I am sure Dennis will do his usual full and grand treatment, but this one is sort of the counter-punch to Ultramercial. In I/P Engine, Inc. v. AOL Inc. (Fed. Cir. Aug. 15, 2014) (per curiam), the court split on whether the claims were properly found by the jury to have been not obvious, with Judge Chen dissenting on that point and the per curiam opinion reversing the finding of no invalidity. (The other panel members were Judge Wallach and Judge Mayer).
Recall that in Ultramercial the court emphasized that 101 was seemingly a defense, and so evidence was needed and the usual presumption of validity applied, and so on. Here, Judge Mayer seemed to take precisely the opposite tact, though it’s not quite clear. In addition to writing at length about what he perceives the “technological arts” test to mean and require, he wrote:
The Supreme Court has dictated that the subject mat- ter eligibility analysis must precede the obviousness inquiry. Flook, 437 U.S. at 593 (“The obligation to determine what type of discovery is sought to be patented” so as to determine whether it falls within the ambit of sec- tion 101 “must precede the determination of whether that discovery is, in fact, new or obvious.”); Bilski, 130 S. Ct. at 3225 (explaining that the issue of whether claims are directed to statutory subject matter is “a threshold test”); see also In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (“Only if the requirements of § 101 are satisfied is the inventor allowed to pass through to the other requirements for patentability, such as novelty under § 102 and . . . non-obviousness under § 103.” (citations and internal quotation marks omitted)). To fail to address at the very outset whether claims meet the strictures of section 101 is to put the cart before the horse. Until it is determined that claimed subject matter is even eligible for patent protection, a court has no warrant to consider subordinate validity issues such as non-obviousness under 35 U.S.C. § 103 or adequate written description under 35 U.S.C. § 112.
From a practical perspective, there are clear advantages to addressing section 101’s requirements at the outset of litigation. Patent eligibility issues can often be resolved without lengthy claim construction, and an early determination that the subject matter of asserted claims is patent ineligible can spare both litigants and courts years of needless litigation. To the extent that certain classes of claims—such as claims on methods of doing business—are deemed presumptively patent ineligible, moreover, the United States Patent and Trademark Office will have more resources to devote to expeditiously processing applications which disclose truly important advances in science and technology.
Even more fundamentally, the power to issue patents is not unbounded. To the contrary, the constitutional grant of authority “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries,” U.S. Const. art. I, § 8, cl. 8, “is both a grant of power and a limitation,” Graham v. John Deere Co., 383 U.S. 1, 5 (1966); see Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989). Section 101’s vital role—a role that sections 103 and 112 “are not equipped” to take on, Mayo, 132 S. Ct. at 1304— is to insure that patent protection promotes, rather than impedes, scientific progress and technological innovation. A robust application of section 101 ensures that the nation’s patent laws remain tethered to their constitutional moorings.
I am guessing we’ll see another en banc case soon…
anon, Some Juicy Bilski reminders:
The Court is unaware of any “‘ordinary, contemporary, common meaning,’” Diehr, supra, at 182, of the definitional terms “process, art or method” that would require these terms to be tied to a machine or to transform an article.
Wow, anon. You have to remind me once again just how aberrational Bilski was!
Congress did not intend to change the law by changing Art to Process. The lower court in Bilski demonstrated that Art meant pretty much what the lower court said it did. Never in the history of statutory interpretation did the Supreme Court simply ignore the history of a statute to determine its meaning.
Bilski will stand as the worst Supreme Court case on this topic since the dawn of this nation. I lost a lot of respect for the justices who signed that opinion. I give Scalia some credit for his joining with Breyer to praise the MOT.
Besides, this aside is mere dicta.
The treatment of MoT was NOT dicta Ned.
(it was one of two unanimous holdings – and directly on point to the en banc CAFC decision)
From below, the comment to which Ned is responding here:
Some Juicy Bilski reminders:
The Court is unaware of any “‘ordinary, contemporary, common meaning,’” Diehr, supra, at 182, of the definitional terms “process, art or method” that would require these terms to be tied to a machine or to transform an article.
561 U. S. ____ (2010) at 7
Flook took a similar approach, “assum[ing] that avalid process patent may issue even if it does not meet [the machine-or-transformation test].” 437 U. S., at 588, n. 9.
561 U. S. ____ (2010) at 8
A conclusion that business methods are not patentable in any circumstances would render §273 meaningless.This would violate the canon against interpreting any statutory provision in a manner that would render an-other provision superfluous. See Corley v. United States, 556 U. S. ___, ___ (2009) (slip op., at 9).
561 U. S. ____ (2010) at 11
and finally:
Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.
561 U. S. ____ (2010) at 14
Funny isn’t it, how the word limitation seems lost to those who are proud believers in the Royal Nine when that word just so happens to get in the way of their pogrom?
Great quotes. I am sure Ned will ignore them or interpret them in some tortured way.
Yes, per our deal Ned was to stop making things up, and stop his crusade (or at the minimum, was to recognize the valid counterpoints and integrate those points into his advocacy (as is required under the ethical rules for treating material points of law).
Ned never batted an eye continuing with his curse-sade.
patent leather:
Ned, I think Flook and Diehr are very difficult to reconcile. If Diehr hadn’t come along (with its language that you shouldn’t mix 101 and 102), then I think the USPTO would never have issued any patents on software (unless another such case came along). I think Flook is pretty devastating to claims involving software for a lot of reasons including the ones you mention.
It’s fascinating how random our judicial system really is. If Diehr hadn’t applied for his patent, most likely no software would have issued due to Flook. And Diehr was only a 6-5 decision. That’s why these things are really better left for Congress.
I think you misread Flook and over-apply Diehr.
Flook made it clear that math was nonstatutory, that the claim before it ended in a number, and that nominal elements added to the claim such as obtaining data from a generic process and/or providing nominal postelection activity would not save the claim.
Everything else in Flook was dicta.
Diehr was quite different from Flook in that a specific process was described, and the role of the mathematics/software in improving the process was considered essential.
All the discussion about “claim as a whole” and “novelty” was dicta in that it had nothing to do with the holding of the case. It was put there because of Judge Rich’s lecture in In re Bergey to which the Supreme Court cited. Obviously, the dicta was decidedly out of place with historic jurisprudence where nonstatutory subject matter was given no weight in determining patentability. These cases include, of course, Funk Brothers, Benson and Flook. They also include such lower court cases as Hotel Security (business methods), In re Russell (printed matter), all of which gave the nonstatutory subject matter no weight in determining patentability. These cases were an anathema to Judge Rich who wanted to focus all considerations of invention into 102/103. The Supreme Court had not yet caught on to Judge Rich’s sophistry which became very clear when in State Street Bank he overturned the historical exclusion of business methods.
In any case, the Supreme Court in Prometheus made clear that the presence in the claim of old and conventional subject matter by itself was insufficient. The ineligible subject matter had to be used in combination with the conventional subject matter so as to transform it. This is called integration. Thus, Diehr was limited to “integration.”
Hope this helps.
patent leather:
Ned, I think Flook and Diehr are very difficult to reconcile. If Diehr hadn’t come along (with its language that you shouldn’t mix 101 and 102), then I think the USPTO would never have issued any patents on software (unless another such case came along). I think Flook is pretty devastating to claims involving software for a lot of reasons including the ones you mention.
It’s fascinating how random our judicial system really is. If Diehr hadn’t applied for his patent, most likely no software would have issued due to Flook. And Diehr was only a 6-5 decision. That’s why these things are really better left for Congress.
I think you misread Flook and over-apply Diehr.
Flook made it clear that math was nonstatutory, that the claim before it ended in a number, and that nominal elements added to the claim such as obtaining data from a gen eric process and/or providing nominal postelection activity would not save the claim.
Everything else in Flook was dicta.
Diehr was quite different from Flook in that a specific process was described, and the role of the mathematics/software in improving the process was considered essential.
All the discussion about “claim as a whole” and “novelty” was dicta in that it had nothing to do with the holding of the case. It was put there because of Judge Rich’s lecture in In re Bergey to which the Supreme Court cited. Obviously, the dicta was decidedly out of place with historic jurisprudence where nonstatutory subject matter was given no weight in determining patentability. These cases include, of course, Funk Brothers, Benson and Flook. They also include such lower court cases as Hotel Security (business methods), In re Russell (printed matter), all of which gave the nonstatutory subject matter no weight in determining patentability. These cases were an anathema to Judge Rich who wanted to focus all considerations of invention into 102/103. The Supreme Court had not yet caught on to Judge Rich’s sophistry which became very clear when in State Street Bank he overturned the historical exclusion of business methods.
In any case, the Supreme Court in Prometheus made clear that the presence in the claim of old and conventional subject matter by itself was insufficient. The ineligible subject matter had to be used in combination with the conventional subject matter so as to transform it. This is called integration. Thus, Diehr was limited to “integration.”
Hope this helps.
“I think you misread Flook and over-apply Diehr.”
Just the opposite Ned – see above with the quote from Bilski.
Taking suggestions for naming Ned Heller’s new legal creation of the super hyped over-read point of novelty machine or transformation transformed clue into requirement vehicle.
Quite distinct from anything anywhere within the Congressional Record, Ned’s creation is a vital tool in his pogrom and rewriting of history and US patent law and deserves a suitable moniker.
Come one, come all, let’s hear your nominations for a place in the Ned_IMHO-Law hall of f(sh)ame.
The hound dog lick.
It should be noted that Mayer’s concurrence reads a lot like his dissent in Bilski (In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) where he called for an outright reversal of State Street Bank. He chose his words carefully, “We took this case en banc in a long-overdue effort to resolve primal questions on the metes and bounds of statutory subject matter. The patent system has run amok, and the USPTO, as well as the larger patent community, has actively sought guidance from this court in making sense of our section 101 jurisprudence.”
On the MOT, Mayer argued, “Although the Supreme Court has stated that a patentable process will usually involve a transformation of physical matter, … it has never found a process patent eligible which did not involve a scientific or technological innovation.” Id. at 1009.
…
“The time is ripe to repudiate State Street and to recalibrate the standards for patent eligibility, thereby ensuring that the patent system can fulfill its constitutional mandate to protect and promote truly useful innovations in science and technology. ” Id. at 1011.
And yet, reality leaks in. Information processing takes time, energy, and space. Information processing is a physical process that transforms represented information.
Our brains/minds according to the antiquated logic of Mayer are nothing but maths. Nature/G-d created our brains to perform information processing methods. The same type of methods that are claimed in information processing patents.
According to MM none of these methods are worthwhile. So, the method that a eagle uses to swoop down and grab a mouse is worthless garbage to MM.
Judicial activist is what you are.
And, big picture–amongst all the complaints about information processing methods, we the USA are by far number one in creating information processing methods–by far, far, far.
Big picture, patents have resulted in the hiring in 100,000’s of tech workers.
Big picture, politics has captured our patent system.
Big picture, Ned is a smelly hound.
“Big picture, politics has captured our patent system.”
Our patent system is nothing but politics. Never has been anything else.
Sorry 6, but wrong again. Now it is captured by the political system. Different qualitatively than it was 10 years ago.
Well here’s the thing NWPA, it was captured by the Federal Circuit 10 years ago. That much is beyond question. Though I consider that still to be politically captured. If you consider it to not be politically captured when captured by the Federal Circuit then ok, I can live with that.
I’ll say.
“captured by the Federal Circuit”
(sigh)
Let’s pretend that you have a clue as to the mandate given to the Federal Circuit and that you have a clue as to what “captured by” means.
Where are my pretty gifs.
“Smelly hound?”
Night, you must be a girl. No man would ever speak like that.
Sounds like a misogynistic comment to me, Ned.
Didn’t you just get all huffy about such things?
Smelly hounds says: “Night, you must be a girl. No man would ever speak like that.”
Ned, Ned, Ned, you are losing your compass. Once you strived to rise above the pettiness here on patentlyo. Now you are one of the pack leaders taking us to the lowest common denominator.
You lost your compass. Try to get it back. (And stop spending so much time licking your gen itals.)
And, big picture–amongst all the complaints about information processing methods, we the USA are by far number one in creating information processing methods–by far, far, far.
Because nobody else views them as patentable.
Big picture, patents have resulted in the hiring in 100,000′s of tech workers.
No, selling products results in hiring of 100,000s of tech workers. Those people would still be hired if there was no patent protection, they’d just be hired by different people.
Big picture, politics has captured our patent system.
Nah.
And yet, reality leaks in. Information processing takes time, energy, and space. Information processing is a physical process that transforms represented information. According to MM none of these methods are worthwhile…So, the method that a eagle uses to swoop down and grab a mouse is worthless garbage to MM. Judicial activist is what you are.
And this is your problem. You think that because Congress wrote a 101 which nominally allows anything under the sun to be patented that Congress has the power to allow the patenting of anything under the sun. Congress lacks the power to grant a patent monopoly to a person who has not invented that thing. Congress lacks the power to create a patent scheme which by definition would inhibit innovation.
The method that an eagle uses to swoop down and grab a mouse is not worthless garbage, especially to the eagle. It is, however, unpatentable.
Nobody is telling you you can’t go out and sell your product. In most cases, nobody is even telling you you can’t patent your product. You’re just being told you can’t stop others from offering competing products because you try to describe your product with super broad claims that would remove all competitors, especially when its clear you never posited your competitor’s machine.
selling products…
Um, do you need a lesson again on what the patent right provides?
That’s right. NWPA needs to stop making it sound like information processing patents create jobs. Even the applicants of information processing patents admit that anyone can make their code/inventions. The only thing the patent controls is who can legally make that code. The patent controls who hires people, it doesn’t create jobs.
When you tell an information processing applicant they can’t have a patent, it doesn’t stop them from coding it or making a product for it, it just stops them from stopping others from making the product. It shifts around who employs the coders.
Random, why did Microsoft hire all those researchers in information processing?
Why do you think that information processing patents are different than other patents?
I can tell you they are not. And, once someone knows the goal of what to make in almost every case, then one skilled in the art can make it. No difference in any field.
I’ve worked in the smelly arts, mechanical, electrical, and information processing.
Random, why did Microsoft hire all those researchers in information processing?
To guess as to why they’d do that, you’d have to tell me what they do, but I assure you it isn’t “look into patents to find answers to their problems” as the patents don’t teach anything. More likely it is “figure out ways that we can monopolize completely mundane solutions to commonplace problems by describing them in the correct manner.”
Why do you think that information processing patents are different than other patents?
Because my area involves a lot of information processing and I see the applications. Maybe it’s true of all applications but I doubt it. To be clear: there’s nothing inherently wrong with information processing other than because the solutions are code and because the code is always considered enabled, it lets applicants think they can get away with claiming things on no disclosure. The problem isn’t inherent in the art, it’s in the attorneys drafting the disclosures.
The vast majority of patents for me are not solutions to problems, they are descriptions of problems and a general statement that one could write code to solve the problem. The “good” ones at least tell you what that code might somewhat look like before claiming that code and any other that has the same effect. The “bad” ones won’t even do that – they will simply say that code can be written to solve the problem and it would be within the skill of the art to write that code.
We don’t give patents for describing problems. We give patents for describing solutions. The majority of information processing applications are description of problem + statement that it is possible to solve that problem with some sort of code.
If you applied the same idea anywhere else it would be ludicrous: “One of the problems in the world is a shortage of food. However, one of ordinary skill would know that one could solve the shortage of food by performing acts which would provide a sufficient amount of food to everyone. I claim any acts which constitute the function of solving food shortage.” That doesn’t teach anyone anything, nor does it even suggest you have one concrete answer to the problem, let alone all of them. Yet the same thing in the computer context is submitted every day.
And, once someone knows the goal of what to make in almost every case, then one skilled in the art can make it.
Too bad that is not what patents are about, at all. We don’t give patents for saying what goals would be nice to have. We give patents for instructions on particular ways to make it to that goal. Your statement is an admission that you aren’t inventing anything, you’re leaving it up to others to invent. Brainstorming isn’t inventing. I bet you had a hissy fit when abstract idea cases came down, because you clearly don’t understand the concept.
Random Examiner,
You really need to reassess your understanding of what a patent is – for ALL art fields.
Pretty sure it’s for the useful arts and the useful arts does not include “processing data,” aka “information processing” absent the description of a new data processing machine in objective structural terms. If that weren’t the case you could patent a new medical encyclopedia based on its new and useful information providing functionality, which is pretty much what that ridiculous ABL company tried to do in their case against SmartGene (and failed miserably, and predictably).
Pretty sure patents are for the “useful arts” only and the “useful arts” do not include “processing data,” aka “information processing,” at least not absent the description of a new data processing machine in objective structural terms.
If this weren’t the case you could patent a new medical encyclopedia based on its new and useful information providing functionality, which is pretty much what that ridiculous ABL company tried to do in their case against SmartGe ne (and failed miserably, and predictably).
The Amish called again, asking why you cannot understand what “useful arts” means.
you cannot understand what “useful arts” means.
Tell everyone exactly what it means, Billy.
(and love the insertion of the canard of but-only-structural that you tried to slide in there – you and Random Examiner need to have that same chat about the law allowing the use of functional language, and in more than one section of 112, at that)
Been there, done that – thanks Malcolm.
Pay attention.
the law allowing the use of functional language,
Nobody is arguing that the law doesn’t allow functional language, Billy.
Nevertheless, and sadly for you, Section 101 does not include “new functionalities” as an example of eligible subject matter. And when the only new elements in your composition claim are new functions, then you are effectively claiming the new functionality and not a new composition.
We all know how this ends, Billy. Like I said: it’s too bad for you. The rest of us will be celebrating.
Funny how you just cannot seem to bring out your vapid little pet theory (in name – although you do allude to it).
Still waiting for a simple yes/no answer from you as to whether or not you would be willing to give cogent and intellectually honest answers to the the several points of mine that rip apart your little pet theory and reduce it to a simple banal theme.
As typical, you ran away the last time we got to this point in the Crp-Run-Away-Crp Again merry-go round.
“patent scheme which by definition would inhibit innovation.”
Great. No one is arguing otherwise.
Oh wait – you want to merely except the future conjectural projection of a possibility of inhibiting innovation that in no way has ever been verified.
Gotcha.
except the future conjectural projection of a possibility of inhibiting innovation
It’s no more conjectural than the idea that patents advance innovation to begin with. If the idea is that right to exclude is a financial incentive to the patentee because it excludes competition, then it necessarily is a disincentive for other people to operate within the scope of the patent. Why would someone invest in research in an item they can’t commercially exploit because it’s within someone else’s scope? When the scope is tailored to what was invented, the advancement/disclosure outweighs the loss. When the scope is much larger than what was taught, the balance tips.
When the scope granted is artificially large (for example, via a claim directed to abstract ideas or functional claiming) then the patent is functioning as a disincentive to future innovation. Further, when the claim is directed towards the same result, but via a completely different means, that is taking from the public something rightfully belonging to them until THAT inventor of those different means decides to claim:
“For aught that we now know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff’s specification. His invention may be less complicated — less liable to get out of order — less expensive in construction, and in its operation. But yet if it is covered by this patent the inventor could not use it, nor the public have the benefit of it without the permission of this patentee.”
Moreover, when the first scope is overbroad, even further disclosure of research by THAT inventor is inhibited, because there’s little to no incentive to disclose an advantage that was previously within his scope:
“Nor is this all, while he shuts the door against inventions of other persons, the patentee would be able to avail himself of new discoveries in the properties and powers of electro-magnetism which scientific men might bring to light…And if he can secure the exclusive use by his present patent he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery, upon the records of the patent office.”
And the conclusion is obvious:
“In fine he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent. The court is of opinion that the claim is too broad, and not warranted by law.”
“Quid Pro Quo incentivizes innovation”
“Well what if your overbroad Quo takes away other’s Quid?”
That’s cool
“Well, what if your overbroad Quo incentivizes you not to Quid anymore?”
That’s fine too
Using functional language to make overbroad claims simply isn’t allowed.
Scoreboard.
Random Thoughts, tell us the difference between information processing patents and other patents?
Random Thoughts, tell us the difference between information processing patents and other patents?
I did this above, but again – Coding has qualities that lends itself to mere disclosure of abstract idea. There’s nothing inherently wrong with information processing except the applicants think they can write such terrible disclosures in it.
The majority of information processing applications are not descriptions of a solution to a problem followed by a claim to that solution (which is, btw, the only valid claim), nor are they even descriptions of a solution with an overbroad claim related to that. Instead information processing applications are descriptions of a problem and a statement that anyone of skill could program a computer to solve that problem.
If I say “One problem faced by humanity is a lack of clean water. But one of ordinary skill in the art would know that you could have clean water by cleaning dirty water. I claim any machine that performs the function of cleaning water.” That sounds ridiculous, because everyone would understand you can’t just say you have a magic box that cleans water, you have to explain how it cleans the water.
But you take the exact same thing in an information processing context: “One problem faced by humanity is having to ge nerate reports on X by hand. But one of ordinary skill in the art would be able to program a computer to automatically ge nerate reports on X. I claim all code which causes the ge neration of a report on X.” That kind of limitation you see all day long.
You simply aren’t teaching anyone anything. You’re not providing anything of value at all. There’s no reason you should be given a patent because you not saying “here’s a solution to the problem” you’re saying “a solution to the problem exists and I think you’re smart enough to go find it.”
Now, COULD one explain the steps their code takes in their patent? Yes. That’s done in every other context, because it would be ridiculous to claim cleaning water without saying how you clean water. COULD one limit their claims to their described means rather than “any means which achieves the same function”? Yes. In fact that law requires you to claim your particular means, not any solution. Does that in fact happen? No. That’s why information processing patents are terrible.
“It’s no more conjectural than the idea that patents advance innovation to begin with. ”
LOL – so you want to join the hunt for a modern advanced society that has done away with all IP protection laws…
Your true colors are shining through, Mr. Anti.
“Using functional language to make overbroad claims simply isn’t allowed.”
Y.A.W.N. no more so than using structural language to make overbroad claims is likewise not allowed. Nice strawman with the ASSumed “functional language must be bad” intimation.
Now come back to this world and US law which allows functional language in claims – under multiple sections of 112.
We all know Billy’s positions on functional claiming.
We also know that he’s just wa n k ing away on behalf of his own wallet and doesn’t have any ground to stand on.
Let’s just wait and see how Billy’s beloved functional claims hold up over the next year or three. After all, Billy really knows what he’s talking about when it comes to understanding trends in patent law. That’s why he’s been so far ahead of the curve when it comes to cases like Bilski and Prometheus.
LOL.
“doesn’t have any ground to stand on”
LOL – you mean, besides the actual law?
Thanks Malcolm – that’s enough ground (and sure as sht beats your “policy”/opinion only table pounding)
Like BiLksi…
LOL – tell me again how you went into hiding for three months after that case came out because your “glorious” predictions that Diehr woudl be overturn and that ALL business methods would be outlawed came out.
Love the Malcolm self-FAIL.
actual law
LOL. Like the “actual law” Billy screeched about endlessly in the run-up to Prometheus.
Go ahead and stand on your “actual law” Billy. Whatever turns your crank. If nothing else, you can bilk some more money from some s u c k e r clients before they wise up.
your “glorious” predictions that Diehr woudl be overturn
The Diehrbot theory that you could not “dissect” claims into old and new elements when determining eligibility was certainly “overturned”, Billy. You’d have to be either a complete i d i 0 t or a ly ing sack of shirt not to acknowledge that much.
that ALL business methods would be outlawed
I don’t recall ever making such a prediction, Billy, at least not without indicating what I meant by “business methods.” Perhaps you can tell everyone what you mean by the term “business method” since you endlessly suggest that “business methods” are eligible per se (even though everyone understands that some “business methods” are eligible and some “business methods” are not eligible, depending on how one defines the term “business method”).
“at least not without indicating what I meant by “business methods.””
(guffaw)
Sure, let’s go with that…
/eye roll
“ are eligible per se ”
And again with the unethical mischaracterization of my position.
I have NEVER claimed a “per se” status.
Try again.
LOL – so you want to join the hunt for a modern advanced society that has done away with all IP protection laws…
No…I’m saying that if you believe patents provide an incentive (and clearly you must) for disclosure then it naturally follows that an overbroad patent provides a disincentive to disclosure.
I’ll make this simple for you: Let’s say I invent a new pen, but for some reason the office mistakenly gives me a claim (and a court later upholds, or prior to a court deciding) covering all machines that assist in the function of writing. What incentive does someone have to improve upon a word processing program? None. They know they can’t sell any improvement they make, because I will sue them with my overbroad pen patent. So I have killed off or otherwise disincentivized any research into word processors when my disclosure has nothing to do with a word processor at all. When the scope is larger than what I have disclosed, it hurts research in those overbroad areas and the public gets nothing for it.
This happens (although not to the degree) in all functional claims, because you’re not limiting yourself to what you have disclosed (your pen and it’s structural changes) but instead to the EFFECT of those changes. But there’s all sorts of completely different ways to achieve that effect.
Like I’ve said before, you can’t invent a bow and describe and claim it as “a hand held machine for firing projectiles” because that does not enable or describe a gun. Further, it disincentives research into the gun. 112, 1st and 101 issues.
Your true colors are shining through, Mr. Anti.
Hardly. You mistake wanting properly-scoped claims, which is healthy for the patent system and what I want, with not wanting patents at all. I refuse to believe that it’s “anon gets what he wants or they’ll be no patents at all”.
Nice strawman with the ASSumed “functional language must be bad” intimation.
I routinely tell you that not all functional language is bad. Simply the way it’s commonly being used nowadays is, because when you use it in that manner you will always violate 112, 1st and 101. You CAN use structural language to describe the new feature of your machine and not have a 112 problem. If you use functional language to describe the new feature you will ALWAYS have a 112 issue.
Now come back to this world and US law which allows functional language in claims – under multiple sections of 112.
Point to one place in the law outside of 112, 6th that says functional language is allowed. Then point to what the requirements of 112, 6th are.
Oh, I forgot. Lean in close so I can just whisper it this time:
scoreboard
Not only Mayer, but ALL of the CAFC “actively sought guidance from [the Supreme Court] in making sense of [the Supreme Court’s] section 101 jurisprudence.”
Put the blame where it rightly goes Ned: the Supreme Court punted in Alice with their Chamberlain decision.
Ned,
Relying on disingenuous CAFC judge mongering in your attempt to re-elevate MoT is a FAIL.
MoT is not a requirement. MoT is a clue. You really need to be intellectually honest with this point and stop trying to obfuscate the matter.
That’s like telling a hound dog to stop licking his gen itals.
Well, Mayer does seem to agree with you on the MOT because he foresaw that one could simply sprinkle the claim with irrelevant transformations of old elements to pass that test. His prediction came true when Rader relied on the MOT of old elements to uphold the claims in Prometheus.
The failure of the majority in Bilski was not to address the “novel subject matter” issue: It is THAT subject matter must effect the transformation, and it matters less whether the old and convention elements independently passed the MOT.
While Mayer cites Hotel Security, he does not actually cite its test or its reasoning. Even though Mayer was close, he was not actually there yet.
Once again Ned – your version is lacking.
As I have long told you:
Bilski: MoT not required.
Prometheus: MoT not sufficient.
And yet, the likes of you and Malcolm continue to attempt to transform MoT from a clue into a requirement.
Instead of embracing what I have shared with you (which is correct, not because it is I that have shared it, but is shared by me because it is correct – see link to en.wikipedia.org , you continue to post with intellectual dishonesty in order to pursue your agenda.
As to Hotel Security, you continue to attempt to parse and pick and choose from that case, ignoring the fact that the penultimate paragraph of that cases uses language expressly implicated by the Act of 1952.
You continue to run away from the multitude of legal points that I have presented to you.
You f001 no one.
Anon, as I said, the MOT as announced by the Federal Circuit in Bilski was not sufficient in that it did not discriminate against transitions involving old elements, and thus we got Rader’s opinion in Prometheus.
Had the test been the test used in Hotel Security Where the focus of the analysis was on the novel subject matter and his relationship with any to the old But eligible, the test would’ve been complete and sufficient.
Regarding your last point about the last clause of Hotel Security, you’re obviously confusing this case with the Guthrie case. This indicates that you have not even read Hotel Security.
Regarding the Hotel Security line of cases, just what about them are implicated by the ’52 Act? Assuredly, you do not suggest that Congress intended to overrule Hotel Security, or for that matter the printer matter doctrine, when it enacted §103? Congress had no such intention, and it would be absurd to think that they did.
As I pointed out before, read the last paragraph of the case and note the language used in the Congressional record for the reason for splitting off from what became 101 the section of 103 and the explicit move by Congress to rescind the common law evolution tool from the Court of setting the definition of “invention.”
This is established historical fact that you keep on ignoring, Ned.
Further, you continue to ignore the fact that is was a judicial doctrine that introduced the prohibition against Type B printed matter. You continue to ignore the fact that Type C printed matter is fundamentally different than Type B printed matter in the patent context.
Intellectual honesty from you Ned on this point is still desired Ned.
All of our discussions will come back to the basic points that you clench tight your eyes to. You cannot avoid the facts. You cannot avoid the law as it truly is.
Anon, you still have not read Hotel Security.
Regardless of your thinking about “invention,” clearly giving weight or no weight to nonstatutory subject matter was not a topic discussion in ’52. Congress had no intention to upset and overturn the well-established case law that nonstatutory subject matter would be given no weight in patentability determinations. The thinking that they did is just simply and totally bizarre.
Nonstatutory subject matter is nonstatutory. There is no debate here that nonstatutory subject matter is excluded because of some judicial doctrine. It is excluded from patentability considerations because it is not statutory.
May I point to an analogous situation? Obviousness-type double patenting is a judicial doctrine. Double patenting itself is called statutory because of section 101. There is a distinction and a difference between nonstatutory subject matter and judicial exceptions. Your continued insistence that nonstatutory subject matter is excluded because of some judicial doctrine is completely and totally insane.
Nonsense Ned – I have read the case – the whole case (which I why I can say that you are artificially parsing the case).
Anon, from Hotel Security, 160 F. 467 (2d Cir. 1908):
“The principal defense is lack of novelty and invention. Section 4886 of the Revised Statutes (U. S. Comp. St. 1901, p. 3382) provides, under certain conditions, that “any person who has invented or discovered any new and useful art, machine, manufacture or composition of matter” may obtain a patent therefor. It is manifest that the subject-matter of
the claims is not a machine, manufacture or composition of matter. If within the language of the statute at all, it must be as a “new and useful art.” One of the definitions given by Webster of the word “art” is as follows: “The employment of means to accomplish some desired end; the adaptation of things in the natural world to the uses of life; the application
of knowledge or power to practical purposes.” In the sense of
the patent law, an art is not a mere abstraction. A system of transacting business disconnected from the means for carrying out the system is not, within the most liberal interpretation of- the term, an art. Advice is not patentable.”
…
It cannot be maintained that the physical means described by Hicks, -the sheet and the slips,-apart from the manner of their use, present any new and useful feature. …[T]the claims cannot be upheld because of novelty in the appliances used in carrying it out,-for the reason that there is no novelty. ”
The court goes on to show that even the bookkeeping Art of Hicks was old and/or obvious.
The 2nd Circuit then concludes: “It is unnecessary to multiply authorities as we are convinced that there is no patentable novelty either in the physical means employed or in the method described and claimed in the Hicks patent.”
But this dicta also occurred earlier:
“If at the time of Hicks’ application, there had been no system of bookkeeping of any kind in restaurants, we would be confronted with the question whether a new and useful system of cash-registering and account-checking is such an art as is patentable under the statute. This question seems never to have been decided by a controlling authority and its decision is not necessary now unless we find that Hicks has made a contribution to the art which is new and useful. We are decidedly of the opinion that he has not, the overwhelming weight of authority being that claims granted for such improvements as he has made are invalid for lack of patentability.”
Now, please explain how the ’52 Act affected the patentable subject matter aspects of this case — the part about “overwhelming weight of authority”?
What’s in the last penultimate paragraph Ned?
I quoted the penultimate paragraph. It is this:
“It is unnecessary to multiply authorities as we are convinced that there is no patentable novelty either in the physical means employed or in the method described and claimed in the Hicks patent.”
I believe you have not read this case but are still focused on Guthrie v. Curlett, 10 F.2d 725 (2d Cir. 1926) that ended thus:
“The only thing constant about this index is the method or art of compiling it; i. e., advice as to how to compile, which is not patentable.
Thus as a question of fact we consider this patent as disclosing merely advice as to how to make an index, and the means (if any) disclosed for doing it as not patentably novel.”
You are right – I was thinking of Guthrie.
Don’t you link the two, though?
So instead, this is the one that you need to respond to my counter point as to why would Congress act to set up a limited defense to business method patents if – as you would hold – they were already non-statutory.
You have never answered that point.
(you do have a sizable number of points from our discussions that you have never provided cogent and intellectually honest answers to)
You migh tfind this intersting:
link to uspto.gov
Ned – the simple set theory explanation of the differences between Set B printed matter and Set C printed matter wreck your attempted misuse of the Hotel Security case.
You keep on using the case without taking into account the counterpoint provided to you – as if ignoring the counterpoint makes the counterpoint go away.
Your purposeful ignorance is no excuse to understanding the actual law, and is in fact an ethical breach for purposefully mischaracterizing material portions of the law.
anon, regarding linking Hotel Security and Guthrie, of course I do. Hotel Security laid down principle that a business method was nonstatutory and was not patentable if claimed in combination with old, but otherwise eligible subject matter. But that was dicta in that case because the Court rested its holding on the fact that the business method aspects of the claim were old. Guthrie rested its holding in its case however on the fact that the business methods there claimed were nonstatutory and the index cards, the statutory part, were notoriously old.
But in deciding State Street Bank, Judge Rich cited only Hotel Security and distinguish it because the business method being unpatentable part was dicta. You can see just how disingenuous that discussion of Hotel Security was given the fact that for 90 years thereafter it was followed in holding after holding.
“So instead, this is the one that you need to respond to my counter point as to why would Congress act to set up a limited defense to business method patents if – as you would hold – they were already non-statutory.
You have never answered that point.”
Anon, I already told you that what happened was that we were trying to get a broad prior user right, that was resisted by some elements including universities, and we settled on the limited prior user right for business methods because there was consensus that the law there had changed in an unexpected way and people who are caught needed to be protected. At the time, people were shocked and surprised about State Street Bank. But many in the patent bar approved of the case for obvious reasons in that it expanded patentable subject matter into areas previously unknown, it anything that expanded patentable subject matter was good for the patent bar.
People on the receiving end of business method patents had yet to be heard in Congress. But they have now been heard, with the likes of eBay, Amazon, and Wall Street all combining to oppose business method patents.
“because the business method being unpatentable part was dicta. You can see just how disingenuous that discussion of Hotel Security was given the fact that for 90 years thereafter it was followed in holding after holding.”
Except for two things: it was not universally applied and it was not good law.
As witness by the fact that Congress did not merely state that business method patents were not statutory material, but rather, formulated a limited defense to business method patents.
You keep on coming up short in your (absence) of explaining what Congress did. The plain and simple point here Ned, is if your were to be correct, Congress would have acted very differently.
You continue to deny this historical fact without explanation.
Your attempt at obtaining a broad Prior User Right (troublesome enough in its anti-patent effects) is really a non-sequitur to the CHOICE by Congress to provide a limited defense as opposed to the (much easier) simple proclamation that you now attempt to rewrite history with.
You also neglect to account for the Supreme Court math that 3, the new 4, is not 5.
And your notion of “expansion ” is false.
Look at Prof. Risch’s work on the actual state of business method patents – especially in the first fifty years of this country.
You are simply wrong across the board here Ned – picking and choosing and over-reading case law that supports your agenda and (attempting to) ignoring all the other items that I have provided to you in our discussions.
Anon, you have to understand that many times the PTO will issue patents on what appears to be business methods when the means for carrying out the method are novel. That essentially is what Hotel Security said.
Unless you make this distinction, you cannot have a rational discussion about what the claim is covering.
For example, in Prometheus, the only thing that was the correlation – everything else in the claim is old and old in combination. Thus the claim was directed at the correlation as opposed to the prior process that was old.
Ditto Alice. It was no computer invention there. The invention if anything was in the business method and the computer hardware recited was simply nominal.
Is quite clear from the questioning by the Supreme Court judges at oral argument analysis that they got it. They were looking at the the novel subject matter in a claim and asking whether there is improvement in the computer system or whether the improvement was in the business method.
Separate the wheat from the chaff, anon. Elevate substance over form just for a change.
“the improvement was in the business method.”
Still wrong Ned – this has been your mantra since Bilski and is simply not in accord with the law that allows patents on business methods.