Federal Circuit Cases to Watch on Software Patentability – Planet Blue

 Guest Commentary by Robert Stoll

In the wake of the Supreme Court’s decision in Alice Corp v. CLS Bank (2014), there have been dozens of decisions in federal district courts and at the Federal Circuit that have applied Alice and Section 101 to a wide variety of business method and software related patents. And in the vast majority of these cases, the courts have invalidated the patents.

This trend line has led to rampant speculation about the end of software patents. But a review of the patents in those cases indicates that the claims at issue in most of the district court cases (and arguably all the Federal Circuit decisions) were directed to business methods that would have likely been held invalid under Bilski and other pre-Alice decisions. What we have seen far less is how courts will apply Alice to patent claims directed to software technology (as opposed to business methods).

Arguably the first of those cases is on its way through the Federal Circuit. The McRO (Planet Blue) v. Activision Blizzard, et al. (C.D. Cal. 2014) (“Planet Blue”) appeal pending at the Federal Circuit may be an important indicator of how software patents will be evaluated by the courts going forward.

Unlike many of the other Section 101 cases that have largely involved simple financial/business practices or similar non-technical “inventions,” the patents in Planet Blue are directed to what appear to be actual technological challenges. The patents utilize complex and seemingly specific computer-implemented techniques.

And yet the Planet Blue patents were found invalid under Section 101 in the district court. In deciding the case, Judge Wu did a thorough analysis of the patent claims, starting with the observation that “[f]acially, these claims do not seem directed to an abstract idea” and appear to be directed to a “specific technological process.”  However, interpreting Mayo to require him to disregard any aspect of the claims found in the prior art, he conducted a further analysis to determine what feature of the claims were novel. Wu found that the only aspect of the claims that added to the prior art was an abstract idea:  “the use of rules, rather than artists, to set the morph weights and transitions between phonemes.”

Planet Blue has now appealed to the Federal Circuit, and opening merits briefs were recently filed. These and the subsequent briefs, arguments and decision in this case will be important for practitioners and patent holders for several reasons:

The Federal Circuit will evaluate a patent claim that is technology-based.

An initial read of the claims in the Planet Blue patents seem to be a far cry from basic method claims. The Planet Blue patents are used in animation; the technology helps automate the process of adapting an animated image to mouth words without having to draw or manually program the animated character’s movements. Its’ claims are drawn to the use of three-dimensional synchronization for certain applications in animation.

The district court initially acknowledged that the claims, in isolation, appeared tangible and specific and did not seem directed to an abstract idea: “considered standing alone, the asserted claims do not seem to cover any and all use of rules for three-dimensional synchronization.” In deciding this case, the Federal Circuit will be making an important decision on how to evaluate technology and software claims in a post-Alice environment.

The decision should provide additional guidance on how to apply the ‘significantly more’ test.

In the Alice decision, the Court recognized that patents – even those that are directed to an abstract idea or other ineligible concept – can be made patent eligible if the patent ‘transforms’ the abstract idea, or  does ‘something’ or ‘significantly more’ than a patent on the concept itself. This is the second step of the Alice/Mayo test, which the Court refers to as the search for an inventive concept.  Unfortunately, both the Supreme Court and Federal Circuit have provided scant guidance on what is necessary to satisfy this “significantly more” test.

In this case, the district court found that the claims covered a well-known concept of lip synchronization and weren’t sufficient to meet the ‘significantly more’ test. The Federal Circuit will review the claims, and assess whether the district court’s analysis and conclusion were correct.  The Federal Circuit’s decision should provide some insight as to how ‘significantly more’ test should be performed and how claims should be read moving forward.

Lower courts will be paying close attention to the Federal Circuit’s ruling in this case in their 101 assessments.

Just six weeks after the Planet Blue decision, another Section 101 decision came out from the Central District of California, this one authored by Judge Pfaelzer, in California Institute of Technology v. Hughes Communications, Inc. (C.D. Cal. 2014).  In that case, the court denied Hughes’ motion for summary judgment on Section 101 ineligibility. Judge Pfaelzer also undertook a lengthy analysis of Section 101 case law.  In applying the Mayo/Alice framework, the court found that the Caltech claims were directed to abstract ideas, but that the claims were patentable since they contain inventive concepts.

Interestingly, Judge Pfaelzer also made a point of discussing the Planet Blue decision.  While respectfully acknowledging that Planet Blue offers valuable contributions to the Section 101 discussion, Judge Pfaelzer noted that Planet Blue ultimately reached the wrong conclusion since courts should not, in her view, apply the point-of-novelty approach in the Section 101 inquiry, citing the Supreme Court’s Diamond v. Diehr decision.

This is the first step in the journey, not the destination. Planet Blue may turn out to be a bellwether case on software patentability, as these patents seem quite similar to so many of the software patents held by companies across the IT industry and beyond.  But the outcome is likely to be highly panel dependent, and it would not be surprising to see a request for en banc consideration at some point down the line. The case is sure to be closely watched, and it will be fascinating to see whether the Federal Circuit follows the lead of Ultramercial (and upholds the lower court decision on patent ineligibility), or whether the reasoning of DDR Holdings will prevail (and the Section 101 decision reversed).

Bob Stoll is a partner at Drinker Biddle and Reath and Co-Chair of the IP Group and a previous Commissioner for Patents at the USPTO.  The views expressed above are his own and do not necessarily represent the views of his firm or its clients.

 

159 thoughts on “Federal Circuit Cases to Watch on Software Patentability – Planet Blue

  1. Seems to me that the subject matter of these claims is, at least potentially, allowable by EPO standards for “technical effect”. The real question is how broad a claim the patentee is entitled to, having regard to what has been disclosed in the patent (assuming novelty and non-obviousness). That looks like a 112 question but, at the same time, an overly-broad claim could be said to be claiming an “abstract idea”. Is “a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence” sufficiently specific and meaningful to properly reflect what the patentee has actually contributed to the art? Looks like a good test case, if the court is up to the task.

  2. “However, interpreting Mayo to require him to disregard any aspect of the claims found in the prior art…”

    There is no such holding in Mayo per se. And any such analysis amounts to dissection/disintegration of the claims. Which is exact opposite of what Mayo actually stood for. Here is Mayo in three easy steps

    1. If your invention is a known idea/concept it’s considered abstract, and non statutory subject matter.

    2. If you apply the known idea/concept, e.g. reduce it to a series of steps, and the claim “Preempts” the idea/concept itself, it’s a Court created exception to statutory subject matter. According to the Court, such an application would take away an idea or concept that was previously known and available for all mankind to use and find future applications for.

    3. However, if the claims are “integrated” to the point the claim itself does not “Preempt” the known concept it’s statutory subject matter. The Court relied on Diehr for its authority, for what myself, and others refer to as, Integration Analysis.

    Unfortunately, it is a slow catching up process for many lower court judges. But nonetheless Integration Analysis is the law of the land and the standard we should all be using for determining 101 statutory subject matter.

  3. It’s interesting to compare the reasoning in the Planet Blue decision with the reasoning in California Institute of Technology. It’s too bad these both can’t reach the CAFC at the same time. They provide an interesting counterpoint to each other.

    I like this opening salvo from CIT:

    “The Supreme Court decisions on § 101 often confuse more than they clarify.
    The cases appear to contradict each other on important issues, such as the role of
    prior art in § 101 analysis. Although these cases provide some clues to applying
    § 101, they leave open the question of when, if ever, computer software is
    patentable.”

    The first two lines are incredible understatements. Read Benson. That case is garba ge. And it doesn’t get a lot clearer since then.

    1. “The Supreme Court decisions on § 101 often confuse more than they clarify. “

      There is nothing so dense as a mind unwilling to understand.

    2. Benson has been followed.

      When the computer is old and generic and the math is not used to improve the old and generic computer, the claim as a whole is not patentable.

      What we learn is that the non statutory subject matter must be applied to the statutory to produce an improvement in the statutory. We can assume there is no invention in the statutory if it is presented in the claim as something old and generic.

      Alice and Mayo are both consistent.

  4. Egads.

    Can one believe it? Can one? Are we STILL going to fight the Supreme Court?

    Mixed subject matter claims have posed a problem for a long time. Hotel Security provided the framework that is still followed in the Federal Circuit — but limited to printed matter cases: Invention must be in the statutory subject matter, not the nonstatutory. Alice and Prometheus are echoes of Hotel Security.

    For 101 purposes, if the patentee admits that everything statutory is old, the only question then becomes whether the non statutory subject matter is applied in a sufficiently non abstract way to provide something improved in the statutory.

    If Planet Blue is reversed, all Hades will break loose again.

    And, it is appalling that so many intelligent people absolutely refuse to get it.

    1. Ned, I recall you agreed with the DDR decision. How do you distinguish that one from Planet Blue?

      1. Patent Leather, indeed I thought the overall business utility was a red herring.

        The DDR Court observed:

        “In this way, rather than instantly losing visitors to the third-party’s website, the host website can instead send its visitors to a web page on the outsource provider’s server that 1) incorporates “look and feel” elements from the host website, and 2) provides visitors with the opportunity to purchase products from the third-party merchant without actually entering that merchant’s website.”

        If item 1 is sufficient by itself under 101 then it passes, in the presence of number 2 does not change the result.

        I think a claim that calls for taking visually perceptible elements from one website and transposing them to another website is probably within the ambit of 101. Two different computers are involved. The visually perceptible elements are not simply numbers, but code that represents physical things.

        The only potential problem might be is with claims that may not actually require a display of the modified look and feel website. In may end just short of that and suffer the same difficulty as did Flook and Mayo.

        But the claims in DDR Holdings did require that display.

        1. Code that “represents” physical things? What does that mean?

          A legal argument (a process) may “represent” physical things, since language uses abstract symbols to invoke (“represent”) physical things. Should novel, useful arguments be patent eligible?

          Should the concept if Ladies Night down at the local pub be patent eligible (assuming novelty)? If generically implemented on a computer with basic code skills?

          There will be no peace or justice in patent land until either per se software or software that can’t pass the MoT are found ineligible or a new statue written.

          Software cannot be fairly adjudicated under the patent laws and established doctrine; all of which is explicitly designed for physical processes or material objects. Ideas blow it up, as they should, because the human mind can “represent” the world in myriad ways at will, and express those representations via language, including software code, which is ALWAYS executed via some language.

          1. Martin, consider Planet Blue’s code like a recipe. Both represents physical things.

            Using a recipe to make improved bread certainly is patentable. But not the recipe.

            Using Planet Blue’s code to improve the display of a website on a screen in terms of its look and feel, seems very much like using a recipe. The result is something physical that one can actually see.

            1. Ned, look and feel is essentially artistic expression. You can eat bread. Can you touch look and “feel” of a moving image?

              Its more like looking at a pretty image of another recipe.

              A monitor and the associated video hardware are, and should always be patent eligible. Anything displayed in that monitor cannot be eligible by virtue of any differences with other images displayed. I cannot see how anyone could reason otherwise.

                1. I’d feel that copyright would be the proper way to protect that IP.

                  How do you think the current Supreme Court would think about it?

                2. Martin, the problem is the Supreme Court has already held that a system of signs comprising marks and spaces is patentable subject matter. See, Morse’s fifth claim in the reissue.

                  O’Reilly v. Morse
                  link to law.resource.org

                  A system of traffic signs comprising shapes and colors is not different in kind.

                  A display of a web page comprising look and feel elements that associate the displayed web page with another is substantially the same as Morse’s systems of marks and signs for numbers, words, etc. for telegraphic purposes .

                  I do not see the Supreme Court any time soon overturning O’Reilly v. Morse, do you?

                3. The telegraph claims depended on a novel apparatus to code and decode the signs- do you think standalone claims, today, to a system of colors and markings on a conventional physical sign would pass 101 muster?

                  Would that finding be an overturning of the Morse case? mmmmmm

    2. Ned, I think we all understand, at least to some extent, the Alice and Mayo decisions. The problem we are having is with their reasoning and so disagree with the basis of these decisions and reliance upon them as precedent. We do not necessarily disagree with their determinations of unpatentability but disagree with their determinations of subject matter ineligibility of the claim as a whole.

      The query as to whether some part of an invention is “old” is a 102/103 analysis and should not be part of a 101 analysis. Any analysis that acknowledges the existence of one or more tangible elements in a claim should conclude that the claimed invention is subject matter eligible. A claim directed to software installed on hardware should be considered subject matter eligible. That is not to say the claim is patentable when subsequently considered under 102/103. There is a high likelihood that such claimed invention would indeed be at least obvious.

      The analysis of subject matter eligibility should only consider the claim as a whole. A claim “directed to” a tangible invention “as a whole” should be considered subject matter eligible. The analysis should not dissect the claim in an attempt to identify a single potentially subject matter ineligible element and then delve into a query of how new or old that individual element is. In Mayo, the Court simply missed the boat. It should have acknowledged subject matter eligibility of the invention as a whole and should have instead concluded the invention was unpatentable under 102/103.

      Consider the claim, “A hammer comprising “tangible elements A and B” and memory comprising software.” Such a hammer would unfortunately likely be considered subject matter ineligible under the current decisions.

      Also, the Court’s decisions include an inferential interchangeable use of the terms “patentable” and “subject matter eligible”, even though the latter is a single requirement for the former. It is when the Court uses the broader terms “unpatentable” or “patentable” in its reasoning that it intermingles 102/103 with 101 and so obfuscates what has been otherwise clear and simple statute applicable to all existing technologies.

      Your description of “101 purposes” is reflective of the problem inherent in the decisions. I am not saying that you are wrong in your interpretation or description of the case law. In fact, I think you are summarizing their analyses well. I am only saying the case law is wrong and pointing out where I believe it is wrong and needs to be changed.

      Your statement, which I think reflects key aspects of the current state of the Court’s decisions, recognizes the existence of statutory elements in the claim (“everything statutory”). Their existence should be sufficient to render the claim as a whole subject matter eligible. That is where the 101 analysis should end and a finding of subject matter eligibility should be held.

      Unfortunately, the Court’s eligibility analysis then requires that statutory subject matter be completely ignored (because it is old) and the merits of the non-statutory subject matter be determined. At the end of the day, the Court mistakenly concludes the invention as a whole is unpatentable as being subject matter ineligible rather than unpatentable as being anticipated or obvious over the prior art. The final conclusions are the same but the paths are completely different. The end does not justify the means.

      The Court’s analysis is akin to determining the subject matter eligibility of a radio based upon software installed on the radio. The radio is statutorily subject matter eligible, but the Court might find it unpatentable as being ineligible instead of unpatentable as being obvious or anticipated.

      So, I think we will continue to fight the Sup. Crt. and I believe the best way to do that is through aggressive action in the legislative branch. GO USPTO!! GO CONGRESS!!

      1. Rick, with respect, I urge you to read, in order in In re Russell, 48 F.2d 668 (C.C.P.A. 1931), Guthrie v. Currlett, 10 F.2d 725 (2d Cir. 1926) and then Hotel Security Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2d Cir. 1908), each case relying on the next.

        What you will find that the law prior to ’52 was well developed when dealing with claims that mixed the ineligible with the eligible. Where do you think the invention had to lie? Yeah that’s right. You got it.

        And when the subject matter that is otherwise eligible is old and conventional, and admittedly so, can we not deal with such a claim under 101?

        There is nothing surprising at all that the Supreme Court has finally discovered the formula so long ago laid down by the Second Circuit in Hotel Security. Congress legislated in ’52 with Hotel Security being widely recognized as established law. There is no hint whatsoever that Congress intended to overturn Hotel Security. There is no need to rewrite the anything.

        The problem all along was that certain people got into power in the C.C.P.A. and in the Federal Circuit who had a different view. You know these people were. They wanted the channel everything into 103, but in a way that would allow the patenting of unpatentable subject matter. I give you State Street Bank.

  5. Just another bizzarro mixing up of 101 with 102, 103, and 112 by a science illiterate judge that shames our nation.

    And to boot, an attempt not to interpret the claims in light of the specification and how a person of ordinary skill would construe the claims. Thanks Lemley and Stern.

    1. Night, put your thinking cap on.

      Claim: A + B. A is non statutory. B is statutory. B is old. A is new. A does not modify B to produced an improved B.

      Is this claim patentable under 101/102/103?

        1. B is a glass cup with a handle. A is printed matter. A+B is a statutory measuring cup.

          Correct me if I’m wrong but the court who reached that conclusion is the same court that was smacked down 9-0 repeatedly and deservedly for failing to understand the basics.

          I humbly suggest that your “statutory measuring cup” case law has as much weight in 2015 as a feather on the moon.

          That said, I think we can all agree that progress in the measuring cup arts has been extraordinary in the wake of that decision.

          LOL

          1. Rich wrote the opinion he was referencing.

            His thinking, fleshed out in Bergey, cited in Diehr, still haunts us.

            Rich’s thinking on 101 has been totally demolished.

            His thinking on functional claims needs to be demolished.

            I agree, however, with his views on 271(c) and (b).

            1. You mean, in other words, continue the judicial activism that has re-written the 1952 Patent Act via the SCOTUS deciding that their common law prior to 1952 supersedes the 1952 Patent Act because they are the 9.

              1. Night, Rich’s views on the restructure of 101 would have and did lead to the patenting of non statutory subject matter.

                This is an unmistakable and acknowledged fact!

                This is not a question of the 52 act overruling some prior case law of the Supreme Court. This is Rich’s attempt to overthrow the constitutional provision itself. The man had a bias when I came to the 52 act that acted like blinders. He simply could not see the big picture.

                1. You remain ever wrong and ever blinded by your Beliebs Ned.

                  Shall I quote you back to you the very words you used for software and utility (the aspect designed to be protected under patent law) from your posts on the copyright thread?

                  Which face do you wear today, oh deceiver?

                2. (Psssst Ned – which branch did that constitutional provision mention, an which FOR which branch did Rich gain his intimate knowledge of the law and then CONTRAST that with which branch YOU are attempting to raise above the law and above the constitution itself…

                  You sir, are the villain to the constitution here.

        2. Les, Les, Les.

          What are we to do with you?

          The “mere” recital in a claim of old and conventional but statutory subject matter is not enough per Benson, Flook, Bilski, Mayo, Alice, all printed matter cases …

          But, I agree with you, in the mind of Judge Rich, as argued by him in Bergey, if the claim contains any statutory subject matter, then inquiry moves beyond 101.

          I hope you can see why Judge Rich never really got it. But his thinking still permeates the patent bar it seems.

          1. Ned still believes that the guy who helped WRITE the patent law does not “get” the patent law while wanting to look the other way when the Royal Nine want to reclaim their lost authority to write law by way of common law evolution….

            Cheered on by Malcolm and the Echoes, it is easy to see who has the better position (hint: it is not Ned or Malcolm).

  6. “Hi, I’d like to patent the phrase ‘i before e except after c and in long sounding a’s like neighbor and weigh,’ can I do that?”

    “No, are you daft?”

    “Okay, well if a computer animator knows how to spell words visually, can I claim ‘i before e except after c and in long sounding a’s like neighbor and weigh’ while doing computer animation?”

    “Oh, well certainly, that’s clearly a technological issue.”

    Admitted Prior Art (from patent): Animators could make resting faces. Animators could make faces of character making a sound (like “oo”). Animators could, for any given frame, define how much of the mouth was weighted toward each animation (i.e. 30% resting, 70% oo). Animators ACTUALLY DID cause animations to move their mouths to sync with sound.

    Teaching: One can define rules, for example, “to say ‘hi’ run this pattern: 0% resting, 100% ‘h’ followed by 0% resting 100% ‘eye'”

    The claims are not limited to any particular rule, just that rules can be used. Nor could one even really argue that rules weren’t used before, because the animators had to get the picture to sync with the spoken word – the rule has been and always will be the english language. One can also plausibly think of basic rules that would always exist – If you say “hi” a second time, the mouth animation would likely be the same as saying “hi” the first time. Well that’s a rule isn’t it?

    So is it novel? Probably not. Is it non-obvious? Definitely not. But is it statutory? Only if you believe that the rule generation that previously HAD to occur but occurred in one’s head becomes an invention when you write it in the form of computer code rather than pen-and-paper notes.

    The consequences of this are extremely interesting. It means that when the Supreme Court generates a rule interpreting a statute, what they are really doing is priming someone to invent by taking their pen-and-paper decision and allowing translation into computer code. “Well sure Miranda existed on paper, but had anyone written a computer program that asks if you informed the arrestee that they had the right to silence, that what they said could be used against them, and that they had a right to counsel?” invention please!

    Translation into code has never really been considered, in and of itself, to be an inventive act. This is why “The Claims Must Be Evaluated In the Context of Prior Art” is correct logic.

    The key question is in this case: Plaintiff’s expert opines that a central part of the patents is “using morph weight set representations of the facial shape coupled with rules, including explicit and distinct timing rules, to generate keyframes.” Everyone appears to agree with that characterization, except that Defendants point out that no particular “explicit and distinct” rules are required by the claims. The question is therefore whether the inclusion of that concept in the claims satisfies § 101 given (1) the prior art, and (2) the fact that the claims do not require any particular rules.

    The district court came out correctly on both counts.

    1. Nor could one even really argue that rules weren’t used before

      In fact, RandomGuy, you can read on the previous threads where one of the regular software patent lovers here argued that previously animators used “their guts” to animate images, not “rules”.

      That’s the kind of deep thinkers we’re dealing with here. But they’re very serious people! Bob Stoll worked at the patent office and he’s a highly paid partner. Somehow he can’t figure out Prometheus v. Mayo but we must all pay attention to him anyway.

      1. So, you two would then like to put together a 103 argument, but feel it is too taxing and would rather invoke the witch use of 101.

        1. So, you two would then like to put together a 103 argument, but feel it is too taxing and would rather invoke the witch use of 101.

          Sure, if “too taxing” means “spend millions of dollars in court costs.” I’m just lazy that way.

      2. Would software that interpreted these cases be patentable subject matter?

        I mean, a legal argument is a process, right? You start somewhere, apply and branch test conditions, and arrive at a useful result. Find a novel argument and a computer readable medium and a CPU to process the bits, and why should you not be able to patent it?

        Computerized patent lawyers would be very innovative and some would say, useful. That’s the logic of the software patent lovers; and that’s why we are where we are today.

        1. You could probably make a small fortune by simply putting boilerplate computer language on the front and tail end of Supreme Court decisions and claiming software that enacts the decision. You’d be able to capture all of the compliance software for the next 20 years.

          1. RG: You could probably make a small fortune by simply putting boilerplate computer language on the front and tail end of Supreme Court decisions and claiming software that enacts the decision. You’d be able to capture all of the compliance software for the next 20 years.

            This is the kind of thing that really gets the software patent lovers and their true-believing attorneys most excited. That’s exactly the wonderful shiny world where Judge Rich and his disciples were hoping to take us with State Street Bank. After all, if “patents promote progress” is accepted unquestionably then, hey, let’s patent everything and watch “progress” in everything take off like a space shuttle packed with atomic bombs. What could possibly go wrong? Besides, patent lawyers are really nice people. You can trust them to keep their worst instincts reigned in. Sure you can.

            1. Yeah right MM. All people involved in software are nothing but cro0ks. Sure.

              What I see is people working very hard to innovate and working very hard to come up with ideas that would work in the marketplace and are deserving of a patent. That is what I see working with 100’s of engineers across the world at the top tech companies.

              What I see is an industry that has grown-up with patents. I see an industry where patents enable the workers to disclose what they have done and easily switch jobs. I see an industry where start-ups have some protection from the giant companies.

              Etc….

              Nice you pick out a few bottom feeders (like every system in the US has) and try to characterize all people like them.

              Really, Dennis, having this paid blogger blast us day in and day out with this stuff is intolerable.

    2. As someone outside of this technology space, your explanation seems like a great basis for an obviousness rejection.

      If you want to say this is ineligible under 101, though, what’s the precedent for finding that the general concept of the claims is an “abstract idea”? The claims do not appear to be directed to a qualifying mathematical algorithm. Discounting the life sciences reasons, the only other basis I’m aware of for finding a concept to be an “abstract idea” is the “fundamental economic practice” line of reasoning in Bilski and Alice that converts some economic practices into “abstract ideas” (as the Supreme Court has used that term). I don’t see you go through that analysis here, though, so I assume you’re not trying to use it.

      If you think the concept is an “abstract idea” (but not because it invokes a mathematical algorithm or comprises a fundamental economic practice), can you explain why you think so?

      1. To me, a claim that is directed toward any means of achieving a desired result is a claim directed to an abstract idea. Consequently functional language tends to trigger abstract ideas very often. If I claim software that results in X, my claim is directed to X itself unless I limit my claim to a particular way of achievement of X.

        Patent law does not protect ends, it protects means. You can’t use functional language to avoid means claiming.

      2. Easwaran; If you think the concept is an “abstract idea”

        Your question itself sort of begs the answer, doesn’t it?

        The “concept” is “abstract”. The “concept” of a “machine that achieves this function when you program it to achieve the function” is “abstract.”

        The actual working object is non-abstract.

        But the actual working object is never described in structural terms in these computer-implemented inventions. That’s because (surprise!) a claim limited to the object that actually works is “worthless.” Or so we’ve been told. Meanwhile, many of the same people who insist on functional claiming in software patents spent years and millions of dolalrs convincing Congress to rewrite copyright law especially for them so they could protect all their “worthless” software that actually works (except when it doesn’t, which is quite often).

        Go figure.

        1. Go figure indeed as Malcolm once again displays his butchery and lack of understanding of both patents and copyrights and to the different aspects of an item that hear laws protect.

          Still the chump.

        2. “Your question itself sort of begs the answer, doesn’t it?”

          I don’t think so. My reading of Alice is that the Supreme Court uses “abstract idea” as a defined term not amenable to a simple dictionary definition. The Alice opinion says the following:

          “It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of “abstract ideas” as we have used that term.”

          The totality of the opinion doesn’t seem to square with an interpretation in which every concept is an “abstract idea.” Consider that if every concept of a claim is an “abstract idea,” then there is no first step in the inquiry, because every claim can be distilled down to a gist. In contrast, the Alice opinion says several times that there are two steps to the framework, not just one. More importantly, though, if the Supreme Court really thought that identifying a core concept in the claim is the only thing necessary to determine that the claim is directed to an abstract idea, then why would it waste words demonstrating that intermediated settlement is a fundamental economic practice long prevalent in our system of commerce? Why bother analogizing to Bilski if the Supreme Court thought they could simply say: “this claim is drawn to the concept of X” and then turn to the “significantly more” (or “inventive concept”) inquiry?

          I’d be genuinely interested to read an opposing interpretation of the Alice opinion. I actually haven’t read any (most people with opposing view seem to assume that the dictionary definition of “abstract idea” is appropriate (it makes intuitive sense only if you haven’t studied the Alice opinion), but don’t provide a holistic interpretation of Alice that would justify the resulting “all concepts are abstract ideas” takeaway).

          1. The totality of the opinion doesn’t seem to square with an interpretation in which every concept is an “abstract idea.”

            Great strawman arguments! Love the use of the term “holistic”. Very impressive!

            if the Supreme Court really thought that identifying a core concept in the claim is the only thing necessary to determine that the claim is directed to an abstract idea

            Nobody is suggesting that doing that is the correct approach to determining eligibility. Maybe you should invite your two strawmen to battle each other?

            Here’s a little experiment for you: try to obtain and enforce a claim to “A new concept, wherein said concept comprises ….” and let me know what happens. Be sure to include a bunch of dependent claims with lots of different “conceptual” limitations.

            Then come back here and give us all a lecture on whether “every concept is or isn’t an abstract idea”.

            At the same time, look under your couch cushions for 1,000 innovators who actually made new machines and then claim each of those machines in objective structural terms that distinguish those machine from the machines in the prior art. See how many 101 objections you get and let us know what they look like.

            1. “anon” meeting the machine aspect of 101 was stipulated by both parties

              That’s nice. I never suggested that recitation of “a machine” was sufficient to pass 101.

              More importantly, two people with vested interests can stipulate to all kinds of nutty things. I could really care less what the attorneys in Alice “stipulated” to. And in the long run (which will be shorter than you expect) nobody else will care either.

              1. In pieces for the filter…

                LOL – are you them making an issue (again) of your incorrect view of the law and the option of using “objective structural terms” as somehow being more than an option?

              2. Besides, my point is on point directly to the question you so smug1y put to Easwaran – the 101 rejection was written by the Supremes to a category-passing claim wherein the Supremes waved away that passing of the part of 101 that your little “pet” option is geared to.

              3. Even if I spot you the use of the option, the Supremes still wrec ked your m@ntra.

                It is hi1arious that you either don’t understand this or that you simply pretend not to understand this.

  7. Section 101 requires a claimed invention to be “new and useful.” In Benson, the Court held that “abstract ideas” do not satisfy 101 but that application of an abstract idea may satisfy 101 if the claimed invention is new and useful. Mayo and Alice address whether an abstract idea has been “transformed” into patent eligible subject matter by asking whether the claimed application of an abstract idea adds “something more” (i.e. new and useful). While the Court has not yet defined “new,” it has been applying 102 and 103 implicitly in its decisions.

    Planet Blue appears to confuse “abstract idea” with claim dissection and seems to focus on claim elements that were admittedly in the prior art without analyzing the claimed combination as a whole. If so, it would be more a case of claim construction than 101 eligibility.

    1. Planet Blue appears to confuse “abstract idea” with claim dissection and seems to focus on claim elements that were admittedly in the prior art without analyzing the claimed combination as a whole.

      Didn’t the Supreme Court throw out the processor and computer system terms in Alice because they were known? How is that different from throwing out the conventional method steps or the conventional parts of animation?

      Certainly the computer itself was once statutory-conferring. As was the now-standard animation procedure. Whether you’re dissecting or doing claim as a whole and ignoring the conventional aspects, you’re achieving the same result – something is not “new and useful” when the only “new” part is something that patent law doesn’t recognize.

      1. In Alice, the Court did not “throw out” computer related claim elements. If followed established law in Diehr, Benson, etc. that merely adding computer related elements does not satisfy 101. Because the intermediated settlement elements were found to claim an abstract idea, merely adding computer related claim elements could not save them. The claims failed, as a whole, to recite a patent eligible invention because there was no properly recited application of an abstract idea that was new and useful.

        1. In Alice, the Court did not “throw out” computer related claim elements.

          It’s not clear what you mean by “throwing out” elements, nor is it clear what aspect of RG’s comment you are responding to with this statement.

          If followed established law in Diehr, Benson, etc. that merely adding computer related elements does not satisfy 101.

          Right. That’s because the use of computers for processing information — which is otherwise ineligible for patenting — is very, very old. For the same reason, the use of a “pen and paper” also will not rescue otherwise ineligible information processing steps.

          The question is: what otherwise ineligible information processing steps are eligible when carried out by old computers?

          I think the answer is crystal clear already. Also crystal clear is why certain people refuse to come to terms with the obvious answer to that question.

          Also crystal clear that the answer isn’t “synching cartoon character lips to sound and stuff like that.”

        2. In Alice, the Court did not “throw out” computer related claim elements. If followed established law in Diehr, Benson, etc. that merely adding computer related elements does not satisfy 101.

          Doesn’t that dispose of this case then? The animator used to just make up the rules themselves (i.e. followed their guts), this just requires the rules be explicitly written out beforehand in the form of software coding.

    2. Planet Blue appears to confuse “abstract idea” with claim dissection and seems to focus on claim elements that were admittedly in the prior art without analyzing the claimed combination as a whole. If so, it would be more a case of claim construction than 101 eligibility.

      Also could you expand on this please – my understanding of Diehr is that, yes it used a formula, but it had a ton of non-conventional steps – continuously measuring the temperature and recalculating the mold time. Diehr was eligible because it there were old steps (putting rubber into the mold) and invalid steps (the equation) and new steps (continuous measurement, continuous recalculation of the timing). This case has old steps and invalid steps, it doesn’t have new steps. Why can’t this case be seen as amenable to Diehr?

        1. In Diehr, the combination of steps was found to be new and useful.

          But isn’t that just saying that Diehr stands for the fact that containing an abstract idea doesn’t automatically invalidate the claim (i.e. there was “substantially more” under the Alice framework)? There were other new limitations that saved the claim.

          Here there are no other limitations to save the claim.

          1. >>containing an abstract idea

            The entire notion that “abstract idea” is used casually now as if it has any meaning is outrageous.

            “Abstract idea” has no meaning in the context of Alice. It is a word for the witch trials. The SCOTUS should be disbanded. At the very least the dishonorable 9 should define “abstract idea” in terms of the ladders of abstraction. Without this definition “abstract idea” has no meaning within the context of patent law. Shameless are the 9 scientifically illiterate treasonous bums.

    3. steve: Mayo and Alice address whether an abstract idea has been “transformed” into patent eligible subject matter by asking whether the claimed application of an abstract idea adds “something more” (i.e. new and useful). While the Court has not yet defined “new,” it has been applying 102 and 103 implicitly in its decisions.

      At the very least, we can be quite certain that non-obvious, objectively-defined structure that distinguishes the claimed “innovation” from similar structures in the prior art is going to fit the bill for “something more”. And we also know that such structure is completely absent from PlanetBlue’s junky claims.

      Planet Blue appears to confuse “abstract idea” with claim dissection

      No, it doesn’t. Not even close.

      [PlanetBlue] seems to focus on claim elements that were admittedly in the prior art

      This is an essential part of any 101 analysis where the claim recites both ineligible subject matter and subject matter that was once eligible but is now in the prior art. That’s what Prometheus v. Mayo was about. Get used to it.

      without analyzing the claimed combination as a whole.

      The combination “as a whole” was certainly analyzed by Wu. You seem to be laboring under the misunderstanding that simply because a claim purports to achieve a new function that it somehow automatically become eligible. That’s not how eligibility works.

      The focus — as always — remains: with respect to the prior art and practitioners of that prior art, what subject matter does the claim protect? Is all of that that subject matter eligible for patenting? If yes, then the claim is eligible. If no, then the claim is ineligible.

      The problem faced with EVERY invention that implicates information processing is that information and logic are ineligible for patenting. The Federal Circuit has yet to deal with this fundamental issue. Instead they keep dancing around it and clinging to the bizarre idea that “the computer” was invented yesterday. It wasn’t invented yesterday. Computers are old. Not quite as old as ball point pens and slide rules but still really, really, really old. You know what else is old? The Internet and lawyers trying to make money off it, anyway, anyhow.

    4. Steve:

      Claim: A + B. A is non statutory. B is statutory. B is old. A is new. A does not modify B to produced an improved B.

      Is this claim patentable under 101/102/103?

      1. Ned,

        ALL your beloved hard goods categories come down to electrons, protons, and neutrons which are not statutory in and of themselves.

        Your theory dies of its own logic.

        Let it rest in peace.

        1. ALL your beloved hard goods categories come down to electrons, protons, and neutrons which are not statutory in and of themselves.

          My imaginary version of your theory dies of my own incomprehensible logic.

          Fixed.

          1. What exactly do you think that I have stated is imaginary?

            Go ahead and use those short declarative sentences you are always on about.

    5. Correction to my previous comment at 4.5: Simply because a claim purports to achieve a “new function” doesn’t mean it automatically becomes eligible

  8. Very glad that this case is being appealed – the chances of it being reversed are high.

    Among all of the first-wave post-Alice / 101 cases, this one takes a very strange approach. All of the other cases look at the allowed claim, and take the following approach:

    (1) Separate it into an “abstract idea” and the remainder; and
    (2) Decide whether the remainder constitutes “considerably more.”

    Instead, the district court in this case took the following approach:

    (1) Separate the claim into its novel element vs. non-novel remainder; and
    (2) Decide whether the novel element, by itself, constitutes an “abstract idea” and/or provides “considerably more.”

    The district court summarizes its holding as: “where a claim recites tangible steps, but only the new part of the claim is an abstract idea, that may constitute a claim to an abstract idea.”

    That is not the Alice test. No CAFC or SCOTUS 101 analysis has ever looked only at elements deemed to be novel, in isolation, for 101 eligibility. The district court cited the portions of Alice where the Court disregarded the recitation of a computer in the claim. However, that disregard was not because computers are not novel, but rather because the computer was irrelevant to the invention.

    Consider:

    An automobile, comprising:

    a steering wheel; and

    an engine connected to the steering wheel and comprising a set of gears engaged by a continuous variable transmission comprising (structure).

    It would be appropriate to disregard the steering wheel, since it is incidental to the invention. It would not be appropriate to disregard the engine and the gears as not “novel,” and to reject the rest as “the concept of a continuously variable transmission” as an abstract concept for improving an engine.

    1. For those of us who are patent prosecutors, we have to be concerned with the PTO’s rules. Here are what the current rules say:

      The Supreme Court has identified a number of considerations for
      determining whether a claim with additional elements amounts to
      significantly more than the judicial exception itself. The following are
      examples of these considerations, which are not intended to be exclusive or
      limiting. Limitations that may be enough to qualify as ‘‘significantly
      more’’ when recited in a claim with a judicial exception include:
      • Improvements to another technology or technical field;
      • Improvements to the functioning of the computer itself;
      • Applying the judicial exception with, or by use of, a particular
      machine;
      • Effecting a transformation or reduction of a particular article to a
      different state or thing;
      • Adding a specific limitation other than what is well-understood, routine
      and conventional in the field, or adding unconventional steps that confine the
      claim to a particular useful application; or
      • Other meaningful limitations beyond generally linking the use of the
      judicial exception to a particular technological environment.

      This is where the Alice test is tough for me. If your claims do not fall into one of these limitations, the claims are invalid under Alice. Which one of these limitations is met by the following claim:

      1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising: obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence; obtaining a plurality of sub-sequences of timed phonemes corresponding to a desired audio sequence for said three-dimensional characters; generating an output morph weight set stream by applying said first set of rules to each sub-sequence of said plurality of sub-sequences of timed phonemes; and applying said output morph weight set stream to an input sequence of animated characters to generate an output sequence of animated characters with lip and facial expression synchronized to said audio sequence.

      Personally, I find it difficult to pigeonhole this claim into one of those limitations. Certain, the computer itself is not being improved, and there is no “transformation” of an article into something else. To me, the claim does not seem to fit into any of the above limitations and therefore is not patentable under Alice. (And I am completely FOR the patentability of this claim under 101.)

      1. > To me, the claim does not seem to fit into any of the above limitations and therefore is not patentable under Alice.

        I think that it squarely falls under “improvements to another technology or technical field” – specifically, computer-generated animation matching the movements of a human actor.

        Whether or not a particular field is sufficiently “technical” seems to hinge on two factors:

        1) Is the field itself related to business? (advertising, asset management, financial transactions, marketing, etc. – e.g., Planet Bingo, EveryPennyCounts)

        2) Is the field detached and academic, such that there is no specific, tangible product? (Gottschalk)

        The field described above isn’t either of these. There is a very specific input – the voice of a human actor – and a very specific output – a computer-generated animation that matches the voice. Overbreadth isn’t an issue when the technique is hyper-focused on a specific use. And it’s neither trivial problem, based on the complexity and specificity of the claimed technique, nor a trivial solution that a human can equivalently perform without a computer, such as Planet Bingo.

        I have a strong belief in a certain class of algorithms that are inherently technical, where techniques indisputably satisfy 101: media encoding and decoding; data compression; encryption; error detection and correction; search techniques; machine vision; etc. The innate technical value of these techniques is self-evident, and the courts haven’t made any indication of jeopardizing those broad classes of functionality. Computer animation isn’t squarely within that class, but close enough that it will probably be decided accordingly.

        1. David Stein: And it’s neither trivial problem, based on the complexity and specificity of the claimed technique, nor a trivial solution

          The “triviality” isn’t the issue, David. The issue is what is the nature of the alleged innovation over the prior art.

          Here the innovation was “use rules”. That’s not an eligible innovation for protecting with a patent.

          Go ahead and argue about that latter point, if you like. When you make your argument, try to imagine you are standing in front of the Supreme Court — a group of smart people who very keenly understand the utility of “rules.”

          Or better yet: argue that the “rules” in this case aren’t really “rules” at all. Their digital bits of information that are, in fact, “structural” but the “structure” is “too hard” to describe in a patent claim. But your client deserves the claim anyway because, hey, money talks.

          Golly, this is going to be fun.

          1. But Les, the animation was old.

            Take Diehr. Old Process: Put material in mold at temp X, wait Y minutes, open mold .

            New process: Put material in mold, monitor temp inside mold, recalculate Y, wait Y minutes, open mold.

            Here the process produced an improved product on the average. Better efficiency. Better yield.

            Planet Blue: Old process: Manually match lips with sounds using skill.

            New process, Automatically match lips with sounds using rules.

            The difference between the two is really relates to “automatic” and “rules.”

            Now, if the use of rules per se were really new as a concept when automating some old process, then we might have something. Otherwise, we are only monopolizing automation per se.

            Perhaps this would be better handled under any of 102/103/112. But as a 101 matter, concept of using rules to automate old processes is known and as stated is abstract. The application of this abstract concept to a specific application is not enough.

            1. “Perhaps this would be better handled under any of 102/103/112. But as a 101 matter, concept of using rules to automate old processes is known and as stated is abstract. The application of this abstract concept to a specific application is not enough.”

              1) If it is not known, but abstract, does it pass 101? Then why is known a consideration?

              2) “The difference between the two is really relates to “automatic” and “rules.” Now, if the use of rules per se were really new as a concept when automating some old process,”

              Why do you get to broaden it out to any process? The question is: is the use of rules in animation of speech new, not the use of rules in automation generally.

              3) They are not monopolizing automation per se, they seek to monopolies speech animation using rules. There are ways to animate automatically that are not based on rules. For example, an actor can be recorded saying the words and his facial movements can be mapped to the cartoon.

              1. 1) If it is not known, but abstract, does it pass 101?

                Of course not.

                why is known a consideration?

                It isn’t. It’s just another reason not to grant patents on the generic addition of “rules” to “improve” an old method of processing information or to an improve an old information processing machine.

                This is one reason why you don’t see thousands upon thousands of patent claims on specific “new” methods of using a slide rule to solve certain types of “applied math” problems.

              2. Les: The question is: is the use of rules in animation of speech new

                Dear Rip van Winkle,

                Please wake up. You’ve apparently been sleeping for the past hundred years (at least).

              3. They are not monopolizing automation per se, they seek to monopolies speech animation using rules. There are ways to animate automatically that are not based on rules. For example, an actor can be recorded saying the words and his facial movements can be mapped to the cartoon.

                Again, if I didn’t know better, I’d assume this was just a parody of the way some people might actually think.

                they seek to monopolies speech animation using rules.

                Oh, is that all? LOL

                There are ways to animate automatically that are not based on rules. For example, an actor can be recorded saying the words and his facial movements can be mapped to the cartoon.

                And then there’s no rules required for automatically mapping face movements. It just happens! Because Les says so.

            2. > Planet Blue: Old process: Manually match lips with sounds using skill.

              > New process, Automatically match lips with sounds using rules.

              ===

              New process: Encrypt messages via RSA.

              Old process: Encrypt messages using a one-time pad scrawled on a pad of paper.

              Presto: RSA, and in fact all of cryptography, is now abstract.

              ===

              New process: Encode images via MPEG-2.

              Old process: Imprint photographs on microfilm, and physically mail or carry it to the recipient.

              Presto: MPEG-2, and in fact all codecs, are now abstract.

              ===

              New process: Compress data losslessly via Lempel-Ziv (i.e., the LZH compression algorithm).

              Old process: Compress data by printing it really, really small on microfiche that’s readable with the aid of a magnifying glass.

              Presto: LZH, and in fact all forms of data compression, are now abstract.

              ===

              New process: Find data quickly by using a hashtable indexed with SHA-2.

              Old process: Find data quickly by putting everything into file folders sorted by the Dewey decimal system, and hiring a librarian to keep them organized and find the file you want.

              Presto: SHA-2, and in fact all data indexing and search mechanisms, are now abstract.

              ===

              Overgeneralization has problems, Ned.

              1. Overgeneralization has problems, Ned.

                To wit, Ned has stated today that (any) contract on (any) patent term carries with it such danger to the public that abandonment of the per se rule of Brulotte WILL hurt the public. See link to patentlyo.com

                Never mind that he has an active case right now in which he has an incompatible “patents are private rights” argument before the court…

                Oops.

                1. Wouldn’t it be fun if opposing counsel cited a patently-o post against Ned as an admission against interests?

              2. David, I feel very uncomfortable with the SC using Morse/Tathum’s “principle in the abstract” as a 101 problem. It is not. It is a 112 problem.

                To say that one cannot patent an idea does not mean that the idea itself is not of an otherwise patentable machine, process, composition or manufacture. It is just so broadly stated that it covers subject matter not enabled or described by the inventor. A patent of that scope is, in effect, a trade monopoly that can only retard the progress of the useful arts.

                101 is directed to whether something is within the 4 classes in the first place, to whether the subject matter that is within the four classes is new or improved, and to whether that subject matter is useful.

                Clearly information, and its processing, is non statutory. But information processing applied to improve computer communications is statutory as the improvement is in something within the four classes.

                Now, if the Federal Circuit wishes to lecture the Supreme Court along these lines, I would support it. The reason we are in this land of the bizarre admittedly started with Benson, but the process accelerated sharply in Bilski.

                1. Ned: Clearly information, and its processing, is non statutory. But information processing applied to improve computer communications is statutory as the improvement is in something within the four classes.

                  A method of modifying a programmable computer might be statutory if the steps are recited with a high degree of pecifically and the computer is transformed in some unexpected manner. Of course, that would require some specificity with regard to the steps because otherwise you’re just claiming the abstract goal of achieving a desired function (i.e., functional claiming won’t suffice).

                  And such a claim wouldn’t cover the manufactured object, of course.

                2. MM, software is by definition non resident and not part of the machine. How can it improve a computer?

                3. Ned,

                  Software is also defined to be a machine component.

                  Your attempt here to focus on “non resident” is a non sequitur and mere dust kicking.

                  Reminds me of your tactic to ig nore the FACT that you skip the changing of the machine in the first instance with the configuring of the machine with software PRIOR to being able to simply “use” the machine with the software.

                  You purposefully obfuscate the fact that any use of software first necessitates changing the machine and configuring that machine WITH the machine component (and manufacture in its own right) of software.

                  You are only too happy to present a dissembling picture that is less than the full truth.

                  This then is a FAIL, since what you should be doing is seeing if “old box” inherently has this new capability “already in there” such that the claimed software change can be done without changing “old box.” But you don’t want to engage that proper legal argument because that proper legal argument does not get you to your desired ends.

              3. David, you seem to assume that patents on “SHA-2” and “MPEG-2” and “LZH” were really super dooper important and without them we’d be living in some poorer quality world.

                You have zero evidence to support this assumption.

                NONE. NADA. ZERO.

                People like me who disagree with you, on the other hand, have an ever growing pile of evidence that patents on information “new” processing logic — at least where those innovations are claimed using logical terms (i.e., functionally and not structurally) are destructive to the patent system as a whole.

                The problem is readily apparent just by looking at your choice of “technologies” to compare.

                Computers are old, man. Processing information with computers is old. It’s what computers do. It’s why they exist. Compression, encyrption: also very old. Fundamental stuff. Always has been. Always will be.

                Remove patents on information and logic from the system. Nobody will ever know the difference except for a certain class of lawyers and grifters.

                1. are old, man.

                  LOL – guess what, “man,”

                  Electrons, protons and neutrons are old man – some of the oldest things in the universe.

                  Configuring these things into atoms and molecules is old man – that’s what they do.

                  Your “logic,” man – your fail.

                  D’OH!

      2. “If your claims do not fall into one of these limitations, the claims are invalid under Alice.”

        Not so fast. That’s how many (if not most) Examiners apply the Interim Eligibility Guidance, but it ignores who has the burden of production. The actual language of the Interim Eligibility Guidance says this:

        “In the rejection, identify the exception by referring to where it is recited (i.e., set forth or described) in the claim and explain why it is considered an exception. Then, if the claim includes additional elements, identify the elements in the rejection and explain why they do not add significantly more to the exception.” Federal Register, Vol. 79, No. 241, page 74624, column 3.

        Of course, people should be forgiven for missing these instructions, because they are inexplicably buried at the end of Section (B)(I) instead of being among the very first sentences of the guidance.

        In any event, the claim ostensibly does fall into one of those “good” categories. The claims were allowed over the prior art, right? That seems to be great evidence of something “other than what is well-understood, routine and conventional in the field,” or at the very least, definitely illustrates the existence of “unconventional steps that confine the claim to a particular useful application.”

        I think other categories could also be used, too.

    2. The district court summarizes its holding as: “where a claim recites tangible steps, but only the new part of the claim is an abstract idea, that may constitute a claim to an abstract idea.” That is not the Alice test.

      That is, nevertheless, the law. How can something be “new” when the only distinction between it and the “old” is something patent law doesn’t recognize?

      If you filed a utility patent on “an old bus, painted purple because purple is a pretty color”, are you saying that would surpass 101 because of the bus? What about an old book with new words in it, or a calculator calculating e=mc^2?

      It would not be appropriate to disregard the engine and the gears as not “novel,” and to reject the rest as “the concept of a continuously variable transmission” as an abstract concept for improving an engine.

      But the transmission itself has concrete structure, which you denote (“comprising [structure]”), and that particular structure is limiting. That’s a big distinction from saying “an engine and gears that achieves continuously variable transmission using physical objects” which is functional, not limited by structure, and consequently an abstract idea. Had this claim been to a particular SET of rules it would be much closer to what you use an example, but to simply say that one can use rules is no different than saying “apply the idea of continuously variable transmission to an engine.”

      1. That is, nevertheless, the law. How can something be “new” when the only distinction between it and the “old” is something patent law doesn’t recognize?

        That’s obviously mixing up 102/103 and 101. The courts have at least paid consistent lip-service to the distinction and independence of these tests, despite muddying the waters when their Alice rejections veer into “well-established fields” and whatnot.

        But the transmission itself has concrete structure, which you denote (“comprising [structure]”), and that particular structure is limiting. That’s a big distinction from saying “an engine and gears that achieves continuously variable transmission using physical objects” which is functional, not limited by structure, and consequently an abstract idea.

        The courts have not drawn the sharp distinction between structural and non-structural limitations that is perceived here at Patently-O.

        For example, there is nothing structural about the claims in DDR Holdings, yet that did not deter the CAFC from finding patent-eligibility there.

        1. That’s obviously mixing up 102/103 and 101. The courts have at least paid consistent lip-service to the distinction and independence of these tests, despite muddying the waters when their Alice rejections veer into “well-established fields” and whatnot.

          It’s not mixing up something to say that Claim X is rejected because Applicant asserted it hadn’t been done before when it actually was (102) versus saying that Claim Y is rejected because it’s not asserting something “new and improved” (101).

          If Applicant asserts himself that what he has submitted is old and unimproved, regardless of whether it falls into a statutory class, it fails 101. To say otherwise would be your mixup, because statutory class is not the only requirement of 101.

          When an Applicant asserts himself that what he has submitted is improved in this manner and the “this manner” is not a manner cognizable under patent law, it’s no different than saying Applicant has submitted something old and unimproved.

          Here’s how the Supremes think about it, and it’s entirely consistent with all the holdings:

          I make a book. If I’m the first to make it, that book will surpass 101, 102 and 103. If you relatively contemporaneously but after me submit a book for patenting, that book will fail 102. If, 100 years later, someone submits a book for patenting, that book will fail 101 in addition to 102, either because they admit the book was known, or because at some point it becomes so “conventional” that one of skill in the art could say that one should have not have known of it. At that point, the book no longer lends 101 support to anything else in the claim (for example, the words in the book)

          1. Random, what you say here is true, but let us not forget that 101 newness is absolute, while 102 newness only relates to what is known to human beings.

        2. The courts have not drawn the sharp distinction between structural and non-structural limitations that is perceived here at Patently-O. For example, there is nothing structural about the claims in DDR Holdings, yet that did not deter the CAFC from finding patent-eligibility there.

          That only holds if you view DDR as being correctly decided, doesn’t it? All of the Supreme Court precedent takes a very dim view of claiming functionally. I would go so far as to say it is nearly per se improper. Certainly claiming your novelty in terms of function is expressly disallowed.

          The fact that the CAFC got off track since In re Fuetterer hasn’t changed the Supreme Court at all.

          I would like to see a case that challenges something purely because of its use of functional language outside of 112f.

          1. That only holds if you view DDR as being correctly decided, doesn’t it?

            We can talk all we want about how we think the law should be, and whether certain cases are or are not prudent.

            However, that’s not this conversation. Here, we’re talking about what the law is. Until DDR Holdings is overruled, it is precedent that cannot be disregarded.

            1. Here, we’re talking about what the law is. Until DDR Holdings is overruled, it is precedent that cannot be disregarded.

              That’s not really responding to my point. The CAFC lacks the power to overrule the Supreme Court. Supreme Court cases make a large distinction between structural and functional. The CAFC does not. Just because the CAFC tends to ignore the Supreme’s instruction doesn’t mean they are applying the law.

              If you look at the reasoning in the first judicial exception case – Morse – it applies just as well to DDR Holdings. The fact that the Federal Circuit ignores those concerns, as it routinely has, doesn’t mean those concerns aren’t “what the law is.”

              1. > The CAFC lacks the power to overrule the Supreme Court. Supreme Court cases make a large distinction between structural and functional. The CAFC does not.

                The CAFC clearly does. It just doesn’t make the ultra-sharp, bichromatic contrast that you want to read these cases as drawing.

                And neither does the Supreme Court, Ned. If the Court followed your rationale, Alice would have read: “The claims are abstract because the claims are purely functional.” Or: “The claims are abstract because novelty cannot arise in software.” That’s, what, three pages tops?

                On the contrary – here is the Court’s statement in Bilski v. Kappos, which is still perfectly good law post-Alice, and that squarely conflicts with your reading of these cases:

                Section 101 precludes a reading of the term “process” that would categorically exclude business methods. The term “method” within § 100(b)’s “process” definition, at least as a textual matter and before consulting other Patent Act limitations and this Court’s precedents, may include at least some methods of doing business. The Court is unaware of any argument that the “ordinary, contemporary, common meaning,” Diehr, supra at 182, of “method” excludes business methods. Nor is it clear what a business method exception would sweep in and whether it would exclude technologies for conducting a business more efficiently.

                The categorical exclusion argument is further undermined by the fact that federal law explicitly contemplates the existence of at least some business method patents: Under § 273(b)(1), if a patent-holder claims infringement based on “a method in [a] patent,” the alleged infringer can assert a defense of prior use. By allowing this defense, the statute itself acknowledges that there may be business method patents. Section 273 thus clarifies the understanding that a business method is simply one kind of “method” that is, in some circumstances, eligible for patenting under § 101. A contrary conclusion would violate the canon against interpreting any statutory provision in a manner that would render another provision superfluous.

                1. David,

                  What you say here has LONG been on the table of discussion (I know this because I put it there).

                  There will be NO meaningful dialogue on these points.

                  There will be the internet shoutdown of drive-by monologues that simply ig nore these points.

                  So much for the health of the “ecosystem,” eh?

                2. If the Court followed your rationale, Alice would have read: “The claims are abstract because the claims are purely functional.” Or: “The claims are abstract because novelty cannot arise in software.”

                  There’s a large distinction between saying things are categorically improper versus the manner in which they are currently being used being always improper. Functional language is not inherently wrong, but the manner in which it is being used today, to intentionally obfuscate the actual creation in an effort to expand claim scope, is inherently improper. Wabash had a statement that basically said that one can doubt whether a functional definition, rather than structural can ever be proper. That’s the way it should be thought about – we can’t say for sure it’s categorically wrong, but it’s almost certainly wrong.

                  Same thing with software. To the extent that most of software claiming is idea + standard transcription, most software is ineligible. That doesn’t exclude that there may be a software application that the art simply cannot achieve for some reason. Overcoming that would yield a patent, but that isn’t what occurs in 99% of the cases.

                3. Random,

                  With all due respect, that is pure unadulterated logical C R P of nothing but contradictions fueled by your Belieb system – and that is the way that should be thought about it.

                4. Functional language is not inherently wrong, but the manner in which it is being used today, to intentionally obfuscate the actual creation in an effort to expand claim scope

                  How quioxite of you.

                  You do realize that more than 95% of claims of any value – across ALL art fields – use the method of ladders of abstraction that happens to be the exact thing here “rubbing you the wrong way,” right?

                  Your picture claim mentality is as out of date as Jepson claims.

                  Even more so.

                5. Random, let me agree to disagree with you about claims to software. They are method or system claims and have to be construed as such. Claiming them as programmed computers or articles of manufacture is improper as a 101 issue because the computer or toarticle are not improved machines or manufactures.

                  Thus, viewed as method claims, they recite a series of steps which are actions. While each of these steps could be functional in that they are claiming a result, the claim is not necessarily invalid simply because it describes a series of actions.

                  I would hope that the patent office finally gets it straight on the fundamentals. You are among the best, Random, that I have seen. Perhaps you could lead the way.

                6. You do realize that more than 95% of claims of any value – across ALL art fields – use the method of ladders of abstraction that happens to be the exact thing here “rubbing you the wrong way,” right?

                  That’s tail-wags-the-dog thinking. If 95% of people do it wrong then 95% of people do it wrong, it doesn’t mean the standard is improper. Show me where the patent laws demand “value of anon’s choosing”? You’re also being…lets say myopic on abstractions. There are standards when an abstraction goes too far (both in 101 and 112). Engaging in abstractions are not wrong, but again, the abstractions people seek to engage routinely are wrong.

                  Thus, viewed as method claims, they recite a series of steps which are actions. While each of these steps could be functional in that they are claiming a result, the claim is not necessarily invalid simply because it describes a series of actions.

                  Sure, if that is what was actually done, but what is actually done is 5x limitations about where the problem comes up, and 1 limitation that amounts to “solving the problem.” i.e. There are a lot of single-means or single-step computer software claims out there masquerading as actual methods. The difference between a claim to a method and a claim to a solution has nothing to do with how “long” the claim is and everything to do with whether the important part is claimed with particularity such that one can envisage actions rather than results.

                  If the language admits of multiple distinct means of achievement and the spec doesn’t make clear that all those means were posited by the applicant the claim is overbroad.

                  I would hope that the patent office finally gets it straight on the fundamentals. You are among the best, Random, that I have seen. Perhaps you could lead the way.

                  You severely overestimate my position within the office :)

                7. LOL

                  Random is driving the wrong way down a one way street swearing at everyone else driving the wrong way and claiming they are the ones “myopic” (as he has ig nored the actual law changes made in 1952 – see Federico).

                  Classic.

                  Wrong on 112 (as has been abundantly shown).

                  Wrong on 101 – there he wants to lean on “abstract” which has been expressly NOT defined.

                  Deep into the weeds with Ned – software is NOT a method. Executing software is a method.

                  This is basic stuff guys – both of you are not even close.

            2. Until DDR Holdings is overruled, it is precedent that cannot be disregarded

              It’s nonsense that is going to be overturned quickly. Unlike Prometheus v. Mayo and Alice. And Ultramercial. And ABL Labs.

              What exactly does DDR “mean” to you, David? What is the “precedent”? It’s certainly not “precedential” for some half-baked CAFC judge to flip the SUpreme Court the bird. Rader tried that.

        3. In response to the question: “How can something be “new” when the only distinction between it and the “old” is something patent law doesn’t recognize?”

          David Stein writes: That’s obviously mixing up 102/103 and 101.

          No, it’s not. And saying so only shows that you suffer from the same dinosaur brain problem (willful or not? let the readers decide!) that afflicts Robert Stoll and other so-called “expert” commenters who have stuck their heads in the sand for years pretending that they don’t know how to apply basic reason and logic to simple legal problems.

          When you have an old method (e.g., ingesting a drug like caffeine in the form of a hot liquid solution) and you tack on some new ineligible step (e.g., thinking about a super important and valuable correlation) then the claim turns coffee drinkers (practitioners of the prior art) into infringers merely because they’ve thought about something new. This isn’t a 102 or a 103 problem. That’s an eligibility problem because the claim protects ineligible subject matter (the correlation). It protects that ineligible subject within a particular field (almost invariably the field where the greatest value for the correlation would be found) and that’s all that’s needed to tank the claim.

    3. The district court summarizes its holding as: “where a claim recites tangible steps, but only the new part of the claim is an abstract idea, that may constitute a claim to an abstract idea.”

      That is not the Alice test.

      It’s the Prometheus test, David.

      I know you guys hae a really hard time understanding it (or you love pretending that you don’t understand it) but when the only novel element in a claim is ineligible junk (i.e., “use rules!”) then the claim protects that ineligible junk within the field defined by the other claim elements (i.e., the stuff that was in the prior art).

      It would not be appropriate to disregard the engine and the gears as not “novel,” and to reject the rest as “the concept of a continuously variable transmission” as an abstract concept for improving an engine.

      It would be entirely appropriate to find the claim ineligible, in fact, if — in addition to the engine and gears which are admittedly old — the claim recites just the abstract “concept” of some new functionality rather than describing this “transmission” in objective structural terms that distinguish it from mechanisms in the prior art.

      Note that this isn’t about “disregarding” the other claim elements. They are certainly being “regarded”. The point is that the alleged “innovation” needs to be eligible subject matter for protecting with a patent. Similarly, I’m not “disregarding” the “bound pages” (a manufacture!!!) when I tell you that an old book with new, useful and non-obvious writing inside is ineligible.

      Basic, fundamental stuff essential to any sane patent system. When you throw this stuff out — and the CAFC certainly tried to do this — you create a blueprint for grift and abuse. And that’s exactly where we are at now.

    4. “No CAFC or SCOTUS 101 analysis has ever looked only at elements deemed to be novel, in isolation, for 101 eligibility.”

      ?

      Every “printed matter” case does all the way back to Hotel Security.

      1. There is no honor in Ned in continuing to ig nore the difference in Set B printed matter and Set C printed matter.

        All he does is clench tight his eyes to the facts that I have so eloquently put on the table for discussion, engaging in the internet style shouting down and drive by monologuing.

      2. Again, in this case, if you have printed words in a book – the book, as a physical structure, is not disregarded because it is not novel, but because it is incidental.

        It’s like a combination of a novel toaster and a conventional washing machine: the washing machine can be disregarded because it has nothing to do with the claimed invention.

        By the same token – when words are printed in an ordinary book, the inclusion of the book adds nothing to the words. The book can therefore be disregarded, and what remains – the disembodied words – is not patent-eligible. The novelty (or lack thereof) of the book does not factor into this analysis.

        1. David, the book having printing was once eligible – perhaps when book binding was first invented. When was that? According to this: link to powis.com, book binding was invented at the time the Caesars.

          But when a book varies from its brethren by the content of the words, the subject matter being patented is not the book, but the words.

          This IS the rationale of Benson.

          This IS the rationale of Flook.

          This IS the rationale of Mayo.

          This IS the rationale of Alice.

          This IS the printed matter doctrine that traces directly to Hotel Security — the very decision that Stevens in Bilski argued was the right precedent.

          1. > This IS the rationale of Benson.

            On the contrary, the rationale of Benson is that algorithms can be patent-eligible subject matter, but that the particular algorithm at issue was an abstract idea not confined to any particular application.

            It is said that the decision precludes a patent for any program servicing a computer. We do not so hold. It is said that we have before us a program for a digital computer but extend our holding to programs for analog computers. We have, however, made clear from the start that we deal with a program only for digital computers. It is said we freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology. Such is not our purpose. What we come down to in a nutshell is the following.

            It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.

            > This IS the rationale of Flook.

            On the contrary, the rationale of Flook is that an admittedly abstract idea does not become patent-eligible by confining it to a specific field of use – i.e., “use the Pythagorean Theorem in the field of road construction.”

            In Gottschalk v. Benson, we held that the discovery of a novel and useful mathematical formula may not be patented. The question in this case is whether the identification of a limited category of useful, though conventional, post-solution applications of such a formula makes respondent’s method eligible for patent protection.

            > This IS the rationale of Mayo.

            On the contrary, the rationale in Mayo is, well, precisely the same as Flook: an abstract idea does not become patent-eligible by a field-of-use limitation: the words “apply it” in a specific context.

            Although “laws of nature, natural phenomena, and abstract ideas” are not patentable subject matter under s101 of the Patent Act, “an application of a law of nature to a known structure or process may deserve patent protection.” But to transform an unpatentable law of nature into a patent-eligible application of such a law, a patent must do more than simply state the law of nature while adding the words “apply it.”

            > This IS the rationale of Alice.

            On the contrary, the rationale of Alice is that an abstract idea (intermediated settlement) does not become patent-eligible by indicating that it should be implemented on a computer.

            Here, the representative method claim does no more than simply instruct the practitioner to implement the abstrat idea of intermediated settlement on a generic computer. … Viewed as a whole, these method claims simply recite hte concept of intermediated settlement as performed by a generic computer. … An instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer is not “enough” to transform the abstract idea into a patent-eligible invention.

            None of this has anything to do with the printed matter doctrine, Ned. The printed matter doctrine stands for a specific concept: a generic medium recording abstract information, which is solely useful if read and applied by a human, is not patent-eligible. None of these cases deal with that type of claim – not even Mayo, which didn’t involve anything “printed” on any medium.

            And what about Hotel Security(which, once again, issued in 1908 by the Second Circuit Court of Appeals)? Well, the last time it was referenced in a majority opinion, the Court had this to say about it:

            Even the case frequently cited as establishing the business method exception to statutory subject matter, Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2d Cir.1908), did not rely on the exception to strike the patent.15 In that case, the patent was found invalid for lack of novelty and “invention,” not because it was improper subject matter for a patent.

            So this line of legal philosophy that you’re trumpeting is not part of patent law, Ned. It is a “pet theory” of how you’d prefer that patent law did work, but it does not describe what patent law is, today – or for that matter, tomorrow or next year.

            1. David,

              While there should be no doubt that you have done a masterful job here dismantling the Nedisms, each of these points at one time or another (and often dozens of times) have already been explained to Ned.

              Do you really think that will stop the exact same drive-by monologues tomorrow? The day after? The day after that? Ad infinitium, ad nauseum?

              There is no attempt to integrate these points into the discussion in ANY intellectually honest manner, because Ned is NOT here for dialogues. He is here purely for his advocacy efforts.

            2. David, on Hotel Security, albeit dicta, its was cited and followed by numbers of cases thereafter. Merely saying that that its dicta was not a holding is not enough — an Rich’s opinion in State Street Bank was, at best, disingenuous.

              Your citing to Rich for this is at best no better.

            3. On the origin of the printed matter doctrine:

              In re Russell, 48 F.2d 668, 669 (CCPA 1931). This was the first CCPA case on the doctrine. But what authority did Russell cite?

              Guthrie v. Curlett, 10 F. 2d 725 (2d Cir. 1926).

              And, what case did Guthrie cite as authority? You guessed it:

              Hotel Security Checking Co. v. Lorraine, 160 F. 467 (2d Cir. 1908)

              And what case did Rich say that we do not have to follow in State Street Bank? Hotel Security.

          2. I’m sorry David, but you pretend to disagree when we in fact agree.

            Benson is exactly like the Book example. The only thing new was the math, and confining it to the old computer without more produced nothing new in terms of a new or improved computer just like changing the text does not improve the book.

            Benson said nothing categorical about computer programming. Flook did however categorically condemn math as being statutory.

            1. Back to Benson, just why was confining the use of the math to a generic computer not a new application?

              Could it have anything at all to do with the fact that the computer was not improved — not the object of the claim? The effort, transparent to the Supreme Court, was to patented the math. Its use, confined as it was to computers, was no limitation at all given that such was the only practicable use.

              Flook and Bilski clarified that routine uses were not enough if abstractly stated. Wholly preempt was not required.

    5. David, I’ll ask you the same question I asked Night:

      Claim: A + B. A is non statutory. B is statutory. B is old. A is new. A does not modify B to produced an improved B.

      Is this claim patentable under 101/102/103?

      1. > Claim: A + B. A is non statutory. B is statutory. B is old. A is new. A does not modify B to produced an improved B. Is this claim patentable under 101/102/103?

        It’s fine under 102/103 thanks to A, but invalid under 101 – only because “A does not modify B to produce an improved B.” Not even a very interesting question. If you have a recipe for a new kind of bread, and you make it in an off-the-shelf ordinary toaster, neither the toaster nor the “combination” becomes patent-eligible.

        If we take out the “A does not modify B” part, then it becomes a much more interesting question – one that I have asked two SPEs in the past six months. On both occasions, their answer was: yes, it’s fine with us.

        1. David,

          You highlight here something ALSO well on the table of discussion – that Ned’s reliance on Malcolm’s b@nal “pet theory” merely reduces to the rather mundane “you cannot have a claim on a mere unrelated aggregation.”

          You do not even have to attempt to revive any flavor of a “mental steps doctrine” with one or more step with such an aggregated claim sounding in being a mere mental step.

          Again – you will NOT spark a dialogue on this point.

          For obvious reasons.

  9. Thanks for the write-up, Robert. I agree this is an important case and if the Federal Circuit gets it wrong (like they got DDR wrong) they will be quickly smacked down by the Supreme Court.

    A few questions and comments:

    Stoll: The patents utilize complex and seemingly specific computer-implemented techniques.

    Exactly what about the claims seems “complex” to you, Mr. Stoll? Certainly “complexity” has nothing to do with eligibility. The appearance of “complexity” reflects more on (1) the lawyers ability (or willingness) to draft a claim that describes the invention clearly, and (2) on the reader’s technical background and skill at parsing the legalese, needless jargon and excess verbiage that turns up regularly in patents — particularly computer-implemented patents.

    As for “specific computer implemented techniques”, such “techniques” have shown up before in ineligible computer-implemented claims. They don’t make much of a difference for eligibility purposes particularly when those recited “specific computer implemented techniques” are old and are being applied for their well-known purposes (invariably the case in functionally described “innovations” — and computer-implemented “innovations” are invariably functionally described).

    An initial read of the claims in the Planet Blue patents seem to be a far cry from basic method claims.

    What in the world is that supposed to mean? The claims are method claims. Do we now divide the claims up into flavors of “basic”, “not quite basic” and “far cry from basic”?

    The Planet Blue patents are used in animation; the technology helps automate the process of adapting an animated image to mouth words without having to draw or manually program the animated character’s movements.

    Animation is old. 3d animation is old. 3-d computer animation is old. The claimed methods are “basic” methods of using computers to automate a logical task of synching a characters mouth movements to sounds. As anyone who has ever solved a logical problem like this understands (that includes you, Mr. Stoll — we all hope!), such a solution will inevitable require the development of rules that the computer will follow to determine what lip shapes correspond to particular sounds. Shocking, right? Who could have imagined that rules would be useful? Now try to believe the next part: the rules will be in a file that the computer will access. I guess that might seem complex to some people but it’s not.

    The claims at issue in this case do not recite any specific rules and that was key to understanding Wu’s decision. Rather, the claims implicitly tell the computer programmer to implement the rules as part of the program that he/she will need to create in order to practice the claimed invention (note: the claims do not cover “a method of programming a computer” — that language is generally avoided by computer-implementers because it tends to give away the game being played by computer-implementers, at least when you try to enforce the claim).

    Judge Pfaelzer noted that Planet Blue ultimately reached the wrong conclusion since courts should not, in her view, apply the point-of-novelty approach in the Section 101 inquiry, citing the Supreme Court’s Diamond v. Diehr decision.

    Funny stuff. Perhaps Pfaelzer should simply have stated that she doesn’t understand what Prometheus v. Mayo was about. Maybe she thinks that the Prometheus decision doesn’t apply to computer-implemented “innovations”? If so, somebody should tell her about Alice, which was the logical follow-up to Mayo.

    That’s really one of the most interesting aspects of these computer-implemented claim cases and commentary reaction to them. The underlying “technology” is invariably “the use of logic”. And yet so many commenters who support these claims are unable or unwilling to use logical principles and basic reasoning to evaluate and analyze the “innovations” or the case law.

    Flashback for readers to a very short time ago: you need patent law expertise at the Supreme Court. And you see in Prometheus where they’re analyzing 101 using 102 and 103.

    That was written by Robert Stoll in 2014. Robert Stoll has no idea what Prometheus v. Mayo is about, or he’s simply happy to pretend that he doesn’t. Given that Robert Stoll has pretty much admitted that he is clueless about Prometheus v. Mayo — one of the most important and foundational patent decisions that we will see in our lifetimes, and one that will never, ever by reversed– one really has to ask the question: why should anyone care what Robert Stoll thinks about anything that is patent-related?

    1. Oh goodness, the anti-patent paid blogger chimes in with nonsense.

      Let’s remember folks that this is the boz0 MM that claims that implementing any function you write down on a piece of paper is easy and all functions you write down are equivalent.

      1. this is the boz0 MM that claims that implementing any function you write down on a piece of paper is easy and all functions you write down are equivalent.

        Show everyone the quotes and the context, you desperate sniveling little n-tcase.

        Make my day. Or stop lying already.

        1. Yeah, right. I don’t have a staff like you do to keep track of all these quotes. But, if you make it worth my while I will go find it. How about if I find the quote, you agree never to post on patentlyo again?

          1. I don’t have a staff like you do to keep track of all these quotes.

            Beyond parody. My Monday is already filled with laughter. I thank you.

      1. “anon”: his one trick pony “p1ss” test.

        Everybody is entitled to make mistakes. It’s just that when you make a big mistake about something really, really important you have a duty to either own up to it, with an explanation showing that you understand your errory, or you clam up. Like you, Robert Stoll seems to believe that he is smarter than the Supreme Court. Both of you are wrong about that. You were wrong about Prometheus v Mayo. You remain wrong about Prometheus v Mayo. And I’m going to continue to remind everybody of that until you both grow up.

        That’s how it works. I know all about the boys club and how you guys love to pretend that if you put on a suit and tie and a gold watch that everything that comes out of your piehole is deserving of respect. I have no interest in your club. On the contrary, your games create problems for everybody else (as if you didn’t know that).

        [shrugs]

        1. I think there is an “honored” legal thinker requirement or something like that.

          Certainly self-education, common sense, outside perspective, or commercial experience is disqualifying.

          No Objective Observer status for you!

          1. Can you at least try to include some substance in your heckles? Or at least be more abrasive. You pale in comparison to your alter ego MM.

    2. “Animation is old. 3d animation is old. 3-d computer animation is old. The claimed methods are “basic” methods of using computers to automate a logical task of synching a characters mouth movements to sounds.”

      Wood used for framing is old, cloth used to harness the wind is old, ropes used to apply tension (pull) force to cloth frames is old,. The claimed structure is merely a ruse for claiming “basic” methods of using a device to mechanize the ancient task of synching the aerodynamic configuration of a structure to a desired flight behavior.

      Sorry Wilber, Orville your claims are directed to that ancient abstract idea of wing configuration controlling flight behavior. A natural law known even to Pterodactyls.

      1. The claimed structure

        Les, just in case you’ve forgotten: an absurd argument about a claim that you haven’t even presented to us isn’t responsive to anything.

        Orville your claims are directed to that ancient abstract idea of wing configuration controlling flight behavior

        Absent some objective physical structure distinguishing “Orville”s” alleged “innovation” from prior art flying machines, this is a perfectly reasonable conclusion. But again, Les: we haven’t seen the claim so it’s impossible to know what you’re talking about.

        Of course it’s entirely possible — probable even — that you don’t know what you’re talking about. Have you figured out yet what Prometheus v. Mayo is about? I mean, it was only a 9-0 decision decided a few years ago already that is never, ever going to be reversed. Maybe you should spend some time thinking about that.

        1. “we haven’t seen the claim so it’s impossible to know what you’re talking about.”

          Impossible? Really?? You don’t know how to find a patent? I know that it may have been difficult and involved a trip to Washington at one point. But now the processes has be AUTOMATED. Generic computers can be used to transmit search terms to other generic computers that have been configured to search a database and present search results.

          One such generic computer is accessible by typing google/patents, just one time. That is an improvement over the prior art which required recitation of “Beetlejuice” three times…..

      2. Wood used for framing is old, cloth used to harness the wind is old, ropes used to apply tension (pull) force to cloth frames is old,. The claimed structure is merely a ruse for claiming “basic” methods of using a device to mechanize the ancient task of synching the aerodynamic configuration of a structure to a desired flight behavior.

        Why are you still peddling this Les? You showed me the claims and I pointed out they were in means plus. The claim is not directed to old + old + old, the claim was directed to old + old + old’s specific configuration. This claim has no specific configuration, both sides agree it’s not limited to any particular set of rules.

        That claim claimed structure, this claim claims function. They’re not the same at all.

        1. “This claim has no specific configuration, both sides agree it’s not limited to any particular set of rules.”

          The Wright’s claim is directed to a plane with a wing, a portion of which can be moved out of “the plane of the wing” (without any specific mechanism recited). They disclosed wing warping and sued someone with ailerons or flaps (I don’t know which). The analogy is quite on point.

          The courts have said structure doesn’t matter. Its just a ruse. An abstract method implemented with real hardware is still an abstract idea..

          So, the Wrights, even though their claim, on the surface, is to a structure, its really to the abstract idea of changing wing configuration.

          1. An abstract method implemented with real hardware is still an abstract idea..

            That’s not what the courts are saying.

            Please try to learn to distinguish the innovation being protected by a patent claim from actual objects that might fall within the scope of that claim.

    3. Given that Robert Stoll has pretty much admitted that he is clueless about Prometheus v. Mayo — one of the most important and foundational patent decisions that we will see in our lifetimes, and one that will never, ever by reversed– one really has to ask the question: why should anyone care what Robert Stoll thinks about anything that is patent-related?

      You know, it’s perfectly possible to fully understand and appreciate Prometheus v. Mayo while disagreeing with your (and Judge Wu’s) very broad reading of it. I don’t think this insulting hyperbole is very persuasive.

        1. He couldn’t have been applying it “literally,” because it literally applied only to “unpatentable laws of nature.” I think he over-read it. I also think it likely that the Supreme Court will eventually have to draw a clearer distinction between unpatentable laws of nature and cases like PlanetBlue. But then, I suppose it’s possible that I’m just clueless about Prometheus v. Mayo.

          1. DanH [Prometheus] literally applied only to “unpatentable laws of nature.”

            The Supreme Court did not limit Prometheus v. Mayo in that manner. There was no “law of nature” in Alice but Prometheus v. Mayo was very much relied on in that case. In addition, throughout the Supreme Court’s opinion they refer repeatedly to the ineligible correlation as just that: a correlation. Commenters have focused on the “law of nature” question only because they wish to avoid discussing the vastly more important issue that was addressed in the case: you can’t protect ineligible subject matter by dressing it up with old technology.

            Prometheus v. Mayo plainly applies — and this has always been true — to any and all abstractions, including all information and all applications of logic and reason. Note that this statement is profoundly different from the incorrect statement that results/discoveries flowing from the application of logic and reason are ineligible. It’s sad that I have to point that out but I know what will happen if I don’t.

      1. You know, it’s perfectly possible to fully understand and appreciate Prometheus v. Mayo while disagreeing with your (and Judge Wu’s) very broad reading of it.

        Judge Wu’s reading is hardly “very broad.”

        That said, I agree that it is possible to fully understand and appreciate Prometheus v. Mayo — it’s very easy to do so, in fact. But please show me where Robert Stoll has ever indicated that he has such an understanding. The quote I provided strongly suggests that he is clueless or pretending to be clueless about what the case is about.

  10. >“the use of rules, rather than artists, to set the morph weights and transitions between phonemes.”

    The judges have just abstracted away all reality. I could invalidate any patent under 101 using the standard used above.

    I still have a challenge out to the anti-patent group to come up with one claim that is valid under 102, 103, 112 and not valid under 101 save for very obvious claims to physical laws (and you would need the fiction that you discovered the physical law.)

    1. Although I am most certainly not among “the anti-patent group”, that’s a very easy challenge to meet, as all claims are required to have a described utility that is specific, substantial, and credible (SSC).

      Even under the patent system’s current inadequate formulation and usage of these 3 independent dimensions of utility, your challenge is easily met.

    2. It is also bizarre that judges seem to feel that “merely” replacing what a person does with a machine is not meaningful. Building a machine to do the work of a person is the goal of many inventions. Like driving a car, building a car, etc.

      I think a lot of the problem is the complete and utter ignorance of the judges regarding science is at the root of the problem. The judges in these cases are just worthless cretins that should be removed.

      1. NWPA t is also bizarre that judges seem to feel that “merely” replacing what a person does with a machine is not meaningful.

        Once again you are confusing a patent claim with objects/processes falling within the scope of patent claims.

        It’s been known for years that merely reciting “automating” in a claim to an otherwise old and unpatenable (or ineligible) process doesn’t generate a patent-worthy claim. That fact certainly doesn’t mean that an actual machine capable of carrying out the task isn’t “meaningful.” It means that at some point we had a sane patent system that asked for meaningful claims before granting them.

        1. So, it is the bizzarro judicial activist game of not construing the claims as one of ordinary skill would construe the claims in light of the specification.

          Just want to leave that off, eh? I know Lemley is trying to push this new legislation through the courts.

    3. NWPA >“the use of rules, rather than artists, to set the morph weights and transitions between phonemes.”

      I could invalidate any patent under 101 using the standard used above.

      Impressive! Please tell everyone: how would you use that standard to invalidate a patent to, e.g., a new non-obvious chemical described in objective structural terms distinguishing that chemical from prior art chemicals?

      This ought to be fun.

      1. There are NO limits to the “Gist/Abstract” sword – not even claims using the OPTION of being described in “objective structural terms.”

        But you already knew that.

      2. there are NO limits to the “Gist/Abstract” sword

        So says the great “anon” who completely failed to understand what Prometheus v. Mayo was about in real time and still doesn’t understand what it was about. Remember, “anon”s reaction to Prometheus v. Mayo was to flood this blog with sockpuppets — dozens every day — and derail any and every attempt to discuss the issues.

        But we should all listen to his weird pronouncements like this one regardless because …. he’s very serious! How do we know that? Because he told us so.

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