Nice Summary of the 101-based “Invalidity” War on Software Patents

Dennis has provided detailed analyses of most of these cases; this article entitled “Software Patents are Crumbling Thanks to the Supreme Court, provides a nice high-level overview, including a very telling chart, summarized thus:

The 14 patents the courts invalidated on subject matter grounds in 2013 was a record for recent years (such decisions were rare in the 1990s and early 2000s). And this chart reflects decisions on all types of patents, not just software patents. With 11 software patents invalidated in just the last three months, the courts are on track to blow away last year’s record with software patent cases alone. So this is the most hostile the courts have been to software patents in at least two decades.

Judge Moore was right in CLS, it seems.  Next industry on the chopping block:  Biotech, in Ariosa (discussed by Dennis below).

172 thoughts on “Nice Summary of the 101-based “Invalidity” War on Software Patents

  1. Is this not all OBVIOUS

    The subject matter invalidation of Alice and subsequent cases seem to me to be misdirected.

    The main arguments seem to be that …if it can be performed by humans without the computer then adding the computer/software doesn’t make it patentable…

    In other countries this is sometimes referred to as “mere automation” and has never been patentable as it’s not considered inventive to merely automate a known process.

    Isn’t this argument really a disguised ‘obviousness’ argument, i.e. I can perform the task without a computer and therefore it would be OBVIOUS to use a computer to automate it.

    All of these cases involve methods that are arguably known or obvious and so why this has not been raised as the primary objection seems odd. It may be that the Obvious argument has traditionally been much harder to succeed on. If this is the case then the question must be asked WHY?

    I don’t believe there is anything inherently unpatentable about software. The problem that the public sees is that inventions of dubious inventiveness seem to be granted and reach the news and they all happen to be for software-related inventions.

    There are plenty of ground-breaking innovations made in software that deserve patents and the public would not object to these if they saw them. Unfortunately, as with all news, only the exceptional cases are newsworthy.

    The problem is not software as patentable subject matter, the problem is that there needs to be more rigour in examination.

    As noted in the comments, it’s difficult to search for prior art software as it’s typically non-visual. Mechanical inventions are easier to search because you have drawings, chem and biotech because you have equations, genetics because you have sequence codes.

    This is not a reason to reject it all. This is a reason to find a better way of searching.

    Can anyone explain why these patents weren’t attacked on obviousness grounds?

    1. None whatsoever. I believe that was why math was supposed to be excluded from patents in the first place. The results are obviously derived from previous results… Simple, rigid, logic.

      No inventive step.

    2. Ashlin, The main arguments seem to be that …if it can be performed by humans without the computer then adding the computer/software doesn’t make it patentable…

      I think you misunderstand — but that seems common to a lot of folk.

      The problem is more related to whether the novel subject matter is statutory and/or whether the novel subject matter, if otherwise statutory, is stated at too high a level of abstraction.

      Economic principles and math are both examples of nonstatutory subject matter. Invention in the claim must be in the otherwise statutory, or the nonstatutory (e.g., math) must be applied to transform (Alice) the statutory into something new or improved.

      When the novelty is otherwise statutory, the claim remains abstract if it is not applied with any specificity. The Rubber-Tip Pencil is case is a good example. A claim for “a new and useful rubber head for lead-pencils” was held unpatentable because a rubber tip was old and the idea of attaching it to the pencils was without any detail.

      1. Ned,

        The point above is that the objections to these particular software patents can all be addressed by arguing the inventions are obvious. You don’t need a separate software exclusion or ineligible subject matter attack.

        In other countries the rubber tip case would be considered a ‘mere collocation of integers each performing their own function’. There is no ‘synergistic effect’ obtained in the combination and therefore not patentable.

        Attaching two things together so they are conveniently located together but each operate independently is not inventive.

        To me that case would have nothing at all to do with subject matter, which is after all ‘mechanical’.

        1. AR, I think there is a similar doctrine in the United States where a parameter is known to be variable within a range without changing the substance of what’s going on in order to accommodate various conditions. This is considered to be obvious. Thus if it was known that the rubber piece could be attached to anything that had a tip because it was naturally elastic, attaching it to a pencil tip would seem obvious.

          One could approach the topic from common knowledge and common sense and arrive at the same result as the US Supreme Court did.

          But legally, it also makes sense to say that the broad suggestion to attach a piece a rubber to the tip of a pencil without any detail on how to do that other than its natural properties is quite a bit overbroad if the claim were construed to cover means of attachment not disclosed and described other than simply pushing the tip into the rubber. In a sense, this is the same problem we encountered with Morse’s claim eight.

          And just suppose, that the specification disclosed shaping the piece a rubber in a manner that it could effectively attach to the tip of a pencil without falling off, etc., then the claim itself would not include the essential structure or methods actually disclosed. This would present a separate section 112 problem where the claim did not particularly point out and distinctly claim the invention.

    3. only the exceptional cases are newsworthy.

      There are literally thousands of these “exceptional” invalid software cases out there. Every Tuesday morning reams more are granted.

      it’s difficult to search for prior art software as it’s typically non-visual.

      It’s typically not recited in the claims is the problem. Only the functionality is recited.

      Can anyone explain why these patents weren’t attacked on obviousness grounds?

      “Judicial activism” turned obviousness into an expensive proposition. On top of that, there is no consistent nomenclature used by computer-implementer types and they appear to go out of their way to invent terms that obscure what they are believe they are “innovating” to the greatest extent possible.

      At the end of the day, they are claiming either (1) logical information processing steps that are older than the hills (in spite of their “new” labels) and which do nothing more than what anyone would expect them to do; or (2) information itself, which is ineligible.

      I don’t believe there is anything inherently unpatentable about software.

      I do and so do a lot of other people.

      1. I don’t believe it is the “computer implementor types” doing that.

        They are much more straight forward in using the language of the art.

        Patents are written in legalese…

        It has been pointed out that if the patents really were supposed to “reveal” the how-they-did-it, then the patent would include the source code used, and/or the exact formula used.

      2. These sound like comments against patents in general.

        e.g. a machine is not patentable because it is no more than joining of nuts and bolts to make a hovercraft. A new cancer drug is no more than taking compounds A +B + C and combining in solution.

        The only difference with software is that rather than physical components/compounds you are using software modules/code.

        Therefore, by your logic nothing should be patentable.

        People don’t think Software should be patentable because

        a) there’s been some software patents issued for trivial inventions. This is a problem with examination process and searching, it is NOT a result of a subject matter issue.

        b) the majority of people use software on a daily basis and therefore feel affected by the patent, as opposed to cancer drugs or a hovercraft which also have patents opposed by those people who want them for free.

        c) it’s similar to the sense of entitlement people have to products of the mind, e.g. copyright infringement of books, movies, music. People have a problem paying for something that’s a result of mental effort, as opposed to physical goods.

        You often hear the argument against software patents that “all software inventions are obvious” or as your comment says, (1) logical information processing steps that are older than the hills (in spite of their “new” labels) and which do nothing more than what anyone would expect them to do”

        If this assertion is correct for a particular case then the invention is obvious and not patentable. You don’t need a separate software exclusion. Simply state that these inventions are inherently obvious.

        Why should software that is not obvious and therefore doesn’t fall within your definition be excluded from patentability?

        1. That is not the problem jesse.

          The problem is that you are not recognizing that applied math** is not excluded from patentable subject matter, and that you are only looking at the elephant blindfolded and holding the elephant’s tail.

          You are also refusing to heed the warnings given to you as to being careful where you step. That is particularly unwise trailing the elephant.

          **for simplicity, I am not even getting into the point that more than just applied math is involved.

        2. The problem you have is not recognizing the math and software are the same.

          It is pure math. It even has math proofs do show that fact.

          You just don’t seem to like it.

          1. Jesse – I think think that you are extending the proofs further than they were meant to go. The software-is-maths proof shows that a software algorithm can be equivalently represented as mathematics – of course that transformation leaves out the physical interactions caused by the software. Many physicists also believe that the entire universe (and anything within the universe) can be represented in mathematical form.

            1. The “physical interactions” are the property of physics, not the math.

              And within the limits imposed by the physics, anything in the universe should be representable… but that mapping is defined by the physics. Not the math.

              My simple example is the measure of temperature and the math of the conversion…

              F = 9/5*C + 32

              Simple formula. Describes a line from -infinity to +infinity.

              Simple math.

              However, the physics of reality say it is wrong. Temperature doesn’t exist below –273.15 centigrade. (There is also an upper limit but that depends on the pressure of the media the temperature is being measured…)

              As an abstract math formula, that is irrelevant.

            2. Now within physics (until quantum mechanics) there is no such thing as a discontinuous function. All physical transformations are continuous.

              Math doesn’t have that restriction. Simple number theory is discontinuous.

              Computers use circuits that emulate boolean algebra expressions. I say “emulate” because the physics of the circuit requires the function to be continuous… Thus the emulation is limited to only certain physical ranges (for the given circuit). That emulation is then used to implement another totally abstract math operation – the instruction cycle.

              Math operations are always discontinuous. There is no such thing as “time”, only sequence – one operation preceding/following another.

              In reality, time is another continuous function. A computer CAN emulate reality… but not fully due to the discontinuous nature of the computations. It can come close… Sometimes close enough to substitute for a mechanism that actually performs continuously. (It happens to be one of the reasons we don’t have reliable fusion at this time – maintaining a stable plasma cannot be done in real time – even though the math CAN describe the situation… Trying to go through all the conversions from reality to math to reality is far, far too slow)

              To me, the thing that separates the math from the physics is the conversion step. The math is independent of the conversion; but reality depends on the conversion to/from the symbolic form that can be used in math.

              Within the computer, everything is just a number. Data, programs, input, output… just numbers. The only way for the math embedded within the computer to interact is by some form of translation.

              That conversion must be done by something interacting with the physical world. And that device is certainly patentable. The keyboards, the display, the analog to digital conversion and the digital to analog conversion (and yes, even the disk drives have such conversion as well). Even the pencil and paper provides an external storage – but what is stored must still be converted to a symbolic form before use, whether that be a computer, programmer, or a mathematician.

              To the computer, the physical conversions are usually referred to as reading or writing. What is done with that data (or where the data comes from) is irrelevant – it is just symbolic data (numbers actually), and that is the realm of math.

  2. Interesting article here by Eli Dourado, who references the Lee article:

    link to cato-unbound.org

    Software patents have characteristics that make them particularly susceptible to litigation. Unlike, say, chemical patents, software patents are plagued by a problem of description. How does one describe a software innovation in such a way that anyone searching for it will easily find it? As Christina Mulligan and Tim Lee demonstrate, chemical formulas are indexable, meaning that as the number of chemical patents grow, it will still be easy to determine if a molecule has been patented. Since software innovations are not indexable, they estimate that “patent clearance by all firms would require many times more hours of legal research than all patent lawyers in the United States can bill in a year.

    This is an important point and right at the heart of the matter. Any reform that allows software (and functionally claimed hardware) to continue to be protected by patents must include (1) a requirement that applicants in these “arts” adopt a pre-determined lexicon for describing, in the claim, the “precise elements” (to coin a term invoked by Dennis Crouch) responsible for the allegedly improved “functionality”; and (2) Examiner’s at the PTO must be given guidance as to how the massive prior art of logical information processing steps (computerized and not) fit into that lexicon.

    1. >>in the claim, the “precise elements” (to coin a term invoked by Dennis >>Crouch) responsible for the allegedly improved “functionality”;

      That is ridiculous. If a person of ordinary skill in the art knows how to write code/design a circuit to perform the function then it should not have to be in the specification.

      So, let’s see according to this nonsense (and notice how they always have this authoritarian tone when making this suggestion and would never provide an actual example in real life as it would render them absurd) I would have to put in all the course work for ee/cs and maybe up to a ph.d. work. So, let’s see how about a patent application that is 100,000 pages long?

      This is another attack on the whole system with these assertions that have no backing in patent law. In fact, these type of suggestions are why patents are so bloated and expensive.

      It is scandalous that people have the audacity to make these types of suggestion. Even in Ned’s favorite Haliburton they did not make such a requirement.

      1. I would have to put in all the course work for ee/cs and maybe up to a ph.d. work.

        No, you wouldn’t.

        If a person of ordinary skill in the art knows how to write code/design a circuit to perform the function then it should not have to be in the specification.

        If the circuit is what you are trying to claim, it needs to be in the specification.

        1. Yes I would.

          “If the circuit is what you are trying to claim, it needs to be in the specification.”

          One of these authoritarian vapid responses. A functional claim refers to what a PHOSITA knows.

          Unbelievable to me that the anti-information processing crowd including Lemley are trying to push this point as if it makes any sense at all.

          So, according to you MM if I claim a door rotatably connected to a frame then I better put in all the possible hinges.

          That is your logic. Ridiculous. Counter to all known patent law principles.

          1. Lemley should say, “I am reality.” Because from what I’ve seen of Lemley he puts a lot stuff out there but does not respond to anyone’s questions.

            This functional claiming nonsense is just beyond believe.

          2. Night, you are not making any distinction between claiming old and well-known structure in a combination claim and claiming new structure.

            Why don’t you start with reading O’Reilly v. Morse in its discussion of Wyeth v. Stone, where in essence, the patentee tried to claim all machines that will cut blocks of ice having invented just one such machine.

            The Halliburton case concerned what the Supreme Court thought to be a functional claim to novel structure. They first identified that there was nothing new in the patent but the new structure disclosed in the specification. All other apparatus was old, and the method disclosed was not new but for the apparatus.

            In this context, the Supreme Court held that the functionally expressed novel element essentially violated section 112 because the patentees had not invented all apparatus for carrying out the recited function. You and I have talked about this in terms of written description support, enablement, or indefiniteness. The Supreme Court really didn’t care which part of section 112 that was the problem, if not all three.

            So please stop trying to divert attention away from the issue by errecting strawman. The functional-point-of-novelty doctrine is all about claiming novel structure not in terms of what it is but in terms of what it does or the result it achieves.

            1. Ned, if the structure is new then you would have to describe.

              That doesn’t mean you can’t functionally claim it. LazardTECH for how claim scope should be policed.

              1. Night, novel structure can be described as a combination of old, well known elements all of which are functionally claimed, or which include functional explanations of otherwise structural elements.

                As I said, the vice occurs only when the claim is functional at the point of novelty such that the combination claimed is really old with the invention lying in the one element and not in any combination.

            1. EXACTLY JESSE!! The patent application should focus on what is new and satisfy the 3 prongs of 112.

              This functional nonsense is fabricated by Lemley.

    2. “chemical formulas are indexable, meaning that as the number of chemical patents grow, it will still be easy to determine if a molecule has been patented”

      So are sequences of 1’s and 0’s but nobody is on board with indexing them, despite their alleged importance.

    3. MM, software as a category is and must remain essentially unpatentable. However, innovations in computer technology, and larger machines, systems or conventional processes might be claimed in terms of the larger machines, etc.

      For example, an improved servo system in a disk drive where the novelty was in an improved algorithm might be claimed as an improved disk drive servo system. This would confine the search appropriately.

      1. an improved servo system in a disk drive where the novelty was in an improved algorithm might be claimed as an improved disk drive servo system. This would confine the search appropriately.

        In theory I can see something like this possibly working if a reliable lexicon and system for claiming and searching algorithms is put in place.

        In practice, I have doubts. And I also predict the same folks who insist that the old status quo was “the only way” will fight tooth and nail against any attempt to set up such a system. That’s not even a prediction, at this point. More like an observation.

  3. The reactions to the Alice decision are interesting to those of us who like to keep track.

    In the immediate (and not unexpected) aftermath, proponents of software patents fell immediately into two major camps: (1) end of the world for computer innovation and massive portfolio destruction with a subsequent shareholder/stockmarket plunge; and (2) “no biggie because Alice is easy to claim around”.

    Now, five to six months down the road, when we can see the first real signs of genuine progress being made in shutting down the “do it on a computer” gravy train (unfortunately no sanctions against the patentees for asserting the patents, but that’s surely coming), the same camps are still around.

    What’s missing? For starters, any evidence of a dramatic decline in the production of new software or improved software, and any evidence of any effect on the stock market. Let me know if I’ve missed an important study somewhere.

    It seems clear now that both of these camps were wrong. There are major and permanent changes taking place and patent law in the US is never going to be the same again, particularly when it comes to software patents, broad medical diagnostic patents on “correlations” and patents on methods of forming abstract relationships between actors and/or objects (e.g., certain business methods and social interaction methods).

    Interestingly, some of the other major legal shoes poised to crush any software patents that might possibly survive Alice have not yet dropped …

    1. “Massive portfolio destruction….”

      Which companies have these massive portfolio’s of business method patents? The people who said this must have someone in mind. It might be interesting to name them publicly that we might know who has an agenda.

    2. “… social interaction methods.”

      If correct, 100+ of Facebook’s patents (and pending patents) would be effectively wiped out.

      Is that what you want MM?

      Might that not affect that company’s stock price / value?

      1. not likely.

        Facebook is oriented on people interaction. The patents are more just there for defense purposes.

        Facebook is more likely to fail due to poor handling of privacy and PR.

  4. “Next industry on the chopping block; biotech.”

    Well said. You should care what the rules are, because it could be your ox that gets gored next.

    1. My guess is that the SCOTUS very much would like to eliminate 99.9% of patent. They think that only patents to something like a t.v. or telephone should be eligible for a patent. Their view of technology is from Disney movies. And they have zero understanding of science.

        1. I think what he was busted for is planting seeds that he believed to have the glyphosphate resistant trait, spraying the fields with glyphosphate, and replanting the next year with glyphosphate resistant corn. But what do I know; those are just the adjudicated facts.

          1. “is planting seeds that he believed to have the glyphosphate resistant trait, spraying the fields with glyphosphate, and replanting the next year with glyphosphate resistant corn.”

            Is that not a self-replicating bio tech? I’m confused.

                1. Yes. The survivors, as long as there are any, will be tolerant.

                  Granted, it would normally have taken many years due to the time it takes for each generation.

                  But that is also why the seed corn currently sold is deliberately sterile. It creates a monopoly – which can be disastrous. If the source of the seed corn gets attacked by ANYTHING, then there will be NO corn for the next season… ever.

    2. You should care what the rules are, because it could be your ox that gets gored next.

      Neither you or anyone else has any reason to believe that a claim describing your new machine or component in objective structural terms that distinguish it from the prior art machines or components is susceptible to being “gored” by Alice. At least, you haven’t provided any such reason.

      What you’re really doing is fearmongering.

      News flash: your claims aren’t like “everybody else’s” claims.

      That’s why we’re having the discussion.

      1. >>News flash: your claims aren’t like “everybody else’s” claims.

        That is not true. Look at mechanical claims and electrical claims. And, guess what? The patent system is supposed to adapt to new technologies not try to classify them as “abstract” or too spooky to work with. Or the latest craze as having no physical form with no structure and yet somehow existing.

  5. It seems to me that what is being discussed in the literature as “software patents” really involves at least three different kinds of inventions that really should be treated separately: business method inventions, software inventions involving a new algorithm hidden inside a computer program, and technology inventions that happen to be implemented in software. Admittedly the lines between these classifications are not bright, but bright lines are never perfectly clear in the law, and I think if we treat these three categories separately, they would be brighter than the so-called line drawn by Alice Corp.

    Business method inventions, which I define for now in line with the AIA definition of CBM patents, should in my view never have been patentable. Three justices take this view in the concurrence in Alice Corp. In my mind, “promoting the progress of the useful arts” is not achieved by granting a monopoly on a financial services technique, an insurance product, or anything else that is not technology.

    Software inventions involving a new algorithm hidden inside a computer program, I think might be worth patent protection because such protection would promote the progress of the useful art of programming techniques. However, the EFF people may be right that because they are hard for an innocent competitor to detect in their own products, such protection might be outweighed by the drag that they place on innovation by others.

    Technology inventions that happen to be implemented in software, in my mind, should clearly be patentable subject matter. In the CBM arena, the PTO defines these as inventions that “solve a technical problem using a technical solution,” a definition very much in line with the Europeans. However I think it should be refined to require further that the invention have a physical effect, or be representative of a physical effect (such as a simulation program). These inventions are much easier for a competitor to detect and avoid (or design around), because of the physical effect. And with processors becoming so fast, most new ideas that in the past might have been implemented in hardware are being implemented in software instead, and this should not by itself be a reason to deny them patent protection.

    In the very first Federal Circuit decision after Bilski, Research Corp. v. Microsoft, a patent on a halftoning method was upheld as being “non-abstract”. Judge Rader wrote the opinion and based it on the fact that a halftoning method is technological, not abstract. Subsequent Federal Circuit opinions which invalidated what I would call business method patents, distinguished Research Corp. on that same basis. I personally believe Judge Rader was on the right track.

    In light of my views above, of the 11 recent invalidations mentioned in the article cited in the main blog post, the only one that troubles me is the one about on keeping colors synchronized across devices. That one I believe was wrongly decided, because the invention was, in my view, “technological”. I am comfortable with all the other invalidations cited.

    I wonder what others in this brain trust think of the above way to organize the subject matter eligibility analysis of so-called “software patents”. (Please, as Dennis has requested, constructive comments only.)

    1. >use of these profiles were merely mental steps that could be done by a >human being and were therefore not eligible for patent protection

      I think they were all wrongly decided, but I agree that the above is one of the worst. So, the judge is saying merely being able to do what a human brain can do is nothing. So, a machine that can perform the same information processing tasks as a human is not worth a patent. That is what the judge is saying.

      Outrageous. Counter to current science and every principle of innovation (and patent law).

        1. Night, Personally I think these opinions are right out of a Marx movie with no sanity clause.

          Typical Night post — They quality of argument is, well…..

      1. So, if a program could do the judge’s job as well as the judge, then even that according to the judge would not be patent eligible. Something is very wrong with that.

        1. if a program could do the judge’s job as well as the judge, then even that according to the judge would not be patent eligible.

          Something is very wrong with that.

          Exactly what is “very wrong with that”?

          Lots of incredibly useful stuff is ineligible for patenting, for one reason or another, including stuff that would improve the performance of judges. There’s more to it than that.

          1. Well gee willikers, tell us why it isn’t wrong. So far what we have from the judiciary is that it is wrong ’cause we say so.

            1. So far what we have from the judiciary is that it is wrong ’cause we say so.

              I’m not aware that the judiciary ever spoke to the facts you raised. Do you have a case in mind?

              You made the assertion that “something is very wrong with [a judge finding ineligible] a program [that] could do the judge’s job as well as the judge.” I didn’t. Tell us what that “something” is. Presumably you know or else you wouldn’t have made the statement.

              1. The “something” is that making an intelligent machine is an invention. The “something” is that we live in the information age and the innovations that are happening now are processing represented information.

                That is the something. Processing represented information is why we separate ourselves from the animals, but according to at least one judge it isn’t patent eligible. I would say that is absurd.

                1. Furthermore, any of these statements that go something like merely performing the steps of a mental process are not patent eligible are absurd.

                  So, if a person comes in and can do the judge’s job better is that meaningless? Is that mere? I don’t think any reasonable person would think so. So, what we have is a machine that is performing what the judge holds most dear and what the judge is paid for. It is simply outrageous and absurd to say that isn’t patent eligible.

                2. Jesse: tell us what he decision was based on. He applied a narrow judicial exception that states the claims are nothing more than an abstract concept with no value to the application.

                3. That still shouldn’t make it patentable.

                  If it were, then you should have patented having a baby.

                  ALL animals process information. You are REALLY living in left field if you think animals don’t process information.

                  You must have missed the communication capabilities done by gorillas and chimpanzees. Their language might have been limited to a three year old, but it is still communication with a language.

                4. Jesse yes all animals process information. Gee, now take it one step further and what is the difference between the squirrel and human in information processing?

                  According to your lot nothing.

                5. Exactly.

                  They process information the same way we do.

                  The only difference is the AMOUNT of processing they may do. A shorter memory prevents that. Some animals DO have the same (or better) memory, but their environment is so drastically different from ours that we have trouble communicating with them, or even evaluating their intelligence.

                  Cetations have very complex communications, some are known to identify individuals by a name, but we are unable to interpret their complexity…. They process abstract information quite well. Even to the point of cooperative effort at saving humans from drowning when they choose.

                  Even cephalopods have a rather complex communications, and are known to investigate situations and solve complex problems.

    2. Great comment, Wman.

      Judge Rader wrote the opinion and based it on the fact that a halftoning method is technological, not abstract.

      Depends on the claim.

      The concept of halftoning is ancient. Painters have been knowingly using it for centuries and I would not be suprised if evidence that the optical illusion resulting from viewing different sized or shaped or colored dots was known to humans can be found in the arts and literature going back thousands of years. The idea of using the halftone principle for printing images is over 200 years old.

      Over and over again there is this tendency to view everything that takes place “on a computer” as somehow “new” all over again. Programmable computers are old, people. They’ve been old for a long, long time. Same is true of computers connected to electronic displays which are, as everyone knows, reprographic devices designed to trick the eye.

      Protecting “new” algorithms as applied to a process which is algorithmic by nature is simply protecting the math. How does one evaluate the “inventiveness” of a new math equation? If the “structure” of the algorithm (whatever that means) is to be compared to the “structure” of algorithms in the prior art, where do we look for those algorithms, which people have been using for centuries?

      If an algorithm is applied to modulate data from source A for output B, can it ever be re-patented to modulate data from source A to output Y (Y is a different label given to the output data)? Source X to ouput Y (X/Y are different labels given to the input and output data) ? Is there some reason to expect that a “configured” computer in the prior art would choke on the algorithm if the input numbers are given different labels?

      It seems to me that what is being discussed in the literature as “software patents” really involves at least three different kinds of inventions that really should be treated separately: business method inventions, software inventions involving a new algorithm hidden inside a computer program, and technology inventions that happen to be implemented in software.

      I agree that the 101 analysis need not and probably should not be identical for the types of claims you identified. And I think the reasons for denying patents on those inventions are sound.

      With respect to the “technology inventions that happen to be implemented in software”, I’m not sure I understand the distinction you are trying to make.

      One distinction that I think might be practical is the distinction between claimed inventions that improve computing devices per se (e.g., speed, efficiency, increased memory storage), independent of any application, as opposed to claimed inventions that recite a new information processing functionality to be carried out by old computers. And applicants should expect to be required to provide evidence to support the stated utility and to rebut prima facie cases of obviousness, just as in every other art unit.

      1. Thanks for the comments, MM.

        Regarding my comment that Judge Rader based his opinion on the fact that a halftoning method is technological, not abstract, I see your response seems to focus on the question of whether a halftoning method is old. Justice Thomas’s opinion did equate “abstract” with “old” (I can’t recall exactly to what extent), and I think that was unfortunate. In my mind, something “old” should be addressed under the prior art sections of the statute, not patentable subject matter. So my comment tries to get away from where Alice Corp. leaves us, and instead tries to get at where *should* we be? What type of analysis should work to distinguish the kinds of subject matter that should be patentable from the kinds that shouldn’t.

        In that vein, I feel strongly that my first category (business methods) should not be patentable, and that my third category (technical inventions with a physical effect) should. I’m not so sure about the middle category, either in how it should be defined or in how a claim in that category should be analyzed. But it would be nice to find agreement on at least the two extremes (business method vs. technological).

        Regarding technology inventions that happen to be implemented in software, I can use a variation of your example to illustrate what I’m thinking of. You suggest an invention involving an algorithm to modulate data from source A for output B. Suppose the algorithm is hetrodyning (and assume hetrodying is novel and unobvious over the prior art). In the past, such an algorithm might have been implemented in hardware (like maybe an integrated circuit multiplier chip). I don’t think anyone would disagree that a claim calling for the use of a hardware multiplier to implement the algorithm should not be patentable subject matter. But today, that multiplication would likely be done in software. So the claim might instead call for a computer system which performs the multiplication. (Remember, we’re assuming here that the idea is novel and unobvious.) I don’t personally see any reason why this claim should not define patentable subject matter while the hardware claim does.

        Regarding the distinction you suggest at the end, between claimed inventions that improve computing devices per se (e.g., speed, efficiency, increased memory storage), independent of any application, and claimed inventions that recite a new information processing functionality to be carried out by old computers, now it’s my turn to ask for clarification. And which one you would see as patentable subject matter and which one not.

        Thank you

    3. However I think it should be refined to require further that the invention have a physical effect, or be representative of a physical effect (such as a simulation program).

      When I was young I had a clear plastic model of the Wankel rotary engine. While at the time there were patents covering the design, I would not expect that any licensing was required for the model or any infringement should occur in the absence of such licensing. Nor would I expect any computer simulation of the engine to be infringing (were such available at the time). In fact, it is supposedly the raison d’etre for the patent system to promote and facilitate the sharing of knowledge and understanding of a particular technology.

      Are you suggesting that models and simulations that aid in describing a technology should be deemed the exclusive right of a device’s inventor? And yet somehow that certain simulations themselves should be afforded patent protection? Could you please elaborate on how this should work?

      1. Thanks for the comment, Saul.

        I think that whether a patent on a rotary engine would also cover a plastic model and a computer simulation of its operation, would depend on the claim. I don’t think it’s out of the question at all to draft a claim to a plastic model of a rotary engine, and that such a claim should be considered patentable subject matter. Whether it is novel and unobvious is a different question, and my post intentionally doesn’t go there. I’m assuming a novel and unobvious invention, and asking whether it should constitute patentable subject matter. It is certainly possible for a plastic model to be novel and unobvious over the real engine, for example if the designer of the model had to make unobvious modifications to make it work in brittle plastic.

        Regarding simulations, I’m thinking of a computer-based simulator, not a particular simulation. For example, it may be a goal in the design of rotary engines to optimize some parameter, and the way to vary the parameter is by selecting the best angle for a doohicky on the engine. And assume it is difficult and expensive to manufacture 10 rotary engines, each with the doohicky placed at a different angle, so that you can measure the parameter and see which angle produced the best value for the parameter. So it might be valuable to create a simulator that models the operation of the engine on a computer, and allows the user to adjust the angle of the doohicky for each run of the simulation. Creating such a simulator might involve certain insight and shortcuts that would not have been obvious from the physical engine, so it is certainly possible that a claim to such a simulator might be novel and unobvious, even over the prior art of the physical engine. I think a claim to such a simulator should constitute patentable subject matter just as would a claim to the physical engine itself, because what the simulator “represents” has a physical effect. It is just as “technological” (in my view) as the physical engine itself, and does just as much to “promote the progress of the useful arts”. A simulator of the insurance marketplace, on the other hand, should not in my view constitute patentable subject matter, because what it represents is not technological. Protecting an invention either in the insurance marketplace or in a simulator of the insurance marketplace, does not (in my view) promote the progress of the useful arts.

        Did I understand the import of your comment correctly?

        Thank you

    4. I thought that Bilski was right – as long as you had a specific implementation that REQUIRED hardware to perform a particular function by the terms of the claims, then it should be patent eligible, unless it is merely automating a previously known manual process (very close to a 103 rejection anyway).

      I see them in the same three categories that you do.

      I deal with a lot that are in between the first two categories, business methods and implemented algorithms – within a business method, the computer implementation allows certain functions that couldn’t’ be done on pen and paper or by human action, etc. I think that that recognition and that feature should be patent eligible.

    5. Wman, I agree with your basic approach. Methods which merely use computers that do not produce a new physical effect are not statutory. However, software that improves the computer, or software, which in a larger context of a machine or process that produces an improved machine or process certainly is patentable.

      This is why the focus must be heavily placed on the role of the machine in the claim – whether it is there just nominally, being used, or whether the machine is being improved.

      1. All of the following improvements are physical effects brought about by new software; which are patentable in your opinion?
        a) Software that improves (reduces) the energy use of a computer by 10%;
        b) Software that improves the audio quality of a computer’s existing speakers by 10%;
        c) Software that improves the processing speed of a computer by 10%;
        d) Software that improves the visual clarity of a computer’s existing video display by 10%;
        e) Software that improves (reduces) the reaction time of a computer user (when interacting with the software) by 10%;
        f) Software that improves the happiness of a computer user by 10%;
        g) Software that improves (reduces) the eyestrain of a computer user by 10%;
        h) Software that improves (reduces) the time required by the computer user to use the computer by 10%.

        Would you suggest that a novel and non-obvious software algorithm for making a computer more energy-efficient is outside the scope of patent eligibility? If not, what of the rest?

        1. That is a great post.

          The anti crowd believes that all of these are “abstract” and that software has no physical form or structure. They aren’t certain where it actually exists, but they say it exists with no physical form or structure. Quite a trick.

          1. I think part of the problem is that non-computer people don’t actually understand what “software” is, and another part of the problem is that the language used by compsci types tends to befuddle the legal community (and vice-versa). For example, in software engineering, “abstraction” is a good thing, yet clearly not in IP law…

            This line of text: main(){ printf("hello world"); }
            represents software, in fact, one of the first C programs anyone ever writes. Is it software? That line of text surely can’t be patentable, but that’s because it’s just text on a page. Once it’s compiled (or interpreted) and running inside a computer, however, it’s not just text. It’s instructions to get a computer to do something that it otherwise wouldn’t be doing.

            The patent laws seem to say that improving a machine — making it do what it does better, or do something different — is patent-eligible. The Kearns patents on intermittent windshield wipers didn’t use any new equipment (a point noted by Ford during litigation) but his patents were not struck down. If improving the behavior of windshield wipers is patentable, why shouldn’t improving the behavior of computers be patentable? Because they’re programmable by design?

            1. Slotguy, I don’t think one could find agreement even amongst those intimately familiar with the technology on the actual definitions/boundaries of those two terms computer and software.

              For my own definition, the “computer” is the physical structure of logic gates that repeatedly executes instruction cycles comprised of the reading of numeric data from its inputs (or its internal store), performing mathematical operations on that data, and outputting numeric data to its outputs.

              My definition for “software” is precisely that numeric data which is read during the instruction cycles of a computer.

              As such, I do not consider it possible for “software” to improve the “computer”; either the computer has the pre-existing capability to handle the input data or it does not. The data itself can not change this, any more than an audio recording on an album possesses the ability to “improve” a phonograph upon which it is played.

        2. None of the above.

          The problem with all but (a) are subjective. What may improve for some, will certainly be degraded for others.

          Even power measures are subjective as it depends on hardware, rather than software. What improves one hardware platform can easily degrade others.

          1. I disagree that all of those are subjective — time and speed are not, and audio quality can be objectively measured relative to a source signal. I further disagree that computer technology is like squeezing a balloon, improving somewhere but degrading elsewhere. Technology is not a zero-sum game.

            If I invent a new low-level data retrieval algorithm that relies on some aspect of SSDs vs. spinning-disk drives, and implement it as a software patch to MS Windows 8.1, and thereafter every Windows computer with an SSD has 10% improved drive access time, that’s not degrading anything. I wrote software that made the computer run faster. Are you suggesting that falls outside the scope of patent-eligibility?

            1. SlotGuy, if you promise not to again misrepresent what I say, I will respond here to say this:

              Software which operates inside a computer to enhance its functionality as a computer provides an improved computer. I think such is quite statutory.

              The problem begins when the computer’s relationship to the claimed subject matter is nominal such that the invention really is in the “business method” or other such non statutory subject matter. Examples include math and economic principles. However, those are only examples of a broader category of everything that is non statutory primarily because the subject matter is unrelated to improving a machine, manufacture or composition of matter, i.e. abstract.

              1. Software which operates inside a computer to enhance its functionality as a computer provides an improved computer. I think such is quite statutory.

                What does “functionality as a computer” mean?

                Intermittent wipers are not an improvement in wipers per se, but in the behavior of the wiper vis-a-vis the person who has to sit in front of it.

                Software is not an improvement in a computer per se, but in the behavior of the computer vis-a-vis the person who has to sit in front of it.

                Why is one patentable but the other not?

          2. Not true.

            Better compilers look ahead in the code and eliminate unnecessary steps which reduce power consumption. That’s hardware independent.

            1. No. it can be hardware dependent.

              Way back – the MIPS R4000 CPU had different cach sizes. The compiler would take advantage of the size.. Yet the same program taken to the next generation could run slower… due to the incorrect assumptions of the binary. In one case, the program wouldn’t run (if the last instruction on a page was a jump, then the application aborted, thus the compiler would make sure the situation didn’t happen – I believe it inserted a noop. Take the same program to another version of the same CPU and it ran “less well”, as now it took up more memory, causing more page faults, and consume more resources.

              What you are thinking of is more likely dead code removal, or the normal algebraic operator reduction optimization. These are hardware independent.

              And note – algebraic operator reduction is a math operation. Dead code removal is just a part of operator reduction…

                1. I am talking about compilers. Now PART of a compiler is an assembler… That assembler is not necessarily independent of the rest of the compiler. It can also be part of a global optimizer that essentially does a targeted recompile of the code as it choses which branch instruction to use.

                  And there are a number of optimizations that can be used – some optimize for speed over code size, some optimize for numerical accuracy, which can be faster/slower depending on the hardware.

  6. The bottom line, for many, will be their bottom line. I know of entire practices that have been based substantially on obtaining software-type patents for clients who now must wonder if there is any point in even trying. Fewer software-type patents means that further downstream, there will be substantially less litigation for the litigators to pick over. In other words, less revenue coming in for lots of firms, both on the prosecution side and on the litigation side. (Writing this, I first speculated that this would hit prosecutors first, but I’m not sure of that.)

    My advice? Plastics Business Methods Patents Software Patents Drones. And maybe software that enables light weight, plastic drones to do what they otherwise would not.

    1. Where are more patents filed (software or biologics)? Where are more and higher paying jobs now (software or biologics)?

    2. Glad to see the use of the word “software-type” since we have yet to see any of these 101-rejected patents with any actual new software, and the word “new” is a requirement in 101. Better yet, use the more technically correct word “vaporware” and some of the overreaction may calm down a bit.

            1. Random and Curmudgeon, read the statute and reviser’s note. It’s not very arguable that “new” is only in 102, and “invention” is now in 103. Or, at least that’s what Congress thought it did.

              1. David, Frederico’s commentaries observed that the requirement that subject matter be new in the absolute sense was not overturned by Congress. The newness requirement is independent of prior art.

                I think you might observed a Supreme Court case called Myriad. The Supreme Court their held that the reason that wild DNA was not a “new composition” within the meaning of 101.

        1. David, and of course you know that Frederico disagreed saying that Congress had no intention of overturning those cases that 101 newness still was requirement the statute regardless of prior art.

          You also might address the fact that “new” was added in 1793 by Jefferson when he added “composition.” At that time, the statute also require that the subject matter not be known or in use. Clearly, in 1793, new was not meant to be the same thing as not known or in use. The whole point was not to authorize the patenting of compositions or phenomena of nature that were discovered because they were not new even though they were not previously known.

          Congress change nothing in 1952, and you know that.

  7. From the article: These rulings might seem like common sense,

    They sure do.

    but it’s important to remember that every single one of these patents was examined and approved by the patent office. That’s because until recently, this kind of “invention” was considered eligible for patent protection.

    In fact, many of these inventions, if not all of them, should never have been granted by the PTO in the first place in view of statutes other than 101 — something that even the hardest core proponents of software patenting will readily admit.

    By catering to the whims of their software patenting “clients”, the PTO and the Federal Circuit exacerbated the problem by encouraging the filing of the worst “innovations” out there to the point where the “inventors” of many of these cases being tanked are patent attorneys who saw a golden opportunity to “get rich off the Internet”.

    1. MM, you reference to “clients” hits the nail on the head. The PTO refers to them as “stakeholders.” The people who want to obtain patents are stakeholders. The PTO openly admits that they give them priority and preference over the public interest.

      Congress says the same thing — but here the people and companies being reamed are also heard.

      1. “The PTO openly admits that they give them priority and preference over the public interest.”

        I know I do, we’re running an entitlement program here.

  8. “For example, the plot of Superman III involved a villain using this kind of scheme to steal from co-workers’ paychecks.”

    What next, Beam me up, Scotty? Or take us at Warp-5 Mr. Sulu?

    1. The difference is enablement. Superman III told you exactly how to do rounding down and reallocate the fractions. There is no enablement at all of the broad concept of warp drive.

  9. Next industry on the chopping block

    Last time I checked the Supreme Court wasn’t in the business of invalidating “industries”, David.

    Maybe you can explain to everyone, David, why so many honest, hard-working and creative people in the “software industry” are cheering these recent decisions if, in fact, these decisions have destroyed the software industry as you seem to suggest.

    Similarly, the “biotech industry” isn’t on trial in Ariosa. Far from it. The issue in Ariosa is the eligibility of a class of claims that could (arguably) take old technology (e.g., PCR) out of the public domain every time that old technology is used for its intended purpose (i.e., obtaining information).

    this is the most hostile the courts have been to software patents in at least two decades.

    About time.

    1. As you observed, MM, if one discovers a new star, one cannot patent that by claiming a method of observing the new star comprising a telescope.

  10. No area of technology is safe from SCOTUS at this point. Maybe if they p!ss off enough business sectors that are capable of influencing the court, there will be some kind of backlash.

    1. Bluto, I think it is fair to say that you do not really understand what is going on. Have you ever read Hotel Security, just for example?

      1. Thanks, Ned. For purposes of my future posts, it would be super great if you resisted the urge to snipe. You add nothing to the conversation by constantly whining that I am confused or uneducated.

        I know this may come as a shock to you, but people have differing opinions about these matters.

        Thanks,
        XOXO

        BB

        1. BB, I responded to your post in kind because I really believe you could not have said what you said unless you did not understand the issues. I recommend that you actually read Hotel Security, then all the cases that followed it, including Guthrie v. Curlett, In re Russell, etc., and quite a number of CCPA cases. It was cited by 509 cases, and was in the MPEP until 1996 when, for some reason, it was removed by the PTO. That signaled the Federal Circuit, who cited its removal in State Street Bank that the government no longer opposed patenting business methods.

          But the case also spawned the printed matter exception which is still followed even today by the Federal Circuit.

          The Supreme Court is following it in Alice without saying that it is doing so. Plain as day.

          1. Hotel Security provides an important analysis, but I wouldn’t think it carry’s much precedential weight. It is a 1908 case out of the Second Circuit written by a relatively obscure judge. According to Westlaw, in the subsequent one hundred years, it has only been cited by 20 cases (not the 500 that you suggest). And, that citation history is not representative of a universal following. For example, most recently it was an element of Justice Stevens Concurring Opinion in Bilski.

            1. Dennis, Stevens cited Hotel Security with approval. He also cited in re Patton of the CCPA for the same proposition as Hotel Security. As I quoted elsewhere, Patton relied on Hotel Security, among others cases, that, in turn, also relied on Hotel Security.

              In re Patton is controlling law and it has not been overturned by an en banc court.

              Printed Matter:

              Hotel Security was relied upon by Guthrie, that was in turn cited by In re Russel (printed matter is non statutory and provides no weight in a patentability analysis). Russell is still followed in very recent Federal Circuit cases for the proposition that non statutory subject matter is given no weight.

              Newman was the first to question Hotel Security in her dissent in In re Schrader, 22 F.3d 290 (Fed. Cir. 1994). She opined there:

              “A case often cited as establishing the business methods “exception” to patentable subject matter is Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2nd Cir.1908); however, the court discussed the “obviousness” of the system of records kept to prevent embezzlement by waiters at considerably greater length than whether the subject matter was “statutory”. Although a clearer statement was made in In re Patton, 127 F.2d 324, 327, 53 USPQ 376, 379 (CCPA 1942) that a system for transacting business, separate from the means for carrying out the system, is not patentable subject matter, the jurisprudence does not require the creation of a distinct business class of unpatentable subject matter.

              The cases simply reaffirm that the patent system is directed to tangible things and procedures, not mere ideas. See Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507, 22 L.Ed. 410 (1874) (“An idea of itself is not patentable, but a new device by which it may be made practically useful is”). Any historical distinctions between a method of “doing” business and the means of carrying it out blur in the complexity of modern business systems. See Paine, Webber, Jackson and Curtis v. Merrill Lynch, 564 F.Supp. 1358, 218 USPQ 212 (D.Del.1983), wherein a computerized system of cash management was held to be statutory subject matter.

              I discern no purpose in perpetuating a poorly defined, redundant, and unnecessary “business methods” exception, indeed enlarging (and enhancing the fuzziness of) that exception by applying it in this case. All of the “doing business” cases could have been decided using the clearer concepts of Title 35. Patentability does not turn on whether the claimed method does “business” instead of something else, but on whether the method, viewed as a whole, meets the requirements of patentability as set forth in Sections 102, 103, and 112 of the Patent Act.”

              Of course, taken literally, such thinking would and did allow the patenting of business methods.

              Note the nice link into Rubber-Tip Pencil, where the Supreme Court used the Hotel Security analysis, but 33-years prior.

              What case is cited to support Benson and Alice? Rubber-Tip Pencil.

        2. I exactly echo BlutoBlutsarky’s view. Ned just repeats the same things over and over again. All of his opinions are straight from Benson and Richard Stern. Richard Stern used to have a website up that had about the same opinions that Ned puts on here every day.

          And Ned stop the condescension. You don’t understand the law better than we do. You are a judicial activist trying to remove software from eligibility. That is clearly and unequivocally what you are.

          1. Night, I am not so sure Stern reflects my views or mine his. However, I honored by the association with such a fine scholar.

            He and I did cooperate on one law review article, although, at the time, my thinking on these subject was still quite in the formative stage.

          1. You quote the same nonsense over and over again. And as I pointed out to you before regarding several cases including Haliburton that when I take the time to re-read the case to address your arguments you don’t even seem to remember it a week later.

            1. So having the same argument with over and over and over and over again is pointless.

              I have read all the cases you quote from Ned way back in law school. I have argued with Stern and you have the same arguments he does. Nothing new there.

              So, please the arrogance is absurd.

                1. Random, you and Malcolm are the only posters here that understand the principle behind “functional at the point of novelty.” It goes back to O’Reilly v. Morse. The people who think that Congress would overturn that case have another think coming.

                  What they did in 1952 is authorize functional claiming using means plus function. The did not authorize functional claiming in any other context. When a claim is functional at the point of novelty and does not use means plus function, clearly that claim remains outside the law.

          2. “But if you have a technical invention, make sure the hardware is in the claim”

            You do not need hardware in the clam to have a technical invention. There is no such law, period.


            Night, you might note that I argue and quote cases.”

            Ned,

            What I noticed is that you argue and all too often misrepresent case law.

            Hotel Security is not controlling case law on 101.
            Business Methods are patent eligible subject matter.
            There is no machine or transformation requirement.
            There is no technological arts test are requirement.

            Yet you continue to argue the opposite to the above well established facts.

            Just because those of us that actually know patent law do not correct you each and every time you make such errors ( I suppose that was Anons role) does not mean you are fooling anyone.

            1. This has to be right –

              1. Hotel Security, a 2nd circuit case from 1908 is not controlling precedent for the country.
              2. In Bilski, the Supreme Court was clear that there is not currently a business method exception and that a “machine-or-transformation” is not required for patent eligibility.

              However, it is also true that these elements offer strong clues to the eligibility determination.

              1. Dennis, Hotel Security was widely followed in all courts of the land until State Street Bank. It was followed in the CCPA and in the Federal Circuit. It was directly cited 509 times according to Google scholar.

                True it was not controlling in the sense of a Supreme Court decision. But it was cited and followed in a number of CCPA cases.

                From Stevens opinion in Bilski:

                “Business methods are not patentable arts. See, e.g., United States Credit Sys. Co. v. American Credit Indem. Co., 53 F. 818, 819 (CCSDNY 1893) (“method of insuring against loss by bad debts” could not be patented “as an art”); Hotel Security Checking Co. v. Lorraine Co., 160 F. 467, 469 (C.A.2 1908) (“A system of transacting business disconnected from the means for carrying out the system is not, within the most liberal interpretation of the term, an art”); Guthrie v. Curlett, 10 F.2d 725, 726 (C.A.2 1926) (method of abbreviating rail tariff schedules, “if it be novel, is not the kind of art protected by the patent acts”); In re Patton, 29 C.C.P.A. 982, 127 F.2d 324, 327-328 (CCPA 1942) (holding that novel “`interstate and national fire-fighting system'” was not patentable because, inter alia, “a system of transacting business, apart from the means for carrying out such system is not” an art within the meaning of the patent law, “nor is an abstract idea or theory, regardless of its importance or … ingenuity”)…

                Regarding Patton, the CCPA cited Hotel Security: “…a system of transacting business, apart from the means for carrying out such system, is not within the purview of section 4886, supra, nor is an abstract idea or theory, regardless of its importance or the ingenuity with which it was conceived, apart from the means for carrying such idea or theory into effect, patentable subject 328*328 matter. …. Hotel Security Checking Co. v. Lorraine Co., 160 F. 467.”

                In the sense that Hotel Security was followed in Patton, it does seem that it is controlling law, but indirectly through Patton.

                But then there is the issue of stare decisis. And, just how a Federal Circuit panel can overturn controlling (CCPA) precedent that followed Hotel Security is another issue altogether. An en banc court has the power to do that, but as was recently noted in the en banc case about claim construction as a matter of law, even en banc court does not overturn controlling precedent unless compelled to do so because it is wrong. Rich, in the panel decision, didn’t have the power to do so even if he disagreed with controlling precedent.

                And there is absolutely no question that everybody understood that business methods were not patentable subject matter – that is prior to State Street Bank. That case stood out from among other cases in the history of Federal Circuit jurisprudence in its arrogance. It has been cited by the Supreme Court in cases like Bilski is a prime example of cases that should not be followed.

            2. The truth when did I ever say that Hotel Security was controlling law on 101?

              Hotel Security essentially held that nonstatutory subject matter was to be given no weight in novelty analysis.

              It also said that the subject matter before it, other than the index cards, was non statutory — it was abstract.

            3. The truth, the SC held in Diehr/Prometheus that nonstatutory subject matter that is integrated into a process that otherwise is statutory, e.g., passes the MOT, is eligible. We learned from Prometheus that simply tagging something ineligible onto the end of an old process that otherwise passed the MOT was not sufficient.

            4. The truth, regarding technological test: I agree.

              The test is statutory, whether the claimed subject matter defines a new or improved machine, manufacture, or composition or a process for making or using one of these. However with regard to using, the process must result in a useful end (Benson) that is otherwise the kind of invention the patent laws were enacted to protect. See e.g., Diehr.

    2. Bluto : No area of technology is safe from SCOTUS at this point.

      It has always been the case that “no area of technology” is immune from eligibility considerations.

      That’s because eligibility considerations depend on the analysis of what is being protected by the claims, not merely the ostensible “area of technology” in which inventor believes he is practicing.

      An easy example will demonstrate why your statement is misleading, Bluto, to the extent it implies that the global reach of eligibility considerations is “something new.”

      1. An improved car, wherein said improved car includes information printed on the side of the car, wherein said information is [insert new, non-obvious and useful information here].

      That claim is invalid because it protects ineligible subject matter. It was always thus. Nobody runs around proclaiming that “car technology is ineligible for patenting!!!” because of that, and nobody ever did because it would be silly to do that.

      1. I agree that it is not “something new” inasmuch as the idea is anticipated or at least obvious. What it is not is “ineligible” because the claimed device has a structure.

        How hard is it to knock down that claim using the actual tools created for such an obvious invention, 102/103?

        Using 101 for this analysis is just simply not necessary.

        Again, we are talking cross-means. I acknowledge that courts have restricted subject matter eligibility to an absurd degree (in my view). What I do not agree with is that it is beneficial to patents in general to have courts monkeying with statutes and using them for purposes which they were never designed.

        1. Bluto: How hard is it to knock down that claim using the actual tools created for such an obvious invention, 102/103?

          First of all, the fact that a claim may fail under multiple prongs of the patent act is not at all surprising, nor is it a sign that something is wrong with the patent act or the intepretation of the patent act. That’s because some of the same considerations (e.g., excessive claim scope) underlie many of the statutes.

          Second, if you think 102/103 are so awesome and perfect, please take the claim I gave you and explain to everyone how you find that claim obvious without invoking subject matter eligibility considerations. Here it is again:

          1. An improved car, wherein said improved car includes information printed on the side of the car, wherein said information is [insert new, non-obvious and useful information here].

          That “manufacture” claim protects ineligible subject matter, of course. Please tell everyone how you deal with that claim under 102/103. Just use “the statutes.” Don’t try to use any of that bad ol’ “judicial activism” incorporating 101 considerations that was created to make sure the statutes actually “worked.”

          Likewise with this claim:

          1. A method comprising: (a) performing old data gathering step on a patient; and (b) if data is X, apply [insert useful non obvious correlation here] to determine the likelihood of cancer in said patient.

          Again, that “process” claim certainly protects ineligible subject matter.

          Tell everybody how you apply the statutes 102/103 to get rid of that claim, since you believe these statutes are capable of doing that so wonderfully.

          If you succeed, you’ll be the first person to ever achieve this task. Good luck.

        2. Bluto: I agree that it is not “something new” inasmuch as the idea is anticipated or at least obvious. What it is not is “ineligible” because the claimed device has a structure.

          You’re completely missing the point of my comment and it appears that you do not understand the cases or the issues that have been addressed in th ecases.

          What is not “new” is the fact that subject matter eligibility is not limited to any particular technology area. That’s because (as I already explained to you) the issue of subject matter eligibility can arise in any technology area. Eligibility focuses on the claim and what the claim is protecting, taking into account any technology recited in the claim (old or new).

    3. *No area of technology is safe from SCOTUS at this point. Maybe if they p!ss off enough business sectors*

      So far they haven’t upset any business sectors. Software makers and supporters of every size from startups to megacorps are popping champagne and celebrating.

      The enemies of software are the only ones distressed and they’re mostly limited to a few greedy patent law shops and trolls.

      1. Anecdotal evidence is nice, Owen. For every software maker and supporter you can name, I can provide you with ten counter examples.

          1. That’s a good question. But, let’s also keep in mind that the stock market is notoriously keyed to short-term gains. But, do tell us what the stock market reaction to the great 101 melt down is.

      2. How many startups seeking funding have you popped champagne with?

        The ones that I actually work with are taking the news a bit differently.

  11. Let’s hope that Judge Moore does not become another Don Quixote fighting the unwinnable foe, championing the lost cause.

    Rich was one of these and I think he personally lead the court to disaster.

    A programmed general purpose digital computer is NOT per se statutory.

    1. Sure it is, under the explicit words of the statute. A computer is a machine, plain and simple.

      There are many of us who will fight the continued rewriting and dilution of the statute for personal or policy reasons.

      1. Bluto, I urge you to read the case that the Supreme Court overturned, Application of Benson, 441 F.2d 682 (C.C.P.A. 1971). link to scholar.google.com

        Realistically, the process of claim 13 has no practical use other than the more effective operation and utilization of a machine known as a digital computer. It seems beyond question that the machines — the computers — are in the technological field, are a part of one of our best-known technologies, and are in the “useful arts” rather than the “liberal arts,” as are all other types of “business machines,” regardless of the uses to which their users may put them. How can it be said that a process having no practical value other than enhancing the internal operation of those machines is not likewise in the technological or useful arts?

        1. Ned. Go back and read my post carefully. My comment about 101 reflects a strict construction of a clear and unambiguous statue.

          You pointing out the obvious (that courts are hav mangled the issue) is a waste of time.

          Judicial rewriting of a staute by the courts is part and parcel of the problem.

          1. With respect, Bluto, the statute also requires that the machine be new or improve, and useful.

            An old computer might be a machine, but it is not patentable under 101.

            1. If I improve a computer by reconfiguring its hardware in a novel, non-obvious, and useful way, that is patent eligible.

              If I improve a computer by reconfiguring its software in a novel, non-obvious, and useful way, you’d argue that is patent ineligible.

              Where do you find that distinction in section 101?

                1. Well, it is true under Alice nothing is eligible if the judge feels like invalidating it.

                  In fact, the Alice challenge it to present any claim that couldn’t be invalidated under Alice/Mayo/Bilski.

                  We all know that the SCOTUS has just legislated. Absurd. The ignorant 9 has decided that the judge should just be able to do whatever they want—’cause they be the judge.

                2. The number of cases that I’ve gotten allowed and enforced for power controllers. That’s mostly why I think that setup works.

          2. Judicial rewriting of a staute by the courts is part and parcel of the problem.

            Is it your viewpoint that Congress’ power to award patents is without limit?

            If not – would you rather the court strike down the entire statute? Because if Congress were to make clear that it was unseverable that is what they would do. Congress had the option to add an unseverability clause in the AIA. They did not.

      2. Bluto: here are many of us who will fight the continued rewriting and dilution of the statute for personal or policy reasons.

        By all means keep doing that.

        But you might want to consider making some better arguments, and proposing some practical solutions that appeal to the vast majority of people who are/weren’t directly invested in the (old) status quo. The arguments you’re making in this thread have already been heard and they aren’t very persuasive or compelling to most people.

        1. The exceptions come from England.

          From Leroy v. Tatham,

          A new property discovered in matter, when practically applied, in the construction of a useful article of commerce or manufacture, is patentable; but the process through which the new property is developed and applied, must be stated, with such precision as to enable an ordinary mechanic to construct and apply the necessary process. This is required by the patent laws of England and of the United States, in order that when the patent shall run out, the public may know how to profit by the invention. It is said, in the case of the Househill Company v. Neilson, Webster’s Patent Cases, 683, “A patent will be good, though the subject of the patent consists in the discovery of a great, general, and most comprehensive principle in science or law of nature, if that principle is by the specification applied to any special purpose, so as thereby to effectuate a practical result and benefit not previously attained.” In that case, Mr. Justice Clerk, in his charge to the jury, said, “the specification does not claim any thing as to the form, nature, shape, materials, numbers, or mathematical character of the vessel or vessels in which the air is to be heated, or as to the mode of heating such vessels,” &c. The patent was for “the improved application of air to produce heat in fires, forges and furnaces, where bellows or other blowing apparatus are required.”

          Regarding 101’s “new,” consider Federico:

          The definition does not modify in any way the statement in section 101 that a new machine, a new manufacture, or a new composition of matter, can be patented; if a machine is not new, if a manufacture or composition of matter is not new, it still cannot be patented. The decision of the Court of Customs and Patent Appeals in In re Thuau, 135 F.2d 344, has not been overruled by the statute. The holding of this decision is simply that an old material cannot be patented as a composition of matter, because it is an old material, and the fact that the inventor or discoverer may have discovered a new use for the old material does not make the material patentable. To this extent the decision is affirmed by the statute…>

          Also, one has consider the 1793 statute that added “new” and “composition”, and retained “not known or used.” “New” cannot mean the same thing as “not known or used.” I think it is self evident that a newly discovered composition which is a previously unknown product of nature is nevertheless not patentable because it is not new.

          Regardless, since this was the holding of Myriad, it is not longer accurate to say that a product of nature is an “exception” to 101. A product of nature is non statutory under 101.

  12. The cited article refers to such patents as just “do it on a computer patents” and as follows: “These patents take some activity that people have been doing for centuries — say, holding funds in escrow until a transaction is complete — and claim the concept of performing that task with a computer or over the internet. The patents are typically vague about how to perform the task in question.”

      1. 103 and 112

        The fact that it fails on multiple grounds doesn’t mean any given ground is or isn’t proper.

        103 and 112 and 101

        1. Of course it does in this case because judges are making evaluations of prior art to the claims without following Graham in the least or for that matter any of the case law regarding 102 or 112.

          1. because judges are making evaluations of prior art to the claims without following Graham in the least or for that matter any of the case law regarding 102 or 112.

            Why would they apply the 102 test to a 101 analysis? They’re also not properly applying the rule against perpetuities test to these cases either, which is okay because that’s not the test for the analysis either.

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