Patent Invalid for Unduly Preempting the Field of “Automatic Lip Synchronization For Computer-Generated 3D Animation Using a Rules-Based Morph Target Approach”

by Dennis Crouch

McRO (Planet Blue) v. Activision Blizzard, et al. (C.D. Cal. 2014) Decision PDF

In his second major Section 101 decision in as many weeks, Judge Wu (C.D. Cal) has relied upon Alice Corp. (2014) to invalidate all of McRO’s asserted patent claims.  The case is quite important because it is one of the first major applications of Alice Corp. to invalidate non-business-method claims.  Here, the invention is directed toward a specific technological problem that had troubled the field of animation – automatically animating lip synchronization and facial expression of animated characters. See U.S. Patent Nos. 6,307,576 (“‘576 Patent”) and 6,611,278 (“‘278 Patent”).  The appeal will be interesting and may serve as one of the Federal Circuit’s first opportunities to draw a new line in the sand.

The problem addressed by the invention is that it has been historically quite difficult to match-up animation audio and video — so that the character’s mouth and face are moving to match the sound overlay.  Historically, this has been very expensive and time consuming to do well. What you might call the ‘gist’ of the invention is simply a data transformation — from an audio signal to a visual animation output.  The details are a bit more technical. According to claim 1 of the ‘278 patent, the invention operates by first creating a set of phoneme sequences keyed to a pre-recorded audio sequence. Then, those phenome sequences are used to create a set of morph-weight-set streams (based upon a set of factors provided by the animators).  Those morph-streams are then used as input sequences for the animated characters to provide both timing and movement of facial expressions, including emotion.   The inventions claim priority back to 1997.

1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:

obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence;

obtaining a plurality of sub-sequences of timed phonemes corresponding to a desired audio sequence for said three-dimensional characters;

generating an output morph weight set stream by applying said first set of rules to each sub-sequence of said plurality of sub-sequences of timed phonemes; and

applying said output morph weight set stream to an input sequence of animated characters to generate an output sequence of animated characters with lip and facial expression synchronized to said audio sequence.

In writing about this patent claim, Judge Wu noted that – in isolation – it appears tangible and specific rather than abstract.

They are tangible, each covering an approach to automated three-dimensional computer animation, which is a specific technological process. They do not claim a monopoly, as Defendants argue, on “the idea that the human mouth looks a certain way while speaking particular sounds,” “applied to the field of animation.” Further, the patents do not cover the prior art methods of computer assisted, but non-automated, lip synchronization for three-dimensional computer animation.

Further, the defendants raised a defense of non-infringement – explaining that their particular method of automated lip synchronization is not even covered by the patents. Thus, Judge Wu writes: “At first blush, it is therefore difficult to see how the claims might implicate the ‘basic underlying concern that these patents tie up too much future use of’ any abstract idea they apply.”

However, Judge Wu recognized that the Supreme Court’s analysis of Alice Corp was not done in a vacuum but rather made reference to what was already known in the the art and asked whether the claimed invention extended that knowledge with an inventive concept that goes beyond a mere abstract idea.  In Judge Wu’s words the Section 101 eligibility of “the claims must be evaluated in the context of the prior art.”

Judge Wu’s approach was to identify the point-of-novelty for the claimed invention and then consider whether that point-of-novelty was itself an abstract idea.  That approach was made easy because the patents admitted that many elements of the invention were already part of thee prior art.  However, the patents claimed the new elements as the use of rules that define morph sets as a function of the phonemes which the court sees an an abstract idea that cannot be patented because it would allow the patentee to “preempt the field of automatic lip synchronization for computer-generated 3D animation … using a rules-based morph target approach.” Thus, the claims are invalid.

Judge Wu does show some sympathy to the patentee here — indicating that it appears to be a nice and important invention – just one that is not patent eligible.

But a § 101 defect does not mean that the invention was in the prior art. The invention here may have been novel, but the claims are directed to an abstract idea. And the patent’s casual – and honest – description of the prior art was made at a time when, under the then-prevalent interpretation of the law, such admissions were unlikely to be harmful. One
unintended consequence of Alice, and perhaps of this and other decisions to come, is an incentive for patent applicants to say as little as possible about the prior art in their applications.

Although he does not cite the Supreme Court’s 1946 decision in Halliburton v. Walker, Judge Wu does offer closing remarks that hearken back to the principle that patent claims must be specific at the point-of-novelty.  He writes: “This case illustrates the danger that exists when the novel portions of an invention are claimed too broadly.”

There are many interesting aspects to the decision, but I wanted to post these initial thoughts before moving forward.

610 thoughts on “Patent Invalid for Unduly Preempting the Field of “Automatic Lip Synchronization For Computer-Generated 3D Animation Using a Rules-Based Morph Target Approach”

  1. 43

    Hello Les,

    My apologies if this gets posted twice, Have problems with the filters. Thank you for the opportunity. There are basically two Integration Analysis arguments in the wake of Alice that everyone should be using, if they can.

    1. The claims are a fully “Integrated” process and not one of the implicit exceptions and therefore it’s a gross legal error to apply step two of the Alice two step test. Show your rational and facts to support the argument. NOTE: (Step two is usually were examiners, and judges too, are running amok and impermissibly distilling inventions down to the “gist”.)

    or, if you do have to go to step two argue…

    2. The claims which do contain this concept (one of the implicit exceptions), further “ Integrate” the concept into a process that is new and useful and therefore transform the claims into an inventive application of the concept. With “new” being a new combination, and “useful” meaning one or more benefits that could not be achieved with just the concept standing alone. Cite the appropriate sections of Diehr, Mayo, and Alice. Stick to your guns and force the Examiner, SPE, or the PTAB to deal with your “Integration Analysis”.

    Let me know if you have any questions.

    1. 43.1

      “Stick to your guns and force the Examiner, SPE, or the PTAB to deal with your “Integration Analysis”.”

      Yeah, sounds super hard. The examiner just repeats the abstract idea you’re trying to patent upon and says “final”. And you’re all like “o snap!”.

      1. 43.1.1

        Rather than ignoring “Integration Analysis”, how about the Examiner rely on the facts and allow claims according to the law?

        Really, how hard could that be?

        1. 43.1.1.1

          How hard would you like it to be? Masochistically? Keep talking and we can always make it harder if you’re going to beg for it.

  2. 42

    Bluto: Mental processes are not patent eligible because: (1) you can’t impinge on people’s right to think (would be the ultimate form of preemption); and (2) there is no discernible “process” with a set of mental steps other than a single process of thinking.

    Okay. We’re more or less on the same page here. You were confused about my follow up question but you didnt indicate what was confusing about it. I’ve rewritten it here to make it as clear as possible:

    You agree that mental processes are ineligible subject matter for protection by a patent. Does your answer (eligible or not) change when an old but eligible data gathering step is placed before the admittedly ineligible mental step? If so, why? When you answer that question, consider your rationale for the answer you gave to the original question (the ineligibility of mental proceeses) and imagine that you are giving your explanation to a patent attorney who happens to be practicing that old data gathering step.

    I think that’s pretty straightforward. If you’re still confused by the question, let me know where the confusion lies.

    I’ll get to the question of the eligibility of “improved” manufactures that receive, store and display information after lunch. Don’t freak out if it takes a few hours.

      1. 42.1.1

        I didn’t “cut and paste” Bluto.

        I revised the question I asked you to make it more “clear” so you were no longer confused by the question.

        Are you still confused, Bluto?

        Or is there some other problem now?

        I guess we can always revisit the dicussion later, Bluto. Your choice. I’ve got this bookmarked, at least, so you won’t be able to claim that you answered the question. It’s an important question and a highly relevant one to the topic of subject matter eligibility, which seemed to be an interest of yours.

  3. 41

    If we are now to interpret 35 USC 101 as preventing the patenting of things that are supposedly well known or “not new”, what now do we make of 35 USC 102? Has 35 USC 102 been nullified by common law? If not, what practical use is 35 USC 102 anymore if inventions that are “not new” are ineligible subject matter? Is there any room in US patent law for anticipation?

    1. 41.1

      If we are now to interpret 35 USC 101 as preventing the patenting of things that are supposedly well known or “not new”, what now do we make of 35 USC 102?

      You mean this statute?

      35 U.S.C. §102.

      (a) Novelty; Prior Art.— A person shall be entitled to a patent unless—

      (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

      (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

      (b) Exceptions.—

      (1) Disclosures made 1 year or less before the effective filing date of the claimed invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

      (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

      (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

      (2) Disclosures appearing in applications and patents.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

      (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

      (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

      (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

      (c) Common Ownership Under Joint Research Agreements.— Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—

      (1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;

      (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

      (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

      (d) Patents and Published Applications Effective as Prior Art.— For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—

      (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or

      (2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365 (a), or 365 (b), or to claim the benefit of an earlier filing date under section 120, 121, or 365 (c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

      Seems perfectly practical to me.

      1. 41.1.1

        Thanks for the cut and paste, sweet-ums.

        Now, can you try and actually answer the question now? What is the point of 102 now that 101 is a catchall for anything “not new”? What need is there for determining whether something is anticipated if the invention is NOT eligible for patenting in the first place because it’s not new?

        Anything that is anticipated implicitly already dispatched under 101 as being ineligible because it’s “not new”.

        1. 41.1.1.1

          What is the point of 102 now that 101 is a catchall for anything “not new”?

          If your premise leads to absurd results, perhaps you should revisit your premise. Who, besides you, says that “101 is a catchall for anything ‘not new’?”

            1. 41.1.1.1.1.1

              I don’t know what Ned’s “anti-nominalism position” is, but I’m surprised to hear that Ned has stated that 101 captures everything that is “not new,” thus rendering 102 superfluous. Are you sure you’re accurately characterizing Ned’s position?

              1. 41.1.1.1.1.1.1

                That’s a fair question as Ned’s reimagining and versions of case law are not so easily tracked to the real world and contain inconsistencies that may render any characterization necessarily inaccurate.

                I am referencing his penchant for focusing on the word “new” not only in the current version of 35 USC 101, but in the precursor statutes as well.

          1. 41.1.1.1.2

            We have suffered numerous arguments over the last months talking about how the aspect of “new” in 101 precludes eligibility for anything that isn’t new. Let me provide you with a freshly excreted argument from this thread:

            ***”That would be inaccurate in this instance. People have been matching sound to facial features in moving images for a long, long, long, long time. And people have doing that using “rules” and an information-processing tool known as “the brain.” They also have employed at various times pencils and paper, pens and paper, and calculators. And computers. All before these “innovators” came up with additional concept of (wait for it) using “rules” to assist to with the process.”***

            This ENTIRE argument against the eligibility of the claims hinges on the fact that the inventive limitation in the claim was not NEW.

            If something is not new, it is anticipated under the statute, not ineligible subject matter. When you conflate “new” as found in 101 and interpret it as the same as “anticipated” as in 102, you essentially destroy any need for 102 to exist anymore. Everything that was previously anticipated can be now invalidated under 101 ‘cus it aint new.

            1. 41.1.1.1.2.1

              For good or ill, the Supreme Court does seem to be considering the “newness,” of a practice under 101. Or, as I prefer to think of it, they are using the fact that a practice is very old as a clue that it is an abstract idea.

              Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.

              Bilski

              Like the risk hedging in Bilski, the concept of intermediated settlement is “ ‘a fundamental economic practice long prevalent in our system of commerce.’

              Alice Corp

              1. 41.1.1.1.2.1.1

                go, let’s not misstate the reason for the reference to hedging being notorious — it was to demonstrate that hedging was fundamental.

                The court did not find the method disclosed to be old, just that it was hedging and hedging was a fundamental economic practice.

                Some of the dependent claims recited specific math. These were declared invalid as well even though there was no finding that the math was known. Why? Because hedging was not patentable subject matter, and adding math, itself nonstatutory, added nothing.

                That said, the bit about preemption was confusing at best.

              2. 41.1.1.1.2.1.2

                Hedging untethered from anything else is fundamental. Just like “a conveyance from A to B”, also referred to as a car, is fundamental. Improvements to a car are patentable.

                The claimed process in Bilski was not hedging in an abstract sense. Bilski claimed a very specific method for risk hedging, in essence the improvement.

                No one presented prior art to prove that method was well know.

                It’s easy to “prove” something is old when the only evidence required is handwaving.

                1. Let me state that I believe that “conveyance from A to B” would be abstract, but the car obviously is not. Whether a car is known or not is not relevant to an analysis under 101.

                2. Bluto, I agree that Bilski’s hedging method was not abstract in the way the Supreme Court used abstract in Le Roy v. Tatham, and O’Reilly v. Morse. Neither was the hedging method described in the claims old.

                  Clearly, to me, the problem with Bilski’s claims was that they were nonstatutory , exactly as law had held business methods to be prior to State Street Bank. Stevens wanted to restore that law. The majority of the Supreme Court decided to go off on a lark. There is no other possible explanation for what they did that makes any sense.

                  We do know today is that “fundamental” economic practices are “abstract” – meaning they are nonstatutory. Thus the patentability, if anything, must be in the statutory subject matter the claim, typically the computer systems. But if the computer systems are claimed in a very gen eric level, they hardly are inventive.

                3. Your point about business methods would be well taken, if they weren’t codified into the law. I get that you think this should be the law, but it’s not, so let’s move on from that point.

                  I’m also all for allowing applicants to dump the perfunctory computer-implementation parts in methods. If you recall, the reason why this was done was to satisfy elements of the MOT test.

                  Finally, can you tell me what “fundamental” means?

                  We went from ineligible by abstractness, to abstractness because it’s fundamental. Looks like we just replaced the label on the bottle without defining the contents.

                  As far as I can tell, “fundamental” can only be determined with reference to what is known, hence we are back to whether the process is old and well known.

                  It’s a ridiculous and unworkable test.

                4. Bluto, 273 was never intended to change 101. What a fricken disaster.

                  I have told the story of its enactment to anon some time back. Did you follow it then?

                5. Your ‘story’ Ned was your unsubstantiated opinion and nothing more – note particularly that the actual record in Congress and the words of the Supreme Court tell a decidedly different story.

              3. 41.1.1.1.2.1.3

                To be precise, the Supreme Court is using the fact that a claimed practice is very old as a clue that the patentee is including it merely to overcome the 101 threshold, but actually is trying to block use of a judicial exception entirely.

                The 101 question is now a question of patentee intent, and the Supreme Court is trying to think — what is the patentee going after?

                Not that I agree with this approach, but I think that’s what S.Ct. is doing.

            2. 41.1.1.1.2.2

              “Inventive limitation” was not new?

              Hardly.

              While I somewhat disagree that abstractness should be a 101 issue, the problem with the claim was the invention claimed at the point of novelty was stated too broadly, too abstractly.

              To reach this result, the court had to determine as a preliminary finding that everything in the claim was old but the use of rules. The court did this because everything in the claim but the use of rules was admitted to be old and conventional.

              1. 41.1.1.1.2.2.1

                Did both parties stipulate to this interpretation of the claims? Even if they did, why is the use of “rules” in the process not patentable? Had anyone used rules previously? Did the use of rules provide an improvement over the state of the art?

                Do you object to the fact that the claims didn’t explicitly recite what the rules were? If so, that seems to be a 112 issue. Clarity and definiteness are, just like 102, separate sections of the code for a reason. Congress did not intend 112 and 101 to be interchangeable.

                It seems abhorrent to allow a Court to punish a patentee for obtaining claims that were definite enough to pass muster at the PTO, simply because the Court doesn’t like the breadth of the claims that issued. This is why the standards for asserting indefiniteness post-issuance are so much greater than the requirements during prosecution. We need examiners to make sure claims are definite and enabled. Once they pass PTO review, claims should be invalidated for indefiniteness by a non-technical individual like a judge, only in rare occasions.

                1. Bluto: Had anyone used rules previously?

                  Is that a serious question?

                  Are you seriously asking whether someone who was matching sound to moving images “used rules”?

                  Seriously?

        2. 41.1.1.2

          It is not a “catch all” brosef. The only time we’re talking about what is “new and not new” in 101 is when we’re talking exceptions.

              1. 41.1.1.2.1.1.1

                The rule is 101. Do please try and keep up.

                The exceptions of the judicial created doctrine have rendered even the explicit categories that are supposedly eligible, ineligible. We might as well remove “manufacture” and “process” all together. Claims that clearly fall into these explicit categories are now ineligible due to these lovely common law exceptions. There is literally nothing left in 101 except for “new” and “useful” after Alice. Even “useful” is irrelevant because the claims in Alice and Bilski were useful.

                “New” is being interpreted as something that is not “abstract”. For example, risk hedging schemes are clearly methods. These methods are now not patentable because the underlying subject matter is not “new” because risk hedging schemes have been known for centuries. Not the claimed risk hedging schemes mind you, but the basic concept of risk hedging.

                1. bro we just got through giving out 300k apps this last year. I think there’s plenty left in 101 eligible subject matter. The exceptions have not “swallowed” the rule one little bit it seems from the numbers of patents issuing. Not even a tiny bit.

                  Now, if on the other hand the number of patents issued yearly fell to say, 10, then you might have a point. Especially if we finally rejected the 300k others with nothing but 101.

                  ““New” is being interpreted as something that is not “abstract”.”

                  Not really :/ The exceptions have little to do with the word “new”.

                  ‘These methods are now not patentable because the underlying subject matter is not “new” because risk hedging schemes have been known for centuries.”

                  Technically speaking they were never patent eligible. But either way, they still are not ineligible simply because risk hedging schemes have been known for centuries. It’s because risk hedging schemes are abstract ideas and are excluded, as a category. Regardless of them being old or not.

                2. “bro we just got through giving out 300k apps this last year. I think there’s plenty left in 101 eligible subject matter. The exceptions have not “swallowed” the rule one little bit it seems from the numbers of patents issuing. Not even a tiny bit.”

                  An exercise in missing the point entirely. The USPTO is not invalidating issued patents.

                  “Technically speaking they were never patent eligible. But either way, they still are not ineligible simply because risk hedging schemes have been known for centuries.”

                  How can a method that has steps that were previously unknown in the art not be “new” under any definition?

                  IOW, Prove to us that the claimed risk hedging scheme had ever been used or was known prior to disclosure by the Applicant. No one disagrees that “risk hedging” in various forms has been done for centuries. That’s not the question. The question is ***was the risk hedging method included in the claims*** known?

                  If the risk hedging scheme is even nominally different from previous schemes known in the art, and the scheme is useful, it should pass 101.

                3. “An exercise in missing the point entirely. The USPTO is not invalidating issued patents.”

                  I take it then that your point is “the uspto is not invalidating issued patents”? I don’t really follow your point or why you’re bringing that point up.

                  “‘These methods are now not patentable because the underlying subject matter is not “new” because risk hedging schemes have been known for centuries.””

                  Yes I’ve discussed this inartful way of expressing the holding before. First, when we read in context, the sentence begins to make a bit more sense. And second, even if you leave the sentence as a sound byte divorced from context you can ultimately suss out the ultimate meaning, which is that the underlying subject matter is a risk hedging scheme, aka an abstract idea that has been around for centuries.

                  But you may feel free to continue to not understand the decision, be my guest. It isn’t going to change that the law is not going to be what you’re thinking it is.

                  “How can a method that has steps that were previously unknown in the art not be “new” under any definition?”

                  I don’t need to bother with this question, because under my understanding (the proper and quite in context understanding) of the sentence he was never saying that a method with previously unknown steps was not “new”. He was merely saying that the claim is to underlying subject matter, aka hedging risk (which happens to be abstract they note in another place) which is not new. And expressing himself inartfully. I’m probably expressing myself inartfully right now simply because this is difficult to explain to someone that is dead set on not understanding, since you have to “start in the middle” of the explanation.

                  “IOW, Prove to us that the claimed risk hedging scheme had ever been used or was known prior to disclosure by the Applicant.”

                  Again, there is no need to under my interpretation of the decision.

                  “No one disagrees that “risk hedging” in various forms has been done for centuries. That’s not the question. ”

                  Great. Now if you’ll be so kind as to also “not question” that hedging risk is 100% abstract and that this claim was unquestionably directed to hedging risk then we’ll be like 100% done with this whole analysis.

                  ” The question is ***was the risk hedging method included in the claims*** known?”

                  That’s actually not “the question”. That is simply “the question” that pops into your mind because a USSC justice expressed himself inartfully and you cannot see the forest for this big ol tree.

                  “If the risk hedging scheme is even nominally different from previous schemes known in the art, and the scheme is useful, it should pass 101.”

                  That’s your opinion, and what a mighty fine opinion it is! But like a lot of opinions, yours simply doesn’t matter here. The USSC’s opinion however does.

                4. “bro we just got through giving out 300k apps this last year. I think there’s plenty left in 101 eligible subject matter. The exceptions have not “swallowed” the rule one little bit it seems from the numbers of patents issuing. Not even a tiny bit. ”

                  Those 300K apps were not evaluated under Alice, were they?

                5. “Those 300K apps were not evaluated under Alice, were they?”

                  Maybe not all of them were. Doubtless at least one or two examiners were up to the task of applying the law correctly before Alice was handed down for simpletons still not on board. But even if you’re entirely correct, that number isn’t going anywhere near 10 anytime soon.

    2. 41.2

      Bluto, you hit upon the central weakness of the Supreme Court current analysis, and why it might be preferred to address the issue in the context of 102/103/112, but giving no weight to the nonstatutory unless “integrated.”

      However, if the statutory subject matter, e.g., the computer, is claimed at such a high level of abstraction that there is no possibility of being invention in the statutory, the patentability of the claim can be resolved as a threshold issue under 101.

      In contrast, if there is arguably invention in the statutory subject matter, the courts must conduct data analysis under 102/103, but again giving no weight to the nonstatutory subject matter unless integrated.

      1. 41.2.1

        you hit upon the central weakness of the Supreme Court current analysis, and why it might be preferred to address the issue in the context of 102/103/112, but giving no weight to the nonstatutory unless “integrated.”

        It’s the same analysis regardless of what statute you use.

        Either you celebrate form over substance (as the Federal Circuit did) or you do the analysis and look at what the applicant is adding to the prior art (so-called “dissection”). If what is added is only ineligible subject matter, you are most surely up Brown River without an oar.

        1. 41.2.1.1

          It’s not the same by any stretch of the imagination. 102 and 103 require actual evidence in order to be applied in a way that passes the laugh test. 101 now requires nothing of the sort to prove that something isn’t “new”.

          Can you point to any of the recent 101 invalidation opinions where claim construction was conducted and and element-by-element analysis of the claims occurred, specifically with reference to prior art? You know, that pesky process the USPTO has to engage in to justify a prima facie case of anticipation or obviousness?

          I’m not talking about general and vague references to books or prior art that supposedly exists and is “known to everyone”, but actual evidence in the record.

          1. 41.2.1.1.1

            IOW, it’s implicit that you prove, by clear and convincing evidence, that what you assert is ‘prior art’ actually exists. I.E., you can show a book, patent, or any other objective evidence that proves your position.

            Taking an otherwise known method and saying “execute it on a computer” is not patentable because both the computer and the method are known in the art. They are anticipated.

            Neither Alice nor Bilski involved prior art of any kind. You don’t need prior art when you ignore claim limitations and view the claim without regard to the actual words used in the claim.

            The real advantage in Alice is that scientifically ignorant people in robes can chant the incantation of “abstract” without being bothered to figure out if the method underlying the claim has ever actually been practiced before.

            1. 41.2.1.1.1.1

              “IOW, it’s implicit that you prove, by clear and convincing evidence, that what you assert is ‘prior art’ actually exists. ”

              Only if not everyone is on board. If all parties are in agreement it shouldn’t be a problem for the fact to be entered onto the record in some form or fashion, if by nothing else, then judicial notice will suffice.

              “They are anticipated.”

              But when combined they might not be. Then we have to get into “obviousness” and that whole can of worms.

              “The real advantage in Alice is that scientifically ignorant people in robes can chant the incantation of “abstract” without being bothered to figure out if the method underlying the claim has ever actually been practiced before.”

              Your sentence is technically correct, though not in the fashion you meant it to be construed. The fact is they need not determine the oldness of the “method underlying the claim” at all in most instances.

            2. 41.2.1.1.1.2

              I totally agree. A 101 analysis is now performed by a judge with no evidence as to what is or is not known. Thus, a judge can simply say “this is well known” and therefore the claim is invalid.

              If it “looks” old and abstract, it’s invalid under 101.

          2. 41.2.1.1.2

            Bluto, if the eligible subject matter is not clearly old, the analysis has to be under 102/103/112.

            1. 41.2.1.1.2.1

              Again, this is completely circular. Have any of the decisions we’ve seen proven that the supposed ineligible subject matter was actually and clearly old? Not the basic gist of the claim, but the actual method steps. Not with handwaving but with actual objective evidence.

              Even if we assume that this is the new test for eligibility, why are we willing to accept a standard of proof for evidence for 101 that is significantly lower than the standard of proof for evidence for 102? Why must the USPTO prove to an applicant that prior exists which anticipates? Should we now just allow examiners to write rejections that say:

              “Claim 1 has been rejected under 35 USC 102(a) as anticipated because I remember programming a computer to do something similar back in college.”

              1. 41.2.1.1.2.1.1

                BlutoBlutarsky, Have any of the decisions we’ve seen proven that the supposed ineligible subject matter was actually and clearly old?

                Huh?

                Why you talking about the ineligible subject matter at all? Is not a question of whether the ineligible subject matter is new or not new because it is given no weight at all the patentability consideration.

                What is critical is that the eligible subject matter be old and conventional.

                1. “IT is not a question of whether the ineligible subject matter is new or not new because it is given no weight at all the patentability consideration.”

                  ^ Fixed.

                  Also, Ned you can tell him this until you are blue in the face. A USSC justice expressed himself poorly in one decision and Bluto will never get over that, his reading skills simply do not appear high enough bro. And that’s no crack on his skills. It takes stupendous reading ability to correctly understand what the justice was saying in Bilski. Even so, when I’ve tried to assist him he’s not showing much progress.

        2. 41.2.1.2

          It’s the same analysis regardless of what statute you use.

          This is NEVER true.

          Ever.

          You are exhibiting a massive “ends justify the means” moment.

  4. 40

    hierarchyofpb: no one skilled in the art cares what letters are used, they care about how the algorithm has been improved.

    Improved for what purpose exactly? Any purpose? It’s math. By its nature, it could be used in an infinite variety of contexts. There’s no such thing as math that is “too sturdy to fit into a hole” or “too loose to support that beam”. Math applies wherever you seek to apply it. Whether you get a result that’s useful to you depends on what result you are looking for.

    How much improvement is necessary to qualify as “an improvement” to an algorithm? Will any improvement suffice? Is a 0.1% increase in computing speed in any specific arbitrary context (e.g., “on a MacBook Pro running the Ocelot system”) that the applicant chooses sufficient for a patent on a computer applying the algorithm in contexts other than the specific arbitrary context chosen by the applicant? Why or why not?

    Your comment that “nobody skilled in the art cares what letters are used” gets us right back to my initial point about the lack of a standard lexicon. How do Examiners and other evaluators of validity identify algorithms that have the same “structure” but use different letters? Is there a database at the USPTO equipped to perform that analysis? Presumably the use of “different letters” isn’t enough to confer patentability upon an old algorithm — but you may have a different idea. If so, please share.

  5. 39

    Edwin Starr “101 IE, could you do the integration analysis here for us, using the facts of this case? I.e., show us what the Judge should have said in the opinion.”

    Hello Edwin:

    Thank you for your question. If Judge Wu wanted to follow the law he could have concluded by saying something like…..This court, in not wanting to take an activist approach in invalidating software, has decided to follow the law, particularly as it has been interpreted by the Supreme Court. We have before us today a fully and legally integrated claim ( See Prometheus) that involves complex information processing. On reading the specification there is no stand alone abstract concept like Bilksi’s hedging. ( See Bilski and Alice ) Likewise when reading the claims themselves one can find no concept being claimed or claims followed by applying the concept on a computer, which would be extra solution activity and/or field of use limitations. ( See Flook ) That the invention involves software does not negate the invention at 101, the Court has never held that software is per se, an exception. (See Benson, “We do not so hold” regarding the ineligibility of software.) This court must follow Supreme Court precedent and the standard, for interpretation of the 101 statute and consider the claims as a fully Integrated whole. ( See, Prometheus, Diehr) (See Bilski, ” describing the courts precedents on 101 standing for no more than the holding in Diehr”). Finally the court recognizes the invention can’t be performed entirely within the mind, or by pencil and paper, thus the claims are a legally integrated process and are so held as statutory subject matter, fully eligible for a patent. Whether the claims pass the tests of 112, 102, and 103, this court does not give an opinion.

    1. 39.1

      Likewise when reading the claims themselves one can find no concept being claimed or claims followed by applying the concept on a computer, which would be extra solution activity and/or field of use limitations.

      That would be inaccurate in this instance. People have been matching sound to facial features in moving images for a long, long, long, long time. And people have doing that using “rules” and an information-processing tool known as “the brain.” They also have employed at various times pencils and paper, pens and paper, and calculators. And computers. All before these “innovators” came up with additional concept of (wait for it) using “rules” to assist to with the process.

      1. 39.1.1

        If the single remaining limitation is known in the art, the proper tool for dealing with the claim is:

        …wait for it…

        …wait for it…

        35 USC 102.

      2. 39.1.2

        MM:”People have been matching sound to facial features in moving images for a long, long, long, long time…”

        I went back and reread the claims again, and the claim is clearly to a process; a series of steps that produce an outcome that can be “objectively” evaluated. The claim is definitely not to the general idea of as you say….”People matching sound to facial features in moving images.” Now if your concern is that the specification does not fully and precisely disclose how this is done then you have a 112 issue and not a 112 problem. Likewise if as you claim, the prior art already discloses the specific computerized process the inventor claims to have invented then you have a 102 problem. But there can be know doubt the claims are directed to an “Integrated technological process” and therefore fully statutory subject matter. Even Judge WU admits the claims are a technological process, he just conveniently leaves out the “integrated” part. ( Just like you “MM” are famous for doing). Presumably because dealing with such an “Integrated” analysis would change the legal outcome of his opinion and prevent him from tanking another software patent. Any other questions?

        1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:

        obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence;

        obtaining a plurality of sub-sequences of timed phonemes corresponding to a desired audio sequence for said three-dimensional characters;

        generating an output morph weight set stream by applying said first set of rules to each sub-sequence of said plurality of sub-sequences of timed phonemes; and

        applying said output morph weight set stream to an input sequence of animated characters to generate an output sequence of animated characters with lip and facial expression synchronized to said audio sequence.

        1. 39.1.2.1

          Just like you “MM” are famous for doing

          Shall we talk about what you’re “famous for doing”, Mr. Expert?

          You seem to want to have that discussion.

          Let everyone know if you really want to have that discussion.

  6. 38

    Replying to this from Malcom:

    “‘English is a form of math, so anything that can be described in English (just as computer science can be described in the language of math) is abstract and not patentable.’

    I don’t believe these arguments ad absurdum are persuasive to anybody when it comes to defending computer-implemented information processing patents.

    The arguments against software patents may seem existential to you if you rely on such patents for your existence. But they’re not existential to the 99.9999% of society who doesn’t rely on them and who sees them as a blight on the patent system.”

    Several points. First, since you are able spot a formal argument, I find it interesting that you don’t resort to logic to actually attempt to disprove the argument. Instead you take the easy out and call it “[un]persuasive”.

    Second, my personal ability to support myself is irrelevant to the discussion. Why do you bring it up? How does it bear on the _truth_ value of what is being argued (my own view is that it shows a curious preoccupation with the income of others). But since you want to make this personal, fine. I think the Alice trend makes skilled patent attorneys who actually understand their field more valuable than ever. If I were hiring an attorney, I’d be danged sure they were an expert in their field. I wouldn’t hire a chemist to do a computer scientist’s job.

    Third, the point about English and Mathematics is that calling something “math” adds nothing the debate. Physical Chemistry is notorious for being math intense … thermodynamics, for instance, can’t be discussed without involving “math”. To call computer science “math” does nothing. We can describe any field of endeavor as “a thing that can be studied and discussed using an agreed-upon set of abstractions like symbols, rules, and conventions”. Human languages are such a set. So are computer programming languages, pseudo-code shorthand conventions, etc.

    1. 37.1

      Should be invalid? No.

      In spirit of the law is invalid? No.

      Could be invalidated by a district court judge with a minimal of effort? Yes.

      As more district court cases come out, I’m feeling more justification for the approach of pinning down, in claims, a solid technical environment for software-implemented inventions. Too many patent attorneys have been trained for the “maximum breadth” mentality. Consider all the technical things that an infringer would have to implement that alone are not new, and include in claims as needed. Define the context of the “problem” being solved. Technical details that don’t _practically_ narrow the set of possible infringers should be included liberally. But this requires someone knowledgeable in the art.

      1. 37.1.1

        Consider all the technical things that an infringer would have to implement that alone are not new, and include in claims as needed.

        You are completely missing the critical point of these recent cases if you think that adding old steps that “infringers have to implement” are going to help you.

        Technical details that don’t _practically_ narrow the set of possible infringers should be included liberally.

        Why? To confuse people? To impress them with your knowledge of “technical details”?

        How about you just describe the “technical” improvement to the old machine in objective structural terms like those “arrogant” practitioners in other fields do?

        1. 37.1.1.1

          MM: How about you just describe the “technical” improvement to the old machine in objective structural terms like those “arrogant” practitioners in other fields do?

          To repeat myself from a post I just made: suppose I invent a novel image-processing algorithm that improves the playback fidelity of an existing Blu-Ray player when playing existing Blu-Ray discs on an existing HD television. I implement that algorithm as a firmware update to a certain brand of Blu-Ray player (because that brand uses firmware-upgradable system boards).

          What, if anything, is patent-eligible about that invention? Is it nothing, or is there something patent-eligible about that, if claimed properly? There are zero hardware differences between the old Blu-Ray player and the improved one; all the changes are in the firmware stored in the machine. Do you think that’s patent-eligible under 101?

          1. 37.1.1.1.1

            What, if anything, is patent-eligible about that invention?

            Nothing.

            I realize that might seem like a big problem to you if you are personally invested in the existence of such patent claims

            It doesn’t seem like a big problem to a lot of other people however. The problems presented by granting claims on “new math” seem far greater.

            Copyright your specific software and sell it. Set up a subscription program and sell it. And then when someone else comes up a better algorithm, watch your profits shrivel up and disappear. Or, because you are really smart, improve it yourself a couple months later and sell the new update.

            1. 37.1.1.1.1.1

              MM, may I respectfully disagree. The Supreme Court has time and again been careful to note that the application of the nonstatutory to the statutory to improve the statutory is patentable subject matter.

              Diehr is the best example. The process there was improved, and the math was applied even though the court openly declared math to be nonstatutory.

                1. “On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101. “

            2. 37.1.1.1.1.2

              If I had instead installed a new ROM chip inside the Blu-Ray player to make it work better, instead of using firmware, would that be patent-eligible?

              1. 37.1.1.1.1.2.1

                Not to me. It is still software.

                Now you should be able to patent the ROM as a new type of ROM if it uses something new to instead of the fuses/direct wiring currently used.

                But otherwise you are just patenting the software written into the ROM.

                1. Did you read the quote from Diehr that Ned cited above?

                  Do you actually believe a Blu-Ray player that has clearer output is not “an improvement to a machine” as those words are used in 35 USC 101?

        1. 37.1.2.1

          How do you read “technical environment” and “technical details” as meaning “intended use”? As two people experience in patent examination/prosecution, if either of us wants to refer to an “intended use” or “field of use”, we can do so directly, just as you have.

          As I’ve said above, no drafting “art” will can (or should) fix an unpatentable invention. If, however, we are talking about patentable subject matter, I don’t think you, a US Patent Examiner, need an explanation of the value of clarity and purposeful specificity in patent claims.

          1. 37.1.2.1.1

            “How do you read “technical environment” and “technical details” as meaning “intended use”?”

            I didn’t use the word “intended”. You did. Nor did I mean “intended use”. I just said, “field of use”. Both of those terms are terms of art in the patenting art and they have different meanings and are used in different contexts.

            “As I’ve said above, no drafting “art” will can (or should) fix an unpatentable invention. ”

            I’m glad to hear you say that. Though I am dismayed to hear you tell us all about how adding a “a solid technical environment ” (aka a field of use) is the cat’s meow for software patenting.

            “Consider all the technical things that an infringer would have to implement that alone are not new”

            That is exactly how you ensure that whatever limitations you’re adding are insufficient to instill patent eligibility. Your end goal is to still Effectively cover the abstract idea.

            “If, however, we are talking about patentable subject matter, I don’t think you, a US Patent Examiner, need an explanation of the value of clarity and purposeful specificity in patent claims.”

            I thought you were talking about 101, in your original post that is, not “clarity and purposeful specificity”.

            1. 37.1.2.1.1.1

              I doubt you’re truly “dismayed” by anything posted here. You’re like MM, you enjoy arguing and hearing yourself talk. Whatever. You ignore the fact that I recommend including well-chosen features that actually limit the claims. That precludes “field of use” recitations, which you know don’t narrow a claim.

              There’s nothing remarkable in the idea of fleshing out an invention, especially when the courts are invalidating claims as being directed to abstract ideas. For example, if an inventor has a new caching algorithm, then a claim should recite the algorithm performing caching functionality in a new way. That wouldn’t be a “field of use”, it would be the invention “doing something”. Just like a new method of drilling would be expected to have actual drilling steps, albeit with some aspect of novelty.

              Check out your own Manual, 2103, which treats “intended use” and “field of use” as equivalent: “language that may raise a question as to the limiting effect … statements of intended use or field of use …”. I’m truly curious about the different meanings these have in different contexts.

              And oh yes, my goal is definitely to cover an abstract idea, and other non-abstract stuff as necessary to do the first part. And Prometheus and Alice permit this. “a court must first “identif[y] the abstract idea represented in the claim,” and then determine “whether the balance of the claim adds ‘significantly more.’” (Alice). “At some level, “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id., at ___ (slip op., at 2). Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept.” (Alice citing Diehr).

              1. 37.1.2.1.1.1.1

                And oh yes, my goal is definitely to cover an abstract idea, and other non-abstract stuff as necessary

                The non-abstract stuff is always necessary. You’re in pretty good shape when that non-abstract stuff is new.

                an invention is not rendered ineligible for patent simply because it involves an abstract concept.”

                No doubt. There is a big difference between a claim that “involves” an abstract concept, on one hand, and a claim that does little more than recite the abstraction and a field of use, on the other.

                1. “You’re in pretty good shape when that non-abstract stuff is new”. There you have, in a nutshell, the raw crux of this issue. Breadth. Who gets something and how much do they get. Now give me a workable definition of “non-abstract”, and we can all get back to work. And if you manage it, I’m pretty sure we won’t agree it’s how things should be.

              2. 37.1.2.1.1.1.2

                “You ignore the fact that I recommend including well-chosen features that actually limit the claims”

                No, I’m not ignoring that. I’m glad you do so recommend that. However, you stated specifically that you wanted these limitations to be the ones that an intended infringer would have to do anyway (to use the judicial exception). That is bad news.

                “That precludes “field of use” recitations, which you know don’t narrow a claim.”

                Nah brosef, field of use limitations most certainly do narrow a claim. That’s why Flook and others like him back when tried using them. They figured, as it appear(ed/s) you do today, that putting those in would make things all fine and dandy re 101.

                “There’s nothing remarkable in the idea of fleshing out an invention, especially when the courts are invalidating claims as being directed to abstract ideas. ”

                I agree, Flook and others pioneered it back in the day :)

                “algorithm performing caching functionality in a new way. ”

                Algorithms “perform” catching functionality? Interesting.

                “That wouldn’t be a “field of use”, it would be the invention “doing something”.”

                That depends on whether or not you consider “the invention” to be “the algorithm” I’d say.

              3. 37.1.2.1.1.1.3

                “Check out your own Manual, 2103, which treats “intended use” and “field of use” as equivalent: ”

                You’re hard of reading if you think that passage is “treated” as “equivalent”. They simply raise the same concern in one context. They’re not “equivalent”.

                “I’m truly curious about the different meanings these have in different contexts.”

                Read Flook. Then read a case about intended use limitations. Then you’ll be all good to go. :)

              4. 37.1.2.1.1.1.4

                “And oh yes, my goal is definitely to cover an abstract idea, and other non-abstract stuff as necessary to do the first part.”

                Then you’re doing exactly what Flook told you not to.

                “And Prometheus and Alice permit this.”

                Nah bro, you’re not understanding those cases.

                But look bro, have your final say, I wish you g l in your adding in some field of use limitations.

          1. 37.1.3.1.1

            Night, but Diehr was a process that did not simply have numbers in and numbers out. It is not authority for overturning Flook on its facts.

        1. 37.1.3.2

          To me, the algorithm itself seems novel. The Flook algorithm was assumed not to be. As long as the algorithm described in the claims is not old, in other words, as long as the claims aren’t directed to automation of a known process for optimizing dies, then this looks patentable to me. However, if I teased the claims apart and found that they only represented something like “fitting the most dies that geometry allows” or something like that, my opinion might be different. In other words, I’m assuming that there is novelty in the optimization logic. Sadly, because of the state of the law today, if I were giving a paid opinion, the conclusion would be qualified.

          From Flook: “Respondent’s process is unpatentable under § 101 not because it contains a mathematical algorithm as one component, but because, once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention. Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. “

          1. 37.1.3.2.1

            Mr. Buckets, yes, Flook was confusing in that all the court was really trying to say about “assuming to be in the prior art” was that for novelty purposes, nonstatutory subject matter would be given no weight. But this is the analysis of Hotel Security, is it not? – where the nonstatutory subject matter is given no weight and invention must be in the statutory.

            It is not really a question of whether the algorithm is new or whether the algorithm is old. It is deemed old regardless of whether it is in fact new. Because it is nonstatutory, not because it is old, it is to be given no weight.

            This in fact is the analysis of Funk Brothers also.

            So Flook is perhaps the 1st case after Benson that looked to invention in the statutory subject matter. Prometheus and Alice are very much in accord with Flook, and for that matter, with Benson.

            Of course, the case is way out of step with all of these cases is Bilski. That case through a monkey wrench into the law of 101, from which we are still trying to recover.

    2. 37.2

      Not sure.

      One thing the flowchart implies is that it very nearly matches the algorithms used for tiled window managers used back in the late 1980s for an optimum display of windows without overlapping.

      The only new constraint is the circular area available.

      1. 37.2.1

        Wow. More arstchnica patent analysis.

        Again, lay out the exact claim language and your reference(s) that anticipate or render obvious the claims for us all to see.

        This BS pontificating about how X Y and Z were done way back when are tired and worn out.

        1. 37.2.1.1

          BS pontificating about how X Y and Z were done way back when are tired and worn ou

          But your pontificating is super fresh!

          There is nothing at all surprising about some information processing steps being done “way back” and co-opted or “re-invented” again in the context of yet another one of the infinite variety of contexts where logic is useful.

          Computers are really old. Processing information is really really old. Using computers to process information is really old. Using math as part of that infomration processing is really really old.

          What’s surprising is when you strip out the “new” abstract labels given to the data being processed and recited in the claim and you find that the logical steps are, in fact, new (at least with respect to the art that was published — just a microscopic fraction of the art that actually exists and is searchable by the PTO).

          1. 37.2.1.1.1

            It points out one of the problems of searching for prior algorithms…

            The original development had nothing to go by, so they used terms of the field – in this case, tiling images.

            Were there earlier tiling algorithms? yes. Going back to the middle ages – that is how farmland was handled in the commons – each farmer was to get an equal share, yet access to that farmland was not always easy. Leading to some rather strange looking tiling.

            link to en.wikipedia.org

            The engineers working on chips very likely never used any tiling window managers, nor did they have any experience at how tiling window managers worked… so they use different terms of their field.

            Yet the math involved is redeveloped (aka, “reinventing the wheel”).

    3. 37.3

      1. A computer-implemented method for optimizing a number of dies that can be fabricated on a wafer, the computer-implemented method comprising:
      receiving input variables comprising: a minimum die width (xmin), a minimum die height (ymin), a target aspect ratio, a target die area (Atarget), a wafer area (Aw), an edge band width (web), and a scribe width (ws);
      executing a die number optimization (DNO) routine to determine a maximum number of dies (Nmax) for the target die area (Atarget), wherein the DNO routine comprises:
      iteratively checking each die shape in a first list of die shapes to determine which ones of the die shapes have a maximum number of dies (Nmax) for the target die area (Atarget), and
      generating an initial result list of die shapes that have the maximum number of dies (Nmax) for the target die area (Atarget);
      executing a die size optimization (DSO) routine to determine (1) a list of die shapes having a maximum die area (Amax) corresponding to the maximum number of dies (Nmax), (2) a first list of optimized die shapes that have a maximum area utilization (AU) for a decreased target die area (Atarget), and (3) a second list of optimized die shapes that have a minimum area utilization (AU) for an increased target die area (Atarget);
      outputting a candidate list comprising a plurality of entries including die shapes from the initial result list that have the maximum number of dies (Nmax) for the target die area (Atarget), die shapes from the list of die shapes having the maximum die area (Amax) corresponding to the maximum number of dies (Nmax), the optimized die shapes from the first list of optimized die shapes, and the optimized die shapes from the second list of optimized die shapes; and
      selecting one of the entries from the candidate list that will result in the maximum number of dies (Nmax) on the wafer.

      Observation:

      1. All math.
      2. Throughout, how critical steps are performed is not claimed, just their results.
      3. The final step specifies no criteria. One selects a die shape that either maximizes the number of dies for a targe or, alternatively, the die shapes that maximize the die area. In either case, the output is a series of number because a shape is defined by a plurality of interconnected lines. This is defined by some geometry, which is a series of numbers.

      There is no requirement to actually do anything with the selected die shape. All of the claims have this characteristic.

      Because the claim is all math and outputs a number, Flook controls. How the PTO ever allowed such a claim is a wonder. What were they smoking? Did they think Flook was overruled or something?

      Ahh! I see: State Street Bank, the case of cases, the case that shall live in infamy.

      1. 37.3.1

        Compare Method for printed circuit board panelization
        US 20050086616 A1

        1. A method for performing Printed Circuit Board (PCB) panel optimization, comprising the steps of:
        performing a panel dimension loop that goes through a plurality of possible panel dimensions;
        performing an array length loop that goes through a plurality of array lengths;
        performing an array width loop that goes through a plurality of array widths; and
        calculating a panel efficiency factor for each iteration of each of the loops in order to determine a panel layout.

        What differs? nuthin much…though both read to us as brute force methods anyway. No need to comment on eligibility/validity…butnew in 2005? Yikes.

        1. 37.3.1.1

          Claiming the math in the abstract, even limited to a particular use, has not been patentable since Flook.

          “A mathematical formula in the abstract is nonstatutory subject matter regardless of whether the patent is intended to cover all uses of the formula or only limited uses. ” Diehr at note 14.

  7. 36

    We should have another data point shortly when the petition for cert filed by ABL in their case versus SmartGene is denied by the Supreme Court. Conference on that petition is scheduled for today:

    link to supremecourt.gov

    More here:

    link to patentlyo.com

    I can’t say that a part of me doesn’t want to see the Supreme Court take the case just so they can drop another well-deserved thermonunclear bomb on the claims but, hey, you can’t have everything.

    1. 36.1

      I would prefer they grant cert in this (McRO) case, although it will be a long time before it gets that far. MM I would be willing to bet you $1,000 the S.Ct would reverse Wu’s rationale (whether the claims are upheld or not due to another reason I can’t say). Is there some type of bitcoin escrow service where we each can anonymously put up $1,000? Maybe there’s a patent on that somewhere we can refer to to learn how that technology works.

    2. 36.2

      You poorly present parts of a legitimate viewpoint, one I’ve had since I started in this field. The viewpoint is that a lot of bogus patents have been (and continue to be, but at a much lower rate) issued by the PTO. Unfortunately, you’re using that as a pretense to grind your axe with an area of technology that, probably from ignorance, you consider unworthy of any patent ownership rights. I suspect it’s a form of arrogance, as in “chemistry/physics/EE/bio/etc are hard and true sciences, whereas computer science is just a bunch of people automating old and known things, or doing things that are easy and obvious to any observer” (I’ve encountered this opinion from non-CS scientists outside the patent field).

      As I’ve said before, non-computer-science practitioners and examiners have managed to team up to push through a lot of patents that those trained in the field of computer science consider obvious if not downright old. Part of the problem is that such practitioners (and examiners) would gloss over their inability to understand an invention by using (or permitting) obtuse and overly-abstract language. If the meaning of a claim is hard to discern, it’s also hard to say it’s old or obvious. The result was a lot of abominable patents being issued. Imagine the quality outcome if chemistry-related patents had been prosecuted and examined by computer scientists.

      I’d like to see the courts continue to weed out those bogus patents (I’ve had clients face some that had no business issuing). As an attorney, though, I’d like to see it done with the backing of rules/precedent that can be applied in a principled way. The current law allows too much discretion by judges and patent examiners. A gateway tool to stop overbroad patents at the courthouse door is fine with me, but better guidance is needed. I’m hoping that some Fed Cir decisions will give us some examples of what _is_ statutory, but that might take a while.

      1. 36.2.1

        I suspect it’s a form of arrogance, as in “chemistry/physics/EE/bio/etc are hard and true sciences, whereas computer science is just a bunch of people automating old and known things, or doing things that are easy and obvious to any observer”

        It’s unfortunate that you harbor this bias. If anything, the “arrogance” comes from people like you who seem to assume that people disagree with you because “they don’t understand how computers actually work”. That might be true of some people who oppose software patents but it’s certainly not true of the many computer programmers who oppose them.

        I’d like to see it done with the backing of rules/precedent that can be applied in a principled way.

        Were you complaining about the lack of “principles” when these claims were shoehorned into the system by the unsupported pronouncement that “algorithms are the essence of electronic structure”? Or that compositions of matter and apparati in a certain field would be examined as if they were method claims because “stakeholders want it that way”?

        I doubt it.

        I’m hoping that some Fed Cir decisions will give us some examples of what _is_ statutory,

        A new machine described in objective structural terms that distinguish that machine from the prior art is a pretty good bet. You really need a Federal Circuit decision for that?

        You’re not going to get a set of “magic words” that allow you to protect ineligible subject matter, if that’s what you are looking for. And information processing “technology” is always going to implicate the ineligible because information itself is ineligible subject matter for patent protection.

        There are some broad distinctions that can be drawn between different types of information processing, to be sure. David Stein made some such distinctions in the preceding thread where Dennis asked for examples of non-BM software. Those distinctions might be a decent start (or not — look at them and decide for yourself) but there’s more that’s needed. In particular what’s needed is a standard lexicon for drafting claims and interpreting the prior art in the area of information processing. If algorithms are to become eligibile subject matter, exactly how are they to be described so as to be examined fairly? When can a patent be obtained by adding, say, a single logical step to a pre-existing set of logical steps? What degree of specificity is required when describing that logical step? (certainly it can’t something as abstract as “follow additional logical steps” or “follow appropriate logical steps” which is what the claims in this McRo case seemed to be reaching for).

        1. 36.2.1.1

          “A new machine described in objective structural terms that distinguish that machine from the prior art is a pretty good bet.”

          You’ve basically said that much of what is on a computer, cell phone, smart phone, tablet, etc. isn’t patentable, as much of what’s being done there won’t have changes to an “objective structural term”. For instance, encryption involves — at some level — pure mathematical manipulation of data, and nothing on the computer/phone physically changes. Yet, a claim directed to a computer/phone that performs encryption should be patentable under 35 USC 101, until the day Congress comes along and makes it not patentable.

        2. 36.2.1.2

          “It’s unfortunate that you harbor this bias.” It’s not a bias. I offer no judgment as to relative merits of technical fields. I offered an unproven theory as to why some people would preclude all “software patents” (whatever that is) in a way that isn’t really technology neutral. Yes, you’re right, that group includes many computer scientists.

          Finally, some constructive dialogue: “In particular what’s needed is a standard lexicon for drafting claims and interpreting the prior art in the area of information processing. If algorithms are to become eligibile subject matter, exactly how are they to be described so as to be examined fairly? When can a patent be obtained by adding, say, a single logical step to a pre-existing set of logical steps? What degree of specificity is required when describing that logical step? (certainly it can’t something as abstract as “follow additional logical steps” or “follow appropriate logical steps” which is what the claims in this McRo case seemed to be reaching for).”

          Some ground for agreement. But, there is a standard lexicon. There are whole dictionaries dedicated to computer science terminology. Skilled practitioners know that lexicon and use it to the benefit of their clients, the Patent Office, and society to fairly claim what was invented and nothing more. For instance, if a claim recites a “k-means clustering algorithm”, it’s part of the CS “lexicon” that is readily understood by artisans. There’s no shortage of standard language used by computer scientists to discuss their field. Take a mechanical engineer, for example, give that person a software-based invention to draft, and the patent likely won’t use or leverage the appropriate technical jargon.

          1. 36.2.1.2.1

            There are whole dictionaries dedicated to computer science terminology.

            The existence of tomes for translating a lexicon into English is not a sign that the lexicon is “standard.”

            There’s no shortage of standard language used by computer scientists to discuss their field.

            That doesn’t sound like a “standard lexicon”. Sounds like the opposite.

            Skilled practitioners know that lexicon and use it to the benefit of their clients, the Patent Office, and society to fairly claim what was invented and nothing more. For instance, if a claim recites a “k-means clustering algorithm”, it’s part of the CS “lexicon” that is readily understood by artisans.

            That’s because it’s an old algorithm that was given that name by somebody fifty years ago. But the name “k-means” is completely arbitrary as far as I can tell. Coulda been an “f”. Coulda been a “z”. Until the algorithm was defined and declared to be “standard” the term “k-means clustering algorithm” was about as uninformative as calling it a “turkey-means clustering algorithm.”

            It’s kind a funny that you chose that example because it’s a good example of how patents and “algorithms” mix like oil and water.

            The term “k-means” was first used by James MacQueen in 1967,[1] though the idea goes back to Hugo Steinhaus in 1957.[2] The standard algorithm was first proposed by Stuart Lloyd in 1957 as a technique for pulse-code modulation, though it wasn’t published outside of Bell Labs until 1982.[3] In 1965, E.W.Forgy published essentially the same method, which is why it is sometimes referred to as Lloyd-Forgy.[4] A more efficient version was proposed and published in Fortran by Hartigan and Wong in 1975/1979

            Who’s the “inventor” of the “k-means” clustering algorithm?

            I’ve got a new algorithm called a ky4-means clustering algorithm. It’s similar to the “k-means” clustering algorithm Is it eligible for patenting? I “do it on a computer.” Eligible for patenting now? I use it to figure out when to cut my dog’s toenails. Eligible for patenting now? And is it patentable over the “k-means” clustering algorithm? My algorithm includes a y1, y2, y3 and y4 and I don’t see any suggestion in the art to use those letters.

            Take a mechanical engineer, for example, give that person a software-based invention to draft, and the patent likely won’t use or leverage the appropriate technical jargon.

            Leveraging technical jargon? For what purpose are you “leveraging” jargon?

            1. 36.2.1.2.1.1

              MM you and your eligible business. Again Rich’s plan was to let it fall through 101 (rather than doing a 102, 103, 112 analysis as part of 101).

              That is how Rich designed the 1952 Patent Act. The idea was so what if they chuck in something that makes it eligible, it will still fall under 102, 103, or 112. You have provided one example where you believe that won’t work.

              So, your hyperbole where you try to equate eligible with patentable is —-as is per usual–absurd.

              1. 36.2.1.2.1.1.1

                “Again Rich’s plan was to let it fall through 101”

                Oh, well if it was Rich’s plan then pshaw, who cares about what congress’s plan or the USSC’s plan is? Those pesky branches of government just don’t carry the same weight that the name “Rich” does.

            2. 36.2.1.2.1.2

              In your rush to participate in “sport argument”, you don’t make any relevant addition to the mundane and undeniable fact that the field of computer science has a huge lexicon of terminology. Why you feel the need to dive into an example of a technical term is beyond me. If you say “K means” to a bunch of computer scientists, where will be a high level of agreement as to what it means. That’s true for many terms. A draftsperson who doesn’t use the right terms is likely to produce a lower quality claim.

              “I’ve got a new algorithm called a ky4-means clustering algorithm. It’s similar to the “k-means” clustering algorithm Is it eligible for patenting? I “do it on a computer.” Eligible for patenting now? I use it to figure out when to cut my dog’s toenails. Eligible for patenting now? And is it patentable over the “k-means” clustering algorithm? My algorithm includes a y1, y2, y3 and y4 and I don’t see any suggestion in the art to use those letters.”

              As to eligibility of your hypos, there’s not enough information. Without more, the answers are “maybe”. Certainly an unobvious improvement to an implementation to K-means that makes it faster or more accurate would “improve the functioning of the computer itself”, which Alice suggested would be patentable. As to “I don’t see any suggestion in the art to use those letters”, that’s because no one skilled in the art cares what letters are used, they care about how the algorithm has been improved.

      2. 36.2.2

        I think “software” is now ubiquitous to the point where it’s hard to discuss true “software” any more. For instance, in a base station or other device that provides access to a wireless network, a lot of the processing being done is being done in “software”. The engineers themselves are grounded in “hardware”, but the way things are implemented these days is in software. There’s still “hardware” there, in that there are RF transceivers, power amplifiers, RF coupling, etc., but much of the innovation still takes place in software.

        Plus, “software” is useless without hardware. Without hardware, software is just ones and zeros on a medium. What we’re really discussing is a machine programmed to perform functionality by software.

        Separating “software” out into some abstract (for lack of a better word) area is a straw man — it makes for good reading, but it’s not the way things work in the real world.

        I agree that some patents that have software in them are garbage, but that’s true of a lot of patents. That requires an increase in training in the PTO.

        1. 36.2.2.1

          PatentBob: “software” is useless without hardware. Without hardware, software is just ones and zeros on a medium.

          Ah, now we’re getting somewhere.

          What we’re really discussing is a machine programmed to perform functionality by software.

          Depends on the claim. Sometimes the claim recites “computer readable medium.”

          Here’s a thought: instead of breaking the patent system by trying to justify patents to “ones and zeroes” or (worse) the functionality conferred by that information upon a generic computer capable of understanding the information, why not promote progress in improved computer hardware by using the legal tools long established in patent systems around the world? Claim your improved hardware in objective structural terms that distinguish your improved hardware from the old hardware and most of these eligibility issues just vanish.

          Keep the “ones and zeroes” out of the patent system. It’s information. It doesn’t belong there.

        2. 36.2.2.2

          PatentBob, I wish you and others but stop talking about the courts implicating the patenting of larger machines or processes even where novelty is in software. They have done nothing of the kind, and such have clearly been eligible since Diehr.

          1. 36.2.2.2.1

            Idk about that ned. A claim can absolutely be ineligible if the claim is to a “larger” machine or process if the novelty is in some software. Nothing in diehr, where there was an allegedly novel final step of autoopening the mold when curing was done says otherwise. Sorry brosefus.

            1. 36.2.2.2.1.1

              Well 6, there is the bit about the nonstatutory subject matter modifying the statutory subject matter so as to improve it.

              I take it that that is your point?

              1. 36.2.2.2.1.1.1

                “there is the bit about the nonstatutory subject matter modifying the statutory subject matter so as to improve it.”

                Of course there is something along those lines in Diehr. The “nonstatutory subject matter” was what they used to enable the auto-opening happening at the proper time so as not to over or under cure the product. And they had tossed that subject matter in the claim thereby causing a ruckus that never needed to be raised imo.

                I’m pretty sure my point is merely: A claim can absolutely be ineligible if the claim is to a “larger” machine or process if the novelty is in some software. Which is opposite what you originally said.

          2. 36.2.2.2.2

            The whole point of an improved system with new software is that it is a system. It’s not just disembodied software “per se” (to use the EPO phrase), floating around in the ether. The software is part of a running system, a machine doing work. The patents that are being struck down are instances of computerized systems with novel software and old hardware components, both for the human interface and for the processing itself.

            jesse, in an earlier post in this thread, said “I have never said what is produced by the interfaces or attached machines cannot be patented.” In a computerized system, you have the actual processing unit that does the data crunching — and then there are the interface devices that facilitate interaction between the human and the processing unit. Keyboards, mice, displays, and the like.

            In the patents that have recently been addressed by courts, the interfaces (primarily output interfaces, namely displays) are caused to behave differently due to the novel instructions stored in the computer. I’m not seeing why that different behavior shouldn’t be patentable, but let’s take it as a given that many people think it shouldn’t be.

            Should improved noise-cancelling headphones be patent-eligible? Suppose I come up with a novel noise-cancelling algorithm that uses the existing audio components of a pair of noise-cancelling headphones to superior effect, do you believe that should be patent-eligible? If no, why not? If yes, please explain why given that the only change to the prior headphones was in the instructions stored in memory and processed by the processing unit that controls the output interface?

            Equivalently, suppose I invent a novel image-processing algorithm that improves the playback fidelity of an existing Blu-Ray player when playing existing Blu-Ray discs on an existing HD television. I implement that algorithm as a firmware update to a certain brand of Blu-Ray player. What, if anything, is patent-eligible about that invention? Is it nothing, or is there something patent-eligible about that, if claimed properly?

            1. 36.2.2.2.2.1

              Noise canceling headphones will be using hardware only and thus patentable.

              Digital processing cannot do it – too slow, and the discontinuous nature of digital processing prevent it.

              As far as the Blu-Ray player? no.

              Software should not be patentable.

              1. 36.2.2.2.2.1.1

                Jesse, just for the sake of your education, in a method, the means are substantially irrelevant. The only requirement is that in effect be produced.

              2. 36.2.2.2.2.1.2

                jesse: Noise canceling headphones will be using hardware only and thus patentable.

                Digital processing cannot do it – too slow, and the discontinuous nature of digital processing prevent it.
                Suppose I’m a genius and I can implement my improved algorithm via digital signal processing. Not patent-eligible?

                Because I have a very hard time believing that the intent of Congress is that custom analog data processing is patent-eligible but custom digital data processing isn’t.

            2. 36.2.2.2.2.2

              Of course, slot guy, as 6 aptly pointed out, the software must be improving the operation of the computer system qua computer system, and not simply be using the computer system for nonstatutory purpose.

              1. 36.2.2.2.2.2.1

                ^^^ this is not correct – see Diehr and recognize that no piece of equipment was improved “qua equipment.”

                Not the thermocouples.
                Not the autoclave.
                And not in the Ned-IMHO version of realty** the computer.

                **of course we need not beat the dead horse that Ned’s view of software is simply wrong on the many levels of which I have already put in the table for discussion. Such need not even be entertained to see that Diehr wrecks the attempted recreation of ‘reality.’

                1. There is no strawman in my argument Ned.

                  Quite the opposite – you are not addressing the point offered for discussion, instead all that you are doing is attempting NOT to discuss it by calling it a strawman and wanting to move on without discussing the point.

                  Such is just another form of the internet shouting down.

                  Discuss the point instead of shouting it down. Stop the name calling.

                2. “There is no strawman in my argument Ned.”

                  You didn’t even bother to make an argument. You made a statement followed by a command. As is typical.

                  Though obviously even your command doesn’t “hold weight” as the claimed system was certainly “improved” by being a curing station that auto-opened and didn’t burn the rubber being cured. Sorry, there simply was nothing of the sort prior to this (allegedly by the patent applicant and the USSC anyway).

                3. 6,

                  It is apparent that the trouble you have in understanding my arguments is solely in your own mind.

                  Let’s not have your meta-bickering cloud the point of discussion here. Curing stations that auto-opened were old, 6 (that point of novelty evident in auto-matically opening doors in other arts). The “point of novelty” as Ned likes to use that term was SOLELY in the software. There were no “mechanical” improvements. Yes – “so that it did not burn” was a pure functional result of the software improvement.

                  You seem to confuse facts with my saying they are facts. They are facts even without my say so.

                4. “Curing stations that auto-opened were old,”

                  Well be sure to tell us all about your evidence of this. Because the USSC didn’t get the memo.

                  Then you can give us evidence that auto-opened curing stations that didn’t burn the rubber inside them were also old. And clue the USSC in on that as well. Back in the 80’s. Oh wait, no you can’t.

                  “(that point of novelty evident in auto-matically opening doors in other arts)”

                  There is a “point of novelty” which is “evident” in doors in other arts? Sounds like gibberish to me.

                  From what you say it also appears that you obviously still have no clue what “point of novelty” means. Though maybe you’re starting to catch on at long last and get with the program. Points of novelty are not “evident” in items in other arts. Point(s) of novelty are the points in a claimed invention where the claim departs from that which was known in a given reference. As we’ve discussed before.

                  And yes, I remember you insist on using your own made up definition of the phrase. There’s no point in rehashing that. If you don’t like my definition of the word then fine, simply replace all of my usages of the term with the definition I’ve given you. And then you can replace all your usages of the term with your special made up definition and we can each talk about completely different things, as per usual when the conversation turns to this subject.

                  “The “point of novelty” as Ned likes to use that term was SOLELY in the software.”

                  Ned likes to use the term properly iirc. And as has been pointed out to you, there were many many “points of novelty” in the Diehr claims under Ned’s use of the term. That is a result of there being several references on the record, each of which lacked different things. Some of them had the equation. Some of them had the thermocouples and thermocouple data (though not as good of a setup as the applicant had made). Some of them had some auto-opening. But none had auto-opening from temperature measurements such that the rubber wouldn’t burn all together. I’m sorry brosef, there just is no evidence of such on the record. I know you ha te the f out of this, but it’s just the way it is. Live with it already for goodness sake.

                  “There were no “mechanical” improvements. ”

                  Nobody said it had to be a “mechanical” improvement.

                  “Yes – “so that it did not burn” was a pure functional result of the software improvement.”

                  K, so what? Doesn’t matter one tiny whit so far as I can see. And as a side note that “pure functional result” wasn’t even in the claim, it was just part of what they were arguing was so gr8 about their “invention”.

                  And besides all that which takes us hither and thither for no reason Diehr was a case about whether the abstraction at issue was preempt or not. I.e. was the Arrhenius equation being preempt outright or even at risk of being preempt? But Diehr only claimed one tiny use of the arrhenius equation out of gazillions of uses thereof. And that’s not to mention that the use was squarely in the useful arts. Thus there simply was no grounds to deny eligibility presented during the case. And that’s the real story behind Diehr no matter how much you want to try to dig into mundane details for trying to support an anti-law agenda.

                  “You seem to confuse facts with my saying they are facts. They are facts even without my say so.”

                  Yeah well you confuse facts with things you make up in your head and have no evidence for what so ever. So maybe we can call it a wash. That said, I’m willing to give you any facts you’d like to attempt to amateurishly find for this thread which you can show using evidence. Maybe you will finally find the mythical reference that shows all elements of Diehr except “the software” and will find all those facts for us from that reference.

                  I have no more time to spend today on your amateur understanding of Diehr. Gl and have your final say.

                5. 6 wrote: Nobody said it had to be a “mechanical” improvement.

                  And besides all that which takes us hither and thither for no reason Diehr was a case about whether the abstraction at issue was preempt or not. I.e. was the Arrhenius equation being preempt outright or even at risk of being preempt? But Diehr only claimed one tiny use of the arrhenius equation out of gazillions of uses thereof. And that’s not to mention that the use was squarely in the useful arts.

                  Taking those points in turn, as applied to the Blu-Ray player example:
                  a) There is no mechanical improvement to a Blu-Ray player with an improved playback routine in firmware;
                  b) Whatever math would be used by the improved playback routine would not be claimed so as to preempt that math for all uses, only for the improved playback routine;
                  c) I would assume improved playback from a Blu-Ray player (plus video display) is squarely in the useful arts. No?

                  Why wouldn’t the same analysis you use in Diehr apply to a Blu-Ray player with output that is improved only through software?

                  Further, as applied to the Planet Blue patent:
                  a) There is no mechanical improvement to the computer system being used for automatic lip-synching;
                  b) The morph-weight technique described in the patent was not claimed so as to preempt that technique for all uses, only for the automatic lip-synching;
                  c) I would assume that an improved process of synchronizing audio and video signals is squarely in the useful arts. No?

                  Here again, how does your Diehr analysis differ from the instant case decided (differently) by Judge Wu?

                6. 6,

                  Long winded and completely wrong.

                  You are an examiner, right? You can EASILY figure out that NO new mechanical pieces of the invention were present and that the ONLY “point of novelty” was software.

                  That little item is exactly the crux of the matter here and something that Ned has run away from like forever. Put aside all of your Br’er Rabbit spin and keep your eye on the ball.

              2. 36.2.2.2.2.2.2

                Ned: the software must be improving the operation of the computer system qua computer system, and not simply be using the computer system for nonstatutory purpose.

                Let’s address that. The only thing different about the headphones is the functional behavior brought about by the novel algorithm. The speaker drivers didn’t change, the microphone didn’t change, the cord didn’t change, etc.

                Now, my headphones are not improved for all purposes, just settings where noise-cancelling would be useful. They are not improved for use in quiet settings, for example.

                I don’t think “listening to music without hearing other sounds in the background” is specifically a statutory purpose, but I think (I hope) we would agree that improved headphones should be patent-eligible, even if the only improvement is in the noise-cancelling behavior thereof. The output of the headphones is improved, not the headphones themselves — but that’s the purpose of headphones. Do you agree that this should be patent-eligible?

                Do you think the improved Blu-Ray player should be patent-eligible? I’ve improved its functionality as a video playback device, even though I only did it with firmware.

                If so, what if I also implemented my algorithm as a software driver for laptop computers that have Blu-Ray players? The Blu-Ray playback functionality of the laptop is improved, but the rest of the computer system is unaffected. Patent-eligible or not?

                1. slot guy, I agree with you about the headphones. I was just cautioning that the improvement caused by the software must be in something statutory.

                  Improve the headphones, OK.

                  Improve the music….?

                2. your improved algorithm/software is just an improvement to the algorithm/software. not the machine. the machine still works in exactly the same way.

                3. and the improved result is a displayed image, is what the functionality of a tv was designed for and an image isn’t patent eligible.

                4. Of course it’s what a TV was designed for – to display images. You’re suggesting that a TV that displays better images, or the system of a TV + BluRay player that displays better images, isn’t patent-eligible.

                  By simple extension, because 101 says you can get a patent on “a machine” as well as “an improvement thereof”, your reasoning that “a machine that displays images is not patent-eligible” necessarily implies that neither TVs nor Blu-Ray players are patent-eligible.

                  Conversely, if TVs and Blu-Ray players are patent-eligible, even though their only utility is reading data and displaying images (and sound), then an improvement to those machines directed to that utility is also patent-eligible — regardless of the mechanism whereby that improvement is implemented.

                  You’re trying to have it both ways, but this example neatly demonstrates the flaw in your argument. You don’t actually believe Blu-Ray players and TVs fall outside the useful arts, I’d assume, but there is no valid way to distinguish between the patent-eligibility (under 101) of “a new Blu-Ray player” and “an improved Blu-Ray player.”

                  As I type this, I am holding a Panasonic DMP-BDT320 Blu-Ray player on my lap, face down, and the label lists 8 patents along with the text “& other U.S. and worldwide patents issued and pending.”

                  You’re not going to assert that those patents are all invalid, I hope.

                5. as i tried to explain further down the thread (i responded to a previous post in the wrong place, see 36.2.2.2.2.3.3, you have not made an improvement to the machine. we have a fundamental disagreement which i have tried to explain with the use of jacquard loom/computer punch cards, pianola drums. your machine (blu ray player) is doing the same thing just with different data.

                  i see you have not answered what the difference between a chip rom and a cdrom, dvdrom or bdrom are yet.

                  your invention is not an improved machine it is merely the software that you installed. a machine with new software is what it is. it was designed to accept new software/data irrespective of the type or content of that data. the machine still operates in the same way and produces the same (type/class) of output.

                  unless you have a new peripheral or component (whether internal or external) then machine + new software fails to be patent eligible.

              3. 36.2.2.2.2.2.3

                Thanks, 6, for explaining things to anon about Diehr, and what we mean by point of novelty.

                Of course, I still do not know whether he does not get it, or pretends to not get it. I guess explaining to being who lives on a two-dimensional world that there are three dimensions might be beyond his reasoning power.

                Hopefully, if we explain things to him enough, it will sink in.

                But, thanks, once again.

                1. Ned – you continue to choose to clench tight your eyes here. You refuse to apply the “Point of Novelty” canard in this case in the version that you would (mis)apply it in the 101 discussion.

                  You stand on shifting sands.

            3. 36.2.2.2.2.3

              In the patents that have recently been addressed by courts, the interfaces (primarily output interfaces, namely displays) are caused to behave differently due to the novel instructions stored in the computer.

              What have the displays done differently? The process would, I’m sure run along the lines of,
              computer sends bits down the cable
              display receives bits from the cable
              processing unit within the display decodes the bits received and displays an image

              Has there been any change other than different bits being sent, received, decoded and then a different image being displayed?

              Are you advocating for a patent because there is a different image on the display?

              1. 36.2.2.2.2.3.1

                bert, do you believe either of my examples of improved devices (noise-cancelling headphones or Blu-Ray player) should be patent eligible? If one vs. the other, what’s the distinction between an audio device and a video device?

                1. Noise-cancelling headphones – no. Your software has not improved the headphones.

                  What your software has done however is cleverly transmitted electrical impulses (data) through the audio jack which have cancelled more externally (irritating) generated noise.

                  Basically, you’re playing a different sound through them.

                  You have not changed the headphones in anyway, just a pitcher isn’t changed by putting beer in it instead of water. You’re just using it for it’s intended purpose.

                  By unplugging the headphones have you damaged them?

                  The Blu Ray player and your firmware – no. Your firmware has not improved the Blu Ray player. Your firmware may be better than the earlier version but the machine is still the same machine. It still reads data from the disc. It still processes the same data using the same basic processing operations to produce a stream of data which is compatible with the input of the TV/monitor.

                  There may be a case for eligibility if your firmware blew some efuses, but not necessarily.

                2. At the risk of getting into a debate with a guy who thinks a pitcher of beer isn’t an improvement over a pitcher of water:

                  If I had instead implemented my noise-canceling algorithm by integrating analog circuitry (as jesse suggests above would be patentable), would you say that had improved the headphones? Suppose I have three pair of headphones:
                  A) original noise-cancelling headphones
                  B) new noise-cancelling headphones with firmware update
                  C) new noise-cancelling headphones with analog circuit update
                  and further suppose that both B and C produce identical audio output that is objectively superior to the audio output produced by A, would you take the position that neither B nor C is an “improvement to a machine”? Or would you take the position that C is an improved pair of headphones but B is not, despite the fact that both perform their functionality equally better than the original?

                3. And bert, just to clarify, my headphones example is an existing pair of headphones with a firmware update (in the headphones) to change the headphone output, not headphones connected to a computer running software to change the computer’s audio output. In other words, the headphones have better noise-canceling built in (in firmware) regardless of what source they’re plugged into.

                4. Well, it depends what you’re going to do with the pitcher of beer or water. Drinking isn’t the only thing that can be done with the contents.

                  You have data->processor->data->speaker. It doesn’t matter where you’ve put the processor.

                  Suppose I have three pair of headphones:
                  A) original noise-cancelling headphones
                  B) new noise-cancelling headphones with firmware update
                  C) new noise-cancelling headphones with analog circuit update

                  Do you mean:
                  A) original noise-cancelling headphones
                  B) the headphones in A) with a firmware update
                  C) the headphones in A) with an analog circuit

                  B) no, as per the Blu Ray.

                  C) I don’t know how that can be done without changing the hardware.

                  SlotGuy, are 2 Jacquard looms each with different punch cards which produce:
                  i. different patterns separately patent eligible or patentable?

                  ii. the same pattern separately patent eligible or patentable?

                  iii. almost the same pattern (indistinguishable except by examination with a magnifying glass) separately patent eligible or patentable?

                  For each of the above pairs of punch cards (isolated from the loom) are they separately patent eligible or patentable?

                  Is there a difference between the above Jacquard looms with punch cards and a 3rd loom without a punch card.

                  And when a different sized shuttle is used? Does that make a difference?

                  And when different coloured thread is used? And different type of thread.

                  Does the punch card do anything? Or is the work done by the loom?

                5. bert: B) the headphones in A) with a firmware update
                  C) the headphones in A) with an analog circuit

                  B) no, as per the Blu Ray.

                  C) I don’t know how that can be done without changing the hardware.

                  Precisely – you think the same effect brought about by two different technologies is differently patent-eligible, but that is based on a difference that is not scientifically valid. There is no sound computational basis for suggesting that algorithm X implemented with parts from Radio Shack is patent-eligible but the same algorithm X implemented with software from Microsoft is not. Yet that is the argument being proposed here.

                  The Jacquard loom example is inapposite because you’re not affecting or improving the functionality of the loom itself with the new patterns, any more than a Blu-Ray of one movie is different than another.

                  However, if I develop and install a firmware update into the Blu-Ray machine and it improves the visual playback of *all* Blu-Ray discs, for example by reducing the jitter effects during fast-motion scenes, then that would universally be considered an improvement to the Blu-Ray player by everyone in the industry. Just as headphones with a superior built-in noise-cancelling algorithm would be universally considered an improvement to the headphones by everyone in the industry, regardless of the technology used to implement the algorithm inside the headphones.

                  I find it inconceivable that such an improvement was intended to fall outside the scope of 101 as written, and the only way anyone’s been able to justify that so far is by relying on trite statements like “you can’t patent math.” I don’t want to patent math, I want to patent the application of math to improving motion jitter during Blu-Ray video playback, or of external noise suppression during audio playback in headphones.

                  If those aren’t patent-eligible, then by extrapolation very few other electronic machines are patent-eligible, and I don’t think that’s the result you’re looking for, nor the result Congress intended.

              2. 36.2.2.2.2.3.2

                See the recent In re Nazomi case where in the improvement patented was solely in the software.

                Connect the dots as to why the takeaway of this case as never been (conveniently) “understood” and integrated into the discussion.

                1. Solely in the software?

                  . . . the claims are properly construed as claiming an apparatus comprising a combination of hardware and software capable of practicing the claim limitations.
                  [emphasis added]

                  PatentlyO.com

                  Looks like the “anti’s” are not the only ones having trouble understanding Nazomi, maybe?

                2. Anon, I was taking your statement, which you are attempting to dissect, as a whole.

                  The “improvement patented” was hardware and software, not “solely in the software”.

                  I am aware that by providing only embedded software that did not include the code needed to activate the infringing portion of the hardware, the defendants avoided liability. That does not exclude the claimed hardware as being an improvement over the prior art.

                3. Dobu,

                  You are being pedantic and I wa not dissecting my own statement (as you imply, obviously intimating that I am somehow changing what I said). Look again at the case and realize that according to the logic of the naysayers here, there was no improvement to the machine. Yes, the patent was on hardware and software – but the hardware was old. If you want to argue with me, you are going to have to admit that the software created a new machine – are you willing to state that unequivocally? Can I take your silence as affirmation?

                4. Anon,

                  . . . realize that according to the logic of the naysayers here, there was no improvement to the machine.

                  As one of your staunch “naysayers”, even I will concede that the machine would have been improved had the compilation of the embedded code included the library that would have allowed access to the code accelerator hardware that was otherwise inaccessable.

                  Yes, the patent was on hardware and software – but the hardware was old.

                  Embedded hardware-based accelerator for JAVA JVM code execution was in the prior art? You sure about that?

                  If you want to argue with me, you are going to have to admit that the software created a new machine . . .

                  I reject your conditions. But I will concede that in this fringe case, the hardware would have been improved (and infringing) if the embedded software had been compiled with the code library that enables the JVM accellerator. (A fringe case, due to the chip designers deliberately disabling the hardware for everyone who doesn’t license the library that enables it.)

                  – are you willing to state that unequivocally? Can I take your silence as affirmation?

                  No. Your and my viewpoints are pretty much universally in polar opposition, so it would likely be safer to assume that my silence just means I’ve moved on to the next Patently O article.

                5. It is not “my” conditions that you are rejecting, but a universal principle as to what software is.

                  Your concession necessarily implies your condition of being more than just a little bit pregnant.

                  A fact is still a fact whether or not you like it (and whether or not it is I that presents it).

                  You are trying to fight reality based on your belief system – there is nothing at all ‘fringe’ about this case and the logic of the decision.

              3. 36.2.2.2.2.3.3

                Precisely – you think the same effect brought about by two different technologies is differently patent-eligible, but that is based on a difference that is not scientifically valid.

                I do think that 2 different technologies are differently patent eligible even if they do the same thing. Do you not? Aren’t we talking about 101?

                How many patents are there on glue? I haven’t checked, but are there patents on earphones which are claiming different shapes of the speakers?

                Briefly back to the headphones, a firmware update is not an improvement to the machine. It is (hopefully) an improvement to the firmware.

                Also, are you saying that the original headphones are based on analogue circuitry? Or that you’ve added analogue circuitry? What you say isn’t making sense.

                Your dismissal of the looms is itself inapposite. You are correct in that the looms have not been changed. This is the paralell that I am trying to draw for you. The loom is as basic as a computer+display can be.

                And if you care not for the loom, then what of early computers with their punch cards. Or a pianola and it’s music drum. Or a music box.

                They do the same thing but with different results because the card or drum is different. But the machine is still the same machine with no improvement.

      3. 36.2.3

        Buckets, but the courts have been telling you all along what is necessary: a new, physical result. Because of physicality, it certainly will be a new or improved, useful, machine, manufacture, composition or conventional process, e.g. that passes MOT. Diehr. It has been this way for very long time.

        Particularly, a claim that just provides for calculation, regardless that it is required to be performed on a machine, is likely not to be statutory. Flook, Benson.

  8. 35

    101 expert: A business method is a process under the statute.

    That’s called a “circular definition”, 101. You’re going to have to do much better than that for anyone to understand what you are saying.

    All you did here is equate “business method” with “process”, and therefore (if I follow your reasoning) any business method is “statutory” and (if I follow your reasoning) an eligible process.

    The problem is that we know for certain that not all processes are eligible for patenting and thats never going to change.

    Some are. Some aren’t.

    That’s consistent with what I’ve been explaining to you: some “business methods” are eligible for patenting. And some aren’t.

    You also wrote:

    A process is a series of steps that produce an outcome that can be “objectively” evaluated.

    That’s an interesting definition that I don’t recall you presenting before. Why is “objectively” in quotes? What does that term mean to you?

    What if the “outcome” of the process is a number written on a piece of paper after performing some math? Or a binding legal contract? Is that enough to confer eligibility?

    What if the “objective” outcome is an observed change in a neuroimage of someone’s brain? Is that enough of an outcome — by itself — to confer eligibility?

    1. 35.1

      MM:”The problem is that we know for certain that not all processes are eligible for patenting…

      “Ding, Ding Ding, we have uh winnuh!!!” As you so infamously once said.

      It does not matter if the process is called business, software, or how to mix Malcolms favorite potash brownies, they are all processes under the law, evaluated the same as any other process. Now we know the Supreme Court has created some very narrow and limited exceptions to the law ( whether you agree or disagree with this act it was done) and I have dealt with the exceptions in this thread, which you are free to read and comment on. See my response to Les, for examples of Integrated and Dis-Integrated claims.

      1. 35.1.1

        Now we know the Supreme Court has created some very narrow and limited exceptions to the law

        Whether you perceive them as “narrow” or “limited” or not, they apply to a large number of invalid claims that have been granted or pending.

        I’d love to hear your “yes” or “no” answers to the simple, straightforward and fundamental questions that I asked you. They’re important questions and you should be ready to answer them because you’re going to keep getting asked about them when you purport to be an expert on the question of subject matter eligibility.

        Thanks in advance.

        1. 35.1.1.1

          >>Whether you perceive them as “narrow” or “limited” or not

          They are by their nature supposed to be as narrow as possible and used as infrequently as possible. The fact that they are not is clear sign that this is judicial activism at its worst.

          Sickening. The courts decided to legislate and invalidate the 1952 Patent Act (and Graham).

          1. 35.1.1.1.1

            They are by their nature supposed to be as narrow as possible and used as infrequently as possible.

            By their “nature”? What is that supposed to mean?

            Ineligible subject matter is part of patent law and it always will be. If people increasingly break the law and try to protect ineligible subject matter with patents (which is exactly what has happened), then the frequency with which the law is invoked is going to go up.

            If the frequency of law-breaking skyrockets, then the frequency with which the law is applied is going to skyrocket.

            [shrugs]

            1. 35.1.1.1.1.1

              >>By their “nature”? What is that supposed to mean?

              Because oh man who claims to be a Ph.D. in the smelly arts and an attorney, they are judicial exceptions. Didn’t you learn that in law school? I don’t have to cite cases.

              1. 35.1.1.1.1.1.1

                And particularly so as Congress passed the 1952 Patent Act. That is important as it means that the SCOTUS should not be making common law, but interpreting the 1952 Patent Act except if it is unconstitutional.

                What the SCOTUS has done is proclaim despite clear and convincing evidence to the contrary that the 1952 Patent Act merely codified their case law. (This is an absurd contention as parts of the 1952 expressly overturned the flash of genius masterpiece of the SCOTUS.)

                What a bunch ego maniac ignorant power hungry twits this group is.

                1. Also, MM, you and I have had this discussion at least 20 times where each time you play Vinnie. Huh? What? Why’s that?

                  I think if this board is going to cleaned up, then you playing Vinnie has to stop. Maybe something like a one week ban for you if someone can bring up 5 previous cases of you asking the exact same question and pretending you have never asked it before.

                  That is part of your blasting. You know exactly what my position is on this. And you should know exactly what the position of the law is on this.

                  What you do is pretend not to know any point that is not favorable to your side, and thus you bloat this board with your nonsense.

                2. then you playing Vinnie has to stop.

                  I’m not “playing Vinnie”, NWPA.

                  I sincerely have no idea what you are talking about sometimes, or what possible reasoning you could be employing.

                  What the SCOTUS has done is proclaim despite clear and convincing evidence to the contrary that the 1952 Patent Act merely codified their case law.

                  I dont think there’s any “clear and convincing evidence” for that statement. Nobody’s ever presented any and I’ve asked to see this “clear and convincing evidence” many times.

                  Show everyone the “clear and convincing evidence” that Congress intended, e.g., to make new non-obvious mental “processes” eligible for patenting for patenting when they wrote that “processes” are eligible subject matter in 101. Or, similarly, show everyone the “the clear and convincing evidence” that Congress intended, e.g., to make an improved paper “manufacture” eligible for patenting when it has non-obvious information printed on it.

                  parts of the 1952 expressly overturned the flash of genius masterpiece of the SCOTUS.)

                  So what?

              2. 35.1.1.1.1.1.2

                Because oh man who claims to be a Ph.D. in the smelly arts and an attorney, they are judicial exceptions.

                Again: the fact that a rule is referred to as “an exception” does not mandate that the frequency of application of the rule is rare, as you suggested.

                The frequency of application of the rule is related to the frequency at which the rule is broken. Moreover, regardless of how frequently the rule is applied to invalidate a claim, the underlying analysis to determine whether the rule is broken needs to be performed on every claim.

                I don’t have to cite cases.

                I wasn’t asking for one.

                By the way: disparaging chem/bio isn’t really a winning a strategy for you. Just a friendly reminder.

                1. Lots of smoke there.

                  You don’t see the fact that the 1952 Patent Act expressly overturns at least one SCOTUS case and yet the SCOTUS writes that the 1952 merely codified their case law?

                  I think any reasonable person would have a problem with what the SCOTUS says in their opinions.

                  An exception means it should be as narrowly applied as possible and other ways to resolve the case should be used before resorting to the exception.

                  That has clearly not been the case.

                2. “…disparaging chem/bio isn’t really a winning a strategy….”

                  Think how much worse if s/he had inserted a strategic “f” into that phrase!

        2. 35.1.1.2

          MM:”Whether you perceive them as “narrow” or “limited” or not, they apply to a large number of invalid claims that have been granted or pending.”

          It’s not “I” its how the Court perceives them. And whether they apply to any patents is matter of a case by case basis. Finally I have answered all your questions in subsequent threads below and invited you to ask more. If you are sincere in wanting to discuss the issue please scroll down and reply.

          You are welcome

          1. 35.1.1.2.1

            I have answered all your questions

            I asked you to tell everyone what you’re definition of “business method” was. Instead of providing a meaningful definition or examples of what does and does not qualify as a “business method”, you equated “business method” with “any process in the statute”. That just moves the goalpost but doesn’t come close to answering the question which “business methods” are eligibile and which aren’t (you at least admit that they aren’t all eligible which counts for something, I suppose).

            Here’s the questions you were asked:

            What if the “outcome” of the process is a number written on a piece of paper after performing some math? Or a binding legal contract? Is that enough to confer eligibility?

            What if the “objective” outcome is an observed change in a neuroimage of someone’s brain? Is that enough of an outcome — by itself — to confer eligibility?

            These are straightforward obvious questions flowing directly from your own statements. Just answer them. What’s the problem?

  9. 34

    anon: Not only does he appear to lack an appreciation of EE, but any sense of real world engineering as well. As for an appreciation of law, well that too is completely lacking. He may not be able to hold a conversation on this topic.

    Shall we have a longer extended discussion about “who can hold a conversation” about patent law?

    Or were these insults sufficient to satisfy you for the next 12 hours?

    1. 34.1

      You see Malcolm, you’ve got this all crabbed.

      Being critical is not being insulting.

      As I continued the conversation below (without the look-at-me look-at-me effect), discussing what is offered in a critical manner is not the gratuitous insulting that you seem to want to imply.

      My comment is an accurate assessment of someone who is NOT engaging in an actual conversation. Your implicit statement of “can” which sounds in permission is distinctly different than the “can” which I use that signifies the capability – as in having the skill set.

      Can we not have your spin attempts from you? There are better conversation points that are waiting for you to join in.

      Thanks.

      1. 34.1.1

        Looked like he did a pretty good job for a lay person even if he was mistaken. For at least that reason alone it appears clear you were insulting him. He obviously could hold a conversation.

      2. 34.1.2

        gratuitous insulting

        Looks pretty gratuitous to me. And it’s a daily pattern.

        But, hey: keep it up if it makes you feel good.

        1. 34.1.2.1

          Again with the spin…

          It is not a matter of making me feel good – it is matter of the difference between a monologue and a dialogue.

          It is as simple as that.

          1. 34.1.2.1.1

            It is not a matter of making me feel good – it is matter of the difference between a monologue and a dialogue.

            It doesn’t look that way at all.

            jesse disagrees with you about the relationship between software and math. He’s done a decent job of explaining his position (one that he shares with may people). He’s not running away and telling you to shove it or refusing to answer until you answer some stale non-sequitur on some ancient thread. He’s explaining his reasoning to you.

            Try not to forget where you are.

            1. 34.1.2.1.1.1

              Yes anon, “try not to forget where you are”.

              This is, after all, a “private” site, whose private interests lie/fall in a “particular” voluntary direction.

              It is not a “public” forum, and no one should expect it to be.

              It is an enterprise and free form gov’t coercion. Be happy at least about that.

              1. 34.1.2.1.1.1.2

                Great post Anon2. I think that MM tries his best to act as if he has the support of Dennis, but I don’t think MM has any special knowledge or relationship with Dennis. I think it is just another one of MM blow heart games.

                He is after all a Ph.D. in the smelly arts.

              2. 34.1.2.1.1.1.3

                This is, after all, a “private” site, whose private interests lie/fall in a “particular” voluntary direction.

                As I recall, the “private interest” seemed to be a desire to minimize personal attacks on the intelligence of another commenter.

                Whether that makes the blog better or worse depends, I suppose, on the degree to which your “arguments” rely on such rhetoric.

                Good luck.

    2. 34.2

      I don’t see anon’s comment as excessive. Jesse has been blasting everyone of our posts with nonsensical responses, and Jesse appears not to even understand what I am saying.

      1. 34.2.1

        This brings up a very real question. Is this guy really just ignorant or running a game on us. Nothing wrong with flushing him out.

      2. 34.2.2

        Jesse has been blasting everyone of our posts with nonsensical responses

        It doesn’t seem that way to me at all. It looks more like he’s pointing out nonsense in your comments and he’s doing a pretty good job at that.

        He could say these exact same things (“Is this guy really just ignorant or running a game”) about you, of course. To the extent he’s not doing that, he’s succeeding where you aren’t.

        1. 34.2.2.1

          That would be true MM except for reality. Your wishy-washy everyone has a right to their opinion which is equally valid is —I know–the great destroyer of our culture. Bill Moyers did a special on exactly this issue.

          So, what is the wrong with your post? REALITY. SCIENCE. LAW.

          I know that you have your view of reality where things exist without structure, where music is exactly like software (despite the most important theory of our age–the Church-Turing Thesis.)

          Isn’t that the foundation of the anti-software movement? We can get away with making our own reality particularly because all the judges are ignorant of science and will buy anything.

          1. 34.2.2.1.1

            Isn’t that the foundation of the anti-software movement? We can get away with making our own reality particularly because all the judges are ignorant of science and will buy anything.

            I don’t believe so. You certainly have not made a convincing argument establishing that view.

            Your wishy-washy everyone has a right to their opinion which is equally valid

            You have a right to your opinion. I certainly don’t believe that every opinion is equally valid and, quite frankly, it’s unbelievably bizarre for you to even suggest that’s a belief of mine at this very late date.

            what is the wrong with your post? REALITY. SCIENCE. LAW.

            Try bold and italics next time. You’ll be even more persuasive that way, won’t you?

            you have your view of reality where things exist without structure

            The accuracy of that statement depends on what you mean by “exist” and “structure”. My subjective feelings at this moment “exist”. They don’t have a “structure” that can be defined in any meaningful objective manner, at least not one that’s relevant to the patent system.

            where music is exactly like software

            In certain contexts it is exactly like software, e.g., when the information comprising the software is “embedded” in an audible signal.

            There is rhetorical game that you and other proponents of software patents seem to relish. When the discussion is about the scope of patent claims — i.e., what sort of “improvements” can be protected with patents and the policy reasons underlying the answer to that question — you invariably try to pretend that we’re debating the “existence” of an actual machine that has been reduced to practice and which falls within the scope of the claims. That’s now what the debate is about.

            Nobody is as silly or ignorant as the imaginary people that you seem to enjoy pretending that you are debating. And the outcomes for you are going to continue to be extremely unfavorable until you recognize that fact.

            1. 34.2.2.1.1.1

              >And the outcomes for you are going to continue to be extremely >unfavorable until you recognize that fact.

              As if you have any wisdom or anything to do with this. Maybe you are a paid blogger that has had a helping hand. I don’t know. But, the reason this has occurred is corporate money. Plain and simple. It is funny to see people like you believe that your opinions have won the day through merit when they have won the day through money.

              No one better epitomizes that than Google shadow Director Lee who spends her time telling the world why we don’t need patents rather than taking care of examining patent applications.

              1. 34.2.2.1.1.1.1

                It is funny to see people like you believe that your opinions have won the day through merit when they have won the day through money.

                You have no evidence for this statement either.

                1. Yeah I do. I have linked to newspaper articles about the rise of Google in DC. We have seen the way shadow Google director Lee was “appointed.” That is by business people in the Oval Office. Etc….. there is a mountain of evidence Vinnie, which you claim never to have seen no matter how many times I repeat it and link to newspaper articles.

            2. 34.2.2.1.1.2

              >when the information comprising the software is “embedded” in >an audible signal.

              So an admission from you that software and music are different then? You are such a worm. You are adding features to the stereo that are like simulator processor (which you call a GPC) and then adding features to music like software.

              Good for a laugh if it weren’t for the fact that the Google judges couldn’t understand this point if they spent the rest of their life going back to school to study science.

              1. 34.2.2.1.1.2.1

                So an admission from you that software and music are different then?

                They can be, in certain contexts. I never suggested otherwise. In fact, I expressly stated the exact opposite (scroll up just a tiny bit and you will see that).

                You are such a worm.

                Again: not helpful.

                Here’s the deal, NWPA: when you make really broad, absolutist proclamations using vague terms (“a disc with software is eligible because it’s functional but a CD with music isn’t functional!” or “hardware is equivalent to software is equivalent to firmware”), then you can expect certain questions to be asked about the foundations of the statement. Certainly you would have no hesitation asking questions of others who made similar pronouncements. Just try to answer the questions directly (without the insults) and be as clear as possible in your answers. Try to anticipate any obvious follow-up questions and address those in advance.

                1. MM: what? Your statements could only be made from someone not trained in EE/CS.

                  I have quoted from Mano for you regarding the equivalence.

                  And there is nothing general about those statements. The music has a functional relationship or it doesn’t. The
                  software has a functional relationship or it doesn’t.

                  And the structure? You want for me to again explain the structure? Last time we left off with you demanding copies of screens for making the chips. Whatever. I guess you can just deny there is structure because the Google Judges are so ignorant and the SCOTUS is so ignorant.

                  Just absurd worthless nonsense from you. But, I am sure the Google judges will believe it.

                2. Night, but you misquote the sources, IIRC.

                  Software, firmware and hardware are equivalent when the calculation of mathematical algorithms is the issue.

                  That is all.

                  The computer hardware does not change depending on the firmware or hardware. The circuits do not change if they are programmable.

                  However, when new circuits are developed to do the math, the circuits are patentable if claimed structurally regardless they are directed to math.

  10. 33

    Bluto Blutarsky:

    You are doing yourself a disservice by being here. I know you’re going to stick around and be the proverbial fly-in-the-Preparation-H, but nobody is impressed by this type of nonsense.

    Anytime you want to stop the personal attacks is the right time, Bluto.

    Maybe you can tell everyone exactly what subject matter you think is ineligible for patenting. And then tell everyone what type of analysis, if any, is permitted to determine whether a claim protects that ineligible subject matter.

    Then we can evaluate how much you know and understand about patent law and basic logic.

    Or you can just keep insulting people who disagree with you.

    Your choice, Bluto.

    1. 33.1

      I have to wonder, given these negative outcomes for software type patent cases, when the lay offs will start happening… Software has been, at least one of the top three growth areas of filings for years if not number one. Will companies continue throwing good money after bad, and if they do, how much longer will the money flow continue?

      I would guess end of next year for private firms, and a little later for the pto. Thoughts?

      1. 33.1.1

        Retraining is always a possibility, at least for some.

        Plenty of smart chem/bio people have been drafting and otherwise dealing with computer-implemented innovations for years. It’s a lot easier to move in that direction than the opposite direction but certainly it’s the case that broadly educated, intelligent and science-minded people should be able to keep themselves busy as patent attorneys.

        With respect to the PTO, the retraining and increased availability of hands on deck should help to make a substantial dent in the backlog, reduce examination pendency, and increase the overall quality of patents (more “eyes” to review fewer cases and ensure the best rejections and arguments are made).

        1. 33.1.1.1

          Maybe. From looking at a random sample of filings, the scope of potential impact could be huge. Just following the words “configured to” seem to point to massive areas on the brink of extinction. For example, it looks like a lot of the PTO “display” art units (often thought to be physical monitors, etc…) do some quantity of “a display configured to [insert verbiage about displaying a GUI function here]” as one simple example. When you start looking at all the areas where generic and/or mundane physical components were used as ‘cover’ for software innovations… The future looks grim for the patent bar and the pto.

          Retraining for some? Perhaps. Maybe a small number. However, I doubt any area of patent law (or all of the remaining areas combined) has sufficient excess work to take in all the soon to be refugees from software.

          At least those are my thoughts.

          1. 33.1.1.1.1

            It would at least start reducing that 29-30 billion dollar expense every year to litigation… Nothing productive there at all.

            1. 33.1.1.1.1.1

              Using debunked numbers and missing the point that court action is the legislated path to enforcement is not helping you establish that you understand patent law jesse – you are only showing that you can parrot the anti-patent mantra.

              1. 33.1.1.1.1.1.2

                look into the writings of Ron Katznelson.

                Does everybody agree with Ron Katznelson? Is his the final word on this subject? Since when?

                you can parrot the anti-patent mantra.

                And you can parrot Ron Katznelson. So what?

          2. 33.1.1.1.2

            From looking at a random sample of filings, the scope of potential impact could be huge.

            That’s excellent. A large impact is expected because there are a large numbers of applications being filed or already in the broken system intended to protect ineligible subject matter. Follow the trend of annual filings before the Federal Circuit and the PTO turned the spigots to 11 and you can see roughly where we’d expect to be had that not happened.

            For example, it looks like a lot of the PTO “display” art units (often thought to be physical monitors, etc…) do some quantity of “a display configured to [insert verbiage about displaying a GUI function here]” as one simple example.

            Those are some of the worst patents out there, also some of the easiest to spot.

            The future looks grim for the patent bar and the pto.

            Not at all. The patent bar and the PTO can focus on doing good work for entities who are promoting progress and providing tangible goods and services, rather than entities who merely scheme about what someone else is likely to reduce to practice and commercialize “on a computer.”

      2. 33.1.2

        Yeah the pto is just moving examiners around as far as I’ve seen so far. Plenty of backlog to work on. As to lawyers id say it’ll take sometime before any layoffs happen because they just try to draft differently for awhile.

      3. 33.1.3

        Curious, if the software is a part of a larger machine or process that is otherwise patentable, and it improves that larger machine or otherwise statutory process, I see no problem. I don’t think we are going to see any diminution in filings in these areas.

        We will however see a cutback in business method patents of all kinds, including the use of the Internet for selling stuff. We might also see a cutback in patenting card games.

        I don’t know what percentage is of the so-called software patents that are being filed are of the business method patent variety. But it can’t be all that great can it?

        1. 33.1.3.1

          Ned Heller: if the software is a part of a larger machine or process that is otherwise patentable, and it improves that larger machine or otherwise statutory process, I see no problem.

          Depends on the claim.

          There can be lots of problems with claims that purport to cover “improved machines” but which don’t describe the improvements in objective structural terms that distinguish the “new” machines from prior art machines.

          1. 33.1.3.1.1

            Yes, the “display configured to [insert verbiage about GUI functionality]” type of claim highlights this lack of description about the “improved” machine.

            A monitor is improved by displaying some GUI functionality? Really?

          2. 33.1.3.1.2

            But Malcolm, consider the following claim,

            1. Method comprising:

            placing an egg in boiling water; then
            counting to 100; then
            removing the egg from the boiling water.

            Assume for the sake of argument, that the process is old but for the counting to 100. The county to 100 clearly is nonstatutory. Yet the process is modified because accounting to 100 after the egg is been placed in the water modifies the result. This is the same as Diehr where the Ahrenius equation was used to calculate when to open the mold. The Supreme Court approved of this claim as directed to patentable subject matter.

            But the common characteristic of both claims is that the nonstatutory subject matter is described functionally. There is no necessity to describe objective structures of any kind. The county to 100 is done by a human, or could be done by mechanical means, it makes no difference. Similarly in Diehr, the claim required that the calculation be done by computer, but the claim would have been equally eligible if the calculations were done by human who then would open the mold manually. The only requirement is that the calculations be done and that the result of the calculations be used to modify the underlying process.

    2. 33.2

      I’ve already answered that question for you a number of times. The statute is unambiguous and clear on its face.

      1. 33.2.1

        Bluto: I’ve already answered that question for you a number of times. The statute is unambiguous and clear on its face.

        Just so it’s perfectly clear to everybody, I asked you”What subject matter is ineligible for patenting?”.

        Your answer is “Look at the 35 USC 101 because I say that it’s clear.”?

        That’s the best you can do? Really?

        It seems to me (and I’m pretty sure it would seem to most people) that you are evading the question. It’s an important question, you know.

        35 USC 101 says, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

        What about a new and useful and purely mental process of performing a correlation? Eligible for patenting? What about a manufacture that is an old sheaf of bound paper with new writing on the pages? Eligible for patenting? Yes or no? Nearly every patent attorney would answer those questions in the negative without hesitation and be quite happy about doing so. What about you?

        1. 33.2.1.1

          I responded directly to your ridiculous old book + new information comparison with computer + software. I’ve answered it now on two separate occasions in two separate threads and you never respond. Why would I waste my time on a third?

          1. 33.2.1.1.1

            I responded directly to your ridiculous old book + new information comparison with computer + software.

            Oh, I don’t doubt that you tried to avoid answering the question by presenting a different hypothetical. I already noted your habit in that regard.

            I’m asking you a couple of direct and specific and obvious and very fundamental questions about subject matter eligibility. They are yes or no questions and you are refusing to answer them. Why?

            You should spend a few seconds figuring out what you’re answers are because those questions aren’t going away. They’re important. If you can’t understand and answer these questions, it seems unlikely that you understand any of the issues relating to subject matter eligibility.

            1. 33.2.1.1.1.1

              No. I answered the hypo directly and smashed it to pieces. Go back and look for yourself.

              Also, please let us all know where I’ve changed a hypo in the past. You’re flaming out left and right.

              FWIW, I do not believe that a book + new information is patentable. That’s a pretty simple “NO”.

              1. 33.2.1.1.1.1.2

                I answered the hypo directly

                These aren’t really “hypotheticals” given the claims that have been pursued and asserted already. I don’t recall you giving any answer. Should be very easy for you to just reproduce the answer here — easier than typing out this chest-thumping silliness that you came up with.

                and smashed it to pieces.

                It’s just a straightforward question, Hulk. There’s nothing to be “smashed.” Here it is again:

                What about a new and useful and purely mental process of performing a correlation? Eligible for patenting? What about a manufacture that is an old sheaf of bound paper with new writing on the pages? Eligible for patenting? Yes or no?

                It’s just a yes or no question, followed by your explanation of the answers. Thanks in advance for the answers.

                1. I asked you: What about a new and useful and purely mental process of performing a correlation? Eligible for patenting? What about a manufacture that is an old sheaf of bound paper with new writing on the pages? Eligible for patenting? Yes or no?

                  You answered both questions “no.” Great! I agree. So we appear to agree on the answers to some fundamental issues related to subject matter eligilibity (not everybody agrees, you know). That’s progress towards understanding exactly where our points of disagreement may lie.

                  Then you wrote “Don’t need any explanation for that do you”.

                  I certainly don’t need an explanation for –my own answers– to the questions, Bluto. But I’m curious about your explanations for your answers. Can you explain how you arrived at your answers in each case? Explain the analysis and logic you used to find a “process” ineligible and a “manufacture” ineligible, bearing in mind that those terms appear in 35 USC 101.

                  Then, with respect to the first question, can you tell everyone if your answer changes when an old but eligible data gathering step is placed before the otherwise ineligible mental step and, if it does change, why? When you answer that question, imagine that you are giving your explanation to a patent attorney who happens to be practicing that old data gathering step.

                2. Mental processes are not patent eligible because: (1) you can’t impinge on people’s right to think (would be the ultimate form of preemption); and (2) there is no discernible “process” with a set of mental steps other than a single process of thinking.

                  Books with new content are not patentable because they are a work of art, fixed in a tangible medium, and covered by another statute.

                  The new “information” in the book is not employed in any meaningful way other than filling pages with ink, which is well known.

                  As I’ve said now numerous times, the information (new or not) printed onto the pages of the book cannot be used by the book to perform new and useful functions such as causing the book cover to automatically open when the user sits near the book, automatically annotate or translate the printed content, highlight the words on a page, etc.

                  The old manufacture of the book does not use the new information in a way that makes the book do something it could not do, sans the new printed matter.

                  Your last question makes no sense.

                3. Again with the crickets. Every time we get to this point in the conversation you disappear. I can’t wait to have to say it all over again for the fourth time.

                4. Bluto, a machine that has new structure that alters its function is an improved machine.

                  You take that “software” and permanently attach it to the machine in some fashion, and I would agree you might have an improved machine.

                  But software is not intended, and in fact is not, part of the machine. The programmed memory computer was invented in the 40s. Regardless of the form of the program memory, it was designed to temporarily hold programs for execution. It is not designed that the programs become a permanent part of the machine.

                  This is the fundamental flaw in all arguments that software somehow creates a new machine. It does not.

                  It is time to move beyond this argument into a different argument, because if this argument were valid, Benson would have been decided differently. It is the argument that Judge Rich used in Application of Benson, the case that was overruled by the Supreme Court. It is an argument that did not prevail then, has never prevailed, and never will prevail.

                  This is not about logic. This is not a physics. This is an argument that has been made, and has been lost.

                  It is time to move on.

              2. 33.2.1.1.1.1.3

                Bluto Again with the crickets.

                Gosh, I’m sorry I wasn’t there for you, Bluto. I didn’t realize you were so lonely.

                You see, I was hanging out at the beach drinking a beer and “forgot” bring my laptop with me. Then I bought some steaks home and cooked dinner for my family.

                I’m really, really sad you had to wait overnight for a response, Bluto. Now that I know how lonely you are I will be sure to recommmend some places you can go to find comfort when I’m not helping you understand how to analyze claims for subject matter eligibility.

  11. 32

    There is a huge difference between Mayo and the case herein. Judge Wu inserted “abstract idea” into a cite from Mayo and proceeded on that basis. Laws of nature and “abstract ideas” require difference considerations.

    The claim in Mayo would never be patentable at any point in time (“… indicates a need”) as the remaining steps could have been done hundreds of years ago (administering a drug and measuring a level). I can’t deny that in a claim, thinking about something as a step is problematic. This is similar to if Pythagoras wanted to patent in the Greek Patent Office “measuring sides of a triangle (conventional) and indicating a correlation between the hypotenuse squared and the sum of the two legs squared.” This is couching a law of nature in a claim and would never be patentable.

    The claim in McRO’s patent (as even Wu admits) is not as a whole directed to an abstract idea. Thus, a short time ago (when this type of system was invented), a claim to the system would be statutory and McRO’s contribution could have been in a dependent claim. Thus, there is no outright prohibition to McRO’s claim. it could have been patented if it came earlier. This is in contrast to the claim in Mayo which would never have been considered patentable. (I acknowledge Ned’s post below about functional claiming at the point of novelty but that a different issue).

    As a further example of this, what if the original inventors of the “prior art” animation system also described McRO’s contribution and had a live continuation. In the continuation they had a claim exactly like McRO’s with an earlier effective filing date. This claim in the continuation would be statutory (according to Wu’s analysis).

    So here we have a situation where one party’s claim is statutory and another’s is not. What we have here is a policy decision as to when to give someone the benefits of a patent (assuming it is nonobvious) based on their contribution. Last I checked, it is not the judicial or administrative branch, but legislative branch that is charged enacting policy.

    This case is interesting from an academic perspective, but anyone who wants to give any weight to this case is a loon. If the Fed Circuit rules on this en banc, or the supreme 9, that should of course be given the weight of law. If this case does make it up to the Supreme Court, I would bet any amount of money that regardless of whether it is upheld or not, Judge Wu’s original analysis would be lost.

    1. 32.1

      patent leather, let me say that I would ordinarily agree that functional-at-the-point-of-novelty is not a 101 issue, but a 112 issue, and has been that since O’Reilly v. Morse. Functional-at-the-point-of-novelty is abstractness, and abstractness and functional-at-the-point-of-novelty are the same thing.

      But Bilski really screwed the pooch when it held the claims there ineligible because they were “abstract.” Why they did that is not exactly clear, but it seems they did not want to allow Stevens to win. Stevens wanted to flatly overturn State Street Bank and to restore the Hotel Security line of cases, just as did Judge Dyk in his dissent in Bilski. So instead of finding that business methods were nonstatutory, they found them to be abstract which is entirely different concept. I have said time and again that Supreme Court majority opinion in Bilski got the right answer but for wrong reasons. Under Hotel Security, a method of transacting business is nonstatutory.

      Hopefully, at some point in time, the legal basis for holding methods of doing business to be a violation of 101 will again be grounded in the statute.

      But, back to Wu’s opinion. He has it right on abstractness. The claim is abstract because it is functional at the point of novelty. I just disagree that this should be a 101 issue. But the Supreme Court, by using the term abstract” in a 101 sense, is almost forced this result.

      But we also see the consequences of declaring abstractness to be a 101 issue. It extends Hotel Security far beyond its intended scope, which is confined solely and exclusively the subject matter that is otherwise nonstatutory. There is no doubt in my mind, as you rightly point out, that the subject matter of the claim held invalid in the present case was otherwise statutory.

      1. 32.1.1

        It extends Hotel Security far beyond its intended scope, which is confined solely and exclusively the subject matter that is otherwise nonstatutory.

        A “set of rules for processing information in context X” is otherwise nonstatutory subject matter.

        the subject matter of the claim held invalid in the present case was otherwise statutory.

        That doesn’t matter if everything else in the claim is old, as was the case here. A new method of measuring thioguanine levels in your blood is “otherwise statutory” and you are free to include.

        But once that method has been disclosed, you can’t “improve” it with ineligible subject matter (e.g., a step of thinking about information).

        That’s Mayo. Mayo applies to claims which recite old (but otherwise eligible) subject matter and nothing more than than new “laws of nature” or “correlations” just as readily as it applies to a claim which adds nothing more than “follow a set of rules” to old (but otherwise eligible) subject matter.

        It has to be this way otherwise you’ll have a zillion claims adding ineligible subject matter (follow this rule; no, follow this rule; no, follow this rule; no, follow this rule; no, follow this rule) to old processes.

        We don’t have a patent system to promote progress in logic. That’s because the patent system works incredibly poorly for that purpose, for all kinds of reasons.

      2. 32.1.2

        Ned: “Hopefully, at some point in time, the legal basis for holding methods of doing business to be a violation of 101 will again be grounded in the statute.”

        It was never grounded in the statute. In fact you would have to prove that business methods are unconstitutional, and I have never seen a cogent argument for such a proposition.

        1. 32.1.2.1

          Please provide everyone with your definition of “business method” and then we can evaluate the arguments against your position that all such patents are eligible.

          Otherwise it’s impossible to understand what the heck you are talking about.

          1. 32.1.2.1.1

            MM: “Please provide everyone with your definition of “business method” and then we can evaluate the arguments against your position that all such patents are eligible.”

            A business method is a process under the statute. A process is a series of steps that produce an outcome that can be “objectively” evaluated.

            Any questions?

    2. 32.2

      I wonder if a Fed. Cir. panel could reverse the 101 “abstraction” basis of the claim rejection but base the same rejection on 112 instead? As purely a statement of a desired RESULT at the point of alleged novelty? But, does not that also inherently fit the 101 “preemption” doctrine? [A better 101 basis than “abstraction?”] In other words, the claim has no limitation as to HOW the “facial expression” is synchronized with the audio. Instead, it simply claims that it IS synchronized! Once again, an example of claiming the “what” rather than any “how.”

        1. 32.2.1.1

          Ned, is that really “unfortunate?” Or, does it instead offer a way to alternatively treat a claim like this on a more appropriate and traditional 112 basis without relying solely on an ambiguous “abstraction” test?

          1. 32.2.1.1.1

            Well, Paul, one could affirm Wu on 112 grounds. Courts have the authority to change the legal basis for affirming if the lower court has it wrong.

            But, my point is this, does Wu have the Supreme Court wrong?

          1. 32.2.1.2.1

            Dennis, from Le Roy v. Tatham, 55 U.S. 156, 14 L. Ed. 367 (1852) at 174-175:

            The word principle is used by elementary writers on patent subjects, and sometimes in adjudications of courts, with such a want of precision in its application, as to mislead. It is admitted, 175*175 that a principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.

            From Morse at 119-120:

            … the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described.

            Indeed, if the eighth claim of the patentee can be maintained, there was no necessity for any specification, further than to say that he had discovered that, by using the motive power of electro-magnetism, he could print intelligible characters at any distance. We presume it will be admitted on all hands, that no patent could have issued on such a specification. Yet this claim can derive no aid from the specification filed. It is outside 120*120 of it, and the patentee claims beyond it. And if it stands, it must stand simply on the ground that the broad terms above-mentioned were a sufficient description, and entitled him to a patent in terms equally broad. In our judgment the act of Congress cannot be so construed.

            Albeit from the Morse dissent, this is what the dissent characterized the majority decision to be:

            But if it be adjudged that the claim is too broad, because the inventor claims the application of this element to his new art, then his patent is to be invalidated for claiming his whole invention, and nothing more. If the result of this application be a new and useful art, and if the essence of his invention consists in compelling this hitherto useless element to record letters and words, at any distance and in many places at the same moment, how can it be said that the claim is for a principle or an abstraction? What is meant by a claim being to broad? The patent law and judicial decisions may be searched in vain for a provision or decision that a patent may be impugned for claiming no more than the patentee invented or discovered. It is only when he claims something before known and used, something as new which is not new, either by mistake or intentionally, that his patent is affected.

            Dennis, “principle” is the term being used here. The court distinguishes between a principal in the abstract for which no patent can issue, and principle being applied which is the subject of patents. When the claim is too broad, the court is saying that the principal in the abstract is being claimed.

            1. 32.2.1.2.1.1

              “Indeed, if the eighth claim of the patentee can be maintained, there was no necessity for any specification, ….”

              Thanks finally for giving the quote. The above is regarding enablement, not eligibility.

              1. 32.2.1.2.1.1.4

                scientist, the requirement for a written specification is inconsistent with claiming a principle in the abstract because with such, no specification is actually necessary.

                The claim to a principle in the abstract is the written description of the entire invention.

                Enablement? What need is there for enablement of any embodiments if one is entitled to claim a principle in the abstract?

                In the end, it seems, that the Court simply held that claims of such breadth are not consistent with the statutes. Obviously, 112 is implicated. But so is a broad exclusion under 101.

                1. “It is outside 120*120 of it, and the patentee claims beyond it.”

                  Above comment is that the claim is broader than the spec., which is enablement.

                  Claims of Prometheus are well within the 120*120 of the disclosure and still were not valid. They are two different issues. This is eligibility.

                2. scientist, absolutely correct, and I agree with you. There is a wealth of difference between not being statutory as in Prometheus, and being too broad as in Morse. They are almost not in the same universe, and the language of the cases should not confuse the two issues.

                  But, then we have Bilski which did confuse abstract, which has to do with breath, with nonstatutory, which has to do with whether the subject matter would otherwise be eligible under 101. Stevens concurring opinion pointed out the confusion of the majority opinion in that it seem to be confusing statutory subject matter with breath.

                  As I have often said, Bilski was one of the worst, if not the worst, 101 decisions the Supreme Court has ever penned. It has confused the patent law, mightily.

    3. 32.3

      How can the rate at which a body metabolizes a man made drug be something that could have been done hundreds of years before the drug was invented?

      This is all nonsense.

      1. 32.3.1

        I think even crazier is to treat it as a law of nature as if the exception was ever meant to drill down so deep. Maybe 200 years ago someone could have patent the method of treating a person without this step of determining the rate. Nuts. It is like science has progressed and innovators are using it to make leaps and the SCOTUS cuts it all down.

        The law of nature exception was meant for giant laws like Newton’s. Not tiny little things that are really only found out in order to treat people and where there isn’t a lot of motive to find out these things without patents.

        Just nuts. Again, I think this comes from a SCOTUS that is completely ignorant of science. To my mind not one of them is qualified to be a justice in our modern society. And now with the Google judges on the fed. cir. we have the same thing on the fed. cir. (and the Google Director isn’t much better. I am still willing to bet that she walks away with at least $10 million from industry within 2 years of leaving.)

      2. 32.3.2

        Worked quite well for Asprin.

        Willow bark infusions were used for thousands of years before Asprin was “invented”, yet asprin is the drug in willow bark that worked…

        1. 32.3.2.1

          Did you even read his post? Your response is a non-sequitur. You’re answering a question that wasn’t asked.

          1. 32.3.2.1.1

            There was only one question: “How can the rate at which a body metabolizes a man made drug be something that could have been done hundreds of years before the drug was invented?”

            And I answered it by example.

              1. 32.3.2.1.1.1.1

                Its called “acetylsalicylic acid” first synthesized in 1853.

                The natural form had been used for a couple of thousand years.

                1. Yes. That man made drug has different properties and interacts with the human body in ways that are different from the natural form. Acetylsalicylic acid did not exist prior to 1853. The properties and actions of this compound were NOT known prior to 1853.

                  You typed the word “synthetic” and still don’t realize the error in your response.

                  You are doing yourself a disservice by being here. I know you’re going to stick around and be the proverbial fly-in-the-Preparation-H, but nobody is impressed by this type of nonsense.

                2. The two of you interpreted a grammatically incoherent question at least three different ways and I can’t even tell if you disagree. Then it’s straight to the personal insults.

                  This entire subthread should delete itself from shame.

      3. 32.3.3

        How can the rate at which a body metabolizes a man made drug be something that could have been done hundreds of years before the drug was invented?

        What in the world is the point of this question?

    4. 32.4

      a short time ago (when this type of system was invented), a claim to the system would be statutory and McRO’s contribution could have been in a dependent claim.

      I’m not sure what you mean by “this type of system”. What makes you think “this type of system” is statutory?

      In any event, you are correct that if the eligible part of “the system” is new, then (generally speaking) there isn’t a problem with adding ineligible subject matter in a dependent claim. That’s because the existence of the new eligible part of the claim nullifies the problems that are presented when the ineligible part of the claim is presented alone or when accompanied only by subject matter that is already in the public domain or is going to enter the public domain before the ineligible subject matter.

      The obvious question, of course, is: why bother reciting the ineligible matter at all if you have an otherwise ineligible invention? It doesn’t add any coverage that you already have. If you have a new rocket ship, claimed in objective structural terms, that claim is enforceable and infringed by someone who makes the rocket ship regardless of, e.g., what the person is thinking while on the rocket ship or whether the rocketship has a non-obvious set of instructions in the glove compartment.

      there is no outright prohibition to McRO’s claim. it could have been patented if it came earlier. This is in contrast to the claim in Mayo which would never have been considered patentable.

      Two points: first, the claim at issue in Mayo was granted and it went all the way to the Supreme Court because certain folks just couldn’t wrap their heads around some really basic logic. Second, the Federal Circuit construed the old data gathering step in Mayo to require a physical transformation of matter. They never suggested that the data gathering step (measuring TG levels in human blood) would never have been patent-worthy on its own terms at some earlier time, nor did the Supreme Court. In any event, what matters is that the data gathering step was already disclosed (and admitted right off the bat in Prometheus’ specification — another fact that was ignored by many “experts” who chose not to understand the issues at play).

      1. 32.4.1

        Correction in bold: The obvious question, of course, is: why bother reciting the ineligible matter at all if you have an otherwise eligible invention?

        1. 32.4.1.1

          For context within the claim. This happens all the time in mechanical inventions when we describe what is known and claim the improvement or addition to the known.

          I would not have thought this to be the case prior to Alice, but now that courts (and many contributors here) have conflated old = ineligible, the examples are numerous.

          1. 32.4.1.1.1

            Question: why bother reciting the ineligible matter at all if you have an otherwise eligible invention?

            Answer: This happens all the time in mechanical inventions when we describe what is known and claim the improvement or addition to the known.

            You are claiming improvements in mechanical inventions which consist solely of ineligible subject matter? Really? Can you give an example of what you are talking about? It sounds like a very unwise practice and something to be avoided at all costs.

            courts (and many contributors here) have conflated old = ineligible

            You either do not understand the analysis or you are pretending not to understand the analysis. When you recite a new combination of old but otherwise eligible structures in objective structural terms, the objectively described combination of structures is neither old nor ineligible (it’s certainly not abstract). The issues we are talking about arise when the only additional subject matter in the claim (your “improvement”) is ineligible subject matter on its own terms.

            This really isn’t that difficult. Think it through.

  12. 31

    So, could someone who does this art explain the claim. To me it seems like it would be impossible to animate a face without infringing the independent claim.

    1. 31.1

      Al, I think that was the point that Judge Wu was driving at. Rather than claim anything specific regarding any new rules that the inventor had come up with, they simply claimed using rules in gen eral, the idea of using rules in the context of this application. Thus anybody who uses rules would infringe, but using rules is the only way the method works. Therefore the claim would seem to wholly preempt all the ways of lip-synching with animation.

      MM below explain this in more detail.

    2. 31.2

      Not as per defendents:

      “Further, the defendants raised a defense of non-infringement – explaining that their particular method of automated lip synchronization is not even covered by the patents. “

      1. 31.2.1

        “Further, the defendants raised a defense of non-infringement – explaining that their particular method of automated lip synchronization is not even covered by the patents. “

        Two points regarding this.

        Without having the briefs in front of us it’s difficult to know what exactly was argued here. It’s perfectly reasonable in this context to make an argument in the alternative, i.e., either the claim is construed broadly and is ineligible under 101, or the claims are construed more narrowly (e.g., to recite the specific rules given in the example in the specification) in which case the claim is not infringed.

        Second, the eligibility pre-emption problem arises when anybody — literally anybody — who is practicing the prior art is turned into an infringer when they merely practice an otherwise ineligible additional step. That’s all that’s needed to prove pre-emption of ineligible subject matter by a patent claim. There is no need to prove that “everybody in the world” is pre-empted by the claim (because 99.999999% of claims are going to be limited to some field of use).

  13. 30

    “the pre-emption concern that undergirds our §101 jurisprudence”

    But what is property right except for pre-emption!

    The whole point of owning a land is to prevent someone from using that land.
    The point of owning a car is to prevent someone else to drive your car
    Owning a house means someone else cannot live in that house!

    In some countries one cannot own their own property (pre-empt someone else to use it) and they are called communist countries…and that undergirds our supreme’s property right jurisprudence?

    1. 30.1

      “The pre-emption concern” is about appropriate limitations on the pre-emption granted by intellectual property rights.

      Firemen are allowed to “use” your land while they are rescuing lives or property.
      A commissioned police officer is allowed to commandeer your car in the event of an emergency.
      An renter is allowed to live in your house until lawful eviction proceedings have completed.

      One also should keep in mind that the entire reason we have a patent system is in order to promote societal progress. One responsibility of the courts is to keep intellectual property rights from expanding to the point that they negatively impact such progress. “Pre-emption concerns” falls under that umbrella.

      (Whether the courts are following an appropriate path in that pursuit is subject to considerable debate.)

      1. 30.1.1

        Scope of enablement is the way to police the problem you describe. See LizardTech. If you come up with a solution that is nonobvious and not enbabled by their specification, then you can invalidate their claims.

        That is patent law.

        1. 30.1.1.1

          Alice is voodoo patent law where judges who have no science training act as experts in a field and psychotically tell us what they believe about science. Fairly close to asking a 5 year old why the sky is blue.

      2. 30.1.2

        You quite mess up the points that you are talking about – absent the case of the actual emergencies, those government agencies do NOT have the right to come onto your property.

        Article III courts (including the Supreme Court) – at the Federal level, may NOT render advisory opinions and if you READ the words they use, that is exactly what they are doing – looking into the future and saying that progress MAY be limited. It also may NOT be limited, as the statement is pure conjecture.

        This foundation piece of the policy-driven activism is placed on shifting sands.

        1. 30.1.2.1

          Actually, they do have the right.

          All they need is probable cause. Not just an emergency.

          Inspectors checking for hazardous wastes, fire hazards, …

          1. 30.1.2.1.1

            Your inspector comment betrays your lack of knowledge of the law (as does your implicit lawyer insult above).

            The inspection capability ONLY comes through a properly written LEGISLATIVE law – the absence of which in the patent context is what is truly at issue here.

            Thank you for proving my point.

            1. 30.1.2.1.1.1

              Your inspector comment betrays your lack of knowledge of the law

              There’s no “lack of knowledge of the law” being “betrayed” by that comment.

              You guys are shouting “property rights! property rights!” as if somehow that’s going to make these issues go away and you’ll be able to reclaim these invalid software patents.

              That’s not going to happen, in part for the very reasons that jesse and others are gently pointing out to you: your patent rights, at best, are merely presumed and are subject to challenge on numerous fronts. The system was designed that way purposefully because that’s the way the public likes it. And it’s not going to change. At least, it’s not going to get substantially more difficult to invalidate a patent than it is now because “property.”

              Focus on the issue of claiming software and try not to get lost in the forest. You’ll have more success that way.

              1. 30.1.2.1.1.1.1

                I am going to have to respectfully – but completely – disagree with you Malcolm for a few reasons.

                First, the anti-side brought up “property,” so no one here is screaming anything.

                Second, while not a full on analogy, there are lessons to be learned from real property law (like statutory law written by legislators can supplant common law)

                Third, when the person who chooses property law shows that he does not know what he is talking about, that lack of knowledge can in fact carry over to patent law.

                Fourth, agreeing with the speaker and wanting to shush the conversation and only grab the speakers desired end shows a critical lack of care for the means to that end. While jesse is obviously not an attorney and likely does not know better, you profess to be an attorney and should know better.

          2. 30.1.2.1.2

            Your right to exclude others from using your car is absolute or very broad at the least. Does not mean you can drive without license or without following road rules.

            Property rights are about excluding others (pre-empt), but does not mean you can use it as you want. Once you talk about sharing your car with the public for free, do you really own your car?

      3. 30.1.3

        you said “about appropriate limitations on the pre-emption granted by intellectual property rights”

        What limitations are there on pre-emption on your property? Someone can come and live in your home for free? Someone can farm on your land for free? Are you required to share your bedroom when you build a home? Renting is mutually agreed similar to royalties in patents.

        The whole point of a patent is to “exclude”, or in other words “pre-empt”. It is the statute (see USC 154). Why is the statute a concern for our supremes?

      4. 30.1.4

        One responsibility of the courts is to keep intellectual property rights from expanding to the point that they negatively impact such progress.

        Courts are not empowered to set economic policy. Their sole power is to interpret the law established by the legislature. If the law does not express a policy, the courts can’t insert one of their own choosing.

        1. 30.1.4.1

          David Stein, I’m not quite sure how you get from the constitutional provision authorizing Congress to promote progress in the useful arts to economic policy. I would agree with you that the courts should not be involved in promoting economic policy, but that is quite a different thing then assuring that in interpreting the patent laws that the interpretation be consistent with the constitutional purpose.

    2. 30.2

      In some countries one cannot own their own property (pre-empt someone else to use it) and they are called communist countries

      In some countries, like the US, you can get a limited patent right on certain inventions, but not others and they are called democratic countries.

    3. 30.3

      Mr. scientist, one question for you, have you ever read O’Reilly v. Morse – particularly in this discussion regarding claim 8?

      It’s a question of scope, and whether the claim includes any of the novel means or methods disclosed, or whether the claim is rather to the principal in the abstract. If to the principal in abstract, the claim wholly preempts the principle and not the means or methods.

      1. 30.3.1

        Please provide quotes of what you said from the relevant court judgements. I provided my quote about pre-emption.

        Your arguments does not make the law. For example in Buysafe, CAFC said “narrowness” does not matter and you are talking about claim scope.

        “Narrowness of Idea Cannot be Judged”
        link to patentlyo.com

        1. 30.3.1.1

          scientist, I cited O’Reilly v. Morse and its discussion of claim 8. Do you want more?

          Also, the Supreme Court has been confusing abstractness with nonstatutory. These are distinct concepts. If subject matter is nonstatutory, it has to be integrated into the statutory in order that a claim pass 101. (Diehr)

          Abstractness, in contrast, is not about whether the novel subject matter is statutory or not. It is about claiming at too high level of abstractness such that none of the novel apparatus or methods are included in the claim. All you have to do is read O’Reilly v. Morse in its discussion of claim 8 to understand what we are talking about. Morse is a foundational case in patent law, but it is being misapplied by the current Supreme Court in my humble opinion. The case it should be following is not Morse, but Hotel Security.

          1. 30.3.1.1.1

            Ned: ” If subject matter is nonstatutory, it has to be integrated into the statutory in order that a claim pass 101. (Diehr) ”

            Hello Ned:

            There is no such requirement held in Diehr.

            PERIOD.

            1. 30.3.1.1.1.1

              Nine members of the Supreme Court in Mayo thought so because they cited Diehr as an example of something that (at least at some point) represented an eligible claim. And there’s certainly some ineligible subject matter there.

              Later in Alice they made it clear that the statement “do it on a computer” was insufficient to clear the hurdle for certain kinds of otherwise ineligible information-processing methods.

          2. 30.3.1.1.2

            Ned: “The case it should be following is not Morse, but Hotel Security.”

            Need I remind you, as has others including the blog moderator Dennis Crouch, Hotel Security is not controlling case law for the country. And it never will be. Like Scalia said, 4 does not make 5 And now, neither does 3.

            Business methods are statutory. Have always been and will always be. Especially since there is no sound policy argument for making business methods an exception to what constitutes patent eligible subject matter.

            1. 30.3.1.1.2.1

              there is no sound policy argument for making business methods an exception to what constitutes patent eligible subject matter.

              Quite plainly, the existence of such a policy argument depends very much on how you define “business methods.”

              Tell everyone exactly how you define a “business method”. And then we can discuss the policy arguments for the ineligibility of all or at least some of those “business methods.”

              Just to get you thinking about the importance of this issue, does an eligible “business method” include a “business method” that is carried out purely mentally (like a method of performing a specific routine of addition and substraction steps)? I think that’s ineligible but you might have have a different view. What is your view on that? Then we can discuss “sound policy.”

              What if the “business method” is carried out completely by performing certain addition and subtraction steps with a pencil and a piece of paper? Is that ineligible? What if you throw in a calculator? Does that work? Still eligible? Or, wait a minute … what if you say in your claim that you “automate” those math steps? Does your “business method” become eligible then?

              1. 30.3.1.1.2.1.1

                mm:”business method” include a “business method” that is carried out purely mentally (like a method of performing a specific routine of addition and substraction steps)?

                Math is a Court created exception to the statute. So by itself, you cant get a patent on Math. However that does not give you cart blanche to glimpse at a process patent and see math as one or more of the steps and then automatically declare the process non statutory.

                Because as Diehr made clear, Math can most certainly be one or more of the steps in a process and the claims as a whole ( integrated ) can be perfectly eligible.

                Any other questions?

                1. You’re not answering the questions. They are yes and no questions.

                  What is it so difficult for you to answer these obvious questions in a straightforward manner?

                  They aren’t loaded. There are no-built in assumptions. They are just obvious and direct questions about the practical evaluation of claims for subject matter eligility.

    4. 30.4

      We’re talking about.preemption of judicially excepted subject matter not mere preemption of old school inventions.

  14. 29

    The reason for the fiasco involving business methods has to be placed where it belong: with the PTO and with the Federal Circuit. The PTO removed the reference to Hotel Security in the MPEP in 1996 and began issuing business method patents. The Federal Circuit followed in 1998 in State Street Bank, a case that will live in infamy.

    But the problem goes deeper. This fiasco would never have happened had the Federal Circuit not existed. The regional circuits would never have overruled Hotel Security, a well established precedent of long vintage. The PTO would never have been successful in overturning that case even if it wanted to do so.

    That we are having this discussion today is then solely the fault of a court, the Federal Circuit, that has a monopoly on patent law.

    We really need to end this court’s monopoly that this fiasco not be repeated. There is no other way.

    1. 29.1

      ^^^ Apply the logic and you will see that there is an even greater Court with an even greater monopoly that is causing even greater harm.

    2. 29.2

      What fiasco? The only government agency in DC with a reputation for non-patrician reports OBM said there was no problem.

        1. 29.2.1.1

          Yes but experts at bean counting. And they said their bean count said there was no troll problem.

          1. 29.2.1.1.1

            The fiasco is not.mere trolling brosefus. The fiasco is how 101 was being loosely applied for npes and practicing entities alike.

    3. 29.3

      Hello? I recall congress creating creating a special secret prior art business method patent defense. And the President signing that into law. That would be a clear indication that ‘business method patents’ are statutory subject matter.

      1. 29.3.1

        This point has been out on the table of discussion many times now – and continues to be shouted down Internet style by the purposeful ignoring of the point’s logic and validity (note too that this was explicitly addressed in the Bilski case in denying what Justice Stevens and three other Justices wanted to do at that time).

        Real dialogue would demand that such valid points be integrated into any ongoing conversation.

        Real dialogue is HURT by such monologues that ignore valid points made.

        When such high volume monologues appear to be encouraged, should the thought that this forum is nothing more than propaganda be far from contemplation?

  15. 28

    People should really think about what is going on in patent law. It is devolving horribly.

    Consider these new “printed” objects like the printed car on the front page of the New York Times. What is the difference between a car printed and a computer program that is run? With information processing what happened was people could make virtual computer hardware by virtue of the general-purpose computer. And then they claimed well, I should be able to do anything I want with my GPC. Now with these printers, isn’t it the same thing with manufactures? Now why shouldn’t some say that the printer is merely doing what it was designed for? There should be no patents for anything that is manufactured for anything that can be merely represented by information.

    You get it? The patent law needs to adapt to the technology. It isn’t hard. Just look for structure. Where the structure develops is where the innovation is happening. In computers that is mainly software. And that is why people like Lemley claim software has no structure, which to a science educated person should disqualify Lemley from ever speaking again about patent law.

      1. 28.1.1

        Think about the level of abstraction that is being used by the anti movement. (And we should re-assert our use of the word abstraction as discussed by Newman in the Bilski dissent en banc.)

        Aren’t all manufactures just using the machines such as the lathes for their intended purpose? Aren’t all chemical patents just claims to using lab equipment for its intended purpose?

        There really isn’t any scientist I ever spoke with that didn’t view the computer as a tool like other scientific tools. So, to hold that a tool is just being used for its intended purpose ergo all that comes form using that tool is patent ineligible is again so ignorant of science that I am not sure how to even respond.

        I am afraid that is reality. You will note too that the people that push this anti stuff always stay abstract. They don’t like real examples.

        1. 28.1.1.2

          There is a universe of difference between math and a milling machine.

          A milling machine changes matter.

          Math does not.

          1. 28.1.1.2.1

            “Math does not.”

            Again, jess, please compare and contrast instructions for a machine and math. Also, please tell us what you think math is. Where is it?

            Yes, where is math?

            1. 28.1.1.2.1.1

              you keep asking and keep ignoring.

              Instructions for a machine designed to carry out math is math. Just check your textbooks on automata theory.

              Math is an abstract activity just like law.

              Where is law?

              1. 28.1.1.2.1.1.1

                You can describe any technical field in ways that makes it “math”. Biology – math. Physical chemistry, lots of math. For that matter, “math” is just a system of symbols and rules. So is the English language. Yea, I like that. English is a form of math, so anything that can be described in English (just as computer science can be described in the language of math) is abstract and not patentable. Conceptually, math is a construct of the mind, and it is discussed with an agreed-upon language. Don’t confuse the expression of math (used to tech about automatons and also aspects of chemical reactions) with the “is” of math. Computer science != “is math”.

                1. You can describe any technical field in ways that makes it “math”.

                  You can try to do it but your success at convincing others is going to vary wildly depending on the field you choose.

                  Go ahead and explain to everyone why, for example, a new, non-obvious structurally defined protein or a new non-obvious structurally defined apparatus for removing contaminants from crude oil is “just math.”

                  Then compare your explanation with the argument that a process for receiving a string of ones and zeroes, performing a calculation on that string of ones and zeroes to change the ones and zeroes into a different combination of ones and zeroes is “just math.”

                  Imagine you’re trying to persuade a skeptical judge.

                2. English is a form of math, so anything that can be described in English (just as computer science can be described in the language of math) is abstract and not patentable.

                  I don’t believe these arguments ad absurdum are persuasive to anybody when it comes to defending computer-implemented information processing patents.

                  The arguments against software patents may seem existential to you if you rely on such patents for your existence. But they’re not existential to the 99.9999% of society who doesn’t rely on them and who sees them as a blight on the patent system.

                3. “English is a form of math, so anything that can be described in English (just as computer science can be described in the language of math) is abstract and not patentable.”

                  UMmm… no. English has too many contradictions, inconsistencies, and erroneous foundations to be math.

                  Even the (incomplete) rules for English exceed 20,000 – the rules themselves aren’t even fixed, they change…

                  Part of the problem is that each person changes the rules for English as they perceive them, with others picking up and making additional changes…

                  That is how dialects form.

                  That doesn’t mean English can’t be used for math … But the English so used is drastically constrained, and excludes huge swaths of the language. One such restricted form is called COBOL… and even it was extended in directions English doesn’t do well.

    1. 28.2

      Consider too an automated factory or automated chemical production. Processed information as real as a new molecule. Every scientist worth their salt knows that. So, then the rule should be that anything that is automated should have patent protection removed. Or saith the anti movement.

      1. 28.2.1

        The natural extrapolation is a 3D molecular printer, something equivalent to the replicator device from Star Trek: The Next Generation. It can make *anything* – it just needs to be programmed with the right pattern. If you posit the existence of such a device, does everything become unpatentable?

      2. 28.2.2

        NWPA Processed information as real as a new molecule. Every scientist worth their salt knows that.

        Just so I’m clear on what you’re asserting here: your saying that scientists who disagree with your statement that “processed information” is “as real as” a new molecule are not “worth their salt”?

        I guess to make sense of your assertion, you could first explain what “as real as” is supposed to mean? Does it mean “equivalent for all purposes”? What else is “as real as” “a new molecule” and/or “processed information”? What isn’t?

        Accordin to you, should every method of producing something “as real as” a “new molecule” (whatever that means to you) eligible for patenting?

        1. 28.2.2.1

          We’ve had this discussion many times. Your latest is to have added “objective” to modify structure.

          Let’s face it. You are a mystic. You refer to manufactures and say they have no structure. What exists without structure? Software not only has structure but a functional relationship with the computer. Unlike your music.

          So, how about you tell me the difference between music and wheat which is what ended our last discussion on this point.

          Or are you up to your usual game of making ridiculous claims and then asking for clarifications and then blabbing on and on (maybe throw in a few comments with claims you don’t like ’cause) and then refusing to actually respond to me.

          So, compare and contrast music and wheat to prove your point on structure.

          1. 28.2.2.1.1

            Now why did I know that MM would not compare and contrast wheat and music. And that he will not continue this regarding his assertion that music is like software.

          2. 28.2.2.1.2

            Software not only has structure but a functional relationship with the computer. Unlike your music.,

            In fact whether “the computer” has a “functional” relationship with any kind of information (sound waves, light waves, weather patterns, pieces of paper with holes punched in it, etc) depends on the details of “the computer”. You agree with that, I’m sure.

            My computer plays music that your computer doesn’t play because of the new way that I’ve personally modified my computer (I created some “rules” that determine the specific songs that can be played by my computer when it’s not communicating with another computer). Because of this modification, some people (people who share my excellent taste and who are curious about what else is out there) would pay more money for my computer’s functionality than yours.

            In addition, do not forget that for a long time now people have been making music — released on tape, LP, CDs, YouTube, etc — consisting in whole or in part of data (e.g., modem) transmissions, enjoyed purely for their audio value. Some of that music was, and continues to be, software.

            Like software and arguments, people speak of music as having an abstract” structure.” That’s because it’s true (there is structure in the abstract sense). But you can’t patent that kind of “structure”. The physical structure and non-physical “structure” of encoded music depends highly on the details of the code that one is using, as well as machine’s ability to translate that code — equally true of software. That fact presents serious problem when claims purport to cover all “modified” machines with a given functionality. What exactly do your “modified” machines and “readable media” look like, objectively and physically, and how exactly do they differ from the prior art? If you can’t answer that question, then you’re simply claiming the new functionality of the machine. It think it’s a difficult question to answer in the case of information processing instructions that are executed by generic “information processing machines”.

      3. 28.2.3

        No.

        You patent the device, not the idea of the device.

        The printer can manufacture devices which can be patented.

        Just as a 2D printer can print copyrighted materials.

        Your “the sky is falling” is getting a bit shrill.

      4. 28.2.4

        I don’t believe any of us said that.

        The only thing I know I said was that what is done within the computer is math, and should not be patented.

        I have never said what is produced by the interfaces or attached machines cannot be patented.

        You are attributing things to people that they did not say.

    2. 28.3

      One other bizarre aspect of this is religion. The religious seem to believe that thought and spirits occur in some ether and are not entirely the result of your physical brain. That is the basis for the “abstract” notion of “math” and thought. As if claiming a machine that performs a thought process that a human brain does is abstract, which evinces such ignorance of modern science that it is hard to know how to even respond to such assertions.

    3. 28.4

      And that is why people like Lemley claim software has no structure, which to a science educated person should disqualify Lemley from ever speaking again about patent law.

      +1

      1. 28.4.1

        I’ve got a Ph.D. in science, I’ve taught science to high schoolers, to undergrads, to graduate students, to post docs, to other scientists, and to lawyers (including scientist lawyers).

        What Lemley and a lot of other people (including more and more judges) seem capable of understanding and which you seem to have great difficulty understanding is that the “structure” of software is not the same type of “structure” that scientists think of when they discuss physical objects. It’s much more like the “structure” of an argument.

        Moreover, whatever physical “structure” software has, precisely none of that structure ever appears in patent claims that purport to cover software. The opposite is true for claims that cover new physical objects: the novel structure is recited.

        1. 28.4.1.1

          Oooh now the fake grandiosity has graduated to a “PhD” and he’s been “teaching” too to an imaginary audience LOL – sure ! And I taught NASA how to land on the moon ! Look upon my works ye mighty and despair ! Let us know when u can verify any of this fantasy?

          1. 28.4.1.1.1

            Let us know when u can verify any of this fantasy?

            Are you doubting that I have a Ph.D. in a technical field? Or that I have presented my work to other scientists from all over the world?

            Or are you doubting that someone with my background would disagree with NWPA (and you, apparently) when he asserts that “Lemley should be disqualified from talking about patent law”?

            Either way, it seems strange to doubt such assertions. This is a patent blog, after all. Plenty of patent attorneys have serious technical backgrounds (and legal backgrounds).

            1. 28.4.1.1.1.1

              MM: Unlike many on this board, you have produced zero facts or credible, verifiable evidence that you possess credentials or relevant experience of any kind – about all that comes across in your content is that you have an inordinate amount of time to troll message boards. If and when you can point to some meaningful patent, litigation or decision you played some role in then we can decide if anything you have to say is worth reading, you know for professional purposes, and something other than for pure entertainment purposes that is.

        2. 28.4.1.2

          You are the one that didn’t know what the Church-Turing Thesis was and ridiculed me for bring it into the discussion.

          I think that pretty much means that you aren’t worth your salt. Any scientist that lives in the information age and doesn’t understand the Church-Turing Thesis is not worth their salt.

          1. 28.4.1.2.1

            Well, you don’t seem to understand it.

            After all, that is what showed math and software were the same thing.

            1. 28.4.1.2.1.1

              Can you copyright math, jesse?

              Don’t move the goalposts and try to talk about a math book – just math itself, can you copyright that?

              1. 28.4.1.2.1.1.1

                Personally, I don’t care.

                I already know math isn’t supposed to be copyrighted…

                Yet I also know that every math paper IS copyrighted, as is every program written.

                1. Well jesse, personally I think that you should care.

                  I do thank you for your candor – you are the very first anti-software patent person to have the decency at least to look at the ramifications of the software is math position as to ANY type of IP protection.

                2. (and I did notice that you moved the goal post a little bit there in trying to move away from math to math paper) – I asked you to keep your focus on the actual question I asked.

                3. I already know math isn’t supposed to be copyrighted…

                  Yet I also know that every math paper IS copyrighted, as is every program written.

                  “Math” and “a math paper” are rather different concepts. One is a law of nature; the other is an author’s particular expression of his or her observations about the law of nature. That is why there’s a difference.

                4. David,

                  You hit on the precise reason why I stressed the point that the goalposts were not to be moved.

                  You cannot be a little bit pregnant.

                  If software is math, then there can be NO IP protection of any kind.

                  You get a little bit pregnant by introducing the idea that some protection beyond math is allowed because of “paper” or stringing together an explanation of the underlying math (for copyright) and you are fully pregnant with the fact that there is more than just ‘math’ in the outside-of-the-mind manufacture created by man as a machine component that is created for some utilitarian purpose (mind you – which meets the other part of 35 USC 101), and you must logically embrace the definition of software accords with something that – as a category – is patent eligible.

                  Every bit and in exactly the same way as ANY category of any other manufacture of man.

                1. trying to send a message on a phone on a train is sometimes awkward…

                  Can a page from a phone book be copyrighted? can a line? just a number?

                  was the formula e=mc^2 copyrighted? Could it have been? Should it have been? How about the proof?

                  Why are you bringing up copyrights when patents are being discussed?

                  What are you defining as math? A single equation? Several related equations? A proof?

                  To what does copyright apply? A single word? A line? A press release?

                  Maybe just a significant expression?

                  A problem that everyone has, whether they be copyright lawyers, multinational corporations or just joe public is knowing just where the line of copyrightability lies.

                2. No, a phone book cannot be copyrighted.

                  E=mc^2 was copyrighted but fair use means anyone can use it.

                  Copyright applies to creative work fixed in a medium. There are hard edge cases but those are seldom important to software. They can be more important to computer animation, and there will eventually be new common law in that area.

                3. Last phone book I looked at still has a copyright notice on it….

                  Now, there is a lot of information in a phone book that ISN’T copyright. The name associated with the phone number is a fact, and as I understand it, facts can’t be copyrighted. But the organization, and presentation, of those facts can be. Even the advertisements in it are copyrighted.

                  I THINK (could be wrong though), that that is how math proofs end up copyrighted. The individual formulae are just facts, but the inter-relationship between those facts should be (that is how the facts are being presented).

        3. 28.4.1.3

          MM, you didn’t have to tell me that you had a PhD. It was quite obvious to me from the quality of your posts and your thinking over time.

          As I have said before and I will say it again here, I look forward to your posts and your ideas. You seem to be able to cut through the sophistry better than most.

          1. 28.4.1.3.1

            I look forward to anon’s posts. Anon’s posts take the time to point out the misapplication of the law and the misapplication of the facts that often accompany posts by the anti-information processing movement.

            1. 28.4.1.3.1.1

              Thank you NWPA.

              I do try to stay away from the weak “policy”/opinion style posting and stick with law and facts, as anyone who can put aside the spin and look at the situation in an objective fashion can see the Judge Jacob wisdom.

            2. 28.4.1.3.1.2

              If only he would go the extra mile and provide a cogent explanation of why the the law was specifically “misapplied”. And give us some sources for his alleged “facts” and findings thereof. But alas , we are left dangling on those fronts, left to depend on yours and d his say so.

      2. 28.4.2

        You are mixing reality with the abstract…

        Software has a logical structure.

        Software does not have physical structure.

        1. 28.4.2.1

          That is not correct jesse, as in order to earn copyright, software cannot be purely in the mind like you are attempting to portray it.

          You are the one making the mistake of thinking of the idea of software as opposed to the reality of software.

          1. 28.4.2.1.1

            It has to be written down…

            What “reality of software”?

            It is a written product, using a written language.

            Just as a history book can be written.

            I was taught that copyright protects written information, and patents protect things made of matter.

            1. 28.4.2.1.1.1

              Does your pre-school have a computer stuck on the patentlyo website?

            2. 28.4.2.1.1.2

              It appears that what you were taught is not complete. And unfortunately you don’t care to learn the rest of the lesson.

              Once you take software out of the mind, you necessarily have structure.

              In the patent context, written matter comes in more than one variety.

              While this point is often attempted to be shouted down, there is a very real difference in the patent law context between Set B printed matter and Set C printed matter.

              The plain fact is that printed matter CAN have patent weight.

              This is a baseline fact that must be accepted even if you don’t care about it.

              This is reality.

              If you want to deny reality and go in with your posts, not caring, then you are not attempting to hold a conversation and rather than joining a dialogue all you want is a monologue, you act against the stated posting policy here.

              1. 28.4.2.1.1.2.1

                “Once you take software out of the mind, you necessarily have structure.”

                Only the logical structure it started with, and a written language. Neither are patentable.

                Many of those patents on writings are apparently being dismissed. “Business process” is a rather abstract concept… not much reality to them other than the people carrying them out.

                Just like law is an abstract process itself, and a business process as well.

                1. Is it possible jesse that you are describing what your brain perceives programming to be and not what software actually is on a physical machine?

                  Think about it. I get the feeling you never took EE classes.

                2. He appears fixated on the idea of software and the love of math as a discipline, refusing to budge from his world view. Not only does he appear to lack an appreciation of EE, but any sense of real world engineering as well. As for an appreciation of law, well that too is completely lacking. He may not be able to hold a conversation on this topic. I think that monologue, not dialogue is all that we will see.

                3. Nope. It was the EE classes that formed that.

                  The math classes explained what the math required for logical evaluation. The automata theory explained the background for computation.

                  The EE classes just showed how the emulation for computation was done. One fun item was realizing that a flip-flop was not based on math, but electronic time delay feedback loops…an analog device; but provided a good emulation of the storage of a state (even more fun, was finding out that a flip-flop could store three states – high, low, both/neither depending on how it is examined. Which is why powering up a chip has a reset signal to force a stable state)

                4. I think he may be doing that, if he is, because of how software is claimed (aka not on the physical level). At least one would likely guess that nwpa.

                5. Oh please. Because a chemical process can be described in language (yet also practiced in real) it is abstract and not patentable. Look, computer science uses mathematical type of nomenclature, or programming languages, if you will, to express ideas about information processing. When code in that language is transformed into instructions that transform the capabilities of a machine, it is not math, it is something useful and tangible, and certainly capable of being imitated and copied by others.

                  There’s some intellectual dishonesty going on around here, and it’s rampant. Because something can be described in a “language”, be it a computer language, or math, or English, or the symbols of chemistry, or the symbols and formulas of electrical engineering, does not mean that all things that can be so described are abstract. In all cases, those “abstractions” of those technical things are what are patented, because we must use a language (an abstraction of symbols and rules) to describe them. You, and others, are conflating the description of something with the real world implementation of the thing that is described.

                6. heirarchyofpontificationbuckets

                  You are absolutely (and not just “reasonably”) correct.

                  jesse has argued

                  1. math cannot do anything (which is correct), but then has argued that

                  2. one cannot patent auto piloting software (when in tangible physical functioning form) because it is “just math”,

                  he misses the problem his contradiction creates which is a mystical assertion that “abstractions” can fly planes in reality.

                7. “he misses the problem his contradiction creates which is a mystical assertion that “abstractions” can fly planes in reality.”

                  Nope. They can’t.

                  The math doesn’t do anything.

                  The software doesn’t do anything. It DOES describe HOW to do something. But it remains just a description.

                  The CPU can’t DO anything that affects the real world – all it can do is computation.

                  It requires device that translates symbols into some physical action (and the reverse). It is that device that flies the airplane. Not the CPU, memory, or program. They just contain or manipulate symbols.

      1. 28.5.1

        Of course technology changes business methods ergo ….

        And information processing is not business methods. And automating the processing of information is not a business method.

        1. 28.5.2.1

          He relates every software related patent to business methods. Dennis busted him on this exact point a couple of weeks ago.

        2. 28.5.2.2

          David, no. See, post 17 below for more. link to patentlyo.com

          Hotel Security was about nonstatutory subject matter mixed with statutory. Invention had to be in the “means.” This doctrine is still followed in regard to printed matter — In re Russell (CCPA) followed Guthrie v. Curlett that followed Hotel Security.

          The principal defense is lack of novelty and invention. Section 4886 of the Revised Statutes (U. S. Comp. St. 1901, p. 3382) provides, under certain conditions, that “any person who has invented or discovered any new and useful art, machine, manufacture or composition of matter” may obtain a patent therefor. It is manifest that the subject-matter of the claims is not a machine, manufacture or composition of matter. If within the language of the statute at all, it must be as a “new and useful art.” One of the definitions given by Webster of the word “art” is as follows: “The employment of means to accomplish some desired end; the adaptation of things in the natural world to the uses of life; the application of knowledge or power to practical purposes.” In the sense of the patent law, an art is not a mere abstraction. A system of transacting business disconnected from the means for carrying out the system is not, within the most liberal interpretation of- the term, an art. Advice is not patentable. As this court said in Fowler v. City of New York, 121 Fed. 747, 58 C. C. A. 113:
          “No mere abstraction, no idea, however brilliant, can be the subject of a patent irrespective of the means designed to give it effect.”

          It cannot be maintained that the physical means described by Hicks,-the sheet and the slips,-apart from the manner of their use, present any new and useful feature. … In other words, if the “art”
          described in the specification be old, the claims cannot be upheld because of novelty in the appliances used in carrying it out,-for the reason that there is no novelty.

          The patent seems to us to cover simply a system of bookkeeping
          made applicable to the conditions existing in hotels and restaurants.
          The fundamental principle of the system is as old as the art of bookkeeping, i. e., charging the goods of the employer to the agent who takes them.

          160 F. 2d, 467 at 469

          One can see in the above the analysis of the Supreme Court in Bilski, Mayo and Alice. They were following the Hotel Security template without acknowledging that they were doing so.

  16. 27

    Really interesting comment by Stefano Barazza on PatLit, questioning Judge Wu’s comment on a patentee getting a valid patent under the then-prevalent interpretation of the law, later held invalid under a new interpretation. The link is link to patlit.blogspot.de but the comment is hidden in the “comments” section. I agree with him on the difficulty of reconciling this decision with the principles of legal certainty and legitimate expectations (at least from a civil law perspective). It almost sounds as if we’re saying “Hey, look, if you’re lucky, the law will stay the same, if you aren’t, your patent will be invalid”…maybe…one day…if… Not a great way to help inventors do business!

    1. 27.1

      JS. Thanks for the link to Stefano’s great work at PatLit. We do have an interesting issue that the Courts are willing to change the law in a way that retroactively impacts property rights while Congress generally takes the approach of forward looking substantive changes. If Congress had passed a law that invalidates hundreds of issued patents, the result would likely be a takings claim against the U.S. government. The difference with the Supreme Court is that they are not purporting to change the law but rather to reset our understanding to the correct frame.

      1. 27.1.1

        Hi Dennis,
        I take your point, but isn’t it practically the same? Regardless of who brings about the changes, courts or Congress, and the form of those changes, reform or new interpretation, the practical result is the same. In this case, a patent that was valid under the then-prevalent interpretation and is invalid under the now-prevalent interpretation.

          1. 27.1.1.1.2

            Dennis, I wrote “re-set” at # 24 below, in the context of Alice re-setting State Street. Now I see references to unlawful “taking” but I don’t yet see it.

            It was the Federal Circuit that handed State Street down. Who knows whether the Supreme Court would have reversed. The law is in flux, isn’t it, till SCOTUS speaks. Well, for the first time since State Street, SCOTUS has spoken.

            All those who assumed that State Streeet was the ultimate pronouncement on 35 USC 101 were under a misapprehension. That SCOTUS has another view is just their bad luck, isn’t it?

            In other words, why should SCOTUS have to do what the CAFC tells it to do? Where is the “taking” please?

            1. 27.1.1.1.2.1

              I am pretty sure that no one commenting in the last five years has thought that the State Street case is “the ultimate pronouncement.”

              I thought that the call for posts to be thoughtful would have eliminated strawmen.

                1. 6, Cert. was denied to State Street Bank in 1999. Bilski (Fed. Cir.) was 2008, a mere 9 years. During those 9 years, State Street Bank was the last word on 101. But it was vacated in 2008 with all the other 101 cases except Alappat.

                  The era of State Street Bank was short-lived. The outcry when it was announced was loud, and only grew louder. No Federal Circuit case, or for that matter, any Circuit Court case in history, ever drew as much fire. The case was the Dred Scott case of the Federal Circuit. It was so bad that it might bring about not only the fall of the case, but the fall of the Federal Circuit itself.

                2. That would be interesting to witness. Frankly I’m up in the air about having the fed circ as an institution. On the one hand they no doubt do a lot of good in the patent arena. On the other they no doubt get too immersed in their role. And that is likely unavoidable.

            1. 27.1.1.1.3.1

              Yes.

              I don’t have a copy of the papers or a government brief. If you or anybody else does, it might be interesting to see the point of the petition.

              1. 27.1.1.1.3.1.1

                It would be interesting since the SCOTUS expressly overturned State Street in Bilski.

            2. 27.1.1.1.3.2

              Night, the cite to the cert. denied is

              State Street Bank & Trust Co. v. Signature Financial Group, Inc.
              525 US 1093, 119 S. Ct. 851, 142 L. Ed. 2d 704 – Supreme Court, 1999

              1. 27.1.1.1.3.2.1

                It would be good to see the petition etc. I wonder if they put in the pet. “The court should grant cert to avoid blowing up the patent system and fed circ” lol?

              2. 27.1.1.1.3.2.2

                Yes and doesn’t that kill the idea that the SCOTUS was somehow sleeping and woke and just reset things.
                I think it means that we have some new federal common law that changes the 1952 Patent Act and Graham–at least.

      2. 27.1.2

        I think there are many reasons that the “reset” characterization is not plausible is that the SCOTUS could have taken cert and invalidated claims under 101 for many years and didn’t. Furthermore on cases they did take cert they didn’t bring up 101.

        So, the proposition that the SCOTUS suddenly realized that 101 was not being interpreted the way they thought it should is preposterous.

        1. 27.1.2.1

          Furthermore, one plausible way of reading the SC jurisprudence prior to Alice was that claims that were “abstract” in that they covered all possible ways of performing an idea were invalid. That’s the way I read the SC jurisprudence. This way, if the claims were directed to and limited to a machine that performed an idea, the claims were valid. (In Benson for instance: the CLAIMS were abstract; the SC instead said the IDEA in Benson was abstract, which is not the way I read Benson.) Instead, the SC came up with this “abstract idea” test and never thought it through (everything performed on a computer is abstract at some level).

          It would be one thing if the SC had jurisprudence that was clear, but they don’t — even after Alice, they still don’t. Unless you’re talking physical things (like semiconductors, airplane wings, etc.), I can honestly say I have no idea what’s patentable any more. Anything that’s possible to be performed on a computer is suspect.

          1. 27.1.2.1.1

            I don’t think that anyone that doesn’t have an agenda really believes the SCOTUS did anything but make new common law.

            1. 27.1.2.1.1.1

              The fact that this is controversial is an indication of the times we live where money buys everything.

          2. 27.1.2.1.2

            No, Rader came up with the abstract idea test, the SC followed Rader, and Stevens tried to restore Hotel Security, the case that State Street Bank refused to follow.

            The “real” culprit, however, was the PTO that had, in 1996, removed from the MPEP the reference to Hotel Security. They probably did so in response to dissent by Newman in Schrader recommending that they do so.

            1. 27.1.2.1.2.1

              So, Ned you want a case that was thought through prior to the information age and prior to the scientific theories behind information processing.

              Prior to the modern computer.

              Uh…no. I know that your lot would like to revert to 1920’s thinking.

              1. 27.1.2.1.2.1.1

                Night, you really have to stop this at some point in time. This is not about science, but about law.

                1. Here is a fact, jesse:

                  In the patent law context, software is equivalent** to firmware and is equivalent to hardware.

                  **and while perhaps painful, to keep the conversation from derailing, I do want to again stress that equivalence is not the same thing as “identical and being exactly the same.” Yes I realize that I should not have to stress this point, but unfortunately I do.

                2. What on earth makes you think that is “a fact” anon? Did your buddies on the fed circ tell you so? Or did you make that up yourself?

        2. 27.1.2.2

          I’ve been wondering about the 5th Amendment/taking issue for a while now, but something else occurred to me recently. Bear in mind I am not an attorney so I could be way off, but:

          The PTO is a division of the Commerce department, and I’m pretty sure the UCC governs unilateral changes to agreements. Everybody knows that you can go into McDonalds, give the cashier some money and information (your order), then receive your food and go sit down and eat it. This has been going on for decades, and if I walked into McDonald’s today and did the same thing, I would expect to be able to receive and eat my hamburger.

          McDonald’s could suddenly start turning away customers, saying “we don’t sell hamburgers anymore” — you’d have a bunch of unhappy customers but closing a business isn’t illegal.

          However, what McDonald’s can’t do is send the manager into the dining room to take away my half-eaten hamburger that I’ve already paid for, especially if they’re still selling cheeseburgers to other people up at the counter, just because they decided to change their business rules and apply them retroactively. That’s a fundamentally unfair business practice and nobody would stand for it. You don’t just get to change the deal unilaterally after it’s already in-flight.

          But how is this any different than the PTO (PTAB) or judiciary taking away a particular kind of patent that someone already paid for because they decided to change their rules and apply them retroactively? If I figuratively walk into the PTO and give them the money and information they require, and I get the product I paid for, how can it possibly be just to take that product away from me afterwards, in some cases long afterwards? It’s one thing to say “starting in 2015, no more patents on X,” but it’s entirely another to say “all those patents on X we granted over the past 20 years? Just kidding, those are now invalid.”

          I know, there are lots of people who think patent on certain subjects never should have been granted in the first place. But that doesn’t address the fact that they actually were.

          1. 27.1.2.2.1

            I get the product I paid for

            In the case of a patent claim, the product “you paid for” does not come with a “valid forever” guarantee. On the contrary, it comes only with a rebuttable presumption of validity and when that presumption is rebutted or the patent expires, the patent is gone forever. All this is by design. It’s like buying someting “as is” with the knowledge that it may break at any time, particularly if you keep taking it off the mantle to show off to everybody.

      3. 27.1.4

        What about the pre-existing right of the people to play bingo and hold assets in escrow and animate speaking characters? The PTO proposed to deprive us of those property rights illegally with no compensation and the courts rightly refuse to cooperate.

        1. 27.1.4.1

          Owen, when the PTO set about its mission to overturn Hotel Security and allow patents on business methods, what in the world were they thinking?

          Tragic.

          The people who invested a lot of money in business method patents are now out their investment. But, instead of getting mad at the Supreme Court, they really should be mad at the PTO, and a little less so at the Federal Circuit that did not reverse State Street Bank promptly. Instead we had to wait until the public outrage could no longer be ignored.

          This is not the kind of leadership we need from the PTO, not at all.

        2. 27.1.4.2

          Owen,

          Can we have a serious conversation and note that nothing in your comment is accurate and that the patents directed to each of the items you reference where for improvements leaving the items you list still open to all in their unimproved forms?

          35 USC 101 still allows improvement patents.

          1. 27.1.4.2.1

            If you read those patents you will find that they each describe a well known principle and simply mention a generic well-known computer while adding no structure, no meaningful limitation, and even no significant guidance on how to implement the combination. They pre-empt all modern computerized use of basic principles without adding anything beyond saying ‘do it on a computer.’

            1. 27.1.4.2.1.1

              Owen:

              Please. Enlighten us all. Lay out the claim language of these patents and show us the prior art that anticipates or makes obvious the claim language as written.

          2. 27.1.4.2.2

            anon: 35 USC 101 still allows improvement patents.

            Nobody is arguing that claims which protect an “improved machine” are per se ineligible.

            Some are. Some aren’t.

            Depends on the claim. And it always will — regardless of what the statute you cite when you perform the analysis.

    2. 27.2

      But Jurgen, that comment assumes there was a change law. Patents functional-at-the-point-of-novelty have always had problems with the law since O’Reilly v. Morse.

      I also see and agree with MaxDrei’s observations below that State Street Bank actually overturned well-established law that had existed for a century. Anybody that new anything about the law would know that State Street Bank days were numbered. It was just a matter of time until Supreme Court reversed that case one way or the other.

    3. 27.3

      Jurgen, as I mentioned, a major culprit in this Odyssey is the patent office that removed Hotel Security from the MPEP two years prior to State Street Bank. Rather than challenging a change in the law by the Federal Circuit as would have been the proper role of the government, the government unilaterally acted to issue patents on business methods and did not challenge State Street Bank.

      I think the patent office owes a duty to everyone to make sure that the law is developed in an orderly manner. That means that if it perceives that the Federal Circuit is in error, that they challenge the Federal Circuit at the Supreme Court level. But what they should never do is take the lead in changing the law, and then refuse to challenge the Federal Circuit, and then issue hundreds of thousands of patents on business methods for a couple dozen years, single-handedly creating the troll problem, and thereby forcing an outraged public to take the matter to the Supreme Court, not once, but twice because the Federal Circuit absolutely refused to follow the Supreme Court.

      If someone were to launch a Fifth Amendment taking case, this Odyssey would be at great story. The villains would have to be named, and I hope they are named eventually. Who in the PTO revised the MPEP to remove the reference to Hotel Security? That person should be named.

  17. 26

    The judge in this case is absolutely correct.

    How can he not be? There is no articulated standard for what makes something “abstract”. None, except for worthless sub-tautologies. A truly worthless jurisprudence of no help to anyone other than freeloaders and thus an unfit adjunct to Anglo-American law.

  18. 25

    What we are seeing in the district court cases is a complete failure to apply the Supreme Courts “Integration Analysis” for 101 statutory subject matter. The Supreme Court in Alice so stated:

    “At some level, “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id., at ___ (slip op., at 2). Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. See Diamond v. Diehr, 450 U. S. 175, 187 (1981). “[A]pplication[s]” of such concepts “‘to a new and useful end,’” we have said, remain eligible for patent protection. Gottschalk v. Benson, 409 U. S. 63, 67 (1972). Accordingly, in applying the §101 exception, we must distinguish between patents that claim the “‘buildin[g] block[s]’” of human ingenuity and those that “integrate” the building blocks into something more, Mayo, 566 U. S., at ___ (slip op., at 20), thereby “transform[ing]” them into a patent-eligible invention, id., at ___ (slip op., at 3).

    Yet, I do not believe we have seen a single case of a lower court judge even using the term “integrate” let alone applying a cogent integration analysis that explains why the claims are not, or indeed are “integrated” and thus statutory subject matter.

    Indeed, “Integration” remains the invisible elephant in the court room. However, as I have so often said on this blog, there are astute patent attorneys that are preparing the new generation of patent applications as legally integrated processes, that will withstand any challenge on 101 statutory grounds. When such a case makes it way to the Supreme Court we will see a reversal in this trend of amateurish analysis, and highly improper and illegal dissection and invalidation of process patent claims.

    1. 25.1

      Alice is a reversal-free, get-out-of-patent-case-free card for any judge. They are not looking at integration because it would weaken this thermonuclear weapon they’ve been given.

    2. 25.2

      101 IE, could you do the integration analysis here for us, using the facts of this case? I.e., show us what the Judge should have said in the opinion.

      Thanks.

    3. 25.3

      Very insightful thinking… I’m amazed at how cavalier the PTO and the Courts have been in finding new “Kabbalistic” mysticisms in the Alice opinion, even though it is devoid of any new substance. The fact that they had Thomas write it is all one needs to know in terms of its perceived importance in their eyes: it was just Bilski all over again, no thought or explanation required, case closed. It is only the opportunists and sponsors of serial infringers that are trying to impart new magical meanings to further their cause.

    4. 25.4

      “astute patent attorneys that are preparing the new generation of patent applications as legally integrated processes, that will withstand any challenge on 101 statutory grounds. ”

      — please explain

      — please give examples

      — practice tips would be appreciated

      1. 25.4.1

        Fish sticks said: “— please explain…”

        Sure, I would be glad to. This is part one of a series of instructional posts I will write in this thread in response to commenters request for examples of “Integration Analysis”.

        Before you can write and prepare a specification and corresponding process claims that are legally integrated and thus able to withstand the inevitable assault from an increasingly hostile judiciary and patent examining corps it’s important to have a legal understanding of just what “Integration” is as it pertains to patent law.

        In Prometheus the Supreme Court ultimately upheld Diehr as controlling case law for what “is” patent eligible subject matter and so characterized the holding in that case as follows:

        “In Diehr, the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. 450 U. S., at 187. These additional steps transformed the process into an inventive application of the formula.” (Emphasis Added)

        Thus we know why Diehrs claims were statutory. The keyword is “integrate”. The ordinary contemporary dictionary use of the term is defined as :

        verb (used with object), integrated, integrating.
        1. to bring together or incorporate (parts) into a whole.
        2. to make up, combine, or complete to produce a whole or a larger unit, as parts do.
        3. to unite or combine.

        The Courts use of integration in a 9-0 decision reaffirmed and set in legal cement the claims as a whole doctrine that was established in Diehr and set that case apart from all it’s previous cases. As a consequence, any act of ignoring elements in a claim for lack of inventiveness, novelty, individual eligibility, etc. is a clearly an illegal act. While it is commonplace and sometimes necessary to look at the individual elements of a claim to establish eligibility , to ignore any elements in the concluding analysis is not allowed according to Supreme Court precedent. This is the first and foremost step when conducting an integration analysis.

        In part two I will explain “Inventive Concept” the heart of all patents, and how a legal integration analysis prevents the surgical removal of the Inventive Concept that seems to be performed so routinely by todays lower court judges.

          1. 25.4.1.1.1

            Fish Sticks: “Thank you. I look forward to reading Part Two at your first opportunity.”

            The filter has been blocking part two . I think it may be because it is too long so I am going to try reposting with several parts, A, B, C,. Wish me luck!

            1. 25.4.1.1.1.1

              Part (A)
              Hi Fish;

              In preparing a specification for “Integration Analysis” it all starts with the “Actual Inventor” and their big idea. What is now being referred to as the ” Inventive Concept” by the courts. All Inventors feel like they have invented something new that has never been done before or they would not be filing a patent. So get that concept down on paper and then explicitly describe it in the specification. I would even create a section titled: INVENTIVE CONCEPT

              1. 25.4.1.1.1.1.1

                Part (B)

                In the recent past this would have been considered a big no no. Especially during the minimalist era in patent application preparation. But times have changed. We have Judges like WU literally making up “Inventive Concepts” and barely concealing their laughter while doing it, even for fully Integrated patents and then declaring the invention as directed to this inventive concept and therefore abstract! So being proactive when preparing the spec and claims is a must. Describe the concept and principle of the invention and then describe how the inventive concept is integrated in the claims, either by adding a new and useful element to routine steps of the art, or if the concept is known or old then describe how in combination the steps are a new use of old elements. I present some examples in part (c)

              2. 25.4.1.1.1.1.2

                Part (B)
                In the past this would have been considered a big no no. Especially during the minimalist era in patent application preparation. But times have changed. We have Judges like WU literally making up “Inventive Concepts” and barely concealing their laughter while doing it, even for fully Integrated patents and then declaring the invention as directed to this inventive concept and therefore abstract! So being proactive when preparing the spec and claims is a must. Describe the concept and principle of the invention and then describe how the inventive concept is integrated in the claims, either by adding a new and useful element to routine steps of the art, or if the concept is known or old then describe how in combination the steps are a new use of old elements. I present some examples in part (c)

                1. Part (C)

                  Here are some examples

                  Old Concept: Picking up objects using a vacuum cleaner.

                  New Use: Using a larger truck size vacuum cleaner/hose to pick up prairie dogs.

                  Old Concept+ plus New Use = Inventive concept!

                  (To be continued in Part D )

          1. 25.4.1.2.1

            Nonstatutory subject matter, counting to 100.

            Integrated: Place egg into boiling water, count to 100, remove egg.

            Disintegrated: place number into computer, count to 100, remove improved number from the computer, wherein the computer performs algorithm X on number, and wherein the number is an improved price.

            1. 25.4.1.2.1.1

              I don’t understand your intro Ned:

              “Nonstatutory subject matter, counting to 100.”

              Are you saying both the integrated and disintegrated examples are non-statutory? If so, why?

              I acknowledge the POSSIBILITY of 112 issues in both claims. But I don’t see a 101 issue. In the egg example, one of ordinary skill in the art would likely understand, after reading the spec, that counting to 100 means counting at a natural rate without pause. So, there is no 112 issue.

              In the disintegrated example, it is only disintegrated if there is no disclosed reason for the count. If, for example, paragrah 42 explains that algorithm x takes a fast 50 count to run and so, for good measure the user should count to 100 to be sure the algorithm has completed, then I don’t see an issue of disintegration.

              In any even, disintegration would be a 112 issue, not 101.

              1. 25.4.1.2.1.1.1

                Les, the counting was assumed to be non statutory.

                I 1) it changed the process of boiling the egg because at the end of the count, the egg was removed. This is the same as Diehr.

                In 2) the count had nothing to do with the result. Of course there is a 112 problem as well.

                As to 101, assume in 2) the entire process was old but for the counting to 100. I think then the claim might also have a 101 problem.

                1. Of course, Les, the assumption being that 2) discloses an otherwise eligible process, which in the example, is actually doubtful.

                2. Ned: “As to 101, assume in 2) the entire process was old but for the counting to 100. I think then the claim might also have a 101 problem.”

                  In that case you would be dis-integrating the claim, which is an illegal act. Integration analysis requires evaluating the claims as a whole.

            2. 25.4.1.2.1.2

              There is an interesting larger picture view result from Ned’s post that can be – and should be the takeaway.

              Careful (and yes critical) scrutiny reveals that the actual argument in play is that a proper claim must integrate all of the elements of the claim into a cohesive invention.

              That is it.

              It should be noted that no more is needed for this maxim. And it should be noted that “hiding” other theories, wants, and desires in this maxim should be discouraged.

              Long and bitter debates concerning ancillary matters have been attempted to have been decoupled from this larger theory.

              Whether or not claim elements or portions thereof use functional language simply does not matter.

              Whether or not claim elements, or portions thereof are items of the mental steps variety does not matter.

              Cut through the dust cloud and you can see that the logic that the Court uses would apply EQUALLY to a claim with elements written fully in “objective structural form” and with no elements of the mental steps type, thereby showing that ANY emphasis on these items as the source of the problem is misdirection.

              Simply discuss a claim (with full objective structural description) to a fish in a blue-tinted fishbowl, a bycycle, a long cDNA molecule and a iron plow (without more).

          2. 25.4.1.2.2

            Les, “Could some part provide examples of integrated claims verse disintegrated?”

            Excellent question Les. First, all process claims, by their nature, are “Integrated”. As I defined up thread a process is a series of steps with an outcome that can be “objectively” evaluated. When we see a disintegrated claim, we are looking at a claim that has been taken apart by a judge, or examiner, and left that way for conclusion purposes. Dis-integrated claims can’t function. They can’t produce anything. Think of a car engine completely broken down with its parts scattered all over the floor of a garage. That engine can’t run. The same is true for patent claims, especially a process. Diehrs claims are a prime example of a legally integrated claim. Take out any part of that claim, whether it is the math, the mold, the press, or the inherent need of a thinking human operator, and that process will not work. Likewise, an example of a dis-integrated claim is Diehrs claim without the Arrhenious equation. Take out the formula and Diehrs claim does not work. The claims must be evaluated as a whole because the entire claim is the invention, and thus either the eligible, or ineligible subject matter. No individual elements or part of a claim is the invention.

            However there are Integrated Processes that are not legal and therefore not eligible. These processes though statutory and constitutional are exceptions because of judge made law. So Arrhenious could not get a patent on his equation reduced to a series of steps and claimed as a process, even though the process is integrated and the outcome can be objectively valuated. Math is a Court created exception to the law.

            Even if Diehr, invented the Diehr equation, and it was inventive, pioneering, completely new math, he would not be able to get a patent on the integrated process for working the equation. (Though he would deserve it, the SCOTUS has taken that right away.) Now if Diehr took his math equation and further integrated it in a process that made a business run more efficiently and created a higher profit then he would have a legally Integrated claim and would pass the bar at 101. For example, lets say the steps involved a deep fryer, French fries, a queuing system for customers, and cash registers for taking orders, and of course strategically placed human operators to take the order. If all those steps working in concert with Diehrs inventive new equation produced French fries quicker, and at a higher profit he would have a patent eligible invention, even if all the other steps were old. The legally “Integrated” claims as a whole would pass 101 based on Supreme Court precedent.

            1. 25.4.1.2.2.1

              Now lets build on the Diehr equation example from above to get in to examples of Integrated Inventive Concepts. This shall count as part II.

              If Diehrs math equation was old, like Arrhenius, and he still “Integrated” his equation in the process above for making and serving French fries at a higher profit, and all the individual steps were old, as described above, he would still pass the bar at 101. Why? Because the “Inventive Concept” would be in the combination of all the old elements.

              Now let’s assume all this time the Diehr equation was being done by an employee who was a Rainman character and could do the math in his head, and Diehr thought he could make more progress if he automated the equation with a computer system. His process would not be negated because a computer and software was now involved. Diehr would still have a perfectly statutory process just like the actual rubber curing process that was held as eligible subject matter. This is the exact case of Diehr, and the lawful why to perform “Integration Analysis” of a claim.

              Conclusion, if you stay honest and follow the law, Integration Analysis will get you to the right result every time. Now in part three I will give examples and tips for preparing a specification and claims that can take advantage of the “Integration Analysis” as established by the SCOTUS.

              1. 25.4.1.2.2.1.1

                Dear 101 Integration Expert –

                I would be interested in and integration analysis argument responding to a rejection based on the Scotus’ more recent impermissible “gist” distillations that ignore the claim as a whole which address the claim as a single word or two or three word phrase, such as the hedging of Bilski and intermediate settlement of… which, is it Alice?

                1. Les: “Dear 101 Integration Expert –
                  “I would be interested in and integration analysis argument responding to a rejection based on the Scotus’ more recent impermissible “gist” distillations that ignore the claim as a whole which address the claim as a single word or two or three word phrase, such as the hedging of Bilski and intermediate settlement of… which, is it Alice?”

                  Hello Les,

                  Thank you for the opportunity. There are basically two Integration Analysis arguments in the wake of Alice that everyone should be using, if they can.

                  1. The claims are a fully “Integrated” process and not one of the implicit exceptions and therefore it’s a gross legal error to apply step two of the Alice two step test. Show your rational and facts to support the argument. NOTE: (Step two is usually were examiners, and judges too, are running amok and impermissibly distilling inventions down to the “gist”.)

                  or, if you do have to go to step two argue…

                  2. The claims which do contain this concept (one of the implicit exceptions), further “ Integrate” the concept into a process that is new and useful and therefore transform the claims into an inventive application of the concept. With “new” being a new combination, and “useful” meaning one or more benefits that could not be achieved with just the concept standing alone. Cite the appropriate sections of Diehr, Mayo, and Alice. Stick to your guns and force the Examiner, SPE, or the PTAB to deal with your “Integration Analysis”.

                  Let me know if you have any questions.

  19. 24

    At 2.1.1.1 Mellow observes:

    “I do like the EPO rejection styling in the case where an applicant is claiming no more than the results sought to be achieved.”

    which set me thinking, that (post Alice) jurisdictions do not differ by much, on that which they think is fit to patent but do vary quite a lot on which particular statutory provision they use to cull out the unfit claims.

    For example, under the EPC, the EPO uses its 102 and 3 provisions while the English courts use its 101 provisions. Same statute, different routes to rejection.

    People here complain that Alice makes patentability filtering a mere smell test. They fear that nothing can withstand the “abstract” test. I think all courts smell the substance and form a gut reaction, whether the contribution to the art, in the claim in view, is in fact a contribution to the useful arts. Yes or No. Then they find the statutory tools to finish the job. Yet another example of the Kahnemann/Haidt quick/slow thinking modes of the human brain. BTW, there is a nice Paper out there somewhere that explains how very relevant Kahnemann/Haidt is to the legal profession.

    The idea that, pre-Alice, there were no smell tests is nonsense. To that reality, Alice makes no difference.

    I think State Street was an absolute jaw dropper, at least for the world outside the USA. I think Alice merely re-sets the patentability gauge, to revert to the line on fitness for patenting which accords with the 50 year old feeling in the gut of all players except a few members of the patent profession who make their living from software patents. I think this blog (not surprisingly) features some of those patent attorneys who have a deep and serious financial self-interest in software patents. They assert that the interest is not theirs but that of their clients. Well, as Mandy Rice-Davies said “They would say that, wouldn’t they”. And as Jonathan Haidt points out, the mahout in the human brain is brilliant at justifying with perfect logic the impulsive intuitive gut reactions of the elephant.

    1. 24.1

      To me, you’re ignoring reality. The reality is that “software” is everywhere. Right now, I’m typing on a computer filled with software. I’m looking at my two smart phones, filled with apps, and with which I do my banking, control my thermostat, see whether my garage doors are up or down, etc. I go home and control my networked thermostat using my tablet or smart phone. I turn on my TV and associated equipment using an RF/IR remote control I programmed myself using my computer. I watch TV using boxes on my home network that send TV to the computer I have behind my TV, which sends the TV data to a network attached storage device I have in my house.

      I got home using my car, which has tons of software in it to control everything from the sound system to the engine to the fan that comes on to cool my turbo. I can log on to a website to see how much power is being generated by the solar cells I have on my roof. Much of the stuff I buy these days has been CNC machined using or manufactured on devices that use software. I print to several printers at home and at work, and each of these is controlled — gasp! — by software.

      Software is literally everywhere and in everything. Anything electronic has software in it.

      If Congress wants to outlaw patents on this immense area of innovation, they can do so. But the Supreme Court should not and should carefully script its cases so that it does not. In Alice, the Supreme Court did not do so and it’s unclear what’s patentable in software after Alice. That’s not what should have happened.

  20. 23

    Here is a passage from the decision: “.. the law’s long-standing concern with patents that consist of old material with the addition of a new, but abstract, idea: “the vice of a functional claim exists not only when a claim is ‘wholly’ functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.” Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371, 58 S. Ct. 899, 903 (1938). An abstract idea is the extreme case of functional language.

    “Functional” means “relating to the way in which something works or operates”. So, if a patent claim, at the so-called point of novelty, describes “the way [the invention works]” it is functional, and therefore abstract, and therefore ineligible? With no hyperbole, is this not astounding? For that matter, “structure” can be described in language that is extremely broad but not “functional”. A “blob”. A “body”. A “base”. A “connector”. A “nail” (have you ever visited the nail section of Home Depot?). A “receptacle”. A “loudspeaker” (which is not only broad, but functional when you think about it). The only limit here is your own imagination.

    Alice, and Wu’s application of it, is nothing more than a “too much breadth” finding.

    How about we look at some mousetrap patents, which go back quite a ways.

    1,342,255: “In a mouse trap, the combination of a base; a pivoted spring actuated bail-shaped jaw adapted to cooperate with the base and having a bail-shaped tail piece connected therewith; and a bait-holding trigger, pivoted on the base behind the pivots of the jaw, adapted to engage the tail piece and extending forward to a point in front of the pivots of said”. How about, “adapted to engage”, or “adapted to cooperate”, or isn’t even “connected therewith” arguably functional?

    2,052,345: “1. In combination with a mouse trap comprising a block, a pivot member extending across said block, means for confining said pivot member to said block, a striker pivotally mounted on 40 said pivot member, a spring extending about said pivot member and normally urging said striker toward closed position, and an ejector device comprising a metal member having a curved rocker bottom, a rearwardly extending thumb-rest and 50 a forwardly extending arm engaging the underside of said jaw, said ejector being centrally apertured to receive said pivot member. ” If you can’t see the “functional” language, please, seek help without delay. “pivotally mounted” … “engaging”, etc.

    1,642,151: “l. In an animal trap, a body portion having an opening, a jaw adapted to intersect said opening, a guideway for said jaw having means to prevent the lateral movement of said jaw in one direction, a. movable stop adapted to prevent lateral movement of said jaw in a second direction when the trap is set, and to permit said movement when the trap is sprung, and means adapted to limit said lateral movement.” “adapted to intersect”. Functional. “movable stop”. Functional. “to permit said movement” Functional. “guideway”? Well, something is a guideway if it “guides”, so isn’t that also functional?

    When a premise leads to absurdities, the premise must be false. Judge Wu’s premise that an “abstract idea is the extreme case of functional language” could serve as a reason to invalidate any patent. No matter how detailed the claim, one can most likely find something in it, at or near the point of novelty, that is functional, and therefore abstract, and therefore invalid. Sounds like an absurd outcome.

    1. 23.1

      So-called point of novelty?

      You might want to actually read Faulkner v. Gibbs, 199 F.2d 635 (9th Cir. 1952). link to scholar.google.com

      The problem in Halliburton was that everything was old, the combination, the method of counting tubing collars, everything. Apparatus for enhancing the echoes of the tubing collars was known as well.

      The only thing new was the particular mechanical tuner disclosed. Yet that tuning apparatus was claimed in terms of what it did, not what it was; and a completely different apparatus that was operating electronically was held to infringe.

      Thus the problem presented by the very broad claim in O’Reilly v. Morse was also presented to the Supreme Court in Halliburton; and the result was the same. The Halliburton claim essentially claimed the result, and had in it none of the novelty actually disclosed. The claim itself had not one breath of the novel structure that the inventor had actually invented.

      One cannot reach the issue of whether a claim is functional at the point-of-novelty unless one determines first what in the claim is new and what in the claim is old. If there is novelty in the combination, for example, there cannot be an exact point of novelty.

      So long as the claim is not functional at the point of novelty, there is no prohibition in claiming elements functionally. No court that I know of has ever gone that far. In fact, it is preferred to claim old elements functionally because it is the function of the old element that is important in a combination, not its structure.

    2. 23.2

      hierarchyofpontificationbuckets great post.

      I don’t think there is any good case law for this “point of novelty” when claims are supposed to be considered as a whole. And when the specification has to be enabled.

      Now we have district courts making patent law. Great.

      And a Fed. Cir. stacked with Google Judges.

      1. 23.2.1

        Night, Hotel Security and its progeny, In re Russell (printed matter doctrine) were well established law in ’52. Did Congress

        intend

        to overturn these cases?

        1. 23.2.1.1

          Ned: “Night, Hotel Security and its progeny, In re Russell (printed matter doctrine) were well established law in ’52. Did Congress intend to overturn these cases?”

          Well when it comes to claims as an Integrated whole, the Supreme Court overturned Hotel Security and its progeny in Diehr. This was upheld in Bilski, at 14 (See the Court stating their precedents stand for no more than the holding in Diehr) And Diehr was further cemented as controlling precedent in Mayo ( See the Court concluding the reason Diehrs claims were statutory was because they were “Integrated” .) Oh, and for the record….

          Stevens and his progeny lost.

          4 is not 5…..

          and now, neither is 3

          1. 23.2.1.1.1

            Mr. 101, well this IS a step forward…. an admission that Congress did not intend to overturn Hotel Security and the printed matter doctrine.

            But, now you say, Diehr did?

            Really?

            Next question:

            Software consists of instructions and you contend, I believe, that software is patentable as a machine.

            Now, tell me, how many instructions does it take to fill a breadbox?

            What is the specific gravity of an instruction?

            If I build a ship out of instructions, will it float?

            Are instructions invisible? Is that why we cannot see them?

    3. 23.3

      your use of functional in these examples refer to physical constraints and connections.

      using the word “determine” in a claim and saying it is functional and abstract must surely have a different meaning. “determine”, synonymous with “assess” or “evaluate” is an abstract method.

      “determine the largest X” is abstract and for a computer will always boil down to a comparison of numbers.

      words frequently mean what the speaker wants them to mean which is often wicked.

      now, when i say speaker, i’m not just meaning somone who emits a noise vocally but anyone who is communicating.

      when i say wicked, i mean both the wicked that is bad and the wicked that is good.

      words used in a legal context are supposed to have an unambiguous meaning but they often don’t, especially from what i see in patent law

  21. 22

    The question I have is, is a software program itself patentable anymore after Alice? A software program is, at heart, simple an algorithm that is more efficiently performed by a computer, though theoretically could be done manually. So, for example, if a claim employed MPF claiming and then disclosed in the specification the corresponding algorithm that is to be performed by a special-purpose machine employing the algorithm, is that patentable under Alice? Assume that the disclosure in the specification is detailed enough that the true novelty of the software program is disclosed – that is, not merely the functions to be performed by the program. It sounds to me that no matter how novel and how detailed, under Alice the claim is invalid.

    Circuit Court judge Bryson, sitting by designation in the Loyalty Conversion Systems Corp. v. American Airlines case, suggested that a business method patent that employed “highly complex and inventive algorithms” would not be invalid, but I truly wonder whether such a patent would survive Alice.

    1. 22.1

      Though I am personally not in favor of software patents, I have been trying (without much success) to think of a rule that would allow some software patents.

      What about something like this:

      A software claim is patent eligible when (1) the claim results in the improved performance of a machine (a computer, presumably) and (2) the improvement in the computer alters something physically tangible.

      What I’m trying to get at here is something like the following silly example:

      Imagine a wood cutting machine with a computer component wherein the timing/angle/force of the blade is controlled by a computer. If someone developed a computer program that improved the performance of the wood cutting machine such that it allowed the machine to cut wood 2x faster, maybe that should be eligible? Thoughts?

      Repost due to unfamiliarity with filter.

      1. 22.1.1

        That would be like the rubber-curing algorithm in Diehr, which claimed a process that used a computer program to calculate heating times, but was patent-eligible because the claim included the steps heating the rubber, removing the rubber, etc – tangible steps.

        Under Bilski-Mayo-Alice, however, those tangible steps are known, and the only novelty is, arguable, the abstract idea of the program’s algorithm. What we’ll need to see is a case confronting a patent where the claimed algorithm cannot be fairly described as too broad and thus claiming all means for performing a function, and see if the courts hold that this claim is patent-eligible. If they do, then there will be a narrow class of software patents that are patent-eligible.

        1. 22.1.1.1

          I don’t disagree with your analysis, but I do think this point is worth making:

          I think the courts might be using “old” in relation to 101 slightly differently than they are in relation to 102/103.

          Specifically, courts seem to be using old to mean “fundamental economic practice” or “method of organizing human behavior, long since performed without a computer.” It seems to me they are using “old” in the 101 sense as a proxy for abstract, because “abstract” is somewhat difficult to define.

          With that understanding, I’m not sure my “wood cutting machine” or the curing process in Diehr are ‘old’ within the meaning of 101. That said, I think you’re probably right about the outcome.

          I just that distinction/ambiguity may exist.

        2. 22.1.1.2

          PatentLitigator, I think the key to Diehr was that the programmed computer was used to improve the underlying process.

          101: Improved … process…

          MOT.

      2. 22.1.2

        It would depend on whether the wood cutting machine was part of the data processing claims or was merely the beneficiary of the data processing claims.

      3. 22.1.3

        It’s a good thought, but this isn’t the way a large portion of today’s economy works. For instance, encryption, modulation, and filtering all take input data, mathematically manipulate it, and produce altered output data. The machine (cell phone, personal computer, tablet, whatever) itself isn’t really improved. The data passing through the machine is vastly improved, but the machine itself is not. Also, data is not really physically tangible (you can’t hold it in your hand).

        Entire businesses are built on these concepts. Cell phones don’t work without modulation and filtering, and they are improved with encryption.

        Now, if one wants to outlaw software patents, that can be done. However, Congress has to do that, not the Supreme Court.

        1. 22.1.3.1

          I agree patent bob that a lot of modern businesses are so biult. Without improving the machine or engaging in promoting the useful arts at all. However, whether or not the congress can or would want to make a protectionist regime to protect those businesses should be up to them to decide to try to implement. It should not be left to patent lawyers or the fed circ to do.

      4. 22.1.4

        How would your rule eliminate just using a different optimization level of a compiler?

        That alone “results in the improved performance of a machine and the improvement in the computer alters something physically tangible”.

        There is no software that can alter the underlying machine.

    2. 22.2

      I’m honestly not sure. The problem is that there have to be some software patents that are eligible, but I still can’t see where the line will be drawn. You’re on the right track with requiring M+F claims tied to a legitimately novel and detailed algorithm in the specification – at least at the “point of novelty.”

      1. 22.2.1

        Why does “there have to be some software patents that are eligible”?

        Math doesn’t have to be simple, though most software is simple at the heart of the issue – the hard part is when changes to the requirements the math is supposed to meet (the analysis).

        The coding is rather simple after that.

        1. 22.2.1.1

          ^^^ An important part of the change in 1952 was that “simplicity” or its converse “flash of genius” – especially in regards to the “after that” type of activity – is explicitly not determinate of patent grant effect. This was a move by Congress to counteract what Congress saw as an improper judicial clamping down and restriction on patents.

          Some have tried to twist the words of commentators that Congress was not changing the scope of eligibility without properly noting that the courts prior to the Act of 1952 were judging too harshly and denying patent rights that should have been upheld.

          Reverting to a methodology pre-1952 that once again reflects judicial harshness (based on “policy” or opinion or whatever that is beyond the scope of authority of the judicial branch given the statutory nature and constitutional provision of authority) must be judged independently of the philosophical wants and belief systems.

          Clearly, that is not only NOT reflected here, but the opposite – the unmitigated and full-force of pursuit of philosophy is in play.

          If I may be so bold, as to quote from the good judge Sir Jacob on the role of a judge:

          Over the years I have seen bad behaviour by both big pharma companies and generic companies. I am neither pro nor against either of them. I am a judge. My job is decide who is right in fact and law.

  22. 21

    I looked in this ‘576 patent for any software, and this is all I found anywhere in the spec or drawings:
    “The method, for example embodied in computer software for operation with a computer or computer animation system would create an output morph weight set stream as follows:
    [Sorry, the table that followed copied linearly here, but this is what was in it.]

    D.S.1 D.S.2 D.S.3 D.S.4 D.S.5
    ——————-
    Time (“h”) (“eh”) (“1”) (“oh”) (aux“oh”)
    0.0 0 0 0 0 0 0 |
    0.78 0 0 0 0 0 0 |
    0.8 1 0 0 0 0 0 |
    0.98 1 0 0 0 0 0 |
    1.037 0 1 0 0 0 0 |
    1.333 0 1 0 0 0 0 |
    1.403 0 0 1 0 0 0 |
    1.667 0 0 1 0 0 0 |
    1.74 0 0 0 1 0 0 |
    2.1 0 0 0 1 0 0 |
    2.14 0 0 0 0 0 0

    1. 21.1

      P.S. At least this is something more for a programer to start with than the pure “vaporware” patents being shot down which hundreds of commentators keep on misdescribing as “software patents” when they merely say “just do it on any computer” with no enablement or “means” for.
      As a reminder, the last paragraph of 112 is:
      “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

      Thus, one can use a purely functional step in a method claim, but, if you do, the scope thereof is supposed to be limited to “acts described in the specification and equivalents thereof.”

        1. 21.1.1.1

          If there is no 112 last paragraph restaint on the scope of a method claim functional step, why does this paragraph of the statute recite “means or step”?

          1. 21.1.1.1.1

            In a claim for a method of making a new drug comprising:

            place ingredient A in a caldron;
            place ingredient B in the caldron; and
            stir the contents of the caldron.

            Are the steps “functional” ?

            In particular, is the stirring step functional?

            1. 21.1.1.1.1.1

              Well according to the anti movement, stir is functional and you would have to put every possible way to stir in the specification that you want covered. Otherwise, if you haven’t put it in the specification then it is not covered (may doe).

              This is their latest attack.

              1. 21.1.1.1.1.1.1

                Amazing how sophisticated they are. Lemley is the intellectual fuel for these arguments.

            2. 21.1.1.1.1.2

              Isn’t this a “recital of structure, material, [and] acts in support thereof”? [from 112 above]

              1. 21.1.1.1.1.2.1

                Paul what in the world do you think functional claims are to information processing?

                information is represented. The “functional element” (so-called) describes an action to take on represented information.

                The smoke is so thick….I do have to hand it to Lemley. He is perhaps the greatest bender of law of any attorney ever to live.

                1. So, jesse the difference between you and a squirrel is math.

                  It is all math. Turtles all the way down.

              2. 21.1.1.1.1.2.2

                Yes, I believe it is. Therefore, by your definition and mine, that was NOT an example of functional claiming.

                But what If we add recitation:

                In a claim for a method of making a new drug comprising:

                place ingredient A in a caldron;
                place ingredient B in the caldron; and
                stir the contents of the caldron so that they turn to a green paste.

                Are the steps “functional” ?

                In particular, is the stirring step functional?

                Now, there are those here that would say that the stirring step is “functional” because it “merely” claims a result (the green paste) without sufficiently reciting how.

                I submit that you can’t move a claim from statutory to non-statutory (e.g. because the spec does not elaborate on the stirring step) by adding detail.

  23. 20

    Can we apply the reasoning in this case (a direct result of Alice) in an analogous way to means plus function claims in the mechanical arts in order to determine the level of detail or particular nature of just what needs to be included in the claim?

    At what point does a means plus function claim in the mechanical arts fail because it is being directed to an abstract principle at the point of invention rather than “something more”? How do you ensure the claim is drafted so that the disclosed invention is claimed in an subject matter eligible fashion?

  24. 19

    A couple additional points after reading this excellent, thoughtful decision again and the comments.

    First, as a reminder to those who appear to be “surprised” by this result: don’t be. This is exactly what happens (and should happen) when you build a house of cards (i.e., the software patenting industry — not to be confused with the software development industry which remains perfectly healthy, if not healthier, if the wake of these decisions) on a foundation made of quicksand, without any consideration for the mess you’re creating for everyone else.

    Information processing methods raise unique and serious issues and they always will. There were some incredibly flimsy and utterly contrived “defenses” trotted out over and over again to prevent others from challenging the status quo. One of weakest and least coherent “defenses” was that as long as you recite some “magic words” then your claim could protect pretty much anything.

    Once that “defense” was obliterated, it was clear to everyone — the computer-implementer types included — that the house of cards of “automated” information processing claims was going to quickly come toppling down because, well, it’s a house of cards after all. What’s being added by micromental innovators to the (typically ineligible) information processing methods in the prior art is (wait for it) just more information (which is ineligible) and/or the measly recitation of “on a computer” (which is old and obvious).

    The great benefit here is that much of the backlog and delays in examination that we see at the PTO should be disappearing in short order as this huge class of invalid claims is purged from the system. If these reasonable rules are applied diligently, we should finally see the unsustainable, exponential growth in both filed and granted patents being curtailed.

    1. 19.1

      You do realize that this is a single district court opinion? If you think this decision will affect examination guidelines at the PTO, you’re in for a surprise. I suspect the new Alice guidelines that will be released shortly will put your ball-spiking to rest quickly.

      1. 19.1.1

        You do realize that this is a single district court opinion?

        You do realize that this is one in a string of district court cases correctly applying the law explained to you in several unanimous Supreme Court decisions. And there is more to come.

        If you think this decision will affect examination guidelines at the PTO, you’re in for a surprise.

        You’re right. What was I thinking?

        By all means keep taking your client’s money and spending it on ineligible claims. I’m sure it feels great. Your wallet is thick and your client has an unenforceable patent. Promote the progress!

    2. 19.2

      The problem here is that although there may indeed be an invention, the claim is very, very boring.

      If there is an invention, that is not it. As Max Drei says, the real invention is somewhere dowin in the detailed implementation.

      We are presently seeing a succession of decisions of this type, all of which share the same fundamental problem.

    3. 19.3

      MM, according to some here, IBM’s main patenting effort is in the area of software patents. I wonder if the sheer number of patents issuing to this company will soon drop, and by how much. That will tell us something, I think, both about IBM and about the PTO.

        1. 19.3.1.1

          Thanks.

          I wonder if software houses being approached by IBM will now tell IBM to take a hike rather than pay the protection fee IBM demands.

  25. 18

    “Question: What if the patent had included a means-plus-function claim with “means (i.e., rules) to define morph sets as a function of the phonemes” (or something along those lines) that limited the scope of the rules to what what disclosed in the specification?”

    I have been thinking about this issue since Rader wrote an opinion earlier this year (or possibly late last year) which essentially held that one cannot invalidate a claim with MPF limitations without at least the presentation of expert testimony during Markman on what the scope of those MPF limitations are. Even though I believe the issue in the case was written description or enablement, I think there is some room for testing the boundaries of that holding.

    I have been including at least one claim in my patent applications since that case came out that have one or more MPF limitations.

    Squaring that case with controlling Fed Ct. precedent that calls out the fact that even examples written in prose can be used to support the written description of an MPF feature, it becomes clearer that MPF may be a viable alternative claiming style, at least in the short term.

    1. 18.1

      MPF may be a viable alternative claiming style, at least in the short term.

      You’re wrong about that but I’m sure you’ll never be convinced otherwise.

      Your clients will learn the hard way. Sometimes that’s good for clients.

      1. 18.1.1

        Would you care to explain to us why I’m wrong?

        I know it bothers you when you see cracks in the facade of your perceived software patent-less utopia, but this kind of sniping adds nothing to the discussion.

        FWIW, this is what every lawyer in every sector of the legal practice does when laws change. Adaptation is a necessary outworking of the practice of law.

        1. 18.1.1.1

          Would you care to explain to us why I’m wrong?

          Sure.

          Means plus function elements are nothing more than instruction to look at the specification and see what the corresponding means are.

          If the “means” that you would otherwise be describing in your claim presents subject matter eligibility issues, then taking them out of your claims and putting them in the spec doesn’t address the eligibility problem.

          I agree that this tactic may confuse a tired and overworked Examiner who isn’t up to the task of looking at your specification to discover that you’ve just shifted the deck chairs around and disclosed only additional ineligible information or information processing “functionality” as your “means.” And that might be enough for your clients if your clients aren’t interested in an enforceable patent that will stand up to modest scrutiny by intelligent defense counsel and a competent judge like Wu.

          1. 18.1.1.1.1

            My point had nothing to do with the USPTO’s examination procedures. Controlling precedent at the Fed Ct. level appears to box district court judges from making an invalidity determination via motions under 12(b)(2) or 12(b)(6) to invalidate the patent claims without discovery and Markman, if the claims have MPF limitations.

            If you would stop for five seconds and read what people post before retorting it would probably lead to more constructive discussions.

    2. 18.2

      I suggest doing some research on MPF claims if you’re going to include them. For instance, if the means for performing the function is a general purpose processor, an algorithm for performing the function must be disclosed (regardless of whether one skilled in the art could easily determine the algorithm). Also, the means for performing a function must be disclosed (again, regardless of whether one skilled in the art could determine the means).

      For instance, if you’re claiming a “means for generating a random number”, you have to disclose an algorithm for doing so, even though it is easy for one skilled in the art to determine such algorithms.

      1. 18.2.1

        For instance, if you’re claiming a “means for generating a random number”, you have to disclose an algorithm for doing so, even though it is easy for one skilled in the art to determine such algorithms.

        Technically, you have to disclose the algorithm REGARDLESS of if you’re in MPF, because description of a genus (all code that causes function X) requires description of a sufficient number of species of the genus. See MPEP 2161, Ariad.

        The fact that most practitioners don’t seem to understand this is going to hurt a lot of people one day, but it ought to be obvious that the disclosure for claiming a whole bunch of code is greater than the disclosure for claiming a specific means for that function.

        1. 18.2.1.1

          If you’re outside of MPF, then what is known by one skilled in the art can come in. For instance:

          A method comprising:
          generating a random number;

          The “generating a random number” is known (and I mean really, really, really well known) to one skilled in the art. In this example, you could rely on what one skilled in the art would know.

          But if you say “means for generating a random number”, then what one skilled in the art knows is immaterial.

          It doesn’t make logical sense, but it’s true.

          1. 18.2.1.1.1

            I’ve never heard of what imaginary people knowing “coming in” to remedy the patentee or applicant never bothering to fully describe the claimed invention. Perhaps you know of such a case.

          2. 18.2.1.1.2

            If you’re outside of MPF, then what is known by one skilled in the art can come in

            That’s correct, but irrelevant to the point I was making.

            When you claim in means plus, you have to describe the structure. When you claim outside of means plus, you still have to have the structures that constitute the full scope be known in the art.

            Consequently, unless you can prove that the art already knows every way possible of achieving a function, you can’t claim the function outside of means plus.

            As a practical matter (for functional claiming as it is commonly used today) you can never make that proof. Consequently that is only going to be limited to known structures and further limited to structures in the spec (since you can no longer rely on the functional language). So the end result is that the scope isn’t going to valid for anything more than you have in the spec anyway.

      2. 18.2.2

        I have no issue in dealing with the scope of MPF claims. These limitations are inherently functional and the support or “structure” for these claims is very broad. The Fed. Ct. has expressly stated that an algorithm is sufficient and that an algorithm can be described “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.”

        Typhoon Touch Techs., Inc. v. Dell, Inc., et al.

        Additionally, MPF limitations are the only recognized claim structure that equivalents built by statute.

      3. 18.2.3

        Patent Bob, one cannot generate a random number from software. If someone were to claim such, the patent is not enabled. It is complete science fiction.

  26. 17

    What we now know about abstractness?

    A claim is abstract if the novel subject matter is directed to “fundamental” economic principles.

    A claim is abstract if the novel subject matter is directed to mathematics.

    A claim is abstract if the novel subject matter is directed to a method for playing card games.

    A claim is abstract if the novel subject matter, the exact point of novelty, is “functional” within the meaning of O’Reilly v. Morse, i.e., claiming a result without specifying any of the novel means or methods for achieving it.

    I think the last is the only true abstractness. I think the other examples are examples of nonstatutory subject matter and the Supreme Court is merely using the word abstractness in a way that includes nonstatutory subject matter because of Bilski. Had the court followed Stevens and his desire to reinstate Hotel Security, this problem of ambiguity would never have occurred.

  27. 16

    Suppose I invent and broadly claim a new and totally unexpected machine that let’s me harness harness a hitherto unknown physical principal to travel to the moon in three hours or less at a cost of about $100. Would that invention be patent ineligible under 101 on the theory that I’d be preempting the field of inexpensive lunar travel?

    1. 16.1

      This type of “argument” is of little or no value.

      Remember when Judge Newman tried to justify her view of product-by-process claims by suggesting that Rader’s approach (the winning approach) was going to prevent some class of unknown and undefinable (but super important) “future innovations” from being protected and promoted?

      Even Rader saw right through that argument.

      The answer to your question is: it depends on your claim and how your claim relates to the prior art.

      Show us the claim.

      1. 16.1.1

        No, it no longer depends on the claim. There was no real analysis of claim language in Alice. The test is now to characterize the invention, decide if your characterization is somehow “abstract” and then make a general determination as to whether anything “new” is added to the state of the art.
        I doubt a claim can be written that can’t be argued to be “abstract” under Alice.
        Anyone who disagrees fails to appreciate the ingenuity of patent trial attorneys and their ability to completely confound non-technical judges. Keep in mind that courts have now decided these 101 issues on motions on the pleadings – failure to state a claim – there is no claim construction, no jury involved to determine “newness” and potentially no testimony at all.

        1. 16.1.1.1

          it no longer depends on the claim. There was no real analysis of claim language in Alice.

          Wrong. False. Completely made-up. Misleading. Do not bury your head in the sand like this. The issues being discussed are too important to the patent system to ignore in this manner.

          courts have now decided these 101 issues on motions on the pleadings – failure to state a claim – there is no claim construction, no jury involved to determine “newness” and potentially no testimony at all.

          As long as there is sufficient evidence that ineligible subject matter is being protected by the claims, no jury is needed. Read Wu’s decision. He didn’t just “make stuff up.” He read the specification. He listened to the patentee. He looked at the evidence and applied logic and reason and the law to reach his result.

          Just because you don’t like the result doesn’t mean that “there was no real analysis.” The analysis given by Wu far exceeds the ridiculous “analysis” that Rader and others were steering for (“look at the complicated stuff in the spec!” and “I can put it on my desk!”).

    2. 16.2

      Let’s see.

      1. Moxie machine for traveling to the moon in three hours or less; wherein Moxie is – here fill in previously unknown principle –.

      I think this is the same thing as claim 8 of Morse and the results should be the same – invalid. However there was a dissent in Morse that argued that the inventor should have received a claim that broad.

    3. 16.4

      Suppose I invent and broadly claim a new and totally unexpected machine that let’s me harness harness a hitherto unknown physical principal…Would that invention be patent ineligible under 101 on the theory that I’d be preempting the field of inexpensive lunar travel?

      This is a very simple question isn’t it? It depends on if you’re claiming your machine or any machine that utilizes the principle.

      To put it in the less science fiction-y world of history. Morse invented the Morse telegraph. He claimed his telegraph. Then he went and claimed a machine that prints at a distance. He got the former, he was denied the latter, which is fair because the latter reads on a computer connected to the internet (something Morse neither invented, disclosed, nor possessed).

      You get your spaceship. You don’t get all fast spaceships. You get your warp drive, you don’t get the concept of warp drives.

  28. 15

    “Defendants argue that the claims of both patents in suit are patent ineligible under 35 U.S.C. § 101 because they merely ‘set[] forth the previously-known animation method as a series of mathematical steps, and instruct[] the user to perform those steps on a computer.’”

    When did this become a section 1o1 issue? If it’s a previously known animation method, why is it not a 102 or 103 issue?

    1. 15.1

      Just because a 103 objection lies is no reason to forswear a 102 objection. just because a 102 (or 103) objection might lie is no reason to forswear a 101 objection, if it clearly requires making. And here, if you follow Alice, you have to make it.

      1. 15.2.1

        No, its at least since Bilski.

        First they distilled the claims down to the “abstract idea”…hedging I think.

        Then they declared hedging to be old. They may have even cited a text book (during oral argument, if not in the decision itself).

        Then they said, because it was old, it was abstract to complete the circular logic.

        1. 15.2.1.1

          Les, is not clear that Bilski’s result depended at all on the fact that the principle as abstracted was notoriously old. Claims to specific mathematics were held invalid as well, and there was no finding that those specific mathematics were notoriously old.

          But I would agree in principle that the Bilski decision was a mess. I think the courts are now following Stevens concurring opinion because of Breyer, who of course agreed with Stevens and who wrote Mayo. Mayo makes it clear that the presence in a claim of otherwise statutory subject matter is not enough if that otherwise statutory subject matter is old and conventional. This of course is the analysis of Hotel Security

          1. 15.2.1.1.1

            Mayo makes it clear that the presence in a claim of otherwise statutory subject matter is not enough if that otherwise statutory subject matter is old and conventional. This of course is the analysis of Hotel Security

            It’s also basic logic that will be with us forever.

    2. 15.3

      PatentBob: When did this become a section 1o1 issue?

      At “series of mathematical steps”.

      Math is ineligible for patenting. It doesn’t matter how useful or valuable the math is. You can’t protect math with a patent.

      Here’s a simple example: 1. A method of performing a calculation, wherein said calculation is 883.343 * 2342 + (X/0.343)*(Y – 3), wherein X is the number of hot dogs you ate in the past month and Y is the number of mentions of OJ Simpson or a member of his family by a CNN host.

      2. The method of claim 1, further comprising the steps of drinking a caffeinated beverage and performing life-saving surgery on a young child.

      3. The method of claim 1, wherein said method is performed on a plane.

      All ineligible. And as it should be.

      1. 15.3.1

        In the real world, nobody claims “a method of performing a calculation.” What they claim is “An industrial process for producing X, comprising a series of known steps plus controlling one of the known steps based on the new the calculation of [whatever] to achieve a substantially better and more valuable X at a significantly lower cost.” A breakthrough invention in the field. No one thought it could be done. People worked on it for years unsuccessfully until now.
        So what. According to Alice and all the pr0-Alice commentors, this must also be patent ineligible because at the “point of novelty” it is just an abstract algorithm that contributes nothing new.

        1. 15.3.1.1

          A breakthrough invention in the field.

          Is every math equation used in a field “a breakthrough invention” or just this imaginary one that you haven’t described?

        2. 15.3.1.2

          What will the bingo management and available real estate fields and image-to-sound matching fields do without all these patents?

          Who’s going to take these people to lunch when the patent attorneys aren’t buzzing around?

        3. 15.3.1.3

          Mr. Loss, even where the novelty is in the algorithm, improved industrial processes are eligible. Diehr.

          The major problem for inventors occurs is if they are attempting to patent the math in the abstract, or if they are patenting business methods.

          1. 15.3.1.3.1

            Ned,

            Serious question: if you truly believe that even if the novelty is in the algorithm, what happens if the novelty is in the software?

            I would remind you of a certain recent case that featured this very fact pattern, but some may take the repeat mention as “meta-bickering” and it is my honest attempt to discuss what appears to be the use of integration and claim as a whole, which would allow the strict novelty ‘point’ to be what you have labelled as ineligible material (and all other elements old).

  29. 14

    Question: What if the patent had included a means-plus-function claim with “means (i.e., rules) to define morph sets as a function of the phonemes” (or something along those lines) that limited the scope of the rules to what what disclosed in the specification?

    As some patent attorneys have pointed out in the comments, method claims are functional by definition, However, functional does not necessarily mean abstract. By using a means-plus-function structure and invoking 112(f) can the claim be functional yet not abstract?

    1. 14.1

      The same thought occured to me. If indeed the claim is purely functional “at the point of nevelty” as indicated in the decision, then why is that claim element not being treated as a 112 “means-function” claim element? [The word “means” is not essential to trigger such claim element treatment.] Then the 112 question should be “where is that specific “means” adequately enabled in the specification?

      1. 14.1.1

        Paul, but the very words of §112(f) make the choice of using the benefit of that statute optional. It seems to me that the intention to invoke the statute must be clear, and the use of the magic words “means for” is almost required.

        Let me assure you, that most cases, patent drafters fully intend not to use means plus function and we all know why.

    2. 14.2

      By using a means-plus-function structure and invoking 112(f) can the claim be functional yet not abstract?

      Of course. But it’s not really “functional” when you list the corresponding objective physical structure in your specification.

      But the computer-implementers never recite novel objective physical structure in their specifications that corresponds to the functionality recited in their claims.

      1. 14.2.1

        Yes MM, as I sent my original question I thought to myself, “assuming there is support for the structure in the specification.”

  30. 13

    So what would be an example of claiming this “abstract idea” more narrowly? “wherein one of said animated characters is Hickup and another is Astrid, and further comprising Hickup forming a facial expression of a smile while lips mouth the words “Astrid”.”

    Or, the method of claim 1 further comprising a viewer eating popcorn during a demonstration of said method.

    1. 13.1

      That is where the anti’s arguments fall apart–reality of claiming real inventions. Lemley’s framework is imaginary.

      1. 13.1.1

        What if they claimed as a method of making an animated movie? Or, claim an animated movie. Is that what they judge meant by claiming more narrowly?

  31. 12

    How do you unduly preempt a field without knowing what all available non-infringing alternatives are? Isn’t that a major fact question upon which the defendant, seeking “invalidity” under 101, must show by C&C evidence?

    Fubar.

    1. 12.1

      Not anymore.

      These decisions will get more absurd over time and even more difficult to harmonize with controlling law regarding invalidity, anticipation, and obviousness. This is the price you pay for conflating 101, 102, 103, and 112 into an amorphous catchall test.

      1. 12.1.1

        Getting rid of all software patents is not “absurd” in the minds of many.

        Pretty much everything else except for a few other types of information-protecting claims are immune from the analysis.

        1. 12.1.1.1

          At least we are now at the root of the issue. You and others like you want all software ineligible for patenting. I can appreciate your position and candor, as ridiculous as I believe it to be.

          What I am still stumped by is why jumping through these absurd hoops with 101 is somehow an acceptable method for accomplishing those means.

          This cancer will begin to metastasize into other art areas.

          1. 12.1.1.1.1

            You and others like you want all software ineligible for patenting. I can appreciate your position and candor, as ridiculous as I believe it to be.

            It’s widely held position and a growing one, for good reasons.

            Now try some candor on yourself and tell everyone (1) exactly what subject matter you believe can not or should not be protected and (2) how claims should be analyzed to makes sure that this ineligible subject matter is not being protected.

            After you do that, I’ll present you with some simple hypotheticals and we can see how well your analysis works in practice.

            This cancer will begin to metastasize into other art areas.

            There will always be cases on the bleeding edge. But the types of innovations that have been historically protected by sane, just and functioning patent systems around the world will continue to be protectable.

            1. 12.1.1.1.1.1

              I’m still waiting for a response to me about your last hypo regarding the difference between a computer + software juxtaposed with a physical book + new cancer treatment method information. These two things are different from one another in various non-trivial ways.

              1. 12.1.1.1.1.1.2

                I would say that the difference is that the computer + software is directed to a method that is done before, only now you are using a computer. The physical book + cancer treatment… well, no one has cured the cancer treatment.

                Therefore, I disagree that “software” and “cancer treatment” are directly synonymous.

          1. 12.1.1.2.1

            Great post. That is why the SCOTUS made it a “see it when I know it test” as there is no principled way to distinguish software from hardware.

            1. 12.1.1.2.1.1

              Oh, that is trivial.

              Computer hardware is made of materials. Circuits. It involves physics.

              Software doesn’t.

              All you really have to do is open your eyes and mind to the reality.

              1. 12.1.1.2.1.1.1

                We claim:

                1. A computing device comprising:
                processing hardware that when operating cooperates with memory to provide a module;
                the module, when the computing device is operating, receiving [anything … values from pressure sensors], performing Fast Fourier Transforms on the values to determine if the values satisfy a pre-determined condition.

                Point here is not the subject matter of the claim, but rather to point out that the software-hardware distinction is a “distinction without a difference”. Most inventions can be claimed as method or devices.

                1. I can accept that – with some limitations.

                  Just as you can’t patent the idea of a cog wheel, you shouldn’t be able to patent the idea or math/software for an FFT.

    2. 12.2

      David, How do you unduly preempt a field without knowing what all available non-infringing alternatives are?

      Is this a joke?

    3. 12.3

      You’re not preempting an entire field – you’re preempting an abstract concept, which in this case was, apply rules to phoneme sequence to obtain output character movement. The claim specified nothing about what the rules were or how you obtain/generate them.

      1. 12.3.1

        Neither Alice nor Bilski talk of preemption in terms of “preempting an abstract concept”. I’m not sure where you got that idea and it’s completely circular logic.

        The abstract concept is not eligible because it could unfairly “preempt” an entire technical area or art.

        Preemption is about occupying a fundamental practice or technical field in such a way that it becomes too pervasive and stifling and therefore contrary to public policy.

        1. 12.3.1.1

          Yes that is sort of what it is about on a basic grade school level. But the way it is guarded against is by disqualifying 3 things.

          1. 12.3.1.1.1

            That’s sure cute, 6.

            There certainly are three explicit categories.

            No court has ever used the phrase “preempting an abstract concept” because preemption and abstract concept are two separate things. Preemption is an effect caused by a claim of all encompassing breadth that prevents others from practicing the claimed process in any form. For example, an omnibus claim.

            Alice “preempts” the claiming of abstract concepts. Do you see how that word actually works in a sentence?

            1. 12.3.1.1.1.1

              I sure do, I pioneered bringing back the use of the use of the word a few years back. You’re closer than most people are to understanding sup. Gratz.

  32. 11

    The point being ignored here is that the judicial notion of “Point of Novelty” as being used here is not that such is not understood, it is that the Act of 1952 really did make that notion – for better or for worse – a canard.

    I “get” that people want things to be different.

    I really do.

    But one cannot – nor should not – reinvent the law or history just to get what one wants now and turn a blind eye to what the law IS.

    I will note that the discussion that Ned and I started on Frederico on this point came to an abrupt end when Ned realized that functional claiming is ONLY forestalled for single means claiming. ANY combination claim must be read as a whole, no matter where within the claim, no matter which element is claimed in a functional manner, because a proper claim is understood to integrate the elements together, and the novelty of a claim is not found at any one point, at any one element.

    This is exactly why a certain theory reduces merely to the notion that “aggregate claiming (with or without claim elements being mental steps) ” does not produce proper claims.

    This is exactly why the mental steps doctrine fails to make the jump into the modern era in which innovation is captured in machines that emulate the power of human thinking.

    Will such an understanding – a foundational understanding see the light of day? Or a better question: will such a foundational understanding actually serve as a foundation of a discussion of a better law forward?

      1. 11.1.1

        Les, by its terms, §112 is optional, and is limited to combination claims. If a claim is not a combination claim, but effectively a single means claim, the statute doesn’t even apply.

        I think anon only to the extent that he pointed out to me that the use statute was optional. But, when he did, I began to agree with him that the choice of using means plus function is a choice, and intention to do so must be clear.

        1. 11.1.1.1

          Ned, let’s be a little more precise – 112(f) is optional.

          But the use of functional language in claims is not limited to 112(f). See In re Orthokinetics. See Frederico. See my past points of discussion.

          See also that the goal posts are attempted to be moved mid conversation – much like how Malcolm moves any discussion of mental steps to be a discussion of a claim totally in the mind. The fact of the matter is that the claims that use functional language are NOT purely functional claims.

          Like it or not, the Act of 1952 made your version of PON a canard. That the Court (and the lower court as reflected by Judge Wu) have reinstated it – or are attempting to reinstate it – is clearly an issue of improper law writing misuse of authority. I invite you to read Wu’s opinion more carefully – it is NOT an opinion that shows respect for the Supreme Court.

          1. 11.1.1.1.1

            Anon, thank you for pointing out to me that §112(f) is optional.

            I full know well that functional language and claims its fully allowed and actually helps in many cases. One of the reasons that I wanted to repeal §112(f) and still want to repeal it is that the Federal Circuit is applying it to all functional elements in claims regardless of whether they use the magic words or not, and they are narrowing the scope according to Valmont v. Reinke regardless of whether the claim element is attempting the claim novel subject matter or not.

            Because the Federal Circuit does not analyze a claim for novelty when conducting claim construction, we normally never know whether the functional element is at the point of novelty. What is different here in the case of Judge Wu is that he did do that analysis and he did find that the functionally expressed subject matter was in fact at the exact point of novelty. That is different from any Federal Circuit case, which is why Judge Wu is following the Supreme Court case law, and which is why the Federal Circuit, again, is not.

    1. 11.2

      ANY combination claim must be read as a whole, no matter where within the claim, no matter which element is claimed in a functional manner, because a proper claim is understood to integrate the elements together, and the novelty of a claim is not found at any one point, at any one element.

      Sounds like you’re (once again mis)applying a 102/103 analysis to a 101 issue. Regardless of your PON view for 103, it’s hard to maintain that you must take the claim as a whole for 101 when the supreme court is constantly bifurcating out the apply it on a computer part.

      The simple fact is that you must find what the invention actually IS. If the problem you seek to fix is how a computer does X, and you have created new code which fixes X which you store on a tangible medium, you don’t add anything to the claim by talking about the room the computer is put in and that room, for a 101 analysis, can be ignored. Frankly, unless you’re claiming that it’s non-obvious to put a computer inside a room, the room can be ignored for a 103 analysis as well. The only thing that matters is the code, and whether the code is claimed at an abstract level (what it does/functional result).

      The simple fact is this: If you have prior art that does X, and the only thing you add to to the art is the idea to do Y instead, your claim is going to fail. If you disclose one way to get to Y, that’s something you can claim.

    2. 11.3

      anon “ANY combination claim must be read as a whole, no matter where within the claim, no matter which element is claimed in a functional manner, because a proper claim is understood to integrate the elements together, and the novelty of a claim is not found at any one point, at any one element.”

      Excellent post anon. And correct to the letter. Diehrs claim was statutory precisely because it was a new combination. The individual elements were all old and certain steps were non statutory. Yet when “integrated” the claims as a whole were statutory subject matter. And while the fact that curing rubber- a conventional manufacturing process- was an important and useful “clue” it was not a requirement for 101 statutory subject matter. Diehr, which still controls for what “IS” statutory subject matter turned on “integration” as was explained in Mayo, 9-0.

      I find it quite telling that those that have openly stated on this blog to be anti business method or anti software have yet to reconcile their various theories and proposition with the Courts “Integration Analysis.”

  33. 10

    Dear Judge Wu –

    Thank you for acknowledging that the issue is one of claim breadth with your remark that: ““This case illustrates the danger that exists when the novel portions of an invention are claimed too broadly.””

    How do you reconcile that with your observation that : “the patents claimed the new elements as the use of rules that define morph sets as a function of the phonemes.”

    If the claim is to something new, how can it be too broad?

    1. 10.1

      It is pretty clear that Alice is being extended and morphed into a rule of: “I don’t like it.”

      Exactly what Rich and every other real patent attorney knows is the death knell of patents.

      USSR tried a system like that. A group of experts would look at the patent application and decide if it was worthy of a patent. Almost no patents and no patent system.

      1. 10.2.2

        It’s not clear what you’re asking.

        Alice certainly applies to “new” claims where the only new subject matter in the claim is ineligible on its own terms. Same with Mayo.

        No suprises there. Those were the correct results.

      2. 10.2.4

        Patent Bob, the something that is new must be otherwise eligible.

        Think back to Bilski. Clearly the mathematics in the dependent claims was new even if the parent claim was notoriously old. But that the newness of the mathematics did not help, and made no difference whatsoever.

        Benson would have been decided differently if the newness of the mathematics was a consideration.

      3. 10.2.5

        Bob,

        According to Alice and Mayo, if the “concept” is innovative (new) there is no need to look for something significantly more. However it seems the DC Judges are dissecting every software claim to its concept and then skipping the ” is it an innovative concept question” altogether. They then magically declare there is not enough in the claim to make it something more and therefore the invention is drawn to the concept and thus abstract. And if the concept is integrated these judges just make one up off the top of their heads, without even proving that the concept they have created is the concept of the inventor. The only way to beat this is for the next generation of patent applications to have a strategically defined concept explicitly stated in the specification that is innovative, and integrated in the claims. Unfortunately many of the patents being invalidated now were not designed and prepared for such an attack and will get invalidate by the lower courts.

  34. 9

    “preempt the field of automatic lip synchronization for computer-generated 3D animation … using a rules-based morph target approach”

    Seriously? Is an inventive concept that is on this level of granularity the type of preemption SCOTUS was concerned about?

    I’m almost of the opinion that this case is a deliberate troll attempt by Wu to illustrate the absurdity of the current test. That is the only way you can square this decision with his one last week.

    1. 9.1

      BB,

      That’s an interesting/astute observation. It’s quite possible that Wu is trying to point out the serious problems with this broken two-part Alice test. We’ll have to see if the Federal Circuit will take the bait offered.

        1. 9.1.1.1

          Abusing his power by doing what his boss told him to do?

          He’s speaking truth to power and should get a medal.

          I just wish he could do it by making the right decision and saying he understands that Alice requires him to make the wrong decision but he refuses to do that.

    2. 9.2

      Bluto: Is an inventive concept that is on this level of granularity the type of preemption SCOTUS was concerned about?

      There are two policy concerns: pre-emption of ineligible subject matter by a single claim (where the claim isn’t restricted to a “field of use” or where the “field of use” is large) and the cu mulative pre-emption of ineligible subject matter in a “field of use” by “a 1000 cuts” filed by 10,000 patent lawyers filing 500,000 claims like this one (or worse) year after year.

    3. 9.3

      I agree. The quoted language:

      One unintended consequence of Alice, and perhaps of this and other decisions to come, is an incentive for patent applicants to say as little as possible about the prior art in their applications.

      is a little too snarky to think he wants his decision to stand as written.

  35. 7

    This is voo doo patent law. We have gone back to pre-1952. And Graham and the 1952 have been over-turned.

    1. 7.1

      One phrase that I have not yet read in one of these witch burning opinions is “impermissible hindsight reasoning.”

    2. 7.2

      Night, I would like to point out that the entire basis for finding everything in the claim but the “rules” to be old was that it was admitted to be such.

      The point of novelty was abstract — why, because it was functional, claimed at much to high a level of abstraction, sans any of the novel rules or other methods actually invented.

      Graham did not deal with a functional claim. But the Supreme Court has in many cases from Morse, Perkins Glue, Wabash Appliance, United Carbon and Halliburton. In these cases, the Court generally identified 112 as the statutory basis for the problem. Today, it uses 101. But the problem is the same and the solution is the same: the claim is invalid.

      1. 7.2.1

        You keep talking about functional claims as being bad. They are not. Functional claims are the only way to claim an invention in modern innovative areas because there are so many solutions to sub-problems.

        Moreover, Haliburton, is not good law. (Your functional claiming at point of novelty when claims are supposed to viewed as a whole.)

        Moreover, the scope of the claim’s validity is related to how innovative the claim is. So, hindsight does play a role in this analysis.

        And, again, these attacks on functional claiming at the point of novelty are absurd. The argument the defense can bring is that the scope is too broad and OUR solution was not enabled by the specification. Thus, the claim is invalid. See LizardTech. That is patent law. The arguments presented in this opinion are right out of a witch trial.

        (And please don’t run from the scope of enablement. That is patent law and the only rational way to claim and police claims with modern innovation. I note that you cannot bring to bear real life examples. Whereas everyday I deal with real life examples.)

        1. 7.2.1.1

          Also note how bizarre a result one gets with this. The judge is not saying that the defense solution to the problem is innovative way beyond theirs so their claims are invalid under LizardTech rather that they tried to claim too much and so should be invalidated. Not merit on our part, but just they are greedy. Huh? That does not promote innovation and is implicitly judging the merit of the invention absent any evidence.

          1. 7.2.1.1.1

            Plus I’ll note the mere typing of these technical terms by the judge on his own are offensive. I’ll bet this judge has no concept of actually how this technology works, and yet he has been put in the position as an expert in the field.

            1. 7.2.1.1.1.1

              I’ll bet this judge has no concept of actually how this technology works,

              Seems to me that he understands exactly how it works.

              It’s not that hard to understand, really.

              Neither computers nor animation nor computer animation are “bleeding edge” technology. And they weren’t back in 1997 either. Pixar’s “Tin Toy” is ten years older than these claims and that’s already a very advanced stage of 3D animation.

              Do not fall into the trap of pretending you were born yesterday.

              1. 7.2.1.1.1.1.1

                >Neither computers nor animation nor computer animation >are “bleeding edge” technology

                You provide evergreen comments for one to be amazed at your ignorance.

          2. 7.2.1.1.2

            Have you noticed, Night, that no one, not even the Federal Circuit, is citing a Federal Circuit case on patentable subject matter? I think there’s a reason for that.

        2. 7.2.1.2

          “Functional claims are the only way to claim an invention in modern innovative areas because there are so many solutions to sub-problems.”

          And there are hundreds of medicinal compounds capable of reducing inflammation in organisms.

          The first person who figured one of these out was not entitled to claim a method of reducing inflammation in an organism in need of having inflammation reduced by administering a compound capable or reducing inflammation.

          1. 7.2.1.2.1

            Mellow, I don’t think Night understands the basic issues. I really do not. He has been a consistent drinker of the Federal Circuit Kool-Aid, and hasn’t realized that court has not consistently been playing in the same ballpark as the Supreme Court. Part of the reason of course is the dysfunctional nature of the Federal Circuit wherein there seems to be constant power struggles among different factions on various issues. Hopefully, that era is done. But you never know.

        3. 7.2.1.3

          Night, Moreover, Haliburton, is not good law. (Your functional claiming at point of novelty when claims are supposed to viewed as a whole.)

          Do you realize that your statement here is absurd? No one overruled Halliburton on the point of functionality-at-the-point-of-novelty. Halliburton relied on quite a few other cases that also declared claims invalid that were functional at the point of novelty. The line of cases goes back to O’Reilly v. Morse. No one overruled those cases, trust me. Moreover, the Supreme Court continues to cite these cases and did so it in the most recent term in the Nautilus case.

          What Congress did was to permit, expressly permit, the use of means plus function elements in combination claims, with the construction clause as the penalty for doing so. There is no requirement to use means plus function, but there is a requirement imposed by law that claims not be functional-at-the-point-of-novelty. There is no case anywhere that has overturned that doctrine. Because courts, expressly the Supreme Court, continues to cite to O’Reilly v. Morse and the problem of Morse’s claim 8, I would daresay that it would be a cold day in Hades before Congress would overrule O’Reilly v. Morse.

        4. 7.2.1.4

          In other words you have to use functional language so that you can preempt all the solutions to sub problems instead of just getting a patent on your solution to the sub problem and letting everyone else make use and sell their solution. Aka The very definition of the preemption problem.

          1. 7.2.1.4.1

            In other words you use functional language so you can focus on what is new and not what a PHOSITA knows.

            1. 7.2.1.4.1.1

              Yes.

              You can describe what is old either structurally or functionally. Makes no difference.

              Consider the board to be attached to another board. Nails, screws, bolts, glue — all could be used.

              You could describe the structure used in the claim. But if the structure was not even relevant to the invention, one could just say,

              “Two boards, attached to each other.”

  36. 6

    Judge Wu’s approach was to identify the point-of-novelty for the claimed invention and then consider whether that point-of-novelty was itself an abstract idea.

    He writes: “This case illustrates the danger that exists when the novel portions of an invention are claimed too broadly.”

    Why is it one of the few judges who gets it doesn’t sit on the court that so clearly does not? One of these days he’s going to write an opinion the federal circuit will overturn and the Supreme Court will set right.

    In salient part he says:
    The test in practice often focuses on the “way” aspect of the test, because
    function and result are often identical in the patent and accused product, and the
    question is whether the accused infringer uses the same “way.”

    He writes: “This case illustrates the danger that exists when the novel portions of an invention are claimed too broadly.”

    The easier way to say this is to simply say it was functional at the exact point of novelty. Which, by the way, happens to be the right test. When you depart from the standard way of doing things, your claims must be particular and structural, not vague and functional, as your new way of doing things is the only thing upon which a patent could be granted. When you expand beyond that, and seek to claim your new way of doing things and also any other way that someone else might dream up that also achieves the same result, you’ve crossed the line.

    Morse gets the telegraph, he doesn’t get printing at a distance, because he didn’t invent the internet computer. Invention of a species does not support a claim to that species’ genus.

      1. 6.1.1

        If a claim is functional, how can it be abstract? The definition of abstract is: “existing in thought or as an idea but not having a physical or concrete existence.”

      2. 6.1.3

        Its a method claim. Its functional at all points BY DEFINITION.

        You’re forgetting that the claims here are drawn to an “automated” method by a machine whose properties are being claimed functionally.

      3. 6.1.4

        Its a method claim. Its functional at all points BY DEFINITION.

        Um not at all. You might want to look at how MPF claims are found indefinite. Algorithms have a structure. When your step calls a single algorithm it has structure. When your step calls any number of algorithms it is functional.

        Comparing two values to determine which is greater is a structured step. “Determine which quarterback is performing the most efficiently” is a function. There is no one way to determine, there are a series of steps that one could take that others would recognize as a determination. Words like “determine” and “analyze” and “generate” are almost always functional, because they just want something done and don’t care how you get there.

        1. 6.1.4.1

          MM would disagree with you. MM et al. say algorithms are not structure.

          Your position appears to be that broad language (that references several techniques with a single word) is “functional”.

          But you say Comparing two values to determine which is greater is not functional. But words like determine (something) is functional.

          what about:

          determining which of two values is greater.

          Is that functional?

          What about stirring as in a step: stirring said mixture?

          1. 6.1.4.1.1

            I think that would be “logical structure”, not “physical structure”.

            A lot of times I see what appears to be a confusion of terms that are used in different ways.

            “structure” without context doesn’t say much.

            In math, “structure” is a logical attribute description.

            Yet, “structure” itself is a reference to a physical building as a composition of matter.

          2. 6.1.4.1.2

            Your position appears to be that broad language (that references several techniques with a single word) is “functional”.

            My position is the Aristocrat court’s position. That’s the poster boy for MPF computer cases. They make it clear that there is improper functional claiming and then there is structured claiming, and the dividing line is when it is sufficiently clear so that one of skill in the art can immediately visualize the structure. In other words, if you claim something and two people in the art would have two different viewpoints as to what steps the program takes to get there, then you’ve got an indefinite claim because it lacks structure.

            If your viewpoint was correct, the phrase “step for” wouldn’t exist, and it would be impossible to claim method claims under 6th (because what structure could you possibly have in the spec to describe the functional actions??). That is not the case.

            Both determining which of two values is greater and stirring said mixture have structure. That’s why I couched my phrase with “almost” because I knew you’d immediately go to a basic thing. The problem is not when you claim code for “determining which of two values is greater”, the problem is when you have code for “determining how the supreme court will rule on case X.” There’s a million different codes you could write for that broad function (which is probably why they’re trying to monopolize it). What is the structure of that algorithm? Do you consider just the facts of the case and the historical positions of each judge? Do you also consider who the parties are? Do you consider how much public scrutiny is on the case? Maybe you just ignore it all and flip a coin. There’s hundreds of variables you could include or not include, and then there’s a million ways to manipulate those variables. That is a function. A particular set of variables and particular instructions as to how to manipulate and transform them into a particular result – that’s an algorithm.

            1. 6.1.4.1.2.1

              I should add, because there’s millions of ways to do that judicial determining, and you’re not limiting yourself to any one in particular, what you claim is actually directed toward is simply “getting an answer to this issue” which is a concept. I don’t know if you’re a sports fan, but it’s the difference between saying someone is the best player versus having a weighted system (such as a quarterback rating) that provides an answer. That weighted system adds something (that these particular variables are the most correct way to reach the end result) more than the concept. “Determining the best quarterback” is a functional abstract idea. “Determining the best quarterback using QBR” is concrete and eligible.

              The claims above would be eligible if they claimed what their rules were. But just claiming it based on rules is nothing at all.

              1. 6.1.4.1.2.1.1

                What if we added more recitation:

                Stirring the ingredients so that they react and become a green paste.

                Is that now functions because it merely recites a desired result and doesn’t limit the stirring to a particular kind of stirring or require the use of a particular tool or machine to do the stirring?

                1. Stirring the ingredients so that they react and become a green paste. Is that now functions because it merely recites a desired result and doesn’t limit the stirring to a particular kind of stirring or require the use of a particular tool or machine to do the stirring?

                  Your questions keep reinventing the wheel, and this has also already been decided. If the structure itself is sufficient to create the result the claim is not functional. Stirring is an act. Stirring to create a paste (assuming it’s the same kind of stirring) is still just an act. Either you cite structure sufficient to create a result (in which case the claim is to the structure and the result becomes a form of intended use) or you cite insufficient or totally absent structure and claim the result. The latter is (pretty much, with minor exceptions) only valid within 112, 6th and the only reason it is valid there is because by operation of statute the structure disclosed in the spec will stand in for the functional language in the claim. You can’t get around the fact that the only thing you are allowed to claim are structures, that has always been the only thing the law has ever protected.

                  This is why you can’t use MPF to claim means for performing function F and then say, for example, the structure is a processor. A processor is insufficient structure to cause a computer to make a function happen. Similarly, you can’t say “a processor executing code” for the same reason – not all code will cause the function to happen. Instead you have to cite a processor executing code that causes steps X, Y and Z to occur (XYZ producing result F). At that point you have a structure sufficient for MPF. Similarly, one could remove the embodiments and simply claim the code steps in step plus function form – step for F pointing to spec saying do XYZ.

                  What you cannot do is simply outright claim F without limiting yourself to your way of doing F. This should be obvious from any correct way of using 112, 1st (which I’ve noticed you don’t seem to do). A claim to a function is a claim to all ways of doing something. If art enables and describes 1 way of achieving the result, that does not enable or describe ALL ways. 112, 1st failure. I prefer to think of it in this manner, but it is similarly true that when there is no prior art (i.e. a limitation is a point of novelty) then claiming the result is an attempt to claim an unknown range of structures (any act that achieves the function) and is synonymous with an idea that a function should be achieved rather than a concrete particular means of getting there.

  37. 5

    I haven’t had rime to look over the decision but if what judge wu said is so then my hat is off to him for having sussed out one of the most complicated abstract ideas claimed. It isn’t always ez and this just shows a complicated example.

  38. 4

    People have been matching speech recordings to moving images for almost a century. The many relationships between the sounds that come out of our mouths and the shapes that our faces, particularly our mouths, tongues and teeth form while making those sounds are also ancient knowledge. Clever 8 year olds with with sockpuppets figure those relationships out on their own every day of the year and have done so for a long, long time.

    Here is nothing more than an attempt to claim the “automation” of these ancient information processing steps that one would follow if one wishes to animate the movement of a mouth making a certain noise (again, kids making flip animation books know how to do this at a basic level… at least I did when I was a kid).

    What’s the magical solution to achieve this marvelous “automation” you ask? Use some rules, and use a computer to apply the rules! Wow. Really impressive stuff from 1997 (just a few months after the programmable computer was first invented). Except they forgot to recite the rules in their claim …. oops.

    Correct me if I’m wrong but this claim is broad enough to cover the use of a “rule” that would “automate” the non-movement of a mouth on a cute character like this

    (:I)

    in response to an audio of somebody humming. And now look:

    (:o)

    He’s making a sound. Does it look like he’s making the sound of an “f”? No? Gee, looks like we already have some rules. Can I haz patent now?

    A couple problems with some of Wu’s discussion:

    the patent’s casual – and honest – description of the prior art was made at a time when, under the then-prevalent interpretation of the law, such admissions were unlikely to be harmful.

    Wrong. The risk of potentially “harming” one’s patent by making all sorts of admissions about the teaching of the prior art in the background section has been known and discussed here and elsewhere for many, many years, and long before these recent eligibility decisions were decided.

    One unintended consequence of Alice, and perhaps of this and other decisions to come, is an incentive for patent applicants to say as little as possible about the prior art in their applications.

    Again, that “incentive” pre-dates these recent eligibility decisions. And the fact is that most computer-implementing “innovators”, like most applicants in every other field, already say as little as possible about the relevant prior art in their patent applications. In part, that’s because information-processing “on a computer” has been historically (and improperly) treated by the PTO and its “stakeholders” as if it’s completely different from non-computerized information processing. When it comes to computer-implemented information processing and “automation”, we were all apparently born yesterday.

    1. 4.1

      Question: how well do you suppose the simplest infringing embodiments of this claim compare to the best of the allegedly “inferior” prior art methods?

      I’m guessing pretty darn poorly.

      This part of Wu’s analyis is key:

      But the prior art did not, according to the patents, involve obtaining rules that define output morph weight sets as a function of the phonemes, or using those rules to generate the morph weight sets. Instead, an artist manually set the morph weights at certain important keyframes, and a computer program then interpolated the frames between the keyframes. ‘576 Patent 2:29-37.

      And how did “the artist” determine what those important keyframes were? Using “rules”, of course. Rules based on logic, reason and experience.

      That’s how people process information. That’s how people “obtain” rules and that’s what this patent prevented people from doing: teaching a computer to use the most relevant information to automate an information processing task that everybody knew was capable of being automated.

      You say you’ve written a program that actually works better than any human at this task? Copyright your program and sell it and enjoy your profits.

      1. 4.1.1

        “And how did “the artist” determine what those important keyframes were? Using “rules”, of course. Rules based on logic, reason and experience.”

        NO!. That’s the point. Selecting parameters based on gut feelings and trial and error and experience is not the use of a rule.

        1. 4.1.1.1

          Selecting parameters based on gut feelings and trial and error and experience is not the use of a rule.

          I’m sure that sounded nice, Les, but you just made it up and it’s completely false.

          Of course the parameters are rules. It doesn’t matter how they are selected. All that matter is whether you follow them not.

          1. 4.1.1.1.1

            Let me rephrase to better follow the terminology you used:

            NO!. That’s the point. Selecting key frames based on gut feelings and trial and error and experience is not the use of a rule.

            1. 4.1.1.1.1.1

              Selecting key frames based on gut feelings and trial and error and experience is not the use of a rule.

              This is nonsense, Les. You make it sound as if animators working on matching sound to animation without “automation” are complete m orons. That’s not the way the world looks.

              We all process information, all the time, and most of us do so reasonably. Those people who don’t or can’t do this usually end up in an institution of some sort.

              1. 4.1.1.1.1.1.1

                I did no such thing. I’m quite sure they are highly skilled, highly paid artisan, because they make decisions others can’t make based on their instinct.

                Again. THAT’S THE POINT.

                The claimed method, which involves accessing RULES, allows lower paid, less skilled individuals to use a machine to do the animating.

                THAT’S WHY it is an important invention that the inventor should be able to protect with a patent!

                1. They are still using rules…

                  It is one reason animators tend to have a mirror where they work. They can LOOK at what they do for themselves when they do something.

  39. 3

    Here is the error in Judge Wu’s opinion.

    “That is because the inclusion of “well-understood, routine, conventional activity” previously used in the field “is normally not sufficient to transform an unpatentable law of nature [or abstract idea] into a patent-eligible application . . . .” Mayo, 132 S.Ct. at 1298.” Judge Wu himself inserted “or abstract idea” into the Mayo framework with regard to prong I. He also took a prong II quote out of Alice but applied it to prong I.

    Error because determining whether a claim is an unpatentable law of nature is different than determining whether a claim is directed to an abstract idea. In Mayo, if you remove all that is conventiona