Ted Sichelman is a Professor of Law and Director of the Technology Entrepreneurship and Intellectual Proerty Clinic and Center for Intellectual Property Law & Markets at the University of San Diego School of Law.
Representative Bob Goodlatte’s bill, HR 9 (the “Innovation Act”), has been receiving much attention in the press and on the Hill. The Innovation Act is largely identical to the one (HR 3309) that passed the full House in late 2013, so of all the pending patent reform bills, it is likely to receive the most play in Congress this term.
The Innovation Act includes what seems to be a neutral fee-shifting provision. Specifically, it would require a court to “award, to a prevailing party, reasonable fees and other expenses … unless the court finds that the position and conduct of the nonprevailing party or parties were reasonably justified in law and fact or that special circumstances (such as severe economic hardship to a named inventor) make an award unjust.”
Unfortunately, many commentators have focused the issue of whether this provision creates a presumption in favor of fee-shifting without carefully considering the many affiliated provisions in the bill. These additional provisions are particularly important because—contrary to the language quoted above—they significantly skew the effects of fee-shifting against patent holders. Given this lopsided effect, the fee-shifting provisions would probably increase patent assertion entity (PAE) activity. As I explain further below, this is because the provisions would most likely substantially reduce PAEs’ costs of acquiring patents.
A close reading of these additional fee-shifting provisions makes their skewed nature readily apparent. Take, for instance, the provision for “interested” third-party liability. It essentially makes those with a “direct financial interest in the patent . . . damages [award] or . . . licensing revenue” liable in the event a losing patent holder cannot pay a fee award (subject to certain exclusions). By its terms, the third-party liability provision only benefits “a prevailing party defending against an allegation of infringement of a patent claim” (emphasis added). So while third-party liability is quite expansive for those affiliated with losing patent holders, it is nonexistent for those affiliated with losing accused infringers.
Beyond discriminating against patent holders, the third-party liability provision further discriminates against non-practicing patent holders. Third-parties may only be joined in the event that the “prevailing party shows that the nonprevailing party has no substantial interest in the subject matter at issue other than asserting such patent claim in litigation.” This limitation would clearly capture non-practicing entities (NPEs), at least those who do not perform any R&D—although whether and when R&D is sufficient to meet the “substantial interest” threshold is undefined in the statute and thus unclear. If fee-shifting is truly designed to reduce low-quality suits, there is little basis to limit third-party liability only to NPEs. Anyone who has litigated knows that practicing entities, like NPEs, bring both strong and weak suits. There is a substantial economic interest in preventing frivolous suits regardless of the plaintiff’s business model.
Another example of the skewed nature of HR 9 is that settlement counts as a win for the accused infringer when the patentee “unilaterally extends to [the accused infringer] a covenant not to sue for infringement,” unless the patentee could have voluntarily dismissed the action without a court order. My understanding from experienced litigators is that these unilateral covenants tend to occur when the patent holder simply runs out of money and cannot continue to litigate. In this case, courts will often force the patent holder to provide a covenant not to sue in exchange for allowing it to drop the action. Presumably a patent holder providing such a covenant would sometimes not be able pay a fee award, which—if the patent holder is non-practicing—would allow the court to impose judgment on qualifying “interested” third-parties. On the other hand, if an accused infringer goes bankrupt, leading to a default judgment, the patent holder cannot join interested third-parties of the accused infringer when attorneys’ fees are owed.
The upshot of these provisions is to massively skew fee-shifting against the interests of patent holders, leading to an asymmetric risk that would very likely cause risk-averse inventors and assignees to avoid directly enforcing their patents, sometimes even strong ones. This is especially so because patent litigation is highly uncertain and costly, and the relevant test in the provision is the fairly open-ended “reasonably justified in law and fact” standard. Indeed, “reasonable fees and other expenses” in patent cases can be quite high—in large cases, well over $5 million—which would generally be a huge sticker shock to small companies and individual inventors with limited resources. Even a small percentage chance of a paying these fees could deter risk-averse inventors and assignees. In my personal experience running and dealing with many startups and individual inventors, they often are very risk averse when it simply comes to paying their own litigation expenses, much less the opposing party’s fees.
Oddly, the asymmetric nature of the Innovation Act’s fee-shifting provision may have the very opposite effect of what it purports to achieve by reducing so-called “patent troll” suits. As others have argued, the reason is straightforward: PAEs can more easily absorb the risk of bringing suit in the face of potential fee-shifting than startups and individuals. As I already pointed out, startups, individual inventors, and small companies are generally highly risk-averse patent holders. They would therefore fear liability being imposed on them for the direct enforcement of their patents (or if they simply retained an “interest” in a patent that was enforced by a third-party). As such, they would be more likely to sell their patents outright to PAEs instead of retaining a percentage in the litigation (as is standard today).
In fact, PAEs and their funders have already become savvy in this regard and often use single-purpose litigation entities with passive equity investors who cannot “influence, direct, or control” the litigation, removing these investors from liability under the Innovation Act. This approach makes the risk that the plaintiff would not be able to pay fee awards even more acute, leaving the original inventors on the hook if they retain a percentage stake of the proceeds (or probably even an equity stake in the single-purpose entity, because arguably the inventors can “influence” the litigation via their direct involvement). Indeed, even large companies and universities that monetize their patents via PAEs may decide to sell their patents outright to these PAEs, rather than retain a percentage stake, because of the unnecessary risk of placing their assets on the line. (Although the Innovation Act contains an escape valve whereby third parties can renounce all interest in the patents and avoid liability, it must be done very soon after a complaint is filed, which makes it of little use in a typical PAE deal.)
This shift from percentage deals to outright purchases would likely substantially drive down PAE patent acquisition costs. Because independent inventors and startups are risk averse—and some larger companies and universities likely are as well—these entities would expand the number of patents available for direct purchase by PAEs. This would likely push costs low enough that PAEs could afford to acquire much larger pools of patents, thereby increasing PAE assertions and reducing funds remitted back to original inventors and assignees.
Conversely, even though the Innovation Act is highly biased in favor of accused infringers, a risk-neutral PAE or large practicing patentee may be able to extract greater settlements from risk-averse accused infringers, such as startups and small companies, by credibly threatening to take a strong case to trial. This is contrary to the poorly reasoned analysis by organizations such as the Electronic Frontier Foundation, which wrongly assumes that PAEs are “patent trolls” that file “weak” suits and also seemingly forgets small companies are regularly sued by larger competitors. Thus, the Innovation Act’s fee-shifting provisions could very well hurt small companies and startups that are defendants accused of infringement.
In sum, the gains from the Innovation Act’s fee-shifting provision, may simply go to large, risk-neutral companies, regardless of whether they are the Intellectual Ventures or Ciscos of the world, just as scholarly analysis has shown how fee-shifting operates in other areas of the law. Perhaps that is why it is not a coincidence that the Intellectual Property Owners Association , which is dominated by large companies, does not oppose it, while the National Venture Capital Association effectively does oppose it. Like the America Invents Act, the Innovation Act’s fee-shifting provisions would probably shift today’s innovation footprint away from the radical and disruptive (associated more with startups and individuals) towards the incremental (associated more with large, established companies).
There is no solid evidence that the potential benefits of the Innovation Act’s biased fee-shifting provision would outweigh its likely substantial costs. These costs could be so large that that even if we include the touted benefits from all of the other provisions in the Innovation Act, some of which could prove useful, I doubt the Act is worth it. In the very least, we should not impose radical and potentially very costly changes in the patent system without very good evidence. As such, anyone who cares about innovation as a whole should oppose the Innovation Act as it stands.
Ya so I get filing alerts every morning so I can keep track of the scam as it unfolds. Check these two, which means two (or many) more defendants will be out a whole bunch of money, for nothing, with no recourse, which helps the economy only when some lawyers buy new rims and bid up the price of beachfront real-estate. Utterly unproductive. Utterly silly on their face. Go ahead anon, defend your precious law for producing legal atrocities like these:
US 8370199
US5618045
Martin, I suspect you don’t think a network of computers using a specific wireless topology is ineligible as abstract under 101, so what’s your argument against the ‘045 patent?
One thing you should note Martin is utter lack of the anti-patent/judicial activist to push for improved patent quality.
Lee has no experience in prosecuting patent applications and yet she is the darling of the anti-patent movement.
Night,
I’m sort of torn on this issue. On the one hand, I certainly agree with you that it would be bad if every judge on the Fed. Cir. had no background in prosecution.
However, it doesn’t bother me so much if a few judges there come from outside the relatively narrow patent law bubble a lot of us live in.
The holdings of the Fed. Cir. impact society at large, so I think it is okay if they have a non-technical background and can bring a broader perspective to the court.
If you can’t explain your technology to a lay person, you’re doing it wrong, I think.
The majority of Obama appointments have no science background. No interest in science until the opportunity for the life long grub wagon came along.
Oh come on bro, any of the judges could just as easily have done something else in the legal world (and probably made more with less effort).
The real issue here is that the Act is attempting to solve a problem that professor Sichelman ostensibly doesn’t believe exists, namely that the patent system is being abused in ways that actually undermine its principal objective of promoting invention. Those who believe this problem is serious and pervasive would naturally want to limit the profits that a patent holder can earn through such abuse. So in this way, it is not surprising at all that the Act creates advantages for defendants that are not shared by patent holders — that’s the whole point, and the professor seems to have missed it.
EE,
Rather than being missed my friend, that very nature is highlighted as being improper.
It is you that misses the point that such a slanted view is not proper, no matter the ends desired.
EE, please re-read the post. The professor didn’t say that he didn’t support reforms but that these reforms had serious problems.
In case I wasn’t sufficiently clear, what I’m saying is that some of the “serious problems” he highlights — namely the Act’s pro-defendant slant — are in fact problematic only if you disagree with the proposition that many patent holders are relying on the high costs of litigation to extract licensing settlements for bad patents. On the other hand, if you think this is the most serious problem that needs to be addressed by patent reform, then a pro-defendant slant on fee shifting may not be problematic at all, and in fact may be the very result you hope to achieve.
You were sufficiently clear.
You also remain wrong as to the “any means to a desired end” that you engage in, missing the point that Prof. Sichelman uses.
Anon and I agree here EE. One does not use a nuclear weapon when a rifle would do.
Owen describes the opposition to the use of a rifle as coming from Pharma and IBM.
IBM wants software and business method patents, so they are part of the problem, not part of the solution. This has to be well understood so that their views can be weighed appropriately.
I am not sure why Pharma opposes going after software and business method patents, but instead favors the nuclear weapon that does a real number on startups.
EE, the proponents explain that a principle source of the problem are business method and computer implemented patents of all sorts. I personally think the problem also extends generally to functional claims that essentially claim the work of others. Most of the proponents of the bill argue this is the problem in so many different ways.
But there are big buck lobbies that want these kind of patents. IBM favors, of course, business method and computer implemented patents — as do many patent attorneys.
My problem with the so-called reforms is that they demonstrably harm startups, the backbone of true innovation.
We need to focus, in my view, on the source of the problem, not its symptoms.
I agree completely Ned. Disturbing doctrines that have developed carefully for 150 years without treating the modern disease causing the (perceived) need for such distortions is a bad idea. Legislative fee shifting seriously distorting the American system seems like a nuclear option indeed- esp. with Octane/Highmark now in play. That’s why I think a software and business method carve-out and some trimming around PAE specific stuff like pleading standards, disclosure, and procedure would be a far better path. I imagine Pharma could live with that. Y’all know how I feel about IBM….
Yes Mr. Snyder, I could well imagine your outrage at losing AND footing IBM’s legal bills…
I’m also a RIA (registered investment advisor) and one of the basic laws of money holds: that which can’t be paid, won’t be paid….
RIA or not, I’m sure you realize that they would be only to take everything you have.
Is the difference all that satisfying for you?
oops
“only to”
Should read
“only too happy to”
” Indeed, even . . . universities that monetize their patents via PAEs may decide to sell their patents outright to these PAEs, rather than retain a percentage stake, because of the unnecessary risk of placing their assets on the line.”
For public universities that are not litigants to the action, can they use sovereign immunity to shield themselves from liability for attorney fees?
It would certainly provide an incentive to structure the university ownership that way.
This is contrary to the poorly reasoned analysis by organizations such as the Electronic Frontier Foundation, which wrongly assumes that PAEs are “patent trolls” that file “weak” suits and also seemingly forgets small companies are regularly sued by larger competitors.
I assure you, professor. We do not forget this. Some of the worst patent “bullies” are operating companies who — just like patent trolls — use the cost of patent litigation to extract undeserved settlements.
Furthermore, I do not understand how the analysis you say is “poorly reasoned” given that the situation you point to as the reason for this statement (threatening to take a strong case to trial) already exists against small companies being sued by patent bullies? What options do small companies have given the current status quo? (setting aside your presumption that the patent is “strong”)
Finally, I would encourage the Professor to look at some more of our blog posts, where we talk about some of the ridiculous patents that are being asserted against small companies. I would be happy to tell him of what we hear from people out there who, when faced with settlement demands or lawyer fees, are forced to settle even the most unmeritorious of cases.
You know, Vera, let’s assume what you say is true. And I have defended small companies before.
But, don’t you think that the patent system is far complex than this part of it? From my perspective, which is a complex one formed over 30 years of varied experience, patents are enormously helpful with some downsides. What bothers me about reform is that it does not seem to be crafted for intelligently identifying bad actors and figuring out how to handle them. Rather we get these reforms that are basically like carpet b@mbing patent law.
NW reforms that are basically like carpet b@mbing patent law.
This is a patent system where someone managed to successfully take a case all the way to the Supreme Court to determine if it was legal to protect a method of thinking about a correlation with a patent. And where numerous self-interested “experts” couldn’t figure out why the answer was surely “no”, where the PTO itself was completely clueless about what was going on and apparently remains completely clueless to this day, and where a bogus shell company that produces nothing and has contributed precisely squat to the progress of technology just won a half-billion (!!) dollar judgment against another company based on the “innovative” use of “payment-conditioned access rules”.
You get what you deserve.
The most depressing part is that the USPTO seems undeterred, they’re just going to keep granting obviously ineligible claims. I guess they’re just daring the rest of society to stop them?
Check out 8972417, issued this Tuesday. Took 5 seconds to find this.
Also, cherry on top: first action allowance.
The proliferation of bad patents is the root of the problem, and until that is fixed, we will continue to see abusive behavior.
Here’s claim 1 from the patent Go Arthur mentioned. Is this really promoting progress?
1. A method for recommending an out-of-network communication recipient, the method comprising:
determining a set of potential recommended members of a social networking service;
determining for each particular member in the set of potential recommended members: a profile similarity score, the profile similarity score indicating a measure of how similar the particular member is to a previous target member of an out-of-network communication of a sending member;
and a recommendation criteria score, the recommendation criteria score being a measure of how closely the particular member matches a recommendation criteria;
determining a set of recommended members from the set of potential recommended members based upon the profile similarity scores and the recommendation criteria scores of the members in the set of potential recommended members;
presenting the set of recommended members to the sending member;
and sending an out-of-network communication to a selected member of the set of recommended member from the sending member.
Garbage in, garbage out.
I am very leery of any argument that a claim is a bad claim without a solid 102/103/112 argument.
I was once a product manager that competed with products from companies like Apple, Nokia, etc. I found out just how powerful hindsight was. It amazed me that how obvious improvements to the products seemed to me once I saw them and yet a large team of us would miss them.
Hindsight reasoning is incredibly powerful. The human mind is terrible, simply terrible at figuring out how hard something was. But actually go through it a couple of times and you learn.
For those reasons, I am very leery about pasting a claim up and saying “junk.” And that is why Alice has to go.
Ok, how about Millionaire Matchmaker?
Go watch Bravo and then come back and tell me how this patent isn’t junk (FYI priority date is 2013)
I know there are lots of junk patents. I note that the reforms (except for the one giving the PTO the ability to set fees and to keep the money) aren’t helping.
The funny thing is that outsiders to patents think that patent attorneys like junk patents. Real patent attorneys do not.
For example, I was looking through a large client’s portfolio the other day from our law firm. I noticed that about 1/2 the allowances were just allowances for no real good reason. About 1/2 the allowances were hard fought with claim amendments where the claims were good and deserved.
The first 1/2 anyone can do. A patent agent that knows nothing. The second 1/2 takes an experienced prosecutor.
Good patent attorneys embrace higher quality patents.
I know there are lots of junk patents.
In fact, more junky information- and information logic-protecting patents have been granted in the past fifteen years than any time before in the entire history of the earth’s collected patent systems. And they are still flowing out of the office like never before.
And it’s those patents that we seeing being collected by “patent assertion entities” who don’t even pretend in most cases to contribute anything other to society except for patent lawsuits. Sure, they tell pleasing myths about helping “little guys” but those “little guys” are typically (1) not “little” at all compared to 99% of the population and (2) these professional trolls have, apparently, no problem at all increasing costs and making life more difficulty for all the genuinely small business owners out there.
It’s a transparent game of grift and you’ve been cheerleading these folks for years. Meanwhile, you accuse your critics of being just like “rapers and killers” and you can’t tell the difference between a patent and an actual device covered by the patent.
Give us a break, already.
MM would you stop this blasting. How in the world could I ever have an exchange with Vera if you blast us with your stuff that is the same day in and day out. You know my answers to your bag of arguments.
I am very leery of any argument that a claim is a bad claim without a solid 102/103/112 argument.
Translation: “I can’t read, nor do I recognize the existence of subject matter eligibility restrictions on claims that recite ‘networks’.”
Must you junk up this thread with your propaganda.
And also Vera, if you believe that patent quality is the number one problem, then I think we should all be noting how terrible the reforms are at improving patent quality.
Maybe the reforms should be geared towards modernizing the PTO (go back to TSM, which could be outsourced) and do better searches and training. A lot can be done.
You know, funny thing is that real patent attorneys embrace higher quality examination. It makes what we do more valuable and we know (because we know patents work) that it will increase the rate of innovation.
Consider that Obama appointed someone that is clearly not qualified to improve patent quality. How on earth can Lee someone with pretty much zero experience in prosecution hope to improve patent quality? It is not going to happen. The same can be said of Obama appointing none science majors to the Fed. Cir.
So, Vera, maybe there is a lot we could work together on.
Maybe the reforms should be geared towards modernizing the PTO (go back to TSM, which could be outsourced) and do better searches and training.
Be specific. Tell us how, in your “modernized” system, the PTO is going to compare “new” information processing logic with “old” information processing logic when the underlying subject matter (data) is abstract and as infinitely shaded as the English language. Is “new” algorith “If data X then data Y” going to be patentable over “If data Y then data Z”? If so, under what circumstances and why?
For comparison purposes, there’s absolutely no similarity between creating a database of this sort and training people how to use it and the creation of a database for, e.g., searching and examining novel nucleic acid or protein sequences. And we all know why there’s no similarity (you, at least, should know why because you’ve been educated on the topic numerous times).
You’ve had 30 years to think about this, Mr. Expert. Go ahead and tell us how to do it. I can hardly wait.
Maybe the reforms should be geared towards modernizing the PTO (go back to TSM, which could be outsourced)
Only Night could argue for higher quality by asking the office to explicitly overrule the Supreme Court.
Sidenote: From a practical standpoint, the office never moved off of the TSM standard.
I am not asking the PTO to overrule the SCOTUS. First, the PTO could go back to TSM as a base case and still be in compliance with the SCOTUS. Second, we are talking about reform. Congress is supposed to be in charge of this despite the fact that the SCOTUS has taken over its legislative role.
That isn’t true RandomGuy. TSM used to be the rule of law. Examiners looked for TSM and that was pretty much what we argued about.
Examiners looked for TSM and that was pretty much what we argued about.
So much has changed!
Good grief.
“Examiners looked for TSM and that was pretty much what we argued about.”
That’s pretty much what we still do 95% of the time over here in the useful arts. Except I let the attorneys do the arguing, I just send rejections or accept what they have to say, unless I work something out with them.
You guys are n#ts. TSM is nowhere near as used as it used to be.
Be a good paper. Maybe Lemley could write it and find some way to spin everything so that new common law would be created that found TSMs really don’t need to be before the invention.
“You guys are n#ts. TSM is nowhere near as used as it used to be.”
Maybe not in the non-useful arts. Over in the useful arts there’s mountains o evidence the contrary.
Are those the useful arts that have barely grown in our GDP in the last 10 years while the information processing useful arts have been soaring due to the wonderful patent system?
Examiners looked for TSM and that was pretty much what we argued about.
And the Supreme Court specifically said that is not a per se test.
TSM used to be the rule of law.
So was flash of inspiration. Maybe the PTO ought to go back to that test, it has as much legal basis now as TSM does, hahahaha.
“Sidenote: From a practical standpoint, the office never moved off of the TSM standard.”
Echo consistency called – they were wondering if you ever heard of this thing called credibility.
Random>So was flash of inspiration. Maybe the PTO ought to go back to that test, it has as much legal basis now as TSM does, hahahaha.
Random, first. No. TSM has lots of legal basis. Obviously you are not an attorney or a shill. Second, go back and read what I wrote.
Vera: The proliferation of bad patents is the root of the problem, and until that is fixed, we will continue to see abusive behavior.
Here’s claim 1 from the patent Go Arthur mentioned. Is this really promoting progress?
1. A method for … (snip)
Garbage in, garbage out.
It may be difficult to have a reasoned policy debate in this forum but let me try.
What exactly do you find objectionable about that patent claim? Please don’t be flip and sarcastic like certain other posters tend to. Be honest and thoughtful.
Has it been done before? Make your 102 argument.
Is it obvious to PHOSITA? Make your 103 argument.
How do you define progress? If the claimed method is neither obvious nor old, is it nevertheless not progress?
Is it because it’s a method? In your opinion, how should Congress instruct the PTO to discern between patentable methods and unpatentable methods? Alternately, do you believe Congress should strike “process” from 35 USC 101?
Is it because the method involves data input, manipulation, and output? In your opinion, should all methods that involve data input, manipulation, and output be excluded from patentability?
Is it because reading it makes you want to smack your forehead and say “Geez, that’s so trivial!” Do you believe 35 USC 101 should prohibit trivial inventions? Do you believe that trivial inventions can or cannot be easily disposed of via 35 USC 103?
I will leave you with an example I have proposed here before. Suppose an engineer develops an algorithm for playing the content of existing Blu-ray discs on existing televisions with better fidelity and less motion blur, so action movies look better during playback. He writes software for Blu-ray players that is downloadable at the manufacturer websites as a firmware driver update. Should that be patentable?
If so, how do you distinguish between “reading data from an existing Blu-ray disc, processing it according to novel/non-obvious algorithm X, and outputting it as a video signal to an existing display device” and the claim you quoted above, for purposes of deciding whether one or both are “garbage”?
Is it because the method involves data input, manipulation, and output?
There’s a pretty strong argument to be made that pure data input and manipulation is something that passed to the public when the generic computer’s term ran. It doesn’t make a lot of sense to say that the subject of the known processing power allows for a repatenting when you don’t get to repatent, for example, an old book which is written on a non-obvious subject, or an old flashlight that is shone upon a novel, non-obvious structure. That argument works on both a 101 and a 103 level.
With respect to the particular claim, it seems pretty obvious that it is doing a mental step but simply “doing it on a computer.” That’s an Alice violation. Determining scores without limiting the manner in which the scores are determined are pretty clearly in violation of 112(a) because they’re overbroad. Further, anyone who has used either a social network or dating website in the past decade knows that everything other than the message send at the end is how all of these things work.
If you tell your friend “I met a girl last night who also likes craft beer, you should call her” you’ve met like 70% of the limitations. Setting people up based upon similarities (profile similarity score) and desired traits (recommendation criteria score) has been around since…I dunno the Garden of Eden, if you believe in that sort of thing.
Your first paragraph is a fair critique, but I’d suggest that it’s more apt in the 103 realm than in 101. If data input/manipulation was ever eligible for patenting, then it is still eligible for patenting “subject to the conditions and requirements of this title,” namely novelty and non-obviousness. Unlike the UK Patents Act, nothing in 35 USC 101 specifically disclaims any particular field of alleged invention. We’ve had to rely on the courts for that and they’ve been fairly unpredictable. That’s not a good way to run a major part of one’s economy.
And with respect, “Alice violation” is only apropos now because the courts have recently ruled in a particular way. I’m less concerned with what is the practical state of patent policy and more about what it should be.
Do you think improvements to operating system software should be patentable? Do you think they are, under current court and PTO precedent?
(For anyone who thinks “that’s easy,” go implement Nachos and then get back to me.)
“There’s a pretty strong argument to be made that pure data input and manipulation”
Let me know when you see a claim that is this pure thing.
Is it anything like the pure lines and numbers on a measuring cup? Or the pure writing of numbers on a hat band?
Please tell. Do.
Is it anything like the pure lines and numbers on a measuring cup? Or the pure writing of numbers on a hat band?
THE GREATEST INVENTIONS EVER MADE SO SAYETH THE SUPREME COURT
Except not.
SlotGuy: We’ve had to rely on the courts for that and they’ve been fairly unpredictable. That’s not a good way to run a major part of one’s economy.
Another great reason why information processing logic doesn’t belong in the patent system — as has already been explained numerous times.
But don’t forget: that “unpredictability” can work quite awesomely for you if you have $1 billion to gain by asserting your patent against all the major players in an industry and just a tiny piddling percentage of that to lose because your investment costs are nada and produce zilcho except lawsuits.
Or haven’t you figured that out already? Of course you’ve figured that out already. That’s why you’re here.
If data input/manipulation was ever eligible for patenting, then it is still eligible for patenting “subject to the conditions and requirements of this title,” namely novelty and non-obviousness.
That’s clearly not a per se rule, because both the method and the computer in Alice were at one point eligible, but by the time the Alice application was filed neither was enough to confer eligibility.
I think the way it should be thought about is as follows: At first X is novel and non-obvious and patentable. After that, when an applicant asserts that they invented X, the claim is eligible and fails 102/103. But at some point further than that, even the Applicant is aware (or can be taken to be aware) that X pre-existed, and he simply fails to assert subject matter that is new or improved upon it.
For example, at one point, there was no paper, and thus the making of paper was enough not only to confer eligibility but patentability. Then there was a period during which paper was eligible but not patentable. And now there are certain contexts (such as where one asserts a claim on a book with particular wording on it) where a fair reading of the spec shows an admittance by the applicant that paper preexisted, and paper no longer becomes a thing that inherently confers eligibility (and since the words don’t confer it either, the scope is ineligible). i.e. There exists a time when the “improvement” is not cognizable under patent law, and thus the claim asserts neither anything new nor improved.
And with respect, “Alice violation” is only apropos now because the courts have recently ruled in a particular way. I’m less concerned with what is the practical state of patent policy and more about what it should be.
Well with respect, Alice isn’t asserting any particular logical basis that isn’t in Morse. Alice articulated the particular two part test, but the overbreadth concern and logic thereto is no different with functionally claimed software than functionally claimed machinery.
Do you think improvements to operating system software should be patentable? Do you think they are, under current court and PTO precedent?
I assume you mean eligible and not patentable, as I think very little in software of the scopes that are routinely talked about are patentable. I have no problem with any type of software being eligible so long as the scope is proper. If you’re going to have someone properly apply KSR and Lizardtech, you don’t have to reach this 101 issue which is really just an overbreadth issue. I can’t discuss particular issues (like operating system improvements) unless I see a claim, because there are some narrowly tailored claims that don’t violate 101/112/103, and there are functional broad claims which violate all three.
Greatest inventions?
Um, not sure where in the legal conversation such a “requirement” came up – oh wait, it didn’t.
Consistency of dissembling does not bring credibility.
>There’s a pretty strong argument to be made that pure >data input and manipulation is something that passed to >the public when the generic computer’s term ran.
This is a ridiculous statement. It like saying the first time that a person learned that if you mixed carbon with iron you got steel that all other mixing of metals was dedicated to the public. Or the first time a person figured out how to make gun power all other chemicals compounds were dedicated to the public.
What I do find offensive about your post Random, is that it dismisses what is perhaps the hardest art unit to supposedly being trivial, which of course was Posner’s and Stevens’s game of saying you just put down on paper what you want and give it to a boy with a pizza and they will make it happen. Nothing. Could. Be. Further. From. The. Truth.
I would go so far as to say that your statements should disqualify you from any further discussion.
It like saying the first time that a person learned that if you mixed carbon with iron you got steel that all other mixing of metals was dedicated to the public. Or the first time a person figured out how to make gun power all other chemicals compounds were dedicated to the public.
Chemicals are an unpredictable art, computer software is not. If chemicals obeyed the same KNOWN, PREDICTABLE RULES without fail the way software does, then of course a first mixing would render obvious all other mixings.
The fact that you think a software example “is like” a chemical one shows you don’t understand KSR or obviousness.
Repeating your erroneous views on predictability does you no good.
Your logic path leads only to inventions for Oops-mistakes and Flashes of Genius.
That’s just not the law.
(Your falling prey to that evisceration thing again)
SlotGuy, what is it about pretending that you were born yesterday that you believe makes a compelling argument for patenting information processing in functional terms completely divorced from any new technology?
Serious question. Because if you aren’t pretending to be born yesterday, then you either were actually born yesterday or you’re stone ignorant.
Suppose an engineer develops an algorithm for playing the content of existing Blu-ray discs on existing televisions with better fidelity and less motion blur, so action movies look better during playback. He writes software for Blu-ray players that is downloadable at the manufacturer websites as a firmware driver update. Should that be patentable?
Nope. Any other questions? That one was easy.
Are you going to sit there and tell us that people won’t improve Blu-Ray player processing if we don’t grant patents on algorithms? Go ahead and make that argument. It’s a joke argument and you have no evidence to support it and you never will but I’d love to see you make it.
how do you distinguish between “reading data from an existing Blu-ray disc, processing it according to novel/non-obvious algorithm X, and outputting it as a video signal to an existing display device” and the claim you quoted above, for purposes of deciding whether one or both are “garbage”?
Answer 1: there’s no “algorithm” in the claim above unless you want to stretch the term to include “scoring similarities” as a patent-worthy algorithm. Is that what you want do, SlotGuy? Promote progress in the “scoring similarities” arts? Please say yes. Please, please, please just say yes so we can all see where you’re coming from.
Answer 2 (not my preferred answer but maybe you’ll like it): asssuming your algorithm is a bona fide recitation of some new math, one claim protects a “non-obvious” math equation (totally different from all those other “merely novel” math equations!!) used in a method of improving the accuracy with which stored data corresponding to captured moving images is displayed, where (1) the alleged improvement can be objectively measured and verified; (2) where the alleged improvement doesn’t involve abstract relationships, such as relationships between people or between people and other abstractions (e.g., “subscribers”; “belongers”); and (3) where the alleged improvement (an algorithm for converting digital data into moving images on a screen) has no utility outside of the dedicated machine (Blu-Ray player — and more specifically, the specific Blu-Ray player operating system that is improved by this specific algorithm).
The junk claim that just got issued, on the other hand, is directed to deciding who gets to receive a message based on “scoring” some “similarities” “on a computer”. It merely purports to automate (“on a computer”) an otherwise ineligible process for communicating information on a machine that was designed for that purpose (i.e., “a computer”).
So there you go. Could I come up with more distinctions? Probably. But how about you do the work for a change?
The software patent lovers are always defending junk and asking everyone else to do the work for them. But isn’t that the way that the defenders of the lowest form of innovation have always behaved? It’s always so mysterious to these guys that everybody else doesn’t love and appreciate their awesomeness, not to mention their super awesome patents that are totally necessary because they say so.
If you think that issued piece of junk we’re discussing is the exactly what our patent system should be protecting right now, then just come out and say so, SlotGuy! Celebrate it! Don’t be shy. Or if you think otherwise, then you tell us what makes it different. Or we can tell you what some possible differences are and then listen to you whine and cry about it, for the millionth time.
I suspect the way to distinguish between the hypothetical BlueRay claim and the social network claim here has to do with the information which is transformed.
The hypothetical BlueRay claim makes no mention of the information content of the movie, it is solely concerned with processing the stored bytes (not abstract) on the disk into pixels (not abstract) on the screen.
The social network claim on the other hand processes abstract information into more abstract information. We would have to look further (in the light of Mayo) to see:
1) Are each of the steps that process abstract information conventional? Yes. (determining, comparing). The information is novel, but the processing is not.
2) Are the computer implementations of each of the steps conventional? Yes (determining and comparing with a computer).
What I would like to say here is:
Any computer implemented process in which each step transforms abstract (non tangible) information into abstract (non tangible) information in a conventional manner and where each step of the process is implemented on the computer in a conventional manner is an abstract idea of a process and not 101 eligible.
But I cant say that!
Instead I have to wander up and down a ladder of Alice abstractions to pick the correct abstract idea.
Slashdot: 1) Are each of the steps that process abstract information conventional? Yes. (determining, comparing). The information is novel, but the processing is not.
2) Are the computer implementations of each of the steps conventional? Yes (determining and comparing with a computer).
What I would like to say here is:
Any computer implemented process in which each step transforms abstract (non tangible) information into abstract (non tangible) information in a conventional manner and where each step of the process is implemented on the computer in a conventional manner is an abstract idea of a process and not 101 eligible.
But I cant say that!
You certainly can say that, and you should. It seems entirely reasonable and consistent with the Supreme Court’s 101 decisions to date. The sticky point is this term “conventional” …
Instead I have to wander up and down a ladder of Alice abstractions to pick the correct abstract idea.
And that would be different from 112 or 103 how?
The best example I can think of is this:
Claim 1: A bus that is improved by painting it a novel, non-obvious decorative and non-functional shade of purple.
In this case the “new” or “improved” purple bus only differs from a bus in a manner that patent law does not recognize from the standpoint of a utility patent. It bears noting that 101 would likely be the only rejection one could make on the claim. I would assert that patent law views Claim 1 no different than Claim 2 –
Claim 2: An old, unimproved bus.
“The best example I can think of… decorative and non-functional shade of purple.”
Your “best example” only highlights the deception, as clearly, software is NOT a decorative, non-functional shade of color.
Software is EXPRESSLY functional – that is why it is manufactured in the first place.
Time to stop the dissembling.
Your “best example” only highlights the deception, as clearly, software is NOT a decorative, non-functional shade of color.
Of course software is functional. The point I was making is that when the distinction between Old X and New Y is something patent law does not recognize, the thing that is colloquially “new” is, under patent law, still “old.”
When the difference between a generic computer and a “new” computer is described only by an idea, and an idea is not recognized as a patentable distinction, the claim isn’t describing something new under patent law. In your parlance, an oldbox and a newbox are different colloquially, the way my oldbus and newbus are, but under patent law there is no newbus (as patent law doesn’t “see” the difference) and no newbox unless newbox is described in a manner that patent law appreciates.
Nice FAIL Random, as you well know (or should), words have patentable weight when there is a functional relationship.
I’ve shared several cases with you quite often. Cases even outside of your curse-ade target of software.
Your point is simply an invalid one, as patent law very much does recognize the correctness of my statements – and the error of yours.
Then you repeat the Malcolm error of wanting one optional manner of claiming to be the only manner of claiming…
That too, is plain error under the law; and that too I have explained in detail to you, with references to the Act of 1952, Frederico’s Commentaries on the Act as well as case law.
You have provided nothing but repetition of your conclusory statements.
Random, what about
1. A system of traffic control signs including colors, shapes and words.
2. A system of mileage marker spaced a mile apart and having a number, the number being the number of markers to the gates of Rome.
Nice FAIL Random, as you well know (or should), words have patentable weight when there is a functional relationship.
Always? Because I’m pretty sure the software of Alice had a functional relationship, but that wasn’t given sufficient weight to overcome 101, did it? See this is why I can say Scoreboard. You can spout platitudes, but it turns out those platitudes don’t hold up in court, which is the only place someone needs to win.
Then you repeat the Malcolm error of wanting one optional manner of claiming to be the only manner of claiming…
What I want is irrelevant. What is relevant is that a claim has to run a gauntlet of 101, 103 and 112, and some language is better able to do that than others, and the sooner people who fail to follow hundreds of years of law get that, the better off we’ll all be.
What about 1. A system of traffic control signs including colors, shapes and words.
2. A system of mileage marker spaced a mile apart and having a number, the number being the number of markers to the gates of Rome.
Let’s start by pointing out what I’m talking about here – the point I am making is that there are times when the law does not give weight such that we don’t have a “new” invention. That necessarily requires an inquiry into the state of the art, i.e. this is a time where you’re looking at prior art outside of the 102/103 context. It’s insufficient to simply give the claims without talking about what the art was prior to the claims.
If the art prior to the claims was that you could write words, paint and shape signs, then a claim to a PARTICULAR SYSTEM (i.e. not what Claim 1 is) would be eligible. But if the art was that you could write words, paint and shape signs and Claim 1 is presented as constituted (i.e. it only claims THAT A SYSTEM COULD BE MADE) then there is no eligibility, because it was in the nature of words/colors/shapes that they can convey meanings prior to this instant application. It makes no more sense to claim Claim 1 than it does to claim “using language to convey information.” Contrast Claim 1 with, for example, Morse Code. That’s a particular system. A particular system is eligible because now the invention is not that “information can be conveyed”, it’s that “this particular information conveys this particular thing”. You’ll note that this is the problem of functional language in general, which you’ve fallen prey to here.
Contrast that situation with a society that could not, for example, shape or write upon signs prior to this. Now the improvement described by the claim is an improvement to cause a structural change to a material – clearly eligible.
Contrast again with an applicant who admits he knew of the US traffic control system beforehand but did a patent search and found it had not been patented – this applicant has admitted not only a 102 rejection, but a 101 rejection as well – the applicant knows he is not an inventor, nor has he taken an act to create something new or improved. Here it is important to note that if Congress were to act to waive the requirements of 102/103/112 with respect to this particular application (something certainly within their power), we would have a constitutional rebuke of Congress’ authority, as the patent power does not extend to withdraw post-facto from the public what is theirs.
With the above in mind, Claim 2 ought to be easy – here we have a particular system, because you’ve given the requirement that the signs are a mile apart (I assume of course, it is new in the hypothetical – clearly that claim in this world is ineligible because one historically knows that system was, in fact, done). Contrast it with a claim such as “using writing on sign posts to express distance” which, if the art knew how to previously write on sign posts, would be ineligible. That would be a statement of “intended use”, providing no weight.
As someone else noticed. PTO director is employing a Cloward-Piven Strategy, link to en.wikipedia.org, to bring down the patent system.
Ahh I think the office brought it on themselves….
And also, the Cloward-Piven Strategy expressly seeks a replacement institution to BETTER the mission, not destroy it…
Ahistorical reference here..
Not so much the PTO, but the historical Patent Bar/Rich alliance, although persistent expansion of patentable subject matter combined with a bias in favor of functional claims was not directly intended to do anything but benefit patent attorneys.
anon, it is clear that as a co-drafter of the ’52 Act, Rich was trying to put his personal gloss on it regardless of the words of congress.
Something like that is going on now in the new Obamacare case at the Supreme Court where the government is trying to argue for an interpretation based upon intent and purpose of the drafters of the bill rather than on the words actually enacted.