By Dennis Crouch
In buySAFE v. Google (Fed. Cir. 2014), the Federal Circuit has found the patentee’s computer-based-transaction patent to be invalid as an abstract idea lacking subject matter eligibility. The decision by Judge Taranto and Joined by Judge Hughes is somewhat unremarkable and the holding falls easily within the framework created by Alice Corp and Mayo. At the same time, the Federal Circuit offers several nuggets that may provide broader fodder for future eligibility challenges.
In its recent software patent decision of Alice Corp., the Supreme Court identified its underlying policy motivation for denying patent rights to abstract ideas, laws of nature, and natural phenomenon. The high court’s concern is “that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014), quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012).
Bright Line Test as a Proxy for the Policy Goals: In Mayo, the Supreme Court explained that the exceptions to patentability (law of nature, abstract idea, product of nature) serve as proxies “for the underlying building-block concern.” Although admittedly an inexact substitute for the particular policy concern, the named exceptions are “somewhat more easily administered” and also have the benefit of substantial tradition. By using a proxy for its underlying concern, the Supreme Court seems ready to admit that some excluded inventions will not have raised substantial building-block concerns, however, the court concludes that judges simply “are not institutionally well suited to making the kinds of judgments needed to distinguish between” them. Mayo. Thus, the result is a “bright line” exclusion against abstract ideas, laws of nature, mathematical formulae, and natural phenomenon.
Narrowness of Idea Cannot be Judged: Of particular importance here, although the breadth of an abstract idea is relevant to its impact on future innovation, the court here is clear that the breadth or narrowness is not relevant to the application of the exclusionary rule itself. Rather, the exclusionary rule applies “even if the particular . . . abstract idea at issue is narrow.”
The Process of Determining Eligibility: The process then for determining subject matter eligibility is: (1) determine whether the patent claim is “directed to subject matter in one of the three excluded categories;” and (2) if so, determine whether “the additional elements” of the claim supply an “inventive concept” that is “significantly more than” the ineligible matter itself. In explaining this second step, the Federal Circuit expounded that the inventive concept must be “in the physical realm of things and acts – a ‘new and useful application’ of the ineligible matter in the physical realm.” Further, merely requiring a generic computer implementation of an ineligible idea does not move the invention “into section 101 eligibility territory.”
Physicality requirement?: You might query how the Federal Circuit’s physicality requirement comports with Bilski v. Kappos, 561 U.S. 593 (2010) (rejecting the machine-or-transformation test as determinative). The Federal Circuit actually takes an odd interpretation of Bilski. The court here suggests that the Supreme Court rule on business method patents is that they are certainly directed to abstract ideas (step 1 above), and that they are only patentable with additional inventive concepts tied to the physical realm.
What is an Abstract Idea?: Up to now, the courts have avoided providing any solid definition for the abstract idea test. And here, the Federal Circuit was also able to duck that issue because the particular claims at issue are somewhat parallel to those seen in Bilski and Alice. Namely, the claims focus on arrangement involving contractual relations between parties and involving “a fundamental economic practice long prevalent in our system of commerce.”
In the present case, the patented “transaction performance guarantee” is, according to the court here “beyond question of ancient lineage.” And, the patentee’s addition of the computer and computer program in generic terms were insufficient to meet the eligibility test outlined above.
Invalidity affirmed.
I should note that the court did not discuss the presumption of validity or the standard of evidence applied to the underlying elements of the Alice Corp eligibility test.
= = = =
Claim 1 of US Patent No. 7,644,019:
A method, comprising:
receiving, by at least one computer application program running on a computer of a safe transaction service provider, a request from a first party for obtaining a transaction performance guaranty service with respect to an online commercial transaction following closing of the online commercial transaction;
processing, by at least one computer application program running on the safe transaction service provider computer, the request by underwriting the first party in order to provide the transaction performance guaranty service to the first party,
wherein the computer of the safe transaction service provider offers, via a computer network, the transaction performance guaranty service that binds a transaction performance guaranty to the online commercial transaction involving the first party to guarantee the performance of the first party following closing of the online commercial transaction.
= = = = =
An interesting element of this particular decision is that Judge Rader was originally a member of the panel but lost his vote when he retired in June 2014. Most certainly Judge Rader’s presence on the panel would have impacted the language used to reach these results.
I am not a lawyer yet have been following Vringo v. Google. What are your ideas on this case? Also, I see much discussion on what should/shouldn’t be patentable but seemingly no discussion on how to protect/reward ideas that lead to great improvements/efficiencies, etc… Specifically, Vringo led Google to enable billions of ad revenues to be realized yet, it was by software algorithms. Google acknowledges Vringo’s contribution but claims it was obvious. So, how should someone be properly compensated for enabling great gains to be had by others when those gains came from software innovation?
The word “abstract” can be defined as “existing in thought or as an idea but not having a physical or concrete existence.” Synonyms include “theoretical” or conceptual”. In a patent context then, an abstract idea is a “mere idea”, that is, one that is non-enabling, e.g. “catching mice” or “flying to the moon”. A substantive or concrete idea is therefore one that is enabling, that describes, to continue on with the examples, an apparatus for catching mice or a system for flying to the moon. I submit that the claims in the Alice and Bilski describe substantive ideas, and that looks to be the case for the Walker, Genetic, Cote and Jung cases as well. My criticism of the SCOTUS holdings is that they are using Sec. 101 as a surrogate for what should have been, and I argue was defacto, a Sec. 102 analysis. Now, it may be true that these cases all describe methods/ideas that are notoriously well known in the prior art, and thus do not describe patentable subject matter, but that does not somehow transform them into abstract ideas for exclusion as nonpatentable subject matter under Sec. 101. First of all, how and why should we engage in what seems to be a useless exercise in distinguishing between when an idea is so well known in the prior art that despite the fact that it includes specific teachings or enablement it is nonetheless “abstract” and when it is not that well known and not abstract, when this is clearly a Sec. 102 inquiry? This approach hopelessly confuses the purpose of having, and the differences between, Sec.’s 101 and 102. The further problem then is that we will be expanding sec. 101 well beyond the reach that it was intended to have. That section was written broadly to include “any new and useful process, machine, manufacture, or composition of matter…” (Emphasis strongly supplied.) Sec. 101 was simply not intended to exclude enabling ideas or methods regardless of how well known they may be, that is the purpose of Sec. 102. That said, is the foregoing however merely a distinction without a difference in the sense that maybe it does not matter if a patent is found invalid or a technology unpatentable under Sec.’s 101 or 102, as it is just as dead either way? I would urge caution. A needless expansion of the scope of Sec. 101, at the very least, wastes attorney, court and examiner time and hence increases client’s costs by having to debate whether or not an idea is abstract even though it includes enabling subject matter, as compared to simply defining an idea as being abstract only when in contains no enabling subject matter. At worst, courts, juries and examiners will inevitably make mistakes and preclude 102 analysis of an invention that is not only not an abstract idea but one that was correctly issued as a patent or that would have been found patentable had the 102 analysis been allowed to proceed rather than being rejected under Sec. 101. Thus, rather than promoting “the progress of Science useful Arts” under Article I, Sec. 8 of our Constitution, we may be accomplishing just the opposite. It should also be pointed out that in addition to Sec. 102 we of course have Sec.’s 103 and 112 as further tools to guard against the issuance or validation of patents on undeserving technology. Thus, I would generally agree with the SCOTUS that taking a method that is not novel and merely accomplishing it with a general purpose computer is an obvious expedient. However, history teaches that “black letter law” is a concept that is dubious at best when applied to the full spectrum of human interaction, and especially, I would argue, when we attempt to apply such an approach in the context of the complexity of human invention. Thus, I think it would even be a mistake to assume that every application of a general purpose computer to a “known” system would be obvious. It could very well be that capturing a method in a software context is not merely as straight forward as it may appear on the surface, thus we would be making a mistake to prejudice our approach to the issue with the assumption that it is. I understand that what I suggest would reduce the current scope of what is not patentable under Sec. 101, but, as I contend herein, that statute was and is not supposed to be far reaching in its exclusionary ability. Moreover, it is the function of Sec.’s 102 and 103 primarily to determine whether or not an invention is patentable or used to determine if an invention was properly protected with an issued patent. Thus, I think the impact of the Bilski and Alice case holdings can and should be diminished and that could be accomplished if courts and examiners are reticent to find ideas as being abstract where they contain enabling/concrete subject matter and then move forward and proceed with a 102/103 analysis.
Sten, I agree that the Supreme Court is not using the term “abstract” the way it was used in Leroy v. Tatham or O’Reilly v. Morse, or in its ordinary sense. They are using it to describe non statutory subject matter in the context of a claim that mixes both the statutory and non statutory. In such situations, the new, albeit, nonstatutory, subject matter historically (Hotel Security and its progeny, also Funk Bros.) cannot be the invention. In mixed subject matter cases, the invention still must be in the statutory parts.
The reason we are in the fix we are in is because Stevens, who argued in Bilski for restoration of Hotel Security that had not been followed by the Federal Circuit in State Street Bank, did not gain a majority. Still Breyer, who was with Stevens in Bilski, appears to have convinced the court that its analysis is correct. Thus we have Prometheus and Alice that discounts, i.e., gives no weight to, old, conventional, but eligible subject matter in the 101 analysis. In other cases, such as printed matter, involving 102/103, the courts give the non statutory subject matter no weight.
“I should note that the court did not discuss the presumption of validity or the standard of evidence applied to the underlying elements of the Alice Corp eligibility test.”
Well Dennis, as you noted in your February 12, 2013 post, “[s]ubject matter eligibility is a question of law and is normally based on very few factual determinations.”
What are the factual determinations of the “underlying elements of the Alice Corp eligibility test”?
What are the factual determinations of the “underlying elements of the Alice Corp eligibility test”
Does the claim implicate 101 (e.g., is there a recitation in the claim of subject matter that would be ineligible if the other elements in the claim weren’t present; e.g., does the claim refer to absractions such as legal status or other intangible relationships between people or objects)?
Does the claim recite eligible subject matter that would be patentable on its own terms (novel structural elements, described in objective structural terms) that would rescue the claim, or does the claim merely recite old conventional informatino processing devices used for their intended purpose (i.e., processing information)?
Those are some examples of the factual determinations.
“Does the claim implicate 101”
UM, are there any examples of a claim that does not implicate 101? any?
Bueller…?
“…on its own terms” um, that would be a NO – that’s a misrepresentation and anti-Diehr non-claims as a whole approach. The Court still has not eliminated that, couching the analysis (currently) in a “look at both the individual elements and the claim as a whole.”
Of course, that step is rather meaningless – as you probably notice – when you apply the “”Gist/Abstract” sword and go ahead and ignore claim elements anyway in getting to the “gist.”
“Not institutionally well suited to making the kinds of judgments needed to distinguish between” them” is the essential reason software patents are an absurdity. Reasonable minds can disagree about expressions made in languages, which is what software is, math or no math. Patents are for THINGS.
May this river of 101 invalidity continue until software patent assertion is no more, and software patent prosecution is seen as a waste of time. Nothing will change in the real economy as a result.
Absolutely agreement here, Martin.
It’s only a matter of time.
I am surprised by the complete lack of any attempt at finding a practical, coherent middle-ground proposed by any proponents of functional-claiming.
Maybe they believe that there isn’t anyway. That’s a reasonable belief, I think.
Neverthless, it’d be nice if Dennis could dig up a thoughtful, articulate guest commenter who has given a lot of thought to a practical scheme that might satisfy the concerns of both of the warring factions, at least for the short term. Surely there must be someone out there on the pro-software patent side who recognizes that information-processing presents unique issues and who isn’t content to simply issue silly threats about an imaginary inevitable economic collapse.
I am surprised by the complete lack of any attempt at finding a practical, coherent middle-ground proposed by any proponents of functional-claiming.
Maybe they believe that there isn’t anyway. That’s a reasonable belief, I think.
Or maybe they believe that any attempt to actually discuss the issues would be overwhelmed by the silly and repetitive noise that abounds here. That’s another reasonable belief, I think.
Mr. Snyder has previously admitted knowing nothing about the law – and his posts sound in rants of pure anti-software rhetoric.
He toned down his posts for awhile – coincidentally when my rebukes on his beliefs were coupled with an admonition for him to make sure that his lawyer had informed consent in his representation (it was doubtful that informed consent was present given how off-base Mr. Snyder’s rants were).
We are now seeing a return to that same off-base rhetoric.
Either Mr. Snyder is slipping up and being dishonest about material aspects of the law as he understands them – or his lawyer still is operating without informed consent.
Neither situation is exactly tenable, is it Mr. Snyder?
As for Malcolm jumping in and joining the rant of one so off-base, that surely is his right to his opinion, and if there were no ethical constraints on a lawyer in their advocacy – and make no mistake that Malcolm is engaged in advocacy – their would be no issue with “opinions.” But opinions from those who profess to be lawyers do have constraints, and as many (including non-lawyers) note – they turn to this forum to see lawyers talking about the law – and clearly the oaths we take and the ethical obligations we place on ourselves apply here.
If we are going to “clean this place up” – this unethical advocacy is a much better place to start. N’est ce pa?
anon, you are intolerable.
Intolerable is a blessing and a curse – a curse to those who find inconvenient what they deem to be intolerable.
It is no surprise at all that you and others like you (rad that as having certain views on the law) continue to ge nerate this fake umbrage.
Such is a shallow and easily seen threw rhetorical t001.
Stop playing such games.
Mr. Snyder,
Software is a thing. It is a manufacture made by man with the express purpose of being a machine component.
That is the definition of software – it does not exist apart from the reason it is made.
There is no example of software that has been made that has been made to NOT be used as a machine component. Such is an impossibility.
Kindly stick to reality when discussing the topic here.
Thanks.
I clearly know more than nothing about patent law anon or I would not be interested in the ins and outs of the MoT test or any of the context needed to even understand the question. You can pretend that what you do is so complex and demanding that non-lawyers can’t gain standing to participate in discussions about it, but you are simply wrong.
To your wrongness about software: software is a set of instructions with which to operate a machine. The machine should be patent eligible if there are novel structures involved.
Novel instructions should not be patent eligible for the same reason that any other sets of instructions are not patent eligible.
Finally your theory on my attorney’s informed consent is laughable; as in, if you ever tried to introduce that into a proceeding in the real-world, you would be actually laughed at.
The standards for competence in a legal sense are very low- I’m sure I manage to clear that bar. You on the other hand? mmmmmmmmm
Pretend complex….?
That’s a pretty strawman. The comment about your knowledge of law stems from your very own statements.
I do hope that you have learned something of the law since you first began your rants here. If you recall, my advice to you was to learn what you were ranting about, because your rants were filled with clear legal errors.
I offer no such “you must be a lawyer” to converse standard. I cannot see where you are getting that absurdity from. On the other hand, I am sure that you will agree that making known false statements – be though statements ones of law or ones of fact should not be tolerated, right?
Or do you think making known false statements is a good thing, if those known false statements advance an agenda?
I certainly hope that your attorney does not share your disdain of informed consent.
That you think such a laughing matter only highlights how little you do understand of law. You think that you meet a bar of competence while you want to glorify yourself in ignorance speaks more against your viewpoints than anything anyone could ever type.
Martin, may I politely suggest that the only way to deal with anon is to ignore him.
One can perform a new (and patentable) method with old structure.
Indeed that is possible.
Getting back to patent law, you can even claim certain such methods and some of them will be eligible.
Of course, the second half of my comment where that issue was addressed was deleted by your li’l buddy. Not my problem.
“ was deleted by your li’l buddy.”
Pretty sure the only person who can delete posts is Prof. Crouch.
As to any claim to an item, are you ready (yet) Malcolm to discuss inherency and how a claim to an item cannot cover that item if the item it changed so that it now has a new capability?
You know, the oft-discredited “House/Morse” fallacy that you still insist on using in your advocacy here?
Pretty sure the only person who can delete posts is Prof. Crouch.
I wasn’t referring to a deleted post.
Once again, Dennis: is this the level of discourse you’re looking for? If not, then you know what to do.
Prof. Crouch has already indicated a desire – but that desire does not match with your statement of “intellectual honesty is not required on a blog”
Feel free to change your ways at any time Malcolm.
Let’s make yet another attempt to bring the allegedly “confused” class of 101-deniers back to reality.
A fine example of the confusion may be found downthread when a relentlessly “confused” commenter writes:
even being in one of the statutory categories is meaningless under the sword of “Gist/Abstract.”
The objection here appears to be that one can claim “a process” (even a process that involves a physical transformation) or an “apparatus” (even an apparatus that you can “put on your desk”) and still run afoul of section 101. Indeed, that’s true. And it must be true unless we wish to create a giant loophole through which ineligible subject matter can still be protected with patents.
Here are two simple examples to illustrate the problem, one for each type of superficially “statutory” claim (“process” and “apparatus”).
With respect to the process claim, consider the case where someone discovers an ineligible abstraction such as a non-obvious and useful correlation. Then consider the following claim:
1. A process comprising drinking a cup of caffeinated coffee and thinking about [insert correlation here].
That claim recites a process — it even includes a physical change and a drug! — but it’s certainly ineligible because it turns law abiding coffee drinkers into infringers when they think about the ineligible correlation. It doesn’t matter how valuable or “narrow” the correlation is. The claim protects ineligible subject matter and therefore the claim is ineligible. That’s the Mayo logic in a nutshell. It’s unassailable and it’s essential to any sane patent system. When a person (allegedly) fails to understand this or fails to acknowledge that this problem exists (and will always exist — it’s not just a philosophical question), it’s extremely difficult to take anything else the person says seriously. Why bother listening to such a person?
Now let’s look at an “apparatus” claim.
1. I claim an apparatus, wherein said apparatus comprises a display, wherein said display is [insert useful non-obvious correlation here].
This claim is ineligible according to the exact logic used in the preceding example. The claim protects the correlation (ineligible information) in the context of old displays. Such a claim would, if enforceable, prevent law-abiding people from displaying “new” information on old devices that were created for precisely that purpose. That’s not permitted. It doesn’t matter how useful or valuable the information on the display is.
None of this is very difficult to understand but it is extremely important. And there are many simple variations on these hypotheticals, as well as more complex variations. Those variations don’t change the outcome, nor should they.
The key to avoiding the problem is to recite a new structure in your claims, in objective physical terms, or a new step (or combination of steps) that causes a physical change in matter, where it was previously not known in the art that such steps could result in that change.
Otherwise, all bets are off. As they should be.
Patents are for promoting progress in the Useful Arts, not for protecting information and certainly not for “protecting investors” regardless of the nature of the activity the investor wants to gamble on.
So that I am not (falsely) accused of taking your words out of context, please explain the legal foundation for this “key” of claims in objective physical terms (when the law permits otherwise) or steps causing a physical change in matter (part of MoT) where likewise, the law permits otherwise.
From your insistence (repeated so constantly), it does appear that you believe this to be an actual legal requirement.
Do you recognize that your “key” does not accord with the law?
What are the odds of Malcolm responding to my post in a cogent and intellectually honest manner?
And yet, he blithely goes about posting in a manner misrepresenting what I post – a pattern repeated ad nausuem, and clearly tied to a position of legal advocacy that exhibits a complete indifference to portraying the actual law under discussion on these many threads.
MM,
I am generally in the camp with Sten Hakanson and feel that all “abstract idea”-type eligibility concerns can be more logically handled under 102, 103, or 112. When I read your two hypotheticals, I was initially at a loss for how to square them with this view, but after some thought I have an answer. You may see it as a stretch, since it involves a fairly liberal application of 102/103, but here is how I feel these claims should be rejected:
1. A process comprising drinking a cup of caffeinated coffee and thinking about [insert correlation here].
1. I claim an apparatus, wherein said apparatus comprises a display, wherein said display is [insert useful non-obvious correlation here].
First looking at the process claim, I would say that this combination of process steps is obvious under 103, regardless of how non-obvious and useful the correlation is. The process of drinking coffee and thinking is well known. An example might be found in a published story, e.g. “She sipped her coffee and thought about….” Given any known example of a specific item of thought combined with coffee, it would be an obvious modification to replace that item with [insert correlation here].
Why? Well, imagine for a moment that the correlation is well known. It could never be successfully argued that thinking about the well-known correlation is a non-obvious thing to do with the correlation. You couldn’t say that the correlation has been known to the scientific community for many years and no one has yet considered thinking about it. So, if someone tried to patent a process of drinking coffee and thinking about the known correlation, it should clearly be obvious. But using what reasoning? Well, one might say that, given published examples in stories of people thinking about X with coffee, it is an obvious modification to think about Y with coffee, where Y is the known correlation. Why? I suppose a person having ordinary skill in the art would understand the benefits of thinking about X with coffee, such as allowing the person to deduce more about X, and such a person would have a reasonable expectation of success in replacing X with Y, i.e. a reasonable expectation that thinking about Y with coffee would allow the person to deduce more about Y. To put it differently, thinking about something is just the use of one’s thinker for its intended and well-known purpose. Thinking about a particular thing falls squarely within this purpose and typically doesn’t produce any kind of synergistic result.
So, back to your example, I believe the exact same analysis can be applied to the case where the correlation itself is novel and non-obvious. Essentially, there is NOTHING that it is not obvious to think about, just as there is nothing that it is not obvious to say, and nothing that it is not obvious to display on a screen as in your apparatus claim. These are the intended purposes of the things that do them, and the results don’t change just because the item being thought about, spoken, or displayed is different. In other words, the results are 100% predictable. (Of course the situation could be different, like if the brain is connected to a thought-controlled input device and the particular thought produces an input that goes against expectations, but this is not your example.) Therefore, the fact that no one has yet thought about the novel correlation might make the claim novel, but it does not make the claim non-obvious. In the same way, the fact that no display has yet displayed the novel correlation only makes the apparatus novel, while the apparatus remains an obvious modification of a known display.
Do you buy it? Does anyone? (I do, so far.)
Probably one-off, the proper analysis to determine whether the claim includes ineligible subject matter, determine whether the otherwise eligible subject matter, read statutory, is new and/or nonobvious, and if not, whether the ineligible is integrated into the eligible to produce an improved result, and, if not, the claim is directed to the ineligible subject matter because that is the novel subject matter and the rest of the claim elements, although they might be statutory, are not modified by the ineligible subject matter.
To declare a claim unpatentable under 101, it must be clear that the statutory subject matter is old. If not one must conduct a novelty analysis on the statutory subject matter. When conducting 102/103 analysis, one must discount and to give no weight to the ineligible subject matter unless it is integrated so as to modify the eligible subject matter.
Thanks for your thoughts. That sounds to me more like the European approach. I don’t read Alice as completely adopting that approach (though perhaps it comes close).
I think MM’s examples come close to presenting a scenario where a narrow eligibility rule is important to have, but I maintain that such a narrow eligibility rule is still unnecessary even in those examples. Instead, obviousness itself should be applied more liberally.
As another hypothetical, what do you think is the proper mechanism for invalidating the following claim?
1. A method comprising:
counting out loud to 29;
thereafter, within one minute, brushing someone’s teeth; and,
30 seconds after the brushing, doing a handstand.
I would say the method is obvious, though surely it is novel. How can we say it is obvious if there seems to be no reason to do it? The reason is, I think, that the steps have no synergy. The method is totally random and is merely the combination of processes that yield exactly the results expected of them separately.
Or, should this sort of claim be allowed?
Assuming we can reject this claim as obvious, I think the situation is analogous to MM’s claims. To see the similarity, first imagine an equally random thought added to the mix:
1. A method comprising:
counting out loud to 29;
thereafter, within one minute, brushing someone’s teeth; and,
30 seconds after the brushing, doing a handstand while thinking about the queen of hearts carrying two beavers by their tails.
We don’t need 101 to invalidate this claim. Even though no one has ever thought of the queen of hearts carrying two beavers by their tails, we don’t need to go there because this method is obvious regardless of what the person has to think about while doing the handstand. Does the fact that no one has ever thought of the queen of hearts carrying two beavers really make the entire claim non-obvious? Of course not.
This brings me to what I think is a subtle flaw in MM’s examples. He claims that the new correlation is “non-obvious.” But can we really ever say a new correlation is “non-obvious”? Just like the queen of hearts carrying two beavers, can’t we only really say that “no one has ever thought of it before”? Obviousness is a legal term of art that applies to claimed inventions. A correlation itself cannot be obvious or not, but the way it is used can or can’t be. I argue that merely thinking about a correlation (any correlation) while drinking coffee is an obvious combination of features as a whole.
Probably, you do recognize that if you cannot exclude the ineligible subject matter from consideration under 103, the examiner is going to have to come up with some prior art showing all the limitations of the the claim?
As to two unrelated things being in the same claim, the problem was once called “aggregation,” a form of indefiniteness, IIRC.
Actually, I find the post-KSR framework to be very flexible and believe it is possible for an examiner to provide a reasoned articulation of obviousness without finding all the limitations in the prior art.
MM, technically, in the two examples, there is a mixture of the statutory with the nonstatutory, with the statutory subject matter being old. The claims are not patentable. It confuses to say that the claim is ineligible.
buySAFE and pretty much every other claim that looks like it was the target of the Supreme Court’s decision in Alice and we now know that the enforcement value of tens of thousands (maybe hundreds of thousands) of patents now rests firmly between zero and nuisance.
The open question is whether Alice overruled Alappat, such that software cannot even be claimed in means plus function format supported by sufficiently details diagrams/appended source code/etc.
“The open question is whether Alice overruled Alappat, such that software cannot even be claimed in means plus function format supported by sufficiently details diagrams/appended source code/etc.”
No – that is expressly not an open question as I answered that question after oral arguments and before the decision came out by noting that since both sides had stipulated to certain facts, that that issue was not before the Supreme Court, and any notion of them overruling that case would be void as not pertaining to the case or controversy before the Court (and would thus be an advisory opinion).
Let’s not kick up the dust on that established point.
I raise it mainly because EFF in their Ultramercial amicus brief is focused on Alappat. It’s also an issue in terms of how to value portfolios for litigation.
You raise it incorrectly – as I indicate, Alice cannot overrule Alappat.
Ok, then, effectively overrule Alappat.
Also off-limits – the same “no advisory opinion” logic follows.
To be perfectly blunt, what the Court is doing here simply does not even need to bother with Alappat for the simple reason that the statutory category aspect of 101 can be met, and STILL the Court can wipe out the claim based on “Gist/Abstract.”
Your attempt here to kick up dust on Alappat simply is a non sequitur to ANYTHING coming out of the Alice decision.
I have fully explained this previously.
Are you a litigator?
You seem to have an overly rigid view of how cases relate to one another.
Overly rigid?
Not at all – why do you think this is overly rigid?
A higher court can overrule an entire range of lower court decisions directly or by implication.
There’s even an expression for it: overruled sub silentio.
At root, my question is whether that happened here.
at root – I answered you.
I even explained why – do you have a problem with those concepts as well? Too rigid?
(the overruling aspects must still occur to items at issue – even the sub silentio ones)
Not so much rigid, as not necessary accurate.
Doesn’t matter, I guess. Notwithstanding the disputes on this board, the reality is that nobody really knows how it’s going to shake out in practice. I have my theories, but that’s all they are.
Cheers
please feel free to correct the inaccuracy you see.
“that is expressly not an open question as I answered that question after oral arguments and before the decision came out by noting that since both sides had stipulated to certain facts,”
And anon has authority in this matter.
You appear to once again confuse authority of the person with veracity of what that person has shared.
You really should try to grasp that concept 6.
“You appear to once again confuse authority of the person with veracity of what that person has shared.”
Oh yes, “veracity”, like the “veracity” of all the horse hockey you spewed about Diehr for years and years.
…?
What are you talking about? What exactly from my position on Diehr do you think is horse hockey?
not anon, Alappat’s MPF claims were directed to hardware in a graphics unit for a display. Take a look at Fig. 3 of the patent that eventually issued. Circuits. That is what was claimed.
All else in Alappat about programmed machines being per se eligible is was simply dicta. The PTO complied with the dicta however, and issued a lot of patents relying on that dicta.
Alice did overrule that dicta.
WRONG again Ned – for reasons we have already discussed in great detail (including my quoting to you what “Holding” means from Black’s Law Dictionary.)
Merely regurging your already defeated arguments does nothing Ned.
And as I pointed out (directly) to you previously – the issue was not there for the Supreme Court to even rule on.
You do remember the “no advisory opinions” limitation on Supreme Court rulings, right?
Well, ok. What about Fed. Cir. cases like Inventio AG, Power Integrations, and MIT where you have “circuits” being claimed functionally? What about WMS: “The instructions of the software program that carry out the algorithm electrically change the general purpose computer by creating electrical paths within the device.”
Where’s the line? Is it really the case that you can’t bring patent enforcement suits until it’s all sorted out?
The “line” – as I noted above – has absolutely nothing to do with Alappat.
The sword of “Gist/Abstract” cuts away any concern that the Court even deal with any claim meeting any of the statutory categories.
Period.
“Where’s the line?”
Ha – that’s a good one. The Supreme Court refuses to tell anyone – and as I mentioned to someone else asking a similar question, the reason that they so refuse to tell – that they refuse to set such a bright line – is because if they were to do so, then their finger in the 101 nose of wax addiction would be defeated.
Their addiction has not been satiated. See Prometheus: no matter what, they will not let their own implicit writings become dead letters. It simply does not matter that applicants play “scriviner games” and write claims that meet the words that Congress has used for 35 USC 101, the Court will still see some “gaming” going on and will enforce a law that they want in place (implicitly, explicitly – with the added word of “technological” also undefined, or otherwise).
Precisely none of these “electrical paths” are described in the typical computer-implemented functionally drafted claim except from a 100,000 foot level (“configured to”).
And yet again, you appear to purposefully mis-advocate as to what a claim must entail, and ignore just how a claim is to be read.
Do you really enjoy this game of yours?
““The instructions of the software program that carry out the algorithm electrically change the general purpose computer by creating electrical paths within the device.””
First “electrical ‘paths'” aren’t a part of a general purpose computer, they are what are created in a computer when it is used. They are the product of the computer being used so to speak.
Second, to the extent that he is referring to physical “electrical ‘paths'” as in “circuitry”, none of that changes what so ever.
I’m starting to understand the nonsensespeak being used by these folks though. Clever word play designed to confused those ignorant of electronics.
I hope so
More words. The USSC and CAFC have simply re-arranged the deck chairs on the Titanic. It’s sad.
re-arranged the deck chairs on the Titanic
Not at all. What your seeing here is Cal Hockley’s collection of 100,000 anvils being thrown overboard at the request of the vast majority of passengers who aren’t inclined to be drowned just so Cal Hockley can enjoy his steak.
And yes: more to come.
Get used to it. We all knew this party was going to end soon and we all knew that the entitled class of abusers was going to cry holy h ell when it happened.
You do not appear to understand the way that IBP used the phrase.
You do not appear to understand the way that IBP used the phrase.
Is this the level of discourse you’re looking for Dennis? If not, then you know what to do.
LOL – Malcolm, this is the type of childish game that can easily be seen as something that the good professor does not want.
Dennis: the court did not discuss the presumption of validity or the standard of evidence applied to the underlying elements of the Alice Corp eligibility test
Not really an issue here because both parties acknowledged the existence of information-processing machines in the prior art.
What else is left? Some bizarre argument that some “skilled” person in some “art” (which one?) would not have predicted that computers could be used to facilitate commercial transactions? There probably are some patent attorneys out there desperate enough to make such an argument, given the similarly desperate “arguments” posted by the s 0ftie w0ftie cheerleaders here every day.
splinter: The court’s statement about “doesn’t matter how narrow” shows how clueless they are.
The fundamental issue resolved correctly by the Supreme Court in Mayo v. Prometheus is that you can’t protect abstractions or data or correlations or information merely be appending the recitation of such to a claim that recites otherwise unpatentable (i.e., old) technology. Period. It does not matter how complicated the information is, or how useful the information is, or how surprising the information is, or how much X is willing to pay Y to control the information for 20 years. All that’s irrelevant because you can’t protect the information (or any other abstraction) with a patent. It’s always been thus and it always will be.
So you say you’ve “invented” a super nice “new” computer that’s “new” because it has information stored on it that’s super valuable (and retrievable on demand). Great! Enjoy it. A claim to that computer that recites nothing new except the information is ineligible because it protects that information (it prevents it from being put on a computer in a retrievable manner). As the Federal Circuit just informed you, it doesn’t matter how specifically you describe this information or how non-obvious or “narrow” the description of the information is. It’s ineligible, period.
This is not difficult stuff to understand. It really isn’t.
The best part is that there is more to come. There are multiple major malfunctions out there, some implicating 101 more strongly than the other statutes, and some others implicating the other statutes more strongly than 101.
Wait until the courts and the PTO start to seriously address the plague of functional claiming at the point of novelty. Or the practice of “limiting” old information processing logic by re-labeling the information.
Oh, it’s going to fun. Much more to come! The s 0ftie w 0ftie crowd is going to need a bigger box of kleenex.
“merely be appending ”
because mere appending (without integration or being functionally related) as anything to do with anything….
LOL – are you ready yet to give cogent and intellectually honest answers to the several points I have made against your “pet theory?”
Or will you (yet again) run away?
The court made comments about the narrowness of excluded subject matter – the law of nature, abstract idea, or product of nature, not being relevant. However, these comments were not about the claim as a whole. If these comments had been done about the claim as a whole, I agree with splinter that it would have been in contradiction with the preemption concern.
If these comments had been done about the claim as a whole, I agree with splinter that it would have been in contradiction with the preemption concern.
LOL. By all means let’s talk more about what the errors in statements that the court didn’t make.
MM: The fundamental issue resolved correctly by the Supreme Court in Mayo v. Prometheus is that you can’t protect abstractions or data or correlations or information merely be appending the recitation of such to a claim that recites otherwise unpatentable (i.e., old) technology.
I am still struggling with that portion. What is old technology has been new before. How is 101 eligibility supposed to work? Some inventions become non eligible from one day to the next? Based on what, published prior art, filed US applications?
See link to mobile.nytimes.com
Good link. What evidence is there behind the concern “that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity?”