Is VPN Software Patent Eligible?

VirnetX v. Cisco and Apple (Fed. Cir. 2014)

An E.D. Texas jury sided with the patentee VirnetX — finding that the four asserted patents are not-invalid and that Apple’s VPN-On-Demand and FaceTime products infringe.  The jury then awarded $350 million in damages.  On appeal, Apple presented a number of winning arguments that, in the end, result in only a partial victory because some of the claims remain valid and infringed.  After altering claim construction of the term “secure communication link”, the jury will re-determine whether FaceTime infringes and recalculate damages.

Before getting into the merits (in a separate post), we might pause to consider the subject matter eligibility of asserted claim 1 of Patent No. 7,418,504:

1. A system for providing a domain name service for establishing a secure communication link, the system comprising:
a domain name service system configured
to be connected to a communication network,
to store a plurality of domain names and corresponding network addresses,
to receive a query for a network address, and
to comprise an indication that the domain name service system supports establishing a secure communication link.

At a high level of abstraction, the invention is designed to implement private communication which, at that generalized level would likely be seen as an abstract idea.  The particular implementation steps included in the claim here are themselves written in broad functional language whose implementation were well known and conventional aspects of DNS systems as of the 1998 application date.  Now, the court does not sua sponte raise the 101 issue here and so we do not know the answer.

178 thoughts on “Is VPN Software Patent Eligible?

  1. 18

    Jess asked:

    “I suppose that means there is a new patent on duct tape for the use in treating shingles then…

    Or is that ridiculous?”

    Devices and methods for multiplexed assays
    US 8821810 B2

    From the Spec:

    “In exemplary embodiments, the disclosed devices may be used to detect the presence or absence of one or more viral antigens, bacterial antigens, fungal antigens, or parasite antigens, cancer antigens.

    Exemplary viral antigens may include those derived from, for example, the hepatitis A, B, C, or E virus, human immunodeficiency virus (HIV), herpes simplex virus, Ebola virus, varicella zoster virus (virus leading to chicken pox and shingles), avian influenza virus, SARS virus, Epstein Barr virus, rhinoviruses, and coxsackieviruses.”

    “Non-limiting examples of a fluid-impermeable layer includes Scotch® double-sided carpet tape, 3M Double Sided Tape, Tapeworks double sided tape, CR Laurence black double sided tape, 3M Scotch Foam Mounting double-sided tape, 3M Scotch double-sided tape (clear), QuickSeam splice tape, double sided seam tape, 3M exterior weather-resistant double-sided tape, CR Laurence CRL clear double-sided PVC tape, Pure Style Girlfriends Stay-Put Double Sided Fashion Tape, Duck Duck Double-sided Duct Tape, and Electriduct Double-Sided Tape. As an alternative to double-sided tape, a heat-activated adhesive can be used to seal the fluid-carrying layers together. Indeed, any fluid-impermeable material that can be shaped and adhered to the pattern hydrophilic layers can be used. In addition, it is also possible to use the same material that is used to pattern the paper layers to join the layers of paper together.”

    and claim 1

    1. A device for assay of a fluid sample, the device comprising:
    at least first and second substantially planar members disposed in the same or parallel planes, wherein the first substantially planar member is a porous, hydrophilic, adsorbent material comprising fluid-impermeable barriers that define boundaries of plural hydrophilic regions and the second substantially planar member defines a test zone for presentation of a sample for assay;
    said plural hydrophilic regions and said test zone comprising porous, hydrophilic, adsorbent material for transfer of fluid within the porous, hydrophilic, adsorbent material by capillary action;
    said fluid-impermeable barriers penetrating the first planar member to define the boundaries of the plural hydrophilic regions through which fluid flows by capillary action;
    said members being moveable relative to each other to permit establishment of fluid flow communication serially between at least two of said hydrophilic regions and the test zone;
    a reagent disposed in said device within or in flow communication with one of said hydrophilic regions and in flow communication with said test zone when said one hydrophilic region and test zone are in fluid flow communication.

    link to google.com

    So, no, not ridiculous.

    1. 17.1

      “This is excellent news all around. Free software is winning on many fronts. ”

      These were the final two sentences of the article you linked. Everything you need to know about anti-software patent folks, like Owen, is on display.

      This isn’t about patents or the law to them. To the arstechnica crowd, all software should be free to steal.

      1. 17.1.1

        You cannot steal what is free.

        The entire “gist” of the “software is maths” position is that math belongs to the commons and cannot be appropriated by any type of exclusionary right.

        As I have attempted to make clear in conversations, this mindset does not stop at patents, and even copyright protection will be eliminated if a ‘software is maths’ viewpoint is accepted as true.

        The logic that is used – much like the sword of “Gist/Abstract” does NOT have the limit that those using the logic seem to want to assume is in place, and the mere hopeful thinking that the logic will not be fully used lacks a basis in reality.

        Closing your eyes to the slippery slope will not make that slippery slope go away.

      2. 17.1.2

        It has nothing to do with “to steal”.

        The open source movement just wants to be able to implement math functions.

        Nor do they want their implementations artificially restricted and claimed by another.

        1. 17.1.2.1

          Can you distinguish between a “coder” and an “aircraft design engineer”?

          The coder wants to design a functioning piece of software which will form part of a machine doing certain things. You say the “coder” does not want there to be no restriction on the property rights in the final embodied/tangible configuration/machine…

          The aircraft design engineer, wants to be able to design a functioning airplane. It would “be nice” for him if he could do so without having to worry about whether, an aircraft according to his final design, would infringe someone else’s property rights, when made, used, or sold.

          Either are free to design to their heart’s content, neither are restricted in the use of purported or actual fundamental tools of scientific and technological work or for that matter math functions. Each may design or write code without worry of infringement.

          Manufacturing, creating, or bringing about the actual functioning machine, is something both the “coder” and the “design engineer” knows brings about the question of third party property rights.

          Can you fundamentally distinguish (in a principled manner based on reality) these two contexts?

          1. 17.1.2.1.2

            Sure. No problem.

            The aircraft engineer is making something out of matter. If the specific part belongs to someone else then the aircraft manufacturer goes and buys the part… thus they avoid the overhead of stocking, manufacturing or having to build manufacturing plants, land…

            The programmer is just translating math from one mathematical language to another. Sometimes even having to derive that math first.

            No physical items produced.

            Just using pre-existing machines for what they were already designed and patented to do – symbolic math manipulations.

            1. 17.1.2.1.2.1

              I’m specifically referring to the a distinction related to the creative process of design, specifically exercised by the coder – designing software – and the aircraft design engineer – designing an aircraft.

              Please note the design engineer is not building anything… what he uses are fundamental design principles, scientific and technological, to put together his overall blueprint of a working machine… exactly the same as what a coder does in the act of creation.

              1. 17.1.2.1.2.1.1

                No.

                The design engineer is targeting a physical device, a “composition of matter”.

                The resulting design doesn’t fly. It doesn’t even compute.

                Now simulation software can compute what SHOULD happen IF it were actually built.

                But the simulation itself doesn’t fly. The design itself isn’t the airplane. I believe the design is actually copyrighted.

                Now if someone took the design and actually BUILT the airplane, then the constructed “composition of matter” (the airplane) could infringe a patent…

                But notice the difference – symbols vs reality.

            2. 17.1.2.1.2.2

              Jesse, you see you don’t understand software.

              Software is physical. It is really a special purpose chip. The GPC is less efficient than a special purpose chip and is nothing more than a simulator for the special purpose chip.

              So, what the software developer is making is a machine that processes information.

              How the software developer makes that machine will depend on how big that machine is, how much energy the machine takes, and how much time the machine will take to process the information.

              It is a shame that people like you want to push these false assertions about software. I wish you would take the time to learn something about this.

              1. 17.1.2.1.2.2.1

                What you scenario is like Jesse is saying that a circuit designer isn’t really making a circuit because they are using a circuit design tool to design the circuit.

                At the end of the day that GPC + software is a new machine.

                1. There is a BIG difference. The result of the circuit is a physical device.

                  The result of programming is just more math. The math STILL needs interpretation.

                  The circuit does not.

                2. Nope you are wrong. The result of programming is a specification for a special purpose chip.

                  That is reality. You just think because a cool little environment for you program has been set up that it doesn’t go back to a circuit, but it does.

                  Are you sure you have a degree in C.S.? I bet it isn’t a graduate degree.

                3. Well… even a specification isn’t the circuit.

                  Patent the circuit, not the specification.

                  Since now you are trying to confuse the use of a circuit design language with programming a general purpose computer.

              2. 17.1.2.1.2.2.2

                I see you don’t understand what a CPU is.

                It happens to be an interpreter defined in boolean algebra.

                All it can interpret are numbers. All it can process is boolean algebra, and math symbols derived from boolean algebra.

                All the CPU can do is read numbers from memory, carry out the math function designated by that number, and write numbers back to memory.

                Nothing else. It is all abstract symbols.

                1. >>All the CPU can do is

                  And, that is relevant how? The CPU by doing what it does (by the way it could be analog too) is performing information processing methods like we do.

                  I do think there is a religious element in the anti-software movement. They don’t seem to like to knowledge that software is doing what they do. J. Stevens was a particularly acute case where he didn’t get that these information processing machines were doing what his brain did like the iron age machine did what his body did.

                  Bizarre.

                2. Oh, I agree that the CPU symbolic processing is what I do in my brain.

                  No issue there.

                  Just that what I do in my brain is not patentable, thus what the CPU can do is also not patentable.

                3. The only programmers I’ve met that think software should be patentable are those that came from a trade school programming environment.

                4. jesse, we who have actually worked in computer hardware, or programmed at the machine level, understand computers very well. All the CPU does is take data in, perform mathematical and logical operations on that data, and restore the data to some storage. The CPU, programmed, does nothing physical except produce heat. Must be connected to the real world in some way in order for the CPU to actually do something.

                  So when I see arguments that suggest that a programmed computer is a new machine because a programmed computer can drive cars, perform operations, move mountains, and the like suggests that the people who make these arguments don’t understand the fundamentals, or if they do understand the fundamentals, are setting up strawman in order to induce the unformed to make policy decisions that will result in the patenting of programs and algorithms divorced from context, that effectively patent little more than mathematical algorithms or business methods.

                5. That is what I understood the problem to be. It certainly isn’t technical.

                  But I do recognize snow jobs – especially when it is in my field.

                6. I have to point out that before Judge Green’s decision AT&T digital switches often contained CPUs with no associated ALU. The little math required for switch control would be implemented in data tables.

            3. 17.1.2.1.2.3

              Nicely stated, jesse.

              You can see in this thread what the anti-software people want from the patent system. They imagine a system where the vast majority of programmers work in giant multinationals with strict dress codes, oppressive management, and mediocre wages producing gray dingy software that people buy only because there are no other options.

              Then a few inventive types write up new ideas but don’t actually write code. They can’t sell code because of the patent thickets; only the multinationals with licensing divisions can. Instead they write patents and extract a small income from the multinationals through entrepreneurial troll lawyers.

              The multinational management, patent prosecutors, patent litigators, and licensing salesmen proliferate and make money. The programmers become cheap drones. The software industry stagnates and customers suffer. But things are orderly and lawyerly justice prevails. Most importantly, the bureaucrats are in charge and creative startups can’t just upend things by creating value for the public.

              That is the end and purpose of patents on software and why creative businesses and programmers must oppose them.

              The deliberate misrepresentations — ‘software is a physical machine,’ ‘programming a computer creates a new machine,’ ‘software is more than math’ — infuriate actual programmers who read them but we’re not the intended audience. Judges and Congress are easier to bamboozle. Those ideas get repeated here because they work to persuade powers in Washington, not to convince you. And anti-software advocates are sincere in wanting to give us the gray multinational world so they come to believe those things regardless of the facts.

              1. 17.1.2.1.2.3.1

                There is no deliberate misrepresentation here.

                Computer + no software = brick.

                Computer + software can = new and useful functioning device because the computer can do before, what it could not do sans the software.

                Traveling down the path of “software is math” is no different than “a planetary gear is nothing more than a random arrangement of sub-atomic particles”.

                1. You may have a misconception of what software is.

                  I have had and used some computers with no software and many more with minimal software. Computers used to come without even an operating system. We used to key (or switch) in the instructions we wanted to execute.

                  Software is not a machine component. It is the way we use a machine. Like the act of strumming a guitar or starting a toaster, software is the expression of what a person wants an existing machine to do. The software cannot change the machine or improve its operation or make it do anything it was not originally capable of.

                  We can record some software for playback but that doesn’t make it a part of the machine and it is extremely harmful for the government to grant monopolies over our intentions of how to make the usual use of an existing machine.

                  ‘Deliberate misrepresentation’ may have been imprecise language. I certainly don’t think anyone here is arguing in bad faith. Some are using metaphors that can mislead naïve people in powerful government positions into unwisely favoring their parochial interests. Those metaphors are not harmful to the technically experienced who understand their uses and limitations.

                2. Owen – Thanks for this comment, I wonder if you go to far with your argument. In particular, we have many many patents that have been issued on new uses of known items. Many of these are formulary patents for drugs. Do you mean to eliminate those patents as well?

                3. Dennis, “[W]e have many many patents that have been issued on new uses of known items. Many of these are formulary patents for drugs. Do you mean to eliminate those patents as well?

                  I am not familiar with these so-called new use patents with drugs, but the new use of an old machine is patentable as a process.

                  Can you point me to a case that holds that a drug is re-patentable as such, with the identical structure, upon discovery of a new utility?

                  Assuming such patents exists, how could they possibly be valid given that a sale of an old product infringes? That doesn’t make any sense.

                  In truth these product patents to you to which you refer must be method patents because if they are not I have a strong doubt that they are valid.

                  Regarding a GP digital computer + program patent claimed as apparatus, there is surely there’s something wrong with such a claim because it cannot be infringed by the sale of the computer.

                4. Owen: Even assuming arguendo that there are counter examples (which I think your examples miss the mark), it doesn’t disprove my argument. My laptop, without software, is unusable. With software it performs in ways otherwise it would not without the software.

                5. @Dennis, are you thinking of orphan drug statutes?

                  I’m not sure those are always a good idea when off-label prescription seems to work so much better, but the key problem there is overbearing regulation, not a set of exceptions to the patent laws. The pharma patent laws are more administered by the FDA than the PTO in practice, anyway.

                  I’m not familiar with old drug formulary patents in other context.

                  @Ned That software is a method of using an existing machine and not a machine component is not a conclusive argument against software patents. I agree. It was a key point I was making within a smaller context.

                6. The point about software being a method (in most cases) is not all that important in reality, but it seems important to some folks here who still believe that a programmed computer is per se patentable subject matter because they think that programmed computer is a particular machine within the MOT. If anything, Alice has put a spike to that notion.

                  In proving infringement of software cases, one actually has to show a use, which is the same thing as proving a method.

                  Actually also, when the invention is in the method, claiming that subject matter as a CRM introduces nightmares in trying to prove infringement.

                7. “@Dennis, are you thinking of orphan drug statutes?”

                  No. Patents exist on methods of using an old drug for treating a different disease or condition than the drug was originally designed.

                  For example, psoriasis treatment that when applied to the scalp cure baldness.

                8. I suppose that means there is a new patent on duct tape for the use in treating shingles then…

                  Or is that ridiculous?

                  Or a new patent on asprin to help prevent heart attacks…

                9. BlutoBlutarsky, ““a planetary gear is nothing more than a random arrangement of sub-atomic particles” is false.

                  The Planetary gear is a carefully arranged mechanism composed of atoms. They are not symbols of atoms, but the actual atoms.

                  And no, they are not sub-atomic either.

                10. BlutoBlutarsky:

                  Computer + no software = brick.

                  They can be quite useful.

                  I used to work with computers with no software. It was quite handy for debugging hardware interfaces. I could set/clear the status control registers, set data values for it to convert, read values it converted. Even test its ability to perform DMA.

                  No software involved.

                  It all depends on how you USE the computer. Software doesn’t have to come into it.

                11. “I used to work with computers with no software.”

                  That’s super. Go back and read my comments and try again. I don’t dispute that some circuits/computers operate without executing code. My laptop isn’t one of them. Neither is the computer you are using to interact with this website.

                12. It is entirely possible to work with any system without software.

                  It just depends on the interface into the system.

                  After all, that is how a new system gets created. The system CPU doesn’t have to be operating, or even involved.

                  The BIOS is just a convenience.

              2. 17.1.2.1.2.3.2

                I’ve been a real software developer and I am infuriated by the ignorance of software developers not realizing how much patents have helped them.

                Your dystopia comes from not having patents where everything becomes a secret and employment contracts force software engineers to agree to draconian non-compete non-disclosure agreements. I signed such an agreement in 1985.

                1. “..software engineers to agree to draconian non-compete non-disclosure agreements. I signed such an agreement in 1985.”

                  Such non-compete agreements are noxious and should be unenforceable. CA has gained the upper hand in software partly by its hostility to ‘contracts’ of that sort.

                2. So what.

                  I’ve signed them as well.

                  What was I paid to do?

                  Maintain open source applications for the DoD.

                  Administer non-patented operating systems for Supercomputers (at the time they were all UNIX – no patents around, Current supercomputers are all Linux based – no patents around).

                  What were the NDAs for? Proprietary software – guess what, still no patents.

                  My first industrial job? Writing, maintaining navigation systems. No patents whatsoever, except those on hardware.

                  So you have no idea what is actually done in the industry.

              3. 17.1.2.1.2.3.3

                Jesse. Everything tangible is comprised of sub-atomic particles. You seriously can’t be this obtuse.

                I know this may come as a shock to you but atoms are comprised of sub atomic particles. Also just in: sky is blue and water is wet…

                1. You may be surprised, but you can’t build with subatomic particles. They fly apart…

                  You start with atoms.

                2. No one is arguing about whether you can build with something or not. That is not the test for patentability.

                  The point of the discussion is that everything on one level or another is abstract if pushed to the point of absurdity.

                  Drawing arbitrary lines in an effort to define an “abstract concept” is an absurd process that is practically, logically, and philosophically unworkable.

                  Do try to remember the actual topic of this website and the thread.

          2. 17.1.2.1.3

            I submit that the open source movement’s wanting to “be able to implement math functions” is no more an argument for or against patentability of machines functioning with use of software and hardware than

            an “open aviation design engineering” movement’s desire to be able to design aircraft without worrying about eventual infringement is an argument for or against patentability of actual airplanes.

            Both are simply irrelevant.

            1. 17.1.2.1.3.1

              I will admit one distinction between a “coder” and an “aviation design engineer”…

              although both may be hired by multi-billion dollar corporations only one of them is not drowning in Kool-Aid.

            2. 17.1.2.1.3.2

              No.

              One is building an actual mechanism that exists with physical reality…

              The other is just manipulating symbols.

              When you confuse symbol manipulation with reality, it is called “magic”.

              1. 17.1.2.1.3.2.1

                Functioning computers (as well as aircraft) exist and function/act in physical reality. To assert that anything of either of them somehow “exists” in something other than physical reality is errant Mysticism.

                When you confuse the symbol manipulation used specifically in the process of **designing** both physical systems with the physical systems themselves, you confuse cause and effect: the actions which contribute to creating the thing is not the thing itself.

                A confusion of this kind is called a “logical fallacy”.

                I would have been interested in your thoughts if you were interested in thinking.

                Really, jesse, I would have at appreciated the discussion if I knew you were at least honest in the attempt, but now I unfortunately suspect otherwise.

                1. Symbol manipulation does nothing in reality.

                  It requires an interface to translate the symbols…

                  Whether that be a pen, or a printer.

                  Symbol manipulation cannot do anything – even from inside the computer.

                  And confusing that with reality is still called “magic”.

                2. “Symbol manipulation does nothing in reality.”

                  So the question for you then is does the computer controlling a human unflyable F117 fighter aircraft perform symbol manipulation or does it fly an airplane in reality?

                  Do you claim that the computer implemented algorithms which actually do fly an airplane are nonexistent? Or that they are ineffectual and it is the “belief” of the pilot that keeps the plane in the air? What is flying the plane… and how it that NOT part of reality?

                  You are incomprehensible sir. Your logical fallacies multiply….

                3. The autopilot is specifically made to control the aircraft. The software is still symbolic processing.

                  What makes the difference between the computer and the autopilot is the translation to/from the symbols used. That part is what makes the autopilot…

                  BTW, the software is only doing 3D trigonometry (could be called 4D, as it includes computations with measures for time).

                  Otherise it is just called a flight simulator, like those used in games.

                  BTW, I wrote navigators… Mine were for controlling seismic survey vessels. But occasionally, they were used in aircraft.

                  So how did we do it? We worked on general purpose computers (PDP-11s at the time).

                  How were they converted for use as an autopilot? – slid the unit into a rack. Then we plugged the ships control cable into our interface.

                  Change to the general purpose computer? added a couple of special purpose interfaces. – GPS (serial line, standard interface), microwave ranging interface (our patented sauce, connected via a 4 unit parallel interface), and a parallel interface (a standard part).

                  Was it still a general purpose computer – yes. We had to make no changes for that.

                4. “Do you claim that the computer implemented algorithms which actually do fly an airplane are nonexistent?”

                  The algorithms don’t fly the plane. They can’t.

                  What does fly the plane is the interface doing the translation from numbers to the control signals sent to the control surfaces.

                  The algorithms work just as well without the interface… The airplane can fly without the algorithms (the pilot will be performing the algorithm).

        2. 17.1.2.2

          Read the law sometime. “Nor do they want their implementation artificially restricted and claimed by another.”

          That’s against the law and has never happened. It would make a nice story if it had happened, but fortunately, it’s an outright lie.

          1. 17.1.2.2.1

            Yes, it is against the law. But it has happened.

            That is why the busybox authors took them to court.

  2. 16

    Dennis, the obvious problem here is that the claim is functional at the point of novelty: it presents the idea of a DNS providing some indication that it can provide a secure communications link without any other details of what that it is, or how it is accomplished. Thus, any security at all (including anonymity according to the construction revised by the Federal Circuit) is covered even though the specification may have taught only one specific type of secure, anonymous, communication.

    Regardless of legal theory, whether 101 or 112, this claim has to be declared unpatentable due to its scope.

    Given the Supreme Court’s repeated citation to Rubber-Tip Pencil, an idea without any detail presents a 101 problem. However, I would prefer that the problem be treated under section 112, per Morse and the cases that follow it through Wabash Appliance, and Halliburton.

    However given the current attitude by many that a simplified procedure be accorded defendants to defend against overbroad patents, it is perhaps better to address these things under section 101 in a motion to dismiss on the pleadings.

    1. 16.1

      > functional at the point of novelty

      There is nothing wrong with this as long as it is enabled. But, I think your post is the best post I’ve ever read of yours.

    2. 16.2

      Reading the IPR proceedings, PTAB was distinctly confident that every claim from every patent in suit was invalid under §102 and occasionally §103. I don’t think they see §101 and §112 as necessary at all in this case.

      Apple was hoping to get a small enough damages amount that they could finish up without waiting for the appeals of the IPR, but they’re going to win the IPR eventually. That should be a happy outcome for Apple and the patent system.

  3. 15

    Dennis: I agree with you that it seems like 101 should be timeless, i.e., the types of things that are ineligible now should have also been considered ineligible 50 years ago and will still be considered ineligible 50 years from now.

    That’s an easy trap to fall into. Unfortunately, it ignores the practicalities of applying any workable subject matter eligibility test to the sorts of claims that attorneys will write.

    the reality is that, under the SCT cases, eligibility is not timeless. Rather, we’re looking for inventive concepts as part of the analysis.

    As it must be. There are no “magic words.” There are no “types of things” that are eligible just because a word describing that “type of thing” appears in the claim.

    A simple example should suffice to explain why this is the case (I’m happy to provide more — just ask!).

    Consider a typical book. At one point long, long, long ago that book could have been claimed as a new apparatus, in objective structural terms to distinguish it from apparati in the prior art. It seems highly unlikely that a serious challenge to that claim’s eligibility could be raised. Likewise with any new information-storage apparatus described in objective structural terms that distinguish it from the prior art.

    But once that “book technology” is disclosed, neither the patentee nor anyone else can “evergreen” the technology by reciting otherwise ineligible subject matter that “improve” the “book technology” by making it more useful (e.g., printing new and incredibly useful cancer-curing information onto the pages of the book). Such a practice would effectively afford patent protection to the information itself.

    The same analysis applies to the similarly old “technology” of a ball-point pen, which was certainly patent-eligible at one point and was, in fact, patented following a disclosure of its new, distinct objective physical structure. Once the pend is in the public domain, you can’t get a claim to a method of using that pen to communicate some particular new non-obvious information. It doesn’t matter that you’ve recited a “type” of machine that is ineligible. More accurately: it must and can not matter unless you wish to completely nullfiy the subject matter eligibility requirement.

    Plainly, the recitation of a similarly old invention of an electronic programmable computer does not and can not automatically confer eligibility to a claim for the identical reasons set forth above.

    Note that these “hypotheticals” are not unrealistic. On the contrary, applicants and patentees have tried to protect information by reciting “old technology” (this term is something of an oxymoron in the patent context; is there a better one?). Most recently and infamously, a patentee accused a competitor who used old technology of infringing their claim because the competitor thought about the data obtained using that old technology. That case, of course, was Prometheus v. Mayo and the unanimous 9-0 decision was predicted, sought for many years, and welcomed by many.

    1. 15.2

      Here is where your old book and new printed material example falls flat on its face. How does the new printed material (static information) cause or configure the book (another static object) to: automatically open when the reader approaches, highlight words on a page, annotate the document, translate the document into another language, and so forth?

      1. 15.2.1

        Bluto, how does configuring a GP digital computer cause it to open when approached?

        Your examples have nothing to do with programmed GP digital computers. They are all examples of larger machines enabled by a computer.

        As such, you are giving us strawmen arguments to support using a computer to calculate numbers as patentable subject matter.

    2. 15.3

      MM

      You refer often to “objective physical structure” in the claims. What do you think of “means plus function” claims for tangible “industrial” machines (say from the industrial revolution era)? Are those claims valid or do they recite “functionalities” devoid of objective physical structure?

      If so or if not, why?

      I am genuinely curious as to the principles you are applying when you refer to your concept/test: “objective physical structure”.

    3. 15.5

      I will try this again to get through the filter.

      Your book example is not relevant. Does the printed matter on the book cause (or configure) the book to open its cover automatically when a reader is present, or translate the printed matter from one language to another, highlight or tag words with metadata, and so forth?

      These features may be anticipated or obvious, but that is another matter.

    4. 15.6

      So all this has to do with collapsing 102, 103, 112 all into 101 with no evidence and a judge that couldn’t tell you Newton’s laws of physics if his/her life depended on it, how?

    5. 15.7

      Apparatus not apparati is the plural of apparatus in Latin (or apparatuses in English). This is because apparatus is fourth declension.

  4. 14

    Dennis asks whether VPN Software may be patent eligible under section 101. YES. As many of the other commenters pointed out, concerns of other applicable sections may be relevant here, but section 101 is not one of them. We can thank SCOTUS for yet another anti-technology onslaught (Alice) that solves nothing and is virtually impossible to navigate. Now every software claim has a cloud hanging over it about whether it crosses the boundary of abstract into “something more.” Could not be more disappointed in SCOTUS’ baseless and dangerously hostile holding in Alice.

    1. 14.1

      Now every software claim has a cloud hanging over it about whether it crosses the boundary of abstract into “something more.”

      “Even software”?

      Claims reciting non-technical information-processing “functionalities” devoid of new objective physical structure are just about as “abstract” as you can get.

      1. 14.1.1

        “objective physical structure” ???? What is that?

        So, again, what exists without physical form and structure? Apparently according to the antis software. It exists only in the ether and spiritual world of thought. You see medieval thinking.

        Now, once they admit it exists from being shamed then they deny the structure and/or functional relationship to the GPS and/or the equivalence of hardware/software/firmware.

        1. 14.1.1.1

          “objective physical structure” ???? What is that?

          Physical structure described in terms that are objectively understood (in physical terms) by people skilled in the art. There is nothing at all radical or controversial about such a requirement. Applicants have been claiming their inventions using such terms since, well, forever.

          Such a requirement “confuses” proponent of software patents because proponents of software because — thanks to some misguided court decisions and a PTO desperate to coddle its “clients” — they believe they are entitled to claim their “manufactures” by reciting only the functionality conferred by the software, in the complete absence of any novel objective structure.

          what exists without physical form and structure

          Abstractions.

          We’re talking about patent claims and what the claims protect, by the way. We’re not debating whether a CD is “a physical object.” It’s an important distinction that you need to remember if you want to have the conversation.

            1. 14.1.1.1.1.1

              except it is not a requirement, you mean, right?

              No, I don’t mean that at all. The reciation of new objective physical structure in an apparatus, device or composition claim is a requirement if you expect to be able to enforce your patent against an intelligent defendant who understands patent law.

              I’m infringing your functionally claimed software patent on a medical database right now. Come get me.

              We’ll go to the Supreme Court and you’ll find out what’s required and what isn’t.

              1. 14.1.1.1.1.1.1

                “The reciation of new objective physical structure in an apparatus, device or composition claim is a requirement”

                hardly

                patenting methods of using known drugs for new uses/treatment is a staple of US law

                you know, wow! kind of like using a “known” computer to do a new function !

                but maybe that’s too big of a leap for anyone who doesn’t understand computers

                the only difference between pharma/biotech and software is the investment cost required to invent – that is why the Googles and other IP thieves hate SW patents – b/c the law levels the playing field so even the little guy without the lab can be paid for his/her innovations in certain fields

                1. What “leveled” is the little guy because he can’t affort 5-15 million in any form of patent suit.

                  And it doesn’t even matter if his patent is valid.

                2. patenting methods of using known drugs for new uses/treatment is a staple of US law

                  I wasn’t referring to method claims. I’m happy to have that discussion, as well, however.

                  you know, wow! kind of like using a “known” computer to do a new function !

                  It’s actually very different because of the evidence required to obtain an enforceable claim to such a method. Perhaps you’ve noticed, JNG, that there are very, very few chem/bio patent attorneys out there trolling pharma companies in their spare time by filing claims directed to new medical treatments using old drugs. Did you ever wonder why that is the case?

                  maybe that’s too big of a leap for anyone who doesn’t understand computers

                  The insults really aren’t necessary, JNG. Particularly in your case, I don’t think it’s wise to accuse others of not understanding computers.

                  Googles and other IP thieves hate SW patents

                  Smearing people who disagree with you isn’t really the kind of discussion we’re looking for here, JNG.

                  But let me know if you are desperate to have it and I’ll ask Dennis to open a thread just for you and me to discuss your wonderful adventures in this area.

                3. Can someone remind me again: is MM a patent attorney wannabe litigator imitating Lemley, or Lemley imitating a patent attorney?

                4. is MM a patent attorney wannabe litigator imitating Lemley, or Lemley imitating a patent attorney

                  I can answer that for you: neither.

                  Lemley and I don’t agree about everything.

                  That said, the comparison is flattering as he seems to be a very well respected and competent litigator, not to mention a thoughtful and articulate communicator of ideas about the patent system and how it should work.

              2. 14.1.1.1.1.1.2

                You just added the word “objective” because you know you can’t win on the physical structure term.

            1. 14.1.1.1.2.1

              respect what the law actually is

              Whatever you believe the “law actually is”, it’s changing under your feet very rapidly because the patent system is broken.

              Now is really not the time to “respect what the law is” but rather it’s time to “respect the best argument about what the law should be.”

              Or you can just stand there waving your “Respect the Way the Law Is!” sign while the bulldozer of history runs over you.

                1. Ned,

                  I respect the Constitution above the Supreme Court.

                  Show me where the Supreme Court is authorized to write patent law under 101 and then we can discuss what respect and following should happen.

                  After that, let’s just for fun check the oath that a lawyer in California takes and see if the ultimate fealty is to the constitution or to the Supreme Court.

                  We both know what the answer is, don’t we?

                  And respect due does not come from unauthorized expressions of law writing.

                2. I thought it was

                  “Section. 1.

                  The judicial Power of the United States, shall be vested in one supreme Court, and in such inferior Courts as the Congress may from time to time ordain and establish.”

                  Thus giving the Supreme Court the power as the final interpreter of laws.

                3. Anon, we have been through this before and you have not addressed the issue of presenting a strawman type of argument.

                  You say, “write.”

                  Asking where the Supreme Court got the authority to write patent laws is tantamount to asking someone when did they stop beating their wife.

                4. jesse,

                  Your legal thinking is incomplete in a number of critical dimensions.

                  While I have attempted to have this conversation several times now, let me point out two thoughts for you to consider:

                  1) interpretation is not the same thing as writing the law

                  2) judicial power may be invested in an inferior court of Congress’s design and the US Supreme Court does NOT have universal original jurisdiction and it is well known that Congress can craft a court that is not subservient to the Supreme Court.

                  What seems to be missing here from an understanding of the separation of powers doctrine and the checks and balances that flow from the Marbury case is that the notion of judicial review is NOT the sole domain of the Supreme Court.

                  There is a decidedly unhealthy notion that the Supreme Court can do NO wrong.

                  That is just not so.

                5. On the contrary Ned, this issue is anything BUT a strawman.

                  Why do you put the word (“write”) in quotes?

                  You appear to not want to address the issue I put on the table, and merely want to hand wave it away by labeling it a “beat your wife” type of question.

                  You have no basis for doing this.

                  Please engage the conversation. Please do not mischaracterize this as a strawman.

                6. And what part of “one supreme Court” did I miss?

                  Interpretation of existing law is not writing new law.

                  It is also within the purview of the Supreme Court to rule when any case from a lower court is brought to it, and it chooses to review.

                  So if you don’t want it to interpret things, don’t bring the case to the Supreme Court.

                7. And they can do wrong…

                  That is what impeachment is for.

                  They can also make mistakes… Which usually get corrected by a later court ruling.

                8. anon, just so you know, you have begun again to snipe at me and at others. I have begun again to ignore everything you write. That is the only way I can tolerate posting here.

                9. On the contrary Ned, there is no sniping at all here on my part.

                  I have politely asked you not to mischaracterize a very real issue and engage in a meaningful conversation. Instead, what I am seeing is more of the old tactics, including now the ‘fake umbrage.’

                  I do not appreciate your avoidance of a meaningful discussion.

                  It is abundantly clear that you do not want to recognize that the Constituion and not the Supreme Court is what attorneys swear their fealty to.

                  I cannot understand how you want to turn this fact into some type of sniping.

      2. 14.1.2

        MM

        What do you think about “means plus function” claims for tangible “industrial” machines (say from the industrial revolution era)? Are those claims reciting “functionalities” devoid of objective physical structure?

        If so or if not, why?

    2. 14.2

      NJ, to the VPN question yes, I would agree.

      To this CLAIM, I say no. It simply claims a result.

      WAY, WAY TOO BROAD.

  5. 13

    Apple has a lot of patents in this general technical domain. They probably have given careful thought to whether it makes sense for them (on a macro level) to attack these patents under 101. If these patents are invalid under 101, a lot of their own portfolio is also likely invalid. They might regret challenging these patents under 101, if they chose to do so.

    1. 13.1

      Yes, Commentariat, this is a very important concern and one that has cost Apple and Microsoft quite a lot of money, probably billions, over the years in litigation.

    2. 13.2

      Commie, Live by the sword, die by the sword?

      Perhaps Apple’s patent counsel should intervene and ask its patent attorneys obtaining patents to confine their claims to patentable subject matter and to stop claiming at a too high a level of abstraction if in fact that is what they are doing themselves.

  6. 12

    In the 80s I used multilevel secure computer environments in which the full host name could include an indication of the security level of the host.

    As I vaguely remember, the Name Service was partitioned across the multiple security levels, and a process could not get the address of a host running at a higher security level.

    The idea was old back then and goes back to Multics, which was first conceived in 1964.

    Computer Scientists that remember Multics often point out: Those that don’t know Multics are doomed to reinvent it.

    1. 12.1

      To my mind that is one of the tragedies of what is going on now. The SCOTUS moves us further and further from objective criteria to evaluate patent applications, which makes it very hard for the PTO to improve quality.

      For example, TSM was the right way to go. TSM could be even outsourced.

      And all this focus on 101 is just legislation that creates trouble.

      1. 12.1.1

        That makes no sense. A ridiculous test that requires examiners and judges to lobotomize themselves when analyzing claims is supposed to improve patent quality?

      2. 12.1.2

        This is a very important point – we need to have tests that the USPTO can administer. I would quibble that – at times – more objective does not mean more administrable. What we would like is a test that is relatively easy and cheap to administer and that provides results that are accurate, repeatable, and able to be explained.

        Regarding 101, I think it is important to remember that the MoT test remains an important clue to patent eligibility and that test at least is fairly administrable.

        1. 12.1.2.1

          As Ned refuses to discuss, perhaps you will.

          What is the legal difference between a clue and a requirement?

          We have had the Supreme Court denigrate MoT effectively by first telling us that MoT is not even required (Bilski), and then telling us that MoT is not sufficient (Prometheus).

          Are we forgetting that MoT was met (as a clue) in Prometheus?

          Much like we seem to want to forget (the polite way of saying something else) that the Supreme Court is NOT using “statutory” – the Ned-script for ‘statutory category’ in its Alice 101 analysis, we should not allow ourselves to play games with words like “important clue” and place more importance on clues rather than on the direct words that Congress explicitly chose to use.

          1. 12.1.2.1.1

            Are we forgetting that MoT was met (as a clue) in Prometheus?

            You are incorrect. The Supreme Court held that the claim in Prometheus failed the MoT.

            [I]n stating that the “machine-or-transformation” test is an “important and useful clue” to patentability, we have neither said nor implied that the test trumps the “law of nature” exclusion. That being so, the test fails here.

            1. 12.1.2.1.1.1

              NSII,

              Please take a closer read at the passage you cited. The failure is not that the invention met the status of the clue, but rather that the clue having been met, still does not rise to the level that the Court wants for patent eligibility.

              You have provided a citation that proves – not disproves – my point.

              Thanks.

              1. 12.1.2.1.1.1.1

                anon, the passage seems to say “the test fails” and “the test” is the MoT.

                1. NWPA,

                  Look again – what is failing is that the successfully passed clue fails to overcome the Judicial Exception.

                  MoT not sufficient.

                  This is decidedly not the same as MoT would be sufficient but just not met. Even as the Court attempts to be muddled with its misdirection of dismissal or somehow placing PHOSITA at some future as of not yet invented way of reaching a state without transformation, in the end they simply state that regardless of any of that, the mere clue (clearly not a requirement no matter how hard one attempts to spin) is no match for the Court’s implicit writing of their exclusion.

                  They are most definitely NOT saying that if the clue had been met the outcome would have been different.

        2. 12.1.2.2

          I think so too Dennis. And I think that the Fed. Cir. was in touch with that and was trying to create rules that would work for 600,000 patent applications a year—not 4 or 5 a year like the SCOTUS examines.

          Also, before when a patent was invalidated under 103 using Graham and TSM, then egg was on the examiner’s face. They clearly failed at their jobs. Now, it is at the whim of the judge. There is no shame in granting a patent that is invalidated under Alice.

          Moreover,****and under all the noise of this board this is one of the most important points ****: About 10 years ago almost all the rejections I would deal with were TSM. It created a good framework to debate the patentability of the application with examiners. And, the examiners would be made fools of if a SPE found a reference after allowance or before an interview (or at appeal.) Now, the examiners just tell you what they feel. Just like the judges. Total rot.

          TSM should be the core of the PTO. (And fixing examination is the key to fixing all the problems.) That is one reason Lee is such a terrible choice. And, with modern technology examination should be getting easier and easier. And with TSM there are lots of chances to outsource.

          Also, a paper would be to look at the basis for rejection in patent application before and after TSM was overturned. Like look at 2004 vs. 2014 and what was the basis of rejection for a 103.

          1. 12.1.2.2.1

            Another thing that is lost among the anti movement is that real patent attorneys want better prosecution. The better the prosecution the more our jobs are valued and better patents are at promoting innovation.

            To my mind what has happened is the PTO had lots of problems and rather than fixing them the courts and Congress have decided to eviscerate the system.

            1. 12.1.2.2.1.1

              Another thing that is lost among the anti movement is that real patent attorneys want better prosecution. The better the prosecution the more our jobs are valued and better patents are at promoting innovation.

              That’s not “lost” on anybody as far as I can see.

              Can you clarify for everyone what you mean by “real patent attorneys”?

              Sounds like just another one of your gratuitous insults.

              1. 12.1.2.2.1.1.1

                “Real patent attorneys” Well, Lemley calls himself a patent attorney and yet has no registration number and does no prosecution. See interview over at Gene’s with Lemley.

                1. no registration number and does no prosecution.

                  Pretty sure when he calls himself a “patent attorney” (assuming he ever said that) he means “patent litigator.”

                  We all know that you despise Lemley but it goes without saying that he has a deep understanding of patent law and our patent system. I think his credentials as an attorney are established beyond any doubt. Presumably that’s why Q interviewed him.

          2. 12.1.2.2.2

            I agree with you. At least with TSM, you could create an argument the Examiner was wrong. Now, the Examiners can take two completely different systems and combine them without regard to whether one skilled in the art would ever do this (they wouldn’t). If my argument is that two references should not be combined, I lose now basically 100 percent of the time. With TSM, at least I could win those.

            The same could be said for the problems being solved by the references and the invention. The Supreme Court got rid of this test, but I run into rejections all the time where the problems being solved by references are completely different. Unfortunately, the Supreme Court got a case where it looked quite simple that the references could be combined. In electrical engineering, it’s not nearly as clear cut.

        3. 12.1.2.3

          I’m not sure that the “machine” part of the MoT test is valid after Alice. Consider the following:

          An apparatus comprising:

          a processor and a memory containing program code, the processor, in response to execution of the program code, causing the apparatus to perform at least the following:

          subject matter to an abstract idea that takes input data and makes output data; and

          outputting the data.

          To me, once the “abstract idea” is set as such, then nothing a modern computer system does is “significantly more” than implementation of the abstract idea.

          The “abstract idea” could be a filter, an encryption algorithm, a modulation scheme, an error correction technique, you name it. It doesn’t really matter.

          At one time, you could make a “machine” (whatever that is — note the caselaw definition of a machine isn’t very concrete), eg, by adding inputs and outputs and perhaps other hardware.

          Now, once something is “abstract”, unless the “machine” is not a general purpose computer (of which there are many, such as a smartphone), the claim is invalid.

          I guess you could get something under the “transformation” prong, but that is incredibly limiting. For instance, I’ve been practicing for too long now, and rarely see anything meeting that prong, except maybe semiconductor processing. Most of what our clients do is related to taking input data, manipulating it, and creating output data. The output data is useful, the techniques are new (thereby in my opinion meeting 35 USC 101), but they aren’t really new “machines” per se.

          1. 12.1.2.3.1

            Oh yeah, I received a call from an Examiner. They are withdrawing a case from allowance. The Examiner stated that the previous claims were valid (according to him) under the MoT test, but the claims are not valid under Alice.

            So even some at the PTO believe the MoT test is overruled by or invalid/meaningless under Alice.

            1. 12.1.2.3.1.1

              That’s a problem. Of course, the MoT test as explained by the Federal Circuit is not a nominalist approach. Thus, inclusion of a computer into the claim does not mean that the claim passes the test.

              1. 12.1.2.3.1.1.1

                Dennis, even the inclusion of subject matter that passes the MOT is not sufficient if it is old and conventional and unmodified by the novel subject matter — Mayo v. Prometheus.

                Good to see that you have adopted my nomenclature (nominalism) for the thoroughly repudiated In re Benson approach that simply reciting otherwise eligible subject matter in a claim is not enough.

        4. 12.1.2.4

          Dennis, I have broached the idea several times, and a certain well known author of the government briefs in Benson and Flook, the very person who recommended the MOT to the Supreme Court in Benson, has agreed, the MOT should be used to shift the burden to the applicant/patentee.

          This would not make the test conclusive, but highly useful. I think the Supreme Court would concur.

          1. 12.1.2.4.1

            One problem Ned is that 9-0 (twice) the Supreme Court did not agree with your view of MoT.

            I am not sure why you seem to have so much difficulty with incorporating this fact into the discussion.

            1. 12.1.2.4.1.1

              But, anon, they did indeed suggest that the MOT, as clarified in Prometheus, was an important and valuable test. A claim that fails the MOT has never been held eligible. A claim that passes the MOT, as clarified in Prometheus, has never been declared invalid under 101.

              I see nothing wrong in using the MOT to extablish a prima facie case and then shifting the burden to the applicant/patentee to justify why his claim should nevertheless be eligible.

              1. 12.1.2.4.1.1.2

                Please see my post above and let me know when you are ready to discuss the legal difference between a clue and a requirement.

                And if you want to establish some NEW law, may I -without snark- suggest that any change be put through the legislative process.

    2. 12.2

      This is the type of argument that seems to mislead so many people.
      “This technology existed long before they filed the application; therefore it’s not patent eligible.”

      But that’s not what 101, subject matter eligibility, is about at all. If the technology has existed, then you’re looking at obviousness or novelty, not subject matter and/or abstract idea .

      In this particular application, yes, i agree, this patent should not be patentable, but that’s not because of its subject matter – that’s like saying if you were indeed the first person to come up with this, you don’t get to file a patent. Instead, this patent should have been invalidated because it’s obvious based on existing technology, as you have mentioned above.

      Another way to look at it might be, 101 rejections should be timeless – no matter when the rejection is raised, it should be a valid rejection based on the subject matter of the invention. 102/103 rejections are NOT timeless, because it depends on a prior art that occurs prior to your filing / conception.

      1. 12.2.1

        clsmooth – I agree with you that it seems like 101 should be timeless, i.e., the types of things that are ineligible now should have also been considered ineligible 50 years ago and will still be considered ineligible 50 years from now. However, the reality is that, under the SCT cases, eligibility is not timeless. Rather, we’re looking for inventive concepts as part of the analysis.

        1. 12.2.1.1

          I agree with you Dennis – I’ve been looking at these comments from the Judges and trying to give them the benefit of the doubt in terms of how they seem to fundamentally ignore the difference and purpose between 101 and say 103. On the one hand, a “law of nature” is… IN the prior art so to speak, and therefore implicates both 101 and 103 analyses. Their new discussions about “abstract ideas” as off-limits, and looking at old prior art for 101 purposes, can be seen as an “extended” law of nature if you will, in that certain man made “inventions” (hedging for example) acquire the same status over time.

          Add on top of this the fact that their brains get polluted with nonsense like “this patent preempts this entire field” and one can understand their reaction. The truth is, as anyone who has practiced in the field knows, barring a standards implementation, there are almost no patents in the electronic/sofware arts that cannot be worked around. Thus the demonization of computer patents as preempting all uses of an idea is particularly indefensible.

        2. 12.2.1.2

          I agree with you that it seems like 101 should be timeless

          Person A invents the book.
          Person B “invents” telling a specific story with the book. He modifies the book by putting words in it.

          B’s claim has limitations directed to a) the book and b) the words.

          Why is the recitation of the book enough to surpass 101? That is clearly not what his invention is directed to – his invention is directed to the words. The fact that he is reciting a book as happenstance to get at what he is really claiming.

          Now replace book with “DNS system” and words with “an indication of secure connection” and you have the claim above.

          This is totally in keeping with the law, as the only thing B claims to have invented was a printed matter (non-eligible) improvement on the book. The structure of the book, when first invented and claimed was statutory. The structure of the book cited as a medium upon which to claim words, is not. If the opposite were the law, you could simply expand any system to include a building (clearly a concrete thing) and any act would still be eligible so long as you did it indoors…

          1. 12.2.1.2.1

            Either i’m misreading your comment or you’ve misread Dennis’s comment.

            What I mean by timeless is this: if Person B’s invention is patent eligible subject matter before Person A’s invention, then theoretically it should be patent eligible s.m. after Person A’s invention as well. You may very well respond, “Well, before Person A, Person B’s invention is eligible because it has the book in it; after Person A, Person B’s invention is ineligible because the words aren’t eligible.” Well, maybe, but you’ve just done a 103, not a “subject matter eligibility” that you claim to have done.

            I’m not proposing that this particular patent should have been granted or is even eligible s.m. All i’m saying is that the analysis used to say that this invention is ineligible is baloney.

  7. 11

    The claim wording seems to me to be simply intended functionality (or if you prefer, desired results). Am I the only one who was taught in my first days of patent agent training that intents are not patentable ? I am sure there is case law regarding intents…

    1. 11.1

      This (“configured to do X”) is one of those cases that falls in between intended use and positive recitation of a system actually performing a step. Phrases like “adapted to” or “capable of” fall on different points along that spectrum.

      The idea of “configured to do X” is supposed to be that you don’t have to prove that an infringer ever turned on a potentially infringing device in order to prove infringement, and it also helps to ensure that the claim is phrased from the perspective of a single actor (the apparatus in question).

      Currently, we frequently interpret these limitations as invoking 112(f), much as a “means for doing X” limitation would be. In this particular case, that’s a little bit fuzzy, since there’s only one claim element, and 112(f) requires claiming a combination of elements.

    2. 11.2

      The claim wording seems to me to be simply intended functionality (or if you prefer, desired results).

      That’s exactly what it is.

      It’s another reason that software patenting (and functionally claimed hardware patenting) is in for a serious knee-capping.

      And, like much else, the claims are so egregiously “out there” that the issue can be approached from a 101 perspective (“functionalities” aren’t eligible subject matter) or from a 112 perspective.

      The hits are going to keep coming and coming. That’s why it’s odd to see the proponents of these types of claims trying to rearrange the deck chairs.

      This is a squeeze play. The inevitable ending can be delayed and it may excite the crowd for a moment or two but … it’s still inevitable.

    3. 11.3

      Luke, I agree with you that claim’s point of novelty is simply a result.

      The claim should be struck down under 101 or 112.

      112(f) should not be invoked to save it because the structure of the claim is such that the novelty (I assume the DNS secure link is novel) is only in the one element and the rest are nominal. The claim is effectively a single means claim.

  8. 10

    Well, this is disappointing. This case and these patents are famous for being particularly abusive. VX didn’t invent anything at all and no one has benefitted from any disclosure or experimentation they’ve done. The patent was issued in error and covers material where the patent system does not and cannot promote progress of the useful arts.

    Software writers don’t want VX to be rewarded for their abuse of the law here.

    And this case was decided by Prost and Chen, two of the judges that we usually hope to get some kind of sanity out of. I haven’t read the decision yet, so maybe Apple’s litigation position was silly — they probably didn’t even bring up §101. One story implied some kind of IPR going on so maybe some of the most conclusive §102 material from Apple’s case is stuck in appeals at the PTO and didn’t get presented at CAFC.

    The opinion:
    link to cafc.uscourts.gov

    1. 10.1

      Owen you say they didn’t invent anything. So I wonder whether they got to issue at the EPO. I wonder because, like other commenters here, it looks like it’s within the EPO’s “technical” area.

      Sometimes the EPO’s “characterized by” claim structure can expose the paucity of novelty relative to the realistic starting point within the prior art (D1). When one divides the claim correctly, listing all that is in D1, then the linking words, characterized by, then what’s new, you can find that all that’s new is “automatic” or “flexible” or “thin” or some other nonce word.

      In my experience, US attorneys can get quite aggressive, when faced with such a demolition of their carefully crafted claim.

      So did they get something useful out of the EPO? Anybody know?

        1. 10.1.1.1

          I agree that the US is moving in that direction.

          Certain theories out there predict that the EP will quickly become the center of world for software innovation, while software innovation in the US will stagnate and drag the entire economy down with it.

          It’d be nice to test those theories as many of us are deeply skeptical of them, to say the least.

          1. 10.1.1.1.1

            Another theory, of course, is that the EP and the rest of the world will simply follow the US lead because there are so many great reasons to get software and functionally claimed information processing hardware out of the patent system.

            1. 10.1.1.1.1.1

              I see that as the more likely outcome. I think the EPO has prided itself on being the gatekeeper on software related inventions for the world. I don’t imagine they will give up that role without a fight.

              On the other hand, they may see it as an opportunity to drive business away from the US. Australia saw the open door and walked right through.

              1. 10.1.1.1.1.1.1

                they may see it as an opportunity to drive business away from the US. Australia saw the open door and walked right through.

                Do you have any evidence of a surge in US-owned genome information mining businesses starting up in Australia? Any indication of a lowering in the unemployment rate as a result of Australia allowing claims to “isolated DNA”?

                I’d be surprised if you could find any. The number of biotech companies whose profitability depends on protection afforded by the kind of claims tanked by the US Supreme Court in Myriad was close to microscopic.

              2. 10.1.1.1.1.1.2

                Well you guys have to keep in mind that their law is fundamentally different from our own on this particular sticky point. They’re looking for industrial applicability iirc.

      1. 10.1.2

        I didn’t look at all the amendments and divisionals or find all the applications involved but I looked at four EPO applications listed in the four patents on Google Patent Search. Then I looked them up on epo.org.

        I didn’t find any patents that issued. The EPO generally responds with a detailed statement concluding that the invention “does not appear to be novel and/or involve an inventive step.” Nevertheless, the applicants have paid fees and resubmitted claims repeatedly to keep the applications active. If the EPO is like US practice, they have several more years to continue petitioning for a patent before the terms run out, but three quarters of the potential term have evaporated.

        I don’t agree that this claim passes the threshold of being technical as the supposedly technical material is superficial window dressing for a non-technical method. The EPO seems to prefer to refuse such applications on novelty grounds.

        Of course, the US office is famous for simply issuing software patents without much examination at all based mostly on the quantity of paperwork and obfuscation and that appears to have happened here.

        1. 10.1.2.1

          Oh, and I want to add that the failure of Apple to file a DJ to get their preferred venue instead of waiting for the case to be filed in EDTX is dangerously close to malpractice by the inside counsel. Especially if Microsoft turns out to have been the first target and Apple knew how plaintiff would behave.

          Under 2014 DJ standing precedent, I’d call it a disbarment worthy failure.

          1. 10.1.2.1.1

            This is grossly overstated. Apple’s strong position in IPR gives them confidence to play loose in district court. Perhaps they chose a high risk litigation strategy just to cut proceedings shorter.

            The EPO and PTAB both see Apple’s §102 evidence as very strong and none of these patents are going to last much longer.

            It’s amazing to me to read about the claimed US$200MM that Microsoft paid for a license, but Microsoft has paid for licenses on weak patents before just for the chance to sic well funded trolls on competitors so maybe that’s what happened here. Microsoft’s Skype division has filed more IPRs instead of settling and they won’t be paying any more to VX.

        2. 10.1.2.2

          Thank you very much Owen. Just let me clarify one thing for you.

          At the EPO, it is easy to satisfy eligibility. You just need “technical character”. A digital computer has technical character. The EPO is scrupulous to keep considerations of novelty out of the eligibility determination.

          But for novelty , you need something new on the “technical” front.

          And for non-obviousness, you are required to show “technical” means that solve an objective “technical” problem in a non-obvious way. Solving a problem such as how to trade derivatives (or play Bingo) even more profitably ain’t “technical” (or call it “in the useful arts” if you prefer).

          So, here, I was expecting from the EPO no quibbles on eligibility, but a bunch of objections on novelty and obviousness. You appear to be confirming what I thought would be the case. Thanks again.

          Applicant can continue indefinitely to file divisionals at the EPO, if it wishes, till the 20 year patent term runs out. It’s a nice little earner for the EPO but doesn’t trouble the public because the EPO writing is on the EPO wall, right from the outset, and it’s not going to Change, from one div to the next.

    2. 10.2

      “VX didn’t invent anything at all”

      According to whom?

      “no one has benefitted from any disclosure or experimentation they’ve done.”

      How can anyone take this statement seriously?

      “The patent was issued in error”

      Evidence, please?

      “covers material where the patent system does not and cannot promote progress of the useful arts.”

      Yikes…

      1. 10.2.1

        “According to whom?”

        Just read the claims and spec.

        I was working in the industry when this garbage was filed.

        This blog comment doesn’t have the budget to collect experts for testimony, but if you get a panel of experts from the 1990s and you’ll find they nearly all agree.

        1. 10.2.1.1

          How did I know this would be your response? Forgive my curtness in the past. I’m going to pretend like you aren’t here going forward.

    3. 10.3

      Owen, I would presume the Apple attorneys did not spend too much time on one claim in one patent presented at too high a level of abstraction. I presume there were quite a lot of other claims that actually presented sufficient detail of the method and apparatus as to pass 101.

      Just litigation strategy.

  9. 9

    This claim is what I mean when I say you have to determine what the invention is directed toward. The applicant surely admits he didn’t invent DNS, rather his invention is an improvement to DNS that comprises:

    “to comprise an indication that the domain name service system supports establishing a secure communication link”

    I leave it to you whether you think “an indication that a system supports X” constitutes protectable subject matter, especially considering that I’m sure applicant would admit that actually DETERMINING whether the system supports X was already known as well.

    1. 7.1

      That was pretty much my analysis, though I think mine is a bit more nuanced. The gist of claim 1 is an old machine (server) configured to perform the abstract idea of connecting to a communication network, storing a plurality of domain names and corresponding network addresses, and receiving a query for a network address, wherein an indication that a domain name service system supports establishing a secure communication link, and therefore claim 1 forecloses a poorly defined, yet fundamental, tool of scientific inquiry. I can invalidate any claim for $399!

    2. 7.2

      Les, your hyperbole’s are growing tiresome. We get it.

      I think the problem is abstracting the machine as in Wyeth v. Stone,

      “I claim any machine effective for cutting ice in blocks. ”

      The idea is cutting ice in blocks, but the machinery to do so is what is abstract.

  10. 6

    I’m straying off topic here, but what does it mean that the “domain name service system [is] configured … to comprise an indication that the domain name service system supports establishing a secure communication link”? Sounds awfully vague (i.e., indefinite) to me.

    1. 6.1

      Lookup SRV records – RFC 2782 (dated 2000), which supersedes RFC 2052 (dated 1996). The SRV records allow identification of services associated with a host.

  11. 5

    At first glance it does not appear you can perform and enforce the patent devoid of the technology. So it appears the invention is an Integrated Technological process and therefore statutory.

    On the other hand the invention is clearly within the “Useful Arts” so it passes 101. Move on to 102, 103, and 112. Once congress enacts the Crouch amendment, the patent world will be so much easier and better off.

  12. 4

    Dennis:

    agreed on the characterization of the “abstract idea”

    in the old days, one would call a switchboard operator (domain name service system) who could connect you the telephone network (communication network)

    that operator at her desk had a list of names/numbers (a plurality of domain names and corresponding network addresses) and would receive calls (query for a network address)

    he/she could then also tell you if the could connect you to that other number directly (comprise an indication that the domain name service system supports establishing a secure communication link)

    —————

    I think, however, that this one, like many others of its kind, will skate 101 because it …”lives” in the machine domain, by which I mean, it is directed to machine-machine interactions. There will be arguments like this in the future, I’m sure, to clarify that an activity in one domain (the physical world) is not precluded from being patented in another domain (the world of machines/bits) where it is modified significantly to accommodate/reflect the reality of that environment. My analog is this: bicycles had brakes, long before cars. But that didn’t stop cars from adopting and inventing new types of brakes that borrowed from or incorporated many elements from the prior domain. Today’s emergency brake is not really different from its original form 200+ years ago (…hey, now THERE’s an opportunity LOL)

  13. 3

    I’m not seeing a 101 issue here. This isn’t the typical computer-implemented only “abstract idea” type of claims we have been seeing struck down post-Alice.

    1. 3.1

      A method of organizing computer activity and not a method of organizing human activity.

      If the method were innovative, it could be analogized to Diehr.

  14. 2

    I’m surprised Apple hasn’t raised the issue of scope of enablement here (see In re Hyatt, 708 F.2d 712).

  15. 1

    That is one of the most ridiculous claims I’ve ever seen. It’s entirely circular.

    What limitations were in the “valid” claims?

    1. 1.1

      Please do show us what real invention claims look like in the smelly arts. Funny how once you take a close look at them they don’t look like much either.

    2. 1.2

      Looks to me like an attempt to patent DNS SRV records. (RFC 2782, issued in 2000). This patent appears to be 2008.

      And the rest of the patent appears to try to patent the entire DNS service…

      1. 1.2.1

        Well gee if everyone is incompetent to put together a 103 argument, then let’s just use our 101 power. Just say, nah, I don’t like it. 101’ed.

          1. 1.2.1.2.1

            Dennis:

            At the SCOTUS I think what happened is they looked at this and decided they would create a rule so that any judge can invalidate almost any patent with no external evidence.

            Bilski in particular is a claim to a real system a real machine that was operating. 103 was the proper tool or 112. A judicial exception to a law should be applied narrowly and only when it is absolutely necessary to apply. Here we have judges gone wild.

      2. 1.2.2

        Jesse – I think that the intent here is to add a bit of ‘security’ to the DNS SRV protocol. One important point is that the patent _issue_ date is irrelevant. Rather, the important date here is the application filing date. In this case, the filing date is before 2000.

        1. 1.2.2.1

          The original SRV records are from RFC2052 (1996). The current RFS (RFC2782) is only a slight modification.

          Then the DNSSEC RFC 3833 (2004) which includes encrypted DNS transfers, with signed results. This was not even new as PKI has provided the capability since about 1980 (even the RSA patent expired in 2000), so “secured transfer” was well known. RFC 3833 was just a statement of how to use PKI to secure DNS transfers in a standardized protocol where all the methods were well known, and in use.

          The only “new” thing indicated might be the name of the service…

          The SRV records can easily specify secure services (and do – Kerberos 5 has had DNS service records available since about 1998 for the purpose of supporting secure connections between applications.

          DNS itself has always serviced queries from VPNs. So there is nothing new there.

          Not sure why this patent has a filing date of Nov 18, 2003, where the priority date is Oct 30, 1998 (would this be the original filing date?)

          So to me the RFC 2052 would seem to provide the significant date for any prior art. The rest is just look like obvious derivations, and an attempt to take over an existing internet protocol.

          1. 1.2.2.1.1

            Thanks jesse. I appreciate your technical expertise here. The critical date for prior art is that priority-date (October 30, 1998). There needs to be evidence that the document or knowledge was publicly available (published) prior to that critical date. Because patentees can sometimes make use of a one-year grace period the best prior art will have been publicly available (or on file at the USPTO) more than one-year before the priority-date. Thus, for this case, we’d be looking for prior art dated prior to October 30, 1997.

            1. 1.2.2.1.1.1

              So far, the earliest date is RFC 2052 that I find (1996). The stuff for using RSA in general goes back to the implementation of SSLeay which would be in 1995 for the open source version (this was what I started with for securing internal web services for the center I worked for).

              Other prior art for securing networks (including DNS) is covered by IPSec, which goes back to 1993 for the original research.

              If you look at some of the diagrams for 7,418,504, you can see that some of them are almost identical to the packet diagrams for IPSec packets. (At least they looked that way to me). But then, nearly all IP packets are similar…

              IPSec is usually applied with VPNs, but the general case is at the host network level instead of being layered on top of the host network. As such, it can provide a secure path for everything.

              The only problem IPSec has really had is the difficulty in initially setting it up (that is a horrible bugger to deal with), but it has been getting better. That was what VPNs in general did well as the installation of the VPN included setting the configuration, thus “setting it up” was rolled in.

              1. 1.2.2.1.1.1.1

                BTW, one thing that surprised me was that the patent included not references to the RFCs other than RFC 2401 (dated Nov. 1998 RTP) and RFC 2543-SIP (dated Mar. 1999) as showing related activity. All the rest is covered by “configured to” language.

                Nearly everything dealing with internet communications is covered by the RFCs, leaving only application specific implementations. Personally, this particular patent appears to just describe a specific implementation derived from principles and designs already known, just obfuscated enough that no one can implement compatible software.

    3. 1.3

      MM, I see claims like this every, fricken, day. The patent office allows claims like this shows they do not have any effect mechanisms in place to deal with claims like this. Any applicant can and often does flesh out a claim with a surfeit of nominal elements that would be in any apparatus of a given class. The examiners are fooled all the time — and the courts are willing accomplices to the extent they are unwilling to apply cases like Halliburton or Benson and is progeny.

      Needless to say, the defense bar is also part of the problem. They are mostly interested in running up the bill and will resist all efforts by inside counsel at major companies to short-circuit a case and get to the heart of the matter quickly. So long as they win, or better, do not lose, it seems to make no difference how much money they waste. And, it is also true, that inside counsel also like to run up the bill because a larger budget justifies a larger title.

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