Guest post by Emily Michiko Morris, Associate Professor, Indiana University Robert H. McKinney School of Law
Anyone familiar with recent Supreme Court patent jurisprudence was perhaps disappointed but certainly not surprised by the Court’s latest decision, Alice Corp. v. CLS Bank Int’l. The Court once again left many questions unanswered and failed to provide a clear rubric for identifying patentable subject matter. When viewed within the broader context, however, Alice fits nicely within what is actually a long-standing pattern in § 101 cases. IF Ultramercial v. Hulu follows this pattern after its now second GVR, the Federal Circuit may finally affirm that the internet-mediate advertising method at issue there is unpatentable subject matter.
In What Is “Technology”?, I explain that as unmethodical as patentable subject matter often seems, two surprisingly consistent concepts explain how courts identify patentable subject matter. The article dubs these concepts “artifice” and “action.”
Artifice refers to the well-recognized requirement that patentable subject matter be the product of human ingenuity, not nature. Less appreciated is the fact that artifice requires more than just changes in structural or other physical characteristics; to be patentable, a claimed invention must also function in some new, non-naturally occurring way. We can see this latter point illustrated in the purification line of cases as well as Myriad, Funk Brothers, and Chakrabarty.
Much more obscure but more relevant to Alice is the concept of action. Roughly defined, action is the requirement of active rather than passive utility through operating, behaving, performing, or otherwise actively doing something; that is to say, an invention must be “self-executing.” Inventions that display, transmit, or even store information may satisfy the action requirement, but works such as laws of nature, mathematical algorithms, and “abstract ideas” are (perceived as) merely informational or descriptive in value and therefore unpatentably inert. Moreover, as Alice explains, the abstract idea category is not “confined to ‘preexisting, fundamental truth[s].’” By definition any purely informational or descriptive content, whether naturally occurring laws of nature and mathematical algorithms or human-made financial and economic methods, fails the action requirement. As the Court in Diamond v. Diehr put it, such works simply do not “perform[ ] a function which the patent laws were designed to protect.”
To the extent different tests appear to govern natural products versus laws of nature and abstract ideas, then, artifice and action – and more importantly, the circumstances in which each are likely to be invoked – account for these differences. Artifice obviously plays its largest role in cases involving products or laws of nature, whereas action is most important in cases involving abstract ideas and laws of nature. Nonetheless, patentability under § 101 requires both artifice and action.
Both Alice and Bilski illustrate what role action plays under § 101. The methods in both Alice and Bilski involved hedging risk during business transactions by relying on intermediaries, but more importantly, both methods served solely to inform parties about when they can safely transact. The Alice and Bilski opinions describe this as the abstract concept of intermediated settlement, but really it is just information – information about risk. As such, both methods were unpatentably inactive under § 101.
And although Alice differs from Bilski in that Alice’s method was computer-implemented, the Court found both methods to be unpatentable. Like artifice, action is also a scalar characteristic. Just as artifice depends on an invention’s perceived degree of alteration from nature, action depends on an invention’s perceived degree of activity, and despite Alice’s computer-implementation, the method was still not active enough under § 101.
Indeed, both Alice and Mayo emphasize the scalar nature of patentability under § 101. Under Mayo’s two-step test, a court first determines whether a claim is directed to a law of nature, natural phenomenon, or abstract idea. As the Alice Court observed, however, all inventions are directed to one of the patent-ineligible concepts at some level. The second and pivotal step is therefore to determine whether the claim demonstrates an “inventive concept” – that is, does the claim add elements “sufficient” and “enough” to establish patentable subject matter.
And to see that a sufficient “inventive concept” requires sufficient action, one need only look at how the Court treats computer-mediated elements with regard to patentability under § 101. Computers are widely regarded as “technological,” but much computer technology is “information technology,” and computer use primarily to manipulate data or other information thus adds no patentable action. Computer implementation in Alice’s method followed exactly this pattern – as the Court noted, the computer served only to create and maintain “shadow” accounts, obtain data, adjust account balances, and issue automated instructions. Accordingly, whether Alice claimed its invention as a method, system, or medium, the invention failed to provide an adequate “inventive concept” because it did not demonstrate sufficient action.
Under an artifice-plus-action standard, then, Ultramercial’s internet-mediated advertising method fails § 101. Ultramercial claimed a method of distributing copyrighted content for free in return for viewing an advertisement. The method is purely an exchange of informational and expressive content and performs no action whatsoever, and the claim’s cursory reference to the internet does nothing to add a “sufficient inventive concept.”
This is not to say, of course, that computer-implemented methods are never patentable subject matter. The Alice Court pointed out the difference between computers used purely for information processing and computers used to effect improvements in “any other technology or technical field,” or improvements in the function of the computer itself. Diehr’s computer-assisted rubber-curing process, for example, was adequately “technological” and therefore patentable, whereas the computer-implemented methods in Benson and Flook yielded “simply a number” and were therefore unpatentable. Per the view of the patent system, information processing is simply not “technological.” Similarly, computer or storage media that are distinguishable only by their informational or expressive content alone been held unpatentable if the content has no “functional” relationship with the device. The variable role that computers and other tangible devices can thus play in an invention may be why the Supreme Court rejected the machine-or-transformation test as the sole test for methods under § 101.
And while the discussion here focuses mostly on business methods, note that the Mayo two-step test as stated in Alice covers all patent-ineligible abstract ideas, laws of nature, and even phenomena of nature – all are subject to the same requirement that a claimed invention add “enough” to constitute a patentable inventive concept. For claims directed to phenomena of nature, “enough” means artifice and meeting the age-old test of “markedly different characteristics from any found in nature.” For abstract ideas, laws of nature, mathematical algorithms, mental processes, and all other forms of information, “enough” means action and demonstrating function beyond merely informing.
As simple as artifice and action may sound, however, patentable subject matter clearly remains a difficult and ambiguous issue. The difficulty lies in the scalar quality of both artifice and action and deciding where along these spectra any given new invention falls. The requisite degree of artifice and action has also varied over time as the liberality of patentable subject matter has waxed and waned, creating yet further uncertainty. Most significantly, where the line between patentable and unpatentable lies along the spectrum is entirely unclear. There are no bright-line rules and no magical claim elements that can guarantee patentability under § 101.
The Court has often (but not always, as our host Jason Rantanen has pointed out) expressed a preference for a “functional” approach to patent law, however: that is, a preference for standards over hard and fast rules. As stated in Bilski’s rejection of the machine-or-transformation test, to do otherwise would “make patent eligibility ‘depend simply on the draftsman’s art.’” True, the artifice-plus-action standard requires courts to make many judgment calls about where along the spectrum of artifice and action any given invention must fall before it can be considered patentable technology, but standards are often vague. Besides, patent law frequently must address these kinds of line-drawing exercises. The non-obviousness, utility, enablement, and even written description requirements all force courts to make judgment calls.
Compounding the difficulty is the fact that § 101 determinations are in the end based on nothing more than intuition. As I and a number of others have noted, none of the pragmatic justifications commonly cited in support of § 101, such as preemption and disproportionality explain how patentable subject matter determinations are actually made or, more importantly, why. Thus, although artifice and action consistently appear in patentable subject matter, the combination does not necessarily reflect the most efficient or “correct” way to define patentable subject matter. Rather, the combination merely reflects an underlying intuition about what constitutes technology. (In Intuitive Patenting, a companion article to What Is “Technology”?, I argue that there simply are no more objective bases on which to make these determinations.) Unfortunately, patentable subject matter’s intuitive nature leaves courts effectively unable to specify how they reached their determinations. This often leads to language that sounds more like non-obviousness, novelty, or utility than to § 101, but in the end, artifice and action are better explanations for these otherwise perplexing references.
[…] the popular IP blog, PatentlyO, seeks to explain if not justify the Court’s ruling. In “Alice, Artifice, and Action,” Jason Rantanen elucidates the thinking of the Court as he explains that the problem with […]
Seriously 6?
““COURTS impermissible “gist” type reasoning, ”
Well you’re going to need to set that aside. And that is because there is no “gist” type reasoning in these decisions. That’s just you imagining sht from thin air and attributing it to the USSC.””
“_________________
_________________
1
Cite as: 573 U. S. ____ (2014)
Opinion of the Court
NOTICE: This opinion is subject to formal revision before publication in the
preliminary print of the United States Reports. Readers are requested to
notify the Reporter of Decisions, Supreme Court of the United States, Wash
–
ington, D. C. 20543,
of any typographical or other formal errors, in order
that corrections may be made before the preliminary print goes to press.
SUPREME COURT OF THE UNITED STATES
No. 13–298
ALICE CORPORATION PTY. LTD, PETITIONER
v.
CLS
BANK INTERNATIONAL
ET AL
.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT
[June 19, 2014]
“We hold that the claims at issue are drawn to the abstract idea of intermediated
settlement, and that merely requiring generic computer
implementation fails to transform that abstract idea into a
patent-eligible invention. We therefore affirm the judgment of the United States Court of Appeals for the Federal Circuit”
No mention of shadow accounts or the many particular steps recited…. just an arrogant distillation down to a gist ” intermediated settlement”.
Then a later allegation that this is somehow fundamental and therefore abstract…. or abstract even though it isn’t fundamental.
Geeeezuz
Oh my! No mention of “shadow accounts”! No mention of all the other abstract steps that are part of the intermediated settlement! O noes! O noes! They must be looking for the “gist”! They must! They must! There’s no other explanation! I just can’t think of any other explanation!
Yes, I’ve mentioned to you and all the others already that they should go ahead and spell out the entirety of the abstract idea at issue so that people like yourself don’t delude/confuse yourself just like you’re doing right now. But they’re the supreme court and I can’t tell them what to do. And technically there is little need for them to.
Again, for like the dozenth time, all of “intermediated settlement” is excepted because everything in that “class of things” is an abstract idea. That includes intermediated settlement using “accounts” in whatever “process” of intermediated settlement you’re describing, regardless of whether those accounts are shadowy or not. It includes intermediated settlement using an e-calendar program to figure out the date/time as well. It includes all the others of a million abstract things within the category “intermediated settlement”. And all of them you can fairly say are just directed to a manner of intermediated settlement, all of which class of things is excepted.
And that’s not to say that it would be impossible to make an invention in the space. You could have made up a specific type of machine to do the transaction and then told us all about its novel structure. But you wouldn’t want to do that, because that would involve effort and the patent you got wouldn’t be worth the paper on which it is printed. In this space you generally have to be able to claim the abstract idea for it to be worth jack. And that’s precisely what you cannot patent.
Do you realize that you missed the point earlier and all this comes across as is your inability to see your own limitations, 6?
“You could have made up a specific type of machine to do the transaction and then told us all about its novel structure”
You missed the memo from the Supremes: actual categories don’t matter. Machines can be “abstract” too.
Here is where you are mistaken:
“That includes intermediated settlement using “accounts” in whatever “process” of intermediated settlement you’re describing, regardless of whether those accounts are shadowy or not. It includes intermediated settlement using an e-calendar program to figure out the date/time as well. It includes all the others of a million abstract things within the category “intermediated settlement”. And all of them you can fairly say are just directed to a manner of intermediated settlement, all of which class of things is excepted. ”
Specific forms of intermediate settlement are not abstract as they are specific. You might allege that Fast Fourier Transformation is an abstract idea. However, specific ways of performing FFT or specific ways of getting a machine to perform FFT are clearly not abstract.
If any particular form of intermediate settlement is abstract, then any particular form of flying is abstract, any particular form of generation light is abstract, and any particular way to clean cotton is abstract and no one can patent a plane, light bulb or cotton gin.
6 has previously stuck his foot in his own mouth on the topic of “abstract” and what was not covered by the claims.
I noted his self-contradiction on the earlier Alice thread.
You lost me with “it is just information.” It’s time for those in the IP profession to recognize what many scientists and engineers have long understood: that information is physical. Just as E=MC^2 helps us understand the relationship between matter and energy, the laws of thermodynamics plus a good deal of modern quantum mechanics and other fields helps us understand the physical relationships between information, matter, and energy. Entropy is one of the key physical concepts that helps us appreciate that linkage. See Wikipedia’s article on this topic: link to en.wikipedia.org
See especially the section, “Information is physical.”
Information cannot be processed without physical, material change often affecting more than just physical entropy alone. That information processing may be in the form of electronic signals, computer chips, magnetic media, graphical interfaces, or chemical reactions with DNA (DNA, of course, is “just information” encoded with a brilliantly simple and tangible system).
In the Industrial Age, we focused on inventions made with cogs and pistons, steel and glass–crude, weighty, and easy to touch or see. Their making and their use involved smoke and flame, clangs and whirrings that nobody could miss. But we have moved into the the Information Age, where the greatest innovations that will drive our economy, the Knowledge Economy, are much finer, often microscopic, involving silent, invisible change that is still every bit as physical and real as anything a blacksmith hammered out. To dismiss the workings of the new electronic machines of our day and their many fruits as mere abstractions, intangible, immaterial, the whisps of ethereal spirit devoid of substance, is to miss the reality of the greatest era of innovation and invention ever. To exclude inventions in handling information as inherently unpatentable is a tragic error.
Jeff, which is “information,” a manufacture, a composition, or a machine?
Ned –
Information is a work piece. No one is claiming information. We are talking about claiming a process, which you left out of the list, by the way. Processing information is patentable.
Ned chastised recently about treating the statutory categories respectfully, yet habitually disrespects them himself by attempting to denigrate the fourth equal category as being merely a sub-category of the hard goods.
Les, if processing information is patentable, Benson is fiction.
Ned,
I think you missed this quote by Les: “No one is claiming information.“
anon, but the statement that processing information is patentable subject matter is a tad overbroad because it would encompass Benson.
Not at all Ned – look at the Benson decision itself and note the most definite strict view the Court there was taking on the meaning of the term before them: “A procedure for solving a given type of mathematical problem is known as an ‘algorithm.’” and “t if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.
It may be that the patent laws should be extended to cover these programs, a policy matter to which we are not competent to speak. ”
Clearly, there is a difference between applied math and “using math” (whatever that means) to process information and a math formula (pure math) all on its own.
silent, invisible change that is still every bit as physical and real as anything a blacksmith hammered out.
Stay away from drugs, kids. You really don’t want to end up like Jeff here.
The sound of one Jeff clapping:
Information cannot be processed without physical, material change often affecting more than just physical entropy alone.
Fascinating.
Does a movie weigh less after somebody watches it?
Which is more dense — available real estate or Johnny’s credit card account number?
If you want to talk about fascinating, read the part of the wiki about the “it’s totally physical” or whatever. The first “proof” of its “physicality” is a “thought experiment” involving a “demon” iirc. I didn’t bother with the rest after that lolfest. Information “scientists” at work you guys, lol!
6, there are many metaphors and thought experiments that are used to illustrate principles in science. One can also get a good chuckle out of Schrodinger’s Cat as well and a dozen other models and metaphors in current use with varying degrees of silliness coupled with utility. Even the classical model of an atom as little balls in the center with other little balls orbiting it is almost as laughable as atomic-sized “demons” trying to reverse entropy, but both can be useful to illustrate concepts. “Maxwell’s Demon” is a light-hearted model for addressing concepts related to the Second Law of thermodynamics, but the concept can be used to illustrate relationships between information and entropy.
Whatever thought experiment or physical experiment is used, one has to face the reality that there is no such thing as purely abstract information that we can use and process without affecting the physical world. All information is linked to tangible matter and reading, storing, or processing it changes the physical states of associated matter. Often the changed matter is microscopic and hidden, hence “invisible” to the naked eye, but sometimes the changes are easy to see. Look at a DVD onto which your “abstract” movie information has been recorded, or “burned.” You can see that where it has been recorded, it looks physically different. Ditto for music on old-school vinyl. With just a magnifying glass or better a microscope you can easily see the grooves and their nonuniform wiggles that encode the information you can hear as music. Whether it is punched on a code, stored in magnetic bits of memory, written to a DVD, or embedded in DNA, real information, the kind that can be used and processed in the real world, is linked to changes in matter, and reading, storing, and processing it also involves changes in matter. You don’t see the sparks and smell the smoke (certain laptop brands excluded), but using information involves physical change and is not “merely abstract.”
6 plays the f00l – but noting that 6 plays the f00l is not allowed…?
C’est la vie
lol – and the proper explanation for structure as understood in the art is lost…
Not that those needing to understand such an explanation would be open to learning it…
“6, there are many metaphors and thought experiments that are used to illustrate principles in science.”
Yeah so what? You don’t have to lay out a list of metaphors used, I’m familiar. Information being physical is not some abstract “principle” that merely needs a demonstration as to how it COULD occur, you need to prove that shizzle because at present it is nothing more than a hypothesis you really wish were so. And ain’t none of that stuff done so.
“Whatever thought experiment or physical experiment is used, one has to face the reality that there is no such thing as purely abstract information that we can use and process without affecting the physical world.”
O noes! You have to “face that reality”!
Yeah we faced it. And we’re still waiting on evidence for your little hypothesis. Of course it will never come because fundamentally information is an abstract concept. By definition if for no other reason. Both of the word “information”, and of “abstract concept”. Information will never be “physical” because it wasn’t defined that way in the first place. And any attempt to prove that information is “physical” will fail until you successfully redefine the word.
“All information is linked to tangible matter and reading, storing, or processing it changes the physical states of associated matter. ”
Is that right? Funny, I thought the photons transmitting this message to you were completely without mass. But I mean, if you have evidence the contrary then by all means, win a nobel prize!
And you don’t have to run down a laundry list of how information can be physically encoded. I know all about it. Doesn’t change one dam thing. Certain representations of information can be physical. Whoptie do! Doesn’t come within a logical mile of proving what you’re attempting to set forth and need to eventually prove if you want your hypothesis to have legal weight.
Sounds like you are suffering from one of your OCPD moments there 6 – wanting all kinds of “facts” and whatnots, instead of embracing your “lawl is subjective totally in the mind so anything goes” view.
Oh, wait, that view is only for you when you don’t want to face the facts (and the law) that shows you to be objectively wrong.
Gotcha. It will be our little secret 😉
Gd it you’re dum. Wanting evidence to support a hypothesis put forward has nothing to do with being OCPD re re.
G d you’re fuc king dum.
“Oh, wait, that view is only for you when you don’t want to face the facts (and the law) that shows you to be objectively wrong.”
You know what though, I’ll bite, what am I “objectively” wrong about today? My main statement is that there is no evidence put forth to support his hypothesis. So how am I “wrong”? Do you have evidence? Put it forth. Support his hypothesis with some evidence already. Go ahead. Be my guest. We can set the “law” aside for a moment and focus just on his hypothesis alright? What’s the evidence?
You are objectively wrong in being a hypocrite 6.
Your pursuit of the “med-line” control gambit is clearly out of line with any of the regular contributors on this blog, and notably, the ones that happen to align with your anti-patent views.
“Wanting evidence to support a hypothesis put forward has nothing to do with being OCPD re re.”
Pure hypocrisy.
We both know this, and yet you persevere in a course of action that just wastes both of our time. We also both know why you do so – as you have no other ‘comeback’ when I am the one putting points in front of people and asking them for evidence to support their hypothesis in view of the counterpoint. Then, you clamor that it is I somehow seeking “control.”
You should talk to your doctor about this.
“Pure hypocrisy.”
There is nothing hypocritical about that. Being a scientist so to speak and merely wanting evidence to support a hypothesis is not an indication of OCPD. There are many lists of the symptoms of OCPD and that is not one. It’s that simple. You’re just making that up out of thin air because you have felt like that’s what you’ve done in the past and I called you on it. In reality of course you were in fact not simply asking for evidence (though you did that additionally sometimes as well), and instead you were simply insisting for the thousandth time you were “right”, usually using that word. And not to mention, that others were “wrong”, again usually using that word. Note that you’re doing that as we fcking speak.
There is a difference anon. One way, simply putting your view forward and asking for evidence for the other person’s position (so that you’d be convinced) is not socially dysfunctional. The other way, “knowing you’re right about everything” and telling everyone about how right you are, and how wrong they are, all the time, is socially dysfunctional.
That’s just how it is brosef. If you want to ask for evidence I’m not ever going to say you’re OCPD SOLELY as a result of your asking for evidence. If you go on to tell the person you’re right and they’re wrong, for the tenth time that week, then yeah, I might call you out.
I know this is difficult to comprehend. Just try to sit and think it through for a minute. Socially dysfunctional. One way is, the other way is not.
You’re bat sht insane dude. What I most certainly did do, like a big ol fat id iot, was JADE. The standard issue response to the OCPDer. I’d already read about this before and I totally forgot how essential it is! Or rather, how essential not doing it is! I’m not going to sit and JADE with you more today Mr. OCPD. I didn’t even catch myself up above. JADE’d my little heart right out didn’t I?
Meh. O well. Live and learn with your handy dandy neighborhood OCPDer.
I didn’t even realize until today what the deal is with your little accusations of hypocrisy and AATOTOAOTMD etc. But I will explain. Though for other people, not you so much. They’re “emotional arguments”. That’s why they’re so standardized. That’s why they practically never have anything to do with the actual explicit behavior that occurred on a given day. And why you practically never give an explanation of what the offending action was, you simply tell us the offense. Instead these arguments are just g e n eralized things other do. And they have to do with how you, or those you’re talking to (your audience for example), do or will feel about what occurred. I have to say I probably would have gone to the end of time having never figured this out on my own.
Just as a quick example, MM states anon lied. Anon says he’s accusing you of that which he does with no further explanation. Doesn’t matter how this thing (the accusation of you for something you think he does) happened to you, anon, since it happened. You feel it. It happened. To you. This horrible thing was perpetrated against you (cue righteous indignation). Nothing MM can say or could say (or in fact did say) will change that. It did in fact happen. To you. That much is “objectively true”. It totally happened.
The only funny part is you expect others to pick up on these things when of course we have no way of doing so on the interbuts and you just end up looking silly.
But even though I’m not going to JADE with you today, I’ll tell you what I will do. If you’d like, I will take the standard OCPD test if you will. Both report our scores, openly, honestly. K?
How’s that sound brosefus who totally does not have OCPD?
__________
MM (or ned etc) if you happen to read this do be a bro and remind me not to JADE with anon.
Justifying, Arguing, Defending, and Explaining – you just can’t do that sht with an OCPDer, it just makes the whole situation worse.
emotions are standardized..?
6, you are loosing it, just as you are accusing me of loosing it.
You are doing that projecting thing again.
You might want to mention this to your doctor.
“Just as a quick example, MM states anon lied”
You see 6, your focus is all wack again.
Every time Malcolm has laid out that accusation, he has failed to give an actual example.
Not one example.
And yet, time and again, he fails and is caught dissembling (robot chefs and his volunteered admissions as to knowing and understanding the exceptions to the judicial doctrine of printed matter, anyone?)
The problem you have 6 is that you have fallen into your lemming march with the wrong crowd and you refuse to change your belieb system.
All you are left with is shallow games that are ever so easily turned on you. The more you struggle, the worse your situation becomes.
Once again 6 you prove my point with your nonsensical Med-line control gambit.
“Justifying, Arguing, Defending, and Explaining – you just can’t do that sht with an OCPDer, it just makes the whole situation worse.”
All you ever wanted here was a place to climb up on your soapbox and vom1t your views uncontested without any critical feedback.
You have never been interested in a conversation, let alone anyone pointing out inconvenient things like law and facts. Much like the other anti-patentists who really do not want to have actual conversations on the merits.
So you just go ahead and label anyone who would dare provide law and facts contrary to your belieb system as having a medical condition, and excuse yourself from any actual accountability to the points presented against your belieb system (all the while whining that you should be able to counter other people’s hypothesis, because “that’s different”).
A shallow hypocrite is what you are exposed as. Your control gambits fail and you f001 no one. Go ahead and do nothing to the counterpoints of law and fact provided. The silence screams volumes. Oh, how it must irk you to not have your views simply be “accepted” as the gospel truth you belieb them to be.
You cannot watch a movie without changing the physical state of many entities. In a theater, thousands of Joules of energy will have supplied and consumed. From your computer, significant energy will have been used – yes, your computer may weigh a little less (e=mc^2)-and the physical state of devices in the computer will have been transformed in many ways to read the information, process it, and display it. Physical change cannot be avoided. “Invisible” to the naked eye, but real.
The point about “to the naked eye” is not new, and has been applied in law previously (outside of – and independent of – your position regarding “information”) – it is a critical point in understanding the holding (yes, Ned Heller, the holding) of Alappat.
Ned is willing to accept software burned into a machine as an actual change – not understanding that this acceptance is enough to wreck his agenda against software per se. By accepting the software burned into the machine, he accepts the notion that you put forth Jeff – the notion that changes not visible to the naked human eye, nonetheless are real.
When all is said and done, ‘oldbox’ is in fact changed when it is configured with new software, because ‘oldbox’ can in fact do something it could not before.
This is an objective fact. No amount of spin, of hand waving (or magic wand waving), of attempting to confuse with “using” or “data” changes the fact that ‘oldbox’ is indeed changed with the configuration – changed physically, even though that physical change cannot be seen with the naked eye.
You know you could just answer the question he asked instead of going off on tangents. The answer is no of course. The movie does not weigh any less.
Two sets of three resistors, 6.
Each identical in weight.
Configure one set in series and the other in parallel.
Do you have things physically different? Operationally different? Weight different?
Now magnify a million fold.
Connect the dots.
What do resistors have to do with the weight of a movie being the same or different after you watch it?
It’s an analogy 6.
Please, speak to my post and try not to trip over yourself.
“Please, speak to my post”
Why would I speak to your nonsequitur? There is no point in “responding” to your post. It has nothing to do with the topic.
The analogy is not a non sequitur.
Speak to it – commit to a position. Then I will help you see.
That is, if you are willing to back up your “hypothesis” in light of the counterpoint I present – well 6, are you? Why the refusal to back up your hypothesis? Huh 6? Why?
Yes, 6, we both know why – your view is off-base and you know it. Strictly speaking, a change in weight is quite meaningless.
There seems to be no end of the not particularly useful theoretical pontificating by academics on this Alice decision.
The one thing here that I partially agree with is: “compounding the difficulty is the fact that § 101 determinations are in the end based on nothing more than intuition.” [these days]
That is, of course, is precisely why S.J. motions based on “unpatentable subject matter” have now become suddenly much more popular with defendants and judges, as more likely to get granted to avoid expensive trials or settlements, and now more likely to be sustained by the Fed. Cir.
But after a few future Fed. Cir. decisions I think this trend may well shake out to impact mostly those claims that really deserve it [especially those closer to the facts in Alice and Bilksi] – i.e., purely functional very broad claims, especially, but not necessarily, business methods, with or without added “structural” claim language that is really no more than “do it on any computer.” Especially with no clear technological advance. Even if we ARE stuck with their being decided on essentially a “I know it when I see it” or “intuition” basis! [Plus some medical diagnostics and/or medical treatment patents with key mental steps or claiming unaltered genes?]
But note that more and more defendants are wiseing-up to attacking such extremely broad claims in an IPR or CBM on a § 103 basis to kill them before even needing to file an S.J. motion based on “unpatentable subject matter”. KSR has helped that. This should greatly reduce the NEED for “unpatentable subject matter” defenses. An IPR or CBM is also vastly cheaper for suits with those D.C. judges who will not even seriously consider an S.J. motions until near trial dates, which is too late to save millions in defendant litigation costs.
Using IPRs or CBMs should also satisfy those who object to this enhanced [but long standing] Sup. Ct. case law [not in § 101] unpatentable subject matter defense as being a backhanded way of killing very broad claims that should have never issued under § 103 with a proper prior art search and examination.
Paul Morgan after a few future Fed. Cir. decisions I think this trend may well shake out to impact mostly those claims that really deserve it [especially those closer to the facts in Alice and Bilksi] – i.e., purely functional very broad claims, especially, but not necessarily, business methods, with or without added “structural” claim language that is really no more than “do it on any computer.” Especially with no clear technological advance. [Plus some medical diagnostics and/or medical treatment patents with key mental steps or claiming unaltered genes?]
Paul — agreed. And those claims are never coming back. Good riddance to them! As Dennis wisely pointed out years ago, State Street Bank was the height of the in s a n i t y in this area. We’ve pulled back from there, thankfully, but there’s still some pulling back to do and a lot of those jn ky patents are still in the system waiting for someone desperate enough to try to enforce them.
What I’d like to see is more discussion about where the line on the eligility of information processing b .s . should be drawn and what words should be used to draw that line. It’s difficult to have that discussion here, of course, when you’ve got ten clooless b 0 z 0s accusing you of being a c-mmunist or a ra pist because you don’t own an autographed copy of “Patents and Why I Love Them” by Judge Rich.
Paul Morgan after a few future Fed. Cir. decisions I think this trend may well shake out to impact mostly those claims that really deserve it [especially those closer to the facts in Alice and Bilksi] – i.e., purely functional very broad claims, especially, but not necessarily, business methods, with or without added “structural” claim language that is really no more than “do it on any computer.” Especially with no clear technological advance. [Plus some medical diagnostics and/or medical treatment patents with key mental steps or claiming unaltered gen es?]
Paul — agreed. And those claims are never coming back. Good riddance to them! As Dennis wisely pointed out years ago, State Street Bank was the height of the in s a n i t y in this area. We’ve pulled back from there, thankfully, but there’s still some pulling back to do and a lot of those jn ky patents are still in the system waiting for someone desperate enough to try to enforce them.
What I’d like to see is more discussion about where the line on the eligility of information processing b .s . should be drawn and what words should be used to draw that line. It’s difficult to have that discussion here, of course, when you’ve got ten clooless b 0 z 0s accusing you of being a c-mmunist or a ra pist because you don’t own an autographed copy of “Patents and Why I Love Them” by Judge Rich.
Jane would be so proud of you.
Paul, I agree with you completely.
While not necessarily intellectually satisfying, or easy to apply, the criteria you describe do seem to be the guideposts for assessing claims under 101.
Where exactly to draw the line between patent-eligible and not, and how to rationalize the intrusion of 103-sounding language into the eligibility assessment, may not be answerable.
The answer is there.
It is not a pleasant one.
anon, I feel genuine pity for the psychological condition that compels you to obsessively post on this site. While your inscrutable posts and ad hominem attacks make you come across as a troll, I believe you are a decent human being who simply needs help.
While MM clearly cannot control himself, I hope that others will refrain from feeding your obsession. I personally commit to you that I will not read or respond to your posts, because it is not healthy for you. Please talk to someone in your support network. Your real friends and family would not want so much of your life to be wasted on a tiny corner of the internet.
Dear Michael,
Bite me.
🙂
Michael, regarding the intrusion of novelty and obviousness into §101, have you read the cases overruled by Judge Rich in State Street Bank, and most particularly Hotel Security?
Well it turns out that the analysis historically used prior to State Street Bank employed just such an analysis as the Supreme Court has developed in Prometheus/Alice – if the new part of the claim is ineligible, the eligible part of claim must show invention.
What the Supreme Court seems to have done, is reinvent the wheel.
“What the Supreme Court seems to have done, is reinvent the wheel.”
As pointed out Ned – you are off a few years, and again misstate who the Supreme Court is ignoring.
They are less “reinventing the wheel” and more tossing the words of the statute aside.
To adopt Judge Markey’s words:
“[o]ur concern here is with plain, simple disregard of the statute—
evidenced in the promulgation of some words and phrases that muddy
the decisional waters and other words and phrases that render the law
as written by congress a nullity. In sum, when it comes to patent cases,
the statute is the law—and court opinions containing language and
concepts contrary to the statute are unlawful.
Howard T. Markey, Why Not the Statute?, 65 J. PAT. OFF. SOC’Y 331, 331 (1983). (italic emphasis in original, bold emphasis added)
And you should note that this is Markey, nor Rich.
Anon, I of course agree with Markey. That is why I constantly suggest that the court should not use the word “abstract” to describe something that is nonstatutory, i.e., not a process, machine, manufacture, or a composition of matter. And of course, process has the same meaning as Art in the statutes prior to 1952 because no change was intended.
I notice that you are still engaging in your new semantic game of not saying “statutory category” and instead saying “statutory.”
May I suggest that you not do so? It makes you appear, well, amateurish .
Ned –
You said –
“Transformation of information is non statutory.
A new or improved machine that enables the transformation of information is statutory.”
A new or improved process that transforms information is also statutory. Processes are not second class inventions. Why would you assert otherwise?
A process that identifies people from their photograph would be statutory.
A process that sharpens photographs (such as those taken with a ill designed telescope) is statutory.
A process that calculates Fast Fourier Transforms of a stream of data samples is statutory.
The simple question put to Ned was:
Is grain statutory?
(the follow on of “Is any of electrons, protons, and neutrons statutory?” is equally – if not even more – appropriately placed before Ned)
What are the chances that we will see a simple, straightforward and intellectually honest response?
Your examples are not limited to processing of information.
Processing of information is math.
Benson held that math cannot be patented as a process.
Those are not answers to a direct and simple question, Ned.
Further, must I (again) remind you of the quote fromBenson that you never seem to remember (hint: We do not so hold)?
Are you going to provide an honest straight forward answer, or will your lack of answer yet again scream volumes in its silence?
Anon, computer programs are not necessarily math. Benson had nothing to say about computer programs as a categorical proposition.
But it did have something to say about mathematics as a categorical proposition. What was that?
nothing to say?
Au contraire.
(and no one is arguing about pure math – nice strawman)
Ned,
“Cryptography”
I sure hope that you realize that there is more than just a semantic difference between pure math and applied math Ned.
“Processing of information is math.”
Can you obtain copyright on math?
Ned –
These are my examples:
A process that identifies people from their photograph would be statutory.
A process that sharpens photographs (such as those taken with a ill designed telescope) is statutory.
A process that calculates Fast Fourier Transforms of a stream of data samples is statutory.
Which one(s) are not directed toward processing information?
Benson did not say what you said is say.
Les:
A process that identifies people from their photograph would be statutory.
Perhaps. But this appears to be an application of information processing to physical phenomena.
A process that sharpens photographs (such as those taken with a ill designed telescope) is statutory.
Perhaps. Another application, this time to a machine.
A process that calculates Fast Fourier Transforms of a stream of data samples is statutory.
Perhaps – if claimed as an improvement to a computer system or as an improvement to communications between machines. Otherwise, one will be claiming mathematics itself, and that is not patentable subject matter per Benson.
Which one(s) are not directed toward processing information?
Directed to processing information or rather directed to useful applications of data processing? Benson did say applications where the pith in essence of patentable subject matter, and that physicality was a clue.
Benson did not say what you said is say.
Information is nonstatutory. Processing information without more is nonstatutory. However, useful applications of nonstatutory subject matter may be eligible.
Integration is the key.
While integration may be the key, your answers here still show the bias of MoT.
I now notice that you are drawing a distinction between ineligible “physical” things and ineligible non-physical things.
Pray tell the authority for such a distinction, Ned? Keep in mind that clues are not requirements (and your reliance on MoT cannot save you here).
You appear to be engaged in some serious circular bootstrapping.
Ned –
You seem to have swallowed one of anon’s pedantic pills.
This being 2014, when I said photograph I meant digital photograph, which is “just bits”.
When I say processing information is patentable, I mean particular new, non-obvious methods of processing particular kinds of information are patentable.
The source of the image data can not, in any sane system, be the key to patentability.
So, whether the image comes from a security camera or the Hubble telescope, or some other source does not, or at least should not matter.
The claimed processes, I was proposing in two examples, receive digital image data and process it and place the result in memory. It may later be displayed or printed or analyzed. But that is not part of the claim and should not have to be as it is insignificant post solution activity.
Benson was absurd.
Artifice, Action, and Abstract: who knew so many worthless tautologies begin with “A”?
The Supreme Court jurisprudence in this area is execrable. It relies on no reasoning. It relies on ad hoc decisions that specific claims are or are not abstract. Without defining “abstract”.
Let’s stay with “A”. Supreme Court law on what is statutory is not worthy of Anglo-American legal traditions. It should be enshrined in the august majesty of Albanian jurisprudence. Or some such.
Well said.
I would hate to cast aspersions on the Albanians, who have done me no wrong. Perhaps we could attribute the Supreme Court’s 101 decisions to the Assyrians, given that their civilization has ceased to exist, and likely had equally valuable subject matter eligibility jurisprudence.
And thank you for making me laugh. I may not be appreciating the genius of this piece, but execrable tautology is my current assessment of artifice/action.
To the extent that mere semantics are at play, there is instant failure here.
If “artifice” is semantic pedantics for “machine,” and
If “action” is semantic pedantics for “transformation,”
The court in Bilski already HELD that such are not requirements under patent law.
Hey, anon, did the Bilski court hold that statutory subject matter was not limited to
“new” or “improved”
“useful”
“processes, machine, manufactures or compositions?”
I didn’t see that in the opinion, or did I miss it.
So, what is the transformation of something that is non statutory such as risk?
Ned,
I have see that you have slipped into a new “pet phrase.”
However, your phrase is ambiguous at best. What exactly do you mean by “non statutory?”
Are you having difficulty wrapping your head around the fact that the Court has disregarded the statutory categories?
anon, “Are you having difficulty wrapping your head around the fact that the Court has disregarded the statutory categories?”
Absolutely!
I think that Supreme Court should stop making things up and should confine itself to the statute. The case law prior to 1952 relied exclusively on the statutes in that that case law did not find subject matter statutory and then say there were exceptions. Rather, the cases found the subject matter either within the four classes or without, or not new or improved even though within the four classes.
Benson found math not the be patentable as a process. It did not find that math was patentable as a process, but nevertheless there was an exception. Thus speaking of “laws of nature,” “products in nature” or “abstract ideas” as exceptions fundamentally mischaracterizes the issue.
It is clear that products in nature are not “new” compositions. They are not statutory by the words of the statute itself.
It is clear that “laws of nature” are not statutory. Even if framed as a statutory process, such a process is not “new.” See, Flook at footnote 15.
Regarding abstract ideas, their basic problem is that they are not statutory under section 112. See, e.g., Morse.
However, with respect to business methods, methods that manipulate concepts such as price, and risk; music; printed matter; information, and the like, none of these are even statutory because none of these are within the four classes. Rather than say that these things are exceptions to statutory subject matter, they are simply not statutory the first place.
So rather than be clear on the subject of statutory subject matter, the Supreme Court engage on an odyssey that is strange. You need to get back on track.