By Dennis Crouch
SmartGene v. ABL (Fed. Cir. 2014) (nonprecedential)
35 U.S.C. 101 is a foundational patent law statute that defines the scope of patent eligibility. The statute states that:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 101 is written in broad and open terms and has been seen as providing notice that patent law is not intended to be limited to any particular forms of technology.
In interpreting the statute, the Supreme Court has added an additional set of subject matter eligibility restrictions only nominally grounded in the statute. Most notable, these include proscriptions against the patenting of abstract ideas, natural phenomenon, and products of nature. Also excluded from eligibility are “mental processes.” It is somewhat unclear from precedent whether these mental processes are whole included within the abstract idea construct or whether instead there are some mental processes that would be excluded even though not considered abstract ideas.
Here, ABL’s patents cover a diagnostic method that basically pulls information from three separate knowledge bases, ranks the results and provides advisory information related to those results. As claimed these steps use a “computing device” to generate and provide the results. The patents also include computerized “system” claims; computer program claims; and sorage-medium claims that are all designed to facilitate the practice of the method. See U.S. Patent Nos. 6,081,786 and 6,188,988.
In 2008, SmartGene filed for declaratory judgment of invalidity and also filed a reexamination request with the USPTO. The PTO considered the prior art and confirmed patentability. However, the District Court ruled that all of the patented claims were invalid as ineligible under Section 101. Rather than walking through each claim of each patent, the District Court (1) first held that, for eligibility purposes, Claim 1 of the ‘786 patent (the method claim) was representative of all claims in the patents and (2) then found that claim ineligible under § 101. The district court wrote that the claim does “no more than describe . . . an abstract mental process engaged in routinely, either entirely within a physician’s mind, or potentially aided by other resources in the treatment of patients.”
On appeal, the Federal Circuit has affirmed in a non-precedential decision written by Judge Taranto and joined by Judges Lourie and Dyk. Famed eligibility defender Robert Sachs of Fenwick represented the Patentee whkle Fred Samuels (Cahn & Samuels) represented the DJ Plaintiff.
The Federal Circuit first considered the district court’s process in holding all claims from both patents ineligible based only upon consideration of one claim from one patent. The court affirmed the district court finding based upon a waiver principle.
On to the meat of the 101 analysis, the Federal Circuit began with a citation to CyberSource:
This conclusion [of ineligibility] follows from CyberSource Corp. v. Retail Decisions, Inc., where, based on earlier precedents, this court held that section 101 did not embrace a process defined simply as using a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads.
The court went on to write that mental processes are not eligible nor are processes that use basic computer functionality to implement mental processes unless the invention specifies “new physical components” or other steps “defined other than by the mentally performable steps.”
For these princples, the court relied heavily on Supreme Court precedent of Benson, Flook, and Mayo as well as the appellate decisions of CyberSource as well as In re Grams, 888 F.2d 835, 840-41 (Fed. Cir. 1989) and In re Meyer, 688 F.2d 789, 794-95 (C.C.P.A. 1982).
The discussion of Mayo in the decision is interesting in the way that the court draws close parallels between the way laws of nature and abstract ideas should be interpreted:
Mayo demanded that, when a claim involves an abstract idea (or, in Mayo itself, a law of nature), eligibility under section 101 requires that the claim involve “enough” else—applying the idea in the realm of tangible physical objects (for product claims) or physical actions (for process claims)—that is beyond “well-understood, routine, conventional activity.” 132 S. Ct. at 1294, 1298, 1299. The claim here does not do so. It calls on a computer to do nothing that is even arguably an advance in physical implementations of routine mental information-comparison and rule-application processes. In this context, the concern about preempting public use of certain kinds of knowledge, emphasized in Mayo, is a grave one.
It appears from Myriad, that the process for determining the product-of-nature exclusion is somewhat different since there, the court allowed the patentee to obtain protection for a DNA sequence whose physical differences from the naturally occurring sequence were due to well-understood, routine, and then conventional laboratory processes.
Is a mental step an abstract idea?: The court punts on this question and instead writing that:
[M]ental processes and abstract ideas (whatever may be the precise definition and relation of those concepts) are excluded from section 101. Whatever the boundaries of the abstract ideas category, the claim at issue here involves a mental process excluded from section 101: the mental steps of comparing new and stored information and using rules to identify medical options.
The analysis here pessimistically fits the approach leading abstract idea jurisprudence that traditionally fails to explain the scope and bounds of the abstract idea category but finds that the particular invention in question fits within the category.
Judge Taranto: This decision is important because it was written by Judge Taranto. Although there was not tremendous doubt in his position, Judge Taranto did not participate in the CLS Bank en banc fiasco that resulted in no majority opinion. Judge Taranto’s participation would have likely shifted the balance in favor of a majority opinion ruling strongly against subject matter eligibility of software claims that do not add new “technology.”
Judge Taranto is also important because, of all the Federal Circuit judges, he likely best understands the pulse of the Supreme Court and I will not be surprised when the Supreme Court decision in CLS Bank parallels this one.
I certainly hope that this case does NOT foreshadow what the Supreme Court will do. TheFederal Circuit has conflated 103 and 101 (again). The Federal Circuit states that “Claim 1 does no more than call on a ‘computing device,’ with basic functionality for comparing stored and input data and rules, to do what doctors do routinely.”
This is a 103 problem, not a 101 problem.
Readers I thought you should see what NWPA has written today, below, on the subject of patent eligibility criteria, in the USA and in Europe:
“The U.S.A. has and is the leader in innovation. Europe follows. It is hard to be the leader when you set up lines and not principles. I think I agree that for a group of countries that want to trail a bit after the U.S.A. that the EPO method of determining 101 isn’t bad. But, the leader needs principles to encourage those that push the boundaries and jump the boundary line.”
To the extent we can understand NWPA, I think we can all take some comfort from his words, don’t you. Who knows, they might even help to clarify the minds of those who will help the SCOTUS Justices to reach their opinions.
Well thank goodness that NWPA guy is around to say something intelligent. The sMMoke and sMMog around here is at a MAXimum lately.
By the way, Max, again you are apparently ridiculing one of my posts with absolutely no substance.
NWPA,
Are you surprised?
I mean, really? Just more of the same old “CRP-Run Away-CRP again” shtick. Notice how MaxDrei tried to obfuscate and hide behind a judge’s robes when I asked him to clarify his concurrence with an ‘intellectual dishonesty’ remark. He got all in a huff when I (correctly) told him that he must maintain the difference between patent eligibility and patentability. As I remarked long ago on Prof. Crouch’s 50-Year Battle thread, asking the right question (without the obfuscating WHATEVER tricks) would help everyone get to the right answer. As we both know, not everyone wants the right answer, because the right answer is not in alignment with their agenda or third party interests.
The truth of the matter is that many such posters do not want to be held accountable for what they say. They want to shill and move on. They want to point out that ‘this is not a courtroom’ and thus implicate that their posts do not have to be honest.
They do not want to be intellectually honest and thorough and have what they say be vetted against what is controlling law, or what are actual facts. Notice that conversations simply are not carried to their logical end when such conversations will go against the purpose that individuals(?) have when they post.
The Merry-Go-Round thus continues.
anon, you are fond of quoting definitions of words. You tell me I “concur” with the English judges. OK, define concur and then show the viewers my exact words, that you perceive to be my “concurrence”.
The difference between us is that you persist in asserting that I concur, even while all my writings are to try to reveal to you what is the position of the English judges on eligibility, that I so keenly disagree with.
By heck, this is boring!
I do not need to define “concur” MaxDrei. (sheesh, more obfuscation)
Stop trying to hide behind the Judge’s robes already.
.
“ then show the viewers my exact words, ”
Sure MaxDrie, this very thread, first at February 2, 2014 at 9:58 am
“1. A digital computer. (period, full stop)
is eligible. For the UK that EPO approach is “intellectually dishonest” and an affront to patent law. I can see their point. You too, I’m sure.”
and then at February 3, 2014 at 11:19 pm
For my part, I think the judges in England are troubled by the otion that subject matter as banal and notoriously lacking in novelty as ‘1. A digital computer.’ could be eligible. Manifestly, it is NOT patentable, so declaring it ‘eligible’ is egregiously ‘dishonest’”
You should note my first post at February 2, 2014 at 12:16 pm asking in pertinent part “Please explain what point it is that you see.”
Do you need me to hold your hand on the difference between patent eligible and patentable?
Ah ha anon. So, as soon as somebody in debate states that he can see the other one’s point, he is deemed (Gotcha!) instantly to have “concurred” with them.
Is that your point? Try telling that to anybody who has ever been present at a partners’ meeting, or to any of the judges at the CAFC.
I’m getting that feeling again, that the entity posting under the name “anon” is set up to do it just to see how many more dupes it can find, gullible enough to argue with it. In that regard, I regret that I have been particularly slow to learn not to be provoked by it.
MaxDrei asks, “Is that your point?”
Clearly no MaxDrei.
Again, you seek to hide behind someone else and not tell me why you see the item as ‘intellectually dishonest.’
It is not whether someone else – not a party to our discussion – sees something as intellectually dishonest, it is why you – a party to the discussion – can defend the fact that you do concur with another’s seeing something as intellectually dishonest.
You seem to feel that you can say anything you want and then hide behind a “well they said it’ defense. I was asking you to defend the viewpoint you presented – whether or not some judges feel that way is surely up to those judges, and clearly is not the focal point of you posting that position as something to be believed in but not wanting to support why you believe so.
Stop attempting to spin and cast the focus elsewhere.
Why do you believe as you posted?
Apparently? What’s that then?
Ridiculing? OK, if you say so NWPA. If the shoe fits. My mail was intended to reveal that I couldn’t figure out what you were trying to say. If you take that as ridiculing you, that’s up to you.
Couldn’t figure it out? Well, come on now Max. What I wrote is an argument we Americans being so exceptional make all the time. Easy to understand. Make laws principles so that we can easily extend and apply them. Make laws like the EPOs quagmire and you end up with laws that bog down innovation.
Simple to understand and an argument that has been made many times in many other contexts.
“If the shoe fits.” The shoe size is to the poster that is quoting my posts–not to me.
But, come now, Max, I am sure you understand my argument. Are you going to force me to dig up a discussion to support my argument from a book?
LOL – ‘if the shoe fits…”
Lead a horse to water…
.
And yet, when comments are made that impugn the obvious shilling nature of certain posters, who is first in line to attempt Crybaby Vetos?
Being overly sensitive and then accusing others of being overly sensitive only raises the notion that you are being disingenuous MaxDrei.
You want to freely use rhetorical tools but do not want anyone using the tools against you and what you want to soapbox with. You want to do unto others, but not have that done unto you.
Hypocritical at the least.
So instead of intimating that no one could understand NWPA (and thus that what NWPA had to say was not meaningful) you might hew closer to what you are now saying and directly say that you don’t understand what NWPA is saying. Own your own lack of understanding instead of trying to portray a lack of understanding of the concepts under discussion to your opponent.
OK, anon, now that MM has commented (below) on whether he agrees with the patent judges in England, that the EPO approach to 101 eligibility is “intellectually dishonest”, I will add my comment. i was Holding back because I agree with the EPO so I am not the best Person to explain why it is intellectually dishonest. I had thought MM would tell you why but he now explains he also Fails to find it dishonest. We await Paul Cole to help us understand the English view.
For my part, I think the judges in England are troubled by the otion that subject matter as banal and notoriously lacking in novelty as “1. A digital computer.” could be eligible. Manifestly, it is NOT patentable, so declaring it “eligible” is egregiously “dishonest”, eh Paul?.
MaxDrei,
Patent eligibility and patentability are two distinct legal concepts. The meanings simply are not interchangeable – as you attempt to so do.
You mix them at your own risk.
anon, you it was who asked me please to explain why the English judges declare the EPO’s rigorous separation of eligibility and patentability separate (with which I personally agree) to be intellectually dishonest. When I do that, and hazard a guess why that might be, I get no thanks. Instead, you admonish me, telling me that I must not attempt to elide eligibility and patentability.
Now can you see why it is so hard for people here to enjoy any sort of worthwhile discussion with you?
You puzzle me MaxDrei, as you seek to equate intellectual dishonesty with a required clarity of separation, and then get upset when I say that such is not proper.
You need a better reason for calling something intellectual dishonest.
Remaining clear on a significant legal distinction is not – and cannot be intellectually dishonest.
Don’t be upset – just try again.
anon, once again, and slowly: I’m not the one asserting that the EPO approach to eligibility is intellectually dishonest, OK? Your continuing to berate me for my inadequate defence of the position taken by the judges in England saps any interest in conversing with you.
You are misunderstanding my thinking why they think it intellectually dishonest. I fancy you are doing this deliberately because you have nothing else to do all day but to troll these threads. Nevertheless, for any other Readers newly joining, I will try once more.
I suspect that the English patent judges think that when a claim is directed to subject matter which all of us know without a shadow of a doubt to be unfitted to grant, like, “A windbag, full of hot air.” or “A digital Computer.” it is quite simply dishonest to hold that it meets the criterion of eligibility for patenting.
I keep telling you that I myself do separate eligibility from patentability. I remind you that, at your explicit request, we are engaged in exploring why the English judges hold the position they do. They have already been told authoritatively, and without interruption over the last 20 years, that under the EPC they should separate eligibility and patentability, yet still they declare the EPO approach dishonest. Why? The best I can do is hazard a guess. I don’t know, OK?
MaxDrei,
And equally slowly – you did concur in a statement of “intellectual dishonesty” and that is what I am trying to have you be clear about. Your spin now to paint this solely as an English judge discussion is off into the weeds. The English judges are not a part of the conversation – you are. It is your concurrence then – and only that concurrence – that we can discuss. Don’t hide behind the robes of someone else. You concurred with the thought – do you still concur with that thought?
You appear to be now merely repeating your conclusion and offering no reasoning.
You do need to grasp and understand the difference in law because that difference makes your statement incorrect.
You are always welcome to have your opinion. But you should not be upset when I point out the fallacies involved with why you have that opinion – and I really do hope that you approach this with a mind open to learn.
But that is not there, as once again, you simply bristle at what I say and entrench yourself in your fallacy.
See Max this business of saying a digital computer is not eligible is silly. Would you say that two pieces of wood nailed together are not eligible? No you wouldn’t.
When all else fails, read the statute.
35 USC 101: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Undoubtedly, a computer (the first computer) was eligible.
Undoubtedly manufactures in their own right are eligible.
Undoubtedly improvements are eligible.
And equally undoubtedly, longstanding attempts to obfuscate what is plainly said with an agenda against a particular art field have been in play.
I will (again) note what I noted in Prof. Crouch’s 50-Year-Battle thread: asking the right question will yield the right answer. The right question demands that patent eligibility not be conflated with patentability.
Clarity – not conflation.
101 AND 102 AND 102 AND 112 (etc) – not WHATEVER.
anon amusingly writes earlier today, that MaxDrei:
“…has openly admitted that he has no interest in actually discussing points of law and readily takes a(n unjustified) sense of umbrage whenever I point out counterpoints that he should address.”
It is true that from time to time I decline to continue exchanging posts with anon. Only too happy to confirm it.
Readers will decide (and this is how it should be) what is the reason for that behaviour of mine. For example, you might agree with anon that it is because I am a shill. Or, you might instead agree with me, that continuance is a waste of time, and no fun for anybody except anon.
MaxDrei engages in some ‘light’ hyperbole: It is true that from time to time I decline to continue exchanging posts with anon. Only too happy to confirm it.”
Time to time nothing. Most nearly any thread that I point out a deficiency in your position, you go all Crybaby Veto.
.
“Readers will decide”
– LOL – talk about a tired rhetorical t001. As if ‘readers’ know better than you and I what you have EXPLICITLY said and confirmed.
I want to pick up on something below, about how to define “useful arts”. It isn’t easy.
Has anybody read that book called “The Wisdom of Crowds”? Illustrations include the Submarine case and the Pig at the Fair.
The US Navy lost a submarinem, crippled, somewhere on the seabed in the Atlantic. Several expert teams were hurriedly tasked with computing its location. All projections failed. They were all miles out. But then sombody calculated the mean from the pluarality of expert assessments. The submarine was right there, and so was rescued.
As for the pig, each arrival at the Country Fair tried to guess its weight. The nearest was two Pounds out. But the average of the five hundred estimates was within an ounce of the true weight.
At the EPO, from the crowd of Appeal Board judges in DG3, there are more than a thousand final Decisions each year on eligibility and patentability. This is how the EPO is defining “technical”, with ever-greater precision.
But the mean of the decisions would only tell us what the law is at the EPO–not an objective definition of technical and non-technical.
Nothing like waiting upteen years after filing, through the wait of examination, then later after grant when (if) trying to enforce and be in a court of law to finally figure out (past-facto) what the appropriate language to use in crafting an application was supposed to have been…
With the Tweedledum and Tweedledee of this blog, folks, you just can’t win. I am castigated, that the EPO, with its “technical” is stuck still in the 19th century. So, I point out that there is no Binding Precedent at the EPO, so no absolute definition for “technical” that is frozen at the moment in time when the supervisory supreme authority hands it down. The deliberate eschewing of a frozen definition allows the EPO to creep forward steplessly, with its notion of “technical”, into the 21st century and beyond.
So then I am told that without such a definition there is no legal certainty as to what is eligible and what is not. Very bad!
So then I explain about the “wisdom of crowds”.
So then NWPA (priceless this) concedes that OK we might know what the law is at the EPO, but we still lack any once and for all absolute definition of “technical”. Very bad!
And anon adds something irrelevant about courts laying down how to draft claims that comply with the law. In Europe, anon, the courts have that explained to them by the EPO.
Now Max, I have explained many times that the problem I have with the EPO standard is that it creeps. That in the information processing arts, it essentially tries to determine where the hardware/software boundary is and that which is in hardware is good and that which is in software is bad. 1) that does not reflect the art. 2) you don’t whether you are in or out until they decide. 3) it can cost a lot of money to move that line. 4) often it is just up to the cleverness of the drafts person to put it in the line.
There are substantive issues raised by me. But, how generous of you to label me a tweedle and priceless.
NWPA,
MaxDrie is a shill in the strict sense of the word.
He has openly admitted that he has no interest in actually discussing points of law and readily takes a(n unjustified) sense of umbrage whenever I point out counterpoints that he should address.
Treat accordingly.
NWPA sorry but I do not see it as a fair or legitimate criticism that, when you pitch a claim at the PTO, one that you know very well is pushing the envelope, you don’t know in advance whether you will get it through. I see it as the professional duty of a professional patent attorney to push the envelope and the duty of the public authorities to push back. Nobody knows in advance, where that particular Tug (Push) of War will reach equilibrium, for any particular individual claim.
Such struggles are inherent in any jurisdiction. There should be creep, to the extent it is needed, to keep patent law up to date. Creep happens in the USA too. Better an EPO-style unidirectional “creep” than great big US-style unpredictable swings of “the pendulum”, as I am sure you will agree.
Of course drafting skill counts for something. How can you count that as a defect of the European System? As an experienced professional drafter, that hires out his skills in that line, why would you want anything else. Or are you advocating reverting to a time when there were no claims, just a description of the preferred embodiments?
Sorry I was tempted, and dubbed you a tweedle, implying that your views and those of anon are indistinguishable. That was wrong. Everybody here can see that your writing style, and that of anon, are poles apart.
MD Sorry I was tempted, and dubbed you a tweedle, implying that your views and those of anon are indistinguishable. That was wrong. Everybody here can see that your writing style, and that of anon, are poles apart.
Like ski poles.
Max, I cannot respond to your post below so I respond to mine. I think there is a bigger picture here. The U.S.A. has and is the leader in innovation. Europe follows. It is hard to be the leader when you set up lines and not principles. I think I agree that for a group of countries that want to trail a bit after the U.S.A. that the EPO method of determining 101 isn’t bad. But, the leader needs principles to encourage those that push the boundaries and jump the boundary line.
Defining terms is sometimes hard. Indeed. A useful reminder from MD.
Taking means of estimates to arrive at another estimate is ancient (and can be applied to any kind information). Also, for every example of the sort you gave, there are a trillion other examples where the mean of a set of estimates was not as accurate as one of the estimates in the set.
If you really really really love patents, you could similarly argue that one of the Mars rovers could have been kept from crashing if only someone had patented a method of double-checking one’s math to make sure that a number isn’t off by an order of magnitude, wherein the trouble-shooting is in the context of a Mars rover landing. Alas.
Awarding patents on the application of ancient math/logical concepts (including “crowd sourcing”) to “new” contexts does not promote progress. It only promotes patents.
That’s some serious dust-kicking there.
(Most would call it excessive innuendo, but RQ/HD has sworn that he does not use that rhetorical t001 and Leopold upvoted that, so it ‘must be true‘)
On a related topic, how did 6’s date with the French model go?
Dennis: I’m puzzled by:
“Rather than walking through each claim of each patent, the District Court (1) first held that, for eligibility purposes, Claim 1 of the ’786 patent (the method claim) was representative of all claims in the patents and (2) then found that claim ineligible under § 101.”
How can this be? Doesn’t each independent and dependent claim stand/fall on it’s own?
Isn’t standard practice to include 101 fallback claims, in addition to 102/103 fallback claims (in-order to move the claim further away from any 101 cliffs/issues).
The appellate court essentially treated this as a litigation mistake by the patentee. In particular, other side argued that all the claims were the same for 101 purposes and the patentee did not object to that characterization and so it was deemed waived.
Or see my Key 2 on the sister thread…
The litigation mistake is surprising.
Thanks Dennis.
Isn’t standard practice to include 101 fallback claims, in addition to 102/103 fallback claims (in-order to move the claim further away from any 101 cliffs/issues).
What Dennis said.
Isn’t standard practice to include 101 fallback claims, in addition to 102/103 fallback claims (in-order to move the claim further away from any 101 cliffs/issues).
What Dennis said.
In addition, when it comes to “inventions” like this one, what would the “101 fallback” be? You can keep tossing in more “limitations” about, e.g., what kind of information is stored on the computer or whether you see an ad before you get the information or whether the person typing in the information is wearing a white lab coat or a yellow lab coat, or whether the person is watching a movie that is “not publically available” when they receive a notification that their requested information is available, or whether the “computerized expert” is inside a robot car … none of that stuff fixes the issue here which is that a method for “guiding” an information gathering process by organizing that process into rational sub-parts is ineligible, whether you do it on a computer or whether you do it with your brain, and regardless of whether the information is “medical diagnostic information” or information about how to get the lint out of your bellybutton.
In addition, when it comes to “inventions” like this one, what would the “101 fallback” be? You can keep tossing in more “limitations” about, e.g., what kind of information is stored on the computer or whether you see an ad before you get the information or whether the person typing in the information is wearing a white lab coat or a yellow lab coat, or whether the person is watching a movie that is “not publically available” when they receive a notification that their requested information is available, or whether the “computerized expert” is inside a robot car … none of that stuff fixes the issue here which is that a method for “guiding” an information gathering process by organizing that process into rational sub-parts is ineligible, whether you do it on a computer or whether you do it with your brain, and regardless of whether the information is “medical diagnostic information” or information about how to get the lint out of your bellybutton.
Apologies for the copied paragraph.
Here’s how the comment was supposed to look:
Inventor807 Isn’t standard practice to include 101 fallback claims, in addition to 102/103 fallback claims (in-order to move the claim further away from any 101 cliffs/issues).
What Dennis said.
In addition, when it comes to “inventions” like this one, what would the “101 fallback” be? You can keep tossing in more “limitations” about, e.g., what kind of information is stored on the computer or whether you see an ad before you get the information or whether the person typing in the information is wearing a white lab coat or a yellow lab coat, or whether the person is watching a movie that is “not publically available” when they receive a notification that their requested information is available, or whether the “computerized expert” is inside a robot car … none of that stuff fixes the issue here which is that a method for “guiding” an information gathering process by organizing that process into rational sub-parts is ineligible, whether you do it on a computer or whether you do it with your brain, and regardless of whether the information is “medical diagnostic information” or information about how to get the lint out of your bellybutton.
It would be nice to have a thread limited to a discussion of the briefs and Alice case. I have read several and here’s my quick impression:
The Alice brief itself is great. Persuasive. I think they are right and will win unless the other side comes up with some persuasive argument.
Both the Michel briefs and the AIPLA briefs are not worthy of being read. Both argue simply that programed computers should be eligible. They take the same position as did Rich back in the day that machines are eligible, computers are machines and programmed computers remain machines therefore program computers are eligible. Almost ridiculous.
The Retailers brief takes a fundamentally opposite view from the AIPLA and Paul Michel. They argue that computer implementation by itself should not impart eligibility. They further argue that 101 is a threshold test. Thus I believe what they are arguing is to strip a claim of his computer-related claim limitations and determine eligibility based upon what is left. In essence, if nothing is left but an ineligible method, then the claim is ineligible.
I think this suggestion comports well with the law and with Bilski. The question then would become in this case is whether shorn of its computer related limitations the claims and Alice recite a patentable method. That actually might raise a very interesting subsidiary issue as to whether the claims as a whole are directed to a business method and whether a business method is within the useful arts. Bilski never really answered that question.
“whether a business method is within the useful arts. Bilski never really answered that question.”
LOL – seriously Ned? There is no reasonable way to believe that.
None.
You are aware that Stevens lost his majority precisely because he attempted to re-write direct law passed by Congress related to the fact that business methods are patent eligible – as a category, right?
Serious backsliding from you on this point of law and history. Completely unconscionable.
I don’t know what the Sigram Schindler brief was about. I didn’t really read it as I couldn’t get over the fact that it was not written in English.
“Judge Taranto is also important because, of all the Federal Circuit judges, he likely best understands the pulse of the Supreme Court and I will not be surprised when the Supreme Court decision in CLS Bank parallels this one.”
Maybe, but I’m not as sanguine. The Roberts court is, of all things, cautious. They very rarely can bring themselves to rule against “big” (government or business) even if it means contorting themselves (see, e.g., the ACA, upholding Big G on grounds that Big G repeatedly denied applied, and various trimmings of class action suits, shielding Big B). John Roberts in his role as “umpire” is quite capable of calling one in the dirt a “strike” to avoid any controversy with Big.
Upholding the Taranto/Lourie approach in CLS Bank would invalidate quite possibly a million or so claims, most owned by Big Business. Maybe they should be exploded – but that would be a bold step that I’d be surprised to see Roberts permit. Look for a more nuanced and limited ruling that slaps down the discredited “gist of the invention” approach that Lourie’s boils down to and instead decides that the specific claims on appeal fit more closely to one of the invalidating cases in the Court’s ad hoc and chaotic constellation of “abstract idea” shooting stars, which consequently will continue to wreak havoc apace by sowing ever more uncertainty.
T, you really do not think much of Roberts do you?
I think T is trying to be objective about Roberts and do not read any animus in his post at all.
Now on the other hand, Ned, your posts drip with this rather bizarre animus to Rich and anything related to him that gets in the way of your third-party interests.
We both know why, don’t we?
I don’t think much of bias for Goliath against David. Do you?
I don’t think much of bias for Goliath against David.
There’s a multi-millionaire patent attorney in his mansion in Dallas richer than 99.9% of the people in the country and able to ruin the lives of any one of millions of people just by dragging them into the court at the point of a patent that he can afford to buy or obtain but they can’t.
Who’s “Goliath”? Who’s “David”?
Most of the time when this “David and Goliath” b.s. comes up it’s really more of a “Goliath with golden diadem” versus “Goliath with a platinum diadem.” Maybe this yarn got traction back in the 60s but I’m not sure any educated person is fooled at this late date.
Who is Holden Caulfield?
This is certainly a possible outcome, Tourbillion.
On the other hand, Bilski, Prometheus and Myriad also wiped out a whole lot of junky claims for a great many “big businesses.” But the earth still turns, the economy continues to recover at its slow steady rate, the PTO keeps churning out the patents, the top few percentiles are better off than they were before the recession while everyone else scrambles for crumbs.
It’s entirely possible that Roberts knows that a broad ruling tanking “millions of patents” is just what the patent system needs. If it’s really a problem, Congress can always come in and rescue those poor, suffering people who lost their right to claim new functions for old, programmable computers.
I want to pick up on the exchange somewhere in this thread, between Malcolm Mooney and Ned Heller, on using 103 as a filter to complement the 101 filter.
If I understand him aright, Ned suggests that SCOTUS should tell us that patents are restraints on trade and so must be confined to the “useful arts”.
This he thinks would set up 101 to filter out as ineligible claims that are not confined to the ambit of the useful arts but instead creep beyond it.
For those claims that do not go beyond the useful arts, he suggests that obviousness should be judged through a “useful arts” prism. Other sorts of non-obviousness, while all very fine, good and admirable in themselves, should be declared not sufficient on their own to satisfy 103. Rather, some non-obviousness within the useful arts should be declared a prerequisite of patentability.
But MM says that is a non-starter, because of the Constitution, the Statute, the caselaw, Uncle Tom Cobleigh and all. Me, I suspect there is another leason for his fear and loathing.
I think he is averse because it is the way another Patent Office, the EPO, does it. He knows that this way of doing it has been so vigorously attacked bv the English Establishment, who don’t like it when a mere Patent Office (the EPO) has found a better way to do substantive patent law than it advocates.
Professional jealousy explains an awful lot of debate in this world. also here, I think. The “Not Invented Here” syndrome is strong. Judges think they know how to lay down the law better than Patent Offices can do. Obviously, many Americans quite understandably think they do patent law better than the softie-woftie, airy-fairy Europeans.
SCOTUS, what do you think?
Interesting thought MaxDrei,
But I think the real reason is much much much simpler: to do as you suggests would not achieve the aims of what Malcolm is after.
It’s easy to draw a parallel to the wiggle room in the EPO law language introduced by ‘as such’ and per se.’ Malcolm wants a hard boot brought down on any software patent, and far too many of such patents are allowed in EPO land because (and this will make him sad) the truth of the matter is that software is equivalent to firmware and is equivalent to hardware. Software is man made manufacture and machine component. Software – when created for a utilitarian purpose that falls within the Useful Arts (which almost all commercial software does) easily escapes the pogrom that Malcolm is advocating by any means necessary.
anon thanks for your reaction. Tell me, does, say, ingenious new financial trading, insurance, customer preference or accountancy software have a “utilitarian purpose” that “falls within the Useful Arts”? At the EPO, where “technical” is the litmus test, you have to solve an objective problem which is a technical one, to get past the EPO’s 103 provision. By analogy, SCOTUS could say that you don’t pass the 103 filter with anything less than the solution to an objective problem that falls within the ambit of the useful arts.
As far as I am aware, in the late 18th century when the Constitution was written, the “useful arts” did not include such activities as trading, book-keeping or book-making (commercial risk management). As I said at the outset, patents that are a Government-sponsored restraint of trade. Thus, and this is a no-brainer, their ambit must be tightly confined to what they are supposed to cover.
MaxDrei asks: Tell me, does, say, ingenious new financial trading, insurance, customer preference or accountancy software have a “utilitarian purpose” that ‘falls within the Useful Arts’?”
The easy answer is Yes.
This question has been asked and answered before. Note the ‘too clever by half’ remark to how the US Congress treated tax methods in the most recent passage of the America Invents Act – not ruling them out directly as not to the Useful Arts, but rather treating them special as a subset of Useful Arts material being legislatively designated as per se old in the art.
As to “technical,” again – this has been suitably discussed in the past – whether or not MaxDrei’s mind is suitably open to learning or not.
And lastly, MaxDrei (again) commits legal error by attempting to constrain “Useful Arts” to an 18th century understanding. I have explained before why this is so. That MaxDrei refused to learn the lesson then does not change the lesson.
I would also remind MaxDrei that he repeats an errant view with his statement of that very same 18th century understanding (but allow for the fact that many – even well intentioned individuals make a similar mistake). Prof. Crouch had a guest post on the actual history of patents granted to business methods over the course of our nation’s history showing grants to what today is considered “trading, book-keeping or book-making” notwithstanding (and also important to keep in mind) the maturing of such items and incorporating the scientific method extensively in the business arts that has occurred in the second half of the last century. There is a very real reason why Section 101 is written in such a wide-open gate manner – and that speaks directly against the attempt – as witness MaxDrei here – of artificially constraining what is patent eligible.
anon, can you tell me the difference between an odious monopoly on trade and a non-odious monopoly on trade? Is the only difference whether the trade monopoly is a stuff of invention? Or is the subject matter itself odious?
Not sure exactly what you are asking MaxDrei, as you appear to be conflating an invention with some non-invention monopoly.
As I indicated to Ned, there is no need to switch on the dust kicking machine as inventions are strictly for limited times and must meet the rest of the statutory requirements.
It is amusing though to see you attempt to trip me up. Any time you want to stop along this path and reflect on any of the lessons I provide for you, please feel free to acknowledge your learning of those lessons.
MaxDrei: Our §103 requires us to first determine the differences between the claimed invention and the prior art, and then to determine whether or not an invention is being claimed, but with the only criteria being obviousness. Time and again I’ve had discussions with anon here where the differences between the claimed invention and the prior art related to things clearly they had no relationship to the useful arts. I asked whether if the only difference between the claimed invention and the prior art was music. I was told by anon that music was not within the useful arts. I asked whether if the only difference between the claimed invention prior art was beauty. I was told by anon that beauty was not within the useful arts. I asked whether if the only difference between the claimed invention and the prior art was printed matter. He agrees that printer matter that does not have a functional relationship to the underlying invention is not the kind of difference that distinguishes the prior art.
These conversations have taken place over years, but it illustrates the point. Not all differences between the claimed subject matter and the prior art distinguish the claimed subject matter from the prior art. And the question is why.
One explanation is that the differences do not have a functional relationship to the claimed invention so as to modify it functionally. I think this is right, but only to a degree. I think it is what you folks in Europe actually use.
But what is a functional difference? I think a functional difference is a technological difference – a difference the patent laws were designed to protect and in fact the subject matter of patents described in the Constitution. Thus we determine in part that the reason certain differences are not the kind of differences that matter is because some of those differences are not within the useful arts.
When I broached this topic with Malcolm, he resisted because he believed that the real inquiry as to whether the claimed invention was within the useful arts had to be limited to 101. But this is where analysis breaks down to a degree because the Supreme Court has never clearly articulated that one must first determine differences between the claimed subject matter and the prior art to determine whether those differences are within the useful arts. They have in fact said just the opposite in Diehr. However, that first determine the differences analysis is commanded by §103. As described, §103 first asks that we determine the differences between the claimed subject matter and the prior art before we determine whether the subject matter is directed to an invention. That is when the determination of whether the claimed invention is within the useful arts or subject to one of the exceptions related to phenomena of nature or laws of nature should be made.
The issue of useful arts becomes important when the subject matter that is the point of departure over the prior art relates to business and trade. One of the fundamental reasons why both the English enacted Statute of Monopolies and we Americans constitutionally limited patents to inventions within the useful arts is because of the prior practice by English kings and queens of granting trade monopolies that became known as the odious monopolies. These trade monopolies sparked the power struggle between English kings and Parliament that led to the English Civil War. The dispute between American colonists and the British East Indies Company, who enjoyed a trade monopoly with the America’s, sparked the American Revolution. Granting trade monopolies is odious and we should stay as far away from such as possible. So when we began to grant patents on trade where the employment of computers and such is only nominal, we violate the spirit in essence of the Statute of Monopolies and of the U.S. Constitution. We should tread carefully.
This said, I think the claims in the Alice case do not simply recite computers nominally. For this reason, I would not be surprised if the Supreme Court reverses the Federal Circuit and finds the claims eligible for patenting.
Close Ned – but you misunderstand a critical point in our discussions about Non-Useful Art examples.
That point is that you do not even reach the question of novelty or obviousness. That is why you must come to a full stop when you go down your errant path and proceed no further. That is why I berate you for attempting a discussion in the first instance – such discussions are non-starters for any intellectually honest discussion of the pertinent patent law (typically 102/103).
You need to remember the full lesson as I have taught it to you.
No anon, I simply listen to you. I may not always reply, but I pay attention — just as I do with Malcolm.
I think the Euro approach has a lot to recommend to us in that they conduct the eligibility inquiry as part and parcel of determining invention. But isn’t that where the analysis should take place? Our conversation over the years suggest that it is.
The Euro approach is indeed interesting, but cannot be applied blindly as their ‘technical’ simply is not in accord with our ‘Useful Arts.’
anon, either you are thick (in a Princess Diana way) or you deliberately misunderstand. My suggestion, age-old on this blog, is that, just as Europe runs with “technical”, so could the USA run with “useful arts”, but only after SCOTUS and the Federal Circuit have told the USPTO, in terms that are useful, what is comprehended by the useful arts and what is not.
Ned and MM get it. (That’s why MM tells me it is so silly) but, sadly, you (once again) not.
It is difficult, of course. That is why the EPO offers no definition of “technical”. But that does not matter in a Europe with no Binding Precedent. With >1000 unappealable final decisions each year, the EPO is making itself clear enough by now, what is “technical” and what is not. In the USA, with Binding Precedent, SCOTUS has to be clear. That’s hard. No wonder it and the Federal Circuit run away from that task.
If I have misunderstood your position, then tell us again why the Euro approach to dividing the filtering task between 101 and 103 is useless just because “technical” and “useful arts” are not coterminous.
…and once again you reverse the impact of binding precedent – as without it, you have the possibility of eternal ‘flavor of the day’ and no driving to a FIXED position in law.
For some odd reason that you have never explained, this lack of ability to settle is view by view as more, um, well, settled.
And trust me – Malcolm has never said anything indicating that he gets what Useful Arts means.
Plus Ned does not “get it” either – as it is so obvious from his perpetual anti-business method posting.
Malcolm has never said anything indicating that he gets what Useful Arts means.
Nice try. I’ve written quite a bit about that subject.
“Useful Arts” means whatever the Supreme Court, after consideration of carefully presented arguments, tells us it means. And they can change their mind at any time, especially on the margins.
But since you seem to think your some kind of an expert, why don’t you tell everyone exactly what “Useful Arts” means.
“And they can change their mind at any time, especially on the margins.”
Like Stevens attempted in Bilski? Remember that? I’m sure you do. But guess what happened when ‘implicit’ needed to become ‘explicit’ in order for the judiciary to ‘change their minds.’
Do you recall the quote yet?
“I’ve written quite a bit about that subject.” LOL – llike the part that you attempted to distinguish the scientific method and that blew up in your face when I showed that business methods fall into that definition? Remember that?
LOL – such good times.
MD I think the claims in the Alice case do not simply recite computers nominally.
Absent the recited “functionality” of the various components/devices recited in the claim, is there anything about the connectivity of those recited devices that is inventive? If not, then the invention is just abstraction (“desired functionality” or information or both) layered onto old technology. That’s how I approach these claims. It’s analogous to the approach in Prometheus.
Receivers receive. Processors process. Transmitters transmit. Where the information comes from and the content of the information or the legal status of the information (e.g., copyrighted or not) or some other abstract arbitrary status of the information (did Bobby view the information in a purple room or a yellow room) does not fix the eligibility problem.
MD? Sorry but I do not recognise that quote as something I wrote.