Judge Bryson: Computerized Loyalty-Point Conversion System Not Patent Eligible

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.

= = = =

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.

= = = =

Claim 1 of the 550 patent is as follows:

  1. 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.

171 thoughts on “Judge Bryson: Computerized Loyalty-Point Conversion System Not Patent Eligible

  1. 12

    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.

  2. 11

    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?

    1. 11.1

      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.

      1. 11.2.1

        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”.

        1. 11.2.1.1

          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.

          1. 11.2.1.1.1

            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?

            1. 11.2.1.1.1.1

              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.

              1. 11.2.1.1.1.1.1

                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?

                1. 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.

              2. 11.2.1.1.1.1.2

                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.

                1. 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?

                2. 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.

                3. 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.

    2. 11.3

      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.

  3. 9

    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.

    1. 9.1

      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.

    2. 9.2

      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?

      1. 9.2.1

        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.

    3. 9.3

      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.

      1. 9.3.1

        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.

        1. 9.3.1.1

          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.

        2. 9.3.1.2

          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.

        3. 9.3.1.3

          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?

          1. 9.3.1.3.2

            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.

            1. 9.3.1.3.2.1

              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]

          2. 9.3.1.3.3

            A new algorithm implemented with a old computer to operate an old machine to get a new result?

            1. 9.3.1.3.3.1

              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?

            1. 9.3.1.3.4.1

              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?

  4. 8

    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?

    1. 8.1

      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.

      1. 8.1.2

        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.

          1. 8.1.2.1.1

            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.

        1. 8.1.2.2

          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.

    2. 8.2

      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?

      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.

      1. 8.2.1

        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…

      2. 8.2.2

        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.

        1. 8.2.2.1

          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.

      3. 8.2.3

        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?

      4. 8.2.4

        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.

        1. 8.2.4.1

          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.

        2. 8.2.4.2

          “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.

          1. 8.2.4.2.1

            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.

            1. 8.2.4.2.1.1

              That’s precisely my statement to the applicant.

              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:

              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.

              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."

              1. 8.2.4.2.1.1.1

                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.

              2. 8.2.4.2.1.1.2

                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 .

                1. 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.

                2. Actually it’s unenabled and obvious. But yes that’s the statement.

                  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.

                  To use this terminology, what I am saying is I don’t know the value of X, but if X5 it is unenabled.

                  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?

              3. 8.2.4.2.1.1.3

                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.

                1. 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.

            2. 8.2.4.2.1.2

              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.

              1. 8.2.4.2.1.2.1

                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.

                1. “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.

                2. …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.

                3. 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.

                4. 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.

                5. 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?

            3. 8.2.4.2.1.3

              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.

        3. 8.2.4.3

          “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.

          1. 8.2.4.3.1

            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.

    3. 8.4

      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

      1. 8.4.2

        Brian, where did you acquire your training in the art of loyalty awards, or was that something that just came naturally?

      2. 8.4.3

        Hi Brian thanks for posting here. I am patent attorney too that was software engineer.

        What’s your take on this case Brian?

        1. 8.4.3.1

          NWPA,

          Night Writer, given that the CBM Petition is presently active (an institution decision is due by October 1st) and that litigation decisions like appeal possibilities are pending, I am not going to presently provide my opinions. That said, if anyone is interested, the CBM Petition response on CBM2014-00096 is public record and is available at link to uspto.gov. A detailed analysis of grounds raised to the PTAB that include 101 grounds, complete with exhibit evidence is included.

          Talking on unrelated matters affected by the same issue, like many patent attorneys focusing on prosecution, I am currently having to respond to many pending patent applications on 35 USC 101 issues. In the last two months, I have talked with four different SPEs, for example, on cases that had issue fees paid where prosecution was re-opened due to newly introduced 101 issues. The actions received on those cases used boilerplate language, which was not specific to the cases at issue. All four cases, quite different substantively used the same boilerplate. Given that these cases were originally allowed by Examiners, then revoked by other USPTO personnel it is unlikely that the Examiner who originally granted those cases will be persuaded by argument – outside an appeal on all of those cases. It is unknown what the Appeals Board will do. During these discussions, USPTO personnel told me that cases pending issue were reviewed in light of CLS Bank by the Office- by placing them into three arbitrary piles, with a direction to make sure some quantities of patents that were about to be issued were rejected instead. I have talked to the Examiners involved and they are frustrated and have no clear advice to give. What experiences have other patent attorneys or litigators had in this area ?

          – Brian K Buchheit

          1. 8.4.3.1.1

            I have talked to the Examiners involved and they are frustrated and have no clear advice to give.

            That’s because for a lot of “innovations” in the computer-implemented space, there is nowhere for the application to go except into the trash.

            That’s the point of these 101 cases: dredge the swamp of applications that simply have no hope of patenting given the lack of any contribution to any Useful Art.

            A method of computer-assisted loyalty point massaging? Seriously, Brian? We’re going to have laughs around our dinner table tonight. But you’re going to be all right, aren’t you? Please let us know if you need to borrow some money for soup or anything.

          2. 8.4.3.1.2

            Hi Brian,

            Thanks for the reply. I understand you can’t comment. To my thinking one of these cases is going up to the SCOTUS and they are going to hold it eligible under 101. Your case is a definite extension of prong 1. I am not really sure what to make of all this. Your case probably has more meat to it than any of the other 101 cases, and the line will have to be drawn on prong 1 of the test. So far we have only seen extensions of prong 1, so it is hard to tell where the Fed. Cir. will stop.

            As for the PTO, the examiners I have spoken with are socked. I have spoken to examiners that say they have been given no guidance and have been told which patent applications to reject. Some have been told their entire docket is ineligible under 101. Some have said they figure they are going to lose their jobs. Not sure what is going to happen.

            The whole idea of having to re-claim inventions turns my stomach. The claims I’ve written are the way the inventors think about the invention and I shouldn’t have to re-claim them.

            I’ve heard different things about the board. I think the board has some divisions in it that are probably pretty strong so I am not sure how CJ Smith is going to handle 101. I think Smith was appointed before Google got a hold of Obama so I don’t think Smith is like Taranto and Hughes (being ignorant and virulently anti-patent). (or Lee for that matter.) The problem we have at the PTO is Lee. She is a Google shadow director that wants to end software patents. She is smart and getting good guidance. I am not sure how much influence she has over the board. I hope little, but I think she is on the board at least the director is supposed to be.

            Anyway, good luck to you. A nasty business this 101 stuff.

            Night Writer

      3. 8.4.4

        You have to try to ignore the anti-patent group on here. They are a large vocal group on this board.

        1. 8.4.4.1

          Night, it downright disgusting that you would describe anyone who disagrees with you as anti-patent. Please stop doing this or I will have to start replying in kind.

          Also, stop calling for resignation of competent executives because they are women.

  5. 7

    For anyone who cares, some of the airlines filed CBM petitions in March 2014 against both of these patents. CBM2014-00095 and 00096. There hasn’t yet been any significant action in either case.

  6. 6

    Dennis: Data processing and business method patents continue to fall like dominoes.

    Hooray! The Great Clean-Out proceeds onwards. And we haven’t even put functional claiming at the point of novelty before the Suprem Court!

    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.

    That’s because there were no such “factual issues” that can be credibly raised, as is true for a great many 101 cases.

    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.

    Well done!

    The inventors appear to be corporate lawyer Sean McGhie and patent attorney Brian Buchheit.

    Nobody could have predicted.

    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

    As many of us have been saying for years, pretty much anytime you see this kind of “limitation” in a patent claim, there’s an excellent chance that claim is ineligible. There is no “there” there. When a patent system is opened up to this kind of “innovation”, then “innovation” becomes little more than a game for corporate and patent lawyers to play. There’s no “progress” that’s being promoted in any Useful Art, just “progress” in the “art” of lawyering.

    Literally anybody could sit around and day after day file patents on “new” “agreements” that “permit” people or computers to engage in various abstract contractual performances (“wherein the animal is given an identifier within 36 hours of redeeming said credit” etc). It’s endless and doesn’t qualify as “innovation” any more than making a clever legal argument and filing it electronically with the Federal Circuit qualifies as “innovation”

  7. 5

    The Judge first impermissibly distills the invention down to first “gist”:
    “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. ”

    Then distills THAT gist a bit further with:

    “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. ”

    And then finds the second gist to be old.

    And therefore abstract.

    OMG someone save us from the tyranny of poly sci and English majors!

      1. 5.1.1

        I’m aware. However, impermissible gist is a Fed Cir. concept. I guess the Supremes don’t have to follow it, even though they denied cert several times, but I think the Fed. Cir is supposed to follow it.

        MPEP 2141.02

        II. DISTILLING THE INVENTION DOWN TO A “GIST” OR “THRUST” OF AN INVENTION DISREGARDS “AS A WHOLE” REQUIREMENT

        Distilling an invention down to the “gist” or “thrust” of an invention disregards the requirement of analyzing the subject matter “as a whole.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (restricting consideration of the claims to a 10% per second rate of stretching of unsintered PTFE and disregarding other limitations resulted in treating claims as though they read differently than allowed); Bausch & Lomb v.Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 447-49, 230 USPQ 416, 419-20 (Fed. Cir. 1986), cert. denied, 484 U.S. 823 (1987) (District court focused on the “concept of forming ridgeless depressions having smooth rounded edges using a laser beam to vaporize the material,” but “disregarded express limitations that the product be an ophthalmic lens formed of a transparent cross-linked polymer and that the laser marks be surrounded by a smooth surface of unsublimated polymer.”). See also Jones v. Hardy, 727 F.2d 1524, 1530, 220 USPQ 1021, 1026 (Fed. Cir. 1984) (“treating the advantage as the invention disregards statutory requirement that the invention be viewed ‘as a whole’”); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1 USPQ2d 1593 (Fed. Cir. 1987), cert. denied, 481 U.S. 1052 (1987) (district court improperly distilled claims down to a one word solution to a problem).

        1. 5.1.1.1

          Les, Les, Les, Les, Les.

          Stop it. Please.

          There are also Federal Circuit cases, even of recent vintage, that also say that ineligible subject matter is to be given no weight in 102/103.

          What do you say to these cases?

          1. 5.1.1.1.1

            I say that under such alleged decisions, the Wright Flyer, which was made of wood, cloth and rope and in which only the “configuration” of the components considered as a whole, was novel, would not have been patent eligible.

            Such a result is absurd.

            Therefore, any such rulings are wrong.

            1. 5.1.1.1.1.1

              Les, you continue to fail to grasp the fundamentals here. Let’s make it simple:

              Idea: A concept without any practical embodiments. Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498, 22 L. Ed. 410 (1874). link to scholar.google.com

              Provide working embodiments, one may claim those, not the idea in the abstract.

              Read the case. The Supreme Court relied on it in multiple recent cases.

              1. 5.1.1.1.1.1.1

                Ned –

                “Idea: A concept without any practical embodiments. ”

                Please read claim 1 above in the article above and then tell me why it does not recite a practicle embodiment.

                1. Les, let me say, again, that the Supreme Court is not applying the law regarding abstract in its traditional manner. They appear to be applying instead Hotel Security, Rubber-Tip Pencil, Funk Bros., and other examples of mixed subject matter cases, where the statutory is mixed with the nonstatutory. Claim is not to the principle or law of nature in the abstract at all (as in Flook or Funk Bros. or Rubber-Tip). Yet the novel aspect of the claim is nonstatutory.

                  To allow such claims would allow the patenting of the nonstatutory, albeit, limited to a specific application.

        1. 5.1.2.1

          Here here. And from the Google judges on the Federal Circuit (and the Google Director at the PTO.)

    1. 5.2

      Les: Notwithstanding the prolixity of the claims, they recite a very simple invention:

      Les, you must realize that any decent patent attorney — or any halfway literate high schooler for that matter — can take just about any simple process and, if encouraged to do so, describe it in a way that makes it seem sooper technical and complex even when there’s nothing at all innovate other than the linguistic gymnastics.

      Try writing out every necessary information processing and other step, eligible or otherwise, that occurs during a simple, ancient process like walking into a store, buying an ice cream cone with a debit card, eating the ice cream and throwing the napkin into a recycling bin. I’m pretty sure I could fill five single spaced pages with that if I wanted to. Is that how we want PTO resources to be spent? Identifying all the prior art for all those steps to the applicant’s satisfaction? And then dealing with secondary factors on top of that? That seems crazy to most people but that’s plainly where we’ve been heading for a long time and the claim at issue here is a quintessential example of that kind of “prolixity.”

      1. 5.2.1

        MPEP 2141.02

        II. DISTILLING THE INVENTION DOWN TO A “GIST” OR “THRUST” OF AN INVENTION DISREGARDS “AS A WHOLE” REQUIREMENT

        Distilling an invention down to the “gist” or “thrust” of an invention disregards the requirement of analyzing the subject matter “as a whole.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (restricting consideration of the claims to a 10% per second rate of stretching of unsintered PTFE and disregarding other limitations resulted in treating claims as though they read differently than allowed); Bausch & Lomb v.Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 447-49, 230 USPQ 416, 419-20 (Fed. Cir. 1986), cert. denied, 484 U.S. 823 (1987) (District court focused on the “concept of forming ridgeless depressions having smooth rounded edges using a laser beam to vaporize the material,” but “disregarded express limitations that the product be an ophthalmic lens formed of a transparent cross-linked polymer and that the laser marks be surrounded by a smooth surface of unsublimated polymer.”). See also Jones v. Hardy, 727 F.2d 1524, 1530, 220 USPQ 1021, 1026 (Fed. Cir. 1984) (“treating the advantage as the invention disregards statutory requirement that the invention be viewed ‘as a whole’”); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1 USPQ2d 1593 (Fed. Cir. 1987), cert. denied, 481 U.S. 1052 (1987) (district court improperly distilled claims down to a one word solution to a problem).

        1. 5.2.1.1

          There’s a huge difference between the claims at issue in those cases, Les, and the claims that are being tanked in these eligibility cases: limitations reciting objective physical structures that were not in the prior art were ignored in the former “gist” cases. That’s not happening in these eligibility cases.

          1. 5.2.1.1.1

            “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]“?”

            I don’t see any requirement that one avoid distilling the invention down to a gist only where ” limitations reciting objective physical structures that were not in the prior art ”

            …and plastic contact lenses were around before 1986:

            “express limitations that the product be an ophthalmic lens formed of a transparent cross-linked polymer and that the laser marks be surrounded by a smooth surface of unsublimated polymer. “

            1. 5.2.1.1.1.1

              plastic contact lenses were around before 1986:

              That’s nice. The claim doesn’t recite “plastic contact lenses”. It recites a more specific structure. Did the patentee admit that the phrase you quoted covered “plastic contact lenses” circa 1986? I’m guessing not, which is the point of the case: for 103 purposes, you can’t ignore structural limitations in a claim absent such an admission, concession or evidence that those structures are old.

              1. 5.2.1.1.1.1.1

                But the judge distilled the present claim down to a gist.

                So, I can distill an ophthalmic lens formed of a transparent cross-linked polymer down to plastic contact lens.

                And “that the laser marks be surrounded by a smooth surface of unsublimated polymer.”

                surely doesn’t matter, ’cause you know…. printed matter doctrine.

                TIC

                1. Les, please let me know when a structurally defined claim to a new machine or composition gets distilled down to an abstract “gist” and declared ineligible as a result. I’ll be right there with you and I’m pretty sure the Supreme Court will be as well.

                  Until then, you seem to be applying the test in a ridiculous manner to prove that the test is ridiculous. I don’t find it convincing.

                2. Your point is then that its OK to ignore the case law and use impermissible “gist” type reasoning for methods because you don’t like that method are eligible for patenting?

    2. 5.3

      Les, I think it must be clear as a bell for a claim to be held invalid under 101 that the technological subject matter of the claims, such as machines, manufactures or compositions, must be notoriously old. Claiming them functionally is a clue.

      Once the technology has been found to be old, the rest is ineligible. It has to be described, that is why the courts summarize it (gist).

      The opinions describe the process the other way around, but the point is that if the eligible subject matter was in any way new, the claims would have passed into 102/103.

      1. 5.3.1

        What?

        The ruling is in regard to two PATENTS. The claims did pass 102/103, and 101, for that matter.

        newness is evaluated under 102.

    3. 5.4

      In other words, according to les, the good judge should totally ignore what the claim is directed directly to and concern himself solely with the word salad constructed to impress him.

  8. 4

    Dennis, I think the Opinion you linked to was for a different issue. Can you please save some of us the trouble of going into PACER and link to the proper Opinion? Thanks.

    1. 4.1

      Seconded, although I found the opinion that did get linked to be interesting as well.

        1. 4.1.1.1

          It was something about Loyalty Conversion wanting an injunction against a bunch of airlines to prevent them from filing suit against them in other non-EDTX courts, because JetBlue had filed suit against Loyalty Conversion in NY alleging that they violated the ToS of JetBlue’s loyalty program website in order to gather evidence of infringement. The court denied the injunction mostly because there was no indication that the other airlines were planning on filing any suits anywhere else, and because JetBlue’s NY suit didn’t meet some criteria of sufficient overlap with this suit that Bryson explained and considered in greater detail.

  9. 3

    So what’s going to happen to the art units at the USPTO that examine this kind of app? We’ll have a flurry of 101 rejections and clear everything out–then everybody will get laid off, except for one or two examiners who will remain to reject any new apps that still get filed in this domain?

    1. 3.1

      Really hard to say how this is going to play out. I think that a case will go up to the SCOTUS that will be reversed and held eligible under 101.

      Note that all of these cases they have done so far are order 1 cases in that there really isn’t much else but the application of their “abstract idea”. These all should have fallen under 103. But, what will they do if say this case had more complexity to it. My guess is the fed. Cir. is going to extend 101 beyond what the SCOTUS will stand for and then they will be reversed. So, we aren’t really going to know how far this extends for a few more years.

      1. 3.1.1

        That’s what I’ve noticed too. The cases currently being cleared out have serious 103 issues. We’ll have to wait for one that doesn’t. Although that Bingo case could make a go of it (show me the art).

        1. 3.1.1.1

          That’s what I’ve noticed too. The cases currently being cleared out have serious 103 issues. We’ll have to wait for one that doesn’t.

          There are vast numbers of cases with eligibiility problems that have “serious 103 issues” as well as “serious 112 issues” because in most cases the applicant is trying to hide the 103 failings with verbiage that simply recites with excessive patent legalese what the prior art already does and/or layers ineligible abstractions to top of pre-existing technology.

          What’s been happening for years with these computer-implemented business methods is the equivalent of someone inventing a dumptruck followed by hundreds of corporate and patent attorneys “innovating” claims to methods of using the dumptruck to carry gravel “wherein the gravel was purchased according to an agreement, wherein said agreement was blah blah blah blah”.

          It’s long past time to get that stuff out of the system, and get it out permanently.

          1. 3.1.1.1.1

            I didn’t read this, but I’ll just go ahead and assume that it’s a lot of tripe that fails to show me the art that makes the Bingo invention old. Right?

      2. 3.1.2

        This really gets to the heart of the problem. Investment decisions are next to impossible amid this kind of uncertainty.

        1. 3.1.2.1

          Investment decisions are next to impossible amid this kind of uncertainty.

          In fact, if you don’t wish to gamble on the uncertainty of the future eligibility of functionally-claimed computer-implemented business method patent claims, it’s entirely possible to invest in all sorts of other patent claims that do not suffer from the issues identified by Judge Bryson. I’m thinking of claims to new machines and compositions where those machines and compositions are described structurally, rather than functionally. People do still desire such things and — news flash! — they always will.

          1. 3.1.2.1.1

            I’m thinking of claims to new machines and compositions where those machines and compositions are described structurally, rather than functionally.
            Ah yes … the hallmark of the old economy. However, in case you haven’t noticed, the new economy involves computers, software, and the internet. People want to invest in THAT.

            An improved stapler doohickey or a widget for heating molten steel is so 1900s.

            1. 3.1.2.1.1.1

              in case you haven’t noticed, the new economy involves computers, software, and the internet.

              In case you haven’t noticed, all that stuff is just as ancient from a patent law perspective as a “stapler”.

              What’s happening now is equivalent to Morse inventing the telegraph followed by a massive rush by patent attorneys to claim methods of using the telegraph to communicate “an agreement regarding the sale of slaves” or “to confirm an order of horseshoes, wherein said horseshoes were transported by riverboat”.

              People want to invest in [computers, software, and the internet.]

              Then people should go ahead and do that. There’s no law preventing them from doing so and I’m not aware of any law being proposed that would prevent people from making such investments. Company makes computers? Go right ahead and invest in that company so it has an edge over its competitors. Company makes software? Go right ahead and invest in that company so it has an edge over its competitors. Company has a website? Go right ahead and invest in that company so it has an edge over its competitors.

              What’s the problem exactly? Not enough companies to invest in? Not enough gambling entertainment for investors? Or is it possible that a particular form of gambling presenting very little risk to the investor but great risk to the public is being made less palatable to a certain type of investor?

              1. 3.1.2.1.1.1.1

                In case you haven’t noticed, all that stuff is just as ancient from a patent law perspective as a “stapler”.
                LOL … still having trouble figuring out the difference between 101 and 102/103.

                This stapler, 8,820,604, got issued last week. Even “ancient” things can be improved upon.

                a massive rush by patent attorneys to claim methods of using the telegraph to communicate “an agreement regarding the sale of slaves” or “to confirm an order of horseshoes, wherein said horseshoes were transported by riverboat”.
                Deal with straw man arguments much? Oh wait, you do — LOL.

                What’s the problem exactly?
                Not particularly astute when it comes to business, are you? The greatest product in the world isn’t particular valuable if your competitor can knock it off with relative ease. As such, instead of competing on technology, you are competing on price. Thus, we’ll have investors looking to invest in the best technology copiers — not the best technology creators. Who should we be incentivizing — copiers or creators?

                great risk to the public
                The great risk to the public is when the creators decide that copying is easier (and more lucrative) than creating. Less new idea creation = bad for the public.

                I guess you are in the camp that believes that the public is entitled to get things for free. Sounds like communism to me.

    2. 3.2

      The canary is probably hiring at research labs. Probably –my guess–is that they will be the first to lose their jobs. And the other canary is public disclosures. Now companies pretty much allow software developers to discuss their stuff with magazines and on the web. I’ll bet there are going to be edicts that come down that there is no more discussion of anything to anyone at anytime never ever or else you lose your job.

      1. 3.2.1

        Yeah, “corporate lawyer Sean McGhie and patent attorney Brian Buchheit” are going to close down their software research lab. That will be a sad day for innovation.

        Since software companies don’t use patents for market advantage and don’t diffuse ideas in patents and don’t get ideas from patents, there won’t be any loss to the industry from mass cancellation of every software related patent. The only use for them in the innovative parts of the industry is defense. It’s trolls and scammers like the plaintiffs here that use software patents.

        1. 3.2.1.1

          Owen, what you say does not bear up to an historical analysis.

          Microsoft did not start to hire researchers until patents. Everything was a secret in software until patents. The problem is copying Owen.

          I know you have strong opinions that set deep into you ’cause you think you know what you are talking about. But I was a software engineer before patents. I know what it was it like and don’t see any reason it won’t go back to that.

          Everything was a secret. I had interviews coming out of one of the top schools in computer science with many companies that wouldn’t even tell me what they did. And, employment contracts were incredibly restrictive. And, there was a giant focus on prevent decompiling including actually including encryption chips on the processor.

          I see no reason why it won’t go back to that. All it will take is a few research labs to have their software copied for almost nothing and they will go out of business. Watch.

          1. 3.2.1.1.1

            This is the fallacy of analyzing only the bad part of patents and not understanding the framework by which they have set up innovation.

            You have no idea how bad it is going to get. You want a job as a software engineer with a big company? In 5 years you will sign away your right to say anything about anything you do and your right to work in the field for years after you leave the company.

            Watch. Just remember that I lived through this already.

            1. 3.2.1.1.1.1

              And it will be MUCH worse this time as employee rights are much diminished and because the government research projects are less relevant than they used to be.

        2. 3.2.1.2

          FYI, I work with a bunch of independent coding businesses. You dream it up, they wireframe it and make it work.

          This canard of the inventors not coming from a CS background is not persuasive.

          1. 3.2.1.2.1

            This canard of the inventors not coming from a CS background is not persuasive.

            Can you explain why you believe this fact is a “canard”? Would it still remain a “canard” in your mind if most inventors of computer-implemented methods turned out to be patent attorneys with little or no understanding of how computers work?

            I think for most of us that sort of scenario — or a trend towards it — is like the canary in the coal mine lying down in the cage and taking a nap. It’s a sign of worse things to come.

            I work with a bunch of independent coding businesses. You dream it up, they wireframe it and make it work.

            Question 1: If I dream up an undescribed chemical with a specific desired function and I tell some lab to “fulfill” my dream, am I the inventor of that chemical?

            Question 2: Is your job to evaluate the software written by these coding businesses and make sure that no part of that code infringes any patent claim? If so, how long does that freedom-to-operate analysis typically take for a complicated piece of software that runs on one of the popular operating systems? If infringement of some patent identified after the code is written, is the guy who dreamed up the functionality and hired the coding business liable for inducement?

            1. 3.2.1.2.1.1

              Would it still remain a “canard” in your mind if most inventors of computer-implemented methods turned out to be patent attorneys with little or no understanding of how computers work?
              Work with straw man much? Oh wait, you do.

              Question 1: If I dream up an undescribed chemical with a specific desired function and I tell some lab to “fulfill” my dream, am I the inventor of that chemical?
              Entirely different skill level needed to reduce to practice … bad analogy, but you specialize in those.

              If so, how long does that freedom-to-operate analysis typically take for a complicated piece of software that runs on one of the popular operating systems
              Windows 8 (just an operating system) has around 50 million lines of code (plus or minus 10 million). How long do you think it will take? Sophisticated software (as a class) is probably the most technologically complex things human beings produce, and the computer it runs is similarly complex.

              With this in mind, it would be realistically impossible to do a complete freedom-to-practice analysis on any type of really sophisticated software.

              However, despite all the patents on all these inventions, the US software industry is quite vibrant and the envy of the world. I wonder why?

                1. The manufacture of the devices is more complex than the software
                  They are both incredibly complex and neither could exist without the other.

              1. 3.2.1.2.1.1.2

                it would be realistically impossible to do a complete freedom-to-practice analysis on any type of really sophisticated software.

                Another fascinating admission.

                the US software industry is quite vibrant and the envy of the world. I wonder why

                How about the vibrant patent trolling industry in the US? Is that the “envy of the world” as well?

                Work with straw man much?

                It’s not a “strawman” to note that patent attorney “innovators” thrive in certain art units and not others.

                Entirely different skill level needed to reduce to practice

                Indeed. Thanks for admitting that.

                1. Another fascinating admission.
                  Perhaps fascinating to you but not relevant to any point regarding statutory subject matter.

                  How about the vibrant patent trolling industry in the US? Is that the “envy of the world” as well?
                  You don’t find a lot of parasites in Antarctica. The problem with treating parasites is that you don’t want to have the treatment to be so aggressive that it kills (or severely harms) the host.

                  It’s not a “strawman” to note that patent attorney “innovators” thrive in certain art units and not others.
                  Please name art units and attorney-inventors. BTW — I won’t hold my breath for answer.

                  Thanks for admitting that.
                  Different is different — not necessarily better. One can be accomplished with skill and applying the skill to a task. The other can be accomplished with skill and quite a bit of luck.

            2. 3.2.1.2.1.2

              MM your comments as a whole on this subject over the past year would make a great little e-book about patents for non-lawyers in the technology space. You need a Boswell ;-)

              1. 3.2.1.2.1.2.1

                Thanks, martin.

                I’ve been at it a long time, waiting for the day when the courts step back and reevaluate some of their earlier short-sighted attempts to offer powerful protection and rewards to undeserving people at the expense of the public interest. That day is here, I think.

                And there’s more to come.

    3. 3.3

      what’s going to happen to the art units at the USPTO that examine this kind of app?

      There’s an art unit for loyalty point processing?

      We’ll have a flurry of 101 rejections and clear everything out–then everybody will get laid off, except for one or two examiners who will remain to reject any new apps that still get filed in this domain?

      It’s going to take a little while but, yes, something like that may happen eventually. Some Examiners may be assigned to other art units, I suppose.

    4. 3.4

      Commie, I suspect that those most efficient in clearing out the deadwood would be retained. Those that have the temerity to allow any cases will not, but instead be laid off to be hired by major firms and feted with parties and rewards for giving their best.

    5. 3.5

      So what’s going to happen to the art units at the USPTO that examine this kind of app?

      The USPTO frequently shuffles around patent examiners and SPEs. They had the technical credentials to get hired, have practiced with sufficient competency to remain at the PTO, and have accrued a chunk of training and experience. Should be easy to find a position for them in another art unit.

      1. 3.5.1

        Should be easy to find a position for them in another art unit.
        LOL — I guess expertise in a particular technology is overrated.

  10. 2

    So, it continues with judges uses 101 as 103 or as Lemley put it the bad vs. good test the SCOTUS has given them to dispose of cases at the pleading stage.

    1. 2.1

      One thing I’ll say is that the judges are actually dismissing these suits about the way MM does. He may as well have written, “Junk claims. Dismissed.”

      1. 2.1.1

        Well at this point the things to watch are: patent filings, employment contracts, and research job hiring.

        My guess is that everything will go back to the way it was in 1985. Everything was a secret and companies developed proprietary technology and didn’t share except when it benefited them (and then only to the extent necessary to benefit them.)

        My prediction: the next dark age is coming for information processing. It will be reversed within 15 years.

        1. 2.1.1.1

          But, likely by that time we will no longer be the software leaders anymore. My guess is the Korea or China will be the leaders in software.

          1. 2.1.1.1.1

            Because all the coding tools are gonna suddenly be written in Chinese or Korean….

            Owen had it exactly right NWPA. I’m actually in the business application software business and I’m certain that patents mean nothing to innovation in our space.

            Of course, anything bad that happens henceforth in the world will be because of the 101 jurisprudence. If there is ever a tech recession again, it will be certainly a result of the patent grift being taken away.

            Of course you realize that if there is now a tech boom, we will know why…..

            1. 2.1.1.1.1.1

              You only say that because you’re a coder and not a businessman. Believe me, the investors I work with to fund your operation CARE about the patent rights.

              1. 2.1.1.1.1.1.1

                the investors I work with to fund your operation care about the patent rights.

                Of course they do because it potentially reduces the amount of money they lose if the little people they gamble on fail to deliver and successfully market an actual product.

                Correct me if I’m wrong, but didn’t some investor/attorney once attempt to claim that butt-covering scheme?

                1. NWPA you just assume MM they invented nothing and yet got patents.

                  I “assume”? Downthread you admit that “all” of these 101 cases are also “fairly clear 103 cases.”

                  Which is it?

              2. 2.1.1.1.1.1.2

                the investors I work with to fund your operation care about the patent rights.

                As a reminder, there is nothing in the Constitution suggesting that the purpose of the patent act is to protect the wallets of non-innovative billionaires who gamble on the enforceability of particular classes of patents.

                Generally speaking, when such people are reflexively given whatever they ask for, the overwhelming majority of non-wealthy people usually end up paying for that decision, one way or another.

                1. What a red herring. No one said it was to protect the money but to get the money to invest in the innovation. To take the risk for the hoped for reward.

                  You have no shame MM.

                2. No one said it was to protect the money but to get the money to invest in the innovation. To take the risk for the hoped for reward.

                  But again you’re focusing on the investors, and not any inventor of any technology falling within the useful arts. The inventor innovates. What “risk” was assumed by, e.g., a corporate attorney who dreams up a patent claim about executing an agreement “over the Internet”? How much “risk” does that take? It doesn’t cost anything except a couple minutes of time, maybe a few hours if you want to whip out an application. Where’s the “risk”?

                3. MM I don’t know what imaginary world you live in, but the world I lived in as software developer on the cutting edge of technology was one where a lot money was needed to fuel the research. Expensive computers and expensive researchers with Ph.D.’s and M.S.’s degrees.

                  And a lot of development time. I think there are some sham patents. Maybe this is one of them. But that isn’t at the heart of innovation. They are people that are gaming the system. Not the core of what is going to be hurt.

                  And, let’s fact it MM, isn’t the real problem examination? Why in the world have any of these 101 cases issued? They are all fairly clear 103 cases. And yet they have been used to build jurisprudence for as Lemley put it: a good vs. bad test before considering anything else.

                4. NWPA: I lived in as software developer on the cutting edge of technology was one where a lot money was needed to fuel the research….

                  And a lot of development time.

                  Okay, but now we apparently live in “bad joke ahead’s” world where you dream up the idea and go some coding firm and they crank it out for you.

                  They are people that are gaming the system. Not the core of what is going to be hurt.

                  The core of what is being hurt is the patent system. What we’re seeing getting tanked now is just the tip of an enormous iceberg and that iceberg is nothing compared to what we’d be facing if, for example, the Supreme Court had held that you could protect information itself with a patent claim merely by reciting an old data gathering step prior to the step of thinking about information or receiving/transmiting/storing it “on a computer.” The courts are looking ahead for once instead of putting their blinders on and thinking only about the feelings of the patentees who are “playing the game.”

                  let’s fact it MM, isn’t the real problem examination?

                  The “real problem” is that it’s impossible to properly examine these sorts of things within the existing framework. We could start over from scratch and imagine ways to, e.g., “promote” the discovery of information by allowing people who disclose the information to have exclusive rights to it. But nobody except for a tiny, tiny, tiny fraction of already wealthy people wants a system like that.

                  Why in the world have any of these 101 cases issued? They are all fairly clear 103 cases.

                  Not everyone agrees with you about that. Moreover, while I agree that there are good obviousnesss arguments that could be made in many of these cases, they are the sort of arguments that people who habitually bash the PTO will mock and scorn because, like the claims themselves, they will be based more in logic and common sense than finding the non-existent prior art references that expressly teach the typically abstract “limitations” (e.g., “wherein the data is bingo data”) recited in the claim.

              3. 2.1.1.1.1.1.3

                Sorry, I’m a company principal and in the hundreds of discussions I have had with private equity in different contexts over the years, the question of patents only arises as a potential liability.

                Who thinks investors like to go into business that are nearly assured of being sued on what should be, and will be, invalid patents when a winning 103 defense is MILLION BUCKS and the prize for winning a case is losing a million bucks?

                Here is a hint: they would rather take their chances without patents. Ask some – love to see some posts here from those mythical investors who non-defensively love software patents…

                1. Martin, ask the man on the street whether the government should be issuing patents on so-called inventions that do not involve any new technology, and you know what the answer will be.

                  Ask the man in the street whether one should obtain a patent on an idea or whether the patent should be issued to one who invents a way of implementing the idea. Give the Star Trek transporter as an example of an idea. We know the answer.

                  Ask a many patent lawyer both these questions and they will give you an incomprehensible answer and start calling you names and questioning your intellect. What does that say about these so-called patent professionals?

            2. 2.1.1.1.1.2

              Martin: Of course you realize that if there is now a tech boom, we will know why…..

              Indeed.

              Wake me up when the stock market starts tanking in response to these well-reasoned eligibility decisions.

              It’s not going to happen. But a lot of the same corporate and patent attorneys who “innovated” invalid claims like this are going to end up making money because they saw the writing on the wall and adjusted their stock portolios or sold their invalid patents when the time was ripe.

              1. 2.1.1.1.1.2.1

                “Of course you realize that if there is now a tech boom, we will know why…..”

                I will lol my arse off.

          2. 2.1.1.1.2

            My guess is that everything will go back to the way it was in 1985. Everything was a secret and companies developed proprietary technology and didn’t share except when it benefited them

            Pretty sure that’s what is happening now in the US.

            But, likely by that time we will no longer be the software leaders anymore. My guess is the Korea or China will be the leaders in software.

            We won’t be the leaders in software because nobody here will disclose? Oh no, then we will surely be passed up! If only we could fool the Korean or Chinese governments into having some sort of publicly accessible repository of their innovations. Then the only thing we would need in order to keep up would be the ability to translate.

            1. 2.1.1.1.2.1

              You really have no clue Random and yet you feel the need to post lengthy responses to almost everything I post.

              Random writes>>Pretty sure that’s what is happening now in the US.

              And bizarrely you don’t seem concerned about this which indicates a complete ignorance of innovation in the US.

              1. 2.1.1.1.2.1.1

                Pretty sure that’s what is happening now in the US.

                And bizarrely you don’t seem concerned about this which indicates a complete ignorance of innovation in the US.

                I’m saying its happening right now and innovation is doing just fine. The only thing we’re doing is awarding monopolies to people who can afford to pay for them, we’re not rewarding innovation in the software sphere.

                1. Random that isn’t really true. Factually things are pretty open right now. They have been turning more closed recently, but we haven’t really seen how that will play out yet.

                  But, things are wide open right now compared with how they were in the mid 1980’s. Not even in the same ball park.

              2. 2.1.1.1.2.1.2

                NWPA: bizarrely you don’t seem concerned about this which indicates a complete ignorance of innovation in the US.

                People can and almost always do disagree about software patents without one of them being “completely ignorant about innovation in the US”.

                It’s not difficult to find innovative programmers who are opposed to the patenting of software. Or is your position that all such programmers must necessarily be non-innovative as well?

            2. 2.1.1.1.2.2

              If only we could fool the Korean or Chinese governments into having some sort of publicly accessible repository of their innovations. Then the only thing we would need in order to keep up would be the ability to translate.

              LOL. Nice work, Random.

              1. 2.1.1.1.2.2.1

                yea, they do- the products themselves.

                What software does is revealed when you, you know, use it.

                All of these functional claims say nothing about the code, which is of course copyrighted anyway.

        2. 2.1.1.2

          My guess is that everything will go back to the way it was in 1985. Everything was a secret and companies developed proprietary technology and didn’t share except when it benefited them (and then only to the extent necessary to benefit them.)

          Startups will suffer the worst. If your business plan specifies a service or algorithm with technical value but that is reverse-engineerable or can be substituted with a different algorithm, no investor will bet on it.

          1. 2.1.1.2.1

            David, “f your business plan specifies a service or algorithm with technical value….”

            Huh. Technical? Can you give us one example where the courts have declared invalid under 101 any claim to technology, where technical subject matter is at least improved? You have to read Dyk’s dissent in Bilski. He points out that there are no such cases.

            1. 2.1.1.2.1.1

              Can you give us one example where the courts have declared invalid under 101 any claim to technology, where technical subject matter is at least improved?

              Well, technically the Myriad claims fit that description but that’s a distinct ball of wax from the computer-implemented stuff we’re talking about.

    2. 2.2

      Night, if all the eligible subject matter is old, what is the word to describe the novel subject matter?

      Word please.

  11. 1

    From “the name of the game is the claim” to “the reason you’ll be pist is ’cause we’ve reduced the game to the gist”

    “Notwithstanding the prolixity of the claims, they recite a very simple invention . . .”

Comments are closed.