Abstract Idea: I know it when I see it

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.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

147 thoughts on “Abstract Idea: I know it when I see it

  1. 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.

    1. 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.”

      1. 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.

      2. “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.

      3. 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.

        1. 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.

          1. 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.

      4. 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.

    2. 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.

      1. ” 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!

        1. 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.

          On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101. Because we do not view respondents’ claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process for the molding of rubber products…”

          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.

          1. 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::

      2. “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.

        1. 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.

          1. “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.

            1. 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.

          2. 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.

            1. 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.

  2. 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.

    1. 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).

      1. 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.

        1. 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.

          1. 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.

            1. 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.

    2. 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.

      1. 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.

      2. 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…

        1. 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.

          1. 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.

            1. 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.

          2. 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.

            1. 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.

  3. 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.

      1. 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.

        1. 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 ….

    1. 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.

  4. 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:

    “The dissent finds no fault in the district court ignoring
    record evidence. The dissent argues that district
    courts have “discretion to disregard evidence offered for
    the first time in a reply brief, and cites a string of cases to
    support this contention. Dissent at 2-3. Yet, all but two
    of the cases cited by the dissent focus on new arguments
    first made in a reply brief. The two cases that address
    new evidence, as opposed to new arguments, are district
    court conclusions that new evidence presented in a reply
    brief may be disregarded, but neither of these cases
    involve venue transfer analysis under § 1404(a).
    The dissent also makes other arguments that it believes
    show that the district court did not err. Dissent at
    3-5. Yet, these arguments are precisely what is lacking in
    the district court’s opinion denying transfer. Indeed, the
    district court’s order fails to mention the five other witnesses
    identified by Apple in its reply brief, or that it
    disregarded those witnesses because they were identified
    in a reply brief. Either way, we are left with the conclusion
    that the district court ignored the relevant evidence
    that the dissent would have treated differently.”

    There was a vigorous dissent by Bryson in the Apple mandamus petition.

    “If we mean what we say when we say that mandamus
    is reserved for those cases in which the district court
    “failed to meaningfully consider the merits of the transfer
    motion,” Barnes & Noble, 743 F.3d at 1383, then we
    should surely deny the petition here. Even if the court
    should have adverted to the two witnesses and three
    institutions referred to for the first time in Apple’s reply
    brief, the rest of the court’s analysis is quite thorough; the
    court cannot fairly be charged with having failed to give
    “meaningful consideration” to the merits of the motion to
    transfer.

    I fear that the majority has committed the error that
    the Supreme Court warned against in Will v. United
    States, 389 U.S. 90, 98 n.6 (1967), where the Court cautioned
    that “Courts faced with petitions for the peremptory
    writs must be careful lest they suffer themselves to be
    misled by labels such as ‘abuse of discretion’ and ‘want of
    power’ into interlocutory review of nonappealable orders
    on the mere ground that they may be erroneous.” See also
    In re Volkswagen of Am., Inc., 566 F.3d at 1351 (“A suggestion
    that the district court abused its discretion, which
    might warrant reversal on a direct appeal, is not a sufficient
    showing to justify mandamus relief.”); In re
    Volkswagen of Am., Inc., 545 F.3d at 312 (“But—and we
    stress—in no case will we replace a district court’s exercise
    of discretion with our own; we review only for clear
    abuses of discretion that produce patently erroneous
    results.”).

    I respectfully dissent from the order granting the writ
    of mandamus.

  5. FACEBOOK, INC. v. PRAGMATUS AV, LLC
    link to cafc.uscourts.gov

    Before MOORE, O’MALLEY, and TARANTO, Circuit Judges.
    MOORE, Circuit Judge

    “We note that the Board’s construction—
    limited to the physical location of the device—is narrower
    than ours. The broadest reasonable interpretation of a
    claim term may be the same as or broader than the construction
    of a term under the Phillips standard. But it
    cannot be narrower. Thus, the Board’s construction
    cannot be the broadest reasonable one.”

  6. 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.

    1. 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.

      1. 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“.

        1. 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?

      2. 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.

    2. I think there are many mechanical cases with functional claims that may be subject to this 101 analysis.

      1. 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.

    3. 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.

          1. 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.

              1. 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.

        1. 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.

    4. 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

      1. 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?

        1. 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.

        2. 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)?

    5. “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?

      1. 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?

  7. 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

    1. 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.

    2. Back in the day I was a patent examiner undergoing training in Patent Academy. (I ended up in law school when my idea for a comedy entitled “Patent Academy I” failed to sell.) And I distinctly remember being taught that business methods were simply not patentable under 101. It wasn’t open to debate or discussion. Just weren’t patentable. And I remember that making sense to most of us. We all know what happened next.

      Regarding clueless examiners, I suspect it really isn’t that easy to reject a claim based on common sense or everyday experience because usually, these things are not written down in forms that patent examiners can access readily and cite in an office action.

      On the other hand, the Patent Office has always found itself allowing things from time to time that subsequently occasion ridicule and embarrassment.

      1. On the other hand, the Patent Office has always found itself allowing things from time to time that subsequently occasion ridicule and embarrassment.

        And that’s never going to change because human beings make mistakes. Such mistakes will tend to increase exponentially in absolute numbers, of course, when the number of applications being examined starts growing exponentially.

        Also the errors that were occurring for years are systematic, not random.

      2. There it is folks, in plain language from Mr Spendler. Thank you Egon.

        Dammit, it is the JOB of the PTO to issue the wretched thing, unless it really can prove it to be unworthy of a patent. Dear Examiners, if you simply cannot prove it in short order then, dammit, do your job, you bunch of jobsworths.

        And once the wretched thing has issued, it is VALID, OK, unless one can get a lay jury to sign up to your pleadings, that make it CLEAR and CONVINCING that the highly qualified and learned PTO simply f+++ed up.

        How much simpler it all is, at the EPO, without the burden of “due process”! No wonder SCOTUS has to resort to special measures, to restore some sort of sanity.

      3. Egon, “We all know what happened next.”

        From State Street Bank,

        In view of this background, it comes as no surprise that in the most recent edition of the Manual of Patent Examining Procedures (MPEP) (1996), a paragraph of § 706.03(a) was deleted. In past editions it read:

        Though seemingly within the category of process or method, a method of doing business can be rejected as not being within the statutory classes. See Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2nd Cir.1908) and In re Wait, 24 USPQ 88, 22 C.C.P.A. 822, 73 F.2d 982 (1934).

        MPEP § 706.03(a) (1994). This acknowledgment is buttressed by the U.S. Patent and Trademark 1996 Examination Guidelines for Computer Related Inventions which now read:

        Office personnel have had difficulty in properly treating claims directed to methods of doing business. Claims should not be categorized as methods of doing business. Instead such claims should be treated like any other process claims.

        Examination Guidelines, 61 Fed.Reg. 7478, 7479 (1996).

        The source of the problem was the PTO as much as the Federal Circuit.

        Do you agree?

  8. The most important takeaway from the case is that the court focused the abstraction of the hardware recited in the claims.

  9. Would it have helped if the claim was limited to a base station that performed these steps (i.e., where each step makes it clear that a base station performs the action)? At least then the claim would clearly be directed to a machine. However, if the “idea” is still “abstract”, then I think the claim is invalid because the base station simply implements the “abstract” idea. Therein lies one of the main problems with Alice, which is that it’s not that a claim has to be done by a machine, but that the machine — once there’s an “abstract” idea — has to do “significantly more” than just implementing the abstract idea.

    1. I think J. Wu has it right. It would have helped only if subjectively J. Wu thought it helped. Who knows what J. Wu thinks.

    2. PB: if the “idea” is still “abstract”, then I think the claim is invalid because the base station simply implements the “abstract” idea.

      I agree completely.

      The Supreme Court in Alice put to rest the notion that the additional recitation of a generic, conventional “machine” (e.g., a “base station”) to an ineligible method like this changes the outcome of the analysis.

      In that regard, the prosecution history shows that the method claims were allowed after minimal examination wherein the Examiner cited only one prior art patent. Following that, the applicant added “system” claims and a request for Allowance based on the recitation of the steps in the method claim. That request was granted.

      Those system claims are worthless now.

    3. Therein lies one of the main problems with Alice, which is that it’s not that a claim has to be done by a machine, but that the machine — once there’s an “abstract” idea — has to do “significantly more” than just implementing the abstract idea.

      This is not a bug, but a feature, as the claim you describe (a machine that performs functions) has never traditionally been patentable, because functional language has never traditionally been allowed.

      Rather the claim should have been directed to the means of achieving the functions, which most assuredly would be “significantly more.” I suspect that is where the dividing line will eventually end up anyway.

        1. The counter argument to that is that the apparatus is not abstract, it is simply intentionally broad. What do you say when someone says “the machinery used to perform the method is irrelevant?”

      1. RG: the claim should have been directed to the means of achieving the functions, which most assuredly would be “significantly more.” I suspect that is where the dividing line will eventually end up anyway.

        Another way of approaching the question is to start at the other end where we can be extremely confident that 101 subject matter issues aren’t lurking: new objective physical structure distinct from the prior art, or methods reciting new steps that transform matter. Then we ask: are there types of claims where a little bit less than that is still okay and, if so, what are the reasoned, evidence-based justifications for these exceptions?

        Information processing methods carried out by old computing devices are the real bugbear because abstractions are going to abound. That is an area of “technology” where a skyscraper can be perfectly equivalent to a flea, or even a picture of a flea.

        An entirely new lexicon is going to need be developed to examine such methods properly (assuming it can be done). That’s going to take many, many years if we let fighting attorneys and judges do the work on a case by case basis.

  10. Dennis: It is good that Judge Wu does not conflate the fact that the method is old with the fact that the method is purely abstract, affirming your assumption in “New Abstract Ideas?”

  11. Here’s an interesting nugget from a footnote in the opinion:

    Eclipse submitted the Declaration of Daniel R. McClure (“McClure Decl.”). Docket No. 23-1. McClure is a patent attorney who was employed at the firm that prosecuted the patents-in-suit at the U.S. Patent and Trademark Office. McClure did not draw that connection expressly and did not state whether he himself was involved in the prosecution of the patents-in-suit. His declaration, 23 pages long, is essentially a second opposition brief.

    I’m pretty sure there’s at least one case finding inequitable conduct for filing an expert declaration with the PTO without identifying the declarant’s connection to the case. Yes, this is not quite the same, but the judge here did not appear to be amused (or impressed).

  12. Dennis: 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

    This issue was already addressed in Prometheus by all nine members of the Supreme Court, head on. It’s not a problem with the Supreme Court’s eligibility jurisprudence but more of an express warning by the Supreme Court to judges and attorneys that, as they define the test (or more likely tests, plural) with greater precision, bear in mind that any interpretation that reasonably calls into question the ineligible of any patent is a non-starter.

    As others have already noted, this claim is so far divorced from anything worthy of patenting we needn’t fret much. This kind of claim is exactly the kind of claim that should be taken out of the system, forever, and the kind of claim that never belonged in the system in the first place.

    And in case anybody missed it the first time around: anytime any government entitlement program begins to see a surge of lawyers seeking to profit from direct participation in that program (i.e., seeking the entitlement), the red warning flags should fly up to full mast. I’m happy to go into detail explaining why that is the case if anybody really needs it and, no, I’m not suggesting that lawyers never invent anything worthy of a patent.

    1. I wrote: any interpretation that reasonably calls into question the ineligible of any patent is a non-starter.

      I should have written “the eligibility of every patent”, to be clear.

    2. Right – The Supreme Court was clear in Alice that they did not want or expect for the new rule to swallow all (or even most) of patent law. That element of the decision is available as an important limitation on the definition of “abstract idea.” And, even if it does not direct us in positively defining the scope of abstract ideas, it will be useful to help judges reject overreaching definitions.

  13. “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.”

    I’m sorry your Honor, but 1) Asking someone something is not an abstract idea. It is a concrete activity. 2) Why did you feel the need to impermissibley distill the claim down to a “gist” before you dismissed it out of hand?

    Maybe if you focused on the actual claim you wouldn’t have been lead astray and come up with this:

    Further, folks will recognize that the steps can be performed by someone talking on the telephone.”

    No they can’t.

    When talking on the phone or calling someone on the phone you can’t

    receiving a response communication from the party’s personal communications device (i.e., not from the party) , indicating 1) that the party has received the notification communication and 2) 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 3)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.

    1. I think there is a strong argument that Alice overruled Graham. At least Alice modified Graham. I don’t think Graham is good law anymore.

    2. When talking on the phone or calling someone on the phone you can’t …
      receiving a response communication from the party’s personal communications device (i.e., not from the party) …

      It seems to me that you’re putting a narrow spin on the term “from,” Les, so that it refers to an ultimate starting point, rather than any “starting point or focal point” of the activity. Good luck with that.

      1. The phrase you are hinting at is broadest REASONABLE interpretation. Reasonableness is bounded by how one of ordinary skill in the art would interpret the claim after reading and understanding the spec. While it is just a guess, I’m pretty sure OOOSITA would side with me on this one.

        Its pretty clear they weren’t claiming:

        two phone calls, the second of which goes : yeah Bill, I’m doing what you asked me to do in the phone call 2 minutes ago.

        1. Maybe, but it seems quite clear that the claim covers:

          (1) sending a text message that says “Hey, while you’re at the store, pick up a gallon of milk”;
          (2) receiving a text message that says “OK – headed that way now”;
          (3) refraining from sending any more text messages until “detecting” an incoming text message that says “Got it – anything else?”

          Would you really argue that the second text message is not “from” the remote party’s “personal communication device”? Do you think that it’s likely that this exchange happened at least once among the 100’s of millions of text message exchanges that occurred prior to 2003?

          1. I understand that from the point of view of someone that wants to reject the claim or invalidate it, one might read the claim as you suggest. But I am confident that the scenario you outline is not what the inventors intended to cover and that a reading of the specification would make it clear that such a reading is beyond the broadest REASONABLE interpretation.

            1. But I am confident that the scenario you outline is not what the inventors intended to cover …

              As one who has written thousands of claims (and who has surely screwed a few up), I wish that were how at least my claims were construed. But that’s not how it works.

        2. Les: from the party’s personal communications device (i.e., not from the party)

          DanH: It seems to me that you’re putting a narrow spin on the term “from,”

          Les: Reasonableness is bounded by how one of ordinary skill in the art would interpret the claim after reading and understanding the spec.

          But limitations from disclosed embodiments are not read into the claims. The BRI of “from” does not limit the phrase to “originating from” – that’s why “originating from” exists.

          1. By the way, we are talking about a patent right? Clearly the Examiner didn’t think the claim read on two text messages and a decision to let the guy pick up the milk undisturbed. Right?

            1. By the way, we are talking about a patent right? Clearly the Examiner didn’t think the claim read on two text messages and a decision to let the guy pick up the milk undisturbed. Right?

              What an examiner in fact knows to be old is not the same as what the examiner can prove to be old. The fact that that comes up every day does not necessarily mean it would be rejected. This would be considered to be a flaw in the system by everyone who is not themselves either a prosecution attorney or a person seeking a patent.

            2. If I was free to cite two text messages and use the common knowledge of what people do (communicate to pick up groceries) I assure you no functional language would ever issue, and I’m just talking on 103 grounds.

    3. As much as I dislike the chaos of Alice’s “I know it when I see it” test, I tend to agree with the author here.

      That claim is incredibly weak as far as the technical implementation of the idea. There’s no data, there’s no user interface, there’s no communications network, there’s no indication of how the availability is determined (by device, or by further user input?).

      He could have helped himself quite a bit by getting into the data interactions more specifically.

          1. I don’t think so. I’m pretty sure most of us knew how to use a telephone in 2003.

            This^ is why you can’t have nice things.

            Keeping in mind what bad joke said about how purely un-limited the invention is – is the full scope of what is claimed enabled?

            Is the claim directed to doing it on a telephone?

            I prefer to use written description in claims like this, for the same reason (the full scope is undescribed just as it is unenabled) but it seems people understand that concept just as poorly.

            You cannot claim a scope that gives you A through Z if you can’t meet 112 with respect to each of a,b,c,d…etc.

            1. Yes, you can. If b – y are not known but only imagined in the mind of an examiner after reading the disclosure and the disclosure describes A and Z and the claim is original and shows that the inventor contemplated b – y, then the inventor can claim that scope.

              In a world without fire, I can claim a method of producing combustion that covers all forms of oxidation even though I have not specified every possible fuel and every possible oxidizer. I have invented fire generically and am entitled to claim it as such.

              If I didn’t disclose it, you can later invent the combustion of magnesium and get a patent for it. We could work out a cross licensing deal or you could pay me a royalty on Fire in order to burn magnesium. Or you could just wait for my patent to expire.

    4. Before making his judgment, judge wu broadly interpreted the claims (i.e. refused to narrowly interpret the claims) with the result being that these steps could all be done with people simply using off the tech available back in the day.

      1. What difference does that make?

        I’m sure when they make Crestor, they use the same pitchers, caldrons, spoons and fire they always use and a person pours in the ingredients and stirs the pot. Yet the METHOD of making Crestor is patentable. You don’t have to use new equipment or new ingredients to patent a method and humans can be the ones that perform the steps!

          1. Dennis, Huh? Check 4.6.1.1.

            If the use of any machine however abstractly claimed was per see eligible, all these computer cases would have been decided the other way.

            1. Ned, that is exactly the point that Les is making. He’s trying to figure out why the newly designed method using a computer is not patentable while the newly designed method of using well known industrial chemistry equipment is patentable.

    5. Les, I agree that the claim was not abstract in that it recited detailed steps including the use of apparatus.

      What was abstract, however, was the apparatus. It was described in generic terms, with covered apparatus being virtually anything that worked.

        1. Fish, the apparatus, though not technically abstract, was generalize to the point that any apparatus might do.

          Consider Wyeth v. Stone, discussed in O’Reilly v. Morse. The claim there was to any machine that could cut ice in a block. I hope you agree that the machine in the example was claimed to the point of abstraction.

          Consider claim number 8 of O’Reilly v. Morse. Essentially Morse was claiming any apparatus using electromagnetism for communicating intelligible characters at any distance.

          Consider Rubber-Tip-Pencil. The claim was to the idea of attaching a generic piece of rubber to the tip of a pencil, with no actual means and methods claimed.

          When the apparatus claim is claimed at a very high level of abstraction, effectively the claim is not to a machine, but to the abstract way of using the machine. But while the new use of an old machine nominally is patentable as process, in reality, that use must be “transformative” to the extent that the machine is improved.

      1. Even if a device could be abstract, I’m not sure I follow your point.

        This is a claim to a method. There is no requirement that a device be recited at all. A method claim can recite stirring the mixture without specifying that the mixture is in a pot or caldron or that the stirring is done with a spoon or a swizzle stick.

        1. Les, absolutely — but a method that produces a new or improved chemical composition or manufacture or machine is quite a bit different than a method of using an old machine, manufacture or apparatus without more.

          Making a machine, manufacture or composition has always been infringement. The courts recognized that the processes for making machines, manufactures and compositions themselves were patentable as processes.

          But the new use of an old machine, etc., without more, without producing something new as in a new machine, manufacture or composition, is abstract.

          If the simple use of an old machine was sufficient by itself to confer patentability, Benson would have been decided differently. Ditto Bilski and Alice.

          Thus in Rubber Tip Pencil case we had the suggestion to use the rubber tip to attach to a pencil or like device. But the rubber tip itself was merely a piece of rubber and it was old. The suggestion to use it in a certain fashion was simply an idea.

          Thus, the idea of driving a car from here to there might be wonderful. But is simply not patentable even though the car is a physical machine.

          1. Nonesense. Clean cotton is old. A new method of producing clean cotton…..using a screen and a centrafuge for example, is patentable. A method does not have to produce something new to be patentable.

          2. You keep citing wrongly decided cases. These are not persuasive arguments.

            If the combination of an eraser and a pencil is not patentable, then why is a combination of wood, cloth and rope?

            1. Les, If the combination of an eraser and a pencil is not patentable, then why is a combination of wood, cloth and rope?

              Les, I hope you read the case one more time. The Supreme Court made it clear that the patentee was not claiming the combination of an eraser and a pencil. In fact the suggestion was that if he had claimed that combination, there would be no problem with respect to patentable subject matter.

              The fact that you keep saying these things, e.g., that the court in Rubber Tip held that the combination of an eraser to pencil was unpatentable, tells me that you still do not understand what the Supreme Court is saying.

              In Rubber Tip, the claim was to the rubber tip itself. The rubber tip itself was old.

    6. Isn’t your attempted telepone call being automatically switched to the calling parties answering machine, which answering machine of course communicates to you that it is doing so, consititute “receiving a response communication from the party’s personal communications device, indicating that the party has received the notification communication and is now occupied ..” In many cases because the party is avoiding immediately answering your call, which would seem to meet “..is now occupied with a task associated with the notification communication” ?

  14. “This sort of test is obviously problematic – and especially in the context of patent examination where the discretion is handed to patent examiners.”

    I’m not so sure. Especially since the test usually only knocks out the worst of the worst. If you make a good showing in your draftsman’s efforts you’re still likely to slide by anyone but the most watchful.

    “First, the reality is that every patent provides some amount of preclusive impact ”

    Yes, but not every patent provides some amount of preclusive impact over the judicially excepted categories. Which is of course the “preclusive impact” at issue.

    ” 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.”

    Technically perhaps correct, but with that said he cannot also deny that the same patents he’s referring to should never have been issued.

    “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.”

    If the patent can be designed around, in substantial measure, in order to use the abstract idea (all the abstract ideas at play in the case that is) then the patent did not preempt in the first place thus it should not have been invalidated under 101.

    At least he looks like he reached the right result in this case.

  15. It is apparent that these claims were written during a day when this was not just common practice, but best practice so to speak.

    Best practice? How can it have ever been best practice to dress up a claim with pseudo-technical terms (“personal communication device” and “notification communication”) to obscure the fact that the claim is to an everyday process?

    This is a perfect example of the kind of patent that got us into the 101 mess we’re in now. It’s more than obvious that somebody, well before 2003, called someone on his “personal communication device,” was told “hang on, I need to step out of this meeting,” and then waited until he was subsequently told “OK, I’m out now” before talking. Yet, was an examiner in 2003 likely to find a patent reference that described this? Probably not.

    The good news so far is that the vast majority of the 101 cases I’ve seen so far deal with awfully bad patents, like this one. And it’s encouraging to see that judges like this one are approaching the issue thoughtfully. But I’m still very worried about the PTO’s ability to properly apply the Alice approach.

      1. True, but isn’t that a 102/103 argument?

        My argument is indeed a 102 argument. My point is that there was apparently a flood of applications that appear to do nothing more than computerize ordinary activities. The PTO is set up to reject claims based on patents and published applications – you’re not likely to find such that describe ordinary activities like calling your husband at work or playing Bingo, which means that the PTO had no real mechanism for rejecting trash like this. Hence today’s problems.

        1. The PTO is set up to reject claims based on patents and published applications

          Isn’t this one of the biggest problems that has resulted in all of the “abstract” claims getting allowed? Examiners need to cite things like textbooks. Examiners are supposed to have a technical education (commensurate with their assigned art?) that should at least make them generally aware of what is available in a textbook. Instead, from what I have been told by former examiners, they search patent and patent publication databases and call it a day, despite what I have been told is a very impressive library at the PTO. If the examiners refuse to open a book (they may not have time based on the count system – a related issue), then the PTO needs to make all of those book searchable.

          A textbook may not have been enough for an examiner to cite relevant art in this claim, but how many business method claims could be rejected based upon accounting or transactional practices that should be available from undergraduate accounting textbooks or legal texts on transactional practices?

          1. how many business method claims could be rejected based upon accounting or transactional practices that should be available from undergraduate accounting textbooks or legal texts on transactional practices?

            Examiners certainly do have access to quite the library and time is something of a concern, so you’re right on both counts. However the problem isn’t that. The problem is that when you have law that assumes that any stated functional result of software or business methods are enabled, the applicant never conveys (or inadequately conveys) a means. Because no means is described, the only thing that can be searched is the functional language. And that language is always written in a manner to get around 103s, and is usually context specific.

            So if, for example, there is a claim to a machine performing the function of frying ants without using combustible fluids, and the spec doesn’t state the enabling act of using a magnifying glass, the examiner has to know from his own knowledge about a magnifying glass and how it can be used for the function. If he doesn’t, no amount of examination of the spec nor research in the library will help him find the needle in that haystack.

            Consequently, the only thing they can search is the function (frying or heating without combustible fluids). They won’t find those words (perhaps a poor example specifically, but you get the point), and the claim will be allowed.

              1. Yeah as I said perhaps not the best example. But the point is that when the applicant says achieve X, and says nothing more about how X is achieved, either you already know something that would likely achieve X or you don’t. Either way the search is pointless, because the fact that you know means it must have been obvious, and if you didn’t you have no means to start the search other than simply quoting from the functional language.

                1. “and if you didn’t you have no means to start the search other than simply quoting from the functional language.”

                  How is that any different that with a hardware claim. I would think that would be a much easier search than a search for a filter circuit with 17 transistor wherein the 14th transistor has a resister connected to the emitter inter connecting the emitter to drain of the first transistor and a 4uh inductor, which inter is connected to the collector of the third transistor.

                  Anyway, the test for whether something is patent eligible or not is not and should not be whether the examiner has figured out how to search for it.

      2. True, but isn’t that a 102/103 argument?

        Certainly part of the issue is that although the examiner can nominally take administrative notice of a fact, the procedure requires that to be immediately backed up if the applicant calls them on it. The result being that there is no such thing as administrative notice, which in essence rules out common sense.

        As I’ve said previously – it is virtually impossible to find a written down version of the method that follows you entering a full restaurant that takes reservations. That method occurs constantly every day and yet for prior art purposes it is essentially nonexistant.

        1. No doubt. There are probably thousands of other mundane information processing steps that take place between you and the restaurant between the moment you enter and the time that you leave, having eaten some of your food, gotten a doggie bag and paid your bill, including tip.

          And course all those information processing steps are totally different (TOTALLY!) from the steps that occur when you order a pizza “on the Internet” or with your “personal computing device”, or the steps that occur when you walk into a car parts store looking for a new fan belt.

    1. DanH: This is a perfect example of the kind of patent that got us into the 101 mess we’re in now. It’s more than obvious that somebody, well before 2003, called someone on his “personal communication device,” was told “hang on, I need to step out of this meeting,” and then waited until he was subsequently told “OK, I’m out now” before talking. Yet, was an examiner in 2003 likely to find a patent reference that described this? Probably not.

      Absolutely correct because the “improvement” to the computer is completely devoid of any technical contribution and the PTO’s examination system wasn’t and probably still isn’t set up to deal with the infinite variations on these ancient themes. But the bigger issue is simply one of agency capture where the PTO for many years simply treated any computerized device as something “high tech” because that’s what their “clients” wanted.

      Unbelievably, the term “personal communications device” is not even defined in the specification. I’ve seen countless claims where applicants and the PTO both seem to assume that because some old technology in the prior art is “hot” and popular (e.g., a “smartphone”) that a limitation reciting that old device somehow makes the old “new” all over again. It was and is a ridiculous habit and, as DanH notes, one of the reasons why we’ve come to this point.

      My question is: why aren’t patentees who wave claims like this around not being sanctioned? Who made the decision that this claim was valid and what, exactly, was the reasoning? Seems like the perfect candidate for fee-shifting.

      1. “My question is: why aren’t patentees who wave claims like this around not being sanctioned?”

        Are you suggesting that they should voluntarily refrain from enforcing their own patent, which the U.S. government officially endorsed the validity of? I get – and agree with – the argument that it’s invalid, but by definition there’s a good faith argument to the contrary when you have the PTO behind you.

        1. Are you suggesting that they should voluntarily refrain from enforcing their own patent, which the U.S. government officially endorsed the validity of?

          I don’t know if MM is suggesting that or not, but I am – you should most definitely refrain from enforcing your own patent when you know it’s trash. “Well, the PTO issued it” is not a good faith argument in the face of a clarification/change in the law or the discovery of prior art that was not before the office.

        2. Dan is right here. Given the fact that so many patents are invalidated and that the Supreme Court has retroactively changed the law, it would make a lot of sense for a patentee to consider its patent’s validity before filing suit.

          1. Dennis, the Supreme Court has retroactively changed the law…

            You have got to be kidding!

            State Street Bank changed the law. The Supreme Court has not restored it.

  16. I found the judge’s opinion rather amusing as well, and it is clear he is not ready to throw out the baby per se, but he did not like this patent. It is apparent that these claims were written during a day when this was not just common practice, but best practice so to speak. His main weapon, as I read it anyway, was that the steps could all be done by a person using a telephone as you say. It brought to mind the auto-dialer cases where they would keep calling a person until they no longer got a busy signal.

    The judges IMO are starting to see the limits of how whacky the test is from the SCOTUS. Once we start seeing “negative” examples that pass 101, we will understand better where the other end of the spectrum is going to be.

Comments are closed.