Judge Stark Set to Reduce (and Potentially Eliminate) Intellectual Ventures’ $17m Verdict Award

In February 2015, a Delaware Jury sided with Intellectual Ventures in its case against Symantec — finding that the security software company was infringing two IV patents and awarding $17 million in damages. U.S. Patent Nos. 6,073,142 and 5,987,610.

In an interesting post-verdict letter, Judge Stark has noted that the damages may have to be reduced because of the lack of evidence that the patented features “drove demand” for the accused products. [1-10-cv-01067-LPS-691-PRIMARY DOCUMENT]. I should note here that the letter is expressly not (yet) an order.

At trial, Intellectual Ventures damages expert (Michael Wagner) took the risky strategy of presenting only testimony relating to damages under the entire market value rule and did not offer a fallback reasonable royalty position.  That approach kept choices simple for the jury, but now it seems that the entire-market-value calculation likely lacks sufficient supporting evidence. If that testimony is disregarded then the only fall-back position is the damage evidence presented by Symantec’s expert.  Although that figure is currently under seal, it is most certainly significantly less than the $17 million award.

Judge Stark has also ordered post-trial briefing on whether the asserted claims lack patentable subject matter under Section 101 with the hope of resolving that issue before a second trial where IV is asserting the same patents against Trend Micro.  Obviously, a Section 101 ruling could eliminate the damage award in full.

= = = = =

About half of the award was associated with Symantec’s infringement of Claim 7 of the ‘610 patent. Claim 7 is a dependent claim (from claim 1), but I have rewritten it below in its equivalent independent form:

7. A virus screening method comprising the steps of:
routing a call between a calling party and a called party of a telephone network;
receiving, within the telephone network, computer data from a first party selected from the group consisting of the calling party and the called party;
detecting, within the telephone network, a virus in the computer data; and
in response to detecting the virus, inhibiting communication of at least a portion of the computer data from the telephone network to a second party selected from the group consisting of the calling party and the called party; and further comprising the step of determining that virus screening is to be applied to the call based upon at least one of an identification code of the calling party and an identification code of the called party.

286 thoughts on “Judge Stark Set to Reduce (and Potentially Eliminate) Intellectual Ventures’ $17m Verdict Award

  1. Random’s arguments here about KSR also seem relevant to the issue of exhaustion involved in the New York Times case. Assume one buys a widget. Under the law of exhaustion, one has a right to use this widget for all uses – albeit, as we learned in the Monsanto v. Bowman, the right to use does not embrace the right to make new copies. Nor does a right to use embrace the right to use the widget in the making of another patented combination or or practicing another patented method – unless, I would argue, that combination or method’s patentability wholly depends upon the presence of the widget, or the novel features of the widget, in the claim.

    But this is KSR as well, is it not? If one combines the widget with something else and that something else is nothing more than an expected use of the widget the first place, such a claim cannot be patentable.

      1. Well anon, I think one’s only recourse is to prove that other patent invalid — as it violates KSR, just for example.

        1. I am alluding to the (very) wide scope of innovation activity that is concerned NOT with Flash of Genius first-breakthrough, but rather with the flurry of follow on innovation.

          There is (again) the specter of evisceration that is (purposefully) being “not seen.”

          This goes to ALL art fields.

    1. Had a real case once – involving a motor patent where the owner, using a broadening reissue, also obtained claims to the combination of the motor and a disk drive. My client bought covered motors from a licensed motor vendor. Nevertheless we were sued.

      During mediation, the doctrine of exhaustion was not “recognized” in the Federal Circuit, so we argued implied license instead. At the time, this was equivalent, or at least, so we thought. But the mediator ruled against us because, and this was true, the motors were useful for applications other than disk drives and further because the patentee had restricted the sale of the motors to disk drive companies so as to not give the disk drive companies and implied license. An unrestricted license was strictly verboten.

      Post Quanta, I think we would have had a clear win had we argued exhaustion because post-sale unilateral restrictions were deemed unavailing. But that was then, and this is now.

      Post KSR, and this is to Random’s argument, if the patent was held by other than the original patentee, the patent would have been invalid as the use of the patented motor in a disk drive was an expected and ordinary application so that third parties could not patent that use.

  2. I guess just looking through this I just wonder how Dennis can maintain the position that MM is not a paid blogger. 10 years of being the largest blogger on her and putting 40+ hours a week into blogging on this site and others.

    MM clogs up every discussion with his repetition of his propaganda from his employers.

  3. “If some patent falls into to a covered category, but is plainly an old invention that can’t even pass a common sense test, 101 is a reasonable place to invalidate it”

    And this, my friends (and enemies) is the problem. This is not the-one-who-shall-not-be-named, but plainly his (her?) position. No need for prior art, no need for proof – it’s “common sense” (nevermind to many others, it’s not common sense), it’s “plain” on its face (nevermind that there’s no prior art showing it).

    Why undergo a rigorous, logically, legally based analysis, when we can go with the gut?

    Congrats to everyone who can actually look someone in the eye and say without missing a beat “yes, that disk in your hand was statutory subject matter when it was first claimed, but because it’s claimed with a program stored on it, how could you possibly believe it a product covered by 101?”

    1. The scary thing about this is that many of the followers don’t even seem to understand why this is a problem. Just imagine what criminal court will look like when this lot gets to re-tool it with their new Alice case law.

  4. Since the subject here is the “Entire Market Value Rule” for patent infringement damages, here are some recent cases to discuss [which cite much older cases, since this is not new law]: The patent owner can get damages based on the entire market value of the [entire] accused product only where the patented feature creates the basis for consumer demand. [Or perhaps a consumer demand value of a severable, separately accountable, component part of the accused product?] Versata Software v SAP (Fed. Cir. 2013), VirnetX v. Cisco (Sept. 2014) and Ericsson v D-Link (Dec. 2014). Adequate proof of this “nexus” between the patented feature and the consumer demand for the entire product is often difficult, as discussed here before, without a properly run consumer survey in evidence. Especially for multi-function, multi-feature products.

      1. Perhaps “what were the alternatives at the time of the manufacture” might be some evidence providing the defendant was aware of the possible infringement of that patent back when they made their selection between product alternatives to make or sell. But that prior knowledge is usually not the case these days, outside of pharma, with millions of patents in force each containing even more claims. In any case, I do not see how that alone is sufficient proof for the Entire Market Value Rule that the commercial success of the defendants product was due to the patented feature rather than to market power, advertising, lower prices, etc.?

        That said, as to MM’s note, there are products like some pharmaceuticals, or even the recent case of a superior new windshield wiper sold at a premium price based on its patented feature superiority, where proof of the“nexus” between the patented feature and the consumer demand for the entire product is not totally impossible.

        1. Why would “some evidence providing the defendant was aware of the possible infringement of that patent back when they made their selection between product alternative” have anything to do with anything except perhaps the treble damage aspect of willful infringement?

    1. Paul: adequate proof of this “nexus” between the patented feature and the consumer demand for the entire product is often difficult, as discussed here before, without a properly run consumer survey in evidence.

      Impossible is more like it.

      And it’s also critical that such a survey addresses the specific embodiments actually disclosed by the patentee (what specific viruses are being detected and what software is being used to detect those viruses) and/or the specific embodiments actually implemented by the accused infringer, and not the ridiculous scope of the claim at issue. A key question is: what percentage of viruses would be detected by implemeting the specific software disclosed in the patentee’s application? How much is that level of protection “worth”? What percentage of viruses were actually detected by the accused infringer’s methods? How much is that level of protection worth?

      1. critical that… the specific embodiments actually disclosed…, and not the ridiculous scope

        That is CLEARLY not the law.

        As this is not the law, and is merely your opinion of what you want the law to be, please try to convince me why this is so critical. If indeed so critical, how has Congress gotten by since the founding of this country without having this as law?

        I think that your Red Queen edict needs some serious groundwork to support the supposed “critical ness.”

      2. MM, the virus checking per se is entirely old and has nothing to do with the invention.

        The only thing new in the claim is the use of signaling codes to signal the telephone network to conduct the virus checking.

        1. See the way it works Ned according to the Lemley is that if you put something in there like a light detector if you don’t disclose every possible light detector then it is invalid under 112. It is a new push to increase the size of the patent applications to be in excess of 100,000 pages each.

          1. It’s also a rather weak attempt to curb the (unforeseen) consequence that happened when the Supremes super-empowered PHOSITA in KSR, thus reducing the bar as to what needs to be included in patent applications (which expressly tell people not to include what PHOSITA may know), and not-so-paradoxically makes the use of descriptions sounding in functional language (a power expressly broadened by the Act of 1952) stronger.

    2. “The basis.”

      This too is a problem.

      What if one proves “a basis?”

      Is this sufficient to support the jury verdict?

    1. While a technical person, she is still a politician…

      I will give you that more and more politicians are choosing this plank to rally about, and I do suppose that’s a good thing, but I would still be cautious when dealing with anyone stumping on the political trails.

      1. I agree anon. But, let’s be real. Alice illustrates a complete failure by the SCOTUS to respect the rule of law and a complete disregard for the reality of science. Alice would seem very natural in medieval Europe.

        1. To be clear, the reason Alice is so bad is because it wants to skip the real work and allow a judge to be judge, jury, and executioner with no due process.

          The ground game is find prior art and build arguments why it is obvious. If you can’t do that, then it most likely deserves a patent. I have yet to see a single claim despite multiple challenges on this blog of a claim that was somehow obviously underserving of a patent, and yet it would be impossible to come up with a 103 argument.

          That’s because this is one of the fictions of the Lemley.

          1. Completely agree – and I would add that our friend Mr. Snyder only too willingly reiforces this notion as per his early comments that 101 should be used purely for convenience to avoid the costs of 103.

            I find it absolutely amazing how eager anti-software people are to NOT want to understand the actual history of patent law and how – and why – 103 was created.

            This is indeed not rocket science and anyone (and everyone) wanting to join the conversation should be aware – and should respect – this history.

            1. I agree anon. I think what is even more scary to me is that this is not isolated to patent law. Image Alice in criminal law. It would basically be a judge just sitting their in his/her chambers generating arguments why you are guilty or not guilt.

            2. anon, you habitually mischaracterize other people’s positions in addition to creating strawmen arguments at every turn. Even the unsophisticated know that those are rhetorical tactics indicating weak positions.

              As you may recall, prior to the Alice decision, there was much talk of where procedurally 101 decisions should be made. I argued, as did most others, that the start of the case, using the only the pleadings and the patents, was the smarter choice because of the huge financial and time burdens faced by defendants to get to a 102/103/112 decision.

              I also argued (and still do) that your obsession with the primacy of congress in the operations of law is misplaced. We have three co-equal branches, and while congress can say anything they like, the courts ultimately say what the law is, even beyond statues and procedures, because there is a substantial Rule of Law argument that high courts can do whatever they need to do to avoid manifest injustice.

              Section 101 includes some inquiry as to novelty. However sharp or blunt that inquiry may be as it interplays with the other sections of the law and the established procedures of the courts, it seems to me that only subject matter extremists think there is no novelty inquiry there whatsoever.

              If some patent falls into to a covered category, but is plainly an old invention that can’t even pass a common sense test, 101 is a reasonable place to invalidate it, especially to avoid huge costs for people innocently accused of infringement. I know you could give a fig about the immorality of those costs, but courts are supposed to care about flat injustice happening on their watch. A judge should be able to “gist” something that is as plain as day. That’s been my position and it has not changed.

              Patent lawyers don’t get a lot of trial experience, but its pretty clear in the day to day workings of the law across the land that judges powerfully influence just what bits of rules and laws end up influencing final outcomes. Its not a bug, its a feature of our system, like it or not.

              1. Martin, anon reflects a view very common among patent attorneys and the patent VIPs who largely view the Supreme Court and most circuit courts as “a problem.” They erect lobbying organizations in Washington to try to change the law all the time in their favor — the favor of patent attorneys and these VIPs.

                What have they done in recent history?

                1. Federal Circuit — to take judicial control of the patent system as best they could manage. They wanted to staff its bench with patent attorneys — just like Rich.

                2. ’52 Act – to overturn a number of Supreme Court decisions.

                3. Sundry acts between ’52 and the AIA to limit the effect of the Supreme Court decision that secret prior art (102(e)) was available for obviousness purposes.

                4. Acts to fix other precedents they did not like — to numerous to fully catalog.

                5. Reexaminations, IPRs and the like to address the problem of juries deciding patent validity. Essentially they wanted to “lower” the bar — preponderance of evidence, BRI in the PTO — so that they could get rid of patents brought against the VIPs more “reliably.”

                6. The AIA to feather the nests of the VIPs at the expense of the small fry.

                7. And the Goodlatte Bill to address the so-call troll problem.

                In all of this, one see a central figure guiding virtually every move — and to its favor.

                Yes. IBM

                1. Ned,

                  With all due respect, you are completely off your rocker if you think ANY of my positions have been against true innovation and in favor of the Big Corp and their desire to weaken patents.

                  Truly absurd of you.

                2. Ned, the AIA greatly weakened patents. It is true that patents were made more for the elite due to the AIA, but the AIA greatly weakened the value of all patents. I don’t believe that IBM would have wanted that.

                  If you want to clean things up, Congress should get rid of Alice, Benson, etc.

                  And modernize the PTO.

                3. Ned,

                  Your unadorned adoration of the judiciary (especially the Supremes) distorts and unbalances the careful tri-part checks and balances (and is reflected by those less savvy like Mr. Snyder having a warped view of the power of the Court).

                  Further, Try telling me the Court is not a political beast…

                  link to huffingtonpost.com?

    2. “Carly Fiorina excoriated a Republican patent reform proposal in a speech to inventors on Wednesday, comparing it to Obamacare and Dodd-Frank.

      Fiorina gave the keynote address at the Inventing America conference, at which representatives from universities, companies and non-profit foundations came together to discuss the current state of intellectual property rights in America.

      A running theme throughout the conference was the attendees’ animated opposition to the Innovation Act (H.R. 9), a bill sponsored by Republican Rep. Bob Goodlatte that is intended to discourage abusive patent litigation, known as patent trolling.”

      Now Ms. Fiorino might also be a candidate for the Republican nomination for president. Having someone of her status opposing Goodlatte has got to give the opposition some gravitas.

      1. Carly Fiorina excoriated a Republican patent reform proposal in a speech to inventors on Wednesday, comparing it to Obamacare

        ROTFLMAO

        The Affordable Care Act is pretty darn popular.

        Sure, a tiny class of wealthy elites and their braindead sycophants will tell you that government-funded healthcare is the height of fascist-communism. But outside of that minority pretty much everybody else is benefitting. Could it be improved upon? Sure. But those same weatlhy elites and their sycophants were even more opposed to a single payer system.

        Gotta keep those professional grifters in the insurance industry contiually well fed, after all. Any of this sound familiar? Get your patent insurance right here, folks …. Ah, the great dream.

        1. Yes MM let’s bundle together everything she said as a politician and impute that on her arguments on patents. She has stated over the years that she believes that strong patents are important for our economy based on her experience at HP.

          But let’s be the nasty little minded person that you are and throw in other stuff and not address any substantive issues—sure sounds a lot like a jihadist to me.

  5. SlotGuy: are you saying US 3030609 should have been rejected as ineligible subject matter? Because that would have been the farthest thing from anyone’s mind in 1962

    Pretty sure this was also the farthest thing from anyone’s mind in 1962:

    link to patentlyo.com

    As was the idea of a company going all the way to the Supreme Court with an argument that its patent made it unlawful for people otherwise practicing the prior art to think — yes, THINK — about a correlation that the same company publicly disclosed in its patent application.

    But it happened, just a few years ago.

    It’s 2015, SlotGuy. Try to remember that.

    1. You keep on using the number of people choosing to use the patent system as some implicit type of measure of a “bad” thing.

      It isn’t.

      Even Prof. Crouch has recently indicated that we are in the midst of an innovation boom.

      Just because the abundance of innovation today is the type that you seek to disparage and not protect (and yet you still refuse to put your money where your mouth is and abstain from this type of innovation), does NOT mean either that the innovation is my there, nor that the innovation does not deserve protection under the law.

      It is indeed 2015, Malcolm, time for you to leave behind the flat-world anti-software mindset.

      (And time to leave behind the mere aggregation “pet” – but oh so b@nal – theory that you fall back to every single time.

        1. Nice spin.

          It is not because Prof. Crouch has said so, but it is an offered discussion point that even Prof. Crouch has noted this.

          Instead of kicking up dust, perhaps you want to address the substance of the point?

          (More likely, you don’t because that substance is off of your script – one of those inconvenient facts that you will do everything NOT to discuss).

      1. “Even Prof. Crouch has recently indicated that we are in the midst of an innovation boom.”

        It’s funny you should say that, (and I kinda agree), but why then are all the guys on the ol economics/financial side disagreeing and stating that innovation is practically flatlining so far as the econ is concerned as a whole?

          1. “You do realize that the Econ and innovation don’t progress lockstep with each other, right?”

            It ain’t really a “boom” if you don’t get “econ boom” out of it anon. That’s the “boom” part everyone cares about. If it’s just a “boom” of eggheads gazing at their navels nobody cares.

            1. It’s interesting to note though 6, that both you and Malcolm err on this tie to money in opposite extremes.

              Here you seem to imply that the only “good” innovations are those directly tied to making money and boosting the Econ. Malcolm appears to take the opposite extreme and often reflects that patents geared to making money (or being monitized) are “the worst things ever.”

              If course, you are both wrong and both exhibit a fundamental lack of understanding of innovation, and it’s interrelationship with “making money.” An interrelationship that simply is NOT lockstep with the Econ, while certainly with nothing at all wrong in seeking that “making money.”

              1. you are both wrong

                Of course we are, “anon”! Ride the high horse!

                Let’s go back to State Street and pre-Prometheus so we can “promote” even “more” “innovation”!

                1. Your comment is a meaningless non-sequitur as neither of those cases have anything to do with the topic at hand.

                  Try to stay focused.

              2. “Here you seem to imply that the only “good” innovations are those directly tied to making money”

                I’m not implying that at all. I’m simply discussing the alleged “boom”. If we’re going to say there is a “boom” then the “boom” is economic. If we’re having an “innovation boom” that doesn’t involve economic boom then frankly I could give two dams less about the “innovation boom” and so could everyone else. A million times more navel gazing than in years past really doesn’t help anyone.

                “Malcolm appears to take the opposite extreme and often reflects that patents geared to making money (or being monitized) are “the worst things ever.””

                That’s because we’re (he and I both) are talking about actual “economic boom”, not “grifter boom”.

                “An interrelationship that simply is NOT lockstep with the Econ,”

                Which is exactly why patent reform is on the way and you will take it, kicking and screaming the whole way.

                “while certainly with nothing at all wrong in seeking that “making money.””

                According to you. Though not according to the people setting up the entitlement program upon this particular house of cards is built. And not according to the people that vote for those people.

                1. “Once again – you confuse yourself in your attempts to conflate innovation and Econ.”

                  Right, I “confused myself”. Lol. That’s a fancy way of saying you just don’t get what’s going on around you.

                  You’re all “who, whaaaaa, where? You must be confuzzled because I dun understand why you guys are all concerned about the actual useful arts and keep calling my stuff the not-useful arts!”

                  Unfortunately for you, there are other people that do understand. And they have power, and them wheels are a turnin.

                2. No. I meant exactly what I said: you are confusing yourself.

                  Take it a step at a time: you do realize that Econ and innovation are two different things, right?

    2. Obviousness changes over time, so does novelty. But patent-eligibility doesn’t. What was eligible in 1962 is eligible today.

      The USPTO has been granting patents on data processing methods for over 50 years, so a suggestion that data processing methods were never patent-eligible is empirically incorrect. Further, the Supreme Court held in Festo (citing Warner-Jenkinson) that “courts must be cautious before adopting changes that disrupt the settled expectations of the inventing community.”

      Retroactively invalidating all data processing methods is not “being cautious,” and half a century is certainly long enough to establish settled expectations. Frankly, with all the Alice rejections in litigation lately, I’m surprised nobody has filed a 5th Amendment takings claim yet. (Or have they?)

      Given that history, I am interested in how to draw a line between eligible and ineligible data processing methods. Perhaps the line to be drawn, if there is one to be found, lies in whether the data being processed is treated syntactically or semantically. Even then, context-sensitive data processing is commonly more efficient than context-free processing; e.g., video stream compression works differently — and better on video streams — than generic data compression. And yes, there are plenty of old patents on systems for data compression. I don’t know the answer, that’s why I’m asking the questions.

        1. Data processing has been around for millions of years. Animals do it.

          The PTO started granted some junky data processing patents 50 years ago, you say? That’s nice. Last time I checked the PTO doesn’t make law. In fact, recent history shows that the PTO has an incredible habit of ignoring the law to benefit and coddle its favorite “stakeholders.”

          Frankly, with all the Alice rejections in litigation lately, I’m surprised nobody has filed a 5th Amendment takings claim yet.

          That’s funny stuff right there. Go ahead and file your “takings claim” yourself. I can’t wait to see the “innovation” at issue. An “app” that makes your phone vibrate when your coffee is too hot to drink, maybe? Oops, I just innovated again. Can I haz patent now?

          context-sensitive data processing is commonly more efficient than context-free processing

          No kidding.

          Perhaps the line to be drawn, if there is one to be found, lies in whether the data being processed is treated syntactically or semantically.

          These are general theories of logic and meaning. Is “logic” one of the “useful arts”? Since when? Since the PTO started behaving as if that was the case?

          Can I patent an improvement in writing style? I’m saving paper, after all. That’s useful.

            1. ook at what WAS granted to Morse.

              The evidence that Morse was a fraud is pretty good.

              But go ahead and pretend otherwise. After all, it’s very convincing to the people who can’t tell the difference between 1850 and 2015. All ten of you.

              1. The evidence that Morse was a fraud is pretty good.

                Again – a completely meaningless non-sequitur to the topic at hand.

                Try to make just a little sense in your “replies.”

          1. dash-dash dot-dash dot-dash-dot-dot dash-dot-dash-dot dash-dash-dash dot-dash-dot-dot dash-dash

            dot-dot-dot dot dot-dash-dot-dot dot-dot-dash-dot

            dot-dot-dash-dot dot-dash dot-dot dot-dash-dot-dot

              1. Glad you enjoyed it, but (considering the source), not all that surprised that you don’t agree with wha is plainly self-evident.

                You are aware of what Morse did gain patent protection for, right?

      1. Obviousness changes over time, so does novelty. But patent-eligibility doesn’t.

        SlotGuy, you are oh so close and just one little nuance off.

        Let me drop you a hint: the universe outside of the Hand of Man is not a static place.

        Think of Putensite.

        1. What I understand you to be saying is that science makes discoveries about the natural world all the time. That’s certainly true. What I do think that means (or implies) is that if a particular invention is subsequently determined to be naturally occurring, it can be retroactively understood to be ineligible for patenting. If someone had a patent on putnisite before it was discovered, that would be such an example. Or if an asteroid crashed in 1950 with trace amounts of Americium on it, claim 1 of Seaborg’s patent 3,156,523 could have been retroactively understood to be ineligible (claim 1 is the world’s shortest patent claim: “Element 95”).

          Still, it would have been just as easy to make an anticipation argument based on later-discovered prior art. Discovering one’s proprietary chemical structure growing naturally in a cave would seem to raise a clear “substantial new question of patentability.”

          In the context of this discussion relating to methods for data processing which have no natural analogs, I suppose it would be more appropriate to narrow my sentiment to “abstractness does not change over time.” But that’s not practically true right now because nobody knows what the courts mean by “abstract” (and therefore eligibility) in the wake of Alice.

          1. nobody knows what the courts mean by “abstract”

            Speak for yourself, SlotGuy.

            We’re not all as naive and/or willfully blind as you.

            You still don’t know what Prometheus v. Mayo was about, do you?

            That’s sad.

            1. “In any event, we need not labor to delimit the precise
              contours of the “abstract ideas” category in this case.” (Alice v. CLS Bank, slip op., at 10)

              SCOTUS hasn’t delimited those precise contours in any other case either. If you think you know better than the Supreme Court what “abstract idea” means, bully for you, but you’re not in charge.

              And Mayo v. Prometheus was about laws of nature, not abstract ideas. The only time “abstract” is mentioned in Mayo is either (a) in a quote from another case or (b) in the ineligible subject matter triumvirate “laws of nature, natural phenomena, and abstract ideas.” There is nothing abstract about measuring the blood level of a particular drug and determining whether it is within a specified numeric range.

              1. SlotGuy: “ There is nothing abstract about measuring the blood level of a particular drug and determining whether it is within a specified numeric range.

                Unequivocally incorrect. Numbers are abstract.

                Collecting the blood, applying tests involving chemicals, centrifuges, chromatographs, etc.: concrete.

                Assigning a numeric measurement to the chemical level, comparing it to other numbers: abstract.

                1. Count Dobu,

                  The (very real) problem with your approach is that the logic of it dictates that ALL engineering is abstract.

                  You are simply not paying attention to the evisceration effect – you cannot be a “little bit” pregnant, and only use your logic to some arbitrary (and undetermined) “comfort” zone of your liking.

                2. I claim
                  1) 3.45575191894877.

                  Yeah, that’s abstract. Fortunately, the claims at issue in the Mayo case didn’t actually attempt to claim a number.

                  If you don’t understand the difference between a number and a chemical solution involving blood, I’m afraid we’re at an impasse.

                3. Ganonileo,

                  Please provide an example of “engineering” that does not implicate abstraction.

                  I do not understand how evisceration, pregnancy, and comfort relate to the discussion at hand.

                4. SlotGuy,

                  The claims at issue in Mayo DID attempt to claim a comparison between numbers, which is abstract.

                  If you don’t understand the difference between a number and a chemical solution involving blood . . .

                  One … Two … Plasma … Four …

                5. Count Dobu,

                  Your last two replies are non-responsive and completely non-sensical.

                  Why would you ask me for an example of engineering that does not implicate abstraction after I just finished telling you that ALL engineering implicates abstraction by your chosen “path of logic?”

                  That you want to clench tight your eyes to the quite evident evisceration to patent law from the removal (due to the failing of your version of “abstract” for ALL art fields that use engineering) is simply duplicitous.

                  In truth, you simply cannot be that unknowing and that nonunderstanding.

                  Claiming ig norance simply is a bad ploy in this dialogue. You may want to rethink (or think for the first time) your “strategy.”

                6. Ganonileo,

                  I’m merely attempting to make sense of YOUR non-responsive and non-sensical post. (Does that earn me an “AOOTWDD”?)

                  I asked for the example in response to your accusation regarding my “path of logic”, implying that you possessed some other path of logic that does not dictate that “ALL engineering is abstract”.

                  You finally identified what’s being “eviscerated” (yes, yes. The sky is falling, burn the system down, blah blah). The pregnancy and comfort zone you alluded to is still not connecting.

                  You have a tendency to post incomplete communications, and then yell at everyone else for not following your train-of-thought across dozens of articles and several years. I regret to inform you that the failing is not always with the reader.

          2. Almost there SlotGuy.

            You only have a little further to step.

            You still seem to cling to the “prior-ness” aspect in your eagerness to look at “Still, it would have been just as easy to make an anticipation argument based on later-discovered prior art.

            Think evolution, and an actual evolutionary change (these changes do occur at specific points of time, and the “inclination” is to think of all of these changes happened long ago – but that is just the “static-universe” error). The point being that while you want to use a “just as easy,” that is NOT what 101 is about. If nature decides to stock its warehouse after man first invents something, the fact that nature has (later) stocked its warehouse nullifies the patent as ineligible. Don’t be seduced by the static-universe allure.

  6. Off topic, but if you are in the mood for a great science fiction series of books, check out the Expanse by James S. A. Corey that begins with Leviathan Wakes. link to audible.com

    They are making it into a SyFy channel series this year starring Thomas Jane as Detective Miller and Steven Straight as Captain Jim Holden — these two relate to each other something like Spock and Kirk, a contrast in personalities. Something special is beginning here.

    There are currently four books in the series – that have been extended to 10. Another book is due in a couple of months.

    1. My favorite fiction is Ned-IMHO law.

      It’s a short series (only three main segments), but the intrigue and historical fiction is tremendous. Such imagination!

      1. anon, you might actually try viewing the Supreme Court cases as a story. Once you do, you may begin to understand the lesson they are teaching.

        1. Review them…?

          Ned – I teach you what they actually say all the time.

          I also point out to you how the players of those decisions play out, from Stevens losing his majority position in Bilski to the known rogues (per the Clinton presidential papers) making up the new 3 (the old 4, which is still not 5).

          You are WAY behind me on that topic, my friend.

          1. anon, if we measure understanding of the story by successful prediction of the results of the Supreme Court cases … well, just let me observe that you strongly disagree with Alice.

              1. Ned, if you’d just realize that Benson is madness, you’d understand the SCOTUS better. You know, there is reality despite the Royal 9’s belief that they are reality–they are not.

    2. Here’s some sci-fi for you:

      Suppose humanity developed a temporal telescope and through it learned that our universe was a future echo of a prior universe that occurred millions of years ago, and everything we do, think, and observe is an exact replay of that prior universe. However, perhaps due to the Novikov self-consistency conjecture, the temporal telescope cannot observe the past universe at any point corresponding to the future in our own. In other words, we still don’t know what our future holds even though it’s actually someone else’s past.

      From a patent law perspective, would that mean that every alleged invention is anticipated?

      1. SlotGuy, two problems:

        1. Lack of an enabling disclosure.
        2. Not in the US — but now this limitation is gone in the AIA.

        1. Given that this is science fiction, the inability to see the future may not disqualify for lack of enablement.

          One would only need to enable (and separately verify) that the mechanism does indeed work for the verifiable past and account for the block into the future to establish the principle which is the object of the conundrum: everything is anticipated because in truth, everything happened already previously.

          A different “science fiction” that at one time was considered by many pre-eminent thinkers – and applying Random’s fixation of predictability – was the Newtonian clockwork view of the universe, in which the “gears” having already been set, the future was also set, thus philosophically could be considered “already known” and thus – “happened” in a sense.

          Another current philosophy tangentially related is the “everything is MathS” view as exemplified by Tegmark. In that view, everything that will happen is also “calculable” (if you have a good enough calculator), and there too everything could be known “beforehand,” rendering everything anticipated – in a sense.

          1. I’m not so sure how current that philosophy is. :)

            “It is impossible for a Die, with such determin’d force and direction, not to fall on such a determin’d side, only I don’t know the force and direction which makes it fall on such a determin’d side, and therefore I call that Chance, which is nothing but want of Art;”

            John Arbuthnot, in the preface to “Of the laws of chance”, his translation in 1692 of Christiaan Huygen’s “De ratiociniis in ludo Aleae.”

              1. A long time ago I learned about the history of probability theory. It turns out to be rooted in gamblers trying to get an edge on one another, but guessing because they didn’t have the quantitative tools to compute expectation correctly. Blaise Pascal and Pierre de Fermat codified the concept in 1654 when trying to figure out the “problem of points”, which was about how to split up the pot of a game that’s interrupted. E.g., if we each ante $1 into the pot, we’re flipping coins, where I get a point for heads and you get one for tails and the first to 10 wins, if the score is 9 to 8 and we need to quit, what’s the fair way to split the pot? The answer is *not* 2/3 to 1/3.

                Do you know the answer, or how to compute it? In the 1600s nobody had ever properly solved that problem before, but Pascal was a genius for the ages. (link to en.wikipedia.org).

                Christiaan Huygens wrote the first book on probability theory a few years later (in Latin), and Arbuthnot translated it into English in 1692, adding the preface where that quote is found. It’s one of my all-time favorites. You can read a digitized edition here; the quote is from the preface, page vi:
                link to babel.hathitrust.org
                (I hope that link works, a lot of digitized early book resources are behind strange URLs)

                And, to add the obligatory on-topic point, note that Arbuthnot’s use of the word “Art” is synonymous with its use in the U.S. Constitution.

                1. And while that Arbuthnot quote about dice might be my favorite, perhaps another would be more apropos for this forum:

                  “Law is a bottomless pit; it is a cormorant, a harpy, that devours everything.”
                  — John Arbuthnot, “The History of John Bull”, 1712
                  link to gutenberg.org

                  :)

  7. Does anyone want to discuss something other than 101? How about the Entire Market Value Rule?

    If the patented invention didn’t drive demand, and it must be a reasonable royalty, but the royalty proposed by defendant is so low that it isn’t reasonable… What should the Court do?

    1. I don’t think there’s much to say beyond what Dennis’s post says. The question of what royalty is “reasonable” is driven by evidence. If the plaintiff didn’t provide evidence to support a reasonable royalty, given the judge’s determination of what evidence is relevant, then the only evidence of record is the defendant’s. The Court doesn’t have much choice at that point – it can’t substitute its own judgment of what’s reasonable.

      1. DanH, since the claimed invention relates to a telephone system, virus checking, with the point of novelty the use of codes to signal to the telephone system to conduct the virus checking, what are we talking about will be talking about the entire market value? Surely not the telephone system. Surely not virus checking software. What then?

      2. Does the judgement of what is reasonable include the option of remand for additional deliberations?

        If the evidentiary record is clearly insufficient, would not Justice so require?

        1. When a client picks attorneys that make a choice of tactics or expert witnesses and fails to put in evidence in a civil case the client does not normally get a re-do or “second bite at the apple” new trial.

      3. The Court doesn’t have much choice at that point – it can’t substitute its own judgment of what’s reasonable.

        As a practical matter he has pretty unlimited choice – he’s not even limited to the defendant’s number. He can do a new trial on damages alone, he can grant the JMOL and give the defendant’s number or completely vacate the award, or he can tell the patentee to accept any lesser amount he wants or he will grant the JMOL/new trial.

        1. 35 U.S.C. sec. 284 says that the patent owner is entitled “adequate to compensate for infringement, but IN NO EVENT less than a reasonable royalty…”

          Also, the section gives very wide discretion to the court to award treble damages, though I concede the Federal Circuit has wrestled much of that control away. But at the very least it gives the court the option to find different ways to award a reasonable royalty. Its not as if there were NO evidence of the value of the patent, its just evidence directed at EMV. But EMV often plays a roll in calculation of reasonable royalty.

    2. J, the claimed invention was the use of computer codes to signal to a telephone system to conduct a virus check on computer data as it is transmitted…. Obviously, this invention does not have anything to do with the telephone system, transmitting computer data through the telephone system or specific methods of checking transmitted computer data for viruses. All it has to do us is the use of codes to signal that the telephone system is supposed to conduct the virus check.

      This has to be an optional service provided by a telephone system. If it’s an optional system, just how is one going to signal the telephone system to conduct a virus checking in transmitted data if not by the use of codes in a transmission?

      I don’t know how this issue was presented to the court, but I would have a problem with the conclusion that the demand for the service had nothing to do with the claimed invention. People may not know exactly how a particular invention works, so long as they choose the product depending upon the presence of the claimed invention.

      It would also be interesting to me to see how damages would be downgraded to a reasonable royalty basis if the defendant is using the invention and there is no other practical way of signaling the desirability of conducting virus checking by the telephone system except by the use of codes.

      1. the use of computer codes to signal to a telephone system

        Because nobody had used “codes” in data to “signal” stuff before.

        Oh wait: this is “automatic.”

        Wowee zowee that’s impressive.

        1. MM, I think the examiner might have found something if he had conducted a second search. But mandatory second searches paid for by the applicant is something only I seem to favor.

  8. Dennis, thank you for allowing paid trolls to post here. First, the country needs tax revenue and trolls need jobs, although from the rampant intellectual dishonesty of the most prolific and pernicious troll, there is some doubt as to whether he actually pays his fair share.

    Second, without the paid troll your blog might actually be worth visiting more frequently, and I’m a busy guy.

      1. You have shown the inability to recognize such, Go.

        There are plenty of such compelling substantive remarks already on the table. You have to be willing to open your eyes and see them.

    1. Dennis, thank you for allowing paid trolls to post here.

      LOL

      Remember when “Tourbillion” complained about “anon” posting here using 40 sockpuppets a day, trying to derail any discussion of

      Or when “Tourbillion” complained about NWPA comparing critics of the patent system to “rapers and killers”? A comment that received an immediate high five from “anon”?

      Or how about when AAA JJ and Eric Guttag advocated for the impeachment of judges who used the term “monopoly” in patent decisions? Remember when “Tourbillion” complained about that?

      Me neither.

      Pretty funny that Tourbillion complains about “paid trolls” posting here. What’s a “paid troll”, Tourbillion, and who are you referring to? Step up, smart guy. We all need more of your thoughtful “insights.”

      1. MM >Or when “Tourbillion” complained about NWPA comparing critics of the >patent system to “rapers and killers”? A comment that received an >immediate high five from “anon”?

        I compared you to the religious jihadist that commit rape and murder in the way you argue. I stick by that comparison.

        You have no moral base. No ethical base. You have a purpose which you feel justifies your behavior. I’d say that is very similar to the jihadist in the Middle East.

        I note too that you have never responded to the substance. Have you? Just cut and paste a portion of what I said and repeat it over and over. Seems like you are proving you are like a jihadist, aren’t you?

        1. Seems like you are proving you are like a jihadist

          Gotta love it when the loves of software patents double down on the nutsanity.

          Good times!

  9. Just in case people forget: “detecting” is a type of information processing and therefore claims directed to “detecting” stuff are highly likely to present subject matter eligibility issues particularly where there isn’t any new machine (described in objective structural terms) recited in the claims or a new transformation of matter that wasn’t previously deeemed possible in the art. But even there you can run into eligibility trouble with “detecting” language. For example, you can describe your new machine and claim it that way. But you can’t claim the abstract process of “detecting” the presence of your new machine using any (or even one) previously disclosed detecting method. Such a claim is ineligible.

    The reason for this is simple to understand: if we let patentees separately claim every specific field of use for generic “detectors” (like “virus detectors”) then the public is forced to worry interminably about being at the receiving end of a patent lawsuit every time it wishes to use a public domain method for its intended purpose in any specific new context. A system that permits that doesn’t “promote progress”. It promotes lawsuits.

    The tiny group of wealthy, entitled grifters who defend junk patents like this one are perfectly aware of this. They simply can’t wrap their heads around the fact that nobody but them wants to live with the incredibly c0cked up patent system they lust after.

    1. We need a Merchants of Doubt for patent reform. Again, big picture sanity, information processing is experience more innovation than probably any other area. The U.S. is by far the leader in this field. Some don’t like the way the trenches look. Move on.

      1. Night,

        You probably don’t remember, but when I first started participating on this blog I was pro ‘software patent,’ to a certain extent.

        I recognized the system had problems and that a lot of ‘junk’ patents, especially related to software, were out there. BUT it seemed intuitive to me that some software/information processing deserves patent protection. The key to me, was how to tell the difference. HOWEVER…

        Over the roughly 6 months I’ve been here, noone, literally noone, has been able to articulate (to me) how to separate ‘good’ software patents from ‘bad’ patents. The response has uniformly been denial. Denial about Alice, denial about the unique problems software patents represent.

        At a certain point I came to believe that people wouldn’t articulate some sort of reasonable middle ground because they couldn’t. I’m always interested though.

        1. First, you should not be making decisions like that based on this blog alone.

          Second, what? The middle ground is simple. Use 102/103/112 to determine the validity of the claims. Asking for a middle ground is like asking to burn only the witch’s legs.

          This blog is filled with many anti-patent/judicial activist. I posted a link to the Financial Times that said that Google was the number one donor to Congress. Frankly, the propaganda has been winning. Not a surprise. The big corps took out anti-trust law and employment law. They are going after patent law now. The SCOTUS has always taken the side of big international corp in the last 30 years in the name of being able to compete internationally.

          Big picture: I don’t know what you mean by middle ground. I know what applying patent law is. I know what patent law is. Focus on understanding patent law. You know, propaganda and magic both are about diverting your attention from what is important. In this case, focus on real patent law. Think through what a fair analysis of validity is. Don’t be fooled by the pasting of claims with a man chanting that they are terrible claims. Think for yourself. If they are terrible claims, then 102/103/112 would take them out. Where is the prior art? Where is the arguments that they are terrible claims beyond rants?

          You may want to read a real case book on patent law. Adelman and Rader wrote a good one. Moore wrote a good one on patent litigation that does a good job covering the basics.

          1. Night – Thank you for this post. In my view, anytime some begins a 101 rejection by discussing state of the art, their in the wrong section. 112/102/103 already cover every single argumebt for judicial exception to the plain language of 101.

            1. Mike: Thank you for this post. In my view, anytime some begins a 101 rejection by discussing state of the art, their in the wrong section.

              Then it’s objectively clear Mike that you don’t know what you’re talking about.

              You can not have a working subject matter eligibility requirement and disallow comparisons of the claimed invention to the prior art. This is easy, fundamental stuff.

              Let me know if you need me to explain it to you. I’ve already done so here hundreds of times and I’m happy to do so again and again. The courts have also explained it to you many, many times.

        2. Go, the reasonable middle ground would be a carve out for software [much like Section 287(c),] explicitly applying the machine-or-transformation test. This would preserve the possibility of some future non-software innovation being patent eligible sans the MoT test, yet likely to completely solve the current problems with software patents and not harm mechanical /physical/ process innovation that is enabled by software.

          Night Writer, I have been in the software industry for 20 years, and I think patents have been net loss. The smartphone wars have been a useless draw, and the clue-bird has landed for many in the business that per se software patents are more liability than asset, despite your religious belief that the industry would not be where it is today without them. Copyright has sustained multi-billion dollar industries needing IP protection, and would sustain per se software companies just as well. Software for use as system components would not be much affected by the MoT reform, which I believe sooner or later is going to be the only way control the lower courts and bring some kind of consistency across the board. The ease with which two judges in DDR torpedoed many Alice cases is a clear demonstration of the fallacy that open doctrine provided by the Supreme Court can be made to meaningfully stick. Either they, or congress is going to have to produce a bright line test, or the industry really will be in grave danger from the iceberg of junk patents and armies of marauding plaintiffs who bring zero value and make nearly zero real investment compared to companies who actually sweat the markets.

          1. Martin, do you believe a more efficient distributed database system should be patent eligible, if the improvements are solely in software and the result is that existing computer equipment operates faster and/or more efficiently in carrying out the functions of the database?

            Because I do, and I believe that’s the intent of Congress as well, but I don’t know how to make that fit within a “MoT” test.

            Like g0 arthur, I’m trying to figure out how to distinguish between “good” and “bad” software patents, and really, how *should* they be distinguished. Few people other than thoughtless anti-patent trolls would suggest that something like a clustered database with row-level locking would be patent-ineligible. Many databases have such behavior now, though they didn’t always and it’s a non-trivial problem to solve if you’re starting from not already knowing how. The point is, section 101 makes it clear that if a database is patent-eligible, then an improvement to a database is also patent-eligible.

            I don’t know how to draw the line either, but I know the line shouldn’t be drawn such that all databases fall outside it.

            1. No, I don’t think a database or improvements thereof should be patent eligible, any more than improvements in physics or math or astronomy or business management or political organization.

              Improving the operations of databases are better ideas about how to organize things. Machines that run databases are a completely different story- as would be a new improved telescope or neutron detector or other tangible tool.

              If the basic idea is that no unfettered (fettered by patents that is) competition should be allowed in any sphere of human improvement, well…..that’s a bankrupt idea.

              Those who come up with better ideas about how to organize things with applications to commerce will have competitive advantage in doing so- its unnecessary to provide a monopoly nor especially encourage the disclosure of those ideas; they will propagate on their own if valuable, or remain obscure if they are not. Their uncompensated propagation is not theft – if it were, all culture and anything imitated would be theft, and that can’t be right. Monkey See Monkey Do cannot be patent eligible.

              This is what Night and the other software absolutists fail to understand; ideas cannot be fairly and reliably adjudicated under laws designed to deal with things.

              With things, there is only so much available range to shape, morph, and interpret. With language and written expression, there is infinite shading available to clever people. The doctrine of equivalents cannot morally operate in the sphere of ideas about how to organize the world.

              1. Your “it’s unnecessary” is simply not what the law is.

                You continue to make the mistake of conflating the idea of software with software.

                You continue to ig nore what 101 is geared to: 1) utility within the Useful Arts and 2) fit within the broad statutory categories.

                You continue to not want to learn the lesson as to what aspects are protected under the different IP laws of copyright and patents, that these different realms protect different things, and that the item of software contains different aspects that garner different protections under the different realms, and that these different protections are NOT substitutable one for the other.

                Finally, you should take a step back and realize that your own position in a current litigation matter creates a massive bias working against your ability to learn the actual scope of the law as it is today. Put simply, it may well not be in your own personal interest to learn that you are not correct under the law, that your own independent (and yes, possible prior) invention (but undisclosed, and not meeting the legal requirement of being proper prior art) may NOT serve as a defense to someone else’s invention and their utilization of the patent system to gain a legally superior right to yours.

                This aspect (you should realize) applied to ALL art fields – and has long been an integral part of the patent system. This is known as the carrot and stick approach: not just the carrot of the patent right to the first to be willing to share and engage either the patent system or to publicly publish, but also a stick to beat the “innocent” who may have made the invention (and yes, may have made it earlier), but who have not shared by either engaging the patent system or by publishing.

                You whine about how unfair it is to be beaten with a stick, without realizing that that is exactly the desired effect of the law.

                Your topic of invention is just a dust cloud. You are simply off in your attempt to paint the utilitarian aspect in the colors of the fine arts.

                1. anon you continuously create strawmen so you can enjoy knocking them down. Strawman: I am arguing about the state of current law. Fact: I am posting opinions about what the law SHOULD be. Strawman: my expressing opinions about the law compromises my position as a litigant or my ability to obtain counsel. Fact: my thoughts about patents have nothing to do with my actions unless you have evidence that they do, and you don’t. Strawman: that my prior art was not disclosed or commercialized or that I don’t understand what prior art is. Fact: my stuff was on sale and sold over a year before the priority date of the patent asserted against us. Strawman: the fact that I took the shaft from our patent system means I am too emotionally biased to have standing in reforming it. Fact: you can’t prove that and attacking the messenger rather than the message is the resort of the weak. Strawman: the I don’t understand the difference in regime and intent of copyrights and patents. Fact: maybe I do and maybe I don’t, but I don’t think software that fails the MoT test should receive patent protection, but it should receive copyright protection. I am hardly the only poster who you willfully misconstrue for your own ends, which I don’t quite understand other than perhaps to be simply disagreeable.

                  As to the substantial reply by SlotGuy: patent eligible generally electronic devices pass the MoT test, but even if they don’t, they recite physical structure. That’s why I think software should get a carve-out akin to Section 287(c).

                  A database design, no matter how elegant, is still an idea about organizing information. Its not the idea of an idea. Is the Dewey Decimal System patent eligible? No it is not. It gets a copyright, as should the innovative database design. It should not get both, for different “aspects” of the same thing.

                  Is there any other art field that is subject to both copyright and patent?

                  Is there any other art field causing so much angst about the patent system?

                  If someone wants to talk about royalties and not 101, that could be a ripe discussion too. The current hypothetical negotiation doctrine is flawed because it does not account for the risk premium liquidated by hindsight. Thus we get a stacking royalty problem where all the reasonable royalties that make up a modern mobile phone add up to a hundred thousand bucks a unit. But that’s a whole other problem, and one pointless to worry about when the elephant of the 101 problem pervades every discussion, as anyone can see.

                2. It’s not a strawman Mr. Snyder – you need to express your “opinions” better, as they are not coming across as suggestions for a different law.

                  Further – and as I have indicated, you are far too intimately compromised to be offering suggestions as to what is “reasonable.”

                  Your bias has clearly contradicted that which you are willing to learn, and your version of reality and what would be reasonable are far too tarnished. You lack the ability to be objective.

                3. Martin, are you saying US 3030609 should have been rejected as ineligible subject matter? Because that would have been the farthest thing from anyone’s mind in 1962, including the engineers at Bell Labs who developed the system and the PTO staff who granted the patent.

                  What’s changed between then and now?

              2. Martin: No, I don’t think a database or improvements thereof should be patent eligible … Improving the operations of databases are better ideas about how to organize things.

                Not an idea, a process. The idea of a database is “let’s store digital information in a repository where we can create, read, update, and delete it.” The process for actually doing that is non-trivial, and if you’re in the software industry, you should already know this.

                Processes carried out by electric devices have been patent eligible since at least the late 1800s. In your opinion, at what point in the development of electronic technology (from wires to diodes to transistors to ICs to CPUs) did processes carried out by electronic devices cease to become patent-eligible?

                Most innovation isn’t groundbreaking, it’s using available tools and equipment to solve previously-unsolved problems. An engineer in the 1910s might perceive an unsolved need for a detector to indicate when someone’s trying to make off with his horse, so he’d take a bucket of (existing) wires and switches and create a circuit to illuminate a lamp when a wire attached to the horse’s shoe is disconnected. He’s making use of the tools he has available; that’s what good engineers do. An engineer in the 2010s might perceive an unsolved need for a detector to indicate when someone’s trying to make off with her bicycle, so she’d take an (existing) software platform and create a smartphone app to vibrate when a bluetooth radio attached to the bike is disconnected. Same use of existing tools, same good engineering, just 100 years later.

                You’re not going to tell me that one of those engineers is engaging in problem-solving and the other isn’t. And one class of inventions is simply restated as “novel problem-solving” — if you’re the first to solve a problem, you invented the solution. Whether that’s with wires and lamps or with smartphones and bluetooth radios, the innovation lies in the process and the system created by the engineer, not the pieces and parts that went into it. For the purposes of patent-eligibility, both must be eligible. Make an obviousness or anticipation argument if one is to be made, but if not, on what basis would you distinguish the two with respect to section 101?

                1. Yes, I think 3030609 should be ineligible.

                  What has changed between now and then is that our understanding of what data processing means and how data processing interacts with the patent laws has revealed that they are essentially incompatible; the unintended consequences overbalance the positive effects.

                  And had it been ineligible at the time, it still would have been commercialized, likely in the precise way that it was.

                2. SlotGuy: if you’re the first to solve a problem, you invented the solution. Whether that’s with wires and lamps or with smartphones and bluetooth radios, the innovation lies in the process and the system created by the engineer, not the pieces and parts that went into it.

                  You need to recite the specific pieces and parts that actually “solve the problem” if you want to claim a new device.

                  That’s why your attempt to discuss these issues in the abstract and pose ridiculous “Are you suggesting that so-and-so from 60 years ago should not have gotten a patent” fails to achieve what you wishes it achieves. Somehow this aspect of the discussion always gets lost on the software patent proponents: we’re talking about patent claims and what those claims protect. Nobody’s saying “no aspect of computer technology is eligible for patenting.”

                  As for this b.s., you’re just highlighting the problem:

                  a smartphone app to vibrate when a bluetooth radio attached to the bike is disconnected

                  That’s an unsolved need? Really? Where’s the innovation here, SlotGuy? The recitation of “bike”? Seriously?

                  “A smartphone app to vibate when the toast is done.”

                  “A smartphone app to vibrate when the dog is done with its duty”

                  “A smartphone app to vibrate when the oscar winner’s are announced.”

                  Can I haz patent now? Sooper dooper awesome innovation! I “solved the problems”! SlotGuy says so! Can I haz patent now?

                3. “A bunch of wires and a light configured to alert you that your horse has been stolen.”

                  SlotGuy’s preferred patent claim, ca. 1910

                  You think we can’t see through you b.s., SlotGuy? Really?

                4. You think we can’t see through you b.s., SlotGuy? Really?

                  Who is this “we?”

                  What – precisely – is this “b.s.?”

                  How – precisely – is this not in accord with the law, the words as written by Congress?

                  Use your beloved short declarative sentences to make an actual legal point (and not your typical empty ad hominems).

                  Heck, use any type of English, as long as you are intellectua11y honest about it.

            2. The debate boils down to line drawing like you say.

              Obviously, the cost for disallowing software patents is that a great deal of true innovation happens in software and those things would be patent ineligible.

              The current downside of allowing those things is a very sloppy and poorly defined case law being pulled two different ways by SCOTUS and the Fed Cir, rampant instability, increased ammunition for patent bullies and trolls.

              So the real public policy debate boils down to this: what is more costly to innovation — Problem Set A or Problem Set B?

              Of course, a sui generis software right could strike a better balance but nobody wants to talk about that politically, doesn’t make a good headline.

              1. Even further — it seems a great deal of the debate is the allocation of these innovation costs.

                Each side seems to think their solution puts less of these costs on the small innovators, and more on the big established companies.

                To my eye, the whole situation needs more data to compare the cost sets and their distribution on the public more objectively.

              2. Drawing a map and reading a map are two very different things.

                It is entirely inappropriate for the wrong branch of the government to write patent law because they created a horrendous “interpretation” in the first place.

                Your “downside” cannot serve as an excuse for violating the separation of powers just because some other desired end is wanted (no matter how righteous those ends may be). The means really do matter.

          2. Martin,

            I was in a software startup in Boston in the early 1980’s. There may be some problems and you may have had a rough time, but that doesn’t mean you know the whole story.

            1. It is abundantly clear that not only does Mr. Snyder not know the whole story, but that his ongoing suit creates a bias against his knowing that story that he has not been able to overcome.

              It is simply human nature that impedes his ability to grasp the law that may very well beat him with a stick, and it is human nature that he will attempt any and all avenues of escape from such a beating.

        3. Indeed. We won’t get any useful “middle ground” guidance until we have a body of Fed. Cir. decisions from different Fed. Cir. panels on D.C. post-Alice 101 decisions. Not from any blog comments.
          As noted above, too many comments on this blog re 101 are reality denials, wish lists, or personal conjectures. Yes, there is a lot to validly complain about: “Abstraction” is undefined. The new 101 test conflates 101 with 103. Having a D.C. judge decide both as part of a claim interpretation “threshold” test before any evidence or hearing seems strange. But so what, that is where we are, and about the only useful to do about it is to (1) try to write, amend and add claims that might be less vulnerable, (2) get independent advice before making major financial investments in patent litigation on 101-vulnerable patents and (3) make use of CBMs, while they last, for 101 defenses if at least one claim falls under its limited jurisdictional scope.

          1. I have to wonder…

            If curmudgeon’s lesson to be learned is that posting is not going to make a difference, then why does he post?

            Surely, he fails his own “stick to facts and law” advice, so what can be his purpose?

            I hear a “hush child, don’t you now it’s not polite to point out that the King is naked”

            But so what” indeed. Just go ahead and “take it,” take the Chamberlain treatment and whimper along now, never mind fighting for rights that curmudgeon does not think you should have anyway.

            Thanks, but no thanks.

          2. Cur, just a observation, when dealing with 101 and old, technical elements, the courts do not resolve issues of fact as to whether the technology elements are old. It is a given they are old – primarily because they are generically claimed.

            I would think that if, when conducting novelty are nonobviousness analysis, it is determined that the technical elements of the claim are old or obvious, and the only “invention” lies in the nonstatutory, abstract, parts of the claim, which are not otherwise integrated with the technological aspects as in Diehr, then the claim fails 101/102/103 as a whole.

    2. MM, the claimed invention here appears to be the use of codes in the transmitted computer data to signal to the telephone system to conduct virus checking on the computer data as it is transmitted.

  10. Hahaha I love all the discussion about this before people read the file. Let’s be clear here:

    Claims 1 and 7 were both anticipated by Hile (pat 5319776). Applicant then amended claim 1 solely by adding the “within the telephone network” language, and argued that this distinguished over Hile.

    In other words, the sole change was a “field of use” change over an otherwise anticipating reference. That’s a 101 rejection.

    Further, as you might guess, that language isn’t going to overcome a 103 either, because Applicant didn’t invent telephone networks either. Hile + telephone network renders the amended claim obvious. The only reason it could have been allowed previously could be because there was no textual TSM in Hile. But TSM was done away with in KSR.

    This is a very simple concept – Hile created a system. When Hile’s patent runs, the system is within the public use. The Hile system goes to the public in a telephone context or in any other context it could be applied to. One cannot extend the monopoly of the Hile system by particularly delineating fields of application of the Hile system.

    1. Claims 1 and 7 were both anticipated by Hile (pat 5319776). Applicant then amended claim 1 solely by adding the “within the telephone network” language, and argued that this distinguished over Hile.

      Was there a technical argument or was the “argument” simply that “Hile doesn’t use the term ‘telephone network’.” ?

      It’s baffling that a claim like this doesn’t get tanked on summary judgment. What a farce.

      1. Was there a technical argument or was the “argument” simply that “Hile doesn’t use the term ‘telephone network’.” ?

        The latter. Hile is directed to filtering virus information en route to a storage system, whereas this invention is directed to a telephone network. I’m not surprised it was issued, so this is one of those rare times where I don’t fault the Office, but by now you’d think judges would know better.

    2. In other words, the sole change was a “field of use” change over an otherwise anticipating reference. That’s a 101 rejection.

      Where do you guys get this stuff? That’s not at all how 101 works. Alice is the applicable law, and the two-step analysis described there doesn’t have anything to do with the differences between the claimed subject matter and an “otherwise anticipating reference.”

      Further, as you might guess, that language isn’t going to overcome a 103 either, because Applicant didn’t invent telephone networks either.

      That’s not how 103 works either. There, KSR is controlling, and it said: “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” If that’s so, then it certainly is true that a claim cannot be proved obvious merely by demonstrating that the applicant didn’t invent each of the elements individually!

      C’mon, there may well be a way (or several) to invalidate the claim. But at least try to apply something remotely resembling the law in your analysis.

      1. Alice is the applicable law, and the two-step analysis described there doesn’t have anything to do with the differences between the claimed subject matter and an “otherwise anticipating reference.”

        This is the third time I’ve seen this brought up on this post so it warrants a response. If Alice had invented the computer, Alice’s claims would be eligible, because they claimed a computer. But it was clear from reading Alice’s spec that Alice knew Alice didn’t invent the computer, rather it put a known method on the computer. That “improvement” was insufficient to confer eligibility.

        A 101 analysis DOES require looking at what is prior, because that goes toward what the new or improved invention is. It’s not the same inquiry as a 102, but it does necessitate looking at the state of the art, in a minimum as Applicant understands it.

        Further, eligibility does not depend upon the drafter’s skill. I think that much you’d give me as it’s been stated many times by many courts.

        With that in mind, the scope of Claim 1 is coextensive with “Applying a known method within the context of telephone networks.” When the office states “this was done before” and the Applicant’s response is “you should give me a patent because it was never written down to do that method in the context of telephone networks” that is a statement that his invention is the idea to apply the method to a particular field of use. It’s an “improvement” that the law doesn’t recognize.

        There, KSR is controlling, and it said: “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”

        Correct, but it does get you most of the way there, as KSR also said “For over a half century, the Court has held that a ‘patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.'” Here it’s clear there’s no change in functionality for at least the reason that he doesn’t independently enable the virus detection. He’s admitting that virus detection in a telephone network must function similarly to virus detection already known in the art, because he’s relying upon that to enable his invention.

        If that’s so, then it certainly is true that a claim cannot be proved obvious merely by demonstrating that the applicant didn’t invent each of the elements individually!

        You should read KSR carefully, because while your statement is true, it is much closer to a finding of obviousness than you think. Merely saying all the pieces preexisted is not enough, but if the art knows of all of the pieces and the combination does not provide a synergy beyond what one would expect, the combination will be obvious (that is ABR). If the art knows of elements X, Y and Z, then a system of X Y and Z is obvious unless the art would not predict the result.

        1. RandomGuy: Here it’s clear there’s no change in functionality for at least the reason that he doesn’t independently enable the virus detection.

          Have you ever implemented a distributed system? If not, on what basis do you judge “no change in functionality”?

          The patent isn’t directed toward the detection of viruses per se but toward mitigating the spread of viruses across a network. If you don’t comprehend the distinction, you are not qualified to render an opinion as a skilled artisan.

          Lay opinions on the alleged section 103 obviousness of a patent are irrelevant, at least for now. But I understand Congress is preparing an amendment to 35 USC 103 that reads:

          “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains, or, in the case of computer-implemented inventions, if the claimed invention is obvious to MM at the present time.”

          1. SlotGuy: The patent isn’t directed toward the detection of viruses per se but toward mitigating the spread of viruses across a network.

            “The patent isn’t directed towards using a microscope to detect bacteria per se but toward mitigating the spread of bacteria on an airplane.”

            Seriously: were you born yesterday? We weren’t. You don’t need to have “designed a distribution system” (or built an airplane) to understand this “technology.”

            When will the lovers of software patents get over themselves?

            1. MM, the mere fact that you misquoted “distributed system” as “distribution system” is evidence enough that you’re not a skilled artisan.

              Fortunately (or not, depending on your view) there are no Daubert requirements for posting on this blog.

              If you want to educate yourself for free, start here:
              link to edx.org

              You may not have time to complete the coursework if you want to keep railing about how obvious all technology is, however. There’s a Sophie’s choice if ever there was one.

              1. MM, the mere fact that you misquoted “distributed system” as “distribution system” is evidence enough that you’re not a skilled artisan.

                Oh boy here we go again with the “you disagree with my expansive views about what is patent worhty so clearly you are ignorant of technology or the law” baloney again.

                Yes, we all know how sooper dooper techno all this stuff is! It’s like rocket science, but without the rocket or the science. Been there, done that. I’m not impressed nor should anyone else be. Claim 7 speaks for itself.

                1. Your present writing suggests that you are ignorant of the applicable technology. My view on what should be patent-eligible has nothing to do with your level of skill in the art.

                2. Your present writing suggests that you are ignorant of the applicable technology.

                  Keep repeating that to yourself, SlotGuy! It’s really compelling. After all, the claim we’re discussing is sooper dooper “techno”.

                  Sure it is.

              2. SlotGuy: You may not have time to complete the coursework if you want to keep railing about how obvious all technology is

                Nice strawman. Beat it on all weekend long if it makes you feel better, SlotGuy.

          2. Have you ever implemented a distributed system? If not, on what basis do you judge “no change in functionality”?

            The spec doesn’t enable a different or indeed any particular application, so there’s no record basis by which you could to a conclusion that there is a difference in the application of the virus detector to the telephone network, and the spec is silent on their being unexpected results (which would need to be proven by extrinsic evidence anyway) and it’s unlikely they exist because software is a perfectly predictable art. If there’s no uniqueness in application and no uniqueness in result there’s no basis to suggest there’s a change in functionality.

            The patent isn’t directed toward the detection of viruses per se but toward mitigating the spread of viruses across a network.

            No, because were the invention that Hile would still anticipate. Instead it is directed toward mitigating the spread of viruses across A SPECIFIC TYPE (namely a telephone) of network, when there is no basis in the record to suggest that particular type of network would be any different than any other.

            Lay opinions on the alleged section 103 obviousness of a patent are irrelevant, at least for now.

            The case has a factual record. The record shows that the system, but for the telephone network field, was known in the art. It is undisputed that a telephone network was known to even lay people. Thus the application of the known method to the known field will likely be obvious. It would be obvious before the office today (when it no longer applies textual TSM) and it would be obvious post-issuance because it is analogous to factual situations where the Supreme Court has declared obviousness.

            1. My earlier premise holds: it is far more likely that the combination of “known virus scanning” and “known telephone networks” were factually insufficient to render the patent obvious than that the entire Symantec legal team missed such a trivial argument. There are ample ways to knock out such a patent if your argument were correct and that would have made it impossible for the jury to render a $17M verdict. You’re right (below) that if you were correct, Symantec probably ought to have won. That that wasn’t the outcome indicates that your factual interpretation is probably not correct.

              Also, what do you mean by “software is a perfectly predictable art?”

              1. That that wasn’t the outcome indicates that your factual interpretation is probably not correct.

                If initial outcomes were correct we would have no need for an appellate system. There’s any number of reasons why Symantec may know of a defense but not raise it, or raise it but a jury not come to the proper conclusion.

                Also, what do you mean by “software is a perfectly predictable art?”

                If one writes a module that takes input X, does transformation Y and outputs Z, it will always do that. It will do that regardless of if the module is in a video game or tax software, and it will do it without fail whether you run the module one time or a million. That is in stark contrast to chem/bio, where X may behave in one manner in one context but in a different manner elsewhere.

                Software obeys rules that are known and unfailingly consistent. KSR makes clear that obviousness has two touchstones – knowledge by a PHOSITA and predictable outcomes. Most people, especially practioners (weirdly) view obviousness as a motivation or reasoning test. While motivation certainly helps to convince that a PHOSITA would know about something, when two known things are combined and the result is predictable the result is obvious. Most computer software claims involve the combination of known things, and because software is perfectly predictable the results are always expected. It’s very easy to show obviousness.

                What this case needed, and which the data shows the opposite of, is a teaching away or an inability to enable. That’s the only thing that would have saved the combination of “virus detection” in “phone network.” Instead, the specification relies upon prior enablement, suggesting there is no inability to enable. Hence it should be obvious, because there’s no question that both the detection and the network preexisted, and the results (that there would be virus detection in the new network) was entirely predictable.

                You don’t seem to be arguing that Hile doesn’t teach the virus detection system, and you don’t seem to be arguing that comp sci didn’t know of telephone networks (indeed, that would be a silly argument) yet you have this nebulous belief that there is non-obviousness because the case is currently found non-obvious. Well Alice was eligible until it wasn’t. If there’s a reason why something should be non-obvious, don’t you think someone can point to something that suggests it? Don’t you think the response to the Hile citation would have been something other than “I’ve now amended the claim to put it in a telephone network, and Hile is not a telephone network”? Like an argument that the telephone network would be a qualitatively different enablement, or present some unknown challenge? Instead the signs point to this case being allowed because no TSM existed during a pre-KSR examination. You’re asking me to defend Symantec’s lawyers when neither of us have access to the case file, which you know is a dead end. Why not decide the issue for yourself – come up with an argument why this shouldn’t be obvious and judge it fairly.

                1. Your lack of real world experience is showing again Random.

                  Even here on this blog we experience occasional bursts of “non-predictability” related to software implementation.

                  Visit again my big box of electrons, protons and neutrons and realize the evisceration mode that your logic must lead to: either all planned innovation is per se obvious and the only innovation that could be covered by patents is the “oops” kind, or you are grossly misstating the law of obviousness (among other things, like your version of 101).

                2. RandomGuy: Most computer software claims involve the combination of known things, and because software is perfectly predictable the results are always expected. It’s very easy to show obviousness.

                  Most claims (full stop) involve the combination of known things, and using improper hindsight makes it easy to “predict” the results because hindsight is always 20/20. KSR does not stand for the premise that enablement + comprehension = obviousness. Because if that’s what “obvious” actually meant, there’s no way Symantec could have lost.

                  If you combine a coffeemaker and a showerhead, the expected result is that you’ll get to drink coffee in the shower, but I don’t think that combination is “obvious” under any reasonable meaning of the word.

                  link to ecx.images-amazon.com

                3. If you combine a coffeemaker and a showerhead, the expected result is that you’ll get to drink coffee in the shower, but I don’t think that combination is “obvious” under any reasonable meaning of the word.

                  Ugh, see now I want to be very careful, because that is precisely the type of invention that KSR says is obvious (it meets the simple substitution exemplary rationale), and I’m worried you don’t understand KSR. The reason you think it wouldn’t be is because there is no textual teaching, suggestion or motivation that says someone has considered the shower + coffeemaker combo. But KSR makes clear that using that logic as a per se test is improper.

                  Maybe ABR is the better case to cite – there the court found obvious a radiant heater combined with a street paver and the testimony was that the combination wouldn’t be any more useful than the separate pieces, i.e. there was specifically no motivation to combine in that case. That didn’t stop the court from finding the combination obvious. Why? Because the street paving art already knew of radiant heat, and the results were keeping with the expectation.

                  If you know of a toaster and you know of a car, putting the toaster into the car is obvious unless the art wasn’t actually enabled to make the combination or unless using the toaster in the car doesn’t result in toast being made. If the toaster + car combination produces milk, congratulations, now you’ve got a non-obvious invention. But the toaster has passed to the public use, and you can’t re-monopolize particular uses of it – use of the toaster (whether in the kitcher or the car) belongs to the public, and if it’s resulting in the same toast you’d expect, then it’s almost certainly obvious.

                  KSR does not stand for the premise that enablement + comprehension = obviousness.

                  One of the premises that KSR stands for is enablement + knowledge of the pieces + expected results = obviousness. “[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” The way to defeat obviousness is to attack those three pieces. An incorrect way to deal with it is to admit all three pieces and then suggest they are not enough.

                  using improper hindsight makes it easy to “predict” the results because hindsight is always 20/20

                  It’s not hard to show predictable results, you simply show that the art was aware of the same principle the applicant is using. The Supreme Court has spoken on this – You guard against hindsight by properly applying prior art rules. You’ll find that 99 times out of 100, the applicant doesn’t have a unique way of looking at the world, he’s using the same logic the art already knew of. In this particular case, the applicant is using standard logic – virus detection is useful, and one would want to guard against viruses in any network, including phone networks.

            2. Paradigm convergent technologies, and they in many ways converged decades ago. Information/data networking started on phone systems, evidenced in still used stuff and standards, protocols, look at 56K modem limits, T1, DSL, RJ’s, paired wiring, colors systems, copper and fiber optic cables, etc. Its not POTS or analog voice that has virus problems, it is the data. Voice over IP is telephony but not really a distinct telephone network. If there is something new or not obvious to be solved uniquely in the hooking, handling etc, ok, but a distinction based on mere nomenclature is common nonsense.

              This is the logical equivalent of driving the patented roads and then someone later claiming a toll for driving through intersections because of repaving. Since directional signage on these roads is Jabberwocky we are easily lost.

      2. Wow, this thread is so full of nonsense I just don’t have the energy to even begin to respond to this stuff.

        I can only say that when you pack the SCOTUS with non-science people and the Fed. Cir. with non-science people that you end up with utter nonsense law like Alice.

        1. non-science people

          Where’s the “science” in this piece of junk claim?

          Tell everybody.

          These guys didn’t invent “virus detection.” Tell everyone what “science” they performed, what they discovered that wasn’t already known, and where that scientific discovery appears in the claim.

        2. Night,

          This is a mistake you seem to make consistently. You seem to think that, somehow, if the judges understood the technology well enough, they’d find these claims ineligible.

          Again, and I doubt this is the last time: You must draft eligible claims. The eligibility of your claims is totally different than the ‘technology’ you invented. If you can’t properly describe that technology in your claims, your claims are ineligible.

          No amount of scientific training will change that. Its a legal issue, not a technological one.

            1. My will has faded. This stuff is so far from the patent law I learned and so far from the science I learned that I feel like there is no meaning to any of these discussions.

              1. That’s the idea with the internet style shout-downs.

                Make the same disreputed statements over and over and over without integrating the valid counterpoints made and eventually the other side will simply become too tired to try to correct the misinformation.

                Other “ecosystems” handle this by not allowing this type of deception. But those cites don’t have as many comments…

      3. Alice is the applicable law, and the two-step analysis described there doesn’t have anything to do with the differences between the claimed subject matter and an “otherwise anticipating reference.”

        Computer is in the prior art. If claim only recited computer, it would be anticipated.

        Difference between prior art and claim is some otherwise ineligible junk that is “done on a computer.” Therefore, claim is ineligble.

        That’s Alice.

        Can I get a claim to this process:

        1. Detect a virus, where the virus is a computer virus found in data.

        Of course I can’t.

        What on earth difference could it possibly make if the data in question is data communicated by an old storage system? Or if the data is “data relating to a movie”? Or if the data is “data communicated between a brother and a sister”? Or if the data is “data communicated between the earth and moon”? Or if the data is “data communicated beween subscribers.”

        Even the discoverer of computer viruses couldn’t get a claim that protected “detecting a computer virus” in the abstract. There has to be something more and it can’t simply be narrowing “the field of use” to something that wasn’t specifically subscribed before. If there is something non-obvious about the field of use, the non-obvious solution to whatever problems are presented by that field of use has to appear in the claim.

    3. “All the discussion before people read the file?” Hile ‘776 was incorporated by reference into the specification. Did you miss that?

      Are you suggesting, despite that incorporation and the file history, that the dozen attorneys on Symantec’s defense team simply overlooked your proposed 103 argument that “Hile + telephone network renders the amended claim obvious”? Wouldn’t that be the pinnacle of malpractice?

      Or maybe defense counsel attempted to make that argument and failed at trial because, in actuality, not all technology is obvious to PHOSITA.

      Whether technology appears obvious to a lay person with no skill in the art is, thankfully, not legally relevant.

      But who am I to judge? Our lawmakers are now citing scripture as scientific proof that global warming cannot exist, so perhaps trying to apply reason to law is a lost cause.

      1. Or maybe defense counsel attempted to make that argument and failed at trial because, in actuality, not all technology is obvious to PHOSITA.

        You see some new “technology” in claim 7?

        Please tell us what it is.

        I love how you guys always switch to general hand-wavey baloney (“not all technology is obvious to a PHOSITA”) when you’ve got nothing else.

        Please tell us what’s non-obvious about applying generic “virus detection” to *any* pre-existing data communication system through which computer viruses might be transferred. Go ahead.

        Or are you going to pretend you were born yesterday? Or this is like rocket science to you because you’re just a “mechanical guy” and compooters are sooper dooper scary techno.

        1. Which hypothesis is more likely?
          a) Twelve lawyers for Symantec and their technical expert(s) failed to invalidate a trivially-obvious patent that applies “generic virus detection to any pre-existing data communication system” and, failing that, got hit with a $17M verdict, or
          b) you’re not PHOSITA and your view of the patent as trivially-obvious is in error.

          1. The answer is (a).

            Golly, SlotGuy, but you really do appear to have been born yesterday.

            We have a patent system where some shmucks went to the Supreme Court on an argument that patents could be used to prevent people from thinking about the meaning of legally obtained data.

            There were more than “12 lawyers” who failed to see why that argument was complete rubbish. But I wasn’t one of them.

            I’m pretty sure that you still don’t get it, though, which is rather sad but also not surprising.

      2. Whether technology appears obvious to a lay person with no skill in the art is, thankfully, not legally relevant.

        Who are referring to, SlotGuy?

      3. Hile ‘776 was incorporated by reference into the specification. Did you miss that?

        That’s kind of exactly the point I’m making – Applicant had a set of claims, the office cited Hile and said “your claims are no different than this prior art” and applicant’s sole amendment and argument with respect to claim 1 is to add a field of use limitation.

        Symantec’s defense team simply overlooked your proposed 103 argument that “Hile + telephone network renders the amended claim obvious”?

        I believe 103 was raised. Regardless, I don’t pretend to direct the defense, and just because a winning argument exists does not mean it was made competently or even intentionally not raised.

        Or maybe defense counsel attempted to make that argument and failed at trial because, in actuality, not all technology is obvious to PHOSITA.

        Not all technology is, but when the supreme court outright says that applying a known technique to a known prior art is obvious, and the facts are that the technique and the field were known prior, you probably ought to win that one.

    4. ” the sole change was a “field of use” change over an otherwise anticipating reference. That’s a 101 rejection.” Really?

      1. 1. A method of eating a hot dog, wherein the hot dog is eaten at 53 South Evans Road, Larkspur Indiana between 7:13 and 9:14 pm.

        That claim is not anticipated. And good luck with the obviousness argument. After all, I can just keep adding limitations and you’ll never be able to catch up. Appeal! Appeal! Appeal!

        It’s also enabled and useful (especially if you live at that address and you’re hungry) so you’ll be out of luck there.

        You want this stuff in the patent system? Does it “promote progress” or does it promote something else? Think about it from the perspective of the “target” of the claim.

        1. >>That claim is not anticipated. And good luck with the obviousness argument. After all, I can just keep adding limitations and you’ll never be able to catch up. Appeal! Appeal! Appeal!

          Seriously MM. Dismiss 103 like that. I think not.

    5. “In other words, the sole change was a “field of use” change over an otherwise anticipating reference. That’s a 101 rejection.”

      Uh, no. Maybe a 103. Lord you guys are easy.

      1. Uh, no. Maybe a 103. Lord you guys are easy.

        Certainly its a 103, but it’s also a 101. Would you be more comfortable if he phrased it as “a. Take the known method, b. ‘apply it’ to a telephone network”? It’s like you need to be led by the hand everywhere.

        1. Random, your comments evince such an arrogance and ignorance that only the SCOTUS could rival your ego. I presume that you are a wannabe, but with far less talent. How about you stop the stomping on patent law.

      2. By the way, a field of use change over an otherwise anticipating reference is what knocked out Ultramercial under 101.

    6. Random, claim 7 was allowed because of the use of codes to signal that virus checking was to be done. The examiner specifically referenced the June 28, 1999 amendment as his reasons for allowance. The remarks regarding claim seven, which was not amended, said this

      “Regarding the rejections of claim 7 … the examiner’s attention is directed to column five, lines 46-47 of Hile et al. which teaches that a user is given an opportunity to select whether virus scanning is desired. The virus ID messages noted by the examiner are loaded after virus scanning is selected (see Hile et al., column five, lines 47-54). In contrast, claim 7 includes a feature of determining that the virus screening is to be applied to the call based upon at least one of an identification code of the calling party and identification code of the called party.”

      1. The examiner specifically referenced the June 28, 1999 amendment as his reasons for allowance.

        When the examiner references the amendment, the part of the amendment he is referencing is the amendment to claim 1. We know that because Claim 1 issued. If what you are saying is correct then only Claim 7 would have been allowable and Claim 1 would have continued as rejected.

        1. The remarks regarding claim seven, which was not amended, said this

          I also assume you know that the scope of Claim 7 was, in fact, amended, it was just not amended independently from the scope change of Claim 1. All signs point to Claim 7 being allowable because it depended from allowable Claim 1, not because it was independently allowable.

          1. Random, claim 7 was and is independent.

            The only argument for its patentability was the statement I quoted. I don’t understand how you think the examiner was influence by anything amended into claim 1, when he made no reference to claim 1 in his reasons for allowance. He simply referenced the entire document filed on that date, not to any specific part of it.

            Any fair reader would conclude that claim 7 was allowed because of the codes.

            As to whether this was or is obvious is a different question. But I assume the examiner would have had to come up with additional art, but he could not be bothered, so he allowed the claim.

            1. Random, claim 7 was and is independent.

              The patent is a public document, it’s very easy to pull it up and see that claim 7 is dependent on 1. You’ve probably gotten confused by the fact that Dennis rewrote it in independent form.

              The only argument for its patentability was the statement I quoted.

              No, the main argument for patentability (the one that was asserted against every other claim, all of which issued btw) was that they all were amended to contain a limitation for a phone network, and Hile was not a phone network. That’s why when he “referenced the entire document…not to any specific part of it” the only thing he can be referring to is the phone network limitation, as that is the only basis which could have turned every previously rejected claim into an allowable one. If only Claim 7 flipped, then I would agree with your argument, but that’s not what happened – Claims flipped that had nothing to do with the Claim 7 limitation.

              I don’t understand how you think the examiner was influence by anything amended into claim 1, when he made no reference to claim 1 in his reasons for allowance.

              Even ignoring the mistake about Claim 7 – Claim 1 was rejected, and then claim 1 issued, so the examiner HAD to be influenced by either amendment or argument as to claim 1. When you take in that claim 7 is dependent, the likely result is that claim 7 depended from an allowable independent. It’s true we don’t KNOW that, as I suppose there could be two reasons for 7 being allowable, but I explained why that argument is bunk in 7.7.2.

                1. I agree that the limitation to the telephone network was not enough.

                  I think that is why they asserted claim 7.

                  Possibly, but you understand that “an identification code of the calling/called party” is an inherent quality of the telephone network, right? That’s what phone numbers are. From an obviousness standpoint, Claim 7 isn’t going to be any harder to show than Claim 1.

      2. BTW, just so you can understand the rejection – the claim requires screening based upon an identification code, which could be the phone number of the caller or callee. Having “a user [that] is given an opportunity to select whether virus scanning is desired” is at least an equivalent step, because both the ID code and the personal setting are designed to determine whether this particular person has requested virus detection.

        In short, the argument made with respect to claim 7 is a) entirely unconvincing it isn’t taught by Hile and b) even if it wasn’t in Hile, it is something that would be known to be present within a telephone network anyway.

  11. The invention here isn’t in a specific method of microscopic analysis, it’s in applying a microscope in a specific way: “on an airplane.”

    If anybody finds that logic convincing, then I’ve got a bridge to sell you.

  12. SlotGuy: The patent in suit was very clear as to its scope.

    Does it cover the detection “on a telephone network” of viruses that haven’t been discovered yet, or does it only cover the detection of viruses that were known (as of the filing date) to be detectable in computer data?

    Or did these guys discover virus detection? They kinda act like they did.

    Heckuva job, PTO. What a joke.

  13. The prior art:

    routing a call between a calling party and a called party of a telephone network;

    receiving, within the telephone network, computer data from a first party selected from the group consisting of the calling party and the called party;

    inhibiting communication of at least a portion of the computer data from the telephone network to a second party selected from the group consisting of the calling party and the called party

    And the micromentalist “innovation” that any twelve year old could have come up with? Deciding to “check the data for viruses” based on the “ID code” of one of the callers.

    That’s it, folks.

    Substitite “determine if one of the callers is a software patent lovin’ g00fball” for “virus determination” and you start to get an idea of how hard the bottom is being scraped here.

    Chalk up another humiliation for Intellectr0ll Ventures. Maybe someday soon the attorneys who work there will get a life. Kinda doubtful but it’s possible, I suppose.

  14. This is why you need a MoT test where software is involved. These are instructions for a processor or processors to execute.

    Is the result of executing the instructions a new physical structure or composition of matter, or some change in the physical world like the control of a motor or actuator, or is the result simply further processed information? If the latter, not.patent.eligible. Once past that threshold, on to 102/103/112 etc.

    Getting to a 102/103/112 decision off the bat costs a million bucks, which is the problem. Patentable subject matter is basically a moral choice that has to be made by our society. As of now, the balance is out of whack and immoral takings are occurring every single day. It has to change.

    1. > Is the result of executing the instructions a new physical structure or composition of matter, or some change in the physical world like the control of a motor or actuator, or is the result simply further processed information? If the latter, not.patent.eligible.

      And yet, that is not the standard. Both the USPTO and the court have disagreed with you. The patent has survived the 101 inquiry at both stages – and the district hearing was last month, hence post-Alice. The question that is now under review is the significance of the patented invention in the infringing product.

      1. Respectfully, this claim seems pretty ineligible to me. The prior art has telephone networks, virus detection and computer implemented instructions.

        Strip away all the meaningless labels (calling party, called party) and what do we have?

        An instruction to not send a signal in response to an input. That’s an abstract idea that humans have implemented in various forms for a long, long time. (“Don’t tell John about the party, Elaine said she won’t come if John also comes.”)

        Here, that abstract idea is confined to telephone networks, but that doesn’t matter.

        The prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the (formula) to a particular technological environment or adding insignificant post solution activity.

        Help me out. What am I missing? This one seems pretty easy to me.

    2. Martin, you say this stuff day in and day out, but how do you square it with a highly functioning tech industry that is the king of the world — by far.

      Is it possible that you are just one of the poor unfortunate souls?

  15. I’m interested in the enablement of this claim and how that plays into the 101 argument.

    For example, how does the specification enable “detecting…a virus in the computer data”? This is not a trivial task (whole companies exist to do this, e.g., Symantec). Does this method purport to claim all ways of detecting a virus? I think there are serious concerns here that this patent is overbroad and non-enabled.

    Here’s one quote from the specification: “The virus-detecting processor enables virus screening in response to receiving the enable message, and disables virus screening in response to receiving the disable message.” The spec doesn’t tell someone how exactly this virus-detecting processor works.

    The spec, at least to me, seems to rely on the knowledge of the PHOSITA for how to do this step. If that’s the case, I’d say either it’s not enabled or can’t be used to lend patentability to the claim. Either way the claim is invalid.

    Ned, I’d say that the data processing that might have made it pass 101 that you point to, because they don’t describe how to do it, is just generic, known functionality.

    1. >>just generic, known functionality.

      Of course this is a 102 analysis. Moreover, the virus detection is enabled in the sense that it is meant to cover whatever type of virus detection is available. The virus detection in itself is not the point. The combination is the point.

      Jane what is your technical background? You sound like a non-science person to me or bio.

      I find these 101 discussions to be anti-science and they remind me of the witch trials I read about long ago. If a claim is so bad, then a real 102/103/112 analysis should be available to invalidate the claim.

      1. I also find it ironic that virus detection is “hard” but that the current claim is real easy. Of course any invention when looked at up close and explained is easy. Every invention.

      2. Night, you miss the point.

        Two possibilities: either it’s known or unknown. Either way the patent should be invalidated as either just using known generic things to carry out known steps and the only thing “new” is nonstatutory subject matter (the known part) or not-enabled (unknown).

        Also, not sure why you would assume I don’t have a technical background, seeing as I’m making a proof…..

        1. Jane –

          I think it is you that misses the point. The invention here is related to applying virus protection to a phone call. The exact virus protection technique applied is not necessarily important.

          If the claim were instead, to a mouse trap and the claim recited: wherein the spring is attached to the base board, you might say: the claim seems to cover all methods of attachment, does the specification say if the spring is glued, screwed, welded, nailed or wedged, there are many ways to do an attachment, they can’t seriously feel entitled to all of them! Well, yeah, they do. precisely how the spring is attached is not important. That it be attached is, and that is what is recited.

          1. I fully understand that. What interests me is how that plays into the 101 argument.

            So e.g., there are so many ways to scan for a virus, but they’re not detailed. So those ways can’t be what is the “patentable subject matter.”

            Again, making a proof. You assume x, see where that leads. Assume ~x, see where that leads. If both lead to invalidity (but on different grounds) then the patent is invalid regardless of whether x or ~x is true.

            1. You would have to first prove that the virus scan was part of what makes the claim patentable at a point of novelty. See again My argument about not needing to explain how an IC engine works to use such an elemen. As a supporting contextual part of a claim.

          2. The invention here is related to applying virus protection to a phone call. The exact virus protection technique applied is not necessarily important.

            ROTFLMAO

            Try to believe it, folks.

          3. Les: The invention here is related to applying virus protection to a phone call.

            “related to”?

            What else is there?

            My invention is “applying virus protection” to apps sent to a mobile device where the mobile device is on a train or subway care refurbished after March 6, 2015.

            Can I haz patent now? I’m just trying to promote progress here, after all. Surely you don’t question the importance of this technology. Maybe you just don’t like trains? That must be it.

            1. If there is some reason why the 3/6 refit made it difficult for ordinary ap screeners to work and your invention IS new and, for example, works in spite of that difficulty, they sure, you may haz a patent. And a grateful nation thanks you for your efforts.

        2. I am confused by your point as well. The invention claimed is not about virus detection per se.

          Let me give you a non- software example. Suppose I claim a new transmission gear set for an IC engine. If my claim requires recitation of the IC engine produce output to the transmission gear set for rotation, is my claim invalid because I don’t explain in the claim the how the combustion cycle is used to produce the power?

          1. No, see my comment above.

            What I’m saying is that we have to look that the consequences of certain arguments, and what I am interested in is how enablement plays into 101 arguments, an area that I think is not often explored.

            Courts and parties often argue/decide patent issues separate from each other, without considering the larger context and how the sections are inter-related.

            My interest is in how 101 and 112 interact, which is not very well-defined in the case law.

            1. There is no interplay between enablement and 101 eligibility. They are different in the code for a reason.

              Conflating 101 with a 102 inquiry has been part of the problem with the 101 case law of late. I would not be inclined to see further conflation.

                1. Put me down for one of those Whip Conflation Now buttons.

                  You really want to advertise yourself as being that clueless, Les?

              1. I don’t agree.

                A statute is not written in isolation. Sections are enacted knowing other sections exist. To claim that there is no interplay ignores the broader statutory scheme. If you want the cleanest example: if you prove infringement, but the infringer can show that it is the exact same thing that was in the prior art, you lose on anticipation. Clearing infringement and prior art are intertwined.

                It is not conflating schemes. It is a question of “what does a finding under one section mean for other sections?”.

                1. The Supreme Court has told you otherwise Jane.

                  No, they never did any such thing, “anon.”

                  Nice try, though.

                2. Losing on anticipation is different than losing on non-infringement. It is well-established that “practicing the prior art” is not a defense to infringement. To your question of 101 vs 112, I think two simple examples prove the general rule that there is not necessarily a relationship between 101 and 112. Consider:
                  a) A claim to a novel plastic compound (eligible) in a patent specification that fails to teach how to make it (not enabled); and
                  b) A claim to a method for exchanging financial obligations over a computer network (ineligible) in a patent specification that provides sufficient detail for PHOSITA to make and use the method (enabled).

                  I’m not sure why you want to conflate two different and clearly distinct tests. Whether something is abstract or a law of nature has nothing to do with whether the specification sufficiently disclosed how to make it. More specifically, enablement under 112 should not (and in fact, does not) have anything to do with the 101 tests. Perhaps there would be an argument re: written description impacting 101 if the description were so obtuse that nobody could understand what was being disclosed, but that wasn’t the case here. The patent in suit was very clear as to its scope.

                  To your original query, did you miss the part where the patentee incorporates by reference two other patents that disclose methods for in-transit virus detection? The invention here isn’t in a specific virus detection method, it’s in applying a virus detection method in a specific way. You conveniently omitted the part about “within the telephone network”.

                  Do you suggest that you’re PHOSITA for the purposes of this patent, and that the patent is trivially obvious? Because if it’s so trivial to knock out, why didn’t the good people at Morris Nichols succeed in doing so at trial?

                3. SlotGuy: The invention here isn’t in a specific virus detection method, it’s in applying a virus detection method in a specific way. You conveniently omitted the part about “within the telephone network”.

                  That’s “specific”? Identifying a field of use that nobody ever suggested (for very good reasons) was outside of the confines of “virus detection”?

                  Funny stuff. Tell everybody what’s so special about computer data “in a telephone network”, as opposed to computer data generally and then show us where that specialness is addressed in the claim.

                  I can hardly wait.

                4. More specifically, enablement under 112 should not (and in fact, does not) have anything to do with the 101 tests.

                  But written description has something to do with the 101 tests, doesn’t it? If you look at Morse a lot of the language in there is language that reads upon what today is WD. Especially the line of logic where the court noticed that if Morse truly possessed the scope of the abstract idea claim, he shouldn’t have filed a later application. The later application seemed to prove he lacked possession of the full scope in the prior application/patent.

                  To your original query, did you miss the part where the patentee incorporates by reference two other patents that disclose methods for in-transit virus detection?

                  But two other methods are not the unlimited “any way of virus detection” scope which the claim covers, right? That’s particularly relevant because:

                  The invention here isn’t in a specific virus detection method, it’s in applying a virus detection method in a specific way. You conveniently omitted the part about “within the telephone network”.

                  Other methods of virus detection are more or less easily enabled within a telephone network, aren’t they? In fact, how can you make any kind of educated statement about whether one would be enabled to “apply virus detection in a specific way” without first discussing what particular type of virus detection you’re applying?

                5. It is well-established that “practicing the prior art” is not a defense to infringement.

                  You misunderstand. Perhaps I was not clear.

                  Patentee says, “you infringe because you do x, y and z, which is what I claim exclusive rights on”
                  Accused infringer conclusively proves “x, y and z” (i.e. exactly what the patentee says he owns) was in the prior art.

                  Either the patent doesn’t read on “x, y, and z” or the patent is invalid. That which infringes if later, anticipates if earlier. The accused infringer does not care which is right: he wins. Nor should the court care (at a high level: there are reasons such as Blonder-Tongue, why it matters which one is correct, but for purposes here that does not matter)

                  My point is that what is claimed by the patentee cannot differ when they are opposing a motion for non-enablement or opposing a motion for 101. That is, a patentee cannot argue X for purposes of showing enablement, and argue ~X for purposes of showing patentable subject matter.

                  My interest lies in how much arguments made for enablement undermine arguments that can be made for not meeting 101. As RandomGuy points out, both are tied to the spec, so to say that one does not impact the other is folly.

                6. Jane: That is, a patentee cannot argue X for purposes of showing enablement, and argue ~X for purposes of showing patentable subject matter.

                  Except in the software patenting “arts” where this bizarre behavior is routine and deemed perfectly acceptable.

                  On one hand, the mere description of an information processing function covers all the possible new structures that perform that function. But the functional description is not abstract nor does it protect the mere functionality (which is not eligible for patenting) because Joe Bob can make one such structure (just don’t ask Joe Bob to describe that structure — it’s hard! Because it’s really small and Joe Bob isn’t a chemist or anything like that. He’s just a little guy patent attorney who was born yesterday — give him a break!).

              2. Bluto: Conflating 101 with a 102 inquiry has been part of the problem with the 101 case law of late.

                Can you be more specific?

                It really sounds here like you have absolutely no clue about what section 101 is and how it works.

                1. Asking such a question makes it sound as if you haven’t read Alice or Bilski, or any of the ones in between.

                2. sking such a question makes it sound as if you haven’t read Alice or Bilski, or any of the ones in between.

                  I’m pretty sure that “how I sound” to a guy who believes that mental processes should be eligible for patenting doesn’t matter too much.

                  Alice and Mayo addressed the relationship of claims to the prior art. The subject matter protected by patents has to be new, useful and eligible. That’s section 101.

                3. The rulings all say the claims were abstract because the court defined gist is old.

                  That reasoning is absurd and conflates 101 and 102.

                  If 101 deals with novelty, then what for 102?

      3. Night Writer: The virus detection in itself is not the point. The combination is the point.

        Ah yes, the magical mystical suprising combination of “virus detection” with … wait for it, folks …. data that might have viruses in it!

        Wowee zowee!

        Tune in next time when we combine “using a microscope” with “looking at something small … on an airplane!”

    2. Personally, I think one skilled in the art could easily determine how to detect a virus in data. It may not be trivial, but it’s known. (Just do a search at the PTO for “virus detection” prior to the filing date of this patent.)

      Personally, I find it hard to determine what would or would not be patentable under Alice. Why not just define the “abstract idea” as “determining whether a virus exists in computer data and preventing the computer data from being communicated if a virus exists”? Then the claim is invalid, as the computer functionality just implements the abstract idea.

      Now, if you define the “abstract idea” as “determining whether a virus exists in computer data”, then the “something more” might be “preventing the computer data from being communicated if a virus exists”.

      For Alice, everything depends on how you define things, which makes it amorphous.

      1. Personally, I think one skilled in the art could easily determine how to detect a virus in data.

        Careful with your thinking here – Can one skilled in the art easily determine every means of detecting a virus (i.e. an otherwise non-limited result) or does the art know of some techniques for detecting viruses?

        Saying “I know a particular building in the city” is not the same as saying “I know any building the city you choose”.

        Then the claim is invalid, as the computer functionality just implements the abstract idea.

        Yeah, that’s a pretty good argument for the problem with the claim being the functional language, isn’t it?

    3. Jane, I was looking in the specification myself to find out how the virus checking was done. They essentially propose two the methods. Looking at a group of packets of computer data for virus signature or alternatively writing the computer data onto a model of a computer and then using standard virus checking programs.

      But because the claims are so broad with regard to virus checking without any description of how the virus checking is to be done, the claims may cover the whole field of checking transmitted computer data for viruses. If that were the claimed invention, then there would be a problem.

      But let’s assume for the sake of argument that this step is an old step, as it is well known how to check computer data for viruses. As you know, when claiming well-known structure and methods as an element of a larger combination or method, one is entitled to claim these well-known structures and methods functionally.

      What seems to be the invention here then reduces to the use use of codes the transmitted computer data signal that the virus checking is to be done.

      I haven’t checked the prosecution history to see even if this is novel, but because of its location in the claim, that appears to be the invention.

      1. Jane, confirmed when checking the prosecution history. The examiner allowed claim 7 because of this remark,

        “Regarding the rejections of claim 7 … the examiner’s attention is directed to column five, lines 46-47 of Hile et al. which teaches that a user is given an opportunity to select whether virus scanning is desired. The virus ID messages noted by the examiner are loaded after virus scanning is selected (see Hile et al., column five, lines 47-54). In contrast, claim 7 includes a feature of determining that the virus screening is to be applied to the call based upon at least one of an identification code of the calling party and identification code of the called party.”

  16. On 101, probably pass. The communication of data from one point to another is inhibited based on the results of the data processing steps. This is a physical act, and is the kind of application of data processing that must be present to pass 101.

    1. One of the rungs of the ladder of abstraction for this claim is:

      “Prevent viruses from getting from computer 1 to computer 2 by connecting them through computer 3 and have computer 3 check for viruses. ”

      For fairness though, we should construct all the rungs, pick the one most favorable to the inventor, and then see if there is something more.

      1. “Prevent viruses from getting from computer 1 to computer 2 by connecting them through computer 3 and have computer 3 check for viruses. ”

        That’s not an abstract idea, though, as it already includes the technical context. To get to an abstract idea, you’d have to go further up the ladder to “prevent bad things from happening to my data.” But then, the claim adds “something more” to the abstract idea.

        While 101 analysis under Alice is a little murky, it’s simply not true that every claim can be viewed as containing nothing more than an abstract idea.

          1. Tell that to the courts and the PTO

            So far all the abstract claims that have been tanked are information processing junk that is functionally claimed.

            Let me know when that changes and you might have a point.

            Until then, you just sound like a crybaby who isn’t getting what he wants.

        1. Good point. How about the following more abstract process:

          Prevent unwanted information in a communication from party 1 to party 2 from getting to party 2 by communicating the information through party 3 and have party 3 check for unwanted information.

          The ‘something more’ for Alice could be:

          a) Communications and checking are performed by computer.
          b) The unwanted information is a virus.

          I am sure you can’t use a) because ‘…on a computer…’ is not something more.

          That leaves ‘virus’ as your something more for Alice. But all viruses are ‘unwanted communications’. You cannot provide something more by claiming ‘viruses are bad’ as your invention.

          1. The claims are directed to the ancient abstract idea of filtering. That the ancient filter paper or cheese cloth is replaced here” by do it with a computer” does not add the something more necessary to save it from the guillotine. Off with its head!

            Boom! Aliced.

            1. I think if the judge here ruled that the abstract idea in this patent is ‘Filter out something unwanted’ they would have to add that:

              a)Filtering information is the same as filtering cheese
              b)Using a third party is the same as not using a third party
              c)Using computers adds nothing

              At least on b) the judge would be incorrect since 2 does not equal 3.

              1. They were wrong in Alice as the claim recited more than the allegedly abstract idea of intermediate settlement. It recited details related to the establishment and maintenance of shadow accounts….

                So, if the rule is ignore the claims language or distill it down to a gist…

              2. Using a third party is the same as not using a third party

                And using a computer is “not the same as not using a computer.”

                But for the purposes of determining whether an informtion processing “innovation” is eligible for patenting, the term “on a computer” adds nothing.

                For the same reasons, “using a third party” is also not a “limitation” that is going to get you out of a serious eligibility problem.

                1. If your ‘gist’ is ‘communication between 2 parties’ but your claim has 3 parties in it and the third party does something then it is clear (to me) that there is something more than the ‘gist’, again because 2 does not equal 3.

                  My point was to show that if your ‘gist’ is too abstract you will end up having ‘something more’ and so are eligible under Alice, even though everything looks dumb.

                2. f your ‘gist’ is ‘communication between 2 parties’ but your claim has 3 parties in it and the third party does something then it is clear (to me) that there is something more than the ‘gist’, again because 2 does not equal 3.

                  Pretty sure the answer is going to depend on what the third party is doing.

                  More importantly, since the phrase “the gist” has no meaning legally and doesn’t show up in any of the Supreme Court cases dealing with 101 it’s not at all clear what you’re talking about. But go ahead and define the term “the gist” for everybody. That’ll clear things up, I bet.

                3. Except for the fact that the question has already been asked – and answered (by me, with the ready assistance of Black’s Law Dictionary), Malcolm might just have a point.

                  Oh wait, no, no he does not.

          2. It’s grossly oversimplifying the situation to say that “communications and checking are performed by a computer.” The claim requires routing a call through a telephone network (which is much more than “a computer”), intercepting the data in the telephone network itself, detecting the virus in the intercepted data, and removing the virus from the data that is forwarded through the network.

            That’s a lot “more” than “preventing unwanted information in a communication, using a computer.”

            1. DanH The claim requires routing a call through a telephone network (which is much more than “a computer”), intercepting the data in the telephone network itself,

              That’s old stuff.

              [the claim requires] detecting the virus in the intercepted data

              “Detecting stuff” in the abstract is both ineligible and old. And that’s all that the claim adds to the art.

              [the claim requires] removing the virus from the data that is forwarded through the network.

              No, it doesn’t.

          3. Prevent unwanted information in a communication from party 1 to party 2 from getting to party 2 by communicating the information through party 3 and have party 3 check for unwanted information.

            First, that is not what the claims read. Your interpretation takes the specific details of the claims, disregards and overgeneralizes many details, and asserts the “gist” of what the claims “basically” state in order to portray them as trivial. This is a common practice, but also an incorrect one.

            Second, every patented invention can be separated into an “inventive concept” (i.e., the idea that gets past 102/103) and “routine implementation details” (i.e., the rest of the claim). It looked for a while that that’s how Alice would be wielded, but the courts and USPTO have recognized the futility of that overuse and have backed off from it.

            1. in order to portray them as trivial.

              Is David Stein suggesting that “detecting viruses” in computer data (in the abstract generalized manner described in the claim) is some sooper dooper new high falootin’ technology that the inventors of this patent came up with for the first time?

              Because “detecting viruses” in computer data does seem incredibly trivial. Oh but this is “over the phone”, you say?

              Well, that changes everything.

              LOL

          1. Sword is a good choice of words since you chop the claim in two. The higher up the ladder you chop though, the more you leave below. In the example from Les, chopping at ‘Filter out something unwanted’ also means concluding that using a third party is the same as not using a third party.

            So there are some limits on the sword.

    2. I think that’s right. The claim is certainly broad, but it’s limited to in-call virus detection and blocking. For it to be invalid under Alice, you’d need to be able to (1) find an abstract idea that isn’t dependent on the technical context recited in the claim, and (2) show that there is nothing more in the claim than simply “apply it, using a computer.” You can’t do that here.

      1. DanH, I agree that this claim seems to teach something concrete, but am less sure that one can’t find an abstract idea in most cases including this one if you stretch a little.

        The abstract idea here seems to be having a third party verify a first party before introducing to a second party. This abstract idea was widespread prior to the priority date.

        ex. If you need a note from the Dr. confirming no longer contagious before being released from quarantine.

        (third person, doctor, determines contagious or non contagious state of the first person, who is a potential virus carrier, before authorizing them to contact a second person (classmates, coworkers, family members etc.).

        1. The abstract idea here seems to be having a third party verify a first party before introducing to a second party. This abstract idea was widespread prior to the priority date.

          I don’t think that’s an accurate representation of what’s going on here. It’s more like that a third party actually removes disease-causing portions of a communication between the first and second parties, while letting the remaining portions of the communications through. I don’t think there’s anything like that in the non-technical world.

          1. It’s more like that a third party actually removes disease-causing portions of a communication between the first and second parties, while letting the remaining portions of the communications through. I don’t think there’s anything like that in the non-technical world.

            It’s called “editing.”

            And claim 7 does not require “editing.” It is infringed merely by stopping any portion of the data from being sent.

            1. It’s called “editing.”

              It’s analogous to “editing,” but non-technically-mediated communications don’t have “viruses” in them. As David Stein pointed out somewhere in the thread, you don’t get to ignore limitations of the claim just because they’re inconvenient to your analogy.

              You are right that claim 7 doesn’t actually specify that it’s the virus that is excised. It was probably meant to, for what it’s worth – that looks like a defect in the claim to me. If you’re saying that the 101 analysis hinges on that issue, then fine – I’ve done enough thinking for today.

              1. non-technically-mediated communications don’t have “viruses” in them.

                It has been known since forever that communications have undesirable or “bad” elements in them. That is the only meaning of “virus” that matters for the purpose of the claim because the steps in the claim do not depend on or concern themselves with any unique aspect of “viral” bad elements as opposed to “swear words” or “slander” or “insults”. All that matters is that this “viral” information is “bad” and that it’s “detectable” (two very well known features of viruses that I’m 99.99% certain that the “innovators” here did not discover).

                1. It’s been known since forever that to make a new molecule you use electrons, protons and neutrons and attach them in a manner that likewise has been known since forever.

                  Hmmm – if we stick to the merely “objective physical structure” meme, this “known forever” aspects – separate from any type of functional considerations – quite clearly renders ALL items in the statutory classes of manufactures, compositions of matter, and machines per se obvious (in exactly the same manner that the “logic” is being attempted to be used for software innovations).

                  Oops.

                2. (and I’m more than 99.99% certain that NO innovators anywhere in any field today discovered electrons protons and neutrons and how new molecules are created.)

                  Like the “Gist/Abstract” sword without limits, the “logic” being wielded here simply proves too much and eviscerates the entire system. This is not just anti-software patent “logic” – it is anti-patent “logic.”

                  Time to stomp on that gas pedal and take that “logic” to its logical end.

      2. you’d need to be able to (1) find an abstract idea that isn’t dependent on the technical context

        You just made up a limitation that the Court did not give you – that is just NOT what the Court said or did.

        In fact, it is precisely NOT what the Court did.

        1. You just made up a limitation that the Court did not give you – that is just NOT what the Court said or did.

          I don’t think so. The Court distinguishes between an abstract idea and an application of an abstract idea. The technical context is that thing upon which or with which an abstract idea is applied – it’s not part of the abstract idea itself. An approach that lets you put anything you want in the abstract idea, i.e., the approach that Les is satirically presenting, renders the term “abstract” devoid of any meaning whatsoever. It’s fair to say that the term “abstract,” as used by the Court, is fuzzy, but it goes against pretty fundamental legal principles to say that it means nothing at all.

          Look at Alice – there, the “abstract idea” was the concept of intermediated settlement. Right or wrong, the court found that the claim required nothing more than implementing that concept on “generic computers,” but it definitely didn’t incorporate the computers themselves into the conception of the “abstract idea.” For what it’s worth, I think the Court’s application of the law to the facts in Alice was a close call. But, if you simply imagine a generic computer playing the role of each party in the intermediated settlement, there really doesn’t appear to much “more” in the claims in Alice.

          In Bilski, it was even more clear cut that the abstract idea was a hedging technique, that (at most) could be said to be applied on a generic computer.

          Here, you can’t simply substitute a generic computer for each of the called and calling parties. There’s something else in the middle, that is handling the call routing, the intercepting and evaluation of communications data, and the stripping of virus data from that communications data. That’s an inherently technical (i.e., non-abstract) set of functions, and there’s no analogue for those functions in normal (i.e., non-technically mediated) communications. Not to mention that a virus, as that term is used in the claims, is an inherently technical thing. When one person is talking to another, for example, you don’t (and can’t) have someone in between, removing parts of the communication that can cause disease or other physical malfunctions in the receiving party.

          1. Although all this commentary controversy is of course meaningless unless and until this claim gets a Fed. Cir. decision on 101, I cannot help noting re prior art that for many years telephone calls to radio station talk show announcers were run through a third party equipped with a time delay and switching system to cut out obscenities from the otherwise incoming phone call before the obscenities got onto the air.

            1. Here’s some more prior art. More that half a century ago the U.S. Signal Corps was regularly sending encoded digital data over the same phone lines as voice signals from point A, which digital data was separated by frequency filters [without interfering with the voice signals] at point B to digitally operate teletype machines at that location B while the voice signals continued on location C. If the digital data was corrupted [so that the teletype was not generating proper output] that was communicated back from a observer at B to A over the same phone line.

          2. The Court distinguishes between an abstract idea and an application of an abstract idea.

            Not really – since the Court cannot be bothered to actually define “abstract” and in truth provide no limits to the “Gist/Abstract” sword, your attempted limit here is not what the Court did.

            The technical context is that thing upon which or with which an abstract idea is applied

            This does not work as you indicate either – even Random Examiner picks this thought apart.

            Sorry DanH, I sympathize with how you want this to play out and all, but what the Court has actually done just does not jibe with your wants.

    3. The thing that has worried me about the “abstract idea” application as taught by the Supreme Court is that these generalists have strange ideas of what is concrete and what is abstract. If you convince one that something is a “building block” then it is game over. Thus the difference between an “operational environment” (good, perhaps), and a more general tool applied to a “field of use” (we know that is always bad) is far from clear in all instances.

      It invites a broad-brush attack, leaving the patentee to prove a negative. That the invention is not abstract.

      1. It’s even worse because proving that negative involves “abstract” which the Court has not defined, and which will only be applied after the Gisting (also not defined).

        Nose of wax anyone?

        (Like in Phoenix. In August. In a power failure.)

      2. Erik, the court is clearly using the term abstract to (at least) include non statutory subject matter. Information processing (Benson) has been called both abstract and non statutory by the court.

        Diehr is an example of an application of the abstract (math) to a physical application. Flook, just updating an “alarm limit,” is not.

        I try to keep it simple, at least for my own analysis. If what it going on is a form of information processing, it is both non statutory and abstract. In turn, a statutory application is something physical, some change to a new state or thing.

        1. (s i g h)

          Ned continues his campaign of misinformation and subterfuge.

          Let’s make three critically important corrections.

          1) Diehr cabined Flook, as well as it cabined Benson – one should not forget this. See Bilski.

          2) Under the law of 35 USC 101, the section dealing with Statutory subject matter is the section of the four classes – PERIOD. There is a very real reason why the Court has used the language of “exceptions” instead of the language of “not statutory subject matter.” Ned continues to ig nore this as well as ig nore what the Court did in Alice by hand waiving away the fact that the statutory class portion of 101 was met. That this was met was stipulated by both sides, and thus was not an issue before the Court (and any motion of the Court on that accord lacks authority – the Court simply does not have authority to “proactively” render an advisory opinion that so re-writes the actual words of Congress (for example, creating and adding the word “technological” that Congress simply did not use.

          3) Ned (once again) attempts to resurrect MoT into something the very Court he adores has proclaimed it NOT to be.

          This type of BLATANT pick-and-choose-that-which-aligns-and-conveniently-ig nore-that-which-does-not has NO place in an honest dialogue about the law.
          No place at all.

          Time to stop the “selectivity” games Mr. Heller.

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