Eclipse IP v. McKinley Equipment (C.D. Cal. 2014) EclipseIP101
In a interesting and somewhat darkly-comic opinion, Judge Wu has dismissed EclipseIP’s infringement lawsuit on the pleadings – finding that the patentee has no case because the asserted claims lack eligible subject matter under 35 U.S.C. §101. In the process of invalidating the claims, Judge Wu also offers some criticisms of the law. Most pointedly, Judge Wu describes the Supreme Court’s test as offering pure unstructured judicial authority
First, describing the two-step process from Alice Corp, Judge Wu writes:
[T]he two-step test may be more like a one step test evocative of Justice Stewart’s most famous phrase. See Jacobellis v. State of Ohio, 378 U.S. 184, 197 (1964) (Stewart, J. concurring) (“I shall not today attempt further to define the kinds of material I understand to be embraced within that shorthand description; and perhaps I could never succeed in intelligibly doing so. But I know it when I see it . . . .); cf. Alice, 134 S.Ct. at 2357 (“In any event, we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.”).
This sort of test is obviously problematic – and especially in the context of patent examination where the discretion is handed to patent examiners. Judge Wu also goes on to caution against overzealous use of the preemption argument — presenting two reasons: First, the reality is that every patent provides some amount of preclusive impact — that is the point of the exclusive rights offered under the law and Constitution. Second, we should recognize that the effort in working around patent rights is an important innovative process and patents should not be eliminated under Section 101 simply because it is a cheaper alternative than to invent around.
But the patent law does not privilege the leisure of an infringer over the labors of an inventor. Patents should not be casually discarded as failing § 101 just because the infringer would prefer to avoid the work required to develop non-infringing uses of the abstract idea.
Despite his caution, Judge Wu found that the law still supports invalidity here.
The patents at issue are the creation of inventor Scott Horstemeyer, who is also a patent attorney and founding partner of the Thomas|Horstemeyer firm. Horstemeyer’s asserted patents claim priority back to a 2003 filing and are related to a method of sending & receiving messages. Patent Nos. 7,064,681, 7,113,110, and 7,119,716.
Asserted claim 1 of the ‘716 patent is here:
1. A method for communications in connection with a computer-based notification system, comprising the steps of: initiating a notification communication to a personal communications device associated with a party; receiving a response communication from the party’s personal communications device, indicating that the party has received the notification communication and is now occupied with a task associated with the notification communication; and refraining from sending any further notification communications to the party’s personal communications device, until detection of one or more events that indicate that the party is no longer occupied with the task and can perform another task associated with another notification communication.
The abstract idea categorized from this claim is as follows: “asking someone if they are available to perform a task and then either waiting for them to complete
it or contacting the next person.” Further, folks will recognize that the steps can be performed by someone talking on the telephone.
Tying the case to Morse, Judge Wu sees the claims here as likewise not limited to any “specific machinery or parts of machinery described in the foregoing specification.” As a result, the claims cannot “overcome the abstractness problem” and are invalid under 35 U.S.C. 101.
What Judge Wu notes in his decision says it all about why the Alice standard for patent-ineligibility under 35 USC 101 is awful: completely subjective (“so far, the two-part test for identifying an abstract idea appears to be of limited utility”), based on anything but logic (note the cite to the Justice Holmes quote), and can be applied only by resort to prior case characterizations of certain patents (“while comparison to previously adjudicated patents -or more precisely, to past characterizations of those of those patents-have done the heavy lifting”), i.e., Alice, Mayo, and Bilski, all of which have ruled those patents to be patent-illegible under 35 USC 101, and thus there is no balance in the Alice standard whatsoever.
EG – I think that all reasonable folks agree that we have an inadequately defined test. What’s the next step?
Do we need Congress to add the following to Section 101: “Patent eligibility extends to the full extent permitted by the Constitution.”
Do we need Congress to add the following to Section 101: “Patent eligibility extends to the full extent permitted by the Constitution.”
That is some serious snark.
Apparently, but the Supremes could just overrule that again.
“all reasonable folks”
I will respectfully disagree with you there. Perhaps all reasonable patent attorneys. And perhaps all people trying to patent upon judicial excepted subject matter, or trying to narrowly avoid such. Though likely not even all of them.
Every single one of the average people that I’ve talked to on the subject including doctors, and phds, and people with masters are all on board with the current test.
Dennis,
Congress does need to intervene, but the language you propose will be just as flimsy in the hands of the Royal Nine. What 35 USC 101 needs to add something to the effect that: (1) patent-eligibility will judged by what is defined by the claims “as a whole” (from the Diehr test which prohibits the claim dissection which is rampant in Alice, as well as Mayo); and (2) the claimed subject matter will be presumed to be patent-eligible if it falls within one of the current statutory classes unless the claimed subject matter “as a whole” merely defines a “law of nature, natural phenomena, or abstract idea” (from former Chief Judge Rader’s test in Research Corp. and Ultramericial that the claimed subject matter must be “manifestly abstract” to be patent-ineligible under 35 USC 101). Anything less, and we’ll be right back to the Royal Nine using patent-eligibility as a narrow subjective funnel, rather than as an objective coarse screen as former Chief Judge Rader correctly suggests 35 USC 101 should be.
At this point it does look like the only thing that will curb the Royal 9 is Congress.
And, I think Lexis should mark Graham in red as not being good law.
Night, I find your thinking on this at times beyond amazing. There is no way that Graham v. John Deere is affected by these decisions.
If you think otherwise, please explain.
I am not entirely sure that the next step is for Congress to revisit 101. In several cases, the 101 analysis looks similar to an obviousness analysis (Flook, Funk Brothers, Bilski, and Alice). Maybe the problem is the excessive burden placed on a defendant (or on the PTO) for proving obviousness.
EG, your complaint reminds me of the Harvard Law Review article written by Scalia where he compared and contrasted a common law approach to the development of the law with a rules-based approach. He said that when he first started practicing, he firmly believed in the common law approach with cases narrowly decided on their facts. But as he became a judge and had more experience, he thought the better approach might be a rules-based approach where the court would announce a rule that could be generally applied.
What is apparent here is that the Supreme Court has chosen to adopt a more cautious approach to patentable subject matter – the common law approach, deciding cases narrowly, as narrowly as possible.
All we really know is that fundamental economic practices and mathematical algorithms are within the term abstract.
Whether other subject matter is included has yet to be determined. But most of us continue to believe that if there is an improvement to the functioning of a machine, conventional process, manufacture or composition of matter, the claim will be patentable regardless that it might include nominally unpatentable subject matter such as a mathematical algorithm.
” improvement to the functioning of a machine, conventional process,”
Ned,
The only problem with that belief is the statute says “process” NOT “conventional process.”
Furthermore the constitutional mandate is to “promote the progress…” NOT maintain the “conventional”.
So your beliefs run afoul of the law and the constitution. But even if you think it’s good policy to change the law so that only “conventional processes” are patent eligible it flies in the face of common sense of what patents are for. Why on earth would any inventor try and invent innovative new methods for hamming a name with a hammer? A very conventional process.
In fact when you really think about it, the only way to innovate and continue to progress the useful arts is to “automate” those “processes” that use to be done by human labor only. And in the 21st century that objective will more often than not require the technology of complex information processing, e.g. computers and the software that run them. Which by the way will most likely be a sub set of the larger process of making a business run more efficiently so that our great nation and can continue to have the most successful system of “commerce” in the history of the world. Indeed there is a reason the patent office is under the department of Commerce!
Peter King,
“The only problem with that belief is the statute says “process” NOT “conventional process.”
So your beliefs run afoul of the law….”
Wow!
1. The amendment to 101 in ’52 from “Art” to process was not intended to change the law. So, I reference a conventional process in part to a process that was clearly considered to be statutory prior to ’52.
2. As to the state of the law… I reference Diehr.
When a process passes the MOT, it is considered to be a conventional process. When a mathematical formula is applied, per Diehr, to improve a conventional process, it is eligible.
I see nothing in Alice intending to overturn Diehr.
Also consider Bilksi — clearly, the process there claimed was a process in the abstract view of that term. But it was not an eligible process per the holding of the court.
What you argue, Mr. King, is not the law. All processes are not per se patentable. However, all improvements to conventional processes are patentable.
I am not suggesting that there could not be something not covered by the MOT that might be eligible. But the Supreme Court has never one approved of any such process. Not once.
I think I stand on very firm grounds. I do not think the same of your position, with all due respect.
I will handle this….
Ned Heller Writes: “I reference a conventional process in part to a process that was clearly considered to be statutory prior to ’52.”
Ned, your intent is to imply that a “process” as it was understood from the science and technology of the 1800’s is still the same definition of a “process” in the 21st century.
But you are wrong Ned, science and technology has progressed well beyond the Machines and Transformations of the 1800’s.
The framers of the Constitution and writers of the 1952 patent act had no intent of freezing the useful arts, science and technology, to the machines and apparatus of 1790. That is why congress did not limit processes to machines or transformations, and also why the Supreme Court struck down the MoT as the sole test.
Ned writes: “I see nothing in Alice intending to overturn Diehr.”
There is nothing in Alice, Mayo, Bilski or Diehr that exalts the MoT. Indeed MoT was ruled as not required in Bilski, and not sufficient in Mayo as has been pointed out to you by many different commenters, thousands of times, yet you still try to imply otherwise.
Ned writes: “All processes are not per se patentable. However, all improvements to conventional processes are patentable.
Wrong again Ned. All processes within science and the useful arts are patent eligible subject matter, just like the Constitution and the Statue so state. And all those processes are not necessarily conventional. Many are new, innovative and pioneering. And that includes useful scientific business methods and complex information processing systems.
Ned writes: “I am not suggesting that there could not be something not covered by the MOT that might be eligible. But the Supreme Court has never one approved of any such process. Not once.”
Which is absolutely POINTLESS! WE THE PEOPLE do not wait on the Supreme Court to approve of something before it becomes law. Congress writes the law, NOT the Supreme Court. While it is true that SCOTUS has held that processes that can be performed in the mind or only by pencil and paper, are an “exception” to a patent eligible process of the patent act, this exception has never been extended to business methods, software, or computers. And before you pull that 5-4 minority opinion in Bilski out your hat, remember what Scalia said, 4 is NOT 5. And as we all know now, its not even 4 any more.
CASE CLOSED
::Bangs Gavel::
“What is apparent here is that the Supreme Court has chosen to adopt a more cautious approach to patentable subject matter – the common law approach, deciding cases narrowly, as narrowly as possible.”
Ned,
There’s the fundamental problem: the Royal Nine uses the “common law approach” of engrafting “exception” onto patent statutes. Patent law exists only as codified statutes, not “common law” to be pulled from the ether.
More significantly, our Constitution has delegated to Congress (not the Royal Nine) the responsibility to “Promote the Progress of the Useful Arts.” These “exceptions” which the Royal Nine keeps engrafting onto 35 USC 101 are policy questions for Congress to decide, not the Royal Nine. And, in fact, Congress has explicitly spoken as to what those exceptions are in the AIA, namely tax avoidance schemes are patent-ineligible under 35 USC 101. The fact that the Royal Nine keeps repeating after the AIA (as they did in Alice) that “[w]e have long held that the this provision [referring to 35 USC 101] contains an implicit exception [i.e., “laws of nature, natural phenomena, and abstract idea”] shows how “tone deaf” they are to Congress’ intent, and how they overreach their proper Constitutional authority to interpret, not make, law.
EG, but the exceptions have been there since at least 1852, and all interpretations of “101” are guided by them.
In all that time, Congress never acted to codify the exceptions, or to strike them down. In fact, it reenacted 101 in ’52 without doing so. That seems to suggest that Congress was not unhappy with the Supreme Court’s guidance in this matter.
Compare the somewhat constant efforts by some to reverse Roe v. Wade. There is no such outcry in Congress concerning the 160-year-old exceptions.
But, and let me caution you, there was an outcry when the Federal Circuit “overturned” Hotel Security and authorized patents on business methods. They still are concerned with them. This suggests that Congress views the Federal Circuit with concern on patentable subject matter, not the Supreme Court. In fact, there are chief judges of other circuits who are now calling for Congress to undo the monopoly on patent law that the Federal Circuit now enjoys in no small part to the large number of repeated 9-0 reversals that court has experienced recently. Also, non patent law organizations like the Cato institute are on board.
Think about it for a moment. What the Federal Circuit has been doing is bringing itself and the whole patent bar into disrepute. The have been doing a very bad job, and you must recognize this.
“In all that time, Congress never acted to codify the exceptions, or to strike them down. In fact, it reenacted 101 in ’52 without doing so. That seems to suggest that Congress was not unhappy with the Supreme Court’s guidance in this matter.”
Ned,
It could just as easily suggest that Congress intended to do away with those “exceptions” in enacting 35 USC 101 without them. Why do you assume that Congress didn’t say, loud and clear, to the Royal Nine that there are no such “exceptions” by leaving them out entirely? After all, as you note, those “exceptions” had been around for around 100 years prior to 1952 when the current language of 35 USC 101 was enacted without those exceptions.
EG, Congress said nothing relevant regarding its intent to reenact 101 with the same wording. To read something into it in terms of criticism of, for example, the then recent Funk Bros. case, it not really warranted.
I do not buy the argument of 160 year old exceptions.
Maybe the wording “abstract idea” is old, but the Supreme Court cannot say that methods implemented on a generic computer have been ruled ineligible for the last 160 years. The facts have changed, and the Supreme Court has chosen to name these facts identically to give legitimacy to the decisions.
PiKa, consider that Alice is the same as Hotel Security, and in my view, it is. Hotel Security was widely followed, without any exceptions, in every court for 100 years. Then along comes State Street Bank and “overrules” it.
That is the problem. State Street Bank is the problem, not some 160-year-old principle.
What we are seeing now is very similar to how courts dealt with obviousness prior to codification of 103 in the 1952 patent act. Courts and especially SCOTUS struggled with how to deal inventions to them that “seemed” obvious to the judge. Thus, many different tests were created such as flash of genius, inventive concept, and so forth. Essentially, this was the same battle as what we see today with 101, but it was over 103 instead.
These issues are driven by policy and an attempt at judicial efficiency, for the most part, and this type of chaos is what you get when you act as if the ends justify the means.
While most of these patents we see getting decimated under 101 were questionable, we already had tools to deal with them. 102 and 103. The fact that the court chose to use 101 was because 102 and 103 are more difficult to apply. These statutory rules require thought, research, and knowledge of the underlying subject matter.
Most often, a judge will lack the latter, which precludes them from being able to perform either of the former tasks. What these non-technical judges needed was a way to deal with problematic cases without fear of reversal.
My basic concern is that we need a fairly straightforward and repeatable process for determining what gets in and what is excluded. Otherwise, the USPTO will be unable to do its job properly. (The other option that many fear is to give the USPTO substantive authority in this area to create examination guidelines that come with the force of law).
I agree. Keep 101 the broad filter that it was intended to be. It’s easy, repeatable, and consistent with Congressional intent when the act was drafted.
IMO, you can always tell when a “solution” to a problem has been contrived, as opposed to being a real solution that SOLVES the problem. The outworking of a contrived “solution” is generally produces more chaos than the problem it purports to resolve.
The problem is, the bell can’t be un-rung at this point.
Keep 101 the broad filter that it was intended to be.
Is it a “filter” to keep certain types of subject matter from being protected by patents, or is it simply an instruction to applicants to use the recited words in their claims?
It’s goes without saying (but it has been said before by the Supreme Court and I’ll just say it again) that it’s possible to describe pretty much anything using the terms listed in 101.
I believe it’s a filter and nothing more. We don’t want people trying to claim ownership of “e=mc2” or something equally as fundamental.
I agree that almost anything can be claimed as a process or machine. That is why we have the additional tests of 102 and 103.
If the real intent behind 101 was to keep so many things from eligibility, why did it take until the next century for that to become apparent? What does SCOTUS know now about 101 that its predecessor courts didn’t know 20, 30, 40, or 50 years ago? The statute hasn’t changed.
Bluto, on a small point, the Supreme Court never had to address business method patents until Bilski. The reason for that was Hotel Security, a case that was widely followed until the infamous State Street Bank.
Bluto: While most of these patents we see getting decimated under 101 were questionable, we already had tools to deal with them. 102 and 103.
That’s a point of much contention for some of these cases; for other cases it’s simply an incorrect statement.
For example, unless you believe that mental processes are eligible for patenting, there is nothing in 102 or 103 to prevent a useful non-obvious mental process from being patented on its own terms or when combined with an otherwise eligible data-gathering step. The considerations that have been invoked in the past by “activist” courts to justify doctrines to screen out such claims (e.g., the so-called printed matter doctrine) are pure subject matter eligibility considerations.
Similar concerns apply to the patenting of useful non-obvious information.
I’m looking forward to your response.
A mental process would not fall within any 101 enumerated category, unless the claims were drawn to a process such as “thinking about data”, “performing a mental calculation on the data”, “remembering an answer”. To me, these are mental steps.
The fact that a claimed process can be reduced ‘conceptually’ to being executed only in the mind, to me, is irrelevant unless someone has claimed the mental steps as stated above and intends on suing people for thinking.
And please, don’t get me wrong. I know that we are (possibly if not probably) way past my interpretation of things, but my belief is that the chaos we are experiencing is entirely due to courts that are fundamentally changing something that most of us have taken for granted our entire careers (if not long before we were here).
Anecdotally, I am not aware of a single practitioner, who prior to the last few years, actually worried about whether their claims chinned the 101 bar.
All you need to do is go back and look at how many 101 rejections were presented during examination by the PTO and/or presented during litigation. I think you’ll find that they were used as frequent as utility rejections…
Bluto, on “taken for granted for their entire careers,” well at the time State Street Bank came down it was highly controversial. I cannot believe that new practitioners did not know this.
Again. My comments stand. 101 has not been a contentious issue. Practitioners prior to this decade have rarely dealt with 101 issues, and for good reason. Even the AIA recognizes the validity of business method patents and has special procedures for them.
Bluto, all I can say is that you have probably been miseducated. What the Federal Circuit was doing in State Street Bank was bound to be taken up to the Supreme Court at some point. Everyone knew that, at least, everyone who knew anything about patent law.
Ned, although business methods are an important aspect of the 101 change here. That is really a fringe limitation that – for the most part – will not impact any core technology companies other than to avoid some litigation. The bigger issue here are software patents in general. And, it really has been 20-years since Alappat and the software patenting explosion.
In patent parlance, 20 years is an entire generation, which (at least in Missouri) is much less than the time required for adverse possession.
Dennis, you do have a point.
All this shows is that when the PTO gives up and does not challenge the Federal Circuit when it clearly is wrong, and it was clearly wrong in the “we have held” Alappat dicta stemming back to In re Bernhart that was clearly overruled by Benson, the PTO does the nation a disservice.
It did that when it issued DNA patents.
It did that when it refused to challenge Donaldson.
It did that when it began to issue the questionable Beauregard Claims.
I don’t have a record of the cert. petitions regarding State Street Bank. Cert. was denied, but it would be interesting to see whether the government had anything to do with the decision to deny cert.
I agree.
Egon Spengler’s comment at 10.2 reminded me of my Patent Academy training in 1969:
Claim 1. An eraser attached to a pencil.
This was to be rejected as an “aggregation”. IIRC, the reasoning was that a person could not use the pencil and the eraser at the same time.
The foregoing is brought to you by the patent history channel and may not necessarily be reflective of my current thinking as to whether Claim 1 is or is not valid under 35 USC §101 et seq. as interpreted by the SCOTUS and its subordinate law givers.
Under Alice claim 1 is directed to the abstract idea of convenience and is therefore invalid.
I’m noticing a pattern Les.
Like the beating of a drum… I think you may tire of it eventually, but I will nod with agreement every time I hear it.
Agreeing with me is a good thing. But, don’t get use to agreeing with the position. When it comes in an Office Action, please fight it tooth and nail. I suggest leaning heavily on impermissible gist. And since the rejections are boiler plate and non-specific, sprinkle in some fails to meet its burden of presenting a prima facie case ….
Thanks John.
I remember that the MPEP and always wondered what they were talking about – was there a case on point? What I think they were talking about the Rubber-Tip Pencil case, and that was not about aggregation at all, but about patentable subject matter. The claim in that case was to the rubber tip without any other structure. The suggestion in the claim was to use it to attach to the tip of pencil. But that was a mere idea.
IN RE AP 6 PLE, INC
link to cafc.uscourts.gov
IN RE ASUS COMPUTER INTERNATIONAL
link to cafc.uscourts.gov
Two mandamus petitions to order transfer from Eastern District of Texas to the Northern District of California, one filed by Apple, another by ASUSTEK. Both motions were denied by the Eastern District due to judicial economy, because of pending related suits and because the court had already construed the claims in several of patents in suit.
The Federal Circuit granted the Apple mandamus petition because of employee-witnesses located in Cupertino that Applie first indentified in a reply brief that the district court ignored. It denied the ASUSTEK petition because ASUSTEK did not prove that there were witnesses in the Northern District of California.
In Apple, the PER Curiam (Reyna, Hughes) majority discussed the dissent as follows:
There was a vigorous dissent by Bryson in the Apple mandamus petition.
FACEBOOK, INC. v. PRAGMATUS AV, LLC
link to cafc.uscourts.gov
Before MOORE, O’MALLEY, and TARANTO, Circuit Judges.
MOORE, Circuit Judge
All these cases about abstract ideas are expressed in terms of computerized implementation of abstract ideas. Can anyone recall the more fundamental case that would address the abstract idea expressed in mere mechanical terms? For example, if a claim covered “selling head gasket sets, in a package which contained all the gaskets needed to replace all the old gaskets in a particular car engine (or washing machine, or whatever), and the package was marked with the make, model and year of the corresponding car (or washing machine or whatever)” that seems like it would be an abstract idea, but none of the modern case law would comfortably apply to classify this as ineligible subject matter.
DC: if a claim covered “selling head gasket sets, in a package which contained all the gaskets needed to replace all the old gaskets in a particular car engine (or washing machine, or whatever), and the package was marked with the make, model and year of the corresponding car (or washing machine or whatever)” that seems like it would be an abstract idea, but none of the modern case law would comfortably apply to classify this as ineligible subject matter.
Any of the many printed matter cases — which are nothing more than the application of 101 considerations in the context of 102/103 — would address this claim.
I’ll repost what I posted earlier this morning in the Sequenom thread:
elements directed to subject matter that would be ineligible on their own terms can be ignored (In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004 (allowing claims where the printed matter was the only novel contribution would allow “anyone [to] continue patenting a product indefinitely provided that they add a new instruction sheet to the product”, cited approvingly by the Fed Cir as recently as 2011 in In re Kao link to patentlyo.com).
The most straightforward analysis of your hypothetical claim under 101 would be: ineligible subject matter, i.e., the printed text on a bag, can not be rendered ineligible by the recitation of otherwise unpatentable object (an old bag with gaskets) on which the text is printed, nor can it be rescued by the recitation of an equally old step (selling such a bag). The reason being, of course, is that such a claim would effectively serve to protect the ineligible subject matter in the specified old context.
That’s the analysis. The “printed matter” cases would simply ignore the printing on the bag for patentability purposes and find the claim anticipated. Same result. Same rationale. Different words.
I wrote: ineligible subject matter, i.e., the printed text on a bag, can not be rendered ineligible
Gah! Should be: “can not be rendered eligible“.
Come on MM!!! Admit it! You are a closet proponent for information processing patents! I knew it all along. Have you been going to the anti meetings as a spy for us?
MM, Ned, Dennis, 6 and all: All good insights. In the patent I am referring to, it seems that the idea of selling things in packages with all the things needed for a single car was considered by the examiner and patentee to be the new thing, the patentably distinguishing thing. The PMD dispenses with the labeling as the patentably distinguishing feature, but neither the examiner nor the patentee mentioned that. I just feel like I should know of a case that directly addresses this simple idea under 101.
I think there are many mechanical cases with functional claims that may be subject to this 101 analysis.
Night, quite so.
Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498, 22 L. Ed. 410 (1874).
I agree, but pretty much all of them can overcome it with a pretty ez amendment. It’s approximately 1/100 cases that could potentially have a problem with this in “normal” arts.
Although there are a number of ways to logically link the 101 analysis to mechanical and chemical cases. I suspect it is unlikely that the doctrine will be extended in that direction any further than the printed matter doctrine.
Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498, 22 L. Ed. 410 (1874). link to scholar.google.com
The fact is that mechanical cases and information processing cases are little different.
Ah, back to the days where “flash of genius” ruled the day at SCOTUS. I can’t wait!!!
I think we are already there. J. Wu says as much that the new Prometheus/Bilski/Alice line of cases give him the power to invalidate pretty much anything. And it does.
I think that Graham is no longer good law.
And I would probably say that the 1952 Patent Act is no longer law. The new common law has super-ceded the 1952 Patent Act.
And I would probably say that the 1952 Patent Act is no longer law. The new common law has super-ceded the 1952 Patent Act.
Can I ask why you think that is? Assume the judge said the same thing with respect to 102/103 that he said to 101, wouldn’t the outcome be the same? Is the judge not allowed to call upon common sense to know that text messages and grocery communications predated the invention and this situation occurred and rendered it not only obvious but anticipated? It seems like obviousness would get you to exactly the same place by a similar route.
Because the judicially created exceptions to 101 have swallowed up 101.
I’ve heard from friends at the PTO that it may start coming to the mechanical cases.
101 applies to all art fields.
That’s because it’s not about the art field, it’s about what’s being claimed.
There’s no “art” that’s per se eligible.
Example: “A old mechanical corn thresher with a new, non-obvious set of instructions printed on the side” isn’t eligible for patenting.
Consider the oft-cited Rubber-Tip Pencil case. The “claim” as described by the court was for
“a new manufacture,” being a new and useful rubber head for lead-pencils. It was not for the combination of the head with the pencil, but for a head to be attached to a pencil or something else of like character.”
In the end the court held,
“What, therefore, is left for this patentee but the idea that if a pencil is inserted into a cavity in a piece of rubber smaller than itself the rubber will attach itself to the pencil, and when so attached become convenient for use as an eraser?
An idea of itself is not patentable, but a new device by which it may be made practically useful is. The idea of this patentee was a good one, but his device to give it effect, though useful, was not new. Consequently he took nothing by his patent.”
link to scholar.google.com
But the combination of pencil and rubber head was subsequently issued as a patent, US Reissue 6510:
link to docs.google.com
Claim 1 reads:
1. The combination, with a pencil or other similar article, of a solid elastic erasive head, provided with a socket longitudinally in the same, to receive and grasp one end of the pencil or other similar article, or a tenon extending from it, substantially in the manner and for the purpose shown and described.
Do you think such a claim would no longer be eligible as abstract under 101 after Alice?
Slotguy, not at all.
That is exactly what the court had in mind when it said the claim in Rubber-Tip was too abstract. Add some details on how the attachment could be effected from the specification, and presto, one has a valid patent.
SlotGuy But the combination of pencil and rubber head was subsequently issued as a patent
Why the “but”? There’s no inconsistency between the principle recited by the Supreme Court court denying the claim at issue in that Rubber-Tip (one year prior to this reissue), and the subsquent granting of the combination patent describing what the Court indicated would be permissible.
New combinations described in structural terms are patentable. An old object, like a piece of rubber, isn’t made patentable by adding the phrase “for attaching to something, like a pencil.” The new combination itself needs to be claimed, in structural terms, and it is claimed in the reissue application you located.
I don’t see much of an eligibility argument based on Alice considerations if, as appears to have been the case in 1875, the combination of the rubber tip and the pencil is deemed inventive.
I’ll be frank and admit that I’m very surprised that the reissue granted. Was this particular reissue patent ever enforced? How did such a claim get patented over Lipman’s patent from 1858, which itself was invalidated along with many others, in Reckendorfer v. Faber (1875)?
“For example, if a claim covered “selling head gasket sets, in a package which contained all the gaskets needed to replace all the old gaskets in a particular car engine (or washing machine, or whatever), and the package was marked with the make, model and year of the corresponding car (or washing machine or whatever)” that seems like it would be an abstract idea, but none of the modern case law would comfortably apply to classify this as ineligible subject matter.”
Sure it would. It’s the abstract idea of selling items. Specifically what I take to be old gaskets or gasket sets in old packages. PMD takes care of the writing. Gl getting over that simple rejection.
If your gaskets are new then maybe you get the claim, who knows?
If your gaskets are new then maybe you get the claim, who knows?
If you had new gaskets presumably you would just claim the gaskets. What additional right does claiming the method of selling the gaskets get you?
And what’s the next dependent claim? Wherein the customer pays with a smartphone? Wherein the sale occurs on Labor Day or Black Friday?
“If you had new gaskets presumably you would just claim the gaskets. ”
I know I just deleted the part of my comment that was explaining that.
When I started in the profession, 40 years ago, it was explained to me how a trained patent attorney could claim an everyday object (like a teapot), and get the claim through to issue, simply by resorting to fancy patent attorney language when writing the claim.
Full circle. 40 years later, here we go. Patent attorney imagines an exchange of communications between a couple, one at home and the other on the way to the shops, and claims it in fancy language.
40 years ago, candidate patent attorneys received with incredulity the notion that such claims could actually be got through to issue. Can the Patent Office really be that clueless and careless, they mused?
Today though, it can, as this case illustrates
how a trained patent attorney could claim an everyday object (like a teapot), and get the claim through to issue, simply by resorting to fancy patent attorney language when writing the claim.
40 years ago, candidate patent attorneys received with incredulity the notion that such claims could actually be got through to issue
And now look at the incredulity that the claim should be struck down.