Software Business Method Patent Fails Again

Open Text v. Alfresco Software, 13-CV-04843-JD, 2014 WL 4684429 (N.D. Cal. Sept. 19, 2014) Open Text SA v Alfresco Software Ltd

Citing Alice Corp. as the deciding factor, Judge Donato has invalidated a set of challenged claims in U.S. Patent Nos. 7,647,372 and 7,975,007 owned by Open Text. Here, Open Text has only asserted claim 38 of the ‘372 patent and claim 22 of the ‘007 patent — both claims are now adjudged invalid.  As you’ll see below, the claims are so poorly and ambiguously drafted as to make an invalidity determination likely on other grounds as well.

[T]he Court finds that the challenged claims are directed to a very simple abstract marketing idea that uses generic computer and Internet technology, and contain no additional inventive concept.

The two companies in the lawsuit compete in a growing market for enterprise-wide information management (EIM).  Claim 38 at issue is directed toward the software in the form of a “computer readable storage medium” containing a set of instructions.  Basically, we have a claimed computer program that creates a group of “participants” based upon whether someone interacted with a web site, then it designates a subset of participants and executes an “instruction” associated with an “action” performed “in conjunction” with each member of the subset. Seriously? The claim reads as follows (with its independent claim).

37. A computer readable storage medium for facilitating a network based dialogue, comprising instructions translatable for:

assembling a set of first corresponding participants, wherein assembling the first set of corresponding participants comprises executing a first instruction of a first program in conjunction with each of the first corresponding participants, wherein the first instruction is operable to determine the occurrence of a first specified event in conjunction with each of the first corresponding participants;

assembling a set of second corresponding participants, wherein each of the set of second corresponding participants is in the set of first corresponding participants; and

executing a second instruction in conjunction with each of the second set of corresponding participants, wherein the second instruction is associated with a first action to be performed in conjunction with each of the set of second corresponding participants.

38. The computer readable storage medium of claim 37, wherein the first specified event is an interaction with a web site.

Following Alice Corp., the district court first identified the abstract idea embodied by the claim.

[The claims] recite a very simple computer-driven method to engage in the commonplace and time-honored practice of interacting with customers to promote marketing and sales.” Claim 38 … claims a storage medium containing software that identifies whether each participant in a set of participants has interacted with a website, assembles a set of second participants that are a subset of the first group, and performs an second action with that subset. This describes the most basic and widely-understood principle of marketing: identify potential or current customers and engage with them to improve their customer experience. On its face, asking a customer about his or her experience and replying “Thank You” to those who respond positively and, “I’m sorry, what can we do better?” to those who respond negatively is an unpatentable abstract idea.

With that unpatentable abstract idea in mind, the court then considered (and rejected) the notion that the claim provides an “inventive concept” or “something more” that would positively transform its eligibility.

The additional steps must be more than “well-understood, routine, conventional activity” or just computerizing the abstract idea. . . .

The asserted claims … fail to transform the abstract idea into a patent-eligible invention. The asserted claims in both patents implement the basic marketing scheme on a generic computer system without any meaningful limitations. Open Text’s counsel conceded at the hearing that the patents could be implemented on a generic computer. Open Text argues that the asserted claims “contain limitations tying them to specific ways of using computers.” But as the Court in Alice Corp. and the Federal Circuit have concluded, “[a]t best, that narrowing is an attempt to limit the use of the abstract … idea to a particular technological environment, which has long been held insufficient to save a claim in this context.” buySAFE. For example, although claim 37 of the ‘372 patent—from which claim 38 depends ––––recites a “computer readable storage medium,” this adds nothing of substance to the basic, patent-ineligible marketing scheme. … Nor does claim 38’s requirement that participants be identified based on their interaction with a website compel a different result: simply identifying a criterion for selecting participants is a prime example of attempting to save a claim by limiting it to a particular technological environment.

Invalid.

Here, the court purposefully characterized the invention in the business method context with the unpatentable abstract idea being a longstanding principle of marketing.  What remains to be seen is how courts will react to software patents whose abstraction are not focused on old business ideas.

 

Dennis Crouch

About Dennis Crouch

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

118 thoughts on “Software Business Method Patent Fails Again

  1. McRO, Inc. v. Capcom, 12-10337 (C.D. Cal.) – interesting decision too:

    3. The Failure of the Claims Is Not Inconsistent with the Inventor
    Having Developed an Innovative Process

    Defendants argue that a “patentee simpl[y] does not waste the time, money and
    effort to prosecute a patent application for an invention they casually indicate was known in the art.” Opp’n, Docket No. 344 at 10-11. 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.

  2. Dennis: What remains to be seen is how courts will react to software patents whose abstraction are not focused on old business ideas.

    We’ve already crossed that river, haven’t we?

    To the extent that any information can always be of value to someone in some circumstance, methods of obtaining it, providing it and storing it for future monetization are themselves “old business ideas” with an unmeasurable number of variations already disclosed in the prior art (including the computer-related art).

    1. MM – I think that we’re still at an unpredictable stage as to how the new 101 analysis is going to apply to non-business-method software and in the context of personalized medicine and diagnostics.

      1. There may be unpredictability on the margins (as there always is) but I think it’s very predictable that a very similar analysis applies (and will be applied) to many “methods” that are indistinguishable from the claims at issue in Mayo except for being performed “on a computer.”

        For example, a claim to a computer whose only new limitation is that the computer is “configured to transmit or display upon request [insert ineligible non-obvious medical information here]” is an ineligible claim.

  3. I’m a software patent supporter, and I think the legal framework for the decision is problematic, but I have no problem with this outcome. When I read a patent claim, I put on my software engineer’s hat and ask: how would a technical artisan interpret this claim. When I read this claim, I have difficulty understanding what it means. With respect to what are presumably inventive features, there is almost no terminology that gives technical meaning to the claims.

    Also, these claims suffer from the same defect many software claims have. Consider “assembling a set of first corresponding participants”. Although this is supposed to be a computer-implemented step, taken literally, a participant is a person/entity. How does a computer assemble people? I picture a robotic sheepdog herding people into a group. Werriam-Webster, “assemble”: “gather together in one place for a common purpose”. This is a problem with many software claims. The elements being manipulated are recited as what they represent, rather than information being manipulated by a computer.

    1. I agree literally claiming assembling as a method step would be problematic, I wonder if the words “translatable for” are ambiguous enough to include a “purpose” for the use of the instructions (in a vague manner) as opposed to explicitly defining what the computer must actually do….

      Here is another example (hypothetical)
      e.g.

      measuring a temperature of said exhaust manifold;

      storing said temperature [FAIL] in a memory store;

      The entity which is “a temperature” is of an entirely different class of thing (i.e. it is a different thing) from what possibly could be stored in a memory store. The claim should recite “the measurement generating a temperature value representing said temperature”, and storing said temperature value in the memory store.

      This is obvious because the term temperature was used, replace it with something like “phase” or “power” (of the appropriate thing) and a newbie claim drafter may miss it entirely.

  4. Basically, we have devolved to pre-1952 patent law. A judge now is allowed to look at the claim, evaluate prior art, and determine whether they believe it was worth a patent. It is true that right now that is limited to information processing field and finance, but that is only ’cause.

    1. Night, I think the courts are uniform in that the statutory subject matter has to be old, even conventional. If it is new, the case must be evaluated under 102/103/112. There is no assessing the prior art going on here.

  5. Without any definition of “abstract”, this is a weasel dropped in to the pants. There is NO PRINCIPLED REASON – none- why this logic cannot be used to invalidate Mickey Mouse (MM) chemical or biotech patents, all of which are directed to abstract ideas. Every one. Give an example claim and I will deliver the abstract idea behind it.

    Schmucks and charlatans. Wicked thieves, beneath contempt.

    1. First patent I pulled: U.S. patent No 8,842,417 titled High voltage electro-chemical double layer capacitor and owned by Corning.

      Claim 1. An electro-chemical double layer capacitor comprising: a positive electrode comprising a halogenated first activated carbon material and a negative electrode comprising an un-halogenated second activated carbon material, wherein the negative electrode is substantially halogen free.

      OK, invalidate it under Alice/Mayo/Myriad/Bilski.

      1. The idea is using halogen in capacitor electrodes. Both halogen impregnation and capacitor electrodes are old and well known. There is no something more here.

        1. Exactly. You can invalidate ANY patent using this step 1: gist to consolidate the entire claim into one idea. Step 2: do a 103 analysis yourself stating that the new portion is not substantial.

          Seriously. There is so serious intellectual dishonesty going on here. Many of these software patents so called would have an embodiment that is a special purpose chip.

          I could describe it in terms of an electric circuit. So, how is that abstract? A functioning machine is abstract depending on whether you build it with software or hardware?

          1. That is the rub where the SCOTUS has added to the 1952 Patent Statute a technology provision. As the Alice test is wiping out the special purpose chip by saying “could this be done by a GPC.” Thus wiping out all but that which requires a technical improvement to the tool the GPC.

            Serious intellectual dishonesty going on here. And the wool is being pulled over a lot of judges eyes who are incapable of even thinking about science. Thanks Obama.

            1. Note too that prong two is Graham condescend into a judge gets to look at it and say thumbs up or thumbs down.

              In each of these cases the judge could have said, well that is kind of clever and a bit beyond the abstract idea so it passes 101.

              That is a Graham test done by the judge with no evidence.

              1. I’m glad you’re suddenly focused on the “Graham test”. Of course that’s the primary reason most patentees would prefer not to deal with 101 — they lose their chance to hire experts to puff up the “importance” of an otherwise invalid claim.

                In that regard, can you remind everyone where the “secondary factors” recited in Graham are found in the statute?

                1. Why Ned? You must be kidding. Alice uses 102, 103, and 112 thinking to arrive at a conclusion the patent is ineligible under 101. Graham needs an amendment that says, but if the judge decides that not enough is added (pre-103 analysis), then the patent is invalid. The judge does not need to go through the Graham analysis or consider evidence. The judge need only base their opinion on their perception of what is the invention and prior art based on whatever they feel like.

                2. you say almost directly that the SCOTUS has over-turned Graham.

                  Nope.

                  There are certainly parts of Graham that deserve to be overturned and they should be challenged.

                  But Graham considerations aren’t relevant to determining whether a claim that protects ineligible subject matter should be granted. For example, no matter how non-obvious and valuable your new information might be, you can’t protect it with a patent. It doesn’t matter how many people paid you for the information or who paid you to license the ineligible patent that should never have been granted in the first place.

                3. Night, I see.

                  But I still insist that the statutory subject matter must be notoriously old, and conventional (functionally claiming it will do) before one can resolve a case on 101.

                  All the cases are consistent on this point. All of them.

        2. The idea is using halogen in capacitor electrodes. Both halogen impregnation and capacitor electrodes are old and well known. There is no something more here.

          Pretty funny.

          Seems like there’s some objective structural limitations that you’re glossing over: “negative electrode comprising an un-halogenated second activated carbon material, wherein the negative electrode is substantially halogen free”, not to mention the combination of that electrode with another electrode (‘electrode comprising a halogenated first activated carbon material”).

          You think you’ll get away with “analysis” in court?

          I don’t. In fact, I know you won’t unless the judge has been hitting the sauce.

          1. Yes but isn’t that all old and know. That is part of Alice isn’t it. Take everything that was known and throw it out. So, no chemical or property that was known can add to helping you get 101 eligible.

            1. but isn’t that all old and know.

              I don’t know. Is it? You tell me.

              no chemical or property that was known can add to helping you get 101 eligible.

              Since when?

        3. Bad joke ahead, your analysis indicates to me that what the court is really doing is first looking to whether or not the novel subject matter is directed to an improvement in a machine, manufacture, composition, or conventional process.

    2. Okay Tourb,

      US Patent 4,200,770 Cryptographic Apparatus and Method

      Claim 8: An apparatus for generating a secure cipher key comprising:

      a first secure key generator having a first input connected to receive an applied first signal, having a second input connected to receive a second signal, having a first and second outputs, and having a means for generating at the first output a third signal, said third signal Yi being described by

      Yi =ax.sbsp.i mod q… [5 more paragraphs and four more equations, see link to google.com ]

      —-

      Note that you promised the abstract idea and an Invalidation in the style of Alice or Mayo. This patent is and was known to be invalid from its first day, but not under Alice. This should be easy for you, since it’s pure math and doesn’t even try to claim a machine or process.

        1. Although do physical circuits matter under Alice? It seems to me that once a concept’s “abstract”, it doesn’t matter what the physical form is. But I could be mistaken.

          1. Bob, could have something to do with the form of the claim regardless of the disclosure. Check this claim:

            — 1. Chip configured to perform algorithm A.–

            where algorithm A is defined in the written description?

            1. Ned,

              I personally have no problem with that claim. I just think the Alice framework would say “Algorithm A” is abstract, therefore the “apparatus” has to have “something more” to provide patentability. What that “something more” is, I have no idea. So, even if you create a circuit specifically for performing the “abstract” idea, it doesn’t matter under Alice.

              I think the Supreme Court lacks a realistic viewpoint of technology. The “transformation” case involving turning rubber constituents into rubber does not cover the type of technology advances occurring today. Today, much of what we’re doing is taking data, manipulating it, and outputting modified data. Take encryption/decryption, filters, modulation, tons of different subject matter. The “transformation” is transformation of data, not of physical products. Regardless, if that transformation is new and useful and directed to a physical machine, one should be able to receive a patent on that. Alice seems to make that impossible.

              This is just one person’s opinion, though.

              1. PatentBob:

                So, even if you create a circuit specifically for performing the “abstract” idea, it doesn’t matter under Alice

                It would if the “new” circuit was claimed using objective structural terms in a manner that distinguished it from circuits in the prior art.

                I think the Supreme Court lacks a realistic viewpoint of technology. The “transformation” case involving turning rubber constituents into rubber does not cover the type of technology advances occurring today.

                I think the Supreme Court, like myself and many others, understands very well the difference between curing rubber and the so-called “technology advances” that are being protected with invalid claims like those that are getting tanked left and right (finally).

                That understanding has been around for a long, long time, by the way. It’s the PTO and the Federal Circuit who have been “unrealistic” in their attempts to shoehorn information processing “innovations” into a system that was not designed to examine or protect such innovations, and almost surely never will be.

              2. The “transformation” is transformation of data, not of physical products. Regardless, if that transformation is new and useful and directed to a physical machine, one should be able to receive a patent on that.

                Does a “physical machine” include a ball-point pen because the pen is used to “transform data”?

              3. PatentBob, the point seems obvious, does it not, that even circuit inventions can be claimed at such a high level of abstraction that one is essentially claiming the nonstatutory algorithm and not the circuits.

                The clue has to be whether the claim includes invention in clearly statutory subject matter. Simply claiming a chip at such a high level of abstract is not enough.

              4. PatentBob, I recieved this in my e-mail as a example:

                1. A semiconductor chip programmed to facilitate surveying operations by ascertaining an unknown distance h, wherein the chip is programmed to determine h by Newton’s method, where h^2 = Σ (a^2 + b^2), where h is an unknown distance between points A and B; a is a line segment extending between the points A and C; b is a line segment extending between the points B and C; and the point C is located such that the line segments a and b are disposed at right angles to one another, and the point C is where the line segments a and b meet one another.

  6. Dennis: Following Alice Corp., the district court first identified the abstract idea embodied by the claim.

    Another of way of describing what is happening in these computer-implemented information processes cases is that the court is first determining the information processing actions in the claims (e.g., “identifying”; “determining”; “transmitting [insert data label here]; “receiving [insert data label here]”; “transmitting [insert data label here]; “sorting”; etc., etc, in contrast to other actions like “wherein said rubber is heated to 456 degrees”).

    Those information processing steps are then interpreted as if taking place between people communicating with each other directly, or communicating with each other via old systems (e.g., smoke signals, mail, radio, TV, phone, mag, computers or a combination thereof). That is where the ineligible subject matter in the claim is identified.

    Then the question is asked: are the additional steps in the claim adding anything new other than recitations of pre-exisiting fields of use (e.g., “on a plane”; “on a computer”; “in a robot car”; “on a handheld device”; “with a calculator, paper, and a ball point pen”; “through a bullhorn”; etc.) without any new and recited structure or any new transformations of matter.

    If it’s clear that there is no such additional recitation, the claim is then properly deemed ineligible.

    The crutch that many software patentees have been relying on to get their claims granted by the PTO is to include “an algorithm” (never expressly defined) and a declaration that “algorithms are structure.” What’s completely absent from the broken patent system is any coherent and practical manner of evaluating the utility, novelty and non-obviousness of “algorithms” (never expressly defined) or an acknowledgement that if these “new algorithms” are, in fact, “new structures” then they should be eligible as manufactures in their own right.

    Which is insane.

    1. I think the courts are looking first to the hardware recited to determine whether it is anything but gen eric. If not, the patent more than likely is on the balance, which is then summarized.

      I can predict with some confidence that if one recites only gen eric computer or internet hardware in a claim, that it is like to be found invalid under 101. It is almost as if those claim elements did not exist.

    2. What highlighted the absurdity of this situation to me was the recent case where claims were deemed to meet the 101 requirement because they recited ‘paper checks.’ As if anything electronic is like thoughts and therefore imaginary. Like electronic checks and bank balances. I think others have made this point well before, but the paper check case really put it in perspective for me, a non-computer person and so IMO more on the wavelength of the people currently deciding these cases.

  7. Thanks Dennis. But since all the patents’ claims weren’t ruled ineligible; and the entire patent wasn’t found invalid, unenforceable, etc. ; isn’t this a case of:

    Software Business Method Claims Fail Again

    1. It seems to me that the Software Business Method Patent failed to yield these guys any royalties here. The title is accurate, if not precise.

      1. Dennis — so does that mean the entire patent “failed,” or just the two asserted claims?

        I haven’t reviewed all this patent’s claims (or whether more claims may be available given its spec, etc), but even if the other existing claims of this patent would under this judge’s theory also be ineligible, what if a reissue and/or con and/or CIP were still available?

        And what if the spec was strong enough to support 101-eligible claims?

        Might this (and other similarly 101-ineligiable claims from other patents) mean that such patents have in fact not “failed?”

        Now, if what you mean by “failed” is that the patent asserter entity was unsuccessful in their infringement contentions which utilized just these two particular claims, I’d agree that this patent has in that regard / context “failed.”

        But judges aren’t (and legally can’t) 101-killing, -striking down, -rendering ineligible, -finding invalid, or otherwise 101-eliminating entire patents or all of their claims … but instead some (often rather small) subset of the claims.

        In fact, believe that in the months and years to come, we will see many new / amended claims which will easily pass 101 muster … from the exact same patents which previously have had one or more of their claims ruled 101 ineligible.

        From most, or even many of these (types) of patents? Likely not.

        But from many (perhaps one-in-four) of them? Yes indeed.

        1. Steve: In fact, believe that in the months and years to come, we will see many new / amended claims which will easily pass 101 muster … from the exact same patents which previously have had one or more of their claims ruled 101 ineligible.

          Please share with everyone the nature of these amendments that you are imagining.

          Take this case, for example. What eligibility-rescuing amendment would you propose? Show us the support in the specification.

          I’m not suggesting it can’t be done. I’m just curious about what you think the amendment looks like.

          Most of the “innovators” of computer-implemented “inventions” like this one are just waving their hands around some ineligible subject matter. If they had actually innovated some worthwhile advancement in computing technology, well, I assume they would have claimed that instead of the typical invalid word salad we see here.

      2. While perhaps it is a minor point, but I believe that Steve is stressing that it is only the asserted claims – and not the entire patent itself -that has been struck down.

        One only has to look at Myriad to see a patent with asserted claims struck down that is still being wielded – as a patent.

        Further, as I noted below, the continuity tab of the image file wrapper is interesting.

        There are in fact two (unpublished) applications not only alive, but filed just this year.

        Now I have not dived further into the specification to see what may (or may not be salvageable – given the presumption that the applicant does not want a CIP (if new matter is needed), so I have not undertaken the task that I am sure that existing counsel is being paid to do. I will leave that to them.

    2. Steve, I think the business method ship has sailed. If you disagree, give us an example of something that disproves the point.

              1. Whatever isn’t barred … is statutory.

                By barred, I think you must mean “expressly barred using the words you have chosen.”

                The Supreme Court and basic logic tells us otherwise (thank goodness).

                A simple example should set you straight: not all “processes” are eligible for patenting. For example, a process of thinking about stuff isn’t eligible. Even the Federal Circuit was able to figure that out. Calling a process a “business process” does not make the “process” a statutory process. Not even close. Nor does adding a field of use limitation like “on a computer”, and for very good reasons.

        1. Dennis, all they ruled in Bilski was there was no categorical business method exclusion equivalent to the exclusion of laws of nature, etc.

          They did not hold the converse — that business methods were statutory, which is the read many here have for years given Bilski.

          Stevens, in Bilski, argued that Hotel Security be followed in that it held that business methods were non statutory. The Supreme Court has not yet gone that far. However, since Prometheus, they have been following the Hotel Security analysis of requiring invention in the statutory subject matter: the machines, the manufactures or the compositions, or, as in Diehr, a claim that protects a process that is otherwise statutory, e.g., that passes the MOT.

          Where does that leave the part of the claim that is neither a machine, manufacture, nor a composition of matter or a conventional process? That leaves that part in the land of the nonstatutory, does it not? And if it’s in the land of the nonstatutory, both Diehr, Mayo and Alice require some integration to transform the statutory — to make a new or improved, machine, manufacture, composition or conventional process.

          In the lower courts, the progeny of Hotel Security has been recognized in the printed matter doctrine whereby printed matter is given no weight in patentability considerations unless it is functional with respect to the underlying subject matter so as to transform it. That is the same analysis that Supreme Court now uses for 101 purposes, albeit it gives the gen erically described statutory subject matter no weight. (But Benson did the same, did it not?) The Alice analysis is also the same as Funk Bros. where the non statutory discovery of a law of nature was not given weight in the patentablity consideration. The packaging of the bacteria was not inventive — what the court the court said it was looking for was some transformation of the bacteria itself into a new state. One recognizes in this that there has to be some new or improved machine, manufacture or composition for the claimed subject matter to be eligible for patenting.

          Just as a parenthetical, don’t you find it odd that the advocates of nominalism will not answer the question as to whether, when claiming an apparatus, the claimed subject matter must define a new or improved machine?

      1. Ned, you’re correct, the business method has in fact sailed … but not to where you think it has … but instead to new lands of creative opportunity for those who know what they’re doing.

        While I don’t have the time or inclination to dig up an example to disprove your point, let me instead point you to the far, far more important, explicit vote count of our Supremes in this regard:

        3 for abolition of biz-methods. 6 not. 2-to-1 in favor.

        Plus congressional approval / acknowledgement / authorization.

        Biz-method patented inventions aren’t going anywhere. Ever.

        1. the business method has in fact sailed … but not to where you think it has … but instead to new lands of creative opportunity for those who know what they’re doing.

          Those who know what they’re doing? You mean patent lawyers, don’t you?

          What magical words are going to replace the meaningless term “configured to” in the computer-implemented arts?

          I’ve been waiting years for an answer but people really don’t like talking about this stuff, even when they are sure that the future is really, really bright for magic words.

          Biz-method patented inventions aren’t going anywhere. Ever.

          Some of them will be around but a lot of them are going somewhere dark and quiet, forever. The ones that are going to be around (for a while longer, at least) are the ones that recite some new machine in objective structural terms that distinguish the new machine from the prior art.

          But methods of “displaying” some image and an offer to sell something to you “on a computer”? Those are gone. Forget about ’em.

          1. Problem is, you only read the “bad patents”. There are plenty of software patents out there that are well-crafted, reasonably scoped, and understandable to relevant artisans. Those of your bent don’t care about the good claims, and they get no public airing. There are plenty of poor claims floating around, largely because of electrical and mechanical engineers, especially during 2000-2010 roughly, doing the work of software engineers. Similarly, EE engineers were examining software patents. Lack of understanding on both sides, and a poor lexicon used to hide the lack of understanding, led to many low-quality patents. Weed them out and also prevent them from issuing. But in doing so, don’t impede legitimate IP rights and their legitimate role in advancing the technical arts.

            My own theory for your kind of view, Malcolm, is some folks lack ability or desire to discriminate quality software patents, and therefore prefer to throw them all out.

                1. I would actually like to identify a set of software patents that most folks think should be patent eligible and that fit within Alice, either b/c they do not recite an abstract idea or b/c they include “something more” sufficient to transform the patent into eligible grounds.

        1. It’s amazing to me how you people, whoever you are, can identify clues but not arrive at a solution.

          I feel like George Gamow.

          1. I’m not you people. I have a lot of software based patents out there, and I’m writing one right now. But seriously, if I wrote a claim that didn’t do anything and included no databases, data, fields, etc., I’d expect it to get smacked down.

            1. BJA, you have done more than most, which is to identify a different and profitable direction.

              However, you haven’t developed it at all, and therefore what you have done is to have made only a suggestion in passing, that ultimately has no greater worth than the contentless “abstract” of Alice.

              So much fiddle-faddle, and so little actual traction and progress. We are no further ahead after Alice, than before.

              It still surprises me that you guys can continue to be satisfied playing in this sandbox. To be sure, there are 2 kinds of patent attorneys–those who don’t actually have any other options in life because they have been cloistered, and those who can see beyond the near horizon. Before entering this game, I never would have guessed how many were in the first category.

              I’m not saying this to be superioristic, it’s simply a factual conclusion I have made based on my investigation of the crisis in patent law, and whether I could actually do anything about it or not.

              Yes, when you’re in the trenches, working hard for clients every day, it is difficult, often impossible, to find time to stick your head up and look around–if the thought ever even occurs to you, which it most often does not.

              This site is different–from the volume and frequency of posts from regulars, it is obvious that you have free time to devote to lateral thinking and perspective. But after years and years of posting, none of you has managed to achieve anything significant regarding the generally-agreed-upon crises in patent law.

              This is likely a combination of 2 factors: 1) the structural mechanics of changing patent law, and 2) the absence of legally, socially, and doctrinally-sound formulations of the foundations of patent law.

              It’s a huge problem that does not admit of any reasonable solution in the existing climate. My conclusion? It’s a waste of time. You can either be satisfied to play in the existing sandbox, or you can find another.

              For years now, I have chosen to find other sandboxes. I have instead been doing my own biomedical project, while developing competencies in both international tax and art law.

              Nothing is perfect, but so far, nothing else I have encountered is as ridiculous a dead-end as an attempt to positively influence patent law.

  8. The claim is silent with regard to marketing.

    The claim reads on, for example, identifying people that load web page and, for example, identifying a subset of those people that post a comment.

    To impermissibly distill this claim down to a gist of “marketing” is contemptible. I would much rather it be 102ed with no cited grounds than 101’ed. We are far beyond the looking glass now.

    1. Les – this was surprising to me when I read the judge’s opinion and had difficulty seeing how marketing was involved with the claim. Perhaps the problem though is that the claim is even more abstract than suggested by the court – it is not even limited to marketing.

        1. And how many people think computer readable mediums are patentable? I think any court directly examining this issue would say these claims are not. Unfortunately, I know of no court case examining the issue.

      1. Dennis – I’m guessing the Judge pulled the marketing stuff from the spec or more specific dependent claims. But, that too would be error.

        1. The title of the patent is “METHOD AND SYSTEM FOR FACILITATING MARKETING DIALOGUES.” No, the title is not a limitation, but it didn’t require a lot of imagination to determine what the “inventors” were going for here.

        2. The judge does not have to understand the invention or the claim; he just says abstract idea (because I know it when I see it) therefore patent ineligible

        3. I’m guessing the Judge pulled the marketing stuff from the spec or more specific dependent claims. But, that too would be error.

          If the “more specific claims” protect ineligible subject matter (because, e.g., they also fail to recite any new objective structures in structural terms), then the broader claims surely do as well.*

          *note: a more specific claim depending from an otherwise eligible claim (e.g., a claim that recites a new machine or composition in objective structural terms that distinguish the parent claim from the prior art) is not ineligible per se even if it recites only ineligible subject matter

    2. You’re absolutely right, Les. It’s much broader than that, so it preempts far more than “engaging in the commonplace and time-honored practice of interacting with customers to promote marketing and sales.”

      Wait. How does this help the patentee?

      1. All it preempts is identifying/classifying two groups of users, those that do one thing and those that that thing and another thing.

        All claims preempt something. The claim is broad. It is not abstract. It claims a computer readable medium. That is concrete, not abstract.

        If the claim is too broad (and I agree that it is, assuming Patently O logs visitors and of those, further identifies commentors and that it did so prior to the priority date of the patent), it should be rejected under 102 or 103.

        1. You don’t think “identifying/classifying two groups of users, those that do one thing and those that that thing and another thing” is abstract? That’s just about as abstract as it gets, Les.

          1. Define “abstract.”

            Feel free to use any of the patent writing references I previously supplied to you in our ever so gentle conversation on the ladders of abstraction (which by the way, you never rejoined the conversation with the texts to support your counter view – not snark, mind you, just a reminder of how the term is to be understood in the patent context)

            1. ab·stract adjective \ab-ˈstrakt, ˈab-ˌ\
              : relating to or involving general ideas or qualities rather than specific people, objects, or actions

              See, for example, “identifying/classifying two groups of users, those that do one thing and those that [do] that thing and another thing.”

              1. Can you explain why your example involves the “general,” not the “specific”? These are terms of degree — they are necessarily subjective (i.e., lie in the eye of the beholder). That is why this “abstract” business is not a good jurisprudential approach.

                1. Also, step 1 of Alice is a procedure for creating a “gist” of the claim, i.e., it is general-izing. It should surprise no one that when you generalize something, you get something general, i.e., abstract. Once you’ve generalized the claim, the pieces don’t seem that important. Which is step 2 in the “analysis” with the foregone conclusion.

          1. >>as a procedural litigation tool

            Why not just arm the judges. When they don’t like a litigant, they can just shoot them.

          2. I seem to recall there was a patent on color management or color profiling (a subject which I find to be at once commonly deceptively simply described while being elusively confusingly complex) as being one which maybe could have survived under closer technical scrutiny (versus gisting).

            In general I agree “would have been invalidated anyway” is likely accurate for the early batches (except maybe for the one).

            If I recall my history of law courses correctly I believe principles of “procedural fairness” arose in the law from considerations such as how many innocent men should be sent to the gallows in the cause of expediency…

            Given my mixed feelings about Color Management in general, I suppose this victim patent’s pleadings from the great beyond are just about falling on deaf ears… but that is a point of personal bias on my part, not principle.

        2. All it preempts is identifying/classifying two groups of users, those that do one thing and those that that thing and another thing.

          And that’s not abstract to you? Wouldn’t that be nested or hierarchical classification based on action?

          The claim is broad. It is not abstract.

          I would submit to you that if one application (in the field of marketing) isn’t enough to remove it from an abstract idea, then removing the field of application only makes it more of an abstract idea doesn’t it?

          That leads to a kind of absurd viewpoint that there would be an abstract idea implemented on a computer, but a claim not limited to a computer (which encompasses the ineligible computer embodiments) would be valid?

          If the claim is too broad…it should be rejected under 102 or 103.

          It also violates 112. Is there a list somewhere which says what is the proper order to invalidate something under? If something violates multiple prongs it violates multiple prongs.

          That being said, the court has said that 101 is a threshold issue. It seems like it would be improper to reach the 102 analysis when a valid 101 exists.

          1. The issue is not the “breadth” of the information-processing steps; it’s the fact that they are only information-processing steps.

            People come up with non-obvious “methods” of processing “data in” to “data out” all the time, every day. It’s called “thinking about what to do next.” None of those methods are eligible for patenting, no matter how important or useful they might be.

            Merely reciting “on a computer” doesn’t make those steps eligible for patenting because the old and well-known purpose of computers is to serve as efficient, more accurate proxies for our brains and other old tools (like ball point pens and paper).

      1. A belief that mental processes should be eligible for patenting on their own terms is helpful if you want to argue that “doing it on a computer” is also eligible.

        It’s helpful in the sense that it takes certain policy concerns off the table, at least from the perspective of the holder of the belief, and enables a more consistent and coherent defense of “do it on a computer” claims.

        But as a practical matter it isn’t going to get you very far in court or in Congress.

    1. Or the judge, but then that would require a trial and why have a trial when you have the ultimate power in the patent universe—Alice.

    2. Fish, Long ago, the idea that mere recital of gen eric computer hardware would be sufficient to save a claim was decided adversely in Benson. The patent office should never have allowed claims to programs (without more) simply by reciting gen eral-purpose digital computers or by reciting computer readable media.

      The Patent office is complicit in this debacle. It is they who removed the reference to Hotel Security in 1996. What?

      Also complicit are any federal circuit judge who continued to follow the dicta in In re Bernhard after Benson. And, so is the patent bar, who on the whole, continued to press for patenting software simply by reciting a computer, however gen eric.

      Nominalists all.

        1. Yes — without more.

          As in Hotel Security, the claim must recite some improvement in a machine, manufacture, or composition, or traditional process.

          1. By the way, the spec supports a special purpose chip. So, an embodiment is clearly a special purpose chip, which would be an improvement to a machine.

            So, 101, how?????? ’cause we are the SCOTUS and we will do whatever we want. Read Gingsburg recent interview. It is clear that she is not a judge, but a legislator in her mind. I think all of them are like that by the way.

            1. Chip, Night?

              BTW, how do you feel about the following claim:

              — 1. Chip configured to perform algorithm A.–

              where algorithm A is defined in the written description?

  9. >recite a very simple computer-driven method to engage in the commonplace and >time-honored practice of interacting with customers to promote marketing and >sales.

    So that pretty much covers all marketing and sales.

    1. Maybe he should have just written the claims merely recite the abstract idea of the time honored practice of inventing.

    2. So that pretty much covers all marketing and sales.

      Carried out over a computer network, yes. That’s kind of the point, Night.

      1. DanH that wasn’t my point. I should have added “marketing and sales inventions.” There is no carried out over a network.

    3. You’re correct NWPA, a claim to “interacting with customers to promote marketing and sales” is also an abstract idea.

      Maybe you would want to add a particular way of doing it, then you might have substantially more than the abstract idea.

      1. You are correct RadomGuy. A judge now has the power to proclaim any claim abstract because the SCOTUS has not defined abstract.

        1. A judge now has the power to proclaim any claim abstract because the SCOTUS has not defined abstract.

          I’ve yet to see “any claim” proclaimed as “abstract” that recited new structure in objective structural terms.

          I suppose a judge could “proclaim” such a claim to be “abstract” without providing any reasoning for doing so, but that would be just asking for a reversal by the Federal Circuit or the Supreme Court, maybe with sanctions because the argument would have to be that frivolous.

          1. So far MM you have used

            [old gathering step] + [new nonobvious determination step done by a brain] + [action step] as the only example where you think that 101 is needed.

        2. NWPA – I agree that “abstract” is not well defined but I totally disagree that you can read the decision as simply giving power to invalidate any and every patent. Business method patents represent a small minority of all the patents – even a minority of the patents being asserted. However, I don’t think it is a coincidence that the cases where an abstract idea has been found since Alice fit well within the examples given by the Supreme Court in its recent cases of Bilski and Alice Corp.

          1. ^^^ I do not think that such proves what you think it proves, Professor.

            Further, you are presuming that the cases were settled correctly, and that point is still very much in question. Sorry, but the “it’s done and let’s move on” rhetoric is not being accepted.

            And it shouldn’t be.

            1. that point is still very much in question.

              What “point” is that exactly? That the Supreme Court has rendered every claim “abstract” even if after it has expressly warned you that no appropriate test can reach that far?

              Please tell everyone the non-frivolous 101 argument that you, as a defendant, would use to tank a claim that recites new objectively defined structure as a claim that protects the “abstract.”

              Bear in mind that your argument can’t be so generically applicable that every claim is rendered abstract — that would be a frivolous argument because we know that the proper interpretation 101 doesn’t make every claim ineligible.

              Never forget: there are many, many, many other types of claims out there besides claims to computerized information processing.

              1. Can you give me an example of “a claim that recites new objectively defined structure.” Any technical field, not just computer tech.-related.

                There is nothing new under the sun.

            2. I basically agree with what anon said, Professor.

              I remember Rader talking about his tours of the district courts where he had a presentation that he showed us that he gave to the judges. He talked about how the district judges just hated patent cases and thought anyone that understood science was a beanie wearing geek.

              My suspicious is that the judges don’t really understand any of this and see an opportunity to narrow their docket by knocking out a patent that appears to their minds to have little merit.

              Not a good thing for any justice system. Evidence would be nice. Graham would be nice. I still maintain that Alice has made Graham no longer good law.

              1. “the judges don’t really understand any of this”

                Absolutely true at all levels, up to and including the USSC.

                A specialist court is needed, and has been for many years now.

                1. Which we had in the Fed. Cir. when Rich was there. Now we have Obama-Google Judges with no science training.

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