Loyalty Conversion Systems v. American Airlines (E.D. Texas 2014) LoyaltyConversion101Decision
Data processing and business method patents continue to fall like dominoes. In this case, Federal Circuit Judge Bryson – sitting by designation in the Eastern District of Texas – has determined on the pleadings that Loyalty’s reward-program patent is ineligible based upon the recent Supreme Court cases of Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347 (2014) and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012).
Loyalty’s two patents are recently issued but claim priority back to a 2006 filing. U.S. Patent Nos. 8,313,023 (“the ′023 patent”) and 8,511,550 (“the ′550 patent”). The inventors appear to be corporate lawyer Sean McGhie and patent attorney Brian Buchheit. The litigation is apparently being controlled by ITUS Corp (Robert Berman) although no assignments are listed for the patents in the US Patent Office website.
The basic goal behind the invention is to open-up the buying power of customer reward points. This goal is accomplished by allowing customers to transfer reward-points (and their typical limited buying power) for a more negotiable instrument. The claims include a number of computers sending, displaying and storing messages back and forth in order to accomplish the aforementioned goal. However, the patent proposes no advance in computer technology per se, other than perhaps being the first to propose the sending and storing of messages in the particular sequence identified.
Judge Bryson writes:
Notwithstanding the prolixity of the claims, they recite a very simple invention: a computer-driven method and computer program for converting one vendor’s loyalty award credits into loyalty award credits of another vendor. In principle, the invention is thus the equivalent of a currency exchange as applied to loyalty award credits such as airline frequent flyer miles or hotel loyalty award points. The Court concludes that the invention claimed in the ′023 and ′550 patents is not fundamentally different from the kinds of commonplace financial transactions that were the subjects of the Supreme Court’s recent decisions in Bilski v. Kappos, 130 S. Ct. 3218 (2010), and Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347 (2014), in which the Court held patent claims invalid for failing to recite patentable subject matter. This case falls squarely within the principles announced in those cases. Accordingly, the Court holds that the asserted claims of the ′023 and ′550 patents are invalid. . . .
In light of Bilski and CLS Bank, the resolution of the section 101 issue in this case is straightforward. At their core, the asserted claims of the two patents in suit are directed to the conversion of loyalty award points of one vendor into loyalty award points of another. That core idea plainly would not be patentable without more, as it is indistinguishable in principle from the simple and familiar financial or business operations that were at issue in Bilski and CLS Bank, as well as similar financial operations at issue in various Federal Circuit decisions in which the claims were held to be invalid under section 101. See Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013) (“system for generating tasks to be performed in an insurance organization”); Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d 1266 (Fed. Cir. 2012) (method for managing a life insurance policy, including generating the policy, calculating fees, and determining the surrender value and investment value of the policy); Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012) (method for processing credit applications); Fort Props., Inc. v. Am. Master Lease LLC, 671 F.3d 1317 (Fed. Cir. 2012) (method for creating a real estate investment instrument adapted for performing tax-deferred exchanges); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (method for verifying the validity of credit card transactions). If anything, the conversion process at the core of the claims in this case is simpler and more commonplace than some of the methods held unpatentable in the cases cited above.
Regarding the computer technology elements of the claim, Judge Bryson dismissed those as “largely functional in nature” and that the resulting claims “do little more than set forth the general concept of currency exchange, as applied to loyalty awards, and then announce the use of ‘one or more’ computers to obtain various efficiencies in the process of converting one type of loyalty award credits into another.” In the decision, Judge Bryson stepped through each of the technological limitations of the asserted claims and concluded that none offered the ‘something more’ required by the Supreme Court.
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Procedurally, this case is important as a dismissal-on-the-pleadings — i.e., quite early in the case. For defendants – this means a major cost savings.
The standard for this type of dismissal are defined by Rule 12(c) of the Federal Rules of Civil Procedure and is “designed to dispose of cases where the material facts are not in dispute and a judgment on the merits can be rendered by looking to the substance of the pleadings and any judicially noticed facts.” Great Plains Trust Co v. Morgan Stanley, 313 F.3d 305 (5th Cir. 2002). The approach is akin to summary judgment and considers: “whether, viewed in the light most favorable to the plaintiff, the complaint states a valid claim for relief.”
The dismissal on the pleadings is somewhat workable here because subject matter eligibility is a question of law that is largely based upon an introspective look at the patent document. Of course some outside reference points are: is it an inventive concept? Further, a case potentially turn on claim construction. In his opinion, Judge Bryson recognized these complications but noted that the parties “have not pointed to any factual issues that could affect” the eligibility analysis. Further, Judge Bryson waited to make his decision until after a claim construction hearing to likewise ensure that claim construction would not affect the outcome of the 101 analysis.
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Claim 1 of the 550 patent is as follows:
- A method comprising:
a computer serving a set of one or more Web pages for a loyalty program of an entity to one or more remotely located client machines, wherein the Web pages are able to be rendered within a client-side browser as a graphical user interface on the one or more client machines, wherein upon being rendered within the client-side browser said graphical user interface shows a quantity of nonnegotiable credits, wherein said non-negotiable credits are loyalty points of the loyalty program possessed by a member, wherein upon being rendered within the client-side browser the graphical user interface comprises a conversion option to convert at least a subset of the shown non-negotiable credits into a quantity [of] entity independent funds, wherein said entity independent funds are different loyalty points of a different loyalty program of a commerce partner, wherein said entity independent funds are possessed by the member, wherein an agreement exists between the entity and the commerce partner, wherein the agreement permits members to convert the non-negotiable credits to the entity independent funds in accordance with a fixed credits-to-funds conversion ratio, wherein the agreement specifies that the entity is to compensate the commerce partner in an agreed upon amount of cash or credit for conversions of non-negotiable credits to entity independent funds, wherein said agreed upon amount is a multiple of a quantity of converted non-negotiable credits, wherein the entity independent funds are redeemable per the different loyalty program for commerce partner goods or for commerce partner services, wherein the commerce partner is not said entity, wherein in [the] absence of being converted the non-negotiable credits are not accepted as payment for commerce partner goods or for commerce partner services;
the computer responsive to receiving a message indicating a selection of the conversion option, processing the selection to effectuate changes in the served set of Web pages; and
responsive to the processing, the computer serving one or more Web pages or Web page updates that include the effectuated changes to the one or more remotely located client machines, wherein upon being rendered within the client-side browser the graphical user interface is updated with the effectuated changes, wherein the updated graphical user interface shows a reduced quantity of non-negotiable credits possessed by the member in the loyalty program, said reduced quantity resulting at least in part from the subset of non-negotiable credits being converted into the quantity of entity independent funds in accordance with the fixed credits-to-funds conversion ratio.
The name of the game is the claim … er, um, that is (tries to clear throat of this pesky legal truth that keeps making him gag) … unless we don’t like what you invented.
If screws and augurs and fans and propellers in the various sizes, materials and forms, having different pitches of windings etc. are adapted (and possibly inventively so) depending upon the context of what needs to moved or what material is worked with (wood, metal, water, soil, air etc.), and for what purpose, then by analogy can a machine defined to work with information in certain contexts be adapted “inventively so” depending upon the context of what needs to be done, want kind of information is processed and for what purpose it is to be used? Why or why not?
This is premised on the fact that screws, augers, fans, and propellers are particular combinations/configurations of a “tool material” (almost always a generic metal) directed to a certain end… inventions I am talking about are NOT those directed to a new tool material, such as a super metal, but only to a newly configured apparatus to do its job in the particular context, i.e. 95% of the inventions.
The issue is “what can you do with a patent claim”, not “what can you do with a machine.”
That is what I mean by “inventively so”. Consider the question reworded if you prefer, replacing “inventively so” with “and claimed in a valid patent”.
If you claim a new machine in objective structural terms that distinguish the machine from prior art machines, that machine should be eligible for patenting regardless of the fact that the machine “works with” or “processes” information in some form.
A question you might ask yourself is whether “improvements” to that machine can be claimed simply be re-labeling the information being “worked with”, without any recitation of new structural changes to that machine.
Understood. I wonder what level of difference, to the pitch of the windings, shapes of the fins, spacing, or perhaps number and other configurations (for the particular context, material worked, purpose) would be required/sufficient of the screws, augers, fans, and propellers… and what would be… strictly by analogy the proportional/fair/similar level of difference to the configuration of the information processing machine (for the particular context, nature amount and configuration of information, and purpose) would be required/sufficient.
Is the threshold standard being analogously applied (threshold quantum of difference/adaptation) proportionally/fairly to the art of information processing machines?
Anon2,
1. A computer is old.
2. A stored-program computer is old.
3. A program processes information, and information is nonstatutory.
4. The use of a programmed computer to improve computer technology, the computer art, a larger machine, or a conventional process is eligible.
However, the combination of an old computer with a new program is not patentable because it would essentially patent that which is nonstatutory, the program.
Analog logic (no software involved) is pure “structure” and processes information just like software does. In theory, you can use analog logic (a series of flip-flops, gates, clocks, etc.) to accomplish anyything that you can do with software. It just so happens that for most applications software is more efficient (size, cost, etc.) to implement.
Can somebody please explain why, from a policy perspective, the less efficient implementation should be protectable and the more efficient one not?
You can’t. I would suggest that implementation of a business method using the equivalent and well known hardware style would also be ineligible. See Benson. link to patentlyo.com
Theo, may I politely suggest that a circuit is completely useless without inputs and outputs that operate on real physical signals. They are assumed.
In contrast, a computer does not assume these inputs and outputs, and they do not necessarily operate at real physical signals. Computers operate on data. There is no requirement for real physical single input and a real physical signal output. Add these to the claim and to the disclosure, a real physical signal as an input and a real physical signal as an output, and then you have the equivalent of an analog circuit.
You will note that it Alappat, the claims were claiming a real physical circuit, albeit a digital circuit that operated on digital inputs and outputs. These were real inputs and outputs as the circuit claimed was part of a larger machine known as a graphics unit. The graphics unit of course was for a display. Somehow in all the chaos involving a few judges on the Federal Circuit who tried to distort the holding of Alappat, the actual holding of Alappat has been lost to memory. But, assuredly, if you claim a programmed digital computer as part of a larger machine that has real inputs and real outputs in a real application, there should be no problem with patent eligibility.
Let me analogize:
1. Metal, from which all screws, augers, fans, propellers are made, is “old” (known)
2. Central members/axes, windings/fins, members about the central members are old (known) [this is not a statement about a particular configuration or adaptation of them]
3. Screws, augers, fans, and propellers – work, move, or do something to everyday material: water, air, soil, wood, etc. and everyday materials are nonstatutory
4. The use of screws/augers/fans/propellers to … [improve screws/augers/fans/propellers?]… to improve a conventional process is eligible
5. The use of a particularly configured screw, auger, fan, or propeller which has an advantage in the particular context, working with the particular subject material for a particular purpose is statutory.
Your comment about the combination of “an old computer with a new program” does not follow from your 1-4, it is a bald statement. Quite simply put hardware + software IS the new machine. Hardware without firmware/software (instructions of some kind) does not function.
If the hardware + software machine is adapted advantageously to work in a particular context to process information why then shouldn’t it be statutory as are the screw, auger, fan, and propeller?
A computer, disconnected from the real world, may whir and clank, but it is useless. At best it can be used as a heater.
Begin adding in context, inputs and outputs, larger apparatus, some process it controls, it begins to have utility.
Hardware + Software does not define a new machine without more, as that was exactly Rich’s theory in In re Benson. The Supreme Court did not agree and never has agreed. An old computer running new software is only doing what old computer do.
That is why there must be more.
It is clear, Anon2, that you have been drinking the Rich/Rader KoolAid for far too long. You may not accept the Supreme Court rulings on this.
Regarding context, let’s take Alappat. The context there was a graphics unit for a display. The hypo was that a programmed computer was a means plus function equivalent to the disclosed circuitry for doing the claimed calculations, when the claims claimed disclosed circuitry in means-plus-function language. In context, the claim was to a rasterizer, not to a programmed computer.
In Diehr, the claim again was to a process – a conventional molding process, not to a programmed computer.
In Benson, the claim was to a programmed computer, albeit claimed as a method, with no particular application except to calculate the mathematical algorithm. That was held to be ineligible – nonstatutory. In essence, the computer portion of the claim was old and the nonstatutory mathematical part of the claim was new. But in such a situation, the nonstatutory part, the math, did not operate to improve the computer. Rather than computer was used to calculate the math.
These are real cases, and are given as examples.
When people try to claim nonstatutory subject matter and simply recite in the claim the use of a computer or some conventional network hardware without more, they are no longer going to succeed in convincing anybody that such a claim presents statutory subject matter considered as a whole.
Anon2, in context, as in Alappat or Diehr, the “application!” of an algorithm to process information to produce an new improved machine (Alappat’s rasterizer of a graphics unit) or process as in Diehr is certainly eligible.
The problem is that instead of claiming the use of a new information processing algorithm to do something to a larger machine or process, applicants insist on claiming the algorithm in the abstract. That is preemptive of the nonstatutory, which is the exact opposite of a sufficient application.
prolixity indeed.
The new case by AAC against EBay asserts two separate patents. U.S. Patent Nos. 7,296,033 and 7,529,692.
These patents are related to operation of a user-interface for an auction. Claim below from the ‘033 patent:
1. A method of presenting to a user on an auction site one or more action items related to a linking auction item, comprising:
encoding search information for one or more related auction items available by a seller;
embedding the encoded search information into a pointer to a facilitating server, the linking auction item and the one or more related auction items being available by the same seller, wherein an auction item is an item available on an auction site;
embedding said pointer in an item description of the linking auction item;
upon selection of the linking auction item at the auction site by a user, receiving the encoded search information embedded in the pointer to the facilitating server;
automatically decoding the encoded search information embedded in said pointer into a keyword; and
invoking a search engine of the auction site with the keyword as a search parameter to find and present to the user item documents for the one or more related auction items.
Hey Dennis, the link you have in the post there does not go to the correct opinion. Could you please link the correct one?
And wow claim 1, wow.
If one cannot get such an inexpensive up-front case dismissal by other D. C. judges for claims that are clearly financially related business methods, then why not promptly file a CBM, where both 103 and 101 defenses can be promptly and more cheaply raised and decided and also be likely to stay costly litigation discovery on other issues?
Paul, CBMs cost a lot more than you think.
Further, if a claim can be dismissed at the pleading stage, I should think there would be good basis for awarding attorney’s fees to the prevailing defendant. Get a few of those, and court dismissals would seem very attractive.
This goes all the way back to 2000, at which time eBay was surely a juicy target for anyone speculating on future improvements to their online auctions. Like most people who had eBay accounts back then, the pros and cons of various aspects of the software were discussed endlessly. And like most people, we knew that many of those changes would occur inevitably in response to requests for increased functionality and with the increasing availability of processing power and memory on both sides (eBay and its users). And lo and behold those changes occurred. In the future we’ll have 3D auction listings, wherein the auction listings are for objects licensed from the Elvis Family Trust. Can I haz patent now?
Remove the abstract baloney in this claim regarding “auction site” and “sellers” and substitute it generic “data” (the computer doesn’t care, after all). What’s left? An ancient method of displaying data to a system user in response to the user clicking on a hyperlink. Good lord.
Uh once again MM writes claims to what was and flails horribly for what is not.
Yes, MM, the ancient hyperlink. I think the Egyptians used hyperlinks with the abacuses to count the taxes while sitting next to Justice Bryer’s ancestors.
One thing that is funny despite everything about these anits is the casual nature by which they now claim intelligent machines. It is kind of like a person from the year 10 A.D. saying on well sure a machine that moves (a train) by itself. That is just a person walks with legs. Obvious. Anciently known.
Now we get this for machines as if a GPS actually somehow imbued us with the ability to do everything that people do. Bizarre and hilarious.
MM, the ancient hyperlink. I think the Egyptians used hyperlinks with the abacuses
Patent law doesn’t make distinctions between 30 year old technology in the public domain and 3000 year old technology in the public domain, nor should it.
So the 3000 year old hyperlink.
Night, why do you so studiously try to think up strawmen arguments as if the claim were directed to novel hardware? That is not what MM or I or the Supreme Court is talking about. All the technology involved here is old, and notoriously so. Consider, please, the following:
1. A new algorithm.
2. A new algorithm implemented with an old abacus.
3. A new algorithm implemented with a old computer.
Truly, do you not see that the novel subject matter of the claim is nonstatutory in each case?
I know that is the argument you are pushing.
Ned, as the V.P. of IP of one of the largest software companies in the world said to me: So, the $10 processor is patent eligible, but the 10,000,000 lines of code that we wrote for the software isn’t? That makes no sense.
Tell this VP that “the processor” is unpatentable because it’s old, and he/she has copyright to protect the code.
Seems pretty straightforward and non-controversial.
If he finds that answer unacceptable, he can look for job as a VP in a different business or retire altogether or lobby Congress for special treatment.
[shrugs]
A new algorithm implemented with a old computer to operate an old machine to get a new result?
Fish, Consider the gun. It fires cartridges. Is the gun new because one invents new gunpowder for the cartridge?
According to you, yes. If that is the case, reclaim the old gun for use with the new cartridge and sue if the gun was sold for use with the new cartridge. Now, don’t you see something wrong with that?
Alapatt is still good law Ned.
Night, it is, but its dicta is not law.
And while we are at it, consider the case of Ray Rice — suspended for hitting his wife.
What do you think of posters here who call for the firing of certain deputy directors because they are women?
invalidate under 103, not 101, IMO
The inventors appear to be corporate lawyer Sean McGhie and patent attorney Brian Buchheit.
Food for thought: If the “inventors” are attorneys, and thus not people “of ordinary skill in the art”, does that necessarily mean that the invention must be obvious or is it only likely so? What does the statement that lay people could conjure up the invention say as to obviousness with respect to those in the art?
Second question: These people are obviously not computer coders. Instead they prefer to tried and true(ly incorrect) route of simply stating a result and saying that any PHOSITA can code it. Assuming you take them at their word, is a child sitting on Santa’s lap asking for a transferrable rewards program prior art? What about dialogue in an old Star Trek episode? At what point does your “idea + industry pre-nablement” (copyrighting that phrase!) end? Let me guess – its right at the moment that one of these ridiculous scenarios is asserted as prior art against you? How does the public know you’re not the one sitting on Santa’s lap?
What does the statement that lay people could conjure up the invention say as to obviousness with respect to those in the art?
Nothing at all. See the definition of serendipity, and especially it’s origin.
^ its origin, not “it’s origin.”
The fact that anybody, regardless of their skill in programming a computer, can sit around all day and endlessly “conjure up” computed-implemented methods is certainly relevant to the obviousness of those “conjured-up” claims.
The skilled artisan for a claim that recites no more programming knowledge than the knowledge known to an ordinary patent attorney might just as well be an ordinary patent attorney. What’s the argument for choosing anyone else? Why in the world would one ask what a programmer of ordinary would think is obvious when the only “innovation” in the claim is the use of an old computer to send, e.g., “copyrighted content related to a hospital insurance claim”?
The prohibition against “negativing” inventions by “the manner in which they were made” does not prevent an inquiry into the lack of skill needed to “conjure up” a specific use for a machine that was designed intentionally for the genus of such uses (e.g., processing information). That would be a ridiculous prohibition.
It’s a prohibition only against invalidating an otherwise new and non-obvious and distinctly, properly claimed machine or composition merely because, as a matter of fact, it was “discovered” serendipitously or in a moment of inspiration. This an important distinction and one that the computer-implementers have been trying to obscure for years.
101, guys, not 103. You’re doing what they do.
David: 101, guys, not 103. You’re doing what they do
Not sure who “they” are, David, but the point is simply to recognize that many of these computer-implemented claims are word salads whose patentability, as a practical matter, depends far more on lawerly innovations than on innovations in any Useful Art.
MM, as you point out, the claims are not directed to any programming technology, but to manipulation of abstract ideas where it is assumed that anyone with ordinary skill in programming can quickly, and without undue experimentation, implement.
It seems this fundamental fact is completely lost on the many who still complain about courts non understanding technology.
Then there are those who still remain wedded to nominalism — e.g., that if the claim recites a machine, any machine, old or functionally claimed, that claim necessarily recites patentable subject matter.
This is the approach Rich took in In re Benson. It was not good law then. It is not good law now.
Why do you presume that attorneys can’t be people “of ordinary skill in the art?”
In general, patent practitioners have an advanced technical degree in a STEM area (and often entered patent law as a second career following time spent in the industry, and spend 40+ hours/week reading and writing about that area of technology. And an in-house attorney tends to be exposed to the nuts and bolts of the technology of a particular company.
A patent practitioner isn’t at least</b. one of "ordinary skill" in a particular field shouldn't be practicing in that field at all.
A patent practitioner isn’t at least one of “ordinary skill” in a particular field shouldn’t be practicing in that field at all.
I agree with you that the patent attorney in many cases has at least the “ordinary skill” in the art, but I think this particular statement goes a little far. The “ordinary skill” in some specialized arts is awfully high, meaning that virtually no registered practitioner would be qualified under your test. What’s important to know in that situation are the limits of your skill…
David Stein: In general, patent practitioners have an advanced technical degree in a STEM area (and often entered patent law as a second career following time spent in the industry, and spend 40+ hours/week reading and writing about that area of technology.
I assume you’re not referring to litigators (in which case I pretty sure you’re very wrong) but prosecutors.
Regardless, in most large firms it’s routine for prosecutors who have far less skill than the “programmer of ordinary skill” to prosecute computer-implemented claims. That’s because such a huge number of those claims have nothing at all to do with any kind of technical skill and everything to do with skill or experience in, say, drafting an agreement, marketing, driving a car, locating availble real estate, playing bingo, determining when a light bulb needs to be changed, or (at its very worst) engaging in social interactions with other people (e.g., making interpersonal connections by sharing personal information with others).
This is a problem for the patent system, David. The courts have finall recognized this problem long after many of us attorneys did now and long after the public at large did. And there’s no going back.
Regardless, in most large firms it’s routine for prosecutors who have far less skill than the “programmer of ordinary skill” to prosecute computer-implemented claims.
That certainly appears to be true. I suspect that quite a few of those prosecutors aren’t qualified to do anything else.
David Stein: A patent practitioner isn’t at least one of “ordinary skill” in a particular field shouldn’t be practicing in that field at all.
Can you please tell everyone: what’s the “particular field” that is relevant to writing a claim to a method of playing or managing a game of “guess the animal behind the door” that is played “on computer”? Or a claim to a computer “configured” to draft a contract between two people?
Why are Examiners or prosecutors required to possess any kind of technical degree at all to draft or examine those sorts of claims?
In general, patent practitioners have an advanced technical degree in a STEM area (and often entered patent law as a second career following time spent in the industry, and spend 40+ hours/week reading and writing about that area of technology. And an in-house attorney tends to be exposed to the nuts and bolts of the technology of a particular company.
Its your argument that the attorneys in question could have built the inventions claimed without undue experimentation after having read the specification and relevant prior art? Did you read the patents? It’s clearly a case of “hey here’s an idea that makes money, let’s monopolize it.”
This is the part where you tell me that they need only conceptualize it, and an embodiment is not necessary. That brings me to my second question – isn’t this really more of a wish list than an invention? What is different from Tommy sitting on Santa’s lap saying “I want a computer that can do [information processing function X]” and the corporate attorney saying “I have conceived of a computer that can do [information processing function X]”?
Is it that the latter is an adult? Is it that he colludes with the patent attorney, does that make his justification real in your mind? What makes the boy’s flight of fancy any different from the corporate attorney’s? The answer, of course, is that there is no difference other than attitude of demander and whether you’re paying the demandee in cookies or issue fees.
Question: Since you’re one of ordinary skill do you ever attempt to build the full scope of your inventions using only the teachings in your specification with respect to what your inventor considers the novel features? Honestly curious.
Why do you presume that attorneys can’t be people “of ordinary skill in the art?”
I suppose I shouldn’t make a blanket statement, as I do see on a daily basis (and I’m not saying this is you) attorneys at least make revolutionary advancements in turd-polishing methodology. I suppose there may be attorneys who truly are of the skill in the art. These are not those attorneys.
Your response, valid as it is to my blanket statement comment, sidesteps the issue I was getting at: If I’m nothing but an end-user of computers, for example, and I conceive of a claim as a lay-person, mustn’t we necessarily conclude that it is an obvious invention? A PHOSITA skill must at least rise above the level of layperson, or else there would be no “art” to be skilled in. Can little Tommy sitting on Santa’s lap, with no training in computer software, disclose a patentable software invention? And if so, I think you’re really going about the process the wrong way – you’d make much more money hanging out at the local mall with a stenographer or flipping through old sci-fi tv shows.
If I’m nothing but an end-user of computers, for example, and I conceive of a claim as a lay-person, mustn’t we necessarily conclude that it is an obvious invention?
I don’t think that follows at all. Your argument seems to be that invention is a product of ordinary skill, and that therefore someone with less than ordinary skill in a particular art can’t invent in that art. But inventions are not products of ordinary skill, or they would be legally obvious. The skilled person has to add something more. All we can conclude from that, with respect to the relatively unskilled person, is that that the unskilled person has to make an even larger leap from his skill level to get to an invention.
From a theoretical point of view, it seems to me that it might be easier for the relatively unskilled person to make non-obvious leaps. If he does that and then goes and consults skilled technicians to find out that his ideas can actually be implemented, he is an inventor. The skilled technicians might or might not be co-inventors, depending on how things played out.
“This is the part where you tell me that they need only conceptualize it, and an embodiment is not necessary. That brings me to my second question – isn’t this really more of a wish list than an invention? What is different from Tommy sitting on Santa’s lap saying “I want a computer that can do [information processing function X]” and the corporate attorney saying “I have conceived of a computer that can do [information processing function X]“?”
Which is your position: A) The invention is obvious and therefore should not have been allowed or B) One of ordinary skill in the art would not know how to make an use the invention without undue experimentation because how to implement it is unknowable by one of ordinary skill in the art from reading this high level discussion of the invention?
Ya can’t have it both ways. Pick one.
Ya can’t have it both ways. Pick one.
That’s precisely my statement to the applicant.
I, in fact, know nothing about coding. But I am the end user of a computer, and I know what computers can do. So I know that if I wished I had a computer program that ranked the top five restaurants within a 10 mile radius of me that serve italian and whose names begin with the letter A-M, I am sure someone can make that happen. But it should be clear (or at least it is clear to me) that I didn’t INVENT that program, I merely came up with an idea for what I’d like someone else to do (a wish list).
So one way to look at it would be to say that it must have been obvious, because my layperson skills certainly didn’t supply anything to the art, or the other way would be to say it’s not enabled, because I’m just asking for something with no way to make it. I think its clear though that the solution cannot be that I actually invented it, because I have no skill and have done no work and what you would be rewarding me for is changing three words. Swapping “I wish I had” to “I have conceived of” should not make an invention. I think you would agree that it’s not an aim of patent law to make people rich because they have commercially common desires.
But this is clearly (in my mind) what the applicants here did. They had a wish list of something they thought would be commercially valuable. This is the kind of problem that pops up when you don’t hold people to particularly describing their invention.
No, Les is commenting on your argument, which concurrently asserts that:
(1) The disclosure fails to disclose necessary implementation details (which you also presume that the inventors could not have known), and thus the invention is not adequately described; and
(2) The implementation of the disclosed invention is so simple and routine that the invention itself is “obvious.”
But these statements are mutually exclusive. It can’t be both.
(I actually posted a nearly identical comment to Les’s comment above, but Patently-O didn’t post it.)
Hence, the discrepancy here:
This is like saying: “I don’t know the value of x, but I’m going to presume that either x > 12, which creates some problems, or x < 3, which creates some other problems."
David: (1) The disclosure fails to disclose necessary implementation details (which you also presume that the inventors could not have known), and thus the invention is not adequately described; and
(2) The implementation of the disclosed invention is so simple and routine that the invention itself is “obvious.”
But these statements are mutually exclusive. It can’t be both.
So in the context of, say, claimed method for “managing” a method of playing “guess the animal behind the door” “on a computer” that describes no new technology, which of the two is correct? Does it matter if the animal was previously undescribed?
The point, David, is that computer-implementer types have been whipsawing the PTO and the public for years and they’re still doing it. Monday morning they want their functional claims because “all you need to do is dream it up and send it to an independent coding firm”. Monday afternoon we hear endlessly about how nobody understands how much skill and effort it takes to actually write and develop bug-free code.
Les is commenting on your argument, which concurrently asserts [it is undescribed and obvious]. But these statements are mutually exclusive. It can’t be both.
Actually it’s unenabled and obvious. But yes that’s the statement. Lets look solely at the four corners of the document, before a prior art search. Applicant claims doing function F. Applicant states in his detailed description that “function F can be done” or his computer “does function F”, or conversely that “one of ordinary skill would know how to do function F”.
What I am saying is that in this context, F cannot be the basis for patentability, because there is simply no teaching there, it was either done before and applicant added nothing (obvious) or it wasn’t done before and applicant didn’t teach it (unenabled).
Example from Planet Bingo:
(i) input of at least two sets of Bingo numbers which are preselected by a player to be played in at least one selected game of Bingo in a future period of time;
(v) selection from the group by the player of at least one of the sets of Bingo numbers preselected by the player…”
This is how the specification describes those limitations: “The sets of Bingo numbers 56 in the player file are preselected by the player and are input into the player file…The VIP player then selects the sets of numbers 56 he wishes to play .”
The spec language is pretty much the same as the claim language, this is a version of saying “I claim function F” and the computer “does function F.” Now either the art knew how to preselect the player numbers, or it didn’t, but what certainly isn’t true is that “preselecting player numbers” was something invented by the applicant that renders the claim patentable. Same with (v) and pretty much every other limitation in there (though those comprise only even more basic computer functions which are clearly obvious). The claim is directed to a functional result and the specification provides nothing more than the statement that the functional result can be achieved.
This is like saying: “I don’t know the value of x, but I’m going to presume that either x > 12, which creates some problems, or x < 3, which creates some other problems."
To use this terminology, what I am saying is I don’t know the value of X, but if X5 it is unenabled.
Now you do have a motivation to combine question, but if you’re in computers you know that motivation to combine is never a problem. The end result being that there exist some applications that on their face are invalid without considering the prior art because their entire spec is written like Planet Bingos – It wont tell you how to achieve something, it will just say something is done.
On a more limited issue, here is something that the office rules prevent and they shouldn’t: Claim 1 has limitation F which is unenabled by the spec and relies upon previous knowledge of the art. Examiner rejects limitation F with RefA. Applicant’s sole argument is in response is that RefA doesn’t teach limitation F. Examiner’s only argument (outside of going non-final) is to maintain that RefA teaches limitation F. This allows the absurd result that RefA could be found wanting, the record would have no evidence that limitation is taught ANYWHERE and yet the claim would issue. In fact, Applicant’s argument for patentability is improper because it is either estopped by or admits that enablement is found wanting within the spec itself .
To use this terminology, what I am saying is I don’t know the value of X, but if X5 it is unenabled.
This is supposed to say, I dont know the value of X, but if X is less than or equal to five it is obvious, but if X is greater than five it is unenabled.
35 USC 112 provides a standard for enablement: “The specification shall contain a written description of the invention in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.”
This standard creates a spectrum of three possibilities:
(1) The invention is not enabled by the disclosure – and we cannot pass any judgment on its obviousness because we don’t know what it is.
(2) The invention is enabled by the disclosure, and is novel non-obvious.
(3) The invention is so simple and routine that it is fully enabled without an implementation, and a person of skill in the art can easily implement it without undue experimentation, but it is so simple that it can be rejected based on obviousness.
That’s the spectrum. (1) and (3) are at opposite sides of the enablement spectrum. A disclosure can be subjected to one criticism or the other, but not both.
You have already stated that you “know nothing about coding, but are the end user of a computer, and know what computers can do.”
I don’t know much about chemical engineering, but I know that atoms can go together to form molecules. Therefore, I presume that any composition made of organic compounds can be formed using routine processes, and therefore can’t possibly be novel.
The next time I pick up a patent claiming a chemical structure, I’m going to presume that even though I don’t know how to make it, ordinary chemists can do it so easily that it can’t possibly be novel. And yet, since the patent didn’t explain how to make it, I’m going to assume that the inventors didn’t fully invent it.
Do you see a problem with that position?
Ugh I had a whole response typed out and it didn’t post.
Briefly: When the specification does not teach how to achieve a limitation, that analysis of the spec is enough to say that limitation cannot be a cause for patentability because either it was unknown before and still unknown (unenabled) or it was previously known anyway (obvious). There is a motivation to combine question but as you probably know that’s never an issue in computers.
Random, I claim a hammer, a nail, two boards, and a new method of attaching the two boards together by striking with the hammer the nail held at rest against one board with exactly two soft blows followed by a third hard blow.
Now, it should be no objection that the details of how to make hammers, nails and boards are not described. The specification might further define soft and hard by some measures. But the novelty is in the method, and once described even at the highest generalization, it is well within the ordinary skill in the art to implement.
The problem with “software” claims is that software has nothing to do with the invention. Software is like the hammer in the example. Everyone knows how to make the hammer. It is what the hammer does that is the invention.
Now, if what the hammer does is an improvement to the hammering art, a method that includes a computer is patentable if the claim as a whole describes an improvement to the computer, the computer Art, or to other technology. I daresay that not describing a detailed program to implement the method should not be the basis of any rejection under 102/103 or 112.
No. According to the MPEP and the case law upon which it is based, i you were the first to conceive the restaurant ranker you did invent it.
II. AN INVENTOR MUST CONTRIBUTE TO THE CONCEPTION OF THE INVENTION
The definition for inventorship can be simply stated: “The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor. … Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant [except for simultaneous conception and reduction to practice, Fiers v. Revel, 984 F.2d 1164, 1168, 25 USPQ2d 1601, 1604-05 (Fed. Cir. 1993)]. One must contribute to the conception to be an inventor.” In re Hardee, 223 USPQ 1122, 1123 (Comm’r Pat. 1984). See also Board of Education ex rel. Board of Trustees of Florida State Univ. v. American Bioscience Inc., 333 F.3d 1330, 1340, 67 USPQ2d 1252, 1259 (Fed. Cir. 2003) (“Invention requires conception.” With regard to the inventorship of chemical compounds, an inventor must have a conception of the specific compounds being claimed. “[G]eneral knowledge regarding the anticipated biological properties of groups of complex chemical compounds is insufficient to confer inventorship status with respect to specifically claimed compounds.”); Ex parte Smernoff, 215 USPQ 545, 547 (Bd. App. 1982) (“one who suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not an coinventor”). See MPEP § 2138.04 – § 2138.05 for a discussion of what evidence is required to establish conception or reduction to practice.
You conceived it, you invented it.
Now then, could someone of ordinary skill in the art reduce it to practice based on your “wish list”?
You have said that they could.
Therefore, you have disclosed the invention.
You conceived it, you invented it.
You’re one step away from the answer. You’re looking for 2138.04. It’s true you don’t need reduction to practice (i.e. a working model) but the inventor must know how to create the invention before conception takes place (because conception requires a definite picture of an operable invention). i.e. You have to be capable of meeting 112, 1st before you’ve conceived. But I can never meet 112, 1st, because I can never prove that I posited any means of achievement, because I don’t know coding.
This ought to be pretty clear from one of the quotes in your citation there: Ex parte Smernoff, 215 USPQ 545, 547 (Bd. App. 1982) (“one who suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not an coinventor”)
My example is just one guy who suggests a result to be accomplished with no knowledge as to how he accomplishes it. There’s no invention. In fact, when I partner with you and you actually do invent because you know how to do it, I’m not even a coinventor. Little Tommy doesn’t get to sit on Santa’s lap and invent by just spouting things he would like (with some of them possibly being in fact enabled).
It’s made more clear by the fact that a claim to simply the functional result of undescribed code is improper (i.e. one can never claim any program that does what I asked, one can only claim particular programs that achieve the result) but I know I’ll have to wait for a supreme court case re-establishing that as having always been the law (just like with 101) before I get you to believe that.
“My example is just one guy who suggests a result to be accomplished with no knowledge as to how he accomplishes it. There’s no invention. In fact, when I partner with you and you actually do invent because you know how to do it, I’m not even a coinventor. Little Tommy doesn’t get to sit on Santa’s lap and invent by just spouting things he would like (with some of them possibly being in fact enabled).”
That’s not true. If you hire someone to write the code based on your wish list, according to the definition in the MPEP you are the invention and they are mere pions. “Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant”
Furthermore, by setting out the required functions you have in fact designed the code. In the word of software you are the system designer. You are the highest paid. You are in charge of a department. You run the meetings.
Knowing how to code is probably helpful. But it is not a requirement. You communicate with your minions in state diagrams, flow charts and object skeletons or frameworks.
…and by the way, MPEP 2138.04 agrees with me, here is a typical excerpt:
“[C]onception is established when the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without the exercise of extensive experimentation or the exercise of inventive skill.” Hiatt v. Ziegler, 179 USPQ 757, 763 (Bd. Pat. Inter. 1973). Conception has also been defined as a disclosure of an invention which enables one skilled in the art to reduce the invention to a practical form without “exercise of the inventive faculty.” Gunter v. Stream, 573 F.2d 77, 197 USPQ 482 (CCPA 1978). See also Coleman v. Dines, 754 F.2d 353, 224 USPQ 857 (Fed. Cir. 1985) (It is settled that in establishing conception a party must show possession of every feature recited in the count, and that every limitation of the count must have been known to the inventor at the time of the alleged conception.
For count, read claim.
If your claims are at the high functional level at which YOU conceived the invention, then YOU invented it.
If one of your minions conceives of a solution to a problem in the filter step by using a modified FFT or Bayesian filter, and you have a dependent claim to that detail, then he is co-inventor on THAT claim.
But, if the invention is new and not obvious even at the broadest functional level, without the specific filter detail then you are the inventor of the broader claim 1.
If your claims are at the high functional level at which YOU conceived the invention, then YOU invented it.
This is where you and I must irreparably disagree, and is probably the main issue on this board.
I do not believe that one who provides less disclosure can possibly be entitled to more coverage. Yet that’s what you suggest happens – the one who claims the most abstract, high level reasoning actually makes it easier to meet 112. To meet a particular limitation, you need skill in the art sufficient to know what to do and disclose it. But to meet a limitation drawn to a class, you can be entirely unknowledgable about the issue so long as one means of achieving the result is actually achievable. I view it as the opposite – a claim the broader genus requires knowledge of each and every species within the genus, and thus it’s impossible to claim the broader genus when you couldn’t claim the individual species.
To me this is an impossible concept, and this is the ultimate issue of functional claiming. There are several cases in which an applicant had clearly invented or even undisputably reduced to practice a particular item within a broad scope (that was not obvious under 103) and yet the claim was struck down. Under your interpretation, this could never happen, as the sole means of policing a scope once you’ve shown possession of one point within the scope is via 103.
I’ve discussed several times why I think this reasoning can’t be the proper reasoning so I won’t bore you with it again, but one of us is wrong and it is clearly a fundamental misunderstanding of how patent law works.
Les, there are cases that hold that a person who has a idea but not the means for carrying out is not an inventor vs. one who first conceives of the means.
RandomGuy –
You said
“This is where you and I must irreparably disagree, and is probably the main issue on this board.”
And then you explained why.
However, I think you are troubled because you are overlooking the fact that there is an examination process.
They guy “who discloses less” “gets more” only if the broad claims are found to be not anticipated and not obvious.
If the claim is to “combustion” with out the details of combustion of wood or combustion of at least one hydrocarbon, then the guy “gets more” only if the examiner can find no instance of “fire” of any kind.
If they examiner can’t find “combustion” of any kind, then the inventor has brought the world a wonderful gift and I say he is entitled to royalties on all forms of combustion for 17 years or so and maybe his picture on the cover of Rolling Stone or the Man of the Year issue of Time.
Now, why can’t we agree on that?
RandomGuy I am the end user of a computer, and I know what computers can do. So I know that if I wished I had a computer program that ranked the top five restaurants within a 10 mile radius of me that serve italian and whose names begin with the letter A-M, I am sure someone can make that happen. But it should be clear (or at least it is clear to me) that I didn’t INVENT that program, I merely came up with an idea for what I’d like someone else to do (a wish list).
Indeed. And it’s ridiculous given what we know about computer technology that ten years from now you’d be able to threaten a company that (1) developed and wrote the actual bug-free working software to “automatically” provide that information to users of a diverse array of computerized devices, and (2) successfully marketed that functionality.
The reward in that scenario would be completely disproportionate to the contribution to any Useful Art.
“hey here’s a good idea to make money; let’s monopolize it….”
And here I thought that was the basis of all good businesses.
I thought that [monopolizing ways of making money] was the basis of all good businesses.
I thought it was the basis of antitrust laws that force businesses to compete on business terms (marketing, improved products) for the benefit of the public, even where one of those businesses might wish things worked differently.
In any event, “making money” is not one of the Useful Arts. Never was, never will be. The so-called “free market” is the accepted way that our society has settled upon to promote competition in the field of “making money.” There’s no point in handing out patents to people who have figured out “new” ways of “making money” without contributing to progress in the Useful Arts. And doing so just damages the functioning and credibility of the patent system at the expense of the public’s interest and for the sole benefit of that tiny, tiny, tiny fraction of well-heeled folks with the ability and desire to manipulate the system.
This has to be a joke, right?
RE: Second question: These people are obviously not computer coders.
Actually, I am a software engineer, who has extensively coded before I became a patent attorney. Specifically, I coded Oracle databases for the Air Force as an AF officer for approx 3 years for the National Air Intelligence Center (NAIC). Sean has also coded software.
– Brian K Buchheit