dealt with under Section 112, a long time ago. How come this never even comes up under Section 112?

  9. 233

    But now that you are aware of the difference between functional and purely functional claiming look out for the terms in judicial decisions. They’ll pop up from time to time.

    Thanks for the heads-up. However, I was already quite aware of what “purely functional claiming” is, which is why I was very careful with what I said. There is a big difference between a “purely functional claim” and a claim that includes structure that is distinguished over similar prior structures using “purely functional terms.” One big difference you might notice is that the latter includes structure, while the former does not.

    Again, what I said was “When a claim includes a processing circuit, the relevant (i.e., distinguishing) aspects of that processing circuit (and of the claimed apparatus as a whole, in some cases) can be defined in solely (or purely) functional terms.” That sounds like what your lawlyer instructor calls “functional claiming,” so if it makes you feel better to leave out the “purely,” go for it.

    One example:
    “Those seven claims do not run afoul of the rule against purely functional claiming, because the functions of ‘processing,’ ‘receiving,’ and ‘storing’ are coextensive with the structure disclosed, i.e., a general purpose processor.).”

    That’s an OK example. However, note particularly the part of your quote where it says that the claims DO NOT run afoul of the rule against purely functional claiming. However, the seven claims at issue here are means-plus-function claims, so this isn’t very helpful for the present discussion.

    Notwithstanding the permissible instances, the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite.

    Sure it may. It may not.

    Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353 (Fed. Cir. 2010) (en banc).

    Sure, they may. But I already told you that my claim recites a processing circuit, i.e., the particular structure.

    Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340.

    That’s true, they may not. On the other hand, they may.

    You’ll note that all of the case law in that MPEP section you quote keeps coming back to the first and second paragraphs of Section 112. Once again, unless the draftsperson has invoked the 6th paragraph, there are no special legal requirements for functionally-described limitations. I’m not asking the office for any special favors regarding my apparatus claims that include functional language – please go ahead and apply exactly the same rules as you do everywhere else. I do ask, however, that you not try to apply means-plus-function case law to claims where it does not apply.

  10. 232

    Sorry Malcolm, but your statement at 2:38 has no point (your stale script of feigned ignorance simply clashes with that ‘superb’ skill of yours with English as a first language).

    Try again.

  11. 230

    I am talking about steps that are not completely mental steps but merely have elements that are mental steps, right?

    Nobody knows what you are talking about, Tr0 llb0y, including you. Maybe you could try harder to be clear instead of simply digging in your heels and screeching tht everyone else is ignorant?

    Oh, right. That’s not how you were raised by Daddy Quinn.

  12. 228

    6,

    You do realize that ‘purely’ is a Malcolm move-the-goalpost move, just like his “completely” mental steps move when I am talking about steps that are not completely mental steps but merely have elements that are mental steps, right?

    Open your eyes, son.

  13. 227

    Except of course in the softiewaftie arts because there they get a free pass because, supposedly, a verbal description of how something was programmed to function is magically a description of its structure to an imaginary man.

    This is, specifically, what has caused all the ruckus for years and years. It’s a piece of legal fiction created based on cases that were not on point, at all, and created specifically with a goal in mind by a few people on the Federal Circuit looking to enlarge their domain of influence.

    Yes.

  14. 226

    where that particular requirement might come from.

    The requirement to claim compositions of matter and articles of matter in structural terms? Where did that requirement come from?

    My initial answer is “common sense.” Without that requirement, applicants might as well just claim the new “functionality” as their “invention”. And isn’t that exactly what we see in the softie-woftie arts? Does 101 permit the claiming of “new functionalities”? Just because the claim includes a magic word? My second answer is the Fed Cir’s reasoning about the purpose of composition/article claims in cases like Eli Lilly v. Ariad, and Abbot v. Sandoz and the Supreme Court in Halliburton (“The language of the claim thus describes this most crucial element in the ‘new’ combination in terms of what it will do rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus.”).

    I’m aware, as I’ve stated before, of one bona fide “legally recognized” exception to the requirement and it’s the so-called “antibody exception” (an exception that should have been abolished long ago, imho).

    Below you write: “the question is whether the terminology in the claim connotes (to the skilled person) enough structure so that the requirements of 112(b) are met.” I agree to the extent this means that there must be some unambiguous structure that anyone skilled in the art would understand is the structure that achieves that function and that’s what your claim should be limited to. It can’t be enough that “enough structure” is merely “some undefined structure that you’ll figure out when you try to make the new functionality I’ve described — but trust me, it’s there and it’s new!”

  15. 225

    “But if you’re suggesting that every element that is described in functional terms is treated as a means-for limitation then you’re wrong.”

    I, personally, am not suggesting anything, much less something related to means p f. The office, and the USSC, have in the past, and would conceivably in the future, suggest that you’ve got to show us what it is that is performing the function. And this is required above and beyond the make and use enablement req. I am however repeating to you precisely what they require, in fact it’s in the MPEP. Except of course in the softiewaftie arts because there they get a free pass because, supposedly, a verbal description of how something was programmed to function is magically a description of its structure to an imaginary man.

    This is, specifically, what has caused all the ruckus for years and years. It’s a piece of legal fiction created based on cases that were not on point, at all, and created specifically with a goal in mind by a few people on the Federal Circuit looking to enlarge their domain of influence. Not to mention that it leads to, as anon says, courts “making findings of fact as a matter of law”. As ludicrous as that notion.

    But now that you are aware of the difference between functional and purely functional claiming look out for the terms in judicial decisions. They’ll pop up from time to time. One example:

    “Those seven claims do not run afoul of the rule against purely functional claiming, because the functions of ‘processing,’ ‘receiving,’ and ‘storing’ are coextensive with the structure disclosed, i.e., a general purpose processor.).”

    ^Right there is an example of the computer arts getting a free pass from the federal circuit. They do it rather routinely. But then pull up a case from another art. BAM, people get busted over the prohibition on purely functional claiming routinely.

    You will also see people use the term “purely functional” in regards to 112 6th limitations sometimes as well. In that arena they’re talking about the claim itself being purely functional language even though there is a structure in the spec for it to refer to.

    Two different usages of the same phrase. It kind of confuses things.

    Here’s a quote from the MPEP about the topic that follows the office’s position exactly.

    Notwithstanding the permissible instances, the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs “when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty”) (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)); see also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234 (1942) (holding indefinite claims that recited substantially pure carbon black “in the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior”). Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353 (Fed. Cir. 2010) (en banc). Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340. For instance, a single means claim covering every conceivable means for achieving the stated result was held to be invalid under 35 U.S.C. 112, first paragraph because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim. Hyatt, 708 F.2d at 714-715. For more information regarding the written description requirement and enablement requirement under 35 U.S.C. 112, first paragraph, see MPEP §§ 2161-2164.08(c).

    link to uspto.gov

    You will note that there are times where we may give people a pass even if they didn’t put the structure in the spec (I’m talking about a non-mpf limitation here). Sometimes the features that make the function happen are old and well known, and so we just consider them to be implicit in the spec and don’t worry about it. What we’re worried about is when it is a novel feature being recited purely functionally, aka when they never set forth what structure or step actually does the function.

    “but I assure you that my inventors have possession of all of them.”

    Your assurances are nice, now go ahead and demonstrate such in the application.

    “Breadth does not necessarily suggest a written description problem any more than it suggests indefiniteness.”

    Nope, but your failure to set forth even one single structure that you supposedly possess does.

  16. 224

    102/103…ineligible

    LOL – try reading your precious 9-0 dance a jig Prometheus decision again Malcolm where that idea was flat out rejected.

    LOL – do you need an office link?

    Once again, Malcolm attempts to obfuscate and conflate patent eligibility and patentability.

    And once again, plainly busted for his dissembling B$.

    You really do svck at this Malcolm.

  17. 223

    Not at all.

    All.

    You are still missing the point (but keep those eyes clenched tight while you continue to yap)

  18. 222

    The genus of… configured to…

    LOL – loving it (by the way, even Malcolm self-volunteered that “configured to” is structural language).

  19. 221

    So, as a whole, I have to go with MM on this one

    LOL – one more sucker for you Mr. Barnum.

    Love the dusty shoes.

  20. 219

    You quite miss the point that Congress has distinctly NOT used 101 to outlaw this (apparently) ‘abstract’ subject matter

    Not at all. The AIA says to ignore the “tax strategy” limitations under 102/103. I just wonder why Gene finds that “bizarre” when that’s exactly the statute that he has suggested over and over should be used to keep applicants from obtaining claims which protect ineligible subject matter (e.g., claims such as Prometheus’ claims).

    Anyway, I’m not really interested in your opinion of Gene’s opinion. We all know that your admiration for Gene is pretty much boundless.

  21. 218

    First I take it you mean that they were claimed thus, but that the actual structure (or method step) was set forth in detail in the specification. Second, if that be the case, you need to stop saying “purely” then, in patent parlance that isn’t “purely”. Try using “solely” instead.

    I wasn’t aware that “purely” was patent parlance. I’m OK with “solely.” However, I’ve never been talking about (nor have I ever written) an apparatus claim that is “purely functional.”

    Here’s the most important thing I said, edited according to your suggestion: “When a claim includes a processing circuit, the relevant (i.e., distinguishing) aspects of that processing circuit (and of the claimed apparatus as a whole, in some cases) can be defined in solely functional terms.”

    You suggest that the actual structure must be “set forth in detail in the specification.” Yes, the specification must include sufficient detail that the skilled person can make and use my claimed invention. But if you’re suggesting that every element that is described in functional terms is treated as a means-for limitation then you’re wrong. Unless I use the magic words “means for,” the question is whether the terminology in the claim connotes (to the skilled person) enough structure so that the requirements of 112(b) are met. Section 112(f) is and was intended to provide a handy shortcut for the draftsperson, it’s not a separate requirement for patentability that somehow provides an extra gloss on 112(b).

    The difference is between having demonstrated possession of the genus of things that will perform the function in your specification.

    The genus of “processing circuit configured to carry out processing steps A, B, and C” is pretty broad, but I assure you that my inventors have possession of all of them. Breadth does not necessarily suggest a written description problem any more than it suggests indefiniteness.

  22. 217

    So, you concede that functional claiming is used even in the “grown-up” art. Since you provided the particular example, we know that you hold that claim up as a stellar example of claiming. Therefore, you concede there is nothing wrong with functional claiming whether in be used to describe a computer implemented method of data processing or a method of creating electrical connections.

    Wonderful.

    Welcome to the Dark Side.

  23. 216

    Um according to courts that actually cannot be done. You have to plug the thing in and see how it operates to determine infringement. You’re not going to take a picture of a new MS word CD and say “yep that totally infringes on patent hawks old patent”. You have to plug it in and see it working on a given computer. There’s a difference.

  24. 215

    “The problem is that the set is very large so that functional language is used.”

    And thus correspondingly difficult to show possession of. Unless of course we give you a free pass, for no reason.

  25. 214

    “purely functional terms.”

    When you throw “purely” into that phrase there are a lot of lawlyers that disagree with you. Indeed, one such lawlyer taught a class I took just the other day and clearly distinguished between what he meant by “purely functional” and “functional”. Also he notes that Haliburton back in the 40’s was right on point, and still is. Frankly I’m rather on board with those lawlyers. Also, that particular lawlyer loved software since it was his field, and he relies on the finding in Alappat to try to say that the functional language in computer/b claims is actually not “purely” functional language. It is only “functional language”. In fact, he clearly stated that so far as he was aware (and this was his direct area that he worked in at the office) this was the office’s official position.

    So, as a whole, I have to go with MM on this one, you want to bring in pure functional language (i.e. where you haven’t told what actual structure(s) produce that function and shown good possession of the whole genus) you get your arse handed to you on 112 2 grounds for not definitely defining the claim. And that is, so far as I have been instructed by people who’s job it is to know exactly this, is the official position of the office.

    The difference is between having demonstrated possession of the genus of things that will perform the function in your specification.

    ” They are structurally different from the prior art. However, those distinguishing structural differences are described to the skilled person in purely functional differences.”

    First I take it you mean that they were claimed thus, but that the actual structure (or method step) was set forth in detail in the specification. Second, if that be the case, you need to stop saying “purely” then, in patent parlance that isn’t “purely”. Try using “solely” instead.

  26. 212

    Did you miss the day in paent class that they covered “Semantic (and Pedantic) Uses of English as a First Language”?

    (that was sarcasm, Leopold)

  27. 210

    It’s a blog Leopold.

    Get over the misspellings.

    (LOL – and look at who you aim your arrow at – yet again, while the actual point here is that your beloved cannot be bothered to use his vaunted English as a first language skills)

    Classic indeed – just not how you thought, Leopold.

  28. 209

    It is not ‘beliefs’ that will get you banned Malcolm.

    Nice attempted spin – and my how belief-driven you become when the spin suits you – just like the fundamentalists.

    Rather, what gets you banned are misstatements of law or fact.

    LOL – you wouldn’t last a day. No wonder you feel the overwhelming urge to take shots at a guy who doesn’t even post here.

  29. 207

    If the prior art is any computer running any software

    LOL – Ned – read the article.

    Note the similarities as to why Stevens in Bilski lost his majority decision.

    Further, note your own words here and the similarity to a certain Morse claim – and why such similarity must dictate that one cannot rule out ALL future invention by use of such terms as you would use – ‘any‘ computer and ‘any‘ software.

    Also further note your pathetic misrepresentation once again of attempting to “merely run” – as opposed to configuring a machine with software.

    Plain and simple Ned – our law is different and does not nudge toward Europe. Quite the contrary, Congress has shown (exactly as in Bilski that software cannot be taken out of the patent eligibility of 101.

    Just like business methods.

  30. 206

    and objectively determine through examination of its structure whether that circuit falls within the scope of your claims …

    Certainly the terms I use allow one to objectively determine whether a particular apparatus falls within the scope of my claims – that’s a basic requirement of Section 112(b). However, I don’t know exactly what you mean by the limitation “through examination of its structure,” or where that particular requirement might come from. I’ve not seen it anywhere in my studies.

  31. 203

    Yet another response that proves you have no argument to make against what I said.

    Therefore, you clearly concede the point.

  32. 200

    LB: They are structurally different from the prior art. However, those distinguishing structural differences are described to the skilled person in purely functional terms.

    If the terms you use allow one skilled in the art to take a circuit (or any other article or composition) and objectively determine through examination of its structure whether that circuit falls within the scope of your claims, then the terms you are using are not “purely functional.” This sounds more like a disagreement about semantics than a disagreement about the underlying issue(s) …

  33. 198

    And, I am certain that those “functional” claims convey a very definite set of solutions to one of ordinary skill in the art. The problem is that the set is very large so that functional language is used.

    Of course, Lemley knows that. You know that. You are both unethical, liars, and willfully ignorant.

  34. 197

    Either stop whining or clearly state that your position is: that ALL PATENTS should be abolished

    “Either stop whining or clearly explain when you stopped beating your wife!”

  35. 196

    Max, the problem is that without defining what the prior art it, we don’t know what the drafters had in mind. If the prior art is any computer running any software, then I would agree that the statute nudges toward Europe.

  36. 195

    Night, the British people turned on Turing, a great war hero for his work at Bletchley Park? I doubt it.

    But they did turn out Winston after he won the war.

    Ingrates.

  37. 194

    Penultimate sentence should read: “However, those distinguishing structural differences are described to the skilled person in purely functional terms.

  38. 193

    At the risk of co-mingling the legal terms with the terms of the art, one can’t claim the a new circuit solely based on its new “specifications.”

    I didn’t say you could. I did say that when a claim includes a processing circuit, the relevant (i.e., distinguishing) aspects of that processing circuit (and of the claimed apparatus as a whole, in some cases) can be defined in purely functional terms.

    It’s just that such a claim risks being tanked on the grounds that it’s described (or distinguished from the prior art) in purely functional terms.

    Hmmm… I think we’ve had this discussion before. The claims I’m talking about aren’t “distinguished from the prior art in purely functional terms.” They are structurally different from the prior art. However, those distinguishing structural differences are described to the skilled person in purely functional differences. Where does it say that I can’t do that?

  39. 192

    DH states “and do not understand what software does

    And is exactly right.

    That’s also why the dependence on the word ‘technical’ fails right form the start. Software automatically passes the technical filter – by its very nature.

    Thus you see the gobbedlygook treatment of an added ‘further technical effect’ dance, and the EP conflation in an attempt to make the term ‘technical’ mean something else, something much closer to the different words used in US jurisprudence: the useful arts.

    And remember, US courts have already determined that there is no ‘technical arts’ test in US patent law. US patent law – at the most basic level – is not constrained to the technical. So even importing that word into US law – as is being attempted – will still not suffice to carry the anti-software patent agenda.

    WHATEVER conflation, canards of Point of Novelty, mental steps doctrine and its negation by anthropomorphication and the rest of the semantic game-playing are all evidence of a philospohical battle to limit patent eligibility of something that no rational reasoning can support.

    Plain and simple: software is a machine component, a manufacture created by man with a utilitarian purpose, and thus fully falls under the intended protection of patent law.

    All else – and I do mean all else – is merely smoke and mirros, dust-kicking and agenda-seeking manipulation of law that can only have ill-effects throughout the patent system.

  40. 191

    You quite miss the point that Congress has distinctly NOT used 101 to outlaw this (apparently) ‘abstract’ subject matter – and further, much like Bilski (actually exactly like Bilski, the Court will have to rewrite the actual words of Congress if it wants to hold that software is patent ineligible.

    LOL – but please, contine to close your eyes and vacuously prattle on. After all, that is your specialty.

  41. 190

    Ned runs away from my points, do you really expect any different behavior with yours?

    Feel free to use the merry-go-round metaphor.

  42. 189

    And of course this is not to say that you can’t obtain a patent

    Translation: backpedal faster!

    LOL – and Malcolm, how about your dissembling with the distinction between manufacture and composition?

    What? What? I cannot hear you. What?

  43. 188

    I was startled to read this today on Gene Quinn’s blog:

    “Tax strategy patents are still patent eligible subject matter pursuant to Section 101, but for purposes of evaluating an invention under section 102 or 103 of title 35, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, is deemed insufficient to differentiate a claimed invention from the prior art.”

    Sounds like “dissection” to me! Gene Quinn says he finds the AIA provision “bizarre.” I wonder why? I thought 103 was the place where he believed that all the filtering of j*nk was supposed to take place?

  44. 187

    Malcolm,

    Your QQ here is bogus, as it is clearly you that permeates this thread (and any such thread) with vacuous rants in pursuit of your agenda and away from any substantive discussion on the merits of intellectual property.

    As just one minor example, you continue to dissemble when it comes to the scope (and differences) of copyright and patent protection. Clearly, such is beyond your ken – or at least beyond the script of your agenda.

    You.
    F001.
    No.
    One.

    But please, keep yapping.

  45. 186

    The term “manufacture” refers to articles that are made, and includes all manufactured articles.

    The same rules apply to compositions of matter and articles of manufacture in this fundamental context (i.e., what must appear in the claim).

    it is disingenuous to purposely confuse these words

    Huh?

  46. 185

    LOL – you seriously want me to repeat my post of 4:00?

    And you accuse me of wanting to fling insults?

    LOL – Come, man, use that ‘vaunted’ skill of English as a first language.

    Learn to red.

    Then explain.

    Instead of vacuous QQ and dust-kicking, let’s see something (anything) substantive from you.

    Do you need me to buy you some oven mitts first?

  47. 184

    The metes and bounds of a composition of matter can not be defined in purely functional terms and “clearly” inform anyone of anything except what the function of the invention is.

    No, but the relevant aspects of a processing circuit can.

    This is impossible to respond to without seeing exactly what you’re referring to. At the risk of co-mingling the legal terms with the terms of the art, one can’t claim the a new circuit solely based on its new “specifications.” It’s the physical layout and electrical connections (the “relevant aspects”, no?) that need to be recited. That’s not “pure functionality.”

    And of course this is not to say that you can’t obtain a patent on a claim that fails to meet these criteria. It’s just that such a claim risks being tanked on the grounds that it’s described (or distinguished from the prior art) in purely functional terms.

  48. 182

    Asked and answered many many many many times.

    Why the strawman Malcolm? Why the dissembling?

    Let’s see some actual answers from you – for a change.

  49. 181

    Maybe if Tr0 llb0y would s tf u with his insults and innuendo, he’d learn from LB what a decent discussion looks like. As it stands, Tr0 llb0y and NWPA seem to willfully do everything in their “power” (I use the term loosely) to prevent that discussion from taking place. Go figure.

  50. 180

    I provided two phrases that describe two different acts

    So Tr0 llb0y says. But rather than simply tell us what those ‘two phrases’ are, Tr0 llb0y would rather fling insults. Then again, that’s all Tr0 llb0y really does here, all day long. THat’s his specialty.

  51. 179

    ‘ve answered this

    No, you haven’t. If you’d answered it so many times we’d all know the answer. So what’s the answer? Yes or no?

    It’s yes, right? You believe that purely mental processes should be eligible for patenting? Right? Yes or no?

    Simple question. Why not just answer it? What’s the problem, exactly? Ashamed? That seems the most likely explanation for your strange refusal to simply spit it out.

  52. 177

    was being sincere

    So sincerity is a character trait you wish to have but intellectual honesty you disdain.

    And you don’t see a problem with this?

    LOL – you want to be genuinely disingenuous.

  53. 176

    “Without any attempt to address the substance of my comment, Les merely requests an example of a claim of the type I referred to. ”

    The request of a concrete example, was to aid in addressing the “substance” of your comment. If I had found the example on my own, you would have accused me of cherry picking.

    6 provided an example since you couldn’t or wouldn’t and I showed how, just as in the case of software, claims in the “grown-up” arts are functionally claimed.

    Both the gas and the “energy beam” of the “grown-up” art claim that 6 provided are functionally specified.

    The claim preempts all uses of energy beams and gases with those functional properties whether known or contemplated by the inventor or not.

    Either stop whining or clearly state that your position is: that ALL PATENTS should be abolished, comrade.

  54. 175

    NWPA,

    If only Leopold was consistent in this manner.

    But far too often he acts like Malcolm’s personal lapdog and is more a party to the shenagins than a voice of reason against such dissembling.

  55. 174

    I was startled to read this today on Gene Quinn’s blog:

    “Tax strategy patents are still patent eligible subject matter pursuant to Section 101, but for purposes of evaluating an invention under section 102 or 103 of title 35, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, is deemed insufficient to differentiate a claimed invention from the prior art.”

    because it reminded me of the EPO way of handling claims to business methods and programs for computers.

    I wonder, did Rader CJ influence that particular piece of statute-drafting?

  56. 171

    One other point about this that I would make:

    MM, 6, and AEAEAEIO, do behave abysmally on this board. They clearly lie, misrepresent, remain willfully ignorant, and have no desire to narrow the issues. They kick up dust and love it.

    But, this board is a microcosm of what is going on in the broader world. We have Posner who pschotically makes up findings of fact. Lemley who remains willfully ignorant and commits ethical violations with none of the professors on this board caring. It is about taking home the money. We have Lourie who has devised a test where all the facts and law go on with one giant whoosh in his filthy brain. Frankly, Lemley, Posner, Lourie are worse than 6, MM, and AEAEIO.

    They are far worse. Lemley is unethical and yet is cited by the SCOTUS.

  57. 170

    Frankly, anon, I thought that LB’s response to MM was really good. It focused the discussion on the fact that it was MM’s burden to show why there was something wrong with the claims rather than go into the depths of MM’s bizarre misrepresentations.

    MM tried to throw out a bunch of red herrings, but LB brought the discussion right back where it belonged. What is the matter with this claim. And, MM’s response. Sheer nonsense.

  58. 169

    Perhaps you disagree but only feel compelled to voice your disagreement with others.

    Or perhaps I disagree, so I express my disagreement by responding to MM with “No, but the relevant aspects of a processing circuit can.”

    Perhaps you don’t understand what a grown-up conversation is like.

  59. 168

    So, another thread ends with the Palin boys spewing forth endless nonsense. Anyone really care? If you do, read the whole thread. The Palin boys are ridiculous.

  60. 167

    Somehow Ned I am sure that you won’t engage in a debate with me because you views are ridiculous.

    I wonder if you English have a hard time with information processing (you seem stuck pre-1950) because you turned on the greatest computer scientist (Turing) ever to live because of his sexual orientation.

  61. 165

    can’t even bring himself to state his beliefs on the subject one way or another.

    Blatant 1ie Malcolm. I’ve answered this and explained your strawman now hundreds of times.

    But since you seem to now want to be big on explanations, explain (and that means more that derisively throw out a one-liner concerning sight-impaired squirrels) who was right in the Myriad case and why.

    LOL – 30,000 plus mewling words of QQ and you have yet to use your ‘mastery’ of English as a first language to explain this.

  62. 164

    Malcolm and his spin:

      Les conclusively states that the example proves his horsesh*t proclamation that “all claims

    Funny, Les did NOT state ALL claims.

    But you knew that, right Malcolm?

    But this is the rampant type of horsesh*t that you find perfectly acceptable – misstate what others have stated; spin facts, spin the law, it never stops – just [shrug] and stand-by the absence of intellectual honesty in your posting ‘style’ Malcolm.

    @ta boy.

  63. 163

    I’ll be right here not holding my breath.

    LOL – and not fulfilling your promises either.

    What’s even funnier is that this is the same ‘tough guy 6’ that threatened to expose the identity of pseudonymous bloggers, that whined about ‘character assassination’ of pseudonymous bloggers, but then obliterated his own ‘character.’

    Way too funny.

    (sorry, no youtube clip for this level of futility)

  64. 161

    Leopold,

    You need to be a but more direct with Malcolm when he is attempting his dissembling spin.

    For example, Malcolm is trying to confuse things by labeling manufactures as compositions.

    From link to uspto.gov :

      The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles that are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.

    Clearly it is disingenuous to purposely confuse these words, and since Malcolm is a professed ‘master’ of English as a first language, his choice of doing so must be on purpose.

    Perhaps you do perfectly understand the subterfuge Malcolm is engaged in (which would engender the question as to why you remain silent in that knowledge).

    Perhaps you disagree but only feel compelled to voice your disagreement with others.

    Either way, it does not change the fact that Malcolm engages in rampant deception in the pursuit of his agenda. You may choose to be silent on this, but please, don’t attempt to force your choice of silent acceptance on others.

  65. 159

    Sometimes it is not easy understanding Malcolm’s
    (It’s all done with computer models)
    [][]the way by hand is to work backwards with correction’/input)s(.]]
    ((MALCOLM’S UNDERSTANDING EASY NOT IS IT SOMETIMES[]
    link to en.wikipedia.org
    Patent eligibility is based on a tautology.
    TAZATOLOGY A. ON BASE.D IS IN/ELIGIBILITY PATENT

    based on tautologies. Not logic
    LOGIC NOT TAUTOLOGIES ON BASE

    link to youtube.com
    33:11
    ONE.OF.ONE..ONE.OF.ONE…UNIVERSE IS FILL WITH REDUNDANCY[]
    Let me hose it down with cool water
    WATER COOL WITH.DOWN.IT HOSE ME TEL..IDEAS ABSTRACT IN BELIEF WHY IS THAT?
    VALUE’.RHETORIC..RHETORIC.VALUES//messy

    link to gigaom.com

    link to youtube.com

    Where is the Innovation? Government Sponsorship vs the Private Sector

    link to opengov.ideascale.com

  66. 158

    Lotta heat here. As usual.

    Let me hose it down with cool water. Patent eligibility is based on a tautology. Just like God. If something preempts an abstract idea, it is not patent eligible. Assuming you know what an “abstract idea” is to begin with. Which you don’t, because the Supreme Court can’t define it. Ergo, our little tests – like those in Europe – are based on tautologies. Not logic.

    That is why belief in abstract ideas is like belief in God. You either buy into the tautology or you don’t. This does not mean some tautologies are false. What it means is, the difference between the Supreme Court’s tautology and God is, God knows He is not a tautology.

  67. 157

    The problem is Ned that you are ignorant of information processing. Of course, software is technical. It performs a transformation of information. It takes time, energy, and space to transform the information.

    Odd that you English having Turing and Newton do not understand this.

  68. 156

    as in the density of smellable molecules

    LOL – what a F”n reach.

    Someone call a medic for Malcolm.

    And yet again – the “N” word use and defense of 6’s use is all you.

    You need to own what you shoveled.

  69. 155

    No, Malcolm. Vacuous is the accurate description, and it applies to your post.

    And it was not me that brough in Hal Wegner (read much?) Maybe read at all? The reference was supplied in the initial post by Prof. Crouch.

    But please, keep yapping.

  70. 154

    LOL – this is all in the archives Malcolm.

    Just because you wish to obfuscate things and kick up as much dust as possible does not mean that I am going to hold your hand on phrases such as ‘as a category’ that anyone – let alone someone who has such a ‘vauneted level’ of skill with English as a first langauge – should readily understand.

    As to ‘effectively’ what was that case that you kept on losing your understanding? Oh, that’s right: Myriad

    LOL – how did that work out for you?

    Tell me again who was right in that case and why?

  71. 153

    LOL – your feigned and projected ignorance script is rather stale, Malcolm.

    It’s quite simple. I provided two phrases that describe two different acts (you really asked what the two phrases are? Really?).

    You (apparently) cannot distinguish between the two, and FAIL to recognize why this difference makes you an @ssh@t – consistently – even perpetually.

    Try again (or for the first time).

  72. 151

    It can

    Perhaps.

    Perhaps not.

    The critical point is that it IS not.

    Maybe you can explain that to Ned.

    LOL – maybe not.

  73. 150

    Simply put Ned – our law is different.

    The fact is that you don’t get this. Thus, you think those that actually uphold our actual law are ‘brigands’ when actually it is you that is simply not applying the actual law.

    It is as simple as that.

  74. 149

    The metes and bounds of a composition of matter can not be defined in purely functional terms and “clearly” inform anyone of anything except what the function of the invention is.

    No, but the relevant aspects of a processing circuit can. I just did it this morning, for a pretty interesting invention.

  75. 147

    Nice vacuous post

    More like “nice accurate” post, Tr0 llb0y, but since when can you tell the difference?

    You brought Hal Wegner as some sort of guru like figure who’s pronouncements deserve respect because … Hal Wegner!

    I really could care less what Hal Wegner thinks and I told you why (the reason I provided is not the only reason, of course).

  76. 146

    explain the difference between the two phrase,

    Looks like Tr0 llb0y is having trouble again. Spit it out Tr0 llb0y! You want something? Learn how to ask for it in English so the rest of us don’t waste time arguing with you about whether we “should have known” what you were babbling about when you move the goalposts.

    Something about “two phrases” is of interest to you for some reason? What’s the reason? What are the phrases? And why can’t you understand the difference and explain the difference yourself? Do you lack the intelligence, or do you simply have some point to make but you can’t make it clearly because your English skills are that of a 13 year old who self-taught the language to himself while reading and writing comments in AmericaOnline chatrooms?

  77. 145

    Asked and answwered

    Patent Jeebus, King of Arguments! He has much time to insult others … but time to answer questions explaining the basis for the insult? Please. Let Patent Jeebus do what Patent Jeebus does best. And bow down (that last part is really important).

    this is the guy who occasionaly blanks out on what the word ‘effectively’ means…

    Wait, this is the guy who voluntarily admitted that he needs to wear an ankle bracelet when he leaves the house.

    Fun game, Tr0 llb0y. You want to start the next turn?

  78. 144

    It IS interesting how close the English are to the US Supreme Court on this issue. If what makes the claim novel is non technical … The software itself is non technical.

    Why can’t US law be as simply put as this?

    We, because as I see it, the likes of Rader think computer software IS technical even if all it does is compute price.

    Now there we have it.

  79. 143

    explain how you smell thickness

    Thickness = density, heaviness, denseness, as in the density of smellable molecules per foot of air; the “stronger” the smell, the greater the thickness

    Nice try, Tr0 lb0y. What next? Do you want to accuse me of being prejudiced against blacks? Did I just “torch my agenda” by defining “thickness” thusly?

    Gosh, I can hardly wait to see where the Magic Tr0 llb0y Insult Wheel lands next.

  80. 141

    It is highly doubtful Malcolm that you can actually smell anything over the stench that surrounds you and your duplicity.

    But regardless, maybe you can use that English as a First language ans explain how you smell thickness: “The smell… is getting pretty thick

  81. 139

    Can’t answer the question?

    LOL – maybe you can try to answer the question first asked of you instead of moving goalposts and kicking up dust?

    Sounds pretty novel to you, no doubt.

    Give it a try.

    (LOL – we both know why you are avoiding even tryign to give a substantive answer on copyrights – you don’t know JACK)

    As to your comments and use of the “N” word – hey – you are the one that used it and you are the one that defended the use by 6. Sorry but that ALL is a ‘you’ problem. You are going to have to deal with it (hint: try thinking a bit before you type out your CRP replies).

  82. 138

    Max, I fully agree on Keith and Colin. They are skillful advocates. I have had many good conversations with Keith about English patent law, Just as I have had with you.

  83. 137

    Perhaps you should try to use that ‘famous’ English as a first language and explain the difference between the two phrase, Malcolm?

    LOL – or perhaps you have not done as I asked – or perhaps you have, and you are just persisitng in your dissembling ways.

    Maybe you should find something else – something you don’t svck so bad at?

  84. 136

    Youknow, actual explanations

    LOL – Asked and answwered, Malcolm.

    Come now, You do understand what ‘as a category’ means – that does not even take the ‘super’ level of skill that you possess with your English as a first language.

    Wait – this is the guy who occasionaly blanks out on what the word ‘effectively’ means…

    LOL

  85. 135

    I was being sincere. That’s the worst thing about my alleged “ad hominem” “attack”.

    And to be clear lester, gases supposedly being magical is not a “fact”. But I’ll tell you what, if you want to present some evidence that establishes that “fact” I’ll review it.

  86. 134

    The EPO “test” – it’s more an approach – arose from the need of putting the law – the EPC – into practice. U.S. law is different from the EPC, sure, and there is no Art. 52(2) EPC to test. Although sometimes I hear that 35 USC 101 somehow “corresponds” to Art. 52(2) EPC, in my opinion this is a misconception, for a number of reasons that I am not going to explore here.

    It is true that, right now, there seems to be no consensus in the U.S. judiciary on what should be the proper approach for assessing compliance with 35 USC 101, and that in the resulting debate the themes discussed are similar to those explored in relation to Art. 52(2)(c) EPC, but that’s not a reason to advocate a wholesale import of the EPO “Comvik” approach (or the UK “Aerotel” variant, which for practical purposes operates in the same way) into U.S. practice. On the contrary, such a move would not make sense, in my opinion, if not accompanied by a corresponding legislative change.

    What I hope, however, is that when things will finally clear up, the U.S. approach will be similar to the European one in the sense that it will allow an easy determination of whether a claim is patentable/eligible or not in the vast majority of cases.

  87. 133

    They make no attempt at a fair argument.

    Right. Without any attempt to address the substance of my comment, Les merely requests an example of a claim of the type I referred to. An example is immediately provided to Les. In response, (surprise!) Les conclusively states that the example proves his horsesh*t proclamation that “all claims are just as functionally claimed as software claims.”

    If that’s your idea of a fair argument, then here’s another one: you’re always wrong about everything except when I tell you that you’re not. Got that?

  88. 132

    what does that have to do with information processing

    It has everything to do with, e.g., compositions of matter that are claimed by the recitation of their (allegedly) “new” information processing functionalities.

    That’s pretty obvious. But go ahead and pretend that it’s not. That’s a really effective way of “winning”, in your mind. Enjoy it. Let other people enjoy you enjoying it. The more fun you have sticking your head in the sand and waving your behind in the air, the more convincing your “arguments” become. Seriously. So please do keep your great work.

  89. 131

    I agree with you Les. You did a good job proving the point. These guys are not worth caring about. They make no attempt at a fair argument.

    But, then neither do Lemley, Posner, or Lourie.

  90. 130

    Soap? LOL

    What’s the matter, Tr0 llb0y? Can’t answer the question?

    Fun game, Tr0 llb0y.

    Are you going to start the next round, as usual?

    Want to try accusing me of being prejudiced against blacks again, Tr0 llb0y? Because that worked sooooo well for you last week. Ask your father/priest Reverend Gene what he thinks about that card. I’m really curious what he has to say. He seems to really like your company. I wonder if he’s aware of how his li’l disciples act.

  91. 128

    the archives have your actual self-volunteered admission in black and white.

    Sure they do. They also contain the complete history of the times your parole officer busted you in your bathrobe in the stairwell of the elementary school.

    Fun game, Tr0 llb0y. Are you going to start the next round, as usual?

  92. 127

    Business methods as a category

    What is that supposed to mean? If you categorize something as a “business method” then it’s immediately eligible? Go ahead and explain exactlly what you mean by “business method”, Tr0 llb0y.

    What about a purely mental process of deciding what asking price to place on your vintage Star Wars T-shirt (the one with the kool-aid stains)? Is that an “eligible business method”? Please let us know. Or is that not part of your script? You know, actual explanations of what the eff you are rambling on and/or insulting other people over. Let’s hear it.

  93. 125

    the facts are irrefutable.

    Not one, but three Patent Jeebuses telling everyone that “software is exactly like everything else (except when it isn’t)”? Wow. What’s behind door number 4?

  94. 124

    Soap? LOL – How about you actually answer the question put to you?

    Having trouble with that?

    We both know why.

    Trying to kick up more dust with your projected fantasies won’t hide the fact that you refuse to answer questions on intellectual property.

    You might try understanding that difference sometime.

  95. 122

    also volunteered knowing that you’re

    LOL – look up ‘admission against interest.’
    Compare that to ‘baseless accusation’ of another.

    LOL – you need to find something else to do Malcolm. You svck at this.

  96. 121

    “Actually, Examiner 6, the inventor is presumed to know how best to claim their invention. The burden is on you, 6. Not the other way around.”

    Which is relevant to them not getting a free pass as the software arts do because…

  97. 120

    Like I said, Malcolm – the archives have your actual self-volunteered admission in black and white.

    No amount of spin from you can change that.

    As they say, svcks to be you.

    LOL – as to who cares, you most defintely should,, as your littel anti-patent agenda takes some serious hits from the obvious evidence of your dissembling.

  98. 119

    Business methods as a category, Malcolm.

    Isn’t basic reading one of your English as a first language skills?

  99. 117

    >>You can’t patent the new “functionality” of a >>composition of matter.

    OK, MM Palin, and what does that have to do with information processing? Nothing. You have just decided to spew nonsense as usual.

  100. 116

    answered my question yet about the capability to copyright pure math?

    What about the capability to copyright pure soap?

    Deep stuff. If you have some argument to make, Tr0 llb0y, just make it.

    your famous butchering of the differences between copyright and patent protection

    Right, like your famous butchering of your stepdad when he tried to hug your mommmy on that camping trip. Did you talk with your shrink about that yet?

    Fun game. Will you start the next round, Tr0 llb0y, as usual?

  101. 115

    What’s wrong with describing the wiring of this new computer in functional terms if doing so fully and clearly informs the skilled person of the metes and bounds of the invention

    The metes and bounds of a composition of matter can not be defined in purely functional terms and “clearly” inform anyone of anything except what the function of the invention is.

    You can’t patent the new “functionality” of a composition of matter. You can patent a new composition (with exceptions). You can patent a new method (with exceptions). But you can’t patent “new functionalities”, no matter how clearly those “new functionalities” are defined.

  102. 114

    Projecting your fantasies again,

    No, Tr0 llb0y. Just playin’ the game you started. You know the one? It’s the one where you make up some nonsense about what “I admitted” and then you pretend that I somehow “destroyed my agenda” or some other psych0 nutj*b horsesh*t that you habitually pull out of your bth0le.

    Anyway, go ahead and start the next round if you want to play again. I mean, that’s pretty much all you do here. That’s your specialty.

    Just like you volunteered knowing the controlling law to the exceptions to the printed matter doctrine.

    And who cares? I also volunteered knowing that you’re a s0ci0path. Pretty sure the latter is more relevant to a typical discussion with you about any subject.

  103. 113

    Tr0 llb0y: business methods being within the useful arts

    Exactly which “business methods” would those be, Tr0 llb0y? We both know it’s surely not all of them.

    So exactly which ones are within the useful arts and which one’s aren’t? Let’s hear your definitions.

  104. 112

    This claim is just as functionally claimed as any software claim.

    Of course it is!

    Meet Les. Les also believes that purely mental processes should be eligible for patenting.

    Les’s little playmate, “anon” (aka “Tr0 llb0y”), can’t even bring himself to state his beliefs on the subject one way or another. A similar affliction seems to haunt the Pope of the Church of Patent Apology. What exactly is the problem with these folks, who refuse to discuss their own beliefs while castigating (or banning) others for expressing theirs? Just follow the money …

  105. 111

    You sound like the Pope: so Galileo you think the earth revolves around the sun. Laugh. We’ll burn you at the stake.

    You do sound that bad 6.

    The smell of desperation among the softie woftie crowd is getting pretty thick.

  106. 110

    Lester, you’ve plainly gone off the deep end. I’m sorry but I’m unable to help someone as far gone mentally as you obviously are. Please seek medical attention or at least consult with a family member about the possibilities of treatment.

  107. 109

    “I’ve written lots of claims to making silicon wafers, but that isn’t the invention.”

    So all of those patent claims you drafted were invalid under 35 U.S.C 112 2nd paragraph for failure to claim what the applicant subjectively believed to be the invention?

    I mean, that’s interesting, as far as tangents go, but I don’t see how that is relevant to our discussion.

    And yes, I know you’ve written some, which is why I dipped specifically down into your realm for an example.

  108. 107

    “And, if we used the stream test, then I could do a work around for all circuit patents. ”

    I would very much like to see you “work around” the “circuit patent” I cited in this thread using the “stream test”. I can get you another one if you prefer to have a more straight-forward “circuit patent”. Since in your mind perhaps wired semiconductors aren’t “circuits”.

  109. 106

    Thank you for your efforts in identifying an example.

    This claim is just as functionally claimed as any software claim.

    Supply unspecified magic gas that has the special functional properties.

    irraditate the magic gas with a magic beam that has the functional property of making the magic gas function according to the special functional property of the magic gas.

    also aim the magic beam from on high at a magic surface of a first wiring layer

    cross the magic beam with a with another magic beam thereby magically creating a horizontal connection by aiming the second beam at a side surface

    magically aim the first beam on a second magic surface thereby acheiving the magic function on the second magic surface.

    Not only does it preempt all magic gas/magic beam interaction, it does so while violating Dr. Venkmon’s (or was it Egon’s) admonition….. Never Cross the Beams

    1. A method of wiring a semiconductor device by forming a connection wiring between a first wiring layer and a second wiring layer of said semiconductor device by supplying a reactive gas to the semiconductor device and irradiating the same with an energy beam, said method of wiring a semiconductor device comprising the steps of:
    supplying such a reactive gas as forms a conductive material constituting said connection wiring through the irradiation with said energy beam to a position where the connection wiring of said semiconductor device should be formed;
    forming a first connection portion on said first wiring layer by irradiating a surface of said first wiring layer of said semiconductor device with a first energy beam directed from above;
    forming a second connection portion spaced apart from a surface of said semiconductor device at a predetermined interval to extend from said first connection portion in a horizontal direction relative to the surface of said semiconductor device by irradiating a side surface portion of said first connection portion with a second energy beam provided along a direction crossing said first energy beam; and
    forming a third connection portion on said second wiring layer so as to connect with an end portion of said second connection portion by irradiating a surface of said wiring layer of the semiconductor device with the first energy beam from above.

  110. 105

    They cannot do so, NWPA – they have an agenda to keep and that means that they must frolic through the weads.

  111. 103

    You sound like the Pope: so Galileo you think the earth revolves around the sun. Laugh. We’ll burn you at the stake.

    You do sound that bad 6. Willful ignorance is unethical.

    6 Palin.

  112. 102

    I’ve written lots of claims to making silicon wafers, but that isn’t the invention. Please try to stay on point.

  113. 101

    Your point?

    A method of making a silicon wafer is indistinguishable from a method of writing code. Isn’t it?

  114. 100

    Aka a “grown up art” of which MM speaks that involves a method of wiring a general purpose computer so that is capable of performing a desired specific task which recites the actual wiring steps instead of the desired functionality that the “wiring steps” achieve. Also aka a (or “the central”) part of the general purpose computer capable of performing a specific task.

    As a whole, aka writing the claim like people in the grown up arts do.

  115. 99

    LOL – 6 brings a 112 knife to a 101 atom bomb test.

    Kind of like Malcolm incorporating an enablement requirement into 101.

    Hmm, similar character traits abound.

  116. 98

    Projecting your fantasies again, Malcolm?

    LOL – you do know the difference, right? You do know that the archives do hold your self-volunteered admission right? You do know that NO amount of spin from you will change the plain black and white of the words you yourself volunteered, right?

    Just like you volunteered knowing the controlling law to the exceptions to the printed matter doctrine.

    In fact, exactly like that.

    Mmmmmm, toasty.

  117. 97

    And I think you would agree L.B.Z. that U.S. law is in fact different from the EPO test you describe (boiled down or not).

    Right?

  118. 96

    LOL – more of the same from you Malcolm. Try again from the 10:59 comment, but htis time try answering my post without your usual spin and strawman.

  119. 94

    Per Malcolm’s own volunteered admission: ‘configured to’ is structural language.

    Per anon’s own admission, he isn’t allowed to leave the house without his ankle bracelet and a psychiatric nurse.

  120. 93

    I am indicating less than a claim composed totally of thought

    Huh? You “indicated” “less than a claim”? What?

    you insist on talking about a claim composing ONLY thought.

    Uh … no. I have discussed both (1) claims comprised of only thoughts (whether old or new) and (2) claims comprised of mixtures of old eligible steps and new thoughts. I’ve also addressed your silly “points” about “claims with only old steps can also be eligible” (for the billionth time) and “claims can include mental steps and still be eligible” (for the billionth time).

    you insist on accusing others of that which you do.

    Huh? Here’s the original comment again:

    Consider the claim:

    [oldstep]+[newthought]

    A claim is ineligible if practitioners of the prior art (the old step) become infringers merely for thinking about the new thought while they practice the prior art. That’s Prometheus. And it’s impossible to do the analysis without understanding the relationship of the claim to the prior art.

    You’ve said nothing that rebuts this fundamental truth of patent law. You’ve just hurled insults and recited some half-articulated nonsensical “objections” that do not rebut or challenge the accuracy of my comment.

    So what exactly is your problem, Tr0 llb0y? Something about my comment clearly makes you very upset. It’s been upsetting you for years, even prior to the Prometheus decision. Does it your hurt your fee-fees? Or your “wallet”?

    LOL.

  121. 92

    I think you misunderstand the EPO test. If you really want to “boil down” the EPO test for computer-implemented inventions, with the inevitable inaccuracy that this exercise entails, you should think of it as “if a method of doing something is not new/obvious, distinguishing it from the prior art by saying that it is a program running on a computer won’t get you a patent”.

    If you have experienced one or more EPO refusals for lack of technical character, I could bet that your claim failed (also) another of the exceptions of Art. 52(2) EPC, most likely the ones related to “methods for doing business” or “presentation of information”, because refusals based only on the “programs for computers” exception are fairly – almost exceptionally – rare.

    It’s not really an “issue” to fight, it’s a feature of European law to be understood so that you can advise your clients accordingly.

  122. 90

    Actually, Examiner 6, the inventor is presumed to know how best to claim their invention. The burden is on you, 6. Not the other way around.

  123. 87

    Depends on the specific claim LB. See, in these arts you don’t get an automatic 112 1st/2nd pass. Though many examiners don’t know enough about either to apply them. Which, I know, might surprise some people, but is totally what goes on :(

  124. 86

    Took like 3 seconds:

    LOL – about the same amount of time that it should have taken for you to provide an honest answer about business methods being within the useful arts, 6.

  125. 84

    Still waiting on you ‘champ’ to fulfill your promise on the discussion of the ladders of abstraction.

    Maybe you want to add some more about that new wrinkle of ‘generification?’

    Or is not keeping promises part of the (lack of) character that you have?

  126. 81

    “The problem isn’t subject matter eligibility. The problem is intellectual dishonesty, incompetence or cronyism.”

    Of course lester jester, those are the only possibilities!

  127. 80

    Said a man who has obviously never killed a deer with a vehicle. If you just killed a deer with your vehicle you’re probably 100x more worried about your vehicle than you are dressing the mangled deer.

  128. 78

    Ahhhh, so intellectual honesty makes you be able to distinguish between things which aren’t distinguishable. I get it now!

  129. 76

    “And, the answer brings us back to the Church-Turing Thesis.”

    Everything leads back to the church turing thesis in NWPA’s mind.

    What are we having for dinner tonight NWPA? Good question! And the answer brings us back to the church turing thesis…

  130. 74

    I’m still waiting for someone to produce on some prior art invalidating the auto-opening curing apparatus without the Arrhenius equation considered.

    Gasp! Maybe anon has such prior art right now and is about to drop it on us!

    Nah, never mind, false alarm.

  131. 73

    That’s what I thought. I’ve read some of the previous decisions and they are doosey’s with their patent-technical-EPO-jargon.

  132. 72

    Sometimes it is not easy understanding Malcolm’s purposefully obtuse rantings, even if they are provided by a ‘master’ of English as a first language.

    That’s interesting, anon. I don’t have any trouble understanding MM’s comments, even when I don’t agree with them.

  133. 71

    It may have to do with Malcolm’s incorporation into 101 of some type of enablement requirement.

    Sometimes it is not easy understanding Malcolm’s purposefully obtuse rantings, even if they are provided by a ‘master’ of English as a first language.

  134. 70

    Oh please, Malcolm, thrill us with som emore of your famous butchering of the differences between copyright and patent protection.

    Which reminds me, have you moved the goalposts back and answered my question yet about the capability to copyright pure math?

    (yes, I know what the answer is, but this is one of those ‘character’ questions – the kind that 6 screwed the pooch on)

  135. 69

    Isn’t it wonderful too, to have MM Palin (who is absolutely ignorant of anything to do with computers) telling one skilled in the art how to claim the invention.

  136. 68

    Per Malcolm’s own volunteered admission: ‘configured to’ is structural language.

    LOL – he cannot spin away from what the archives plainly show.

  137. 67

    There is nothing funny about your “hundreds of times of obvious strawmanning when I am indicating less than a claim composed totally of thought and you insist on talking about a claim composing ONLY thought.

    And yet, you insist on accusing others of that which you do.

    When this is clearly pointed out, all you can do is [shrug] and stand by.

    C’est La Vie.

  138. 65

    Except for the biblical reference, which I don’t understand, I’m with NWPA on this one, MM. What’s wrong with describing the wiring of this new computer in functional terms if doing so fully and clearly informs the skilled person of the metes and bounds of the invention, and if the scope is fully enabled?

  139. 64

    MM Palin, you mean that the inventor shouldn’t describe them in the terms that one skilled in the art would use? And, what MM Palin? You don’t care that one skilled in the art understand the invention and the metes and bounds of the invention by the claim language? Why not? Please MM Palin don’t recite from the Bible for patent law.

    Please go finish field stripping the deer, MM Palin.

  140. 62

    perhaps you want to explain what I actually posted

    Too funny.

    Go and find that rolling donut, Tr0 llb0y. You’ll know what to do when you see it.

  141. 61

    Yes, MM Palin there are these things called computers made by man that process information. What? No they aren’t millions of years old so you don’t have to worry about that. What? No we aren’t trying to out do God. Please. Calm down MM Palin.

  142. 60

    Yes, MM Palin. We know and those rocks aren’t millions of years old. Have you finished field stripping the road kill deer?

  143. 59

    Electronic circuits are human creations that have objective results, therefore they are inventions.

    If you describe the electronic circuits objectively, rather than by their desired “new” functionality, and there will be no argument from the “the courts.”

    But somehow that won’t work for you, will it? Too difficult? The “invention” thus claimed is “worthless” you say? That’s fascinating. Because I’m sure you’ll still go after copyright infringers who steal your “worthless” code. Won’t you?

  144. 58

    MM: now you are intentionally being thick. Clever playing with the word “distinguish”–not. I’ll leave to the reader to judge which one of us is intellectual honest and ethical and which one of us is you.

  145. 57

    Software is a way of wiring a general purpose computer.

    So why not a claim a method of wiring a general purpose computer so that is capable of performing a desired specific task?

    In that method claim, be sure to recite the actual “wiring” steps, instead of the desired functionality that the “wiring steps” achieve. You know, write the method like people in the grown-up arts write their method claims.

    I think that would address most of the concerns.

  146. 56

    L.B.Z. — the fact is that the EPO test boils down to exactly what I said. And, you are speaking to someone that has spent an enormous amount of money (my clints’ money) on fighting this exact issue.

  147. 55

    [repost with better formatting]

    We go ’round and ’round with you

    Right, that’s because you keep reciting absurd nonsense like “there is no way to distinguish between software and hardware”.

    Parts of any circuit are easily turned into software.

    How would you know if one is “turned into” the other if there is no way to distinguish between them?

    Please work on your script, bro’.

  148. 53

    We go ’round and ’round with you

    Right, that’s because you keep reciting absurd nonsense like “there is no way to distinguish between software and hardware”.

    Parts of any circuit are easily turned into software.

    How would you know one is “turned into” another if there is no way to distinguish between them?

    Work on your script, bro’.

  149. 52

    So nice of you to provide both the bonfire and the stuff of fluff marshmallows.

    Thanks Malcolm.

    (and yet again with the strawman of “comprising only” – haven’t you beat that to death? – perhaps you want to explain what I actually posted instead of the hundreds of times of strawmanning, that way you won’t have to engage in your usual acuse-pthers-of-that-which-you-do blatant 1ies and m0 r0n accusations)

  150. 49

    The decision commented in the post is from a UK court, not from an EPO Board of Appeal or Examining Division.

    That being said, I agree that saying “that something is technical if it somehow saves on critical hardware is ridiculous.” However, neither the decision above nor the EPO says such a thing.

  151. 48

    The reason courts have such a difficult time with software enabled inventions is that they have failed to define what an invention is and do not understand what software does. An invention is a human creation. But so is a painting. The difference is an invention has an objective result.
    Software is a way of wiring a general purpose computer. A computer is an electronic circuit. A specialized machine, such as a compiler converts the software into the wiring scheme of the computer. Once this is done you have a specialized (specific) electronic circuit. Electronic circuits are human creations that have objective results, therefore they are inventions.

  152. 47

    Meanwhile, over at TB0y’s favorite roost:

    link to ipwatchdog.com

    Please note that on IPWatchdog.com we require comments to be intellectually honest. Those the persist in denying self-evident truths are banned. Software is not math. You cannot solve or reduce software code, math is descriptive of reality while software directs action. Still, if you feel compelled to demonstrate your ignorance on this issue and and choose to pretend that software is math please visit one of the many other places on the Internet that will allow you to spew such provably false nonsense.

    Like father, like son. LOL!

  153. 46

    I don’t know why a blog post was dedicated to this decision, it does not seem to innovate in any particular way the UK case law about computer-implemented inventions.

    Perhaps the manner in which it was written made the issues and analysis more clear compared to the earlier decisions.

  154. 44

    Don’t be thick.

    Translation: “Don’t ask me! I’m just shooting off my mouth again and I ave no idea how Mr. Bakels “wallet” would be hurt if he changed his views on this subject. It just makes me feel good to say this stuff because I’m … hey! You kids! Get off my lawn!”

  155. 42

    We go ’round and ’round with you MM Palin. The problem is form. Is the test whether it COULD BE streamed? If so them 99.99 percent of circuit patents are invalid. And, if we used the stream test, then I could do a work around for all circuit patents.

    Parts of any circuit are easily turned into software. And software is easily turned into a circuit. And, as you know MM Palin, software is really nothing but a specification for a machine.

  156. 41

    Still does not account for claims composed of all old steps (eligible)

    Two points: first the analysis doesn’t “account” for all kinds of situations that aren’t relevant to the analysis (e.g., the analysis doesn’t account for the rings on Saturn – so what?). Second, it’s not true that claims which recite all old steps are per se eligible, so whatever “point” you are trying to make is predicated on a false statement. Do you understand that? Of course you don’t. You’d never admit it anyway because you’re a s0ci0path and a l i a r.

    then taking such a claim and adding a newthought;

    Huh? Again, you’re just changing the hypothetical I was discussing into a different hypothetical. Do you have a claim reciting a mental step preceded by old steps that you want me to analyze? The issue then is whether the old steps were carried out in the prior art in the order that they are recited in the claim. In that case, the analysis is identical to the analysis when a single old step is recited.

    nor does it take into account the actual law providing eligibility for claims with thoughts (old or new).

    Of course it does. The “actual law” is (1) all claims comprising only mental thoughts are ineligible and (2) some claims comprising a mix of physical steps and mental steps may be eligible, others are not.

    This has all been explained you to you dozens (hundreds of times before)? And yet you continue to l i e and pretend that none of it was explained to you. So we must once again ask the question: are you a m0 r0n? A l i ar? Or both?

    My bet is on the latter and has been for a long time.

  157. 39

    The functional claiming in software is structural. I am one skilled in the art and there is no doubt about that.

    LOL.

  158. 38

    Consider the claim: [oldstep]+[newthought]

    Mmmmm, toasty.

    Still does not account for claims composed of all old steps (eligible), then taking such a claim and adding a newthought; nor does it take into account the actual law providing eligibility for claims with thoughts (old or new).

    Y A W N.

    Better trolling please.

  159. 37

    Hal Wegner does find it worthy of mention as a comparative (i.e. different) item of law.

    Another guy who was really slow on the uptake when it came to Prometheus. But I think he did eventually manage to “get it”, unlike some of the puppy dogs here who seem to enjoy hiding in his shadow.

  160. 35

    that is how ridiculous you people are.

    Got that? People like NWPA who analyze a claim in a ridiculous manner are ridiculous. I have no idea what this has to do with Lourie, who surely would not find that claim ineligible.

  161. 34

    If a judge is looking at an element of a claim and saying does that add an inventive concept, then they are into 102, 103 territory and not 101. Simple. Clean. The SCOTUS knows that is the law

    Wrong on all counts.

    Consider the claim:

    [oldstep]+[newthought]

    A claim is ineligible if practitioners of the prior art (the old step) become infringers merely for thinking about the new thought while they practice the prior art. That’s Prometheus. And it’s impossible to do the analysis without understanding the relationship of the claim to the prior art.

    Basic stuff.

  162. 33

    you are shamelessly plugging

    Shameless plugging is apparently only allowed over at The Church of Patent Apology where TB sits on Gene’s lap all day and polishes his buttons.

  163. 32

    you are shamelessly plugging for a WHATEVER view of patent law that you have advocated for in the past – one that the Court recently took the chance to say ‘not a chance’ in the 9-0 Prometheus decision.

    Huh? When did Dennis “advocate for” a “WHATEVER view of patent law” (<-- huh?) in the past and where is Dennis doing that here?

  164. 31

    And, Reinier Bakels, I challenge you to answer some of my questions I put to you. I know your type will hide behind that you are some great scholar, but try to resist. Try to come to grips with your unethical behavior and reform. The punishment will hurt your wallet, but you will be able to sleep at night.

  165. 30

    >Paradoxes can not be solved. They require the >question to be rephrased rather than answered

    RB, people like you that are willfully ignorant should never write such sentences. You are not in the club of scholars. You are a brigand. You have no standing. No ethics.

  166. 29

    Good question Anon. And, the answer brings us back to the Church-Turing Thesis. The fact is that only a tiny set of hardware is needed and the rest can be software. The hardware today in say a modern Intel chip could all be done with software. And, the EPO attempt to say that something is technical if it somehow saves on critical hardware is ridiculous.

  167. 28

    …but the following doesn’t conflate subject matter eligibility with novelty or obviousness….no sir..

    “One important result of this approach – well recognized by Judge Birss is that the scope of subject matter eligibility shifts over time. The Lantana case involves a particular use of email systems. If the patent had been filed in the early days of email and was able to introduce an a technological mechanism that was new at the time then the application would be subject matter eligible. However, the reality is that email systems were already very well known by the time Lantana filed its application. In Judge Birss’ words, the technological aspect of the invention was “conventional.” As such, there was no technological contribution to be found. ”

    The problem isn’t subject matter eligibility. The problem is intellectual dishonesty, incompetence or cronyism.

  168. 27

    Why is there any need to distinguish between software and hardware? In the UK the law excludes computer programs regardless of whether that program is embodied in hardware or software.

  169. 26

    And, RB, functional claiming? Really. Is that what Mark Lemley thinks? The one who says software has no strucutre. What do those skilled in the art of computer science say? The functional claiming in software is structural. I am one skilled in the art and there is no doubt about that. The claims define a large set of machines that perform the function just as circuit claims and mechanical claims and chemical claims.

    Go spend a few hours and research this question.

    Willful ignorance is unethical BR.

    How can you look yourself in the mirror?

  170. 25

    How does a person like you RB, live with yourself? How do you reconcile your desire to be an ethical scholar with your complete lack of ethics in regards to software patentability?

    Willful ignorance is unethical. Please spend a few hours and research the following: does software have structure? Willful ignorance is unethical.

  171. 24

    Is that the same Mark Lemley who says that software has no structure? And does not cite directly contrary opinions to his from noted scholarship published in law journals?

    That Mark Lemley? The one no one should trust a thing he writes. I’d put $1000 on the fact that if I read his “scholarship” I can find unethical behavior on his part.

    Please explain Deener to us. Please tell us how software has no structure. Please explain to us the conservation of information. Please explain to us the Church-Turing Thesis.

    Medieval boy has come to post, haven’t you RB?

  172. 23

    An odd post from RB, being on point as to why the decision simply would not fly under US law, but reverting to his established anti-patent ways in the fourth paragraph, siding with the anti-patent Lemley (and his child, Lex Machina).

  173. 22

    I think the US was right to reject the patent for obviousness.

    Requiring the techncal or non-abstract features to conincide with the novel features is an old mistake, known as the Kerntheorie (core theory) in Germany and the point of novelty approach in the US. While this approach violates the principle that patent applications must be assessed as a whole, it is still used occasionally because it appears to provide intuitively better results, occasionally. But the very UK courts have explained brilliantly the flws of this approach in Genentech.

    Paradoxes can not be solved. They require the question to be rephrased rather than answered.

    Since 1841 (Neilson v. Harford) patents are only granted in the UK in case of a complete solution that does not require “undue experimentation”. In software, there is a tendency to describe the problem to be solved without actually diving the solution. US professor Mark Lemley recently wrote about the return of “functional claiming”, a bad thing. It rminds of bygone centuries when patents were privileges to conduct certain business. But as early as 1623 the UK government showed its awareness that privileges = monopolies = bad.

  174. 21

    Hal Wegner does find it worthy of mention as a comparative (i.e. different) item of law.

    Contrast that with the naked implications here that the US law could readily be the same.

    C’est la vie.

  175. 20

    I guess, Max, that all honor is gone in the world. If you or the other on this board were honorable you would incorporate the counter arguments to your asserts in your posts. But you do not. And, the counter arguments are based on the science and engineering of the technology of which you remain willfully ignorant.

    Really, just filthy behavior.

  176. 17

    Of course the problem is that there is no way to distinguish between software and hardware. And, the EPO has become a you are eligible if you have the money and cache to be eligible system. Typically Europe.

    It is funny dealing with you people. You just fall back to your old positions no matter how many battles you’ve lost. Quite telling in human character.

  177. 16

    On the issue of “does one filter under 101 or 103” for me the most interesting sentence of Lantana is the 5th in para 41, on the question what sorts of inventive activity fall to be considered when debating patentability.

    For the EPO, the only form of inventive activity that can help patentability is technological inventiveness. Clever accountancy, or business management, do not count.

    Conversely, for the UK it seems, you can be patentably new and inventive even in fields lacking any technical character.

    Then there is the interesting issue of how to assess the “contribution” under the eligibility provision.

    On the one hand, in England, the judge does it relative to what has aleady, by the date of the claim, become “conventional”. That might accord with “new” in 35 USC 101.

    On the other hand, at the EPO, they believe implacably that when judging eligibility you should not be swayed by what is the state of the art one day before the date of the claim. What is eligible should be absolute, not dependent on the particular events of the week before.

    LB suggests there is nothing new here. I dare say he is right. He wonders why Dennis runs this thread. I suggest because it is topical, and provocative enough to stimulate useful debate. Hal Wegner anyway thought it worth mentioning.

  178. 15

    This mixing up business is complete insanity.

    A door comprising:
    a rectangular piece of wood; and
    two hinges rotatably attached to the wood.

    Under the Lourie test: (1) The abstract concept is a material for providing an opening between two spaces that can be opened and closed; (2) wood is old and know. hinges are old and known. adding hinges to wood is old and known. (3) Ineligible under 101 as this is an attempt to claim the abstract concept of providing an opening between two spaces that can be opened and closed.

    Boy and girls that is how silly the Lourie test is and that is how ridiculous you people are.

  179. 14

    This decision is recent, the precedents that are cited generally predate the AIA. Tbh, I don’t know why a blog post was dedicated to this decision, it does not seem to innovate in any particular way the UK case law about computer-implemented inventions.

  180. 13

    This mixing up a lot of stuff. The differences among UK, EPO, and US law. And, at the end of the day, for the US it should be the 1952 Patent Act. And, that act was written to get rid of the back door of mixing 101 and 102, 103, and 112.

    If a judge is looking at an element of a claim and saying does that add an inventive concept, then they are into 102, 103 territory and not 101. Simple. Clean. The SCOTUS knows that is the law and that is why the DOJ evil master Stern got around the law with the three deadly judicial exceptions.

  181. 12

    This case helps to expose the fault line between UK law and that of mainland Europe, when it comes to eligibility (under the umbrella European Patent Convention) of programs for computers. Even if he wanted to, Judge Birss is not free to follow EPO caselaw. Rather, he is constrained by the precedents laid down by the higher courts of England.

    I believe that the Federal Circuit (esp. Rader CJ) is well aware of the choice of approach and that the tussle in the Federal Circuit is a battle over which path to choose. Note (above) that in England novelty and non-obviousness were conceded. Had this case been argued at the EPO, the claim would have survived an eligibility, only to fail on novelty and obviousness.

    Those higher English courts strive to follow the authority of the EPO’s Enlarged Board of Appeal (the G Decisions of the EPO). Hence the English Rule iv) “is the contribution technical in nature”. But then the English courts finesse out of that by pronouncing that step iv) is only a step to confirm what will have been settled already by performing steps i) to iii). Nice diplomacy. We in England are good Europeans. We DO follow the authority of the EPO (but on our island we do it our way, thank you very much).

    By the way, one could not have wished for a more skilful and learned advocate than Mr Keith Beresford. He was already ten years ago writing textbooks on patentability of software and is a veteran of the scene. So too is Colin Birss. Like nearly all of the English patents judges, he was a patents barrister for the first half of his career, appearing half the time for the rights owner and the other half for the accused infringer. So he understands the practical importance of decisions such as this one.

    will the case go to Appeal in England. I doubt it.

  182. 11

    I think he predicted that they’d rule that the software claims that don’t involve a technical advance over the prior art will not be eligible. And he may be saying that the technical advance must itself be novel and non-obvious ivo the prior art (as it was in Diehr). It actually is one way of characterizing their previous holdings, see where D discusses Flook.

  183. 10

    “I suspect that the rule supported by Judge Birss here is not too far removed from that which the current U.S. Supreme Court would also fashion if given the chance. However, the current USPTO does not require that particular elemental linkage.”

    Dennis, are you predicting that the Supreme Court will ultimately rule that software is not patentable??

  184. 9

    Wow. Branching out to other countries and not mentioning Australia’s affirming software patenteligibility last week? Amazing, unbiased blog yoy have here.

  185. 8

    I suspect that the rule supported by Judge Birss here is not too far removed from that which the current U.S. Supreme Court would also fashion if given the chance

    I suspect otherwise – especially given that you are shamelessly plugging for a WHATEVER view of patent law that you have advocated for in the past – one that the Court recently took the chance to say ‘not a chance’ in the 9-0 Prometheus decision.

    Did I say chum? I meant shameless chum.

    C’est La Vie.

  186. 7

    JB – read the final paragraph of the opinion:

    Finally I will stand back from the detailed submissions and look at the claim overall. In substance the claim relates to computer software running on conventional computers connected by a conventional network. The task the software performs moves data from one computer to another using a conventional technique for carrying out that task, i.e. email. The context in which this arises is that accessing remote computers via continuous connections can be problematic but this is not a technical solution to those problems, it avoids them, but does so using a conventional technique. The claim has been found to be novel and inventive by the examiner and in that sense it makes a contribution of some kind to the art, but the applicant has been unable to identify anything which this claim can fairly be said to contribute which has a technical character. In my judgment this claim is to unpatentable subject matter and is contrary to s1(2) of the Act / Art 52 EPC.

  187. 6

    Not only that, but the blog’s conclusion is in direct variance with the actual content of the ruling:
    “One important result of this approach – well recognized by Judge Birss is that the scope of subject matter eligibility shifts over time. The Lantana case involves a particular use of email systems. If the patent had been filed in the early days of email and was able to introduce an a technological mechanism that was new at the time then the application would be subject matter eligible. However, the reality is that email systems were already very well known by the time Lantana filed its application. In Judge Birss’ words, the technological aspect of the invention was “conventional.” As such, there was no technological contribution to be found. ”

    Yeah. Actually, that’s not what the judge ruled, at all, and moreover, untrue.

    These must be tough times for software patent lobbyists and apologists.

  188. 5

    I’m pretty sure that most of these UK decisions are pretty recent, moreso than the AIA even.

    And moving forward it will be an acceptable compromise for congress to consider enacting here.

  189. 4

    6,

    We just got done with the AIA. If Congress wanted the UK law, they were free to adopt the UK law.

    They did not.

  190. 2

    A massive WHATEVER chum bucket here for conflating patent eligibility and patentability will serve the US system – NOT AT ALL.

    This lack of rigor in legal thinking is exactly what we do not need.

  191. 1

    A key point in the US debate on patentable subject matter is whether the technological (or non-abstract) contribution needs to be innovative

    I would beg to differ on the apparent distinction being made tha technological must be a set that is mutually exclusive with non-abstract.

    Trying to shoehorn US jurisprudence into UK jurisprudence is simply inviting massive errors in legal thought.

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